Whose Line is it Anyway? Protectability of Slogan Marks in India

Author: Dishti Titus

Introduction

Brands constantly innovate to adopt multiple and unique ways to identify themselves with their offerings with the objective of creating a lasting impression in the minds of consumers. This includes adopting various features such as logos, product names, shapes, colours and even slogans.

The Cambridge online dictionary defines a slogan as ‘a short easily remembered phrase, especially one used to advertise an idea or a product’. A slogan may also be used to describe the character of an idea or product. Some popular slogans which have been adopted by brands over the years include –

  • Nike – “Just Do it”
  • Apple – “Think Different”
  • L’Oreal – “Because you’re worth it”
  • KFC – “It’s finger lickin’ good”
  • Coca-Cola – “Open Happiness”
  • Dunkin’ Donuts – “America runs on Dunkin’”
  • McDonald’s – “I’m lovin’ it”

The Division Bench of the Delhi High Court in the case of Procter & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. vs. Anchor Health & Beauty Care Pvt. Ltd., 2014(59)PTC 421(Del), has highlighted the following as regards protectability of slogans:

“…

(vii)…slogans or taglines … in advertisements, grab attention and are sometimes better known than the branded products themselves; such slogans/taglines/expressions are marketing and communication tools par excellence and directly impact the consumers by encouraging them to chose (sic) certain goods or services over others; such slogans/taglines/expressions, though may not directly designate particular goods or service but support it in commercial terms by enabling the public to link the slogan/tagline/expression to a specific company or to recall a brand—they are the first line of communication with the consumer;

(viii) The function of a slogan/tagline/expression is to crisply communicate the ability or nature of the goods or services; the same communicate to the consumers the qualities thereof; often it is found that it is such slogan/tagline/expression which lingers in the minds of the consumers and which remains as an after taste of an advertising campaign…

(ix) Slogans/expressions/taglines have indeed become an important tool in the branding and advertisement campaigns, specially in the visual media;

(x) An effective slogan/tagline/expression is memorable and impactful and make the customers feel good about what they are purchasing and foster more efficient purchasing decisions by creating distinction in consumers’ minds;

(xii) Slogans/taglines/expressions though can be descriptive but are not necessarily descriptive; it cannot however be lost sight of that the slogan/tagline, if descriptive, does not serve the purpose for which it is coined and does not justify the high cost incurred in conceiving and popularizing the same. A distinctive as compared to descriptive slogan, conveys the company’s and the product’s essence as well as what it aspires to be and conveys the commercial expression to the consumers. It promotes memory recall;

…”

Slogans and creation of Intellectual Property

As per the Trade Marks Act, 1999, a trade mark includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof that is capable of being represented graphically as well as capable of distinguishing the goods or services of one person from those of others. On the other hand, copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.

It is natural that when businesses adopt various features such logos, product names, shapes, colours, etc., there is creation of intellectual property. Owing to the investment of time, labour and money by a business towards creation of its intellectual property, the business would seek protection in respect thereof so as to prevent others from reaping benefits of the same. Likewise, businesses tend to allocate and invest a lot of funds for promotion of their brands and products by way of slogans. Such investment is not only limited to the creation of the slogans, but also towards promotion thereof so as to create an association with the brand and products. Given the nature of slogans and the investment that goes into the same, one pertinent question arises – are slogans or tag lines capable of protection under the intellectual property regime?

Judicial Trends Encompassing Protection of Slogans as Intellectual Property

The protectability of slogans under statutes governing trademark and copyright as well as under common law has been deliberated upon by different courts in India.

In Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors., 2003(27)PTC 305(Del), the question before the High Court of Delhi was whether the slogan “Yeh Dil Maange More” is subject to copyright protection. The Court held that advertising slogans are prima facie not protectable under copyright law and may instead be protected under the law of passing-off.

In the case of Reebok India Company v Gomzi Active, 2007(34)PTC 164(Karn), the Karnataka High Court considered whether the slogan “I Am What I Am” had acquired distinctive character owing to use by Gomzi Active. The Court stated that “It has to be established by the person claiming the benefit of distinctive usage that over a period of time the slogan has developed a secondary meaning and a goodwill.” and held that “the trade slogan “I AM WHAT I AM” being more in the nature of a generic phrase has not been shown to have acquired any distinctive character vis-a-vis the goods produced by the plaintiff.”

In Stokely Van Camp Inc. v Heinz India Private Limited, 2010(44)PTC 381(Del), the Division Bench of the High Court of Delhi, dealt with the question of infringement of the registered mark ‘Rehydrate Replenish Refuel’ in relation to energy drinks by the Defendant’s use of the slogan ‘Rehydrates fluids; replenishes vital salts; recharges glucose’. The Court observed “…both products are isotonic drinks. The trade liberally uses such like words or expression in one or the other form. The defendant’s use of the expression does not prima facie appear to be dishonest for the reason that these are words or expressions used commonly to describe what appears to be the functional utility of an isotonic drink.” and held “notwithstanding the fact that there is a registration in favour of the plaintiffs if, the expression which is registered or an expression similar to the one which is registered is used to describe the character of the product then, within the meaning of Section 30(2)(a) of the T.M. Act, 1999, the user will not be guilty of infringement.”

In the case of Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd. & Anr., 2012(51)PTC 251(Del), the High Court of Delhi, in response to the question – whether the slogans and/or phrases are copyrightable or not, held that “the slogan “Shauq Badi Cheez Hai”, being combination of common words, would not fall within the scope of “Artistic/literary work” under the Act. Slogan “Shauq Badi Cheez Hai” does not appear to be an outcome of great skill, inasmuch as, it uses the short stereo type combination of words. In fact, both the slogans, that is, “Shauq Badi Cheez Hai” as well as “Swad Badi Cheez Hai” are commonly spoken in Hindi language in day to day life. That apart, the slogans, in my view, are not copyrightable.”

Conclusion

Slogan marks find protection and remedies (for breach of rights) under both statutory and common law viz. through infringement and passing off actions. However, in order to claim such protection for rights in slogans (and enforcement thereof), the slogan(s) must satisfy some criteria laid down by the judiciary to qualify for protection in the first place.

Often slogans comprise of a combination of words that are commonly used in relevant trade channels and are devoid of distinctive character. Such slogans are construed as lacking any originality and therefore are generally not considered to be literary works. Accordingly, they do not qualify for protection under copyright law in India.

As for obtaining protection of a slogan under law of trademarks, a slogan is capable of falling within the definition of a mark as specified in the Trade Marks Act, 1999. For a slogan to qualify for trademark protection, it is subject to the same scrutiny as a non-slogan mark. Accordingly, one would need to show that the slogan mark is either inherently distinctive or has acquired distinctiveness as of on the date of application of the mark for registration.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Outstretching across borders: anti-suit injunctions in India

Author: Dishti Titus

Cyberspace markets and e-commerce businesses have witnessed an exponential growth in the recent past. The internet has reshaped markets, supply models and the entire concept of buying and selling by bringing the concept of a local global market to the forefront. Further, with the on-going pandemic, the shift to the cyberspace has been enormous, giving rise to numerous legal complexities pertaining to transactions over cyberspace. Particularly in the realm of intellectual property, we have witnessed an influx of counterfeiters and infringers sprouting every day. With the limitless boundaries of the internet, the enforcement of intellectual property rights is often faced with the question of determination of the court which has the jurisdiction to adjudicate on a dispute.

How is Jurisdiction Conferred

The term “jurisdiction” in its natural parlance denotes the extent to which an authority can adjudicate over a matter. A dispute between two parties is decided by a court or other appropriate forum having jurisdiction over the dispute. In the present-day scenario, where parties and persons are connected across territorial boundaries, the aspect of “jurisdiction” is of considerable significance.

The jurisdiction of an adjudicating authority is subject to numerous factors such fiscal value of the dispute, place of performance of the agreement, exclusive jurisdiction decided by the parties, etc. Although the Code of Civil Procedure, 1908 lays down the criteria to ascertain jurisdiction, the same are not exhaustive as several specific legislations grant jurisdiction to other forums and even bar the jurisdiction of a forum over a particular matter.

The era of digital marketplace also opens up the possibilities of multifarious jurisdictions in the event of a dispute. The digital marketplace which has expanded and grown in the recent past in itself makes the world a single market but the law of territorial jurisdiction of a court or forum over disputes arising from such transactions needs to be understood with paramount lucidity. In a dispute concerning parties situated in different geographical territories, there is possibility to invoke jurisdictions of different territories. The parties in such an event always have the option to confer “exclusive jurisdiction” on any one court or forum amongst those capable of having jurisdiction. However, the question of determination of jurisdiction becomes labyrinthine in situations where no exclusive jurisdiction has been conferred by agreement and several courts or forums have the power to exercise jurisdiction which is known as the “natural” or “available” jurisdiction.

Long-Arm Jurisdiction and Anti-Suit Injunctions

The current statutory framework in India does not specifically deal with the concept of long-arm jurisdiction and anti-suit injunctions. However, this concept has been discussed and invoked through judicial precedents.

In simple words, long-arm jurisdiction refers to the ability of a court to exercise jurisdiction over foreign defendants. As for anti-suit injunctions, the Hon’ble Supreme Court of India in Dinesh Singh Thakur versus Sonal Thakur, AIR 2018 SC 2094, stated –

“Anti-Suit Injunctions are meant to restrain a party to a suit/proceeding from instituting or prosecuting a case in another court, including a foreign court. Simply put, an anti-suit injunction is a judicial order restraining one party from prosecuting a case in another court outside its jurisdiction.”

Understandably, one might question how can a person be restrained from exercising his legal rights of approaching a court, particularly in light of Section 41(b) of the Specific Relief Act, 1963 which bars grant of an injunction to restrain any person from instituting or prosecuting in a court not subordinate to that from which the injunction is sought.

Although anti-suit injunctions may be applicable in foreign and domestic forums in different countries, the bar placed by Section 41(b) of the Specific Relief Act, 1963 precludes grant of an anti-suit injunction by one domestic forum against another domestic forum only. This bar, however, does not preclude anti-suit injunctions against foreign forums.

Principles Governing Anti-Suit Injunctions

Courts in India are that of law and equity. Anti-suit injunctions, being a species of injunctions would be governed by the same legal principles that govern the grand of an injunction, an equitable relief.

The Supreme Court of India in Modi Entertainment Network v. WSG Cricket Pte Ltd, [(2003) 4 SCC 341], laid down the following principles to be taken into account while assessing whether or not an anti-suit injunction should be granted:  

“…
(1) In exercising discretion to grant an anti-suit injunction, the court must be satisfied of the following aspects:

(a) the defendant, against whom the injunction is sought, is amenable to the personal jurisdiction of the court;

(b) if the injunction is declined the ends of justice will be defeated and injustice will be perpetuated; and

(c) the principle of comity – respect of the court in which the commencement or continuance of action/proceeding is sought to be restrained – must be borne in mind;

(emphasis added)

(2) in a case where more forums than one are available, the Court in exercise of its discretion to grant anti-suit injunction will examine as to which is the appropriate forum (Forum conveniens) having regard to the convenience of the parties and may grant anti-suit injunction in regard to proceedings which are oppressive or vexations or in a forum non-conveniens; (emphasis added)

(3) where jurisdiction of a court is invoked on the basis of jurisdiction clause in a contract, the recitals therein in regard to exclusive or non-exclusive jurisdiction of the court of choice of the parties are not determinative but are relevant factors and when a question arises as to the nature of jurisdiction agreed to between the parties the court has to decide the same on a true interpretation of the contract on the facts and in the circumstances of each case.

(4) a court of natural jurisdiction will not normally grant an anti-suit injunction against a defendant before it where parties have agreed to submit to the exclusive jurisdiction of a court including a foreign court,…

(5) where parties have agreed, under a non-exclusive jurisdiction clause, to approach a neutral foreign forum and be governed by the law applicable to it for the resolution of their disputes arising under the contract, ordinarily no anti-suit injunction will be granted in regard to proceedings in such a forum convenience and favoured forum as it shall be presumed that the parties have thought over their convenience and all other relevant factors before submitting to the non-exclusive jurisdiction of the court of their choice which cannot be treated just as an alternative forum;

(6) a party to the contract containing jurisdiction clause cannot normally be prevented from approaching the court of choice of the parties as it would amount to aiding breach of the contract; yet when one of the parties to the jurisdiction clause approaches the court of choice in which exclusive or non-exclusive jurisdiction is created, the proceedings in that court cannot per se be treated as vexatious or oppressive nor can the court be said to be forum non-conveniens; and

(7) The burden of establishing that the forum of choice is a forum non-conveniens or the proceedings therein are oppressive or vexatious would be on the party so contending to aver and prove the same. (emphasis added)

In the case of (India TV) Independent News Service Pvt. Ltd. v. India Broadcast Live LLC & Ors., [2007 (35) PTC 177 Del], it was observed that there are three tests that are repeatedly employed by courts to determine amenability of the defendant to the personal jurisdiction of the court. These are –

  1. the defendant must purposefully avail himself of acting in the forum state or causing a consequence in the forum state
  2. the cause of action must arise from the defendants activities there
  3. the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum to make exercise of jurisdiction over the defendant reasonable.

Anti-Suit Injunctions, Cyber Space and Trade Mark Law

The statute on Trade Marks in India confers jurisdiction on courts in addition to those provided by the Civil Procedure Code, viz. a suit for trademark infringement or passing off may also be brought before a court in whose jurisdiction the plaintiff resides or carries on business.

Many businesses not only operate in cyberspace but also elect to promote their brands and trademarks on the internet through various means including through acquiring domain names which may possess all characteristics of a trademark. While doing so, businesses often encounter counterfeiters and infringers in the cyberspace, thereby highlighting the issue of enforcement against foreign defendants.

In such cases, in order to ascertain whether jurisdiction vests with a court or not, the purposeful availment test or concluded contract is applied. In case of websites, the mere fact that a website is accessible in a particular place may not by itself be sufficient for courts to exercise personal jurisdiction.

In HT Media Ltd. & Anr. v. Brainlink International Inc. & Anr., CS (COMM) 119/2020, the Delhi High Court, in determining passing off, invoked its inherent powers to pass an anti-suit injunction order against the foreign defendant restraining it from prosecuting legal proceedings initiated by it against the Indian plaintiff before a US district court. In doing so, the court relied upon the principles laid down in Modi Entertainment Network v. WSG Cricket Pte Ltd (supra).  The Court held that …. Suit before the Eastern District of New York, is vexatious and oppressive, as the Plaintiffs have not asserted Trademark rights in USA. The Trademarks of the Plaintiffs are registered in India and the Plaintiffs‟ goodwill spills over Internationally. But the Plaintiffs do not carry on any business in USA. Defendants had offered to sell the Domain name to the Plaintiffs at a price of US $ 3 Million but once unsuccessful, in the attempt to profiteer, they filed a suit for Declaration in order to further their intention to frustrate the Plaintiffs from availing of their remedies. The filing of the suit is also an attempt to legitimise the alleged infringement action of the registered Trademarks of the Plaintiffs. Plaintiffs have made out a prima facie case for grant of an anti-suit injunction before this Court.

Conclusion

The concept of anti-suit injunctions has its place in the Indian legal system and has evolved through the judgments of various High Courts and the Supreme Court. The court while granting an anti-suit injunction in any case also needs to consider that this form of injunction involves a court impinging on the jurisdiction of another court and hence, an anti-suit injunction has to granted sparingly and based on the facts and circumstances of each case.

Anti-suit injunctions play an important role in helping ascertain a more appropriate forum and preventing parties from instituting vexatious and oppressive suits in other jurisdictions with the sole intent of causing hardship to the other side.

In the absence of a ‘long arm’ statute in India which deals with jurisdiction as regards non-resident defendants, one would need to see whether the defendant’s activities have a sufficient connection with the forum state (India); whether the cause of action arises out of the defendant’s activities within the forum and whether the exercise of jurisdiction would be reasonable.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Sip Sip Hooray for Italy’s PROSECCO, Published in INTA Bulletin

Author: Dishti Titus

ALG Senior Associate Dishti Titus reports the Delhi High Court’s Order in Consorizo Di Tutela Della Denominazione Di Origine Controllate Prosecco vs. De Bortoli Wines & Anr. [CS (COMM) 679/2019] in the INTA Bulletin in her piece titled ‘Sip Sip Hurray for Italy’s PROSECCO’ – accessible here.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Conundrum Surrounds Trademark Protection of Single Color Marks, Published in INTA Bulletin

Author: Dishti Titus

ALG Associate Dishti Titus reports the Delhi High Court’s decision in Christian Louboutin SAS v. Ashish Bansal & Anr., CS (Comm) No. 503/2016 in the INTA Bulletin in her piece titled ‘Conundrum Surrounds Trademark Protection of Single Color Marks’ – accessible here.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

No Safe-Harbour as intermediary for website actively participating in or colluding in trademark infringement

Author: Dishti Titus

In the civil suit titled Christian Louboutin SAS v. Nakul Bajaj & Ors., [CS(COMM) 344/2018] the Delhi High Court (Singh, J.) has, vide its order dated 2018.11.2, dealt with the issue of intermediary liability for trademark infringement in light of the safe harbour provision of Section 79 of the Information Technology Act, 2000 (“IT Act”) which exempts an E-commerce intermediary from liability for acting as an information technology-platform, hosting platform and content for third-party sellers that commit trademark infringement. The suit has been decreed in favour of the Plaintiff by the said judgement, directing the Defendants to, inter alia, cease use of meta-tags consisting of the Plaintiff’s marks and specifically directing the Defendant, Darveys.com, to disclose by filing onto the record of the suit being disposed-off, details of the identities of sellers hosted on its website whose products have been held to infringe the Plaintiff’s trademarks. The Defendants including their website Darveys.com have been denied protection under Section 79 of the IT Act.

The Plaintiff claimed that the Defendants operate the website www.darveys.com (“Darveys.com”) and sought an injunction against the Defendants’ use of its CHRISTIAN LOUBOUTIN trademarks and sale of goods-products under the said marks on this website. The Defendants claiming immunity under Section 79 of the IT Act took the plea that they are merely an E-commerce provider acting as an intermediary; that they are not involved in the manufacture, sale or purchase of the products by the sellers; that they only provide a website-portal as a technological interface to arms-length sellers with the potential and actual purchasers-customers of the sellers, and that the website provides for an adequate take-down policy for anyone complaining of trademark infringement by a hosted seller. The Defendants also submitted that no actual sales of products featuring the Plaintiff’s marks have yet transpired on Darveys.com. The Plaintiff pleaded that Defendants are themselves engaged actively in offering for sale counterfeits on their website Darveys.com, and in meta tagging, and that therefore the Defendants act together jointly as much more than a mere intermediary as claimed; that the customers are in fact of the Defendants themselves than of the hosted sellers, and that thus the Defendants themselves infringe and so are disentitled to shelter under Section 79 of the IT Act. By consent of parties, the court framed the availability of Section 79 defense as an issue to be decided as a pure question of law without any evidence as no relevant fact was in dispute. No other issue was framed except the pro forma issue of what reliefs to decree if Defendants failed on the Section 79 issue.

The question that therefore needed addressing was whether qua an E-commerce platform such as a website that happens to have an active and substantive role in the management of and control over the information, data or communication link made available by it or hosted by it, such information, data or communication link could still be treated as that of a “third party” as featuring in Section 79 (1) of the IT Act that exempts E-commerce platforms as intermediaries from liability, or whether such treatment is unwarranted? Whether it should instead be treated as of itself (of the E-commerce provider rather than of any third party) that is to say as owned by or belonging to itself (than to any third party)? A related question that arises is whether an E-commerce platform that happens to have the kind of management and control as described above would nevertheless be considered as receiving, storing or transmitting or providing services with respect to a particular electronic mere “record” as featuring in  the definition of an intermediary in Section 2(w) of the IT Act, or whether the described role is doing more than dealing with mere record?

In its decision, the Court analyzed the concept of E-commerce platforms of various business models and functioning thereof, and noted that an examination of various tasks such as provision of transportation, quality assurance, authenticity guarantees, reviews, collection of payment, advertisement and promotion of the product, enrolling members upon payment of membership fees, using trademarks through meta-tags etc., when performed by an E-commerce platform or an online marketplace, “..would be key to determining whether an online marketplace or an e-commerce website is conspiring, abetting, aiding or inducing and is thereby contributing to the sale of counterfeit products on its platform” thus rendering the conduct of the platform as more than that of merely an ‘intermediary’.

The Court analyzed the functioning of the website Darveys.com in light of the above test and noted that as per its own claims and policies, Defendants themselves take responsibility for the authenticity of the goods, themselves arrange for the transport and delivery of goods, and themselves maintain and change prices of the goods-products at their own discretion. The Court further noted that the sellers are unknown and that the Defendants, in fact, exercise complete control over the infringing products on Darveys.com.

The Court opined that “While the so-called safe harbour provisions for intermediaries are meant for promoting genuine businesses which are inactive intermediaries, and not to harass intermediaries in any way, … e-commerce platforms which actively conspire, abet or aid, or induce commission of unlawful acts on their website cannot go scot free.”. Thus, the Court while holding “The role of Darveys.com is much more than that of an intermediary.”, concluded that “… if the sellers themselves are located on foreign shores and the trade mark owner cannot exercise any remedy against the said seller who is selling counterfeits on the e-commerce platform, then the trade mark owner cannot be left remediless.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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