In the matter of Nishi Gupta vs. Cattle Remedies, [W.P. (C) 13710/2018 & CM Appl. 53530/2018], a single judge [J.R. Midha, J.] of the High Court of Delhi vide judgment dated June 04, 2021, dismissing the writ petition challenging an order by the IPAB (Intellectual Property Appellate Board), has effectively held that the writ petitioner’s unawareness about an earlier registered mark is an unacceptable defense against the removal of impugned trademark for deceptive similarity with the earlier registered mark.

Section 11 of the Trademark Act, 1999 (the Act), states that “a trademark shall not be registered if, because of …its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.” The question that arises is whether having no actual knowledge about the earlier registered mark negates ‘similarity’ and thus constitutes a defense to the applicability of Section 11 to the impugned mark? Or is the test of similarity an absolute one, independent of knowledge, awareness and cognizance? 

In the instant case, the petitioner brought a writ petition challenging the order passed by the Intellectual Property Appellate Board (IPAB) through which the petitioner’s trademark was removed as per section 57 of the Act, from Register of Trademark as it was found to be violative of section 11 of the Act. The petitioner is the owner of the trademark UTROTON which was registered in 2010 under class 31, whereas the respondent is the owner of the trademark UTEROTONE, which was conceived and adopted for veterinary preparations in 1968 and was registered in 1991 under class 5.

The petitioner contended that she had no knowledge of the respondent’s trademark and her trademark and the respondent trademark are different and used for different purposes. The respondents submitted that both the product and their usage are similar and they contain many common ingredients. Moreover, the stark similarity reflects that the petitioner was well aware of the respondent’s mark and is making false claims through the petition.

The Court, upholding the IPAB order, finding that the mere dropping of an alphabet was mala-fide and made no difference to the visual, structural, and phonetic similarity between the two, held that since the Register is open to public inspection and public search, an applicant is deemed to be aware or have constructive notice of its prior entries. It observed: “…if the trademark having an element of prior continuance and use, has been copied, no amount of explanation, even if it is plausible, is capable of defending infringement of trademark of such prior user.” 

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.

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In the matter of Machani Infra Development Corporation Private Limited v. K. Anand, Case No. D2021-1352, the Sole Panelist [Assen Alexiev] of an Administrative Panel at the WIPO Arbitration and Mediation Center in a decision dated June 18, 2021, ruling in favour of the respondent, denied the complaint seeking transfer of the disputed domain name registration on the basis of complainant’s trademark rights in the domain name.

According to the Uniform Domain Name Dispute Resolution Policy (UDRP), demonstration of legitimate interests is an essential element to be proven in an administrative proceeding. Paragraph 4(c) of the Policy states the circumstances in which rights and legitimate interests are demonstrated by the respondent based on evidence, within which one of the said circumstances has been mentioned as follows: “or (ii) you (an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.” The question that arises is whether a mere surname/family name can satisfy the requirement to have been ‘commonly known by’? Or whether use of first name, possibly in conjunction with surname, is necessary to prove the existence of legitimate interest in the domain name? Is the first name a compulsory component of a domain name for it to have been ‘commonly known by’? 

In the administrative proceeding, the complainant contended that it has unregistered trademark rights in “MACHANI”, which is their house mark and brand identity and enjoys enormous reputation and goodwill. As per the complainant, the disputed domain name is identical to its trademark and the respondent has no rights or legitimate interests in it. The respondent contended that his rights and legitimate interests in the domain name stem from his surname “Machani”, which is a common surname.

The Panel, in addition to holding on the basis of the evidence that the term over which the unregistered trademark rights was claimed, is a common first or family name and thereby not inherently distinctive, found that the respondent had legitimate interests in the domain name by virtue of the fact that the term “Machani” reflected in the said domain name alluded to his family name.

The Panel, whilst discerning the element of rights and legitimate interests in the decision, interpreted the Paragraph 4(c) (ii) of the UDR Policy such that “A respondent can be found to be commonly known by a domain name under the Policy Paragraph 4(c) (ii) where it reflects his personal name, and the Respondent has submitted evidence that this is so.”

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.

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In the matter of Deepa Jayakumar v. AL Vijay and Ors. [O.S.A.No.75 of 2020], a Division Bench [R. Subbiah and S.K.S Kurup, JJ.] of the Madras High Court, by judgement dated April 16, 2021, dismissing an appeal filed by the plaintiff-legal heir of deceased person against denial of an interim injunction under O.XXXIX R1&2 of the CPC pending trial of the suit, has effectively held that the right to privacy extinguishes with the life of a person and cannot be inherited or enforced posthumously.

Article 21 of the Constitution states that “No person shall be deprived of his life or personal liberty except according to procedure established by law.” The statutory interpretational issue in this case can be seen to be whether the right to privacy, recognized as part of right to life and liberty, is guaranteed even posthumously, inuring to the benefit of the legal heirs/estate of a deceased ‘person’ or whether it is available only to the ‘person’ during the lifetime of that ‘person’. Does ‘person’ in Article 21 refer only to a living ‘person’ or also to a deceased ‘person’? 

The plaintiff, Dr. Jayalalitha’s niece, seeks in her suit to restrain the film producers – defendants from making and releasing a film, web series, etc. on the life of Dr. Jayalalitha, the former Chief Minister of Tamil Nadu.

The plaintiff contends that Dr. Jayalalitha’s life cannot be captured without mentioning her and her family, apprehending the film would sensationalize her aunt’s life for commercial gain and posthumously violate her privacy. She also pointed to the Court several instances from the already released web-series that were allegedly scandalous and damaging to her aunt’s dignity and legacy.

The defendants submit that their biographical film is based on information available in the public domain, and that they have purchased the rights to the book ‘Thalaivi’. As regards the web series, it is submitted that it was an authorized dramatization of an already published book – “The Queen”. Plaintiff’s locus to assert posthumous privacy rights on behalf of her late aunt is disputed on the ground that privacy rights do not subsist after a person’s death.

The Appellate Court, while confirming the Trial Court’s prima facie view against the plaintiff pending trial and the consequent declining of an interim injunction, observed that “…privacy…earned by a person during his or her lifetime, extinguishes with his or her death…the reputation earned cannot be inherited like…property by…legal heirs… Therefore, we are of the opinion that “posthumous right” is not an “alienable right”…”.

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In the matter of Prateek Chandragupt Goyal v State of Maharashtra and Another [Criminal Writ Petition No. 62 of 2021], Single Judge [M. Pitale, J.] of the High Court of Bombay exercising supervisory jurisdiction under Section 482 of the Cr.P.C., vide order dated April 20, 2021, quashed the criminal First Information Report (FIR) registered by the police against the Petitioner for the offence of falsely applying a trademark under Section 102(2) of the Trade Marks Act 1999, holding effectively that mere referential use of registered trademarks in news articles does not automatically amount to false application. 

Section 102(2) of the 1999 Act criminalizes falsely applying someone else’s trademark when one “(2) …(a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods;…” The question that arises is whether when one merely referentially mentions someone else’s mark solely as a pointer to the owner of the trademark, or otherwise only nominatively uses such trademark, does one still ‘apply’ the mark ‘to’ goods or services or any package containing goods. 

The FIR alleged the offence of falsely applying Sakal Media Group (SMG) and Sakal Times (ST)’ registered trademarks in news media articles published on the news portal ‘Newslaundry’, prominently featuring the registered trademarks and claiming that online searches for the word ‘Sakal’ directed users to the said news articles unfairly causing loss to image and finances. 

The Petitioner challenged this FIR against him as being unjustifiably registered on the ground that the said marks were not applied by him in relation to any goods or services but instead were merely mentions solely to convey that the articles pertained to SMG. He claimed protection under nominative fair use. 

The High Court observed that “…the mark shown in the two articles is indeed the ‘trademark’ of Sakal Media Group … but, the said mark being shown in the articles cannot be said to be in the context of either ‘goods’ or ‘services”  held that “mere use of the registered trade mark of the Sakal Media Group in articles authored by the petitioner and published by the news portal ‘Newslaundry’, do not fit into the definition of false application of the trade mark in relation to goods or services. Therefore, in the absence of ingredients of the offence being made out, even on admitted facts, the First Information Report could not have been registered.” . Accordingly, the writ petition was allowed and the FIR was directed to be quashed. 

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.

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In the matter of Phonepe Private Limited Vs. Ezy Services and Ors. [2021 SCC OnLine Del], a single-judge ( C. Hari Shankar, J.) of the Delhi High Court vide an order dated April 15, 2021 declining an interim injunction, has held prima facie that exclusivity cannot be claimed over a part of a registered mark.

The suit claims that the mark “BharatPe” infringes the registered trademark “PhonePe” especially because “Pe” is an invented word as it is not found in the English dictionary and is an essential and dominant feature of the composite trademark “PhonePe”. The defendants claim that the plaintiff is not the registered owner of the words “Pe” or “Pay”. Rather, the plaintiff has only registered the whole word “PhonePe”. The defendants place reliance on Section 15 and 17 of the Trademarks Act, 1999, contending that the comparison of competing trademarks must be as a whole and should not be dissected. 

Section 17 of the Trademarks Act, 1999 states that “(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.”(2) Notwithstanding anything contained in sub-section (1), when a trade mark–(a) contains any part–(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. The question that arises is whether taking a trademark as a whole without exclusivity to any part of it prevents identification of and attention to a dominant and essential feature.  

The court observed that both the marks “Phone Pe” and “Bharat Pe” are composite marks. Applying the Anti-Dissection Rule, the court held that “there is no infringement that can be claimed on the basis of part of the registered trademark, the plaintiff cannot claim exclusivity solely over the suffix “Pe” and can only do it with respect to the entire mark”. The court also took notice of the fact that the plaintiff and the defendants were involved in different kinds of services and that the customers know the prima facie difference between the two. It said that that the trademarks of plaintiffs (Phone Pe) and the defendants (Bharat Pe) are not deceptively or confusingly or phonetically similar barring the common suffix “Pe”.

Accordingly, the court had held “Had, instead of “Pe”, the plaintiff used the suffix “Pay”, i.e. had its registered trade mark been “PhonePay”, the plaintiff would clearly not have been able to claim any exclusivity, over the “Pay” suffix, or bring a case for infringement against the defendants, had their trademark been “BharatPay”. By misspelling “Pay” as “Pe”, the legal position cannot change. The plaintiff would, therefore, be as entitled to claim exclusivity over the suffix “Pe”, as it would have been, had the suffix in its trademark been “Pay”.”

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