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”.”

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 Kamdhenu Limited v Aashiana Rolling Mills Limited [I.A.647/2018 in CS (Comm.) 90/2018], a single judge [Prateek Jalan, J.] of the High Court of Delhi vide judgment dated May 12, 2021, ruling in the favour of the defendant, has held prima facie that published standards constitute prior publication of a design.

Section 4(b) of the Design Act, 2000 (the Act) states that “A design which – has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or…shall not be registered”. The question therefore arises if limited disclosure for compliance with published industry standards amounts to publication in a way?

The plaintiff contended that conformity to acceptable standards for production of goods (published standards) cannot render a design prior published. It further submitted that such a finding would denude several designs of protection by reason merely of compliance with published standards. The defendant contended that the plaintiff’s design was not an original design, but one which had been disclosed by publication prior to the date of the plaintiff’s application for registration, contrary to Section 4 of the Act. In support of its claim, the defendant relied on procedures in several International standards such as British Standard B500C, the German Standard of 1984, the Polish Standard of 2006, International Standard 6935-2 of 2007 etc.

The court accepted the defendant’s claim that such compliance with published standards requires approval from the members of the organization. The design is therefore circulated among all the members which amounts to publication. The court further observed that, “if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind’s eye and should not have to depend upon his own originality to construct the design from the ideas which the document may put into his head.”

The court concluded and held that compliance with published standards is sufficient to constitute prior publication. Therefore, the design under the present case, was incapable of registration under the Act. In addition, it was stated that, “The situation would have been different if the standard had been of a characteristic which was not related to the design but to some other feature of the product, for example, the length of the rod, its weight, etc. Where the novelty claimed by the owner of the registered design resides in the very element which is described in the standard with a reasonable degree of specificity, the design cannot be said to be novel or original.”

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In the matter of N. Dinesh Kumar v. Shweta Khandelwal [Miscellaneous First Appeal No. 790/2021], a Single Judge [P. Krishna Bhat, J.] of the Karnataka High Court vide judgment dated March 15, 2021, held that the main question that arises for consideration is – “whether there is a likelihood of confusion arising between the two trademarks, in the mind of a ‘quintessential common man’ who looks at any one of them for a fleeting second and whether he is likely to take it for the other trademark?”

Section 2(1)(h) of the Trademarks Act, 1999 defines “deceptively similar”.—A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion”. The section does not specify to whose eyes should there be near resemblance. Nor does it specify the type of person whose likelihood of confusion or deception should be determinative. The test can be from the perspective of several possible different persons such as either the quintessential common man or the participant in the relevant channel of trade or the informed consumer. 

The name ‘Matru Ayurved’ was used by the Plaintiff  for doing business since 2015. Defendant started a business with the name ‘Matruveda’ in the year 2018. In the suit, the City Civil Court granted a temporary injunction restraining the infringement and passing off of the mark. 

In appeal before the Karnataka High Court, Defendant argued that the “plaintiff had started her business under the tradename and trademark ‘Matru Ayurveda’ which is laid inside a logo and similarly the appellant/defendant had started his business under the tradename ‘Matruveda’ with a logo and there is no such resemblance between the same as will lead any purchaser of the products of either party to confuse between the same”. The Defendant also argued that there were several other manufacturers who are using trademarks closely similar to the trademarks of the parties with the prefix ‘Matru’.

Vacating the order of the City Civil Court, it was held by the High Court that while deciding such cases, one should have in mind “the ‘quintessential common man’ who goes to the neighbourhood shop with the idea of purchasing a product of his liking. This ‘quintessential common man’ is neither blessed with the wisdom of Solomon nor the trained eyes of Sherlock Holmes. …In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered.

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 M/s Phenomenon Agents Limited v. Ganga Devi [Com.O.S.No.9485/2018], a Single Judge [H.R. Radha, J.] of the District Court of Bangalore vide an order dated May 24, 2021, granted a perpetual injunction restraining the defendant from using the mark ‘SMART AKAI’ and ‘GOLDEN AKAI’ and/or any other mark deceptively similar to the plaintiff’s registered ‘AKAI’ mark and ordered to pay Rs 1,00,000/- as damages to the plaintiff.

Section 135(1) of the Trademarks Act, 1999 provides that ‘the relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure’. The question can arise whether proof of at least some actual damage is required to succeed on opting for damages instead of account of profits. Further, even if it is not required to succeed on ordinary damages,  whether it is required to succeed on exemplary damages? 

The plaintiff contended that its registered  trademark ‘AKAI’ has become a household name in India since 1990 and the defendant has infringed and passed off its goods under the name ‘SMART AKAI’ and ‘GOLDEN AKAI. The plaintiff claimed that it suffered intangible loss in terms of loss of confidence and trust of its customers. Taking loss of goodwill and reputation into consideration,  it should be awarded exemplary damages of Rs 1,00,000/-. The plaintiff however could not adduce any evidence to be able to justify the quantification.

Without filing its Written Statement, the defendant appeared through its counsel only for arguments. 

Decreeing a perpetual injunction, the Court held that though “the plaintiff has not established the actual damage or damage caused to the goodwill or its reputation. Nor has it examined any independent witness to establish that the defendants’ action has resulted in dilution of trust and confidence of the customers in AKAI products…However having regard to the peculiarities of such type of cases involving intellectual property rights and the established principles of law that rough and ready calculation for award of general damages can be adopted,..”.

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