In the matter of Burberry Ltd v. Aditya Verma, [R.F.A (IPD) 4/21] a Single Judge [Asha Menon, J.] of the High Court of Delhi, vide order dated March 29, 2022, held that the testimony of an expert witness is not required in cases of trademark infringement and passing off matters, involving identical or similar trade marks.

Order XXVI Rule 10(2), Code of Civil Procedure (‘CPC’) provides, “The Report of the Commissioner and the evidence taken by him …shall be evidence in the suit and shall form part of the record… the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report….” The question for consideration is whether a report submitted by an expert can ‘form part of the record’ without expert testimony.

The Appellant filed a suit restraining the Respondent from violating its rights in the alleged registered “BURBERRY” marks. A Local Commissioner was appointed by the Trial Court to investigate the Respondent’s inventory. But the Report submitted by the Commissioner was discarded by the Trial Court on the ground that the Appellant had not examined the Commissioner in the witness box and no other evidence was produced to establish that the goods seized were counterfeit. In the present appeal against Trial Court’s order, the Appellant argued that even if the Local Commissioner was not examined in the court, the Report still formed evidence that cannot be overlooked and that “BURBERRY” is registered in the name of the Appellant and this fact stood admitted by the Respondent, and thus there was sufficient evidence to protect the interests of the registered proprietor of the trademark.

The High Court observed that the said Report submitted before the Trial Court included sufficient proof of the unauthorized use of the Appellant’s mark. Further, since there were no objections raised by either party on the said Report, the High Court accepted the contentions made by the Appellant.

The High Court while distinguishing a criminal case from the case of infringement of registered trade marks or of passing off held that “There is no call to have an expert witness to testify to the use of an identical or similar Trade Mark…the learned Trial Court fell into grave error in holding that the absence of expert testimony disproved the case of infringement and passing off.…” 

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 Makemytrip India Private Limited v. Booking.Com B. V & Ors. [CS(COMM) 268/2022], a Single Judge [Prathiba M. Singh J.] of the High Court of Delhi, vide order dated April 27, 2022, held that the invisible use of a trademark as a keyword that tends to mislead consumers can constitute as passing off.

Section 27(2) of the Trade Marks Act, 1999, reserves a proprietor’s right to initiate action against “passing off goods or services as the goods of another person or as services provided by another person.” The question is whether ‘passing off’ would include the adoption of a deceptively similar mark as a keyword in the Google Ads Program by third parties or would that adoption be permissible?

The Plaintiff argued that Booking.Com [Defendant No. 1], has put bid on the keyword ‘makemytrip’ on the Google Ads Program in order to ensure that their website is shown in one of the top three search results, thereby causing misrepresentation through an invisible use. The Plaintiff further asserted that such unauthorized search result by the Defendants causes harm to the goodwill and reputation associated with their alleged trademark ‘MakeMyTrip’.

The Defendants contended that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword even by the competitors. The Defendant also contended that monopoly cannot be claimed for generic words ‘make’, ‘my’, ‘trip’, and hence such use is permitted under the Trade Marks Act, 1999.

The Court while acknowledging the technological advancement held that “The traditional concept of ‘misrepresentation’ and ‘passing off’ consists of the Defendant adopting for his own goods or business some material such as a name or a mark which is deceptively similar to the claimant’s mark. In the opinion of this Court, restricting an action of passing off to such an ‘adoption’ might be obsolete in view of the technological advances in today’s digital world… impact of Google Ads Program can be best described by way of an illustration: If a person is looking to buy an air ticket and types `MakeMyTrip’ in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket…the user has been directed to a competing website and a direct business loss has been caused to the trade mark owner’s business…Thus the “invisible” use of a mark as a keyword can constitute passing off as a matter of principle.”

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 Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Limited [CS(COMM) 551/2020], a Single Judge [Asha Menon J.] of the High Court of Delhi, held that unless registered as separate words, parts of a trademark cannot be subject to exclusive use by the proprietor.

Section 15 of the Trade Marks Act, 1999 provides, “Registration of parts of trademarks and of trademarks as a series. — (1) Where the proprietor of a trademark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trademarks…”. The question that arises here is whether owning a registration of a trade mark provides ‘exclusive use of the parts’ thereof by the proprietor or if registration of individual parts is mandatory to claim exclusive use thereof.

The Plaintiffs argued that their mark ‘Rooh Afza’ fits the definition of a ‘well-known trade mark’ under Section 2(1)(zg) of the Trade Marks Act, 1999 and that the word ‘Afza’ had acquired a secondary meaning and thereby claimed exclusive rights to use the term ‘Afza’. The Plaintiffs further claimed that they had been making and selling their product/sharbat under the name ‘Rooh Afza’ since 1907, long before the Defendants registered their trademark (Dil Afza) in 1942. 

The Defendant contended that the Plaintiffs have not registered individual parts of the trademark separately, and can therefore not claim exclusive rights over the parts. The Defendant also contended that monopoly cannot be claimed for common words used in the field and also the fact that the Plaintiffs had failed to show that ‘Afza’ had obtained a secondary meaning to relate to their products exclusively since there have been several ‘sharbat(s)’ using the name.

The Court, referring to Section 15(1) of the Trade Marks Act, 1999, dismissed the Plaintiffs’ application and held that “The plaintiffs do not state that they had applied for and obtained registration for the exclusive use of the word ‘Afza’. Thus, it is clear that the exclusivity that the plaintiffs can claim is to the complete name ‘Rooh Afza’ and not to either of the two words that constitute the trademark.”.

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 HTC Corporation v. Mr. LV Degao & Ors. [Civil Suit (Commercial) No. 263 of 2020], Single Judge [Asha Menon J.] of the High Court of Delhi, vide order dated April 6, 2022, has effectively held that an action of not only passing off but also infringement can be brought against a registered trademark.

Section 29(4) of the Trade Marks Act 1999 (“Act”) states that “A registered trade mark is infringed by a person who…uses in the course of trade, a mark…” Further, section 124(5) states that “The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order…” The question that arises is whether ‘infringement of a trade mark’ under section 124(5) r/w section 29 (4) would include infringement only by an unregistered trademark or also by another registered trademark.

The Plaintiff alleged that Defendant registered a mark identical to its ‘HTC’, against which registration it had also filed rectification proceedings. The Plaintiff contended that Defendant’s use of an identical mark on similar goods amounted to infringement and passing off.

The Defendant submitted that an infringement action can only be brought if the alleged infringer has no registration. The Defendant stated that since it was the registered proprietor of the mark ‘HTC’, the Plaintiff’s case had no merits.

The court held that “Section 29(4)… is applicable only against a defendant, who does not have proprietorship in a registered Trade Mark. Would that mean that the court when faced with a situation as prevailing in the present case, would be helpless and would it also mean that the plaintiff could seek only protection against passing off. This Court is of the opinion that since Section 124 deals with a situation where the validity of the registration of the trade mark is being questioned and Section 124(5) empowers the court to pass interim injunction orders, it is only logical that even when there are two registered Trade Marks involved and the plaintiff seeks protection against the user of a similar or identical trade mark, which has been registered in the defendant’s name, the court can consider not just the question of passing off, but also of infringement since Section 124 of the T.M. Act is in relation to a trade mark and not to mere passing off.”

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In the matter of ANI Technologies Pvt. Ltd. and Ors. v. State of Karnataka and Ors., [W.P. No. 32942 of 2017 (GM-RES)], a Single Judge [Maheshan Nagaprasanna, J] of the High Court of Karnataka vide order dated December 20, 2021, declared that knowingly infringing or abetting copyright infringement is a cognizable offence.

Section 63 of the Copyright Act, 1957 (“Act”) provides that, “Any person who knowingly infringes or abets the infringement of the copyright in a work…shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years…”.  Schedule II of the Code of Criminal Procedure, 1973 (“CrPC”) provides that offences, if punishable with imprisonment for less than 3 years or with fine only, are non-cognizable. The question that arises is whether the quantum of punishment viz. “not be less than six months but which may extend to three years” in section 63 of the Act makes the offence of copyright infringement cognizable or non-cognizable?

A complaint was registered against the Petitioner for infringing the second Respondent’s copyright, and an investigation was ordered by the Additional Commissioner of Police under Sections 63 and 64 of the Act. The Petitioner argued that punishment under Section 63 is less than 3 years of imprisonment. This makes the offence non-cognizable as per Schedule II of the CrPC and the police does not have any power to launch an investigation into the matter. The Respondents argued that Section 63 is indeed cognizable, and there is no fault in the investigation directed.

The Court, while referring to Schedule II of the CrPC, held that the offence of copyright infringement would fall under the category of a cognizable and non-bailable offence. It was held that “…what is to be seen is the maximum punishment. In a given case, the competent criminal Court can sentence an offender under Section 63 of the Act to three years imprisonment. Exact three years is a possibility in a given circumstance. Therefore, it would fall under Item No. 2 of Schedule II of the Cr.P.C.” On the point of comparison with Section 64 of the Act, it was held that, “Merely because a separate provision under Section 64 of the Act which depicts power of search and seizure by the Police is also found in the statute, it does not take away cognizability of the offence punishable under Section 63 of the Act.”

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