In the matter of M/S DRS Logistics (P) Ltd & Anr. v. Google India Pvt. Ltd. & Ors [CS (COMM) 1/2017], Justice V Kameswar Rao of the High Court of Delhi (the “Court”) vide judgment dated October 31, 2021, held that invisible use of trademark to divert traffic from proprietor’s website to advertiser’s website amounts to infringement of trademark.

Sections 29(9) of Trade Marks Act, 1999 (the “Act”) state that “where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation …”. That question that arises is whether ‘spoken use’ would include invisible use of a registered trademark in the form of keywords?

Plaintiff was the owner of the registered trademark, “Agarwal Packers and Movers” and sought to restrain Google from using or permitting third parties to use their registered trademark either as a keyword or as a trademark. It was contended by the Plaintiff that keywords trigger search results on Google by way of Google Ads. These keywords are used by third-party infringers using Google’s services for inserting their infringing advertisements when users searched for the Plaintiff, amounting to use as per Section 29(9) of the Act.

The Defendant contended that Google Ads is an advertising service wherein advertisers can create and display their online advertisements in relation to their websites and keywords provided by them are just backend triggers used for displaying of Ads and do not amount to use within the meaning of Section 29(9) of the Act.

Granting protection to the plaintiff’s registered trademark, the court noted that “a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark”. The court further observed that, “it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29”.

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 Metso Outotec Corporation v Registrar of Trade Marks [Commercial Appeal (L) No. 18137 & 18138 of 2021], a Single Judge [G.S. Patel, J.] of the High Court of Bombay on October 6, 2021, allowed an appeal and quashed two trademark refusal Orders passed by the Registrar of Trade Marks, while clarifying that a refusal order cannot merely note submissions without explicit consideration of the submissions made by the Applicant.

Section 18(5) of The Trade Marks Act, 1999 reads that “In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.” The interpretation of what would count as “writing the grounds” in a refusal order or a conditional acceptance passed by the Registrar requires clarity. Would mere noting the progression of the prosecution and duplicating the relevant objection suffice or would the Registrar be required to put in writing the process and grounds for arriving at a decision?

The Registrar of Trade Marks, Bombay had passed Orders refusing two trademark applications. The Registrar, in its Orders claimed to have noted submissions made on behalf of the Applicant and simply recorded that the marks applied for registration are objectionable under Section 9 of the 1999 Act for being descriptive. The Applicant filed the present appeal arguing that no reasons were stated for refusal order and that refusal by dissecting the trademark is not allowed and the trademark as a whole cannot be rejected as a result of such dissection. 

The High Court, at the outset noted that the Orders contained no reasons and merely recite a Section and further observed that “…that process of analysis must surely reflect in the order itself. It is not permissible for the authority to merely note that submissions have been made and directly arrive at a conclusion with no findings or consideration of the submissions at all… the total elision of all reasons, is contrary to the statutory mandate of Section 18(5) in Chapter III of the Trade Marks Act 1999. That Section requires written reasons if an application is rejected or only conditionally accepted. The grounds for the refusal or conditional acceptance and also, importantly for our purposes, the materials used by the Registrar must be reflected in the order” [colly]. Accordingly, the appeal was allowed, and the refusal orders of the Registrar of Trade Marks were 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 ITC Limited vs CG Foods (India) Private Limited [O.S.No.177/2021], a Division Bench [Aravind Kumar, J. and Pradeep Kumar Yerur, J.] of the High Court of Karnataka dismissed an appeal against the lower court’s order denying temporary injunction to the Plaintiff and held that merely showing some ‘similarity’ in the non-essential features of rival marks would not suffice to constitute infringement or initiate a passing off action.

Section 29(2) of the Trade Mark Act, 1999 states: “A registered trade mark is infringed by a person who…uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark … by such registered trade mark; or (b) its similarity to the registered trade mark … by such registered trade mark; or (c) its identity with the registered trade … is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” The question arises whether ‘similarities’ and not dissimilarities is the relevant test for likelihood of deception and would ‘similarity’ in unessential features amount to mere copying without the strength to deceive?

The Plaintiff claimed that the Defendant had tarnished their goodwill and reputation by incorporating a similar colour scheme of red and orange in packaging its products. They further claimed that the Defendant’s product was deceptively similar to their product and the Defendant’s actions constituted passing-off and infringement of the Plaintiff’s copyright in the product’s trade dress. The Plaintiff contended that extent of similarity of the Defendant’s products is sufficient to ‘deceive’ the relevant class of consumers. The Defendant denied all the allegations of passing-off and infringement.

The Court in the present case observed that “Similarity in essential features is what amounts to misrepresentation as it deceives or is likely to deceive the buyer into thinking he has purchased what he wanted, when in reality, he has purchased a different product. Similarity in unessential features, howsoever strong, amounts to mere copying without the strength to deceive. The law of passing off does not concern itself with allegations of ‘unfair copying’ of this kind – it is interested to protect plaintiff only against material misrepresentation’ of his goods.”

Therefore, the Court concluded that there is no infringement on behalf of the Defendant and stated that “the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence.”

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 Yennes Infotech (P) Ltd. v. The Managing Director, eNoah Solution Pvt. Ltd. and Ors. [O.S.A. No. 31/2020], the division bench [Sanjib Banerjee, C.J. and P.D. Audikesavalu, J.] of the High Court of Madras (the “Court”) vide judgement dated August 13, 2021, held that a copyright infringement suit cannot subsist against a licensee for non-payment of consideration.

Section 30 of the Copyright Act, 1957 (the “Act”) states that “The owner of the copyright in any existing work of the prospective owner of the copyright in any future work may grant any interest in the right by licence in [writing by him] or by his duly authorised agent.” The question that arises is whether the ‘owner of a copyright’ can rescind the ‘grant of any interest in right by license’ on account of unpaid licensor’s right.

The Appellant-Plaintiff customised a computer programme (the “work”) for the Respondents-Defendants. However, the Respondents-Defendants failed to pay the balance consideration to the Appellant-Plaintiff. As a consequence, the Appellant-Plaintiff brought a suit for copyright infringement against the Respondents-Defendants. The Appellant-Plaintiff had approached the Court in an appeal against the order of the Trial Court rejecting the plaint.

The Appellant-Plaintiff contended before the Court that it is the owner of the copyright in the work and sought injunction against the Respondents-Defendants on account of infringement.

On the other hand, the Respondents-Defendants contended that there exists a ‘contract of service’ between the parties. In light of such contract of service, the Respondents-Defendants claimed sole ownership over the work which would preclude the Appellant-Plaintiff from bringing any action of copyright infringement.

The Court observed that the contract between the parties was one of a copyright license wherein the Appellant-Plaintiff had granted a valid license to the Respondents-Defendants for using the work. Further, the Court applied Section 30 of the Act and held that “Again, like in the case of assignment of copyright, a licence when granted cannot be taken back by the owner of the copyright unless it is surrendered or it lapses for non-use by operation of law. The unpaid licensor’s rights lie in a claim for money.” Therefore, the Court upheld the order of the Trial Court in rejecting the plaint and held that the Appellant-Plaintiff could not have claimed any relief for copyright infringement against the Respondents-Defendants.

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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