PASSING OFF ACTION: UNFAIR COMPETITION

The passing off action arises when an unregistered trade mark is used by a person or entity being not the owner of trade mark in relation to goods or services of the trade mark owner. It is used to protect goodwill attached with goods or services.
Perry vs Truefitt (1842) 6 Beav. 66 is a famous English case where the tort of passing off was formally articulated. Christopher Wadlow (The Law of Passing-off, Unfair Competition by Misrepresentation) account of the development of the tort of passing-off is a contemporary authority on the topic. This is because Wadlow wrote a detailed history of the tort of passing-off and Laddie J cited this historical account with approval in Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWCA Civ 1132.
The modern tort of passing off, as per Lord Diplock in Erven Warnink BV v. J. Townend & Sons: (1979) 2 All ER 927 also known as the “Advocaat case” and as approved in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Limited: 2001 (5) SCC 73 and reiterated in Heinz Italia and Another v. Dabur India Limited: 2007 (6) SCC 1, has five elements:
(1) a misrepresentation,
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably foreseeable consequence), and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
In Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873, the House of Lords (also known as the Jif Lemon case) held that to establish right of action, the claimant must show following three elements sometimes referred to as the ‘classic trinity’ to establish passing off :
• The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors;
• The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the claimant; and
• The claimant may suffer damages because of the misrepresentation.
India is a signatory to the Paris Convention for the Protection of Industrial Property, 1883. The Article 10bis reads as follows:

Article 10bis
Unfair Competition
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
(i) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
(iii) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the “
The detail historical account leading to present Article 10bis is aptly described by Christopher Wadlow in The Law of Passing-Off: Unfair Competition by Misrepresentation (London: Sweet & Maxwell);
TYPES:
Clssic/Orthodox passing off:
In classic or orthodox passing off, the classical trinity, as expounded in Jif and other cases, is normally be applicable and is applied. In other words, a man is not to sell his goods or his services under the pretence that they are those of another man (Perry v. Truefitt per Lord Langdale (M.R.). This is the classic form of passing-off.
Extended passing off:
One of the instances where passing off is actionable is the extended form of passing off, where a defendant’s misrepresentation as to the particular quality of a product or services causes harm to the plaintiff’s goodwill. An example of this is Erven Warnink v J Townsend & Sons (Hull) Ltd [1979] AC 731, in which the makers of advocaat sued a manufacturer of a drink similar but not identical to advocaat, but which was successfully marketed as being advocaat. In extended passing off, one can apply either the classical trinity or the Advocaat tests.
Reverse passing off
Another variety, somewhat rarer is so-called ‘reverse passing off’. This occurs where the defendant markets the plaintiff’s product as being the defendant’s product (John Roberts Powers School v Tessensohn [1995] FSR 947.
It will be recalled that orthodox passing off entails the defendant representing that his product is the plaintiff’s product. In many cases, reverse passing off can be explained under the ordinary rules: for example where a defendant may represent that he or she made goods which were in fact made by the plaintiff so as to pass off his own business as a branch of the plaintiff’s. A person can be benefited immensely by taking course of reverse passing off because he does not have to work on the manufacturing of a unique product, instead, he take an already established product and pass off the same under his own trademark as being his product. The difference between this in comparison to the classical passing off is regarding the accessory of passing off. In classical passing off the trademark is being used as the accessory where as in reverse passing off, it is the goods that are being used as accessory.
TYPICAL CASE OF PASSING OFF:
In T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr ((2011) 4 SCC 85), the Hon’ble Supreme Court of India held that it was a case of passing off and not dilution of trade mark:

100. The respondent company’s mark `Eenadu’ has acquired extra-ordinary reputation and goodwill in the State of Andhra Pradesh. `Eenadu’ newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word `Eenadu’ may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products and services provided by the respondent company.
101. The appellant is a Karnataka based company which has started manufacturing its product in Bangalore in the name of `Ashika’ and started selling its product in the State of Andhra Pradesh in 1995. The appellant started using the name `Eenadu’ for its Agarbathi and used the same artistic script, font and method of writing the name which obviously cannot be a co-incidence. The appellant company after adoption of name `Eenadu’ accounted for 90% of sale of their product Agarbathi.
102. On consideration of the totality of facts and circumstances of the case, we clearly arrive at the following findings and conclusions :
a) The respondent company’s mark `Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company’s products and services are correlated, identified and associated with the word `Eenadu’ in the entire State of Andhra Pradesh. `Eenadu’ means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark `Eenadu’;
b) The adoption of the words `Eenadu’ is ex facie fraudulent and mala fide from the very inception. By adopting the mark `Eenadu’ in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;
…………………………………………..
h) Permitting the appellant to sell his product with the mark `Eenadu’ would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company.
i) Honesty and fair play ought to be the basis of the policies in the world of trade and business.

A trademark which has acquired goodwill in the market is prone to passing off. This passing off is due to the quality of product and its goodwill, which is the biggest contributing factor in a brand success.
Rajni Sinha
Advocate, Bombay High Court

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Fashion Industry: Intellectual Property Right (IPR)

The Fashion Industry is an Intellectual property intensive industry as it involves continuous creation of new and innovative ideas that are commercially exploited. The brand is protected under trademark law, the floral design or any other like pattern on the dress is a design and can be protected under the Designs law and any original artistic work can be protected under the Copyright law.

Design law protects original prints and patterns, unique colour arrangements and novel combinations of elements (protectable or non-protectable) used on apparel and accessories but, in most cases, not apparel designs themselves. How effective is the design law or copyright law in protecting the work of fashion designer either fashion apparel as a whole or its shape, feature, pattern or any other such distinctive feature forming part of apparel?

The Design Act, 2000 defines design as:

d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Hon’ble Delhi High Court has summarised the nature and scope of the Design Act, 2000 under para 12 in case of M/S Micolube India Limited vs Rakesh Kumar Trading trading as Saurabh Industries and others (I.A. No.9537/2011 & I.A. No. /2011 (un-numbered) in CS (OS) No.1446 /2011) and remarked as follows:

  1. The conjoint reading of the aforementioned provisions would reveal that the Design Act is a complete code itself which provides that there is a condition for certificate of registration of the said design u/s 9 and the said design upon registration confers the copyright in the said design for a period of 10 years as envisaged u/s 11 and for further renewable of five years under the said provision. The said term of the Design also indicates that the design right is a statutorily conferred right for limited period and there is no room of any other right to exist except the one conferred by the Act. Likewise, Section 22 provides remedy for piracy of a registered design wherein the said piracy will only happen during the existence of copyright in the said design.
  2. All these provisions provided under the Act are indicators to the effect that infringement/ piracy can only be of a registered design and the said remedy is available during the existence of the said copyright as mentioned u/s 11 of the Act. What follows from the above discussions is that there is no remedy, which is being saved either in the form of common law of passing off or otherwise on the basis of any equity which can be said to be a legally enforceable right available to the party dehors remedy which is available in the self-contained code which is The Designs Act, 2000.

In case of Microfibres Inc vs Girdhar And Co. And Ors (RFA (OS) NO.25/2006), the Hon’ble Delhi High Court while reviewing the single judge order reviewed the scope of the Copyright Act, 1957 vis a vis the Design Act, 2000 in respect of alleged artistic work on upholstery fabrics. The protection of artistic work under two acts was summarised (para 45(i)) as follows:

“If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.

Fabric prints can have copyright protection if the print found on the fabric of clothing is copyrightable to the extent it meets the three requirements for protection: (1) fixation, (2) expression, and (3) originality, since fabric patterns exist separately from the utilitarian nature of the clothing.

Legally, it doesn’t matter whether a design is printed on a piece of fabric or printed on a canvas and displayed in a museum, as long as it meets the minimum requirements for copyright protection, it’s protected.

In case of Rajesh Masrani vs Tahiliani Design Pvt. Ltd. (FAO (OS) No.393/2008) formulated the following issue (para 10) to decide appeal against injunction order, whether textile designs are artistic work or not:

  1. We have heard learned counsel for the parties and have also gone through the relevant pleadings and documents. We feel that the main controversy that arises in the present case is as under:- 

a) Whether the pattern made by the plaintiff on the fabric is ‘design’ or ‘artistic work’?

b) Whether the product in question is the subject matter of artistic work within the meaning of Copyright Act, 1957 as alleged by the plaintiff?

c) Whether the copyright subsists in the plaintiff’s agreements in view of Section 15 of the Copyright Act, 1957?

d) Whether the registration of the work under the Copyright Act is compulsory or registration is not a condition precedent for maintaining the suit for infringement of copyright.

The appeal bench concluded the following after considering the detail process for development of artistic work in instant case:

  1. We are, therefore, of the opinion that the plaintiffs’ work is entitled for protection under Section 2(c) of the copyright Act and is an original artistic work. Since the work is an ‘artistic work’ which is not covered under Section 2(d) of the Designs Act, 2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

TRADE MARK

The Trademark law does not provide protection for fashion designs per se. Instead, trademark law protects brand names, logos, symbols and other optional elements of apparel and accessories, and Design law protects the design, packaging or appearance of apparel and accessories, solely to the extent they identify the source and origin of such products. For example, the brand name and logo hang tag and distinctive pocket stitching on a pair of jeans could be registered as protectable trademarks, and the unique shape of a dress could be registered as protectable design.

Based on existing Indian laws, fashion designers should seek to maximize their protection by (i) Registering copyrights for their original prints and patterns as artistic work under the Copyrights Act (ii) Applying for a design patent for new and nonobvious ornamental fashion designs when the useful life of the design is expected to last more than a few seasons (10+5 years) and (iii) Registering for trademark and/or trade dress protection for brand names, logos etc.

The term of Copyright is one of the longest. Term of a trademark is perpetual subject to periodic renewal and no cancellation action. Designs have the shortest term of 15 years–10 years further extendable to another 5. However, the moment the artwork is applied to any article to give the article an aesthetic appeal, and once the article is commercialized and sold in more than 50 numbers of units, under Section 15(2) of the Copyright Act, the artwork loses its copyright and comes under the realms of the design law. Protection in copyright is granted from the moment it is created whether registered or not. Under Designs Act, 200 protections are available to a person once he applies and thereafter granted a registration for his design. The Act envisages bars in displaying the article in question to general public before the application for grant of Designs registration as it will destroy the novelty criteria.

Rajni Sinha

Advocate, Bombay High Court

Dilution of Trade mark

“Trademark dilution” involves an unauthorized use of another’s trademark for goods and services that do not compete with, and have little connection with, those of the original trademark owner’s goods and services.

The section 29(4) of the Trade Marks Act, 1999 encompasses the principle of trademark dilution, which reads as follows:

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

The entire structure of Section 29(4) is different from the earlier part, and in effect expresses Parliamentary intent about the standards required for a plaintiff to establish dilution of its trademark, in relation to dissimilar goods or products. Under Section 29 (4) apart from the similarity of the two marks (or their identity) that his (or its) mark –

(i) has a reputation in India;

(ii) the use of the mark without due cause;

(iii) the use (amounts to) taking unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Importantly, there is no presumption about trademark infringement, even if identity of the two marks is established, under Section 29 (4).

The cause of action for trademark dilution traces its roots to Frank Schechter’s 1927 article in the Harvard Law Review, The Rational Basis of Trademark Protection. In this article, Schechter observed that many courts had grown impatient with “old theories of trademark protection,” which he believed were insufficient to “serve the needs of modern business.”

The Hon’ble Supreme Court has summarised the discussion on dilution by McCarthy in following terms:-

a) The traditional likelihood of confusion test applies to passing off.

b) If a mark is a well-known mark, then the argument of dilution is to be considered in the absence of confusion.

c) Dilution is a doctrine which should be strictly applied.

d) Standard of distinctiveness required to protect a mark from dilution is very high.

e) Not every trade mark can be protected against dilution.

f) If a mark enjoys a regional reputation it does not deserve protection under the law of dilution.

g) A reputation on a national scale, especially while testing the mark for unrelated goods, is required to be protected under dilution.

(T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr)

In case of trade mark dilution allegation the plaintiff has to fulfil a more stringent test (than the deceptive similarity standard of mark) of proving identity or similarity. In the case of logos and other marks, the application of the “identity” or “similarity” test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective. Thus, when considering bringing dilution claims, trademark holders should cast a wider net, looking to factors beyond similarity of marks, and prepare their cases accordingly.

Forms of Dilution:

  1. Blurring: weakening of the distinctiveness of a famous mark. This is the traditional notion of dilution—using an identical or virtually identical mark on or in connection with goods and/or services that may be completely different from and unrelated to the plaintiff’s goods and/ or services. The belief is that a mark that is highly similar or identical to the plaintiff’s unique, distinctive and well-known mark can detract from consumers’ strong association of the plaintiff’s mark with the plaintiff’s goods and services.
  2. Tarnishment: Weakening of the distinctiveness of a famous mark, usually through inappropriate or unflattering associations. Examples include using a similar mark, or a term that plays on one’s mark, in association with offensive content, with subject matter critical of the mark owner and its beliefs or philosophies. Tarnishment can also involve using the mark to attract the mark owner’s customers to directly criticize or attack the mark owner or its product or service.
  3. Free-riding : Enjoying the benefit of positive association with a well-known mark and its prestige. It is sometimes referred to as unfair advantage. Activity that constitutes free-riding does not have to create confusion in the marketplace or cause actual harm to the mark owner.

In India prior to the Trade Marks Act, 1999, the trade mark dilution case was dealt under passing off action. In case of Kirloskar Diesel Recon Pvt. Ltd and Ors vs Kirloskar Proprietary Ltd. and Ors (AIR 1996 Bom 149), it was held that passing off action lies even for dissimilar goods and services. It was held as follows:

  1. In the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaking, a passing off can successfully lie if the defendant has adopted identical or similar trading name and even when the defendant does not carry on similar activity. Even if the defendant’s activities in such circumstances are remote, the same are likely to be presumed a possible extension of plaintiff’s business or activities. In the instant case, the Respondents have established that word ‘Kirloskar’ has become a household word and their businesses cover variety of activities and that there is even a common connection with some activities of the respondents and activities of the Appellants……………….

The Delhi high court in the Daimler Benz Aktiegesellschft and Anr. V. Hybo Hindustan (AIR 1994 Delhi 236) it was held as follows:

In my view, it is but right that the defendant should be restrained from using the word “Benz” with reference to any underwear which is manufactured by them, and in my view, injunction should issue, restraining the defendant to cease and desist from carrying on trade in any undergarments in the name of “Benz” and “Three Pointed Human Being in a Ring”, forthwith.

In case of Larsen & Toubro Ltd. vs Lachmi Narain Trades. & Ors (149 (2008) DLT 46) it was held as follows:

12…………….As rightly held by the learned Single Judge the test of “field of activity” is no more valid. The question really is one of real likelihood of confusion or deception among the consumers and the resultant damage to the plaintiff. The legal position on the subject is fairly well settled by a long line of decisions rendered by this Court as also the Apex Court.

……………………………………………..

  1. We have, in the light of the above pronouncements, no difficulty in holding that the dissimilarity in some of the products in which the parties trade does not make any material difference insofar as the grant or refusal of injunction against the defendants in the facts and circumstances of this case are concerned.

USA Judgement:

The USA has special law for trade mark dilution in form of Trademark Dilution Revision Act of 2006 (TDRA).

In case of Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., the Ninth Circuit held that a showing of dilution does not require “that the junior mark is identical, nearly identical or substantially similar to the senior mark”. The following was held while reversing and remanding the case to the District Court:

[9] Finally, our review of the district court’s balancing of the relevant factors convinces us that application of the incorrect standard affected its dilution determination. According to the district court, degree of similarity was only one of three factors that weighed in Abercrombie’s favor. The district court assumed, without deciding, that Levi Strauss also had two factors—acquired distinctiveness and degree of recognition—that weighed in its favor. Thus, application of the correct, less-demanding standard could have tipped the balance in favor of Levi Strauss. The degree of similarity between the Ruehl and Arcuate marks may be insufficient to support a likelihood of dilution, but that conclusion can come only after consideration of the degree of similarity in light of all other relevant factors and cannot be determined conclusively by application of an “essentially the same” threshold.

Thus dilution is the blurring or tarnishing of the image or persona of a well-known trademark by use of a similar mark typically on unrelated goods, or in a manner that tends to reduce its distinctiveness. The dilution doctrine grew out of common law principles. It has now become part of the trademark law and provides protection to trademarks even where claims of trademark infringement are not viable.

In case of ITC LTD. vs PHILIP MORRIS PRODUCTS SA AND ORS. the Hon’ble Delhi High Court held following:

49. As commented earlier, the analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the enactment of Section 29 (4). The plaintiff has to fulfil a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a “global” look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark…………………………………………

Rajni Sinha

Advocate Bombay High Court.

7738080174

REVERSE DOMAIN NAME HIJACKING: Fight against powerful (Reverse Cybersquatting)

The filing of cybersquatting lawsuits began as a defensive strategy to combat menace of cybersquatting. These lawsuits is being used as a way of bullying innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.

Paragraph 15(e) of the UDRP Rules empowers panel to declare in case the complaint was brought in bad faith, (e.g. in an attempt at Reverse Domain Name Hijacking) or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. It becomes difficult to objectively quantify what constitutes subjective “bad faith,” resulting in panels often viewing parties’ factual discrepancies as indeterminable or immaterial at best. Therefore, despite its express recognition in the UDRP, reverse domain name hijacking findings are rare and based heavily on the factual circumstances surrounding each case. The decision in reverse domain name hijacking is expressed in following manner in the disputed domain name <tatamassage.com>:

In this state of the record, the Panel is not prepared to infer that the Respondent, or those behind it, must have known of the Complainant’s trademarks and adopted the Tata name because of its associations with the Complainant. Instead, the Respondent has provided credible evidence, within the constraints of an administrative proceeding of this kind, that the disputed domain name was adopted because the masseuse providing the Respondent’s massage services is known as Tata. As the disputed domain name is being used in connection with an apparently legitimate business which does not fall reasonably clearly within the Complainant’s proven rights, the Respondent appears to have rights or a legitimate interest to use the disputed domain name.”

(Tata Sons Limited v. Tata Massage, Case No. D2012-2467 of WIPO, Arbitration and Mediation Center)

In an UDRP complaint, the complainant must prove each of the following three elements of a domain name dispute. If the UDRP panel finds any one element is not met, the claim fails.

  1. The domain name registered by the respondent must be identical or confusingly similar to a trademark or service mark in which the complainant has trademark rights, either common law or federally registered.
  2. The respondent has no rights or legitimate interests in the domain name; and,
  3. The domain name has been registered and is being used in bad faith.

In Goldline International, Inc. v. Gold Line (Case No. D2000-1151 of WIPO, disputed domain name: “goldline.com”) it was held that:

  1. Decision

Complainant has failed utterly to establish two of the three elements of the Policy: that Respondent lacks legitimate rights or interests in the domain name “goldline.com”, and that Respondent registered and is using the domain name in bad faith. The Panel therefore denies the Complainant’s request that the domain name be transferred from Respondent to Complainant and declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.

A UDRP dispute can result in either of the following:

  1. The domain name being transferred to the complainant (most common result);
  2. Cancellation of the domain name; or
  3. The complaint being denied.

In case of Tata Sons Ltd vs. mmt (makemytrip) admin/ (Case No. D2009-0646 of WIPO, disputed domain name: oktatabyebye.com) the disputed domain name was transferred to the Complainant i.e Tata Sons Ltd. However, in a proceeding filed before the Delhi High Court a settlement was reached between Tata sons Ltd and Makemytrip, where Tata Sons Ltd. have acknowledged that the Makemytrip is the current owner of the domain name, oktatabyebye.com, subject to the said domain name being used in the manner as agreed. Tata Sons Ltd had won the arbitration case before WIPO but has to settle it before the Hon’ble Delhi High Court and it appears that the original owner Makemytrip had legitimate right and interest in disputed domain name.

Under the URDP proceedings the respondent can specifically request the panel to examine whether the complaint was in the nature of reverse domain name hijackings. In R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator (Case No. D2014-2041 of WIPO, disputed domain name: rvk.com) following was held:

  1. Reverse Domain-Name Hijacking

Respondent has asked the Panel to find that this is a case of Reverse Domain Name Hijacking.

“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1.

Complainant knew that Respondent registered the disputed domain name several months prior to Complainant’s claimed date of first use of its mark. Complainant must therefore have been aware that Respondent cannot have registered the disputed domain name in bad faith, since he cannot possibly have known of Complainant’s as-yet-nonexistent claim to the mark.

 

Complainant is not saved by its allegation that its trademark use began in 1992. First of all, that allegation was made only in the amended, not original, Complaint, and accordingly the original Complaint was not a good faith filing. Secondly, even if Complainant believed in good faith that its 1992 letter evidenced trademark use, it did not have a basis to believe that Respondent was aware of this letter or of any other evidence of Complainant’s alleged claim of right to the RVK mark.

Accordingly, the Panel finds that Complainant engaged in Reverse Domain Name Hijacking.

Even otherwise the URDP rules provides for considering the issue of reverse domain name hijacking independently by panellist i.e, without request from the Respondent. The Rules provide (paragraph 15(e)):

“If after considering the submissions the Panel finds that the Complainant was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”

In iPayment, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Kwangpyo Kim, Mediablue Inc (Case No. D2015-1014 of WIPO, disputed domain name: ipayments.com) it was held:

Reverse Domain Name Hijacking

In light of the non-disclosure issues described above, the Panel wishes to consider the issue of reverse domain name hijacking. Although Respondent has not specifically asked for this relief, the Panel is entitled to pursue this inquiry if circumstances warrant.

WIPO Proceedings No Bar to Court Action:

The Uniform Domain Name Dispute Resolution Policy (UDRP) was created by the Internet Corporation for Assigned Names and Numbers (ICANN), an internet regulating body. The UDRP applies to every domain name registrant that registers its domain name through an ICANN-accredited registrar. The UDRP provides for an ‘administrative proceeding’ (eg, a WIPO proceeding) in disputes between domain name owners and trademark owners. The UDRP also explicitly provides that a UDRP proceeding does not bar a subsequent court proceeding. UDRP 4(k) states in part:

Availability of court proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you [the domain name registrant] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.

Indian court and WIPO(URDP)/NIXI(INDRP) proceedings:

In the Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd, (2004 Supp(2) SCR 465) Supreme Court observed that-

“…since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. National laws may be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN).

In the Stephen Koeing vs Arbitrator Nixi And Anr. (FAO (OS) 42/2012), Delhi High Court observed that-

  1. This Court notes that the INDRP mechanism of dispute resolution through arbitration would fall within the description of an arbitration agreement under Section 7 of the Arbitration and Conciliation Act, 1996. Therefore, awards made under the INDRP framework are to be tested in the light of the law applicable for Section 34, which means that the courts have narrow and circumscribed powers to interfere with arbitral tribunal’s determinations: if only the findings are based on patent legal errors, or contrary to terms of contract, or are so unreasonable that no reasonable man could have reached the conclusions that an arbitrator did, would interference be called for. The appellant has not been able to establish any of these elements. The award was, therefore, not liable to interference; the learned Single Judge said as much. We concur with his opinion. The appeal, therefore, fails and is dismissed without any order as to costs.

In Consim Info Pvt. Ltd vs Google India Pvt. Ltd,2010, the Madras High Court held that-

  1. The defendants 2 and 4 are unable to point out as to how the suit is barred by any law (so as to bring it within clause (d) of Order VII, Rule 11), except depending upon the Uniform Domain Names Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). But, I have already pointed elsewhere that the jurisdiction conferred upon this Court, is not ousted by the said Policy. Therefore, the case will not even fall under clause (d) of Order VII, Rule 11.

In remithome Corporation v. Samar Pupalla a/k/a Times of Money Ltd. a/k/a Times Online Money ltd (Claim Number: FA0712001124302, disputed domain name: remit2home.com> and <remit2home1.com) the National Arbitration Forum ordered that disputed domain names be transferred from Respondent to Complainant.

In the same disputed domain case of Times Of Money Limited vs Remithome Corporation & Another for identical two domain name the two judge bench upheld the single bench order that the NOIDA Court alone was the forum of choice, and that it had to be approached in the event of dispute by one or other party, to the exclusion of other courts. The domain name remit2home.com and remit2home1.com stands registered in the name of Times of Money Ltd and not transferred to remithome corporation.

OTHER Case:

In HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc (Case No. D2002-0754 of WIPO, disputed domain name newzealand.com) held that-

Reverse Domain Name Hijacking

Have those responsible for this Complaint used the Policy in bad faith to attempt to deprive the Respondent, a registered domain name holder, of the Domain Name? In addressing this question, the members of the Panel were unanimous in concluding that the filing of a complaint in the knowledge that the complaint is unmeritorious constitutes ‘use of the Policy in bad faith’ within the meaning of paragraph 1 of the Rules.

Prior to reading the Respondent’s supplementary submissions, the members of the Panel were divided on the question of reverse domain name hijacking. It seemed to some of the Panel that there might just be enough case law under the Policy (e.g. the <barcelona.com> decision) to encourage those responsible for the Complaint to hold a genuine belief in the merits of the Complaint.

 

However, having read the Response of the New Zealand Government to the WIPO Secretariat’s questionnaire referred to above, the Panel is unanimous in its view that when the Complaint was launched, those responsible for the Complaint, the New Zealand Government, were well aware that a claim to trademark and service mark rights in respect of NEW ZEALAND was baseless. Moreover, that document makes it clear that the New Zealand Government regards the protection of country names (qua country names) as being outside the scope of the Policy and does not approve of the Policy being extended to cover those country names, which are not trademarks.

There might have been scope for an argument in mitigation that the limb of the New Zealand Government responsible for the Complaint is the Ministry of Foreign Affairs and Trade whereas the limb of the New Zealand Government responsible for the Response to the questionnaire was the Ministry of Economic Development, but that argument has not been put to the Panel. Indeed, the Complainant has not responded to the allegation of reverse domain name hijacking despite the Panel’s invitation to do so. There has been no response to the Panel’s Procedural Order.

In the circumstances, the Panel has no hesitation in branding this misconceived Complaint as an abuse of the Policy, which has put the Respondent to needless expense.

The allegation of reverse domain name hijacking succeeds.

In TV Sundram Iyengar and Sons Limited v. P.A. Gordon (Case No. D2014-0814 of WIPO, disputed domain name: tvs.com), the panel did not make a formal finding of Reverse Domain Name Hijacking, however it was observed that Panel remains concerned at the decision to commence proceedings in such circumstances and the unsupported assertions contained in the Complaint.

In RPG Life Sciences Ltd. v. James Mathe (Case No. D2013-2094 of WIPO, disputed domain: rpg.com), the Panel made a finding of Reverse Domain Name Hijacking against the complainant.

The cases of following nature results in Reverse Domain Name Hijacking:

  • Complainant’s lack of right
  • Respondent’s proven right
  • Respondent’s lack of bad faith
  • Complainant’s lack of candour

 

Rajni Sinha

Advocate Bombay High Court

GOOGLE: Strategy to save from Genericide

A distinctive trademark has unlimited potential for commercial exploitation. The key to optimizing that value is making the right decisions at every step in the trademark lifecycle. The Life cycle of a trademark involves the planning, creation, registration, protection, maintenance and exploitation of the mark. Genericization occurs when their trademark becomes obsolete as a result of their very popularity and omnipresence. Neglect at any stage leads to genericization of any valuable and established brand. The phenomenon of genericization has been faced by many brands like aspirin (Bayer AG) and escalator (Otis Elevator Company) etc in past.

In case of trade mark “Google” the first reference found to “googling” as verb occurs within something posted online by google itself on 8 July 1998, back when Google was a still a search engine on the Stanford University website by Google co-founder Larry Page, who wrote on a mailing list: “Have fun and keep googling!”. Now, the Google Inc. is fighting a significant and strategic war to save the brand “Google” from genericization.

Google is one of the most valuable brands in the world. The company watchfully defends its trademark, both in and out of court. However, there is no imminent danger of losing its trademark protection. The popularity of Google’s brand, and how it has entered mainstream English usage as a verb (to google) and participle (googling), it may only be a matter of time it attains the genericization i.e the process of becoming generic, or “not sold or made under a particular brand name,” according to Webster’s dictionary. Google, however, is racing toward genericization with unprecedented speed, according to linguistics experts.

(An extract from New York Times of August 14, 2015, on page B1)

 

Googles Inc. strategic action:

  1. David Elliot and Chris Gillespie filed during a two-week period ending on March 10, 2012, by using a domain name registrar to acquire 763 domain names that combined the word “google” with another brand, e.g., googledisney.com, a person, e.g., googlebarackobama.net etc. Google Inc. promptly filed a complaint requesting transfer of the Domain Names pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) incorporated into the domain name registrar’s Terms of Use. Responding to Google Inc. arbitration complaint, Gillespie asserted, inter alia, that the GOOGLE mark has become generic and that he should be permitted to use the Domain Names incorporating the GOOGLE mark in furtherance of his business plans. The UDRP panel ordered the Domain Names be transferred to Google Inc. Elliot then instituted the action before district court of Arizona by filing a complaint seeking cancellation of both the ‘502 and ‘075 marks and a declaration of the same. Gillespie also filed a petition with the U.S. Trademark Trial and Appeal Board (“TTAB”) requesting cancellation of the ‘502 Mark and the ‘075 Mark contending that the GOOGLE mark has become generic, The TTAB proceedings have been stayed pending resolution of case before district court of Arizona.

The district court of Arizona held following:

Accepting Plaintiffs’ evidence as true and drawing all justifiable inferences therefrom in Plaintiffs’ favor, a majority of the public uses the word google as a verb to refer to searching on the internet without regard to search engine used. Giving Plaintiffs every reasonable benefit, majority of the public uses google-as-verb to refer to the act of searching on the internet and uses GOOGLE-as-mark to refer to Defendant’s search engine. However, there is no genuine dispute about whether, with respect to searching on the internet, the primary significance of the word google to a majority of the public who utilize internet search engines is a designation of the Google search engine. Therefore, Defendant is entitled to judgment as a matter of law that the ‘075 and ‘502 Marks are not generic.

  1. Google’s Rules for Proper Usage of its trademarks include, among many others, the following requirements:
  • Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.
  • Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.
  • Don’t use Google trademarks in a way that suggests a common, descriptive, or generic meaning.

 

  1. Google announced on 10 August, 2015 that it was creating an umbrella organisation called Alphabet Inc., encompassing Google itself and its many satellite companies. It appears the unexpected move is Google’s effort to protect its valuable brand and keep its name from becoming a generic term for searching the internet.

Google in a press release said the “newer Google is a bit slimmed down,” and focused on its main internet products. The other interests of former Google, such as life sciences, are to be managed by “a strong CEO who runs each business,” while Google Inc., still the heavyweight, “will become a wholly-owned subsidiary of Alphabet.”

  1. Google’s strategy and focus on how its name is used even extends to Sweden, where the country’s Language Council wanted to add the word “ungoogleable” to a list of new words as meaning something that can’t be found on the Web using a search engine. Note: a search engine — not necessarily Google’s.

Google objected and asked for changes showing the expression specifically refers to Google searches and a disclaimer saying Google is a registered trademark.

  1. The first recorded Cease-and-Desist letters from Google Inc was to Paul McFedries, who runs the lexicography site Word Spy, received a firmly worded letter after he added “google” to his online lexicon. The Google Inc. asked him to delete the definition or revise it to take account of the “trade mark status of Google”. He opted for the latter and it specifically cites that google is trademark of Google Inc.

Frank Fuchs, a regular reader and tip provider created a rather innocent page titled “Guide On How To Get Your Business Listed On Major Local Search Engines”. On it, he mentions local search engines like Yahoo Local, Ask City or Google Maps, as well as yellow pages services such as GoYellow.de. He was served with Cease-and-Desist letters from Google Inc.

 

  1. The google has been capitalising the first letter of the mark, “Google” to avoid its use as noun or verb.

Google is trying hard to tame the demon of genericization by actively considering the issue and educate the customer about the usage of the term.

Rajni Sinha

Advocate Bombay High Court

Descriptive and Laudatory Trade Mark

In Caterpillar Inc. Vs. Mehtab Ahmed and Others ( 99 (2002) DLT 678) court delineated various categories of words used in a trademark:

  1. The words or marks can broadly be divided into six categories. The first category of words is “generic”. These words have dictionary meaning and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These words are in common parlance known as laudatory epithets.
  2. Third category is that of directly descriptive words. These words describe the character or the quality or attribute of the goods or articles but without an element of laudation. The words of second and third category if used as a mark acquire secondary meaning on account of constant and long user. Fourth category is of ‘indirectly descriptive words’. These words are those which have indirect or remote reference to the nature or quality of goods. The element of directness is wanting in these words. Such words can be used as a mark or trademark irrespective of the fact whether they acquire secondary meaning or not.
  3. Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The words belonging to categories two, three and five if used in relation to a particular goods can be protected if attempt is made to pass them off by way of deceptive similarity either in look or sound.

 

  1. The last category is of “invented words”. No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display efforts or skill of imagination, faculty or power of inventing. These words are invented in relation to a particular good. Such words are inherently distinctive and therefore have to be protected in any case. These words are designed or contrived through imagination for the first time wherein ability as well as flight or efforts of imagination is displayed.

 

  1. As regards marks or trademarks falling within categories 2 to 5 namely ‘directly descriptive words having laudatory epithets, ‘directly descriptive words without laudatory epithets, indirectly descriptive words and words not being descriptive have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent user denote source and origin and if any attempt is made to either mutilate them or simulate them such an attempt amounts to passing off as it demonstrates element of malafideness for cashing upon the reputation and goodwill of such marks. Likelihood of confusion as to source or origin of a particular goods sold under a particular trade mark broadly amounts to an act of passing off.

Further, in case of ABERCROMBIE & FITCH COMPANY v. HUNTING WORLD, INCORPORATED(537 F.2d 4 (2d Cir. 1976)), it was held as follows:

The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others,8 and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case.

LAUDATORY:

Laudatory trademarks are adjective words requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.

Even registered Laudatory trademarks are generally considered weak and entitled to a narrow scope of protection, even after a showing of secondary meaning. One may be able to register their laudatory mark, but competitors are still likely to be able to use that mark under the various fair use defences. The jural messages are clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such words. At the most, it may bring a challenge in the nature of passing off and in such an event the Court would look at the rival labels/packagings/trade dresses in order to determine whether a customer possessing a modicum memory and ordinary intelligence may be so confused as to purchase one product believing it to be the other.

In the decision of the European Court of Justice in Proctor & Gamble  versus Office of Harmonisation in the International Market (OHIM), (2002) RPC 17 (famously known as “Baby Dry Case”, para 42 & 44), it was noted that the proprietary character could be accorded to expressions which are syntactically unusual. Word combinations like ‘BABY-DRY cannot be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed.

In other words, there must be something unique to the choice of the word; it should neither be descriptive nor laudatory since everyone would be entitled to use such word(s). It would be wise, therefore, for any trader or manufacturer to use a coined or unique word if he expects proprietary right over and a consequent injunction to issue in respect of the user of such trademarks by rivals.

A mark which can indicate the character or quality of the goods cannot be registered unless it is a well-known mark or it has acquired distinctiveness by use. It is not necessary to establish by the Opponent that such descriptive use is in fact is being made by other traders. It is sufficient if the mark has one of the meanings which indicates characteristic of the goods.

While determining the nature of the mark for the purpose of registration or for the purpose of passing-off/infringement, the first inquiry which the court ought to carry out is to determine whether the applicant’s/plaintiff’s mark is invented, arbitrary/suggestive, descriptive or generic. The nature of the mark is always determined with respect to the plaintiff’s/applicant’s goods. For example, if a person applies for a trademark called “Extra Strong”, the Registrar of trade mark has to examine whether the mark is descriptive or laudatory for the goods for which it is applied, i.e., the applicant’s goods. The inquiry does not depend on the person.

CASE LAWS:

Random dictionary states DELUXE (the impugned mark is SUPER DELUX) was originally a French word for luxury. The English meaning of the word is opulent, rich, special, splendid and superior in quality such as DELUX car with rich finishing etc. Phonetically, the pronunciation of DELUX and DELUXE is one and the same. The word SUPER means beyond compare, surpassing all others, superior quality. SUPER DELUX in combination is a laudatory expression eulogizing the quality of the products as something as out of the ordinary. Such words cannot function as a trade mark. Such laudatory expressions are property of all consumers and producers. It is reflective of the superlative qualities of the goods and how it was registered is a matter of debate. Five years user or even 100 years such use cannot make it distinctive. It is incapable of functioning as a trade mark with any length of use. Section 9(1) of the Trade Mark Act, 1999 is, therefore, an absolute bar and the impugned marks needs to be removed on this ground alone.

(BHARATBHAI KHUSHALBHAI PATEL TRADING AS HARIKRISHNA….Petitioner(s) V/S DELUX BEARING LIMITED THE HIGH COURT OF GUJARAT AT AHMEDABAD- SPECIAL CIVIL APPLICATION NO. 12627 of 2012.)

In Mohd.Rafiq & Am. v. Modi Sugar Mills Ltd., Court has held that “the reference to the character and quality” should be direct and plain and not remote and far-fetched. Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise and not one out of which an inference of praise has to be spelt out by a laboured process.”

 

Laudatory Word Citation Court decision
SUPER CUP Godfrey Phillips India Ltd. vs Girnar Food & Beverages Pvt. Ltd. on 1 June, 1997 (1997 (2) ARBLR 559 Delhi) The trade mark “Super Cup” was descriptive and laudatory of goods of the plaintiff and the plaintiff was not entitled to an injunction.
SUPER DELUX Bharatbhai Khushalbhai Patel … vs Delux Bearing Ltd. (Gujrat High Court SCA-12627 of 2012) SUPER DELUX in combination is a laudatory expression eulogizing the quality of the products.
ULTRA Indian Shaving Products Ltd. & … vs Gift Pack & Anr. (Delhi High Court, IA 5333/98) The word ‘ULTRA’ is descriptive and no monopolistic rights can be claimed.
SUGAR FREE Cadila Healthcare Ltd. vs Gujarat Co-Operative Milk (MIPR 2007 (3) 497), Delhi High Court “SUGAR FREE” is purely descriptive and laudatory expression.
IMPERIAL Rhizome Distilleries P. Ltd & Ors. vs Pernod Ricard S.A. France & Ors. (FAO(OS) No.484/2008 & CM Nos.17352/08, 3429/09) Delhi High Court. The word “IMPERIAL” is not only in common parlance to be found in every dictionary, but also is laudatory in nature and no exclusive right can be claimed.
HOME SOLUTIONS Asian Paints Limited vs Home Solutions Retail (India) …( 2007 (109) Bom L R 1819) It is generic and publici juris. “HOME SOLUTIONS” is associated with the nature of services that is in common use in India and abroad.
LOSORB and LO-SORB Marico Limited vs Agro Tech Foods Limited (FAO(OS) No. 352/2010) Delhi High Court. This coined words have a clear reference to an indicative of the kind, quality, intended purpose and characteristic etc.
HOLIDAY INN Madhubhan Holiday Inn vs Holiday Inn Inc.( 100 (2002) DLT 306), Delhi High Court. The appellant was actuated by bad faith and dishonest motive by using “Holiday Inn” as a mark.

 

SECONDARY MEANING: LAUDATORY TRADE MARK

A Laudatory trademark that has acquired secondary meaning means that the trademark has become recognized as a brand for specific goods and services from a single source. For establishing that a trademark has acquired secondary meaning, both direct and circumstantial evidence are used to show that the consuming public recognizes the trademark as a brand of a single source. Examples of direct evidence include consumer testimony and consumer surveys. Circumstantial evidence of secondary meaning includes evidence relating to the length, manner, and exclusivity of the trademark’s use, advertising expenditures, and amount of sales and number of customers.

A secondary meaning results when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” (Inwood Laboratories, Inc. v. Ives Laboratories, Inc.: 456 U.S. 844, 72 L. Ed. 2d 606).

In the Diamine Case (Leopold Cassella and Co., (1910) 2 Ch 240, ) Buckley L. J., laid down that some words including laudatory epithets are not capable of being registered but ought to be open to all the world. He found it impossible to say that a laudatory epithet cannot acquire a secondary meaning, but thought it to be incapable of being adapted to distinguish the goods.

 

TRADE DESCRIPTION: DESCRIPTIVE MARK

A descriptive mark when used in relation to goods and services, it is not a registrable trade mark except upon evidence of acquired distinctiveness, which must be established on the date of application for registration by the respondent. If the mark is proposed to be used on the date of application the issue of establishing distinctiveness does not arise.

The section 9 of the Trade Marks Act, 1999 provides for absolute ground for refusal of registration by trade mark authority. The section 9(1) of the Trade Marks Act, 1999 specifically deals with refusal of trade mark registration for word or expression indicating “Trade Description”:

  1. Absolute grounds for refusal of registration.—

(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

However, many “trade description” words and expressions have been registered as trade mark: (1) which was well known trade mark before the registration (2) The owner of trade mark got such registration by using well known acronym of trade description e.g. G.P. (Synthetic Enamel, Silicone Sealant) for General Purpose etc. (3) By combining the “trade description” mark with other trade mark.

Publici juris: Trade Mark

“Publici juris” is a Latin word, and in the legal parlance, means, “of public right.” The term signifies a thing or a right that is open and exercisable by all persons. It designates things that belong to the entire community, and not to any private party.

A mark is said to be common to the trade when (1) it is in common use in the trade, or (2) when it is open to the trade to use.

Any symbol, word or get up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or public, juris. Further words, expressions or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business.

2) The decision on the question of likelihood of deception is to be left to the court.

(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark.

(4) Whether such feature is public juris or geris is a question of fact.

(S.B.L. Ltd. vs Himalaya Drug Co., 1997 IVAD Delhi 757, AIR 1998 Delhi 126)

In conclusion it can be specifically states that laudatory and descriptive trade mark can only be permitted if it has attained secondary meaning by virtue of its continuous use or the proposed trade mark per se do not signify or point towards the product for which it is being proposed.

Rajni Sinha

Advocate Bombay High Court