The last couple of years have witnessed some major developments on the procedural side of trade mark protection and enforcement. Some of the most pertinent will be discussed in this article.
A Swift Shift to Virtual Hearings
Within a few months from the onset of the COVID-19 pandemic, the Tribunals and Courts equipped themselves to conduct hearings through videoconferencing. This shift was a swift one with the Trade Marks Registry, the erstwhile Intellectual Property Appellate Board (IPAB), and Courts at all levels (Supreme Court, High Courts, District courts) moving to the virtual mode with the aid of technology. The virtual mode of hearings provided parties, lawyers and stakeholders with the ease of attending hearings remotely from virtually any part of the world. Even documents could be presented before the judges or hearing officers by way of screen sharing options.
The advent of videoconferencing hearings conducted by the Indian Trade Marks Registry also led to the recruitment of a large number of designated Examiners on a regular and contractual basis. With this, the Trade Marks Registry has embarked on a journey of a smoother workflow, fast-tracking of examinations and hearings, and rendering more sound and prompt decisions. Thirty new vacancies for hearing officers on a contractual basis for the Trade Marks Registry were published in December 2021. The regular listing of hearings through videoconferencing is contributing to the reduction of the backlog faced by the Trade Marks Registry.
The Abolishment of the IPAB
The Intellectual Property Appellate Board (IPAB), which was formed in 2003, by way of amendment in the Trade Marks Act, 1999 to act as a specialised tribunal and appellate body for resolution of IP disputes except for cases of infringement and passing off, was abolished through an Ordinance. On 4 April 2021, the President of India promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, whereby the IPAB was abolished by amending:
- the Copyright Act, 1957;
- the Patents Act, 1970;
- the Trade Marks Act, 1999;
- the Geographical Indication of Goods Act, 2000; and
- the Protection of Plant Varieties and Farmers’ Rights Act, 2001.
During its term, the IPAB faced operational difficulties due to extensive delays in filling up the vacancies on the Board, be it the position of chairman, vice-chairman or a technical member, thus leading to pendency. One of the objectives of the Board was to expedite the disposal of long-pending appeals and lower the burden of the already overburdened court system. Thus, the Board was abolished also with the reason that it was not able to fulfil the objective of speedy disposal of cases. Nevertheless, the Board was able to render some landmark decisions during its tenure.
With this, all pending appeal matters and revocation/rectification actions before the IPAB have been brought back to the court systems, mainly to the High Courts at Delhi, Bombay, Madras and Calcutta. Thus, rectification proceedings under the relevant provisions of the Trade Marks Act, 1999 and appeals against the orders of the Registrar of Trade Marks can now be filed before the appropriate High Court having jurisdiction. In relation to such proceedings, the term “prescribed” as defined in the Trade Marks Act, 1999 now encompasses rules made by the High Court in addition to the rules made under the Act (ie, The Trade Marks Rules, 2017).
The Creation of the Intellectual Property Division at the High Court of Delhi
Expecting many IP appeals and revocation/rectification actions to be transferred from the erstwhile IPAB, in July 2021, the Honourable Chief Justice of the Delhi High Court announced the creation of the Intellectual Property Division (IPD) to deal with fresh IP matters as well as those which were to be transferred to the Delhi High Court. On 8 October 2021, the Delhi High Court circulated the IPD Rules, 2021 for inputs from the members of the Bar. These Rules were written to regulate the matters listed before the IPD and prescribe the practice and procedure for the exercise of the original and appellate jurisdiction of the IPD, and for other miscellaneous petitions arising out of specific IP statutes. Some of the salient features of these Rules in relation to trade mark matters are:
- trade mark agents and any professional having knowledge of the subject matter of the dispute have been given a right of audience before the IPD, to assist the court along with the counsel/legal practitioners representing the parties; and
- the IPD can pass summary judgments, without the requirement of filing a specific application seeking summary judgment on principles akin to those contained in Order XIIIA, Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015.
The IPD has started listing the cases which have been transferred from the erstwhile IPAB. These cases are presently being listed before the Joint Registrar of the High Court to put the files in order, remove discrepancies and supplement information pertaining to the cases, as prescribed by the rules and practice of the court. The High Courts at Bombay, Madras and Calcutta are yet to frame their rules pertaining to the functioning of their respective IP Divisions.
The Parliamentary Standing Committee Report on the IP Regime
On 23 July 2021, the Department Related Parliamentary Standing Committee on Commerce presented its 161st Report on “Review of the Intellectual Property Rights Regime in India” in the Rajya Sabha. The report indicated that IP is essential for the holistic growth and development of a country. It emphasised promoting and developing the IP environment in India by considering various measures at different fronts.
With regard to trade marks, the Committee has recommended the following.
- To provide for elaborate and updated classification of goods and services to meet the requirements of the industry and trade. It has also been emphasised that such a classification would require detailed specification and clarity to preclude any complexities in its interpretation.
- To curtail the time period of filing opposition against a trade mark application from four months to two months, during which the trade mark application will remain published in the Trademarks Journal for opposition purposes. This recommendation has been made with the view to expedite the process of registration, and to bring the time period in line with other jurisdictions such as the UK, Spain, Belgium, the Netherlands, Luxembourg, South Korea, Japan, Denmark, and Singapore.
- To modernise the trade mark offices and workplaces by “undertaking digitalisation of work processes and facilitating e-services for speedy redressal of work”.
- To streamline and simplify procedures regarding search and seizure operations under Section 115 of the Trade Marks Act, with an aim to expedite investigations. It has been recommended that a well-trained police officer specialised in tackling IP crimes should be deployed in place of a deputy superintendent of police or officer of a higher rank; and the officers being appointed should be assigned the added responsibility of enforcing IP laws in their respective jurisdiction. It has been further recommended that the Registrar of Trade Marks should be connected with the police department through a specific software to prevent any leakage of data and the opinion that the police is required to seek from the Registrar should be delivered in 48 hours rather than seven days. This will help in reducing the time taken in getting permission for conducting search and seizure operations.
- To provide for a separate category for Export Oriented Units (EoU) products in order to prioritise and expedite the processing of their applications for trade mark registration so that they can export their products in time and contribute to the growth of the national economy.
Some Evolving Trends in the Domain of Enforcement of Trade Mark Rights
The arbitrability of disputes pertaining to trade mark licence agreements – In Golden Tobie Pvt Ltd v Golden Tobacco Ltd
The Delhi High Court decided the question of whether trade mark-related disputes can be the subject of arbitration. The court clarified that disputes arising out of a violation of a trade mark licence agreement can be resolved through arbitration. The court held the disputes emanating out of an agreement between the parties to be arbitrable. The court also clarified that the controversy in the said case did not relate to grant or registration of trade marks and hence did not involve exercise of any sovereign function. The trade marks stood granted and registered. It was held that even assignment of a trade mark is by a contract and is not a statutory fiat.
The jurisdiction of court in instances of infringement over the internet – In Tata Sons Private Limited v Hakunamatata Tata Founders & Ors
The Delhi High Court dealt with the issue of deciding jurisdiction in a case involving a claim of trade mark infringement over the internet. The court refused to issue directions as sought against the defendants as they were outside the territorial reach of the court. The defendants were situated in the UK and the USA. They dealt in cryptocurrency, under the name “TATA coin/$TATA”. None of the defendants had any outlets in India, and it was not the case of the plaintiff that the defendants were carrying out any overt manufacturing or marketing activities within India.
The plaintiff sought a permanent injunction to restrain the defendants from using the trade mark “TATA” as part of the name under which their cryptocurrency was made available to the public, or as part of their corporate name or domain name. The plaintiff argued that as the defendants’ cryptocurrency could be purchased on their website by anyone in India, persons from India had posted enquiries on the defendants’ Twitter page and there was heavy internet traffic to the site from India, there was “purposeful availment” of the jurisdiction of the court. However, the court held that the accessibility of the defendants’ website to persons within its jurisdiction did not, of itself, confer jurisdiction.
A substantial indication of activities directed towards those within the court’s jurisdiction was necessary. Indian courts do not possess extraterritorial jurisdiction over non-resident defendants and have jurisdiction only if the defendants’ activities have a sufficient connection with India, the cause of action arises out of such activities, and the exercise of jurisdiction is reasonable. The fact that the defendants’ website was interactive and accessible to persons located within the court’s jurisdiction, although relevant, was by itself insufficient. The predominant considerations in deciding the issue were whether the defendants’ website was interactive and whether it disclosed an overt intention to target the Indian market.
In this case, the court found the combination of these factors to be missing and the defendants’ intention consciously to target India as a potential market could not be established. The mere accessibility of the website in India was insufficient, and the court thus refused to grant an interim injunction to the plaintiff.
The invisible use of a trade mark as a keyword upheld as an infringement – In M/s DRS Logistics Pvt Ltd & Anr v Google India Pvt Ltd & Ors
The suit was filed by the plaintiff seeking an order of interim and ad interim ex parte injunctions from using or permitting third parties to use AGARWAL and/or AGGARWAL PACKERS & MOVERS and/or DRS LOGISTICS or any other trade mark or name similar to the plaintiffs’ registered trade mark AGARWAL PACKERS & MOVERS and/or DRS LOGISTICS either as a key word or as a metatag or as a trade mark or part of a key word or metatag or trade mark or in any other manner on its search engine so as to infringe the registered trade marks of the plaintiff. It was the case of the plaintiff that several third-party infringers use the services of Google for inserting their infringing advertisements when a user on the internet looks for the plaintiff by typing the search term/keywords “Agarwal Packers & Movers”.
The plaintiff had moved against third parties and despite having decrees in its favour, it stated that Google did not stop the use of infringing advertisements on its platform, which showed up due to the use of the infringing keywords being permitted on its platform to divert internet traffic from the website of the plaintiff (trade mark owner) to the websites of the third-party infringers/advertisers.
The court held that invisible use of a trade mark in the form of keywords would constitute “use” within the meaning of the provisions of the Trade Marks Act, 1999. The court also observed that usage of the trade mark of the plaintiff as a keyword would result in the traffic from the webpage of the plaintiff being diverted to the webpage of the competitor/advertiser. This means that a consumer of average intelligence and imperfect recollection who types the trade mark of the plaintiff as a search query would be led to a web page the origin of which would be dubious, thus getting confused/deceived into believing the resultant web page to be that of the trade mark owner. It was also reckoned that in cases of intellectual property, the courts must be mindful of the fact that it is ultimately the public at large which gets cheated and feels the brunt of spurious goods and services in the market.
Accordingly, the court directed Google India and Google LLC to investigate the complaints made by the plaintiffs with respect to the usage of their trade mark as a keyword and to verify whether such usage of the keywords in advertisements amounts to trade mark infringement or passing off. Also, if Google finds out that such usage of keywords amounts to infringement or passing off, then it should remove such advertisements from its website/platform.
Nowadays, almost everything is being dictated by the use of technology, with not just systems and processes being tech-enabled but even IP disputes being permeated by the marvels of technology. Time will tell whether the use of technology will prevail to circumvent the law with newer IP crimes or to better tackle its manifold ramifications through modern approaches to IP adjudication and jurisprudence.
The procedural and enforcement landscape of the trademark regime in India has witnessed some crucial trends and developments in the last few years. Authored by Manisha Singh, Dheeraj Kapoor and Ruchi Sarin, this article tries to capture the same.