The Bombay High Court through Justice Vazifdar had in November, delivered this excellent decision relating to the ingredients necessary to be proved for any case of infringement and passing off of Trademarks and Copyright.
The mark in question here was the stylized logo “Variety” used famously by international publication Reed Elsevier for their entertainment related magazine Variety. The Variety logo as seen on their website here is described to include a flying “V”, and this distinctive feature was allegedly used by the Defendants in the case herein.
The matter, decided only at the interim stage at the moment, had these interesting facts:
– The “original” proprietors for Variety Inc. was in use since 1905, with international weekly publications beginning in the year1933.
– An application made for the registration of the trademark VARIETY was made in India in 2006 under Class 16 and Class 42, wherein user was stated since the year 2002 and 2001 respectively.
– The Plaintiffs claimed to have discovered the infringing activities of the Defendant (who published Cinema Directories under the name Variety Cinema Directory with an allegedly similar logo) in 2006; the Defendant, however, successfully proved his use of the mark since 1991.
– In these circumstances, after the initiation of the suit in June 2007, the Plaintiffs undertook to amend their user in their TM Applications from 2002 to 1984 through evidence in December 2007. This was unopposed by any person, including the Defendants though it was within their knowledge, and therefore allowed.
In these facts and circumstances, the Court was called upon to decide the infringement of trademark and copyright in the logo/artistic work VARIETY and the maintainability of the action for passing off.
Interpreting S. 34
The Court has importantly made observations relating to the interpretation of terms such as “use” in Section 34 of the TM Act. In a brief nutshell, Section 34 of the Trademark Act does not allow any legal action by a registered proprietor to be maintained where the “alleged infringer” is either a prior user of the mark or a user prior to the registration of the mark.
The Court held that the word “use” in Section 34 of the Act relating to the prior use in time, must necessarily relate to such prior use of the mark in India. Relying on a judgment of the Calcutta High Court (AIR 1969 Cal 43), the Court stated that in specific relation to this provision, the use of the mark in any country other than India including by way of advertisements and sales would not be of any assistance in the present case.
The Court also held that where the alleged infringer could not satisfactorily explain the similarity between the registered and infringing mark, the same points to dishonest use and must be taken into account.
Therefore, in view of the above, along with evidence of the subscription of the Plaintiff’s magazine by the National Film Archive of India and in view of the unopposed amendment to the user as mentioned in the TM Certificate, the action for infringement of Trademark and Copyright was prima facie established.
Passing off
However, surprisingly and noteworthy here, is that the Judge automatically did not follow this with a judgment for passing off of the mark as well. Holding that the subscription by the NFAI or ‘travel by persons abroad who would have had access to these magazines’ (as contended by the Plaintiffs) would not constitute, at this stage, sufficient evidence to establish passing off, the Judge stated that the action for passing off was prima facie not tenable.
Now, in my opinion, it is an excellent development to see that judges are making the necessary distinction in ingredients for establishing passing off and trademark infringement- however, the standard set by the Judge in my opinion especially for establishing transborder reputation may at the prima facie stage at least, be slightly impossible to prove for the Plaintiff.
Parting thought: Isn’t the entire point of an action of passing off that no use in India is to be proved? And how else can one prove reputation apart from travel and perhaps news reports?
Kruttika, do you think in this day and age it makes sense to look at travellers as those who would be suitably informed to be vulnerable to being passed off to? I would imagine that with the Internet, 24 hour international channels and a variety of other media, narrowing ‘passing off’ to such a standard would be too restrictive. For example (and this is an illustration I have used before),if the golden arches erected on Infantry Road in Bangalore since the mid-80s were challenged by the McDonalds company after their advent in 1999 or so, would it be treated as innocent?
Hi Gopal
You make some very valid points. Am just going to break it up and answer it as best I can.
I think it is completely necessary to remember that for an action of passing off, transborder reputation has to be established by a Plaintiff as on date when the Defendant adopted the mark (thanks SC for clarifying that).
In that context, two points:
(i) While your example of the McDonald’s arches may be valid- it would be upto McDonald’s to show transborder reputation in the 80s. If they can- and in that day and age, I assume travel and news reports are important- then their action for passing off would succeed.
(ii) I think if a Defendant today were to adopt a mark of a brand that is perhaps extremely niche in its own class of goods and services and not freely availabe in India, I think from the perspective of a trial lawyer, I would say it would be unfair if there was a presumption of transborder reputation merely because there exists a website, or one advertisement shown once in 4 months on TV. I think the onus to prove an action for passing off where no user in India exists, definitely lies on the Plaintiff- and to lessen that burden by presuming reputation may be unfair.
Perhaps a balance, like the one sought to be achieved by the Banyan Tree judgment should be encouraged?