Close on the heels of the Colgate case, where a Delhi Court issued summons to the top brass of Colgate and a Registrar from the trademarks registry for allegedly forging a trademark certificate, we have been informed of a similar controversy brewing before the High Court of Madras in an existing case where Consim India Ltd. had sued Google and other competing matrimonial websites such as People’s Interactive Pvt. Ltd. (Shaadi.com), Times Business Solutions Ltd. and Jeevan Sathi Internet Services Pvt. Ltd. for trademark infringement.
As we had reported earlier on this blog, Consim lost the first round of this litigation before the Madras High Court after Justice Ramasubramanian’s epic judgment denying Consim an interim injunction on the grounds that its marks were descriptive and hence weak and unenforceable. Consim filed an appeal against this decision before a Division Bench of the Madras High Court and during the course of the appeal, one of the defendants, Shaadi.com discovered that the registration certificates of two of the trademarks granted to Consim for the trademark ‘Bharat-Matrimony’ in different classes failed to include crucial disclaimers which were ordered by the Trademarks Registry during the examination of the application and which disclaimers, Consim itself had consented to during the prosecution of the trademark application. Reportedly, counsels for Shaadi.com and Google, Vineet Subramani and Senior Advocate Raman have alleged that suppression of such vital information, especially the disclaimers consented to by Consim, constitutes misrepresentation on behalf of Consim.
In matters of equity, especially interim injunctions, suppression of vital information is enough for a court to deny the reliefs sought for by the plaintiff. The Madras High Court is currently hearing arguments regarding the application filed, by Shaadi.com, to bring these extra documents on the record. Consim has reportedly engaged two senior advocates to oppose this plea on several procedural grounds.
Regardless of the outcome of the Shaadi.com application to bring on record the new information, I would like to concentrate on the alleged discrepancies in the trademark registration certificates granted to Consim, especially since such allegations are being raised regularly against the Trade Mark Registry.
(i) Trademark No. 1030740: The original trademark registration application for this mark in Class 16, filed in 2001 had claimed a label consisting of the words ‘BharatMatrimony.com’ in conjunction with a caricature of two human figures embracing or an equivalent physical activity. (The application can be accessed over here)
In the examination report issued for this trademark application, the Registrar raised two of the following objections: (i)‘.com’ to be disclaimed, (ii) ‘Bharat’ to be deleted on the grounds that it was a geographical name. (The examination report can be accessed over here)
After a hearing held by the Trade Mark Registry on the 7th of August, 2003 to discuss the examination report the Joint Registrar informed the trademark applicant that the mark would be advertised in the trademark journal only if the following conditions were agreed to:
(i) To delete ‘.com’;
(ii) To disclaim the words ‘Bharath’ and ‘Matrimony’ both separately as well as the device of the Human Caricature except as substantially shown in the label;
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| TM No. 1030740 |
(iii) To convert the application to Part B of the trademark register (The old trademark law provided for a Part A & Part B and any mark being registered with limitation had to be registered only in Part B of the register).
(The order of the Registrar can be accessed over here.)
The TM applicant replied to the Trade Mark Registry expressly agreeing to all the conditions imposed by the Joint Registrar. (The reply can be accessed over here.)
Thereafter the application was advertised in the Trademark Journal on the 29th of September, 2004. Although I’ve been unable to access a copy of this journal, the registration certificate issued after the advertisement is available on the website. Surprisingly, the final registration certificate carries the original version of the trademark as applied for without the crucial disclaimers inserted by the Joint Registrar after the hearing on the 7th of August, 2003.
(The registration certificate can be accessed over here.)
These disclaimers are crucial to the present litigation before the Madras High Court since it will fundamentally alter the case. For instance, with the disclaimers, Consim would not be able to claim the terms ‘Bharat’ & ‘Matrimony’ separately.
This particular trademark is of utmost significance to Consim since several of its other trademarks such as ‘Assam Matrimony’, ‘Telugu Matrimony’, ‘Tamil Matrimony’ have all been ‘associated’ in the trademark register to this particular mark. Further, if Consim has disclaimed ‘Bharat’ & ‘Matrimony’ individually there is simply no question of holding Google liable for recommending these words through its ‘Keyword Suggestion Tool’ for its ‘Ad-words’ program. Similarly Consim’s competitors like Shaadi.com can bid individually for use of these words in the ‘Ad-words’ programs without any fear of being sued for trademark infringement. (Clarification: A source familiar with the litigation clarifies that Consim has never sought to protect the words bharat & matrimony individually but instead has only sought to protect both words jointly i.e. ‘Bharat Matrimony’. The issue therefore being whether a TM applicant can claim a monopoly over two words together when the applicant has disclaimed both words individually – an interesting point for debate.)
I have no idea how the Trade Mark Registry failed to insert these crucial disclaimers in the trademark certificates. Was it negligence or were there other reasons for the omission? Or were these disclaimers not inserted because the provision regarding ‘disclaimers’ was done away with under the new Trade Marks Act, 1999? The new Section 17 does not provide for disclaimers; instead it states that separate elements of a registered trademark cannot be enforced individually unless each element is registered with the trademark registry. Should marks registered under the old law follow the provisions of the old law or can they be registered under the new law?
(ii) Trademark No. 1131365: Similarly, in the case of Trademark No. 1131365, the registration certificate displays the mark as applied for despite the TM applicant agreeing to the disclaimers ordered by the Registrar during the course of trademark examination. The TM application can be accessed over here, the examination report can be accessed over here, the reply can be accessed over here and the registration certificate can be accessed over here.
Conclusion: Regardless of what happens in the Consim v. Google battle, the Controller General should necessarily constitute a committee to examine whether the IP Office does indeed have a failsafe mechanism to ensure the accuracy of trademark registration certificates. There are simply too many of these controversies popping up of late.
Disclaimers do not appear on the registration certificate. However, it is put in trademark journal advertisement and certificate for use in legal proceeding. There is no negligence or omission from TMR if disclaimers are available in certificate for use in legal proceedings.
It is a settled principle of trade mark law that when you compare trade marks, you compare them as a whole. Hence even if Consim has disclaimed exclusive rights to both words individually, it can still claim exclusive rights to the trade mark as a whole comprising the two words. Also, disclaimers are not mentioned on the trade mark certificate.