We’re happy to bring our readers a note on a recent Bombay High court order, by Shashank Mangal and Kamlesh Mali, students from ILS Law College, Pune. I must state up front that though they had sent this to me almost immediately after the order had been passed, there was a long delay on my part in posting it. Without further ado:
Interpretation of S.17 and S.30 (1) (a) of the Trade Mark Act, 1999 with reference to a recent Bombay High Court Order
This post deals with a recent order of the Bombay High Court granting an injunction to the plaintiff, who deals in country liquor, against the use of a part (‘TANGO’) of his registered trademark ‘TANGO PUNCH’ by the defendant (selling similar product). The authors have emphasized the interpretation of S.17 and S.30 (1) (a) of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’) which form the thrust of the order. (Long post to follow)
1. Summary of the Facts
The plaintiff, Brihan Karan Sugar Syndicate Pvt. Ltd., and the defendant, Lokranjan Breweries Pvt. Ltd., both manufacture and sell country liquor. The plaintiff claims to have a registered trade mark “TANGO PUNCH” under registration no.1051107 in Class 33 [Alcoholic beverages (except beers)]. The registration of the said trademark dates back to 10th October, 2001.
In August, 2013, the plaintiff learned about the defendant’s application for registration of ‘TANGO CHARLIE’ as its trade mark label.
From 2011, the plaintiff decided to emboss the word ‘TANGO’ and a three-finger device on its glass bottles. Later on it found that the defendant was selling its own distillation in the embossed bottle of the plaintiff. The defendant used to obtain such bottles of the plaintiff from the secondary market.
Aggrieved by this, the plaintiff sued the defendant for trademark infringement and passing off.
a. Protection for ‘TANGO’ or TANGO PUNCH’-Significance in the light of S.17 of the Trade Marks Act, 1999
The plaintiff has trademark registration for ‘TANGO PUNCH’ with a device mark of ‘Orange Slice’, as a whole.
The plaintiff argued that notwithstanding the fact that it had not obtained a separate registration for word ‘TANGO’, it was entitled to protection for its use, since it became an essential, leading and memorable feature of its product.
On the contrary, the defendant contended that since the plaintiff was not holding a separate registration for the word ‘TANGO’ under section 15 of the Act, it was not entitled to any protection so far as the use of only ‘TANGO’ was concerned.
Order of the Court and its reasoning
The Court held that the word ‘TANGO’ was entitled to protection under the Act. The reasoning of the court is summed up in its following observations made in paragraph 21 of the order:
“But this cannot mean that where the mark has a unique, distinctive, memorable, leading and essential feature, albeit not one separately registered, that that feature can be used willy-nilly by all and sundry without fear of repercussion. In the context of trade mark law, a leading or essential feature is akin to a synecdoche, a figure of speech where a part is uniquely representative of the whole (and sometimes vice-versa): “sails” for boats, or “willow” for a cricket bat for instance….. were these components not separately registered, it would be open hunting season on them all and anyone could use them even in conjunction with rival products. That seems to me to be a concept that entirely undermines the fundamentals of trade mark protection law.”
In arriving at the aforesaid conclusion, the court also relied upon Ultra Tech Cement Limited v. Alaknanda Cement Pvt.Ltd. & Anr., . This judgment in turn relied upon paragraph 35 of Three-N Products Private Ltd., v. Emami Ltd.,. The said para of that judgment stated that S. 17 of the Act stopped flowing of any exclusive rights in respect of any part of a composite mark registered as a whole, but at the same time upheld the right of such proprietor to claim exclusivity for use of a part of such composite mark provided that he establishes exclusivity aliunde vis-à-vis such part.
b. Reusing of bottles – An honest practice in industrial or commercial matter under S. 30 (1) (a) of the Act?
The defendant contended that the reusing of bottles (both plain and embossed) obtained from the secondary market was a common practice amongst entities dealing in country liquor. And though efforts were made to separate plain from embossed bottles, sometimes mistakes happened during segregation as the result of unavoidable human error. Thus, laying emphasis on reusing of bottles as a common practice, the defendant sought the defence of S. 30 (1) (a) of the Act to be permitted in the instant case. S.30 of the Act places certain limitations on the effect of registration of trade mark. Sub-section (1) of the said section permits by any person the use of a registered trademark of another for the purpose of identifying goods or services of the registered proprietor provided that such use is in accordance with honest practices in industrial or commercial matters.
The plaintiff countered the defense by arguing that there was no such practice in the first place. Moreover, even if such practice was there, it cannot be termed honest and bona fide practice which is the very requirement to be fulfilled before invocation of this defence. The plaintiff also argued that S. 30 (1) (a) can be invoked only when the defendant uses the plaintiff’s trademark for identification of plaintiff’s goods, which was not the case in the instant matter.
Order of the court and its reasoning
The Court held that the reusing of bottles is not an honest and bona fide practice within the meaning of S. 30 (1) (a) of the Act. For substantiating the same, the Court, in paragraph 26 of its present order, placed reliance on another of its orders in Brihan Karan Sugar Syndicate Private Limited v. South Konkan Distilleries. The court mainly relied on the Skol Breweries test which was laid down in Skol Breweries Ltd v. Fortune Alcobrew Pvt. Ltd. The test, in simple terms, was that the proviso to section 30(1) is capable of being taken as a defense only when the defendant uses the plaintiff’s trademark for identification of plaintiff’s goods, which was not the case in the instant matter.
The Court’s Order is significant as to the interpretation and scope of S.17 and S. 30 (1) (a) of the Act.
The interpretation of the court as to S.17 has far reaching ramifications as it means that if I have ‘ABC’ as a registered trademark, I can file an infringement suit even against the use of ‘A’, ‘B’ or ‘C’ provided that I establish before the court that they form an exclusive and memorable part of my registered trademark ‘ABC’. [The illustration supposes that I don’t hold separate trademark registrations for ‘A’, ‘B’ and ‘C’]. It can be said that the ‘exclusivity’, in relation to a part of a composite trademark registered as a whole, envisaged by the court is somewhat similar to the concept of well-known marks (which get protection even in the absence of registration), the biggest difference being that the latter is codified in the act itself. The interpretation is in furtherance of the intention of the law because protection should not be denied on technicalities if otherwise entitlement to the same is established.
So far as the decision regarding S.30 (1)(a) is considered, the court has merely relied upon the tool of literal interpretation of the act by saying that the use of other person’s mark under that section is for the purpose of identifying the goods and services of such other person.
One issue which the court could have commented upon also is regarding the impact of the embossment of ‘three finger’ device on the plaintiff’s bottles. I think that because the device mark helps people in identifying the plaintiff’s liquor, it further tilts the balance of convenience in favour of the plaintiffs.
As all the issues were decided in the favor of the plaintiff, the injunction was granted to the plaintiff in the matter. Let us wait for the final judgment…