Trademark

A Nuanced Trademark Distinction: 29(1) vs 29(2)? – Part II by Eashan Ghosh


(Continued….)

Part I is available here.

Distinguishing Conditions / Effects

The third observation from the outcome table is that the key difference between Sections 29(1) and (2), as the defence in Ajanta hinted at, lies in the further condition / effect required to be met. To be clear, the three conditions / effects in issue are: “use in a manner as to render the mark likely to be taken as being used as a trademark” under Section 29(1); “use in a manner likely to cause confusion on the part of the public” under Section 29(2) and “use in a manner which is likely to have an association with the registered trademark”, also under Section 29(2).

What do these conditions / effects mean?

The first of these is “use in a manner as to render a trademark likely to be taken as being used as a trademark”. This turns entirely on what is likely to be taken as being used as a trademark. It must, of course, be use in the course of trade, of something identical or deceptively similar to a registered trademark. The words “to be taken as” suggest that the question of whether this use amounts to use as a trademark is to be determined from the standpoint of the public, or by judges substituting judgement for the public. The user’s own intention behind the use is not relevant (Ciba Geigyv. Crosslands Research Laboratories, 1995; Hem Corp v. ITC, 2012).

But, to frame the inquiry in reverse, what kind of use in the course of trade would the public not take as likely to be use as a trademark? Using a word identical or deceptively similar to a registered trademark as a descriptive term is the most likely fit for this condition. Its utility would be as a descriptor or as non-distinctive content (such as literature on product packaging), and not as a trademark. It would very much be use in the course of trade. It is also possible that the public would be likely to assume it is being used as a trademark (Nestlé India v. Mood Hospitality,2010; Gufic v. Vasu Healthcare, 2016).

However, this suggestion is not without difficulty. If it is, indeed, a descriptive or non-distinctive term, it is less likely than normal that a word identical or deceptively similar to it (i.e. the rights holder’s trademark) would have secured a trademark registration. Even if there is a registration in place, descriptive or non-distinctive content is extremely broadly protected as an exception to trademark infringement under Section 30(2)(a). This has nothing to do with whether or how these words are covered under Section 29(1).

The second condition / effect is “use in a manner likely to cause confusion on the part of the public”. This is the most intuitive of the three, and the one with which Indian Courts have the most experience. Notably, here too, the intent of the user of the impugned mark is not relevant to the effect created (RR Proteins & Agro v. HS Singhania, 2010). Also, as noted above, the expression “deceptively similar” defined by Section 2(1)(h) and used in Section 29(1) tends towards the effect of likely public confusion which is one of two effects covered by sub-clause (2) and not sub-clause (1) of Section 29.

The final condition / effect is “use in a manner which is likely to have an association with the registered trademark”. In many respects, this chimes with the first condition / effect. However, in requiring an association with the registered trademark, it asks the rights holder to prove a likely connection between the impugned mark and the rights holder’s own trademark. This is different from requiring proof of the likelihood of the impugned mark being seen as a trademark generally, as is required by Section 29(1).

Even so, to the degree that descriptors or non-distinctive content could be said to fall within the first condition / effect, they would align with the third condition / effect in much the same way. This is because both must still be used in the course of trade. If they are, then the rights holder’s trademark would, by definition, be part of the same or similar trade. If, therefore, the impugned mark is likely to be seen as a trademark generally, this judgement would occur in the same marketplace where the rights holder’s trademark also occupies territory.

The inquiry sharpens to this: For the first condition / effect to carry unique weight over and above the third, there must be a likelihood that the mark, which is identical or deceptively similar to the rights holder’s registered trademark, is likely to be seen as a trademark but is not likely to evoke an association with the very registered trademark that it is identical or deceptively similar to. This is an extremely constricted space for Section 29(1) to operate in. Descriptors or non-distinctive matter do not meet this condition. The chances of a different category of material used in the course of trade and falling for adjudication under Sections 29(1) or (2) are, for want of a better word, unlikely.

Legislative History and UK Comparison

What, then, is the unique ground covered by Section 29(1) over and above Section 29(2)? This is a question that requires a detour into the history of these provisions.

Section 29(1), in the form that it survives today, retains each of its elements (activity, comparison and condition / effect) in identical language from Section 29(1) of the Trade and Merchandise Marks Act, 1958. The 1958 Act, in turn, was retained as is from Section 21 of the Trade Marks Act, 1940.

However, while the activity and comparison limbs had survived without complaint until the 1999 Act, the condition / effect limb has been under criticism from even before its incorporation into the 1958 Act. Justice Ayyangar’s revision of the 1940 Act recommended the deletion of the condition / effect limb of what is now Section 29(1) on the ground that it was “tautologous”, implying that there was no room for use likely to be seen as use of a trademark that was not already use in the course of trade and covered by the defences to infringement (Ayyangar Revision, 1955, para 179-180).

Section 29(2), on the other hand, was introduced by the 1999 Act. It aligned the infringement provision with the newly introduced Sections 11(1)(a) and (b). These break down the relative grounds for refusal of a trademark into the same spectrum of identical and similar marks, goods and services as discussed in the comparison columns of the table above. With this spectrum now introduced, the binary comparison of “identical or deceptively similar” under Section 29(1) is arguably obsolete.

This is not to say, of course, that Section 29(2) as it stands is perfect.

Sections 10(1) and (2) of the UK Act, from which the present Indian statute and several preceding Indian revisions have taken a cue, are a good baseline for this comparison. Section 10(1) corresponds with the Indian Section 29(1), except it frames an identical trademark used for identical goods or services as a strict, effect-free instance of infringement. The UK Sections 10(2)(a) and (b), on the other hand, superimpose perfectly onto the Indian 29(2)(a) and (b).

The Indian equivalent for the UK Section 10(1) is actually to be found on a combined reading of Sections 29(2)(c) and 29(3). These take the narrowest of the three comparisons (identical mark applied to identical goods or services) and subject it to the same conditions / effects as Sections 29(2)(a) and (b), with only the backstop that likelihood of public confusion would be presumed in a Section 29(2)(c) case.

The presumption remains rebuttable, though, and it is hard to see why. Let us read the activity and point of comparison together but separate the chain at the effect: if a person uses in the course of trade an identical trademark in relation to identical goods or services, under what hypothetical would such use not be likely to cause confusion in the minds of the public or not be likely to have an association with the registered trademark? This inquiry, intuitively, is quite barren. This makes the decision under the UK Act to liberate cases under Section 10(1) [their Section 29(2)(c)] from having to prove a confusion-based effect an eminently sensible one.

Therefore, in order to sustain its value in the statute as it stands, Section 29(1) must catch and punish as infringement an outcome that slips through the cracks of Section 29(2). The only such outcome, we can now be sure, would be as follows: a mark identical or deceptively similar to that of the rightsholder and likely to be presumed to be used as a trademark but one that is not likely to cause public confusion and is not likely to have an association with the rights holder’s registered trademark.

Summary

To summarize from the back:

Sections 11(1)(a) and (b) were brought in by the 1999 Act to add depth to the relative grounds for refusal of a trademark application. However, it would have been incongruous to use these comparisons only to block trademark applications under Section 11 and not permit rights holders to bring infringement actions on the same grounds. For this reason, Section 29(2) was introduced, reproducing these comparisons for use in infringement actions.

What the 1999 Act also did, however, was retain Section 29(1) from the 1958 Act. It is not clear why this was done. It leaves behind an odd situation where Section 29(1), which ostensibly leads the Indian law in defining what constitutes trademark infringement, contributes little to this objective. In particular, if Section 29(2) is superimposed on it, the scope of Section 29(1) appears to have been squeezed out of relevance almost entirely.

Against this, Indian Courts have offered three defences of Section 29(1) as it stands.

The first claim is that the comparison between marks that are “deceptively similar” is unique to Section 29(1). It is clear, though, that, even if “deceptively similar” is understood as anything but a subset of “similar” under Section 29(2), the deceptive similarity inquiry required by Section 29(1), by statutory definition, retreads the same standards that are required to be met by a registered proprietor under Section 29(2).

Second, it is claimed that Section 29(1) is unique because the further condition it requires speaks to the type of impugned use rather than the effect of such use. More specifically, it requires that the impugned use be taken to be use as a trademark, and, if it is so taken, the intention of the user is irrelevant.

This claim assumes that there is a legally significant amount of marks used in the course of trade [common to Sections 29(1) and (2)] that are not used as trademarks[exclusive to Section 29(1)]. Indian case law demonstrates that this is frequently an extremely narrow inquiry, and is usually budgeted for by statutory exceptions which have nothing to do with Section 29(1). The point on the absence of intent in generating an effect on the public is hardly unique to Section 29(1) either—a similar condition can be (and has been) easily stapled on to the effects required by Section 29(2) as well.

The final defence of Section 29(1) is that it specifically guards against catching in the net of infringement permissible descriptors and non-distinctive content which may be identical or deceptively similar to a registered trademark. However, the permissibility of such content does not live or die by the authority of Section 29(1) – this is a well-recognized exception under Section 30(2)(a). All of this, of course, assumes that such content would be caught by Section 29(2) to begin with, which is far from certain.

Section 29(1) has survived virtually untouched for nearly eighty years and, once a piece of legislation gets to be that age, it is usually a good indication to stop betting against it. However, the case for its obsolescence is equally compelling, and it raises the question of what should be done with it going forward.

There is, indeed, a line of authority that has recognized that Section 29(1) does not mesh well with the rest of Section 29, and has had some adjustment issues with its new neighbours. This authority has ushered Section 29(1) to the valedictory status of “general proposition of law”, leaving the remaining, younger sub-clauses of Section 29 to do the heavy lifting on the fundamental question of what constitutes infringement of a trademark under Indian law.

It is a convenient, typically Indian compromise, and perhaps this is where Section 29(1) will finally come to rest.

 

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Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his very second year in the prestigious Nani Palkhiwala Essay Competition on intellectual property. Winner of almost a dozen essay competitions in his law school days, he was involved in various research and policy initiatives relating to intellectual property. His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Presently, he is associated with Ninan & Mathew Advocates, Cochin, a leading law firm in Kerala.

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