In an interesting judgment
delivered earlier this month, the Delhi High Court adopted a highly tenuous (and bizarre) line of reasoning in arriving at the conclusion that the plaintiff was not entitled to passing off relief at the interim stage.
But first, the facts. Plaintiff No. 1, one Rohit Singh, a software developer who works for plaintiff no. 2, Vyooh Low Level Computing LLP, claimed that he developed a proprietary software product called Split View. The distinctive attribute of this piece of software is that it enables a user to simultaneously work on multiple windows on a computer screen.
According to the plaintiffs, they learnt in December, 2015 that the defendant, Apple Computers, had developed a piece of software, forming part of MAC OS X E1 Capitan (version 10.11) and iOS 9. This software enabled the screened to be split into two halves in order to enable consumers to work on multiple applications simultaneously and was called Split View. Given that this software was hailed as the most significant improvement in the software updates for Mac OSX and iOS 9, it soon became the first search result on Google for ‘Split View’. This gave rise to the mistaken belief in the public mind, the plaintiff argued, that the plaintiff’s software was an imitation of the defendant’s software, resulting in the plaintiff filing a suit for passing off.
Resisting the plaintiff’s prayer for the grant of interim relief, the defendant argued that it had been using the phrase ‘Split View’ to refer to the multi-windowing functionality in its products since 1993 and had introduced this feature with the same name in its Mac and iOS operating systems in a phased manner. Further, the defendant contended that ‘Split View’ was a descriptive phrase widely used by many third parties for which there were 1839 patents predating the Plaintiff’s development of its software product. Finally, the defendant argued that the plaintiff had not established that it had earned any goodwill and reputation for the Split View software and that the same had been swamped by the defendant.
While the plaintiff was able to obtain an ex parte interim order interdicting the use of the trademark ‘Split View’ in any of the defendant’s products, this relief was vacated by the Division Bench and the matter was remanded to a single judge for adjudicating upon the prayer for the grant of interim relief. The judgment under discussion was delivered against this backdrop.
While conducting a passing off analysis, the Court noted that the plaintiff had neither averred, nor established, that the defendant was seeking to arrogate to itself the goodwill and reputation earned by the plaintiff which is the sine qua non to succeed in a passing off action. To buttress its conclusion, the Court made the following, two parts bizarre, one part worrying, observation:
“E. In fact, during the hearing, the thought did cross my mind that the effect if any of the association, even if made between the plaintiffs and the defendant, at least at this stage appears to be to the benefit rather than to the detriments of the plaintiffs; if at all anyone familiar with the trade mark of the plaintiffs forms an opinion that the defendant, in its product has incorporated the software under the mark „SplitView‟ of the plaintiffs, in my mind it prima facie appears that the reputation and / or goodwill of the plaintiffs would go up, rather than down.”
While some may argue that the finding excerpted above was only in the form of obiter dicta and does not merit a detailed examination, I would submit that this observation is deeply problematic for 3 key reasons.
First, and most important, the judge’s observation, if taken to its logical conclusion, would give a tech giant like Apple a carte blanche to pass off the products and services of others as their own. Given that Apple would always have the upper hand vis-à-vis a plaintiff insofar as goodwill and reputation of its products is concerned, the logic underpinning the judge’s conclusion essentially forecloses the possibility of a finding of passing off ever being returned against them.
Second, and relatedly, given that it is a well settled principle that, at the interim relief stage, the Court should not make observations that would prejudicially affect the case of a party on merits and should only make a prima facie assessment, this finding is a cause for concern. Put simply, if the judge has already formed a view that the plaintiff has nothing to lose by Apple using its trademark, one wonders how any plaintiff would be able to disabuse a judge of this notion at trial.
Finally, it bears noting that the Court made this observation in the context of addressing the plaintiff’s argument that this was a case of ‘reverse confusion’. The Court records the plaintiff’s argument at para 10(x) in the following words:
“(x) this is a case on reverse confusion where the senior user suffers injury not because junior user seeks to profit from the goodwill associated with the senior user‟s mark but because public comes to assume that the senior user‟s products are really the junior user‟s or that the senior user is somehow connected to the junior user…” [italicized a portion of the argument for emphasis].
Simply put, the plaintiff’s argument was not that its goodwill has gone down by virtue of an association being made in the public mind between its software and that of the defendant; it simply is that the creation of such association, ipso facto, results in the causation of an injury. This being so, I would respectfully submit that it was wholly inapposite for the Court to assess this argument from the vantage point of erosion of goodwill and reputation.
The matter will now be listed on the 27th of August for the preparation of the trial schedule. One only hopes that, when the Court issues its final ruling, it does so with an open mind, uninfluenced by this deeply problematic observation.