Kerala and Karnataka Tussle Over the ‘KSRTC’ Mark: Registrability, Concurrent Use, and Infringement
Nikhil discussed the recently revived controversy between the states of Karnataka and Kerala regarding the rights over the trademark ‘KSRTC’. He recounts the background of the usage of the mark for the states’ respective State Road Transport Corporations which led to a tussle when Karnataka applied for a registration for the mark and served a notice to Kerala in 2014 stating that they should not use the acronym. Currently, both have the right to use their marks without infringing the other’s. He finds that though the marks are arguable generic or descriptive, they are registrable if they acquire secondary meaning. He then argues that per Section 12 and the judicial principles laid in the regard, the KSRTC mark is likely to qualify for honest concurrent use by both parties. Even if it doesn’t, the registrar has discretionary power to allow the same in ‘other special circumstances’. If concurrent use isn’t permitted, although Karnataka’s use of the mark would prima facie amount to infringement it is likely to be exempted under Section 30(2)(a) as the mark describes the geographical origin of the services. He concludes that in these peculiar circumstances, arguments for exclusive rights are equally applicable from either side, opining that it is best that concurrent use be permitted due to the public service nature of the corporations.
Collective Marks: A Tale of Collective Confusion at the Registry
In a guest post, Akshay Ajaykumar highlights that several collective mark applications in India have been erroneously granted collective mark status by the Trademark Registry. He begins by explaining the statutory position of collective marks under Section 2(1)(g), and then recounts the special statutory requirements under Sections 62, 63 and 64 of the Trade Marks Act. He also highlights the rules regarding the application and use of a collective mark under Trade Marks Rules, 2017 and the Draft Manual of Trade Marks. Listing 10 trademarks he has specifically looked into, he argues that 9 of them are erroneous as multiple rules relating to collective mark registration, such as requirement of statement of case, draft regulations, prohibition of ownership by partnerships, among others, have been violated in registering them. He opines that the erroneously granted applications were filed by the Applicants either by mistake or due to a misconception of law, and exist in violation of the statute. He points out that the Registry has power to initiate a suo motu rectification action under Section 57(4) and argues that the Registry should conduct e a proper due diligence to expunge wrongly granted collective mark registrations. Additionally, the Registry should make the Examiners aware of collective marks through training sessions and issue proper guidelines concerning collective marks.
The Daily Guardian Controversy: News, Misinformation, and a Passing Off Perspective
Nikhil also analysed the recent controversy relating to an article in ‘The Daily Guardian’ newspaper, which was shared by multiple politicians before being criticized as a fake news agency trying to pass off as an associate of the prominent British newspaper ‘The Guardian’. He digs deep into the origin and ownership of ‘The Daily Guardian’, which is recently established and based out of UP. In the absence of registered India trademarks held by The Guardian, he examines the possibility of a passing off claim against the paper. Referring to factors noted in Cadila Healthcare, he finds that while there is a phonetic closeness and the nature of the services rendered by both news agencies are the same, it is difficult to determine the class of purchasers in the absence of clear readership data. Additionally, although the number of Indian politicians sharing articles from The Daily Guardian has arguably increased the possibility of reader confusion, proving likelihood of damage remains complicated. Nikhil also argues that the newness of the news agency and the lack of positive acts by The Guardian, accepting the use of this name by the former negate any argument regarding acquiescence of use. He concludes that the viability of a passing off action remains uncertain, but it is necessary for news agencies to be more thorough with their market assessments so that unscrupulous portals could be weeded out in time.
PPL’s Copyright Society Registration Rejected: Delhi High Court Issues Notice, Grants Ad-Interim Stay
Divij reported that the Registrar of Copyrights has rejected the application of Phonographic Performance Limited India (PPL), a major collective rights organisation for sound recordings in India, to be a registered copyright society. PPL has approached the Delhi High Court asking it to direct a reconsideration of the application. Divij recounts the history of PPL’s application for re-registration after the 2012 Copyright amendments, which was withdrawn in 2014 only to have the withdrawal rejected by the Registrar and a subsequent reapplication in 2018. However, in May 2021, the application was rejected on grounds that the 2014 application was withdrawn, and the 2018 application was belated. The present petition in court sought to estop this claim, and to grant an injunction restraining the consideration of other copyright societies’ applications. The court only restrained the government from taking action ‘inconsistent with the position’ that PPL’s application for registration may yet be revived. Interestingly, like PPL, Recorded Music Performance Ltd. describes itself as owning and controlling the public performance rights of its members, has a 2018 application for registration as a copyright society pending which is likely what prompted PPL’s attempt to re-register and ask for the injunction.
Online Conclave on ‘Counterfeiting in Covid Times: Medicines, Medical Devices and Accessories’ [June 12]
We informed our readers that the National Association to Stop Counterfeiting and Piracy (NASCAP) in Association with DPIIT IPR Chair, The WB National University of Juridical Sciences, Kolkata organised an online conclave on ‘Counterfeiting in Covid Times’ with a focus on ‘Medicines, Medical Devices and Accessories’ on 12th June, 2021. For details, please read the announcement.
Decisions from Indian Courts
- Delhi High Court in Krishna Kishore Singh v. Sarla A Saraogi & Ors refused to order an interim injunction restraining the release of a film based on Sushant Singh Rajput’s life on grounds of publicity rights [June 10, 2021].
- Delhi High Court in UPL Limited v. Sikko Industries Ltd restrained the defendant from releasing, in the market, any product, including ‘SIKPHOS’ in the allegedly imitative container bearing the impugned design till the next hearing, but did not restrain it from manufacturing the same [June 4, 2021].
- Delhi High Court in Anil Rathi v. Barhi Concast Llp & Ors restrained the Defendants and their associates from manufacturing, selling, offering for sale, marketing, advertising, exporting or in any manner dealing in TMT Bars, steel bars, common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and goods of common metal under the Trade Mark ‘RATHI/BCLLPRATHI’ or from adopting any other mark or label which is identical or deceptively similar to the registered Trade Mark ‘RATHI’ [June 4, 2021].
- Delhi High Court in Sony Pictures Network India v. www.sportsala.tv & Ors issued interim directions restraining the 50 Defendants from hosting, streamlining, reproducing, distributing, making available to the public and/or communicating to the public or facilitating the same on their websites through the internet in any manner whatsoever, any cinematograph work, content, programme and show or event broadcasted on the plaintiffs’ channels in which they have copyright [June 4, 2021].
Delhi High Court in Ttk Prestige Limited v. Baghla Sanitaryware Private ordered an interim injunction restraining, till the next date of hearing, the Defendants and its associates, from selling, offering for sale and advertising in any manner including on the internet and e-commerce platforms like ‘www.amazon.com’ and ‘www.flipkart.com’, directly or indirectly dealing in sanitaryware, bath and kitchen fittings, kitchenware, cookware and/or cognate and allied/ related goods under the logo of the Plaintiff. It further directed the e-commerce platforms, Flipkart and Amazon, to de-link the products of the Defendants that are bearing Plaintiff’s logo or which are associated with the Plaintiff [June 4, 2021].
- Delhi High Court in Cable News Network Inc v. City News Network & Ors passed an order of ex parte ad-interim injunction restraining the Defendants and their associates from using as a trading name, domain name or rendering any services, communicating or making available or publishing or printing or disseminating or distributing, or duplicating, or sharing or displaying, or releasing, or showing, or uploading, or downloading, or exhibiting, or playing, and/or defraying any content, news, information under the mark ‘CNN’, or any mark, name, logo, monogram or label including the impugned trademarks ‘CNN’, and that is or may be identical with or deceptively similar to Plaintiff’s CNN trademarks as may cause or be likely to cause confusion or deception amounting to infringement and/ or passing off of the Plaintiff’s registered trademarks [June 3, 2021].
- Delhi High Court in Merck Sharp and Dohme Corp & Anr v. Solitaire Pharmacia Private Limited passed an ex-parte ad-interim order of injunction restraining the defendant from manufacturing, using, selling, distributing, advertising, exporting or offering for sale directly or indirectly any products that infringes the said plaintiff’s Indian patent including SITAGLIPTIN or any other pharmaceutically acceptable salts including Sitaglix, Sitaglix PLUS and Sitaglix FORTE [June 3, 2021].
- Delhi High Court in M/s Copenhagen Hospitality v. M/s AR Impex & Ors passed an order of interim injunction restraining the Defendant, and its associates, from selling the pizzas under the impugned names SPRING BLING, LOVERS DELIGHT, BURN TO HECK, AMERICAN RETREAT, MILANO RETREAT and 7 CHEESY/CHEESE 7, which infringed the Plaintiffs’ registered trademarks SPRING FLING, LOVERS BITE, BURN TO HELL and ENGLISH RETREAT, and misuse Plaintiff’s product names/marks LAS VEGAS RETREAT, CHICAGO RETREAT and CHEESY 7 [June 2, 2021].
- Delhi High Court in Zee Entertainment Enterprises v. Tejendra Modi And Ors suspended the direction contained in the previous order dated 20th May, 2021 insofar as it directs the suspension of Whatsapp accounts containing allegedly infringing material, on the request of the Plaintiff [June 1, 2021].
- Bombay High Court grants protection from arrest to film producer Kamal Jain, co-accused of Kangana Ranaut in ‘Didda’ copyright infringement case brought by author of the book ‘Didda: Warrior Queen of Kashmir’.
- The Delhi High Court restrained two private entities involved in organising beauty pageants and other business activities by using the brand name ‘KHADI’ of the Khadi and Village Industries Commission.
- Medical syringes brand Dispovan owned by Hindustan Syringes & Medical Devices and the Vanguard Diagnostics have reportedly ended their dispute over trademarks ‘DISPOVAN’ and ‘DIPCOVAN’ amicably.
- Ministers from Asia-Pacific trade group APEC are reportedly set to discuss a proposal from New Zealand to remove tariffs on COVID-19 vaccines and related medical products.
- Germany adopts legislation tightening rules against patent trolls, requiring courts examining a patent claim to conduct a proportionality check to see whether an injunction would cause ‘undue hardship’ to the alleged infringer or any third party.
- Photographer Judy A. Juracek brought a copyright infringement suit in a Connecticut court, accusing Capcom of using hundreds of unlicensed photographs from her book, ‘Surfaces’, to create assets for games like Resident Evil 4 and Devil May Cry.
Note: The applications for SpicyIP Fellowship are now open and will close on June 30, 2021.