Monday Trademark Musings

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We are having a lot of trademark disputes these days (keep a check on our weekly reviews.); with every other day seeming to bring new issues to look at. In the last two weeks, I noticed three cases that intrigued me and made me wonder about their conceptual coherence. In this post, I present those cases and broach some questions for discussion. Please note that a full discussion of facts and arguments is not done in this post.

Who is the “Viewer”?: The first case that demands deliberation is Reckitt Benckiser (India) Pvt vs Wipro Enterprises regarding Dettol hand wash and Santoor hand wash, where the DHC denied the injunction to the Plaintiff for a claim of disparagement. The case concerns the Defendant’s advertisement video depicting a mother and a daughter (whom Justice C. Hari. Shankar names Priya); the mother washes her hands with Santoor handwash and plays with the daughter who likes the softness of the mother’s hand post-handwash. The background voice-over describes the Defendant’s product as different from other “normal” handwashes and shows the mother replacing her previous handwash with Santoor. The replaced bottle allegedly appears like a Dettol bottle, which Plaintiff regards as disparaging.

In the lucidly written judgment providing a detailed account of comparative advertisement jurisprudence, it set out the factors to assess advertisement (read para 103). What caught my interest is the unclarity of the relevant “viewer” of the advertisement as per the Court. The Court mentions two kinds of viewers – a “normal viewer” and a “reasonable man”. As per the court, a ‘normal viewer’ does not view the advertisement “with the specific aim of catching disparagement [and understand] it in their natural, general and usual sense and as per common understanding.” Whereas a reasonable man is “not naïve, can read between the lines, can read in implication into the advertisement, may indulge in some amount of loose thinking, is not avid for scandal, does not select a derogatory, or bad, meaning to be attributed to an advertisement where alternative, non-derogatory meanings are also available.” From these words, the latter type appears more intelligent than the former, or so to say, a normal viewer is apparently not a reasonable man. Then, in the same list, the Court also notes that “A plaintiff cannot afford to be hypersensitive, as the choice of the article which a consumer would select would depend on various factors including market forces, economic climate and nature and quality of the product.” Does that mean that the consumer can be sensitive? If so, will that be counted as a “reasonable man” or a “common person? Moreover, given that puffery is permitted and as the Court also noted that not every aspect of advertisement is taken seriously, I wonder if the normalization of such ads helps consumers get used to them, thereby raising the standard of intelligence.

2. How come “Bad faith” if the mark has NO protection in India? – Another case that demands attention is BPI SPORTS LLC vs SAURABH GULATI & ANR where the Delhi Court remarked that “Though trade mark squatting as an individual phenomenon does not find especial mention in the Trade Marks Act, it would certainly amount, in my opinion, to “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act.” Here, the Defendant registered the mark BPI SPORTS in India with the knowledge that Plaintiff already has a registration in the same in the US and is a reputed mark. The Defendant’s knowledge of the Plaintiff’s mark is clear from the fact that it traded with it. The Plaintiff subsequently applied for the registration and came to know about the Defendant’s registration. It filed for the rectification of the trademark register seeking the removal of the Defendant’s mark.

The Court held that while the Plaintiff has no protection in India either statutorily or in common law, for Defendant’s bad faith, its mark be removed from the register of trademarks. Although I find this order intuitively tuned, I also wonder that without any protection to the plaintiff (statutory or common law), how can the registration of a mark by the Defendant be bad faith in the trademark context? The “bad” in bad faith is the opposite of “good” in good faith as the Court noted (para 38.2); good faith is generally regarded when a person uses a mark without knowledge of an existing “protected” mark. From the language of Section 11, it is clear that the focus is protecting prior marks or marks that have protection through the Act or through common law remedy. This way, bad faith would be registering and using a mark with the knowledge of someone else’s “protected” mark.

In the present case, however, the Plaintiff was only registered in the US with no goodwill and protection in India. In such a case, without protection in India, how can a Defendant be said to have registered the mark in “bad faith.” Put another way, in the absence of protection for Plaintiff, shouldn’t Defendant’s mark be first and new itself for the purpose of protection? Mere knowledge of a mark shouldn’t conclude bad faith, especially in the trademark context. Shouldn’t “the protection (be it statutory or common law) of a mark in India” be the primary factor for deciding the bad faith?

On the flip side, is that this case may assuage some concerns that it was ‘too easy’ to get registration or protection for a mark due to ‘transboundary reputation’, even if it is relatively unknown in India. Previously, the courts have refused to grant protection to marks that, despite having a reputation abroad, do not enjoy a similar fate in India. (For instance, see the Toyota v. Prius dispute and the Toyota v. Techsquare single judge order) However, what can be the impact of this order on the eventual findings in such cases? Leaving it for our readers who have more experience and expertise on this issue to comment.

3. Non-application Mind vs Misapplication of Mind (?) – The first case in the line is a Delhi High Court (DHC) order, Abu Dhabi Global Market vs The Registrar Of Trademarks, rebuking the shoddy reasoning of the registrar of the trademark. This is an issue that has been regularly covered on the blog, e.g. see this potent post by Swaraj and Praharsh which can guide to other posts on the issue. While this order contains relevant remarks regarding the liability of the registrar regarding the adjudication of the trademark application (esp. see paras 37-40), some portions of it need more highlighting. The registrar denied protection on the device mark “ABU DHABI GLOBAL MARKET” saying that “The attorney failed to establish the Identity of the mark in applied class. Neither the mark appears to be coined or invented.” Like the Court, I also failed to understand what the registrar meant by the “identity” of the mark. But from the later part of the sentence mentioning “coined or invented” marks, I could sense the reference to the spectrum of distinctiveness ranging from coined/invented, arbitrary, suggestive, descriptive, and generic marks.

The Court, however, did not see it this way and analogized the “invented” with the “inventiveness” of the Design and Patent Act. Referring to Sections 9 and 11, it noted that “I do not find, in the said provisions, any requirement of a mark being “coined” or “inventive” for it to be eligible for registration. Distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not.

Another point that calls attention is “Composite marks … stand ipso facto excluded from the scope of Section 9(1)(b), even if part of such marks consist of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark is registered.” Thus, as per the Court, Section 9(1)(b) is only limited to “marks and indications.” I wonder how can marks “marks and indications” not include composite marks? Composite marks are trade marks only, aren’t they? Because if Court is correct, then, atleast theoretically, every composite mark will be outside the purview of Section 9. This would absurdly yet automatically make composite marks distinctive. This needs revision.

Thanks to Swaraj and Praharsh for their input.

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