Tag Archives: trademarks
Delhi High Court settles Domain Mark Dispute For Thoughtworks
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Nowadays, many companies are setting up websites to create an online presence. However, quite often, a company looking to use its trademark as a domain name will find that another entity owns/uses that domain name. In such cases, complaints can be filed at the Indian Domain Name Dispute Resolution Policy (INDRP), wherein an arbitrator resolves such disputes.
The same incident occurred with ThoughtWorks, a U.S-based company founded in 1993. ThoughtWorks claimed that in March, 2015, they became aware the domain name ‘ThoughtWOrks.in’ was registered by another company, Super Software, when a ThoughtWorks analyst accessed Super Software’s website after mistaking it to be ThoughtWorks Inc.’s website. Subsequently, ThoughtWorks had filed an INDRP complaint in order to recover the domain name ‘thoughtworks.in’ from. However, in their defence, Super Software claimed that the ‘ThoughtWorks’ trademark was generic in nature, and hence they did not infringe on any existing trademark or copyright. Further, Super Software pointed out that it had registered the domain prior to the complaint and that ThoughtWorks had not registered that domain even though it had been available for a long time.
In this case, the INDRP Arbitrator denied ThoughtWorks’ complaint due to various reasons. The Arbitrator stated that ThoughtWorks was not able to provide sufficient evidence regarding its incorporation and the registration of its trademarks. Further, the Arbitrator mentioned that the addresses of the entities that owned the trademarks were different. The Arbitrator also mentioned that ThoughtWorks had not objected when Super Software registered the domain of ‘thoughtworks.in’.
ThoughtWorks challenged the arbitral award, and won the case when it was brought before the Delhi High Court. The Delhi High Court found that the Arbitrator’s proceedings were in violation of the principles of natural justice. Further, the Delhi High Court reversed the decision of the Arbitrator by highlighting the fact that since the domain mark included the entire name of the US Company, it is obvious that the trademark most definitively belonged to ThoughtWorks, and that it was deceptively similar to the company’s name.
The case file of ThoughtWorks Inc vs Super Software Pvt Ltd. & Anr can be found here.
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Huge relief for Prius Auto Industries – Judgement on trademark infringement given against Toyota motor corp.
We had earlier written on how Toyota Motor Corp. won case against Prius Auto Industries for the infringement of trademark “Prius”. Prius Auto Industries, a Delhi based automotive accessories company, were found guilty of using Toyota Motor Corp.’s “well-known” trademarks. The single-judge Bench of Justice Manmohan, on July 8, 2016, had given an order preventing Prius Auto Industries from manufacturing, selling or using the Toyota Motor Corp.’s trademarks such as “Prius”, “Toyota” and “Innova”. In addition to this, the court had also directed Prius Auto Industries to pay INR 10 lakhs, to Toyota Motor Corp. as compensation for trademark infringement.
Aggrieved, Prius Auto Industries appealed against the judgement. The appeal was heard by justice Pradeep Nandrajog of the division bench of the Delhi High Court, on 23rd December 2016. Upon hearing both the parties, judgement was given favouring Prius Auto Industries saying that the use of “Prius” by Prius Auto Industries does not infringe on Japanese car maker Toyota Motor Corp.’s trademarks.
Prius Auto Industries had appealed saying that trademarks should be determined in context to a similar class of goods and in a relevant geographical market. Accepting Prius Auto Industries arguments, Delhi high court gave judgement in favour of Prius Auto Industries that,
“Toyota is a big company. It has had a presence in India for over two decades when the suit was filed. It was well entrenched in the Indian market in the year 2001. Obviously no consumer of Toyota car or buyer of an auto part sold by Toyota was ever confused by the appellants selling their products under the trade mark Prius, for if this was so, in ten years somebody would have complained to Toyota or at least would have made known said fact to Toyota.”
The judgement also quashed Toyota Motor Corp.’s argument that Prius Auto Industries had been benefited from the trans-border reputation. Toyota Motor Corp. relied on reports in the Indian newspapers, that published news about Toyota’s new hybrid car “Pirus” in Japan in 1997. The Court, however, held that,
“Though published in a newspaper, the publication is in the nature of an article written and thus the weight of its evidentiary worth in the context of an explosive news on a fact of history being made known to the public would be minimal.”
Regarding trans-border reputation, the judgment states,
“The weight of the evidence led by Toyota would be that it has simply established that when it launched the hybrid car Prius in the market in Japan in 1997, the event was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. The law on trans-border reputation requires two facts to be established. The first is reputation in foreign jurisdictions of the trade mark. The second is knowledge of the trade mark due to its reputation abroad in a domestic jurisdiction.”
“There being no advertisements published by Toyota for its car Prius in India and coupled with the fact that not all cars marketed under different trade marks by Toyota acquire a global reputation and much less in India, internet penetration as of the year 2001, being low in India, the weight of the evidence leans in favour of the view that by April 2001 Toyota had not established a global reputation in its trade mark Prius which had entered India.”
Read the full division bench judgement here.
Read the single judge judgment here.
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Amazon India served notice By Flintobox for diverting website traffic
A Chennai-based start-up company Flintobox, a provider of kids’ activity boxes, sent a legal notice to Amazon for alleged unlawful diversion of traffic to Amazon’s website by using their brand name.
Flintobox has already sent a “cease-and-desist” notice to Amazon claiming damages of 10 lakhs INR. According to Flintobox, anyone typing the word ‘Flintobox’ in Google search engine found “Flintobox at Amazon” as the first result in the form of a sponsored advertisement, which on further clicking would give no information of Flintobox products. Rather, it would display products by other companies similar to Flintobox.
The word, “Flintobox” has been a trademark of the company for over 2 years. The company first raised a complaint with Amazon in July 2016 and then again in October 2016. However, it received only automated responses from Amazon, according to official statements. Amazon did not take any action despite complaints, according to Flintobox, and that it had to provide documents to Google to stop the advertisement. Google, however, later changed to the word “Flinto box” in the advertisement thus not agreeing to completely remove the advertisement since the word with a space was not trademarked. Flintobox claimed that they have decided to take legal action against Amazon after failing to get any response from Amazon over the issue.
The CEO of Flintobox stated in a recent blog, titled Google And Amazon – The Sharks That Are Stealing Nemo’s Food #WakeUpAmazon, stated that “Amazon, the biggest online retailer on planet Earth, used Google to steal a prospective buyer of Flintobox, and instead introduced them to some of their (rather irrelevant) products.”
Some search engine optimization technicians and IP experts have also pointed out the possibility of unintentional infringement owing to the automated system used by Amazon that might have picked up phrases for Google Ad words without realizing it being a brand name. Hence the complexity of the case is quite visible, especially because of a generation of a keyword being a brand name, by a software.
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Generating Indian Trademark Registration Certificates is Only Few Clicks Away
Over the past few years, various initiatives have been taken up to automate IP filing, prosecution, registration and maintenance in India. As part of these initiatives, the Indian Trademark Registry has announced successful automation of generation and issuance of trademark registration certificates.
It shall be noted that the option to access trademark registration certificates online will be initially available for trademark applications which have been published in the trademarks journals dated November 11, 2015 and thereafter.
The trademark registration certificates will be accessible to the trademark agent on record. The registration certificates will also be emailed to the trademark agent.
The initiative, as is evident, will substantially cut down paper work. This will also help the Trademark Registry streamline tasks, and concentrate on tasks that will help the registry clear the backlogs.
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ULTRA Marks Ultra-low Trademark Protection
Trademark battle between two giants of the Indian cement industry has led to a judgement that deals with claiming monopoly for any particular part of a trademark. UltraTech Cement Limited (“UltraTech”) filed a case against Dalmia Cement Bharat Limited (“Dalmia”). UltraTech alleged that a mark “Dalmia ULTRA” infringes on their trademark. The court did not find merits in UltraTech’s alligations.
UltraTech has several registered device/label marks, such as “UltraTech Cement”, “UltraTech Cement The Engineer's Choice”, “UltraTech concrete we make good concrete better”, “UltraTech readymix”, “Ultracem”, and “UltraTech white cement Pure White Cement”, among others. As is evident, the word “Ultra” forms an important part of their marks. Hence, UltraTech attempted to claim monopoly over the word “Ultra” by alleging that “Dalmia ULTRA” infringes on their trademarks.
The judgement deals with various aspects of claiming monopoly over a part of a trademark, which are herein discussed.
A trademark may include distinctive and non-distinctive portions. As an example, in the mark “UltraTech Cement”, the word “UltraTech” may be considered distinctive, whereas “Cement” may be considered as non-distinctive. One cannot establish monopoly over a non-distinctive portion of the mark is well established. Hence, in this example, one cannot establish monopoly over the word “Cement”. In this example, even when the distinctive portion, “UltraTech” is broken down into parts, such as, “Ultra” and “Tech”, each one of the parts of a distinctive portion of the mark may be held to be non-distinctive. Hence, UltraTech could not enjoy monopoly over the word “Ultra”.
A word may be considered as non-distinctive especially when such a word is commonly used in relation to the goods/services to which the trademark is applied. An adjective is more prone to be descriptive, rather than being distinctive. The judgement reasoned that “[s]ince we are here concerned with 'cement', a manufacturer may commonly describe his goods as ultra-tough or ultra- strong. No individual trader can possibly monopolize the term 'ultra' per se. Prima facie the word cannot be distinctive of any particular trader's goods.”
Monopoly may still be established over a part of a trademark if such part has come to be associated exclusively with the owner of the trademark goods/services by reason of a long, continuous and exclusive use. In the current case however, the judgement emphasised that “the corporate identity as well as stock and goods of [UltraTech] may be said to be associated with the word 'UltraTech' but not the word 'Ultra' itself.”
Further, there are better chances of claiming monopoly over a part of a trademark, if such part is a “fancy” word (example – “VapoRub”). Additionally, to establish monopoly, such a fancy word should “[evoke] an association with the [trademark owner’s] goods by reason either of its being part of the … registered trade marks or of the extensive sales and advertisements of the [owner’s] goods.” In the current case however, the judgement asserted that “Ultra” “cannot be said by any stretch of imagination …[to be] a fancy word…It is a common English word mostly used as a prefix, …and cannot be described as a prominent or essential feature of the Plaintiff's mark, affording the Plaintiffs a monopoly of its use.”
In essence, establishing monopoly over part of a trademark cannot be ruled out. However, to establish monopoly, such part should meet certain criteria as discussed earlier.
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