Personality rights means a right of person related to his or her personality. They can be protected under right to privacy or as a property of a person. This is important to mostly celebrities because people use a celebrity name or a photograph to advertise their trade and this usage influences their sales. Anyone can misuse a celebrity’s name or a photograph very easily for their trade, therefore it is important for a celebrity to register a trademark of their name to save their personality rights. Personality Rights are made up of two kinds of rights: the Right to publicity and the Right to privacy. The Right to Publicity which is usually attributed to celebrities or famous people is of great importance to the entertainment and media field.
Right to Publicity means the right to control commercial exploitation of one’s successful personality and prevent others from riding on the fame associated with his/her persona. This right stems from the Right to privacy and vests only in individuals who are ‘famous’ or those who might be understood by the public as having a reputation or goodwill that is capable of being commercially exploited. A person’s persona includes his/her name, photograph, signature, voice or any other mark of identity.
Statutory Recognition of Personality Rights
A celebrity acquires his celebrated status through intellectual, emotional and physical efforts. Hence, only a celebrity can authorize the manner in which his/her name, goodwill and reputation can be used and successfully exploited commercially. This exclusive right needs legal protection from being encroached upon by people willing to ride on the fame of famous persons. There is no statutory provision as such to protect and enforce the personality rights of celebrities. They can resort to passing off action under Trademark law to protect this right in case of violation. Passing off is an action under the common law of tort. Under this, nobody is allowed to misrepresent or pass off others goods or services as theirs. Three things need to be proved in order to establish a passing-off action in this case- reputation of the celebrity, misrepresentation of his/her identity, irreparable damage caused to the celebrity due to such an act amounting to passing off. This shows the evasive intent of the legislature to treat persons as chattels or commodities. The basis of this lies more on human dignity and liberty than proprietary status or commercial value. The position and development of such rights and laws in India is still at a nascent stage largely governed by judicial pronouncements of courts.
Protection under Trade Mark Law
Under the Trademarks Act, 1999 there is no specific provision to grant protection to image and publicity rights. Though, the Act under Section 2(m) providing the definition of ‘mark’ does include names. Some well-known personalities from India like Baba Ramdev, Sanjeev Kapoor, Sachin Tendulkar, Shahrukh Khan and Yuvraj Singh etc. have applied for the registration of their name as a trademark to have protection under the Act against its misuse. Section 14 of the Trade Marks Act, 1999 restricts the utilization of individual names where an application is made for the registration of the trademark, which dishonestly proposes an association with a living individual, or a man whose passing occurred inside 20 years before the date of application of the registration of the trademark. In this manner, the lawful beneficiaries of the celebrities can likewise protect the abuse of their names. The purpose of perceiving the transferability and permitting of the specific right can be constructed from the statute.
Protection under Copyright Law
There is no clarity on whether aspects of celebrity rights may be protected by the Copyright Act. Celebrities’ voices are not protected under Indian copyright rules since they do not come under the categories of literary, dramatic, or musical creation. Celebrity voices, however, are routinely misused by promoters or advertising. Under Copyright Act, the performer’s economic or commercial rights have been recognized as a separate class of performers’ rights. However, there is a difficulty in that these rights are supplied in single performances rather than in the artist’s or celebrity’s whole image. In this sense, the Copyright Act demonstrates that it is inadequate to grant celebrities personality rights.
Protection of Personality Rights under Right to Privacy
In India, while there exists no explicit legal framework specifically safeguarding personality rights, courts have derived protection for these rights from constitutional provisions such as Article 19(1)(a) guaranteeing freedom of expression and Article 21 ensuring the right to live with dignity. Moreover, Indian courts have looked into intellectual property laws to fortify the protection of personality rights.
Personality rights in the form of the right to privacy were first recognized explicitly by the Supreme Court in R. RajaGopal v. State of Tamil Nadu (1994). The court observed that:
“The first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent, for advertising or non-advertising purposes or for any other matter.”
Judicial pronouncement for personality rights in Bollywood
In Amitabh Bachchan v. Rajat Negi & Others, the Delhi High Court granted an injunction to Mr. Bachchan, restraining a jeweler from exploiting his celebrity status to endorse their products, thereby upholding the principles established in the Titan Industries case.
Another instance is the case of Shivaji Rao Gaikwad vs. Varsha Production, where actor Rajnikanth sought an injunction against a production house for unauthorized usage of his name and likeness in a film. The Madras High Court, emphasizing the right to live with dignity enshrined in Article 21, granted the injunction, recognizing the importance of protecting individuals from damage to their reputation and personality.
Anil Kapoor vs. Simply Life India and Ors. exemplifies the extension of personality rights into the realm of technology. The Delhi High Court restrained defendants from misusing Kapoor’s name, image, or voice through technological means like artificial intelligence. However, the court clarified that satirical writing and genuine criticism do not infringe personality rights, distinguishing between commercial exploitation and legitimate expression.
This case marked a significant milestone in acknowledging the need to protect personality rights in the context of evolving technologies like virtual reality. It underscored the importance of safeguarding individuals’ rights to their identity in the face of technological advancements.
Moreover, these cases clarified that the fundamental right to free speech does not encompass unauthorized commercialization of a person’s identity. Such exploitation not only violates personality rights but also encroaches upon the individual’s right to privacy.
Recognizing personality rights as a vital aspect of an individual’s livelihood, courts have stressed the need for comprehensive legislation explicitly acknowledging these rights as a distinct form of intellectual property. Such legislation would enable individuals to benefit economically from the use of their image and likeness while promoting responsible marketing practices and fostering public awareness and respect for these rights.
The ‘Bhidu’ Saga: Curious Case of Jaikishan Kakubhai Saraf alias Jackie Shroff v. The Puppy Store and Ors.
In the case of Jaikishan Kakubhai Saraf Alias Jackie Shroff Vs The Peppy Store & Ors. ( Jackie Shroff v. The Peppy Store), Jackie Shroff, the plaintiff in this case, is a highly acclaimed Indian actor with a prolific career spanning over several decades. Known for his roles in more than 220 films, television shows, and web series, Shroff has built a substantial reputation and public persona. Beyond his acting career, he has endorsed a wide array of products and services, further solidifying his public image. His distinctive attributes, including his name, image, voice, and unique style, are recognized and associated with him globally. In addition to personality rights, the plaintiff also asserted his rights under trademark law.
Jackie Shroff is the registered proprietor of the trademark “BHIDU” under registration numbers 3227968 in Class 25, covering ready-made garments, hosiery, and articles of clothing, and 3227969 in Class 41, covering entertainment, education, providing of training, film production, sporting and cultural activities. Furthermore, he holds the trademark “Bhidu Ka Khopcha” under registration number 4362494 in Class 41. These trademarks are crucial as they signify Shroff’s personal brand and are associated exclusively with him. The unauthorized use of these trademarks by any entity is likely to cause confusion among consumers and dilute the distinctiveness of Shroff’s brand.
The defendants in this case were involved in a range of unauthorized activities that allegedly infringed on Jackie Shroff’s personality rights. These activities included the creation and sale of merchandise bearing Shroff’s image and name without his consent. Specifically, defendants were accused of selling various products, such as animated wall art, videos, and even AI chatbots that mimicked Shroff’s voice and likeness. Defendant No. 1 (The Peppy Store) and No. 2 (Frankly Retail Private Limited) were highlighted for their direct involvement in selling such products. These activities were conducted without seeking permission or providing any form of compensation to Shroff, leading to claims of unauthorized commercial exploitation of his personality.
In response to the allegations, Defendant No. 1’s counsel argued that the artwork in question, despite resembling Shroff, was independently created and thus should be considered fair use. They also pointed out a previous instance where Shroff appeared to have endorsed their work, suggesting implied consent or at least tolerance of their use of his likeness. On the other hand, Defendant No. 2 took a different approach by removing the disputed merchandise from their website. However, they continued to contest the case, possibly challenging the scope of Shroff’s personality rights or the applicability of the law in this context. These defences indicate a broader debate about the boundaries of personality rights and the concept of fair use in creative works.
The court found that there was a prima facie case of infringement of Jackie Shroff’s personality rights. This conclusion was based on the clear, unauthorized use of Shroff’s name, image, voice, and other distinctive attributes in various commercial products and media without his consent. The court recognized that Jackie Shroff has a significant reputation and goodwill attached to his persona, and any unauthorized use of his likeness could mislead the public and dilute his brand. The court emphasized the importance of protecting such rights to prevent the unfair exploitation of a celebrity’s established fame. The balance of convenience was found to favor the plaintiff, Jackie Shroff, because the continued unauthorized use of his personality would cause him irreparable harm, including potential damage to his reputation and loss of commercial opportunities. The court highlighted that monetary compensation alone would not suffice to remedy such harm, necessitating the need for an immediate injunction.
As a result of these findings, the court issued an ex-parte ad-interim injunction against several defendants. An ex-parte injunction means that the order was given without requiring the presence of the defendants at the hearing, highlighting the urgency and the clear nature of the infringement. The injunctions specifically restrained the defendants from using Jackie Shroff’s name, image, voice, and other distinctive attributes for any commercial purposes without his explicit consent. This included a wide range of uses such as on merchandise, in videos, and through AI chatbots designed to mimic Shroff’s persona. The court’s orders were explicit and comprehensive, covering all possible avenues of unauthorized commercial exploitation. This legal action aimed to immediately halt any ongoing infringement activities and prevent further unauthorized use of Shroff’s personality, thus protecting his rights and reputation from further harm.
In addition to granting injunctions against the defendants, the court issued directions to relevant government authorities to ensure compliance with its orders. The Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) were specifically instructed to take necessary actions to enforce the court’s injunctions. These directions likely included monitoring and regulating online and electronic platforms to ensure that the infringing materials were removed and that no further unauthorized use occurred. This involvement of governmental bodies underscored the seriousness of the infringement and the need for a coordinated effort to protect Shroff’s personality rights. The court’s directive to these authorities aimed to leverage their regulatory powers to effectively curb the misuse of Shroff’s persona across various media and digital platforms, ensuring comprehensive enforcement of the court’s order.
Conclusion
In conclusion, the court’s findings, injunctions, and directions in the Jackie Shroff v. The Peppy Store case highlight a robust legal framework for the protection of celebrity personality rights. The court’s decisive actions not only addressed the immediate infringement but also set a precedent for the protection of personality rights, emphasizing the legal and moral imperatives of respecting an individual’s commercial persona. This case underscores the judiciary’s role in upholding intellectual property rights and the necessity for prompt and effective legal remedies to prevent and address unauthorized exploitation.
It can also be concluded that only the illegal and unrightful usage of the personality rights with unjust intentions are punishable under the law. As is established by law and precedents, a celebrity’s name cannot be used for any commercial use without any prior consent of the concerned celebrity, as these celebrities acquire their brand value through their hard work. Therefore, any use of their name or photographs that is commercially utilized, must be exploited by the celebrities themselves and no one else.
Courts need to not only balance the highly valued rights of celebrities and the constitutional right of freedom of speech but also protect the consumers from false and misleading endorsements. All this is evidence of the fact that Celebrity Rights have emerged as an individual class of protection hence it is high time the legislature recognised this too. While courts need to strike a balance between protection of high valued rights of personalities and democratic right of individuals in society, it is also equally responsible to protect the interest of the consumers as well from any kind of misleading advertisements and endorsements.
Disclaimer
The above article is written by our Associate, Ms. Manisha Chakravarti. The information provided in this article is for general informational purposes only. All content, including text, graphics, images, and information, is presented in good faith and is believed to be accurate at the time of posting. However, we make no representation or warranty of any kind, express or implied, regarding the accuracy, adequacy, validity, reliability, availability, or completeness of any information on the site. Under no circumstance shall we have any liability to you for any loss or damage of any kind incurred as a result of the use of the site or reliance on any information provided on the site. The above article does not intend to disregard any individual’s personality and character.
We are glad to inform you all that Intellect Goodwill LLP in collaboration with Malwanchal University, has decided to celebrate the occasion of World Intellectual Property Day 2024 by imparting awareness about Intellectual Property Rights. Our Manaigng Partner, Adv. Rakesh Soni has been invited as an expert lecturer on Intellectual Property Rights at Malwanchal University, Indore.
The lecture will include subjects relating to inculcating awareness regarding Intellectual Property Rights amongst young students & professionals and will also include interactive sessions to facilitate knowledge sharing and networking among participants. The event will be free of charge and open to all individuals interested in learning more about IPRs.
Don’t miss this opportunity to deepen your understanding of IP and its significance in your future career and endeavours. We look forward to seeing you there!
When a person gets his trademark registered, he acquires valuable rights to the use of the trademark in connection with the goods in respect of which it is registered. And, in the event of any invasion of his rights by any other person using a mark which is identical or deceptively similar to his trademark, he could protect his mark by an action for infringement and obtain an injunction. Thus, the basis for protecting the trademark is that no mark shall be registered which is likely to deceive the public or which creates confusion in the minds of the public in regard to the ‘origin’ or source of goods or services. When two businesses compete with trademarks that sound similar to the consumers, trademark and brand identity challenges frequently arise.
For determining deceptive similarity there is a requirement to examine ‘whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant’. There is no hard and fast rule to laid down a universal test to determine the similarity between two marks. When the class of buyers is quite educated and rich, the test to be applied is different from the one where the product would be purchased by villagers, illiterate and poor. Such is the case of Pernod Ricard India Private Limited & Anr. v. Karanveer Singh Chhabra, where two premium whiskey brands ‘Blenders Pride’ and ‘London Pride’ engaged in a trademark battle which highlights the complexities of trademark law. In this article, we critically analyse the dispute and the findings of the courts seeking clarity on the interpretation of deceptive similarity.
BACKGROUND OF THE CASE
The Plaintiff was inter alia engaged in marketing, manufacturing and distribution of wines, liquors and spirits. The Plaintiff accused the Defendant of trademark infringement on the use of the mark ‘London Pride’ for whisky, alleging that it infringed upon their well-known brands, ‘Blenders Pride’ and ‘Imperial Blue’. Since their registrations in 1995 and 1997, respectively, the Plaintiff’s trademarks ‘Blenders Pride’ and ‘Imperial Blue’, which were duly registered under Class 33, have been associated with whiskey products. Furthermore, the Plaintiff also holds the registered trademark for ‘Seagram’, which serves as the domestic and international house mark in India.
The Plaintiff contended that the Defendant’s mark ‘London Pride’ closely resembled ‘Blenders Pride’ and labelling, packaging and trade dress of London Pride with the mark ‘Imperial Blue’. The Plaintiff emphasized that the term ‘Pride’ within their mark ‘Blenders pride’ and the labelling, packaging and trade dress of ‘Imperial Blue’ played a very significant role in their trademarks. The Plaintiff further claimed that the Defendant deliberately aims to deceive and defraud the public or members of trade by adopting the mark ‘London Pride’ along with packaging reminiscent of ‘Imperial Blue’.
TRIAL COURT FINDINGS
The trial court, citing the case of Carew Phipson Limited v. Deejay Distilleries (P) Limited, dismissed the injunction application of the Plaintiff and held that consumers usually identify and purchase the specific product by their full names or the first word, and not with generic words like in this case ‘Pride’ alone. Also, the court emphasized that the Plaintiff lacked registration for colours or design to claim infringement of Imperial Blue Seagram’s mark. The court also noted that the only similarity between both the marks was the word ‘Pride’ but failed to compare similarity in packaging and other visual representations of marks.
HIGH COURT’S ORDER
The Madhya Pradesh High Court (Indore Bench) upheld the decision of the trial court and by citing the case of Khoday Distilleries Limited v. The Scotch Whisky Association, the Hon’ble court acknowledged the application of the ‘test of deceptive similarity’ and emphasized the necessity to understand potential consumers. The court also analysed that the consumers of whiskey belong to the ‘premium’ and ‘ultra-premium’ categories. These individuals are usually literate and possess reasonable intelligence, which enables them to differentiate between the brands, even with imperfect recollection.
The court further stated that using the generic word ‘Pride’ by the Defendant is insufficient to deceive consumers or members of the trade. The court further noted that the trademarks of both the parties are renowned and purchased by their full names or first words by the consumers. The court also rejected the argument regarding Imperial Blue Seagram’s Mark, citing that the Plaintiff failed to register combinations of colours or bottle shapes under the Trade Marks Act, 1999. The court further found dissimilarities between the whiskey bottles, including letter arrangement, colour patterns, and shapes, stating that there was no visual, phonetic, or structural similarity between them.
PROCEEDINGS BEFORE THE SUPREME COURT
The Plaintiff, being dissatisfied with the High Court’s decision, filed an appeal by way of a Special Leave Petition before the Hon’ble Supreme Court. The Supreme Court examined the labelling, and packaging of liquor bottles presented by the appellant during proceedings. The court noted that the consumers while purchasing the whiskey ask for the brand with their first term rather than the term ‘Pride’. It is important to emphasize that the prices of both brands are significantly different for the purchasers. Furthermore, the court issued notice to the Defendant inquiring about the reason behind their adoption of the term ‘Pride’ and whether they would modify the combination and trade dress regarding the product’s visual appearance. As of now, the case is still listed and the final judgement remains pending
CONCLUSION
In conclusion, the case plays a significant role not only for the parties but also for similar cases for future reference. It underpins the principle of fairness, equity and consumer protection while guiding to resolution of complex trademark disputes. The judgments of courts provide clarity on the interpretation and application of deceptive similarity within trademark disputes. The courts set out a precedent by emphasizing the necessity to understand potential consumers or members of the trade, and highlighting the consumers’ education and awareness. It provides a balance between protecting the trademark owners’ rights and ensuring fair competition in the marketplace.
The present article is written by our Associates, Ms. Neha Singh and Mr. Siddharth Soni. The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.
Trademark opposition proceedings serve as crucial mechanisms for safeguarding intellectual property rights and ensuring equity in the commercial area. A recent landmark case, Sun Pharma Laboratories Ltd v. Dabur India Ltd. & Anr., adjudicated by the Hon’ble Delhi High Court, sheds light on the intricate dynamics of trademark disputes and emphasizes the paramount importance of adhering to procedural norms and timelines. In this comprehensive analysis, we delve into the legal intricacies, court proceedings, and broader implications of this case in respect of trademark opposition proceedings.
Trademark Opposition Proceedings
Trademark opposition proceedings are governed by the provisions of the Trademarks Act, 1999, and the Trade Mark Rules, 2017. These proceedings offer aggrieved parties an opportunity to contest the registration of a trademark that potentially infringes upon their existing rights. At the core of these proceedings are stringent time period for filing evidence and serving documents on opposite parties, thereby ensuring fairness and expeditious resolution of disputes.
Case Background
The case of Sun Pharma Laboratories Ltd v. Dabur India Ltd. & Anr. emanated from Sun Pharma’s opposition to Dabur’s trademark application for “Dabur Glucorid KP (Label)” in class 05. Sun Pharma initiated the opposition under the old rules, wherein the responsibility for serving evidence on the opposing party rested with the Registry. Despite Sun Pharma complying with the statutory deadline for filing evidence, a delay of 3 days in serving the evidence on Dabur, giving rise to contentious legal proceedings. Following this delay, Sun Pharma sought an extension of time and requested the learned Registrar to consider its evidence on record. However, the Learned Registrar rejected Sun Pharma’s request, citing the non-extendibility of the time limit prescribed by the rules, the evidence served on Dabur is time-barred and consequently the opposition deeming the opposition abandoned.
Sun Pharma, aggrieved by the ruling, filed an appeal to the High Court. With regards to Sun Pharma’s plea for an extension of time, the Court affirmed that the time limits prescribed by the rules are mandatory in nature and must be strictly complied with. Furthermore, the Court affirmed that neither the former Trade Marks Rules 2002 nor the Trade Marks Rules 2017 grant the Trade Marks Registrar discretion to extend this extension.
Legal Framework and Court Proceedings
At the crux of the legal dispute was the question of whether the delay in serving evidence warranted the abandonment of Sun Pharma’s opposition. The Delhi High Court strictly analysed Rule 50 of the Repealed Rules or Trademarks Rules, 2002, which provides the procedure and time limit for filing evidence in support of opposition. Emphasizing the mandatory nature of these time limit, the court ruled out any discretion to extend deadlines unless specifically directed by the Registrar.
It clarified that under both the repealed and subsequent rules, the Registrar lacked the discretion to grant extensions. The interpretation of Rule 50 emphasized the importance of procedural fairness and efficiency in trademark disputes, ensuring that the trademark registration process remains unaffected by undue delays.
Implications for Trademark Opposition Proceedings
The ramifications of the Court’s ruling extend far beyond the confines of Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. The case sets a precedent for future trademark opposition proceedings, establishing a framework of unwavering adherence to prescribed timelines and procedural requirements.
Trademark owners are now compelled to exercise extensive vigilance in complying with the timelines provided in the Trademarks Act and Rules. Non-compliance may lead to adverse consequences, including the rejection of oppositions and potential forfeiture of substantive rights. The ruling emphasizes on trademark owners and applicants to adopt a diligent view to ensure the timely submission of evidence and compliance with procedural requirements.
Furthermore, the ruling emphasizes the role of the Registrar of Trade Marks in governing trademark opposition proceedings and ensuring compliance with statutory requirements. While the Registrar’s discretion in granting extensions may be curtailed, their role in facilitating fair and efficient dispute resolution remains pivotal.
Conclusion
The judgement exemplifies the significance of trademark opposition proceedings in safeguarding intellectual property rights and promoting fairness in the marketplace. The judgement also emphasizes upon the necessity for strict adherence to prescribed timelines and procedural requirements, thereby fostering transparency, efficiency, and confidence in the trademark system.
The present article is written by our Associate, Ms. Neha Singh. The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.
Registration of a Trade Mark: Importance and Effects
In India, trademarks and its registrations are governed by the Trade Marks Act, 1999 (hereinafter “Trade Marks Act”). The Trade Marks Act guarantees protection for trademarks registered with the Controller General of Patents, Designs, and Trade Marks (CGPDTM), also known as the Trade Marks Registry.
A trademark is a symbol, design, word, or phrase capable of identifying the goods or services of one business from those of others. When a trademark is registered, the owner to the trademark gains “exclusive rights” to its usage.
According to Section 25 of the Trade Marks Act, a trademark remains valid for a period of 10 years after it is registered and the owner may renew the trademark periodically.
It is considered a violation or infringement of trademark to use someone else’s registered trademark without their permission Additionally, using a substantially similar mark for similar goods or services without consent is also deemed as trademark infringement.
In India, trademarks play a pivotal role in the food and beverage industry, contributing significantly to its growth and evolution. A registered trademark stands as a cornerstone for any food company or business within this sector. Registering a trademark enables a food product to carve out its unique identity amidst similar offerings, thereby enhancing its reputation and competitiveness.
Critical Analysis of the Judgement
In a recent landmark judgment in the case of Dolma Tsering v. Mohd. Akram Khan and Another, the Delhi High Court has made a significant ruling in favour of preserving the legacy of ‘Dolma Aunty’ Momos. The court has taken a firm stance by cancelling and removing an individual’s adoption of the registered trademark ‘DOLMA AUNTY MOMOS’. This decision follows a rectification petition filed by the renowned ‘Dolma Aunty’ Momos herself on 24th September 2018, i.e. in the rectification proceedings titled ‘Dolma Tsering v. Mohd. Akram Khan and Anr.’ The objective of the petition was to challenge and invalidate the ‘Dolma’ mark obtained by Mohd. Akram Khan.
The judgement revolves around Dolma Tsering, the proprietor of Dolma Aunty Momos, who initiated a legal action against Mohd. Akram Khan. She encountered unauthorized use of her trade name by individuals selling identical products. The matter was initially brought before the Intellectual Property Appellate Board (“IPAB”) in 2021. However, with the dissolution of the IPAB on April 4 2021, as per the Tribunal Reforms Act, 2021, the jurisdiction was transferred to the High Courts, leading to the case being heard by the Delhi High Court.
Dolma Tsering had established her business, Dolma Aunty Momos, in Delhi’s Lajpat Nagar in 1994, specializing in Tibetan delicacies, particularly momos, and other products. By 2021, her business had expanded to operate five outlets across Delhi-NCR, earning a solid reputation for quality offerings and services. She successfully obtained the trademark “Dolma Aunty Momos” in 2022, which was officially granted registration on November 17 2023. She argued that Mr. Khan not only adopted a trademark identical to hers but also utilized a name resembling hers. Tsering’s Rectification Petition filed against the Respondent’s adoption of the “Dolma” mark claimed that it was a blatant imitation of her long-established trademark. She filed a case under Sections 11(1), 11(2), 11(3)(a), and 47 of the Trade Marks Act.
Based on the evidence and arguments presented before the Court and despite being served notice, the Respondent had failed to appear, resulting in the case proceeding ex-parte. On March 6 2024, the Delhi High Court ordered the cancellation and removal of respondent’s trademark “Dolma Aunty Momos” from the Trade Marks Register.
The bench of Justice Anish Dayal held, “After considering the aforementioned facts and circumstances, reviewing the documents submitted, and hearing arguments from the Petitioner’s counsel, this court finds merit in the petitioner’s case. Therefore, the trademark held by Respondent No. 1 is to be cancelled and removed from the Trade Marks Register, and accordingly, rectified”.
The court has observed that Dolma Tsering had amassed a significant reputation due to the widespread popularity of momos as a type of street food. Additionally, Tsering received numerous accolades for the exceptional quality of her goods and services. The High Court also asserted that Tsering set up a small momo shop in 1994 and was the “first retailer” of the Tibetan delicacy, which had since become popular across Delhi-NCR. Since the Respondent failed to appear before the court, the allegations of non-use by Tsering remained unchallenged and therefore had to be acknowledged as valid.
Conclusion
This case emphasizes the significance of protecting established trademarks and the legal redress accessible to trademark owners in addressing infringements by entities operating within the same industry. Although this decision is interim, it highlights the potential consequences of trademark infringement, particularly in cases involving confusion and deception.
The present article is written by our Associate, Ms. Neha Singh. The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.
A group of ministers (GoM) evaluating GST rates has decided to abolish the exception for packaged food goods sold under unregistered brands. These goods will be taxed at the branded food rate of 5%. The move follows the abuse of the unbranded food exemption by a segment of the food processing sector, notably rice and wheat millers. According to a source, the decision was made by the GoM, which convened on Friday and was led by Karnataka Chief Minister Basavaraj Bommai.
Its term might be extended until November or December. The GoM’s ruling follows a Tripura High Court verdict against Sarvasiddhi Agrotech on April 20, 2021, in which the court affirmed the company’s tax claim for selling packed rice labeled Aahar standard, Aahar Gold, and Aahar premium. According to the corporation, they were not brand names, but rather a “internal arrangement” to signify the quality variety. The revenue department said that these indications are just brand names because the supplier has not waived the actionable claim/enforceable right. The GST Department has proposed a 5% tax on the products.
While the GST Council is inclined to consider enforcing a ministerial panel’s recommendations on data analytics to tighten compliance and scrutiny of GST returns to augment revenues by plugging leakages, a much-anticipated restructuring of the GST slabs to raise the revenue-neutral rate (RNR) from a little more than 11 percent now to 15.5 percent could begin in a small way this year in areas not prone to inflation. According to sources, the government may explore boosting the GST on online gaming from 18 percent to 28 percent in order to bring the skill-game tax rate in line with chance games including gambling and betting.
Disclaimer: The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.
‘The Taste of India’ tagline of Amul was recently acknowledged by Canada. The Appeal Board of Canada for Intellectual Property has granted Indian milk giant Amul trademark registration. Also, after the Federal Court of Canada has filed an infringement of a trademark, the nation’s biggest co-operative will get damages in the amount of Canadian dollars (CAD) 32,733. It was the first case of Amul’s filing on foreign soil against any corporation. Amul Canada and four others had been removed from the Federal Court of Canada by the Kaira District Cooperative Milk Producers Union Limited, or the Gujarat Co‐operative Milk Marketing Federation, which brands Amul.
Amul learned in January 2020 that the Group had unambiguously stolen the ‘Amul’ and the ‘Amul-The Taste of India’ logo on the social media site LinkedIn. The group built a false profile. Amul Canada has a logo on its LinkedIn profile to “see work” and to “follow” the four defendant were named to Amul Canada’s workers. Although the accused had attempted numerous times to serve the defendant, they never answered. A former party request for default judgement was then brought forward by Amul’s lawyers. They contended that Amul had never licenced or consented to utilise its trade-marks and copyrights in any way for Amul Canada or any of the four people.
The Federal Court found Amul clearly met all the requirements for proving “goodwill,” misrepresentation of the public, real or probable harm to Amul, which were essential to establishing “passing away” tests.
The Federal Court ruled that the defendants violated Amul’s copyright and granted a permanent injunction restricting them from breaking ‘Amul’ and ‘Amul-The Taste of India’ trademark and copyright.
For the past 22 years, GCMMF has exported milk products to the USA. Amul Kool, ice cream and milk snacks have started to be exported to Canada during the previous two years.
While the whole world battles with the current pandemic, major pharmaceutical corporations around the world are battling to make that perfect drug. A patent bestows a right in the author to stop others from copying, manufacturing, selling or importing your invention without permission from the author. An exception to this IPR, the concept of Compulsory Licensing means that the government can allow other manufacturers to produce a patented product or a process without the consent of the actual owner. The Indian Patent Act, 1970 deals with the conditions for compulsory licensing which are mentioned under Sections 84 to 92 of the said act. While there are a number of drugs available, Remdesivir, an antiviral drug, which was originally developed over a decade ago to treat hepatitis C and Ebola, proved out to be a clear winner in the race towards the development of a successful drug for the treatment of Covid-19. According to the World Health Organization (WHO), the drug helps to prevent replication of the coronavirus. Recently, the CPI (Marxist) party has suggested that the government shall issue compulsory licenses for the manufacturing of a generic version of Remdesivir which is being used to treat Covid-19 patients. Before delving into the issue of compulsory licensing of Remdesivir, it is important to acknowledge the fact that Gilead has already signed non-exclusive voluntary licensing agreements with generic pharmaceutical manufacturers based in Egypt, India and Pakistan to further expand supply of remdesivir. These agreements allow the companies: Cipla Ltd.; Dr. Reddy’s Laboratories Ltd.; Eva Pharma; Ferozsons Laboratories; Hetero Labs Ltd.; Jubilant Lifesciences; Mylan; Syngene, a Biocon company; and Zydus Cadila Healthcare Ltd. to manufacture Remdesivir for distribution in 127 countries.
While keeping this fact in mind, one should not forget the importance of the drug and its availability to everyone. While these agreements allow a significant number of doses of the drug to be made available to the public, this might not be sufficient for countries with large population such as India. Maharashtra, Delhi, Gujarat, Chhattisgarh and Madhya Pradesh have reported a shortage of Remdesivir as Covid-19 cases surge and the manufacturers of this drug cannot be expected to make the ends meet in such a short amount of time. While the sole purpose of Compulsory Licensing is to reduce the prices of pharmaceutical drugs by minimizing the monopoly in the pharmaceutical industry, it also negates the primary benefit to the patent owner of licensing the patent to third- parties by earning royalties. The vaccine, if developed by any country would undergo compulsory licensing to curb the effect of the virus as soon as possible. Due to this, many pharmaceutical companies do not wish to contribute to the development of vaccine for the novel Coronavirus, Covid-19 as they would not be able to earn any royalty if they invest all their resources for the development of the vaccine. This seems to be a serious issue as this would hinder the struggle towards fighting this novel coronavirus. While on one hand, the Patent law acts as a source of encouragement for the inventors, but on the other hand, it also gives them monopoly rights which can be abused. Patents rights are granted to the inventor for a period of 20 years and after the expiry of this period, the invention enters of the into the public domain and can be used by anyone. Other than Patents, the importance following IPRs cannot be ignored: –
Design Act, 2000: The Designs Act, 2000, currently governs the issues related to design registration and piracy in India. Design Registration covers the ornamental or aesthetic aspect of an article. Design Registration gives the inventor monopoly rights over a period of 10 years, which may be extended to 5 years more.
Trade Marks Act, 1999: A trademark is a type of IPR consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. Trade Mark Registration gives the owner exclusive right to use the mark for a period of 10 years, which can be further renewed.
Copyright Act, 1957: Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. Copyright Registration gives the author exclusive right over the work for a period of 60 years, in addition to the lifetime of the author.
Geographical Indications Act, 1999: A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin, for example, Bikaneri Bhujia, Darjeeling tea, etc.
Other IPRs include: (a) Trade Secrets, which are rights on confidential information which may be sold or licensed; (b) The Semiconductor Integrated Circuits Layout-Design Act, 2000, which provides for the protection of semiconductor integrated circuits layout- designs.
Every year, World Intellectual Property Day is celebrated on the 26th Day of April, to preach the value of Intellectual Property Rights all around the globe. Every business starts with an idea. An entrepreneur imagines a product or service he could provide that will help improve the lives of his customers while hopefully providing him with the opportunity to create a brighter financial future for himself and his family.
In the current pandemic, we at Intellect Goodwill believe that ‘Innovation means never stop Learning’. Innovation requires us to go into unknown and create something out of nothing. Despite lockdown and not much market volatility, some companies still found ways to forge ahead. With the market being disrupted by the lockdown, there is a need for MSMEs to rethink/reinvent their product strategy, its differentiators, distribution models, product pricing and so on. While there is a visible dip in the discretionary spending of consumers, there is also a marked shift in consumer preferences which can be leveraged. It is pertinent to mention that it was Research and Development Sector which proved out to be the turning point in the current pandemic. Hence, on the occasion of World IP Day, Intellect Goodwill is organizing a FREE WEBINAR on the following topics for the benefit of MSMEs:
Awareness of IPRs in the MSME Sector – Trademarks, Copyrights, Patents, Designs, Geographical Indications, Trade Secrets, etc.
How to encash (a) idea and invention through patents; (b) brand goodwill through trademarks and (c) your creativity through Copyrights?
Transfer of IPRs, Compulsory Licensing, Opportunity for Research & Development in the MSME Sector
Intercontinental Great Brands, a unit of snacking major Mondelez International which makes Oreo Biscuits has brought up a trademark infringement case against FMCG giant Parle Products in Delhi High Court over the design of Parle’s Fabio biscuits. Intercontinental Great Brands has filed a trademark infringement case in the Delhi HC alleging that the design of Parle’s Fabio biscuit is ‘deceptively’ similar to that of Oreo. Intercontinental Great Brands LLC is a US-based company that manufactures and supplies packaged food products and is a unit of Mondelez International. Biscuits and snacks maker Parle Products launched Fabio biscuits in January 2020 in two flavours, while Oreo was launched in India by Mondelez nearly 10 years ago in 2011 marking its foray into the biscuit category in India. The colour scheme of the logo of both biscuits are also similar (white and blue), as is also depicted below:
Fabio does bear a resemblance to Oreos, being two dark biscuits sandwiching a white cream filling. Taking it a step further, Fabio biscuits are also stamped with a filigreed design, while both cookies sport blue and white branding. Parle Products launched Fabio biscuits in January 2020 in two flavours (Vanilla and Chocolate Cream), while Oreo was launched in India by Mondelēz in 2011. Oreo – introduced in 1912 by Nabisco, which later became Mondelēz International – is touted to be the largest selling premium cookie brand in the world, hitting $3.1bn in sales in 2019. Mondelēz says India is among Oreo’s top-five markets by volume and the fourth largest market for the cookie brand in the world. This is the latest case of alleged infringement in the highly competitive biscuit market in India.
The court will be hearing the matter on April 12. As per the documents, Mondelez International had asked for an earlier hearing date but the High Court has stuck to April 12. In similar cases last year, Britannia Industries had dragged Future Group and ITC to court over trademark infringement allegations for their various biscuit products.
Prior Cases of Trademark infringement in the Biscuits Industry:
IPR Infringement cases are not new to India’s biscuit industry. One year ago in February 2020, Britannia dragged Future Consumer to court alleging that the packaging of Future Consumer’s ‘Tasty Treat’ brand was deceptively similar to Britannia’s biscuits. In December 2020, Britannia moved Delhi High Court against the packaging of ITC’s Sunfeast Veda Digestive and Sunfeast 5-Seed Digestive biscuits, which it alleged were deceptively similar to its own Nutri Choice Hi-Fibre and Nutri Choice Digestive biscuits’ packaging. Prior to this, in 2016, ITC moved Delhi HC as well claiming trademark and copyright infringement by Britannia. It alleged that the packaging of Britannia’s Nutrichoice Digestive Zero biscuits are similar to that of ITC’s Sunfeast Farmlite Digestive All Good Biscuit. Britannia had told the court at the time that it was willing to consider changing the colour scheme of the packaging. ITC won this legal battle with the Delhi High Court asking Britannia not to sell its digestive biscuits, NutriChoice Zero.
Disclaimer: The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.
The author is a 3rd-year law student at Symbiosis Law School, Pune.
Latest News
26/04/16- World IP Day Celebration ,Indore
FIVE DAYS WORKSHOP FOR INDUSTRIAL ENTREPRENEURS
Brief awareness of the Acts, Implementation, Returns, offence & Penalties through lectures, case studies, work shop, open-book examination & with necessary form and formats used in Establishment / Industries with two type of license / permissions / certificates. this is in house course of the Quality First and not accredited by the RAB QSA certification. Certificate will provide by Quality First after successful completion of course. Factory Act, 1948,Industrial Dispute Act, 1947 (standard standing & employment) / M.P. Industrial Relation Act, Employees Provident Fund & Miscellaneous Provisions Act, 1952, Employee state Insurance corporation act (ESIC ),1948,Gratuity Act, 1972, Minimum wages act. 1948, Bonus Act. 1965, Health & Safety Provisions (Factory Act), Pollution Control Act/Environment Protection Act. The Standard of (Weight & measurement) act,1976, Packaged commodity rules, 1977 & enforcement Act, 1985, Drug & cosmetic Act, 1940 with Magic Remedy Act.- Pharma Industries, Insecticide Act, 1986. (CSL)-Insecticide Industries, Bureau of Indian Standard Act, 1986 products specification & hallmark (Jewllery and other products)
FIVE (5) DAYS TRAINING & WORK-SHOP FOR ISO 9001 : 2008, EMS (ISO 14000) & 22000 (FOOD SAFETY) LEAD AUDITOR COURSE (RABQSA, IRCA & OSS) :
Certification and Training of RABQSA/IRCA/UK Lead Auditor training for ISO 9001, ISO 14001 & OHSAS 18001, 22000 associated with OSS Certification Services Pvt. Ltd., Delhi.OSS is a RABQSA Approved Training Provider India. OSS have achieved international and industrial recognition for world-class training design and delivery, and have demonstrated their ability to remain at the forefront of excellence in Lead Auditor Training and examination practices.
Amul learned in January 2020 that the Group had unambiguously stolen the ‘Amul’ and the ‘Amul-The Taste of India’ logo on the social media site LinkedIn. The group built a false profile. Amul Canada has a logo on its LinkedIn profile to “see work” and to “follow” the four defendant were named to Amul Canada’s workers. Although the accused had attempted numerous times to serve the defendant, they never answered. A former party request for default judgement was then brought forward by Amul’s lawyers. They contended that Amul had never licenced or consented to utilise its trade-marks and copyrights in any way for Amul Canada or any of the four people.
