IP Law Newsletter Volume X, Issue 19

India: CNN – GNN Trademark Dispute: IPAB Decides in Favor of CNN

Sources: www.ipabindia.org

CNN, the US based cable and satellite television channel owned by the Turner Broadcasting System has won a four-year-old trademark battle against media company GNN India Ltd (GNN) for using a similar logo. CNN had moved the IPAB in April 2014.

The Chennai Bench of the Intellectual Property Appellate Board (IPAB) headed by Justice Manmohan Singh issued the order, and also directed the Registrar of Trademarks to remove the already registered trademark of GNN India from the Register.

“The Respondent (GNN India Limited) has cleverly structured the impugned mark ‘GNN’ with a view to coming close to the ‘CNN’ trademark” was the reasoning provided by the IPAB in the order, while also stating that “From an overall comparison of the marks, it is apparent that the rival marks are extremely similar. As such it will lead to a likelihood of association with the brand ‘CNN’ whose services, being broadcasting and telecommunication, are virtually identical,” the order stated, adding that it clearly displays the Indian firm’s unlawful intent to trade upon the goodwill and worldwide reputation associated with the ‘CNN’ trademark.”

Justice Manmohan Singh, while issuing the final order, reportedly observed that the Indian firm had adopted the original trademark with “bad faith”.

While noting that the onus of identifying bogus trademarks lies with the Registrar of trademarks being the public authority on the subject matter, the Bench in its order also stated that “The objective of maintaining a trademark register is that the public should know whose goods they are buying and with whom particular goods are associated”.

Reportedly, GNN did not file any counter statement nor did it appear on the dates on which it was summoned by the IPAB.

India: Delhi High Court awards damages to the tune of INR 10 Lakhs for infringement of the trademark ‘Shine.com’

Sources: www.delhihighcourt.nic.in

The present suit had been filed by the Plaintiffs against the Defendants for using the domain name “CLICK2SHINE.COM” which was deceptively similar to the registered trademark of the Plaintiffs’, “SHINE.COM”. The suit was decreed in favor of the Plaintiffs’ because the Plaintiffs’ were able to prove that the Defendant’s adoption and using of counterfeit trade name or registered trademark, domain name, trade dress deceptively similar domain name, unequivocally amounts to infringement of the Plaintiff’s registered trademark and amounts to passing off of their goods and business as it was without authorization/affiliation by the Plaintiffs.

Brief Facts

• M/S. H.T. Media Ltd & Anr (hereinafter referred to as the ‘Plaintiff no.1’) is a media house engaged in the business of print media, radio and internet services and enjoyed a leadership position in the English and Hindi newspaper market. The Plaintiff no. 2 was a subsidiary of the Plaintiff no. 1 and had acquired and adopted the domain name “SHINE.COM”.
• The Plaintiffs were registered proprietors of the trademarks “SHINE” and “SHINE.COM”.
• Susheel Kumar & Ors (hereinafter referred to as the Defendants no. 1, 2 and 3) were entities/companies engaged in the business of providing education, training, jobs via the website www.click2shine.com, www.success4career.in and www.success4career. Defendants no. 4 and 5 were managing and operating the said domain name.
• An ad-interim ex-parte injunction order was passed by this Court on May 30, 2014, in favor of the Plaintiffs and against the Defendants.
• Upon receiving knowledge of the Defendant’s domain name “CLICK2SHINE.COM”, the Plaintiffs sent a legal notice dated January 28, 2014 upon whose receipt the Defendants ceased to use the domain name and deactivated the website.
• In April 2014, the Plaintiffs found the Defendants have restored the website www.click2shine.com , and it again sent a legal notice calling upon the Defendant no. 4 to cease and desist from using the mark “CLICK2SHINE” in any manner.

Plaintiff’s Contentions

• The Plaintiff contended that the Defendants have made money at the expense of the Plaintiff by charging money from the interested subscribers.
• The Plaintiffs contended that irreparable damage had been caused to the Plaintiff’s goodwill and reputation.
• The Plaintiff contended that the Defendants are liable to pay punitive damages for the obvious and willful infringement of the Plaintiff’s trademark for its contemptuous conduct. The Plaintiffs used the precedent set in the case of Hindustan Unilever Limited vs Reckitt Benckiser with reliance on Rookes v Bernard.
  • The Plaintiff contended that the acts of the Defendants in adopting and using the identical/deceptively similar impugned mark and web address in respect of identical services had caused and would continue to cause irreparable damage and loss to the Plaintiffs’ business.
  • The Plaintiff contended that the impugned website which forms a part of their trading name, infringes the rights of the Plaintiffs under Section 29 (5) of the Trademarks Act, 1999.
  • The Plaintiff used the precedent set in the case of Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Lab, which held that, if the Defendant’s mark is closely, visually and phonetically similar, then no further proof is necessary in infringement cases.

  Defendant’s Contentions

  The Defendants chose to stay away from the proceedings of the Court, and thus the matter proceeded ex parte.

  Court’s Decision

  • The Court relied on the precedent set in the case of Mex Switchgears Pvt Ltd v Max Switchgears Pvt Ltd which stated that “the essential features of rival marks are to be considered in determining infringement”.
  • The Court held that from the perusal of the record and available evidence, the Defendant’s use of the counterfeit domain name or registered trademark amounted to infringement of the Plaintiff’s registered domain name or trademark.
  • The Court held that the Defendants are guilty of infringing the Plaintiff’s trademark by using the domain name “CLICK2SHINE.COM” and that it amounts to infringement and passing off of their goods and business as it is without authorization or affiliation.
  • The Court held that the Plaintiffs are entitled to a decree of permanent injunction restraining the Defendants from using the mark “CLICK2SHINE.COM” or any deceptive variant thereof which is identical/similar to the Plaintiff’s trademark “SHINE” and “SHINE.COM” in respect of their online job portal services or any other products or services thereby amounting to infringement/passing off. The Court held that the Plaintiffs are entitled to their prayer.
  • The Court held that the Plaintiffs are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages for the immense loss to goodwill and reputation.
  • The Court held that where the Defendants reclused themselves from the proceedings, they cannot be permitted to enjoy the benefits of evasion or covert priorities as has been using the domain websites and have been infringing the Plaintiffs’ trademark certainly makes the Defendants liable to pay the damages to the Plaintiffs. Hence, a decree for a sum of INR 10 lakhs in favor of the Plaintiffs and against Defendants, is passed on account of infringing the registered marks, trade dress and violating interim order.
  • The Court held that the Plaintiffs shall also be entitled to interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of ealization.
  • The Court awarded the costs of the suit to the Plaintiffs and against the Defendants. The Defendants were held to be jointly and severally liable to pay the damages and costs to the Plaintiff.

WIPO: Trademark is used more than Patents in developing countries

Sources: www.wipo.int

World Intellectual Property Organization (hereinafter referred to as ‘WIPO’) through its research and an analytical analysis of available data regarding intellectual property has shown that trademarks are used more widely than patents in developing countries.

Recently, WIPO prepared a new comprehensive dataset for Chile, through a research paper titled ‘Intellectual property use in middle income countries: the case of Chile’. The paper combined detailed firm-level information. It analyzed the use of IP by firms in Chile and its effect on outcomes, including growth and productivity. The results showed that Chilean firms relied much more on the use of trademarks than patents or industrial designs.

In another study, titled ‘WIPO-ASEAN Study: The Strategic Use of Intellectual Property to Enhance Competitiveness in Select Industries in ASEAN’ it was found that
trademarks received the highest importance rating for firms from almost all countries except few like Indonesia, Singapore, where firms considered patents the most important means to protect their IP. In Malaysia and India, trademarks led by a wide margin as the most important type of IP, whereas in Brunei, Cambodia, Laos and Myanmar the difference was not large.

The results in the above table confirmed that trademark was the most important means of IP protection for the firms and produce a clear ranking of the relative importance of the five types of IP: trademark was followed by patent with geographical indication being third. Copyright and industrial design were considered to be the least important among the five.
^[1]

The said study also reported the importance scores of the IP by industry. This is given on Table 4.4.2 on Page Number 29 of THE WIPO-ASEAN STUDY. Trademark was considered the most important IP by firms from all industries except the ICT and food industries. The ICT firms were from Republic of Korea, Laos and Singapore and patent was regarded as the most important form of protection. In the pharmaceutical industry, patents and trademarks were both highly valued. Again, copyright and GI received the lowest importance ratings.

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[1]http://www.wipo.int/edocs/pubdocs/en/intproperty/953/wipo_pub_953.pdf

European Union: Dispute Over ‘France.com’ Trademark

Sources: www.europa.eu

Technology for the modern world is as important as oxygen is for life. The development of internet and the exchange of data amongst different computers has led to major technological as well as telecommunication revolutions. With the advent of Internet, the domain names have taken a new dimension for the business potentials. As is a fact of today’s world, domain names are a part of the corporate assest of a company and their identity on the Internet.

In March 2018, Jean-Noel Frydman, who owned France.com Inc. was prevented from using his registered domain name ‘France.com’ by the French Government. He had valid trademark registrations for ‘France.com’ covering Classes 35, 39 and 41 in the US. The first registration of the domain name France.com dated back to February 10, 1994. The domain name was used as a “digital kiosk” for France-lovers based in the U.S.

India: Tata Sons Granted INR 10,00,000 by Delhi High Court in Infringement Case

Sources: www.delhihighcourt.nic.in

The Delhi High Court in the case of Tata Sons Limited & Anr V. Krishna Kumar granted INR 10,00,000 (USD 14307) as damages to the Plaintiffs in light of the Defendants’ illegal and infringing activities.

Brief Facts

• Tata Sons Limited (hereinafter referred to as the plaintiff no. 1) is the promoter and principal investment holding company of the House of TATA, which is India’s oldest, largest and best-known business conglomerate. It owns 21 tea gardens in the State of Assam and has 21,000 employees in its roll.
• Plaintiff No.2 is a subsidiary of Tata Capital Limited, which in turn is a subsidiary of Plaintiff No.1. is a trusted and customer centric service provider and caters to the diverse needs of the retail, corporate and institutional customers across various areas of business namely Commercial Finance, Infrastructure Finance, Wealth Management, Consumer Loans including distribution and marketing of Tata Cards.
• Plaintiff No. 2 has its websites illustrating its various financial services/ products located at www.tatacapitalfinancialservices.com  andwww.tatacapital.com
• Krishna Kumar (hereinafter referred to as defendant No.1) is the owner of the Tata Finserve Pvt. Ltd. (hereinafter referred to as defendant No.2).
• The Plaintiff came to know about a domain name www.tatafinserve.com  (hereinafter referred to as ‘Impugned Domain Name’) and the website which was parked on the impugned domain name.
• Also, it was found out that the Defendant No. 1 was using trademark TATA as its corporate name i.e. M/s Tata Finserve Pvt. Ltd.
• Therefore, the Plaintiff filed a suit for permanent injunction, infringement of registered trademark and passing off before the Delhi High Court.

Issue

• Whether the Defendant is guilty of infringing the Plaintiff’s trademark ‘TATA’?

Plaintiff’s Contentions

• It was submitted that Plaintiff No.1 was the proprietor of the trademark TATA by virtue of priority in adoption since the year 1917.
• It was also submitted that in addition to the common law rights it is also the registered proprietor of the name/mark ‘TATA’, ‘T within a circle device’ as well as several other TATA-formative trademarks in relation to various goods across various classes.

• It was contended that because of the continuous and extensive use of the trademark TATA over a long period of time spanning a wide geographical area coupled with extensive promotion and publicity, the said trademark had been enjoying an unparalleled reputation and goodwill and had acquired the status of a “well-known” trademark. Also, the trademark TATA and the ‘T’ within a circle Device mark has been acknowledged as a well-known trademark by the Court in various judgments.
• It was alleged that the impugned domain name was registered by the Defendants on September 20, 2014.
• Further, it was alleged that in November 2014, the Defendant Nos. l were portraying themselves to be a part of the Plaintiff No.1, and that they were portraying to be engaged in the business of providing multilayered financial insurance services identical to that of Plaintiff No.2.
• It was contended that on a bare perusal of the impugned website revealed striking resemblance it had with the Plaintiffs’ website namely
  www.tatacapitalfinancialservices.com  and www.tatacapital.com
• It was contended that the Defendants were using the trademark TATA as a part of its domain name and corporate name.

Defendants Contentions

Since the Defendants did not appear before the Court the suit was proceeded ex parte.

Court’s Analysis

• The Court held that the acts of the defendants in adopting and using the identical/ deceptively similar impugned mark and dealing in the goods which are identical to the goods of the plaintiffs certainly has caused irreparable injury to the plaintiffs.
  
• The Court noted that no further proof is needed if the Defendant’s mark is closely, visually and phonetically similar to that of the Plaintiff.
• The Court held that balance of convenience was in favor of Plaintiff, therefore an order of permanent injunction was passed against the Defendants their partners or proprietors, their officers, servants. Further it held that
  the plaintiffs have also suffered immense loss to goodwill and reputation and hence are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages. Hence, a decree for a sum of INR 10,00,000 (USD 14307) in favour of the plaintiffs was passed. The plaintiffs were further awarded an interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of realization.