Delhi HC protects Arcuate Stitching Design Mark of Levis
In a recent landmark judgement, the Delhi High Court has recognized the protection of ‘Acruate Stitching Design’ mark, thereby, providing protection to non-traditional trade marks in India.
Shahid Kapoor’s starrer ‘JERSEY’ dodged a full-toss in a copyright infringement suit
In a recent case, the Bombay High Court rejected the ad-interim injunction relief sought by the plaintiff, in view of the release of the Hindi film ‘Jersey’ which is bound to hit the theatres on April 22nd, 2022.
Battle between the heart and soul of the Sharbat industry!
Are you also fond of the famous sharbat ‘Rooh Afza’, that reddish cold beverage which invokes so many childhood memories? The Delhi High Court recently adjudicated between beverages names ‘Rooh Afza’ and ‘Dil Ahfza’.
Express Patent Examination in India
Indian Patent Office is trying to keep pace with the global standards for granting a patent and in order to achieve that, provision for expedited examination introduced pursuant to the amendment of the Patent Rules in 2016 is proving to be beneficial.
Delhi HC protects Arcuate Stitching Design Mark of Levis
LEVI STRAUSS AND CO. v. IMPERIAL ONLINE SERVICES PRIVATE LIMITED & ORS.
In the latest decision, set to become landmark precedent in the sphere of protection of non-traditional trademarks in India, Mrs. Pratibha M. Singh, J. vide speaking order delivered on March 24, 2022 has ruled to protect the ‘Arcuate Stitching Design’ mark belonging to Levi Strauss & Co. (plaintiff in the present matter) against the principal defendant, Imperial Online Services Private Limited, in the matter of Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. & Ors., CS (COMM) 657/2021 & I.A. 16736/2021.
As observed by Justice Singh in the judgement,
- Under the law of trade marks, the definition of `mark’ has evolved over time. Traditionally, trademarks included names, words, devices, logo, label/packaging, letters, numerals etc. However, this list of trademarks has expanded over the years to include colour, combination of colours, shape of goods, patterns of products, smell, and sound marks etc. These broad two categories of marks are loosely referred to as – • Traditional Trademarks
- Non-Traditional Trademarks.
The non-traditional trademark in question in the present case was the ‘Arcuate Stitching Design’ mark, duly protected under trademark registration no. 851939, belonging to Levi Strauss & Co., and an ubiquitous feature on all of their jeans:
Since 1873, Levi Strauss & Co. has been a pioneer in the development of denim pants most popularly known as “jeans”. Levi Strauss & Co. and Jacob Davis were granted a patent in the United States for an “Improvement in Pocket-Opening Fastenings” as far back as 1873, namely for riveted pockets, and making work pants stronger and more long lasting for working men. The brand has since revolutionized casual clothing with iconic and innovative styles, still being carried on today, and has emerged as one of the most popular brands in clothing worldwide with astonishing customer recall. Levis jeans and garments, under its various trademarks and brandings are widely available in mass-channel retail stores around the world, including all over India, providing value-conscious consumers with products from a company with a history of producing high-quality clothing.
Imperial Online Services Private Limited is a private company that was incorporated on 10 July 2012 and is not publicly traded. It is a private limited company with its headquarters in Hyderabad, Telangana. The company’s four (4) directors were also impleaded as defendants in the present case.
Facts of the Case
Plaintiff, Levi Strauss & Co. filed a suit before the Hon’ble Delhi High Court seeking a permanent injunction restraining trademark infringement, copyright infringement, passing off trademark, and other reliefs in respect of the ‘Arcuate Stitching Design‘ mark, including prayer for the non-traditional trademark in question, namely the ‘Arcuate Stitching Design‘ mark, to be declared as ‘well-known’ within the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999.
According to the Plaintiff, the said mark was adopted in 1873 and is used on all textiles, including denim jeans, which the Plaintiff manufactures and sells.
Being aggrieved by the Defendants’ conduct of selling denim jeans featuring the identical ‘Arcuate Stitching Design‘ mark over various e-commerce platforms such as Amazon, Flipkart, Myntra, Snapdeal, LimeRoad, Nykaa Fashion, Paytm Mall, and www.urbanofashion.com, the Plaintiffs had issued legal notices to the Defendants. Thereafter, in compliance thereto, Defendants had executed undertakings as of February 16, 2021, inter alia acknowledging the Plaintiff’s rights in the ‘Arcuate Stitching Design‘ mark and, in recognition thereof, promising to cease all use of the said mark and remove all goods bearing the impugned mark from circulation within six (6) months thereof (i.e. by 15 August 2021). However, despite so undertaking, the Defendants had been found to be continuing to manufacture and sell denim jeans bearing the Plaintiff’s ‘Arcuate Stitching Design‘ mark, leading to the Plaintiff being forced to file the present suit before the Hon’ble Delhi High Court in order to protect their rights.
On 22nd December, 2021, upon being satisfied with the Plaintiff’s prima facie case, the Court had granted the Plaintiff an interim injunction, inter alia prohibiting the Defendants from manufacturing, marketing, offering for sale, and selling, whether directly or indirectly, and whether on the internet or otherwise, any goods, most notably denim jeans, bearing the the Plaintiff’s ‘Arcuate Stitching Design’ mark.
The Defendants had filed a written statement requesting an initial extension of six months for the disposal of the stock, but the same could not be adhered to diligently due to the pandemic period and associated lockdowns. However, the Court had prohibited the Defendants from infringing the Plaintiff’s mark, and that even the exhibition of images attributed to the Defendants on e-commerce platforms would violate the Court’s injunction order.
Defendants had submitted that they are willing to suffer permanent injunction against use of the impugned mark, however object to the damages amounting to 8.5 lakhs as being claimed by Plaintiffs.
Whether a stitching pattern is protectable as a Trademark?
The Plaintiff had sought protection for the ‘Arcuate Stitching Design‘ mark, being encompassed under Section 2(m) of the Trademark Act, 1999, which defines a (trade)mark as being: “ a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof;”.
The case considered whether the stitching pattern, which is not the product design, but merely a pattern incorporated onto the Plaintiff’s products, serves as a trademark, insofar as associating the jeans with the Plaintiff. Upon deliberation by the Hon’ble Bench, the answer was concluded in the affirmative. Since the trademark owner’s stitching pattern, even in the absence of a corresponding name or a logo, uniquely identifies the jeans as emanating from the Plaintiff, the pattern fulfils its purpose in serving as the Plaintiff’s trademark.
Plaintiff referred to the ruling passed in Lois Sportswear, USA, Inc. v. Levi Strauss & Co., 631 F. Supp.735 (S.D.N.Y. 1985), wherein the United States District Court for the Southern District of New York had held as follows: “Based on the foregoing analysis, Levi’s arcuate mark is a strong mark that qualifies for a high degree of protection.” Apart from its indisputable registration as a trademark, the Levi’s ‘Arcuate Stitching Design‘ mark was held to be a fanciful design that serves no purpose other than as a source indicator. Thus, the US District Court determined that the ‘Arcuate Stitching Design’ mark is fanciful and deserving of protection as a registered trademark and their decision was further upheld by the United States Court of Appeals, Second Circuit in Lois Sportwear, U.S.A., Inc., v. Levi Strauss & Co. 799 F.2d 867 (1986).
In the further referred case of Levi Strauss Co. v. Abercrombie Fitch, 633 F.3d 1158 (9 th Cir. 2011), the United States Court of Appeals, Ninth Circuit, had recognized Plaintiff’s unarguable rights in the value of their trademark, the ‘Arcuate Stitching Design’ mark, as clothing bearing the said mark had amounted to 95% of their total revenue over the past thirty (30) years!
The court, in the present case recognized the Plaintiff’s registered and valid statutory trademark rights in the ‘Arcuate Stitching Design’ mark, globally as well as in India, and were pleased to decree the matter in favour of the Plaintiff, as Defendants had already submitted to permanent injunction, and awarded nominal costs (to the tune of 4 lakhs) to the Plaintiff, in order to bring an end to the matter expeditiously. Furthermore, a decree declaring the said mark to be a ‘well-known’ mark was passed.
The present case is an extremely lucid recognition of non-traditional trademarks and looks set to be cited and relied upon in future matters pertaining to similar subjects. That a stitching design, incorporated only as a pattern upon clothing can serve as a source identifier will open the doors for other source-indicating patterns to be recognized as (non-traditional) trademarks and offer much needed protection against infringement of the same, especially since the clothing and fashion industry is susceptible to rampant counterfeiting. Additionally, its declaration and inclusion in the Registry’s list as a well-known trademark is also welcome for such an iconic design element.
The court’s stance in taking a strict stand against online use of the impugned mark is also a relief to rights holders because it is a common problem for infringers to plead inability/delay in taking down infringing images online as compared to assuring that physical misuse has ceased, which is more difficult to verify, and thereby continue to infringe registered trademarks by surreptitious online sales.
Shahid Kapoor’s starrer ‘JERSEY’ dodged a full-toss in a copyright infringement suit
By Vikrant Rana and Shilpi Sinha
The release of Shahid Kapoor & Mrunal Thakur -starrer Jersey gets a green light as the Hon’ble Bombay High Court refused the stay on release of the film while hearing a copyright infringement suit against its producers and its actor Shahid Kapoor. The Plaintiff, Mr. Rupesh Jaiswal a renowned writer in the Bollywood filed a copyright infringement case alleging that his story was plagiarised by the makers of the movie, and sought for an ad-interim injunction on its the release.
The film already faced a setback as it was set to release on December 31, 2022, but due to raise in Omricorn cases in India the same was postponed. Later, when the film was supposed to hit the theatres on April 14, 2022 it was yet again postponed. As per the speculation it was a tactic move on part of the PR team to avoid any clashes with KGF: Chapter 2. Now, the producers of the film have cleared the air that the delay last week, was not to avoid any clash with KGF: Chapter 2 but because of a plagiarism case, as the team was waiting for a favourable order from the Hon’ble Bombay High Court.
Submissions by the Plaintiff
The Plaintiff claimed that he got his script titled “The Wall” registered with the Screenwriters Association (SWA), formerly known as Film Writers’ Association in the year 2007. He contended that he came across an article dated December 27, 2021 in Bombay Times regarding a Hindi motion film titled “Jersey”, having its brief description. The said film was stated to be remake of a Telugu film, released in April 2019. The plaintiff contended that from the summary of the scripts, he found resemblance with his script ‘The Wall’. According to him, there is a substantial adoption of his script in the Defendants film Jersey.
The Plaintiff in its cease and desist notice dated January 29, 2022 sought entire data of revenue generated by the Telugu film “Jersey” and a sum of either Rs. 5 Crores or 50% of the generated revenue, whichever is more as compensation for the alleged theft of his original and registered literary work and also, to refrain from any kind of promotion of the film in any mode on any platform. In response to the same, the film makers relied on an assignment agreement dated August 07, 2019 for remake of the Telugu film ‘Jersey’ from Defendant No. 2 in favour of Defendant No.3. According to the Plaintiff the alleged agreement has no mentioning as to how the Defendant No.2 obtained the rights of remake of the Telugu film ‘Jersey’.
Submissions made by the Defendant
The Defendant in their defence brought to the attention of the Court, a public notice dated August 09, 2019 in which the Defendant No.3 informed the public that he had applied for remake rights of the Telugu movie and invited third party objections, if any. It was also informed to the Court that prior to this date, the Telugu movie ‘Jersey’ had been released nationally and internationally in theatres on April 19, 2019 thereafter various channels and OTT platforms. In fact, the Hindi dubbed version of the Telugu film ‘Jersey’ was released on YouTube on October 13, 2019 and has over 10 Crore views till now. Thereafter, on November 01, 2019, the announcement of the movie ‘Jersey’ starring Shahid Kapoor was published in Bombay Times with the release date as August 28, 2020 which got postponed due to rise in COVID-19 cases. On November 23, 2022, the cinematic trailer was released on YouTube which garnered over 6.5 Crore views.
The Defendant, thus, submitted that it is preposterous to think that the Plaintiff got to know about the film ‘Jersey’ as late as on December 27, 2021 only. In fact, the Plaintiff waited for over one and a half month after receiving the Defendant’s response denying all the claims of his cease and desist notice. Further, drawing a comparison between the Plaintiff’s script ‘The Wall’ and Defendant’s film ‘Jersey’, the Defendant contended that a film based on cricket an hence often has scenes that looks similar, particularly an ambitious person who ultimately succeeds in his ambition for the Indian Cricket Team or Ranji Trophy Cricket. The Defendant took the defence of gross delay and latches on part of the Plaintiff in seeking the ad-interim injunction relief, in view of the release of the Telugu film ‘Jersey’ in April 2019.
Bombay High Court’s observations and order
The Hon’ble Court, after considering the submissions of both the parties and the facts pointed out by the Defendant No.4, took a view that the Plaintiff is a renowned script writer and has been engaged in the industry since more than two decades, thus, it is inconceivable that the plot of the movie among other things were unknown to him. Further, the Hon’ble Court noted that the Plaintiff had only prayed for an injunction over the Hindi film ‘Jersey’ and not the Telugu film which was already released and exploited. Moreover, the Hon’ble Court refused to look into the similarities between the scripts of the Plaintiff and the Defendant on account of gross delay and laches on part of the Plaintiff in filing the suit. Thus, the ad-interim injunction relief for injunction by the Plaintiff stood rejected.
Battle between the heart and soul of the Sharbat industry!
CS (COMM) 551/2020
Most of us in India have likely encountered the famous sharbat Rooh Afza, that reddish cool beverage which invokes so many childhood memories, in our lives. The fame and notoriety of the said drink is such that for many, a blind tasting would likely lead to utterances of the name/mark Rooh Afza by most! However, sentiment aside, the High Court of Delhi recently faced a test of its own – to adjudicate between beverages named Rooh Afza and Dil Ahfza.
The High Court of Delhi on January 06, 2021 dismissed an application seeking permanent injunction filed by the manufacturers of the famous beverage ‘Rooh Afza’, against the manufacture and sale of another similar drink sold under the name ‘Dil Ahfza’. The plaintiffs prima facie alleged that Dil Afza was an attempt to pass off and ride on the goodwill acquired by Rooh Afza, which is essentially a concentrated herbal squash drink which gained much popularity in India since as early as 1915. However, the Court disposed the suit by inter alia upholding the conceptual difference that lies in the names of both the drinks – ‘Dil’ meaning heart, and ‘Rooh’ meaning soul.
At the outset, readers may also agree with the contention that Rooh Afza has indeed gained immense popularity in the Indian market, however, the rationale given by Hon’ble Ms. Justice Asha Menon for disposing the application despite Rooh Afza’s fame, piques the interest of a true IP enthusiast and makes this case worth a read.
Brief background of the case
The present commercial civil suit was filed by Hamdard National Foundation (Plaintiff 1) and Hamdard Dawakhana (Plaintiff 2) against Sadar Laboratories Private Limited (Defendant). Both the parties to the suit are rather famous Indian companies, engaged in the production and distribution of various products that are concocted based on the principles of Unani medicine and Ayurvedic sciences. While the plaintiffs have been in the business since 1906, the Defendants had entered the same market in 1949, their product line primarily involving syrups, medicines and botanical products. In the instant case, the products under inspection are the herbal concentrate drinks ‘Rooh Afza’ and ‘Dil Afza’.
While the main contention of the Plaintiff was that ‘Rooh Afza’ as well as ‘Hamdard’ were well-known trademarks, in support of the same, they claimed that:
- The use of the name Dil Afza amounted to infringement as well as passing off of Rooh Afza
- The product packaging of Rooh Afza includes a unique colour combination, layout get-up and arrangement of features, particularly the red colours and the floral design therein.
- That the defendants launched their product, Dil Afza in the month of March 2020, wherein it was found that the packaging of Dil Afza was similar to that of Rooh Afza, wherein the fashion of ringlets were also incorporated.
- That the defendant adopted a deceptively similar name in respect of their product with mala fide intentions, and has imitated the design of their bottle.
- Further, the plaintiffs also placed reliance on the trademark applications filed by both the parties, wherein it was asserted that the plaintiffs have been producing and marketing Rooh Afza since 1907 and had obtained their first trademark in 1942. On the contrary, the defendants had filed an application only on June 10, 2018 on a proposed to be used basis and subsequently, another application was filed on July 04, 2018, wherein the defendants claimed use since 1949.
- Nevertheless, the plaintiffs admitted that the applications filed by the defendants could not be opposed out of inadvertence, and hence have sought for a recourse by filing the present suit.
- Additionally, the plaintiffs also placed reliance on the matter of Unani Dawakhana v. Hamdard Dawakhana, 1930 SCC OnLine Lah 300, wherein the mark Rooh Afza was granted the status of being a well-known trade mark by the High Court of Lahore.
Defences taken by the Defendants
The counsel for the defendant primarily put forth their arguments on the ground that the term ‘Afza’ was common to the trade and could not granted exclusivity. Additionally, in support of the same, it was contended that:
- Firstly, the suit for infringement did not lie within the purview of Section 19 of the Trade Marks Act, 1999, which inter alia refers to the revocation of the acceptance of a trade mark application, before registration.
- In addition to the contention that Afza was a term that was common to trade, the counsel for the defendants pointed out that it was for this very reason that the product of the plaintiffs in the plaint, has been referred to as “Hamdard Rooh Afza’ and not Rooh Afza alone.
- The defendant further asserted that the product Dil Afza was in the market since 1949, and had been in use in Class 5 since then. He pointed out that Rooh Afza has been in the trade during the same timelines, however no scope of confusion has arisen in all these years, up until the year 2020.
- Additionally, the defendant counsel added that the entities of both the parties are active members of the Unani Drug Manufacturers Association, and are very much aware of each other’s existence in the trade.
- Thus, it was contended that there was no mala fide intentions involved in the adoption of the name/mark ‘Dil Afza’.
- The defendant counsel also drew parallels between the meanings of both the products, wherein it was asserted that there exists no scope of confusion even with the commonality of the word Afza as the words Rooh, meaning ‘spirit/soul’ and the word Dil meaning ‘heart’ created sufficient scope of distinction between both products.
- Lastly, the defendant counsel asserted that the plaintiffs have failed in proving that the term ‘Afza’ has obtained a secondary meaning that is associated solely with the product ‘Rooh Afza’.
‘Rooh Afza’ is a well-known trademark
The Hon’ble Justice Ms. Asha Menon took into account the following observations before dismissing the application, directing the defendant to maintain a true account of sales of ‘Dil Afza’ during the pendency of the suit and submit to the court a quarterly report of the same:
- That it is indeed a fact that the term ‘Rooh Afza’ is a well-known trademark and that based on the well-known status of Rooh Afza, the plaintiffs’ claims of building vast reputation cannot be refuted.
- She stated that “even if the consumers were connoisseurs, to believe that the use of the word ‘Rooh’ and ‘Dil’ would cause confusion because they connote deep emotion. Buying a bottle of sharbat may involve emotions, but not deep to the extent hoped for by the learned counsel for the plaintiffs.” And subsequently rejected the plea raised on behalf of the plaintiffs in relation to the confusion created by both these terms.
- Further, with respect to the term ‘Afza’, the Court opined that since the plaintiffs had not sought and obtained registration for the exclusive use of the word ‘Afza’, exclusivity for the same cannot be claimed. It was however acknowledged that they may claim exclusivity for the whole term ‘Roof Afza’ and not for either of the terms individually.
- Additionally, the Court observed that the concurrent existence of Dil Afza in Class 5, does not appear to be problematic, owing to the peaceful co-existence between both the parties. However, she added that “Even if the sharbat has been produced only since 2020, no case has been made out to restrain the defendant from marketing its sharbat under the name ‘Dil Afza’.”
One may argue that the turn of events in the instant case was unexpected, but the decision was very articulately and logically laid out by the Court. The order by Hon’ble Ms. Justice Asha Menon pays due attention to the tendency of claiming exclusivity over generic terms, and attempts to monopolize the market.
However, another line of thought may bring up to the surface, the contention that the terms involved in the instant case were subjects of the Urdu language. While ‘Rooh Afza’ is a product that has gained immense popularity across all sects and dialects of the country, and even across boundaries, where Urdu, or in-depth knowledge of Urdu terminologies may not be very prominent.
In the instant case, while it was in fact essential and logical to look into the generic term ‘Afza’ and ascertain that the same is common to trade, in practicality, it may be worth examining whether a person of average intellect, who is not as exposed to the Urdu language, indeed understands the generality of the term ‘Afza’ or whether the same has indeed gained a secondary meaning in association with Rooh Afza.
Nevertheless, on a lighter note, it may be worth reflect on the possibility of the instant case acting as a precedent to follow thy heart?