Trademark Law

DELHI HIGH COURT BLOCKS MYSHOESHOP.IN – COUNTERFEITING UNDER THE IP Regime?

In this blogpost, Sarvagya Chitranshi, 3rd Year student at Gujarat National Law University, discusses the recent Delhi HC ruling where a prima facie case of trademark infringement was made against ‘myshoeshop.in.’ An order of ad-interim injunction was hence passed and in furtherance of the same, the website was blocked. The blog stresses upon the criminal nature of the said act and argues for such acts to be included in Indian IP jurisprudence.

The ‘fear of missing out’ on adorning apparel from popular brands has led to the creation of a market of ‘first copy’ products. ‘First copy’ products are essentially goods that ‘imitate’ pre-existing designs of high-end luxury brands, but lack the quality of the original product. However, they do find wide acceptance among the general populace.

The Delhi HC Ruling

The fundamental reason for the popularity of first copy products is their close resemblance to the original product. This involves the usage of an exact or a similar looking copy of the trademark of a brand that they attempt to imitate. An occurrence like this has led to the Delhi High Court blocking a website named http://www.myshoeshop.in for being engaged in the business of selling first copy products of various footwear brands like Louis Vuitton, Nike, Adidas, and New Balance, in the case of New Balance v. Ashok Kumar Trading as ‘www.myshoeshop.in’. As Justice Navin Chawla noted, a prima facie case of infringement was made out against the defendant which warranted the grant of an injunction. The website was involved in blatant trademark infringement and offered counterfeit products at comparably cheaper prices in comparison to the original ones. Therefore, it became necessary to protect the interests of both the plaintiffs and the customers by restricting the activities of the website.

Trademark Infringement and Counterfeiting – India’s Stance

A ruling against a marketplace involved in the sale of counterfeit products, seems like a positive step from the viewpoint of the indigenous trademark jurisprudence. The Delhi High Court has a history of taking a strict stance against counterfeiting as a practice. This can be elucidated through its decision in Montblanc Simplo Gmbh v. Gaurav Bhatia & Ors. The Plaintiff here had a well-known line of writing instruments and a registered trademark for the same. It was established that the Defendant was involved in counterfeiting their writing instruments and infringed upon their trademark. By way of a permanent injunction, the Court restricted them from dealing in any kind of counterfeit products and awarded damages to the Plaintiff.

However, the term Counterfeit,, is not been explicitly defined under the Trademarks Act, 1999. The Indian Penal Code refers to the act of counterfeiting under Section 28 and defines it as creation of a product that resembles an already existing one, with the sole intention of deceiving the customers.

On the other hand, Section 29 of the Trademarks Act lays down the requirements of ascertaining trademark infringement. It focuses upon the deceptive similarity or likelihood of confusion of a registered trademark. The closest that the Trademarks Act comes to addressing the concept of counterfeiting is under Section 29(5). The section penalises the usage of a trademark as one’s own trade name on a good or the packaging thereof.

Section 104 of the Act also mandates punishment for a person who sells, exposes for sale, lets for hire or has in his possession for the purpose of sale, any goods or provision of services, to which a false trademark or description thereof is applied.

However, the fact remains that there is no explicit mention of counterfeiting in the Indian Trademark Act. This creates legal complexities for the aggrieved party by mandating two separate actions under the IPC and the Trademarks Act. It also restricts them from obtaining appropriate relief for the offence until the Court takes a proactive step. The exclusion therefore, has unfavourable consequences for the prospective plaintiffs and diverges from the international standards set out for the same.

Separating the Two Domains

The fundamental difference between trademark infringement and counterfeiting is that the former covers a broader class of cases where ‘confusingly similar’ marks can be the cause for the violation. While in the latter class of cases, nearly exact copies or usage of a registered mark comes under a Court’s purview. Black’s law dictionary defines counterfeiting as –

“To forge; to copy or imitate, without authority or right, and with a view to deceive or defraud, by passing the copy or thing forged for that which is original or genuine.”

The concept of counterfeiting is also more fitting for specific products. Therefore, it provides for a more appropriate category to legally address the issue of first copy products. Given the possibility of damage that can arise out of counterfeit products, the burden of proof is substantially lower in a counterfeit suit. This can be understood from the case of Cadbury India Ltd. and Ors. v. Neeraj Food Products. The Plaintiffs averred that their registered trademark for ‘Cadbury Gems’ was being infringed upon by the Respondent’s product, ‘James Bond.’ It was stated that the Plaintiff’s product is a chocolate tablet sold in a unique pillow packet, which as a concept has been nearly replicated by the Respondents. The mark in use by the latter, is also phonetically and deceptively similar to the trademark of the Plaintiff. The Court held that the entire concept of deceptive similarity does not necessarily arise in a counterfeit suit. Since the infringing products are direct copies, only a proof of their existence needs to be given.

Another essential legal difference between the two is that trademark infringement is only a civil violation. However, counterfeiting is internationally accepted as a criminal act. Even in India, it is covered under the IPC. The sole purpose of counterfeiting is to intentionally deceive people using someone else’s intellectual property. Therefore, it is contended that the act must be accorded a more serious consideration [1]. Just like Copyright Act, 1957, where there are provisions for both civil and criminal violations, it is appropriate for the Trademark Act to recognize the criminal nature of counterfeiting under its ambit. The seriousness of counterfeiting as an offence was noted in the case of Nike Innovate C.V v. Ashok Kumar, where it was proven that the Respondent was manufacturing counterfeit products, under the plaintiff’s trademark. These included shoes, sports apparel and athletic equipment, which were not only spurious but illegitimately used the popular ‘Swoosh’ mark of the Plaintiffs. The District Court of Saket rightly ordered for a permanent injunction and awarded damages against the defendant. The Court also stressed on the gravity of the offence by allowing the aggrieved party to seek a remedy of award of damages, a permanent injunction or even destruction of the counterfeit products.

International Recognition of Counterfeiting

The TRIPS agreement recognizes the act of counterfeiting. It defines it as the unauthorised use of a trademark on a good/packaging, which is identical to an existing mark associated with such goods. Criminal action under the agreement is only mandated for wilful trademark counterfeiting or commercial copyright infringement. This recognition sets the standards for all signatory nations, including India.

USA

The Lanham Act, which allows for punitive damages on a state level in the US, recognizes infringement and counterfeiting as two separate trademark violations. It is applicable to counterfeit suits when a mark is specifically used for nearly identical services/goods, which the original trademark was registered for.[2]Therefore, a clear distinction is struck between mere infringement and counterfeiting under the American IP regime itself. The country is also leading the negotiations on the Anti-Counterfeiting Trade Agreement, which aims to re-augment IP enforcement standards on a global level. The agreement specifically deals with physical and digital counterfeits in various domains.

Although the UK model lacks a clear recognition of counterfeiting as an offence under its trademark act, it clearly follows the civil-criminal distinction for the act. It can be covered either under Section 10 (infringement of a trademark) or under Section 92 (unauthorised usage of a trademark) of the Trademark Act, 1994. However, it is to be noted that under Section 92, ‘unauthorised deceptive use’ is treated as a criminal offence that flows from the act of civil infringement[3]. Although there might not be a clear mention of counterfeiting in the British Act, both the civil and criminal actions against the same emanate from its trademark act itself.

Conclusion

Our present discussion justifies the requirement of bringing counterfeiting under the IP regime in India. As stated, the inclusion is fundamentally necessary since it shall recognise the seriousness of the violation. This provides for a legitimate relief for the aggrieved party, given the degree of damage that the act entails. It further helps the aggrieved party by allowing them to bring an action of infringement or counterfeiting under a single legislation. Most importantly, it shall make the Indian IP regime more compliant with international standards.

Presently, recognizing the act of counterfeiting as a mala-fide practice, it will be interesting to see if that aspect is brought under the given case. It becomes even more important in the larger context as the Courts must take up the responsibility of strictly dealing with the offence of counterfeiting. Especially, until the legislature decides to bring the act of counterfeiting under the IP regime.

[1] David J. Goldstone & Peter J. Toren, ‘The Criminalization of Trademark Counterfeiting’ [1998] 31 CLR 1

[2] Choice Hotels International, Inc. v Pennave Associates 159 F. Supp. 2d 780

[3] R v. Johnstone [2003] FSR 42

Use of Registered Trademarks as Keywords in Google Ads Constitutes Infringement: Make My Trip India Pvt Ltd. v. Booking.com & Ors

By Prachi Jain and Ayush Kumar

In this post, Prachi Jain and Ayush Kumar, third year law students at Dr. Ram Manohar Lohiya National Law University, Lucknow have discussed and analysed the case of MakeMyTrip India Private Limited v. Booking.com B. V. & Ors. In doing so, the authors have delved into the complexities involved in a competitor’s use of a registered trademark as a keyword in the Google Ads program and presented arguments from both side of the trademark owner and against.

Introduction

A trademark infringement is said to occur when a party uses a mark that is identical/similar to another party’s mark, thereby creating a possibility that a consumer would get confused as to the source of the goods/services and inadvertently patronize the wrong merchant.[1] Now, what happens when the “use” of that mark is invisible to the consumer’s eye? Recently, the Delhi High Court had to face a similar question as to whether the use of a company’s trademark as keywords by anyone through the Google Ads Program would constitute infringement under the Trademarks Act, 1999 (the “Act”).

MakeMyTrip India (the “Plaintiff”) filed a lawsuit against Booking.com (the “Defendant”) in response to the Defendant’s use of the Plaintiff’s registered trademark as a keyword in the Google Ads program for promoting its services as advertisements when search results are published on Google. This is certainly not a first of a kind case as litigations against Google regarding its keyword policy are steadily piling up in courts across the country, the notable ones being the cases of upGrad v. Scaler, Make My Trip (India) Private v. Happy Easy Go India Private and DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd (“DRS Logistics”).

While this article shall primarily analyse the present case of MakeMyTrip India Private Limited v. Booking.com B. V. & Ors., in doing so, it shall also delve into the complexities involved in a competitor’s use of a registered trademark as a keyword in the Google Ads program and showcase arguments from both sides – for the trademark owner and against.

What is the Google Ads program?

The Google Ads program works in a way wherein companies can bid for keywords that ultimately match the phrases/words that users usually search for. Keywords are merely words or phrases that assist in determining when and where a specific ad can appear. An advertiser can choose keywords that, when put into a search engine by a user, will result in the advertiser’s advertisement being displayed as a sponsored link.[2] For example, if a person wants to book a hotel and searches for ‘make my trip’ in the Google search box, the likely results would be websites such as Booking.com if it has the highest bid for such a term that is already a registered trademark of another company (in this case, ‘MakeMyTrip’).

For instance: On typing “booking.com” in the search bar, its website appears as the first result along with a suffix “Ad” next to it because it probably placed the highest bid for its own trademark.

What were the Plaintiff’s Contentions?

No trademark owner would want an online consumer to be mistakenly led to believe that another company with a confusingly similar name is in any way associated with the trademark owner’s goods or services. On detecting similar activity, MakeMyTrip filed a suit for permanent injunction before the Delhi HC. Their contention was that Booking.com placed their bid for the keyword ‘MakeMyTrip’ to ensure that its website appeared in the top three search results when someone searched for ‘MakeMyTrip’ on Google. Hence, this would be a violation of Section 29(6)(d), 29(7), 29(8), and 29(9) of the Act, which all deal with infringement of trademarks.

What were the Defendant’s contentions?

The Defendant, on the other hand, contended that there existed a strategic partnership between the Parties that removed the keyword bidding restriction. It relied on the Guess judgment, a landmark European Commission decision that stated that competitors might use a trademark as a keyword in the Google Ads Program. Further, they argued that usage of a trademark as a keyword not amounting to infringement was an internationally accepted position in various countries, some of which are the US, South Africa, and Canada.

What were the issues before the Court?

The court was faced with three questions:

1. Whether the use of keywords that are registered trademarks would amount to infringement?

2. Whether this invisible use of the mark constitutes misrepresentation as a matter of principle?

3. Should the trademark owner continue to make investments in Google Ads to promote their own business when Google allows non-proprietors also to bid for such registered trademarks as a keyword?

What did the Court decide?

Upon hearing both the Parties, the Hon’ble Court, relied on several past judgments, a notable one being DRS Logistics which held that such an invisible use of a mark in the form of metatags constitutes infringement. Recognising that impatience is a human behaviour due to which results displayed at the top tend to be the ones generating higher revenues, the Court realised that it is important to recognize such infringement by competitors who bid higher on such registered trademarks as keywords, ultimately defeating the essence of the Act.

Justice Prathiba M Singh ruled that the use of a registered mark by competitors, even as metatags, constitutes infringement, even if the mark is invisible to the user. A competitor’s use of a mark as a keyword might not constitute passing off because the mark is not visible. However, third-party bidding on marks for use by internet search engines might be considered misrepresentation.[3] Thus, the order said that the ‘invisible’ use of a mark as a keyword could constitute passing off as a matter of principle. It was also held that the Defendant’s act of encashing on the goodwill of the Plaintiff’s mark ‘MakeMyTrip’ amounts to taking unfair advantage and falls foul of Section 29(8) of the Act.

Going a step further and deploring the Google Ads program, which requires trademark holders to bid for their own trademark. The court noted that by permitting a registered trademark to be used as a keyword, a trademark owner is obliged to bid for its own trademark in order for its own products and services to appear in the advertisement section of the search results and avoid being hijacked by a rival. Moreover, even if the trademark holder refrains from bidding for their mark and competitor secures the keyword for themselves, a large majority of the users would be directed to competitor’s website causing business loss to trade mark owner’s business.

Further, the Alliance of Digital India Foundation (AIDF), a start-up industry association, applauded the Delhi High Court’s ruling and dubbed it unethical for Google to profit from a brand’s goodwill and reputation by using that brand’s registered trademarks as keywords. Furthermore, the advertising strategy, known in the business as “conquesting”, is not unusual nor exclusively used by Google, other platforms such as Amazon and Apple Store employ it as well.

Google actively investigates the use of trademarks as keywords in the European Union. On the other hand, it has stopped investigating trademark infringements and somewhat diluted the advertising policy standards in India after 2015. Still, Google’s involvement in “conquesting” has raised questions as of late. Google was formally investigated by the federal and state agencies over potential antitrust violations. In 2019, fifty state attorneys commenced a joint probe to look into whether Google’s Ad program qualifies to be charged under monopolistic practices.

What are the usual defences taken by an advertiser in a trademark infringement case?

An advertisers’ primary justification for using a competitor’s trademark as a keyword is that it does not constitute “use” under Section 2(2) of the Act, which states that “use” refers to the use of a printed or other “visual” representation of the mark unless the context indicates otherwise. However, the argument fails the test of law because by using the words “unless the context otherwise requires”, the provision allows for the usage of non-visual trademarks as well.

Moreover, to prevail in an infringement action, since a trademark owner must prove that the defendant’s use of the trademark is likely to mislead consumers as to the source of the products/services, the advertisers claim that such use is unlikely to cause confusion because the advertising appears as sponsored links with the suffix “Ad” added to them, which are clearly distinguishable from organic search results.

Initial Interest Confusion (IIC) Doctrine And The Eight Factor Test

When considering India specifically, the Supreme Court has held that a typical consumer is of “average intelligence and imperfect recollection”. This has been reiterated in various other judgments, including the DRS Logistics judgment. Thus the use of a trademark could be deemed infringement even if it is not visible to the end-user, because coupling the user’s intent when entering a search term and the display of a competitor’s advertisement as a result of the use of a registered trademark as a keyword could indicate a possibility of confusion.

Per the foregoing analysis, if the true source of the commodity is known but the consumer is momentarily confused, infringement may be proven. This is exactly what the IIC doctrine postulates. There is a general assumption that can be extracted from the trademark policy of Google with respect to the Google Ads Program that the ‘likelihood of confusion’ ultimately stems from the visible elements of the advertisement. However, it is critical to recognise that the invisible parts of an advertisement, such as keywords, can have a significant impact on the likelihood of confusion.

The doctrine reasons that even if consumers don’t make erroneous purchases, they are eventually diverted towards an advertiser who causes initial confusion by wrongfully profiting from the goodwill that their competitors have accrued.[4] What’s more, the initial interest confusion can cause consumers to spend significant amounts of time and effort before realizing their mistake. The use of the mark invisibly by a person other than the owner might just distract or divert. It might not always result in revenue loss or consumer confusion. One way of knowing the intensity of the confusion caused by conquesting would be to look at the data from consumer surveys. However, admissibility of survey data in the court is always subject to incredibility and uncertainty. The assumption of commercial loss appears to be the only basis on which the Court in this case based its conclusion. Along with the rights of the traders, customer uncertainty is a key consideration in Indian law regarding trademark infringement. In order to achieve its conclusion, the Court’s reasoning should have ideally taken into account both of these reasons and explained how it came to that decision.

In the case of AMF Inc, the United States Court of Appeals for the Ninth Circuit set out an eight-factor test in order to ascertain whether a consumer who intends to purchase from a given website would be confused just because search results are jumbled up. In determining whether confusion between related goods is likely, the following factors are relevant: i) strength of the mark; ii) proximity of the goods; iii) similarity of the marks; iv) evidence of actual confusion; v) marketing channels used; vi) type of goods and the degree of care likely to be exercised by the purchaser; vii) defendant’s intent in selecting the mark; and viii) likelihood of expansion of the product lines.

So, should branding keyword ads be made unlawful?

In the case of keyword advertising, businesses routinely attempt to attract the competitors’ customers by using their registered trademark. [5] Such a practice, it is argued, is unfair. Thus, given the complexities, it wouldn’t be too far-fetched for one to wonder if keyword branding should be made illegal altogether.

Perhaps, the risk of delegalizing the use of registered trademarks of a competitor as keywords is best demonstrated by the decision of the Madras High Court in the case of Consim v. Google. In this case, a marriage website called ‘Bharat Matrimony’ sued Google and other matrimonial websites for trademark infringement over the usage of its registered trademarks as keywords. The registered trademarks it intended to protect here were quite descriptive in character (for example, “Telugu Matrimony,” “Tamil Matrimony,” and so on). The court acknowledged in its decision that Bharat Matrimony would gain an unfair advantage if the use of such registered trademarks as keywords was found illegal.

It would thus be counterproductive to delegalize the use of registered trademarks completely. In the present case, too, MakeMyTrip wanted the mark “MMT” to be covered in the injunction order. However, because this mark consists solely of letters from the English alphabet, the Court will rule on this matter on the next date of hearing.

What lies ahead

It is true that if consumers are unable to distinguish between organic results and paid advertisements, or if they mistakenly assume an affiliation where none exists, the law must afford the trademark owner some mechanism for remedying the situation. Given that there exists an active complaint redressal mechanism when trademarks are used in ad text and display URLs, or in other words, when the “use” is visible, Google could incorporate a similar mechanism with respect to the use of trademarks as keywords or for cases when the “use” is invisible. Not only would this create a positive environment for the trademark owners, but it would also be a step further in abiding by the ‘local trademark laws’ as mentioned in the trademark policy relating to Google Ads. Alternatively, Google could delineate more clearly the difference between paid and organic results by, for instance, using different fonts, more discernible shading, or simply a label that is more understandable.

Nonetheless, the Court’s ruling could not have arrived at a better time. The interim ruling prohibiting both Booking.com and Google from using the MakeMyTrip mark on the advertisements platform until the next hearing date (on July 27, 2022) begins to solve a gap in the Indian technology law that has existed for the last decade. The final order could be the start of an interesting domino effect.

[1] J Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4^th edn, 2006) [hereinafter, McCarthy].

[2] Jonathan Moskin, Virtual Trade mark Use: The Parallel World of Keyword Advertising (vol 98, Trademark Reporter, 2008) 876.)

[3] James Mellor and others, Kerly’s Law of TradeMarks and Trade Names (15^th edn, Sweet and Maxwell 2018) 628, 629.

[4] McCarthy, supra note 1.

[5] American Airlines Inc v Google Inc No 4-2007CV-00487-A.

Dynamic Injunction- An effective remedy for IPR infringement?

By Anjana Raghunath

In this post, Anjana Raghunath, a third year student at West Bengal National University of Juridical Sciences has discussed the concept of ‘Dynamic Injunction’ as a remedy to widespread Intellectual Property Rights infringements, given the rise of online platforms. The author provides reasoned recommendations on how to make dynamic injunctions an effective remedy by carrying out a comparative analysis of different jurisdictions.

The rise of online platforms and e-commerce sites has made business easier by facilitating the selling of commodities. However, the ease of doing business on the internet has also allowed unscrupulous parties to sell counterfeit products and infringe the trademarks and copyrights of legitimate intellectual property right (“IPR”) holders. While Indian Courts have passed orders to prevent IPR infringements on renowned platforms such as Amazon and Ebay in the last couple of years, they have had to grapple with the complex issue of developing remedies suitable to the internet in order to provide effective relief to IPR holders.

Conventional remedies requiring intermediaries to take down existing illegal content on their platforms are ineffective in protecting the interests of IPR holders because infringers can put up identical infringing content repeatedly on these platforms. This would require the intermediaries to frequently approach the Courts for an injunction, making the remedy futile and illusory. IPR holders therefore claim the only effective way to protect them is to oblige intermediaries to monitor and remove all infringing content on their platforms. However, Courts across the world, including India, have refrained from requiring online platforms to remove infringing content on their platform. This is because online intermediaries are seen as mere facilitators of content who only have a general obligation to monitor. To ask such intermediaries to remove content after adjudicating upon whether it is infringing content or not would constitute an unreasonable restriction on the freedom to do business on the internet.

To resolve this impasse, dynamic injunctions have been developed by courts as an innovative remedy. Dynamic injunctions refer to an injunction order which not only requires the intermediary to take down existing illegal content, (as is traditionally the scope of an injunction) but also all “alphanumeric/re-directs/mirror variations” of the infringing website created exclusively for the purpose of evading the court order.

In this blog, I shall first, provide a brief overview of the development of dynamic injunctions as a remedy to IPR infringement across jurisdictions and in India. Second, I shall discuss two issues regarding dynamic injunctions, namely whether IPR holders must approach Courts to get the injunction order modified and who should ideally bear the burden of identifying infringing content. These are questions which must be resolved by Indian courts to make dynamic injunctions a truly effective remedy.

Development of Dynamic Injunctions as a Remedy to IPR Infringement across Jurisdictions

The Court of Justice of the European Union(“CJEU”) in the case of L’oreal v. Ebay first evolved dynamic injunctions as a solution to this problem of injunction orders being rendered futile due to the ease of further infringements. In this case, the Court dealt with infringements of L’oreal’s trademark on Ebay. The Court ordered Ebay “to take measures which contribute not only to bringing to an end to infringement of those rights by users of that marketplace, but also to prevent further infringements of that kind.”

Similar injunction orders requiring intermediaries to not only take down existing illegal content but also further identical infringing content on their platforms have been passed by Courts in UK and Singapore while dealing with widespread copyright and trademark infringement on the internet.

In India, the concept of dynamic injunctions was specifically referred to and adopted in the case of UTV Software Communication Ltd. In this case, UTV approached the Court for an injunction order to prevent websites such as FMovies from displaying their copyrighted content on their platforms. The Court passed an injunction order requiring ISPs to not only disable access to the existing infringing websites but also any alphanumeric/re-directs/mirror variations” of the infringing website. The judgement in UTV has been subsequently followed in a number of judgements.

Indian courts have, however, not dealt with certain pertinent issues which arise when a dynamic injunction order is passed, which I will now address.

First, does the IPR holder need to approach the court again to modify the injunction order so that it can cover future infringements?
Second, who should bear the burden of identifying the further infringements, the IPR holder or the intermediary?

These two issues are addressed below.

Should IPR Holders Approach Courts to Get Injunction Orders Modified against Further Infringements

This issue has spawned two contrasting approaches across different jurisdictions, as well as in Indian Courts.

The Federal Court of Australia in Roadshow Films Pty Limited v Telstra Corporation Ltd held that the injunction order cannot directly apply to future infringements which may take place. The IPR holder would need to get the injunction order modified by filing an application before the Court to apply to mirror websites which might be created in the future. The rationale used by the Court in this case was that the IPR holders and the intermediaries cannot be entrusted with the duty of adjudicating whether a site is a mirror website or not.

In India, some sympathy has been shown towards this Australian approach in the UTV Software case. In this case, the Court held that the High Court could not be repeatedly approached to deal with each new infringing mirror website. However, it still did not allow the existing injunction order to deal with mirror websites. The Court adopted a compromise formula. Under this approach, the IPR Holder would have to file an affidavit after identifying the mirror websites before the Registrar of the High Court. The Registrar, upon satisfaction, that the websites are mirror websites which have substantially similar content as the injuncted website, would modify the Court Order to deal with these new websites.

In Indian High Courts, Registrars are not merely administrative officers, but also responsible for a number of judicial functions as well, especially to monitor the compliance with the Court’s orders. Thus, while the Court is not dealing with the issue, the Registrar must be approached to modify the injunction order. This approach in UTV has been approved and followed in some other judgements by the Delhi High Court as well, like Novi Digital Entertainment Pvt. Ltd v Five Desi and HT Media Limited case.

A contrasting approach, however, has been adopted by courts in UK, for instance in Twentieth Century Fox Film Corporation and Others v. British Telecommunications Plc and in Singapore in the case of Disney Enterprises and Ors v M1 limited and Ors. In these jurisdictions, the injunction orders did not require any further modifications to deal with mirror websites. The order itself covered future infringements which may be carried on by mirror websites and the intermediaries were directed to take down such content. The Courts held that requiring IPR holders to repeatedly approach the Court would defeat the very purpose of a dynamic injunction. In India too, a similar mechanism has been followed, in a handful of cases, namely, Living Media v. Aabtak Channel, and Sirona Hygiene v Parulben Navnath Chothani Trading as Shiv Enterprises. In these cases, the Court directed the intermediaries to take down existing infringing websites as well as any identical infringing website which might come up in the future. These cases, however, did not notice or discuss the UTV judgement and provided no rationale for deviating from the dictum in UTV of approaching the Registrar to get the injunction order modified before it could apply to mirror websites.

Thus, there exists contradictory jurisprudence regarding the need to approach the Registrar to get the injunction modified. The solution of approaching the Joint Registrar serves the purpose of saving judicial time as the High Court does not need to deal with the same matter over and over again. However, the policy rationale of saving IPR holders the burden of approaching the Court repeatedly for the same infringement is overlooked under this solution; This is because even obtaining an order from the Joint Registrar is a time-consuming process given the pressure on Courts. Additionally, the infringing content in mirror websites will still be accessible for a significant period (until the Registrar is satisfied that there is a mirror website) which makes the injunction order ineffective. Thus, following the Australian approach defeats the very purpose of a dynamic injunction – to prevent the IPR holder from having to repeatedly approach the Courts with respect to the same infringing content. It is therefore suggested that the need to approach the Registrar should be done away with.

The failsafe in this scenario is that, if the IPR holder or the intermediary act in bad faith by taking down content which are not mirror websites, the Court can always use its power under its contempt jurisdiction to take exemplary action to deter further action in bad faith. The Court should allow the domain holder whose content may be blocked under a particular injunction to be able to approach it under its contempt jurisdiction. The Court would penalize the intermediary and the IPR holder if it finds that the content taken down by the intermediary was independently generated and was not identical to the specific infringing content against which the Court had granted the injunction. This should act as an effective deterrent to prevent the misuse of the Court’s dynamic injunction.

Who should bear the burden of identifying infringing content?

Since dynamic injunctions require the taking down of mirror websites, the question that needs to be answered is – who should identify the infringing content? Websites, IPR holder or the intermediary which hosts the particular content?

The CJEU in Scarlet Extended SA v Société belge des auteurs, compositeurs et éditeurs, SCRL (SABAM) has held that the IPR holder has the burden of identification of content, not the intermediary. Here, the Court held that an injunction order which would place the burden of identification of content on the intermediary, would, in effect create an obligation on the intermediary to monitor their platform for mirror websites. This, according to the Court, was an unreasonable interference in the right of the intermediary to carry out its business.

However Courts in France have held that since the intermediary has the best technical capacity to identify mirror websites, the burden of identifying mirror websites must be placed on the intermediary, and not the IPR holder. The French Supreme Court held that an intermediary could not be burdened with the duty to monitor a platform for all kinds of illegal content as it would constitute a general monitoring obligation and an unreasonable restriction on intermediaries. The Supreme Court added that intermediaries could be provided with a specific monitoring obligation of identification of mirror websites as this would not need the intermediary to adjudicate complex issues of IP infringement. Instead, it merely requires intermediaries to use their technical knowhow to see if a site has similar content as an injuncted websites. A similar approach has been taken by the Polish Courts which require the intermediary platform to monitor its contents once a month for the identified mirror websites.

Indian Courts, have followed the approach of the CJEU, by placing the burden of identification on the IPR holder, either by requiring the IPR holder to file an affidavit before the Joint Registrar (see UTV) or by notifying the intermediary directly about the mirror websites. (Living Media) This position has been adopted by Indian Courts without sufficient consideration given to the matter. It fails to take into account the developments in technology on part of the intermediaries. Platforms such as YouTube, Google and Facebook monitor their platforms in any case for illegal content. Since technological knowhow is available to the intermediaries, a Court is predisposed to order these platforms to use technology to monitor for a specific identified content and take it down. Placing the burden on IPR holders is unfair because they do not have the technical prowess of the intermediaries, thus making it far more difficult and inefficient for them to develop the means of monitoring.

Hence, as the Polish and French Courts decreed, the burden should be placed on the party which can most easily solve the problem, i.e., the intermediaries. The aforementioned approach has been criticized for preventing the growth of new intermediary platforms, because monitoring can be prohibitively expensive. While there are no perfect solutions to the problem, one way of addressing the problem would be by requiring the IPR holder to bear the cost of the monitoring technology, if the platforms do not possess the same. Such a requirement would enable the smaller intermediary platforms to grow and develop, while also weeding out IPR infringing content. When weighed against having to go to Court time and time again, this solution appears relatively more prudent. Additionally, if the IPR holder cannot afford to bear such expenses because the IPR itself is not worth a lot, then it would be a waste of resources under an utilitarian framework to make the intermediary develop expensive technology to combat it.

Conclusion

Courts in India have done a commendable job in applying dynamic injunctions as an innovative way to deal with the issue of IP infringements online. However, there is an urgent need for further clarity with respect to these teething issues to make it a more effective remedy to protect IPR on the internet. The cost of weeding out infringing content should be decided after the involved parties bargain or negotiate terms that will accurately reflect the full costs and available resources. Such an approach can result in the most efficient outcome. Additionally, it is hoped that the Court would solidify India’s position on how injunctions must be passed to take down infringing content on mirror websites in a cost and time-efficient manner. Hopefully, the Courts will provide guidance and insight on these issues soon.

The Russia-Ukraine War and The Emerging Challenges with Enforcement of International IP Law

By Sonal Lalwani

In this blogpost, Sonal Lalwani, a fourth year student at National Law University Jodhpur, explores the implications of retaliatory decrees relating to Intellectual Property Rights, issued by Russia as a response to economic sanctions by countries post the Ukraine invasion. She traces the use of similar measures since World War I, along with also discussing contemporary cases of implementation of these decrees by Russian judicial and executive authorities. She analyses these actions on the touchstone of Russia’s international obligations.

“The supreme art of war is to subdue the enemy without fighting” Sun Tzu

On 24^th February, 2022 the Eastern European nation of Ukraine was attacked by its powerful neighbor Russia, an attempt that has since then been referred to as the “Russian Invasion of Ukraine”. The Russian government has chosen to label its unprovoked military invasion as a “Special Military Operation” undertaken for the freedom of the Russian speaking population residing in the territorially disputed Donbas region of Ukraine. Russian President Vladimir Putin has further termed this entire operation as a process leading to large scale criticism of the powerful leader all around the globe.

Russia’s unprovoked attack on Ukraine was met with unprecedented global hostility in the form of several economic and legal sanctions which has caused huge trouble for the former Soviet power. Many geo-political experts have also forewarned that Ukraine’s invasion might be the turning point leading to the next phase of the Cold War between the US and its allies and the Russian Federation.

Russia has further become the most-sanctioned country in the world surpassing several previous contenders for the position such as Venezuela, Iran and North Korea. The result is that Russia is facing both a shortage of currency and very high interests which is not sustainable for trade in any part of the world. Multinational companies such as Samsung, Apple, Netflix, Mercedes-Benz, H & M, Airbnb, Nike and several others have ceased their operations in Russia on humanitarian grounds closing up the markets in Russia.

In a recent essay, the former RBI governor Raghuram Rajan commenting on the economic sanctions placed on Russia wrote that;

“When fully unleashed, sanctions, too, are weapons of mass destruction. They may not topple buildings or collapse bridges, but they destroy firms, financial institutions, livelihoods, and even lives. Like military WMDs (weapons of mass destruction), they inflict pain indiscriminately, striking both the culpable and the innocent. And if they are used too widely, they could reverse the process of globalization that has allowed the modern world to prosper.”

The best example of this can be sanctions on Russia impacting the supply of cheap wheat to vulnerable countries in Africa and the Middle East. Russia is the world’s second-largest wheat producer and produces 85.9 million metric tons of wheat every year. The break-in supply chain has left wheat prices soaring across the world and has forced several of these resource deficient countries to direct the funds they could have utilised on Human Resource Development to purchase higher priced wheat to feed their growing populations.

The Russian Decree

These sanctions have not been just restricted to physical trade but have also impacted ancillary trade practices such as the protection of Intellectual Property. In retaliation to the exiting of over 400 multinational global brands from Russia; in early March of 2022, the Russian Ministry of Economic Development issued a decree stating that Russian companies are no longer bound to compensate owners of patents, utility models and industrial designs from “unfriendly” countries.

The list majorly includes the name of countries opposing Russia in the United Nations Security Council but also, surprisingly includes the name of certain countries that had enjoyed a strong economic relationship with Russia before Ukraine’s invasion, such as the UK, Switzerland and Monaco. Thus, Russia’s retaliatory decree is an unprecedented economic warfare strategy for today’s globalized world where Intellectual Property enjoys a special protection regardless of the territoriality and nationality of the Intellectual Property under the principles of the TRIPS agreement. The decree essentially legitimizes piracy and reproduction of Intellectually Property without paying the necessary remuneration.

The Trading with the Enemy Act, 1917

Russia’s move though surprising was not completely unprovoked considering Russia’s seclusion from a large portion of the global economy. It is even more astonishing to note that Russia is not the first country to adopt such a measure to protect its interests. The United States of America adopted a similar measure against Germany and Imperial Japan during World War – I when it introduced The Trading with the Enemy Act in 1917(‘TWEA’). The purpose behind this act was to prevent the accrual of any economic benefit to persons within enemy territory, weaken the enemy country economically, if possible, and prevent any improvement of its position.

The Act allowed the President of the United States to restrict any and all forms of trade with the enemy in times of war including authorised licensing of trademarks and patents and payment of royalty to copyright holders. The Act also explicitly restrained infringement against any Intellectual Property of the Enemy.

Section 10 of the TWEA permitted US firms to infringe enemy-owned patents if they helped the war effort. The act thus allowed U.S. firms to license German chemical patents in an age when German firms dominated the field of synthetic chemistry and were global leaders in the Pharmaceutical industry. An interesting example of this would be the infringement of Salvarsan, a German patent by the U.S. government. The drug was essential to the health and well-being of the U.S. Army as it was then the most effective treatment for syphilis, a Sexually Transferrable Disease (STD) that owes its origin to the sexual behaviour of the German, French and American army during World War – I.

One week before the Armistice at Compiègne on November 11, 1918, Congress amended the TWEA to confiscate all enemy-owned patents. By February 1919, German-owned patents were systematically licensed to US firms. The German state further in accordance with The Treaty of Versailles had to transfer the trademark of the popular pain-relieving medicine “Aspirin” to the US, France, Russia and Britain as part of its war reparations. Majority of the wartime sales of Aspirin[1] occurred in Germany before Bayer AG had transferred its manufacturing plant to the U.S. and accounted for around $ 25 million in profits. Some 2 million pounds equivalent, to nearly 3 billion five-grain tablets had been sold during the war making “Aspirin” one of the most profitable drugs of that period.[2] Thus, the Act acted as a boon for the U.S. Pharmaceutical industry which had without license copied patented formulas worth $ 8 million by the end of the war and emerged as a stiff competitor to the German Pharmaceutical industry.

IP enforcement and Russia

The implementation of the Russian government’s new decree translates into a similar scenario for countries that have been listed as Russia’s “unfriendly” global neighbours. There are chances these companies might see a repeat of what happened to Germany in 1917. It has also been speculated that the Russian government might grant trademarks belonging to these foreign companies to Russian oligarchs as a form of retaliation against multinational companies exiting the country.

This move would thus, allow Russian businesses to utilise famous trademarks and patents registered in these countries without making adequate payment for the same. The products and services of several global brands might be duplicated by Russian imitators against their consent violating both the economic and moral rights of the original owner of the Intellectual Property. This might be already true as demonstrated in what the world is now famously calling the “Peppa Pig” case.

The Russian courts had in fact already started implementing retaliatory Intellectual Property infringement policies against “unfriendly” countries before the Russian Ministry of Economic Development came out with a decree to enforce the same. The following case excellently demonstrates the Intellectual Property retaliatory practices of the Russian judicial and executive bodies.

On 03^rd March, 2022 the Arbitration Court of the Kirov Region of Russia published a ruling in the case of Entertainment One UK Ltd. V. Ivan Vladimirovich Kozhevnikov that shocked IP enthusiasts around the world. The court retained both trademark and copyright infringement claims against Entertainment One UK Ltd. despite there being an existing claim worth 40, 000 Rubles filed for infringement of drawings of “Peppa Pig” and “Daddy Pig” two cartoon characters owned by Entertainment One UK Ltd., a subsidiary of the US toy giant Hasbio Incorporation. Entertainment One UK Ltd. had two trademarks No. 1212958 and No. 1224441 registered to protect the above-mentioned cartoon characters.

The company pleaded that “According to Article 62 (Part 3) of the Constitution of the Russian Federation, foreign citizens and stateless persons in the Russian Federation enjoy the rights and bear obligations on an equal basis with citizens of the Russian Federation, except in cases established by federal law or an international treaty of the Russian Federation.” Judge Andrei Pavlovich Slavinsky in response to this stated that the “restrictive” political and economic sanctions levied on Russia and its officials for their military invasion of Ukraine allow it to refuse the infringement claims brought by Entertainment One UK Ltd. Judge Slavinsky described the case as an “abuse of right” considering similar American and British sanctions imposed on Russia and thereby, dismissed the case.

The “Peppa Pig” case is not the sole example of encroachment of well-known trademarks in Russia since the Russia – Ukraine war began. Two weeks after Judge Slavinsky’s judgement, the Federal Service for Intellectual Property in Russia (Rospatent) received applications for registration of the fast food chain McDonald’s imitator brand called “Uncle Vanya”. The logo for the brand includes McDonald’s famous golden arches, but rotated 90 degrees and formed into the Russian letter “В,” which sounds like the English “V” for “Vanya.” The same applicant also, filed trademark applications for “Starbucks”, “Makdonalds,” and “Makdak” before the trademark registry. Similar applications have also been filed for other famous trademarks such as Instagram, IKEA, Chanel and Dior by several applicants across the Russian Federation.

These applications would usually fall neatly within the realm of trademark squatting i.e., the practice of third parties filing trademark applications for another company’s well-known marks, with the aim of either extorting the real brand owner or otherwise piggybacking on the appeal of that brand for its own gain and/or bad faith trademark filing. Such applications are usually barred from registration by the relevant trademark office, including Rospatent but, the same would not hold true now considering Russia’s retaliatory move to abandon the TRIPS agreement.

The TRIPS Agreement

The TWEA is commonly referred to as the predecessor of Article 31 of the TRIPS Agreement. The provision allows parties to the agreement to partake in “compulsory licensing”. This means that third parties are now allowed to produce a patented product without the consent of the right holder. Though the provision does away with the need for permission it does not provide any leeway in regards to the obligation on the part of the countries to pay the right holder their due compensation. The Russian Decree is special in that regard, because it does away with the requirement on part of Russia to pay the original creator of an Intellectual Property any amount of compensation.

Russia’s Most Favoured Nation (MFN) status is also under trouble as a part of this economic warfare. The Most Favoured Nation (MFN) principle of the World Trade Organisation (WTO) obliges a country to extend the same trading terms to every trading partner. The G7, the European Union, and NATO all have decided to revoke Russia’s Most Favoured Nation (MFN) status leaving the largest country in the world on the list of rogue nations such as North Korea, Syria and Afghanistan.

Conclusion

The following developments give a glimpse of the bleak future awaiting Russia in the global trading community. Investors might become wary of investing in the country because of their lack of trust in its leadership, and Russia might get cut-off from the rest of the world as the situation further develops. The revocation of Russia’s Most Favoured Nation (MFN) status would send a strong signal that the U.S. and NATO do not appreciate Russia as a viable business partner and are not receptive to any form of future trading between the West and Russia. This move would formally allow the U.S. and its allies to increase import tariffs or impose quotas on Russian goods, or even ban them, and to restrict services out of the country. They could also overlook Russian intellectual property rights in a similar manner that Russia has decided to do with them. The War has brought about one of the biggest turbulences in IP enforcement in the 21^st century and has shaken the pillars that support global trade. The end of this war would leave a much different world than what we live in now, and the chances are that the coming years would transform the planet into a more segregated place than it was in the previous decades.

[1]J. McTavish, ‘What’s in a Name? Aspirin and the American Medical Association’, (1987) 61(3) Bulletin of the History of Medicine 343.

[2]Supra note 1.

Trademark infringement in the Metaverse: An Indian Perspective

By Sumedha Tewari

In this post, Sumedha Tewari, a fourth year student at National Law University Jodhpur, discuses the infringement of trademarks in the metaverse under Indian IPE regime, and possible defenses like fair use to the same. For this, she draws parallels to IP litigation that has taken place in the AR/VR context.

Intellectual Property branding through trademark, advertising and copyright is fairly used to expand a brand. With the advent of metaverse, a novel and potential branding opportunity has appeared. Metaverse is an online virtual reality world created by Meta Inc (Previously Facebook) where the users can choose to have real life experiences and create a parallel virtual self. This includes meeting friends, doing business, buying/selling goods and services and other social activities. Inevitably, brands all around the world have started capitalizing this opportunity through trademark registrations in the metaverse, with the US Trademark registry starting to register some of them solely in the metaverse.

With these gates opened, it is also likely that there will soon be a flooding of metaverse centric infringement lawsuits against individuals and companies who allegedly use the marks illegally in the virtual reality. Recently, in Hermes v. Mason Rothschild, Hermes, a very famous luxury fashion brand, filed a trademark infringement lawsuit against Rothschild alleging the latter’s illegal use of Hermes’ trademark in its non-fungible token and its dilution. It also alleged that MetaBirkins is stealing the goodwill of Hermes to promote its own NFTs.

Metaverse is not a novel concept and has been discussed in the past as well. Therefore, even the legal issues that come along with it are not novel. For example, video games such as Call of Duty have been sued for trademark infringement for their use of Humvee military vehicles in their video games to give a more life-like experience. The court here applied the “Rogers test” stipulated in the case of Rogers v. Grimaldi which creates an exception for the use of trademark in virtual reality if it is done for artistic purposes and doesn’t mislead the customers.

With reference to the trademark infringement in metaverse, India has not explicitly adopted any test similar to Rogers test, but Section 30 of the Trademark Act, 1980 [‘TM Act’] protects fair use in trademark infringement. Since there have been no trademark infringement claims in the metaverse in India until now, the jurisprudence regarding the application of Section 30 is also not certain. This article will discuss the potential application of this concept in India through the lens of the Indian Trademark Act.

Trademark infringement and exceptions in India

Section 29 of the TM Act provides for infringement of trademarks due to similarity and identical uses of a registered trademark. Section 30, on the other hand, provides an affirmative defense against a trademark infringement claim. In order to get this defense, the use must be a bona fide one [Section 30(1)(a)], and not detrimental to the distinctiveness of an earlier trademark.

There are two types of fair use available for defense, i.e., nominative fair use and descriptive fair use. Descriptive fair use under Section 30(2)a of the TM Act provides a defense when the alleged unauthorized use is for indicating the quality, purpose and origin of the product in the process of rendering services or goods. Section 30(2)d talks about nominative fair use which relates to use of marks when it is ‘reasonably necessary’ to indicate that the goods are compatible with the trademarked goods, or to criticize, comment or create a parody of the registered trademark.

Fair use and Metaverse in India

To conceptually analyze the Indian scenario, an alternative concept which has been litigated upon in India needs to be chosen. Video games and AR/VR serve as a very helpful guide to potentially contribute to metaverse-centric issues as well. This is because both the formats provide an AR/VR experience to the users using similar technology. Metaverse has taken a more nuanced approach to VR by allowing the users to socialize, commercialize and live a life very similar to the real world, unlike video games that provide a narrower approach. Therefore, since metaverse in itself has seen no litigation in India, the legal scenario can be analyzed with the help of Intellectual property laws that have been used with respect to video games.

Ideally, all video games can claim the exception from infringement under Section 30(1)(b) which states that it will not amount to infringement if the use “is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.” Section 30 takes assistance of factors such as nature of use, consumer confusion, intention of association, mode of use in ascertaining whether any infringement claim falls under the exception of a descriptive/nominative fair use.

Unlike US, India’s trademark law does not expressly protect free speech and expression in trademark infringement cases. The closest India has come to resolving the issue of fair use in AR/VR is in the case of Tata sons v. Greenpeace international where the defendants used the Tata’s trademark in their video game Pacman. The court here applied a very similar test to Rogers test and stated that commercial or communicative intent of the use needs to be considered before deciding on infringement. The court also dwelt upon the relation between free speech and trademark law. Since in this game the use of TM was to criticize Tata, it did not amount to infringement and no injunction was granted to the plaintiffs.

Metaverse is slightly different from video games in the VR world because the elements produced in it are not only for making the experience life-like, but also for providing an opportunity to the users to have an alternate cyber life. From lands to NFTs, people have been investing heavily in the metaverse. Brands like Nike and McDonalds have filed their trademarks for metaverse to enable protection from infringement and dilution and to ‘open their stores’ in the metaverse. This is because there is a high probability of their ‘commercial use’.

Therefore, the defense of Rogers test which was also similarly applied in India for video games cannot be sustained in metaverse because the element of ‘commercial use’ steps in. As Hermes also claimed, the use of its trademarks in Metabirkins NFTs was done for commercial purpose which should amount to infringement. Usage of TMs in the metaverse can no longer be protected through free speech and expression defense, even in India where Rogers test is used.

Importance of the Trademark’s presence in the Metaverse

A company’s presence in the metaverse can lead to two different conclusions w.r.t Section 30. The application of Rogers test and precedent set in Tata Sons may still work for trademarks that are used only in physical goods and services and have no online presence whatsoever. This is because it will be easier to establish no ‘commercial use’ in such matters. However, it will become difficult to apply this exception to companies that are getting their marks registered in the metaverse itself. Therefore, increasing presence of commerce in the metaverse means that virtually using a registered mark without permission may no longer amount to ‘honest use’ in the virtual world.

On the other hand, while the Rogers test may not help in some cases, other nominative fair use exceptions may still stand for companies that have a metaverse presence. For e.g., the use of a trademark to indicate its quality, purpose or origin in the metaverse can still avail the defense, if the trademark also has a virtual commercial presence just like the physical world. Similarly, use that is ‘reasonably necessary’ under Section 30(2)a can also be availed. Therefore, in some cases an honest use can be availed if the company has a presence online, while in other cases, the test in Tata sons can be available if the company does not have such presence.

Conclusion

This discussion highlights an important practice to be undertaken in India i.e. registering trademarks in the metaverse. Big companies like Puma, Adidas, Louis Vuitton have started registering their marks in the metaverse and the US registry is seeing plethora of applications on a daily basis now. This will allow them to protect their brands in the metaverse. India still stands behind in such registrations. For Indian companies or international companies having Indian presence, two probable scenarios occur. First, their absence from the metaverse can allow the infringers to use the Roger’s test to claim defense. Secondly, their presence may allow users to claim the nominative fair use defense.

In the current environment, companies should be proactive to not allow the Roger’s test to be used as a defense against infringement in the metaverse. This is because it is a borrowed principle from another jurisdiction and it has a subjective application in India. Such subjectiveness may or may not fit well in the virtual world. The defense under Section 30 on the other hand, is still a valid one which does not violate the rights of a trademark. To ensure protection from defamation, unauthorized use etc., Indian brands should proactively start registering their marks in the metaverse and make use of this opportunity to grow their brand value.

PhonePe – PostPe Trademark Tussle: Trademark Infringement of Composite Marks

By Jyotishka Guha

In this post, Jyotishka Guha, a final year student at West Bengal National University of Juridical Sciences, Kolkata discusses the law on infringment of only a part of a trademark in the context of the ongoing BharatPe and PhonePe dispute, and examines PhonePe’s position.

The online payment applications BharatPe and PhonePe have once again started a trademark tussle over the common word ‘Pe’. This time PhonePe has filed a commercial lawsuit in the Delhi High Court against BharatPe, alleging violation of its trademark and claiming exclusivity on the suffix ‘Pe’. Recently, BharatPe launched a “buy now, pay later” app called PostPe. The Bombay High Court has prima facie made an observation that there is no case of infringement, and allowed the plaintiff to withdraw the petition. PhonePe has filed a fresh suit which is still pending before the court.

This case raises an important question about the infringement of trademark when only a part of the mark is similar. In this article, the author would discuss the law in this regard and also give his own opinion on whether the present plea of the plaintiff, PhonePe would succeed in this following matter.

Satan Shoes – A Ritual by Nike? Its implications for India

by Nidhi Singh and Siri Harish

Here, Siri Harish and Nidhi Singh, first year students from NLUJ discuss the recent lawsuit of Nike and MSCHF. The suit which was on the MSCHF x Lil Nas X ‘Satan’ Nikes, touches on trademark infringement and dilution, which the authors analyse to draw lessons for the Indian context.

In a recent lawsuit concerning Nike, and MSCHF, an art collective based in Brooklyn, the issues of the first sale doctrine, trademark infringement and dilution came to light again. MSCHF, on March 29, released a collection of “Satan Shoes”, which were modified versions of Nike’s Air Max 97 sneakers. Only 666 pieces – of which 665 were immediately sold – of MSCHF x Lil Nas X ‘Satan’ Nikes were made available and were priced at $1,018. The conventional sneakers were allegedly materially altered by printing the biblical verse “Luke 10:18”, which says, “I saw Satan fall like lightning from heaven”. The bronze pentagram charm attached to the shoe’s tongue, the printed biblical verse, and a drop of human blood donated by the studio’s members befitted the Satan-themed drop.

Overlapping Businesses and their effect on Trademark Rights: Lessons from the Sleekcraft Test

by Shruti Mishra and Prakarsh K

In this post Shruti and Prakarsh, students at NLIU Bhopal, discuss the issue of overlapping trademarks as large businesses today get increasingly diverse. They forward the Sleekcraft Test, which looks into the ‘possibility of a holder of using the mark for a future related business’, as a solution in resolving these disputes.

In 1863, the USA witnessed the establishment of the ‘Apple Bank”, which has since then become one of the most prominent and powerful banks in the country. Much later, the well-known software and electronics company “Apple” also emerged in the market. Being a common law jurisdiction, USA follows the ‘first to use’ rule instead of ‘first to file’ rule when it comes to trademark. The rule (mentioned under §7 (c)(1) of the US Trademark Act) states that if someone tries to register a trademark and some other person has been using it actively for a while, then the priority will be given to the person who first started using it. This meant that Apple Bank could have sued Apple for infringement. However, it was improbable that consumers would confuse between the electronics company and a bank. So, both entities went about conducting business in their own fields. Lately however, Apple launched a financial service called ‘Apple Pay’, which could create confusion, and could also possibly lead to a lawsuit between the entities.

Trade Secrets: The Forgotten Intellectual Property Right

by Priyanshi Sarin

In this post Priyanshi Sarin, a 4th year student from Symbiosis Law School Pune comments on the problems existing due to lack of Trade Secrets jurisprudence in India.

Screen Shot 2020-09-02 at 6.12.31 AM — *Accessed from here*

The subject matter of trade secret overlaps with copyright law, particularly in instances wherein courts have protected “customer lists” under the garb of literary works, which is also deemed as a trade secret by some jurisdictions. Nonetheless, in the Indian context, trade secret jurisprudence has a long way to go. The author believes so because the Copyright Act protects only “expressions” and not potential ideas which are capable of transforming into IPR. Moreover, the Patent Act extends its protection to innovations which have to be “disclosed” before the patent officer and excludes mathematical algorithms and computer programmes from its purview. Thus, potential ideas as well as algorithms can be dealt under the purview of Trade secret which is a formula, process, device or other business information that is kept confidential to maintain an advantage over the competitors. The “idea” seeks protection under the broad umbrella of “business information” and majorly includes business strategies, blueprints etc. which give the company a competitive edge over others.

Continue reading “Trade Secrets: The Forgotten Intellectual Property Right”

Booking.com : Final but Fallible

By Mayur Kulkarni and Vishwa Patel

Screen Shot 2020-08-14 at 5.56.27 PM — *Image accessed from here*

In this post Mayur & Vishwa, 2nd year students of law from Gujarat National Law University analyse the trademark registrability of generic domain names.

The Supreme Court of the United States (Court) in United States Patent and Trademark Office (PTO) v. Booking.com(‘Booking.com case’) was called upon to answer whether a generic domain name was eligible for trademark registration, to which the Court answered in the affirmative with an overwhelming 8-1 majority. This post seeks to analyse the fallacy in the reasoning adopted for granting trademark protection to generic domain names both in India and the United States of America.

The Court was called upon to decide this matter as the PTO refused to grant trademark registration to Booking.com, a travel-registration website, on the ground that ‘Booking.com’ was a generic name for online hotel-reservation services and such generic terms were ineligible for registration. Continue reading “Booking.com : Final but Fallible”