It is germane for the trademark lawyers in Chandigarh to have a sound foundation of doctrines, principles, and concepts revolving around trademark litigation. Below mentioned concepts will give an insight to trademark lawyers and litigants to better understand the basics of trademark law:
(A) Doctrine of Territoriality: It states that intellectual property rights do not extend beyond the area of the sovereign state that originally granted them. It supports the idea that a product’s or service’s reputation is restricted to the territory of the country in which the trademark was given well-known trademark status. The important judgments on the Territoriality Doctrine are:
- The Hon’ble Supreme Court of India in R. Dongre & Ors. vs. Whirlpool Corporation & Anr. (1996) 5 SCC 714 recognized the principle of trans-border reputation and goodwill of a corporation. With the passage of time, the views of the Courts have changed regarding trans-border reputation.
- The Intellectual Property Appellate Board (IPAB), in Jones Investment Co vs. Vishnupriya Hosiery Mills, order 24/2014 had decided against the idea of prohibiting Indian enterprises from utilizing trademarks even if the MNCs have no plans to sell their products in India. IPAB relied on the Apex court decision in Milmet Oftho Industries and Ors vs. Allergan Inc. (2004) 12 SCC624 wherein it was held that the multinational companies who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark.
(B) Doctrine of Universality: A trademark gets universal recognition once it is acknowledged or registered in one country. It is an exception to the Territoriality Doctrine and favors trans-border repute. This means that if a trademark is well-known in Canada, it will have the same status in India, or any other country for that matter, with respect to its goods or services.
- The Hon’ble Supreme Court in Milmet Oftho Industries and Ors vs. Allergan Inc. (2004) 12 SCC624 held that the mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market.
(C) Doctrine of Territoriality vs. Universality: The recent trend of the judgments of the Global Courts are tilted towards Territoriality and the applicability of Universality is becoming limited. The Hon’ble Apex Court of India in Toyota Jidosha Kabushiki Kaisha vs. M/S Prius Auto Industries Limited held that if goodwill or reputation in the particular jurisdiction (in India) is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off that it had brought against the defendants in the Delhi High Court.
(D) Prior Use: Prior use is a difficult concept to understand as diverse trademark laws across the globe are regulated differently in each country. Section 34 of the Indian Trade Mark Act recognizes the doctrine of prior use in India. Trademark lawyers must be able to apply the concept of prior use properly.
In M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited, CS (OS) 900/2002, the Hon’ble High Court of Delhi discussed the concept prior use in detail and held that even if the prior user has not registered the trademark, the prior user will get priority over the later user in the matters of the trademark. The Hon’ble High Court of Delhi in Peps Industries Private Limited vs. Kurlon Limited, CS (COMM) 174/2019 with IA 4871/2019, revisited the scope of section 34 in detail with other provisions of Trademark Law, the relevant passage is reproduced below:
“(iii) The right of the registered owner of the trademark is not higher in order to right of the person using an identical trademark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trademark prior to the user of the trademark by the registered owner. The user by the other party has to be continuous, distinct from the user which is separate, isolated, or disjointed and requires the commercially continuous use of the mark in relation to the same goods or services. A defendant seeking to set up a defense of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute use of the mark.”
(E) Doctrine of Exhaustion: Once a lawful transaction of sale has occurred, the owner of a given good loses power over additional sales of his goods. It has applicability on National, Regional & International jurisdictions.
- The doctrine of International exhaustion is applied under an assumption that the entire world is one market or country, and that goods sold in any area of that market or country exhaust the trademark owner’s rights to those items.
- The doctrine of Regional exhaustion: when products bearing a trademark are first sold by or with the owner’s consent in any country that is a part of a specified region, the owner cannot restrict subsequent sales in his own country or any other country that is also a part of that region. Regional exhaustion has been approved by the European Union.
- The doctrine of National exhaustion prescribes that once a product has been sold in the domestic market for the first time by or with the consent of the owner for a consideration, he loses control over any subsequent sale of the same in the domestic market, in the sense that he cannot prevent the subsequent sale of the said product, nor can he claim any profit arising from a subsequent sale, nor can he sue for trademark infringement. The logic behind this doctrine is that because the owner has already profited from the first sale, he cannot continue to profit from a sale that was not made by him.
Section 30 sub-clauses 3 & 4, Trademarks Act identify the doctrine of exhaustion of rights of the trademark owner. It is concerned with the exhaustion of rights following the initial sale of commodities. A bare reading of it would lead us to believe that the legislature’s goal was to recognize solely domestic exhaustion. The Hon’ble High Court of Delhi decided in favor of “International Exhaustion” in the case of Kapil Wadhwa vs. Samsung Electronics Ltd., FAO (OS) 93/2012:
“75. The appeal is partially allowed. Impugned judgment and order dated February 17, 2012 is set aside insofar the appellants have been restrained from importing printers, ink cartridges/toners bearing the trade mark Samsung/SAMSUNG and selling the same in India. The appellants shall continue to remain injuncted from meta-tagging their website to that of the respondents. But, while effecting sale of Samsung/SAMSUNG printers and ink cartridges/toners, the respondents shall prominently display in their showrooms that the product sold by them have been imported from abroad and that the respondents do not give any warranty qua the goods nor provide any after sales service and that the warranty and after sales service is provided by the appellants personally…”
(F) Public Juris: Public Juris is a Latin term, that means “of public right”. The term signifies a thing or a right that’s open and exercisable by all persons. It designates something that belongs to the whole community, and to not any private party and nobody can claim exclusive right to use any word, abbreviation, or acronym which has become Public Juris. The Hon’ble High Court of Delhi in S.B.L. Ltd. vs Himalaya Drug Co. AIR 1998 Delhi 126, held that:
“Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark”.
(G) Effect of registration of parts of a Trademark: Section 17 of the Trademarks Act contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the Trademark so registered. The trademark registration confers on the proprietor’s exclusive right to use the trademark as a “whole”. There is no exclusivity conferred on the registered proprietor if he chooses to use only “part” of the whole of such a registered mark. This point has been emphasized by the Hon’ble High Court of Delhi in Rich Products Corporation & Anr. vs. Indo Nippon Food Ltd in CS (OS) No.246/2004.
(H) Effect of dissimilarities among Trademarks: In Trademark litigation, the majority of disputes revolve around similarities and dissimilarities in the Trademarks. If Trademark lawyers are able to properly appreciate the principle described by the Hon’ble Apex Court, they can fetch excellent results in the litigation. The effect of dissimilarities among the Trademarks involved in the disputes is explained at length in the Hon’ble Supreme Court in M/S S.M Dyechem Ltd. vs M/S Cadbury (India) Ltd (2000) 5 SCC 573 are: –