M/S Castrol Limited & Anr. v. Iqbal Singh Chawla & Anr.

In the above case the judgement was decreed in favour of Castrol Limited and permanent injunction was granted to the Iqbal singh Chawla i.e. the defendant from using the mark “ACTIV” or “ACTIVE”.  However when we talk about Trade dress, it is combinationation of different elements of packaging of goods that is used for its promotion. It is basically the complete packaging of a product that is visually appealing to the eyes of the buyer.

Background

The plaintiff owns the registered Trademark of “CASTROL ACTIV”. They claimed to have adopted the mark in the year 1999. The registration details of the plaintiff’s trademark according to Trademark Registry are:-

Plaintiff also claimed their copyright and trade dress under section 2(c) of the Copyrights Act, 1957 over the packaging of the product.

In December, 2010 the plaintiff discovered that Mahendra Oil Company i.e. the Defendant was selling the 4T oil under the trademark “LUMAX ACTIVE”. They were allegedly imitating the get up, layout and features of the packaging of the plaintiffs by adopting red, white, and green color’s on the label in an identical manner and also the shape and configuration of the bottle.

The plaintiff claimed that defendants are infringing and passing off the marks of the plaintiff and therefore filed an infringement suit before Delhi High Court for permanent injunction by restraining the defendant from selling, marketing, and for doing any type of commercial exploitation against the plaintiff. They further claimed that defendant’s mark “LUMAX ACTIVE” is deceptively similar to the mark of plaintiff “ACTIV”.

Issues

There were eight issues that were raised by the Delhi High Court, out which important issues were-

  1. Whether the Defendant had committed an act of passing off and/or infringement?
  2. Whether the plaintiffs are entitled to damages?

Plaintiff’s Product Defendant’s Product

Plaintiff’s Contentions

  1. The plaintiff claimed the ownership of the alleged trademark and trade dress of the product.
  2. He further claimed over the proprietary rights as he is the prior user of the product.
  3. It brought the witnesses to support its claim. The witness proved that-
  • The registration of the trademarks “CASTROL” and “ACTIV” are in favour of the plaintiff.
  • The plaintiff has been using the trademark “CATROL” and “ACTIV” for several years.
  • The product of the plaintiff is packed in a particular plastic container. The container is having a unique trade dress with a distinctive design, layout and colour combination and shape and configuration.
  • The artistic feature of the get up, layout, and colour combination of the product has been extensively devised and depicted in color in various print media and its features are exclusively associated with the plaintiff’s and no one else.
  1. It was further contended that defendants have deliberately adopted the mark which is deceptively similar to the plaintiff’s mark.
  2. It was further alleged that the defendant’s such act would cause confusion among the consumers.

Defendant’s Contention

Ddebant claimed that “ACTIV” word is a common dictionary word and no one can claim its exclusive rights over it. The plaintiff’s trademark has always been used in conjunction with the trademark “CASTROL”. They further claimed that they honestly and bonafidely claimed their mark “LUMAX ACTIVE” which is completely different from the mark of the plaintiff. 

Court’s Decision

The court opined that the two impugned marks are different, however when trademark along with trade dress is compared then the dishonest intention of the defendant is clearly visible.

Therefore the court held that the plaintiff were granted permanent injunction by restraining the defendant persons from using the Trademark which is registered under the name of plaintiff in any manner and further stated that  “the defendants are restrained by way of a permanent injunction from using the mark ACTIV and / or ACTIVE in the identical trade dress, colour scheme, packaging, design, layout, shape, and configuration as that of the plaintiff’s. However the injunction would not affect the right of the defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration.

Damages were also provided of Rs. 2 Lakhs to the Plaintiff.

The experienced Team of BIAT Legal LLP helps your Trademark to be protected and from infringement.

Indian Law and Well Known Trademark

What is a well known Trademark?

As per Trademarks Rule, 2017, a new procedure has been introduced by the Trademark registry which allows Trademark registrar to proclaim a particular trademark as “Well Known”.

Section 2 (1)(zg) of the Trademarks Act, 1999 defines Well known Trademarks and states that well known trademark is a mark which has become well known to the section of the public which uses goods and services and use of that mark in relation to goods and services of other business would be considered as infringement as customers using the products would think that the goods and services given are in relation to the well-known brand.

Statutory provisions under Indian law

A well known trademark has been given extraordinary protection and safeguards against passing off and infringement of such trademarks. Well-known trademarks are recognized in India on the basis of their reputation, nationally and internationally.

Provisions related to well known Trademark 

  1. Rule 124 of Trademarks Rules, 2017

By filing of Form TM-M the Trademark owner could be granted a status of a Well Known trademark after filing of evidence and supporting documents thereof. A Trademark owner can request for a well-known trademark without getting into any proceedings or rectifications.According to Rule 124 a Trademark owner could be granted the tag of “Well Known” merely by an application of request to the registry.

  1. Under Trademarks Act, 1999
  • 11(2)- Protection of well known marks across all classes- Well Known Trademarks are to be recognized and protected across all the classes of goods and services.
  • 11(9)- Conditions not required for Well-Known Trademark Registration- or a Trademark to be granted princeton in India, i is not necessary that the mark owner must have his business in India or its Trademark is registered within India, nor is it required that the trademark is known to the masses as a whole.
  • 11(10)- Obligation on the Registar- It is an obligation on the registar that in case of a dispute and/or infringement that regustar must protect the interest of a well known trademark against the identical ones and also must take into consideration and notice the ill intention and malafide motive of the complainant or the opponent.

Remedies available to the Trademark owner against infringement

Following are the remedies that are available to the Trademark owner against Trademark infringement-

  1. The owner can prevent the registration of similar and deceptive similar trademarks in respect to all classes of goods and services.
  2. He can also prevent the incorporation of a trademark in the name or logo of any organization or corporate name.
  3. Further the owner can also request for removal of the infringing mark and can ask for punitive damages too.

BIAT Legal LLP is a one stop solution for all your Intellectual Property needs. The team of professionals would help you in granting of a status of a Well Known Trademark in India.

Trademark/ Copyright Litigation procedure and Strategies in India

If any brand has attained its popularity and genuinity in the market, then it is important for that brand ti commercially protect it from being misused by any thor parties. Therefore Intellectual Property protects these brands from being misused. 

But many times the original brand’s replica or duplicate products are sold in the market at an inferior quality than of the original product which created confusion amongst the potential consumers. Counterfeit products tend to have fake logos and brands in it. Therefore Trademarks and Copyright Act is there to protect the original brand from being commercially exploited. 

Trademark Act, 1999 and Copyright Act, 1957 provides for remedies and actions against the Intellectual property rights.

Protection Under Trademark Act, 1999 

Section 103 and 04 of Trademarks Act, 1999 provides imprisonment for term not less than six months which may be extended to three years with fine up to Rs. 2 Lakh if anyone is found for false application of Trademark and selling of goods of which false trademark has been applied. Section 115 of the act empowers police officials for the process of search and seizure of any such products which class for action against infringement of the Trademark. For doing such raids and seizure of products police officials must obtain a certificate of opinion from the registrar. However, the registrar has full discretion to decide on the same. 

For the purpose of taking fast forward action against the infringement, the proprietor should opt for the criminal action. The proprietor should file a criminal complaint under section 156 of the code of criminal procedure. Sub section 3 of section 156 provides that if any police official refuses to lodge an FIR or a criminal complaint, the aggrieved party can file a complaint before the Magistrate, procedure w.r.t. Which is laid down unders section 190 of the code of criminal procedure, 1973.

Search warrant can be obtained by directly approaching the magistrate court, the procedure of which has been laid down under section 93 of the Code of Criminal Procedure, 1973.

Many times the identity of the infringer is not known therefore, according to section 93 and 94 of the Crpc one can request for initiation of a search and seizure proceedings against known and unknown persons.

Protection under Copyright Act, 1957

Logos and Designs, which are used as brand identities for representing businesses, are protected as trademark. If they are original artworks that have an element of creativity, they are also entitled to be protected as copyrights as well.

  1. If there is any infringement of the mark, then the proprietor can take action under section 63 of Copyright Act, 1957 which contains the provision of punishment for six months of imprisonment which can be extended upto three years with a fine minimum of fifty thousand which can be extended to three lakh.
  2. The main advantage of filing a complaint under section 64 of copyright act is that a police officer not below the rank of sub-inspector has the power to seize without warrant, infringing copies of the work. The infringement of copyright was decided as a cognizable offense.
  3. In case of cognizable offenses, the investigating officer has the power to make an arrest and start the investigation without a court order in accordance with section 156(3) of crpc. The proprietor whose mark is being infringed could file a criminal complaint under charges of section 420 IPC along with section 63 of Copyright Act. The provision of section 420 IPC precisely talks about cheating by way of false representation of property to some other person.

Civil remedies in case of violation of Trademark

The proprietor is also open to file civil suits simultaneously along with the criminal complaint. The advantage of doing this is that by initiating a criminal complaint, seizure of counterfeit products can be done while a civil suit helps to restrict the sale of the same while the matter is still pending in the court.

Order of Injunction from Court

For the purpose of stopping manufacture of counterfeit products from its sale. The proprietor can adopt civil remedies where the court can issue an order of injunction in which a person is required to perform or restrained from performing a particular act. This helps the proprietor to obtain an order from court for using counterfeit products to sell unless the matter is disposed off from the court. The general rules governing the grant of an injunction are contained in section 36 to 42 of the Indian Specific Relief Act, 1963 and order XXXIX Rules 1 and 2 and section 151 of the code of Civil procedure, 1908.

Damage Cost

Any proprietor whose trademark has been ifibged b the sale of counterfeit products, the said person can claim compensation from the opposite party against the profit made out from the sale of the counterfeit product through unauthorized use of trademark belonging to the proprietor.

How to Defend a Trademark Opposition?

Why would someone oppose your Trademark Application?

One of the reasons that third parties would oppose your Trademark Application is that your mark is somewhere identical or similar to his mark because of which likelihood of confusion would be there amongst the consumers. In such case the burden falls on the opponent to proof that-

  1. Similarities between the respective marks, and
  2. First use of mark in commerce, i.e. prior user of mark.

Oppositions might also be raised on the grounds that the mark is merely descriptive.

What is an extension of time to oppose?

On the request of the opponent, the registrar may extend the time to oppose which may extend from 30 days to 90 days. Extension requests are routinely granted provided that potential opponents must show the good cause for a request beyond 30 days. For eg. time might be granted on the grounds, that additional time be granted to investigate the claim, discuss settlement or seek counsel for representation.

An extension of time will not alway lead to the filing of opposition. The potential opposer could go away on their own or seek settlement that would avoid the need for opposing the trademark opposition.

Who is the Potential Opposer?

Potential opposer is a person who intends to file opposition within a stipulated period of time if he finds any mark similar or identical to his mark. If he has filed any notice of an extension time to oppose then the other party would be notified of the identified opposer. This would help you to see if he has a pending application which might form their case for a likelihood of cond=fusion claim.

Trademark Trial and Appeal Board (TTAB) Trademark Opposition Vs Trademark Lawsuit: what are the differences?

TTAB proceedings are gentle, kind forms of litigation. In this there is no court proceedings involved, as nearly all matters are handled in writing. The Board does not have any authority to impose any monetra sanctions.

TTAB proceedings cost lower than proceedings in federal courts. Also the issues in TTAB actions are limited to the registrability of marks. It is to be noted here that Trademark infringement matters are not litigated in TTAB tribunals 

How much does TTAB Trademark Opposition defense cost?

Cost of defending TTAB matters depend upon several factors, but the overwhelming factors will be how far the opponent is willing to go. If the opposer is determined to fight ill end then cost of defending trademark opposition can range between $50,000 to $150,000.

And if both parties are willing to settle their matter then opposition defense costs may range from less than $2000 to $5000. 

What are the first steps in defending against a Trademark Opposition?

If Trademark Opposition has been filed by any party, then he will file it through Notice of Opposition and it contains the opponent’s identity, their grounds of opposition, and details of their trademark filing which they believe are in conflict with your mark. This will give you an opportunity to assess the likelihood of confusion claims and any potential defenses or counterclaims.

You will also receive a notice of the institution with a scheduling order setting forth key deadlines, including conference, discovery and trial schedule dates. The most immediate deadline for the defendant to answer is 40 days from the filing date of opposition. The next deadline is for a mandatory discovery conference which is after about 1 month after the answer deadline.

What early settlement options might be available?

If the opposer is open for settlement, the it may worthwhile to explore any potential compromises including-

  1. Amendments to the identification of goods and services.
  2. Limitation to usage of your mark, which may include agreements to use your mark only in certain conditions.
  3. Agreements not to expand into certain product lines.
  4. Changes to your mark after signing an undertaking.

Productive settlement discussion may also lead to a coexistence agreement (aka consent agreement) that either side may file with the USPTO to overcome any refusals based on likelihood of confusion.

Any counter-claims to consider against the opposer?

Yes, if the trademark oppose is having any pending registered mark similar to your then it is worthwhile to file a counterclaim, or a separate TTAB proceedings against the opposer’s mark. These conditions would involve your counsels. The decision to go on the offense may be complicated and filled with additional several issues that are not readily apparent. 

Opposition of Trademarks and its Timeline and procedures in India

After the examiner reviews the applied trademark and allows it by accepting the mark and publishes it in the Trademark journal. Then the trademark is open for opposition from third parties for the mandatory period of four months from the date of publishing. In case there is no opposition arose from any third party within the stipulated period of time, then the mark will proceed for its registration. 

Who can oppose Trademark Application in India?

Any person may oppose a Trademark. This person does not have to be necessarily a registered proprietor, he could be anyone like purchaser, customer, or a member of the public likely to use the goods. The rationale behind this is that the opponent is not only representing himself but the public at large because having two similar marks will only cause confusion in the minds of the public. 

What is the period within which a Notice of Opposition could be filed?

The Notice of Opposition has to be filed within 4 months from the date of its publication in the Trademark journal, and the period is not expandable in any circumstances.

What are the stages involved in Trademark Opposition?

  • Stage 1- Filing a Notice of Opposition/ Filing a Counter Statement: Any person who is willing to oppose a mark can do so within four months from the date of advertisement or publication in journal. It could be done by filing a prescribed form along with the prescribed fees. It is first sent to the registry for its review, and if the registry finds everything okay then it will serve it to the applicant party. A counter-statement or reply of opposition has to be filed by the Applicant within two months from the date of receiving notice of opposition. It is to be noted that time will not be extended in any circumstances, and if the counter statement is not filed within the stipulated time, then the mark shall be deemed to be abandoned. The counter statement is first sent to the registry, and if all formalities are met then it is served to the opponent from the registry.
  • Stage 2- Filing of Evidence in Support of Opposition: Within Two months (extendable by one month) upon receiving the counter statement, the opponent has a choice of filing of evidence in support of his opposition in form of an affidavit to strengthen the case by filing of evidence in support of rule 45. The opponent can choose to reply to the facts mentioned in notice of opposition. Whatever the opponent chooses, he has to inform the officials and the other party within the prescribed period of time otherwise the opposition will be tagged as abandoned.
  • Stage 3- Filing of Evidence in Support of Counter-Statement: Within two months of receiving evidence/ intimation of waiver by the opponent. The Applicant has to file his evidence in support of its application by filing under rule 46. Applicants also have an option to waive its right over filing of evidence. 
  • Stage 4- Filing of Evidence in Reply: Within one month of receiving the evidence/ waiver, the opponent again has the option to file additional evidence (if any) in support of his opposition. The option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by Applicant.
  • Stage 5- Hearing: Within three months of completing all the formality or filing of an evidence, hearing will be conducted from the trademark registry, and both the parties would get notified about the same. After hearing of the parties and considering the evidence, the registry will decide upon its mark whether the mark is accepted or not. 

If either of the parties is not satisfied with the decision of the Trademark registry, then within 30 days of the finality of decision could appeal in Intellectual Property Appellate Board (IPAB).