The Trademarks Act, 1999, was enacted with the objective of providing registration and better protection of marks and preventing the users of fraudulent marks from carrying on trade. While section 27(1) of the Indian Trademarks Act mandates that marks have to be registered to get protection under the provisions of the act, it also recognizes the common law remedy of passing off.
The courts have thus taken a very proactive stand when it comes to protection of trademarks and addressed issues of infringement judiciously in case of unregistered marks depending on the facts and circumstances of each case.
Infringement and passing off
In the case of Jayna Engineering Works v Ashwani Sharma & Anr a passing off remedy was sought for the infringement of the mark Jayna or Jayna Label on various grounds. Jayna Engineering Works (JEW) were registered owners of the trademark and sought an injunction restraining Ashwani Sharma and another defendant from using a deceptively similar mark, alleging both passing off and infringement of their trademark. The dispute relates to the use of the marks Jyoti and Jyoti Label, which was purported to be very similar to Jayna and Jayna Label owned by JEW.
Specifics of the dispute
It was clarified that the objection was not pertaining to the use of the word Jyoti and it only related to the manner and style in which it was being used making it quite similar to the mark Jayna. It was alleged that the writing and lettering style, especially the size and other features, and placement and adjustment of the letters of the word Jyoti made it look similar to the JEW’s trademark Jayna. It was further submitted that the registration of Jyoti Label by Ashwani Sharma was not obtained by rightful means and so the validity of the registration was challenged.
JEW’s arguments centred around the fact that both companies carried on business in Ludhiana and by using a mark that resembled its own, Ashwani Sharma was creating confusion and deception in the market by facilitating the selling of spurious goods in place of its own goods.
Ashwani Sharma argued that there was no similarity between its trademark Jyoti and that of JEW. Citing section 28 (3) of the Trademarks Act it was submitted that the suit was barred as Ashwani Sharma were the registered proprietors and had a right to use the mark even if it was similar or identical with some other mark.
It was also submitted that JEW were already aware of the use of such a mark, as it had appeared in various advertisements in the magazines in which JEW’s advertisements also appeared, thus barring the suit by acquiescence.
There was no dispute regarding the similarity in words, as one is Jayna and other Jyoti. The question that was to be ascertained was whether the double trapezium used by defendants violated the rights of the plaintiff.
To this Delhi High Court observed that the trapezium was a geometrical figure known to mankind since time immemorial and thus cannot be termed as an invention of the plaintiff. Words can be written in a circle or square or a rectangle, but this does not make it an invention of somebody or a work of art. Considering the several labels put on record by Ashwani Sharma and another the court accepted that use of a trapezium was not uncommon and thus it involved no innovation making it completely distinct from other marks.
The court also relied on its judgment in Aviat Chemicals Pvt Ltd & Anr V Intas Pharmaceuticals Ltd, which stated that whether a feature was in the public domain or generic is a question of fact and if it was shown by the defendant from examples that many industrial players used a generic word, mark or prefix then it cannot be considered as a property of the plaintiff.
The court therefore dismissing the case held that no case could be made out against Ashwani Sharma and another as the use of a geometric figure in itself does not result in infringement as it has no artistic merit of its own.
A cautious approach
The cautious approach of the Indian judiciary about the impact of giving protection to objects in the public domain resonates in this judgment. The need to have a public domain is essential to foster creativity. Increased monopolization has the effect of shunning innovation and with India on the verge of becoming a free market economy, judgments like this can have an enduring effect.
Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based law firm specializing in intellectual
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