Enforcement of a Foreign Trademark in India
17 October 2012
Being territorial in nature, trademark laws offer protection to trademarks used or registered in India. However, courts in some countries have taken into consideration factors such as transborder reputation and goodwill in protecting a trademark used or registered in foreign countries. There are a few countries where a hard-line or national approach is followed and there are others which have adopted a liberal international approach in offering protection to such marks. The Indian Courts have always attempted to follow a moderate approach by achieving a balance between protecting foreign trademarks and in preserving the territorial nature of trademark law.
The principle of trans-border reputation of a foreign trademark sought to be enforced in India was considered and discussed in detail in the cases such as Whirlpool v. N R Dongre and in Rob Mathys v. Synthes by the Supreme Court of India and the Delhi High Court respectively.
Further, in the matter of Rangoon Chemical Works v. Haw Par Brothers International, the High Court of Karnataka at Bangalore upheld the lower court’s decision recognizing, inter alia, the trans-border reputation acquired by the Respondent’s trademarks and granting perpetual injunction in favour of the Respondent in final disposition of the suit for passing off of the unregistered trademarks Flying Tiger Balm, Tiger Balm, labels and cartons used in respect of medicinal and pharmaceutical preparations.
Indian Courts have consistently disapproved any attempt by the Indian trade and industry to derive illicit gains or profit from the reputation built by others elsewhere in the world and to pass off their products as and for foreign products. However, the Courts have considered several factors on a case-to-case basis while determining use and trans-border reputation of foreign trademarks.
It is interesting to note the interpretation of “use” of a trademark made by the High Court of Bombay in the matter of Reed Elsevier Properties and Anr. v. Best Media Associates (India) under the provision of Section 34 of the Indian Trade Marks Act, 1999. The said provision reads as follows:
“Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior---
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his: or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his:
Whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.”
In the aforesaid case, the Plaintiff, a corporation incorporated in the United States, was engaged in the business of publishing newspapers, magazines, directories and online media and marketing services in various countries. The Plaintiff was the owner of the trademark and logo “Variety” which was registered under the Indian Trade Marks Act. The suit was filed by the Plaintiff for, among other things, passing off and infringement of its trademark and copyright. The Defendant in the matter had established use of its “Variety” mark in relation to various publications from the year 1991-92.
The Plaintiff’s case was that its publications which were sold and circulated under the “Variety” mark had earned tremendous goodwill and reputation in India arising from the coverage or reportage of events and developments pertaining to the Indian Film Industry and Indian Films since the early 1950s. The Plaintiff also adduced documentary evidence to show availability of the said publications with the National Film Archive of India (NFAI) since the year 1984, which is a media unit of the Ministry of Information and Broadcasting, Government of India.
In the case, the Court, while considering a question of law, namely whether the word “use” referred to in Section 34 and particularly clause (a) thereof pertains to use anywhere in the world or only in India, held that the term “use” meant use of the trademark in India. The Court placed no importance upon the mere fact that the articles regarding the Indian film industry appeared in overseas publications of the Plaintiff and held that the fact that readers of such publications travelled to India would not establish a trans-border reputation.
However, on being convinced of the availability of the Plaintiff’s publications in the records of the NFAI since 1984, the Court was of the view that the Plaintiff had made more than just a strong prima facie case of infringement of its “Variety” trademark and the copyright therein.
Nonetheless, the Court did not find the Plaintiff established its case of passing off since, in its opinion, the records of the NFAI did not indicate that the Plaintiff had developed a reputation in India sufficient to maintain an action for passing off. Although the case has been decided on an interim stage, the decision has offered some interesting points of interpretation of the term “use” and “trans-border reputation” of a trademark under Indian trademark law.
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