Kerala district court permanently restrains use of 'SELFRIDGES'
In a suit for trade mark infringement and passing off, the District Court of Ernakulam, in Kerala State, granted a decree of prohibitory injunction against Selfridges Private Limited (Selfridges Private), permanently restraining it from using the mark 'SELFRIDGES' as its trade name and trade mark.

London-based retail giant Selfridges Retail Limited (Selfridges Retail) had filed a suit for trademark infringement and passing off in 2008 against Selfridges Private, an Ernakulam-based firm retailing consumer electronic products. The infringement had come to the knowledge of Selfridges Retail through publication of the mark SELFRIDGES in the name of Selfridges Private in Class 35, which it subsequently opposed. Selfridges Retail followed this with the suit for trade mark infringement and passing off when its efforts to settle the issue amicably failed.

In the suit, Selfridges Retail alleged that as the nature of the services of the two entities was similar, the purchasing public was likely to associate the two businesses. This likelihood was augmented as Selfridges Private had attempted to position its retail store as close as possible to that of Selfridges Retail. Selfridges Retail relied on its various international registrations, the oldest of which dates back to 1935, and extensive global use and goodwill, including in India where it had previously organized high-profile exhibitions and festivals.

Selfridges Private on its part argued that it adopted the mark on the basis of its business which was initially confined to 'selling fridges'. Relying on registration with various government authorities since 1991 and incorporation under the Indian Companies Act in this name, Selfridges Private claimed prior use in India. It elaborated that the mark was not affixed to retailed goods, their packing, labels or brochures and, therefore, there was no violation attributable to its adoption of the mark/ name 'SELFRIDGES' as a trading name.

The court examined witnesses from both sides and after going through evidence, noted that:

• Both parties had admittedly used the mark/name 'SELFRIDGES' in the course of trade.
• Selfridges Retail had used the mark 'SELFRIDGES' in connection with electronic consumer goods in addition to other goods, whereas Selfridges Private had only used it in relation to electronic consumer goods.
• While Selfridges Retail conducted business in London, Selfridges Private conducted business in different parts of India.
• Selfridges Retail enjoyed a valid and subsisting trade mark registration in India for the mark 'SELFRIDGES' under No. 669991, whereas Selfridges Private had no such trademark registration.
• Selfridges Retail had filed an opposition to registration of Selfridges Private's trade mark application for an identical mark in Class 35.

Based on these facts, the court made the following principal observations:

• Selfridges Retail was an internationally well-known establishment and also enjoyed a trade mark registration. Thus, it was not proper to compare the variety of goods sold through the outlets of the parties.

• The name and fame of Selfridges Retail had spread to India and all disparities apart, there was a possibility of emerging confusion in the minds of consumers as to an association between the two parties. In cases of passing off, the main consideration is likelihood of confusion or deception, deliberate or otherwise.

• The contention of Selfridges Private that it sold fridges and, hence, the mark 'SELFRIDGES', was without merit as it sold other electronic items too. In effect, the name 'SELFRIDGES' had no particular relevance to the business of Selfridges Private.

Observing that the quality of the consumable items sold from an outlet has a direct nexus with the confidence that the consumers repose in that institution, the court held that Selfridges Retail had the exclusive right to use the mark/name 'SELFRIDGES' and Selfridges Private had no such right. In light of this finding, Selfridges Retail was granted an injunction restraining Selfridges Private from using the mark/name 'SELFRIDGES'.

ROCA and ROKA to co-exist rules Delhi High court

The Delhi High Court recently decided an interim injunction application filed by Roca Sanitario S.A. (Roca) against Naresh Kumar Gupta (of Roma International (Roma)) and a counter-claim filed by Roma against Roca (CS (OS) 626/2006 and CS (OS), 2223/2006, 15 March, 2010). In its decision, the Delhi High Court dismissed the interim injunction applications of both parties and in effect allowed Roma to continue using the mark ROKA.

Roca in support of its case argued that:

1. It owned registrations for the mark ROCA in respect of bathroom tiles, fittings and sanitary-ware products in over 90 countries.
2. In India, it had owned registrations since 28 March 1979. It owned numerous domain name registrations comprising of the word ROCA, since 1995. In India, it claimed that it was using the mark ROCA before 1998.
3. Roma's prior use claim was unfounded. The earliest evidence produced by Roma dated from September 1999. Invoices produced by Roma for use since 1996 were not credible as they were internal.
4. Roca relied on its sales figures, worldwide to establish 'spill-over' reputation in India.
5. The explanation for the abrupt adoption and use of the mark ROKA since 1996 by Roma was unconvincing and false. ROKA was adopted without conducting a trade mark search.
6. Roma had adopted the similar mark ROKA for identical goods: 'ceramic and sanitary ware'. Confusion and deception were inevitable. Its stylised depiction and use of a similar font established its dishonest intentions in relation to the subject matter of the registration owned by Roca. Roma's attempt to establish prior use by reliance upon affidavits of its dealers was irrelevant as they did not demonstrate sales.
7. Before the opening of the Indian economy, Roca could not import the goods into India due to trade barriers.

Roma argued that:

1. It had owned a registration for ROKA in respect of sanitation goods, fittings, bath tubs since 1996. It had imported goods from China and marketed them under the mark ROKA since its adoption. It filed affidavits of several dealers having sold the ROKA brand for the last 10 years. Invoices from 1996 onwards were also filed.
2. ROKA was a coined term and has been derived from its proprietor's children names, Romika and Kanishk.
3. Roca had not used the mark in India. It had not filed any advertisement in trade journals/magazines with circulation in India. All magazines were in Spanish/ French.
4. Mere assertion of trans-border reputation was not sufficient. There should be documentary evidence.
5. ROCA had failed to show why it did not conduct business for 23 years (1979-2002) i.e. after securing registration of the mark.

The court was of the view that Roca had not shown that its international reputation had come to the knowledge of Indian consumers. The court specifically referred to the magazines relied on by Roca which were in Spanish and French and questioned whether they had any circulation among Indian consumers. The court took the view that Roca was exporting products to India for specific customers only, usually hotels on demand. It was therefore difficult to say Roca had presence in the Indian ceramic tiles market. In view of this it was not entitled to an injunction.

The court also refused to grant an injunction to Roma stating that the reason for coining the term ROKA was unconvincing. Roma had not adduced any evidence to assist the court as to their clientele. Further, the court concluded that the materials produced by Roma were insufficient to establish any kind of brand awareness or distinctiveness.

Court restrains Nestle's use of 'Yo' for its popular noodles brand Maggi

'YO', a plain and informal expression used the world over to convey excitement has been subject of a trade mark war.

Moods Hospitality (MH) that runs a chain of Chinese restaurants in India under the name 'Yo! China' filed a suit for trade mark infringement and passing off at the Delhi High Court seeking an interim injunction against the use of the expression 'Yo' by Nestlé India for their recently-launched Maggi Cuppa Mania Instant Noodles in two flavours - 'Masala Yo!' and 'Chilly Chow Yo!'. MH claimed prior rights over the use of 'YO!' in relation to noodles. MH argued that the trade mark 'Yo' is arbitrary and has become distinctive of its popular Chinese restaurant chain 'Yo! China' and its products. On the other hand, Nestlé India argued that 'Yo' lacks trade mark character and is publici juris.

The single judge in its ruling observed that MH is the prior adopter and registered proprietor of the trade mark 'Yo' and use of the expression by Nestle would create confusion amongst consumers. Nestle has appealed to the division bench which has temporarily lifted the restraint order until a decision on the appeal. The division bench has already heard arguments in the appeal and reserved its order. It will be interesting to see if the division bench will uphold the order of the single judge.

Source: Delhi High Court website http://delhihighcourt.nic.in/

A shot in the arm for India's traditional knowledge

In November 2009, India and the United States of America (US) signed two inter-governmental agreements on intellectual property (IP) rights to help prevent misappropriation of traditional knowledge through trade mark or patent claims. By virtue of the Agreements, the US Patent Office (USPTO) will now be able to access India's Traditional Knowledge Digital Library (TKDL)
http://www.tkdl.res.in/tkdl/langdefault/common/Home.asp?GL=Eng
India compiled the TKDL in 2001. The ambitious US$2 million project is essentially an encyclopaedia of India's traditional medicine in five languages - English, French, German, Japanese and Spanish.

India has long argued that it has been a victim of 'bio-piracy' on account of the fact that its traditional/indigenous knowledge was not properly documented. In most developed nations (like the US), such knowledge is only recognized if it is published in a journal or made available on a database - it is not accorded recognition if it has been merely passed down through generations of oral and folk traditions. No wonder then that India has been embroiled in some high-profile patent litigation in the past decade - the government spent US$6 million in fighting legal battles against patents granted in favor of US-based entities for turmeric and neem-based medicines alone. Equally controversially India (successfully) challenged a USPTO-granted patent for new strains of rice similar to basmati - which has been grown for centuries in the Himalayan foothills of North-West India. These instances of bio-piracy might have been prevented if the USPTO had had ready access to India's database of traditional knowledge. Hopefully this will change with the recent inter-governmental agreements.

Source: http://business.rediff.com/report/2009/nov/24/india-us-ink-pacts-on-intellectual-property-rights.htm

No 'forum shopping'with web presence only

One of the challenges faced by the parties in an online transaction is the appropriate forum for adjudicating conflicts. The Delhi High Court was recently faced with this question in a conflict concerning misuse of trade mark/brand name 'Banyan Tree' where neither the Defendant, Mr Murali Krishna Reddy nor the Plaintiff, Banyan Tree Holding Pvt Ltd (BTH) owners of the well-known Banyan Tree resorts and hotels, were based in Delhi. In a passing off action against Murali Krishna, BTH invoked the Delhi High Court's jurisdiction by submitting that the Defendant had a website (www.makprojects.com/banyantree.htm) that was accessible in Delhi and that they were advertising their services and offering those services to consumers in Delhi through that website.

The single judge referred the matter to the Division bench to determine the basis of court's jurisdiction given that there were two conflicting opinions on this issue. The Division bench held that the Plaintiff must show that the Defendant has engaged in commercial activity by targeting its website specifically at customers within the forum court's jurisdiction. Simply posting an advertisement showing the Defendant's mark on a passive website that does let consumers enter into commercial transactions with the Defendant is not enough to trigger the court's jurisdiction. The Division bench held that it would be necessary for the Plaintiff to show that the Defendant had engaged in commercial activity by targeting its website specifically at customers within the jurisdiction of that Court.

Source -Delhi High Court website http://delhihighcourt.nic.in/

INDIA TO FOLLOW THE NINTH EDITION OF INTERNATIONAL CLASSIFICATION OF GOODS & SERVICES
Ministry of Commerce And Industry has issued notification dated 20th May, 2010 making the following rules to amend the Trade Marks Rules, 2002 (To access notification, please click on http://ipindia.nic.in/tmr_new/tmr_act_rules/Notification_20May2010.pdf:

1. The Fourth Schedule to the said rules shall contain the following new classes as per the ninth edition of the International Classification of Goods and Services-

42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
43. Services for providing food and drink; temporary accommodation.
44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

2. The following proviso has been inserted in Rule 62 (3) of the Trade Marks Rules, 2002 that deals with issuance of duplicate or further copies of registration certificate:

"Provided that if the Registrar is satisfied with the claim of the registered proprietor supported by evidence that the certificate of registration issued under sub-rule (1) has not been received by the registered proprietor, he may issue duplicate or copy of the certificate of registration without any further payment of fee :

Provided further that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of the time limit for renewal of registration and restoration of the registered trade mark".

Delhi High Court admonishes Microsoft for forum selection

Microsoft filed four suits at the Delhi High Court for copyright infringement against four different Defendants using pirated software. None of the Defendants were based in Delhi and the suits were filed on the basis of the Copyright Act (section 62 (2)) that allows the Plaintiff (in this case Microsoft) to bring the action at the place of their business. The Judge observed that none of the Defendants have an office in Delhi, whereas Microsoft has offices in cities where the Defendants are located. However Microsoft still chose to file the action at the Delhi High Court.

The Judge, while criticising this practice of forum shopping, observed that multinational companies (using monetary power) are deliberately choosing the court of their liking far away from the Defendant's place of business, making it difficult for the Defendant to contest the suit.

The court found that all four suits filed by Microsoft were based on investigations conducted by agencies hired by the Plaintiff. The court was of the view that these actions were based on mere suspicion that infringement of copyright might be committed by the Defendants. . The court therefore directed Microsoft to deposit costs of approx US$2000 as security in each case so that the Defendant can be compensated if it is found that Microsoft had instituted a false suit. Microsoft has since appealed against the order to the division bench and the order directing the deposit of costs has been set aside.

Source: Delhi High Court website http://delhihighcourt.nic.in/