Rario's Cricket NFT Case Against MPL & Striker: A Comprehensive Review

The advancement of blockchain technology, Artificial Intelligence (AI), and virtual digital assets has led to growing apprehension about the multitude of legal and ethical dilemmas that could arise from their development and their potential impact on the legal rights of individuals.

The Delhi High Court recently deliberated on the relationship between generative AI and personality rights in Digital Collectibles Pte. Ltd. and Ors. vs Galactus Funware Technology Private Limited and Anr. [CS (COMM) 108/2023]. In this case, the court declined to issue a temporary injunction against the gaming platforms Mobile Premier League (MPL) & Striker for using the name and likeness of certain cricketers to create Non-Fungible Token (NFT) – enabled “Digital Player Cards”.  

Non-Fungible Tokens under Copyright Law

NFTs are distinct digital assets that leverage blockchain technology to validate ownership and are frequently utilised for trading digital art and collectables. Nevertheless, an ongoing discussion revolves around the intellectual property rights tied to NFTs and the question of whether acquiring an NFT bestows copyright ownership.

On the other hand, Online Fantasy Sports (OFS) involve participants creating virtual teams of real-life athletes and competing based on their performance in real sports events. The users pay an entry fee to join and use their skills to participate in online events or leagues. Under prevailing copyright laws, purchasing an NFT does not automatically convey the legal right to claim copyright in the artwork unless a separate commercial agreement is established to that effect. In the instant matter, an OFS platform created NFT-enabled “Digital Player Cards” (DPCs) featuring the names and likenesses of certain cricketers. These digital assets could be owned and traded by users on the blockchain.

Case Overview

Digital Collectibles Pte. Ltd. (Plaintiff No. 1 here) owns and operates ‘Rario’, a digital collectables platform based on NFTs. The platform facilitates selling, purchasing, and trading officially licensed DPCs featuring cricketers. As well-known cricketers, Plaintiff Nos. 2 to 6 granted Plaintiff No. 1 an exclusive license to utilise their names and photographs on the Rario platform.

These DPCs contain names, photographs, and other personality traits of cricketers which are bought, sold, and traded for actual currency on Rario, utilising Rario’s private blockchain. The price of each DPC is determined by the demand and supply for the specific DPC, which is, in turn, influenced by the popularity and renown of the respective cricketers.

Galactus Funware Technology Private Limited (Defendant No.1) is the proprietor and operator of the online fantasy sports platform called MPL, while Defendant No. 2 is the proprietor and operator of the mobile application ‘Striker’, listed on the MPL. Like Rario, Striker users can purchase, sell, and trade DPCs and Striker also utilises NFT technology to authenticate the DPCs on its platform.

In February 2023, a suit was filed before the Delhi High Court against the defendants for using players’ names, images and other attributes (including those of Plaintiff Nos. 2 to 6) on their platforms without obtaining the players’ authorisation or license.

Right to Publicity vis-à-vis Freedom of Speech and Expression

The plaintiffs asserted that the value of the DPCs, considered digital art collectables, is primarily derived from and dependent on the names, likenesses, and other elements associated with the cricketers whose DPCs are offered on the Striker platform. Moreover, they relied on precedents set forth by the Hon’ble High Court of Delhi in D.M. Entertainment Pvt Ltd v Baby Gift House & Ors [MANU/DE/2043/2010] and Titan Industries v M/s Ram Kumar Jewellers [(2012) 50 PTC 486], to contend that the Striker DPCs are an unauthorised endorsement and violated the plaintiffs’ publicity rights.

In reply to the plaintiffs’ contention, the court remarked that while Indian courts have acknowledged the existence of celebrity personality rights, these rights are not absolute and must be weighed within the context of the common law principle of “passing off” and in accordance with the right to freedom of expression enshrined in Article 19(1)(a) of the Indian Constitution.

The Single Judge Bench of Justice Amit Bansal opined that the right to publicity was subordinate to the freedom of speech and expression guaranteed under the Constitution and noted that the “Right to publicity”, i.e., the right to control the commercial use of one’s identity and personality, is not absolute or unrestricted.

The celebrity’s right to publicity is only violated when using their name or image is intended to mislead the public into believing that they are endorsing and associated with the product in question. In such instances, it can be said that the celebrity’s goodwill and reputation have been misused to promote a product or service.

Use of Artwork with Creative Elements

The court highlighted that the DPCs of the defendants include artwork of the players, not photographs, and this artwork was determined to have creative elements that set them apart from the actual images of the players since the defendants have shown their expression through these creations rather than utilising celebrities’ likenesses directly. These innovative features and creative caricatures were held to be protected under Article 19(1)(a) of the Constitution.

Players’ Information Available in Public Domain

The defendants expressed that the content used for DPCs on the Striker platform is in the public domain, which served the purpose of identifying the cricketers on the platform; thus, it is beyond the scope of those cricketers’ personality rights. It was further stated that the platform is categorised as an OFS game, which does not offer the ability to purchase and “own” cricket moments (a key feature of the plaintiffs’ licensed DPCs). The defendants asserted that their DPCs could not be traded or used outside the Striker platform as they are inherently linked to the user experience and format of the Striker platform and highlighted the usage of players’ names and other information in a similar manner is common in other OFS games, demonstrating an established industry practice.

The defendants also cited the decision of U.S. Courts in CBC Distrib. & Mktg. v Major League Baseball Advanced [505 F. 3d 959] and Daniels v Fan Duel Inc [109 N.E. 3d 390], to support their argument that if the information and facts regarding certain celebrities which the defendants use are already publicly available, there can be no valid claim for infringement of publicity rights.

The court noted that OFS operators use publicly available player names and images to identify players. Thus, the court ruled that no one can own information in the public domain and such information can’t be monopolised or licensed. Since public domain facts cannot be monopolised, a third party’s use or publication for commercial gain cannot afford the plaintiffs a cause of action. With respect to the remedies available for an aggrieved celebrity, the court only cited defamation as a resort. 

Accordingly, the Hon’ble Court held that the plaintiffs failed to make out a case for the grant of an interim injunction[1] and effectively gave the go-ahead to Striker as it is not a ‘trading platform’ like Rario per se and does not mislead customers regarding any affiliation with or endorsement and does not violate any right of Digital Collectibles. Based on this, the matter has been listed for completion of pleadings on July 10, 2023.

Order of Single Judge Bench Challenged

Indian cricketers, including Mohammed Siraj, Harshal Patel, and Rario, have challenged the above interim order of the Single Judge Bench through appeals filed before the Division Bench of the Delhi High Court. The appellants lay emphasis on the players’ absolute rights over their persona and argued that there is a misunderstanding as to when fair use ends and confidentiality begins. The Bench has instructed the parties to submit written statements within a week and scheduled the next hearing on July 10, 2023.

Analysis

In the abovementioned case, the Delhi High Court has recognised that the test for determining the infringement of the right to publicity aligns with the principles and standards of the tort of passing off. It is now clear that the right to publicity is violated when a third party employs a celebrity’s information, trait, or attribute in a manner that is likely to cause confusion.

The recent appeal against the order of the Single Judge Bench is a testament to the brunt faced by celebrities when Online Fantasy Sports platforms utilise their images to entice audiences. The position of the Hon’ble Court is yet to be determined; however, the mere incidental or transformative use of a celebrity’s name, image, etc. in connection with a product or service cannot be said to be an infringement of the right to publicity. This order has provided precision to Indian jurisprudence on the right to publicity while also emphasising the need to strike a balance between justly enforcing the right to publicity and upholding the constitutional right to freedom of speech and expression.

Additionally, the court’s decision has the potential to influence the approach of Indian courts in addressing the incorporation of emerging and advanced technologies in our everyday lives. As this field of law is still developing, it remains to be seen whether the Indian judiciary will embrace this trend of engaging with novel concepts.

References:

[1] I.A. 3960/2023

Image Credits:

Photo by Aksonov: https://www.canva.com/photos/MAEJTBLx3xI-cricket-on-laptop-live-broadcast/

The court noted that OFS operators use publicly available player names and images to identify players. Thus, the court ruled that no one can own information in the public domain and such information can’t be monopolised or licensed. Since public domain facts cannot be monopolised, a third party’s use or publication for commercial gain cannot afford the plaintiffs a cause of action. With respect to the remedies available for an aggrieved celebrity, the court only cited defamation as a resort. 

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Authors’ Right to Receive Royalty for Underlying Works Recognised at Last

The Bombay High Court recently issued a ruling stating that FM radio stations are required to compensate composers and lyricists for the copyrighted music they broadcast[1]. Through this judgment, the court clarified that after the Copyright Act, 1957 was amended in 2012, making a sound recording available to the public will mean using the musical and literary works that form its foundation.

The longstanding dispute between broadcasters and the authors of underlying works has reached a fair and equitable conclusion, with the latter celebrating the recognition of their rights. In this article, we look at the intricacies involved in the case and analyse the reasoning provided by the court in arriving at its decision.

Case Overview

The Indian Performing Rights Society (IPRS), a copyright society, and Music Broadcast Private Limited, a company which owns and operates the radio station “Radio City”, entered into a licence agreement in the year 2001 to employ IPRS’s library of literary and musical works for FM radio broadcast. Akin to this, Rajasthan Patrika Pvt. Ltd., which operates the radio station “Radio Tadka”, finalised a radio broadcasting deal with the IPRS in 2006. Subsequently, the Copyright Board of India set a mandatory licence price for radio broadcasting under Section 31(1)(b) of the Act. IPAB set the royalties rate while making decisions concerning applications submitted under Section 31D in 2010. The defendant companies and the IPRS were earlier involved in a legal battle over the rights of authors of original works in case the public becomes aware of sound recordings that consist of these original works. In Music Broadcast Pvt. Ltd. v. IPRS[2], it was held that authors of the original works or the underlying literary and musical works that were included in sound recordings did not have the authority to impede the rights of the owners of those sound recordings to share them with the public through radio broadcast, etc.

The issues raised in the matter include: –

  • Whether the defendant companies are required to provide royalties to IPRS for transmitting musical works to the general public through their FM radio broadcast channels.
  • Whether the modifications adopted in the Copyright Act, which took effect on June 21, 2012, have any bearing on the rights of the creators of original works when those original works are included in sound recordings that are shared with the public.

In Entertainment Network India Ltd. v. Phonographic Performance Limited India and Anr[3], and related matters, the Delhi High Court clarified that the IPAB order remains in effect even while an appeal is pending. The court held that no compensation for the underlying works had been provided since the IPAB order was issued and stated that the respondent is entitled to use any available remedies if the IPAB order is not followed. Afterwards, on October 6, 2021, the court released a notice in the public domain seeking feedback from parties interested in fixing royalty rates concerning the underlying works. In a request for an interim injunction, IPRS alleged that the defendants were broadcasting songs from its catalogue without permission. According to IPRS, the Copyright Act underwent significant revisions addressing the rights of the authors of underlying works after 2012.

Contentions of Parties

The IPRS made thorough arguments to convince the court that the 2012 amendment to the Copyright Act, which took effect on June 21, 2012, had fundamentally altered the Act’s structure and supported the claims made in the lawsuits and the requests for temporary relief. According to the argument, the IPRS, which is seeking interim relief in the current applications, cannot be hindered by the legal position established by the Supreme Court in its 1977 decision in the case of IPRS vs. Eastern Indian Motion Pictures Association and others[4], which the Supreme Court and several High Courts later upheld.

The IPRS drew the Court’s attention to the amendments to Sections 17, 18 and 19 of the Copyright Act. Furthermore, the revisions carried a by-product of overturning the legal precedent established by the unaltered Copyright Act, as determined by the Supreme Court in the case of IPRS vs. Eastern Indian Motion Pictures Association and others and subsequent decisions and that the provisions of the unamended Copyright Act had been incorrectly perused by the Supreme Court and erred against the rights of the authors of such underlying works.

On the other hand, the defendant companies asserted that while the Copyright Act has clearly undergone changes since 2012, most of the changes are merely clarifications. It was argued that even if it were true that the revisions were implemented to extend the rights of authors of original works, the objective that the IPRS professes to support had not been achieved. Moreover, the defendants contended that since the 2012 amendment was only clarifying in nature and that since Sections 13 and 14 had not been changed, the adjustment to the other provisions could not have conferred any new substantive rights.

The Verdict

Accepting the contentions of the IPRS, the court stated that the 2012 amendment does “have the effect of creating a substantive right in favour of authors of underlying literary and musical works”. It was pointed out that though Sections 13 and 14 weren’t amended when they were read in conjunction with the amended Sections 17, 18 and 19, it can be seen that there is a “change in position of law brought about in favour of such authors of works”.

In its joint order, the court also concurred with IPRS’s claims that, despite payments made by the broadcasters to the owners of the sound recordings, the broadcast of music by FM radio broadcasters necessitated the payment of royalties in respect of the utilisation of literary and musical works underpinning the sound recordings. In response to the defendants’ claim that sharing the sound recording with the public violates their exclusive right under Section 14(e)(iii) and cannot be interpreted as using the underlying works; the court ruled that sharing the sound recording with the public uses the underlying works because they are integral to the sound recording.

The court held that even though Section 14(e)(iii) does confer an exclusive right upon the defendants to communicate to the public, such exclusive rights are subject to the provisions of the Copyright Act, and on a joint reading of Sections 13(1)(a), Section 13(4), the proviso to Sections 17, third and fourth proviso to Sections 18, and Sections 19(9) and (10) it was interpreted that the exclusive right to communicate sound recordings to the public is dependent on the author’s right to collect royalties.

The court declined to agree that the right to earn royalties would be eliminated because the underlying works are included in the sound recordings because such an interpretation would eliminate the entitlement provided to the authors of the underlying work.

The Bombay High Court concluded that the amendments made to the Copyright Act, 1957 in 2012, which created a substantive right in favour of authors of the underlying literary and musical work, fundamentally altered the legal framework concerning ownership of authors and composers who create lyrics and musical compositions. The court ruled that IPRS is entitled to royalties for the use of literary and musical works included in sound recordings or motion pictures. The court has categorically determined that each time a sound recording is shared with the public through radio stations, it constitutes the utilisation of the underlying literary and musical works for which the authors are entitled to royalties. As a result, the authors of these literary and musical works are qualified to request royalties on each occasion that these sound recordings are shared with the public through radio stations.

Therefore, when a synchronised product (cinematographic film or sound recording) is made publicly available, the creators of those works are entitled to royalties, except for situations when a cinematograph film is shown in a theatre. The defendants have been granted six weeks to comply with the court’s directive and pay the royalties to IPRS in accordance with the order dated December 31, 2020, passed by the former Intellectual Property Appellate Board or else temporary injunctions prohibiting the broadcast of music would take effect.

Outcome

In the Indian copyright system, the problem of royalties faced by creators of the underlying work has been extensively discussed and is the subject of several litigations. There have, however, been undercurrents of a modern interpretation within these orders that held otherwise, disregarding the unanimous nature of these opinions of the law prior to the 2012 revision. The order, as originally intended by the amendment, expressly recognises the rights of the authors of the underlying works. The order underlines a huge incentive to the authors and has received a warm reception from the community. However, the order’s practical ramifications are yet to be determined. The order may be overturned if the appellate authority believes that the IPAB exceeded its power by setting the royalty rates for the underlying work while it is currently pending review.

References:

[1] Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd. (IA No. 9452 of 2022) and Indian Performing Rights Society Ltd. v. Music Broadcast Ltd. (IA No. 1213 of 2022)

[2]Suit No.2401 of 2006

[3]C.O.(COMM.IPD-CR) 3/2021

[4]1977 AIR 1443

Image Credits:

Photo by dotshock: https://www.canva.com/photos/MAAXiQsGTn8-radio-station-microphone/

The Bombay High Court concluded that the amendments made to the Copyright Act, 1957 in 2012, which created a substantive right in favour of authors of the underlying literary and musical work, fundamentally altered the legal framework concerning ownership of authors and composers who create lyrics and musical compositions. The court ruled that IPRS is entitled to royalties for the use of literary and musical works included in sound recordings or motion pictures. The court has categorically determined that each time a sound recording is shared with the public through radio stations, it constitutes the utilisation of the underlying literary and musical works for which the authors are entitled to royalties. As a result, the authors of these literary and musical works are qualified to request royalties on each occasion that these sound recordings are shared with the public through radio stations.

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Facets of Conceptual Similarity and Semantic Similarity in Trademark Infringement Cases

In this article, we aim to anatomize the facets of conceptual similarity and semantic similarity vide the many judgments that have envisaged their principles and other cognate principles that arise when the question of conceptual similarity is effectuated between rival trademarks.

Introduction

The idea that rival marks should be assessed as a whole rather than in terms of their individual components is a well-established and widely accepted tenet of trademark law. Confusion, likelihood, similarity, etc. – these terms are allied to the concept of trademarks. An infringement action calls for a comparison of trademarks based on various factors. One crucial factor, and very often not considered part of strategies, is “conceptual similarity”. A test to the latter’s effect, namely the conceptual similarity test, compares competing marks based on the underlying idea or concept that the marks imply or portray. To portray instances, what has been the idea behind the inception of the impugned mark? Whether solely a word mark has been used or a logo/device has also been attached to the word mark? Like many other facets of trademark law that have been established through judicial acumen, the test of conceptual similarity is also one such. 

Similarity vis-à-vis trademarks: Conceptual Similarity and Semantic Similarity

The concept of similarity is extremely crucial to the edifice of trademark law. As per Section 2(h) of the Trademarks Act, 1999, the marks will be deemed to be deceptively similar if the resemblance is likely to deceive or cause confusion. The said section implies that the resemblance should be such that it produces a hazy understanding of the rival mark being that of the victim mark. While certain marks are visually and/or phonetically similar, some marks do not fall in the latter category; however, they are still considered infringement. Here is where conceptual similarity steps in.

The conceptual similarity test compares competing marks based on the underlying idea or concept they indicate or project. The main issue in such a test is whether or not the average man might be misled or confused by two conceptually similar marks because of their similarity. This concept can be better explained with the help of the Delhi High Court judgment in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd[1].  The marks in the present case were “OFFICER’S CHOICE” and “COLLECTOR’S CHOICE/OFFICER’S SPECIAL”. While a prima facie view herein would indicate a lack of phonetic similarity, the conceptual similarity test brings in a pivotal and exciting aspect to consider the words’ semantic synonymity. Citing the decision in the case of Corn Products v. Shangrila Foods[2] (wherein the marks “GLUVITA” and “GLUCOVITA” were considered), the semantic similarity was relied upon to decide on the basis for infringement beyond the normal binds of visual or phonetic similarity.

The above-mentioned case is a pioneer in the establishment of principles pertaining to semantic similarity. It has, for instance, referred to various case studies, for instance, the “Distinctive Brand Cues and Memory for Product Consumption Experiences[3]“, wherein one line is of utmost relevance to this article – that the conceptual background behind the brand name is what triggers the recollection of memory in a consumer, and not the brand name in itself. Further, the word “Collector” can be seen as a hyponym of the word “Officer”, in common parlance, both signifying a “Person holding an office of authority”.

Thus, since both trademarks in the current case are used in the same context for one single product, that is whisky, when a consumer is forced to decide on a purchase and is presented with the product of the appellant with the mark “Collector’s Choice”, the word “Collector” will cause him to think of the cue “Person holding an office of authority,” which is related to the word “Officer”. This signal may induce the consumer to mistakenly believe that the appellant’s whisky is the respondent’s or cause a false recollection that may confuse consumers. Thus, this concept of semantic synonymy is highly relevant to trademark jurisprudence and can be subdivided as follows.

Expanding horizons of synonymy

The general understanding of synonymy is the phenomenon of two or more different linguistic forms with the same meaning. To this extent, synonymy can further be categorized. For example, synonyms of different degrees signify words with the same (although extended) meanings, but the degree of effectuation differs. For instance, fury, rage, and anger are synonyms with the same extended meaning of emotional excitement induced by intense displeasure. In contrast, anger is used commonly without a substantial degree of intensity, rage focuses on a loss of self-control, and fury empathizes with a rage so violent that it may approach madness. Similarly, are concepts of synonyms with different emotions, styles, collocations, etc.

What becomes vital in each case, thus, is to establish the degree of synonymy with respect to other factors of similarity, which has been highlighted in the recent case of Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors.[4] The court held that conceptual similarity could not be judged in isolation, and the overall phonetic, visual or structural similarity is also required to be seen holistically.

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

Hyponymy & Hypernymy: An extended branch of conceptual similarity

Alongside synonymy are two other important concepts we must look at – hyponyms and hypernyms. As per the Oxford English Dictionary, a Hypernym is a “word with a broad meaning constituting a category into which words with more specific meanings fall; a subordinate”. An example of this effect would be that ‘colour’ is a hypernym of ‘blue’, ‘dog’ is a hypernym of the breed ‘dachshund’, etc. On the contrary, a Hyponym is a “word of more specific meaning than a general or super-ordinate term applicable to it”; for example, ‘Spoon’ is a hyponym for ‘cutlery’, etc. Having a basic conceptual understanding of Hypernyms and Hyponyms, we now look at their relevance in trademark infringement actions.

What hyponyms and hypernyms do is create a sense of inclusion. Sharing a hyponym in the form of a conceptual background would make the consumer think of the same thing, making it harder for him to remember the name of his favoured brand. Similarly, when two or more brand names are similar, for example, men’s perfume brands being called rugged and macho, while the meaning of each of these terms may vary according to the situation, in the context of men’s perfumes, they all refer to masculinity, and hence, are very likely to confuse the relevant category of consumers.

Conclusion

Time and again, courts have taken the lead and strived to bring into the picture the diverse ways trademark infringement can occur. Nevertheless, a restricted and cautious approach must be followed in applying the concepts of conceptual similarity (including hypernyms and hyponyms), semantic similarity and synonymy. Best explained using an example, let us consider the men’s perfume example. Would trademark protection of synonyms cover all equivalent words, preventing the naming of any masculine fragrances after any phrase synonymous with “Tough”? Such situations may lead to malpractices such as monopoly, squatting, etc. Thus, to protect words that share a sense relation, a restrictive application must be made, preserving only those sense relations of the term where the context in which they are applied to the brand name is the same, causing identical concepts to be conveyed to consumers.

References:

[1] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd, FAO (OS) 368 and 493/2014.

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142.

[3] International Journal of Research in Marketing [22 (2005) 27-44].

[4] Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors., CS (COMM) 393/2022 and Crl. M. A. 12694/2022.

[5] Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited, 2019 (80) PTC 491 (Del).

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Photo by Robert Anasch on Unsplash

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

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Application of Prosecution History Estoppel in Trademark Infringement Proceedings

The doctrine of prosecution history estoppel, which was initially prevalent in determining the infringement of patents, also has its uses in trademark infringement proceedings. It prevents individuals from claiming the advantages associated with a right waived on a previous occasion.

When applied to trademarks, the doctrine dissuades applicants from misusing the opportunity bestowed upon them to amend their claims of infringement by relying on the submissions made to the Registry while making the trademark application or during the examination. In this context, it is relevant to understand the estoppel concept, defined under Section 115 of the Indian Evidence Act, 1872. This section states as follows: –

“When one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing.”

Although judges make infrequent use of the doctrine in disposing of trademark infringement cases, its significance in this domain cannot be understated. For instance, this doctrine was applied by the Delhi High Court in Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr.[1] Back when the plaintiff had applied for the registration of the mark ‘ATORVAKIND’, the examiner found that it was similar to the marks ‘ATORKIND’ and ‘ATORKIND-F’. In its reply to the examination report, the plaintiff contended that its mark was different from the cited trademarks. The defence proved that the plaintiff’s reply took the publici juris defence for the term ‘KIND’. Subsequently, the court held that the defendant’s use of the mark ‘MERCYKIND’ did not constitute trademark infringement, and accordingly, the plaintiff’s plea for injunction was dismissed.

Here are some instances wherein the doctrine of prosecution history estoppel can be applied, and prosecution history (I.e., history of the proceedings right from application filing to trademark registration) can be relied upon in trademark infringement cases: –

Trademark includes a generic or descriptive term

If an application is made for the registration of a trademark with a generic or descriptive term, subsequently, the claimant cannot assert in the infringement proceedings that the mark used by the defendant is generic or descriptive. This principle also extends to determining the scope of goods and services. If the claimant in the prosecution stage claims the difference in goods or services compared to another mark, then the claimant can be said to have misclassified the goods at the prosecution stage. However, if the claimant has stated that there exists a difference in goods or services amongst rival companies, then infringement suits will backfire against the claimant.

Failure to make disclosures

Claimants must disclose statements given in the prosecution case that are potentially contradictory to the infringement claims posed in the infringement proceedings. And failure to make said disclosure could lead to the claimant’s incrimination. In some cases, the failure of the defendant to challenge the claimant’s trademarks can lead to prosecution history omission, just as in the Dish TV[2] case.

One can conclude that the doctrine of prosecution history estoppel calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

References:

[1] 2018 SCC OnLine Del 9678.

[2] Dish TV India Ltd. v. Prasar Bharti, 2019 SCC OnLine Del 9141.

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Photo by Clarisse Meyer: https://unsplash.com/photos/jKU2NneZAbI?utm_source=unsplash&utm_medium=referral&utm_content=creditCopyText

The doctrine calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

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Online Gaming: Challenges in Protection of Intellectual Property

IP protection is a crucial aspect of the gaming industry as it helps game developers in protecting their creations and ensures that they receive appropriate recognition and adequate compensation for their work. However, protecting IP rights can prove difficult in the digital world, especially in countries where IP laws are weak or nonexistent.

Introduction

The gaming industry in India has been growing and evolving rapidly over the past few years. According to estimates, the Indian gaming industry was valued at approximately US$1.1 billion in 2020 and is expected to reach US$2.1 billion by the end of this year. The massive growth in this domain could be attributed to the increase in smartphone use, growing middle-class population, easy access to high-speed internet connections, rise in disposable income, expansion of e-commerce, and extensive use of online modes of payments. These factors enable companies and investors to tap into opportunities offered by the industry.

The mobile gaming segment, which accounts for more than 70% of the total market value, is the largest and fastest-growing segment of the country’s gaming industry. Moreover, the esports market is proliferating, driven by investments and recognition of esports as a competitive sport.

Challenges Faced by Game Developers

The exponential progress in the field of gaming has brought about numerous challenges such as complications involved in the protection of Intellectual Property (IP), game cloning issues, etc. With the rise of digital distribution, it has become easier for rogue companies to copy popular games and market them as their own, thereby infringing on the original game’s IP and reputation.

One of the biggest challenges in protecting IP in online gaming is the issue of game cloning. Game cloning occurs when one company creates a copy of another company’s game and markets it as its own. This not only infringes on the original game’s IP, but it can also harm the reputation of the original game and the company behind it. Game cloning is particularly prevalent in the mobile gaming industry, where the low barriers to entry and the ease of access to development tools make it simple for companies to create a copy of a popular game. Game cloning may confuse consumers or users, resulting in a loss of revenue for the original game’s developers. Such cloning also harms the reputation of the original game. In some cases, game cloning can also lead to negative reviews and decreased ratings for the original game, further impacting its business performance and success.

Another challenge in protecting IP in online gaming is the issue of piracy. With digital games, it is easy for users to obtain and share illegal copies of the game, which can result in lost revenue for the game’s creators. This is particularly problematic for smaller game developers, who may not have the resources to invest in anti-piracy measures. While some companies have attempted to use digital rights management (DRM) technology to prevent piracy, this can also make the game less accessible for legitimate users and can result in technical issues.

Protection of Intellectual Property

To combat the challenges of protecting IP in online gaming, game developers can take several steps. Firstly, they can register their IP, including trademarks and copyrights, to have a more robust legal standing in the event of an infringement. Additionally, game developers can invest in anti-piracy measures, such as DRM technology, to prevent the illegal distribution of their games.

Another way to protect IP in online gaming is by enlisting the help of the gaming community and collaborating with its members. Game developers can work with players to report game cloning and piracy instances, allowing them to take swift action to protect their IP. Additionally, game developers can engage with players to gather feedback and improve their games, creating a loyal and engaged community invested in the game’s success.

Conclusion

Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

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Though the challenges of protecting IP in online gaming are complex and multi-faceted, game developers can mitigate these challenges and ensure the success of their games through IP registration, anti-piracy measures, collaborating with members of the gaming community, etc. The gaming industry is constantly evolving, and the challenges of protecting IP in online gaming will continue to change. In this rapidly changing marketplace, game developers must be proactive in protecting their IP to remain competitive and receive the recognition and compensation they deserve.

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Rooh Afza has Immense Goodwill: Delhi HC Rules in Trademark Infringement Case

The Delhi High Court gave its verdict in the trademark infringement battle between Hamdard National Foundation (India) and Sadar Laboratories Pvt. Ltd., and prohibited the latter company from using the mark “DIL AFZA” thereby protecting the trademark “ROOH AFZA”.

In a suit for trademark infringement by Hamdard National Foundation (India) against Sadar Laboratories Pvt. Ltd., the Delhi High Court held that the trademark “ROOH AFZA” possesses immense goodwill and that competitors must ensure that their marks are not similar to it. A two-judge bench, in its judgment[1] held that since the mark “ROOH AFZA” has been used for over a century, it can be considered a strong mark and, thus, restrained the Respondent from using the mark “DIL AFZA” until the suit is disposed of.

Hamdard National Foundation has filed the present appeal against the order[2] passed by a single judge bench of the Delhi High Court on 6th January 2022, rejecting an application for an interim injunction against Sadar Laboratories Pvt. Ltd. Both the marks are used with respect to sweet beverage concentrate. The Appellants claimed that the Respondents were infringing their marks “HAMDARD” and “ROOH AFZA”, and by selling these products under the mark “DIL AFZA,” they were passing off their products as those of the Appellants.

The Single Judge Bench held that the Appellants have to show that “AFZA” has a secondary meaning to claim exclusivity of their product. Therefore, the Court dismissed the application on the ground that they can claim exclusivity only for the mark “ROOH AFZA” as a whole and not just for “AFZA.”

Aggrieved by the order, the present appeal was filed by Hamdard National Foundation seeking a permanent injunction refraining the respondents from using the mark “SHARBAT DIL AFZA” or “DIL AFZA” on the ground that it is deceptively similar to the mark “ROOH AFZA.” The appellants further claimed that the use of this mark would deceive consumers and amount to passing off and also submitted that this would amount to dilution of the Appellant’s mark.

It was claimed that the marks “HAMDARD” and “ROOH AFZA” have been used for a wide range of products and constitute a well-known mark under Section 2(zg) of the Trademarks Act, 1999 owing to their widespread reputation and has therefore acquired goodwill with respect to the class of products pertaining to sweet beverage concentrates.

The Respondent submitted that by virtue of Section 29 of the Trademarks Act 1999, the allegations of infringement are not maintainable. It was submitted that the Appellants do not have an exclusive right over the word “AFZA” and that their mark has been coined by joining the terms “DIL” and “AFZA” and are not phonetically or visually similar. The Respondent submitted that there was no possibility of confusion between the two marks and every other aspect, such as the design and color scheme of “DIL AFZA” is also materially different from the Appellant’s mark. Therefore, there was no possibility of confusion between the two marks.

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. The Court further stated that the use of the word “AFZA” lends a certain degree of similarity, and the trade dress of both products is also similar, making the Respondent’s mark deceptively similar to that of the Appellants.

The Court reiterated that “ROOH AFZA” has been used for over a century and is entitled to protection. The mark is a source identifier with a high degree of goodwill and is susceptible to unfair competitive practices. The Court stated that prima facie, the Respondent’s mark lacks a sufficient degree of dissimilarity and hence set aside the order passed by the Delhi High court and passed an ad interim order restraining the Respondent from manufacturing and selling any product under the mark “DIL AFZA” belonging to Class 32 until the present suit is disposed of.

References:

[1] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Ltd. [Case No. FAO(OS) (COMM) 67/2022]

[2] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Limited [Case No. CS (COMM) 551/2020]

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Photo by Jessica Lewis: https://unsplash.com/photos/qscDBbXBGiI?utm_source=unsplash&utm_medium=referral&utm_content=creditShareLink

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. 

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The Football World Cup: An IP Spectacle

A four-year spectacle, i.e., the FIFA World Cup 2022, which captures the imagination of almost 5 billion people worldwide, kicked off on November 20, 2022. No sport is more globally recognised and played than football, or soccer, as it is known in some parts of the world. Their grandest stage captures the imagination of many a country, with matches being watched with loyal fervour and new demi gods arising out of the tournament whose signing fees for their respective clubs could bankroll a country. But this is the FIFA World Cup at its best.

The tournament does bring about numerous challenges, and one such challenge is the protection of Intellectual Property rights. The tournament has close to 5 billion eyeballs on it; therefore, every brand looks to have a presence due to the tremendous commercial value it provides. FIFA has official partners for broadcasting, hospitality, ticketing, etc., who are recognised as official FIFA rights holders. These right holders make substantial financial investments, and such investments will only be forthcoming if FIFA provides them with the exclusive use of their brands during the tournament.

To ensure the education and protection of intellectual property rights, FIFA has an entire section on its website dedicated to brand protection: https://www.fifa.com/about-fifa/commercial/fifa-marketing/brand-protection. FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

 

The Intellectual Property Guidelines provided by FIFA is an extensive document dealing with numerous aspects of protection. It states that only the official FIFA rights holders can use the official intellectual property rights for commercial purposes. Some of the notable official intellectual property items include the following:

With everyone wanting to celebrate the tournament, there is always a risk of unwanted association with the official intellectual property that may occur. However, the FIFA guidelines show that businesses and the public can use generic football or country-related images and terminology that do not include the official FIFA intellectual property.

 

Additionally, there is also the added problem of ambush marketing. It is a prohibited marketing activity undertaken by brands to unscrupulously take advantage of the event without the authorisation of FIFA. Ambush marketing previously raised its head during the World Cup in Russia. FIFA has sought to prevent such ambush marketing to ensure that the official sponsors are given as much protection as possible.

 

FIFA must be lauded for its efforts to create and enforce intellectual property for a sporting spectacle such as the World Cup, and other sporting event organisers must emulate the measures taken by FIFA to ensure the valuable rights of the sponsors are protected.

 

 

 

FIFA includes several terms and conditions as well as guidelines to protect the investment and exclusive rights granted to their partners and other licensees of the tournament, which include (among others) monitoring and action plans on counterfeit merchandise, ambush marketing campaigns, and social media activity. The rights are actively enforced to prevent misuse and to protect the prestige and value of such a partnership.

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A Perceptive Study of Indian Jurisprudence on the Religious Susceptibility Clause of Trademarks Law

Religion, since time immemorial, has influenced Indian law and society on a political, cultural, and economic level. The country’s rich religious and cultural history has, over the years, been both revered and celebrated around the world.

Our architecture, holy books, epics, symbols, and homonyms all reflect the country’s diverse and rich heritage that encompasses religion. The Indian Constitution further complements this heritage by vesting its citizens with the right to freely profess, practise, and propagate their religion under Articles 25-28,[1] subject to reasonable restrictions.

It is safe to say that religion is deeply intrinsic to Indian society, and inevitably, it has seeped through every facet of the Indian lifestyle, including trade and commerce. Religion, in India, is a sensitive subject, and the use of names of Gods and Goddesses, religious writings, figurines, and scriptures is subject to certain reasonable restrictions under the Indian Constitution as well as other domestic laws, including the trademark law.

Hence, while not entirely forbidden, the proliferation of hypersensitivity with respect to religion and religious scriptures and symbols dictates the jurisprudence around the usage of such marks under the Indian trademark law.

Trademark Law and the Bar of Religion

The use of religious symbols and figurines in commerce and business to draw clients has, over the year, proven to be an effective strategy to encourage growth, considering individuals place a high value on religious symbols and have a solid emotional and spiritual tie to items affiliated with their faith. Such usage, however, is also characterised by the nature of goods and services and the morality or immorality tag duly attached to said goods and services in contemporary society.

Section 9 of the Trademarks Act, 1999 stipulates Absolute Grounds for Refusal of Registration of a trademark.[2] Consequently, Section 9(2)(b)[3] specifically places certain restrictions on the registration of marks that are likely to hurt or insult the religious sensibilities of any class or section of society.

Additionally, the Manual of Trade Marks, Practice and Procedure by the Central Government,[4] in consonance with the provision as has been prescribed under Section 23(1) of the Trademarks Act, 1999,[5] further enumerates a list of notified prohibited trademarks which includes, interalia:

  • Words “Lord Buddha”, “Shree Sai Baba”, “Sri Ramkrishna”, “Swami Vivekananda”, “the Holy Mother alias Sri Sarada Devi”, “Balaji” or their devices and the Emblems of the Ramkrishna Math and Mission or colourable imitation thereof; or
  • Names and pictures of Sikh Gurus, viz. Guru Nanak, Guru Angad, Guru Amar Das, Guru Ram Das, Guru Arjun Dev, Guru Hargobind, Guru Har Raj, Guru Harkrishnan, Guru Tegh Bahadur and Guru Govind Singh;
  • Name and picture of Chhatrapati Shivaji Maharaj;
  • Name and/or picture of the deity of Lord Venkateswara and/or Balaji.

Indian Jurisprudence and the Contours of Religious Susceptibility

The use of names of Gods or Goddesses, religious symbols or figurines per se is not prohibited under the provisions of the Trademarks Act, 1999.[6] In Vishnu Cement v. B.S. Cement Private Ltd.,[7] for instance, the word “VISHNU” was granted registration in the absence of any device of Lord Vishnu, associated with the word mark, by associating the word mark with a personal name, and not a religious sentiment. Again, in Mangalore Ganesh Beedi Works v. District Judge,[8] a relatively liberal approach was taken by the Allahabad High Court in allowing the proprietor to use the trademark ‘GANESHA’ on beedi packets.

However, such usage in relation to certain goods or services may offend the religious sentiments of certain sections of society. In these situations, such marks would fall within the ambit of marks not eligible for registration. For instance, a trademark carrying the name and image of Goddess Meenakshi regarding fertilisers and manure was revoked under the erstwhile 1958 Act.[9] Similarly, in Amritpal Singh v. Lal Babu Priyadarshi[10] the mark RAMAYANA was found incapable of registration. The case acted as the first instance of a blanket restriction being imposed on the registration of the name of a religious book by interpreting the provisions under Section 9(2)(b) of the Trademarks Act, 1999, stricto sensu.

Interestingly, in all these cases, the courts have cited the need to prevent the monopolisation of names of gods and religious symbols and figurines, adding that these words lack enough distinctiveness and merely qualify as common words, which should not be allowed for registration. The Bombay High Court recently refused registration to the word “LAXMI,” citing the aforementioned, on the grounds that it was a common name and thus lacked any distinctiveness to merit registration.[11]   

It is pertinent to note from the aforesaid that the courts have refrained from defining strictly measurable thresholds when it comes to dealing with marks that might have a religious connotation, which is fair and understandable to an extent, considering the sensitive nature of such cases. However, the lack of consistency in the reasoning cited behind these decisions has raised some eyebrows, and the conflicting decisions have left much to be desired.

More recently, the Kerela High Court granted the Attukal Bhagawathy Temple Trust the registration of the “picture of Attukal Deity” and the title “Sabarimala of Women” under Class 42 – a residuary clause (for temple services, social services, welfare services, and cultural activities), citing the need to “prevent unauthorised use of the deity’s picture and title.”[12] The case stands as one of a kind, where a temple trust has been granted registration for carrying out services corresponding to the temple and in the name of a particular religion and goddess, thereby risking the exclusion of an entire sect of devotees from using the picture and title of their beloved deity.

While the grant of such a registration might be in contravention of Article 25 of the Indian Constitution, the decision also sets out a dangerous precedent, risking the monopolisation and commercialisation of services and other activities carried out in the name of faith, which is in stark contrast to the general position portrayed under the Trademarks Act, 1999, and the spirit of secularism as a whole.

 

Conclusion

While the intention behind the courts not defining a straight-jacket formula while dealing with marks that might have a religious connotation is laudable, considering the sensitive nature of such cases, the inconsistency behind the reasoning cited in some of these cases leaves a lot to be desired.

The use of names of Gods, Goddesses, religious writings, figurines, and scriptures is generally publici juris,[13] and registration of the aforesaid should be allowed only in exceptional cases where the prima facie evidence in favour of the usage by the proprietor is so strong in the public mind that the mark could be deemed to have garnered secondary distinctiveness, to the exclusion of all other parties, bar the proprietor.

No doubt, commercial interest forms the cornerstone of business in the contemporary world, but it’s important to remember that religion and business often don’t go hand in hand, and such commercial interest shouldn’t come at the cost of compromising the religious sentiments of the masses.

References:

[1] India Const. Arts. 25-28.

[2] The Trade Marks Act, No. 47 of 1999. India Code, § 9.

[3] The Trade Marks Act, No. 47 of 1999. India Code, § 9(2)(b).

[4] Manual of Trade Marks, Practice and Procedure by the Central Government, accessible at:  https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf.

[5] The Trade Marks Act, No. 47 of 1999. India Code, § 23(1).

[6] S.P. Chengalvaraya Naidu v. Jagannath, (1994) 1 SCC 1 (India). See also, Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 555 (India).

[7] Vishnu Cement v. B.S. Cement Private Ltd., 1998 (18) PTC 130 (India).

[8] Mangalore Ganesh Beedi Works v. Union of India, (1974) 4 SCC 43 (India).

[9] Sri Meenakshi Tamil Nadu Appl. 1976 IPLR 144 (India).

[10] Amritpal Singh v. Lal Babu Priyadarshi, (2015) 16 SCC 795 (India).

[11] Freudenberg Gala Household Product Pvt. Ltd. v. GEBI Products, MANU/MH/1859/2017 (India). See also, OM Logistics Ltd. v. Mahendra Pandey, 2022 SCC OnLine Del 757 (India) [Registration for the term ‘OM’, was refused] & Shree Ganesh Besan Mills v. Ganesh Grains Ltd., 2021 SCC OnLine Cal 3068 (India) [Registration for the term ‘GANESH’, was refused].

[12] Suo motu Proceedings v. Controller General of Patents, Design and Trademarks, 2013 SCC OnLine Ker 24367 (India).

[13] Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd., CS (OS) No. 107/2010 (India). 

It is safe to say that religion is deeply intrinsic to Indian society, and inevitably, it has seeped through every facet of the Indian lifestyle, including trade and commerce. Religion, in India, is a sensitive subject, and the use of names of Gods and Goddesses, religious writings, figurines, and scriptures is subject to certain reasonable restrictions under the Indian Constitution as well as other domestic laws, including the trademark law.

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Fluid Trademarks- A Brand’s Alter Identity

Recently in September, 2022 Amul- the most prominent dairy brand in India released a doodle, featuring the famous “Amul girl” celebrating the return of eight Cheetahs in the Kuno National Park, Madhya Pradesh. Over the years, the Brand has managed to position Amul Butter as a household staple through its alternate identity- Amul Girl. The Mascot regularly makes clever puns on the day-to-day political and policy developments while communicating their product’s “utterly butterly deliciousness”.

Fluid Trademarks- A Brand’s Alter Identity

                                                                        Fig: The recent Amul Doodle[1]

Creativity involves breaking expected patterns to look at things differently. The notion of being creative and deploying “out of the box” marketing strategies to drive brand and consumer growth is not a new concept. The ever-increasing competition and the digital revolution have forced brands to go out of their way to stay afresh and ahead of the competition while maintaining their brand identity.

Fluid Trademarks are a relatively new, up-and-coming category of marks that businesses are increasingly using to differentiate their brands and products from the competition. The Morehouse defence[2] (along with Section 43(a) of the Lanham Act)[3]  defines fluid trademarks as marks that change over time (with respect to the original or registered mark) to increase customer engagement. Albeit not explicitly defined, the defence serves as an equitable doctrine that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and for which registration has not been challenged.”

 

What are Fluid Marks?

 

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

Many brands frequently deploy such marks to commemorate certain special occasions or landmark happenings, enabling them to keep in touch with the ongoing trends and strengthen brand awareness by promoting interaction with the consumers.

For instance, Google’s ‘Doodle’ could be termed the quintessential fluid trademark, where different variants of the Google logo have been used over the years to mark or memorialise national/international events and festivities. Absolut Vodka is another brand that has been commercialising various iterations of its mark by launching special edition bottles to commemorate events. Some other examples of Fluid Marks being deployed by renowned brands in their marketing strategy include Nike’s ‘Just Don’t Do It’ Swoosh, BMW’s spaced logo citing ‘thanks for keeping distance’ during Covid-19, and Starbucks’ ‘Masked Mermaid’.[4]

While it is appreciable that brands are deploying newer strategies to connect with their consumers, the use of Fluid Trademarks presents some pertinent roadblocks when it comes to IP protection that these brands need to take note of.

 

Protection of Fluid Marks

 

Although there are no explicit provisions or synonymous precedents citing protection for fluid trademarks in India, registering each iteration of the base mark, which would just be deployed occasionally by these brands, would not make much business sense since it would not be cost-effective in the long run.

Section 15 of the Trademarks Act,[5] 1999 accords protection for a series of trademarks, but it is pertinent to highlight here that the section is effective only when all the variants of the base mark could be anticipated in advance,[6] which is not the case with Fluid Trademarks because of their dynamic nature.

Existing commercial identity and recognition of the base mark do accord common law protection to Fluid Marks. Still, it is pertinent for brand proprietors to consider the following essentials while endeavouring for the protection of Fluid Trademarks:

  • Protection for Unregistered Marks: Regardless of whether the brands have moved towards protecting their ‘fluid’ marks or not, the common law still subjects these marks to some sort of protection. In Proctor and Gamble v. Joy Creators,the Delhi High Court held that explicit resemblance need not be a ground to constitute an infringement of the trademark. Substantial resemblance to the primary features of the mark in question might be enough criterion to accord protection to the primary mark.
  • The Degree of Variation: The degree of variation of the base mark should be such that the mark retains its source-identifying features while simultaneously being different enough to command distinguished protection. The public should be able to identify the brand owner based on such iterations of their marks.
  • Likelihood of Confusion: Multiplicity of the base mark to an extent, such that it loses its source-identifying features, might expose the base mark to losing its distinctiveness, thereby putting the base mark at risk of not being synonymous with the proprietor anymore. Hence, the source-identifying features of the base mark should remain intact in the fluid mark to enable the public and trade to associate the fluid mark and the base mark with the proprietor.
  • Copyright Protection: Newer and fundamentally distinct iterations of the base mark may be afforded special protection under the Copyright law since the brands would be subjected to certain rights for their marks even if they are not registered. However, in establishing whether the proprietors would be entitled to a copyright on the mark, the burden of proof shall lie entirely on the proprietors themselves, and hence it would be advisable to maintain a record of the entire creative process, artwork and other resources, that went into the creation of the mark, to establish ownership.
  • Continuing Commercial Use and Identity: The base mark should be subject to constant and uninterrupted commercial use, and there should be no demonstration of abandonment of the base mark. While the base mark should be distinctive and recognised across the market, the unregistered ‘fluid mark’ should also be inherently distinctive and have acquired a secondary meaning within the public.[7]

The importance of having the base mark registered for the fluid mark to have any chance of protection was highlighted in the recent case of McGurr v. North Face Apparel Corp.[8], where the US-based artist, Futura, was denied protection for his recognisable, signature stylised atom design because the base mark, i.e., the shape of an atom, was not registered. The District Court for the Central District of California noted that legally recognising fluid trademarks “would give new meaning to federal trademark law with far-reaching consequences.” The court rather recognised copyright law as a more robust source of protection for entities facing similar situations.

 

Conclusion

 

Fluid Trademarks might be the future of brand building. They have indeed emerged as an excellent tool for businesses across the globe to engage and interact with their customers while simultaneously allowing them to keep in touch with ongoing trends. But as long as the legislature or the judiciary steps up and develops a robust set of guidelines for their protection, it would be feasible to work with an experienced IP attorney who could assist applicants to come up with a smarter plan of action for the protection of their dynamic and ‘fluid’ marks.

References:

[1] https://indianexpress.com/article/trending/trending-in-india/amuls-latest-topical-celebrates-arrival-of-big-cats-in-india-8158728/

[2]  Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (United States).

[3] The Lanham Act, 1946, § 43(a), 15 U.S.C. §§ 1051-1141 (2006).

[4] These famous logos have been remade for the Coronavirus Age, Media Marketing, Accessible at: https://www.media-marketing.com/en/news/famous-logos-remade-coronavirus-age/

[5] The Trade Marks Act, No. 47 of 1999. India Code, § 15.

[6] Draft Manual of Trademarks, 2015. Accessible at: https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf

[7] Louis Vuitton Malletier v. Dooney & Burke, Inc, 454 F.3d 108 (2d Cir. 2006) (United States).

[8] McGurr v. N. Face Apparel Corp., 2021 U.S. Dist. LEXIS 196568 (United States).

Image Credit: Photo by Eva Bronzini

Fluid Trademarks essentially serve as an expansion of the base marks, which are registered and known to the public. What makes these marks “fluid” is the interplay between different iterations of the base mark, which is characterised by the use of creative yet diverse graphical and visual components while maintaining the core features of the base mark.

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