FOREWORD BY EDITOR, ANDREW CHILVERS
Intellectual property and the challenges of globalisation
When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.
The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.
Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.
Do you see any emerging trends or potential upcoming developments in your country’s trademark law?
The past few years have been eventful in India from an IP perspective. Realising that commercial disputes needed to be resolved quickly, new specialist commercial courts were created in 2017. These Courts exclusively handle commercial disputes – including IP and follow modified strict rules of procedure for faster adjudication. In most cases, it is now possible to obtain judgement within 12-18 months. In addition, because courts have greater discretion in awarding damages and costs, there has been chilling effect on traditional copycat infringers. This has certainly been a positive trend.
Another great positive over the last year is the increased efficiency of the Indian Trade Marks Registry. The office is now completely digital, and it is possible to file and fully prosecute trademark applications online. Physical documents are rarely required – saving both time and cost.
The registration timeline has also shortened considerably and it is now possible to achieve registration in as little as 8 months. This is certainly an immensely significant development from an enforcement perspective in this digital world.
From an enforcement perspective, the most significant developments centre around the use and abuse of trademarks over the Internet – especially Internet sales. With e-commerce platforms blooming, the roles, responsibilities and liabilities of intermediaries, sellers and intellectual property rights holders have been called into question in a number of cases. In particular, questions surrounding intermediary liabilities and immunities are being raised. Courts have been proactively developing jurisprudence to suit India’s unique e-commerce system and we believe that this area will remain a primary focus for some more time.
In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?
India is a common law jurisdiction where codified law – The Trade Marks Act, 1999 – and common law principles equally apply. Consequently, protection is afforded to both registered and unregistered trade marks. Owners may also choose between civil and criminal remedies – although civil remedies are the norm.
The owner of a registered trademark can sue for infringement, passing off and unfair competition. Infringement is the violation of the exclusive right granted to a registered proprietor under the Trade Marks Act, 1999. A registered trademark is infringed when an unauthorised person subsequently uses an identical or confusingly similar mark for identical / similar goods or services.
Because India follows common law, rights in a trademark accrue through use. Use has an expanded meaning in India and includes direct or indirect advertising and promotion, trans-border and spill over use, direct marketing and sale in India, etc. Accordingly, a registered proprietor who has commenced use of its mark may also concurrently sue for passing-off and unfair competition against a subsequent user.
Owners of unregistered marks may only sue for passing off and unfair competition.
In both cases, owners may obtain permanent injunctive relief along with damages or accounts for profits, delivery of the infringing goods for destruction and legal costs. Courts may also award punitive damages for wilful infringement.
Courts will also grant interim relief to owners either through ex-parte or ad-interim injunctions. “Anton Pillar” orders for search and seizure of infringing / violating goods and books of accounts are often granted.
Criminal Penalties for the offences of cheating and counterfeiting are also applicable in some cases of wilful violation of registered and unregistered trademarks.
How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?
Digitalisation has really transformed the way business is conducted in India. E-Commerce has exploded and the majority of urban consumers in India prefer to shop over the Internet. India now has many e-commerce platforms selling all kinds of products.
Due to India’s e-commerce laws, most e-commerce platforms such as Amazon, Flipkart, etc. operate as online marketplaces and are prevented from direct retailing. This creates a unique problem because the platforms operate only as conduits between buyers and individual sellers. They cannot effectively control or verify the authenticity or quality of all products sold over their platforms. Consequently, the sale of counterfeits has increased substantially in the past few years. In addition, it is becoming more difficult to locate sellers because it has become easier for them to shield their true identities over the Internet.
We have also noticed that it has become easier for infringers to exaggerate their capabilities and expand their reach through the Internet – at very little cost. For example, infringers are able to set-up fairly sophisticated and elaborate websites relatively cheaply that can cause immense damage to clients.
These changes require a more sophisticated approach to infringement and we have developed some digital forensic capabilities to track and trace suspicious operations over the Internet. We are also able to obtain ‘john doe’ orders from Courts that direct ISPs’ to block infringing websites.
From a protection perspective, we study our clients’ operations and advise them on obtaining the maximum protection by registering their marks in all appropriate categories of goods / services.