Delhi HC: the defense of generic term for trademark infringement will be applicable only when it is proved that the term is generic with respect to the particular product
The Delhi High Court (“Delhi HC”), in the case of Telecare Network India Pvt. Ltd. (“Telecare Network”) V. Asus Technology Pvt. Ltd (“Asus”), passed a judgment restraining Asus from selling mobile phones and other mobile accessories using the marks ‘ZEN’ or ‘ZENFONE’ owing to the of non-generic character of such marks.
In the present case, Telecare Network who is the registered owner of trademarks similar to “ZEN” and “ZENFONE” filed a suit for infringement and passing off seeking permanent injunction and damages under the Trade Marks Act, 1999.
Telecare Network, while relying on the commercials of the respective mobile manufacturers contended that Asus was using marks ‘ZEN’ and ‘ZEN MOBILE’ identical to the registered trademarks in the same class of goods i.e mobile phones falling within the same price range as well. It was submitted that all these factors put together imply mala fide intention on part of Asus to ride on the reputation and goodwill of the Petitioner by deceiving the public.
On the other hand, Asus contended that the contended marks were not registered as trademarks but as device/label marks. As the mark ‘ZEN’ arises from the Zen Philosophy in Buddhism it is generic and common to trade practices. Therefore, Asus submitted that Telecare Network cannot claim monopoly over such generic terms and device/label marks.
After hearing both the parties and examining the cases cited, the Delhi HC held that though the mark ‘ZEN’ is generic arising from the school of Buddhism it is not generic for mobile phones/accessories. Thus, Telecare Network is entitled to protection for these marks even if they have not attained any trade significance. The Delhi HC also held that though Telecare Network had registered trademark without particular protection to specific composite elements of it, it does not entitle Asus from committing passing off on the grounds that such elements are label marks.
Accordingly, an order was passed restraining Asus from selling, offering for sale and advertising mobile phones/ accessories under the trademarks ‘ZEN’ and ‘ZENFONE’ or any other identical/deceptively similar mark.
Quick View:
The judgment finds a balance between two principles in trademark law- generic terms/ phrases common to trade practices cannot be granted exclusive monopoly rights and trademarks are entitled to protection against passing off even though certain elements of the marks may not be completely protected.
While deciding any suit of passing off/infringement of some generic terms, the courts take into account the similarities between the two marks especially such as the class of goods they belong to and the price range, which may contribute to creating confusion in the minds of the public. Consequently, any such acts of passing off or infringement threatening the reputation/goodwill of the trademark will attract liability under the law.
DPIIT seeks to amend Copyright Rules to improve access to digital content
The Department for Promotion of Industry and Internal Trade (“DPIIT”) proposes to introduce the Copyright Amendment Rules, 2019 (“Amendment Rules”) in order to ensure smooth and flawless compliance of the Copyright Act, 1957 (“Act”), keeping in view the recent technological advancements in the digital age. This move was made in order to widen the ambit of the current copyright framework that covers only radio and television broadcasters, so as to include digital broadcasters as well and bring it up to par with other relevant legislations.
At the moment, the Act is conducive only for TV and radio broadcasting firms, who receive permission from the owners and either negotiate a price bilaterally, or through the Intellectual Property Appellate Board (“IPAB”) under section 31D of the Act.
Some of the key highlights of the Amendment Rules are as follows:
- The new rules will now require all broadcasters, not restricted to television or radio, to obtain compulsory licenses of copyrighted material from the content owners.
- Further changes are made in the manner in which copyright societies fix their tariff schemes, whereby it is mandatory for copyright societies to publish a transparency report at the end of each financial year. This report will contain information on refusals to grant licenses, description of its legal structure and the activities of the society in a given financial year.
Quick View
The amendments to the existing Act provide relief to digital broadcasters following the recent Bombay High Court judgment that held that section 31D of the Copyright Act would not apply to internet broadcasting firms. The judgment prevented an online streaming platform from applying for a statutory license under the section, leaving all digital broadcasters at a loss.
In the current digital era, where majority of the media is consumed over OTT platforms rather than through traditional broadcasting, to the point where the future of traditional broadcasting remains questionable, the draft rules were more in the nature of a necessity than a boon. Following public comments and approval, all that remains is having the rules implemented in order to facilitate internet broadcasters to provide better content, while being statutorily protected and enriching the public at large.
Disclaimer: This post has been prepared for informational purposes only. The information/or observations contained in this post does not constitute legal advice and should not be acted upon in any specific situation without seeking proper legal advice from a practicing attorney.