Whether a tread pattern on Tyre can be considered as shape of goods in trade mark sense?

As an IP lawyer, while reading a recent judgement of Hon'ble Delhi High Court in a case of Apollo Manufacturing Co. Vs. Anil Moolchandani reported in 2017 (72) PTC 253 [DEL],  an interesting issue in respect of 'tread pattern' of tyre  considered as shape of goods for passing off action has come across. Let me discuss it herein after. In this Case Ex- parte injunction is passed against the defendant by the Court and it is confirmed .

Facts of the Case:

The plaintiff company is a manufacturer of tyres. Apart from the facts related to the involvement in tyre business of the plaintiff  since ages, the main fact of the case of the plaintiff is that  tread pattern is prominent distinguishing feature of a tyre as it is the only feature through which a black coloured tyre is different or distinguished among all black coloured tyres of trucks. Such tread patterned tyres for trucks are sold under name of ENDURANCE LD 10.00 R 20. Further, it is the case of the plaintiff that tread pattern for tyres  adopted by the defendant under the name of HI FLYHH505 is identical to that of the plaintiff resulting the act of passing off as the defendant is violating the goodwill and reputation of the plaintiff.  That the defendant is in the same business and is well aware about  the plaintiff. It was further case of the plaintiff that the defendant is selling tyre in Delhi through one Rajasthan Trading Co. by using identical tread pattern in respect of tyre.

Arguments on behalf of the plaintiff:

The argument of the plaintiff is that as per the provisions of Section 2(m) i.e. definition of 'Mark' includes shape of goods. Section 2 (zb) is the definition of trade mark which may also include shape of goods. It is further submitted that the tread of pattern on tyre is a shape which qualifies as a Trademark.  As the plaintiff invented and adopted such unique pattern first, he is entitled to be protected. Based on the contentions of affidavit of an expert in the field of polymer science which shows similarities between two designs I.e. tread pattern on tyres of the plaintiff and of the defendant.

 The plaintiff has relied upon the following judgements.

1) MRF Limited vs. Metro Tyres Limited , 1990 (10) 101 Mad.

2) Anglo-Dutch Colour and Varnish Works Private Limited vs. India Trading House, 1984(4) PTC 54 (DEL) 

3) Vicco Laboratories , Bombay vs. Hindustan Rimmer, AIR 1979 DEL 114.

4) Zippo Manufacturing Company v. Anil Moolchandani, 2011(185) DLT 51: 2011 (48) PTC 390.

Arguments on behalf of the Defendant:

The argument of the defendant is that Delhi Court has no jurisdiction as the defendant is situated in Mumbai and it has no office or branch office or other business entity in Delhi within the jurisdiction of Delhi Court, nor does the defendant supply its goods in Delhi and hence, the product of the defendant is not sold in Delhi. Referring to the affidavit of person of Rajasthan Trading co, it is argued that it is mentioned in the affidavit that that Trading Co. has no business connection with the defendant of this Case. Further, the website of the defendant accessed from Delhi is not interactive and it does not offer the products of the defendants for sale on internet. Further, the point of suppression of material fact is raised by the defendant. The suppression is that defendant no. 1 was a dealer for Apollo and Kazen tyres till May, 2015. On termination of plaintiff's dealership, the plaintiff has filed the present suit for taking revenge. Further, the argument of the defendant is that tread pattern is a registerable design which can be protected under Design Act. As the plaintiff has not registered the said design under Design Act, he has no exclusive right over the tread pattern in dispute.The defendant also took defence of section 2 (d) read with Section 15 of the Design Act, 2000. 'Common to trade' is one of the defences of the defendant. Several others manufacturers are also using similar tread pattern for tyres in the market openly. The defendants have also produced a list of manufactures from China who are selling tyres in India and several photographs. The defendants also show dissimilarities of the products of the plaintiff and the defendants. it is also argued that tread pattern is dispute is functional part in nature and they are provided for better grip of the tyre on road and stability to the vehicle while driving. Further, the plaintiff itself have averred that tread pattern is functional so no ownership right can be claimed. Section 9 (1)(b) and Section 9(3) of the Trade marks Act, 1999 is also a part of argument of defendant. The defendants have relied upon the following judgements.

1)Ram Krishan & Sons Charitable Trust vs. IILM Business School, I.A. No. 8445/2007 in C.S. (O.S) No. 1308/2007 Delhi High Court.

2).Rajappa Hanamantha Ranoji vs. Sri Mahadev Channabasappa & Ors, 2000 (4) Scale 692. ( on suppression )

3) Satisk Khosla v. M/s. Eli Lilly Ranbaxy Ltd. & Anr. 71 (1998)DLT1 (DB) ( on fraud )

4)Smithkline Beecham Consumer Healthcare Ltd. vs. G.D. Rathore & Ors., 2002 (25) PTC 243 (Del) ( on fraud).

5) Lego Juris A/S v. Office for Harmonisation in the International Market (Trade Marks and Designs) (OHIM)  (European Court) ( on  products result from nature of goods) 

6) Phillips Electronics NV vs. Remington Consumer Products Limited ( judgement of Supreme Court of England)

7) Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 (Hon'ble SC observed that" in passing off action , the defendant may escape the liability if he can show that the added matter is sufficient to distinguish his good from those of the plaintiff.")

Plaintiff's Rejoinder Arguments: 

It is argued that from all black coloured and round shaped tyres, it is only tread pattern which is able to identify and distinguish the one tyre manufacturer from that of another. Further, the functional part is groove in a tyre, however, tread pattern is ornamental. Reliance is placed on judgement of English Court in a case of Cow (P.B.) & Coy Ld. v. Cannon Rubber Manufacturers Ld. 1959 (9) RPC 240 against the defence raised by the defendant that tread pattern is functional and it cannot be protected. It is further submitted that it is due to the long use of design, such design becomes source identifier and therefore, it is entitled to be protected as a tread mark. The rest of the arguments are made against the other defences which is not core point of this Article, hence, for the sake of brevity, I am not going to deal with them here in this article.

Order passed by Hon'ble Delhi High Court:

In view of the facts and law related to the issued involved, Hon'ble High Court has passed an Order by observing that though there was termination of the distributorship of the defendant, the defendant, even after that termination, continues the sale of the tyre with the identical tread pattern which creates confusion in the mind of the customers as mentioned in paragraph no. 70 of the judgement. Secondly, relying upon the judgement of Full Bench in a case of Mohan Lal, Proprietor of Maurya Industries v. Sona Paints and Hardware reported in 2013 (55) PTC 61 (DEL) FB,( paragraph no. 22), Hon'ble Delhi High Court in paragraph nos. 75 to 77 of the present case, has not considered the defence of the defendants that the tread pattern is registerable as a design and when it is not registered by the plaintiff, the plaintiff has no exclusive right over disputed design. Considering the ratio laid down in the cited judgements, the Hon'ble Court is of the opinion that the shape of goods could have trade mark significance i.e.  particular shape of goods can be a source identifier of the goods and therefore,  the defense that tread pattern on a tyre constitutes a design registrable becomes meritless  as mentioned in paragraph no. 81 of the judgement. The defense regarding trade pattern is functional is not accepted by Hon'ble Court in the case of passing off action as mentioned in paragraph no. 82. The Court is of the view that the tread pattern is used as a source identifier in tyre industry by all manufactures and therefore when it is a source identifier, it is a trademark. In paragraph no. 113, relying upon the test laid down in Satyam Infoway Ltd by Hon'ble Supreme Court , the  Hon'ble Delhi High Court is of the opinion that the goodwill and reputation of the plaintiff in respect of the tyre in question is, prima facie, well established on the basis of considerable sales with regard to truck tyre in question and thereby confirmed the Ex- parte injunction granted in favour of the plaintiff and rejected the application filed by the defendant under O. 39(4) of CPC.

My Opinion:

First of all this case is of passing off action of tread pattern of a tyre under the provisions of Trade marks Act as in this case tread pattern is considered as shape of tyre or on tyre. Before I give my opinion, there are a few questions arise in my mind while reading this judgement.

1) Whether a thread pattern can be considered as shape of goods for being protected under the trade mark Act for the relief of passing off action ?
2) Whether a definition of trade mark or mark includes a tread pattern in the name of shape ?
3) Whether a classical trinity or ingredients of passing off action are satisfied in this case for passing off of tread pattern ?
4) Whether a tread pattern can be called a shape of tyre in general sense apart from trade mark sense ?
5) Whether a tyre of plaintiff company is sold by 'tread pattern' among people ?
6) Whether a test of goodwill and reputation is only considered by way of producing voluminous sales ?
7) Whether people at large are really aware of the 'tread pattern' while buying vehicles using tyres  or tyres separately of plaintiff company ?
8) Whether a 'tread pattern' can be considered as 'source identifier' for protection under trade mark Act ?
9) Whether a person who fails to be protected under Designs Act can be protected under Trade marks Act for passing off action ?
10) Whether 'shape of goods' can be considered under Designs Act ?
11) Whether a proprietor of  registered design, during the period of registration and thereafter be protected under trade marks Act for passing off action ?

To deal with this judgement, it is required to know what a tread pattern is.

 First of all a tread means the thick moulded part of a vehicle tyre for gripping the road as per the Oxford dictionary.
Now pattern means a repeated decorative design of a random combination of shapes or colours on a design as per the  Oxford dictionary.

As per the case of the plaintiff the in paragraph no. 6 of the judgement, the tread pattern on tyres is one of the most important factors to make the tyres stand out in the showroom or tyre shops. The tread affords necessary grip between the tyre and ground during movement of the vehicle and it is only due to the tread pattern the tyre is known or differed from company to company. Here my question is that  whether plaintiff has  produced  any documents establishing  that its tyres are sold only due to specific tread pattern ? The answer is NO.  Or whether it has come up on record though  the voluminous sale bills that the tyres are sold due to specific tread pattern ? The answer is NO. As per paragraph no. 9 of the judgement, sales and advertisement expenses are in crores however, the tyre ENDURANCE LD 10.00 R 20 is mentioned in sales. But by these records of bills it is not proved that the tyres of the plaintiff is sold due to the thread pattern only and it is one type of grip for protection so how can tread pattern be considered as essential feature as the tyres are sold under the name ENDURANCE LD 10.00 R 20  even though such pattern is displayed in advertisement ?

In paragraph no. 15 the submission for the plaintiff is that as per the definition of  'mark' and 'trade mark' include 'shape' and tread pattern on tyre is a shape and hence it qualifies a trade mark for protection. In my opinion, with due respect, the plaintiff has tried to be protected under trade marks Act as he is not registered under the Designs Act . Other wise if tread pattern is considered as shape of tyre then tyre has already has circle or round  shape. The definition of Design under Section 2(d) of Designs Act, 2000 includes shape, pattern, ornament or composition of lines or colours applied top any article which does not include any trade mark. Here a tyre is an article and tread pattern on it is just design or pattern or composition of lines and not more than that. As per this definition tread pattern does  not cover under the definition of mark or trade mark in Trade mark sense. Now as per definition of mark i.e 2(m) of the Trade marks Act, 1999, shape of goods can be considered as 'mark' but here in this case the goods is tyre and shape of it is circle or round, As per Section 2 (zb), shape of goods may include, and not must include, moreover, the entire definition of trade mark is required to be read as a whole  and therefore 'tread pattern' on tyre can not be considered as 'shape' Moreover, 'pattern' on tyre can not be considered as 'shape' and therefore, I disagree with the submission made in paragraph no. 15 on behalf of the plaintiff.

In paragraph no. 48 the submission is that the plaintiff has established goodwill and reputation of its trade mark in question by showing voluminous sales figures of tyre ENDURANCE LD 10.00 R 20 , however, the plaintiff is silent about the point that whether  goodwill and reputation is based on 'tread pattern' on tyre or not and it is question that in sale bills whether tread pattern is mentioned or not. It is possible that use of the trade mark can be established by voluminous sale invoices but goodwill and reputation are something higher factor for passing off case on the bases of shape of goods and therefore, contention of paragraph no. 49 where in the plaintiff relies upon the judgement of Hon'ble Supreme Court in case of Satyam Infoway Ltd v. Sifynete Solutions Pvt Ltd reported in 2004 (28) PTC 566 (SC) is not applicable as it was the case in respect of domain name and not shape of goods.  The question before Hon'ble Supreme Court  in that case is whether a domain name can be considered as trade mark or not. The issue is totally different in that case than that of the present case.

In my opinion if there are more than one tyres in a shop without name or wrapper of any brand , and if a customer is able to recognise the tyre of the plaintiff by 'tread pattern', goodwill and reputation of  such tread pattern on tyre is required to be considered otherwise not.

In paragraph no. 68 Hon'ble Delhi High Court is rightly of the opinion that suppression or misstatement should relate to a relevant and material fact. A trivial or minor falsity in drafting of pleadings does not have any effect of changing the case.

Referring to paragraph no. 72, the Hon'ble Delhi High Court has relied upon the Case of Midas Hygine Industries (P) Ltd vs. Sudhir Bhatia reported in (2004) 3 SCC 90 to conduct the issue of delay and latches, it is true that in paragraph no. 5 of Hon'ble Supreme Court has laid down the ratio that in the case of infringement of trade mark or copyright injunction must follow and mere delay in bringing action is not sufficient to defeat grant of injunction, however, with due respect, I say that the case in hand is for passing off action of shape of goods, there is no case of infringement than how this judgement is applicable is a question. Normally in the case of passing off , delay and latches are required to be considered.

Referring to paragraph nos. 75, the paragraph no. 22 of  the judgement of  Full Bench of Hon'ble Delhi High Court in a case of Mohan Lal, proprietor of Maurya Industries vs. Sona Paints and Hardware, 2013 (55) PTC 61 (Del) is relied by Hon'ble Delhi High Court in present case answering the defence raised by the defendant that 'tread pattern' is registerable as a Design and the same is not registered as a Design and therefore, no exclusive right can be claimed by the plaintiff. I fully  agree with the ratio laid down by Full Bench. However, in paragraph no. 34 of the judgement, there is condition precedent that the plaintiff must prove the essential ingredients of passing off action to establish the case of passing off action of unregistered design or a design used as a trade mark.  Moreover, in the case in hand 'tread pattern' can be considered as 'shape of goods' is a question of fact and law in my opinion.

In paragraph no. 80, the judgement in the case of Gorbatschow Wodka KG v. John Distilleries Limited , 2011(47) PTC 100 (BOM) is  referred wherein shape of bottles of Vodka was discussed, however, the case in hand is not related to shape of tyre but shape of 'tread pattern' applied on tyre and therefore in my opinion this judgement is not applicable looking to the facts of the case as functional part of article and pattern applied to the article is different in my opinion. In another judgement Reckitt & Colman Prducts Limited v. Bordeen Inc. and Others (1990) RPC 341, a shape of plastic container is protected under passing off remedy irrespective of functional part.

Referring paragraph no. 90, the judgement of Chancery Division in the case of Cow (P.B) & Coy Ld. vs. Cannon Rubber Manufacturers reported in 1959 (9) RPC 240 is referred wherein the issue is related to design and its validity and not passing off of shape of goods.

In paragraph no. 92, the judgement in the case of Whirlpool of India Ltd vs. Videocon Industries Ltd. reported in AIR 1979 DEL 114, the issue of functional parts of washing machine qua design is there and not such issue involved in the case in hand.

Considering the above mentioned factual matrix and legal scenario,  I am of the opinion that it is very hard to establish the case of passing off without satisfying classical trinity or ingredients of passing off action. Mere pleading or voluminous documents are not enough to establish the case of shape of goods in respect of passing off action. My considered opinion is that for the case of passing off action in respect of shape of goods, ex- parte injunction or bi-party injunction should only be granted when the case of the plaintiff is very strong and ingredients of Order 39 Rule 1 & 2 of Code of Civil Procedure, 1908 are satisfied by the plaintiff.

Chirag Bhatt
IP Lawyer
09824025041

Civil Rights vs. Religious belief

As an IP lawyer, while reading, I have come across one very recent interesting case of U.S. Court. The issue involved in this case reached to U.S. Supreme Court., has been argued out and is pending for decision.  I would like to discuss that case in this article.

This case  Masterpiece Cake shop Vs. Colorado Civil Rights Commission is related to design of marriage cake for gay couple and religious belief of masterpiece cake shopkeeper. Denial for making a cake for gay couple on the basis of religious belief invokes the litigation between the said parties on the basis of discrimination and violation of civil rights. The same-sex wedding couple filed a complaint before Colorado (a State in U.S.)  Civil Right Commission alleging that the cake shopkeeper Mr. Philips violated their civil rights by refusing them to provide their wedding cake.  The Colorado Civil Right Commission passed an Order in favour of that same-sex couple and against the cake shopkeeper holding that Mr. Philips had violated the Colorado Anti- Discrimination Act (CADA).  Against the Order passed by Civil Right Commission of Colorado, the response of cake shopkeeper was that CADA was not applicable to him as it was violation of his constitutional right to of freedom of speech and religious belief as he is Christian.

This case becomes talk of the town in among legal community and among general public at large in United States.  Various opinions have been delivered from every corner of legal world for this case as the issue involved in this case becomes a battle of rights of both the parties. For gay marriage couple, it is a violation of their gay rights and for the cake shopkeeper, it is violation of his constitutional rights and religious belief.

The question is that once Gay marriage is legalized, can anybody refuse like Cake shopkeeper refuse them to provide marriage cake in the name of religious belief and violation of freedom of speech, a Constitutional right? If Yes, then what about the discrimination faced by that Couple as discrimination is violation of civil law. This battle is in respect of law vs. religious belief.  This is  probablyfor the first time  U.S. Supreme Court  has come across such issue. In the Country like Unites States, if such type of case is happened, then it is nothing new or astonishing, if anything happens in India or any other country where the religious belief is at paramount stage.

My concern is why should we human beings make laws and why should we bind ourselves with certain belief, whatever the belief may be, irrespective of religion or political or social ? The creation of laws is to maintain the human life in its best manner. Laws are always helpful to humanity and they are never harmful. In the present case, it is law which prohibits discrimination and it is law which prohibits constitutional rights. In respect of the present case, the issue is not of denial of providing cake, denial of cake is very small issue which creates a big issue like discrimination against gay couple and violation of constitutional rights of shopkeeper in this case.

Keeping the facts of the case in mind, the issues are (1) whether denial for providing cake to gay couple for their marriage is amount to their violation of civil rights in the name of discrimination? (2) Whether a cake shopkeeper can be compelled to provide cake or compelled to give damage to the gay couple? (3) Whether a true religious belief has no value in the eyes of law? (4) Whether Law always prevails over true religious belief? As both law and true religion make the human perfect and peaceful  leading the people on the right path of life.

Chirag Bhatt

IP Lawyer

09824025041

Can Section 15 of the Copyright Act, 1957 be applied to an original artistic work of engineering drawing ?

As an IP lawyer, let me write something on a burning issue related to an applicability  Section 15 of the Copyright Act, 1957 ( herein after referred as the Act for short) to an original artistic work of engineering drawing. 

Before I write on this topic and express my views, it is necessary to discuss about  the provisions of section 15 of the Act along with the two other aspects. One is original artistic work and the other is engineering drawing.  No definition of 'original' is given in the entire Act.  Original artistic work is mentioned in Section 13 (1)(a) of the Act wherein copyright subsists. The definition clause of artistic work referred in Section 2 (c) of the Act has depicted a drawing (including a diagram, map, chart or plan) as an artistic work. Thus it is obvious that drawing falls under the provisions of artistic work. Only original work is protected under the provisions of the Act. 

Now the issue involved in this article is the applicability of the Section 15 of the Act qua original artistic work of engineering drawing. Whether an original artistic work of drawing can be restrained under the guise of the provisions of Section 15 if such drawing is used for making article by an industrial process. It is better to quote Section 15 of the Act here for better understanding of the issue.

 "Section 15: Special Provision regarding copyright in designs registered or capable of being registered under the Designs Act 2000:-  (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act 2000. 

(2) Copyright in any design, which is capable of being registered under the Designs Act 2000, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person."

The interpretation of Section 15(1) is that if any design is registered under the Designs Act, the provisions of Copyright Act are not applicable. Meaning thereby, there is no protection of any design under the Copyright Act which is registered under the Designs Act. Now first the question is what a design is and second question is whether any design is protected under the Copyright Act unless it is registered under the Designs Act. The answer of the first question is that design is defined in Section 2(d) of the Designs Act, 2000 which excludes artistic work. The answer of second question would probably be hidden under the provisions of Section 15(2) of the Copyright Act. 

The interpretation of Section 15(2) is as under: 

Let me interpret it in literary manner.

(A) Copyright in any Design: 

First of all please be clarified that it is copyright in design and  not copyright in copyright or under the provisions of Copyright Act.  To discuss Copyright is design, it is required to invoke Section 2(c) read with Section 11 of the Designs Act, 2000. Section 2 (c) is the definition clause of 'copyright' which means " the exclusive right to apply a design to any article in any class in which the design is registered."  Now Section 11 is related to Copyright on registration:- "(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of the Designs Act, have copyright in the design during ten years from the date of registration." (2) subsection 2 is related to the extension of period of five years from the expiration of the original period of ten years. 

Thus, in view of section 2(c) read with section 11 of the Designs Act, 2000,  it is clarified that the first wordings of section 15(2) are with regard to copyright in design and not they are not related to copyright of any work which fall under the provisions of Copyright Act. 

(B) which is capable of being registered under the Designs Act 2000: 

Here copyright in design is capable of being registered under the Designs Act 2000. It means that design which is capable of being registered under the Designs Act, 2000. The terms 'capable of being registered' plays an important role for its interpretation. To interpret this term, Section 2 (a) i.e. definition of 'article'; section 2(d) i.e. definition of 'design'; section 2 (g) i.e. definition of 'original' and provisions of section 4 of the Designs Act, 2000 are required to be discussed. The terms 'capable of being registered' falls within these provisions. In other words, the design must be within the ambit of the definition of design as per section 2(d). It must be for an article which falls under the definition of section 2(a) and such design must be original as per section 2(g). Moreover, such design must not be within the provisions of section 4 of the Designs Act, 2000.  if all these tests are passed out successfully, such design is called " capable of being registered under the Designs Act, 2000.

(C) but which has not been so registered:

Section 15(2) is also applied to the design which is capable enough to be registered but it has not been registered under the Designs Act.

(D) shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person:

This is very interesting point which says that copyright in design does not have any effect if the owner of the copyright or by any other person with licence, has reproduced an article, to which such design has been applied,  for than fifty times by an industrial process.  To elaborate this terms, let me discuss it with the provisions of section 15(1) which says that once a design is registered under Designs Act, there is no protection available to that design under the Copyright Act. Now the terms 'copyright in design' is essential to consider that whether section 15(2) talks about copyright in design which is related to the provisions of the Designs Act or it talks about the provisions of Copyright Act.

Four Points of Section 15(2) which establishes that this section is in respect of Designs Act and Not Copyright Act.

( One) the design which is capable of being registered under the Designs Act ;
 (Two ) however, being capable, the same is not registered;
(Third ) if the design of an article is applied for registration.
(Four) if such article is reproduced more than fifty times by industrial process.

 In my opinion,  section 15(2) talks about prohibition of registration under Designs Act and not Copyright Act. The reasons are as under.

1)That  it is copyright in design and not copyright which falls under copyright Act.
2)That  there is talk about an article which directly falls under Designs Act.
3) That if there is no registered design of an article, the design is applied to that article for registration but not registered yet and
4)That if such article has been reproduced more than fifty time by industrial process by an owner or licencee. then there would be no copyright in design.
5) Section 15(2) is read separately.
6)That  it is special provision regarding copyright in designs.
7) That the reason behind incorporating it under the Copyright Act is to avoid confusion in respect of registration and protection of an article which is made by industrial process under the Copyright Act.
8) That the intention of Legislature is very clear that an article which is capable enough to be made and sold separately, can be registered under the Designs Act, and it can not be registered under the Copyright Act.
9) That Section 13 of the Copyright Act provides that work in which copyright subsists which does not speak about design or article.
10) That Section 14 of the Copyright Act provides the meaning of the copyright which is silent about design or article.
11) That the definition of 'work' provided in Section 2(y) of the Copyright Act which does not include article.
12) That the definition of 'Design' provided in Section 2(d) of the Designs Act, 2000 includes shape,configuration, pattern, ornament or composition of lines or colours applied to any article in two or three dimensional by any industrial process by means of chemical, mechanical or manual or separate or combined and the said article is finished article and appeal to and is judged solely by the eye and it excludes any artistic work as defined in Section 2(c) of the Copyright Act, 1957.

Thus, considering the above mentioned legal scenario, in my opinion, Section 15(2) of the Copyright Act has nothing to do with the provisions of Copyright Act but is only related to Designs Act, 2000.

Now coming back to the issue of this article that Section 15 of the Copyright Act can be applied to an original artistic work of engineering drawing, my answer is 'NO'.  The reasons for my views are as under.

1) That the drawing of an article is not part and parcel of the Design of the article as per the definition of the Design provided in Section 2 (d) of the Designs Act, 2000.

2) That the drawing is within the definition of Section 2(c) of the Copyright Act which is already excluded from the definition of design under Section 2(d) of the Designs Act, 2000.

3) That the drawing can not be considered as 'article' as per the definition of an article given in Section 2(a) of the Designs Act, 2000.

4) That original drawing may be made by hand or with the use of software in computer.

5) That original drawing can not be made by industrial process as any article is made with the use of chemical or mechanical or any process.

6) That the original drawing falls within the ambit of the definition of artistic work and an artistic work can be considered as 'work' as per the definition of Section 2(y) of the Copyright Act.

7) That Section 15 of the Copyright Act speaks about copyright in design as discussed herein above.

8) if original drawing is not protected under the copyright Act, the entire purpose of making drawing is infructuous and that is why Legislature has considered 'drawing'  an artistic work under the Copyright Act and not under the Design Act as the life of the design is only 15 years (10 + 5 ).  That is why article made from any drawing is protected under the Designs Act and not under the Copyright Act.

9) That original drawing, being artistic work, is protected till the life time of the author and plus 60 years after the death of author.

10) That the definition of 'Original' provided in Section 2 (g) of the Designs Act, 2000 is in respect of a design and design can not be considered as drawing. Moreover the definition of 'Design' excludes artistic work which includes 'drawing' as discussed herein above.

11) That the original 'drawing' can not be considered as the finished article which is appeal to and judged by solely by the eye.

12) That the word 'copyright' used in Section 15(2) of the Copyright Act ought to be read in context of Section 2(c) of the Designs Act, 2000. Section 2(c) is the definition of 'copyright' which means the exclusive right to apply a design to any article in any class in which the design is registered.

13) That Section 14(c) (i) of the Copyright Act is not applicable as it is related to reproduction of an artistic work in three dimensions of a two dimensional work or in two dimensions of a three dimensional work, however, in Section 2(d) of the Designs Act talks about an article whether in two or three dimensional or in both forms and artistic work is excluded from Section 2(d) and therefore, Section 14(c)(i) can not be with regards to Section 15(2) of the Copyright Act. However, in  the judgement dated 27/7/2017 of Hon'ble Delhi High Court in case of Holland Company LP and Anr Vs. S.P. Industries (CS (Comm) 1419 of 2016 wherein the plaintiffs have claimed to be the owners of industrial drawings of Automatic Twist Lock (ATL) system for securing cargo containers. The plaintiff no. 1 invented that product and is a patent holder and copyright owner. The defendant, being aware of the copyright of the plaintiff in drawings,  has copied the drawings of the plaintiff from one publication/technical pamphlet which is easily available as the defendant is in the same field. In paragraph no. 22 of this judgement, Hon'ble Delhi High Court is of the view that, "A conjoint reading of Section 2 (d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design." Hon'ble Court has considered industrial drawings as designs because  and therefore, an injunction application is rejected. 

In the landmark judgement of Hon'ble Delhi High Court (DB) in the case of Mircrofibers Inc vs. Girdhar and Co. & Anr. in the year 2009, Hon'ble DB has discussed the issue related to section 15 of the Copyright Act in detail from paragraph no. 20 on wards. In that case the design of appellate  was registered in U.K. as per paragraph no. 31 of the judgement and he sought protection under the Copyright Act in India. Hon'ble DB did not allow the appellant to claim the protection under the guise of the provisions of Copyright Act in respect of the artistic work which was industrially produced. Having read this judgment, with due respect, several questions are raised in my mind .

(1) Whether industrial drawing can be called pure artistic work per se ?
(2) Why has Legislature incorporated 'drawing' as an artistic work under Section 2(c) of the Copyright Act , 1957 ?
(3) Why has 'drawing' not been incorporated under the definition of Design in Section 2(d) of the Designs Act, 2000 ?
(4) Whether the term 'copyright' incorporated in Section 15(2) of the Copyright Act is in context with the provisions of Copyright Act or Designs Act ?
(5) Whether drawing of an article can be part of registration of Design of that article under Section 6 of the Designs Act, 2000 ?
(6) Whether Section 2 (c) of the Copyright Act has diversified original artistic work such as painting against drawing in respect of protection under the Copyright Act ?
(7) Whether 'drawing' can be considered as original artistic work OR applied artistic work ?
(8)Whether the intention of Legislature for 'drawing' as an artistic work used for industry is different than other artistic work mentioned in Section 2(c) of the Copyright Act ?
(9) If original painting is protected under Copyright Act, then original drawing of that painting used for industrial purpose can not be protected under Copyright Act  instead of being protected under Design Act ?
10) Whether Hon'ble DB delivered this judgement on the basis of theory of Plato, a great Greek Philosopher  ?

Let me discuss the various case laws in respect of the issue involved in this article. 

In a case between Ritika Private Ltd. vs. Biba Apparels Pvt Ldt. (CS (OS) No. 182/2011)  Hon'ble Delhi High Court single bench on 23rd March,2016 expressed its view by quoting  the paragraph nos. 20 to 33 and 33 to 46 of Microfiber's case (DB) as it is binding upon single bench and dismissed the suit rejecting the plea of infringement of copyright in sketches, drawings, designs etc.of plaintiff.

In the case of Photoquip India Limited vs. Delhi photo store & Anr reported in 2014(60)PTC 563 (Bom), Hon'ble Bombay High Court in paragraph no. 25 of the judgement replying upon the judgement of Bombay High Court in a case of Indiana Gratings Pvt. Ltd. & And vs. Anand Udyog Fabricators & Ors. reported in 2009 (39) PTC 609 (BOM), expressed the views that " As in Indiana Gratings, the present plaintiff's drawings are skilled diagrams that do not reflect any finished product, let alone a finished product of any 'visual' or aesthetic appeal. They only serve a functional purpose. They are not, therefore, designs. The plaintiff claims no copyright in the elinchrom FRX 200/ elinchrom FRX 400 flash lights themselves. It claims copyright in drawings, not in articles. The drawings are artistic works, capable of copyright protection. The articles- the flashlights themselves are not. ...."  Considering the scope of the definition of 'design' in respect of drawings, in paragraph no. 27 , Hon'ble Bombay High Court was of the  opinion that " The very definition of 'design' tells us this : A design is and is only, the "features of shape, configuration, pattern, ornament ........Are the drawings or moulds "applied" to the finished products ? Are they " features of shape, configuration, pattern, ornament or composition of lines or colours ? The "features of shape, configuration, pattern, ornament or composition are aspects of the objects themselves. There is no copyright in the approximately rectangular shape of flash lights, or the manner in which they are configured.  There is a Copyright in the initial mechanical or geometric drawings. A design slso does not include any mode or principle of construction and if the drawings describe this mode or this principle , they are by definition, not designs and not capable of registration as designs. The fact it is impossible for the Defendants to reproduce the articles without reverse engineering them and preparing illicit drawings does not put the Plaintiff's drawings outside the protection of the Copyright Act. " Injunction is granted in favour of the plaintiff in this case.

In the Case of John Richard Brady and Others vs. Chemical Process Equipments P. Ltd. and Another reported in PTC (Suppl) (1) 263 (Del) in the year 1987, as per paragraph no. 37 of the judgement,  "no opinion was finally expressed by  Hon'ble High Court in respect of infringement of copyright claimed by the plaintiffs in drawings of Brady by the production of the Machine in question by the defendants, however, defendants were restrained in view of the prima facie case made out for infringement of their copyright, and  of strict confidentiality under the specifications, drawing and other technical information about the FPU were supplied to the defendants. "

Now let me discuss the judgement of House of Lords  with regard to the issue involved in this article. 

In the case of L.B. (Plastics) Limited v. Swish Products Limited reported in [1979] R.P.C. 551,  the plaintiffs, being designers and manufacturers, were the owners of a plastic knock-down drawer system known as the Sheerglide  in the field of plastic furniture. The defendants produced a design under the name Swish design. The plaintiffs filed a suit for infringement of artistic work of the drawings. The trial judge held that there was an infringement made by the defendants rejecting the contention of the defendants that the plaintiffs' drawings were not original, nor were they artistic as per the provisions of the Copyright Act 1956. The defendants filed an Appeal which was in favour of the defendants, hence, plaintiffs filed an appeal to the House of Lords. Appeal was allowed by the House of Lords. 
In this case the defendants took the defence of Section 9(8) of the U.K. Copyright Act 1956. This section says that "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."  The heading of Section 9 is :General exceptions from protection of artistic works. Further, on page no. 619 of the judgement, Hon'ble House of Lords was of the view, " there is a striking similarity between the respondents' drawer and those of the appellants. Moreover, it is clear and was held by the judge that the respondents had the opportunity to copy the appellants' drawer. They had specimen of the appellants' components in their possession......these facts establish a prima facie case of copying which the respondents had to answer. ..." on the base of evidences, the trial court has made clear findings and the court of Appeal ignored the evidence of the witnesses. Further, on page no. 631 of the judgement, the House of Lords was of the opinion that " the drawing was a team effort by the whole of the appellants' drafting and design body and all information embodied in the drawing can, if a substantial part of the drawing be reproduced in a three- dimensional form, be considered for the purpose of deciding whether the three- dimensional form is an infringement..." 

In other landmark judgement of Hon'ble House of Lords in King Features Syndicate Inc. vs. O. & M. Kleeman Ltd reported in [1941] A.C. 417; the issue involved in this judgement was regarding the infringement of copyright in original drawings. The plaintiffs were the owners the copyright in original drawings of a well known cartoon character "Popeye the Sailor". The defendants imitated and marketed  dolls and brooches without having any licence from the plaintiff and thereby reproduction them. It was held that a copy of an  object having three dimensions from another three dimensional object by reproducing a drawing is an amount to an infringement of copyright of artistic work of the drawing. In this case the defence of Section 22 (1) of the U.K. earlier Copyright Acts 1911 was not considered. Section 22(1) of the U.K. Copyright Act is related to Section 15(2) of the Indian Copyright Act, 1957. It was held that " the question of the applicability of Section 22 to exclude copyright protection from a design capable of registration under the Act of 1907 must be decided once for all ascertaining whether the author originally intended the design to be used as a model or pattern to be multiplied by an industrial process. If he did not, then the copyright protection once attaching could not be destroyed by subsequent use of the design, even with the consent of the copyright owner, as a model for industrial reproduction."

In the case of Armstrong Patents Company Limited and others (Appellants) vs. British Leyland Motor Corporation Limited and others (Respondents)  reported in [1986] RPC 279, the issue in respect of protection of engineering drawing as an artistic work under Copyright Act was discussed wherein it was held by House of Lords of U.K. that  engineering drawing was not entitled to be protected an an artistic work under copyright Act and thereby differed the view expressed in the judgement of  L.B. (Plastics ) Ltd mentioned herein above. In this case the respondents BL motor claimed copyrights in the exhaust pipe which was a part of Car. By allowing the Appeal, Hon'ble House of Lords was of the view that "........... Section 10 of the Copyright Act 1956 if the design was registered under the Registered Designs Act 1949 or used industrially, it would not be an infringement of the copyright in the drawing to do anything which was within the scope of the design copyright........To provide a remedy Parliament, by the Design Copyright Act, 1968, repealed much of Section 10 and in effect provided that copyright and design copyright could coexist but that in such circumstances copyright protection should be reduced to that same period of 15 years as design copyright protection. But purely functional objects were not affected by the Act of 1968, they remained excluded from the protection of design copyright. It was further observed that " whenever Parliament grants a right in the nature of a monopoly and copyright is such a right in the nature of a monopoly, and copyright is such a right, it inevitably interferes in some respects with the freedoms of the public that would exist apart from the monopoly.........Sirdar Rubber Company Ltd vs. Wellington Weston & Co (1907) 24 R.P.C. 539, 543 where Lord Halsbury said: "The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair" 

Considering various decisions on the issue involved in this article, it reveals that there are mixed opinions of various authorities, however, it is true that having been granted patent or registration under Design Act, nobody can create life time monopoly under the guise of Copyright Act as the period of patent is 20 years and 15 years is for Design then under the guise of copyright lifetime plus 60 years monopoly for the same drawings is against the public policy as the protection of law should not be against the interest of public. 

The issue involved in this article is the same issue in a case which is pending before Hon'ble Supreme Court. The said issue would be resolved after the judgement of Hon'ble Supreme Court.

Chirag Bhatt
IP Lawyer
09824025041

Contract of service & Contract for service in respect of infringement of copyright

As an IP lawyer I am handling one of the cases which is related to infringement of copy right. The issue of that case is whether the plaintiff is entitled to be protected under the provisions of Copyright Act, 1957. The other issue is whether the suit is barred by law. 

Let me discuss this in detail in respect of legal aspects.

When a plaintiff files a suit for infringement  of  copyright, two  very important  aspects  are required  to be considered by the Hon'ble Courts while adjudicating the notice of motion or  suit. The burden of proof is on the shoulder of the plaintiff to prove these two aspects.

 (1) whether a person who files such suit is an author  or owner of a work in dispute.

 (2) whether a work in dispute is original work.  

Here before I go ahead  to discuss  it, it is clarified that registration  of copyright work is not compulsory  for taking infringement  action,  registration  is compulsory  under trade mark, designs, patent and geographical  indication  laws. If a person files a suit for infringement  of  copyright  work; is neither author nor owner of it, then what the legal scenario would be, he must be exclusive  licence holder of the work in dispute.,  provided that when an exclusive  licensee files a suit for infringement  of copyright, the owner of copyright  is joined as a defendant in that suit as per section 61 of the Copyright Act, 1957 ( herein after referred  as the Act for short ). Thus it is clear that a person must be having title i.e. ownership of a work in dispute for taking action of infringement  of copyright against  infringer. 

Now let me discuss  what is required to be considered  for above mentioned first point i.e. whether a person who files a suit is an author or owner of a work in dispute. 

With this regard, definition of author plays a vital role. Section 2 (d) of the Act justifies who the author is in relation to various works. Thus as per section 2(d) (i) in respect of a literary or dramatic work, the author of that work, (ii) in relation to musical work, the composer, (iii) in relation to an artistic work, the artist, (iv) in respect of a photograph, the person who is taking photograph, (v) in relation to a cinematograph film or sound recording, the producer and (vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created. Now in connection with section 2(d), let me discuss section 17 of the Act which is very important for claiming ownership of copyright in any work as well as the title of this article is revolving around the section itself. Section 17 says that the author of a work shall be the first owner of the copyright subject to the certain conditions referred in section 17 of the Act. Now the title of this article 'Contract of service & Contract for service' is discussed herein after in view of the provision of Section 17 of the Act.

It is essential to know what  Contract of service is & what Contract for service is.

CONTRACT OF SERVICE:

It is pertaining to note that there are no particular definitions given in Copyright Law for the terms 'Contract of service & Contract for service', however, the term 'Contract of service' invokes the relationship between employer and employee. The question is arisen that how it relates  to Copyright Act. The best answer is that an author makes any literary, dramatic or artistic work under the employment, the employer is the first owner of that work made by that author in absence of any agreement. In other words, such above mentioned work is made by an author as as employee, and there is no specific agreement between employer and employee with regard to such work. Under such circumstances, the employer is the first owner of the work. Now another question is that whether in all types of employment, the employer is the first owner. The answer is described in Section 17 (a) which states that the proprietor of a newspaper, magazine or similar periodical is the first owner of the work in so far as the copyright relates to the publication of the work or reproduction of such work for being published. Thus it is clear that a work prepared by an author under the employment is claimed by employer as a first owner in absence of any agreement. This is called 'Contract of Service'.

CONTRACT FOR SERVICE

A person, not being employee, provides any service by getting paid for it, is within the ambit of the term 'Contract for Service'.

Let me discuss what Contract for Service is. For that, last line of  proviso (a) of  Section 17 of the Act is required to be considered which says, "but in all other respects the author shall be the first owner of the copyright in the work."  Let me discuss this. The words ' but in all other respects' means and includes which is not within the ambit of the term ' Contract of Service'.  In other words,  the the person who is not an employee but avails his service to any employer by taking payment for his service as a service provider, falls within the ambit of the words "but in all other respects", and therefore, that service provider is the author and first owner of the copyright work.

Thus the difference between 'Contract of Service' & 'Contract for Service' is very noteworthy. In a sentence, a work made by an author under the employment falls with the terms of ' Contract of Service' and  a work by an author not under employment falls under the terms 'Contract for Service'.

I would like to discuss a few judgements in respect of the title of this Article herein after.

A) In case between Suraiya Rahman vs. Skill Development  for Under Privileged Women reported in 1997(17)PTC 295, Hon'ble Supreme Court of Bangladesh, in paragraph no. 7 & 8, discussed the issue related to 'Contract of Service' & ' Contract for Service' by relying upon the decision of English law. House of Lords in case of Short V.J. and W.Henderson LTD reported in (1946)39 B.W.C.C62 recapitulated with approval four indicia of Contract of Service mentioned in the case Park V. Wilson and Clyde Coal Co. LTD reported in (1928) Sess.Cas 121(at page 133) derived from authorities. Those are 

(1) masters lower of selection of his servant.

 (2) the payment of wages and other remuneration 

(3) the master's right to control the method of doing the work and

 (4) the master's right of suspension or dismissal. 

In paragraph no. 8 of the judgement of Supreme Court of Bangladesh, referring the various English judgements wherein it was observed that " Is the person who has engaged himself to perform these services performing them as a person in business on his own account ? If the answer to this is 'YES', then the contract is a contract for services. If the answer is 'NO' then the contract is a contract of service. ....." To find out a distinction between a contract of service & contract for service', it is to be seen from the facts and circumstances of a case whether an employed person in relation to the employer is an employee or an independent contractor. If an employed person is an employee of the employer, he is under a contract of service and if such a person is an independent contractor under the employer then he is under a contract for service. Thus, whether a person is under a contract of service OR contract for service is a question of fact and not a question of law and it is to be determined on consideration of the facts and circumstances of each case."

B) In another case of Ready Mixed Concrete (South East )LTD V. Minister of Pensions and National Insurance reported in (1968) 2 QBD 497 at page 515, it was observed that , " A contract of service exists if these three conditions are fulfilled: 

(1) The servant agrees that, in consideration of wages or other remuneration, he will provide his work and skill in the performance of some services of his master.

 (2) He agrees, expressly or implied, that in the performance of that service, he will be subject to the other's control in a sufficient degree to make that other master.

 (3) the other provisions of the contract are consistent with it's being a 'Contract of Service'.

 

C) In case of eXEGESIS Infotech (India) Pvt. Ltd.& Anr. Vs. Medimanage Insurance Broking Pvt. Ltd. reported in 2015 (63) PTC 612 (Bom) the issue involved in this article is discussed in paragraph no. 6 & 7 of the judgement wherein plaintiffs claimed to be the owner copyright of software and the case of defendant was that plaintiffs were employed on a "work for hire" basis. Based on material on record and as per provision of  Section 17 (c) of the Act , injunction was not granted by the Court.

(D) In case of Pine Labs Pvt. Ltd Vs. Gemalto Terminals India Pvt. Ltd & Ors reported in 2010 (42) PTC 229 (Del), Hon'ble Delhi High Court discussed the issue of contact of service and contract for service from paragraph nos. 49 to 59 of the case.

(E) In case of Zee Entertainment Enterprises Ltd Vs. Gajendra Singh & Ors reported in 2008 (36) PTC 53 (Bom) in this case the dispute between the Parties was whether defendant no. 1 was engaged by the plaintiff under the title of contract of service or contract for service from the year 1992 to 1999 along with the issue of infringement of copyright of literary work and cinematograph of plaintiff's game show telecast on TV. In paragraph no. 39 referring the extract from Chitty on Contracts, Twenty- Ninth Edition, Volume II, page 943, in respect of the factors identifying a contract of employment, I quote it as it is herein after.

" The factors to be considered. Recent case law suggests that the factors relevant to the process of identifying a contract of employment may usefully be listed as follows:

1) the degree of control exercised by the employer.

2) whether the worker's interest in the relationship involved any prospect of profit or risk of loss;

3) whether the worker was properly regarded as part of employer's organization;

4) whether the worker was carrying on business on his own account or carrying on the business of the employer;

5) the provision of equipment;

6) the incidence of tax and National Insurance;

7) the parties' own view of their relationship;

8) the traditional structure of the trade or profession concerned and the arrangement within it."

F) Community for creative non-violence et AL. Vs. REID Supreme Court of the United States reported in 10 U.S.P.Q 2D (BNA) 1985, the issue of ownership of copyright in a sculpture "Third World America" was a pivotal part of this case. For resolving this issue, Hon'ble US Supreme Court construed the " work made for hire" provided in Sections 101 and 201(b) of Copyright Act of 1976 of United States by establishing that " Third World of America" was a work for hire as Reid was independent contractor and Author of it in view of the provisions of section 101(2). of the US Copyright Act.  Section 101 of US Copyright Act defines "work made for hire" in two parts (a) a work prepared by an employee within the scope of his or her employment and nine categories for copyright status of non employees (b) a work specially ordered or commissioned for use which are as under.

1) as a contribution to a collective work;

2) a motion picture or other audiovisual work (3) a translation (4) a supplementary work (5) a compilation (6) an instructional text (7) a test (8) answer material for a test (9) an atlas.

It is noted that section 101 of U.S. Copyright law is related to section 17 of Indian Copyright Act and therefore reference of law and judgements  U.S. with regard to title of this Article would be helpful to elaborate the provisions of law. 

Coming to the second point whether a work in dispute is original work as mentioned in the beginning of this article, Originality of a copyright work is a condition precedent in the case of infringement of the copyright of that particular work. Unless the work in dispute is original, no protection is given to that work under the law of Copyright.  Section 13 of the Act enables the protection of a work which is original. It is pertinent to note that no definition of 'original work' is given under the Act. Original does not mean new or invented  in copyright sense. As the copyright law protects the expression, the expression must be original.

I restrain myself to discuss more on the 'original work' otherwise the object of the article qua the terms 'contract of service & contract for service may not be fulfilled. If the above mentioned two issues  are not satisfied by the plaintiff, the suit of  infringement of  copyright is barred by law and injunction is not required to be granted in favour of the plaintiff in view of the provisions of Copyright Act and case laws mentioned herein above. 

To conclude it would be safe to say that the elements of contract of service and contract for service provided in section section 17 of the Copyright Act, 1957 should be first required to be considered whenever there is issue of 'ownership' of a work is concerned in the legal proceedings. 

Chirag Bhatt

IP Lawyer

09824025041

Tug of Trade mark War and Courts of law in respect of Permitted User

As an IP Lawyer, I become a witness of many IP battles in the battlefield i.e. court of law. One of the battles is in respect of permitted user of the trade mark. Let me discuss it by way of writing this blog. The issue of this article is whether a permitted user  of a trade mark can file a suit for infringement action or passing off action  or can that permitted user be sued for infringement of a trade mark ? Let me divide this one issue in two parts for better discussion and understanding. 

1) Whether a permitted user  of a trade mark can file a suit for infringement action.

2)Whether a permitted user of a trade mark can file a suit for passing off action.

3) Whether a permitted user of a trade mark can be sued by another registered proprietor of a trade mark. 

Before I discuss the above mentioned issues herein below, it is necessary to know who can be a user of trade mark. First of all it is required to be discussed that who is user of trade mark. The user of the trade mark, in general terms, means a person who uses the trade mark for the purpose of his trade, business or service.  In trade mark law, there is no particular definition is given for 'user' of a trade mark, however, in legal sense, there are three persons who can be called 'user' of  trade mark.

 (1) a registered proprietor of a trade mark 
(2) a registered user of a trade mark and
(3) a permitted user of a trade mark. 

A registered proprietor is defined under section 2 (1)(v) of the Trade marks Act, 1999(the Act for short) whereas section 2 (1) (x) read with section 49 of the Act says about registered user and  section 2(1)(r) of the Act talks about permitted user. 

As the issue of this article revolves round 'permitted user',let me discuss the above mentioned issues one by one with the help of provisions of trade marks law and judicial pronouncements.

1) Whether a permitted user  of a trade mark can file a suit for infringement action.

First of all it is an essential point to know that who a  permitted user is. The information about who a permitted user is given in the form of 'permitted use' under Section 2(1)(r) of the Act which is as under.
(r) "permitted use", in relation to a registered trade mark, means the use of trade mark-

(i) by a registered user of the trade mark in relation to goods or services-

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the time being; and

(c) for which he is registered as registered user; and

(d) which complies with any conditions or limitations to which the registration of registered user is subject; or

(ii) by a person other than the registered proprietor and registered user in relation to goods or services-

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the time being; and

(c) by consent of such registered proprietor in a written agreement; and

(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject.

As per the above mentioned definition, it is clear that a person, who is given permission to use a  registered trade mark  in relation to goods or services in the course of trade, is a permitted user. Section 2(1)(r) is referred to a registered user and a person other than the registered proprietor and registered user. 

Coming back to the issue no. 1  whether a permitted user of a trade mark can file a suit for infringement action, the Section 53 of the Act itself is the answer of this issue which says that a person referred to in sub clause (ii) of clause (r) of subsection (1) of Section 2 shall have no right to institute any proceeding for any infringement.  Thus it is clear that the permitted user can not file a suit for infringement action.  In support of my view based on section 53 of the Act, I rely upon the judgement of Division Bench of Delhi High Court on 4th January, 2017 in the case of P.K. Sen vs. Exxon Mobile Corporation and Anr ; setting aside the Order passing by the single bench; Hon'ble DB of Delhi High Court in paragraph no. 16 of the judgement held that "Section 53 is clear departure from Section 52 of the Act which stipulates that a person referred to in Section 2(1)(r)(ii) shall have no right to institute any proceeding for any infringement. The person referred in Section 2(1)(r)(ii) is a person other than the registered proprietor and registered user and would obviously include a 'permitted user'. In other words, the only persons who can bring a suit for infringement of a trade mark would be registered proprietor himself or the registered user and certainly not permitted user. Therefore, in view of the Court, submission made by the learned counsel for the appellant that the suit could not have been instituted by the respondent No.2/plaintiff no. 2 is correct."

2)Whether a permitted user of a trade mark can file a suit for passing off action.

With reference to this point, the Act is silent about instituting a suit for passing off action by a permitted user. When a person has a title of a property, he is entitled to give his property to be used by other person  as a permitted user. The passing off action is not a statutory remedy. It is a common law remedy, however, to institute a suit for any remedy whether infringement or passing off, title of the property must be acquired by the plaintiff. In other words, the person who institutes a suit must be owner of the trade mark. Permitted user is neither a registered proprietor nor a registered user. He is not an owner or proprietor of the property i.e. trade mark. A person is only entitled to file a suit when he has title and therefore, permitted user can not file a suit for passing off action. 

For instance, Mr. A is the proprietor or owner of the trade mark. Mr. B is a permitted user or a licencee of the trade mark of Mr. A. Mr. C is infringing the rights of Mr. A by using that trade mark in trade or business or service without licence or permission of Mr. A. 
Here in this case Mr. A is entitled to file a legal action against Mr. C as Mr. A is having a title i.e. ownership of that trade mark. Mr. B is not entitled to take any action against Mr. C as Mr. B does not have a title i.e. he is not an owner of that trade mark. 

3) Whether a permitted user of a trade mark can be sued by another registered proprietor of a trade mark. 

With reference to this point, it is important to quote here the judgement of Hon'ble Supreme Court in a case M/s Gujarat Bottling Co. Ltd & Ors vs The Coca Cola Co. & Ors reported in 1995 AIR 2372, 1995 SCC(5) 545 wherein it was observed that it is permissible for the registered proprietor of a trade mark to permit a person to use his registered trade mark. Such licensing of trade mark is governed by common law and is permissible provided (i) the licensing does not result in causing confusion or deception among the public; (ii)it does not destroy the distinctiveness of the trade mark, that is to say, the trade mark, before the public eye,continues to distinguish the goods connected with others; and (iii) a connection in the course of trade consistent with the definition of trade mark continues to exist between the goods and the proprietor of the mark. [see : P. Narayanan = Law of Trade Marks and passing-Off, 4th Ed., para 20.16,p.335]. It would thus appear that use of a registered trade mark can be permitted to a registered user in accordance with provisions of the Act and for that purpose the registered proprietor has to enter into an agreement with the proposed registered user. The use of the trade mark can also be permitted dehors the provisions of the Act by grant of licence by the registered proprietor to the proposed user. Such a licence is governed by common law. 

In the above referred judgement it is observed by Hon'ble Supreme Court that the use of the trade mark by licencee of a registered proprietor can be made possible subject to the conditions that such licensing does not result in causing confusion or deception among the public. Now the question is when such licensing creates confusion or deception among people in respect of the trade mark of the third party, whether that third party can restrain that licencee from using that trade mark, the answer is in affirmative. The reason is agreement of licence between the licencor and licensee does not prevail over the statute irrespective of that fact that licensing falls under common law and such licensing is against the public interest. It is required to be noted that the concept of the trade mark since ages is to an indicator of exclusivity in trade under that mark and a licensee can be granted a limited right to use.  Use of a trade mark of third party is against the business ethics and dishonesty is reflected in the behaviour of the user of such trade mark. I would like to quote the landmark judgement of Hon'ble Supreme in case of Laxmikant V. Patel vs. Chetanbhai Shah and Another reported in (2002) 3 SCC 65 in support of my views in respect of business ethics. In paragraph no. 10 of this judgement Hon'ble Supreme Court is of the view that ......."the law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are and ought to be the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which is already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

Thus it is very clear that a licencee/ permitted user is using a trade mark under the licensing agreement and if that trade mark is in conflict with that of the third party, that third party who is an owner of the trade mark, is entitled to restrain the licencee of the trade mark whose use creates confusion and deception among people. Moreover, the very object of the trade mark Act is to establish the bridge between the goods and the source thereof. 
Chirag Bhatt
Partner- Litigation, Y.J.Trivedi &Co.