No Trademark Rights on Names of Holy Books : Supreme Court of India

The Supreme Court of India, vide its judgment dated October 27, 2015 in Lal Babu Priyadarshi v. Amrit Pal Singh (Civil Appeal No. 2138 of 2006), held that no person can claim exclusive rights over the name of a holy or religious book as a trade mark for his goods or services marketed by him.

Brief Facts of the Case

• The Appellant, Lal Babu Priyadarshi trading as M/s. Om Perfumery, made an application to the Registrar of Trade Marks to register the trademark “RAMAYAN” with the device of crown in class 3 in respect of incense sticks (agarbattis, dhoops) and perfumeries etc.
• The Respondent, Amritpal Singh trading as M/s. Badshah Industries, filed a Notice of Opposition against the aforesaid trademark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18 (1) of the Trade and Merchandise Marks Act, 1958 (repealed by the Trade Marks Act, 1999) claiming that the impugned mark, being the name of a religious book, cannot become the subject of monopoly for an individual.
• The Asst. Registrar of Trade Marks dismissed the Opposition of the Respondent vide order dated March 31, 2004 and held that, the impugned trademark consists of device of crown and the word “RAMAYAN” is capable of distinguishing the goods and is not included in the list of marks not registrable under the aforesaid Act.
• Aggrieved, the Respondent preferred an appeal before the Intellectual Property Appellate Board (IPAB), which, vide its order dated January 10, 2005, set aside the order dated March 31, 2004 of the Asst. Registrar of Trade Marks.
• Aggrieved by the aforesaid order of the IPAB, the Appellant filed the present Appeal by way of special leave.

The Hon’ble Apex Court framed the following issue for deciding the present Appeal:
Whether the registration of the word “RAMAYAN” as a trade mark, being the name of a Holy Book of Hindus, is prohibited under Section 9(2) of the Trade Marks Act, 1999? 

Contentions of the Appellant

The Appellant, inter alia, made the following submissions:-

• The Appellant is in the business of manufacturing, trading and marketing of incense sticks since 1981. Through extensive use, wide advertisement and the excellent quality of the products, the trademark “RAMAYAN” and the carton in which the products are sold have become distinctive in such a manner that use of the same or similar trademark or carton by any other person will cause confusion and deception in the trade and amongst the public.
• The mere fact that the trademark is the name of a religious book cannot be a sufficient ground for refusal of registration under Section 9(2) of the Act and is not based on evidence on record that the feelings of any section of the Hindus have been hurt by its use in relation to incense sticks.
• The Asst. Registrar of Trade Marks rightly held that the impugned trademark is capable of distinguishing the Appellant’s goods and the trademark is not included in the list of marks not registrable under the Act.
• The IPAB totally misconstrued the observations of the standing committee in the Eighth Report on the Trade Marks Bill, 1993. In Clause 13.3 of the said report, even though the Committee had observed that “any symbol relating to religious gods, goddesses, places of worship should not ordinarily be registered as a trade mark”, it specifically refrained from prohibiting registration of such marks.
• The IPAB ought to have seen that there are several cases which indicate that use of names of Hindu deities as a trademark is a common practice and no one has complained about the same being sensitive to Hindu religious sentiments.

Contentions of the Respondent

• The impugned mark, being name of a religious book, cannot be the subject matter of monopoly for an individual.
• The mark “RAMAYAN” is not a distinctive mark and is devoid of any distinctive character. The mark is not capable of distinguishing the goods of one person from those of another.
• The mark “RAMAYAN” is not registrable since it is the name of a well-known religious book.
• More than 20 traders in Patna (principal place of business of the Appellant and Respondent) and many more are using the trademark “RAMAYAN”, thus, it has become public juris.
• The impugned mark is identical with the Respondent’s mark “BADSHAH RAMAYAN” which is pending registration and the impugned registration will cause harassment to other traders and purchasing public would be bound to be confused and deceived.

Order of the Apex Court and its Rationale

• The Apex Court observed that in Clause 13.3 of the Eighth Report on the Trade Marks Bill, 1993, the Parliamentary Standing Committee expressed its opinion that any symbol relating to Gods, Goddesses, places of worship should not ordinarily be registered as a trademark. However, the Committee did not want to disturb the existing trade marks by prohibiting their registration as it will result in chaos in the market. At the same time, the Committee trusted that the Government will initiate appropriate action if someone complains that a particular trademark is hurting his religious susceptibilities. When this report was presented on April 21, 1994, the Appellant’s trademark had not been registered and the application filed by the Respondent opposing its registration was dismissed only on March 31, 2004 by the Asst. Registrar of Trade Marks.
• The word “RAMAYAN” represents the title of a book written by Maharishi Valmiki and is considered to be a religious book of Hindus in India. Thus, using exclusive name of the book “RAMAYAN” for getting it registered as a trademark for any commodity could not be permissible under the Act. If any other word is added as suffix or prefix to the word “RAMAYAN” and the alphabets/ design/ length of the words is same as of the word “RAMAYAN”, then the word “RAMAYAN” may lose its significance as a religious book and it may be considered for registration as a trademark.
• The word “RAMAYAN” is being used as a mark for similar products by more than 20 traders in Patna and in different parts of the country, therefore, it has become public juris and common to the trade.
• There are many holy and religious books like the Quran, Bible, Guru Granth Sahib, Ramayan etc. to name a few. The answer to the question as to whether any person can claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clearly ‘NO’.

In view of the above, the Apex Court upheld the decision of the learned IPAB and dismissed the Appeal.

Concluding Remarks

In a religiously diversified country like India, several traders choose to name their businesses after names of holy books and religious texts etc. The judgment of the Supreme Court is important as it authoritatively held that the name of a holy book or religious texts like The Quran, The Bible, The Guru Granth Sahib, The Ramayan etc. cannot be monopolized by a person as a trademark for his goods or services marketed by him.

Incidentally, the aforesaid judgment was pronounced on Valmiki Jayanti, birth anniversary of Maharishi Valmiki, who is known to have composed the great Sanskrit epic and Hindu religious text, the Ramayan in the 4th or 5th Century B.C.

The aforesaid Order dated October 27, 2015 can be accessed here.

Disclosure: Our firm was the instructing counsel on behalf the Respondent in this case.

IPR Acquired Pre 1999 Amendment Entitled for Depreciation in Tax - Supreme Court

 

The Supreme Court of India on October 15, 2015 in a dispute between M/s Mangalore Ganesh Beedi Works (the Appellant/ Assessee) and Commissioner of Income Tax (CIT), Mysore (the Respondent) has ruled in favour of the Assessee and observed that a firm can claim deduction or depreciation in income tax on expenses incurred for acquisition of intellectual property, such as patent and trademarks rights, copyrights and know-how, as they are capital in nature.

In the present case, the M/s Mangalore Ganesh Beedi Works (MGBW), a partnership firm was dissolved and a new company comprising of association of persons (three erstwhile partners) was constituted to continue the business.

The Assessee claimed a deduction as revenue expenditure permissible under Section 37 of the Income Tax Act, 1961 (hereinafter referred to as ‘the Act’) towards the legal expenses incurred. The Assessee also further claimed depreciation under Section 35 A and 35 AB of the Act towards acquisition of Intellectual Property Rights. In the alternative, the Assessee claimed depreciation on capitalizing the value of the Intellectual Property Rights (IPR) by treating them as ‘plant’.

The Assessing Officer rejected the claim of the Assessee under all the above three sections. Hence, an appeal was preferred by the Assessee before the Commissioner of Income Tax / CIT (Appeals) who allowed the appeal in part and held that the Assessee was entitled to a deduction towards legal expenses. However, the claim of the Assessee regarding deduction or depreciation on the IPR was rejected. Thus, aggrieved by the order of the CIT (Appeals), a further appeal was preferred by the parties before the Tribunal, where the Tribunal allowed the appeal of the Assessee in respect of the claim of IPR.

An appeal was preferred in the Hon’ble High Court of Karnataka which considered the following three substantial questions of law:

1. Whether the revenue expenditure claimed by the Association of persons which was constituted by the three partners of the erstwhile firm, MGBW, can be allowed as permissible deduction in the hands of the said association of persons under Section 37 of the Act, as being laid out or expended wholly or exclusively for the purpose of business of the said Association of persons.
2. Whether the Assessee was entitled to claim any deduction on the alleged expenditure for acquisition of patents, trademark rights, copyrights and know-how, in terms of Section 35 A and 35 AB of the Act?
3. Whether the Tribunal had erred in directing the Assessing Officer to capitalize the value of trademarks, copyright and technical know-how by treating the same as plant and machinery and grant depreciation therein?

The High Court of Karnataka answered the first two questions in the negative and the third question in the affirmative in favour of the Revenue Officer and against the Assessee. Thus the High Court restored the order of the Assessing Officer by setting aside the findings of the Income Tax Appellate Tribunal.

The Apex Court, while considering the impugned order passed by the High Court in an appeal preferred by the Assessee, observed in respect of the first question that the High Court was not justified in upsetting a finding of fact arrived by the Tribunal, as there existed no reason to reverse its finding as nothing has been shown to conclude that the finding was perverse in any manner whatsoever. Therefore, the question was answered in favour of the Assessee and against the Revenue Officer and the conclusion arrived by the High Court on the first question was set aside and the view of the Tribunal was upheld.

The Apex Court, while considering the second and third questions, accepted and acknowledged that intellectual property has a value and stated that the trademarks of the Assessee were given value since in the beedi industry, trademarks and brand names have a value and the Assessee’s product under trademark ‘501’ had a national and international value. As far as copyright valuation is concerned, the Assessee had a copyright on the content of the labels, wrappers and the colour combination on them. Similarly, the know-how had a value since aroma of beedis differ from one manufacturer to another, depending on the secret formula for mixing and blending tobacco.

The Apex Court left open the question of applicability of Sections 35A and 35AB of the Act for an appropriate case and laid focus on the applicability of Section 32 of the Act read with the inclusive definition of ‘plant’ under Section 43 (3) of the Act. The Apex Court held that Section 32 of the Act, as it stood at the relevant time, did not make any distinction between tangible and intangible assets for the purposes of depreciation. The distinction came in by way of an amendment after the assessment year discussed in the present case, and that being the position, the Assessee is entitled to the benefit of depreciation on plant (i.e. on trademarks, copyrights and know-how) in terms of Section 32 of the Act as it was at the relevant time.

The Apex Court, in the instant case, further observed that when a firm acquires the plant of another, the intellectual property would fall within the definition of 'plant' as “there can be no doubt that for the purposes of a large business, control over IPR such as brand name, trademark etc. are absolutely necessary.” The Apex Court also stated that “the acquisition of such rights and know-how is acquisition of a capital nature. Therefore, it cannot be doubted that so far as the firm is concerned, the trademarks, copyrights and know-how acquired by it would come within the definition of 'plant' being commercially necessary and essential as understood by those dealing with direct taxes”.

The Apex Court further observed that the case at hand states that though the definition of ‘plant’ in the Act mentions “vehicles, books, scientific apparatus and surgical equipment purchased for the purposes of the business, profession or vocation”, it must be given an expanded meaning including Intellectual Property Rights within its ambit.

Conclusion

The present case is more academic in nature as it deals with the assessment year 1994- 95, a pre-amendment scenario which did not demarcate between the tangible and intangible assets. Therefore post the amendment to Section 32 of the Act, which clearly demarcated between tangible and intangible assets the situation of commercial rights being akin to know- how, patents and other intellectual property rights being eligible for depreciation has been amply clarified for future purposes.

Thus, it is clarified that the instant case holds significance for such cases where the assessment year in question was before 1999 i.e. prior to the amendment and where there existed a situation of ambiguity in respect to depreciation of tangible and intangible assets.

Comments invited on the Draft Patents (Amendment), Rules, 2015
 

The Ministry of Commerce and Industry, Government of India, has invited objections/ suggestions from the public on the Draft Patents (Amendment) Rules, 2015, in a move to amend the Patents Rules, 2003.

The Ministry of Commerce and Industry Draft Bill can be accessed from the following link:

http://www.ipindia.nic.in/IPActs_Rules/PatentRules_2015_E_29October2015.pdf

The objections/ suggestions can be sent by e-mail to rajiv.aggarwal@nic.in or at the following address:

Secretary,
Ministry of Commerce and Industry,s

Goverment of India,

Udyog Bhawan,

New Delhi- 110011

Trade Marks Official Fees increased in Bangladesh
 

The Department of Patents, Designs and Trade Marks, Bangladesh vide notification dated September 20, 2015 has amended the Trade Marks Rules. By virtue of the said amendment the fee structure for filing and prosecuting trade mark applications including renewal of the trade mark registrations has been increased.

The said amendment has revised the official fees structure for filing the trade mark applications and the practice of determining the official fees at the different stage of Trade mark prosecution depending upon the kind of goods has been eliminated. The official fees for filing and prosecuting trade mark applications will no longer be dependent on the kind of goods and shall remain fixed.

A tabular representation depicting the revised fee structure is reproduced below:

Services	Previous Official Fee US$ (Approx. equiv.)	Current Official Fee US$ (Approx. equiv.)
Filing of an application for Registration of one Trade Mark/Service Mark in one class	25/40/55 (depending upon the kind of goods in a single class)	55 (kind of goods are not allowed in the current fee structure)
Claiming a Hearing/Attending in a Hearing (if any)	NIL	20
Acceptance and payment of advertisement fees for publication in the Trade Mark Journal	10	20
Filing of Registration Fees (when there is no opposition)	75/150/225 (depending upon the kind of goods in a single class)	225 (kind of goods are not allowed in the current fee structure)
Renewal of each Trade Mark Registration	75/150/225 (depending upon the kind of goods in a single class)	225 (kind of goods are not allowed in the current fee structure)
Late Fee for Renewal of Trademark Registration	30/50/75 (depending upon the kind of goods in a single class)	85 (kind of goods are not allowed in the current fee structure)
Filing of an application to register a subsequent proprietor in a case of assignment or transmission of a trade mark (Recordal of Trademark Assignment):-	25/50	50
Every additional mark.	10	10
Filing a petition for extension of time (if any).	10/15 (depending upon the number of extension petition)	15

Golden Jubilee Celebrations of the Delhi High Court 
 

Image Source: www.delhihighcourt.nic.in

The year-long Golden Jubilee Celebrations of the Hon’ble High Court of Delhi were inaugurated by the President of India, Shri Pranab Mukherjee on October 31, 2015. The High Court of Delhi was established on October 31, 1966 and the same date next year will mark the 50th anniversary of the Hon’ble High Court.

The theme of the Golden Jubilee Celebrations has been fixed as ‘JUSTICE FOR ALL’. According to the Hon’ble President, the phrase implied empowerment of the weak and equal treatment of law irrespective of one’s individual identity.

The President, in his speech, remarked on the sacrosanct role of the Indian Judiciary as one of the three important pillars of India’s democracy, and the final interpreter of the Constitution and laws. It must help maintain social order by swiftly and effectively dealing with those on the wrong side of the law.

Notable persons present on the occasion were Shri Justice H. L. Dattu, Chief Justice of India, Shri Najeeb Jung, Lt. Governor of Delhi, Shri Arvind Kejriwal, Chief Minister of Delhi and Smt. Justice G. Rohini, Chief Justice, Delhi High Court.

The President Promulgated an Ordinance constituting Commercial Courts in India

Commercial Courts established in India

The President of India (Shri Pranab Mukherjee) on October 23, 2015 promulgated the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015, No. 8 of 2015.

The Ordinance is aimed to provide speedy settlement of commercial disputes by providing for the constitution of Commercial Courts, Commercial Division and Commercial Appellate Division in the High Courts for adjudicating Commercial Disputes of Specified Value, which shall not be less than One Crore Indian Rupees or such higher value as may be notified by the Central Government and for matters connected and incidental thereto.

The State Government may after consultation with the concerned High Court, by notification, constitute such number of commercial courts as it deems necessary provided no Commercial Court shall be constituted over which the High Court has ordinary original civil jurisdiction.

Pursuant to this Ordinance, all suits and applications, including the ones under The Arbitration and Conciliation Act, 1996 relating to commercial disputes of such specified value pending in the High Court or any civil court in any district, shall be transferred to the Commercial Division or Commercial Court as the case may be.

Further, all suits and applications transferred to the High Court by virtue of Section 22 (4) of the Designs Act, 2000 pertaining to Piracy of a Registered Design, or Section 104 of the Patents Act, 1970 pertaining to Jurisdiction of Suits concerning Infringement of Patents, shall be heard and disposed of by the Commercial Division of the High Court in all the areas over which the concerned High Court exercises ordinary original civil jurisdiction.

The said Ordinance can be accessed here. 

Japan Patent Office (JPO)-IPR Training for IP Protection Lawyers in Tokyo 2015

Date: October 4 to October 24, 2015                                                   Place: Tokyo, Japan

Recently, the Japan Patent Office (JPO) organized a training programme namely, JPO/IPR Training for IP Protection Lawyers in Tokyo. The training session which saw the presence of several IP lawyers from Brazil, Vietnam, Cambodia, Mexico, Malaysia, China and India took place from October 4 to October 24, 2015.

Managing Associate Advocate, Mrs. Lucy Rana from S.S. Rana & Co. participated in the training programme wherein she interacted with IP protection lawyers from other countries and discussed on myriad IP related topics like trademark infringement remedies in different countries, the scope of protection, advantages and disadvantages of the measures adopted in cases of trademark infringement and the scope of improvement in the existing system of IP protection in different countries.

Mrs. Rana also presented a recent case study dealing with the issues of trademark infringement, well-known trademarks and deceptive similarity of marks. According to Mrs. Rana the training session on IPR organized by JPO was very educative, interactive, collaborative and certainly helpful in incorporating changes and adopting best practices for making the present IP protection system in India more conducive and beneficial for IP holders.

Mrs. Lucy Rana during her presentation at the JPO-IPR Training