India: Constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013 upheld

Source: www.delhihighcourt.nic.in

Recently, the Delhi High Court in the case of Anand Bhushan v Union of India upheld the constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013.

Brief Facts

• Anand Bhushan (hereinafter referred to as ‘Petitioner No. 1’) is a shareholder and Joint Managing Director of M/s Pitambar Publishing Co. Pvt. Ltd. (hereinafter referred to as ‘Petitioner No.2’).
• Petitioner No. 2 is a Company registered under the Companies Act, 1956. Petitioner No. 3, the Indian Reprographic Rights Organization (hereinafter referred to as "IRRO"), is a registered Society under the Societies (Registration) Act, 1860, having its head office in Delhi, whereas Petitioner No.4, the Federation of Indian Publishers (hereinafter referred to as "FIP"), is also a registered Society which is an apex body representing the Indian Publishing Industry and engaged in promoting and representing the interests of the said industry.
•  It was submitted that the Petitioner’s publishing business and commercial activities extended to the whole country and beyond, specifically Delhi, which was a major center for publishing activities.
• It was further submitted that their constitutional rights were affected by the Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013.
• Thus, the following Petition.  

Issues

• Whether Sections 11(2), 12(2), 31 and 33A (2) of the Copyright Act, 1957 (as amended by the Copyright Amendment Act 2012; “Act” for short) violate the provisions of Articles 14, 19(1)(c) and 19(1)(g) of the Constitution of India?
• Whether Rules 3, 47(1), 56(3), 56(4), 56(5), 56(6), 57, 59(7) and 61(5) of the Copyright Rules 2013 (“Rules” for short) violate the provisions of Articles 14, 19(1)(c) and 19(1)(g) of the Constitution of India. 
• Whether the Petitioner’s prayer to prohibit the Respondent from making any appointment to the Copyright Board in terms of the impugned provisions is justified or not?

Petitioner’s Contentions

• It contended that the Sections 11 (2) & 12 (2) of the Act suffered from the vice of excessive delegation. Also, Rule 3 of the Rules was argued to be violative of Article 14 of the Constitution, being contrary to the principles for appointment of Tribunals like the Copyright Board laid down by the Supreme Court.
• It contended that the expression ‘unreasonable element’ should be read as by applying the doctrine of 'noscitur a sociis', which meant, the expression ‘unreasonable’ in Section 33A(2) of the Act must take its color and meaning from the words ‘anomaly and inconsistency’ in the tariff scheme.
•  It submitted that the challenged Rules impose unreasonable, unjustified and fatuous restrictions on the Copyright Society registered under Section 33 (3) of the Act, without any rationale. Also, the said Rules limited the frequency of tariff revisions (whether upward or downward), which was beyond any rule-making power conferred by the Act. 

Respondent’s Contentions

• It claimed that the decision of the Copyright Board cannot be considered as wide and unlimited as the final orders of the Copyright Board can be challenged before the High Court.
• It submitted that Section 31 of the Act provided for compulsory license in case of abuse of rights. It argued that the Copyright Board, only after giving a reasonable opportunity of being heard to the owner of the copyright in the work, would direct the Registrar to grant a compulsory license as per the rates fixed by the Board.
•  It also submitted that Rule 56 introduced a system of transparency in fixing prices by the Copyright Societies and governed and regulated the system of fixation, collection and distribution of royalties. Further, Rules 59(6), 59(7) and 61(5) were in harmony with the legislative intent of Section 35(3), which provided for equal membership of authors and owners.
• Therefore, it argued that the Rules were not, in any way, violative of Articles 19(1)(c) & (g) of the Constitution.

Court’s Decision

• With regards to the noscitur a sociis argument of the Petitioners, the High Court (hereinafter referred to as ‘the Court’) was of the view that it would not like to curtail or water down the scope and ambit of language employed and adopted, given the importance to the Copyright Board for the said purpose.
•  It held that ‘while exercising the power of judicial review, it is not to examine merits of delegated legislation. A writ petition for judicial review of the Rules would lie only on certain well-defined grounds. Courts cannot always go into the merits or demerits of a policy reflected in the substratum of the Rules. The parameters of judicial review of subordinate legislation have been succinctly stated in various decisions of the Supreme Court.’
• It further held that Rule 56 does not in any way ran counter to or defeated the rights of the Copyright Society to fix and claim reasonable tariff. The Court specified that the object and the purpose behind Clauses (a) to (d) of Rule 56 was to ensure that different Copyright Societies should publish tariffs which have some form of uniformity and consistency for the users to be able to understand and appreciate them. It was a regulatory exercise and not an exercise which curtails freedom and discretion of Copyright Societies to fix tariff.
• With regard to Rule 57, the Court held that it ensures that the Board while examining the question whether the tariff was unreasonable can examine the prevailing standards of royalties to such commercial exploitation of works. This according to the Court was not an unreasonable or illegal stipulation which the Board must take into consideration while deciding the appeal. If an appeal was filed, the Board can issue general directions on whether the tariff was unreasonable and suffers inherent inconsistency.
• Regarding Rule 61, the Court refused to accept the argument of the Petitioner that some of the members of the Copyright Societies cannot be treated as legitimate or righteous members under the Act as in the view of the Court the argument was hypothetical and based on assumption that a wrong or ineligible person would be enrolled as a member of the Copyright Society. The Court further held that in case a wrong or ineligible person was enrolled, he can always be removed from the Copyright Society by following the procedure in accordance with law.

The Court held that ‘the Rules do not negate the principal enactment and it cannot be said that they are repugnant to or in derogation of the object or purpose which the principal enactment seeks to achieve. The impugned rules were held to be in consonance with the main enactment, i.e., the Copyright Act 1957. The writ petition was therefore dismissed.’

India: Radio Mirchi wins against Radio Nasha at the Delhi High Court

Source: www.delhihighcourt.nic.in

The Delhi High Court recently in the case of Entertainment Network (India) Ltd. v. HT Media Limited, held that the mark ‘RADIO NASHA’ of HT Media Limited was deceptively similar to that of Entertainment Network (India) Ltd’s Trademark ‘PEHLA NASHA’ which might lead to confusion among the consumers and they might accidentally access HT Media Limited’s service instead of the service of Entertainment Network (India) Ltd.

The Court held that the act of HT Media Ltd in adopting the name ‘RADIO NASHA’ is not bona fide as they did so while being aware of the fact that Entertainment Network Limited was the prior registered owner of the name ‘PEHLA NASHA’ and there is no distinction between the services of both the parties.

Brief Facts

• Entertainment Network (India) Ltd. trading as 'Radio Mirchi' (hereinafter referred to as the 'Plaintiff') operates in the radio broadcasting and experiential marketing segment under its trade mark ‘Radio Mirchi’ along with the Mirchi logo.
• The Plaintiff launched its 24 hours non-stop free radio channel under the Trademark ‘PEHLA NASHA’ in 2014.
• HT Media Ltd. trading as 'Fever' (hereinafter referred to as the 'Defendant') airs its radio channels through the radio station titled “Fever 104 FM”, which is a direct competitor of the Plaintiff’s Radio Mirchi.
• The Defendant launched a new FM radio channel under the name/mark ‘RADIO NASHA’ which was alleged to be identical/deceptively similar to the Plaintiff’s trademark.
• It was learnt by the Plaintiff that the Defendant had applied for registration of the mark ‘RADIO NASHA’.
• On February 22, 2016, the Plaintiff filed a complaint to the Ministry of Information and Broadcasting to not approve ‘NASHA’ as the brand name for any FM Broadcaster since the Plaintiff was the prior adopter thereof.
• The Plaintiff also filed the suit for permanent injunction before the Delhi High Court (hereinafter referred to as ‘the Court’) restraining the Defendant from using any Trademark that is identical or deceptively similar to the Plaintiff’s Trademark ‘PEHLA NASHA’.  

Issues

• Whether the Plaintiff’s Trademark ‘PEHLA NASHA’ is being infringed upon by the Defendant’s mark ‘RADIO NASHA’?

Plaintiff’s Contentions

• It submitted that that the online radio station of the Plaintiff was operated in the same manner as a full-fledged radio station and used the same hardware, software, equipment etc. as is required to run a regular FM radio station;
• It also submitted that the audio streams for the internet radio station ‘PEHLA NASHA’ of the Plaintiff were created in the studio and thereafter were broadcasted through servers on Gaana.com platform;
• It contended that it was the prior adopter of the mark ‘NASHA’, since it was operating from 2014.
• It contended that the services of the Plaintiff and the Defendant were identical and both play the same genre of songs.
• It also argued that there was no other radio service under the name ‘NASHA’.
• It was further argued that the Defendant had not given any reason whatsoever for adopting a mark with the word ‘NASHA’ which formed the predominant part of the mark of the Plaintiff.
• It was alleged that the Defendant was earlier using the mark “Radio Fever” and it was inexplicable as to why the Defendant had abandoned the mark with the word ‘Fever’.

Defendant’s Contentions    

•  I t contended that that the word ‘NASHA’ was a commonly used term in the field of music as well as internet music streaming websites and had been used prior to use by the Plaintiff, by many third parties and who till date continue to use the same. Therefore, the word ‘NASHA’ was not distinctive of the Plaintiff.
• It contended that there was a difference in the product of the Plaintiff and the Defendant.    
• It submitted that the service of the Plaintiff can be accessed through internet, all over the world, however the service of the Defendant was a FM Radio, which was available only within 20 kilometers.
• It argued that the number of ‘Likes’ on the social networking page ‘PEHLA NASHA’ of the Plaintiff were not such as to show any goodwill for the service of the Plaintiff, it cannot claim to have acquired a secondary meaning or even a reputation.

Court’s Decision

• The Court was of the view that both were catering to the needs of the patrons of free music to earn revenue from advertising. The Court held that ‘the differences pointed out by the Defendant were not such which can be distinctive of the services of the two’.  
• The Court further held that ‘it was immaterial that the music platform under the mark ‘PEHLA NASHA’ of the Plaintiff was accessible from use of medium of Wi-Fi/internet and the music platform of the Defendant under the mark ‘RADIO NASHA’ was accessible through the medium of radio/transistor and transmitted through frequency modulation airwaves’.
• The Court found merit in the Plaintiff’s contention that ‘radios were hardly used anymore and that people can easily access radio music through their smartphones. Thus, it cannot be said that the instrument, through which the music under the mark ‘PEHLA NASHA’ of the Plaintiff and music under the mark ‘RADIO NASHA’ of the Defendant can be accessed are different or that the same obliterates the similarity/deceptive similarity.’
• It was assumed by the Court that the Defendant hoped, either to cause loss or harm to the Plaintiff by incorporating the word ‘NASHA’ in its mark or to gain from the goodwill of the Plaintiff, as it admitted that the Plaintiff was the prior adopter of the mark ‘PEHLA NASHA’ and there was trade rivalry between them.
• It was further held that ‘the word ‘NASHA’ was a word of Hindi language which meant intoxication which need not always be of alcohol. The Plaintiff, by adopting the said word in its mark for music services, attempted to lure the patrons to get intoxicated and addicted to its music.’
• ‘NASHA’ was held to be the dominant part of the mark of the Plaintiff with the word ‘PEHLA’ therein being unlikely to be remembered.

‘The Defendant was therefore restrained from using the mark ‘RADIO NASHA’ or any other mark similar or deceptively similar to the mark ‘PEHLA NASHA’ of the Plaintiff in relation to broadcasting, re-broadcasting, radio broadcasting and internet broadcasting services.’

India: Shri Suresh Prabhu clarifies issue of pendency in Patent and Trademark Applications during the question hour of Lok Sabha

Source: www.ipindia.nic.in

In the question hour of Lok Sabha on August 6, 2018 the focus was shifted on the pendency of the Patent Applications with the Controller General of Patents, Designs & Trade Marks (CGPDTM). The Minister of Commerce and Industry, Shri Suresh Prabhu was questioned on the same.

The queries raised was regarding the statistics of the Patent and Trademark pending application and the reason for rapid increase in the number of pending patent applications. To which Hon’ble Minister replied that the patent pendency is measured in terms of pending requests for examination after the request is filed. Giving numbers he showed that the pendency of patent applications at examination stage has reduced from 2,04,177 as on March 2017 to 1,55,438 as on June 2018. Similarly, for trademarks, 4,54,833 applications are pending at various stages of disposal, out of which 42,304 are pending at the examination stage.

Further, the Hon’ble Minister was questioned about the proposed action plan to develop infrastructure in all patent offices in the country and other steps proposed to be taken by the Government so as to deal with the mounting number of patent and registration applications. The Hon’ble Minister in his reply highlighted the steps taken by the Government to reduce the pendency. Some of the steps mentioned were:

• That the issue of lack of technical manpower for examination and disposal of patent applications was addressed by increasing the available manpower through creation of new posts.
• Recruitment of 459 posts of Examiners of Patents and Designs.
• Sanctioning of 84 new posts of Examiners and 95 posts of Controllers.
• 2016 Amendment of Patent Rules to simplify procedures for disposal of patent applications.
• Updation of the website of Indian Intellectual Property Office to make it more interactive, informative, user-friendly and transparent.
• The steps, like enablement of computerised work-flow, automation and IT, taken in order to facilitate the examination work and optimize the speed and quality of examination were also highlighted. 

India: Madhya Pradesh loses GI Tag, fails to join Basmati League

Assistant Registrar of Geographical Indications Registry, on March 15, 2018, issued an order excluding the state from the area officially demarcated for cultivation of Basmati and rejected its claim as being original and unique basmati growing region.

In November 2008, Agriculture and Processed Food Export Development Authority (hereinafter referred to as ‘APEDA’) filed an application for Geographical Indication registration of Basmati grown areas - the entire states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir.

Geographical Indications Registry asked APEDA to include Madhya Pradesh, Rajasthan and Bihar in December 2013.

In February 2014, APEDA challenged the said order by contending that Madhya Pradesh does not fall within the ‘Indo-Gangetic Plain’.

Further, in February 2016, Intellectual Property Appellate Board ordered the GI Registry to grant recognition for basmati rice grown only in Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir and ordered Geographical Indications Registry to reconsider afresh only the plea of inclusion of 13 districts of Madhya Pradesh.

Mr. Chinnaraja G Naidu, Assistant Registrar, Geographical Indications Registry, Chennai rejected the claim vide its order dated March 15, 2018, on the ground that the state failed to satisfy the fundamental requirement of “popular public perception” of basmati cultivation in Madhya Pradesh as the documents and evidence filed by the state showed the importance, special characters of rice cultivated in Madhya Pradesh but not the basmati cultivation in the traditional growing area.^[1] Further Madhya Pradesh does not fall within the ‘Indo-Gangetic Plain’.

The said order is expected to impact not just farmers of 13 districts of Madhya Pradesh — Morena, Bhind, Gwalior, Sheopur, Datia, Shivpuri, Guna, Vidisha, Raisen, Sehore, Hoshangabad, Jabalpur and Narshinghpur but also companies which source significant quantities of basmati from MP and are selling products under the Basmati tag.

The Madhya Pradesh State government is most likely to challenge the said order in the Madras High Court.

Further farmers in Madhya Pradesh can continue growing the premium rice. However, it will not be called Basmati. The GI rights for basmati cultivation will be only limited to-

Registration No.	Geographical Indications	State
145	Basmati	The entire states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir

Various other states in India, have secured registrations for their traditionally grown premium rice. Details thereof are as under:

Registration No.	Geographical Indications	State
17	Navara Rice	Kerala
36	Palakkadan Matta Rice	Kerala
81	Pokkali Rice	Kerala
186	Wayanad Jeerakasala Rice	Kerala
187	Wayanad Gandhakasala Rice	Kerala
205	Kalanamak Rice	Uttar Pradesh
242	Kaipad Rice	Kerala
470	Ajara Ghansal Rice	Maharashtra
478	Ambemohar Rice	Maharashtra
439	Joha Rice of Assam	Assam
531	Gobindobhog Rice	West Bengal
530	Tulapanji Rice	West Bengal

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[1] https://timesofindia.indiatimes.com/india/madhya-pradesh-loses-basmati-war-fails-to-get-gi-tag/articleshow/63334747.cms

India: Recorded Music Performance Limited applies for registration as a Copyright Society

Source: www.copyright.gov.in

The Copyright Office vide public notice dated May 22, 2018, has invited attention of general public and stakeholders to the fact that Recorded Music Performance Limited (herein after referred to as “RMPL”) has applied to the Registrar of Copyrights for registration as a Copyright Society in respect of Sound Recordings.

A copyright society is a registered collective administration society under Section 33 of the Copyright Act, 1957. A Copyright Society manages and protects copyrighted work by issuing or granting licenses in respect of any work in which copyright subsists or in respect of any other right given by the Copyright Act. 

The details of the association of persons making the application as mentioned in the Copyright Application submitted to the Copyright Office are -

·         Sovan Lal Saha (Chairman)

·         Suresh Thangiah

·         Sitaram Agarwalla

·         Dewal Prashar

·         Deepak Bali

·         Sanjay Arjundas Wadhwa

·         Durgaram Choudhary

RMPL in its application dated March 01, 2018, claims to carry Copyright Business in respect of Sound Recording works as per Section 13 (1) (c) of the Copyright Act, 1957, to exercise and enforce on behalf of Members of the Company, being the Owners of Sound Recordings, in respect of any UTILIZATION of their work in any form.

As per Section 33 clause 3 of the Copyright Act, 1957, the Central Government shall not register more than one Copyright Society in respect of same class of work. However, if the said application is accepted then RMPL will be the second copyright society registered under the Copyright Act, after the Phonographic Performance Limited in respect of sound recordings.

The Copyright Office has invited objections/ suggestions from the general public/ stakeholders within 60 days from the publication of the notice.

The public notice dated May 22, 2018, along with the said copyright application and related documents can be accessed here.

India: 20-Year-Old Legal Battle between Amul and Anul finally concludes

Source: www.districts.ecourts.gov.in

After a 20-year-old legal battle, Kaira District Cooperative Milk Producers Union Limited popularly known as Amul has successfully protected its trademark from Shri Shakti Dairy and Kuldeep Enterprises, who were held by the Commercial Court in Vadodara to be guilty of infringing Amul’s trademark by selling and marketing their products under names that were matching with Amul’s original tradename.

It was held by the Vadodara Commercial Court that the usage of the name “Anul” by the Defendants was an infringement of the Plaintiff’s trademark and brand name “Amul”. The reasoning used by the Court to arrive at this conclusion was that the Defendant’s tradename of “Anul” rhymed with the Plaintiff’s tradename “Amul” and was thus very likely to cause confusion in the mind of the consumers.

Brief Facts

• In 1998, it was brought to the notice of Kaira District Cooperative Milk Producers Union Limited, known as Amul Dairy and the Gujarat Cooperative Milk Marketing Federation Limited (hereinafter referred to as ‘the Plaintiffs’) that a private dairy named Shri Shakti Dairy (hereinafter referred to as ‘the Defendant’) based in Naroda was selling milk pouches very similar in name and design to its trademarked brands ‘Amul Taaza’ and ‘Amul Shakti’. The copied pouches were being sold by Kuldeep Enterprises as Anul Taaza and Anul Shakti.
• After they learned of it, the Plaintiffs sent a legal notice to the Defendant as well as Kuldeep Enterprises, who were marketing “Anul Shakti” and “Anul Taaza”.
• The Defendant continued to sell their products with the similar brand names over the years.
• The Petitioner then moved to the District Court in Nadiad against them.
• Later, the case was transferred to Vadodara where a new Commercial Court had been set up.

Issues

• Whether Defendant’s actions of selling and manufacturing their goods by the name of “Anul” under the names “Anul Shakti” and “Anul Taaza” was an infringement of the trademarks of Amul?

Plaintiff’s Contention

• It was contended that the Defendant was engaged in the selling and manufacturing of items named as “Anul Taaza” and “Anul Shakti”, which were deceptively similar to Amul’s well-known brands “Amul Taaza” and “Amul Shakti”.
• It was argued that the products of the Defendant were sold at village areas under the name “Anul” where the village folk could very easily get confused as it would be difficult for them to differentiate between the two.
• It was also argued that the color scheme used by Anul on their dairy pouches was also similar to that of Amul’s.
• It contended that the Defendant’s actions of selling their products under the deceptively similar name of Anul, using similar get up in the packing and using an identical color scheme highlighted the Defendant’s malafide intention of imitating the trademark and reputation of the Plaintiff.

Defendant’s Contentions

• It was contended that there was no scope for confusion to be caused to the customers because the names used for its brand was phonetically different.
• It was submitted that there were others as well who were imitating the labels of the Plaintiff Amul, and thus, Amul Dairy did not have any monopoly right on the said label and trademark.
• It was argued that the case was misconceived because the Defendants have themselves coined and invented the term “Anul”.

Court’s Decision

• It held that the brand names “Anul Taaza” and “Anul Shakti” rhymed with the names of the products of the Plaintiff. Therefore, the brand names were deceptively similar to Amul’s brand name and was likely to cause confusion among customers.
• The Court took note of the fact that there were several documentary evidences of the registration of Amul and its milk brands that were produced. It was thus held to be clear that “Amul” is the registered trademark of Amul Dairy. Moreover, the Defendant failed to furnish any evidence to prove that “Anul” was coined and invented by it.

Thus, the Defendant, its marketing firm along with their agents, dealers and distributors were injuncted from manufacturing, processing, marketing and packing under the impugned labels. The Defendants were restrained from selling their dairy products under the name “Anul”, “Anul Shakti” and “Anul Taaza” or any other deceptively confusing trade name.

India: Madras High Court on Defensive Trademark Registration

Source: www.hcmadras.tn.nic.in

The Madras High Court in the case of N. Ranga Rao & Sons v. Shree Balaji Associates & Ors. held that N. Ranga Rao was not entitled to oppose the registration of Shree Balaji Associates’ mark. The Court further held that ‘Unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark. The words ‘Cycle’ and ‘Brand’ used in N. Ranga Rao’s mark were generic words, which were not been used in the class it was registered. Nobody can prevent others from using a mark by keeping it in one’s folds without making use of it.’

Brief Facts

• M/s. N. Ranga Rao. (hereinafter referred to as ‘the Petitioner’) was engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. It was claimed to be a pioneer in the field.
• It was submitted by the Petitioner that it had honestly conceived and adopted the trademark ‘CYCLE BRAND’ with the device of ‘Cycle’ in 1954 and had been continuously using the said trademark domestically and internationally without any interruption from anyone.
• It was brought to the notice of the Petitioner that an application for registration of identical trademark in Class 21 was filed by Shree Balaji Associates (hereinafter referred to as ‘Respondent No. 1’) in respect of brooms. The application was opposed by the Petitioner.
• The Deputy Registrar of Trademarks (hereinafter referred to as ‘Respondent No. 3’) allowed the opposition of the Petitioner and rejected the application filed by Respondent No. 1. 
•  The Respondent No. 1 appealed before the Intellectual Property Appellate Board (hereinafter referred to as ‘Respondent No. 2’) against the order of the Respondent No. 3.
• Vide order dated January 4, 2013, (hereinafter referred to as the ‘impugned order’) the Respondent No. 2 allowed the appeal filed by Respondent No. 1 thereby rejecting the opposition of the Petitioner.
• Aggrieved by the same, the Petitioner thus filed the writ petition before the Madras High Court (hereinafter referred to as ‘the Court’) to restrain Respondent No. 1 from registering its trademark.  

Issue

• Whether the Petitioner was justified in objecting to the registration of the Respondent No. 1’s mark? 
• Whether the Petitioner had established that their CYCLE BRAND trademark is a 'well known mark'?

 Petitioner’s Contentions

• It was contended that it had applied for the trademark registration of the mark 'CYCLE BRAND' in Class 3 and all the other classes to safeguard its interest. It also obtained registration of its labels including the trademark 'CYCLE BRAND' with device of Cycle under the Copyright Act, 1957. 
• It was submitted that the trademark was used continuously and extensively since 1954 owing to which a substantial reputation and a valuable goodwill had been accrued to the Petitioner.
• It further submitted that the trademark became one of the most sought-after brand in terms of reputation in India with respect to agarbathis, dhoop sticks, etc., and the consumers identify the trademark CYCLE BRAND with the device of Cycle only with the Petitioner and no one else.
• It contended that Respondent No. 2 held that its trademark was a well-established brand in the agarbathi industry for over many decades. 
• It further submitted that its trademark consisted of both the word 'Cycle' and the device of 'Cycle' and Respondent No. 1’s trademark also had both the word "Cycle" and device of "Cycle". 
• Highlighting Section 11 (10) (i) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) it contended that the only requirement was that the marks should to be identical or similar for a well-known trademark to be protected.
• It contended that even assuming without admitting that Respondent No. 2 had not determined its mark to be a well-known trademark, its mark deserved to be determined on account of the long, continuous and extensive use of the said trademark.
• Highlighting Section 11 (10) (ii) it submitted that the Registrar needs to take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trademark while protecting as well-known trademark, which was completely ignored by Respondent No. 2.
• It submitted that when the two trademarks appear to be similar, the Court should look at the overall similarity and not just the minute cosmetic change made deliberately by the Respondent. Looking at the overall similarity, the Respondent No. 1 had not only copied the word 'cycle' but also the device of 'Cycle'.

Respondent Contentions

• Respondent No. 1 contended that it had honestly adopted the mark with particular artistic work design and get up for brooms and other articles for cleaning purposes and had since been using the mark extensively, thereby making the mark distinctive.
• Respondent No. 1 further submitted that the device of Cycle was common to trade since large number of manufacturers were using it for various goods and services. It also submitted that the device of 'Cycle' used by the Petitioner was dissimilar from its image of a Ladies Cycle.
• It further argued that the Petitioner was using the mark only for Agarbathis under Class 3 and not for brooms or cleaning materials. However, it was using it only for brooms and other articles for cleaning purposes under Class 21. Therefore, the Petitioner cannot claim monopoly over a device of 'Cycle'.
• It also highlighted Section 46 of the Act and submitted that if a mark was registered without a bonafide intention to use the mark in relation to those goods for which the mark has been registered, or if the applicant fails to use the mark for a continuous period of five years and one month, the mark should be removed from the Register of Trade Marks.
• It also threw light on the fact that the defensive registration was done away with under the Act and the concept of a well-known trademark was introduced. It was alleged that no evidence was adduced by the Petitioner to show that the Petitioner's mark is a well-known mark. 

Court’s Decision

• The Court opined that the defensive registration in all the Classes and in particular in Class 21 is non-est in law since Section 47 of the Trade & Merchandise Marks Act, 1958 which dealt with Defensive Registration pertained only to invented words which have become well known and not to the devise (picture) of a 'Cycle' or even the Word 'Cycle', which are common to trade and not invented by the Petitioner.
• The Court agreed that it was an undisputed fact that Respondent No. 1 had never used the trademark with reference to ‘Glasswares, domestic utensils, containers trap parts', though they hold trademark registrations for the same.
• Taking note of the decision in the case of Vishnudas Trading Vs. Vazir Sultan Tobacco co. Ltd,[1] it was held that non-user of the trademark should not be allowed to enjoy monopoly, otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide user of such common word.
• On the question of defensive registration, the Court held that, ‘It was obvious that neither the word 'Cycle' or 'Brand' were invented words and so did not qualify for defensive registration. Further, a device of 'Cycle' cannot also be termed invented since 'Cycle' was a common use equipment and an image of a 'Cycle' cannot be claimed to be invented.  Therefore, the Petitioner had no right in respect of the trademark ‘Cycle Brand’ or devise of ‘Cycle’ in respect of all them goods listed under the ‘Nice Classification’.
• On the question of Petitioner’s mark being ‘Well-Known’, the Court held that, ‘A reading of Section 11(6) makes it clear that while considering whether the mark is a well-known trade mark, the relevant factors to be take into consideration are i) knowledge or recognition of the Trade Mark in relevant sections of the public as a result of promotion of the mark, ii) duration, extent and geographical area of use and promotion through publicity and iii) record of successful enforcement of the rights in the Trade Mark, in particular the extent to which the mark has been recognized as well-known by any Court  or Registrar. In the instant case, no evidence was adduced by the Petitioner to show that the petitioner’s mark was a well-known mark.’

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[1] 1997(4) SCC 201