ACCEPTABLE USE OF COPYRIGHTED MATERIAL

ACCEPTABLE USE OF COPYRIGHTED MATERIAL

Sana Singh Dipak Rao & Sana Singh


10/06/2020

 

Section 52 of the Copyrights Act, 1957 provides for certain exceptions to infringement of copyright and the said provision allows limited use of copyrighted works without the permission of the copyright holder. The entire Section, identifying the various clauses of fair dealing and fair use can be accessed at: Applicability of Section 52 of The Copyrights Act to Specific Works

 

As per Section 52(1), fair use/fair dealing can be used as a defence for permitted use of the copyrighted works claiming that such use does not amount to infringement.

 

Fair use/fair dealing is an exemption to the exclusive right granted to the original creator of the copyrighted work. It allows use of copyrighted work along with some amount of value addition to the original copyrighted work. Such value addition / transformation in the said copyrighted work shall not amount to violation of copyright of the original work.

 

The specific use of a copyrighted word is considered to be fair if it usually involves only a relatively small portion of the work, it is used or reproduced for educational purposes or it does not interfere with the ability of the owner of the copyrighted work to market the original work.

 

The use of copyrighted works falling under the ambit of fair use depends of different factors. The main factor is the purpose of use of the copyrighted work. Secondly it is dependent on the nature of work. If an essential part or essential feature of the copyrighted work has been used, it cannot be considered fair use/fair dealing. In a situation where only few features of the copyrighted work have been used not affecting the original, it does not amount to infringement and falls within the ambit of fair use/fair dealing. Further an important factor which is to be considered is the effect of such use of the copyrighted work. It is to be checked whether the specific use of the copyrighted work significantly affects the owner’s market and whether the specific use of the copyrighted work would harm the potential/original market of the copyrighted work.

 

The copyrighted work is to be reproduced in a manner that it falls within the ambit of fair use/fair dealing by making the final work as a transformative work created by using the one’s skill and labour. The amount of transformation or creativity needed in a copyrighted work differs as per the characteristics of the content depending upon various external factors. It has to be done in a manner that the copyrighted work is merely being used to assist or aid the final content prepared. The copyrighted work should not be the substantial part of the content created. It is an infringement to produce ‘substantial part thereof’ of a copyrighted work without due permission. Hence, the copyrighted work is to be reproduced in a manner that it falls within the ambit of fair use/fair dealing by being transformative when compared with the original work used in the final content prepared.

 

As per Section 14 of the Copyright Act, 1957, “Copyright” means the exclusive right to do or authorize the doing of any act such as rights of reproduction, issue copies, communication to the public, adaptation and translation with respect of a work or any substantial part thereof. The use of the word ‘reproduction’ for both the work itself and substantial part of the work amounts to a sufficient indication of the scope of infringement. One useful test to decide what constitutes the substantial part is laid down in Hanfstaengl V. Baines & Co.[1] and the same test was followed in Cunniah & Co. V. Balraj and Co.[2] It is an infringement to produce the ‘substantial part’ of a copyrighted work without permission. The meaning of ‘substantial’ is not defined in the Copyright Act 1957, but legal precedents indicate the manner or degree to decide what falls under the ambit of the expression ‘substantial part thereof’. This can be deduced from the case Orient Longman Limited V. Inderjeet Anand[3]. The reproductions of the essential features of the work constitute substantial part amounting to infringement. If there is no sufficient similarity then it does not constitute a violation of the copyright unless the imitation is substantial. This is laid down in the case Ladbroke(Football) Ltd. V. William Hill(Football) Ltd.[4] To constitute piracy of a copyright it must be shown that the original has been either substantially copied or to be so imitated as to be a mere evasion of the copyright. This is observed in Macmillan & Co. Ltd. V. K. And J. Cooper. [5]

 

In the landmark case of M/s. Blackwood & Sons Ltd. v. A.N. Parasuraman [6] the court held that ‘in order to constitute a fair dealing there must be no intention on the part of the alleged infringer, to compete with the copyright holder of the work and to derive profits from such competition and also, the motive of the alleged infringer in dealing with the work must not be improper.’ Thus, to benefit from the fair use/fair dealing exception the user must not intend to compete with the copyright holder and must not try and surpass the work of the copyright holder as his and not make improper use of the original copyrighted work. This would help strengthen and intensify user’s clear and bona fide intention to not infringe anyone’s copyright.

 

The Delhi High Court in Syndicate of the Press of the University of Cambridge on Behalf of the Chancellor, Masters and School and Ors. V. B.D. Bhandari and Ors.[7] which again concerned copying for the purpose of guide books, had laid down that while dealing with the issue of fair dealing, a Court should ask whether the purpose served by the subsequent (or infringing) work is substantially different (or is the same) from the purpose served by the prior work. To be called transformative, the subsequent work must be different in character; it must not be a mere substitute, in that, it not sufficient that only superficial changes are made, the basic character remaining the same. This determination, according to the Court, is closely knit with the other three factors, and therefore, central to the determination of fair use, i.e., if the work is transformative, then it might not matter that the copying is whole or substantial. Again, if it is transformative, it may not act as a market substitute and consequently, will not affect the market share of the prior work. The Court also held that the purpose and manner of use by the defendants of the questions found in the plaintiff’s textbooks were not only different but, additionally, the defendants’ works can be said to be ‘transformative’, amounting to ‘review’ under Section 52(1)(a)(ii) of the Act. Here, the term ‘review’ was interpreted in a contextual background. The plaintiff’s claim to copyright was premised on the work being a ‘literary’ one. The review or commentary, of a part of such mathematical work too was seen in the background of this claim. In the context of a mathematical work, a review was interpreted to be a re-examination or a treatise on the subject.

 

In Syndicate of the Press of the University of Cambridge and Anr v B D Bhandari and Anr,[8] the Court while holding the work of the defendants to be transformative and not merely a substitute for the book of the plaintiff was reluctant to issue an injunction order because of the large scale use of such guide books and dependence thereon by students. On the other hand, in Syndicate press of University of Cambridge v Kasturilal and Sons[9], the Court went ahead to hold that even if it is assumed that the defendant’s work could have enabled students to give effective answers in examinations, such a situation cannot permit purloining verbatim texts of the original work.

 

Also relevant are proceedings initiated in 2012 before the Delhi High Court by the Oxford University Press, Cambridge University Press, and Taylor and Francis against Rameshwari Photocopy Services and the University of Delhi for distributing Photostatted course material to the students, without taking any permission from the publishers. Subsequently, in 2016 the Delhi High Court held that the impugned material would constitute reproduction of work by teacher for the propose of imparting instructions to pupil and would therefore fall within the exception prescribed under Section 52(1)(i) of the Copyright Act 1957.[10] Aggrieved by the said order, the publishers filed an appeal before the division bench of the Delhi High Court which set aside the order and further observed that ‘fair use’ shall be determined on the touchstone of ‘extent justified by purpose’. Consequently, the matter was referred to the single bench on the triable issue of whether the right to photocopy books for educational purposes is absolute and not hedged by the condition of it being a fair use.[11] But in March 2017, the Publishers withdrew the suit from the Delhi High Court and assured that they would refrain from instituting any further legal proceedings.

 

However, the Indian Reprographic Rights Organization filed a special leave petition before the Supreme Court regarding the abovementioned proceedings which was dismissed by the division bench on in May, 2017.[12]

 

The main purpose of the fair dealing/fair use exception is to avoid lack of progress in the growth of creativity. In India fair use/fair dealing is a severe concept as it provides a comprehensive list of acts as exceptions to infringement and any use of the copyrighted work beyond Section 52 is considered to be an act infringement of the copyright. Though the ambit of fair use/fair dealing is interpretative in nature and mainly depends upon the different manners in which the content is being used. The use of a copyrighted work differs as per the characteristics of the content depending upon various external factors.

 

 

 

[1] [1895 ] A.C. 20

[2] AIR 1961 Mad. 111 at p. 113

[3] 2005(30)PTC11(Del)

[4] ((1964) 1 All. E.R. 465

[5] (A.I.R. 1924 P.C. 75 AT p. 81)[5]

[6] AIR 1959 Mad. 410

[7] 2011(47)PTC244(Del)

[8] 2009(39)PTC642(Del)

[9] 2006 (32) PTC 487 (Del)

[10]The Chancellor, Masters & Scholars of the University of Oxford and Ors v. Rameshwari Photocopy Services and Ors. 2016(68)PTC386 (Del)

[11] The Chancellor, Masters & Scholars of the University of Oxford and Ors v. Rameshwari Photocopy Services and Ors. 2017(69)PTC123(Del)

[12]Indian Reprographic Rights Organization v. Rameshwari Photocopy Service And Ors S.L.P (c) CC No. 9194/ 2017

THE CONTEMPORARY ISSUE OF THE NON – CONVENTIONAL TRADEMARKS

THE CONTEMPORARY ISSUE OF THE NON – CONVENTIONAL TRADEMARKS

 

A trademark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. A Trademark has been defined in Trade Marks Act, 1999, under section 2(1)(zb) as any mark which is distinctive and is capable of distinguishing goods and services of one undertaking from another, and capable of being represented graphically. It denotes the representation of a product or its characterization which has to be unique, where it would appeal to the general public’s perception and senses in a significant manner.

 

The protection of trademarks is the law’s recognition of function of symbols. Whatever the means employed, the aim is the same—to convey through the trademark, in the minds of potential customers, the desirability of the commodity upon which it appears.

 

Traditionally, trademarks are used to identify the origin of the product. Apart from the trademarks like general logos, devices or symbols, there is another category of trademark, which are known as non-conventional trademarks. These are mainly found in the form of Smell Mark, Sound Mark, Taste Mark, Touch Mark or Color Mark. In order to be irreplaceable one must always be different and distinct.

 

The definition of a trademark under the Trade Marks Act, 1999, is of inclusive one, and therefore non-conventional trademarks can very well fit into the ambit of trademark if they satisfy the criteria of both distinctiveness and graphical representability. A trademark should have the potential to be distinctive; it must indicate source and thereby distinguish the goods or services from others.  The concept of a non-conventional trademark must have the communicative ability of being able to differentiate the goods and services of a person from another.

 

Registration of such trademarks is progressively being recognized in various countries. The Indian Trademark Law focuses on the requirement of a trademark being capable of graphical representation. Though conventions and treaties in the past have been held where graphical representation of a trademark has not been considered a necessity in granting registration to it.

 

I. ANALYSIS

Graphical representation of non-conventional trademarks is based on the concept of practical application rather than of legal issue. The problem has been coupled with distinctiveness, and it poses as a serious obstacle on the way of registering non-conventional trademarks. There are many nations who have adopted the new regulations of non-conventional trademark, where such nations have implemented the laws at the statutory level.

 

Section 2, Article 15, Clause 1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines trademark as, “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.

 

Section 3 of the draft of Manual of Trade Marks Practice & Procedure, issued by the Trademark Office, India, provides a definition of the trademark as including any mark as long as the mark is capable of being represented graphically and capable of distinguishing the goods or services of one person from that of the others.

 

India has a very rigorous process of registration of non-conventional trademark. The regime under Indian Trademark has enunciated the registration of non-conventional trademark, such as; as per Rule 26(5) of the Trade Marks Rules, 2017, Sound trademarks  can be registered by submitting a sound clip along with the musical notations, where the length of the sound clip should not more than 30 seconds; such as ICICI bank was the first Indian entity to get a sound trademark registration for its jingle, and The grant of Yahoo’s sound trademark was a very healthy development for the trademark regime in India.

 

Other sound trademarks registered in India are the four note bell sound of Britannia Industries, Cisco tune for conferencing on Web Ex and Nokia’s guitar notes on switching on the device.

 

Rule 26(2) of the Trade Marks Rules, 2017, states that Colour trademarks can be applied for by submitting a reproduction of that combination of colours. The onus will be on the Applicant to show that the colour or sound has acquired distinctiveness or secondary meaning due to continuous bonafide usage. For instance, Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2005(31) PTC 583 DEL, elaborates on the matter of using combination of colour to denote the brand of the company.

 

Rule 26(3) of the Trade Marks Rules, 2017, states that Three dimensional trademark can be registered by reproduction of the trademark, which shall consist of a two dimensional graphic or photographic reproduction. Rule 26(4) of the Trade Marks Rules, 2017, states that the shape of the goods, shall consists of shape of goods or its packaging, can be registered through the process of reproduction of at least five different views of the trademark and a description by word of the trademark.  As for smell trademark registration, there is no provision till date.

 

II. CHALLENGES OF NON-CONVENTIONAL TRADEMARKS

Evolution of the Trademark registration systems of conventional subject matter has gradually developed. Registration of non-conventional trademarks like smell marks, colour marks sound and shape marks are yet to gain momentum.

 

There are quite a number of challenges before the applicant who wishes to register non-conventional subject matter. The registration for applying under this criteria to word and device trademarks is easy. The miniscule problem arises when a smell trademark or sound trademark has to be registered. It is not a very difficult to register colour trademarks, if the applicant can prove that the colour or combination of colours has acquired through secondary means and distinctiveness after being in use by the applicant for such a long period of time that consumers have begun associating the colour with the goods of the applicant.

 

For instance to obtain registration of a smell mark we will have to represent such a mark graphically and prove that it is distinctive from the product itself. But represent a fragrance or a smell graphically by may be giving a chemical formula or the composition details is challenging as it is supposed to signify that product and not particularly the smell of that product. Though, some smell mark descriptions could provide evidence to prove distinctiveness and have also been registered outside India, such as the tennis balls of a Dutch Company which smell like newly cut grass and darts with smell of bitter beer.

 

Some jurisdictions also accept registration for taste marks by providing graphical representation by providing a literary explanation of the taste.

 

While registering smell or taste marks and while proving distinctiveness of such marks, another barrier that plays a role is whether such marks act as being a “functional feature” of the associated products as the other traditional trademarks are considered to be one.

 

Amongst others there are touch/texture marks which primarily contribute giving a sense to the consumers by providing reference to the products’ existence. The touch/texture mark is a mark which is distinctive to the consumers being a characteristic feature of the trade dress/packaging of the product which can be felt and not just seen by a bare eye. Examples of such marks might include the leather texture of a Louis Vuitton bag.

 

III. CONCLUSION:

The Trademark Rules have abundantly given the procedure for application of non-conventional trademarks. But there is still a scope for the law to catch up with modern marketing techniques that use colours, shapes, scents and sounds to make their product distinctive.

 

In India, the prerequisite of graphical representation is coupled with other grounds that are mandatory to be met with if a trademark is applied for registration. Trademarks which are not prima facie “capable of distinguishing” the goods or services of one person from those of the other are devoid of distinctive character. Such marks lacking distinguishing feature can be registered only if evidence to substantiate acquired a distinctive character as a result of the use of such trademarks, can be presented. If any of such trademarks are descriptive in nature they must acquire/attain a secondary distinctive meaning to indicate that the goods or services in connection with which the said trademarks are used relate to a specific brand or the owner. Therefore, if a non-traditional trademark has acquired distinctiveness and is known as a result of its continuous and prolonged use amongst the general public and that the consumers associate such non-traditional trademarks with its brand or the owner, then such trademarks are registrable under the Indian Trademark Law. The brand owner is required to submit evidence to substantiate continuous and prolonged use and other documents showing that the expenditure done on the non-traditional trademarks’ marketing and advertising focused on creating awareness amongst the general public/consumers to draw a relation between such trademarks and the brand/owner serving as an indicator the brand/owner.

 

If a non-conventional trademark is distinctive and not functional, it does require trademark protection.  Non-conventional trademarks has to attract a new variety of customers who are more closely connected to the feel of the trademark. It would help a consumer with imperfect recollection to help identify any product which they would usually not be able to differentiate between. Granting of non-conventional trademark would act as an incentive for other undertakings to develop new and innovative ways of branding and marketing their goods.

PATENT (AMENDMENT) RULES, 2019

PATENT (AMENDMENT) RULES, 2019

The Draft Patents (Amendment) Rules, 2018, as notified on 4th of December 2018, by the Central Government, have now come into force from 17th of September 2019 and are called the Patents (Amendment) Rules, 2019 (“Rules”).

Below are the Amendments as specified in the new Rules:

  • The said Rules now primarily allow the following categories of applicants, eligible for expedited examination of their patent applications:
    1. Start-Up
    2. Small Entities
    3. Natural Person(s)
    4. Female Applicants
    5. Departments of the Government
    6. Institutions established by a Central, Provincial or State Act
    7. Institutions wholly or substantially financed by the Government
    8. Government Company as defined in Section 2(45) of the Companies Act
    9. Applicants of countries whose patent offices have an agreement with the Indian patent office.
    10. Applicant pertains to a sector which is notified by the Central Government
  • As per the previous rules, the Patent Agent of the Applicant was required to submit duly authenticated copies in original e-filing of the same. As per the new Rules, the  originals are required to be submitted by the Patent Agent only upon request by the Patent Office. The duly authenticated originals are to be submitted within 15 days of receipt of such request.
  • As per the previous rules, in case of small entities, every document for which the fee payable in respect of grant of patents, applications and in respect of other matters for which fees are required, is be accompanied by Form – 28. As per the new Rules, it is mandatory for start-ups as well to file Form – 28 with every document for which a fee has been specified.
  • As per the new Rules, no transmittal fee to be paid by the Applicant when filing PCT applications. The transmittal fee previously charged was INR 3200 to INR 17600 depending on the nature of the applicant and the filing mode. Individuals and Start-ups were charged INR 3200 when filing the PCT through the e-PCT filing module, small entities were charged INR 8000 and large entities were INR 16000. If the PCT application is filed physically, the fees as earlier would applicable.
  • There is no fees now for the preparation of certified copy of priority document and e-transmission through WIPO-DAS. Previously Individuals & start-ups were charged INR 1000 along with INR 30 per extra page in excess of 30 for the preparation of certified copy of priority document. MSME’s were charged INR 2500 along with INR 75 per extra page in excess of 30 and the large entities and Companies were charged INR 5000 INR along with 150 INR per extra page in excess of 30, for the preparation of certified copy of priority document.
  • As per the New Rules, amendments have now been made to the format of Form 18A to include the entire category of applicants who are eligible for expedited examination along with the list of documents that each of these types of applicants would have to adduce at the time of making the request.

The said Rules can be accessed at: http://www.ipindia.nic.in/writereaddata/Portal/News/569_1_The_Patent_Amendment_Rules_2019_.pdf

PROTECTION OF “COLOR” UNDER THE TRADEMARK LAW

PROTECTION OF “COLOR” UNDER THE TRADEMARK LAW

Introduction

A trademark is a recognizable signdesign, or expression which identifies products or services of a particular source from those of others. A trademark may be located on a package, a label, a voucher, or on the product itself. Apart from the traditional trademarks like general logos, devices or symbols, there is another category of trademark, which are known as unconventional/non-conventional marks. These are mainly found in the form of smell marks, shape marks, sound marks, or color marks. In order to be irreplaceable one must always be different and distinct. A trade dress of a product comprising of color combinations, is protectable only if it is worthy enough to be recognized by the consumers as unique or pertaining to a particular brand. The Tiffany’s blue, Cadbury’s purple or Ferrero Rocher’s combination of golden and brown are such distinct products which have applied intellectual creativity and skill in order to be known in their respective industry.

Trademark law protects the owner’s exclusive rights to use the mark, thereby preventing any unauthorized use of the mark which shall cause confusion in the minds of the general public. It aims at promotion of goods or services in the market, at the same time restricting competitors from using the mark and gain profits through imitation. It also aspires to protect both the interest of the consumer and the traders in the market.

Under the Trade Marks Act, 1999, (“Act”), as per section 2(1)(zb), “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors and as per section 2(1)(m), “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

This means any word, device, brand, heading, letter, numeral, etc. can be included in the list if distinctiveness and graphical representation are present and hence be registered as a trademark. However, the problem arises in cases which fall outside the ambit of conventional or traditional trademarks, the registration of which becomes difficult to be given exclusive status.

Law pertaining to ‘Color’ Trademarks

The definition of the word “mark” and “trademark” as laid down in the Act provides for “combination of colors” or “any combination thereof”. Under Trademark law, color is inherently indistinct, but a combination of colors, with sufficient acquired meaning can gain distinctiveness and is capable of being registered as a trademark.  A combination of colors may be considered distinctive for the purposes of trademark protection only when it can be demonstrated that the combination of colors is so closely associated with a product or brand that the product or brand can be recognized by the particular combination of colors only.

To prove distinctiveness of a color trade mark, the colors should be used in a specific manner to perform the trade mark function of uniquely identifying the commercial origin of products or services. Use of distinctive combination of colors helps customers or the general public to relate the goods to their source which helps to increase the market of a particular source and also excludes others from deriving any benefit accrued from this unique mark.

 

While filing for a color trademark, an applicant is required to submit evidence to show that the said color combination or color that has been claimed is solely associated with the applicant and the public associates the color with the goods mentioned in the application. The evidence can be in the form of such as public surveys demonstrating association of the combination of colors with the applicant’s product or brand. However, without sufficient supportive evidence, acquiring protection in this way may be difficult. The burden lies on the applicant to prove that the particular combination of colors has acquired distinctiveness in course of trade or has acquired secondary meaning due to bonafide uninterrupted usage. For example, Orange as a trademark for a drink may be distinctive but when the color orange is claimed for packaging of those bottles would be non-distinctive.

View of the Indian Courts

In the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) PTC 478 Del, Colgate sought ad interim injunction against the use of trade dress and color combination of one third red and two third white, in that order, on the container of its product viz. Tooth Powder as by adopting the similar trade-dress particularly the color combination of “red and white” Anchor was “passing off” the goods of Colgate as its own. The court held that it is the overall impression that a customer get as to the source and origin of the goods from visual impression of color combination, shape of the container, packaging etc. If illiterate, unwary and gullible customers get confused as to the source and origin of the goods which they have been using for longer periods by way of getting the goods in a container having particular shape, color combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the color combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter. In the said case the Indian judiciary acknowledged color as a part of trade dress and provided protection to it in in the present case by injuncting Anchor from using the color combination of red and white in that order as trade dress on the container and packaging.

 Also in the famous Cadbury case, Cadbury Uk Limited V. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A. (Case No: A3/2016/3082), Cadbury proved that it’s distinctive shade of purple (Pantone 2865C) on the wrappers packaging for its milk chocolates had gained a distinctive character. Public survey was submitted as a proof to this assertion and the same was granted on 1st October 2012 after a long drawn out legal battle with Nestle.

In the case of Deere & Co. & Anr vs. Mr. Malkit Singh & Ors. (CS (COMM) No. 738/2018), the  Delhi High Court in 2018 granted protection to the Plaintiff’s green and yellow color combination used uniquely on its tractors manufactured for agricultural use on the basis of reputation, distinctiveness and instant source of identification of plaintiff’s products, more so as such color combination was in use for 100 years and the public at large had come to associate the yellow wheels and green body with Deere tractors.

The Delhi High Court in one of its recent judgment on May 25, 2018, in the case of Christian Louboutin v Abu Baker CS (COMM) No.890/2018, refused the trademark of red colour on the sole of heeled shoes on the point that, the mark was just consisting of a single colour red which is invalid as per the definition of a mark under Section 2(1)(m) of the Trademarks Act, 1999 as it requires a mark to be a ‘combination of colours’.  ‘Combination of colours’ is sine qua non, meaning thereby, a single colour, as contra-distinguished from combination of colours, cannot be a mark, falling in the definition of “mark” as well as a “trademark”’. The Court pointed out that the usage of the phrase ‘combination of colours’ in Section 2(1)(m) shows the intention of the legislature to not allow single-colour trademarks. The Court distinguished this case from the previous Deere & Company & Anr. v. Mr. Malkit Singh & Ors., and Christian Louboutin Sas v. Mr. Pawan Kumar & Ors., stating that in both the cases, the provisions of Section 2(1)(m) and Section 30(2)(a) were not taken into consideration. Section 30(2)(a) precludes a claim for infringement, stating that, when a person other than the registered owner of a trademark uses the mark to indicate a characteristic of a good or service, the trademark is not infringed. Here, the court appears to have misinterpreted the provision to mean mark ‘in relation to’ a characteristic instead of mark ‘indicating’ a characteristic. Moreover, the court refused the passing off remedy which is a common law remedy and independent of Indian statutes also, on similar grounds, in spite of Section 27(2) of the Trade Marks Act, 1999 mandating that nothing in the statute shall affect the rights of a person filing for passing off.

Conclusion

When allowing non-conventional trademarks such as combination of colours as trademarks, the courts ensure that the test of distinctiveness is very strict. It is therefore, clear that for registrability of combination of colors as trademarks there needs to be a ‘plus’ factor or a secondary meaning to the color when it is attached to the product. However, there is no exhaustive test as to whether the combination of colors have acquired distinctiveness and it all depends upon how the customers perceive the combination of colors and how the court is able to capture it.

NO COPYRIGHT PROTECTION FOR TITLE OF LITERARY WORK

NO COPYRIGHT PROTECTION FOR TITLE OF LITERARY WORK

The Supreme Court in a landmark judgement in the matter of Krishika Lulla & others Vs Shyam Vithalrao Devkatta held that no copyright subsists in the title of a literary work and no such relief is available except in an action for passing off or in respect of a registered trademark comprising such titles. However, such protection can be claimed in exceptional circumstance, where the title is of inventive nature.

The main issue before the court was whether copyright subsist in the title of the literary work “Desi Boyz”.

The facts of the case were that the Respondent Shyam Vithalrao Devkatta, had written a story with the title “Desi Boys” and had got the synopsis of the story registered with the Film Writers Association. He mailed his concept in the form of synopsis titled as “Desi boys” to two persons, through his friend, who were in the process of making a comedy story. However, he did not received any reply but, then the Complainant saw promos of a film named ‘Desi Boyz’ which was subsequently released throughout India on 25. 11. 2011. According to him, the adoption of the title “Desi Boyz” is a clear infringement of the copyright in the film title “Desi Boys”. No claim was made by the Complainant with respect to the film infringing upon his copyright in the story ‘Desi Boys’.

The court noted that Section 13 of the Copyright Act, 1957 provides protection for original literary work. The court stated that a title by itself cannot be considered as complete by itself without the work that follows. It further stated that the title ‘Desi Boys’ is the combination of the two words ‘Desi’ and ‘Boys’ which are very commonly used words in India and that has nothing original in it. The mere use of common words as used here cannot qualify for being described as ‘literary’. Therefore, no copyright subsist in the title ‘Desi Boys’ under Section 13 of the Copyright Act, 1957.

The Supreme Court while deciding the issue referred to judgement given by Delhi High Court in Kanungo Media (P) Ltd Vs RGV Film Factory & others where the court declined injunction against the defendant for using the brand name and title “Nishabd” alleging similar to the film of the plaintiff therein. It was observed in the said case that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the copyright of a senior user’s work since there is no copyright infringement merely from the identity or similarity of the titles alone. The Court also referred to judgement given by the Madras High Court in the R. Radha Krishnan v. Mr. A.R. Murugadoss & others where the Madras High Court followed the decision of the Delhi High Court in the Kanungo Media Case and rejected an injunction for restraining the defendant from using the title of the plaintiff’s film ‘Raja Rani’. The Madras High Court considered various other decisions and held that the words ‘Raja Rani’ are words of common parlance which denote the king or the queen and cannot be protected under the law of copyright.

Therefore, it is now clear that there can be no copyright protection for titles of works under normal circumstances. The protection by way of registering a trade mark may be available, provided, the title is distinctive. “The appropriate remedy in such cases will be an action for passing off,” said the Court.