BHARAT SINGH
in Intellectual Property Law
Asked November 06, 2014

trademark violation

  • 2 Answers
  • 177 Views

I attempt to frame my question in the form of a hypothetical situation. 'A' is a well known music composing company established in New-York. Till date they have worked on the composition of numerous musical notes and have also designed music backgrounds for various Hollywood movies. They have also attained copyrights over all its sounds wide across numerous countries except in the country of India. However at the same time, B, a local news channel in India was found to make use of one of the sound notes originally produced by A in one of their daily telecasted programme. 1. Company 'A' wants to take action against such practice. What locus standi does company 'A' have in such circumstance knowing that it had not registered its sound trademark in India?

Answers 2

Default avatar
Pragya Sharma
Firstly, since the query has used both the words ‘copyright’ as well as ‘trademark’, I will answer your question on both aspects. Copyright Act 1957 Yes, company ‘A’ has a valid locus standi to seek actions against the local news channel in India. As per the Berne Convention [1], unpublished works of nationals of foreign country also enjoy the same protection as works of their own citizens, provided that the foreign country accords similar protection to their authors too [2]. Since India is a member of this Convention and so is US (Company ‘A’ is registered in New-York), India is bound to give equal protection to work of Company ‘A’. The same was validly allowed in the case of Warner Bros. Entertainment Inc. v. Santosh V.G.,"Copyright in a work published in abroad entitles its owner to assert copyright in India and such work was treated as if it was published in India” [3]. In this case, plaintiffs argued that their work was ‘infringed’ as per Section 51 of Copyright Act 1957 when copies of their work was used by defendants without their permission. They had locus standi to contest the suit as India and the US, both are parties to the Berne Convention. The petitioners were allowed to seek relief as long as it was established that they were the copyright owners of the work.. [1] The Berne Convention for the Protection of Literary and Artistic Works, 1886. [2] Demystifying Intellectual Property Rights, N.R. Subbaram (Ed. 2009), 915. [3] MANU/DE/0406/2009 . The Trademarks Act, 1999 Yes, company ‘A’ has a valid locus standi to seek actions against the local news channel in India. As per TRIPS Agreement, to which India is also a member, makes it obligatory for member states, under Article 16, to grant protection to trade marks even if they are neither used in a country nor registered there [4]. The Delhi High Court has granted exparte injunction on the ground that there was an international reputation although there was no registration or use of the trade mark in India.[5] Moreover, it has been time and again held by the Supreme Court that “goodwill is not limited to a particular country because the trade is spread all over the world being transported from one country to another” [5]. It is not even necessary that a person must carry on business in a jurisdiction before their trademark is infringed[6].Similarly, party seeking remedy for their trademark infringement need not be one which maintains any commercial relations in India [7] Section 102 of Trade Marks Act, that deals with passing of and falsification of trademarks, has nowhere specified that such a trademark must be of only an Indian. [4] Protection and Enforcement of Foreign Trade Marks in India, Vijay Pal Dalmia. [5] Blue Cross and Blue Shield Association v. Blue Cross Health Clinic (1990) IPLR 92 (Del) [7]Kamal Trading Co. v. Gillette UK Ltd., 1988 (1) PLR 135. [8] Apple Computer Inc. Vs. Apple Leasing & Industries,1993 IPLR 63 DEL; [9]Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Ors, MANU/TN/0526/1995.
Agree Comment 0 Agrees almost 3 years ago

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Srija Choudhury
In general, the following persons can sue of infringement of a registered trademark: (a) The proprietor of the registered trademark of his legal successor. (b) A registered user of a trademark subject to a prior notice to the registered proprietor and consequent failure of the registered proprietor to take any action against the infringer. (c) An applicant for registration of a trademark, he can file an infringement suit to protect his right to continue with the suit which will sustain only if his trade mark is registered before the hearing of the suit. (d) Legal hairs of the deceased proprietor of a trademark. (e) Any one of the joint proprietors of a trademark. (f) A foreigner proprietor of a trademark registered in India when infringement occurs in India. According to Section 27(1) of the Trademark Act, 1999, there is no action taken for infringement of unregistered trademark, but passing off is a common law tort which can be used. Passing off occurs when the reputation of A is misused by B without A’s permission and B misrepresents itself as the owner of the sound trademark right. Registration of trademark is not needed for the action of passing off. Reputation of trademark is a crucial factor in situation of a passing off action. Reputation means the awareness and knowledge amongst the public about a particular trademark. Generally reputation of a trademark used to exist within the territory of a country, but because of globalization people around the globe become aware of a certain product trademark or sound trademark by the way of mass media. This phenomenon is known as Transborder Reputation of Trademark. In the present case, since the sound trademark is unregistered, the foreign proprietor can take action of passing off. The District Court has jurisdiction on such matter under Section 134 of the Act.
Agree Comment 0 Agrees almost 3 years ago

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