Trademark Infringement vis-à-vis the TATA vs. Greenpeace Case

Abstract

The Trade Marks Act, 1999 has been formulated to act as a powerful tool in the hands of trade mark owners and users and to protect their interests and the interests of the general public against the detrimental use of their trademarks.

A trademark, which has been defined in Section 2 (1) (zb) of the 1999 Act has been described as a symbol, a sign or any other mark which can distinguish goods or services of one person from that of the other. In this modern of competitive advertising, trademarks have assumed immense visual significance and are an important part of branding and marketing. Simply said, a trademark identifies the origin of a product or service and lends authenticity to it. Thus, it becomes imperative to protect such a symbol or logo being used as a trademark so that the goodwill of a product or service is protected.

The Trade Marks Act, 1999 has outlined certain criteria as under Sections 29 which identify cases of infringement of trademarks. This research note has tried to relate the law of trademarks and trade mark infringement with the latest case of TATA vs. Greenpeace India wherein the TATA group had dragged Greenpeace India to the Court for using its trademark, i.e. the ‘T within a circle’, in an online game recently launched by the organisation on its website to promote an environmental cause and thus infringing their trademark rights.

Introduction

A trademark is one of the elements of Intellectual Property Right (IPR) and is represented by the symbol ™ or ®. It is a distinctive sign, symbol or indicator which is used by an individual, business organization or other legal entity to identify uniquely the source of its products or services to consumers, and to distinguish its products or services from those of other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a combination of these elements. Trademarks are used to facilitate and enhance the marketing of a commodity and is a sign that indicates to consumers the source and reputation of the affixer of the mark and provides an important advertising and sales tool.

The Indian law of trademarks is enshrined in the Trade Marks Act, 1999 (47 of 1999) which came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory.

Section 2 (1) (m) of the Act defines ‘mark’ as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Section 2 (1) (zb) of the Act defines a ‘trade mark’ as 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 colours.

Importance of Trademarks

Trademarks are seen as an important part of intellectual property law’s role because they operate as an adjunct to the other intellectual property rights. This enables exploitation of products, processes, designs and works. Trademarks also play a role in the traditional function of intellectual property rights as they continue to act as a stimulus to innovation. Marks act cumulatively to other intellectual property protection, continuing the protection necessary for innovation after other intellectual property rights have expired. Trademarks do not prevent competition in a particular type of product but confer a monopoly in the mark. Competitors are only prevented from using the same or similar mark to identify their product. [1]

The importance of trademarks lies in their association with quality and consumer expectations in a product or service. They can be seen as serving four main purposes:

First, identifying the product of its origin,

Secondly, advertising the product/service and lending it a brand name,

Thirdly, protecting the business’ reputation and goodwill, and

Fourthly, protecting consumers from deception, that is to prevent the buying public purchasing inferior goods or services in the mistaken belief that they originate from or are provided by another trader.

The interests of both the consumers and the trader can be saved if some definite symbol which marks out the origin of goods from a definite trade source is attached with the goods emanating from such source.

In contrast with patents, design rights and copyrights, a trademark does not normally give exclusive control over the sale of particular goods or services. Rather, it merely provides control over the use of the sign in connection with goods and services. Trademarks do not create monopolies unless the sign is treated in combination with the goods and services as a product in its own right. [2]

Trademark Infringement

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration. The laws relating to trade mark infringement are enshrined under Section 29 of the Trade Marks Act, 1999.

Trademark infringement occurs if a person other than the registered proprietor in the course of trade, in relation to the same good or services for which the mark is registered, uses the same mark or a deceptively similar mark. This particularly harms the goodwill of a brand if its trademark is well-known.

To this effect, Section 2 (1) (zg) of the Trade Marks Act, 1999 defines a ‘well-known trade mark’ in relation to any goods or services as a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.

Thus, if any organisation, company, business or legal entity is using the registered trademark of another entity, without permission, it constitutes a crime and also causes damage to the business, goodwill and reputation of that entity or company. [3]

Essentials of Trademark Infringement

The taking of any essential feature of the mark or taking the whole of the mark and then making any alterations or modifications therein, or

Using another’s trademark in the course of trade, business or course, i.e in a regular trade wherein the proprietor of the mark is engaged, or

Use of the infringed mark must be in printed form; oral use of the trade mark is not infringement.

Effect of Infringement

A trade mark used by one other than the registered proprietor is likely to cause confusion in the mind of public or is likely to cause impression of association with the registered trade mark.

Remedies for Trade Mark Infringement

Whenever a dispute regarding trademark infringement arises, the following remedies are available against such infringement:

Civil

When instances of infringement and passing off occur, the court of competent jurisdiction (court not lower than district court) can be moved for a grant of interlocutory injunction, Anton Pillar Orders, damages and account of profits.

Criminal

Complaint may be made against the person causing infringement. Both the actions, the civil and criminal law, can be initiated simultaneously. Under the civil law proceedings, the plaintiff seeks reliefs for himself while under criminal law proceedings, the complainant seeks award of punishment to the infringer.

Administrative

Opposing the registration of a deceptively similar trade mark when the trade mark registry is in the process of considering the ground of a trade mark, can protect the trade mark. The registry can also be moved for removing of a deceptively similar trade mark, if registered. [4]

Cases of Trade Mark Violation in India

Trade mark infringement among the corporate classes in India seems to be rising. Two notable cases have been described in brief in this regard:

Pantaloon v. Shoppers’ Stop

Shoppers’ Stop and Lifestyle dragged their rival Pantaloon to court as they were miffed with an advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th June, 2008. The complainant retailers had accused Pantaloon of trademark violations and unfair business practices. All the three parties operated department store chains in lifestyle segment.

Pantaloon’s ‘Central’ mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card holders of competing retailers like Shopper’s Stop, Lifestyle and Westside, were lured by Pantaloon by offering an additional 10% discount on select brands of apparel. The advertisement asked such customers to “present their membership card to avail this offer.”

Loyalty cardholders were mainstay of business for most retailers. Shoppers’ Stop had a highly popular loyalty card programme branded “First Citizen.” According to analysts, more than two-thirds of Shoppers’ Stop’s apparel business was accounted for by its loyal customers.

The petitioners contended that Pantaloon was luring the former’s customers by using their name in an unfair manner. The Hon’ble Delhi High Court issued an injunction restraining Pantaloon from using names of its rivals in the ads until the next hearing.

The TATA vs. Greenpeace case [5]

This is a recent case involving TATA Steel Ltd. and an international environmental NGO called Greenpeace. TATA Steel Ltd. plans to set up a steel plant at Dharma Port which is situated off the coast of Orissa and is purportedly endangering the lives of numerous Olive Ridley turtles habituating near the port. Greenpeace initially contended that TATA did not comply with all the requirements of the Environment Ministry whereas TATA argued that they had got the environmental clearance. Following thus, Greenpeace India raised serious concerns against TATA’s new project. It launched an online game on its official website title ‘Turtle v. TATA’ in order to generate public awareness regarding TATA’s steel port located off the coast of Orissa, which is one of the last nesting grounds of the endangered Olive Ridley Turtles. The game, a rendition of ‘Pac-Man’ involves the yellow turtles to eat as many white balls and other sea animals without running into the TATA demons. TATA Group contends that Greenpeace India infringed their trademark rights and maligned their reputation by using the TATA’s trademark and logo, ‘the T within a circle’ to portray the ‘demons’ in the game.

Greenpeace India has relied upon Section 29 (4) of the Trade Marks Act, 1999 which states that:

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Greenpeace maintains that since the trademark (T within a circle) was used for gathering public support against the construction of Dharma Port Company Ltd. and to fairly criticise the acts of the TATA group, it in no way infringed their trademark rights. Greenpeace contended that there was no intention to defame the TATA group, whereas the TATA demons were used as a medium to inform the people of the harm the new project of TATAs could cause to the already endangered species of turtles.

Usually in cases where the infringing mark is identical with the registered trade mark and the goods or services are also identical with the goods or services covered by the registered trade mark the court shall presume that such mark is likely to cause confusion in the mind of the public.

The law of trade mark in India allows the usage of one’s trade mark by another only in certain situations. This provision has been described under Section 30 (1) of the Trade Marks Act, 1999 and reads as follows:

Nothing […] shall prevent the use of registered trademarks by any person for the purposes of identifying goods or services as those of the proprietor, provided the use:

a) is in accordance with the honest practices in industrial or commercial matters, and;

b) is not such as to take unfair advantage of or to be detrimental to the distinctive character or repute of the trade mark.

It is important to note here that if the infringer has absolutely copied the mark and made a facsimile repression of it, no further evidence is required to prove trade mark infringement. When the similarity is so close so as to make it impossible to suppose that such marks were devised independently of each other, in the absence of evidence of a common origin, the conclusion is always that one party copied the mark of another and suitably Greenpeace should be liable for trade mark infringement.

However, the online game is designed as creative, peaceful and non- confrontational platform to draw attention to the threat that the Olive Ridley Sea Turtles are facing due to the Project.

Greenpeace India submits that its use of the TATA trademark and “T” device does not amount to trademark infringement, as it is not commercial usage, meant to profit or gain from the goodwill or reputation of such marks.

Judgment

The Delhi High Court has declared that Greenpeace India, which is a non-profit organisation, has not indulged in any profit-making by launching the ‘Turtle v. TATA’ game on its website. Also the aim of the user of the trademark was to invite the attention of the people towards the owners of the trademark. The use of the TATA’s logo by Greenpeace has been termed merely denominative in nature by the Court and the use of the trademark as an object of critical comment does not amount to infringement.

Author’s Critique

The present case involves trade mark infringement which has allegedly occurred by way of TATA’s registered trade mark acquiring a reputation in India and the use of an identical mark without due cause thereby being detrimental to the distinctive repute of its registered trade mark. This case, therefore, takes into account TATA’s logo which is a well-known trademark as under Section 2 (1) (zg) of the Trade Marks Act, 1999. The Delhi High Court has, in its judgment, given preference to environmental issues at hand and the need to garner public interest and awareness. Greenpeace, in its latest initiative to inform the people of the harm the TATA project would cause to the Olive Ridley Turtles, has flouted the basic ethics of the business industry. The online game, which uses the TATA logo to portray the demons has clearly defamed TATA’s reputation. Although, the construction of the steel plant i.e. Dharma Port Ltd. by the TATA group has become a great environmental issue and a threat to the life and continuance of the species of the Olive Ridley Turtles, the act of Greenpeace India has indeed resulted in trademark infringement as stipulated under Section 29 of the Trade Marks Act, 1999 thereby affecting the reputation and image of the TATA group.