Sustainability of a combined suit for Trademark and Copyright
Ms. Thabitha Marion Varghese
Trademark is considered to be a crucial link in the chain of product differentiation activities through advertisements. Labels, logos, color combinations, shapes, names, numerals which are to be seen on wrappers, carry bags, cartons and other advertising devices are all subject matter of trademark protection which enables the consumer to identify the goods are distinct from that of others. The labels or stylized marks used as trademark may posses some artistic features which may qualify for copyright protection, besides trademark protection under the Copyright Act, 1957 under the category of original artistic work under Section13 of the Act. In such instances it is possible to seek relief for violation of trademark under copyright law, simultaneously with infringement and passing off action under trademark law. Hence we can say that protection of trademark used in advertising by copyright law is thus of importance. In a combined suit for trademark and copyright even if there is no sale of defendant’s goods within the jurisdiction, if the Court has jurisdiction under Section 62 of the Copyright Act, it is said to have jurisdiction to entertain a combined suit.
· In Brooke Bond vs. Balaji Tea[1], the Madras High Court held that where the copyright infringement emerges from the same bundle of facts for which the trademark and passing off actions emerge, then the trademark and passing off actions should be joined with the copyright action to avoid multiplicity of litigation even though the defendant does not sell his goods within the jurisdiction of the Court where the plaintiff’s have an option to file a suit for infringement of copyright under Section 62 of the Copyright Act.
· In Glaxo Operations vs. Ramam Bhaktha Hanuman Camphor Works[2] the plaintiff had claimed copyright in the printed matter of Glaxo cartons. The Court found that the defendant Ramam Bhaktha’s cartons were a reproduction of the material features of the Glaxo’s carton and the differences were too immaterial. The Court hence granted injunction for trademark as well as the copyright.
· In Hindustan Machines vs. Royal Electrical Appliances[3] the plaintiff had been using a distinctive logo script Maharaja, constituting an original artistic work within the meaning of Section 2(c) of the Copyright Act. The defendant adopted the trademark Royal Maharaja for mixer grinders along with the logo script which was a replica of the plaintiff’s mark. The Court passed an injunction order restraining the defendants from using the trademark ‘Maharaja’ and also the logo script which was identical to that of the plaintiff.
· In the case of Burroughs Wellcome (India) vs. Unisole Pvt. Ltd.,[4] the plaintiff was the owner of trademark ‘Septran’ for antibiotic tablets and had a copyright in the photographs of carton, labels and artistic work which was used on the cartons. The scheme layout and get-up of the label was copied with slight variations, i.e. the logo in the two was different. The Court granted injunction restraining the defendant from infringing the copyright in original artistic work in the carton or any colorable imitation or a substantial reproduction of the original artistic work.
· In Hindustan Pencil (Pvt.) Ltd. Vs. Universal Trading Co.,[5] the Court held that the word ‘Natraj’ has been used from time immemorial but when it is presented in a particular design, get-up, color combination and specific pattern it can be called the artistic work. From the circumstances of the case the Court held that copyright exists in the impugned artistic work. In the case of Hi Tech Foods vs. Khanna Enterprises,[6] the defendant was restrained from dealing with the mark ‘Chetak’ or any other mark which bears resemblance to plaintiff’s work of art ‘Catch’ as such use amounts to infringement of copyright.
A trademark is protected only when another person uses an identical or deceptively similar mark as a trademark in relation to similar goods or services which are registered without the consent of the proprietor. Whereas in infringement of copyright, substantial reproduction of the label would constitute infringement of copyright. In Relaxo Rubber vs. Aman Cable,[7] the trademark "Relaxo" was used by the plaintiffs in relation to footwear. The defendants manufactured and sold cables and PVC pipes using "Relaxo" in the same style of writing in which the plaintiff’s had copyright registration. On the facts of the case, passing off was held not to be made out. As the word "Relaxo" which was written artistically was enjoying copyright protection, the infringement of exclusive right to artistic work was restrained by injunction. This shows the importance of copyright law in the protection of label trademarks. In a combined suit for infringement of trademark and infringement of copyright, the suit is maintainable in a place where the plaintiff resides or carries on business.
No comments:
Post a Comment