Beiersdorf A.G V. Ajay Sukhwani and Anr. - Delhi High Court Judgement answers some of the FAQs in TM Dispute

Recently, I came across a judgment passed by the Hon'ble Delhi HC in the Beiersdorf AG (owner of "Nivea") V. Ajay Sukhani and Anr., which perhaps, settles the legal position (at least for the time being) on some of the most often encountered TM disputes.

Facts

"Nivea" is a world renowned brand in the toiletries business (Class 3) and is owned by the Beiersdorf AG of Germany and has been registered in Germany since 1905. Ajay Sukhani (partner) runs an educational consultancy firm under the name and title M/s. Nivea International and also owned the domain name http://www.niveainternational.com/.

Beiersdorf filed a complaint with ICANN for transfer of the above said domain name under the Uniform Domain Name Dispute Resolution Policy and an order was passed by against Beirsdorf rejecting its complaint. Beiersdorf filed a suit for passing off and restraining M/s Nivea International from using a similar or deceptively similar trade mark and domain name as that of Beiersdorf.

Held

While granting the prayers of Beiersdorf and injuncting M/s. Nivea International; the Hon'ble Delhi HC has ruled as follows;

1. On the issue of Res Judicata arising out of the decision of ICANN; Finality is not attached to the decision of the administrative panel. For res judicata to apply, the decision between the parties should have attained finality. Civil suit is maintainable before and after administrative proceedings. It is also not possible to accept the contentions of the Defendants that the decision of the administrative panel is an award.
2. Plaintiff enjoys goodwill and the word "Nivea" is recognised and accepted by the general public as associated with the Plaintiff.
3. To succeed in a suit for passing off, it is not necessary that both parties should be in the same line of business. The test is not whether the parties are in the same or connected line of business but whether there is likelihood of confusion or the Defendant has tried to mislead.
4. Actual damage need not be proved. Possibility of damage is enough.
5. When there is a dishonesty or fraud in the initial adoption of trade name, plea of laches and delay normally is rejected. If the initial adoption itself is mala fide and tainted, it does not become valid and legal with passage of time.

What if you have to pay for using :-), ;-), ;) or :) ??!

Surprised, shocked or just finding it funny? Trust me, my reaction to this was no different. Recently, I read that a Russian businessman, Oleg Teterin (he runs mobile ad company called Superfone) has indeed succeeded in obtaining Trade Mark registrations from the Russia's Federal Patent agency for a range of sequences using colon, semi-colon, hyphen and closed parenthesis. Not just that, Oleg claims, now that he has obtained TM registrations for ;-), :-).;) and :), any usage of colons,semi-colons, hyphens in any manner, to express emotions could also amount to an infringement of his registration.

Oleg proposes to be nice to millions of individual users and make only the companies using emoticons to pay for their usage. It is also reported that he proposes to charge a fee close to $10k from these corporate users towards an annual license.

Well, its questionable whether Oleg will succeed in extending his registrations to the rest of world, but the internet users and lawyers dealing with the IPRs are obviously not too pleased with the manner in which the Russian Federal Patent agency has dealt with this TM application. The Agency is drawing flak from the entire geek community for what seems to be an absurd grant of TM registration.

This trade mark registration of emoticons is questionable on the following grounds;

• The trade mark laws across the world define trade mark to mean any sign capable of graphical representation which is capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. In this case Oleg does not use these emoticons to distinguish his goods/services from that of others. Even if he does, it is questionable as to what extent they serve the purpose and consequently meet the essential requirements of a TM. Therefore, this TM registrations should not have been granted in the first instance. It is pertinent to note that Despair Inc (of USA) in 2000 itself was successful in obtaining a registration for :-( from the US PTO. But the distinction here is that Despair Inc was using the TM to identify its services unlike Oleg.
• Further, the emoticons have been in usage from 19th century; one Scott Fahlman, of Carnegie Mellon , claims that he was the first to use three keystrokes _ a colon followed by a hyphen and a parenthesis _ as a horizontal "smiley face" in a computer message.
  

Interestingly, in 2001 Despair Inc, it filed a law suit in a U.S. District Court in Dallas, alleging trademark infringement against over 7 million individual Internet users. The company also requested for separate injunctions against each of them. It was believed to be the largest single trademark dispute in history. These 7 million individual internet users were listed by monitoring their usage of :-( over a period. However, the public outrage against this worldwide made Despair Inc to withdraw this law suit and post an apology on their website.

For now, there appears no immediate threat for the users of emoticons unless the EU and US TM authorities encourage any such moves to register the emoticons in future.