Posted On : April,29,2020Categories: law legal
With more than half of the world pushed back into recession, 2020 seems to be worse than the global financial crisis in 2007-08. With sharp-rise of cases across several countries, the economic damage in these countries would experience a steep increase. Moreover, the International Monetary Fund has predicted that this pandemic would instigate the worst recession since the Great Depression of 1929. As a preventive measure to the upcoming recession, governments have now started pressurizing employers to pay wages to their employees without doing any work.
Indian Government’s Reaction to Prevent Economy Crisis
Initially, a couple of State governments issued orders for a limited period. The governments of Telangana and Delhi in Government Orders dated March 22, invoked EDA to issue lockdown during March 22-31, and directed that this period shall be treated as a paid holiday for all employees in the shops and establishments (for Telangana) and in all the private establishments (Delhi). The government of Maharashtra has ordered (31 March) that all workers (including contract, temporary and daily-wage) in private factories and shops and establishments shall be deemed to be ‘on duty” and be paid full salary and allowances during the lockdown period. On March 29, the Government of India, to effectively implement the lockdown order and to mitigate the economic hardship of the migrant workers issued an order under Section 10(2)(1) of the NDMA. It directed the State governments and the Union Territories (SGs/UTs) to issue orders, compulsorily requiring all the employers in the industrial sector and shops and commercial establishments to pay wages to their workers at their workplaces on the due date without any deduction during their closure due to lockdown. Further, the SGs/UTs were directed to take necessary action against those violating these orders. According to Section 51(b) of the NDMA, non-compliance with the directives issued under it will be punishable with fine and/or imprisonment.
The Indian Government issued an order dated 29th March, 2020 which stated that employers deducting wages of their employees during the lockdown period would be held legally accountable. The national lockdown was clamped by the Home Ministry by invoking the National Disaster Management Act, 2005 along with the Epidemic Diseases Act, 1897. The ministry stressed on the closure of all commercial and private establishments, all transport services, industrial establishments, educational institutions exempting essential services. The Government wants the employers of any kind not to deduct any salaries of their employees during this lockdown period. This article focusses on the legality of this order and how far does this hold good for employers to pay their employees in full without them doing any work.
The ‘No Work, No Pay’ Principle
The Hon’ble Supreme Court in the case of Chief Regional Manager, United India Insurance Company Limited v. Siraj Uddin Khan [Civil Appeal No. 5390 of 2019, decided on 11 July 2019] decided that no employee can claim wages for the period that he/she remained without leave or justification. In the present circumstances, neither the employees offer work nor the workers would be able to report their work. Also, not each and every work be completed through technology and also work from home cannot be thought of as an alternative to the works done at grass-root levels. Therefore, the principle of ‘No work, no pay’ cannot be invoked in the present circumstances. The Government of India order of 29th March focusses on the hardship that would be faced by migrant workers by simply ignoring the fact how hard it can become for employers to pay wages without any work.
Legality of the Order
According to Section 2(vi) of the Payment of Wages Act, 1936, wages means the remuneration payable by the employer to the employee in lieu of the work done. In the present circumstances, when there is no work done by employees, it would become extremely difficult for an employer to pay wages for no work. This payment by an employee would then be considered as a charity and not wages. The Disaster Management Act fails to include provisions relating to the payment of wages, which calls for a reform in the said act.
The first part of GOI notification of 19th March, which is the basis of the order dated 29th March deals with the hardships that are faced by migrant workers and their wages to be paid by their employers, while the second part of the same order also talks about the payment of wages by all employers. When all the circulars and advisories are studied together, it is in no doubt that the government itself looks this as a moral obligation of the employers to fulfill.
Looking at the constitutional validity of the order, under Article 14 of the Indian Constitution, an action without an authority or without a force of law is to be termed as arbitrary and unsustainable. When we look at Section 10(2) of the Disaster Management Act, the government cannot be understood to have capacity to issue such orders. India has various types of industries (large, small, medium, micro), and therefore, a uniform order cannot be laid down. MSMEs would find it almost impossible to fulfill the requirements of the said order. It can be said that ultimately, that these industries are the engines which drive the whole economy of the country. If industries are compelled to pay wages to its employees without the industries not earning any revenue would lead to the collapse of such industries. This can be said to violate the right to carry on business with reasonable restrictions imposed as mentioned under Article 19(1)(g) of the Constitution. It is indeed the duty of the government to look for the employees during such period, and is not the duty of industries to do so.
What Next?
These are fine legal issues which require attention by the lawmakers. The Indian Government would need to come up with a scheme to subsidize employers towards the wages paid during the lockdown. The scheme can be linked to profits earned by the industrial establishment and the wage bill for a month. In the absence of such a scheme, private employers especially small and medium industries will be put through hardships that could even bankrupt them. The government while drawing a stimulus or revival plan for the economy should certainly consider subsiding the wage cost for the lockdown period, if not in entirety, at least in part. If for any reason the government decides to extend the lockdown it should bear the wage burden and should not give any advisory for payment of full wages given it lacks the authority to do so. Maybe, the Govt can advise the establishments to bear/ pay only the necessary amount which is required for subsistence of living or payment of some school fee expenses, which are bare minimum for running the household; which is today being run with zero petrol expenditure, and zero entertainment expenses. Only a proportion of wage expense can be borne by the employers.
Teen eco warrior Greta Thunberg said Wednesday she has registered both her own name and her Fridays For Future global protest movement as trademarks in order to prevent them from being hijacked for fraudulent purposes.
My name and the #FridaysForFuture movement are constantly being used for commercial purposes without any consent whatsoever, the 17-year-old Swede wrote on her Instagram account.
I assure you, I and the other school strikers have absolutely no interests in trademarks. But unfortunately it needs to be done.
She complained that there are still people who are trying to impersonate me or falsely claim that they represent me in order to communicate with high profile people, politicians, media, artists etc.
There had also been instances of marketing, product selling and people collecting money in my and the movements name, she wrote.
That is why Ive applied to register my name, Fridays For Future,… as trademarks. This action is to protect the movement and its activities.
Thunberg, whose protests have attracted millions of young people across the globe, also said she was setting up a non-profit making foundation to handle the financial side of Fridays for Future, such as book royalties, donations and prize money.
She insisted that the foundation would be completely transparent, for example, with regard to the taxes it has to pay.
The foundations aim will be to promote ecological, climatic and social sustainability, as well as mental health, the campaigner wrote.
Thunbergs climate struggle began quietly in August 2018 when she skipped school for the first three weeks, and then on Fridays to spend the day outside Swedens parliament with a sign labelled School strike for climate.
Since then, she has become the face behind the global protest movement, particularly for young people.
Thunberg has also come under ferocious attack from climate changes deniers, who accuse her of being manipulated by a green lobby. (courtesy-Forbes )
Singapore is the first country in the world , launch computer application for trademark Registration , by the easy process you can file your trade mark application within 10 minutes .
A new mobile app touted as the worlds first trademark registration mobile app will allow businesses and entrepreneurs to file their trademarks directly with the Intellectual Property Office of Singapore (IPOS) on their mobile devices.
Named IPOS Go, the app has a simplified user interface and features that will allow for a faster and easier application process, IPOS said.
With the app, a trademark can be filed in less than 10 minutes, a small fraction of the current 45 to 60 minutes IPOS said.
Filing costs will also be significantly reduced as applicants may feel more confident in filing their applications directly with IPOS, the authority said.
Available on the Apple App store and Google Play, the app will also allow applicants to track their registration status, be notified of important updates, as well as file for trademark renewals.
IPOS Go also uses artificial intelligence (AI) technology to help prevent applicants from filing for trademarks that are too similar to existing ones. IPOS said that more than 40 per cent of trademarks filed in the world today contain images.
As the world continues to see a surge in trademarks filings, the new AI capability will help business owners better manage their brands, it said.
According to IPOS, trademark applications in Singapore have increased by 30 per cent over the last five years.
New Delhi, on April 28 India intends to make its Intellectual Property Rights (IPR) policy more efficient and speedier, Commerce Minister Nirmala Sitharaman said on Thursday. India intends to make its Intellectual Property Rights (IPR) policy more efficient and speedier, Commerce Minister Nirmala Sitharaman said on Thursday.
“The mindset of the government is to make the IPR policy more efficient and speedier,” she said, while addressing the World Intellectual Property Day celebrations here. She also gave away the National Intellectual Property Awards on the occasion
“India’s IPR policy is TRIPS (Trade Related Intellectual Property Rights) Acompliant and forward looking,” she said.
Sitharaman also said creating awareness is very important, and launching an IPR Awareness campaign in schools across the country by Cell for IPR Promotion and Management (CIPAM) is a step in creating a mindset and respect for innovation right from the schools.
On Tuesday, the CIPAM, in collaboration with the International Trademark Association (INT), started an IPR awareness campaign in schools from one such institution in the national capital.
A Union Commerce Ministry release here said that a programme is being worked out to conduct over 3,500 IPR awareness programmes in schools, universities and industries across the country, including in Tier 1, 2, and 3 cities, as well as in rural areas, along with translating content into various regional languages for a wider reach.
Earlier this week, the government extended the Start-Ups Intellectual Property Protection (SIPP) scheme for three years till March 2020 to ensure protection of entrepreneurs’ patents, trademark and designs.
In a signal that China may soften its stand against social networking giant Facebook, the Beijing High Court has ruled in favour of the Cupertino-based company, saying that a Chinese company should not have been allowed to register the “face book” trademark back in 2014. Beijing, May 9: In a signal that China may soften its stand against social networking giant Facebook, the Beijing High Court has ruled in favour of the Cupertino-based company, saying that a Chinese company should not have been allowed to register the “face book” trademark back in 2014.
The Zhongshan Pearl River Drinks Factory in southern Guangdong province that had registered the brand name “face book,” produces food products like potato chips and canned vegetables. “Under the Chinese law, a multinational with a globally-recognised brand must prove that its trademark is also well known within China,”
The Financial Times reported on Monday.(ALSO READ:Apple loses Chinese lawsuit over iPhone name).Along with other social media platforms like Twitter, Facebook is currently blocked to nearly 700 million internet users in China. Burt several many people are using virtual private networks (VPNs) which allow them to circumvent the “Great Firewall” to access the site.
Facebook CEO Mark Zuckerberg has been trying to break the ice with China for years. He met Chinese President Xi Jinping during his visit to the US last year.The Facebook founder has also met China’s chief censor officer at his home in San Francisco and reportedly had a meeting with the head of the ruling Communist party’s propaganda apparatus.
In March this year, Zuckerberg was seen jogging through Tiananmen Square with the famous gate to the Forbidden City imperial palace in the background. He was in Beijing to attend the China Development Forum 2016. Zuckerberg also met Alibaba Group Holdings’s executive chairman Jack Ma and discussed about innovation during the visit. Ma said Zuckerberg respected Chinese culture, adding that oriental culture and western culture should learn from each other and work collaboratively for a better future.
Last week, Apple lost an appeal in China for its iPhone trademark when a lower court ruled that a Chinese company Xintong Tiandi can use the “iPhone” mark on its leather goods.
“Apple is disappointed the Beijing Higher People’s Court chose to allow Xintong to use the ‘iPhone’ mark for leather goods when we have prevailed in several other cases against Xintong,” the company said in a statement.
“We intend to request a retrial with the Supreme People’s Court and will continue to vigorously protect our trademark rights. We work hard to make the best products in the world and want to ensure our customers’ experience is not compromised by companies who try to profit from using our brand,” Apple added.
Apple was set to appeal against the verdict in a higher court.
Meaning of John Doe –
MEANING AND ORIGIN ‘John Doe’ has its origin in the reign of England’s King Edward III when the orders were used to refer to unidentifiable defendant. Oxford Dictionary defines John Doe as an “Anonymous Party”. In Canada, John Doe order were resorted to by owners of IPR in order to preserve evidence against unknown infringers by allowing the representatives of the Plaintiff to search and seize infringed products. Once identified the term John Doe is replaced with the name of the Defendant . It is an established concept in America, Australia and UK. In the matter of Billy Joel v. Various John Does , a popular order which has been consistently relied upon by parties it has been interalia held: “Were the Injunction to be denied, Plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this Court. A court of equity is free to fashion whatever remedies will adequately protect the rights for the parties before it.
Example Case –
Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.
The brief facts of the case are that the petitioner is involved in the business of B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.
In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.
Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.
The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]
COMPLEXITIES in John Doe –
Since the concept of granting John Doe order has evolved from judicial proactiveness it is tough to determine its precise limits. The procedure that needs to be followed in granting and executing these orders vary with regard to the cases in which it has been granted. The John Doe orders may thus lead to many complexities which may include the following.
- Improper implementation of orders: John Doe orders may be improperly implementedand may harm the rights of the legitimate third parties. In the Singham case , after obtaining the order the Plaintiff sent a list of file sharing sites to ISPs, asking them to stop them from pirating the movie. The ISPs, unable to prevent piracy, blocked entire file sharing websites. Consequently, many users who use these sites for legitimate purposes were unable to access the sites. It is pertinent to note thatin the case of IPRS v. Mr. Badal Dhar Chowdhry , the Court held that vague/ indefinite injunctions should not be issued.
- Jurisdiction of the defendants: When 100 John Does are named in a single case based solely on numerical internet protocol addresses. Many of them are outside the jurisdiction of theCourts. Thus, a question may arise whether the cause of action has arisen within the jurisdiction of the Courts.
- Joining different defendants in one suit: Another question to be considered in such cases is whether the defendants residing in different jurisdictions can be joined as defendants in the same suit. John Doe is still in its nascent stage in India and the concept will eventually evolve when more cases are brought before the Court. John Doe orders are always passed subject to the legitimate rights of the parties and do not affect the rights of legitimate license holders in any manner. However, the Bombay High Court, in the recent pasthas taken a view that such blanket orders cannot be passed unless the Plaintiff can show actual incidents of breach or acts which are likely to result in such a breach . Moreover the actual implementation of the orders is in itself a challenge for the Plaintiff. It is important for the judiciary to lay down the precise nature and limit of such orders so that they are effectively implemented and/or would aid in effective enforcement of the Orders.
The Delhi High Court has held that Copyright registration of an art work is irrelevant for the purpose of proving its use as Trade Mark.
The order was passed by a Single Judge Bench of Justice Suresh Kait in a challenge to the Intellectual Property Appellate Board’s (IPAB) order dismissing the Petitioner’s plea seeking registration of its trademark.
By way of background, M/s Khushi Ram Behari Lal (Export Division) was established in 1978 and carried on the business of processing, marketing and exporting of rice. The rice was sold under the trademark ‘TRAIN BRAND WITH DEVICE OF TRAIN’ (trademark).
In 1996, the Firm was taken over as a going concern by the Petitioner, M/s. Khushi Ram Behari Lal Ltd. Subsequently, the name of M/s. Khushi Ram Behari Lal Ltd. was changed to be M/s. KRBL Ltd. In order to acquire the statutory rights for the trademark, the Petitioner filed an application for its registration in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks in 1993.
After the Trade Marks Registry advertised the concerned trademark in Trade Marks Journal, the Respondent filed a notice of opposition on the grounds that it was also engaged in the business of Rice under the Trade Mark “TRAIN” which was registered since 1983.
After considering the rival contentions of the parties, the Registrar dismissed Petitioner’s Form TM-16 and refused the application for registration of the said trademark.
Aggrieved by the rejection, the Petitioner approached the IPAB which ultimately dismissed the appeal on the ground that the Respondents had adopted and registered the trade mark prior in point of time. The IPAB relied upon the Copyright Registration of Respondent over the art work ‘Train’ to establish its usage by the Respondent and thus held that Petitioner’s registration plea was hit by Section 9, 11 and 18 of the Act of 1999.
Setting aside the IPAB order, the Delhi High Court noted that the IPAB had not only ignored the fact that Respondent’s registration was only for the word ‘TRAIN’ but it also ignored the fact that the Respondent tried to prove the use at the time of his registration by forged and fabricated documents.
After perusing the invoices issued by the Respondent to establish user of the trademark, the Court noted that the device of the TRAIN brand is not the same on all the invoices, apart from having various other discrepancies.
It also rejected the IPAB’s reliance on the Respondent’s copyright registration over the art work ‘Train’ for the purpose of proving use of the trademark (in question). Holding that Copyright registration is extraneous for proving its use as Trade mark, the Court held:
“On perusal of the documents on record, I have no hesitation to say that the learned Appellate Board has relied on the Copy Right Registration of respondent under No. A44877/84. The Copy Right Registration of the art work of “TRAIN” brand is extraneous for the purpose of proving the use subject Trade Mark“.
Furthermore, the Court stated that the IPAB also failed to appreciate that the said trademark registration had been in use by the Petitioner under registration for almost 22 years without any interruption. For all those years, the Court observed, there was no confusion and deception reported by the Respondent.
“The goods of the petitioner bearing the subject matter trade mark is highly demanded not only in the domestic but also in international market viz. Reyadh, Dubai, Jeddah, Dammam, Saudi Arabia etc. on account of their superior quality, on the other hand the respondent is admittedly a dealer/commission agent based in Amritsar.”, it said.
Thus, the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of their discretion under Section 12 of the Act, it held.
Observing that the registration of the impugned trademark fulfilled the requirement for registration as prescribed in Trade Marks Act, 1999, the Court held that the Petitioner was entitled to the benefit of Section 12 of the Act for concurrent registration.
It thus decreed,
“In view of above facts discussed and legal position, I hereby set aside the impugned order dated 18.05.2012 passed by the Appellate Board and consequently, the application for registration of the Trade Mark “TRAIN” under No. 609141 in Clause 30 shall be proceeded for registration of the Trade Mark “TRAIN” brand for basamati rice. The writ petition is disposed of in the aforesaid terms.”
The Petitioner was represented by Advocates Ajay Amitabh Suman, Pankaj Kumar, Kapil Kumarand Vinay Kumar Shukla.
The Respondent remained unrepresented.
After a long legal battles against firms working on open source technologies, Microsoft is now joining the Open Invention Network (“OIN”), a community dedicated to protecting Linux and other open source software programmes from patent risk. the decision reflects a change in attitude of the software giant which earlier considered open sources technologies a threat to its business and alleged that these technologies violated their patent rights.
“We know Microsoft’s decision to join OIN may be viewed as surprising to some , it is no secret that there has been friction in the past between Microsoft and the open source community over the issue of patents,” Erich Andersen, Corporate Vice President and Deputy General Counsel at Microsoft wrote in a blog post on Wednesday.
“For others who have followed our evolution, we hope this announcement will be viewed as the next logical step for a company that is listening to customers and developers and is firmly committed to Linux and other open source programmes,” Andersen added.
Microsoft said it would bring a valuable and deep portfolio of over 60,000 issued patents to OIN. “Now, as we join OIN, we believe Microsoft will be able to do more than ever to help protect Linux and other important open source workloads from patent assertions,” Andersen said.
“Joining OIN reflects Microsoft’s patent practice evolving in lock-step with the company’s views on Linux and open source more generally.”
Change at Microsoft, Andersen said, began over two years ago through programmes like Azure IP Advantage, which extended Microsoft’s indemnification pledge to open source software powering Azure services.
“We doubled down on this new approach when we stood with Red Hat and others to apply GPL v. 3 “cure” principles to GPL v. 2 code, and when we recently joined the LOT Network, an organisation dedicated to addressing patent abuse by companies in the business of assertion,” Andersen said.since its founding in 2005, OIN has been at the forefront of helping companies manage patent risks. It has more than 2,650 members, including numerous Fortune 500 enterprises. ” through its participation in OIN, Microsoft is explicitly acknowledging the importance of open source software to its future growth,” Keith Bergelt, CEO of Open Invention network, said in a statement.
Trademark infringement suit , Texmo Industries inter alia prayed that their mark, TEXMO, be declared as a well-known mark under Section 11 & section 2 (zg ) of the Trade Marks Act, 1999. under sub-sections (6)-(9), this section lays down a number of factors that must be considered before granting well-known status to a mark. however, in this particular case, the issue that was raised, was whether the High Court had the power to declare a mark as well-known.
This question arises primarily due to the text of Section 11(6)-(9), which mentions the Registrar as the authority when determining whether a mark is well-known. It seems, therefore, that the Registrar has the power to determine whether a mark is well-known. However, in practice, courts have declared marks to be well-known , for instance , in the Tata Sons case or Brahmos Aerospace case (covered on the blog here and here).
Court argued that only the Registrar has the power to accord well-known status to marks, but referred the question to a higher bench due to differing views from benches of similar strength. according to the court, the text of Section 11 makes it clear that the Registrar is the proper authority. Further, it stated that the Registrar is more suited to make investigations on this question, since it has the requisite expertise and capability to do so. specifically, the court noted that it cannot give a complete answer for the following factors:
- the extent of knowledge of the mark to, and its recognition by the relevant public,
- the duration of the use of the mark
- the extent of the products and services in relation to which the mark is being used
- the method, frequency, extent and duration of advertising and promotion of the mark
- the geographical extent of the trading area in which the mark is used
- the state of registration of the mark
- the volume of business of the goods or services sold under that mark
- the volume of business of the goods or services sold under that mark
- the nature and extent of the use of same or similar mark
- actual or potential number of persons consuming goods or availing services being sold under that brand
While the Registrar does seem to be well-placed to make a decision on these factors, it would seem that the court is similarly placed in terms of legal expertise and the power to requisition documents and evidence. If these capabilities are the same, then it would be difficult to agree with the court’s practicality argument. Further, if one were to look at Rules 124-126 of the Trademark Rules 2017, and the specifics of Form TM-M (through which applications for well-known status are to be made), the Registrar does not make or have the power to make any special investigation that is beyond the ability of a court. one would also wonder how the renouncing the power to declare marks as well-known to the sole domain of the Registrar would play out in cases where the plaintiff couches their cause of action within the law on well-known marks. would the plaintiff first have to approach the Registry in such circumstances? Further, would the court have the power to hear appeals to the Registrar’s decision in such matters (after following the procedure prescribed in Rule 125 of the Trademark Rules 2017)?
New procedure that allows the Registrar to declare trademarks as ‘well known’. The new Rule 124 allows any trade mark owner to file a request in Form TM-M requesting the Registrar to declare a trademark ‘well-known’. As most of our readers may know, the ‘well-known’ tag is the ‘holy grail’ for trademark owners – everybody wants it but very few will get it.
Once a trademark is declared to be ‘well known’, by a Registrar of Trademarks or a court of law, the Trade Mark Registry is bound under the law to not register any trademark that is identical or similar to the ‘well known’ trademark across all classes of goods and services. Similarly at the time of infringement proceedings, a ‘well known’ trademark can be asserted against defendants dealing in entirely different goods or services. For example, ‘Google’ has been declared a well-known trademark under Indian law, which means nobody else but Alphabet Inc. can register ‘Google’ in any of the other class where it has not already been registered by Alphabet or use ‘Google’ to sell goods or services in any industry and not just the internet industry. The commercial implications of being declared a ‘well known’ trademark are therefore tremendous.
Prior to the enactment of Rule 124, a Registrar or a court of law could declare a trademark well known only during opposition, rectification or infringement proceedings. Rule 124 however creates an entirely new procedure to recognize well known trademarks. This procedure is different from opposition, rectification or infringement proceedings in that the latter are adversarial in nature with both parties presenting evidence to back their claims and the Registrar is required to resolve these conflicting claims through a reasoned order. The trigger for these proceedings is a legal event that is not usually within the control of the trademark owner i.e. it is the alleged infringer or opponent who sets in motion the events leading to the proceedings that can result in a trademark being declared ‘well known’. The new Rule 124 allows the trademark owner to set the ball rolling without requiring any infringement or opposition proceedings. The rule does impose some vague duty to “invite objections from the general public” but this process is fundamentally different from opposition, rectification or infringement proceedings where an opposing party has already asserted its rights against the trademark owner.
The crucial question at this juncture is whether Rule 124 is constitutional? Rules, which are delegated legislation, draw their legitimacy from the parent statute. In this case the Trade Mark Rules, 2017 draw their legitimacy from the Trade Marks Act, 1999. This legislation however does not delegate to the Central Government the power to create an entirely new procedure to recognize well known trademarks. Section 157 of the Act which lays out the rule making power of the Central Government under the Trade Marks Act, 1999 is silent on the issue of well known trademarks. There is a residuary provision in Section 157(xli) that gives the Central Government the power to make rules for “any other matter which is required to be or may be prescribed”. Like all provisions conferring residuary powers, this provision is widely drafted however a residuary provision is still bound by the two most important principles of delegating legislative power: The first principle is that delegated legislation cannot be in conflict with the provisions of the parent legislation. Secondly, an essential legislative function cannot be delegated by Parliament to the Executive – the In re Delhi Lawsjudgment is quite clear on this issue.
The new Rule 124, I would argue, goes against both principles. The rule reflects an entirely new policy to recognize “well-known” trademarks through a procedure that is not an adversarial proceeding (as is the case currently). In fact, the new procedure is in conflict with the adversarial procedure recognized in Section 11 for a trademark to be recognized as well known. Unlike the Section 11 procedure which required an opposition, rectification or infringement proceeding to trigger a adjudication on whether the trademark is well-known, Rule 124 allow a trademark to be recognized as well known by simply making an application to the Registry. The requirement to “invite objection” is fundamentally different from an opposition or rectification hearing because it does not guarantee a right to be heard. This entire procedure is alien to the scheme of the Trade Marks Act, 1999.
The true fear with this new procedure is that it places immense powers in the hands of the Trade Mark Registry, which as we all know is one of the more corrupt agencies in the IPO – we are all aware of Registrar’s Kasturi’s arrest and conviction on charges of corruption. The possibility for abuse of power is ably aided by some rather strange provisions in the Trade Marks Act, 1999. In particular Section 11(9) of the Trade Marks Act makes it clear that the Registrar shall not require as a condition, for determining whether a trade is well-known, any of the following, namely: (i) That the TM has been used in India; (ii) That the TM has been registered; (iii) that the application for registration of the trade mark has been filed in India; (iv) that the trade mark is well known in or registered in any other jurisdiction other than India (v) that the trademark is well-known to the public at large in India. Why should a trade mark be recognized as ‘well known’ in India if it not well known to the public at large? Isn’t that the entire point of being a ‘well-known’ trademark?
Even the affirmative criteria to recognize a trademark as a ‘well-known’ trademark in Section 11(6)(i) goes against the very idea of a ‘well known’ trademark. This provision reads as follows “the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark”. Why should the trademark be recognizable only in the “relevant section of the public”? The entire point of granting “well known” trademark such vast protection is that it has attained recognition amongst a large section of the public not just a “relevant section of the public”. These provisions of the Trade Mark Act read like they have been written by a lobbyist and are begging to be amended.
