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Bona Fide use in Trademark

Intellectual Property is the creative work of the human intellect and, the right to intellectual property is invisible/intangible right to a manís brain, therefore, any new product invented by a human is considered to be a property of mind. Intellectual property relates to information of pieces which can be incorporated in tangible objects at the same time in an unlimited number of copies at different locations anywhere in the world. Intellectual property is also described as knowledge goods[1].

This paper surveys the operation of bona fide use of trademarks in Indian law; it further provides a piece of detailed knowledge about the extent of usage of the mark in connection with the cancellation of the mark due to non-use. Furthermore, this paper investigates the famous doctrine of fair use in connection with bona fide intention to use.

The main motivation of the protection of Intellectual Property is to promote the progress of science, technology, arts and literature and other creative works and to encourage and reward creativity. Nations provide statutory expressions to the economic rights of the creators and the rights of the public in accessing those creations. Therefore, the economical and technological development of a nation will come to halt if such rights of creators are not protected.

Trademark is one of the essential parts of Intellectual Property Law. Trademark has been acknowledged since thousands of years ago in India when Indian craftsmen and creative entrepreneurs marketed their work with their signatures and send it to the middle east. With the growing technology and industrialization, the trademark has become a key factor in trade and industry.

Trademark in a general sense is a graphic representation of a mark which distinguishes the products of a particular seller from those of others, this mark can be anything including device, the shape of goods, signature, word, packaging, label, letter, numeral, packaging or combination of colours or any combination.[2] The main purpose of the Trademark is to protect the rights of the trademark owner and business and goodwill of the business. Secondly, a trademark protects the public from confusion and deception by identifying the source of origin of business.

In recent times, due to the evolution of Trade Mark law in India, many structures and monuments are registered as trademarks in India as well as abroad. The famous Taj Mahal Palace hotel has got its architectural structure design registered as a trademark[3], the famous Empire state building, U.S.A[4] and the beautiful Eiffel Tower of Paris, both the structures are registered as Trade Mark[5]. The famous Opera House, Sydney is also registered as a trademark[6]. Therefore, it is equally important to protect an individualís creation by gaining a statutory right in favour of the creation.

After two decades of a long battle, Amul wins a legal battle against anul (Shri shakti dairy and Kuldeep enterprises) by winning the injunction against Anul for infringing the trademark Amul(co-operative Milk Producers Union Ltd). The packages of Anul were Anul shakti and Anul Taza which proves the mark to be phonetically and deceptively similar to the products of Amul cooperative.[7]

The element of usage of Trade Marks

A registered owner of trademark enjoys exclusive rights over his trademarks and such rights can also be passed onto other through licensing and assignment and such registration also affords protection against counterfeiting and infringing elements of the whole entity. The aspect of usage is not only an essential part of the registration of trademark but it also helps in obtaining the upper hand in any infringement case.

In Trademarks act 1999[8], the applicant is required to prove the actual usage of the mark before the registry in order to gain the registration. Therefore, actual usage of mark not only includes the physical presence of mark on goods in India but also proper advertising [9]and promotion of the mark[10]. While applying for registration of the mark, it does not only show the usage or prior usage of the mark but also reveals the distinctiveness of the mark.

Supreme court analyzed in Hardie trading V. Addison Paint and chemicals[11] the aspect of usage under the act and stated that to the use of a mark in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods and thereby held that use of the mark must not be limited to the physical use of goods. In a similar case, the court stated the reference of famous English case BON MARTIN Trademark case that mere use of the mark in promotional literature or price list is considered to be the usage.

The aspect of Bona Fide Use in India

Bona fide is a Latin term which means good faith, genuine and authentic, so basically it is the opposite of deception and fraud. The importance of the aspect USAGE has already been discussed above and from that discussion, it leads to another essential aspect in Trade Mark law which is Bona Fide use. Trademark law in India imposes a limitation on the registered users and makes it mandatory to use the mark with an honest intention which is in Bona fide intention in industrial and commercial matters. The law in itself guards the user by eliminating the idea of taking unfair advantage[12].

The famous Doctrine of fair use also includes Bona fide use as an essential element to provide access of the mark to a third party which is not termed as an infringement. This doctrine is usually used as a defense in the cases of infringement and counterfeit.

The Indian courts in many cases have applied this doctrine with limitations keeping in mind the interests of brand owners but absolute acceptability by courts is miles away. In an appeal, the Divisional Bench of Delhi High Court in Hawkins cooker Ltd. V. Murugan Enterprises stated that if the use of the mark by the defendant is in bona fide manner, not causing any deception or confusion amongst the consumers and reasonably mentioning the article is adapted for use if plaintiffís goods. The further court denied the defense under the doctrine of Fair Use[13]

Indian Trademark law includes another aspect of bona fide use which is Intention to bona fide use. Section 47 of Trade Mark Act 1999, specifies about the removal of registered users on account of non-use. Therefore, the aggrieved party may file a lawsuit against the registered owner of the mark and the burden of proof lies on the plaintiff to provide suitable evidence with regard to usage of the trademark.

According to this section, if the registrar or the appellate board is satisfied that the trademark was registered without any bona fide intention to use in relation with goods and services, furthermore, if the trademark has not been used for a period of five years and three months from the date of application, then the said trademark shall be removed from the register and will no longer hold statutory privileges.

In a Delhi High Court case of Pfizer Products Inc. V. Rajesh Chopra, The proprietary rights of the drug sold by the name of GEODON were challenged. The plaintiff was a globally known company for selling the drug since 1996 and the defendant was a registered owner of the mark since 2003 in India. The balance of convenience was in favor of the plaintiff that even though the plaintiff was not selling in the Indian market but the plaintiff is globally renowned mark owner i.e. selling the drug in nearly 40 countries around the globe.[14]

Another provision in Indian Trademark Law comes under the umbrella of Bona fide use which includes using of name, address or any description of goods or services. This provision restricts a registered proprietor or owner of the registered trademark to interfere with any person using the name or surname or address in a bona fide[15] manner with respect to goods and services.

In a case Somashekar P. Patil v. D.V.G. Patil[16] the suit was filed for infringement and passing off by Patil And Patil Parimala Works against the respondent Patil Fragrances. An application for an interim injunction was filed against Patil Fragrances during the pendency of the suit, which was granted. The judgment was made in favor of the respondent in support of section 35 of the Trademark Act 1999, the court stated that since the use of the family name PATIL was used with a bona fide intention and the appeal was dismissed.

In the Latest judgment by Anil Rathi V. Shri Sharma steel tech[17], the plaintiff and defendants were engaged in the manufacturing of steel products. RATHI is the registered trademark which was allowed to be used only by the members of the Rathi family with the power of MOU. Defendant no. 8 being a family member assigned the trademark to a third party which was considered by the court as a non-bona fide act. Therefore, the court ruled in favor of the plaintiff with the power granted under section 35 of the Trademarks Act 1999.

Conclusion
India is a country which is developing at a faster rate in terms of economy and technology, therefore, use of intellectual property especially trademark has risen over a period of time due to young professionals working towards the goal of creativity. Indian market is welcoming more of startups with the new trend going on go vocal for local therefore, it is essential in order to create a new trademark there must be a bona fide intention and use of the mark. Establishing Bona fide use of the mark can make a huge difference in an applicantís registration form and in a registered proprietorís infringement case.

Therefore, there are a few suggestions to establish a bona fide use in the market:
  1. To create an effective business plan, this invites a large number of consumers.
  2. Commencement of advertisements and marketing at an early stage.
  3. Thorough trademark search in order to eliminate the risk of infringement.
  4. Introduction of more products and product line which can invite more consumers and create a better hold in the market.

End-Notes:
  1. Bayer corporation v. Union of India, Writ petition No. 1323 of 2013 decided by Bombay High Court on 15 July 2014
  2. Section 2(1)(zb) of Trade Marks Act 1999. Definition of Trade Mark: "trade mark means 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.
  3. Lalatendu Mishra. In Mumbai Taj palace gets trademark under class 43 of the Trade Marks Act 1999. https://www.thehindu.com June 24, 2017.
  4. In Volume 3. No.8-2016, Empire state building gets the exterior registered as trademark. https://www.chiever.nl
  5. Eiffel tower has become a brand after getting registered as a trade mark https://www.toureiffel.paris
  6. Sandeep Goyal and Carol Goyal. In Sydney, The opera house is registered as two dimensional trade mark. August 1,2017 https://www.business-standard.com
  7. Times of India, June 27 2018. Amul wins legal battle against Anul https://timesofindia.indiatimes.com
  8. Section 47 of Indian Trademark Act 1999.
  9. N R Dogre V. Whirpool Ė there was no actual sale of Whirpool brand in India but upon promotions and advertising the mark was registered as a trademark in India.
  10. J N Nicholas Ltd. V. Rose and Thistle. Indian courts have interpreted that mere usage of the mark is not necessary to establish use but to show proper advertising of the mark in Indian market is equally important.
  11. AIR 2003 SC 3377
  12. Section 30(1) (a) of Trade Marks Act 1999.
  13. (2012) (50) PTC 389 (Del-DB).
  14. 2007 (35) PTC 59 DEL
  15. Healthy & Glow retailing Pvt. Lt.d V. Dhiren Krishna Paul, trading as health and glow clinic, 2007 (35) PTC 474 (Mad). States to seek protection under section 35 of the act, then it is necessary to satisfy court the bona fide use or bona fide description.
  16. 2018 SCC 637
  17. CS (COMM) 654/2019
Written By: Nandini Kohli

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