Role of the concept of “John Doe” Orders in Infringement of Intellectual Property Rights

Business is always considered to be heart of any civilized society. The earning of people is dependent on such businesses. The Law and its wing develop according to the changing times. Nowadays various types of business have emerged in the society and to provide security for such business, law needs to be upgraded. In order to upgrade the task of providing security to the business entities, Intellectual Property Law came up as a weapon to provide protection to the traders and the business entities. The Intellectual property, (IP) is an intangible form of property which is today considered to be very important in all the aspects. The definition of Intellectual Property has widened its scope with the development of International Trade and globalized economy. The Intellectual Property provided a dominant commercial asset with the help of advanced digital technologies. Copyright, Trademarks and Patents are majorly considered as an Intellectual Property of any Trade, business. Each of these has their own significance and role in the business development. The issues such as theft of Intellectual Property and other types of infringement have increased with such development.

The courts in India are always keen to adopt the concept developed by English laws and foreign laws. This led to the introduction of the concept of Anton Pillar Orders in India based on the case of ‘Anton Pillar’, which permits the plaintiff to enter the premises of the infringer and seize evidences of infringement, prior to the institution of an action. This Anton Pillar order is a form of discovery preservation granted on an ex-parte application to prevent the rights Intellectual Property of an entity. Now, as the topic for the discussion is “John Doe” order, let us have a quick look how the word “John Doe” came into existence.

The name “John Doe” is used for the unknown/nameless defendants/infringers, who have allegedly committed some wrong, but whose identity is unknown to the plaintiff. To avoid delay and to provide fast remedy of the matter with justice, the court names the defendant as, ‘John Doe’, until the original name of the defendant is known to the court. The orders passed by court in such cases are thus popularly known as, “John Doe orders”.

The Courts in India also have such traces of “John Doe/Jane Doe” orders under Civil Procedure Code 1908, generally known as, “Ashok Kumar” (ESPN Software India Private Ltd. vs. Tudu Enterprise and others) orders to protect the rights of the plaintiff and prevent them from irreparable damages under order 39 Rules 1 & 2. In India statutes including Trademarks Act, 1999 and Geographical Indication of Goods Act, 1999 also provides for such interim orders. Though such provisions are included in the statutes there are always probability of infringement before approaching to the courts on time, and by the time interim orders are granted enough damage has already been caused.

In many cases the courts have adopted this rule and provided the remedy to the plaintiff for example:

In Taj Television v. Rajan Mandal and Ors, the court ordered to cease license and their equipments, because, the defendants were telecasting the FIFA World Cup 2002 without prior permission and court further ordered to stop the telecast.  As the identity of the operators was unknown the court ordered ‘John Doe’ order to prevent unlicensed telecast of FIFA World Cup.

The Delhi High Court in Reliance Pictures v/s ‘John Doe’s I.A. No. 13476/2011 known as “Bodyguard” Movie Case ordered to the unknown defendants to stop and avoid piracy, copying, uploading, downloading of the movies by any means. This order was entertained just to prevent the rights of the movie and vigilant IP owner, as all type of infringement provides huge loss to the film industry. The similar view point was again taken in the matter of ‘Don- 2’ film.

In Kuldip Singh v. Subhash Chander Jain the Hon’ble Supreme Court observed that, the scope of this action is to apprehend wrong or anticipate mischief. It is the type of precautionary justice which has to be initiated before the mischief is done.

This order is a tool to protect piracy of the movies, books and other Intellectual properties. The development of this order is making the IP Owner more vigilant and powerful. In this way John Doe order is becoming a known process in India.

Top 10 facts Indian Businesses should know about Trademarks and Copyrights

Speaking about Intellectual Property, the first question any common man might ask is what is it? Probably because people in India are not much aware about their intellectual property rights, which in this developing era of startups can prove fatal for them.

 

When it comes to the business class, protection of intellectual property plays a very crucial role for the settlement, development and the growth of the business. Protection of the business name or any other intellectual property right plays an important role in the life of any business. Trademark protection provides protection to the name, symbol or the design, whereas copyright protects the literary or any kind of artistic work including architectural works and computer programs. Although trademark protection is not compulsory under Indian law, however, there are many benefits of getting them registered. Following are the top 10 facts (benefits) which a business person or a startup owner should know about trademarks and copyrights:

 

  1. Trademark protection protects your “brand” which in turn protects it from getting infringed. And by protecting your brand name you protect your business.

 

  1. Under trademark protection you can also protect the tag line or the punch line which has become an identity of your business.

 

  1. Copyright protection can be owned only on your creativity, i.e. over the work which is exclusively created by you.

 

  1. If you have not protected your copyrightable work, you cannot stop your competitors from copying those.

 

  1. However if you own a trademark or copyright over your business or your creativity, you own exclusive rights over them and can avail them in case of any infringement and can avoid the damages which can hamper your business.

 

  1. If you own a registered trademark for a particular business in India you can apply for the same in the Indian sub-continent too, it helps in business expansion.

 

  1. Yes, to own a trademark or copyright you need to get registered for it, more importantly to get it registered before any other person applies for the same.

 

  1. You cannot use the mark which is already registered and is used by any other business.

 

  1. You can use the same “brand” name for your multiple businesses but you need to register them in their respective classes.
  2. Lastly, and most importantly mere uniqueness or creativity is worthless unless it is protected legally to enforce it against others.

“Passing Off Theory” – A Remedy available for unregistered Trade Marks in India

Passing off is a common law remedy available for the unregistered trade mark users in the countries like England, Australia, New Zealand, India and many other countries. It is also considered as a common law tort which can be used to enforce unregistered trade mark rights.

The word “Passing-off” means, the person who falsely represents the good and services of others subsequently passes those goods and services to the rightful owner. The concept of passing off was developed in the nineteenth century on the basis of the following principles:

  1. “No one has the right to represent its goods/services as that of another.”
  2. To avoid unauthorized use of a trade-mark/trade-name belonging to others to have a proper control over false representation of once good.
  3. To control Unfair Trade Competition so that no one can obtain economic benefits of others established reputation.

In India, the doctrine of ‘Passing-off’ is used for providing a relief under common law principles to protect the Rights of the unregistered Trade Mark users by granting “Passing-off” to safeguard the goodwill of the unregistered Trade Mark user.

An action for infringement is dependent on the qualification that whether the mark is registered or not but, in case of passing off the question of registration of the mark is totally irrelevant. A passing off action is independent of a statutory right and it needs to be proved by evidence of reputation and goodwill of the business and how it is presented before the court.

The protection granted to the unregistered trademark users is also extended to the foreign marks. The reputation and the goodwill of the owners of the unregistered trademark in India as well as of foreign state can get the injunction in the Indian courts. (Mars Incorporated v/s Chanda Softy Ice Cream and Others, AIR 2001 Madras 237)

There are three elements which can be seen or involved in passing off theory may include, reputation/quality of the good, likelihood of confusion in buyers and may cause an irreparable damages to the plaintiff.

The principle of granting an injunction is same as in the case of any other action against injury complaint. The plaintiff must prove a prima facie case, availability of balance of convenience in his favor and he might suffer an irreparable loss in the absence of grant of injury.

The legal position in India for application of passing-off theory totally relies on deceptive practices. Therefore, the plaintiff must have to prove the reputation and goodwill of his business.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd 2001 (5) SCC 73, a bench of three learned Judges, cleared the position of law regarding tests to determine a passingoff action (Mahendra And Mahendra Paper Mills  V/s. Mahindra And Mahindra Ltd on 9 November, 2001), in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors needs to be considered:

(a) The nature of the marks, i.e., both words and label works.

(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trademarks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.

It is therefore, in view of the above discussion, the scope and elements of the ‘Passing-off’ theory is widened through its various other aspects, rather than surrounding the discussion only limited to deceptive practices. By broadening the horizons of the ‘Passing-off’ theory the protection granted to the unregistered as well as registered trademarks are more secured and become stricter in the sense to avoid trifles and frivolous matters.

Cybercrimes In Intellectual Property World

Cyber crime means the criminal activity that is related to Cyber world. With the evolution of the Internet, along came another revolution of crime where the criminals commit acts of crime and wrongdoing on the World Wide Web. With the development of the technology the risk and challenges in the online world have also increased. The main challenge is to protect one’s intellectual property. Today, intellectual property is an important asset for any business as it requires significant investment of time, money and skills. So, protection of intellectual property requires greater attention. Intellectual properties such as music, computer programs, and databases can be easily copied and pirated causing serious financial loss to rightful owners. The impact of loss is greater in the cyberspace as it is border-less and infringing material can be transferred across the world within few seconds. Internet has given birth to hybrid versions of Intellectual property infringement in the cyberspace such as:

  • Linking – unauthorized hyper linking to another website
  • Framing- unauthorized uplifting of content from another site
  • Meta tagging- use of keyword which are trademarked and proprietary to another entity
  • Cyber squatting/Domain name disputes- Registering website with famous name with the intention of selling it at a higher price to the rightful owner. The WIPO has established the online domain name dispute resolution system for solving domain name disputes referred to as ICANN policy which is not only quicker but also cost effective.

In the famous Marks and Spenser’s case, the defendant registered the trademark of Marks and Spenser as www.marksandspencers.com with the mala fide intention to sell it at a higher price to the rightful owner. This act in cyber terminology is known as ‘Cyber Squatting’.

  • Cyber piracy- Unauthorized use or reproduction of another’s work in electronic form. It includes trade secrets theft, source code theft, and piracy of music using CD Rom burning software. The main reason for extensive piracy of intellectual property on the internet is it is very easy to copy the proprietary material and escape the punishment by staying anonymous in the cyberspace.
  • Intellectual Property theft- Theft or copying of material that is copyrighted.

Because of rise in the cyber crimes in the IP world it becomes very necessary on the part of owner of the intellectual property to protect it through registration.  Due to the border-less nature of these crimes, international law enforcement cooperation is essential for protecting individuals and businesses.

6 Tips for deciding a Great Business name for your startup in India.

India is experiencing a start-up revolution and even the government is trying its best to create a system where more entrepreneurs would like to express their thoughts. It is a revolution for sure and it is encouraging the budding entrepreneurs in giving rise to more start-ups. It takes a lot of courage and hard work to covert an idea into a successful business.

 

Likewise, it also takes a great deal of thought, time and research to decide ‘The Perfect Name’ for your new business or start-up. A lot of consideration has to be given to the Intellectual Property Rights involved while deciding a great business names apart from other factors, to be precise. Here are 06 basic tips for picking a Great Business name:

 

  1. Choose a name looking at future challenges: A name should be decided which can grow with the entity and stays fresh in the minds of consumers. It should have the same aura even after 10 years of business when you decide to redesign your logo keeping the old name. In other words, once your business flourishes, even your future competitors should not be able to steal it and your future consumers should not forget it. A timeless name is hard to find.

 

  1. Availability of the name: Consult an expert or professional who can help you decide a name which is available and not being already used by another entity. As the name of the entity and the domain is most likely going to be the same, it can be searched for availability in government records for Trademarks and entity registration.

 

  1. Carries some meaning: There are many globally famous names which have no sense at all, to be more precise have no dictionary meaning. These kinds of names might be trendy to look at or speak but they always run a risk of attracting trouble. If we see for instance, a company with unique name which has a rather embarrassing meaning in another language is risky internationally.

 

  1. Easy to pronounce and sticks to the memory: The trick is to keep it simple and unique so that it does not end up being easy to pronounce and remember only for you. The consumers must be able to pronounce it easily and remember it among other brands which may make it easier for you in competitive market. The business name should match your goods/services provided, in order to remind consumers easily what you provide.

 

  1. Not too descriptive, neither too off-center: The name should be able to carry some idea about the nature of business or start-up. In other words the business name should be capable enough to be the face of your business and should not be too generic in nature at the same time. A generic name may cost you more and may not be allowed by the Government to get registered.
  2. The name itself should not restrict the business: When you are planning to set up branches and grow globally, never go for a name which may restrict you only to the place of origin. Just for instance Geographical Locations or type of product in the business name may limit/restrict the mindset of consumers towards the global availability and the variety of products.

Top 5 Things Photographers can do to prevent theft of their Photos.

Copyright protection can be a tricky zone to ponder on for photographers or any other artist. The dawn of the Age of Social Media has brilliantly encouraged a lot of hidden talents to come out in the open. The most positively affected area of art which may have received a boost due to social media is photography. We can see persons of every age especially the young talents, try their hands at photography and show their talents through social media platforms like Instagram and 500px. One of the best examples is the introduction of wildlife photography and candid photography for personal or wedding photography in the world of social media. As online sharing of photographs have increased, the photographers are facing new challenges and dilemmatic situations as they want to both promote and protect their work at the same time. There is no guarantee whether an action taken can be enough to prevent copyright infringement but here are top 5 things our Indian photographer friends can do to prevent theft of their talent:

  1. Watermark: Use of Watermark, an image embossed on the photograph or digitally added onto the image before using it publicly. The image can be anything like a unique symbol, Name/ initials, Copyright symbol or Company symbol or name.
  1. Copyright Notice: Use the Copyright Notice ‘Copyright © 2015 · ABT JKLN Photography’. A photographer becomes an owner of the picture as soon as it is taken or recorded in the camera.
  1. Website terms: It is always better to read carefully the terms and conditions displayed by the owners of the social media platform or website. A little more careful reading may be required for the policies and terms which involve infringement of copyright and other intellectual property rights.
  1. Prevent easy download: It can also be difficult for others to use your photos or download them if you disable the ‘Right Click’ option. Downloading photos off the websites is the easiest way one can adopt which may no more be an option if this step is taken.
  1. Legal protection: Register the rights to the photograph(s). It’s always easier to stop something happening in the first place than to repair the damage after it has happened. An artist gets a good legal support when it comes to prosecuting the infringing person.

Role of Advertising companies in India for promotion of Trademark and Intellectual Property Rights.

Advertising or Media are the most powerful forces today which can decide the fate of any brand within a few minutes. It has brought a revolution in the opinion of Indian consumers about the products and services they use daily. Advertising industry can not only create interest in a particular brand but also make the prudent and common consumers aware of the negative and positive aspects of each brand. But, I feel the advertising companies can do more by utilizing their power, by promoting the sense of brand protection among their clients. The consumer’s outlook towards the idea of protection of Trademark and other Intellectual Property Rights seemingly changes when we shift from a metro city towards the smaller cities, and gets worse from thereon. This very well can be corrected by changing the attitude of the clients in the first place when think of advertising their brand. Media companies are flag bearers of brand management, as they hold expertise in the art of creating and sustaining the brand. They can make customers committed to your business. Just like a strong brand differentiates a product from its competitors in the market, in a same way Trademark registration protects it from competitors. This same outlook can be imprinted in the minds of entrepreneurs quite efficiently by none other than, the Advertising companies.

 

The power of positive promotion and marketing can very well be used to educate the new business startups especially who are most likely to be ignorant on the role played by Intellectual Property Rights. If a single commercial can make a consumer fall in love with a brand it can also inspire more and more consumers and entrepreneurs to takes measure to protect their brand. One can never tell how and when an infringement can take place. In any commercially developing city one can easily see fake copies of products belonging to famous sports brands being sold at a big scale at big outlets. Government and media companies may tend to consider advertising as a form of revenue generation but there is more to it than meets the eye. As more and more commercial competition increases, it opens more windows for Trademark infringement. Here, Advertising agencies have a perform the magic by promoting the good effects of getting a brand protected and helping an entrepreneur grow without the fear of any negative competition.