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Hello, this is another session of #AMA of Lawyered (ask me anything). I'm Govind Kumar Chaturvedi - a lawyer specializing in intellectual property rights and today I'll be answering your questions about trademarks.

Ques 1. Can I register a trademark and keep it, without having any trade that uses that name?  

Well, in India you can file a trademark application on propose-to-use basis but there are certain limitations to that also. Number one that is you will be given a registration on propose-to-use basis, you have to use that mark within 5 years 3 months. If you don’t use that mark in 5 years and 3 months, a rectification can be filed by a third-party who might be having problems with your mark. In theory, the trademark registry can also institute proceedings against the mark which has not been used for 5 years 3 months to be expunged from the register, however, that has never been done. The third point which I would like to state in this regard is that “use” has very broad view in Indian courts. Indian courts have a very broad view of “use”.

To give you some examples of the same, there’s a Supreme Court judgment on this, which if you would like to know is Uniply Industries Limited vs. Unicorn Plywood Private Limited and Ors. Now I’ll just read the extract of what I've written of this judgment was that “even prior smalls sales of goods with the mark has been sufficient to establish prior use. Bonafide test of marketing, promotional gifts and experimental sales in small volumes may also be sufficient to establish a use of the mark. At times, the courts have also taken into consideration such things being so small. So, the test to determine usage need not be the volume of sales but also the extent of the knowledge about the mark from the people.”

Now, recently Miss Pratibha Singh of the Delhi High Court has expanded on the use (of trademark) in the judgment Burger King vs. Tek Chand [CS (Comm) 919/2016, order dated 27th of August, 2018] in which she has given a number of ways a trademark can be used via an advertisement, it can be used by a trademark launch party, it is used even when it's affixed to goods, it has a whole list of what all constitutes “use” of a trademark; which is very interesting from a territorial jurisdiction point-of-view also.

Ques 2. My architect designed a building for my office space, and I wish to use the exact same replica everywhere I open an office. Can I trademark the structure of the building?

Well, first and foremost, yes, you can. Second, to give you an example where this has happened earlier, the example (closest to this scenario) will be the Taj trademark (hotel of Mumbai). However, as you put the question that your architect has designed the office space or building of your office space. Please note that the Taj Hotel building had been in use for years together. At one point before 1900s, it was used by sailors as a point to recognize or identify the Bombay port. So, it had immense use, immense distinctiveness to its favour. However, there are other judgements also or other entities which have gotten their building or the layout of their building or store trademarked. One of them being Microsoft who when they had ‘Microsoft Stores’, they had actually registered trademark for the layout of their entire store. The application number in the USPTO would be 85194406. Following the same example, Apple Corporation, after they found in China that someone had copied the outlook and the layout of their store, they went on to even trademark their store in 2013, 24th January by the USPTO. The entire layout of the entire ‘Apple Store’ that you see, including the building, the tables and the ports for all the products is actually trademarked.

So yes, you can trademark your building, but there are certain challenges that come across which I’ll just enumerate; and if you are able to just make sure that these are taken care of, it won’t be so hard to get your building registered. Number one is that your building which you want to replicate everywhere should have a brand related to it, should have a name like the ‘Trump Tower’ or a particular name everywhere you replicate it. It should have a particular source of services or goods which it refers to or what it uses. Hence in that scenario it will be protected. Second, the ownership – all buildings should be owned by one particular entity or at least have a stable ownership for it to have trademark rights or to be able to be recognized as a valid trademark. Third, now this is the most difficult one, the reason the Taj Hotel trademark or the layout of Microsoft or Apple was recognized because it had a number of distinctiveness attached to that building or that shape, which in the scenario you will have to generate a lot of goodwill and reputation for your building before it will be recognized by the TMR office as a valid trademark. I hope that answers your question.

Ques 3. My start-up makes molding patterns. How should I protect my intellectual property?

Well, molding patterns are pretty generic in nature and there's no distinctiveness to them. Like I have said, a trademark has to be very distinctive so that when a consumer sees a trademark, he should automatically associate it with you. So then this being mostly generic question and not giving enough information, all I can say is that well if it is distinctive enough you could try and apply for it in design and maybe trademark but it will be a trademark if it's very distinctive and if it has a lot of repetitions. 

Ques 4. Is it possible to sell my business to someone without selling the IP associated with it?

Yes, ofcourse. You can completely sell your business without selling the intellectual property associated with it. However, there is two types of sales atleast in trademark which I can atleast make you aware of. There is sale with goodwill and there is sale without goodwill. Now, let’s say supposing there is a trademark “X” being used for a particular type of goods – shoes. Now if you sell that in situation A, you sell that trademark to someone with goodwill, then he can use the trademark X not only for shoes, he can use it clothes, he can use it for building, cars, he can use it for laptops, he can use it for watches. However, if you sell it to him without the goodwill, then he can only use the trademark X only for shoes. So, it is important that you know the essential difference while selling your trademark.

Ques 5. how can I claim a better title to a registered trademark or challenge a registered trademark, that I believe I have been using for longer than the person who got it registered?

So very simple procedure. It is a rectification procedure under Section 47 and 57 of the Trademark Act, 1999. The procedure is that there are a number of grounds, I won't go into them, but one of the main is that the trademark hasn’t been used for 5 years 3 months or that you a prior user. Over here you'll have to show that you're an aggrieved person and how are you aggrieved by this trademark being on the register. So, because of that you will have to first mentioned that your trademark was prior, someone got this trademark registered by fraud or coercion or they didn't let anyone get to know. Actually, these rectification proceedings can be filed exactly where the application has been filed. So, supposing the trademark application was in Delhi and you are situated in Mumbai, you’ll have to file the application in Delhi and the hearing will take place there.

There is a two-point procedure - you can file this directly at the trademark registry or you can file it at the Intellectual Property Appellate Board [IPAB]. Usually there's a lot of backlog in the trademark registry because of which it will take some time for your rectification proceeding to be scheduled. It is better to always file in the IPAB. If you get a decision in the registry, you can appeal to the IPAB but after the IPAB there is no appeal. You can only file a writ petition in the respective High Court of that jurisdiction.

Ques 6. If a registered trademark has not been active for a considerable amount of time, is it possible to re-register it in my name without paying royalty/compensation to the original party? If yes, how long do I have to wait for the trademark to remain inactive for me to do so?

Well definitely, the answer to this is yes. When you are trying to take someone else’s trademark or if a trademark is already existent which is no longer in use, first thing you should see is has it expired. If it has expired then you have a right to register that trademark. Unless and until it has expired, there will always be a Section 11 objection against you, which you’ll have to overcome by showing some other grounds; which can be done I'm not saying that, but if it expires, only then will you have a proper and a clear right to take over the mark., because that means that the applicant is no longer interested in that mark. Also, please note that if even though a mark can expire and be taken off the register, there is still something called “passing-off action” against these marks being used because under common-law a passing off action is available to the user of a trademark or proprietor of a trademark who doesn’t have a registered trademark. So, in such a scenario, a person can still file a suit against you and probably be successful in getting an injunction if he is able to convince the court that he has all the valid rights under the passing-off action. But as long as it comes to just re-registering a trademark which you’ve asked, it is simple as soon as the mark passes its expiration date you can re-register the same mark.

Ques 7. Can I trademark my signature? 

Well, that’s a very simple answer. Section 2(1)(m) of the Trademarks Act, 1999 states – “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral. So, a signature can definitely be trademarked, it is not a problem at all. For example, Kareena Kapoor has her signatures trademarked under Class 35. You can have a look at them on the IP India website which has trademark application number as 2528400. However, this is not the scenario with only a celebrity. Nowadays this is a very common practice. Sachin Tendulkar has his name registered from Class 1 to 45. For Kareena Kapoor this is one trademark application which I mentioned. She has a number of them across all the classes, at least 4 to 5 classes. But that doesn't mean a common man cannot get his trademark registered or that his trademark doesn’t have much commercial value because it does have a commercial value at some level. So, there's this example of this one photographer which I found. He has a trademark registered in Class 41; 3427463 is his application number if you want to have a look at it. 

Ques 8. Can I trademark a QR code?

Well, yes, you trademark a QR code. But, fun fact QR code is itself a trademark which is owned by ‘Denso Wave Incorporated’ in the UK. The situation is that yes, a QR code is distinctive or for different types of businesses, but the situation is such that you can only get it registered if it’s part of a greater code A QR code in itself cannot be allowed to be registered. 

Ques 9. I'm a social media influencer. Is it possible for me to get a trademark on my Instagram username/handle?

Yes, of course you can. If you're able to show trademark office that you are particularly providing a service which could be that you are advertising for some products which in that scenario it can be considered. However, there are not just your username which can be registered. There are three things which any influencer should know about. One, their logos, slogans, cd’s name and even styles are protectable if there are able to show a lot of use for it. Original photos, videos, texts, artworks sound recordings and other creative works maybe protected under copyright law. Third party use of influencers’ name, image or likeness maybe protectable as a right under ‘personality rights’. I will give you a case with regard to this. PopSugar was a corporation which in the US used a lot of Instagram images of normal influencers. Ms. Nita Batra, who was a law last student over there, filed a case stating that PopSugar could not use these photographs or their likeness. The US District Judge Haywood S. Gilliam Jr. rejected PopSugar's motion of dismissal of the suit stating that at this stage of litigation, Ms Batra has sufficiently alleged claims under the DMCA and the Lanham Act. As such, the case will presumably continue. Meaning that if you are able to show that you have enough reputation and goodwill in your username and have enough followers (generated followers, not bought followers – which is ofcourse very obvious) and if you are able to show to everyone that yes you have, then your name will definitely be allowed. Now there’s another example of Instagram influencer Gianluca Vacchi. He basically filed a case in the Federal Court because he sued E*Trade for using his likeness in an advertisement.

Ques 10. Can an entire sentence be registered as a trademark?

Well, this is a question which is kind of difficult because there will be two chances – copyright and trademark. So, copyright mostly gives you a right over your literary works. However, there's been a reluctance to oppose slogans or characterize them as literary work in India now. And your trademark of a slogan or a sentence can only happen when it has got immense reputation; like “ready to rumble” was usually said by Mr. Michael Buffer who eventually went on to trademark that phrase in 1991. He made millions of dollars from using that phrase - get ready to rumble. Trump has “you are fired” registered. Terminator 2 – “hasta la vista baby” which is Arnold Schwarzenegger’s very famous line was registered as a trademark in 2007 by the USPTO. 

There are some cases which we'll get into for slogans. One of them is Pepsico vs. Hindustan Cola Ltd. where they stated that Hindustan Cola had infringed their trademark of “yeh dil maange more”. The trademark application number for that matter is 834703. You can definitely have a look. Slogans are definitely protected under Section 2(1)(m) and 2(z)(b) of the Trademark Act. Another case is the Proctor and Gamble where the Delhi High Court division bench highlighted the importance of slogans. They say “the expression of all-round protection in its advertisement and on its product is a slogan or a tagline. Such slogan are definitely a trademark within the meaning of 2(m) and 2(z)(b) of the act but being capable of represented graphically and distinguishing the goods of one person from another. Hence, at this point, all-round protection was held by the Delhi High Court division bench in the said matter to be a valid trademark.” Because it could distinguish between different products and it was a sign of identification and it could be graphically represented.

The questions are very interesting. I hope you also liked how I answered them. This is Govind Kumar Chaturvedi signing off and I hope to see you again.