BEFORE THE HONOURABLE SUPREME COURT OF INDIA

SPECIAL LEAVE PETITION No. ………. /2018

IN THE MATTER OF:

PAMOLA BEVERAGES Pvt. Ltd. …………………………………………APPELLANT

V.

PRAKASH SOFT DRINKS Pvt. Ltd. ………............................………….RESPONDENT

ARGUED ON BEHALF OF RESPONDENT BY ABHILASH NAIR

INDEX OF AUTHORITIES
 STATEMENT OF JURISDICTION

The present appeal for the issuance of a Special Leave Petition has been filed by the appellant
before the Hon’ble Supreme Court of India pursuant to Article 1361 of Indian Constitution and
both the parties have put the issues before this Hon’ble Court.

The present memorandum sets forth the facts, contentions and arguments in the present case.

1
136. Special leave to appeal by the Supreme Court
(1) Notwithstanding anything in this Chapter, the Supreme Court may, in its discretion, grant special leave to appeal
from any judgment, decree, determination, sentence or order in any cause or matter passed or made by any court or
tribunal in the territory of India.
(2) Nothing in clause (1) shall apply to any judgment, determination, sentence or order passed or made by any court
or tribunal constituted by or under any law relating to the Armed Forces.
 STATEMENT OF FACTS

 M/S Pamola Beverages Pvt. Ltd. (PBP) is a company incorporated under the Companies
Act, 1956 in the year 1970 having its registered office in Hyderabad and selling soft drinks
with brands like Prime and Bliss.
 On 11-06-1999, PBP had applied for the registration of the trademark of its new energy
drink “ATHLETE DELIGHT” in Ariel Black font (Italic) and in script form in the colour
combination of white background and orange letters, for which it got approvals from the
Drug Authority of India in the year 2000.
 A certificate in favour of PBP was issued on 06-02-2002 under class 32 of the Trademarks
Act and subsequently PBP ltd. started marketing its new energy drink from 06-08-2002.
 PBP launched its drink across all major towns of the undivided State of Andhra Pradesh
including Vijaywada with its registered office in Hyderabad and the product received
positively by the consumer base in the state, further more due to the E-commerce services
provided by the company.
 From 04-01-2000, another company named M/s Prakash Soft drinks Pvt. Ltd. (PSD)
located in Vijaywada started marketing and selling energy drink with a mark “PLAYER’S
DELIGHT” in the script form and using the same font as used by PBP with green
background and white letters.
 On 04-06-2003, PBP Ltd. filed a trademark infringement suit against PSD Ltd. in City
Civil Court, Hyderabad, for preventive remedy and damages, for using mark similar to the
registered trademark along with which it also claimed the infringement of copyright for
using the similar font and for the use of the word ‘Delight’.
 PSD contested the suit arguing that the word ‘Delight’ is a descriptive word of a non-
distinctive character and not a protectable part of the Trademarks Act. Along with this, it
also argued that there cannot be any copyright in any word or combination of words and
their use in particular font.
 The Trial Court on 22-06-2006 ordered a preventive remedy of injunction restraining the
defendants from using the mark along with damages of Rs. 20 Lakhs in the favour of PBP
Ltd.
 Aggrieved by this decision of trial court, PSD Ltd. preferred an appeal to the High Court
and raised an additional jurisdictional issue contending that according to C.P.C the suit had
to be instituted in Vijaywada because it was the place for cause of action and the same was
provided under the additional forum provided in Trademarks Act as Vijaywada was also
the branch of PBP Ltd. as sales took place online.
 The Hyderabad High Court on 07-07-2011 allowed the appeal and eventually aggrieved by
this order, PBP Ltd. filed a special leave petition before the Supreme Court of India and
the same is pending for final hearing.
 STATEMENT OF ISSUE

 Whether the word ‘DELIGHT’ in the registered trademark “ATHLETE’S DELIGHT” is

not distinctive in character to disentitle the exclusive right to use it?

 Whether the PSD Ltd. has infringed the PBP’s trademark “ATHLETE DELIGHT” by
using the trademark “PLAYER’S DELIGHT”?

 Whether PSD can claim prior use rights for its trademark “PLAYER’S DELIGHT” over
the PBP Ltd.’s trademark “ATHLETE’S DELIGHT”?

 Whether PSD Ltd. has infringed the copyright in trademark of PBP Ltd.?
 DETAILED ARGUMENTS

ISSUE 1: WHETHER THE WORD ‘DELIGHT’ IN THE REGISTERED TRADEMARK

“ATHLETE’S DELIGHT” IS NOT DISTINCTIVE IN CHARACTER TO DISENTITLE
THE EXCLUSIVE RIGHT TO USE IT?

1.1 Trademark is not distinctive in character

The counsel hereby humbly pleads that –

The word ‘distinctive’ is not directly defined in the Act. However meaning of distinctive is
indicated in the definitions of ‘trade- mark’ (Section 2(zb) & ‘well known trade mark’ (Section
2(zg). The word has been explained in a plethora of judgments. Distinctive has been explained to
mean such use of the trademark with respect to the goods of a person that the public will
immediately and unmistakably co-relate the mark with the source or a particular
manufacturer/owner thereof. The real issue which however arises is what should be the meaning
of the expression ‘distinctiveness’ in the situation when the trademark is a word mark of
descriptive nature. When a trademark, which is a word mark, is arbitrarily adapted and is such
having no co- relation to the goods in question, then in such a case distinctiveness is achieved by
normal and ordinary use of the trademark with respect to the goods

The appellant’s brand “ATHLETE DELIGHT”, the word “delight” has no distinctive meaning to
it because the word is descriptive in nature and of non-distinctiveness character. The word
“delight” is not a protectable part of the registered trade mark capable claiming exclusive rights
over its use as per the provisions of the Trademarks Act. The product should have some quality in
the trade mark which earmarks the goods so marked as distinct from those of other producers of
such goods. Hence, the word “delight” per se is not eligible for distinctive character.

In W.N Sharpe Ld v. Solomon Bros Ld2.,it was held that certain words such as
“good”,”best”,”superfine” were incapable of adoption. They could not have a secondary meaning
and were not capable of registration.6 In a given situation however, even the mark “Super Deluxe”,
which otherwise may come within the purview of section 9(1), can nevertheless be registered if

2
W.N Sharpe Ld v. Solomon Bros Ld..,(1915) RPC 15
before the date of application for registration it has acquired a distinctive character as a result of
the use made of it or is a well-known trade mark.3

Section 9(1)(b), which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or service;

In the case, The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks4 the Calcutta
High Court stated that distinctiveness means some quality in the trademark which earmarks the
goods so marked as distinct from those of other producers of such goods.The word “delight” is
incapable of adoption, it has no secondary meaning. which otherwise may come within the purview
of section 9(1)(b), can nevertheless be registered if before the date of application for registration
it has acquired a distinctive character as a result of the use made of it or is a well-known trade
mark. The word “delight” doesn’t indicate the quality or quantity or the purpose of the product and
therefore, the trade mark is not capable of registration.

1.2 PBP Ltd has no monopoly right over the product

The counsel is contending that in the judgment given below states that –

In IIHR Hospitality Pvt. Ltd. v. Bestech India Pvt Ltd.,9 the court stated that “being the registered
proprietor of the trade mark “Ananda” the appellant would have to show, prima facie evidence that
so strong in the public mind is the mark linked, with the reference to it having achieved secondary
distinctiveness, that upon the seeing mark “Ananda” in relation to an abode, it immediately brings
to mind the appellant. This would require prima facie evidence wherefrom a view could be taken
that the word “Ananda” reminded the consumer, without any further prompting, that the product
was that of the appellant”. In A.D Padmasingh Issac v. Aachi Cargo Channels Private Limited, 5
the Division Bench of Madras High Court stated that the word “Aachi” which means
“grandmother” in Tamil was in common use throughout the State of Tamil Nadu. Such a word,
which was of general use, could not be a monopoly of the appellants alone.

3
Bharatbhai Khushalbhai Patel v. Deluxe Bearing Limited, 2013 (56) PTC 451 (Guj) (DB) at p. 462
4
The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks, AIR 1977 Cal. 413.
5
A.D Padmasingh Issac v. Aachi Cargo Channels Private Limited 2014 (57) PTC 102 (Mad)(DB) at p.106
  The word “delight” is neither suggestive, descriptive nor does it give any secondary
meaning to the product. The appellants may not claim exclusive right over it. The word
“delight” is a generic word and can be used by anyone. The word doesn’t give secondary
meaning to the energy drink, it is just a grammatical word and an adjective. The appellants
have certainly not used the word extensively for a longer period to create lasting impression
in the minds of people. However, we have been using the word “delight” before the
appellants. The appellants can’t have monopoly rights over the word.
1.1 Trademark had not secondary meaning
In Britannia Industries Ltd, v. Cremica Agro Foods Ltd.,6 the court was of the opinion that
prima facie the plaintiff’s claim for distinctiveness and acquisition of secondary meaning in
relation to its mark “Greetings: has not been established.

The usual approach followed by the court of law while ascertaining whether a particular trademark
has acquired a secondary meaning in relation to the product for which it is used, is to evaluate the
trademark of the anvil of various factor, the extent of its use qua the product, the expenditure
incurred by the plaintiff in marketing and promoting the product under the said trademark, the
profit and sales revenue etc. these are valid parameters that objectively reflects the popularity,
usage, consumer recognition and market strength of a trademark. And thus, help in ascertaining
whether the trade has acquired secondary meaning. 7

The appellant’s product started its marketing from 6-8-2002. However, PSD Ltd had started its
marketing the “PLAYER’S DELIGHT” from 4-1-2000 in the Vijayawada itself. The appellants
started marketing its product after the PSD Ltd. thus, the question of acquiring the secondary
meaning to the product does not come into picture.

 The word ‘delight’ is just a grammatical suffix and may be used by anyone.
 Also, the PBP Ltd was not the prior user or even the registered proprietor of the aforesaid
trademark
 Therefore, the word “delight” in the registered trademark “ATHLETE’S DELIGHT” is not
distinctive in character to disentitle the exclusive right to use it.

6
Britannia Industries Ltd, v. Cremica Agro Foods Ltd.,2008(38)PTC 89 (Del.).
7
Cadila Healthcare Ltd. v. Gujrat Cooperative Milk Marketing Federation Ltd, 2008 (36) PTC 168 (Del) at pp.184-
85
ISSUE 2: WHETHER PSD LTD. HAS INFRINGED THE PBP’S TRADEMARK
“ATHLETE’S DELIGHT” BY USING THE TRADEMARK “PLAYER’S DELIGHT”

It is contended that the PSD Ltd has not infringed the PBP’s Ltd Trademark “ATHLETE’S
DELIGHT” by using the trademark “PLAYER’S DELIGHT”.

2.1. Exclusivity of the trademark rights.

One of the well-established principles in Trademarks law has been the concept of comparing and
considering a trademark in its totality. Many a times a trademark can be a composite trademark
having various elements in it, and when the same is registered, the protection is provided to the
mark as a whole. But when it comes to claiming rights over the parts of such trademark, the same
is dealt as per the provisions of Section 15 & 17 of the Trademarks Act.

Section 15 in The Trade Marks Act, 1999

15. Registration of parts of trade marks and of trade marks as a series.—

(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part
thereof separately, he may apply to register the whole and the part as separate trade marks.

(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.

(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or
similar goods or services or description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet differ in respect of—

(a) statement of the goods or services in relation to which they are respectively used or proposed
to be used; or

(b) statement of number, price, quality or names of places; or

(c) other matter of a non-distinctive character which does not substantially affect the identity of
the trade mark; or

(d) colour, seeks to register those trade marks, they may be registered as a series in one registration.

Section 15 deals with the registration of parts of trademarks and of trademarks as a series, where
a trade mark applied for registration consist of more than one feature, and if the proprietor claims
exclusive right of all such features separately, he may have to seek registration for each such part
as a separate trademark.

The counsel humbly pleads that the appellant’s may not have exclusive rights over the word
delight.

Arguendo, had they had registered the word “delight” separately, they would have gotten the
exclusive rights to use it.

The trademark (as referred by the appellants) has two features to it. And if they wanted to use the
word “DELIGHT” from their trademark, they should have gotten the word “delight” registered
separately.

2.2 Trademark to be taken as whole

Section 17 in The Trade Marks Act, 1999

17. Effect of registration of parts of a mark.—

(1) When a trade mark consists of several matters, its registration shall confer on the proprietor
exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

(a) contains any part—

(i) which is not the subject of a separate application by the proprietor for registration as a trade
mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the
whole of the trade mark so registered.

It is humble pleaded that,

1. Section 17 clearly lays down the rights of registered proprietor, which explicitly states that
the exclusive right is with respect of the use of the trademark as a whole and not in parts.
2. If the proprietor wishes to seek statutory protection for exclusive use of any part of the
trademark, then he has to apply to register that part as a separate trademark.

In the case of Uttam Chemical Udyog v. Shri Rishi Lal Gupta8, the registered trade mark was "5-
Bhai", wherein numeral "5" had been disclaimed. The registrar further concluded that the word
"Bhai" had become publici juris and as such passed an order imposing a disclaimer in respect of
the word "Bhai". On appeal, the High Court held that they had the exclusive right to use the
combination of the words "5-Bhai" in relation to the goods, but however, they could not restrain
others from either using the numeral 5 or the word "Bhai" independently or in combination with
other words.

3. Referring to the above provisions of the act, it is a settled law that the proprietor gets
exclusive right to the use the trademark taken as a whole. He has to apply to register the
whole and each such part as separate trademarks in order to claim right over any part of
the mark, also they cannot restrain others from either using any part or word independently
or in combination with other words.

8
Uttam Chemical Udyog v. Shri Rishi Lal Gupta TRA/ 88/2004/TM/DEL (C.O.No.15 of 2001)
 4. But if the proprietor acquires any right by long use of those parts or words in relation to
his trade, he may, claim his right by a passing off action and prevent exploitation of his
mark.
5. De facto, the appellants registered their trademark after the respondent’s usage of the word
“Delight” in their product. The proprietor here in the present case, may not acquire the
passing off action because neither did they use the trademark for the long time nor they
used the trademark before the respondents.

Ultratech Cement Limited and Other vs. Dalmia Cement Bharat Limited9

The Plaintiff, Ultratech Cement filed a trademark infringement and passing off case against the
Defendants, Dalmia Cement with respect to the Plaintiff’s registered trademark “UltraTech” and
the use of the word ‘ULTRA’ by the Defendant in its trade marks.

The Plaintiff company has been using the name UltraTech Cement Limited since October 14, 2004
and are the registered proprietor of several trademarks containing the word “Ultra” such as
‘UltraTech CEMENT The Engineer’s Choice’, ‘UltraTech CONCRETE’, ‘UltraTech READY
MIX’, ‘UltraCem’, and a Sun Device followed by ‘UltraTech Cement’, ‘ULTRATECH WHITE
CEMENT’.

It was in September 2013 that the Plaintiff learnt about the Defendant’s marks called “Dalmia
ULTRA”, “DALMIA ULTRA”, etc. consisting of the word “Ultra” and which is identical and
deceptively similar to the ‘UltraTech’ trademarks of the Plaintiff.

The court rejected the plea of the Plaintiff in the premises that there was no prima facie merit in
the Plaintiff’s case of infringement and passing off.

The Court observed that the existence of the word ‘Dalmia’, which is associated with the
Defendant company since 1939, as a part of their mark is sufficient to put the traders and
purchasing public to notice of the distinctive origin of the Defendant’s goods.

9
Ultratech Cement Limited and Other vs. Dalmia Cement Bharat Limited, 2016 (67) PTC 314 (Bom)
It was also held that the word “Ultra” merely serves as a prefix in the Plaintiff’s UltraTech
trademarks and has not been registered as a distinct mark. The court came to this conclusion based
on the fact that, in the reply to the objections raised by the Trade Marks Registry on the grounds
of descriptive nature of the Plaintiffs’ mark, they replied stating that the word UltraTech has to be
viewed in combination and as a whole. And therefore, the court concluded that the registration of
the Plaintiff’s UltraTech trademarks was made on the exclusive notion that the word “Ultra” was
merely a component of the entire combination and the trademarks ought to be considered as a
whole and not in parts
In the case of Charan Das & Veer Industries (India) v. M/s. Bombay Crockery House 10 ., where
the plaintiff's mark was 'PERFECT' and 'SWASTIC PERFECT' and it had disclaimed the word
'Perfect'.

2.3 The trademark was registered in the name of “ATHELETE DELIGHT”

1. In the case stated, the appellants are appealing for the trademark “ATHLETE’S DELIGHT”

2. Material facts given in the case clearly states that the appellants had applied for the registration
of the trademark “ATHLETE DELIGHT”.

3. Hence, there may not be any question of trademark infringement of the word that was not
registered in the first place.

4. Arguendo, had they had applied for the registration of the word “ATHLETE’S DELIGHT”
then, there would have any question of infringement.

5. The trademark of “ATHLETE’S DELIGHT” was not registered by the appellants whatsoever.

6. Accordingly, in the light of the above it is contended that the respondents have not infringed
any trademark.

10
Charan Das & Veer Industries (India) v. M/s. Bombay Crockery House, 1984 PTC 102
3. WHETHER THE PSD LTD CAN CLAIM PRIOR USER RIGHT FOR ITS
TRADEMARK ‘PLAYER’S DELIGHT’ OVER THE PBP LTD’S TRADEMARK
‘ATHLETE’S DELIGHT’?

______________________________________________________________________________

The counsel humbly pleads that the PSD Ltd has prior user right for its trademark “PLAYER’S
DELIGHT” over the PBP Ltd’s trademark “ATHLETE’S DELIGHT”.

3.1 Vested right of the PSD Ltd’s trademark “PLAYER’S DELIGHT”.

Section 34 in The Trade Marks Act, 1999

Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of
registered trade mark to interfere with or restrain the use by any person of a trade mark identical
with or nearly resembling it in relation to goods or services in relation to which that person or a
predecessor in title of his has continuously used that trade mark from a date prior—
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the
proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services
in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the
Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark
by reason only of the registration of the first mentioned trade mark.

It is contended that the fundamental requirements under the provision are –

(1) the use of a mark identical or nearly resembling the registered mark, by a third person, must
be in relation to the goods and services for which the first mentioned mark is registered;

(2) the use must be a continuous use of the trademark;

(3) the trademark must be used by the proprietor in order to avail the protection;

(4) the mark must have been used from a date prior to the use of the registered trademark or the
date of registration whichever is earlier.
The counsel humbly pleads before the Hon’ble Court that –

1. 'Use' under Section 34 of the Act mandates notion of continuous use. It is a test of a high
order fulfilling the requirement of a commercially continuous use of the mark in relation
to goods and services. The expression "continuously used that trade mark" has the specific
connotation of vesting of a right in a person when he puts his goods with the mark in the
market..
2. Hence, section 34 thus provides for specific requirements which relate to (i) the nature of
goods or services in relation to which the mark is used; (ii) the nature and character of use;
(iii) person who must use; and (iv) the date from which the mark should have been used.
3. In order to avail the benefit of section 34, the use of a trademark by a person other than the
registered proprietor must be prior to the date of use by the registered proprietor or the date
of registration, whichever is earlier. Thus, in circumstances where the use by a defendant
is prior to the use by the registered proprietor, but not prior to the date of registration, the
benefit of section 34 is not available.
4. In the present case, the respondents were already using the mark ‘PLAYER’S DELIGHT’
before the date of the registration of the appellant’s product. Thus, the respondents may be
eligible for the benefit of Section 34.
5. It is trite law that the registration of trade mark is prima facie evidence in favour of the
holder of such mark. Section 34 is an exception for the reason that prior user is not
bound by such registration.8
6. Merely because the person is the proprietor of a registered trade mark, that does not give
him a defence against an action for passing off at the instance of a person who has a vested
common law right to the mark.9
7. Prior use and adoption of a trade mark in relation to goods under the trade mark in relation
to goods, which causes distinctiveness of the trade mark on account of sale of the goods
under the trade mark in the market, makes the person who sells those goods, owner of the
trade mark.
8. Such prior user and adoption of the trade mark creates a legal right which prevails over
even a subsequent registration of the trade mark by any another person.10
 9. Section 34 protects the vested rights, so that the registered proprietor of a trade mark cannot
interfere with the use of the identical or similar mark by any other person using the mark
from an earlier date. 11 The savings provisions embodied in section 34 applies inter alia to
a situation where a person has continuously used a trade mark in relation to those goods or
services by the proprietor of the mark prior to the date of registration of the mark. The
benefit of section 34 is available only by continuous use prior to user or date of registration,
whichever is earlier, by/of the registered proprietor. The benefit is not available merely by
applying for registration.12 In Neon Laboratories Ltd. v. Medical Technologies Ltd.,1113 the
court stated that the “first user” rule is a seminal part of the Act.

The respondent would within the territory of India be entitled to the benefit of the saving contained
in section 34 provided that it establishes before the court a continuous user of the trade mark from
a date prior to the use of the registered trade mark by the plaintiff. There is prima facie a complete
absence in the record of material that would show a prior, continuous user of the trade mark by the
defendant in the territory of India. 14

10. When a party is using prior user a shield in an action for infringement, it is necessary to
prove that they have been continuously using the trade mark in respect of goods
manufactured or marketed by them.
11. De facto, it is established that the respondents have been using the mark “PLAYER’S
DELIGHT” before the appellants.
12. The PSD Ltd has already created a niche in the market of energy drinks in the city of
Vijayawada.
13. The PSD Ltd was continuously using the mark “PLAYER’S DELIGHT” to manufacture
the goods marketed by them.
14. The action for infringement is a remedy provided by the statute to a registered holder of a
trade mark in case of any violation of his right to use his trade mark exclusively for the
goods. Therefore, when the plaintiff comes to the court with a complaint of infringement
by the defendant and if it is found that the defendant is using the plaintiff’s restraining the

11
Neon Laboratories Ltd. v. Medical Technologies Ltd., 2015 (64) PTC 225 (SC)
 defendant from using the trade mark. However, section 34 is an exception to this, in as
much as registration of trade mark cannot be used against a trader taking shelter under the
concept of prior user. Of course, prior user must be continuous or not intermittent or
seasonal. Therefore, prior user assumes significance in an action for infringement. 15
15. In the light of the above statement, it is contended that the PSD Ltd has a prior user right
over the mark “PLAYER’S DELIGHT”.

4. WHETHER PSD LTD INFRINGED THE COPYRIGHT IN TRADEMARK OF PBP

LIMITED?

____________________________________________________________________________

It is submitted before the Hon’ble Court that –

4.1 Not all trademarks are copyrightable

1. Only certain kinds of creative works are capable of copyright protection, artistic works
(including brand logos or designs) being one such kind. If a brand logo has an element of creativity
and is original, it will also attract copyright protection in addition to trademark protection.

2. Summarizing the above, the main requirement for a brand logo to be protected under the
trademark law is that it should be distinctive and capable of representing a trade in commerce;
whereas copyright law, on the other hand, requires that a logo is an original piece of art and has a
creative element attached to it.

3. Since copyright can't protect a name, colors or the design of the logo, most
simple logos simply do not have the required level of creativity to be considered copyrightable.

4. In the present case, the appellant’s product ‘ATHELETE’S DELIGHT’ doesn’t contain a logo
neither does it have any required level of creativity on its trade mark able to be called a logo.
4.2 Fonts are copyrightable under Indian Copyright Act, 1957

1. The product’s trademark just has two different letters written on a simple font, i.e “Arial
Black Font (Italic) and in ‘script’ form. Hence, the font can be used by anyone and it has
no exclusivity to it. Also, neither the appellant’s product has a logo of its own. They have
just written their product’s name in the background of different colours.

2. Fonts are not trademarkable because the font is the product itself, and as a result,
the font is merely a necessary functional component. Since products themselves do not
qualify for trademark protection, a font cannot be trademarked.

3. In the present case, the appellant’s product didn’t survive a considerable amount of time to
be considered to have an exclusive right over the font or the background.
4. The appellant’s product also didn’t have a significant amount of time to create a lasting
impression in the minds of people.
5. The respondent’s product certainly might not be able to create a confusion in the minds of
people. Thus, the question of infringing the copyright of their product is superfluous.

4.3 The test to infringe a copyright of a trademark

THE TRADEMARK INFRINGEMENT TEST

1. STRENGTH OF THE SENIOR MARK

The senior trademark is the one that was registered first or used first. The more
distinctive is the senior mark, the more protected it is. A court will measure
distinctiveness along the following spectrum:
A). Generic
 Definition: Words or symbols that describe the product itself, rather than
distinguish between competing versions of the product. A trademark can be
rendered generic if consumers begin to use the mark as the g eneric name of the
entire product group (like “aspirin”)
 Strength: Never distinctive
  Example: E-mail (no trademark)
B). Descriptive
 Definition: Words or symbols that merely describe the ingredients, qualities,
features, purpose or characteristics of a product.
 Strength: Distinctive only if the mark has acquired secondary meaning.
Secondary meaning indicates that although the mark is on its face descriptive of
the product, consumers recognize the mark as having a unique source. Registered
marks with incontestable status will be presumed to be at least descriptive with
secondary meaning.
 Example: Windows (trademarked because it has a secondary meaning)
C). Suggestive
 Definition: Suggestive trademarks suggest qualities of the underlying product,
such that it requires imagination, thought, and perception to determine the nature
of the product in question.
 Strength: Inherently distinctive
 Example: Playstation (trademarked because it suggests that it is a videogame
device)
D). Arbitrary
 Definition: Arbitrary terms are names that exist in popular vocabulary, but
have no logical relationship to the products for which they are used. Whether a
word is arbitrary or not has everything to do with the context in which it is used.
The pairing of the mark with the particular category of product should appear to
be random.
 Strength: Inherently distinctive
 Example: Apple (trademarked because computers bear no relation to the actual
fruit)
E). Fanciful
 Definition: Terms that are invented fo r the sole purpose of serving as
trademark and have no possible association with the product for which it is used.
 Strength: Inherently distinctive. Infringers of these marks are hard pressed to
provide any explanation for their use the mark, leaving the i mpression that the
 real reason was a blatant attempt to trade off the goodwill generated by the owner
of the trademark.
 Example: Xerox (trademarked because the word has no meaning outside of this
context)
2. RELATEDNESS OF THE PRODUCTS

Relatedness does not mean that the products are in the same broad industry. Rather,
it means that the two products have the potential to be connected in the mind of the
consumer. Each case typically fits into one of the following three categories (and the
weight given to the factor will change accordingly):

 If the products compete directly then confusion is likely if the marks are
sufficiently similar.
 If the products are somewhat related but not competitive, then confusion will
turn on other factors.
 If the products are totally unrelated then confusion is unlikely.
3. SIMILARITY OF THE MARKS

This is a factor that the courts usually accord greater weight. The court will look at
the pronunciation, appearance, and verbal translation of conflicting marks. It will
look to see if the given mark would confuse the public when viewed in isolation.
Also, the mark will be viewed in its entirety, not by its individual features.

4. EVIDENCE OF ACTUAL CONFUSION

The existence of actual confusion is direct evidence that the products in their actual
market context have similarities sufficient to create confusion. This factor will only
be weighted heavily when there is evi dence of past confusion or when the particular
circumstances indicate such evidence should have been available. Nevertheless,
isolated instances of actual confusion after a significant period of time of concurrent
sales or extensive advertising do not alwa ys indicate an increased likelihood of
confusion and may even suggest the opposite.
5. MARKETING CHANNELS USED

A court will assess the similarity of the marks in light of the way they are encountered
in the marketplace and the circumstances surrounding t heir purchase. Evidence may
include the relevant market the two products are sold in, the type of business the
marks are used for, the methods of advertisement employed by the two parties, and
the location that the respective products can be found at store s.

6. LIKELY DEGREE OF PURCHASER CARE

Generally, when analyzing this factor in a trademark infringement test, a court will
apply the standard of the typical buyer exercising ordinary caution. However, if a
buyer has expertise or is otherwise more sophistic ated with respect to the purchase
of the product at issue, a higher standard is proper. Similarly, when products are
expensive or unusual, the buyer can be expected to exercise greater care in her
purchases. The ultimate significance of a given degree of c are, however, often will
depend upon its relationship with the other seven factors.

7. THE INTENT OF DEFENDANT IN SELECTING THE MARK

If a party chooses a mark with the intent of causing confusion, that fact alone may be
sufficient to justify an inference of confusing similarity. Intent is relevant because
purposeful copying indicates that the alleged infringer believes that his copying may
divert some business from the senior user. Direct evidence of intentional copying is
not necessary to prove intent. Rather, the use of a contested mark with knowledge of
the protected mark at issue can support a finding of intentional copying.

In the present case, the following point can be taken into consideration-
1. The channels of the business are different. That is, cities, online marketing etc.
2. There is no actual evidence of creating confusion in the minds of the people.
3. A normal prudent person would know the difference between the energy drink and
soft drinks. (Since, the appellant had a business of soft drinks and the trademark of
the energy drink came much later in the picture)
4.3 Anything which is not covered under Section 2 of the Copyright act, is not copyrightable

In Aananda Expanded ... vs Unknown12

 The issue here was whether fonts designed by the applicant's employee during the course
of her employment does enjoy copyright.
 Section 13 of the Copyright Act gives the details of works in which copyright subsists. It
provides that copyright shall subsist throughout India in the following classes of works :

(a) Original literary, dramatic, musical and artistic works ;

(b) Cinematograph films ; and

(c) Sound recording.

 Section 16 of the Act states that there shall be no copyright or any similar right except in
accordance with the provisions of the Act.
 The basic international convention in the field of copyright is Berne Convention. As
technology expanded and newer forms of creations demanded protection, new conventions
like 'Rome Convention 1961' was entered into. A new concept of 'neighbouring rights' was
introduced into the copyright system. The basic principles in these two international
conventions got integrated into the copyright part of 'Agreement on Trade Related Aspects
of Intellectual Property' (TRIPS). Is none of these international conventions on copyright
is there an express mention about protection of typefaces or regarding protection of fonts.
 The convention makes it clear that it shall be a matter of legislation in the countries of the
Union to determine the extent of application of their laws to the work of applied art. This
implies the necessity of a clear legislative intervention w.r.t. works of applied art and also
shows that 'any other artistic work' is not an omnibus term covering all the artistic works.
This calls for a legislative intervention and it is a matter of legislation in the member
countries U.K. chose to amend its Act to provide for typefaces.

12
Aananda Expanded ... vs Unknown.,2002 (24) PTC 427 CB
  However, Indian Copyright Act does not contain any similar provisions and does not
protect typefaces.
 Thus while we see that principle of 'ejusdem generis' limits the meaning of "any other work
of artistic craftsmanship", the international copyright conventions have not considered
protection of typeface as an artistic work. Even in England where such provision is made,
there are specific provisions relating to typefaces. In the absence of such specific provision
in theIndian law, following the principle of ejusdem generis, it is concluded that typefaces
are not included in the genre of artistic work as defined in Section 2(c), especially in view
of Section 16 of the Indian Copyright Act.

4.4 Violative of Article 21 of the Constitution of India-

It is submitted before the Hon’ble court that the fonts are public property and may not be used as
a private property for claiming of rights.

In R.P.Limited v Indian Express Newspapers13

It was held that –

 the right to impart and receive information is a species of the right to freedom of
speech and expression guaranteed by Article 19(1)(a) of the constitution of India.
A citizen has a Fundamental Right to use the best means of imparting and receiving
information. The State is not only under an obligation to respect the Fundamental
Rights of the citizens, but also equally under an obligation to ensure conditions
under which the Right can be meaningfully and effectively be enjoyed by one and
all. Freedom of speech and expression is basic to and indivisible from a democratic
polity. One of the most important components of freedom of speech and expression
is the free and unhindered use of the appropriate language. A society cannot
effectively communicate if a restriction or sanction is imposed on it in any manner
whatsoever. This discussion becomes relevant in the background of the
controversial attempt to claim copyright in the “Fonts” of Kannadan language,

13
R.P.Limited v Indian Express Newspapers.,1989 AIR 190, 1988 SCR Supl. (3) 212
 which is a language used by over 50 million people in India and is officially
recognized by the Constitution of India. A copyright in fonts would confer an
indirect copyright in the language itself, which cannot be justified in any
circumstances. Such a claim would definitely be violative of Article 19(1) (a) of
the Constitution of India.
 It must be noted that Article 21 of the Constitution of India confers a “right to
know” on all persons. In R.P.Limited v Indian Express Newspapers[3] the
Supreme Court read into Article 21 the right to know. The Supreme Court held
that right to know is a necessary ingredient of participatory democracy.
 The ambit and scope of Article 21 is much wider as compared to Article 19(1)(a).
Thus, any attempt to curb the right to know, whether directly or indirectly, would
be violative of Article 21 of the Constitution of India. If a copyright were granted
in respect of “fonts”, then right to know would definitely be violated because then
knowledge cannot be shared and distributed among masses.

In the light of the above statement, it is here by contended that the PSD Ltd has not infringed
copyright in trademark of PBP Ltd
PRAYER