The Approach by US Courts
In the United States, there are much more cases of trademark bullying than in India. Here are a few cases that helped the U.S. courts see trademark bullying with a new point of view.
Monster v. Vermonster
In Monster v. Vermonster, Hansen Beverage Co., the manufacturer of the well-known energy drink “MONSTER,” sent a cease-and-desist order against Rock Art Brewery (a small company that sells its beer in various states of the United States of America) for using “Vermonster” to sell its brewed beer. According to Hansen, there may be confusion between the words Vermonster for beer and Monster for energy drinks.
Rock Art was required to comply with the notice despite the absolute difference in the marks. However, the owner of Rock Art opposed the bullying and issued a public statement, and began to promote and market their products. They also used social media to get Hansen to make concessions and reach an agreement.
After this case, the U.S. Commerce department collaborated with the USPTO to issue a report which addressed major businesses’ unlawful harassment of small businesses.
Apple v. Prepear
In Apple v. Prepear, Apple, a huge producer and distributor of electronics, attempted to force Prepear – a recipe-sharing app – into giving up their trademark. The two companies’ logos are very similar up to a point. Prepear’s logo has a drawing of a pear outlined in green against a white backdrop with a leaf along with it. In contrast, Apple’s logo is an image of a half-eaten apple with the leaves facing up. Furthermore, the goods and services provided are also different.
Prepear tackles bullying by taking to social media and sharing how Apple does the same to other entities that designed fruit logos. According to Prepear, they also have to lay off a lot of employees since they couldn’t afford to pay them while at the same time defending the expensive lawsuit. Although this case has not been solved yet, intellectual individuals will definitely not confuse the 2 logos. Nonetheless, when determining whether there is a credible infringement or bullying, the considerations to consider are quite self-evident.
Indian Jurisdiction
Indian legislators had anticipated the danger of such misuse. Accordingly, they established a suitable response under section 142 of the Trademarks Act, 1999, which specifies the law against bogus legal threats.
When a person issues circulars, advertises or threatens another with action or procedure that infringes on a registered or alleged to be registered trademark, the aggrieved individual may file a lawsuit against that offending individual and seek a declaration as to how unreasonable such threats are.
According to these provisions, an injunction might be given in the aggrieved party’s favor to prevent the other person from making further threats and recoup damages. Only those whose trademarks have been registered are eligible for this action.
Milmet Oftho Industries and Ors v. Allergan Inc
Millet Oftho Industries and Ors v. Allergan Inc [(2004)12 SCC 624], a case in which the Indian pharmaceutical company Allergan offered a medicine called “Ocuflux,” was one of the first cases in India that could be classified as bullying. The Appellant, a multinational pharmaceutical business, sought a passing-off action against Allergan because it sold a medicine with a similar name in several regions. The Supreme Court claimed that if foreign corporations have no intention of coming to India or introducing their products there, they should not be allowed to stifle Indian enterprises that have been honestly using their trademark in India, developed the product, and were the first to market.
Another noteworthy case is Jones Investment Co v. Vishnupriya Hosiery Mills [20154L.W.30], in which the Appellant is an American company that has been using the “Jones New York” trademark internationally to manufacture and produce clothing, socks, and footwear. On the other hand, the defendant was a small textile company located in Erode, a city in Tamil Nadu. The respondent filed an application for its textile product “Jones” trademark. The appellee objected, and the Trademark Registration Office rejected the application and filed an appeal.
The Appellant claimed that they have a global reputation and that the respondent’s product sales are insufficient, implying that the respondent cannot compete with the Appellant. The IPAB, on the other hand, took the same position as the Supreme Court in the aforementioned cases, declaring that Multinational companies cannot claim trademark infringement against local Indian companies based solely on their international presence unless they can clearly demonstrate that their existence extends to India or the Indian company.
Another case is Bata India Limited Vs. Vitaflex Mauch GmbH (C.S. (O.S.) No. 1112/2006), wherein the defendant was sued for making baseless, groundless threats. The court must decide whether the defendant’s legal notice constitutes a legal threat and if the plaintiff is entitled to the order and damages. Because the threat level of the legal notice was deemed unreasonable by the Delhi High Court, the defendants were instructed to stop issuing any more baseless threats.
Another typical example of the prevalence of Trademark Bullying in India is between BigBasket and DailyBasket. BigBasket has issued a cease-and-desist notice to DailyBasket, ordering them to:
1. Transfer the trademark “Daily Basket” and the domain name dailybasket.com to Big Basket.
2. Discontinue the mobile application.
3. Discontinue using a similar domain or trademark with the term “Basket” as a dominant feature of the domain name or trademark; and (4) pay INR 2,00,000.00/- in legal fees. Because the term “Basket” can readily be interpreted as a phrase common to trade, any proprietor in the consumer products trade is free to use it. This would be a suitable example of lousy faith enforcement.
Although India has made provisions for such threats, the law does not clarify what are baseless and threats. However, the court and IPAB’s previous judgments are clear on some elements, including whether the trademarks are really similar and cause confusion, whether international companies intend to bring their products to the country, use first, apply first, etc., in the hypothesis whether it should be considered harassment or infringement. The Indian judiciary did not hesitate to criticize multinational corporations and other powerful companies because local companies were apparently erroneously and illegally affected by unsuccessful cease and desist notice.
The Road Ahead
Each ceases and desist legal notice will not constitute a trademark. The dynamics of each case are different, causing the court to reconsider each situation and carefully examine the trademark issues or to check if the plaintiff is seeking a court order, or they basically try to avoid the actual consequences of the infringement. The main objective of trademark law is to ensure that small entities and local businesses do not lose what they are legally entitled to. However, there are some ways to further curb this problem: providing resources to small entities, including legal aid camps, raising awareness, leading law firms, and handling more unpaid cases. The latest small entities turned to seek a respite on social media. Their plight was understood by a group of like-minded individuals who supported them through strong opposition that damages their reputation and goodwill. While the regulations in the United States on the threshold of proof for trademark dilution issues indicate a method to limit trademark bullying based on superficial assertions of well-known and famous brands, Indian law still doesn’t stipulate how far litigants a litigant may go on such unfounded claims to be considered to be a bully action.