Trademark Disputes are largely considered to be an area of private commercial rights that have little bearing on the public at large. This is why, the locus standi in trademark litigation is restricted to the users or owners of trademarks, who battle out in courts to establish their exclusive rights over a mark. But considering that a trade mark is always related to some goods or services that are offered to the public for sale, it is an essential part of the information passed on to the consumer for identifying and using that offering. The author of this article therefore argues hereunder that the concept of locus standi with respect to Trademark Litigation should be significantly increased to allow common citizens or strangers to flag and report incidences of trademark infringement and passing off visible around them, so as to prevent the mischievous use of trade marks for wrongfully gaining at the cost of another established mark and to ensure that the unwary consumers do not make wrong buying decisions based on the deceptive information fed to them by a sly use of trademarks.
PRESENT LEGAL POSITION
‘Locus Standi’ means the ‘standing to sue’ or in simpler words, it means who is eligible to go to the court and seek a relief. The Trade Marks Act, 1999 [“Act”] sufficiently lays down the rights and remedies for trademark users and owners but it doesn’t contain a specific provision about who can initiate an action under the Act.
Section 27 deals with the right to bring an action for infringement of registered trademark. Section 27(1) makes registration of a trade mark mandatory to institute a proceeding for its infringement. Section 27(2) gives statutory recognition to the common law remedy for passing off. Under the scheme of the Act, an ‘infringement’ action would lie only against a registered trade mark, while for unregistered trademarks, the common law remedy could be availed.
Further, Section 28(1) clarifies that registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right…to obtain relief in respect of infringement of the trade mark…”. Therefore, the aforesaid provisions makes it clear that it is the ‘registered proprietor’ who would be exclusively entitled to initiate legal action for infringement of Trade Mark.
This locus standi is further expanded by Section 134 of the Act, which provides for the forum before which a suit for infringement or passing off or other related rights is to be brought. Section 134(2) states that the territorial jurisdiction of the District Court would be determined by the place where the “person instituting the suit or proceeding…actually and voluntarily resides or carries on business or personally works for gain.”
The Explanation thereunder states that “person” includes the registered proprietor and the registered user.
So it becomes clear that both the ‘registered proprietor’ and the ‘registered user’, as defined under Sections 2(v) and 2(x) of the Act respectively, are entitled to avail the remedies for infringement of trade mark.
On the other hand, the wide ambit of the passing off action gives the right to any prior user of a trademark to protect the use of its trademark. This is why the Act provides nothing specific on ‘who’ can bring about a suit for passing off. The meaning of ‘passing off’ provided in Section 134(1)(c), and inclusive definition of the word “person” in Section 134(2), would show that all the prior users of any trade mark who wish to institute a proceeding against the use of a deceptively similar trade mark have the locus to initiate such an action.
Another type of action that can be brought about under the Act, though only against a registered trade mark, is the removal or cancellation or variation of the register of trade marks. Section 47 provides the remedy of removal of the trade mark from the register on the ground of non-use. Section 57 allows for cancellation or variation of the registration of a trade mark due to some defect, omission, contravention, etc. While Section 47 can be invoked only via an application, Section 57 can be exercised suo motu as well. But the Act is makes it clear that under both these provisions, the application is to be made by “any person aggrieved”.
The same phrase “any person aggrieved” is used in both Section 47 and Section 57. It has also been used in Sections 60, 77 and 91 of the Act, but have mostly been discussed in relation to Sections 47 and 57, because these two sections provide for substantive rights against a registered trademark and appear to be overlapping in their scope.
The Hon’ble Supreme in the case of Hardie Trading Ltd. And Another v. Addisons Paint & Chemicals Ltd. [AIR 2003 SC 3377], noted that the phrase would have to be construed differently in respect of these two provisions. The SC observed that in respect of Section 57, the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. But if the ground for rectification is merely based on non-user, i.e. under Section 47 of the Act, that it is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply for its removal. Therefore, Section 47 speaks for private interest while Section 57 speaks of a public interest.
In another judgment called Infosys Technologies Ltd vs Jupiter Infosys Ltd. & Anr. [2010(14) SCR 312], the meaning of the term was elaborated by the apex court, when it observed the following:
“27. …To be an aggrieved person under Section 46, he must be one whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi. In Kerly’s Law of Trade Marks and Trade Names (11th edition) at page 166, the legal position with regard to `person aggrieved’ has been summarized thus : The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed – where it is a question of removal – from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. We accept the above statement of law.”
Therefore, it might be observed that a broad meaning of ‘person aggrieved’ has been accepted in Infosys (supra) even in respect of Section 47, which is essentially a private right. A conjoint reading of the aforementioned two judgments would conclude that the meaning of “aggrieved person” under Section 57 would be even wider than what has been accepted for Section 47 in Infosys (supra).
NO LOCUS STANDI FOR STRANGERS
But despite the presence of a robust and settled framework for the protection of Trademark rights, there is no option for a common man or a stranger to approach any forum when they see and identify a clear trade mark infringement around them. Take a stroll around any street market and it would not be strange for an IP aware person to notice the blatant acts of passing off, reverse passing off, legal fakes, trademark counterfeiting and various other forms of trade mark infringements. A major victim of this infringement is generally the fashion and apparel industry, but it is a common sight in other products like electronics and is a dangerous trend in packaged edibles and drinkables. What was even more shocking recently was to witness the television commercial of a new brand of noodles, whose trade dress and trade name bore an uncanny similarity to two established brands of noodles in the market. Yet, the marketing of the same was being done at a large scale rather than selling it more secretly.
This begs the question as to why a common person, who is witnessing these infringements around him, should not be allowed to approach an appropriate forum or court to prevent this mischief. The structure of the present legal framework doesn’t allow a public spirited and IP aware litigant to flag a trade mark infringement and seek remedy in court. Section 134 as discussed above would be invokable by the registered proprietors/users of trademarks, or the trade mark users alleging passing off. Though Section 57 is a remedy to protect public mischief and the phrase “any aggrieved person” appearing in it has a liberal meaning, it still hasn’t yet been interpreted to include any random citizen. But even if we stretch the meaning of “aggrieved person” to include any person even remotely aggrieved by the existence of that trademark, the problem is that Section 47 and 57 of the Act are remedies against trademarks that have been ‘registered’. How can a random person, who wishes to prevent a trademark infringement or passing off, approach the court to prevent the erring use of that unregistered mark?
WHY NEED TO EXPAND THE LOCUS STANDI
The reasons why such a move should necessarily be allowed and requires a tweak in the present system are as follows:
- Public interest involved in IPR
It may be argued that trademarks, like other IPRs, are a set of private commercial rights that do not have anything to do with strangers. This argument, that trademarks are a private right of an individual proprietor/user and therefore the need for a strict standard of locus standi is justified, is based upon an incomplete understanding of the intellectual property rights in general. The element of public interest is inseparable from any intellectual property right. Article 8 of the TRIPS Agreement also allows members to adopt measures necessary to promote the public interest. Former Justice DN Patel had once remarked that IPR disputes may look private, but they also involve an element of public interest.
It may be relatively easier to see how intellectual property rights like Patents have an inherent public interest objective to advance, but the trademarks are also guided by the goal of advancing public interest. Under the Trade Marks Act, the Registrar and the Government are handed over rights and obligations to represent and safeguard “public interest”. Even Section 57 of the Act in the present form, as discussed above, has been accepted as a wider provision than Section 47 as it aims to protect a “public mischief”, rather than protecting a private right alone.
Also, isn’t the very intent behind protecting trademarks to ensure that a consumer in the market doesn’t get confused by other deceptively similar marks? The test of the identifiability and reputation of the trade mark happens through the public eye and not merely between proprietors. Therefore, if the consumer feels he is being cheated or being confused by erring sellers by using deceptive trademarks, then it is unfair to stop him by saying that it is private dispute and he doesn’t have a locus standi.
- Average consumer test
The test of average consumer is an acceptable standard now for judging the distinctiveness of the mark. The courts check whether an average consumer with imperfect memory and recollection is likely to get deceived and confused by the similarity of the marks. Therefore, when the average consumer is the benchmark for judging the question of granting protection to a trade mark, then why is the same average consumer stopped from approaching the courts due to technicalities like locus standi, when the consumer knows that he is being misled, or is likely to be misled, by false application of the trade mark on the product?
- Mischief of Acquired distinctiveness
In trademark jurisprudence, the use of a trade mark mostly carries greater weight than the registration of the trade mark. If a mark wasn’t inherently distinctive, it can later acquire distinctiveness or secondary meaning as a consequence of its continuous and extensive use in the market. All that the proprietor will have to prove is that his particular trade mark is identified by the public at large with a specific set of goods or services. The trade mark even has the potential of attaining the status of a well-known trade mark, which would accord it the highest level of protection. This is the worst form of mischief that inaction against trademark violations may result into, unlike an inaction in patents or copyrights or other forms of IPR.
Suppose a proprietor brings out his goods in the market with a trade mark (say “X”) or a trade dress similar enough to an existing trade mark (say “Y”), merely to cash upon the reputation of ‘Y’ and to confuse the public into buying its goods. The trade mark ‘X’ doesn’t even try for a registration, since it knows its inherent defect, and merely continues to use it in the market. Despite there being clear infringement, the users of the earlier trade mark ‘Y’ treat the issue casually and do not take any action against the erring user. Slowly the new entrant gains popularity but the earlier users of ‘Y’, whose rights were clearly being violated, do not think it is necessary to engage in a trade mark litigation and maybe even exit that product line after some time. All this while, the gullible consumers continue to get confused by these marks and some IP aware folks, despite knowing the infringement involved, are prevented from seeking some remedy due to a lack of locus standi.
Eventually, ‘X’ might claim that it has acquired distinctiveness in the market and would seek registration. It might also become big enough player one day to attain the status of a well-known trademark. But this doesn’t change the fact that its origins were clothed in illegality. The consequence of an illegal origin cannot validate an illegal origin. The law tends to validate this act based upon the acquiescence of the earlier user, while ignoring the fact that many public spirited individuals were always ready to act against the wrongdoer, but for the technicalities of locus standi in trademark litigation.
- Infringes upon Article 19(1)(a)
The Right to Information is enshrined under the fundamental right to freedom and expression under Article 19(1)(a) of the Constitution of India. It would be preposterous to assume that this constitutional right would mean providing any information that is inaccurate or incorrect, or providing any information through infringing means. Therefore, trademark malpractices and attempts at passing off goods and services are in a way infringement upon the fundamental right of every citizen under Article 19(1)(a). Moreover, it has now been settled by the Hon’ble Supreme Court in Kaushal Kishore vs State of Uttar Pradesh [2023 LiveLaw (SC) 4] that Article 19(1)(a) and Article 21 of the Constitution of India are enforceable horizontally as well. It thus seems fair enough to demand that infringing trademark information be not given to people as it would violate their fundamental right to have access to correct information.
In light of the aforementioned reasons, it seems important that the restrictions of locus standi are expressly expanded in trademark litigation by the legislature or the judiciary. Some possible ways of redressing this lack of power in the hands of common citizens in cases of trademark violations are as follows:
- Liberal construction to the word “person” appearing under Section 134(2) and to the phrase “any aggrieved person” in Section 57 of the Act, so as to include strangers who are likely to be aggrieved by the use or existence of that trademark
- Public Interest Litigation could be allowed in matters of Trademark infringements. The concept of locus standi has been broadened over the time to better deal with the issues of public interest. Considering the public mischief involved in the trademark violations as discussed above, the higher courts could consider dealing with these matters proactively, though only in rare and strong cases.
- The Registrar could be approached with a complaint to report any trademark infringement visible around by ordinary citizens and the Registrar could then take action on that complaint or approach the appropriate court to pursue the matter. This could be similar to a criminal legal machinery, wherein an FIR puts the system into motion and then the state can pursue the matter.
- Considering the aspect of violation of fundamental right to information also involved here, the writ jurisdiction of the High Courts could be allowed to be invoked by any person who feels some misapplication of trade mark or trade dress is prevalent.
- Awareness amongst common citizens must be increased, along with empowering them, to encourage them to report these violations so that no gullible consumer falls prey to the illegal acts of any trade mark user or proprietor.
Incorporation of such practices would set an example for the world to replicate the efforts of India in protecting trademarks and would showcase our commitment towards a stronger IP regime in the world. One might argue that this expansion of locus standi could lead to unnecessarily increased litigation, but a potential of misuse of a law is no justification to stop it from enforcing when it actually remedies an existing lacuna in the system. It is important that we increase the reach of IPR to common people rather than construe them strictly as private commercial matters, so that people with awareness of IPR are not rendered powerless even after witnessing clear violations of IP law.
Advocate Practicing in New Delhi
Author can be reached at firstname.lastname@example.org.