Netflix’s recent thriller, Killer Soup has been making waves for its storyline and performances but over the last week, it hit the headlines for a different reason. The parent company of popular apparel brand, ‘KILLER Jeans’, Kewal Kiran Clothing Limited (KKCL) recently filed a trademark infringement suit against Netflix and Macguffin Pictures LLP, producers of the film. They alleged that by using the mark ‘KILLER’ a registered trademark of KKCL, the filmmakers had infringed their trademark.
In this Weekly, let’s look at the law on trademarks, infringement and what the liability of Netflix and MacGuffin will be if the infringement is actually proven.
What is a trademark?
Trademarks are distinguishable signs and symbols which separate the goods and services of one individual or enterprise from others. Trademarks include any combination of letters, words, numbers or drawings and designs.
According to Section 2 of the Trade Marks Act, 1999, a trademark can be a device, a brand, a heading, a label, a ticket, a name, a signature, a website domain name, a particular shape of certain goods, the packaging or combination of colours etc. You can identify a trademarked good by looking out for a small encircled ‘R’(®) or ‘TM’ (™) symbol next to logos and brand names.
Trademark must have the following distinctive characteristics :
- It must be capable of being represented graphically
- It must be capable of distinguishing goods and services of one from another
- It must be used exclusively for specific goods or services
What is the purpose of a trademark?
A trademark helps a buyer in identifying the manufacturer or the source of the goods or services. It is also an indicator of the quality or authenticity of the goods and services. It distinguishes particular goods and services from other similar products. Therefore, a trademark is relevant in cases of brand names, commercial products, logos, domain names etc.
What can be trademarked?
The Trade Mark Rules, 2002 categorise different classes of goods and services for trademark registration applications. These are:
- Word Mark : These include specific letters, their combinations or words that are quintessential to a specific good or service. The current case is an instance of an infringement of a word mark.
- Service Mark : These are attached to specific services. In 1999, global search engine Yahoo! sued an Indian search engine Yahoo India! for passing off the former’s domain name.
- Product Mark : These are marks or symbols which are given to the original goods or products. CANDID-B is a fairly known anti-fungal cream manufactured by Glenmark Pharmaceuticals. In 2018, they sued Curetech Skincare for selling a similar cream under the name CLODID-B with identical artwork.
- Device Mark : These include specific words or letters alongside some unique design or artistic component. Starbucks’ logo comprising a green crowned girl with wavy lines is iconic. In 2001, another coffee outlet, Sardarbuksh was sued for using a deceptively similar logo with a turbaned man with wavy lines. This was a case of device mark infringement.
- Certificate Mark : These marks are issued by certain governing bodies to certify that the particular goods and services are of a certain quality or standard. For example, schools adding the ISO certification symbol underneath their names.
- Sound Mark : Certain sounds which are exclusive and easily identifiable by the consumers can also be trademarked. Did you know that the famous Airtel ringtone is sound marked in India?
- Colour Mark : These protect a unique and distinctive combination of colours associated with specific brands. In 2007, pharmaceutical giant Cipla sued M.K. Pharmaceuticals for selling a medicine using the same shape and colour as the former’s popular ‘Norflox-400’ tablets.
- Collective Mark : These are marks used by associations or groups of organisations or individuals to distinguish the goods or services of members from that of non-members. The ‘CA’ mark that we see on Chartered Accountants’s cards is a form of collective mark.
Who owns a trademark?
To claim ownership over a trademark, you have to apply for a trademark registration. A claim can only arise if the trademark has been registered or is under the process of registration. To apply for a trademark, you must first search for the ‘mark’ to make sure that there is no pre-existing duplicate mark. If there is no such mark, you can file an application, which is dated and numbered. Then, the Trademark Registry sends an examination report back to you for any clarifications or to meet any objections. If there is no opposition to the application, then the Registry issues a certificate of registration.
The process can take four to five years but the certificate grants the trademark from the date of application. You have to renew trademark registration every 10 years.
What are the rights associated with trademarks?
Registration of trademark gives the owner the exclusive right to use and advertise the mark for the goods and services it is registered for. The owner also gets the right to initiate legal action against any unauthorised use of the trademark and can get injunctions, damages and other reliefs from the court.
What are the grounds to decide whether a trademark has been infringed or not?
Courts generally apply the Triple Test to judge whether a trademark has been infringed or not. The Triple Test involves answering these three questions to arrive at a decision:
- Is the mark in question identical or deceptively similar to the registered trademark?
- Is the mark in question being used in a similar or identical field of activity as the registered trademark?
- Is the owner of the mark in question using it in such a way that is similar or identical to the registered mark?
Tell us in the comments what you think the answers to these three questions are in the case of Killer Soup.
If KKCL wins the suit, what are the remedies available to them?
Although the Bombay High Court is yet to hear the matter, KKCL has already demanded monetary compensation in the form of interim relief. Typically, in case of trademark infringement suits, the following remedies are available:
- As a civil remedy, the owner can seek an injunction from the court to stop the infringing party from using the disputed mark either permanently or temporarily.
- Damages in the form of monetary compensation.
- A share of profits from the infringing party.
- The court can also order the infringing party to remove or destroy any mark that they have been using if found to be infringing a trademark. However, it must be remembered, that while an infringement suit is ongoing, the allegedly infringing mark cannot be tampered without any court order, this will count as an offence under the trademark law in India.
- Trademark infringement can also lead to criminal proceedings where the infringing party can get jail time of six months to three years.
- The court can also impose fines ranging from Rs. 50,000 to Rs. 2 lakh
- The court can also decide to seize all products guilty of a trademark infringement.