The world at large has undergone significant changes in the past couple of years, leading to the stark division of a pre covid and post covid era. As the world shifted from physical to digital, the pre covid, and covid era have been the bone of contention for a while now. Technological advancements have quadrupled with almost everything being dedicated to technology.
The post covid era has introduced us to cutting edge technologies like the Metaverse. Metaverse is an amalgamation of virtual reality and augmented reality manifested with the help of blockchain technology and concepts pertaining to digital media. This results in a 3D virtual world that is nothing but a replication of the social and business interactions taking place in the real world.
Amidst the ever changing and evolving technological landscape and the introduction of new technologies such as blockchain, cryptocurrencies, non-fungible tokens and metaverse, it becomes pertinent to study and analyse their effect on the intellectual property horizon in general and trademark law in particular.
The Indian trademark office has witnessed a huge influx of applications explicitly asking to provide statutory right on the term “Metaverse” and “Metaverse formative marks“ in various classes for any and all classes of goods and services. What comes as a surprise is the registry has also granted these trademarks without regard to Section 9(1)(c) of the Trademark Act,1999 which explicitly prohibits the registration of trademark consisting of words which have customary meaning in the language.Thus, it remains unclear as to why are people allowed to register names or words that describe something in the first place?
Another trend that is being followed by several Indian businesses is using their mark in the Metaverse so as to appeal to the tech savvy consumers. The film industry has also adapted to the use of metaverse for the promotion of movies. Additionally, FMCG brands are not too far behind in organising festivities and promoting new products and services leading to the expansion of common law applicability in this realm as well. Thus creating a demand for comprehensively framed legislation, especially protecting trademark rights in this disrupting marketplace.
An issue that is yet to reach the Indian courts is also the uncertainty under the NICE classification of goods and services. The European Union Intellectual Property Office has propounded the difference between classification in the real world and virtual world. It stated that the term “virtual goods” in itself is devoid of clarity and thus the content to which they relate to must be specified to ascertain the classification. Thus understanding the characteristic features and economics of this new technology along with an established and sophisticated classification system is crucial to the resolution of trademark disputes.
The Delhi High Court has played a crucial role in laying down trends when it comes to trademark laws. In a first, the Delhi High court decided on the question of jurisdiction for a trademark infringement that took place on the internet. The dispute arose from using the trademark name of TATA as a part of the defendant’s cryptocurrency,corporate or domain name. The plaintiff claimed “purpose availment” to the court’s jurisdiction, as the defendant’s website attracted significant traffic from Indian residents. This was denied by the court citing the absence of a sufficient connection, a cause of action arising out of the said activity, and on the grounds of unreasonability. The court based the above observations on the premise that the website neither actively engaged with the Indian residents, nor could an intention to target an Indian audience could be established. Further, the mere exposure of Indian residents to the website was found to be insufficient by the court and hence the interim injunction so requested was refused by the Court.
In another judgement, the Delhi High Court clarified that a dispute related to trademark licence agreement can be a subject to arbitration. It reiterated the absence of a “sovereign function” being exercised in the present case as the case did not involve a decision on the grant or registration of trademark.
The Delhi High Court has recently imposed a ₹9,50,000 fine on three manufacturers found to blatantly infringe Louis Vuitton Trademarks. The blatant infringement consisted of the sale and manufacture of counterfeit products bearing identical marks of the French Luxury Brand. The manufacturers failed to appear before the court in the trademark infringement suit. The court went on to say that Louis Vuitton was able to demonstrate its formidable goodwill and reputation in relation to the trademarks, as well as establish statutory and common law rights as a result of their prolonged use.
Another notable development has been in the case of ICAI v ICAI, where the Institute of Cost Accountants of India was restrained by the Delhi High Court to use “ICAI” as an acronym for its institution and the services provided by the institute. The court ordered the Institute of Cost Accountants to remove the acronym from all physical and virtual platforms, which are inclusive of the websites and social media platforms. The court recognised it as a case of trademark infringement and granted interlocutory injunction for the Institute of Chartered Accountants of India.
In other news, a rajasthan based restaurant was restrained for the use of “Sada Pind ”. Sada Pind is a famous tourist destination in Punjab. .The court pointed out that the defendant’s argument of writing the name of the restaurant as “5ADA P1IND” was weak, and the subsequent adoption of the name “The Punjab Village” failed to prove the absence of a malicious intent to ride on the goodwill of the plaintiff. The court also imposed a fine of Rs.2,00,000 on the defendants and ordered for the removal of any physical and virtual reference of the mark.
As is evident from the note above, it can be concluded that the law is catching up with new wave technology but there is still a lot of catching up to do as the latest technological advancements such as blockchain and metaverse are concerned. As they become more prevalent, the demand for legislation to fight the IP ramifications arising out of these technological marvels is the need of the hour.
