* IN THE HIGH COURT OF DELHI AT NEW DELHI. IA No.2885/2016 (of the plaintiff under Order XXXIX Rules 1&2 CPC).

Transcription

1 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 4 th July, CS(COMM) 153/2016, IA No.2885/2016 (u/o XXXIX R-1&2 CPC), IA No.2886/2016 (u/o XI R-1(4) CPC) & IA No.5333/2016 (u/s 151 CPC). ROHIT SINGH & ANR... Plaintiffs Through: Ms. Shwetasree Majumder, Mr. Prithvi Singh & Mr. Vishnu Rege, Advs. Versus APPLE INC... Defendant Through: Mr. Sudhir Chandra, Sr. Adv. with Mr. Pravin Anand, Mr. Aditya Gupta & Mr. Utkarsh Srivastava, Advs. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW IA No.2885/2016 (of the plaintiff under Order XXXIX Rules 1&2 CPC). 1. The plaintiffs, Rohit Singh and Vyooh Low Level Computing LLP, have instituted this suit for permanent injunction to restrain the defendant Apple Inc. USA from, by using the mark SPLITVIEW or a deceptively similar variant thereof in relation to any of its software products, passing off its goods / services as that of plaintiffs and for recovery of damages. 2. The suit came up before this Court first on 1 st March, 2016 when, while issuing summons thereof, vide ex parte ad interim order the defendant was restrained from using in any manner the trade mark of the plaintiffs SPLITVIEW for any of the programmes and features within a programme of the defendant or in any hardware or software sold by the defendant directly or through dealers. CS(COMM) 153/2016 Page 1 of 16

2 3. The defendant preferred FAO(OS)(COMM) No.11/2016 against the order aforesaid of grant of ex parte injunction and the Division Bench, vide judgment dated 7 th April, 2016, vacated the ex parte ad interim injunction pending the disposal of this application for interim relief. 4. Pleadings have been completed and the counsels were heard on the application for interim relief on 15 th July, 2016, 28 th July, 2016, 24 th October, 2016, 19 th January, 2017 and 23 rd February, 2017 and orders reserved. 5. It is the case of the plaintiffs in the plaint (i) that the plaintiff no.1 is a software developer working as a consultant with the plaintiff no.2; (ii) that the plaintiff no.1, while residing in the United States of America (USA), developed three proprietary software products targeted at the end consumer, which were christened SplitView, Disk View, ViewScribe respectively; (iii) that SplitView was the trademark ascribed to the plaintiffs most commercially successful product, a software that permitted the user to simultaneously work on multiple windows on the user s computer screen; (iv) that the plaintiff no.2 is the exclusive licensee of the plaintiff no.1 s software products; (v) that the uniform nomenclature adopted by the plaintiff no.1 for all his software product offerings comprises the suffix View which serves to identify them as a family of products from the same source i.e. the plaintiff no.2; (vi) that in August, 2005, when the plaintiff no.1 came up with the software product and christened it SplitView there was no other product in the market which would help a user work on two applications simultaneously; (vii) that the plaintiffs software product under the trade mark SplitView is available in two versions i.e. SplitView Personal Edition and SplitView Terminal Services Edition; (viii) that the plaintiff no.1 CS(COMM) 153/2016 Page 2 of 16

3 purchased the domain name in August, 2005 and since then has been continuously selling its software product under the trade mark SplitView and providing regular services and updates on the said website; (ix) that the plaintiff no.1 has filed trade mark applications for SplitView in India and in USA in Class-9 and which are pending registration; (x) that the software product under the trade mark SplitView is well known, widely recognized, hugely popular, has prestigious customers and has recorded humongous sales profits; (xi) that the plaintiffs, in December, 2015 were made aware that the defendant had launched an, update to their operating software MAC X OS E1 Capitan (For Computer Devices) and ios 9 (for mobile devices) and the updated software comprised a feature that allows the monitor or screen to be split into two halves to enable working on two applications simultaneously and which feature had been named SPLIT VIEW by the defendant; (xii) that the plaintiffs further learnt that SPLIT VIEW was being hailed as the most important feature in the ios 9 and MAC OS X E1 Capitan (version 10.11) releases; (xiii) that functionalitywise, SPLIT VIEW is identical to the plaintiffs software product under the trade mark SplitView ; the only difference is that the defendant s product is bundled with their own operating system and is not available for retail sale nor is it meant for Operating Systems other than the defendant s ios 9 and MAC OS X E1 Capitan Operating System; (xiv) that the plaintiffs sent e- mail dated 30 th September, 2015 to put the defendant on notice of the plaintiffs trade mark rights; (xv) that because of the popularity of the defendant s brand name, SPLIT VIEW was automatically high up in the Google search results, making the plaintiffs software appear like an imitation of the defendant s SPLIT VIEW ; (xvi) that the defendant, in its CS(COMM) 153/2016 Page 3 of 16

4 response dated 14 th January, 2016, stated that the defendant did not wish to claim trade mark rights over the mark SPLIT VIEW and is using it in a descriptive sense and in any case SPLITVIEW cannot be a trade mark and there could be no possibility of confusion as the defendant s feature was not offered as a standalone software product for use on other computers and mobile devices; (xvii) that the aforesaid explanation tendered by the defendant is not acceptable because SPLITVIEW is not an ordinary English collocation; SPLIT and VIEW are not words that would ordinarily be used in conjunction with each other; there are a number of third party applications and features in third party operating softwares which allow for multi monitor functionality and none of these entities adopted names which are similar to SPLITVIEW or used SPLIT VIEW in a descriptive manner to describe the functionality of their software; and, (xviii) that many of the users of defendant s product who may be using the product of the plaintiffs also; in such usage, the plaintiffs SplitView will be a zero-footprint software. 6. The defendant has contested the suit inter alia pleading (i) that the defendant has no office in India and no entity in India is authorized to accept summons on behalf of the defendant; (ii) that the defendant has used the term SPLITVIEW or the phrase SPLIT VIEW, from at least as early as the year 1993, to describe a multi-windowing feature within its products; in 2006 the defendant began using the term SPLITVIEW in relation to Xcode for its OS X and thereafter for OS X and IOS operating systems, to describe the developers ability to split the user s view in the applicable operating system; the defendant, in the year 2010, also started using the descriptive terms SPLITVIEW in connection with an application programme interface CS(COMM) 153/2016 Page 4 of 16

5 in the first ipad software development kit; the multiple view functionality within this kit was referred to as UISplitViewController ; (iii) that the use of the descriptive phrase SPLIT VIEW in relation to Xcode and the ipad software development kit was derived from the NXSplitView and NSSplitView with respect to Split View functionalities in the NeXT operating system software; (iv) that the plaintiffs can claim no rights in the inherently descriptive phrase SPLIT VIEW, since it describes the characteristics and the intended purpose of product with respect to which it is used; (v) that the plaintiffs product SPLITVIEW, which is a descriptive term, informs the users of the precise view splitting function of the plaintiff s software; (vi) that the combination of the terms Split and View is in no way unique to the plaintiffs; there are at least 1839 patents with a priority date before September, 2005 which used the combination terms SPLITVIEW or the phrase SPLIT VIEW ; (vii) that merely combining two descriptive words does not lead to a registrable combination; (viii) that the term SPLITVIEW and the phrase SPLIT VIEW are well known in the trade as being an apt description of a multi-windowing functionality in the realm of viewing devices, displays, monitors, screens etc.; (ix) that the term SPLITVIEW is not distinctive of the plaintiffs; (x) that owing to overwhelming third party use, the term SPLITVIEW and phrase Split View have become publici juris (xi) that merely because the plaintiffs have described their multi-windowing features as Split Monitor or Multi View or Dual View or Multi Screen or Dual Screen etc. does not entitle the plaintiffs to contend that the phrase SPLIT VIEW is not descriptive; each of these phrases are alternate descriptive phrases and merely because many alternate descriptive phrases are available for a particular functionality, does CS(COMM) 153/2016 Page 5 of 16

6 not detract from the descriptiveness of one such phrase; (xii) that the plaintiffs also did not even make an application for registration after claiming to have started using the term in the year 2005 and made such application only in the year 2016 and the defendant has filed a letter of protest to the application of the plaintiffs in USA; (xiii) that the defendant provides Split View functionality as an integrated part of the operating systems on its ipad tablets and Mac line of notebook and desktop computers and is using the terms SPLIT VIEW to describe the functionality allowing the user to spilt the view on his / her screen on his / her media device into two parts such that the user can manually move and resize windows; (xiv) that Trade Marks law protects such descriptive use of a phrase and recognizes the right of public to use common words with the words carrying their normal meaning and is permitted use within the meaning of Sections 30 and 35 of the Trade Marks Act, 1999; (xv) that owing to the descriptive nature of the phrase SPLIT VIEW and its consequent ineligibility for trade mark protection, the defendant has not obtained trade mark registrations therefor and does not claim any trade mark rights with respect thereto; (xvi) that the defendant has not displayed the phrase with a TM symbol and has not included that phrase on its widely available trade mark list; (xvii) that many third parties including Microsoft, Samsung, Apache OpenOffice, Sprint LG, Bluebeam etc. have extensively used the phrase SPLIT VIEW or the term SPLITVIEW to describe their multi-windowing functionality or a programming code which enables a programmer to split the view; (xviii) that extensive use of the descriptive phrase SPLIT VIEW and term SPLITVIEW by third parties shows that the consumers will not rely on this phrase to form an association with a particular source; (xix) that the CS(COMM) 153/2016 Page 6 of 16

7 defendant s adoption and use of the phrase SPLIT VIEW is honest and predates use of the phrase SplitView by the plaintiffs; (xx) that there is no likelihood of a consumer confusing between plaintiffs standalone product and the defendant s operating system based on the defendant s limited use of the descriptive phrase SPLIT VIEW ; (xxi) that the plaintiffs have failed to cite a single instance of actual confusion; (xxii) that the balance of convenience is in favour of the defendant and the defendant will suffer irreparable injury if injunction is granted; and, (xxiii) that the plaintiffs are not entitled to relief also on the ground of inordinate and unexplained delay, laches, acquiescence and waiver having filed their suit more than ten years after the defendant s first use of the term in connection with its MAC products. 7. The plaintiffs, in their replication, have pleaded that (i) the plaintiffs trade mark SplitView is not a dictionary word but a unique combination of two English language words and is not descriptive; (ii) merely because third parties are also using the term SPLITVIEW, does not make the term descriptive; the defence of the defendant, of being the prior user and of the phrase being descriptive are contradictory; (iii) the phrase / terms SPLITVIEW was never used by the defendant in conjunction with a software programme offering multi-window functionality but was in fact used as NXSplitView and / or NSSplitView in a developer documentation manual meant for purchase by software programmers who wished to use the defendant s platform to build software products; (iv) the last release of NeXTSTEP OS was in 1995 after which the defendant acquired NeXT, Inc. in 1997 and development and release of the OS was discontinued; (v) when the plaintiffs developed their multi-window, multi-app multitasking software CS(COMM) 153/2016 Page 7 of 16

8 programme - SplitView in 2005, the NeXTSTEP OS and its APIs had already been discontinued for ten years; NSSplitView class in the Cocoa developer API and XCode development environment for OS X operating system was launched in May, 2006, ten months after the plaintiffs product SplitView was launched in August 2005 and is also meant for computer programmers building applications for the Mac OS X operating system; and, (vi) the defendant does not use SPLITVIEW in a descriptive sense and the members of the trade and consumers identify it as the defendant s mark this is evident from SPLITVIEW being written in capital letters and from the fact that the defendant has claimed trade mark rights in several other features of OS X E1 Capitan which follow immediately after SPLITVIEW. 8. Though the counsels were extensively heard as elucidated aforesaid, but have also on 18 th April, 2017 filed written submissions. Thus, instead of recording the verbal submissions made, it is deemed appropriate to record herein only the written submissions. 9. The counsel for the plaintiffs contended that the following issues require to be addressed:- a. Whether the plaintiff s trademark SplitView is descriptive and hence not capable of being monopolised by the plaintiff. b. Whether the plaintiff s trade mark SplitView cannot be said to have acquired distinctiveness due to an allegedly significant quantum of third party use. c. Whether the defendant is a prior user of the mark SPLIT VIEW through their predecessors. CS(COMM) 153/2016 Page 8 of 16

9 d. Whether the defendant is not using SPLIT VIEW as a trademark but is using it in a descriptive sense. 10. The counsel for the plaintiffs, in addition to the pleadings aforesaid, has contended (i) in Global Super Parts Vs. Blue Super Flame Industries AIR 1986 Del 245 and in Godfrey Philips India Ltd. Vs. Girnar Foods & Beverages 2005 (30) PTC 1 (SC), Super Flame and Super Cup have been held to be not descriptive; (ii) VIEW i.e. vision, cannot be split and divided and for this reason also SPLIT VIEW is not descriptive; (iii) only if there is no other means available to describe a product except by the name by which the plaintiff calls it, can the plaintiff not claim monopoly; reliance in this regard is placed on Bayer Co. V. United Drug Co 272 F 505 (DNY 1921), DuPont Cellophane Vs. Waxed Products 85 F 2d 75 (2 nd Cir. 1936) and Hami Brothers Vs. Hami & Co. AIR 1985 Bom 306; however it is not so in the present case; (iv) presence of the words SPLITVIEW in a patent specification cannot constitute the words as descriptive; (v) large volume of third party use does not result in mark becoming descriptive if the said use is not commercial / in the course of trade; reliance in this regard is placed on Andhra Perfumery Vs. Karupakula AIR 1969 Mad 126 and Mattel Vs. Jayant Agarwal (2008) 153 DLT 548; (vi) the defence of prior user of the mark is opposite to the defence of the mark being descriptive; reliance in this regard is placed on Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. (2012) 186 DLT 368 (DB) and Automatic Electric Vs. R.K. Dhawan (1999) 77 DLT 292; (vii) to qualify as prior use, use must be continuous; reliance in this regard is placed on Kamat Hotels (India) Limited Vs. Royal Orchid Hotels Limited 2011 (47) PTC 111 and Pioneer Nuts and Bolts Pvt. Ltd. Vs. Goodwill Enterprises (2009) 163 DLT 209; (viii) even a feature can have a CS(COMM) 153/2016 Page 9 of 16

10 trademark ; the defendant itself is asserting trade mark rights over several features; (ix) the difference in mode of sale / availability of plaintiffs and defendant s product is not relevant; infringement / passing off is trade channel agnostic; reliance is placed on British Sky Broadcasting Group Plc Vs. Microsoft Corporation [2013] EWHC 1826 (Ch); (x) this is a case on reverse confusion where the senior user suffers injury not because junior user seeks to profit from the goodwill associated with the senior user s mark but because public comes to assume that the senior user s products are really the junior user s or that the senior user is somehow connected to the junior user; reliance is placed on A&H Sportswear, Inc. Vs. Victoria s Secret Stores, Inc. 237 F.3d 198 (2000) and Sands, Taylor & Wood Company Vs. The Quaker Oats Company 978 F.2d 947 (7 th Cir. 1992) and on passages from McCarthy on Trade Marks & Unfair Competition 4 th Edition; (xi) though earlier the top ten search engine results pertained to the plaintiffs, a search for SPLITVIEW on the same search engine today reveals that the defendant is now the top hit and which is direct evidence of erosion of plaintiffs goodwill; (xii) balance of convenience is in favour of the proprietor of the trade mark and the economic scale of the defendant s operation cannot be a defence to passing off; reliance in this regard is placed on Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. AIR 2004 SC 3540 and on Hindustan Pencils (P) Ltd. Vs. India Stationary Products Co. Ltd. (1989) 38 DLT 54; and, (xiii) delay cannot defeat an injunction when the question of passing off is involved; reliance is placed on Laxmikant Patel Vs. Chetanbhat Shah 2002 (24) PTC 1 SC and Midas Hygience Vs. Sudhir Bhatia (2004) 3 SCC 90. CS(COMM) 153/2016 Page 10 of 16

11 11. The defendant, in its written submissions, in addition to its pleadings, has contended (i) that the plaintiffs have failed to establish goodwill and reputation in the mark SplitView ; reliance is placed on Satyam Infoway Ltd. supra; (ii) the mark of the plaintiff is descriptive and reliance in this regard is placed on Marico Ltd. Vs. Agro Tech Foods Ltd (44) PTC 736, Cadila Healthcare Ltd. Vs. Gujarat Co-operative Milk Marketing Federation Ltd (41) PTC 336 (Del) (DB); (iii) likelihood of confusion is the essence of passing off; (iv) the defendant s products prominently bear the defendant s famous trade mark Apple, the Apple mark / logo, which are clearly indicative of the origin of the products and inform consumers of the source of the products; reliance in this regard is placed on Kaviraj Pandit Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 and Star Bazaar Vs. Trent Ltd (43) PTC 154 (Del) to contend that added matter is sufficient to avoid confusion in an action for passing off; (v) the Division Bench of this Court in Intex Technologies (India) Ltd. Vs. AZ Tech (India) 2017 SCC OnLine Del 7392 has held that in order to establish reverse confusion, the plaintiff must establish goodwill and reputation in India and that the defendant being a junior user has swamped the senior user s goodwill and reputation; the plaintiffs have failed to establish either; and, (vi) A&H Sportwear, Inc. supra relied upon by the counsel for the plaintiffs on the aspect of reverse confusion also lists the factors to be established by the plaintiff in order to constitute reverse confusion and the plaintiffs herein have failed on each of the counts. 12. I have considered the controversy and after examining each of the contentions and studying the judgments cited, am unable to find the plaintiffs entitled to any interim relief for the following reasons:- CS(COMM) 153/2016 Page 11 of 16

12 A. The suit is not for enforcement of the statutory right of infringement of trade mark but for enforcement of the natural right of restraining the other from passing off of his goods / services as that of the plaintiff. The essence of passing off can also be gathered from Section 27 titled No action for infringement of unregistered trade mark, of the Trade Marks Act, Sub Section (1) thereof provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. Sub Section (2) thereof provides that nothing in the said Act shall be deemed to affect right of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. At the interim stage, this Court is thus required to protect the plaintiffs, only if finds the defendant to be passing off its goods or services as that of the plaintiffs. That is however not the case of the plaintiffs also. The plaintiffs do not claim that anyone, owing to use by the defendant of the phrase / term SPLITVIEW, whether as a trade mark of one of the features of its product or as descriptive of the said feature, will buy the product of the defendant assuming it to be that of the plaintiffs. Once that is so, in my view, in an action for passing off, the plaintiff cannot be entitled to interim injunction. B. The question, whether the plaintiffs or their trade mark otherwise suffer injury of dilution by wrongful association of the plaintiffs product with that of the defendant or by reverse CS(COMM) 153/2016 Page 12 of 16

13 confusion as aforesaid, are questions which not only cannot be adjudicated upon without trial but even otherwise, the elements of irreparable injury and balance of convenience are not satisfied to merit grant of an interim injunction on the basis thereof. C. Sands, Taylor & Wood Company supra on which reliance was placed by the counsel for the plaintiffs to urge the argument of senior user and junior user, was a case of federal trade mark infringement and not a case of passing off and at the stage of final determination and not at the stage of interim injunction. D. Similarly, A&H Sportwear, Inc. also relied upon by the counsel for the plaintiffs on the aspect of reverse confusion was a trade mark infringement case at the stage of final disposal of the suit. E. In fact, during the hearing, the thought did cross my mind that the effect if any of the association, even if made between the plaintiffs and the defendant, at least at this stage appears to be to the benefit rather than to the detriments of the plaintiffs; if at all anyone familiar with the trade mark of the plaintiffs forms an opinion that the defendant, in its product has incorporated the software under the mark SplitView of the plaintiffs, in my mind it prima facie appears that the reputation and / or goodwill of the plaintiffs would go up, rather than down. F. As distinct from Section 27(2) of the Trade Marks Act preserving the right of action against any person passing off his goods or services as that of the plaintiff, Section 29(1) defines CS(COMM) 153/2016 Page 13 of 16

14 infringement of a mark merely by use of a mark which is identical with or deceptively similar to the registered trade mark. Thus, for infringement under Section 29(1), mere use of an identical or deceptively similar mark is made actionable whether it amounts to passing off or not. It is only in Section 29(2), also constituting as infringement of a registered trade mark, use of a mark which because of identity with registered trade mark and similarity of goods or services covered by the registered trade mark is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark, that the concept of likelihood of confusion by association is introduced. Also, vide Section 29(3), a statutory presumption is raised in favour of the plaintiffs. G. Passage from McCarthy on Trade Marks and Unfair Competition relied upon by the counsel for the plaintiffs also are in the context of infringement under the statute and not in the context of passing off. 13. IA No.2885/2016 is thus dismissed. IA No.2886/2016 ( of the plaintiffs under Order XI Rule 1(4) of the CPC). 14. Pleadings in the suit have been completed and the suit is ripe for framing of issues and during the hearing no objection was taken to any of the documents. 15. The application is thus allowed and disposed of. CS(COMM) 153/2016 Page 14 of 16

15 IA No.5333/2016 (of the defendant under Section 151 CPC). 16. This application has since become infructuous and is disposed of. CS(COMM) 153/ On the pleadings of the parties, the following issues are framed:- (i) (ii) (iii) (iv) (v) (vi) Whether the defendant is passing off its goods / service as that of the plaintiffs? OPP Whether the plaintiffs cannot maintain an action for passing off owing to the phrase / term of SPLITVIEW being descriptive and therefore not qualifying as a trade mark? OPPr Whether the defendant is not using the words SPLIT VIEW as a trade mark and if so, it what effect? OPD Whether the plaintiffs trade mark SplitView cannot be said to have acquired distinctiveness due to significant quantum of use by third parties? OPD Whether the defendant and its predecessor are the prior users of the term SPLIT VIEW and if so, to what effect? OPD If all or any of the above issues are decided in favour of the plaintiffs and against the defendant, to what relief if any are the plaintiffs entitled to from the defendant? OPP. 18. No other issue arises. 19. The parties to file their list of witnesses within 15 days. 20. The plaintiffs to file affidavit by way of examination-in-chief of all their witnesses within six weeks. CS(COMM) 153/2016 Page 15 of 16

16 21. List before the Joint Registrar on 27 th August, 2018 for scheduling the dates of trial. JULY 4, 2018 pp.. RAJIV SAHAI ENDLAW, J. CS(COMM) 153/2016 Page 16 of 16