David beats Goliath


Trademark ruling makes international brand owners tremble

Few people would describe the name Prius as anything other than the marque of Toyota’s iconic hybrid car. Even so, there was not much reaction from the press when the Supreme Court recently denied the Japanese car maker rights to the name in India, ruling instead in favour of a small auto parts manufacturer that trademarked it in 2002 and has used it ever since. The court said Toyota had not been able to prove that the brand name of its car was well established in India, and it was not enough to merely say that it was.

This ruling sets the bar high for international brand owners and no doubt sends shivers down their spines. Brand names and reputations seep across borders, but restraining those who piggyback on the hard work of others can be a challenge. The intellectual property (IP) rights regime could be faulted on several counts, but in ruling that Toyota did not have a strong enough claim to the name Prius, the court appears to have reinstated some rigour into the system of protecting rights in India. Is it too much to ask that rights holders who seek to restrain infringers provide precise proof of their claims and the incurred damage?

This month’s Cover story provides strategies to protect trademarks in India, both inside and outside the country’s courts. It is addressed to rights owners, many of whom will be in Seattle to attend the 140th annual meeting of the International Trademark Association (INTA). India Business Law Journal will be there too, and this issue will be widely circulated among delegates.

The Prius case signals once again that protection of marks in India requires caution and an effective strategy. As we detail, the courts are making a concerted effort to ensure speedy disposal of IP rights cases. In addition, most lawyers agree that trademark battles can be settled outside the courtroom. At Cyril Amarchand Mangaldas, Ranjan Negi advises “simply approaching the misuser and persuading them to settle the matter and give up the misuse”.

The Trade Marks Act provides protection to a wide range of marks that have acquired distinctiveness. In 2017, this included the Taj Mahal Palace hotel in Mumbai, which became the first private building to register under the act. But rigour and vigilance are vital to obtain any real protection.

In Safeguarding secrets we turn the spotlight on disgruntled former employees who divulge confidential information to competitors or others. What can be done to restrain them? Confidentiality agreements can prove useful, but what is to be included in such agreements? There is as yet no separate legislation for the protection of confidential information and trade secrets. And the courts have consistently refused to enforce post-termination non-compete clauses in employment contracts. As such, the process of safeguarding secrets should ideally begin long before a breach, or even before a threat arises.

In Tech savvy we highlight software for legal process management that is becoming indispensable for in-house legal teams. There are tools available to help with everything from document retention to IP portfolio management. Yet, the success of any system depends on efficient real-time data entry and updating of information.

This month’s Vantage Point provides an exclusive interview with the top lawyer of the United Nations, Miguel de Serpa Soares. As under-secretary-general for legal affairs and legal counsel, he is the person Secretary-General António Guterres turns to before sending in the peacekeepers, constructing a complex multilateral treaty or negotiating any international issue that requires legal gravitas. In this interview, Serpa Soares speaks about his legal team and the crucial work being done in Asia and further afield in the areas of human rights, free trade, and economic development.

What’s the deal? details steps that led to the merger of two companies in the direct-to-home broadcast sector: Dish TV, a Bombay Stock Exchange-listed company; and Videocon d2h, which was listed on the Nasdaq at the time. They were competitors, and the long-drawn-out merger was held up briefly towards the end of the process on account of dark clouds looming over one of the parties. Our coverage details the regulatory approvals required in such a case and also names the legal advisers who worked behind the scenes to ensure success.

Our Intelligence report analyses the prospects for law firms in Hyderabad, which is currently the capital of the newly formed state of Telangana, and of Andhra Pradesh. The city is a hive of activity with both states competing to roll out investor-friendly policies. Yet, it appears national law firms are wary of opening offices in the city, and those that have offices maintain a skeletal presence, often due to an inability to hire suitable lawyers. Home-grown law firms recognize the need for lawyers who are from the city and can win the trust of clients. National law firms that operate what can sometimes be post-office operations may struggle in this growing market for the foreseeable future.