May 2022

India

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1 . Trademark

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1.1. Sources of law

The principal sources of law relating to trademarks are the Trade Marks Act, 1999 (TMA) and the Trade Marks Rules 2017. Law relating to trademarks in India has also evolved through judicial decisions.

India has also been a signatory to the Madrid Protocol since 8 July 2013, which was designed to build efficiency and ease the process of application and registration of trademarks across various jurisdictions. India is also a member of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) since it came into effect on 1 January 1995.

In India, use is recognized as a source of trademark rights. In the case of a non-registered trademark, the remedy to the proprietor of the mark lies in the common law tort of passing off and this remedy has been recognized under the Trademarks Act, 1999 under Section 27(2). A prior user of a trademark can restrain even a registered proprietor of the same or deceptively similar mark (Section 34 TMA). Use, therefore, trumps registration. Moreover, ‘use’ is very broadly defined under Sections 2(2)(b), 2(2)(c) and Section 29(9) of the TMA.

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1.2. Substantive law

India does define a “well-known trademark” under Section 2(zg) as a specific category. A well known trademark “in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services”.

Section 29(4)(c) also makes reference to a ‘trademark with a reputation’ in the context of dilution.

Section 11(6) lays down certain factors which the Registrar shall take into account for determining whether the mark is well-known.

Well known trademarks and reputed marks are also mentioned in Section 11(2) as a relative ground for refusal of registration of marks.

Trademarks belonging to the “luxury industry” do not enjoy a broader range of protection. The TMA does not confer special protection on any particular industry. In practice, however, infringement in the luxury space involves counterfeiting, which courts are particularly intolerable towards.

Moreover, trademarks which have been declared as well-known by the Court or by the Registrar of Trademarks enjoy a special and enhanced degree of protection. Thus, well-known trademarks, including those belonging to the luxury industry, enjoy wide protection. A few notable examples of trademarks in the luxury industry which have been declared well-known are Cartier, Louis Vuitton and Revlon.

A trademark can be recognized as a well-known mark either by a declaration by a Judge in a court proceeding or by the Registrar of Trademarks pursuant to an application under Section 124 of the Trademark Rules, 2017 filed before the Registrar for declaring a said mark as “well-known”.

Section 30 (3) of the TMA empowers the trademark owner to overcome a defense of lawful acquisition/exhaustion by proving that there exist legitimate reasons for the proprietor to oppose further dealings in goods whose condition of sale has been changed or impaired (material alteration which courts have also interpreted as including non-physical attributes of the product such as warranties, after sale services etc). Legitimate reasons can be many and when it comes to luxury goods, the nature of these goods are such that when they are not sold in the manner in which they are usually sold, the same will qualify as a legitimate reason.

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1.3. Enforcement

In order to qualify as a well-known trademark, the following documents could be filed as evidence. Documents showing that:

  • the mark is known and recognized by the relevant section of the public (such as a consumer survey);
  • the duration, extent and geographical area of any use of that trademark;
  • the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies; or
  • a list of international registrations and successful enforcement actions on behalf of the trademark in question and any order/judgement in which the Court has held the mark to be well-known.

Testimony is given in the form of affidavits and the adverse party has the right to cross examine the deponent/witness based on his/her testimony.

Affidavits from leading editors of fashion magazines attesting to the quality of the product sold under the trademark would bolster the case for the mark to be granted broader protection after being declared a well-known mark.

Expert evidence is particularly helpful in non-traditional trademark cases to prove distinctiveness of a mark and consumer perception.

A trademark can be enforced against a domain name, trade name and its use as a metatag. In the matter of Kapil Wadhwa & Ors v Samsung Electronics Co. Ltd. & Anr. 194 (2012) DLT 23, the use of a trademark as meta-tags was held to be illegal. Section 29(5) is a specific provision relating to infringement where the mark is used as part of a trading name in relation to the same goods and services for which the mark is registered. Lastly, there have been various cases, that have discussed the possibility of enhanced confusion if a mark is used as a domain name without the proprietor’s consent due to the ease of diversion of customers on the Internet (Yahoo v Akash Arora, 78 (1999) DLT 285, Satyam Infoway Ltd. v Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145).

Trademarks can be enforced against unauthorized use in social media by way of a civil suit seeking an injunction restraining such use.

For an infringement or a passing off action, what has to be shown is ‘use in the course of trade’ and use over social media when shown to be in the course of trade and in a trademark sense, can be stopped.

The owner of a trademark can enforce rights against its unauthorized use in comparative advertising if the advertising is not in accordance with honest practices or is detrimental to the distinctive character and repute of the mark under Section 29(8) and Section 30(1) of the TMA.

Parody is not an absolute defence to infringement and passing off. The court may take into consideration various factors to be seen cumulatively to determine whether a defendant is entitled to the defence of parody. If the use of the trademark by the other party is non-commercial, and for the purposes of criticism and fair comment, such use of the trademark would not amount to infringement. (Tata Sons Limited v Greenpeace International 178(2011) DLT705).

However, there have been many cases where the defendant has crossed the line and disparaged the mark in a distasteful manner either by way of a dialogue in a film (Hamdard National Foundation & Anr. v Hussain Dalal & Ors. 2013 (55) PTC 216 (Delhi)) or on social media (Anhueser Busch LLC v Rishav Sharma & Ors., 2020 (83) PTC 21).

A trademark owner can file a single suit claiming both trademark infringement and unfair competition against an infringing party for the same set of facts. Therefore, there is no necessity for filing separate actions.

One of the current issues that luxury brands face in expanding and protecting their trademark rights is the availability of cheap replicas and counterfeit products bearing the trademarks on e-commerce sites which leads to dilution. In such situation, it often becomes difficult to identify the seller and gauge where the seller is sourcing the counterfeits from.

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2 . Copyright

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2.1. Sources of law

The main source of law relating to copyright in India is the Copyright Act, 1957 and the Copyright (Amendment) Rules 2021. Apart from these sources, law relating to copyright in India evolves from judicial decisions from the High Courts, the Supreme Court and decisions of the Intellectual Property Appellate Board (IPAB). The Copyright Board was earlier empowered to hear and decide certain disputes until 2017 when it was replaced by the IPAB.

India has also been a member of the Berne Convention since 28 April 1928 and thereafter the Universal Copyright Convention adopted in Geneva since 6 September 1952 and signatory to Rome Convention since 26 October 1961 (but not a member). India has also acceded to the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty (the internet treaties) which came into force in India on 25 December 2018. India is also a member of the TRIPS Agreement since it came into effect on 1 January 1995.

When a conflict arises the law with respect to copyright as codified by the statute takes precedence. There is no common law copyright and Section 16 of the Act embodies this principle. Therefore, copyright has to be in accordance with the provisions of the Act. The Courts adopt principles of international conventions only in certain circumstances, for example to fill in a lacuna or throw light upon the subject (Entertainment Network (India) Ltd v Super Cassette Industries Ltd. & Ors, 2008 (37) PTC 353) so long as the same is not in conflict with the municipal law of the country. Moreover, the rules are always subordinate to the Act and in case of conflict, the Act would supersede.

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2.2. Substantive law

Under Section 13(1) of the Copyright Act 1957, copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings. Literary work is further defined in Section 2(o), dramatic works is defined in Section 2 (h), musical works is defined in Section 2(p) and artistic works is defined in Section 2(c). Cinematographic film is defined in Section 2(f) and sound recording is defined under Section 2(xx). The list of copyrightable works are therefore specifically enumerated and defined.

Objects of industrial, fashion or accessory design are copyrightable, subject to Section 15(1) and (2) of the Copyright Act, 1957. Under Section 15(1), the copyright will not subsist in a design which has been registered under the Designs Act, 2000. Under Section 15(2), copyright in any design which was not registered under the Designs Act, shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright.

The following rights are covered by copyright as outlined in Section 14 of the Copyright Act, 1957:

  • The right of reproduction.
  • The right to issue copies of the work.
  • The right to perform/communicate it to the public.
  • The right to make a cinematograph film or sound recording.
  • The right to make any adaptation.
  • The right to make translations.
  • To sell or give on commercial rental (for computer programs and cinematographic films) a copy of the computer program.
  • To store the work in any medium by electronic or other means.

Moral rights are covered under Section 57 of the Copyright Act, 1957 and includes the right to claim authorship of the work and a right against destruction, mutilation or modification of the work. These rights are categorized as ‘special rights’ and are independent of the author’s copyright.

A legal entity can acquire rights in the works created by its employees under a contract. This is necessary since, in the first instance, the author of a work is considered the first owner of copyright therein.

Section 17 of the Act is a deeming provision which recognizes an employer as the first owner of copyright in the case of a contract of service for certain works. This however, can also be subject to an agreement that can overcome this deeming provision.

As regards freelance artists, suppliers and consultants, they would generally retain copyright being under a ‘contract for service’.

The requirements of a valid copyright assignment are outlined in Section 19 of the Copyright Act, 1957 and are as follows:

  • that it is in writing and signed by the assignor;
  • that it identifies the work and specifies the rights assigned, duration and territorial extent of the assignment;
  • that it specifies the amount of royalty and consideration payable to the author; and
  • that the assignment of a work shall not be contrary to the terms and conditions of the rights already assigned to a copyright society of which the author is a member.

There is limited jurisprudence on whether an author can transfer or waive their moral rights in India. However, it has been observed in Sartaj Singh Pannu v. Gurbani Media Pvt Ltd & AnR.; 220  (2015) DLT 527, that as long as the waiver is voluntary, it cannot be opposed to public policy. However, strong evidence of such voluntariness must be present.

The inherent nature of the right itself indicates that it may not be assignable and is inalienable. The right can however be exercisable by the legal heirs of the author under Section 57(2) of the Act.

The term of copyright is dependent upon the nature of the work. For literary, artistic, dramatic and musical works, copyright shall subsist during the lifetime of the author and for 60 years following the death of the author as outlined in Section 22 of the Copyright Act, 1957. For cinematographic films, recordings and government works, copyright shall subsist until 60 years from the beginning of the calendar year following the year of its publication. 

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2.3. Enforcement

Copyright registration is not required to enforce a copyright.

However, certificate of registration of copyright is often useful in that it serves as prima facie evidence of ownership in a court of law.

Industrial designs are protected in India under the Designs Act, 2000.  Copyright in any design which is capable of being registered under the Designs Act, 2000 and which has not been so registered, shall cease as soon as the article to which such design has been applied has been reproduced more than 50 times by an industrial process under Section 15(2) of the Copyright Act, 1957. Moreover, Section 52(1)(w) states that the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device will not amount to infringement.

The test of copyright infringement has been succinctly laid down in R.G. Anand v. Deluxe Films (1978) 4 SCC 118, wherein the Supreme Court held that one of the surest tests to establish copyright infringement is to determine whether or not the reader, spectator, or viewer after having seen or read both works would be of the unmistakable opinion that the alleged infringing work is a copy of the first.

Actual copying is not necessary and the courts can presume copying based on a showing of substantial similarity between the two works. This is however subject to the defence of independent creation.

The owner of a copyright can enforce their copyright against the proprietor of a trademark if any part of the trademark amounts to a reproduction of an original artistic work of the copyright holder in which copyright subsists. In fact, under Section 11(3)(b) of the TMA, a trademark shall not be registered if its use in India is liable to be prevented by virtue of the law of copyright.

As regards other categories:

  • Copyright can be enforced against a registered design.
  • Copyright can be enforced against a registered patent especially drawings in a specification.
  • Copyright cannot be enforced against a domain name or trading name or a pseudonym since courts have recognized that these categories do not merit copyright protection due to lack of originality which is a pre-requisite for copyright protection. A priori, copyright cannot be enforceable against these works.

Copyright can be enforced against its unauthorized use in social media if the substantial portion of the work has been reproduced and such use of the work does not amount to fair use or is not covered by the activities exempt from infringement under Section 52 of the Copyright Act, 1957.

Copyright can be enforced against unauthorized use in comparative advertising if a substantial portion of the protected elements of the original work have been used, subject to fair use.

Generally, parodies come under the defence of fair use under Section 52(1)(a)(ii). Courts have also held that sometimes a parody becomes a completely new work with a transformative use, and therefore would not infringe the copyright of the owner of the work.

An exhaustive list of exceptions to copyright infringement (fair dealing) is outlined in Section 52 of the Copyright Act, 1957. In addition to these, the Courts have also developed some tests to determine if a particular activity qualifies as fair dealing. These are:

  • amount and substantiality of dealing or reproduction (RG Anand v. Delux Films & Ors., AIR 1978 SC 1613);
  • extent justified by the purpose of the reproduction (The Chancellor Masters & Scholars of the University of Oxford v Rameshwari Photocopy Services, Judgment dated September 16, 2016 in CS (OS) 2439 of 2012, The High Court of Delhi); and
  • intention to derive profits from unfair competition (Kartar Singh Giani v Ladha Singh, AIR 1934 Lah 777).

Some of the grounds under which a copyright in a work can be challenged are as follows:

  • the work is not original;
  • the work covers an idea more than an expression; and
  • the term of copyright has expired or the copyright owner had formally renounced it.

The Limitation Act, 1963 prescribes a period of 3 years (Article 88) for filing a copyright infringement suit from the date of infringement. However, various judgements have held that each violation of copyright and trademarks gives rise to a recurring cause of action. Therefore, delay, if not inordinate or amounting to laches or acquiescence is not problematic.

Current issues that luxury brands face in expanding and protecting their rights in copyright include:  

  • Large scale counterfeiting activities by entities which copy the protected elements of an original artistic work.
  • Section 15(2) of the Copyright Act which has the effect of extinguishing copyright in a work if the same is registrable as a design and has been applied on an article which has been multiplied more than 50 times.
  • Infringement of copyright has many exceptions which whittles down the exclusive nature of the right.
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3 . Design

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3.1. Sources of law

In India, the Designs Act, 2000 along with the Design Rules, 2001 lay down the statutory framework of design law. The judicial decisions also have a significant impact on the development of design law.

India is a member of the TRIPS Agreement which requires its members to provide protection for design. India is also a signatory of the Paris Convention and follows the Locarno classification of goods for industrial designs.

The Designs Act, 2000 is the primary source of law supplemented by the Design Rules, 2001 and judicial decisions.

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3.2. Substantive law

According to Section 4 of the Designs Act, 2000, a product is eligible for registration, if:

  • it is new or original (it was held in the case of Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd., 2008 (37) PTC 1 (SC) that “new or original” means that the design which has been registered has not been published anywhere or it has been made known to the public);
  • it has not been disclosed by prior publication or use or in any other way;
  • it is sufficiently distinguishable from known designs or their combination; and
  • it contains no scandalous or obscene matter and is not contrary to public order or morality.

However, an unregistered design is not protected under the Indian Design law.

In order to obtain a valid registration, the following conditions must be satisfied:

  • The design should be new or original. The novelty may reside in the application of a known shape or pattern to new subject matter.
  • The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.
  • The design should be applied or applicable to any article by any industrial process.
  • The features of the design in the finished article should appeal to and are judged solely by the eye.
  • Any mode or principle of construction or operation or anything which is in substance a mere mechanical device, would not be a registrable design.
  • The design should not include any trademark or property mark or artistic works as defined under the Copyright Act, 1957.

Unregistered design rights are not protected under the Designs Act.

Unlike under the Copyright Act, there is no automatic assignment in case of Design and therefore, a design created by its employees, directors, suppliers, shareholders, consultants can be acquired by a legal entity by virtue of assignment clauses in contracts. Moreover, transmission can take place through mortgage, license or operation of law.

In order to be valid and enforceable, the assignment agreement has to be in writing and should contain all details regarding the rights being transferred and the obligation being imposed. The assignment has to be duly signed by both the parties involved.

While drafting a design assignment agreement, it is necessary to ensure that the agreement includes provisions pertaining to terms of assignment which specifies the rights and obligations of the parties, the time period for the assignment and specifies the procedure of renewal, a representation and warranties clause and a confidentiality clause in order to prevent any disclosure of information. Moreover, the geographical area to which the agreement pertains to must be provided. Since the assignment is a contract, it must satisfy the requirements of Section 10 of the Contract Act, 1872.

The Designs Act does not specifically contain any concept of moral rights, which is provided under Section 57 of the Copyright Act, 1957. Under the Designs Act, two possibilities may exist:

  • When an underlying work of art is created which is subsequently applied to an article which leads to a design right. In such a case, moral rights may co-exist with the design right.  In India, moral rights are inalienable rights and they cannot therefore be waived/transferred. (Amar Nath Sehgal v Union of India, 2005 (30) PTC 253 Del).
  • When the design is inseparable from the article, in which case, moral rights may not be created, since moral rights fall outside the scope and purview of the Designs Act.

In India, a copyright in a design is for a period of 10 years from the date of registration and can be extended to a maximum of 15 years (Section 11 of Designs Act, 2000).

Unregistered design has no statutory protection in India since a design can only be in accordance with the provisions of the Designs Act which requires registration. However, this does not preclude a party from asserting other causes of action like copyright (subject to Section 15 (2) of the Copyright Act) and passing off.

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3.3. Enforcement

Under Section 22(1) of the Designs Act, 2000, a fraudulent or obvious imitation of the design thereof, in respect of a similar article, for the purpose of sale or importation of such article, without the written consent of the registered proprietor, amounts to piracy of a registered design.

In Vega Auto Accessories (P) Ltd. vs S.K. Jain Bros. Helmet (I) Pvt, the Hon’ble Court opined that while comparing two designs, “their sameness of the features does not necessarily mean that the two designs must be identical in all points and should differ on none - they have to be substantially the same”. Therefore, actual copying is not necessary so long as there is substantial similarity.

It would appear that a design cannot be enforced against a trademark. Moreover, if the subject matter of the design has already been used as a trademark, the novelty in the design will be destroyed which would defeat any design action.

There have been various decisions including a judgement by a three-judge bench of the Delhi High Court holding that a suit for infringement of a design is not maintainable against another registered proprietor of a similar or identical design (Micolube India Ltd v Rakesh Kumar 199 (2013) DLT 740).

A design cannot be enforced against a patent. Design law is concerned with the appearance of the article to be judged solely by the eye whereas patent law strictly deals with functionality. In fact, Section 2(d) of the Designs Act excludes from the definition of ‘design’, which is in substance a mere mechanical device and any mode or principle of construction.

A design cannot be enforced against a domain name. The scope of protection of a domain name is akin to a word trademark which is entirely different in scope from what design protection confers.

A design cannot be enforced against a trade name. Trade name is a concept under trademarks. The name under which an entity conducts or carries out trade is known as the ‘trade name’. 

Other IP rights such as Geographical Indications, circuit designs, plant variety protection, traditional knowledge and trade secrets do not intersect with design law.

A design may be enforced against its unauthorized use in social media if it is published or exposed or caused to be published/exposed for sale by any person for the purposes of obtaining commercial benefit (Section 22 (1) (c), Designs Act).

Comparative advertising can never result in design infringement since there is no misappropriation of the registered design or any obvious or fraudulent imitation made which is actionable under the Designs Act. Other causes of action are available to restrain an impermissible comparative advertisement.

There is very limited jurisprudence on whether a design can be enforced against its unauthorized use in parody and it would depend on a case-to-case basis.

All grounds for cancellation of Registration of a design available under Section 19 of the Designs Act, 2000 are available as a defence in an action for infringement (Section 22 (3), Designs Act).

There is no provision for a repair clause or any other comparable limitations in India.

Acquiescence on the part of the owner may be a ground for Courts not to grant an injunction against the infringer. Acquiescence is not mere delay but involves a positive act on the part of the proprietor.

In certain cases, suppression of material facts has also resulted in injunctive relief being denied to the design proprietor.

After three years from the last act of infringement, a claim for design infringement becomes time barred. However, every act of infringement will give rise to a fresh cause of action from which limitation will start again.

As to whether a design holder can take action claiming both design infringement and copyright infringement and/or unfair competition for the same set of facts - if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, “the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached”. But once that limit is crossed, it would lose its copyright protection under the Copyright Act.

Design infringement and copyright infringement actions are distinct causes of action which can be combined in one suit.

As regards whether passing off can be claimed in a suit for design infringement, the overwhelming position is that an action for passing off will be maintainable so long as there is a clear demarcation between features of a product over which design rights are claimed and aspects and embellishments for which passing off may be asserted.

Current issues that luxury brands face in expanding and protecting their design rights are:

  • Proprietors are often faced with electing between trademark protection or design protection for certain articles involving shape of a product. If the product is used as a trademark, it may not qualify as a valid design since the use would destroy its novelty. At the same time, a design right is a strict monopoly right granted for 15 years and has fewer exceptions compared to those in trademark law. Moreover, substantial evidence of use is required to show secondary meaning in respect of unconventional trademarks like shape since these are often considered inherently non-distinctive.
  • Section 15 (2) results in extinguishing copyright if design protection is not sought at the inception (before 50 articles are made). This leaves creators/proprietors remediless since it is often difficult for them to envision how commercially successful a design may turn out to be. By not applying for design registration, they lose both copyright and design protection.
  • One of the most pressing issues faced by luxury brands in India is counterfeiting and the copying of designs to produce replicas, primarily in the apparel and auto industries.
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4 . Right of privacy, publicity and personal endorsement

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4.1. Sources of law

The law in India protects publicity and privacy rights of individuals. In cases such as Titan Industries v. Ramkumar Jewellers, 2012 (50) PTC 486 (Del) and D.M. Entertainment Pvt. Ltd v. Baby Gift House MANU/DE/2043/2010, Courts have protected the publicity rights of celebrities against commercial exploitation. The right is attributable to public figures by virtue of them having acquired a status and a personality which grants commercial value to individual persona. Privacy rights of individuals are protected irrespective of whether they are celebrities or popular figures since privacy is recognized as a fundamental right as a facet of right to life and personal liberty guaranteed under Article 21 of the Constitution of India, 1950.

There is no express provision in any present statute that protects right of publicity. The said right is protected under common law.

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4.2. Substantive law

To own a right of publicity, aside from being a living human, the individual must have attained fame and popularity among the public at large and must be a recognizable figure.

There is no specific law relating to the protection of an individual’s right to publicity after their death.

Publicity rights being property rights have monetary value attached to it. The individual may assign his/her name or other indicia for commercial gain.

The individual may grant permission to another person to use his his/her name or other indicia for commercial gain through a license (exclusive or non-exclusive).

There is no specific statutory provision governing the requirements for an agreement for the assignment/license of the right of publicity. The requirements would be the same as any assignment or license agreement which are both agreements governed under the Indian Contract Act, 1872.

Breach of any of the material terms of the contract would entitle the licensor to withdraw consent by terminating the agreement. In the context of right to publicity, this may include using the persona/image for an illegal purpose or for a purpose which was not agreed upon.  

As a property right, the right of publicity is inheritable and will legally bind the successors. As the parties to the contract change, a new agreement is signed.

Following the death of an assignor the legal representatives inherit the rights.

In the event the heirs have an independent right over the deceased individual’s name, image, likeness, or other unequivocal aspects of his/her identity there is very limited jurisprudence in this regard in India. It appears that the contract would be controlling.

If the right of publicity is transmissible mortis causa, it will not expire until such time as there is a significant commercial value attached to the publicity rights.

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4.3. Enforcement

The right of publicity can only be enforced against a commercial use of that individual’s name, image, likeness, or other unequivocal aspects of his/her identity.

It is necessary to prove that that individual’s name, image, likeness, or other unequivocal aspects of one's identity have a commercial value to obtain an injunction or other remedies for the unauthorized use.

The major challenges faced by celebrities are false endorsements and unauthorised use of persona which would lead to lowering of their image in the eyes of the public at large.

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5 . Product placement

Product placement is permitted in India. There are 2 scenarios which can be envisaged:

  • if product placement happens pursuant to a legitimate contract between the proprietor of the brand and the producer of the audio-visual film; or
  • if products bearing a trademark or copyright are shown in an audio-visual work without the proprietor’s consent

The facts of each case would have to be seen to determine whether it is actionable. There have been cases where products shown in a bad light have been blurred since the visual or aural depiction/rendition of a mark amounts to infringement without the proprietor’s consent. As regards copyright, if the artistic work is merely incidental or by way of background to the principal matters portrayed in the film, the same may not be actionable (Section 52(1)(u) of the Copyright Act).

There are restrictions placed on advertising certain products as per the Code of Advertising Practice, also known as the ASCI code.

Some of the products and services banned from advertising are:

  • Tobacco Products.
  • Alcoholic beverages.
  • Human Organs.
  • Infant milk food.
  • Prize chits and money circulation schemes.
  • Prenatal determination of sex.
  • Physicians.
  • Legal Services.

In the event the other party fails to perform the agreement the brand owner can file a suit for specific performance of a contract. Moreover, injunctive relief can also be sought seeking removal/blurring of the infringing content from the audio visual work in addition to claiming damages.

Challenges faced by luxury brands include the following:

  • There are instances when certain well-known brands have been shown in a disparaging manner in films/advertisements (for example, the G4S case, where a premier security guard service was shown in bad light, ICICI Bank Ltd. v Ashok Thakeria & Ors., 2014 (58) PTC 258 (Delhi)).
  • Even if not shown in a disparaging manner, certain brands, due to their exclusivity, may not like to be associated with certain works of art.
  • To be actionable, the use must be tarnishing or likely to cause confusion as to the source of the goods/services. This may prove to be difficult since a film is considered an artistic work and does not easily fit as a competitor to the brand.
  • Each case would therefore depend upon its own unique facts.
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6 . Protection of corporate image and reputation

The laws regarding right of publicity and/or privacy do not extend to legal entities/corporations, these rights are only applicable to natural persons.

Specific clauses can be incorporated into agreements for the protection of corporate image as long as they are not in violation of any statutory laws.

Such clauses may be included through contract so long as they are in compliance with existing laws (for instance price ceiling legislations). Liquidated damages are generally permitted and may be included through contract for protection against breach. To avoid unenforceability, parties must be able show actual loss suffered. Any prohibition which is anti-competitive may invite action under the Competition Act, 2002. Some IP statutes such as the Patents Act, 1970 (Section 140) and the Designs Act, 2000 (Section 42) also have provisions prohibiting such restrictive clauses.

Some of the challenges faced by luxury brands in the secondary market are as follows:

  • In the absence of contract and due to the operation of doctrine of exhaustion, a brand owner may have limited control on the downstream distribution of his products which may raise various concerns such as diluting the exclusivity of the brand.
  • The price of the original product may be affected by resellers offering the product to consumers.
  • Under Section 30(2)(d) TMA, if a mark is used by a person in respect of goods forming part of, or as an accessory to, other goods for which the trademark has been used, there will be no infringement where the use of the mark is reasonably necessary to indicate that the goods are so adapted.

EXPERT ANALYSIS

Foreword

Nicolas Martin
Sheila Henderson

Chapters

Belgium

Moana Colaneri

Brazil

Luiz Edgard Montaury Pimenta
Marianna Furtado de Mendonça

China

Rebecca LIU
Yunze LIAN

Cyprus

George Tashev
Ioanna Martidi
Maria Hinni
Nasos Kafantaris

Czechia

Michael Feuerstein
Michal Havlík

France

Sophie Marc

Germany

Dr Wiebke Baars

Italy

Fabrizio Jacobacci

Japan

Koichi Nakatani

Netherlands

Herwin Roerdink
Nadine Reijnders - Wiersma
Tjeerd Overdijk

South Korea

Dae Hyun Seo
Won Joong Kim

Spain

Carolina Montero
Eleonora Carrillo
Fernando Ortega
Ignacio Temiño
Rubén Canales

Taiwan

Crystal J Chen
Nick J.C. Lan

Turkey

Özlem Futman
Yasemin Aktas

United Kingdom

Rosie Burbidge

United States

Alan Behr
Tod M. Melgar
Yann Rim