The Division Bench of the Delhi High Court has recently vacated the ex-parte ad-interim injunction order dated March 01, 2016 granted to the original plaintiffs by the learned Single Judge in Rohit Singh and Anr. v. Apple Inc [CS (COMM) 153/2016]. The Division Bench found that on the existing material before the learned Single Judge, case was not made out to grant ex parte ad interim injunction because an ex-parte ad-interim injunction in a matter concerning trademark violation should ensue only if a very strong prima-facie case is made out with respect to a trademark which is inherently distinctive.
The Single Judge of the Delhi High Court vide order dated March 1, 2016 had directed the US technology major, Apple Inc, not to use the name 'SplitView' in any of its products or services such as iPad, iPhone, iOS, etc. after a little known Delhi-based software company Vyooh Low Level Computing LLP (hereinafter refered to as 'Vyooh') moved court, alleging trademark violation by Apple.
The suit for passing off was filed by a software developer Mr. Rohit Singh, who claims to work as a consultant with Vyooh, which owns the trademark for the name 'SplitView'. The suit had been filed jointly by Mr. Rohit Singh and Vyooh claiming that he had developed the software in 2005, which is meant for multitasking on a single display.
Apple is using the term "Split View" in both iOS 9 and OS X El Capitan, referring to a feature that lets people run two apps side-by-side in a full screen mode. The iOS 9 option only works on recently launched iPads, like the iPad Air 2 and the iPad Pro.
While deciding the application by the Plaintiffs for grant of ex-parte ad interim injunction against Apple, the learned Single Judge had observed that the plaintiffs had a prima facie case, availability of balance of convenience in their favor, and might suffering an irreparable injury in the absence of grant of injunction.
Thus, the Single Judge granted the injunction to the plaintiffs, restraining Apple from using the trademark Split View till final disposal of suit. Aggrieved by the aforesaid decision, Apple filed an appeal before the Division bench of the Delhi High Court, seeking vacation of the aforesaid order dated March 01, 2016.
Contentions by Apple Inc. (Appellants)
- That SplitView/ Split View is a descriptive term and cannot assume trademark significance. On this basis, Apple argued that Mr. Rohit Singh cannot claim proprietorship over the mark, let alone seek to restrain third parties from using it. Apple has used the descriptiveness argument, both to challenge the respondents' entitlement over SplitView as a trade mark and also as a form of defense to justify its use of Split View.
- That Apple is in fact a prior user of the word SplitView since 1993 through their predecessor in use NeXT Inc.
- If there are various methods to describe an essential feature and in particular concerning the functionality of a product, any one or more may be used and it is no argument that there are other words to describe the feature.
- Apple is selling the operating system OS X El Capitan and iOS which would be akin to a combo offer to purchase a basket having an integrated package comprising various elements and assuming each element is treated as a product, individually none is being sold and respondents' product is sold individually and this distinction would be akin to a situation where Apple has added matters.
Contentions by Mr. Rohit Singh & Vyooh (Respondents)
- Apple uses Split View as the name for the product feature – it appears as a stand-alone heading as the name and is not used as part of a sentence that merely demonstrates its functionality.
- Split View is written in capital letter which is indicative of trademark use and not descriptive use.
- Several other 'features' of the El Capitan Operating System i.e. Spotlight and Mission Control, which appear immediately after SplitView are all terms or words over which Apple has claimed trademark rights.
- For an ordinary consumer, there is no discernible difference between the manner in which Apple presents the Split View feature and the manner in which it presents the Spotlight or Mission Control feature, hence, there is no reason to assume that the ordinary consumer will perceive that Split View is being used in a descriptive sense by Apple and Spotlight or Mission Control are being used in a trademark sense.
- Apple has claimed trademark rights over several seemingly descriptive or suggestive words in the past and Split View, from the perspective of consumers is no different. It is in fact a common practice in the technology space to do so. Thus, Apple has claimed trademark rights over AirPrint, CarPlay, Cinema Tools, DVD@CCESS, DVD Studio Pro, FileVault, Final Cut, LaserWriter, LocalTlak, NetInfo, PhotoBooth, QuickDraw, App Store and to an ordinary consumer Split View is no different from this body of trademarks.
Observation/Decision of the Court
- The Division Bench of the Delhi High Court, found that SplitView was in fact never used in conjunction with a monitor splitting or screen splitting functionality offered by a software product/application (app) and was in fact called NXSplitView/NSSplitView in certain developer toolkits to describe a certain functionality that was to be used by app developers. Further, SplitView or even NXSplitView is not in the list of trademarks owned by NeXT Inc. The test to determine priority in a mark is to determine continuous prior use and the volume of sales or the degree of public familiarity with the mark. Undisputedly, OS X El Capitan was launched only in 2015.
- That prima facie, Apple's product is doing the same thing as the respondents' i.e. split the window on the monitor so that two applications can be seen while being simultaneously operated.
- The respondents' use of SplitView for their software product clearly dates back to the year 2005.
- That it is prima facie evident that SplitView comprises two words, joined together in one unique collocation. The combination has prima facie to be considered unique, although the words individually may not be so. The Court after referring to Patent Applications filed before the European and United States Patent Offices observed that the contention made by Apple that people in the field of computer software programming use the words Split View to describe an essential feature of the function of the software programme is viable. There is a lot of conflicting material where consumers with imperfect recollection associate the words Split View as a trademark for the split screen feature and some associate the words as descriptive of an essential feature of a system where visually the computer screen shows two windows displaying two different contents.
In view of the above, the Division Bench of the Delhi High Court vide it's order dated April 7, 2016, held that a strong prima facie case was not made out for grant of an ex-parte ad-interim injunction against Apple Inc, and thus vacated the injunction order dated March 1, 2016 of the Single Judge. The Court further observed that it requires a strong consideration whether 'SplitView' is descriptive of an essential feature of the computer programme, thereby rendering it not eligible to be a trade mark as some consumers may refer to Split View as a trademark for the split screen feature and some associate the words as descriptive of an essential feature of a system. Apple has now been directed to file its written statement of defense along with documents relied upon by April 21, 2016. The Division Bench directed the parties to complete the pleadings within the stipulated time frame of five weeks and the learned Single Judge to hear the injunction application on May 9, 2016 and pronounce judgment before June 4, 2016.
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