India: Intellectual Property

A registration on the Trade Marks Register is a valuable thing, and not only for the person who applied for it. A near-identical mark, registered by a stranger to the business, can obstruct the real brand owner, cloud its rights, and in some cases be used to extract a settlement. In Acko Technology and Services Pvt. Ltd. v. Chandra Mohan Mishra, the Delhi High Court removed exactly such a registration, and its reasoning is a useful guide for any owner of a distinctive mark that finds a look-alike on the Register.

For years, businesses have watched competitors surface on the search results page the instant a customer types their brand name. The technique is simple: buy the rival’s brand as a paid-search keyword, and your sponsored link appears alongside, or above, the results the customer was actually looking for. In Hindware Ltd. v. Grohe India Pvt. Ltd. and the connected matter against Omkara Infoweb, the Delhi High Court confronted the practice directly, and held that selling a registered trademark as an advertising keyword is itself an infringing use in advertising. Just as importantly, it held that the advertising platform cannot run the keyword auction, and keep the revenue, and then disclaim responsibility as a mere intermediary.

A trademark registration is meant to bring certainty. Yet in The Heritage Artifacts v. Registrar of Trade Marks, a mark that had been examined, advertised and registered was later cancelled by the very office that had granted it, on the ground that it was descriptive. The Delhi High Court set that cancellation aside. The decision speaks to two audiences at once: businesses choosing a brand that sits close to the descriptive line, and owners who find a granted registration suddenly under threat. It restates two settled principles, that the Registry must give cogent reasons before undoing its own grant, and that a composite mark must be read as a whole rather than pulled apart word by word.