Monday, October 24, 2011

Section 66A of the Information Technology Act: “Sending” Messages

I was reading Section 66A of the Information Technology Act a few days ago because it appears there is some confusion surrounding its interpretation. The provision reads as follows:

66A.Punishment for sending offensive messages through communication service, etc.: Any person who sends, by means of a computer resource or a communication device,-
(a) any information that is grossly offensive or has menacing character; or
(b) any information which he knows to be false, but for the purpose of causing annoyance, inconvenience, danger, obstruction, insult, injury, criminal intimidation, enmity, hatred or ill will, persistently by making use of such computer resource or a communication device,
(c) any electronic mail or electronic mail message for the purpose of causing annoyance or inconvenience or to deceive or to mislead the addressee or recipient about the origin of such messages, shall be punishable with imprisonment for a term which may extend to three years and with fine.
'Explanation.- For the purpose of this Section, terms "electronic mail" and "electronic mail message" means a message or information created or transmitted or received on a computer, computer system, computer resource or communication device including attachments in text, images, audio, video and any other electronic record, which may be transmitted with the message.
The issue is whether the provision applies to publication of defamatory or prohibited content on websites. I am inclined to say no for the following reasons:
1. I do not think publishing information on a website/portal falls within the definition of "sending". According to me, the provision's use of the word "send" along with "communications device" leaves very little room to include "publication".

2. It must be borne that although publication results in communication, there is no attempt on the part of the legislature to include publication within the meaning of "sending". 

3. Legislations are expected and presumed to be consistent in their use of terms. When the Act uses "publication" in one sense in select provisions (Section 67), but does not use "publication" in Section 66A, it means it does not intend to include mere publication by posting. In other words, although "sending" may result in publication, all publication cannot be equated to sending.

4. "Send" envisages a specific recipient(s). Also the provision refers to transmission and addressee/recipient of the message. This means the nature of the transmission is communicatory.

5. Also, it would be a stretch to argue that "communication/send" includes communication between the person who publishes the information and the system on which the information is published. That would amount to hair-splitting.

6. Further, even when the provision refers to use of computer resource, the legislature still makes no room for "publication" using the computer resource on a website. 

7. The limited circumstance when publication on website would amount to "send" is when information published on the portal is "sent" and "received" by subscribers of the site/blog/social networking site. Simply put, we'll have to distinguish between publication simpliciter on a website/an update on Twitter or Facebook and a message which is communicated.

8. Not just that, there's a reason why the IT Act or Section 66A does not provide for defamation by publication on a site. Section 499 of the IPC is broad enough to apply to defamation using any medium, therefore one does not need any provision under the IT Act for it. This applies to obscenity and the like offences as well.

9. Consequently, since the IPC already provides an offence for the end product of the communication i.e. defamation, my take is that Section 66A forbids use of the medium recognized under the IT Act as a medium for defamation. Specifically, it forbids use of the medium as a "conduit" for sending offensive messages. We must distinguish between a "conduit" and a "place/cyberspace". Section 66A alludes to the use of information technology as a channel of communication, as opposed to a space for publication.

10. The equivalent provision in the “real world” is Section 20 of the Indian Post Office Act, 1898, which reads as follows:

20. Transmission by post of anything indecent, etc., prohibited.—No person shall send by post--
(a) any indecent or obscene printing, painting, photograph, lithograph, engraving, book or card, or any other indecent or obscene article, or
(b) any postal article having thereon, or on the cover thereof, any words, marks or designs of an indecent, obscene, seditious, scurrilous, threatening or grossly offensive character.

The emphasis in the Post Office Act is on "transmission by post" of anything forbidden. Therefore, it follows that even Section 66A, which is the “e-equivalent” of Section 20 of the Post Office Act, also frowns upon use of the medium as a "communication medium", and not as a means of "simple publication".

Comments and opinions are welcome! 

Wednesday, October 19, 2011

Patenting in Life Sciences in the EU

Yesterday, a discussion meeting on patenting in life sciences in the EU was held at Hotel Claridges in New Delhi by Ms.Sunita Sreedharan’s SKS Associates and a Swiss firm, Katzarov SA. 

The discussion, which I took part in, turned out to be extremely lively and fruitful thanks to active participation by members of the discussion group, which included researchers in the field of life sciences, entrepreneurs from the field, patent practitioners and representatives from policy think-tanks.

Several key issues were discussed and doubts were thought aloud for opinions and clarifications from participants. I’ll discuss a few of them in this post which relate to European patent practice.

The representative of the European firm Mr. Andrea Manola informed us that therapeutic methods were excluded from patentability under the EPC. The rationale behind this, according to him, was the “no human contact” thumb rule of the EPO. In other words, if the method of treatment involves human contact, it must be presumed to be “industrially inapplicable”, and is hence out of the ambit of patentability.

However, if the treatment is cosmetic in nature, the active ingredient in the cosmetic would be patentable. To this, my doubt was if there was an incidental therapeutic effect to the cosmetic treatment, would it still be excluded from patentability? The EU agent said this would differ from case to case.

The thumb rule appears to be that if the therapeutic and cosmetic effects are not separable/distinguishable, the method is unpatentable. If they are distinctly identifiable and separable, the cosmetic effect alone can be patented.

The question which I put was, does grant of a patent for cosmetic treatment mean that use of the chemical for therapeutic purposes by a third party in the future does not infringe the patent? The answer to this question appears fairly straight-forward. Since therapeutic methods are not protectable at all in the first place, there is no infringement if the method/ingredient is put to therapeutic use.

On filing of divisional applications under the new rules, he informed us that for a divisional application to be filed before the EPO, the parent application must be pending and the divisional must be filed within 24 months of the first communication from the examining division of the EPO for the parent application.

My doubt was if a second divisional is detected by the EPO itself in the parent application during the pendency of the first divisional, but after the 24-month period, can the EPO direct filing of the second divisional? The European agent answered in the negative.

I asked the same question with respect to another situation- it is possible that a divisional may be detected in the first divisional application. This means, technically speaking, the new divisional is not detected in the parent application, but is carved out of the first divisional application. To this too, the EU agent said the 24 month period would be calculated from the parent application i.e. the earliest of applications.

This translates to additional burden on the inventor and the drafter to clearly understand the inventive step and identify the embodiments sought to be claimed in the parent application.

On filing of clinical/supportive data for pharma patents after the filing of the patent application, we were told that data filed after the priority date cannot receive the benefit of the priority date since the requirement of sufficient disclosure is to be satisfied as of the priority date, and not after that. This rule is not different from the one followed by the Indian Patent Office.

Besides these nitty-gritties, we were told that EPC does not contain provisions on infringement of patents, and that infringement is covered by national laws. To my surprise, I was told that France and Switzerland do not examine for inventive step. Further, if an EP patent is granted and a patent is granted on the same invention by France, the French patent is put in abeyance if the grant of the EP patent is challenged at the EPO.

This means if an infringement proceeding is filed by a French patentee in France, and if the defendant files for revocation of the EP patent on the same invention before the EPO, then until the conclusion of the revocation proceedings before the EPO, the French patent goes into abeyance, which effectively puts pause to the infringement proceedings in the French court.

In all, the discussion meeting was very insightful and a refreshing change from the usual conferences where interactions are exceptions and monologues are the norm.

Patents and Competition: "Arrangements"

Two days ago, I was at a moot court competition conducted by HNLU, Raipur to judge the penultimate rounds. The moot problem was an interesting one, for it presented a factual matrix that called for combined application of patent law and competition law. 

This is the second moot problem this year based on patents and competition law, the first was the problem statement of the moot conducted by NLU Jodhpur.

Student events like these turn out to be better platforms to address legal issues in a much more rigorous fashion than most conferences and presentations. One of the mooting issues was the interpretation of “arrangement” under the Competition Act, 2002 in a given situation.

In the moot problem, the situation was as follows:
1. X sells its patented drug P in Northern India. Another company Y’s subsidiary Z sells a similar drug in Southern India
2. X holds 10% share in Y and Y has a patent in Europe on its drug which is considered the closest prior art to X's patented drug P
3. X initially sold the drug P at INR 2.65 lakhs per month’s course, Z sold it at INR 2.62 lakhs per month’s course.
4. Thanks to a generic competitor, G’s low pricing tactics, Z is forced to cut down its price to INR 1.5 lakhs per month’s course. X too follows suit and brings down the price to INR 1.7 lakhs

Is there an arrangement between X and Y/Z? It’s possible to argue that since Y’s European patent came closest in terms of prior art to P, and yet Y chose not to challenge X’s patent on P, there appears to be a semblance of collusion between the two.

This combined with the fact that both X and Y/Z chose to divide the market among themselves without encroaching upon the other’s “territory” could further support the inference. And finally, the shareholding pattern of X along with “conscious parallelism” could lead a neutral observer could conclude that the whole thing smells fishy.

What this means is, one can call an arrangement an arrangement so long as the dots can be reasonably connected, even in the absence of a formal agreement or an overtly express behaviour between the parties.

Such reasonable connection of dots ought to give rise to a rebuttable presumption of anti-competitive behaviour since Competition law has a welfarist slant, since one of its objectives is to protect the customer from being taken for a ride.

This is different from stating that the Competition Act protects the consumer’s interest, since that would turn the Competition Commission into a Consumer Forum, which it is not. Stated otherwise, no player is expected to drive himself to sure extinction to extend a benefit to the consumer. Not just that, no player can push another player to extinction in the name of extending a benefit to the consumer.

I’ll discuss a few more issues concerning patents and competition in the coming posts. 

Tuesday, October 18, 2011

Does the TM Act need an amendment vis-a-vis GIs?

Certification marks per S. 2(c) of the Trade Marks Act, 1999, extensively defines its ambit to include a variety of goods and services that satisfy the standards set by the proprietor of the certification mark.

The legislation on Geographical Indications, namely The Geographical Indications of Goods {Registration and Protection} Act, (hereinafter the GI Act), to me, seems to be a branch out of the rationale behind certification marks, albeit to a niche segment of goods.

To put it somewhat crudely, the definition of “goods” that are protectable under the Act as a GI, appears to be a subset of the subject matter of certification marks. The provisions dealing in certification trademarks and the definition section of the GI Act, clarify that the scope of the certification trademark is broader than that of the GI Act, the latter focusing on agricultural goods, handicrafts and so on. However, the Trade Marks Act has not been amended to expressly exclude GIs, registered under the GI Act.

In fact, it is interesting to observe that the two Acts appear somewhat similar in nature. The most pertinent similarity, and in my opinion rightly so, is that the absolute grounds of refusal under S. 12(2) Trade Marks Act, 1999 are reiterated nearly verbatim, under S. 9 of the GI Act.

The overlap between the legislations, tends to create some unrest. If one were to consider the example of Darjeeling tea, which was earlier registered as a certification trademark, and was later registered as India’s first GI, the need for an express amendment appears somewhat clear.

The dispute on the international platform regarding the use of Darjeeling tea as a trademark received much attention, especially since jurisdictions including the United States grant registration to certification marks, but do not have an exclusive legislation governing the protection of GIs. However, little has been said about the overlap in the Indian trademark and GI legislation.

Needless to say, the Trade Marks Act, has in place a well instituted system of opposition. Further, the Act also under S. 25 allows the removal of trademarks, albeit having no mention of improper subject matter being registered.

While the grounds for relative grounds of refusal of a trademark under S. 11(3) disallows in general , registration of anything as a trademark that is liable to be prevented by virtue of any law, in particular the law of passing off and the law of copyright, the provision seems to have no mention of the law on Geographical Indications in particular.

To me, this appears rather strange, since the law on trademarks and GIs seem to be more closely related to trade and commerce, than most.

If one were to attack the jurisprudential roots, the law on GIs appears to bear roots in the pre-seventeenth Roman society and the right of commons. A Roman Cive had several rights, and these rights were vested in him, not as an individual but as pater familias or head of the family. The individual enjoyed rights because it was believed that only thus could the general ends of the community be realized. He had no claim in the rights and did not enjoy right as a matter of right but was conferred in him to attain the community’ common purpose. These rights were restrictive in nature, restricted in depth and scope.

Drawing an analogy to the concept of Geographical Indications as practiced and administered, the right in an “authorized user” seems to stem out of the fact that he is a member of a community producing a craft, textile, agricultural product or any other object qualifying as the subject matter of registration. 

The right to use the GI tag is vested upon him by the Endowment Board, association or any other body that acts on his behalf as the registrant and the authorized user, as a consequence of being so, enjoys the right to further the common cause of the community viz. Commercial exploitation of the product through the use of the GI tag. In this regard, he does not enjoy the right as a matter of right, but as a member of the community with due restrictions placed upon his scope of use of the same.

Compared to this view, trademarks and other IP seem to confine to the concept of property as evolved with the “Theory of individuation” whereby the individual is demarcated as the bearer of the right.

This difference to my eyes is clarified all the more, because of the manner in which the Statement of Objects of the Acts are framed and hence an amendment seeking the express exclusion of GIs even more necessitated.

Sunday, October 9, 2011

Representing oneself as No.1- Unfair trade Practice or not?

As my tryst with the much loved world of audio-visual communication world continues, there is a thought that resonates every once in a while- The world of advertising and trademarks share a symbiotic sort of relationship, feeding on each other - While advertising facilitates the use of trademarks, it is the viable and undefied use in the course of trade and marketing that urges the registration of marks.

To me this seems like a vicious cycle, which shall only expand with the world of communication and electronics.

I recently saw an advertisement, claiming its product to be No.1. Obviously, the product wasn’t a leader in its segment, yet the confidence in the eyes of its models was worth appreciation. Not to blame them, they were playing their part, and in a commendable fashion.

As this stuck in my head, I skimmed through the Trademarks Act, 1999 to see if there was any recourse to such a representation. The Trade Marks Act, under S. 2 (1)(i) describes false trade description as:

“(I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied, or…”

From a further reading of the Act,S. 2(1) (za) defines “trade description means any description, statement or other indication, direct or indirect,-…
… (ii) as to the standard of quality of any goods or services according to a classification commonly used or recognised in the trade; or…”

What I am unable to comprehend is, whether the representation of a brand or product as something as staunch as No. 1, without being backed by proper statistical verification by a government body, is in fact “material” or not?

Further on, the Consumer Protection Act of 1986 defines unfair trade practice as
(q)“unfair trade practice" means a trade practice which, for the purpose of promoting the sale, use or supply of any goods or for the provision of any service, adopts any unfair method or unfair or deceptive practice including any of the following practices, namely;—
(1)the practice of making any statement, whether orally or in writing or by visible representation which,—
(i)falsely represents that the goods are of a particular standard, quality, quantity, grade, composition, style or model;…

However, in the light of the fact that one is allowed to puff and use superlatives to describe one’s products, does expressing oneself as No.1 really attract a cause of action?

I am not sure. While there are multiple facets on which a brand may “consider” itself as the leader, the fact is that such representation, without proper corroboration as to the source, aspect etc., to my mind is indeed misleading. In fact to my eyes, this does not qualify as puffing or even misleading, but in fact can be termed as literal falsehood.

Another facet that seems interesting to me is that while unfair trade practices are barred by legislation, the Act is carefully worded to use the phrase “promoting the sale, use or supply of any goods or for the provision of any service”. Obviously, advertising does fall in this ambit, although not having been expressly included.

This makes me eager to find out, if in fact, any action for such representation has been taken, or has scope to face issues in court. Would Courts consider a proposition similar to that of comparative advertising cases? My guess would be not, since the question of disparagement of another may be absent, at least in a direct fashion. To me, the Courts should consider flagarant misrepresentation as an unfair trade practice.

While my research on case law is pending, a cursory view of the Trademarks Act, 1999 brings to notice Chapter XII which deals in penalties for false trade descriptions. Section 103 under the same imposes penalties for “applying false trademarks, trade descriptions, etc.”. The provision talks about false application, but there seems to be no false representation of the quality, status etc. of a mark.

However, a flip side to such an argument would be that rankings and claims so being made, is also a manner of self-appreciation! To my mind, however, the use of rankings should be differentiated from the use superlatives to describe oneself, sheerly to give consumers the opportunity to statistically verify the claim.

As I say this, the irony is that hardly ever do the large brand owners portray themselves as No.1. Perhaps, they never need to.

That having been said, would a large brand owner move against a smaller player for such a representation, or would they consider such a move a wasteful exercise? Would it be more fruitful to invest the time and money in more aggressive marketing, especially when there is no direct reference or disparagement of the product?

This I guess is an answer for marketing strategists to consider.. Perhaps, we will hear from one of you here..

Saturday, October 8, 2011

Stale News: Australia Moots Plain Packaging of Tobacco Products

Most Indians remember the brouhaha over the former Health Minister, Mr.Anbumani Ramadoss’s repeated warnings to celebrities against smoking on screen, and the promulgation of Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act-2003, which banned, at least on paper, smoking in public places.

Now Australia has taken a few measures to reduce smoking rates, by proposing a law on watering down the packaging of tobacco products. The proposed legislation is called Tobacco Plain Packaging Bill, 2011, and a consultation paper on the bill is available here.

The stated objectives of this legislation are:
(a) to improve public health by:
(i) discouraging people from taking up smoking, or using tobacco products; and
(ii) encouraging people to give up smoking, and to stop using tobacco products; and
(iii) discouraging people who have given up smoking, or who have stopped using tobacco products, from relapsing; and
(iv) reducing people’s exposure to smoke from tobacco products; and
(b) to give effect to certain obligations that Australia has as a party to the Convention on Tobacco Control.

To this end, the legislation intends to regulate the packaging and appearance of tobacco products in order to:
(a) reduce the appeal of tobacco products to consumers; and
(b) increase the effectiveness of health warnings on the packaging of tobacco products; and
(c) reduce the ability of the packaging of tobacco products to mislead consumers about the harmful effects of smoking.

The goals of this proposed law are certainly laudable, and there’s no two ways about it. But, the question is, will this law run afoul of TRIPS by denying manufacturers of tobacco products the right to distinguish themselves from their competitors? Would this law amount to a technical barrier to trade? Is there no other way of tackling the tobacco menace other than by depriving manufacturers of the right to attract eyeballs?

Some of these questions seem to have been raised by the Dominican Republic in its objections to the proposed law. Further, the Dominican Republic has said that introduction of plain packaging might lead to predatory pricing, thereby facilitating greater tobacco consumption, besides making counterfeiting easier.

Australia, on the other hand, seems to have fallen back on the “public health” argument to justify these proposed measures. It said that plain packaging and the potential for counterfeiting may make it imperative for manufacturers to introduce anti-counterfeiting labelling, which would make cigarettes expensive, and hence bring down smoking rates.

Among the nations which have supported Australia’s stance are India, Brazil and Cuba, which have taken the view that countries have a right to take a decision in the interest of public health without IP becoming a stumbling block. This view draws support from the 2001 Doha Declaration on TRIPS and Public Health.

This issue promises to turn out to be an interesting one. We’ll certainly keep our eyes and ears peeled to developments on this front.

Friday, October 7, 2011

Steve Jobs: What Did He Mean for Innovation?

I don’t intend to ask what did innovation mean for Steve Jobs, I am interested in understanding what does a colossus like Steve Jobs mean for innovation. Whether ideas maketh a man or vice-versa is a never-ending squabble, but for the average joe like me, a man who lives and breathes his ideas helps make the idea look less abstract, hence more doable. (A simile which I can think of, is the difference between idol worship and devotion to a formless universal soul)

I read this short insightful piece on Steve Jobs by Ajit Balakrishnan (founder of published last month in the Business Standard, where he compared Jobs to stalwart filmmakers like Ingrid Bergman and Alfred Hitchcock. He called Jobs the “auteur CEO”, who “lifted the modern firm out of the Industrial Age and brought it into the Information Age.

Let’s bear in mind that Jobs was not the stereotypical unsuccessful rebel innovator who failed trying to change the “system”. By most counts, Jobs was an extremely successful entrepreneur, which words typically are expected to conjure images of someone who is concerned solely about the rewards waiting at the end of the quarterly rainbow.

In complete contrast to this Orwellian image, despite being at the helm of a multinational, Jobs was and is seen by his peers and millions of tech aficionados as essentially the maverick innovator. I don’t think this was a carefully cultivated image, because masks have a tendency to come off at some point or the other, considering the media glare these days. This means for the most part, the man was true to his reputation.

Why is his success as an entrepreneurial innovator peculiar? I think the answer lies in the fact that most organizations which start off with that idealistic innovative spark inevitably lose that spark as they grow, because there comes a point where growth and shareholder value prevail over that spirit of idealism.

In contrast, Apple reflects Jobs’ obsession with fundamentals- innovative products, products which force the market to put on its thinking hat more than it is used to, certainly more than it wants to, but actually as often as it ought to.

For Jobs, the size of the company did not have a bearing on its innovative capabilities so long as it had its heart in the right place, which means the one in whose hands the reins are, must himself believe in innovation as THE driver, and not just one of the drivers of change. This challenges the oft-spouted wisdom that innovation is essentially a virtue peculiar to SMEs.  

That an entire industry was forced to play catch-up with one man’s vision and zeal is truly an amazing feat, and that he did this day in and day out with such incredible consistency, speaks volumes of the man. What is also relevant is that Jobs’ life is irrefutable proof of the fact that success in the conventional sense need not come with adherence to market conventions. 

In fact, this “verity” has been turned on its head thanks to Jobs, because his life also proves that success achieved through conventional means, in most cases, too is conventional, and hence not out of the ordinary.

“Innovation” has truly benefited from Jobs because he is now a realistic icon for young impressionable minds in T-schools (technology schools) who are tempted to opt for the easy cushy “consulting” careers, and who slowly relegate their engineering skills to the status of “interests”/”hobbies”.

Jobs has given these young minds enough reasons to pursue careers in the tech industry, and in times like ours when major economies are racking their brains about ways of bringing back innovation at the top of the priority list, they couldn’t have asked for a better role model than Jobs.

Here’s a quote from this visionary’s life which in a nutshell captures the essence of his approach to life:

“Being the richest man in the cemetery doesn’t matter to me … Going to bed at night saying we’ve done something wonderful … that’s what matters to me.”

In honour of this great man, we will host his videos in our videos link for a month starting today.

Thursday, October 6, 2011

Can Patent Office Issue Reminders in Opposition Proceedings?

During the course of research on a related issue, I ended up asking myself this question- Can the Patent Office issue reminders to applicants/patentees in pre-grant and post-grant oppositions before the prescribed period ends, in situations where no counter-statement has been filed by the applicant/patentee after having received the notice of opposition?

My answer would be that although there does not appear to be a specific provision on this point (I could be wrong here), it would be inappropriate and impermissible under the law for the Patent Office to send reminders to the applicant/patentee if he hasn’t filed his reply despite having received the notice of opposition.

The reason for this is that once the notice of opposition has been received by the applicant/patentee, it is for him to evince interest in the proceedings by filing a reply along with his evidence. In the event he fails to do so, an inference of abandonment could be legitimately drawn against the applicant/patentee.

After all, if the Patents Act clearly envisages a specific consequence of abandonment, which has benefits for third parties/competitors and public interest, the Patent Office ought not to issue reminders to the applicant/patentee urging him to file a reply. Issuing reminders to either party would amount to clear transgression of powers and violation of the intention of the Act. 

Sunday, October 2, 2011

The Tacking Doctrine- The Stitch in time that may Save a Brand!!!

Logos, Brands and advertisements often stay in our memory like superglue. Interestingly, some of the best ones are those, whose products’ popularity although may have declined over time, yet the advertising and branding are so strong, that they continue to build an instant connection with the consumer.

Such a strategy in the world of advertising related trademark law is often known as Tacking. Literally, like the stitch, the doctrine deals in relatability to a previous advertisement an continuing a similar train of thought, even as the product, brand et al evolve. 

Typically used in the context of logos, the doctrine mandates that when updating a logo (or mark), a company must “walk the line” between the need to teach the consuming public that the new logo is a continuation of the old logo, and the need to reinforce the new logo in the public’s consciousness.

While tacking back may be done in various ways, the crux is to maintain a connection with the receiving audience, while still reminding them of the history, quality and age of a product.

Betty Crocker, in my opinion, the maker of one of the finest cake mixes (I know this cause I am disastrous at baking!) has over time changed the face of the lady portraying the image of Betty Crocker. As the image depicts, with time, she has changed her skin colour, hair colour, hair style, but continues to sport a red cardigan, a white shirt and many a time a string of pearls. To my knowledge, Betty has undergone nine makeovers, from 1927 to 1996.

For those of us who are familiar with the salt brand Morton, the little girl with an umbrella and salt flowing out on a rainy day, (to depict that deliquescence has been eliminated), the logo is another classic example of a print advertisement/ logo evolving over time. In the Indian context, it is soap brands like Lifebuoy and Lux come to my mind that have subtly changed their logo over time.

Extrapolating this doctrine further, I would say that tacking could somewhat be used onto the audio visual medium as well. The best example that comes to my mind is that of Nirma. As far as the washing powder goes, while the ladies have evolved and become modern, the colours on the packaging becoming brighter, the singer’s voice becoming somewhat shriller, the lyrics and music interestingly still strike a chord and associate back to the yesteryears of television and cloth washing. 

Similarly, Liril soap has also had its share of Liril girls, yet the jingle, jungle, waterfall et al in the advertisements continue to be maintained.

This concept in the context of trademarks to my mind can have a major impact. Although registration of a trademark is prima facie evidence of its existence, in my view, the use and manner of use can also be of significant consequence.

A theory such as tacking back, whether accompanied by registration of subsequent marks or not, can come to good use, especially when moving an action of dilution and passing off. Dilution, as we know it, consists of blurring and tarnishment as its subsets.

While an infringer may be tempted to use a mark similar to an older mark, such that the infringing mark merely blurs a previously used mark, the use of a tacking back argument can perhaps help further a brand association and consumer confusion argument in Courts.

On the other hand, if one were to tarnish an older mark, the tacking back doctrine may again come to good use. To cite an example, although Coca Cola no longer uses Enjoy Coke as much or as prominently as it used to, if one were to reintroduce the once popular Enjoy Cocaine poster, Coca Cola would still, in my humble opinion, have a viable case.

Although tacking may appear to be a concept relevant only to people from the marketing and advertising arena, its prominence as a trademark related aspect ought not to be ignored. Pertinently in jurisdictions where “use” is a ground to grant trademark rights, it is common that trademark attorneys for litigation as well as PTO related proceedings use advertising as a piece of evidence.

Even though a jurisdiction such as ours grants presumption of validity upon registration, in order to assert common law rights, a party that has wisely used its trademark in a continual fashion, may be able to assert a better case.

To my eyes, the doctrine of tacking is truly a stitch in time saves nine scenario. The downside however to practicing this form of branding, is that its true result and impact can only be observed when a product is guaranteed to maintain a really long market presence.

This having been said, we cannot ignore the fact that we still have brands like Amul and Parle-G, surviving just as vivaciously as years back, that haven’t made any changes whatsoever to their brand ambassadors!!!