Whether there is an infringement of trademark by the Petitioner

It is to humbly submit before this Honble High Court that, there is no such infringement of
trademark of the respondents by the petitioners.

Trade mark means, a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others. 1 A trademark is required
to acquire certain credentials before it can be registered, and certain trademarks are absolutely
forbidden from being registered. The credentials that a trade mark must acquire are mentioned in
Section 9 of the Trademarks Act, 1999, which absolutely forbids registration if there is an
absence of any of the vital facts.

A trademark devoid of any distinctive character is not entitled for registration. 2 It clearly
mentions that, Trademarks which are devoid of any distinctive characters are not capable of
distinguishing the goods or services of one person from those of another person shall not be
registered. Also, Section 9(2)(a) states that, a trademark shall not be registered if it is of such
nature as to mislead the public or cause uncertainty. A trade mark shall not be registered if, or to
the extent that, its use in India is liable to be prevented by virtue of any law in particular law of
passing off protecting an unregistered trademark used in the course of trade; or by virtue of law
of copyright.3

In this present case, the Second Respondent ECL registering a trademark for the word
BOROMIR in itself is not valid at the first instance. The registered word is not a distinctive
word and hence not unique or new as such, as it has already been used as a character by the first
Petitioner in her series of books, and also had obtained a copyright over such work. Copyright
over the literary work, will in turn include such implied rights over the characters and the
storyline of such literary work, and such right is getting distressed at this instance. Secondly, the
registration of trademark for the word BOROMIR is to mislead the public, and to raise the

1 Trademarks Act, 1999, S. 2(zb)

2Ibid S. 9(1)(a)

3 Ibid S. 11(3)
profit ratio of the second respondent company. Noting the success of the petitioners books and
TV series in and around the places it was released, the respondents had idea to turn the situation
in their favour, whereby using a well-known character with an aim of raising the profit of the
company. Hence, the grant of registration of Trademark in itself is in violation with Sections
9(1)(a), 9(2)(a) and 11(3) of the Trademarks Act, 1999. If there exist no trademark at such
instance, then no question of infringement of a trademark will come into picture.

A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion. 4 Mark includes a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof. 5 The deciding point of the question of
deceptive similarity was, the similarity in the nature, character and performance of the goods of
the rival traders.6 The present case involves a clear area of deceptive similarity between the
character Boromir Bohemiaand the mark BOROMIR.

The Apex Court while considering the deceptive similarity of the two names, laid down that the
question has to be approached from the point of view of a man of average intelligence and
imperfect recollection.7 In Corn Products Refining Co. v. Shangrila Food Products Ltd. 8, the
Court observed that, a critical comparison of the two names may disclose some points of
difference. The question is whether an unwary purchaser of average intelligence and imperfect
recollection would be deceived by the overall similarity of the two names having regard to the
nature of the product he is looking for with a somewhat vague recollection that he had purchased
a similar product on a previous occasion with a similar name. In this present matter, the
registered trademark, not only resembles that other work, but also clearly replicates a part of
such work, whereby clearly deceiving the minds of the consumers who intend to purchase.
4 Trademarks Act, 1999, S. 2(m)

5 Ibid, S. 2(h)

6Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 : AIR 2001
SC 1952

7Amrithadhara Pharmacy v. SatyaDeo Gupta, AIR 1963 SC 449

8 AIR 1960 SC 142 : (1960) 1 SCR 968

Hence, the pre-requisite of registration of the Trademark has not been efficaciously complied
with, and hence the very grant of trademark itself is disputed.

The system of International registration of marks is governed by the Madrid Agreement

concerning the International Registration of Marks and the Protocol relating to the Madrid
Agreement.9 Both the Agreement and the Protocol are administrative process for obtaining
international registrations. An international registration is equivalent to a bundle of national
registrations. In the present case, it was crystal clear that, the respondents had released the comic
globally both in printed version and in digital version. Whereas, the trademark registration for
the word BOROMIR had been made only in India under Section 23 of the Trademarks
Act,1999. This again restricts the scope of the trademark registered, only within the boundaries
of India. The respondent failed to file an international application, and obtain an International
Trademark for the character. No such certifications was obtained by the respondents from the
International Bureau of World Intellectual Property Organization (WIPO), for its global release
of the comic. Since, the scope of the trademark got limited within India, and once when the
comic was released globally, the scope for the infringement of the Trademark in itself got
diluted.

Also, it was observed in Pianotist Co.s Application, re10, regarding the comparison of words:
You must take the two words. You must judge them, both by their look and by their sound. You
must consider the goods to which they are to be applied. You must consider the nature and kind
of customer who would be likely to buy those goods. The above findings, impliedly lead the
case to a different perspective. The petitioners had planned only to develop a spin-off series
called Boromir the Conqueror, and had released the teaser-trailer of the prelude, whereas on
the other hand, the respondent company has released the Comic named The Bohemian
Rhapsody. It can be very clearly derived that, the competitive markets of both the marks were
different. The petitioners planned to release a TV series, whereas the respondents released the
Comic. The nature of competition between both the petitioners and the respondents is entirely
different, and so the markets are. In other words, the petitioners were dealing with the dramatic

9 Guide to the International Registration of Marks under the Madrid Agreement and
the Madrid protocol World Intellectual Property Organisation, Geneva, 2014

10 (1906) 23 RPC 774

representation and the respondents with pictorial representation. Hence, there arise no question
of infringement of trademark, when the neither the market nor the mode of such expression is not
one and the same.

The Character Boromir Bohemia has been clearly extrapolated from the fictional series of the
petitioner. The character from the fictional work is exploited. Character merchandising involves
the exploitation of fictional characters or the fame of celebrities by licensing such famous
fictional characters to others. The fictional characters are generally drawings in which copyright
subsists, for example, cartoon and celebrities are living beings who are otherwise very famous in
any particular field, for example, film stars, and sportsmen. It is necessary for character
merchandising that the characters to be merchandised must have gained some public recognition,
that is, achieved a form of independent life and public recognition for itself independently of the
original product or independently of the area in which it appears. Only then can such character
be moved into the area of character merchandising. This presumes that the character has
independently acquired such reputation as to be a commodity in its own rights independently of
the goods or services to which it is attached or the field/area in which it originally appears.11

In the case of Cadbury UK Ltd. V. Lotte India Corp. Ltd12, it was held that, the concept of
goodwill is derived from reputation but the reputation need not be necessarily a local reputation.
It can even be a spill over in India of the International reputation enjoyed by the plaintiffs mark.
In other words, the reputation of a product may precede its introduction and may exist without
trade of the product in the country.Although in the internationalization of trade there could be a
possible confusion with the domestic trader bona fide adopting business names similar to names
legitimately used elsewhere, a dishonest adoption or use of a mark similar to one having a
reputation in the market, with a view to causing deception or confusion in the mind of the
average consumer, may invite an injunction.

11 Star India (P) Ltd. V. Leo Burnett (India) (P) Ltd., (2003) 2 Bom CR 655 : (2003) 27
PTC 81

12 (2014) 57 PTC 422 (Del)

In the case of N.R.Dongre and Others v. Whirlpool Corporation and Another 13, the Delhi High
Court observed that: According to Section 28(1) of the Act, Registration of a trade mark gives to
the registered proprietor14 thereof exclusive right to use the same in relation to the goods in
respect of which it has been registered, but it is subjected to other provisions of the Act. And so
it is clear that the right conferred on a trader is not an indefeasible right as the same is expressly
made subject to other provisions of the Act.This is further, made clear by Section 27(2) of the
Act, which provides that "nothing in this Act shall deemed to affect the right of action against
any person for passing off the goods as goods of another person or the remedies in respect
thereof." Thus it is the manifest that section 28 of the Act and all other provisions come within
the overriding sway of Section 27(2) of the Act. Similarly Section 33 of the Act also saves vested
rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a
trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right
created by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an
absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc.

Section 29 of the Trademarks Act facilitates with the situations upon which the infringement of
the trademark arises. Clause 1 of the section goes like a registered trademark is infringed by a
person who not being a registered proprietor or a person using by way of permitted use so it can
be clearly inferred from the section that a proprietor or any other person using in a permitted
way, their act or use of the word does not amount to infringement. In this case the petitioners
being the prior user, a permitted way of using the trademark does not amount to infringement.

In the present case, the first petitioner Jack Samuelson has published his first book out of seven,
in the year 1994 and the last book in the year 2014. In all the seven books published
consecutively, there is a mention about the character Boromir Bohemia. It is evident that the
respondents have acquired Trade Mark registration for the word BOROMIR in the year 2015.
Hence, petitioners being the prior user of the character Boromir in his seven series book The

13 AIR 1995 Delhi 300

14S. 2(v) of the Trademarks Act,1999 : Registered proprietor in relation to a trade mark, means the person for the
time being entered in the register as propriety of the trade marks
Ballad of Malice and Power, have a right to use such word and the respondents even though a
registered trademark owner of the word has no right to interfere with the use of the word by the
petitioners.And so the act of the petitioners, by naming the prelude as Boromir the Conqueror
does not amount to Infringement of the Trademark of the respondents as under section 29(1) and
(2) of the Trademarks Act, 1999.

Therefore, in the lights of the observations made, the Counsels for the Petitioners most
respectfully submits that, there is no such infringement of Trademark as counter-claimed by the
Respondents.