Back
2016 Supreme(Del) 1683
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRADEEP NANDRAJOG AND MUKTA GUPTA, JJ.
APPLE INC - Appellant
versus
ROHIT SINGH & ANR. – Respondents
FAO(OS) COMM 11/2016
Decided On : 07-04-2016
Mr. Sudhir Chandra, Mr. Pravin Anand and Mr. Aditya Gupta, Advocates
Ms. Shwetasree Majumdar, Advocate with Ms. Prithvi Singh, Ms. Tanya Varma and Mr. Vishnu Rege, Advocates
The main legal point established in the judgment is the need for a thorough analysis of the distinctiveness and descriptiveness of a trademark, considering consumer perception and prior use, to determine its eligibility for protection.
Headnote:
TRADEMARK - Passing off - [TRADEMARKS ACT, 1999, Section 2(1)(zb), Section 27] - The judgment discusses the use of the trademark 'Split View' by Rohit Singh and the legal implications of Apple Inc.'s use of the same term. The court analyzes the distinctiveness and descriptiveness of the term, the prior use by Apple's predecessor, and the consumer perception of the term. The court vacates the ex-parte ad-interim injunction and directs both parties to file their written statements of defense and relevant documents for further proceedings.
Fact of the Case:
Rohit Singh, a software developer, and Vyooh Low Level Computing LLP filed a suit against Apple Inc. for using the trademark 'Split View' or a deceptively similar variant. Rohit claimed to have developed the software in 2005 and applied for trademark registration in the United States and India. Apple argued that the term 'Split View' was descriptive and had been used by others before Rohit.
Finding of the Court:
The court found that there was a serious issue concerning whether 'Split View' was descriptive of an essential feature of the computer program, rendering it ineligible to be a trademark. The court vacated the ex-parte ad-interim injunction and directed both parties to file their written statements of defense and relevant documents for further proceedings.
Issues: The issues revolved around the distinctiveness and descriptiveness of the term 'Split View', the prior use by Apple's predecessor, and the consumer perception of the term.
Ratio Decidendi: The court emphasized the need for proper pleadings and a full-fledged debate on the use of the term 'Split View' to determine its distinctiveness and descriptiveness. The court also highlighted the importance of consumer perception and the distinction between descriptive use and trademark use.
Final Decision: The court vacated the ex-parte ad-interim injunction and directed both parties to file their written statements of defense and relevant documents for further proceedings.
PRADEEP NANDRAJOG, J.
1. Rohit Singh is a software developer and works as a consultant with Vyooh Low Level Computing LLP. The two joined in an action, as plaintiffs, claiming relief of damages as also an injunction against Apple Inc from using the mark ‘Split View’ or a deceptively similar variant whereof in relation to its software products.
2. The action is one of passing of.
3. As per Rohit Singh, he developed three proprietary software products targeted at the end consumers which he named Split View, Disk View and View Scribe respectively. As per him, the trademark in issue in the suit i.e. Split View was the most commercial successful product. It permitted the user to simultaneously work on multiple windows on the users’ computer screen. He initially sold his software products through a sole proprietary concern named Vyooh and later on formed a single member limited liability company called Yyooh LCC, through which he sold his software products and in the year 2010 he gave an exclusive license of his software products to Yyooh Low Level Computing LLP. As per him, the motivation to develop a software on which two or more applications on the computer screen could be simultaneously opened was, he observing in the year 2005 that there was a consumer need to have two or more applications simultaneously opened. Consumers were using two monitors to overcome the problem which was cumbersome and costly. Having developed the software in the year 2005, he purchased the domain name www. Split View.com in August 2005 and has since then been selling the software. He pleaded that he had applied for registration of the trademark Split View in the United States of America and in India. He claimed uniqueness and innovativeness in his software which earned the product Citrix Ready Membership on account of Citrix finding his product compatible with Citrix XenApp and Xen Desktop as delivering a true multi-monitor experience with server based computing. He claimed reputation and goodwill in the product, disclosing sales of US$ 5.9 million over the last decade; with over 14000 paying customers.
4. He pleaded that Apple Inc launched an update to their operating software – Mac OS X El Capitan and iOS 9 in December, 2015 for computer and mobile devices respectively, which allowed the monitor and/or screen on the iPad to be split into two halves to enable working on two applications, and the feature had been named Split View by Apple Inc. He pleaded that functionally the product of Apple Inc fulfils the same purpose of letting the user work on two applications simultaneously, without having to manually resize each of the application windows; the only difference being that Apple Inc’s product was bundled with Apple’s Operating System and was not available for retail sale nor it was meant for Operating Systems other than MAC OS X El Capitan Operating System and iOS 9. He pleaded having sent an e-mail on December 30, 2015 to Apple putting it to notice of his right in the trademark Split View to which he received a response from January 14, 2016 in which Apple accepted his right in the trademark Split View but claimed using it in a descriptive sense; but simultaneously questioning whether Split View could at all be a trademark; alleging it being descriptive.
5. As per Rohit Singh, Split View is capable of being a trademark because the word Split and the word View are not words that would ordinarily be used in conjunction with each other. To bring home this argument he referred to a number of third party operating systems which allow for multi monitor functionality, none of which adopted names similar to Split View or used Split View in a descriptive manner to describe the functionality of their software. The product of the third parties being Divvy, Aqua Snap, Grid Move, Window Space, Max To and Gridy.
6. The suit, accompanied by IA No.2885/2016, came up for admission before the learned Single Judge on March 01, 2016. Issuing summons in the
