TMI Blog2016 (4) TMI 432X X X X Extracts X X X X X X X X Extracts X X X X ..... ile its written statements of defence within two weeks and along therewith file all documents it seek to rely upon. The respondents are granted three weeks' time to file a replication and file such further documents as respondents desire. The next date of hearing before the learned Single Judge is May 09, 2016 and we request the learned Single Judge to hear arguments in the application seeking interim injunction pending disposal of the suit filed by the respondents on said date and try and pronounce judgment before the ensuing summer vacations which commence from June 04, 2016. - FAO (OS) COMM No. 11/2016 - - - Dated:- 7-4-2016 - Pradeep Nandrajog And Mukta Gupta, JJ. For the Petitioner : Mr.Sudhir Chandra, Sr.Adv. instructed by Mr.Pravin Anand and Mr.Aditya Gupta, Advs. For the Respondent : Ms.Shwetasree Majumdar, Adv. with Ms.Prithvi Singh, Ms.Tanya Varma and Mr.Vishnu Rege, Advs. JUDGMENT 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 'SplitView ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion 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 SplitView to which he received a response from January 14, 2016 in which Apple accepted his right in the trademark SplitView but claimed using it in a descriptive sense; but simultaneously questioning whether SplitView could at all be a trademark; alleging it being descriptive. 5. As per Rohit Singh, SplitView 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 SplitView or used Split View in a descriptive manner to describe the functionality of their software. The product of the third parties being Divvy, AquaSnap, GridMove, WindowSpace, MaxTo and Gridy. 6 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... acts with reference to documents of Apple, through its predecessor NeXT Inc. being a prior user of the word SplitView since 1993 albeit as a feature of its product and with the plea that the same is good evidence that Split View is descriptive of the essential functionality of the software i.e. a software which splits the screen and two windows open through which the contents of the two applications be simultaneously seen and operated upon. Another facet of suppression alleged is that third parties also used the words Split View in a descriptive sense and that said documents/literature are accessible on the net and thus Rohit, who claims to be a software wizard, could not be oblivious to the said documents. The charge is thus one of suppressio veri and suggestio falsi. It is also the case of Apple that though worded as a prohibitary injunction its acts as a mandatory injunction for the reason Apple would have to change its operating software. 9. We preface our discussion by highlighting that the area of the appeal sought to be extended required proper pleadings and thus one would be handicapped in deciding said factual matrix and that is the reason why remedy under Order 39 Rule ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o', 'Notes', 'Safari' and 'Split View') are in-built features within the operating system. That is to say they are integrated with the operating system and are not sold separately by Apple to any user. A user wanting to avail all or any one of the features visits Apple's 'App Store' and downloads the OS X El Capitan Operating Systems and the package as a whole has to be purchased. The individual integrated features i.e. 'Notes' 'Mails' 'Photos' 'Safari' and 'Split View' cannot be purchased individually. As a matter of fact the purchaser cannot download these features separately. He purchases the OS X El Capitan System as an integrated package. Apple highlights that it is not the case of the respondent that Split View is available as a 'standalone' software and is not integrated with the operating system; it cannot be bought or sold in any physical or the virtual market as a standalone product. Apple highlights that these in-built features of the OS X El Capitan Operating System could be contrasted with other software which can be separately bought as a standalone product. By way of example, the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as Xerox Corporation (US20050086259A1), International Business Machines (US6226652B1), Seiko Instruments Inc. (US5477049A), Shih-Yang Wang (US20060020903A1) which were published prior to the year 2005 and use the term 'split view'. iii. Use by prominent entities such as Microsoft, Samsung, Apache OpenOffice, Sprint LG, Bluebeam, NQR Productions and AnguilaLab to describe a multi-window functionality. 14. Thus, according to Apple a commonly used phrase such as Split View cannot be said to be distinctive of a software programme because it is descriptive of the multi-window functionality provided by companies around the world for several decades and a consumer would never rely on a descriptive phrase to distinguish the product of the respondents from those of others. As per Apple it has not used the symbols 'TM' nor applied for trademark registration for the expression Split View in any country because it can never be claimed as a trademark and as per Apple it does not claim trademark rights over the expression. Apple highlights that the words Split View do not appear either on any product or on any advertisement issued by it and that consumers do not place an o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t for purposes of grant of injunction. A sub-argument concerning this contention was that Rohit Singh was guilty of suppressing that Apple was a prior user (through its predecessor) of the word SplitView and that in the trade others were also using the word SplitView because it was an essential feature of the product. C. 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. To wit : a person who has no right to be in possession of a property may be described as : (i) A trespasser. (ii) In wrongful possession. (iii) In illegal possession. (iv) Usurper of the property etc. D. 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. 18. We recant the essential principles that gove ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lained of. The plaintiff must prove a prima facie case, avaiiability of balancve of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly, passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff is establishing probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing off. As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... l product itself. Counsel demonstrated that when one opens Microsoft Word, the toolbar at the top has a tab which says 'Split' and 'Split Window' under it. Counsel therefore concluded that it is apparent that this is not meant for a split screen functionality but a functional feature within MS Word/MS Office which does not use the name/mark Split View. 29. The third is a document at pages 292-295. It uses the terminology Samsung Galaxy Tab S2 MultiWindow. Ex-facie, the top of the page shows clearly that Samsung is using MultiWindow as a trademark and not SplitView/Split View. Prima-facie Samsung has used it in a descriptive sense to explain how to use multiple windows on its tablet. 30. The fourth is a document at pages 296-298. It uses the terminology Apache Open Office Framework/SplitView. Apple relied on this document to urge that Apache is using the mark SplitView. The response was the same as was for the second document at pages 290-291 i.e. it is used for coding to display multiple views of the same document and not for multiple windows. It is not a word used on a product which will reach consumers. 31. The fifth is a document at page 299. It uses ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... h View Analysis Stats. It is of limited application and restricted to a limited audience. 36. The tenth is a document at pages 312-313. It uses the terminology Google's method of showing multiple languages in mobile search results interface in India. This, according to learned counsel for Apple is the second instance of Google using Split View. Learned counsel for the respondents replied that it is evident from reading the article that only the author of the article has called the tabbed interface as Split View. The article quotes a twitter user, Abhijeet Mukherjee to say that 'Google is showing search results in English and a native language in a tabbed interface'. Google made no announcements and there is no product by Google called Split View, contrary to the appellant's claim. 37. The eleventh is a document at pages 318-341. It uses the terminology European Patent Application titled 'Apparatus and method for processing Split View in Portable Device'. The said application has been filed by Samsung Electronics Pvt. Ltd. on September 18, 2013, and prima-facie we find that the words Split View have been used in a functional sense in a patent applicat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... consumers? 40. No product or application or feature can be nameless. If split view describes the product, then what is the product called? Learned senior counsel for Apple laid great emphasis on a judgement of a Division Bench of this Court reported as ILR (2010) II Del 85 Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. Ors. to urge that the facts are identical and as the Court in said case had vacated the injunction, so must a vacation follow in the present case, on the ground of descriptiveness. 41. The two key observations of the Division Bench in Cadila's case (supra) that are relevant for the present case are: (i) The conclusion that the mark 'Sugar Free' has acquired a considerable degree of distinctiveness in relation to the appellant's product is based on mere assumption and is without any reasonable basis. (ii) The words 'Sugar Free' are always used along with the trademark 'AMUL' by the respondent within the same visual matrix and there is no possibility of confusion. 42. In other words, the first test to be applied to the respondent's trademark SplitView is whether it is inherently distinc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of a Set of Files'. Explaining the summary of the invention the patent claim discloses : 'The views are : split, composite, split-merge and composite-merge. .... Figure 6 illustrates a collision handler in a Split View in accordance with the present invention. ..... Buttons below the upper pain control the views that the user may utilize to resolve the conflicts. Split View button 330 will display a side-by-side view of the different part versions.' Of the many claims, claim No.2 is described, amongst others : 'Displaying said version in a Split View.' The third is a United States Patent Application published on April 21, 2005 pertaining to a product described as : 'Viewing Tabular Data on Small Handheld Displays and Mobile Phones'. Explaining the background of the invention the patent claim discloses : 'A split screen view with local split-bars can be implemented to enable the user to manipulate their view point. This may be considered equivalent to selecting split view in an Excel-type spreadsheet and using scroll bars to navigate individual splits'. The fourth is a United States Patent Application published on January 26, 2006 pertaining to a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s that there is nothing in the product literature of Apple surrounding El Capitan to support such a suggestion, as was the case in the instances (3), (5) and (6) which we have discussed hereinabove concerning Samsung Galaxy Tab S2 MultiWindow, LG Android Split View and Revu Split View, wherein the consumer is clearly able to distinguish between the trademark and the descriptive nomenclature and not confuse one for the other. 48. In this regard the respondents have given examples of third party applications with the same functionality which do not in fact call themselves Split View or use split view in a descriptive sense. This list of applications (apps) such as Divy, AquaSnap, GridMove, WindowSpace, MaxTo, Gridy, Aero Shake was recorded with approval in paragraph 4 of the impugned order passed by the Learned Single Judge. These applications pertain to products which are identical or similar to that of the respondents and yet we find that none of them use split view to describe their functionality. 49. But that would need a proper debate after pleadings because as we have highlighted hereinabove with reference to examples of trespasser, person in wrongful possession, person ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... No.IRD 2674730 in India. Similarly, Swift (used in respect of a programming language), Safari (used for a web browser) and Metal (used for a graphics technology) are all bundled with El Capitan and are a part of El Capitan and yet individual trademark rights have been claimed by Apple in respect of each of them. (iv) 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 assume that Split View is being used in a descriptive sense by Apple and Spotlight or Mission Control are being used in a trademark sense. (v) 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, LocalTalk, NetInfo, Photo Booth, QuickDraw, App Store and to an ordinary consumer S ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f fact regarding trial. A perusal of an extract from Apple's own website which was handed over by learned counsel for the respondents prima-facie demonstrates the absence of SplitView or even NXSplitView in the list of trademarks owned by NeXT Inc. which prima-facie further indicates that there was no consumer recognition of NXSplitView or SplitView as a trademark and indeed the same was not used as a trademark or a descriptive name for a product for Apple to be entitled to any benefit in law of prior adoption. In any event, the NXSplitView/NSSPlitView manuals of 1993 and the 2006 book for software developers which seems to cross reference these developer tools do not discharge the threshold of what constitutes prior use in trademark law. Reference may be made to the observations of the Supreme Court in the decision reported as AIR 2001 SC 2083 Uniply Industries Ltd. v Unicorn Plywood Pvt Ltd that 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. 56. Learned senior counsel for Apple had, in relation to a document showing it to be the year 2006, argued on the basis of the ri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 61. In a nut shell, our finding would be that on the existing material before the learned Single Judge case was not made out to grant an 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 trade mark which is inherently distinctive. A serious issue arises for consideration in the instant case concerning whether Split View is descriptive of an essential feature of the computer programme thereby rendering the words, even if used in conjunction with each other, not eligible to be a trade mark. With respect to documents filed by Apple in appeal, we simply observe that proper pleadings are required as to the effect of the documents keeping in view the mandate of Order 6 Rule 9 of the Code of Civil Procedure, so that the respondents have an opportunity to plead as per them as to what is the effect of the document. 62. Vacating the ex-parte ad-interim injunction dated March 01, 2016, we dispose of the appeal directing Apple to file its written statements of defence within two weeks and along therewith file all documents it seek to rely up ..... X X X X Extracts X X X X X X X X Extracts X X X X
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