In its recent judgment Excitel v. The Registrar of Trade Marks, C.A. (COMM.IPD-TM) 5/2021 & I.A. 12921/2021, the High Court of Delhi addressed the admissibility of internet extracts as evidence in trademark proceedings before the Trademarks Office.
The court observed that rejecting internet or website extracts as evidence of use of a mark in trademark proceedings on the ground that they do not fall under the ambit of primary evidence is an incorrect approach followed by the Trademarks Office.
Given the world’s fast and ever-growing transition to internet-driven interfaces in all aspects of a business, the court observed that reliance on website printouts is permissible if it is accompanied by a certificate with the conditions as laid out under Section 65B of the Indian Evidence Act satisfied. The conditions of Section 65B are essentially to ensure that the person producing and relying upon an electronic record has not tampered with them in any manner and that their computer and printer used were working properly at the time of downloading the document or printing them.
In this case, the applicant (Excitel) filed an appeal against the trademark registrar's order refusing its trademark application for the mark REELTIME in class 42, claiming use since 2014.
The registrar rejected the application on the following grounds:
The mark REELTIME is similar to the earlier-cited mark REALTIMES.
Excitel had relied on its website extracts to establish the use of its mark. Its user affidavit does not show Excitel’s year-wise sales turnover and promotional expenses.
Internet extracts are not primary evidence and can only be treated as secondary evidence. Hence, the mark does not have any use or secondary meaning.
Even though the REELTIME word mark and logo are registered in classes 9, 35, 38, and 41, the mere presence of the mark on the trademark register does not prove its use.
Excitel cannot claim rights in its registrations as Google has opposed one of its marks in class 42 (below).
The court’s findings:
The third-party mark REALTIMES cited in the examination report of Excitel’s mark REELTIME was filed in 2015 on a proposed use basis and objected to by the registrar itself. The cited mark was not in use.
The user affidavit filed by Excitel shows extensive use of the mark REELTIME on its website and no conflict with any other mark.
The registrar can check the genuineness of the internet extracts by accessing the internet during the hearing. Rejecting the website printouts is contrary to law as the law permits reliance on website printouts if it is accompanied by a certificate under Section 65B of the Indian Evidence Act. Therefore, at best, the trademark examiner can call for a Section 65B certificate to assess the authenticity of internet extracts.
Excitel’s REELTIME registrations in classes 9, 35, 38, and 41 cover almost all forms of use in its broad range of goods and services. These registrations could not be deemed irrelevant merely if one of the logo marks is opposed by Google.
The opposition filed by Google against the logo mark is insufficient to disregard Excitel’s position as the parties have already entered into a settlement agreement that indicates that only the red-white colour combination of the play symbol is disputed. Google appears to have even acknowledged Excitel’s rights in the mark REELTIME.
The court accordingly set aside the refusal order of the registrar and allowed Excitel’s mark REELTIME to be published in the trademark journal within three months of this judgment.
RNA’s comment
In today’s world, when most businesses, if not all, store their financial statements and other documents electronically, the ruling reinforces the new world order.
