2016 (4) TMI 432 - HC - Indian Laws

Infringement of trademark - ex-parte ad-interim injunction - Held that - At 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. 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 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.

Issues Involved:
1. Passing off action.
2. Descriptive versus trademark use of "SplitView".
3. Prior use of the term "SplitView" by Apple.
4. Suppression of material facts.
5. Ex-parte ad-interim injunction.

Detailed Analysis:

1. Passing off action:
The plaintiffs, a software developer and a consulting firm, filed a suit against Apple Inc. claiming damages and an injunction to prevent Apple from using the mark "SplitView" in relation to its software products. The plaintiffs argued that they had developed and marketed software under the trademark "SplitView" since 2005, which allowed users to work on multiple windows simultaneously. They claimed that Apple's use of the term "Split View" for a similar feature in their OS X El Capitan and iOS 9 operating systems constituted passing off.

2. Descriptive versus trademark use of "SplitView":
The plaintiffs contended that "SplitView" was a unique combination of two words and not merely descriptive. They cited other software with similar functionalities using different names like Divvy, AquaSnap, and GridMove to support their claim. Apple, however, argued that "Split View" was a descriptive term used by various companies to describe a multi-window functionality. They provided examples of prior use by entities such as Microsoft, Samsung, and IBM. Apple also highlighted that they did not use "Split View" as a trademark but as a feature name, contrasting it with other features like "Mail" and "Photos" which are descriptive.

3. Prior use of the term "SplitView" by Apple:
Apple claimed prior use of the term "SplitView" through their predecessor NeXT Inc. since 1993, arguing that this demonstrated the term's descriptive nature. They presented documents showing the use of "NXSplitView" and "NSSplitView" in developer toolkits. The plaintiffs countered that these were not consumer-facing uses and did not constitute trademark use. The court noted that the documents did not meet the threshold for prior use in trademark law as they were not accessible to consumers and did not show continuous use.

4. Suppression of material facts:
Apple accused the plaintiffs of suppressing material facts by not disclosing that "Split View" was a commonly used term in the industry and that Apple had prior use of the term. The court observed that proper pleadings were required to address this issue and that the documents provided by Apple needed to be considered in a full hearing.

5. Ex-parte ad-interim injunction:
The learned Single Judge had granted an ex-parte ad-interim injunction restraining Apple from using the trademark "SplitView". Apple appealed, arguing that the injunction was akin to a mandatory injunction requiring them to change their operating system. The court vacated the ex-parte ad-interim injunction, stating that such an injunction should only be granted if a very strong prima-facie case is made out with respect to a trademark that is inherently distinctive. The court directed Apple to file its written statements and documents, and the plaintiffs to file a replication, with the aim of hearing arguments and pronouncing judgment before the summer vacations.

Conclusion:
The court vacated the ex-parte ad-interim injunction and directed the parties to proceed with proper pleadings and documentation. The court emphasized the need for a full hearing to determine whether "Split View" is descriptive or capable of being a trademark and whether Apple had prior use of the term. The case was set for further hearing with instructions to try and pronounce judgment before the summer vacations.

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