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Tag: Prior use in trademark law

  • Why ChatGPT, Gemini, and Grok Are Facing Trademark Hurdles in India

    INTRODUCTION

    In India, trademark rights operate on the principle of “first to use” rather than “first to file.” This means that the rights to a trademark are granted to the party who can prove prior use in the market, regardless of who applies first. This fundamental rule has become particularly significant in recent cases involving major AI-based platforms attempting to register trademarks under Class 9 of the Trademark classification.

    Global tech giants like ChatGPT, Gemini AI, and Grok have recently encountered legal hurdles while seeking trademark protection in India. Despite their international recognition, these platforms are facing opposition due to earlier trademark claims by local businesses. In this article, we will delve into the scope of Class 9 under the Trademark classification, explore the specific challenges these companies face, and analyse why India’s “prior user” principle creates roadblocks for some of the world’s most prominent AI brands.

    CLASS 9 OF NICE CLASSIFICATION

    Class 9 is a crucial trademark category for technology-driven goods and services. It encompasses various products, including AI software, downloadable and cloud-based applications, data processing systems, and various other digital technologies. For startups and tech companies, securing trademark protection under Class 9 is essential to safeguard their AI innovations, digital products, and brand identity, especially in India’s rapidly evolving and highly competitive tech landscape.

    THE AI-BASED PLATFORM VS. PRIOR USER

    1. GOOGLE’S GEMINI VS. SUN TV’S GEMINI TV

    Google’s attempt to register the trademark “Gemini” for its AI platform in India has been formally opposed by Sun TV Network, the owner of the longstanding Gemini TV brand (in use since 1995 in Class 35).

    Despite operating in different sectors, AI software versus television broadcasting Trade Marks Registry flagged a strong possibility of consumer confusion, particularly due to phonetic similarities and visual resemblance.

    Key legal provisions invoked include:

    • Section 11(1): Refusal on grounds of likely confusion with a pre-existing mark
    • Section 9(1)(b): Marks lacking distinctiveness or potentially misleading consumers

    2. OPENAI’S CHATGPT VS. FLAXXI AI

    OpenAI’s application to protect the “ChatGPT” trademark in India is currently opposed by Flaxxi AI, a Bengaluru-based startup that claims usage of the name since 2022 for its educational AI platform developed with IIT Jammu.

    Flaxxi argues that their prior use and accrued goodwill should bar OpenAI from registering the same name, given India’s strict “first use” rule.

    3. xAI’S GROK VS. GROKE TECHNOLOGIES

    Elon Musk’s xAI is facing opposition from Groke Technologies, a Finnish marine software firm that holds the “Grok” trademark under Class 9 in several jurisdictions, including Finland. xAI contends that the brands serve distinct markets and have coexisted without issues in countries like Finland and South Korea.

    Separately, in the U.S., a startup named Bizly alleges prior rights to “Grok,” claiming they filed for the mark in 2021. They contend that Musk’s use disrupted funding and triggered confusion, even though Bizly’s app was still in beta and not widely launched.

    4. DEEPSEEK AI VS. MULTIPLE LOCAL APPLICANTS

    India’s DeepSeek AI has become entangled in trademark filings contested by multiple parties, indicating a potentially complex dispute over ownership of the “Deep Seek” name under Class 9.

    WHY ARE THESE CASES SIGNIFICANT?

    • India’s “First-to-Use” Principle: Trademark rights are grounded in actual prior use in India, rather than global recognition.
    • High Conflict in Class 9: AI platforms fall under Class 9, a category rife with overlapping names and contested claims.
    • Consumer Confusion Threshold: Even when operating in different industries, names that sound alike or share brand design elements may be refused or opposed based on Section 11 and Section 9 grounds.

    CASE STATUS & LATEST UPDATES

    • Gemini: Sun TV’s prior use (dating back to 1995) gives it a strong ground. Google’s opposition proceedings are ongoing.
    • ChatGPT: Flaxxi AI’s claim of longstanding local usage gives it legal weight; OpenAI’s response is underway.
    • Grok: Trademark opposition is active, with Groke Technologies raising a formal opposition in India.xAI continues to defend its position.
    • DeepSeek: Multiple overlapping applications indicate a contested process that may take time to resolve.

    CONCLUSION

    The ongoing trademark disputes involving leading AI platforms like Google’s Gemini, OpenAI’s ChatGPT, xAI’s Grok, and DeepSeek AI underscore the complexities of navigating intellectual property law in India’s dynamic digital economy. These cases highlight how India’s “Prior User” doctrine plays a pivotal role in determining trademark rightsoften giving local businesses a legal advantage over globally established tech giants. The ongoing trademark disputes involving leading AI platforms like Google’s Gemini, OpenAI’s ChatGPT, xAI’s Grok, and DeepSeek AI underscore the complexities of navigating intellectual property law in India’s dynamic digital economy. These cases highlight how India’s “Prior User” doctrine plays a pivotal role in determining trademark rightsoften giving local businesses a legal advantage over globally established tech giants.

    As AI continues to evolve and expand, especially within India’s thriving technology sector, securing early trademark protection under the appropriate class, particularly Class 9, is more critical than ever. Companies, both domestic and international, must adopt proactive trademark strategies that consider not only global branding but also local market presence and existing rights holders.

    These high-profile cases serve as a reminder that in India, brand value is not solely determined by global reputation or innovation it is also grounded in timely, lawful, and strategic use within the local market.

  • SECTION 34 OF THE TRADE MARKS ACT, 1999

    Section 34 of the Trade Marks Act, 1999 is arguably one of the most fundamental sections of the trademark law in India. The primary objective of the trademark law is to protect the rights of the genuine prior users and original adopters of the trademark and section 34 is one of the tools to ensure exactly that. This article will delve deep into the intricacies of Section 34 of the Trade Marks Act, 1999, related doctrines and case laws.

    Basis of Section 34 of the Trade Marks Act, 1999

    Section 34 of the Trade Marks Act, 1999 derives its existence from the common law doctrine of ‘Prior Use’. The Prior Use Doctrine aims at safeguarding the rights of prior users of a trademark. Similarly section 34 of the Trade Marks Act, 1999 also aims at protecting the rights of the prior user and adopter of a trademark by prohibiting the registered proprietor of a trademark to interfere with or restrain the use of the identical or similar trademark by its prior user.

    For Example: A lawfully adopts and starts to use the mark ‘Banana’ in relation to Footwear in 1999 and continues to use such a mark in trade without acquiring any trademark registration for the same. Later, in the year 2005, B adopts the mark ‘Banannaa’ in relation to the same set of goods and thereafter also acquires trademark registration for the same. However, after acquiring the trademark registration, B tries to restrain the use of the mark ‘Banana’ by A on account of its trademark registration. In such case, B’s act of trying to restrain the use of the mark ‘Banana’ by A is barred by the provisions of section 34 of the Trade Marks Act, 1999.

    Here, although A did not acquire the registration of its trademark, this does not take away his right as the adopter, originator and prior user of the trademark. This is exactly where the provisions of section 34 of the Trade Marks Act, 1999 comes into play. In the aforementioned illustration, A has the common law rights as the prior user continue to use its mark without interruption for any subsequent user or adopter.

    Understanding Section 34 of theTrade Marks Act, 1999

    Section 34 gives better rights to prior user as compared to a registered proprietor by taking away the registered proprietor’s right to interfere with or try to restrain the use of an identical trademark by a prior user. This basically means that registered proprietor’s rights cannot grant it superiority over a prior user.

    This provision recognises the common law rights of a prior user accumulated overtime due to use the continuous use of its mark in the market and grants it superiority over the statutory rights acquired by someone due to registration.

    • Registration gives Statutory Rights
    • Use gives common law rights

    Generally, when a person who is the original adopter, continuous user and bona fide originator of the mark, gets its trademark registered, such person is awarded with both statutory as well as common law rights arising from its mark. However, section 34 of the Trade Marks Act, 1999 specifically talks about the situation when such statutory and common law right are held by separate person on account of their registration and prior use respectively.

    Essentials of Section 34 of theTrade Marks Act, 1999

    The following are the essential conditions for the applicability of this Section 34 of the Trade Marks Act, 1999:

    • The third party must be using a mark which is identical to the registered mark;
    • Such mark must be use in relation to similar set of goods and services as the registered mark;
    • Such use of the identical mark must be of a prior date of use than the registered mark;
    • Such use by the third party must be continuous and uninterrupted;

    The term “USE” under section 34 of the Trade Marks Act, 1999 means continuous and consistent use for a substantial time period. prior to the date of filing or date of use of the registered mark. Such “USE” shall not be broken or intermittento. Use must be uninterrupted and such that would sufficiently generate recognition of the mark of the prior user in the market and trade circle.

    Prior Use Vs. Registration

    It is very common in trademark cases for there to be a fight between prior use and registration. This dispute was finally and conclusively settled by the Hon’ble Supreme Court in the case of S. Syed Mohideen vs P. Sulochana Bai, https://indiankanoon.org/doc/149416858/, has categorically and vehemently held that prior use is superior than registration. Hon’ble Court also held that the even the registered proprietor cannot interfere with the rights of prior user.

    A similar finding was made by the Hon’ble court in the case of N.R. Dongre And Ors vs Whirlpool Corporation, wherein the Hon’ble Supreme court recognised the trans-border reputation of Whirlpool’s mark and, owing to its prior use, substantial transborder recognition and goodwill, granted Whirlpool protection against trademark squatting and passing off.

    To secure protection under section 34, the prior user must establish bona fide adoption and good faith usage with substantial corroborating evidence.

    Conclusion

    The prior use doctrine, section 34 of the trademark law as well as passing off rights under granted under section 27, all aim to protect the rights of prior user from undue exploitation from later registrants. Indian courts have also time and again clarified its stance on this issue and consistently upheld the rights of prior users, thereby, granting assurance to actual originators and bona fide adopters that their rights remain secured irrespective of trademark registration.