TaxTMI 
TaxTMI 
2016 (4) TMI 432
X X X X Extracts X X X X
X X X X Extracts X X X X
....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.splitview.com in August 2005 and has since then been selling the software. He pleaded that he had applied for registration of the trademark SplitView 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 XenDesktop as delivering a true multi....
X X X X Extracts X X X X
X X X X Extracts X X X X
....f the programmes and features within a programme or in any hardware or software. 7. Prima-facie finding in favuting LLP have been returned on the reasoning that the two have established Rohit developing for the first time a computer programme which allows a user to simultaneously work on multiple windows on the users' computer screen and its sale since the year 2005. Reference has been made by the learned Single Judge to the plaintiff's e-mail dated December 30, 2015 and Apple's response on January 14, 2016 in which Apple did not dispute user of plaintiff's trademark SplitView for software programmes since the year 2006. The learned Single Judge has reasoned that the trademark SplitView was prima-facie a unique combination of two English words Split and View. The learned Single Judge has reasoned that names such as Split Screen, Split Monitor, Multi View, Dual View, Multi Screen and Dual Screen etc. were available to highlight the feature of a software programme which could enable a user to simultaneously work on multiple windows on the users' computer screen. Learned Single Judge has reasoned that other software programmers, having programmes allowing multiple....
X X X X Extracts X X X X
X X X X Extracts X X X X
....in question. When the appeal was listed before us for admission on March 28, 2016, said aspect was pointed out by us to the learned senior counsel for Apple, who replied that so ex-facie clear is the suppression and false pleadings that the appellant risks urging said aspect, sans pleadings before the learned Single Judge. 10. Thus, with respect to said aspect of the matter, the focus of our consideration would be : Whether ex-facie suppression or false pleadings emerge. For if the point becomes arguable, Apple has to be told to approach the learned Single Judge by making proper pleadings to enable the respondents to respond in writing and then a full-fledged debate ensues between the parties. Thus, our reflection on the arguments and the documents relied upon would not be construed as any final opinion, save and except if we find it to be a case of gross suppression which is ex-facie apparent and/or a case of gross false pleadings which are discernible to the naked eye. 11. Case of Apple is that an operating system of a computer manages its memory; processes its software and hardware. For its Mac and iPad products Apple offers the OS X El Capitan and iOS operating systems respec....
X X X X Extracts X X X X
X X X X Extracts X X X X
....noted hereinabove, software programmes which can be purchased standalone. 12. With reference to the decision of the Supreme Court reported as AIR 1965 SC 1980 Kavi Raj Pandit Vs. Durga Dutt Sharma, Apple highlights that in an action for passing off, 'added matters' such as marks, get-up, packaging, writing on the product ensures that there is no likelihood of confusion or deception, Apple takes the argument forward by urging that since action initiated by respondents is one for passing off, the distinction between a separately marketable product bearing a trademark as against a feature having no standalone status because of it being integrated within the operating system has to be kept in mind and if so kept, it would not be a case of passing off. Apple highlights that the trademark for its operating system software is OS X El Capitan and iOS and not 'Split View'. As per Apple the mode and manner of sale of products is also relevant. As regards its products the consumer purchases one of the Mac line of computers or iPad Tablets with the operating system software already loaded on the devise, and may periodically download updated software. According to Apple there i....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... 'Mail', 'Calendar' and 'Clock' etc. to highlight that being descriptive of the functionality provided by these features, being not capable of a trademark registration, Apple has not applied for a trademark registration for them. Thus, Apple states that for such features which are descriptive, since no one can appropriate the word, it has not sought to appropriate the word and for such features where the word is not descriptive, it is within its right to do so. 16. The aspect of this argument, though not conceded to by learned senior counsel for Apple and for which lack of concession we were a little bit surprised, is that different items can be packaged and each item would be a product, but when packaged together and sold as a package under a trademark, the goods which are sold in the market, whether real or virtual are under the trademark of the package. It is akin to a combo offer. To wit : A chicken burger + A can of coke + French Fries, under the banner 'Happy Meal'. The consumer buys Happy Meal and understands that he would get three things. The consumer cannot purchase only one of the three. 17. Put into distinct compartments the case of App....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... opinion, the Division Bench observed that the two are antithetical to each other and one plea, if successful, must necessarily destroy the other. The Division Bench noted the principle enunciated by a learned Single Judge of this Court, in the decision reported as 57 (1995) DLT 49 Automatic Electric vs. R. K. Dhawan, in the following words:- "The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression. User of the word "DIMMER" by others cannot be a defense available to the defendant, if it could be shown that the same is being used in violation of the statutory right of the plaintiff." 21. The immediate response to the above question in the instant appeal by the learned senior counsel for Apple was to say that it has in fact not claimed trademark rights over SplitView and to that end it is not contradicting its own claim. And we highlight that the argument was that through its predecessor NeXT Inc. Apple used the words Split View to describe an essential functional feature of its product. 22. We need not quibble with this aspect because the ques....
X X X X Extracts X X X X
X X X X Extracts X X X X
....rom pages 288 onwards to demonstrate third party use of Split View in a descriptive sense, thus arguing that no exclusive proprietorship can accrue to the respondents. 25. The documents were filed in the appeal. They do not form part of the suit record because Apple has chosen not to file an application under Order 39 Rule 4 of the Code of Civil Procedure and has preferred to challenge the impugned order. The documents were taken on record. 26. With respect to the documents, we note the same and simultaneously offer our prima-facie view thereon. 27. The first is the document at pages 288-289. The terminology SplitView Object and SplitView Class are apparent on the face of the document, but the respondent response is that a document should not be read only skin deep and a little penetration would reveal that Microsoft provides a coding language for developers to build their own applications. SplitView is a component in the coding language to sub-divide a window, in one application only. Consumers will never be aware or be able to use this coding language. That it is not a product or a feature in a product. It does not reach a consumer. Further, on page 289, Split View is used in ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ture called Split View. It allows users to view multiple PDF documents on the same monitor. The response was that it uses Split View as a feature to open PDF documents and is not a comparable product and further that distinction between functionality and feature must be kept in mind. 33. The seventh is a document at pages 304-306. It uses the terminology Google Play - Split View Multi Screen Tablet. Learned counsel for the appellant referred to the same as one of the two examples, of Google using Split View. But concededly it is an application (app) by NQR Productions which is available for sale on the google play store, in respect of which learned counsel for the respondents submitted that a takedown notice has already been sent by the respondents in this regard to Google. 34. The eighth is a document at pages 307-308. It uses the terminology Skipper - Split-view web browser by AnguriaLab. This is an application available on iTunes under the mark/name Skipper. Split-view has been used after the word Skipper and as per learned Counsel for the respondents, as a descriptive term for the application Skipper and is an example of an instance where an application (app) launched in 2010....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ther the document at serial No.2 which uses the terminology Split a View is a feature of a product (MS Word) and not a product itself and further what is the effect of the words SplitView being used along with other descriptors such as Split Window and further what is the effect of these words appearing alongside the tabs HOME, INSERT, DESIGN, PAGE LAYOUT, REFERENCES, MAILINGS and REVIEW and therefore not used for a stand-alone product. (iii) What is the effect of the document at serial No.9, which is an app/product called Football Manager, though called SplitView, but allows the user to view the game/application in multiple sections and therefore whether its field of operation is so distinct that there cannot be any overlap between the product of the respondents and the said product. The backdrop being that the software does not permit simultaneous viewing of two applications. (iv) Documents at serial No.3, 5 and 6, which clearly relate to products, the impact of the three having a clear trade mark/feature, being MultiWindow, DualWindow and Revu respectively and the sixth allowing user to view multiple PDF documents on the same monitor. (v) The document at serial No.8 using the....
X X X X Extracts X X X X
X X X X Extracts X X X X
....pondent's product, for which the mark is being used for, is a split screen or a split monitor functionality - the view is complete, it is not being split, it is being reduced in size and there are multiple 'views' of applications (apps) or windows being made simultaneously available. This is for their personal edition. For the server edition of the product, Split View does not in fact split the user's monitor at all but permits the user to view multiple monitors together. 44. Dictionary extracts and technology term glossaries handed over by the learned counsel for the respondents demonstrates that while split screen is a dictionary word, split view or splitview are not so. This coupled with the US$ 5.9 million sales of the product since the time of its launch and its highly positive rating on multiple application (app) review sites all go towards prima facie demonstrating the distinctiveness and reputation of the mark SplitView in the respondents' favour. 45. But on the other hand we find considerable material to establish to the contrary and we cite a few instances only. The first is a United States Patent Application published on December 19, 1995 pertaining....
X X X X Extracts X X X X
X X X X Extracts X X X X
....o somebody using the expression trespasser, somebody using the expression illegal possession, somebody using the expression wrongful possession; all describing the same concept, people use the words Split View, Split Monitor, Split Window etc. to describe the same concept of simultaneously viewing akin to two windows on the same screen, albeit within the same application or simultaneously using two applications. It is trite that a number of alternative ways of describing a product is no answer to the criticism of the mark being adopted as a trademark and that different words and expressions can be descriptive of a product and it is not answer that since other words and expressions exist, I am entitled to appropriate the one which I have used to describe the product. 47. Learned senior counsel for Apple argued that Apple uses the two words Split View as a descriptor and not as a mark. Learned counsel for the respondents urged to the contrary. Prima-facie Apple's product is doing the same thing as the respondents' i.e. splits the window and on the monitor two applications can be seen while being simultaneously operated. Here the facts of the present case differ dramatically ....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... for the split screen feature and some associating the words Split Screen as descriptive of an essential feature of a system where visually the computer screen shows two windows displaying two different contents. 51. In the context of this debate, argument of Apple needs a weightage to be given with reference to Apple offering OS X El Capitan and iOS operating systems having in-built functionalities such as 'Mission Control', 'Spot Light' and 'Split View'. These individual integrated function/features/products are not available separately. In other words Split View by Apple cannot be bought and sold in the market and assuming Split View has used the word to name its product and not describe the product the effect of added matters needs a proper consideration. 52. In respect to the second argument (which would also subsume the charge of suppression), we summarise the respondents' submissions to demonstrate that Apple has in fact not used Split View in a descriptive manner. The arguments were:- (i) Apple uses Split View as the 'name' for the product feature - it appears as a stand-alone heading as the name and is not used as a part of a sentence....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ffers the two operating systems and no functional part of the programme is available standalone, coupled with the argument noted in paragraph 15 above, that the consumer understands when Apple uses the words 'Maps', 'Photos', 'Calendar' and 'Clock' it is for features and not products and therefore 'Split View' is used by Apple as a feature i.e. that the consumer recognizes that descriptive words are used by Apple to describe the essential functionality of its product and not the product and non-descriptive words are used by Apple as the name of the product. 54. The second argument of learned senior counsel for Apple was with a caveat, correctly put i.e. that if for some reason this Court holds that the word SplitView is not descriptive and is capable of being a trademark, Apple must trump the respondents on account of prior user through its predecessor NXSplitView. 55. Noting that the argument was made as an alternative argument, we prima-face find that SplitView was in fact never used in conjunction with a monitor splitting or screen splitting functionality offered by a software product/application (app) and was in fact called NXSplitView/....
X X X X Extracts X X X X
X X X X Extracts X X X X
....m the year 2005 as has been held by the learned Single Judge. 58. The learned counsel for the respondents, in turn, had drawn the attention of this Court to pages 162, 188, 191, 194 and 196 of the appeal paper book, which ex-facie supports the respondents' use claim of the year 2005. Of particular relevance is the document at page 191, which is an extract from the Wayback Engine (an internet tool that captures snap shots of web pages as they stood earlier) and the said document reflects what the respondent's website looked like in December, 2005. At page 167 is the who is record for the respondents' domain www.splitview.com which shows that it was created on August 23, 2005. Page 194 is the first order notification of the respondents' product, under the mark SplitView, dated September 05, 2005. These three documents as also the others mentioned above were admittedly part of the suit record and the learned Single Judge has thus rightly concluded that the respondents had demonstrated the use of the trademark SplitView from 2005. 59. A loosely worded letter/notice by the respondents to the CEO of Apple, naively requesting him to rename the Split View feature/product ....