RNA, Technology and IP Attorneys
India's banks operate in one of the world's most active fintech markets. As fraudsters try to take advantage, financial companies must be ready to stop brand infringement.
India is one of the most vibrant global economies thanks to its robust banking and insurance sectors. The country’s financial sector is undergoing rapid expansion, not only for existing businesses but also for new entities entering the market. The government has introduced several reforms to liberalise and regulate the financial sector, which comprises commercial banks, insurers, non-banking financial companies, cooperatives, pension funds, mutual funds and other smaller financial entities. The economy has witnessed increased private sector activity, including an explosion of foreign banks, insurers, mutual funds, venture capital, non-banking financial companies and investment institutions. However, the financial sector in India is predominantly banking, with commercial banks accounting for more than 64% of the total assets held by the financial system. Nevertheless, the insurance sector is experiencing rapid growth. The total first year premium of life insurers reached Rs193,866 billion (approximately $30 billion) during the 2017 to 2018 financial year.
This growth can be attributed to financial services firms shifting their focus to client services. Public as well as private-sector banks are underlining the importance of technology infrastructure in order to improve customer experience and gain a competitive edge. India’s financial sector has expanded in the past five years on the back of the digital revolution, with banks and other financial services firms rapidly adopting technology in every aspect of their operations, whether it is the ease of opening accounts and transferring money to innovative payment options offering so-called ‘anywhere banking’. However, cybersquatters are also taking advantage of this change by creating websites with similar names and sending phishing messages to consumers in order to steal their personal information. Other fraudulent activities are also on the rise, including email and telephone solicitation and the impersonation of bank or insurance employees to acquire account details or sell products or services. Financial companies must be on the lookout to stop brand infringement, invest in consumer education and continuously upgrade technology to ward off cyberattacks and hackers and to preserve brand sanctity.
One common problem faced by financial firms in India is the copying of trademarks and trade names by imposters in an attempt to divert business or gain unfair monetary advantage by associating with a well-established name.
In Citigroup Inc and Another v Citicorp Business and Finance Pvt Limited and Another (CS (COMM) 416/2018), the plaintiff filed a suit before Delhi High Court for damages and sought a permanent injunction to restrain:
- infringement of a registered trademark;
- passing off; and
- unfair competition against the defendants in respect of the trademarks CITI and CITICORP.
The defendants were using the terms ‘CitiCorp’ and ‘Citi’ as part of their corporate names (ie, Citi Enterprises and Traders, Citi Corp Business and Finance Pvt Ltd and 'www.citicorpbiz.com') for rendering services in relation to tax, financial services and other services relating to accounting and tax. Vide an order dated 23 September 2013, the court granted an ex parte interim injunction restraining the defendants from using any domain names or trademarks containing ‘CitiCorp’ or ‘Citi’. The defendants were directed to change their company names. The injunction order is ongoing and the matter is sub judice before the court.
In Indiabulls Housing Finance Ltd and Another v www.indiabulls.org and Others (CS (COMM) 590/2017), the plaintiff offered online brokerage services. It was averred that the plaintiff had adopted the INDIABULLS trademark in January 2000 as part of its corporate name and had been the registered owner of INDIABULLS and ‘www.indiabulls.com’ since 2004. The defendants illegitimately adopted the plaintiff's registered trademark INDIABULLS and were engaged in providing financial services to consumers through their website ‘www.indibulls.org’. The court held that the plaintiff was the prior user of the INDIABULLS mark and domain name, as well as being the owner of the registered trademark INDIABULLS. The suit was decreed in favour of the plaintiff vide an order issued on 1 February 2018.
In Prudential IP Services Limited v Prudential Prosperitas Company Private Limited and Others (CS (OS) 3325/2015), the plaintiff declared that it was incorporated under the laws of the United Kingdom, with international operations providing insurance and financial services. The plaintiff adopted the PRUDENTIAL trademark in the United Kingdom in 1848 and the mark has been registered globally since 1974 and specifically in India since 1994. In India, the PRUDENTIAL trademark was registered in Classes 16 and 36. The plaintiff was connected to ICICI Bank as a joint venture known as ICICI Prudential Life Insurance Company. The defendants were using the plaintiff’s trademark and trade name ‘Prudential’ as part of their trading name Prudential Partners, their company name Prudential Prosperitas Company Private Limited and their domain names 'www.prudential.net.in' and 'www.prudentialpoints.com' in respect of investment-related services. It was alleged that use by the defendants of the identical trademark and trade name for rendering identical services amounted to trademark infringement under Sections 29(3) and 29(5) of the Trademarks Act 1999. The Delhi High Court held that the defendants malafidely used the plaintiff’s trademark and trade name PRUDENTIAL for rendering identical marks and that such use amounted to infringement and passing off of the plaintiff’s trademark and trade name. The suit was decreed in favour of the plaintiff on 14 November 2017.
In ICICI Bank Ltd v Chuandong XU and Another (CS (OS) 2606/2008), ICICI Bank filed a suit before the Delhi High Court for a permanent injunction, trademark infringement, passing off, unfair competition, delivery up, rendition of accounts of profits and damages, among others, to restrain the defendants from using the domain name 'www.icicigroup.com'. The plaintiff claimed that it adopted the ICICI trademark in 1955 and has owned the domain name 'www.icicibank.com' since 16 July 1996, as well as various other domain names comprising ICICI for banking and financial services, and numerous other trademark registrations worldwide (including in India) for the ICICI trademark since 1998. The ICICI mark has gained immense popularity for banking and insurance services and is recognised as a well-known mark according to Section 2(1)(zg) of the Trademarks Act.
The court held that the plaintiff was the prior user of ICICI and established that ICICI is a well-known mark; therefore, the defendant had infringed the plaintiff’s ICICI trademark. The court observed that registration of the domain name 'www.icicigroup.com' showed malintent on the part of the defendant to create confusion and deception in the minds of internet users. The defendant did not contest the suit and the court passed a permanent injunction against the defendant vide an order dated 22 December 2011.
In Bloomberg Finance LP v Prafull Saklecha and Others (CS (OS) 2963/2012), Bloomberg Finance LP (BFL) – a multi-national financial news corporation established in the United States in 1982 – brought a suit for trademark infringement and passing off in the Delhi High Court in 2012 against 36 parties, alleging that they had incorporated 23 companies using the trademark/trade name BLOOMBERG as their corporate name for different services. Bloomberg Finance has been using the BLOOMBERG mark worldwide, including in India, since 1996 and launched Bloomberg UTV (a television news channel in India) in 2008. It was the registered owner of the BLOOMBERG mark in India. The defendants were using the term ‘Bloomberg’ in their company names, operating in the fields of construction and realty, food and entertainment, among others. The defendants pleaded that:
- the BLOOMBERG mark was a combination of the English words ‘bloom’ and ‘berg’;
- BLOOMBERG was adopted in good faith;
- BLOOMBERG in respect of Bloomberg Finance was unknown in India; and
- the goods and services offered by both parties were unrelated.
The court was of the view that the defendants' explanation for adopting the BLOOMBERG mark was unconvincing and held that BLOOMBERG is a well-known brand name. The court restrained the defendants from using the word ‘Bloomberg’ as a part of any trademark, corporate name or domain name, as well as in advertising material or in any manner whatsoever.
Moving away from third parties copying trademarks and trade names, local private India bank ICICI Bank was embroiled in a dispute concerning commercial disparagement of its brand through use of the deceptively similar name IBIBI in the Bollywood film Grand Masti. In ICICI Bank Limited v Ashok Thakeria and Others (CS (OS) 1744/2013), ICICI Bank approached the Delhi High Court to restrain the use of the name ‘IBIBI Bank’ and the ‘i' device in the Bollywood film on the grounds that ICICI BANK is a registered trademark. The film’s trailer shows a robbery taking place in a bank carrying a banner marked IBIBI and used in conjunction with a logo that is deceptively similar to the plaintiff’s ‘i' device. ICICI Bank averred that it amounted to commercial disparagement of its service, thereby tarnishing the goodwill and reputation of its well-known trademark ICICI and its ‘i' device. The court restrained the defendants from using the IBIBI mark, the logo similar to the ‘i' device and the banner bearing the identical font, layout and colour scheme to the plaintiff. Subsequently, the defendants removed the objectionable clip and undertook to no longer use any material violating the plaintiff’s IP rights.
Technology and financial brands
India is one of the most active fintech markets in the world. Two important government missions, Financial Inclusion and Digital India, are driving innovation. It is a challenge to turn India into a cashless economy given its population size and scattered geography, but digital payments have increased quickly due to the rapid growth in smartphones and e-commerce. Until recently, cash was the preferred mode of transaction in India. However, the digital world of financial services has slowly begun to thrive. As a result, companies using brands such as Paytm, Mobikwik and PolicyBazaar are now valued in the billions of dollars.
As the industry continues to evolve and leverages the increasing computing power available to consumers through smartphones and laptops, the advanced level of technologies will create models which are highly personalised in nature and have the capability to collaborate with multiple applications, resulting in a seamless customer journey. The fintech companies that will rise to the challenge and create future-ready technologies using artificial intelligence and other technology solutions will in turn create trusted brands.