Case Updates

  • Poly Medicure Wins Long Patent Battle Against German Giant B Braun

      Poly Medicure, an Indian company that manufactures medical devices, recently won a five year long patent battle against B Braun, a German medical devices and Pharma giant. The patent litigation involved B Braun’s patents covering certain features of intravenous (IV) safety catheters. The European Patent Office revoked two of Braun’s patents after which Braun appealed to the Board of Appeals. However, the appeal was dismissed and the patents of B Braun stood revoked. B Braun’s patent covered safety IV catheters with an injection port and a self activating needle stick protection. The invention sought to redress problems faced by healthcare workers who are exposed to the dangers of transmission of various blood borne pathogens, including AIDS and hepatitis, while administering and inserting these IV catheters.

  • Diageo v. Khoday- An Alcoholic Battle

      Trademark dispute between two alcohol companies, viz., Diageo Brands B., owner of global brands such as Johnnie Walker Black Label, Johnnie Walker Red Label, Johnnie Walker Green Label, Captain Morgan, VAT 69, Smirnoff, Guinnes and Baileys, etc., and Khoday Breweries Ltd, was heard by the Delhi High Court. It was contended by Diageo that Khoday had registered as well as applied for trademark registration for many marks which were confusingly and deceptively similar to the Diageo’s trademarks, viz. Gudness, Bond Green Label, VAT 999, Captain Walker, among many others. Diageo sought an injunction on two counts, firstly, to restrain Khoday from applying for registration of any mark which was similar to Diageo’s trademarks; secondly, to restrain Khoday from using, attempting to use any mark that was similar to Diageo’s trademarks. The Court, while dealing with the first issue, stated that an injunction order could not be passed against registration of trademarks that were already registered and that the appropriate remedy was applying for cancellation of those trademarks. The Court further ruled that as detailed procedures were for registration, opposition to registration etc, were already set out specifically in the Trade Marks At, 1999, it would be inappropriate for the Court to injunct a person from applying for registration. In addition, the Court declared that Diageo’s argument that it could not be compelled to keep track of and oppose every application of Khoday’s which infringed on its marks was not considered sufficient enough a argument to grant an injunction against Khoday from applying for registrations. While dealing with the second issue, the Court noted that 20 of the marks sought for registration were prima facie similar to Diageo’s Johnnie Walker trademark and there were other marks such as VAT 999, Gudness and Khoday’s Black and White that were confusingly and deceptively similar to Diageo’s trademarks such as VAT 69, Guinnes and Black and White. Thus, the Court came to the conclusion that balance of convenience was in favor of Diageo as they were entitled to protection of their trademarks so that they were not diluted by unjustifiable use by Khoday or other third parties.

  • Candy Crush Saga Owner Moves Court to Protect IPR

      The most popular game on smart phones and tabs, 'Candy Crush Saga', was recently entangled in a court case in India. King.com, the owner of the game’s IP, filed a copyright infringement suit against the Apeejay Surrendra Group in the Bombay High Court to restrain Appejay from using the images of the popular game. It was discovered by King.com that the images of Candy Crush were used in online advertisements for a live music gig to be held at Apeejay Group-managed Park Hotel at Vishakhapatnam. It was later learnt that Park Hotel was not directly infringing the copyright since it merely served as a location for the event; the event was being organized by Rowthu Projects, which was a company based in Hyderabad, and was consequently cancelled. The Bombay HC passed an ex-parte order recognizing that the IPR in game Candy Crush are exclusively associated with King.com and restrained Apeejay Surendra Group from using the images of Candy Crush. King decided to put an end to the suit by entering into consent terms with Apeejay, which stated that the Apeejay Group recognized that Candy Crush marks were well-known trademarks of King.com.

  • James Cameron's 'Avatar' didn't Copy Artist

      A New York federal judge (New York District Court) ruled that James Cameron didn't infringe a fantasy painter's copyrights with his 2009 sci-fi blockbuster “Avatar". English artist Roger Dean had accused Cameron and Twentieth Century Fox Film Corp. of “knowingly and willfully” infringing his paintings and drawings for various aspects of the movie, such as the floating mountains. The artist also pointed out the similarities between the Tree of Life and the Home Tree of Avatar's fictional alien race, and his works Pathway and Floating Jungle. However, the U.S. District Judge stated that “many if not most” of the similarities between Dean's works and Cameron's film, like those floating mountains, were unprotectable under copyright law. The Judge declared that “Plaintiff does not have a monopoly on the idea of floating or airborne land, an idea that has been around since at least 1726, when Jonathan Swift published his classic 'Gulliver’s Travels'”. Furthermore, he also said that suspending a landmass is a very predictable way to make a panorama more sweeping, breathtaking and fantastical, and, doing so, is in compliance with both, the principle that ideas are not protected, and the doctrine of scenes a faire. And for the things that were protectable, it was decided by the Judge that the differences between each of the works of Dean, and Avatar overcome any superficial similarity.

  • Monkey Selfie can't be Copyrighted, U.S. Regulators Confirm

      The U.S. Copyright Office has decided to take the side of humans. The federal body responsible for registering copyright claims confirmed that a monkey, or for that matter, any other animal, that took a selfie did not own the copyright to the photo. Recently, several updates to copyright regulations and practices were published by the Copyright Office, which expressly chalked out examples of works that are not eligible for protection, namely, “a photograph taken by a monkey” and “a mural painted by an elephant.” The U.S. Copyright Office is crystal-clear that only humans qualify for copyright protection.

      The monkey example relates to a legal tussle between British wildlife photographer David J. Slater and Wikimedia, the nonprofit foundation behind Wikipedia, over a selfie taken by a monkey in Indonesia in 2011. The female macque snatched Slater’s camera and snapped a few cute pictures of herself, one of which became quite famous and made Slater some money.

  • Toyota Stole Research Co.'s Survey Methods, Jury Hears

      A Dallas market research firm, Rincon & Associates LLC, informed the Texas federal jury that Toyota Motor Sales USA Inc. was responsible for misappropriating its trade secrets relating to a multicultural and multilingual survey of minority groups, kicking off a trial that accused the famous automaker of exploiting proprietary research strategies. The firm alleged that instead of renewing its contract of 2007, to conduct a similar study, for gathering data on the car-buying preferences of African-Americans, Asians and Latinos, the automaker took its proprietary methodology and handed the contract to a different firm. Rincon claims Toyota exploited the company's talents and effort developing a strategy for Toyota to reach the most minority consumers, and that the automaker incorporated its methodology into a contract it later awarded to another firm. Toyota denied that the information Rincon provided was a trade secret or that it had agreed to keep it confidential, and also said that Rincon & Associates was contractually obligated to provide information about how the study was conducted. Toyota in January filed a counterclaim against the said firm and alleged that its performance of the study was unsatisfactory because it didn't adequately communicate the progress of the study and had an inadequate final presentation of the research. Toyota also claimed the return of a $61,885 overpayment to Rincon for its work on the 2007 study. However, Rincon testified that the amount claimed had been on the books as a credit against any future work his firm might have done for Toyota, like the follow-up study he expected to conduct. The U.S. District Judge granted partial summary judgment to Toyota, eliminating a quantum meruit claim from the suit but allowed the Rincon to move ahead with its trade secret, fraud and contract claims.

  • Google, Louis Vuitton Reach Truce in Advertising Fight

      Google Inc. and LVMH announced a truce recently to end more than a decade long legal wrangling over Google advertising practices that the designer believed promoted the online sale of counterfeit goods. Google's AdWords platform allows advertisers to buy up specific search terms, ensuring that their ads appear when users search for those words; Louis Vuitton has long claimed that Google's sale of the designer's protected brand names to third parties violated its trademark rights and aided knockoff retailers. The dispute snaked through European courts from 2003 to 2010, when the European Union's highest court ruled that Google couldn't be held liable. The court did say, however, that Google could be forced to remove ads if it was aware they caused consumer confusion, and sent the case back to a lower court.

      However, recently, the two companies signed an agreement to jointly fight against the sale of counterfeit goods on the Internet, putting to rest the legal fight.

  • Images of 'Bruce Lee' Falls within Definition of 'Artistic Work' and is Excluded from IPR Service

      The Appellant submitted before CESTAT that they entered into a license agreement with the Universal Studio Licensing LLLP, California, USA and as per the said agreement they were authorized to use the Universal property in the name and likeness of the legendary martial artist known as "Bruce Lee" as embodied in the visual images, which they used in mobile games. The Appellant further submitted that they paid a royalty for using the said property of Universal Studios. The main point to note here is that the visual images come squarely within the definition of copyrights as defined in Copyright Act and since copyright is specifically excluded from the IPR service during the relevant time, the question of levy of service tax on a copyright work under IPR service does not stand the scrutiny of law. Moreover, the Appellant has already been discharging service tax on the royalty payment under the category of "development and supply of mobile content service" under Section 65 (36c), with effect from 01/06/2007, and there has been no dispute concerning this in the Department. The AR admitted that, neither the notice nor the impugned order, spoke about the category of IPR under which the visual images of Bruce Lee would fall. However, he reiterated the findings of the adjudicating authority and submitted that the property received by the appellant fell under IPR services and hence, the appellant was liable to tax on reverse charge basis with effect from 18/04/2006 onwards. Noting that the issue lies in a narrow compass, the Bench after waiving the pre-deposit took up the appeal itself for consideration. Holding that the order is not sustainable, the same was set aside and the appeal was allowed with consequential relief.


  • News Updates

  • National IPR Policy on the Anvil

      Indian Minister for Commerce and Industry, Nirmala Sitharaman has announced the Government’s plan to draft a National IPR Policy to “safeguard national interests and bring clarity to existing laws.” The policy, which is expected to provide directions on IPR protection, will be drafted in a period of four to six months, and will be finalized after public debate and consultations. The Minister also stated that a think-tank of experts would be set up to advice the Government on various IPR issues. Indian Prime Minister Narendra Modi is scheduled to visit the United States, beginning Sep 30.

  • Design Protection for Wooden Honey Box

      Thomas George and Roy Varghese, both farmers and apiculture researchers, have been awarded design protection (Number 257987) for their wooden honey box design (named ‘Panniyur Honey Box’), which facilitates extraction of honey without disturbing the bee colony. The box comprises a single hole for bee entry and a plastic bottle for colony building. Once the plastic bottle is filled with honey, the bees move away to the wooden box and thus the honey can be extracted without damaging the colony. Using this box, 500 ml of honey can be extracted every two months.

  • Administrative Reforms at the Indian Patent Office

      A separate building dedicated to the functioning of the Delhi Patent Office as an International Searching Authority (ISA) and an International Preliminary Examination Authority (IPEA) under the Patent Cooperation Treaty (PCT), was inaugurated by Amitabh Kant, Secretary, Department of Industrial Policy and Promotion, Ministry of Commerce and Industry on Sep 8, 2014. During the occasion, a new payment gateway that facilitates online payments for e-filing using credit cards and debit cards of more than 70 banks was also launched. Additionally, the first issue of “IP Expressions”, a technical magazine aiming to showcase the knowledge and experience of officials of the Indian Patent Office, was also launched.

  • Personality Rights used to Block Release of Film

      In what could be considered as one of the first instances of an Indian celebrity making legal use of his/her celebrity rights, Tamil film actor Rajinikanth obtained an interim stay against release of the Hindi film “Main Hoon Rajinikanth.” Rajinikanth, who is known for his on-screen charisma, acting style and personality, alleged in his petition that his “name, caricature, image and style of delivering dialogues” were used in the film without obtaining his oral or written consent. Further, he stated that, by showcasing the character in the film as a “CBI Officer, stupid, part-time social worker, part-time contract killer and as a womanizer”, the film defamed his image and damaged his reputation and goodwill among the public. The interim relief was granted by Justice Tamilvanan, who stated that “As per Article 21 of the Constitution, everyone is entitled to lead a dignified life and no one can cause damage to the fame or reputation to any person against law.”

  • Father of Indian Comics Passes Away

      Pran Kumar Sharma, the “Father of Indian Comics” and an inspiration for subsequent generations of cartoonists, has passed away at the age of 75. Pran was the creator of the intelligent and witty cartoon character “Chacha Chaudhary.” The character, which was first created in 1969, was inspired by “the wise old man” in every family. Pran referred to Chacha Chaudhary as a man who “solved his problems with common sense, but with a touch of humor.” The cartoon was a hit with the masses and was liked by young and old alike. Other famous cartoon characters created by Pran include Pinki, Billoo and Raman.

  • Seminar on Pharma Patents Held

      Hindustan Chamber of Commerce, in association with Surana and Surana International Attorneys (SSIA) and Indian Drug Manufacturers Association (IDMA) (Tamil Nadu and Pondicherry State Board) organized a seminar on pharmaceutical patents titled “Patently Drugged” on August 18, 2014. The Chief Guest, Mr. S.V.Veerra Mani (President of IDMA and CMD, Fourrts India Laboratories Pvt. Ltd.), set the platform by talking on the need for Indian Pharma companies to concentrate on original R&D and the need for judicious use of compulsory licensing. The program comprised three technical sessions focusing on various aspects of patents of relevance to the pharma industry that were delivered by Mr. Venkatesh Viswanath (Patent Agent, SSIA), Mr. P. Ramesh Kannan (Senior Patent Analyst, SSIA) and Dr. S.P.Subramaniyan (Assistant Controller of Patents and Designs, Chennai Patent Office).

  • Five Indian Firms make it to Forbes’ Most Innovative List

      Forbes Magazine’s annual list of “World’s Most Innovative Companies” was released on August 20, 2014. The list, which is headed by California-based global cloud computing company Salesforce, features five Indian companies. While IT giant Tata Consultancy Services (57th) and auto giant Bajaj Auto (96th) have been retained from the 2013 list, FMCG major Hindustan Unilever Limited (14th), construction major Larson and Toubro (58th) and pharma major Sun Pharma (58th) are new entrants. Infosys, which was listed in the 53rd position in the 2013 list, does not find a place in the 2014 list.

  • Session on IP creation and protection

      TiE Chennai, in association with Surana and Surana International Attorneys (SSIA), organized an interactive seminar titled "Ten Important Considerations for Businesses in IP Creation and Protection" to discuss some of the do's and don'ts in respect of IP creation, protection & commercialization. The two speakers for the seminar Mr. Deepak Vaid, Senior Associate, Surana & Surana and Mr. Venkatesh Viswanath, Patent Agent, Surana & Surana, explained in detail some of the very important considerations that enterprenuers and businesses should have while considering creation and protection of their IP’s. The interactive session was well received by the participants.

  • IPO Plans Additional Strength to Beat Backlog

      The backlog of patent applications in India will be cleared within 18 months, the Government has stated. As part of the overhaul of the IP Office, the Government plans to add a further 1,000 officials for India’s patent offices, to shift a backlog which is said to involve nearly 200,000 cases. The country’s patent administration has judged on only one-third of the applications brought before it in the last seven years.