- Ex-parte injunction against Luxor for passing off Stabilo’s “POINT 88” trademark
The Madras High Court has passed an ex-parte interim injunction against Luxor Writing Instruments Pvt. Ltd., in a trademark passing off lawsuit filed by Schwan Stabilo Schwanhaeusser GmbH & Co. KG. - World renowned maker of writing instruments. Stabilo succeeded in obtaining the injunction against Luxor for passing off their stationery products, including writing instruments, under trademark "POINTO 80", which is deceptively similar to Stabilo’s “POINT 88” trademark. Apparently Stabilo’s “POINT 88” products are sold all around the world for more than 35 years and are ranked among the top selling pens in Europe.
- IPAB dismisses challenge to Kibow’s product patent
Kibow (Respondents), a US-based pharmaceutical company has won the patent litigation initiated by La Renon Healthcare Pvt Ltd (Appellants). The suit pertains to Kibow’s product named ‘Renadyl’, a supplement that reduces the need for kidney patients to undergo dialysis. Kibow secured both product patent as well as process patent for Renadyl. La Renon, which sells a similar drug under the name ‘Cudo’, filed a revocation petition before the Intellectual Property Appellate Board (IPAB) on grounds of lack of novelty, inventive step and not a useful invention. Kibow argued that the contentions of the La Renon are mere assertions and not substantiated by facts. On this basis IPAB upheld Kibow's patent and dismissed the revocation petition. This is a welcomed decision as "Renadyl" is lesser priced than "Cudo" and therefore is available at affordable prices.
- Toni & Guy vs. Toni & Girl
The question came up before the High Court of Delhi regarding passing off and infringement of trade mark "TONI & GUY" by the Defendant’s "TONI & GIRL". Plaintiffs are involved in marketing and manufacturing of hair products along with running saloons and other related services. The Defendant's SK cosmetics are involved in manufacturing and marketing bleaching preparations, cosmetics, creams, hair remover etc. Toni & Guy contended that the SK cosmetics are involved in a similar field of activity and are using a deceptively similar trademark. They also contended that the SK cosmetics products are not yet available in the market but have filed a trademark application for registration of similar mark "TONI & GIRL". The Court held that mere filing of an application cannot be regarded as a cause of action. The Court further said that when admittedly the SK cosmetics has not used the mark and has not invaded in the proprietary rights by either infringing or passing off, there can be no action as neither the goodwill or reputation of the Toni & Guy is lost nor has there been any passing off of the goods.
- Use of Kohinoor trademark upheld
A dispute regarding territorial restriction for the use of trademark ‘Kohinoor’ for rice, the Supreme Court dismissed the appeal filed by Satnam Overseas (Appellant) to restrict its rival Sant Ram’s (Respondent) use of the trademark Kohinoor to only six cities in the state of Uttar Pradesh (UP). Court held that the restriction would create a lot of complications and litigation as to the exact boundary of a particular city or district. The Court therefore upheld Sant Ram’s use of the trademark throughout the state of UP.
The Appellant initially filed a rectification application with the Registrar of Trade Marks to alter the entry of Respondent’ trademark “Kohinoor” on grounds of non-use of the mark. The application was allowed and the entry in respect of registered trademark was amended to restrict the Respondent’s use of the trademark to only a few cities in UP, on grounds of honest and concurrent use. Later, on a review filed before the Delhi High Court, the Court allowed the use of trademark to the entire State of UP. Aggrieved, the Appellant approached the Supreme Court by way of Special Leave Petition, contending that the High Court was unjustified in extending the use of the trademark to the entire state, as against the Registrar’s order. Supreme Court observed that the Delhi High Court had allowed Respondent’s concurrent use in UP due to ample evidence produced in the form of invoices showing sales all over UP. The Registrar had also found that there was definite use of the trademark ‘KOHINOOR” in respect of rice in class 30. Hence there was cogent reasons for extending the use of the trademark to the whole of UP.
- Vringo Infrastructure gets injunction for patent infringement
Vringo Infrastructure sought injunction against Xu Dejun from infringing their right in the registered patent titled ‘Mobile Station Operable with Radio Access Network and a Packet Data Serving Node and a Method for Operating Such Mobile Station’. It was claimed that the Patent is one of the essential ingredients of the technology used in CDMA2000 and CDMA2000. The plaintiffs placed on record a) the web-pages of the site of the defendants which demonstrate the use of the Patent and b) expert’s report.the mere fact that the Xu Dejun are using CDMA 2000 and CDMA2000 ipso facto means that the Patent is used. Thus it was logically concluded that the Patent is a Standard Essential Patent (“SEP”). Considering the evidence placed on record, the Court granted the injunction. The instant Order may weaken the position of the Xu Dejun if it decides to negotiate with the petitioner on royalty.
- Trademark 4T Premium held descriptive
Valvoline Cummins, manufacturers of automobile and industrial products under the trademark "VALVOLINE 4T PREMIUM", filed an infringement and passing off suit against Apar industries for use of trademark "4T PREMIUM". Valvoline contended that they do not claim any exclusive rights over "4T" but on composite mark "4T PREMIUM" and stated that Apar is infringing over their registered trademark, thus causing confusion and deception. Apar contended that ‘4T’ and ‘premium’ are descriptive in the oil products category and that the trademark ‘4T PREMIUM’ of Valvoline has been wrongly registered. Valvoline cannot claim exclusivity over "PREMIUM" as it is a laudatory. The Delhi High Court considering that overall packaging of Valoline and Apar, held that "AGIP 4T PREMIUM" was not similar to "VALVOLINE 4T PREMIUM" and therefore denied to grant injunction to Valoline.
- Iskcon vs. Iscon trademark infringement
The International Society for Krishna Consciousness (ISKCON) has filed a case against J.P. Infrastructure Pvt. Ltd, before the District Court in Ahmedabad for construction of a mega mall name “Iscon” near the ISKCON temple premises in Ahmedabad. According to ISKCON use of a similar logo and word ‘Iscon’ as the name of the mall constructed next to the temple will constitute trademark infringement as the firm, J.P. Infrastructure Pvt. Ltd. is using the goodwill generated worldwide by the ISKCON society. Further, the Trust claimed that there was misrepresentation on part of the realty firm as the use of its trademark was giving a false impression to the public that Iscon Mega Mall had been set up under the aegis of ISKCON.
- 'Jai Ho' and its trademark issue
Salman Khan's “Jai Ho” is all set to release this January despite the legal trouble of his film's title. After the success of the song "Jai Ho" by A.R. Rahman in the movie Slumdog Millionaire, Mr. Rahman had trademarked "Jai Ho" and has contested the use of the said name as Salman Khan's movie title. The instance involves two major trademark issues- (i) can songs/ film titles be trademark protected? and (ii) can a phrase like ‘Jai Ho’ which has historic significance be monopolized?. Only time will tell.
- BMS signs Licence Agreement with Medicines Patent Pool
On 11th December 2013, drug major Bristol Myers Squibb entered into a License Agreement with United Nations backed Medicines Patent Pool(an organization that helps in lowering the prices of HIV Medicine and facilitating higher accessibility for the AIDS drug “Atazanavir”. Patent holders are paid royalties by those using the patents, with the pool managing the negotiations, the licensing arrangements and payments. Gilead Sciences was the first pharmaceutical company to enter into a licence agreement with MPP.
- One million Global Patent Filings
According to WIPO’s current report, the total number of patent grants issued worldwide for the first time exceeded the one million mark in 2012. China topped the ranking for both the source and the destination for patent filing, utility models, trademarks and industrial designs. The patent filings are mostly in material metallurgy technologies. India reported an approx 3.9% growth in patent filings. The report also states that the applications filed before the Indian IP office concentrated more in the organic field.
- Bhojpuri musicians challenge 2012 Amendment of Copyright Act
A group of artists who compose and perform devotional music and Bhojpuri music challenged the third & fourth provisos to Section 18 and the second proviso to Section 33 (1)of the Copyright Amendment Act . The first set of provisions is the mandatory-royalty-sharing which mandate sharing of royalties with the composer and song writers. The second provisio requires everybody in the music industry to transact their business through a copyright society. Musicians argue that the newly added provisos have disrupted the right to licence their works thereby endangering their right to practice their profession and earn a livelihood, a right given to them under the Constitution. The challenge to proviso to Section 33(1) is based on the fundamental right of citizens to form associations. Musicians argue that since Bhojpuri and devotional music industry is relatively small compared to the film music industry, it would have little or no say in determining the distribution scheme for unlogged royalties collected by a copyright society. This would clearly harm the commercial interests of the smaller non-film music industries. Moreover they argue that the fundamental right to create an association includes a right to not be a part of an association and that any provision forcing the unwilling petitioners to join an association is unconstitutional.
- Copyright in Character - GUTTHI issue
A public notice issued by the producers of a famous comedy show raised many eyebrows as to whom the character “Gutthi” belongs. Sunil Grover, who played the character in a popular TV show “Comedy Nights with Kapil” had exited from the show. The producers apprehended that he might use the same character for other rival TV shows/channels. While fellow artistes opined that Gutthi has become popular because of the efforts of the actor playing it, Viacom18 has claimed that they have created and own the character ‘Gutthi’. According to Sunil Grover, he had portrayed the character of Gutthi on other TV shows prior to Comedy Nights with Kapil. This brings up an important issue of copyrightability of characters played by artists and whether such IP rights lie with the artist or the producer.
- Drive initiated by the Trademark office
In a recent notice issued by the Office of the Controller General Patent, Designs and Trademarks, the Indian Trade Marks Registry has decided to initiate a special drive during the month of December 2013 and January 2014,for disposal of requests for recordal of post registration changes in the registered trademarks, including their assignments". In view of the pendency of innumerable such cases, such initiative has been welcomed by everyone. All registered owners can take appropriate steps to utilize the opportunity and ensure that the records are set right.
- National IP Awards
The Controller General of Patents, Designs and Trademarks has notified the National Intellectual Property Awards with an objective to recognize and reward IP creators/innovators who have contributed to harnessing the country's intellectual capital and creating an eco system that boosts creativity and innovation. The awards will be presented to the awardees at an event in Delhi, organized by the Intellectual Property Office (IPO) in collaboration with the Confederation of Indian Industry (CII). Indian industry (micro, small, medium, large), both private and public sector, as well as firms and societies, registered in India; Indian subsidiary of a transnational corporation; Indian Academic and R&D institutions; and individuals who have IPRs granted / registered by the IPO, during the last five years are eligible for applying for this award. Each award would also carry a cash prize of INR one lakh.
- Rockstar Consortium & Google
Google has filed a lawsuit against Rockstar Consortium - a patent holding group - claiming that its patent campaign is unfairly targeting Google's Android partners and customers. Apple along with Microsoft, Ericsson, Blackberry and Sony purchased 4000 patent and patent applications from Nortel, a communication company that went bankrupt in 2009. This team is now called the "Rockstar Consortium". The District Court complaint filed in San Jose, California, says Rockstar's litigation campaign is placing "a cloud on Google's Android platform and is threatening Google's business and relationships with its customers and partners, as well as its sale of Nexus-branded Android devices."The ordinal dates back to 2011 when theses companies were engaged in a tit-for-tat competition to purchase Nortel Network's 6,000 patent portfolio. While Google tried to buy the Nortel patents for as much as $4.4 billion, it eventually lost out in an auction to the Rockstar Consortium, which bought the patent bundle for $4.5 billion. The present suit is still pending in Courts with both sides keeping no stone unturned to put forth an arguable case.
- Rolex's Trademark Infringement
An interesting case of trademark infringement came up before the Federal Court Los Angeles. World’s largest watch maker Rolex filed a suit against Melrose Jewelers and its owner Krisnan Agarwal for selling fake and counterfeit watches through their shop and website. Rolex said that in most cases they are not able to protect their watches from being counterfeited and sold. Rolex accused Agarwal of confusing the consumers that they are buying original Rolex watches. Agarwal contended that he sells original Rolex watches and will defend himself.
- Protection of BMW’s interest
The makers of the World’s largest automobile company BMW approached the Irish Court to protect the illegal use of their trademark by a mechanic Edward Ronayne on the internet. In his defence Edward stated that a 1997 ruling from the European Court of Justice permitted him to use the name in an internet portal. The court disagreed stating that this act is not permitted by law and therefore asked him to immediately desist from using the same.
- Seminar on Intellectual Property Rights
All India Manufacturers' Organization (AIMO), in association with Surana & Surana International Attorneys (SSIA) organized a seminar on "IPR for Business Competitiveness and Growth". The program was inaugurated by the Chief Guest, Hon'ble Justice Mr. K.N. Basha (Chairman, Intellectual Property Appellate Board). Justice Mr. Basha set the platform in his keynote speech by emphasizing the importance of IPR protection and urged private sector to invest more in R&D and innovation. Other speakers for the seminar were Dr. Vinod Surana (CEO & Partner, SSIA), Ms. Janaki Ambat (Sr. DGM, TAFE), Mr. Karthick Babu (Head – R&D, Dorma India), Mr. Kasthuri Rangan (Ex‐VP – ER&D, Turbo Energy Ltd) and Mr. Deepak Vaid (Senior Associate, SSIA).