- 'Gati' Held to be a Common Word
Gati Courier, a logistics solutions provider, filed a suit before the Delhi High Court against Gati Dance Forum (Defendant), a registered non-profit charitable trust that works to support, facilitate and promote emerging artists working in the field of dance. Gati Courier contended that the Defendant is carrying on their work under a name that is identical to theirs. The Defendant stated that their line of services is different from that of Gati Courier, leaving no scope for deception or confusion. The Court, on dismissing the injunction, stated that the name Gati is a common Hindi/Sanskrit word. A simple search at the Indian Trade Marks database reveals that there are numerous companies using the mark GATI for various services. Likewise, there are companies engaged in different businesses that use GATI as an integral part of their company name. The Court further held that it is not in dispute that both the parties are engaged in different fields of activities. No merchandise goods are involved in the business of the Defendant. Hence, chances of confusion and deception in the minds of customers of the both the businesses is nil.
- "s. Oliver" - A Well-Known Trade Mark
s. Oliver, a German company engaged in fashion and lifestyle products including clothing, obtained an interim injunction against the mark OLIVE of Rasul Exports, engaged in clothing. The Delhi High Court, while granting the injunction, relied on the grounds that a prior registered proprietor has exclusive rights over the mark. Moreover s. OLIVER being a well known mark ought to be protected. However, keeping in view the circumstances of the case, the Court allowed Rasul Exports to dispose the existing stock before December 31, 2014.
- Court's Ruling in Respect of Generic Words
The Delhi High Court has held that there is no prima facie infringement over the use of the word "TODAY". Living Media sought an injunction against Alpha Dealcom from launching a news channel named NATION TODAY, stating that the usage of word TODAY infringed the rights of Living Media. Living Media contended that they are the owner and publisher of magazines and news channels by the name "INDIA TODAY", "HEADLINES TODAY", "AAJ TAK" etc. They averred that TODAY has acquired the status of a well known trade mark and that TODAY has become synonymous with the goods and services offered under their name. Alpha Dealcom argued that TODAY is a common English term and nobody can monopolize the said term. They also stated that Living Media's mark was a combination of terms and not the term TODAY per se. Also it was brought to the notice of the Court that in their bid to register the INDIA TODAY before the Trade Marks Registry, Living Media had submitted that INDIA TODAY is dissimilar to the already existing trade mark PUNJAB TODAY. The Court, rejecting Living Media's plea, held that granting monopoly over a word like TODAY which is so closely connected with the news industry, would lead to unfair competitive advantage. The Court also held that monopolizing generic words would set a wrong precedent that would be against the very soul of the Trade Mark Law.
- IPAB Directs Schering's Rejected Patent for Reconsideration
Upholding an appeal preferred by Schering Corporation against the Order passed by the Asst. Controller of Patents, Justice Mr. K. N Basha, Chairman of the IPAB held that the Order passed by the Asst. Controller is cryptic and non-speaking. Each and every aspect of the findings of the Appellant was not properly considered. Provisions of Section 15 gives the Controller powers to either afford opportunity to the applicant to make amendment in the application or to refuse the application on failure to submit any amendments. However, the Controller mechanically refused the application instead of exercising the above discretion. The Appellant contended that the Order rejecting its patent was on two grounds (1) that the Appellant failed to provide data regarding the therapeutic efficacy and (2) the claim lacked inventive step.
- The End of 'Orchid' Saga
The Madras High Court rejected Kamat Hotels (India) Limited's writ petition against the Order passed by the IPAB dismissing the rectification applications filed under Section 57 of The Trade Mark Act, 1999 for removal of the trade mark "ROYAL ORCHID" and "ROYAL ORCHID HOTEL" belonging to the Royal Orchid Hotels Limited. Kamat Hotels contended that they are the prior adopters of the mark "ORCHID" for hotel services. Whereas Royal Orchid Hotel in its response stated that they have been using the mark "ROYAL ORCHID" in respect of hotel services since 1990. Being in the same industry, Kamat Hotels ought to have known about the existence of a prior existing mark. The Court held that the IPAB has in detail considered the contentions of both the parties and rightly rejected the rectification applications.
- Design Application Rejected for Lack of Novelty
Delhi High Court rejected the suit for injunction filed by Steelbird Hi-Tech India Limited against S.P.S Gambhir (Defendant) for blatantly copying the design of their helmet "STEELBIRD". Steelbird claimed novelty primarily for the "beak shaped design" of the helmet. Accepting the contentions of the Defendants that "beak shaped design" is common to trade and other helmets with such design were already available in the market, the Court held that, a mere glance at Steelbird's product reveals many similarities with the designs of other leading helmet brands. The Court further held that there are various manufacturers already making such designs and marketing across the world. Addition of small features here and there would not make any difference which could only be called as routine type of trade variations as per the demands of customers for their convenience and advantage.
- Squatting of Well-Known Trade Mark 'TATA'
In a trade mark infringement suit, TATA Sons Ltd. successfully enforced its trade mark rights against domain squatting and misuse of their trade mark. Considering the fact that TATA is a well known trade mark enjoying an expansive reputation and goodwill, the Delhi High Court restrained Gina Kilindo (Defendant) from using any domain name and/ or engaging in any activity which will result in the dilution and tarnishment of the Well-Known trade mark TATA. Gina Kilindo had registered domain names that included the trade mark TATA Agro and was trying to portray to customers and public that she is associated with the TATA Group. The Court, after considering the facts and documents submitted by TATA Sons, held that the use of the mark TATA by the Defendant amounts to false trade description and may induce consumers to believe that the Defendant is affiliated with the house of TATA or that the business of the Defendant is endorsed by TATA.
- Delhi High Court Reads "Willfuness" into Sections 8 and 64 of the Patents Act
The Delhi High Court narrowed the scope of its previous ruling in Chemtura Corporation v. Union of India with its new ruling in Koninklijke Philips Electronics N.V v. Maj. (Retd.) Sukesh Behl. In Chemtura, the Delhi High Court ruled that the foreign filing disclosure requirements under Section 8 of the Patents Act was a mandatory requirement and a failure to provide such information would be an absolute ground for revocation. However, in the present case, Justice Muralidhar accepted Plaintiff's argument that foreign filing information was not suppressed willfully and that the information was not disclosed inadvertently because the Plaintiff agent accidentally missed one of the pages while submitting the information. The Judge further noted that the patent would not have been granted in the first place if the foreign filing information had properly been submitted was not true. As a result, failure to disclose foreign filing information is no longer an absolute ground for patent revocation.
- 'Brahmos' Held to be a Well-Known Trade Mark
Recently, Delhi High Court granted an interim injunction to BrahMos Aerospace Ltd., restraining FIITJEE Ltd. from using the name "Brahmos". BrahMos Aerospace is a Government enterprise set up under the Ministry of Defense whereas FIITJEE is an institute offering training for competitive examinations. FIITJEE was using the name Brahmos for an online aptitude test. The Court granted an interim injunction on the ground that Brahmos is a well known trade mark and can therefore be protected even in relation to dissimilar services under Section 29 (4) of the Trade Mark Act. During the proceedings, BrahMos Aerospace informed the Court that they had received several phone calls and emails from students who were confused with the said test offered by FIITJEE, and enquired whether taking the said test would increase their chances of employment with BrahMos Aerospace. The name of the test has since been changed to 'BRAHMOJUS'.
- Google and Cisco Sign Cross-License Agreement
In a bid to strengthen their individual patent portfolios and protect themselves from patent trolls and privateers, Cisco and Google announced long term patent cross-licensing agreement, which covers broad range of products and technologies. The agreement allows both companies to extract significant value from each others patent portfolio as part of a larger effort to curtail nuisance lawsuits. The agreement encumbers the right of patent itself, meaning that they cannot be used against Google or Cisco, even if one company sells the patent to third party.
Recently, Nokia & HTC also entered into a patent and technology collaboration agreement, which helped Nokia gain access to HTC's LTE patent portfolio. Both parties decided to settle pending patent litigations between them which are spread across 7 countries and multiple technology areas.
- Museum Capitalises on the Success of Novel's Name
Author of the classic Pulitzer Prize winning novel" To Kill A Mocking Bird", Harper Lee, reached a settlement on a federal trademark law suit filed by her against Monroe County Heritage Museum Inc. The lawsuit filed in the US District Court for the Southern District of Alabama, in response to the Museum's Notice of Opposition against Lee's Trademark application (filed for use of her novel's name in clothing), accused the Museum of selling souvenirs that carried her name and her novel's name without compensating her. Additionally she also accused the Museum of cyber squatting as the Museum was using the domain name tokillamockingbird.com. Post the settlement the Museum's domain name has been changed to monroecountymuseum.org. Souvenirs are no longer offered for sale online.
- Patent for Virtual Liver to Bengaluru-Based Company
A US Patent (8,645,075) was issued to Strand Life Sciences Pvt. Ltd (Bengaluru) founded by a group of professors of the Indian Institute of Science. The Patent issued on February 4, 2014, relates to a method of predicting organ toxicity which can act as a "virtual liver” for testing drugs. The virtual liver is a ready to use software simulation which mimics the normal liver functions and generates likely outcomes of new drugs before the drug is tested on animals or humans. The company has also applied for patent before the EPO.
- Celebrities to be Held Liable for Products they Endorse
Central Consumer Protection Council (CCPC), the apex body for consumer protection in India can now hold celebrities liable for false claims in relation to the products endorsed by them. If found liable, a celebrity may have to pay compensation to consumers. Celebrities will be held liable if it is within their knowledge that the statement made by him is false or misleading or is made recklessly.
- Mahindra's Million Dollar Challenge to Innovators
Mr. Anand Mahindra, Chairman of the Mahindra Group, has thrown a million dollar challenge to any innovator who can provide a solution to India's two main problems i.e. traffic stress and electricity shortage. The challenge is to build a driverless car for congested traffic ($700,000 award) and a Do-it-Yourself roof top solar kit for household needs that carries the promise of making energy available and affordable to all ($300,000). This challenge is a part of Mahindra's "Rise Prize", aimed at promoting breakthrough technological innovations in India.
- New Premises for IPAB Chennai
Stone laying Ceremony for the new premises/building of IPAB, Chennai was held on February 22, 2014. The foundation stone was laid by Hon'ble Justice Mr. F.M Ibrahim Kalifulla, Supreme Court Judge, in the presence of Dr. E.M. Sudarsana Natchiappan, Minister of State for Commerce and Industry. The new building is to be situated at Kelambakkam on the outskirts of Chennai and will be spread across on seven acres of land.
- The Patent (Amendment) Rules, 2014 Notified by the Government of India
The Patent (Amendment) Rules, 2014, has been notified by the Government of India on February 28, 2014. According to the new rules, the Indian Patent Office has revised the fee for filing and prosecution of patent applications with immediate effect. The amendment has brought two significant changes: (a) Applicant has now been classified into three categories, viz natural person, small entity and other than small entity [before amendment, there were only 2 categories, viz natural person and non-natural person]. (b) while fees for natural person has been increased by 60% and fees for small entity remain the same as previously applicable to a non- natural entity, fees for entity other than small entity have been doubled. Small Entity is as defined under clause (a) & (b) of subsection 7 of the Micro, Small and Medium Enterprises Development Act, 2006. The new rules are friendly towards individuals and small entities. It remains to be seen if they achieve their intended effect.
- Boeing Comes Out Strongly in Support of India's IPR Framework
At a time when Big Pharma is lobbying with the US Government to put pressure on the Indian Government to strengthen their IP protection and enforcement in the country, aviation giant Boeing, in its testimony to the US Trade Commission's hearing on "Trade, Investment and Industrial Policies in India: Effects on the US Economy" has come out strongly in support of India's IPR framework. Boeing has stated that India's legal framework "is adequate to protect IP with no known cases of IP violation involving Boeing's activities in the aviation and defense sector". Additionally the company has stated that India's IP laws are comparable to those in other developed countries.
Along the lines of Boeing, Honeywell has also come out in support of India's IP framework.
- National Seminar on IPR Held in Bengaluru
All India Manufacturers' Organization (AIMO), in association with Surana & Surana International Attorneys (SSIA) organized a national seminar on "IPR for Business Competitiveness and Growth" in Bengaluru on February 28, 2014. The program was inaugurated by Chief Guest, Mr. H. V. Harish (Head of Bangalore Chamber of Industry and Commerce). Dr. Vinod Surana (CEO and Partner, SSIA) in his keynote speech, highlighted the importance of commitment by leadership to innovation. He also elaborated on how Indians can do "more with less", as illustrated by TATA Nano and ISRO's mission to Mars. Other speakers for the seminar were Ms. Astha Mittal (CEO, Jizz Design), Mr. Deepak Vaid (Senior Associate, SSIA), Mr. Venkatesh Viswanath (Patent Agent, SSIA) and Mr. Harikrishna Holla (Advocate, Holla Associates).
- Of Punches and Counter-Punches: the Ad-War Between Nestle and Cadbury
In the beginning of February 2014, Cadbury released a commercial for its "Perk" chocolate. The commercial, which hit out at Nestle's "Munch" for being light-weight, depicts one of two brothers leaving the house for receiving a chocolate that was lighter in weight and had lesser layers of wafer when compared to the chocolate received by his brother. The father is shown reading a letter left for him, which is placed beneath a blurry half-unwrapped chocolate (which is similar to Nestle Munch).
A couple of weeks later, Nestle released an ad in which the spotlight was on quality, rather than quantity. Nestle retained the same family setting for their new advertisement, the only difference being the other brother leaving the house because of his chocolate being heavy and less tasty. With this new Ad, Nestle has relied on the old adage "Quality is better than quantity”.