- "ALL ROUND" Trade Mark Dispute
Anchor and Proctor & Gamble (P&G) again locked horns before the Delhi High Court, this time for their mark “ALL ROUND”. Anchor stated that the use of the words “ALL AROUND PROTECTION” by P&G infringed the rights available to them under the Trade Marks Act. On the first contention by P&G that Anchor’s mark is descriptive/ generic and therefore is not capable of distinguishing the goods, the Court reiterated the principle of aprobate and reprobate which essentially means a person cannot say one thing as valid for one situation and then turn around and say the same to be void for his advantage. Since P&G had themselves applied for registration of “ALL AROUND PROTECTION” they cannot say that “ALL ROUND” does not deserve protection. Secondly, on the issue of disuse of Anchor’s mark since it was not used by Anchor, instead was using ALL ROUND PROTECTION the Court held simply by adding a suffix or a prefix the registered trade mark does not fall under the guise of disuse, especially when the prominent part of the mark still subsists in the Register. Thirdly, on the contention of infringement, the Court keeping in mind the principle of overall look and feel opined that the features in both the products were identical and therefore granted interim injunction to Anchor.
- 'Phony' Similarities
The Delhi High Court granted relief to s. Oliver Bernd Freier GMBH & CO. KG for their trade mark s. OLIVER on basis of phonetic similarity to the mark belonging to Jaikara Apparels. The Court held that even though there is little similarity between the two marks, the ocular comparison is not always the decisive test and the resemblance between two marks must be considered with reference to the ear as well as the eye. The close affinity between the sounds of the two marks makes it a fit case to be put under the purview of trade mark infringement and passing off. Also, on the defence taken by Jaikara Apparels on delay in filing the suit, the Court held that mere delay in filing the suit cannot be a sufficient reason to grant relief of injunction. However, due to the little similarity between the visual differences of the mark, the Court held that the infringement cannot be a willful one and therefore exempted Jaikara Apparels from damages.
- War of TIME
Triumphant Institute of Management Education Pvt. Ltd (TIME) pulled Aspiring Mind Assessment Pvt. Ltd. in a suit for infringement for the mark AIMCAT which was coined by TIME for their All India Mock Cat Test. Aspiring Mind was using the mark AMCAT for their online employability assessment test. On grounds of visual differences and since the class of consumers dealing with the services of TIME and Aspiring Mind are educated, there was no chance of confusion and/ or deception between the two marks. The Court rejecting the contentions of TIME stated that both the parties were operating in their own sphere and hence dismissed the suit.
- Of Misuse and More
In a one of its kind case, the Delhi High Court held “copyright misuse” does not constitute a legitimate defense for copyright infringement in India. This judgment was held in Tekla Corporation, Finland and Tekla India Pvt. Ltd when the prior bought a suit against the latter claiming to have a copyright in a software programme known as Tekla Structures which was installed by Tekla India without the authorization of Tekla Corporation. With one of a kind defence, Tekla India argued that their actions did not constitute infringement as the terms of the copyright license such as bundled maintenance service agreements and training fee, exorbitant penalties, etc constituted misuse of copyright by the Tekla Corporation. It was admitted by them that this defense does not exist in the Indian Copyright Act, but they claimed that it was an equitable defense that can still be considered by the Court. The Court however failed to see merit in the defence of Tekla India on grounds that nothing outside the purview of the Copyright Act can be taken as a defence. Moreover, the Court opined that the present case was one of copyright infringement and when there is conflict between law and equity, law will prevail over equity.
- Pharma 'Trade Mark' Wars!
The myth of the Pharma sector mostly known for its patent wars has now been broken. With the Delhi High Court’s decision in Wockhardt v Remed Healthcare over the trade mark ‘Mericobal’ being similar to ‘Mericobal Viva’. The Court held that there is phonetic similarity between the two. On the question of use and registration the court held that there can always be a gap between the actual use and date of registration of trade mark. Such gap does not automatically disentitle the registered proprietor of his rights. The Court held Remed Healthcare’s mark ‘Mericobal’ to be similar to Mericobal Viva of Wockhardt and therefore restrained Remed Healthcare from using the same.
- Chocolately Issue
Mars Inc., one of the majors in the confectionary sector, filed a trade mark infringement suit against Hersheys Co. before the US District Court, stating that Hershey’s ‘Malteser’ is similar to Mars ‘Maltesers’ with similar colored and designed package. Mars also bought to notice of the Court, the loss of reputation suffered by them due to similar name adopted by Hersheys. It will be interesting to see the outcome of this case which is pending before the US District Court with both sides vigorously defending their litigation.
- Federal Circuit Rules against Patenting of Cloned Animals
The nearly ten-year old saga to patent Dolly, the first mammal to be cloned from an adult cell has finally come to an end with the US Court of Appeals for the Federal Circuit upholding the USPTO's decision in rejecting the claims for Dolly and any other cattle, sheep, pigs and goats. Cloning refers to the process of producing a replica of an organism. Clones may be produced naturally (identical twins) or may created artificially. Timothy Dyk, one of the judges in the three-judge panel wrote that "Dolly's genetic identity to her donor parent renders her unpatentable". The decision has generated mixed responses in the US. Robert Cook- Deegan, a genetics policy expert at Duke University noted the decision is a straight forward interpretation of the recent US Supreme Court ruling in Association for Molecular Pathology v. Myriad Genetics in which naturally occurring DNA sequences were held to be products of nature and thus non-patentable. Others like Gene Quinn, founder of IP Watchdog feel that the decision could have wide ramifications and could lead to the death of personalized medicine.
- USTR Commends Indian Copyright Law
In its 2014 Special 301 Report, the United States Trade Representative has commended the Indian Government and the judiciary (especially the Delhi High Court) for their proactive role in copyright enforcement. The Report specifically states that Indian copyright law is "one of the strongest and the best in the world". The Report further goes onto state that Indian law provided copyright protection to computer programs earlier than US law. In addition, the Report lists the administrative measures taken by both the Central and the State Governments to protect copyright such as Copyright Enforcement Advisory Councils and Enforcement Cells.
- India's IPR Regime Backed by Three Major US-Based MNC's
Boeing, Honeywell and Abbott have strongly defended Indian IPR regulations in their respective submissions to the United States Trade Commission. While Honeywell has gone on record to state that the nation's IPR framework was "key to its engineering and technology presence in India", Abbott has stated that it has had a positive experience in India thus far. Abbott has further stated that it is committed to a long-term presence in India and that India is a priority country for investment. The submission from Abbott, which has more than 100 granted patents in India, is especially significant, given that Pfizer is one of the companies significantly lobbying the US Government to pressurize India into changing its IP protection and enforcement mechanisms for drugs.
- New Trade Mark Law Comes into Effect in China
The third amendments to the Chinese trade mark law came into effect from May 1, 2014. The amendments are aimed at addressing the major issue of trade mark grabbing in China, which earlier followed a first-to-file system. The amended law now recognizes the prior use of trade mark and clearly states that application for registration and use of a trade mark shall be based on good faith. Further, the amended law even recognizes the prior use of designs and/or shapes that may later be used as a trade mark and/or 3D mark. The law also provides mechanisms for the cancellation of grabbed trade marks.
- Powdered Alcohol Approved in the United States
The United States Alcohol and Tobacco Tax and Trade Bureau has approved seven flavors of powdered alcohol from a new brand named "Palcohol". The product is designed in such a way that a user can add water and drink directly from the pouch. Since the approval, the product has been criticized heavily, with several people, including New York Senator Charles Schumer calling on the US Food and Drug Administration to ban the product. In a video response, the founder of Palcohol Mark Phillips directly addressed the main criticisms of his product. He explained that snorting would be very difficult and would hurt a lot and that a pouch of Palcohol is significantly larger than a "single-serving bottle of liquor", thus making it almost impossible for a user to sneak it into venues such as movie theatres. The website of the company states that the product has potential applications in hospitality (airlines and hotels), medical (antiseptic, especially in remote areas), manufacturing (livestock supplement and windshield wiping fluids) and energy industries (fuel). The product cannot be released until the packaging labels have been approved.
- Work on IPAB Premises Stalled
In our previous issue, we had reported regarding the stone laying foundation of the new premises of Intellectual Property Appellate Board (IPAB) in Kelambakkam, Chennai. However, Yellow Box has now given to know that the IPAB is now considering a relook at the proposal due to various practical as well as cost issues. IPAB may consider the location of their new premises to be shifted from Kelambakkam to Tondiarpet due to its proximity to main parts of the city and the Madras High Court.
- Stakeholders' Meeting with Controller General in Chennai
A meeting of stakeholders was organized by the Chennai Patent Office on May 22, 2014. Various important patent related issues were discussed, including the clearing of backlogs, discounted rate of filing for educational institutions, need for a user friendly website and online filing payment systems. The Controller General came up with a plan for the clearance of backlogs, which involved identification of the patent office with most backlogs in each of the four fields of specialization and assigning backlogs from the slowest patent office randomly to an examiner/Controller from any of the other patent offices. In case of a hearing, the applicant/agent could attend via video conferencing from their home patent office. Trademark related issues such as problems with online filing, fee receipts not being received on day of filing and the well-known trademark list were also discussed. The Controller General gave his assurance that necessary action would be initiated to solve the problems at the earliest.
- ICSI One Day Seminar on IPR Held
The Institute for Company Secretaries of India (ICSI), in association with Surana and Surana International Attorneys ("Knowledge Partner") hosted a one day seminar on Intellectual Property Rights, on June 7, 2014, at the ICSI-SIRC (Southern India Regional Council) House in Nungambakkam, Chennai. Hon'ble Justice K. N. Basha (Chairman, IPAB) inaugurated the seminar and delivered the keynote talk. In his talk, Justice Basha emphasized the importance of section 3(d) and compulsory licensing provisions in the Indian Patents Act and their role in providing access to affordable medicines. The topics covered included Trade Marks Act, Patents Act, IP management and litigation strategies.