News Updates

The Commercial Compliance & Consumer Protection (CCCP) sector in the Department of Economic Development (DED) in Dubai has launched a first of its kind electronic intellectual property gateway in the region. The gateway will enable users to file and receive complaints on trademark infringement through the DED’s website. The gateway automates all procedures relating to infringement issues and seeks to protect the rights of trademark owners and enable businesses to grow sustainably as part of achieving Dubai’s overall economic development strategy and reinforcing trust between the public and private sectors.
Mohammed Ali Rashed Lootah, CEO of the CCCP said, “The Department of Economic Development is keen to provide advanced services for improved satisfaction and convenience of investors and businessmen. The IP Gateway ensures added value for trademark owners, law firms, IP agencies and dealers as applicants will be able to file a complaint and get the case file opened electronically on within 10 minutes from anywhere in the world. The applicant can similarly see details such as the action taken and confiscated goods, without having to visit our offices or submitting applications manually.”
The portal will start receiving complaints by September 2016.
Source: IP Era

The Controller General of Patents Designs and Trademarks issued a public notice dated July 28, 2016 regarding the automated process of generation and issuance of a Registration Certificate. The notice states that from August 1, 2016 the Registration Certificate will be generated through an automated system in accordance with the relevant provisions of the Trade Marks Act & Rules there under and shall be made available to the applicants or to their authorized agents.

BMW is looking into whether Google has infringed any trademark rights on setting up its new company "ALPHABET" INC, which is also the name of a BMW subsidiary company. BMW is mainly examining if this could have any implications over their trademarks.
In order to prove a trademark infringement, both the brands would have to offer similar goods and services and BMW would have to show that the new Alphabet creates a likelihood of confusion between the two brands, among customers.
However, a legal dispute is currently unlikely as Google does not intend for this company to be a consumer brand but only a platform for Alphabet companies that have the independence to develop their own brands.

IDBI bank had placed trademarks of newspapers Deccan Chronicle, Andhra Bhoomi, The Asian Age and Financial Chronicle on an e-auction on June 24 2016. The trademarks were owned by DCHL (Deccan Chronicle Holdings) which had been declared a willful defaulter by a dozen banks.
IDBI bank said that DCHL, along with the other co-owners, had pledged the trademarks. Due to failure on the part of DCHL to repay the financial assistance provided to it, IDBI Bank had decided to auction the trademarks. Unfortunately, it did not receive any bids for the auction and thus the process is now under review for further action.

In an interesting development, the "Times of India " recently issued a warning to "Guerrilla Advertisers", who use the Times of India's newspapers for engaging in illegal insert advertising, about the negative legal ramifications that could result from this unfair trade practice.
Accusing insert advertisers of misusing the "Protected intellectual Property of the Times Group" the warning states that the insertion of these unauthorized inserts amounts to an undue invasion of the private space that belongs to the Times of India. Framing the debate from the vantage of IP infringement has provided TOI the moral high ground although it isn't clear what precise legal remedies are open to TOI to clamp down this practice.

Case Updates

The Japanese automobile giant Toyota filed a case back in 2009, on a proprietary firm and a company named Prius Auto Industries and Prius Auto Accessories Pte. Ltd., respectively, for using their trademark "PRIUS", which is the first hybrid car in the world. In addition to this, the accused company was also selling indigenously manufactured spare parts under the trademarks Toyota, Innova and Qualis, along with Toyota's official logo.
After seven years of legal battle, the Delhi High Court has delivered its judgment in favour of the Japanese car manufacturer. One of the most heated trademark trials in the country has concluded with the Delhi High Court acknowledging Toyota's claim to be monetarily compensated for the dishonest misuse of Toyota's trademarks. The Defendants will have to pay a sum of Rs. 10 lakh to Toyota as compensation.
US fast food giant McDonald's has succeeded in its attempt to stop Singapore's Future Enterprises from registering "MACCOFFEE" as a European Union Trade mark. In an appeal by Future Enterprises, the General Court ruled that the use of MACCOFFEE would take unfair advantage of the reputation of McDonald's trademarks and that people might mentally link the products owing to the similarities between "Mc" and "Mac". It also acknowledged that although the food and drinks maybe different, they are essentially those that are found commonly in fast food restaurants. McDonald's win in the case could prevent another company from using any combination of the terms "Mac" or "Mc", to sell food or drinks in future.
The Hon’ble Calcutta High Court ruled in favour of the Respondent Three Leaves India Pvt. Ltd., by rejecting the plea of the Petitioner Hindustan Unilever Limited for extending the ad interim order of injunction. The court also stated that a trademark infringement case can only be filed by the registered proprietor or the authorized licensee and not by the user of the trademark.
The Respondent was restrained from selling and/or offering for sale or market tea in a packet, the labels of which contained “Nowalty” as it was similar to or a colourable imitation of the Petitioner’s logo or product “Lipton”.
The Respondent stated that the suit for infringement of the trademark is not maintainable before this court in view of Section 52 and 53 of the Trademarks Act as the registration of the mark “Lipton” stands in the name of Unilever PLC, a company registered under the laws of England. This argument demolished the Petitioner’s case.
The court rejected the extension of the ad interim order of injunction and also imposed a cost assessed at Rs. 2 lakh to be paid by the Petitioner to the Respondent.
The Hon’ble Delhi High Court analyzed the relationship between the Copyright Act and the Designs Act and ordered that the Artistic Works which are related to design can only be protected under the Designs Act and not under the Copyright Act.
The court observed that if a design is applied to an article and re-produced for more than 50 times by an industrial process after making a drawing, then the drawing cannot be treated disjunctively from the said design and the copyright cannot be vested in such drawing. Section 15 (2) of the Copyright Act expressly ends the said protection.
The plaintiff’s products are manufactured more than 50 times by industrial process and their designs are register-able under the Designs Act. The protection of design is for a maximum period of 15 years which has lapsed for the Plaintiff. No protection on the basis of copyright can be given to the Plaintiff at this stage. The Court dismissed the application for interim relief by the Plaintiff. The Defendants application for vacation of ex parte order and return of its goods was allowed by the court.
The Plaintiff filed IA under Order XXXIX Rule 1 & 2 CPC and Defendant Nos. 1 and 2 filed IA’s both under Order XXXIX Rule 4 of the CPC – respectively for vacation of interim order by virtue of which an ex parte ad-interim injunction order was granted for restraining the Defendants from selling / marketing their products using the mark ‘Peter England’. All three applications were taken up and heard together.
The Plaintiff claimed to be the subsequent proprietor of the trademark ‘Peter England’ in respect of ‘clothing, footwear and headgear’. Since 1997, the Plaintiff (by itself or through its predecessor) has been selling readymade apparels and accessories bearing the registered trademark ‘Peter England’.
The Defendant No. 1 is engaged in the business of manufacturing and selling footwear. Defendant no. 2 is Defendant no. 1’s stockist. The Defendant No.1 filed an application bearing No.805051 for registration of the trademark ‘Peter England’ with the suffix ‘VIP SHOES’. The said Defendants have been selling footwear inter alia under the trademark ‘Peter England’ VIP SHOES’. The Plaintiff opposed the aforesaid application. In the light of plaint filed by the Plaintiff, the Court passed an ad-interim ex-parte order restraining the Defendants from selling / marketing their products using the mark ‘Peter England’.
The court held in favour of the Plaintiff as the three ingredients to uphold an interim injunction application were satisfied. The three ingredients are (i) a prima facie case, (ii) balance of convenience and (iii) irreparable loss. This was a fit case where the Plaintiff clinically destroyed the evidence provided by the Defendant and exposed its credibility.

For information purpose only.
Reference to any Trademark in this newsletter relates to news about its respective company. The said TM is proprietary of such company.