New Updates

The famous blue bordered sari of Mother Teresa has been recognised as the intellectual property of the Missionaries of Charity. The white sari donned by the Albanian nun comprises of three blue borders, the outer border being wider than the two inner ones. Though the Missionaries of Charity do not believe in publicity, the unscrupulous and unfair use of the design across the globe necessitated the need to spread awareness about the dress code. The distinctive blue border pattern has been granted protection under the concept of colour trademark. This is the first time that a uniform has been granted IP protection.

In an IP infringement and breach of contract case filed by the Bennett Coleman & Company Ltd. (BCCL), the Delhi High Court has issued notices to Arnab Goswami and reporter Prerna Sridevi. BCCL has alleged that Arnab and Prerna, former employees of BCCL, have illegally used content created during their tenure with Times Now, for the launch of Republic TV. The content contained audio tapes of Sunanda Pushkar and Lalu Prasad Yadav which were procured and accessed by the duo during their tenure with Times Now. This action amounts to violation of the employment agreement, in which one of the terms was the acknowledgement of IPR possessed by the company over the work done and developed by employees during their course of employment. It was opined by the court that maintenance of confidentiality and utmost fidelity towards the employer is the touchstone of an employer-employee relation, and the reproduction or misuse of confidential information amounts to violation of the plaintiff’s rights.

The Indian Patent Office has recently published guidelines for examination of Computer Related Inventions (CRI) in order to cope up with the challenges of processing patent applications related to CRI and related technologies. The guidelines are framed so as to achieve uniform examination practices. One of the main objects of the manual is to bring out clarity in terms of exclusions expected under Section 3(k) of the Indian Patents Act so that eligible patent applications of CRI are examined promptly. Section 3(k) excludes mathematical / business method / computer programme per se / algorithms from patentability. The manual lays out the terms and definitions related to CRI, as construed by the Indian Statutes.

In what can be considered as a first, the Intellectual Property Office of Singapore (IPOS) has come out with its Patents Formalities Manual on August 1, 2017. The launch of the manual is part of the efforts of the IPOS to enhance the patent system and improve filing accuracy. The manual covers practices and requirements for prosecution of patent applications in Singapore as well as applications forming part of PCT national phase. Another such initiative is the Patents Open Dossier which was launched earlier, in July 2017, to provide public with easy access to collection of published patent documents.

A public roundtable was co-hosted by the USPTO with the Trademark Public Advisory Committee, for the first time ever, to discuss on the serious issue of fraudulent trademark solicitations. The objectives of the event were to educate public regarding misleading/fraudulent advertisements for trademark services, and to brainstorm on ways to tackle this complex issue. The speakers include public & federal speakers from the USPTO, US Department of Justice, US Postal Inspection Service, Federal Trade Commission, Small Business Administration, and US Customs and Border Protection.

Kroger has claimed that similarity in the two trademarks would lead to the likelihood of confusion among consumers. However, Lidl has contended before the Court that there was an undue delay in filing the lawsuit until launch of its first store in the US, despite Kroger being aware of its impugned mark 7 months in prior. The District Judge subsequently denied the request for a preliminary injunction, stating that though the logos looked somewhat alike, they lacked identical/similar meanings.

Case Updates

Intas Pharmaceuticals instituted an infringement suit seeking permanent injunction against Macleods Pharmaceuticals’ use of mark "Gabamin", claiming it to be phonetically and visually similar to its registered trademark Gabapin. Macleods in its defense stated that the said mark was derived from the compound "Gabapentin" which is present in both products, and hence Intas’s mark is generic and no distinctive. The Court however observed that when judging the deceptive similarity between two marks they have to be considered as a whole, thereby stating that the generic prefix Gaba should not be considered in isolation. Taking the above into consideration, the Court granted temporary injunction restraining Macleods from using the mark Gabamin and its variants.

Hindustan Unilever (HUL) sued Amul before the High Court of Bombay, for an alleged disparagement, the roots of which were two advertisements comparing Amul’s ice-creams to other frozen desserts, claiming that the former uses real milk while the latter (Kwality Wall’s of HUL) contains vanaspati. The visuals of the advertisement included two ice-cream cups, one labeled ‘Amul’ showing milk flowing into it, and the other labeled ‘Frozen Dessert- is made of edible vegetable oil’ showing a thick semi-solid liquid flowing into it. Here, though Kwality Wall’s was not named explicitly in the advertisements, it was rightly observed by the Court that slander of a rival’s goods is not only restricted to cases where the rival’s goods or products are expressly identified, but even a slanderous statement made against the class of rival goods would equally affect a single manufacturer whose goods form part of the same class. The Court further observed that the nature, manner and storyline of the impugned commercials convey a negative message, subsequently disparaging the entire category of products known as Frozen Desserts, of which Kwality Walls is a market leader. Such disparagement was observed to severely affect the products manufactured and sold by the HUL, thereby affecting their business.

In the trademark infringement suit filed by Ajanta pharmaceuticals for infringement of the mark "Feranta" by Intas Pharmaceutical's mark "Intas Ferintas", the Bombay High Court held that the two marks are distinctively dissimilar, thereby striking down the case of infringement put forth by Ajanta. The Court observed that the major difference between the said marks is that while the former is a word mark, the latter is a composite word cum label mark, and is further a distinctive combination of black and red. Additionally, the word Intas on the mark proclaims the ownership of Intas over its products. This establishes sufficient distinctiveness when the marks are viewed as a whole rather than merely comparing Feranta and Ferintas, thereby striking down the possibility of confusion between the two marks.

Plaintiff is the registered proprietor of mark "Paramount" in respect of hospital beds. The defendant is also using the mark Paramount for selling hospital beds. The defendant, which is engaged in the manufacture, sale and export of hospital beds, uses the mark Paramount as its trade name. The plaintiff alleged infringement of its mark by the defendant and sought an interim order before the Delhi High Court. The Hon’ble Court refused to grant an injunction on grounds of dishonesty and material suppression of facts by the plaintiff. It was averred by the plaintiff that it had come to know of the defendant’s use of the mark only in 2017, whereas the defendant showed proof of having filed opposition to the plaintiff's registered mark in 2009. Further proofs of exchange of communication between the plaintiff and defendant were also adduced. The plaintiff’s website displayed hospital beds as an item for purchase only after it was questioned. Considering all these factors, it was concluded by the court that dishonesty is fatal to a claim for equitable relief. The pronouncement re-establishes the fact that registration does not ensure interim injunction in one's favour.

Trytan Medical INC requested the Delhi High Court to issue a writ of mandamus directing the respondents to comply with the orders and directions passed by the Hon’ble IPAB in the matter of the PCT National Phase application filed by the petitioner. The National Phase application was filed by the applicant along with an application under Rule 138 of the Patent Rules 2003, seeking condonation of delay of 8 days in filing the application. However the application was rejected by the Controller of patents on the ground that the delay cannot be condoned. Aggrieved by the decision, the petitioner appealed to the IPAB which allowed the application. Despite the positive orders of the IPAB, the respondents failed to take any steps to comply with the directions of the IPAB thereby constraining the petitioners to file representations before the respondents, which was again opined to be time-barred in accordance with rule 22 of the Patent Rules 2003, and hence considered as withdrawn. Further orders passed by the IPAB in this regard were also rejected by the respondents. In view of this approach of the respondents, the IPAB passed an order terming such approach as a willful violation of the principles of judicial discipline and a gross ignorance of the provision under rule 138 for condonation of delay. In view of the facts, the Court thus allowed the writ petition, directing the respondent to comply with the orders passed by the IPAB and examine the petitioner's National Phase Application based on International Application No. PCT/US/2010/040962.

TiVo has triumphed over Comcast in an initial patent ruling in the International Trade Commission (ITC). TiVo claimed that Comcast has violated six of its patents and the ITC ruled that Comcast and its hardware partners Arris and Technicolor, had violated two patents held by TiVo. In addition to the ITC complaint, TiVo is in the midst of federal litigation against Comcast for the alleged infringement of 14 of its patents by the latter. The ITC ruling is a positive step for TiVo in resolving the federal dispute against Comcast.

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.