New Updates

Allergan Plc, a multi-national pharmaceutical company which produces branded and generic drugs, has announced that it will transfer the ownership to six of its US patents to the Saint Regis Mohawk Tribe. The six patents pertain to its blockbuster drug Restasis which is used for the treatment of dry eyes, and the sale of which accounts to about 15% of Allergan's profits. The background to Allergan's unusual move is the legal battle the company is currently facing from Mylan, over the validity of its Restatis patents. The PTAB had determined in its previous hearing that Mylan had established a “reasonable likelihood” of winning its arguments that the patents are invalid. Allergan is resorting to the sovereign immunity that the Indian tribe possesses which shields it from such civil legal challenges, thereby making it harder to invalidate the patents because of a more stringent legal standard. The implications of this atypical deal are yet to be seen.

Following Dabur India's claim of disparagement by Patanjali Ayurved's advertisement relating to its Chyawanprash product, the Delhi High Court passed an interim order restraining Patanjali from airing the said advertisement until the next scheduled hearing. The interim order was passed stating that a prima facie case was made out by Dabur and that an interim protection is necessary in the matter. Dabur has sought for a damage of INR 2.01 crore from Patanjali apart from seeking a restraining order.

Thailand has tendered its accession to the Madrid Protocol, making it the 99th member of the Madrid System. The Protocol is set to enter into force on November 7, 2017. The Madrid System streamlines the process of international trademark registration through a single application process for protection in up to 115 territories. Foreign as well as local brands can now seek trademark protection in Thailand through the Madrid System.

Marking the end of a long legislation process, the national legislature of Israel approves the Designs Law, 2017, which will govern the protection of industrial designs, replacing the Patents and Designs Ordinance of 1924. The law will come into effect one year from the date of its publication. Some of the significant changes incorporated by the new law as compared to the earlier ordinance are the entitlement of non-registered designs for protection in certain conditions, extension of the term of protection (from 15 to 25 years), and provisions enabling Israel to accede to the Hague Design Treating, making it possible for Israeli applicants to file international applications through WIPO.

It is to be seen if Comic-Con will suffer the same fate as words such as Aspirin and Xerox, which were originally inventive trademarks that became generic due to becoming interchangeable with the product/service itself rather than being recognised as a brand. The legal dispute between Comic-Con International: San Diego, which owns the trademark "Comic-Con" sued Salt Lake Comic Con over the use of the said mark, subsequent to which Salt Lake Comic Con countersued, challenging the basis of the said trademark on the basis that it is generic. Salt Lake Comic Con has taken the stand that the term "Comic-Con" has been used regularly and generically, referring to all conventions for comic fans, much in advance to Comic-Con International's adoption of the term. However, in a survey conducted by Comic-Con International, it was established that 80% of consumers thought that "Comic-Con" is a brand, and not a generic name. The Court is yet to pass its verdict on the issue.

The Department of Industrial Policy and Promotion (DIPP) has published a notification of the draft of Patents (Amendment) Rules, 2017. The proposed amendment further amends rule 2 (fb) of the Patents Rules 2003 by clarifying the definition of Startup in case of foreign entities. The draft amendment reads that a "Startup" means an entity in India recognised as a startup by the competent authority under Startup India initiative and in case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/ registration as per Startup India Initiative and submitting declaration to that effect. The draft amendment rules are open to objection/suggestion which can be addressed to the Secretary, DIPP.

Case Updates

A suit for trademark infringement was filed by Freudenberg Gala Household Product. Pvt. Ltd. (Appellant), the registered proprietor and user of the label mark "LAXMI" under class 21 in respect of household and cleaning equipments including "brooms", against GEBI Products (Respondent) for the alleged use of the mark "MAHA LAXMI" with respect to similar products. The Hon'ble High Court of Bombay observed the marks to be visually and structurally dissimilar and the name "LAXMI" to be a common word. The marks were found to be sufficiently distinct with respect to their colour scheme, lettering and design. According to the Honb'le Court, the alleged mark of the Appellant being a label mark, claiming and protecting the label mark as a whole is different from claiming monopoly over a common word, and thus the Appellant cannot claim monopoly over the word "LAXMI". The Court further observed that Hindu God names are not exclusive and thus cannot be monopolised by one party.

Cothas Coffee Company (Appellant) instituted a suit for infringement of their mark "Cothas Coffee" against M/s. Cotha Associates (Respondent) for their alleged use of the mark "Cothagiri" with respect to similar products. The Honb'le High Court observed the impugned mark of the Respondent to be deceptively and phonetically similar to that of the Appellant's, thereby resulting in grave and irreparable losses to the Appellants. It was further observed that the Respondent's use of the impugned mark "Cothagiri" does not fall within the ambit of section 35 of the Act, which protects the bonafide usage of one's own name or one's family name as a trademark. Section 35 is a non obstante clause and an exception to section 28 and 29 of the Act. But the protection under section 35 is available only for 'Bonafide Usage' and such bonafide usage has to be adjudged from the facts and circumstances of the case. The Court further observed that the Respondents cannot claim prior usage of the mark as 9/12/2013 on account of the deed of relinquishment entered by them subsequently on 23/12/2013, whereby the Respondents relinquished all their right, title and interest in the said mark "Cothas" nullifies any transaction or right enjoyed prior to the deed. Considering all these factors, the Honb'le High Court of Karnataka granted a temporary injunction in favour of the Appellant Cothas Coffee Company.

Ms. Neetu Singh (Plaintiff), a well renowned author filed a suit for infringement of her copyright in the literary work "English for General Communications" against Mr. Rajeev Saumitra (Defendant) for publishing and selling the work "English for General Competition: From Plinth to Paramount" which is a verbatim copy of the Plaintiff's work. Furthermore, the work was sold sans the Plaintiff's name as the author. The Defendant acclaimed himself to be the first owner of the Copyright in the said work in accordance with section 17(c) of the Act. But the absence of material to show that the said work was authored by the author during her tenure with the defendant renders the said section inapplicable. Further section 52 of the Act containing 'Fair Use' provisions was also observed to be inapplicable to the present case as the copyrighted work was used by the Defendant in the course of a commercial activity for the purpose of making profits. In view of the above mentioned established relevant factors, the Honb'le High Court of Delhi granted an interim relief in favour of the Plaintiff.

With the increasing spurt of Trademark litigations involving domain names, the cyber giant "Yahoo" (Plaintiff) was once again in the spot light for a suit for permanent injunction filed for the alleged infringement of its popular mark "YAHOO" by the First Defendant's (Rinshad Rinu) use of the deceptively similar mark "YAHOOKOCHI". The impugned mark in the trading name of the defendants was observed as deceptively identical to the unique stylized font of the Plaintiff's mark and adopted with no plausible justification but to trade on the enormous reputation of the Plaintiff. A prima facie case for the grant of injunction was thus observed to have been established by the Plaintiff and the Defendant was restrained from using the deceptively similar impugned mark, the use of which had the potential of creating confusion or deception in the course of trade. The Honb'le High Court of Delhi further directed the Domain Name Registrar "GoDaddy" (Defendant No. 6) to suspend the said name within one week from the date of receipt of the order, and damages were assessed to the quantum of Rs. 5 lacs.

The present appeal arises from a decision of the PTO, wherein it was held that the trademark "Earnhardt Collection" for furniture in class 20 and "Custom Construction of homes" of the Respondent (Kerry Earnhardt Inc) was dissimilar to the Appellant's (Teresa Earnhardt) mark and thus incapable of causing confusion. It further held that the said mark is not merely a surname under section 2(e)(4) of the Lanham Act. On account of the lack of clarity of the Board's analysis in arriving at the present conclusion, the said case was vacated and remanded for reconsideration. The Circuit Judge found the present decision of the Board failing to clarify its findings and analysis in tandem with the explanation in the Hutchison case on which the Board has based its decision. On remand, the Board has been directed to determine firstly, whether the term "collection" is merely descriptive of the Appellant's furniture and custom home construction services and secondly the primary significance of the mark as a whole on the purchasing public.

A suit for permanent injunction was filed for infringement and passing off of the marks "RALLY" and "AFGHAN RALLY" of the Plaintiff (Agarwal Tobacco Manufacturing Company) by the Defendant's (Santosh Chaurasia) alleged use of the mark "RAILY". Both the marks were used with respect to products containing tobacco falling under class 34. The plea of 'prior usage' was taken by the plaintiff to establish his stance. On perusal of the relevant documentary proofs adduced by the Plaintiff, the Honb'le High Court prima facie observed the Plaintiff to be the prior user of the said mark since 2010. Further, the identity and similarity of the goods, the identity and similarity of the impugned mark "RAILY" with the said mark "RALLY" of the Plaintiff, and the similarity of the packaging and container used by the parties was also observed. Further, the essential features of the container adopted by the Plaintiffs were also found to have been replicated by the Defendant. Considering all these established factors, the Honb'le High Court of Delhi passed an order in favour of the Plaintiff granting interim relief till the final disposal of the suit, thereby restraining the Defendant from using the impugned mark in any form.