New Updates

The famous macaque monkey 'Naruto' and his toothy selfie has yet again caused a stir in Court. The question of whether an animal can own a copyright to a photograph was first debated in 2014. It has now made a comeback in 2018, wherein the Appeals court has affirmed the lower court's decision that the crested macaque which snapped the selfie does not have the statutory standing to claim copyright infringement against the photographer, following the failure of an amicable mutual settlement between the parties. Despite the fact that the sly seven-year-old crested macaque snapped a selfie on the camera owned by photographer David Slater during his visit to Indonesia, he cannot file a copyright claim on his photo because according to the US Court of Appeals, the Copyright Act does not expressly authorise animals to file copyright infringement suits.

In a CII programme titled "Leadership Summit on Anti-Counterfeiting and Brand Protection", the Commerce and Industry Minister Suresh Prabhu promulgated effective changes which the Ministry of Commerce & Industry has begun incorporating in the area of Intellectual Property Rights (IPR). He stated that due to the number of patent applications pending with the Indian Patent Office, the Ministry is modernising Patent Offices and preparing a plan to release patents at the earliest, thereby promoting effective implementation of IPR laws. Moreover, in order to inculcate proper administration of IPR laws, the Ministry is engaging with law enforcement agencies, including the police department.

The U.S. Patent Office has yet again set a higher benchmark, proving its dedication and sincerity to enhancing the growth of Intellectual property in the country. The U.S. Supreme Court has laid down a new government process, called 'inter partes review', of challenging the validity of patents by private parties before the U.S. Patent Office instead of bringing the suit to court. This was brought about due to the concern of a rising number of abusive patent infringement suits due to many weak patents granted by the Patent Office. The new procedure hopes to see light in the near future for the honest patent owners who were trampled by the previous unfair decisions of the Patent Office.

After a tiresome and strenuous seven year battle in court, Lionel Messi has finally been given the green card to register his name 'MESSI' as a trademark for sports equipments and clothing. The EU court ruled that his name is 'too famous to be confused with other businesses'. The legal battle was initiated by a Spanish cycling gear manufacturer 'Massi' who challenged the registration of 'Messi' for likelihood of confusion between the two names, the same year Messi had applied for registration of the trademark. The judges laid down that irrespective of the marks being "phonetically similar", the IPO erred in believing that only those who were interested in football or sports know who Lionel Messi is.

Blackberry filed a case against Snap by filing a 71-page complaint stating infringement of 6 of its patents on its messaging technology, concerning map improvements for mobile devices, advertising techniques and user interface improvements for mobile devices present in the Snapchat app. It was further reported by the Verge that Snap Maps and the display count of unread messages on a notification dot were also infringing. Blackberry has been on a roll, filing infringement suits against top giants like Facebook and Whatsapp for security features, mobile notifications and combining gaming with messaging; and has also included few patent infringement allegations from the previous complaints in the present complaint against Snap.

Lebron James's multimedia company 'Uninterrupted' recently sent a letter of dissent to the school Alabama Crimson Tide over its disagreement of carrying forward a new show, the preview of which was released by the school's official Twitter account, with the school's coach and football player in a barber shop setting. "Shop Talk" featuring former Tide star wide receiver Julio Jones, resembled a show done by James on the same platform titled "The Shop" and thus, Uninterrupted claimed that the show infringed its copyright, trademark rights and other valuable intellectual property rights, damaging the commercial prospects for its show "The Shop".

The famous and undeniably popular US firm Goldman Sachs sued Jaipur-based cyryptocurrency exchange "Bitman Sachs" for infringement of its IPR and violation of its trademark rights by carrying on business under a deceptively similar trade name. Goldman Sachs stated that apart from the similarity in name, there was also a similarity in the services provided by Bitman Sachs as it is alleged to be providing extensive financial services for clients in currency, cryptocurrency and blockchain technology.

Case Updates

The present judgement dealt with two appeals - one of Monsanto Technology LLC ("Monsanto") appealing the judgement directing it to continue supplying Bt. Cotton transgenic variety (Donor Seeds) to Nuziveedu Seeds Ltd. ("Nuziveedu"); and the second of Nuziveedu appealing the rejection of its application to revoke Monsanto's patent (Indian Patent No. 214436, covering an invention titled "Methods For Transforming Plants To Express Bacillus Thuringiensis Deltaendotoxins" ("Patent")) under Section 3(j) of the Patents Act, 1970.

Section 3(j) excludes from patentability "plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals."

In the present case, the Hon'ble Court observed that of the original 58 claims of Monsanto's patent application, the Indian Patent Office rejected most claims on the grounds of Section 3(j) and 3(b), and essentially, only a sub-set of claims on nucleic acid sequence were allowed. Therefore, in the opinion of the Court, what was granted was not a patent over the product, or even the method, but of identification of the "event" i.e. the placement of the CryAB2 protein in the genetic sequence of the DNA of the plant cell. Therefore the Hon'ble Court concluded that the subject patent falls within the exclusion spelt out by Section 3(j) of the Patents Act; and hence the patent and the claims covered by it were consequently held to be unpatentable. Nuziveedu's counter claim was therefore allowed. The Court also upheld the Learned Single Judge's directions to Monsanto to continue with its obligations under the sub-license agreements, including consequential orders with respect to payment and receipt of trait value. The Court further stated that Monsanto could apply for registration under the Protection Of Plant Varieties And Farmers-rights Act (within three months of the judgment); and if it does so in terms of the judgment, the benefit of its previous patent can be granted to it, for the purposes of the said Act, in respect of determination of prior publication provisions and requirements.

A suit for trademark infringement was filed in the California District Court by Lucasfilm Ltd. LLC ("Plaintiff"), a production company massively known for its Star Wars franchise, against Ren Ventures Ltd. and Sabacc Creative Industries Ltd. ("Defendants") for use of the Plaintiff's Sabacc mark and other trademarks, by the Defendants, in their mobile game app "Sabacc - The High Stakes Card Game". The Defendants have been advertising and distributing the mobile game app on the Apple's app store, on the same platform as many references from the Star Wars movie figure in. Moreover, the mobile game replicates many features of the Sabacc game of the Plaintiff. To add to the conundrum, the U.S Patent and Trademark Office granted the Defendants a federal registration of the Sabacc mark in August 2016 based on their claims of ownership of the mark.

The Plaintiffs argued that the Defendants were feasting on the goodwill and the reputation of the Plaintiffs with regard to their Sabacc mark and the Star Wars franchise. They also claimed prior, continuous usage of the mark in commerce. In response, the Defendants rebutted that fictional goods such as Sabacc, cannot be placed to have relevance and existence in commerce and that fictional characters of expressive works cannot be used as trademarks when they imply the Plaintiff or the product to the public. The Court held that the Plaintiffs only claim the mark to represent Lucasfilm and Star Wars franchise that exist in commerce and not the ownership of the mark as its source. In addition, the Court cited a number of cases wherein trademark protection was extended to fictional characters such as "Spongebob Square Pants". The Defendants had further questioned the continuous use of the mark as claimed by the Plaintiff, arguing that there were breaks in using the Sabacc mark by the Plaintiff. The Court rejected the argument stating that marks may be in continuous use if the associated products remain popular and continue to circulate in commerce even after years of their unveiling. Therefore, the District Court refused to dismiss the suit of trademark infringement and passing off.

The Appellant in the present case is B. N. Firos, the Proprietor of Comtech IT Solutions, an Information Technology concern that is a member of the Microsoft Developer Forum which is technically supported and guided by Microsoft Corporation (India) Private Limited. The State of Kerala, through the Centre for Development of Imaging Technology (C-DIT), had conceptualised a single window multiple agency bill collection system called "FRIENDS" and Microsoft had offered to provide the Application Software and System Software free of cost for the pilot project, for which it engaged the Appellant to for development of the pilot project. Upon completion, Microsoft placed orders with the Appellant following which the software developed was handed over to C-DIT and was in turn implemented as a pilot project. Consequently C-DIT wrote to the Appellant proposing to engage the Appellant for customisation of the FRIENDS software as it intended to extend the project to 13 other districts. Therefore, an Agreement cum Memorandum of Understanding ("MoU") was entered into between C-DIT and the Appellant.

The Appellant filed a criminal proceeding against M/s. Stanhop Technology, claiming apprehension of transfer of essential information of the FRIENDS application software by C-DIT to the said concern. To mark the ownership of the project in its name, the Appellant applied for the registration of the copyright in the project before the Registrar of Copyrights, New Delhi. However, C-DIT filed a suit in the District Court, seeking a declaration that it is the exclusive and sole owner of the IPR in the FRIENDS application, in view of which the Registrar of Copyrights rejected the Appellant's copyright application. C-DIT further instituted an infringement suit on the Appellant. While the said proceedings were still pending in Court, the Government of Kerala issued a Notification dated 27th December 2002 under Section 70(1) of the Information Technology Act, 2000 ("IT Act"), declaring the computer, computer system and computer network specified in the Schedule to the Notification to be "protected systems" under the IT Act.

The Appellant therefore filed a writ petition, challenging the said Notification stating that it was founded on excessive delegation of legislative power and claimed that according to Section 17 of the Copyright Act, 1957, the copyright in the FRIENDS software vested in the Appellant and the Notification was an infringement of the said right. However, the High Court struck down the petition on the ground that Section 2(k) of the Copyright Act defined "Government work" and reading that together with Section 17(d) of the Act, and further harmoniously with Section 70 of the IT Act, it would imply that the power of declaration of a "protected system" would only be in reference to a "Government work". Moreover, according to Clause 10 of the MoU the IPR clearly vested in the Government of Kerala and there was no Clause that assigned the IPR to the Appellant. The Appellant thus filed the current appeal before the Supreme Court of India, which further reiterated that the IPR in FRIENDS application lies with none other than the Government as the Appellant developed the said software for Microsoft in return of due consideration and therefore it would not be entitled to claim copyright over the said software under Section 17(a) of the Copyright Act. The Supreme Court thus affirmed the High Court's decision and dismissed the Appeal.

In the present case, the Plaintiff, part of the Ferrero Group, filed a suit for infringement against the Defendants, who are the importer & marketer of chocolates under brand name "Golden Passion" in India and the Chinese company manufacturing & exporting the said chocolates to India respectively. While the trademark "Golden Passion" seems entirely dissimilar to the trademark "Ferrero Rocher", it follows an identical trade dress as that of Ferrero Rocher and is an exact look-alike. The Plaintiff claimed that the characteristic features of Ferrero Rocher, i.e. the label and the shape, satisfy the criteria of a well-known mark as laid out by Section 11(6) of the Trade Marks Act, 1999. Since the striking similarity/ identicalness in the packaging of the Defendants with that of the Plaintiff would create an impression in the minds of the public that the Defendants' product are that of the Plaintiff, or that there is a nexus between the parties, the Court had earlier granted an interim injunction against the Defendants from selling and marketing the impugned Golden Passion chocolate or any other product that was deceptively similar to the Plaintiff's trademark and trade dress. However, despite being aware of the injunction order, the Defendants continued to sell the impugned chocolates in India and additionally, even sold several other products which were look-alikes of Ferrero Rocher. The Court, taking into account the violation of the interim order and the records submitted by the Plaintiff which clearly established that the Defendants' have indeed infringed the Plaintiff's trademark and trade dress, and that their acts have amounted to passing off, ordered for permanent injunction against the Defendants and granted the Plaintiff compensatory as well as punitive damages. The Court further recognised that the Plaintiff is entitled to a decree for relief as prayed in the plaint, praying for an order of declaration that the Ferrero Rocher trademark as well as the trade dress to be declared as well known marks.

The Plaintiff, H&M Hennes and Mauritz AB and its Indian subsidiary, sued the Defendant, HM Megabrands Pvt. Ltd., for passing off/ infringement of the Plaintiff's trade mark "H&M" (word mark as well as logo) by adopting and using a deceptive variant (word mark as well as logo) "HM". The Plaintiff's contention was that its logo is an artwork within the definition of Copyright Act, 1957 and the use of a deceptively similar logo by the Defendant is a violation of the Plaintiff's copyright, in addition to amounting to passing off and trademark infringement.

The Defendant's contention was that though the alphabets 'H' and 'M' in the two marks are the same, the addition of the word "Megabrands" distinguishes the mark of the Defendant from that of the Plaintiff. Another contention of the Defendant was that the documents filed by the Plaintiff do not show use of the said trademark in India in the course of trade, but merely indicated supply of products by certain entities to the Plaintiff. Yet another contention of the Defendant was that the Plaintiff, in their reply to the Examination Report issued by the Trade Marks Registry citing similar marks such as 'HMT', 'HMV', 'HMW, 'H.M. Tex Kamal' and 'H.M.C, pleaded that the comparison of the two marks should be done in entirety and not in separate components, therefore, the Plaintiff having taken such a stand is estopped from suing for infringement.

The Hon'ble Court, while considering the application for interim relief, observed that the Plaintiff has a prima facie case. The Plaintiff, being the prior adopter of their mark 'H&M' since 1972, trade on the same category of goods, being, marketing and manufacturing of fashionable clothing and ancillary products, and thus, share the same trade channels with the Defendant. It was further laid down that 'Megabrands' is a descriptive and generic word which is usually used to describe any big or successful brand. Moreover, suffixing the two letters common to both parties with 'Megabrands' only connotes that "HM" is a megabrand and rather than distinguishing, the Defendant's mark only reinforces the impression that the owner of the business of both marks is one and the same. With respect to the Defendant's contention regarding the Plaintiff being estopped from suing for infringement, the Hon'ble Court laid down that none of the marks that were cited in the Examination Report were in any business connected to that of the Plaintiff. Furthermore, the Court stated that merely because the Plaintiff, at the stage of seeking registration, took a stand as aforesaid, the same cannot stop the Plaintiff from exercising its statutory and natural rights. Therefore, the Court ruled that there is no estoppel against statute. Due to the aforesaid reasons, the interim application of the Plaintiff seeking injunction was allowed and the Defendant was restrained from using in any manner whatsoever the mark "HM".

The Plaintiff, Vega Auto Accessories, instituted a suit for infringement of their registered design in respect of helmets, against the Defendant, S.K. Jain Bros Helmet, seeking permanent injunction. The application for interim relief was heard on the date for which the date the summons/ notice was issued to the Defendant, and it was directed by the Court that the Defendant and its dealers and agents were restrained from making, selling, offering for sale, advertising and directly or indirectly dealing in helmets amounting to infringement of Plaintiff's registered design no. 264763, dt. August 13, 2014. The Defendant subsequently filed an application contending that the Defendant's design was also registered and thus the interim injunction should be vacated. During the hearing, the counsel for the Plaintiff contended that while the Plaintiff's registration is dated August 13, 2014, the Defendant's alleged registration is dated March 1, 2017, thereby establishing that the Plaintiff is the prior registrant of the design. In the course of the hearing, the Defendant was asked to point out the dissimilarities in the subject helmet of the Defendant in comparison to that of the Plaintiff's helmet and the counsel for the Defendant highlighted four features, of which it was established that two of the said features were present in the Plaintiff's various helmets and therefore there was nothing unique about the Defendant's design. It was further contended that functional features mentioned by the Defendant were excluded from consideration by virtue of the definition of design as per Section 2(d) of the Design Act, and thus it was established that there was no uniqueness with respect another feature claimed as well. The Hon'ble Court observed that as far as the differences between the two helmets are concerned, the Court must address its mind as to whether the design adopted by the Defendant was substantially different from the design which was registered, in order to determine the infringement. Applying the aforementioned test, the Court observed that a total of nine elements in shape and configuration of the subject helmet of the Plaintiff were imitated by the Defendant's subject helmet, including some key elements such as shape and configuration of the outer shell and the pattern of grooves and ridges on the outer shell and on the flip-up chin bar. Therefore, the Court observed that the Plaintiff had a prima facie case and that the balance of convenience was in favour of the Plaintiff and consequently confirmed the interim injunction to continue.

The Plaintiff, Kantilal Premji Maru, filed the present suit seeking reliefs in respect of infringement of the Plaintiff's registered trademark "Classic Steels", bearing No. 1467897 in class 21 in respect of stainless utensils, infringement of the Plaintiff's copyright in its distinctive "Classic Steels" label, and for passing off by the Defendant of its products as and for that of the Plaintiff. The Plaintiff had discovered that its mark Classic Steels was being pirated in the market and subsequently sent a cease & desist notice to Mr. Ramcharit Pavankumar calling upon him to refrain from infringing the Plaintiff's proprietary mark and from passing off his products as that of the Plaintiff's products. However, the Advocate of Mr. Ramcharit Pavankumar responded saying that it was the Defendant, Mr. Madan Kumar, who had incorporated a partnership under the name "5 Classic Care Corporation" and had been dealing with the impugned goods. The Plaintiff thereafter discovered that Mr. Ramcharit Pavankumar was the father of the Defendant and the two of them were in acting in collusion, in pirating the Plaintiff's mark. It was further discovered that the Defendant had fraudulently applied for and secured registration of its mark "5 Classic Care" which was deceptively similar to the Plaintiff's registered trademark, in respect of identical goods and services and that the Defendant had claimed a false user date in its application. The Court observed that a comparison of the rival marks as a whole revealed that the Defendant has copied the prominent and/or essential and/or distinctive feature of the Plaintiffs' registered trade mark. The Hon'ble Court further observed that the manner in which the Defendant has sought to use the impugned mark, that too in respect of identical goods, clearly shows that the Defendant has merely sought to highlight the mark "Classic", thereby causing confusion and deception. Furthermore, the Court held that as far as the case for copyright infringement is concerned, the deceptive similarity of the rival marks, the Plaintiff having a copyright registration, and the Defendant having failed to prove prior use, clearly establish that the Defendant has committed an infringement of copyright of the Plaintiff's mark. Therefore, the Court ordered an injunction against the Defendant from infringing and passing off their products as that of the Plaintiff's, and ordered the Defendant to pay the costs of the Notice of Motion to the Plaintiff.