The sure shot signs to depict success of a brand are the emergence of – imitators and parodists. In such a situation a brand owner can protect their brand by suing the infringers and enjoying a good laugh on the parodies of their work/product however, suing the latter could take away the fun.

Louis Vuitton is very vigilant in protecting its brand image and taking timely actions against any potential threat to its reputation however, recently they sued a company making parodies of their bag. The suit was filed against My Other Brand (MOB) for - (1) Trademark dilution; (2) infringement of their Trademark –the ‘LV’ logo, the independent flower; and (3) copyright infringement of artistic works. My Other Bag’s designs had the image of different designs of Louis Vuitton bags juxtaposed on the front side of the bag. MOB argued that its designs were a parody of the premium brand and were a comment on the society’s attraction to premium and luxury goods. Furthermore, it was stated that their bags could not be confused with the original Louis Vuitton, it clearly was a parody. The judge of New York District Court agreed with MOB and ruled that the bags sold by the Respondent (MOB), contained the logo ‘MOB’ and thus, there was no likelihood of confusion.

A similar decision was handed out to Louis Vuitton earlier, in the case of Louis Vuitton v Haute Diggity Dogg.There Louis Vuitton had sued Haute Diggity Dogg for manufacturing plush toys for dogs under the name –Chewy Vuitton. In this decision as well, the court ruled that ‘Chewy Vuitton’ was a play on the words ‘Louis Vuitton’ and clearly a pun, there was no likelihood of confusion or dilution of mark found in that case. Interestingly, popular brands like Lucas Films, known for their Star Wars franchise, have found a way around this by themselves poking fun at their characters. This has helped the brand gain more popularity among the audiences. Maybe this case should be a lesson to high end brands to laugh at themselves every once in a while as it might do them well, in the long run, than harm.

A trademark battle for a well-known mark is a common occurrence but it might not be so common if the two parties involved in the suit were well aware of each other’s existence for the last 125 years. This was the case with the mark ‘Merck’ which was concurrently being used by the two entities –Germany based Merck KGaA and U.S. based Merck & Co.

The mark ‘Merck’ was originally used in Germany in 1668 and in the year 1889 a member of the Merck family established a partnership business with a third party with economic support from its German counterpart. The latter initially acted as the selling agent to the German Merck enterprise but later set out its own business in US. The two entities have repeatedly entered into Agreements with regard to the use of the mark ‘Merck’ in the years 1932, 1955 and 1970. The common agreement between the two entities has been that Merck & Co., USA was allowed to the use the mark only in the territories of U.S.A and Canada. However, it was found out that repeatedly the U.S. entity was using the ‘Merck’ mark in other territories as well. The situation aggravated with the rise in online presence of the two entities, it was found out by Merck KGaA that Merck & Co. USA was marketing itself as ‘Merck’ through its websites which were accessible and targeted to the audience in U.K.

The UK courts ruled in favor of Merck Germany, stating that Merck, USA had acted in breach of the Agreement reached between the parties in 1970. It was held that the simultaneous use of the mark ‘Merck’ by both the entities in common territories could create confusion in the minds of the consumers more so, when Merck, Germany enjoys an extensive reputation in the United Kingdom. The Court held that Merck, US was to be injuncted from using the mark ‘Merck’ in any printed or digital material addressed to the U.K., it could refer itself as MSD or Merck Sharp and Dohme. Further, it was ordered that Merck, US should cease from using domain names such as ‘merckformothers’, ‘merckresponsibility’ or deploy geo-targeting to prevent the traffic from UK to access their sites (strictly meant for US and Canada).

This case throw light on the fact that even if the mark is not physically being used in a territory, it can still be considered as infringing upon the rights of another entity if it has a virtual presence in such territory. The Indian Trademark office allows concurrent use of marks subject to territorial restrictions, it is important for the proprietors of the marks to keep a vigilance over the online use of their mark–websites, newsletter, or through social media. Further, the concept of geo-targeting is a useful tool for proprietors to ensure that the use of the mark as their domain name is strictly accessible to the intended audience alone and prevent any impending infringement lawsuit.

A lot can happen over a cup of coffee, and this includes a copyright suit. Starbucks was recently involved in a copyright suit filed by artist Maya Hayuk. It was claimed by Ms. Hayuk that advertising agency appointed by Starbucks had approached her for creating artwork for their upcoming advertisement campaign. The advertising agency and Ms. Hayuk failed to reach an agreement thus; the artist did not create any artistic work for Starbucks.

It was the case of the artist that despite her declining the offer to create the artworks for Starbucks, Starbucks in its recent campaign used images which were substantially similar to her existing artworks. It was alleged that in the advertisements the colored rays emanating from the Frappuccino cups were substantially similar to the color combinations, expressions and the ‘overall look and feel’ of five of her artworks.

Image from here

The Court looked into her claims and decided the case from the perspective of an average individual who does not have a discerning eye. The Court was of the view that Hayuk’s works used the geometric forms such as lines, circles coupled with colors and textures and all of this was considered to be within the public domain, no artist could be allowed to claim monopoly over any of these elements. Moreover, the Court opined that the ‘total concept and feel’ of the artist’s works and the advertisement were not similar, it could be said that there was a common use of overlapping colored rays but the same could not be determinative of a copyright infringement by Starbucks. The suit was dismissed by the Judge.

If one looks at the pictures, it is quite evident that there is a similarity between the artist’s works and the Starbucks advertisement however, it is difficult for the court to exactly point out the ‘element’ which can be considered as copyrightable in the images. The pictures show colorful rays emanating and this (without showing the entire painting) cannot be construed as communicating to the audience the same concept and it could be argued that there is no copyright infringement whatsoever.

We leave it up to the readers to decide whether they agree with the Court’s decision or not.

The Indian Courts are often accused of being biased in favour of generic manufacturers particularly, since the NATCO vs Bayer decision for granting compulsory licensing to an Indian generic manufacturing company. It is quite obvious that after that landmark decision a lot of generics applied for compulsory licensing for various drugs. The Controller of Patents office, Mumbai recently showed that not every application for a compulsory licensing can be accepted; it was only when a substantial case for the grant of a compulsory license is made out that such an order could be passed.

Lee Pharma Ltd. filed an application for a compulsory license, under Section 84(1), for the drug Saxagliptin meant for diabetic patients. It was claimed by the Applicant that the drug was required by approximately 1 million diabetic people in India and the patentee i.e. AstraZeneca AB had failed to produce and distribute the drug in ‘adequate’ quantities in India. A major flaw in this claim of the Applicant was that they had failed to adduce any cogent evidence to substantiate their claim. In fact, the Court recorded in its findings that there were alternative drugs for diabetics, like Linagliptin, Sitagliptin and Vildagliptin hence, there was no plausible reason for diabetic patients to particularly use Saxagliptin alone. In addition to this, the Controller held that substantial evidence was not put on record to show that there was a shortage of the drug, in India, due to its importation.

In the light of these facts the Controller of patents rejected the application for a compulsory license. The Controller has demonstrated through this decision that the Department fully understands the need to protect the pharmaceutical industry from generic manufacturers, to encourage research and innovation. It is important to understand that research and innovation in the pharmaceutical sectors involves incurring high expenses which can be recovered only after the drugs are sold in the market to enable a researcher to recoup its R&D costs. An unreasonable lowering of drug prices will only result in curbing the research activities. The Indian judiciary is trying to strike a balance between research and development and affordable prices for drugs, neither can be ignored as both constitute public interest.

The Indian Government, in an ambitious move, launched the ‘Scheme for Facilitating Start Ups Intellectual Property Protection (SIPP)’ on 16th January, 2016. In the modern era, innovation driven industries play a key role in steering the economy of a nation therefore, it has become increasingly important to encourage and protect such industries.

The SIPP lays down the following criteria to classify an entity as a start-up:

1 Years since incorporation/registration in India < 5 years;

2 Annual Turnover < INR 25 crores; and

3 The startup should be working towards ‘innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.’

Further, a start-up shall be eligible for availing the benefits of this scheme upon obtaining certification from the start-up Certification Board. The scheme states that the ‘Facilitators’ will assist the start-ups in protecting their IP rights, for this purpose, the term ‘Facilitator’ has been defined to include –registered patent agent, registered trademark agent, an advocate entitled to practice in India and government departments such as Technology Information, Forecasting and Assessment Council, National Resources Defense Council, Biotechnology Research Assistance Council etc. The Facilitators have been assigned the task of advising the start-ups on IP based queries on a pro-bono basis, assisting in filing and disposal of IP applications relating to patents, trademark and designs etc.

The fees for such assistance given by the Facilitator shall be borne by the Department of Industrial Policy and Promotion (DIPP) however; the statutory fees involved will have to be paid by the start-ups themselves. Furthermore, to reach out to a wider audience the government has announced that they will develop a private-public partnership model for setting up 35 new incubators and 31 innovation centers at national institutes. This scheme will be run for a trial period of 1 year to determine the practicality in implementing it in the longer run. It is a bold step taken by the Indian government to encourage new actors to enter the market and compete as well as innovate along with the established industries.

The SIPP can be accessed at:

http://www.ipindia.nic.in/iponew/ facilating_StatupIndia_SIPP_18Janaury2016.pdf

Licensing of IP is a tricky issue; it makes the Licensor vulnerable to potential infringement by the Licensee. It is therefore, important to keep a check on an erstwhile Licensee, as was realized by Helamin Technologies Pvt. Ltd recently.

In 2001, the Plaintiff (Helamin Technologies) appointed the Defendant as its technical consultant for the UAE market. There, the Defendant received technical training and gained access to confidential information and it was during this time that the Defendant established Helamin Impex Pvt. Ltd. (hereby referred to as Defendant II). Later, the Plaintiff and Defendant II entered into a Licensing agreement; however, owing to the poor quality of the end products supplied by Defendant II, the Licensing agreement between the two parties was terminated in 2006. In 2009, it came into the notice of the Plaintiff that Defendant No. II was selling water treatment chemicals based on the ‘Helamin’ technology under the name ‘Indiamin’ to fertilizer companies in India. Furthermore, Defendant II continued to operate under the name ‘Helamin Impex Pvt. Ltd’ and hyperlinked to the Plaintiff’s website www.helamin.com thereby, giving the impression that the Defendants were affiliated with the Plaintiff.

On hearing the arguments the Delhi High Court ruled that that once the licensor – licensee or a manufacturer – distributor relationship terminates, the licensee or the distributor have no right whatsoever to use either the trademark or the trade name of the licensor. The Defendants’ argument that the Plaintiff had acquiesced with their use of mark, was held to be incorrect. The court ruled that the defense of acquiescence would not be applicable to a party that had used the mark fraudulently and dishonestly. The Court held that the fact that the Defendants had retained Helamin as a part of their corporate name showed their malafide intention of misleading the consumers. The Defendants were restrained from using the mark ‘Helamin’.

This case re-establishes that it is always important for companies to appoint vigilance teams to ensure that their marks are not infringed and in the event that there is a case of infringement a timely action can be instituted.

In a country like India where unemployment rates are high, hundreds of people look for new avenues and register themselves on different portals to seek jobs. This whole concept of seeking jobs by posting one’s resume online, in India, became popular with the launch of www.naukri.com in 1997. The job portal is still active and running but was recently miffed with a domain name copycat going by the name www.naukrinews.com, the result? – A domain name suit before the Delhi High Court.

Naukri.com (Plaintiff) claimed that it had received information from one of their customers stating that he was receiving spam mails from a similar domain name –naukrinews.com (Defendant). The Plaintiff sent a cease and desist notice to the Defendant from carrying out such activities and harassing their existing customer base. It was found upon further investigation that the Defendant had registered itself as a prospective customer of Naukri to gain access to its customer database and using the same for furthering its own business. The Defendant was also involved in the same line of services i.e. providing a platform to job seekers to look for job opportunities. It was the case of the Plaintiff that the Defendant was deceiving its customers by projecting itself as a venture of the Plaintiff also, the Plaintiff was the registered owner of the mark ‘Naukri’ under classes 9 and 42, in the Trademark Registry.

The Delhi High Court found merit in the arguments of the Plaintiff and held that a prima-facie case of infringement had been made out. The Court passed an order of ex-parte injunction and restrained the Defendant from using the domain name ‘Naukri’ or any prefix, suffix or as an integral part of the domain name / trade mark/corporate name/trading style etc. The Court also appointed a local commissioner to seize the computer, hard drive or any device containing the infringed data.

It is disappointing to note that there are entities that encroach upon the privacy of individuals for their own profit. In the present case, not only was there an encroachment upon the Trademark rights of naukri.com but also a breach of privacy, the data of the customers of naukri.com had been given in confidence to naukri.com alone and not to any other entity. The Delhi High Court’s decision of seizing the hard drives and computer containing the data is in public interest and more such actions should be taken against such perpetrators of privacy of innocent individuals.

Being a popular brand has a lot of perks such as –loyal consumer base, good reputation, profits etc. but there is a down side to the same, there are many actors who intend to ride on the coat tails of such brands and establish their own business. The Indian courts have repeatedly punished such perpetrators with the intention of setting an example in the society and discouraging any such further incidents. Recently, the Delhi High Court passed another such decision protecting a well-known mark from being diluted or losing out on profits.

Cartier International (Plaintiff) filed a suit against an e-commerce website www.digaaz.com (Respondent) for selling counterfeits of its original products. The Respondent’s website was offering the counterfeit products bearing model names identical to those of the Plaintiffs' original product lines and that too at discounted rates which never were offered by the Plaintiff. The Plaintiff sent a cease and desist notice to the Respondent despite this, the Respondent continued to sell counterfeits. It was also submitted by the Plaintiff that despite complaints made by the purchasers regarding counterfeits, the Respondent did not offer refunds to such duped customers. One of the purchasers filed a complaint against the Respondent with the Cyber Crime Cell of Chandigarh police; this was followed by a raid in the premises of the Respondent where thousands of counterfeit products of various luxury brands, including that of the Plaintiff, were seized. It was also the case of the Plaintiff that the Respondent had made profits by selling counterfeits and duping the consumers over the last three years.

The Delhi High Court was satisfied by the case made out by the Plaintiff and stated that a ‘classic case of infringement of trademark and passing off’ had been made out. The Court held that the act of cheating cannot be condoned unless punished and in this case there was a suitable cause to pass a judgment for payment of punitive damages to the Plaintiff. The Respondent was ordered to pay INR 1 crore to the Plaintiff.

This case simply re-establishes that cheaters cannot be winners and winners never cheat.