Odisha v.West Bengal. No, we are not talking about IPL here. This is regarding a 2 year old feud between the States over the rights of GI tag in the Indian delicacy: Rasagola (dumplings of semolina dough cooked in sugar syrup). In 2017, West Bengal was granted the GI Tag for “Banglar Rasogolla”. This generated an uproar amongst those belonging to the State of Odisha. Both States cited various literary works of famous poets, traditional religious practices of offering Rasagola to various deities during worship or festivals and stories of Gods and Goddesses savouring Rasagola! Now on, Odisha will have its own GI Tag for “Odisha Rasagola” (2019).

Glenfield is a Mumbai-based company known for its blended Scotch Whisky. The owner of the Glenfield brand, Vivek Anasane (hereinafter referred to as “Vivek”), sought to introduce Glenfield in the UK. Vivek applied for trademark registration of Glenfield in Class 33 for ‘Scotch whisky’ at the UKIPO.

William Grant & Sons Limited (hereinafter “William Grant”), is globally known for its Single Malt Whisky under the brand Glendfiddich. William Grant opposed Vivek’s trademark application. William Grant stated that it has registered the mark GLENFIDDICH and that Vivek’s mark is visually and phonetically similar to it. It contended that there is a likelihood of confusion between the marks because:

• both the marks include the prefix GLEN;

• both the marks contain the letters F and D in the remaining element of each mark; and

• the goods for which both the parties intend to use their marks are identical.

The word GLEN means “a narrow valley, especially in a mountain”. Vivek argued that there are numerous third parties that have registered marks with the prefix GLEN, and that no individual or entity can claim exclusive right over it.

The Controller (UK IPO) assessed various elements contained in Vivek’s mark against William Grant’s mark. It noted that, “the only similarity is the common occurrence of the GLEN element that is likely to be readily understood by the average consumer as an allusion to Scotland.” It also noted the similarities in the colour combination (green and golden) used in both the marks. It held that such similarities will only bring the Opponent’s mark fleetingly to the consumers’ minds when they see the Applicant’s mark.

William Grant stated that due to its extensive use of the mark GLENFIDDICH since at least 1960, its mark had acquired “substantial” goodwill and reputation throughout the UK. In this regard, the Controller observed that, “the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.”

The Controller further noted that there are various additional elements in Vivek’s label which are not present in William Grant’s mark. This introduces significant visual differences and makes the 2 marks dissimilar. The Controller concluded that the differences in this case outweighed the similarities and hence there can be no confusion between the marks. Hence, the opposition by William Grant was dismissed.

The minute-to-minute generation of original content on social media due to sharing of posts, pictures, podcasts, stories and the like, results in an equivalent need to protect the IP in the content. Even though social media serves as an informal platform of “friends” and “followers”, when it comes to protection of the IPs, one must note that all the content is meticulously protected within the creases of the ‘T & Cs’ that one “Agrees” to.

Recently, a case of copyright infringement was filed at the US District Court at Hawaii, by a photographer for unauthorised use of his photographs on social media pages such as Pinterest and Facebook. Vincent Khoury Tylor (“Tylor”), a professional photographer specializing in photography of Hawaiian landscapes, obtained copyright registrations for his photographs before selling his copyrighted photographic works online. In his suit for copyright infringement, Tylor claimed that Hawaiian Springs, LLC (“the Defendant”) used 3 of his photographs on its commercial social media pages (such as Facebook, Pinterest) without his authorization.

The Defendant admitted to use of these photographs. However, with respect to one of the photographs (of Akaka Falls), the Defendant claimed exemption for ‘fair use’. According to the US laws, fair use of a copyrighted work for purposes such as criticism, comment, news, reporting, teaching, scholarship, or research, is not considered as infringement of copyright. The Defendant submitted that the photograph was used by a college student to create a mock advertisement for Hawaiian Springs’ bottled water products, as a part of her homework assignment. It stated that she was not an employee at the Defendant’s company. The post she shared on her personal account was merely “re-pinned” in other words: shared, by the Defendant on its Company’s Pinterest page. The Defendant argued that this was “fair use” of the photograph.

However, the Court held that such use would not fall within the ambit of ‘fair use’, since the sole intent of re-pinning the photograph was for commercial benefit.

Unlike conventional publication of images in newspapers, books, magazines, sharing images on social media is as effortless and free-flowing as breathing. Users do not keep track of how many images are being used/ shared/ etc. by them, let alone obtaining necessary permissions from the copyright owners. One must be careful, especially while using copyright protected content for commercial benefits on social media.

Bayer Healthcare LLC (“Bayer”) was granted a patent on 29th April 2010 for the drug Regorafenib which is used for treatment of metastatic colorectal cancer and advanced gastrointestinal stromal tumors (Indian Patent No. 240207). Natco Pharma Limited (‘Natco”) filed a revocation petition against the said patent which is pending before the Intellectual Property Appellate Board (“IPAB”). Natco also filed a suit for declaration of non-infringement pertaining to the product having international non-proprietary name Regorafenib at the City Civil Court in Hyderabad.

Bayer filed a suit at the Delhi High Court alleging that Natco had plans to commercialize Regorafenib in the Indian market under the product name Regonat, thereby infringing its patent. After hearing both the parties, the Court granted interim injunction similar to that granted in Sterlite Technologies Ltd. V. ZTT India Pvt. Ltd. CS(COMM) No. 314/2019. (Please find our view on the Sterlite Case here.) By virtue of this order of the Delhi High Court, Natco was restrained from infringing Indian Patent IN No. 240207 held by Bayer.

Natco appealed against this order. The Appellate Court noted that before granting an interim injunction the trial court had not even formed an explicit opinion regarding the formation of a prima facie case in favour of Bayer. As regards the other elements necessary to be considered while granting interim injunction viz., balance of convenience and irreparable hardship, the Appellate Court noted that, these were not even mentioned in the impugned order.

The Appellate Court observed that “The decision in the application of interim injunction has to necessarily indicate the view of the court on the 3 elements mentioned herein before and the additional features when it involves a case of alleged infringement of a patent, and in particular, a pharmaceutical patent. It is not the length of the order or its precise wording that matters. It is necessary, however, that the factors mentioned hereinbefore must be discernible from the order which comes to a conclusion one way or the other regarding grant of an interim injunction.”

Therefore, the trial court’s order was set aside and it was directed that the application for interim injunction be heard again.

- Adv Sumeet Sirohi, Legal Associate, RKD Bangalore Office

Trademarks play a vital role in identifying the source and origin of various goods and services in the market, thereby creating goodwill and reputation with regards to the trademarks in question and associating the trademarks with the organisation which uses it. In recent years, trademarks have transcended from the conventional types such as device marks, logo and word marks, to the non-conventional ones such as sound marks, smell marks, monochrome colour trademarks and the like. The process of registration of the conventional trademarks is easy, due to the established procedure and precedents. However, in the case of unconventional marks, the rules of procedure and precedents are still developing. One such kind of unconventional trademark is a ‘single colour’ trademark.

Single colour trademarks are identified and recognised in the Manual of Trademarks, Practice and Procedure, 2015, wherein it has been stated that such a trademark shall be protected only if its distinctiveness is corroborated with evidence. The protection for monochrome trademarks is granted only to the extent for which they are in use. The concept is that a single colour must be capable of distinguishing the goods or services of one person from those of the other players in the same trade.

Although single colour trademarks can be registered, the condition of distinctiveness attached to them (inherent or acquired) is of the highest magnitude. In order to showcase inherent distinctiveness of a monochrome trademark, the applicant has to prove that the trademark has been used for a defined category of goods or services in a very specific market or where there are few competitors. Further, an applicant can also state that the monochrome trademark, by virtue of its extensive and continuous usage, has acquired distinctiveness to such an extent that a person of average intelligence and imperfect recollection will directly relate and associate the trademark solely and exclusively with the applicant. The acquired distinctiveness has to be supported with wide array of evidence such as consumer polls, survey reports and the like. For instance, the chocolate giant, Mondelez (the owner of the brand ‘Cadbury’) submitted evidence in the form of consumer surveys, which showcased that consumers directly associated the colour Purple in the shade Pantone 2685C with the brand Cadbury only.

Given that monochrome trademarks can be registered if distinctiveness is proved, it still is imperative to be cautious in allowing their registration. As per the colour depletion theory, the number of colours, being limited, will deplete if trademark registrations are easily accorded to every colour. Further, the single colour registration providing exclusive rights over a colour to one individual/ entity also stifles fair competition as it restricts other individuals from using that particular colour/shade for her goods or services. The Indian judiciary has also been giving less weightage to the single colour trademarks¹ , stating that consumers relate to an organisation by virtue of its brand name/ logo rather than the colour it uses. However, a two judge bench of the Delhi High Court in an appeal² under an order dated April 11, 2019, upheld the validity of the “Red Sole” trademark in footwear of Christian Louboutin, given the high distinctiveness of the red soles on footwear exclusively associated with Christian Louboutin.

Thus, although single colour trademarks are registrable per se, the evidence for proving its distinctiveness is much higher than in conventional trademarks. Further, even if such protection is granted, it does not guarantee any discharge from the voluminous and lengthy litigation for the maintaining of the exclusive rights therein.

These images are used for academic purposes only and we do not claim any copyright in the same.

¹Britannia Industries Ltd. v. ITC Ltd. [2017 (70) PTC 66 (Del)]

²Christian Louboutin SAS v. Abubaker and Ors [RFA (OS)(COMM) 13/2018 & CM 29064/2018]

In a recent case at the Delhi High Court, the Court decided an important question with regard to the copyright in a cinematograph film “whether the expression “to make a copy of the film” means just to make a physical copy of the film by a process of duplication or does it refer to another work which substantially, fundamentally, essentially and materially resembles the original film.” Read along to find out...

MRF Ltd. and Metro Tyres are companies engaged in manufacturing and selling automobile tyres. As a part of its marketing campaign, MRF produced an ad film which was posted on YouTube in October 2015. Metro Tyres produced and released an ad-film in 2016. According to MRF the 2 ad films were similar and it clearly showed Metro Tyre’s intent of copying MRF’s ad-film. Therefore, MRF filed a suit for copyright infringement against Metro Tyres. It prayed for interim injunction to restrain Metro Tyres from airing the impugned advertisement.

MRF contended that the similarities between the 2 advertisements were fundamental and substantial and the minor differences present were immaterial. According to MRF, the infringing copy need not be an exact copy, but a substantial and material copy of the original cinematograph film. MRF stated that under the International Berne Convention 1908 (‘Berne Convention’), a cinematograph film was provided dual protection: a. as a series of photographs and b. as a “dramatic work” distinct from its script.

Metro Tyres however contended that a cinematograph film is treated differently under Section 13(3) of the Copyright Act, 1957 as all the underlying works that contribute to the making of a film are protected independently. Metro Tyres further contended that to establish copyright infringement in a cinematograph film, it was essential to show that the impugned work was an actual copy of the plaintiff’s advertisement/cinematograph film. It emphasised that the process of duplication for making an actual copy of the copyrighted film had not been proven in this case.

The Court observed that “Copyright subsists in a ‘CINEMATOGRAPH FILM’ as a work independent of underlying works that come together to constitute it. Further, though the copyright subsists in the constituent parts, yet the copyright vests separately and independently in the composite whole – THE FILM. Moreover, a “cinematograph film” may not infringe any of its underlying works, namely, a literary, dramatic, musical or artistic work, but may nevertheless lack originality because it infringes another cinematograph film. In other words, in terms of Section 13(3)(a), a film must not be a copy of any other work, including any other film.”

It also noted that the ordinary, dictionary definition of ‘copy‘ is not confined to an ‘actual‘ copy made by a process of duplication, but includes an imitation or reproduction also.

However, in this case, the Court was of the view that the 2 advertisements were neither substantially nor materially or essentially similar. While MRF’s advertisement was more futuristic and emphasised on the manufacturing process of the tyre and its radial design, Metro Tyres’ advertisement sought to display the durability of its tyres on all terrains. The Court also observed that since the present suit has been filed a year after Metro Tyre’s advertisement was first aired, MRF was not entitled to any interim order.

Consequently, the application for injunction was dismissed.

This image is used for academic purposes only and we do not claim any copyright in the same.

We are all aware that original literary works are protected by copyright. Nobody can copy WHAT is written without the permission of the owner of copyright in the work. But can you protect HOW it is written. By that, we mean protecting a Font through copyright. A French designer, Benoit Sjöholm has created numerous fonts such as, and the like.

It has recently been reported that Benoit Sjöholm filed an action for copyright infringement against Embratur, i.e. the Brazilian Tourist Board, for infringing its copyright by using his font: . Embratur launched a marketing campaign for its travel services in which the words “BRAZIL Visit Brazil and Love Us” were written using the Fontastique font:

This image is used for academic purposes only and we do not claim any copyright in the same. Image sourced from http://www.riotimesonline.com/