(Japan)

“GODZILLA” instantly brings out the visual image of a monstrous dinosaur in our minds. TOHO Co. Ltd., which produced the movie ‘Godzilla’, filed a case against Taguchi Industrial Co. Ltd., a Japanese manufacturer of attachments for construction machinery.

The matter came to light when Taguchi, filed a trademark application for the “GUZZILLA” mark in November, 2011. The trademark was for their upcoming range of machines, for mining, loading-unloading, agricultural, waste compacting, waste crushing, etc. The Japan Patent Office (JPO) registered the said mark on April 27, 2012. The “GUZZILLA” mark was used since then on attachments for construction machinery by Taguchi.

TOHO then filed for invalidation of the trademark “GUZZILLA” on February 22, 2017, (two months before the lapse of 5 years from registration, based on the Trademark Law of Japan). The board stated that it found no reason for confusion between the two trademarks in view of the remote association or clientele of both the companies and dismissed the invalidation.

TOHO, appealed to the IP High Court, which set aside the decision of the Trial Board and instead ruled in favour of TOHO. The Court elaborated that the machinery for which the “GUZZILLA” trademark is being used has a certain degree of association with products of TOHO’s interest. The goodwill, popularity and resemblance of the two marks are likely to create confusion in the minds of the consumers and thus the original mark of “GODZILLA” must be protected. The court further related the strength and gigantic image of the Godzilla creature to have an impact on the performance of the goods sold under the trademark “GUZZILLA”, which was misleading.

In fact, even a glance at both these Trademarks is likely to be misread by any individual. (Guzzilla Godzilla Guzzilla Godzilla, wait what?)

Thus, the IP High Court ruling is well justified.

This brings us to an interesting question: Are popular movie names/characters protected by IPR in India?

Well, in India movie title can gain protection u/class 41 of the NICE Classification, which provides for registration of trademark under various services including entertainment, especially in the light of recent judgment wherein it was decided by the courts that movie names will not enjoy protection under copyright laws.

Arre O Saamba, kitne Trademark the?

An interesting case law which is an example for protection of “name” and “popular characters” of a movie is “Sholay”.

The movie, ‘Ram Gopal Verma ki Aag’ by Ram Gopal Verma, was initially titled as ‘Ram Gopal Verma ki Sholay’ which faced an immediate infringement of trademark and copyright case by Sascha Sippy (grandson of Ramesh Sippy).

The case was filed in Delhi High Court against Ram Gopal Verma, as he had not only used the word ‘Sholay’ in his movie title but also used popular character names like “Gabbar”. The movie “Sholay” was an extremely popular movie of its time and had gained immense popularity among the people worldwide. In addition the famous characters names too had been registered under the Trademark Act, thus proving infringement. The court gave its decision in favour of Sascha Sippy, forcing RGV to change its movie title to “Ram Gopal Verma ki Aag” and even modify the names of the infringed character names.

(Australia)

What exactly is the difference between Innovation Patent and Standard Patent?

Innovation Patent was introduced in Australia in the year 2001, and is considered as tier 2 patent system. The innovation patent has criteria such as – novelty, written description and industrial applicability, similar to the tier 1, standard patent system.

The differences are:

1. The need for an “innovative step” (applicable on innovative patents) instead of an “inventive step” (applicable on standard patents) which is much lower threshold to acquire.

2. Innovative patent patentee is granted 8 yrs patent compared to a Standard patent patentee who is given 20 years (25 years in case of pharmaceuticals).

3. Innovation patents are “granted” upon but are not enforceable at law until such time as they have been “certified” (i.e., examined). However, once certified, the enforcement remedies available to a patentee are the same as those for a standard patent.

Issues:

• The local Small, Medium sized enterprises are not maximizing the tangible benefits from the innovative patents granted.

• The “granted upon filing” status has made prone the system to abuses such as foreign applicants being able to claim Government subsidies in their country of origin for obtaining a “granted” patent.

• The threshold test for “Innovation Patent” is analyzed to be too low and is likely to give rise by leaps and bounds to the issue of ‘difficult-to-revoke’ certified innovation patents that have been enforceable by law.

The Government was keen on abolishing the innovative patents, whereas the Institute of Patent and Trademark Attorneys, Australia (IPTA) was in favour of continuing the Innovative Patents.

The world at large was eager to hear the decision taken by the Govt. of Australia. However, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was introduced into Parliament on March 28, 2018 and the section dealing with the abolition of the innovation patent was omitted.

(United States of America)

The Patent system in the U.S. Constitution promotes the Progress of Science and useful Arts. Let’s have a brief look on the journey of Patent sanctions over the past centuries which have brought us to this watershed day.

• On April 10, 1790, President George Washington signed the Patent Act of 1790 that laid the foundation of the modern American patent system.

• 228 years ago - President George Washington signed the first U.S. patent, on July 31, 1790, granted to Samuel Hopkins for improvements in "the making of pot ash and pearl ash."

• In 1810, the U.S. Patent Office was established in Blodget’s Hotel in Washington, D.C.

• On July 11, patent numbers were reset and U.S. patent no. 1 was granted to Senator John Ruggles, who also wrote the Patent Act of 1836.

• However, unfortunately, on December 15, the Patent Office caught fire, destroying maximum patent documents and models. These Patents were named “X Patents”.

Since then, there has been an ongoing effort to recover the "X patents" lost in the fire which continues to the present day. Fewer than 3,000 of the X patents have been restored using privately held records.

• An interesting patent which is widely used even today by multiple sectors (aviation, amateur radio, SOS transmissions) was granted way back in 1840’s to the inventor of the Telegraph, Samuel Morse. This lead to the wide and popular use of the “Morse Code”. (Do you recollect Alia Bhatt transmitting information through a device in her latest release “Raazi”?)

• In 1849, Abraham Lincoln received a U.S. patent for a "Manner of Buoying Vessels." He remains the only U.S. president to hold a patent.

• The other interesting U.S Patents granted, include the modern Beer Brewing methods at breweries, Design Patent for the sculpture of Statue of Liberty, Thomas Edison for the Electric lamp, Wilbur and Orville Wright commonly known as the Wright Brothers for the “Flying Machine” (airplanes), design patent for the Coca Cola bottle, the “Undersea vehicle” or the submarine, missile launch release system (which benefitted NASA), the iPod, are among the many worth mentioning.

• The Patent Office was renamed in 1976 to United States Patent and Trademark Office(USPTO)

The 10 Millionth patent was issued to - Inventor Joseph Marron and Patent Assignee Raytheon Company for a “Coherent LADAR Using Intra-Pixel Quadrature Detection,” which improves laser detection and ranging (LADAR).

(China)

HONG KONG

With the FIFA football fever around the corner, the official FIFA merchandise is the selling like hot pancakes. To make the most of this opportunity, many vendors have taken to unscrupulous methods for selling of products. ‘Operation Goalkeeper’, which commenced on April 30, 2018, was an initiative by Hong Kong customs in order to target goods infringing on the World Cup trademark which may have been smuggled through multiple channels into the city.

In less than two months the Hong Kong customs seized an estimated HK$15 Million worth of counterfeit FIFA World Cup products. The officials suspected and seized 2,59,000 pieces of suspected infringing products. Five individuals too were arrested in relation to the infringements made. The alleged items included 1,80,000 pieces of outfits and accessories, 50,000 pairs of shoes and 29,000 bags. It is also found that, out of the seized outfits about 57,000 of the products were jerseys with infringed FIFA trademarks.

According to Hong Kong laws, the maximum punishment that can be imposed on an individual for importing an item with forged trademark is a fine of HK$5,00,000 and a 5yrs imprisonment.

SHANGHAI

In the world's busiest port- Shanghai, officials found more than 1,30,000 goods that infringed upon the intellectual property rights of FIFA Trademark. The counterfeit products confiscated by customs officers included soccer balls, jerseys, and shirts. One major case busted in April, resulted in the seizure of thousands of Russia 2018 soccer balls in Nanjing that were planned to be exported to Colombia via Shanghai.

The beginning of a new era commences in Myanmar with the soon to be passed Trademark Bill. Until present day Myanmar had made efforts to protect Trademarks by the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which was followed by the cautionary notices published in the newspaper.

After the new Trademark bill kicks in the system will follow the International Standards set by WIPO. The new Trademark law will greatly benefit all the brand owners by ensuring a proper and systematic trademark application process. Since the Myanmar economy is on a rise, the new trademark law, once implemented, will attract multiple brands, encouraging further growth and prosperity in Myanmar.

The Trademark Department proposed will constitute of 60 members who will include: Registrar, Examiner, Registration staff, Reception, Scanning, Data capture, General Affairs. The draft TM law has 20 chapters and 97 sections. One of the chapters even contains Transition process which will enable the current trademark owners to convert and enjoy protection of Trademarks as per the new law. A number of aspects will be under the purview of being protected by the new TM Bill, such as - Trade names, slogans, logos and colors which fulfil the criteria of what constitutes a mark, and do not contravene the absolute, relative, and procedural grounds of refusal under the Trademark Bill. The Trademark Bill also contains provisions on geographical indications.

The Myanmar TM bill is indeed a great step forward however, the protection of IP rights in the country still needs revision. Myanmar is party to TRIPS and Madrid Protocol, however has refrained from signing Berne Convention, UCC Geneva Convention, UCC Paris Convention and the WCT.

(European Economic Union)

The Eurasian Economic Union (EAEU or EEU) is the international economic integration organization founded under the Treaty on the Eurasian Economic Union which was entered into force on January, 2015. Currently, Belarus, Kazakhstan, Russia, Kyrgyzstan and Armenia are members of the Union. The Eurasian Economic Commission (EEC) is the permanent regulating body of the EEU.

On February 2, 2017 Russia announced that it would seek to ratify the draft Agreement on Trademarks, Service Marks and Appellations of Origin that was proposed by the EAEU. The agreement introduces the concept of the Common Economic Space (CES) trademark. The proposed CES trademark is a regional Eurasian trademark that covers the territories of all EEU member states. The CES Trademark will co-exist with the nationally registered trademarks.

The draft consists of:

• Filing and Pre- grant opposition

• Examination

• Conversion - an individual will be allowed to convert a national application into a CES on fulfilling certain grounds.

• Grant - registration will be valid for 10years

• Enforcement - The trademark registration can be enforced or invalidated in each member state under the local laws of that country.

This CES Trademark draft agreement is likely to come into force this year.

(United States of America)

The popular metal band RATT witnessed some legal paparazzi when the District Court of California ruled in favour of Stephen Pearcy, in WBS Inc. vs Stephen Pearcy. So, here are the brief facts:

The band was started by Stephen Pearcy in 1977. By 1981, Pearcy, had personally designed a new logo for the band, adopted and commercially used the “RATT” logo. By 1983, Pearcy, Robbinson Crosby, Warren DeMartini, Juan Croucier and Robert Blotzer were the band members. On June 11, 1985, all 5 members established the RATT General Partnership and formulated a Partnership Agreement. However, in 1992 Crosby was expelled from the partnership leaving the rest 4 members.

The Partnership Agreement u/s. 7.1 prohibited any partner from selling, transferring, assigning, mortgaging, hypothecating, encumbering or dispose of all or part of his interest in the Partnership ‘without a prior unanimous written consent’ by all. Further, it stated u/s.10.6, that in case the Partnership is dissolved, ‘“each of the Partners shall be entitled to receive his Proportionate Share of the revenues received on account of the Partnership from all other sources.” Also, u/s.11.1 “in the event of death, permanent disability, voluntary or involuntary withdrawal of a Partner, the Partnership shall not dissolve or terminate but shall continue without interruption and without any break in continuity”.

Now, in May, 1997, the plaintiff of the case WBS Inc., was formulated by DeMArtini, Blotzer and Pearcy (leaving out Croucier who did not participate in WBS). WBS was formed to look into aspects of business related to the band. It also involved tendering of shares which was claimed to never have received by Percy (member of WBS) and was expelled by the remaining two members.

Now in 2018, WBS Inc. sued Pearcy for using multiple RATT trademarks which belonged to WBS. WBS claimed that the RATT related logo, band name, and associated Trademarks were registered with the USPTO in 1985-86 by the RATT Partnership. In their contention, WBS stated that in 1997, ‘the trademarks were assigned through a sale of a partnership along with all assets owned, to WBS’ and that such assignment was recorded with the USPTO in 2015.

The court however, on examination found that in order for any assignment to take place as per the Partnership Agreement, the consent of all the members must be present. This consent was however missing as there was no unanimous consent either in writing or otherwise towards the assignment of RATT marks to WBS Inc., thus proving that WBS itself had no right or ownership over such marks. Therefore, the motion filed against Pearcy failed.

Analysis:

It can be easily inferred from the above case that when formulating a partnership deed (or contracting with other parties), how vital it is to inserts an ”Intellectual Property” clause. It is not only mandatory to describe the ownership of the Intellectual Property, but also important to discuss the assignment, hypothecation, encumbering or any other such temporary or permanent third party rights that can arise from the deed. The IP clause of an agreement comes to the rescue in case of any discrepancies.

(India)

With events like the World Cup being telecasted, broadcasting companies are faced with heavy challenges to avert illegal streaming of the games. The official broadcasting partner of FIFA is Sony Pictures Network (SPN) who has joined hands with MarkScan, an India based anti-piracy law enforcement body to ensure illegal streamers are kept at bay. Sony has the exclusive rights to stream the FIFA games in India, Bangladesh, Bhutan, Maldives, Nepal, Pakistan and Sri Lanka.

MarkScan on behalf of Sony warned multiple piracy websites that they must not indulge in illegal streaming of the FIFA.

(India)

The judgment, Glambirds Entertainment vs GLAM X Entertainment and ors. which was decided early this year reiterates the requirements of trademark infringement. The facts of the case are simple:

Where in Glambirds filed an injunction under Order 39 Rules 1 & 2 CPC, seeking an injunction against GLAM X from using its trademark claiming Trademark Infringement as the marks according to the plaintiffs were similar in nature and would create confusion among the public.

The Court however went on to state that, the word “GLAM” has been in public use for a very long time and in various forms such as, Glamour, Glamourous, etc. thus was not unique in any way. Further, it was only one part of the Trademark, i.e. ‘GLAM’ which was being claimed to have infringed the mark of the plaintiff. The plaintiffs also put forward the contention of usage of mark from a long time which possibly has created a reputation and goodwill, however, the court dismissed this argument by stating the fact that ‘Glambirds’ is being used only since 2010.