Chanel Limited (Chanel), is a French luxury brand created by Coco Chanel in 1910. For over 100 years, Chanel has created goodwill for itself in ready-to-wear clothes, luxury goods and accessories for men and women. Chanel recently sought to register the shape of its bottle “No. 5” fragrance as a registered trademark in the US.

Chanel observed that, it had suffered huge losses, not only on its goodwill’s end but also on its financial end, because of counterfeiting of its No.5 perfume bottle.

In USA, trademarks are protected under Lanham Act. Both registered and unregistered trademarks are protectable under the Act however, registered trademarks enjoy few more layers of protection. Registered trademark enjoys nationwide protection, it is presumed that registered trademark is valid, it is also presumed that owners of registered trademarks are true and bona fide owners, trademark is in continuous use and most importantly infringers cannot claim that they were unaware relating to registration status of the mark. The owner of a registered trademark can also claim punitive damages 3 times more than normal amount.

The specimen submitted by Chanel. (Google Images)

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

Thus, in order to get benefits of being registered trademark user, Chanel applied for trademark registration for its No.5 perfume bottle. Chanel made two separate applications for its No.5 perfume bottle. One application claiming No ‘5’ word mark and other claiming the rectangular shaped container with beveled sides, a thinner neck and on top a horizontal rectangular faceted shape mark.

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

At the moment, Chanel is facing a preliminary setback from the US Trademark Registry as the Registry has objected the design trademark application on the grounds of non-distinctiveness. The US Trademark Registry supported its objection by stating that the mark applied for, is not inherently distinctive and shape of the perfume bottle is very basic in nature and common in the cosmetics, fragrance and perfume industry. The specimen device mark submitted by Chanel in the US application only had only one difference namely, horizontal, rectangular faceted bottle stopper, which in the view of the US trademark Registry is not distinctive enough. The other application with word mark ‘5’ has passed the preliminary stage and now has been published for opposition.

It should be noted that in considering a device mark in any application, the US trademark Registry considers device mark as a whole and not in part. Therefore, mere use of a unique shape of bottle stopper does not distinguish the mark from other marks.

After receiving the objections from the US Trademark Registry now Chanel may respond by contending that it has acquired distinctiveness for its product. One can claim acquired distinctiveness on an unregistered trademark when it acquires distinctiveness and public largely associates the mark to that specific set of goods and services. To support the contention of acquired distinctiveness Chanel may provide verified documents of long use, sales and revenue of Chanel No.5 perfume, promotional and advertisement costs, customers feedback etc. As per various magazines and reports, Chanel No. 5 is one of the world’s famous perfume and also among the top selling perfumes.

Registration of trademark would benefit Chanel for perfumes products and also for all other future products Chanel intends to launch under the brand Chanel No.5.

Chanel has also applied for trademark registration of the same mark in India as well, but the application is likely to get objected under Sec 9(a) of the Trademarks Act, 1999 on similar grounds of non-distinctiveness. The reason of objection provided by US Trademark Registry is valid and similar reasoning might be given by Indian Trademark Registry as well. Thus, only time will tell us whether the Indian Trademark registry would consider Chanel’s mark on acquired distinctiveness or would raise objection on the application.

Traditionally, having a Television would mean that you would have a cable or a satellite connection. However, with the inception of the internet and today, the high speed internet, things have changed. People have moved past from the traditional means of digital entertainment which were majorly restricted to TV and a cable connection to TVs, mobiles and other digital gadgets having internet connection. One of such changes has been brought by the introduction of Over The Top (OTT) platforms. On OTT platforms, content is delivered via an internet connection rather than through a traditional cable/broadcast provider. Over the top (OTT) refers to film, television or any other content provided via a high-speed Internet connection rather than a cable or satellite provider. OTT content can be accessed directly on a computer, but it is often watched on a Web-enabled television or through an Internet-enabled device.

OTT platforms gained popularity of because of the sharp growth of Netflix as it started from simply showing old movies and television shows to developing original content which would relate to the youth and began distributing licensed content quickly. Its fast-growing profitability and popularity, especially with younger audiences, has encouraged and increased wide-ranging competition. Especially during the pandemic, OTT platforms have seen a massive growth in viewership and subscriptions.

Movies and other theatrical releases are well regulated and are dealt by the Central Board of Film Certification (CBFC) and the Cinematographic Act, 1952 along with supplementing rules and guidelines and in the case of broadcast media, i.e. television are regulated by the Broadcasting Content Complaints Council (BCCC). OTT platforms however have no such regulations except that they are governed by the Ministry of Electronics and Information Technology (Meity) and Information Technology Act, 2000, like any other online content. Certain OTT platforms have certain self-regulation/censorship standards of their own. However, with the increase in the popularity and the use of OTT platforms in India and the chances of influencing the minds of the youth, there are wide apprehensions whether these platforms should be regulated or not, in the name of national security, prevention of any future political intervention, maintaining the integrity of the nation, maintaining religious stability and prevention of offences like child pornography, sexual harassment of women and the vulnerable groups including minors, women, and the elderly.

However, on the other side lies the interest of the users and viewers and also of the content creators. It has been suggested that Article 19 (1) (a) Right to freedom of speech and expression of the content creators is allegedly being violated and curbed upon by putting restrictions on content.

Regulation of OTT platforms:

In November 2020, after hearing a petition to regulate OTT platforms, the Supreme Court issued a Notice to the Internet and Mobile Association of India (IAMIA) and the Centre, after which a notification was released stating that all online curated content providers including OTT platforms should come under the ambit of the Ministry of Information and Broadcast (MIB) and not of Meity.

Recently, the Ministry of Information and Broadcast (MIB) has stressed on some form of regulation of OTT Platforms to streamline the sector and regulate the content on OTTs. In this background, the MIB recently notified the Information Technology (Guidelines for Intermediaries and Digital Media Ethics Code) Rules 2021 (Rules). Following are some of the guidelines that have been laid down for the intermediaries to follow which includes the OTT platforms under the IT Act: -

1. The OTT platforms have to self-categorize themselves into five age based categories such as U- Universal, U/A 7 years, U/A- 13 years, U/A- 16 years and A- Adult

2. A Parental lock needs to be provided by OTT platforms.

3. The digital media will also have to follow the Norms of Journalistic Conduct of the Press Council of India and the Programme Code under Cable Television Networks Regulation Act.

4. To establish a three tier grievance redressal mechanism, where the first level is the self- regulation by OTT platforms, second- level would be for self- regulation by the self- regulating bodies of publishers and the third level for an overseeing mechanism.

5. It also provides for the appointment of a redressal officer based on India for addressing grievances within 15 days.

6. There must also be an additional self- regulatory body of publishers from amongst the retired Judge of Supreme Court, High court or an eminent person and about 6 other members.

However, it should be kept in mind that TV broadcasts and cinemas are very different from OTT platforms. So the latter cannot be regulated as the former.

As laid down in Padmanabh Shankar vs. Union of India, content streamed on OTT Platforms is not broadcast, that is, it is not meant for public exhibition, rather it is meant for private viewing and hence cannot be regulated under the Cinematographic Act, 1952 and hence cannot be treated the same as a TV broadcast or cinema. Therefore, this has to be kept in mind while imposing restrictions and regulating the content on OTT. The restrictions should not be such so as to hinder the artistic freedom of content creators.

Conclusion:

The Regulation of OTT platforms is not as easy as it seems given the number of challenges and the technicalities and associated issues involved. In this modern developing era of Digital Media and different platforms where it can be showcased, the Government / concerned authorities have to look to the interests of all stakeholders and balance the interest of all in a way that a harmonized system is created where licensing, regulation, censorship, net neutrality, and various other complicated issues get settled and also the growth of these platforms is not compromised.

The content creator’s liberty is also to be protected as under international and national laws and a system which peacefully maintains and handles all these issues is to be created. But as this is a very contemporary issue, and as not much laws or literature is available thereon, it will definitely take time and the history is in making at this time, where the laws of tomorrow are being discussed and the search for an ideal system is on. The future and the outcome of the regulation of over the top platforms is much awaited.

Section 48(a) and 48(b) of The Indian Patents Act 1970 confers exclusive rights to a patentee to the patented product or process respectively. The Act prevents third parties from making, using, offering for sale, selling, or importing a patented product in India, unless consented by the patentee. It also prevents third parties from using a patented process or offering for sale, selling, or importing, the product obtained directly by the patented process, unless consented by the patentee.

The Act gives an impression that when a patented product/ process is allegedly infringed, the patentee is empowered with sweeping rights from preventing third parties from infringement. However, that is not true. Section 13(4) of the Act lays down that when a patent is granted, it should not be deemed that it amounts to granting the validity of the patent and that there is no liability of the government for the validity of a patent. In other words, the patent office may have erred in granting a patent and the remedy for the same lies in opposition or filing a revocation petition. A patent is valid only till it remains unchallenged. Section 107 of the Act allows an alleged infringer with defenses whereby grant of interim injunction against infringing can be avoided. The alleged infringer needs to show that the patented product/ process violates the Patents Act on the grounds listed under Section 64.

When a patentee files a case for an interim injunction against an alleged infringer, the court walks on thin ice and tries to strike a balance between the rights of a patentee and the rights of a defender. The court generally keeps the following considerations in mind:

• prima facie case

• balance of convenience and

• loss suffered.

Prima facie case

A patentee can file a case for an interim injunction against the alleged infringer and prima facie submit evidence with respect to infringement. A patentee may state relevant facts about the subject matter of the patent and infringement including priority and patent grant date. A defendant, in turn, can raise a credible challenge to the validity of the patent. In the case of Bristol Myers Squibb Company & Ors. Vs. J.D. Joshi & Anr¹ , a single judge of the court held that old patents have a kind of a ring of validity and if a revocation petition is filed just before the expiry of the suit patent term, it cannot be reckoned as a proper way of clearing the way. It averred that if a defendant intends to launch a drug, knowing fully well that the plaintiff had been granted a suit patent, it must clear the way by filing a revocation patent well in advance.

The alleged infringer may try to show how a Person Skilled In The Art can arrive at the invention from the available prior art or he may show that an alleged invention lacks novelty / inventive step /industrial applicability or is in violation of other provisions of the Patents Act. He can show how the invention is vulnerable to invalidity. By citing lack of novelty / inventive step / industrial applicability or any other thing which violates the Patents Act on the grounds listed under Section 64, a defendant can escape the imposition of interim injunction. It is the vulnerability to invalidation and not the actual invalidation which needs to be brought out for avoiding an interim injunction. Actual invalidation during a trial demands greater proof than what is required for an interim injunction. In the case of Boehringer Ingelheim Pharma GMBH & Co and Boehringer Ingelheim (India) Pvt Ltd., vs. Vee Excel Drugs² , the court averred that the defendants failed to raise a credible challenge to the validity of the patent as it did not try to show how a person skilled in the art could arrive at the invention from the available prior art and thus the court did not agree for granting the interim injunction. However, an interim injunction was granted when a credible challenge to the patentability of Indian patent 235625 was raised, for the product Dapagliflozin, granted to Bristol Myers Squibb Company1, which was subsequently assigned in favour of AstraZeneca AB Sweden (Astrazeneca) on 1st Feb 2014.

Balance of convenience

Balance of convenience is meant to assess the ratio of hardship it is likely to cause to a defendant if an interim injunction is granted and the hardship it is likely to cause to a plaintiff in case an interim injunction is not granted. The balance of convenience may also relate to financial aspects, which shall be discussed separately.

In the case of Hoffman La Roche vs, Cipla Ltd.³ , while leaving aside a credible challenge to the validity of the patent, a lot of discussions revolved around the price differential between a generic product launched by the defendants and the product of the plaintiff. In view of the fact that the price differential of the cancer treatment drug was more than 300%, a bench of the Delhi court averred that granting the interim injunction would deny access to the cheap essential drug to the public at large and therefore, the balance of convenience did not lie in favour of granting the interim injunction.

In the case of Boehringer Ingelheim (India) Pvt Lt., vs Vee Excel Drugs, the Court averred that the defendants were aware of the patent of the plaintiff but they preferred to wait till the expiry of the alleged genus patent and then raised a credibility challenge against the alleged species patent. Further, the defendants did not file any pre-grant or post-grant opposition. The plaintiff had the patent under which a drug was launched whereas the defendant did not have any such patent. The defendants could have sought revocation of the subject matter before starting the manufacturing process of the alleged infringing product. The fact of the defendants neither own a patent related to the product proposed to be launched nor have filed opposition/ revocation petition timely, the court averred that a balance of convenience was created in favour of the plaintiff.

Loss suffered

The House of Lords, in (1975) All England Law Reports 504, American Cyanamid Co. v. Ethicon Ltd.⁴, averred that a Court should assess that if a patentee succeeds in a trial for establishing infringement, could he be adequately compensated for the loss suffered between the date of filing for interim injunction and the trial decision. If an alleged infringer is assessed to be in a position to compensate the patentee adequately, no interlocutory injunction should be granted, no matter how strong the infringement case. If the court assesses that damages would not be an adequate remedy, an injunction can be granted but at the same time, it needs to be ensured that a defendant is compensated suitably in case the defendant prevails in the trial. In such a case, the court also needs to assess the adequate remedy and ability of a patentee to compensate the defendant.

In the case of Hoffman La Roche vs. Cipla3, though the court refused to grant an interim injunction, it directed that the defendant Cipla should render accounts and that the Joint Registrar shall maintain a record of profits made by Cipla.

In case, other factors seem to be evenly balanced, a court can maintain the status quo. In case a defendant has not started making an alleged infringing product / using an alleged infringing process, an injunction may be granted but if the alleged infringing product/ process has been in place for some time, careful assessment is necessary for the grant of interim injunction.

¹Bristol Myers Squibb company & Ors. Vs. J.D. Joshi & Anr, I.A. No.15720/2009 in CS(OS) No.2303/2009, June 29, 2015, Delhi High Court

²Boehringer Ingelheim vs Vee Excel Drugs, OMP No. 85 of 2022 IN COMS No. 07 of 2022 etc., High Court at Shimla, June 2, 2022

³Hoffman La Roche & ANR vs. Cipla Ltd., RFA(OS) 92/2012, High Court of Delhi, Nov 27, 2015

⁴American Cyanamid Co. v. Ethicon Ltd, United Kingdom House of Lords, Feb 5, 1975

Mr. Akash Aggarwal, operating under the mark/name ‘V Tradition,’ a female clothing brand present on various e-commerce platforms, including Flipkart. Mr. Aggarwal was aggrieved by the fact that Flipkart has allowed and is allowing various unrelated third-party sellers to latch on to his popular products sold under his brand ‘V Tradition,’ through a feature on Flipkart which enables these third-party sellers to become ‘more sellers’ of popular best-selling goods.

Before moving forward, it may be understood that the “latch on” feature offered by Flipkart allows an existing or prospective seller on Flipkart to become a ‘More Seller’ of someone else’s product on Flipkart by:

1. Any existing or prospective seller can latch on by selecting the ‘listing’ tab on Flipkart, ‘opportunities’ will be shown as one of the drop-down options under the tab.

2. The ‘Listing Opportunities’ tab will allow an existing or prospective third-party seller to become ‘more seller’ of a best-selling product, which in this case was the ‘V Tradition’s’ best-selling products, one of which is exhibited below.

3. Flipkart also encouraged third-party sellers to become ‘more sellers’ of a popular product and also suggested competitive prices to such sellers.

4. Further, by clicking on ‘add listing’, an unauthorized third-party seller can become a ‘more seller’ for a popular high-demand product and start selling such product under the name of the third party.

Mr. Aggarwal, the aggrieved party, pointed at this feature and even showed that the Flipkart software itself suggests ‘V Tradition’ products as one of the most popular listings and ‘Best-Sellers’ and allows third-party sellers to use the representative photographs or promotions (as replicated hereinbelow), and successively approached the Delhi High Court for restraining Flipkart from permitting and facilitating third-party sellers on its platform from ‘latching on to the mark/ name ‘V Tradition and his products sold under it.

Mr. Aggarwal contended that when a third-party seller wishes to place a listing on Flipkart, the Flipkart software itself suggests ‘V Tradition’ products as one of the most popular listings and ‘Best-Sellers’ and allows such unauthorized/ third party sellers to add various products sold under his mark ‘V Tradition’ into their listings along with Mr. Aggarwal’s product photographs, by way of the ‘Opportunities’ option under the ‘Listings’ tab on the ‘Flipkart’ website. Mr. Aggarwal contented that there are various persons/ sellers, who have been adversely affected by the said ‘latching on’ feature provided by Flipkart, which has resulted in a loss of business to such small and medium entrepreneurs. Mr. Aggarwal substantiated his claims by producing the affidavits filed by third-party sellers, who have also filed suits against Flipkart.

Mr. Aggarwal further added that invoices issued by one such unauthorised seller have his mark ‘V Tradition’ on them.

On the other hand, Flipkart informed the Court that, since Mr. Aggarwal’s mark/ name ‘V Tradition’ is not a registered trademark, hence it would have no method to check whether the mark is entitled to protection, or not. However, Flipkart did agree to take down the listings/ URLs of third-party sellers within 48 hours of being provided the same.

After hearing both the parties, the Court made the following important observation:

“The advent of e-commerce has created various challenges to the protection of IPR rights. An action for passing off, which was traditionally restricted to products having similar logos, marks, names, and labels, in the real world, now has a new dimension in the context of e-commerce.

E-commerce platforms provide an alternate platform to small and medium entrepreneurs to showcase their products and conduct their businesses in a profitable manner. However, certain features on these platforms can also cause damage to such entities and entrepreneurs. One such feature, as is clear from the present case” …”The fact that such a feature is made available is not even disputed by Flipkart.”

Therefore, the Court held that permitting a third-party seller to ‘latch on’, in this manner, to a brand owner’s name/ mark and product listings is nothing but `riding piggyback’ as is known in the traditional passing-off sense. It amounts to taking unfair advantage of the goodwill that resides in Mr. Aggarwal’s mark and business.

In the context of e-commerce, the Court had no doubt that ‘latching on’ by unauthorised seller’s results in and constitutes ‘passing off’ as known in the brick-and-mortar world. It is a mode of encashing upon the reputation of Mr. Aggarwal which he has painstakingly built.

The Court further added that the affidavits filed by the Plaintiff also need to be further looked into as this seems to be a recurring difficulty that IP owners appear to be facing.

The Court was satisfied that such a feature cannot be allowed to be used or offered, to the detriment of the owner of the brand or the person who has created the original product. Consent and authorisation of the brand owner and the listing owner would be required before such conduct by any seller is permitted.

Hence, the Court granted an interim injunction in favour of Mr. Aggarwal and restrained Flipkart from using the latch on feature against Mr. Aggarwal’s mark/ name ‘V Tradition’ and also ordered Flipkart to provide the URLs of all such third-party infringing products and take them all down within 48 hours.

Star India Pvt. Ltd. (Disney) filed a suit for copyright infringement seeking permanent injunction and damages, for infringement of copyrights in its upcoming film ‘Brahmastra Part One: Shiva’ against 7Movierulz.tc and other rogue websites (infringers), which were primarily and substantially engaged in illegal streaming, hosting, etc.

Disney pointed out in its suit that, it is an industry practice to first release the film for theatrical exhibition and then make it available for viewing on different platforms. However, the infringers were vehicles of infringement, whose whole business model is designed to provide the public, an access to copyright contents, unauthorizedly thereby violating the copyright protected work of Disney.

Disney further contended that, in the past, infringing copies of several movies produced/distributed by them were illegally and unauthorizedly communicated to the public and made available for viewing and downloading, on various websites, within hours of the theatrical release, and in the present matter when the film is slated to be released on September 9, 2022 Disney apprehended that the infringers will continue to infringe copies of the film through various portals which would directly hamper Disney’s business and erode the value of the film besides infringing its copyright.

The Hon’ble Delhi High Court accepted the submissions by Disney, by saying that the issue of piracy was rampant in the present times, which was required to be curbed and needs to be dealt with a heavy hand and that an injunction against screening of copyrighted content by the rogue websites ought to be granted as a deterrent.

Hence, considering the investments made by Disney in the production and promotion of the film as also the exclusive right vested in it under the provisions of the Copyright Act, the Court granted an ex parte ad-interim relief, restraining the rogue websites from hosting, streaming, retransmitting, exhibiting, making available for viewing and downloading, providing access to the public, and/or sharing on their websites through the internet or any other platform, the film ‘Brahmastra Part One: Shiva’ and contents related thereto.

It was also directed to the Department of Telecommunications and Ministry of Electronics and Information Technology, to issue the necessary notifications calling upon various Internet Service Providers to block access to the websites of the infringers.

It is important to understand that the theatrical release of a film is one of the most important stage in its overall business, as the commercial value of a film depends on the popularity and success it achieves in this period.

- Provided by my good friend, Phil Furgang.

- Provided by my good friend, Phil Furgang.

A sign on a Plumber's truck: "We repair what your husband fixed.”

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On another Plumber's truck: "Don't sleep with a drip. Call your plumber.”

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On an Electrician's truck: "Let us remove your shorts.”

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In a Non-smoking Area: "If we see smoke, we will assume you are on fire and will take appropriate action.”

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On a Maternity Room door: "Push! Push! Push!”

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At a Car Dealership: "The best way to get back on your feet - miss a car payment.”

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Metrology is the science of measuring, and such measurement standards and yardstick changes from nation to nation. Indian Metrology Act, 2009, is a comprehensive act covering different commercial transactions, industrial measurement and measurement required for public safety in general.

Legal Metrology Act was enacted by the Central Government with an object to govern industrial and commercial weights and measurements, establish and enforce those weights and measurements in practice. The Act extends to whole of India and is applicable to dealers, individuals in trade, retailers, wholesalers, importer & exporters.

Within the Legal Metrology Act, 2009, there are several rules enacted to regulate the Act more effectively. Following are the Rules enacted within the Act:

1. The Legal Metrology (Packaged Commodities) Rules, 2011

2. The Legal Metrology (General) Rules, 2011

3. The Legal Metrology (Approval of Models) Rules, 2011

4. The Legal Metrology (Numeration) Rules, 2011

5. The Legal Metrology (National Standards) Rules, 2011

6. The Indian Institute of Legal Metrology Rules, 2011

Recently, Ministry of Consumer Affairs issued an amendment under Legal Metrology (Packaged Commodities) Rules, 2011 on 22nd August 2022 w.e.f 1st Jan 2023. An addition was made under Rule 26. Rule 26 provides the exemptions under the Legal Metrology (Packaged Commodities) Rules, 2011.

The existing rule 26 exempts certain products from complying with the rules, they are

1. Items sold, whose net weight is less than 10 ml or 10g with a proviso of tobacco and tobacco products.

2. Food items packed by hotels and restaurants.

3. Thread sold in coil to handloom weavers.

4. Few items under Drug (Price Control) Order, 2013 under Essential Commodities Act, 1955.

To these exemptions one more addition was inserted by the authorities (Department of Consumer Affairs), clause f in rule 26. Clause f states that garment and hosiery commodities sold loose or open at point of sale and not as a packed item where consumer can inspect the items before buying are exempted.

However, there are few conditions under this exemption, that these items shall bear name and address of manufacturer or brand owner or origin country from where the item is imported, items to bear size indicator as per international standards like S, M, L, XL etc., items to bear consumer care number and email address of the brand owner or manufacturer, MRP in Indian rupees.

The exemption under the new clause f, shall apply only to sale of finished products and product information details mentioned above are also to be provided on e-commerce websites for online sale.

Even though, effective date of the amendment was 1st Jan 2023, importers, manufacturers, brand owners etc., may apply these new amendments immediately as well. In the previous amendment i.e. Legal Metrology (Packaged Commodities) (Second Amendment) Rules 2022, the authorities enabled sellers of electronic devices to declare descriptive information of the device through QR Code. Important information to be declared printed on the device and elaborative information via QR Code for the electronic devices. Else, earlier all pre-packaged commodities were under a mandate to declare all information printed on the device or package.

Hidden Meanings in Trade Marks

Hidden gems of India