From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
In 2006, began discussions on protection of Geographical Indications between the European Union and the People’s Republic of China (hereinafter referred to as China) which resulted in the registration and protection of 10 Geographical Indication names on both sides in 2012. Recently, the regions concluded their elaborate negotiations and entered into an Agreement which will protect 100 Geographical Indications (GI’s) of the European Union in China and similarly, protect, 100 Chinese GI’s in the European Union against imitations and usurpation.
The selection of the 100 GI’s is an outcome of long negotiations and discussions. Some of the European GI’s which will be protected in China are: Cava, Champagne, Feta, Irish whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego. Whereas, the Chinese GI’s which will stand protected in European Union are: Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).
It has also been decided that, 4 years after the entry of the agreement in the respective territories, the scope of the agreement will further expand and cover 175 more GI names from both regions. These names will have to follow the same registration procedure (assessment and publication) as that of the existing 100 names.
The Agreement will now undergo legal scrutiny and the agreement is likely to come into force by the end of 2020!
It is being reported that Mahindra and Mahindra Ltd. (“Mahindra”) and Fiat Chrysler Automobile (“Fiat”), the 2 globally known automobile manufacturers have been caught up in an IP brawl over trade dress infringement in the US. In simple terms, trade dress means the distinctive appearance of the goods which is adopted by the brand owner so that the goods are specifically associated with that particular brand. For example, the red & yellow packaging of McDonald’s burger, the Aqua blue colour of the Tiffany’s box, the peculiar purple colour of the Diary Milk Chocolates, the unique aesthetic appearance of each automobile etc.
In the US, Mahindra’s off-road vehicle is said to have violated Fiat’s Jeep’s trade dress. The U.S. International Trade Commission has recommended an exclusion order prohibiting import and sale of any already imported parts of Roxor. Fiat has further sought permanent injunction against Mahindra at the Eastern District Court of Michigan. Keep watching this space for updates on the case.
A proposal for the Bilateral Patent Prosecution Highway Programme (“PPH”), between the Patent Offices of various countries was approved by the Indian Government on November 20th, 2019. Initially, the Japan Patent Office (“JPO”) and the Controller General of Patents, Designs and Trademarks (“CGPDTM”), Government of India entered into a Bilateral Patent Prosecution Highway Pilot Program consisting of Normal PPH1 and PPH MOTTAINAI2 based on the Joint Statement of Intent (JSoI) for a period of 3 years. The number of requests for PPH in IPO will be limited to 100 cases per year on first come first serve basis. After the launch of this PPH, India witnessed a significant rise in patent applications and requests for PPH overnight.
With the help of the PPH, Patent Offices can share results of the Patent Examination and Patent Searches amongst themselves. This helps streamline and accelerate the patent filing procedures.
The patent applications which will be received by the CGPDTM will only consist of specified technical fields such as Computer Science, IT, Physics, electrical, electronic, civil, mechanical, etc. The JPO may receive applications in any field. The target is to reduce the time taken by Patent Offices for examination of the patent applications, which is to be done within 12-13 months by March of 2021 and within 6-7 days in cases of expedited applications.
As a result, we anticipate accelerated examination and processing of Indian patent applications in Japan. Hence, it is very likely that the PPH programme will definitely encourage patent filings as the process will become easy and expedite.
It can be said that September, 2019 proved to be a lucky month for Hindustan Unilever Limited (HUL). The British-Dutch Company managed to successfully obtain four back to back exparte ad interim injunction orders from the Hon’ble Calcutta High Court, against its infringers. Over and above, they managed to get a Special Officer appointed by the Court to visit the premises of the infringer to personally inventorise and secure the infringing goods.
Pappu Kumar 1- He was manufacturing, selling and distributing, detergent under the mark "SUPER EXCEL PLUS” in packets with trade dress, graphics and colour scheme deceptively similar to the packaging and trademark of HUL’s product "SURF EXCEL EASY WASH". Mr Pappu Kumar also copied HUL’s registered 'splat' device. The Hon’ble Court granted an ex-parte ad-interim injunction in favour of HUL as the packets in which the detergent was a colourable imitation of the HUL’s splat device. Furthermore, the use of the words "EXCEL" in respect of detergents also appears to be infringing HUL's word mark "EXCEL".
2. Satveer Kumar & Anr2 - They were manufacturing, selling and distributing the detergent under the mark "TOTAL SUPER DETERGENT POWDER" in packets having trade dress, graphics, and a colour scheme deceptively similar to HUL's product "SURF EXCEL". Furthermore, they were also using a splat logo similar to that of the HUL's registered splat device.
The Court was satisfied that the defendant’s products had a colourable imitation of HUL's registered logo and appeared to be infringing HUL’s copyright in the artistic work comprised in the label/packaging of its "SURF EXCEL" range of products. The Hon’ble Court restrained Satveer Kumar and his companions from selling/ offering for sale/ marketing the detergent in packets/labels that were similar to the packets/labels of HUL's product "SURF EXCEL".
3. Avadh Kishor Saha 3- He was manufacturing, selling and distributing detergent under the mark "SUPER ULTRA RIN" in packets having artistic work, trade design, graphics and a colour scheme, similar to the label and packaging of HUL’s product "ACTIVE WHEEL". HUL has registered trademarks for "RIN" and "RIN ACTIVE" and also has a copyright registration of the artistic work in the label for “WHEEL”/ “ACTIVE WHEEL".
The Hon’ble Court granted an exparte-ad interim injunction in favour of HUL as the use of the word "RIN" in connection with detergent appears to infringing HUL’s registered trademark and use of deceptively similar packaging appears to be infringing HUL's copyrights in the artistic works in the label/packaging of “ACTIVE WHEEL".
4. Atul Tiwari 4- Last in the list, Tiwari was manufacturing, selling and distributing detergent powder under the marks “EKO PLUS DETERGENT POWDER”, "DHRA DETERGENT POWDER", "ANANYA DETERGENT POWDER" and "TRETA DETERGENT POWDER". On one of his product variant, he was using the splat device identical to that of HUL's registered splat logo.
In addition to the above, he also adopted all the leading and essential features of the product packaging of SURF EXCEL including the layout, get up, colour combination, trade dress along with the registered logo.
On the other three products, he was imitating the artistic work, get up and layout containing the prominent white burst at the centre, display of lemons along with flowers placed identical to the placement of lemons and flowers in the labels and packaging of HUL’s another product "ACTIVE WHEEL", which is a copyrighted artwork of HUL.
The Hon’ble Court granted an exparte ad interim order of injunction as the use of the impugned logo and artistic work on the impugned products infringes HUL's registered trademark in the splat device and also infringes HUL’s copyrights in the artistic works comprised in the label/packaging of "ACTIVE WHEEL" and "SURF EXCEL”.
- Adv. N. K. Bhardwaj
RK Dewan & Co. is privileged to fight a tough battle for our client Mr. Suneel Darshan against the web-giant Google in a case of copyright infringement and winning it for our Clients! The case has various insightful observations which are discussed below.
Suneel Darshan, a renowned film producer, proprietor of Shree Krishna International (“the Plaintiff”) had filed a suit against Google Inc., Google India Pvt. Ltd. & YouTube LLC (“the Defendants”), at the District Court of Gurgaon, Delhi NCR for permanent injunction, damages and rendition of accounts etc. pleading that the Defendants are involved in the acts of infringement of Plaintiff’s copyright in respect of his Sound Recording, Cinematograph Films and Audio-Visual Songs etc. (“the Works”) by the Defendants.
The Plaintiff pleaded that the Works, were being unauthorisedly uploaded on YouTube by using YouTube’s popular feature “YouTube Downloader”. The Plaintiff stated that it never gave any authorization to the Defendants for storing, telecasting and/or communicating the works to public. The unauthorized downloader and the Defendants are sharing the advertisement revenue etc. generated from the unauthorised exploitation of copyright works of the Plaintiff and further that the Plaintiff suffered huge financial losses.
Mr. Suneel Darshan appeared as Plaintiff’s witness. Ms. Gitanjali Duggal appeared as witness for Google India and Ms. Debra Tucker (an employee of Google Inc. and Manager, YouTube Legal Operations) from USA appeared as witness for Google Inc. & YouTube and their testimony were examined and cross-examined.
According to Section 51 (a) (i) of the Copyright Act, 1957, inter alia, states that copyright is said to be infringed if a person “permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright”.
The Defendants argued that they merely provide a platform for communication and sharing of information without charge and that Section 51(a) (i) of Copyright Act has no application as the Defendants had no prior knowledge that the uploaded contents are infringing as required under Section 51(a) (ii) and that it was Plaintiff’s responsibility to identify specific URL and notify to the intermediary to make the Defendants liable. The Defendants relied upon MySpace Inc. Vs. Super Cassettes industries Ltd.5 The Defendants further argued that being mere service providers/ intermediaries within the meaning of the IT Act, 2000 and having no control over the content uploaded by users, they could not be held liable for the alleged infringement of the Plaintiff’s copyright.
Relying upon Christian Louboutin’s judgment, submitted by the Plaintiff, the Court held that the Defendants cannot be considered to be immune under section 79 of the IT Act, 2000. It observed that as per the IT Rules, the Defendants were under the obligation of taking down the Works atleast after being informed by the Plaintiff. Further, being aware of the title of the content the Defendants could have easily located the URL. Thus, the arguments of the Defendants that the Works were not listed on YouTube, due to the absence of any URLs were rendered baseless by the Court.
After full trial and considering the evidence of the parties as well as the documents on record and the arguments of parties the Court held that the Defendants have indulged in infringement of copyright qua the contents / songs of the Hindi movies produced by the Plaintiff and further that due to said act of infringement the Plaintiff has suffered monetary loss, awarded damages (to the tune of INR 50,000) to the Plaintiff and restrained the Defendants etc. from infringing the Works of Plaintiff and decreed the suit in favour of Plaintiff and against the Defendants.
Have you ever carefully looked at the Toblerone (a popular Swiss chocolate) Logo?
Give it a try now, do you see anything peculiar?
You spotted it, didn’t you? Yes! It’s a Bear! Once you’ve spotted it, its hard to overlook it.
The story supporting the logo is as follows: the Toblerone bar was introduced in 1908 by a gentleman named Theodore Tobler and his cousin, Emil Baumann. The Tobelrone bar is always found in pyramind shaped triangles.
The Triangle shape of the Chocolate and the Mountain on the logo:
The chocolate is said to have been created in BERN, the Swiss Capital. Whereas, the Matterhorn mountain is located close to Bern inspiring the unusual ‘Traingle’ shape of the chocolate and the mountain in the logo.
The bear is featured on the ‘court of arms’* of Bern, thus the white bear in the logo, is a tribute to the place where the confectionary was created.
*Coat of arms was the principal part of a system of hereditary symbols which helped to identify the dead and wounded on the battlefields. The symbol of the court of arm is reproduced below for reference.
And now, a little food for thought: