Apr 20

RKD NewsNet April 2020

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

International News

Most number of Patent Applications filed by?

The World Intellectual Property Organization (WIPO) in its recent annual report revealed that, the highest patent filer in the world was China. For the past 4 decades i.e. since 1978, the USA had topped the Patent Cooperation Treaty (PCT) rankings. However, in 2019 China overtook USA by filing 58,990 applications as opposed to USA’s 57,840 applications under the PCT. The highest PCT application filers after China and USA, are Japan, Germany and South Korea. The total number of patent applications filed at CNIPO (Chinese Patent Office) alone are 1.401 million, while those filed at the USPTO (US Patent Office) are 616,852.

The Chinese telecom Huawei filed the maximum number of applications for the 3rd year in a row overtaking giants such as Mitsubishi, Samsung and Qualcomm. The WIPO chief stated that, the filing clearly reflected a shift in ‘locus of innovation’ towards Asia.

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As Twisted as Cheese!

Muratbey, a Turkish cheese brand stepped into the cheese sector in 1965. Established in 2008 and registered in 60 countries, Muratbey proudly represents Turkish cheeses in the world market. The cheese is exported to many countries such as the USA, the European Union markets, England, the Turkish Republics, the Middle East, South Korea, the Congo and the Balkans.

The Muratbey cheese gained immense popularity when it launched ‘twisted cheese strips’ under the brand ‘Helix’, which was not only the first of its kind in Turkey, but in fact in the world and changed table presentations into pieces of art. Muratbey received the World Dairy Innovation Awards 2018, for the innovation of Helix Cheese.

*We claim no copyright in the image representing Helix Cheese. The image has been used for reference and educational purposes only.

The Turkish company, on June 4, 2018 applied for the registration of the 3D shape mark of the cheese sticks at the EUIPO under Class 29 for milk products. The Examiner however, rejected the application on the ground that, the mark was non-distinctive. The Applicant filed an appeal at the EUIPO challenging the decision of the Examiner and argued that, the mark was its unique creation and a first of its kind in the market. The Board of Appeal however ruled that, the uniqueness of the product was merely a consumer perception and thus, was non-distinctive. The Board of Appeal further went on to explain that, “nothing had enabled it to determine whether there were several initially separated strips of cheese which had been twisted to form a new strip, or if it was simply a strip of cheese with several light notches." Further, the European market is known to consist of a variety of cheese in numerous shapes viz., cheese in cubes, cheese in balls, grindstone, slices, sticks, strips, twisted strips, braided strips, etc., the consumer is likely to look at the applied twisted cheese shape as a variant in the market and not relate it to a particular manufacturer.

Thus, the Board of Appeal upheld the decision of the Examiner and rejected the plea of registering the 3D shape mark.

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Brilliance too common amongst students?

2 Indian schools, one in Chhattisgarh and one in Bihar, run by 2 different institutions, coincidentally have the same school name: “Brilliant Public School”. The Brilliant Public School from Chhattisgarh is run by the Brilliant Public School Society (“Plaintiff”) while the one in Bihar is run by B.D. Sah Foundation Trust (“Defendant”). The Plaintiff, the registered proprietor of the trademark “Brilliant Public School”, filed a suit for trademark infringement against the Defendant stating that it was infringing upon the Plaintiff’s trademark by using the same school name. The Defendant took the defence that the word “Brilliance” was common with respect to schools and being a generic term, the Plaintiff could not claim exclusive rights in the mark. The Defendant thus prayed for cancellation of the trademark registration. The case was decided in favour of the Defendant by the trial court. The Plaintiff appealed at the High Court of Chhattisgarh. After reviewing the legal provisions and numerous relevant case laws, the Court observed that there was no cogent evidence on record to show that the word “Brilliant Public School” had become generic or “publici juris”. Therefore, the contention of the Defendant could not hold ground. The case is prima facie in favour of the Plaintiff since it has a registered trademark and an interim injunction was granted. The order of the trial court was set aside.

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Chip in a trademark dip!

With branding, come crazy ideas to distinguish one’s product or service from that of another! Be it Levis’ pocket tab, Apple’s one-click mouse, Coca-Cola’s slender bottle, or for that matter even the shape of a single Potato Chip! Yes, you read me right! Did you know that the shape of “Lay’s Maxx” chips has been protected under design laws?

Frito Lay North America Inc., the snack food giant from America, has made it big even in the Indian snacks market. Unlike other chips-selling brands, Frito Lay’s potato chips have unique sharp ridges on it. Frito Lay’s Potato Chips bearing these designs are marketed by it under the brand name of “Lay’s Maxx Chips” in India and “Ruffles” all over the rest of the world. Frito Lay claims to have invented this design, popularly known as the “ridge design” having an undulating (up and down) surface:

Frito Lays’ Lay’s Maxx Chips Design Registration Views

Balaji Wafers is another potato chips manufacturer, selling chips under the brand “Rumbler”. Frito Lay filed suit at the Bombay High Court, alleging that Balaji Wafers is also selling chips with Ridges and thus violating Frito Lay’s rights in the registered designs. In its defence, Balaji Wafers submitted that the design registered by Frito Lay was invalid and its registration should be cancelled, since there were several chips-making companies that sold chips with a wave or waves or ridges. It argued that the design registered by Frito Lay was not new and unique. However, the Court observed that the photographs of the existing chip-designs submitted by Balaji Wafers were soft waves/ curves, whereas Lay’s chips had sharp ridges. This made it distinct from the other chips. The Court was of the opinion that a prima facie case was made in favour of Frito Lay and therefore granted ad-interim injunction against Balaji Wafers. From a consumer’s point of view, do you think one will be able to differentiate “sharp ridges” from “waves” in chips? Or would one be busy savouring it?!

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The Face(David)Off

Coty Inc., an American multinational beauty company founded in 1904 in Paris, owns over 77 world renowned brands including the brand Davidoff. The German arm of Coty recently filed a suit for trademark infringement against Amazon, for stocking its Davidoff perfume for third party sellers, since it is only Coty which holds the license for the brand in EU. The suit was initially filed at the German Courts however was referred to the European Court of Justice (ECJ). The case filed was specifically with respect to ‘Davidoff Hot Water Perfume’, which was listed on the online portal of Amazon. Amazon permits third party sellers to use the product’s listing and distributions services in exchange for fees. Coty argued that it had not given consent for the bottles to be sold in the EU.

Amazon submitted that there are millions of independent sellers who use the Amazon portal, wherein multiple sellers pay a fee to use the platform to sell products, make use of the warehouses and logistics. Amazon further submitted that it strictly acts against infringers and the protection of IP. Amazon further submitted that they have spent over $500M in order to tackle counterfeit goods.

The Court ruled that, Amazon itself does not offer goods for sale or make them available to the market directly, mere ‘storage of goods’ does not amount to trademark infringement.

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Tresóna v. Burbank

A case for copyright infringement was filed by Tresóna Multimedia, LLC, against Burbank High School, the School’s Music Club and parents of the students performing at the club (Choir) at the Eastern District Court of New York. Burbank’s music program includes instructional classes as well as competitive choirs which participate in fund raisers to raise money for covering the choir group’s expenses. The Choir used the songs “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart,” in parts in its musical compositions.

Tresóna claimed that the Burbank High School’s student choirs failed to obtain licenses for their use of copyrighted sheet music in arranging a show choir performance. However, the District Court observed that Tresóna failed to provide evidence of its own ownership/ interest in 3 out of the 4 works and therefore did not have sufficient legal standing to sue Burbank. Moreover, the District Court held that Burbank’s use qualified as ‘fair use’, since the music was being used only for educational purposes. Thus, the case was summarily decided in favour of Burbank and against Tresóna. However, the district court did not award payment of attorney’s fees in favour of Burbank. Both parties appealed to the Ninth Circuit Court, which affirmed the district court’s ruling, however, held that the court should have also awarded the attorney’s fees in favour of Burbank.

Reversing in part, the Ninth Circuit held that “the district court abused its discretion in denying defendants attorneys’ fees under 17 U.S.C. § 505 because defendants prevailed across the board in this action in the district court and won a ruling on their fair use defense on appeal, Tresóna’s arguments were objectively unreasonable, and an award of fees would further the purposes of the Copyright Act. The panel therefore awarded defendants’ attorneys’ fees and remanded to the district court for the calculation of the award.”

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Dhvanil Seth on Forbes’ Under 30 List

We are pleased to share with our readers that our Client, Mr. Dhvanil Seth from Skillmatics, Mumbai, has been featured in the FORBES 30 Under 30 - Asia - Retail & Ecommerce 2020.

We are proud to have held his hand from day one and wish that he hops, skips and jumps ahead and finds success all the way!!

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Can you move a candle like a See-Saw without touching it?

Hint 1: You are allowed to light the candle.

Hint 2: You are allowed to light it on both ends!

Think your way through the lock down and watch out for our next Newsletter for the answer!

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Hidden Meanings in Trademarks

The Unilever group is a reputed and mammoth multi-national known for its services and products globally. Their popular brands include, Rexona, Knorr, Dove, Lipton, Surf, Magnum, Sunsilk, Axe, etc. The Unilever logo is represented as below:

While creating the logo, the company wanted to ensure that a person viewing it, would be able to understand the varied areas/businesses they cater too. Yes, we see the prominent U for Unilever, and some graphics drawn inside this U. But, do these graphics mean something? In fact, they do. There various icons carefully intertwined to form a U. Each icon represents a line of business/ values of the company. HUL describes each of them on its website:

*We claim no copyrights in the above referred logo or its elaboration. The same is represented only for reference and educational purposes. We provide due credit for the above elaboration to:


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