May 20

RKD NewsNet May 2020

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

General News

  • When the going gets tough, it is the tough that get going
  • World Intellectual Property Day, 2020
  • International News

    When the going gets tough, it is the tough that get going

    In furtherance to our commitment to keep things rolling even in these tough times and to make our small contribution by not charging professional fees to inventors for their inventions related to the eradication of COVID- 19 or facilitating its prevention and cure, we are happy to share that we have filed more than 15 patent applications on behalf of various inventors in the past 2 weeks!

    We are indeed thrilled with the response received from our clients and acquaintances.

    We are encouraged to keep doing our bit towards curbing the Pandemic.

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    World Intellectual Property Day, 2020

    World IP Day is celebrated on the 26th of April every year. The General Assembly of the World Intellectual Property Organization (WIPO) approved the idea of declaring a particular day as World IP Day with its primary aim to” raise awareness of how the various IP's such as patents, trademarks, copyright and designs impact the daily life" and "to celebrate the creativity, and the contribution made by various entities towards the development of societies across the globe.” Since, the Convention establishing the World Intellectual Property Organization was entered into force on April 26, 1970, the date has been celebrated every year since 2000.

    The WIPO releases a theme on the World IP Day every year. The themes released by the WIPO in the past years are as follows:

    • 2001 – Creating the Future Today

    • 2002 – Encouraging Creativity

    • 2003 – Make Intellectual Property Your Business

    • 2004 – Encouraging Creativity

    • 2005 – Think, Imagine, Create

    • 2006 – It Starts with an Idea

    • 2007 – Encouraging Creativity

    • 2008 – Celebrating innovation and promoting respect for intellectual property

    • 2009 – Recovery through Innovation

    • 2010 – Innovation – Linking the World

    • 2011 – Designing the Future

    • 2012 – Visionary Innovators

    • 2013 – Creativity – The Next Generation

    • 2014 – Movies – a Global Passion

    • 2015 – Get Up, Stand Up. For Music.

    • 2016 – Digital Creativity: Culture Reimagined.

    • 2017 – Innovation – Improving Lives

    • 2018 – Powering Change: Women in Innovation and Creativity

    • 2019 – Reach for Gold: IP and Sports

    and lastly, the theme for 2020 is: "Innovate for a Green Future", in view of the ongoing pandemic.

    The World IP Day message by WIPO Director General Francis Gurry is – "Innovation provides options and is the key to unlocking the solutions and approaches we need to create a sustainable and green future."

    The WIPO has also urged individuals and organizations to pledge building a pathway to a green future. One can make their pledge by accessing the link: https://worldipday.wipo.int/post/submit.


    Wish you all a happy World Intellectual Property Day!

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    Temporary Justice in 15 Days!

    3M - an American multinational company, is headquartered at Minnesota, USA. It is one of the world's biggest manufacturers of the N95-style masks, which are currently in high demand as they effectively filter out the tiny coronavirus particles. The company has increased its production to over a 100 million masks per month, with an intention to increase the U.S. output to 50 million per month by June. This has however led to an increase in counterfeiters taking undue advantage and also hiking the prices of the masks in the market.

    Recently 3M filed for an interim injunction against Performance Supply LLC, a New Jersey based company on the grounds of trademark infringement, unfair competition, false association, false endorsement, false designation of origin, trademark dilution, false advertising and deceptive acts and practices.

    3M claimed that, Performance had proposed to sell the 3M N95 masks in NYC at a nearly 500-600% hike as compared to the price listed on the respirators. It was further submitted that, Performance was not an authorized distributor of 3M and thus has no rights to use the popular 3M marks in any manner.

    *The image is used for reference/educational purposes only. We do not claim any copyright in the above image.

    The U.S. District Court Judge, granted a speedy temporary order and provided Performance, one week to justify, why the temporary order should not be made permanent. The case was heard on a priority basis in view of the eminent public risk with the temporary order being passed in just 15 days!

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    How famous are you?

    Vitoria Beckham. You may know a lot of Victorias and a few Mrs. Beckhams, however, these 2 put together bring only one image to the mind. Right? With being famous comes the responsibility of protecting the public image and avoiding its misuse. Victoria Beckham is not only a celebrity figure, but also owns the brand VB for fashion and cosmetics. Beckham tried to oppose the registration of the trademarks “VB Salon” and “VB Skinlab” in Australia. Beckham put forth her sales figures to establish goodwill and reputation. However, the Australian IP office held that the sales figures do not establish a goodwill outside the sector of cosmetics and clothing line. Beckham also argued that the VB Skinlab used a brunette model and that consumers were likely to confuse the brunette to be Victoria if the same is used with the brand VB.

    This leaves us pondering as to whether a celebrity can go this far to protect her brand/ personal rights? Clearly not, unless one can establish actual reputation in the particular area of trade or business, in this case, skin care products. A celebrity may be known world over, but if they are not well known for that particular service or products, establishing goodwill may become difficult.


    * We do not claim any copyright in the images and they have been used for representational and academic purposes only. Source: Wikipedia

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    So you’re saying, OKLOK and OKLOCK are distinct?

    In a recent, rather appalling decision by the Japanese Patent Office (JPO), the marks OKLOK and OKLOCK were considered dissimilar.

    The mark OKLOK, filed by Shenzhen Longbrothers Digital Co., Ltd.(a Chinese entity), was granted registration in September, 2018 for electric locks, electronic key fobs, anti-theft warning apparatus and the like in Class 9. The company is accessible through the URL: http://www.oklok.com.cn/.

    In April 2019, an entity filed for the mark OKLOCK in Class 12 covering anti-theft locks used on automobile steering wheels, hand brakes and other such goods covered under Class 12. The JPO Examiner rejected the application for OKLOCK on the basis of Article 4(1)(xi) of the Japanese Trade Mark Law, which states that, when a mark is identical with or similar to a prior registered mark, it cannot be entered in the register. The JPO Examiner, primarily assessed the two marks on the basis of visual, phoneticand conceptual similarity and concluded that there ought to arise a likelihood of confusion amongst the consumers. The Applicant however, filed an appeal against the JPO Examiner’s decision and argued upon the dissimilarity in the marks.

    The Appeal Board held that, the marks were dissimilar on the basis of the following grounds:

    • The visual difference due to the presence of the letter C in the applied mark OKLOCK as opposed to the registered mark OKLOK.

    • The phonetic dissimilarity was enunciated as follows: the registered mark is not a dictionary word and is merely. Combination of 5 letters, each letter will be pronounced individually when referring to the mark, i.e. OKLOK would be pronounced as“oʊˈkeɪ el ə keɪ”, whereas the applied mark OKLOCK will be pronounced as “o?'ke? l??k”

    • There is conceptual difference in the marks, since the applied mark has no specific meaning and will be considered a combination of OK and LOCK; whereas the registered mark OKLOK is a coined term and has no meaning whatsoever either, conclusively the marks being incomparable.

    Based on the above reasonings, the Board reversed the Examiner’s decision.

    Are you convinced with the Appeal Board’s decision? Are the marks OKLOK and OKLOCK really phonetically, visually and conceptually distinct? Well, we definitely aren’t convinced! It is unreasonable in our opinion to believe that the mark OKLOK will be pronounced referring to each letter of the mark. The Board also erred in identifying the visual differences in the marks.

    Let us see, if the Applicant of the registered mark challenges the Board’s decision, rest assured we shall keep you posted.

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    IP in Street Arts

    Street Art, is a contemporary art form that has flourished in the past decade. Flourished I say, and not originated, because the origin of the practice of painting street walls, and voicing opinions directly into the eyes of the public has been a long standing practice. Its worst side leads to vandalism and its best and positive form leads to street art. Voicing one’s opinions, radical views, breaking taboos, questioning societal practices, poking the conscience of the society, just plain- ‘bring a smile on a passer-by’s face’ are some of the many motivating factors for street artists. It is art, not protected in the four walls of the museums or art galleries, but right there on the streets, amidst the crowd, standing out like a colourful umbrella!

    Now that we have established that street art is actually- An Art, we must also explore its protection under intellectual property. In a recent case at the District Court Eastern District Of New York - by LMNPOPI, a nationally known artist and social activist, filed a case against XYZ Films for copyright infringement in one of its street art.

    In its film titled Bushwick, XYZ Films depicts LMNOPI’s art located at the corner of the Wyckoff and Starr Streets next to the entrance to the Jefferson Street subway station (the “Work”), New York. This location was purposefully used to bring to the attention of the audience, that the scene is shot at Jefferson Street. The art here is a painting of Ta’Kaiya Blaney, an actress, songwriter, etc. Blaney was also a plaintiff in this case, stating that her Right of Publicity was violated. The plaintiffs contended that their consent was not sought before using their art in the film.

    The Court held that admittedly, even though the plaintiffs have a right in the work, and that the same was used by the Defendant in its film, the use was negligible (De minimus). This means that the use was so negligible that it could be counted as fair use. The Defendant also stated that its intent behind using the work was not to encash upon the reputation of either the artist or the subject, but merely to draw attention to the location of the scene. The Court dismissed the petition stating that the use amounted to fair use.

    What is significant to note is that the nature of the intellectual property also determines of kind of protection that can be awarded to it. Street art is far more exposed to the public by its inherent placement. Maybe, if there was a poem or a painting from a closed art gallery used in the movie, the standards of protection would differ. However, merely depicting a public street in a movie, as is, cannot be termed as violation of the rights in the constituent IPs in that street.

    * We do not claim any copyright in the image. The same has been sourced from LMNOPI’s website: https://lmnopi.com/#/iii/

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    Spicy Trademark Suit Over Descriptive Marks

    Trademark law protects a trademark if it is primarily unique and non-descriptive of the goods or services for which it is being used. For example, you cannot register the mark Computer to sell computers or computer related products, you have to name it different, such as Apple, Microsoft, Dell,Ubuntu etc. This is one of the basic tenets of trademark law.

    Sky Enterprise Private Limited (“Sky Enterprise”) is engaged in the business of processing, manufacturing and marketing of various types of spices, condiments and masalas (mixture of spices). It has, inter alia, registered the marks “Star Zing”, “Black Chinese pepper Masala" and “White Chinese Pepper Masala", in Class 30 for spices. A cursory glance at these marks would portray that Star Zing is the brand and the other marks are describing the different Masalas sold under this brand. However, Sky Enterprise, thought differently. According to them, the terms “Black Chinese Pepper Masala" and “White Chinese Pepper Masala" were so closely associated with their brand, such that the customers could identify products described in this manner only with Star Zing. Sky Enterprise filed a suit against proprietor, Abaad Masala which was found to be using the marks viz., “Black Chinese Pepper Masala" and “White Chinese Pepper Masala" along with its brand name AMZ on their masala packets. Sky Enterprises alleged that the use of these terms amounted to infringement of its rights in the trademark.

    The Defendant argued that the words 'Black Chinese Pepper Masala' and 'White Chinese Pepper Masala' are used by the Defendant in its trade dress, just as in the case of the Plaintiff, for identifying or indicating the kind, quality, and intended purpose of the goods.

    The Court held that the defendant may use the words 'White Chinese Pepper Masala' and 'Black Chinese Pepper Masala' however, not in this particular sequence. It may use these words in some other sequence or in combination with some other words. However, this particular combination was associated distinctively with the Plaintiff, and it being the registered proprietor of the marks, was entitled to protection.

    This case goes against the conventional notion of not allowing descriptive marks to be registered in the first place, let alone protecting them in an action for infringement.

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    Riddle Remember last time’s Riddle?

    Well, it’s very simple. Balance the candle on a stand at the centre. Keep both ends free. Light the candle on both ends. As the wax starts melting, the candle gets lighter on one side. This side goes up and the other side comes down. Then, as the wax on the other side burns, it becomes lighter and goes up, bringing the first side down. And it goes on!.. See! See-Saw!!!

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    Hidden Meanings in Trademarks

    The most ingenious of trademark designs, embed a story in the trademark. The Hope for African Children Initiative was started with the view of protecting and helping children in Africa who were orphaned when their parents suffered or died from HIV AIDS. The logo they used, puts all these words in a simple graphic representation! It shows a child and a mother and the map of Africa between them.

    Same principle is used in the logo of the Bronx Zoo, which shows animals as well as the skyline of New York.


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