Sep 20

RKD NewsNet September 2020

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

International News

  • Smart Phones, Smart Homes and now “Smart Masks?!”
  • TENET: a twist in Time
  • Defender vs. Grenadier
  • No more ‘Finger Lickin’!
  • National News

    Smart Phones, Smart Homes and now “Smart Masks?!”

    Innovation is truly unique! Just as people think – this is it, the future is here and *BAMM* a new mind boggling technology enters the market. Today we would like to introduce you to a ‘smart mask’.

    The most used products of 2020 undoubtedly include sanitizers and masks. While the lay man believed that the only use of a mask is to cover and thus protect the nose and the mouth from being exposed to germs, a Japanese Start-up named Donut Robotics had a different take on the subject. The company was established in 2014. As on date the company is registered in Tokyo, Singapore and Philippines. They have developed and launched a tech-mask which is capable of not only amplifying but also translating the wearer’s speech between 8 different languages viz. Japanese, Chinese, Korean, Vietnamese, Indonesian, English, Spanish and French. The mask known as ‘C-Face’ is however not capable of protecting the wearer from the virus and instead has to be worn over the regular mask. The mask is named C-Face since it stands for 5 important C’s: Clear voice, Connect with smartphone, Cool design, Clean material, Combat with Corona virus.

    *Image Source: https://www.designboom.com/design/donut-robits-c-mask-internet-connected-07-07-2020/. We do not claim any copyright in the image. The image is used for representational and educational purposes only.

    The mask has an embedded microphone and connects via Bluetooth to the wearer’s smartphone. The Bluetooth is capable of connecting to a smartphone kept a distance of 10 meters. The mask is also equipped with a WiFi router. The patent grant for the product is currently pending at the Japan Patent Office.

    The mask has received a very positive response and will be launched in the markets in Japan in December, 2020 with the first wave of distribution bringing out 5000-10000 masks available and priced about $40-$50. It is likely to enter the UK and US markets by April, 2021.

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    TENET: a twist in Time

    Not all trademark disputes end up in litigation, some turn out to be stories worth sharing.

    When Christopher Nolan’s much-awaited film TENET launched its first trailer, its title was presented in a simple, slick logo wherein the last two letters, E & T were inverted. This was meant to hint a reference to the “time inversion” concept, which is central to the film’s plot. However, Christopher Nolan was unaware that the same logo was already being used by a Washington- based bicycle making company, also named Tenet. Tenet Bicycles was using the logo much prior to its adoption for the film.

    Source- Instagram Post from TENET Bicycles. We do not claim any copyright in the images. These have been used for academic/ representational purposes only.

    To clarify that it has not stolen the logo from the film, TENET Bicycles shared an Instagram post stating that it has been granted the trademark “Tenet” for bicycles on October 9th, 2018, and that it does not have any issue with Christopher Nolan’s use of the word TENET, but only with his stylization of the mark that makes it identical to that of TENET Bicycles.

    Tyler Deschaine, founder of TENET Bicycles stated:

    “I’ve spoken with lawyers and despite the validity of my concerns, I’ve been advised not to pursue it. Even sending a letter could potentially open myself up to a pre-emptive lawsuit from Warner Brothers. These sorts of things can get dragged on for years and the legal fees can go well into the hundreds of thousands of dollars. We’re a tiny component company that is taking baby steps to carve out a place for ourselves in the industry. We in no way want to get raked through the coals of litigation. That would end poorly for us. Also, we’ve got more important things to focus on, like developing new product and creating rad content”

    “I want to make it clear that I never thought of this scenario as a get rich quick scheme. At the end of the day, I just want to avoid potential damages to my brand’s reputation and I suppose this article will help clear the air.”

    However, when the statement went public, Warner Bros., which is the producer of the film Tenet, reached out to Tenet Bicycles, a response from the director Christopher Nolan himself:

    Dear Tyler,

    Warners just showed me the logo for your company, so I wanted to reach out directly and reassure you that our logo was arrived at without reference to yours. I know this because I designed ours myself, evolving it over the last six years, driven by a fascination with the symmetries of a word which is central to my story and its themes. I thought I’d done something unique – but clearly, you were driven by the same creative impulse. I guess lightning can strike twice, and obviously I understand that you would not want anyone thinking that you had been inspired by our movie’s title treatment – feel free to quote me in shooting such misunderstandings down. I love our logo so I hope you won’t feel this is necessary, but if you like, I can stop using it since it seems you went public with yours first.

    Yours respectfully.

    Chris Nolan

    Surprisingly, neither Deschaine nor Nolan are worried about the scenario and took it as a matter of coincidence. However, it seems that TENET Bicycles has asked Warner Bros to not use the partially inverted logo for its film as Warner Bros. Pictures has changed the film’s logo in its recently released trailer.

    If we look back in time a few months later, we may notice that amicable settlement, in this case, proved to be ‘good publicity’ for both, the bicycle and the film. You’ll be surprised to see that the Tenet Bicycle’s website has a page especially dedicated to this controversy! Guess there is a twist in time!

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    Defender vs. Grenadier

    JLR’s iconic SUV Defender originally called the Land Rover traces its roots back 1948. Its 2 main models were “Land Rover 90” and the “Land Rover 110”. However, in 1989, when JLR launched its third model Discovery, these SUVs were renamed as Defender 90 and Defender 1103 . The Defender series was a huge success for JLR. In 2008, Tata Motors acquired the JLR. In 2016, Jaguar Land Rover decided to discontinue the old Defender, and in 2020 it launched a revamped version of the classic SUV. Recently, Tata Group-owned Jaguar Land Rover (JLR) was refused any trademark rights in the shape of its iconic SUV Defender in the United Kingdom.4

    Reports suggest, Sir Jim Ratcliffe, chairman of the multinational chemical company INEOS, and also a huge admirer of the old-school Defender was disappointed with the discontinuation. He even offered to buy from JLR the old Defender’s tooling and the rights to carry on the production of the retired vehicle. However, JLR refused and resultantly, Ratcliffe went ahead with his alternate version called Grenadier inspired by the good old Defender. He announced the project in 2017 stating that Grenadier was inspired by the old Defender.

    At this juncture, JLR initiated legal action and wrote to INEOS that it would regard the production of vehicles bearing the same shape and appearance as its Defender models as a breach of its intellectual property rights as it would misrepresent to the general public that JLR is associated with Grenadier. Since JLR never got a trademark registration for the shape of the Defender, it applied for a trademark registration retrospectively, but INEOS opposed it. The UK Intellectual Property Office (UK IPO) rejected JLR’s application stating SUV shapes lacked distinctiveness. The UK IPO also added that the boxy shape of the SUV "may be unimportant, or may not even register, with average consumers”. Consequentially JLR appealed against UK IPO’s decision before the High Court, which was dismissed the appeal and upheld the decision. However, with the dismissal of the HC Appeal, INEOS is all set to launch its Grenadier in 2021.

    If the JLR Defender lacks any distinctiveness, if its shape is not iconic or unimportant for an average consumer, then why did Ratcliffe persuade JLR to buy its production rights and tooling? Or was comparing the JLR with the Grenadier at its launch, a subtle way to ride upon its long-standing reputation? These issues may not entirely legal ones, but they do impact the legality in the matter while claiming distinctiveness.



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    No more ‘Finger Lickin’!

    In one of our earlier articles, we covered how various brands worldwide responded to the spreading awareness of the pandemic by tweaking their logos (if you missed it, read here).

    Recently, KFC tweaked its slogan from ‘it’s finger lickin’ good’ to ‘it’s good’ to spread awareness on the levels of hygiene expected to be maintained from persons all over world in order to dodge the virus.

    Governments across the globe have been striving hard to ensure that its citizens are taking utmost care by maintaining hygiene, social distancing and are staying indoors. However, in the months of March and April, 2020, the Advertising Standards Authority received complaints from over 163 countries wherein KFC ads displayed persons licking their fingers while eating chicken. It is presumed that the tweak in the slogan is a result of the complaints received.

    The Global Chief Marketing Officer of KFC however stated that, the change of the slogan is only temporary and that the original slogan will be used ‘once things go back to normal’.

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    Make Patent pools to drown COVID -19

    - Dr. Niti Dewan and Ashima Sobti

    We don’t know when our lives will be back to “Normal”. But it is certain that nothing much will change until humans develop herd immunity, the virus mutates into an innocuous strain, or we have a vaccine.

    Yes, pharma companies and research institutions are trying their best to create vaccines or drugs to reduce the effects of the virus. Still further, other entities are involved in creating immunity boosters to build up the immunity of humans, so that the virus can be contained.

    However, usually, it takes years to develop any medicine, but this period is too long a pause for our economy and our health. What can be done under such circumstances? Pharma companies, research institutions, health workers, hospitals must all come together to participate in a Medicinal Patent Pool!

    What is a Patent Pool?

    A Patent pool is an association of two or more entities agreeing to license their patents to one another or to any third party. The need for a patent pool arises when due to the complex nature of the development of a particular technology requires multiple patents and these patents or patent applications are owned by a diverse group of people. The creation of the new technology needs inputs from various sources to create a productive technical solution and achieve fruition.

    And how does that help in the present Covid situation?

    Entities can opt for a “medicine patent pool” and negotiate with patent holders to obtain licenses for developing and marketing medicines, sanitizing products & medical devices like ventilators, HazMat suits, etc. A patent pool is the coming together of diverse minds, experts in their own fields, who will be able to quickly provide solutions in a cost-effective manner. These entities can include large multinational organizations, small companies including startups, research departments of academic institutes and even individual scientists.

    How can these entities come together?

    For this purpose, a medicinal patent pool was formed. On 31st March 2020, the board of the Medicines Patent Pool (MPP) has announced to commit a significant investment for innovative treatment, diagnostics, and respiratory triage tools as part of the global response to the Covid-19 pandemic. The MPP decided to work collaboratively through existing mechanisms for voluntary pooling and licensing of patents and is looking forward to working with the World Health Organization (WHO), the member states and other key stakeholders, to make the initiative possible. Let us hope that inventors all over the world will pool as many patents as possible to drown the effects of the Corona virus… forever!!

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    Do we need a cure for the Coronil trademark case itself?

    The Supreme Court of India headed by Chief Justice S A Bobde refused to entertain Arudra Engineering Private Ltd.’s (“Arudra”) appeal against the Madras High Court’s decision to stay the order restraining Patanjali Ayurved Ltd. (Patanjali) from using the trademark 'Coronil'.

    Earlier this month, a Single Judge of Madras High Court imposed a permanent injunction on Patanjali, restraining it from using the term 'Coronil' for immunity-boosting medicines. Arudra is the registered proprietor of the marks Coronil-92 B and Coronil-213 SPL with respect to acid inhibitors for industrial cleaning preparations falling in Class 1. The Single Judge held that Patanjali was infringing upon Arudra’s rights in the trademark. The Ministry of AYUSH had also restrained Patanjali from propagating through media and social media, that its medicine, under the brand Coronil was a “cure” for Covid-19, when in fact, it was merely an immunity booster. The Single Judge had also imposed a cost of INR 10 Lakh on Patanjali and Divya Yog Trust for commercial exploitation of the fear of Corona virus, that is so prevalent in these pandemic times.

    However, when Patanjali appealed against this order, the division bench of Madras High Court granted interim relief to Patanjali and suspended operation of the order for 2 weeks.

    The Supreme Court has remarked “if we prevent the use of word "Coronil" during the pandemic on the ground that there is some pesticide on its name, it will be terrible for the first product." and refused to interfere with the order of the division bench of the Madras High Court. It noted that the matter is already listed for hearing in September before the Madras High Court and that Arudra was at liberty to pursue it there.

    A bare perusal of Section 29 (4) of the Trade Marks Act, 1999 (‘the Act) shows that even where an identical or deceptively similar mark is used in relation to goods or services which are not similar to those for which the trademark is registered and where such use can cause unfair advantage or is detrimental to the distinctive character of the registered trademark it can still be considered as a case of infringement.

    This section makes it clear that even though trademark registration or use is class-based, there can be an infringement of rights for dissimilar goods. The primary rationale behind this provision is ‘consumer interests’. A consumer cannot be assumed to never confuse goods with each other just because they are in different classes. With the ongoing pandemic, Coronil is also likely to receive a huge public response. This may not only be detrimental to the interests of Arudra, but also those of common consumers, who are likely to be confused as to the source of Coronil as a medicine and Coronil as an acid inhibitor. Further, when the legal provision, clearly brings out infringement across classes, there is no reason for the Division Bench of the Madras High Court or the Hon’ble Supreme Court to overlook it. We hope the same will be considered while the case is decided on merits by the division bench.

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    STEELBIRD Helmets v. Steel Bird Abrasives

    Steel Bird Hi-Tech India (Steel Bird) approached the Delhi High Court1 seeking an injunction against Mr. Harish Chander Juneja (Mr. Juneja) for using the website https://steel-bird-abrasives.ueniweb.com/ for selling its goods under the mark STEELBIRD.

    Steel Bird stated that it is one of the oldest manufacturers of helmets, pannier boxes, and automobile accessories and is using the mark since the year 1964. Its first registration of the trademark STEELBIRD dates back to 1979.

    Steel Bird contended that sometime in June 2020 it came across the website https://steel-bird- abrasives.ueniweb.com/ and on further investigation discovered that Mr. Juneja has a registration for the mark Steel Bird in class 6 in respect of grinding wheel, emery cloth, cut-off wheel, oil stone, and mounting point claiming use from 20062 . Steel Bird itself has no registration for the mark in Class 6. However, Steel Bird asserted that its mark has attained distinctiveness and gained considerable goodwill and reputation over the years. Hence use of the mark by Mr. Juneja constitutes an infringement of Steel Bird’s trademark as well as passing off. Steel Bird supported its pleading with prior injunction orders passed by the Court in its favor.

    The Court observed that Steel Bird has established the classic trinity test for grant of an interim injunction in its favor by making out a prima facie case, showing that the balance of convenience tilts in its favor and that irreparable harm and injury would be caused if the injunction is not granted.

    Consequently, the Court granted an ex-partead interim injunction till the next date of hearing, restraining Mr. Juneja and his agents from making, selling, offering for sale, advertising, directly or indirectly dealing in any good or service bearing the mark/trade name STEELBIRD or any other mark deceptively similar or identical to it.

    1Steel Bird Hi-Tech India LTD vs Mr. Harish Chander Juneja & Ors.-CS(COMM) 294/2020

    2TM No. 1798144

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    The month of September is special at R. K. Dewan & Co. because it marks the 70th birthday of Dr. Mohan Dewan, Principal, R. K. Dewan & Co. This year is also special because it marks the 51st year of Dr. Mohan Dewan’s practice as a lawyer. He is believed to be the oldest Patent Attorney and Lawyer as on date in India. It goes without saying that he is a stalwart in the field of Intellectual Property and the most sought after Lawyer and Patent Attorney as on date.

    At the age of 70, Dr. Mohan Dewan has youthful energy and he effortlessly passes his enthusiasm on to his employees/colleagues, juniors and even clients. Having dedicated his whole life to his practice in the field of protection of intellectual property, he says, if he had to live his whole life all over again, he wouldn’t change a thing!


    His strengths lie in his command over law as well as science and that makes him unique in the field of patent prosecution. Known for his witty humour, ease in articulation and detailed research in any field of science, law, history, cooking, music or literature, he is a great source of inspiration for all those around him.

    We wish him a happy life ahead.

    R. K. Dewan & Co. conducts a webinar in association with MCCIA

    The Mahratta Chamber of Commerce, Industries and Agriculture, Pune, organised a webinar on August 29, 2020 on “Legal Aspects and Intellectual Property Rights In International Business”.

    Along with Dr. Mohan Dewan, Principal, R. K. Dewan & Co., and Dr. Niti Dewan, Head of Patents and Business Development, R. K. Dewan & Co., 6 other advocates viz. Adv. Ajita Patki, Adv. Chinmay Pawar, Adv. Jagruti Kumar, Adv. Aboli Kherde, Adv. Shubham Borkar and Adv. Sachi Kapoor formed a panel for discussions on various subjects.

    Considering the vast expanse of the topic, each speaker approached the topic from a different point of view, and hence, the audience was introduced to various legal aspects of IPR and international business such as Basics of Intellectual Property Rights, Application of Intellectual Property Rights to International Business, Compliances in International Business, Agreements and Dispute Resolution, Impact of Govt. Policies such as Atmanirbhar Bharat, Make In India, and the like. The day-long webinar, concluded with a Question and Answer Session.

    We look forward to many such sessions in the near future. Watch this space for updates!

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    License hurdles of next best TikTok:

    With the ban of one of the most famous and accessible content creator application TikTok in India, many other applications of short-video platforms like TikTok have been making rounds in the smart phones of people to fill the void created by TikTok. Content sharing applications such as Takatak, Roposo, Chingari, Mitron, Josh, Snak Video etc. are in a rat race to become the next best alternative to TikTok in the market. However, one of the most crucial element of such short video platforms is the music included for user engagement, which can either sink or float the boat of such applications.

    Recently, four Music Labels have sent copyright infringement notices to various short-video platforms for infringing their copyright in such music or songs which are included for content creation. Allegedly, many of such applications do not license the use of music or songs in their applications, which attracts civil and criminal liability for copyright infringement against them. One of the major music labels of India, T-Series has served copyright infringement notices to companies owning such applications, asking them to seek license for using such music or songs in their applications.

    We have seen that Facebook had to wait for at least a year to get all the license cleared to launch the “Reel” feature on Instagram, which is a short-video creating platform. Clearly, although acquiring license can take a long time, it is one of the major hurdle to be passed for successful platforms. However, in the given case the time would be a better judge to see if the conflict between the music labels and short-video platforms would end up in license negotiations or would knock the doors of the Courts.

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    Global Innovation Index, 2020:

    It is that time of the year, where we find out which country has topped the charts by proving their capacity and success when it comes to innovation!

    The GII assessed 131 economines globally. Before we list out the top 10 countries, let us update you on where India stands. Well, India has jumped 2 position since last year is now in the top 50 countries as far as the innovation index is concerned. India is ranked 48 out of 131.

    The 10 countries topping the list are:

    1. Switzerland

    2. Sweden

    3. United States of America

    4. United Kingdom

    5. Netherlands

    6. Denmark

    7. Finalnd

    8. Singapore

    9. Germany

    10. Republic of Korea

    The virtual launch of the GII, 2020 was graced by messages from eminent persons from across the globe including a message from Mr. Piyush Goyal, Minister of Commerce and Industry and Railways, India. The video can be accessed here.

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    Hidden Meanings in Trademarks

    *The above logo is used for representative and educational purposes only.

    Kotak Mahindra Bank, commonly known as Kotak, has a simple yet unique logo. The logo relates to the Indian consumers by displaying the ‘ka’ : written in Devnagiri Script. At the same time, the also represents the ‘infinity’ symbol catering to Clients globally. One of the basic tenets of economics is that man's needs are unlimited. The infinite ‘Ka’ symbolises that Kotak has infinite number of ways to meet those needs. 5



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    Know the Real India

    India (Indian sub-continent) was also known as “land of kings and kingdoms” along with her many accolades. Many kingdoms and empires have thrived and vanished on this land. The last well-known empires were those of the Mughals and British which encompassed over almost all of the Indian subcontinent. However, as we all know, the Indian history is not constrained only to the rise and fall of Mughal and British empires in India. India witnessed some of her glorious years, spanning across centuries, under the kingdoms and empires established by various dynasties much before the Mughal empire. In this section, we will be sharing the brief history of a few such kings, emperors, dynasties of India under whose reign India flourished, both, economically and culturally.


    Gupta Empire

    India experienced her ‘Golden Age’ from 3rd Century AD to 6th Century AD, most of which saw the reign of the Gupta (गुप्त) dynasty. At the pinnacle of its glory, Gupta empire directly controlled the territory from modern day Assam to Punjab (including western Punjab in Pakistan) in the east-west direction and from Jammu valley to northern Madhya Pradesh in north-south direction. In addition to this vast territory, many kings of smaller kingdoms and chieftains across India accepted the suzerainty of the Gupta empire.

    Apart from their military and administrative geniuses, Gupta emperors were also connoisseurs and patrons of literature, art and science. The most celebrated emperor of the dynasty Samudragupta, is also referred to as ‘Kaviraj’ i.e. king of poets or poetry. The Guptas made ‘Sanskrit’ their official language. It is believed that Sanskrit’s most famous authors Kalidasa, Visakhadatta, Harisena, Bhasa adorned the courts of emperors of the Gupta dynasty. The epics: Ramayana and Mahabharata got their final touch-ups and received their present shape during this period.

    The Gupta period saw important additions to paintings and sculptures at Ajanta and Badami.

    During this period, India witnessed tremendous progress in mathematics and science, much to the credit of the mathematician-astronomer Aryabhata, Varahmihira, Brahmagupta. In his work Surya Sidhhanta, Aryabhata examines and explains the true cause of solar and lunar eclipse. His calculation of the size of the earth is very near to the modern estimation. Perhaps the most seminal development in the field of science was the pronouncement of atomic theory by Vaisheshika school of physicists during this period.

    In medical sciences, Hastyayurveda (veterinary science) authored by Palakapya attests to the advances made in medical science during the Gupta reign.

    The accounts of many foreign travelers described India as the most prosperous place on earth and its people the happiest at that point of time.

    Watch this space for more accounts of various Indian kingdoms and dynasties.


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