From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
Recently, Coca Cola Inc. and Amazon Web Services (AWS) collaborated to bring back ‘fountain drinks’ in line with the pandemic protocols of minimum contact. Even though dine-ins are now functional, there are a lot of protocols to be followed with respect to touching the trays, and cutlery. Coca Cola envisioned the automatic dispensation of its products inside restaurants and thus match up to the dine-in rules. For this, it decided to collaborate with AWS.
Coca Cola had introduced ‘Freestyle’ machines in 2009, which were operated using touch screens. The machine allowed the customer to combine 2 or more of the Coca Cola drinks. These machines can be used ‘as is’ in the present times, if appropriate sanitization is in place. However, Coca Cola wanted to create a machine that would work in all scenarios! Thus, in the wake of the pandemic, the company along with the help of AWS has decided to pair these machines to smartphones via Bluetooth. Now the customers can choose their drink from their own phone. Diners need to simply scan a QR code on the Freestyle machines. The buttons usually displayed on the machine are now displayed on the diner’s phone screen ensuring a complete contactless interaction. Only the beverages which are in stock are displayed on the consumer’s smartphone screen. It will also provide an option to ‘start’ and ‘stop’ pouring into the glass to ensure that no spills occur.
*We claim no copyright in the above images. It is used for representational and educational purposes only.
As on date nearly 30,000 freestyle machines are deployed across the US and by the end of 2020 all of US will have these machines, followed by which these machines will be installed across the globe too.
It was a long time ago, that the phrase “I will search and get back to you” changed to “I will Google it and get back to you.” There must be reasons for the word ‘search’ becoming synonymous to ‘Google’. Sometimes, a little too many reasons!
The United States’ Department of Justice, along with the states of Arkansas, Florida, Georgia, Indiana, Kentucky, Louisiana, Mississippi, Missouri, Montana, South Carolina, and Texas filed an anti-trust law suit against Google at the U.S. District Court for the District of Columbia on October 20, 2020. They have alleged in their complaint that Google has been using its dominant position in the market, and its financial strength to strike deals with various technology players such as Apple, Microsoft, etc. to become the default search engine in the user devices that these companies sell. This has affected the growth and propagation of smaller players engaged in the business of search engines. According to the Department of Justice, Google has entered into a series of exclusionary agreements that together result in Google being the sole default search engine in almost all devices, in the US and worldwide.
Not only this, these agreements also prohibit pre-installation of any other search engines. According to the complaint, these agreements are such that the pre-installed search engine of Google becomes “undeletable”. It alleges that Google is using its advertisement profits, and immense popularity to buy preferential treatment from its associate players in the market.
The complaint points out that Google’s exclusionary agreements have resulted in reduction of competition in the search-engine market, as the doors for all other search engines have been closed.
It has turned into a vicious cycle. Google charges advertisers to advertise on its search engine; advertisers pay exorbitant amounts to feature on Google’s pages; Google uses this money to monopolise and remain the only viable search engine in the market, thereby encouraging advertisers to pay extensively to feature on it, due to its unimaginable customer reach!
The aim of the jurisprudence of competition laws, is to protect smaller players from being bought out by the dominant players. It remains to be seen, how Google responds to this complaint.
A team of eight students of Boston University recently launched the ‘F*ck It Won’t Cut It’ campaign aimed at promoting public health on campus and encouraging safety protocol to combat the COVID-19 pandemic. The group said that it saw a lot of people saying “F*ck it” and going to parties with a YOLO (you only live once) mind-set, without realizing that such small things culminate in graver consequences, hence the campaign was named “F*ck It Won’t Cut It”. This student-run campaign has the University’s support, despite the “edgy” name, and the University officials have filed a trademark application for the slogan "F*ck It Won't Cut It" on August 6, 2020. (However, in our opinion, the possibility of this mark falling in the category of ‘scandalous marks’ is high.) The phrase would be used for "promoting public awareness of safe and smart actions” in the COVID-19 environment.
The students are running the campaign across most social media platforms and are sharing tips for COVID-19 prevention, the importance of wearing masks, hand washing, coronavirus testing, how to talk to roommates about staying safe during the pandemic, reassessing the party lifestyle, and how to have safe sex in the COVID-19 world. But the campaign is not just limited to Instagram stories. Students are putting up the “F*ck It Won’t Cut It” posters across the campus.
We do not claim any copyright in the image used. It has been used for academic and representational purposes only
In September, 2020, the High Court of Delhi published the draft of “The High Court of Delhi Rules Governing Patent Suits, 2020” (“the draft Rules”) for comments and suggestions from stakeholders. These draft Rules are proposed to govern patent infringement actions at the High Court and shall prevail over the Delhi High Court (Original Side) Rules, 2018 in case of inconsistencies.
The draft Rules prescribe in detail, the contents of the plaint, written statement, replication, and the like to be filed in cases related to patent infringement. They also prescribe the documents to be attached with these pleadings. This is a welcome step, towards maintaining uniformity of pleadings in cases of patent infringement, where urgent remedies are sought.
According to the proposed Rules, the plaint should contain, inter alia, a background of the technology, technical details of the invention and the patent, product description, ownership details of the patent, details of infringement, and the like. The written statement, on the other hand, must contain, inter alia, grounds for revocation of the patent, where validity of the patent is challenged. To support non-infringement, the written statement should also contain a technical analysis of the invention. Further, the draft Rules also state that in case the defendant is willing to take a license, the quantum for such license should also be specified. In counter claims, the grounds as per Section 64 of the Patents Act should be mentioned.
The draft Rules prescribe the documents to be filed along with the plaint, which include, certified copies of the certificate of grant of patent along with payment of annuities thereof, complete patent specification, a list of all corresponding patent applications/grants in various countries. Documents to be filed with the written statement/counter claim include, copies of any Court decisions or any patent authority relating to the patent suit or a corresponding patent application in any jurisdiction, expert report, and analysis for non-infringement or invalidity amongst other things.
At the first hearing, the patentee may seek interim injunction, appointment of a local commissioner for inspection, inspection of the manufacturing facilities, and other such orders.
The draft Rules state that any person, unjustifiably denying any documents or contents thereof, shall be liable to be burdened with costs. The draft Rules place an upper limit of 10 pages for construction briefs, invalidity briefs, infringement briefs, and the like. This will surely encourage litigants to leave out unnecessary details and stick to the facts and reliefs sought. Prior to the first case management hearing, the court may direct filing of a technical primer by the parties to understand the basic undisputed technology covering the patent(s).
The draft Rules also prescribe the orders which may be passed or the actions the courts can take at different stages of hearings. For instance, at the First Case Management Hearing stage, the Court would peruse the claim construction briefs, invalidity and infringement briefs, and strike the actual issues with dispute between the parties.
Similarly, at the Second Case Management Hearing stage, the Court may peruse the evidence affidavits filed by the parties. Video recording of evidence may also be directed. The timelines for recordal of evidence may be monitored by the Court.
At the Third Case Management Hearing stage, the Court shall review the evidence recorded so far and may proceed to decide any preliminary issues, or alternatively direct the parties to proceed to trial on the remaining issues. The Court may decide issues which do not require evidence, at any stage.
The Court may constitute a confidentiality club, for preservation of confidential information exchanged between the parties at any of the stages. It is required to facilitate preservation of audio or video recordings in a non-editable format.
The draft Rules also prescribe that the Courts should encourage and direct parties to resort to mediation and amicable resolution of the dispute and to draw up a panel of Scientific Advisors, for assisting the Judges. Such advisors could be experts in the sciences, economists, etc.
(We, R K Dewan & Co., represented Parle in the matter)
Parle Products Pvt. Ltd. (Parle) has been using the marks “MONACO”, “KRACKJACK”, and “HIDE & SEEK” for biscuits since 1939, 1971, and 1996 respectively. It has been recognized as the most chosen FMCG brand since 2010. The Nielsen Report for the year 2010 certified Parle’s brand PARLE-G as the world’s largest selling biscuit brand. Parle has obtained trademark registration for the 3 marks and copyright registration for its product packaging/ labels. Parle approached1 the Bombay High Court seeking an injunction against Future Consumer Ltd. (Future) restraining Future from infringing Parle’s copyright and trade dress of the packaging of the biscuits it sells under the marks “MONACO”, “KRACK JACK”, and “HIDE & SEEK”.
Parle designed the new unique packaging used for “MONACO”, “KRACKJACK” and “HIDE & SEEK” in July 2013, July 2014, and May 2017 respectively. Parle has continuously and extensively used its packaging in respect of the goods ever since. Parle approached the Court when it came across Future’s biscuits bearing the marks “CrackO”, “Kracker King” and “Peek-a-Boo” having trade dresses, packaging and labels deceptively similar to its product packaging.
Parle stated how its packaging has become distinctive and how the general public associates the unique packaging/ trade dress of the goods with Parle alone. It also stated that Future’s impugned packaging and labels are reproductions of Parle’s trade dress and amount to infringement of Parle’s copyright in the label as well as passing off. It stated that Future intentionally stocked its impugned products on the shelves alongside Parle’s products to confuse customers. The similarity in the trade dress and the packaging is clear from the below images submitted to the Court:
Parle argued that a bare perusal of Future’s products would reveal that it has copied every element of Parle’s packaging including the layout, colour combination, placement, and all distinctive elements and its features ‘to the last millimeter’.
Future did not appear for the hearings and the matter proceeded ex-parte.
The Court, prima facie held that Parle is the owner of the copyright in the packaging used in respect of its products, namely, “MONACO”, “KRACKJACK” and “HIDE & SEEK” and has acquired substantial goodwill and reputation in them.
The Court agreed that a comparison of the rival products hardly leaves any doubt about how Future has blatantly copied Parle’s packaging for identical products. The Court observed, “The similarity in the rival packaging/labels cannot be a matter of coincidence.”
The Court held that Parle has been able to put forth a strong prima facie case for the grant of ad-interim reliefs and if these reliefs are not granted, Parle is likely to suffer irreparable injury. The balance of convenience is also in favour of Parle. Hence the Court granted an ad-interim injunction in Parle’s favour and appointed a Court Receiver as the receiver of Future’s impugned products bearing the impugned packaging. The Court Receiver was bestowed with powers to enter in Future’s premises, to seize and take charge, possession, and control of the impugned products bearing the impugned packaging.
However, the Court observed that the Court Receiver, High Court, Bombay may not be in a position to travel in view of the COVID-19 pandemic, and appointed Adv. Shrinivas Bobde as the Court Commissioner, representative of the Court Receiver, Bombay High Court, to execute the present order at Future’s address. The Court Commissioner has to submit his report through the Court Receiver to the Court on or before November 27, 2020.
This case is yet another feather added to our hat!
1Parle Products Pvt. Ltd &AnrVs Future Consumer Ltd. &Ors - COMMERCIAL IP SUIT (L) NO. 4130 OF 2020 – 9/10/2020
Delhivery Pvt. Ltd. (Delhivery) approached2 the Delhi High Court against Treasure Vase Ventures Pvt. Ltd. (Treasure) alleging infringement of its trademark ‘DELHIVERY’. Delhivery claimed that it adopted the mark ‘DELHIVERY’ and has been using it continuously and extensively since 2011 for its services relating to logistics, transportation, management, etc. It has 27 registrations for the trademark ‘DELHIVERY’ / its variants in classes 35, 39, and 42.
Delhivery stated that Treasure was associated with Delhivery as one of its vendors albeit under its original mark ‘SMART-E Delivery Services’. Treasure continued to be associated with Delhivery and also conducted a pilot project in the months of March & April, 2020.
Delhivery approached the Court when its employees noticed Treasure’s use of the mark 'Deliver-E' for identical services. The Court granted an exparte interim injunction in its favour.
Treasure applied for the vacation of the exparte injunction and argued that its mark ‘DELIVER-E’ was inspired by the use of electric vehicles for its passengers and last-mile goods delivery services and had unique colour scheme and stylization.
Source- Trademark Registry Website*
*We do not claim any copyright in the image used. It has been used for academic and representational purposes only
Treasure also argued that Delhivery has obtained the exparte injunction from the Court by concealing the fact that while it was seeking registration of its mark ‘DELHIVERY’, several third-party marks were cited by the Trade Marks Registry in its examination report. Delhivery responded stating that the cited marks are dissimilar to its mark. This shows that Delhivery has accepted its own mark ‘DELHIVERY’ and the other marks containing the word ‘DELIVER’ to be visually and phonetically different. Thus its argument in the present suit, that it has the exclusive right to the dictionary word ‘delivery’ / ‘deliver’ becomes untenable. Treasure argued that if the injunction is not set aside, it would amount to giving Delhivery an exclusive monopoly over the dictionary word ‘delivery’ which is also descriptive of the business of delivering goods, which is impermissible.
Treasure also argued that the two marks are phonetically different. It stated that while Delhivery has two syllables ‘DELHI’ and ‘VERY’, and the whole mark is pronounced as ‘DELHI’- ‘VERY’, its mark DELIVER-E contains ‘DELIVER’ and ‘E’.
The Court observed that Treasure’s mark ‘DELIVER-E’, is commonly pronounced as ‘delivery’, hence its plea that the pronunciation is different cannot be accepted.
The Court noted that with Delhivery’s own submission that the mark ‘DELIVER-E’ is deceptively similar to the mark ‘DELHIVERY’, it has attempted to relate its mark to the generic English word “delivery”. The Court also observed that this is descriptive of the services offered by Delhivery. Thus, the Court held that “the mark ‘DELHIVERY’ is a phonetically generic word and cannot be registered … So, it follows, there cannot be any claim of passing off.”
The Court also considered the striking differences in the stylization and colour combination and held that the clientele of both the parties comprises companies which can surely differentiate between the two marks.
It vacated the exparte interim injunction. The Court went on to clarify that the order was only a prima-facie view and was not based on the merits of the suit at trial.
Sometimes, being clever and associating a mark with a descriptive word can destroy the novelty and exclusivity of the trademark. When a trademark is a clever variation of a generic word, as in this case, highlighting that ingenuity and deliberately using that generic word as a substitute may result in the mark losing its unique flavour.
2 DELHIVERY PRIVATE LIMITED VS TREASURE VASE VENTURES PRIVATE LIMITED- CS (COMM) 217/2020 – 12/10/2020
A Conversation with Dr. Mohan Dewan
Question: Sir, I was reading about the application of Goods and Services Tax (GST) on IP assignments and licensing and there appears to be little about it on the net. Also, I found that opinions are divided into halves: some claim that GST is only levied on licenses and are not applicable on assignments whereas some claim that it is levied on both. And I have a few questions regarding this.
Dr. Mohan Dewan: Okay, but before going into the details, tell me what have you read about GST?
Question: Sir, I have read Section 9 of the Central Goods and Services Tax Act (CGST Act) which states that a tax called the Central Goods and Services Tax (CGST) shall be levied on all Intra-State supplies of goods or services or both, on the transaction value and at such rates, not exceeding 20%, as may be notified by the Government, shall be paid upon whom it is applicable. There is a corresponding section under SGST Act too.
I have also read about how transaction value is to be calculated: as per Section 15 of the CGST Act, transaction value is the price actually paid or payable for the said supply of goods and/or services where the supplier and the recipient of the supply are not related and the price is the sole consideration for the supply.
Dr. Mohan Dewan: Good, now let’s proceed with your questions.
Question: Sir, the first thing I want to know is whether GST applies to IP assignments and licensing of IP, if it does, then at what rate?
Dr. Mohan Dewan: To answer your question, yes GST is applicable on IP assignments and licensing and there is a specific notification namely Notification No. 11/2017-Central Tax (Rate) dated 28th June 2017 which prescribes it under Sl. No. 17, Heading 9973.
Question: Sir, at what rate?
Dr. Mohan Dewan: CGST will be levied on temporary transfer or permanent transfer or transfer of right to use of Intellectual Property (IP) right at 6 % rate. SGST will be levied at 6 %.
Therefore, the total GST levied is 12 %.
However, with respect to transfer of Information Technology software, CGST levied is 9% and SGST is another 9 %.
Therefore, the total GST levied on IT Software’s licensing or assignment is 18 %.
Question: Sir, but the title of 9973 states “Leasing or rental services, with or without operator”. Will this cover only licensing of IP or will it cover assignment of IP as well?
Dr. Mohan Dewan: The answer is to this is plain and simple: licensing is a temporary transfer of IP; whereas assignment is a permanent transfer. The notification clearly states that irrespective of a temporary transfer or permanent transfer, GST will be applicable. Thus, it will apply to assignments as well.
Question: Who is liable to pay the GST? Is it the person transferring the IP (assignor/ licensor) or the person to whom the IP is transferred (assignee/ licensee)?
Dr. Dewan: Shubham, are you aware of the concepts of forward charge and reverse charge in respect of taxes?
Question: Yes Sir, I am aware. Forward charge is when the tax is levied upon the person supplying the goods and/or services, and reverse charge is when the tax is levied upon the person receiving the goods and/or services.
Dr. Mohan Dewan: Right, so as per Section 9(1) of the CGST Act, CGST is a forward charge. There’s a corresponding section for SGST as well. Therefore, in general, GST is borne by the licensor or the assignor.
Question: You said, “in general”: are there any exceptions to this?
Dr. Mohan Dewan: Yes, under Section 9(3) of the Act, the Central government can specify certain categories of supply of goods and services on which the tax is to be paid on a reverse charge basis by the recipient of the supply.
So the Centre has under Notification No. 13/2017- Central Tax (Rate) dated 28th June 2017, Serial No. 9, prescribed that CGST on supply of services by an author, music composer, photographer, artist or the like by way of transfer or permitting the use or enjoyment of a copyright covered under section 13 (1) (a) of the Copyright Act, 1957 relating to original literary, dramatic, musical or artistic works to a publisher, music company, producer or the like, will be levied on a reverse charge basis. This means that the publisher, music company, producer will be paying the CGST.
Associates from the firm attended an online interactive session organized by Defence R & D Organisation (“DRDO”) to promote the Technology Development Fund (TDF) program undertaken by the Ministry of Defence, Govt. of India.
The Technology Development Fund process flow (for DRDO technical projects), its feasibility study, shortlisting of projects, etc. were discussed at length. As per DRDO's new patent policy, Indian industries can now get free access to use information related to DRDO patents from its website. https://www.drdo.gov.in/ipr
The TDF aims to promote self-reliance in Defence Technology as a part of the 'Make in India' initiative. It is a program of MoD (Ministry of Defence) executed by DRDO to meet the requirements of Tri-Services and Defence Production at DRDO.
During the program it was discussed that the scheme encourages participation of public/private industries especially MSMEs so as to create an eco-system for enhancing cutting edge technology, capability for defence application by inculcating R&D culture in the industry.
(Or, not so hidden!)
G Suite is now Google Workspace)
It’s strange that to even curate the contents of this article, I ‘googled’ everything!
Generally, we bring to you, the clever and ingenuous meanings of famous logos and trademarks. However, our chosen trademark for this time, appears to have its intent pasted all over it!
We must have all noticed that icons of the Google apps such as the Gmail, the Google calendar, the Google drive, Google Duo, Google sheets are now coordinated in identical shades of the 4 colours – blue, red, yellow and green a.k.a Google’s traditional colour palette. The changes seem to have been incorporated in an attempt to bring in uniformity and reinforcing in the minds of the consumers the common source of the apps.
*We claim no copyright over the above image or the logos. It is used for representation and educational purposes only. Credits: Google Inc.
Well, that is true. The revamping of the logos is a part of the larger change, wherein Google’s ‘G-SUITE’ is now rebranded as ‘GOOGLE WORKSPACE’ and has tons of new features. The rebranding was brought in effect to emphasize the presence of ‘Google’.
Google Workspace includes and connects Gmail, Calendar, Drive, Docs, Sheets, Slides, Meet, and more apps. It aims to help users create, communicate, and collaborate more efficiently. Google Workspace aims to provide a new and integrated user experience, bringing together tools like chat, email, voice and video calling into a single place. The uniformity in the logos is to reinforce that all the apps are now more integrated and its features can now be used on the same platform!
For those who are intrigued you can click here to watch the introduction to Google workspace video!
HISTORY – The Satvahana Empire
-Adv. Chinmay Pawar
During the first century BC, a mighty kingdom started to take shape in South-western India. The kingdom is known as ‘Satvahana’. The Satvahana empire lasted for about 450 years. Satavahanas are also mentioned in ancient texts such as ‘Purana’. The Satvahana kingdom occupied the territory which is roughly outlined in the following map with its capital at Pratishthan (modern day Paithan):
The political boundaries and geographical locations may not be accurate in this map. It has been used for academic and representational purposes only.
Generally speaking, in ancient India patriarchy was followed. However, the Satvahanas, as a ruling clan, were an exception to this. Satvahana kings put their mothers’ names before their names in official papers, rock inscriptions etc. For example, the most successful and well-known king of them called himself as ‘Gautamiputra Satkarni’ which means ‘Gautami’s son Satkarni’. Gautami was his mother’s name.
Satvahanas’ rock inscriptions are found in states of Maharashtra, Andhra Pradesh and Telangana. Satvahana empire was jolted for a brief period of time when foreign invaders such as Sakas attacked the empire from all directions. However, the Satvahana kings managed to hold onto the most part of their territory during such period. Later, Gautamiputra Satkarni turned the tide as he emerged as a great warrior and administrator.
*We claim no copyright over the above image. It is used for representational and educational purposes only. All Credits: https://en.wikipedia.org/wiki/Satavahana_dynasty
-Adv. Chinmay Pawar
The most people living in western Maharashtra and Mumbai in particular would confuse the Bhuleshwar temple which we are referring here with a locality and a temple bearing a namesake located in South Mumbai.
The Bhuleshwar temple is located approximately 55 kilometers from the city of Pune. The temple is located on a hill on which a fort was built. The fort was named ‘Daulatmangal’. However, there is hardly any evidence of the fort left except for a lone bastion. It is believed that the temple was built by Pandavas during their exile. Later, the Peshavas made some restorations and added some parts to the temple. Chimaji Appa, the younger brother of Peshava Bajirao donated a huge bell to the temple. It is believed that, the bell was taken from a Church in Vasai (ne Bassein), a Portuguese stronghold, during his successful campaign against the Portuguese.
The temple has intricate carvings of mythological figures, personalities and depictions of events from Ramayana and Mahabharata.