Jan 21

RKD NewsNet January 2021 - Volume II

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

International News

Pig Panther!

Trendiamo, Unipessoal, Lda. is a Portuguese company applied for the mark ‘ ’ bearing application no. 017972499 in Class 25 at the EUIPO on October 24, 2018.

Soon after the mark was published, the German company – Puma filed an opposition against the mark. Puma claimed that, the mark if registered would lead to a likelihood of confusion amongst the mark applied for and their reputed mark . Puma went on to state that its mark has gained immense reputation and goodwill and the leaping cougar is directly associated with their brand across the globe.

The EUIPO stated that, it is not necessary that the marks in comparison always lead to confusion but the fact that a link may be created is enough to establish trademark infringement. It stated that even a cursory look of both the marks shows that, the mark is inspired from the PUMA logo. The EUIPO also stated that, the consumers are likely to believe that the mark applied for is a parody of the PUMA logo. It was also observed that, though pigs jump, they definitely do no leap like that!

Based on the above observations, the EUIPO refused the registration of the mark and the opposition by PUMA succeeded.

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Aquariums or Phone booths or Both?

Nobuki Yamamoto, a Japanese artist, was the first to put old telephone booths to use by converting them into ‘fish aquariums’ and adding features such as bubbles coming out of the phone receiver.

The city of Yamatokoriyama, located in Nara Prefecture, is known for its cultivation of goldfish. A merchants’ association installed a phone booth on the shopping street of the city and created a phone booth aquarium containing goldfish similar to that created by Mr. Nobuki Yamamoto, of course without his consent.

See below:

The phone booth erected by the Association | The original phone booth by Yamamoto

*We claim no copyright on the image. It is being used for representational and educational purposes only. Image source: https://www.japantimes.co.jp/news/2021/01/14/national/crime-legal/goldfish-phone-booth/

Nobuki Yamamoto filed a suit for copyright infringement at the Nara District Court, who dismissed the claim stating that, putting goldfish into a phone booth ‘is an idea’ and not ‘an expression of idea’ and therefore is not subject to copyright protection.

Upon an appeal filed at the Osaka High Court, the court assessed the matter differently. On January 14, 2021, the Osaka High Court held that the association’s act of imitating and installing a phone booth with goldfish infringed the copyright of the artist. In addition to ruling in favour of Yamamoto, the High Court ordered the association to compensate Mr. Yamamoto by paying damages to the tune of ¥ 5,50,000 (approximately USD 5300).

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Statement of Working Requirements (Form 27) and the changes affected by the amendment of Patent Rules in October 2020.

By a Gazette notification dated 20th October, 2020, the Government of India has amended the Statement of Working Requirements to be submitted in Form-27 to the Indian Patent Office.

I) Timelines:

The Patent Office has, inter alia, essentially varied the timelines for submitting the Statement of Working Form (Form 27). This note is being written to dispel some misconceptions about the timelines for submitting the Statement of Working (Form 27).

The extract of the relevant portion the Gazette Notification is as under:

“The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.”

Some Examples of the timeline are as follows:

Case 1: Patent Granted in the financial year 1st April 2020 up to 31st March 2021. The Statement of Working (Form 27) needs to be filed between 1st April 2021 up to 30th September 2021. Similarly, if a Patent is granted between 1st April 2021 up to 31st March 2022, the Statement of Working (Form 27) needs to be filed between 1st April 2022 up to 30th September 2022.

For the convenience of patentees and their attorneys, the table below provides this information as a ready reckoner.

Patent Granted in the financial year/period

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

Patents granted on or before 31st December 2019

Form 27 has already been filed for calendar year 2019. So Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st January 2020 to 31st March 2020

Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st April 2020 up to 31st March 2021

Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st April 2021 to 31st March 2022

Form 27 needs to be filed for the financial year 1/4/2021 to 31/03/2022

1st April 2022 up to 30th September 2022

Case 2: The patent was granted prior to April 2020 but the 20th year of the patent gets over in the financial year 1st April 2020 up to 31st March 2021. The Statement of Working (Form 27) needs to be filed between the period from 1st April 2021 up to 30th September 2021.

Patent Term (20 years) completed any day within the period

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

1st April 2020 up to 31st March 2021

1st April 2021 up to 30th September 2021

1st April 2020 up to 30th March 2021 that is for the entire financial year 2020 – 2021

Case 3: The patent was granted prior to 1st April 2020 and was due for renewal on any date between 1st April 2020 and 31st March 2021 (The Patentee may have renewed the patent thereafter or allowed it to lapse). Therefore, the patent was alive for some period (even a few days) between 1st April 2020 and 31st March 2021. The Statement of Working (Form 27) needs to be filed for the period 1st April 2020 up to 31st March 2021 and needs to be filed between 1st April 2021 to 30th September 2021.

The patent was due for renewal and therefore alive on any date between

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

1st April 2020 up to 31st March 2021

1st April 2020 up to 31st March 2021

1st April 2021 to 30th September 2021

In Case 3, even if the patent holder decided not to renew the patent for the year the Statement of Working (Form 27) still needs to be filed for the period 1st April 2020 to 31st March 2021 and Form 27 needs to be furnished between 1st April 2021 and 30th September 2021.

II) Changes in the content of the form:

1) Details of approximate value or revenue:

The amended Rules now refer to an approximate value and therefore the exact quantum for value or revenue need not be provided. The important information is whether the patent was worked or not worked.

2) Deletion of meeting public requirement:

The new form has deleted this item and the patentee does not require to furnish information whether working of the invention met the public requirement “partly / adequately / to the fullest extent”.

3) Single form for multiple patents for the same product:

If several elements of a product are covered by patents or patents of addition, a single Form 27 can be filed for the product. Similarly, if multiple patents were filed, for one continuous process then two single Form 27 can be filed for the entire process with the compilation of approximate total revenue.

4) Licensees of patents:

Licensees of patents are required to submit Form 27 independently and individually.

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How important is pH 5.5

Gone are the days, when a certain class of consumers referred to all kinds of toothpaste as Colgate, all detergents as Surf, and noodles as Maggi. These brands became famous because of their unique and creative branding strategies and well-crafted market presence. For businesses to stay afloat today, being the consumer’s first choice is vital. This gives rise to aggressive competition in the market. FMCGs thrive on the ingenuity of their advertisements and the publicity they garner. They resort to methods like comparative advertisements to show how their products are “better” than those of others in the market. However, comparative advertisements have led to court battles, more often than not.

One such comparative advertisement that made the rounds of all trending debates and Twitter recently was that of Sebamed, a German skincare soap brand. Sebamed’s advertisement compared the pH levels of different skincare soaps in the market including Pears, Lux, Dove, and the like. It sought to show how the pH level of Sebamed was more suited for our skin, rather than that of competing products. It compared the pH (a scale for measuring the acid content in a particular substance) of Lux, Pears, etc. with that of detergent soaps like Rin. Hindustan Unilever Limited, which is the owner of the soap brands like Lux, Dove, and Pears, approached the Bombay High Court alleging disparagement of its brands in the comparative advertisement. However, the Bombay High Court held that Sebamed can compare its product with other products such as Lux, Dove, etc. in advertisements as long as its claims in the ads are backed by scientific data.

This case states that one can use the names of competing brands in comparative advertisements as far as their comparisons are backed by scientifically obtained studies/ data.

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No Safe Haven if you infringe Blue Heaven’s IP

Blue Heaven Cosmetics Pvt. Ltd. (Blue Heaven) is engaged in manufacturing and selling cosmetics under the brand “Blue Heaven”. Its predecessors started using the trademarks " " and " ” in 1972 and 1986 respectively and obtained trademark registration and copyright registration (for labels) of the same. The trademarks/copyrights under "BLUE HEAVEN" (word/logo/label/device) were applied for/registered in the name of Mr. Gurnam Singh, sole proprietor of M/s. G.C. Laboratories since 1972. These were assigned from the sole proprietorship firm in favour of Blue Heaven vide an Assignment Deed in the year 2019.

Blue Heaven approached1 the Delhi High Court against BHCOSMETICS LLC (BHCosmetics) seeking a permanent injunction, rendition of accounts of profits, and recovery of damages.

Blue Heaven submitted that BHCosmetics has violated its trademark rights in the marks, inter alia, " " logo/label and " ".

Blue Heaven claimed that it came to know about BHcosmetics during a market survey conducted in December 2020. It found that BHCosmetics had been selling its products through e-commerce portals such as www.amazon.in, www.flipkart.in and its official website by adopting the trademarks " ", , and "BHCosmetics" which are deceptively similar to its registered trademark.

The Court held that Blue Heaven has successfully made out a prima facie case in its favour; the balance of convenience also lies in its favour and irreparable harm or injury would be caused to it if an ad-interim injunction order is not passed.

Hence the Court granted an ad-interim injunction in favour of Blue Heaven restraining BHCosmetics from making, selling, offering for sale, advertising and in any manner dealing in the products for which Blue Heaven’s marks are registered using marks which are deceptively or phonetically similar to Blue Heaven’s marks. The matter is now listed for hearing on 29.04.2021.


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Trademarks- Use before you fight for them!

Cremo S. A., a company established in Switzerland in 1927 is engaged in innovating processes, and marketing consumer dairy products under the brand name “Cremo”. It has applied for the registration of the mark 'CR’MO' in India (IRDI No.-4392669) in November 2019. The application was objected to on the ground that a similar mark has already been applied for at the Trade Marks Registry. Upon investigation, Cremo S. A. came across Cremo Netureal Milk LLP (Cremo Netureal) based in Faridabad, India, which had filed the trademark application with respect to similar goods in July 2019.

Cremo S. A (Respondent) had filed a trademark passing off suit against Cremo Netureal Milk LLP at the Additional District Judge, Commercial Court, Faridabad seeking anad interim injunction to restrain the Cremo Netureal from using the mark 'Cremo' as a part of its corporate name or trademark for the goods sold by it. The Commercial Court observed that a prima facie case was established in favour of Cremo and granted the ad-interim injunction. Aggrieved by this order, Cremo Netureal appealed before the Punjab and Haryana High Court (FAO-COM No.4 of 2020 (O&M)).

Cremo Netureal claimed that Cremo has never pursued any manufacturing or business activities in India and that the usage of the mark adopted by the appellants will not cause any commercial hardship to the respondent as it has no commercial existence in India. Contrary to this, Cremo showed invoices pertaining to export of their products to India since the year 2016. It also contended that being established since 1927 it has earned a global reputation and goodwill. It also claimed that Cremo Netureal was established only in 2019.

Interestingly, the Court observed that in its own written statement, Cremo Nuteral had stated that it could not proceed with its manufacturing activities due to the onslaught of the COVID 19 pandemic. This, according to the Court, was enough to infer that Cremo Netureal has not started its commercial activities as on date.

The Court observed that “Admittedly, both the parties have applied for the registration of the said trade-marks/names for their milk/dairy products and the application moved by the appellants for the afore-said purpose is prior in time to that of the respondent.” It further noted that Cremo was able to establish that it has been supplying/exporting its products to the Indian importers/customers since the year 2016 and that Cremo Netureal is yet to even start manufacturing its products or introducing them in the Indian market. This being so, the Court held that a prima-facie case can safely be held to be existing in the favour of the Cremo and upheld the decision of the Commercial Court.

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Will Guru Dutt’s story be told?

Veteren actor Guru Dutt is considered to be a stalwart in the Indian film industry. He was an actor, a producer, and a director too. He is known for films like ‘Pyaasa’ (1957) and ‘Kaagaz Ke Phool’ (1959). He died an untimely death at the age of 39 in 1964. In September 2020, National award-winning director Bhavna Talwar announced preparations for a biopic on Guru Dutt, that will also be titled “Pyaasa”. The film is supposed to enter production in 2021. It would depict Guru Dutt’s early work and his eventual transformation into an artist.

Guru Dutt in Pyasa- https://www.lassiwithlavina.com/features/cinema/guru-dutt-a-heart-as-big-as-the-world/html

*We do not claim any copyright in the image used. It has been used for academic and representational purposes

There have been many other filmmakers in the past who have wanted to tell Guru Dutt’s story, however, none of them have been successful. Even in the present case, Nina Memon, the only surviving child to Guru Dutt and his wife Geeta Dutt, sent a copyright infringement notice to Bhavna Talwar stating that they have not permitted any third party to make a movie on her late father. Nina stated that Bhavna never sought permission before commencing work on the biopic. Nina, claims to be the sole copyright owner of the late actor/ filmmaker’s life story. She stated that Bhavna’s film, will be construed as infringement of copyright under the Copyright Act.

Bhavna Talwar stated that the information to be used in the film is available in the public domain and that there is no case of copyright infringement. Reports suggest that the film’s story has been shared with producers, who will make appropriate negotiations with the late actor’s family.

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Lyrics + Music = Sound Recording

The High Court of Delhi recently passed a single order in two cases23 clarifying its position on communication of a sound recording to the public. It stated that it also amounts to the communication of the literary and musical works embodied in the sound recording to the public. One of the suits had been filed by The Indian Performing Rights Society (IPRS) against Entertainment Network (India) Ltd (ENIL) for infringement of the underlying literary and music works in the sound recording, which was communicated to the public by radio diffusion of the sound recording under license from Phonographic Performance Ltd (PPL) only. Whereas, another suit was filed by IPRS and PPL against CRI Events Private Limited and others (CRI) an event organising entity for infringing the copyright held by both, PPL and IPRS, by organising events and by permitting events to be organised in their premises, where live performance were held without any license.

IPRS and PPL are both copyright societies registered under Section 33 of the Copyright Act, 1957 (the Act), and have copyrights in certain works on behalf of the authors of the works. They distribute licenses of those works on behalf of the authors and collect royalties. In its suit against ENIL, IPRS contented that the copyright in a literary and/or musical work (underlying work) runs parallel to the copyright in a sound recording (derivative work) and hence the exploitation of such sound recording would necessarily invoke the right in the underlying literary and/or musical works as well. Further, it was contended that communication of the sound recording to the public by any medium without the license of the author of the underlying work would infringe the copyright of the authors of such underlying works.

It was contended by IPRS in both the suits that as per Section 22 of the Act, copyright in literary and musical works is for a duration of the author’s lifetime plus 60 years. As per Sections 26 & 27 of the Act, the copyright protection in sound recording and cinematograph film, is for 60 years from the beginning of the calendar year following the year in which the work is first published. Therefore, since the literary and musical works enjoyed longer period of copyright protection in comparison to sound recording and cinematograph films, the copyright of the underlying works were exclusive and parallel to the copyright in the derivative works.

On the other hand, it was contended by ENIL that the copyright in each work consists of a bundle of rights, as recognised by Section 14 of the Act, due to which when an owner of a right in a particular class of work exploits his copyright in that work, it does not and cannot amount to exploitation of copyright in any other work. It was contended that when a cinematograph film is exhibited, the owner of the copyright in that cinematograph film exploits his copyright as provided under Section 14(a)(iii) of the Act i.e. of communicating the film to the public, similarly when the owner of the copyright in a sound recording is broadcasting the sound recording, he is exercising his right under Section 14I(iii) and which he is fully entitled to. It was contended that the existence of parallel rights does not mean the requirement of parallel licenses, especially when one of the parallel rights i.e. the sound recording is statutorily independently recognised.

It was observed by the High Court that a sound recording is a collaboration with an author of a literary work, an author of a musical works, and the author of a sound recording, who ultimately directs the merger of the musical work and the sound recording to form one complete whole. It is the owner of the sound recording who transforms the literary work which otherwise is a mere collection of words into a sound, capable of phonetic pleasure. It was therefore held by the High Court that the communication of the sound recording to the public does not in any way infringe the copyright of the underlying work consisting of lyrical work and musical work.

It was also held by the High Court that ENIL would not be compelled to obtain licenses from IPRS in spite of subsequently realising that there was no need for obtaining the licence from IPRS for broadcasting of the sound recording. For the other suit where CRI was the defendant, they were ordered to obtain license from IPRS if they were communicating to the public the literary and musical works of the members of the IPRS not as part of sound recording but independently, through an artist. Therefore, if there was a live performance of songs incorporating the literary and musical works of members of IPRS, even if such songs also have a sound recording, for the live performances, a license from IPRS would be imperative.

2Phonographic Performance Ltd & ANR vs. CRI Events Private Limited and others (CS(OS) 996/2009)

3The Indian Performing Rights Society vs. Entertainment Network (India) Ltd (CS(OS) 66/2006)

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Hidden Meanings in Trademarks

GODIVA Chocolatier is a luxury chocolate company which was founded in Brussels in 1926 by a Belgian Chocolatier, Pierre Draps. The company was later purchased by the Turkish Yildiz Holding in November 2007.

Who is the Lady in the logo?

The logo represents Lady Godiva riding a horse.

Lady Godiva was the wife of the Earl of Mercia. Legends state that in the 13th century, the Earl of Mercia imposed hefty taxes on the citizens of Coventry (a city in England). This lead to a lot of unrest among the people. Lady Godiva pleaded to her husband to reduce the taxes, he however remained adamant. After a lot of pursuance, the Earl said that he would reduce the taxes if she would strip naked and ride on a horse through the streets of the town. Lady Godiva asked him to keep his word. She then announced a proclamation that all persons were to shut their doors and windows and stay indoors and then rode through the town clothed only in her long tresses.


The adoption of the mark ‘GODIVA’ and the image of Lady Godiva by the company upholds the values of Lady Godiva who was known for her passion, generosity, and pioneering spirit.

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Know the real India

-Adv. Chinmay Pawar

The fertile plain of mighty river Ganga (Ganges) has played a significant part in India’s history. Onto is final journey, the river flows through Bengal. In modern history, Kolkata (Calcutta) in Bengal region served as the capital of British Indian Empire till 1911. In ancient India, Bengal saw the rise and fall of ‘Pala’ kingdom.

The word ‘Pala’ in Sanskrit language means the ‘protector’. The kingdom was named after its ruling dynasty. The kingdom lasted for about 4 centuries- from 8th century CE to 12th Century CE. The main cities of the kingdom were Vikrampura, Pataliputra, Gauda, Monghyr, Somapura, Ramvati (Varendra), Tamralipta and Jaggadala located in modern day Bengal and Bihar. At its peak in the early 9th century CE, the Pala Empire’s territory stretched across the Gangetic plain to include parts of modern-day eastern Pakistan, north and north-eastern India, Nepal and Bangladesh.

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Hidden gems of India – PATESHWAR

-Adv. Chinmay Pawar

Pateshwar Temple Complex

Pateshwar is a small place located about 15 kms from the town of Satara in Western Maharashtra. It is a complex of many small temples carved out of stones.

The temple complex is located on a small hill which is partly accessible by vehicles. The last 1 km road to the temple complex is an easy trek that runs along the crest of a hill heading east. The temple complex is dedicated to the lord Shiva. he temple complex is revered by the people of adjoining villages, but they only visit this place during festive times and during the Hindu month of Shravan. Pateshwar temple complex has 8 ancient caves and many ancient stone carved Hindu deities.

Due to its ‘off-the-tourist-map’ status, there is not much of an information available regarding the temple’s construction era and history.

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