From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
A Greek company named, Athlon Custom Sportswear (Athlon), filed a trademark application for registration of the mark in Class 25 covering ‘Athletic clothes and hats’ bearing application no. 016162596. The mark was filed in December, 2016 at the EUIPO. As soon as the mark was advertised in January, 2017, Decathlon opposed the mark.
Decathlon, a French company, is the registered proprietor of the marks: ‘Decathlon’, ,DECAT' in Class 25 and several other classes at the EUIPO. In its opposition, Decathlon stated that the consumers would to get confused with respect to the origin of the goods bearing the mark ‘/ athlon’ leading to confusion amongst the members of the public. The EUIPO was convinced with the arguments put forth in the opposition and ruled in favour of Decathlon.
Athlon, appealed against this decision to the Board of Appeals. The Board stated that since the mark applied for was restricted only to goods covered under Class 25, there cannot arise confusion amongst the marks, and overturned the decision of the EUIPO.
Decathlon appealed against the Board’s decision at the General Court. The Court observed the following:
• Though it can be agreed upon that there is some conceptual and phonetic similarity, the marks cannot be considered to be deceptively similar to one another. This is because the common element between the marks is ‘ATHLON’ which means ‘contest’ in Greek. The Court further observed, that, ‘Athlon’ is used as a suffix to refer to several sports events such as: Skiathlon, quadrathlon, octathlon, tetrathlon, triathlon, aquathlon, heptathlon. One such word is also ‘Decathlon’.
• ‘Decathlon’ refers to the sporting event which includes both track and field events: (first day) 100-metre dash, running long (broad) jump, shot put, high jump, and 400-metre run; (second day) 110-metre hurdles, discus throw, pole vault, javelin throw, and 1,500-metre run.
• Based on the above, the Court concluded that both the marks are of low distinctive character. Thus, in order to assess the similarity, one needs to look at the marks as a whole.
• The argument and evidence submitted by Decathlon in an attempt to prove that its mark has acquired distinctiveness, was dismissed by the Court.
Patents are granted for inventions and a patentee enjoys exclusive rights to his patented product/process. The patent laws allow a patentee to prevent third parties from the act of making, using, selling, or importing his /her invented product or process. It is, therefore, imperative that a patent is not granted for an invention that is frivolous and un-patentable. Whereas a patent office examines a patent application with respect to its novelty, inventive step, and industrial application, the patent laws also provide for filing opposition by any person or any person interested. Thus, the patent laws provide a mechanism so that a patent application is subjected to scrutiny by the patent office as well by any person or any person interested, the latter being a person engaged in or having research interests in the field in which the opposed application lies.
Invalidation of a patent by opposition mostly draws reference to Chapter V of The Patents Act 1970 (“the Act”):"Opposition proceedings to grant of patents”. According to the Act, opposition can be filed by any person where an application for a patent has been published but a patent has not been granted1. Opposition can also be filed by any person interested at any time after the grant of the patent but before the expiry of a period of one year from the date of publication of the grant of the patent2. However, there are other sections that also deal with opposition.
It is well known that the term of a patent is twenty years from the date of filing of a patent application. To ensure that a patent remains in force, the patentee is required to pay a renewal fee within the prescribed period. If an applicant fails to pay a renewal fee within the prescribed period, rights of the applicant on the subject matter claimed in the patent cease and the patent in question is not entitled for any protection. In other words, the patent lapses. However, the Patents Act, 1970 offers a way for the restoration of lapsed patents. If a patent has ceased to have effect because of the non-payment of the renewal fee, the patentee can submit an application to the patent office with the permission of the Controller, within 18 months from the date on which a patent ceases to have effect3.
If the Controller is, prima facie, satisfied that failure to pay the renewal fee was unintentional and that there was no undue delay in submission of the renewal application, the application is published for restoration.
In this case also, the published application for restoration of a patent is open to scrutiny by any person interested. The patent laws allow opposition against an application published for restoration of the patent under section 61(1), Procedure for disposal of applications for restoration of lapsed patents. Opposition for patent restoration can be filed on either or both the grounds4 listed hereunder:
(a) that the failure to pay renewal fee was not unintentional or
(b) that there has been undue delay in submission of patent restoration application.
Thus, there are only two grounds (a) and (b) available for opposition for the restoration of a patent whereas a number of grounds listed in section 25(1) and 25(2), “Opposition proceedings to grant of patents” are available for opposition after a patent application is published or after a patent is granted.
Any person interested can submit a notice of opposition for the restoration of a patent. On receipt of the notice, the Controller informs the applicant about the opposition filed against the published application for the restoration of the patent. The opponent can put forth his/ her arguments and evidence for proving that failure to pay the renewal fee was deliberate and /or that there was an undue delay on part of the applicant for submitting patent restoration application. Both the applicant and the opponent are given an opportunity to be heard before the Controller decides the matter5. However, the final call for a decision for considering restoration of a patent rests with the Controller.
Opposition for the restoration of a patent has also been a subject matter of litigation. In one such case, the Controller of patents accepted a renewal application and issued a certificate of restoration for patent no.186320. The patent lapsed 15.09.2006 but the patent renewal application was filed only on 02.02.2009. The Patents Act, 1970 allows the filing of renewal applications within 18 months from the date of lapse of a patent. However, in the instant case, there was a delay of more than 29 months. The restoration was challenged by the petitioner, vide a writ petition filed in 2010. The Patents Act, 1970 allows filing opposition with the Controller but the petitioner chose to file a writ petition. The court set aside the renewal and remanded the case for a hearing.
1 Section 25(1)
3section 60 (1)
Barcode scanning helps in easily accessing vital information about products, such as manufacturing information, country of origin, quality, and quantity. GSI is a globally set up body that maintains a database of products complying with its established ‘Global Standards’ by issuing barcodes for them. GS1 INDIA is a registered society under the Societies Registration Act set up by several bodies such as Bureau of Indian Standards (BSI), Federation of Indian Chambers of Commerce and Industry (FICCI), Associated Chambers of Commerce and Industry of India (ASSOCHAM), Confederation of Indian Industry (CII). It has obtained a license from GSI for operating the barcodes with code ‘890’ in India. It is GSI’s only licensed body in India and has been allocated the code '890' which is used along with ten other digits. GS1 then allocates a unique 13-digit barcode (890 + 10 digits) to various manufacturers/ suppliers who want their products to be certified with a barcode so as to ascertain the products’ country of origin, manufacturing, supplying units, and the like. GS1 India is the registered proprietor of the trademark (certification mark) bearing number 1293152 as well as the pictorial design in class-35 for the business of certification.
GS1 India came across websites, namely, www.indiabarcodesship.com and https://india-barcodesstore.com/ which were operated by an entity named Global Barcodes SL (Global Barcodes), based outside India. Global Barcodes started issuing barcodes starting with ‘890’. GS1 India filed a suit against one Global Barcodes at the Delhi High Court: GS1 INDIA v. GLOBAL BARCODES SL & ORS. to restrain it from issuing the 13-digit barcode numbers starting with ‘890’ claiming that such issuance and use amounts to infringement of its registered trademark as well as deception of the public at large, as to the quality/ standards of the goods.
In May 2020, by virtue of an interim order passed by the Court, the Internet Service Providers (ISPs) had blocked the impugned websites as well as the alternative websites which Global Barcodes was creating to bypass the interim order. It claimed that Global Barcodes’ 13 digit barcodes would lead the public into believing that the products on which they are used are compliant with the international standards set by GS1, which was not the case.
The Court observed that the activities of Global Barcodes are illegal and mischievous. Further, it also observed that Global Barcodes did not appear before the Court when summons were issued. Therefore, the Court, exercising its power to directly pronounce a judgment in case the defendant fails to present his written statement within the prescribed time (Order 8 Rule 10 CPC) , passed an order of injunction against Global Barcodes. It also granted GS1 damages to the tune of INR 20 lakhs to be paid by Global Barcodes. The Court also directed the ISPs to block/ take down or remove the impugned domain names or their alternative forms.
Zenith Dance Institute, as the name suggests, is a dance troop company that is engaged in training and education of different forms of dance, and delivering dance performances in India. It has been using the mark "ZENITH" continuously and extensively since 1997. Zenith Dance Institute is the registered proprietor of the trademarks, and “Zenith Arts” in Class 41. It recently filed a trademark infringement suit at the Delhi High Court against another dance troop, namely, Zenith Dancing and Music (“the Defendant”): Zenith Dance Institute Pvt. Ltd. v. Zenith Dancing and Music CS(COMM) 36/2021.
In 2014, Zenith Dance Institute had found that the Defendant was using the mark and had even registered the same in Class 41. Zenith Dance Institute filed an application for rectification of the mark before the Intellectual Property Appellate Board. The same was decided in the favour of Zenith Dance Institute, as the Defendant did not appear for the proceedings.
However, in 2020, it came across a social media page wherein the Defendant had again started operating under the mark Zenith, thereby resulting in the current suit. The Delhi High Court observed that Zenith Dance Institute was using the mark since 1997 and was also the registered proprietor of the same. It held that a prima facie case has been made out by Zenith Dance Institute in its favour and in case, no ex-parte ad interim injunction is granted, it would su?er an irreparable loss. The balance of convenience also lies in favour of Zenith Dance Institute and against the Defendant. In light of the above, it granted an ex-parte ad interim injunction against the Defendant directing it to refrain from using the impugned mark until the next hearing.
Beiersdorf AG is a multinational company based out of Germany, that manufactures and retails personal care and cosmetic products. Beiersdorf AG (for ease of reading referred to as ‘Nivea’) has registered the mark ‘Nivea Cocoa Nourish’ (Label) in India (bearing TM Registration No. 3289787). RSH Global Private Limited (RSH) is a company, also manufacturing and dealing in cosmetic products under the name “Joy”. In December, 2020, Nivea found that the trade dress adopted by RSH for its moisturiser was similar to that of its own products under the mark “Nivea Cocoa Nourish”.
Consequently, Nivea approached the Delhi High Court seeking injunction against RSH alleging infringement of the trade dress of its product “Nivea Cocoa Nourish” by RSH.
Nivea stated that the distinguishing features of the trade dress for “Nivea Cocoa Nourish” Oil in Lotion are:
(i) the brand name NIVEA is written in a white font on a dark blue background;
(ii) the container bears a distinctive blue colour, which is exclusively identified with Nivea alone and which stands protected as a colour mark at the German Trademark and Patent Office in Class 3;
(iii) a milk swirl/splash device in white colour towards the lower half of the container; and
(iv) cocoa butter in the form of a droplet design in golden colour at the centre of the milk swirl/splash device.
Comparison of the two Products Left- Nivea, Right - RSH
We do not claim any copyright in the image used. It has been used for academic and representational purposes
The Court noted that that RSH’s product container is similar, even if not identical, in shape and size, and also has white letters on a blue background. The Court further observed that the shades of blue are also similar and so is the white semi-circular splash towards the lower half of the container, which is, a feature distinctive to Nivea’s product.
The Court stated that “The test for comparison, it is settled, is not for identifying dissimilarities between the plaintiff’s product and the allegedly infringing product of the defendant, but of whether, seen as a whole, the product of the defendants is deceptively similar to that of the plaintiff.”
Therefore that Court held that if the two products are holistically seen, there is prima facie likelihood of an unwary purchaser of average intelligence and imperfect recollection, confusing the product of RSH with that of Nivea.
The Court also emphasised on the fact that till the allegedly infringing product came to be manufactured, RSH was not adopting any trade dress, for its other products, which was similar to that of Nivea’s product. Therefore it can be prima facie be construed as a case of deliberate copying of Nivea’s trade dress by RSH.
In view thereof, the Court granted an exparte ad-interim injunction in favour of Nivea, restraining RSH from, inter alia, using the impugned trade dress, directly or indirectly while dealing in cosmetic products, especially body cream, lotion or goods that is infringing Nivea’s trademarks and copyright in the artistic work of its label, trade-dress, and passing off their products as those emanating from Nivea.
V. R. Industries Pvt. Ltd. (“VR”) is engaged in the business of selling food products such as corn flakes, muesli, porridge, etc.. It coined and adopted the trademark “8 AM”, in 2004. In the same year, it applied for registration of the trademark "8 AM" in Class 30, claiming use since 1st May, 2004. However, this trademark application was Opposed. It applied for the same in 2007 in respect of a label containing the term “8 AM”, in Classes 29, 30, and 32. This label was registered as a trademark.
In October 2007, VR came across Mohan Meakin Ltd.’s (“Mohan Meakin”) trademark application for “8 AM Corn Flakes (Label)” which was filed in 2005 on a proposed to be used basis. It observed that Mohan Meakin later changed its earliest date of use to 1st January 2004. In 2012, VR had also filed an application for removal of Mohan Meakin’s trademark registration and the same is pending.
In the instant case, VR approached6 the Delhi High Court seeking injunction restraining Mohan Meakin from manufacturing and selling food items under the mark “8 AM” or any other deceptively similar mark. VR claimed that it had an exclusive right over the mark “8 AM”, by virtue of being a prior bona fide user and registered proprietor. VR further claimed that Mohan Meakin’s product is advertised as “Mohun’s New Life Corn Flakes” and that it has not used the mark for which it has sought registration. Mohan Meakin pleaded that VR obtained the ex parte injunction by concealing the fact that Mohan Meakin was a prior adopter of the mark “8 AM” and not VR. It denied VR’s prior user claim.
The Court had granted an exparte interim injunction against Mohan Meakin restraining it from using the trademark “8 AM” or passing off its goods as those of VR by using the said mark.
Mohan Meakin claimed that VR has concealed the fact that a director of VR was employed with Mohan Meakin as a Senior Executive Officer and was living with his family in the premises of Mohan Meakin, till shortly before the institution of the suit and hence VR was fully aware of adoption and use of the mark “Mohan’s 8 AM Corn Flakes” by Mohan Meakin. It explained that its trademark application on a "proposed to be used" basis was a clerical error as was evident from documents showing use of the mark since 1st January 2004. Hence, Mohan Meakin requested the Court for vacation of the ex-parte stay.
The Court observed that VR also failed to offer any explanation as to why the facts regarding its director being aware of Mohan Meakin’s use of the mark 8AM were not disclosed to the Court at the time of obtaining ex parte injunction. The Court also remarked, “…it is thus imperative for the litigants to, at least when approaching the Court for ex parte relief, make a clean breast of the facts. The plaintiff is not found to have done so. I refrain from saying more. However, such conduct of the plaintiff also requires the plaintiff to be denied the equitable relief of interim injunction.”
The Court also observed that, the subsequent trademark application filed by VR, which was granted registration after institution of this suit did not include “corn flakes”, in respect of which VR sought to restrain Mohan Meakin. Thus, as on the date of institution of the suit, Mohan Meakin was the registered proprietor of the mark “8 AM” in relation to corn flakes. Presently, both, parties hold registrations and Mohan Meakin’s registration is prior to that of VR. Hence VR’s claim has to be construed as that of passing off alone.
The Court further remarked that VR could have proceeded with the suit, as for passing off, with only the suit on the ground of infringement being stayed awaiting the adjudication by the IPAB, but it chose to have the suit qua passing off also stayed, to perpetuate the ex parte injunction against Mohan Meakin. Therefore VR’s conduct was not bonafide and this again disentitles it to any equitable remedy.
The Court further held that merely because Mohan Meakin has not considered it worthwhile to restrain VR from using the mark or to seek cancellation of the registration in favour of VR also cannot be a reason to continue restraint against Mohan Meakin. The Court also held that Mohan Meakin’s mark “8 AM” in conjunction with “Mohan’s” even otherwise distinguishes its products from those of VR and that there is no case of irreparable injury made out. Based on the above reasons, the Court held that VR has not satisfied the essential ingredients for establishing a prima facie case, to be entitled to an interim injunction and hence it vacated the ex parte ad-interim injunction against Mohan Meakin.
6V R Industries Private Limited vs Mohan Meakin Ltd. & ANR.- CS(COMM) No.485/2018- 29th January 2021
Domain names and email IDs have easily replaced billboards and visiting cards and therefore their unauthorised use can severely hamper the goodwill and reputation in a trademark.
Aktiebolaget Volvo (“Volvo”) is a globally well-known automobile company. It is renowned for selling cars and other vehicles and started using the trademark VOLVO since 1915. It is the registered proprietor of, inter alia, the mark ‘VOLVO’ in various classes in India. In India, it is a practice to generically refer to luxury buses as - Volvos. Volvo came across a website www.vaishalivolvo.com and use of the email ID firstname.lastname@example.org, by one Vaishali Travels. Therefore, Volvo filed a trademark infringement suit against Vaishali Travels at the High Court of Delhi seeking an injunction to restrain Vaishali Travels from using VOLVO as part of its domain name/ email ID: : Aktiebolaget Volvo & Ors. v. Vaishali Travels & Anr. Volvo claimed that such use was infringement of Volvo’s registered trademarks.
Volvo also submitted that its mark has been recognised as a well-known mark by the Bombay High Court in the case of Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat, 1998 PTC (18) 47
The Delhi High Court heard the matter and observed that the use of the word Volvo as a part of its domain name by Vaishali Volvo amounts to infringement. Courts have been vigilant in granting speedy remedies in cases of such infringement on web based platforms. This is a much faster and more efficient method of stopping the use of a domain name and going through the domain name resolution process in India. The Court ordered that Vaishali Travels be restrained from infringing the trademarks, using, inter alia, the domain name: www.vaishalivolvo.com, meta-tags associated with the impugned domain name and email ids and meta-tags on the source code of the website until the next date of hearing.
On February 08, 2021, Dr. Mohan Dewan, Principal, RK Dewan & Co. was invited as a Speaker at a webinar conducted at Symbiosis Skills and Professional University, School of Mechatronics. Dr. Dewan addressed an audience of around 250 professors and students pursuing their Ph. D. or Masters in mechatronics, computer science, IT and other fields of engineering. It was no surprise that the audience was full of budding inventors and innovators, as the webinar soon took the form of a question answer session, in which the students and professors asked practical questions relating to their own prospective innovations and research. Dr. Dewan addressed each question patiently and took time to understand the enquirer’s innovation field, his/ her academic background, and the like, before giving a practical solution tailored to the enquirer’s needs.
During one of the answers, Dr. Dewan said, “Publish to perish, and patent to prosper!” Here, he was emphasising on the importance of opening up one’s invention to the public, only when at least a provisional application for the patent is file. Dr. Dewan’s insights, which are rooted in his experience of over 50 years in the field of patenting and litigation, were appreciated by all.
Who doesn’t appreciate a cold beer at the end of a hard day? Bira, one of India’s popular craft beer brands was a welcome change for most! Ever wondered, what the logo stands for?
Well, the brand was initially named ‘BIRU’ which means ‘beer’ in Japanese, however after a trademark registration issue in Japan, the company decided to rename the brand to ‘BIRA’. BIRA refers to ‘elder brother’ in Punjabi and even otherwise has a very ethnic vibe to it. The numerical ‘91’ is the country code for India and also makes it more distinctive. The reverse ‘B’ is indicative of the spirit of rebellion towards the other beers in the market. Lastly, the monkey as a mascot simply refers to the monkey within each of us waiting to go crazy!