From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
A Japanese company viz. M-Paulownia Co., Ltd. filed a trademark application for a composite logo containing the words ‘GONNA GETCHA’ written across two inverted and interlocked ‘Gs’ in Class 14 at the JPO in 2018.
The popular French brand ‘Channel’ filed an opposition against the mark on the grounds that, the mark applied for was deceptively similar to its popular inverted and interlocked ‘Cs’ forming the famous Channel logo and that the registration of the mark applied for will grant the applicant undue advantage of the channel brand and its goodwill.
The JPO admitted that the Channel logo was popular however, observed, that there were significant differences amongst the two logos, especially with the use of 2 different letters C & G, in addition to the use of the term ‘GONNA GETCHA’. The JPO thus, held that the marks were distinct and dismissed the opposition.
Arianna Co. Ltd., applied for the mark ‘ARIANNA’ at the JPO in Class 10 in 2019.
The US based company GrandAri Inc. owned by the renowned pop singer Ariana Grande, filed an opposition against the mark, on the grounds the proposed mark is deceptively similar to the prior registered mark ‘ARIANA GRANDE’ registered in Class 3. GrandAri argued stating that, the renowned singer was known as ‘Ariana’ and thus, the consumers purchasing products under bearing the proposed mark are likely to believe that the product emanate from the singer’s company or are associated to the singer.
The JPO however, did not find the 2 marks to be deceptively similar and stated that, since there is considerable phonetic difference between the marks, the consumers ought not to be confused.
The Indian TMO view:
Based on our experience in the field of trademarks, we believe that had both the cases been put forth before the Indian Trade Marks Office, both the oppositions would have succeeded. Though the Indian TMO also follows the principle of ‘considering the mark as a whole’, however, in cases where globally renowned brands such as Channel and Ariana Grande are in question, the Indian TMO tends to sympathize with them. The Indian TMO
Lenora Antoinette Stines (Stines) is a Jamaican director, choreographer, author, actor, and dancer. She is the founder and artistic director of L’Acadco: A United Caribbean Dance Force, a contemporary dance company located in Jamaica.
Stines is also the founder of the first Anglo Caribbean Modern Contemporary training procedure which she has named “L’Antech”. “L’Antech is an eclectic Caribbean contemporary technique that synthesizes African influences, Caribbean folklore, and is dominated by Jamaican Afro-Caribbean forms”.
We do not claim any copyright in the image used. It has been used for academic and representational purposes
In June 2020, Stines filed a lawsuit in Los Angeles Federal Court seeking general damages over US $ 150,000 against entertainment star Shawn “Jay-Z” Carter 9 (Jay-Z) and his pop music superstar wife Beyoncé Knowles-Carter (Beyonce).
Stines alleged that Beyonce and Jay Z used her voice in their 2018 album track “Black Effect” without seeking her permission. Stines claimed copyright infringement, violations of her right of publicity, and /or additionally, or unjust enrichment.
In her lawsuit Stines alleged that the celebrity couple contacted her in March 2018 to bring dancers to the set of a visual production that was intended to promote the celebrity couple’s tour The Carters and the album Everything Is Love. In addition to this, the duo also requested Stines to speak in the video about her thoughts love, and she was told that her voice would be used in the promotional video only.
Stines further alleged that she was given an agreement and asked to sign without consulting legal counsel. She was shocked to see that the album Everything is Love featured the unauthorized exploitation of her vocals in one of the songs named Black Effect. Stines claimed that her monologue ended up on the intro to the album’s Black Effect, and even then she was not among the list of credited Black Effect writers on Spotify, and was credited under “Additional Vocals” and “Associated Performer” on TIDAL. She stated that she felt violated and “artistically raped” after discovering that she had not been given her true credit in the song.
Consequently, she filed a suit against the couple for copyright infringement and violation of her right to publicity and claimed damages. She also demanded writing credits.
However, recent reports suggest that Stines has voluntarily dropped the suit. She has stated no reason for her voluntary act of dismissing her claims against Jay-Z and Beyonce. This means that she can re-file the lawsuit against them. It appears as if the parties have reached some settling ground. Watch this space for more updates.
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 email@example.com, 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.
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.
In a recent case of trademark infringement, the Bombay High Court readily granted ad- interim injunctions, considering that the alleged counterfeiter was not using a similar mark, but the same mark as that of the plaintiff for selling the concerned goods. The outright act of counterfeiting made the motive to proceed against it abundantly clear.
Siyaram Silk Mills Ltd. is a public limited company founded in 1978. It is a popular clothing brand in India since a few decades. One of the distributors of Siyaram’s from Rajasthan found that one of the dealers, Kaluram Gopal Sharma, was dealing in/ selling clothes under the brand SIYARAM'S without the authorisation from Siyaram’s. It filed a suit at the Bombay High Court for infringement and passing off.
It was noted that the labels were not even similar, but were exact copies of those of the labels of Siyaram’s. The intention to pass off counterfeit products as those of Siyaram’s was evident.
Police raids were conducted and large quantities of counterfeit products were recovered from the Defendants. The Court noted that the necessary test of a tortious action in deceit sufficient to grant relief in passing off. The Court held that the criteria for prima facie case was “more than satisfied”. It therefore granted an ad-interim injunction against the defendants.
Counterfeit products degrade the brand value and reputation of a brand severely, making it difficult for consumers to trust the brand again. For a reputed brand, loss of goodwill is much greater than any monetary losses suffered.
Promila Chauhan, trading as, Divyank Enterprises (“Chauhan”) registered the mark “Gopal” with respect to Rusk (a tea time snack item). Satpaul Mittal (“Mittal”) was using the mark “SPMGOPAL” with respect to bakery products. According to Chauhan, the packaging and labels adopted by Mittal were infringing its registered trademarks. Chauhan filed an FIR under Section 420 of the Indian Penal Code read with Section 103 of the Trade Marks Act, 1999, at Police Station Singh Bhagwantpur, District Rupnagar. Consequently, raids were carried out at the premises of Satpaul Mittal in search of the infringing products.
Mittal filed a writ petition at the High Court of Punjab and Haryana, under Article 226 of the Indian Constitution, against Chauhan, stating that its right to freedom of trade and profession (a fundamental right under Article 19 of the Indian Constitution) was being affected by these illegal raids.
The High Court noted that, Mittal was in fact illegally imitating the wrappers of the products manufactured by Chauhan under the trademark 'GOPAL'. It is also noted that Mittal has filed an application for rectification of Chauhan’s trademark registration (bearing No. 1080641).
The Court also noted that a civil suit before the District Judge of Rupnagar has been filed and that the FIR is also duly registered against the petitioner. According to the Court no process of law has been hampered so far, and that the case did not require its interference. Thus, the Court dismissed the writ petition stating that it withholds its observations with respect to the merits of the case.
It is a settled principle of constitutional law, that one must approach the High Court under a writ only when all alternate efficacious remedies available are exhausted. In this case, the trademark law provides for a distinct and wholesome mechanism to deal with infringement cases, hence a writ petition could not survive.
M/s G. M. Modular Pvt. Ltd (‘G.M.’) is engaged in the business of manufacturing and marketing a wide range of electrical goods, electrical switches, LED lights, etc. For the purpose of LED surface light, G.M. created a unique LED surface light.
G.M. has registered the design of its LED surface light vide no. 282812 in class 26-03 dated 22.04.2016 for its unique design, shape, configuration, and surface pattern. The registration is presently valid and subsisting.
G.M. found that M/s Syska LED Lights Pvt Ltd. (‘Syska’) adopted a similar design in relation to LED surface light and is selling and marketing its products through various e-commerce websites such as www.amazon.in and www.indiamart.com.
We do not claim any copyright in the image used. It has been used for academic and representational purposes
Hence G.M. filed a suit before the Delhi District Court at Saket1 against Syska alleging infringement of its registered design and seeking permanent injunction to restrain Syska from using the same.
The Court held that visually Syska’s version appears to be an obvious imitation i.e. of G.M. ‘s registered design. The deceptive similarity of Syska’s LED with that of the G.M.’s LED can cause confusion in the mind of innocent purchasers and hence G.M. would suffer irreparable loss and injury if an ad-interim order is not granted to protect its intellectual property rights.
As G.M. was successful in fulfilling the 3 essentials for grant of interim injunction i.e. a prima facie case, the balance of convenience, and irreparable loss, the Court granted an interim injunction in its favour restraining Syska from manufacturing, marketing, selling, using, or from doing any other acts amounting infringement of G.M.’s registered design. The matter is now adjourned to May, 2021 for Syska's appearance and completion of pleadings.
1M/s G. M. Modular Pvt. Ltd. vs M/s Syska LED Lights Pvt Lld.- CS (Comm) 83/2021 dated - 12.02.2021
Did you notice that the company 3 M has a curiously small name? 1 Letter of the alphabet and 1 Number, that’s it? 3 M actually stands for Minnesota Mining and Manufacturing Company (hence the 3 Ms!!) It is a widely known FMCG company that was established more than a century ago. It has been all over the news for infringement cases, pharmaceutical licensing, and curbing the counterfeit markets, especially in the last one year, due to the rising Coronavirus cases.
-Adv. Chinmay Pawar
The greatest of Pala kings was Dharampala. In fact, the Pala empire reached its peak under Dharmapala. Initially, Pratihara’s king Vatsaraja and Rashtrakuta’s emperor Dhruva defeated Dharmapala in separate battles. However, once Dhruva left for the Deccan (South Indian Plateau) region, Dharmapala took the opportunity and built a mighty empire in North India. He defeated the powerful king of Kannuaj and installed his own nominee on the throne of Kannauj. Several other smaller kingdoms in north India also accepted his suzerainty.
Soon, Pratihara’s king Vatsaraja’s son took over Kannauj and defeated Dharmapala in a pitched battle near Monghyr. However, Dharmapala was resilient and shrewd at the same time. He accepted defeat but sought help of the mighty empire of Rashtrakuta, whose emperor had once defeated Dharampala and Pratihara’s king Vatsaraja as well. The Palas were Buddhists. They used the revenue from the new tax collection methods to fund initiatives all across the region that would spread Buddhism. They built large monasteries like the one at Paharpur (in modern day Bangladesh), during the reign of Dharmapala.
-Adv. Chinmay Pawar
The International Commission on Irrigation and Drainage (ICID), established in 1950 is a leading scientific, technical, international not-for-profit, non-governmental organization. It annually recognises irrigation structures of international significance on the lines of World Heritage Sites recognised by the UNESCO.
In December 2020, ICID recognised four sites in India as the ‘World Heritage Irrigation Structure’ (WHIS). The sites are Cumbum Tank, Kurnool-Cuddapah Canal, Porumamilla Tank (Anantharaja Sagaram) in Andhra Pradesh and 490-year-old Dhamapur Lake in Maharashtra’s Sindhudurg district in Konkan region.