From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
One way to go about one’s business, is to add value to a product/ service and then sell it under a brand name. The brand keeps achieving a reputation and that in turn adds value to the product/ service. This is how normal, mainstream businesses function. But in a world of parodies, roasts, spoofs and stunts, there are other ways to get your business noticed. Publicity gimmicks have to include something that will not only catch the public eye, but also go “viral”. As the old saying goes, no publicity is bad publicity, hence, the things that go viral can also be immoral, contrary to public opinion, contentious, basically anything that has the potential to go viral and generate hits!
MSCHF Product Studio, Inc. (“MSCHF”) is an American company that is known for its stunts with products. Reports suggest that it had earlier come up with shoes called the “Jesus Shoes” for which it developed Nike’s shoes and added drops of water from the River Jordan, signifying a connection with Jesus. Nike did not object to this.
However, this time, MSCHF introduced shoes called the Satan’s Shoes “which are customized Nike Air Max 97 shoes that MSCHF has altered to prominently feature a satanic theme”. These shoes apparently contain certain amount of actual human blood and the number 666 (which is popularly known as the devil’s symbol)! The shoes also display the term “LUKE 10:18”, which in the Bible refers to a verse- “I saw Satan fall like lightning from heaven.”
Nike has objected to the same and stated that this is attaching a negative connotation to its brand image. Nike has also filed a suit at the UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK for brand disparagement and infringement. According to Nike, this will surely create a confusion in the minds of the consumers that the shoes belong to Nike. In support of its statements, Nike also submitted to the Court comments of various users suggesting that the they associated the products with Nike and conveyed annoyance over Satan Shoes. Nike also contended that this act of MSCHF has caused trademark dilution, confusion and deception to its consumers and unfair competition against itself.
Nike has sought an injunction restraining MSCHF and all persons acting in concert with them, from engaging in further acts of infringement. It also demanded, inter alia, accounts of profits and damages.
Interestingly, MSCHF has taken the battle head on and launched T-Shirts with the Nike’s plaint printed on it! This is one fun trademark battle to follow. Watch this space for more updates as the case progresses.
The pandemic has shaken up humanity and a lot of human processes, but in a way that only makes us and our processes better by the day.
From stalling all court hearings to conducting them over online platforms, our legal systems have come a long way in a really short span of time and limited resources. They say, the legal system is the slowest to change, and yet these difficult times have proven otherwise.
The Supreme Court recently announced that certified copies of its judgments can now be accessed online. The Court has formed a detailed mechanism to procure e-copies of the judgments/ orders, and the like, online. This not only facilitates the remote work set-up for litigants at the Supreme Court, but also helps the certified copies to be easily accessible throughout the country.
The launch of the e-Copying Module helps in obtaining the ‘Certified’ copies of all pleadings, judgments, decrees or orders, documents and deposition of witnesses made or exhibited in the proceedings by paying copying/ postal fee online.
Advocates who are already On-Record need not register again for obtaining certified copies. Further, litigants themselves can also register to obtain certified copies of the documents related to their cases.
The Supreme Court has released a circular stating the salient features of the E-Copying Software which can be accessed here. The Circular states: “e-Copying system is integrated with Indian Postal Department as a result, the user can immediately pay for speed post. Both, payments for “certified” copies and postal charges can be paid by single transaction by online payment to Bharat Kosh.”
One can also track the status of their request to obtain the e-copy and the same is conveyed via SMS service.
What is an ‘invention’? An invention is a unique or novel device, method, composition or process. In India, the Indian Patent Office confers on an applicant the rights to sell, license, produce and market an invention for which he has applied for a patent in accordance with The Patents Act, 1970. Further an applicant/ assignee having these patent rights can prohibit others from copying, selling or importing the invention.
According to section 2(j) of The Patents Act, 1970, an “invention” is defined as a new product or process involving an inventive step and capable of industrial application. It should be noted that an invention is not just a novel product or a process but it should also involve an inventive step and it should be capable of working industrially.
Therefore, there are three criteria/parameters laid down in The Patents Act, 1970 for an invention for being patentable:
“Novelty” or “new invention” means any invention or technology which has not been published in any document anywhere in the world or publicly used anywhere in the world before the date of filing the patent application.
The first step in identifying the novelty is to identify the features of the invention. Then one should identify the closest prior art. By comparing the invention with the prior art, one should be able to determine whether all the features of the invention are present in a single prior art. If the prior art discloses the invention either in explicit or implicit manner then the invention lacks novelty if not then the invention is considered to be novel.
II. Inventive step:
According to section 2(ja) of The Patents Act, 1970, "inventive step" means a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
In simple words, a person skilled in the art when faced with a similar problem should not be able to arrive at the presented invention by combining the teaching of the prior art available in the public domain. Such inventions are considered to have inventive steps.
Identifying inventive step
The first step in determining the inventive step is to determine the closest prior art based on a similar purpose/effect as the invention. Further determining the objective technical problem which the claimed invention addresses and successfully solves. Further assessing whether a skilled person would arrive at the invention by adapting/modifying the combined teachings of the closest prior arts.
III. Industrial applicability
According to section 2(ac) of The Patent Act, 1970, "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry.
The invention must show that the product is either made in an industry or the process is used in an industry or that the product/article can be used in an industrial environment, i.e. the product can be manufactured/ the process is used to manufacture a product and the product can be made available to the general public.
Britannia Industries Ltd. (Britannia) approached1 the Delhi High Court seeking a permanent injunction against Parle Biscuits Pvt. Ltd. (Parle) restraining Parle from issuing or telecasting an advertisement, disparaging the goodwill and reputation of Britannia and its Cookies sold under the packaging/Design Britannia Good Day Butter Cookies / Good Day.
Britannia’s grievance was regarding an advertisement uploaded on YouTube by Parle wherein Parle promoted its product: “Parle 20-20” by apparently denigrating Britannia’s Good Day Butter Cookies/ Good Day range of cookies.
It claimed that through the said advertisement Parle is implying that other Cookies are inferior or tasteless. It claimed that the advertisement depicts cookies that are identical and /or are deceptively similar to Britannia’s Good Day Range of Cookies. Britannia claimed that this is a violation of its Registered Design for GOOD DAY (Design bearing No. 270172 in Class 01- 01).
Britannia also sought a permanent injunction from the Court restraining Parle from issuing or telecasting the subject Advertisement in any language or issuing any other advertisement which is in any manner/medium disparaging the goodwill and reputation of Britannia and its products sold under the mark/design Britannia Good Day Butter Cookies / GOOD DAY Range of Cookies or similar designs. After several pleadings at the Court, Parle sought to settle the matter amicably.
Britannia and Parle have agreed that in the advertisement in question, the colour of the packet of the cookies shall be as follows:-
We do not claim any copyright in the image used. It has been used for academic and representational purposes
And the design of the cookies shall be “the first line of the cookie is curved while subsequent lines below the first line being straight lines.”
We do not claim any copyright in the image used. It has been used for academic and representational purposes
Hence the Court disposed of the present suit, on the consent terms agreed between the parties. Parle stated that it will take one week’s time from the date of settlement to pull down the impugned advertisement.
1Britannia Industries Ltd vs. Parle Biscuits Pvt. Ltd & Anr CS(COMM) 129/2021
Jain Irrigation System Company (“Jain Irrigation”) is the manufacturer and exporter of irrigation systems, pipes and fittings, plastic sheets, food, solar products. It received certain complaints about sub-standard goods bearing the company’s name being sold in the market. It found that certain HDPE pipes (hereinafter “goods”) bearing the name of Jain Irrigation System Company, which were not genuine, were being carryied in a truck. When Jain Irrigation enquired, the driver of the truck informed that the goods were loaded from one Tera-Flow Company (“Tera-Flow”). They bore Jain Irrigation System’s trademark and a forged stamp of CML (Certificate of Manufacturing Licence).
Jain Irrigation filed an F.I.R. against the concerned personnel of Tera-Flow. After further investigations, these counterfeit goods were seized. Tera-Flow approached the Bombay High Court seeking anticipatory bail for its personnel.
The Bombay High Court addressed a question of law while hearing an anticipatory bail. The primary issue for consideration was, whether offences of infringement under Section 63 of the Copyright Act and Section 103 of the Trade Marks Act are bailable in nature? The Court decided upon whether it was necessary to obtain the opinion of the Registrar as to the similarity between the marks, considering the mandatory nature of 115 (4) of the Trade Marks Act?
Tera-Flow submitted that the First Schedule of Cr. P. C. classifies the offences in the statutes other than the Indian Penal Code into bailable or non-bailable. The second category in this classification states that offences “punishable with imprisonment for 3 years, and upwards but not more than 7 years” are non-bailable. Therefore, it was the contention of Tera-Flow that looking at the offences of Copyright Act and Trade Marks Act, having a maximum possible punishment of 3 years, these offences are bailable in nature.
Against this, Jain Irrigation have referred to various judgments wherein it has been held that offences for which imprisonment “may extend to 3 years” would fall in the second category, and are non-bailable and cognizable.
After, considering all the submissions, the Bombay High Court observed that in the present case, the opinion of the Registrar of Trade Marks was not required as there was no question of similarity of trademarks and the challenged mark was identical to the registered mark. Therefore, it held that in the present case whether there is an infringement of Copyright Act attracting a punishment is a matter of investigation, but certainly there appears to be infringement of the trademarks registered in the name of the Jain Irrigation Systems Company. The Court further stated, “Thus, the act of the accused also amounts to offence under section 420 r/w. 511 of the IPC. By their act, the public were induced or an attempt was made to induce the public to buy these products under the impression that they were manufactured by the informant’s company.”Thus, the Court dismissed the application for anticipatory bail sought by the Tera-Flow.
‘Gunjan Saxena - The Kargil Girl’, a movie produced by Dharma Productions has been surrounded by controversies since its announcement. The latest one relates to a copyright infringement suit filed by the Indian Singers’ Rights Association (ISRA) wherein ISRA has sought royalty from Dharma Productions for the commercial exploitation of their performance in the movie. The movie earlier attracted huge backlash for misrepresenting the Indian Air Force as being a gender biased organisation.
The present issue is about 3 old movie songs- “Ae Ji O Ji” from the movie ‘Ram Lakhan’, “Choli Ke Peeche Kya Hai” from ‘Khalnayak’, and “Saajan Ji Ghar Aaye” from the movie ‘Kuch Kuch Hota Hai’ that were used in the movie. ISRA has claimed that Dharma Productions has commercially utilized the performances of its members in these songs without its permission. On becoming aware of the infringement of its rights, ISRA issued a legal notice to Dharma Productions.
Consequently, ISRA approached the Delhi High Court and the Court has issued summons to Dharma Productions. ISRA prayed violation of the performers’ rights of their members under Sections 38 and 38B of the Copyright (Amendment) Act, 2012. It claimed that all the performances of its members were originally from the above-mentioned cinematograph films. ISRA claimed that “The tariff for the performers’ rights is fixed and the defendant is bound to deposit it before the Court until the final decision comes.”
Dharma Production’s rebutted ISRA’s claim and stated, “studio performances are not live performances and therefore these not qualify for payment of royalty.”
The Court, in view of precedents, noted that the definition of ‘performer’ as per Section 2(qq) of the Copyright Act includes a Singer within its sweep and the performers’ right means any visual or acoustic presentation made live by one or more performers. It held, “Every performance has to be live in the first instance whether it is before an audience or in a studio.” Hence performers’ right raised by ISRA is a serious triable issue.
However considering the fact that the rival contentions and the underlying agreements are yet to be considered, the Court deferred from passing any order/directions against Dharma Productions for deposit the royalty amount until after the parties complete their pleadings.
-Adv. Chinmay Pawar
Magadha- the name resonates with the rich and powerful ancient India. It is a kingdom that holds a stature similar to what Delhi holds in medieval and modern Indian history. Each new ruler-dynasty tried to conquer Magadha or Delhi and the vast prosperous lands of these kingdoms-empires, in their respective periods in history. Magadha or Delhi were absolute symbols of political, military, and economic power and influence. Magadha is reckoned as one of the sixteen ‘Great Kingdoms’ (Mahajanpada) of ancient India. Magadha played a vital role in the development of Jainism and Buddhism in India. Also, two of India’s greatest empires, the Maurya Empire and the Gupta Empire originated in Magadha.
Magadha kingdom was established and located in the southern part of the modern-day state of Bihar in India. The kingdom of Magadha eventually encompassed modern-day states of Jharkhand, Odisha, Bengal, eastern Uttar Pradesh, and the lands now belonging to Bangladesh and Nepal.
The Haryanka dynasty is believed to be the first important and powerful ruling dynasty of Magadha. The Haryankas ruled from 544 BCE to 413 BCE, which is approximately 130 years. The empire saw 3 powerful rulers- Bimbisara, his son Ajatashatru and grandson Udayin (Udayabhadra). Udayin laid the foundations of a new city as his capital- Pataliputra (near modern-day Patna) in 490 BCE.
-Adv. Chinmay Pawar
India has seen many towns and cities that were founded, flourished, and have perished in its vast geographical and historical stretch.
Dhanushkodi, near the famous city of Rameswaram in the southern Indian state of Tamil Nadu, was once a bustling and flourishing town of thousands of people with houses, schools, churches, temples, a post office, and a railway station. The town was ravaged by a cyclonic storm in the year 1964 and was subsequently abandoned. Today, only a small number of fisher families live there.
The name ‘Dhanushkodi’ denotes the Hindu sacred text Ramayana and the legend of Lord Rama. It is believed that Lord Rama and his Vanarasena (the army of monkeys) had built a bridge to Lanka (Sri Lanka) to rescue Goddess Sita who was in the captivity of King Ravana of Lanka. After winning the war, Lord Rama had crowned Vibhishana, brother of Ravana, as the King of Lanka. Vibhishana asked lord Rama to destroy the bridge known as ‘Ram Setu’ (Rama’s bridge). The legend says that, upon his request, Lord Rama broke the bridge with an end of his bow. Hence the name Dhanushkodi, which literally means ‘end of bow’.
One of the smallest towns in the world, with a length of just 50 yards, Dhanushkodi is the only land border between India and Sri Lanka. The town is flanked by the Indian Ocean on one side and the Bay of Bengal on the other. One can reach Dhanushkodi from Rameshwaram via hired cars and busses.
Location of Dhanushkodi (Source: Google maps)
While at a traffic signal, we hear a low bass-filled rumble of a revving engine from somewhere far away, and we know it is the good ol’ Harley Davidson Engine adding music to the traffic noise. It is well known that the swanky motor bike has a typical engine sound which is largely associated with the brand. However, this was not enough for obtaining a sound mark registration for Harley Davidson in 1994. Yes, the “hidden” part of this time’s snippet is that Harley Davidson tried to trademark its engine sound way back in 1994. Various competing Bike makers, had filed oppositions against Harley’s sound trademark. It was held that the sound was functional to the kind of engine adopted by Harley and hence the trademark registration was refused. Guess, you’ll still guess a Harley from kilometers away, won't you?