From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
General Motors Company (henceforth referred to as ‘GM’), a US-based automotive multinational corporation and home to automobile divisions such as Chevrolet, Buick, GMC & Cadillac has filed a lawsuit against Ford Motor Company (henceforth referred to as ‘Ford’) on August 14, 2021 alleging a trademark violation of a hands-free driving technology by the latter named ‘Blue Cruise’.
It can be dated back to 2012, when GM announced to name its hands-free driver assistance technology as ‘Super Cruise’. The US patent authority does not usually register words or phrases which are in common use. Therefore, in 2016, when GM had applied for registration of the mark ‘Super Cruise’, upon which the agency initially had said that the word “cruise” could not be registered on its own as it was merely a description of the function of a car, which is to drive at a pre-determined speed. However, the mark Super Cruise was registered and GM has been marketing the technology since 2017.
Ford on the other hand, started offering its Blue Cruise hands-free driving technology on its F-150 pickup truck in 2020. Furthermore, Ford is also offering the Blue Cruise as a software update in its electric Mustang Mach-E.
According to the lawsuit filed by GM in the U.S. District Court for the Northern District of California, Ford renamed its ‘Co-Pilot360’ automated driving system to Blue Cruise in April, 2021 & therefore infringed upon GM's mark Super Cruise.
It has been further alleged by GM that, if Ford wanted to adopt a new, unique mark, it could have done so easily without using the word 'Cruise', however its decision to adopt the same term shall now inevitably cause confusion amongst the customers.
GM has asked the court to refrain Ford from using the brand name as well as damages through an order. In response, Ford has dismissed the lawsuit filed by GM calling it "meritless and frivolous." Through an official statement, Ford has stated that every automaker offers cruise control and drivers for decades have understood it, moreover 'cruise' is just another common term to denote the capability."
On August 15, 2021, Ford asked the US Patent and Trademark Office to remove the trademarks ‘Super Cruise’ and ‘Cruise’ all together, so that the entire auto industry can use the word cruise to denote steering technology freely. According to Ford, the two trademarks obtained by GM should never have been registered, as several other brands including BMW and Hyundai, also use the word cruise in their brand names.
The outcome of this decision is sure to affect the branding of automobile companies.
- Timothy J. Lockhart
(Head of the Intellectual Property Group at Willcox Savage)
The U.S. Patent and Trademark Office ("USPTO") is experiencing what it characterizes as a "huge surge" in trademark applications, and this increase has resulted in "a significant increase in unexamined application inventory." Thus, new applicants seeking to register their marks with the USPTO are having to wait longer for their applications to be assigned to Examining Attorneys and processed. Before this surge new applications were reviewed by Examining Attorneys between two and three months after filing, but now, according to the USPTO, "it's taking between four and five months to examine initial applications." You can read more about current wait times on the USPTO website. Commissioner for Trademarks David S. Gooder's blog post "What a huge surge in trademark filings means for applicants" discusses the situation, noting that "[a]s of June 17, the increase is roughly 63% over last year, which translates to about 211,000 more applications. And in December 2020 alone, the USPTO received 92,608 trademark applications, an increase of 172% over December 2019." Commissioner Gooder says that the USPTO is "continuing to explore the reasons behind the surge, but we do know that the increase comes from both foreign and domestic filings and is caused in part by an increase in e-commerce during the pandemic." You can see the USPTO' s current performance metrics on its trademarks dashboard.
The “patent waiver” is a proposal to waive certain provisions of the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement for three years. The TRIPS Agreement requires certain member countries, including the United States, to have certain minimum intellectual property protections. While this proposal is often referred to as a “patent waiver,” the proposal would also waive sections associated with copyright, industrial designs, and undisclosed information.
TRIPS already has provisions whereby, in the event of a national emergency, a government may use patented subject matter, including compulsory licensing, without the consent of the patent owner. These provisions require the patent owner to be given a reasonable compensation. Due to COVID emergency, both Israel and India have invoked the provisions in order to license pharmaceutical patents owned by US producers. The proposed patent waiver, however, goes further than the existing TRIPS provisions, as it would effectively disregard, without compensation, the relevant patents.
All the governments opposing the waiver argue that the current WTO rules already allow countries to apply for ‘compulsory licensing’ to override IP during emergencies. However, a group of researchers in the United Kingdom pointed out that compulsory licences are extremely complex and time-consuming to apply for.
One of the biggest concerns about IP waivers is that they provide a short-cut to competitors looking to acquire expensive technology. Companies also say that IP relief will not accelerate vaccine manufacturing, because there is a shortage of material supply and it can take several years to build up capacity from scratch. Because of these shortcomings, countries might have the right to manufacture and distribute the vaccines without fear of infringement but would not be able to effectuate this right. For these reasons, many opponents suggest that instead of implementing a patent waiver, developed countries should increase exports of the COVID vaccine to those countries in need.
In a country with rapidly developing businesses, olfactory marketing has become a need of the industry. The versatile nature of olfactory marketing makes it employable in restaurants, cosmetics and toiletries, etc. alike. Olfactory marketing is utilized by restaurants for their food and it gives an added benefit by supplementing their branding. It is similar to a logo helping a consumer associate with the experience affiliated with a service or product. An interesting example of this quirky concept is Nestled based in Halsted, Chicago, a Michelin Star restaurant that explicitly uses ‘aroma’ as its top ingredient.
Keeping all this in consideration, extension of protection to such unconventional trademarks is important. Such marks have become one of the source identifiers and marketing devices and consequently important intellectual property.
Differing from the traditional sense of trademarks having visual appeal, non-conventional trademarks are not words and/or graphical logos since they cater to other senses and not just sight. One such prominent non-conventional trademark is a smell or scent mark. The mandatory conditions for registration of non-conventional trademarks vary across all jurisdictions, internationally. Trade Marks Act, 1999 defines trademarks in compliance with the TRIPS Agreement as something that can be represented graphically. Consequently, this is the pre-eminent barrier in getting unconventional trademarks like smell marks registered since they can’t be represented graphically. Regardless of this, the Indian Draft Manual of Trade Marks 2015 (‘Draft Manual’) acknowledges unconventional trademarks, including scent marks.
• Hurdles in the Registration of Smell-marks
Section 2 (1) (zb) declares trademarks to be graphically represented which bars the inclusion of most unconventional marks. Riding along the drift of recognizing non-traditional trademarks, the Draft Manual has inculcated the test laid down in the landmark judgment of Ralf Sieckmann v. Deutsches Patent and Markenant by the European Court of Justice’s (ECJ) in 2002. The test requires the scent mark to be clear, precise, self-contained, easily accessible, intelligible, durable and objective to be registrable. Though the registrability of the smell marks is clear with this test, the judgment is silent about the mechanism by which the marks would satisfy these criteria. Moreover, it disregarded the three mechanisms of recording scent marks, including submission of a chemical formula and description.
Furthermore, another hurdle in registration is in the functionality of the doctrine of trademarks which is based on anti-competitive concerns. It states that a product which has functional aspect cannot be registered. Thus, considering smell marks, a perfume cannot be registered as a trademark since its fragrance has a functional value. There are two classifications of functionality expressed in the Halsbury’s Laws of India on Intellectual Property namely, de jure, and de facto functionality. De jure functionality is described as something functional in law if the degree of utility is so great that the configuration makes a superior design which others need to copy to be able to compete effectively. Alternatively, de facto functionality is described as functionality in the lay sense where even if a feature is useful to the performance of a function, it still may be trademarked by the unique proprietor.
Special smell-marks: Attars and Agarbattis
‘Attar’ (traditional perfume) and ‘Agarbattis’ (incense sticks) form a part of Traditional Cultural Expressions category as defined by WIPO. An example of this is the Attars of Kannauj which are now known as ‘Kannauj Perfume’ and they were registered as Geographical Indications in 2009 owing to the industry’s reputation and link to Kannauj. This privilege may not be extended to all small traditional businesses of Attars and Agarbattis. Trademark protection for such businesses would act as a shield from being appropriated as fancier products by larger brands. This, then becomes the basis of claiming relaxations from the two primary barriers to registrability of such marks.
The idea of trademarks as property of communities can be an effective way to protect TCEs, without stepping on the view that trademarks are only used to enhance market efficiency. Apart from this, in this specific example of Attars and Agarbattis, trademarks protecting the unconventional IP in form of scents also compels the law to recognize such TCEs.
In India, certain Courts are more adaptive to IP litigation than others. Resultantly there are a lot of instances wherein parties choose them over others for filing their suits. This is called Forum Shopping. However, a court can only decide over a matter if it falls under its jurisdiction, therefore parties tend to indulge in all kinds of tactics to create jurisdiction of the particular Court.
As against that, there are also instances in which parties have genuinely chosen a particular Court as a part of the cause of action arose in its jurisdiction, but the other party alleges forum shopping.
Courts are often caught in this dilemma of when to exercise jurisdiction and when to not. The Delhi High Court, in a recent judgment has explained the basis on which jurisdiction can be exercised.
M/s. Copenhagen Hospitality And Retails (Copenhagen)1 approached the Delhi High Court seeking a permanent injunction, restraining A. R. Impex and other defendants from infringing its registered trademarks, passing off; infringement of copyright, trade dress, breach of confidentiality; misappropriation of trade secrets, etc.
Copenhagen stated that its partner Mr. Sanam Kapoor is in the pizzeria business since 2011. In July 2013, he conceived and adopted the name LA PINO’Z PIZZA for his pizzeria. He also created unique pizza combinations and named them uniquely, some of which have also been successfully registered with the Trade Marks Registry.
Copenhagen has around 175 franchised outlets pan-India and is active on various social media platforms. It has also registered the domain name: www.lapinozpizza.in
Copenhagen stated that it recently was made aware by an existing franchisee in Ahmedabad, that the hoarding/display boards of most of the LA PINO’Z PIZZA franchisee outlets in the city are being removed and replaced with LA MILANO PIZZERIA with a look-alike logo.
Copenhagen contended that an entity viz., A.R Impex was appointed as a ‘Master Franchisee’ for the purpose of operation and management of LA PINO’Z PIZZA franchisee and sub-franchisee in the state of Gujarat. A.R Impex has now entered into the pizza making business in complete violation of the terms of the Master Franchise Agreement. It has opened up its own restaurant with a deceptively similar name and label, it is contacting Copenhagen's existing franchise partners and is persuading them to convert their existing LA PINO'Z PIZZA franchise to LA MILANO PIZZERIA. The name of the pizza’s sold by La Milano Pizzeria are also deceptively similar to Copenhagen’s pizzas.
In light of the above, the Court granted an exparte- interim injunction in favour of Copenhagen.
Thereafter A. R. Impex appeared before the court and sought dismissal of the plaint on the ground of lack of territorial jurisdiction. A.R. Impex claimed that it is based in Ahmedabad, Defendant No. 2 (not named in the plaint) is located in Chandigarh, and Defendant Nos. 3 and 4 (not named) in Punjab. Copenhagen is based in Chandigarh.
Dispute relating to Cause of Action and Jurisdiction
Copenhagen stated that the cause of action arose when it learned that A.R Impex illegally adopted a similar name and logo for its self-owned and franchised outlets in Ahmedabad with the assistance and connivance of the Defendant No. 2.
Thereafter, the cause of action again arose when A. R. Impex and Defendant No. 2 approached Copenhagen's existing franchise partners in Delhi, Maharashtra, and Bangalore seeking collaboration with them to operate the Master Franchise of LA MILANO PIZZERIA outlets in their respective territories also to persuade their sub-franchise owners to convert their existing LA PINO'Z PIZZA franchise to LA MILANO PIZZERIA. Hence, Copenhagen claimed that since the cause of action for filing the suit has partly arisen in Delhi, as A.R Impex and Defendant No 2 have approached the Plaintiffs' Franchise in Delhi for converting them to A.R Impex's Master Franchise, the jurisdiction lies in Delhi.
Copenhagen apprehends that A. R. Impex and Defendant No. 2 will expand their infringing activities in Delhi by operating self-owned/franchised outlets of LA MILANO PIZZERIA /LA MILANO PIZZA, which will cause extreme harm to Copenhagen’s business, goodwill, and reputation as it along with other Plaintiffs ( not named in the judgment) operates almost 12 outlets in Delhi itself.
It also claimed that A.R Impex and Defendant No 2 are promoting and advertising their restaurant services on social media platforms Facebook, Instagram, Google, Zomato etc. which are accessible all over the country including in Delhi. The Plaintiffs are carrying on their business under the brand name LA PINO'Z PIZZA in Delhi through their Master Franchise and various sub-franchise outlets.
Hence, Copenhagen claimed that the Delhi High Court has jurisdiction to try, entertain and adjudicate the suit as the cause of action has arisen in Delhi.
A. R. Impex on the other hand sought return of the plaint on the following grounds:
It has its registered office in Ahmedabad and is operating its business from the said jurisdiction. It claimed that Copenhagen has also admitted that they have been operating in Ahmedabad and other cities of Gujarat in their Plaint.
It further claimed that various claims of Copenhagen regarding the alleged violation of the impugned rights as well as alleged confusion caused in the market relate to Ahmedabad and other cities of Gujarat and therefore, if at all there was any cause of action in favour of Copenhagen, the same would have accrued in Ahmedabad, Gujarat and certainly not in Delhi.
A. R. Impex alleged that Copenhagen has deliberately chosen to file the present proceedings before this Hon'ble Court to cause hardship and inconvenience to it, even though the proper jurisdiction to file the present suit would have been Ahmedabad.
A. R. Impex also alleged that Copenhagen has failed to produce any document/e-mail to showing any alleged communication between it and Copenhagen’s alleged Master Franchisee in Delhi. Therefore, mere allegations, without any documentary evidence to substantiate the same, can never be a basis to seek jurisdiction of the Delhi High Court. A. R. Impex claimed that Copenhagen is indulged in forum shopping.
It further claimed that as far as the claim of Copenhagen regarding the accessibility of social media platforms all over the country including Delhi, it is settled that jurisdiction can only be invoked based on online presence if the allegedly infringing article can be purchased online within the said jurisdiction i.e. a contract can be concluded within the jurisdiction of the court.
Hence the jurisdiction of a court in the case of online presence, particularly in respect of restaurant services, cannot be conferred on a particular court merely based on listing on social media if the products/ services of the Defendant are not purchased/ available for sale/ delivered in the forum state because there is no possibility of a concluded contract.
Copenhagen controverted A. R. Impex’s contentions stating that since A.R. Impex and other defendants have been contacting parties at Delhi for establishing their franchisees, including Plaintiffs' Master Franchisee in Delhi for converting them to A.R. Impex’s Master Franchisee. Therefore, the cause of action has arisen in Delhi.
The Court stated that “ once the appellants / plaintiffs have pleaded apprehension of sale / marketing in Delhi, the Courts in Delhi would have jurisdiction to entertain the suit and such jurisdiction cannot be ousted by the defendant by making a statement not to do any such act in Delhi, though the defendant would be entitled to prove that there is no basis for such apprehension. “
The Court added that “If such a course of action were to be permitted, it would enable a defendant to avoid action in a particular Court by making such a statement and indulge in forum shopping.”
The Court held that at the initial stage for forming a prima facie view on territorial jurisdiction has to be on the basis of the averments made in the plaint, and the documents relied upon by the Plaintiff. If the same bring out the ingredients for establishing the jurisdiction of the court, that would be sufficient for the court to assume jurisdiction.
The Court clarified that the contention of the Defendants - that merely alleged apprehension in the pleadings, unsubstantiated by documentary evidence, can never be a basis to seek jurisdiction - is not correct.
The objection to territorial jurisdiction has to be construed by assuming that the averments in the plaint are correct, and, the objection must be decided on that basis alone.
The Court further held that considering the nature of business, the prior relationship of the parties, and the business format of establishing franchisees, it cannot be assumed that Copenhagen's allegations are mis-founded or could be construed as false, in absence of any documentary proof.
Hence the Court held that it certainly has the jurisdiction over the matter and dismissed A. R. Impex’s application stating that there is no merit in its contentions. The matter is now listed on 21st September 2021.
1 M/S. COPENHAGEN HOSPITALITY AND RETAILS & ORS. VS M/S. A.R. IMPEX & ORS. - CS(COMM) 262/2021 dated 29.07.2021
Priyanka: Sir, a foreign client has asked a few questions about getting their design registered in India. There are some questions to which I need answers, so that I can reply to the client with the correct information.
Dr. Mohan Dewan: Okay Priyanka, go ahead with your questions.
Priyanka: Sir, the first question is with respect to representation sheets as to what all details are to be included in a representation sheet?
Dr. Mohan Dewan: A representation sheet includes all the views of the article. The Indian Designs Office accepts even digital views. It is good practice to include the following 7 views in your representation sheets to avoid any objections. 1. Perspective/ Isometric 2. Front 3. Rear 4. Right. 5. Left. 6. Top 7. Bottom. Descriptive matter or matter denoting the components by reference letters/numerals should not be included in the representation sheet. Even sectional views i.e., open & closed shall not be incorporated in the representation sheet. A representation sheet also includes the statement of novelty and statement of disclaimer.
Priyanka: Sir, what is a statement of disclaimer?
Dr. Mohan Dewan: If your design consists of any mechanical or other action of any mechanism, trademarks, numerals, words, letters, use of colours, colour combination but they are not the essence of your design, then you must not include them in the representation sheet and if you do, you must give a disclaimer in the representation sheet disclaiming any right to their exclusive use.
Priyanka: Sir, the next question is whether it is necessary to get the documents legalized in the applicant’s country before registration, in cases where the applicant in not an Indian entity?
Dr. Mohan Dewan: No. There is no legalization or notarization required from the applicant’s end. We only need an original signed POA so that we can get it stamped according to our laws and submit it to the Indian Designs Office.
Priyanka: Sir, what happens if the application is objected to or refused?
Dr. Mohan Dewan: Priyanka, objection and refusal mean two different things here. Firstly, when an application is filed, the Indian Designs Office examines the application and sends a First Examination Report. This report includes the initial objections which are to be removed by filing a reply to the report. Secondly, when there is a final order of refusal for the application, the applicant can file an appeal in High Court at Kolkata against such order of the Controller.
Priyanka: Sir, is there any time limit within which this appeal has to be filed?
Dr. Mohan Dewan: Yes, Priyanka there is a time limit of 3 months. One has to file an appeal at the Kolkata High Court within 3 months from the date of the Controller’s order.
Priyanka: Sir, the client also wants to know whether option of multi-class application is available in India?
Dr. Mohan Dewan: As of now, India does not accept a multi-class application. Only one embodiment of the article can be applied in one application. Separate applications have to made for each embodiment of the article.
Priyanka: Sir, the client’s design is registered in their country in the month of April 2021. In such a case, will the scanned copies of such priority documents suffice to file a priority application here in India?
Dr. Mohan Dewan: Priority is available for a period of six months after filing the first priority application. Therefore, to file such a priority application, duly certified copy of the priority document is required. The document is to be certified by an official of the organisation in which it was originally filed. While filing the application in India, we can upload the scanned copy of the certified priority document however we will need to submit the original certified priority document at the Indian Designs Office.
Priyanka: Sir, can the six months’ time period for filing the application be extended?
Dr. Mohan Dewan: No, Priyanka. This period is not extendable. Initially, the priority document needs to be filed within a period of three months from the date of filing of the application in India. However, this can be extended by another three months only. Extension may be sought by filing Form-18 along with the prescribed fee.
Priyanka: Sir, once when a design is registered, is the applicant required to publish it anywhere?
Dr. Mohan Dewan: No, the client need not publish it anywhere. Instead, the Indian Designs Office will publish it in its weekly Journal.
- Adv. Chinmay Pawar
Chennakeshava Temple: Somanathpur, Karnataka
Location of Chennakeshava Temple (Source: Google maps)
This 13th century temple is located in the south Indian state of Karnataka in Somanathpur, roughly 135 kms from Bengaluru (Bangalore).
The temple was constructed by Somanatha, a commander of the Hoysala Empire’s Army during the reign of Hoysala King Narasimha III. The construction of the temple was completed and consecrated in 1268 AD.
The temple is adorned with intricate sculptures depicting incidents from Ramayana, Mahabharata, Puranas and folklore. The temple artwork also depicts scenes of daily life from the 13th century India. The temple has numerous small inscriptions which are either logos of the mason guilds or the name of the artist who carved the block, pillar or artwork.
Chennakeshava Temple (© Chinmay Pawar)
Intricate carvings on the temple walls (© Chinmay Pawar)
Contrary to most temples in India, no religious rites are performed in this temple and the temple complex is being maintained by Archaeological Survey of India, a Government Of India organisation.
The entry into the temple is restricted to certain number of visitors per day and pre-booking is required to enter the temple.