Sep 21

RKD NewsNet September 2021 - Volume II

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde

International News

Guns N’ Roses Lawyered Up for the Tour

After a gap of 2 years, the popular rock band Guns N’ Roses went on a tour, this year. Of its many concerts in August, one was on the 3rd in Boston’s Fenway Park. To everyone’s surprise, the band didn’t tour as usual with the roadies, stage props and instruments, but carried along their team of lawyers.

Quite naturally, every brand has faced the nuisance of bootleggers. As soon as the tour begins and concerts are held, the area around the concerts is swarmed with street vendors selling unlicensed merchandise of the band which includes t-shirts and bandanas. The sale of illegal merchandise has cost the band tens of thousands sometimes hundreds of thousands of dollars per night. Vendors selling knockoffs outside of concert venues cut into the demands for the original merchandise substantially. Thus, to curb this and deter such bootleggers from continuing this practice, the band commenced the tour with a team of lawyers who are filing lawsuits in tour cities.

Global Merchandising Services Ltd. is the sole licensee to sell GNR merchandise at U.S. concerts. The band became a hit in late 1980s after songs like “Welcome to the Jungle,” “Paradise City” and “Sweet Child O’ Mine.” Ever since, the merchandise is a huge source of revenue for the band. The trademark of GNR is registered by the lead singer Axl Rose, guitarist Saul “Slash” Hudson and bassist Michael “Duff” McKagan.

The bands and artists in the industry have always had to battle over their IP rights. However, lawsuits against street vendors as opposed to huge businesses and distributors of knockoffs are very non-conventional in nature. Regardless of most cases dying because of no-show vendors, it is a huge deterrent of illegal sales. Though damages cannot be claimed from such street vendors, the goal behind this is to deter the bootleggers.

The band started its tour named “We’re F’N’Back!” which would last for two months ranging into 23 cities. Reports suggest, that the lawyers of the band have successfully procured court orders in Boston and Newark allowing the police and federal marshals to seize counterfeit goods in specific distance and timeline around the concerts. A team of nine security persons, reportedly managed to seize 417 counterfeit shirts outside the concert at MetLife Stadium in East Rutherford, New Jersey.

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Ministry reduces patent application fees for all recognised educational institutions

A patent application can be filed either by a natural person, start-up or a small entity and the fees differs as per the type of applicant for e-filing and physical filing. However, educational institutions which are recognised and government-aided are eligible for the reduced fee for patent application.

In the month of February 2021, the Ministry of Commerce and Industry, Government of India published the Draft Patent (Amendment Rules), 2021 to further amend the Patent Rules, 2003. The draft Rules inserted Rule 2 (ca) wherein it defined ‘Eligible Educational Institutions’ as an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, and is wholly or substantially financed by the Government1.

One may ask, what constitutes as ‘substantially financed by the government’? The Draft Rules for this purpose, mention that the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General‘s (Duties, Powers and Conditions of Service) Act, 1971. According to the said explanation, when a grant or a loan to a body or authority from the Consolidated Fund of India or of any other state or Union Territory having a legislative assembly in a financial year is not less than 75 % of the total expenditure of that body or authority then such body/authority shall be deemed to be substantially financed by such grants or loans as the case may be.2

On 17th August 2021, Piyush Goyal, Hon’ble Minister of Commerce and Industry announced a whopping 80% of fee reduction to all recognised Educational Institutions applying for patents. The total fee for filing, publication and renewal for Educational Institutions previously was nearly Rs. 4,24,500 and now the fees for the same has been reduced to approximately Rs. 85,000.

Further, he added that this fee reduction is applicable not only to government aided institutions but also to private institutions, regardless of whether these institutions are located in India or elsewhere in the world. The Hon’ble Minister was of the opinion that it was prejudiced to limit the applications filed by government institutions only. Therefore, this announcement of fee reduction now welcomes innovations from various recognised schools, colleges, universities for patent registrations. This fee reduction also aids as an encouragement for educational institutions to contribute in Indian patent applications globally. It is also believed that among all the top patent offices across the world, this is the lowest ever fees charged for a patent application. The Hon’ble Minister also declared that the time taken to examine a patent application which used to be almost six years has been decreased to 1-2 years and that an effort to compress the time even further is also being made.

It was further mentioned that the Department for Promotion of Industry and Internal Trade (DPIIT) would be soon starting to process the approval of this announcement. It was also recommended to DPIIT to devise a plan to provide scholarships to students from economically weaker section of the society studying law related to Intellectual Property.

1Patent Rules (Draft Amendment), 2021

2Section 14(1), Comptroller and Auditor General‘s (Duties, Powers and Conditions of Service) Act, 1971

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You cannot always take advantage of the Covid situation

Cipla Limited (Cipla) approached3 the Madras High Court seeking an injunction against Sun Pharmaceutical Industries Ltd. (Sun Pharma) restraining it from:

• Allegedly Imitating and substantially reproducing the artistic packaging, trade dress, and labels of Cipla’s ‘BUDECORT RESPULES’ and ‘DUOLIN RESPULES’ which allegedly amounted to infringement of its copyright.

• Using the mark ‘RESPULE’, as Sun Pharma named its products “Budefex Respules” and “Duoz Respules” which allegedly amounted to infringement of Cipla’s registered trademark.

• Using packaging allegedly identical to Cipla’s packaging for ‘Budesonide Respules’ and ‘DUOLIN Levosalbutamol Respules’ thereby allegedly passing off its goods as those of Cipla.

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

Cipla succeeded in proving a prima facie case and the Court had granted an ad-interim order in its favour.

In response to this, Sun Pharma filed an application to vacate the interim order.

Cipla claimed that it has an established market in medical products viz Budecort Respules and Duolin Respules. It also submitted that the word “Respules” is a coined word that has been registered and has been in use since 2013. It stated that Sun Pharma has adopted a deceptively similar package with the trademark “Budefex Respules” and “Duoz Respules”, hence the injunction has been correctly granted by this Court.

Cipla also stated that there is no urgency in vacating the interim order as Sun Pharma’s acts have caused confusion in the market. Hence, if Sun Pharma is allowed to sell their products with the allegedly offensive trademark package/label, Cipla’s rights would be diluted.

On the other hand, Sun Pharma claimed that it has manufactured products valued at approximately Rs. 1.5 crores and Rs. 3.5 crores, hence it requested the Court that it may be allowed to be sold in the market.

Sun Pharma also stated that it would adopt a new package/label totally different from the impugned one. It added that medicines come with an expiry date and therefore it may be allowed to sell the existing stock as these medicines are required for the treatment of patients with Covid symptoms.

The Court dismissed Sun Pharma’s application for a vacation of injunction stating that it is misconceived. The Court noted, “The court cannot allow a party to violate another person’s intellectual property rights viz copyright and trademark and remain a mute spectator where there also is an attempt to pass-off the goods notwithstanding fact that the country is facing unprecedented medical emergency and possibly the patients suffering from covid systems may require the drugs manufactured both by the plaintiff and the defendant for treating patients them with respiratory ailments during these tough times.”

The Court added that the label and the trade dress adopted by Sun Pharma prima facie appear to be an imitation of Cipla’s label, intending to ride upon the goodwill and reputation of Cipla.

With respect to the argument relating to expiry dates of the medicines, the Court observed that these medicines have a life of one year. Therefore, Sun Pharma can recall the products and repack the same without further loss to itself and release the same with the revised label/package and mitigate its possible loss. The Court added that “No concession can be extended merely because the defendant may have a chance to make a quick profit due to the Covid-19 pandemic”.

The Court further stated that along with the trade dress, layout colour combination, design, and artistic work on the label, Sun Pharma also needs to change the words which are deceptively similar to Cipla’s Respule.

3Sun Pharmaceutical Industries Ltd. vs. Cipla Limited- Appl.Nos.1980,1982 and 1983 of 2021in O.A.Nos.281 281 to 283 of 2021

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I Care, V Care, We all care!

Praba’s V Care Health Clinic Pvt. Ltd (“V-Care”)4 stated that it is the registered proprietor and user of the trademark “V CARE” since the year 1999 in respect of cosmetics and health care services, health-related consulting services, hospitals, clinics, and medical centre. V-Care approached the Madras High Court seeking an injunction against I-Care Aesthetic Clinic (“I-Care”), restraining I-Care from infringing V-Care’s registered trademarks and using other deceptively similar marks. It stated that its marks containing “V -CARE” are designed in an artistic manner and form original works within the meaning of the Copyright Act.

V –Care was aggrieved that one of its former employees has commenced business in the field of cosmetics under the mark “I CARE”,wherein the letter “I” is strikingly similar to its mark’

I-Care stated that it is a partnership firm trading as “I CARE AESTHETIC CLINIC”. It provides services relating to hair replacement, skincare, and slim care center. In order to popularize its services, it created an innovative trading style for itself, coined and adopted the highly stylized and unique trademark, and started commercially using the same in September 2018.

I-Care further pointed few unique features of its mark , i.e., The strand of hair and root around the symbol ‘I’ are indicative of hair, the face of a female over I represents ‘beauty’, suggesting skin-related services and the character ‘I’ represents slimming.

I-Care claimed that its mark has no similarity with the mark other than the use of the word ‘CARE’ that is common. Further, the word “CARE” is used in common parlance in all fields more so, in the field of healthcare and cosmetics. I-Care also filed an application seeking summary dismissal of the suit; on the basis that CARE is a generic word over which V-Care cannot claim exclusiveness. It claimed that there are various other marks containing the word ‘CARE’ registered in Class 44 (2952 trademarks)

I-Care stated that V-Care, while registration has disclaimed the exclusive use of the word “CARE” before the Trade Marks Registry. Hence V-Care cannot claim any exclusiveness of the word CARE, and the use of the word CARE has to be seen in combination with other features of a mark. When compared as a whole, the two marks make it clear that there is no phonetic, visual, or structural similarity.

The Court was of the view that there are no similarities between the essential features of the two marks, except the common word “CARE”. No person of average intelligence and poor recollection will be misled by seeing the two marks either juxtaposed or separately.

The Court noted that in such circumstances, there is no real prospect for V-Care to succeed. The Court was also of the view that the case was filed due to trade rivalry. Hence the Court accepted I-Care’s application to pass summary judgment and dismissed the suit.

4M/S Praba'S V Care Health Clinic Pvt. Ltd. vs M/S I-Care Aesthetic Clinic- C.S.No.217 of 2019

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Double Impact

Trademark, as per section 2 (zb) of the Trade Marks Act, 1999, means that, a “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours”.

A trademark application may be submitted to the Trade Marks Registry. Once examined, the Examiner prepares an examination report which is issued to the Applicant. If there are any objections, the applicant has to submit their response within a month.

In case there are no objections, the application goes ahead to be accepted and advertised in the Trade Marks Journal, after which any person may file an opposition against the advertised mark within four months. In case there is no opposition within the prescribed four months of publication, the trademark proceed to registration and a certificate of registration is issued to the Applicant.

The process of registration of a trademark is carried out in accordance with the Trade Marks Act, 1999 and The Trade Marks Rules, 2017.

On August 17, 2021, the Union Minister of Commerce & Industry, Consumer Affairs & Food & Public Distribution and Textiles, Mr. Piyush Goyal, claimed that India had registered 14.2 lakh trademarks in the last four years (namely 2016-2020) as compared to 11 lakh trademark registrations during the previous 75 years (namely 1940-2015).

However, a few days ago FactChecker reported that the number of trademarks registered between fiscal year 2015-’16 and fiscal year 2019-’20 were in fact around 11 lakhs and not 14.2 lakhs. According to the 2015-2016 annual report of the Department for Promotion of Industry and Internal Trade (henceforth DPIIT), the total number of registered trademarks till December 2015 stood at 11,97,743. This shows that trademarks registered between years 2016-2020 are almost similar in numbers to those registered in the previous 75 years. Therefore, although Goyal’s claim may be incorrect, it does highlight this feat.

According the Mr. Debanjan Chakravarty, Senior Examiner of Trademarks and GI at the Trade Marks Office in Kolkata this feat cannot be achieved owing to several contributing factors such as digitisation, increase in manpower of the department, inclusion of contractual employees etc. which focused upon simplifying the process.

1. Digitisation: According to the report of Summary of Achievements by the office of Controller General of Patents, Designs & Trade Marks (2014-’15 to 2019-’20), the period of examination of new trademark applications is brought down from 13 months to just less than 30 days. Similarly, now the registration of a trademark takes place in about six months, if there are no objections or oppositions filed, as opposed to 3-5 years required earlier.

There is an increase in online applications from approximately 80% of the total applications in 2016-17, to almost 93% in 2019-20 as pending examination requests awaiting disposal at various stages of the registration process have been reduced from 14 months to less than a month, according to the DPIIT’s Annual Report of 2016-2017.

2. Manpower: Between the years 2015-2019, for the examination of trademarks, over 334 examiners of trademarks were hired every year on a contractual basis to speed up the process, according to annual reports of the DPIIT.

3. Implementation of new provisions: Implementing newer provisions in accordance with the Trade Marks (Amendment) Rules, 2017 has facilitated the hike in the trademark registration process greatly. For instance, according to the DPIIT’s Annual Report of 2017-18, the number of forms during the registration process was reduced from around 74 to just eight.

Other implemented provisions include:

• Prescription of a single application form for all types of trademark applications.

• Providing concessions to start-ups, individuals and small enterprises.

• Inclusion of email as a mode of service.

• Offering 10% concession in prescribed fees for online filing of applications.

• Allowing video conferencing for hearings.

4. Startups: In 2016, a scheme for facilitating ‘Start-ups Intellectual Property Protection’ was launched on a pilot basis for a year to help the start-ups in filing and subsequent processing of their applications in Patents, Designs and Trademarks. However, this scheme was in force till March 31, 2020 and currently has been extended till March 2023. Another important aspect to be taken into consideration is that, if the number of trademarks registered during the fiscal year 2020-21 is to be added, it shows that India has managed to register 14.17 lakh trademarks in the last five years.

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*The above logo is being used for representational purposes only. The rights in the logo belong to the proprietor of the mark.

When it comes to chocolates, who doesn’t love the popular Hershey’s Kisses. The chocolate was launched in 1907 and undoubtedly the popularity of the chocolate across the globe has only risen with each passing day.

The chocolate comes in the shape of small rounded triangle like shape. This image of the chocolate is also visible in the logo: . Can’s see it? Well tilt your head to the left and notice the shape created between the letters of the alphabet – K and L. Yes! That’s exactly how the chocolate looks, doesn’t it?

Like we always say, once you see it you cannot unsee it.

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Hidden Gems of India

-Adv. Chinmay Pawar

Ramohalli Banyan Tree: Ramohalli, Karnataka

Location of Ramohalli (Source: Google maps)

Popularly, known as ‘Dodda Aalada Mara’ meaning big banyan tree, is located in Ramohalli village on the way to Mysuru just a few kilometres away from Bengaluru. The massive banyan tree, sprawling over a few acres, is a botanical wonder. The tree is spread across 3 acres. It is more than 400 years old and has a huge circumference of more than 250 meters.

(© Chinmay Pawar)

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