Nov 21

RKD NewsNet November 2021

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

International News

A squid game of trademarks?

The popularity of the South Korean series “Squid Game” has taken over the world since the day i.e., 17th September 2021 it was aired on Netflix. Squid Game is a story of people who struggle to make a living, participating in a survival game betting their lives.

In most countries, including India, when a brand becomes popular, many small entities immediately apply for registration of such trademarks under its name so as to manufacture and sell goods like clothing, accessories, etc. as merchandise of such brand and gain illicit profits from its sale. After the release of the series, the USPTO’s trademark database revealed that various companies filed for the registration of the trademark “Squid Game” for clothing, musical instruments, toys, jewellery, and athletic sporting goods among others.

With the increase in the craze for the series, Netflix has taken up to protect the brand. Recently, Netflix has filed trademark applications in over 20 countries including the USA, Canada, Republic of Korea, Malaysia, Peru, and the European Union.

Netflix filed its applications by following the Madrid system for trademark filing. The Madrid system, which is governed by the World Intellectual Property Organisation, is a convenient and cost-effective solution that allows a person to register trademarks in as many of the over 125 member nations as one chooses using one application, rather than filing each application separately.

Recently, Netflix has filed two trademark applications at the Bureau of Trademarks of the Intellectual Property Office of the Philippines for Squid Game and its stylised version. Both the applications are filed under wide range of classes including 9, 16, 18, 21, 25, 28, and 41. Below is the image of the trademark filed on 15th October, 2021 by Netflix Studios LLC in the Philippines:


If the applications filed by Netflix are accepted and the trademarks are registered, Netflix will have exclusive rights to the trademark, including for the type of merchandise. There were no applications for registration of the mark, found in the records of the Indian Trade Marks Registry.

5WIPO Media Center https://www.wipo.int/pressroom/en/stories/squid_game_2021.html

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Russia bans 61 Samsung smartphone models over Patent Infringement

Samsung has been reportedly banned from selling 61 of its smartphone models including its latest model Galaxy Fold 3 Flip 3 in Russia.

The issue dates back to the year 2013, a man named Victor Gulchenko filed a patent application for an online transaction system. This application went on to be granted (Patent No. RU 2686003) in the name of Sqwin Sa in 2019.

Samsung introduced its online transaction system Samsung Pay in 2015. Samsung pay came to the Russian market in 2016. Samsung Pay is pretty well established in Russia. As per the current reports, it is the third most used contactless payment system in Russia comprising of 17% of the total transactions. Google Pay is the market leader with 32% market followed by Apple pay at 30%.

Sqwin Sa is a Switzerland-based financial service and mobile payment company. As the proprietor of the patent, it filed an infringement suit against Samsung in Russia and claimed that Samsung Pay infringes on its patented electronic payment system.

Source- sqwin.com

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

In July 2021, the Moscow Arbitration Court has reportedly banned the defendants of Samsung Electronics Rus Company LLC and Samsung Electronics from using products that include Samsung Pay. The ban was also extended on import of such devices to Russia, sale, or even introduction to civil circulation.

Thereafter in its ruling dated October 19, the Moscow Arbitration Court listed the 61 Samsung models which Samsung has been prohibited from importing and selling in Russia.

The list includes Samsung’s top models such as Samsung Galaxy Z Flip, Samsung Galaxy Fold, Samsung Galaxy Z Fold 2, Samsung Galaxy S21, Samsung Galaxy S21+, Samsung Galaxy S21 Ultra 5G, Samsung Galaxy S20 FE, Samsung Galaxy S20, Samsung Galaxy S20+, Samsung Galaxy S20 Ultra and more.

Samsung can appeal against the order within 1 month from the date of the Order. If Samsung fails to defend its case, it would become a set precedent against Google pay and other contactless payments apps that use NFC-based technology for contactless patents in Russia.


1. https://www.gsmarena.com/samsung_not_allowed_to_sell_61_models_of_its_smartphones_in_russia_due_to_patent_infringement_-news

2. https://www.reuters.com/technology/russian-court-bars-sale-samsung-phones-over-lawsuit-report-2021-10-21/

3. https://thenewsglory.com/dispute-patent-up-to-80-of-samsung-phones-may-be-banned-in-russia/

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Court says “you better not BFolin around”

Galpha Laboratories Limited (Galpha) is a company engaged in manufacturing and selling pharmaceutical products. One of its products is B-COLEN, which is a Vitamin supplement. In June 2021, Galpha came across one Mr. Shivansh Shrivastava's (“Shivansh”) Trademark Application No. 4954807 in Class 05 in the Trade Marks Journal seeking the registration of a trademark BFOLIN for pharmaceuticals, vaccines, and the like.

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

Consequentially, Galpha sent a cease and desist notice to Shivansh. Shivansh replied to the same stating that it is a standard practice to name products based on composition and that since his product is a combination of Vitamin B-12 and Folic Acid, his adoption was genuine, justified, and warranted. He added that there was no possibility of confusion.

Not satisfied with this response, Galpha approached the Bombay High Court seeking an injunction against Shivansh. It also filed an opposition to Shivansh’s application for the mark B-FOLIN, which is pending.

It stated that the mark B-Colen was adopted by Galpha’s predecessors in 1975 and has been in continuous use since then. In the year 1977, Galpha’s predecessors in interest obtained registration for the mark B-Colen. The mark is presently owned by Galpha.

The Court held, “When it comes to pharmaceuticals, the law is more stringent, not less.” It observed that Galpha’s formulation sold under the mark B-COLEN is also used as a Vitamin-B supplement and merely replacing two letters in Galpha’s mark will not lend Shivansh’s mark sufficient distinctiveness. The Court further noted that Indian consumers purchasing vitamin supplements and products may not be familiar with minor differentiations in English, and therefore the distinction between B-COLEN/BFOLIN would be immaterial. Hence, the Court was satisfied that there is every likelihood that Shivansh’s product will be mistaken for that of Galpha.

The Court also opined that it is also entirely possible, that Shivansh is attempting to trade-in and cash in on Galpha's reputation and to pass off its product as emanating from Galpha. Hence, it granted an ad-interim injunction in favour of Galpha which will be operative till 3rd December 2021. The matter is now listed on 29th November 2021. Watch this space for more updates.


1 Galpha Laboratories Limited vs Shivansh Shrivastava on 25 October 2021- COMMERCIAL IP SUIT (L) NO. 23325 OF 2021

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Mere Change of Numerals is Not Substantive Enough

Himalaya Wellness Company (Himalaya) is involved in the manufacturing of Ayurvedic medicaments, preparations, and pharmaceutical-grade herbal and healthcare products since 1930. Its predecessors in business launched "Liv.52", a formulation for the treatment of hepatic ailments in the year 1955. The product is available in the market in different variants; such as, "Liv 52 Syrup", "Liv 52 DS Syrup", "Liv 52 Tablets" etc. All the products are sold under Himalaya's parent brand 'Himalaya'.

Himalaya recently approached2 the Delhi High Court alleging infringement of its registered trademark "Liv.52” by Abony Healthcare Limited (Abony) seeking exparte injunction against Abony restricting it from using the trade names "Liv.55 DS", "Liv.999", and "Liva 55 DS".

Himalaya claimed that its products have a distinctive orange, green and white colour scheme, which, over a period of time, has become indelibly associated with its product.

Source- Judgment

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

Himalaya also stated that the artwork involved in its label constitutes "original artistic work" within the meaning of Section 2(c) of the Copyright Act, 1957.

Himalaya argued that Abony was manufacturing and selling its product under the name "Liv.55 DS". It added that the label of Abony’s “Liv.55 DS" is almost identical to Himalaya’s label. A comparison of the two products has been reproduced here for the ready reference of the readers.

Source- Judgment

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

Himalaya highlighted the following elements of deceptive similarity between its product and that of Abony:

1. almost identical amber colour bottle;

2. an identical white background behind the main brand name;

3. identical green and orange colour combination;

4. Identical use of white lettering to depict in the same font the name of the product;

5. Usage of "Liv" which is a prominent feature of Himalaya’s marks;

6. Identical green background; and

7. Identical use of orange band on the top and bottom of the label.

Himalaya also annexed orders passed by the Delhi High Court granting ex-parte ad interim injunctions, where prima facie infringement of Himalaya’s registered "Liv.52" trademark was found to exist. Himalaya stated that it also sent a cease and desist notice to Abony, however, no corrective response from Abony was received.

The Court held that it prima facie appears that Abony is infringing Himalaya’s registered trademark and is also seeking to pass off its products as those associated with Himalaya. The Court inferred this from the use of the slogan "Liv.55 DS" and "Liv.999" on Abony’s website.

The Court also added that a cease and desist notice was issued to Abony by Himalaya and despite sufficient time having passed thereafter, Abony failed to discontinue its infringing activities, hence it is of the opinion that a clear case for ex-parte ad interim injunction exists.

Hence the Court granted an exparte interim injunction in favour of Himalaya restraining Abony from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in any manner with regard to any products and services, including but not limited to liver formulation under the marks Liv.999, Liv.55, Liv.55 DS and Liva 55 DS and/or any other mark which is deceptively similar to Himalaya’s registered mark Liv.52 or any other trademarks, or use the orange and green colour combination till the next date of hearing.


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The Freezing of Freez Mix

Bacardi and Company Limited (Bacardi), the owner of the famous alcoholic beverage “BREEZER”, approached the Delhi High Court seeking an ex parte injunction to restrain Bahety Overseas Private Limited (Bahety) from using deceptively similar mark “FREEZ mix”.

Bacardi is the registered proprietor of trademark “BREEZER” and has also obtained trademark registration for the shape of the bottle in which drinks under the trademark BREEZER are sold. It was claimed by Bacardi that Bahety has mala fide adopted a deceptively similar trademark “FREEZE mix” to ride upon Bacardi’s goodwill over its widely popular trademark “BREEZER”. It was further submitted that in addition to the trademark, Bahety has also copied the shape and overall presentation of the bottle of Bacardi’s BREEZER.

On the other hand, Bahety contented that there is no similarity between the contested trademarks and the shape and presentation of the bottle are common to trade.

The Court agreed with Bahety’s claim of ‘no visual similarity’ between the contested marks “BREEZER” and “FREEZE mix”. However, it observed that Bahety has consciously attempted at adopting a trade dress so similar to that of Bacardi, that it would lead an uninformed and unwary customer to justifiably presume an association between the two marks.

Accordingly, the Court passed an order stating that there is a prima facie case for grant of interlocutory injunction and restrained Bahety from using “FREEZER, and ".

A comparison of the two marks has been reproduced here for ready reference of the readers.


“Cannot injunct a film on a supposition of copyright infringement”: Bombay High Court

It is a well-known fact that ideas cannot be copyrighted, and that “pleadings must be precise and that the facts must be clearly shown”3 stated the Bombay High Court as it recently denied a plea to restrain the release of ‘Zombivli’, a Marathi feature film.

Tarun Wadhwa, an independent filmmaker, instituted a copyright infringement suit by claiming that Saregama India Ltd. (“Saregama”), one of India’s oldest music label had illicitly used his concept to make a film on ‘zombies’. Wadhwa further claimed that Saregama infringed his copyright in “one, or possibly three, published works”.

Wadhwa submitted that since April 2018 he had worked upon a concept about zombies and that in May 2018 he even registered the synopsis of the same with the SWA (Screen Writer’s Association) which was shared with Saregama through one of its own division namely, Yoodle Films. As per Wadhwa’s submission, he was thereafter directed by Saregama to submit a fully developed screenplay, which he did. However, Saregama later disclosed Wadhwa that it had no intention of continuing with the concept any further. Wadhwa further submitted that the cause of action arose in July 2020 when Saregama announced its new project ‘Zombivli’ which was based upon his own submissions to Saregama.

However, Saregama denied all the allegations, and stated that it has not misappropriated anyone’s idea and that the film is an original work.

The Court observed that copyright infringement and breach of confidentiality are closely tied together. An idea, in particular, cannot be the subject matter in a copyright infringement action; however it is extremely vital in cases of breach of confidentiality. In many circumstances the claim may be for both Copyright Infringement and Breach of Confidence. Considering the present case, the controversy was not over the “question of originality” in the work per se but with regards to the differences in the original idea and its subsequent expression. There are bound to be similarities between two concepts. A guaranteed test to determine the originality is to check whether a viewer or reader who has seen both works quickly recognizes that the latter work has a resemblance to the former.

The Court observed that Wadhwa had failed to represent a clear and unambiguous identification with regards to the original copyrighted material and dismissed the plea to restrain the release of the film ‘Zombivli’.


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No relief for Inadvertance

Mr. Rishi Raj is engaged in the business of production, distribution and exhibition of films under the brand ‘RAJ RISHI FILMS’. Saregama is one of India’s oldest music labels engaged in the business of acquiring copyright in many sound recordings and literary, musical and dramatic works4. In 2017, Mr. Rishi Raj instituted a suit against Saregama India Ltd. In a copyright infringement suit filed by Mr. Rishi Raj at the Delhi High Court, the Court dismissed two applications: one seeking an ex-parte ad interim injunction and the other seeking permission for filing additional documents. (hereinafter referred to as ‘Saregama’).

Apart from the film production, distribution and exhibition, Mr. Rishi Raj is also said to be engaged in the business of acquiring negative rights of various cinematograph films from different producers. Mr. Rishi Raj has claimed that recently he acquired negative rights of 144 films and by virtue of such acquisition, he is the exclusive owner of the aforesaid films as well as the copyright holder of all the rights including the performing copyrights in its stories, songs, music, etc. Mr. Rishi Raj alleged that Saregama is liable for piracy and copyright infringement, inasmuch as, it is involved in the unauthorised/unlicensed exploitation of sound recordings as well as audio-visuals of such songs.

Against this Saregama claimed that on a perusal of the agreements submitted by Mr. Rishi Raj, it is evident that the rights transferred by the producers/right holders of the cinematograph films to Mr. Rishi Raj are not exclusive. Saregama further stated that the rights in the sound recordings and cinematograph films as a whole can be assigned to not just a single but multiple entities as well. It further stated that the producers have only transferred the right to receive royalties from the gramophone companies to Mr. Rishi Raj and that no rights in the cinematograph films themselves have been assigned to him. The rights to the song and music of the cinematograph film were assigned by the producers to Saregama. Thus, making Saregama the actual owner of the copyright in the sound recordings by virtue of provisions of the Copyright Act, 1957.

The Court held that it would need to further examine the issue of Mr. Rishi Raj’s exclusive rights in the cinematographic films and dismissed the aforementioned application stating that no prima facie case was made out in favour of Mr. Rishi Raj.

In January 2020, Mr. Rishi Raj along with the plaint annexed copies of 58 agreements in respect of the cinematograph films in support of his claim against Saregama. However, at a later stage Rishi Raj filed 9 more agreements which were entered into with various producers/negative right holders and which he submitted that were not filed earlier due to an inadvertent error. Against this, Saregama submitted that Mr. Rishi Raj has not been able to provide sufficient and reasonable explanation for filing the additional documents at a later stage even though these would have been in his possession while filing the present suit.

With regards to the application for filing additional documents, the Court observed that as per the Code of Civil Procedure 1908, a plaintiff has to file a list of all documents in his power, and their photocopies pertaining to the suit along with the plaint. Similarly, he/ she also has to file a declaration on oath that all documents in his/ her power, possession, control or custody pertaining to the facts and circumstances of the proceedings have been disclosed . The Court held that in the present case Mr. Rishi Raj did file the afore-noted declaration by way of affidavit. However, it is specifically noted that the suit was filed in 2017 whereas the application for filing additional documents had been filed three years later, that is in 2020. The Delhi High Court refused to grant permission to Mr. Rishi Raj to submit these additional documents, stating that “inadvertent error” was not sufficient reasonable cause to file them at the current stage.


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Hidden Gems of India

-Adv. Chinmay Pawar

Lambasingi: Andhra Pradesh

Location of Lambasingi (Source: Google maps)

South India is famous for many things – its rich history, the breathtaking coasts, delicious cuisine and much more. The state of Andhra Pradesh in southern India is also credited for keeping its traditions alive while opening its arms to modern lifestyle.

Apart from its rich culture, the state is blessed with a diverse landscape, flora and fauna. Since the state has a long coastline, the winters are not very cold. The temperature in winters in Andhra Pradesh generally ranges from 12 °C to 30 °C. However, the temperature at a place called ‘Lambasingi’ may drop down to 0 °C to 5 °C. Lambasingi is often referred to as the ‘Kashmir of Andhra Pradesh’. The place is also famous for its coffee and pepper plantations.

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Know the Real India

Pakhal Lake: Andhra Pradesh

Pakhal lake is situated at a distance of about 50 kms on the east of Warangal city in Andhra Pradesh. The lake was constructed in the 1213 AD by the Kakatiya king Ganapathi Dev. Pakhal lake is spread over an area of 30 Sq. Kms and it is one of the oldest manmade lakes in India. It was built to serve as source of water for irrigation purpose. It was built on a tributary of river Krishna.

Location of Pakhal lake (Source: Google maps)

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Hidden meanings in trademarks

Unless you have never touched a computer or mobile, we are sure you have guessed whose logo this is. It is interesting to note that the logo of Wikipedia is an unformed globe of jigsaw puzzles with each piece inscribed with a glyph from a different writing system. It symbolizes the multilingualism of Wikipedia. The empty space at the top represents the incomplete nature of the project, the articles and languages yet to be added.

It signifies that knowledge and information are every growing globally and can never be completed.


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