Mar 22

RKD NewsNet March 2022

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Shubham Borkar & Adv. Arjun Pradhan

General News

  • The doctrine of Lis Pendens
  • International News

    The doctrine of Lis Pendens

    Lis Pendens literally means ‘litigation pending’ or ‘pending suit’ and is drawn from the concept based on the maxim “Pendente lite nihil innovature” which means that nothing new must be introduced while a litigation or when a suit is pending.

    This Doctrine states that the property which is subject matter of a suit shall not be transferred during pendency of the suit. This Doctrine is essential as it prevents Transfer of the title of any disputed property without the Court’s consent.

    In the case of G.T Girish Vs Y. Subba Raju, the Hon'ble Supreme Court of India delivered a judgment expounding the doctrine of "lis pendens”. The bench of Justice KM Joseph and PS Narasimha stated that, the transfer of the property during pendency of the suit is not void or invalid. However, such transfer will be subject to the final outcome of the suit. Moreover, The Court also held that neither the seller can set up plea of final disposition of the property nor the purchaser can take a defence of being a bona fide purchaser/lack of notice against the doctrine of lis pendens.

    Lis pendens is not only applicable in the real estate litigation but also applicable in the Intellectual Property Rights cases. However, a lis pendens is not something which is seen often in the world of intellectual property law. Nonetheless, grounds can arise for its use in conjunction with cases primarily about intellectual property. IP Counsels may be able to utilize a lis pendens to good effect in certain circumstances against an infringer or wrongdoer even before an IP case is prosecuted through a final judgment.

    In case of Hunting World, Incorporated v. Superior Court, the alleged wrongdoer was sued in federal court for selling counterfeit purses, bags, fanny packs, and other goods bearing counterfeit Hunting World trademarks. Shortly after the filing of the lawsuit, the wrongdoer quitclaimed his residence to his wife, which prompted a state court lawsuit by Hunting World to seek to set aside the conveyance. Hunting World also recorded a lis pendens against the property.

    The Hunting World case demonstrates that a party can bring to bear the potent remedy of a lis pendens, even when the crux of the matter is about intellectual property and not real property. A party bringing an infringement or other IP case against a wrongdoer should utilize the power of a fraudulent transfer action and a lis pendens where there is evidence that the wrongdoer has sought to shelter real property assets from possible collection in an IP lawsuit.

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    Hon Hai feat - 54,200+ Patents Secured

    Hon Hai Technology Group of Taiwan, also known as Foxconn, has secured over 54,200 invention patents across the world, with 62.5 percent of them granted in the United States and Japan.

    The world's largest electronics manufacturer Hon Hai, which also assembles the iPhones and iPads for Apple Inc., said it has gotten 17,600 patents in the U.S., 32.5 percent of its total, and 16,200 patents in Japan, some 30 percent of the total.

    This data was disclosed on its official website. It further said that about 17 percent of the patents obtained by Hon Hai are in the area of computer accessories, and 14 percent in semiconductors, Patents related to processing and detection technologies accounted for 13 percent of the total, 12 percent in the field of robots and optoelectronics equipment and 11 percent in display equipment. In China and Taiwan, Hon Hai has also acquired more than 11,200 and 5,620 invention patents, respectively.

    In November 2021, Hon Hai submitted an intellectual property management plan to its board of directors, stressing its resolve to focus on "quality, quantity and multi-function" and play a key role in technology when it comes to patent strategy.

    In India, Hon Hai was in limelight in January 2022 was due to the factory shut on the outskirts of Chennai in southern India. It happened after workers turned out in force to protest a mass food-poisoning incident, at one point blocking a major highway. The episode drew attention to the plight of blue-collar workers and triggered local government scrutiny.

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    Louis Vuitton not so well-known after all!

    On September 12, 2020, an application was filed in the European Union Intellectual Property Office (“EUIPO”) to register the trademark “ ”. French luxury brand, Louis Vuitton filed an opposition in November 2021, against the mark claiming that the mark “LOVES VITTORIO” looked ‘too familiar’ to its famous " " label.

    On January 14, the EUIPO rejected Louis Vuitton's opposition application in entirety determining that while the mark “LOVES VITTORIO” was applied for identical goods to those offered up by Louis Vuitton, the two marks were not identical and there was no likelihood of confusion on the part of the public.

    Comparing Louis Vuitton’s interlocking “LV” mark and “LOVES VITTORIO” mark, which consisted of the two letters N and L, the EUIPO observed that the similarity between the two marks was due to the fact that both used the letter 'L' in italics and that the two letters were juxtaposed.

    The EUIPO further observed that mere use of a similar stylization, in presence of different elements of the signs, is not sufficient to claim an infringement.

    *We do not claim any copyright in the above images. The same have been used for representational and academic purposes only.

    In addition to considering the possibility regarding confusion between the two marks, the EUIPO turned its attention to determine whether the mark “LOVES VITTORIO” would unfairly exploit or damage Louis Vuitton’s reputation & goodwill. However, as Louis Vuitton failed to submit any evidence related to the reputation of its trademark by the deadline to support its objection, the EUIPO rejected the opposition application.

    Reflecting on the outcome of the opposition, the decision of the EUIPO is surprising and ought to be put into perspective. Had Louis Vuitton presented evidence of the reputation of its “LV” mark, the opposition would have been decided in its favor.

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    Patenting Time in India Reduced - From 64 Months to 18 Months, for the Patent Grant Process

    In the Economic Survey 2021-22 (a Press Conference by the Chief Economic Advisor, Dr. V. Anantha Nageswaran), the Principal Economic Advisor Mr. Sanjeev Sanyal said that increasing the number of examiners helped in reducing the time for grant of patents in India. He further stated that, reducing the application process time can help increasing the number of patents granted in India as well as help the economy greatly.

    The time taken for processing a patent application was reduced to 42 months in 2020, from 64 months in 2017 and 52 months in 2019. Mr. Sanjeev Sanyal added that the number of patents granted in India had increased in the last 10 years, from 7,509 to 28,391. Notably, the share of patents filed by Indian residents increased to 41.5% in 2020-21. According to the World Intellectual Property Organisation (WIPO), the number of patents granted in China, USA, Japan, Korea stood at 5.30 lakh, 3.52 lakh, 1.79 lakh, 1.35 lakh respectively for 2020; whereas India stands at around 28k patents for 20-21.

    There are several ways of fast tracking the process of grant of an Indian patent. One way of fast tracking the process is by filing a request for expediting the examination, either at the time of filing a patent application or after filing of the patent application in India. The request for expediting examination can be filed on any one of the following grounds, namely:

    a) That the applicant, in the corresponding PCT application, has designated the Indian Patent Office (IPO) as the competent International Searching Authority (ISA) and/or elected as an International Preliminary Examining Authority (IPEA); or

    b) That the applicant is a start-up; or

    c) That the applicant is a small entity; or

    d) That if the applicant is a female, or in the case of joint applicants, all the applicants are natural persons, at least one of the applicants is a female; or

    e) That the applicant is a department of the Government; or

    f) That the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or

    g) That the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or

    h) That the applicant is an institution wholly or substantially financed by the Government; or

    i) That the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of department of the Central Government; or

    j) That the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.

    The applicant is also required to make a request for an early publication. After receiving such a request, the Patent Office publishes the patent application within a period of one month, provided the invention contained therein does not relate to thesubject matter which is relevant for defence purposes or atomic energy. Under expedited examination, the examiner is obligated to issue the First Examination Report (FER) within 1 month, but not exceeding 2 months from the date of reference of the patent application by the Controller to the Examiner, for examination of the patent application. Further, the patent application is taken up for final disposal within 3 months from the filing of the response to the First Examination Report.

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    A matter of ‘PRIDE’

    For the reasons explained by the Delhi High Court in the case of Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, injunction may be granted against passing off of goods or services despite of an infringement of a registered trademark not having established.

    Pernod Ricard India Private Limited (Pernod Ricard), sells alcoholic beverages under the trademarks "BLENDERS PRIDE" and "IMPERIAL BLUE" in India since 1997and 1995 respectively. FROST FALCON DISTILLERIES LIMITED (Frost Falcon) also sells alcoholic beverages under its own mark "CASINOS PRIDE". Cause of action arose when it came to the knowledge of Pernod Ricard that Frost Falcon had applied for registration for its trademark "CASINOS PRIDE".

    Pernod Ricard filed a case in the Delhi High Court, alleging an infringement/passing off of its trademarks, copyrights, and trade dress – an area of trademark law that provides for protection against imitation of specific features including packaging or appearance of the product.

    Pernod Ricard contended that the mark "CASINOS PRIDE" was phonetically and deceptively similar with its registered marks "BLENDERS PRIDE" and "IMPERIAL BLUE". Pernod Ricard further claimed that even the overall colour scheme, trade dress, the shape of the bottle and the 3D Mark of "CASINOS PRIDE" were deceptively similar to that of their registered marks.

    Source – Judgement

    *We do not claim any copyright in the above images. The same have been reproduced for academic purposes.

    Against this, Frost Falcon contended that that the expression "PRIDE" was common to the alcoholic beverage trade, and thus Pernod Ricard could not claim exclusivity over the said word.

    The Delhi High Court after considering the contentions of the parties, held that Pernod Ricard was not able to make out a case of infringement as the expression/term "PRIDE" is common to the alcoholic beverage trade, and that Pernod Ricard could not claim an exclusivity over the term "PRIDE", instead it could claim its rights over its proprietary marks "BLENDERS PRIDE" and "IMPERIAL BLUE" as a whole, by applying the "Anti-dissection" rule. (The anti – dissection rule mandates that the Courts while dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as a whole rather than dissecting them into its component parts and make comparison with the corresponding parts of a rival mark to determine the likelihood of confusion.)1.

    The Delhi High Court observed that although the trademarks were different, in the present matter, all the essential requirements to establish passing off were satisfied. In reaching its conclusions, the Court explained the law on passing off including that, Frost Falcon, had combined distinctive features of different marks so as to suggest an association with Pernod Ricard, which was likely to cause a confusion in the minds of the customers with its label "CASINOS PRIDE‘, the manner in which the mark was being employed and the product was being sold.

    Hence, the Delhi High Court granted an interlocutory injunction on an application filed by Pernod Ricard against Frost Falcon.

    1M/s South India Beverages Pvt. Ltd. versus General Mills Marketing Inc. & Anr., decision dated September 11, 2014 passed by the Hon’ble High Court of Delhi in FAO(OS) 389/2014

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    Copyright Societies Grow!

    The Copyright Office of India issued a public notice dated February 18th, 2022 inviting objections from general public and stakeholders, within 30 days, to an Application filed by PAHARI PERFORMANCE RIGHTS ASSOCIATION, Himachal Pradesh, India for registering itself as a Copyright Society u/s 33 of the Copyright Act, 1957 for issuance and grant of licenses in respect of musical works defined u/s 2(p) of the Act and literary works associated with Musical Works.

    Musical Works are defined under Section 2(p) of the Copyrights Act, 1957 as “work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sun, spoken or performed with the music”.

    Presently, the IPRS (Indian Performing Rights Association) is the only registered copyright society in India for the business of issuing licenses in musical works and associated literary works. As per Section 33(3) of the Copyrights Act, 1957 the Central Government shall not ordinarily register more than one copyright society to do business in respect of the same class of works. Similarly, there has been no instance in India where the Government has granted registration to more than one copyright society for the same class of works.

    As on today, following are the registered Copyright Society before the Copyright Office, India: -

    i. For Literary works associated with Musical Works: The Indian Performing Right Society Limited (IPRS)

    ii. For Reprographic (photo copying) works: Indian Reprographic Rights Organization (IRRO)

    iii. For Performers (Singers) Rights: Indian Singers Rights Association (ISRA)

    iv. For Sound Recordings (records) Works: Recorded Music Performance Limited (RMPL)

    In the past few years, the Government of India has called for several stakeholder meetings to discuss the issues pertaining to registration of multiple copyright societies as opposed to single copyright society in a single class of work. Those in favour of multiple societies for same class of work were of the view that competition is necessary and that one should have choice of multiple societies in order to avoid monopolistic practices being carried by a single society.

    It is to be understood that, in the recent years, there has been an increasing demand for creation of multiple regional societies for same class of work. However, whether there is any need for regional societies to have adequate representation or whether the existing societies have regional branches giving fair representation to regional players including their management and control is an important aspect to be taken into consideration.

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    Hidden Meanings in Trade Marks

    *We claim no rights in the above logo. It has been used for representational purposes only.

    Toyota Motor Corporation is a Japanese multinational automotive manufacturer headquartered in Toyota City, Aichi, Japan. It was founded by Kiichiro Toyoda in 1937. Being one of the largest automobile manufacturers in the world, Toyota produces approximately 10 million vehicles per year.

    The Toyota logo comprises of three 3 ellipses that represent three hearts namely,

    1. The heart of the customer,

    2. The heart of the product

    3. The heart of technological progress.

    One can also make out the letter “T” formed by the two inner ellipses. Finally, the different parts of the logo form the word Toyota. The name ‘Toyota’ was inspired by that of the company’s founding family, Toyoda. However, It was changed to Toyota because, in Japanese, this is written with eight brush strokes (a lucky number in Japan), rather than the ten used for Toyoda.

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    Know the real India

    Mahajanpadas – Gandhara

    -Adv. Chinmay Pawar

    *We do not claim any copyright in the above image. The same has been used for representational and academic purposes only.

    The Mahajanapadas (Sanskrit: great realm, derieved from maha,"great", and janapada "foothold of a people") were sixteen kingdoms which existed in the ancient India from the 6th to 4th centuries BCE.

    ‘Gandhara’ one of the ancient Mahajanpadas, was situated on the trade crossroads and was a cultural meeting place between India, Central Asia and the West Asia. It comprised an area of modern day Kabul, Peshawar, Swat, and Taxila now in north-western Pakistan and eastern Afghanistan. The main cities of Gandhara were Purushapura (Peshawar), Takshashila (Taxila), Sagala (Sialkot) and Pushkalavati (Charsadda).

    Gandhara produced influential thinkers such as the philosopher Kautilya and Panini, whose grammar works standardized ancient language – Sanskrit.

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