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Dec 22

RKD NewsNet December 2022

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

Miscellaneous

CLEVER WORDS FOR CLEVER PEOPLE

- Provided by my good friend, Phil Furgang.

 

Age is something that doesn't matter unless you are a cheese.

— Luis Buñuel, Spanish filmmaker

Getting old is like climbing a mountain; you get a little out of breath, but the view is much better.

— Ingrid Bergman

The idea is to die young as late as possible.

— Ashley Montagu, British-American anthropologist

No one is as old as those who have outlived enthusiasm.

— Henry David Thoreau

You know you’ve reached middle age when you’re cautioned to slow down by your doctor, instead of by the police.

— Joan Rivers

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Cartoons for smarter people

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Execution Petitions Must Be Disposed Of Within Six Months, Courts duty bound to record reasons in case of failure – Hon’ble Supreme Court of India

“Execution” in itself is not defined under the Code of Civil Procedure, 1908. In simple words, Execution, means a process for enforcing a decree that is passed in favour of the decree-holder by a Court of Law. Section 37 to 39 of the Code of Civil Procedure, 1908 deal with the competency of the Courts to execute a decree.

In the present suit, Mr. Bhoj Raj approached the Punjab & Haryana High Court challenging an Order of whereby the Executing Court had dismissed the Petitioner's application for preponement/early hearing of the case titled "Bhoj Raj Garg Vs. Goyal Educational and Welfare Society etc."

Since, the High Court repudiated to exercise its jurisdiction upon the matter, Mr. Bhoj Raj approached the Hon’ble Supreme Court of India contending that the Execution Court was not abiding by the directions issued by the Apex Court in the matter of Rahul S. Shah vs. Jinendra Kumar Gandhi where the Court had held that, the Executing Court must dispose of the Execution Petitions within six months, from the date of filing, which may be extended only by recording reasons in writing for such delay.

Thus, the Apex Court reiterated that:

1. The Executing Court must examine the parties to the suit in relation to 3rd party interest and further direct the parties to disclose and produce documents, upon oath, which are in possession of the parties including declaration pertaining to third party interest in such properties

2. After examination of parties, or production of documents, or receipt of commission report, the Executing Court must add all necessary or proper parties to the suit, so as to avoid multiplicity of proceedings and also make such joinder of cause of action in the same suit.

3. A Court Receiver can be also appointed to monitor the status of the property in question as “custodia legis” (in the custody of the law.) for proper adjudication of the matter.

4. The Court must, before passing the decree, pertaining to delivery of possession of a property ensures that the decree is unambiguous so as to not only contain clear description of the property but also having regard to the status of the property.

5. The Court must ensure immediate execution of decree for payment of money on oral application.

6. Before settlement of issues, the Defendant may be required to disclose its assets on oath, to the extent that it is being made liable in a suit. The Court may further, at any stage demand security to ensure satisfaction of any decree

7. The Court must not issue notice on an application of third-party claiming rights. Further, the Court should refrain from entertaining any such application(s) that has already been considered by the Court while adjudicating the suit or which raises any such issue which otherwise could have been raised and determined during adjudication of suit if due diligence was exercised by the Applicant.

8. The Court should allow taking of evidence during the execution proceedings only in exceptional and rare cases where the question of fact could not be decided by resorting to any other expeditious method like appointment of Commissioner or calling for electronic materials including photographs or video with Affidavits.

9. The Executing Court must dispose of the Execution Proceedings within six months from the date of filing, which may be extended only by recording reasons in writing for such delay.

10. The Executing Court may on satisfaction of the fact that it is not possible to execute the decree without police assistance, direct the concerned Police Station to provide police assistance to such officials who are working towards execution of the decree. Further, in case an offence against the public servant while discharging his duties is brought to the knowledge of the Court, the same must be dealt stringently in accordance with law.

While observing the aforesaid directions, the Apex Court was of the view that, it was the duty of the Execution Court to dispose of the execution proceedings within six months from the date of filing, which can be extended only by recording reasons in writing for such delay. The Execution Court is duty bound to record reasons in writing when it is unable to dispose of the matter. Accordingly, while reiterating the above directions, the Apex Court disposed of the Special Leave Petition along with the pending interlocutory application(s).

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PCT national entry – An Indian Prosecution point of view

Conversations with Dr. Dewan

 

Ashima: Sir! A PCT national phase application needs my attention but as usual I have question.

Dr. Dewan: Please ask your queries Ashima!

Ashima: What is the deadline for request for examination for a PCT national Phase application? Is the substantial examination queue ordered by actual filing date or date for request for examination?

Dr. Dewan: The deadline for making a request for examination is 48 months from the earliest priority date. The substantial examination queue is ordered by date of request for examination.

Ashima: How long will it take for patent applications to be published after PCT national entry?

Dr. Dewan: Nowadays, the patent applications are published within a few months after PCT national entry. The requirement is that the publication must take place shortly after the expiry of 18 months from the earliest priority date of the application.

Ashima: What is the time limit for response to OA/appeal to a Decision of Rejection?

Dr. Dewan: The time limit for response to an office action or a decision of rejection is 6 months normally which can be extended for a maximum period of another 3 months, but the request for extension must be filed within the 6 months period.

The time limit for filing an appeal to a decision of rejection is 3 months from the date of rejection.

Ashima: How many rounds of office action on an average are issued before conclusion of examination? e.g., will likely be rejected if response to first OA does not persuade the examiner?

Dr. Dewan: There are generally 2 rounds on an average before conclusion of examination followed by an oral hearing which may be further supplemented by an extended oral hearing.

Ashima: What are reasons for rejection frequently presented in an FER or an Office Action?

Dr. Dewan: Lack of novelty, lack of inventive step, lack of clarity, lack of definitiveness, non-compliance of formal requirements, subject matter not an invention.

Ashima: What kind of reasoning do you recommend in response to Inventive Step rejections? EP style, US style, JP style, CN style, or other suggestions?

Dr. Dewan: An EP style reasoning generally is useful. However, this must be supplemented by local practice and case laws.

Ashima: How does the examiner handle if there are more than one group of inventions (unity problem) in the claims, say group A claimed prior to group B?

Dr. Dewan: The Controller will ask for dividing the claims into group A or group B claims.

Ashima: Is an interview with examiner normal or rare in Indian practice, especially before hearing notice? Does the examiner welcome interview, formal or unformal? What is the procedure of schedule interview?

Dr. Dewan: There is no provision for formal interview, but some Controllers are agreeable to an informal interview over a telephone call to resolve some issues in the claims or formalities.

Ashima: What is the average time period from national entry until date of mailing of first examination report (OA)? What is the average time period from national entry until date of grant/reject of the patent application?

Dr. Dewan: The average time period from national entry is about 18 months. The average time period from national entry until date of grant/rejection of the patent application is 3 years.

Ashima: If claims are amended to similar as the scope of allowed claims in other PTOs (e.g. EPO, USPTO, or JPO), will it help accelerate the examination, or does the examiner like it, or the does the examiner usually invite the applicant to do so in the OA?

Dr. Dewan: Yes. If the claims are amended to be similar to the scope of allowed claims in other PTOs, particularly the EP, it will help to accelerate the examination. The Controller will not invite the applicant to do so, the applicant must anticipate this and do it himself.

Ashima: Is there notice of allowance issued in India? How long to paid the registration fee?

Dr. Dewan: No notice of allowance is issued and there is no registration fee.

Ashima: After rejection of a patent application, what is deadline for appeal (review)? Does the appeal (review) by a board or by the examiners?

Dr. Dewan: After rejection of a patent application, the deadline to file an appeal is 3 months and the appeal must be filed before the High Court having Jurisdiction of the Patent Office.

A review has to be filed within 2 months, but it will go before the same Controller who rejected the application in the first place.

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Is the trademark ‘Vogue’ in vogue for all goods and services?

Can the name of a magazine be used by an institute teaching Fashion Technology? This question was answered in affirmative by the Karnataka High Court.

Recently, the Karnataka High Court set aside an Order of a Trial Court with the observation that, the nature of goods/services of the contested parties using the word “Vogue” were different. The class of purchasers of the magazine and the students who were enrolled at the Fashion Technology institute would be persons who because of their education and intelligence were likely to exercise a greater degree of care.

The issue arose in a suit for infringement and passing off filed by Advance Magazine Publishers, Inc. (hereinafter referred to as “Vogue Magazine”) against the Vogue Institute of Fashion Technology (hereinafter referred to as “Vogue Institute”) for using their registered trademark (Number 315672B in Class 16) “Vogue” unauthorisedly. The Trial Court had passed an order of permanent injunction restraining the Vogue Institute from using the trademark ‘Vogue’ as a part of their name and directed them to render accounts of profits to the Vogue Magazine for having used the trademark ‘Vogue’ as part of their name.

If this Order had remained, it would have been a death knell for the Institute.

Vogue Institute was aggrieved by the Order of the Trial Court and filed an appeal before the Karnataka High Court submitting that they were in the service of providing training in Fashion Technology and running the Institution under the name 'Vogue Institute of Fashion Technology'. On the other hand, the Vogue Magazine was a publication and the areas of service on one hand and products on the other were distinctly different and thus, no infringement or passing off could be made out.

The High Court observed that, “The plaintiff publishes the magazine pertaining to fashion and is internationally reputed. The trademark registered is under Class 16 as mentioned above. The defendants are running an institution under the name 'Vogue Institute of Fashion Technology' and it is an institution pertaining to Fashion Technology. Admittedly, the defendants/appellants are not publishing a magazine called 'VOGUE' but are running an institution. Thus, there is no infringement of trademark.”

The Karnataka High Court allowed the appeal and held that the Trial Court’s conclusion was flawed. The Court, observed while passing the order that, the test of ‘average intelligence’ was erroneously applied by the Trial Court while deciding the issue of deception/confusion. The Court further observed that, although the Vogue Magazine was globally famous as a fashion magazine it was not subscribed or read by large sections of the general public and was thus known by a limited section of society. The only aspect to be taken into consideration was whether the mark in question was likely to deceive or cause confusion in the minds of the general public who may avail of the defendants' services as if they were the plaintiff's or in some way, they would assume that the, defendants were associated with the plaintiffs.

The specific observations of the Court have been reproduced here to highlight the thinking which led to the distinction between, an Institute teaching Fashion Technology on one hand and a Fashion Magazine on the other. “The magazine which is published by the plaintiff is a fashion magazine which is not subscribed or read by large section of the general public. It is used by that limited section of the Society who are generally aware about fashion. The kind of purchasers who subscribe to the magazine of the plaintiff are likely to know that the plaintiff's magazine is involved only in the business of publishing magazines and not running any institute. Similarly, the persons who join the defendants' institute are those who have knowledge about the fashion world and taking into consideration the degree of care that an average student is likely to exercise, it is highly unlikely that they would confuse the institute of the defendants as one belonging to the plaintiff.”

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Fevi Kwik v. Fixo Kwik: A quick fix!

Pidilite Industries Limited (Pidilite), is a renowned entity in the field of adhesives and sealants, construction and paint chemicals, automotive chemicals etc. well known for products such as “Fevicol” “fevistick”, “feviart”, “Mr.Fixit” etc. The mark “FEVI KWIK”, which is a cyanoacrylate adhesive / instant adhesive was conceived and adopted in 1987 by Pidilite and has been continuously in use since 1991. Since November 2007, Pidilite also designed and adopted a unique and distinctive package for the said product “FEVI KWIK”.

In October 2021, Pidilite came across an instant adhesive product being sold by Fixo Industries (‘Fixo’) under the mark “FIXO KWIK”, which was deceptively similar to its registered mark ‘FEVI KWIK’. Upon investigation, Pidilite found that, two applications for registration of trademark were filed by Fixo which were refused by the Ld. Trade Marks Registry. However, despite the refusal, Fixo continued to sell its counterfeit products under the mark FIXO KWIK.

Hence, Pidilite approached the Bombay High Court seeking ad-interim reliefs. Pidilite contended that, the impugned mark was nearly-identical to its own mark not only with respect to the placement of the words used in the mark but also the designing of the packet in which the adhesive is sold and the same was a colorable imitation or a substantial reproduction of the original packet of ‘FEVI KWIK’.

Source - Judgement

Pidilite further submitted that, all its packaging and the marks and color combinations on it were uniquely curated by them and thereon were being sold extensively and continuously in the market.

Against this Swastik Enterprises (Defendant No.2) countered filing its affidavit, denying anything in relation to the impugned mark used by Fixo. Defendant No.2 submitted that there was absence of substantial material in the papers filed along with the plaint to demonstrate as to what is the cause of action Pidilite could possibly have against Defendant No.2. Further it was submitted that in the absence of any tangible material to show any connect between the alleged impugned product and Defendant No.2, no ad-interim relief could be granted to Pidilite, at least in so far as Defendant No.2 was concerned.

After considering all the submissions and taking a look at both the products, the Court was of the opinion that the mark used by Fixo was prima facie deceptively similar to FEVI KWIK. The Court observed that, under section 2(1)(h) of the Trademarks Act. 1999 - A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. In this case, the color combination on the packaging, the font, font color and the sentence – “ONE DROP INSTANT ADHESIVE” coupled with the placing of all the elements on the package, did have the likelihood of confusion among the customers of FEVI KWIK.

Therefore, the Court restrained Fixo from the following:

Manufacturing, marketing, selling advertising, offering to sell or dealing in the products dealt in by Fixo or instant adhesives or any similar goods or any other goods bearing the FIXO KWIK. Any activity comprising of reproducing the mark FEVI KWIK in any manner.

Infringing the FEVI KWIK registered mark bearing numbers - 465651, 1643621, 1643620, 1128234, 1295076, 705500, 1128236 and 689062 and from using in relation to products manufactured by Fixo or any other goods for which the FEVI KWIK Registered Marks are registered or any goods similar thereto.

Infringing in any manner the Pidilite’s copyrights in the artistic work comprised in/reproduced on its FEVI KWIK Distinctive Label/Packaging and from reproducing/ copying the said artistic works or any substantial part of the said artistic works on the Fixos’ manufactured counterfeit Products.

Finally, the court restrained Fixo from committing the tort of passing off in any manner, which may include manufacturing, selling, and advertising. This may also include dealing in the counterfeit products by Fixo under the mark FIXO KWIK. The present matter has been further listed on 05/12/2022.

With every case, the scope of trademark infringement is being widened and further clarified by the Indian courts. As more and more businesses go global, it is imperative that trademark jurisprudence keeps evolving. The domestic scenario in India is also brimming with start-ups, leading numerous big businesses to exercise their trademark rights against deceptively similar products and brands.

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Hidden Meanings in Trade Marks

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

Elefont Design, is a digital based studio located in Hyderabad, India which caters to a range of industries such as communications, technology, wellness industry, educational institutions, investor relations.

Being simple yet effective, Elefont Design’s logo contains a part of an elephant’s trunk in the negative space inside the letter e.

Did you see it?

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Hidden gems of India

 

Bimbisara (544 BC - 492 BC)

Source - Google

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

The Magadha Empire (544 BC-322 BC), is considered as the first empire in India. Magadha expanded throughout three dynasties; it improved during the Haryankas, expanded underneath the Sisungas and Nandas, and peaked under the Mauryas.

The Haryanka Dynasty was the first powerful and vibrant dynasty of Magadha. Bimbisara, was the first monarch and the founder of the Haryanka Dynasty. According to Buddhist sources, he ruled for around fifty-two years. Acquisition and aggression were said to be his policies

As a result, he gained immense international prominence and paved the path for Magadha to advance in the West and the North.

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