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Mar 23

RKD NewsNet March 2023

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

Setting up of Foreign Law Firms in India

By a notification dated March 10, 2023, the Bar Council of India (BCI) has issued rules for registration and regulation of foreign lawyers and law firms in India. This will of course include foreign lawyers and law firms practicing in the area of Intellectual Property.

An interesting distinction made between foreign lawyer/law firms and Indian law firms is in the definition itself. A foreign lawyer is defined to mean an individual, a law firm meaning a group of individuals, an LLP, a company or a corporation called by whatever name. However, Indian law firms are defined as individuals, partnership firms and LLP firms having Indian lawyers as partners.

The rules require foreign lawyers and foreign law firms to register themselves with the Bar Council as foreign law firms and unless the foreign lawyer / law firm is so registered they will not be entitled to practice law in India. Registration will not be necessary if the legal advice in respect of foreign laws or international legal issues is given, on what is referred to as the “fly in” and “fly out” basis. For the purposes of registration, a complicated set of 12 certificates and declaration is required along with fees of USD25,000 for an individual lawyer and USD50,000 for a legal entity. In addition to the fee, an individual lawyer is required to provide a security deposit of USD15,000 and an entity is required a guarantee amount of USD40,000. Once registration is granted the registration will be valid for a period of 5 years and if the lawyer / entity wants to continue practice in India, the renewal fee of USD10,000 and USD20,000 will be needed to be paid. The Bar Council may also levy process charges for processing the application.

Interestingly, the rules also provide for reciprocity as well as proportionality, i.e. the Bar Council of India may refuse to register a foreign lawyer or law firm, if the principal country of practice of the lawyer/firm does not allow Indian lawyers or law firms to be registered in their country and there is a balance of Indian law firms registered in that country and in India respectively.

Once a lawyer or a law firm is registered to practice in India, they will be entitled to practice “non-litigious” matters and such a foreign lawyer who is registered shall be deemed to be an advocate in respect of acts and deeds performed by the foreign lawyer. In the case of violation of the code of ethics and conduct under the Advocates Act, the registration of the foreign lawyer may be cancelled by the Bar Council of India. It is very clear that such foreign lawyers/law firms are not permitted to appear before any courts, tribunals or other statutory or regulatory authorities; this will include of course the Patent and Trademark offices and other IP offices in India. Such foreign lawyers are also barred from doing any professional work in relation to conveyancing of property and title investigation.

What the foreign lawyer is entitled to do is give advice to transact business and opinions, but only in relation to the country where the lawyer is qualified to practice. In addition, a registered firm lawyer may advice and appear as a lawyer for a foreign entity in case of an international arbitration which is conducted in India. In proceedings before bodies other than courts, tribunals, statutory authorities or any other authority which is competent to record evidence of both and in which knowledge of foreign laws is essential.

The rules do not bar Advocates enrolled with any State Bar Council in India to be a partner or an associate in such a registered foreign law firm. Such Indian Advocates can take up only “non-litigious” matters and can provide advice as required by the client. However, such a lawyer shall have no advantage or right of such a person being an Advocate enrolled in India.

Registered foreign lawyers/law firms can of course open offices in India and can enter into partnerships, and procure other legal expertise and advice in connection with legal practice in India. For this purpose, they may engage and procure legal expert or advice of an Indian lawyer.

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Recent GI registrations in India (From the North and the East)

A Geographical Indication (GI) tag is a sign/mark allotted to an artefact or a commodity that originates in a particular region and has its own unique identity. A GI right empowers the bearer to restrict the indication from being used by any other person whose quality does not meet the required criteria. In India, Geographical Indication tags are governed under Geographical Indication of Goods (Registration and Protection) Act, 1999.

Narasinghapettai Nagaswaram

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

Narasinghapettai Nagaswaram is a classical double reed wind music instrument originating from South India. This flute-like instrument which also resembles a shehnai (a traditional North Indian music instrument) is used as a traditional instrument in Tamil Nadu. Originally, the artisans based in Narasinganpettai village, have inherited the skill if making these wooden instruments. This instrument is also known as ‘Nakaswaram’ which is used in various holy ceremonies taking place in Temples and occasions like weddings.

The instrument is made out of a tree called acha or Hardwickia Binate which is also used in making ropes. However, in today’s time, the instrument is made out of several other kinds of woods which include – sandalwood, bamboo, copper, ebony, etc. One of the artisans has also confirmed that they construct the beautiful instrument by making use of the wood from parts of old houses.

Recently, Narasinghapettai Nagaswaram has been given Geographical Indication (GI) tag by the Geographical Indication Registry of India. The application was filed on behalf of Thanjavur Musical Instruments Workers Co-operative Cottage Indutrial Society Limited. The GI application for registration of Narasinghapettai Nagaswaram was made on 31st January, 2014 which was then accepted on 21st January, 2022 the certificate number issued by the GI registry is 420.

There are many instruments that originate from Tamil Nadu consisting their own form and characteristics. Some of the instruments having their origin in Tamil Nadu are – the Tamil drum, Shruti box (Tamil Harmonium), Seevali, 7 mouthed pot and Muzavu (Tamil drum), Udukkai and Narasinghapettai Nagaswaram.

Mithila Makhana

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

Having their origin in Bihar and Nepal’s region called Mithila. Makhana, in today’s time are the most preferred snacks because of their high nutrition values which especially help in weight loss. These are a special variety of aquatic fox nuts cultivated in the Mithila region. These nuts are grown in ponds on a leaf, which are then collected, washed, sun-dried for hours and then roasted. This process specifically facilitates the outer shell of the nut to dry up and wither off which ultimately results in the fnal product of a white puff. Makhanas are best known for providing adequate amount of protein, fibre, calcium, magnesium, iron and phosphorous.

Mithila Makhanas are not only used for filling the nutritional gap, but are also served at various auspicious occasions such as the Kojagara Puja which is celebrated for newly married couples by Mithila Brahmins. To many people, these snacks are also famously called and referred to as fox nuts. These nuts, after being cultivated are processed by way of roasting them with hot sand. Roasting gives them a crispy texture which are thereafter mixed with various spices and flavours in order to convert them into indulgent snacks.

Recently, the Bihar Agriculture University facilitated for its Geographical indication tagging. Being registered in the name of Mithilanchal Makhana Utpadak Sangh, Purnia, the GI tag has been duly registered in the month of April, 2022.

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When 91=99

It is trite maths that 91 cannot be equal to 99. However, in the recent trademark case before the Delhi High Court, the use of the numeral “99” as a trademark on bicycles was considered deceptively similar to the numeral “91” already being used in respect of bicycles.

A closer look at the decision reveals some interesting facts and pointers. In my opinion the plaintiff provided very clever visuals of the respective bicycles in identical surroundings. There were multiple images of the respective bicycles placed in identical configuration to show that the respective bicycles appeared the same. No specific mention was made about the identicalness of the bicycles, but visual similarity of the configuration of the two bicycles placed side by side did accentuate the similarity of the two. The similarity in the bicycles had nothing to do with the use of the mark but the side by side placement of the respective bicycles in identical configurations appears to have done the trick. It must be pointed out here that the plaintiff, the owner of the trademark “91” did not have a registration of the mark “91” per se, either as a numeral or in word form but these applications were pending. Neither was this a case of design violation; therefore, the plaintiff would have to rely on passing off.

Interim injunction was ultimately granted against the use of the trademark “99” on the 1st of February 2023.

Two further issues appear to have convinced the learned judge (the Hon'ble C. Hari Shankar, J); one was that during previous correspondence the defendant had agreed to discontinue the use of the trademark “99” and the second was that some of the documents submitted by the defendants in the process of registration and otherwise appeared to have been fabricated. These two facts led the Hon'ble Judge to opine that the defendants use of the mark “99” was done with the “intention to deceive” and still further when the Court comes to the conclusion that there is “intent to deceive” the Court must not “bend backwards” to presume that the “intent is not successful”. At the same time, when there is “intent to deceive” the Court must not search for “dissimilarities”. These factors led the Court to come to the conclusion that the defendants were prima facie culpable of having “infringed” the plaintiff’s “91” mark and were also seeking to pass off their (defendants’) bicycles as and for the bicycles of the plaintiff, and were using the mark “99” in a manner that a customer of average intelligence and imperfect recollection would believe that the defendants’ bicycles actually belonged to the plaintiff. I am a little circumspect about the use of the term “infringed” particularly when the plaintiff did not hold any registration of the numeral “91” or the word “ninety one” per se.

I must also advise trademark practitioners who are filing evidence in respect of the use of the trademark before the Trademark Registry: Be very careful of what you use to establish use or the declaration of first use. Such evidence must be filed without any alteration or effacement, lest it is revealed during subsequent litigation and turns out to be fabricated!

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Infringers, beware.

M/s. Atomberg Technologies Private Limited (Atomberg), represented by R K Dewan & Co, successfully obtained an ex-parte interim injunction against an infringer for infringing their famous trademark “ATOMBERG” and its variants.

M/s. Atomberg Technologies Private Limited carries on the business of manufacturing and/or trading in and/or dealing in and/or selling wide variety of home appliances such as ceiling fans, pedestal fans, wall fans, exhaust fans, mixer grinder and accessories thereof such as fan remote, fan motor, fan canopy, fan blades, fan down rod, etc. since 2012 under its trademark “ATOMBERG”, and .

Mr. Kunhimoideen Kazhungumthottathil (Defendant) trading as M/s. Grand Power Solution had been allegedly infringing as well as passing off the impugned trademark by adopting deceptively similar near-identical marks “","" selling the similar/ allied goods and also bought/registered an infringing domain name www.atombergindia.com.

Accordingly, Atomberg represented by R K Dewan & Co filed a suit for trademark infringement and passing off action against the Defendant along with application for appointment of Local Commissioners before the Hon’ble Delhi High Court.

Upon diligent and persistent submissions made by our litigation team before the Court, the Hon’ble Judge was pleased to allow the appointment of Local Commissioners (LC) to visit the premises of the Defendants, inspect, sign and make copies of account ledgers/cash books/accounts books, manufacture and/or import records pertaining to sales etc. of the infringing products as well as seize the goods that are a slavish imitation of Plaintiff’s registered marks, and any document/ packaging/ promotion material reflecting infringement and passing off of the Plaintiff’s registered trademark or variation thereof.

R K Dewan & Co along with the Local Commissioners and assistance/protection of the Local Police conducted raids on the same day in two different States (i.e. Kerala and Coimbatore) despite facing challenges, investigated and took charge of large quantities of infringing goods. It was also observed that after the execution of commission, www.atombergindia.com website has been taken down and is not in operation anymore.

We, at R. K. Dewan & Co. believe in securing well-fortified, cost optimized Intellectual Property Rights for our clients and strive ceaselessly towards that end.

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IPR Quiz

1.

This horse is the part of the following brand:

a. Ford

b. Toyota

c. Louis Vuitton

d. Ferrari

 

2.

This baby is an icon for the following brand:

a. Purity

b. Murphy

c. Amul

d. Parle G

(Scroll below for answers.)

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Stories behind Brands – Mercedes Benz

Brands are more than just a name or a logo; they embody a story and a legacy that have been built over time. Behind every brand, there is a rich history and a unique set of circumstances that have shaped its identity and contributed to its success. These background stories have become an integral part of the brand, and they serve as an essential tool for building brand loyalty and connecting with customers. There are various brands that you think you know about, but do you really know them? In this series of articles, we will share with you the stories behind the famous brands.

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

Do you know the name of this girl? You actually know, you have heard it so many times.

Mercedes-Benz and the three pointed star is a well-known identity that has become synonymous with luxury and quality automobiles. However, many people are unaware of the fascinating story behind the brand's name.

There is fascinating story which recounts how this image and identity was created. It starts with one Mr. Emil Jellinek, born in Leipzig, Germany in 1853 to a wealthy family of bankers. He later moved to Austria, where he began his journey as a businessman. In the early 1900s, Jellinek became interested in the emerging world of automobiles and quickly recognized the potential for growth in the industry. He was a visionary businessman and understood the importance of marketing and branding. He became the Austrian Consul General in Nice, and began selling automobiles, specifically French ones, to European aristocrats. By 1897, he was selling about 140 cars a year.

One day in a weekly magazine, Jellinek discovered Daimler-Motoren-Gesellschaft (DMG), it was literally love at first sight, Jellinek travelled to Cannstatt, in 1896, to find out more about the company, its factory, and the designers Gottlieb Daimler and Wilhelm Maybach (Mayback is now immortalised by the ultra-luxury car that bears his name and is at the top end of Mercedes Benz Range). In Cannstatt, he placed an order for one of the DMG cars and that was the start of the “affairs” between Jellinek and DMG. DMG would send vehicles to Jellinek and he used to provide his inputs for improvements in the car.

In those times, a speed week every year in March known as the French Riviera attracting many members of the local aristocrats. Under the guidance of Jellinek, Maybach specifically designed a Phoenix Double-Phaeton with the DMG-Phoenix engine in 1894; this vehicle featured four cylinders for the first time in a car. For this occasion, Jellinek sponsored and created a racing team called Mercedes named after his daughter, the Mercedes team won all races using the DMG-Phoenix. The car reached the speed of 35 km/h (22 mph); however Jellinek was still not satisfied with the performance of the car.

In 1900, Jellinek agreed that he will buy a shipment of 36 automobiles for a princely sum of 550,000 goldmarks from DMG. Wilhelm Maybach designed a revolutionary sports car for him and the car designed for this purpose was christened MERCEDES after the name of Jellinek daughter.

Mercedes officially entered the automobile world in 1901 and completely amazed everyone with its performance and winning all the races in Nice and reached a whopping 60 km/h. Immediately thereafter, Jellinek added Mercedes to his name and was knowns as Emil Jellinek - Mercedes. This is probably the only instance that I know of where a father adopted the name of his daughter!

The world had entered “the Mercedes era", sale of DMG shot up drastically. Its Stuttgart plant was running at its full capacity. As a result of this success, in 1902, DMG decided to use the Mercedes name as its identity for its entire range of vehicles and registered Mercedes as its trademark.

In 1926, DMG merged with Benz & Cie, its arch rival and became the Daimler-Benz company with their automobiles called Mercedes-Benz. This entity was run by Gottlieb Daimler’s two sons, Paul and Adolf. The sons wanted to have a logo for the new entity. They were inspired by the postcards their father Gottlieb would send where their family home was identified with the three pointed star. Adolf and Paul explained the reason for adoption of this three pointed star in a circle. It represented their vision of domination of the Mercedes- Benz range on the land, sea and air and truly this vision has come to be realised today.

Today, Mercedes-Benz and the three pointed star is a household name, and the brand's success can be attributed in part to the vision of Emil Jellinek. He recognized the potential of the automotive industry and was able to create a powerful and recognizable brand image that persists to this day. The story of Emil Jellinek and Mercedes-Benz serves as a testament to the power of branding and shows how dedication and perseverance can help to elevate a brand to great heights.

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Hidden Gems of India

Ladakh and Mayurbhanj listed in the TIME Magazine's 50 Greatest Places in the World, 2023

Source - Google

*We do not claim any copyright in the photographs. They have been used for academic and representational purposes only.

The Mayurbhanj district in Odisha and the Union Territory of Ladakh have recently been made a part of the 50 locations which are featured in the TIME Magazine’s list of World’s Greatest Places in 2023.

Leh, Ladakh boasts of astonishing alpine landscapes and Tibetan Buddhist culture. Furthermore, in 2023, India also designated its first Dark Sky Reserve in Hanle Village, about 168 miles southeast of Ladakh’s capital.

Mayurbhanj, is the only place on earth to spot the exceedingly rare black tiger apart from its unique flora and fauna, guided safaris, self-guided cycling tours and rare ancient temples.

The list included places like Tampa, Florida Dominica, Barcelona, Torres del Paine National Park, Chile, Churchill in Manitoba, Washington, D.C. among others.

According to the coveted Magazine, “Many locations on this list are finding ways to let tourists visit with a more limited environmental impact and many have responded to travellers’ desire to have unique, local experiences by offering indigenous-led tours or curated homestays,”.

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IPR Quiz Answers

1. d. Ferrari

2. b. Murphy

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