According to the World Intellectual Property Organisation, “any confidential business information which provides an enterprise a competitive edge (emphasis added) may be considered a trade secret. This could include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes.”

We are all aware that a document, falling within the description in Schedule I of the Maharashtra Stamp Act,(the “Act”) and which is executed within the State of Maharashtra, is liable to be stamped at the rates stipulated in the said Schedule.

The term logo is derived from Greek as an abbreviation of the term “logo type”, meaning a “word and an imprint”...

In the second week of September 2014, two different Appellate Benches of the Delhi High Court pronounced judgements in two pharmaceutical trademark cases.

Use is a fundamental concept in trademark jurisprudence. Registration of a trademark is a voluntary act on the part of a trademark owner in the sense...

In what appears to be a classic case of trademark trolling and is a surprising development......

Fluid- the work suggests movement. Fluid Trademarks stand true to their name.

Creating a successful brand in the marketplace requires a lot of work and is an extremely expensive exercise. But, once a brand is established the obvious question is ‘what next’? A common strategy adopted by large corporations is to introduce a ‘Flanker Brand’.

Jinchun Ji sought trademark registration for “雪佛龙” (“Chevron” in Chinese version) before the Chinese Trademark Office (TMO) in respect of goods falling in Class 12 viz. automobiles and motor cycles. Chevron Intellectual Property LLC (a subsidiary of Chevron Corporation) opposed the application on the grounds that the impugned mark was similar to its mark and which was otherwise registered in respect of the goods petroleum oil (crude oil or refined oil), industrial oil.

In Anchor Health and Beauty Care Private Ltd vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd & Ors. the Delhi High Court decided a case involving the expression “ ALLROUND” for toothpaste.

In Enterprise Holdings, Inc. v. Enterprise Auto Rentals, Justice Manmohan Singh of the High Court of Delhi delivered a judgment in favor of the plaintiff against an entity using the trade name Enterprise Auto Rentals and the trademarks ENTERPRISE and ENTERPRIZE.

Recently, the High Court of Delhi settled the issue of whether merely lodging an application for the registration of a trademark by the defendant gives the plaintiff jurisdiction to file and succeed in an action for trademark infringement. Analco (India) Pvt. Ltd. v. Navodya Exim Pvt. Ltd., CS (OS) No. 1764/2009 (Del. Jan. 23, 2014).

Last December, the divisional bench of the Delhi High Court rendered a decision...

R. K. Dewan & Co (RKD) represents ‘KamaSutra’, India’s second largest...

Criminal remedies are very effective and create the strongest deterrence in the market but are often less opted for as proposed remedies to combat piracy. A brief snapshot of the criminal remedies is as under...

“BRAND BULLY”

28 February 2014

Recently, Facebook was accused of being a ‘brand bully’ by a Nashville-based pet-themed social network called Facepets.com.....

In continuing R K Dewan & Co.’s tirade against the usurpation of reputed Indian brands in China by local infringing companies, our client HEM Corporation (HEM), a reputed Indian incense stick manufacturing company, successfully challenged a Chinese trademark registration obtained by a local company, Chengdu Heaven Art Commerce & Trade Co. Ltd (Chengdu Heaven Art) at the China Trademark Review and Adjudication Board (TRAB).

Biotechnology may be defined as the combined use of science and technology to exploit biological processes. Biotechnology contributes to advancement in the life sciences and offers tremendous scope for improving human health and furthering a nation’s economic development.Many biotechnology inventions involve sequencing genes, systems to selectively express...

In a recent case, Neo Foods Pvt. Ltd vs. Neo Milk Products Pvt. Ltd, the Delhi High Court had to decide on the issue of whether the products, milk and pickles, can be considered to be similar.....

The REAL case

6 February 2014

In the case of Dabur India Ltd vs. Real Drinks Pvt. Ltd, the High Court of Delhi was required to decide on the issues of passing-off, infringement, jurisdiction and maintainability of a suit where the Plaintiff and the Defendant were both registered proprietors of trademarks containing the word “REAL”...

Oodles of Noodles

6 February 2014

In a recent case, Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd, the Delhi High Court decided a case of passing-off based on the principles of common law...

Granting a major victory and relief at the same time to our client, the Indian tools manufacturing company, TAPARIA TOOLS LIMITED, the China Trademark Review and Adjudication Board (TRAB) in a recent decision reversed the China Trademark Office’s decision in an opposition case filed by TAPARIA against a local Chinese Company QINGDAO XINLIAN TOOLS CO. LTD....

Well-known Trademarks

10 January 2014

In a recent case, R K Dewan & Co was successful in obtaining an order of permanent injunction for Lavasa Corporation...

The Registrar of Trademarks published on 29th November 2013 an exhaustive alphabetical list of goods and services..

The Right to Invalidate

30 November 2013

In the event of infringement of a trademark, there are various strategies which are adopted by the trademark owner and by the infringer. The aim of the trademark...

Looking to the backlog of matters pending for post registration changes, the Indian Trademark Registry has taken an initiative to start a special drive during the months of December 2013 and January 2014, for the disposal of rerecord of post registration changes requests.

Forum Choices

12 November 2013

“Forum shopping” is the informal name given to the practice adopted by some litigants to have their legal case heard in the Court thought most likely to provide a favourable judgment.

It is a common belief that IP litigation in India can be lengthy and expensive. However, with proper handling and selection of an appropriate forum, this belief can be rendered moot.

Trademark licensing is an effective way of commercializing trademarks. A person licensing (the “Licensor”) the trademark allows another party (the “Licensee”) to use the trademark in a particular manner within a specified territory and for a stipulated period of time.

The IPAB by its order dated 26th August, 2013, stunned the IP fraternity at large by holding that the trademarks Mex and Kamax are deceptively similar.

Cizer v. Lizer

22 October 2013

A trade mark may be refused registration for a number of reasons including the fact that the trade mark is devoid of distinctive character or if it is of such nature as to deceive members of the public. On these grounds the owner of the trademark ‘Cizer’ recently succeeded in having the trademark ‘Lizer’ removed from the Register of Trademarks.

Good, better…. best

22 October 2013

Consumers these days get lost in a sea of products to choose from in each category. It would be ideal if the consumer could purchase the best product without having to expend time and effort on research.

The IP arena saw a victory of right over wrong with the ones in the right getting asked for damages. India is not known as a jurisdiction where huge damages are awarded often.

What if you manufactured toys and Santa Claus who was merely supposed to give your toys to kids stole your trademark and started to claim it as his own?

Colour As a Trademark

7 September 2013

More than in any other jurisdiction, in India, colour and colour schemes play a crucial role in distinguishing a product or a service. This is primarily because although a large segment of the Indian population is not conversant with the English alphabet; many brands are usually in the Roman Script.

Shades of Grey

7 September 2013

INTA recently filed an ‘amicus curie’ brief in an appeal pending before the Supreme Court of India, expressing its view on the question of Parallel Imports and Exhaustion of rights. Though not a party to the suit, INTA has filed this brief as a ‘friend of the Court’ in order to influence the decision by providing a global perspective to the question of parallel imports.

The recent decisions of the Intellectual Property Appellate Board (“IPAB”) have, to a certain extent, clarified the status of descriptive/laudatory trademarks in the Indian context.

The Intellectual Property Appellate Board on 31st July, 2013 passed an order which is the first of its kind. Both the parties succeeded and failed at the same time. Surprised? In cross petitions between HAB Pharmaceuticals & Research Limited (HAB) and VEE EXCEL DRUGS & Pharmaceuticals Pvt. Ltd (Vee Excel), the IPAB passed orders for removal of both the impugned registered marks VEGAH & VEGA ASIA from the Register of Trademarks, albeit for different reasons.

The Intellectual Property Appellate Board yet again chastised the Indian Trademark Registry in its Order dated 12th July, 2013 for irregular procedure. The IPAB by way of two orders of the same date has laid down the general principles governing the registrability of a mark, which is identical to an existing registered trademark.

The Delhi High Court recently decided an interesting case relating to comparative advertising. The case was instituted by Reckitt Benkciser (India) Ltd. (the owners of the brand “DETTOL”) against Hindustan Unilever Ltd. (the owners of the brand “VIM”). Reckitt Benkciser (India) Ltd. (‘RBL’) sued Hindustan Unilever Ltd. (‘HUL’) for commercial disparagement and sought interim injunction against HUL restraining HUL from publishing advertisements disparaging the ‘DETTOL HEALTHY KITCHEN’ trademark. The Delhi High Court found in favour of RBL and granted an order against HUL.

RKD laid the trail for suits against disparagement of trademarks in films, when we successfully represented Godrej Sara Lee Ltd, getting a permanent injunction and damages worth INR 500,000 against Super Good Films, who had shown Godrej Sara Lee’s insect repellent “Hit” in a bad light in one of their films.

The Trade Marks (Amendment) Bill was passed by the Parliament and assented to by the President on 21stSeptember 2010. The Trade Marks (Amendment) Rules, 2013 have been made to give effect to the Trade Mark (Amendment) Act 2010.By notification dated 8th July 2013, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force to enable India to accede to the Madrid Protocol.

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol.

In the last decade, there has been a shift in the perception and coverage of the term trademarks. Having always been seen as words or pictorial symbols, trademarks have now evolved beyond this purview to include specific shapes and packaging techniques (3D trademark), sounds (aural trademark), specific color combinations, holograms and even smell (olfactory trademark).

Absolute ground for refusal of Trade Mark...

The advent of rapid technological growth and a manifold increase in the number of suppliers who make products and services available to consumers coupled with rising costs of such products and services has led to the birth of an alternate industry involved in bringing fake, illegal and counterfeit goods to the market.

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol. This accession will take effect from the 8th of July 2013. On or after that date, trademark owners outside India can designate India as part of an international application under the Protocol.

Classification goods and services into different classes for the purpose registration of trademarks enables systematic storage and retrieval of information.

This article provides an overview of the 'Madrid System for International Registration of Marks' which allows individuals and corporate houses to register and protect their marks in a number of countries.

This article discusses the issues involved in the role and status of a technical member in the overall constitution of the Intellectual Property Appellate Board (IPAB).

Having complied with the TRIPS regime in satisfying the minimum standards of Intellectual Property protection, India is now looking at ways and means to ensure a foolproof enforcement mechanism.

primary contact