Dec 18

RKD NewsNet December 2018

Compiled by: Adv. Sachi Kapoor & Adv. Aboli Kherde | Concept & Edited by: Dr. Mohan Dewan

General News

The GI Tag List Additions!

In our article – ‘Does Your Product Have a Location?1’ dated August 13, 2018, we discussed Geographical Indications and their application in India. We bring to you a recent update on the same.

“Litchi!”- The word sends a shock of its distinctive and peculiar fragrance through the mind! Since the fruit requires a specific set of climatic conditions, it is cultivated only in a few states in the country. In India, Bihar, especially its northern regions are blessed and famous for being the land of Litchi cultivation since ages. Not only this, Bihar has its own specialised variety of Litchi known as the ‘Shahi Litchi’ because of its soft Rose scented flavour. It is a delight to report that ‘Shahi Litchi’ from Bihar was granted a GI tag by Geographical Indication Registry, Chennai. The said registration was granted to the Litchi Growers Association of Bihar, Muzzafarpur. The areas of East Champaran, Vaishali, Samastipur and Begusarai districts of state are the traditional growers of Litchi.

Other commodities that have been granted the GI Tag recently are –

• RajKot Patola Sarees from the District of Rajkot, Gujarat are famous for their pure silk single ikat fabric which is an 800 year old craft famous for its vibrant colours, designs and durability. Patan Patola sarees are made using vegetable dyes that result in no reverse side, as both the sides have equal intensity of colour and design. Weaving of a Patola saree on a single loom takes a minimum of 10-12 months and the designs are essentially traditional with geometrical, floral, animal and leaf patterns.

• Alphonso Mangoes also known as the ‘King of Mangoes’ and better known as ‘Hapus’ in Maharashtra from Ratnagiri and Sindhudurgh, has been in demand in domestic and international markets for not only its taste but also for its pleasant fragrance, soft pulp and vibrant colour. It has been one of the world's most popular fruit and is exported to various European countries, Japan and Korea. New markets such as USA and Australia have recently opened up as well.

• Boka Chaul (soft-rice) from Assam is a native variety of rice and is unique because it requires no fuel to cook and can be eaten by just soaking it in water at room temperature. It is known for its nutrition and is consumed during summer because of its cooling effect.

In addition to the abovementioned list there remain nearly 250 Applications pending with the Geographical Indication Registry.



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Have You Had Your Broccoli Today?

Broccoli, a popular vegetable in the continental cuisine, has its native origin from the Mediterranean region and has been grown in Italy at least since the days of the Roman Empire. In 2013, the European patent No. 1069819 with the title "Method for selective increase of the anticarcinogenic glucosinolates in Brassica species" was granted to an agrochemical company Mosanto which has now been acquired by Bayer. This patent contained process claims with regard to the methods of cultivation of Broccoli (Brassica oleracea) with elevated levels of certain glucosinolates. These elevated levels of glucosinolates resulted in the broccoli plant to have an extended head or rather a head higher than the leaves. This invention made it easier for the plant to be mechanically harvested.

Multiple European non-profit organizations such as Greenpeace, Public Eye, came together and formulated a coalition viz. – NO PATENTS ON SEEDS. With support from many other organizations from all over the world they are focused on fighting against patents on plants and animals. In 2014, the revocation petition was filed against the patent granted for broccoli. An EU Directive on biotechnological inventions was implemented in 1999. The Directive excludes essentially biological processes from patentability but does not provide for a clear exclusion of plants or animals obtained from such processes. However, vide a notice in 2016, the Commission clarified that it was in fact the European legislator’s intention to exclude not only processes but also the products obtained by such processes. In furtherance to the notice released in 2016, the EPO amended its regulations in June 2017 and excluded plants and animals obtained by an essentially biological breeding process from patentability.

The EPO, on examining the oppositions filed and the EU Directives passed an order revoking the broccoli patent.

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Ebay v. UKBAY

Ebay, one of the popular e-commerce platforms, opposed the registration of one ‘UKBAY’ at the UK Intellectual Property Office. Ebay claimed that its mark was popular worldwide. It further claimed that the similarity between Ebay and UKBAY is likely to cause confusion amongst their common consumer-base and hence, the latter must not be registered. Ebay also stated that since the word “BAY” was common in the marks, consumers are likely to create an association between the two marks and that UKBAY would draw undue benefit from such association.

UKBAY was published in April 2017 for the following services in Classes 35 & 38:

Class 35: Advertising; business management; business administration; office functions

Class 38: Telecommunications

The UK IPO reviewed the matter in great detail by inspecting the mark UKBAY on the touchstone of certain interesting parameters:

It resolved to assess the contending marks by measuring the degree of similarity from the limited attention span of any average consumer. It noted that such average consumer is likely to pursue the mark as a whole and not analyse the details thereof.

It observed that there was a high degree of similarity and likelihood and that the consumers would create an association between the two marks. However, the UK IPO also noted that such degree of similarity and association was not enough to create confusion in the minds of the consumers. One of the rationales behind this observation was said to be the differences in the services that were provided by both the parties.

The UK IPO stated that there was lack of evidence, such as, change in the economic behaviour of the opponent’s customers or any such possibility thereof. The only part of the IPO’s decision which was in favour of Ebay was that it allowed removal of “Advertising Services” from UKBAY’s application in Class 35. Since there was no likelihood of confusion owing to the dissimilar services, the UK IPO rejected Ebay’s other contentions and awarded costs to the tune of USD 560 in favour of UKBAY.

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Not so fine, Snofinn!!

Sanofi is a globally well-established name in the field of healthcare pharmaceuticals, primarily in Europe. It filed a suit for permanent injunction against one ‘Snofinn’ at the Delhi High Court in the case of of Sanofi & Anr. v. Faisal Mushtaq & Ors. CS (COMM) 929/2018 & I.A. No. 7820/2018. It stated that the defendant’s trade name “Snofinn” and its logo, were deceptively similar to that of Sanofi’s. In our opinion, the similarity was shamelessly deceptive. (Since a picture speaks a thousand words, we shall ‘show’ you the similarity instead of saying much):

* Pic Courtesy: The judgment itself contained this simple depiction of the deceptive similarity!

The defendant, inter alia, operated a domain name www.snofinn.com which stated that the defendant was engaged in the manufacture and sale of pharmaceutical preparations under its brand name “Snofinn”. The defendant had applied for a trademark registration for the trade name and logo. However, the same was opposed by Sanofi.

In this suit, the Court concluded (as we all have!) that a case of trade mark infringement, copyright infringement and passing off was made out. It further stated that the triple identity test i.e.-identical trademark-identical goods- identical trade channel- has been satisfied.

It noted that the defendants were not appearing in the matter and that Sanofi’s contentions were satisfactory enough to establish a case of infringement. The court decreed the suit summarily (meaning- without recording evidence) in favour of the Sanofi, ordering exemplary costs which included the lawyer’s fees as well as Court fees.

The Court’s speedy and conclusive disposal of the case in less than a year’s time is noteworthy.

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Assessing Similarity In Marks Before Differences

It is interesting to note that the essence of ‘trademarking’ is to create an inherent association between the product and the brand. A consumer, when he looks at a product on the retail shelves, is more inclined to sub-consciously create an ‘association’ with any brand within his sphere of knowledge instead of focusing on the visual differences.

In the case of Shambhu Nath & Brothers & Ors. v. Imran Khan, wherein both the parties are manufacturers of inter alia electrical fans of various kinds, Shambhu Nath was trading inter alia under the registered trademark .Imran Khan started using the trade mark which caused Shambhu Nath to sue him for infringement and passing off. Interestingly, the Court noted that SNJ were the initials of Mr. Shambhu Nath Jaiswal himself and Imran Khan did not provide any explanation for using these very letters in his mark!

Imran Khan argued that Shambhu Nath had rights only to the stylised form in which the word TOOFAN was written and therefore he did not have exclusive rights to the word TOOFAN.

The High Court of Calcutta agreed that registration gave rights to the mark as a whole. However, if a prominent part of the registered trade mark is used by another, this would amount to infringement as in the present case. In a trade, if a mark has come to be identified with a particular person, then use of that trademark by another person in the same trade will be infringement.

The ‘takeaway’ from this case is that while considering infringement between 2 trademarks in the same line of activity one should focus on the degree of similarity rather than the technical differences. In every case if the points of similarity are greater than the technical differences a practical approach will suggest that the registered mark is infringed.

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Unauthorized Use Of Software Amounts To Infringement

In the case of MSC Software Corporation & Anr Vs. S. Ramanathan & Anr CS(COMM) 1675/2016 & IA No.16124/2016 at the High Court of Delhi, the Plaintiffs (“MSC Software”) claimed that the Defendant, Automotive Test Systems (“ATS”), was using its software without any license or authorization which amounted to infringement of its rights over the software. It prayed before the court for: (a) an order of permanent injunction against ATS, (b) an order for recovery of damages, including any commercial benefit drawn by ATS from such unauthorized use.

ATS contended that it did not permit anyone in its office to use or download any pirated/unlicensed software. However, when it received a notice from MSC Software and conducted an internal enquiry, it found that one of its trainees had used the software for his personal projects. ATS immediately directed the software to be deleted. ATS admitted that it was in fact one of its employees who downloaded the software for a trainee, and that it did not require the software in any of its own business activities. Hence it agreed to suffer a decree for injunction as sought by the MSC Corporation.

MSC Corporation further stated that ATS should either buy its software now or pay about INR 77 lacs to it as a compensation for the past unauthorised use of the software. MSC Corporation argued that the very fact that there was an infringement entitled it to damages. However, the Court observed that whether ATS has drawn commercial benefit from use of the software was to be proven sufficiently before imposing damages on ATS. Since MSC Corporation did not produce any such proof, the Court did not deem it fit to award a decree of damages.

In view of the above, the Court decreed the suit in favour of MSC Corporation and stated that costs equal to value of the court fees paid on the plaint and professional fee/expenses in the sum of Rs. 1.5 lacs be paid by the ATS rather than damages.

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