Apr 19

RKD NewsNet April 2019

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



“I have a pen
I have an apple
Apple pen
I have a pen
I have pineapple
Pineapple pen
Apple pen
Pineapple pen
Pen Pie Pineapple Apple Pen
Pen Pie Pineapple Apple Pen”

*The image and lyrics have been used for reference purposes only and we claim no copyright on either the lyrics or the image.

Did you have a tune in your head while singing the above lyrics? So you do remember this insanely bizarre song titled ‘Pen-Pineapple-Apple-Pen’ sung by PIKOTARO (a Japanese Entertainer) that went viral world over!

In 2017, the Japanese Company, Avex Inc. which manages popular entertainers such as PIKOTARO applied for a trademark registration for the mark ‘Pen Pineapple Apple Pen’ written in alphabets and in Katakana characters (Japanese syllabary) as ‘ ’ for various goods/services in a total of 14 classes at the Japanese Patent Office (JPO). The mark was accepted and published on March 30, 2018. Post which Apple Inc., filed an opposition against the said mark on the ground that the proposed mark may be deemed to be similar to the Apple’s popular trademarks, viz., “Apple”, “Apple Pay” and “Apple Pencil”. The Opponent stated that the proposed mark is likely to cause confusion amongst the public at large and that the proposed mark was intentionally adopted to ride on the goodwill and reputation of the Opponent’s company. Additionally the Opponent alleged that the Applicant may use the term ‘Apple Pencil’ and compose a song inspired by the term.

The JPO ruled in favour of the Applicant, Avex Inc., and held that, barring the slight phonetic similarity, the public will relate the mark to the viral song ‘Pen-Pineapple-Apple-Pen’ or ‘PPAP’ by Pikotaro which was an internet sensation from Japan. The JPO further dismissed the allegation of the Opponent that, “PIKOTARO might compose the song inspired by “APPLE PENCIL” with an intention of free-riding the opponent’s goodwill.” Thus, concluding that the Applicant mark is not infringing upon Apple’s marks.

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Legal Ping Pong

This is the story of a legal ping pong from China, where the company Zhongshan City Wantian Electric Appliance Co., Ltd. (hereinafter referred to as Wantian) filed for the registration of the mark “AOSAILO” for use on water heater related product in 2012, and the same was approved for registration in 2013. However, A. O. Smith Water Heater Co., Ltd. (Smith) having the registered marks ‘AOSmith’ and ‘A. O. Smith’ for similar goods filed for a cancellation of the trademark AOSAILO claiming that it is similar to their registered trademark.

The Trademark Review and Adjudication Board (TRAB), China dismissed the claims of Smith and held that in terms of overall appearance of the marks the two marks were not similar and thus would not cause confusion amongst the public.

Smith however, was not satisfied with the TRAB judgment and appealed to the Beijing IP Court. The Court reversed the order of the TRAB and rendered a judgment in favour of Smith stating that the distinctive parts of the disputed trademark AOSAILO and Smith’s prior registered trademarks AOSmith and A.O.SMITH are the letters “AO”, thus, in terms of composition and overall appearance of the marks, the disputed mark is similar to the prior trademarks. The Court also relied on the reputation of Smith’s company and marks and stated the consumers are likely to be confused if Wantian’s mark AOSAILO is permitted use.

This judgment however, left Wantian and TRAB dissatisfied and an appeal was filed at the Beijing High Court. The High Court reversed the decision of the IP Court and affirmed the lower court’s judgment, thus ruling in favour of Wanian and its mark AOSAILO.

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Being as different as Apples and Pears

Long long ago, someone artistically used “as different as Apples and Pears” while describing the difference between 2 things and the idiom has carried on since then. Ironically, in 2015 Apple Inc., challenged the registration of the mark “Pear” at the Euproean Intellectual Property Office (“EUIPO”) contending that the mark was similar to its famous ‘bitten Apple’ device. The ‘Pear device’ was applied for registration by Pear Technologies Ltd. in Classes 9, 35 and 42. Apple contended that the mark was figuratively and conceptually similar to its ‘bitten Apple’ device and the Opposition Division ruled in its favour.



To refuse an application due to the presence of an earlier mark, the IP offices consider various parameters such as:

• the earlier mark must be a registered mark,

• there must be identity and similarity between the contending marks, and

• the earlier mark must have a reputation in the European Union or in the Member State,

• there must be imminent risk of unfair advantage of the earlier mark being accrued upon the new mark are considered.

In 2016, Pear Technologies appealed at the EUIPO against the decision of the Opposition Division. The Board of Appeal held that the marks were similar since they depicted “sleek rounded silhouettes of fruit, with the oblong shape (the leaf/ the stem respectively) leaning to the right on top of the fruit". The Board of Appeal stated that though the marks were 2 different fruits but they were biologically related in terms of origin, size, colours, texture etc. It held that “because of the uniqueness and the high reputation of the earlier mark, the allusive and ‘somewhat mocking’ image of the pear depicted in the mark applied for would establish a mental link with the earlier mark”.

However, upon appeal, the General Court held that the marks were visually dissimilar.According to the General Court the presence of the colour black and the similar positioning of the ‘leaf on the Apple’ and the ‘stem on the Pear’ were the only similarities between the 2 marks. Considering Apple’s magnificent market presence and reputation, it is likely for the public to link a ‘fruit mark’ to Apple. However, the same cannot be considered in the assessment of the marks if the pre-condition of similarity is not satisfied. The Court ruled that similarity is the first test to be satisfied in the assessment of conflicting marks and unless the same it satisfied it cannot consider other parameters such as reputation, imminent damages etc.

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Copyright In Dance And Dance Steps

Dance is the most expressive of art forms as the performer participates with both, her mind and body with full swing and energy and yet manages to maintain the discipline that the dance form mandates. Cultures all over the world have seen the advent and growth of numerous dance forms with every dance having a typical form and routine associated with it. Some dance forms such as Bharatnaatyam or Kathak have a predefined set of rules and routines for the entire dance performance, while steps like the Bhangda step, the Bihu style or the famous pop-singer Psy’s “Gangnam style” are singular steps complete in themselves. Recently, the US Copyright Office refused to register the “Carlton dance” routine by ‘The Fresh Prince of Bel-Air’s star Alfonso Ribeiro. According to the copyright office it was a mere combination of three dance steps incapable of registration. In the case of Academy of General Edu., Manipal and Ors. vs. B. Malini Mallya, the Supreme Court held that a new form of a ballet dance which is reproduced in a literary format is considered as a dramatic work. Thus, if a person wants to register the copyright in a choreographic work, he/she will be required to reduce it in writing or any other form and apply for registration in that form only.

Commendable are the skills of a choreographer who is primarily the author of a unique sequential arrangement in a dance number. In India, dance moves being ‘choreographic works’ are protected under the Copyright Act, 1957 (“the Act”). Section 2(h) of the Act makes it very clear that choreographic work falls within the meaning of ‘dramatic work’ under copyright law.

It is however debatable whether a single dance move involving sufficient skill and judgment can be considered to be intellectual property capable of legal protection or whether the Act intends to only protect a sequence of steps in dance.

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Jaguar Land Rover wins in China!

Land Rover is a luxury car brand that specializes in four-wheel-drive vehicles, owned by Tata Motors. Evoque of the Range Rover series is a SUV and one of the iconic vehicles launched by the company. The company filed a case against Jiangling Motor Corporation of China claiming that the Chinese company had a similar shape, with the roof and windows tapering from front to back, and also near-identical tail lights and character lines on the side paneling which was a blatant copy of the company’s ‘Land Rover Evoque’ model.

On observing the pictures of the two cars, it is evident that the Chinese Company has in fact blatantly imitated the overall look, shape and design of the iconic Evoque.

*The picture has been used only for the purposes of reference and we claim no copyright over the image whatsoever.

The Beijing District Court ruled that Land Rover Evoque’s, latest model of 2018, had five unique features that were copied directly in the Landwind X7 built by Jiangling Motors, leading to widespread consumer confusion.

The Court thus ruled in favour of the Jaguar Land Rover and ordered that all the sales, manufacturing and marketing of the Landwind vehicle must be discontinued immediately and that Jaguar Land Rover be paid compensation.

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Drinks And Marks: Both Get Stronger By The Years!!

In the case of Radico Khaitan Ltd vs. M/s. Devans Modern Breweries Ltd., Radico Khaitan Ltd. (”Radico”) filed a suit seeking permanent injunction against Devans Modern Breweries Ltd. (“Devans”) at the Delhi High Court. It stated that Devans’s mark ‘ELECTRA’ was identical to and infringing upon Radico’s registered trademark ‘ELECTRA’ in class 33. Radico has also opposed the Devans’s application for trademark registration of the mark in class 32. It is noteworthy that Class 32 and Class 33 are classes with cognate/ related goods.

Devans contended that it was the honest and bonafide adopter of the marks ‘GODFATHER’ and ‘ELECTRA’ for its brand ‘GODFATHER ELECTRA’ in relation to Beer and other goods. It also contended to be the prior user as it was using the marks since 2014. It stated that though Radico had obtained registration for the mark in 2007, it actually started using the mark only in 2016, therefore Radico’s mark was liable to be removed from the records of the Trade Marks Registry.

Radico however established its prior use by way of evidence of its test launch in 2004 and placing on record invoices and agreements related to its various activities involving the brand ‘ELECTRA’ in the following years . The Court relied upon Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd. to elaborate that the ‘use’ may not be limited to use on the goods or to sale of goods bearing the trade mark.

The Court observed that the trademark law permits registration of a second application for the same mark only if prior continuous use of the mark is proved by the applicant. Also, relying upon M/s Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and others it observed that protection of a registered trade mark is not dependent on its use.

The Court therefore ruled in favour of Radico since it satisfied the primary grounds for granting of injunction, that is, it made out a prima facie case, the balance of convenience was in its favour and it successfully proved that irreparable injury would be caused to it if the permanent injunction is not granted. Devans was thus restrained from using the mark ‘ELECTRA’ or any mark deceptively similar to it.

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Author’s Rights in Copyrights

Copyright being a negative right, means the right of the author or owner to restrain others from copying his/ her original works. It is interesting to note that the author of a work may not always be the owner. The Copyright Act, 1957 (“the Act”), aims at securing the moral and economic rights relating to assignment and licensing of work for the benefit of the author as well as the owner. Though the owner/ applicant of copyright registration can be a person or a corporate entity, the authorship always vests in an individual. It is noteworthy that subsequent to the recent amendments to the Act, the author cannot be divested of his moral rights in the work.

India being a signatory to the Berne Convention, has incorporated Article 6bis of the convention in Section 57 the Act. This section enumerates the moral rights of the author. It provides the author the right to claim authorship in the work even after assignment of the copyright. It also prescribes that the author has a right to claim royalty in case of authorised use and damages in case any distortion, modification or mutilation prejudices his work regardless of any assignment, whether partly or wholly. Further assignee of a copyright cannot claim any rights or immunities based on the contract which are inconsistent with the provisions of Section 57.

In the case of Amar Nath Seghal v Union of India, a huge mural created by the plaintiff was dislodged from its original place of display and consigned to a government owned storeroom. This was done without the permission of the author and he perceived it to be ill treatment of his work and filed a petition at the Delhi High Court. A permanent injunction was ordered against the defendants to restrain them from distorting, mutilating or damaging the author’s mural and damages upto INR 50 Lacs were awarded as compensation to the author. Here, the Court observed that there are 2 types of moral rights: The ‘right to attribution’ which deals with exploitation of the work by way of licensing and assignment and the ‘Integrity right' which means the right to maintain the integrity of the work no matter to whom it has been assigned. An urgent need was felt by the court in this case to interpret Section 57 of the Act to include destruction of work of any form of art as the highest form of mutilation.

It was held that “When an author creates a work of art or a literary work, it is possible to conceive of many rights which may flow. The first and foremost right which comes to one's mind is the “Paternity Right” in the work, i.e. the right to have his name on the work”. There can be no purity without integrity. It may be a matter of opinion, but certainly, treatment of a work which is derogatory to the reputation of the author, or in some way degrades the work as conceived by the author can be objected to by the author. This would be the moral right of “integrity”.

Hence moral rights of an author are associated with the work ab initio regardless of any assignment whether partly or wholly. Whether copyright is in existence or expired, an author cannot be divested of its moral rights.

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