The word ‘tweet’ is set to become a registered trademark for the micro-blogging website, Twitter. Twitter has resolved a long running battle with the US Advertising Company, Twittad which allows around 27,000 paid users to tweet advertisements from their private accounts. In 2008, Twittad was the first to claim the word ‘tweet’ when it had the phrase ‘Let your Ad Meet Tweets’ registered as a trademark. Twitter sought ownership over the term as it contested that its own users had come up with the term. In pursuance to the recent settlement, Twittad will now transfer its registered trademark ‘Tweet’ to Twitter. Other details of the settlement remain undisclosed due to the confidentiality agreement between the parties.
EU adopted DIRECTIVE 2011/77/EU on 12 September 2011, which amends Directive 2006/116/EC on the term of protection of copyright and certain related rights. The legislation brings changes in the term of protection given to performing artists, producers and sessions musicians featured on recorded works and also introduces certain accompanying measures which aim specifically to help performers.
Being one of the deliverables of the commission’s strategy on intellectual property rights adopted in May 2011, this directive narrows the gap between the copyright term of protection for authors (currently life plus 70 years after the authors' death) and the term of protection for performers (currently 50 years after the performance).
This Directive extends the term of copyright for performers to 70 years by amending the Directive 2006/116/EC. Current EU laws protect recorded musical performances for a maximum of 50 years after their fixation in a record. This means, that performers can extract the fruit of their works over a period of 50 years. On the other hand, composers and lyricists receive copyright protection throughout their life and for 70 years after their death. The extension of the term of protection for performers now adopted means that artists in Europe will receive a fairer treatment and be assured of a steady income for their performances during their entire lifetime.
The accompanying measures provided under the Directive aim to give complete control to the performers. This includes-
Out of the 27 member countries, eight countries have rejected the extension.
With an aim to harmonize U.S. Patent law with that of foreign jurisdictions and to strive for more efficiency in the U.S Patent Office, President Obama signed the "America Invents" Act on September 16, 2011.
The changes cover a broad array of legalities such as changing form a “first to invent” to a "first to file" system, mechanisms for challenging patents, entitlement to file, the scope of prior art against which patent applications are assessed, prior user defences, business method patents and last but not the least a few modifications in the U.S Patent Office’s fee structure.
Our associates in the USA have brought to our notice a summary of the Major Changes to the U.S. Patent Laws and the Effective Date for each of the changes. In order to view the various changes to the U.S. Patent Laws along with their respective dates of applicability, please visit our website by following this link.
In its recent judgment, in the case of Music Broadcast Pvt. Ltd. vs. Super Cassette Industries Ltd., the Delhi High Court has held that the Copyright Board can issue interim orders under Sec. 31 of the Copyright Act. Now, the exploitation of the copyrighted work under Sec. 31 will not be hampered during the pendency of the suit. Section 31 deals with the power of the copyright board to direct the Registrar of Copyrights to grant compulsory license.
The judgment took support from common law cases to explain the origin of the circumstances in which an ad interim injunction can be and should be granted. It also spoke about Polini vs. Gray ((1879) L.R. 12 Ch. D.438) to justify any grant of such an injunction in the absence of express statutory power.
The Hon'ble High Court further elucidated the point that interim orders can be passed even where the concerned statute does not expressly grant such power. The judgment also tried to discern the intention of the statute and reasoned out the necessity for copyright board being entitled to pass such an order.
The Hon’ble Court stated “If interim relief is impermissible, the broadcasters will be disentitled to play any part of the repertoire of music owned by the copyright holder because of the latter refusing to grant a license. This will, in effect, compel the broadcaster, or any party similarly placed, into succumbing to the demands of the owners. Litigation does not come to an end in days or months but is protracted over years and sometimes decades. If during this period, a party is unable to play or broadcast music, even though it is willing to pay a reasonable fee for it, and even though there is no other reasons for the refusal to grant a licence, it will have no alternative but to eventually give up its action under Section 31 of the Act. The purpose of the enactment will, therefore, be rendered futile and nugatory. It, therefore, appears plain to us that the Board must, after giving the parties a meaningful opportunity of being heard, return an opinion on all the three factors mentioned above viz. prima facie case, balance of convenience and irreparable loss. If it finds that all the three factors are in favour of the applicant, it should grant interim relief. It seems to us that where the controversy concerns only the quantum of licence fee, an interim protection should be granted.”
This judgment thus empowers the Copyright Board to pass interim orders during the pendency of proceeding under Sec 31. To read the full judgment please click here.
As an addition to the recent series of John Doe Orders for protection of films, the Delhi High Court has issued another such order to protect the movie ‘Speedy Singhs’ in 2011. The producers of Speedy Singhs had filed the suit against a few cable operators and against unknown Defendants for a temporary and permanent injunction in order to pre-empt any copyright infringement. The Hon’ble Court has issued the order against all the prospective Defendants, including unidentified persons, restraining them from indulging in piracy and activities such as displaying, releasing, showing, uploading, downloading, exhibiting, playing the movie, etc. The order was to remain in force till December 19, 2011.
‘John Doe’ Orders are mostly seen in the American and Canadian Legal practice. The term ‘John Doe’ indicates a placeholder in legal action and is generally used as a synonym to refer to an individual whose identity is not known to the world at large. The name ‘John Doe’ is used to identify anonymous Defendants, who have allegedly committed some wrong, but whose identity cannot be ascertained by the Plaintiff. These orders can be traced back to the reign of England’s King Edward III (1312–1377), when they were used to refer to unidentifiable Defendants in law. These are representative orders against an unidentifiable class of Defendants, rather than named persons, which allow the goods to be seized. In such orders, once the Defendant(s) are identified, ‘John Doe’ is replaced with the name of the concerned Defendant.
Indian Courts visited the scope of John Doe Orders for the first time in the TEN SPORTS CASE (Taj Television vs. Rajan Mandal 2003) whereby the Commissioner was empowered by the Delhi High Court to enter the premises of any cable operator illegally airing the football World Cup 2002. The Indian version of the order is known as ‘Ashok Kumar’ orders. The High Court of Delhi had also restricted the scope of such orders in the case. The judgment in the case of Indian Performing Right Society Ltd. Vs. Mr. Badal Dhar Chowdhry and Ors (2010) stated that vague/ indefinite injunctions may not be issued and that it can be an abuse of the process of the court and hence, can never be granted. It has also stated that the courts should be extremely cautious in granting such ‘John Doe’ orders and specify the extent of applicability of such orders, the product or article concerned to which it relates to and the steps that can be taken by the aggrieved party to enforce such orders.
John Doe Orders have become quite common in the Indian film industry as an effective way to curb piracy. It is evident from the recent orders of the Delhi High Court in cases such as the movie Singham in July 2011 and the movie Bodyguard in August 2011. However, this trend awaits a Supreme Court Decision to make it a Law of the Land.
The Government has decided to leave out Section 2(m) from the latest version of the Copyright Amendment Bill which legalizes the parallel imports of books and other copyrighted material into India. Sec. 2(m) reads as follows: ‘Provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.” It has been speculated that the government gave away to the pressure from the publisher lobbies and deleted it from the newest version of the Bill. The Parliamentary Standing Committee had earlier supported the Bill and had stated as follows: “that availability of low priced books under the present regime is invariably confined to old editions. Nobody can deny the fact that the interests of students will be best produced if they have access to the latest editions of the books.” This deletion is likely to impact the libraries and educational institutions that could import foreign copies of books without seeking permission of the copyright owner. The disabled are also not likely to be spared by the recent development, as many converted copyright material as well as books that require conversion to formats that are accessible to the disabled will not be freely available. Section 51 which allows only one copy of a book for personal use and Section 52(1)(zb) which provides for a number of activities for enabling access to the disabled do not include the right to ‘import’ any copyrighted works. Thus, it will still continue to remain difficult to buy cheapest editions anywhere in the world, without necessarily going through the publisher in India.
The Plaintiff, Radico Khaitan Ltd- manufacturer of alcoholic beverages, had registered its trade mark “8PM” in Class 32 (mineral water) and Class 33 (wines, liquors, whisky and alcoholic drinks) and sold whiskey under such trade mark. Carlsberg India Pvt Ltd, the Defendant, used the trade mark “PALONE 8” for marketing its beer. In a suit and application for interim injunction instituted by Radico against Carlsberg before the Delhi High Court, it was alleged that the use of numeral “8” by Carlsberg as a primary mark in its brand amounted to mala fide use of Radico’s mark. Radico, therefore, prayed that Carlsberg should be restrained from using the numeral “8” in relation to their products.
While deciding the Interim application for grant of injunction, the Hon’ble High Court was called upon to determine:
With regard to first point the Hon’ble Court opined that S.2(l)(m) of Trade Marks Act, 1999 defines “mark” which includes numeral. The prima facie registration of numerals depends upon its distinctive character.
Considering the facts, Court arrived at the following conclusions:
The Court also drew attention on S.30 which acts as an exception to S.29. According to this, use of a registered trade mark by any person was allowed if the use is:
It was held that “8” enjoyed nexus with the industry. Therefore, the use of the numeral by any other person including defendant was not “dishonest” and was protected under S. 30 of the Act.
It was also noted that the Defendant would incur irreparable loss if it was directed against using “8” especially when the Plaintiff did not carry a similar business. Further, the Plaintiff failed to make out a prima facie case in its favour. However, the Court allowed the Defendant to use the marks “PALONE” and numeral “8” together in the same line to avoid any confusion. Further, the numeral should be used in a different style.
The Plaintiff- Indian Express Ltd. and the Defendant – Express Publications Madurai through settlements in 1997 and 2005 agreed that the Plaintiff would own the trademark “Indian Express” and the Defendant would own the trademark “New Indian Express”. The Defendant would publish an English Daily titled “New Indian Express” only in the five southern states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa and Union Territories of Pondicherry, Enam, Andaman and Nicobar and Lakshadweep. The Defendant was also allowed to use the trademark on the internet for dissemination of news.
The case commenced after the Defendant started publishing the newspaper titled ‘Sunday Standard’ from New Delhi. Beneath the logo, it carried a plea to follow them on Facebook and Twitter at www.newindianexpress.com. It also carried information that the Chairman, Executive Editors and Advertisement also belonged to the ‘New Indian Express Group.’
The Plaintiff then filed an interim application before the Delhi High Court seeking an injunction against the Defendants to restrain them from using the trademarks “New Indian Express”, “Indian”, “Express” and “New Indian Express Group” and other such combinations.
The two main issues before the learned judge were:
The Hon’ble Court providing its views on the Agreements between the parties stated “Under the supplementary agreement dated 12th August, 2005, defendant No. 1 was permitted to use the title "New Indian Express" or any of its derivatives/abbreviations on the Internet and this use does not have and cannot have any geographical limitations. By inviting the readers to join to the website www.expressbuzz.com / www.mexpressbuzz.com or to join them on Facebook or Twitter, the defendants are only promoting their Internet business in exercise of the Internet rights given to them under the supplementary agreement. To my mind, no exception can be taken to such promotion of the Internet business of the defendant under the name "New Indian Express" by the plaintiff. I fail to appreciate the contention of the learned Counsel for the plaintiff that the agreements between the parties prohibits the defendants from promoting/advertising their business outside the five southern States/Union Territories specified in the agreement, if it involves use of the express "New Indian Express". Admittedly, the defendants are entitled to publish an English daily under the name "New Indian Express" in the southern States and Union Territories specified in the agreements. There was no prohibition, in the agreements between the parties, against promotion/advertisements even of the newspaper "New Indian Express" outside the southern States and Union Territories specified therein. Hence, if the defendants want to advertise those newspapers outside the specified southern States/Union Territories specified in the agreement, by giving advertisements in other newspapers or on television or radio, that, to my mind, would not constitute a violation of the agreements dated 05th February, 1995 and supplementary agreement dated 12th August, 2005 and in any case would not amount to passing off the newspaper of the defendant as that of the plaintiff.” The Court further stated “In my view, if the defendants advertise the newspaper published by them from any of the five southern State/Union Territories specified in the agreements in any newspaper whether it is Times of India or Hindustan Times or The Sunday Standards that would neither amount to passing off nor would that be in violation of the agreements between the parties. Same would be the position if the advertisements of other newspapers are published in "The Sunday Standard" irrespective of whether it is advertisement of "Hindustan Times" or "Times of India" or "New Indian Express". If tomorrow, the plaintiff advertises its newspaper "Indian Express" in any of the five southern States/Union Territories specified in the agreements, in a newspaper published from these southern States/Union Territories, can it be said that by doing so the plaintiff was trying to pass off its newspaper as that of "New Indian Express Group". The answer again would be in negative. Therefore, to my mind, such advertisements or use of the expression "New Indian Express" or "New Indian Express Group", the way they have been used so far do not amount to passing off and also do not constitute the violation of the agreements between the parties.”
On the aspect of the authors of the editorials/articles referring to themselves by name and as Executive Directors of the New Indian Express, the Court ruled that they were not passing off their paper as Plaintiff’s.
The Hon’ble High Court also looked into the aspect of the Defendants using these marks to mislead the public into believing that the Plaintiff and Defendant were one group. Defendant informed the Court with evidence that the Plaintiff had acquiesced to the use of the ‘New Indian Express Group’ which was visible in the Publications and the Joint Letters sent by them.
The Hon’ble High Court thus, refused to grant an injunction to the Defendant but asked them to mention ‘Madurai’ with the ‘New Indian Express Group’.
In a recent case decided by the division bench of the Delhi High Court upholding the decision of a single judge it was held that:
“Just as the word 'LOW ABSORB', an expression relating to the character of the product, i.e. edible oil was held not entitling the person to an exclusive use who first used the said words, in the decision reported as MANU/DE/3131/2010 : 174 (2010) DLT 279 Marico Ltd. vs. Agro Tech Ltd., the adoption of the name of a deity who is associated with a particular trait relating to goods, in the instant case Lord Krishna having a trait which has an association with milk and butter, would stand on the same low footing for protection as would be purely descriptive expressions pertaining to the subject product. ”
The Appellants, Bhole Baba Milk Food Industries Ltd. are manufacturers of milk and milk products and also registered owners of the label mark “KRISHNA” which falls in Class-29 of the Trade Mark Act. The Respondent, Parul Food Specialties (P) Ltd. are also manufacturers of milk products who started selling ghee under the brand “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. In the suit brought on by Bhole Baba Milk Food Industries Ltd., the Single Judge, Justice Rajiv Shakhdar, ruled in favour of the Defendants- Parul Food Specialties (P) Ltd and stated that prima facie in order for a mark to achieve secondary distinctiveness, the consumer should immediately be reminded of the product of the owner of the mark by looking at it. He also held that “Krishna” being a household name could not achieve secondary distinctiveness and as a result the Bhole Baba Milk Food were not entitled to claim monopoly over the name of the deity.
Aggrieved by the decision of the Single Judge, Bhole Baba Milk Food appealed before a Division Bench of the same Court.
The Hon’ble Division Bench upheld the decision of the Hon’ble Single Judge and reiterated that the name of the deity cannot be monopolized as it was in the public domain and if done so, it would ‘certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products.” They also ordered Parul Food Specialties (P) Ltd. to print the words “PARUL’S LORD” with the same prominence as the word ‘KRISHNA’. They also concluded that registration by Bhole Baba Milk Food was not per se for the word KRISHNA but it is for the word KRISHNA written in a distinctive form. It stated that registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin.
The aforementioned decision begs the question- would this decision apply to other registrations having the names of Deities such as “MARUTI” who is the god of wind? Would Maruti Suzuki India Limited not be allowed to enforce their trade mark since the product that they apply it to, happens to be related to transportation? Let’s take the case of the Trade mark NIKE. Nike is the Greek goddess of strength, speed, and victory- in this case would they not be able to enforce their trade mark because they apply it to products related to sport? Would it be considered as descriptive?
The Division Bench of the Bombay High Court ordered Red Chillies Entertainment Pvt. Ltd. and others to deposit a sum of Rs. 1 crore with the Court pending determination of the infringement action brought about by Mr. Yash Patnaik. The decision was given upon hearing of a petition for interim injunction filed by Mr. Yash Patnaik who claimed that Red Chillies, the producers of the block buster movie Ra. One, copied the concept that Mr. Patnaik came up with in the form of graphics, illustrations and drawings and the scenes.
Mr. Patnaik claimed that his concept of futuristic superhero ‘One’ was copied by Mushtaq Sheikh, the script-writer of Ra.One.
Division bench comprising Justice Mohit Shah and Roshan Dalvi concluded that prima-facie the Plaintiff has copyright in the ‘concept, including the material, graphic, illustrations and drawings, monograms and scenes and pictures of flying robots in the gadgets’ which is similar in ‘attributes and appearance’ as Ra.One. The Hon'ble Court thus, has ordered the Defendants to deposit Rs. 1 crore for the scheduled release of the film which was done.
The Plaintiffs, South African Breweries International (Finance) B.V. and their Indian counterpart, based on a joint venture of the SAB Group filed a suit against the Defendants, Mohan Goldwater Breweries and Mohan Meakin Limited after the Defendants sent a ‘Cease and Desist Letter’ to the Plaintiffs asking them not to use the word ‘Castle’ for the sale of beer in 2002, as it seemed that the Plaintiff were passing off their goods as that of the Defendants.
The Defendants had initially registered the Trade Mark OLD CASTLE and OLD CASTLE; However, the registration lapsed for non payment of renewal fees and moreover the Defendants sold no beer under the trade mark. The Defendants did however send the Plaintiffs a cease and desist notice demanding that the Plaintiffs refrain from using the trade mark CASTLE and threatened legal action if the Plaintiffs did not comply. The Plaintiffs who had been importing beer bottles and cans under the Trade Mark CASTLE since 1994 had prior use of the mark and apprehending that the Defendants may infringe the Plaintiff’s trade mark filed a suit before the Hon’ble Delhi High Court for permanent injunction.
The Plaintiffs approached the Hon’ble Delhi High Court seeking an injunction to restrain the Defendants from manufacturing, selling, offering for sale or advertising any beer and alcoholic beverages using the trademark ‘Castle’. During the course of the trial, the Plaintiffs’ trademark ‘Castle’ got registered.
The three issues dealt by the Court were:
The Court then replied:
The Controller General of Patents, Designs and Trade Marks in September 2011 issued instructions for patent Examiners and Controllers, detailing their roles and responsibilities in an effort to speed up the examination process.
The notification stated that files were shuttled electronically between the Examiners and the Controller without any reason which contributes to the delay.
The notification lays down, inter alia, guidelines for dealing with patent applications and handling examination reports, draft gist of objections (FER) and hearings.
These efforts being taken by the IPO would go a long way in streamlining the patenting process and ensure quicker and more effective registration of patents. To read the full circular No. 4 of 2011 please click here .
A petition for design cancellation which was filed by Britannia Industries Pvt. Ltd. against registered Designs relating to Biscuit Packets of Parle Products Pvt. Ltd. was dismissed by the office of the Controller of Patent and Designs for a second time. Parle Products Pvt. Ltd. was represented by RKD in the matter.
In the year 2006, Britannia had filed a petition for cancellation of two designs of Parle, numbered 188156 and 188157. On consideration of the pleadings of the parties and the evidence adduced, the Hon’ble Deputy Controller of Patents and Designs before whom the proceedings were conducted, dismissed the petitions for cancellation.
Aggrieved by the order, Britannia appealed against it before the Calcutta High Court. The Hon’ble High Court on 29-06-2010 ordered that the matters be remanded back to the office of the Controller of Patents and Designs and the matters be considered afresh.
The matter came before the Hon’ble Assistant Controller of Patent and Designs, Dr. S. Chattopadhyay. After considering the contentions and submissions of both parties and considering the evidence put forth by the parties the Hon’ble Assistant Controller of Patent and Designs observed that Britannia had adduced no evidence to show that the Designs in question lacked novelty or originality or eye appealing features. The Hon’ble Assistant Controller of Patent and Designs thus held “……. I am of the opinion that the Petitioner was not able to establish any of the grounds of cancellation. I therefore, dismiss the petition for cancellation of registered design …. ”
Britannia has yet again appealed the decision and the matter is pending before the Calcutta High Court.
R K Dewan’s efforts in the field of IPR have been galvanizing in the past decades. It has been employing its best forces to spread the message of intellectual property rights and their benefits. With its unique expertise and firm determination, it has been able to untangle some of the most complex problems in the field of IPR in the recent past.
In order to give a fresh whisk to IPR and create a general awareness about the subject, RKD incorporated certain changes in its approach and started to interact with the youth, inventors and the entrepreneurs of our country ranging from the grass roots to the top echelon. It has been trying to reach all corners of the country by its various initiatives of conducting seminars, workshops and certificate programmes.
Its most recent contributions in the field of IPR in the last few months are as under:
- Noted Advocate N. K. Bhardwaj and Advocate S.P. Singh on the 9th of August 2011 spoke on "Copyright Management in Acedemic Institutions" at a Workshop relating to Intellectual Property Rights Awareness Program organised by TIFAC at Guru Jambheshwar University, Hisar (Haryana)
- At a workshop on “Intellectual Property Rights Awareness Program” organized by TIFAC at the Guru Jambheshwar University, Hisar (Haryana) and Choudhary Devi Lal University, Sirsa (Haryana). Advocate N. K. Bhardwaj and Advocate S.P. Singh shared their immense experience in the field, and enlightened the students with their presentations on ‘Copyright Management in Academic Institutions’.
- RKD was invited to the Thapar University, Patiala (Punjab) in September where it covered the latest subject of ‘Patentability of Biological Products with Pharmaceutical Activities’ at the ‘Intellectual Property & Innovation Management in Knowledge Era’ Workshop. Patent Associate and Patent Agent Megha Kathuria represented RKD and received a commendable response from the faculty and students alike.
- In November the Institute of Entrepreneurship Development U.P. (IEDU) (Lucknow) organized the Intellectual Property Rights Awareness Program for MSME Entrepreneurs at Gorakhpur, UP to help the entrepreneurs become familiar with the concept of Intellectual Property. RKD was represented by Bikash Ghorai (Adv.) and S. P. Singh (Adv.) and their presentation was very well received.
- Another prominent Awareness Programme was a Seminar organized in the winter capital of Jammu. The PHD Chamber of Commerce and Industry organized a Seminar for enlightening the MSME Entrepreneurs on the ‘Key to success in Domestic and International trade.’ Advocate N. K. Bhardwaj participated and gave a presentation at the seminar.
Symbiosis Law School, Pune too requested the expertise of RKD and invited members of RKD to speak at a 2 day Certificate Programme on IP Management. Dr. Mohan Dewan and Dr. Niti Dewan the principal heads of R.K. Dewan & Co., Mr. Prashant Patankar, Patent Associate and Advocates Padmaja Khandge Pathak and Tushar Shrikhande all spoke on various topics and lent the students the benefits of their vast and varried experience in the feild of Intellectual Property. The topics of IP Audit, Financing and Valuation of IP, IP Analysis, IP Mapping, Landscaping, Portfolio Management, Regulatory Affairs, Corporate Structure, IP Management Tools, Brand Strategy, CR & ID Management, Licensing, Anti-Competition Issues, Franchising, Royalties, Non-Disclosure Agreements, IP Security, IP Broking etc. were covered. RKD’s Advocates as well its Patent Associates and Consultants contributed largely to the areas covered by this programme but it was the initiation and student friendly approach of Dr. Mohan Dewan and Dr. Niti Dewan that made this venture a success.