A recent hilarious case of parody being mistaken for infringement arose in Florida, USA when a company called RC3, Inc. filed a complaint for declaration against the teen pop star Justin Bieber. RC3 prayed that the Florida District Court declare that their iphone/ ipad/ android mobile application game titled ‘Joustin Beaver’ does not inter alia, infringe the trade mark rights of Bieber.
The complaint for declaration arose in response Justin Beiber’s attorneys sending RC3 a cease and desist notice, interalia, demanding that RC3 cease exploitation of the APP.
The game in controversy is hilariously titled ‘Joustin Beaver’ and according to the complaint of RC3 “…..is a parody of the commercial success of the Defendant (Beiber). The parody App portrays a beaver floating on a log down a river. The beaver presets with bangs, a lance, and a purple sweater. The beaver knock “Phot-Hogs” that are attempting to take his photograph into the river with his lance. The beaver also signs “Otter-graphs”. The beaver also must dodge the “whirlpool of success” which will lead beaver out of control, while navigating the river.”
The matter is currently pending.
The Immensely popular “iPAD” tablet of Apple faced serious legal issues in mainland china concerning the trade mark “iPAD”. The Chinese company, Proview, which sued Apple for trade mark infringement claims that it started using the trade mark in the year 2000. In the year 2009 Apple had entered into an agreement with the Taiwanese unit of Proview (Proview Electronics Co. Ltd.), for the purchase of the “IPAD” trademarks in a number of countries including China. However Proview China claims that the 2009 contract between apple and the Taiwanese unit to buy rights to the iPad trade mark in China was invalid because Proview’s Shenzhen unit that owned them wasn’t a party to the agreement.
The parties have entered into formal legal proceedings in both the U.S. and China against each other. Inter alia, Proview China has demanded that the authorities in various Chinese cities prohibit retail sales of Apple’s IPADs. Some cities complied and other cities have so-far, refrained. Proview China has also demanded a ban on exports of Apple’s IPADs from China, but so-far Chinese authorities have refused to comply.
Reports indicate that the parties are attempting to settle the matter through negotiations.
The moral of the story- before having IP licensed or transferred to yourself, conduct a thorough due diligence to see if the person assigning/ licensing the rights does actually have such rights to assign / license.
According to US reports, Beyonce and Jay Z have decided to trademark the name of their one month old baby, Blue Ivy Carter’s . Having appeared in her father’s video being just a few hours old, Blue Ivy Carter is a brand in the making. An application for grant of trademark was filed by Beyonce’s company BGK Trademark Holdings with the US Patent and Trademark Office.
Two other individuals had tried to trademark the name after the birth of the baby on January 7th which prompted Jay Z and Beyonce to file their application. On January 11, fashion designer Joseph Mbeh attempted to trademark "Blue Ivy Carter NYC" and later stated that his intention was to create a line of products for Jay-Z and Beyonce, while on January 20, a second applicant tried to trademark "Blue Ivy Carter Glory," for a line of fragrances. The Trademark Office rejected both applications stating that the name belonged to a very famous infant.
The application filed by Jay Z and Beyonce is still pending. If approved, it would entitle the parents exclusive use of their baby’s name for any brand or endorsement and would also prevent other businesses from taking advantage of the already famous name.
Justice John Tsoho of the Federal High Court in Lagos, Nigeria sentenced three Indian brothers namely Chandru Ganglani, Bharat Ganglani and Trishul Ganglani, to one-month imprisonment each for contempt of court after they allegedly disobeyed the Court’s orders on a trademark infringement issue.
The trio are the directors of a plastic company, Sacvin Nigeria Limited. Earlier, Rike Industries had filed a suit against Sacvin Nigeria Limited alleging that the defendant company was manufacturing and selling plastic products which infringed the trademark of Rike Industries Limited.
On 9th July, 2009, Justice John Tsoho had passed an order for interim injunction against Sacvin Nigeria Limited, thereby restraining them from engaging in the trade or business of manufacturing and selling or distributing the plastic products which infringed the trademark of Rike Industries Limited.
The Company however allegedly disobeyed the Court’s orders and continued activities that would amount to the said trademark infringement.
A hand held gadget has been invented to detect counterfeit alcohol without opening the bottle. This device enables users to analyze contents of a bottle by using a beam of light. The beam of light produces a signature of the liquid which is compared with the signature of the genuine brand. If the match is not identical, it indicates that the bottle is a fake.
The device, developed at the University of Leicester Space Research Centre, is now being designed for sale. Such a device is useful in retail outlets or can be used by wholesalers to test the authenticity of alcohol.
This device has been used to test the authenticity of whisky but can be applied to any form of alcohol. It may require alcohol to have some colour to provide a certain result. Therefore the device when applied to vodka may not produce accurate results.
The Copyright Act (Amendment) Bill 2012 was passed in India's Lower House of Parliament on May 22nd,2012 and by the Upper House on May 17th, 2012 and now awaits final Presidential approval to become law. The Bill is aimed at correcting an imbalance in India's copyright law which was seen as favoring film producers and record labels rather than the lyricists, script writers and song composers. After the Bill was passed in the Rajya Sabha, Mr. Javed Akhtar who has been at the forefront of the battle for recognition and acclaim of the rights of song creators said “Yes, we are all very satisfied with the amendments that have been made. Now our creations will be non-assignable. We will sell the rights. Right now, we sell our compositions to the production house and they re-sell it to music companies, cellphone companies as ring tones, ads and use it wherever they can. In return, we, the creators of that song, music, tune, we don't get anything. But now, hopefully, those rights will lie with us. Now our words, songs, stories, tunes, will be ours and ours only in the legal terms. Even in the present law, we have a share but we are shortchanged by production houses and music companies. We can claim the royalties they earn from such dealings legally and also on our own,"
The following are the salient features of the bill:
With an aim to curb piracy, Section 65A has been inserted and states the following:
“Any person who circumvents an effective technological measure applied for the purpose of protecting any of the rights conferred by the Copyright Act, with the intention of infringing such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine. However, the following are the exceptions:
Doing anything referred to above, for the purpose not expressly prohibited by this Act:
Provided that any person facilitating circumvention by another person of a technological measure for such a purpose shall maintain a complete record of such other person including his name, address and all the relevant particulars necessary to identify him and the purpose for which he has been facilitated; or
In August 2011, Natco Pharma Ltd., an Indian generic drug manufacturer, had applied to the Controller of patents for grant of “compulsory license” in respect of Bayer’s patent covering an anticancer drug, Sorafenib Tosylate, meant for patients with advanced kidney and liver cancer. Mr. P.H. Kurian, heard the evidence adduced and the arguments put forth by the parties and gave this landmark and well reasoned decision, on his last day in office as Controller General of Patents on March 12, granting the country's first compulsory license to Natco, to produce and market an anti-cancer drug.
The main points at issue were three fold – those of satisfying the requirements of Section 84 (1)
“84. Compulsory licences.
Emphasis has been supplied by us.
The facts of the case are as follows:
THE CONTROLLER'S DECISION
The Controller's decision, in favor of granting a compulsory license, was based on his determination that the question of whether a drug was available at a "reasonably affordable price has to be construed predominantly with reference to the public" and under the "admitted facts" of this case; these considerations fell in favor of granting the license. The Controller found that all the 3 criteria above were satisfied in this case, namely:
The Controller granted the compulsory license u/s 84 of the Patents Act, 1970 to Natco Pharama Ltd. in the patent relating to sofranib granted to Bayer with, inter alia, the following terms and conditions:
following terms and conditions:
The Controller also specified that NATCO shall solely and exclusively be liable for its products and Bayer shall in no way be responsible for NATCO’s product liability.
We feel that this landmark decision will have far reaching consequences for the community as whole and shall result in more affordable treatment for all in India.
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The recently released bollywood film “Agent Vinod”, like many others in the past has found itself in the midst of a copyright controversy. An Iranian pop band called ‘Barobax Corp’, has served a legal notice on music director Pritam Chakraborthy who has composed the song titled ‘Pyaar Ki Pungi’. The music band has alleged that the prelude of the song, which has become a rage now, has been "lifted without any change" from the title song, 'Soosan Khanoom', of their album. The notice that has also allegedly been served on the producers, director and Super Cassettes which owns the music rights, calls upon them to refrain from releasing the said song in the film or else the Iranian band would be compelled to initiate proceedings to seek a restraining order and necessary compensation.
Barobax Corp is a music company founded by three musicians Khashayar Moradi Haghgoo, Keivan Moradi Haghgoo and Hamid Forouzmand in Canada. The three musicians obtained a copyright registration certificate in respect of the song Soosan Khanoom.
The Aggrieved Iranian Band moved the Bombay High Court seeking a stay on the Saif Ali Khan-Kareena Kapoor starrer, along with a restraining order from using the track in the film.
The Hon’ble Bombay High Court perused the documents on record and heard the arguments made on behalf of the Plaintiffs. The Hon’ble court found that the certificate on record was in the name of the 3 musicians and not in the name of the Plaintiff, Barobax Corp. Furthermore, no evidence was adduced indicating that the copyright in the song was assigned to the company. The Court found that it was of no consequence that the 3 musicians who are the authors of the song Soosan Khanoom are also the promoters of the company Barobax Corp.
The Hon’ble Court held “It is not necessary to compare the works at this stage for if the allegation is that there is an infringement of the copyright in the sound recording, there is nothing to establish the same on facts. In other words, there is nothing on record that establishes that the alleged infringing work was made from the sound recording which allegedly belongs to the plaintiff.”
The Hon’ble High Court refused grant of ad interim injunction to the Iranian band on the ground that they were not interested parties to the suit. However subsequently Iranian band Barobax apologized to Pritam for leveling plagiarism charges against the alleged infringing number from the movie.
The IPAB recently gave a well reasoned order resolving the ongoing dispute between the Times Publishing House Ltd. (“TPH”) and the Financial Times Ltd. (“FTL”). The order concerned itself with 5 matters pending before the authority between the parties.
FTL is the UK entity which runs the globally renowned Financial Times publication. TPH is the entity which owns the well known Indian publication “Economic Times” which features a supplement titled Financial Times.
The Following Trade marks were at issue:-
The IPAB considered the evidence adduced by both parties and the arguments put forth and found that FTL proved its trans -border reputation and its intention to enter India and that the mark had become distinctive of FTL. However, it also reasoned that the ‘use’ of the trade mark has to be considered to see if the mark deserves to remain in the Register of Trade Marks. The Hon’ble tribunal came to the conclusion that though, FTL had very few sales in India, there were sales nonetheless, and the mark did have a distinctive character and was subscribed to by the business elitist. However, the Hon’ble Tribunal also stated that though FTL had an un-deniable reputation it has failed to prove use of the mark Financial Times in class 16 since 1948 and therefore the Hon’ble Tribunal held that the mark wrongly remains in the Register.
The IPAB observed that TPH did have notice of the reputation of FTL and its periodical and had also attempted to negotiate a syndication agreement with them. In spite of such knowledge THP registered the trade mark Financial Times in its own name. Furthermore, the fact was that THP was providing complementary copies of a supplement titled “Financial Times” with its paper the Economic times. Thus, sale of the Economic Times and enclosing a supplement titled “Financial Times” cannot be considered use of the trade mark sale of the “Financial Times”. The Senior Counsel for FTL submitted that “It is only when people voluntarily purchased the newspaper in question, one can assess the strength of the mark. Above all, TPHL which has attacked the same mark as being descriptive cannot take a different stand in the rectification proceedings filed against it.” The Hon’ble Tribunal held “TPHL knew about FTL, it knew about its circulation in India; so, its adoption of the same cannot be accepted. TPHL’s Financial Times was circulated as a complimentary copy along with Economic Times. So, the circulation figures may be a matter of celebration for Economic Times as a mark, but does not push TPHL’s Financial Times any further. Therefore, we hold that the applicant’s (TPHL) mark shall not remain in the register”
With regard to FTL’s mark Financial Times in class 9, the Hon’ble Tribunal held “FTL has not placed any evidence of use of the mark ‘Financial Times’ in class-9 goods. Whatever evidence it has produced to the extent to which they are admissible or relevant are all with regard to class-16 goods. Of course, the application was a proposed-to-be-used application, but the same was applied for in the same year 1987….. Even if we give that elbow room to FTL it does not help. In view of the fact there is absolutely no evidence with regard to this class of goods, we do not think that FTL’s mark in Class-9 merits survival on the register.”
With regard to the mark FT in class 16 the Hon’ble tribunal erroneously determined that the mark was filed on a proposed to be used basis and adjudged that the mark may remain on the register. The Advocates of FTL filed an application with the IPAB to hold off enforcing the order of the IPAB until determination of the appeal to be filed against such order. Interestingly in the aforementioned application the Advocates of FTL stated as under “ORA/67/2007/TM/DEL was dismissed and the financial Times Limited’s registration for the trademark FT under No. 468932 was retained on the register of the Trademarks. It is however, Pertinent to mention that while the IPAB correctly held that the mark FT had come to be associated with the Financial Times Limited, it erred in observing that the same had been applied for on the ‘proposed to be used’ basis, when in fact the said claim was only in respect of ‘other goods covered under class 16’. Use under the said registration had been claimed in respect of newspapers since the year 1948 and year 1977 in respect of printed materials, periodicals publications, and books.”
On 16th February, 2012, the Madras High Court allowed a Writ Petition filed by Rhizome Distilleries Pvt. Ltd and thereby quashed an order passed by the IPAB directing the Registrar of Trademarks.
Earlier, Pernod Richard S.A., which is engaged in the business of manufacturing and distribution of wines, liquors and spirits had filed an application before the Intellectual Property Appellate Board for removal/rectification of the petitioner's trade mark 'Rhizome's IMPERIAL GOLD', stating that they are the registered proprietors of the trade mark 'IMPERIAL BLUE', which is registered in India since 1997 and is a coined mark, having highest degree of inherent distinctiveness in relation to alcoholic beverages.
The petitioner, Rhizome Distilleries Pvt. Ltd is a bottling and blending unit, which possesses recognized liquor brands in the market capturing middle and lower segments. Some of the brands of the petitioner are 'IMPERIAL GOLD WHISKY', 'MARSHALL WHISKY', 'ROYAL GOLD DELUXE WHISKY', 'ROYAL EAGLE WHISKY', 'THE FAMOUS HORSE WHISKY', 'CREDIT CARD SELECT WHISKY' and '1000 OAKS LUXURY WHISKY'. The trademark 'RHIZOME'S IMPERIAL GOLD' was adopted by the petitioner since 2002.
The IPAB allowed Pernod Richard S.A.’s application for cancellation of the writ petitioner’s mark 'RHIZOME'S IMPERIAL GOLD' and stated the following:
“the registration of the trade mark 'IMPERIAL GOLD' is in contravention of the provisions of section 11 of the Trademark Act; the writ petitioner's trade mark was causing confusion and deception in the minds of the public; Pernod Richard S.A. has been using the similar identical trade mark since 1997, whereas the writ petitioner has adopted the trade mark only in the year 2002, but launched the product bearing the impugned trade mark in the year 2006; on the date of application for registration by the writ petitioner in the year 2002, Pernod Richard S.A.'s trade mark was already put to use and there was likelihood of confusion and deception; furthermore, it is the contention of Pernod Richard S.A. that they are the registered proprietor of IMPERIAL RED, IMPERIAL BLUE, etc. and in such circumstances, there is every possibility to cause confusion”
While deciding the fate of the Writ Petition filed by Rhizome Distilleries Pvt. Ltd against the order for cancellation of the mark “'RHIZOME'S IMPERIAL GOLD' passed by the Intellectual Property Appellate Board, the Madras High Court took into consideration two questions:
The Honorable Court relied on two factors for delivering its judgment:
The honorable Court over-ruled the IPAB’s order and allowed the Writ Petition by stating the following:
“Undoubtedly, the word 'IMPERIAL' is a common and universal word. As observed earlier, nobody can have an exclusive right over the said word. If the trade mark of the petitioner, 'RHIZOME'S IMPERIAL GOLD', is compared as a whole with the trade mark of Pernod Richard S.A. 'IMPERIAL BLUE' without making any dissection or splitting up the word into several words, in our opinion, it would not cause any confusion in the minds of the purchasers. Further, in our considered opinion, the grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trade mark. The said principles cannot be applied for rectification of the registration.” Emphasis provided by us.
Great News!! Our Pune branch now has a new building!! The building is fully operational now. To see pictures of the same please click here.