Oct 18

RKD NewsNet October 2018

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

Apple Inc. vs WARF

The case was instituted in 2014, by Wisconsin Alumni Research Foundation (WARF) who manage patents for the University of Wisconsin Madison, against Apple Inc. claiming that the iPhone 5S, iPad mini with Retina Display, and iPad Air all benefit from an information processing system called the A7 processor, developed at the University of Wisconsin - Madison and patented in 1998. WARF demanded damages and an injunction to stop the sale of any product using the A7 processor until licensing payment was agreed upon. The A7 processor powers older iPhones and iPads. The technology improves battery life and the efficiency of processors by having them execute commands efficiently.

In 2015, the jury found Apple guilty of patent infringement and ordered to pay WARF $234 million as damages. Further, WARF filed a separate lawsuit against Apple over chips it uses in the iPhone 6s, iPhone 6s Plus, and iPad Pro models.

In 2017, the US District Judge denied Apple’s appeal to reverse the findings of 2015 and instead doubled the damages payable to WARF bringing it to the tune of $506 million. This increase in damages was awarded to WARF since Apple did not discontinue its products and instead continued use of the patent until it expired in 2016.

Apple Inc. then filed an appeal at the US Court of Appeals, where the judge ruled in favour of Apple and stated that, the evidence presented before the court of law at the time of trial was insufficient to prove infringement of WARF’s patent.

Thus, the lack of evidence which was something that could have been easily produced as the patent existed and so did the product, the University lost more than $500 million. It is once again clear that proper production of evidence is the most important strategy in winning an IP litigation.

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Pat-INFORMED - A Global Database

The terms - Patent and Invention are inter-related with one another. However, these inventions, are not limited to only technological upgradation of machines, but in fact play a vital role in the scientific advancements made in the pharmaceutical field and enable cures to innumerable diseases. The International Federation of Pharmaceutical Manufacturers and Associations (IFPMA), based in Geneva, have official relations with the United Nations and contribute industry expertise to find solutions that improve the global health.

Recently, WIPO and the IFPMA developed a program along with twenty leading research-based biopharmaceutical companies, called the the Patent Information Initiative for Medicines (Pat-INFORMED). The aim of this program is to make it convenient for national and international drug procurement agencies to access patent information. The program is built upon the industry’s firm belief that, an efficient patent system should not only work to sustainably incentivize innovation, but also to make information about patented inventions available and accessible to the public in order to inform and educate others, to add to the database of scientific and technological knowledge, and to promote the further advancement and improvement of technology. This database will initially provide information on granted patents for any products on the WHO Essential Medicines List. In addition, a facility for follow on enquiries will also provide a channel for procurement agencies to seek additional clarification regarding the patent status of the products they wish to procure.

The Pat - INFORMED initiative is based on creating a ‘Global’ version of the US Orange Book. For those unaware of the US Orange Book, it is a database that reflects the drug products, approved on the basis of safety and effectiveness by the Food and Drug Administration (FDA) and provides patent information concerning the listed drugs. The US Orange Book has been in force since 1984.

The implementation of this database will have positive impacts on researchers, patent holders, pharmaceutical agencies and many others working in the profession as it will ease the process of procuring information on patented medicines and also encourage further technological advancements and experiments on such patented medicines.

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Broken-Hearted Girl, Beyoncé

The International Singer/Artist Beyoncé recently filed for a Trademark Infringement Case against a Texas-based company called ‘Feyoncé’, operated by Andre Maurice and Leana Lopez (No! she’s not related to Jennifer Lopez). Beyoncé sent a cease & desist notice to the duo in February, 2016 asking them to cease using the name ‘Feyoncé’ as their brand name, as it is likely to create confusion among the public making them believe that the products were connected to the line of fashion run by her.

Beyoncé owns trademarks for her name and variations of it, including ‘Beyoncé’ and ‘Beyoncé Rise’ and even owns a website by the name of ‘shop.beyonce.com’ which consists of products such as apparel, headgears, perfumes and the likes. The ‘I am……Sasha Fierce’ album singer did not receive any reply from the duo Andre Maurice and Leana Lopez, following which she filed for a Trademark Infringement Suit at the US District Court, New York asking the court to serve an injunction on the company Feyoncé from selling, mugs, hoodies, t-shirts and the likes claiming that the company is infringing her rights and attempting unfair competition and trademark dilution. The singer also claimed that products sold under the name Feyoncé contained lines from her songs which would further trigger confusion among the consumers.

In March 2016, the USPTO refused from registering the mark Feyoncé, however, their products were still available in the market. On October 1, 2018, the District Court held that, though the text, font and the pronounciation of the terms Feyoncé and Beyoncé are similar, the term Feyoncé has a different connotation. The Court concluded by saying that, even though there was clearly pun intended by the defendants, however, by replacing the letter ‘B’ with ‘F’ the defendants term Feyoncé is pronounced similar to the word ‘fiance’ resulting in establishing the difference between the brands and thus, not creating any confusion among the public.

Thus, there is no trademark infringement as per the courts findings. Do you agree?

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‘Nivea’ a product name we have all heard and most likely, have used since time immemorial. The brand is well known for its skin care products.

In August 2017, a UK-based Company, Just Enough Programme (hereinafter referred to as JEP), applied to register a mark featuring the word ‘Nivea’ in the form of a label at the UK Intellectual Property Office (IPO). The mark was accepted by the UKIPO and thereafter published in September 2017 for goods in class 34, covering cigarettes, electronic cigarettes and the likes. Nivea, a Germany based company, opposed the trademark application on the ground that it was similar to the company’s registered trademark ‘NIVEA’ for cosmetic products.

The German Company further claimed that their trademark ‘NIVEA’ was well-known and has been widely advertised since 1922 and if a mark consisting the term ‘NIVEA’ was used by the applicant in the tobacco industry, the likelihood of confusion arising among the public who will believe that they have expanded into the tobacco industry. Further, NIVEA products are known for skincare whereas tobacco is considered harmful. The German Company, also stated that, NIVEA cosmetics was involved in the Charity Cancer Research UK and the registration of the mark NIVEA for tobacco is likely to hamper and tarnish the image of the cosmetic company.

The Intellectual Property Office concluded that though JEP created a unique label however, the use of the trademark NIVEA results in the marks to appear virtually identical. The IPO went on the state that, the NIVEA cosmetic brand enjoyed distinctive reputation since it was an originally coined term. The Beiersdorf’s opposition was thus successful and the UK Company ‘Just Enough Programme’ was ordered to pay damages worth USD 1640.

Thus, it can be concluded that in a case where two companies with similar trade names, the prior adopter of the mark can oppose the application for registration by later adopter of the mark even if the goods or services produced/provided are significantly different from one another.

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In a recent US case Royal Crown Company, Inc., Dr Pepper/Seven Up, Inc., Vs. The Coca-Cola Company, the Coca-Cola Company applied for the registration of the term ZERO in order to claim exclusive rights over it and monopolize use of the term.

The appellants, Royal Crown Company, Inc. and Dr Pepper/Seven Up Inc. (hereinafter referred to as “Royal Crown”) and Coca Cola Company, both market various brands of beverages. ZERO is used by both companies to indicate the calorie count or sugar content in their respective products.

Coca Cola, filed for several marks containing the term ZERO, viz., Sprite ZERO, Coca Cola Zero, Fanta ZERO, etc. and asserted that they were exclusively entitled to use ZERO as an element in their marks since the consumers identified ZERO with only their brands. The Patent and Trademark Office granted registrations to Coca Cola based on their assertion.

Royal Crown appealed to the US Court of Appeals against the exclusive rights given to Coca Cola over the term ZERO. The Court of Appeals in its ruling stated that the term ZERO is generic in nature and thus exclusive rights cannot be granted over such a term. The Court further stated that, the popularity or the scope of a distinctive quality acquired over such term is irrelevant due to its genericness.

Thus, it can be inferred that ‘ZERO’ as a term can be used freely by any beverage company in order to indicate the calorie count in addition to its existing trademark.

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IP trouble for Facebook, Snapchat and Instagram!

Corrino Holdings LLC is a private limited company and has been operating since 2012. The company has recently filed individual suits at the California District Court, against Facebook, Snap, the parent company of Snapchat and Foursquare app for allegedly infringing US patents relating to the GPS technology owned by them.

The patents in question relate to technology that notifies users of nearby services or allows them to search for services within a certain geographical range. This technology is supposed to work more effectively than a regular GPS system by updating the user of services that are nearby. Corrino alleged that Facebook has infringed the patents by offering apps for mobile phones and other devices that incorporate their technology. Further, the company also claimed that Instagram’s mobile app provides users with technology that clearly infringes the patents in question. Whereas, in its claim against Snap, it is alleged that the Snapchat app infringes the patents by providing a location-targeting service that provides the location of the user for local advertisers to target.

Corrino has prayed for damages in all the four lawsuits.

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There are ample of luxury brands that have not been successful in a trademark infringement battle filed against Chinese indigenous products. Richemont is the owner of the brand Alfred Dunhill and has been operating in the Chinese market for over a score of years. Recently, Alfred Dunhill Ltd. filed a suit against a China based company named ‘Danhuoli’. The suit was filed for trademark infringement and unfair competition practices.

On observing the above shown marks, the infringement is evident as the infringing Danhuoli logo looks similar to Dunhill’s original thin, black, and elongated logo with an identical font. In addition to the similarities in the logo, both the brands market products with respect to menswear, footwear and headgears. On investigation conducted during the case, it was found that Danhuoli had registered its name under the shadow of a Hong Kong based company called the ‘Dunhill Group’ and were actively operating in over 200 franchise stores in nearly 60 cities across China, resulting in huge losses for the original brand of Alfred Dunhill.

The Court ordered the infringing brand Dunhuoli to pay compensation to the tune of USD1.47 Million to Richemont. This case is a landmark judgment and a victory for global brands in China.

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Sony PS4 Copyright Claim

A device conceptualized and marketed by Sony Entertainment, the Play Station has been in the market from over a decade. Every gamer since, has looked forward to a new upgraded launch of the play station, the latest in the market being the PS4. However, recently, Sony Interactive Entertainment LLC, has filed a suit in California District Court, against an individual by the name of Eric Davis for copyright infringement claiming for a permanent injunction against the individual.

Sony has alleged that the individual has been involved in marketing, selling and distributing, ‘Jailbroken’ PS4 consoles that contain pirated copies of PS4 compatible video games. These were produced and designed for purposes of use and to hamper the technological protection measures that ensure that the original PS4 systems will not support the working of pirated video games made. It is further alleged that similar ‘jailbreaks’ are available for the PS3 model through his website. All video games sold and distributed by Sony consist of large amounts of creative audiovisual material, stories, characters, and other matter that are wholly original to the company and are subject to copyright for which Sony holds copyright registrations. Further, all First-Party PS4 games and Third-Party PS4 games include copyrighted computer code known as PS Program Code. The Defendant has been selling ‘jailbroken’ consoles on popular websites like eBay which clearly has a wide audience and is phenomenally affecting Sony causing damages to the tune of millions! (since each video game CD for the PS costs around USD60 (approximately Rs.4000). It has also been observed that the defendant has been publishing codes in order to exploit the PS software and run the pirated game CD’s.

Sony has prayed to the Court that all disputed devices are delivered to it for destruction and all profits received by defendant as a result of the alleged infringement, as well as statutory damages and costs incurred are awarded to Sony.

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Rajmoti vs. Rajmoti

In a recent case filed at the High Court of Delhi, M/s Shree Rajmoti Industries filed for a trademark infringement and passing off suit against, M/s Shri Vishwaprabha Foods Pvt. Ltd.

The Defendant’s, Vishwaprabha, used the word ‘Rajmoti’ along with a tag line, as a part of their label for rice, as show below,

The Plaintiff claimed extensive use of the trademark RAJMOTI for edible oils and stated that, the defendant’s mark was likely to cause confusion amongst the consumers since the defendant’s products with the mark RAJMOTI, were also food products. Both, Rajmoti and Vishwaprabha were readily available in shops and supermarkets in the food section. When the plaintiff approached the High Court initially, the Court agreed to Rajmoti’s submissions and granted an ex-parte injunction in favour of Rajmoti, and also appointed a Local Commissioner to investigate the activities of the Defendant. However, when the Local Commissioner reached the defendant’s place of business, no infringing rice with the trademark RAJMOTI was found. The defendant did not even appear in the proceedings nor did the defendant deny any allegations. The Court was convinced by the initial evidence produced and passed a decree of permanent injunction against Vishwaprabha.

Two inferences can be arrived at from these proceedings, , firstly, use of the same trademark for a different item of food, in this case, edible oil and rice, will amount to infringement. Secondly, even if no evidence of infringement is found or produced during the subsequent proceedings, the initial evidence will be sufficient for the court to pass a decree of permanent injunction.

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Amity International vs. Amity International

Amity International School, a name most of us are well acquainted with, recently filed a case against Amity International School! Confused? That’s exactly why the case was filed. Amity International School as we all know is operating out of multiple locations such as New Delhi, U.P., Rajasthan, Madhya Pradesh. In addition, there is Amity University and Amity Law School which belongs to the same group i.e. Amity Group of Education Institutions.

This case has been brought against one Amity International School, operating in Bharuch, Gujarat. The Amity Group stated that use of the word ‘AMITY’ in relation to education is a direct violation of their rights under the Trademark Act. Further, they stated that, such use is clearly with an intention to ride on the goodwill established by them. Amity Group has been continuously using and has registered its mark Amity since 1991. The Defendants stated that a school named ‘Amity School’ has been operational since 1986. Such school is being operated by a trust viz. Trustees of Gyanada Educational Trust, and this trust has an MOU with the trust operating the defendant school. Based on this MOU the defendant school claimed having prior rights. On May 30, 2014, the court granted an injunction in favour of the Plaintiff and restrained the defendants from using the word ‘Amity’ or any other deceptively similar mark in respect of educational services. However, such order was suspended in November 2014, as a result of an interlocutory application filed by the defendants.

Amity argued against the defendant stating that since the trust operating ‘Amity School’ and that operating ‘Amity International School’ is not one and the same and thus there can be no transfer of prior rights for the use of the word Amity.Further, it was brought to notice of the court that Amity School, Bharuch was not a party to the suit and thus such party having prior rights on the use of the word ‘AMITY’ holds no relevance. The Court admitted this argument and held that Trademark law is meant to protect not just the rights of the owners, but also to avoid any confusion from being caused amongst the public at large. The Court pointed out that the Defendant is relying on the prior rights of a third party who is not a party to this case, moreover, such third party too has no statutory right or claim over the mark AMITY since the word AMITY is not registered by them. Further, on viewing the Defendant’s website it is evident that emphasis has been placed on ‘AMITY INTERNATIONAL SCHOOL’. Further, the use of the terms AMITY, INTERNATIONAL and SCHOOL in conjunction is a clear attempt to pass off as the Plaintiff’s school and thus, it a clear case of passing off. The Court restrained the Defendants from opening any new school by the name of ‘AMITY INTERNATIONAL SCHOOL’ and stated that such injunction would come into force in the academic year 2019-2020 in order to avoid inconvenience to the current batch of students.

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Is your material Copyrightable?

Copyrights vested in information of Clients and/or Customer Lists maintained by service providers has been an issue of disparity for the past several years. The High Court of Delhi, in Navigators Logistics Limited vs Kashif Qureshi and Ors., on September 17, 2018, has once again attempted to bring some clarity to the prolonging confusion.

The Plaintiffs alleged that, the defendants had misappropriated copyrighted material and confidential company information which was in direct violation of their employment contracts. Such copyrighted material included client database, confidential data, accounts related information, plans, reports, airway bills templates and the likes. However, upon investigation it was found that the records misappropriated only included Client lists and contact information. As per the facts of the case, all employees resigned from the Plaintiff firm one after another. The plaintiff contended that such material comprised of original and artistic literary works as defined in Section 2(c) and Section 2(o) of the Copyright Act, 1957.

The Court referred to an earlier judgment of Tech Plus Media Private Ltd vs. Jyoti Janda, 2014 wherein it was held that, the key to establishing whether a copyright claim exists is to examine the degree of skill or judgment that has been invested into the creating the said material. The gist of the judgment stated that, when the output is merely a result of labour, such material lacks the use of any skill or creativity and thus is not copyrightable in nature. In order for a material to be copyrightable, it must have to satisfy the standard of creativity required. A mere compilation of existing information by arranging it in a sequence manner does not require creativity and thus cannot be held copyrightable.

In the present case, the Plaintiff had claimed copyright over lists which consisted of names and contact information of the Clients of the company, however, it was observed by the Court that such information was easily available in the public domain and thus cannot qualify as a confidential list. Further, the Court criticized the ex-parte interim order passed in favour of the Plaintiffs in 2016, restraining the Defendants from using the ‘confidential information’ for any reason whatsoever. Another ground put forth by the plaintiff was that the defendants had violated the employment contract clause which prohibited them from working in a competitive industry for a period of one year after they resigned from the plaintiff company. However, the Court held that such a clause was a clear violation of Section 27 of the Indian Contract Act, which states that any contract restraining trade is void ab initio. The suit was thus, dismissed and the Court held that the Plaintiffs had no cause of action.

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