From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
Henry Higgins in the movie ‘My Fair Lady’ laments in the immortal song – I’ve grown accustomed to her face! This is the typical laconic Britain Academician’s style of expressing love, but, this phrase typifies the whole concept of familiarity.
It is a common saying, ‘Familiarity breeds contempt’, however, in the world of branding and trademarks - ‘Familiarity breeds likeness’!
As consumers, we tend to buy products which we are familiar with even though other goods or products may offer more ‘attractive allure’ i.e. the allure of the unknown. We are tempted to go along in the unfamiliar direction but tend to fall back on the familiar. Do you recollect the umpteen number of times, you picked up unfamiliar products and put them in your cart, but just before you make payment or checkout (online), there is a sense of uncertainty where you question the quality/quantity/ longevity of the product and decided to ‘experiment’ another day?
Familiarity gives us a feeling of comfort. Such comfort is sensed when we taste something familiar, or when we notice a familiar colour shade or combination of colours, or even when we are accustomed to the surroundings.
Want to give it a try? A chocolate in a purple wrapper? A typical McDonald’s outlet with the Ronald McDonald sitting on a bench outside the eatery? The Aroma of your favourite biryani? Brand/Brand packaging, advertising/publicity always attempts to establish a bond of familiarity between consumers and the service/product offered. A typical example of using familiarity effectively was the launch of ‘coke zero’ in a black can. The advertisement displayed a bunch of people sitting in the theatre, of which a few bought the regular coke can, only to realize that the coke can was in fact wrapped in ‘red’ paper and on peeling it was actually ‘coke zero’. Thus, instantly creating a bond of familiarity between the consumers of the coke in the red can and the launch of the new coke zero in a black can. In an episode of a TV serial, the sponsor ensures that the advertisement in relation to a brand is telecasted nearly 6-8 times, often to the point of irritating the viewer, but there is a method in the madness. The idea is to focus the brand in the mind of the consumer ‘subliminally’.
Familiarity is thus created with direct or indirect associations. For e.g.: An SUV is advertised by a familiar attractive looking model. This results in the familiarity of the model getting glossed onto the new vehicle. The same is true for products such as tooth powder. When someone like Amitabh Bachchan endorses a tooth powder or bhujia (an evening snack often relished with tea in India), the familiarity of Amitabh Bachchan gets glossed onto the product/brand.
Colour schemes also induce a sense of familiarity. People tend to refrain from using a product if after years of familiarity; the trade dress of the product is changed. Counterfeiters prey on this familiarity experience. Therefore, a counterfeit product will always contain a nearly identical colour combination, in an attempt to bank on the consumer’s familiarity with the colours.
Another important aspect is Word of Mouth (WOM). A negative WOM affects an unfamiliar brand more than a familiar brand, whereas a positive WOM benefits an unfamiliar brand more than a familiar brand. Conclusively, WOM tends to affect unfamiliar brands more than familiar. For e.g.: A bad review on a ‘Philips’ hair dryer or a ‘Sony’ music system is less likely to dissuade a consumer from buying the product and the consumer may choose to purchase the product irrespective of such bad review. However, a bad review of a ‘PQR’ hair dryer will result in the consumer to not purchase the product.
This brings us to another concept of ‘peer familiarity’.
A consumer himself may not be conversant with a brand, but the fact that, his peer is familiar with the brand, is bound to result in his positive opinion towards the brand. Isn’t it natural for you to endorse a brand if your best friend has recommended it? Thus, familiarity plays a rather important role in branding than we anticipated, doesn’t it?!
Bollywood period films and controversies go hand-in hand, be it Sanjay Leela Bhansali’s Padmaavat and Bajirao Mastani or Ashutosh Gowarikar’s Jodha Akbar (2008) and Mohenjo Daro (2016). Latest addition to these films is Gowarikar’s recent release Panipat, which is based on the third battle of Panipat fought between the Marathas and the founder of Afghanistan’s Durrani Empire, Ahmad Shah Abdali in 1761.
The controversy began when the eighth-generation descendant of the legendary Maratha General Peshwa Bajirao (sixth Peshwa of the Maratha Empire) Nawabzada Shadab Ali Bahadur, served notices to producers Sunita Gowarikar and Rohit Shelatkar and director Ashutosh Gowarikar showing his discontent over a dialogue in the film.
The Controversial Dialogue:
The dialogue which led to this controversy is also shown in the film’s trailer wherein Parvati Bai (played by Kriti Sanon) tells her husband and Sadashiv Rao Bhau (played by Arjun Kapoor): “Maine suna hai Peshwa jab akele muhim par jaate hain, to ek Mastani ke saath laut te hain (I’ve heard whenever Peshwa goes to battle all alone, he returns with a Mastani).”
Shadab Ali Bahadur’s Stand:
In an interview with a news magazine, Nawabzada Shadab Ali Bahadur, said that he found the dialogue objectionable and in bad taste and said “the dialogue portrays a bad picture of not only Mastani Sahiba but also of the Peshwa. Mastani Bai was the bona fide wife of Peshwa Baji Rao and not just another woman”. He added that he has also written to the Central Board of Film Certification, asking for it to be removed.
Ali, who traces his lineage from Shamsher Bahadur (son of Mastani and Peshwa Bajirao) states that since Mastani sahiba died 21 years prior to the third Battle of Panipat. He stated that there’s no rationale behind using her name along with the Peshwas in an indecorous manner other than to gain cheap popularity, just because Sanjay Leela Bansali’s Bajirao Mastani (released in 2015) was a great hit.
Ali also objected on portrayal of another lead character Shamsher Bahadur who is wearing a dress and a cap used by ‘shayars’ (Urdu poets), whereas he used to wear a turban (pagdi) like the Peshwas.
The recent blockbuster ‘Chhapaak’ starring Deepika Padukone and directed by Meghana Gulzar received a direction vide an order by the Delhi Court. The movie, though based on the life of an acid attack survivor – Laxmi Agarwal, received multiple inputs from Laxmi Agarwal’s real life lawyer – Adv. Aparna Bhat.
Adv. Aparna Bhat initially sent an email to Meghana Gulzar asking her to include her name in the movie credits, however, Aparna was told that she would receive a reply only after the movie is released. It was then that the Advocate sent a legal notice to Gulzar and moved the Court. Aparna filed a case of injunction against the filmmakers and Fox Star studios stating that, Gulzar had assured Aparna that the viewers of Chhapaak will know that she had argued the case of Laxmi Agarwal and even shared with her the first draft of the film which included her name in the credits at the end. However, it was only on January 7, 2020, during the film’s premiere that Aparna realized that the line acknowledging her contribution was deleted.
The Trial Court ordered the filmmakers to give credit to Adv. Aparna Bhat, to which the filmmakers appealed in the Delhi High Court. The filmmakers argued that, Adv. Bhat had no legal, statutory or contractual, right to seek acknowledgement for her contribution in the film in the form of consultation, inputs and documents. In view of the facts, Justice Pratibha M. Singh restrained the filmmakers to release the film vide any electronic medium such as cable TV, DTH, internet streaming platforms, etc., without acknowledging the name of Adv. Aparna Bhat in the opening credits. The Court ordered that the line: ‘Inputs by Ms. Aparna Bhat, the lawyer who represented Laxmi Agarwal, are acknowledged’. It was further ordered that the condition has to come into effect from January 15, 2020.
Necessity is the mother of all new laws and legal theories. The need for a new area of jurisprudence to develop in light of the popularisation of the technology of Artificial Intelligence is felt greatly all over the globe.
Such a need is especially felt in terms of intellectual property laws, because the IP generated by the AI (if it is considered capable of being called “Intellectual” Property, that is.) has to be attributed to someone. It is easy for infringers to copy or unauthorisedly use data analysis, reports, data packets, suggestions, pieces of art and other AI generated works for their own commercial benefits.
Recent news reports suggest that the courts in China have recognized copyright in original works generated by AI . A publically available report generated by the AI of Tencent (a Chinese MNC), was, was copied. The Courts in China held that the work had appreciable originality, sufficient to attribute the copyright in the work to AI.
Courts and IP offices all over the world are making various observations over whether an AI generated work, can be vested with IP rights. Most of us, confuse the ‘originality’ in the work with the ‘vesting of IP rights’. Original works may be created by computers, animals, (paw painting, monkeys clicking photographs, cats meowing a song, etc. can be some examples of this.) etc. However, whether all such original works call for IP protection also, is being debated upon in the IPR industry. Does the traditional jurisprudential concept of Subjects and Objects of law give us a hint to solve this maze?!
In 2002, Ferid Allani (“Allani”) filed a patent application (IN/PCT/2002/00705/DEL) for his computer related invention titled, “method and device for accessing information sources and services on the web”. As per the Complete Specification, “the invention proposes a method for accessing information sources and services on the Web, that is quicker and easier to use than the present methods for accessing information on internet, notably with an objective of integration within interactive terminals and office automation and communication equipment.” The Indian Patent Office rejected this application stating that it lacked novelty and was hit by the provisions of Section 3 (k) of the Indian Patents Act.
Section 3 (k) of the Patents Act reads as follows:
3. What are not inventions. -The following are not inventions within the meaning of this Act,-
(k) a mathematical or business method or a computer programme per se or algorithms;
Allani appealed to the Intellectual Property Appellate Board (“IPAB”) against the order of the Controller. However, the appeal was dismissed by the IPAB stating that the patent application did not disclose any technical effect or technical advancement.
Allani then appealed to the Delhi High Court in the case of Ferid Allani v. Union of India & Ors W.P.(C) 7/2014 & CM APPL. 40736/2019
citing various claims in the patent specification to show that it disclosed a ‘technical effect’ and a ‘technical advancement’. Allani further contended that the invention is not merely a software invention that can be simply loaded on to a computer, for it also requires a particular method of implementation. He relied upon the Draft Guidelines for Examination of Computer Related Inventions, 2013.
The Defendant submitted that since IPAB had put forth its technical view on the patentability of the invention, the Court could not pass an order with regards to the technical arguments raised before such a Tribunal.
However, the Court held that,“The bar on patenting is in respect of `computer programs per se….’ and not all inventions based on computer programs. In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions – simply for that reason. It is rare to see a product which is not based on a computer program”.
Thus, the Court held that in light of the amendments to the Guidelines with respect to Computer Related Inventions and the judicial precedents in this regard, since 2013, the meaning of ‘technical effect’ has been clearly churned out. The wisdom of these guidelines and judicial pronouncements was not applied to Allani’s invention as it had not evolved when the application was examined for the first time, in 2005. The Court asked the Patent Office to re-examine the patent application in light of the above observations and in accordance with the Guidelines, judicial precedents, settled practices of patent offices in examining such patent applications.
In accordance of Section 124 and 125 of Trade Marks Act, 1999 (“the Act”), questions regarding validity of a trademark can be decided only by the Intellectual Property Appellate Board ("IPAB"). However, if a suit is pending before a civil court, then the power of IPAB is contingent on prima facie tenability of the plea of invalidity by the Civil Court.
Facts of the Case
Mr. Arun Chopra ("Plaintiff") is the registered proprietor of the mark "K-D-H KAKE-DA- HOTEL" and is running a restaurant under the mark since 1950. This mark was adopted by his late father in the year 1931, for their restaurant in Lahore.
Kaka Ka Dhabha Pvt. Ltd. and Others (Defendants) are trading under the names "KAKA-KA DHABA", and 3 other similar trade names with minute variations. When the Plaintiff came across the Defendant’s application for registration of the label mark "KA-KA-KA”, it filed the present suit (Arun Chopra Vs Kaka da Dhabha Pvt. Ltd. & Ors.1 ) for trademark infringement. The Defendants, claimed that they have a registered trademark since 15.05.2006. They also contended that there is no similarity between the Plaintiff’s registered marks and the mark used by them.
However, the Plaintiff successfully obtained an ex-parte ad interim injunction order wherein the Trial Court restrained the Defendants from using the name ‘KAKA-KA HOTEL'. They were permitted to use the other three names for the restaurants/outlets already operating in Nasik (Maharashtra) on a condition that they would maintain complete accounts of all sales in their three restaurants/outlets.
The Plaintiff filed an application for stay of the proceedings under Section 124 of the Act stating that it has applied for cancellation of the registration of the Defendants' mark before IPAB.
The Defendants contended that Section 124 of the Act can come into play for a post-suit rectification only when:
I. The pleadings disclose a challenge to the validity of a registered trademark, and
II. The plea is found to be prima facie tenable.
Since neither of these conditions has been fulfilled in the present case, the present application is not maintainable, as the Plaintiff has applied to the IPAB without any finding by the Court regarding the existence or prima facie tenability of its plea of invalidity of the Defendant’s trademark.
Analysis by the Court:
The Hon’ble Court held that the provisions contained in Sec 30 of the Act vis-à-vis Sec 124 of the Act have been appropriately explained in the Judgement of the Hon’ble Supreme Court in the case of Patel Field Marshall2 wherein the Apex Court has stated that:
“The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit.”
A similar view was also adopted by the Hon’ble Delhi High Court in the case of Abott Healthcare3 wherein it was held that if a Plaintiff makes an application to IPAB for rectification during the pendency of the suit without seeking the permission of the Court under Section 124 of the Act, he is not precluded from seeking such permission. The only difference is that, IPAB will not have jurisdiction to hear the matter unless the Trial Court pronounces a prima facie tenability of the plea of the Plaintiff as to invalidity of the registration of the trademark of the Defendants. Furthermore, the party invoking Section 124 of the Act will have to make specific averments that may entail it to have the registration of the mark of the other expunged from the register.
The Court relied upon the above two judicial precedents and examined the plaint to see whether the averments made therein were sufficient to support a plea of invalidity and also whether such plea is prima facie tenable.
Now in the present case, although there was no express plea made by the Plaintiff with regard to the invalidity of the mark but the Plaintiff’s replication had averments of deceptive similarity and consumer confusion which was found to be sufficient by the Hon’ble Court.
The Hon’ble Court specifically remarked “the enquiry for the present purposes must be based on a holistic and meaningful reading of the pleadings rather than an insistence on a formulistic recital of a particular plea. This is particularly important because a finding against the party claiming cancellation of a registered trademark (in this case, the plaintiff) would render the plea abandoned for all time.”
While holding that the plea is prima facie tenable, the Hon’ble Court emphasized on two major points.
1. Phonetic and structural similarity between the two marks;
2. Grant of interim injunction in favour of the Plaintiff.
Hence the Hon’ble Court framed an issue with respect to invalidity of the registered mark and allowed the present application of stay until disposal of the rectification application filed by the Plaintiff before the IPAB.
2Patel Field Marshal Agencies and Ors. Vs. P.M Diesels ltd. ( 2018) 2 SCC 112
3Abott Healthcare Pvt. Ltd. vs. Raj Kumar Prasad and Ors. 249(2018) DLT 220
"Baskin Robbins"..., I bet your mouth has started watering. The globally known ice cream brand Baskin Robbins as a peculiar logo. This funky logo of has the number 31 hidden in it. When Baskin Robbins began selling ice cream in the year 1945 it started with 31 unique flavours. The idea was to let ice-cream lovers have one new flavour for each of the 31 days of a month. This is why the brand gives so much importance to the number 31. Today, Baskin Robbins claims to have expanded to more than 1300 flavours all over the world.
Do you see it now? Like we always say, we bet you cannot ‘Unsee’ it!! :D
When we invite trouble either at home or office or amongst friends, we often hear the phrase “You have opened a Pandora’s Box now!” followed by twitching of the noses and widening of eyes. What exactly is meant by ‘the Pandora’s Box’? Who was Pandora?
Pandora is a character from Greek mythology. She was sent on earth by the greek God Zeus to marry his cousin Epimetheus. Zeus gave Pandora a box and gave the key of the box to Epimetheus. He advised Pandora to never open it. However, out of curiosity, Pandora opened the box. It is believed, that all the evil in the world, such as sickness, worries, sadness, betrayal, came forth from this box. Some lore goes on to say, that the last thing that came out of the box was Hope. Zeus is said to have sent it so that people could deal with all their grief and troubles!
And aren’t we? Dealing with the busy life, unfathomable deadlines, annoying traffic, too many wars, all the sickness, with Hope alone?
The R. K. Dewan and Co. family tree has recently made way for a new branch! Metaphorically and literally! We are pleased to share with you that R. K. Dewan and Co. now has a new branch office in Kolkata, West Bengal, India. The postal address of our Kolkata Office is as follows:
Address: R.K. DEWAN & CO
Room No.1003, 10th Floor, The Sidco Global Tower, (Opp: RS Software); CN Block, Sector V, Salt Lake City, Kolkata - 700091
Another Feather to our Hat!
The Global Intellectual Property Convention (GIPC), 2020 was organized from January 8 to January 10, 2020 at Delhi. During the event, the Principal of R K Dewan & Co., Dr. Mohan Dewan was awarded for - Excellent Contributions made in the field of IP and Innovation.
We wish more laurels to Dr. Dewan in the years to come!
NATIONAL INTELLECTUAL PROPERTY AWARDS, 2020
The Indian Intellectual Property Office (IPO) in collaboration with Confederation of Indian Industry (CII) has announced the NATIONAL INTELLECTUAL PROPERTY AWARDS 2020. These awards are conferred to recognize individuals or institutions for their unique IP creations and commercialization. All IP enthusiasts and innovators may apply. For details, visit the Indian Intellectual Property Office (IPO) here. Get started now!