Mar 20

RKD NewsNet March 2020 - Volume II

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

International News

Social Distancing: The Trademark Way!

We can all agree to the massive impact brands have on our minds. While every government in the world is propagating ‘social distancing’ in an attempt to ‘break the chain’ and avert yet another individual falling prey to the COVID19 virus, major conglomerates decided to spread the message in their unique way.

Brands such as McDonald’s, Volkswagen, Audi, Coca-Cola, MasterCard, even Starbucks have rebranded their logos to promote social distancing globally.

Below are a few such images depicting the above:

The Olympics scheduled in May, 2020 at Tokyo too has been postponed to 2021 in view of the COVID19 outbreak. The Olympic logo below depicts social distancing:

We at RK Dewan & Co. wish you & your family, health and strength to combat these difficult times and pray for a speedy recovery to all those affected.

*We claim no copyrights or proprietary rights over any of the images depicted herein. The logos used are only for educational purposes and social awareness.

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The Truth Will Surface!

Michelin is a French multinational tyre manufacturer based in France and is the second largest tyre manufacturer in the world after Bridgestone. It was founded in 1889. Recently the company filed a suit against its former employee, at the US District Court, South Carolina, for stealing and misappropriating trade secrets. The employee was associated with Michelin for over 13 years.

Michelin’s major competitor Carlstar, had pursued the employee for accessing the company’s trade secrets. The accused employee, was a key personnel of the R&D team at Michelin and had reportedly copied files onto his hard drive before exiting the company. Before exiting from Michelin, he had affirmed that he would not work in the R&D at Carlstar. However, he was recruited as the head of the R&D at Carlstar. To conceal this fact, he ensured his title did not contain the terms – engineering and R&D. These inputs were received from an internal source at Carlstar.

Upon being confronted by Michelin, Carlstar denied the accusations. However, a discreet investigation by Michelin revealed that the ex-employee had accessed over a 100 files of Michelin after beginning his work at Carlstar in the initial few months itself. The ex-employee was also found to have contacted an individual working at Michelin to extract the most vital trade secret of Michelin, viz. the procedure of mixing natural rubber with other components. The ex-employee was also accused to leaking information with respect to testing methods and quality control processes.

Michelin has prayed to the Court for a preliminary injunction in addition to the destruction of products created using the trade secrets.

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To combat COVID 19, Israel allows a patented drug’s generic version to be imported

“It is not a calamity, if we are prepared to deal with it.”

With the onslaught of the global pandemic, we are not only witnessing, humanity’s united effort to fight it, but also the organized and more pervasive efforts by large organizations, government bodies, health ministries, etc. to ease out our fight against the health emergency.

There is no medicinal cure for the COVID 19 as on date. However, there are various medicines, vaccines etc. which are aiding in the patient’s treatment. With the rapid spread of the COVID 19, the demands for health care facilities and products have sky-rocketed and are difficult to meet. The bottleneck is further quenched, when the requisite medicines is patented. Israel faced a similar situation recently, with Abbvie, the Patentee of a drug named Kaletra. Kaletra is used for treatment of patients with HIV and is considered suitable for treating COVID 19 also. As Abbvie was unable to meet the sky-high demands for Kaletra to treat COVID 19 patients, the Ministry of Health, Israel allowed generic versions of this drug, to be imported from other countries. For example, Hetero, in India, is a generic manufacturer of the drug (Abbvie has not patented Kaletra in India). In exercise of its powers under the Israeli Patents Act, 1967, Israel is now allowing importation the drug from India only for the limited purpose of curing COVID 19. The Patents Act allows the government to take such measures and compensate the Patentee for with an appropriate Royalty. Abbvie will be compensated with Royalty for exploitation of its patent.

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The Virtual Rings!

Toyotomi is a renowned Japanese company in addition to being the world’s first manufacturer of kerosene-fired portable cooking stove in 1952. These cooking stoves, known as ‘Toyostoves’ have a unique heat-resistant glass coating on the inner surface of the heat chamber which results in the virtual visuals of an orange flame floating over the actual flame. This Toyostove is also called the Rainbow.

Toyotomi applied for the registration of the virtual visual rings, for convection type oil stove in Class 11 as a 3D position mark in 2016 at the Japanese Patent Office (“JPO”).

*We claim no copyrights in the images used. The depiction is only for educational purposes.

The amended Japanese Trade Mark Law in 2014 included the registration of, colour, sound, position, motion, hologram as trademarks.

The JPO Examiner, refused the trademark registration of the applied mark under Article 3(1)(iii), which reads as below:

“Article 3(1): Any trademark used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, shape (including shape of packaging; the same applies in Article 26 paragraph (1), items (ii) and (iii)), the method or features including time of production or use, quantity, price, or, in the case of services, the location of provision, quality, articles to be used in the provision, efficacy, intended purpose, modes, method or features including time, quantity or price of provision;”

The rejection was based on the fact that, the 3 virtual rings visible were protected under the patent for the stove which expired in the year 2000. The specifications of the patent clearly mentioned, that the rings were a result of utilitarian and aesthetic functionality. Thus, providing protection to the rings will be contrary to public interest, since as per patent law it should be in the public domain after expiry of the Patent.

Post the refusal, an appeal on the same ground was dismissed by the JPO.

The Applicant then approached the IP High Court. The Court relied on the explanation put forth by the JPO and further added that if the 3 flame rings fail to physically exist as a part of the shape of the oil stove, Article 3(1)(iii) is applicable. The appeal was thus dismissed and the decision of the JPO was upheld.

The case was the first case in open court for the IP High Court after the new trademark law was enacted.

*We acknowledge the information shared by Marks IP.

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Nike, Champ surfing in troubled waters

The Endless Summer is a 1966 movie that revolves around two surfers who travel around the world in search of the perfect wave for surfing and introduce the locals they meet along the way to the surfing culture. The title ‘The Endless Summer’ refers to the idea that a person can travel and surf round the year if he chases the summer seasons all over the world.

When the movie became popular, Bruce Brown registered the “The Endless Summer” mark for T-shirts, mugs, sweatshirts, towels, pillowcases, toys, surfboards, skateboards, footwear and sporting goods and some other goods. Bruce Brown founded a company Bruce Brown Films, LLC, which now has the rights of merchandising and licensing the intellectual property of The Endless Summer and its posters.

Recently, Nike and Champs, 2 sportswear and footwear brands used the phrase “Endless Summer” and typical orange and blue elements inspired from the movie poster, specifically “a series of stylized blue waves with a large orange sun” in their marketing campaigns. Neither Nike nor Champs’s parent company Foot Locker licensed it from Brown’s company.

Picture Credits: https://www.law.com/therecorder/2020/03/18/nike-riding-a-wave-of-trademark-infringement-filmmakers-suit-says/?slreturn=20200227132021

Bruce Brown Films LLC stated that it sent a cease and desist notice to both the brands, however they continued using the infringing trademark and the trade dress. Consequently, Bruce Brown Films LLC sued Nike, Champs, and Champs’ parent company Footlocker1 for knowingly and impermissibly trading on the fame and goodwill associated with the movie The Endless Summer and unauthorized use of its trademarks. Bruce Brown Films has also claimed trademark dilution, unfair competition and sought damages from the infringers.

1Bruce Brown Films, LLC v. FootLocker Inc. et al, 2:20-cv-02553 (C.D. Cal.)

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Deepak and Ritika fight over Neeraj and Nirab!

No, this is not a high-school melodrama, but a case of trademark infringement!

Deepak Vegpro Private Limited (“Deepak Vegpro”) is the registered proprietor of various labels containing its brand name ‘NEERAJ’ for edible oils. Ritika Vegetable Oil Private Limited (“Ritika Vegetable”) filed for registration of a label containing its brand name ‘NIRAB’. Deepak Vegpro filed a suit at the Commercial Court in Jaipur for trademark infringement and passing off. Deepak Vegpro contended that the mark ‘NIRAB’ was phonetically similar to its registered mark ‘NEERAJ’ and therefore Ritika Vegetable should be injuncted from using its mark ‘NIRAB’. Deepak Vegpro further stated that the words ‘NEERAJ’ and ‘NIRAB’ even though they had different spellings, would be pronounced similarly in many parts of India, especially in North Eastern states of the Country. The local manner of pronouncing certain words or phrases may not always conform with its actual pronunciation. Language, keeps changing bit by bit, as its changes hands. For example, in North India, ‘V’ (as in vital) is pronounced as ‘B’. So ‘Vikas’, will be read as ‘Bikas’.

The Commercial Court granted an injunction against Ritika Vegetable.

Ritika Vegetable then filed an appeal in the High Court of Rajasthan praying to the Court for setting aside the order. Ritika Vegetable countered that not only were the marks phonetically different, but Deepak Vegpro had registered its labels and did not have separate registrations for the word ‘NEERAJ’. Hence the injunction should not have been granted. The Rajasthan High Court agreed with Ritika Vegetable’s contention and stated that it was a settled principle of trademark law that a mark should not be dissected and should be considered as a whole. Since Deepak Vegpro had registered its labels, it could not claim rights in the word ‘NEERAJ’ separately. The Court also stated that the contending labels, when compared with each other did not show similarity to the extent of causing confusion. Thus, the injunction order against Ritika Vegetable was set aside.

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Doordarshan: TV Channel or Film?

As we shift from cable television to Dish TV and from there to Netflix, the Gen-Y in India still associates television with the oldest government television channel- Doordarshan. Doordarshan is also popularly known in India as DD National. Private channels were not popular until 10 years ago, which made Doordarshan the only Indian choice in television since decades.

Film titles are to films what trademarks are to trades! A catchy title will go a long way in deciding the fate of the film at the Box Office. The title of a film can be protected under ‘entertainment services’ falling under class 41 of Trademarks Act, 1999. However, for obtaining trademark registration for a film title, the title needs to have acquired a secondary meaning and be solely associated with the film.

Recently, a Bollywood film-maker decided to name his movie- “Doordarshan”. India's largest public broadcasting agency Prasar Bharti, which runs Doordarshan, filed a suit at the Delhi High Court seeking injunction against film-makers and distributors, Ritu Arya, Sandeep Arya and PVR Limited (“Defendants”) restrain them using the term Doordarshan as a film title. The Court has granted an interim injunction and asked the Defendants to change the name of their film. The film has now been titled “DOOR KE DARSHAN” (which still loosely translates to watching from afar). This case is significant in the Indian scenario, as the popularity of the television channel Doordarshan is so high, that viewers are very likely to be confused and associate the film with this old television channel.

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Hidden Meanings in trademarks

Nintendo is a video game console making company, originally from Japan. It became popular for its state of the art gaming consoles which were a craze amongst youngsters. Nintendo’s logo is an interesting piece of art.

The Logo is a set of cubes of different sizes super-imposed on each other. However, if you take a closer and longer look, you will notice that the letter G and C are present in between these superimposed cubes. This represents Nintendo’s ‘G’ame ‘C’ube!

Like we always say, you cannot unsee it, once you see it.

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