Jun 20

RKD NewsNet June 2020 - Volume II

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

General News

  • Pandemic Pivots
  • WIPO PROOF – A Much Appreciated Initiative
  • International News

    Pandemic Pivots

    - Adv. Isha Gandhi

    The Novel Virus pandemic has come out as the perfect example for “Survival of the fittest”. When most of the organizations were panicking; thinking of the uncertain future during the initial period of lockdown, the smartest ones were brainstorming to break the stereotype and pivot in order to survive.

    The increased demand of disinfectants following the pandemic has made several companies enter into a new segment. From FMCG players such as Patanjali, Emami, Raymond Consumer Care and Dabur to liquor makers like Radico Khaitan and Diageo, all have ventured into the manufacturing of disinfectants. On the other hand, from Couture labels to Indie brands, the Indian Fashion Industry started embracing cotton masks. The list of the leading players of the industry is long including - Fabindia, Tjori, Madame, Masaba Gupta. Similarly manufacturers/exporters like Modelama Export, a Gurgaon based apparel manufacturer, who supplied garments to brands like Tommy Hilfiger and Calvin Klein, has started manufacturing PPE Kits, fabric masks and shoe covers in abundance and are waiting for permits to export. The competitive pricing of such exporters is a definite move to tap into the widespread anti-China sentiments even post pandemic.

    Various other examples of such Pandemic Pivots can be seen in areas like Grocery, Electronic Equipment, Virtual learning, etc. In the hoard of either swim or sink race, organizations incapable of switching businesses altogether came up with novel ideas to attract the customers. One such example is “Guerilla Tacos” who started selling ‘Emergency Taco Kits’ having 30 Tacos and two rolls of Toilet Paper.

    Picture Credits: http://www.guerrillatacos.com/etk

    We now wish for the time when we order Maharaja Mac Meal, when out of Sanitizer!

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    WIPO PROOF – A Much Appreciated Initiative

    Today we are about to tell you one of the coolest online services released by the WIPO called the WIPO Proof! Just as the name suggests, WIPO Proof will help an entity to create a tamper-proof evidence to prove that a particular file/work existed at a certain time and such information can be verified by anyone. This proof will be indefinitely valid and can be protected with a digital fingerprint and be safely stored. The creator’s work will be stored with a highly secured digital encryption technology on servers in Switzerland. The WIPO Proof document can be used in all countries which legally accept certified digital documents.

    We have often come across cases wherein Clients recollect the date of creation of their work, however are unable to prove it via any documentary evidence. WIPO Proof will be now a rescue to all the future creators since the service is available at the click of a button. This service will be useful for copyright work, trade secrets, digital assets, research and data, and the like.

    Let us elaborate further:

    1. A copyrightable work – In India it is not mandatory to register one’s work under the Copyright Act, 1957, instead, copyright vests in a work as soon as it is created. Some examples include: music, lyrics, artistic works. However, in case a dispute arises, important evidences will include - the date of creation of the work to prove prior use and true authorship of the work. This can now be evidenced with the help of WIPO Proof.

    2. Trade Secrets - Establishing prior use for a trade secret has always been a challenge. How can one prove use of a trade secret if it’s been a secret? And if a third party decides to adopt the trade secret and claims rights over it, how does the true proprietor protect its trade secret from being exploited commercially?

    Well, with WIPO Proof, a trade secret owner can not only continue to secretly use its methods but also ensure that the evidence of use is created without actually releasing it in the market and be prepared to protect itself from any infringements in the future.

    3. Research & Data – Research involves innumerable experiments and creation of valuable data which may lead to the creation of a new product or process, both of which are patentable. However, the notes created, data accumulated remain unprotected. Through WIPO Proof one can now securely claim authority over such data for any unfortunate misappropriations in the future.

    4. Trademark Logo – The 1st adoption of a logo too maybe proved by using the WIPO Proof tool.

    The WIPO Proof provides various packages based on the need of the creator with a minimum payment of 20 CHF (approx. INR 1600) to a maximum of 13000 CHF (approx. INR 1048000). However, the verification of a WIPO Proof token/work is free of cost.

    Begin securing your work now: https://wipoproof.wipo.int/wdts/create/uploaddocument.xhtml

    Reference: https://wipoproof.wipo.int/wdts/

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    The Twittering over ‘TWEET’

    All our readers who are wine lovers must have come across the popular drink called ‘Sake’ a.k.a. ‘Japanese rice wine’. Recently, a Japanese Sake brewery filed for the trademark ‘TWEET’ at the Japanese Patent Office (JPO) in Class 33 covering the following goods: ‘Japanese sake; sake, distilled rice spirits; sake substitute; Japanese white liquor; Japanese sweet rice-based mixed liquor; Japanese liquor; Japanese Shochu-based mixed liquor [Mirin]; western liquors; alcoholic fruit beverages; Japanese Shochu-based beverages Chuhai; Chinese liquors; flavored liquors.’

    The mark was however opposed by the American Microblogging Giant – Twitter Inc., on the grounds that, the applied mark is likely to cause confusion and is identical to its popular mark ‘TWEET’ which is registered in multiple classes, other than class 33.

    Twitter is a platform which permits its users to send and receive posts/microblogs which are referred to as ‘TWEETS’. Twitter brought to the notice of the JPO that the Japanese version of the microblogging website was launched in 2008 and ever since there is only an increase in the users, inferring that the people in Japan associate the mark TWEET with the American company Twitter. Twitter further submitted that multiple alcoholic beverage companies use Twitter as a platform to advertise their products.

    The Opposition Board, concurred with Twitter that the mark TWEET indeed had gained immense reputation and goodwill with respect to media and communication. However, when deciding whether the mark TWEET acted as a source indicator, the Board disagreed with Twitter’s submissions and stated that it is unlikely that the consumers will confuse alcoholic beverages bearing the mark TWEET with the Opponent’s use of the mark TWEET on Twitter and thus dismissed the Opposition.

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    The Incredible brawl over the Impossible!

    Veg/Vegan substitutes for meat is a much welcomed concept globally with the awareness of animal cruelty and of course the benefits of a vegetarian diet. There has been a rise in several start-ups coming up with the perfect substitute for meat. One such start up is a California based company named Impossible Foods. The meat substitute sold by the company is called – ‘Impossible Burger’ which is primarily a veg mixture loaded with veg proteins, than can be grilled, sautéed, fried, etc. The company has also collaborated with Burger King and in 2019 rolled out the ‘Impossible Whopper’ advertised as – 100% Whooper, 0% Beef, which was a huge success.

    Following which BK decided to add more items on its breakfast menu such as the ‘Impossible Croissan’wich’ (see image below), and the Impossible Sausages.

    The company also ventured into Europe and registered its trademark ‘Impossible’ at the EUIPO on January 10, 2019 bearing application no. UK00003365955 in classes 29, 30 and 43.

    However, the Swiss giant – Nestle, launched its product ‘Incredible Burger’ as a part of its plant based garden gourmet range in April, 2019 across Europe and the USA and also filed for a TM application in Romania for the mark ‘GARDEN GOURMET INCREDIBLE BURGER’ in Class 29 on March 5, 2020 bearing application no. M 2020 01760. Simultaneously, Nestle, filed an invalidation petition against the registration of the mark ‘Impossible Burger’ before the EUIPO, the proceedings are still ongoing.

    The California based company filed a suit for infringement at the District Court of The Hague, Netherlands, claiming that ‘Incredible Burger’ infringed upon its registered mark ‘Impossible Burger’ and applied for a provisional injunction to stop Nestle from marketing its product bearing the mark ‘Incredible Burger’. The Court observed visual similarity between the marks since they both started with the letter ‘I’ of the alphabet and ended with ‘ible’. The Court ruled in favour of Impossible Foods and ordered a pan-Europe ban prohibiting Nestle from using the mark ‘Incredible Burger’. The two brands were also deemed to be phonetically similar and also conceptually similar to an extent. The Court assumed the likelihood of confusion amongst the public due to the similarity of the goods covered by both the marks. Nestle is likely to rebrand its burger to ‘Sensational Burger’ in the EU.


    It was further noted by the Court that, Nestle had approached Impossible Foods for a license to use ‘Impossible Burger’, however, the license talks fizzled out. The Court suspected that Nestle had purposely attempted to use ‘Incredible Burger’ to frustrate the registered proprietor – Impossible Foods. It is pertinent to note that Nestle was marketing the same product in the USA under the brand ‘Awesome Burger’ and launched the brand ‘Incredible Burger’ only for the EU.

    *We claim no copyrights over the images depicted. The images are used for reference and educational purposes only.

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    CJEU on eligibility of functional shape under Copyright Law

    The Court of Justice of the European Union (“CJEU”) recently clarified the legal position concerning the applicability of copyright laws to functional shapes. The subject matter in the present case4 was the shape of Brompton’s iconic foldable bicycle which was originally created in 1975 and is being sold in its current form since 1987.

    Brompton’s patent for its bicycle has expired. Following the expiry, a Korean company named Get2Get started selling similar bicycles in Belgium. Brompton sued the Korean company in Belgium for infringing its copyright in the foldable bicycle. Get2Get, in its response to Brompton’s claim, submitted that there is a similarity in appearance because of the technical function it sought to achieve. It has deliberately adopted the folding technique which Brompton had invented because it was the most functional method of delivering the technical solution.

    The Belgium Companies Court was not certain as to whether copyright would subsist in shapes “necessary to obtain a technical result” and hence it referred the matter to the CJEU for a preliminary ruling on a proposed criterion that can be used in determining the same.

    Image sourced from https://thebikeaffair.com/shop/product/bicycle-brompton-m6eu-5139?category=15

    We do not claim any copyright in the image and the same has been used for representational and academic purposes only.

    CJEU Decision

    The CJEU held that copyright protection is in principle available to products the shape of which is, at least in part, necessary to obtain a technical result, insofar as "that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

    In order to reach this conclusion, the Court considered a few precedents, including its decision in the popular Cofemel case5 wherein it was confirmed that for copyright protection to subsist - “it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices”

    CJEU proposed the following criteria:

    1. The existence of other possible shapes which allow the same technical result to be achieved is "not decisive” but “may be considered”;

    2. The effectiveness of the shape in achieving that result could be considered;

    3. The intention of the infringer is entirely irrelevant; and

    4. The existence of a patent or other IP rights in the same product does not automatically preclude copyright protection.

    The Court further noted that in order to assess whether Brompton Bicycle is an original creation under copyright law, the referring court needs to assess Brompton Bicycle with respect to all the relevant factors, as they existed when the it was designed, irrespective of the external and subsequent factors.


    The CJEU has provided the required clarification and has now left it open for the Belgium Companies Court to determine whether the Brompton Bicycle would be a ‘work’ taking account of all the relevant aspects of the case as they existed at the time of the creation of its design. The Belgium Court also has to adjudicate whether the bicycle’s shape is exclusively dictated by technical considerations, rules, or other constraints, which have left no room for creative freedom.

    4Brompton Bicycle Ltd v Chedech/Get2Get C‑833/18

    5Cofemel – Sociedade de Vestuário SA v G-Star Raw CV C-683/17

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    CCI To Investigate Monsanto’s Cotton Licenses; Delhi High Court Refuses To Interfere

    Monsanto (Monsanto Holdings Pvt. Ltd., Monsanto Company, Mahyco Monsanto Biotech (India) Pvt. Ltd. (hereafter ‘MMBL’)- collectively referred to as “Monsanto”) is a group of companies engaged in developing technology for producing genetically modified seeds. It has developed and commercialized Bt. Cotton Technology (Bollgard-I and Bollgard-II) which makes the cotton seeds resistant to Bollworm. This invention is patented by Monsanto and licensed to MMBL (Monsanto’s Indian counterpart) in India. MMBL, in turn sub-licensed the technology to various seed manufacturers in India. As consideration for sub-licensing the technology, a non-refundable fee (to be paid upfront) and a recurring fee (known as “trait value”) was charged. Some of the seed manufacturers, Nuziveedu Seeds Ltd., Prabhat Agri Biotech Ltd. and Pravardhan Seeds Pvt. Ltd. (collectively referred to as “Manufacturers”), disputed the royalty charged by Monsanto in its sub-license fee.

    The Department of Agriculture, Cooperation and Farmers Welfare, Ministry of Agriculture and Farmers Welfare, Government of India (‘MOA&FW’) and the Manufacturers (together referred to as “Informants”) approached the Competition Commission of India (“CCI”) alleging that Monsanto’s practices relating to imposition of exorbitant trait fee for using the technology for manufacturing Bt. Cotton Seeds were anti-competitive and therefore in contravention with Sections 3 and 4 of the Competition Act. It is the case of the Informants that the Bt. Cotton Seeds sublicensed by Monsanto are used to cultivate 99% of the Cotton produce in India. This clearly makes Monsanto a dominant player in the market. By charging an excessive and unfair fee and restrictive and unfair terms of sub-licensing, the Informants state that Monsanto has resorted to Anti-competitive practices. The CCI found the allegations made by the Informants prima facie hold merit. It also held that prima facie, the conditions imposed in the sub-licence agreements were harsh and not reasonable for protecting the IPR rights, as is claimed by Monsanto.

    Monsanto filed a petition at the Delhi High Court Monsanto Holdings Pvt. Ltd. And Ors v. Competition Commission of India And Ors. 1challenging the order of CCI directing an investigation into Monsanto’s activities. Monsanto challenged the jurisdiction of CCI over a matter related to licensing of patents. It stated that this was exclusively within the jurisdiction of the Controller of Patents. It also argued that the Patents Act exclusively governs all practices and contracts relating to exercise of patent rights and the remedies against their alleged abuse would fall exclusively within the ambit of the Patents Act.

    Monsanto cited the Ericsson2 case and stated that since there is a repugnancy between the Patents Act and the Competition Act, the Patents Act will prevail. The Court however observed that, “the various provisions of the two enactments, concluded that the orders that can be passed by the CCI under Section 27 of the Competition Act in respect of abuse of dominant position by any enterprise are materially different from the remedies that are available under Section 84 of the Patents Act.” It further observed that as per Section 21 and 21 A of the Competition Act, any Regulator and the CCI have the power to refer matters to each other as the case may be. Thus, it observed that, the legislative intent, to ensure that the provisions of the Competition Act are implemented in addition to the provisions of other statutes, is apparent. Also, the other important case relied upon by Monsanto was Bharti Airtel3 . However, in this case also the Supreme Court has not ousted the jurisdiction of CCI. With respect to Bharati Airtel, the Court held that the deductions made with respect to TRAI are not verbatim applicable to the Controller of Patents, even though both are specialised regulatory bodies in this case. This is because, both, the scope of the issues in that case and the powers of the TRAI are different from the dispute in this case and the scope of powers of the Controller of Patents.

    In view of the above, this Court held that it found no reason to interfere with the impugned order. It also observed that “an order passed by the CCI under Section 26(1) of the Competition Act is an administrative order and, therefore, unless it is found that the same is arbitrary/ unreasonable, etc.., no interference would be warranted.” Thus the petition filed by Monsanto was dismissed.

    1W.P.(C) 1776/2016 and CM Nos. 7606/2016, 12396/2016 & 16685/2016

    2Telefonaktiebolaget L.M. Ericsson v Competition Commission of India & Another: W.P.(C) 464/2014 decided on 30.03.2016

    3Competition Commission of India v. Bharti Airtel Ltd. And Ors.: Civil Appeal No. 11843/2018, decided on 05.12.2018

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    Dettol Vs. Devtol

    In the case of Reckitt Benckiser India Pvt. Ltd vs. Mohit Petrochemicals Pvt. Ltd., CS(COMM)No.141/2020 the Hon’ble High Court of Delhi, via video conferencing, decreed the suit in favour of Reckitt Benckiser by granting a permanent injunction.

    Reckitt Benckiser is a British MNC. Its anti-septic product bearing the brand name ‘DETTOL’ was adopted in 1933. The earliest trademark application in India for the wordmark ‘DETTOL’ bearing no. 141707 was filed in 1949, claiming use since 1939 covering the following goods in Class 5: ‘pharmaceutical veterinary and sanitary substances medicinal ointments and salts medicaments for ligatures insecticides and disinfectants.’

    On the other hand, Mohit Petrochemicals filed a trademark application for the wordmark ‘DEVTOL’ bearing application no. 4494428 covering ‘hand sanitizers’ in Class 5 on a ‘proposed to be used’ basis. Mohit Petrochemicals simultaneously launched hand sanitizers bearing the mark ‘DEVTOL’ and the product was packaged in a trade dress similar to that of Reckitt Benckiser’s product ‘DETTOL’. Please see below:

    Reckitt Benckiser filed the present suit praying for an order restraining Mohit Petrochem from infringing upon its registered trademark ‘DETTOL’. However, Mohit Petrochem appeared before the Court on advance notice and stated that, they were already taking steps to withdraw the mark ‘DEVTOL’ at the Trade Marks Registry, in addition to instructing its agents and dealers to withdraw all the products bearing the mark ‘DEVTOL’ from the market.

    The Court, recognized that DETTOL was a well-known mark and restrained Mohit Petrochem from infringing upon the mark. In addition, the Hon’ble Court also imposed costs of INR 100000 (approximately USD 1350) on Mohit Petrochemicals and directed that the amount be deposited to the Juvenile Justice Fund.

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    Hidden Meaning in Trademarks: Nick name or Brand Name??

    Lacoste was founded in the year 1933 by Rene Lacoste, famous tennis player, and André Gillier. The history behind adoption of the famous crocodile logo goes back to the year 1923 when Lacoste lost a bet to his coach Alan Muhr. It was decided that if Lacoste won the next Davis Cup, Muhr would buy him a crocodile skin suitcase which Lacoste saw on a store.

    Lacoste lost the match but one journalist, who might have overheard the conversation about the bet, reported that the tennis player fought like a crocodile in the match. Since that day Lacoste was given a nick name ‘The Crocodile’ due to his consistency and calmness in the game.

    Later on his company launched the logo of ‘the crocodile’ which became history.

    *We claim no copyrights on the above image. It is reproduced solely for reference and educational purposes.

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    An Optimist says the glass is half- filled, a pessimist says the glass is half-empty, but the Opportunist drinks the water and maybe a smarter Opportunist buys the glass and rents it to the Optimist and Pessimist for their study!!

    Amused? Well, even we were, when reports suggested that amidst the Pandemic, Filmmaker Anand L Rai applied for registration of the mark “Corona Virus”. There are various other marks such as “No Rona during CoRona” etc. for which trademark registration applications have been made. Reports also suggest that various film production houses have registered names like, Deadly Corona, Ishq Vishq Pyaar Corona, Karina te Corona, Lockdown Mein Love Story, Go Corona Go and Corona Pyaar Hai..”


    APJ Abdul Kalam Technical University develops 24 different prototypes for the fight against COVID

    The Centre for Advanced Studies in Uttar Pradesh’s APJ Abdul Kalam Technical University is actively helping tackle the COVID challenges with its bunch of innovations which include a robot for hospital assistance, sanitization tunnels for people, sanitization chambers for Personal Protective Equipment (PPE) kits, automatic and pedal-operated sanitizer dispensers, face shields and sanitization tunnels that disinfect files and luggage.

    The University has already created 24 prototypes so far and 7 of them are commercially available at nominal prices. Some of its noteworthy inventions are:

    1. Multi-Channel Ventilator

    A multi-channel machine that can enable more than one patient to be hooked on to a single ventilator and optimize its use. This could prove very beneficial in cases of urgent demand as a patient only requires 500 cubic volume of Oxygen while a ventilator has the capacity to deliver 2,000 cubic meters. Although this is not for ideal situations, however, it might help to overcome the shortage of machines due to an increased patient load.

    2. Robot for Hospital Assistance

    Anuj Kumar Sharma, associate dean for Research and Development at the University’s Centre for Advanced Studies (CAS) and a Ph.D. student, Mahip Singh has developed a robot that can deliver food and medicines, thermally scan patients and sanitize wards with ultraviolet light. The Robot also has a screen and an audio-video system to convey messages from doctors/medical staff to patients. Besides, the robot can move patients (weighing up to 200kg) between wards. The gadget can either be manually monitored by the patient or by a health care worker from a distance of 500 meters to a kilometer. AKTU has applied for a patent for the invention

    3. PPE Kit Sanitization Machines

    This machine can disinfect PPE kits within minutes and make them ready for reuse. India has been struggling with the shortage of PPE kits for doctors and medical staff since the beginning of this pandemic.

    4. Portable Sanitising Machine for disinfecting items

    The machine is capable of disinfecting files and other items such as wallets, wrist watches, spectacles, rings, stethoscopes and the like, without impacting their efficacy. It employs two kinds of technologies—ultraviolet type C light which kills the molecules that are the building blocks of the virus and an alcohol-based spray that destroys the fat-based outer shield of the virus within two minutes. The University has filed a patent application for the same.

    Other significant inventions include a six-feet long sanitization tunnel for humans which works within four seconds, a face shield, a touch-free, peddle-operated hand sanitizer machine, a sensor fitted sanitizer dispenser, a sanitization tunnel (named Shuddhi Surang) for luggage, a smart Robo police to assist police patrolling in areas of high infection, a robotic arm to collect samples from patients, a contactless switch, a door opening device, and a health band.

    Nashik Based Man Develops Tractor-Mount For Mass Sanitization, Applies For Patent

    A Nashik based individual, Rajendra Jadhav and his two sons, Mangesh and Dhananjay have developed a tractor-mounted sprayer for mass sanitization. The sprayer comprises two radial aluminium fans moving opposite to each other, each sucks air from opposite direction which is released through nozzles at high pressure with minute droplets of the sanitizer. Since the panel rotates at 180 degrees, it can easily cover up to 15 feet tall walls, with a capacity of 600 litres of water plus disinfectant of around 3.5 litres, and can be mounted on any 15 HP tractor. The tractor mount is named Yashwant and it costs roughly Rs 1.75 lakhs. Its biggest advantage is that it barely needs any human intervention and a single person can drive the tractor and operate the sprayer simultaneously. The sprayer has been identified by the National Innovation Foundation (NIV) as a potential S&T based innovative solution in India's war against the virus. Jadhav has applied for a patent for ‘Yashwant’.

    The tractor mount is presently being used by Satana Nagar Nigam to cleanse and disinfect around 30sq km areas in the village every fortnight and can be used even for urban centers.

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