Jun 20

RKD NewsNet June 2020 - Volume III

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

General News

  • Brands and Opinions; Trademarks and Racism
  • Being ‘Lovely’ Is Just Enough!
  • International News

    Brands and Opinions; Trademarks and Racism

    Concepts that divide us as a society are not few. We are conditioned into thinking that discrimination is a form of systemization. While some concepts and ideologies are a product of circumstance, such as geography, time, weather conditions, etc., others are products of human intervention, including differences in castes, religion, race, sexual inclination, and the like.

    Somehow, over the years, the differences formed as a result of human intervention have been distorted and used by some people for personal gain. In my opinion, commercial gain and personal aggrandizement is the root of concepts such as racism and slavery, communalism, casteism and all other forms of racial prejudice. The classic example of this was the concept of Apartheid in Southern Africa. The “whites” took over all land assets in their favour and left the crumbs off the table for the non-whites. These divisions have been thriving from time immemorial to modern times- through all the ages. They have led to revolutions, world wars, massacres, riots and genocides. The question is Why? Why is it that things that are corroding civil society from within, have been able to survive and thrive inspite of the society’s ever changing nature towards the humane and the compassionate? I believe, it is because of ignorance, apathy and lack of compassion that we have towards those suffering, that has discouraged society from eradicating these divisions completely.

    I also think that this is the reason, why even several decades after slavery was abolished, in the USA: “the land of the free and the home of the brave”, disheartening cases like those of George Floyd still occur. The mass protests against Racism and practices of racial discrimination in the wake of this event are only an inner response coming out to the fore. I think, in the minds of the protestors it was not the act itself that caused revulsion, but the fact that the police, whose ostensible duty is to protect the society caused the event to happen.

    Image Source: https://www.target.com/p/kaplan-early-learning-children-around-the-world-wooden-figures-set-of-17/-/A-76800850 We do not claim any copyright in the image and the same has been used for representational and academic purposes only

    Let this be an opportunity for the government machinery and large influential corporations to initiate a different kind of thinking and show their solidarity towards such causes. Branding, today, is everything. The value of a product and its popularity in the market is dependent upon the brands and taglines. It is seen that many famous brands have shown their solidarity to various issues in the past using their brands.

    You’ll recall our article on brands having promoted social distancing. Read it here. Similarly, in light of the recent protest against Racism various brands have put out statements in creative ways to show their support against racial discrimination:


    There have been various instances where trademarks have seemingly hurt the sentiments of a particular group of people or origin. The case of the “Red Skins” trademark is a case in point. Again, we have the case of the famous rock band “The Slants”. Mr. Simon Shiao Tam established a dance-rock band and decided to name it “The Slants”. The band consisted of members who were of Asian American origin. Tam also applied for trademark registration of THE SLANTS. The same was earlier refused. This was because, the word Slants is used as a derogatory term to refer to South East Asians. It is considered to be a racial slur. However, the Supreme Court of the US allowed the registration stating that it was a part of their right to speech. As upholders of Constitutional values it is important for government and judicial authorities to ensure that they don’t, knowingly or unknowingly promote racial discrimination, or discrimination in any form whatsoever. One of the absolute grounds of refusal of a trademark registration is if the mark is likely to hurt the religious susceptibilities of any section or citizen in India. These marks will not proceed to registration.

    Big brand owners need to understand that they influence their customers. But ultimately, businesses sell what the consumers need. It is only when the thinking of the consumer will change and remain steadfast on acceptance and compassion that brands will be able to truly change.

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    Being ‘Lovely’ Is Just Enough!

    From time immemorial people have been conditioned to think that in order to be considered beautiful, one has to be ‘fair’! *cringe*

    This can be evidenced, in the matrimonial columns of various Indian newspapers and webpages where well-built tall grooms seek ‘fair skinned’ matches. In India, for some reason people, particularly girls, are tuned since childhood to focus on the colour of their skin! Even today many people are ignorant about natural protective pigments such as melanin. In fact, white skin is a deficiency of this pigment and the white skin is prone to be attacked by the ultra-violet rays of the sun. Scientifically, a wheat-ish complexion is an ideal skin tone. The ‘white skin’ myth is passed down from generation to generation where children are asked to consume milk instead of tea/coffee to ensure a ‘white skin’. This is called a deep rooted feeling of inferiority complex in some people born with extra melanin as compared to the others.

    Brands have played upon this inferiority complex to market fairness creams & skin lightening compositions. However, recently, the thought process of people has started to change and the collective common has started to take offence to the advertisements promising ‘fairer’ and thus ‘beautiful’ skin. A particular target on the Indian market was the product ‘Fair & Lovely’! Not only for its name but also for the depiction of a dark skinned girl being portrayed as - ugly, unhappy and rejected by the society. When she uses the product, and in a period of 14 days she becomes fair and therefore - is happy, popular and accepted by society.

    It has been reported that, in the face of changing stereotypes, the brand owner of the brand ‘Fair & Lovely’ has decided to rebrand its product ‘Fair & lovely’ which was launched far back in India in 1975. A statement was issued that the brand owner has decided to stop using the word ‘Fair’ and aim at a more “inclusive vision of beauty”. The new avatar of their product is still under the process of receiving approvals and will probably be released in a few months. We have however, come across the trademark applications in Class 3 for the marks: ‘Glow & Lovely, ‘Even & Lovely’, ‘Bright & Lovely’, ‘I am Lovely’ and ‘Truly Lovely’! Which one do you like best?

    It appears that the company has been moving in this direction since 2019, wherein it emphasized on glow, even tone, skin clarity and radiance instead of fairness, whitening and skin lightening, thus focusing on a ‘healthy skin’ instead of a ‘fair skin’.Lately, the Company had also removed from its packaging the skin shade chart and the cameo of a light skinned girl compared to a dark skinned girl.

    Yes, it will be possible to remove the stereotype from the packaging from the product, but can it be removed from the minds of the people, where it has been entrenched for generations?

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    USPTO announces Prioritized Examination Program for COVID-19 related goods and services

    The United States Patent and Trademark Office (USPTO) on June 15th, 2020 announced that it will accept petitions to advance the initial examination of applications for marks used to identify ‘qualifying COVID-19’ medical products and services.

    The USPTO will also waive the fees for such petitions as it considers the effect of COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 CFR § 2.148

    Qualification under the procedure:

    To qualify for this procedure, the applicant must seek registration for one or more qualifying COVID19 medical goods or services described below

    Pharmaceutical products or medical devices such as diagnostic tests, ventilators and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat or cure COVID-19 and are subject to approval by the U.S. Food and Drug Administration (FDA)

    Medical services or medical research services for prevention, diagnosis, treatment of or cure for COVID-19.

    This prioritized examination is being done with an intent to expedite the initial examination process for qualifying applications within approximately two months.

    How to apply under the procedure

    The Applicant has to first file an application and then file a petition addressing it to the Director, mentioning the serial number assigned to the application. Both the application and the petition have to be submitted through the Trademark Electronic Application System (TEAS) on the USPTO website. The Applicant has to select the “Petition to Director” form under the “Petition Forms” tab on TEAS.

    This petition must include a statement of facts, supported by affidavit or declaration under 37 CFR § 2.148 mentioning the applicant's goods or services with an explanation of why the goods or services are of a type that qualifies for prioritized examination, including the section of CFR under which goods are regulated.

    Read the complete announcement here.

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    Trade Description: The New Requirement in India For Display Of ‘Country of Origin’ On Goods

    Stakeholders in brands use identifiers such as trademarks, logos, trade dress, labels and jingles to attract customers to their products or services. These mechanisms help brand owners to stand out in a market full of competitors.

    In the selection of these identifiers brand owners rely heavily on public opinion, current social trends and cultural milieu of the target customers. What is also taken into account is the age-group, geographical area and class of customers to ensure that a product or service finds its way into the consumers’ minds and lives.

    In addition to the actual identifiers, brand owners are also required to adhere to strict rules of metrology, labelling, packaging and promotional guidelines. Governments generally make these rules ostensibly in public interest.

    Therefore, a whole sub-branch of trademark law has evolved which is referred to as the ‘trade description’ in respect of the product or service. This trade description involves displaying the quantity and contents of the package, the quality of the product and often includes the origin of the too. For example, in the case of foods, cosmetics, medicines, etc. the packages of the products are required to display the ingredients and the quantity of items contained therein. In some jurisdictions like India, the product is also required to display the “Best Before” date, date of manufacturing/ packaging and the name and address of the manufacturer and marketer. Also, in some jurisdictions, the product needs to display its source with a ‘green dot’ for a vegetarian product and a ‘red dot’ for a product using an ingredient from an animal source. In several other jurisdictions, particularly in respect of food products, manufacturers also need to provide the kilo-calories per unit. Some items such as cigarettes must be sold without any brands and in plain packaging in some countries; in others, the package needs to show graphic images of a diseased individual or the ‘skull and bones’ symbol depicting harmful ingredients/repercussions. Any incorrect information is called a false trade description and in many countries, including India, it is a criminal offence to mark a product or use in relation to a service or a description that is known to be false.

    Thus, it goes without saying that there is no scope for misrepresentation. Misrepresenting information about one’s product or service: its quality, origin, etc. is a punishable offence. All information in the trade description is required to be true and accurate.

    In some cases, the brand itself may be suggestive of a place of origin where it actually has not been made or produced. Some terms, have of course become generic for a country. But all bone-china does not actually come from China or India ink is not necessarily produced in India or a Panama hat may actually be manufactured in Goa. In India, we have a robust system of protecting geographical indications and it is precisely this form of misuse that the Geographical Indications of Goods (Registration and Protection) Act, 1999 seeks to prohibit.

    India is currently promoting its “Vocal for Local” or the “Glocalisation” movement. In a recent decision by the Government of India, it has now become mandatory for sellers who are supplying to the Government to display the “Country of Origin” on the product as a part of the product information. The Department of Promotion of Industry and Internal Trade (DPIIT) is also in talks with private e-commerce platforms such as Flipkart, Amazon, Snapdeal, Nykaa, Grofers, to display the “Country of Origin” of a product along with the product listing. This appears to be a strategic move to encourage buyers to buy local products rather than imported ones.

    Interestingly, in India, it is a general notion, that imported products are better and more reliable than locally produced ones. They are generally referred to as ‘foreign goods’. This has encouraged brand owners to adopt ways and means to represent themselves as being of foreign origin or suggesting that their products have a foreign source or is made using foreign technology. Sometimes owners either adopt the name of a foreign location as their trademark, use another country’s flag’s colour combination in the trade dress or use words from foreign languages as their trademarks, to indirectly convey to the consumer that they have some foreign ‘connection’. Brands like Louis Philippe or Peter England are owned by India’s Aditya Birla Group; Knotty Derby and Arden Shoes is a shoe brand owned by Sumanglam Impex Private Limited; Westside is owned by TATA Group, American Swan is owned by Anurag Rajpal of The American Swan Lifestyle Company; Britannia Biscuits is owned by Wadia Group, Da Milano Italia is a luxury brand owned by the Malik family. This type of branding is used to attract consumers by trying to establish a foreign connection.

    Some of the brands with Indian origins. We do not claim any copyright in the images, they have been used for representational and academic purposes only.

    With the government encouraging people to adopt and use products and services which are made or produced locally, in order to support the country’s economy, the mandate to display the country of origin is a welcome move.

    The national opinion is also complementing the government initiative and atleast for now citizens are migrating to locally sourced products. India is a huge consumer market. As the mood of the Indian consumer slowly changes, on one hand Indian brands will proudly project and actively promote their local origins and multi-national brands will attempt to portray some Indian roots. But until then, ‘Caveat Emptor’ and look out for the Country of Origin information!

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    Counterfeit Alert: Brace Yourself

    -Adv. Isha Gandhi

    With the Corona Virus outbreak, wearing a mask outdoors has become a necessity. With its increased demand, manufacturers from different sectors have started manufacturing and selling masks in large numbers. In order to stand out and sustain in the market, manufacturers have come up with unique styles, designs, prints, materials, etc. to attract customers. Popular brands like Gucci, Ralph Lauren, Tommy Hilfiger have come up with masks in their signature styles and they have been widely endorsed by famous celebrities all across the world.

    This increased demand for masks, since they became a necessity has led to the growth of counterfeits, especially for pharmaceutical products and protective gear. The lockdowns have pushed people to make online purchases which have resulted in a great opportunity for counterfeiters to prey on the vulnerability of the purchasers.

    Recently, it has been reported that counterfeit masks of various famous brands including Nike, Adidas, Tommy Hilfiger, Swiggy and Amul are being widely sold in the market1 . Where most of the IP Owners are taking such acts of counterfeiting very seriously, some companies are ignoring the misuse of their trademarks and would initiate legal action only if it goes out of hand.

    Tommy Hilfiger has recently filed a suit for infringement against two Tamil Nadu based manufacturers for selling counterfeit masks and other products under its registered trademarks. Brief facts of the case are as follows:-

    Tommy Hilfiger Europe B.V. (“Tommy”) is a Netherlands based company engaged in designing and manufacturing high end apparels for men, women and children besides footwear, accessories, fragrances and home furnishing etc. Its merchandises are well-known in the market and are sold under its registered trademark “TOMMY HILFIGER” and its variations i.e. 'TOMMY HILFIGER', 'TOMMY', 'TOMMY SPORT' and‘’ (the Flag Logo).

    Tommy found that counterfeit masks, under its registered trademarks, were being advertised and sold on various online portals like Facebook, Instagram, IndiaMart, Just Dial etc. Upon investigation it was found that the counterfeiters, namely M/s. Taqua Textiles and M/s. Shine Exim India, were based out of state of Tamil Nadu. They were both sole proprietorship concerns, owned and operated by one Mr. Mumdhaj Akbarali Abubakkar. These companies were not only selling counterfeit masks but also various other merchandises under Tommy’s registered trademarks.

    Tommy filed a suit for infringement seeking permanent injunction restraining the said counterfeiters from infringing and passing off its trademarks and was successful in obtaining ad-interim ex-parte injunction against the counterfeiters.




    The pandemic has changed our lives and businesses and the same is likely to continue for a long time even after equilibrium. Counterfeiters have not spared the food delivery application- Swiggy. Swiggy is reported to have said that it is considering enrolling vendors to supply Swiggy-branded masks for use by its delivery partners in select cities but it hasn't produced any yet.

    It is high time for brand owners to brace themselves to survive and protect their brands before it is too late. With a weak economy, people are more inclined towards heavier discounts, thereby falling in the trap of buying fake products and the counterfeiters will continue to capitalize these difficult times.

    Not only brand owners but also buyers should be alert and have an understanding of spotting a fake product. Price is usually one of the first indicators of a counterfeit product. In case of doubt, the buyer can approach the seller and ask for quality assurance and genuineness.


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    IIT Delhi first to gets a nod from ICMR


    The Indian Institute of Technology (IIT) Delhi became the first academic institute to get the approval from the Indian Co Council for Medical Research (ICMR) for its COVID 19 testing kits. A non-exclusive open license has been given to Genie Laboratories, a biotechnology firm based in Bangalore for manufacturing and commercialization of these kits. The test kits are provided with a price rider of INR 500 per/ kit.


    DIAT Pune develops disinfectant spray to combat COVID.


    The Defense Institute of Advanced Technology (DIAT) Pune has developed a nano-technology based disinfectant spray named “Ananya” for combating Coronavirus. DIAT in its press statement stated that the formulation can be used on masks, PPEs, hospital linens, and other surfaces like medical instruments, elevator buttons, doorknobs, corridors, and rooms likely to be contaminated by the Coronavirus. The formulation has the ability to neutralize the outer protein of the virus and the silver nanoparticles can rupture the membrane of the virus, thereby making it ineffective. DIAT will be filing for a patent and is in talks with industrial entities for large scale manufacturing of the material through a technology transfer arrangement.


    Racing for Remdesivir

    To allow easy and affordable access to the drug, Gilead is reported to have signed non-exclusive licensing agreements with five generic drug manufacturing companies in India and Pakistan, allowing them to make Remdesivir in 127 countries. 2 Bangladeshi companies - Eskayef Pharmaceuticals and Beximco Pharma - have started making and distributing Remdesivir without Gilead's approvals. These companies quickly took advantage of International Trade Rules that allow nations listed by the United Nations as “least-developed” countries to ignore patents and produce affordable drugs. Bangladesh comes under the least-developed country. Reports suggest that three of the Indian pharma companies to which Gilead granted license are waiting for the government’s authorization for bringing the drug into the market. As per Gilead's agreement, Indian manufacturers are free to price the drug according to their viability.


    IIT Bombay start-ups design temperature sensing device capable of identifying patients in crowded areas.


    Two start-ups incubated at the IIT Bombay, have designed artificial intelligence (AI) and machine learning-based temperature-sensing devices that are capable of scanning a large group of people at a time for body temperatures to aid government agencies in detecting COVID infected patients and carriers.

    Faclon Labs is working along with the Brihanmumbai Municipal Corporation (BMC) to set up automatic plug-and-go screening devices that can be mounted on a wall or tripod. These devices use artificial intelligence to localize and detect a person in its field of view and analyses it to get the thermal data to identify the body temperature and then capture thermal snapshots of individuals if the body temperature is above the threshold. Relevant people are alerted to take necessary actions, Falcon is in the process of applying for a patent for the screening device.


    Ayurvedic medicine manufacturer injuncted from infringing mark


    Franco Indian Pharmaceuticals recently sued one Ayurvedic medicine manufacturing company, Green Cross Healthcare Pvt. Ltd. over infringement of its registered trademark DIAVIT. Franco Indian argued that Green Cross was taking unfair advantage of the current lockdown situation, and using a completely identical mark for selling its products on e-commerce platforms. This is not only bound to hamper public interests, but also have a fatal impact on the health of patients using Franco Indian’s DIAVIT since it is a drug for supporting therapy for diabetes. The Bombay High Court not only granted injunction, but stated that this was not a case for “likelihood of confusion” but one of “inevitable” confusion, which is bound to be created due to the identical marks. The Courts have time and again taken a strict view when it comes to infringement in cases of medicines to protect the larger public interest of health and safety of the public.

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    Hidden Meanings in Trademarks


    With the pandemic looming all over the world, it is as if the entire world has gone indoors. Lockdowns have made people re-think their visits to the gym, jogging, cycling, etc. In such a situation, we are all trying our best to remain fit and calm in the house. And what better than Yoga can help with that?! Yoga has gained global importance and the western countries have adopted it a lot more in the past few years.

    It is interesting how YOGA AUSTRALIA’s logo, clearly depicts the 2 words- “YOGA” and “AUSTRALIA”. No? Look again. The woman’s leg and hand touching each other enclose the shape of Australia on a map! Like we always say... You can+\’t unsee it!

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