Dec 20

RKD NewsNet December 2020

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

General News

  • Virtual IP Conferences: Here to Stay?
  • International News

    Virtual IP Conferences: Here to Stay?

    - Disha Dewan

    The months of October and November 2020 saw a slew of virtual Intellectual Property conferences all over the world. From AIPPI to AIPLA, PTMG to FICPI, from WTR Connect to the latest INTA conference - all have endeavoured to use various virtual formats to connect with audiences. It seems to have become the norm during Covid times but are virtual conferences here to stay for good?

    The conferences were a mix of paid-for and free events. AIPPI in fact offered the entire 8-day conference for free to its members. The same was the case with 2-day FICPI which was free for its members with a nominal fee of $50 for non-members. PTMG charged about GBP 320 for a 2-day 2-hour seminar and three podcasts whereas INTA charged $750 for its Annual and Leadership conference combined making a total of 10 days of virtual time spent together.

    So how successful have virtual conferences been? That depends on the metrics by which one measures success. If it was attendance, then the success has been variable. For example, I know for a fact that INTA saw far fewer participants and firms attending although the total number was still in the many thousands. This could have been primarily due to people not seeing how they would be able to network virtually, the access to copious networking being one of the key attractions of INTA.

    Another measure of success could be how seamlessly the conference was conducted and the networking opportunities offered. Many conferences such as AIPPI and INTA built customized landing and networking pages while using the Zoom application to conduct meetings. There were even elaborate virtual chat rooms available for networking. For example, AIPPI had the Chat Lounge function where one could contact any and all attendees and engage in a textual conversation. Email addresses could be exchanged on this chat and meetings thereafter set up on Zoom or other video conferencing applications. INTA provided dedicated hospitality areas where one could video chat live with other participants from all over the world. INTA also built an Artificial Intelligence powered networking tool called INTAConnect to allow attendees to connect to each other and even schedule video meetings on the platform. These tools were executed flawlessly and the organizations deserve a lot of credit for the hard work put in to make these conferences a productive and pleasurable experience for attendees. With the time and effort that it has taken to build these platforms, a helpful suggestion however is to keep them open to attendees rather than only allow access for up to a month after the end of the conference.

    There were many noteworthy features and aspects of the conferences that added to the enjoyment and their utility. In addition to the standard educational sessions, some conferences hosted social networking events. For example, the Women in AIPPI event was structured to have a subject expert talk about management styles, then for everyone to go into breakout rooms in order to be able to interact one-on-one followed by a dance party. It was also possible to network with attendees during this event on the private Zoom chat. Similarly, AIPLA hosted a successful Women in IP Law Committee Breakfast meeting which allowed both junior and senior attorneys to interact with each other. INTA similarly hosted a successful Women’s Initiative session and the break out rooms made it possible to connect to other attendees in smaller groups and forge a real connection. INTA also hosted various fun ‘social’ sessions discussing myriad topics such as tea, coffee, wines, FIFA, chocolate, photography and also playing online games and quizzes. AIPPI adapted itself to allow for online voting on its Study Questions.

    Another technique for fostering interaction were INTA’s Table Topics and AIPPI’s Virtual Roundtables. These included 10 to 15 people getting together virtually to discuss a relevant IP topic and thereby getting to know each other as well. Furthermore, INTA’s Speed Networking format allowed attendees to meet each other in an informal environment and learn novel, personal things about each other. Another benefit of having the Speed Networking happen virtually is that it allowed people who don’t normally attend the event physically at the in-person INTA conference to join in and this included normally very busy INTA Board members. The sharing of email addresses during such events encouraged networking.

    It helps to have a few basics covered for virtual conferences. Dressing well and as far as possible keeping a professional background. Remember, having virtual meetings many a times means inviting people into your home. What do you want people to see? Seeing that one’s name is displayed alongwith the name of the firm and preferably country too. It is a good practice to exchange contact information as often as possible and if this is not possible, then at least to jot down the names of people you see/meet and find their contact details on their website or on LinkedIn.

    The important question of course is whether virtual conferences can generate business. In my personal experience, I met an attorney during a Speed networking event for the first time and the very next day received instructions for multiple trademark renewals. I was pleasantly surprised and it increased my engagement with virtual conferences. Perhaps this could work.

    So what worked for me and what didn’t? Interactive sessions where I could converse with other participants and come away with contact details were most effective. Sessions that were webinar-based were not too helpful as it was impossible to see who the other attendees were - the only saving grace being able to send questions via the Q&A box to the panelists which weren’t always answered. Still, it was better to have a diverse set of speakers than one or two who spoke for long periods of time.

    There was plenty of real life feedback from attendees during my interaction with them on the advantages and disadvantages of virtual conferences. Firstly, there were time zone clashes. It was not uncommon for me to be up at midnight attending a session. Neither was it too unusual to find South Korean colleagues up at 4am their time to join into the conversation on Zoom. Their dedication was indeed remarkable! But the question remains as to how sustainable is this process.

    Many attendees also found it difficult and tiring to attend a full day of work and following that up with hours of virtual conferencing. They suffered from Zoom fatigue. Passively listening to a virtual event for hours can take its toll on anybody. Some people however preferred the virtual format and enjoyed not having to rush about looking for their next meeting contact. Some liked the idea of working from the comfort of their own homes while others chose to take their conference to their offices to avoid distractions at home (we all know at least one person with a barking dog don’t we?). This was also done to maintain a distinction between private life and professional life.

    Many people expressed their approval of virtual events as it allowed a larger number of people than normal from their firms to attend the conferences. Many were happy about the saving of transport and hotel costs and also the time involved in travel. However, many missed the personal connection and the sightseeing in exotic places that IP conferences usually take us to.

    With CLE credits becoming available virtually, the need for attorneys to travel to conferences reduces significantly. There has been a paradigm shift as more and more people become comfortable with video conferencing and it becomes more acceptable as a business development tool during this pandemic. If virtual platforms become more refined to the extent that they take care of all educational and business requirements of attendees, it may be that the benefits of virtual conferences outweigh their shortcomings. In any case, there is a growing trend amongst attorneys to contact each other outside of conference timings and thus develop year-round relationships with their peers. People are starting to take video conferencing as the norm and are less likely to feel like they’re disturbing the other person by initiating contact during non-conference times.

    It remains to be seen whether with successive iterations, online conferences get more adept at catering to the needs of their attendees and thereby minimize if not completely replace physical conferences.

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    Shaping one’s past, shaping car parts!

    Ferrari has lost its 3D shape trademark registration for the “world’s most expensive car”:- Ferrari 250 GTO. Yes, you read it right, a 1962 model of 250GTO was sold for a whopping 48.4 million US Dollars at the RM Sotheby’s annual collector car sale in 2018. Why is the 250 GTO model so costly?

    Ferrari introduced the 250 GTO model in the year 1962. It was designed by Giotto Bizzarrini? and Sergio Scaglietti. There were only 36 models of 250 GTO exclusively produced between 1962 and 1964. Each buyer had to be personally approved by Enzo Ferrari himself. Hence, owing to its exclusivity and the fact that the existing models are still running, 250 GTO became a status symbol.

    Source- EUIPO. We do not claim any copyright in the image used. It has been used for academic and representational purposes

    What Trademark rights did Ferrari have in the 250 GTO model?

    Although the last 250 GTO models were produced only in the 1960s, Ferrari surprisingly filed for registration of the 3D shape of the car in 1960 in three classes: that is, vehicles in Class 12, clothing in Class 25 and games and toys in Class 28 (Games and playthings). The marks got registered in 20084 .

    But how did Ferrari lose its trademark?

    Dany Bahar, former Senior Vice President of Ferrari and former CEO of Group Lotus, started his own automobile company called Ares Design. Ares Design announced to produce a limited edition modern interpretation of the 250 GTO. Soon after the announcement, Ferrari filed a preliminary injunction against Ares, in response to which Ares filed a cancellation application against Ferrari’s 3D shape mark registration of the car in 2018. Ares claimed that Ferrari applied for the registration in bad faith in order to block other parties from producing and selling similarly built sports cars. It also contended that Ferrari had no intention of actually using the mark as it filed the trademark 43 years after the last car was produced.

    Ferrari argued that the 250 GTO is recognized as one of the most iconic cars made by it and the units produced are still existing. Ferrari accepted that the car is no longer in production but asserted, “the 250 GTO is still in great demand, [and that] the car and corresponding EU trademark has become a symbol of Italian style in the world, making it a way of living and a status symbol.”

    Ferrari further claimed that “250 GTO is destined for a very restricted market of collectors, celebrities, and super-rich, who can afford to spend millions of Euros to buy such an extra-expensive luxury car.” Hence “it will be sufficient to show … at least where Class 12 is concerned, very few sales of the products, of their spare parts, or of the related activities of maintenance, repair, and restoration, to fulfill the use requirement.”

    However, the Cancellation Division of EUIPO decided in favour of Ares. The European Union Intellectual Property Office (‘EUIPO’) follows5 “use it or lose it” principle wherein a trademark registration can be cancelled if the mark has not been used during the five year period following registration, or any other continuous five year period during the trade mark’s life. It held that “genuine use of the contested EU trademark has been sufficiently demonstrated … in relation to toy vehicles and scale-model vehicles, [but] no use of the mark or proper reasons for non-use have been demonstrated in relation to any of the other goods for which it is registered,” namely, cars in class 12 or clothing in class 25. Hence the registrations in classes 12 and 25 were held invalid, but that in Class 28 remains in force. This would mean that Ferrari cannot bar other manufacturers from replicating the shape of the iconic car. Anyone can reproduce the design of the car without violating any law.

    Do you think that the decision of EUIPO is appropriate keeping in mind that the car is one of the most iconic and collectible cars and is destined for a very restricted market of buyers? There is a high likelihood that the case is further appealed. Watch this space for more updates.

    4EUTM No. 006543301

    5Article 58 (1) (a) of Regulation (EU) 2017/1001 on the European Union Trademark

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    Cleansing Infringing Designs of Skin Care Devices

    In a recent design infringement case at the EU Intellectual Property Office (EUIPO), it is reported6 that the registered design of U-BioMed Inc. (U-BioMed) was cancelled for being an infringing copy of the registered design of Aquavit Pharmaceuticals, Inc. (Aquavit). Aquavit is engaged in the business of making clinical and cosmetic devices for beauty and hygiene related products and their applications. A Korean company called U-Biomed registered an infringing mark "AQUAGOLD your time is now fine touch" along with the copy of the product’s design. Aquavit applied to the EU IPO for U-BioMed’s mark to be declared invalid. The EUIPO declared U-BioMed's Registered Community design No. 004396729-0001 to be invalid upon prima facie review.


    U-BioMed was also made liable for legal fees and costs incurred by Aquavit in the course of these proceedings.

    6Origin Source: lhttps://www.prnewswire.com/news-releases/aquavit-pharmaceuticals-inc-wins-default-judgement-against-counterfeiter-301125786.html

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    Under Fourteen Only, but still not a child’s play

    UFO CONTEMPORARY, INC. (UFO) is engaged in the business of manufacturing and selling garments for men, women and children. Creative Kids Wear (INDIA) Pvt. Ltd. was its associate manufacturer till 2011. UFO filed a trademark infringement suit against Creative Kids Wear (INDIA) Pvt. Ltd. and Others (Defendants) at the Delhi High Court1 seeking interim injunction to restrain the Defendants from using the mark . UFO stated that it has adopted the term “UFO” with clothing since as early as 1968 and is also the registered proprietor of the mark in Class 25.

    The Defendants have been engaged and associated with UFO for manufacturing clothing under the trade mark “UFO” for UFO in India from 1970s to 2011. The right to use the trademark was granted by way of a license agreement by UFO to the Defendants. One of the Defendants sought full ownership of the trademark UFO in India instead of licensed use, however this was denied by UFO. UFO also did not allow the Defendants to use the mark in any other manner for sale of their own products in India. This resulted in clashes between the parties in 2011 and the license agreement was terminated.

    When UFO found the products of the Defendants under the mark being sold online, and sent a cease and desist notice to them, the Defendants agreed to stop using the mark. However, despite such assurances multiple times, UFO found the infringing mark on products sold on various e-commerce platforms such as Amazon, Tatacliq, etc. even in the month of June, 2020 and hence filed the present suit.

    The Defendants stated that its mark UFO is an abbreviation to the term, “Under Fourteen Only”. The Defendants also stated that UFO cannot claim rights in the trademark in India as all of UFO’s products are exported and the mark is not being used by UFO in India at all. UFO rebutted this argument stating that Section 56 of the Trade Marks Act, 1999 recognizes that use of trademark in India in relation to goods to be exported amounts to its use in India.

    The Court noted that the mark used by the Defendants is deceptively similar to the registered mark of UFO which has attained goodwill and reputation.

    The Court held that “… the fact that the clothes / garments are being manufactured by putting trade mark UFO and exported outside India, the parameters of Section 56 are satisfied inasmuch as there is a Brand in India of the trade mark although goods to be exported from India is deemed to constitute the use of the trade mark in relation to goods. So, it is inconsequential that there is no commercial sale of goods of the plaintiff in India.” And thus rejected the Defendants’ argument of there being no use of UFO’s mark in India.

    The Court further held that use of the mark by the Defendant is mala fide and only to encash upon the goodwill and reputation of UFO since the Defendants were aware of its presence since more than 20 years. Therefore, the Court granted an interim injunction against the Defendants against use of the said mark or any other mark deceptively similar to UFO’s marks.

    1CS(COMM) 375/2020, IAs 8010/2020 & 9611/2020

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    SAP takes infringer to Delhi High Court, obtains interim injunction

    SAP SE approached2 the Delhi High Court seeking an injunction against a Bengaluru-based entity Anoop Tech to restrain it from infringing its trademark and copyright in its SAP software.

    SAP SE is the proprietor of SAP R/2 software and has obtained copyright registrations for this software in the US in 1992. Its Indian subsidiary SAP India Private Limited was incorporated in 1996 and is the registered proprietor of the mark 'SAP' in Class 9.

    SAP SE claimed that in May 2020 it found that Anoop Tech is infringing its trademark 'SAP' and its copyright in the software which is supposed to be confidential. SAP SE had also issued a cease and desist notice to Anoop Tech in May 2020. Anoop Tech agreed to take down the infringing contents from its websites.

    However, in September 2020, SAP SE noticed the infringing material on the website. Anoop Tech also created another alternate website www.anooptech.com having the same infringing content and offering SAP SE’s SAP courses. After repeated letters to cease infringing its trademark and copyright, when Anoop Tech did not respond effectively, SAP approached the Delhi High Court.

    SAP SE claimed that even on the date of hearing Anoop Tech was providing SAP courses by way of classrooms, live demos, course material, and interactive online classes for the students.

    The Court observed that SAP SE has made out a prima facie case in its favour and in case no ex-parte ad-interim injunction is granted, it would suffer an irreparable loss. The balance of convenience also lies in its favour.

    Therefore, the Court granted an ex-parte ad-interim injunction in favour of SAP SE restraining Anoop Tech from putting up the infringing contents in relation to SAP SE's trademarks and copyright on any of its websites, including www.anooptech.net and www.anooptech.com. Anoop Tech was also directed to remove its listing/advertisements of the SAP within 36 hours of the receipt of this order, failing which, the Domain Name Registrars were directed to disable access to the websites on an intimation being given by SAP SE within 72 hours of such intimation.

    2SAP SE VS ANOOP TECH & ORS. CS(COMM) 528/2020 – 1/12/2020

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    Whose copyright is it anyway?

    Anil Mohan Bhardwaj approached3 the Delhi High Court seeking injunction against Ravi Pocket Books and few other publishers who were publishing, republishing, converting his books into audiobooks, and selling them at prices higher than those agreed upon.

    Anil claimed that he is a Hindi novelist who has been writing independently since the age of 15 and has written and published around 750 novels. He has around 258 novels written under his original name while the rest of the novels have been published under several trade names.

    Anil claimed that he entered into several agreements from 2001 to 2015 with the Ravi Pocket Books and other publishers (other defendants in the suit) for publication of his novels, in which the copyright remained with him and only the right of the publication was assigned to the publishers. Anil further claimed that the publishers recently went one step ahead and started making audiobooks from his novels and gave them fictitious names. Anil argued that the abovementioned acts of Ravi Pocket Books and other publishers infringe his copyrights in the said novels.

    Ravi Pocket Books and other publishers denied the allegations and stated that they have copyrights in some of the novels and publishing rights in most of the novels.

    The Court held that Anil has successfully made out a prima facie case in his favour and in case no ad-interim injunction is granted, he would suffer an irreparable loss. The balance of convenience also lies in his favour. Hence, the Court granted an interim injunction in favour of Anil restraining Ravi Pocket Books and other publishers from publishing or re-publishing novels in which valid copyright subsists with Anil without his written consent.

    The Court further directed Ravi Pocket Books and other defendants to not change the prices of the novels in which the copyright subsists with Anil without his consent. The publishers were also restrained from making audiobooks from Anil’s novels without his written consent.

    3Anil Mohan Bhardwaj Vs Ravi Pocket Books & Ors -CS(COMM) 525/2020 Dated 27.11.2020

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    Bitterness between Bisleri and its Bottler

    Bisleri International Pvt. Ltd. (Bisleri) approached7 the Bombay High Court seeking an injunction against its former bottler and packager Laxmikanta Nayak restraining him from infringing Bisleri’s trade dress and copyright in the label BISLERI.

    Bisleri claimed that it is the market leader in bottling, processing, packaging, marketing, and selling packaged drinking water. It has been in the market for more than three and a half decades. Bisleri claimed that it has been using the trademark "BISLERI" at least since 1969. In 1969, it obtained registration for the trademark and labels containing the word BISLERI8 in class 32.

    Bisleri submitted that in 2006, it created a new bottle design for BISLERI. The said design contains a transparent bottle which bears a conical shape on the top easing into a cylindrical shape at the bottom, along with a green coloured cap. It also features a distinct wave-like surface pattern which runs over the circumference of the said bottle. This shape has been exclusively associated with BISLERI on account of its long standing continuous use. Bisleri is the lawful owner and the rightful proprietor of the copyright in the bottle’s shape and the labels.9

    Bisleri stated that Laxmikanta was permitted to use the mark in relation to the packaged drinking water bottle processed by him using Bisleri’s moulds, vide a Trade Mark User Agreement. However, Bisleri terminated the said Agreement in September 2020 after disputes arose between the parties.

    Bisleri claimed that in October 2020 its marketing personnel found certain retailers in Odisha, selling bottles sourced from Laxmikanta bearing the mark NATURAL AQUA. These bottles were substantially similar to Bisleri’s bottle.

    Consequently, Bisleri filed an FIR and the present suit. A raid was conducted on Laxmikanta’s factory and warehouse. During the raid, Laxmikanta was found to be in possession of Bisleri’s moulds, empty and filled bottles, and bottles bearing the mark NATURAL AQUA.

    The Court observed that Laxmikanta's products bearing the mark NATURAL AQUA were substantially similar to those of BISLERI. It also emphasized on the fact that Laxmikanta was a permitted user licensee, therefore, it is clear that after termination of the agreement, Laxmikanta copied Bisleri’s trade dress, art work, and bottle design.

    Hence the Court granted an interim injunction in favour of Bisleri and restrained Laxmikanta from infringing Bisleri’s registered copyrights. The Court also appointed a Court receiver to search the premises of Laxmikanta’s premises and seize any infringing goods.

    7Bisleri International Pvt. Ltd.Vs. Laxmikanta Nayak - COMMERCIAL INTELLECTUAL PROPERTY RIGHTS SUIT- (L) NO.7305 OF 2020 – 10/12/2020

    8TMNo. 260716

    9No. A- 85011/2009 dated 02.03.2009 and A-85015/2009 dated 02.03.2009

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    Hidden Meanings in Trademarks

    *We claim no rights in the trademark and/or the copyright vested in the above logo. It is used for educational & representational purposes only.

    International Business Machines, a.k.a. IBM is an American multi-national technology & consulting company founded in 1911. The logo replicates venetian blinds, doesn’t it? The use of strips as part of the company’s logo began in 1966, when the logo was represented with 13 strips. The company in 1972 switched to the 8 strip logo and has ever since been using it extensively.

    The strips indicate the dynamic nature and speed with which the company functions.

    The capital letters in the logo indicate the company’s ‘authority’ in the business world, the colour blue indicates a modern outlook. In fact the company’s logo is also commonly referred to as the ‘Big Blue’. Further, if you notice, each strip passing across each alphabet forms a precise equal sign indicating the value of ‘equality’ in the company.

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