Jan 21

RKD NewsNet January 2021

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

International News

Fate of Crocs Classic’s 3D Shape Mark

Crocs Inc. is an American footwear company, having a prominent global presence. In addition to being popular for manufacturing and selling comfortable and durable footwear, Crocs gained popularity for the eponymous ‘foam clog shoes.’ Crocs began selling its ‘crocs classic’ shoes in Sweden around the year 2005. Later in 2008, Crocs filed for the registration of a 3D trademark for its ‘Crocs Classic’ (represented below) at the Swedish Intellectual Property Office (IPO).

The Swedish IPO, at first, rejected the registration of the 3D trademark on the basis of ‘lack of distinctiveness’, however after an appeal was filed by Crocs along with supporting evidence, the mark was ‘Registered’.

In 2015, ÖoB a Swedish store, began selling shoes - that visually resembled the ‘Crocs Classic’. Crocs considered this as an infringement of its 3D trademark and sent a cease-and-desist notice to ÖoB and eventually filed a trademark infringement suit against ÖoB. However, instead of defending its act, ÖoB went on to challenge the registration of the ‘Crocs Classic’ 3D trademark. As per an interlocutory decision, the cancellation of the ‘Crocs Classic’ 3D trademark registration was to be decided before assessing the merits of the infringement suit.

In 2019, the 3D trademark registration of Crocs was canceled on the basis of the following observations:

a. The Court assessed the kinds of distinctiveness – inherent distinctiveness and/or acquired distinctiveness.

The Court found that the ‘Crocs Classic’ shoes, though were available in Sweden since 2005, had not acquired any distinctiveness even though the sales of the footwear were abundant. Consumers would indulge in buying the shoes only if they noticed the brand name ‘CROCS’ written on it or if the Crocodile device trademark of Crocs was affixed on the footwear.

In order to ascertain distinctiveness, the Court also ordered for a survey to be conducted – wherein it was revealed that the ‘Crocs Classic’ was commonly known as ‘Foppatoffeln’ in Sweden since it was advertised and worn by Sweden’s renowned hockey player viz. Peter Forsberg who wore the Crocs footwear on TV and at other public events. Thus, showingthat consumers did not associate the ‘Crocs Classic’ shape with Crocs Inc.

Further, since the shape of the footwear was not significantly different from other footwear/slippers available in the market, the shape of the ‘Crocs Classic’ could not be considered as inherently distinctive.

b. The Court went on state that, the shape of the 3D trademark was a result of the ‘nature of the goods’ and was necessary to obtain a ‘technical result’. Elaborating further, the Court observed that, the holes on the top of the shoe were required to ensure increased ventilation and water flow, and the strap at the back was required to give a hold to the wearer.

Based on the above observations, the Court canceled the registration of the ‘Crocs Classic’ 3D trademark in Sweden.

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Peace does not get a chance

John Winston Ono Lennon’s (John Lennon) 87-year-old wife Yoko Ono has filed a copyright infringement suit against John Lennon’s former personal assistant Frederic Seaman. Yoko Ono claimed that Seaman is gaining profit from unauthorized selling of John Lennon’s memorabilia.

John Lennon was a celebrated English singer, songwriter, and peace activist. He was the founder, co-lead vocalist, and rhythm guitarist of the Beatles. On the evening of 8th December 1980, John Lennon was shot dead in New York City by Mark David Chapman.


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


Series of lawsuits between Seaman and Yoko Ono

Yoko Ono and Seaman have been involved in copyright infringement lawsuits for more than 3 decades now. Yoko Ono filed the first suit in 1983 when Seaman admitted that he took private photos, letters, and journals from Lennon’s residence in Manhattan. In 1999, Yoko Ono filed another copyright suit when Seaman revealed that he stole property belonging to Lennon, which he sold in the memorabilia market for profits.

In 2002, the lawsuit got settled when Seamen agreed to give all his copyrights in the family photos of John Lennon and to obey all the terms and conditions of the confidentiality agreement signed between him and Lennon's family in 1979. Seamen also issued a formal apology letter to Yoko Ono stating "I did wrong by you and indeed am guilty of violating your trust. After more than 20 years, it is time for me to ask your forgiveness for my actions," Seaman said, according to the lawsuit. "It is impossible to undo what has taken place. But it stops here and now. I will return any remaining things that I have that are yours. I will refrain from ever writing anything about you or your family or about my time in your employ. I offer no excuse for my conduct and only ask that you can find it in your heart to forgive so I can move on with my life."

The present dispute occurred when Seamen recently gave a 23-minute long interview discussing the life story of John Lennon and his murder. As per Yoko Ono, while Seaman was giving this interview he was surrounded by John Lennon's memorabilia. During the interview, Seaman also discussed his intent to revise and issue an expanded version of his book on John Lennon "The Last Days of John Lennon”. As per Ono, this interview is a "wilful and intentional violation" of the injunction laid down against Seamen in 2002. As per the Court order, Seaman had to surrender and give up the copyright of hundreds of John Lennon’s family photos. The Court order also required Seaman to continue to follow the terms and conditions laid down in the confidentiality agreement signed in 1979.

As per reports, Yoko Ono has sought $150,000 in damages from Seaman and is also asking Seaman to refrain from profiting by selling or appropriating John Lennon’s work and legacy.

This case tells us that copyright is not limited to literary works and expressions but also extends to the memorabilia. The use of a person's memorabilia without permission from the person’s family amounts to infringement.

Give Peace A Chance was one of the last singles that John Lennon recorded with his wife Yoko Ono in 1969. The song was released six years later in 1975.

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The curious case of flip-flop in Divisional Patent Application

Unity of invention is a sine-qua-non for a patent application. In other words, a patent application should relate to only one invention (Section 7 of the Patents Act, 1970 (“the Act”)). In case of plurality of inventions in a patent application, a divisional application is to be filed, either mandatorily- on the instructions of the Controller, or voluntarily (Section 16(1) of the Act). The divisional application(s) relate to inventions that are born out of the original patent application so that the original application relates to one invention only and the subsequent divisional applications relate to further inventions.

The concept of filing a divisional application (mandatory/voluntary) was introduced in the Paris Convention. However, the guidelines and conditions for a divisional application were left to individual countries.

Section 16 (1) of the Act reads: “A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application”.

Over a period of time, several appeals have been filed against the Patent Office’s refusal to consider a patentee’s application as a divisional application.

A patent application, 4614/DELNP/2010, was filed by Procter and Gamble Co. (“Applicant”) with 17 claims in two groups - Group I Claims (1-9) and Group II Claims (10-17). Group II claims were deleted by the Applicant in order to overcome the objection of the patent office for the plurality of invention. Subsequently, the Applicant filed a divisional application for the Group II claims. The Controller refused the Appellant’s divisional patent Application No. 5912/DELNP/2015 for lack of distinctiveness from the parent application. The Controller also objected stating that the divisional application was in conflict with claims 1-9 of the original patent application. The Patent Office passed an Order on 2nd January 2020. However, it did not clarify as to why were they (deleted group II claims) not in conflict when the parent application was being examined and how they appeared to be in conflict only when a divisional application was filed?

The Applicant thus appealed to the Intellectual Property Appellate Board (“ IPAB”). In its appeal, the Applicant submitted that the Patent Office did not raise an objection with regard to novelty, inventive step, or patentability of the divisional application. The only objection was with respect to the conflict of claims of the divisional application with those in the parent application.

The order of the IPAB placed reliance upon Milliken & Company vs. Union of India & Ors. (OA/61/2012/PT/MUM), Syntonix Pharmaceuticals, Inc., vs. The Controller of Patents & Designs & Anr. (OA/26/2013/PT/KOL) and National Institute of Immunology vs. The Assistant Controller of Patents & Designs (OA/21/2011/PT/DEL) and held that the Appellant filed the divisional application only on the basis of the objection raised by the Controller and the finding given in the first examination report and there is absolutely no fault on the side of the Appellant. The IPAB further averred that the Applicant/ Appellant cannot be left in the lurch without any remedial measures available in the law. The appeal was allowed and the impugned order was set aside.

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Havells Harvels Havel’s or Havels

No, this is not a tongue twister, but a trademark infringement case! Havells India Ltd. (Havells) is an Indian electrical equipment company established in 1958. Havells has registered the designs of its electric QVE Distribution Boards in India. It is also the registered proprietor of trademarks, inter alia, “HAVELLS”, and the like.

Havells filed a suit at the Delhi High Court Havells India Ltd. V. Mohit Talwar & Ors. (CS(COMM) 555/2020) alleging infringement of its registered trademark 'HAVELLS' in addition to the infringement of the design of its distribution boxes by the Defendants. The Defendants were found selling products bearing marks such as

The Court had granted an ex-parte ad-interim injunction against the Defendants in December 2020. Summons were also issued to the Defendants to appear before the court.

The Court also directed the Commissioner of Custom, to suspend the clearance / export of the Defendants' product bearing Havells’s registered trademarks or designs or imitations thereof. 2 Local Commissioners were also appointed by the Court to inspect the various premises of the Defendants to locate and quantify the infringing products. The Local Commissioners found a voluminous quantity of infringing material at the premises. Considering the large volume of the infringing goods found, and the fact that considerable time will be required to prepare an inventory of the same, the Court directed that the premises of the Defendants where the inspections are taking place will remain under the control of the Local Commissioners until such inspection is complete. The case is now adjourned until the inspection is completed.

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Battling over COVISHIELD

Cutis Biotech (“Cutis”) is a pharmaceutical company specializing in manufacturing and selling pharmaceutical products. It is based in Nanded, Maharashtra and is operating since 2010.

Cutis applied for registration of the mark ‘COVID SHIELD’ bearing application no. 4509144 in Class 5 on May 24, 2020 with regards to ‘Medicinal and Pharmaceutical Preparations for Human Purpose Included in Class-5.’ On June 20, 2020, Cutis filed another application for the mark ‘COVID SHELD’ bearing application no. 4538555 in Class 5 covering ‘Hand Sanitizers Being Goods Included in Class 5.’Both the above applications were filed in the name of Mr. Bandaru Srinivas. In addition to the above, Cutis has also been using the mark ‘COVISHIELD’ for surface disinfectants and fruit and vegetable wash. Upon conducting a search, it was found that the mark ‘COVISHIELD’ was applied for on a ‘proposed to be used basis’ on April 29, 2020 and again applied for on December 12, 2020 claiming use since May 30, 2020. Both the applications are filed in the name of one ‘Mrs. Archana Ashish Kabra W/O Mr. Ashish Nandkishor Kabra’. The details are given below:

Based on this, Cutis filed a civil suit against Serum Institute of India Pvt. Ltd. (SII), at the Civil Court at Pune for passing off its products bearing the mark ‘COVISHIELD’ as those of Cutis. Cutis stated that it is the lawful and prior adopter of the mark ‘COVISHIELD’ and ‘COVID SHIELD’. It went on to state that SII filed for its trademark applications on a ‘proposed to be used’ basis in June, 2020.

The details of the marks filed by Cutis in the name of Bandaru Srinivas and SII are given below:

The Civil Court, Pune has now issued a notice to the SII, seeking its response to the suit and the claims made therein. The Court has listed the suit for hearing on January 19, 2021.

Watch this space for more updates!

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Never break a promise made to the Court

Midas Hygiene Industries Private Limited’s (Midas Hygiene), predecessor in interest adopted the mark 'LAXMANREKHAA’ in 1984 and the same is in use since 1988. The mark was later assigned to Midas Hygiene along with its goodwill. Midas Hygiene has a registration for the mark in Class 5 bearing TM No. 545610 in respect of chalk preparations for repelling and destroying insects and pests. Midas Hygiene also has trademark and copyright registration for the packaging of the product bearing the mark ‘LAXMANREKHAA’.

In March 2020 Midas Hygiene was made aware that a product similar to its product is being sold at a retail outlet at Ganganagar, Rajasthan and which is used for similar purposes along with packaging, bearing design layout, getup, and colour combination with the words ‘LAKSHMAN CHAKAR’ which is similar to its own trademark and trade dress.

Hence, Midas Hygiene approached2 the Bombay High Court seeking an injunction against Ram Dev Industries (Ram Dev) to restrain Ram Dev from infringement and passing off of its registered trademark 'LAXMANREKHAA'.

Midas Hygiene claimed that Ram Dev adopted the label and the words ‘LAKSHMAN CHAKAR’ subsequent to Midas Hygiene’s adoption of the trademark 'LAXMANREKHAA'. Midas Hygiene further claimed that Ram Dev has adopted the mark with the dishonest intention of causing irreparable loss and injury to Midas Hygiene, thereby infringing its trademark and copyright.

Ram Dev had stated that it is ready to change the name of their product from "LAKSHMAN CHAKAR" to "LAKSHMI CHAKAR". It also stated that it has already changed the packaging. It stated that it will submit proof of the new packaging to Midas Hygiene by October 12, 2020. It also committed to filing an affidavit on or before October 14, 2020 confirming the same. The Court accordingly recorded the same.

However, on the next date of hearing it was found that Ram Dev did not file the said affidavit. It again undertook to file the same during the course of that day.

Midas Hygiene contended that Ram Dev has not made the changes as were required. It submitted that Ram Dev’s product was being manufactured and marketed even in October 2020. Hence Midas Hygiene requested for an interim injunction.

The Court held that non-filing of the affidavit by Ram Dev amounts to a breach of such undertaking made to the Court. It granted an ad-interim injunction in favour of Midas Hygiene restraining Ram Dev from infringing Midas Hygiene’s trademark and copyright by adopting and/or using the impugned labels in relation to preparations for repelling and destroying cockroaches, flies, insects, mosquitoes, disinfectant preparations for destroying vermin, fungicides, herbicides or similar goods/services and/or passing off its goods as those of Midas Hygiene. The matter is now adjourned to January 14, 2021

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Ditch Dairy to Ditch Libel

Gujarat Cooperative Milk Marketing Federation Ltd., is dearly known in India by its brandname “Amul”. Amul is a leading dairy manufacturer and seller prevalent all over the country. Another funny reason why people know Amul, is by its daily dose of ‘pun-intended’ comic strips in newspapers. It is the 9th largest processor of milk in the world. As the movement for Vegan lifestyle takes over, various entities, non-profit organisation, celebrities, public figures, bloggers, and the like, are promoting non-consumption of milk and other dairy products and shifting to plant-based products. One such website is Ditchdairy.in.

Amul found that the website DITCHDAIRY.IN run by Chetan Padilya, was promoting and selling plant-based products of different brands such as Kizo Nutrition, Good Dot, Fitjar. Amul claimed that, to promote the same, highly biased and defamatory articles against the dairy industry and the brand name “Amul”, were published on the website. Amul filed a suit at the Delhi High Court against Chetan Padilya and others, when Ditchdairy.in released an article titled “WHITE LIE OF AMUL AND BLACK TRUTH OF ANIMAL MILK” which portrayed Amul in a highly negative light. Amul also sought a decree of a permanent injunction for this article and/or similar articles to be taken down as they contained Amul’s registered trademarks and were libelous and disparaging. The social media platform Facebook was also made a party to the suit. Amul prayed that it be restrained from uploading any page identical or similar to the Facebook Page titled SKIP MILK, ADD MERCY.

The Court observed that Amul has made out a prima facie case for grant of interim exparte order and directed Chetan Padilya to remove the impugned articles from the website and Facebook page. He was also restrained from uploading other similar articles till the next date of hearing.

In the course of their pleadings, the Counsel for Amul stated that since Amul was the most dominant player in the Indian dairy sector, the anti-dairy sentiment was impliedly targeted to Amul. A question worth pondering is if the Defendants should be restrained from publishing anti-dairy articles or only from using Amul’s name in them.

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Hidden Meanings in Trademarks

The Tour de France is the biggest cycling event in the world. It is an annual bicycle race held in France and neighboring countries and covers more than 3,600 Kilometres. The Tour de France was first staged in 1903.

Its logo has two subliminal messages: the first and the more obvious one is that the characters o, u, and r make up a cyclist. The second one is that the yellow circle or the bike’s wheel also represents a sun, indicating that the events of the race occur only during the day.

There is also a second meaning to the yellow circle where it is believed to represent the "Yellow Jersey" which is handed to the person leading the race at the end of each day.

Like we always say, you can’t unsee it, once you see it!

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Know the real India

-Adv. Chinmay Pawar

After half a century of political turmoil, the Satvahana empire suddenly leapt into prominence under the reign of Gautamiputra Satkarni. He regained control of northern Maharashtra, Konkan region, Narmada valley, Saurashtra, Malwa, and the western Rajputana. It is also believed that he was greatly assisted by his mother and to a certain extend by his brother in the affairs of state. His achievements are recorded by his mother Gautami Balashri in an elaborate inscription called the ‘Nasik Prashasti’. According to historical sources, he reigned for at least 21 - 25 years.

The ‘Nasik Prashasti’ inscription calls him ‘Eekabrahmana’ which may be interpreted as 'a peerless Brahmin’, ‘the only protector of the Brahmins’ or ‘a proud champion of Brahmanism’.

Nevertheless, the king was tolerant towards other religious sects and religions. He exempted Buddhist monks from paying taxes and granted immunity from any interference by the royal officers in their religious affairs.

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Hidden gems of India – Champaner-Pavagadh

-Adv. Chinmay Pawar

Champaner-Pavagadh Archaeological Park is a UNESCO World Heritage Site located in Panchmahal district in the state of Gujarat, India. Champaner, and Pavagadh, have some of the most exciting historical architectures. At the top of the Pavagadh hill, at 762 metres above sea level, is a Kalikamata Temple. Situated amid dense forest cover on a cliff, the temple is believed to be one of the 51 Shakti Peeths. The Citadel at Champaner features several 16th-century monumental mosques, with their beautiful blend of Islamic and Hindu architecture. The Champaner-Pavagadh Archaeological Park is located at approximately 50 kms from the city of Vadodara in the state of Gujarat. It is believed that the famous ‘Gateway of India’ located in Mumbai draws some of its features from the mosques located at the site.

*Images courtesy: Wikipedia & Gujarat Tourism. We do not claim any copyright in the photographs. They have been used for academic and representational purposes only.

1IPAB order No. OA/47/2020/PT/DEL

2Midas Hygiene Industries Private Ltd. vs Ram Dev Industries And Anr - COMIP SUIT (L.) NO.293 OF 2020 - 18 12, 2020

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