VOL IX                                                      ISSUE NO. 08                                        April 17, 2017          

In This Issue

Delhi High Court takes strict action against Tolin tyres in “Bridgestone v. Bridestone” infringement case

In the case of Bridgestone Corporation Vs. Tolin Tyres Pvt. Ltd., the Defendant, Tolin Tyres, faced the ire of the Delhi High Court for taking a “blatantly false stand” by denying manufacturing and exporting of tyres under the impugned mark “Bridestone”. Hon’ble Mr. Justice Rajiv Sahai Endlaw of the Delhi High Court stated that though he is of the opinion that INR 500,000 deposited with the DLSA cannot be enough to purge the Directors of their folly, keeping in view that they have given an undertaking to pay 3,000,000 to the Plaintiff and deposit INR 500,000 with the DLSA, they shall be let off with a warning.

.................................................................................................

India: Vacation Bench of the Supreme Court to hear 5,000 pending cases during Summer 2017

According to a recent notice dated April 01, 2017 issued by the Hon’ble Supreme Court of India, the Apex Court has prepared an ‘Advance Regular Hearing Matters List’ wherein it has listed about 5,000 pending cases for hearing in this summer vacation from May 11, 2017 to July 2, 2017, in a bid to set a leading example to its subordinate courts. The Advance Hearing List of the Supreme Court entails two categories (i) Cases which are to be listed on specific dates during the summer vacation as per the direction of the Hon'ble Supreme Court. (ii) Ready Regular Hearing Matters included in the Terminal List dating back to the year 2012.

................................................................................................. 

Trump nominates two Indian-Americans for key administrative positions

Two Indian Americans Vishal Amin and Neomi Rao have been nominated by the President Donald Trump for key administrative posts to coordinate US law-enforcement strategy around copyright, patents and trademarks. Vishal Amin has been nominated to be the Intellectual Property Enforcement Coordinator while Neomi Rao will be the Administrator of the Office of Information and Regulatory Affairs.

.................................................................................................

IP4KIDS, A CSR initiative of S.S. Rana & Co., conducts a workshop on Intellectual Property at Army Public School, Alwar

S.S. Rana & Co., through its CSR initiative, “IP4KIDS’, a sensitization program to spread awareness about Intellectual Property Rights among the young generations recently on April 15, 2017, conducted a workshop of ‘General Introduction to Intellectual Property’ at Army Public School, Alwar. Mr. Bijit Das & Mr. Pranit Biswas, both Associate Advocates at the Firm, were the speakers for the day, and the workshop focused on a basic introduction to Intellectual Property for students of Classes 11 and 12, as well as the management.

................................................................................................. 


Delhi High Court takes strict action against Tolin tyres in “Bridgestone v. Bridestone” infringement case

 

Directors Were Put Behind Bars for Making False Statements

 

In a recent case titled as Bridgestone Corporation Vs. Tolin Tyres Pvt. Ltd., CS (COMM) No. 375/2016, the Defendant, Tolin Tyres, faced the ire of the Delhi High Court for taking a “blatantly false stand” by denying manufacturing and exporting of tyres under the impugned mark “Bridestone”.

 

 

Image Source : Internet

 

Brief Background and Plaintiff’s Contentions:

  • Bridgestone Corporation (hereinafter referred to as the “Plaintiff”) is a transnational company selling tyres for approximately 85 years under the trade mark BRIDGESTONE.

  • The Plaintiff not only sells tyres but also sells various rubber products related to the tyre industry or the automobile industry.

  • In or around April 2016, the Plaintiff filed a suit for trade mark infringement titled against Tolin Tyres (hereinafter referred to as “Defendant”) in the Delhi High Court.

  • The Plaintiff claimed that the Defendant was exporting tyres under the name “BRIDESTONE”, which is almost completely identical to the Plaintiff’s registered trade mark “BRIDGESTONE” which is being used by them since 1931.

  • The Plaintiff argued that its adoption of the trade mark “BRIDGESTONE” is arbitrary and derived from the Japanese surname “Ishibashi”, founder of the Plaintiff Company, which when translated to English means “Stone Bridge”.

  • The Plaintiff argued that they have been able to ascertain the Defendant’s illegal activities with great difficulty, and made an oral prayer before the Hon’ble Court to appoint a Local Commissioner to make a complete inventory of the tyres sold by the Defendant under the impugned trade mark “BRIDESTONE”.

  • The Plaintiff further argued that visual depiction of the trademarks of the two tyres of the Plaintiff and the Defendant would result in more or less an identical position causing visual deceptive similarity between the two trademarks.

  • Hon’ble Mr. Justice Valmiki J. Mehta of the Delhi High Court, agreeing with the Plaintiff, passed an ex-parte order dated April 21, 2016 restraining the Defendant from selling tyres or any other products related to the automobile industry in any manner under the trade mark “BRIDESTONE” or any other trade mark which is identical or deceptively similar to the trademark “BRIDGESTONE” of the Plaintiff.

  • The Court also appointed a Local Commissioner to make a complete inventory of the tyres manufactured and sold under the mark “BRIDESTONE” at the Defendant’s premises at M.C. Road, Mattoor, Kalady Ernakulam, Kerala-683574.

Attempts at Mediation:

 

Thereafter, on July 20, 2016, at the joint request of both parties the Hon’ble Court directed them to appear before the High Court Mediation & Conciliation Centre on July 29, 2016. However, it appears that the parties were not able to reach a mutually acceptable settlement.

 

Defendant’s Contentions:

  • The Defendant argued that it is not manufacturing or exporting tyres under the trade mark “BRIDESTONE”.

  • That “TOLINS” is the registered trade mark of the Defendant and it manufactures and exports tyres under the said trade name only and no other trade name.

  • Therefore, the Defendant has no objection to suffer from a decree for permanent injunction as claimed in prayer paragraph 32(a) and 32(b) of the Plaint.

Plaintiff’s Counter-Submissions:

  • The Plaintiff drew attention of the Hon’ble Court to the download from the website www.zauba.com to contend that the particulars on the said website of export of “BRIDESTONE” brand tyres, match the particulars of the exports effected by the Defendant as reported by the Court/Local Commissioner appointed in the suit.

  • As per information gathered by the Plaintiff, no export document is required to specify the brand of the goods exported unless the importer insists upon it.

  • A notice should be issued to www.zauba.com to disclose the source of the information on the basis which they have on their website, attributed export of tyres under the name “BRIDESTONE” to the Defendants.

  • On being enquired by the Hon’ble Court on whether www.zauba.com was itself acquiring information from major ports in India, the Plaintiff stated that the lawyer who visited the Land Customs Port, Raxaul, Bihar-845305 has reported that the Defendant exported tyres to Nepal under the mark ‘BRIDESTONE/BRIDGESTONE’ vide certain bills of discharge, whose details were provided to the Court.

In view of the above, the Hon’ble Court issued notice to the Office of the Public Information Officer, Land Customs Port, Raxaul, Bihar-845305 to produce before the Court on March 16, 2017 the records of exports of tyres by the Defendant vide the above discharge bills to Nepal. The Hon’ble Court further directed the Director of the Defendant to make a statement before the Court and also personally remain present in the Court for the next date of hearing.

 

DDelhi High Court’s Findings/ Decision

  • The Office of the Public Information Officer, Land Customs Port, Raxaul, Bihar – 845305 issued its report which showed that the tyres exported by the Defendant are described as ‘BRIDESTONE’.

  • On being enquired by the Hon’ble Court whether the records of the Customs Department are correct or not, the Director and the Managing Director of the Defendant admitted that the records were correct and further admitted that they had been exporting tyres in the name of “BRIDESTONE” and apologized for stating the contrary till now, although they blamed another Director of the Defendant for such export.

  • The Hon’ble Court held that it was obvious that the Defendant had been taking a blatantly false stand before the Court, and therefore, the apology tendered by the Directors of the Defendant when forced to admit the falsehood, is meaningless.

  • The Hon’ble Court observed that in spite of repeatedly asking the Defendant whether it had been manufacturing and exporting tyres under the trade mark “BRIDESTONE”, the Defendant kept on denying the same. The Hon’ble Court further astutely observed that the Defendant and its directors appear to be under the impression that the Orders of the Court and consequences thereof can be warded off by taking a false stand and the Court will blindly accept what they say and being overburdened and pressed for time, the Court shall not conduct any enquiry.

  • The Hon’ble Court ordered that Mr. Joy Konukkudy Thomas, Director and Mr. K.V. Tolin, Managing Director of the Defendant be taken into police custody, and be produced again on the morning of March 17, 2017 to show why they should not be proceeded against for perjury and for criminal contempt of the Court.

Defendant’s attempt to mitigate damage

 

On March 17, 2017, when produced before the Court, in an attempt to be absolved from their offences and criminal contempt of the Court, the Directors of the Defendant Company stated that in addition to be bound by the permanent injunction restraining them from selling tyres under the name “BRIDESTONE”, they offered an unconditional apology and were willing to pay INR 30,00,000 (approx. USD 46,500)* to the Plaintiff to compensate towards the damages faced by them due to export of tyres under the mark “BRIDESTONE” as well as deposit INR 500,000 (approx. USD 7,750)* with the Delhi Legal Services Authority (DLSA).

 

Concluding Remarks

 

Hon’ble Mr. Justice Rajiv Sahai Endlaw of the Delhi High Court stated that though he is of the opinion that INR 500,000 (approx. USD 7,750)* deposited with the DLSA cannot be enough to purge the Directors of their folly, keeping in view that they have given an undertaking to pay INR 3,000,000 (approx. USD 46,500)* to the Plaintiff and deposit INR 500,000 (approx. USD 7,750)* with the DLSA, they shall be let off with a warning.

 

Hon’ble Mr. Justice Endlaw stated that if the Directors of the Defendant Company do not comply with their undertaking, the Plaintiff shall be at liberty to apply for revival of the suit for a decree for the amount as claimed and also for costs of the suit. Further, Hon’ble Mr. Justice Endlaw also stated that if the receipt of deposit of INR 500,000 (approx. USD 7,750)* with DLSA is not filed on or before May 07, 2017, the Registry should list the suit for further proceedings.

 

**(@1 USD = approximately INR 64.5, as on April 10, 2017)

 

 

 

 

Back To Top


India: Vacation Bench of the Supreme Court to hear 5,000 pending cases during Summer 2017

 

According to a recent notice dated April 01, 2017 issued by the Hon’ble Supreme Court of India, the Apex Court has prepared an ‘Advance Regular Hearing Matters List’ wherein it has listed about 5,000 pending cases for hearing in this summer vacation from May 11, 2017 to July 2, 2017, in a bid to set a leading example to its subordinate courts. This initiative is motivated towards reducing the pendency of ongoing litigation in India and to reduce the burden on the Indian judiciary in order to facilitate speedy justice.

 

 

Image Source : Internet

 

The Advance Hearing List of the Supreme Court entails two categories (i) Cases which are to be listed on specific dates during the summer vacation as per the direction of the Hon'ble Supreme Court. (ii) Ready Regular Hearing Matters included in the Terminal List dating back to the year 2012. This exhaustive list running through almost 600 pages includes matters pertaining to the complex issues of Whatsapp citizens’ right to privacy issue, validity of triple talaq (Islamic Divorce), right to dignity of Muslim women, and the citizenship issue in the Indian state of Assam.

 The Apex Court in its notice has clarified that some of the matters which are shown in the Advance Regular Hearing Matters List are matters that are already appearing in the Weekly/ Daily lists, and those matters which are taken up for final hearing before the commencement of the summer vacation 2017, shall be deleted from the List. The Apex Court has simultaneously also made it clear that any counsel or party whose matter is listed in the Advance Regular Matters List and does not want to take up the matter, may request the same in writing to the Additional Registrar (Listing) of the Court on or before April 28, 2017 after serving a copy to its opposite party, to avoid its listing before the Vacation Bench of the Hon’ble Supreme Court. Further, cases of Admissible Categories, where both parties/counsel have given their consent to list their matters during the vacation can also communicate the same to the Registrar of the Hon’ble Supreme Court of India.

 

The said notice dated April 1, 2017 as issued by the Hon’ble Supreme Court of India is available at the link http://supremecourtofindia.nic.in/FileServer/2017-04-01_1491048822.pdf.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 Back To Top

 


Trump nominates two Indian-Americans for key administrative positions

 

Two Indian Americans Vishal Amin and Neomi Rao have been nominated by the President Donald Trump for key administrative posts to coordinate US law-enforcement strategy around copyright, patents and trademarks. Vishal Amin has been nominated to be the Intellectual Property Enforcement Coordinator while Neomi Rao will be the Administrator of the Office of Information and Regulatory Affairs.

Neomi Rao’s selection by Trump suggests that the administration is not only inclined towards reducing high-profile regulatory burdens, however, it suggests the administration is serious about the regulatory reform

 

 

       Image Source : Internet 

 Back To Top


IP4KIDS, A CSR initiative of S.S. Rana & Co., conducts a workshop on Intellectual Property at Army Public School, Alwar

 

S.S. Rana & Co., through its CSR initiative, “IP4KIDS’, a sensitization program to spread awareness about Intellectual Property Rights among the young generations recently on April 15, 2017, conducted a workshop on ‘General Introduction to Intellectual Property’ at Army Public School, Alwar. Mr. Bijit Das & Mr. Pranit Biswas, both Associate Advocates at the Firm, were the speakers for the day, and the workshop focused on a basic introduction to Intellectual Property for students of Classes 11 and 12, as well as the management. The workshop also briefly educated the students about INTA's Unreal Campaign and it's efforts towards public awareness of teenagers (ages 14-18) about the importance of trademarks, intellectual property, and dangers of counterfeit products.

 Image Source : Internet 

Army Public School, Alwar, is run by Army Welfare Education Society (AWES). The School is located in idyllic surroundings of Itarana on the Delhi Road just 6 K.M. from Alwar Railway Station. The School was established on September 14, 1991. Its endeavor is to provide “Quality Education at Affordable Cost” for the children of Defence personnel and Civilians.

 

 Back To Top

  |   |   |   |   |   |   |   |   |   |  
© Copyright 2016-17, S.S. Rana & Co. All rights reserved