VOL X                                                  ISSUE NO. 07                                        April 03, 2018


In This Issue

India: 'Be U' Bengaluru Becomes India's First City to Have Its Own Logo

Global-Intellectual-Property.jpgAs of 2017, the city of Bengaluru has joined the ranks of other well-known tourist destinations such as Singapore, London, and New York City and became the first Indian city to boast of a logo of its own. The logo in question is one that has been crowd sourced from over 1350 entries and reads “Be U,” which is a mix of typography in English and Kannada. The logo was designed by Nammur, a design start-up that won a contest and received a prize money of INR 5 lakhs.

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Bangladesh: DPDT imposes 15% VAT over Govt. Fees on all IP Matters

dpdt-bangladeshThe Department of Patents, Designs and Trademarks, Bangladesh  vide an official notification has imposed 15% Value Added Tax under local VAT Rules (Rule 18(e) of Value Added Tax Rules, 1991) over Government Fees i.e. official fees, on all Intellectual Property matters in Bangladesh.

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India: Delhi High Court says BOOKMYSHOW Trademark has not Acquired Distinctiveness

The Delhi High Court in the case of Bigtree Entertainment Pvt Ltd V. Brain Seed Sportainment Pvt Ltd & Anr. while examining on the issue of acquired distinctiveness decided that ‘BOOKMYSHOW’ has not acquired any distinctiveness.

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India: Enforceability of Foreign Country Registered / Unregistered Copyright

CopyrightToday major copyrightable works created have Applicability internationally. Therefore, certain standards have been developed internationally to encourage reciprocal protection of copyright from country to country, thereby giving protection to foreign works within India as well as Indian works in foreign jurisdiction.

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India: 'Be U' Bengaluru Becomes India's First City to Have Its Own Logo

 

  

Source: www.yourstory.com

 

 

A city’s logo is a culmination of its identity, aspirations and everything that it represents. A logo, thereby, becomes a beacon via which tourists, travelers, and even citizens identify the city of their choice. However, such creative representation becomes and is the property of the city that creates it and thus becomes responsible to ensure the protection of such creativity and eventually, intellectual property. Hence, it becomes essential for the city’s authorities to ensure that they can exercise the right to use a representation of their home without it being misused by third party infringers. However, out of all cities in the world that do boast of logos, a fraction have sought to protect themselves by registering it!

 

Above: City Logos filed as trademarks/ protected from around the world

 

However, in most developing countries where, due to the proximity of manufacturing industries, there is an abundance of counterfeit markets, it is an absolute necessity to register trademarks in order to ensure that merchandising revenues find their way to the right coffers. Japan is a good example of the same, having filed and received a registration for its city logo in anticipation of the 2020 Olympics. Events of such magnitude cause a resurgence of counterfeit merchandize, as has been discussed with a case study below. As of 2017, the city of Bengaluru has joined the ranks of other well-known tourist destinations such as Singapore, London, and New York City and became the first Indian city to boast of a logo of its own. It was unveiled at the Nammo Bengaluru Habbo festival by Karnataka Tourism Minister Priyank Kharge. The logo in question is one that has been crowd sourced from over 1350 entries and reads “Be U,” which is a mix of typography in English and Kannada. The logo was designed by Nammur, a design start-up that won a contest and received a prize money of INR 5 lakhs. The idea of the logo is that it is meant to be easily pronounced, associated with everyone and be a representation of the kind of self-expression and acceptance that is associated with the city.

 

Coming with an option of colors (green, yellow and red), the logo is intended to further tourism and be replicated on all types of merchandise. The theory here is that a design that comes from the people is representative of the spirit of the city and thus putting it on souvenirs and merchandise that can be bought is a reminder of the city to everyone who visits it. The entire philosophy behind creation and city logos is centered around the creation of a brand that represents the city, its people and the values it stands for (Amsterdam’s I AM logo which was revamped as a reminder of the city’s culturally inclusive philosophies). Not only is this likely to boost the morale of the city, but will also create an industry around the licensing and manufacturing of t-shirts, mugs, and other city-specific memorabilia.

 

 

 

However, as are with all creations, all ideas instituted to bolster economies require protection from those who seek to benefit from their unauthorized usage. The creation of a distinctive logo and exclusive merchandise for the city also comes with a window of opportunity for counterfeit markets to take root and exploit the intellectual property of the city. Thereby, a Trademark of the logo accompanied by acquisition of the consequent merchandising rights is a must if one aims to boost the city and state’s tourism.

 

Registration of the trademark as exclusive property of the city is a given necessity. However, merchandising while using such registrations is an equally essential avenue that needs to be explored. Aside from being an effective tool to guard IP, it is also an invaluable marketing tool as it gives the merchandised goods’ owners the distinct feeling of belonging and ownership that the city aims to inspire. Similarly, it can also be licensed out to third party manufacturers for mass production of merchandise. Due to the novelty of city brand logos, the practice neither of its creation nor its IPR protection has been seen before. However, reference can be drawn from the Citywide Merchandise Licensing Program carried out by NYC & Company, which provides licensing rights for the City and its agencies. While allowing each of the individual agency the discretion of issuing its licensing rights to third parties, it ensured registration and crackdown of counterfeits across the city, leading to almost 600 cease and desist orders to vendors. This was all in response to an increasing culture of counterfeit goods that had been produced featuring the City’s agencies, specifically the New York City Police Department (NYPD) and the Fire Department of the City of New York (FDNY), due to their inconsistent licensing policies and lack of action against counterfeiters.

 

Here is a list of certain city departments, which are registered as trademarks with United States Patent and Trademark Office (USPTO)

 

However, in the same spectrum the government cannot endeavor or be allowed to gain the rights over every aspect of the city – especially a city that belongs to its people first. In a case where the Port Authority of New York and New Jersey (PA) took the souvenir shop Fishs Eddy to court for their representation of the New York Skyline and other signature landmarks of the city on their dinnerware, stating it “interferes with the Port Authority’s control of its own reputation” and may create an association with the 9/11 attacks. The authority dropped the matter a little while after, possibly understanding that legal action would have to be taken against the thousands of souvenir shops selling similar merchandise for their actions to prove successful.

 

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Bangladesh: DPDT imposes 15% VAT over Govt. Fees on all IP Matters

Copyright-gov

Source:www.dpdt.gov.bd

 

 

The Department of Patents, Designs and Trademarks, Bangladesh (hereinafter referred to as “DPDT, Bangladesh”) vide an official notification dated March 12, 2018, has imposed 15% Value Added Tax (hereinafter referred to as “VAT”) under local VAT Rules (Rule 18(e) of Value Added Tax Rules, 1991) over Government Fees i.e. official fees, on all Intellectual Property matters in Bangladesh.

 

DPDT, Bangladesh vide such order has imposed 15% VAT on the total amount of money received from beneficiary for proceedings relating to the registration/renewal of Patents, Designs and Trademarks in Bangladesh. The Official Notification of the DPDT can be accessed over here.

 

In Bangladesh, protection of industrial property comes under the purview of Ministry of Industries. On behalf of the Ministry of Industries the DPDT administers all the activities relating to industrial property.

 

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India: Delhi High Court says BOOKMYSHOW Trademark has not Acquired Distinctiveness

Copyright-gov

Source:www.delhihighcourt.nic.in

 

The Delhi High Court on 13th December 2017 in the case of Bigtree Entertainment Pvt Ltd V. Brain Seed Sportainment Pvt Ltd & Anr. while examining on the issue of acquired distinctiveness decided that ‘BOOKMYSHOW’ has not acquired any distinctiveness.

 

Brief Background

  • The Plaintiff in the case ‘Bigtree Entertainment Pvt. Ltd’ is a company established in 1999. It provides ticketing solutions through its website “www.bookmyshow.com” and mobile app BOOKMYSHOW.

  • The Defendant in the case ‘Brain Seed Sportainment Pvt Ltd’ is a corporate entity established on May 15, 2017. It provides for booking sports facilities through an online platform www.bookmysports.co.

  • The Plaintiff has secured several trademarks under Classes 41 and 42 for BOOKMYSHOW word marks and logos, notwithstanding filing applications for numerous other BOOKMYSHOW and BOOKMY trademarks as well.

  • The Plaintiff in December 2015, through one of its employees came to know about the Defendant. A media article on the Internet detailing the Defendant’s launch was found.

  • The Plaintiff claimed that the Defendant’s trademark “BOOK MY SPORTS” was deceptively similar to the Plaintiff’s trademark and could mislead prospective clients into associating the Defendant’s domain with that of the Plaintiff’s.

  • Thus, Plaintiff filed an infringement and passing off suit before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction against the Defendant, its partners, proprietors, or as the case may be, assignees in business franchise licensees, distributors, dealers and agents from in any manner using the mark “BOOKMYSPORTS”, or using the prefix “BOOKMY”.

Issue

  • Whether the Defendant infringed or committed an act of passing off by using the prefix ‘BOOKMY’?

  • Whether the prefix ‘BOOKMY’ is a descriptive phrase or an invented term?

Plaintiff’s Arguments

  • It stated that it has developed itself to be a prominent player in the market since the launch of its website in 2007.

  • It stated that it is the official ticketing partner for major sports events and cinema houses and has a substantial presence in the Indian and International market.

  • It claimed that it is the registered proprietor of the word marks and logos BOOKMYSHOW in Classes 41 and 42 and has filed applications for numerous other BOOKMYSHOW and BOOKMY trademarks as well.

  • It submitted that the BOOKMYSHOW trademark has acquired a secondary meaning being associated with the Plaintiff owing to its performance in the ticketing industry and wide publicity.

  • It further claimed that the prefix BOOKMY has also acquired a distinctiveness over a period of time and is exclusively associated with the Plaintiff. In addition, the prefix forms an essential part of its registered trademark.

  • It submitted that the domain name www.bookmysports.co. , of the Defendant, remained parked from March 6, 2010 to May 15, 2015 on the World Wide Web with no activity.

  • It argued that the Defendant’s trademark is deceptively similar to the Plaintiff’s and can mislead prospective clients into associating the Defendant’s domain with the Plaintiff’s due to the substantial goodwill and publicity acquired by Plaintiff.

  • It acknowledged that it does not possess trademark on the prefix BOOKMY but averred that it is not the words BOOK, MY, and SHOW in isolation, but the interplay of these words which give the trademark distinctiveness.

Defendant’s Arguments

  • It stated that the Plaintiff has specifically, but falsely pleaded to be the exclusive user and adopter of the mark BOOKMY and BOOKMYSHOW. In addition, the Plaintiff has also concealed third party use and registrations, oppositions and rectifications filed against its trademark ‘BOOKMY’ and ‘BOOKMYSHOW’ and has misrepresented qua cause of action.

  • It also stated that the Plaintiff has admitted in a letter to the Registrar of Trademarks that Defendant’s trademark BOOKMYSPORTS is dissimilar and distinct from Plaintiff’s trademark BOOKMYSHOW.

  • It claimed that its domain of activity being booking sports facilities is squarely different from that of the Plaintiff’s except insofar as they are both engaged in facilitating online bookings.

  • It further claimed that the prefix BOOKMY is not an invented phrase meriting legal protection, but a descriptive one that is common to the particular business being run. In support of this, details of several domain names using the prefix “BOOKMY” was placed on record. Therefore, the alleged claim of the Plaintiff that its use of the prefix conveys distinctiveness toward the Plaintiff’s brand is defeated.

  • It is submitted that its trademark is visually, structurally, and conceptually different from the Plaintiff’s and is not likely to cause deception or confusion.

Court’s Analysis

  • The Court observed that the Plaintiff owns a trademark for its domain name, www.bookmyshow.com.

  • To decide on the question of a phrase being descriptive or invented the court examined the judgment given by Honorable Supreme Court in the case of J.R. Kapoor v. Micronix India [1] wherein it was held that ‘a word which is descriptive of the industry or market in which the concerned party operates cannot be deemed to be invented’ and F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd[2] wherein the Supreme Court applied the principle of using the characteristics of the market in which a party operates as a test to determine descriptiveness or inventiveness.

  • Referring to P.P. Jewellers Pvt. Ltd v. P.P. Buildwell Pvt. Ltd [3]. it held that ‘existence of other companies bearing the prefix in question in itself may suggest that the word is descriptive rather than distinctive.’

  • The Court took note of the fact that there are several pages of domain names beginning with "BOOKMY", that have existed both before and subsequent to the Plaintiff's website. Therefore, it held that the prefix is a descriptive one.

The Court held that the Plaintiff’s trademark “BOOKMYSHOW” has not acquired a distinctive meaning and that the words ‘BOOKMY’ is descriptive in nature and declined to grant the injunctive relief to BookMyShow.

 

 

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[1] 1994 Supp (3) SCC 215
[2] (1969) 2 SCC 716
[3] (2010) ILR 2 Del 16

 

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India: Enforceability of Foreign Country Registered / Unregistered Copyright

Copyright-gov

 

The term ‘foreign work’ is not defined under the Copyright Act, 1957, (hereinafter referred to as the ‘Act’). However, to determine “foreign work”, it can be reasoned that any work which does not qualify as “Indian Work” under Section 2 (l) of the Act is classified as “foreign work”. In order to protect Indian works in foreign countries, India has become a member of the following international conventions on copyright and neighboring (related) rights: [1]

  1. Berne Convention for the Protection of Literary and Artistic works

  2. Universal Copyright Convention

  3. Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms

  4. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties

  5. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

The aim of all the copyright conventions / agreements / treaty is focused on the principle that the original creativity or works of the mind, which is the subject matter of protection under copyright law, should be disseminated and distributed regardless of their national borders.[2] Therefore, the simple principles on which the major Copyright Conventions are based are:[3]

  1. Principle of National Treatment - Works originating in one of the Contracting States (that is, works the author of which is a national of such a State or works first published in such a State) must be given the same protection in each of the other Contracting States as the latter grants to the works of its own nationals.

  2. Principle of “Automatic” Protection - This means that such national treatment shall not be depending on any formality, i.e. Protection must not be conditional upon compliance with any formality.

  3. Principle of “Independence” of Protection - This means that the enjoyment and exercise of the rights in a protected work in a certain country is independent of the existence or non-existence of protection in the country of origin or in any other country.

The International Copyright Order, 1999, was formulated to provide the authors / owners of the foreign copyright works to enforce protections beyond the national limits. The above said principles are the basic foundations of the International Copyright Order 1999.

 

Under the Indian Legislation, copyright of works of the countries mentioned in the International Copyright Order are protected in India, as if such works are Indian works. The benefits granted to foreign works [4]will not extend beyond what is available to the works in the home country and that to only on a reciprocal basis, i.e., to say the foreign country must grant similar protection to works entitled to copyright under the Act.[5]

 

In the matter regarding Registration of Copyright Application Titled “In Grief then in Joy, We Wed”, wherein on scrutiny of the application with Diary Number 11596/2015-CO/L, it was found that the work submitted for registration under the Copyright Act 1957, was  already  registered  in  United  States  of  America,  and

hence a discrepancy was raised. The Learned Registrar of Copyrights, vide order dated January 16, 2018, observed that “In accordance to the provisions of Section 40 of the Copyright Act, 1957, read with International Copyright Order 1999 states that the copyright of nationals of countries who are members of the Berne Convention for the Protection of Literary and Artistic Works are protected in India. A list of such countries are made available in the Part 1 of the Schedule mentioned under the International Copyright Order 1999.” Further, the Learned Registrar of Copyrights also agreed that the Applicant, if they wish so, may also seek registration of their works in India by complying with the requirements of the Copyright Act 1957 and Copyright Rules 2013. 

 

Since the foreign works, as under the International Copyright Order 1999, are protected under the Copyright Act 1957, and therefore the provisions with respect to enforcing the rights under the Copyright Act is also available to the foreign copyrights holders. Paragraph 3 of the International Copyright Order 1999, extends the protection under the Copyright Act 1957 to the foreign works and therefore, both civil and criminal remedies for infringement under Chapter XII and Chapter XIII are available to the foreign works. The Copyright Act of India provides dual legal machinery to the right holders for enforcing their rights. The enforcement is possible through -

  1. The Intellectual Property Appellate Board and

  2. The Courts.

The Copyright Act, 1957, initially established a quasi-judicial body called the Copyright Board, which is now merged with Intellectual Property Appellate Board (hereinafter referred to as the ‘Appellate Board’) pursuant to Finance Act 2017, with effect from April 01, 2017. The Appellate Board is assigned with the task of adjudication of disputes relating to copyright registration,[6] assignment of copyright,[7] grant of licenses in respect of works withheld from public,[8] unpublished Indian works,[9] production and publication of translations,[10] and works for certain specified purposes.[11] Further, it also hears cases in other miscellaneous matter instituted before it under the Copyright Act, 1957.

 

Similarly, as per Section 62 of the Copyright Act 1957, the District Courts have jurisdiction in the matters pertaining to the infringement of Copyright in any work or the infringement of any other right conferred by the Copyright Act. However, an appeal against the order of the IPAB can be preferred before the Hon’ble High Court having the jurisdiction.

 

 

 

 

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[1] Government of India - Ministry of Human Resource Development (Department of Secondary Education and Higher Education), A Hand Book Of Copyright Law, available at http://copyright.gov.in/documents/handbook.html.

[2] WIPO National Workshop For Judges, International Legal Framework For The Protection Of Copyright And Related Rights (December 13 to 15, 2004), WIPO/IP/JU/RYD/04/1, Pg 4.

[3] WIPO National Workshop For Judges, International Legal Framework For The Protection Of Copyright And Related Rights (December 13 to 15, 2004), WIPO/IP/JU/RYD/04/1, Pg 5; WIPO, Summary of the Berne Convention for the Protection of Literary and Artistic Works (1886), available at http://www.wipo.int/treaties/en/ip/berne/summary_berne.html.

[4]Government of India - Ministry of Human Resource Development (Department of Secondary Education and Higher Education), A Hand Book Of Copyright Law, available at http://copyright.gov.in/documents/handbook.html.

[5]P. Narayanan, Intellectual Property Law, 4th ed., p.201 (2004).

[6]SECTION 6, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

[7]SECTION 19A, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

[8]SECTION 31, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

[9]SECTION 31A, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

[10]SECTION 32, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

[11]SECTION 32A, THE COPYRIGHT ACT. 1957 (ACT 14 OF 1957).

 

 

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