VOL X                                                  ISSUE NO. 14                                        July 10, 2018


In This Issue

India: Copyright Office issued Practice and Procedure Manual, 2018

In an endeavor to improve transparency and speedy disposal of applications, the Copyright Office has published on its website the Practice and Procedure Manual for examinations of applications in respect of literary, artistic, musical, cinematograph film and sound recording works.

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Mexico: Amendments the Industrial Property Law

Amendments to the Mexican Industrial Property Law were published in the Federal Official Gazette on May 18, 2018 and will enter into force after 60 working days of its publication in the Gazette i.e. August 10, 2018. The main purpose of these alterations and amendments to the Mexican Industrial Property Law is to include protection of non-traditional trademarks and make some clarifications regarding various legal provisions that caused some interpretation issues in the past.

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India: Developing Jurisprudence on Trade Dress

The Hon’ble Delhi High Court recently, in the case of Sandisk LLC, Anr vs. Transton, passed an order granting compensation of INR 33,16,320 (USD 48766 approx.) for loss of sales to Sandisk LLC, & Anr, holding that Transton were using the registered trademark and product packaging of Sandisk to sell its counterfeit products.

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India: Delhi High Court dismisses suit against Modi Hitech India Limited

Recently, the Delhi High Court in the case of Superon Schweisstechnik India v. Modi Hitech India Limited, held that a claim of passing off or infringement could not be entertained as there was no deceptive similarity between the two products at hand. In the said case, a suit was filed by Superon Schweisstechnik India Limited for permanent injunction and related reliefs against Modi Hitech India Limited for infringement and passing off of Superon’s mark VAC-PAC and SUPERON.

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India: Copyright Office issued Practice and Procedure Manual, 2018

 

  

Source: www.ipindia.nic.in

 

 

 

In an endeavor to improve transparency and speedy disposal of applications, the Copyright Office has published on its website the Practice and Procedure Manual for examinations of applications in respect of literary, artistic, musical, cinematograph film and sound recording works vide public notice dated April 27, 2018.

 

The Public Notice dated April 27, 2018 can be accessed here.

 

The Copyright Office through a public notice dated February 27, 2018 published draft guidelines on its website in respect of the aforementioned works for inviting reviews and comments from all stakeholders.

 

After taking into consideration relevant suggestions received from the stakeholders, the Copyright Office has published Practice and Procedure Manual, 2018 for examinations of applications.

 

The Practice and Procedure Manual for examinations of applications in respect of –

  1. Artistic work can be accessed here.

  2. Literary Works can be accessed here.

  3. Cinematographic Films can be accessed here.

  4. Musical Work can be accessed here.

  5. Sound Recordings can be accessed here

 

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Mexico: Amendments the Industrial Property Law

 

Source: www.wipo.int

 

Amendments to the Mexican Industrial Property Law (hereinafter referred to as “Mexican IP Law”) were published in the Federal Official Gazette on May 18, 2018 and will enter into force after 60 working days of its publication in the Gazette i.e. August 10, 2018. The main purpose of these alterations and amendments to the Mexican Industrial Property Law is to include protection of non-traditional trademarks and make some clarifications regarding various legal provisions that caused some interpretation issues in the past.

 

The amendments in the Mexican IP Law are as follows:

  • Non- Traditional Trademarks
    Article 89 of Mexican IP Law now includes the possibility to protect non-traditional marks namely:

    • Holographic signs

    • Sounds

    • Smells

  • Trade Dress
    Plurality of operative elements; elements of image, including, among others, the size, design, color, shape, label, packaging, decoration or any other that, when combined, distinguish products or services in the market.

    Descriptive marks and non-distinctive trade dress will be registrable upon a showing of acquired distinctiveness.

  • Secondary Meaning
    Trademarks that have acquired distinctiveness derived from their use may be registered, such as marks that would otherwise be refused on the basis of being descriptive.

  • Bad Faith
    The amendment introduces bad faith as an impediment for the registration of a trademark. Bad faith is defined as: when the registration is requested against the good practices, uses or customs of the Industrial Property System, commerce and industry, or when an improper benefit or advantage is sought.

    Bad faith is introduced as a ground for the nullity of a trademark registration. Such action may be exercised at any time.

  • Co-Existence Agreements
    Letter of Consent and Co-existence Agreements will now be officially accepted by Mexican Institute of Industrial Property to allow registration of a trademark

  • Declaration of Use
    An important amendment has been made to Article 128 of Mexican IP Law. It introduces the obligation to file a Declaration of Use (declaring the actual and effective use of the mark) by the owner of a registered trademark, within 3 months after the three years of registration. If such declaration is not filed, the trademark will lapse.

  • Opposition System
    The trademark applications filed are published in an Official Gazette and any person or company that deem that the published trademark application is identical or similar to a previously applied for or registered mark, may oppose its registration within a term of one month counted as from the date of the respective publication. The applicant will then have a term of one month to submit its arguments against the opposition. The examiner will be compelled to take into account an opposition. Evidence may be submitted and subsequently arguments may be filed, within a period of 2 working days. However, the opposition procedure will not suspend the application procedure, nor determine the outcome of the substantive examination.

  • Certification Trademarks
    The amendment to Mexican IP Law now includes protection for the Certification Marks, by which the owner is compelled to license use of the mark to anyone whose goods or services meet the standards established for certification.

    Article 98 defines a certification mark as a sign that distinguishes products and services whose qualities or other characteristics (components, processing conditions, quality, processes, geographical origin) have been certified by their owner, such as:

  • Well-Known and Famous Trademarks
    The declaration of notoriety or fame of a trademark may be requested without it being previously registered.

  • Nullity of Trademark Based on Prior-Use
    The decree of limitations to file a trademark nullity action based on prior use in Mexico or abroad has changed from three years to five years.

 

 

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India: Developing Jurisprudence on Trade Dress

Source: www.delhihighcourt.nic.in

 

 

Trade dress essentially refers to the visual appearance of the product. This includes the package, shape, pattern, design, graphics and even the combination of colors which effects its sensual features. Since the product packaging plays a key role in grabbing the attention of the consumer after which the consumers recognize the brand’s products by the packaging, the protection of the same from competitors becomes really important. For this reason, the proprietors get the trade dress of their product registered. The concept of trade dress originated from the US Legislation, The Lanham Act, wherein even the unregistered trade dress can be protected. The Trade Marks Act, 1999, does not contain a separate provision for trade dress and the same is included in the new definition of trade mark. It states that a mark consists of the shape of goods, packaging or combination of colors or any combination thereof.

 

Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For E.g., Apple Inc. recently secured the registration over the design of its flagship Apple Stores as trade dress.

 

The Plaintiff is entitled to injunction, damages, accounts and even the infringing units. In majority of the cases where the counterfeit products use the same or similar packaging the courts do not award compensatory damages on account of loss of actual sales. Coordinate Benches of Delhi High Court had in 2008 awarded such damages of INR 100,000 (USD 1469 approx.) in M/s General Electric Company v. Mr. Altamas Kha & Others. Similarly, in 2005, in Microsoft Corporation v. Yogesh Papat & Anr. the Bench awarded a sum of INR 1,900,000 (USD 27922 approx.) for loss of profit to the Plaintiff. Recently, the Hon’ble Delhi High Court awarded a compensation of INR 33,16,320 (USD 48766 approx.) to the Plaintiff on account of loss of actual sales.

 

Sandisk LLC, & Anr Vs. Transton

 

On May 10, 2018, the Hon’ble Delhi High Court, in the case of Sandisk LLC, Anr vs. Transton, passed an order granting compensation of INR 33,16,320 (USD 48766 approx.) for loss of sales to Sandisk LLC, & Anr (hereinafter referred to as the “Plaintiff no. 1” and “Plaintiff no. 2” respectively), holding that Transton (hereinafter referred to as the “Defendants”) were using the registered trademark and product packaging of the Plaintiffs’ to sell its counterfeit products.

 

Brief Facts

  • The Plaintiff no. 1 is a company founded in 1998 and is the world’s largest providers of flash memory storage solutions under the house mark SANDISK. Plaintiff no. 2 is a registered user of the trademark SanDisk and the Red Frame Logo belonging to Plaintiff no. 1

  • Plaintiff no. 1 has been extensively and continuously using the trademark globally since 1995 and in India since 2005. It possesses both common law trademark rights as well as trademark registrations for the mark SanDisk worldwide. It is also the registered proprietor of a variety of word marks and device marks in India including the SanDisk logo and the Red Frame logo, since 2003 under Class 9 of the Trade Marks Act, 1999 and all these trademarks are valid and subsisting.

  • On October, 2017, upon inquiry by the Plaintiff, an investigator found that the Defendant was dealing in loose microSDHC cards which appeared to be “counterfeit products” and were “in a packaging identical to the Plaintiff No. 1’s packaging”. The aforesaid microSDHC cards were sold to the Plaintiffs’ investigator, in retail packaging under a kaccha invoice.

  • The Plaintiff seeks permanent injunction restraining infringement of its trade mark SanDisk and Red Frame Logo, passing off, rendition of account of profits, damages, delivery up, etc. against the Defendant.

  • On October 13, 2017, this Court granted an ex parte ad interim injunction in favor of the Plaintiffs and appointed a Local Commissioner to visit the premises of the Defendant.

  • On October 17, 2017, the Local Commissioner visited the premises of the Defendants and seized 493 units of MicroSDHC cards bearing the Plaintiff’s trademark and packaging. The same were sealed and were given by the Local Commissioner on Superdari to the Defendant.

  • Vide order dated April 3, 2018, the Defendant was proceeded ex-parte and the ad interim injunction was confirmed till the disposal of the suit.

Issues

  1. Whether the mark and product packaging as used by Defendant amounts to infringement of Plaintiff’s trademark and product packaging?

    The Packaging of Parties[1]

     


    The key elements of the Plaintiff’s product (memory card) packaging are

    1. Red product packaging with white lettering.

    2. A “Red Frame Logo” which describes the capacity of the memory card on the top right corner.

    3. The SanDisk logo in a unique font in white lettering prominently at the bottom.

Plaintiffs’ Contentions

  1. The counsel for Plaintiffs’ submits that an analysis of the sample products procured by the investigator reveals that the same were counterfeited.

  2. It was contended that the Defendant had infringed upon the statutory rights of the Plaintiffs’ by copying each and every element of the Plaintiffs product and/or product packaging, with the sole intent of duping unwary customers by selling counterfeit products and to ride on the Plaintiffs reputation and goodwill.

Submissions

 

The Plaintiffs submitted their ex-parte evidence by way of an affidavit of Mr. Vishal Garg, the Constituted Attorney of the Plaintiffs. The affidavit deposed the costs claimed as follows: -

 

S. NO.

PARTICULARS OF LOSS

AMOUNT PRAYED (Rs.)

1.

Actual lost sales[2]

33,16,320

2.

Punitive damages[3]

67,00,000

3.

Cost of litigation[4]

10,31,125

 

Court’s View

  1. The Court is of the view that due to extensive use, the Plaintiffs’ mark SANDISK, and Red Frame logo have acquired reputation and goodwill globally as well as in India.

  2. On the basis of the pleadings, documents as well as the evidence on record, the Court held that the Defendants were using the registered trade mark of the Plaintiffs and its product packaging to sell counterfeit products with the view to trade upon and benefit from the reputation and goodwill of the Plaintiff’s mark and pass off its services as that of the Plaintiffs.

  3. The Court opined that the use of the Plaintiffs’ mark by the Defendants is bound to cause incalculable losses, harm and injury to the Plaintiff and immense public harm.

  4. Keeping in view the evidences stating the costs on account of loss of actual sales, the Court decreed a compensation of INR 33,16,3321 (INR 2,72,360*6) along with costs relating to lawyer fees and court fees and delivery of the 493 units of infringing goods as seized by the Local Commissioner.

  5. Keeping in view the judgments of this Court in Super Cassettes Industries Private Limited v. HRCN Cable Network 2017 (72) PTC 556 [Del] and in Hindustan Unilever Limited Vs. Reckitt Benckiser India Limited, 2014 (57) PTC 495 [Del] [DB], the Court did not grant any punitive damages to the Plaintiff.

 

 



[1]As averred in the plain by the plaintiff / as mentioned in the decision of Delhi High Court dated 10th May, 2018

[2] on the basis on quantity of units seized by the local commissioner, the Defendant had been doing business for at     least 6 months prior to the institution of the present suit. The actual value of products will be Rs. 2,76,360. The value of stocks for 6 months will be Rs. 33,16,320 (2,76,360 * 6)

[3] damages on account of loss of business, loss of confidence and trust of customers and loss of “image”

[4] court fees, costs for drafting and filing lawsuits; costs of appearances; costs for all forms of service; costs for Local                                       Commission proceedings

 

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India: Delhi High Court dismisses suit against Modi Hitech India Limited

 

Source: www.delhihighcourt.nic.in

 

Recently, on April 02, 2018, the Delhi High Court in the case of Superon Schweisstechnik India v. Modi Hitech India Limited, held that a claim of passing off or infringement could not be entertained as there was no deceptive similarity between the two products at hand. In the said case, a suit was filed by Superon Schweisstechnik India Limited (hereinafter referred to as the ‘Plaintiff’) for permanent injunction and related reliefs against Modi Hitech India Limited (hereinafter referred to as the ‘Defendant’) for infringement and passing off of the Plaintiff’s mark VAC-PAC and SUPERON.

 

Brief Background

  • In the above case, the Plaintiff is engaged in the manufacturing of conventional welding electrodes and is in the business of repair and reclamation of welding electrodes.

  • The Plaintiffs got engaged in a manufacturing business with Kjellberg Finsterwalde, Germany and, also got engaged in manufacturing of fire suppression systems coatings, fire barriers, etc and various other products.

  • Accordingly, it has given its year wise details of sales from year 2004-2005 to the year 2016-2017. Its sales in the year 2004-2005 were said to be INR 1,76,31,937 (26,44,064 USD approx.) and in the year 2016-2017, the sales became INR 3,13,14,84,815 (4,69,59,370 USD approx.).

Issue

  • Whether the Plaintiff’s claim that the Defendant used the word VAC-PAC and SUPERON infringed the Plaintiff’s work?

Contentions by the Plaintiff

  • The Plaintiffs claimed that its trademark SUPERON is Well-Known under which it sells its goods, and along with this trademark it also claims to have adopted the trademark VAC-PAC from the year 2004.
    Further, the trademark VAC-PAC is said to have been coined, conceived and adopted by them with respect to its products and, is arbitrary and fanciful as per them and, hence entitled to high degree of protection.

  • Plaintiffs claimed to be the owner and proprietor of the artistic work which is involved in the trademark VAC-PAC along with certain other features contained in the label on account of prior adoption and, continuous use. They also claim to be using the trademark in a distinctive and unique manner, with their own set up and lettering style, etc.

  • Through further claims, they are found to be exporting the goods under the trademark VAC-PAC in about 70 countries.

  • The Plaintiff also pleaded that the Defendant had dishonestly adopted an identical trademark VAC- PAC for welding electrodes, which was sold by them and this adoption of the trademark VAC-PAC by the Defendants is completely dishonest.

Contentions by the Defendant

  • The Defendant prayed for dismissing of the commercial suit on the ground that the Plaintiff has no real prospect of succeeding in terms of the cause of action pleaded in the suit.

  • In support of the argument, the Defendant relied upon the judgement given in the case of Marico Limited (supra) which held that abbreviation of descriptive words cannot and should not be given protection as a trademark.

  • Further, the Defendant argued that whereas ordinary suits which are not commercial suits would require trial if there was a dispute in question of fact, the commercial suits because of the provision of Order XIII – A CPC as added in CPC for commercial suits, allowed the Court to dismiss the suit at once if there is no real prospect of the Plaintiff succeeding in the suit.

Observations by The Hon’ble High Court

  • The Court observed, that the Plaintiff was selling its goods by using two trademarks SUPERON and VAC-PAC, whereas the Defendant was selling its goods by using its trademark GMM/arc while adding VAC-PAC on its packaging.

  • The Plaintiff was using the colour dark yellow while using two other colours blue and black as its colour combination on the main packaging, whereas the Defendant was using the colours blue and white along with red for the words _arc on its packaging which was the part of the trademark GMM/arc, along with the expression _Umesh Modi Group in red colour on its packaging.

  • Also, the Court made two points in the case, firstly the trademark of the Plaintiff had SUPERON in addition to VAC-PAC, whereas the Defendant had GMM/arc in addition to VAC-PAC.

  • This clearly shows that, there is no identity or deceptive similarity between the two and the different trademarks are necessary to distinguish the goods of the Plaintiff to that of the Defendant.

  • Secondly, the packaging of both the Plaintiff and the Defendant, are completely different which could be made out by scanning of both the packaging.

Therefore the Court held that -

  • The present suit is gross abuse of the process of law. And, the Plaintiff has chosen to file the same in spite of the settled law laid down in the case of Marico Limited, which holds that there does not arise any issue of passing off not only because of use of primary trademarks as wordmarks being different of both the parties but also here is a complete difference in get up and packaging of the products of the respective parties, and finally w.r.t disentitlement of any person to claim descriptive wordmarks or their abbreviated forms for their exclusive entitlement in view of provisions of the Trade Marks Act, therefore this suit is dismissed with actual costs.

  • Hence, the Court imposed the costs on the Plaintiff and, in favor of the Defendant by applying Section 35 of Civil Procedural Code, 1908 (herein after referred to as CPC). And, dismissed the suit with costs of INR 50,000 (USD 748 Approx.)

  • According to the Court, there was no provision in CPC for imposition of costs for abuse of process of law because Section 35 CPC is applicable only for awarding costs in favor of the successful party. Therefore, Section 151 CPC will be applied to impose the costs upon the litigant who has abused the process of law and unnecessarily wasted the time of the court.

 

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