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SSRana Newsletter 2022 Issue 07

April 6, 2022

Filing Opposition against Trademarks Advertised during Covid-19 period

cgpdtm-logoThe IP Office, Mumbai has issued a public notice regarding filing of the oppositions against trademarks which had been published during the Covid-19 period from November, 2019 to January, 2022. The notification has been issued in compliance of Delhi High Court’s order in W.P. (C) – IPD 4/2022 & CM 27/2022 & others.

Dynamic Injunction: Facebook, Google to block websites infringing Aaj Tak trademark

Delhi-high-courtIn a recent case, the Hon’ble Delhi High Court has passed an order directing intermediaries and other Domain Name Registrars to block websites infringing the “Aaj Tak” trademark of the Plaintiff.

Unprecedented War Tactic: Allowing Copyright violation of ‘Peppa Pig’

intellectual-property-diagramIn support of Russia’s retaliatory actions from the US and UK, a Russian judge, of a provincial arbitration Court has passed a rather unconventional ruling that allows infringement of the copyright existing in the famous pig cartoon, ‘Peppa Pig’.

Reduction in the amount of Individual Fee while designating Laos

Wipo-logoThe Director General of WIPO under the Madrid Protocol has established new amounts, in Swiss francs, of the individual fee that is to be payable when Lao People’s Democratic Republic is designated in an international application.


Filing Opposition against Trademarks Advertised during Covid-19 period

cgpdtm-logo

The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), Mumbai has issued a public notice dated March 28, 2022, regarding filing of the oppositions against trade marks which are published in Trade Mark Journal from November 18, 2019 to January 24, 2022.

The public notice is issued in compliance with the direction given by Hon’ble Delhi High Court in the case of W.P. (C) – IPD 4/2022 & CM 27/2022 & others vide order dated March 21, 2022. The public notice notifies that any person who wishes to file an opposition against any trade mark published from Journal No. 1928 dated November 18, 2019 to Journal no. 2036 dated January 24, 2022 (both inclusive, irrespective of status of application whether registered/ opposed/ accepted & advertised/ advertised before acceptance) may submit the same in respective jurisdictional office of the Trade Mark Registry either through hand or post so as to reach to Registry office on or before May 30, 2022.

This notice is basically issued to enable the parties to file oppositions against the trade marks which were advertised during the Covid-19 pandemic, and during the four month limitation period would have expired after March 15, 2020. In such cases, the limitation period in terms of the orders of the Supreme Court on extension of the limitation period in view of the pandemic dated March 23, 2020, April 27, 2021 and January 10, 2022[1] shall be extended for filing oppositions to the said applications, until the expiry of 90 days from March 01, 2022, i.e., till May 30, 2022.

[1] https://ssrana.in/articles/supreme-court-extends-period-of-limitation-covid/ (dated March 30, 2020);

https://ssrana.in/articles/supreme-court-extends-limitation-period/ (dated May 3, 2021); https://ssrana.in/articles/extension-limitation-period-supreme-court-january10/ (dated January 13, 2022)

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BACK TO VIRTUAL HEARINGS – Trademark Opposition and Rectification hearings fixed in January to be conducted virtually

Dynamic Injunction: Facebook, Google to block websites infringing Aaj Tak trademark

Delhi-high-court

By Priya Adlakha and Shilpi Sinha

Dynamic injunctions have been the latest maneuver to restraint the nuisance of resurfacing bootlegged websites. Hon’ble Mr. Justice Suresh Kumar Kait of the Delhi High Court in Living Media India Limited & Anr. vs www.news-aajtak.co.in & Ors.[1], passed an order directing intermediaries and other Domain Name Registrars to block websites infringing the “Aaj Tak” trademark of the Plaintiff. Living Media India Limited is the parent company of the famous Hindi news channel “Aaj Tak”.The website www.news-aajtak.co.in and other websites bearing the word ‘Aaj Tak’ as part of their domain name (commonly referred to as “rogue websites”) infringe upon the “Aaj Tak” trademark. The Hon’ble Court earlier granted ad-interim injunction and directed the Domain Name Registrars (DNRs) to block the rogue websites, but with time, several mirror websites turn up after the rogue websites are blocked. The Hon’ble Delhi High Court, decided upon the application for the impleadment of third parties in its order dated September 6, 2021.
Facts:

The plaintiff had submitted that they own several “Aaj Tak” trademarks (with device as well as composite marks) which are given below.

aajtak-shapeaajtak-logoaajtak-black-whiteaajtak-banglaaajtak-marathiaajtak-desh-logoaajtak-desh-logo2

On 24th September, 2020, the Hon’ble Court had passed an interim injunction order against four (4) defendants. In the present application, the plaintiff had prayed for impleading several other defendants (9-36) and had also prayed for suspension of the domain name registrations of the proposed defendants’ website Nos. 9, 10, 11, 12, 14, 15 and 17 and web/-platforms under proposed defendants No. 18 to 26 and 27 to 36. The Hon’ble Court concurred with the plaintiff and noted that the proposed defendant nos. 9 to 12, 14, 15, 17 to 25 and 27 to 36 as well as proposed defendant nos. 13, 16 and 26 are also necessary party for adjudication of this case, and if they are not impleaded, prima facie it shall amount to immense loss of goodwill and reputation on account of the unlawful activities of the proposed defendants. Thus, the interim application was allowed by the Hon’ble Court and the proposed defendants (no. 9-36) were impleaded in the present case.

 

Notice of the said application was then issued to the aforementioned proposed defendants, and till the next date of hearing, the Court held that the interim injunction granted vide order dated 24.09.2020 shall also imply upon defendant nos. 9 to 36. Necessary directions were also given by the Hon’ble Court to block/suspend the infringing websites /domain names/ web platforms pertaining to the newly impleaded defendants.

 

DYNAMIC INJUNCTIONS IN INDIAN CONTEXT

Since the beginning of the Covid-19 pandemic, the nation has faced a new challenge of rise of numbers of intellectual property rights violation /infringement cases, especially digital piracy cases. The IP right owners have knocked the doors of the appropriate Courts to seek appropriate remedies. In several cases, the Hon’ble Courts have granted interim injunctions in favour of the IP right owners to protect their respective rights; however, the culprits sometimes go beyond control. Once an injunction or direction is granted by the Hon’ble Court for blocking of the specified fake website/domain name, mirror websites (being hosted under slightly modified / different domain names) take their place.

In Indian context, Dynamic injunctions are the need of the hour, since regular injunctions wherein multiple fake websites are introduced/launched by the fraudsters it becomes cumbersome for the Plaintiff to monitor all the illegal activities. Dynamic injunctions further enable the courts to extend the original injunction order and include the new /additional mirror/fake websites that have the same content as the original one and are only registered under a different domain name and/or use a different IP address.

In India, there are previous instances where the Hon’ble Courts have granted dynamic injunction in order to protect the IP right owners. The Hon’ble Delhi High Court granted an ex parte ad interim injunction against 118 websites in Disney Enterprises v. KimCartoon.to & Ors[2], for infringement of Disney’s copyrights. UTV Software Communication Ltd.[3] was the first case wherein the dynamic injunction citing the Singapore decision, restraining the Defendants websites from sharing its original content without authorization, and to direct ISPs to block access to these websites. More recently, another dynamic injunction was granted in Snapdeal Private Limited vs Snapdealluckydraws.org.in[4] and 50 infringing websites violating Snapdeal’s trademark were taken down.

 

It is pertinent to mention that prior to this, the courts in India had started to resort to Dynamic Injunctions as a tool to deal with such issues at hand, but most of those cases were limited to copyright infringement. Snapdeal’s case was the first one wherein such a resolution was provided for in the case of a trademark infringement.

 

CONCLUSION

Adoption of dynamic injunctions, as a tool to deal with such copycats, has been proven to be an efficient and effective remedy to tackle with digital piracy. Despite several criticisms, its efficiency and effectiveness in the current digital age has been appreciated, especially when such acts of digital piracy and trademark infringement may mislead the general public causing damage to the repute of the original IP right owner. It is clear that these recent adjudications only pave the path towards a more efficient system of dealing with digital piracy and infringement.

[1] CS(COMM) 395/2020

[2] CS(COMM) 275/2020

[3] CS(COMM) 724/2017

[4] CS(COMM) 264/2020

Unprecedented War Tactic: Allowing Copyright violation of ‘Peppa Pig’

intellectual-property-diagram

By Diksha Singh and Nitika Sinha

The on-going Russian- Ukraine conflict has been termed as the largest attack on a European state since the World War II. Many governments have slapped heavy sanctions on Russia to indicate their stand against the war of aggression, ranging from prohibitions on luxury items, travel bans, gas imports etc., with several companies even suspending their operations in Russia, such as Apple, Toyota etc.

 

In response to the sanctions, Russia has issued Decree No. 299 [1]on March 06, 2022, which allows for the seizure of IP rights, and is justifying the same under the Russian Civil Code, which permits lifting of third party’s IP rights without the consent of the right holder in situations of extreme necessity, in return for proportional compensation. However, this compensation amount is 0%, for companies and/or persons of a hostile and/or in other words, ‘unfriendly’ country. This means that a patented invention in Russia, which is owned by a so-called unfriendly foreign entity, can be used in the Russian territory without any authorization or compensation being given to the owner of the patent. Therefore, the said decree makes it impossible to sue infringers of IP rights before the Russian Courts.

 

As of now, the list of ‘unfriendly countries’ issued by Russia, includes United States and UK, while India is not a part of the said list. Further, Russia has even proposed re-opening ‘RuTracker’, a famous torrent site that was earlier blocked in Russia, in order to help residents of Russia to watch foreign films and shows, after many studios worldwide refused to release new films and shows in Russia[2].

 

Recently, in support of Russia’s retaliatory actions, a Russian judge, Mr. Andrei Slavinsky, of a provincial arbitration court has passed a rather unconventional ruling that allows infringement of the copyright existing in the famous pig cartoon, ‘Peppa Pig’, in view of the sanctions against Russia by US and UK.[3] This means that the Peppa Pig cartoon characters can be blatantly copied by any business across Russia without any apprehension of being hit by an infringement lawsuit.

 

The background of the case goes back to September, 2021, when the UK based company, One Entertainment (acquired by American toy giant, Hasbro in 2019), the company behind the cartoon series ‘Peppa Pig’, filed a copyright infringement case against a Russian entrepreneur, Ivan Kozhevnikov, after he had created his own versions of ‘Peppa Pig’. Under different circumstances, the case would have been a simple open-and-shut case in favour of One Entertainment. However, in light of the recent events, the judge has ruled in favour of the Russian entrepreneur, reasoning that the cartoon originates from United Kingdom, and further One Entertainment was acquired by Hasbro, an American company, both of which are now considered ‘unfriendly nations’ due to the restrictive sanctions imposed on Russia, and thus, the infringement claim has no merit in the present circumstances, and the copyright in ‘Peppa Pig’ can be used without permission of One Entertainment. This ruling prima facie is alarming because it opens the door for infringers and openly encourages the violation of Intellectual Property Rights in Russia without any repercussions.

Further, the Decree, as passed by Russia, violates international treaties on Intellectual Property Rights, and the countries damaged by this measure may reach out to World Trade Organization court and ask for imposition of additional sanctions on Russia. However, in the meantime, Russian businesses are most likely to capitalize this opportunity and violate IP rights including trade mark and copyright infringement, and piracy. This would discourage foreign entities from entering the Russian market, and investing in its economy.

Titiksha Sinha, Associate at S.S. Rana & Co. has assisted in the research of this article.

[1] Decree of the Government of the Russian Federation of 06.03.2022 No. 299 (http://publication.pravo.gov.ru/Document/View/0001202203070005?index=0&rangeSize=1)

[2] https://www.inputmag.com/culture/russia-rules-piracy-legal-as-western-sanctions-continue-netflix-disney

[3] The case number is А28-11930/2021 in the Arbitration Court of the Kirov Region.

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MEMES AND COPYRIGHT PROTECTION

COGNIZANCE OF OFFENCES UNDER SECTION 63 OF COPYRIGHT ACT

 

Reduction in the amount of Individual Fee while designating Laos

Wipo-logo

The Director General of World Intellectual Property Organization (WIPO) in accordance with Rule 35(2) (d) of the Regulations under the Madrid Protocol has established new amounts, in Swiss francs, of the individual fee that is to be payable when Lao People’s Democratic Republic is designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration in which Lao People’s Democratic Republic has been designated.

The revision in the fee structure is as under:

                                Items

Amount

(in Swiss francs i.e. CHF)

Until April 21, 2022 With effect from April 22, 2022
Application or Subsequent Designation –          For one class of goods or services

 

–          For each additional class

108

 

 

77

91

 

 

65

Renewal –          For one class of goods or services

 

–          For each additional class

108

 

 

77

91

 

 

65

 

The new amount will be payable in the following scenarios:

  1. When designating Lao People’s Democratic Republic in an international application.
  2. When designating Lao People’s Democratic Republic subsequently in an international application.
  3. When renewing an international registration in which Lao People’s Democratic Republic has been designated.

The official notice issued by WIPO can be accessed by clicking here.

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