2017; We are all in this together!
The Merriam-Webster word of the year for 2017 is “feminism” – which considering the fact that the year began with the Washington Women’s march, which soon became the largest single day protest in recent history and ended with the “Me Too” campaign whose originating ‘Silence Breakers’ are now Time’s Person of the Year, should not be too much of a surprise. Interest in the dictionary definition of feminism was also driven by entertainment this year, as we saw increased lookups for this word after the release of both Hulu’s series The Handmaid’s Tale, Amazon’s Marvelous Mrs. Maisel and the highly acclaimed film Wonder Woman. More recently, lookups of feminism have been increasing in conjunction with the many accounts of sexual assault and harassment in the news, with many women coming forward to share their stories with journalists and many more joined in on social media using the #metoo hashtag to say that they too had been affected by such behavior. The string of breaking news stories regarding the resignations, firing or dismissals of men who have been charged with sexual harassment or assault has kept this story in the news. Between expositions of allegations against Harvey Weinstein and Kevin Stacey on one end and the launch of the first ever Vogue Arabia and commemoration of Rei Kawabuko at the Met Gala at another, it seems to have been a good year for women.
Meanwhile, the world has been running serious damage control with the recent spike of events like the isolation of Qatar from the Middle East by Saudi Arabia, withdrawal of the US from UNESCO and the Paris convention, and the recent public support of Jerusalem as the Israeli capital – amongst countless others. In the midst of mounting pressure of declaration of a nuclear war by North Korea and severe sanctions on the country in return, there were ransomware cyberattacks in over 150 countries and their state software, Government backed military operations targeting Rohingya Muslims, another mass shooting in the United States by a white male termed ‘mentally ill’, actual terrorist attacks in Mogadishu and Sinai. Bubbling over were undercurrents of dissent as now former President Robert Mugabe resigned earlier this year ending a 37 year long rule in Zimbabwe, followed by the Spanish province of Catalonia that declared its independence to little acceptance. Though bleak, it hasn’t been all ‘carnage’ – the Australian senate passed the Same Sex Marriage Bill after a solid majority of Australians voted in favor of same-sex marriage in a historic and unprecedented referendum.
In the same spirit, India hasn’t been very far behind, with the Supreme court judgement on Aadhar which not only extended to the system of biometric identification, but covered broader aspects of civil law in an attempt to protect citizens’ personal freedom from intrusions by the state. The year itself began with a landmark 4:3 judgement by the Supreme Court which outlawed an appeal for votes during elections based on religion, caste, race, etc., followed by a successful missile test of the Agni-IV intercontinental ballistic missile, and launch of the PSLV-C37 rocket which put a record 104 satellites into orbit. India agreed to terminate a standoff with China in Doklam, withdrawing their armies while floods wrecked the city of Mumbai. Even though the country was reeling from the shock of demonetization last year, the government still went ahead with the enactment of the biggest tax reform in 70 years of the country’s existence – the Goods and Services Tax. Soon after was the election of Ram Nath Kovind as the 14th President of India along with Venkaiah Naidu as the Vice President, followed by the Supreme Court judgement that banned triple talaq deeming it unconstitutional.
The year also saw many significant IP developments, for instance, the Trademarks Rules, 2017 were notified, which replaced the earlier Trademark Rules, 2002. The move was clearly aimed at improving and streamlining India’s Intellectual Property regime, and thereby substantially improving the ease of doing business on this front. India ranks behind its BRICS peers at 130 on World Bank’s Ease of Doing Business Index as multiple clearances and a maze of rules make it difficult to start a business. Campaigns like Start-Up India and Digital India, launched last year initially paved the way to encourage the field of Intellectual Property, but with the present notification the Department of Industrial Policy and Promotion has institutionalized a much refined system that will remove previously faced complexities with fewer forms and improved online filing process.
Meanwhile, the year 2017 has been a stepping stone in the success of S.S. Rana & Co., where the firm not only successfully completed 28 glorious years of hard work and commitment since 1989, but, was also awarded with the ISO 50001: 2011 Certification, which reinforces the firm’s commitment to continually improve its energy performance through reducing its energy demand, increasing energy efficiency and sourcing energy in the most efficient, cost effective and environment responsible manner. However, the highlight of the year for the Firm was winning the Great Places to Work Certification Program, an assessment where more than 8000 organizations from over 50 countries partner with Great Place to Work Institute for benchmarking and planning actions to strengthen their workplace culture. Great Place to Work Certification Program is the first step for an organization in its journey to build a High-Trust, High-Performance Culture and our organization has successfully accomplished this breakthrough!!
The Paymark battle: A curious case of Brand envy
Last year, the American online payment solution company PayPal, had opposed an Indian electronic commerce and payment system company, Paytm’s trade mark application, numbered 2370686 with the Indian Trademark Office. They marked Paytm’s trademark as “deceptively and confusingly similar to PayPal” due to a similar colour scheme. Additionally, PayPal questioned the intent of Paytm which according to them is to allegedly, feed on the fame and popularity gained by PayPal.
PayPal asserted in their opposition notice, that they have been using the trademark “PayPal” across the world since the year 1999. PayPal contended that they are global leaders in online payment solutions that adopted its name in the year 1999 and started operations in India in the year 2000. However, PayPal claim to have adopted the two tone color combination only in 2007. Paytm on the other hand commenced its business as an e-commerce platform in India in the year 2010, and they applied for the said trademark on July 18, 2016.
PayPal submitted that their mark is well-known and they are the only proprietors of their mark that is renewed from time to time and their registrations are validly subsisting. Owing to this, PayPal claims all exclusive rights to use their mark and all marks determinative of their mark.
Therefore, as per PayPal the adoption of the Trademark by Paytm is neither honest nor in good faith. PayPal’s supposition of Paytm’s conduct as dubious and devoid of good faith urged them to ask the Registrar for refusing the trademark application filed by Paytm. It would be interesting to note further developments in this case especially in light of the fact that Paytm, which is an acronym of the phrase “Pay through Mobile” was first filed on a proposed to be used basis way back in July, 2009.
India: Mother Dairy given ‘well-known’ mark status by the Delhi High Court
In a case decided by the Delhi High Court, Justice R.K. Gauba granted a permanent injunction in favor of Mother Dairy (hereinafter referred to as the ‘Plaintiffs’), restraining the use of its trademark/trade dress by the S.K. Raheem & Others (hereinafter referred to as the ‘Defendants’). One of the key factors providing a firm basis to the Court’s conclusion was that Mother Diary is a ‘well-known mark’.
The Plaintiff in the case is operated and financed by the National Dairy Development Board (hereinafter referred to as the ‘NDDB’) under the Operation Flood programme to facilitate the selling of milk and milk product at reasonable prices. Since 1974, the Plaintiff has been selling various products such as curd, milk, ice cream and butter under the Trade name ‘Mother Dairy’. It has also obtained registration of 17 of its products, majorly under classes 29 and 30.
With reference to the Plaintiff’s market share, it contended that they have invested a significant amount of money and efforts in advertising and marketing with a blue-colored logo since 2003, resulting in the logo becoming a major recognition factor with the product and the associated goodwill. It has set up around 14,000 retail outlets and 845 exclusive outlets and has a market share of 66% in the relevant market in Delhi. Since the Defendants did not file any written submissions, even after the due service of summons, the Court decided to proceed ex-parte against the Defendants.
The Court started its observation by stating that the Plaintiff was the undisputed sole owner of all the rights relating to the packaging/logo associated with the products, referring to the fact that it has received trademark and copyright registration for the same. Also, the blue colored Mother Dairy Logo, which is in question has acquired sufficient distinctiveness to be easily associated and recognized with the products of the Plaintiff by the consumers. This gives rise to the inexorable conclusion that the logo has acquired the status of a ‘well-known’ mark. On these grounds, the Court granted a permanent injunction against the Defendant, however, it refused to order the granting of damages as the Plaintiff was unable to collect any meaningful evidence in support of these prayers.
India: Government simplifies rules and increases fees for trademark registration
The Department of Industrial Policy and Promotion (hereinafter referred to as the ‘DIPP’) on March 6, 2017 notified The Trade Mark Rules, 2017, which replaced the erstwhile Trade Mark Rules, 2002.
The present move is clearly aimed at improving and streamlining India’s Intellectual Property regime, and has simplified the Rules, thereby substantially improving the ease of doing business on this front. India ranks behind its BRICS peers (Brazil, Russia, China and South Africa) at 130 on World Bank’s Ease of Doing Business Index as multiple clearances and a maze of rules make it difficult to start and run businesses. The DIPP, under the aegis of the Ministry of Commerce and Industry, has since the start of the term of the Modi government been trying to streamline processes and cut paperwork to boost India’s rankings.
Campaigns like Start-Up India and Digital India, launched last year initially paved the way to encourage the field of Intellectual Property, and with the notification of the present Rules, the DIPP has institutionalized a much refined system that will remove previously faced complexities with fewer forms and improved online filing process.
We had earlier released the gist of the new changes introduced last evening, immediately after the release of the notification, but, in view of the plethora of changes made, it is expedient to explain the Rules in greater detail for the general information of our clients and associates.
The major highlights of the Rules are listed below –
- Increase in Statutory Fees:
- Discount for Start-Ups:
- Concession on Online Filing
- Expedited Processing of Applications
- Well-Known Marks
- Video Conferencing
- Reduction in the number of Forms
- E-mail made a part of address for service
- Number of adjournments limited
- Extension for filing evidence in opposition matters removed
- Faster Filing of Counterstatement
India: British onslaught on the Government’s Make in India lion
Remember the very first Independence Day Speech of Prime Minister Narendra Modi? From the ramparts of the Red Fort he had famously announced,
“Let’s resolve to steer the country to one destination. We have it in us to move in that direction. Come, make in India”, “Come, manufacture in India”. Sell in any country of the world but manufacture here. We have got skill, talent, discipline, and determination to do something. We want to give the world a favorable opportunity that come here, “Come, Make in India” and we will say to the world, from electrical to electronics, “Come, Make in India”, from automobiles to agro value addition “Come, Make in India”, paper or plastic, “Come, Make in India”, satellite or submarine “Come, Make in India”. Our country is powerful. Come, I am giving you an invitation.”
And bang! Forty-one days later at Vigyan Bhawan, New Delhi, Modi announced the launch of India’s most ambitious plan to boost manufacturing in the country called, ‘Make in India’, in the presence of business stalwarts like Mukesh Ambani, Cyrus Mistry, Kumar Mangalam Birla and Azim Premji.
To give the initiative a truly symbolic touch, during the event a logo was also released, which is a derivation from India’s national emblem. The wheel denotes the peaceful progress and dynamism – a sign from India’s enlightened past, pointing the way to a vibrant future. The prowling lion stands for strength, courage, tenacity and wisdom – values that are every bit as Indian today as they have ever been.
Thereafter, the Department of Industrial Policy and Promotion (hereinafter referred to as the ‘DIPP’), the body responsible for the overseeing the day to day operations related to this initiative filed for a trademark application in Classes 9,16,18,25,28,35,38,41,42, which got advertised in the Trade Marks Journal dated January 19, 2015.
However, on May 18, 2015, Lonsdale Sports Limited, a boxing, mixed martial arts and clothing brand based out of London, England, filed notices of opposition against the ‘Make in India’ mark, in all the classes. The two marks in question are:
It will be interesting to note further developments in this regard, especially in light of the fact that since its launch the initiative has really instilled a certain sense of confidence in the Indian entrepreneurial ecosystem and has India as a potential manufacturing hub in the eyes of the world. Make in India so far has had over 170 global and Indian manufacturers committing investments worth a total of $90 billion.
The Madrid Protocol: Putting this years’ statistics into perspective
April 14, 2016, marked the quasquicentennial anniversary of the Madrid System of International Trademark Registration, 125 years since its first governing treaty (the Madrid Agreement) was adopted in Madrid on this day in 1891. And for the first time in its history, International Trademark applications crossed 50,000 in a single calendar year. An estimated 52,550 international trademark applications were filed under the WIPO-administered Madrid System in 2016- a growth of 7.2% since 2015, and the fastest since 2010! The system has continued to expand its geographical scope, with Brunei Darussalam being the latest country to have been granted membership, bringing the total number of members to 98. The Madrid System now encompasses an area covering 114 countries in which a member may obtain protection for its trademark.
The statistics coming out of WIPO regarding Madrid System International filings are reflective of larger changes in global business and communication practices. The Madrid System for the International Registration of Marks serves as a solution to traders and businesses looking for a single, over-arching system of trademark protection, without having to painstakingly go through the individual registration procedures of each country. And for an inter-connected digital modern world, the Madrid System has achieved its purpose of being the most convenient as well as cost effective “one-stop shop” for garnering trademark protection. Towards this, the Madrid System itself is evolving to improve and enhance its utility by facilitating access to new and emerging markets. The WIPO website provides access to a host of Madrid System related electronic tools, portals and databases. Starting with electronic access to the International Register through the ROMARIN CD-ROM first released in 1992, E-Services – such as E-Renewal (since 2006), Madrid Real-Time Status (since 2010), Madrid Portfolio Manager (since 2012), and E-Subsequent Designation (since 2014) – have made it increasingly easy for users to track and manage their international trademark registrations. These services have laid the groundwork for a new digital initiative, E-Madrid, focused on the delivery of an enhanced online experience for customers throughout the lifecycle of their mark.
India: “Building Trademarks” and the Right to Click Pictures
The very definition of a trademark under Indian law stresses the need to be “graphically represented”, i.e. in a two-dimensional form. Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as –
“…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”
Such a mark may include: “…a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”
These requirements exist for entirely practical reasons. Representations must clearly demonstrate the nature of the mark and show each feature clearly enough to permit proper examination, and thereafter, must allow the ordinary consumer to comprehend what is being claimed as a trademark. For a non-traditional trademark, such as a colour, shape, sound or smell, the application must include a concise and accurate description of the trademark, whether as a written description, or in the form of a picture. This description is not a mere formality and in fact plays an essential role when considering the role of the mark in trade.
However, with changes in society, technology and the paradigms of representation, what constitutes a trademark has been evolving over the last few decades, and perhaps has even more evolving to do. Another milestone in Indian trademark law was achieved with reputed newspapers recently claiming that Taj Mahal Palace Hotel in Mumbai became the first building in India to achieve trademark protection for its architectural design. While the provision to copyright architectural plans and layouts (which we shall discuss at length subsequently) has been around for quite some time, ‘trademarking ‘buildings and other architectural designs has been a hotly debated topic all around the world, with the principal question being whether they qualify for such protection, and what the granting of such rights to an architectural structure would entail.
India: Court grants damages of INR 5 Lakhs for infringement of the mark ‘Nokia’
The Delhi High Court, in the case of Nokia Corporation & Others vs Movie Express & Others, awarded Nokia Corporation (hereinafter referred to as the Plaintiffs’) damages to the tune of INR 5 Lakhs, payable jointly by MovieExpress and Others (hereinafter referred to as the Defendants), for trying to obtain wrongful advantage of the Plaintiff’s trademark.
In 2011, an in-film branding opportunity in the upcoming movie of Shailendra Cinemas was proposed by the Defendants. The movie was titled ‘Mr. Nokia, Connecting people’, which was communicated through email to the Plaintiffs. The proposal was rejected. In June 2011, they were informed of a press release of ‘Mr. Nokia’ movie under the banner of the Defendants. The movie was referred as ‘Mr. Nokia’ everywhere and was slated to be released in February, 2012. Even the songs were launched. A cease and desist notice was sent to the Defendant. Defendant no. 3 acknowledged the superior trade mark rights of the Plaintiffs’ in the mark NOKIA, and offered to change the title of the movie to Mr. Nav-kia via email. A communication was also sent to the South India Film Chamber of Commerce requiring a confirmation regarding the press release, and no title was registered. The movie was planned for an early release and was still titled ‘Mr. Nokia’. A legal notice was sent to the Defendants, but nothing happened. Thus, a suit was filed against the Defendants on February 3, 2012, and an ex parte ad interim injunction was granted by the Court on February 6, 2012. Right after this the Plaintiffs caught hold of some press releases issued by the Defendant No. 3 stating that the movie is being released on March 7, 2012 under the name Mr. NOOKAYYA. However, the order was deliberately and openly violated by the Defendants. Thus, the Plaintiffs filed an application under Order 39 Rule 2 and under 2A, of the Code of Civil Procedure, 1908, read with Section 12 of the Contempt of Courts Act, 1971. The Court passed a restraining order on March 7, 2012. Despite this, the movie was released under the name Mr. NOOKAYYA on March 8, 2012. Further, even in 2013 and 2014 CDs of the movie were available on various e-commerce portals.
The Court was of the view that the trademark of the Plaintiff has earned a global goodwill and reputation, and therefore, the mark falls under the category of a well-known trademark. Further, talking about the two marks the courts stated that ‘there can be no dispute to the fact that the Defendant’s marks Mr. NOKIA and/or Mr. NO.KEYIA and/or Mr. NAV-KIA and/or NOOKAIAH are deceptively and confusingly similar to the Plaintiffs well-known and registered mark NOKIA’.
The Court came up with a test for two similar marks. It stated that the test is “whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade?.” It also stated that ‘Infringement u/s 29 (1) does not require confusion in the minds of public/ consumers with regard to trade origin. It is enough to show that impugned marks are deceptively similar to the registered marks of Plaintiff, even if, there are added matters to show a different trade origin.’ And in this case since ‘the Plaintiff is the registered proprietor of the mark NOKIA in class 41 under no. 1237567 in relation to entertainment services, the use thereof by the Defendant in relation to such services amounts to infringement under Section 29 (1) of the Trade Marks Act, 1999’.
Thus, a decree of permanent injunction restraining the Defendants from publishing or airing the movie or content carrying expression which is deceptively similar to the mark ‘NOKIA’ was passed and a sum of INR 5 lakh (USD 7754 approx.) as monetary damages were awarded to the Plaintiff.
DU Photocopy Case: Publishers end the protracted legal battle
The Delhi University Photocopy case which began in the year 2012, came to an end when the Oxford University Press, Cambridge University Press, and Taylor and Francis (hereinafter referred to as “Publishers”) withdrew their copyright suit against Delhi University and Rameshwari Photocopier. This battle which continued for 5 years was expected to continue for a few more years. One of the reason of withdrawal could be that a group of Oxford University Students, Alumni and Academicians urged the Publishers to refrain from appealing this progressive decision of the Division Bench so as to make knowledge accessible and affordable for all students.
In addition to withdrawing the case from the Delhi High Court, the Publishers assured that it was not going to take up the issue before any other higher court, such as the Supreme Court of India. The Publishers jointly made a public statement that “We continue to stand by our principles stated throughout this case. We support and seek to enable equitable access to knowledge for students and we understand and endorse the important role that course packs play in the education of students. We support our authors in helping them produce materials of the highest standard and we maintain that copyright law plays an important part in balancing the interests of those creating, curating, and disseminating learning materials with those requiring access to them.
“We look forward to working even more closely with academic institutions, teachers and students to understand and address their needs, while also ensuring that all those who contribute to and improve India’s education system—including authors and publishers—continue to do so for the long term.”
To sum up, this decision of withdrawal is likely to benefit students who cannot afford the original copies of the academic books.
DU Photo Copy Case: IRRO challenges Delhi High Court judgment before the Supreme Court
We had earlier published what was expected to be the final note on the DU Photocopy case, when the Oxford University Press, Cambridge University Press, and Taylor and Francis (hereinafter referred to as “Publishers”) withdrew their copyright suit against Delhi University and Rameshwari Photocopier. One of the many reasons of withdrawal was that a group of Oxford University Students, Alumni and Academicians urged the Publishers to refrain from appealing the progressive decision of the Division Bench so as to make knowledge accessible and affordable for all students.
However, last month, the Indian Reprographic Rights Organization (hereinafter referred to as the ‘IRRO’) filed a Special Leave Petition before the Supreme Court challenging the judgment passed by the Division Bench of the Delhi High Court on December 9, 2016.
On January 30, 2017, the single judge had refused to allow IRRO and the publishers’ associations, FIP and API (who had intervened in the appeal before the Division Bench) to intervene or be impleaded in the remanded proceedings before it, holding that the Division Bench had remanded the suit only for a factual determination as to the purpose of inclusion of the copyrighted works in the course packs and no party except the Plaintiff-Publishers had a say in it. IRRO, FIP and API had, thus, applied to the Division Bench for clarification on the remanded issues. While the matter was pending, in a surprising move, the publishers had withdrawn the suit on March 9, 2017.
The copies of the special leave petition have been served on the Defendants and the matter is expected to come up before the Supreme Court.
Bombay High Court holds that each component of design need not be tested for originality and novelty
In this case, Cello House Hold Products (hereinafter referred to as the ‘Plaintiffs’) filed a suit against Modware India (hereinafter referred to as the ‘Defendants’) in the Bombay High Court seeking an injunction against the Defendants on the grounds of passing off and more importantly, infringement of Design.
The Plaintiffs created a plastic bottle named PURO in May 2016. It got the bottle registered with the Indian Design Office on August 23, 2016, the vide registration number 283345. The Plaintiffs marketed the bottle in a two-toned color and the packaging it used had words like BPA Free, Insulated Water Bottle, Break Free, Leak Proof etc.
The Defendants launched a similar two-toned bottle in January 2017, which it called KUDOZ in the market with similar type of packaging containing the same words. The Plaintiffs came to know about the Defendants bottle KUDOZ in the third week of January 2017 and filed a suit for infringement against them. The Defendants claimed that the design used by Cello for their bottle PURO was a mere way of cobbling together several pre-existing known designs, or mere mosaicking. The suit went to trial on March 30, 2017.
The Court observed that the response submitted by the Defendants that a bottle is a bottle cannot be accepted as it is not possible to accept that no vertical cylindrical fluid container can be novel or original. The Court rejected Modware’s defense of mosaicking and stated that it is not a requirement of the law in infringement or passing off cases in relation to a design that every single aspect must be entirely newly concocted and unknown to the history of mankind. Thereafter, the Court observed that Cello has satisfied all three probanda to induce passing off action namely, (i) reputation and goodwill in the goods; (ii) misrepresentation by the Defendants; and (iii) damages.
The Court concluded that Cello had a good reputation in the market as they were an old company and also the sales turnout of PURO bottle was very high and cello had even advertised their product and the product had achieved a great deal of commercial success.
India: Delhi High Court holds that no Copyright lies with any work registrable under the Designs Act
In the case of Holland Company LP & Anr. vs. S.P. Industries, the Delhi High Court vide its order dated July 27, 2017, disposed off the application filed by the Holland Company LP seeking injunction to restraining S.P. Industries from manufacturing or selling Automatic Twist Lock (hereinafter referred to as “ATL”) and spare parts, as well as to restrain them from reproducing the ATL spare parts in 3-D form, from the 2-D artistic work of Holland Company LP in the form of the industrial drawings.
The present suit was filed by Holland Company LP (hereinafter referred to as the Plaintiff No. 1) who claimed to have a copyright over the industrial drawings of the ATL and spare parts thereto. M/s. Sanrok Enterprises (hereinafter referred to as Plaintiff No. 2) is the exclusive licensee of the Plaintiff no. 1 in India for manufacturing, selling, marketing and servicing Plaintiff no. 1’s goods. The Plaintiffs had previously supplied the drawings of the ATL device and its spare parts to Indian Railways, who thereafter used it on its container flat wagon.
Subsequently, the Eastern Railway, Sealdah Division had floated a tender for carrying out repairs, replacement of spare parts and servicing of the defective parts of the ATL devices. S.P. Industries (hereinafter referred to as the ‘Defendant’) had successfully outbid Plaintiff No. 2, and was awarded the aforesaid contract. The Plaintiffs claimed that the Defendant does not have the requisite know-how to replace and repair the spare parts of the ATL device which was supplied to the Indian Railways by the Plaintiffs, and that since they have artistically created the ATL, they have the right to maintain and sell the spare parts of the same and no other party has any right over the same. Accordingly, the Plaintiffs instituted the suit for permanent injunction before the Delhi High Court.
Vide its order dated May 20, 2014, the Hon’ble High Court of Delhi had dismissed the application filed by the Plaintiffs under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the CPC) seeking permanent injunction against the Defendant. Aggrieved by the said order, the Plaintiff filed an appeal bearing no. CS (COMM) 1419/2016 wherein vide order dated September 12, 2014, the Hon’ble Court was directed to decide the application afresh.
The court after taking into consideration the facts and evidences on record held that “For being entitled to interim injunction under Order 39 Rule 1 and 2, the Plaintiff is required to show a strong prima facie case which means the Plaintiff is required to show that it has a right which needs protection. The Plaintiffs have failed to show any prima facie case in their favour. In the light of the same, the application of the Plaintiffs under Order 39 Rules 1 and 2 CPC stands dismissed.”
India: Delhi High Court on the question of first owner of copyright?
The Delhi High Court in the case of Neetu Singh vs. Rajiv Saumitra, while revisiting Section 17 of the Copyright Act, 1957, granted an interm injunction to Neetu Singh (hereinafter referred to the ‘Plaintiff’) since Rajiv Saumitra and others (hereinafter collectively referred to as the ‘Defendants’) did not place on record any document to show that Neetu Singh was acting as an employee of the Defendants when the literary works were created.
The Plaintiff filed the present suit praying for a decree of permanent injunction restraining the Defendants from publishing, distributing and selling the literary work ‘English for General Competitions’. The Plaintiff is a renowned author engaged in the business of providing services in relation to ‘education, training & educational consultancy in the field of engineering, medical, para-medical, dental, nursing, marketing, management and information technology. Defendant No. 1, Mr. Rajiv Saumitra is the husband of the Plaintiff, and runs and manages Paramount Coaching Centre Private Limited (Defendant No. 2). Defendant No. 3 is the publishing house that prints books and notes for Defendant No.1.
The Plaintiff states that she started an education and training institute titled ‘Paramount Coaching Centre’ in 1982 which earned much goodwill and reputation in the market. Around 2006 the Plaintiff married Defendant No.1, who was a teacher at the said coaching centre. In order to expand the business, the Plaintiff and Defendant No.1 formed and incorporated a company in the name and style of ‘Paramount Coaching Centre Pvt. Ltd’ on November, 30, 2009, with Plaintiff and Defendant No.1 as its Directors. During the progress as a trainer/ academician/ educational consultant, the Plaintiff decided to write books on various subjects so as to bridge the gap between the instructional and teaching material available in the market and the actual needs of the students for understanding the concepts in the relevant subjects including those required for success in competitive examinations. After working and researching on various subjects, compiling educational data, question banks along with answers and from her own skill, labour and hard work, the Plaintiff wrote and authored several books under the titles Ënglish for General Competitions-From Plinth to Paramount Vol-I, Rasayan Vigyan- Samanya Pratiyogita Hetu, Jeev Vigyan-Samanya Pratiyogita Hetu, Bhartiya Arthvyavastha-Samanya Pratiyogita Hetu, etc.
While referring to Section 17 of the Copyright Act, 1957, the Court said that save and except proviso ‘c’ where a work is made in the course of the author’s employment under a contract of service or apprenticeship to which clause ‘a’ or clause ‘b’ does not apply the employer shall, “in the absence of any agreement to the contrary” be the first owner of the copyright therein.
However, the Court noted that the Defendants have not placed on record any material to show that the literary work was authored as a part of the duties and obligations of a Director of Defendant No.2. In this regard neither any agreement nor the articles or memorandum of association of the company has been placed on record. In the absence of any terms and condition describing that the literary work was also a part of the duties and obligations of the Plaintiff in her capacity as a Director of the Defendant No.2. Thus, Hon’ble Ms. Justice Mukta Gupta granted an interim injunction in favor of the Plaintiff and against the Defendants.
India: Copyright Office gets digitized
In an attempt to make India digitized and improving transparency, the Copyright Office would be publishing, on its website, applications for registration, particulars of work entered under section 45, correction of every entry made in the Register under section 49 and rectification order under section 50 of the Copyright Act, 1957.
The online availability of the aforesaid information in respect of Copyright applications would provide opportunity to the public at large to view such information which was earlier viewable only on inspection of register at the Copyright Office and thereby improve transparency.
Through a public notice the Copyright Office stated that every publication shall be treated as a notice to every person who claims or has interest in the subject matter of Copyright or has dispute regarding the said application and the said application would be examined if no objection is received within 30 days.
The public notice further stated that, if no work or documents are received after issuance of notice then such application would be treated as abandoned.
The Copyright Office would be publishing the list of such applications on first Friday of every month.
India: Calcutta High Court decides when a Design can be stated to be anticipated by prior known designs
In the case of T.K Shawal Industries Pvt. Ltd. vs. The Controller Of Patents And Designs & Ors., the Calcutta High Court was approached in appeal by T.K Shawal Industries Pvt. Ltd. (hereinafter referred to as the ‘Appellant’) against the order of the Controller (hereinafter referred to as the ‘Defendants’) dated January 20, 2016.
Kay Cee Exports, had registered a scarf design under Class 02-05 bearing number 252082 dated March 5, 2013 with the Indian Patent Office. The novelty was claimed to be residing in the surface pattern of the scarf. The Controller after verification and satisfaction issued a certificate of registration of the aforesaid design.
A petition for cancellation of the registered design No. 252082, for ‘scarf’ was filed on February 12, 2014 under Section 19 of the Designs Act, 2000 (hereinafter referred to as the ‘Act’) by the Appellant.
Further, on January 20, 2016, the Deputy Controller had rejected the cancellation petition of the registered design.
Justice Soumen Sen of the Calcutta High Court heard the matter and observed that the invoices and shipment details attached by the Appellant were pertaining to sale of shawls which is a different article from scarfs and fall under different class of goods under the Design Act, 2000. Therefore, the cancellation petition was dismissed.
India: In Defence of AIB’s Game of Thrones Memes: When can Satire/Critique Act as a Suitable Defence?
In an article posted on Bar & Bench the authors raised an interesting facet of trademark law, one that has been the subject of controversy for many years now.
The popular television show, Game of Thrones has become a worldwide cultural phenomenon, ever since it started airing as a TV series on HBO in 2011. With such collective recognition and recollection of the show’s characters and themes, many fans choose to share their admiration of the show by posting derivative content online.
The Indian comedy group All India Bakchod, popularly referred to as AIB decided to capitalize on the popularity of the show and created a number of amusing memes out of stills from the show. It juxtaposed these stills with humorous captions or superimposed them with advertising taglines of completely unrelated products to generate humour, which it then shared through its various social media platforms.
Of course, AIB is hardly the first one to do this. There is quite a sub-culture on the Internet for fans of not only Game of Thrones, but various other film, television or literary franchises to express their talent at humour alongside their admiration for their preferred “fandom” by creating and sharing jokes or amusing observations in the form of memes. There are Facebook pages, YouTube channels and other social media platforms entirely devoted to this enterprise, in fact! For a look at AIB’s efforts,
There is no denying that HBO, including its affiliates and subsidiaries, is the rightful holder of copyrights in the show Game of Thrones. However, a problem that has always plagued fans of such properties is: can they not express their love for their favourite show, movie or comic book without being ensnared in the web of potential IP infringement?
It is with regard to the criterion that defence in determining whether a fan-derivative work is harmless is that it should not be for profit the controversy appears to be raging surrounding AIB’s use of Game of Thrones stills for comedic effect. As can be seen from the series of memes, they have actually been constructed towards a promotional purpose- to announce the release of one of their YouTube videos. Therefore, under the circumstances, it is being argued that AIB may very well be liable for intentional copyright infringement.
Most likely because in pandering to the show’s already devoted fan-base, they aren’t, in actuality, causing the network any (financial) harm. In fact, as much as these renditions advertise third party products, they are propagating the popularity of Game of Thrones even further. A unitiated may see such a meme/ad and be curious to find out about the show to which it refers. Thus, in using referential context, the works, whether intentionally humorous, sarcastic or critical, benefit HBO’s promotional efforts for its show as much as the third party’s. It’s a symbiotic relation.
AIB is unlikely to face consequences for its memes, despite juxtaposing unrelated subject matter therein. And, keeping in mind the vast quantity of similar material spread throughout the Web, it is unlikely the show’s rightholders will even be inclined to take such a step. After all, practicality dictates that you don’t fix something unless its broke, and copyright infringement cannot exist unless the copyright holder is intent on enforcing her/his exclusive rights. In the instant case, by allowing a little laxity, HBO is only allowing the fans of Game of Thrones to have a little creative fun, while quietly reaping the benefit of its popular spread.
WIPO’s New cutting-edge Translation Tool Fosters Access to Information on Patented Inventions
On January 5, 2017, the World Intellectual Property Organization (WIPO) announced that they have developed a new translation tool for Patents document, empowering innovators around the world by providing them with high-quality services which are not yet available for accessing information on new technologies.
Although it is not a new translation tool, there is a perceptible improvement in the accuracy and quality of the translation produced by it, and is much better than the previous one available. It is enhanced due to the use of emerging neural machine translation technology which is based upon “huge neural network models that ‘learn’ from previously translated sentences”. It is based on the following new features:
- Converts one language to another in a common language.
- It is an instant translation tool, which is specially designed for patent documents.
- It is free of charge and available through the “patent scope” database.
“WIPO Translate aim’s to remove the barrier to have an access on patented information by enabling free and instant translation of patent documents into a common language.”
India: Cadila Healthcare settles patent litigation related to Livalo tablets
On January 17, 2017, Cadila Healthcare declared that it has settled all outstanding patent infringement litigation filed by Kowa Pharmaceuticals and Nissan Chemical regarding the cholesterol drug Livalo (pitavastatin calcium).
India’s major drug Firm Cadila Healthcare and its subsidiary Zydus Pharmaceutical (USA) Inc., has finalized an agreement with Kowa Company, Kowa Pharmaceutical American Inc. and Nissan Chemical Industries Ltd.
Under the terms of finalized agreement, Kowa and Nissan grants Cadila’s Zydus Pharmaceuticals unit a license to market a generic version of Livalo beginning from May 2, 2023, or earlier under certain circumstances.
Livalo Tablets helps to reduce the following:
- Total cholesterol
- Low-density lipoprotein cholesterol
- Apo-lipoprotein B
- To increase HDL-C in adult patients with primary hyperlipidemia
These tablets are indicated as an adjunctive therapy to reduce elevated total cholesterol, low-density lipoprotein cholesterol, apolipoprotein B, triglycerides and to increase HDL-C in adult patients with primary hyperlipidemia or mixed dyslipidemia.
The Government provides support for International Patent Protection for MSMEs
In a bid to boost innovations from budding entrepreneurs the Department of Electronics & Information Technology (hereinafter referred to as ‘DeitY’) has rolled out SIP-EIT, a Scheme to Support International Patent Protection in Electronics and IT for Micro, Small and Medium Enterprises (hereinafter referred to as ‘MSMEs’) and Technology Start up Units. SIP-EIT will provide financial support for international patent filing to encourage innovation, recognize the value and capabilities of global IP and leverage the growth opportunities in The Information Communication Technology & Electronics sector (hereinafter referred to as the ‘ICTE sector’).
Reimbursement will be limited to a total of INR 15 Lakhs (US $ 23350 approx.) per invention or 50% of the total expenses incurred in filing and processing of patent application upto grant whichever is lesser.
India: Substantial amendments for Computer- Related Inventions (CRIs) – “Novel Hardware” provision waived off
The journey pertaining to Guidelines for Examination of Computer Related Inventions (herein CRI) has been both time-consuming as well as riddled with lot of amendments. In light of several remarks and comments from numerous stakeholder’s and further sessions with the Indian Patent Office, revised guidelines pertaining to examination of CRIs has been published on the 30th of June, 2017 which are breather after a long dry spell.
Item 1.3 of the amended guidelines states:
“The objective is to bring out clarity in terms of exclusions under Section 3(k) to allow eligible applications of patents relating to CRIs be examined speedily”.
The major highlight in the guidelines is deletion of the concept of “novel hardware”.
Summarized below are several revisions executed by the Indian Patent Office for Computer Related Inventions in several categories.
- Test of Patentability
- Sufficiency of Disclosure
- The Notoroius – Section 3(k)
It is believed that the revised guidelines implemented will be useful to applicants and patent practitioners alike and lead to the acceptance of a wider range of patents in the field of CRIs. On a wider spectrum, there may also be an acute decrease in the number of patent litigation stalling the progress of many companies that have their base in software. As a whole after a long wait and patience, theses improvisations have brought in a ‘NEW DAY’ for the software fraternity.
India: Rasgulla originated in West Bengal, rules the country’s GI authorities
On November 14, 2017, the Indian State of West Bengal received the Geographical Indication (GI) certification for Rasgulla after a 26 months legal tussle with the neighboring state of Orissa.
In 2015, the state of Odisha declared “Rosogola Diwas” to celebrate the Odia origin of the sweet. West Bengal State Food Processing and Horticulture Development Corporation Limited legally countered the statement by filing a claim for a GI tag at the Office of the Controller General of Patents, Designs & Trademark (hereinafter referred to as the ‘CGPDTM’) for the sweet claiming that the dish was originated by the renowned sweet-maker Nobin Chandra Das in the year 1868. Thereafter, Odisha also asserted to be the origin of the sweet claiming that it was offered to Lord Jagannath.
A comparative study was conducted between the Banglar Rasogolla and other sweets of the same kind. Tests were done based on the color, texture, taste, moisture, etc., which subsequently proved the uniqueness of the Rasogolla. Scientific and microbiological analyses too were conducted which yielded the same result.
COFFEE WITH HR
IP4Kids – a CSR initiative of S.S. Rana & Co., participates at the Innovation Festival 2017
The National Science Centre, Delhi, recently organized the Innovation Festival 2017, at Pragati Maidan, New Delhi from January 21-24. The event was aimed to foster a passion and aptitude for science and technology and to provide a unique platform to creative innovators. The Festival comprised of an Innovation Fair providing people with an opportunity to showcase the most innovative products made by them in the past. Hobbyist, enthusiasts, students, amateurs, as well as professionals of all ages and gender participated in the Festival.
S.S. Rana & Co., also participated in the Innovation Festival through its CSR initiative “IP4Kids.in”. In this sensitization program, the firms IP4Kids team interacted with kids, teachers, and young grassroots innovators. Around 500 people visited the stall put up by our firm and a special session was organized by the NSC where volunteers from the firm contributed and delivered a presentation on the “Importance of Intellectual Property”. A very interactive and positive response was received from all the participants and the visitors.
INDIA: S.S. Rana’s Fahimuddin part of the victorious
Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship
Fahimuddin, an employee of S.S. Rana & Co., was part of the victorious Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship hosted by Bangladesh. Other than the hosts Sri Lanka, Nepal, India and Pakistan were the other sides, who competed for the championship.
We at S.S. Rana & Co., are committed to our Equal Opportunity Policy and to provide work environment free of discrimination based on religion, belief, or any other physical or sensory disability. Mr. Fahimuddin has been working with the firm for almost 3 years now and has been part of the firm’s cricket team in various corporate cricket matches.
S.S. Rana & Co, is now Great Place to Work Certified
S.S. Rana & Co., became Great Place to Work-Certified™ in May 2017, as we won the Great Places to Work Certification Program. Great Place to Work Certification Program is the first step for an organization in its journey to build a High-Trust, High-Performance Culture and our organization was able to successfully accomplish this breakthrough. It was an honor to assist each and every one in our journey towards building and sustaining a High-Trust, High-Performance Culture.
The organization hopes to make great strides in surpassing our own culture assessment results and keep raising the bar for ourselves in the years to come.
S.S. Rana & Co., hosts a Yoga Session during INTA’s 139th Annual Meet
S.S. Rana & Co., kick-started INTA’s 139th Annual Meeting in Barcelona by hosting a Yoga Session in association with Jiva Mukti Yoga, Barcelona.
We thank all the attendees for choosing our session to begin their yogic journey of health, serenity and fitness. It was our mission in association with Jiva Mukti Yoga, to provide you with the highest quality yoga instruction from experienced and well known trainers. The beautiful studio with soothing light glowing through its windows coupled with the peaceful energy of our friendly trainers inspired relaxation and the unraveling of worries, and offered a complete schedule that strengthened the body, mind and spirit.
On behalf of the entire team at S.S. Rana & Co., we would like to take this opportunity to sincerely thank all the attendees for supporting us in this initiative and participating wholeheartedly. We home to continue this session next year in seattle.