Sony Play Station 5’s name has been Trademarked in India, except it wasn’t Sony who is the Applicant

When gamers around the world were eagerly awaiting the release of Sony’s PlayStation 5 console, Indian consumers got the news that it’s launch in India may be delayed. The reason for this could be the fact that an individual, Mr. Hitesh Aswani, was the first to have applied for a trademark registration for the name PS5 at the Indian IP Office on 29 October 2019, even before Sony. This news reminds us of of the importance of registering trademarks at the earliest in order to prevent the risk of squatting. This becomes even more pertinent in the light that India allows trademark applications to be filed on a ‘proposed to be used’ basis. In this particular case, however, we believe that Sony could have been a little more agile in filing its trademark in India. Needless to say, since India is a first to use jurisdiction, Sony is certain to get their trademark filed, but such a glitch could have been avoided.

United States Patent and Trademark Office v. Booking.com 591 U.S 140 S. Ct. 2298

The United States Supreme Court (SCOTUS), in the Booking.com case held that under certain conditions, generic.com domain name was eligible to acquire a trademark registration. Justice Ruth Bader Ginsburg in the 8-1 majority judgement held that since the lower court identified that consumers did not observe nor viewed the term “BOOKING.COM” to attach itself to the meaning of online hotel-reservation services as a class, hence it was not a generic term and thus, was eligible for seeking federal trademark protection. A term that is styled as “generic (dot)com”- is known to be a generic name in a class of goods or services; hence, making it ineligible to seek federal trademark protection. The Court also noted that by simply adding “.com” to a name of a company is different from that of adding “company” since at one time, only one company can attain a specific internet domain name, thus, even a “generic (dot) com” term was in a position to convey any link with a specific website. Domain names aim to single headedly identify and distinguish sites, making a site unique, thus, there cannot exist an overlap in domain names which use different suffixes. A term that is styled “generic.com” is a generic name and can be used for a class of goods or service only if the term has identified sufficient recognition or meaning to the consumers. By granting limited protection to generic.com domain names, SCOTUS leaves us with an interesting thought to ponder on which being that if there exists a dispute between a “.com” domain name and a “.in” domain name, will it be then possible for a generic.com trademark name to block the registration of a generic.in domain name? The answer varies from case to case basis on the fact that a generic.com trademark will ultimately confer the entire monopoly on any one domain suffix along with the combination of the term “generic”, but for it to be recognized as a trademark depends entirely on two grounds- i)What the consumers perceive that name to be and ii) If the name has acquired sufficient distinctiveness.

Anhueser Busch Llc V Rishav Sharma & Ors. [Delhi High Court, CS(Comm) 288/2020]

In the instant case, Budweiser (“Plaintiff”), the brand known for its flavourful American styled lager filed for a suit against Rishav Sharma (“Defendant/s”) before the Delhi High Court on grounds of trademark infringement including tarnishment and dilution of their goodwill and reputation, unfair competition as well as commercial criticisms and disparagement. The dispute arose when the Defendant Nos. 1, 2 & 3 who ran a satirical website known by the name of www.fauxy.com uploaded a video on their social media handles wherein the video depicted a graphical sketch in the form of a news article which tested the authenticity of the claim that the Plaintiff’s beer bottles constituted of urine. The Plaintiff in return filed a suit to protect its intellectual property rights and their well known name which was being damaged by the video that was now viral because of the Defendants actions on the fake news instilling that the Plaintiff’s employees were urinating in the beer before selling it to their customers. The questions that were posed to the Court were with regards to whether the video in question was simply a satire and if it could be termed as defamatory and if it amounted to any commercial disparagement? The Court in this case favoured the Plaintiffs and restrained the Defendants from any further promotion of the video and also prohibited the distribution of such video and related social media posts and held that the balance of convenience was in favour of Budweiser. The criticism that arises from this judgement relates to the fact that it places a barrier on exercise of freedom of expression at the cost of a well known party’s reputation. This decision poses a very interesting question as to what should be the balance one should strike between protecting This case is especially important for influencers and bloggers today, and it is important for them to ensure the information that theydeliver to their audience and viewers via social media posts and other platforms do not end up tarnishing the reputation of brands.

Electronics vs Sujata Home Appliances (P) Ltd. & [Delhi High Court, CS (COMM) 60/2020]

The Delhi High Court amended an ex-parte interim injunction order when it came to the Courts knowledge that the Plaintiffs concealed material and relevant facts during the course of the hearing. The previous order placed an estoppel on Sujata Electronics, its manufacturers as well as sellers (Defendant no. 1,2,4 and 3 respectively) from manufacturing, selling, importing any commodities under the name of the mark “SUJATA”. The cause of passing the initial order was because the Plaintiffs (Mittal Electronics) gave an impression that they held exclusive proprietary rights over the mark under other classes. However, on examining, it was found that the Plaintiffs concealed the fact that Defendant no. 1 also owned the mark of SUJATA under class 11. The recent order which modified the injunction- resulted in allowing the Defendants to continue their use in sale and manufacturing of water filters, water purifiers and RO systems constituting the mark of SUJATA while simultaneously prohibiting them from the use of the trademark SUJATA on any other goods. The Delhi High Court in this case reflected on ‘Suppression of Material Facts’ by the Plaintiff and analysed the ‘Clean Hands Doctrine’ wherein the Court relied on Kishore Samrite v. State of Uttar Pradesh, (2013) 2 SCC 398, to remind litigants of their obligations while approaching the Court and stated “the people, who approach the court for relief on an ex parte statement, are under a contract with the court that they would state the whole case fully and fairly to the court and where the litigant has broken such faith, the discretion of the court cannot be exercise in favour of such a litigant.”

Hubbard Media Group, LLC v. Instagram, Inc. (0:20-cv-01750), District Court, D. Minnesota

In an on-going matter, Reelz Cable Network accused Facebook Inc’s Instagram for trademark infrigngement over the name of its new feature called “Reels” that was initially designed and incorporated to compete with TikTok which became viral in the first few minutes of it being launched and exploded with popularity. Reelz filed a trademark infringement suit on grounds of trademark dilution and unfair competition and several other state law claims. They are seeking an injunction banning Instagram and facebook from using the specific feature on their social media platform.

Inter Ikea Systems Bv. Vs. Viki Furniture [Delhi High Court, CS(COMM) 369/2020]

Delhi High Court in this case granted an award of temporary injunction against the Viki Furniture (“Defendant”) and restrained them from future infringement of Plaintiff’s copyright. The Defendants were found indulging in false advertising by using the Plaintiffs goods as theirs to promote and kickstart sales on their website. The Court observed this to be trademark infringement since the Defendants were passing off their goods as that of Plaintiffs. The Court in this case prohibited the Defendants from passing off their goods as that of the plaintiffs on their ecommerce website by the name www.vikifurniture .com as well as other listing of products on other ecommerce websites and portals including flipkart since it could lead to possible mishaps making the Plaintiffs and other websites like flipkart liable if consumers perceived the products on the Defendants website to be that of Plaintiffs which was not the case in reality.

Adidas India Marketing Ltd V. Kumar Garments 27 August, 2020 [TM No. 23/2018, Delhi District Court ]

The Delhi District Court in the instant case granted permanent injunction against Kumar Garments who was found indulging in the sale of counterfeit apparels that constituted the mark bearing “ADDIDAS” along with its logo. Addidas contended that the marks used by the defendants were identical to that of the plaintiff who is engaged in the business of manufacturing and selling of sports apparels thus causing confusion making the mark deceptively similar to that of Addidas which is a registered trademark. The Court granted a decision in favour of the Plaintiff and awarded permanent injunction against the Defendant from passing off its goods as that of Addidas and also slammed punitive damages of Rs 5,00,000 with interest @12%p.a for the lost suffered owing to irreparable losses due to the sale of the counterfeit commodities.

Designarch Consultants v Jumeriah Beach Resort LLC [CS(COMM) 366/2020, Delhi High Court]

In this case , the Delhi High Court granted an ex parte ad interim injunction by placing a restraining order on the Defendants (Jumeriah Beach Resort LLC) from raising any threat to the Plaintiff with regards to their registered mark/logo or designs of the Plaintiff. The case concerned with infringement of the mark BURJ AL ARAB by Plaintiff’s BURJNOIDA trademark wherein the Defendants, a luxury hotel in Dubai (Jumerirah) constructed its hotel in shape of a sail, whereas BURJ NOIDA is an upcoming development and construction project that has trademarked “BURJ NOIDA” in class 37. Jumeriah, in this case possessed no trademark registration in class 37 but had itself registered in other classes such as 35,36,39,31,42. It was found that Jumeriah did not possess any exclusive rights over a common word such as “BURJ” nor was the sail-shaped design of the building in question unique. It was also observed that the logo in which Jumeriah claimed rights over were different from the actual logo that was used for its luxury resort. The Court directed the Defendant to give a minimum of 7 days prior notice to the Plaintiff before initiating any legal proceedings with regards to infringement for passing off the mark/logo or shape of the Defendants marks by the Plaintiff.

Schenzen Tencent v. Shanghai Yinxun, Yue 0305 Min Chu No. 14010

In a landmark judgement of the Chinese court, it was held that Artificial Intelligence generated work would be subject matter for a literary work that is eligible for protection under Copyright Act. This case is especially critical since it highlights disparities created on an international level concerning the issue wherein certain countries award copyright protection to Artificial Intelliegence or computer generated work while on the other hand, certain counties like India require human involvement as a necessary criteria for gaining protection. The Indian Copyright Act, 1957, allows authorship of a computer-generated work to a person who creates such an entity thereby according protection to the ultimate creator of the Artificial Intelligence who then creates the work. This judgement has left countries to examine and scrutinise existing copyright laws on the grounds of permitting copyright protection to Artificial Intelligence generated works and the question of rights and liabilities that arises thereon.

Disney Enterprises Inc and Ors Vs. Kimcartoonto, [Delhi High Court, CS(COMM) 275/2020]

Delhi High Court in the instant case restrained the Defendants from hosting, streamlining, distributing and reproducing any work to the public via their website in which the Plaintiffs owned copyright. The Defendants in the present case were indulging in facilitation of free access to pirated content by streaming original copyrighted content owned and created by the Plaintiff without having acquired any prior consent or authorization. The Court after having reviewed the website as well as the content made available on the platform, observed that the Defendants were liable for violation of Plaintiff’s copyright and granted an interim injunction to ensure protection of the original content of the Plaintiffs.

Microsoft Corporation & Ors V. Satveer Gaur & Ors, [Delhi High Court. CS (COMM) 1324/2016, CCP (O) 134/2010 and IA 2667/2016]

In the instant case, the Delhi High Court granted permanent injunction against the Defendants as well as monetary compensation. The dispute arose when the Plaintiffs accused the Defendants of copyright infringement for committing copyright piracy and sale of pirated versions of the Plaintiff’s software programs by copying the packaging identical to that of the Plaintiffs in order to sell the software products. Defendant no. 2 in the instant case allegedly copied the Plaintiffs software programs without obtaining prior permission or the necessary licences from the Plaintiffs. It was held that such an act of unauthorized copying, duplication and sale of software programs of the Plaintiffs resulted in severe damage to their goodwill and reputation acquired over the years of service as well as monetary losses suffered by the business of the Plaintiff. The court granted in favour of the plaintiffs by awarding permanent injunction to the defendants and prohibited them from indulging in such violation and passing off.

I.P News from India and Around the World-

• Tea Board of India placed a warning of legal action on those tea gardens in the Hills of Darjeeling that indulge in processing and sale of tea leaves from outside Darjeeling and labelling them as the GI- tagged Darjeeling Tea.
• UKIPO in a case of registration denied Prince Charles’ former butler from seeking registration over the words “THE ROYAL BUTLER” on grounds that it was likely to generate confusion and association with the royal patronage.
• U.S Postal Service has opted for a patent in order to ensure a safe and secure mail-in polling service during the pandemic by using blockchain technology.
• VNG, A Vietnamese technology firm has filed a suit for copyright infringement against TikTok for illegally using their songs without obtaining necessary licences.
• In a recent major update, Google images now showcases a feature “Licensable”, a badge that will help identify and distinguish consumers from understanding which image is available for free use and also allows the rightful holders to mention the specific licencing terms and conditions for the usage of the pictures.
• In light of the COVID-19 pandemic, the Famous fast food joint KFC has temporarily stopped using its famous iconic jingle “Its Finger Lickin’ Good’ considering it would encourage practices that are likely to go against the current hygiene norms.

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This news letter has been published in lexaffairs.com