August 10, 2021
IPR Newsletter- June - July 2021
Two different patents cannot be awarded to same patent: Delhi High Court
A Division Bench of the Delhi High Court, in AstraZeneca Ab v. Intas Pharmaceuticals Ltd., dismissed the appeals made by the appellant against the orders of Single Judge Bench, where an injunction was denied. Astrazeneca made nine pleas seeking injunction against the sale of ‘Dapagliflozin’ (DAPA), an anti-diabetes drug manufactured by generic pharma companies like Torrent, USV, Micro Labs, Zydus, and others. The Court dismissed the appellant’s plea by stating that two patents cannot be granted for one invention- one for genus and the other for species. It held that any such plea would strike the very root of the appellants’ claim and disentitle them from any interim relief.
K S & Co Comments
The Delhi High Court has adjudicated a matter where AstraZenaca pleaded the single judge bench to grant a patent to their medicine. The law states that you need to show a substantial increase in the utility of the drug and only then a new patent can be granted. However, the appellant failed to show the same
RED FM 93.5 gets sued by SONY for playing copyrighted songs without compliance
In Sony Music Entertainment India Pvt. Ltd. v. KAL Radio Ltd., Sony alleged that KAL was broadcasting its copyrighted songs on its radio channels without having complied with Section 31 of the Copyright Act, 1957 that requires obtaining a mandatory statutory license. The Bombay High Court granted ad interim relief to Sony, by directing KAL Radio to not broadcast any songs copyrighted by Sony Music Entertainment India Pvt. Ltd. on its radio channels without complying with Section 31 of the Act.
K S & Co Comments:
Section 31 of the Copyright Act, 1957 makes it mandatory for entities to take prior permission from the owners of the copyright before using the copyrighted content. Sony Music Entertainment India Pvt. Ltd. is well within their rights to get a judgement in their favour. This is not the first time that a radio channel has breached this provision of law.
FACEBOOK & INSTAGRAM asked to take-down videos of late Kuchipudi Maestro
In Sweety Priyanka Vempati Ravi Shankar v. Facebook India Online Service Pvt. Ltd., the District Court of Thiruvananthapuram, Kerala granted interim relief to the plaintiff and directed Facebook and Instagram along with several unauthorized persons to take down videos using the original sound recordings of the late Kuchipudi maestro Shri Vempati Ravi Shankar as his works were protected by a copyright and no license towards their authorized use was granted by Priyanka, who is the legal owner of those copyrights.
K S & Co Comments :
A welcome judgement that reinstates the personality rights even after the death of the dancer. There are plenty of such videos that are circulated on social media platforms like Facebook and Instagram. These videos are not paid too much heed and they know very little about the rights of the author. It is an imperative move by the plaintiff which is appreciated by the district court.
Sony was denied relief due to difference in services and also ordered costs of Rs. 25,000
In Sony Corporation v. M/s. Sony Tours & Travels, the Bangalore District Court held that the defendant company was running a small tours and travel business in a compact place while the plaintiff corporation is engaged in manufacture of electronic goods, thus, the nature of their businesses are completely different and the plaintiff has failed to show any irreparable injury or detriment to the reputation of its mark ‘SONY’ caused due the defendant’s business.
Furter, the court observed that “no average man of ordinary prudence can even think of connecting the same with the plaintiff’s manufacturing business. It is difficult to imagine that an average man of ordinary prudence would associate the goods of the plaintiff’s Sony Corporation to that of the business of the defendant. There was hardly any scope for the plaintiff to file this suit”.
Lastly, the plaintiff did not explain the delay of 16 years in filing the suit from the issuance of notice, as a result, the Court dismissed the plaintiff’s suit with cost of Rs.25,000 which is to be deposited within three months from the date of judgement failing which such cost shall carry an interest at the rate of 10% per annum.
K S & Co Comment:
This judgement puts focus on two very important aspects of enforcement. One should not oppose merely because the marks are same / similar. It is also equally important to compare the goods and analyse how different the goods are from that of the infringer (if at all). Secondly, delay in enforcing your rights may also land you up in a bit of a pile because you cannot be sleeping on your rights.
Delhi High Court denied relief to Sushant Singh Rajput’s father
The Delhi High Court in Krishna Kishore Singh v. Sarla A Saraogi & Ors., refused to order an interim injunction restraining the released of a film that is allegedly based on the life of the plaintiff’s son, the late Sushant Singh Rajput. The case surrounded several issues such as the infringement of the late actor’s celebrity rights, and a violation of his family’s right to privacy.
K S & Co Comment:
In a judgement that may be appealed, the personality rights quotient is given another perspective. The judgement allows the producers to release the film made on the life of the plaintiff’s late son, Sushant Singh Rajput. While the court has time and again acknowledged the personality rights in the persons who has passed away, the court in this matter did not deem fit to restrict the defendant. It will be interesting to see what the apex court has to opine about this issue, if an appeal is made in this matter.
Amazon launches IP Accelerator programme in India
Amazon announces the launch of its IP Accelerator programme to provide sellers and businesses, who have a strong brand, with access to services from IP experts in law firms. Through this programme, small to medium businesses and their owners can engage with the law firms of their choice who will help them to secure trademarks, protect their brands, and tackle infringement on Amazon websites not only in India but globally. The IP Accelerator was launched in the US in 2019, and has since then expanded to Europe, Japan, Canada, Mexico, and now India.
K S & Co Comments:
This is the very need of the hour. In the days where counterfeiting is at a high, Amazon has come up with a system where the brand owners may register their registered trademarks with Amazon and secure its brands over its platform. This will help tackle the infringement that is caused on their Portal.
Google Removes Bolo Indya from its PlayStore over Copyright Complaint
Google removed media app Bolo Indya from its PlayStore over a copyright complaint made by music label T-Series. T-Series had served a copyright infringement notice to several social media and video sharing platforms in the past year amounting to a total compensation of Rs 3.5 Crore (INR) in damages for unauthorised use of T-Series’ copyrighted content (songs). While other companies could settle the matter with T-Series, Bolo Indya couldn’t reach any amicable terms with the music company.
Therefore, T-Series wrote to Google, under its applicable by-laws, to take down Bolo Indya from their PlayStore as an infringing app that continues to infringe T-Series’ copyrights by using/storing their music in its library without prior permission.
K S & Co Comment:
It has been seen in the past that T-Series is never shy to take actions against infringers of their copyrights (songs). While all the other companies reached out to T-Series and settled the matter amicably, BOLO INDYA could not reach a conclusion and as a result got de-listed from the Google Play Store. This shows how important a letter is and it is also important to note that while you may be amenable to a compromise, it is not always enough.
The Dispovan v. Dipcovan trademark dispute ends amicably
It is reported that the trademark dispute between Hindustan Syringes & Medical Devices (Dispovan) and Vanguard Diagnostics’ (Dipcovan- antibody detection kit). Although, both products were different in nature, their classification as medical devices and a similar brand sounding may result in confusion at the marketplace. Accordingly, Vanguard Diagnostics has withdrawn its application from the Trade Marks registry. The product was set to be commercially launched by Vanguard Diagnostics during the first week of June 2021.
K S & Co Comment:
This is a classic example of why a trademark search is mandatory before you start marketing your brand. While Vanguard Diagnostics will be able to launch the same products with a different name on it, it will not be able to use the mark that they were marketing since so long. It will also mean that there will be a huge chunk of their marketing budget that will lose its cause.
Delhi High Court ordered Amazon & Flipkart to de-list Baghla Sanitaryware off its platforms
The Delhi High Court in Ttk Prestige Limited v. Baghla Sanitaryware Private, issued an interim injunction order against the defendants and its associates, from selling, offering for sale and advertising in any manner including on the internet and e-commerce platforms like ‘www.amazon.com’ and ‘www.flipkart.com’, directly or indirectly dealing in sanitaryware, bath and kitchen fittings, kitchenware, cookware and/or cognate and allied or related goods under the logo of the Plaintiff. It further directed the e-commerce platforms, Flipkart and Amazon, to de-link the products of the Defendants that are bearing the Plaintiff’s logo or any logo that is deceptively similar or is associated with the Plaintiff.
K S & Co Comment:
We have often seen counterfeits being sold on different online portals. Amazon has recently begun its Brand Registration for its sellers wherein the sellers who have secured a trademark registration may register their trademarks with Amazon and if there are any infringements, the owners are notified and that seller is de-listed from Amazon. While the defendant was de-listed from the two portals, it does not ensure that it will not make a separate account and list its good again.
PepsiCo v. Parle Agro Trademark Dispute over Tagline ‘For the Bold’
PepsiCo had filed a trademark infringement case against Parle Agro over the unauthorised use of the tagline ‘For the Bold’ by Parle. Parle Agro had used the tag to promote its newly launched beverage B Fizz. The said tagline is a globally registered mark for the Doritos Nacho Chips brand which PepsiCo is manufacturing in India.
The petition was filed by PepsiCo before the Delhi High Court where they pleaded the court to restrain the Mumbai-based beverages company from “infringement, passing-off, dilution and unfair trade competition”, and sought around Rs 2 crore in damages.
K S & Co Comment:
Tag lines are very important in any consumer centric good. Tag lines sometimes become even more important and relatable assets for the consumers than the trademark itself. Hence, it is imperative to register for your tag line along with promoting it in the market.
International Developments
Miley Cyrus’s Name is now a Trademark in Europe
American Pop Star, Miley Cyrus has won the right to use her name as a trademark on a wide range of products in the European Union after the CJEU annulled the EUIPO’s decision to restrict the scope of her brand. “The mark applied for, MILEY CYRUS, has a clear and specific semantic content for the relevant public given that it refers to a public figure of international reputation, known by most well-informed, reasonably observant and circumspect persons…,” the CJEU said.
K S & Co Comment:
Ever wondered how to create a brand of your name. The American authority has recently allowed Miley Cyrus to get a trademark for her name, but the essential point to remember is that there is a specific semantic content present in the mark which is distinguishable. The basic requirement to check whether the mark is applicable for registration is to check on the use of the word and the general understanding of that word by a prudent person.
EU General Court rules that the Fizzy Sound after Opening a Drinks Can is not a Trademark
The European General Court decided that the sound of a drinks can opening followed by several seconds of fizzing cannot be a trademark. This order is a result of an appeal, against a rejection by the EU Intellectual Property Office (EUIPO), filed before the court by a German Company Ardagh Metal Beverage Holdings that had previously applied to the EUIPO to register the above noise made by a fizzy drinks can.
EUIPO had rejected the application on the grounds that the sound was not “distinctive” enough. The EU General Court decided in favour of the EUIPO in its first ever ruling on the registration of a sound mark submitted in audio format. This is not the end as the company may appeal to the European Court of Justice.
K S & Co Comments
Ever thought why some people demand irrelevant IP ownership. The above case is one such example. The European General Court here have rightly held that to obtain a TM, distinctiveness is a crucial factor. In Fizz from a can, no reasonable man can differentiate it with other brands. Thus, for the eligibility of a registration application, the distinctive nature of the mark applied for must be present.
General Motors Sues Ford for Trademark Infringement Over Self-Driven Cars
General Motors has taken action against Ford alleging trademark infringement in order to protect the Cruise and Super-Cruise brands after Ford renamed its Co-Pilot 360 automated driving system as ‘Blue Cruise. The Cruise model of GM cars have semi-autonomous features that allow hands-free driving for a brief period and crash-avoidance technology.
Ford hits back claiming that the lawsuit is frivolous and meritless as there are several companies that use the word ‘cruise’ to highlight their brand’s driver assist technology and it is a word commonly used amongst drivers as ‘cruise control’.
K S & Co Comment:
Technology is an ever-growing sector. Whenever a patent request is received the primary check is the understanding of the applied word in a prudent sense. The word applied must have something more than its regular meaning. Only then the criteria of distinctiveness could be fulfilled. In the above case, cruise has wide understanding, thus, approving TM just to the word cruise is objectionable to a great extent.
Dolby, Sony, and Fraunhofer-Gesellschaft’s U.S. Arm Create a New Patent Pool
Dolby Laboratories Inc., Sony Group Corp., and the research institute Fraunhofer-Gesellschaft’s U.S. arm have created a patent pool, which they claim will promote the next generation of sound without the type of litigation that has troubled the technology industry for years. The patent pool is for ‘Earth Shattering’ audio and it includes more than 90% of the patents needed to implement the new MPEG-H 3D Audio standard developed to create a three-dimensional sound experience on mobile devices, televisions and automobiles. Musicians, video directors and other content creators get access to the technology for free, but licensing fees would be charged to the makers of the devices such as smartphones and soundbars.
K S & Co Comment:
To do away with individual IP filing, Dolby, Sony and Institute of Fraunhofer have come up with a one of its kind patent pool. This move shall reduce the time of processing and shall also allow the inventors to refrain from a long list of compliances which earlier, each individual had to go through separately. Invention in technology shall never be stopped, and allowing this patent pool shall motivate others too for filing patent under a similar framework.
Nokia files a Patent Infringement
Finnish telecommunications company Nokia had filed multiple patent infringement charges against smartphone brand OPPO regarding standard-essential patent (SEP) and non-SEP patents. These patents are about connectivity, interface and security elements and the complaints are filed in European and Asian markets. Nokia alleges that OPPO is using all the patents previously authorized under a licensing agreement, the renewal of which, was rejected by OPPO thus, amounting such use as unauthorized.
Nokia has several royalty-bearing agreements with other brands like Samsung, Apple, LG, Lenovo, and Blackberry that safeguard its patents in similar situations.
K S & Co Comment:
To do away with individual IP filing, Dolby, Sony and Institute of Fraunhofer have come up with a one of its kind patent pool. This move shall reduce the time of processing and shall also allow the inventors to refrain from a long list of compliances which earlier, each individual had to go through separately. Invention in technology shall never be stopped, and allowing this patent pool shall motivate others too for filing patents under similar framework.
DISCLAIMER: Copyright on the images used in this newsletter are credited to the original owner of the copyrighted article. K Singhania & Co do not claim copyright over the images used. Due credits to the artist, author or creator of the copyright.
Subscribe to our Newsletter
Sign up for daily, weekly, monthly newsletter to get the latest news updates delivered directly to your inbox.
Recent Posts
-
Protecting Brands In India And Europe: Comparison Of Trademarks Laws
February 21, 2024
Leave a Reply