Wednesday, 22 February 2017

India: After initial hiccups Arnab Goswami changes the name of his new venture to ‘Republic TV’

On November 1, 2016, the nation was shocked when the face of ‘The Newshour’, Mr. Arnab Goswami stepped down as the Editor-in chief of its parent news channel Times Now. Few days later, Mr. Goswami announced that he will launch his new venture, a News Channel called ‘Republic’. Republic made its social media debut with the launch of a Twitter handle and Facebook page and is also in the process of launching its website republicworld.com.

After initial optimism on social media, his new venture quickly plunged into controversy when Subramanium Swami, a senior BJP Leader, and a member of the Rajya Sabha (Upper House of the Indian Parliament) addressed a letter to the Ministry of Information and Broadcasting alleging that the name of Mr. Goswami’s proposed news channel ‘Republic’ violates the provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950 (hereinafter referred to as the ‘Act”). In his opinion, use of the word ‘Republic’ for commercial purposes is expressly prohibited by the said Act, and Mr. Swami very aptly iterated this fact in his letter to the Ministry.

The issue at present here is whether the use of the word ‘Republic’ is in contravention to the Act. Reading the Statement of Objects and Reasons of the Act will throw some light on the primary reasons for the promulgation of the said Act. It states that-

“The General Assembly of the United Nations Organization recommended in 1946 that members of the United Nations should take necessary legislative or other appropriate measures to prevent the use, without proper authority, and in particular for commercial purposes, of the emblem, the official seal and the name of the United Nations and of the abbreviations of that name. A similar recommendation has since been received also from the World Health Organization for prevention of the use of its name (and abbreviations), emblem and official seal. Instances have also come to light of the use in India (and abroad) of the Indian National Flag and emblem and of the names or pictorial representation of Mahatma Gandhi and other national leaders, for commercial and trade purposes and in a manner likely to offend the sentiments of the people. The provisions of the Indian Trade Marks Act, 1940, Indian Patents and Designs Act, 1911, Indian Merchandise Marks Act, 1889, and the Indian Companies Act, 1913, are not adequate to prevent these abuses.  The Bill seeks to prevent the improper use of these names, emblems, etc., for the purpose of trade, business, calling, profession, patent or design and to impose a penalty for misuse of emblems, etc., specified in the Schedule and empowers the Central Government to make additions, and amendments in the Schedule as and when necessary”

According to news reports, Swamy contended in his letter to the Ministry that item 6 in the schedule to the Act prohibits the use of the word ‘Republic’. Item 6 to the schedule to the Act reads as follows: “6. The name, emblem or official seal of the President, Governor, Sadar-i-Riyasat or Republic or Union of India.” Section 9(2)(d) of the Trademarks Act,1999 also imposes an absolute restriction on the registration of marks which is in contravention with the Emblems and Names (Prevention of Improper Use) Act,1950.

The Indian Government and the Judiciary have not taken strong note of instances of violations of the provisions of the Act. There are of course sporadic instances of cases where the judiciary ordered the authorities to take steps. For instance, in the case of Ravikanth Shinde v Managing Director, Gujarat Heavy Chemicals Ltd. and Ors[1]. The Respondents in this case were manufacturing ‘kitchen salt’ under the trademark Dandi with the pictorial representation in the background which creates an impression of Mahatama Gandhi. The Andhra Pradesh High Court directed the authorities concerned under the Emblems and Names (Prevention of Improper Use) Act, 1950, to take steps in accordance with the Act to ensure that Mahatma Gandhi's picture or the name Dandi is not used for any commercial purpose.

Mr. Goswami’s trademark application, a copy of which can be found over here, was subsequently filed on November 20, 2016, in Class 35, which relates to advertisement and publicity services. It is pertinent to note, that the Trademark Registry did not raise any objection on the basis of Section 9 (2) (d). However, it did raise an objection based on Section 9 (1) (a) in the following words: “As the mark is a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others.”

However, this controversy was put to rest subsequently, as Mr. Goswami has since rebranded his channel to ‘Republic TV’.

For general information of our readers, we have listed a few marks both in India and Abroad below a substantial part of which contains the word ‘Republic’ -

Table – 1: List of marks in India containing the word ‘Republic’

Table – 2: List of marks in the United States bearing the word ‘Republic’



[1] 2003(4)ALD400

India: The Iconic Ambassador, once dubbed ‘King of Indian Roads’ taken over by French auto-giants Peugeot

CK Birla Group, the parent company of Hindustan Motors, an Indian Automotive Manufacturer based in Kolkata, India, issued a statement on February 11, which confirmed that the iconic Ambassador brand has changed hands and has been sold to European auto major Peugeot for a sum equal to 80 crore. ($ 12 Million approx.)

The official statement read as, “Hindustan Motors has executed an agreement with Peugeot SA for the sale of the Ambassador brand, including the trademarks, for a consideration of 80 crore”. The CK Birla group firm has inked an agreement with Peugeot SA to this effect. 

Peugeot is a French car manufacturer, part of Groupe PSA, renowned for its roaring-lion trademark. The PSA Group has inked a partnership with the CK Birla group to re-enter the Indian market and earmarked an initial investment of 100 million euros (around 700 crore) to set up vehicle and powertrain manufacturing in Tamil Nadu. The tie-up entails two joint venture agreements between the companies of the two groups.

The long-term partnership will allow both companies to participate in the growth of the Indian automotive market, which is expected to reach 8-10 million cars by 2025, from the current 3 million in 2016, according to a report by the Hindustan Times.

The PSA group, which sells three brands – Peugeot, Citroen and DS – is no stranger to India, having entered into a partnership with the erstwhile Premier family, resulting in joint venture Peugeot PAL India. However, it pulled out of the JV in 2001.

The group had made repeated attempts to return to the Indian market. In 2009, it decided to go slow on plans to kick off operations in India due to a global economic slowdown. Later, in 2011, it announced plans to re-enter the Indian market with a mid-sized sedan, 10 years after it had exited the country. The plan, however, did not materialize.

Interestingly, Hindustan Motors currently does not own any trademark registrations related to the word ‘Ambassador’. The earlier mark owned by HM was not renewed, and application for the new mark bearing numbers 2803570 and 2803571 have been advertised with the opposition period getting over on February 9, 2017 and February 9, 2016 respectively. As no opposition have been filed against the same, they will proceed to registration in due course. A list of trade-marks owned by Hindustan Motors in Class 12 are as follows –

India: Delhi High Court grants temporary Injunction against Macleods Pharmaceuticals Ltd

In a recent case decided by the Delhi High Court, Justice R.K.Gauba granted temporary injunction in favor of Intas Pharmaceuticals Ltd (hereinafter referred to as the “Plaintiff”) restraining the use of its trademark by the Macleods Pharmaceuticals Ltd (hereinafter referred to as the “Defendant”). The Court granted the interim relief as the Plaintiff proved a prima facie case in their favor and the Defendants’ use of the mark was phonetically/visually similar to that of the Plaintiff’s mark .

Brief Facts of the Case:

The Plaintiff is a company incorporated under the Companies Act and is engaged in the manufacture of medical and other pharmaceuticals products. The Plaintiff got its trademark GABAPIN registered in the year 1997. In May 2016, it came to the knowledge of the Plaintiff that the mark used by the Defendant ‘GABAMIN’ is phonetically/visually similar to the Plaintiff’s mark ‘GABAPIN’ and is likely to cause confusion in the minds of public.

Accordingly, the Plaintiff filed a civil suit seeking permanent injunction against the Defendant for infringement of its registered trademark "GABAPIN".

Plaintiff’s Submission
  1. The Plaintiff produced records before the Court, showing that it had introduced the medicines in the name of GABAPIN ME and GABAPIN NT which is a variation of GABAPIN.
  2. The Plaintiff contended that the Defendant has not shown any document or alleged in any manner to be selling any medicinal product containing the chemical compound "Gabapentin" alone.
  3. In the application for ad interim relief the Plaintiff alleged that it learnt about the medicinal products having been introduced in the market by the Defendant sometime in May 2016 and in the Plaint the Plaintiff mentioned that the Defendant had applied for registration of the mark “GABAMIN” under Class 5 before the Trademark Registry and upon this knowledge the Plaintiff filed its opposition in January 2010 to which the Defendant had failed to file any counter statement.
  4. The Plaintiff further contended that the use of the mark “GABAMIN” and “GABAMIN NT” by the Defendant is phonetically/visually similar to its registered mark and is dishonest and intended to ruin the goodwill and reputation of the Plaintiff.
Defendant’s Submission
  1. The products of the Plaintiff and that of the Defendant has different composition and there is no scope for confusion.
  2. The Defendant contended that in its mark GABAMIN the expression GABA is only a prefix and is a derivative of the chemical compound “GABAPENTIN”. It is a generic term and monopoly cannot be claimed by the Plaintiff. The rest of the mark is dissimilar and the suffix “MIN” is sufficient to distinguish the two products.
  3. The Defendant further contended that the Plaintiff is guilty of concealment of the fact that it had knowledge about the products of the Defendant since 2010, as the Plaintiff had earlier opposed an application of the Defendant in relation to the mark “GABAMIN”.
  4. The Plaintiff is not entitled to equitable relief on account of equitable laches and acquiescence. The Defendants’ product has been in the market since a long time, a fact that can be substantiated by their sales report.
  5. The Defendant claims that balance of convenience lies in their favor.
Decision of the Court

The Court started that it is true that neither side can claim exclusive rights to the use of a generic term such as "Gabapentin". The Court finds no substance in the submission of the Defendant that the Plaintiff is guilty of concealment of material facts. The Plaintiff has clearly declared in the pleadings that its product primarily contains the chemical compound "Gabapentin". The two other products later developed had other ingredients, one sold under the mark "GABAPIN ME" being similar to that of the impugned product of the Defendant, both also having as its contents "Methylcobalamin" and the other "GABAPIN NT" being again similar to the other product of the Defendant "GABAMIN NT", each adding the chemical compound "Nortriptylin" to the prime ingredient "Gabapentin". The Court rejected the contention of the Defendant that Plaintiff concealed the facts relating to trademark registration application submitted by the Defendant in 2006.

The Court further observed that filing of an application of registration of a trademark indicates that the applicant only proposes to use the trademark. Hence, it cannot be assumed that the Plaintiff had knowledge of the product being sold in market since 2010. The Court further observed that it is not possible to raise objections on the ground that prefix used therein is generic in nature and it is not permissible for the mark to be split up to compare them.

On these grounds, the Court held that the Plaintiff has made out prima facie case in its favor. The Court allowed the application under Order 39 Rule 1 & 2 of the Code of Civil Procedure and granted the relief of temporary injunction and restrained the Defendants from using the mark "GABAMIN" and / or "GABAMIN NT" or any other words identical or deceptively similar thereto, singularly or in conjunction with any other words or monogram / logo as a trade mark, service mark, trade name, trading style, or in any other manner whatsoever. However, the Court allowed the use the mark GABAMIN-NOR. But the use of the said mark shall be such that “GABAMIN‟ and “NOR‟ are in the same font and size. 

Tuesday, 21 February 2017

India: Copyright Office notifies applicants to remove discrepancies in their application

February 6, 2017                                                                                                     New Delhi

The Copyright Office has issued discrepancy letters to the applicants/ concerned persons who have applied or their respective copyright registration before the Registrar of Copyright to remove  the discrepancies. owever, as per status available on the records of the Copyright Office, the said discrepancies are yet to be rectified.

The list of discrepancy applications that have been released by the Copyright Office and can be found here.

Through a notice dated February 6, 2017 the Copyright Office requested all concerned applicants to remove the respective discrepancies latest by February 28, 2017, failing which it would be assumed that the concerned applicant has abandoned his application and same shall be Recorded without acknowledging any further correspondence in this regard. However, the applicants may be at liberty to apply a fresh application.

Sunday, 5 February 2017

India: Trade Marks Office gives a ‘Final’ Opportunity to Applicants aggrieved by the Mass Abandonment of Applications

During the month of May, June and July of 2016, the Indian Trade Marks Registry had dispatched 49289 Examination Reports containing office objections u/s 9, 11 and other relevant sections of the Trade Marks Act, 1999 to the concerned applicants or their authorized agents on record. Out of the Examination Reports so dispatched, no reply/communication had been received in 23303 applications even after the expiry of more than 30 days from the date of dispatch.

By a public notice dated January 30, 2017, a copy of which can be found over here, the Trade Marks Registry gave one last opportunity to send the scanned copy of the reply to the Examination Report by or before February 28, 2017 at parm.tmr@nic.in. If an applicant fails to do so, then the concerned applications will be treated as abandoned.

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., have finalized an agreement with Kowa CompanyKowa 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
  • Triglycerides
  • 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. 

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.”

Why to use WIPO translate?

It is dedicated to one thing only that is “translating patent documents”. It helps to unlock a patent document which is translated into a second language. It is highly specialized in latest neural machine translation technology (currently in beta).

Which languages are available?

Till 2014, this tool was used for only a few languages such as Chinese, Japanese and Korean. There is rapid increase in the number patent applications filed in East Asian languages. Now it offers translation of “sixteen languages” such as German-English, Japanese-English, Chinese-English and English-Korean, etc.