Tuesday, 18 April 2017

Delhi high court takes strict action against tolin tyres in “Bridgestone v. Bridestone” infringement case

DIRECTORS WERE PUT BEHIND BARS FOR MAKING FALSE STATEMENTS

In a recent case titled as Bridgestone Corporation Vs. Tolin Tyres Pvt. Ltd., CS (COMM) No. 375/2016, the Defendant, Tolin Tyres, faced the ire of the Delhi High Court for taking a “blatantly false stand” by denying manufacturing and exporting of tyres under the impugned mark “Bridestone”.


Brief Background And Plaintiff 's Contentions:
  • Bridgestone Corporation (hereinafter referred to as the “Plaintiff”) is a transnational company selling tyres for approximately 85 years under the trade mark BRIDGESTONE.
  • The Plaintiff not only sells tyres but also sells various rubber products related to the tyre industry or the automobile industry.
  • In or around April 2016, the Plaintiff filed a suit for trade mark infringement titled against Tolin Tyres (hereinafter referred to as “Defendant”) in the Delhi High Court.
  • The Plaintiff claimed that the Defendant was exporting tyres under the name “BRIDESTONE”, which is almost completely identical to the Plaintiff’s registered trade mark “BRIDGESTONE” which is being used by them since 1931.
  • The Plaintiff argued that its adoption of the trade mark “BRIDGESTONE” is arbitrary and derived from the Japanese surname “Ishibashi”, founder of the Plaintiff Company, which when translated to English means “Stone Bridge”.
  • The Plaintiff argued that they have been able to ascertain the Defendant’s illegal activities with great difficulty, and made an oral prayer before the Hon’ble Court to appoint a Local Commissioner to make a complete inventory of the tyres sold by the Defendant under the impugned trade mark “BRIDESTONE”.
  • The Plaintiff further argued that visual depiction of the trademarks of the two tyres of the Plaintiff and the Defendant would result in more or less an identical position causing visual deceptive similarity between the two trademarks.
  • Hon’ble Mr. Justice Valmiki J. Mehta of the Delhi High Court, agreeing with the Plaintiff, passed an ex-parte order dated April 21, 2016 restraining the Defendant from selling tyres or any other products related to the automobile industry in any manner under the trade mark “BRIDESTONE” or any other trade mark which is identical or deceptively similar to the trademark “BRIDGESTONE” of the Plaintiff.
  • The Court also appointed a Local Commissioner to make a complete inventory of the tyres manufactured and sold under the mark “BRIDESTONE” at the Defendant’s premises at M.C. Road, Mattoor, Kalady Ernakulam, Kerala-683574.
Attempts At Mediation: 

Thereafter, on July 20, 2016, at the joint request of both parties the Hon’ble Court directed them to appear before the High Court Mediation & Conciliation Centre on July 29, 2016. However, it appears that the parties were not able to reach a mutually acceptable settlement.

Defendant's Contentions:
  • The Defendant argued that it is not manufacturing or exporting tyres under the trade mark “BRIDESTONE”.
  • That “TOLINS” is the registered trade mark of the Defendant and it manufactures and exports tyres under the said trade name only and no other trade name.
  • Therefore, the Defendant has no objection to suffer from a decree for permanent injunction as claimed in prayer paragraph 32(a) and 32(b) of the Plaint.
 Plaintiff 's Counter-Submission: 
  • The Plaintiff drew attention of the Hon’ble Court to the download from the website www.zauba.com to contend that the particulars on the said website of export of “BRIDESTONE” brand tyres, match the particulars of the exports effected by the Defendant as reported by the Court/Local Commissioner appointed in the suit.
  • As per information gathered by the Plaintiff, no export document is required to specify the brand of the goods exported unless the importer insists upon it.
  • A notice should be issued to www.zauba.com to disclose the source of the information on the basis which they have on their website, attributed export of tyres under the name “BRIDESTONE” to the Defendants.
  • On being enquired by the Hon’ble Court on whether www.zauba.com was itself acquiring information from major ports in India, the Plaintiff stated that the lawyer who visited the Land Customs Port, Raxaul, Bihar-845305 has reported that the Defendant exported tyres to Nepal under the mark ‘BRIDESTONE/BRIDGESTONE’ vide certain bills of discharge, whose details were provided to the Court
In view of the above, the Hon’ble Court issued notice to the Office of the Public Information Officer, Land Customs Port, Raxaul, Bihar-845305 to produce before the Court on March 16, 2017 the records  of exports of tyres by the Defendant vide the above discharge bills to Nepal. The Hon’ble Court further directed the Director of the Defendant to make a statement before the Court and also personally remain present in the Court for the next date of hearing.

Delhi High Court's Findings/Decision
  • The Office of the Public Information Officer, Land Customs Port, Raxaul, Bihar – 845305 issued its report which showed that the tyres exported by the Defendant are described as ‘BRIDESTONE’.
  • On being enquired by the Hon’ble Court whether the records of the Customs Department are correct or not, the Director and the Managing Director of the Defendant admitted that the records were correct and further admitted that they had been exporting tyres in the name of “BRIDESTONE” and apologized for stating the contrary till now, although they blamed another Director of the Defendant for such export.
  • The Hon’ble Court held that it was obvious that the Defendant had been taking a blatantly false stand before the Court, and therefore, the apology tendered by the Directors of the Defendant when forced to admit the falsehood, is meaningless.
  • The Hon’ble Court observed that in spite of repeatedly asking the Defendant whether it had been manufacturing and exporting tyres under the trade mark “BRIDESTONE”, the Defendant kept on denying the same. The Hon’ble Court further astutely observed that the Defendant and its directors appear to be under the impression that the Orders of the Court and consequences thereof can be warded off by taking a false stand and the Court will blindly accept what they say and being overburdened and pressed for time, the Court shall not conduct any enquiry.
  • The Hon’ble Court ordered that Mr. Joy Konukkudy Thomas, Director and Mr. K.V. Tolin, Managing Director of the Defendant be taken into police custody, and be produced again on the morning of March 17, 2017 to show why they should not be proceeded against for perjury and for criminal contempt of the Court.
Defendant's Attempt To Mitigate Damage 

On March 17, 2017, when produced before the Court, in an attempt to be absolved from their offences and criminal contempt of the Court, the Directors of the Defendant Company stated that in addition to be bound by the permanent injunction restraining them from selling tyres under the name “BRIDESTONE”, they offered an unconditional apology and were willing to pay INR 30,00,000 (approx. USD 46,500)* to the Plaintiff to compensate towards the damages faced by them due to export of tyres under the mark “BRIDESTONE” as well as deposit INR 500,000 (approx. USD 7,750)* with the Delhi Legal Services Authority (DLSA).

Concluding Remarks

Hon’ble Mr. Justice Rajiv Sahai Endlaw of the Delhi High Court stated that though he is of the opinion that INR 500,000 (approx. USD 7,750)* deposited with the DLSA cannot be enough to purge the Directors of their folly, keeping in view that they have given an undertaking to pay INR 3,000,000 (approx. USD 46,500)* to the Plaintiff and deposit INR 500,000 (approx. USD 7,750)* with the DLSA, they shall be let off with a warning.

Hon’ble Mr. Justice Endlaw stated that if the Directors of the Defendant Company do not comply with their undertaking, the Plaintiff shall be at liberty to apply for revival of the suit for a decree for the amount as claimed and also for costs of the suit. Further, Hon’ble Mr. Justice Endlaw also stated that if the receipt of deposit of INR 500,000 (approx. USD 7,750)* with DLSA is not filed on or before May 07, 2017, the Registry should list the suit for further proceedings.

*(@1 USD = approximately INR 64.5, as on April 10, 2017)

India: Vacation Bench of the Supreme Court to hear 5,000 pending cases during Summer 2017

According to a recent notice dated April 01, 2017 issued by the Hon’ble Supreme Court of India, the Apex Court has prepared an ‘Advance Regular Hearing Matters List’ wherein it has listed about 5,000 pending cases for hearing in this summer vacation from May 11, 2017 to July 2, 2017, in a bid to set a leading example to its subordinate courts. This initiative is motivated towards reducing the pendency of ongoing litigation in India and to reduce the burden on the Indian judiciary in order to facilitate speedy justice.

The Advance Hearing List of the Supreme Court entails two categories (i) Cases which are to be listed on specific dates during the summer vacation as per the direction of the Hon'ble Supreme Court. (ii) Ready Regular Hearing Matters included in the Terminal List dating back to the year 2012. This exhaustive list running through almost 600 pages includes matters pertaining to the complex issues of Whatsapp citizens’ right to privacy issue, validity of triple talaq (Islamic Divorce), right to dignity of Muslim women, and the citizenship issue in the Indian state of Assam.

The Apex Court in its notice has clarified that some of the matters which are shown in the Advance Regular Hearing Matters List are matters that are already appearing in the Weekly/ Daily lists, and those matters which are taken up for final hearing before the commencement of the summer vacation 2017, shall be deleted from the List. The Apex Court has simultaneously also made it clear that any counsel or party whose matter is listed in the Advance Regular Matters List and does not want to take up the matter, may request the same in writing to the Additional Registrar (Listing) of the Court on or before April 28, 2017 after serving a copy to its opposite party, to avoid its listing before the Vacation Bench of the Hon’ble Supreme Court. Further, cases of Admissible Categories, where both parties/counsel have given their consent to list their matters during the vacation can also communicate the same to the Registrar of the Hon’ble Supreme Court of India.
The said notice dated April 1, 2017 as issued by the Hon’ble Supreme Court of India is available at the link.

India: Trump nominates two Indian-Americans for key administrative positions

Two Indian Americans Vishal Amin and Neomi Rao has been nominated by the President Donald Trump for key administrative posts to coordinate US law-enforcement strategy around copyright, patents and trademarks. Vishal Amin has been nominated to be the Intellectual Property Enforcement Coordinator while Neomi Rao will be the Administrator of the Office of Information and Regulatory Affairs.

Neomi Rao’s selection by Trump suggests that the administration is not only inclined towards reducing high-profile regulatory burdens, however, it suggests the administration is serious about the regulatory reform.


IP4KIDS, A CSR initiative of S.S. Rana & Co., conducts a workshop on Intellectual Property at Army Public School, Alwar

S.S. Rana & Co., through its CSR initiative, “IP4KIDS’, a sensitization program to spread awareness about Intellectual Property Rights among the young generations recently on April 15, 2017, conducted a workshop of ‘General Introduction to Intellectual Property’ at Army Public School, Alwar. Mr. Bijit Das & Mr. Pranit Biswas, both Associate Advocates at the Firm, were the speakers for the day, and the workshop focused on a basic introduction to Intellectual Property for students of Classes 11 and 12, as well as the management.

Army Public School, Alwar, is run by Army Welfare Education Society (AWES). The School is located in Idyllic surroundings of Itarana on the Delhi Road just 6 K.M. from Alwar Railway Station. The School was established on September 14, 1991. It’s endeavor is to provide “Quality Education at Affordable Cost” for the children of Defence personnel and Civilians.


Thursday, 6 April 2017

Delhi High Court: Interpretation of ‘export’ under S. 107A of Patents Act, 1970

In a recent decision dated March 8, 2017 in Bayer Corporation v. Union of India & ORS; W.P.(C) 1971/2014 and Bayer Intellectual Property GMBH & Anr v. Alembic Pharmaceuticals LTD.; CS(COMM) No.1592/2016, Hon’ble  Justice Rajiv Sahai Endlaw of Delhi High Court held that export of a patented invention for experimental purpose is also covered under S. 107 A of the Indian Patents Act and thus does not amount to patent infringement.

Factual Background
  • Bayer Corporation (Bayer) had filed a suit numbered CS(OS) No.1090/2011 for restraining Natco from making, importing, selling, offering for sale ‘SORAFENIB’, ‘SORAFENIB TOSYLATE’ or any generic version or any other drug or product thereof which is a subject matter of Bayer’s Patent No.215758.
  • Natco during the pendency of the suit approached the Patent Office for grant of Compulsory Licence against the said patent.On March 9, 2012, the Controller of Patents granted Compulsory Licence in Patent No. 215758 under Section 84 of the Patents Act to Natco. In accordance with the terms of the Compulsory Licence, it was solely for the purposes of making, using, offering to sell and selling the drug covered by the patent within the territory of India.Natco, however, manufactured the product covered by the Compulsory Licence for export outside India. A writ petition numbered W.P.(C) No.1971/2014 was filed seeking a mandamus to the Customs Authorities to seize the consignments for export containing products covered by Compulsory Licence including ‘SORAFENAT’ manufactured by Natco.
  • On March 26, 2014, notice of writ petition was issued therein the Customs Authorities were directed to ensure that no consignment from India containing ‘SORAFENAT’ covered by Compulsory Licence was exported. However, Natco was given the liberty to apply to the Court for permission to export the drug. Subsequently, on May23, 2014, Natco pointed out that in fact it has already been granted a drug license and it was permitted to export the drug SORAFENIB TOSYLATE‘ not exceeding 15 gm for development / clinical studies and trials. 
  •  Natco again applied for permission to export 1 Kg. of Active Pharmaceutical Ingredient (API) SORAFENIB to China for the purposes of conducting development / clinical studies and trials and the said application was contested by Bayer. 
  • Natco filed a counter affidavit in the writ petition inter alia pleading that it never exported the finished product ‗SORAFENAT‘ to any party outside India for commercial purpose. 
  • Bayer, in its rejoinder to the counter affidavit pleaded export of a product covered by Compulsory Licence under the garb of Section 107A of the Act is abuse of the process of law. 

Issue before the Court

In the present case, the issue is whether the language of S.107A of the Patents Act, 1970 permits export from India of a patented invention, solely for development and submission of information or whether such act would constitute infringement under Patents Act, 1970.

Petitioner’s Submission

Bayer contended that-
  •  S. 107A of the Patents Act has no application as the act of making, constructing, using, selling or importing a patented invention are to be performed within the territory of India.
  • S.107A of the Act does not contemplate export of product per se but is limited to information generated within the territory of India.
  • The word ‘selling’ in Section 107A of the Patents Act means ‘selling in India only’ and does not include export. Further, S. 107A uses the word ‘import’ and there is absence of the word ‘export’.The word ‘buying’ in S. 107A of the Act would have included the word ‘import’ also; however from the fact that besides using the word ‘buying’, the word ‘importing’ has also been used, it follows that buying did not include import. Similarly, selling will not include export. Reading the word ‘export’ in Section 107A would amount to making laws for other countries.
  • Therefore, export of a product covered by Compulsory Licence under the garb of Section 107A of the Act is an abuse of the process of the law.
Respondent’s Submission

Natco submitted that-
  • The export of the product covered by the Compulsory Licence is not intended for commercial purposes. Exports intended by Natco are only for research and development purposes and to obtain the drug regulatory approvals in the respective countries.
  • Section 48 of the Patents Act is subject to other provisions of the Act. S. 107A is not an exception to Section 48. Section 84 of the Patents Act dealing with the grant of Compulsory Licence is also an exception to Section 48.
  • The wide ambit of Section 107A is evident from the use of the words ‘reasonably related to the development and submission of information’.
  • Sections 107A, 48 and 84 have to be ready harmoniously with Sections 90 and 93 of the Patents Act to contend that grant of Compulsory Licence cannot be in negation to the rights under Section 107 A.

Court’s Observation
The Court opined that Section 107 A prescribes the acts which are not to be considered as infringement of patent rights but there is no provision in the Patents Act prescribing as to what acts constitute infringement of patent rights. Thus, exercise of any of the acts mentioned under S.48 by a non-patentee would be infringement of a patent.
‘Selling’ permitted by Section 107A is of a patented invention i.e. a ‘product’ and not of ‘information’. The word ‘information’ used in Section 107 A is in the context of information, required to be submitted to any authority under any law of India or of a country other than India regulating the manufacture and marketing of any product. S. 107A, as per its natural / literal / textual meaning requires selling of a patented invention solely for submission of information required under any law. There is nothing in the language of Section 107A to suggest that only the information generated/collected in India could be transported out of India and not the patented invention.
There is thus nothing in Section 107 A or elsewhere in the Patents Act to restrict the meaning of ‘selling’ in Section 107 A. In the absence of any law prohibiting export of a patented invention for purposes permitted under Section 107 A, no such prohibition can be inferred.

Held

Thus, The Court held that the grant of Compulsory Licence would not come in the way of Natco exercising its rights under Section 107 A as a non-patentee and cannot be deprived of making, constructing and selling by way of export a patented invention for purposes specified in Section 107A.

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 grounds of opposition in the application are as follows –
  1. Lonsdale uses lion trademarks, collectively called “Lion Marks” on their products. They have two of their Lion Marks registered in India and applications for two Lion Marks have been advertised. They also have applications and registrations of the Lion Marks in other countries.
  2. The trademarks of Lonsdale have been used for many years and their products have been worn by renowned sports personalities and celebrities. Because of the historic adoption and popularity of the Lion Marks, they are exclusively associated with Lonsdale.
  3. The mark of the applicant is visually similar to the Lion Marks and would therefore, lead to confusion and deception among the public as the mark of the applicant cannot distinguish between their goods and the goods of Lonsdale.
  4. The public would assume from the mark of the applicant that Lonsdale has begun manufacturing  new goods or has begun licensing/franchising to the applicant.
  5. The applicant has no honest or concurrent use to justify the registration of their mark.
  6. Applicant has falsely claimed proprietorship in their mark as they should have known about the Lion Marks which are very popular and widely used.
  7. The registration of the applicant’s marks would be infringement of Section 11 of the Trade Marks Act, 1999.

      At this moment, it is pertinent for the general convenience of the readers to take note of the two            marks in question.

                       

On September 29, 2016, DIPP filed its counter statement before the Registrar of Trade Marks, New Delhi. 
  1. The ‘Make in India’ logo was inspired by the rich religious and cultural heritage of India. The     national emblem of India, the Ashok Lion Capital of Sarnath comprises of four lions and is mounted on an abacus which features the sculpture of a lion along with other animals. In ancient India, lion was used as a state symbol.
  2. The logo of the Reserve Bank of India has a lion.
  3. There are lots of postal stamps in India which feature a lion.
  4. The ‘Make in India’ logo is widely recognized as an initiative of the Government of India and is popular nationally and internationally amongst the public and business community.
  5. The logo has been publicized on every platform including in print and electronic media, social media, industry meets etc.
  6. The launch of ‘Make in India’ in September 2014 led to a 44% increase in FDI equity inflows.
  7. The ‘Make in India’ logo is distinctive of the applicant and its goods and services and the logo is not similar to the Lion marks. The ‘Make in India’ logo has a distinct portrayal of a forward marching lion which is made of gearwheels with ‘Make in India’ prominently written over it. This makes the trademark easily distinguishable from other marks including that of Lonsdale. 
  8. The Government of India has an unequalled reputation and goodwill all over the world in the field of economy, trade and business. Therefore, there is no question of any bad faith involved on part of the applicant.

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.

For the general information of our readers, find below a list of other Lion marks Registered in India – 

                          

Finance Bill, 2017: Copyright Board to be merged with IPAB

On March 22, 2017, Lok Sabha passed the Finance Bill, 2017 (hereinafter referred to as the “Bill”) wherein the Copyright Board is set to be merged with the Intellectual Property Appellate Board (hereinafter referred to as “IPAB”).

This Bill seeks to amend the Copyright Act, 1957, so as to transfer the functions of the Copyright Board to IPAB, which presently deals with matters relating to trademarks, patents and geographical indications only. This bill also proposes to amend the rules pertaining to qualifications, appointment and other terms of service of the members of IPAB. It introduces Section 89A to the Copyright Act which leaves these matters to be solely governed by Section 179 of the Finance Act, 2017, in respect of members appointed after the commencement of this Act. The Central Government can make rules in this regard.

This Bill is presently pending for the Presidents assent to become a law. A copy of the said bill can be found over here