Thursday, 23 November 2017

India: Delhi High Court awards punitive damages to the tune of INR 300,000

A Single Bench of the Delhi High Court consisting of the Hon’ble Justice Sanjiv Khanna passed an order dated September 25, 2017, inter alia, awarding punitive damages for trademark infringement vis-à-vis counterfeiting.

Since its founding in 1940, Ahuja Radios has developed into one of India’s leading manufacturer & exporter of Public Address Equipments. Ahuja Radios (hereinafter referred to as the ‘Plaintiffs’) has numerous registrations for “AHUJA” formative trademarks in Class 09 -

The Plaintiff had stated that it is the largest manufacturer of Public Address Systems (PAS) in India, and that it has been selling PAS equipment under the trade mark AHUJA since 1940. In this regard, it is pertinent to note that the Plaintiff has a registration over the word mark “AHUJA” in Class 09 vide application no. 136189 dated November 06, 1948, claiming use since December 01, 1936. They also stated that their PAS products are exported to over 50 countries. It has also been stated that the Plaintiff’s amplifier model SSB120 is one of their best selling products.  


Brief facts of the case

The Plaintiff had conducted a market sweep in Mumbai in August 2014. During the course of investigation/survey, it was discovered that H.K. Sound Electronics (hereinafter referred to as the ‘Defendants’) were selling counterfeit AHUJA PAS products. Thereafter, the investigators procured a counterfeit amplifier from the Defendant, which was under the model number SSB 120. As regarding the counterfeit product, it was noted that –

-          It had some features of the original SSB 120
-          The price of the counterfeit was less than that of the original.
-          Absence of date of manufacturing and MRP on the packaging.
-          Spelling errors on the label printed at the reverse side.
-          Discrepancy in the serial number of the product.
-          Inferior quality of the product, as compared to the original SSB 120.

Original AHUJA RADIOS SSB 120 (From the website www.ahujaradios.com)



Plaintiff’s contentions

In view of the aforesaid, the Plaintiff filed a suit for trademark infringement and sought a decree of permanent injunction against the Defendants, delivery of the impugned material and rendition of accounts and damages upto INR 2,005,000.

The Plaintiffs submitted a wide variety of evidence, including but not limited to copies of brochures and internet material in favor of the Plaintiff, catalogues, sales invoices of Plaintiff’s products, copies of trademark registrations, copies of orders passed by various courts in favor of the Plaintiff, affidavit of the investigator, photographs of the Defendant’s premises, photographs of the counterfeit products, Defendant’s business cards, bill of purchase of the counterfeit product, etc.

The Defendants

Even though the Defendants were served, they did not appear. Hence the matter proceeded ex-parte.

Court’s observations

The Court noted that the Defendant’s use of the Plaintiff’s mark with respect of identical goods would count as causing irreparable damage and loss to the Plaintiff’s business under the AHUJA trademarks. The Court observed that the Defendant’s adoption of the mark AHUJA was malafide, which was calculated to take advantage of the Plaintiff’s goodwill and reputation with respect to the mark “AHUJA”. The Court was also of the opinion that all ingredients of passing-off were satisfied in the present case.

Further, on the basis of the evidence submitted by the Plaintiff, it was proved that  the counterfeit products bearing the Plaintiff’s registered trademarks were not originating from the Plaintiff, and that the Defendants action unequivocally amount to trademark infringement, namely of Plaintiff’s registration nos. 136189, 313757 and 1495014.

Held

The Court decreed the below in favor of the Plaintiff –

-      Permanent injunction against the Defendant with respect to trademark infringement as well as passing off.
-      Permanent injunction with respect to dilution and tarnishment.
-      Damages to the tune of INR 300,000.

As in interesting side note regarding the Court’s judgment, the Court held that the Defendant’s actions amounted to infringement of Ahuja Radio’s trademark registration no. 1495014. However, as per the information available on the Registry’s website, the aforesaid registration for the mark “SSB-120” (the product model) was valid October 09, 2016 and the same does not appear to have been renewed.

Tuesday, 14 November 2017

India: Registered Proprietor of a Trademark injuncted from using The mark by the Delhi High Court

In a recent decision by the Delhi High Court, Hon’ble Justice Manmohan granted an injunction against the defendant who was also the registered proprietor of the impugned trademark for persistent conduct of selling products bearing the mark AMIR’S, and more importantly, for wrongly obtaining a registration of their mark AMIR in Class 3.

Brief Facts: 

M/S Ishar Dass Amir Chand (hereinafter referred to as the ‘Plaintiff’) claimed to be the prior adopter and registered proprietor of the trademark AMIR’S in Class 3 and is stated to be engaged in the business of cultivating Henna and in manufacturing and exporting the same as natural Henna powder under the said mark. The Plaintiff is stated to be continuously and uninterruptedly using the mark AMIR’S for its products since 1996.

Claims of the Plaintiff 

The Plaintiff also claims to be the registered proprietor of the product label, and contended that the color combination, trade dress and get-up of the label/packaging of their product constituted an 'original artistic work' under Section 2 (c) of the Copyright Act, 1957. Their trade mark AMIR'S along with its label had acquired a heightened degree of distinctiveness owing to the exclusive, extensive and continuous use of the same since 1996. In support of this contention, the Plaintiff proved its original sale invoices showing sales and exports for the period 1996 to 2014.

The Plaintiff further claimed that, Mr. Jagdish Babu Sharma (hereinafter referred to as ‘Defendant’) who is the Director of Defendants No. 2 and 3 companies, are engaged in manufacturing, selling and exporting henna and henna based dyes under the mark AMIR'S with identical trade dress/get-up as that of the Plaintiff's product. Plaintiff exhibited the Defendant no. 2's certificate of incorporation which shows that it was incorporated on May 17, 2001. Further, the Defendants had wrongly obtained a registration of the impugned mark AMIR in Class 3 for which the Plaintiff had filed rectification and cancellation applications. In second week of August, 2015, it came to the knowledge of the Plaintiff that despite the orders passed by the Food and Drugs Administration cancelling the license of the Defendants, pursuant to complaints made by the Plaintiff, the Defendants continued to illegally manufacture, sell and export their products under the impugned trade mark as well as trade dress/get-up deceptively similar to that of the Plaintiff.

Aggrieved by the conduct of the Defendants, the Plaintiff had prayed for an ex parte ad interim injunction before the Delhi High Court and the Court had granted the said injunction in favor of the Plaintiff and against the Defendants on September 21, 2015 restraining the Defendants and it’s agents from manufacturing, selling, offering for sale or exporting Henna/Henna based products under the mark, "AMIR's/AMIR" or any other mark that is identical/deceptively similar to the Plaintiff's trademark, "AMIR'S", which was registered prior in time.

The Court had further observed that as on date, the Defendants enjoy a registration in the mark, "AMIR" and "AMIR (Device of Lady)" and even as per the Plaintiff, they have remained in the market for some time, hence, it is deemed appropriate to grant the Defendants a period of two months to make compliances of the aforesaid order.

However, as the Defendants entered appearance only on two occasions and did not file their written statement within the stipulated time granted, their right to file written statement was closed vide order dated August 12, 2016. Thus, the Defendants were proceeded ex-parte by this Court vide order dated October 27, 2016 and the interim injunction was made absolute.

Decision of the Court 

Having perused the papers and having heard the Learned Counsel for the Plaintiff, Hon’ble Mr. Justice Manmohan of the Delhi High Court was of the view that, since the averments in the plaint have not been rebutted by the Defendants as they did not bother to put forth their stand, in spite of ample opportunities given to them, they are deemed to be admitted.

Further, the Court was of the view that color combination, trade dress and get-up of the label/packaging of the Plaintiff's product constitutes an 'original artistic work' under Section 2 (c) of the Copyright Act and the Plaintiff has the exclusive right to use and produce the same under Section 14 of the Copyright Act. The use of the impugned AMIR'S Henna label by the Defendants which is a colorable imitation and substantial reproduction of the Plaintiff's AMIR'S Henna Label/logo in respect of its overall color combination, lay out and arrangement of features and get up constitutes infringement of copyright of Plaintiff's product under Section 51 of the Copyright Act and is liable to be injuncted under Section 55 of the Copyright Act. 

Additionally, the Defendants' impugned marks AMIR'S and AMIR are identical to the Plaintiff's mark. Even though both the Plaintiff's and Defendants' marks are registered, yet from the evidence on record, it is apparent that the Plaintiff is the prior adopter of the trade mark AMIR'S along with its label and has been using the same extensively since the year 1996. From the Plaintiff's sales figures it is also apparent that the product of the Plaintiff under the trade mark AMIR'S along with its label and get up, in particular the color combination of green and white has acquired distinctiveness and is identified as originating from the Plaintiff. The use of the impugned trade mark/trade dress/label comprising of box design, label including the overall color combination of golden and white by the Defendants for domestic and export sales is likely to cause confusion and/or deception in the minds of the consumers on account of imperfect recollection and the overall similarity and idea conveyed by the trade dress and packaging of both the parties. In fact, the adoption of the impugned trade mark AMIR'S and its packaging by the Defendants would invariably cause confusion and deception on account of being visually, structurally, phonetically and deceptively identical to the Plaintiff's mark and its packaging. The use and export of the impugned trade mark AMIR'S and its packaging by the Defendants constitute acts of misrepresentation, misappropriation and passing off.

Keeping in mind the aforesaid facts and contentions, the mandate of the law and the persistent conduct of the Defendants in selling products bearing the mark AMIR’S/AMIR, the suit is decreed in favour of the Plaintiff and the Plaintiff shall be entitled to costs including monies spent on Court-Fees, Local Commissioner’s Fees and other expenses, etc.

India: In Defence of AIB’s Game of Thrones Memes: When can Satire/Critique Act as a Suitable Defence?

In a recent article posted on Bar & Bench (see here) 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. As a result of its global popularity, it has entered public consciousness in a similar way to entertainment franchises, such as Star Wars, Star Trek, Harry Potter and Marvel Comics, to name just a few. 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 Issue

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, you can take a look here.

Copyright Infringement and its Defences

However, the pertinent question arising out of this for IP lawyers is does this constitute infringement of HBO’s copyright in the show?

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?

The most obvious defences in cases of derivative fan works are that they are in the nature of tributes to their source material, and therefore do not attempt to take away from their repute. They may, in fact, serve the opposite purpose in driving curiosity in the works which they derive from and to which they refer. Another common defence for certain fan-derivative works is that they are either in the nature of a critique or a parody/spoof of the source material. And the final important defence in determining whether a fan-derivative work is harmless is that it should not be for profit.

It is with regard to the last criterion that 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.

Source: AIB on Facebook

IP Rights v Freedom of Speech/Creativity

The landmark judgement in India upholding the right to freedom of speech and expression over disparagement involving IP rights is in the case of Tata Sons Ltd. v Greenpeace International & Anr.[1] Here, the dispute centred around a satirical game, Pac-Man style, which showed the endangered Olive Ridley Turtle being hunted by the ‘Tata demons’, in the form of animations of their famous trademark, . The game had been designed by Greenpeace as an innovative form of protest against Tata’s construction of Dhamra port in an ecologically sensitive area of Orissa. Tata, in tis turn, claimed that the representation of their famous device mark in such a negative fashion was affecting their considerable reputation built around the trademark and alleged tarnishment and disparagement. However, Justice Shri Ravinder Bhat of the Delhi High Court, in an unprecedented judgement, held in favour of Greenpeace, causing a stir in trademark owners’ circles.

The above case proves that satire or critique may be a valid defence against an allegation of trademark infringement/tarnishment.  But is it enough in the case of AIB’s ostensibly promotional use of copyrighted material?

The comedy group is only one amongst many, all across the world, who have attempted to capitalize on the show’s overarching popularity to promote their products. Why hasn’t HBO proceeded against these myriad “infringers”? 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. An 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.






[1] IA No.9089/2010 in CS(OS) No.1407/2010

Indonesia Joins Madrid Protocol as the 100th Member

Source: www.wipo.int

The Madrid Protocol along with the Madrid Agreement, gives the legal basis to the Madrid System which is the primary method of international registration of trademarks in multiple Jurisdictions. Administered by the WIPO, the Madrid Protocol allows the trademark owners of its contracting parties to seek protection of their trademarks in multiple countries by filing a single application. Moreover, the Madrid Protocol also allows such applications to be filed in a single language and grants protection to the trademarks in multiple countries upon the payment of a single fee.

Being a prominent member and one of the Six Majors of the Association of Southeast Asian Nations, it was long awaited for Indonesia to take active steps to comply with the ASEAN Economic Community Blueprint milestones for harmonization of intellectual property protection within the region.

On October 02, 2017, at the 57th WIPO General Assembly in Geneva, The Government of Indonesia through its Minister for Law and Human Rights deposited its Instrument of Accession (Presidential Decree No. 92 of 2017) to the Madrid Protocol with the Director General of WIPO making it the 100th member and the 8th ASEAN member of the Madrid System. This leaves only 2 ASEAN countries i.e. Malaysia and Myanmar that are yet to join the Madrid system.

However, Indonesia has filed certain declarations while submitting its Instrument of Accession, the most prominent of which are the declaration of an 18-month time limit to notify a refusal to the International Bureau against an international application made under the Madrid Protocol, the declaration of the Government to receive fees produced from supplementary and complementary fees in certain events and the declaration that the Common Regulations shall not have any effect in Indonesia.

With Indonesia’s adoption of the Madrid Protocol, the local business owners are the ones who are bound to benefit the most. From January 02, 2018 i.e. the date from which the Protocol will enter into force for Indonesia, the local business owners in Indonesia could seek protection of their trademark in territories of the other 99 member countries through a single application filed with the Department of Intellectual Property and payment of a single set of official fees. This will help them in significantly reducing the costs and efforts during their expansion in other countries. In addition, the foreign applicants could also obtain trademark protection for their marks by designating Indonesia in their Madrid Application along with other member countries.

Essay Competition in celebration of Children’s Day: Results Announced!!


In an effort to spread awareness about the importance of education and innovation amongst children, IP4Kids, a CSR Initiative of S.S. Rana & Co., organized an Essay Competition on Children’s Day on the theme, "Education and Innovation: Towards a better India"

Young minds were encouraged to focus on the theme of Children’s Day, and hence were free to write on topics related to –
1. Favorite Scientist
2. Favorite Innovation
3. Importance of Education
4. Right to Education
The winners of the Competition are –

Category:I


Class : V - VIII
  1. Souptik Banerjee, who wrote on the essay titled, "My favorite scientist"
  2. Adith Nambiar, who wrote on the essay titled, " Importance of Education"
  3. Ayush Chouhan, who wrote on the essay titled, "Education and innovation towards a better India"
Category:II

Class:  IX - XII
  1. Adrika Mishra, who wrote on the essay titled, "Importance of Education"
  2. Prince Singh, who wrote on the essay titled, " Education and Innovation: Towards better India"
  3. Ravish  Kumar, who wrote on the essay titled, "Importance of Education"
Heartiest Congratulations on behalf of IP4Kids and S.S. Rana & Co. to the winners in Category I and Category II who won prizes worth 3000, and 2000 respectively.

All participants shall receive a participation certificate from the firm.

We look forward to further such participation in the future.

Tuesday, 31 October 2017

India: Patent Office to be affirmed as a Depositing Office


Recently, the Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) and the World Intellectual Property Organization (hereinafter referred to as the ‘WIPO’), entered into a cooperative agreement at Geneva, Switzerland (headquarters of WIPO).

The Agreement was signed to facilitate the regular exchange of data between these offices including Indian Patent documents, search and examination reports through WIPO CASE (Centralized Access to Search and Examination) and WIPO Digital Access Services (DAS), thereby enabling the priority documents to be made available electronically.

The WIPO CASE system allows patent offices to securely share, search and examine results related to patent applications in order to facilitate work sharing programs.

DAS authorizes applicants to request the first office (known as the Depositing Office or Office of First Filing) to make priority documents available to the system and then to request other offices (known as the Accessing Offices or Offices of Second Filing) to retrieve those documents via the service.

The Agreement also envisages the following activities;

·    improvement of IP business services that includes projects for digitalization, data capture and data quality improvement,
·         data exchange for the dissemination of IP information,
·         provision of business systems by WIPO for digitization,
·         document management, and
·         creation of national and/or regional IP databases.

The implementation of the aforesaid agreement will promote the CGPDTM as a depositing office for WIPO CASE, enabling the office to make available the search and examination reports of Indian Patent applications.

Tuesday, 17 October 2017

India: Copyright Office to be relocated



As reported in our IP News Alert dated April 03, 2017 and August 07, 2017 which can be accessed here and here, the Finance Act, 2017 as a part of its stride to reduce the number of Tribunals, merged the Copyright Board with the Intellectual Property Appellate Board.

In response to the above mentioned developments, the Copyright Office has released a Public Notice dated October 16, 2017 stating relocation of the Copyright Office to the Intellectual Property Office at New Delhi at the below address with effect from October 23, 2017 -

Boudhik Sampada Bhawan
Plot No. 32, Sector-14, Dwarka
New Delhi-110075
Ph: 011-25300200

The present move to bring all Intellectual Property Offices under one building is a welcome step, as it will bring a strong sense of efficiency back into the system and all the procedural hassles previously faced by an applicant will be done away with. As recently as last year, the Government of India announced that Copyright and Semi-Conductors are to be brought under the ambit of the Department of Industrial Policy and Promotion. Such a transfer had the consequence of consolidating all IP related functions under one body, and instill a certain sense of uniformity in decision making at national and international levels. Before such a move Copyright was under the preview of the Human Resource Development Ministry.

The Public Notice dated October 16, 2017 can be accessed here.