Tuesday, 9 January 2018

United States: Jury sides with San Diego in Comic Con trademark battle

Finally, the seething and slithering epic IP battle in the United States related to the ownership of the trademark ‘Comic-Con’ has come to an end with San Diego Comic Con emerging victorious. With the New Delhi Comic Con scheduled to take place later this week from December 13 to December 15, in this article, we explore the possible ramifications on the trademark front.    
CASE BACKGROUND
  • The Plaintiff in the present case San-Diego Comic Con (hereinafter referred to as ‘SDCC’) is a non-profit corporation dedicated to the appreciation of comics and other popular arts through events, including its ‘Comic-Con convention’ in San Diego, California.
  • The Defendants in the present case, Dan Farr of Dan Farr Productions and Bryan Brandenberg, are entrepreneurs and producers of ‘Salt Lake Comic Con’, which is a comic and popular arts convention in Salt Lake City, Utah.
  • It was brought to the notice of SDCC that the Defendants, Dan Farr and Bryan Brandenberg, drove around an Audi advertising its smaller Comic Con in the midst of San Diego’s convention. SDCC sent cease-and-desist letters to the Defendant to prevent them from using the name. However, the letter was ignored by the Defendants.
  • Thus, a trademark infringement law suit was filed by the Plaintiff in 2014, against the Defendants alleging that the Defendants are using the term ‘Comic Con’ which is infringing the Plaintiff’s mark ‘Comic-Con’ and is causing confusion in the minds of the general public who as a result link both the conventions to each other.
  • Permanent Injunction forbidding the Defendants from using the infringing mark in any logo, event, trademark or website and monetary damage of $12 million dollars were prayed by the Plaintiffs against the Defendants.

PARTY CONTENTIONS
  • The Defendants refuted the allegation of public confusion. They contended that the Plaintiff has abandoned the trademark. It was also emphasized by them that the trademark is generic and descriptive as it was used in some form by many similar conventions around the country for almost 50 years. As evidence, they cited examples of use of the term “comic con” to describe events that took place prior to the first San Diego event in 1970, and an instance where the Plaintiff had withdrawn its application for a trademark on the term “Comic Con” (no hyphen) in early 2000s. Talking about the generic nature of the term the Defendants also stated that Plaintiff’s trademark applied only to “Comic-Con” (with a hyphen).
  • Defending the claim of the trademark being generic, the Defendant stated that ‘there is no evidence submitted regarding the primary significance of SDCC’s trademarks in the mind of the relevant public and thus, as a matter of law, cannot establish that the marks are generic’.
  • It was contended by the Plaintiff that ‘Comic Con’ is a brand, in the sense that, people associate the name specifically to the San Diego show. They provided the Court with a survey in support of the contention where 82 percent of participants understood Comic-Con to be a brand name, and not a common generic name.
  • Even though the survey was questioned by the Defendants, however, the jury accepted the evidence. 

US FEDERAL COURT JUDGEMENT
  • The jury found the mark of the Plaintiff to be valid and also found similarity between the two marks. It came to the conclusion that the Defendants were using the infringing mark without the permission of the Plaintiff, thereby causing confusion in the minds of public, and is therefore guilty of trademark infringement.
  • The Federal Jury awarded damages of $20,000 to the Plaintiff for corrective advertising. Also, while awarding damages the Court pointed out that the infringement was unintentional.
  • The Plaintiff was allowed to either pursue trademark licensing agreements with all the similar comic conventions in the USA, over 140 in number, or ask them to rebrand their conventions by renaming it.

ANALYSIS
The Doctrine of Genericide is important to be discussed, with the reason being that it is one of the major point of discussion in the case. Sometimes brands become a victim of their own popularity. Genericide is one such situation wherein because the usage of the trademark is to such a level that it becomes an ordinary word i.e. generic, thereby losing the trademark protection.  What exactly happens is that the mark that is once denoted for specific goods and services becomes a label for the whole group of similar goods and services. For example: ‘Aspirin’ which was once a trademark for a medicine treating headache has now lost its trademark protection because it was used so extensively  by different entities that it became a generic term for acetylsalicylic acid. A few ways to protect a trademark from becoming generic are[1]:
  • If at all a generic term forms part of the trademark, then it should always be accompanied by a distinct prefix or a suffix.
  • The trademark should always be used as an adjective and not as a noun or a verb. The trademark proprietor should always establish a proper guideline relating to the usage of the trademark.
  • Expanding business to include more than one product in the trademark. For example: ‘Band-Aid’ was initially used as a trademark only for adhesive healing bands but now they have expanded to include a line of foot care products under the same brand.
  • Educating the consumers and the employees using the trademark to ensure proper usage of the trademark is important. They should be educated regarding the fact that the trademark is used as an identifier of the goods and services and is not the goods and services itself. 
  • There should always be consistency in the usage of the mark. It should not be changed every single time it is used.
  • The trademark proprietor should always use the letters TM or ® when the mark is registered, usually on the upper right hand corner. 

In this case, the mark ‘Comic-Con’ has been made in a manner where a generic term ‘Comic’ is paired with a distinctive descriptive suffix ‘-Con’. While deciding on any trademark the Court always looks at the mark as a whole and not in parts. Thus, the Defendant’s contention of ‘the mark being generic’ is defeated. This judgement indirectly drew a line between widely accepted marks and widely used mark. The mark that becomes widely accepted would continue to enjoy trademark protection like in the present case. Whereas the mark that is widely used would ultimately become generic losing the protection.  The judgement is being looked upon as a savior for the trademarks that are on the verge of becoming generic.
The judgement is said to have huge repercussions for the event industry in the USA. The reason for this is that other similar comic conventions in the US will now have to work out a deal with San Diego Comic Con or risk rebranding their convention entirely. Rebranding could be an issue as huge an amount of time, talent and expenses are spent in branding and popularizing a convention.
In India, the application for the word ‘Comic Con’ has been filed and registered by Comic Con India Pvt. Ltd., a company incorporated in 2011. However, even though they have been granted registrations for the word, a substantial number of their applications have been objected. The said entity holds similar comic based conventions in metro cities in the country. The main edition is held annually in New Delhi and express editions are held annually in Mumbai and Bangalore. The Delhi Comic Con is round the corner. A bare perusal of the search report generated from the portal of the Indian Trademark Registry shows that neither San Diego Comic Con enjoys any trademark protection of the word Comic Con nor have they applied for it. It would be interesting to follow if in future, San Diego Comic Con decides to protect their mark in India on the basis of prior use or being well-known in the United States.

For the convenience of our readers, the following is a table listing the details of trademark applications which has ‘Comic-con’ as a substantial part of their logo in India:



[1] http://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf

India: Digitization of Copyright Office for ease of Registration of Copyright in India



December 04, 2017                                                                                               New Delhi

In an attempt to cut down delays in examination of copyright applications, the Copyright Office through a public notice dated December 04, 2017, stated that it would be publishing the list of such applications received for registration of Copyright during the week i.e. Monday to Friday.

The public notice stated that every publication shall be treated as a notice to every person who claims or has any interest in the subject matter of Copyright or has dispute regarding the said application and the said application would be examined if no objection is received within 30 days.

As per Rule 70 (9) of the Copyright Rules, 2013, the person applying for registration of a copyright shall give notice of his application to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant to it.

The public notice further stated that, if no work or documents are received after issuance of notice, then such application would be treated as abandoned, without further notice, with a liberty to apply afresh.

The Copyright Office would be publishing the list of such applications on weekly a basis, on its website every Monday.

This initiative regarding the publication of copyright applications is an incredible move towards digitization and transparency. This attempt of following the procedure of giving notice under the said rule would definitely ease the procedure related to the Registration of Copyright in India.
The public notice dated December 04, 2017 can be accessed here.

Indian: Patent Office launches the Official Mobile APP for Intellectual Property Rights


Mobile applications have become a part of our day to day lives. Everything nowadays is done with just one click. Keeping in mind the technological developments, Office of the Controller General of Patents, Designs and Trade Marks (hereinafter referred to as the ‘CGPDTM’) has launched the Official Mobile APP ‘Intellectual Property India’ for intellectual property rights. The App can be downloaded from their official website ipindia.gov.in or from Google Playstore.

The App will provide information related to Patent Office, Designs Wing of the Patent Office, Trade Marks Registry, Geographical Indications Registry, Copyright Office, Semiconductor Integrated Circuits Layout-Design Registry & Rajiv Gandhi National Institute of Intellectual Property Management. Even though utilities like updates on Application Status, relevant Acts and Rules, Searches, etc, that are on offer on the App can already be availed directly on the IP India website, the launch of the App certainly makes the process more user friendly for the stakeholders, and goes a long way to demonstrate the current Government’s objective of promoting the Digital India Programme.   

India: DRDO unit and Uttarakhand Government amalgamate for IPR protection


Pursuant to the Memorandum of Understanding executed between the Defense Institute of Bio-Energy Research (DIBER), a unit of the DRDO and Uttarakhand Research Circle (URC), a division of the state forest department, in June 2017, followed by several dialogues and extensive research, both the aforesaid organizations have collaborated and agreed upon to apply for IPR protection for Kasani considered to be a rich source of carbohydrate and proteins, besides having anti-diabetic and anti-oxidant properties.

Kasani (Cichorium Intybus) commonly called Kasni, and more popularly known as “syrup of wild cherries” (Chicory) in European Countries is a widely grown herb throughout India. It possesses blood purifying properties and is also a liver stimulant and is helpful in treatment of diabetes, asthma, blood pressure, liver and kidney diseases.

The wonder herb ‘Kasani’ currently is widely used and various drug firms prepare it for their products. According to recent reports, URC has sold more than a lakh Kasani plants to buyers from different sectors in different parts of the country.

In a statement to the Times of India, Sajiv Chaturvedi, head of Uttarakhand Research Circle said, that "After we get patents of these species, nobody will be able to exploit products made from these. The benefits will also be shared with local communities."

The Kasani project is being funded under collaborative research provision of the Compensatory Afforestation Fund Management and Planning Authority, wherein the forest department is facilitating manpower, field visits and traditional knowledge whereas DIBER is contributing by conducting scientific research mon medicinal plants.

Currently, DIBER is also conducting research on Vajradanti (potentilla fulgens) used to treat teeth and gum related problems.

Source-https://timesofindia.indiatimes.com/city/dehradun/ukhand-to-apply-for-patent-of-wonder-herb-after-drdo-unit-validates-medicinal-properties/articleshow/62233998.cms

India: Justice (Retd.) Manmohan Singh appointed as the Chairman of Intellectual Property Appellate Board



Justice (Retd.) Manmohan Singh, formerly, Judge, Delhi High Court has now been appointed to the post of Chairman, Intellectual Property Appellate Board (hereinafter referred to as the ‘IPAB’).

Born on September 22, 1954, Justice Manmohan Singh enrolled as an advocate with Bar Council of Delhi on August 12, 1980. In the beginning of his career, he actively practiced on the original side of the Delhi High Court for about nine years.  From 1990 onwards, Justice Manmohan Singh started practicing independently and dealt with cases relating to all branches of law in the Delhi High Court as well as Supreme Court. Due to his expertise in the field of IPR and rich experience of dealing with cases arising under Trade Marks Act and Copyright Act, Justice Manmohan Singh, even before his elevation, had participated in various National and International seminars and presented a number of papers on different subjects.  Hard work, sound knowledge of law and legal acumen possessed by Justice Manmohan Singh enabled him to develop a large practice. He was appointed as an Additional Judge of the Delhi High Court on April 11, 2008 and as a permanent Judge on July 6, 2011.

It is clear from the judgments of Justice Manmohan Singh that he is not only cognizant of the social realities but also is extremely gifted in the application of law, both in letter and in spirit. Having religiously maintained and scrupulously sustained the dignity, sincerity and nobility of the legal profession while he was in the Bar, Justice Manmohan Singh continued the same on the Bench with amazing work ethic, dedication and commitment to the cause of justice.

India: National Science Centre: Innovation Festival 2018

Realizing the importance of Innovation and the impact of experimentation and scientific method in shaping logical thinking among our community, the National Science Centre is organizing Innovation Festival during 20th to 21st January, 2018. It aims to foster a passion and aptitude for science and technology and to provide a unique platform to Innovative and creative Innovators.

The Innovation Festival would have-
A.    Innovation Fair
B.     Make it at Science Centre
a.      Art
b.      Sculpture
c.      Build from Scrap
C.     Creative Robo Design
D.    Innovative Challenges
E.     Family Science Quiz
F.      Popular Science Lecture
G.    Idea Contest

Innovation Festival is open ended, encouraging and generous in Spirit. It is about participation, not competition. The Festival is an all age showcase and celebration of Invention, creativity and resourcefulness. This is a place to meet and interact with likeminded innovators from different walks of life. It will support discovery and exploration while introducing new tools for advance design. Other objectives are fostering creativity in people and to make them agent of change in their personal life and their community.

 General Schedule of Events are as follows:

Event
Date
Time
a.
Inauguration followed by Popular
Lecture by eminent person
20th January, 2018
11.00    AM   to 12.00
Noon
b.
Innovation Fair
20th  to 21st January, 2018
10.00 AM to 4.00 PM
c.
Creative Robo Design
21st January, 2018
10.00 AM to 3.00 PM
d.
Make it at Science centre
a)   Art
b)    Sculpture
c)   Build from Scrap
20th  to 21st January, 2018
10.00 AM to 4.00 PM
e.
On    the    spot    Design    Contest/
Innovative Challenges (Open for families)
21st January, 2018
10.30 AM to 12.30 PM
f.
Family Science Quiz
21st  January, 2018
2.00 PM to 4.00 PM
g.
Idea Contest
Idea can be dropped in Box kept at Fair 20th  to 21st  January, 2018 ( Afternoon)

h.
Valediction
21st  January, 2018
4.00 PM onwards


Venue & Duration of the Fair:
Period: From January 20th, 2018, to January 21st, 2018
Timing: 10.00a.m. To 4.00 p.m.
Venue: fairground area of National Science Centre.
Near Gate No. 1, Bhairon Road,
Pragati Maidan, New Delhi, Delhi 110001

“IP4kids, a CSR initiative of S. S. Rana & Co., will also be participating in the said event, in an effort to promote IP awareness amongst kids & young innovators