IPR NEWS – WEEKLY UPDATES FROM 1ST AUG-6TH AUG
Special drive for disposal of IP Disputes
Marking the 75th anniversary of India’s independence the Government of India has launched the ‘Azadi Ka Amrit Mahotsav’. As a part of the same, the Office of the Controller General of Patents, Designs & Trade Marks has taken an initiative to run a special drive for disposal of IP disputes wherein parties are encouraged to dispose pending opposition and rectification cases and parties who have already settled their cases amicably are called upon to report to the same to the Registry of Trademarks. The public notice also states that parties are encouraged to settle the disputes amicably utilizing the various alternate mechanisms for dispute resolutions.
Akash Aggarwal v. Flipkart Internet Private Ltd. and Ors.
The plaintiff is engaged in selling of clothes for women under the trade mark “V Tradition” in various e-commerce platforms and have alleged that the defendant encourages and allows unauthorized third party sellers to “latch-on” and infringe the plaintiff’s registered mark by permitting them to use the plaintiff’s brand name, photographs and designs to list their products in Flipkart using the latching on feature through the Opportunities option. The Court on 2nd August 2022, adjudicated that permitting third party sellers to “latch-on” to the best seller’s trademark results in undue advantage to the third party sellers thereby discarding the reputation and goodwill built by the plaintiff. The Court further opined that such an act constitutes as “passing off” and held that balance of convenience is in favor of the plaintiff and directed Flipkart to disable the “latching-on” feature on the plaintiff’s trademark and also restrained third party users to misuse the plaintiff’s mark by disabling their URLs.
Can Artificial Intelligence (Ai) Be Accepted As An “Inventor”?
In the case Thaler v. Vidal, The US Federal Circuit on 5th August 2022, upheld the decision of the U.S. District Court for the Eastern District of Virginia in the case of Stephen Thaler V. Andrew Hirshfeld, that AI cannot be accepted and qualified as an “Inventor” under the Patent Act (35 U.S. Code). The patent application contained “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) as the sole inventor for the invention of food container and a light beacon. The Court followed the rule of literal interpretation and said that “inventors must be natural persons, that is, human beings”. The question regarding the extent of human involvement required to apply for a patent for an invention created by AI has come into surface after the said judgment.
Sona BLW Precision Forgings Ltd. v. Sonae EV Private Limited
The plaintiff is a part of the famous “SONA Group” and is the owner of the trademark/ trade name ‘SONA’ and its derivatives. In 2019, the plaintiff company had acquired a company called ‘Comstar Automotive Technologies Private Limited’ and was engaged in the making of Electric Vehicles (EV). The plaintiff filed a suit against the defendant who is engaged in the making of EV charging stations and electric two-wheelers which is yet to be launched for use of trademark ‘SONAE’ because it would lead to infringement of plaintiff’s mark ‘SONA; as well as passing off and misrepresentation of the marks. The Court observed that the products of plaintiff and defendant are not distinct and mere addling of “e” at the end of “SONA” by the defendant will cause confusion in minds of consumers that the plaintiff has now expanded their business to Electric two-wheelers. The balance of convenience is in favor of the plaintiff because of its worldwide presence and reputation and therefore the Court directed for absolute and permanent injunction and restrained the defendant from use of the mark ‘SONAE’.
Project For Registering Pashmina Wool Under GI Act
Ministry of Textiles on 3rd August 2022, have released a press release containing the information about the development of a project for registering pashmina wool of Ladakh region under Geographical Indication (GI) Act. A cost of Rs. 15 Lakh has been granted to the Ladakh Autonomous Hill Development Council (LAHDC) for this project and an application for registration of GI has already been filed in November, 2020.
Islamic Book Service v. Abdur Rauf Najeeb Bakali
The plaintiff alleged that the copyright of the work of Maulvi Abdul Aziz titled “Islami Taleemat”, a series of books part I to VIII had been entrusted to them unconditionally and filed a suit against the defendant who started publishing the works of the same author titled “Islamic Studies Grade I to Grade 5″for copyright infringement caused due to the contents of the book being identical. The Delhi High Court held that there is no case of copyright infringement because certain contents of books are bound to be similar because of the incorporation of the teachings given in Quran and Hadees and held that “ nobody can have copyright on these teachings which are written in the Holy Books Quran and Hadees or other Islamic books.” Further the Court held that the plaintiff failed to prove that it had copyright over the book ‘Islamic studies’ or that the defendant had caused any infringement and thereby dismissed the suit and ordered the plaintiff to pay Rs.50000 as cost to the defendant for legal fees and expenses.
Schneider v. Youtube LLC
On 1st August 2022, the San Francisco federal court refused to dismiss the lawsuit brought by Grammy-winning composer Maria Schneider and a group of content creators against YouTube’s policy to protect only the interests of major copyright owners like big music studios and music labels. Maria Schneider had raised the contention on behalf of other small copyright owners that YouTube’s software called the Content ID which scans and disables infringing content is only available to major companies and is not available to individual creators thereby securing only the interest of large copyright owners and permits for the piracy of content by other smaller creators. The Court rejected the arguments of YouTube that the creators failed to show copyright ownership and held that specific claims of copyright infringement is identified and that YouTube has to give answer to the same.
Dabur India Limited v. Ashok Kumar and Ors.
This case focuses on the issue of cyber-squatting whereby there is misuse of the domain names of registered trademark and brand owners by unauthorized persons (with masked identities) who register such marks as domain names and take undue advantage of the Plaintiff’s reputation to sell their products in these domain names with the Plaintiff’s mark. This has led to the creation of confusion to the consumers who get cheated because of these imposter domain names and it becomes difficult to trace such persons due to the feature of anonymity of domain name registrars (DNRs). The Delhi High Court on 3rd August 2022 had put up a list of questions such as manner of verification of DNRs, the working of privacy protect features, how a well-known brand/trademark can contact such DNR, other questions will be addressed in the meeting conducted on 30.8.2022 by the Department of Technology and the National Internet Exchange of India (“NIXI”) and the outcomes shall be reported to the Court on or before 31.8.2022.
Kamdhenu Limited v. Aashiana Rolling Mills
The appellant contents that the decision of the Single Judge is erroneous with regards to the design in question which is a unique design with original surface patterns and double bars attached to steel bars, is that it is prior published design and its registration of the design is contrary to Section 4 of the Designs Act, 2000. The prior published design is an industry standard (British Standard B500C) and many other surface designs have arrived from it. Moreover the appellant’s design ‘KAMDHENU SS 10000 TMT’ was argued to be copied or adopted by Aashiana under the name ‘FRIENDS 500 HD TMT BARS’ because of the similar surface design. The Delhi High Court upheld the decision of the Single Judge stating that design of Kamdhenu was similar to the British standard published in 2005 “Steel for the reinforcement of concrete – Weld able reinforcing steel – Bar, coil and decoiled product – Specification” (BS4449-2005), and that much of the design elements where adopted from the standard in specific nature, thereby making the design not novel and the design is not eligible for registration.
Exxon Mobil Corporation v. Mr. Madhu Paul
The plaintiff company is based in the US and that the marks ‘MOBIL OIL’ and ‘MOBIL’ have been registered in India since 1942 in various word and logo forms which has become a distinctive part of the Plaintiff’s trading name. The plaintiff company is a famous brand consistently appearing in the top ten of the Fortune 500 list and have their trademarks registered in more the 150 countries. The plaintiff contended that the defendant’s Mark ‘MOBIL’ infringes their trademark and served a cease and desist notice on ‘MAHANNAM MOBIL HOUSE. The Court directed the defendant to stop using the name ‘MOBIL’ as part of their trading style and commercial activities because it amounts to trademark infringement and passing off and for non-compliance with the cease and desist order, the defendant has to compensate Rs.3lakhs to the plaintiff for costs incurred.
‘House Of Zana’ v. ‘Zara’
The small business ‘House of Zana’ run by Amber Kotrri has won the trademark infringement litigation filed by fashion giant Zara. Zara contented that the trademarks of the two fashion stores are “conceptually identical” and it will lead to confusion of the consumers, thereby filing suit for removal of the same. The owner of ‘House of Zana’ rebutted that her brand name has no similarity with that of the corporate giant Zara, because the name ‘Zana’ has an Albanian meaning called fairy and it produces ethically sourced clothing and handmade kimonos , thereby arguing that the the differences between the two brands outweigh the similarity. She also pleaded that removal of the branding and trademark will result in the loss of her livelihood and in no way does her business compete with the market of a big brand having its significance all over the world. The Court ruled in favor of the defendant and rejected the claims of Zara.