IP NEWS WEEKLY UPDATE – 20 JAN 2022
HT Media Ltd. v. Pooja Sharma & Ors
Hindustan Times had approached the Delhi High Court seeking permanent injunction and damages for infringement of their Trademark, Trade Name and Copyrights against websites which were portraying to the general public that they were in some way associated with the brand “Shine” which was owned by the company as a platform for providing new opportunities for job seekers, and its website using the brand name in an unauthorized manner. The company claimed that certain rogue websites have been advertising themselves as Shine, mirroring its website and offering paid jobs and job interviews thus using their brand in an unauthorized manner for illegal activities. The company also claimed that, through consumer complaints in relation to losing money to such rouge websites, HT became aware of such activities to which they have taken legal steps immediately. Presently, the Delhi HC has directed the Internet and Telecom service providers to block access to the websites and has directed the Cyber Cell and Economic Offences Wing to investigate the activities of the rogue websites and obtain information pertaining to their true identities and submit its report.
Hermes sues MetaBirkins in relation to the trademark BIRKIN
Hermes has sued the NFT creator Mason Rothschild who has designed the MetaBirkins NFTs. The company claims that that the “METABIRKINS” brand infringes the company’s famous BIRKIN trademark by adding the generic prefix ‘META’ to the famous trademark BIRKIN. It is also claimed that in mid-December, Hermes sent a Cease and Desist letter to Rothschild and persuaded to take down the NFT listings following which the present lawsuit has been initiated.
ACC Limited v. ACC Steel Pvt. Ltd.
The plaintiff claimed that it is one of India’s leading manufacturers of cement and ready mix concrete under the mark ‘ACC’ and the defendants were engaged in the business of selling TMT steel rods using the brand “ACC TMT 500” from 2015 later forming a new company in the name of ACC Steel Private Limited. The Plaintiff also claims that being in the same line of business, the defendant is well aware of the plaintiff’s prior and superior rights in the trademark ACC and that the defendant has adopted a nearly identical mark in terms of visual aspects such as font, colour, etc. as well as phonetic and verbal aspects. The Defendant claims that the products under the rival marks are different and that the Plaintiff’s mark cannot be claimed as a well- known mark. The Court was of the opinion that it prima facie indicates that the defendant has coined his trademark in such a way so as to copy the prominent features of the plaintiff’s trademark with the intention to encash the goodwill and reputation of the Plaintiff. It was ruled that the balance of convenience lies in favour of the plaintiff and if the defendant is permitted to use the mark ‘ACC’ to his goods and services, the plaintiff will be put to irreparable loss which cannot be compensated in terms of money. Thus, the defendant is restrained from using the mark ‘ACC’.
SPOTIFY v. POTIFY
U.S. Software Inc. had filed for trademark applications for the mark POTIFY for downloadable software in relation to medical marijuana dispensaries and doctor’s offices Class 9 and 35, for clothing in Class 25, and creating an online community for discussion of medical marijuana and scheduling of healthcare services in Class 42 which are Opposed by SPOTIFY claiming that the company has registrations under identical classes and that the use of the marks would likely cause confusion with, and dilute, Spotify’s mark. Presently the TTAB rules that the marks SPOTIFY and POTIFY are used for software products, and are so similar in appearance and sound that their commercial impressions are similar even if consumers take different meanings from SPOT and POT.
PUBG maker sues Garena for copyright infringement, also sues Apple and Google for distributing clone apps
Krafton, the developer of the game PUBG has sued its rival Garena Online claiming that the game Free Fire developed by Garena has adopted various aspects including the opening of the game, the gameplay and game structure, the overall colour schemes used in the display, materials and textures as well as the selection and combination of locations, unique objects, weapons and armor have been copied from PUBG. The company also sues Application Stores stating that they distribute applications that infringe its Intellectual Property rights and also names on various platforms including YouTube for hosting videos in relation to the game Free Fire. Krafton also claims that the app stores had been requested to take down the game but had refused to do so and YouTube also refused to remove the infringing videos from its platform. As a response to the present suit, Garena states that the claims of the PUBG developer are groundless.
City of Greenville to pay artist for settlement of Copyright Infringement
An artist specialized in fish and fishing-related art, alleged that the City of Greenville had infringed on his copyrighted series by using one of his images without his knowledge and an infringement suit was initiated by the artist which will now end in a settlement. The city will now pay out about $8,500 to settle the copyright infringement suit considering and wanting to avoid the cost of litigation. It is pertinent to mention here that the artist has filed multiple copyright infringement suits against various companies and most of them were settled out of the court including the case against a beer distributor for using an illustration of a striped bass jumping out of the water to promote an ice-fishing tournament which the artist claimed that his work was unlawfully reproduced and displayed and that the reproduction caused him losses in royalties and licensing revenues, diminishing the value of the illustration.
Verasity announces that its PoV Technology has passed its examination at CNIPA
The company has announced that its Proof of View technology that empowers advertisers to lower their ad spend lost to bots and fake viewers, and enables publishers to get paid faster for the ads has passed its examination at the China National Intellectual Property Administration. The company also states that this technology is the first ad tech module based on blockchain technology to receive patent approval in China. It is also stated that the patent application, which will now be published in China, titled “System and Method for Proof of View via Blockchain.”
M/S Sun TV Network Ltd v. M/S Supergood Films Private Ltd & Ors
Sun TV Network had initiated the suit seeking a declaration of the exclusive copyright of the broadcast of the movie ‘JILLA’ while also granting a permanent injunction against the defendants from exhibiting the film. The defendant Supergood Films had entered into an agreement with United India Exporters to exploit the theatrical release of the film outside India, later an airborne rights was assigned by United Exporters to another party to telecast the movie for all airlines in the entire world excluding India. The contention of the Plaintiff here is that, the telecast rights of the film was assigned in favour of the Plaintiff for valid consideration, and claim that the rights that exist with the Plaintiff cannot be assigned by the Producer to another party. The court held that once Supergood Films have assigned the telecast rights absolutely in favour of the Plaintiff, the former loses those rights and it will be no longer be able to assign the same it does not have to any third party. The court also held that Sun TV was the sole owner of the copyright of the film for broadcasting the same and that the agreement between the producer and the third party will be invalidated. It is also directed to the defendants that a fine of Rs. 1.5 Lakhs be paid to the Plaintiff.
Kamal Raheja v. Abbas Dawoodbhai Kolsawala
The Plaintiff is a manufacturer and merchant of cosmetics, hair care products skin care products, soaps, perfumery, fairness creams, lotions, talcum powder, shampoo, bleaching creams etc. under the name and style of Amaira Herbals and is using the registered trademark MIX BOX for his products. It is also claimed by the Plaintiff that the mark MIX BOX contains an original and unique label/packaging, having distinct artwork and colour combination and that it has been tremendously successful and become a major hit in the market and trade and that it has upon knowledge of the use of the mark by the defendant has initiated the present suit. The court has presently ruled that the Plaintiff has proved by way of comparison that the defendant is selling or manufacturing goods under the trade mark which are deceptively similar to the trademarks of the plaintiff, thus is clearly infringing the plaintiff’s trade mark. The defendant is restrained from infringing the Plaintiff’s Copyright and Trademarks and the Court has also restrained the defendant and his retailers from indulging into any activity using the marks of the Plaintiff. The Plaintiff had also claimed other reliefs for rendition of accounts etc., but the same was not granted as there was no material on record to prove the same.
Puma Se v. Love Garments
The German based MNC has filed the present suit for infringement against Love Garments which is engaged in the business of trading and sale of garments. The company claims that the Defendant has been selling and supplying garments bearing the mark PUMA and PUMA logo without any kind of authorization or prior approval of the Plaintiff. It is also claimed that by adoption of an identical PUMA and PUMA logo in respect of identical goods, the defendant has attempted to derive unfair advantage and cause misrepresentation and the said misrepresentation is bound to cause confusion and deception in the minds of the purchasing public who identify the mark PUMA and PUMA logo, only with the Plaintiff and no one else. The Plaintiff had also supported its claims with evidence and the defendants failed to submit any kind of evidence in their favour due to which a decree of permanent injunction restraining the Defendant from involving in any activity amounting to infringement of the mark was granted in favour of plaintiff.
DFM Foods Ltd. v. Annapurna Agro Industries
The plaintiff is a company engaged in the business of manufacturing and trading of various food items for human consumption and claims to be manufacturing its various goods under the trade mark “CURLS” and “Crax Curls”. It is also claimed that the artistic works I the packaging of the products containing the mark are registered under the Copyright Act too. It is stated that by October, 2020 the plaintiff came to know that the defendant is selling identical goods in identical packaging having identical mark to that of the Plaintiff. Therefore, the plaintiff issued a legal notice calling upon the defendant to desist from using the impugned packaging and mark on their goods. In response, it is stated that the defendant had sent reply which falsely claimed to have never manufactured or sold products in identical packaging or mark as claimed in the notice sent by the plaintiff and that they had no knowledge or information about the products of plaintiff. But the Plaintiff states that as per their knowledge the defendant is still continuing to sell identical goods in identical packaging having identical mark ‘Curls’ thus infringing their trademark. The court opined that from overall facts and circumstances of the case it is clear that the defendant committed the impugned act of infringement willfully and intentionally and an injunction was granted against the Defendant. As far as the damages was concerned, the plaintiff company prayed for damages to the tune of Rs. 3 Lakhs and considering the sale figures of the products of plaintiff Rs. 1.5 Lakhs was awarded in favour of plaintiff to be paid by defendant.
Nicci Gilbert files suit for Copyright infringement against P-Valley
The popular 90’s lead singer has accused the creators of the show P- Valley claiming that the show was a copy of her musical stage play “Soul Kittens Cabaret” which was released on DVD in 2011. It is also stated that, the team had discussed with her regarding creating a musical drama series based on her play and were aware of the script. Presently, the artist requesting a jury trial in the civil suit to hear her case and seeking actual and statutory damages for copyright infringement of her work.
Ericsson sues Apple over Patent infringement
The companies entered into an agreement in 2015 which is now expired and presently, the parties have failed to reach on an agreement in relation to the new license which is the spark for the present lawsuit. Ericsson claims that Apple is currently using its patents for 2G, 3G, and 4G technology without its permission and alleges that Apple is no longer allowed to license Ericsson’s patents pertaining to wireless connectivity in its devices as the 2015 agreement has expired. The company does not specifically claim anything in relation to stopping Apple from using their technologies but is currently seeking compensation.
Approval of The Intellectual Property (Amendment) Bill- Singapore
The Intellectual Property (Amendment) Bill which streamlines the processes involved in Intellectual Property protection has been approved by the Parliament to encourage greater use of intangible assets by companies. The bill has introduced the concept of partial acceptance of the trademark applications even when a portion of the trademark is being rejected. This concept has already been accepted for international trademark applications which is now adopted in the case of national trademark applications too. Another focus of the bill is to improve public access to Patent documents. It is stated that these amendments will refresh and update the IP registration process in Singapore and improve business and contribute to legislative and procedural clarity.