IP NEWS WEEKLY UPDATE – 9 FEB 2022
Moonshine Technology Pvt Ltd v. Ticktok Games Pvt Ltd
The Plaintiff initiated the suit against the defendant for the use of the mark ‘BAAZI’. The plaintiff claimed its marks containing the term BAAZI to be well- known and to have attained worldwide recognition. The Plaintiff alleged that the Defendant was a subsequent dishonest adopter of the mark BAAZI especially in relation to gaming services. The Plaintiff had also established that the Defendant was a direct competitor to the Plaintiff’s company as the Director of the Defendant company had been a customer of Plaintiff and claims that the usage by the Defendant were passing off the goodwill and reputation of Plaintiff’s services. The Plaintiffs prayed for restraining the Defendants from using the mark “BAAZI” in their services. The Court assessed the credentials of the Petitioner’s services and found a revenue of about Rs. 72 crores at an expenditure of nearly Rs. 32 crores. Thus, it was concluded that prima facie, the word “BAAZI” had attained a brand distinctly associated with Plaintiff and the Court ruled that the Defendants are restrained from using or attempting to use the Plaintiff’s well-known brand and registered mark or any such similar mark till the disposal of the suit.
The makers of Colin and Cuthbert- the Caterpillar Cakes reach an agreement over trademark infringement dispute
Marks & Spencer had accused Aldi over trademark infringement of its Colin, the Caterpillar birthday cake and claimed that the Cuthbert cake created by Aldi could mislead shoppers as it resembles Colin in branding and packaging too. M&S had approached the UK High Court seeking to protect its trademarks in relation to the caterpillar cake. Presently, the companies have entered into a confidential settlement and M&S has withdrawn its suit against Aldi and both the Companies claim that they are happy with the outcome of the settlement.
Nike files Trademark infringement suit against online retailer for sale of NFTs
Nike sued StockX for selling unauthorized images of Nike shoes in the form of non-fungible tokens. Nike claims that the NFTs infringe its trademarks and are likely to confuse consumers. The company has initiated the lawsuit seeking monetary damages and an order blocking the sales of the NFTs. StockX is also accused of misleading the consumers by claiming that the buyers would be able to redeem the tokens for physical versions of the shoes and Nike claims that the buyers’ doubts about the legitimacy of the NFTs have hurt Nike’s business reputation. The battle between fashion brands and NFTs, especially in relation to IP infringement have been in the rise lately.
Manuka honey trademark rejection- Trust to go for an appeal
The Mānuka Charitable Trust, funded by the government is battling to trademark the term Manuka with the object to ensure that the only honey from New Zealand can be called Manuka, but the UK PTO had rejected the registration of the same stating that the UK consumers have an understanding that Manuka honey comes from New Zealand and Australia and not just New Zealand. The trust claims that the registration is an indigenous rights issue and the word Manuka itself is an expression to be honoured and protected. Presently, the trust is planning to go on an appeal against the UK PTO’s decision.
Purdue sues Google for Patent infringement
The Research Foundation has filed a Patent infringement suit against Google claiming that Google developed software for Android phones based on technology created by their researchers which was patented in 2019. The foundation states that its professors and then students had developed a particular technology used to take care of power bugs, which prevent mobile apps from entering sleep mode when not in use and alleges that google engineers developed their own software based on their developed technology which infringes upon their patent. The foundation also claims that it had sent letters to the company informing the infringement which was ignored and Google continued to use the technology. The foundation is presently seeking the Court to award past and future damages.
BlackBerry to sell its patents to Catapult IP for $600 million
The company has announced that it would be selling all of its non-core patents including technologies related to mobile devices, messaging, and wireless networking to Catapult IP Innovations Inc. for $600 million. BlackBerry also states that the transfer of patents will not impact the functioning of BlackBerry products in the market and BlackBerry will also receive a license back to the patents being sold.
Apple Inc v. Wi-LAN Inc
Apple had sued WiLAN in 2014 seeking a ruling that its products did not infringe the patents of WiLan in related to allocating bandwidth in wireless network and WiLAN countered the same with claims that Apple’s products such as iPhone 5 and 6 infringe their patents by the usage of the LTE wireless technology. The Court ruled that there was an infringement and awarded $145 million in damages in 2018 and the decision in relation to infringement was later upheld by the U.S. District Court. But the damages award was modified stating that it was based on flawed expert opinions and the jury awarded Apple $85 million after the retrial. Apple later requested the Federal Circuit to remove the award on various grounds. Presently, the Court has ruled that another trial would take place to determine damages in the case.
Lenovo v. Monavo
Lenovo Limited has filed a Notice of opposition with the Trademark Trial Board claiming that another Chinese firm has proposed registration of the mark MONAVO and states that the registration of the same will cause confusion with its own mark. The company requests the TTAB to sustain its opposition and refuse registration of the mark MONAVO. Lenovo states that it has two registrations related to its mark in Class 9 and that the mark MONAVO is used in connection with goods that are identical or closely related to the goods and services that are linked to Lenovo’s mark or that are within Lenovo’s reasonable zone of expansion.
New IP legislation to come into force in Mauritius
Mauritius published its new IP Act, 2019 which is set to come into force in February 2022. The object of the new legislation is to modernize IP law and bring it into line with the international standards. Accordingly to the new act there will be three separate bodies to look into IP matters such as the Intellectual Property Council which plays the role of an advisory body, the Industrial Property Office and the Industrial Property Tribunal dealing with the appeals from the registry. Amendments have also been made to provisions in relation to patents, utility models, industrial designs, layout designs, plant varieties and trademarks.
Schaeffler Technologies Ag & Co v. Gangason Enterprises
The suit was filed by the plaintiff seeking permanent injunction against the defendant in respect of infringement of the plaintiff’s registered trademarks. It is claimed that the plaintiff is one of the world’s leading suppliers of automation and related products and there are various trademarks of the plaintiff that has been registered in India from 1962 under various classes. The plaintiff also states that the defendant is also engaged in the business of trading in engine oil and other lubricants and it came to the knowledge of the plaintiff that the defendant has also filed trademark application in respect of the marks “FAG” and “GANGASON FAG LUBE” which are identical/ similar to that of the plaintiff. Upon comparison of the marks of the plaintiff and defendant, the court opined that a prima facie case has been made out by the plaintiff and the defendant is restrained from involving in any activities bearing the marks in question and the Defendant is directed to delist and remove the web pages bearing the impugned mark until the next date of hearing.
Agastya Legal LLP vs Agastyas Legal Associates LLP
The plaintiff is legal firm involved in providing legal services and the plaintiff uses its mark and trade name since 2019. The plaintiff claims that the defendant is providing legal services under identical Trademarks and Trade name bearing ‘AGASTYA’S LEGAL ‘. The plaintiff also claims to have conceived, adopted and registered the trademark and to have started using the same since 2019 in class 45. The plaintiff states that it came to know that the defendant is providing similar services under identical Trade Mark recently and immediately sent letter to the defendant and requested to change the name of their firm as the same amounts to infringement and passing off of the trademark/ name belonging to the plaintiff. It is also stated that the defendant sent reply to the letter of the plaintiff but instead of refraining from using the trademark, it started using the impugned trademark on large scale on social sites. Presently, the suit is decreed in favour of the plaintiff and against the defendant and the, defendant and related parties are permanently restrained to use the trademark “AGASTYA’S LEGAL” or any such deceptively similar trademark in any manner and by any means / modes.
M/S Shuchita Prakashan Private Limited v. M/S Academic Association
The suit was initiated by the Marketing Manager of the plaintiff company seeking permanent injunction for restraining the defendant from infringement of trademark and passing of. The plaintiff claims to be a private limited company dealing in publication business and engaged in the publication and sale of books, guides, printed matter and other publications since 1991 and that it has adopted the trademark ‘SCANNER’ under Class16 in respect of books, printed matter and publications which is still subsisting. It is also claimed that the plaintiff is also the registered proprietor of trademarks ‘SCANNER CLASSES’, ‘SCANNSHORT’, ‘SCANNSOL’ and ‘SCANNPOINT’ and ‘SCANNON’ and that the turnover of the plaintiff runs into crores of rupees and substantial amount is spent by the plaintiff in sale promotion and advertisement for the trademark ‘SCANNER’. It has further been claimed that in June 2019, the plaintiff came to know that the defendant is publishing and selling books/guides under the trademark/trade label ‘WBCS SCANNER’ in which WBCS is written in small font while ‘SCANNER’ is in large font and a legal notice was issued to the defendant calling upon to refrain from using the impugned trademark containing the words ‘SCANNER’ but in reply the defendant denied to comply with the notice. It was ruled by the court that the impugned mark is deceptively similar to that of the plaintiff and the defendants and related parties were ordered to be restrained from involving in any activity carrying the impugned mark in relation to goods under Class 16.
GSK announces settlement of patent dispute between ViiV Healthcare and Gilead Sciences:
ViiV Healthcare, a specialist HIV company, majority-owned by GSK accused that Gilead’s Biktarvy infringed some of the patents linked to dolutegravir. Lawsuits were initiated in the US, UK, Ireland, France, Japan, Germany, Korea, Canada and Australia, which are now set to be withdrawn as a result of the settlement. The settlement deal also comprises a covenant to not impose any patents of ViiV Healthcare, GSK against Gilead linked to any previous or future claims of infringement regarding Biktarvy.