India: National IPR policy approved by the Cabinet

The Indian Cabinet on April 13, 2016 passed India’s first National Intellectual Property Rights (IPR) policy in a bid to promote IP regime and encourage creativity, innovation and entrepreneurship in India. The policy is a vision document that seeks to provide stronger safeguard to IPR in India. By virtue of this policy, from now onwards there will be a proper institutional mechanism in place that will help in incorporating global best practices in the India economy.

The primary objective of the policy is to put in place a legal framework that will encourage the IPR regime and substantially reduce the time taken by the governmental agency to approve a trademark to as less as a month by 2017. The nodal agency for regulating IP rights in the country will be the Department of Industrial Policy and Promotion (DIPP).

The new policy lays down seven basic objectives – 

1. IPR Awareness: Outreach and Promotion – To create public awareness about the economic, social and cultural benefits of IPRs among all sections of the society.
   
   
   It aims to have a nationwide program of promotion with an aim to improve the awareness about the benefits of IPR’s and their value to the rights-holders and the public. Such a kind of program will build an atmosphere where creativity and innovation are encouraged in public and private sectors, R&D centers, industry and academia, leading to generation of protectable IP that can be commercialized. Additionally, it proposes the need to open a national research institute for IPR, to increase outreach.


2. Generation of IPRs – To stimulate Indians to generate material for intellectual property protection.
   
   
   It recognizes the large talent pool that the country has, and a need to tap this fertile knowledge resource and stimulate the creation of IP assets. It recommends a comprehensive baseline survey or IP audit across sectors that will enable assessment and evaluation of the potential in specific sectors.


3. Legal and Legislative Framework – To have strong and effective laws that balances the interests of rights owners with lager public interest.
   
   
   The existing IP laws in India was either enacted or revised after the TRIPS Agreement and are fully compliant with it. These laws along with various judicial decisions provide for a stable and effective legal framework for protection and promotion of IPRs. It provides for renewed commitment to the Doha Declaration on TRIPS Agreement and Public Health.


4. Administration and Management – To have a modern and service-oriented administration
   
   
   The offices that administer the different Intellectual Property Rights are the cornerstone of an efficient and balanced IPR system. IPRs now have the twin challenges of making their operations more efficient, streamlined and Cost effective. The administration if the Copyright Act, 1957 and the Semiconductor Integrated Circuits Layout-Design Act, 2000 is being brought under the aegis of DIPP, besides constituting a Cell for IPR Promotion and Management (CIPAM). It will facilitate more effective and synergetic working between various IP offices, as also promotion, creation and commercialization of IP assets.


5. Commercialization of IPR - Create value from protected innovations through commercialization.
   
   
   The value and economic reward for the owners of IP rights comes only from their commercialization. Entrepreneurship should be encouraged so that the financial value of IPRs can be captured. It is necessary to connect investors and IP creators. Another constraint faced is valuation of IP and assessment of the potential of the IPRs for the purpose of marketing it.
   
   
6. Enforcement and Adjudication – To strengthen the enforcement and adjudicatory mechanisms for combating IPR infringement.
   
   
   The need to build respect for IPR among the general public and to sensitize the inventors and creators of IP on measures for protection and enforcement of their rights. At the same time, there is also a need to build the capacity of the enforcement agencies at various levels, including strengthening of IPR cells in State police forces.


7. Human Capital Development – To strengthen and expand human resources, institutions and capacities for teaching, research and skill building in IPRs.
   
   
   In order to harness the full potential of IPRs for economic growth, it is essential to develop an increasing pool of IPR professionals and experts in spheres such as policy and law, strategy development, administration and enforcement. 

India: Highlights of the Patent (Amendment) Rules, 2016

The Indian government has brought into force its Patents (Amendment) Rules 2016, a modification of its existing rules. The amendments, which entered into force, May 16, follow the publication of draft rules published in November last year.

1. Rule 2: Clause (db) inserted
   This is an important insertion in Rule 2, as it paves the way for requesting expedited examination of patents, and lays the foundation for the newly inserted Rule 24C.


2. Rule 24C introduced providing Form 18A for Expedited Examination
   
   The introduction of Form 18A sets up the mechanism for an applicant to file a request for an expedited examination. As per rule 24 (C), an applicant may file a request for expedite examination if:
• he/she has indicated India as the competent International Searching Authority or elected India as an International Preliminary Examining Authority; or
• applicant is a start-up


The introduction of Rule 24C is a major step towards expediting the patent prosecution process by laying down clear provisions with regard to the grounds on which it can be done, payment of fees, special provisions focusing on startups, etc. Further, a request for examination filed under rule 24B may be converted to a request for expedited examination.


The First Examination Report (FER) in case of expedited examination shall be issued in 3 and half months and the reply to the office action shall be filed within 6 months from the date of issuance of FER. The Controller shall dispose off the application within 3 months of receiving FER response.  


3. Proviso added to Rule 7(4) and Sub-Rule 4A added to Rule 7: Refund of Fee
   The Proviso added to sub-rule 4 of Rule 7 allows refund of excess fee in cases where fee was paid more than once during the online filing process, for the same proceeding. Sub-rule 4A also added after sub-rule 4 provides for refund upon withdrawal of application on a request made by the applicant on Form 29.


4. Sub-rule (2) to Rule 8 amended – Form 30 introduced where no form specified
   The amended Sub-rule (2) provides for Form 30 to be used where no form has been specified for any purpose.


5. Rule 26 amended: Request for withdrawal on Form 29
   This amendment lays down that request for withdrawal of application shall be made in Form 29, and not “in writing”.


6. Rule 6 amended: Leaving & Serving Documents –Online filing; Delay in filing to be condoned only under limited circumstances
   As per inserted sub-rule 1A, electronic transmission is the only way through which a patent agent can file the required documents (which are authenticated) before the Controller, thereby providing for more efficient transmission, cataloguing, and preservation of the documents. The proviso imposes an obligation to file the electronically submitted documents in original within 15 days.
   
   
   Under sub-rule 6, the reasons for condonation of delay are limited to war, revolution, civil disorder, strike, natural calamity, and a general unavailability of electronic communication services. There is a further requirement that the situation must have been of such severity as to disrupt the normal communication in that area. This provision ensures that delay is not condoned for superficial reasons. Sub-rule 7 clarifies that the burden of proof of authenticity of documents shall lie with the one who files.


7. Rule 28 amended: Hearing through video-conference in cases of anticipation by prior publication
   The amendment allowing hearing in anticipation matters under section 13 to be held through video-conferencing is a welcome addition as it provides for an inclusive and efficient procedure for interested parties who are based outside India or not available to attend the hearing.


8. Rule 5 amended: Address for service
   Rule 5 now clarifies that every person/applicant shall furnish a postal address in India, along with an e-mail address to the Controller. The obligation on the Patent agent to provide a mobile number registered in India makes this provision more stringent and effective.


9. Rule 13 & 14 amended: Writing claims and amendments to specifications – procedure clarified
   In Rule 13, it has been directed to include the reference number of drawings in the claims as well. The amendment to Rule 14, with regard to amendments to specifications has been elaborated upon, and the procedure in this respect is further clarified.


10. Rule 135 (1) amended: Power of Attorney – Time period
    From the date of filing of application, a time period of 3 months is given for filing of Power of Attorney. Once the prescribed time period of 3 months is lapsed then no action shall be taken.


11. Rule 24B (6) amended: Reply to office action – time period reduced
    The time period for putting an application in order for grant is reduced to 6 months from the earlier time period of 12 months. However, the Office by a further notification on May 18, 2016 clarified that the time for replying to FER is 6 months for the cases where the FER is issued on or after May 16, 2016. Hence the time period for filing response to FER for cases where it has been issued before May 16, 2016 shall remain 12 months from the date on which the same was issued.


12. Rule 129A inserted: Restriction on adjournment of hearings 
    An applicant seeking an adjournment has to make a request for hearing with reasonable cause, at least three days before the date of hearing, and no party under no circumstances shall be given more than two adjournments and each adjournment shall not be for more than thirty days. 

Source: http://ipindia.nic.in/iponew/publicNotice_18May2016.pdf

http://ipindia.nic.in/IPActs_Rules/Patent_%28Amendment%29Rules_2016_16May2016.pdf

India: First Examination Report to be issued within 18 months

As per the news reported in India’s daily Economic Times, the Department of Industrial Policy and Promotions is aiming to reduce the time taken to issue the First Examination Report (FER) to 18 months. Currently, it takes around 5-7 years to receive FER for a patent application. Similarly, for trademark applications, examination time was 13 months which is now reduced to 8 months and it is aimed to further reduce the same to 1 month.

In order to achieve the desired outcome, the government has taken up many steps such as- hiring more examiners, fixing monthly, quarterly, half-yearly, annual benchmarks. The Government has currently 130 examiners of patents and designs and hired 458 new examiners. Also it in the process of hiring 263 examiners on contract.

Further in regard to “Start-up India”, the Patent Rules are being amended to facilitate fast-tracking examination of patent application by Start-ups and 80 lawyers are finalized who would provide free consultation and legal advice to start-ups.

Source: 

http://articles.economictimes.indiatimes.com/2016-04-25/news/72598687_1_patent-applications-examination-trademarks

   

India: GMR Sports challenges Center’s levy of Service Tax for IPL matches

IPL, being a cash rich event, has always found itself in controversies including a recent one, on levying of taxes on the retailing of tickets. An interim order was passed in the case of GMR Sports Private Ltd vs. Union of India & Others (WP (C) No. 3793/2016), granting ad-interim ex-parte relief on the application filed on the levy of Service Tax on the sale of tickets for the Indian Premier League (IPL) Cricket Tournament. The Delhi High Court ruled that GMR Sports should continue to deposit service tax with the government during the pendency of the writ petition. In an interim order, the Court held that these taxes shall be subject to final outcome of the petition.  

Facts and Background of the Case

The dispute is about the levy of Service Tax on the sale of tickets for the Indian Premium League (IPL) Cricket Tournament, by virtue of the amendments to the Finance Act, 1994 with Service Tax Notification issued and Circular No. 334/5/2015-TRU issued.  

Submission by GMR. (Petitioner)

1. The grounds on which the challenge is made was for the levy of Service Tax on the sale of tickets for the Indian Premium League (IPL) Cricket Tournament. The Service Tax should be not leviable on ‘entertainment’ which in terms of Section 10(j) (now omitted) included sporting events. Also under Section 2(i) of the Delhi Entertainments and Betting Tax Act, 1996 the expression 'entertainment' includes ‘games, sport or race’. It is, therefore, contended that tax on entertainment, which the Petitioner is in any event paying, is within the exclusive domain of the State as per List II of the 7th Schedule to the Constitution.
2. That in respect of the same taxable event viz., there cannot be a levy of service tax by the Union on the sale of tickets and a levy of entertainment tax by the State. 
3. That the ground of the challenge is of legislative competence.
4. That in terms of the Agreement entered into between GMR and the Board of Control for Cricket in India (BCCI) there is an obligation on the Petitioner to provide BCCI 20% free tickets in every category.
5. It is submitted that the Petitioner should not be made liable to pay Service Tax on such ‘free tickets’. 
6. The sample of the Tickets sold were Annexed as evidence with the present petition.  

Held:

Upon the submission made on the issue of providing ‘Free Tickets’, it will require examination of the Agreement between the Petitioner and the BCCI in some detail. On another contention, while reserving the rights and contentions of both the parties at the final hearing of the writ petition, the Court took the view that this is the only interim order that can be passed at this stage. The Court directed that the Service Tax as collected and deposited by the Petitioner during the pendency of the present writ petition will be subject to the final outcome of the petition.

Altigreen Propulsion Labs receives the ‘Most Significant Innovation’ award at the IDTechEx Show

Altigreen Propulsion Labs, a Bangalore based company, was the recipient of the Second Electric Vehicle award at the ID TechEx Show held on April 27, 2016 at Berlin. The award was titled ‘Most Significant Innovation’, and it is given to the most significant new innovation in hybrid or pure electric vehicles which also included innovations in components and systems within the vehicles. Amitabh Saran, Founder and CEO received the award on behalf of the company.  

The company’s submission was titled, “HyPixi – Every Car a Hybrid” and the premise of their technology was to build an affordable solution for the developing countries who are suffing under high fuel prices and heavy tailpipe emissions.

This recognition follows another achievement in the company’s history, when they were rewarded for their hard work by getting a spot on the 20 Most Promising Automotive Tech Solutions Providers, a list compiled by CIOReview. CIOReview editorial research team analyzed over 300 companies globally that provide Automotive solutions and shortlisted companies that were at the forefront of tackling customer challenges.

International Mother’s Day, S.S. Rana & Co.

Mother’s Day is a celebration honoring the mother of the family, as well as motherhood, maternal bonds, and the influence of mothers in society. It is celebrated on various days in many parts of the world, most commonly in the months of March or May. The modern celebrations of Mother's Day has been assimilated into Indian culture, and it is celebrated every year on the second Sunday of May. Indians do not celebrate the occasion as a religious event, and it is celebrated primarily in urban centers. The majority of the population still remains unaware of a formal Mother's Day.

We at S.S. Rana & Co, in an effort to spread awareness about Mother’s Day in our country and to promote gender equality and encourage female IP practitioners and paralegals to foray into the mainstream law and legal services celebrate Mother’s day with enthusiasm . There is a conscious effort to achieve gender balance and women invariably make up more than fifty percent of the employees. We acknowledge and appreciate working mothers and all working mothers of our organization were awarded with the title of ‘Corporate Moms’ on the occasion of the Firm’s 25^th Anniversary on September 1, 2014.

Some of the women friendly initiates or policies at S.S. Rana & Co. to help women employees manage their careers and family responsivities more successfully are as follows:

1. No of Women Employees:
We take pride in stating that at present, more than 75 % of the lawyers at S.S. Rana & Co are women. Women also make up more than 50 % of the total employees.
2. Flexible work schedules:
Depending on the requirement of the employee the facility of flexible work timings has been extended to several women employees for reasons including health issues, family commitments, after maternity leave for child care, etc.
3.  Maternity Leave:
Maternity Leave is given for a minimum of 3 months paid, followed by 2-4 months of unpaid leave. After this if required, then in the interests of smooth transition back to the workplace for the first month the concerned employee is allowed to re-join on a half day working basis. Till date the facility of Maternity Leave has been availed by 7 employees in the Office and we are glad to inform that all the women employees joined us back after their maternity leave.
4. Child Care facilities or supports:
The organization provides several pre as well as post pregnancy child care and other facilities to female employees, like:
1. More than 3 months leave after maternity for proper mother and child care
2. Flexible working schedules
3. Work from home facilities
4. Drop facility after work
5. Education allowances for child education

India: Highest Damages Awarded By Delhi High Court in IP Matters

Delhi High Court Grants Punitive Damages of Rs. 1 Crore

The Delhi High Court in Cartier International AG and Ors. v. Gaurav Bhatia and Ors. [2016 (65) PTC 168 Del] has ruled in favor of the Plaintiffs, Cartier International AG and Others by awarding punitive damages of Rs. 10,000,000 (151000 $ Approx.) in the Plaintiffs’ favor. The Plaintiffs have also been granted a permanent injunction restraining the Defendants from selling or offering for sale any goods bearing the Trade Marks of the Plaintiffs or any other similar marks. 

Brief Background

The Plaintiffs are a part of the Richemont Group which is a group of companies that are considered to be world leaders in the field of luxury goods, with particular strengths in watches, writing instruments, jewellery, leather, accessories and clothing. The Plaintiffs are engaged in the manufacture and sale of a wide range of luxury products under their respective trademarks. The Plaintiffs filed the suit before the Delhi High Court seeking permanent injunction, restraining infringement of trademark, passing off, damages etc. It was alleged by the Plaintiffs that the Defendants were operating an e-commerce website www.digaaz.com where they were offering counterfeit lifestyle and fashion products for sale bearing the trademarks and logos of various luxury brands, including those of the Plaintiffs.

It is pertinent to note that The Defendants did not file any written statement in the suit and were proceeded ex-parte.

Major Contentions by Cartier International AG (Plaintiffs)

1. The Plaintiffs have successfully secured registrations of their respective trademarks and the names of their prominent product collections.
2. Due to long and continuous use with extensive sales spanning a wide geographical area, the Plaintiffs' products have acquired tremendous reputation and goodwill amongst consumers and the members of the trade all over the world.
3. On account of the plaintiffs' overwhelming presence and activities all over the world including in India, knowledge and awareness of the suit trademarks is implicit and use thereof by any other entity is bound to create, a connection, affiliation or association with the Plaintiffs, in the minds of the consumer and the trade.
4. The Defendants operate an ecommerce website www.digaaz.com where they offer lifestyle and fashion products for sale. The Defendants' website www.digaaz.com has been found to be offering for sale and supplying counterfeit products bearing several registered trademarks of the Plaintiffs including the suit trademarks.
5. In February, 2014 the Plaintiffs learnt from MONTBLANC, another company in the Richemont Group, that the Defendants were selling and supplying counterfeit products of various luxury brands including those of the Plaintiffs on their website. The Plaintiffs issued cease and desist notices to the Defendants on 20th February, 2014 to which there was no response.
6. The following factors establish that the Defendants are offering counterfeit products bearing the suit trademarks for sale on their website:
1. The Plaintiffs do not sell their products at discounted rates whereas the Defendants are offering discounts as high as 95% on the products on their website.
2. None of the Plaintiffs have ever authorized the Defendants to deal in products under their respective trademarks.
3. Some of the products bearing the suit Trademarks being offered for sale on the Defendants' website do not have a corresponding original product being sold by the Plaintiffs.
7. The Defendants has falsely claimed on their website www.digaaz.com that: 
   "At Digaaz.com, we strive to bring to you the latest in lifestyle and consumer merchandise products through lively sales and aspiring deals and discounts. We cover world's most coveted brands and guarantee 100% authenticity to offer you safe and secure shopping."
8. The Defendants' website has been operational for at least 3 years as the domain name <www.digaaz.com> was created on 3rd April, 2012.The website www.digaaz.com was operational as early as at least 29th June, 2012 which is evidenced by internet extracts from www.web.archive.org.
9. The volume of counterfeit goods sold by the Defendants demonstrates that the defendants are seasoned infringers and counterfeiters with a regular supply of counterfeit goods. Many of the right holders of other brands have instituted proceedings against the Defendants and have obtained orders restraining the Defendants from selling counterfeit products bearing their respective trademarks and logos.
10. Numerous consumer complaints lodged against the defendants show that hundreds of consumers have been duped by the Defendants into believing that the goods offered on its website are genuine goods of various luxury brands.
11. A complaint had been lodged before the Cyber Crime Cell of the Chandigarh Police. During the investigation the Cyber Cell ascertained that apart from the website www.digaaz.com, the Defendants were also selling their counterfeit products on the website www.watchcartz.com, and www.luxecart.com. On 24th September, 2014 raids were conducted at the Defendants' premises in Chandigarh where thousands of counterfeit products bearing the trademarks of various luxury brands including the suit trademarks were seized.
12. The Plaintiffs have suffered irreparable loss and injury on account of the Defendants' acts of selling counterfeit products bearing the Plaintiffs' trademarks. And that the following factors to be considered by assessing the damages payable by the Defendants to the Plaintiffs:
1. Actual illegal and unfair profits earned by the Defendants from selling counterfeit products bearing the suit trademarks of the Plaintiffs;
2. Actual revenue lost by the Plaintiffs due to loss of sales of their original products on account of the illegal/infringing activities of the Defendants;
3. Damage to Plaintiffs' valuable reputation and goodwill due to the availability of spurious products of the Defendants in the market;
4. Punitive damages; and
5. Attorney fees, costs and legal expenses.
13. Defendants have made massive illegal profits from the sale of counterfeit products and all such profits convert into losses suffered by the Plaintiffs since the success of the Defendants' e-commerce websites and the sale of counterfeit goods on the websites are attributable to the immense reputation of the Plaintiffs' brands.

Contentions by Gaurav Bhatia and Ors. (Defendants)

The Defendants did not file any written statement in the suit. They also failed to admit or deny the documents of the Plaintiffs.

Methodology of Computation of Damages

The following are the methods that were suggested to be used to compute damage by the Plaintiffs:

1. The number of visitors to the Defendants' website www.digaaz.com can be estimated at around 100,000 visitors or hits per month. The Defendants' website can be estimated to have received approximately 36 lakh hits in three years that this website was operational. If it is assumed that as little as 1% of these hits converted into sales and that each such sale was for Rs.10,000/- the turnover of this website for the three years that it has been operational would have been at least Rs.36 crores. Even if 10% of this turnover is attributed to the revenue generated from the sale of counterfeit products bearing any of the suit trademarks then the illegal profits made by the Defendants' under the suit trademarks would amount to Rs. 3.6 Crores.
2. Another way which can be used for computing damages payable by the Defendants is by assessing the number of counterfeit products which are likely to have been sold by the Defendants since at least June 2012. This can be assessed using the recording of a telephone conversation which took place in August 2013 between the Defendants' sales representative with a customer who had purchased a counterfeit product bearing the MONTBLANC trademark from the Defendants. In the transcript, the sales representative confirms that the Defendants have sold more than 1000 MONTBLANC pens through the website www.digaaz.com. Even though over 2 years have lapsed since this telecom when the Defendants confirmed that they had already sold 1000 counterfeit MONTBLANC pens, using their sales figure as a basis, if it is presumed that the Defendants have till date sold at least 1000 counterfeit products under each of the brands amounting to a total of 4000 counterfeit products bearing the suit trademarks and if the cost of each of such product is estimated to be Rs. 63,000/- (being the average price quoted by the defendants for the counterfeit products under the suit trademarks being offered for sale on the website www.digaaz.com) the total illegal turnover of this website from the sale of counterfeit products under the suit trademarks amounts to Rs. 25 Crores.
3. The Defendants were found in custody of thousands and thousands of counterfeit products including those bearing the suit trademarks on September 24, 2014. Over 730 watches were recovered from the defendants' premises and around one third of these depicted the suit trademarks. The average price quoted for counterfeit watches bearing the suit trademarks being offered for sale on the defendants' website www.digaaz.com was Rs. 75,000 and it therefore stands to reason that the defendants were found in possession of approximately 1.82 crore worth of counterfeit watches alone under the suit trademarks on a single day.

Observation/Decision of the Court

1. The evidence of the plaintiffs and documents filed by the plaintiffs were deemed to be admitted under the provision of Order XII Rule 2-A CPC.
2. The adoption and use of the suit trademarks by the Defendants in relation to the counterfeit products being offered for sale on their website amounts to infringement of registered trade mark Nos.253395, 98671, 551274, 1246395, 774844, 1342959, 774842, 551999 and 202130 in class 14 and trademark Nos.289891 and 1248639 in class 18.
3. The purchasing public is bound to assume some sort of association or connection between the Defendants' products and the Plaintiffs thereby leading to confusion as to the source of origin of the Defendants' goods and passing off of the Defendants' goods as those of the Plaintiffs.
4. The Defendants have used the Plaintiffs' registered trademarks on and/or in relation to their goods with a view to trade their business on the reputation and goodwill enjoyed by the Plaintiffs.
5. The use of the same suit trademarks along with the copying of various styles of the Plaintiffs are a tell-tale sign of the Defendants' attempts at deception.
6. The Defendants have been found to be offering for sale and supplying massive quantities of counterfeit products bearing several registered trademarks of various luxury brands including the plaintiffs on their website www.digaaz.com. Many third party luxury brands including Montblanc, Louis Vuitton and Burberry have instituted proceedings against the Defendants and obtained injunction orders from this Court restraining the defendants from selling counterfeit products bearing their respective trademarks and logos.
7. The use of the suit trademarks by the Defendants, on their counterfeit products amounts to a deliberate and willful infringement of the Plaintiffs' proprietary rights by the Defendants. The Plaintiffs have made classic case of infringement of trademark and passing off.

Held:

The Court passed a permanent injunction restraining the Defendants from using the Plaintiffs’ trademarks or any deceptive or confusingly similar trademark. The Defendants deliberately stayed away from the proceedings and did not provide accounts of their illegal profits. The Court held that a party who chooses to stay away from court proceedings must, thus, suffer the consequences of damages as stated and set out by the Plaintiffs in such cases. The Court, relying on the principle laid down in the case of Time Incorporated v. Lokesh Srivastava & Anr., granted damages worth of Rs. 1 crore (151000 $ Approx.) to the plaintiffs.

India: Trademark Infringement Case - London Dairy Vs. LondonDerry

 London Dairy’s claim melts!

The Bombay High Court has recently refused to grant an injunction on trade mark infringement and passingoff where the only basis for the application for injunction was the existence of phonetic similarity between the marks of the Defendants and the Plaintiff in International Foodstuffs Co LLC v. Parle Products Private Limited and Anr. (Notice of Motion No. 2624 of 2012 in Suit No. 2497 of 2012). The Bombay High Court observed that since phonetic similarity was the only basis of this action a strong prima-facie case has not been made out and there are not sufficient grounds to warrant an injunction in favor of the Plaintiff.

Brief Background

The Plaintiff, International Foodstuff Co. LLC is a Dubai-based company which sells various flavors of ice-cream under the mark “LONDON DAIRY”. The mark is used only in respect of, and only of, ice-cream. The Plaintiff is the registrant of the mark “LONDON DAIRY” since 2001 and in 2007 the Plaintiff obtained registration for the label mark which are both registered in Class 30. The Defendant, Parle Products Private Limited, started selling boiled confectionery sweets under the mark “LONDONDERRY” in 2011. The Defendants have used the mark continuously since then and have also applied for registration of the mark, with the application currently pending.

The Plaintiff on learning that the defendant was using the mark, “LONDONDERRY” filed the present petition for an injunction on grounds of trade mark infringement and passing off.

Contentions by International Foodstuff Co. LLC (Plaintiffs)

1. That there is no phonetic distinction between the two marks and the marks cannot possibly be pronounced differently. The plaintiff has a registration in Class 30 which covers the goods for which the Defendants are using the mark.
2. That the Defendants dishonestly adopted the mark “LONDONDERRY”.
3. Unless the Defendants are able to show that their adoption of the mark is bona fide, the injunction must follow, the Plaintiff being a prior registrant of the mark in question and there being no discernible phonetic distinction between the two.
4. The Defendants ought to have conducted a search and if they failed to do so they have only themselves to blame.
5. The Plaintiff manufactures confectionery under another mark “Tiffany” and therefore, the Defendants’ use of “LONDONDERRY” for boiled sweets must be held to be a passing off.

Contentions by Parle Products Private Limited (Defendant)

1. It is not enough to say that because one has registration in a class that includes very many items therefore protection is axiomatically to that mark in respect of all the items in that class, however dissimilar, however disconnected and irrespective of whether or not there is any use of the mark for those other types of goods.
2. Every registrant should be required to be careful to specify the goods within the class, even multiple goods, for which the use is proposed. The Plaintiff has limited their use of the mark to only ice-cream within Class 30.
3. The word “London” is disclaimed and “Dairy” can never enjoy any protection. It is very much a common word. It is publici juris; of public right. No protection attaches to it. Even taken as a whole, “LONDON DAIRY” is not a mark that can ever claim protection.
4. The Plaintiff had no reputation in India to speak of till 2010. There is nothing to indicate that it had so wide an international reputation that it could claim trans-border protection.
5. The Plaintiff is unable to show goodwill and reputation which is one of the three probanda of the ‘classical trinity’ in passing off between 2010 and the time of the Defendants’ adoption of the mark.
6. There are a multitude of surrounding circumstances that must be considered and cannot be possibly be ignored: the packaging, the goods themselves, their price point, the distinct words and stylization, etc.
7. On neither cause of action the Plaintiff has made out a case for grant of injunction.

Observation/Decision of the Court

1. A registration must be read in a reasonable and rationale fashion. The purpose of the statute is not to afford wide ranging protection irrespective of use.
2. The argument that all the goods in a class are ‘cognate’ and ‘allied’ cannot be accepted. Visually there is nothing at all common between the two marks. The Plaintiff’s product is entirely distinct. It is packaged differently. It requires refrigeration. It price point is entirely distinct as well. The Plaintiff’s products are indeed expensive by Indian standards, starting at Rs. 80/- and going only northward from there. There is no possibility at all of any person, however average his intellect or imperfect his recollection, confusing one for the other. When it comes to the question of similarity, the test is one of perception. Like beauty, this lies in the eye of the beholder; in trade mark cases, that of the Judge.
3. It is sufficient to accept that the Plaintiff's registration and rights are in any case restricted to the only goods on which it has used them, i.e., ice-cream, and, should it be able to show so, to others that are commonly linked with ice- cream (such as other ice-cream preparations of some kind or the other). However, this cannot be extended to every single item in Class 30. That would take within its sweep all manner of goods such as sugar confectionery, candies, biscuits, pasta, macaroni, noodles, baking powder, spaghetti, mayonnaise, vinegar, coffee, tea, rice, artificial coffee, bread, pastry and so on.
4. Passing off is an action in deceit, and the Plaintiff must show or demonstrate, at least prima facie for the present purposes, that the Defendants' use and adoption is calculated to deceive, such that purchasers of fifty paise boiled sweets in single serve sachets will imagine they are purchasing a product from the repertoire of a maker of expensive ice-cream. The Court was of the opinion that the Plaintiff had prima facie not been able to show that the adoption of the mark was calculated to deceive.
5. There may certainly be places that vend both; but those are not the only places one finds the Defendants' sweets. In a country where every empty urban space is a business opportunity of some kind, the Defendants' sweet is the kind of thing that one finds sold by street corner vendors, pavement hawkers and so on. None of these are 'outlets' for the Plaintiff's products. No one purchasing a fifty paise sweet manufactured by the Defendants will ever be cast into a state of 'wonderment' about whether this confection has anything whatever to do with the Plaintiff's ice-cream.
6. That the words "London Dairy", when used in relation to ice-cream, might connote the goods of the Plaintiff and the Plaintiff alone. But that is not what the Defendants do. That is not what they do at all. They do not vend or manufacture ice-cream. They vend nothing like it. They are manufacturing a good that falls in the same Class but is entirely distinguishable in every word and in every way except the phonetic. That is surely not enough. What of the visual similarity? The structural? The attendant circumstances? The lack of any meaningful reputation or goodwill? The want of demonstration of deceit or misrepresentation? The very many differences in color, trade dress, the goods themselves and their pricing? Is a court to ignore all these only because of a phonetic similarity?

Held:

In view of the above, the Bombay High Court vide it’s order dated April 11, 2016 held that there is no law that says that a solitary test of pronunciation will suffice to defeat all else that weighs against or the visual, structural similarity, the attendant circumstances, lack of meaningful reputation or goodwill, the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing should be ignored only because of phonetic similarity.

Since the Plaintiff has sought injunction only on the basis of this phonetic similarity and there is no other basis for this action at all, the Bombay High Court held that there is not sufficient warrant for grant of injunction and dismissed the Notice of Motion without costs.

 India: Kingfisher Airlines Assets Auction Failed

No takers for the King of Good Times!!

Attempts by a consortium of banks to recover Rs. 9,000 crore invested in Vijay Mallya’s Kingfisher Airlines failed to attract buyers as the auction held on April 20, 2016, ended without attracting any bidders at the reserve price. The auction apparently failed because of the high base price.

Kingfisher stopped flying in October 2012 for want of cash, leaving creditors, suppliers and employees unpaid and owed banks Rs 9,091 crore ($1.4 billion Approx.).  But, now comes the latest twist on an ongoing problem of Vijay Mallya’s Debt recovery and Financial Dispute when the banks realised that they couldn’t recover much from the assets pledged by Mallya. Interestingly, Indian Banks decided to take possession of nine trademarks to recover debt from Mallya and other defaulters.

SBICAP Trustee Company Limited (SBICTCL) a subsidiary of SBI Capital Markets Limited and a Debenture Trustee registered with Securities Exchange Board of India (SEBI) recently on March 10, 2016 disclosed in a notice that the trademarks and brands seized were covered by an assignment deed dated March 18, 2011 that Kingfisher Airlines Ltd - with United Breweries (Holdings) Ltd and Vijay Mallya acting as guarantors - had signed with the banks.

The following are the list of trademarks of Kingfisher Airlines that was auctioned on April 30 -

Sl. No	Application No	Class	Brands/Trademarks	Status
1.	1300950	16, 25, 39	Flying Models (word mark)	Registered & valid up to 06.08.2024
2.	1300951	16, 39	Fly the Good Times (word mark)	Registered & valid up to 06.08.2024
3.	1300952	16, 39	Funliner	Registered & valid up to 06.08.2024
4.	1318243	39, 42	Kingfisher (Label Mark)	Registered & valid up to 01.11.2024
5.	1319150	39	Flying Bird Device	Registered & valid up to 05.11.2024
6.	1519887	39	Fly Kingfisher (Label)	Registered & valid up to 10.01.2017
7.	1519888	39	Fly Kingfisher (world)	Registered & valid up to 10.01.2017
8.	1519889	39	Fly Kingfisher (world)	Registered & valid up to 10.01.2017
9.	1519890	39	Fly Kingfisher (Label)	Registered & valid up to 10.01.2017

In the year 2012, a global consultancy firm Grant & Thronton valued Kingfisher trademarks at Rs 4,111 crore or roughly $1 billion, when the airline's license was suspended by India's aviation regulator Director General of Civil Aviation (DGCA). The base price for the trademarks had been set at Rs 366.70 Crore. This subsequently concludes that the individuals/groups who would be interested in the auction must be having or be ready to start/incorporate their own airlines related business. The most relevant question to be raised here is “Who would be ready to invest on trademarks of defunct company?” However, there are precedents existing where Eastern Airlines, a now defunct airline major, went bankrupt and then its intellectual property was picked up by another airline company called New Easter Airlines in USA and commenced operation in mid-2015.

In fact Indian Banks passing loans against intellectual property for reputed and well-known brands is not a new form of practice. IP financing, or the use of IP assets (trademarks, design rights, patents and copyright) to gain access to credit, is gaining increasing attention in IP circles. Multinational corporations as well as small and medium sized enterprise, are leveraging their IP assets in exchange for finance, and lending institutions around the world are increasingly extending their business to provide loans on the basis of IP.  Higher asset values may also help in negotiations with a company’s bank and facilitate access to credit, or help to negotiate cheaper interest rates on credits.  Intellectual property though intangible but are always secured assets.

As far as Kingfisher is concerned, the brand has always been with glamour, vibrancy and lifestyle to the skies. The brand image of the parent Kingfisher brand gave further credibility to its marketing campaigns, featuring India's then top models, but it seems that times have really hit hard ‘the King of good times’, as it is no longer seen as a positive association.