India: Rasgulla originated in West Bengal, rules the country’s GI authorities

Source: www.palpalindia.com

On November 14, 2017, the Indian State of West Bengal received the Geographical Indication (GI) certification for Rasgulla after a 26 months legal tussle with the neighboring state of Orissa.

In 2015, the state of Odisha declared “Rosogola Diwas” to celebrate the Odia origin of the sweet. West Bengal State Food Processing and Horticulture Development Corporation Limited legally countered the statement by filing a claim for a GI tag at the Office of the Controller General of Patents,  Designs & Trademark (hereinafter referred to as the ‘CGPDTM’) for the sweet claiming that the dish was originated by the renowned sweet-maker Nobin Chandra Das in the year 1868. Thereafter, Odisha also asserted to be the origin of the sweet claiming that it was offered to Lord Jagannath.

West Bengal’s submission was based on Haripada Bhowmik’s book on Rasogolla which stated that the item was first seen in the form of “Della Rasogolla” in the year 1860 in the town of Fulia in Nadia District. They also submitted that the main ingredient for this sweet is “channa”, which as a word does not exist in any other language other than Bengali, and it is derived from the Sanskrit work “chinna” which means torn, broken, fragments of Milk. The technique of making sweets from “channa” was taught exclusively to Bengalis by the Dutch and Portuguese colonists in the 18^th century. Its Bengali origin was also strengthened by the fact that in the 15^th century “channa” was introduced to the Bengali cuisine, however, it was consider inauspicious to serve this to the Gods including Lord Jagannath.

In the reply to the examination report, as available on the website of the CGPDTM, it is stated that  there are more than 1,00,000 sweat-meat shops in West Bengal that are dedicated to Rasogolla, and the sale of ‘Banglar Rasogolla’ produces approximately Rs. 3600 crore in a year. Thus, obtaining a GI tag would help in the trade, export, quality, and authentication of the unique product.

A comparative study was conducted between the Banglar Rasogolla and other sweets of the same kind. Tests were done based on the color, texture, taste, moisture, etc., which subsequently proved the uniqueness of the Rasogolla. Scientific and microbiological analyses too were conducted which yielded the same result.

India: Lucy Rana of S.S. Rana & Co., speaks at the National Conference on Intellectual Property Rights

Mrs. Lucy Rana, Managing Associate Advocate at S.S. Rana & Co., recently on November 24, 2017, spoke at the session titled, “IP Infringement and Enforcement”, at the National Conference on Intellectual Property Rights, hosted by PHD Chamber of Commerce and Industry. Her session initially began with the basics of Intellectual Property and its importance to a Start-Up. Further, she went on to address a few brief points on the remedies available to right holders in case of an infringement, and concluded with a short talk on the Governmental efforts to promote IPR’s in the past couple of years.

PHD Chamber of Commerce and Industry, established in 1905, is a proactive and dynamic multi-State apex organisation working at the grass-root level and with strong national and international linkages. The Chamber acts as a catalyst in the promotion of industry, trade and entrepreneurship. PHD Chamber, through its research-based policy advocacy role, positively impacts the economic growth and development of the nation.

Sangeeta Das, of S.S. Rana & Co., speaks on Designs and Trademarks at Desh Bhagat University

Ms. Sangeeta Das, a Patent Agent at S.S. Rana & Co., recently spoke at a Patent Awareness Workshop organized by Desh Bhagat University’s Patent Information Centre. The workshop was attended by industrialist from Ludhiana, Mandi Gobindgarh, Amargarh, Amloh, Rajpura and experts from TIFAC DST, Government of India, students and staff members from the Faculty of Engineering of Desh Bhagat University.  

The event was inaugurated by the University Chancellor Dr. Zora Singh, who stated that the objective of the event was to teach the students of the university about the various facets of intellectual property, like patents, trademarks, industrial designs and copyright, etc. The Chief Guest on this occasion was Vinod Vashist, President of All India Steel Rolling Association, who shared his views on Copyright, and the challenges faced by entreprenuers in the changed knowledge regime.

The topic of Ms. Das’s lecture was ‘Industrial Designs and Trademarks in India’. The talk initially focused on the basics of Industrial Designs and Trademark Law followed by the importance and practical aspects of Trademark and Design Registration in India. 

S.S. Rana & Co., features in Band 3 of Chambers and Partner’s Asia Pacific Guide 2018

S.S. Rana & Co., is ranked in Brand 3 for Intellectual Property by Chambers and Partners in their latest Asia Pacific 2018 Guide. Managing Partner, Mr. Vikrant Rana is quoted to be a ‘well-known’ trademark lawyer in the region, and received accolades for his practice and expertise.

Since 1990, Chambers and Partners have been ranking the best lawyers geographically and currently covers over 185 jurisdictions. It ranks both lawyers and law firms based on research of more than 170 Full-Time editors and researchers employed by them.

India: Court grants damages of INR 5 Lakhs for infringement of the mark ‘Nokia’

Source : www.delhihighcourt.nic.in

Recently, the Delhi High Court, in the case of Nokia Corporation & Others vs Movie Express & Others, awarded Nokia Corporation (hereinafter referred to as the Plaintiffs’) damages to the tune of INR 5 Lakhs, payable jointly by MovieExpress and Others (hereinafter referred to as the Defendants), for trying to obtain wrongful advantage of the Plaintiff’s trademark.

Brief Background

• Plaintiff no. 1 is a Finnish multinational communications, information technology and consumer electronics company, founded in 1865 and headquartered in Espoo, Uusimaa, and Plaintiff no.2 Nokia India Private Limited is a Company incorporated under the Companies Act, 1956. and is headquartered in New Delhi. The Plaintiff is the registered proprietor of the trademark NOKIA in various classes inter alia in Class 41 under no. 1237567 which extends to entertainment services.
• The Defendant No. 1, Moviexpress is an advertising agency involved in promotion, sponsorship for new movies and mass media communication such as short films, ad-films and audio-visual aids. The Defendant No. 2, Shailendra Cinemas is a production house and is involved in producing movies and the Defendant No. 3, Mr. D. S. Rao, is a film producer.
• In 2011, an in-film branding opportunity in the upcoming movie of Shailendra Cinemas was proposed by the Defendants. The movie was titled ‘Mr. Nokia, Connecting people’, which was communicated through email to the Plaintiffs.
• The proposal was rejected. In June 2011, they were informed of a press release of ‘Mr. Nokia’ movie under the banner of the Defendants.
• The movie was referred as ‘Mr. Nokia’ everywhere and was slated to be released in February, 2012. Even the songs were launched.
• A cease and desist notice was sent to the Defendant. Defendant no.3 acknowledged the superior trade mark rights of the Plaintiffs' in the mark NOKIA, and offered to change the title of the movie to Mr. Nav-kia via email.
• A communication was also sent to the South India Film Chamber of Commerce requiring a confirmation regarding the press release, and no title was registered.
• The movie was planned for an early release and was still titled ‘Mr. Nokia’. A legal notice was sent to the Defendants, but nothing happened.
• Thus, a suit was filed against the Defendants on February 3, 2012, and an ex parte ad interim injunction was granted by the Court on February 6, 2012.
•  Right after this the Plaintiffs caught hold of some press releases issued by the Defendant No. 3 stating that the movie is being released on March 7, 2012 under the name Mr. NOOKAYYA.
• However, the order was deliberately and openly violated by the Defendants. Thus, the Plaintiffs filed an application under Order 39 Rule 2 and under 2A, of the Code of Civil Procedure, 1908, read with Section 12 of the Contempt of Courts Act, 1971.
• The Court passed a restraining order on March 7, 2012. Despite this, the movie was released under the name Mr. NOOKAYYA on March 8, 2012. Further, even in 2013 and 2014 CDs of the movie were available on various e-commerce portals.

Plaintiffs Arguments-

• It was contended that Nokia is a term coined by Plaintiff’s and was a well-known mark. As it was adopted in 1865 and since then it has been used by the Plaintiffs extensively worldwide.
• It was contended that the marks used by the Defendants were similar to the Plaintiff’s mark. Further, it was argued that since the Plaintiff is the registered proprietor of the mark Nokia, the use of this trademark by the Defendants’ amounts to infringement.

Defendants Contentions -

• Defendants did not appear on record and the decision proceeded ex-parte.

Court’s Decision-

• The Court was of the view that the trademark of the Plaintiff has earned a global goodwill and reputation, and therefore, the mark falls under the category of a well-known trademark. Further, talking about the two marks the courts stated that ‘there can be no dispute to the fact that the Defendant's marks Mr. NOKIA and/or Mr. NO.KEYIA and/or Mr. NAV-KIA and/or NOOKAIAH are deceptively and confusingly similar to the Plaintiffs well-known and registered mark NOKIA’. 
   
• The Court came up with a test for two similar marks. It stated that the test is “whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade?.” It also stated that ‘Infringement u/s 29 (1) does not require confusion in the minds of public/ consumers with regard to trade origin. It is enough to show that impugned marks are deceptively similar to the registered marks of Plaintiff, even if, there are added matters to show a different trade origin.’ And in this case since ‘the Plaintiff is the registered proprietor of the mark NOKIA in class 41 under no. 1237567 in relation to entertainment services, the use thereof by the Defendant in relation to such services amounts to infringement under Section 29 (1) of the Trade Marks Act, 1999’.
   
• The case also brought to light the difference between trademark infringement and passing off. It observed that for infringement it is enough to show that impugned marks are deceptively similar to the registered marks of the Plaintiff, even if, there are added matters to show a different trade origin. Therefore, the Defendants have committed an act of infringement.
  
• Also, the Court mentioned that a Defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits of evasion of Court proceedings.

Thus, in the light of above reasons, a decree of permanent injunction restraining the Defendants from publishing or airing the movie or content carrying expression which is deceptively similar to the mark ‘NOKIA’ was passed and a sum of INR 5 lakh (USD 7754 approx.) as monetary damages were awarded to the Plaintiff.

India: Delhi High Court in an ex-parte suit stops short of declaring

Source: www.delhihighcourt.nic.in

In the instant case, the Delhi High Court granted permanent injunction against Parth Solanki (hereinafter referred to as the ‘Defendant’) from infringing or in any manner using Verizon’s (hereinafter referred to as the Plaintiff) mark. Also, punitive damages were not awarded to the Plaintiff because the Plaintiff was not able to prove the damages. A noteworthy observation made by the Court in the case was that VERIZON (the Plaintiff’s mark) satisfied the criteria of a well-known trademark as prescribed under Section 2(1)(zg) of Trademark Act, 1999 read with Sections 11 (6), (7) and (8) of Trademark Act. However, it did not pass any judgement on the point as it was not contested by the Defendants at all.

Brief Facts

• Plaintiff No. 1 is the proprietor of the trademark VERIZON.
• Plaintiff No. 2 is the licensee of the said trademarks in connection with various products and services, including goods and services related to communications, real estate, development and construction. It also has the right to sub-license and permit use and exploitation of the trade mark VERIZON by such sub-licensees.
• Plaintiff No. 3 is the sub licensee of Plaintiff No. 2.
• It is stated in the plaint that the Plaintiffs have numerous trademark registrations in India as well as globally.
• It is stated in the plaint that the Plaintiffs' trademark and trade name VERIZON has earned stellar reputation worldwide based on the high quality products and services provided by them to a wide range of customers around the world.
• It is alleged that the Defendants are misusing the Plaintiffs trademark as part of its (a) trademark (b) trading style (c) domain name and the manner of use of the Defendants' mark that includes VARIZON, VARIZON TECH (trading style) www.varizontech.com.

Issue

• Is the Plaintiff’s mark VERIZON a well-known mark?
• Are Defendants guilty of infringement of trade marks, passing off and dilution?

Plaintiff’s Argument

• It was stated that the said trademark was adopted in the year 2000. Since then, the Plaintiff’s claim to have been using the mark extensively, continuously and successfully in an uninterrupted manner.  
• It was also stated that the trade mark VERIZON is inherently distinctive and was coined by the Plaintiffs from the Latin word ‘Veritas’ and ‘Horizon’.
• It was claimed that they have spent billions of US Dollars on advertising and promoting their products and services under the VERIZON trademarks and trade names.
• It is argued that the Defendants trademark VARIZON is deceptively and phonetically similar to the registered trademark of the Plaintiffs thereby misleading the public at large.
• It was also argued that the Defendants are riding over the reputation of the Plaintiffs because of which it is likely to suffer irreparable loss and reputation.
• It was contended that the Defendants’ unauthorized and unjustifiable use of the Plaintiffs’ trademark VERIZON in relation to their business activities clearly amounts to infringement and dilution.

Defendant’s Argument

The Defendant did not appear and the matter proceeded ex-parte.

Court’s Judgement

•  Infringement and Malafide Use: The Court agreed that the Defendants were using the mark without any explicit permission or authorization, based on the evidence on record. Thus, the malafide nature of use was accepted. Further, regarding infringement it stated that ‘the use of the impugned mark by the Defendants is bound to cause incalculable losses, harm and injury to the Plaintiffs and immense public harm’. Thereby, accepting the claim of infringement.
  
  
•  Ex Parte: The Court accepted the evidences of the Plaintiff as they went unrebutted and accepted the claim of infringement by the Plaintiff against the Defendant. While discussing this point the Court threw light on the Supreme Court’s observation in Ramesh Chand Ardawatiya v. Anil Panjwani[1], wherein it was said that ‘………In the absence of denial of plaint averments the burden of proof on the Plaintiff is not very heavy. A prima facie proof of the relevant facts constituting the cause of action would suffice and the Court would grant the Plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the Court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the evidence adduced, and would do well to frame the “points for determination” and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the Defendant is absent the Court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced by irrelevant or inadmissible evidence’ 
  
  
• Damages: The Court took into consideration the judgements in Super Cassettes Industries Private Limited v. HRCN Cable Network[2], wherein it was held that ‘However, this Court is not satisfied on the evidence led in the present case that the compensation awarded is inadequate in the circumstances having regard to the three categories in Rookes v. Barnard[3], and also the five principles in Cassell & Co. Ltd. v. Broome[4]. In the event punitive damages are awarded in the present case, it would be an ad-hoc judge centric award of damages, which the Division Bench specifically prohibited in Hindustan Unilever Limited (supra).....’. Thus, the Court came to a conclusion that any damages would not be awarded to the Plaintiff as they have not lead to any evidence with respect to the quantum of damages suffered by them.
   
• Well–Known Nature: The Court in Para 15 of the judgement agreed with the Plaintiff’s claim and stated that ‘due to extensive worldwide use over substantial period of time, the Plaintiffs' VERIZON trademarks have acquired reputation and goodwill in the marks globally as well as in India’. Further, the Court stated that since the proceedings were ex parte, therefore, it did not pass any order regarding the well-known nature of the Plaintiff’s mark. Also, it pointed out that ‘Had the Defendants formally contested the Plaintiff's contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of the Plaintiff's claim that the mark VERIZON is well-known’. 
   

Thus, in the light of above reasons a permanent injunction against the Defendants was granted.

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[1] AIR 2003 SC 2508

[2] CS(COMM) 48/2015 dated 09th October, 2017

[3] [1964] 1 All ER 367

[4] 1972 AC 1027

India: Delhi High Court awards punitive damages to the tune of INR 300,000

A Single Bench of the Delhi High Court consisting of the Hon’ble Justice Sanjiv Khanna passed an order dated September 25, 2017, inter alia, awarding punitive damages for trademark infringement vis-à-vis counterfeiting.

Since its founding in 1940, Ahuja Radios has developed into one of India’s leading manufacturer & exporter of Public Address Equipments. Ahuja Radios (hereinafter referred to as the ‘Plaintiffs’) has numerous registrations for “AHUJA” formative trademarks in Class 09 -

The Plaintiff had stated that it is the largest manufacturer of Public Address Systems (PAS) in India, and that it has been selling PAS equipment under the trade mark AHUJA since 1940. In this regard, it is pertinent to note that the Plaintiff has a registration over the word mark “AHUJA” in Class 09 vide application no. 136189 dated November 06, 1948, claiming use since December 01, 1936. They also stated that their PAS products are exported to over 50 countries. It has also been stated that the Plaintiff’s amplifier model SSB120 is one of their best selling products.  

Brief facts of the case

The Plaintiff had conducted a market sweep in Mumbai in August 2014. During the course of investigation/survey, it was discovered that H.K. Sound Electronics (hereinafter referred to as the ‘Defendants’) were selling counterfeit AHUJA PAS products. Thereafter, the investigators procured a counterfeit amplifier from the Defendant, which was under the model number SSB 120. As regarding the counterfeit product, it was noted that –

-          It had some features of the original SSB 120

-          The price of the counterfeit was less than that of the original.

-          Absence of date of manufacturing and MRP on the packaging.

-          Spelling errors on the label printed at the reverse side.

-          Discrepancy in the serial number of the product.

-          Inferior quality of the product, as compared to the original SSB 120.

Original AHUJA RADIOS SSB 120 (From the website www.ahujaradios.com)

Plaintiff’s contentions

In view of the aforesaid, the Plaintiff filed a suit for trademark infringement and sought a decree of permanent injunction against the Defendants, delivery of the impugned material and rendition of accounts and damages upto INR 2,005,000.

The Plaintiffs submitted a wide variety of evidence, including but not limited to copies of brochures and internet material in favor of the Plaintiff, catalogues, sales invoices of Plaintiff’s products, copies of trademark registrations, copies of orders passed by various courts in favor of the Plaintiff, affidavit of the investigator, photographs of the Defendant’s premises, photographs of the counterfeit products, Defendant’s business cards, bill of purchase of the counterfeit product, etc.

The Defendants

Even though the Defendants were served, they did not appear. Hence the matter proceeded ex-parte.

Court’s observations

The Court noted that the Defendant’s use of the Plaintiff’s mark with respect of identical goods would count as causing irreparable damage and loss to the Plaintiff’s business under the AHUJA trademarks. The Court observed that the Defendant’s adoption of the mark AHUJA was malafide, which was calculated to take advantage of the Plaintiff’s goodwill and reputation with respect to the mark “AHUJA”. The Court was also of the opinion that all ingredients of passing-off were satisfied in the present case.

Further, on the basis of the evidence submitted by the Plaintiff, it was proved that  the counterfeit products bearing the Plaintiff’s registered trademarks were not originating from the Plaintiff, and that the Defendants action unequivocally amount to trademark infringement, namely of Plaintiff’s registration nos. 136189, 313757 and 1495014.

Held

The Court decreed the below in favor of the Plaintiff –

-      Permanent injunction against the Defendant with respect to trademark infringement as well as passing off.

-      Permanent injunction with respect to dilution and tarnishment.

-      Damages to the tune of INR 300,000.

As in interesting side note regarding the Court’s judgment, the Court held that the Defendant’s actions amounted to infringement of Ahuja Radio’s trademark registration no. 1495014. However, as per the information available on the Registry’s website, the aforesaid registration for the mark “SSB-120” (the product model) was valid October 09, 2016 and the same does not appear to have been renewed.

India: Registered Proprietor of a Trademark injuncted from using The mark by the Delhi High Court

Source: delhihighcourt.nic.in

In a recent decision by the Delhi High Court, Hon’ble Justice Manmohan granted an injunction against the defendant who was also the registered proprietor of the impugned trademark for persistent conduct of selling products bearing the mark AMIR’S, and more importantly, for wrongly obtaining a registration of their mark AMIR in Class 3.

Brief Facts: 

M/S Ishar Dass Amir Chand (hereinafter referred to as the ‘Plaintiff’) claimed to be the prior adopter and registered proprietor of the trademark AMIR’S in Class 3 and is stated to be engaged in the business of cultivating Henna and in manufacturing and exporting the same as natural Henna powder under the said mark. The Plaintiff is stated to be continuously and uninterruptedly using the mark AMIR’S for its products since 1996.

Claims of the Plaintiff 

The Plaintiff also claims to be the registered proprietor of the product label, and contended that the color combination, trade dress and get-up of the label/packaging of their product constituted an 'original artistic work' under Section 2 (c) of the Copyright Act, 1957. Their trade mark AMIR'S along with its label had acquired a heightened degree of distinctiveness owing to the exclusive, extensive and continuous use of the same since 1996. In support of this contention, the Plaintiff proved its original sale invoices showing sales and exports for the period 1996 to 2014.

The Plaintiff further claimed that, Mr. Jagdish Babu Sharma (hereinafter referred to as ‘Defendant’) who is the Director of Defendants No. 2 and 3 companies, are engaged in manufacturing, selling and exporting henna and henna based dyes under the mark AMIR'S with identical trade dress/get-up as that of the Plaintiff's product. Plaintiff exhibited the Defendant no. 2's certificate of incorporation which shows that it was incorporated on May 17, 2001. Further, the Defendants had wrongly obtained a registration of the impugned mark AMIR in Class 3 for which the Plaintiff had filed rectification and cancellation applications. In second week of August, 2015, it came to the knowledge of the Plaintiff that despite the orders passed by the Food and Drugs Administration cancelling the license of the Defendants, pursuant to complaints made by the Plaintiff, the Defendants continued to illegally manufacture, sell and export their products under the impugned trade mark as well as trade dress/get-up deceptively similar to that of the Plaintiff.

Aggrieved by the conduct of the Defendants, the Plaintiff had prayed for an ex parte ad interim injunction before the Delhi High Court and the Court had granted the said injunction in favor of the Plaintiff and against the Defendants on September 21, 2015 restraining the Defendants and it’s agents from manufacturing, selling, offering for sale or exporting Henna/Henna based products under the mark, "AMIR's/AMIR" or any other mark that is identical/deceptively similar to the Plaintiff's trademark, "AMIR'S", which was registered prior in time.

The Court had further observed that as on date, the Defendants enjoy a registration in the mark, "AMIR" and "AMIR (Device of Lady)" and even as per the Plaintiff, they have remained in the market for some time, hence, it is deemed appropriate to grant the Defendants a period of two months to make compliances of the aforesaid order.

However, as the Defendants entered appearance only on two occasions and did not file their written statement within the stipulated time granted, their right to file written statement was closed vide order dated August 12, 2016. Thus, the Defendants were proceeded ex-parte by this Court vide order dated October 27, 2016 and the interim injunction was made absolute.

Decision of the Court 

Having perused the papers and having heard the Learned Counsel for the Plaintiff, Hon’ble Mr. Justice Manmohan of the Delhi High Court was of the view that, since the averments in the plaint have not been rebutted by the Defendants as they did not bother to put forth their stand, in spite of ample opportunities given to them, they are deemed to be admitted.

Further, the Court was of the view that color combination, trade dress and get-up of the label/packaging of the Plaintiff's product constitutes an 'original artistic work' under Section 2 (c) of the Copyright Act and the Plaintiff has the exclusive right to use and produce the same under Section 14 of the Copyright Act. The use of the impugned AMIR'S Henna label by the Defendants which is a colorable imitation and substantial reproduction of the Plaintiff's AMIR'S Henna Label/logo in respect of its overall color combination, lay out and arrangement of features and get up constitutes infringement of copyright of Plaintiff's product under Section 51 of the Copyright Act and is liable to be injuncted under Section 55 of the Copyright Act. 

Additionally, the Defendants' impugned marks AMIR'S and AMIR are identical to the Plaintiff's mark. Even though both the Plaintiff's and Defendants' marks are registered, yet from the evidence on record, it is apparent that the Plaintiff is the prior adopter of the trade mark AMIR'S along with its label and has been using the same extensively since the year 1996. From the Plaintiff's sales figures it is also apparent that the product of the Plaintiff under the trade mark AMIR'S along with its label and get up, in particular the color combination of green and white has acquired distinctiveness and is identified as originating from the Plaintiff. The use of the impugned trade mark/trade dress/label comprising of box design, label including the overall color combination of golden and white by the Defendants for domestic and export sales is likely to cause confusion and/or deception in the minds of the consumers on account of imperfect recollection and the overall similarity and idea conveyed by the trade dress and packaging of both the parties. In fact, the adoption of the impugned trade mark AMIR'S and its packaging by the Defendants would invariably cause confusion and deception on account of being visually, structurally, phonetically and deceptively identical to the Plaintiff's mark and its packaging. The use and export of the impugned trade mark AMIR'S and its packaging by the Defendants constitute acts of misrepresentation, misappropriation and passing off.

Keeping in mind the aforesaid facts and contentions, the mandate of the law and the persistent conduct of the Defendants in selling products bearing the mark AMIR’S/AMIR, the suit is decreed in favour of the Plaintiff and the Plaintiff shall be entitled to costs including monies spent on Court-Fees, Local Commissioner’s Fees and other expenses, etc.

India: In Defence of AIB’s Game of Thrones Memes: When can Satire/Critique Act as a Suitable Defence?

In a recent article posted on Bar & Bench (see here) the authors raised an interesting facet of trademark law, one that has been the subject of controversy for many years now.

The popular television show, Game of Thrones has become a worldwide cultural phenomenon, ever since it started airing as a TV series on HBO in 2011. As a result of its global popularity, it has entered public consciousness in a similar way to entertainment franchises, such as Star Wars, Star Trek, Harry Potter and Marvel Comics, to name just a few. With such collective recognition and recollection of the show’s characters and themes, many fans choose to share their admiration of the show by posting derivative content online.

The Issue

The Indian comedy group All India Bakchod, popularly referred to as AIB decided to capitalize on the popularity of the show and created a number of amusing memes out of stills from the show. It juxtaposed these stills with humorous captions or superimposed them with advertising taglines of completely unrelated products to generate humour, which it then shared through its various social media platforms.

Of course, AIB is hardly the first one to do this. There is quite a sub-culture on the Internet for fans of not only Game of Thrones, but various other film, television or literary franchises to express their talent at humour alongside their admiration for their preferred “fandom” by creating and sharing jokes or amusing observations in the form of memes. There are Facebook pages, YouTube channels and other social media platforms entirely devoted to this enterprise, in fact! For a look at AIB’s efforts, you can take a look here.

Copyright Infringement and its Defences

However, the pertinent question arising out of this for IP lawyers is does this constitute infringement of HBO’s copyright in the show?

There is no denying that HBO, including its affiliates and subsidiaries, is the rightful holder of copyrights in the show Game of Thrones. However, a problem that has always plagued fans of such properties is: can they not express their love for their favourite show, movie or comic book without being ensnared in the web of potential IP infringement?

The most obvious defences in cases of derivative fan works are that they are in the nature of tributes to their source material, and therefore do not attempt to take away from their repute. They may, in fact, serve the opposite purpose in driving curiosity in the works which they derive from and to which they refer. Another common defence for certain fan-derivative works is that they are either in the nature of a critique or a parody/spoof of the source material. And the final important defence in determining whether a fan-derivative work is harmless is that it should not be for profit.

It is with regard to the last criterion that the controversy appears to be raging surrounding AIB’s use of Game of Thrones stills for comedic effect. As can be seen from the series of memes, they have actually been constructed towards a promotional purpose- to announce the release of one of their YouTube videos. Therefore, under the circumstances, it is being argued that AIB may very well be liable for intentional copyright infringement.

Source: AIB on Facebook

IP Rights v Freedom of Speech/Creativity

The landmark judgement in India upholding the right to freedom of speech and expression over disparagement involving IP rights is in the case of Tata Sons Ltd. v Greenpeace International & Anr.[1] Here, the dispute centred around a satirical game, Pac-Man style, which showed the endangered Olive Ridley Turtle being hunted by the ‘Tata demons’, in the form of animations of their famous trademark, . The game had been designed by Greenpeace as an innovative form of protest against Tata’s construction of Dhamra port in an ecologically sensitive area of Orissa. Tata, in tis turn, claimed that the representation of their famous device mark in such a negative fashion was affecting their considerable reputation built around the trademark and alleged tarnishment and disparagement. However, Justice Shri Ravinder Bhat of the Delhi High Court, in an unprecedented judgement, held in favour of Greenpeace, causing a stir in trademark owners’ circles.

Source: www.greenpeace.org

The above case proves that satire or critique may be a valid defence against an allegation of trademark infringement/tarnishment.  But is it enough in the case of AIB’s ostensibly promotional use of copyrighted material?

The comedy group is only one amongst many, all across the world, who have attempted to capitalize on the show’s overarching popularity to promote their products. Why hasn’t HBO proceeded against these myriad “infringers”? Most likely because in pandering to the show’s already devoted fan-base, they aren’t, in actuality, causing the network any (financial) harm. In fact, as much as these renditions advertise third party products, they are propagating the popularity of Game of Thrones even further. An unitiated may see such a meme/ad and be curious to find out about the show to which it refers. Thus, in using referential context, the works, whether intentionally humorous, sarcastic or critical, benefit HBO’s promotional efforts for its show as much as the third party’s. It’s a symbiotic relation.

AIB is unlikely to face consequences for its memes, despite juxtaposing unrelated subject matter therein. And, keeping in mind the vast quantity of similar material spread throughout the Web, it is unlikely the show’s rightholders will even be inclined to take such a step. After all, practicality dictates that you don’t fix something unless its broke, and copyright infringement cannot exist unless the copyright holder is intent on enforcing her/his exclusive rights. In the instant case, by allowing a little laxity, HBO is only allowing the fans of Game of Thrones to have a little creative fun, while quietly reaping the benefit of its popular spread.

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[1] IA No.9089/2010 in CS(OS) No.1407/2010

Indonesia Joins Madrid Protocol as the 100th Member

Source: www.wipo.int

The Madrid Protocol along with the Madrid Agreement, gives the legal basis to the Madrid System which is the primary method of international registration of trademarks in multiple Jurisdictions. Administered by the WIPO, the Madrid Protocol allows the trademark owners of its contracting parties to seek protection of their trademarks in multiple countries by filing a single application. Moreover, the Madrid Protocol also allows such applications to be filed in a single language and grants protection to the trademarks in multiple countries upon the payment of a single fee.

Being a prominent member and one of the Six Majors of the Association of Southeast Asian Nations, it was long awaited for Indonesia to take active steps to comply with the ASEAN Economic Community Blueprint milestones for harmonization of intellectual property protection within the region.

On October 02, 2017, at the 57^th WIPO General Assembly in Geneva, The Government of Indonesia through its Minister for Law and Human Rights deposited its Instrument of Accession (Presidential Decree No. 92 of 2017) to the Madrid Protocol with the Director General of WIPO making it the 100^th member and the 8^th ASEAN member of the Madrid System. This leaves only 2 ASEAN countries i.e. Malaysia and Myanmar that are yet to join the Madrid system.

However, Indonesia has filed certain declarations while submitting its Instrument of Accession, the most prominent of which are the declaration of an 18-month time limit to notify a refusal to the International Bureau against an international application made under the Madrid Protocol, the declaration of the Government to receive fees produced from supplementary and complementary fees in certain events and the declaration that the Common Regulations shall not have any effect in Indonesia.

With Indonesia’s adoption of the Madrid Protocol, the local business owners are the ones who are bound to benefit the most. From January 02, 2018 i.e. the date from which the Protocol will enter into force for Indonesia, the local business owners in Indonesia could seek protection of their trademark in territories of the other 99 member countries through a single application filed with the Department of Intellectual Property and payment of a single set of official fees. This will help them in significantly reducing the costs and efforts during their expansion in other countries. In addition, the foreign applicants could also obtain trademark protection for their marks by designating Indonesia in their Madrid Application along with other member countries.

Essay Competition in celebration of Children’s Day: Results Announced!!

In an effort to spread awareness about the importance of education and innovation amongst children, IP4Kids, a CSR Initiative of S.S. Rana & Co., organized an Essay Competition on Children’s Day on the theme, "Education and Innovation: Towards a better India"

Young minds were encouraged to focus on the theme of Children’s Day, and hence were free to write on topics related to –

1. Favorite Scientist

2. Favorite Innovation

3. Importance of Education

4. Right to Education

The winners of the Competition are –

Category:I

Class : V - VIII

1. Souptik Banerjee, who wrote on the essay titled, "My favorite scientist"
2. Adith Nambiar, who wrote on the essay titled, " Importance of Education"
3. Ayush Chouhan, who wrote on the essay titled, "Education and innovation towards a better India"

Category:II

Class:  IX - XII

1. Adrika Mishra, who wrote on the essay titled, "Importance of Education"
2. Prince Singh, who wrote on the essay titled, " Education and Innovation: Towards better India"
3. Ravish  Kumar, who wrote on the essay titled, "Importance of Education"

Heartiest Congratulations on behalf of IP4Kids and S.S. Rana & Co. to the winners in Category I and Category II who won prizes worth ₹ 3000, and ₹ 2000 respectively.

All participants shall receive a participation certificate from the firm.

We look forward to further such participation in the future.