S.S. Rana & Co. Completes 26 years !!

On September 01, 2015 S.S. Rana & Co. celebrated 26 glorious years of its hard work and achievement. The Firm was founded by Mr. Sohan Singh Rana and Mrs. Bindra Rana in 1989. The journey of the Firm has been one of the most interesting and impressive ones.

On the occasion, the Firm organized a fun-filled entertainment gathering for its employees. The evening began with throwing light on the Firm’s memorable journey of the last 26 years, followed by some fun quiz round about the Firm. Recognitions and awards were also distributed to some well deserving and performing employees followed by dance, food and drinks.

On behalf of the entire team of S.S. Rana & Co., we would like to take this opportunity to thank all our clients, our supporters and all our members, without whom we could not have made it this far. We are grateful for your loyalty and trust towards us.

Delhi High Court Issues notice regarding working of Patented inventions

The Delhi High Court has issued a notice to the government on Sep 01, 2015 in a PIL (Public Interest Litigation) filed by Mr. Shamnad Basheer in regard to the “working statement” of patented inventions in India.

Statutory Provisions in the Indian Patents Act

According to Section 146(2) of the Patents Act, 1970 read with Rule 131 of the Patent Rules, 2003, every patentee and every licensee has to make an annual disclosure (Form-27) as to how far and to what extent the patent has worked on a commercial scale in India.

Furnishing such information is important mainly during compulsory licensing cases in order to establish whether the patented invention has fulfilled the reasonable requirements of the public by interalia selling the patented product at an affordable price.

This information played a pivotal role in the compulsory licensing dispute between Bayer Corporation vs. Natco Pharma Ltd.

The petitioner, Mr. Basheer has prayed that: the Hon’ble Court may, in public interest, be pleased to issue a Writ of Mandamus, or any other appropriate writ or order directing the authorities:

1. To strictly enforce compliance with Section 146(2) read with Rule 131(1) of the Patents Act, 1970 and Rules thereunder in relation to disclosure of information on commercial working of patent by every patentee and licensee; 
2. To initiate proceedings under Section 122(1) of the Patents Act, 1970 against errant patentees and licensees who have failed to comply with the mandatory requirement of Section 146(2) read with Rule 131(1) of the Patents Act, 1970 and Rules;
3. To issue notices under Section 146(1) of the Patents Act, 1970 to patentees and licensees to furnish true and complete information in relation to incomplete disclosure of information on commercial working of the patent;
4. To immediately rectify the ‘comprehensive online filing services for patents’ to enable patentees and licensees to submit full and complete working information;
5. To publish and upload the entire information relating to commercial working of all patents for all years of operation of the patent on their website as per Section 146(3) of the Patents Act, 1970 and Rules thereunder;
6. To declare that the present format of Form-27 as contained in Schedule II of the Patents Rules, 2003 is insufficient to sub-serve the purpose of the Patents Act, 1970;
7. To constitute a committee of experts to suggest reforms to improve the public disclosure norms around the of patents;
8.  Grant such other reliefs, including the costs of this writ petition, in the interests of justice.

Further, the petitioner has submitted the data in regard to non-compliance and defective declarations of working of patented inventions along with other relevant supporting documents in the PIL, reproduced here:

YEAR	PATENTS IN FORCE	FORM-27		% NON COMPLIANCE
		FILED	NOT FILED
2009	37334	24009	13325	35.69
2010	39594	34112	5,482	13.84
2011	39989	27825	12,164	30.41
2012	43920	27946	15,974	36.37

According to the petitioner, approximately 35% of patentees did not disclose any working information for the years 2009 to 2012. Also a significant number of defective declarations were submitted which were incomplete, incomprehensible or inaccurate.

The government has now accepted notice and has been given 4 weeks to file a reply. The matter is now posted to Nov 17, 2015.

Click to access the PIL:

http://ssrana.in/News/News%20header/Images/2015-09-02-PIL.pdf

All's Well for Honeywell in Trademark Dispute

 Image Source: http://www.valuewalk.com

The High Court of Delhi, on August 24, 2015, granted a decree of permanent injunction in favour of Honeywell International Inc. (the Plaintiff) and against the Defendants in Honeywell International Inc. v. Pravin Thorat and Ors. (CS(OS) 3684/2014).

Facts of the case

• Originated in 1885, the Plaintiff claims to be a company incorporated and existing under the laws of the State of Delaware, having its principal place of business in New Jersey, U.S.A.
• The Plaintiff claims to be a highly successful and immensely reputed company across the world, consisting primarily of four segments namely, “Aerospace”, “Automation and Control Solutions”, “Performance Materials and Technologies”, and “Transportation Systems”, and having an estimated business revenue of USD 39 billion and employee strength of about 132,000 staff in around 68 countries globally.
• The Plaintiff is a Fortune 100 company, listed in the Top 100 of the Global Fortune 500 companies, has revenues up to USD 39 billion and employee strength of about 132,000 in around 68 countries.

Plaintiff’s presence in India:

• The Plaintiff and its affiliates have been directly present in India at least since the year 1984 and has subsequently expanded its presence in India.
• Today, the Plaintiff employs about 13,000 staff in India through the establishment of various companies inter alia Honeywell Automation India Limited (HAIL), Honeywell Technology Solutions Lab Pvt. Ltd. (HTSL), Honeywell International India Pvt. Ltd. (HIIPL) and Honeywell Turbo Technologies Limited (HTTL). HTTL is headquartered in Pune, where the Defendants are also claimed to be operating from.
• The Defendant No. 1, Mr. Pravin Thorat, is believed to be the proprietor of the Defendant No. 2. The Defendant No. 2 appears to be a shop using a deceptively similar mark to the Plaintiff’s well-known trademark and tradename HONEYWELL as a conspicuous part of its trading name. The Defendant No. 3 is a firm engaged in the manufacture and distribution of bakery and confectionary items which are sold at the premises of the Defendant No. 2.
• The Plaintiff first became aware of the activities of the Defendants in December 2011.

 

• The Defendants have wrongly applied for a trademark registration containing the Plaintiff’s well-known trademark HONEYWELL vide application No. 2195451 in class 30. 

Contentions of the Plaintiff

• The trademark HONEYWELL was adopted in 1906, derived from the name of one of its founders, Mark Honeywell. Therefore, there can be no basis of adoption of the said mark by any other entity.
• The mark HONEYWELL is an arbitrary mark, having neither any meaning in the common parlance nor any specific meaning particular to the trade except denoting the Plaintiff’s goods and services. Consumers across the world associate the trademark HONEYWELL exclusively with the Plaintiff.
• The Plaintiff’s brand HONEYWELL has been recognized as a Superbrand inter alia in the U.K. as well as in India by the Superbrands Council, which is one of the leading brand consultancy firms in the world.
• The Plaintiff is the registered proprietor of its trademarks in about 120 countries across the world and has promptly enforced its rights vested in such trademarks in different jurisdictions across the world.
• The Plaintiff’s trademark HONEYWELL has been declared as a well-known trademark in different jurisdictions inter alia China, Taiwan, Vietnam, Indonesia (by INTA).

Domain Names of the Plaintiff:

• The Plaintiff maintains its own websites inter alia www.honeywell.com/Pages/Home.aspx and www.honeywell.com/sites/india which are freely accessible to persons across the world thereby making use of its trademark and trade name Honeywell.
• The Plaintiff also owns over 800 domain names incorporating its Honeywell name and mark.

CONTENTIONS OF THE DEFENDANTS (EX-PARTE)

• The Defendants were proceeded ex-parte on February 4, 2015. They did not even file the Written Statement.
• The Defendants seem to have discontinued making use of their domain name www.honeywellbakers.com since the website was not accessible on the internet anymore. But on an inquiry it further revealed that the Defendants had already established two more outlets within the city of Pune itself and that it was planning to establish another such outlet.

Order of the Court and its implications

The Hon’ble Court had granted an ex parte ad interim injunction against the Defendants on December 01, 2014. The Plaintiffs had made attempts to serve the Defendants on December 22-23, 2014 however the Defendants refused to accept service.

Hon’ble Mr. Justice Manmohan Singh of the High Court of Delhi granted a permanent injunction in favour of the Plaintiff vide order dated August 24, 2015 restraining the Defendants from dealing in any manner with confectionary products and/ or any other goods and/ or services under the trademark HONEYWELL including as a part of a domain name.

Concluding Remarks

This case is like any other trademark dispute where the rights of a registered proprietor are protected against malafide infringement. However, this judgment has far more implications as it awarded punitive damages alongwith litigation costs amounting to Rs. 3,00,000/- to the Plaintiff. In this regard, Time Incorporated v. Lokesh Srivastava & Anr. [2005 (30) PTC 3 (Del.)] and Microsoft Corporation v. Rajendra Pawar & Anr. [2008 (36) PTC 697 (Del.)] were relied upon which have held in favour of awarding punitive damages to the aggrieved registered proprietor while observing that it has become a trend of sorts for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff and that such evasion of court proceedings does not de facto tantamount to escape from liability. It has been further observed that “…Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.” This is surely a welcome for honest traders and will ensure that blatant mala fide infringements are curbed at their very grassroots.

The aforesaid Order dated August 24, 2014 can be accessed here.

The Fight over “Indigo” trademarks

Two giant companies namely, Tata Motors and Interglobe Aviations (IndiGo Airlines) have locked horns over trademark altercation involving the word Indigo. Indian Business Daily, Economic Times on August 22 reported that Interglobe Aviation faces ownership risk as Tata Motors has claimed that Interglobe’s use of IndiGo name is an infringement of its registered trademark Indigo which it uses for its Sedans since 2002.

Reportedly, the alleged trademark row had sparked off in 2005 itself, however Interglobe was subsequently successful in registering its trademarks. At present Tata Motors is opposing various trademarks of Interglobe- IndiGo, IndiGo Airways, IndiGo Airlines and IndiGo Air.

Trademark Tryst in the case

Indigo Marks of Tata Motors and Interglobe Aviation

Tata Motors

Interglobe Aviation

From the aforesaid, Tata Motors is prior filer of the term Indigo i.e. Tata applied for the mark in 2001 whereas Interglobe Aviation applied for the mark in the year 2004. Other noticeable factor is that Tata’s mark Indigo is for land vehicles falling under class 12 whereas Interglobe’s mark Indigo is for transport, packaging and storage of goods falling under class 39.

Under the Indian Trademark Law, a trademark registered for particular good and services prima facie does not have a valid infringement claim against another trademark registered for different goods and services. However, under the Trademark Act, a well-known trademark is protected even for goods and services falling in different classes. This extraordinary protection is granted to well-known marks.

In the instant case, Tata’s mark Indigo as well as since 2005 Interglobe’s mark IndiGo have become well known in their respective industries, leading to an interesting tussle between the two giants.

Speed Breakers Installed by The Delhi High Court for Audi over Trademark “T.T.”

Image Source: http://www.audi.in

On July 21, 2015, the Hon’ble High Court of Delhi, in Rikhab Chand Jain & Anr. v. Audi A.G., has granted an ad-interim ex-parte injunction against Audi AG restraining them from using the trademark “T.T.” or any other trademark deceptively and/or phonetically similar to the Plaintiff’s trademark, pending the final outcome of the case.

Brief facts of the case:

1. Rikhab Chand Jain and his firm, T.T. Industries (the Plaintiffs) filed a suit for infringement alongwith an application for ad-interim injunction against Audi AG (the Defendant) for infringing its registered trademark “T.T.”.
2. The Plaintiffs claim to be the registered proprietors of the trademark “T.T.” in various classes and have been using this trademark since 1968, the first registration being in 1970.
3. The Plaintiffs claim to have become aware of the Defendant using the trademark “T.T.” to promote various products such as leather and imitations of leather goods made of animal skins, hides; products such as trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddler, games and playthings, model cars, gymnastic and sporting articles, decorations for Christmas trees.
4. Hence, the Plaintiffs filed the said suit for trademark infringement against the Defendant.
5. Pertinently, the Plaintiffs have also opposed several applications as well as filed rectification applications against the Defendant for the mark T.T. in multiple classes.

Plaintiffs’ Contentions:

1. Plaintiffs have been using the trade mark “T.T.” since 1968 and has got 87 registrations for the said trademark, earliest registration stated to be in 1970.
2.  The Plaintiffs have contended that they are the registered proprietors of the trademark “T.T.” in India, and the originator, bona fide adopter and prior user of the same in respect of various goods and services coming under different classifications of the Fourth Schedule to the Trade Marks Rules, 2002
3. The trade mark “T.T.” of the Plaintiffs is a well-known multi product global brand in 65 countries across the world.
4.  The Plaintiffs have spent Rs.7,57,84,961 for the period April 2012 - March 2013 on the promotions of the said trademark and their turnover for the same for the period April 2013 - March 2014 is Rs.7,54,57,26,494.

The Defendant was ex-parte in this order.

Observation and Decision of the Hon’ble Court:

  The bench comprising of Hon’ble Mr. Justice Najmi Waziri,after hearing the contentions of the Plaintiffs and relying upon the evidence put forward by them held the following:–

1. Grant an ad interim ex-parte injunction in favour of the Plaintiffs as they were successful to prove a prima-facie case in their favour, and they will suffer irreparable losses if the injunction not granted, and the balance of convenience also lies in their favour.
2. The Defendant i.e. Audi AG is restrained from manufacturing, selling, offering for sale, advertising, dealing directly or indirectly dealing in goods bearing the trademark “T.T.” or any other trademark which is deceptively similar and/or phonetically similar to the Plaintiffs’ trademark
3. The Defendant i.e. Audi AG be also restrained from reproducing the trademark “T.T.” in any manner on the goods manufactured by them or on stationary, letter heads, guarantee cards, packing materials used by them.

    The aforesaid order dated July 21, 2015 of the Hon’ble High Court of Delhi can be accessed by clicking here. 

Conclusion

      Trademark infringement suits have become very common and in the present case even Audi AG, which is a highly popular global brand itself, has been caught unawares on the less preferred side of a trademark infringement suit. However, on the strength of their global brand, Audi AG is likely to fight back with a bang.

CGPDTM Publishes Guidelines for Examination of Computer Related Inventions

On August 21, the CGPDTM (Controller General of Patents, Designs and Trademarks) published the Guidelines for Examination of Computer Related Inventions (CRIs). According to the notice, the Guidelines have been published pursuant to extensive consultation with stakeholders.

The notice further provides that pursuant to the aforesaid publication of Guidelines Chapter 08.03.05.10 of the Manual of Patent Office Practice and Procedure which comprises of the provisions pertaining to Section 3(k) of the Patents Act stands deleted and replaced as under:

“For procedure of examination of patent applications relating to the field of computer related invention under Section 3(k), the provisions of Guidelines for Examination of Computer Related Inventions shall be applicable.”

The Guidelines in detail can be accessed at

http://www.ipindia.nic.in/iponew/CRI_Guidelines_21August2015.pdf .

Google in an Alphabet soup !!

Sundar Pichai, was recently announced as the next CEO of Google as part of the company’s announcement that it will transition into a holding company called Alphabet Inc.

Larry Page, the co-founder of Google Inc., the American multinational company, announced on August 11, 2015, creation of a new parent company, Alphabet Inc. through a blog post. This basically means that Alphabet will be the parent company to Calico, Google Ventures, Google Capital, Life Sciences, Google X, Google Fiber, and Nest Labs including Google, Inc. itself.  

The interesting thing to note here is that the German Automaker BMW already has subsidiary companies under the name Alphabet which provide services to companies with vehicle fleets, operates in 18 countries and supply 530,000 vehicles to corporate customers. Examples of the Alphabet companies are given below:

However, the word Alphabet is very common and used by various companies in the United States. A global brand database search revealed that there are several trademark registrations all over the world for the name/mark ALPHABET and variations thereof including trade mark registrations owned by Bayerische Motoren Werke Aktiengesellschaft (BMW) in countries such as United States, Australia, Canada, Singapore, Mexico, New Zealand, India etc. Details of the BMW Group registrations for the trade mark ALPHABET and variations thereof in India are given below:

Other applications/registrations for the mark ALPHABET in various classes:

As per the news reports, the German car maker that owns the trade mark Alphabet is reviewing whether Google has committed trade mark infringement. However, the spokeswoman said that currently there are no plans of taking legal action against Google. In order to establish a case of trademark infringement, BMW Group would have to show that the use of the company name Alphabet by Google creates a "likelihood of association/confusion" among consumers between the two brands. However, this would be proved if both the brands offered similar goods and services, whereas it is not so.

However, Mr. Larry Page, Google co-founder and CEO of the new Alphabet, has made it clear in the announcement that they do not intend to use Alphabet as their brand name and only as the name of their parent company under which all other companies would function independently and develop their own brand identity. Therefore, a legal dispute is not very likely to occur.

According to Mr. Page, the reason behind adoption of the name/ mark ALPHABET was that the alphabet represents language, one of humanity's most important innovations, and is the "core of how we index" in a Google Internet search.

Domain <abc.xyz>

Moreover, as the domain <alphabet.com> has already been registered and is being used by the BMW Group, Google acquired a unique domain <abc.xyz> for its parent company. The rights to <abc.xyz> were bought from Mark Monitor which registered the address in March 2014. The top level domain .xyz used by Alphabet’s website was recently introduced in the year 2014 by Mr. Daniel Negari, who is ICANN’s youngest registry operator.

Since Google acquired the domain <abc.xyz>, the registrations on the “.xyz” domain have increased by more than 27, 000 according to the website ntldstats.com.

However, reportedly BMW does not have any plans to sell the domain <alphabet.com> to Google.