Glenmark Loses the Anti- Diabetic Drug Patent Battle to Merck: In Delhi High Court

We had previously reported in our newsletter Vol. VII, Issues 13 dated March 30, 2015 that the Supreme Court had stayed the injunction order passed by the Delhi High Court against Glenmark.

Merck Sharp & Dohme Corporation & Anr. (Plaintiff) had filed the suit against Glenmark Pharmaceuticals Ltd. (Defendant) for permanent injunction praying to restrain them from making, using, selling, distributing, advertising, exporting, offering for sale or dealing in Sitagliptin Phosphate Monohydrate or any other salt of Sitagliptin in any form, alone or in combination with one or more other drugs or from doing any other thing that infringes the claimed subject matter of the plaintiff’s Indian Patent No. 209816. Click here to view the news reported earlier.

Now, after the trial the Learned Single Judge of the Delhi High Court on October 07, 2015 has restrained the defendant from selling, distributing, marketing or exporting its anti-diabetes drugs Zita and Zita-Met, on the ground that they infringed plaintiff’s patent. However, no issue has been framed in regard to the damages. Further, plaintiff is entitled to actual costs of the proceedings.

Highlights of the judgement are mentioned below:

• The Learned Judge was of the opinion that it is the Sitagliptin Free Base which is the DPP-IV inhibitor and phosphate salt is used for delivery of Sitagliptin in the body. Sitagliptin Phosphate Monohydrate has enhanced properties in the sense that it has improved chemical and physical characteristics, but the active moiety is Sitagliptin. Therapeutic efficacy is not enhanced by Sitagliptin Phosphate Monohydrate since it is the Sitagliptin itself which is the active moiety and is effective for inhibiting DPP-IV enzyme and is useful for treatment of type II diabetes. Thus, use of Sitagliptin Free base alone in Sitagliptin Phosphate Monohydrate tablet by the defendant itself amounts to infringement of the suit patent.
• Merely because the defendant selling the generic version of the tablet at a lower price than that of plaintiff’s, cannot be made a ground to decline injunction against the defendant under public interest.
• Further, no evidence has been led by the defendant to show non-disclosure of information was deliberate and for malafide reasons.
• It is not mandatory for the Court to revoke the patent merely because any of the grounds mentioned in Section 64(1) [Revocation of patents] are made out. It is the discretion of the Court to revoke or not to revoke in the given facts and circumstances of a case.
• The word “may” is used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out.

Section 64 (1): Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, …

• The Judge also found defendant’s witness taking shifting stand and hence unreliable.

Click here to access the order.

Ministry of Environment, Forest and Climate Change invites comments on the Draft Environment Laws (Amendment) Bill, 2015

The Draft Environment Laws (Amendment) Bill, 2015 has been introduced by the Ministry of Environment, Forest and Climate Change with the objective to provide an effective deterrent penal provisions and to introduce the concept of monetary penalty for violation and contravention of the provisions of the Environment (Protection) Act, 1986 and National Green Tribunal Act, 2010.

The Ministry has invited objections/ suggestions from the public on the Draft Bill by October 22, 2015.

The objections/ suggestions can be send by e-mail to mk.singh65@ias.nic.in and satish.garkoti@nic.in or at the following address:

Secretary,

Ministry of Environment, Forest and Climate Change,

Indira Paryavaran Bhawan,

Jor Bagh Road, Aliganj,

New Delhi- 110003

The Ministry of Environment, Forest and Climate Change Draft Bill can be accessed from the following link:

http://envfor.nic.in/sites/default/files/ScanJobInvitation%20of%20comments%20Draft%20Environment%20Law.pdf

S. S. Rana & Co. at 4th Annual Pharma Legal and Compliance Summit by Lex Witness

S.S. Rana & Co. participated in 4th Annual Pharma Legal and Compliance Summit by Lex Witness in Mumbai on October 16, 2015 at The Leela.  

The Summit is an excellent platform to get together and share the regulatory and legal developments and challenges in the pharmaceutical industry with Compliance being the key mandate of the Summit.

Discussions were held on ‘Unleashing the sciences of Trademarks & Copyright’, ‘M&A and FDI rides of the Indian pharma sector’,  ‘An insight into the current patent scenario in India’ and ‘The regulatory sagas and the challenges within.’

Ms. Bhawna Sharma, Patent Agent at S. S. Rana & Co. was a panelist discussing ‘An insight into the current patent scenario in India’. The panel discussion included an overview of Patentability criteria, Patent enforcement, Compulsory licensing, Compliance protocol of the Indian Patents Act, Voluntary licensing- In Licensing/Out Licensing and Data exclusivity.

The conference was an overall success and saw active participation from pharma/bio pharma firms, IP and regulatory consultants, law firms and Patent Agents.

The Crayon Wars: Faber Castell v. Cello

The High Court of Bombay on September 3, 2015, in a dispute between Faber Castell (the Plaintiff) and Cello Pens Pvt. Ltd. (the Defendant) over crayons, granted injunction against the Defendant.

In the present case, the Plaintiff filed a suit for infringement of design, copyright and passing off, etc., against the Defendant. The Plaintiff alleged that the Defendant had infringed the three-sided crayon design and also attempted to pass- off them as being that of the Plaintiff.

The Plaintiff based its contentions with regard to the distinctiveness of its crayons, on the ground that, it had a novel and unique shape, i.e. trigonal, the packed product including 24 crayons and moreover the twin series of paralleled line of dots on each stem of the three sides on the crayons. The Plaintiff further stated that their crayons were unique with regard to its presentation, wherein two sunken plates are facing each other inside a bigger outer ampule.

According to the Plaintiff there existed five key and distinctive elements to the Plaintiff’s crayons i.e. 

• Triangular shape,
• Sharpen-able,
• Erasable,
• Non-slip grip, and
• Arrangement in the tray.

The Plaintiff clearly mentioned of having no interest in claiming monopoly over any one of the aforementioned specialty, but instead contended that it was the combination of all these aspects in a specific manner along with the presentation, which went beyond being merely functional and was in fact entirely aesthetic, novel and certainly unique to that of the Plaintiff’s and thereby, definitely exceptional to that of the Defendants and nobody else. 

The Defendant on the other hand attributed the Plaintiff with suppression and submitted that such suppression was material particularly as the key elements mentioned by the Plaintiff were purely functional and not capricious additions. The Defendant further submitted that if there had been prior publication of the Plaintiff’s designs, then the burden on the Plaintiff would be significantly higher as the Plaintiff would not only be unable to argue design infringement at the interim stage but they in addition would also have to prove that the features of the product are neither purely descriptive nor purely functional and thus, there is exclusivity attached to those features and that the confusion is inevitable or has actually occurred.

The High Court of Bombay, considered the issue of capriciousness in respect to the key feature of the Plaintiff’s crayons and observed that the twin series of parallel lines of dots as well as the name and logo of the Plaintiff embossed on the crayons were artistic and not functional elements. The Court further observed that there was nothing to suggest that the twin parallel lines of dots provide the functionality of a better grip or that such parallel lines of a specific length aid any such functionality and stated that if at all the twin parallel lines were functional, there was no reason why the Defendant had chosen not to extend them across the entire length of the shanks and had instead chosen to stop at the exact length the Plaintiff had stopped.

The Court placed reliance on various authorities to determine the issue of passing off claimed by the Plaintiff against the Defendant;

The Court while placing reliance on Jones v. Hallworth [14 RPC 225] where the issue of whether permissible copying of various features might lead to impermissible passing off of the whole was dealt with, stated that this position was exactly similar to the case at hand and further held that on comparing the products of both parties, the only distinction which can be carved out between the two was that the Plaintiff’s name and logo were missing on one of the shanks of Defendant’s crayons. All the other features of Defendant’s crayons were exactly same as that of the Plaintiff’s. Therefore, taken together in aggregate, the Bombay High Court held that such a combination of features including the exact length of the parallel lines of dots and the same manner of presentation as Plaintiffs crayons indicate passing off.

The Court further, examined the case of Whirlpool of India Ltd. v. Videocon [2014 (60) PTC 155] which considered the issue of where a particular element has both form and function. The Bombay High Court in that case held that the mere existence of function combined with form did not disentitle such an element from protection altogether. However, in that case, the external shape of the washing machines was held to have no functional purpose. In such a situation, it cannot be argued that the functionality of the elements were such that it was not possible to have any alternate design other than the Plaintiff’s design. Moreover, when the external shape of the washing machine has no functional purpose, it is redundant for the Defendant to employ a defense attributing features of the Plaintiff’s design to functional requirements. Applying the same principles to the instant case, the Court held that as the Defendant has been unsuccessful in showing the functional uses for the key elements of Plaintiff’s crayons, it could not argue that this was the only possible design it could have employed.

Conclusion:

After considering the principles of the above cited authorities, the Court held that from the view point of the target audience of a child or a harried parent, there was no distinction between the two products. The Court further stated, “that every single feature that has been used in a unique fashion by the Plaintiff in creating their products was replicated, down to the last millimeter, in Defendant’s product.”

Thus, the Court held that due to the Defendant’s inability to prove functional uses for Plaintiff’s pastel crayons, their design of crayons was the only conceivable design and that the products of the parties were confusingly similar, the Bombay High Court granted Plaintiff with the injunction against Defendant, noting that if the Defendant’s pastel crayons were to persist in the market, it would result to monetary loss faced by the Plaintiff. 

FIGHT OR FLIGHT: AMERICAN EAGLE V/s. URBAN EAGLE

The High Court of Delhi, while granting an ex parte interim injunction to Retail Royalty Company (Plaintiff) and restraining Pantaloons Fashion & Retail Limited & Ors. (the Defendants) from using the trademark “URBAN EAGLE AUTHENTIC OUTFITTERS” vide its Order dated September 21, 2015, disallowed exclusive right over the mark “EAGLE” by the Plaintiff vide its Order dated September 23, 2015 in Retail Royalty Company v. Pantaloons Fashion & Retail Limited & Ors. (CS(OS) 2872/2015).

Brief facts of the Case

• The Plaintiff and Defendants are both engaged in, inter alia, the premium clothing retail sector.
• The Plaintiff is stated to be the owner of the trademarks AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.

• The Defendants are stated to be using the trademarks URBAN EAGLE AUTHENTIC OUTFITTERS.

Court’s Ex-Parte Interim Order dated September 21, 2015

The High Court of Delhi, vide its order dated September 21, 2015, granted ex parte interim injunction against the Defendants stating that –

• it prima facie appears that the Defendants are trying to ride on the goodwill of the Plaintiff and its trade mark AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.
• The Defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance with respect to the trademarks of the Plaintiff much less for the same line of specialized goods being casual clothing.
• It is not as if the Defendants are in the market for a long time and the Plaintiff has approached the Court with delay, noting that Courts look at issues differently where the Defendants are producing goods for a reasonable long period of time as compared to a case where the Defendants have recently entered into the market or are yet to enter into the market.

Court’s Order dated September 23, 2015

• Pursuant to the aforesaid Order dated September 21, 2015, the Defendants appeared before the Court and suggested that they will remove the expression “AUTHENTIC OUTFITTERS” from its trade mark leaving only the expression “URBAN EAGLE”.
• The Defendants further agreed to replace their existing DEVICE of EAGLE with a new EAGLE DEVICE, even though the existing DEVICE of EAGLE used by the Defendants is stated to be not deceptively similar or identical to the Plaintiff’s device.
• The offer of the Defendants is however stated to be not acceptable to the Plaintiff who prayed that the Defendants must not use the EAGLE DEVICE at all and must also not use the trade mark “URBAN EAGLE”.
• Relying on Marico Limited v. Agro Tech Foods Limited, 2010 (174) DLT 279, the Court refused to allow exclusive appropriation of the word “EAGLE” to the Plaintiff, all the more so in view of the submissions made by the Plaintiff itself in its reply to the Examination Report issued by Registrar of Trade Marks with respect to the cited marks. In the said Reply, the Plaintiff had argued that the well-settled judicial principle of entirety envisages that marks should not be segregated for the sake of unwarranted comparison, and that while deciding the question of similarity between two marks, the marks have to be considered as wholes, and meticulous or fragmentary comparison is not the correct way. The Plaintiff had further argued that upon such consideration as above, the cited marks, when compared with the subject mark, are phonetically, visually, structurally and conceptually dissimilar and distinguishable from the subject mark. Therefore, although all the cited marks and the subject mark share the common component “EAGLE”, it is the combining element “AMERICAN” in the subject mark that helps the subject mark create a different and distinct overall impression from all the other marks. As a concluding argument, the Plaintiff had submitted that if so many marks comprising the element “EAGLE” can co-exist peacefully on the Register of Trade Marks (a fact that is apparent from the Search Report), then there is absolutely no reason why the subject mark should not be allowed to proceed to registration.
• In view of the above submissions, the Court noted that the Plaintiff claims exclusivity to its trade mark by use of the expression “AMERICAN” alongwith “EAGLE” and not “EAGLE” in itself. Therefore, there cannot be identity or deceptive similarity of the mark “AMERICAN EAGLE” with “URBAN EAGLE”, although the goods of both the parties are same.
• During arguments, the Plaintiff also raised an issue of public interest, however, the Court rejected this argument stating that “URBAN EAGLE” is sufficiently distinguishable from “AMERICAN EAGLE”. Also, an issue of public interest will not be raised in the present case where the goods are only clothing, as opposed to certain cases where grave public interest would be involved such as the case of pharmaceutical goods or medicines.

• The Court also compared the two DEVICES of EAGLE as being used by the Plaintiff and Defendants, and observed that whereas the Plaintiff’s device is a swooping eagle showing an eagle going towards earth, the Defendants’ device is of an eagle which is taking off or flying higher or ascending. Obviously, there is bound to be some sort of similarity between two devices which uses an eagle, however, it cannot be said that the device of the swooping eagle is identical or deceptively similar to an eagle which is taking off or flying higher.
• The argument of the Plaintiff that it has a copyright in their device of swooping eagle and the Defendants therefore cannot use its device of eagle is also misconceived for the reasons stated above. Moreover, Section 13 of the Copyright Act, 1957 states that copyright is only with respect to an original artistic work and a swooping eagle device cannot by any stretch of imagination be said to be an original artistic work to be a subject matter of copyright as claimed by the Plaintiff.
• The next date of hearing in this matter has been fixed on December 15, 2015.

Concluding Remarks

A registered trademark provides the exclusive rights to use a trademark against others, but only in the form in which it is applied and registered. In case of a composite trademark, which has various distinctive and non-distinctive elements, the right to take action against an infringer is limited to the extent that the distinctive part of the trademark is misused by the infringer. Therefore, the pertinent questions here are, what happens when a part of trademark is misused and how can the proprietor take action against the infringer.

Section 15 of the Trade Mark Act, 1999 covers the registration of parts of trademarks, where the trade mark consists of more than one feature, and for claiming exclusive right of all such features separately, one has to seek registration for each such part as a separate trademark which shall be examined independently to determine whether it can be registered or not.

Section 17 of the said Act states the effect of registration of parts of a mark and states the general proposition that registration confers on the proprietor the exclusive right to use the whole trade mark. Therefore, if the proprietor desires statutory protection for exclusive use of any part of the trade mark, then he has to apply to register that part as a separate trade mark. Further, any part of the trade mark containing a matter which is common to the trade or is of non-distinctive character will not be allowed registration. However, if the applicant is able to adduce evidence of acquired distinctiveness for such part, he may then rightly claim exclusive right for that part of the trade mark, even if it has not been separately registered.

The aforesaid view has also been taken by the Supreme Court of India in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 which held that the proprietor cannot restrain others from either using any part or word independently or in combination with other words. However, if the proprietor acquires any right by long use of those parts or words in relation to his trade, he may claim exclusive right over the same and prevent exploitation of his mark.

The aforesaid Orders dated September 21 and September 23, 2015 can be accessed here and here respectively.

Delhi High Court issues notice to Government of India on FDI in E- Commerce

India's brick-and-mortar retailers have approached the Delhi High Court once again after failing to get a response from the government in their quest for parity in Foreign Direct Investment (FDI) norms with e-commerce players, which have attracted billions of dollars in overseas funding using the marketplace model.

The All India Footwear Manufacturers and Retailers Association (AIFMRA), have filed a writ petition in the Delhi High Court seeking clarity on FDI in e-commerce. The grievance of the Petitioners claiming to be retailers is that though FDI is prohibited in retail but the entities retailing goods through the internet are not being restrained from accepting foreign investment. According to news reports, AIFMRA claims that the various e-commerce websites have been continuously dodging the question of FDI violations by camouflaging their business as a “marketplace” and not a “seller”, when in reality a sale through online forums is akin in character to a sale made by a physical retailer. Thereby causing prejudice to the Petitioners as the marketplaces are in alleged violation of the existing norms that forbid FDI in retail.

The Petitioners argued that the entities selling goods through the medium of the internet qualify as “retailers” and further informed that the Union of India (UOI) and the other State Governments have been treating such sales as sales by retailers and have raised tax on them which are already challenged under different forums/ Courts.

Alleged violation of FDI policy by e-commerce entities: 

The Delhi High Court after noting the FDI policy and hearing the arguments advanced by the Petitioners observed vide order dated September 23, 2015 that prima facie it appears that the UOI / State Governments cannot, on the one hand, for the purpose of tax, treat sales by the entities selling goods through the medium of the internet as retail and on the other hand, for the purposes of investment, not treat the same as retail sale. The Delhi High Court further issued notice to the Central Government on the alleged violation of FDI policy by e-commerce entities and has directed the government to file the reply within two weeks, the matter is scheduled to be listed next on October 14, 2015.

Madras High Court Lights the Torch over Olympic Fight

The High Court of Madras, on September 11, 2015, granted an interim injunction in favour of Mr. Noor Mohamed, proprietor, Olympia Paper & Stationary Stores and Olympic Cards Ltd. represented by its Managing Director, Mr. Noor Mohamed (the Plaintiffs) and against Olympic Prints, Olympic Traders and Olympic Xerox (the Defendants) in respect of the trademarks OLYMPIC (label), OLYMPIC (word mark) and DEVICE OF A TORCH in Noor Mohamed & Ors. v. Olympic Prints & Ors. (CS(OS) 299/2014).

Brief facts of the case

• The Plaintiff No. 1 is stated to be carrying on business as the sole proprietor under the name and style of Olympia Paper & Stationary Stores. The Plaintiff No. 2, Olympic Cards Ltd., is a public limited company and licensee of the Plaintiff No. 1, who is the chairman and Managing Director of the Plaintiff No. 2.
• The Plaintiffs are engaged in the manufacture and marketing of various stationary products including wedding cards, visiting cards, invitation cards, greeting cards, inland letters, envelopes, paper and paper articles, cardboard and cardboard articles, books, diaries etc.
• The father of the Plaintiff No. 1 is stated to have adopted and used the aforesaid trademarks in 1962, and his proprietary concern was subsequently taken over as a partnership firm by his two sons including the Plaintiff No. 1. After the death of the other son, the partnership firm was dissolved and in 2005, the Plaintiff No. 1 became the sole proprietor of the concern under the name and style of OLYMPIA PAPER AND STATIONARY STORES.
• The Plaintiff No. 1 has obtained statutory protection by registering the said marks under the Trade Marks Act, 1999, which are valid till 2025.
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• The Plaintiffs are stated to have become aware of the Defendant No. 1’s operation under the name OLYMPIC PRINTS and using identical trademarks as the Plaintiffs in respect of digital and print media, through advertisements made in the magazine named ‘Print Week’ in the issue dated March 10, 2014. The Plaintiffs carried out a search in respect of the trademark OLYMPIC and came across a website of the Defendant No. 1 calling themselves to be a part of the OLYMPIC GROUPS wherein the DEVICE OF THE TORCH as registered by the Plaintiffs has been used by the Defendant No. 1 and its group which amounts to infringement of the Plaintiffs’ marks.
• The Plaintiffs came to know that the Defendants have only applied for the registration of the mark OLYMPIC PRINTS in classes 16 and 35 in 2012 and 2013 respectively.

Contentions of the Plaintiff

• The essential feature of the Plaintiffs’ mark OLYMPIC DEVICE is the word OLYMPIC with a device of a torch in the said label. The Defendants have infringed the registered trade mark OLYMPIC of the Plaintiffs as well as the registered DEVICE OF THE TORCH.
• The Plaintiffs are the prior user of the said marks since 1962 and the Defendants have filed the above applications only in 2012 and 2013 respectively claiming user rights also only from 2009 and 2010 respectively.
• The Plaintiffs intend to oppose the registration of the above mark once it is advertised in the Trade Marks Journal.
• The Defendant No. 1 has dishonestly and fraudulently adopted the impugned mark OLYMPIC PRINTS knowingly and being fully aware of the Plaintiffs’ existence.
• The Plaintiffs claim that there has been a steadily increasing demand for the product of the Plaintiffs in the domestic market and the sales turnover of the goods under the said trademarks for the year 2013-2014 are stated to be INR 523,860,612/-.
• The Plaintiffs have acquired the status of a well-known trademark under the provisions of the Trade Marks Act, 1999 and the Defendants’ mark OLYMPIC PRINTS is identical to the well-known and registered trade mark of the Plaintiffs.

Contentions of the Defendants

• The Defendants contended that the trademark OLYMPIC PRINTS was bonafidely conceived and adopted by the Defendant No. 1 in the year 2010.
• The mark OLYMPIC PRINTS is represented in a distinctive lettering style and artwork capable of distinguishing the services rendered by the Defendant No. 1. The Defendants’ trademark has no reference whatsoever to the kind, quality or the intended purpose of services and does not consist of marks or indication in the trade which is capable of distinguishing the services of the Defendant No. 1 from those of others.
• The Defendants are engaged in making plates for the printing shops, and produce and supply around 20,000 to 25,000 printed tags per day for textile customers. The mark OLYMPIC PRINTS of the Defendants has become very popular.
• The Plaintiffs, except for making a bald allegation against the bonafide adoption of the said marks by the Defendants, have not substantiated the same with any documentary proof. Further, the Plaintiffs’ very claim of adoption as early as in the year 1962 is false.
• Both the marks are not visually, phonetically and structurally or deceptively similar. There are several added features in the Defendants’ mark and there is no chance of deception and confusion in the minds of the trade and public. The Plaintiffs have not made out a prima facie case or established balance of convenience in their favour.
• The goods which are manufactured by the Defendants are different and not one and the same as that of the Plaintiffs. The goods manufactured by the Defendants are not for selling to the common man, on the other hand, it is meant for selling to the class of customers, namely, Printers. Therefore, there is no possibility for any confusion in the minds of the public. The Plaintiffs have knowledge from 2009 about the usage of the trademark by these Defendants therefore the case is hit by delay and laches. The Defendants are not doing business in Chennai.
• The mark OLYMPIC cannot be claimed exclusively by the Plaintiffs.

Order of the Court and its Implications

The Hon’ble Court held that the Plaintiffs have made out a prima facie case for grant of interim relief as sought for in the interim applications. For this purpose, the Court observed that it is to be seen in the present case under the above stated facts and circumstances as to whether the Plaintiffs have come before this Court immediately on knowing the infringement of their trademark and the impugned passing off action by the Defendants. In this regard, the Hon’ble Court considered the Plaintiffs’ contention that they became aware of the infringement by the Defendants only on March 10, 2014, and this contention was not specifically denied by the Defendants and on the other hand, except making a vague statement as though the Plaintiffs were aware of the trademarks of the Defendants from 2009, the Defendants have not filed any material proof in support of such contention.

The Hon’ble Court further held that the word OLYMPIC is a registered trademark of the Plaintiffs therefore, cannot be used by any other person and if there is any such use, certainly, it would amount to infringement of the said registered word mark.

The Court held that the Plaintiffs have established a strong prima facie case in their favour by showing that they are in the trade using the trade mark for more than 50 years and are doing good business running to several crores every year. The court further held that if no injunction is granted, it would certainly cause irreparable injury to the Plaintiffs as their registered trademarks are being used by the Defendants which would be construed as though the Defendants’ trademark is that of the Plaintiffs’.

Concluding Remarks

The aforesaid ruling calls for a debate whether exclusive trademarks rights over Olympic marks such as OLYMPIC, DEVICE OF TORCH etc. can be granted to traders in India.

Interestingly, Olympic trademarks enjoy a privileged status as they are protected by a statute over and above ordinary trademark protection. According to Rule 7 of the Olympic Charter, the International Olympic Committee (IOC) is granted ownership of the Olympic rings as well as the Olympic flag, motto, anthem, identifiers, designations, emblems, the Olympic flame and torches (the “Olympic properties”). All rights to any and all of the Olympic properties belong exclusively to the IOC, including rights to their use such as in relation to profit-making, commercial or advertising purposes.

It is further interesting to note that many countries have adopted permanent national legislation for protecting the Olympic properties, such as China’s legislation titled “Regulations on the Protection of Olympic Symbols of the People’s Republic of China” and the United States of America’s legislation titled the “Olympic and Amateur Sports Act” giving special protection to Olympic marks. The Olympic and Amateur Sports Act basically says that without the consent of the United States Olympic Committee (USOC) or IOC, any person who uses, for the purpose of trade to induce the sale of any goods or services or promote any theatrical exhibition, athletic performance or competition, using either the symbol of the IOC (which is the 5 interlocking rings) or any trademark, trade name, etc. that represents association with or authorization by the IOC or the USOC is subject to a civil suit.

Some countries are also signatories to the Nairobi Treaty on the Protection of the Olympic Symbol (1981) which is administered by the World Intellectual Property Organization (WIPO) and is open to any state that is a member of that organization, the United Nations or any of its specialized agencies, or the Paris Convention. According to WIPO, 51 countries are contracting members. States that have signed the Treaty are obliged to refuse or invalidate the registration as a mark and to prohibit the use for commercial purposes of any sign consisting of or containing the mark, except with the IOC’s authorization. India signed the Nairobi Treaty on June 30, 1983 and ratified the same on September 19, 1983.

Pertinently, Item 21 of the Schedule of The Emblems and Names (Prevention of Improper Use) Act, 1950 in India, as amended on August 18, 1978, prohibits the use of the name and emblem of the International Olympic Committee consisting of five inter-laced rings for professional and commercial purposes such as in a trademark.

The aforesaid Order dated September 11, 2015 can be accessed here.