Dabur Vs Marico to Court for ‘Trademark Infringement’

NEW DELHI: Dabur has taken rival Marico to the Delhi High Court for allegedly violating trademark and copyright laws by comparing their hair oil products and denigrating its Dabur Amla in a print advertisement.

“It is a case of trademark infringement as well as disparagement of Dabur Amla,” said a person aware of the case. The court issued a notice to Marico and scheduled the next hearing for February 7, the person said.
Another person said Marico ran print ads last week that used pictures of Dabur Amla hair oil and compared it with its Nihar Shanti Amlahair oil.
Mumbai-based Marico’s consumer products include Parachute, Saffola, Nihar Naturals, Livon, Set Wet, Mediker and Revive. Dabur has a portfolio of over 250 herbal and ayurvedic products. A Dabur spokesperson declined to comment, saying the case is sub judice. A Marico spokesperson said its ad did not disparage the rival’s product in any manner.

“While the matter in question is sub judice, Marico is legally compliant with all its product advertisements and strongly believes in responsible communication,” a Marico spokesperson said in an emailed response. “In this particular case too, the advertisement factually represents the benefits of our product without disparaging the goodwill of another brand. We also have an acknowledgment on the same from the Advertising Standards Council of India.”

Metro Shoes Vs Flipkart to Bombay HC over Brand Name

Metro Shoes has filed a case in the Bombay High Court alleging Flipkart is selling a private brand named Metronaut that is deceptively similar to Metro’s eponymous brand, and also alleged that the online retailer is selling shoes among other products under the brand name.

Piyush Shah, the lawyer representing Metro, said he has filed the case on Tuesday. “They are using the name of Metronaut that is similar to Metro,” Shah said. “It is a trademark infringement case.”
“Flipkart has not been aware of any such legal proceeding. If we are served notice by any court or judicial authority, we will take the necessary actions that are in the best interests of the company,” a Flipkart spokesperson said in an emailed response.

Late last year, Flipkart had launched products under Metronaut private label in men’s fashion and accessories. Currently, Flipkart sells denims, t-shirts, shirts, shoes and accessories such as belts, wallets and sunglasses under the Met .Metro operates over 200 outlets in and around 100 cities and also sells through other multi-brand stores.

Court has Summoned Facebook Founder and CEO – Mark Zuckerberg

BHOPAL: An additional session’s judge (ADJ) of Bhopal district court in Madhya Pradesh has summoned Facebookfounder and CEO – Mark Zuckerberg, to his court following a petition by a Bhopal based start-up alleging harassment.

Additional sessions judge Parth Shankar Mishra issued the order with directions to send the summons by email. He was hearing a civil suit filed by Swapnil Rai who runs a portal thetradebook.org, which he claims is a business networking platform.

Rai has alleged that Facebook had stopped his paid advertisement campaign to promote his ‘thetradebook’ page after running it for three days and then issued a legal notice opposing title of his portal. The campaign was run between August 8 to 14 2016 and second one was scheduled to be run between April 14 to 21, 2018.

“Second campaign was stopped wrongfully on April 16 for which a payment of Rs 215 was raised by Facebook. In the second ad-campaign there was promotion of the webpage www.thetradebook.org containing registered trademark ‘tradefeed’,” he added.

“They want to remove word ‘BOOK’ from my portal and had been sending legal notices to me causing immense mental stress,” Rai adding Facebook had been opposing their trademark application under Class 42 and Class 38 (of the Trademark Filing Classification). Rai also alleged that FACEBOOK was pressurising him to withdraw the trademark application.

On April 2016, a Noida based law firm had issued legal notice of Rai on behalf of Facebook. “The trademark FACEBOOK of our client is inherently distinctive and has been used in priority by our client in India. The word FACEBOOK does not exist in common parlance in India prior to the adoption thereof by our client. Our client was the first to use and popularise the term ‘BOOK’ in connection with social networking services. By virtue of its extensive, continues and popular use, our client owns exclusive rights to the trademark FACEBOOK. Moreover on account of the extensive, worldwide and popular use of the trademark FACEBOOK, no unrelated entity has the right to make use of the identical mark for any goods and services” – reads the notice.

The concerned law firm was contacted for their comment on this issue, but they refused to speak.

Ex-Parte Interim Injunction Vacated after Seven Years by Delhi HC

Delhi High Court through Justice Sanjeev Sachdeva vacated an ad-interim injunction granted in favour of ‘Three-N-Products’ (hereinafter, plaintiff) against two defendants back in March, 2011. The case involved the alleged infringement of the plaintiff’s trademark “AYUR” registered in Class 24 & 25 for goods such as bedcovers, textiles, shoes, boots, etc. The plaintiffs took issue with the mark “AYURVASTRA” used by the defendants in respect of goods such as sarees, dress materials, beds, etc.

he facts are simple – the plaintiffs became aware of the use of the defendants’ mark sometime around 2009. Subsequently, they addressed Cease and Desist notices to both the defendants. Thereafter, the plaintiffs noticed that the terms of these notices were not honoured and therefore instituted the present suit in 2011.

To summarise the contentions of both the parties – the plaintiffs argued that their mark “AYUR” was an invented word and had been adopted by them in 1984, and was in continuous and uninterrupted use by them since then. Further, they had spent substantial amounts of money on advertising the aforesaid mark, which is well-known as being associated with the plaintiff’s goods. Their primary contention was that the defendants’ mark “AYURVASTRA” is identical and similar to their invented mark “AYUR”.

The defendants countered these contentions by submitting that the mark “AYUR” is not an invented word, but is in fact, a generic/common word being a part of the word “AYURVEDA”.  As such, the plaintiffs cannot claim exclusive rights to the word “AYUR”. Their mark is, accordingly, struck by section 17(2) of the Trademarks Act, 1999 which does not permit any proprietor to claim exclusive rights over parts of a registered trademark that are common. They further submitted that their use of the mark “AYURVASTRA” is due to the Ayurvedic dyeing techniques employed by them while manufacturing their goods i.e. clothes, which translates to “vastra”.

The court was in agreement with the contentions put forward by the Defendants. The Court held that the plaintiff’s primary contention was that the word “AYUR” is an invented word over which they had exclusive rights. However, the Court observed, “The claim of the plaintiff ex-facie appears to be incorrect. The word “AYUR” finds mentioned in the Hindu Religious Texts i.e. the Vedic Puranas, which has used the word “AYURVEDA”. The word “AYUR” signifies healthy life and the word “VEDA” signifies knowledge. The word “AYURVEDA” is a Sanskrit term comprising of two words – “AYUR‟, which means life or vital power, and “VEDA” – which means science or knowledge.” On these grounds, the Court held that the plaintiff’s mark is a generic/descriptive mark which qualifies for a lower level of protectability in the eyes of the law – when compared with arbitrary or fanciful marks. For such generic words to qualify for exclusive protection in favour of a particular proprietor, such proprietor would have to show that the mark used by them has via extensive use acquired distinctiveness and is identifiable by the public only with the said proprietor’s goods and/or services. In the present case, the plaintiff had failed to prove the same. Further, the court observed that two marks “AYUR” and

“AYURVASTRA” are entirely different in terms of getup, style, and design. On these counts, the court held that the plaintiff had failed to make out a prima facie case in their favour or even show a favourable balance of convenience. Thus, the ex-parte ad-interim injunction granted in favour of the plaintiffs all the way back in 2011 was vacated by the Court.

Rosogulla is the Sweetness of Bengal not of Orrisa

War between West Bengal and Orrisa for the Geographical Indication (GI) tag for the rosogulla has finally reached a conclusion , and West Bengal won the matter before .

Before making the claim for GI in WIPO ( World Intellectual Property Right ) have to decide the actual Geographical origin of the Rosogulla . under this battle W.B. is oblivious claimant but Orissa was also claiming for the same as “Sunder Bhog” similar to Rosogulla .Representational image. AFP
A geographical indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.”

As per Rule the GI tag provides an assurance of quality and uniqueness, which are attributable to the place of its origin.This agricultural, natural or a manufactured cultural product is awarded a tag by experts to protect manufacturers who produce these genuine products. They also get a premium pricing for the same in the domestic and international markets thanks to the tag.Some other products from India to get the tag include Maheshwari Saree , Agare Ka Petha , Nagpur oranges and recently Ratlami Sev etc.
West Bengal chief minister Mamata Banerjee was delighted by the news. “Sweet news for us all. we are very happy and proud that Bengal has been granted GI status for rasgulla,” she said, taking to Twitter to express her delight. it brings to a conclusion a bitter battle over the sweet. For years, Odisha and West Bengal have bickered over where the dish originated from. Odisha claimed to have “invented” the sweet, saying it had ties to a centuries-old ritual associated with Lord Jagannath.
The tussle escalated in June 2015, after Odisha’s science and technology minister Pradip Kumar Panigrahi set up committees to trace the origin of the dish, as per a report on CNN-News18. They even went a step further to declare 30 July as ‘Rasagolla Dibasa’ to celebrate its origin.

The report said that the West Bengal government then decided to fight this claim legally and provided evidence that the dessert was, in fact, created by renowned sweet-maker Nabin Chandra Das in 1868. Das’ great-grandson, also the executive director of KC Das Pvt Ltd, told The Indian Express that they were happy with the decision. “We are all so happy. It was a bitter fight. We provided documents to prove our claim that rasgulla originated from Bengal. We also thank our chief minister, who after seeing media reports, asked the government to apply for GI registration,” he said.

Hotel Taj Palace Got Registration of Trademark

First time in India Trade Mark Registry has assigned an image of the tomb of Hotel Taj Mahal Palace l. first structure in India to get such a trademark registration , one of many firsts of this landmark of the city and takes it into an elite group of trademarked structures across the globe, enhancing its stature in the international hospitality industry. logic of applying for a trademark originated a year ago, during the tenure of former Indian Hotels (IHCL) MD and CEO Rakesh Sarna. A hospitality veteran, Mr. Sarna had brought several changes to the Taj Group, including the introduction of the brand architecture that the chain calls ‘Tajness.’

Under fast registration process , It took seven months to get the trademark. Usually, trademarks are only assigned to company logos and brands, entities that make goods or services that are bought and sold or the goods or services themselves. This is to protect these commercial entities from other commercial entities that may seek to use their goodwill and brand recognition.

Taj Hotels Palaces Resorts Safaris (which is owned by Indian Hotels, the hospitality arm of the Tata Group) by applying for the trademark, demonstrates that it believes that the very look of the building — or reproductions of it — is so recognisable that anyone attempting to replicate or use it for any commercial reason is trying to cash in on its brand, and it therefore needs to be protected. At its most basic level, the trademark means that no one — or no organisation — can make commercial use of images of the Taj Palace exteriors. without consent.

It also concedes that as far as the Indian government is concerned, the Taj Palace is the most identifiable commercial building in India, since there are many other buildings — Parliament House or Rashtrapati Bhavan to name just two — that are more widely recognised. Not to speak of historically important monuments, like the Qutb Minar or India Gate. Or the Gateway of India (20 years younger) in front of the hotel. Or, for that matter, that famous mausoleum in Agra after which the hotel is named.this enhances the Taj Palace’s place in the world: among the other well-known structures around the world with trademarks are the Empire State Building in New York City, the Eiffel Tower in Paris, and Sydney’s Opera House.

getting a trademark assigned is just one more first in the 114-year-long journey of the hotel. The story goes that Tata group’s founder, Jamsetji Tata, decided to set up the hotel after he was refused entry into Watson Hotel, which only allowed whites. The Taj was the country’s first luxury hotel built by an Indian and Bombay’s first luxury hotel.At the time of its inauguration, it was the only hotel in India with electricity. It was also the first to have an elevator, a licensed bar, an all-day restaurant and a discotheque. It has played host to leaders of the Indian Freedom movement such as Muhammad Ali Jinnah, Sarojini Naidu and many others. Lord Mountbatten, the British Raj’s last viceroy of India, announced the country’s independence from its steps in 1947.

Speed Patent – Fastest Patent Grant in 113 days India Only

Mumbai ( Controller of Patent )- Indian Patent office is very famous for late patent granting , some tim it may take 6- 7 years to final grant , but now with the healp of computerization and Patent offices initiative in India, first time ever, a patent has been granted within a record 113 days , it is biggest revolution of the Indian Patent System

As per amended Patent Rules, Hyderabad-based Optimus Drugs and more than 15 other companies including startups and research-based firms have been granted patents within a record time of 113-300 days only . as per initiative under Govt. of India’s DIPP program “ Registered Startup Companies ” are benefitting through with the fast drive of the Patent Office .

with the help of expedited examination provisions of patent applications’ shorten the time period for grant of patents from the ‘filing’ of application to its ‘publication’ to two-three years, down from the current five-seven years. As per amendment in Patent Rules 2003 on May 16, 2016, India has introduced ‘expedited examination’ for patents filed by startups, and those entities which select India as the competent International Search Authority (or ISAs, with 20 such authorities globally). “Optimus “ Drugs was granted a patent on “Apixaban” within the shortest time, among others filed under the new provision, according to the controller general of patents, designs & trade marks Shri O P Gupta also added the rules aim to remove bottlenecks in the process, clear pendency and encourage more filings, technological advancement and innovation.

with the help of new rules will allow future applicants to put applications on the fast track if they select India as an ISA, or International Preliminary Examining Authority, and file applications in India first. Besides, new trademark rules which were implemented in March this year will also expedite the registration of trademarks to six-seven months from the earlier one-two years. A major reform in the office relates to accepting electronic mail as valid, which will shorten the communication process drastically. The process of registration, publication , and communication would be shortened and streamlined.

In a further streamlining of operations, the copyright office has moved under the ambit of Department of Industrial Policy and Promotion from Ministry of HRD , while the number of patent examiners has increased substantially from 130 to 450 across the country.

With the help of the new provisions of Trade Mark Rules 2017 , now any innovator can get the benefit of their research and development very fast , which initiate more and more research and development in the country .

Effect of Registered Trademark in Food Industries GST

As per new Goods and Service Tax Act,2017 , which is going to apply on 1st July 2017 , very surprising provision under the Act is 5% tax liability on the food products those have registered a trade mark under Trade Mark Act ,1999 . the purpose of the provision is to collect more tax those who are enjoying brand goodwill with premium value and collecting huge margin compared to the non – branded goods from the customers.

But the biggest controversy on this issue is one side Government of India trying to promote and secure IPR ( Intellectual Property Rights ) ata Lower level like “ MSME’s” other side this kind of provisions under the new act at GST clearly killing the I.P.R. of the MSME’s . effect of this provisions hits only the small and medium scale Entrepreneurs because big players are already paying the Tax and they don’t have any problem about this.
Another side a small and medium scale industry those have registered trademark unnecessary face the stroke of 5 % , the food industry is already on the edge of the cut through competition with the big and Multinational companies they are already paying the tax , they don’t have any effect through this provisions because they are already selling their goods with the present tax slab.

MSME’s having very small number of the resources, very less turnover they will not survive in the market competition with big industries. this provision of the GST clearly discouraging the MSMEs to protect and
develop their IPR’s like the trademark.

The Big and MNC’s will enjoy only the Intellectual Property Rights in India, that only help to indirectly initiate the Monopoly Business theory where big fish only sharp their Fins through GST where the small and medium just Cut their Fins and just swing in a small Pound like “ tadpole ” . this provision of the act is only developing a big gap between big and small. Being a trademark and IPR professional, a number of Traders, Manufacturers, and Trade Mark owner contacted us and request to withdraw all their Registered trademarks otherwise they have to out of
the game of IPR . Again the provision is it self-conflicted in term “ Registered Trade Mark” and “ Un-Registered trademark ” because the Registration of the Trade Mark Act,1999 approximate procedure time to get final registration is two- three years, is meanwhile of the process time , what this trade marks called “ Branded” or “ Non-branded ” ? this is the biggest question.

The provision on the Registered trademark food product 5% tax is clearly against the motive of the Govt. to promote MSME’s IPR ( Intellectual Property Right ) , being the cost conscious market the 5% is very difficult for the small and medium scale industries , in the food industries the business margin of the goods like tea , pulses, rice , wheat and flours etc is only 1-2 % only , in that condition the big players having rich sportswear , big ground like huge marketing network, media etc. but the small one having the local small ground where they can’t compete with the bigger one .

In short, the provision 5 % tax on the Registered Trade Mark goods under the provision of GST 2017 is itself killing the sprite of the small and medium scale industries to make capable of fighting with big and MNC’s in India though weapon of IPR . One side DIPP ( Department of Industrial Policy and Promotion ) and MSME trying to aware MSME to protect their IPR’s as weapons to fight with big competitors another side , they are trying to surrender their small business tools like their registered trade marks.

Rakesh Soni , Trade Mark and IPR Attorney
www.trademarkiso.com, 9425318625

Now Sound Mark can be Register online under Trade Mark Rules 2017 in India

In India trade mark act related to trademark in India was the (i ) Trade Marks Act, 1940 which had similar to the UK Trade Marks Act, 1938.

Other mile stone in the history of trade mark was Trade and Merchandise Marks Act, 1958 with changed by the the Trade Marks Act, 1999 and is the present trade mark procedures operated through Trade Mark Act ,1999.

In the Act of trade mark 1999 , logo , name , signature , mono , punch line can registered as per the procedures  .

In 2004 Yahoo Inc has presented his claim for Trade Mark Registration of his jingle “ yodeling the word yahoo.” But that time there was no such registration before this but as per provisions of trade mark Act 1999 , department of the trade mark has registered the “Sound mark ” of the Yahoo.

The news rules of the Trade mark 2017 has implemented from the 6^th march 2017 with some amendments in the rules and give the provision for registration of “ Sound Trade Mark in India ” through online filling on www.ipindia.nic.in .

For the registration applicant have to provide the MP3 file  along with application and appropriate fees .

Following mentioned “Sound marks ” registered in India –

1. ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik)
2. Britannia Industries ( bell sound)
3. Yahoo -(Human voice yodelling Yahoo)</>
4. Cisco – (Tune under  conferencing service Web Ex)
5. Nokia – (Guitar sound for switch on / off )

The best option and tool to appeal the customer is sound and if it is in form of catchy jingle more appealing to the customers , like the jingles are very easy to identify the trade mark and brand name like Amul ( Elkale  pakali delicious ) etc and other jingles like Cadbury  are identity of the companies .

Increase Fees of Trademark in India – Revision of Trademark Fees in India

GOVERNMENT OF INDIA

MINISTRY OF COMMERCE AND INDUSTRY

(DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION)

Notification

New Delhi the                 March, 2017

GSR ____ (E).- Whereas a draft of certain rules, namely, the Trade Marks Rules, 2015 were published as required under sub-section (4) of section 157 of Trade Marks Act, 1999 (47 of 1999), vide notification of the Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) number G.S.R. 879 (E) dated, the 17^th November, 2015, in the Gazette of India, Extraordinary, Part II, Section 3, Sub-section (i), inviting objections and suggestions from all persons likely to be affected thereby, before the expiry of a period of thirty days from the date on which copies of the Gazette containing the said notification were made available to the public;

And  whereas  copies  of  the  Gazette  were  made  available  to  the  public  on  the  17^th November, 2015;

And whereas, objections and suggestions have been received from various persons and stakeholders within the specified period in respect of the draft rules contained in the said notification and all the objections and suggestions have been duly consulted by the Central Government Now, therefore, in exercise of the powers conferred by section 157 of the Trade Marks Act, 1999 (47 of 1999), the Central Government hereby makes the following rules in supersession of the to replace Trade Marks Rules, 2002, except as respect things done or omitted to be done before such supersession, namely:-

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List of Forms

FORM TM-A

The Trade Marks Act, 1999

Application for registration of a trademark

[The relevant information must be filled up in coloured box against the respective head]

FORM TM-M

The Trade Marks Act, 1999

Application/Request for any miscellaneous function in respect of a trademark Application/ Opposition/Rectification under the Trade Marks Act

This form is divided into three Parts i.e. A, B & C. Part A and C are required to be filled compulsorily.

Part B is further divided into several subcategories and the same is required to be chosen by the applicant as per requirement and be filled accordingly.

[Note: One form is meant for one request only. Different forms should be submitted for different requests. In case more than one request is claimed in one form the first one will be entertained and rest of the requests will be ignored.]

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FORM TM-R

The Trade Marks Act, 1999

FORM TM-O

The Trade Marks Act, 1999

Opposition/Application for Rectification of the Register/Counter statement / Refusal or invalidation of a trademark under Geographical Indication of Goods (Regulation and Protection) Act, 1999

[The relevant information must be filled up in coloured box against the respective head]

[In case of off line filing, the form should be fined in duplicate]

1         Applicant or Registered Proprietor/Opponent /Third Party Making The Application/Request

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FORM TM-P

The Trade Marks Act, 1999

Application for Post registration changes in the trademarks

This form is divided into three Parts i.e. A, B & C. Part A and C are required to be filled compulsorily.

Part B is further divided into several subcategories and the same is required to be chosen by the applicant as per requirement and be filled

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accordingly.

[Note: One form is meant for one request only. Different forms should be submitted for different requests. In case more than one request is claimed in one form the first one will be entertained and rest of the requests will be ignored.]

[(a) One form is meant for request of one change only. Different forms should be filed up for different changes

(b) The relevant information must be filled up in colored box against the respective head.]

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FORM TM-U

The Trade Marks Act, 1999

Application for registration of Registered User/Variation of Registered User/Cancellation of Registered Users and Notice of intention to intervene in proceeding in cancellation/variation

This form is divided into three Parts i.e. A, B & C. Part A and C are required to be filled compulsorily.

Part B is further divided in several subcategories and the same is required to be chosen by the applicant as per requirement and be filled accordingly.

[Note: One form is meant for one request only. Different forms should be submitted for different requests. In case more than one request is claimed in one form the first one will be entertained and rest of the requests will be ignored.]

[(a) One form is meant for request of one change only. Different forms should be filed up for different changes

(b) The relevant information must be filled up in colored box against the respective head.]

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[ This address should be the address of the applicant’s principal place of business in India]

[(a) Unless otherwise specifically stated, the applicant’s address shall be the address for service of the applicant who has principal place of business in India.

(b) The address for service in India must be provided, in case the applicant does not carry business in India]

d      Notice of intention to intervene in proceedings for variation or cancellation in regard to registration of registered user

Ground for intervention in proceeding

PART C

[details of the person making application/request and details of document is submitted]

DETAIL OF THE Applicant(s)

Signature

Name

Authority

Details of documents attached