Huge relief for Prius Auto Industries – Judgement on trademark infringement given against Toyota motor corp.

We had earlier written on how Toyota Motor Corp. won case against Prius Auto Industries for the infringement of trademark “Prius”. Prius Auto Industries, a Delhi based automotive accessories company, were found guilty of using Toyota Motor Corp.’s “well-known” trademarks. The single-judge Bench of Justice Manmohan, on July 8, 2016, had given an order preventing Prius Auto Industries from manufacturing, selling or using the Toyota Motor Corp.’s trademarks such as “Prius”, “Toyota” and “Innova”. In addition to this, the court had also directed Prius Auto Industries to pay INR 10 lakhs, to Toyota Motor Corp. as compensation for trademark infringement.

Aggrieved, Prius Auto Industries appealed against the judgement. The appeal was heard by justice Pradeep Nandrajog of the division bench of the Delhi High Court, on 23rd December 2016. Upon hearing both the parties, judgement was given favouring Prius Auto Industries saying that the use of “Prius” by Prius Auto Industries does not infringe on Japanese car maker Toyota Motor Corp.’s trademarks.

Prius Auto Industries had appealed saying that trademarks should be determined in context to a similar class of goods and in a relevant geographical market. Accepting Prius Auto Industries arguments, Delhi high court gave judgement in favour of Prius Auto Industries that,

“Toyota is a big company. It has had a presence in India for over two decades when the suit was filed. It was well entrenched in the Indian market in the year 2001. Obviously no consumer of Toyota car or buyer of an auto part sold by Toyota was ever confused by the appellants selling their products under the trade mark Prius, for if this was so, in ten years somebody would have complained to Toyota or at least would have made known said fact to Toyota.”

The judgement also quashed Toyota Motor Corp.’s argument that Prius Auto Industries had been benefited from the trans-border reputation. Toyota Motor Corp. relied on reports in the Indian newspapers, that published news about Toyota’s new hybrid car “Pirus” in Japan in 1997. The Court, however, held that,

“Though published in a newspaper, the publication is in the nature of an article written and thus the weight of its evidentiary worth in the context of an explosive news on a fact of history being made known to the public would be minimal.”

Regarding trans-border reputation, the judgment states,

“The weight of the evidence led by Toyota would be that it has simply established that when it launched the hybrid car Prius in the market in Japan in 1997, the event was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. The law on trans-border reputation requires two facts to be established. The first is reputation in foreign jurisdictions of the trade mark. The second is knowledge of the trade mark due to its reputation abroad in a domestic jurisdiction.”

“There being no advertisements published by Toyota for its car Prius in India and coupled with the fact that not all cars marketed under different trade marks by Toyota acquire a global reputation and much less in India, internet penetration as of the year 2001, being low in India, the weight of the evidence leans in favour of the view that by April 2001 Toyota had not established a global reputation in its trade mark Prius which had entered India.”

Read the full division bench judgement here.

Read the single judge judgment here.

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Copyright Dispute between Zee and Saregama

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In a recent Copyright infringement case, Zee Entertainment Enterprises Ltd (an Indian media and entertainment company) moved the Delhi High Court alleging infringement by Saregama India Ltd (an Indian music label and content producer for Indian television) over Zee’s copyright on songs from 29 movies. According to Senior Advocates representing Zee, the Plaintiff (Zee) has the copyright to broadcast these 29 movies and songs from these movies. Saregama India Ltd has allegedly exploited Zee’s copyright over these songs from 29 movies by way of playing the songs and allowing internet users to download them.

Interpretation of the Allegation

Zee, in its plea said Saregama India (Defendant) has been misrepresenting itself to be the copyright assignment holders of the sound recordings as well as audio visuals of the songs incorporated in the 29 movies, whereas, the rights to the recordings exclusively vests with Zee. Senior advocates representing Zee contended that Saregama (Defendant), as per their reply to the legal notice preceding the suit, claims assignment of copyright by the producers of the movies (in question) in the year 1981. During 1981, the medium of recording was only in the form of LPs (long playing vinyl record or phonograph).

Referring to the section 18(1) of the Copyright Act, 1957, the representatives of the plaintiff contended that the assignment of 1981 could not have vested in the Defendant the right to exploitation of the copyright in the “medium” or “mode” of recording that did not exist and was not in commercial use in 1981. The Plaintiff (Zee), sought to injunct the Defendant from exploiting the copyrighted works through CDs, DVDs and magnetic tapes. The Court enquired, whether or not, technological advancement in sale of music in the form of LPs as existed earlier to now CDs, DVDs and magnetic tapes would not fall within the meaning of “medium” within provision of Section 18(1) of the Copyright Act, 1957.

Actions

The Court, on December 23, 2016, held that the aforementioned contention requires due consideration and refused to grant injunction with respect to CDs, DVDs and magnetic tapes. On the contrary, the Court passed injunction restraining the Defendant from exploiting the “medium of ring tones” and “internet”.

The Delhi High Court further asked Saregama to deposit Rs. 20 lakh subject to which, the Defendant, shall, till the further date of hearing be entitled to stream the said music on its website and to permit download of songs as was being done but shall not be entitled to grant any new or fresh licences with respect to the said works. The Court listed the matter for further consideration for Jan 24, 2017.

Conclusion

This order does not provide a clear justification as to why or how CDs, DVDs and magnetic tape mediums differ from the internet and ringtones. A clear rationale is awaited until the next date (Jan 24) of decision. However, it is believed that if the sought injunction is granted with respect to CDs, DVDs and magnetic tapes this case would have an impact on the media companies.

Read the order here.

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Amazon India served notice By Flintobox for diverting website traffic

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A Chennai-based start-up company Flintobox, a provider of kids’ activity boxes, sent a legal notice to Amazon for alleged unlawful diversion of traffic to Amazon’s website by using their brand name.

Flintobox has already sent a “cease-and-desist” notice to Amazon claiming damages of 10 lakhs INR. According to Flintobox, anyone typing the word ‘Flintobox’ in Google search engine found “Flintobox at Amazon” as the first result in the form of a sponsored advertisement, which on further clicking would give no information of Flintobox products. Rather, it would display products by other companies similar to Flintobox.

The word, “Flintobox” has been a trademark of the company for over 2 years. The company first raised a complaint with Amazon in July 2016 and then again in October 2016. However, it received only automated responses from Amazon, according to official statements. Amazon did not take any action despite complaints, according to Flintobox, and that it had to provide documents to Google to stop the advertisement. Google, however, later changed to the word “Flinto box” in the advertisement thus not agreeing to completely remove the advertisement since the word with a space was not trademarked. Flintobox claimed that they have decided to take legal action against Amazon after failing to get any response from Amazon over the issue.

The CEO of Flintobox stated in a recent blog, titled Google And Amazon – The Sharks That Are Stealing Nemo’s Food #WakeUpAmazon, stated that “Amazon, the biggest online retailer on planet Earth, used Google to steal a prospective buyer of Flintobox, and instead introduced them to some of their (rather irrelevant) products.”

Some search engine optimization technicians and IP experts have also pointed out the possibility of unintentional infringement owing to the automated system used by Amazon that might have picked up phrases for Google Ad words without realizing it being a brand name. Hence the complexity of the case is quite visible, especially because of a generation of a keyword being a brand name, by a software.

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Delhi university Copyright case – University wins over publishers

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This month, we witnessed a powerful (progressive?) judgement by the Indian Appellate Court regarding the Delhi University copyright infringement case. Here, the plaintiffs, namely, Oxford University Press, Cambridge University Press, and Taylor & Francis Group, alleged that Delhi University and Rameshwari Photocopy Services infringed the plaintiffs’ copyrights of various publications.

Rameshwari Photocopy Services has a licensed shop in the campus of Delhi School of Economics (University of Delhi) where students buy course packs authorized by professors who taught courses at the university. The course packs prepared by the shop included subject matter that had been photocopied from several textbooks published by the plaintiffs.

The plaintiffs argued that the inclusion of these pages amounted to an infringement of copyright related to their publications. Further, they provided examples of similar cases decided in other countries such as the United States of America, United Kingdom and Canada, wherein claims of copyright infringement were upheld.

Regarding copyright in the field of education, Section 52(1)(i) of the Indian Copyright Act lists acts which are not to be considered as infringement of copyright, as follows: “(1) The following acts shall not constitute an infringement of copyright, namely…the reproduction of any work … by a teacher or a pupil in the course of instruction.

The appellate court decided that the publishers’ copyright was not infringed. The division bench, headed by Justice Nandrajog, was of the opinion that the term “course of instruction” could not be limited only to proceedings inside a classroom, as stated by the publishers. The court further clarified the difference between ‘reproduction’ and ‘publication’, by reasoning that ‘a publication would have the element of profit, which would be missing in the case of reproduction of a work by a teacher to be used in the course of instruction while imparting education to the pupils.’ Further, the court also noted that various decisions made by courts in other countries could not be applied under these circumstances for a developing country like ours.

This was a landmark case that took a step in the right direction for a developing nation like ours, which is in the process of increasing literacy levels by trying to impart affordable education to all. Consequently, Justice Nandrajog rightly noted: “So fundamental is education to a society – it warrants the promotion of equitable access to knowledge to all segments of the society, irrespective of their caste, creed and financial position.

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Indian Government prepped up to expedite examination of increasing patent and trademark applications

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India is one of the fastest-growing major economy in the world. Further, India is fast emerging as a major market for research and technology driven products. Hence, over the years, the number of patent applications filed in India has soared. In the year 2015, India stood at 9th and 6th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively. Similarly, the number of trademark applications filed in India has soared over the years. In the year 2015, India stood at 2nd and 9th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively.

To handle and prosecute the increase in number of patent and trademark applications, the commerce and industry ministry has been augmenting manpower and is providing training to them. At the CII India-UK Tech Summit held in New Delhi, between November 7-9, 2016 the Joint Secretary in the Department of Industrial Policy and Promotion, Rajiv Aggarwal said that a year ago, the first examination of trademark applications was taking almost a year and half. In the month of November, 2016 the time for first examination of trademark applications has come down to around 4-5 months. By March 2017, it is expected that the first examination of trademark applications will come down to only one month. Similarly, for the first examination of patent applications it used to take approximately 6-7 years. It is aimed to bring down the first examination of patent applications to just 18 months by March 2018.

Conclusion:

It can be clearly seen that Indian patent office is striving to meet the expectations of stake holders when it comes to faster prosecution of the applications related to patent and trademark. Faster prosecution of the applications will lead to further increase the filing of patent and trademark applications, which is beneficial to the stakeholders and the patent office.

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Importance of registering a Trademark: “Sualkuchi’s” Will Tell The Tale

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Having a long tradition of silk weaving, Sualkuchi, in Assam, houses the state’s largest and the oldest silk industry. This silk industry is the provider of employment to local weavers. In the recent years, exploitation of this industry had greatly affected the people as the originality of the silk was compromised with. The local weavers of the silk village have recently breathed a sigh a relief, after a saga of protests demanding a ban of textile products produced outside has ended with the decision of the Controller General of Patents and Trade Marks to issue a trademark to the handloom products.

History

Around March-April, 2013, violence agitated the silk village of Assam. The root cause leading to the violence at Sualkuchi was the procurement and sale of Banarasi silk clothes under the brand of Sualkuchi silk or Assam silk and misleading the people at large. Hundreds of silk weavers of Sualkuchi came out to the streets and burnt down silk products procured from Varanasi, which some local traders were marketing as genuine Assam silk. Heaps of such silk products that were stored in showrooms and godowns of these traders were burnt down to ashes. Local weavers alleged that the traders have indulged in the practice of taking away samples of the indigenous Assamese designs and motifs to traditional silk weaving pockets in places of Varanasi, engage silk weavers of these places to produce adulterated Assamese silk products, and finally taking back the finished products to Assam to sell as genuine Assamese products. The adulterated products were relatively lowly priced.  These aggrieved the local weavers and compelled them to protest such practices.

These events urged people to take steps to rather popularize their craft. It was then, that the initiation of the process of registering a trademark for the original Assamese products started. The “Sualkuchi Tat Silpa Unnayan Samity” applied for the trademark on September 6, 2013. The application was registered against the number 2592761 under class 24. The word “SUALKUCHI’S” will now be found on these silk products woven by the local weavers and artisans of Sualkuchi, as per the provision of the trademark.

Conclusion

Although the hostility that took place is condemned, the CGPDTM’s decision has played an important role in providing the local weavers a ray of hope that their efforts will be recognized nationwide by their registered trademark.

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Patent rejected for Pfizer Wonder drug

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Pfizer was denied a patent by Indian Patent Office for its wonder drug, XTANDI (Enzalutamide), effective for treating prostate cancer with a worldwide sale of 3 billion USD. Though this comes as good news to the consumers as the prices of the drug are expected to drastically reduce, there should not be a deliberate attempt to reject patent applications based on such intentions, which will only stifle innovation. The current market price of the drug is Rs. 3.35 lakhs for one pack containing 112 capsules accounting for a month’s dosage. The drug was developed at the University of California and was acquired by Pfizer when it bought the biotech firm Medivation. The drug is currently sold in India by Astellas Pharma.

The patent rejection was a result of pre-grant opposition proceedings filed by different entities such as BDR Pharmaceutical International, pharma company Fresenius Kabi Oncology and Indian Pharmaceutical Alliance (IPA) in addition to two more persons (Mr. Umesh Shah and Ms. Sheela Pawar). All these oppositions were filed at varying dates ranging from December 2012 to January 2016. The grounds of objection filed by the opponents varied, for example, BDR (Opponent 2) and IPA (Opponent 4) based their objections on grounds of lack of novelty [Section 25(1)(b)] in addition to other grounds whereas Fresenius Kabi Oncology (Opponent 1) opposed mainly on basis of Section 25(1)(e) which is the lack of inventive step.

The inventive step of the patent application was questioned by the Assistant Controller over US5411981 in light of US6518257 in combination with D1 (cited by Opponent 1 as J Med Chem. 2004 Jul15;47(15), 3765-16; A ligand-based approach to identify quantitative structure-activity relationships for the androgen receptors). The claim 3 of the application was found to lack inventiveness in light of US4097578. The final order, dated 8th November 2016, by Mr. Umesh Pandey, assistant controller Patents & Designs, read as, “in view of above instant application is hereby refused as the claimed invention is lacking inventive step under section 2(1)(ja) and also not patentable under section 3(d) and 3(e)”

Meanwhile, the attempts to reduce the prices of the drug XTANDI was also visible in US when various civil society organisations submitted a petition in January 2016 to the US National Institutes of Health (NIH) requesting for authorization of generic production of the drug, which was later rejected by NIH. 

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Indian Supreme court Judgements can be reproduced by anyone

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“No copyright over our judgements.” This is the gist of the ruling given by the Supreme Court in relation to the long-standing dispute, of certain firms holding virtual monopoly over producing the judgements of the apex court in book format and selling it to advocates, institutions and others.

Eastern Book Company (EBC) and Reed Elsevier (whose subsidiary is LexisNexis), two law publishing houses, disputed over the right with regards to the publishing of the Supreme Court judgements.

The dispute dates back to 2012, when Lucknow Bench of the Allahabad High Court gave order, restraining Reed Elsevier India Pvt Ltd from reproducing edited judgements, reported in “Supreme Court Cases” (SCC), published by Eastern Book Company. The judgement was based on the 2008 judgement of the Supreme Court in DB Mondak case as per which copyright vests in the following:

a) Creation of paragraphs in their copy-edited version by segregating existing paragraphs in the original text by breaking them into separate paragraphs and/or by clubbing separate paragraphs, and in the paragraph numbering.

(b) Internal referencing, after providing uniform paragraph numbering to multiple judgements.

(c) Inputs in respect of editor’s judgement regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly concurring”, “dissenting”, “partly dissenting”, “supplementing”, etc.

(d) Editorial notes.

(e) Head notes

The argument, Eastern Book Company had put forth was that the SCC were based on its editors reading the entire judgement, understanding the questions of law and facts involved and then classifying the SCC as ‘concurring’, ‘partly concurring’, ‘dissenting’, ‘partly dissenting’ or ‘supplementing’. In these tasks, the editor uses sound judgement, creativity and legal skill. A very significant role done by the editor is to input the references, clarifications and explanations to the raw text of the judgements, either in the text or as footnotes and, most importantly, he puts editorial notes and comments.

 On the other hand, Reed Elsevier had argued that no publishing firm can claim copyright over Supreme Court judgements and that EBC was merely reproducing judgements uploaded on the judgement section of the Supreme Court’s website.

The court had ruled in favour of EBC and dismissed the case. The decision had prompted Reed Elsevier to approach the apex court.

On 23rd November 2016, a Supreme Court bench of Justices Ranjan Gogoi and NV Ramana, upheld the High Court’s ruling and dismissed the case. It ordered that no one can claim copyright over the judgements delivered by the apex court and that the judgements could be reproduced in its raw form by anyone without the risk of being accused of infringing copyright. However, it did clarify that Reed Elsevier cannot use the headnotes, footnotes, editorial notes, paragraph numbering, etc. used by the EBC as their own, as stated in the DB Mondak case.

We hope this article was a useful read. The attached judgement can be downloaded for your reference. 

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PHOTOCOPYING – Is it an act of Copyright infringement?

It is common practice to photocopy pages and excerpts of books or an entire book for educational purposes or purposes of providing instructions (or guidance etc.). Copier service providers run their services by charging a nominal rate for the copies on a per page basis. One of the reasons why using photocopies of books is preferred over purchasing the books, is the high cost involved with such books. The decisive question here is, whether the party (copier and/or the students) involved in making photocopies of someone’s literary work, be it for commercial profit making, or just for reasonable educational purposes infringe copyright.

The Delhi High Court’s judgement in The Chancellor, Masters & Scholars of The University of Oxford & Ors. Vs. Rameshwari Photocopy Services & Anr. dated September 16, 2016 is a benchmark decision that throws light on whether such acts are to be considered infringing.

In 2012, Plaintiffs, Oxford University Press, Cambridge University Press and Taylor & Francis had filed infringement suit against Rameshwari photocopy shop, the first defendant (the second defendant being Delhi University), a licensed vendor located in DU’s. The Plaintiffs alleged that the Defendants have infringed the copyrighted publications owned by the Plaintiffs by photocopying, reproducing and distributing copies of the publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the Plaintiffs’ publications and compiling them into course packs. Following this, the court passed an interim order preventing the photocopy shop from selling the compilations of photocopied texts.

Delhi University (second defendant) in their argument, supported the photocopier, stating that the reproduction of copies of books was for “reasonable educational needs” and not for “commercial profit making” thereby denying any act of infringement. The University stated that the syllabi for each academic year along with suggested reading materials are contained in different books of different publishers sold at high price, which may often pose as financial burden on the students. Moreover, owing to limited availability of copies of such books with the library, making copies become necessary.

However, the decision of Justice Rajiv Sahai Endlaw was not what would have favoured the Plaintiffs. Justice Endlaw has stated in his ruling that the action of each of the students of having the book issued from the library of the University and copying pages thereof, whether by hand or by photocopy, is not an act of infringement under the Copyright Law and dismissed the trial denying any act of infringement by the defendants.

This decision of the Court has upheld the basic rights of public to accessibility of educational materials and that limiting access to such materials is not acceptable as long as such acts are not meant for commercial exploitation of someone’s intellectual property. The decision has also opened eyes of public to look at laws and requirements that would benefit the public interest rather than following norms that would benefit private interest.

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Marrakesh treaty comes to force in India

Marrakesh VIP Treaty, a treaty on copyright, was adopted on June 28, 2013 in Marrakesh, Morocco. India, ratifying the treaty on 24 June 2014 at the 28th session of the Standing Committee on Copyright and Related Acts in Geneva, became the first nation to do so. Since then, 21 countries have followed suit. Much to everyone’s delight, the treaty has come into force on the 30th of September 2016.

It is not uncommon for the blind to endure hardships reading a printed book. Indeed, there are Braille books available all across the world to help the visually impaired, but not without its own troubles. The previous Copyright Laws did not offer much in this regard.
Indian Copyright Act of 1957 had no provision to facilitate the production and distribution of books in formats accessible to print-impaired readers. While the practice of converting books into Braille format did exist, doing so was not easy. Obtaining permission from publishers, authors is never an easy task, especially when money and other monetary benefits are involved.

With the Treaty coming into force, books can now be produced in Braille and other formats by organisations that cater to print-impaired readers, without seeking permissions from the publishers or the copyright holders. Further, it also allows Indian organisations to borrow books in accessible formats from libraries and other institutional holdings across the world. Beyond question, an exceedingly significant and grinning effect. In India, where policies take ages to get implemented, this one has already come into effect.

Books existing in an accessible format in another part of the world can now be loaned to an Indian organisation, without them having to go through the trouble of making a copy. Accessible Books Consortium (ABC), established by WIPO in June 2014, has already realised this vision. ABC has a centralised electronic multilingual catalogue of accessible books produced by libraries from across the world for the blind. This helps in countries accessing books available in other parts of the world. Nineteen libraries for the blind from 16 countries are already part of it.

In August this year, India launched Sugamya Pustakalaya, the largest collection of online accessible books available in the country. Once Sugamya Pustakalaya becomes part of ABC, many more visually impaired readers in India would have access to books from across the world, in different languages.
At a time when laws pertaining to Intellectual Property are being used as a tool to make the essential commodities costlier and further the divide between the upper class and the middle class, the Marrakesh Treaty, can be seen as the means in which the Intellectual Property laws can be used to make the world more kind, just, unprejudiced and humane.

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