TRADEMARK
DELHI HC GRANTS INTERIM INJUNCTION TO FRIENDS INC. TO PROTECT PETER ENGLAND'S TM
Aditya Birla Fashion and Retail Ltd. ("Plaintiff") filed a suit against Friends Inc. ("Defendants") seeking a permanent injunction to restrain them from using the trademark 'Peter England' outside their shop and in the invoices/business papers, for identical goods and services. Peter England is an apparel brand which holds a registered trademark of their trade name. The Plaintiff submitted that all their registrations are legal and valid. The Defendants have their store in Khanpur, Delhi, which the Plaintiffs came across in December 2023. Plaintiff submitted that the Defendants had put up the signboard to confuse the customers and mislead them to visit their store believing it to be an authorized and authentic store of the Plaintiff. The Court granted an interim order in favour of the Plaintiff.
(1) Aditya Birla Fashion and Retail Ltd. v/s Friends Inc. (2024 SCC OnLine Del 4939)
TRADEMARK
DELHI HC GRANTS RELIEF TO ADIDAS IN TM INFRINGEMENT MATTER
Adidas AG ("Plaintiff"), the manufacturer and
distributor of sports accessories and apparel filed an infringement
suit against Keshav Tulsiani ("Defendant"), who is the
director of Adidas Weaving Mills, Adidas Textile Industries, and
Adidas Merchandise Private Limited, for using an identical
trademark. The defendant claimed that he named his company ADIDAS
due to his affection towards his elder sister. Elder sister in the
Sindhi language is addressed as 'Adi' and 'Das'
means devotee. Thus, the term 'Adidas' means devotee of
elder sister.
The court held that there is a high likelihood of confusion among
consumers, given the identity of marks and the nature of the goods
being sold. The Defendants failed to provide evidence to counter
the presumption of confusion or to show honest and distinct
commercial use. Thus, the Court ruled in favour of the Plaintiff
and directed the Defendant to pay Rs 3,00,000 as nominal damages
and Rs 11,22,060 for the litigation cost, including the fees paid
to the Local Commissioner.
Reference:
(1) Adidas AG v Keshav H Tulsiani & Ors (CS (COMM.) 582/2018, I.A. 14215/2019, I.A. 334/2020)
TRADEMARK
DELHI HC RULED VS L'OREAL OVER CLARI TRADEMARK
L'Oreal India Pvt Ltd ("Plaintiff"), a wholly owned subsidiary of M/s L'Oreal, is engaged in the manufacturing, distribution, and sale of hair care, skincare, and beauty products. The Plaintiff has acquired its predecessor company CCPL, which had legitimately adopted the CLARI formative marks and expanded their usage over time, including the adoption of CLARIWASH. Rajesh Kumar Taneja Trading ("Defendant") applied for the registration of the contested trademark, claiming its usage since November 2009. The Registrar of Trademarks issued an examination report, which mistakenly cited 'CHARIWASH', as the mark to be filed, instead of CLARIWASH. However, the mark CLARIWASH was correctly published in the Trademark Journal indicating its usage since November 2009. But unfortunately, the TM Registration Certificate was issued on May 18, 2012, in favour of CHARIWASH. An application for rectification was filed and approved on June 14, 2012, resulting in the issuance of the corrected certificate for CLARIWASH.
The Plaintiff argued for the cancellation of the Defendant's trademark. It was observed that Plaintiff's trademark applications of CLARI-FI and CLARIMOIST were on record of the Registrar on the date of the search report. Thus, the impugned trademark is not deceptively similar to CLARI-FI or CLARIMOIST. The court held, "The trademarks have to be viewed as a whole and it would not be permissible to compare the competing trademarks by dissecting parts of the trademarks and comparing them." It was concluded that the registration of the disputed trademark should not be reconsidered due to a minor procedural error after nearly 14 years. Thus, the case was dismissed.
Reference:
(1) Loreal India Pvt Ltd v/s Rajesh Kumar Taneja Trading as Innovative Derma Care and Ors. (RFA(OS)(IPD) 2/2023 and CM Appl. 23440-41/2023)
COPYRIGHT
BOMBAY HC PROTECTS PERSONALITY RIGHTS OF ARIJIT SINGH
Bollywood Singer Arijit Singh ("Plaintiff") filed a
petition to protect his personality rights against unauthorized use
of Artificial Intelligence (AI) tools, generating content such as
those created by Codible Ventures LLP ("Defendant"). The
Defendants were unauthorisedly using Plaintiff's name, image,
voice, vocal arrangements, manner of singing, photographs,
signature, persona, etc. for their commercial and personal gains.
The Plaintiff was subjected to potential abuse because the
Defendants were attracting visitors to their websites based on the
Plaintiff's popularity and reputation.
Justice Chagla of the Bombay High Court restrained the Defendants
from violating the personality rights of the Plaintiff. It was held
that individual freedom of speech and expression does not grant the
license to anybody to unlawfully exploit a celebrity's persona
for commercial gains. The matter is posted for further hearing on
2nd Sep'24.
(1) Arijit Singh v/s Codible Ventures LLP (Com IPR Suit (L)/23443/2024)
PATENT
INTEL WINS OVER R2 CHIPS
Califoria-based chip designer R2 ("Plaintiff") filed a
case in London's High Court in 2022 against Intel
("Defendant"), a leading American manufacturer of
semiconductor computer circuits, seeking an injunction barring the
sale of Intel chips, which R2 claimed was made using patented
technologies. R2 argued that Intel had violated its patents by
integrating this technology into the majority of its processors,
whereas Intel argued that R2's patents were invalid. The patent
is related to on-chip voltage regulators integrated into
Intel's chips, designed to protect the silicon from degradation
or failure in case of over voltage. R2 bought similar cases in
Germany, France, and Italy and also against Intel partners –
HPE, Dell, and Fujitsu.
The Court held that R2's patent is invalid due to the lack of
an inventive step when building on previous inventions. Thus, the
court ruled in favour of Intel.
PATENT
GOVT. ADDRESSES ISSUE OF FILING "WORKING OF PATENTS"
According to the latest amendment in Rule 131(2), patentees or licensees are now required to submit a statement of working (Form 27) once every three financial years, starting from the financial year immediately following the year the patent was granted. Form 27 is required to be submitted within six months of the financial year end following the grant date and subsequent statements were to be filed every year within 6 months after the end of the third financial year from the grant date.
Under the current position of law, if for example, a patent is granted in the financial year 2023-24, the working statement must cover the next three financial years: 2024-25, 2025-26, and 2026-27 and the same must be submitted by September 2027.
If the patentee or licensee fails to submit the statement on time, the Controller may condone the delay or grant an extension of up to 3 months upon request made via Form 4.
The statement of working must include the following information:
- Whether the patent has been commercially exploited; without the requirement of providing details on the amount or value. If the patent has not been exploited, the reasons for the non-working must be provided.
- Whether the patent is available for licensing or not.
The new requirement to disclose the availability of patents for licensing allows patentees or licensees to explore commercial opportunities, benefiting all parties involved. Additionally, submitting the statement of working every three years, rather than annually, reduces the burden on patentees or licensees and highlights significant commercialization achievements over a longer period.
(1) https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps146.html
MISCELLANEOUS
NITI AAYOG SIGNS JOINT LETTER OF INTENT WITH WIPO
Niti Aayog under its Atal Innovation Mission (AIM) signed a Joint Letter of Intent with the World Intellectual Property Organisation (WIPO). It aims to build initiatives for innovation, entrepreneurship, and Intellectual Property (IP) for nations in the Global South. Education Minister Shri Dharmendra Pradhan stated that India's strength lies in its inventiveness. This collaboration between AIM and WIPO will take the best of India's innovation models to countries that are on similar development
trajectories, promote inclusive and sustainable economic growth, and enhance IPR understanding and awareness at the school level. This partnership will also develop the Atal Tinkering Labs and Atal Innovation Centres for countries in the global south for their innovation ecosystems.
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