Industrial Design Protection in India

Industrial Design Protection in India

Industrial Design Protection is provided for the features or characteristics of shape, configuration, surface pattern, or combination of lines or colors, which, when applied to a functional article, either a two-dimensional or a three-dimensional article produces or increases aesthetics, and improves the visual appearance of the design. In India, The Design Act, 2000 governs and deals with the mechanism of registration of Industrial Designs. Once the Industrial Design is registered, it lasts for a period of 15 years from the date of registration with the first renewal due in the 10th year, and subsequent renewal in every 5th year.

In India, as per the Design Act, 2000, the pre-requisites which any article should meet to qualify for Industrial Design Protection are as follows:

  1. The design should be novel and original.
  2. The design should be applicable to a functional article.
  3. The design should be visible on a finished article.
  4. The design should be non-obvious
  5. There shouldn’t be any prior publication or disclosure of the design before the date of application for registration.

How can a person obtain an Industrial Design Protection in India?

In India, the registration process for Industrial Design Protection is fairly simple. The application is to be filed at the Design office either via the paper filing option or using the online filing option. All designs are categorized according to the Locarno Classification, which classifies goods for the purpose of their registrations and further helps in Design searches. An application is to be submitted at the Design Office along with the desired designs, classification code, and a description of the design. Once the application for Industrial Design is filed, it goes through an examination process to determine if the design can be registered or not. Accordingly, the Design Office may issue a statement of objection in the examination report, to which the applicant must respond within 3 months from its date of receipt. The application for Industrial Design Protection is abandoned if the applicant fails to respond to the objections raised within the stipulated period of time. On the basis of the applicant’s response to the objections, the Design Office determines if the application should be accepted, rejected, or put up for a hearing. If accepted, the application is processed for registration. After the registration, the particulars of the application, along with the representation of the article will be published in the Official Gazette. Once granted, the Industrial Design becomes exclusive to the owner if there are no objections raised from any third-party sources.

What is the difference between Patent Protection and Industrial Design Protection?

In several cases, a question or a query may arise pertaining to which type of protection to opt for between Industrial Designs and Patents. So here’s a detailed difference between patents and industrial designs to give you a basic understanding of their main aspects.

PATENTS

  • What can be protected?

A technical enhancement, new process, or manufacture, which is novel, unique, and useful, can be protected as patents.

  • Duration of protection and renewal term:

The patent of invention lasts for 20 years in the country of filing with no extension after 20 years.

  • Maintenance of Right:

An annual fee has to be submitted for a duration of 20 years.

INDUSTRIAL DESIGNS

  • What can be protected?

Any functional article of use which has a novel ornamental appearance can be protected as industrial designs.

  • Duration of protection and renewal term:

An industrial design is valid for a duration of 15 years with first renewal in the 10th year and subsequent renewal in every 5th year.

  • Maintenance of Right:

A Fee is required after 10 years if an application for renewal is submitted.

Why should one look into filing an application for Industrial Design Protection?

In the present era of creativity, aesthetics, and presentation, the outer appearance of any product is very important as it makes the product more appealing and attractive. This aspect increases the marketability of your product and raises a need to protect it from others who may copy or illegally adopt similar looking products in the market. In a number of cases, the design itself becomes the identity of a brand. Industrial Design Protection also encourages creativity, which leads to an expansion in the manufacturing and industrial sectors. So protect your novel creations by thinking beyond just functionality and looking into eye appeal too. For more visit: https://www.trademarkmaldives.com/

Trademark Enforcement and Protection: Bangladesh

trademark protection

In Bangladesh, the mechanism of trademark registration and protection is governed under the Trademark Act, 2009, and the Trademark Rules, 1963.  As per the 2009 Act, the trademark owner possesses the sole right to refrain others from further using it in any kind or manner.  Any person who tries to imitate or produce an identical product which is already registered under the trademark act is considered as an infringement of trademark rights.

PROTECTION OF TRADEMARK

A person needs to submit a trademark application with the Department of Patents, Designs, and Trademarks (DPDT), Dhaka for trademark registration. A registered trademark is valid for the period of 7 years from the application date and can be renewed every 10 years after submitting the required fee.

PROTECTION OF WELL-KNOWN MARKS

In Bangladesh, well-known marks are acknowledged by the Trade Mark Registry under the International, National and Cross Border Reputation. According to the Trademark Act, 2009, the protection of a well-known trademark is given under the following levels:

  • Measures against the identical or same well-known mark registration
  • Action against the unlicensed use of the well-known marks

INFRINGEMENT

A trademark right is infringed if a person violates or uses an already registered trademark without any authorized access from its owner. Under Sec 29 of the 2009 Act, a person is deemed to infringe a registered trademark in the following ways:

  1. Where a person uses a trademark which is identical or similar to an already registered trademark used in the course of trade, for the similar goods or services not being a registered proprietor/user and causes confusion on the part of the public.
  2. Where the registered trademark is used in the course of trade, for the goods or services which are not similar but has a reputation in Bangladesh and the use of the mark by the person without due cause, takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark.
  3. Where a person who is not being duly authorized by the registered proprietor or a registered user, uses the trademark on a material intended to be used, for labeling or packaging goods, as business papers, or for advertising goods or services.
  4. Where a person not being a registered proprietor/user uses a registered well-known trademark for the identical or similar goods or services for which the mark has been registered.
  5. Where a person not being a registered proprietor/user uses a registered well-known trademark for the goods or services which are not identical or similar to those in respect of which the mark has already been registered, by using the mark in relation to those goods or services, would point out a connection between those goods or services and the owner of the registered well-known mark, and that the interests of the owner of the registered well-known mark are likely to be damaged by such use.

REMEDIES

When the rights of a proprietor of a registered trademark are infringed in Bangladesh, the following actions can be taken for the remedy:

  1. CIVIL ENFORCEMENT: The Trademark Act of 2009 provides both infringement suits and passing off actions in case of registered and unregistered trademarks respectively. In the case of infringement suits, the trademark must be registered in Bangladesh as per Section 24 (1) of this act. In the case of civil proceedings, passing-off proceedings can be instituted before an assistant judge or a joint district judge. However, Trademark Infringement suits can be instituted only in a district court or higher.

The Code of Civil Procedure establishes that rights holders may file suit for permanent injunctions before the Dhaka District Court. If the infringement is proved, a suit for damages may then be filed separately.

A) PRELIMINARY MEASURES:

The administrative authorities have no direct jurisdiction over counterfeiters and the seizure and/or confiscation of the infringing goods in question. The law governing agencies such as the police, the Bangladesh Rifles and the Rapid Action Battalion takes cognizance of any matter relating to counterfeiting only after being directed to by the Chief Judicial Magistrate’s Court, since the imitation or use of false trademarks is a non-cognizable and a bailable offense under Sections 482, 483, 485 and 486 of the Code of Criminal Procedure.

Besides civil infringement suit, IP rights holders may file an application for a temporary injunction under Order 39, Rules 1 and 2 of the Code of Civil Procedure. If it is proved that there is a prima facie arguable case and that the balance of inconvenience is in the IP rights holder’s favour, then the court may grant a temporary or interlocutory injunction against the counterfeiter when the suit is filed.

B) REMEDIES:

The following remedies are available by way of civil action:

  • Temporary injunction;
  • Permanent injunction and attachment order with a declaration that the goods are counterfeit; and
  • Claim for damages.

It can take up to three to four years for a case to be finally decided.

2. CRIMINAL PROSECUTION: The following are criminal offenses punishable under the Bangladesh Penal Code, 1860:

  • Using a false trademark so as to mislead consumers about the origin of the goods; and
  • Counterfeiting a trademark used by another person.

The punishment for using a false trademark is imprisonment for up to one year or a fine, or both. The punishment for counterfeiting is imprisonment for up to two years or a fine, or both. The courts also have the power to set the prison term and the amount of any fine. In addition, the Penal Code identifies a number of activities as a criminal offense and sets out various enforcement measures available to rights holders. Two such offenses and their punishments are as follows:

  • Making or possessing any instrument for the purpose of counterfeiting a trademark – the punishment for this offense is imprisonment for up to three years or a fine, or both; and
  • Selling, exposing or possessing for sale or any purpose of trade or manufacture any goods bearing a counterfeit mark –the punishment for this offense is imprisonment for up to one year or a fine, or both.

 

A) PRELIMINARY MEASURES:

In cases of counterfeiting, a rights holder may file a criminal complaint with the police, which then investigates. If the complaint is proved, the case then goes to trial before a court. In addition, police officials may launch raids against counterfeit and pirated goods and may take legal action.

All criminal proceedings begin in the magistrate’s court. All criminal cases relating to false trademarks or counterfeiting are tried by a magistrates court (first or second class, or a metropolitan magistrate in an urban area). Any appeal against the magistrate’s order must be made to a district magistrate or session judge.

B) Remedies:

Remedies available in criminal actions include the following:

  • Raids on the premises where the counterfeit goods are stored;
  • Seizure of the goods;
  • Destruction of the counterfeit goods; and/or
  • The imposition of penalties on the accused.

 

  1. BORDER MEASURES (CUSTOMS): All trading activities in Bangladesh are regulated and administered by the Ministry of Commerce under the Imports and Exports (Control) Act1950. Additionally, Under Section 15 of the Customs Act, 1969, the import of goods, whether by air, land or sea, is prohibited that fall within the following categories:
  • Goods marketed under counterfeit trademark or false trade description.
  • Goods manufactured or produced outside Bangladesh and intended for sale under a design in which copyright exists under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a license or the rights holder’s written consent; and,
  • Goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.

Under Section 17 of the Customs Act: “if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.”

There is no provision for the recordal of trademarks with Customs. However, upon receiving a complaint from a rights holder, Customs may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Moreover, a rights holder may approach the High Court to obtain an order directing Customs to detain and/or seize the counterfeit goods. For more visit: https://www.trademarkmaldives.com/

Government Seeks to Extend the Copyright Framework to Maximize its Reach

trademark law firm

The Government is proposing new amendments to extend the reach of songs and videos to maximum people at a reasonable price, which in case of dispute is regulated by the quasi-judicial body Intellectual Property Appellate Board (IPAB). The copyright framework which was earlier confined to radio and television is now looking to include all forms of broadcasters under its horizon.  This new draft in Copyright Act endeavors to grant all the benefit of statutory license provisions to all the broadcasters.

The Department for Promotions of Industry and Internal Trade (DPIIT) proposed changes in the Copyright (Amendment) Rules, 2019, and solicited public comments and views till June 29. The draft rules seek to introduce changes in the copyright framework to effectively deal with the growing technological advancement and to establish uniformity with other relevant legislation.

According to expert, these changes will permit non-traditional broadcasters including web and Internet Protocol television (IPTV) to grant a compulsory license for the copyrighted content from the content owner, which was earlier restricted to radio and TV broadcaster.

Presently, the Copyright Act includes only TV and radio broadcast companies who are authorized to seek approval from the copyright owner and negotiate the price unilaterally or through Section 31D of the Intellectual Property Appellate Board Act.

The draft also suggests substituting of Copyright Board with the Appellate Board. It also asserts that in cases where the royalty is undistributed due to the author or other owners till the end of the period of 3 years from the end of the financial year in the collection of the royalty occurred, then in that situation copyright society shall repay the amount of the licensee within a 3 months from the end of that financial year.

The government has also put forward amendments in the patent regime to bring transparency in the working requirement for a patented invention on a commercial scale in India.

The DPIIT seeks to amend Form 27, which informs the Patent Office whether it is registered patent in India or not. Earlier, it was hanging with no explicitness on what needed to be disclosed and what should not be disclosed. For more visit: https://www.trademarkmaldives.com/

Internet Broadcasting is Not Included, Under Section 31D of the Copyright Act: Bombay HC

Copyright Act

The Bombay High court has permitted an interim injunction in the favour of Tips Industries against Airtel-owned music streaming app Wynk. The Plaintiff sought a short-term order to limit Wynk from further downloading and streaming of Tips Music. Justice SJ Kathawalla has refuted the claim that online streaming service is authorized to grant a statutory license for internet broadcasting, under Section 31D of Copyright Act.

Background

The plaintiff is Tips Industries Ltd., owner of the music label in India, which has copyright over the considerable depository of popular music. In 2016, Wynk Music Ltd was given the license of this repository. The license was terminated in 2016,  and both the parties tried to reach an agreement of the terms and conditions for allowing Wynk to download and stream the music repository of Tips.

After the negotiation was dismantled, Wynk took refuge by advancing Section 31D of the Copyright Act. Under the Section 31D of a statutory licensing scheme as per any broadcasting organization, desirous of ‘communicating to the public’ any music recording, should obtain a statutory license for the same, by paying the royalty fee to the copyright owner, as per the charges fixed by the Intellectual Law Board.

Tips challenged the claim of Section 31D by the Wynk, and took legal action against Wynk for infringing their sound recording copyright under section 14 (1) (e).  Justice CJ Kathawalla turned down the accused’s claim for the violation of the copyright, and prima facie found Wynk guilty for two grounds- first, for selling the music under Section14) (e) (ii), secondly, for permitting the downloading and offline streaming of the plaintiff’s work, and for communicating the Tips’ work to the public through their streaming service, under Section 14 (1) (e) (iii).

The Bombay High Court addressed Wynk’s claim of copyright infringement, and ended the confusion related to online streaming and the statutory licensing  scheme under Section 31D:

  1. Section 31D does not comprise the purchasing or downloading

The court stated that Wynk’s  music app’s feature of granting the customer the right to download song and store for the unlimited time period constituted a sale and not public communication, and consequently, did not include the broadcasting as per the Section 31D. Hence, Wynk did not have any right to claim a statutory license for the same.

  1. Section 31D does not include Internet Broadcasting

Wynk argued that Section 31D encompasses online Broadcasting and its streaming service is also covered under the radio broadcasting.

The defendant also refers the inter alia, upon a DPIIT office memorandum from 2016, which entail that Section 31D does cover internet broadcasting.

 However, the court straight away declined this defence.

The court held that Section 31D was a deviation to copyright case, and must not be taken as a precedent for all the cases. Justice Kathawalla also claimed that section 31D clearly incorporates only radio and television broadcasting, and does not include internet broadcasting. Consequently, the defendant could not claim that the legislature intended on ‘radio’ broadcast to comprise the online broadcasts.

The court also denied the defendant‘s dependence upon the Government of India Office Memorandum, asserting that it was not in the ‘guidelines nature’ and needed statutory authority and consequently could not exist in the under Section 31D, statutory scheme.

  1. Section 31D cannot be referred without the regulation of the prior rates by the IPAB

The court held that the Independent Payment Advisory Board, (IPAB) did not have the authority of directing the rates for internal broadcasting. Further, the  Court asserted that statutory scheme under Section 31D, consists of the Copyright Act’s Rules 29, 30, and 31,  specifying that prior regulation of royalty rate by the IPAB was extremely crucial for the statutory license citation, under Section 31D.

Wynk also tried to hold that Rules 29, 30, and 31 were ultra vires section which were meant for the royalty rate regulation, but this line of reasoning was rejected by Justice Kathawalla, who proposed that there is a huge difference between the statute and the rules.

Finally, the court granted an interim injunction to the Tips industries, considering the fact that they made a prima facie case, would have suffered a massive loss of revenue, and the balance of convenience was also granted in the plaintiff’s favour. For more visit: https://www.trademarkmaldives.com/

 

Laws for Registration of Well-known Marks in India

Laws for Registration of Well-known Marks in India

WHAT IS A WELL-KNOWN TRADEMARK?

A well-known trademark is a trademark which is widely known to the prominent section of the public and enjoys a relatively high reputation. If any other party uses that protected well-known mark on their products or services, it would be deemed a sign that the product or service is associated with the later service provider and hence would amount to infringement of trademark rights.

Any trademark which is not recognized as a well-known mark in India by the court or the trademark registrar makes it mandatory for trademark registry to fortify the well-known mark against any discordant marks, brand or any domain name.

Recognition of marks as well-known marks drift from its primary objective of trademark registration; as trademark registry is given orders to not register any marks which are virtually identical or similar to the registered well-known trademark.

 

FOR REGISTRATION OF A WELL-KNOWN TRADEMARK

  • Relevant provisions of Trademark Act and Rules, 2017:
  • Sections 11 (6)-11 (9), Trademarks Act, 1999: The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including:
  • The knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark;
  • The duration, extent and geographical area of any use of that trademark;
  • The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
  • The duration and geographical area of any registration of, or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trademark;
  • The record of successful enforcement of the rights in that trademark; in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.

Section – 11 (7): The Registrar shall, while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account, the number of actual or potential consumers of the goods or services;

 

  • The number of persons involved in the channels of distribution of the goods or services;
  • The business circles dealing with the goods or services, to which that trademark applies.

Section – 11 (8): Where a trademark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

 

Section – 11 (9): The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:—

 

  • that the trademark has been used in India;
  • that the trademark has been registered;
  • that the application for registration of the trademark has been filed in India;
  • that the trademark:
    1. is well known in; or
    2. has been registered in; or
    3. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
  • that the trademark is well-known to the public at large in India.
  • Rule 124, Trademarks Rules, 2017: Determination of well-known Trademark by Registrar:
  • Any person may, on an application in Form TM-M and after payment of fee as mentioned in the First Schedule, request the Registrar for determination of a trademark as well known. Such request shall be accompanied by a Statement of the case along with all the evidence and documents relied on the applicant in support of his claim.
  • The Registrar shall while determining the Trademark as well-known take into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999.
  • For the purpose of such determination, the Registrar may call such documents as he thinks fit.
  • Before determining a trademark as well known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
  • In case the trademark is determined as well known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.
  • The Registrar may at any time if it is found that the Trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing the due opportunity of hearing to the concerned party.

 

Required Documents as per the Guidelines issued by TM registry in 2017:

  • TM-M Form with payment of Rupees 1 Lakh. (ONLY E-filing allowed);
  • A statement of the case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark;
  • Evidence of the use of the mark and annual sales turnover of the business using the mark;
  • Evidence of advertisements and publicity using the mark and related costs;
  • Evidence of actual or potential users of the mark;
  • Evidence of knowledge or recognition of the mark in India and overseas; and
  • Details of successful enforcement of rights with respect to the mark, if any, especially with respect to the mark being well known, including a copy of the judgment of an Indian court or registrar of trademarks determining the mark as being well known.
  • The size of the document submitted along with a statement of the case as evidence / supporting document should be in PDF format with a resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
  • Any person who wants to object to the inclusion of the trademark in the list of well-known trademarks may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents if any.
  • A copy of the objection may be communicated to the applicant for comments within the stipulated time.
  • The office will communicate the decision in respect of the objections to the parties concerned.
  • The final decision of the office regarding the inclusion of the trademark in the list of well-known trademarks will be communicated to the applicant.
  • In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website. For more visit: https://www.trademarkmaldives.com/

Enforcement And Protection Of Trademark Rights in Nepal

trademark registration

In Nepal, the process of trademark protection and enforcement is regulated by the Patent, Design and Trademark Act (PDTA), 1965 (2022). As per Section 18 of PDTA, the validity of a registered trademark is for a period of 7 years from the date of application.

Department of Industries (DOI), a sub-department within the Minister of Industries, governs both foreign and native trademark registration process.

The DOI executes mainly two functions: quasi-judicial function and administrative functions for the enforcement and protection of the trademark rights:

  1. Quasi-Judicial Function
  • Pro-opposition of trademarks
  • Revocation of Trademark
  • Action against the unauthorized use of the registered trademark product
  1. Administrative Function
  • Trademark registration and renewal
  • Assignment and licensing of trademark
  • Trademark recordals (Name and Address of the trademark owner) changes

The following international treaties are signed by Nepal for the enforcement and protection of trademark rights:

Treaty Signed on
  1. The Paris Convention For Protection of       Industrial Property, 1883
  2. Conventions Establishing the World Intellectual Property Organization, 1979
  3. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995.
June 22, 2001

April 23, 2004

February 4, 1997

TRADEMARK PROTECTION BASED ON REGISTRATION

Under Section 16 of PDTA, a person can fortify the trademark title only through registration by the DOI.

PROTECTION OF WELL-KNOWN MARKS

There are no specific laws for the protection of well-known trademark under the PDTA. But DOI can decline the application of any trademark or already registered trademark under the Section 18 (1) and (3) in following situations: a) for sabotaging the reputation of any individual or institutions, or b) for damaging someone’s trademark reputation.

INFRINGEMENT

A trademark right is violated if any unauthorized party uses or replicates an identical or similar product, which is already registered. However, the trademark owner can take legal action only for the registered trademark, by submitting evidence for the same. The person can seek legal action for the infringements of trademark rights by filing an application. However, the person can complain anytime, as there is a time limit set by the government.

Civil, criminal or administrative action can be taken by the grieved party in case of trademark infringement. Under the Civil Right Act 1955, the person can also file for an injunction the High Court.

Injunctions

Rules and Procedure for regulating the issuance of the injunction for preventing imminent or further infringement of trademark rights:

The injunction is filed under the Civil Right Act 1955, and High Court regulations. In this case, the raid is carried at the place where the trademark infringement has allegedly taken place by the unauthorized party.

REMEDIES

Civil Action

The owner of a registered trademark has the right to file an injunction. But the party has to prove his claim that its trademark right has been infringed by the accused.

The claim for the damage can be made by submitting the proof for the same. All the products/labels/ advertising materials which are infringing the trademark right can be seized.

Criminal Action

The infringing goods/ labels/advertising materials can also be seized by the government for destruction. In a criminal action, raids can also be conducted, while the same is not possible in a civil action. The accused can be fined up to NRS 1000000.

Administrative Action

For administrative action, the person can file an infringement complain in the Department of Industry.

CUSTOM ENFORCEMENT

In Nepal, the Ministry of Finance, under the Customs Act, 2007, governs all the activities related to enforcement and protection of trademark rights. Under Section 68 (1), if a party imports or exports any product which is infringing the IP rights of any person, then the concerned person can submit an application, along with proof to the customs officer to stop the import or export of the goods.

If trademark application is filed under Section 68 (1), the customs officer can withhold the import or export of such goods. However, he can also pass an order to the concerned authority to undertake the necessary action, under Section 68 (2).

Then, the authority will undertake the relevant legal action as per the trademark laws. After that, under section 68 (3), the customs officer, will be informed in detail.

If it’s found in an investigation that goods are liable for forfeiting, the customs officer under Section 68 (3) will hand over those goods to the concerned body for further action.

Defense available to the accused:

In case of infringement of trademark rights, the defendant can plead for the following defenses:

  • The doctrine of estoppels;
  • The doctrine of laches;
  • Can prove the dissimilarity between the trademark;
  • Can also show that the feature of its goods is entirely different from that of the plaintiff;
  • Can also show that the client base is completely different from the plaintiff;

Under Section 27 of the Patent, Design, and the Trademark Act (2022/ 1965), a person can appeal within 35 days from the issuance of infringement decision.  For more visit: https://www.trademarkmaldives.com/

Analysis of Summary Judgement of Skechers USA, Inc & Ors v. Pure Play Case

trademark registration

The Delhi High Court imposed a whopping fine of Rs. 87lacs on Pure Play in the case of Skechers USA, Inc and Ors v. Pure Play sports for violating the Intellectual Property Rights of Skechers by manufacturing and distributing rip-offs of a Skechers’ GoWalk3 series shoe range. Skechers filed a case against Pure Play for which it was permitted interim injunction in May 2016. The order for the fine was decided by the Joint Registrar Raj Kumar Tripathi, according to Chapter 23 of the Delhi High Court Rules, 2018. After the order in 2015, the High Court again passed the summary judgement, even when there was no application filed for such a judgment.

Overview

Skechers filed a case against Pure Play proclaiming that Pure Play was imitating the distinctive and unique features of their footwear that were sold under the GoWalk3 series brand. They also claimed that Pure Play was trying to deceive and confuse the customers and the members of the trade with regard to the footwear’s origin and to establish a false association with the Skechers to sell their product under the name of Skechers.

Skechers not only claimed their exclusive trademark ownership but also showed GoWalk 3 series has unique elements which also included their trade dress. They provide many evidences to the court to prove the similarity and showed the deliberate attempts made by Pure Play to use their product. On the other side, Pure Play tried to prove the difference in both the company’s marks and logos, to vindicate their stand that both the products are not identical, and should not be confused as one. The defendant argued that customers tend to prefer high-ranged products by considering the price factor. They also averred that the plaintiffs haven’t registered their trade dress and designs.

Judgment

The Court passed the judgment in favor of the Skechers by granting the interim injunction. The court also stressed upon the ignorance on the part of the customer while purchasing any product. The court accepted that the GoWalk 3 series has a trade dress and unique elements, which acted as a source identifier. An injunction was granted by the court to avoid any kind of prejudice to the Skechers’ products.

Analysis

This is one of the few Intellectual Property Right cases, wherein the court passed the summary judgment. As per grounds lay in Rule 3, any party can seek for summary judgment at any time by serving the summons to the defendant. As per the Order 13A, summary judgement is passed to avoid lengthy court trials in the following case:

  1. When a claim pertaining to commercial disputes is decided without the recording of the oral evidence.
  2. When both the parties have no prospects of succeeding and the Court doesn’t find any reasons for not disposing of the case.

Order 13A was the latest addition to the Commercial Court Act, approved by the Cabinet, and the President on October 23, 2015. The most fascinating part of the case was that none of the parties filed an application for the summary judgement. However, Skechers wanted to file the application for the summary judgement under the Order 13A of the Code of Civil Procedure but were unable to do so because of the absence of its signatory. However, the court decided to go forward and passed the decree

This summary judgment on Skechers USA, Inc & Ors v. Pure Play overruled the previous judgement passed by the same Delhi High Court in the Bright Enterprise Private Ltd. & Anr. v. MJBizcraft LLP & Anr., passed on 4 January 2017.

It was the first case related to the proceeding of summary judgement, trademark infringement and goodwill dilutions. The court stated that “From the provisions laid out in Order XIIIA, it is evident that the proceedings before the court are adversarial in nature and not inquisitorial. It follows, therefore, that summary judgment under Order XIIIA cannot be rendered in the absence of an adversary and merely upon the inquisition by the Court. The Court is never an adversary in a dispute between parties”. The court also addressed how the summary judgement proceeding cannot happen without the filing of the trademark application under CPC, Rule 4  of Order 13 and the importance of the accused replied. The court also stressed upon that “a court may feel that the case of a Plaintiff is weak, but that is no ground whatsoever for throwing out the suit log, stock and barrel without giving the Plaintiff an opportunity of proving and establishing its case”.

Conclusion

This case was a watershed moment in the history of the summary judgement passed under Order 13A  for two reasons, first, the defendants weren’t given the chance to prove his side, and secondly, no applications were filed by the either of the plaintiffs. For more visit: https://www.trademarkmaldives.com/

 

Prada Fights with Supplier for its Alligator Hatchlings

Prada Fights with Supplier for its Alligator Hatchlings

The Italian fashion house Prada is still fighting a multi-million dollar battle with Florida-based alligator contractor, Caporicci USA Corp. which started in 2017 when the alligator supplier had failed to give Prada the 15,000 hatchlings it had officially paid for. To be precise, the Miami-based supplier couldn’t provide Prada with alligator hatchlings of worth $1.2 million in one case and grown alligators of worth $2 million in another case which the Italian brand uses to make its pricey accessories. When the Miami exporter of quality American alligator skins or hides turned down to refund more than $600,000 to Prada after failing miserably to serve many alligator hatchlings, the fashion label took the issue before an arbitrator in Milan.

In the proceedings of the Arbitration Court of Milan, the tribunal had discovered early this year that Caporicci had seriously breached it official agreement with Prada and had ordered to refund $633,213 for the 3,761 hatchlings it couldn’t obtain and deliver to Prada. The tribunal also ordered to replace 3,761 hatchlings found inappropriate. Since then, Prada has appealed to the Federal Court in Miami to impose and administer the Tribunal’s orders. However, Prada faced a pushback from Caporicci USA which requested the court to delay its decision till the proceedings in a different but related suit come to a conclusion.

Immediately after Prada had initiated arbitration in Milan, Caporicci began its own proceedings in late 2017 over a separate deal turning bad with Prada involving 700 young alligators and 26 full-grown alligators. In its Lawsuit filed in the State Court of Florida, Caporicci stated that it couldn’t supply a chain of alligator’s hatchlings to Prada because of a turning point in their relationship when the fashion house and one of its vendors GNP Pelli di Pezzoli Gian Andrea had allegedly bought hides and hatchlings from three alligator farms without paying Caporrici a decided-upon broker’s commission. As per Caporicci’s lawsuit, Prada and GNP Pelli had purposely and unlawfully intruded in its relationship with other alligator vendors. The alligator contractor also asserted that GNP Pelli had received an enormous amount of money from the alligator skins and had failed to pay the commission which gave rise to damages of worth $2 million.

This legal battle between the fashion house Prada and Caporicci USA Corp. is still ongoing in the Southern District Court of Florida. For More Visit:  https://www.trademarkmaldives.com/

LVMH Launches First Blockchain-Based Product Tracking

LVMH Launches First Blockchain-Based Product Tracking

The luxury group LVMH, Microsoft, and the Blockchain services provider startup ConsenSys have officially launched a blockchain-based product tracking system, known as “AURA”. This system is exclusively designed and developed to serve the luxury industry across the world with powerful and robust tracking and tracing services which will verify and uphold the proof of authenticity and product history of luxury goods. Operating on a consortium model, AURA allows any luxury firm to use it to offer real-time tracking services to its customers. LVMH brands like Christian Dior and Louis Vuitton are already currently involved in this project and advanced discussions are still going on to onboard other brands from the LVMH group and other luxury groups across the globe.

APP-BASED DIGITAL TRACKING

Based on Ethereum blockchain technology and using Microsoft’s Azure infrastructure, this decentralized system is set-up to create a unique identifier for every product, tracking its source of origin from raw materials to point of sale, all the way to second-hand markets. AURA uses digital tracking which allows customers to use the brand’s app while purchasing a luxury item to receive a digital certificate consisting of blockchain-based product information and details about every product’s origin, care instructions, after sales and warranty services. With this platform, purchasers can also track the life-cycle of its products including the design, raw materials, manufacturing, and distribution. While protecting creative intellectual property and identifying unique information about every product stored on a shared ledger, this technology will also hold back advertising fraud. AURA will also offer tailored-made services to build-up customer loyalty and to ensure a brand’s protection from potentially low-quality counterfeits.

CONCLUSION

Nowadays, extravagant brands are rapidly turning to blockchain platforms to confirm the provenance of their luxury good items, and AURA is undoubtedly a great innovation for the entire luxury industry which shall help in protecting the interests, integrity, and privacy of every brand. The team behind AURA is hopeful about its use by rival luxury brands too by offering them the flexibility to customize the system according to their needs. For More Visit:  https://www.trademarkmaldives.com/

 

Gentle Monster Sues Malik Yusef for Allegedly Scamming Eyewear Brand

Gentle Monster Sues Malik Yusef for Allegedly Scamming Eyewear BrandA Korean-based fashion brand widely known for its eyewear — Gentle Monster has sued Kanye West’s collaborator Malik Yusef for allegedly forging Ye’s signature on contracts in addition to faking invoices and making an enormous amount of money in the process. This year in February, the South Korean eyewear brand, Gentle Monster had promoted and released a video known as “13 Music” that supposedly featured a track written and produced by Yusef and Kanye West. Post its release, Kim Kardashian had tweeted that, “Kanye is not involved and didn’t produce this song.” Furthermore, Gentle Monster had taken down “13 Music” and all the promotions associated with it.

In the lawsuit filed in the Los Angeles Country Superior Court against Malik Yusef and others, Gentle Monster has asserted that Yusef had taken an undue advantage of his seemingly close relationship with Kanye West to swindle Gentle Monster into believing that he could bring some of the world’s most famous and reputed artists together to compose and produce a number of videos which could easily increase Gentle Monster’s brand name and recognition globally. As per the report, Yusef had successfully arranged a meeting between Kanye West and Won Lee, who is the CEO of Gentle Monster US, in Jackson Hole, Wyoming. After the meeting, the suit claims that Yusef had given Won Lee a notarized Universal Music Publishing Group song agreement which authorized the release of a new track entitled “New Angels” for Gentle Monster’s campaign. The agreement came into sight along with West’s forged signature and a copy of his driver’s license which according to the lawyers of Gentle Monster was procured by Yusef without Kanye’s consent.

Gentle Monster has reportedly admitted that out of $2.5 million, it had sent $500,000 to a social agency which Gentle Monster had considered as Kanye’s West charity.

In a nutshell, Gentle Monster is now suing Malik Yusef along with his manager and business partner Burundi Partlow, and Sonja Nutall, who had introduced Won Lee to Yusef, on claims of fraud, breach of contract, and many more. The eyewear brand is also seeking damages of a sum to be determined at trial. For More Visit:  https://www.trademarkmaldives.com/