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:

TreatySigned 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/

Ariana Grande Sued by Photographer for Posting Pictures of Herself

 

Ariana Grande Sued by Photographer for Posting Pictures of HerselfThe American singer, songwriter, and actress, Ariana Grande has been accused of violating the copyright law by a paparazzi photographer, Robert Barbera. The New York-based photographer, Robert has filed a lawsuit against the pop star Ariana Grande at the U.S. District Court for the Southern District of New York by claiming that the actress has posted two pictures of herself which were clicked by him without his permission and license.

It is the latest occurrence of a celebrity going through allegations of copyright infringement on account of the pictures they post on various social media platforms. Khloe Kardashian, Gigi Hadid, Odell Beckham Jr., Jessica Simpson, and Jennifer Lopez, have also been affected and sued for similar cases.

Although the post which showed Grande in two side-by-side images wearing an oversized gray sweatshirt and thigh-high boots while carrying a clear bag with the word “Sweetener” on it has been deleted, its screenshot was presented as legal evidence to the court.

According to the lawsuit, “[Grande] is not, and has never been, licensed or otherwise authorized to reproduce, publically display, distribute and/or use the Photographs.”

Robert is now demanding either $25,000 for every unauthorized picture that Grande has posted or the profits which must have been generated after posting the pictures to her followers of more than 154 million in number on Instagram. Prior to being taken down, the post had garnered more than three million likes. For more visit: https://www.trademarkmaldives.com/

US Judge dismisses legal proceeding of ‘Pooey Puitton’ against Louis Vuitton

US Judge Sides with Louis Vuitton over Pooey Puitton “Parody” Case

Louis Vuitton (LV), a France fashion house and luxury retail company has succeeded in dismissing the legal proceedings initiated by MGA Entertainment, the maker of “Pooey Puitton” toy purses. John Walter, the US District Judge in Los Angeles, asserted that MGA Entertainment Inc’s lawsuit didn’t show any “actual and present controversy” between the two companies due to which the case didn’t really belong in the federal court.

Last year in December, MGA had filed a carefully-worded, harsh declaratory judgment action against LV, accusing it of attempting to interfere with its sales of a poop-shaped toy purse for children known as “Pooey Puitton”. The company was actually in a fear that the French brand was waiting to fire them with a lawsuit over intellectual property rights. In its lawsuit filed, MGA also pointed to Louis Vuitton’s “history of not respecting parody rights in the US and filing vexatious lawsuits against such protected parody.” However, Judge Walter approved the dismissal of the lawsuit in its entirety with prejudice by noting in his judgment that, “The court need look only to the fact that Louis Vuitton has not sued MGA based on its trademark rights in the US, while it has initiated proceedings in France.” Walter also mentioned that MGA’s attempt to refer to a number of earlier cases against the fashion brand Louis Vuitton is not simply persuasive.

MGA has affirmed that a rational person would never misinterpret Pooey Puitton, which retailed for $59.99, for expensive and high-priced bags by Louis Vuitton. For more visit: https://www.trademarkmaldives.com/

Embedded Instagram Post of Bieber at the center of the Latest Copyright Case

Embedded Instagram Post of Bieber at the center of the Latest Copyright Case

In the past few days, a photo of Justin Bieber who is a Canadian pop-star has been at the center of the latest lawsuit that closely mirrors one involving a photo of Tom Brady. A New York-based paparazzi photographer, Robert Barbera has filed a lawsuit of copyright infringement against CBS which is an American mass media company, for allegedly violating his rights in a picture of Justin Bieber by displaying it publicly in their document of “most liked Instagram pics”. As mentioned by Robert, CBS had neither licensed the photograph from him nor taken any legal permission to publish the photograph in their article.

The media giant CBS had only embedded the Instagram post of Justin Bieber as a part of their article than taking its screenshot. The courts have also largely agreed upon this by mentioning that CBS had only embedded a photo in their article without actually producing a copy of the image because of which there is not any new display of the picture which could actually lead to violating the copyrights of Robert Barbera.

In general, the court also believes that an alleged infringer in the case of embedding never really stores an image or develops a replica and therefore can’t violate the copyright law. For More Visit:  https://www.trademarkmaldives.com/