Microsoft is a Well-Known mark now; now declared!

Much debate revolves around which should be treated as a well-known mark, and which does not qualify for such “extended” protection. In a case of its own kind, the Delhi High Court has let Microsoft enjoy the celebrated status of being “well-known” amongst the public en masse.

The Plaintiff’s contentions that the company enjoys stellar reputation across the world, and enjoys a market at a global level, boasting of equally great volumes of usage have yielded in punitive damages being awarded in an ex parte case. With heavy investments having flown from the company into advertisements and brand management, the brand name is now exclusively identified and associated with the company.

The court relying on an earlier Supreme Court judgment in N R Dongre v. Whirlpool Corporation has held that Microsoft is a “well-known” trade mark, and that no one else is entitled to use the mark in a similar or dissimilar business as the mark had come to acquire unique goodwill and reputation.

The Court went on to hold that awarding punitive damages, is an appropriate vehicle for deterring infringers from engaging in illegal trade practices in their greed for business. The Court has awarded Rupees Two lakhs in terms of compensatory damages, Rupees Three lakhs in the form of punitive damages and another Fifty Thousand Rupees as costs to the suit.

With this, the brand name Microsoft joins the elite list of “well-known” marks, as maintained by the Registrar of Trade Marks. 

- Bagmisikha Puhan

Noodle Restaurant in a Soup

The city of San Francisco hosts two restaurants namely ‘Chubby Noodle’ and ‘Fat Noodle’. When the owners of Chubby heard of a restaurant to be named ‘Fat Noodle’ they sued them for trademark infringement. Chubby claimed that Fat Noodle was “confusingly similar” to its trademarked ‘Chubby Noodle”.

Chubby in its claims alleged that the words ‘chubby’ and ‘fat’ are in fact synonyms and notes that both restaurants’ logos incorporate a stylized bowl with noodles in the bowl. Fat Noodle, on the other hand, claims that the concept for the restaurant was conceived in 2008 which was long before Chubby existed.

Now if the aim of Chubby is to block all restaurants with their names which are synonyms of chubby, it is petty and silly to say the least. The objective of trademarks is not to breed pettiness but to actually protect unique creations. The San Francisco courts will have a huge “chow down” in their Courts soon.

-- Nayanika Singhal

Facebook's new policies

The modifications made by Facebook in the statement of Rights and Responsibilities, forms the foundation to understand the ownership of the content of that you upload on Facebook. Facebook, being a social networking site, has become the sharing centre for people across the globe.

The social networking giant does not take the ownership of the content and information posted. The person who is posting  and uploading is the rightful owner and the visibility depends on the privacy and application settings .

Facebook is granted, as per the privacy and application settings, non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any content that is covered by Intellectual Property rights that you post in connection with Facebook. The condition is terminated once the content is deleted unless the content has been shared with others and they have not deleted it.

A person may contact the individual who has infringed copyright or trademark before complaining and filing out the form. A person having a Facebook account or a person having no Facebook account can also file copyright infringement. Report can be filed against third party made apps as Facebook does control the content made available through those apps.

-Shambhavi Mishra

“pŏm” lands into trouble

The largest maker of 100% pomegranate juice, Pom Wonderful filed an infringement suit against Hubbard before the 9th Circuit to restrain it from selling a pomegranate-flavoured drink labeled “pŏm”. Pom Wonderful contended that “pŏm” is likely to cause confusion among the customers due to similarity with its own trade mark “POM”.

The Court of Appeal is of the view that five factors weigh in favor of Pom Wonderful (strength of mark, relatedness of goods, degree of consumer care, similarity of marks, and marketing channel convergence) and three factors are neutral (actual confusion, defendant’s intent, and product expansion). None of the factors weighs in favor of Pur. There are many semantic, aural and visual similarities particularly in respect of the marks in the respective labels.

Thus, the district court was erroneous and has abused its discretion. The decision is reversed and an injunction is granted by the higher court to further public interest.

-Shambhavi Mishra

iPhone v. iFone

Apple’s iPhone was launched in 2007 and iPhone 3GS was brought to India by Vodafone in 2009. In 2007, Chennai based iVoice Enterprises’ mobile venture, India Phone or ‘iFon’ filed for registration of the btand and logo ‘iPhone’ but Apple filed a motion against it even though at that time Apple’s iPhone was not registered as a trademark. Subsequently, iVoice had to suffer huge loss and filed for rectification asking for removal of Apple’s ‘iPhone’ trademark from the registry, to which a counter was recently submitted by Apple.

Some points need to be focused in this case. Firstly, iFone is phonetically similar to iPhone. Both of them cater the needs of the same section of the customers. The syllable “i” is associated with the products of Apple. Similarly, iFone could have registered under India Fone  and it was registered at the time when the customers in India were eagerly waiting for the launch of iPhone. iFone is deceptively similar to  iPhone which is likely to be detrimental to the reputation of iPhone.

Though iPhone is a foreign, unregistered trademark, it can enforce its rights by establishing priority use, reputation in India, misrepresentation and injury to Goodwill in the claim of passing off. The judgment is eagerly awaited to see in whose favour trademark rights are upheld.

-Shambhavi Mishra

Battle of the Birds

Casual clothing maker, Jack Wills has won the case on trademark infringement and passing off with respect to “Mr Wills”, a silhouette of a pheasant with top hat and cane, features on many of Jack Wills’ garments, which is registered as a UK and community trademark. Jack Wills brought claims against department store, House of Fraser because of its use of a similar-looking Pigeon logo.

Mr Wills is “inherently distinctive”, and that it had made “extensive use” of the Mr Wills logo in relation to its clothing. The High Court was of the view that there was "a reasonable degree of visual similarity and a high degree of conceptual similarity between the marks." Both the goods were identical and that the types of garments on which the logos were used corresponded closely - all of which suggested a likelihood of confusion existed with regard to an average consumer.

-Shambhavi Mishra

Novartis and Cipla: Compulsory Licensing Trouble

Cipla had launched a low cost generic version of Novartis’ respiratory drug Onbrez. It has even demanded revocation of the Swiss giant’s patents on the grounds of public interest  (S. 66 of the Indian Patent Act) and granting compulsory licensing due to national emergency or urgency (S. 92). Novartis’ version of the drug was expensive and it is not worked locally. The drug was imported in very small quantities which were insufficient to meet the needs of the people.

Health Ministry is of the view that a potential compulsory license applicant must attempt to procure voluntary license from the patent holder which was not the case with Cipla. Novartis’ patent on the drug was not revoked. There was no case for Compulsory Licensing under S.92.
                       
Novartis has filed a case against Cipla contending for infringing patents covering Onbrez. The drug is protected by 5 patents in India. In putting forth their cause, the Pharmaceutical giant contends that there is ample supply of Onbrez.

Novartis has also made a claim for Trade Mark Infringement. Cipla’s generic version (Unibrez) is deceptively similar to Novartis’ Onbrez which may cause confusion among the people. The Delhi High Court granted permanent injunction in Novartis’ favour. Cipla hopes to find a way out of this battle, by proposing to use the mark “Indaflo”, but of course nothing can be changed till the suit is on.

-Shambhavi Mishra