wetter.de v. wetter.at: Tug of War

The expansion of the E-World has resulted in disputes relating to domain names. The bone of contention was the use of the sign “wetter.de” between German website wetter.de and the Austrian weather website webber.at which was also accessible “Wetter-DE/Wetter DE/wetter.de” and offered a Smartphone app called “wetter DE” via its online shop.

The Regional Court of Cologne, decided in favour of wetter.at. On appeal, the Higher Regional Court of Cologne initially held that “wetter.de” was subject to work title protection but afterwards decided that Austrian website can continue with its usage as there is very low level of distinctiveness. Wetter describes the content of the app and was not protectable under Articles 5 (3), 15 (1, 2, 3 4) German Trade Mark Act. The judges were of the view that it even failed to qualify for work title protection. It was purely descriptive in nature without even a low degree of distinctiveness.

Wetter.at in the meantime remains free to use the signs “Wetter-DE/Wetter DE/wetter.de” for its apps.

-Shambhavi Mishra

Volvo v. Lovol: Similarity in Trademark

Similarity in Trademark has been the cause of battle for many companies. Automobile giant, Volvo had tried to oppose the registration of “Lovol” by Hebei Aulion Heavy Industries Ltd. for agricultural machines and vehicles. Volvo had contended that “Lovol” might create confusion in the minds of the consumer due to similarity in visual symmetry, concept and phonetics. Both the marks consisted of five letters and were rearrangements of letters and sounds ‘V’, ‘O’ and ‘L’. Connection can be made between the two due to the “visual dictionary” in the human brain.

OHIM decided the matter in favour of “Lovol”. On an appeal by Volvo in General Court of the European Court of Justice, it upheld OHIM’s decision. It held that consumers focus more on the beginning of a word and both the first and last letter differ. Though there are several letters which coincide in the two marks, there is no connection due to lack of visual, aural similarity as per Article 8(5) of Regulation 207/2009 on the Community Trade Mark .Use of “Lovol” will not be detrimental to the distinctive character of the earlier trade mark (Volvo). 

Thus, the General Court dismissed Volvo’s claims in its entirety.

-Shambhavi Mishra

Leoplod’s Story

Novex Communications a leading satellite channel distribution company filed a case[1] against Leopold Café, one of the oldest and most famous café of Bombay for exploitation of copyrighted work principally owned by Yashraj Films Pvt. Ltd. and Shemaroo Entertainment Limited.

The main question for determination in this case was whether Novex Communication is entitled to grant licence on the behalf of owners of copyright in various works.

Section 30 of the Copyright Act, 1957 provides that owner of copyright and his duly authorized agent may grant any interest by licence in writing. It further prohibits any person or association of persons from carrying on business of granting or issuing licences in respect of any work in which copyright subsists only exception is Copyright Societies Registered under Chapter VII of the Act.

The court held that for a valid licence by an agent under Copyright Act factum of agency must be disclosed so that licensee knows that it has valid licence from the owner. The minute principle is undisclosed and licence is granted in the agent’s name, the prohibition in Section 33 comes into play.

Honourable High Court observed that licences issued by Novex did not indicate that it is acting as agent for the right holders. Further the manner in which Novex is conducting its operation does not indicate that it is acting as agent for owners of copyright, thus is in direct contravention of Section 33(1).

The court in this case harmoniously interpreted Section 30 & 33 and clarified that the prohibition under Section 33 does not apply to a case where an individual acts in his individual capacity, which includes acting through an agent but only requirement is to disclose the fact of agency.
 __ Gajendra Khichi

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[1] M/s. Leopold Café & Stores & Anr v/s Novex Communications Private Ltd. Suit (603of 2014) Bombay HC, decided on 17/7/2014

Battle of the Titans

Computer programs are subject to constant new developments, making issues like Copyright infringement a subject matter of pertinence. Presently, Oracle and Google is battling on similar grounds. In August, 2010 Oracle filed a complaint that Google has copied verbatim the literal elements of the API packages in its mobile operating system. API packages form the platform for mobile software development; in this case Google went to the extent of replicating the exact elements of the declaring source code. The issue which was dealt with most was about the non-literal elements of 37 packages out of 166 packages.

Northern District of California decided the case in favor of Google and held that API is not a subject matter of Copyright. The Ninth Circuit in this case endorsed the principle of Abstraction-Filtration-Comparison which was developed in Computer Associates Int. Inc. v. Altai Inc. . Copyright protection cannot be denied for the lines of the declaring code because Sun/Oracle did not provide only a single technique of writing the declaring code. Secondly, those phases used in it are creative and original in terms of selection and arrangement and certain expressions in the programs are subject to copyright protection.

Google filed a petition in the U.S. Supreme Court to the review the decision of the subordinate court on 6th October, 2014. Thus, a lot is at stake in terms of money, reputation which will be depending on the Supreme Court.

-Shambhavi Mishra

What amounts to Communication to the Public

US Copyright Act of 1976 gives copyright owner exclusive right to perform the copyrighted work publicly.[1] This is a case[2] of infringement of broadcasting rights under copyright law, where the defendant Aereo Inc. started a service over the internet through which its subscribers could watch TV programmes over the internet at the same time as the programs are broadcast over the air.

Broadcasters, distributors, television produces etc. argued that this act of Aereo violates their exclusive right of public performance provided under the Copyright Act, 1976.

In response to the above claim Supreme Court hold that the act of Aereo infringes the right provided under the Copyright Act. The court considered two questions (1) whether Aereo’s operation amounts to performance (2) whether it’s a public performance. In answer to first question it concluded activities of Aereo amounts to performance. Answering the second question it rejected Aereo’s argument that transmission of program to a subscriber is made through a specific antenna allotted to that subscriber only so does not constitutes public performance. The court further clarified that it amounts to transmission to public or public performance where members of pubic receive the performance at the same time and place or different times or places. In other words, the public need not to be situated together.

-Gajendra Khichi

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[1] 17 U.S.C. SS 106(4)

[2] American Broadcasting Cos. V. Aereo 573 U.S. _(2014)

The 'Mi' Trouble

The world of smartphones has witnessed constant growth and has become the subject of numerous infringement suits. Xiaomi is no stranger to controversies. As soon as the electronics firm entered the Indian Smartphone market, a few months down the line, has been blocked from selling handsets. 

At the crux of the matter, lies the infringement claims of eight registered Standard Essential Patents of Ericsson. The Hon'ble Delhi High Court has passed an injunction forbidding the firm from producing, building, importing or selling smartphones utilizing the Patent in India. India being its largest market outside China, this surely has come off as a blow to the infant company.

Xiaomi and Flipkart, e-commerce partner, have to announce how many devices have been shipped, so as to calculate the compensation due to Ericsson. In an earlier infringement suit against Micromax, Ericsson is to receive 1% of the selling price of the devices, by way of royalty, for use of latter's Standard Essential Patents. 

While thee court has directed the Central Board of Excise and Customs to stop the import of devices from Xiaomi, it is to be looked how the firm's legal team works a way out of this suit. 

- Bagmisikha Puhan

The UBER War

Uber, the name invokes the image of the ride sharing company, in a major chunk of the metropolitan population of the world. The services are also available in the city of New York, where there already exists a Trade Mark in the name of Uber Inc., a graphic design company.

As a matter of fact, the ride-sharing company holds two registrations in the names of UBER and UBERCAB for the Classes 9, 38, 39 and 42. The company has a reputation which now raises questions against the popularity of the Senior Trade Mark held by Uber Inc. There are many registered “UBER” marks spread across the spectrum of the classified goods and services.  

Consumer confusion in the domain of Trade Mark law derived from the second user, capitalizing on the goodwill of the early user. On the other hand, “reverse confusion” is the first user loses its’ control over the reputation and goodwill, where the consumers grow to believe that the senior user’s goods are associated with that of the junior user. The existence of the junior and the senior Trade Marks for the name “UBER” can now become an exemplar for Reverse Confusion.

The UBER Inc., for graphic design, could have proceeded with the claims of trade mark dilution, if only the mark would have had been famous. The junior user being the famous one is actually only to the disadvantage of the design company. Another issue which has created tension amongst the two companies, is the fact that the graphic design company has a listed telephone number, while the cab providers do not; misguiding many consumers of the ride sharing company to the senior user of the mark. It is only a matter of time before it unfolds if the two companies are pitted against each other in terms of counter claims. 

- Bagmisikha Puhan