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

Crocs chasing Bata

Footwear giant Crocs has initiated legal action in India against Bata and a number of other footwear brands including Coqui, Suncorp Exim (for Warner Bros, clogs), Relaxo and Bioworld. Crocs is known for its Swiss cheese-style shoes and has contended that the above mentioned brands have imitated its design. The design of Clogs, its holed, foam-like shoe has been used by these brands to sell their products at a very cheaper rate as compared to price at which they are sold by Crocs. Clogs accounts for more than half of the Colorado-based company's global sales.

Crocs has filed a case in the District Court of Delhi and has obtained interim reliefs of injunction. Most of the cases have now been transferred to the Delhi high court by virtue of applicable statutory provisions. The rulings have subsequently resulted in raids across various stores, including that of Bata's in Delhi and NCR.


-Shambhavi Mishra

Revival or Slumber: The Sleeping beauty Brands

Arnaud de Lummen has the successful business of reviving dormant fashion brands and selling them to investors. The Sleeping Beauty brands include Schiaparelli, Vionnet, Moynat and, now, Paul Poiret. The concept behind this is that these fashion brands still retain brand equity which can be used to offer a new product. The investors who are interested in such brands are creative and willing to take risks.

De Lummen confesses that they need to get a bit aggressive while acquiring rights over dormant brands. To relaunch a brand, Intellectual Property portfolio must be clean so that there is no ambiguity. He acknowledges that there is a bit of fashion fatigue or comparison to such brands which had failed earlier.

Such brands much be bought by the very top investors. Unlike Halston, one needs to be patient in earning revenues and increasing sales volume.
Financial backing is also important. Like Bernard Arnault who had acquired rights over Moynat, investors must be far sighted.

If the major luxury conglomerates currently lack the requisites for taking on more such projects, perhaps the era of big brand revivals is over?

-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

The Tale behind Fait d' Hiver

Jeff Koons for his porcelain sculpture Fait d’ Hiver (created in 1988) is likely to be sued by Frank Davidovici for plagiarism. Fait d’ Hiver is also the title of 1985 Naf Naf ad. The sculpture somewhat resembled the ad where a woman was lying in the snow with a pig and a Saint Bernard barrel around its neck.

Jeff Koons was sued for copyright infringement in the United States in 1992. He took the defense of fair use and subsequently lost it but won case on similar grounds in 2006. French law does not have a fair use defense as exhaustive as the United States and only certain articles provide for several uses of a protected work which the owner cannot oppose (for the purpose of caricature, parody or pastiche)

In the CJEU Deckmyn case, it was held that parody is an autonomous concept of European law and must be interpreted uniformly throughout the Union. Parody is an expression of humour and mockery and evokes an existing work (noticeably different from it).

The issue before Jeff Koons is to prove that the 1985 ad is still remembered and the sculpture is recognized as a parody of the Naf Naf ad. He may also contend that people were aware of the ad at the time of creation of the sculpture and current knowledge of the ad is irrelevant.

-Shambhavi Mishra

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