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Crypto is not a ‘currency” as per new asci guidelines on virtual digital assets

The Indian government in its annual Budget presented for the financial year 2022-23 for the first time defined Virtual Digital Assets (VDA), which includes both crypto and NFT. The government also introduced a special provision to tax gain made on VDA trading by 30%. The reason for this tax was phenomenal rise of such transactions and magnitude of crypto transactions. In the recent times many crypto platforms have come up that offer “guaranteed returns” and use terms that are often associated with real assets to build trust among investors. The high decibel campaign that promises “get rich quick” is drawing investors to these digital assets. The millennials are particularly attracted to crypto trading despite market fluctuations and an uncertain legal status.

07 March 2022

Intellectual Property

Freez held to be phonetically similar to breezer

Bacardi and Company Limited (Bacardi), the manufacturer of alcoholic beverages and registered proprietor of the trademark BREEZER has filed a suit before the Delhi High Court alleging trademark infringement and passing off. Bacardi is aggrieved by Bahety Overseas Private Limited, (Bahety) adoption and use of the mark FREEZMix concerning non-alcoholic beverages.

18 January 2022

Intellectual Property

The battle over orange-red colour scheme for noodles wrapper

ITC filed the suit for passing off and copyright infringement before the Additional City Civil and Sessions Judge, Commercial Court, Bengaluru against CG Foods Pvt Ltd (CGF), makers of noodles under the brand 'Wai Wai'. 

18 January 2022

Intellectual Property

Renewable energy and patents in india

India is the world's third‐largest energy-consuming country with a population of approx. 1.3 billion. Studies indicate that energy use has doubled since 2000, with 80% of demand still being met by coal, oil, and solid biomass. The country's economic growth demands increase in its energy resources, energy systems, and infrastructure. As per International Energy Agency in its report "India Energy outlook" 2021, Rising population and incomes since 2000 have underpinned a doubling of energy use in India due to rising vehicle ownership, demand for construction material, and a rise in appliance ownership.   However, per capita, energy use is still less than 40% of the world average. Source: “India Energy outlook” 2021 Report by International Energy Agency Energy Statistics: As per Energy Statistics India 2021, India's Energy mix has shifted from more conventional resources of energy to renewable sources.   This is evident because while the installed capacity of renewable sources of electricity generation excluding hydro from utilities grew at 12% in the previous year (2020 over 2019), thermal sources grew only at 1.91%. Source: “Energy Statistics India” 2021 Report by Govt. of India The Energy Statistics India 2021 also shows the estimated potential of Renewable Power (as of 31.03.2020); source wise indicates a high potential for renewable energy generation from various sources- wind, solar, biomass, small hydro, and cogeneration bagasse in India. The total potential for renewable power generation in the country as of 31.03.2020 is estimated at 1,097,465 MW. This includes solar power potential of 748990 MW (68.25%), the wind power potential of 302251 MW (27.54%) at 100m hub height, SHP (small-hydro power) potential of 21134 MW (1.93%), Biomass power of 17,536 MW (1.60%), 5000 MW (0.46%) from bagasse based cogeneration in sugar mills and 2554 MW (0.23%) from waste to energy, as shown in below chart. Source:“Energy Statistics India” 2021,Report by Govt. of India Patents and Statistics worldwide and India: The renewable energy sector has seen major investment in the past decade, as evident from many products based on India's solar cells and wind turbines. Innovative activity in green technologies, assessed on several patent filings, has also increased significantly in the past years. As  per the WIPO Magazine, published in March 2020, over the decade 2010 to 2019, Japan tops the leader board for the total number of patent applications for renewables in general and both solar and fuel cell technologies. The United States ranks highest for geothermal technology, and in wind energy, Denmark is top-ranked, followed by Germany. As per the statistics published by WIPO, the growth rate in renewables is impressive: from 2002 to 2012, the number of PCT patent applications published for renewables increased by 547 percent. This corresponds to the decade in which most investments were being made in the sector, and innovation was promoted. And, although the total number of PCT publications has declined since the peak of 2012, in 2019, it was still 3.5 times higher than in 2002. The total number of published PCT applications for renewable energy can be divided into four main sectors: solar power, fuel cells (which generate electricity through chemical reactions), wind energy, and geothermal (using heat from under the earth). The most notable trend since 2002 is the growth of solar technology. In 2002, solar accounted for just over a quarter of published PCT applications for renewables, while in 2019, they accounted for over half of them. Over the past 17 years, the number of published PCT applications relating to solar power increased by 678 percent. Solar has been the leading technology every year since 2009. It peaked in 2012 when 2,691 international patent applications were published. This investment in innovation reflects the growth of solar power generation around the world. Indian scenario: The Innovation index indicates that approx. 15% of India's high-value patents are related to green tech. In 2013, Indian Patent Office received 1,140 patent applications in the domain of high-value green patents. India has an established industry in low-carbon environmental goods and services (LCEGS). It has the third-highest LCEGS sales in Asia (second-highest in terms of proportion of gross domestic product). The Indian Patent Office database shows approx. 6000 patent applications published, as of date, in the domain of solar energy, while 10,000 patent applications published in the domain relates to renewable energy covering wind energy, the process for converting hydrostatic pressure into electrical energy, energy generation, hydro wind electric power generation system, solar thermal systems for domestic applications etc. Solar photovoltaic has been the topmost technology for the absolute number of patents, followed by wind energy technology. There has also been an increasing trend (number of patents and growth rate) in batteries and pumped storage. Energy storage technologies have also seen improvement in terms of patent filing. The patent applications relating to renewable or green technology are subject to the same substantive analyses or examination as regular applications in terms of examination parameters i.e. novelty, inventiveness, and industrial applicability. However, the patent applicant still faces hurdles in the quick grant of the patent. The more extended period between the filing of application till the grant of patent hinders the applicant's ability to commercialize and license their technologies and secure early return on their investment. Stronger protection and enforcement of patent laws will help build confidence of foreign entities when sharing technologies with developing countries. India's commitment to the United Nations Sustainability Development Goals The Sustainable Development Goals (SDGs), also known as the Global Goals, were adopted by the United Nations in 2015 as a universal call to end poverty, providing quality education, good health, clean water, sanitation and energy, equality etc.  overall to protect the planet, and ensure that by 2030 all people enjoy peace and prosperity. There are a total of 17 SDG’s and the goal number 7 relates to providing affordable clean energy.   The 17 SDG’s are integrated which means that they recognize that action in one area will affect outcomes in others, and that development must balance social, economic and environmental sustainability. Towards its SDG commitments, India is taking several initiatives, one of them being the establishment of NITI Aayog.  The NITI Aayog (National Institution for Transforming India) is a public policy think tank of the Government of India established to achieve the SDG’s with cooperative federalism by fostering the involvement of State governments of India in the economic policy-making process using a bottom-up approach.    In addition to several initiatives in diverse sectors by NITI Aayog, it has recently released a report titled Renewables Integration in India, 2021 in collaboration with the Indian Economic Service (IES). The report suggests ways for India to securely maximise the amount and value of solar and wind power in its electricity system. It also suggests policy, market and regulatory measures to incentivise renewables and ease their integration into the energy system with greater flexibility.   The plan is to draw different models for renewable power in individual Indian states, rather than at the national level, since the challenges, solutions and priorities differ across the country.   The Government of India plans to increase renewable electricity capacity to 175 GW by 2022 and to 450 GW by 2030, but even faster growth will be needed in the following decades to meet ongoing growth in demand and reach climate targets. Additionally, India’s Ministry of new and renewable energy has launched several initiatives to develop and deploy new and renewable energy for supplementing the energy requirements of India. Looking at the the private sector, there is a noticeable shift with several industries switching to renewable energy sources, including sectors like Real estate, which embodies energy-efficient buildings, water and wastewater treatment as a selling point.   In other sectors, efforts are being made to employ climate change mitigation technologies in consumer products. The next decade will hopefully bring a revolutionary change in the production and employment of renewable energy in the country.  Currently, India is not in the top countries producing/using renewable energy sources. However, given of its size and the dynamism of its economy, India has a key role to play in the world’s transition to a clean energy future. Renewable Technology in India and challenges: As per International Energy Agency in its report "India Energy outlook" India has seen extraordinary successes in its recent energy development, but many challenges remain, and the Covid‐19 pandemic has been a major disruption. According to the Council on Energy, Environment and Water (CEEW), India would need to generate at least 83 percent of its electricity from (non-hydropower) renewable energy sources to reach net-zero by 2050. However, mitigating carbon emissions is one of the concerns which needs to be addressed. It has been seen that transfer of renewable technologies faces hurdles in the form of transaction and assurance cost. Most of the time, the transfer fails due to large transaction costs of the technology. To address the challenges, the government needs to bring about changes at the policy level to offer tax incentives and easy financing options. Further ease barriers for technology transfer and create ecosystem that brings technology holder/ patent owner and entrepreneurs together and approprirate incentive provided to technology holder for sharing the technology and ‘trade secrets’ for working of the technology. Is IP a barrier? To scale up technology diffusion in renewable energy sector, questions have been raised as to whether IP protection poses a barrier in particular for developing economies. The argument being that IP rights can hamper the transfer of technologies, especially by raising costs, limiting access and putting countries with low institutional capacity at a disadvantage. Interestingly, the research has shown that role of patents for renewable energy technologies differs from that in other sectors (eg Pharmceuticals). Compared with many other industries, the renewable energy sector displays a higher degree of substitutability and competition. In fact, innovation in renewable technologies comes from incremental improvements to existing off-patent technologies, especially as they are adapted to local conditions. Thus, there is sufficient room in the market for competing technologies.  On the other hand, a strong IP protection regime encourages business to invest in protection of technology, enter into licensing arrangement and invest in R&D locally.  Further, the trade barriers in the form of tariff and non-tariff duties often inhibit transfer of technology making it unattractive for companies to invest in  middle- and low-income countries.  Therefore, the Indian government need to address duty imposed on products that are targeted towards building eco system for renewal products manufacturing. Towards this, the Indian government has recently launched Production Linked Incentive scheme ‘National Programme on High Efficiency Solar PV Modules’ for achieving manufacturing capacity of Giga Watt (GW) scale in High Efficiency Solar PV modules. It is widely believed this will attract investment by global players in manufacturing and resultantly transfer of technology. With the international coordination, attractive government policies and participation of the private sector, hopefully there will be a green future.

18 January 2022

Intellectual Property

Madras high court holds 'care' to be generic.

The case note illustrates the inherent difficulty in enforcing rights in a word that is descriptive of services. The Plaintiff, Praba's V Care Health Clinic Pvt. Ltd (Praba) filed the suit against the Defendant, I-Care Aesthetic Clinic (I-Care), before the Madras High Court alleging trademark infringement, passing off, etc. 

07 September 2021

Intellectual Property

Asci unveils final guidelines for influencer advertising on digital media

Influencer marketing globally is estimated to be a $ 1.75 billion industry. The trend is gaining traction in India, with more and more consumers buying goods online. The Advertising Standards Council of India (ASCI) to regulate this activity had issued the draft guidelines in February 2021 seeking feedback from all stakeholders – advertisers, agencies, influencers, and consumers, covered in our earlier post.

01 September 2021

Intellectual Property

Telangana high court rules 'tasty drops' similar to ‘tasty gold’

Rights over the mark ‘Tasty Gold' are being asserted by Sri Tulasi Industries (Tulasi) against Sri Sapthagiri Industries and Ors (SSI) for using the mark 'Tasty Drops' for edible oil. At the time of admission, an ex parte interim injunction was granted by the District Court (Mahabubnagar). The injunction was set aside by the District Court after hearing both parties. Tulasi has now filed an appeal before the High Court of Telangana. The post discusses the High Court decision in the Appeal.

27 August 2021

Intellectual Property

Faq’s on advertising practice in india

What type of complaints are covered under ASCI Code? ASCI adjudicate complaints across all media such as Print, TV, Radio, hoardings, SMS, Email, Internet/ website, product packaging, brochures, promotional material and point of sale material, etc. Who are the members of ASCI? The principal members of ASCI, who are also its sponsors, are firms of considerable repute within industry in India, and comprises of advertisers, media, advertising agencies and other professional/ancillary services connected with advertising practices. What are the basic tenets of ASCI Code? ASCI seeks to ensure that the advertisements follows four basic codes of ethical advertising: Honesty: The claims being made in the advertisement must be true and capable of being established with evidence. Decency: The advertisement must not be offensive to generally accepted norms of public decency Non-Harmful: The advertisement should not be for promotion of products regarded as harmful or hazardous or unacceptable to the society at large. Fair in competition: The advertisement should not be unfair to competition. How can I submit a complaint at ASCI? Can anyone file a complaint? Complaints may be submitted via text on WhatsApp, an online form, by way of mobile app, email or telephone. Letters may be sent to the postal address provided on ASCI’s website www.ascionline.in . As per ASCI Code, the complaint can be lodged by: the general public/ consumers; non-public, such as government regulators, consumer groups and industry bodies; intra-industry complaints i.e., complaint by one advertiser against another or amongst ASCI members; and suo motu complaints – when a member of the ASCI Board, the Consumer Complaints Council (CCC) or the Secretariat makes a complaint. Filing of a complaint with ASCI is free of cost and a decision is passed within four to six weeks. However, in case of Fast Track Complaint Redressal scheme (complainant and the other side need to be ASCI members), a fee of Rs. 75,000 (approx. US$ 1000) is required to be paid and the decision is passed within two weeks. What type of evidence is required to be filed along with the complaint? The following requisite details and documentation are required to be included in a complaint: Complainant’s name, profession, organization and contact details. Particulars of the advertisement including the exact objectionable content of the advertisement and details of the product/ service involved. Publication/ broadcast details as well as a clipping /copy of the advertisement. The specific grounds for objection as the basis of the complaint. The specific objections raised in the complaint need to be substantiated, where necessary, with supporting data/ information. This data is shared by ASCI with the advertiser complained against. If the advertisement is in a language other than Hindi or English, a translation of the advertisement in Hindi or English is required. What are the steps involved from filing of the complaint until it is adjudicated by CCC? The main steps involved in a complaint filed before the ASCI are: Filing of a complaint by the complainant and its acknowledgement by the Designated Officer through email/ hardcopy. Examination and service of the complaint to the advertiser asking for their written comments/ response. Filing of written response by the advertiser within a period of 5 business days from receipt of the complaint (extendible to 7 business days in case of the need to support claims technically). Evaluation of the complaint by the CCC ASCI also provides informal resolution if the advertiser, on receipt of a complaint, readily volunteers to address the objections in the advertisement by either withdrawing or modifying the advertisement. Can an advertiser raise the defence that it is not a member of ASCI and refuse to comply with the order passed by ASCI asking the advertiser to withdraw/amend the advertisement? This is not a valid defense and complaint cannot be dismissed on this ground alone. The decisions passed by ASCI are applicable to members and non-members. However, in case Fast Track Complaint is lodged, the complainant and the advertiser must be ASCI members. What are the remedies available to the advertiser if it is aggrieved by the final order passed by ASCI? Is it possible to seek an injunction/stay from the court against the ASCI order? The following options are available to the advertiser: file review petition before ASCI; file a civil suit before the court seeking stay order/ injunction and/ or damages against the order passed by ASCI. Are the decisions passed by CCC accessible to the general public? Yes, they are available on ASCI’s social media portals (Facebook, Instagram, YouTube, LinkedIn and Twitter), its website www.ascionline.in and are also shared with members of ASCI in the monthly/ annual report. What are the implications due to non-compliance of decision passed by ASCI? The decisions passed by ASCI are shared with the government of India from time to time to ensure compliance with the decisions passed. Rule 7(9) of Cable Television Network Rules, 1994 states that no advertisement which violates ASCI’s Code shall be carried in the cable service.  The Information and Broadcasting Ministry (I&B) of Government of India has issued advisories in the past to broadcasters against airing advertisements that violates ASCI’s code and not complying with the decision of its Consumer Complaints Council. Additionally, ASCI has partnered with Ministry of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homoeopathy (AYUSH) and Department of Consumer Affairs to curb misleading advertisements. Thus, the decisions passed by ASCI have been given more teeth in reality even though it claims to be self-regulatory organization. How many complaints were filed before ASCI in the year 2020? Which sector received maximum number of complaints? In the year 2020, ASCI received 6527 complaints against 3,315 advertisements. Out of these 2,357 complaints were upheld. The maximum violations were in education sector (1062) followed by healthcare (827). The main violations/issues raised in the educational comprised of job guarantees, fake job scam and healthcare advertisements comprised the lack of truthfulness and honesty of representations and claims. Is the advertiser required to obtain approval from ASCI before the advertisement is launched? It is not mandatory to have the advertisement cleared from ASCI before it is aired by the advertiser. Is pre clearance advertisement advice provided by ASCI binding on ASCI if the complaint is filed against the same advertisement at a later date? The advice is not binding on the advertiser or ASCI. However, the possibility of the complaint being upheld by CCC against such advertisement reduces significantly. Is it permissible to identify a competitor by name in the advertisement? The Advertising Standard Council of India Code requires that advertisements shall not make unjustifiable use of the name or initials of any other firm, company or institution, or take unfair advantage of the goodwill attached to the trademark or symbol of another firm or its product, or the goodwill acquired by its advertising campaign. Comparative advertising is allowed as long as the advertiser seeks to portray the advantages of its products in a truthful and honest manner. There is no bar against comparing particular features of two products to claim superiority over a competitor’s offering or against making a general comparison, as long as this is truthful. When making such a comparison, the advertiser cannot claim that the competitor’s product is bad. In other words, the advertiser can claim that its product is superior, but cannot denigrate the competitor’s product or call it inferior as it would amount to product disparagement’ and may incur legal consequences. Comparative advertising is permitted provided the rights of trademark owner are not infringed and unfair advantage is not taken of the competitor’s trademark (Sections 29(8) and 30(1) of the Trade Marks Act). Are there any guidelines on the disclaimers allowed in the advertisement? Disclaimers can ‘expand or clarify a claim, make qualifications, or resolve ambiguities, to explain the claim in further detail, but should not contradict the material claim made or contradict the main message conveyed by the advertiser or change the dictionary meaning of the words used in the claims received or perceived by a consumer’. The disclaimer should be prominently written, represented in the same language having same font as the claim and should not be written in italics. What is the duty of celebrity appearing in the advertisement? Can the celebrity appearing in the advertisement be held liable for misleading advertisement? In matters concerning celebrity endorsements, celebrities are expected to have adequate knowledge of the ASCI Code and it is the duty of the advertiser and the agency to make sure that the celebrity they wish to engage is made aware of them. Further, celebrity should do due diligence that the description, claims made in the advertisement they appear or endorse can be substantiated are not misleading or deceptive. Further, celebrities should not participate in advertisements that is prohibited for advertisement or carry health warning such as injurious to health. As per Consumer Protection Act, 2019, penalty of INR 10 Lakh (approximately USD 13,700) and one year ban may be imposed on the celebrity from endorsing the product/service. For subsequent violation, penalty of INR 50 Lakh (approximately USD 68,500) and up to 3 years ban from endorsing the product/service may be imposed. The celebrity can avoid imposition of penalty if he can establish due diligence on his/her part to verify the veracity of the claims made in the advertisement regarding the product or service being endorsed. Are there special rules for claiming a product is new or improved? The word ‘new’, ‘improved’ or an improvement of the product may be used in advertisements for one year from the date the new product/ service has been launched in the market. Are their special guidelines on advertising products that claim to provide prevention for COVID-19? Several advertisements with misleading claims around COVID-19 have emerged, such as those referring to the cure and prevention stemming from ‘anti-corona’ mattress or through the application of tulsi (Indian basil) drops to apparel. To curb these practices, ASCI has issued guidelines to promoters for the advertisement of various medicinal products and services. These guidelines cover the following main points: Avoid claiming destruction of any virus other than coronavirus. In case the advertisers opt to claim the removal of any other virus, the advertisement shall include a disclaimer, e.g. “claim not applicable to coronavirus (COVID-19)”, or similar message. AYUSH regulatory authorities are required to stop advertisement of AYUSH-related claims for COVID-19 treatment in print, television and electronic media. Advertisers’ claims of reducing the chances of getting infected with COVID-19, or gaining immunity against it, should be supported by health authorities. Otherwise, it should be backed up by recognised medical literature, or regulatory-approved clinical research conducted by recognised medical institute or laboratory. Authors Ranjan Narula Managing Partner RNA, Technology and IP Attorneys Board Member, International Trademark Association (INTA) Ranjan founded the specialist IP law firm, RNA, in 2004, and is now its Managing Partner. He has twenty seven years’ post qualification experience working on contentious and non-contentious IP and Technology issues. Ranjan has been practicing as an advocate and patent attorney since 1991 handling a wide range of IP, IT and Technology matters including IP management issues, strategic advice on IP clearance, acquisition, and enforcement. Ranjan has worked in-house and in private practice including a stint with international IP practice heading its India operations. In 2019, Ranjan was invited to join the INTA, Board of Directors. Ranjan has been ranked as a leading IP practitioner by various publications including WTR 1000, IP Star (Managing IP), WIPR leaders, Who’s Who legal, Asia IP experts and others. Ranjan is regularly invited to speak by Universities and chamber of commerce on IP issues. He has authored several articles and papers on key IP issues that are published by IP magazines and blogs such as IAM, World Trade Mark Review, Bloomberg, Lexology, IP Kat etc. Daleep is an Associate Partner at RNA, Technology and IP Attorneys with a demonstrated history of working in the law practice industry for over 12 years. He is skilled in IP Management and Strategy, Trademarks- Clearance, Protection, Opposition and Enforcement, Copyrights, Domain Name Disputes, and IP Crimes in Digital Space. He regularly appears and argues cases before various judicial forums, including the Trademarks Registry, the IP Appellate Board and the courts. Daleep has been a guest speaker at various IP awareness workshops, trainings and academic institutions. Daleep also has a flair for writing and has contributed numerous articles on IP laws and issues for several well-known electronic and print publications. Abhishek Nangia Partner RNA, Technology and IP Attorneys Professional Qualification: LL.B. (Hons.) from Amity Law School, Delhi Practice focus Abhishek is a Partner with RNA, Technology and IP Attorneys. He has over 14 years’ of post-qualification experience and joined RNA in 2009. Abhishek advises clients on a wide range of IP matters, including brand clearance, oppositions, cancellations, infringement proceedings and domain name disputes. Abhishek regularly appears before various forums including the Intellectual Property Appellate Board, District and High Courts, Trademarks Registry and the Registrar of Companies. Abhishek has been invited to address Indian Custom officials, police officials, students at law colleges and school, Chartered Accountant/Company Secretaries on Anti-Counterfeiting, IT Act and emerging IP issues in cyber space. In 2017, Abhishek was selected to attend ‘Training Course for IP Protection Lawyers’ held in Tokyo (from 19th July to 4th August). Abhishek has written articles on various topics of IP law which have been published in print and electronic media, including the ENISHI Magazine, published by Japan Patent Office. Membership Delhi High Court, Bar Council of Delhi, International Trademarks Association (INTA) and Asian Patent Attorneys Association (APAA)

18 August 2021

Intellectual Property

Court pulls up petitioner for making false claims

Cattle Remedies (Cattle), registered proprietor of the mark UTEROTONE had filed rectification proceedings before the Intellectual Property Appellate Board (IPAB) for removal of the mark UTROTON in the name of Nishi Gupta (Nishi). IPAB ruled in favour of Cattle, and cancelled Nishi’s registration for UTROTON.

04 August 2021

Tax & private client

Goodwill is not a depreciating asset

Under the India Income Tax Act, 1961 (IT Act), there are prescribed depreciation rates for different categories of assets, called the 'block of assets' – which contain both tangible and intangible assets. The rates are applicable on the written down value (WDV) of the block of assets. As regards intangible assets, the IT Act provides for a list of such intangible assets on which depreciation can be claimed. These are know-how, patents, copyrights, trademarks, licences, franchises or "any other business or commercial rights of similar nature," i.e., the residual category of intangibles. The 'goodwill' is not explicitly covered in this list.

19 July 2021

Intellectual Property

Crisis of covid vaccines and role of patents

India is under the second wave of covid-19 facing a major public health crisis. There is a rush among people from all walks of life to get vaccinated as the Government has opened the vaccination for 18-44 years (until now, vaccination was only being provided to 45 and older). This immediately brought into focus India's readiness to vaccinate a large percentage of the population, stock available, and the price of vaccine.

02 June 2021

Intellectual Property

Deception of greenwashing

Today, the young consumer's expectations from the brands they buy are beyond good quality products.   The millennials globally expect brands to do good in the world.   The consumers hope that the brands resonate with their values and care about the environment, produce products responsibly without harming natural resources, and at the same time uplift the communities.  And they aren't afraid to call for brand boycotts as part of the modern cancel culture. Therefore, the companies make every effort to align their brands with the consumer's expectations.   Sadly, some of these efforts are not genuine.

16 June 2021

Intellectual Property

India remains on ustr 301 watch list

The Office of the United States Trade Representative (USTR) recently released Annual Special 301 report on the adequacy and effectiveness of U.S. trading partners’ protection and enforcement of intellectual property rights. As part of this exercise, USTR reviewed more than one hundred trading partners for this year’s Special 301 Report and placed thirty-two (32) of them on the Priority Watch List or Watch List.

07 May 2021

Intellectual Property

Tanman is not similar to atmantan

Bombay High Court heard an appeal against the order of the Ad-hoc District Judge-6, Pune, in a trademark infringement and passing off dispute, dismissing the injunction application filed by the Plaintiff. The Plaintiff, Sharmilee Kapur and Ors (SK) filed the suit before the District court against the Defendant, Kiran Bharekar (Kiran) alleging trademark infringement.

29 April 2021

Intellectual Property

Court rejects lack of jurisdiction plea in a quia timet action

A short but interesting point regarding jurisdiction comes up for consideration in the instant dispute between two entities in the healthcare industry. The Plaintiff, Cadila Healthcare Limited (Cadila) filed the passing off action against the Defendants, Uniza Healthcare LLP and another (Uniza) before the Delhi High Court, to safeguard its rights in the mark ZYCLEAR and restrain Uniza from dealing in pharmaceutical products under the name ZACLEAR. 

19 April 2021

Intellectual Property

Contradictory ‘use claim’ in the trademark application leads to adverse inference

The trademark AMPA is the bone of contention in the instant dispute between two entities dealing in bicycles. The Plaintiff, Jagmohan Ratra (RATRA) filed the suit before the Delhi High Court against the Defendants, Ampa Cycles Private Limited (ACPL) and another alleging passing off. ACPL has filed application to set aside the injunction granted in favour of RATRA which is being considered by the court. RATRA in the suit contends: He is the proprietor of the firm, M/s Four Diamonds, engaged in manufacturing and selling bicycles, tricycles, prams, baby rider bicycles, etc. under several brands, one of which is AMPA. The firm was established as a partnership firm in 1983 having two partners, Jagmohan Ratra and Sh.Hari Dutt Sharma. AMPA trademark and logo was coined by RATRA and adopted by the partnership in 1991. The partnership firm M/s Four Diamonds was dissolved vide a dissolution deed in 2003. RATRA continued the business under the trading name M/s Four Diamonds as sole proprietorship concern. Ampa Bikes Private Limited was incorporated in March 1992. In 1995 the company filed trademark application for the mark AMPA claiming use since 1992, however, the application was abandoned in 2002. As part of settlement, it was agreed RATRA could use the AMPA mark for cycles up to 14 inches and Ampa Bikes Private Limited was allowed to use the mark for all cycle models above 14 inches. In 2013, Ampa Bikes Private Limited was struck off from the Register of Companies and thus, ceased to exist. RATRA continued to use the mark AMPA uninterruptedly since its adoption in 1991 initially through the partnership firm, M/s Four Diamonds and thereafter, as a proprietorship concern. In 2019, RATRA applied for registration of the mark AMPA claiming use since 2011 which is pending. The mark has gained reputation and goodwill on account of extensive use, sales and marketing. In 2020, RATRA became aware of ACPL manufacturing and marketing cycles under an identical mark and logo AMPA. One of the Directors of ACPL had in the past dealt with RATRA and was aware of the prior use of the mark by RATRA. ACPL’s adoption of an identical mark is dishonest and to ride on the goodwill and reputation of RATRA’s mark garnered over three decades. ACPL in the written statement contends: The trademark "AMPA" was coined and designed by Sh.Hari Dutt Sharma. Further to the dissolution of the partnership Sh.Sharma continued to use the trademark AMPA. In 2013, Ampa Bikes Private Limited through its authorised signatories, Hari Dutt Sharma, Ms.Nishtha Sharma and Sh.Ajay Kumar Bawa entered into an agreement for assignment of the trademark AMPA and it was decided that Sh.Ajay Kumar Bawa will have all the rights to manufacture and sell under the trademark AMPA. In 2013, Ampa Bikes Private Limited was struck off from the Register of the companies as there was no business in the said company. In 2018, Sh.Ajay Kumar Bawa along with Sh.Anmol Bawa decided to manufacture cycles/tricycles/bikes under the brand name AMPA being the bona fide user of the brand AMPA and dealing in the cycle business since many decades. In 2018, ACPL was incorporated and they applied for the mark AMPA with the Trademark Registry in 2018. The applications were filed in 2018 and 2020 on a ‘proposed to be used basis’. RATRA with dishonest intention and to extort monies has filed a frivolous trademark application for the mark AMPA claiming its user since, 2011 which is inconsistent and the invoices filed appear to be forged. The court after considering the pleadings, documents, arguments and case laws held: It is an admitted fact that AMPA mark was coined by the partnership firm, M/s Four Diamonds or one of its partners in the year 1991. Thereafter, in 2003 the firm was dissolved and Sharma exited from the partnership firm and took charge of the company Ampa Bikes Pvt. Ltd. As per the terms of settlement RATRA was entitled to use the mark AMPA in relation to cycles below 14'' while Ampa Bikes Pvt. Ltd. was allowed to use the mark AMPA for models of more than 14''. It is further admitted that in 2013, Ampa Bikes Pvt. Ltd. was struck off from the Register of Companies and ceased to exist. The averment that Ampa Bikes Pvt. Ltd. through its authorised signatory, Sharma assigned the trademark AMPA to Ajay Kumar Bawa and he would have all rights to manufacture and sell products under the trademark AMPA is disputed. RATRA has contended that the deed of assignment is a fraudulent document created as an afterthought to justify use of the trademark AMPA by ACPL. ACPL incorporated in 2018 have filed three trademark applications, one in 2018 and two in 2020, all of which are on a ‘proposed to be used’ basis. Thereafter, to claim that this was done based on an erroneous advice and that there is prior user prima facie appears to be an afterthought. Thus, at this stage without leading evidence, ACPL’s plea cannot be accepted. On the other hand, RATRA has filed invoices dating back to the year 2011 and the trademark application also claims user from 2011. In light of the above, court ruled in favour of RATRA holding that it had made out a prima facie case, confirmed the injunction in his favour and dismissed the application filed by ACPL.

19 April 2021

Intellectual Property

Prior use turns the scales in favour of cremo

Two entities dealing in milk and dairy products vie for rights in the mark/name CREMO before the Punjab & Haryana High Court. The Plaintiff, Cremo S.A., (Cremo S.A), filed the suit before the District Court, Faridabad (Haryana), against the Defendants, Cremo Netureal Milk LLP & another (CNML), alleging passing off. Cremo S.A., a swiss company, sought to restrain CNML from selling products under the name 'Cremo' or dealing in any manner under the trademark 'Cremo' and/or 'Cremo Netureal Milk LLP'. 

25 March 2021

Intellectual Property

Government moves in to regulate ott platforms over “lax content moderation”  

OTT platform and digital media has picked up a fast pace in India especially with internet penetration reaching over 50% of the Indian populace which in sheer population numbers works out to staggering (more than) 700 million. Hence, the very concept of OTT is revolutionary in terms of its audience reach. 

09 March 2021

Intellectual Property

Accountability of social media against its misuse and abuse

India, in recent years, has seen a massive surge in the number of internet users and people accessing social media platforms. The pandemic and the ensuing lockdown have doubled these numbers as more and more consumers turn to social media for interaction with their friends and families. At the same time, the digital explosion has given rise to concerns, namely lack of transparency, accountability, and users' rights related to digital media. 

09 March 2021

Intellectual property

A bill to abolish ip appellate tribunal. Is it a case of one step forward, two steps backward!

A move that took many (if not most) IP practitioners and stakeholders by surprise, a Bill titled “The Tribunal Reforms (Rationalisation and Conditions of Service) Act, 2021” was introduced on 11th February, 2021 in the Lok Sabha (lower house of the Indian Parliament). The Bill proposes to abolish “certain tribunals and authorities and to provide a mechanism for filing appeal directly to the commercial court or the High Court, as the case may be”. The apparent reason for such an exercise is that “analysis of data of the last three years has shown that tribunals in several sectors have not necessarily led to faster justice delivery and they are also at a considerable expense to the exchequer”. The Bill further states in its objects that the Tribunals that are proposed to be abolished in this phase are of the kind which handle cases in which public at large is not a litigant or those that neither take away any significant workload from High Courts - which otherwise would have, in any case, adjudicated upon such cases -nor provide speedy disposal. An additional argument in favour of removal of the Tribunals is that many cases do not achieve finality at this level and are litigated further upto the High Courts and Supreme Court, and especially those with significant implications. Therefore, these Tribunals only add to another additional layer of litigation. Rather, having separate Tribunal/s require administrative action in terms of filling up of posts and such other matters, and any delay in such action/s further leads to accumulation of backlog of cases. Hence, reducing the number of Tribunals shall not only be beneficial for the public at large, it will also reduce the burden on public exchequer - while at the same time, also address the issue of shortage of supporting staff of Tribunals and related infrastructure.

16 February 2021

Intellectual Property

Ufo clothing licensee restrained from use of acronym “under fourteen only” (ufo) 

The Plaintiff, UFO Contemporary, INC, filed action against the Defendants, Creative Kids Wear (India) Pvt. Ltd. and Ors, alleging trademark infringement and passing off to restrain the latter from using the mark UFO in relation to manufacturing and marketing of clothing. The suit is a result of falling out between the parties on use and ownership of the mark UFO.  The Plaintiff sought a preliminary injunction restraining the Defendants from using the mark UFO.

10 February 2021

Intellectual Property

Court frowns upon bad faith adoption

Court frowns upon bad faith adoption ‘Thirumala’ a sacred town in Chittor district, Andhra Pradesh famous for Lord Venkateswara’s Temple https://en.wikipedia.org/wiki/Venkateswara_Temple,_Tirumala  is being subject of trademark tussle between two entities dealing in milk and dairy products. The Plaintiff, Tirumala Milk Products Private Limited (TMPL), registered proprietor of the mark  filed the suit at the Madras High Court against the Defendants, Swaraj India Industries Limited (SIIL) and Ors, alleging trademark infringement, passing off and other ancillary reliefs. TMPL seeks to restrain SIIL from using the trademark 'Thirumala'/'Thirumala Milk' or any other marks deceptively similar including 'Tirumalaa Daairy' . The High Court granted an interim injunction in favour of TMPL which is challenged by SIIL.

02 February 2021

Intellectual Property

Snapdeal has no criminal liability for the sale of suhagra-100

The ruling of the single judge of Karnataka High Court holding that an e-commerce marketplace being an 'intermediary' is not liable for any action or inaction on the part of a vendor/seller has come as a significant relief for e-commerce portals and their directors/officers. The court thus proceeded to quash criminal proceedings against the Directors of e-commerce portal, Snapdeal.

01 February 2021

Intellectual Property

A roundup of key ip developments of 2020

As we begin a new year, there is optimism and hope given the unprecedented challenges businesses and consumers faced during 2020. Our post provides a round-up of key developments in legislative, regulatory, and judicial arena that highlight the Indian IP environment remains vibrant.

20 January 2021

Intellectual Property

Celebrities beware- think before you endorse a product!

In an interesting case, District Consumer Redressal Forum in Kerala (CC 345/12) recently passed an order penalizing the Malayalam movie actor Anoop Menon https://en.wikipedia.org/wiki/Anoop_Menon  and the manufacturers of Dhathri Hair Cream https://www.dhathri.com/hair-protector/p/15327821 for making false claims in an advertisement issued in 2012. The movie star and Dhathri were ordered to pay compensation to the complainant and a fine imposed on the medical store that sold the hair cream. The case was based on the old Consumer Protection Act, which has been revised to make celebrities responsible while taking up brand endorsements. Interestingly, the new Consumer Protection Act of 2019, which came into force on July 20, 2020, has express provisions for fixing liability on the endorsers. It also provides for imposing fine which may extend to ten lakh rupees (approx. USD 14,000) and up to fifty lakh rupees (approx. USD 70,000) for every subsequent contravention. The Authority may further prohibit the endorser of a false or misleading advertisement from making endorsement of any product or service

11 January 2021

Intellectual Property

Court frowns upon suppression of material facts

Questsfor personal gains have become so intense that those involved in litigation donot hesitate to take shelter of falsehood and misrepresent and suppress factsin the court proceedings. Materialism, opportunism and malicious intent haveovershadowed the old ethos of litigative values for small gains.

11 November 2020

Intellectual Property

Securing your ip assets in a business transaction

As Covid19 has created business uncertainty, the M&A activity, in general, has slowed down but still there are companies/businesses that are tapping crisis opportunity to make strategic acquisitions. We outline a few commonly asked questions from IP perspective in a transaction involving transfer of IP assets.

21 October 2020

Intellectual property

Isps and direct selling entities at loggerheads over us$ 1.7 billion opportunity

ISPs and Direct Selling Entities at loggerheads over US$ 1.7 billion opportunity The Direct Selling Entities ("DSEs") Amway, Oriflame and Modicare that have a specific business model are embroiled in dispute with leading e-tailers, Amzon, Snapdeal, Cloudtail alleging the sale of their products on e-commerce platforms are unauthorized and without their consent. The Single Judge found in favour of DSEs and passed a common order in interlocutory applications restraining Amazon, Cloudtail and Snapdeal   from selling the goods of the DSEs. The said order was challenged by way of six appeals (to the Division Bench), which were heard together as they involved a common question of law. The post briefly summarizes the Single Judge order and focuses on Appellate Bench order that took a completely different view on Direct Selling Guidelines ("DSGs") and ISP liabilities. Indian direct selling industry accounts for INR 13,000 crore (approx. US$ 1.7 billion) business and directly or indirectly employs around 5.7 million people as of the FY 2018-19. Thus the ruling has legal and economic ramifications.

24 May 2020

Intellectual property

Well known marks in india

  FAQ's on Well-Known Trade Marks 1)   Are well known marks protected in India? Yes, well known marks are protected in India. There are specific provisions under the Trade Marks Act, 1999 and procedure to record well known trade marks in India is provided under the Trademarks Rules, 2017 enacted under the Act, 1999. Prior to March 2017 there was no procedure in place to record well known marks in India though they were protected under specific provision (Section 11(6)) of the Trade Marks Act.

21 April 2020

Intellectual Property

Rajasthan high court holds neeraj/niraj not similar to nirab

Will difference in pronunciation in certain parts of the country leading to phonetic similarity be sufficient to grant an order of injunction? This is the crux of the issue in the instant appeal before the Division Bench (two judge bench) of the High Court of Rajasthan. The Plaintiff, Deepak Vegpro Private Limited (Deepak) filed the suit before the Commercial Court no.1, Jaipur, alleging trademark infringement and passing off to restrain the Defendant, Ritika Vegetable Oil Private Limited (Ritika) from using the mark NIRAB in relation to same products. The district court granted an injunction and aggrieved by the injunction order, Ritika has filed the appeal before the DB of the High Court which is under consideration.

31 March 2020

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