Saturday, February 18, 2012

Trade Mark Dilution

Traditionally to prevent someone from using a trademark, one had to claim that it was causing confusion with an already existing mark. i.e. the ‘misrepresentation’ claim. However, now days even the Trademark dilution view is given merit. Trademark dilution is a claim which the owner of a famous trademark can make to forbid others from using a mark that reduces the value or distinctiveness of the famous mark.

Imagine if there was a watch being sold with the trademark ‘PEPSI’ or mineral water with the mark ‘ROLEX’. Now, there would obviously be no confusion that the mineral water was  not associated with the ‘ROLEX’ brand of watches. But if people start ROLEX mineral water, ROLEX restaurants, ROLEX publishers then the distinctive value of ROLEX brand will diminish. The exclusiveness and excellence of the brand will be associated with all the other good or services using the trademark ‘ROLEX’.

Victoria's Secret Victor's little secret trademark dilution infringement
It is believed that it was the case V Secret Catalogue Inc v. Moseley, 54 U.S.P.Q.2d 1092 (The Victoria’s Secret Case) which made the U.S. Government feel the need for a Trademark Dilution legislation, which gave rise to Trademark Dilution Revision Act (TDRA) of 2006, several provisions of the EU Trademark Harmonization Directive of 2008 and

Thursday, February 16, 2012

Law Students Today, Leaders Tomorrow...

Barack Obama meme studied at Harvard Law School He was the first black President, not only of USA,  but also of the Harvard Law Review
Barack Obama studied at Harvard Law School
He was the first black President, not only of USA,
but also of the Harvard Law Review

First published on LegallyIndia

The only difference between politics in a college campus and politics in the outside world is that the college politics is much more interesting and maybe a bit more subtle. However, those students that are actually involved in college activities take it as seriously, as if the nation’s fate depended on it. But what gives them that passion? Is it love for the college? No, that’s not it. It’s a matter of standing by your principles.

Now, students of engineering or medical or any business course are not really into college activities either because they are felt to be unproductive, useless from a career point of view and rather time consuming. But it is in law colleges that we truly see

Saturday, February 11, 2012

The Enercon Patent Case

Windmill enercon patent law
History: A  Share Holder Agreement (SHA) allotted 56% shareholding of Enercon India to Enercon GmBH, while the remaining 44% went to the Mehra Group. Enercon GmBH filed a petition before the Company Law Board in the year 2007 alleging that the Mehra Group, was guilty of systematic concealment state of affairs of the company, financial mismanagement, non-payment of royalties etc.. Enercon GmBH therefore wanted the CLB to issue directions for the transfer of the remaining 44% to Enercon GmBH. The Board of the company was controlled by the Mehra Group despite the fact that Enercon GmBH had a majority share-holding Enercon India, started filing revocation petitions against Dr. Wobben’s patents. Once the company was rid of the patents it would have no IPR rights to assert in India.

IPAB: Dr. Aloy Wobbens claimed in a misc. petition that the attorney who had signed the revocation petitions was not authorized to do so because of earlier CLB orders. The IPAB after hearing the issue had dismissed Dr. Aloy's claims and continued to consider revocation petitions

Madras High Court: After an appeal the Madras High Court agreed with the IPAB's orders. In its order the Court also stated: "The Tribunal is requested to take up the Original Revocation Application along with the miscellaneous petition and hear and dispose of the same preferably within a period of three months from the date of receipt of a copy of this order". The Madras High Court's Judgment can be found here 

Delhi High Court:  Dr. Wobben appealed before Delhi High Court. The Delhi High Court had heard extensive arguments on the point of jurisdiction from both Dr. Wobben and Enercon India Ltd. before reserving the matters for judgment. However, before the Court could deliver judgment, Dr. Wobben had for unclear reasons filed withdrawal application in each of the three appeals.

Justice Gita Mittal
Justice Gita Mittal
Justice Gita Mittal gave the judgement,  "However, it cannot be denied that valuable judicial time has been expended on hearing prolonged arguments on the respondents" preliminary objection which were raised at the first instance with regard to maintainability of the three writ petitions before this court. The prayer of the respondents for award of costs appears to be justified".

The plaintiff would have to pay costs of Rs. 50,000 each, to Enercon India Ltd. and the Government of India in each of the 3 appeals filed by him i.e. Rs. 1 lakh an appeal. The case continued till January 2010 when it was dismissed because of claiming similar remedies to those being sought by the IPAB. Delhi High Court's Judgment can be found here

Current: Among the nine patents that have are under consideration in the IPAB, Dr. Aloy himself admitted in European Courts that two of the patents were invalid. The European Court's Judgments can be found here. Dr. Wobbin had submitted to the IPAB some amendments to the patents. As per Section 31 of the Evidence Act, 1872 although certain admissions may not be conclusive they will still stop the person from changing his stance later. Therefore the amendments were rejected and both patents have been revoked.

Labels: amrita pritam, dowry, female literacy, feminist workers, indian feminism law, infanticide, sex discrimintaion, smriti patel, successful indian women, virginia woolf, women freedom fighters, 

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Sunday, February 5, 2012

No more 'Pirates of Spain'

hot Penelope Cruza Pirates of Caribbean spain anti piracy laws
Penelope Cruz
 Pirates of Caribbean
Last month the Spanish government fully approved their pending Sustainable Economy Law (LES), legislation designed to stop Spanish Internet users from accessing file-sharing sites. The law has been fully approved only two weeks after the conservative 'Partido Popular' government came into power last December.

The decision of which sites will be blocked will lie with the Intellectual Property Committee. This panel will have the power to take action against those providing illegal content and entities providing infrastructure, all within 10 days of a complaint by right-holders.

In addition to the WikiLeaks cables, Spanish newspaper E'l Pais' obtained a letter from the U.S. ambassador to Spain expressing "deep concern" over the country's failure to enact the law and suggesting that economic punishment may be in order. From this it can be seen that the Spanish Government was somewhat pressurized to pass the law by the U.S.

Spanish pop star laughing Shakira hot listening to music on head phones anti piracy illegal free download of shakira songs,
Spanish pop star Shakira
According to the rights managment entity EGEDA, Spain was responsible for some 20% of worldwide illegal downloads. 98% of all songs were downloaded illegally. The Spanish entertainment industry suffered a loss of over £4.3 billion in the first six months of 2010.

Tags: Spanish Anti piracy Law, Spanis Illegal Downloading, SOPA, PIPA, EGEDA, intellectual property SOPA PIPA, IPR, penelope cruz pirates of spain, shakira listening to music, Spanish anti piracy, spanish illegal downloading laws, Sustainable Economy Law, vikrant shetty, 

Thursday, February 2, 2012

Liability of Intermediaries in Infringement

Rowling Harry Potter John Doe law
J. K. Rowling
Under the Information Technology Act, the appropriate authority for blocking websites is the Department of Information & Technology (DIT). The IT Rules, 2009(relating to ‘Procedure and Safeguards for Blocking for Access of Information by Public’) authorize the DIT to block websites and confers investigation powers for reasons connected with national security or public order or incitement of any unlawful activity as laid down in Section 69A of the IT Act. The format of the form that should e filled Rules under section 69A of the Information Technology  (Amendment) Act, 2008, schedule-I.

Rule 16 of  Rules under section 69A of the Information Technology  (Amendment) Act, 2008 states that "In the event of approval of the Request by the Secretary, Department of Information Technology, Ministry of  Communications & Information Technology, Government of India, under Rule (14) and Rule (15), the Designated Officer will direct the Intermediaries to block the offending information generated, transmitted, received, stored or hosted in their computer resource for public access within the time limit specified in the direction."

Exemptions from liability of intermediary is given u/s 79 of the IT Act: The intermediary is exempted if the intermediary does not:- initiate the transmission, select receiver of transmission, modify the information in it. If the intermediary does not remove the content immediately after notification or if it is found that the intermediary had a malafide intent and has not performed reasonable due diligence, the intermediary is liable to be held as an abettor of the infringement.

Under the Act “intermediary”, with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, webhosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes;’

John Doe:-
The term 'John Doe Injunction' (or John Doe Order) is to describe an injunction sought against someone whose identity is not known at the time it is issued:
The first time this form of injunction was successfully obtained since 1852 in the United Kingdom was in 2005 when attorneys acting on behalf of JK Rowling and her publishers obtained an injunction against an unidentified person who was trying to sell chapters of a stolen copy of an unpublished Harry Potter novel to the media

John Doe law Speedy Singhs
Speedy SInghs
India: John Doe order had been passed by the Delhi High Court for the movie Speedy Singhs, starring Russell Peters. The Delhi High Court also passed two other John Doe orders in  2011 for the movies Singham  and Bodyguard. Thus, John Doe orders are becoming increasingly common in the Indian film industry and seems to be working to at least some extent in reducing piracy. 

(Also read about the SOPA and PIPA issue)

Labels: government law college, Harry Potter, indian legal blogs, infringement, intermediaries, IT Act, John Doe, John Doe injunction, John Doe order, mowing the law, mowingthelaw, vikrant shetty, 

Wednesday, February 1, 2012

Recent Important IPR Judgments

(Also see the article on The Importance of IPR in the Business World)

·         Yahoo Inc. v. The Assistant Controller of Patents & Designs, & india ltd.
Original Appeal No.: OA/22/2010/PT/CH/9507
Yahoo!, full logo, trademark, trademark infringement, buck, patent
Yahoo! logo

An invention 'Buck' which an be used to refine searches on the internet was denied patent because of section 3 (k) of Patent Act which states that business methods are not patentable. The specifications given in the application described its economic significance in e-commerce and therefore it was considered as a business method. Secondly, Rediff had used abovesaid method but Controller held that use of invention on internet amounts to public knowledge & prior use. The case was dismissed.

·         UMG Recordings In. MGB NA LLC LLC MBG UK v. Shelter Capital Partners LLC LP LLC
U.S. 9th Circuit

Veoh had a network on which videos can be shared. They had taken precautions against copyright infringement. To upload one had to register and accept to abide with terms of PTC agreement and agree not to upload videos that infringe copyright. Over 60,000 videos including some of UMG's had been removed. On receiving notices the videos were removed immediately. However, in 2007 UMG filed a case against Veoh for facilitating infringement. (Also see the Napster case)

 Held: Merely hosting a category of copyrightable content, such as music videos, with the general knowledge that it can be used for infringement is insufficient to meet requirements of 'abetting infringement'

·         L'oreal v. Dushyant Shah
L'oreal paris, scarlett johansson in bathtub, modelling, trademark infringement, torreal, india
L'oreal paris trademark with
Scarlett Johansson in background
CS (OS) 600 OF 2007,  Delhi High Court

Section 134 (2) was given wider scope so that 'carries on business' refers to even a subsidiary office of the plaintiff that carries on business unlike the construction of 'carries on business' in Section 20 of CPC. Plaintiff's 'L'OREAL' trademark was held to be structurally and phonetically similar to 'TORREAL'/'INSTITUTE TORREAL' which is proposed to be used on similar products. Therefore, Defendant restrained from using similar marks with no order as to costs

·         St.Stephen's College v. St. Stephen's College Alumni Association & Ors.
CS(OS) 2364/2011, Delhi High Court

Former students of St. Stephen's college exercised fundamental right Art. 19(1)(c)i.e. freedom to form association and started 'St. Stephen's College Alumni Association'. Plaintiff claims it to e passing off since it is not an official or college approved association. The Defendants were restrained from using the official crest on their website, using the domain name 'http://ststephensalumni.Companyin.' and using the name 'St. Stephen's College Alumni Association'. They are entitled to use the name 'association of old Stephens' provided they display a disclaimer that it is not official/approved/recognized association of the college.

Labels: infringement, IPR, Jan 2012, l'oreal torreal trademark, latest Indian Intellectual Property Cases, rediff, st. stephen's college alumni website case, UMG Recordings, yahoo patent buck patentable,