The world's most popular fast food chain McDonald's has lost an eight-year legal battle to prevent a local Malaysian Indian restaurant 'McCurry' from using the "Mc" trademark in its name, with the country's highest court dismissing its plea. Malaysia's Federal Court, which ruled against McDonald's application also ordered the American food chain to pay RM 10,000 (Rs 130,000) cost to 'McCurry Restaurant (KL) Sdn Bhd'. "Our keen observation is that the questions posed by McDonald's were not properly framed and the court should dismiss the leave application," Chief Judge of Malaya Arifin Zakaria said. Yesterday, the court had adjourned the case after finding questions raised by McDonald's lawyers unclear and asked that they be rephrased.
McDonald's, which has 185 outlets in Malaysia, filed a leave application in the apex court to challenge the Court of Appeal's April 29 ruling which said it was wrong to assume that McDonald's had a domination on the use of the prefix "Mc". Earlier, A High Court had ruled in favour of McDonald's but McCurry took the fight to the Court of Appeal. During the court hearings, McCurry said McDonald's could not claim monopoly or exclusive rights to the use of "Mc" as that prefix was broadly used around the world as surnames, particularly by people of Scottish origin.
SC seeks reply from Montblanc in trademark infringement case
The Supreme Court has issued a notice to German luxury brand Montblanc Simple GMBH on a petition filed by a Mumbai-based firm, which has been charged of infringing on the former's trademark. Add Corporation Ltd, which sells its pens under the brand 'ADD,' has challenged the Delhi High Court order, which restrained it from selling and manufacturing pens under the trademark Add Gel Spacewalker and Add Gel Goldtop. The High Court's order came after the German major alleged that Add Corp had infringed on its registered trademarks in India--'Starwalker', 'Miesterstruck' and '3-ring device.'
A Bench headed by Justice Markandey Katju sought reply from Montblanc after Add Corp approached the apex court for a stay on the High Court order on the ground that it was a prior user of its trademark Spacewalker and there was a vast difference between the products of the two companies. Stating that Montblanc cannot claim its 'three-ring device' as a trademark so as to hold back it from manufacturing and selling its pens under 'ADD' brand, Add Corp said its range of pens sold were priced at Rs 200 and Rs 340, whereas the Montblanc's Starwalker range sold under trademark Meisterstick and cost around Rs 14,250. Even the mode of payment and packaging, appearance and the customers were different and there was absolutely no likelihood of any confusion between the two products, it said.
Delhi HC directs Pepsico India to remove logo
The Delhi High Court directed the cola giant, PepsiCo India, to remove the picture of a snow-capped mountain from its packaged mineral water product Aquafina as it gives a misleading impression that the product is straight from the mountains.
A bench comprising Justices Mukul Mudgal and Manmohan directed the PepsiCo to remove the picture snow-capped mountain from the label of Aquafina within six months.
The court also directed to add the phrase ‘purity guaranteed’ as per the Bureau of Indian Standard (BIS) to its label.
The picture suggested that the packaged mineral water, being manufactured and marketed by the company, had its origin in the mountain which created a misleading impression in the minds of public, the court said.
The court passed the direction on a petition filed by the BIS challenging a single bench’s order of the court, which had allowed the company to use its logo comprising the mountain’s picture on its water product.
Delhi High Cour refuses Hoffman relief in cancer drug matter
The Delhi High Courthas refused any relief to the Swiss pharma Company 'Hoffman La Roche' ,which sought restraining 'Cipla' from manufacturing and selling anti-Cancer drug 'Tarceva' stating that it was a violation of their patent's right.
Justice S Ravinder Bhat passed an interim order allowing 'Cipla' to continue making the drug as there is a huge price difference and would effect an enormous number of patients.
The court directed the Cipla company to maintain accounts of sales figures for calculation of damages to be awarded to 'Hoffman' if they succeed in the present case.
Taking note of the huge price difference between the products of two companies, the court said "the drug should be available in the market as many patients would be effected. The balance has to be titled in the favour of the people as compared to the Company's interest, the court said.
The Swiss company had approached the Delhi High Court after it found that Cipla was planning to launch a generic version of the drug, Tarceva(Erlotinib), in India and export the same to various countries.
The tablet formulation of "Erlotinib" is sold by 'Roche' under the trademark and name 'Tarceva' claiming to be benificial to the patients suffering from advanced or metastatic non small cell lung cancer.
The Swiss company had applied for grant of patent in respect of the drug and its process which was granted in February 2007 by the Controller General of Patents, Trademarks and Designs, New Delhi and any use by other companies is violation of their rights, their lawyer said.
Cipla Company, however contended that this is a necessary drug and like most countries, an urgent licence can be issued for manufacture of the essential drugs. In India not many people can afford the Swiss formulation therefore the need to make the drug which was less in price was much in demand.
Important to educate judges on IPR: Justice Raveendran
9 June 2007
Judges dealing with cases relating to Intellectual Property Rights (IPR) should acquire complete knowledge and skills on dealing with such cases as they are different in nature, a Supreme Court judge has said.
Inaugurating a 'Judges' Round Table on IPR', organised jointly by the Karnataka Judicial Academy, FICCI and Christ Law College, Justice R V Raveendran said it was important for the judges to know the 'historical importance' of IPR.
"You have to change your concept, change your mindset while dealing with different cases. You have to know the background of the IPR and when violated, its repercussions on the holder of the IPR, the economy and the nation as a whole. The types of evidences can be different. Clear knowledge in the field of Information Technology is important. Only then you can act promptly. If general rules are applied, then the accused may get away," he stressed.
Stating that workshops could help judges in dealing with cases of special importance, Justice Raveendran said, however, the judges had to be careful about the talks given by 'experts' who might have their own 'axe to grind'.
Sounding a warning, he said judges should never conclude the view point of an expert as always right, or that reputed companies never commit a mistake. "They could try to influence the judges as they will be working for someone, who would have their own interests to safeguard. The judges should not let them influence them. Expert opinions are fine, but public interest should be given the highest priority," he said.
He said the Judges should always realise that the 'legal side' of a case was always more important than the 'technical side'. "Always keep in mind that you are the master when it comes to the legal side," he noted.
Trademark Applications Under Madrid System Show Rise
March 2, 2004 (Indlaw)
The World Intellectual Property Organization (WIPO) received 23,872 trademark applications in 2003 under a procedure that facilitates the process of seeking trademark protection in multiple countries, known as the Madrid System for the International Registration of Marks. This represents a 3% increase over 2002. The same year, 21,847 trademark registrations and 6,637 trademark renewals were recorded in the International Trademark Register. Germany topped the list of largest users for the eleventh year running with 4,999 international registrations (22.9%), followed by France (3,281 or 15%), Switzerland (2,204 or 10.1%) and countries of the Benelux-Belgium, Luxembourg, Netherlands (2,104 or 9.6%).
The International Trademark System, administered by WIPO, gives a trademark owner the possibility of having a mark protected in up to 74 countries by filing one application, in one language, with one set of fees, in one currency (Swiss francs). Thereafter, the international registration can be maintained and renewed through a single procedure. An international registration under the Madrid system produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the trademark office of a designated country, the protection of the mark is the same as if it had been registered by that office. The system provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of a single application.
The system is governed by two international treaties, namely the Madrid Agreement for the International Registration of Trademarks and the Madrid Protocol. The Madrid Protocol which became operational in 1996 introduced features, such as the ability to submit applications in English and extension of the period of notification of a refusal of trademark rights to 18 months, which made the system more flexible and attractive to a larger number of countries.
"In today's highly competitive marketplace, trademarks are an indispensable business tool which enables companies to effectively market and promote their products and services within both domestic and export markets" said Mr. Ernesto Rubio, WIPO Assistant Director General who oversees the International Trademark System. "WIPO's International Trademark Registration System is a cost-effective and efficient option for businesses seeking to protect their trademarks in multiple countries," he added.
Prospects for growth of the Madrid system are promising owing to recent developments. "The fact that the United States, the country with the largest trademark activity in the world, is now a member of the Madrid Protocol, the European Community's declared intention to join the system this year and the inclusion of Spanish as a working language means that many more businesses will reap the full benefits of this system," Mr. Rubio said.
The top twenty users of the Madrid System in 2003 were: Henkel (Germany), Novartis (Switzerland), Sanofi (France), Unilever (Netherlands), Janssen Pharmaceutica (Belgium), L'Oreal (France), Nestle (Switzerland), Bayer (Germany), , Siemens (Germany), ITM (France), Boehringer (Germany), Biofarma (France), Philips Electronics (Netherlands), BASF (Germany), Merck (France), Syngenta (Switzerland), Fiat (Italy), Kodak (France) and Bongrain (France) and Migros (Switzerland).
The United States of America joined the Madrid Protocol on November 2, 2003. Three other countries, namely Cyprus, Iran and the Republic of Korea, also acceded to this treaty in 2003, and one more, Croatia, did so in January 2004, bringing the number of countries party to the Protocol to 62 and total current membership of the Madrid System to 74.
In 2003, the European Community announced its intention to accede to the Madrid Protocol and the Madrid Union Assembly adopted amendments to the Madrid Regulations allowing for a link between the Community Trade Mark System and the International Trademark System to operate once the European Community joins the Madrid System. This is expected later this year.
In 2003, the Madrid Union Assembly also adopted Spanish as a working language of the Madrid Protocol, making the system more attractive, especially for Latin American nations, which are largely absent from its membership today. Trademark owners will be allowed to file international applications under the Protocol in Spanish as from April 1, 2004.
By the end of 2003, some 412,000 international trademark registrations, belonging to over 134,000 different trademark holders, were in force in the International Register. Those international registrations represented the equivalent of some 4.9 million national registrations, taking into account that, as an average, each international registration extends its effects to some 12 designated countries.(UNI)
Bottling company barred from using "similar" trademark
7 July 2007
The Delhi High Court has refrained a mineral water bottling company from using the somewhat similar name of an internationally-acclaimed scotch whisky, "VAT-69", for selling its products till the next date of hearing.
Justice Sanjay Kishan Kaul directed proprietor of S M Enterprises (manufacturers) Samar Agarwal and Noida beverages pvt ltd, the wholesale distributer of the company, to stop the manufacture, advertisement, or sale of any product by using the trademark "WAT 67" or any other trademark similar to the trademark of the petitioner.
The court issued notices to both the defendants to present their cases on November 6.
The Netherlands-based company, Diageo brands B V had approached the Delhi High Court seeking directions to the defendants for permanant injunction for using, manufactururing, selling, advertising their trademark Vat 69, in any form, or any other similar trademark which was deceptive or confusing by their name.
Counsel for Diageo company, Chander M Lall contented that their product was an international brand of the finest blended scotch whisky sold worldwide.
S M Enterprises, a Delhi-based company, which used their established trademark and manufactured packed drinking water with the trademark "WAT-69". The label placed on the water bottle has similar colour combination and design which gave an impression of being manufactured by the same company foreign company.
Mr Lall contended that the brand VAT-69 got its trademark first registered in 1989 by WIlliam Sanderson And Son Ltd and later on it was transferred to Diago Brands B V company, which filed this suit in the court.
Mr Lall contended that the brand VAT 69 was well recognised across the world. The company makes other alcoholic beverages by the brand name of Johnie Walker, Black and White, White Horse and Haig.
Any person or company using their name in any deceptive form can cause an unreparable loss to their company, advocate Lall said.
The company has also sought Rs 20 lakh as damages from the manufacturers for encashing a well-established trademark, and causing damages to them. (UNI)
HC refrains Chennai-based company from using Nike trademark
17 November 2007
The Delhi High Court has refrained a Chennai based company from infringing on Nike's trademark rights and directed it to stop selling its products using the brand name.
Justice S N Aggrawal refrained G R Fragrances from manufacturing, marketing and selling its products under the NIKE trademark till the disposal of the case.
Chander Mohan Lall, Manish Dhir and Kripa Pandit, lawyers for Nike International said infringement of the trademark by the defendant had lowered the global company's reputation.
Nike had approached the court to get an interim injunction for the use of their registered trademark by the Chennai based company.
The court gave an ex-parte injunction and refrained the erring company from using the trademark. (UNI)
Pepsi Moves Court Over Alleged IPR Violation
January 04, 2005 (Indlaw)
The Delhi High Court in an interim order today restrained the producers and director of 'Dil Maange More', the new Bollywood release featuring Shahid Kapoor and Soha Ali Khan, from licensing its international istribution/overseas release and video rights.
In an ex parte order, Hon'ble Justice Tirath Singh Thakur also restrained Fourth Wall Productions and Director of the film Anant Mahadevan from licensing the cable, video and internet rights or any other electronic rights by using the title 'Dil Maange More' which is similar to popular phrase "Yeh Dil Maange More" used by softdrink giant Pepsi in its commercial.
Pepsi approached the court, contending that it has exclusive copyright and trademark rights over the use of the phrase "Yeh Dil Maange More". The court said since nothing was on record to support the submission made by Pepsi's counsels, Rajiv Nayar and Pratibha Singh, regarding the transfer of rights in the offending film/cinemotograph to third parties, any direction regarding such transfer would have to be conditional.
"I am satisfied that a prima facie case for the issue of such a conditional direction has been made out. In the circumstance, I direct that pending further orders, the defendants (producers and directors) shall not transfer the rights in the offending film/cinemotograph in any of the modes in case the same have not already been transferred in favour of third party," Justice Thakur said
The court said the order would be operative till next hearing on February 2 and issued notices to the producers, director and Super Cassette Industries Limited, the company selling the music of the film.
Read more...
Read more...
