Monthly Archives: September 2010

Trademark tiff between Masculine drink makers and its challengers!

Just days after I bought my first bottle of the ‘must have’ “Knock-out” pepper spray, I came across a trademark dispute between the makers of this product and manufacturers of the beer brand “Knock-Out”. What came next were a series of interesting case laws, and evidences, and finally the verdict of Delhi High Court Justice Bhat.
The Case:  Skol Breweries v. Unisafe Technologies- alleged infringement, passing off and unfair competition.
The plaintiff (Skol) filed for a permanent injunction against the defendant (Unisafe), accusing the later to have been using its trademark “Knock-Out” inappropriately with an intent to harm Skol’s business. Skol is a beer manufacturer with the brand name “Knock-Out” and proved the brand’s existence since 1986, through yearly sales, and yearly expenditure.
Unisafe has a self defence pepper spray under the trademark “KNOCKOUT” in the market and also possess the domain name of its website as www.knockoutspray.com. To this Skol has raised objection on the grounds of wrongful intention to monetarily benefit from its trademark’s reputation. Also Skol alleged that their punch line of the alcoholic beverage “manliness and manhood” has been tempered with to get Unisafe’s punch line “if your daughter gets raped tomorrow, then who is to blame, you or her,” which according to Skol is a direct hit on its audience perception.
Unisafe in its defence stated that it had been using the trade mark since April, 2004, and Skol woke up suddenly after 2 years to realize the impact on its business. Also both the products belong to different class, and are available from completely different type of outlets, evading any chance of confusion. Another argument it gave was that as per Section 11 (sic 2 (1)(zg)) of the Trade Marks Act, 1999, “Knock out” is a common English word and thus cannot be used as a trademark, but, Unisafe’s use of the same word is justified as the product directly relates to its name, i.e. the spray will knock out any attacker. In course of the hearing, Unisafe, however, chose to withdraw and the case was accordingly heard ex-parte.
Presiding over the matter Justice Bhat cited many international and national cases such as, Schering Corporation v. Alkem Laboratories, Sona Spices Pvt. Ltd. v. Soongachi Tea Industries Pvt. Ltd. [2007 (34) PTC 91 (Del)] and First Computers v. A. Guruprasad [1996 PTC (16) 27 (Mad) (DB)], British Petroleum Company Ltd v. European Petroleum Distributors Ltd. [1968 RPC 54], Daimler Chrysler AG v. Alavi [2001] RPC 42 to clarify that “nobody can claim exclusive right to use any generic word, abbreviation, or acronym which has become publici juris.” SBL Limited v. Himalaya Drug Company [67 (1997) DLT 803 (DB)]. It was also stated that to get a trademark protection in such cases, the protection seeker should add a related prefix or suffix.
The Judgment of Sabel BV v. Puma AG [1998] RPC 199 case was also cited as the test of similarity or confusion i.e., “The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case .That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”
The court after considering all factors and evidences, judged that those evidences were not sufficient enough to decide in favor of either of the party. Justice Bhat dismissing the petition stated that, acceptance of Skol’s argument would mean accepting that it is “masculine” or “manly” to “indulge and persist in such unwarranted attentions towards women”! If pondered in the direction of connecting both the brands somehow, it will lead to an undertone meaning that drink Knock Out beer, become macho, attack a girl, and get knocked out by the pepper spray, which indeed will be a funny link!

Case No.  CS(OS) 472/2006, I.A. No. 3194/2006

Author – Ms. Ritika Kishore,

Patent Consultant, IIPRD.

The Author of the Blog can be reached: iiprd@iiprd.com.

Greif & Technocraft

The case is all about a mech. patent granted in Europe in 2008.  The Proprietor (Applicant) Grief International Holding B.V is holding the Patent EP 1467922 (‘922).  The Patent relates to an improved container closure plug having a unique gasket retaining feature.  Interestingly, Technocraft Industries, a company based out of India filed an Opposition in the year 2009 to revoke this patent.

Technical Aspects of the Invention:

The present invention in question provides a closure plug that overcomes the problem of sealing gasket gripping and looping persisted in the available art.  Particularly, the Independent claim of the present invention is given below:

1. A closure plug formed with

i) a cylindrical side wall having an external helical screw thread,

ii) a circumferentially enlarged rim,

iii) an angular gasket seat immediately under the plug rim; and

iv) a continuous circumferential radially outwardly extending gasket retaining lip below the plug gasket seat,

characterized in that:

v) the gasket seat flares radially outwardly and upwardly directly from the root of the gasket retaining lip to meet the plug rim.

From the above claim, it is clearly seen that the subject matter as described and claimed involves a closure plug that has a cylindrical side wall, an enlarged plug rim, an angular gasket seat and a gasket retaining lip.

Opponent Contention:

The Opponent Technocraft cited six new prior arts to destroy the novelty and the inventive step of the claim in question. But during the oral proceedings, Opponent majorly used D5: US 3, 255, 916 Patent (‘916) as his powerful weapon.  The opponent contested that the subject matter present in the ‘916 patent reads the claim elements (feature i – iv) of ‘922.  Opponent further argued that gasket seat 19 from the figures 1 – 3 of ‘916 patent shows a gasket seat that flares radially outwardly and upwardly from the root of the gasket retaining lip to meet a plug rim.  Opponent finally argued that the word “directly” in the characterized portion is not clearly defined in the specification (patent in question) and further suggested the figures 1 – 3 of ‘916 patent shows like the arrangement as claimed in the patent that is in question.

Also, Opponent further cited two prior arts D3 (DE 44 40 852) and D8 (US 4, 768, 677) and merely stated that these prior arts destroy the novelty of the claim in question.

Opponent further cited D8 ‘677 Patent for destroying the Inventive step of the Invention.

Further, the Opponent cited the prior art combinations (D8 + D10) and (D8 + D9) and argued that even if the claim is novel in view of the prior art, it cannot be based on the Inventive step.

[D9: US 1, 964, 603 & D10: DE 810, 413]

Oral Hearing (Feb, 2010):

It is noteworthy to mention that the Proprietor consistently, during the opposition, said that none of the prior arts describe and disclose a gasket seat that flares radially outwardly and upwardly directly from the root of the gasket retaining lip to meet a plug rim. Further, Applicant argues, it is not obvious to a person skilled in the art to combine the prior arts as argued by the opponent.

As a last bomb, the Proprietor in the oral proceeding clearly argues that flaring is the solution to the problem of gripping mentioned in the description and that the seat directly flaring from the root of the lip provides an increased area of contact between gasket seat, as mentioned in the patent, aiding in the solution of the technical problem.

The Chairman who presided the Oral Hearing said that the Opposition division has decided to reject the opposition and to maintain the patent as granted

Take-a-ways from the Author:

The case that was related in this blog reminds us simple things but very clearly.  First of all, it is not the number of prior arts cited but the mapping of each claim elements along with its function is required.  It also reminds us that the innovative elements along with its function should be explicitly described and claimed in any patent application.  Further, in the mechanical invention, keeping the Prior art combinations to a minimum level and citing a prior art that maps the patent in question, by virtue of its function will be greatly rewarded.

REF: Europe Patent Office.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.