Monthly Archives: December 2012

Analysis of the case- Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. on 20 December, 2011

Mrinal Gour, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. This was a landmark judgment with respect to registering a numeral as a trademark.

Sections involved: Section 29 of Trademark Act, 1999 which talks about infringement of registered trademarks. It states the scenarios where a registered trade mark is infringed by a person who is not the registered proprietor or he is using by way of permitted use. The non registered proprietor’s mark would be identical with or deceptively similar to the trade mark in relation to goods or services, which is already registered.

Facts:

Radico Khaitan Ltd., a manufacturer of alcoholic beverages was the plaintiff. The company was using the numeral i.e. 8 from 2006 itself till now, and they were generating scores of profit which was added onto their revenue turnover. Their sale during the years 2006-2007 till 2010-2011, was 2136.4 million to 2565.9 million. Later, Carlsberg started selling beer by launching the product in February 2011 under the trademark PALONE 8 with the numeral 8 being used in the same font and color as alike the one used by Radico.

Below are the products of Radico and Carlsberg respectively:

Radico:

1. 8PM BERMUDA XXX RUM

2. 8PM ROYALE

3. 8PM EXCELLENCE BRANDY

4. 8PM BERMUDA WHITE ORIGINAL with a slogan: “AATH KE THAATH”

Carlsburg:

1. PALONE8 WITH A SLOGAN: ‘8 KA DUM”

Dispute:

  • Related to the usage of numeral i.e. 8, color, identical font and identical font size with which the numeral, 8, is printed on the bottle “distinguishing & identifying feature of its mark.”
  • Idea of adding Slogan on 8 to make the product distinctive.
  • Price differentiation among the products is substantial.

Arguments by Radico:

  • Radico contends that Carlsberg is selling beer under the trademark Palone8 with numeral 8 being used in the same font size, same font and color. From the point of a reasonable person involved the trade in any way, and from the perspective of the practices prevalent in the industry i.e. to see what other players are doing in the same industry, it can potentially create confusion in the minds of the consumers.
  • By adding the slogan on numeral 8, Carlsberg essentially portrays the idea of Radico’s trademark which emerges in the minds of the consumers. They can associate and connect to Radico’s trademark i.e. 8PM while looking at the Carlsberg beer bottle with the label prominently displaying the numeral 8PM in the same font and size and with the same color and styling like that of Radico’s slogan.

Arguments by Carlsberg:

  • There are various alcoholic drinks brands in the market having reference to the numeral 8 like Signature and Bacardi. They contended that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Registration of the trademark Palone8 was under class 32 of Trademark Act 1999, and both the products belong to different class. Further, as the alcohol consuming consumers are very much aware, informed and can distinguish the features of beer / whisky/ rum/ brandy which are registered under the class 33 of trademark act 1999, it would not mislead the consumers.
  • Radico’s slogan “AATH KE THAATH” with numeral 8 showcases & somehow connects the numeric value to the luxury of Eight (8) empowering it in such a way. While on the other hand, Carlsberg using the slogan 8 “KA DUM” regarding numeral 8, shows the potency of eight rather than intending to mislead the consumers. Both belong to different class and both are different products. Even the other products like:
    – WHISKY under SIGNATURE with numeral 8, displayed prominently on the label,
    – Bacardi’s 8 RUM

    • Similarly, there are other various brands in alcoholic industry which uses the same concept to make their product distinctive either by adding numeral or by adding the slogans.
  • The reason about the price differentiation is substantial, Radico’s product i.e. whisky price is costing Rs.300 per bottle while Carlsberg product i.e. beer price is costing Rs. 65 per bottle. Well, if products belong to the different class and category, having distinct feature by itself then there will a cost differentiation. Beer cannot be sold at that range of price where Whisky and Rum are being sold.

Judgment:

On 20th December 2011, the Delhi High Court held the case in favour of Carlsberg and dismissed Radico’s prayer for injunction.

1 The plaintiff has registered his trademark as 8PM for advertising its product in the market and,

2. Both the goods & products have dissimilarity and both belong to different sections and class and beer is only a dilution of alcohol and not assuchalcohol,

3 And after applying the test of distinctiveness which includes numeral and considering the facts that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Merely by the stylized written form of the numeral 8, it cannot be a sufficient ground for Radico to obtain an injunction.

4. The decisive question is a simple trade dress analysis of the overall “look and feel” of the label, independent of its contents. Further, on comparing the two labels, it can be seen that there is no prima facie cause of any consumer confusion and damages caused, that would lead to infringement.

5.  It can be further seen that Radico had registration for a composite mark ‘8 PM’ and referring to Section 17 of the Trade Marks Act, a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of a Trade Mark. Since no exclusivity was claimed, there is no question of any infringement since the only common aspect in both the marks is the numeral 8.

Analysis:

As far as my opinion goes, I won’t defer and would go synonymous with the judgment, because of the following reasons:

  • Both the products belonged and classified under variant classes i.e. class 32 and class 33.
    • Class 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
    • Class 33 Alcoholic beverages (except beer).
    • Class 33 excludes beer and on the other hand it includes whisky, rum, brandy and alcoholic beverages.
  • -A strong reference to common practice in the trade of alcohol brought out that the numeral 8 is common to the trade, so there should not be any dispute regarding the usage of numeral i.e. 8.
  • -From the consumer’s point of view, if a consumer asks for a drink (in a bar or in a alcoholic shop near to roads ) ,he will refer to the drink category i.e. beer or whisky or so on ,he is aware of the fact that beer is different and whisky ,rum ,brandy are different ,and even if he is normal person who is drinking first time , through menu and  price of the product he can analysis that beer are much cheaper as compare to the whisky ,rum and brandy. So, there is always or at least often an aware consumer who is able enough to distinguish among the drinks or the type of alcoholic beverage which he/she wishes to prefer or to consume.
  • -Both the slogans reflect the different aspects of the product with different brand  messages related to the numeral 8, Radico products slogan message related to luxury of eight while Carlsberg product slogan message related potency of eight.

IIPRD Offers 6 months Online Certificate Course

IIPRD (Institute of Intellectual Property Research and Development) offers a Six Months Certificate Course on “Patent Portfolio Creation & Management”, which is continually ongoing since 2009 and has successfully enrolled over 300 students in the last over 3 years. The course is an online distance learning course, making it especially very effective for working professionals, who wish to have flexibility to initiate the course at their convenience. The details of the course can be easily obtained from IIPRD’s website at http://iiprd.com/course_patent_portfolio.htm

The Course exclusively focuses on Patents with subject matters relating to Patent Preparation, Patent Searching, Indian Patent Act and Practices, and Patent/IP Commercialization and Valuation. The course has been attended by Scientists, Patent Analysts, Patent Attorneys, Engineers, Consultants, and IP Lawyers, among others, from companies such as Philips, Dabur, Cadila, Adobe, Globallogic, Amazon, Cadence, TCS, Infosys, Evalueserve, among many others.

Below is a brief snapshot of our leaflet on the course. For any further queries, please write to us at iiprd@iiprd.com.

Course letter

Tidbit: Indian Patent Office issues Guidelines on examination of Biotechnology Applications

The Indian Patent Office (IPO) has recently issued another set of guidelines, this time on examination of biotechnology applications. Our earlier write-up on a set of guidelines issued by IPO, for examination of applications relating to traditional knowledge, can be seen from here.

The guidelines explain in detail, with illustrative examples, on various facets of patentability of biotechnology related inventions, including novelty, inventive step, industrial application, sufficiency of disclosure, clarity of claims, Biodiversity related issues, section 3(b), 3(c), 3(d), 3 (e), 3 (h), 3 (i). The patentability of biotechnology related inventions particularly genetic engineering, has invoked many debates in the recent past.

There is a definite need for having a uniform practice in the Indian Patent system on examination of such applications for both Applicants and Examiners and these guidelines would definitely serve the purpose. There has been a thorough discussion on every aspect with examples.

The draft guidelines are available at: http://www.ipindia.nic.in/iponew/Draft_Biotech_Guideline_19December2012.pdf.

Happy Reading!

Planting one seed at a time: Overview of The Protection of Plant Varieties and Farmers’ Rights Act, 2001

Anoop Mishra, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at the first piece of legislation in the world to protect the farmer and recognize his contribution in preserving the biodiversity and develop new plant varieties.

In order to comply with its obligations under the TRIPS Agreement, India has implemented The Protection of Plant Varieties and Farmers’ Rights Act, 2001. The objective of this Act is to provide for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants it has been considered necessary to recognize and protect the rights of the farmers for conserving, improving and making available any plant genetic resources.  The Act aims to accelerate agricultural development in the country and stimulate investment for research and development. This Act by awarding such protection would ensure the growth of the seed industry in the country.

Section 16 of the Act specifies the persons who may make application for registration. They include any person who claims to be the breeder, successor of breeder, assignee of the breeder, farmer, group of farmers or community, any person authorized by the preceding persons or any university or public funded agricultural institutions.

There are three types of variety which are mentioned in the Act-extant variety, essentially derived variety and farmers’ variety.

The variety must be registered to claim protection under the Act in respect of varieties mentioned in section 14 of the Act. To be deemed registerable, the variety must be novel, distinct, uniform and stable. An extant variety needs to conform to the criteria of distinctiveness, uniformity and stability in order to be registered under the Act. Registration of a plant variety confers exclusive rights on the breeder/farmer to produce, sell, market, distribute, import or export such variety.

To determine novelty under the Act, it must be considered that the propagating or harvested material of such variety has not been sold or otherwise disposed of by or with the consent of its breeder or his successor for the exploitation of such variety in India earlier than one year or outside India in the case of trees or vines earlier than six years, or, in any other case earlier than four years, before the date of filing of such application.

For the purpose of distinctiveness, at least one essential characteristic of the new variety is different from the usual prevalent varieties.       The sufficient uniformity must be maintained by the variety in respect of the essential characteristics if it is subjected to variation. The variety must be stable with regards to the essential characteristics when it is subjected to propagation.

The Plant Varieties Registry at New Delhi in 2011 suo motu considered the issue with regard to the time limit for registration of extant varieties whether from the date of notification of genera and species under section 29(2) of PPV&FR Act, 2001 or from the date of notification of Criteria of Distinctiveness, Uniformity and Stability of extant varieties in the Official Gazette by the Authority in the form of regulations under section 15(2) read with section 92(2)(c) of the Act.

This issue is related closely with the two notifications i.e. S.O. 1884(E) dated 1/11/2006 which was with respect to twelve crop species and the other notification is S.O. 2229(E) dated 31/12/2007 with respect to four species of cotton and two species of jute. Under both these notifications the Criteria of Distinctiveness, Uniformity and Stability for registration of extant varieties about which there is common knowledge and farmers’ variety forms part of extant variety as notified subsequently in the Official Gazette in 2009.

This issue is basically considered because previously the Registry has returned several applications for registration of extant varieties about which there is common knowledge on the ground that the time limit for filing application for registration of extant varieties of eighteen crop species notified earlier have expired after a period of three years from the date species have been notified.

As per section 29(2) of the Act the said notification applies only to the new varieties because Section 29(2) reads as follows: “The Central Government shall, by notification in the Official Gazette, specify the genera or species for the purposes of registration of varieties other than extant varieties and farmers’ varieties under this Act”.

Section 15 lays down the time limit within which the extant varieties must be registered if it satisfies the criteria of Distinctiveness, Uniformity and Stability. Section 24 of PPV&FR Rules, 2003 lays down the time limit for registrability of such extant varieties. As per this Rule, the extant variety must be registered within three years from the date of notification of varieties under Section 29(2) of the Act and farmers’ variety shall be registered within a period of five years from the date of notification of varieties under section 29(2) of the Act.

As per the Annual Report issued by Department of Agriculture and Co-operation; 568 applications were filed with PPV & FR Authority for registration of varieties of different crops, out of which 227 were for new varieties, 297 for extant varieties and 44 for farmers’ varieties. The maximum numbers of applications (266) were received for species belonging to family Poaceae which covers major food crops of the world, 259 applications of species belonging to family Malvaceae were received followed by families Fabaceae (38) and Tiliaceae (5).

In 2009 for the first time PPV&FR Authority has issued certificate of registration for two new varieties. Maharashtra Hybrid Seed Company (Mahyco) has got the male sterile and restorer line of Bread wheat registered as new varieties.

123 extant varieties have been registered in 2009-10. Out of 123 registration certificates issued during the year 2009-10, 107 belonged to ICAR, 11 were from Private Sector and 5 from different state Agricultural Universities. Registration certificates of these varieties were given to concerned breeder / organization / institution.

Three farmers’ varieties of rice viz. Indrasan, Hansraj and Tilak Chandan were granted registration, thus, making India the first country in the world to have done so.

The criteria for registration of variety of common knowledge was finalized by the PPV&FR Authority and published in the Plant Variety Journal of India and Gazette notified vide G.S.R.452 (E) on June 30, 2009. Applications of varieties, hybrids and parental lines under this category will undergo one year DUS testing. Varieties accepted so far under this category are undergoing DUS testing at different DUS test Centres across the country.

Conclusion:-

This Act is an Indian sui generis legislation; it is the legislation which provides an extensive protection to the farmers than any other legislation of any other country related farmers’ right.

The Act recognizes the farmer not just as a cultivator but also as a conserver of the seed and a breeder who has bred several successful varieties. Moreover, the Act will bolster plant-breeding activity in the private sector. The drawback is that farmers will not benefit uniformly because the corporate companies would focus on hybrid seed production which would involve technology backed farming. Farmers belonging to lower of middle class would not be able to match up due to lack of awareness, capital and skills. Multi National seed companies would always have the edge over farmers due to their patented or licensed technology in the agriculture sector.

The solution to these problems would be to increase expenditure of plant breeding technologies so as to reach out to the poor and increase awareness of biotechnology amongst the lower classes. In addition, pest and nutrient management technologies can be made popular among the farmers belonging to the small and medium sections of the society.

Infringement of comic characters- Comic con?

Graphical characters are commercialized in the form of cartoons, posters, food products or merchandises like toys and clothes, to name a few. The profits garnered would depend on the popularity of the brand that the graphical character represents. Exploitation of the graphical character can take place if it is not legally protected.

Intellectual property and unfair competition law mainly provide protection to graphic characters. Due to the overlapping effect that the provisions intellectual property and unfair competition law stipulate, the two laws may converge to cover the gaping holes in the law. An advantage from commercialization of characters is that these graphic characters can be transformed into new works, depicting new postures in various colours and different mannerisms, than that in which the character was originally depicted.  It is well known that graphic characters act as entertainment products or services when they are depicted on various merchandises through marketing. Hence, they can be said to be merely suggestive of the products or services for which they are used, but cannot be said to indicate the source of origin.

The best protection strategy is to resort to the comic character being protected by copyright, Trade Mark as well as unfair competition laws.

Comic Characters can be differentiated in two categories: Graphic characters and Fictional characters. Both these categories have different tests to determine whether they can attain copyright protection. A graphic character is one which is depicted by a cartoon or other graphic representation. The physical appearance in the form of characterization is visually seen for the readers. When we come to a fictional character, it is a word portrait where the physical appearance is left to the imagination of the reader. Hence, the difference lies in the pictorial and literary representation.

In the case of Detective Comics v Bruns Publication (111 F 2d 432 (2d Cir, 1940), the defendants had created a character called ‘Wonderman’ which had the same physical and emotional characteristics of the well-known character ‘Superman’. The Court held that the defendants had copied more than the general types and ideas from ‘Superman’ and also appropriated pictorial and literary details and embodiments in the complaint’s copyright. The Court declined to grant protection to general ideas about a character. It is only when the character is sufficiently portrayed in details, protection could be granted. The character has to be converted from being just an idea, to become an expression.

Walt Disney v Air Pirates (581 F.2d 751 (9th Cir, 1978) was a landmark case on character protection. The defendants had portrayed Disney’s characters in incongruous settings. The Court held that a two step test should be applied to determine copyright infringement. First, the visual similarities of the characters are to be determined and secondly, the court would analyse the personalities of the cartoon characters. In this particular case, the defendants were held liable for copyright infringement.

Looking at Indian perspective, the case of Malayala Manorama v. V T Thomas (AIR 1989 Ker 49) can be seen where the Court allowed Mr. Thomas to carry on with his work of drawing the characters of Toms Boban and Molly even after leaving employment. The publishing house was restricted from claiming copyright over the character and continuing to draw the same character after terminating Mr. Thomas’s employment. The High Court had opined that since V T Thomas had created the character before entering into employment with the publishing house, he is the one who should be allowed to carry on the exploitation of his work even after leaving employment. The publishing house did not play any role in creation of the character, and hence they would not get copyright over the character. Their right is limited only to the extent of the particular cartoon strips which were created by V T Thomas during the course of employment for being published in the newspaper. The Court impliedly distinguished between the drawings made using the cartoon character and the actual cartoon character. The Court deciphered that the copyright over the drawings made using the character would vest with the publishing house as an artistic work, while the copyright over the actual character remains with Mr. Thomas.

With respect to determining copyrightability of fictional characters, the case of Anderson v. Stallone (11 USP Q 2d 1161) can be referred to wherein the appellant had written the story based on the character of ‘Rocky’, which appeared in the earlier ‘Rocky’ movie series. He then tried selling the same story to Sylvester Stallone for making ‘Rocky IV’. The appellant denied the allegation of infringement and claimed that ‘Rocky’ was not copyrightable. The court ruled in favour of the defendant saying that the physical and emotional characteristics of ‘Rocky’ were set forth in tremendous detail and hence the character was highly delineated.

But in the case, Warner Brothers Pictures v. Columbia Broad-casting Systems (216 F 2d 945), ‘distinctively delineated’ standard was replaced with the ‘story being told’ standard. In the present case, the Court stated that no character is protectable under copyright law unless the character is extremely well-delineated as to constitute ‘the story being told’ rather than merely being a ‘chess man in the game of telling the story’.  This would mean that the story has to be based on the particular character, which is sought to be protected. This was also applied in Universal City Studios v. Kamar Industries (1982 Copyright L Decisions (CCH) 25, 452), where the character ET was held copyrightable because ‘ET’ was the unique and distinctive character about whom the movie was about.

It can be concluded that copyright protection can be granted only when the court is made to believe beyond doubt that the characters are well delineated, and can be conveyed as an expression, and not an idea. It is significant to note that the creator of the comic character should protect his work even before it becomes popular to evade any chances of exploitation of the Trade Mark.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com