Author Archives: IIPRD

Apple’s Patent For Autonomous Vehicle’s Focused on Eliminating Blinding Light Glare

Apple was granted 60 new Patents by the U.S. patent and Trademark Office in the month of July, 2019. These 60 newly granted Patents included a vital autonomous vehicle vision system the main purpose of which is to filter out glaring light which generally troubles the vehicle’s navigation system. On the other hand, Apple also bagged a few design patents including Beats Headphones and some more. A Patent application titled “Apple reveals a Vital Safety System for Autonomous Vehicle’s focused on eliminating Blinding Light Glare” filed for registration almost a year and a half ago in March, 2018 USPTO office was granted patent. Reports showed that last year in the month of January Apple expanded its sector of Self-driving cars in California and eventually registered 24 additional vehicles with the State’s Department of Motor Vehicles. Over the time, the U.S. Patent Office published several major Apple patent applications regarding future autonomous vehicles in the journal to be viewed by the public. It was marked by Apple that the patent granted to them for novel imaging devices, such as cameras, focus light from a scene onto an image sensor. The operators use one or more such cameras for acquiring assistance in vehicle vision system. These cameras help the operators with lane changes, parking, and rearward view while performing a reversing maneuver.[1] The vehicle vision system allows the driver or the operator of the vehicle to opt for safer driving decisions by aiding them with additional information which would help them to operate the vehicle smoothly. The imaging devices (e.g., cameras) may experience operating conditions with various light conditions that affect the vehicle vision system, and which might consequently manoeuvre the autonomous vehicle. This invention also covers systems to regulate received at an image sensor.[2]The strong and dazzling light of the sun affects the vehicles vision system. If there is a sudden change in the lighting conditions, the scene captured by the imaging devices such as the camera gets affected. Driving at night may low light levels which mainly results from street lights or other vehicles. Thus, an autonomous vehicle system must be efficient enough to operate in different lighting conditions adopt abrupt and sudden changes in the lighting conditions quick enough to adjust the amount of light received at the image sensor.[3] In usual lighting conditions the errors are few and by that the safety of the system improves.There are certain embodiments that arereported in the patent filing include one or more mechanism for blocking light received at the image sensor. The mechanisms are advanced and can adjust itself in accordance to the lighting conditions. The safety of the vehicle occupants and others on the roadway may be compromised if, for example, the autonomous vehicle does not recognize an object in its path because of glare. In contrast, glare produced in an image of a backup camera system can be overcome by the vehicle operator’s own vision. And while lighting conditions for photography may affect the aesthetic quality of a captured image, it does not affect the operator’s safety. [4]

Apple’s patent FIG. 7 below, autonomous vehicle #700 can include a front portion #702, rear portion #704, driver side #706, passenger side #708, and roof #710. The vehicle can include any number of cameras 100A-H. In some embodiments, the cameras can be protected by an additional housing, for example, a transparent covering.[5]

The fact is that only the Patent for the design has been granted by the USPTO as of now.  Thus, the launch of the ultimate product from it is expected thought the estimated time is still unknown.

Author: Debopriya Mukherjee, B.A. , LLB (H), 5th year, Amity University, Kolkata, Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

  1. https://www.patentlyapple.com/patently-apple/2018/03/apple-reveals-a-vital-safety-system-for-autonomous-vehicles-focused-on-eliminating-blinding-light-glare.html
  2. ibid
  3. https://www.patentlyapple.com/patently-apple/2019/07/apple-won-60-patents-today-covering-a-future-vehicle-vision-system-a-beats-headphone-design-patent-and-more.html
  4. ibid
  5. Supra note 1.
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Delhi HC Slaps Interim Deposit of 54Cr. To Patent Infringer

A Patent infringement lawsuit was filed by Communication Components Antenna INC against alleged infringer Ace Technologies Corp and its related entities and subsidiaries in relation to its patent which was titled “Asymmetrical Beams for Spectrum Efficiency”.

The plaintiff claimed that the patent was for a novel antenna having a unique feature i.e. an asymmetrical beam pattern detailed in its specification. However, the Patent did not really comply with the technical standard to be considered to be patented and rendering dole ownership to the plaintiff and also has been licensed by the plaintiff to various other parties. Approximately two years ago it was found by the plaintiff that their Patent was being infringed by the defendants. In order to protect their patented invention from getting infringed a suit was filed by the plaintiff. The Court passed an interim injunction on the sale of the patent in question to any cellular operators in India by the defendants till the matter was heard next. Although orders for imports was allowed only on the condition of filing the accounts of the same.

In this matter a Single Bench Judge of the Delhi High Court Justice Prathiba M Singh based on the prima facie or the first impression of the case passed an order directing the alleged infringer to make an interim deposit of approximately Rs. 54 crores to be able to carry on with further sale of the manufactured products through the Patent in question High Court Registry. It was further directed by the Judge that if the alleged infringer does not comply with the interim order, he shall be prohibited from activities such as manufacturing, selling, or offering for sale any such products which are manufactured through the suit patent.[1]

The plaintiff represented by Senior Advocate CS Vaidyanathan with Advocates Sidhant Goel, Mohit Goel, Samik Mukherjee, Deepankar Mishra, Aditya Goel and Anirudh Gupta submitted and argued that their antenna was a “smart antenna” and that the design of the same was unique and novel with the aim of achieving greater effectiveness without quality compromise. Further submissions by the plaintiff stated on grounds of validity of patent, that the grant of the patent claiming to be a “smart antenna” was justified as it introduced new and unique asymmetrical beam patterns in split-sector fixed beam antennae.

It was further submitted that even though a large number of the “smart antennas” were supplied by its predecessor in India, the indulgence of third parties in the supply chain of the same not only infringed the plaintiffs’ patent in India but also drastically hampered the plaintiff’s market.

The defendants represented by Senior Advocate Arun Kathpalia with Advocates Shantanu Tyagi, Dev Robinson, Apoorva Murali and Surabhi Bhandari alleged that the plaintiffs did not reveal all the material information to the court. The defendant submitted that the patent in question was lis pendens, wherein, the Court could not grant an injunction as the validity of the patent was challenged. The suit was further challenged by the defendants stating that the patent which was in question in the suit was not a valid Patent under Section 3(a),(c),(d) and (f), of the Patents Act and should hence be revoked under Section 64 of the Patents Act. Furthermore, the defendants further argued that the “asymmetrical beam patterns” already constituted prior art when the patent was granted in India.[2]

The defendants denied the plaintiff’s claim of having “worldwide protection” on the basis that “additional limitations” had been made to the corresponding patent claims in the United States which consequently makes the Patent registered in India “obvious”.

Thus, seeking the injunction order to be vacated.

The Court after hearing contentions from both the sides rejected the defendant’s contentions in regards to suppression of facts, as the plaintiff had already placed the judgment before the Court of the pending suit on record.

The Court addressing the issue of “additional limitations” in the US patent with respect to the determination of the true purport, meaning and purpose behind the invention in India, it observed that the language of the patent claims in different jurisdictions, after it is granted in various domestic jurisdictions, would usually never be identical.

Consequently, the court was of the view that additional language in the claims of the US patent could not be considered as a limitation but merely highlighted another feature of the patented invention and that a patent specification and the claims should be interpreted literally and not purposively.

The defendants also faced rejection of their contention on prior art as for an invention to be prior published, and to be hit by prior art, it has to be viewed from the point of view of a skilled addressee as to whether the document would by itself, without the disclosure in the patent specification, be sufficient to anticipate the invention.[3]Also, the defendants were unable to reveal to the Court the beam patterns of the antennae that were sold by them. Based on the perusal of the claims, complete specification, and the beam patterns and two expert reports, the Court prima facie found the defendant guilty of patent infringement and thus came up with the opinion that the defendants are liable to deposit the said amount for continuation of sale of their antennae in India. The next hearing for the matter is fixed on October 17.

Author: Debopriya Mukherjee, B.A. , LLB (H), 5th year, Amity University, Kolkata, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com

References:

[1] https://barandbench.com/wp-content/uploads/2019/07/Communication-Component-Antenna-vs-Ace-Tech_watermark.pdf

[2] https://barandbench.com/delhi-hc-directs-patent-infringer-to-deposit-rs-54-crore-to-evade-injunction/

[3] https://lawgupshup.com/2019/07/delhi-hc-directs-patent-infringer-to-deposit-rs-54-crore-to-evade-injunction/

Patent Pariah Or Patent Power

1. BACKGROUND

1.1 Why was Huawei in the news?

Recently, Huawee’s demand for 1 billion USD as license fee from Verizon Inc[1] captured interest of almost every patent enthusiast around the globe. The issues got even more complicated when the US took to politicization of patent rights which drew criticisms from all fronts.

1.2 Senator’s Comment and world response

Republican senator Marco Rubio, supported by Democrat senator Charles Schummer, stated that the current ban on Huawei is justified following the US Government’s move of placing Huawei on “Sanctions list” on the grounds of threat to national security due to connections between Huawei and the Chinese intelligence services as well as the people’s liberation army. Further, the move has been seen as necessary for better trade rules between US and China[2].

However, what Senator Marco Rubio has proposed is to effectuate this ban by means of legislation. This happened when U.S. Senator Marco Rubio actually filed legislation for an amendment to the National Defense Authorization Act, or NDAA, on 17th June 2019 which would prevent Huawei Technologies Co Ltd and other companies on the U.S.A’s watchlist for Security[3] from seeking damages in U.S. patent courts, after the Chinese firm demanded that Verizon Communications Inc pay $1 billion to license the rights to patented technology[4].

In response, China has warned that threats and tariffs will not resolve trade tensions between the two biggest economies and blasted Republican Senator Marco Rubio for his criticism of technology giant Huawei over patents. The Chinese called this attempt “bizzare”.  Huawei denied that it would share user data with the Chinese government if ordered to do so. Huawei also stated that there are no backdoors in its equipment and that it is willing to enter into a “no backdoor” agreement with any nation that wants one. The Chinese view the move as complete politicization of patent rights. Huawei brought a lawsuit in the U.S. this March challenging the constitutionality of the national security law which prevents the U.S. government and its contractors from using Huawei equipment[5].

1.3 US-China trade War

In 2018, the US – China trade deficit stood at around 419 billion USD.  This trade deficit is increasing, right from 2012 where it stood at 315 billion USD. In order to reduce the trade deficit, tariffs were imposed on Chinese goods. For instance, on March 1, 2018 Donald Trump, POTUS, announced that he would impose tariffs of around 10% on steel imports and around 25% on aluminium. On 6th July, the tariffs cost the Chinese around 34 billion USD. As a result, they cancelled soybeans. This series of measures and counter – measures have taken the form of what is known as the longest standoff between the US and China in the economic history of the world. One such victim of this trade war was Huawei[6].

2. PROPOSED COUNTERMEASURES BY HUAWEI

Huawei at this position has to take a stand. It has to decide whether it wants to fight a lengthy litigation battle and protect its right. Again, the outcome may not be very much favorable. Or Huawei may plan to prepare its exit.

2.1 Divesting patents

If Huawei takes the call to leave US, it can do so by divesting itself of patents covering certain technology areas so that it can realize value for the technology without having to devote resources to its further exploitation or development. Typically, this can be done by outright assignment of patents, know-how and other assets, or by license. This will not only bring revenue to Huawei, but will also aid them a smooth exit from the country’s patent regime. Huawei may also dedicate some of the patents to the public domain. This will not only help Huawei to offload its portfolio, but also enable the company to improve its public image in the patent domain.

2.2 Improving public relations on patent front

However, if Huawei opts to stay, it may be an opportune time to invest in improving its public perception. Huawei has successfully defended itself from patent infringement suits till date by notifying Verizon immediately and proactively enforcing its patent rights. Huawei can go on aggressive advertisements showcasing itself as a responsible owner of intellectual property and respecting intellectual property rights.

2.3 Personalizing the Company

Another alternative for Huawei is to give due credit to inventors in company advertisements. Spotlighting company inventors in advertisements and allowing them to become the face of the company’s innovation will only help to improve public perception of Huawei. Along with it, Huawei may even be able to vent off its frustration on the challenges faced in the current patent regime of United States.

3. CONCLUSION

3.1 Story till now

Over the years, Huawei has invested a lot of resources and has built up a portfolio of more than 10,000 patents. The recent attitude of US is an indication for Huawei to start taking countermeasures in order to safeguard its interests in the US. Although approaching the Courts against the Amendment of National Defence Authorisation Act as unconstitutional, Huawei must take proactive measures that not only employ its patents to good use but also work towards improving its image in the market.

3.2 Way forward

As the US China trade war drags on, and as tariffs keep on piling on either sides, Huawei and other Chinese corporations must work towards protecting their interests. Leaders from both the ends should come together and international conventions should not be bypassed by taking aid of legislature. Instead, being the two economic superpowers of the West and the East respectively, they must act in a responsible manner and act as a check and balance to each other. International commitments must be respected at all costs.

Author:Madhur Tulsiani, student of Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur, legal Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

[1]https://news.cgtn.com/news/2019-06-19/Huawei-Verizon-patent-dispute-How-common-is-patent-licensing–HEsyAlMnwk/index.html

[2]https://wccftech.com/marco-rubio-we-want-huawei-restrictions-to-stay/

[3]http://www.thestandard.com.hk/breaking-news.php?id=130079&sid=6

[4]https://ca.reuters.com/article/businessNews/idCAKCN1TI2T3-OCABS

[5]http://www.thestandard.com.hk/breaking-news.php?id=130079&sid=6

[6]https://www.thebalance.com/u-s-china-trade-deficit-causes-effects-and-solutions-3306277

What Should Be Your Key Considerations While Licensing From Patent Pledges?

Toyota, a Japanese MNC recently decided to grant approximately 24,000 ‘vehicle electrification’ patent licenses on the technologies used by them in making of their cars, specifically in “green” cars i.e. Prius, world’s first mass produced electric car. The ideology behind this, is that the team at Toyota believes to foresee beyond just producing finished products. This act of Toyota has been compared to Tesla’s pledge in 2014.

The following are considerations which should be taken care of while entering into licenses for patents:[1]

1. Royalties

A very vital aspect of licensing patents are the royalties involved. Royalty is the amount paid to the rightful owner of the patent for the licenses that are to be granted. According to the wishes of the parties the transactions can be bargained as per their choice.

For instance, Toyota built its pledge proposing royalty free licensing to increase the manufacturing of electric vehicles. Whereas, Tesla had mentioned some specifics about royalties to be paid in their patent pledge framework. [2]

The team at Toyota asked for a fee if any individual requires their technical support for carrying out research. This is the reason that many legal advisors advice their clients to go ahead with the patent only if the technology involved in the invention can be carried to the end without the technical support which required a fee.

2. Grant-back clauses

Grant black clauses mean such terms in the agreement which indicate that the ownership of the intellectual property after completion of its development leads back to the licensor. Therefore, before entering into any agreement it should be made sure that they aren’t ‘open source’ patents before you invest in developing the technology any further. To conclude you should analyse before entering into an agreement unless you do not want your invented technology to go back to the licensor.

3. Freedom to Operate

When any licensor (like Toyota or Tesla) makes an announcement for providing free patents from pledges it does not stand as an open invitation to all the third parties to venture out and develop their own technologies without seeking permission for a license. Such practices would lead to infringement causing legal problems.

4. Good faith

The court of law always gives the benefit of doubt to an individual who obeys his rights and duties under the umbrella of good faith. Tesla had an entire clause in their agreement stating “good faith” and how third parties were supposed to interpret it. As doing anything contrary to the clauses in the agreement or misusing the patent for enhancement of your own technology would trigger certain legal nuances.

5. Warranties

As it has been established through the above mentioned considerations that scrutinising the agreement before enhancing your technology is a must or it might lead your developed technology back to the licensor, which shouldn’t be the case. Therefore, to avoid such an event in the future an individual seeking the license should ask for a certain kind of warranty that is capable of covering such a risk (just like other transactions) in order to avoid any legal actions.

To conclude, it can be said that due diligence forms an essential part of any agreement that is entered into. But, before taking a license for patent from pledges or patents which have open source, one should understand the nitty-gritties of the technical background. 


Author: Debopriya Mukherjee B.A. , LLB (H), 5th year Amity University, Kolkata, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at 
niharika@khuranaandkhurana.com 

References:

[1] https://www.udl.co.uk/insights/electric-vehicle-patent-pledges-five-key-considerations-when-licensing

[2] https://www.wipo.int/edocs/pubdocs/en/licensing/903/wipo_pub_903.pdf

Vodafone Becomes a Part of Via Licensing’s Consortium

Via Licensing’s Consortium’s LTE Patent pool is a holistic platform in itself which drives all innovators of vital LTE patents towards a single offering. A huge announcement was made by Via on 22nd July, 2019 wherein the company went public with the news of Vodafone, to license their standard essential patents for the 4G Long Term Evolution (LTE) as a member of the patent pool for LTE enabled wireless products of Via Licensing Corporation.

What is Via Licensing Corporation?

Dolby Laboratories, Inc., is the parent company of Via Licensing Corporation, serving with 50 years of experience in innovation. Via’s mission is to create a platform which enriches and multiplies innovations using intellectual property rights by teaming up with a diversified group of companies like technological, entertainment and universities around the world. Apart from this, Via also runs and develops licensing programs on behalf of innovation pioneers in market such as automotive, audio and wireless.[1]

Ambit of the LTE extends from broadband wireless connectivity to the recent modern inventions. Via and it’s multiparty licensing program provide a fair, transparent and cost effective license to all of its inventors from LTE, LTE-Advance, and LTE Advanced Pro patents in the program.

Via expressed a lot of positive enthusiasm in welcoming Vodafone into their consortium. Vodafone is amongst the largest telecommunications company to provide a great variety of professional services to their valuable customers and enterprise customers. Vodafone has been building itself on innovation from the past 30 years, which is also the reason why Vodafone has a humungous customer base of approximately of 700 million mobile customers and 21 million fixed broadband customers. [2]

Some of the other companies which are a part of the LTE-essential patent consortium of Via’s licensing program include companies like Conversant Wireless, Deutsche Telekom, Dolby, Google and many others.[3] Via believes that by licensing groups of essential patents, litigation and licensing fee at several stages can be avoided by the companies. At Via it is thought that the toddler companies who have just started thinking about LTE would gain ample amount of confidence from the patent pool. 

Author: Shruti Mandhotra, BBA LLB, 4th year , School of Law, UPES, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] http://www.via-corp.com/us/en/about.html

[2] https://www.vodafone.com/content/index/investors/about_us.html#

[3] https://www.rcrwireless.com/20121003/wireless/lte-patent-pool-launches-10-companies

Startup and intellectual Property

INTRODUCTION:

Intellectual property gives you the legal right to prevent others from stealing the intangible assets which lie at the core of your business and affect the success or failure of your business. Hence, this is taken seriously by investors, who want to consider applying stratergies to manage intellectual property assets. In the words of Mark Getty (“Blood and oil,” The Economist, March 4 , 2000): “Intellectual property is the oil of the 21st century. Look at the richest men a hundred years ago; they all made their money extracting natural resources or moving them around. All today’s richest men have made their money out of intellectual property,”

STARTUPS AND INTELLECTUAL PROPERTY:

Startups don’t usually have a significant asset base. They could include individuals with an innovative idea who are yet to begin trade, or a small business, which has just started operating. If you have founded a startup, it is ironically this exact lack of assets that makes it vulnerable and hence, critical for you to indentify and protect the assets you do have, i.e. your “intellectual assets.” This is because it’s your intellectual assets that will differentiate you, and become your USP, deliver your competitive advantage, and go on to drive revenue. Conversely, failure to identify and protect your intellectual assets can mean your business fails, generally because someone more established sees the business succeeding, and takes the essence of what is special about it-  your innovation.

It could also be that you are inadvertently building your business around someone else’s intellectual assets, in which case they may simply require you to stop. How then do you protect your intellectual assets? The answer mostly depends on the type of your intellectual assets. There are lots of different types of IP: copyright ,trademarks ,patents, design rights, and trade secrets probably being the ones you hear mentioned most frequently. People will often say: “But the business doesn’t have any IP.” This shows a basic misunderstanding about what IP is- it also pre-supposes that IP, like a physical asset, is something you always need to have in tangible form.     

This article includes an overview of the different types of intellectual property and provides advice to startup companies on how to secure their own intellectual property as well as protect against intellectual property risks from others.

The three basic types of intellectual property that startups should understand are:

  • Patent
  • Trademark
  • Copyright

 Not every startup business will be best served by investing its resources in building a patent portfolio, but the question of pursuing patent protection warrants a hard and early look. Knowledge of the role of patents is critical for two reasons:

  • To protect your own business and invention from your competitors
  • To avoid the risk of being exposed to assertions of patent infringement by competitors and other third parties

It is important for startups to understand the different kinds of patent protection and how they fit into their business.

Utility patents can be obtained for processes, machines, articles of manufacture, or composition of matter that are deemed new, useful and non-obvious. The traditional subject matter of such utility patents cover tangible, technical inventions, such as improvements to client- server systems, motors, radios, computer chip and various technical product features. For example, Boeing’s US patent no. 6,227,447 is patent that covers methods of remotely controlling a vehicle. Patents can also be directed for new product features and functions. As another example, Facebook’s US patent No. 8,171,128, titled “Communicating  a newsfeed of media content based on a member’s interactions in a social network environment,” protects its News feed feature.

A separate category of patents, the design patent, may be sought to protect ornamental (non-functional) designs. Some examples of notable design patents includes Apple’s D604305 covering the design of its iPhone interface and Lululemon’s design patent covering its yoga pants.

Trademarks

Trademarks take us into the world of branding. Trademarks serve to build brand awareness and business goodwill. They can impact consumer confidence in products by its association with a brand that the consumer recognizes and trusts. A trademark can be words, symbols, logos, slogans or product packaging and design that identify the source of goods or service marks to designate products or services. However, only registered marks may be accompanied by the “®” symbol.

Although registration with the US Patent and Trademark office is not required to gain trademark rights, registration provides certain important benefits to the trademark holder. For example, without a registration, the trademark rights are limited to the territory and only begins after the product or service is available for sale on the market.

In contrast, federally registered marks provide nationwide rights. Registration also creates a prime facie case of validity of the ownership as well as an exclusive right to use the mark for specified goods or services. Once registered, the owner of a mark can stop importation of infringing products through U. S. Customs.

Copyrights

Copyright is a form of intellectual property that protects the expression of ideas in the form of books, music, arts, photographs, architecture and even computer software etc.

However, while copyrights protect the expression of ideas, they do not protect ideas or concepts themselves. For example, a copyright can protect a particular photograph of a bird, but others may still create their own photographs of the same type of bird.

Another requirement for copyright eligibility is that the work must be “an original work of authorship. “Facts, title, phrases, and forms per se cannot be copyrighted.

NEED OF IP STRATEGY

The challenge for founders of startups is that resources (financial and human) are generally limited, and so, hard decisions need to be made about how to allocate them. This makes it more critical that startups think about their IP strategy starting early on, and be clever to about keeping their costs down. For example, by keeping the details of their innovation confidential, an inventor can protect it as a trade secret, and so, defer the costs of applying for a patents until the startup is funded. By checking the assignment provisions in their agreements with consultants, a founder can ensure that the business owns the IP rights in the materials it pays for. Just because you pay for something to be developed does not mean you own it. Of course, the list of “easy if you plan for them” fixes goes on- formulating a clear and practical strategy to manage and protect your IP, and aligning this with your business plan is key.

A good IP strategy is based on the needs not only of the business in the present, but also provides a framework for protecting the business as it grows. It will put simple processes in place to identify a business’s IP as it is created, then capture it, and finally protect it. It will also help a business in taking measures to check and make sure that it isn’t infringing on someone else’s IP. Protecting IP will mean different things to different businesses. It could mean protecting software, Al technology, furniture designs, or brands. It may involve preserving copyright and trade secrets, or perhaps registering patents, designs, domain names, or trademarks.

             Most startups will not have the luxury to apply and protect all of their potentially registrable IP rights at the outset. Financial constraints will mean that difficult decisions will need to be made regarding which IP right or rights to prioritize. This is where a clear strategy comes into play. It enables a business to plan step by step, and budget sequentially. Where the budget is insufficient and hard decisions need to be made, so long as this is recognized at an early stage, strategies can be employed to limit, or delay. Spend until the business develops.

CONCLUSION:

While intellectual property issues may be something which gets brushed aside during the early stages of a business, developing a diligent and intelligent IP strategy early on is very important.

Startups should evaluate the types of intellectual property that can impact their business and strategically consider pursuing patent, trademark and copyright protection as appropriate.

Defensively, startups should also assess the intellectual property landscape of their business. That awareness should include clearance efforts to ensure that the company does not infringe the intellectual property of others, as it develops its products and services.

Author: Himali Sharad Tambe , LLB Graduate, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1] https://patents.justia.com/patent/8171128#history

[2] https://www.zdnet.com/article/facebook-patents-the-news-feed/

[3] https://patents.google.com/patent/USD604305S1/en

[4] https://fortune.com/2016/10/10/apple-supreme-court-patents/

[5] https://www.economist.com/business/2000/03/02/blood-and-oil

[6] https://yourstory.com/2019/05/intellectual-property-protection-crucial-startups

[7] https://www.wipo.int/wipo_magazine/en/2018/04/article_0007.html

[8] https://www.forbes.com/sites/maryjuetten/2018/08/23/ip-tips-for-startups/#75ff7cbc4ed6

[9] https://www.entrepreneur.com/article/254442

GOQiiV. FLIPKART: PREDATORY PRICING OR BREACH OF CONTRACT?

Flipkart, one of the most trusted Ecommerce website recently ended up settling a legal dispute with an Indian health and fitness brand, GOQii as it was allegedly running into loses because its products were discounted up to 70% to the retail price on the Ecommerce website , which lowered the price of the products much more than the agreed price by both parties.

GOQii is  a health and fitness brand which offers its customers with smart watches that track their health and fitness data, heart rate and blood pressure or even the sleep data in that case. They are equipped with nutritionists and doctors specially tailored for individual customers as per their needs. Their main aim is to help people with living a healthier lifestyle.

GOQii has a good market share of around 19% and was the second biggest player in India’s wearables market previous year.

Last year GOQii had entered into a contract with Flipkart in which the healthcare brand licensed the global retailer’s website to sell two of its devices. The price agreed by both the parties for the devices were at least for Rs. 1999 and Rs. 1499. But, later the scenario was that it found Flipkart was selling the products at an unauthorized discount rate by reducing the price to Rs. 699 and Rs. 499 respectively.

GOQii filed the Petition in Bombay Court about a month ago in which Flipkart took to defence that it could not be held responsible for any discounts which are determined by third-party firms which apparently sold those two devices via its websites. Flipkart also reached out to the Department for Promotion of Industry and Internal Trade (DIIT) and the Competition Commission of India for their aid in the present matter. GOQii also complained of its customers facing trouble and replacing the damaged products they received from Flipkart at a discount.

The court put an interim injunction on Flipkart’s sale of the devices along with the third party seller to ban the sale of the same wearable via Flipkart. The dispute was settled but the grounds on which it was settled were never disclosed to the public by the companies. Consequently, we can again find GOQii health devices to be sold on Flipkart.

The legal quarrel was seen as a test case of the retailer’s operating scheme in the global market.

Both the companies ended their legal battle on 12th July, 2019 on a friendly note. Flipkart stated that they constantly engaged with GOQii to sort all the differences between them.

Small traders and a right-wing group close to Prime Minister Narendra Modi’s ruling party showed grave concern about the e-commerce companies operating globally, stating that they burn billions of dollars with high discount rates on some products to attract customers onto their sites, in the expectation that they will also buy other goods.

Cultural Appropriation and Trademark Law

Kim Kardashian West, the popular American media personality, described by her critics and admirers of being ‘famous for being famous’ was recently in news this June after receiving a wave of backlash on social media against the decision to name her new shapewear line “Kimono” which is also a traditional Japanese robe garment.

The issue is related to Kim’s lingerie brand, KIMONO-a new line of shapewear and the wider problem of fashion’s cultural appropriation. The brand website explains that Kimono is “a new, solution focused approach to shape enhancing underwear” and “fueled by her (Kim’s) passion to create truly considered and

highly technical solutions for everybody”.[1] The name of the brand is obviously a clever (some would say deliberately inventive) play on words with Kardashian’s first name, but a huge uproar has erupted online with regards to the fact that the brand is named after the traditional Japanese garment, the venerable ‘Kimono’. Following the launch of her brand, Kardashian came under public outrage, both in America and Japan and primarily on social media platforms labelling it as “cultural appropriation” with people expressing their dissatisfaction and disapproval with the fact that the so-called shapewear Kardashian shared in photo promos looks nothing like an actual ‘kimono’ in the first place.

West explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain.[1]

Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

The controversy also prompted the mayor of Kyoto, Daisaku Kadokawa, to issue a statement[1] urging Kardashian to drop the trademark of Kimono for her shapewear brand. In his letter, he wrote, “Kimono is a traditional ethnic dress fostered in our rich nature and history with our predecessors’ tireless endeavors and studies and the same should not be monopolized, He also went on to emphasise that the city is aiding in Japan’s initiatives to get “Kimono Culture” registered to UNESCO’s Intangible Cultural Heritage list because the rich culture and heritage behind the garment shouldn’t be monopolized.

The Trademark Test

Although the original Trademark application has now been voluntarily amended[1] omitting the terms, ‘Kimonos’ and ‘Robes’ under the Goods and Services category for the word mark, a search on the USPTO website clearly shows the trademark application containing the two generic terms under the ‘KIMONO’ word mark.

In fact, the word ‘kimono’ has been applied and registered 34 times in the USA. In Australia, Hasbro Inc, the large toy company, has registered the word ‘kimono’ for ‘toys and games and dolls in Japanese national dress’. Mayer Laboratories had registered the name ‘kimono’ for contraceptives in 2007. It would seem that Hasbro and Mayer have avoided the accusation of cultural appropriation.[1] To be valid, a trademark needs to be distinctive enough to perform its dual identifying and distinguishing functions. Trademark law provides three categories of distinctiveness for trademarks: inherently distinctive, descriptive, and generic.

Inherently distinctive marks (fanciful, arbitrary or suggestive) are inherently capable of acting as source identifiers. Descriptive marks, on the other hand, describe an aspect of the good or service they are used to identify. Descriptive marks are only valid if they have “acquired distinctiveness” or “secondary meaning,” meaning that consumers have come to associate the mark with the product or service it identifies. A generic mark refers to “what” the good or service is, and, as such, is not capable of acting as a source identifier for that good or service.[1]

In India, such an application would be hit by Section 9(1)(b) of The Trade Marks Act, 1999 which provides for Absolute grounds for refusal of registration as the mark consists exclusively of indication and/or characteristic of the good or services, particularly, the word mark. ‘Kimono’ for a traditional ‘Kimono’ dress.

Trademarks and Cultural Appropriation

The phrase ‘cultural appropriation’ is defined by the Oxford Dictionary as “the unacknowledged or inappropriate adoption of the customs, practices, ideas, etc. of one people or society by members of another and typically more dominant people or society.” In the trademark world, culture and trademarks have always had a rocky relationship. Westernized and European-centric designers have historically been accused of stealing traditional designs, music, dances and hair styles for their own use and profit, while the minority groups from whom they took receive little more than an acknowledgement.[1] Hence, corporations need to be more sensitive and aware than they have ever been when it comes to applying intellectual property (IP) to a print, shape, saying, or concept that is associated with a particular set of values, expression, and/or ethos of a group of people.[2]

Appropriating ‘cultural’ symbols has been attempted in the past too. In the 90s, India had to fight a dogged battle against some American companies to protect the name ‘Basmati’ rice despite significant claims to GI-tagging. Those American companies in fact managed a trademark on ‘Kasmati’ rice and it took the Indian government a lot of legal expense and cross-country effort to protect its turf. The words ‘khadi’ and ‘yoga’ have seen pitched battles too. German company Khadi Naturprodukte almost managed an EU trademark not too far back on ‘khadi’ and it took a lot of legal wrangling to negate the foreign entity. It would surprise many to know that the US Patent and Trademark office has reportedly issued 150 yoga-related copyrights, 134 trademarks on yoga accessories and 2,315 yoga trademarks.[3]

Conclusion

The lesson for brand owners, celebrities and entertainers may be that selecting a name derived from another culture involves more than just ascertaining whether it is available and registrable under a country’s Trademark Law. Consideration should be given to cultural sensitivities and the likely reaction in the marketplace to whether the name will be deemed offensive or inappropriate and ultimately bad for business.[1]

Author: Himanshu Mohan, LL.B. final year student at Campus Law Centre, Faculty of Law, University of Delhi , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] https://www.campaignindia.in/article/weekend-blog-kim-kardashian-and-the-kimohno/452920

[2] https://www.ipwatchdog.com/2019/07/31/countering-cultural-appropriation-trademark-laws/id=111746/

[3]https://www.city.kyoto.lg.jp/sankan/cmsfiles/contents/0000254/254139/Letter_from_Mayor_Kadokawa(ENG)rev.pdf

[4] https://tsdr.uspto.gov/documentviewer?caseId=sn88479867&docId=AMC20190628072307#docIndex=1&page=1

[5]http://www.mondaq.com/article.asp?article_id=824932&signup=true

[6] https://www.ipwatchdog.com/2019/07/31/countering-cultural-appropriation-trademark-laws/id=111746/

[7] https://www.jdsupra.com/legalnews/kim-k-s-kimono-a-snapshot-of-cultural-36889/

[8] https://www.trademarknow.com/blog/hands-off-my-heritage-cultural-appropriation-and-trademarks

[9] campaignindia.in/article/weekend-blog-kim-kardashian-and-the-kimohno/452920

[10] https://www.jdsupra.com/legalnews/kim-k-s-kimono-a-snapshot-of-cultural-36889/

The Conundrum of The Blue-Silver Colour Mark of Red Bull

Ever since this Australian energy drink, hit the market in 1987, people everywhere, consumers or non-consumers could instantly relate it to a tall and slim blue-silver can. Recently, after a series of unsuccessful appeals, the CJEU finally, in the case of Red Bull GmbH v. EUIPO upheld the EU General Court’s decision and stated that this abstract color combination is not eligible for a trade mark.

BACKGROUND OF THE CASE

Red bull successfully got two of its trade mark registered under class 32 of the Nice Classification[i]; one in 2002 and the other in 2010 for the color combination blue-silver. To, show that this trade mark aided in the distinctive character acquired by the energy drink, it submitted descriptions stating- “Protection is claimed for the colors blue (RAL 5002) and silver (RAL 9006). The ratio of the colors is approximately 50%–50%.” (About the first mark registered in 2002) and “The two colors will be applied in equal proportion and juxtaposed to each other, Blue (Pantone 2747C), silver (Pantone 877C).” (Concerning the second mark registered in 2010).[ii]

It was only in 2013, that the court’s doors were knocked by a Polish Company, Optimum Mark, stating that both the trade marks of Red Bull are invalid. It contended that the first mark should be declared invalid as it failed to meet the requirements under Article 7(1)(a) Regulation 2017/1001 (EUTMR)[iii] since its graphic representation did not systematically arrange the colors by associating them in a predetermined and uniform way. Further, the description as per which the ratio of color was ‘approximately 50%–50%’, allowed for numerous combinations, with the result that consumers would not be able to make further purchases with certainty. As for the second mark in addition to the ground raised above of failing to meet the requirements under Article 7(1)(a) EUTMR, the word ‘juxtaposed’ was contended to have myriad meanings and the description of the trade mark did not indicate the type of arrangement in which the two colors would be applied to the goods and was therefore not self-contained, clear and precise.[iv]

Before approaching the CJEU, the case passed through numerous doors, starting with the EUIPO Cancellation division, which declared both the marks to be invalid as they were not sufficiently represented in a clear and precise manner. Later the decision was appealed before the First Board of Appeal of EUIPO which decided to dismiss the appeals completely. And finally, before reaching CJEU, it was appealed before the EU General Court, which upheld the decision given by the Cancellation Division.[v]

THE CASE BEFORE CJEU

The appeal by the Red Bull before the CJEU was based on five grounds-

  1. The principles of equal treatment and proportionality in connection with Article 4 and Article 7(1)(a) EUTMR,
  2. Article 4 and Article 7(1)(a) EUTMR,
  3. The principle of respecting legitimate expectations
  4. The principle of proportionality, and
  5. Article 134(1) and Article 135 of the Rules of Procedure of the General Court.[vi]

Both the parties argued on all the five grounds, after which the CJEU recorded its findings on each of them individually; however, it is the second ground of appeal which formed the cornerstone of the judgment, wherein Red Bull stated that the General Court has erred in interpreting the case of Heidelberger Bauchemie (C‑49/02)[vii] by holding that marks which contain an abstract combination of colors should in specific state the spatial arrangement of the colors in question, and thus concluded that the graphic representation of the mark of red bull in the present case was not precise and properly represented. According to red bull, the above-mentioned judgment should have been interpreted in the context of circumstances of that case only and should have not been applied here.

The CJEU held that based on precedents and the case interpreted by the General Court, it is clear that the registration of a mark which allows for a plurality of reproductions that are neither determined in advance nor uniform, is incompatible with Article 4 of Regulation No 207/2009. Though the marks in the present case were distinctive they failed to meet the criteria of Article 4 of Regulation No 207/22009, and thus the General Court did not err in rejecting this ground of appeal.

As for the first ground the court held that the General Court has infringed neither the principle of proportionality nor the principle of equal treatment. The fourth ground of appeal was rejected on the ground of it being admissible as a new plea, as a plea raised for the first time in an appeal before this Court must be rejected as inadmissible. Further, since the first four ground of appeal was rejected, the last ground did not stand before the court based on the observation in the case of Internationaler Hilfsfonds v. Commission, C‑554/11[viii] wherein it was held that “Where all the other grounds of an appeal have been rejected, any form of order sought concerning the alleged unlawfulness of the General Court’s decision on costs must be rejected as inadmissible pursuant to that provision”

CONCLUSION

The CJEU by upholding the decision of the General Court has clarified for once and all that in cases concerning trade mark of abstract color combinations, merely showing distinctiveness added by it to the product is not enough, as these marks can result in numerous combination of colors and create confusion for customers. This judgment is a turning point for such cases as it not only clarified, that till the time a color mark can be subjected to myriad formations and interpretations which are neither predetermined nor static in all situations it would not be compatible with the EUTMR but also took away the rights of red bull to file a trade mark infringement suit for these marks. It can, however, still resort to the passing off remedy under common law.

Author: Shatakshi Shukla, B.A. LLB (H), 5th year, Rajiv Gandhi National University of Law, Patiala, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1]https://www.wipo.int/classifications/nice/nclpub/en/fr/?basic_numbers=show&class_number=32&explanatory_notes=show&lang=en&menulang=en&mode=flat&notion=&pagination=no&version=20190101

[2] https://www.udl.co.uk/insights/can-red-bull-trade-mark-a-blue-and-silver-colour-combination

[3] https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32017R1001&from=EN

[4] Red Bull GmbH v. EUIPO ECLI:EU:C:2019:641 Para 20.

[5] https://www.lexology.com/library/detail.aspx?g=9bd57408-dd81-4f8b-af8b-bf6f9bb390e1

[6] Red Bull GmbH v. EUIPO ECLI:EU:C:2019:641 Para 30. http://curia.europa.eu/juris/document/document.jsf?text=&docid=216554&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=4908078

[7]Heidelberger Bauchemie (C‑49/02)

[8] Internationaler Hilfsfonds v. Commission, C‑554/11, EU:C:2012:629, paragraphs 38 and 39

Amway India Enterprises Pvt. Ltd. v. 1Mg Technologies Pvt. Ltd. &Anr.

The Plaintiff has filed the present case in front of the Delhi High court with an allegation that the defendant is selling their product ultra vires the direct selling guidelines and that too illegally. The plaintiff seeks perpetual and mandatory injunction restraining the Defendants from committing tortious and illegal acts and indulging in unfair competition as also damages.

Amway India Enterprises Ltd. – the Plaintiff, is the wholly owned subsidiary of Amway Corporation (now known as Alticor, Inc.), headquartered in Ada, Michigan, USA, founded in 1959 and is one of the world’s largest direct selling companies in the world.

On November 08, 2017 the plaintiff was given the news that his products are being sold without authority. Therefore, on 9th November the Plaintiff gave out a statutory warning in the newspaper regarding the same. Later in May, 2018 the plaintiff got to know that their products are being sold by medical shops without the written permission of the plaintiff. As a result of which an investigation started in which it was found out that these medical shops are selling the products illegally and without authorization after removing the unique codes placed on the lid of the products, also without issuing invoice and not providing benefit of Plaintiffs Return/Refund Policy.

Counsel for the plaintiff also alleged that such a sale by these medical shops was a direct infringement of the Direct Selling Guidelines, 2016[1] by the government of India. The plaintiff’s prayed that the defendants were making profits out of the product of plaintiff illegally and hence the defendants should be restrained from carrying out such illegal activities.  Amway also gathered information about various products of theirs being advertised and sold on various e-commerce platforms without their consent which was in violation of the guidelines. The plaintiff contended that the way their products were being sold could also mean that the products are not genuine and may in fact be tampered. Plaintiff even addressed these e-commerce entities with cease and desist letters. Thus, the plaintiff called upon all the e-commerce websites to remove any reference to Amway on their websites including advertising Amway products and cease and desist from displaying any of Amway’s products on the said portals.

Apart from Amway, Oriflame and Modicare were the two other direct selling entities i.e plaintiff’s claiming interim injunction restraining the e-commerce platforms and the sellers on these platforms from selling their product without the plaintiff’s consent.

Modicare had a similar case to that of Amway.  Modicare is a FMCG company which sells its product through a direct selling entity. They have been registered as per the direct sale guidelines. The only separate thing with Modicare is that they do not happen to have unique number on their products. Sometime in June, 2016 Modicare found their product being sold on Amazon without the permission of the Plaintiff. Modicare then filed the present suit against Amazon, contending that the unauthorised sale of the plaintiff’s products on Amazon is impermissible, illegal, and unauthorised. The grounds taken by Modicare are similar to the grounds raised by Amway[1].

Oriflame, the third plaintiff of the case filed the present case ag

ainst Amazon contending that they seek permanent and mandatory injunction restraining the Defendants from illegally selling Oriflame’s products and for damages, The case of Oriflame is that it is engaged in the business of manufacturing and selling of cosmetics and wellness products through a network of its direct sellers called Consultants, who sell the products direct to consumer[2]

Following were the questions of law in front of the Hon’ble court:

i) Whether the Direct Selling Guidelines, 2016[3] are valid and binding on the Defendants and if so, to what extent?

ii) Whether the sale of the Plaintiffs‟ products on e-commerce platforms violates the Plaintiffs‟ trademark rights or constitutes misrepresentation, passing off and results in dilution and tarnishes the goodwill and reputation of the Plaintiffs‟ brands?

iii) Whether e-commerce platforms are ―intermediaries‖ and are entitled to protection under the safe harbour provided in Section 79 of the Information Technology Act[1] and the Information Technology (Intermediary Guidelines) Rules of 2011[2]?

iv) Whether e-commerce platforms such as Amazon, Snapdeal, Flipkart, 1MG, and Healthkart are guilty of tortious interference with the contractual relationship of the Plaintiffs with their distributors/direct sellers?

v) What is the relief to be granted?

The court in its judgement had to say the following to the parties. This Court has held above that the use of the Plaintiffs’ marks and the sale of the products without the consent of the Plaintiffs is in violation of the Plaintiffs’ trademark rights and results in passing off, misrepresentation and dilution. The sale of the Plaintiff’s products also violates the Direct Selling Guidelines, which are valid and binding.

The Direct Selling Guidelines are law. While the Defendants’ platforms and sellers insist on their Article 19(1)(g) rights being jeopardised, what is lost sight of is the fact that the Plaintiffs‟ right to carry on business is being affected. It is being jeopardized in view of the large-scale violations on the e-commerce platforms. There is a reasonable apprehension that the direct distribution network of the Plaintiffs may be affected. As per their own policies, sale on e-commerce platforms of unauthorised, tampered products is impermissible. The same could also completely destroy the goodwill of the Plaintiffs.

The defendants are willing to assure that if and when the plaintiffs inform them about any unauthorised sale of Amway products being sold on its platform, they would take immediate steps to take down all such Amway products[3].


Author: Madhur Tulsiani, L. L. B. IInd Year, Rajiv Gandhi School of Intellectual Property Law, I. I. T. Kharagpur , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] Clause 3, 4and 5 of the Direct Selling Guidelines, 2016 : https://consumeraffairs.nic.in/sites/default/files/file-uploads/direct-selling/Direct%20Selling%20Guidelines%20Final%20_0.pdf

[2] https://www.spglobal.com/marketintelligence/en/news-insights/trending/wFvz5ofYx5aLPZC2Fey4CA2

[3] https://timesofindia.indiatimes.com/business/india-business/hc-restrains-e-commerce-firms-from-selling-direct-sellers-products-without-consent/articleshow/70145080.cms

[4] https://consumeraffairs.nic.in/sites/default/files/file-uploads/direct-selling/Direct%20Selling%20Guidelines%20Final%20_0.pdf

[5] https://indiacode.nic.in/bitstream/123456789/1999/3/A2000-21.pdf

[6] https://www.wipo.int/edocs/lexdocs/laws/en/in/in099en.pdf

[7] https://economictimes.indiatimes.com/industry/services/retail/amway-takes-flipkart-to-court-for-illegally-selling-its-goods/articleshow/66279701.cms