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Starbucks Trademark “Frappuccino” Stays Protected

In the case of Starbucks Corporation v. Lol Café & Anr, the Delhi High Court awarded Starbucks (“Plaintiff”) legal costs in its trademark infringement suit restraining the Defendants from infringing and/or passing off the Plaintiff’s registered trademark “Frappuccino” or any other similar trade mark in relation to their goods and services.

Starbucks Corporation, an American lifestyle-brand company incorporated in 1985, offered under its registered trademark, “Frappuccino,” a hand-crafted blended cold beverage worldwide. The mark is used in over thirty thousand Starbucks stores in over 80 countries and territories and is distributed through multiple third-party grocery, retail, and wholesale stores globally.

In 2011, Starbucks opened retail stores in India through an equity joint venture with Tata Coffee Ltd. and obtained the registration of “Frappuccino” in India under various classes. The Plaintiff asserted that the mark constituted invaluable intellectual property rights of the Plaintiff, which have been successfully protected across the globe.

In November 2018, the Plaintiff was made aware of the opening of a café/restaurant in Jaipur, Rajasthan that offered a beverage named “Brownie Chip Frappuccino”. This was being sold without the Plaintiff’s permission, authorisation, or license. For promotion and advertisement, the defendants used the mark on menu cards and third-party listing services such as Zomato and EazyDiner. Further, the Defendants failed to respond to the cease-and-desist notice sent in December 2018. Soon after, the Defendants agreed to cease using the mark via a telephonic conversation; however, an internal investigation revealed this was not the case, hence the present suit.

The Court noted that despite serving notice, the Defendants did not reply or appear to contest the suit. The Court attested to the Plaintiff having a worldwide reputation in the said mark. The Court ascertained that the Defendants’ adoption of an identical mark was intended to deceive an unwary consumer and ride upon the mark’s reputation. The Plaintiff also uses the mark with a prefix like “Java Chip Frappuccino” for its beverages, similar to the Defendants usage.

Therefore, the Court held that the adoption of the mark by the Defendants was dishonest and amounted to infringement of the Plaintiff’s trademark, also resulting in the passing-off of the goods as those of the Plaintiff. Apart from the Court fee, the Plaintiff had prayed for an “Advocate fee” by filing a certificate in the amount of Rs. 13,38,917.85. This amount was awarded to the Plaintiff against the Defendants by the Delhi High Court.

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Vogue Institute Unlikely to be Confused with Vogue Magazine: Karnataka High Court

In the case of Vogue Institute of Management & Ors. Vs. Advance Magazine Publishers Inc, the Karnataka High Court granted Vogue Fashion Institute relief against the claim of trademark infringement instituted by the popular American fashion magazine, Vogue.

Vogue, published since 1892, had registered its trademark “Vogue” in India under Class 16. In 1998, it instituted a suit for infringement and passing off against a fashion training institute operating in India under the name and style of “Vogue Institute of Fashion Technology.” Consequently, the Institute was restrained from using the trademark ‘VOGUE’ as a part of their name and trading style by a permanent injunction issued by the District Court.

On appeal, the Karnataka High Court differed in its opinion from the trial court and the injunction was set aside. The High Court considered whether the mark was likely to deceive or confuse the public into buying the defendant’s goods or services as if they were connected to the Plaintiff’s goods and services. The Court observed that the plaintiff’s trademark did not cover the defendants’ activity of running a fashion institute and therefore did not amount to passing off.

Furthermore, the court held that merely asserting a trademark’s transborder reputation was insufficient to conclude reputation besmirching. In the present case, Plaintiff failed to plead and prove the twin concepts of goodwill and business to demonstrate that it had acquired a business reputation in another domain that entitled it to legal protection in India.

To decide on this matter, the Court relied on the education, intelligence, and degree of care of the consumers who might avail themselves of the defendants’ services and the likelihood of their confusion with the Plaintiff’s goods. The Court held that the purchaser of the magazine is likely to know that the plaintiffs do not run any institute. Similarly, members of the Defendants’ institute are unlikely to mix up the institute’s affiliation with the magazine.

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General Court of EU Allows L’Oréal to Continue With Single-Letter Mark

In the case of L’Oréal v. European Union Intellectual Property Office (EUIPO), the General Court of the European Union held that for the protection of single marks consisting of two signs, the trademarks must not be compared on their dominant elements alone. In holding this, L’Oréal was granted the right to continue using its mark “K Water” as it differed from another cosmetic business that owned the mark “K.”

L’Oréal had applied for the figurative trademark “K” below, which was mentioned as “K Water” for hair cosmetics in Class 3. A prior owner of the single-letter figurative trademark “K,” protected for the sale of shampoos under Class 3, filed an opposition against L’Oréal’s application. L’Oréal claimed that under Article 8(1)(b) of the European Regulation 2017/1001 (EUTMR), there is a likelihood that the two trademarks would cause confusion.

In the first instance, EUIPO’s opposition division rejected the opposition, stating there was no likelihood of confusion. An appeal was filed by the owner of the older trademark, which was upheld by the office’s board of appeals. Further, L’Oréal filed an action before the General Court alleging infringement of Art. 8(1)(b) of EUTMR. The Court annulled the decision again by denying a likelihood of confusion between the two marks.

The Court held that in deciding whether the opposed trademarks are similar, the marks must be examined as a composite trademark, which can be dominated by one or several components. While both the letters are K and hence similar, L’Oréal’s “K Water” lends a secondary overall impression that is a significant and notable part of the whole trademark. The Court held that these elements could not be disregarded when comparing the two signs. It was also stated that the two signs were not entirely similar as the graphic and stylistic differences were visible, which will be helpful to the public in distinguishing the two brands from each other. 

Single-letter trademarks are recognised under Article 4 of the EUTMR, allowing courts to assess a mark’s distinctiveness. In the present case, the single-letter mark had a degree of distinctiveness as it was stylised and combined with other relative figurative elements, which affords it a de facto monopoly.

The Court held that a single-letter trademark could not be granted protection in such broad terms, even within the global assessment of the likelihood of confusion. Therefore, the Court held that single-letter trademarks could not be successfully opposed to trademarks of the same letter unless there were relevant similarities between both signs. Stylised single-letter trademarks have a broader scope of protection due to their distinctiveness, whereas minimally stylised trademarks enjoy a low distinctive character.

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Pikashow App Blocked on Allegations of Copyright Infringement

In the case of Star India Pvt. Ltd. & Anr. V. Pikashow Application and Ors., the Delhi High Court ordered the blocking of the mobile streaming application Pikashow in the case of copyright infringement alleged by one of India’s leading entertainment companies.

In the present case, Star India Pvt. Ltd. and Novi Digital Entertainment Pvt. Ltd. (“Plaintiffs”) had filed a suit seeking a permanent injunction and reliefs for the rendition of accounts, damages etc., from the mobile streaming application. The Plaintiffs contested that the app Pikashow was illegally allowing piracy of well-known content on OTT platforms by permitting streamers to access copyrighted content freely on the Internet.

Aggrieved by the blatant piracy, the plaint stated that the app could be downloaded only from Telegram and not from established app stores like the Google Play Store or iTunes. This was proof of its circumvention tactics to provide copyrighted content free of charge. It was also stated that the app had already received over 500 complaints and cease-and-desist letters regarding the app and its domain. The Plaintiff also contended that despite the court issuing blocking orders, newer URLs that are privacy protected and do not provide details about the registrants were created to disseminate infringing content.

The Court held that the Plaintiff made out a prima facie case depicting the rogue nature of the apps that beckoned the Court to grant an interim injunction to prevent the streaming of infringing content. Further, the Court held that the balance of convenience was in the Plaintiff’s favour owing to the loss they would suffer if the Defendants were not injuncted.

The Court granted an interim injunction restraining the Pikshow app and its owners/operators from making it available through any domain names or websites mentioned in the plaint. The app was also restrained from being broadcast, accessed, or downloaded.

The Court asked GitHub India to disclose details regarding the name of individuals and entities, their email addresses, phone numbers and bank account details within one week. The Court also directed the Department of Telecommunications and the Ministry of Electronics and Information Technology to issue blocking orders against the Pikashow app along with its source domains.

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KA AAR: No GST on Sale of Site from Developed Land

The applicant was unregistered Individual under GST who owned 3 acres of land in Chitradurga District, Karnataka. The applicant applied for permission from Government Authorities to convert the land for residential usage.

The applicant developed the land as per regulations of the District Town and Country Planning Act. The development of Land included formation of roads, rainwater drains, installation of electricity cables, water pipes, sewerage lines, borewells for supply of water, construction of water tank for storage and supply of water, setting up of a power sub-station and establishment of connection from Electricity Board for supply of electricity, etc.

Without providing these basic amenities, the concerned authorities would not grant permission to sell the plots to a third party for the purpose of the construction of houses.

Queries:

 

The applicant sought an advance ruling for the following questions:

  1. Whether GST would be applicable for the consideration received on the sale of sites? If yes at what rate and on what value?
  2. Whether GST would be applicable for the advance received towards sale of sites? If yes at what rate and on what value?
  3. Whether GST would be applicable on the sale of plots after the completion of works relating to basic necessities?
  4. If GST would be chargeable on any of these transactions, could the applicant collect the GST from the prospective buyers?
  5. If GST would be chargeable on any of these transactions whether the applicant is eligible for claiming the Input Tax Credit that they pay on the expenses, they incur on development?

Ruling:

 

At the outset, the Karnataka AAR analysed whether the sale of sites/plots with basic necessities would fall under Entry No. 5 of Schedule III of the CGST Act, 2017. Referring to the CBIC circular no. 177 dated 03/08/2022, the AAR held that the sale of developed land is also the sale of land and is covered under Entry No. 5 of Schedule III of CGST Act, 2017. Accordingly, AAR concluded that the sale of site from developed land will not attract GST.

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Bombay HC Refuses to Vacate Interim Relief to Mumbai’s Haji Ali Juice Centre

In the case of Asma Farid Noorani v Haji Ali Fresh Fruit Juices and Ors, the Bombay High Court refused to vacate the ex-parte interim relief granted to Asma Farid Noorani (Plaintiff), who runs Haji Ali Juice Centre in Mumbai against Haji Ali Fresh Fruit Juices (“Defendants”) in a trademark infringement suit.

In this case, the Plaintiff’s father had opened a juice centre in 1971 overlooking the Haji Ali Dargah and adopted the mark “Hajiali Juice Centre” in 1976. The word mark and the label “Hajiali Juice Centre” and the device of a red apple was registered in Class 43 and 32 in 2010 and 2001, respectively. Given the brand’s popularity, the Plaintiff contended that many outlets had copied the name to capitalise on their goodwill.

The Defendant was using the name and mark “Haji Ali Fresh Fruit juices” with the device of a red apple without any authorisation from the Plaintiff. Owing to the urgency of the matter, the Court granted the Plaintiff ad-interim relief as, as the Defendant’s was likely to cause confusion amongst the consumers. The Defendant, having filed their response, stated that the Plaintiff was suppressing facts and relevant material regarding earlier disputes and prior litigation with Defendant relating to the matter. 

The Defendant claimed that “Haji Ali” are Publici juris (of public right) and that the Plaintiff cannot claim exclusivity to the same. Further, they claimed that since the Plaintiff had consented to the presence of the Defendant with the same mark after being made aware of an outlet with the same name in Ernakulam, the Plaintiff cannot pursue the matter any further. The Defendant also argued that there are several entities that have misused the mark, and the Plaintiff cannot presume that there is a link between the establishments.

The Court held that there isn’t enough information in the public domain that the Plaintiff can access to prove that the establishments are owned by different firms/people. It further stated that the Plaintiffs were not suppressing facts as the earlier suits remained pending and were dismissed in default. The Court held that the concept of Publici Juris will not hold as the Defendant themselves wanted to have trademark rights over the name “Haji Ali” and that the Plaintiffs had resisted the misuse of the name by initiating litigation in the past.  

Further, the Court held that on a prima facie level, the marks are identical and deceptively similar; hence the Plaintiff is entitled to protection.

News

Deadline for filing Form 10A further Extended till November 25

The CBDT has once again extended the time limit for charitable organizations to file Form 10A for registration under Section 12AB of the IT Act, 1961. The initially proposed due date was 30th June, 2021,  but after Circular No.22/2022, Form 10A is currently required to be filed on or before 25th November, 2022.

The Circular states that the said extension has been granted on consideration of difficulties reported by the taxpayers and other stakeholders in the electronic filing of Form No. 1 OA. Therefore, with a view to avoid ‘genuine hardships,’ that Board condoned the delay up to 25th November, 2022.

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TATA Sons Fail to Protect Trademark in Singapore Courts

The Intellectual property office of Singapore (IPOS) recently denied TATA Sons, trademark rights based on their “well-known” status. TATA Sons is the principal investment holding company of Indian multinational TATA group.

The leading Indian company was unable to pre-empt the registration of “Tata Harper”, a cosmetic, toiletry and skincare company operating in Singapore.  

The applicant was using the mark “Tata Harper” in Singapore and in foreign markets. TATA Sons opposed this registration by citing Section 8(4) of the Singapore Trade Marks Act 1998 which provides protection against damages, dilution or unfair advantage and Section 8(7)(a) which states that a mark shall not be registered if its use in Singapore is liable to be prevented by the law of passing off.

IPOS however, failed to see merit in TATA Sons’ case and stated that both the marks were more dissimilar than similar and that TATA Sons had failed to convince the court of the “connection” and “damage” the applicant’s trademark would cause to TATA Sons. Further, IPOS held that there was no sufficient evidence presented by TATA Sons to prove that consumers would  be confused or affected by the similarity of both the marks.

Since, TATA Sons failed to establish how the applicant’s mark would misrepresent and damage the goodwill of TATA Sons, they could not be granted a de facto monopoly on “TATA” as per the Trademark Laws of Singapore. However, IPOS acknowledged the lack of a coherent legal jurisprudence surrounding legal rights conferred on proprietors who have achieved a “well known” status for their trademark and hoped for more clarity from the Courts of Singapore in future.

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New Design and Camouflage Pattern Uniform Registered as Intellectual Property by Indian Army

The Indian Army recently registered its newly unveiled Digital Pattern Combat Uniform for Indian Army Soldiers with the Controller General of Patents, Designs and Trademark, Kolkata. The newly improved uniform was made lighter, stronger, and breathable with quick drying capabilities for easier maintenance of the combat uniform. The uniform was also enhanced to be inclusive of gender-specific modifications for women in combat.

With registered Intellectual Property Rights (IPR) over the Design and Camouflage Pattern, unauthorised manufacture by any vendor is illegal as the Indian Army can enforce exclusive rights to the design and file an infringement suit before any competent court of law. Remedies against the civil suit may be granted as interim and permanent injunctions as well as damages.

An Intellectual Property Facilitation (IPC) Cell was set up in the Department of Defence Production to provide advisory regarding patents, trademarks, designs, and copyright. This was done under the vision of “Make in India’ to achieve self-reliance in the defence sector and build cost-effective indigenous products. The Indian Army is working with the National Institute of Fashion Technology (NIFT) in Delhi to train civil and military tailors in stitching the new uniform. 

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Ministry of Finance Notifies IIPDF Scheme

On 3rd November 2022, the Ministry of Finance notified the IIPDF Scheme for Financial Support for Project Development Expenses of PPP Projects. 

Highlighting the purpose of the Scheme, the notification states that, “The Department of Economic Affairs (DEA) has identified IIPDF Scheme as a mechanism through which Project Sponsoring Authority will be able to source funding to cover the PPP transaction costs, thereby reducing the impact of costs related to procurement of TAs on their budgets. From Government of India‘s perspective, the IIPDF Scheme will increase the quality and quantity of PPP projects that are processed through the Central or States‘ project pipeline.

The key offerings of the Scheme are : 

  1. Funding under IIPDF Scheme can be for a maximum amount of Rs.5 Crore for a single proposal
    (Project TA/Seminar/Workshop/Professional Service Expenses, etc.). This funding shall be
    inclusive of any tax implications thereon and the total amount of funding under IIPDF Scheme,
    including taxes. Any funding requirement over and above Rs.5 Crore may be borne by the Project Sponsoring Authority itself.
  2. The cost of consultants/transaction advisors for a PPP project can be funded, where Consultants/TAs are appointed through a transparent system of procurement including from the list of empanelled TAs of DEA or from the list of empanelled TAs of any other Central Ministry/Department or State Government or on nomination basis, in accordance with the applicable GFR Rules.
  3. Funding under the IIPDF Scheme may not result in a successful PPP project as the success of a PPP project depends on various factors. 
  4. The IIPDF Scheme shall be administered by the Approval Committee (AC), which shall consist of;  Joint Secretary ISD, DEA – Chairperson, Representative of NITI Aayog, Deputy Secretary/Director (PIU), DEA – Member Secretary.