News Update (July 2021)
Updated: Aug 6, 2021
1. Amazon launches IP Accelerator programme in India
On 5th July 2021, e-commerce giant Amazon announced the launch of its Intellectual Property (IP) Accelerator Programme in India. The Programme was first launched in the USA in 2019 and later expanded to Europe, Japan, Canada, Mexico. It garnered positive feedbacks after its pilot launch in India last year. Considering that the entire process of protecting IP can be complex and time-consuming, the programme aims at easing the process for sellers, especially small and medium-sized sellers with nascent brands. They can choose to engage with trusted IP experts and law firms for services like securing trademarks, protecting the brands and tackling infringement on Amazon.in and Amazon websites globally. The sellers do not incur any additional cost in accessing the IP Accelerator firm listings from the Service Network Provider (SNP) and can engage with the firms directly and independently on mutually agreed terms.
2. Delhi High Court directs the creation of Intellectual Property Division to deal with matters related to Intellectual Property Rights, notifies new nomenclature
As reported in April 2021, the Intellectual Property Appellate Board was abolished recently. On 7th July 2021, Delhi High Court issued directions to establish an Intellectual Property Division (IPD) to deal with matters related to intellectual property rights. The IPD of the Delhi High Court would specifically deal with:
All original and appellate proceedings, including Writ Petitions (Civil), Civil Misc. (Mains), RFA, FAO etc., relating to IPR disputes (except matters that are to be dealt with by a Division Bench);
All fresh filings in the various IPR categories;
IPR suits, revocation applications, cancellation applications, other original proceedings, appeals from the office of Registrar of Trade Marks, Controller of Patents, Copyright Registrar and all other proceedings which were previously maintainable before the IPAB under the Trade Marks Act, 1999; Copyright Act, 1957; Patents Act, 1970; Designs Act, 2000; Geographical Indications of Goods (Registration and Protection) Act, 1999; Protection of Plant Varieties and Farmers’ Rights Act, 2001 and Semiconductor Act 2000.
The IPD Delhi High Court Rules, which would govern the functioning of the IPD, are still being framed. Further, the High Court came out with nomenclature of the cases to be filed in the IPD, which came into force with immediate effect.
3. Department Related Parliamentary Standing Committee on Commerce presents Report on 'Review of the Intellectual Property Rights Regime in India’
The Department Related Parliamentary Standing Committee on Commerce, under the chairmanship of Mr. V. Vijayasai Reddy, presented a report last week before the Rajya Sabha on Review of the Intellectual Property Rights Regime in India. The Report addressed major challenges like a dearth of IPR awareness and IP financing and recommended ways to tackle them.
A few of the Recommendations were:
Undertaking a holistic review of the IPR policy.
Active participation of the State Governments in evolving strong IPR policies.
A comprehensive study of the benefits of improvement in IPRs for the economy.
Re-establishment of the Intellectual Property Appellate Board.
Creation of IP Fund and fostering IP Culture, especially in the remote regions of the country.
Establishment of an exclusive apex-level Institution for IPR development.
Disseminating IPR awareness amongst MSMEs, small businessmen, traditional artisans and craftsmen located in remote areas.
The Committee also recommended various interventions for building awareness about IPR, for instance, IPR Facilitation Centers in Tier-I, Tier-II and remote regions of the country, and introducing IP courses and curriculum in educational institutions.
4. Amul India wins trademark infringement case in Canada
Amul India moved the Federal Court of Canada against Amul Canada and a group of four other individuals. The group had created a fake LinkedIn page claiming to be Amul Canada, copied the trademark ‘Amul’, its logo, and even listed themselves as employees of Amul Canada. Amul contended that it had never licensed nor consented for neither Amul Canada nor any of the four individuals to use their trademarks and copyrights in any manner. Amul has acquired distinctiveness over time and holds a reputation within at least a certain segment of consumers of its dairy products in Canada. It had also satisfied all the elements of the ‘passing-off test’. Therefore, the Court ordered permanent restraint on Defendants from infringing Amul’s trademark and copyright. They were further ordered to pay Amul damages of $10,000 for actions contrary to the Trademarks Act, $5,000 for actions contrary to the Copyright Act and the costs in a lump sum of $17,733.
5. Dua Lipa sued for copyright infringement for posting a photo of herself
Dua Lipa is the latest entrant in the long list of celebrities sued for posting paparazzi photographs. In February 2019, Integral Images Inc snapped the singer at an airport and filed for copyright over the said photograph days later. However, in the period between the filing and the grant of the protection, Lipa posted the photograph on her Instagram account without seeking prior consent. Consequently, the company sued the singer earlier this month for copyright infringement. It claims that she knowingly posted the photograph and even benefitted financially through it. Along with seeking $150,000 as damages and a jury trial, the company also seeks an order enjoining her from further infringement.
6. Puma settles dispute over the usage of ‘Roar’ mark
Earlier this year, Brooklyn-based artist Christophe Roberts sued Puma for using his USPTO-registered ‘Roar’ mark. He claimed that Puma ripped off the mark to use on their clothing apparel line and in national ad campaigns targeting National Basketball League (NBA) consumers. In April, Roberts’ request for a preliminary injunction restraining Puma from using the mark was rejected. Later, Puma filed a counterclaim to invalidate Roberts' federal trademark registration. As per the latest reports, the parties have reached a negotiated settlement and have agreed to dismiss all previous claims and counterclaims. The exact details of the settlement are yet to be revealed.
7. Samsung India restrained by Bengaluru Court from using ‘Concierge’ mark
Dipali Sikand, the founder of Lesconcierges Services Pvt. Ltd. And Club Concierge Services (India) Pvt. Ltd, sued Samsung India and Story Experiences Private Limited for using the ‘Concierge’ mark. The said mark is duly registered and owned by Sikand. The plaintiff asserts that Samsung India misused the mark in various brochures, publicity materials, advertisements etc. in relation to the President’s Club (a loyalty program for dealers and distributors of Samsung). It is further claimed that by misusing the mark, the defendants are trying to piggyback upon the goodwill and reputation of the plaintiff. A City Civil Court at Bengaluru issued an ex-parte ad-interim injunction against Samsung restraining them from illegally using the mark till the date of the next hearing. At the same time, the Court opined that although there is a prima-facie case against the defendants for it to pass an ex-parte injunction order against them, they ought to be heard first. The hearing is to take place on August 5th, 2021.
8. South Africa and Australia confirm inventorship of an AI system
The question of awarding a patent recognizing an AI system as an inventor has plagued the IP Community for long. IP Offices around the world have contemplated the issue of granting inventorship to AI systems, for example, granting inventorship to DABUS, an AI system created by Dr Stephen Thaler for creating a food container based on fractal geometry. The USPTO, EUIPO and UKIPO have already rejected the patent application on the grounds that while DABUS created the invention, it cannot be called an inventor as it is not a natural person. In an interesting turn of events, South Africa and Australia recently recognized DABUS as an inventor and Dr Thaler as the rightful owner. On 28th July, South Africa published the said patent in its Patent Journey, and became the first country to take the step. On 30th July, the Australian Federal Court overturned the original decision of the Deputy Commissioner of Patents of the Australian IP Office which refused the decision. The International Bureau of WIPO published the international (PCT) application which formally recognizes DABUS as an inventor.
9. Spotify opposes registration of the mark ‘Opstify’
Sweden-based Spotify AB opposed a mark proposed for registration by Pennsylvania-based Opstify. Spotify claims that it has been using the registered mark ‘SPOTIFY’ since as early as 2008 and has developed valuable goodwill concerning the same. It further claims that the mark is widely recognized and considered distinctive and famous by the general consuming public. Spotify opposes the registration of the mark ‘OPSITFY’ on the grounds that if successfully registered, there is likely to be consumer confusion or mistake as to the source or origin of the services. It can lead the public to assume that Opstify is in some way connected with, sponsored by, or affiliated with Spotify.