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India: Recorded Music Performance Limited applies for registration as a Copyright Society

August 7, 2018
VOL X
ISSUE No. 16
August 07, 2018

India: Recorded Music Performance Limited applies for registration as a Copyright Society

Sources: www.copyright.gov.in

The Copyright Office vide public notice dated May 22, 2018, has invited attention of general public and stakeholders to the fact that Recorded Music Performance Limited (herein after referred to as “RMPL”) has applied to the Registrar of Copyrights for registration as a Copyright Society in respect of Sound Recordings.

A copyright society is a registered collective administration society under Section 33 of the Copyright Act, 1957. A Copyright Society manages and protects copyrighted work by issuing or granting licenses in respect of any work in which copyright subsists or in respect of any other right given by the Copyright Act.

The details of the association of persons making the application as mentioned in the Copyright Application submitted to the Copyright Office are –

  • Sovan Lal Saha (Chairman)
  • Suresh Thangiah
  • Sitaram Agarwalla
  • Dewal Prashar
  • Deepak Bali
  • Sanjay Arjundas Wadhwa
  • Durgaram Choudhary

RMPL in its application dated March 01, 2018, claims to carry Copyright Business in respect of Sound Recording works as per Section 13 (1) (c) of the Copyright Act, 1957, to exercise and enforce on behalf of Members of the Company, being the Owners of Sound Recordings, in respect of any UTILIZATION of their work in any form.

As per Section 33 clause 3 of the Copyright Act, 1957, the Central Government shall not register more than one Copyright Society in respect of same class of work. However, if the said application is accepted then RMPL will be the second copyright society registered under the Copyright Act, after the Phonographic Performance Limited in respect of sound recordings.

The Copyright Office has invited objections/ suggestions from the general public/ stakeholders within 60 days from the publication of the notice.

The public notice dated May 22, 2018, along with the said copyright application and related documents can be accessed here.


India: 20-Year-Old Legal Battle between Amul and Anul finally concludes

Sources: www.districts.ecourts.gov.in

After a 20-year-old legal battle, Kaira District Cooperative Milk Producers Union Limited popularly known as Amul has successfully protected its trademark from Shri Shakti Dairy and Kuldeep Enterprises, who were held by the Commercial Court in Vadodara to be guilty of infringing Amul’s trademark by selling and marketing their products under names that were matching with Amul’s original tradename.

It was held by the Vadodara Commercial Court that the usage of the name “Anul” by the Defendants was an infringement of the Plaintiff’s trademark and brand name “Amul”. The reasoning used by the Court to arrive at this conclusion was that the Defendant’s tradename of “Anul” rhymed with the Plaintiff’s tradename “Amul” and was thus very likely to cause confusion in the mind of the consumers.

Brief Facts

  • In 1998, it was brought to the notice of Kaira District Cooperative Milk Producers Union Limited, known as Amul Dairy and the Gujarat Cooperative Milk Marketing Federation Limited (hereinafter referred to as ‘the Plaintiffs’) that a private dairy named Shri Shakti Dairy (hereinafter referred to as ‘the Defendant’) based in Naroda was selling milk pouches very similar in name and design to its trademarked brands ‘Amul Taaza’ and ‘Amul Shakti’. The copied pouches were being sold by Kuldeep Enterprises as Anul Taaza and Anul Shakti.
  • After they learned of it, the Plaintiffs sent a legal notice to the Defendant as well as Kuldeep Enterprises, who were marketing “Anul Shakti” and “Anul Taaza”.
  • The Defendant continued to sell their products with the similar brand names over the years.
  • The Petitioner then moved to the District Court in Nadiad against them.
  • Later, the case was transferred to Vadodara where a new Commercial Court had been set up.

Issues

  • Whether Defendant’s actions of selling and manufacturing their goods by the name of “Anul” under the names “Anul Shakti” and “Anul Taaza” was an infringement of the trademarks of Amul?

Plaintiff’s Contention

  • It was contended that the Defendant was engaged in the selling and manufacturing of items named as “Anul Taaza” and “Anul Shakti”, which were deceptively similar to Amul’s well-known brands “Amul Taaza” and “Amul Shakti”.
  • It was argued that the products of the Defendant were sold at village areas under the name “Anul” where the village folk could very easily get confused as it would be difficult for them to differentiate between the two.
  • It was also argued that the color scheme used by Anul on their dairy pouches was also similar to that of Amul’s.
  • It contended that the Defendant’s actions of selling their products under the deceptively similar name of Anul, using similar get up in the packing and using an identical color scheme highlighted the Defendant’s malafide intention of imitating the trademark and reputation of the Plaintiff.

Defendant’s Contentions

  • It was contended that there was no scope for confusion to be caused to the customers because the names used for its brand was phonetically different.
  • It was submitted that there were others as well who were imitating the labels of the Plaintiff Amul, and thus, Amul Dairy did not have any monopoly right on the said label and trademark.
  • It was argued that the case was misconceived because the Defendants have themselves coined and invented the term “Anul”.

Court’s Decision

  • It held that the brand names “Anul Taaza” and “Anul Shakti” rhymed with the names of the products of the Plaintiff. Therefore, the brand names were deceptively similar to Amul’s brand name and was likely to cause confusion among customers.
  • The Court took note of the fact that there were several documentary evidences of the registration of Amul and its milk brands that were produced. It was thus held to be clear that “Amul” is the registered trademark of Amul Dairy. Moreover, the Defendant failed to furnish any evidence to prove that “Anul” was coined and invented by it.

Thus, the Defendant, its marketing firm along with their agents, dealers and distributors were injuncted from manufacturing, processing, marketing and packing under the impugned labels. The Defendants were restrained from selling their dairy products under the name “Anul”, “Anul Shakti” and “Anul Taaza” or any other deceptively confusing trade name.


India: Madhya Pradesh loses GI Tag, fails to join Basmati League

Assistant Registrar of Geographical Indications Registry, on March 15, 2018, issued an order excluding the state from the area officially demarcated for cultivation of Basmati and rejected its claim as being original and unique basmati growing region.

In November 2008, Agriculture and Processed Food Export Development Authority (hereinafter referred to as ‘APEDA’) filed an application for Geographical Indication registration of Basmati grown areas – the entire states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir.

Geographical Indications Registry asked APEDA to include Madhya Pradesh, Rajasthan and Bihar in December 2013.

In February 2014, APEDA challenged the said order by contending that Madhya Pradesh does not fall within the ‘Indo-Gangetic Plain’.

Further, in February 2016, Intellectual Property Appellate Board ordered the GI Registry to grant recognition for basmati rice grown only in Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, and parts of western Uttar Pradesh and Jammu & Kashmir and ordered Geographical Indications Registry to reconsider afresh only the plea of inclusion of 13 districts of Madhya Pradesh.

Mr. Chinnaraja G Naidu, Assistant Registrar, Geographical Indications Registry, Chennai rejected the claim vide its order dated March 15, 2018, on the ground that the state failed to satisfy the fundamental requirement of “popular public perception” of basmati cultivation in Madhya Pradesh as the documents and evidence filed by the state showed the importance, special characters of rice cultivated in Madhya Pradesh but not the basmati cultivation in the traditional growing area.[1] Further Madhya Pradesh does not fall within the ‘Indo-Gangetic Plain’.

The said order is expected to impact not just farmers of 13 districts of Madhya Pradesh — Morena, Bhind, Gwalior, Sheopur, Datia, Shivpuri, Guna, Vidisha, Raisen, Sehore, Hoshangabad, Jabalpur and Narshinghpur but also companies which source significant quantities of basmati from MP and are selling products under the Basmati tag.

The Madhya Pradesh State government is most likely to challenge the said order in the Madras High Court.

Further farmers in Madhya Pradesh can continue growing the premium rice. However, it will not be called Basmati. The GI rights for basmati cultivation will be only limited to-


Basmati

Registration No.

Geographical Indications

State


145

The entire states of Punjab, Haryana, Delhi, Himachal Pradesh,
Uttarakhand, and parts of western Uttar
Pradesh and Jammu & Kashmir

Various other states in India, have secured registrations for their traditionally grown premium rice. Details thereof are as under:

Registration No.

Geographical Indications

State

17

Navara Rice

Kerala

36

Palakkadan Matta Rice

Kerala

81

Pokkali Rice

Kerala

186

Wayanad Jeerakasala Rice

Kerala

187

Wayanad Gandhakasala Rice

Kerala

205

Kalanamak Rice

Uttar Pradesh

242

Kaipad Rice

Kerala

470

Ajara Ghansal Rice

Maharashtra

478

Ambemohar Rice

Maharashtra

439

Joha Rice of Assam

Assam

531

Gobindobhog Rice

West Bengal

530

Tulapanji Rice

West Bengal

[1]https://timesofindia.indiatimes.com/india/madhya-pradesh-loses-basmati-war-fails-to-get-gi-tag/articleshow/63334747.cms


India: Madras High Court on Defensive Trademark Registration

Sources: www.hcmadras.tn.nic.in

The Madras High Court in the case of N. Ranga Rao & Sons v. Shree Balaji Associates & Ors. held that N. Ranga Rao was not entitled to oppose the registration of Shree Balaji Associates’ mark. The Court further held that ‘Unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark. The words ‘Cycle’ and ‘Brand’ used in N. Ranga Rao’s mark were generic words, which were not been used in the class it was registered. Nobody can prevent others from using a mark by keeping it in one’s folds without making use of it.’

Brief Facts

  • M/s. N. Ranga Rao. (hereinafter referred to as ‘the Petitioner’) was engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. It was claimed to be a pioneer in the field.
  • It was submitted by the Petitioner that it had honestly conceived and adopted the trademark ‘CYCLE BRAND’ with the device of ‘Cycle’ in 1954 and had been continuously using the said trademark domestically and internationally without any interruption from anyone.
  • It was brought to the notice of the Petitioner that an application for registration of identical trademark in Class 21 was filed by Shree Balaji Associates (hereinafter referred to as ‘Respondent No. 1’) in respect of brooms. The application was opposed by the Petitioner.
  • The Deputy Registrar of Trademarks (hereinafter referred to as ‘Respondent No. 3’) allowed the opposition of the Petitioner and rejected the application filed by Respondent No. 1.
  • The Respondent No. 1 appealed before the Intellectual Property Appellate Board (hereinafter referred to as ‘Respondent No. 2’) against the order of the Respondent No. 3.
  • Vide order dated January 4, 2013, (hereinafter referred to as the ‘impugned order’) the Respondent No. 2 allowed the appeal filed by Respondent No. 1 thereby rejecting the opposition of the Petitioner.
  • Aggrieved by the same, the Petitioner thus filed the writ petition before the Madras High Court (hereinafter referred to as ‘the Court’) to restrain Respondent No. 1 from registering its trademark.

Issue

  • Whether the Petitioner was justified in objecting to the registration of the Respondent No. 1’s mark?
  • Whether the Petitioner had established that their CYCLE BRAND trademark is a ‘well known mark’?

Petitioner’s Contentions

  • It was contended that it had applied for the trademark registration of the mark ‘CYCLE BRAND’ in Class 3 and all the other classes to safeguard its interest. It also obtained registration of its labels including the trademark ‘CYCLE BRAND’ with device of Cycle under the Copyright Act, 1957.
  • It was submitted that the trademark was used continuously and extensively since 1954 owing to which a substantial reputation and a valuable goodwill had been accrued to the Petitioner.
  • It further submitted that the trademark became one of the most sought-after brand in terms of reputation in India with respect to agarbathis, dhoop sticks, etc., and the consumers identify the trademark CYCLE BRAND with the device of Cycle only with the Petitioner and no one else.
  • It contended that Respondent No. 2 held that its trademark was a well-established brand in the agarbathi industry for over many decades.
  • It further submitted that its trademark consisted of both the word ‘Cycle’ and the device of ‘Cycle’ and Respondent No. 1’s trademark also had both the word “Cycle” and device of “Cycle”.
  • Highlighting Section 11 (10) (i) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) it contended that the only requirement was that the marks should to be identical or similar for a well-known trademark to be protected.
  • >It contended that even assuming without admitting that Respondent No. 2 had not determined its mark to be a well-known trademark, its mark deserved to be determined on account of the long, continuous and extensive use of the said trademark.
  • Highlighting Section 11 (10) (ii) it submitted that the Registrar needs to take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trademark while protecting as well-known trademark, which was completely ignored by Respondent No. 2.
  • It submitted that when the two trademarks appear to be similar, the Court should look at the overall similarity and not just the minute cosmetic change made deliberately by the Respondent. Looking at the overall similarity, the Respondent No. 1 had not only copied the word ‘cycle’ but also the device of ‘Cycle’.

Respondent Contentions

  • Respondent No. 1 contended that it had honestly adopted the mark with particular artistic work design and get up for brooms and other articles for cleaning purposes and had since been using the mark extensively, thereby making the mark distinctive.

  • Respondent No. 1 further submitted that the device of Cycle was common to trade since large number of manufacturers were using it for various goods and services. It also submitted that the device of ‘Cycle’ used by the Petitioner was dissimilar from its image of a Ladies Cycle.

  • It further argued that the Petitioner was using the mark only for Agarbathis under Class 3 and not for brooms or cleaning materials. However, it was using it only for brooms and other articles for cleaning purposes under Class 21. Therefore, the Petitioner cannot claim monopoly over a device of ‘Cycle’.

  • It also highlighted Section 46 of the Act and submitted that if a mark was registered without a bonafide intention to use the mark in relation to those goods for which the mark has been registered, or if the applicant fails to use the mark for a continuous period of five years and one month, the mark should be removed from the Register of Trade Marks.

  • It also threw light on the fact that the defensive registration was done away with under the Act and the concept of a well-known trademark was introduced. It was alleged that no evidence was adduced by the Petitioner to show that the Petitioner’s mark is a well-known mark.

Court’s Decision

  • The Court opined that the defensive registration in all the Classes and in particular in Class 21 is non-est in law since Section 47 of the Trade & Merchandise Marks Act, 1958 which dealt with Defensive Registration pertained only to invented words which have become well known and not to the devise (picture) of a ‘Cycle’ or even the Word ‘Cycle’, which are common to trade and not invented by the Petitioner.
  • The Court agreed that it was an undisputed fact that Respondent No. 1 had never used the trademark with reference to ‘Glasswares, domestic utensils, containers trap parts’, though they hold trademark registrations for the same.
  • Taking note of the decision in the case of Vishnudas Trading Vs. Vazir Sultan Tobacco co. Ltd,[1] it was held that non-user of the trademark should not be allowed to enjoy monopoly, otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide user of such common word.
  • On the question of defensive registration, the Court held that, ‘It was obvious that neither the word ‘Cycle’ or ‘Brand’ were invented words and so did not qualify for defensive registration. Further, a device of ‘Cycle’ cannot also be termed invented since ‘Cycle’ was a common use equipment and an image of a ‘Cycle’ cannot be claimed to be invented. Therefore, the Petitioner had no right in respect of the trademark ‘Cycle Brand’ or devise of ‘Cycle’ in respect of all them goods listed under the ‘Nice Classification’.
  • On the question of Petitioner’s mark being ‘Well-Known’, the Court held that, ‘A reading of Section 11(6) makes it clear that while considering whether the mark is a well-known trade mark, the relevant factors to be take into consideration are i) knowledge or recognition of the Trade Mark in relevant sections of the public as a result of promotion of the mark, ii) duration, extent and geographical area of use and promotion through publicity and iii) record of successful enforcement of the rights in the Trade Mark, in particular the extent to which the mark has been recognized as well-known by any Court or Registrar. In the instant case, no evidence was adduced by the Petitioner to show that the petitioner’s mark was a well-known mark.

[1]1997(4) SCC 201

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