IP owners benefit from the introduction of border control measures in India
In the last few years, a number of measures have been taken in India, both legislative and in the Courts, to improve the enforcement environment in the country. However, until May 2007 there were no border control procedures in place. This changed with the introduction of the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007. The Regulations, which introduce a system similar to that in force in most other countries, took India a step closer to compliance with the TRIPS Agreement.

The recordal system allows an IP owner, or his authorised representative, to file an application on the basis of its trade mark registration. Once the application has been accepted by Customs, details will be uploaded simultaneously in 36 ports throughout India. The recordal will be effective for a period of five years. During this period, stoms will monitor and notify the brand owner of any apparently fringing/counterfeit goods being imported into the country.

The last six months has seen the new Rules yielding results with a number of consignments being seized.

Wyeth Holding Corporation & Another v Burnet Pharmaceuticals (Pvt) Ltd in the Bombay High Court
In a suit for passing-off and trade mark infringement brought by Wyeth Holding Corporation (Wyeth), the Bombay High Court has granted an interim injunction restraining the Defendant (Burnet Pharma) from using the mark FOLV. The injunction order was based on Wyeth's registration and use of the mark FOLVITE. The Court dismissed the Defendant's argument that FOL stands for Folic Acid and 'V' for Vitamin. It held that each word must be taken as a whole and compared as a whole with the other. Wyeth's FOLVITE mark has no meaning in the English language. It is a registered mark and it is not open to the Defendant to question its validity in an infringement action. In coming to this conclusion, the Court noted that no explanation had been offered by the Defendant as to why it had changed its mark from FOLCACID, which it had earlier adopted and used, to FOLV.

Source: Website, Mumbai High Court

Supreme Court passes landmark judgment against Scotch Whisky Association

The Scotch Whisky Association, an industry body of distillers, blenders and exporters of Scotch Whisky, has experienced a setback in its campaign to protect Scotch Whisky in India.

In litigation spanning two decades, the Supreme Court overturned a decision of the Division Bench of the Madras High Court, which had upheld previous decisions of the Deputy Registrar and a Single Judge that the mark, PETER SCOT, was deceptive for use on Indian whisky and should be removed from the Register. The Supreme Court considered that the delay of almost twelve years on the part of the SWA amounted to acquiescence. Further, on the issue of deception, the Supreme Court expressed the view that it was 'concerned with the class of buyer who [is] supposed to know the value of money, the quality and content of Scotch Whisky. They are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.' The Court concluded that the Division Bench had reached the wrong decision and allowed the appeal.

It is understood that the SWA has filed an application for a review of the Supreme Court's decision on several grounds, including (a) that the facts of the case do not amount to acquiescence, and (b) that the factual conclusions of the Supreme Court were contrary to the uncontroverted evidence of likelihood of confusion and, indeed, of actual confusion, and the findings of fact by the lower courts and tribunal.

 

Source: Website, Supreme Court of India

Shell Brands International AG (SBI) protects its rights in the SHELL word mark
The Delhi High Court has restrained a local automobile spare parts manufacturer (Dass Exports and Imports), from using the mark SHELL, which was identical to Shell's house mark and trade name, in relation to automobile spare parts. The local manufacturer had filed applications for registration of the name as a trade mark. Interestingly, the High Court made the restraint Order, even though the Defendant was yet to commence use of the SHELL mark. It was encouraging to note that the Court recognised SBI's goodwill and maintained that the hardship that SBI would suffer, if an injunction were not granted, would be greater than any hardship the Defendant might suffer if an injunction
were granted.

Source: Website, Delhi High Court