Publication of Patent Application in India:
The owner of the global chain of furniture and home products stores has asked its legal team to initiate action against over two dozen small businesses across the country that have been selling products and services such as furniture, modular kitchen and packaging material under similar sounding names.
The retailer is also in no mood to excuse HR consultancies, spas and event management and advertising firms that are involved in businesses not connected with IKEA's own business.
In the name of protection and enforcement of its trademark, goodwill and reputation, the company's lawyers have already sought injunction orders from Indian courts against a dozen such firms to stop them from doing business, and more are in the offing. "In the past 3-4 months, we have become very aggressive in trying to protect IKEA's trademark, a popular brand name globally, in India," said SK Bansal, co-owner of KG Bansal & Company Associates, the law firm representing IKEA.
Bansal said injunction orders have already been sought against 15 parties, a mix of small and big companies located in Delhi, Mumbai, Hyderabad, Bangalore and Chandigarh. "Legal actions against a few individuals have also been taken who were trying to register theIKEA or a similar trademark in India," he said.
IKEA's move, however, is being seen by many as a vindication of their fear that allowing big foreign retailers into India will wipe out small businesses from the local economy. While some call it bullying, others say it is pure harassment. "If international companies coming to India means that small companies will start losing their business for unjustified reasons, it is unfortunate," said Krishna B Mariyanka, co-founder and director of Akiya Global, a Bangalore-based events and communications company.
In a 1,000-page legal notice, IKEA's lawyers have asked the founders of Aikya Global to remove the company's website, registered under the name Aikya, as it is phonetically similar to IKEA.
"We are totally surprised and zapped with this legal notice and feel that we have been bullied as there is no similarity between what IKEA does and what we do," said Mariyanka, who is preparing a legal response to the notice.
Bangalore-based professional staffing company IKYA Human Capital Solutions, which has an annual turnover of Rs 1,500 crore, has been sent a similar notice. "This is harassment and we will counter this legally," said Ajit Issac, founder of the company.
Issac holds 30% stake in IKYA Human Capital Solutions while the remaining is owned byThomas Cook Slamming IKEA's claim, Issac said his company's name is derived from Sanskrit, which means "oneness". "Besides, we are not into retail. Where is the question of misusing their brand name," he said. But IKEA's lawyers have a different argument.
They say all the Indian companies that have been served with notices or injunction orders have adopted those names deliberately to mislead the public into associating their products and services to those offered by IKEA. "IKEA has its trademark registered in India for over 15 years now and it has 45 registrations for different categories of products and services," said Bansal. Misuse of a popular brand name and trademark such as IKEA can be injurious to its reputation and goodwill, he said.
After a year of going back and forth, the government in May finally cleared IKEA's proposal to invest Rs 10,500 crore in India to open 25 IKEA branded stores. The company has held talks with various state governments as it seeks 5-15 acre space next to highways in cities including Noida, Hyderabad, Bangalore and Gurgaon.
A host of foreign retailers including Walmart, Starbucks and Carrefour have filed cases against Indian firms using names similar to their brand names or logos.
In 2007, Walmart opposed several trademark filings in India including Call-Mart, Mall-Mart, Val-Mart and Hall-Mart. In June, Carrefour won a trademark case against Carrefour House of Interiors after the French retailer dragged the Chennai-based firm to the Madras High Court alleging trademark infringement.
Experts point out that for successful global companies, the most important and valuable asset is their brand name. "Even if a company is not present in any category, it would always want to protect itself and the consumer who may be misled into believing that he is buying a product or service of the global company," said Arvind Singhal, chairman of consultancy firm Technopak.
BIGBASKET
Cadbury had to register as Mondelez Foods in India whereas elsewhere it is Mondelez only
Mondelez International, the new identity of Kraft Foods' snacks and confectionery business, has run into perhaps its hardest hurdle in changing the name of Cadbury India - a brand squatter.
Mondelez India, a Delhi-based company selling Kennyzone brand of confectionery, is waiting to legally challenge the global company from registering a similar name.
"We are seeking legal advice on the matter and will take actions accordingly," said an official spokesperson of Cadbury India, which is treading very carefully in migrating to the new identity in India where Cadbury has massive brand equity. Now, when branding experts all over the world have found the Mondelez name strange and confusing, how come an Indian entrepreneur came up with the same moniker?
Well, Mondelez India Pvt Ltd was registered in September last, well after Kraft decided to split its business and call the snack business Mondelez - a made-up name selected from 1,700 staff suggestions in March - from October 1, 2012.The Delhi firm was earlier called Non Stop Logistics.
One of the directors of Mondelez India said company promoter SK Sharma is seeking legal advise on the matter and would challenge any attempt from the multinational to call itself Mondelez India.
"Maybe they can stick to being Mondelez International. We are open to discussions on the subject but any other means to register themselves will be challenged legally by us," the person said.
On its website Mondelez India states, "We are confident that the quality of Kennyzone candies matches, and in some cases is better than many major renowned international brands."
Anuradha Salhotra, managing partner at Lall, Lahiri & Salhotra, a law firm specialising in intellectual property, said creation of Mondelez India is a deliberate attempt to make a quick buck.
"These are deliberate and planned moves by some people to make a quick buck out of it. Many a times they are more than willing to sell it back to the rightful name owner," she said. "If it is just a domain name then there could be arbitration but if it is a company name, trademark and domain name, then Mondelez International will have to go in for injunction," she added.
Meanwhile, Mondelez International has registered a company, Mondelez Foods, in India although it does not use the 'foods' tag in any other markets.
In early 2010, Kraft Foods acquired British candy maker Cadbury in a deal worth close to $19 billion. And in October last, Kraft's snacks business that includes brands such as Cadbury, Oreo, Tang and Trident was spun off into Mondelez. Kraft is left with the grocery portfolio, which includes Philadelphia cream cheese and Maxwell House coffee.
Mondelez derives some 45% of its sales from developing markets. Its CEO Irene Rosenfeld is reported to have said that the priority in India will be to drive chocolate penetration by increasing marketing support and strengthening distribution.
But the chocolate maker has started 2013 on a rocky note in India with authorities looking into possible tax evasion. Last year, an investigation was launched to determine whether Kraft Foods Inc needed to pay taxes arising from its $19 billion takeover of Cadbury. Another case involves alleged evasion of central excise duty, or factory gate tax at a company facility in Himachal Pradesh.
The name change, from a highly popular one to a name that can be pronounced in several ways, and dealing with a brand squatter too have now become part of the not-so-sweet tasks of Cadbury India.
Kala Vijayraghavan, ET Bureau Feb 23, 2013
Copy Rights
Exceptions to CopyRight : Fair Use/ Transformative Purpose
IP Rights protection as per WTO
PATENT Vs TRADE SECRET
A patent is a property right granted by the government that
allows the holder to exclude others from making, using, selling, offering to
sell, or importing the invention defined by the patent claims. However in the
patent application, the patentee shares publicly the specification which
teaches how to make and use the invention in sufficient detail so that
anyone can use the invention after the patent expires. The patent applicant
must show that the invention is useful, falls within what is called “patentable
subject matter” (a technical development that is not just an abstract idea or
law of nature), and has not been made public before; i.e., has not been
anticipated. Also, to ensure that this right to exclude others is not given for
trivial advancements over old technology, the patentee must establish that the
invention is distinct (not an expected change) from previously published
patents. In patent parlance, the invention must not be “obvious” over the prior
art. If the applicant can satisfy these five tests, the government grants
them a patent.
The duration of a patent is finite. At some point, it
expires, and the invention enters the “public domain,” meaning there is no
limit on who can use the IP described in it. Though a patent typically expires
20 years from the patent application filing date, two situations may extend the
term. If the Patent Office caused delays in its approval, it can be extended.
Also, when the patentee has been delayed in selling the invention because it
was waiting for regulatory approval, the patent term may be extended by up to
five years. (In other cases, the term may be less than 20 years; for example,
if filed as a continuation or divisional of an already pending case.)
Trade secret
A trade secret is information with the following three
attributes:
- is
not known by the general public
- confers
an economic benefit to the holder because the information is not
well-known
- is
being protected by the holder taking reasonable steps to maintain its
secrecy
Unlike patents, there is no limitation to the type of
information that can constitute a trade secret: it may be a formula, process
parameters, instruments, designs, customer lists, or anything else that
provides economic benefit to the user. However, if a third party independently
develops the secret, they are entitled to use it and even make it public. The
trade secret owner has no redress in such a situation.
There is no limit on the lifetime of a trade secret. So long
as the applicant meets the three requirements and no third party develops the
secret independently, the information will continue to exist as a trade secret.
For example - The Coca-Cola formula is a trade secret, and the company has kept
it a secret for over 130 years. Coca-Cola decided to keep the recipe as a trade
secret instead of patenting it because patenting might reveal the recipe.
Online
infringment protection (US)
The Online Copyright Infringement Liability Limitation Act, passed into law in 1998 as part of the Digital Millennium
Copyright Act provides safe
harbour protection to "online service providers" for "online
storage" in section 512(c). Section 512(c) applies to online service
providers that store copyright infringing material. In addition to the two
general requirements that online service providers comply with standard
technical measures and remove repeat infringers, section 512(c) also requires
that the online service providers: 1) do not receive a financial benefit
directly attributable to the infringing activity, 2) are not aware of the presence
of infringing material or know any facts or circumstances that would make
infringing material apparent, and 3) upon receiving notice from copyright
owners or their agents, act expeditiously to remove the allegedly copyright
infringing material.
An online service provider can be notified through the copyright
owner's written notification of claimed infringement. Section 512(c) lists a
number of requirements the notification must comply with, including:
·
Identification of the
copyrighted work claimed to have been infringed and information reasonably
sufficient to permit the service provider to locate the material.
·
Information reasonably
sufficient to permit the service provider to contact the complaining party,
such as an address, telephone number and email address
·
A statement that the
complaining party has a good-faith belief that use of the material in the
manner complained of is not authorized by the copyright owner, its agent, or
the law.
·
A statement that the
information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to
act on behalf of the owner of an exclusive right that is allegedly infringed.
Provided the notification complies with the requirements of
Section 512, the online service provider must expeditiously remove or disable
access to the allegedly infringing material, otherwise the provider loses its
safe harbour and is exposed to possible liability.
The online service provider may additionally limit its liability
for the removal of the material itself as well as its liability for restoring
the removed material, by complying with a counter notification process. In this
process, the service provider must promptly inform the subscriber of the
removal of the content.[7] If
the subscriber then objects via a counter notification, the service provider
must notify the party which filed the original notice. If the party does
not bring a lawsuit against the subscriber within 14 days, the service provider
must then restore the material to its location on its network.
Like the original notification, the counter notification include
specific elements:
·
The subscriber's name,
address, phone number and physical or electronic signature.
·
Identification of the
material and its location before removal.
·
A statement under
penalty of perjury that the material was removed by mistake or
misidentification.
·
Subscriber consent to
local federal court jurisdiction, or if overseas, to an appropriate judicial
body.
Implementing a counter notification process is not a requirement
for the safe harbor protections. A service provider may decline to restore the
allegedly infringing material, or to notify the subscriber at all, limiting the
recourse available to the subscriber.
If the court determines that the copyright owner misrepresented
the claim of copyright infringement, the copyright owner becomes liable for any
damages that resulted to the online service provider from the improper removal
of the material. The online service provider is also required to
appropriately respond to "repeat infringers", including termination
of online accounts. On this basis online service providers may insert clauses
into user service agreements which allow them to terminate or disable user
accounts following repeat infringement of copyright. Identification of
"repeat infringer" may occur through repeated notice and takedown
requests, while other online service provider require a determination by a
court.