Thursday, May 29, 2008
A ruling by the Supreme Court on Tuesday ended the almost two-decades-long challenge by an association of Scotch whisky makers to Khoday India Ltd’s right to have a non-Scotch whisky brand called Peter Scot because of the similarity between the words “Scot” and “Scotch”.
But the ruling could result in global retaliation and affect Indian products such as basmati rice and Assam tea, say analysts. That’s because the Supreme Court ruled in favour of Khoday despite the geographical indication (GI) status enjoyed by Scotch. Unlike a trademark—a unique and distinctive sign to identify a product or service—a GI is a sign used on goods that have a specific place of origin and possess qualities or reputation that are due to that origin.
In many cases, a GI is merely the name of the place where the goods originate. “Champagne” and “Tuscany” are some examples of GIs. Indian examples include “Assam tea”, “Darjeeling tea” and “Kanchipuram silk saree”. Basmati rice is also a GI.
In this case, Khoday, which began producing Peter Scot 40 years ago, registered the trademark in 1974. Twelve years later, the Scotch Whisky Association or SWA, a group of manufacturers and exporters of Scotch whisky, raised an objection before the registrar of trademarks, arguing that the word “Scot” was deceptively similar to “Scotch” and would mislead the consumers into believing that the product was of Scottish origin. The registrar ruled in SWA’s favour.
Khoday appealed to the Madras high court which too ruled against it. The high court order delivered in October was challenged by Khoday in the Supreme Court.
A two-judge bench on Tuesday allowed the appeal and validated the use of the trademark “Peter Scot”.
The judgement swung in favour of Khoday on two points. The first was the delay of 12 years on part of SWA in filing an objection.
The second was that consumers of Scotch whisky in India are discerning enough to distinguish between Scotch whisky and whisky made in India.
Referring to precedents from countries such as Australia and the US, the judges said the legal test applied to check deception of consumers by the high court were incorrect.
The judgement states: “However, tests laid down in Australia and United States in respect of self-same goods are noticed herein before are somewhat different. But then we are 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 apex court’s judgement, interestingly, overturns numerous verdicts of high courts in the country that granted SWA relief by passing restraining orders against liquor manufacturers in India for using words such as “Scot”, “Highland” and “Chief”, words that SWA contended were associated with Scotch whisky brewed in Scotland.
Security staff at the German phones giant Deutsche Telekom are suspected of breaching German data privacy laws during a secret attempt to identify the sources of high-level leaks to the media, the company said Saturday. Using the company's own records of millions of numbers dialled, the dates and the durations, the internal-security unit had hunted for possible matches between news reporters and Telekom directors.
Both public prosecutors and a German law firm have been assigned to investigate the suspected breach three years ago of German data- retention laws. Bonn-based Telekom said it had purged the security department last year to ensure it operated within the law.
The scandal was first reported Saturday morning by the German news weekly Der Spiegel in advance of its Monday issue. Telekom, one of the biggest companies on the German stock market, remains one third in federal ownership. Its affairs are closely followed by the German news media, which have often reported leaks from authoritative sources. Spiegel said the corporate security division had suspected senior executives or supervisory board members might be to blame.
Telekom said calls were not actually tapped, but the billing data had been illegally accessed in 2005 and "according to new claims" in 2006 too. Chief executive Rene Obermann said, "We're taking this very seriously. We have reported it to the public prosecutor."
In recent years German companies whose shares are traded in the United States have adopted the US practice of investigating and publicizing criminal actions within their own bureaucracies.
Originally from Philadelphia, Bose, who was recently inducted into the 2008 National Inventors Hall of Fame, first discovered his love of audio electronics while fixing radios in his basement as a teenager during World War II. Later, in high school, he would take off Fridays to work at a radio repair shop, an arrangement that his classmates often teased him about and that lasted until he attended the Massachusetts Institute of Technology in 1947.
Bose’s parents had a strong influence over his life. His father, an immigrant from what is now Bangladesh, was in the business of importing cocoa fiber products. He was also a lecturer and activist for freedom for India during British rule. His mother was born in the United States, but steeped in Indian culture.
“[Being Indian] definitely had an influence,” he said.
When he was a professor at MIT, he always tried to meet the parents of doctoral students, so he could tell more about the students. “You can see the correlation; usually the relationship is pretty tight. You can know a lot about someone’s character by meeting their parents,” he said.
Despite his age and achievements, Bose, who has two children in their 40s, remains a dedicated scientist and researcher who still works six days a week. He likes to conduct most of his research at his home in Wayland, Mass., since he says the work is more mathematical and he doesn’t want to be disturbed. When he’s not at the job, he plays badminton and swims (three times a week) and enjoys listening to classical music.
And he shows no signs of slowing down. When asked if he was planning on retiring anytime soon, he quipped: “What’s that?”
“Research is play for me,” he said as he sat in his office high atop the Bose Mountain, with a postcard-picture perfect view of the Massachusetts countryside. “You’re playing games with the universe,” he said.
He has a wall-sized dry erase board next to his desk so he can write down complicated mathematical formulas and equations that pop into his head throughout the day. “To do research you have to believe something is possible,” he said.
As for inventions the corporation may pursue in the future, Bose remains open minded. “Whatever people come up with that’s interesting and challenging. … If it’s just for sales, we’re not interested. We only want the best product, and we’ll continue on the same path trying to make excellence in whatever we do.”
At a compounded annual growth rate (CAGR) of 28 percent, India is all set to achieve 539 million mobile subscribers by 2010 says a new report from ASSOCHAM and Price Water House Coopers. The report further estimates that while the rest of Asia will growth a CAGR of 22 percent, China and Africa will grow at a rate of around 14 percent during the period.
The PwC report also highlights that revenues from mobile services will increase to $35 billion by 2010, when compared to $22 billion in FY07.
According to PwC report, innovation in pricing of services and handsets were the two main factors contributing to the growth of mobile services in the country.
At the same time the report cautions operators to keep a check on the dwindling ARPU.
The report also points out operators need to devise a relevant package in offerings for the rural subscribers. The data usage in such segments is unlikely to achieve high uptake due to lack of local content on offering, says the report.
The report also mentions that the telecom manufacturing sector in the country is still lacking. It says manufacturers from Far East, particularly from China are dominating the market currently.
“Such companies are already in the third phase of their business evolution and can take advantage of not just low cost production capacities, but also a high degree of technological innovation and their own intellectual property,” says the report.
Monday, May 26, 2008
The Supreme Court has asked the Delhi HC to expeditiously decide the trademark dispute between the Japanese company Toshiba and an Indian company which uses the trademark Tosiba for its electrical goods.
The largest manufacturer of heavy electrical items of Japan claims that such a use infringes on its trademark Toshiba. Justice SB Sinha and Justice LS Panta said: “We would, however, request the Delhi High Court to consider the desirability of disposing of the suit filed by the appellant (Kabushiki Kaisha Toshiba) against the respondent (Tosiba Appliances Co) as expeditiously as possible”. It in its notice, the company had said: “The trademark Toshiba is such a well-known trademark in India and abroad that its use or the use of a phonetic equivalent mark in respect of electronic and electrical goods would cause immense confusion and deception amongst the purchasing public and the trade. Our clients were surprised when they recently learnt of the adoption and use of the mark Tosiba both as your trademark and an essential feature of your trading style in respect of a range of electrical goods including electric irons. The adoption of the mark Tosiba is clearly mala fide and amounts to infringement of our clients’ various registered trade marks.”
Scalded by trademark infringement from names including Starstruck, global coffee giant Starbucks Corp. is taking no chances.
The Seattle, US-based company has trademarked the “Starbucks” brand in at least 10 Indian languages, including Tamil, Telugu, Punjabi, Bangla, Gujarati and even Urdu—almost as diverse as the states it eventually set up shop in.
It’s still unclear when Starbucks will enter India after the international coffee chain withdrew its application from the Foreign Investment Promotion Board, which approves investments into the country from abroad, in November because government officials raised objections to the majority foreign holding structure of the proposed venture. In India, overseas brands can’t hold more than 51% of any single-brand outlet. Starbucks’ overseas holding was adding up to more than that.
Stung by the objections, Starbucks decided to put on hold its India plans. With the ranks of middle-class Indian swelling, drinking coffee in outlets similar to Starbucks is becoming fashionable in India’s cities and big towns. The country already has several indigenous brands such as Barista and Cafe Coffee Day, and international ones such as Costa Coffee. But with coffee drinking turning into a fad, even those who have had little to do with coffee chains have stepped in. India’s first and most celebratedproducer of herbal beauty potions and creams, Shahnaz Husain, has registered Startstruck as a trademark, brewing up a bit of storm. Starbucks is locked in a legal battle over the similar sounding name.
Starbucks is also challenging another case in India’s Controller General of Patents, Designs and Trade Marks for a deceptively similar name. The American chain is now in 13,000 locations worldwide and if the company has its way, it will be in 27,000 more locations, including some in India.
Friday, May 23, 2008
India’s big guns are having a bazaar battle.
Kishore Biyani, one of the biggest names in domestic retail, has locked horns with one of India’s richest men, Anil Ambani, over a small name with big stakes: Big Bazar.
Reliance Anil Dhirubhai Ambani Group has filed to register Reliance Big Bazar with India’s trademark authority. The application says it claims “no right” to “exclusive use of word ‘Big Bazar’”, which means the company will only use the name as Reliance Big Bazar, according to the document filed.
Meanwhile, Biyani’s flagship hypermarkets are called Big Bazaar, with a double “a”, spelling it the way Oxford English Dictionary spells the word to define a market.
Still, Biyani says he considers the younger Ambani’s move as an attempt to misappropriate a brand he has nurtured for years into one of India’s best known retail names.
There are 89 Big Bazaars in India and the format is the highest revenue and profit generating unit for the Future Group that Biyani founded. Biyani has plans to hive off Big Bazaar and may eventually take it public after doubling the number of stores by March 2009.
“They are using a name which was created by us,” says Biyani, managing director of Pantaloon Retail. Therefore, “we are opposing” it.
The Anil Ambani-led wing of the former Reliance group, on the other hand, uses ‘Big’ as the moniker for its entertainment and media channels ranging from Big FM, India’s largest radio network, to Big Video, Big Music, Big Flicks under Reliance Big Entertainment Pvt Ltd.
Big Bazar is “one of the many names under consideration by Reliance Big Entertainment for aggregated retailing of our entertainment products and services under one umbrella brand” says a spokesperson for Reliance.
Reliance Adag applied in November 2006 for trademark registration of the name under two separate categories of trademark registration: class 28 that covers trademark in games and playthings, gymnastics and sporting articles and class 35 that deals in advertising, business management, business administration and office functions.
The registrations, carried under the company’s unit Anil Dhirubhai Ambani Ventures Pvt. Ltd, was made public by the country’s controller general of patents, designs and trademark in November, allowing for any opposition to file their objections.
Companies opposing trademark applications are supposed to mark their objections in three to four months’ time from the date it was madepublic.
“We have filed oppositions for both (the cases),” Biyani said.
Local and foreign retailers from McDonald’s Corp. to Wal-Mart Stores Inc. have been involved in alleged trademarks infringement cases in India as local individualsand firms have trademarked names such as 7 Eleven and Burger King.
However, it is unusual for two Indian corporate giants to get into a fight over such major brand name.
Monday, May 19, 2008
A nearly decade-long dispute over the use of formulas for Bazooka bubble gum and other products made by Topps Co. is headed back to a district court following a decision by a federal appeals court.
The 2nd U.S. Circuit Court of Appeals reversed Southern District of New York Judge Charles Haight, finding that he erred in granting summary judgment to Cadbury Stani S.A.I.C. over rights to the formulas in parts of South America.
The decision in The Topps Co. Inc. v. Cadbury Stani, 06-5316-cv. was made by 2nd Circuit Judges Richard Cardamone and Rosemary Pooler and, sitting by designation, Southern District Judge John Keenan. Cardamone wrote for the panel in finding that the case was not ripe for summary judgment.
Topps began licensing the rights to make, sell and distribute Bazooka and other Topps brands in Argentina, Bolivia, Chile, Paraguay and Uruguay to Cadbury Stani in 1957. In exchange for royalties on Stani's sales, the company promised to share "the know-how, formulae, processes and techniques used by Topps."
In 1976, Topps and Stani reached a new agreement that called for the continued sharing of "manufacturing technology, marketing concepts and techniques, administrative and consultive assistance and trademark use" in exchange for license fees. Under this agreement, Stani would be able to sell "licensed products utilizing Topps technology."
The companies reached an amended license agreement with nearly identical language in 1980, at the same time signing an escrow agreement that called for the holding in escrow of stock certificates in an entity called Verco Holding Corp. until 1996, when they would be transferred to Stani's owner.
Stani agreed to pay $100,000 to Topps in exchange for the transfer under the agreement, which stated in the preamble that "Topps has transferred legal title to the registration in Argentina of the trademarks 'Bazooka', 'Topps' and other trademarks to the Verco Holding Corp."
The license agreement expired in 1996. Topps filed suit in 1999, claiming Stani continued to use its chewing gum formulas and that it had transferred those formulas and other Topps technology to its parent company, Cadbury. Topps claimed this was a violation of the 1980 licensing agreement.
Haight found that Stani retained the right to use the formulas after the expiration of the agreement in 1996. He granted Cadbury Stani summary judgment after finding Stani had not misappropriated trade secrets and had not breached the contract.
"It is not only one company or organization, but the entire industry and consumers joining hands and taking collective responsibility which is required to tackle the growing menace of cyber crime", emphasized Mr Deepak Maheshwari, Director-Corporate Affairs, Microsoft India Pvt. Ltd at the Seminar on Information Security "Building Trust in Computing", organized by the Confederation of Indian Industry (CII), along with Department of Information Technology and Computer Emergency Response Team-India (CERT-In) in Mumbai.
Sunday, May 18, 2008
In its drive to catch up with China in the field of patents and trademarks, India will shortly launch a national awareness, sensitisation and consultancy programme by roping in universities, laboratories, state-level chambers of commerce and industry, patent attorneys and the scientific community.
According to sources in the commerce ministry: "The cost of this awareness campaign has been pegged at Rs 20 crore. This will establish a correlation between intellectual property, innovation, productivity and competitiveness. The campaign is aimed at promoting intellectual property and boost the proprietory rights culture in the country." According to the figures of World Intellectual Property Organisation (WIPO), of the total 1.56-lakh applications for international patents it received, China came seventh with 5,456 applications. US topped the list with 52,280 applications, followed by Japan with 27,731. Compared to this, India’s applications were a paltry 686. In 2006, when China filed 3,951 applications, India filed just 831. The Indian Patent Office granted a record 15,262 patents during 2007-08, the government said, more than double the 7,539 granted the previous year (2006-07) and nearly eight times more than the 1,911 patents granted three years ago, in 2004-05.
Historically, the total number of patent filings by residents of India is just three per million population, against a world average of 250. According to the patent office figures, the number of patents granted in 2007-08, the first year of India’s 11th Five Year Plan, compares well with the total number awarded during the entire period of the 10th Five Year Plan, which was just 17,618. "The application for international petnts should go up substantially to cope up with other countries of the world. We have taken some initiative, but more needs to be done," said the commerce ministry sources. Incidentally, the government has spent more than Rs 140 crore in the first phase of the modernisation effort, which included setting up integrated intellectual-property offices in four major cities and launching electronic filing of applications.
Another Rs 400 crore is to be spent to establish a Trade Marks Registry and Intellectual Property Archives and allied activities. The government has also begun work on a National Institute of Intellectual Property Management to handle training, education, research and think-tank functions in intellectual-property rights.
Monday, May 05, 2008
A license is a grant by an intellectual property owner to another party [the licensee] of the rights to use the intellectual property. A license may be royalty bearing or non-royalty bearing [as in cross-licenses], and a royalty-bearing license may be either paid-up or bear a running royalty, where the royalty is based on the sales of the licensed goods or services that are based on the intellectual property.
It is important to remember that licensing constitutes the most common mechanism for commercialisation of research and proprietary technology:
Licensing is accomplished by identifying an enterprise that is well placed to commercialize the technology successfully and negotiating an agreement for the enterprise to proceed with the commercialization. The resultant license agreements usually provide for licensor compensation in the form of royalties and fees and occasionally equity.
The parties to Agreement should agree on the procedure of legal protection of results arising from the project implementation, allocation of rights to the intellectual property, licensing procedures in the Parties’ territory. This checklist details the requirements sequentially to enable a through and systematic review.
The party licensing the intellectual property must actually own it and thus have the right to license it. The persons executing the license on behalf of each party must have the authority to commit their respective parties to a license.
Generally, a licensing contract will begin with the identification of the contracting parties, followed by clauses that state facts about the reason for the formation of the contract as well as the intentions and goals of the contracting parties. Next, the terms used in the agreement are defined.
Following the definitions is the grant, which identifies the licensed rights or properties and details the limits on their use. Next are representations, which are statements as to the current state of affairs, and warranties, which are promises, by one party, that certain statements are true and will remain so. “Termination provisions” detail the responsibilities of each party at the end [termination] of the license. Finally, “miscellaneous terms” may include most favoured nations clauses, choice of laws provisions, arbitration provisions, and nonwaiver clauses.