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Trademark Case Brief – Daimler Benz Aktiegesllschaft v. Hybo Hindustan

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Citation – AIR 1994 Delhi 239

Facts: The plaintiff, Daimler Benz, having a three-pointed star in a ring as its trademark and a manufacturer of one of the finest engineered cars in the world filed a lawsuit asking for a permanent injunction against the defendants for the infringement of their Trademark. The defendant was using the trademark ‘Benz’ and ‘three-pointed human being in a ring’ as a mark for his business of undergarments.

Issue: Should injunction be granted against the use of the trademark of Benz by Hybo for its undergarment business? Would a delay in filing of the suit take away the right of the plaintiff?

Holding: The defendant was restrained by an injunction from using the name of Benz and the three pointed human in a ring to carry on its business of undergarments.

Rationale: The court acknowledged that the mark and the word Benz and the three pointed star in a ring have for long been associated with luxury car maker, Mercedes Benz. Benz is no Indian’s surname and the defendants accepted that they did not name the brand after the city ‘Mercedes’. Any person who has even a very limited knowledge of the world of cars would be easily able to associate the name of Benz with the luxury car manufacturer, Mercedes Benz.
The court rejected the argument about delay in filing for injunction distinguishing the present case from the previous cases where injunction was not granted due to delay in filing for an injunction. However, the court rejected this old principle, saying that it cannot be applied to a well-known and reputed brand like Mercedes Benz.
The principle of ‘honest concurrent user’, as laid down in Amritdhara Pharmacy v Satya Deo Gupta is also inapplicable to a well known brand as Benz. “The trademarks law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name ‘Benz’ should not be objected to.”
None should be allowed to use a world-famed name to goods which have no connection with the type of goods which have generated the worldwide reputation and dilute the reputation of a very high priced and extremely well-engineered car brand by associating it with underwears.

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Trademark Case Brief – Corn Products Refining Co. vs Shangrila Food Products Ltd

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Citation – AIR 1960 SC 142

Facts: The appellant is a corporation which had registered the mark “Glocovita” under the Trade Marks Act, 1940, in respect of a substance used as food or as an ingredient in food containing glucose powder mixed with vitamins. Seven years later, the respondent, a manufacturer of biscuits, made the application for registration of the mark “Gluvita” and it agreed to limit the registration only to biscuits. The appellant opposed the respondent’s application.

Procedural History:  On appeal the Deputy Registrar held that the respondent’s proposed trade mark registration could not be refused because, firstly, biscuits were not goods of the same description as glucose powder mixed with vitamins. Secondly, the words “Glucovita” and “Gluvita” were not visually or phonetically similar. On Appeal to the Bombay High Court, the court set aside the Deputy Registrar’s order and held that the respondent’s mark could not be registered. The Respondent appealed in the same High Court, which held that its mark cannot be refused to register. The appellant finally appealed to the Supreme Court.

Issues:
§ Whether the goods are of the same description as glucose powder mixed with vitamins in the two products was in the same class?
§ Whether the words ‘Glucovita’ and ‘Gluvita’ were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion arising from, the use of the respondent’s proposed mark?

Analysis:
§ The mark ‘Glucovita’ has acquired a reputation among the general buying public. Though the goods are not of the same description but there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the respondent’s ‘Gluvita biscuits’ were made with the appellant’s ‘Glucovita’ glucose.
§ Biscuits containing glucose are manufactured with liquid glucose whereas the appellant’s mark only concerns powder glucose. We will assume that only liquid glucose is used in the manufacture of biscuits with glucose. But there is nothing to show that an average buyer knows with what kind of glucose, biscuits containing glucose are or can be made with. That there is trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom would appear from the fact stated by the appellant that it received from a tradesman an enquiry for biscuits manufactured by it under its mark ‘Glucovita’. The tradesman making the enquiry apparently thought that the manufacturer of ‘Glucovita’ glucose was likely to manufacture biscuits with glucose; he did not worry whether biscuits were made with powder or liquid glucose. The commodities concerned in the present case are so connected as to make confusion or deception likely in view of the similarity of the two trade-marks.
§ ‘Glucovita’ has acquired a reputation among the general buying public. The marks with which this case is concerned are similar. Apart from the syllable “co” in the appellant’s mark, the two marks are identical. That syllable is not such as would enable the buyers in our country to distinguish the one mark from the other.
Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.

Rule: To determine the question of likelihood of deception or confusion between the identity of two competing marks or their close resemblance, the trade connection test should be applied. Therefore, a trade connection between glucose and biscuits would appear to be established as a result of which, the commodities concerned are so connected as likely to create confusion or deception in view of the similarity of the two trademarks.

Conclusion: The Court said that the two marks are so similar so as to cause confusion to the public and hence allowed the appeal.

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Trademark Case Brief – F. Hoffmann-La Roche v Geoffrey Manners

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Citation – 1970 AIR 2062, 1970 SCR (2) 213

Facts: The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products. The respondent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products. On December 2, 1946 the appellant applied for registration of its trademark “PROTOVIT” and it was granted. Thereafter the appellants used that mark on multi-vitamin preparations in liquid and tablet forms and its goods are being sold under that mark at least since the year 1951. On January 28, 1957 the respondent applied for registration of its mark “DROPOVIT” in respect of “medicinal and pharmaceutical preparations and substances”. The application was registered but the advertisement of the respondent’s application escaped the notice of the appellant who did not hence oppose the registration. Later the appellant’s agents drew the attention of the appellant to the respondent’s mark “DROPOVIT”. There was a negotiation between the parties but the negotiations failed. The appellant applied for rectification of the Register by removal therefrom of the respondent’s trademark on the ground that the respondent’s mark resembled the appellant’s mark which is likely to deceive or cause confusion. Later they amended the application and added additional ground that “DROPOVIT” was not an invented word. The Joint Registrar rejected the application and held that “DROPOVIT” was not deceptively similar to “PROTOVIT” and that the word “DROPOVIT” considered as a whole was not descriptive.

Issues:
1) Whether the word “DROPOVIT” is deceptively similar to the word “PROTOVIT”?
2) Whether the word “DROPOVIT” was an invented or descriptive word

Holding: It was held that the High Court and the Joint Registrar of the Trade Marks were correct in emphasizing that there was no persisting tangible threat of misperception if the respondent’s trademark was permitted to remain to remain on the Register. Further, the court opined that “DROPOVIT” was an invented word by the virtue of it not falling under the ambit of a descriptive word. The petition therefore failed and was dismissed with costs.

Rationale: For the purposes of the first issue, the Supreme Court went into the meaning of the words “to deceive” and “to cause confusion”. They concluded with regard to Parker- Knoll International Ltd, that while deceiving involves making false representations to make a person believe what is otherwise not the truth (even if this is done without knowledge and intention), confusion may be caused as a consequence of one’s disability or lack of knowledge to extricate the truth stated to him from what is already known to him, perhaps because he chooses not to take the trouble to do so.
The test for comparing two trademarks was articulated by Lord Parker in the case of Pionotist Co Ltd. It was put forth that to begin with, the two marks must be judged by their appearance and sound. The nature of the goods and the target customers to which they would be attributed must also be accounted for, alongside the surrounding circumstances. If confusion in the minds of the public is the foreseeable result of allotting the trademarks, then registration ought to be denied. The precise elucidation of law was recognized by the court in the passage of Lord Justice Luxmoore in the Court of Appeal. It was indicated that similarity must be ascertained on the basis of the first impression since only an individual who is aware of one word and has an imperfect recollection of the same is likely to be confused. It was also pointed out that the totality of the suggested word should be such that is likely to cause deception or confusion in the minds of the persons habituated to the prevailing trademark and merely the corresponding portions must not be compared. Applying this in the present case, it was held that if one emphasizes the uncommon components in the two words, it is difficult to establish that one would be confused with the other. Accounting for letters ‘D’ and ‘P’ in “DROPOVIT” and the corresponding letters ‘P’ and ‘T’ in “PROTOVIT”, it was believed that they cannot be slurred over in pronunciation and their differences made it reasonably impossible to mistake the words visually and phonetically. To add to this, the Court also took note of Section 61(2) of the Drug Rules, 1945 and highlighted that since preparation of vitamins falls under item 5 of Schedule C (1), a license is mandatory for its preparation and sale. This combined with the fact that a prescription is needed before purchase makes the possibility of confusion remote. Finally, since 57 trademarks have been registered with suffix ‘VIT’, an average customer is presumed to be on his guard and take special care.
With regard to the second issue, the Supreme Court turned to the Diabolo case, where Parker J. expounded upon the meaning of “inventive word”. He said that such a word must be newly coined and must not bear any conventional or apparent meaning unless one has been allotted to it. The High Court had pointed that the original application for rectification contained no ground underlining that “DROPOVIT” was a descriptive word. This implied that it did not even strike the legal advisors of the appellants that “DROPOVIT” was not an inventive word in the first instance. To add to this, Justice Tarkunde had pronounced that he did not see “DROPOVIT” to mean “DROP OF VITAMINS” till a description was given to him. Hence, the Court, not having reasons to believe otherwise, did not overturn the decision of the lower courts.

Rule:
1) In an order to see whether a trademark is deceptively comparable to the other, it is not imperative that it is intended to deceive or cause confusion. In fact, its probable outcome on the ordinary customers is considered by taking imperfect recollection as the benchmark. While both visual and phonetic tests are put into play, the marks are also looked at in their totality and not in parts to see if deception or confusion is the outcome in the minds of the individuals familiar to the existing trademark.
2) To qualify as being an inventive word, a word must be newly coined and must not convey any ordinary or obvious meaning unless one is designated to it.

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Trademark Case Brief – Amritdhara Pharmacy v Satyadeo

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Citation – AIR 1963 SC 449

Facts: The Respondent (Satyadeo Gupta) had applied for registration of the trade name of a medicinal preparation “Lakshmandhara” in relation to the medicinal preparation since 1923. It was admitted by the Respondent that the Respondent’s product was mainly sold in the State of Uttar Pradesh and there were only sporadic sales in other states. The Appellant (Amritdhara Pharmacy) opposed the registration of the mark ‘Lakshmandhara’ on the ground that it had an exclusive proprietary interest in the trademark “Amritdhara” in relation to a similar medicinal preparation which had acquired considerable reputation since 1901 and that the respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the registration was prohibited. In response to the same the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923.

Issues:
1) Whether the name ‘Lakshmandhara‘ was likely to deceive the public or cause confusion to trade under the Act?
2) Whether there was Such, acquiescence on behalf of the appellant in the use of the name ‘Lakshmandhara‘ in the State of Uttar Pradesh as to bring it within the expression ‘special circumstances’ or ‘honest concurrent use’ under the Act?

Procedural History:
§ Registrar of Trade Marks: The Registrar of Trade Marks held that There was sufficient similarity between “Amritdhara‘ and “Lakshamandhara” so as to cause confusion and it was likely to deceive the public, but the acquiescence of the appellant in the use of the trade name “Lakshmandhara” by the respondent in the relation to his product for a long period to the knowledge of the appellant was special circumstance under S. 12 entitling the respondent to have his name registered along with the appellant’s trade name. Registrar, however, confined the registration to sales with the State of Uttar Pradesh only. As a result of this order, passed by the Registrar, two appeals were filed. One by the Appellant seeking cancellation of Registration of Respondent’s mark altogether and one by the Respondent seeking registration for other states apart from Uttar Pradesh.
§ High Court (Allahabad): The Hon’ble Allahabad High Court, rejected the appeal of the Appellant and allowed the appeal of the Respondent allowing the registration of the mark ‘Lakshmandhara’ for the whole of India. The Hon’ble High Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are dissimilar and the words ‘Amrit’ and ‘Dhara’ being of a common language cannot be made the monopoly of any individual and thus the Hon’ble High Court found no reason to disallow registration of the trademark ‘Lakshmandhara’.

On the question of honest concurrent use the Hon’ble High Court favoured the Respondent but on the question of acquiescence founded favour in the arguments of the Appellant and held in his favour. Then SLP was filed in the Supreme Court.

Holding: The Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. In coming to the said conclusion, the Court relied on:
§ The test of comparison of marks, which states that the question of comparison of two marks has to be approached from the point of view of a man or consumer of average intelligence and imperfect recollection.

The Court held that-
“A critical comparison of two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name”;
and The court explained and summarized the test (taken from an old English Case-Pianotist Co.’s Application, 1906) applied consistently the courts in context of similar goods
“You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks.”
It was held further that the two names as a whole should be considered for comparison and not merely the component words thereof separately.
On the point of ‘Honest Concurrent’ user the court found in favor of the Appellant (Amritdhara Pharmacy Co.) and held that there was Acquiescence by the Appellant to the use of the Respondent of the mark ‘Lakshmandhara’ as both the companies have been advertising through mediums which were common to both the appellant and the respondents.

Conclusion: The marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. The Supreme Court allowed the appeal set aside the judgment of the high court and restored those of the registrar of trademarks.

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Trademark Case Brief – Imperial Tobacco Company v. Registrar of Trademark

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Citation – AIR 1968 Cal 582

Facts: The Appellant, in this case, i.e. the Imperial Tobacco Company made its first application for registration of a trademark before the Registrar applying for registration as a trademark of a label bearing the device of snow-clad hills in outline and the word “Simla” written prominently in various panels of the label. The specification of the goods in the application reads as “Manufactured tobacco”. “Word Simla’ which forms the essential and distinguishing feature of the mark is a famous geographical name and is not registerable except on the very strong evidence of distinctiveness. Its geographical signification was thus plain and unequivocal and the snow-clad hills in outline in the label made the geographical significance inescapable.

Procedural History: The Registrar of Trademark rejected the application. Registrar stated that in order to be registerable, the mark should have acquired distinctiveness on the date of making the application for registration. ITC filed a fresh application, 3 years later in 1963 for same trademark claiming that the trademark has achieved distinctiveness. This application was also rejected by the Registrar of Trademark. Hence the appeal.

Issue: Whether this geographical name “Simla” has acquired distinctiveness within such a short period between, April 1960(first application) and July 1963(Second Application) which is barely a period of 3 years?

Holding: The Registrar finds that the appellants have no branch at Simla and that tobacco is not grown nor is there any factory for manufacturing tobacco goods in the district or town of Simla. The Registrar took the view that informed smokers may not be deceived, but to an ordinary smoker, who had no special knowledge, Simla might not appear to be a totally unlikely place to be associated with the origin of the cigarettes, and he would, therefore, be deceived by the appellant’s mark. The court held that evidence of distinctiveness is necessary for granting trademark. It was held that the evidence provided by the appellant showing the sales of the cigarettes in the country is not a sufficient proof to establish distinctiveness. The court was of the view that if such trademark is granted, it will be a problem for someone who is from Shimla and wants to use the trademark if he plans to manufacture cigarettes or any other product in Shimla. Thus the Registrar’s decision to refuse the application was upheld.

Rationale:  Registration of a geographical name is not allowed unless it is proved that the mark has acquired distinctiveness because of its use or if it is a well-known mark. Distinctiveness cannot be proved by the sales of the product, financial proofs or popularity.

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Trademark Case Brief – Aggarwal Sweet Palace vs. Assistant Registrar of Trade Marks

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Citation -2005 (30) PTC 336 IPAB

Facts:An application was filed by the respondent M/s Aggarwal Sweet Corner for the registration of trade mark ‘Aggarwal Sweet Corner’ in respect of sweets and namkeens. The mark was claimed to be used since 01.06.84. Applicant disclaimed the word ‘corner’ in its application. The appellant filed an appeal raising opposition that the mark is identical and deceptively similar to their mark and they have been manufacturing and namkeens under the trade mark Aggarwal Sweet Corner since the year 1986.

Issue:
Whether the applicant’s Trade Mark can be refused on the grounds of Sections 9 &11?.

Procedural History:The Assistant Registrar made a suggestion to the applicant that a disclaimer about the word ‘sweet’ and ‘corner’ besides the word ‘Aggarwal’ should also be added. Therefore, this was accepted by the applicant. But later, the Assistant Registrar disallowed the application for the registration. The Learned Deputy Registrar overruled the decision of assistant registrar on all the grounds. With respect to section 9 of the act it was held that the applicants have adduced sufficient evidence of user since 01.06.84 which is sufficient for the registration.
Evidence containing several documents namely, copies of purchase orders, copies of invoice, copies of advertisement, copies of sale tax, copies from bills from advertisers, copies of analysis report, copies of balance sheet and copies of orders received from customer. Hence these documents were enough evidence of user since 01.06.84. In matter it was said that the appellant have merely filed an affidavit with regard to evidence of user and reputation of the mark which is not enough to prove the case.
Lastly, in matter of opposition with section 18(1), it was held that since the applicant has proved evidence of user and reputation of the mark applied for, the applicant is entitled to the proprietorship of the mark under section 18(1) of the act. It was also said that the appellant claims to be trading in the name and style of M/s Aggarwal Sweet Corner, but however it does not show anywhere that its goods are being marketed with the said mark i.e ‘Aggarwal Sweet Corner’.
Hence the appellant have no trade Mark other than the trading style but that cannot be treated as the trade Mark as there are no evidences to prove it. Hence, the appeal was disallowed and the order to proceed with the registration was made in favor of applicant.
Additionally, Assistant Registrar also held that any surname can be registered as a Trade mark under section 9 (1)(a) of the act provided it meets the requirements of the act. However there is no evidence that proves the ‘Aggarwal’ is a commonly used word in that trade (i.e sweets and namkeens). Therefore in view of the evidence and the use and publicity filed by the applicant, Assistant registrar came to a conclusion that despite the fact “Aggarwal” being a surname, the word acquires distinctiveness and as such qualifies for registration. He also held that the appellant has failed to provide the evidence to prove that “Aggarwal” is a commonly used expression in this trade and thus the objection is overruled.

Holding:The Board held that for entitlement of trade mark under section 9, the one who contest for the mark should be the prior user in time and in-fact should be using the mark consistently from the date so claimed. The respondent in this case filed the application on 30.04.86 and has claimed to be using the mark since 01.06.84. Therefore, he has reproduced sufficient evidence to prove his claim he had been extensively and consistently making use of both the marks from 01.06.84. The Board says, we believe that so much of the documentary evidence for this period is enough to establish that there was a user as from the date claimed in the application and it was a consistent user. Therefore, there is no merit in changing the decision of the learned Deputy Registrar or the Assistant Registrar, as the case may be, in all of these appeals. Hence, the appeals stand dismissed.

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Trademark Case Brief – Kellogg Co. v. National Biscuit Co.

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Citation – 305 U.S. 111 (1938)

Facts:Inventor Henry Perky developed a shredded wheat machine and introduced the cereal in 1893; he was issued utility patents in 1895 on both the shredded wheat and on the machine. The cereal became successful, and Perky’s company, the Shredded Wheat Company, continued to manufacture the product after he retired.
The Kellogg Company started manufacturing shredded wheat cereal in 1912 after Perky’s patents expired. After the Shredded Wheat Company objected, Kellogg stopped manufacturing their version in 1919. In 1927, the Kellogg Company resumed manufacturing shredded wheat, prompting a lawsuit from the Shredded Wheat Company. In 1930, the Shredded Wheat Company was acquired by the National Biscuit Company (later Nabisco), which again sued Kellogg, both in Canada and in the United States, for unfair competition. Nabisco complained in its lawsuit about Kellogg’s use of the term “Shredded Wheat”; the similarity of its cereal biscuits’ shape to the Nabisco cereal biscuits and Kellogg’s use on the product box of a picture of two of the pillow-shaped cereal biscuits submerged in milk.

Procedural History:In 1928 National Biscuit Co. sued Kelllogg for unfair competition. In 1932 another suit was brought. In 1935 the suit was dismissed by the district court stating no ‘passing off’ or deception had been shown and that the product had passed into public domain upon the expiration of its patent. This decision was appealed and reversed by the District Court with a decree that enjoined Kellogg from advertising its product as shredded wheat as well as producing it in the same ‘pillow shaped’ form as well as apportioned damages. In 1938 National Biscuit Co. requested clarification of the injunction because Kellogg insisted that it was only forbid from using the term ‘shredded wheat’ in conjunction with the “pillow-shaped’ product and not otherwise. Circuit court granted appeal for interpretation and amended it to forbidding use of both the term and the shape independently of one another as well as together. Supreme Court granted certificate this time to both.

Issue: Whether Kellogg Company has infringed the rights of Nabiasco by manufacturing “Shredded Wheat”, a product of Nabiasco, for which trademark was rejected and it had passed into the public domain upon the expiration of its patent?

Holding:Supreme Court reversed with directions to dismiss.

Rationale: The court uses the doctrine of genericide to explain that the term “shredded wheat” is now generic and therefore secondary meaning is irrelevant. Further the court explains that the term brings to mind in the public the product more so than the product’s origin. Then the court explained that with regards to the trademark rights associated with the pillow shape, it was not protected because the goodwill created by such a form had been established due to its monopoly that had been allowed for by the patent, which has now expired. To hold that it is protectable would fly in the face of the entire purpose of patent law, it is now allowed as part of the public domain. Finally, the court alludes to what would be termed as trade dress with regards to the packaging of the product, and explains that Kellogg’s packaging and marketing was substantially unique so as not to create confusion as to the source or to trade off the goodwill of National Biscuit’s trade dress. For all these reasons, the Supreme Court reversed with directions to dismiss.

Rule:This case helps to establish the doctrine of genericide and probably lays the groundwork to future cases with regards to trade dress and how it is to be treated. Most importantly however it indicates the significance of trying to take a product previously protected by patent and later using another form of intellectual property protection to protect it going forward and how in most instances this is not going to stand.

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Trademark Case Brief – Abercrombie & Fitch Co. v. Hunting World, Inc.

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Citation – 537 F.2d 4 (2nd Cir. 1976).

This case brought in the concept of ‘Spectrum of Distinctiveness’ in trademark law in US.
§ Generic
§ Descriptive
§ Suggestive
§ Arbitrary
§ Fanciful

Facts and Procedural History:A complaint was filed in 1970 by Abercrombie & Fitch Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York City and seven places in other states against Hunting World Incorporation (HW). A&F had 7 trademarks on different product for the word- Safari.
It was alleged by A&F that HW has infringed some of its registered trademarks using the word ‘Safari’. On this appeal from a judgment which not only dismissed the complaint but cancelled all of A&F’s ‘Safari’ registrations, including several that were not in suit, we relieve A&F of some of its unhappiness but not of all.

Issues:
1)Whether any secondary meaning of the word “Safari” was created by A&F, which would result in its trademark protection?
2) Whether HW is infringing trademark rights of A&F by using the word Safari in their products?

Rule and Law Applicable:It was one of the very first cases which divided the trademarks into classes which are accorded differing degrees of protection.
§ A generic mark cannot get trademark protection in any condition.
§ Descriptive mark can get trademark protection only when the word itself gets its secondary meaning. § 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is “merely descriptive.” (US Law)

The Lanham Act makes an important exception with respect to those merely descriptive terms which have acquired secondary meaning, it offers no such exception for generic marks. The Act provides for the cancellation of a registered mark if at any time it “becomes the common descriptive name of an article or substance”. (Indian Law: S.9(1), exception under Proviso)

Arguments by A&F: A & F alleged –
§ That many years A&F has used the mark ‘Safari’ on articles “exclusively offered and sold by it.” Since 1936 it has used the mark on a variety of men’s and women’s outer garments.
§ That A&F has spent large sums of money in advertising and promoting products identified with its mark ‘Safari’ and in policing its right in the mark, including the successful conduct of trademark infringement suits.
§ That HW has engaged in the retail marketing of sporting apparel including hats and shoes, some identified by use of ‘Safari’ alone or by expressions such as ‘Minisafari’ and ‘Safariland’.
§ That HW’s acts would confuse and deceive the public and impair “the distinct and unique quality of the plaintiff’s trademark.” A&F sought an injunction against infringement and an accounting for damages and profits.
HW filed an answer and counterclaim –
§ The word ‘safari’ is an ordinary, common, descriptive, geographic, and generic word” which “is commonly used and understood by the public to mean and refer to a journey or expedition, especially for hunting or exploring in East Africa, and to the hunters, guides, men, animals, and equipment forming such an expedition” and is not subject to exclusive appropriation as a trademark.
§ That A&F’s registrations using the word ‘Safari’ be cancelled on the ground that A&F had fraudulently failed to disclose the true nature of the term to the Patent Office.

Analysis:The Court held –
§ Although “safari” is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word “identifying the source” and showing that “purchasers are moved to buy it because of its source.”
§ On the other hand, he concluded that A&F had no right to prevent HW from using the word ‘Safari’ to describe its business as distinguished from use in the sale of a particular product a conclusion we do not understand to be disputed;
§ That HW had not infringed A&F’s registered mark using the word ‘Safari’ under its brand name on a “classical safari hat” or in advertising this as “The Hat for Safari” since such use was purely descriptive;
§ That HW had also not infringed by using the term ‘Minisafari’ as a name for its narrower brimmed safari hats, and that HW was entitled to use the word ‘Safariland’ as the description of an area within its shop and as the name of a corporation engaged in the wholesale distribution of products imported from East Africa by an affiliate, Lee Expeditions, Ltd., and in the “Safariland News,” a newsletter issued by HW and Lee Expeditions, With respect to shoes he concluded that both parties had used the word ‘Safari’ in a fanciful rather than a descriptive sense and hence that plaintiff might have a valid infringement claim it could establish a secondary meaning;
§ With respect to shoes he concluded that both parties had used the word ‘Safari’ in a fanciful rather than a descriptive sense and hence that plaintiff might have a valid infringement claim it could establish a secondary meaning;
§ The pervasiveness of the principle is illustrated by a series of well-known cases holding that when a suggestive or fanciful term has become generic as a result of a manufacturer’s own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue.

Conclusion and Ratio:
§ Applied to specific types of clothing ‘safari’ has become a generic term and ‘minisafari’ may be used for a smaller brim hat;
§ ‘Safari’ has not, however, become a generic term for boots or shoes; it is either “suggestive” or “merely descriptive” and is a valid trademark even if ” merely descriptive” since it has become incontestable under the Lanham Act;
§ In light of the justified finding below that ‘Camel Safari,’ ‘Hippo Safari’ and ‘Safari Chukka’ were devoted by HW to a purely descriptive use on its boots, HW has a defence against a charge of infringement with respect to these on the basis of “fair use.” We now discuss how we have reached these conclusions.
There is no evidence that ‘Safari’ has become a generic term for boots. Since, as will appear, A&F’s registration of ‘Safari’ for use on its shoes has become incontestable, it is immaterial (save for HW’s contention of fraud which is later rejected) whether A&F’s use of ‘Safari’ for boots was suggestive or “merely descriptive.”

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Patent Case Brief – Ravi Kamal Bali v Kala Tech

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Facts:  Both the plaintiff and the defendant were manufacturers of tamper proof locks and seals that had industrial application. The Plaintiff apart from claiming an infringement of his patent also claimed that Defendant No. 3, who used to work for The Plaintiff, conspired with Defendant No. 1 in the manufacturing of the locks and the seals. Both the products used near identical material i.e. Spring Steel with a slight difference in quality of the material used in the two. A difference between the two products also existed in respect to the shape of the product. While the Plaintiff’s product was in the shape of a “V”, that of the Defendant was rectangular in shape with 4 walls. The last difference between the two prod its was also in the number of “vanes” used in the two products.

Issue:Whether the product of the Defendant is an infringement of the product of the Plaintiff thus constituting a breach of the patent that was held by the Plaintiff.

Analysis:
§ The Plaintiff and its counsel wanted the Courts to apply the Doctrine of Equivalence which is mainly used in the United States of America. The Doctrine of Equivalence states that in order for a device to infringe a claim it needs to perform substantially the same function in substantially the same way to obtain the same result. The main test is whether the defendant’s product has taken the pith and marrow or sometimes what is called the essence of the invention. The Court was of the view that in order to establish the Doctrine of Equivalence they will have to observe the built, structure, functionality and shape of the products.
§ When it came to the material that had been used in the manufacturing process the Court was of the view that both the products used the same material i.e. Spring Steel. The Court further observed that the marginal difference in the quality of the two products will not amount to any difference between the two inventions.
§ The next aspect of the products that was considered by the Courts was the shape of the Products. The shape of the Defendant’s Product was in the shape of a rectangle while that of the Plaintiff was in the shape of a “V”. The learned judge stated that in no way did the rectangular shape of the products of the Defendant contribute to the Functional Novelty of the product. There was in no way that the shape of the product contributed to the any change or improvement in the functionality of the product.
§ The last thing that the Courts looked into was whether an additional number of “Vanes” in the product of the Defendant would lead to a substantial difference in the two products. The Court held in the negative stating that the constructional and functional aspect of the products remained the same.

Conclusion:  The Court was of the view that the product of the defendant did infringe the patent of the Plaintiff. The ulterior reasoning was that there was no substantial difference between the two products. The slight additions made to the product of the Defendant would not constitute a new product. If it was recognised as a new product then the potential for misuse would be very high as people would just change trivial aspects of patented products and would claim a new patent on it.

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Patent Case Brief – Kirin-Amgen v. Hoechst

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Citation –  [2004] UKHL 46

Facts:
§ Kirin Amgen Inc a pharmaceutical company, invented a process of producing erythropoietin (EPO) by recombinant DNA technology and for its invention it was granted a European Patent (EP0148605B2). Amgen’s invention of EPO was an advance in the treatment of anaemia and marketed the EPO under the name of Epogen.
§ Transkaryotic Therapies Inc (TKT) another corporation also developed a method of making EPO, and markets it under the name Dynepo. It uses a process called gene activation and the product was named as GA-EPO. Thus it used a different method as compared to that of Amgen. Hoechst Marion Roussel Ltd (“Hoechst”) another pharmaceutical company proposed to import GA-EPO into the United Kingdom.
§ The essential difference between both the drugs namely Epogen and GA-EPO is that the former is made by an exogenous DNA sequence coding for EPO which has been introduced into an host cell and the latter is made by an endogenous DNA sequence coding for EPO in a human cell into which an exogenous upstream control sequence has been inserted.

Procedural History: Amgen’s claims were the following:
(1) DNA sequence for use in securing the expression of EPO in a host cell, (19) EPO which is characterized by being the product of eucaryotic expression of an exogenous DNA sequence with further characteristics that made it different from pre-existing EPO, and (26) EPO, which is the product of the expression in a host cell of a DNA, sequence according to claim 1.
The trial judge held that claim 19 was invalid for insufficiency but that claim 26 was valid and infringed. The Court of Appeal held that both claims were valid but that neither was infringed. Both sides appealed, Amgen against the decision that, as a matter of construction, the TKT process is not within the claims and TKT against the rejection of its attack on the claims for insufficiency and anticipation

Issue: Whether TKT’s EPO fell outside the claims of Amgen’s patent suit because of the difference in the way it was made?

Rationale:
§ Until the Patents Act 1977, which gave effect to the European Patent Convention (“EPC”) the patent protection under UK law was limited to what was written or stated in the claim. Article 69 of the EPC states that “ The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”
§ As an invention is protected only if a reference is made in the claim it becomes important in determining what falls within the scope of the claims.
§ As this was leading to injustice, the court in this case considered interpretation of Article 69 and came up with the Protocol on the Interpretation of Article 69 (the “Protocol”) which requires that Article 69 should not be read as to mean that the claims are given a literal meaning nor should the claims be treated a mere guidelines. Rather the correct treatment is a position between the two extremes, which provides a fair protection for the patentee with a reasonable degree of certainty for third parties.
§ The Protocol is intended to give the patentee the full extent, but not more than the full extent, of the monopoly, which a reasonable person skilled in the art, reading the claims in context, would think, he was intending to claim.
§ In interpreting the claims, another approach is to take the objective test or the purposive interpretation. The purposive interpretation laid down three questions, does the variant have a material effect upon the way the invention works, if no, does the variant that did not have material effect had been obvious at the time of filing the patent to a reader skilled in the art and thirdly whether a reader skilled in art would have understood through the language of the claim whether the patentee intended strict compliance of the claim or not.
§ The method used by both the companies was different to arrive to the same production of drug. Thus there was no material effect on the result, but it was not obvious for the person skilled in art to think that there was an obvious alternative method at the time of filing of the claim. Thus the endogenous method introduced by TKT did not infringe Amgen’s claim.
§ In relation to the purposive construction, the doctrine of equivalents was also laid down in the case. Doctrine of equivalents is a legal rule that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.
§ The effect of the doctrine of equivalents is to extend protection to something outside the claims that performs substantially the same function in substantially the same way to obtain the same result.
§ Amgen’s claims are concerned with the expression of EPO by a gene, which is exogenous to the cell. But the genes, which express EPO in cells by the TKT process, are not exogenous.
§ The court concluded that TKT did not infringe any of Amgen’s claims and dismissed the
appeal.

Rule:  Doctrine of equivalent and purposive construction which states that a claim should not be limited to literal interpretation and a party can be held liable for patent infringement even though the infringing device or process does not fall within the literal scope of the claim. Thus the doctrine of equivalent allows the patentee to extend his monopoly beyond the claims.

Holding: It was held by the court that TKT did not infringe any of the claims of Amgen. As the method used by TKT was different from the method used by Amgen in the production of the same drug. The person skilled in the art would also not come to the conclusion that the production of GA-EPO is same as that of EPO.

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