Oct 13, 2013 | General
In 1877, Dr. Kellogg created a mixture of flour, oats, and cornmeal, which he baked twice and broke into small pieces to serve after a patient broke her tooth on a biscuit version of the mix. In his opinion, baking whole grains at high temperatures would produce the simple sugar dextrose, which would make them more easily digestible. John Kellogg baked a wheat dough for the first time at extremely high temperatures to break down the starch in the grain into the simple sugar dextrose. He called this process dextrinization. For years, Dr. Kellogg and Will worked together to create dextrinized flaked cereals – first with wheat, then with corn. At first, the cereals were ready to eat without sugar or milk. While W. K. Kellogg was a pioneer in the mass marketing of the cereal to the public, he also noticed the potential benefits of mixing the cereal with milk.
The first cyanoacrylates were discovered in 1942 when a team of scientists at the B.F. Goodrich Company, led by Harry Coover Jr, were making clear plastic gun sights during World War II. They developed a formulation for cyanoacrylates but rejected it for use in gun sights because it was too sticky.
At Eastman Kodak, Coover and a colleague (Fred Joyner) discovered that cyanoacrylate had commercial potential in 1951. After testing hundreds of compounds, Dr. Coover and his colleague Fred Joyner found that the lenses were not detachable when they spread the 910th compound, cyanoacrylate, between two lenses. They developed the formula for sale as an adhesive, which was first sold as “Eastman #910” in 1958.
Percy Spencer was an engineer at Raytheon in 1945, when he noticed that a candy bar in his pocket began to melt while he was working near the magnetrons that created microwaves. Spencer later patented the invention together with Raytheon. Spencer built the first microwave after two years and launched it for commercial use after two years. He was inducted into the National Inventors Hall of Fame in 1999.
Wilson Greatbatch designed the first practical implantable pacemaker working as an assistant professor of electrical engineering at the University of Buffalo. While constructing a heart rhythm recording device, he used the wrong-sized resistor and created the first practical implantable pacemaker. The oscillator required a 10 KΩ resistor, but Greatbatch misread the color coding and got a 1 MΩ resistor instead. The new circuit produced intermittent electrical pulses, rather than continuous pulses, and Greatbatch immediately realized the device could drive a human heart. Veterans Administration hospital doctors demonstrated that this two cubic inch device could control a dog’s heartbeat on May 7, 1958.
Sir Alexander Fleming, a Scottish bacteriologist at St. Mary’s Hospital, introduced penicillin to cure bacterial infections. According to a legend, Dr. Fleming noticed that a mould called “Penicillium notatum” had contaminated his Petri dishes after returning from a summer vacation on September 3, 1928. The story is only partly true, however.
Fleming did notice a mould growing in a petri dish that prevented the growth of bacteria, however, it was not immediately apparent to him that the mould was useful. This is because he didn’t know precisely why bacteria weren’t growing. It took around 14 years – and the effort of many researchers – to isolate the active agent that prevented bacteria from growing – penicillium – and to make enough to use.
Albert Alexander was a policeman with an uncontrollable bacterial infection after being scratched by a rose. He was the first person treated with penicillin in 1941. Despite a dramatic response to penicillin, he relapsed ten days later.
Alfred Nobel, a Swedish chemist and engineer, dedicated his life to the study of explosives. He attempted to stabilize nitroglycerin, a highly unstable and explosive chemical. To make nitroglycerine easier to handle, Nobel realized it must be absorbed by some kind of porous material. A type of porous, absorbent sand or diatomaceous earth was found nearby the place he was staying in Germany. In the “Kieselguhr”, nitroglycerine forms a stable paste that can be safely kneaded, shaped, transported and even ignited without triggering an explosion.
In 1867, he patented his product. Dynamite was soon used in blasting tunnels, cutting canals, building railways and roads, and also in warfare. Nobel established the Nobel Prize in his will in November 1895 to promote world peace.
Undoubtedly, the discovery of the X-ray was a breakthrough in medicine. Wilhelm Conrad Röntgen deserves credit for the discovery. He noticed a glow coming from a nearby chemically coated screen while testing whether cathode rays could pass through glass.
He discovered that the mysterious light would pass through most substances, but leave shadows of solid objects. Since he did not know what the rays were, he called them “X-rays”.
The discovery of X-rays by Roentgen enabled him to see the bones and tissues beneath human tissue. In 1897, doctors used X-rays to detect bullets and broken bones inside patients during the Balkan war.
Chemist Roy J. Plunkett was involved in the research of Freon refrigerants. Tetrafluoroethylene gas (TFE) was produced by Plunkett and stored in small cylinders at dry-ice temperatures before being chlorinated. He discovered that a frozen canister had spontaneously polymerized into a white, waxy solid to form polytetrafluoroethylene (PTFE).
Plunkett was fascinated by the mysterious chemical and began categorizing its properties. He realized the TFE had polymerized to produce this substance – later named Teflon. DuPont assigned other teams to investigate the substance, and Plunkett was transferred to DuPont’s tetraethyl lead division, which made the additive which was used to increase gasoline octane for many years.
Frank Epperson, a 11 year-old boy, mixed soda powder and water with a wooden stirrer one night in 1905. The California native left the glass outside in the cold overnight. In the morning, he noticed that the soda mixture was frozen solid.
He removed the ice pop from the class by running the glass under hot water and using the stick as a handle. When Frank came up with this great idea, he named the treats “Epsicles” and started selling them around town.
“Popsicle” is actually a brand name, but frozen juice on a stick is known by different names around the world. It’s called a popsicle in the USA, but an ice lolly in England, icy poles in New Zealand and freeze pop in Ireland.
Arms manufacture increased dramatically in the UK in the years immediately before the First World War, but practical difficulties were encountered due to erosion (excessive wear) of the inner surfaces of gun barrels. Brearley began researching new steels that could better resist erosion (rather than corrosion which was a common misconception) caused by high temperatures. As chromium was known to raise steel’s melting point, he began to examine what would happen if chromium was added to steel.
A 20th-century arms manufacturer hired metallurgist Harry Bearly to create rust-resistant gun barrels. On the side, he conducted a few experiments of his own. After the metal held up against corrosives such as lemon juice, he saw the potential for food-grade silverware and the elimination of the nightly routine of washing, polishing and putting away silverware. However, stainless steel appliances were still a bit out of his league.
Henri Becquerel and Mother Nature are both to be commended for this success. In 1896, the chemist was trying to make fluorescent materials produce X-rays through sunlight. There was a week of clouds and overcast, so he left the supplies in his drawer. He opened the drawer and found the uranium rock he was using imprinted on a nearby photographic plate- all without any exposure to light.
Cathode ray fluorescence was the focus of Becquerel’s research. There were some uranium salts next to the photographic plates by chance. Despite being protected from sunlight, the plates appeared to be exposed later on. A photographic plate marked by uranium salts was found emitting a ‘penetrating radiation’. This radiation was proved to be new and not X-ray radiation as per further studies.
- POTATO CHIPS AND FRENCH FRIES
During the summer of 1853, a customer at Moon’s Lake House in Saratoga Springs, New York, ordered French fries. As a chef at that hotel, Crum served his standard thick-cut French fries to his customers with a fork. However, the customer complained that they were extremely thick and soggy. The ‘Gordon Ramsay’ of his day, George Crum was easily angered but resourceful. He made another batch of thinner French Fries to satisfy the customer, but he again complained that they were too thick and refused them. After becoming frustrated with his annoying customer, this time he decided to teach him a lesson and made another batch, cutting the potatoes thin so that they were difficult to eat with a fork and heavily salting them. He was surprised when the customer loved them and asked for more, as did other diners. As a result of a complaint from an annoying customer and an act of mischief by George Crum, the invention “Potato Chip” was born. Moon’s Lake House served potato chips called “Saratoga Chips”.
Even though you should always wash your hands before eating, there are instances where a bathroom break would change history. If chemist Constantin Fahlberg had washed his hands before dinner in 1879, it would have removed all the coal tar from his skin. He would not have tasted how sweet his food was due to the saccharin in the tar. (This is the exception, though- please exercise good health and grooming habits.)
Sugar substitutes – such as high-intensity sweeteners – have many times the sweetness of sucrose, common table sugar. Therefore, much less sweetener is required, and the energy contribution is often negligible. These compounds cause a different sweet sensation than sucrose (the sweetness profile), so they are often used in complex mixtures to achieve the most intense sweetness.
A bulking agent may be needed if sucrose (or other sugar) has contributed to the texture of the product. Soft drinks or sweet teas labelled as “diet” or “light” often contain artificial sweeteners and often have an unusual “mouthfeel”, or table sugar replacements containing maltodextrins and an intense sweetener to achieve a pleasing texture.
Richard James, a naval mechanical engineer stationed at the William Cramp & Sons shipyards in Philadelphia, developed springs that could stabilize sensitive instruments aboard ships during rough seas in 1946. During World War II, Richard James tried using springs to keep sensitive instruments steady. But when he dropped one of the springs, it landed upright and recoiled on its own – much to James’ amusement. During the next year or so, James experimented with different types of steel wire, and eventually discovered one that would “walk” on its own. His wife, Betty, was hesitant to admit its potential, but after the toy was fine-tuned and neighbourhood children expressed excitement about it, she changed her mind. The toy was dubbed Slinky (meaning “sleek and graceful”) after she found the word in a dictionary and decided that it aptly described the sound of a metal spring expanding and collapsing.
Pemberton, a Civil War veteran who achieved the rank of Lieutenant Colonel, suffered a sabre wound to his chest at the Battle of Columbus in April 1865 and soon became addicted to morphine. Chemist Pemberton tried several opium-free alternative painkillers and experimented with coca and cola wines until he discovered a recipe containing extracts of cola nuts and damiana that had a taste which was not heard of before.
Using flowery rhetoric, he described his new invention as a “valuable brain tonic” that would cure headaches, relieve exhaustion and calm nerves. As a medicine, he called it “delicious, refreshing, pure joy, exhilarating and invigorating”. He named his accidental product “Pemberton’s French Wine Coca”.
Pemberton’s product became an instant success, but due to growing public concern over an alcohol addiction, he changed the recipe to make it non-alcoholic and blended the base syrup with carbonated water, which was also an accident.
Incorporating the names Coca and Cola into the composition of this new beverage, he called it “Coca-Cola”. Another factor for its global success was the fact that General Eisenhower ordered millions of Coca-Cola bottles for American soldiers fighting the Germans in North Africa during the 2nd World War. 200 years after Coca-Cola had last been marketed as a medicinal product, there is some empirical evidence from researchers and doctors that it has some inherent health benefits.
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Aug 29, 2013 | General
Businesses usually register their trademarks in order to protect their brands and to prevent third parties from taking advantage of the goodwill and reputation they have built in the economy. They register their trademarks all over the world and proactively seek to prevent any infringement by taking quick legal action against infringers. There are some landmark cases with respect to trademark infringement in India which clearly show how registration protects the company and prevents loss.
- Starbucks Corporation v. Sardar Buksh Coffee & Co
Starbucks is an American multinational chain of coffeehouses, established in 1971. It is headquartered in Seattle and is currently the largest chain of coffeehouses in the world.
In India, Starbucks is known as Tata Starbucks Private Limited and branded as Starbucks “A Tata Alliance”. It is a 50:50 joint venture between Starbucks Corporation and Tata Consumer Products. In 2001, Starbucks registered their trademark- the name STARBUCKS along with their world-famous logo of the long-haired crowned maiden.
In 2015, a small local vendor started small coffee chain in Delhi with the name SardarBuksh Coffee & Co. Using this name, the business grew in size and popularity and soon was converted into a private limited under the name SardarBuksh Private Limited. Not only did their name sound similar to that of Starbucks but their logo also resembled the coffee giant’s.
Starbucks sued the chain in the Delhi High Court under the grounds of “Duplicitous word mark and logo” and deceptively similar analogy (derived from Section 2(1)(h) read in Section 11 of Trademarks Act 1999) . The court took into account that the products offered by the two companies are similar. In the event that the offerings are different, then having a similar or near identical name does not constitute an infringement.
The Defendant agreed to change their name within 2 months and their new name is Sardardji Bakhsh Coffee & Co. They added the condition that no other business can use the word Bakhsh and they reserve the right to sue if used. The logo has not been changed.
This is not the first time Starbucks has filed suits for the infringement of their trademark. Restaurants and coffee shops in Texas, Oregon and even in Canada have been at the receiving end of notices and suits for infringement from the multinational giant.
A small café in Pakistan known as Sattar Buksh also received notice of IP violations. Fortunately they were not taken to court as they contested that their name has been in existence for over 500 years. Unlike Sardarji Bakhsh, they did change their logo to avoid yet another potential legal battle.
- The Coca-Cola company v. Bisleri International Pvt Ltd
The Coca- Cola company is an American multinational beverage corporation established
In 1892. It is headquartered in Atlanta and is famous for the sugary drink Coca-Cola. The Coca-Cola company is engaged in the manufacture, production, retail and marketing of alcoholic as well as non-alcoholic beverages, syrups and concentrates. It is the largest
Coca Cola purchased and acquired the intellectual property and formulation rights as the goodwill of Maaza from the Indian beverage company Bisleri International Private Limited. The two companies signed a deed containing the following chief clauses:
- Goodwill acquisition
- IPR transfer
- No-use, no-compete clause
- Relinquishment and compensation of the rights to franchise
In 2008 Bisleri filed an application to register the trademark Maaza in Turkey and subsequently began export under the same trademark. They were under the impression that the agreement signed was related only for any transactions or use in India and was not to be considered in case of any exports. Coca-Cola soon filed a suit for trademark infringement in the Delhi High court once they became aware of the situation.
Three issues were raised in the court:
- Is there any infringement of the Trademark or passing off?
- Does Delhi High Court have jurisdiction over the matter?
- Does the Plaintiff is entitled to get a permanent injunction?
The Plaintiffs argued the trademark Maaza was assigned to Coca-Cola. Thus, any manufacture, whether within India or for export using the trademark will account to infringement. The Defendants argued that the product was sold in Turkey and not in India and thus there is no infringement of rights. They further added that the trademark was registered by them worldwide and they could use and sell the product using the trademark anywhere in the world except India.
On considering the facts and issues in the case, the court was of the opinion that any delivery of goods from one’s own country to another (exports) will constitute a transfer by sale within the country of origin of the goods exported itself. If any trademark is infringed in the process, it will be considered as infringement. The court ordered an interim injunction against the Defendant that would prevent them from using the trademark Maaza in India or abroad. It also answered the issue with regard to jurisdiction: since the Defendant is a manufacturer from India, the Delhi High court can entertain this case.
- Yahoo! Inc. v. Akash Arora & Anr
Yahoo! Inc is an American web service provider and search engine. It was established in 1994 and provides a range of services such as Yahoo mail, news, sports, finance and even an advertising platform. The Defendant in this case, Akash Arora, started providing his own web-based services which were similar to Yahoo!’s while also using a trademark that phonetically resembled theirs. This case is considered as a landmark case of cybersquatting in India.
The Plaintiff, Yahoo! Inc, has registered the trademarks Yahoo as well as Yahoo.com since 1995 and have an established reputation and goodwill associated with the same. The trademark was registered in 69 countries but was not registered in India. The Defendant offered services under the name Yahoo India and also applied for registration of this trademark which was approved.
Yahoo! Inc sued Akash Arora for deceptively employing a trademark that was almost identical to their own as well as offering nearly identical services as theirs. They sought a permanent injunction against the Defendant.
The issue of the case being:
- Whether a website or domain name is eligible for protection under the ambit of intellectual property rights
- Where the Defendant’s act of carrying out near identical services and registering the domain Yahoo India can be considered as an infringement of the trademark of the Plaintiff.
While the Defendant put forth very logical and reasonable arguments, the Delhi High court felt that Akash Arora was trying to take advantage of the high reputation and goodwill of Yahoo! Inc by making use of an identical name and providing the same services. The court was of the opinion that using near identical domain names might fool the users into believing that both are the same source. Akash Arora was held responsible for passing off and an injunction was passed restraining from further and future use of any such deceptive and similar marks.
- Zara Fashion v. Zara Food
Zara is a Spanish apparel retailer established in 1975 in Spain. It specialises in fast fashion and is famous globally. Zara is currently part of the Inditex group (the largest apparel retailer in the world).
In 2013, the global retailer (Plaintiff) sued a Chennai based restaurant (Defendant) for infringing their trademark. The restaurant was named Zara Tapas Bar.
The Plaintiffs argued that ZARA was a trademark which was registered by them in more than 85 countries and was a very well established and reputed brand. They have had a presence in India since 1986 (when it started its assembling operations) even though their first store opened only in 2010. In 2003, the Defendant opened their restaurant with the name Zara Tapas Bar. Two years later, the Plaintiff became aware of the Defendant’s intention to register the mark Zara Tapas Bar and sought to contradict the application. The Defendant’s hope for a co-existence agreement was refused and dismissed by the Plaintiff.
The Defendants argued that they were using the mark Zara Tapas Bar and not just Zara but this was contradicted by evidence. On social networking site, the name Zara was more often used. They added that they had been using the same for more than 10 years and that Zara was a common dictionary word and typical name in several countries. They also said that the mark had become public property (Publici Juris) and that several marks had the name Zara in them as well. On further investigation, it was discovered that it was after an outing to Paris that the Defendant decided to adopt the name where there are over 40 stores of Zara.
The court found out that the word Zara is not a dictionary word nor is it non-exclusive and this showed that the Defendant was using the name to take advantage of the apparel brand’s success and reputation. Thus, the Delhi High court ruled in favour of the Plaintiff and ordered the restaurant to change its name. Even the Defendant’s arguments that the services offered were vastly different and thus there would not be confusion among consumer were dismissed by the court. The court also ruled that with respect to the argument on Publici Juris, the Plaintiff had the right to decide whether to sue or take legal action against other infringers if they wish.
Author: Smriti Subramanian, Student of Christ (Deemed to be University)
References:
- https://www.sbs.com.au/language/english/starbucks-sues-india-s-sardarbuksh-for-copycat-brand-name-and-logo
- https://lawcirca.com/the-coca-cola-company-vs-bisleri-international-pvt-ltd-20-october-2009/
- https://blog.ipleaders.in/5-landmark-cases-for-trademark-infringement-in-india/
- https://www.legalwiz.in/blog/5-famous-trademark-cases-for-businesses-to-learn-from
- https://online.yu.edu/cardozo/blog/famous-intellectual-property-cases
- https://lawcutor.com/2020/06/06/yahoo-inc-vs-akash-arora-anr/
- https://www.sonisvision.in/blogs/post/case-study-on-zara-fashion-or-food
- https://www.dotnice.com/zara-vs-zara-a-trademark-tale/
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May 18, 2013 | Trademark
Hamdard National Foundation (India) & Anr. vs. Sadar Laboratories Pvt. Ltd., [ROOH AFZA vs. DIL AFZA] is a rather notable and recent example of the protection sought for the specific term used in a trademark, in which the individual terms are frequently used during specific product segment. The complainant, Hamdard National Foundation (India), is a charity organization founded in 1906 that places importance on distributing profits to promote the welfare of the community. The Hamdard business earnings have effectively gone to its establishment for many decades. The Complainants have manufactured and supplied Unani and Herbal medications, creams, flavorings, and non-alcoholic refreshments. The respondent company, Sadar Laboratories Pvt. Ltd. has been producing Unani medications, syrups, and plant-based items since 1949, when M/s. Sadar Dawakhana founded it.
Facts of the Case
The present complaint was filed since the respondent was infringing on the complainants’ trademark, ‘Rooh Afza,’ and passing off its goods as the complainants’ using the name ‘Dil Afza.’ The plaintiffs claim that they have established a significant reputation and brand image about ‘Rooh Afza,’ with total revenue of Rs.30, 983.57 lakhs in 2019-20 and up to Rs.16, 281.41 lakhs till August 2020. The plaintiffs have invested a substantial amount of money on advertising, as made evident by their expenditure of Rs.459.10 lakhs through 2019-20 and Rs. 577.89 lakhs through 2020-21, up to August 2020. The plaintiffs have also defined the decades in considerable detail when the trademark ‘Rooh Afza’ was first allowed to register for such products. For a hundred years, the claimants’ product/sharbat was marketed in containers with the brand ‘Rooh Afza,’ with a unique color scheme, design, collection, and placement of components, most prominently a different and interesting floral pattern.
Issues raised
- Whether the defendant violates the plaintiff’s trademark rights?
- Whether the defendant’s registered trademark have legal validity?
- Is the defendant’s trademark likely to induce confusion amongst the consumers if used for competing products?
Plaintiff’s Argument
- The plaintiffs filed this claim to protect their trademark once they noticed in early 2020 that the defendant had developed ad campaigns publicizing its sweetener, having the mark ‘Dil Afza,’ in misleadingly similar ringlet containers to those of ‘Rooh Afza’ container. Furthermore, the defendant was using a confusingly similar label, and styling for its goods with bad intent. On June 10, 2018, the mark ‘Sharbat Dil Afza’ in the defendant’s name seemed to have been requested to be registered based on ‘intended to be used.’
- The plaintiffs contended that injunctions would probably be provided against the defendant. Since the defendant had used its trademark for medications, i.e., under Class-32, it expected certification in Class-5 in 2018, claiming that it had used the mentioned product for medications since 1949. The medications certificate, on the other side, was obtained just in 1976, however, the plaintiffs had already been supplying and advertising their brand as ‘Rooh Afza’ since 1907, many years before when the defendants registered their trademark in 1942.
- Roof Afza is a very popular trademark that fulfilled the definition of a “well-known trademark” as defined in Section 2(1)(zg), Trade Marks Act of 1999. Acquiring a drug permit was inadequate to assert use, and the defendant cannot release any paperwork, notwithstanding the opportunity to show that the expression ‘Dil Afza’ was in use from 1949. The trademark was claimed to have been acquired fraudulently since no evidence of use was provided to the Registrar. As a result, the registration was declared void, and the defendant has been unable to seek benefits u/s 28 of the Act. Distinctions in labelling and brand identities have also been considered insignificant due to the risks of confusion.
Defendant’s Argument
- The defendant firmly opposed to approving of plaintiff’s request for any injunctive order, claiming that u/s 29 of the Trade Marks Act, 1999, the violation claim was null and void since both marks were registered.
- The defendant claimed that the term ‘Afza’ has now become popular in the syrup market, with many businesses in the sharbat/syrup market using it. The counsel contended that the plea makes reference to ‘Hamdard’ as well as to ‘Rooh Afza,’ because it was ‘Hamdard,’ not ‘Rooh Afza,’ which was the renowned and prominent label, not ‘Rooh Afza,’ isolated. The plaintiffs did not obtain separate registrations for the terms ‘Rooh’ and ‘Afza,’ and the registration was for the whole title, i.e., ‘Rooh Afza.’ Meanwhile, the defendant had registered the entire ‘Dil Afza’ term and had not registered the terms ‘Dil’ or ‘Afza’ independently. Such filings would have been barred u/s 9(a) and (c) of the Trade Marks Act of 1999 and Section 11 of the Act. Furthermore, because ‘Afza’ is the common term used and there was a substantial distinction between the terms ‘Dil’ (meaning ‘heart’) and ‘Rooh’ (meaning ‘spirit’), no category of purchasers would be deceived into thinking that perhaps the defendant’s commodity was indeed linked to that of plaintiffs. All who want to purchase ‘Rooh Afza’ will indeed purchase ‘Rooh Afza.’ Thus, despite the common use of the word ‘Afza,’ there’s no space for confusion.
- The defendants also claimed that now the term ‘Dil Afza’ had been used in Class-5 from 1949. The term ‘Rooh Afza’ has also been used in Class-5. From 1949 until 2020, there had never been any doubt. Consequently, justifying that the defendant’s usage of the title “Dil Afza” for sharbat flavourings cannot be deemed dishonest or intended to provoke confusion. It was contended that since the defendant had developed its brand image, it was not a requirement for the defendant to obtain a misleading mark to profit from the plaintiffs’ goodwill.
- They also claimed there could be no confusion in distinguishing ‘Dil Afza,’ and ‘Rooh Afza,’ owing to the products’ design, styling, and labeling. The plaintiffs’ packaging comprised flowers, while the defendant’s packaging included fruits; the texts were distinctive; the defendant’s label also included the owner’s mark of ‘Sadar’ and its inscription at the top centre, clearly suggesting the origin of goods to be the defendant and to have nothing to do with plaintiffs’ mark of ‘Hamdard’; The colour of the cap is different as the plaintiff’s bottle has a yellow cover, whereas defendant’s bottle has a brown cover.
- Therefore, the plaintiffs can only claim the entire phrase for which they had obtained registration, and similar terms used in the sector cannot be offered distinctiveness. Furthermore, the plaintiffs had failed to prove that the term “Afza” had obtained a slightly different meaning, which was purely associated to their brand. Finally, no injunction order could be awarded because the remedy sought in the interim application was essentially the same as sought in the primary suit.
Judgment
On 6th January 2022, the Court pronounced the judgment in the matter. It was held that:
- Both the plaintiffs’ and defendants’ marks, Rooh Afza and Dil Afza, are registered. A legitimate trademark registration gives the registered owner an exclusive authority to use trademark, except that the if two individuals are registered owners of similar trademarks, their exclusive entitlement to get any of those trademark rights cannot be imposed against one another.
- The defendant’s mark could not be validly certified since it is nearly identical to the claimants’ trademark, which was registered in 1942 as well for the same products, i.e.,’sharbat.’ So there is a possibility of general misunderstandings.
- Also, the plaintiffs’ allegation of having established a strong goodwill and brand image in connection with their brand name ‘Rooh Afza’ cannot be ignored even on preliminary grounds.
- There is indeed a significant difference between both the words and no indistinguishable mark exists.
- The similarity is preferred because both ‘Dil’ and ‘Rooh’ elicit powerful emotions and have the word ‘Afza.’ Even as courts have repeatedly noticed, the requirement to be used in evaluating misunderstandings emerging in the head is of a buyer with flawed recollection and regular subjectivity.
- Even if the consumers were particularly fond, it is hard to fathom that the use of the terms ‘Rooh’ and ‘Dil’ will indeed cause confusion due to its strong sentimental overtones. Buying a bottle of sharbat may evoke emotions, although not to the profundities anticipated by the plaintiffs. All who recognise this prominent feeling will, in any case, be capable of distinguishing between ‘Rooh’ and ‘Dil.’ Nevertheless, the courts expressed concern about the consumer, for whom the words ‘Dil’ and ‘Rooh’ will not have the same meaning in regular usage. The two words’ understandings are indistinguishable.
- In addition, the complainants do not indicate having to apply for or obtaining registration for the restricted usage of the term “Afza.” Consequently, the plaintiffs may just contend privilege for the entire phrase ‘Rooh Afza,’ rather than each of the two elements that create the brand name.
- Nevertheless, the request is denied, with the defendant ordered to maintain accurate records of ‘Dil Afza’ revenues.
Conclusion
Consequently, the plaintiffs can only assert privilege over the entire term ‘Rooh Afza.’ Regardless of the fact that Dil Afza arrived the industry in 1976, there seems to have been peaceful equilibrium with no misunderstandings in the heads of consumers for this long time in the much more delicate healthcare industry. Consequently, Dil Afza won a favorable ruling, bolstering the notion of the phrase combination in use for trademark rights.
Author: Adyasha Das, Symbiosis Law School, Hyderabad
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Dec 23, 2012 | Contracts
Contracts are used to regulate and legitimize essentially all business transactions. They are, of course, appropriate instruments in contexts other than standard buy-sell and employment agreements. Any situation involving a reciprocal exchange of promises will almost always need the use of a formal, written contract. This is certainly relevant when significant intellectual property (IP) is under consideration. Contracts must be employed by companies with valuable IP to ensure that their internal employees and any external vendors or consultants who have access to their IP information act responsibly, regardless of the timing or duration of that access. Furthermore, corporations must clearly indicate who possesses the proprietary rights over the IPs to employees who are involved in or responsible for IP development.
The symbiotic link between copyright and contract law is examined in this article. The intellectual property bargain, or the delicate balance that purportedly exists in present IP laws, cannot simply be viewed as a matter of property laws stating a balance. A major characteristic of IP dispersed in the open market has always been the connection between IP and contract norms, and that interaction is central to whatever balance has been established. It is pointless to focus exclusively on the statutory provisions of copyright, patent, or trademark laws when discussing a current balance in the property rights sector. IP contracts deal with a wide variety of rights that can be assigned, or licensed to any other person or organization. It is necessary to grasp and incorporate the fact that the policy approach has always assumed that property rights are frequently transferred, waived, or released. The clauses adopted in such contracts, on the other hand, must be designed with extreme prudence and care.
Finally, firms can impose IP protection through a variety of contracts, including confidentiality and non-disclosure agreements, non-compete agreements, and property or assignment agreements, among others. Regardless of which contract is best for the situation, any IP-related contract must include the following provisions:
These are important factors in an IP contract that should be considered while drafting these agreements:
To safeguard the owner, a confidentiality clause is required. Because there has been a significant increase in technological knowledge, further security measures must be taken to secure the work, and hence a secrecy provision prohibits and binds the other party from disclosing the creation’s integrity. Patents, copyright, and trademarks are instances of intellectual property that have been published and are thus publicly accessible. They are, however, frequently used in conjunction with other confidential know-how to generate commercial outcomes – and such sensitive know-how must be kept confidential.
Contractually requiring tight confidentiality is perhaps the most important part of any IP arrangement. Companies must be exceedingly proactive, take extraordinary security precautions, and remain watchful to potential intrusions or data misappropriation as technological innovation thrives and competition grows. Undoubtedly, despite a company’s investment in the most advanced security measures, essential IP can be exposed purposefully or inadvertently owing to human frailties.
As a result, a robust contract that explicitly imposes an obligation to maintain secrecy, as well as serious repercussions for failure to comply, will dissuade irresponsible and/or malevolent action. Employees who are aware of the potential consequences of disclosing a company’s information are significantly more likely to take the necessary safeguards and follow any IP-related security policy.
Confidential Information Access
Conditions for access to know-how and confidential information by parties’ employees, consultants, or representatives must be stated in order to safeguard confidentiality in a realistic manner. Standards for guaranteeing the security of secret information might also be stated.
- Ownership of Intellectual Property Used or Created Over the Duration of the Relationship
The contract must state clearly who will be the owner of the intellectual property that is being used or constantly developed throughout the duration of relationship. Even if the connection is later terminated, the ownership status of the IP should be clearly stated. This is a common dispute in which an employee chooses to leave his job after the creation of the IP and wishes to take the creation with him on the assumption that it was developed by him. However, the fact that it was made while he was employed does not give him the right to own it, which must be expressly stated in every contract.
Disputes over IP often emerge when an individual resigns from the employment at the organization severs a relationship with external associates. Employees and consultants who contribute to the creation and development of IP may believe they have the right to take it with them when they depart. Even if this is acceptable to a corporation, it must be determined from the beginning to avoid costly misconceptions. In most circumstances, a business expects to keep ownership of whatever IP it develops. To avoid misunderstanding, this proprietary intent must be made abundantly explicit in any relevant contract.
A contract must unambiguously indicate which individuals are authorized to access the IP, when they may access it, and for how long they will have access, in addition to declaring explicitly which party will retain property rights over the IP. In some situations, a non-compete agreement may prevent an employee from working in a related area for a period of time after leaving a company. However, the extent and length of any such agreement are limited, and a former employee may presume that he or she can still refer to IP information that was created with their participation. Even if a corporation grants such access to current or former employees, the manner in which such access is granted must be specified in a contract. Companies may, for instance, aim to make sure that information is accessed through a secure server or a tightly managed data repository. The requirements for access to IP within a corporation must be clearly specified.
IP indemnification on IP representations and warranties, can be used to hold a seller liable for violations of IP representations and warranties. These aren’t the only types of breaches that might trigger indemnity in a contract, but in contracts where IP may not be the main emphasis, the IP-related indemnification clauses can get neglected during negotiations, which can lead to dispute later if a claim occurs.
In discussions about IP indemnity, the scope and duration of indemnification should be addressed. The seller will aim to reduce the amount of time it can be held liable for indemnification, while the purchaser will seek a longer survival period. The seller will also wish to try to limit its indemnity liability, though this can be challenging. If there are restrictions in place for breaches of general representations, the seller may seek comparable caps for IP breaches, but the acquirer is more likely to push for a larger cap. Acquirers may also try to have specific matters exempted from the cap (i.e., fraud claims, and intentional breach). Control of claim defense is another area where IP indemnification is being negotiated. The seller may want to demand control considering he or she will be more compelled to resolve the claim if the acquirer has control and simply forwards the invoices to the seller.
In the event of an IP license, which may be a stand-alone agreement or a component of a larger agreement, indemnification terms may oblige the licensor to extend its IP protection to the licensee if and when a third-party IP dispute arises. It is critical for the indemnifier to understand what he is committing to indemnify, regardless of the type of IP matters that may be indemnified.
A contract must clearly point out the consequences of any breach of the agreement in order to have the bite it requires. It will not be adequate to utilize vague descriptions like “such fines or litigation”. It must be apparent to the person who will be signing the agreement that the company takes the security of its IP very seriously and will aggressively pursue any and all legal remedies available. In the unfortunate event where valuable IP is misappropriated, there should be no ambiguity regarding the next course of action.
- Intellectual Property Documentation and Records
Sophisticated contracts may include a system for recording and documenting the IP developed throughout the course of the relationship (e.g., by creating specialized lists) so that it can be identified. This allows for improved future valuation of IP and enhances the potential to monetize such property through full or partial assignment, depending on the interests of the parties.
- Termination/ Breach of Contract
Contracts must explicitly specify the consequences of breaching the contract. Because a vague definition of such termination/cancellation/penalty clauses might lead to years-long tedious legal battles, an ironclad contract with respect to penalty clauses is required. There should be no ambiguity or vagueness in a contract.
Author: Vinita Gaud, Pravin Gandhi College of Law
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Oct 24, 2012 | General
In the year 1920, three brothers named Parameshwara Maiya, Ganappayya Maiya, and Yagnanarayana Maiya, from a small village called Parampalli in Udupi District, left home to escape poverty and came to Bangalore. Like many others of their caste, the brahmin brothers knew how to cook. Parameshwara found employment in a wealthy Indian judge’s home as a cook. The judge assisted Parameshwara and his brother Ganappayya in setting up a tiny eatery selling coffee and tiffin items in one of Bangalore’s lavish areas, Lalbagh Fort Road. In 1924, they started with Brahmin’s Coffee Club, which grew in reputation.
Parameshwara died five years after setting up the business, and the youngest brother, Yagnanarayana, took over. He proved to be an excellent restaurateur who was busy building the business and the brand and the eatery grew so popular that wealthy Indians started talking about it too by stopping by for car service, to pick up food in their cars, or sending their chauffeurs over for it.
The client base had expanded and had reached its heights by the time India gained independence. Around the 1950s quarter-century after the coffee club had been set up, Mr Yagnanarayana, who was heading the business, started thinking of making it bigger. Hence, the brothers bought a piece of land near the original eatery and started building a restaurant. Their thoughts have now turned into a brand, and so in 1960, Mavalli Tiffin Room, commonly known as MTR which was named after the locality where it was situated, opened and stands to this day at Lalbagh Road.
MTR has been serving Karnataka Brahmin food. For a long time, customers entered the restaurant through the kitchen, and the restaurant building comprises two floors. It has also been shown on television in the global global travel-related series, Globe Trekker. Cleanliness has become a brand value for MTR, one of the main reasons why the audience’s trust still rests.
As of 2021, MTR restaurant is currently headed by Hemamalini Maiya, Vikram Maiya, and Arvind Maiya, who are grandchildren of Yajnanarayana Maiya.
Origin Of Rava Idli
During World War II, when India was under emergency, there begins the origin of Rava Idli. Due to the rice shortage, making idlis was very difficult. So Mr Yajnanarayana, a professional cook, started experimenting with various ingredients and then made idlis from semolina instead of rice and thus invented the breakfast item of the Rava idli recipe.
Rava idli has become popular not just in Karnataka but also around the world. This idli is created from roasted semolina, mixed in sour curds and seasoned with mustard and curry leaves. After this, the idli is steamed, topped with cashew nuts and served with tangy coconut chutney, sambar or a vegetable kurma. Some versions also have tiny chopped pieces of beans, grated carrots or coconut and chopped coriander. The Rava idli feels lighter on the tummy and great on the palette. It does not have urad daal or rice, making it a healthy, savoury option. At that time, MTR’s invention was welcomed with open arms and the demand for this South Indian Tiffin item went soaring. Rava Idli is known for its simplicity and minimal complexity in cooking, its nutrition, and for its better taste. That was how Rava idli became a very popular dish, and its credit goes to MTR. Silver tumblers are used to serve beverages at MTR
Rava idli translates to semolina idli in the Kannada language. It is usually found in restaurants serving Udupi cuisine, served hot and to be eaten along with saagu and coconut chutney. A dash of ghee poured on top of Rava idli adds to the overall taste.
The original ingredient is still used. Rava idli is now made the same way as the original recipe is followed everywhere. The consistency has also been followed as the recipe was written down and handed over to the cooks over the years.
In 1976, when the Emergency was declared, the government called five of the most well-known restaurants in the city, including MTR, and told them that they had to reduce the prices of the food at their restaurants according to government-approved rates, to bring it within reach of the common man. The prices of the items were to be the same in all the restaurants. Some restaurants paid up; others started compromising on the quality. MTR did neither. MTR kept food quality as high as ever and put up a board stating the losses for the day outside the restaurant. MTR continued in this way for 16 days. On the 16th day, it closed down. During this time, MTR opened a small departmental store next to the hotel and started making and selling mixes for Rava Idli and other items. The restaurant opened again once the Emergency was lifted in the year 1984. The success of Mavalli Tiffin Rooms is not credited to the emergence of Rava idlis alone. The art of leveraging opportunities as the business stepped further helped the restaurant become the top-rated and familiar MTR Foods.
To save the jobs when it was closed, MTR started selling spices and roasted flour mixes. That began its entry into the convenience and instant food business. Currently, the MTR brand represents two separate entities; the MTR restaurant business and MTR Foods, the pre-packaged food business.
In 1994, the MTR management decided to tackle the conundrums of these dividing interests by heading in two separate directions- the restaurant and and the packaged food chains as they have become two separate verticals of the business model.
Many of India’s food businesses have been built around Western and Chinese cuisines. Only pasta and noodles are talked about in the packaged food space. In the breakfast space, it is oats, Kellogg’s, etc. But MTR provides Indian breakfast options with Idli, Rava Idli, upma, and poha, among others. It also comprises of ready-to-eat range, vermicelli, spices & masalas, beverages, dessert mixes, confectionery, and pickles. While Haldirams celebrate North Indian snacks.
In the endeavour to grow, MTR required private equity funding in 2000 and 2003. The business grew, and the investors could exit. In 2007, Norwegian conglomerate Orkla bought MTR for $100 million which was one of the most talked-about acquisitions of the time.
Today, Mavalli Tiffin Rooms is present in 9 locations in Bangalore, 1 in Udupi, 1 in Singapore, 2 in Dubai, and 1 in Kuala Lumpur, while MTR Foods exports to a total of 32 countries, including the United States, United Kingdom, Middle- East, Japan, Canada, Australia, Germany, New Zealand Singapore, Malaysia, Mauritius, and many others.
Author: Samra Zulekha, SDM Law College, Mangalore
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