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Monday, 30 January 2012

Nestle and Amul Locked in Row Over Trademark

Nestle India and Gujarat Cooperative Milk Marketing Federation (GCMMF), which markets its dairy products under the brand 'Amul' are locked in a row over using a trademark.

GCMMF has sent a legal notice to Nestle India stating about the trademark infringement when the latter launched its own brand of milk and yoghurt under the brand name-a+ (Plus), in December last year, sources privy to development said.

Amul has claimed in the notice that is has been selling fortified cheese under the brand 'Amul A+' since one year and high calcium milk labelled as 'Amul Calci+' since last four years, they said.

While, Nestle India has claimed that it was using the brand a+ (Plus) for its milk and yoghurt as it has purchased it from a person in North India.

"We are in talks with Amul over the alleged infringement of trademark, which we had purchased from a North Indian," a Nestle India executive said, preferring anonymity.

An e-mail sent to Nestle India for case details did not solicit response.

However, neither of the two leading dairy product marketing giants have moved court over the issue. They are still in dialogue and seeking an amicable solution to it through negotiations, according to sources.

"We are not commenting on the issue as negotiations are still underway with Nestle India over the trademark infringement issue," a top GCMMF functionary told PTI, on the condition of anonymity.

An executive of Nestle India said in an e-mail reply to PTI, "The A+ brand is legally assigned to us in accordance with accepted practices. We are currently in discussions with Amul and prefer not to comment further,".

The over Rs 9,700 crore brand Amul enjoys 25 per cent share in the country's organised milk retail and 70 per cent in the cheese market segment.

Sunday, 22 January 2012

New Requirements for Registration of Trade Marks in India

Controller General of Patents, Designs and Trade Marks dated 9th of January 2012 bearing no. CG/F/ Public Notice/ 2011/ 81. In a move to bring about accuracy of trade mark records and applications and to limit the potential for misuse of a broad claim in case of description of goods and services of a trade mark, the Controller General of Patents, Designs and Trade Marks has issued the aforementioned circular which requires Trade Mark applications to have the following information, failing which the Trade Mark Applications will not be processed henceforth:
1. Description of Goods / Services: Actual description of Goods /Services in respect of which the trade mark is proposed to be used or has been used should be mentioned and terms like "all goods/ services", "etc.", "all other goods/ services included in class……" , "goods/services not limited to ……….." shall not be entertained. Thus, when filing a trade mark application one should only mention those goods / services in respect of which the applicant is using / proposes to use the trade mark.
2. Names: The full names (initials are not allowed) of Proprietors in the case of a Proprietorship Firm, the full names of all Partners in case of a Partnership Firm, name of the Managing Trustee in case of a Trust and name of the person representing the society in the case of a Society, should be mentioned.
3. Date of USE: In the case of a claim of date of prior use of the trade mark, the actual date- consisting of the day, month and the year, when the trade mark was used should be given and not just the year and the month.
4. Translation/Transliteration: Proper translation/transliteration of the trade mark should be provided in the case of Non-English characters appearing in the mark.
5. Visibility of Trade Mark: The trade mark should be clearly visible.

Saturday, 21 January 2012

The War Between Copyright and Remix Culture

If there’s one concept that has suffered more damage than just about anything else as a result of the Web and the ongoing explosion of digital media, it’s that of copyright: The idea that a content creator should have virtually unlimited control over his or her creation, regardless of what form it takes. As blogger Andy Baio notes in a recent post, the principle behind copyright has been taking a beating from “remix culture,” driven in large part by YouTube (GOOG) and other video sites. Is the rise of the YouTube generation changing the way we think about copyright—and if so, should we let that happen? Do we even have a choice?

Baio, a long-time digital journalist who blogs at and is also a former chief technology officer of Kickstarter and a staffer at Expert Labs, notes that a huge number of the users who post mashups and other video interpretations of popular music to YouTube seem to have only a hazy idea of what copyright is, or how it’s applied to works like the ones they are uploading. As he notes, there are close to a million videos on the site that contain phrases like “no copyright infringement intended” or invoke the “fair use” clause in U.S. copyright legislation. In the vast majority of cases, these videos are probably illegal under the current law.

Saying things like “No copyright infringement—I only put this up as a project” (as one video uploader who posted a version of the movie Pulp Fiction, reassembled in chronological order, did) has no real legal force or effect, as Baio points out. Whether fair-use principles would apply to these kinds of creations is a more difficult question to answer, since the definition of fair use is notoriously complex. The courts use the so-called four factors test, which assesses the nature of the re-use, the intent of the new work, and the impact this has on the original. But as Baio notes: “Under current copyright law, nearly every cover song on YouTube is technically illegal. Every fan-made music video, every mashup album, every supercut, every fanfic story? Quite probably illegal, though largely untested in court.”

There are a number of ways to look at this kind of activity: If you are a copyright holder or a lawyer or an organization such as the Motion Picture Association of America, you can see it as theft, pure and simple—and you can file thousands of takedown notices under the Digital Millennium Copyright Act (including some fairly absurd cases in which music appears in the background of a video), or push for even more regressive and punitive legislation like the proposed Stop Online Piracy Act, which would allow you to remove websites from the Internet permanently, among other things.
Remix Culture Becomes “Normal”

At some level, however, this approach arguably turns into a self-defeating strategy for the media and content industries. I think Baio is right when he suggests that the “remix culture” many of these YouTube users identify with is changing the way an entire generation thinks about copyright, for better or worse. (I would argue it is for the better.) For them, the “fair use” principle is far broader than the courts would probably define it. Who is to say they are wrong? Says Baio: “No amount of lawsuits or legal threats will change the fact that this behavior is considered normal—I’d wager the vast majority of people under 25 see nothing wrong with non-commercial sharing and remixing, or think it’s legal already.”

As I’ve pointed out before, my teenaged and older daughters experience popular media of all kinds through remixes of some sort or other. Whether it’s a TV show like Doctor Who or Glee, or a popular song, or movies such as those in the Twilight series, they are almost constantly sharing remixes, mashups, parodies, and other references through social platforms like YouTube and Facebook and Tumblr. Almost every one of these is probably illegal, although some might be covered by fair use if they ever went to court.


Thursday, 5 January 2012

Publisher Guidelines for a "Work Made For Hire"

The following guidelines should help you obtain and retain copyright ownership of creative works that are intended to qualify as a "work made for hire."
  1. Reduce to writing the rights of the employee and publisher with respect to employment-related works and other works.
  2. Have a written "work made for hire" agreement with all freelancers and independent contractors who create works that you want to qualify as a "work made for hire." Merely stating that this is a "work made for hire" agreement does not make it one; all the requirements of the independent contractor prong must be satisfied.
  3. Make sure the written "work made for hire" agreement is signed by both parties before the creation of the work.
  4. Include an appropriate "assignment" clause in the "work made for hire" agreement that will serve as a back-up if the work does not qualify as a "work made for hire".

Will the Publisher Own the Copyright for All Works Created by Freelancers?

Not necessarily. Although the independent contractor prong requirements for a work to qualify as a "work made for hire" also appear to be straight forward, publishers often fail to satisfy the specific requirements. If the work fails to qualify as a "work made for hire" there is a great likelihood that the publisher will not own the work that he has paid for.

A freelancer's creative work in order to qualify as a "work made for hire" must satisfy the exact requirements of the Copyright Act. (1) The work must have been specially ordered or commissioned by the publisher. (2) The work must "fit" into one of nine narrow statutorily enumerated categories of work: (i) contribution to a collective work, (ii) part of a motion picture or other audiovisual work, (iii) translation, (iv) supplementary work (i.e., prepared for publication as a secondary adjunct to another author's work such as an index or forward), (v) compilation, (vi) instructional text, (vii) test, (viii) answer material for a test, or (ix) atlas. (3) The parties must agree in a written and signed document that the work shall be considered a "work made for hire." In addition, although it is not stated in the Copyright Act, the "work made for hire" document must be signed by both parties prior to the commencement of the work. If the publisher fails to satisfy any of these requirements the work will not qualify as a "work made for hire" and the publisher could lose copyright ownership of the work.

Where do publishers go wrong when freelancers create works that the publisher wants to qualify as "works made for hire"? The specially ordered or commissioned requirement is usually never a problem. The nature of work frequently creates problems for the publisher. The reason for this is that the nine enumerated categories of works are not all inclusive and many significant categories of works cannot be considered a "work made for hire" under the independent contractor prong of the Copyright Act. Therefore if a work does not fall into one of the nine categories, even if it was specially ordered or commissioned, it will not qualify as a "work made for hire." From my experience, the written document requirement presents the greatest difficulty for publishers. Some publishers have only oral agreements with their freelancers; as may be expected the work created under an oral agreement will not qualify as a "work made for hire". Other publishers prepare the written "work made for hire" document, however, for a variety of reasons the document is not signed by both parties until after the freelancer has started or even completed creation of the work. If this situation occurs the work will not qualify as a "work made for hire"; this is because the written document was not executed by both parties prior to the creation of the work.

Copyright Ownership: Is the Creator of the Work an Employee or Independent Contractor?

The first question the publisher must ask with respect to the "work made for hire" doctrine is whether the creator of the work falls under the employee prong or independent contractor (freelancer) prong. The significance of this line-drawing is that there are different requirements in the Copyright Act for a work to qualify as a "work made for hire" depending upon whether the creator of the work is an employee or freelancer. If the creator of the work is an employee, the publisher, as the employer of this employee, automatically, without any written employment contract, owns the copyright and all exclusive rights in creative works of employees that are prepared within the scope of their employment. Judicial decisions have established that an "actual" employee is one where the publisher has the right to control the "manner and means" of production. Employee status will generally be found where there is a salaried employment relationship, tax withholding, employee benefits and other indicators of employment as outlined in Part I.

But if the creator of the work is not an employee, but instead a freelancer, than the "work made for hire" requirements of the independent contractor prong must be satisfied. This means that the work must be specially ordered or commissioned by the publisher, the work must fall into one of the nine enumerated categories of work, and there must be a signed writing between the parties where they agree that the work will be considered a "work made for hire."

Will the Publisher Own the Copyright for All Works Created by Employees?

Not necessarily. Even though the great majority of works created by employees will be owned by the publisher there is a possibility that some works might not be owned by the publisher. Although the requirement of "works prepared within the scope of employment" appears straight forward it can become somewhat complicated when employees work off the premises or when they create works on their spare time. If the work is to qualify as a "work made for hire" under the employee prong the employee must create the work within the normal scope of their job. The reason for this is that "no one sells or mortgages all the products of his brain to his employer by the mere fact of employment." Even if there is no question that the creator of the work is an employee, if the work is created outside the scope of the employee's normal job activities, it will cast doubt on the publisher's claim to the copyright. Therefore the "wise" publisher will reduce to writing the rights of the employee and publisher with respect to employment-related works and other works.

Court asks Star not to use 'Master Chef' title for programmes

A local court on Saturday retrained Star India from using Master Chef title for its various shows till further order after a Mumbai based company alleged trademark infringement.
Star India Pvt Ltd "is restrained from using publishing exhibiting telecasting television show through its channels otherwise under the trade mark Master Chef India 2 on star plus channel and Master Chef Australia and Master Chef USA on star world television channel.... till further order," Additional District and Session Judge Vimal Kumar said here in his exparte order.
The order came on a suit filed by Mumbai-based Wings Entertainment Ltd which claimed that the company in October 2010 noticed that the star plus channel had started using the trademark Master Chef India for its television show which is same/similar as the aforesaid registered trade mark Master Chef of Wings Entertainment Ltd.
The channel, the company claimed, did not stop infringement of trademark inspite of receipt of a Cease and Desist Legal Notice dated 12th October, 2010.
The company's counsel alleged that Star Plus has again infringed trademark by telecasting Master Chef India-2 from November, 2011.
After hearing the agreements, the judge directed the Star India Pvt Ltd stop using ‘Master Chef’ trade mark till further order and fixed the next date on January 6, 2012.

Wednesday, 4 January 2012

HC rules in favour of Indian Co in trademark copyright case

The Bombay High Court has dismissed the Netherlandbased liquor group's plea, seeking to restrain Tilaknagar Industries Ltd here, from using trademarks 'Mansion House' and 'Savoy Club' on products sold in India.

Tilaknagar Industries claims to be a major player in the sale of Indian made foreign liquor in India and manufactures 40 brands, including the 'Mansion House' brandy.

UTO Nederland BV and Distilleerderji en Likeurstokerji Herman Jansen BV had filed a suit alleging that Tilaknagar Industries, by printing labels on its products, has infringed their copyright in the original artistic works.

The plaintiffs claimed that they were the registered proprietors of the trademarks 'MANSION HOUSE','MH', 'MHB' and 'SAVOY CLUB' and contended that the defendant has, by using the trademarks, passed off their products, such as alcoholic beverages, spirits and liquors as those of the plaintiffs or as emanating from or being associated with the plaintiffs.

Comparing the labels of the products sold by plaintiffs as well as the defendants, Justice S FVajifdar held in his 90-page order on December 22 that there was no similarity between them.

The literature, shape of the label and the entire get-up of the labels are different. Prima-facie, the mere depiction of the official residence of the Lord Mayer of the city of London would not constitute an infringement of copyright.

Tuesday, 3 January 2012

Amul and Nestle to fight for ‘A+’ mark

The desi manufacturer of milk products, Amul has sued international brand Nestle for trademark violation of its brand ‘A+’. Amul was founded in 1946, and has emerged as the world’s largest diary producer over the years. Amul’s products are extremely popular and much sought after. Recently, Nestle India has launched its new dairy brand ‘a+’ in the market. Gujarat Cooperative Milk Marketing Federation (GMMFC) that markets the Amul brand has sent a legal notice against Nestle India alleging that it has infringed Amul’s trademark by passing off its similar product (Nestle A+ Milk and dahi) as those of Amul’s. Amul claims that it is the prior user of the mark A+, and has been manufacturing the said brand since one year.
Amul claims damages to the tune of 10 crores from Nestle for attempting to unjustly enrich from the goodwill that it has earned over the years. The notice also demands that Nestle should refrain from using the mark a+ as a part of its trademark label and also give an undertaking to the effect that henceforth it shall not manufacture, sell or advertise products using the mark a+. Amul strongly believes that consumers are likely to get confused between the two products as they are deceptively similar. The legal notice has been addressed to the Chairman of Nestle India stating that multinational giant is liable under the Trademark Act, 1999 and other relevant laws for infringement. The notice categorically states, “being the original and prior adopter and prior user of trade marks like A+', GCMMF and Kaira are the sole lawful proprietors of the said trade mark labels and have statutory exclusive rights of the same”.
Amul, being the largest milk producer has a substantial market share over diary products, and is definitely the most preferred brand by the consumers. That being the case, chances are likely that the utterly butterly girl tastes success over its competitor. 

Bayer, India's Cipla settle trademark suit

Bayer AG's (BAYGn.DE) healthcare unit said it settled trademark infringement cases with Indian drugmaker Cipla (CIPL.NS) and Vanuatu-based website operator Archipelago Suppliers concerning the German drugmaker's pet products.

Bayer HealthCare LLC said Cipla's DA Double Advantage pet treatment violated the trademark rights of its flea preventative, Advantage. Bayer had sought to block future sales of the product in the United States.

Under the settlement, Cipla will surrender all profits it made from the sale of its DA Double Advantage, amounting in excess of $100,000, and discontinue all use of the trademark.
Bayer received an additional $100,000 as reimbursement for attorneys' fees, and Cipla agreed to recall any product remaining in the sales pipeline.

Cipla will also stop use of the trademark 'Advance' for a companion animal product and not make any product with the same formula as Bayer's Advantix, another patented flea preventative, during the remaining term of those patents.
Website operator Archipelago agreed to a consent decree, under which it is prohibited from selling DA Double Advantage and Advantix in the United States, Bayer Health Care said.
Cipla was not immediately available for comment.