Monthly Archive for November, 2008

Names of Mountains not Acceptable for Registration

November 28, 2008

The Registrar of Trademarks has declared that Mount Everest Mineral Water cannot register names of mountains as trademarks.

Based on the Geographical Indications Act, it has been established that names of mountains are not suitable for registration as trademark for agricultural and natural products.

In other words, anybody can use the term HIMALAYA to market its goods. This decision is final and so the Appellate Board may instruct the Registrar to cancel Himalayan from the register as a trademark.

Geographical indication such as Himalayan or Himalaya, which serves to denote the geographical origin of the products in question, is not prima facie registrable as trademark. Accordingly, the entries in the Register in respect of these two trademarks may have to be considered as wrongly made, the Registrar of Trademarks said in a letter dated September 9 this year.

This whole conflict started when Mt. Everest filed a restriction against Bisleri in the Delhi High Court (June 2008) preventing them from using the word HIMALAYA as a trademark. The plaintiff claimed that HIMALAYAN is the registered trademark of the company and that nobody should be allowed to use the words Himalayan, Himalayas and Himalaya.

As a response, Bisleri filed an application with the Intellectual Property Appellate Board seeking to cancel the trademark based on the argument that HIMALAYAN is a word which describes the source, quality and properties of the water. In fact, other water brands such as Paras, Catch, Hello, Qua and Natural also use the descriptive word HIMALAYA.

Geographical indication such as Himalayan or Himalaya, which serves to denote the geographical origin of the products in question, is not prima facie registrable as trademark. Accordingly, the entries in the Register in respect of these two trademarks may have to be considered as wrongly made, those were the words of the Registrar of Trademarks in September this year.

Bisleri was taken to court for using the generic word from the Himalayas. We had no choice but to go to the Intellectual Property Board to strike off the brand Himalayan. Now anyone who is making water in Himalayas can use the expression from the Himalayas. There are at least four other manufacturers of mineral water using the word Himalaya. This is a statement of fact and cannot be objected, Bisleri International chairman Ramesh Chauhan said.

500,000th Community Trademark

November 28, 2008

After enjoying more than a decade of unprecedented demand for European wide protection of intellectual property, the European trade marks and designs registration office, OHIM, has registered the 500,000th Community trade mark

Since the Community trade mark was introduced in 1996 to provide legal protection throughout the European Union in a single application, demand has increased enormously. On 2007 OHIM received approximately 90.000 Community trade mark applications, which is further more than the 20.0000 foreseen on the 90.

OHIM is an independent, non profit making European agency, funded entirely by fees from customers. The agency is based in the Spanish city of Alicante.

Most of the trade mark registration processes are done through the Internet. As a result of the intensive use of e commerce tools and strict cost controls, productivity measured in terms of registrations per head of staff has risen significantly, and the agency has a growing financial surplus.

According to information released this achievement and finantial sutuation could be reflected on the registration fees, which cost can be brought down sharply.

OHIM President Wubbo de Boer says: We are in the fortunate position of offering a service that is very popular with both large and small businesses and which, in general, has seen growing demand.

Registering our half a million Community trade mark is a very important milestone. I would pay tribute both to the vision of those who saw the need for Europe wide IP protection and to the European and global customers who have put their confidence in us over the years.

The cost of trade mark protection is a major concern , and I am particularly glad that we will be able, by mid way through next year after the Commission brings forward its proposals, to cut the cost of having a Community trade mark by about 40% to around 1 000.

Member States Review Key Copyright Issues

November 28, 2008

WIPO member states met from 3rd until 7th of November 2008, to revise a number of fundamental copyright issues. The conference examined WIPO work on limitations and exceptions, the protection of audiovisual performances and broadcasting organizations and discussed the question of access to copyright protected content by visually impaired persons.

Limitations and Exceptions: Access for Visually Impaired People

Some of the member states recognized the special needs of disabled persons (including the blind, visually impaired and other reading disabled persons) and pointed out the importance of concentrating on those needs.

They have agreed to analyze current limitations and exceptions. The possible establishment of a stakeholders platform at WIPO was also discussed, as to simplify secure access for disabled persons to copyright protected works.

Due to the fact that for visually impaired people to have access to copyright protected works in a readable format (e.g. Braille, large print and audio books) may be necessary to copy and transform a given work into a large text or other format. The law in many countries allows such copying and transformation without the rights owners permissions, in other countries; those acts could infringe copyright if done without permission.

Audiovisual Performances

Member states expressed their interest to develop for performers the international protection of audiovisual performances. The importance of information exchange as a means of building consensus on this issue was underlined.

Broadcasting Organizations

It was decided to continue discussions on the protection of broadcasting organizations with a view to concluding an international instrument.

Progress has been achieved in boosting understanding of the various stakeholder positions. Nonetheless, further work is necessary to achieve agreement on the objectives, specific scope and object of protection of such an instrument before convening a diplomatic conference to conclude a treaty.

Reason why a diplomatic conference could be arranged only after agreement on objectives, specific scope and objective of protection had been achieved.

Business Welcomes New EU Observatory to Fight Counterfeiting and Piracy

November 27, 2008

Business leaders from Business Action to Stop Counterfeiting and Piracy (BASCAP), an initiative of the International Chamber of Commerce (ICC), welcomed news that the European Council has established a European Observatory on Counterfeiting, a press release by the ICC stated.

The Council resolution establishing the observatory was initially put forward by the French EU Presidency. The new observatory will bring together for the first time European government and private sector stakeholders to measure and analyze the counterfeiting and piracy problem impacting Europe, and develop solutions to the growing problem.

The observatory provides a unique and much needed forum for gathering the expertise of European public and private sector leaders to share intelligence and strategies for fighting the growing problem of counterfeiting and piracy in the region.

Experience has shown that while the problem is global, responses are most effective when they are tailored to the stakeholders, consumers and infrastructures of a particular region.

Drawing on Member State and private sector input, the observatory will develop an annual report identifying places in Europe where counterfeiting and piracy is rife, source and transit countries for fake goods reaching Europe, and Internet sites selling fake products into Europe. It will also study the effectiveness of the legal framework in enforcing intellectual property rights, country by country.

In addition to the analytical reports, the observatory is expected to compile practical tools to aid cooperation between customs officials and brand owners, including a directory of contacts for European government and private sector actors involved in the fight against counterfeiting and piracy, and a compendium of best practices.

The observatory will also develop communication materials to educate consumers on the issue, and will work with relevant actors such as travel agents to develop a campaign to sensitize consumers in Europe of the dangers associated with buying fake goods, building upon the various public awareness campaigns already underway in European anti counterfeiting associations.

China Extends Application of Internet Treaties to Hong Kong SAR

November 27, 2008

As of October 1, 2008, the terms of two key international copyright treaties will extend to the Hong Kong Special Administrative Region (SAR). The Government of the Peoples Republic of China has notified the World Intellectual Property Organization (WIPO) that it has extended application of the WIPO Copyright Treaty (WCT) and the WIPO Phonograms and Performances Treaty (WPPT) known as the Internet Treaties to the Hong Kong Special Administrative Region.

These treaties, which entered into force in 2002, bring the international system of copyright and related rights more in line with the challenges of the digital age.

When China joined the WCT and the WPPT in June 2007, WIPO was informed by the Chinese Government that that In accordance with the Basic Law of the Hong Kong Special Administrative Region of the Peoples Republic of China and the Basic Law of the Macao Special Administrative Region of the Peoples Republic of China,
the Government of the Peoples Republic of China has decided that, unless otherwise notified, the Treaty shall not apply to the Hong Kong Special Administrative Region and the Macao Special Administrative Region of the Peoples Republic of China.

This would enable Hong Kongs talented creators to create, distribute and control the use of their works within the digital environment with greater confidence.

The WCT and WPPT were agreed in 1996 and became law on March 6 and May 20, 2002 respectively. To date, 67 countries have signed up to the WCT and 66 to the WPPT.

These treaties have been of key importance in boosting the development of the Internet, electronic commerce and the culture and information industries by ensuring the quality and authenticity of digital content. This has enabled creators, performers, sound recording producers and associated industries to reap the financial rewards of their talent, creativity and investment.

Memorandum of Understanding Between SIPO and USPTO Signed

November 27, 2008

On October 25, heads of SIPO (China) and the United States Patent and Trademark Office (USPTO) hold talks in Beijing, and the two offices sign a cooperative memorandum of understanding.

SIPO Commissioner Tian Lipu

During the talks, Mr. Tian reviews the cooperation projects launched by the two offices in the past, including examiner exchanges, conjunctive retrieval, jointly holding seminars and exchanges of automation expert panels, saying that the two offices have deepen friendship on the basis of the successful cooperation.

Mr. Tian points out that the two offices have established unblocked and close cooperation in extensive areas and should continue to deepen the sound bilateral cooperation. Mr. Tian stresses that with the development of IP systems, SIPO and USPTO are facing the same challenges, and there is still a large potential of future cooperation. He hopes the two offices can further strengthen communications to consolidate and explore cooperation in other fields.

USPTO Director Jon Dudas

Mr. Dudas notes that Commissioner Tian’s deep understanding and unique perception upon IP system is one of the important factors of the rapid development of SIPO. SIPO is playing an increasingly important role on the world IP stage, and USPTO hopes to conduct deep cooperation in other extensive fields with SIPO to further improve the working efficiency.

The memorandum covers many cooperation projects such as examination business, automation, jointly holding seminars and dispatching examiners to each other’s office. The signing of the memorandum can help SIPO and USPTO to maintain the continuity of long term cooperation.

Advertising and Trademark Infringement

November 27, 2008

If a trademark is used for the purpose of identifying goods or services and the use is in accordance with honest practices in industrial and commercial matters, and does not without due cause take unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark then there is no infringement.

For obvious commercial reasons, clearances should always be sought as early as possible before production starts. In practice, however, this does not always happen, leaving the advertiser and its agency to negotiate in a position where substantial expenditure has been committed to an advertisement which contains infringing material.
For evidential reasons, it is clearly preferable for advertisers and their agencies to obtain clearances in writing.

In relation to copyright there is no infringement where the inclusion of a work into an artistic work, sound recording, film or broadcast is an ‘incidental inclusion’. However, this defense has been interpreted very narrowly by the courts.

As there is usually a significant amount of high level planning most advertising and marketing materials and the availability of post production technology to remove or alter uncleared elements in an advertisement, it is submitted that the ‘incidental inclusion’ defense will typically be difficult for advertisers and their agencies to sustain.

Again clearance should generally be obtained from the owner of any copyright and moral rights in any photograph or any other two dimensional ‘artistic work’ appearing in a piece of advertising or marketing material.