Article

Single colour trademarks – A ‘grey’ area

By Anushka Verma and R. Rajalakshmi

The first article in this issue of IPR Amicus analyses the dilemma relating to single colour trademarks in India. It observes that a literal interpretation of the statutory provisions leads to a straightforward conclusion that a single colour cannot be applied as a trademark. However, this may often contradict with another basic tenet of trademarks law, that when a mark functions as a source-identifier for the consumers, the same should be protected under law. The article further also takes note of the colour depletion theory, according to which if single colours are protected, it would eventually lead to a monopolization of all basic colours. The authors also note that the judiciary in India and the world over has till now offered divergent views on the question of single colour marks. Taking note of the Manual of Trade Marks Law and Practice, the authors are of the view that the courts will firstly, have to purposively interpret the statute to not limit the protection of trademarks to ‘combination of colours’ only, and secondly, undertake an in-depth analysis of whether the single colour mark has acquired distinctiveness through its continuous use...

Article

Obtaining statutory licence requires strict compliance with Copyright Rules

By Gursimran Narula and Godhuli Nanda

The second article in this issue examines the final judgment of the Madras High Court on constitutionality of Rule 29(4) of the Copyright Rules, 2013 which implements Section 31D of the Copyright Act, 1957, and traces its implications for the statutory licensing regime in India. The High Court has rejected the challenge raised by the radio broadcaster with regards to the conflict between the Copyright Rules and the Copyright Act. The authors note that the strict compliance to Rule 29 as prescribed by the Delhi High Court in Super Cassettes case has now been reemphasised by the Madras High Court in Next Radio case. According to them, the judgement of the Madras High Court imparts clarity on implementation of the statutory licences in India which ensures a win-win situation for the copyright owners and the broadcasters...

Ratio decidendi

• Sale of existing stock of alleged infringing goods – Appeal when maintainable against order passed in CPC Section 151 application – Delhi High Court
• Injunction necessarily follows where infringement is established – Honest and concurrent use is no defence - Delhi High Court
• Producer’s copyright in cinematograph films extends to dubbing rights – Separate and independent right exists in remade film – Delhi High Court
• Patents – Amendment to claims before grant of patent to be construed liberally – Court allows amendment from ‘product by process’ to ‘process’ claim – Delhi High Court

News Nuggets

• Patents – Post-grant oppositions are to be decided in an expeditious manner
• Delay in filing written statements when not condonable
• Non-filing of response to FER in stipulated time when condonable
• Trademarks – Word ‘Super’ is descriptive and laudatory
• Word ‘Healthskool’ is distinctive enough for registration in Class 10
• Domain Name Registrars to create mechanism for IP owners to seek cancellation of infringing domain names
• Facebook, a well-known mark – Court permanently restrains use of ‘Facebake’ and ‘Facecake’
• Trademark disparagement – Defendant to convincingly show correctness/truth in advertisement