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“TRIX” as early as 29 July, 1910 – vs -“AMUL TRIX” since 1986-an advertisement on the internet in the DNA Daily News on 26.11.2007-.the mere fact that the party has not used the mark in India would be irrelevant if they were first in the world marketThe applicants have used the trade mark outside India and have proved their intention to use in India by filing an application for registration. The applicant’s use outside India is not in dispute. 29. Considering all the above, the application for rectification ORA/28/2008/TM/AMD is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.330224 in Class 30. There shall be no order as to costs..

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018     CIRCUIT SITTING AT AHMEDABAD     M.P.No.297/2010 & M.P.No.76/2012  in ORA/28/2008/TM/AMD AND ORA/28/2008/TM/AMD   MONDAY, THIS THE 16th DAY OF JULY, 2012     Hon’ble Ms.S. Usha                                                       …  Vice Chairman Hon’ble Shri V. Ravi                                                      …  Technical Member             … Continue reading

As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”. [6] As defined in s 10 of the Act, which provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. [7] In the context of closely related goods and services, but relevant also in the context of “similar goods” as defined in s 14(1) of the Act. [8] And were also approved by the Full Federal Court (Burchett, Sackville and Lehane, JJ) in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561. [9] Burchett J was specifically referring to the words “goods of the same description” as used in s 23(2) of the repealed Trade Marks Act 1955, but his remarks are no less applicable to the current legislation, as confirmed by the Full Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27(29 July 2009) at [71] in holding “beer” and “wine” to be goods of the same description. [10] See also the discussion by the Hearing Officer on this subject in Société des Produits Nestlé SA v Strasburger Enterprises Inc (1995) 31 IPR 639 (QUIK v QUIX) at 646 to 649. [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411 at [50]. [12] Australian Woollen Mills Ltd v F.S. Walton & Co [1937] HCA 51; (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[1963] HCA 66; (1961) 109 CLR 407 (at 415) [13] Being Re Application by the Pianotist Co Ltd (1906) 23 RPC 774 at 777; 1a IPR 379 at 380, Australian Woollen Mills Ltd v F.S. Walton & Co [1937] HCA 51; (1937) 58 CLR 641 (at 658) and CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 (“Henschke”) at [40] to [42]. [14] I note Windeyer’s earlier quoted words were “are to be (or can be) used”, not “are used or can be used”. [15] I note in passing that as far as s 44 is concerned it is not strictly relevant what goods the Opponent may have used its marks for; indeed they need not have been used at all. Certainly there was no suggestion by Ms Chrysanthou, or support in the evidence, for the proposition that the Opponent’s trade marks had the kind of notoriety acquired through use contemplated by the Federal Court in Woolworths or Henschke and which may impinge on s 44 considerations. [16] Citing Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; (2003) 59 IPR 318 per Bennett J at [78] and Jockey International, Inc v Darren Wilkinson [2010] ATMO 22 at [38]. [17] Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited [1952] HCA 15; (1952) 86 CLR 536, “Frigiking” Trade Mark [1973] RPC 739, Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 47; [2004] RPC 40 and Pfizer, Inc v Schering-Plough Animal Health Corporation [2006] ATMO 92 are cited as authorities for this proposition. [18] The search was conducted on 20 December 2010, but all but ten of the 80 marks disclosed have priority dates earlier than the Trade Mark. Moreover several registrations for such marks covering milk or milk based goods which post-date the opposed application, including the Opponent’s registration 1262221 CALPIS (Stylised), in any event appear to further confirm that the prefix CAL- might reasonably be considered common to the trade in such goods. [19] [1952] HCA 15; (1952) 86 CLR 536 (at 539) [20] Being the words of French J in Woolworths at [45] quoted in paragraph 14 above. [21] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101. [22] Mr Matsumoto annexes an (undated) extract from the 3rd edition of a publication by the International Association for the Protection of Intellectual Property of Japan called (in English) “Famous Trademarks in Japan” showing an entry for the CALPIS mark. [23] Cullens had earlier submitted that the CALPIS branded milk based product, being based on a cultured milk concentrate, was unique to the Australian market, but even if this were so, the coverage of the opposed application is wide enough to embrace the Opponent’s goods in my view. [24] Based on an average case price of ¥2,500 and an exchange rate of ¥85 = A$1.00, or approximately A$30.00 per case. [25] Cullens’ submissions were of course prepared before it was known that the Opponent’s s 60 ground was based on the claimed reputation of the CALPIS trade mark only.

Calpis Co., Ltd v ALDI Foods Pty Ltd [2012] ATMO 44 (3 May 2012) Last Updated: 14 June 2012 TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS   Re: Opposition by Calpis Co., Ltd to registration of trade mark application 1296239 (29) – CALPLUS – filed in the name … Continue reading

Two applications ORA/17/2009/PT/CH by Spice Mobiles Limited [Herein after referred as first Applicant] ORA/31/2009/PT/CH by M/s. Samsung India Electronics Pvt. Ltd [Herein after referred as second Applicant] are filed for revocation of patent No.214388 granted to Shri Somasundaram Ramkumar. The patent relates to Mobile Telephone with a plurality of Simcards allocated to different communication networks. .The Applicant has failed to prove its contention by suppressing the material facts. It is an admitted fact that the application for patent was made on 04.03.2002; it is the definite case of the Applicant also that on that date, no similar petition of the Respondent was pending prosecution in any other country. S. 8 [1] reads: “Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person, an application for patent in any country outside India, in respect of the same or substantially the same invention or where to knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application. As such there is nothing to be filed along with his application since the Respondent never filed any application in any country for patent of the same or similar invention. It is pertinent to note that an application was filed by the Respondent before PCT Cell at Chennai and that was forwarded by the same Patent Office to the WIPO for getting priority if necessary. Thus no application for patent was filed in any country and prosecuted at any point of time by the Respondent specifically. It is not correct to state that Japan gave a status as withdrawn on 21.06.2006 on the other hand it reported that “PCT international application, It was not subject to publication in Japan because your PCT international application has not entered into the national phase in Japan within the prescribed period, i.e. 30 months from the priority date”. In Australia also it has been stated that the Respondent had not entered the national phase and hence the application has lapsed; thus it is crystal clear except for getting priority, PCT was approached and the Respondent never applied to any country for patent and hence there is no violation of provisions of Section 8 of the Act.” 90. In the present case since we are revoking the patent on the ground of anticipation and lack of inventive step, it is not necessary to deal with the other grounds such as insufficiency, mere combination and violation of Section 8. 91. In view of the analysis and finding as stated above the patent number 214388 is revoked and respondent 2 is directed to remove this patent from the register of patents. The ORA/17/2009/PT/CH and ORA/31/2009/PT/CH are allowed with costs of Rs.5,000/- each.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018     ORA/17/2009/PT/CH FRIDAY, THIS THE  1st  DAY OF JUNE, 2012 Hon’ble Smt. Justice Prabha Sridevan                            … Chairman                              Hon’ble  Shri D.P.S. Parmar                                                … Technical Member (Patents)     Spice Mobiles Ltd., a Company Incorporated under the … Continue reading

INTELLECTUAL PROPERTY APPELLATE BOARD- One Overture Services Inc. (original patent applicant) applied on 14.05.2004 for patent of its invention titled in respect of “System and method for influencing a position on a search result listing generated by a computer network search engine” which was later amended to “A method of operating a computer network search apparatus”. The application claimed priority from an US application 09/322677 dated 28.05.1999. The First Examination Report dated 30th December, 2004 raised 17 objections. The crucial objections were: the claim falls within section 3(k) of the Patents Act, 1970 (the Act in short); claims 62 and 63 not sufficiently distinctive and that the question of novelty will be considered after the objections have been complied with. The applicant gave its response on 11.07.05 substituting the claims with a new set of claims 1-45 which included technical subject matter and, therefore, not excluded by S. 3 (k) of the Act. On 12.08.2005, the Patent Office sent its report and it stated that objection (i) had not been met and that it was not patentable under section 3(k); there is no novelty etc. To this again the appellant gave its response and deleted claim 1-25 relating to apparatus and also requested that the delay in the belated submission may be condoned. On 09.06.2006, the appellant was informed that the application had been found in order for grant, but it will be granted only after the disposal of pre-grant opposition (if any). On 20.04.2007 application was published. M/s Rediff.com India Ltd., filed a pre-grant opposition under S.25(1) on 22.10.2007. On 03.03.2009, the appellant had taken over the original applicant by merger and this was informed to the Patent Office. On 30.03.2009, the appellant was informed that the invention did not pass the novelty and patentability test. -50. The learned counsel for the appellant referred to several patents granted for business methods to Google and cited the Dimminaco AG v. Controller of Patents (IPLR 2002 July 255). We are not going into the question whether Google ought to have been granted patent or not. We have found that this invention cannot be granted patent. However, it cannot be disputed that there should be a uniform practice, when similar inventions come up for grant of patent. There cannot be conflicting positions. If indeed the Patent Office had been adopting different standards, it is not desirable. If the patents granted to Google suffer from the same vice of S.3 (k) then as and when the question arises, it will be dealt with. But we cannot allow this appeal, ignoring the patentability bar merely because it is alleged that in other cases erroneous decisions have been issued. We cannot examine the correctness of those grants in the absence of that patentee.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-l, 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018   OA/22/2010/PT/CH THURSDAY, THIS THE 8TH DAY OF DECEMBER, 2011   HON’BLE Smt. JUSTICE PRABHA SRIDEVAN                 …  CHAIRMAN HON’BLE Shri D.P.S.PARMAR                                                 … TECHNICAL MEMBER (PATENTS)   Yahoo Inc. (Formerly Overture Service Inc.) A Dealware Corporation having its place of … Continue reading

INTELLECTUAL PROPERTY APPELLATE BOARD =“22. It is expressly agreed that the directors of M/s Pioneer Bakeries Private Limited Company themselves should not object usage of brand name “MILKA” by M/s New Hope Food Industries Private Limited all varieties of Cakes and M/s Milka Nutrients Private Limited all varieties of Biscuits. =16. It is unfortunate that both Shri Joseph and Shri Arumugam who were originally the founder Directors of the company as seen from the Memorandum of Agreement of the applicant company have now chosen to execute or enter into documents which will dilute the property of the company. The registered trade mark does not belong to Mr. Jayakrishnan. Even if Mr. Jayakrishnan is removed as Managing Director of the applicant this mark will belong to the applicant. What is sought to be protected by these ORAs is that the property of the applicant company shall not be diluted. It is well settled that a trade mark can have only one source. The impugned trade mark is identical to the mark which admittedly belongs to the licensor, the applicant and the respondent cannot be the registered proprietor.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-l, 2nd floor, 443, Anna  Salai, Teynampet,  Chennai 600 018 ORA/134 and 135/2009/TM/CH FRIDAY, THIS THE 6TH DAY OF JANUARY, 2012   HON’BLE Smt. JUSTICE PRABHA SRIDEVAN                        …     CHAIRMAN HON’BLE Ms. S. USHA                                                                 …    VICE-CHAIRMAN   Pioneer Bakeries (P) Limited, Poondurai Road, Moolapalayam, P.O.Erode – 638 002.                                                          … Continue reading

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