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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 [9] Burchett J was specifically referring to the words “goods of the same description” as used in s 23(2) of the repealed Trade Marks Act 1955, but his remarks are no less applicable to the current legislation, as confirmed by the Full Federal Court in E & J Gallo Winery v Lion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

M/s. Kukreja Enterprises, Delhi had filed an application under No.492040 on 1st June, 1988 containing the word “RUPA” (per se) for registration as a Trade Mark in respect of ‘brassieres and panties’ (the specification of goods as amended) in Class 25 claiming through an amended user since 1980. 2. The application was opposed by BINOD HOSIERY, 31, Shibtala Street, Calcutta 700007. The opponents claim that they have been using the trade mark “RUPA” since 1968 in respect of hosiery products including brassieres, panties, vests, under wears etc. The Deputy Registrar also erred in his finding that the appellants/opponent have not discharged the initial onus of proving reputation and goodwill. Not only is this finding erroneous on facts, but is also erroneous on the principles of Law. The Deputy Registrar has completely disregarded the dicta of a Division Bench of the Hon’ble Calcutta High Court in Prem Nath Mayer, Appellant Vs. Registrar of Trade Marks and Another, Respondents (AIR 1972 CALCUTTA 261) wherein it has been held: “As I read the Rules, I see nothing therein to justify the conclusion that the onus shifts from the applicant to the opponent at any stage. On the contrary, the indication in Rule 54 is clear, that the onus lies upon the applicant because that Rule says that even if the opponent does not file any affidavit to adduce evidence in support of the opposition, the applicant has to file within two months from the receipt of copies of the affidavits in support of the opposition, such evidence by way of affidavits, as he desires to adduce in support of his application…………The rules therefore do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings. The onus of proving, that the mark, if registered, will not lead to confusion or deception, is squarely upon the applicant.” (emphasis supplied) 22. Another mitigating factor in favour of the appellant/opponent is that further 27 trade marks bearing the primary word ‘RUPA’ have been registered by them since 1993 every one of which includes ‘brassieres and panties’. This materially alters the situation in favour of the appellant. It also goes to show that the original registration by Kukreja Enterprises, Delhi also in respect of ‘brassieres and panties’ for the same trade mark ‘RUPA’ was improper. 23. The Board had already recorded its displeasure on the conduct of the respondent in these proceedings (see para 6). For the foregoing reasons we refuse the impugned application. Consequently TA/133/2003/TM/DEL is allowed and application No.492040 in Class 25 for the trade mark ‘RUPA’ is refused registration. The respondent is directed to pay a sum of Rs.10,000/- as costs of these proceedings to the appellant.

INTELLECTUAL PROPERTY APPELLATE BOARD  Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018     CIRCUIT SITTING AT DELHI   TA/133/2003/TM/DEL CM(M) 47/97   TUESDAY, THIS THE 12th DAY OF JUNE, 2012     Hon’ble Smt. Justice Prabha Sridevan            …    Chairman Hon’ble Shri V. Ravi                                              …   Technical Member  (Trade Marks)                                                                                              Prahalad … Continue reading

The request of patent is for “A New Crystalline Form of Adefovir Dipivoxil and its Composition”. Hearing was held on 20.8.2009. The Assistant Controller held that claims 1-4 could not be allowed in view of section 3(d) of the Patents Act, 1970 and no proof has been furnished to show enhanced efficacy. The impugned order also records that there is no data to show clinical trial on human beings to support the case of therapeutical efficacy. Thereafter, the Assistant Controller held that claims 4-7 are not allowable under section 3(e) of the Patents Act, 1970 and claims 7-10 are being beyond the scope of claim 1. It is seen from the paper book that the sentence starting from the word “The experimentation must be done……….” and ending with the words “its effect on man’’’’ has been taken from the extracts taken from the Internet which is a published article in Internet by one David W. TSCHANZ, MSPH, Ph.D. giving historical evidence of the work of earlier Islamic scholars with regard to pharmaceutical knowledge. In the para headed “Ibn Sina and Clinical Trials”, we found this sentence word for word except an addition of a word “monkey”. 5. Next we come to the 2nd para of the impugned order which starts with the word “what is clinical” and ends with “the disease being treated”. We find from the paper book that this is a web printout from Procter & Gamble’s website, where this paragraph is found in the same font and it has been extracted in the impugned order verbatim. 6. Next we come to the 3rd para, which starts with “Five (5) different types classifying trials;”. These are extracted word by word from the Wikipedia under “Clinical Trial” where just above the word-design the words in the paragraphs were extracted except for the photo. Instead of five different types of classifying trials, Wikipedia reads “Another way of classifying trials is by their purpose”. The US National Institute of Health (NIH) organizes trails into Five (5) different types. 7. After linking these three collection of materials from Internet, the impugned order comes to the conclusion that the claims 4-7 are not allowable and claims 7-10 are beyond scope of claim 1. As regards failure to submit clinical data, the learned counsel for the appellant submitted that this had been submitted to them but not considered. 8. This is not how an order shall be passed by the Patent Office. The Controller has the duty to examine the claims and test them for patentability. This order must be set aside. The application is sent back to the Controller who shall consider it independently. On examination and before holding the hearing, the Controller shall examine, if, apart from section 3(d), there are other objections. If so, the Controller shall inform the applicant that other objections shall also be addressed. After hearing the applicant, reasoned order shall be given. 9. The fact that this impugned order has been set aside does not mean that we have considered the merits of the patent application to found the invention patentable. We have not examined the merits at all. This shall be considered independently and in a judicial manner by the Controller. Such an order shall be passed in accordance with law within a period of three months from the receipt of this order. The Appeal is allowed as above and the matter is remanded back to the Controller.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai – 600 018   OA/16/2012/PT/DEL WEDNESDAY THIS, THE 6th DAY OF JUNE, 2012   Hon’ble Smt. Justice Prabha Sridevan   —  Chairman Hon’ble Shri D.P.S. Parmar                    —  Technical Member (Patents)     TIANJIN DISHILI INVESTMENT HOLDING GROUP LIMITED FORMERLY KNOWN AS  —       Applicant TIANJIN KINSLY … 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

The provisions of Rule 50 (2) are mandatory and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under Rule 50(1).” 19. It is against the judgement cited in 2006 (32) PTC 287 (IPAB) that this order has been passed. Therefore, 2006 (32) PTC 287 (IPAB) cited has been over ruled. 20. In the present case the order shows that the Assistant Registrar had disallowed the TM-56 holding that the opponent may file their evidence in reply under Rule 52. 21. The order is correct. If the appellant wants to file any evidence in reply, they may do so subject to any objection that may be raised by the respondents herein that the evidence is not strictly in reply but the main evidence itself. Therefore, the evidence, if filed by the appellant, shall be strictly considered and only that evidence which is strictly in reply may be received as such and nothing else. The appeal is, therefore, dismissed with costs of Rs.2,500/-.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018 (Circuit Bench Sitting at Delhi)   OA/8/2006/TM/DEL FRIDAY, THIS THE 18th DAY OF MAY, 2012     HON’BLE SMT. JUSTICE PRABHA SRIDEVAN    … CHAIRMAN HON’BLE SHRI V. RAVI                                               … TECHNICAL MEMBER   M/s Mahalakshmi Products, Sandeep Cinema Compound, Muzzafarnagar (U.P.)                                                     … … Continue reading

any person may file a notice of opposition within three months from the date of advertisement or within such further period not exceeding one month in the aggregate as the Registrar may allow on an application for extension. Section 21(1) of the Trade Marks Act, 1999: “21. Opposition to registration. – (1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.” Rule 47(6) of the Trade Marks Rules, 2002: “47. Notice of opposition: (1) to (5) xxxxx (6) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under sub-section (1) of section 21, shall be made in Form TM-44 accompanied by the fee prescribed in First Schedule before the expiry of the period of three months under sub-section (1) of section 21.”

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-I, 2nd Floor, Anna Salai, Teynampet, Chennai 600 018   (Circuit Sitting at Ahmedabad)   OA/71/2009/TM/AMD   FRIDAY, THIS THE  18TH DAY OF MAY, 2012     Hon’ble Ms. S.USHA          …..                              Vice-Chairman Hon’ble Shri V.RAVI           …..                              Technical Member   M/s.Swastic Oil Industries, F-5 to 8, Industrial Area, Newai – 304021, District … Continue reading

“13(2) Any order made by the Commission may be amended or revoked at any time in the manner in which it was made.” The language of sub-section (2) of Section 13 makes it clear that the MRTP Commission may amend or revoke any order in the manner in which it was made “at any time”. The expression “at any time” would mean that no limitation has been prescribed by the legislature for the MRTP Commission to amend or revoke an order passed by it. Hence, the argument on behalf of the petitioners that the MRTP Commission could not have entertained the Review Application for recalling the order dated 13.09.2007 beyond the period of 30 days has no foundation in law. Moreover, the order dated 13.09.2007 of the MRTP Commission on its plain reading was only an interim order and the MRTP Commission could modify or revoke the interim order directing the respondents to handover physical possession of the plot to the petitioners if it thought that such a direction could only be considered at the time of finally deciding the complaint. We therefore do not find any infirmity in the order dated 04.03.2009 of the MRTP Commission recalling the direction to handover physical possession of the allotted plot to the petitioner saying that this direction can be considered at the stage of final adjudication of the complaint.

Reportable IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION SPECIAL LEAVE PETITION (C) Nos. 16116-16117 OF 2010 M/s A.B.N.A. and Ors. … Petitioners Versus The Managing Director,M/s. U.P.S.I.D.C. Limited, Kanpur& Anr. … Respondents O R D E R A. K. PATNAIK, J. These are petitions under Article 136 of the Constitution for leaveto appeal … Continue reading

This petition has been filed by the petitioner to recover the amount of placement fees which the respondent has failed to pay. Accordingly, we allow the petition and hold that the petitioner is entitled for recovery of a sum of Rs. 39,37,500/- alongwith pendentilite interest and future interest @ 12% per annum from the respondent. -Accordingly, we allow the petition and hold that the petitioner is entitled for recovery of a sum of Rs. 93,75,000/- alongwith pendentilite interest and future interest @ 12% per annum from the respondent. 19. In the facts and circumstances of these cases, there shall be no order with no costs

TELECOM DISPUTES SETTLEMENT & APPELLATE TRIBUNAL   NEW DELHIDated 10th May, 2012PETITION No. 389(c) of 2011Hathway Cable & Datacom Ltd. …PetitionerVsTriveni Media Ltd. …RespondentPetition No.390(C) of 2011Hathway Bhaskar Multinet Pvt. Ltd. Anr. …PetitionersVs.Triven Media Ltd. …RespondentPetition No.391(C) of 2011Gujarat Telenik Pvt. Limited …PetitionerVs.Triveni Media Ltd. …RespondentBEFORE:HON’BLE MR.JUSTICE S.B. SINHA, CHAIRPERSONHON’BLE MR. P.K. RASTOGI,MEMBERFor Petitioner : … Continue reading

cell phone deficiency in service , consumer court has no jurisdiction= 5. In line with the judgement in the case of M. Krishnan (Supra), this Commission vide its order dated 21.5.2010 (Revision Petition No. No.1703 of 2010) in the case of Prakash Verma Vs. Idea Cellular Ltd. and Anr., dismissed the complaint filed by the petitioner holding that any dispute between the subscriber and the telegraph authority can be resolved by taking recourse to arbitration proceedings only. The Special Leave Petition filed by the petitioner was dismissed by the Apex Court vide its order dated 1.10.2010. In view of these judgements of the Apex Court which are binding on all the courts including Consumer Fora, no fault could be found with the impugned order. The order of this Commission in the case of Kumari Ambika Singh cannot provide any relief to the petitioner since in that case there was no reference to the aforesaid judgements of the Apex Court and the revision petition came to be dismissed in liminie and hence there was no point raised by the parties in respect of question of maintainability of the dispute under the Consumer Protection Act, 1986. In any case, the ratio laid down by the Apex Court in respect of the dispute under section 7B of the Indian Telegraph Act, as is the case with the present dispute as well, has to be followed and there should not be any doubt about it. The revision petition devoid of any merit, therefore, is liable for dismissal and the same is accordingly dismissed but with no order as to costs.

NATIONAL CONSUMER DISPUTES REDRESSAL COMMISSION NEW DELHI   REVISION PETITION NO. 3780 OF  2011 (Against the order dated 07.07.2011 in Appeal No. 862/2011 of the  Haryana State Consumer  Disputes Redressal Commission, Panchkula)   Lokesh Parashar Advocate R/o Holiwara Mohalla V.P.O., Tegaon and District Faridabad (Haryana)   …….. Petitioner (s)                               Vs.   1.  M/s Idea Cellular Ltd. … Continue reading

INTELLECTUAL PROPERTY APPELLATE BOARD “46. In view of the law as explained hereinbefore, the correct course of action for the Petitioner would be to file an appeal before the IPAB under Section 117 of the Patents Act against the order dated 16th March 2009 passed by the Assistant Controller of Patents. If such an appeal is filed within two weeks, accompanied by an application for condonation of delay in filing the appeal, the IPAB will consider such application on merits in accordance with law after accounting for the period during which the present writ petition has been pending. The IPAB will hear the Respondent (‘ICPL’) before passing such order. The petition is disposed of.”

INTELLECTUAL PROPERTY APPELLATEBOARD Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018 (Circuit Bench Sitting at Delhi) COD NO.19/2010 IN SR.NO.76/2010/PT/IPAB   THURSDAY, THIS THE 20TH DAY OF OCTOBER, 2011     HON’BLE SMT. JUSTICE PRABHA SRIDEVAN            … CHAIRMAN HON’BLE SHRI D.P.S.PARMAR                                       … TECHNICAL MEMBER (PATENTS)   Colorcon Inc. 415, Moyer Boulevard West Point, Pennsylvania 19486 … Continue reading

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