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Spicy Trademark Law Suit Over Descriptive Marks

A trademark is a type of intellectual property consisting of a recognisable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. The trademark owner can be an individual, business organisation, or any legal entity.

Trademark law protects a trademark if it is primarily unique and non-descriptive of the goods or services for which it is being used. For example, you cannot register the mark Computer to sell computers or computer related products, you have to name it differently, such as Apple, Microsoft, Dell, Ubuntu etc. This is one of the basic tenets of trademark law.

Sky Enterprise Private Limited is engaged in the business of processing, manufacturing and marketing of various types of spices, condiments and masalas.

It has, inter alia, registered the marks “Star Zing”, “Black Chinese Pepper Masala” and “White Chinese Pepper Masala”, in Class 30 for spices. A cursory glance at these marks would portray that Star Zing is the brand and the other marks are describing the different Masalas sold under this brand.

However, Sky Enterprise, thought differently. According to them, the terms “Black Chinese Pepper Masala” and “White Chinese Pepper Masala” were so closely associated with their brand, such that the customers could identify products described in this manner only with Star Zing.

Sky Enterprise filed a suit against proprietor, Abaad Masala which was found to be using the marks viz., “Black Chinese Pepper Masala” and “White Chinese Pepper Masala” along with its brand name AMZ on their masala packets.

The Defendant argued that the words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’ are used by the Defendant in its trade dress, just as in the case of the Plaintiff, for identifying or indicating the kind, quality, and intended purpose of the goods.

The Court held that the defendant may use the words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ however, not in this particular sequence. It may use these words in some other sequence or in combination with some other words.

However, this particular combination was associated distinctively with the Plaintiff, and it being the registered proprietor of the marks, was entitled to protection.

Trademark Cancellation and Invalidation Actions

Resolution No. 279/2019 has been published establishing the administrative procedures for Trademark cancellation and invalidation actions, as well as the applicable official fees.

With more than 30 years of experience in the handling of intellectual property portfolios for domestic and international clients in Argentina and Latin America, our lawyers, industrial property agents and select network of engineers and technical professionals, bring together their broad backgrounds and experiences in different disciplines and industries to work closely as a team representing international, regional and local companies in trademarks, patents, utility models, designs, copyright, software, domain names, transfer of technology, franchising, licensing and related matters.

Wholly responsive to clients needs based on the firms large local and international intellectual property experience and expertise, in order to satisfy the intellectual property community requirements in a new scenario of a globalised world following the premises of reliability, quality, efficient action, adaptability to price tailoring and flexibility, with equal emphasis in customised and personalised services.

The firm handles clients of different areas: food, winery, technology and telecommunications, pharmaceutical, entertainment, clothing and textile; among others.

The broad experience of O’Conor & Power’s team in the management of local and international IP portfolios in Argentina and in the region, makes O’C & P a superior “one stop resource”, as Latin American increasingly factors into the world economy.

We are also qualified to protect and enforce clients intellectual property interests through transactions, dispute resolutions, litigation, border enforcement measures and unfair competition related actions.

Our professionals and staff regularly participate in seminars and conferences nationally and internationally, thus keeping updated on the latest IP legal developments in Argentina, Latin America and throughout the world.

Commerce Ministry Organises Exclusive IP Seminar

Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognise more than others. The best-known types are copyrights, patents, trademarks, and trade secrets.

The Ministry of Commerce and Industry organised yesterday a workshop entitled ‘Patents and Registration Procedures’ with the participation of a number of intellectual property agents and interested members of the public.

The workshop comes within the framework of the Ministry’s efforts to protect and promote intellectual property rights, and to raise awareness among intellectual property agents and the public about the importance of registering and protecting patents against infringement by registering them at the concerned department at the Ministry.

The workshop also shed light on how to register a patent electronically.

The event, attended by a number of experts from the Ministry, featured several topics including a general introduction to patents, the content of the patent application, and procedures relating to the registration of a patent application through the electronic registration system.

The workshop concluded with a Q&A session during which experts from the Ministry answered questions regarding patents.

Ministry of Commerce and Industry

The Ministry of Commerce and Industry administers two departments, the Department of Commerce and the Department for Promotion of Industry and Internal Trade. The head of the Ministry is a Minister of Cabinet rank.

Industrial Property Law Developments in China

From last year, with the improvement of China’s industrial technological level, as well as tremendous changes in the international competitive environment, China’s patent protection system and patent protection practices were also changed and adapted to the same.

With a tremendous scale in creation and application of various types of IPR, and enhanced values of some IPR, there are IP disputes that are prone to occur frequently, while the supply side of non-litigation dispute resolution mechanisms is insufficient, so that the rigid demand for judicial protection is continuously on the rise.

The IP tribunals have been successively founded to make the patent judicial trials more specialised. After the Supreme People’s Court summarised and promoted the practical experience of IP courts in Beijing, Shanghai and Guangzhou last year, the establishment of IP-specialised trial tribunals was approved for cross-regional jurisdiction in 11 cities including Nanjing, Suzhou, Wuhan, Chengdu, Hangzhou, Ningbo, Hefei, Fuzhou, Jinan, Qingdao and Shenzhen to enhance the unification of standards, scales and quality of verdict, and provide better verdict guidelines for the creation and application of IP.

The technical investigator system has been introduced in patent litigation to make patent infringement litigation trials more specialised. In patent case trials, the court often needs to identify a number of technical facts, and conduct in-depth research and comparison of technical solutions. Overcoming complex technical obstacles in the identification of facts is a key point that has long affected enhancement of the quality and efficiency of trials.

In response to this problem, Chinese courts explored establishing a system where technical investigators neutrally perform duties to assist in the trial, and appointed a number of technical investigators from multiple channels such as enterprises and institutions, universities, scientific research institutions, national patent agencies, and patent agent associations. Thus, the “four-in-one” mechanism was jointly participated in by professional people’s jurors, technical investigators and expert assistants, and judicial appraisal agencies for identifying technical facts were constructed to assist judges in cracking technical doubts and clearing technical obstacles to an impartial trial.

The patent link system has been established in view of the fact that patent infringement litigations taking place during the listing approvals of drugs will have certain impact on the approval of generic drugs. In view of the fact that drugs in the process of listing approval may not be examined for patent infringement, drug research enterprises have to resort to legal means to restrain infringements after the listing of drugs by a competitor. However, restricted by the drawbacks of small infringement damage amounts and difficult enforcement under the current patent system in China, such right protections are usually almost in vain.

As stipulated in the Opinions on Deepening the Reform of the Review and Approval System to Encourage the Innovation of Drugs and Medical Instruments issued by the central government, in order to protect the legitimate rights and interests of patentees, reduce the patent infringement risks of generic drugs, and encourage the development of generic drugs, the establishment of a drug review and approval, and drug patent link system, was explored. When an applicant for drug registration submits an application for registration, the applicant must state the relevant patent involved as well as its ownership status, and notify the relevant drug patentee within the specified time limit.

Where there is a dispute over the patent right, the parties concerned may file a lawsuit with the court without aborting the technical review of the drugs during the period. For drugs that have passed technical review, the Food and Drug Supervision Department should make a decision on whether to approve the listing according to the court’s effective judgment, ruling or mediation.

If the effective judgment, ruling or mediation is not obtained within a certain time limit, the Food and Drug Supervision Department may approve the listing. According to the above-mentioned provisions, after the receipt of the notification from the drug listing applicant, the relevant drug patentee who believes that its patent right has been infringed may bring a patent infringement lawsuit to the judicial authority, which to a large extent discourages the generic drug manufacturer to employ the “Bolar case exception” to apply for drug listing before the drug administration department. The establishment and improvement of the drug patent link system may also significantly reduce the time for the drug patent expiration and the drug listing in the near future.

The patent infringement compensation system has been further perfected, which greatly enhances compensation amounts. There are always problems such as difficult investigations and evidence collection, and low amounts of compensation in patent infringement. According to the current patent law, the compensation first follows the “bridge principle”, which is to bridge all the losses of the patentee, and is not punitive to the infringer.

The revised patent law is expected to stipulate that, where the patent right is intentionally infringed, the court may raise the amount of compensation to a maximum of three times, according to the circumstances, scale and damage incurred. As long as the patentee can prove that the competitor is present with intentional infringement, a punitive damage judgment may be made against the infringer.

The people’s court may determine the amount of compensation to be more than double and less than three times, based on the above-mentioned method, according to the circumstances, scale and damages incurred from the infringement.

The amount of compensation should also include the reasonable expenses of the rights holder incurred for stopping the infringing act. The amount of compensation should also include reasonable expenses paid by the rights holder to restrain the infringement act.