GI infringement case in India: “Darjeeling”

Results an infringement case in India involving the GI “Darjeeling”.  This post appeared on SpicyIP last month, “Breaking News: Darjeeling still lounges in Kolkata, says HC” – this week they updated the post bringing copy of the decision. “Darjeeling for Two in Kolkata”

By way of an update on the “Darjeeling” Geographical Indications (GI) case we reported on some days ago, we have uploaded a copy of the decision on our site. This is a very interesting decision, not just because it is the first ever by an Indian court on the infringement of a registered GI; but also because it may have significant implications on the protection of GI rights in the country in the times to come.”

A detailed report on the decision is in the post.  They summed up saying:

“The decision was categorical in stating that the word “Darjeeling” could not be exclusively claimed by the Tea Board despite its GI and TM registrations. Crucially, the court held, “Even for a case of passing-off, the use of “Darjeeling” by a person other than the plaintiff can be complained of if the word or the geographical indication has any nexus with the product with which it is exclusively associated upon the registration.”

This raises an obvious interesting but unanswered question: what defines “nexus” as referred to by the Judge above? What degree of similarity will convince a judge to offer a different decision on passing off?”

Seize or not to seize? This is the problem

In a recent hearing between the European Court of Justice and Nokia (Case C-495/09), Nokia argued that the interpretation of British Courts of EU custom rules could turn the EU into a safe harbour for counterfeits. The dispute started when UK officials declared that goods in transit from a non-EU country to a non-EU country and not (at least apparently) destined for the EU, could not be seized, even if declared to be fakes (by Nokia in this case).

The question posed to the ECJ was:

“are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and which are in transit from a non-Member State to another non-Member State capable of constituting ‘counterfeit goods’ within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence to suggest that those goods will be put on the mark in the EU, either in conformity with a customs procedure or by means of an illicit diversion?’

The UK, Czech Republic and the EU Commission answered “no”. France, Finland, and Poland answered “yes”. The Advocate General will answer on 3 February 2011 – so we have to wait a bit longer…

However, the question poses interesting points. Our readers may remember the heated debate when Dutch authorities seized generic medicines from India to Brazil and stopped in transit in Holland (17 June 2009). Are medicines different from mobile phones? And can we even compare generic medicines to counterfeits?

If the Advocate General answers “no” to the above question, and likewise all the other courts Nokia will appeal to, will this make the EU more flexible towards certain other goods until now widely debated? I don’t know you, but I look forward to 3 February (which is also a very boring period of the year, no Christmas, no holiday on the horizon) to keep me excited.

Thanks to our favourite Kat (IPKat) for drawing our attention to this interesting case.  “Nokia/Philips rulings on fakes in transit: write-up of submissions”

 post written by Francesca Re Manning,  solicitor and consultant to CAS-IP

Pirates in the European Parliament!

http://news.bbc.co.uk/2/hi/technology/8089102.stm
The recent European elections saw a Swedish group called the “Pirate Party” win a seat in the European Parliament.  According to the BBC article:

“the group – which campaigned on reformation of copyright and patent law – secured 7.1% of the Swedish vote”

These issues have been attracting international attention and comment during the “Pirate Bay” case that was held in Sweden.  See earlier CAS-IP blog posts:

https://casipblog.wordpress.com/2009/06/01/the-pirate-bay-case-again/
https://casipblog.wordpress.com/2009/05/20/the-pirate-bay-plot-thickens/
https://casipblog.wordpress.com/2009/04/30/the-pirate-bay-decision/

The BBC article included the following quote from Rory Cellan-Jones, the BBC technology correspondent:

“Many people just don’t see illegal file-sharing as a crime, however hard the media industries try to persuade the public that it’s just as bad as shoplifting”

This gives food for thought over the attitudes of the public regarding these issues!

Unusual trademark decision from Israeli Patent Office

http://blog.ipfactor.co.il/2009/05/06/israel-patent-office-allows-two-companies-to-register-same-trademark/

This post from “The IP Factor” blog earlier this month talks about the Israeli Patent office allowing two companies to register the same trademark – most unusual.  As the author points out:

“The purpose of a trademark is to prevent competitors from selling confusingly similar goods with confusingly similar names”

This decision goes against that. I passed the item around the CAS-IP team  for comment and got a response from both Peter Bloch and Francesca Re Manning.  Peter said:

“I agree with the reporter that: “This decision does not serve the interests of the manufacturer or of the public.”  And that surely is the bottom line!  It is the responsibility of the trade mark office to render appropriate decisions, which this is not and there may very well be an appeal. “

Francesca commented:

“I honestly wonder what the examiner was trying to do here … how can he claim that consumers cannot be confused [by] identical trade marks for identical products which are sold in identical shops and in identical manners? If such a decision is not appealed and overturned, it can open huge controversy. OHIM … can always rely on its rules but how different are they from the law that the Israeli Patent Office applied?”

The OHIM that Francesca refers to is the Trade Marks and Designs Registration Office of the European Union.  Incidentally their website has some good general information on trademarks for those interested. Visit their “Quick Guides” pages for:

“A series of multimedia “Quick Guides” covering trade marks, designs and IP in general… The “Quick Guides” are easy to follow and user friendly. They take you you step-by-step through the different types of IP protection available and explain the pros and cons of each.”