TRADEMARK
DELHI HC ALLOWS SETTLEMENT IN BURJ TRADEMARK CASE
In interesting news, the Indian real estate developer Designarch and Dubai's Jumeirah Beach Resort LLC, known for the Burj Al Arab hotel, reached a settlement agreement in respect of the Burj trademark in India. Jumeirah Resorts has been using the marks 'BURJ' and 'Burj Al Arab' since 1999 and has trademarks under classes 35, 36, 39, 41, and 42, but not in 37 in India. They also have copyright protection over the artistic works used in their logo trademarks. Meanwhile, Designarch has been using the trademark, "BURJNOIDA" in Class 37 since 2011 and has registered it in 2019. A single judge bench ordered Designarch to stop using the marks 'BURJBANGALORE', 'BURJMUMBAI', 'BURJDELHI', 'BURJGURUGRAM', and 'BURJGURGAON' till the pendency of the suit, but allowed them to use the mark 'BURJNOIDA.' Both parties appealed the decision but eventually reached a settlement. In the settlement, Jumeirah accepted that Designarch is the owner of the mark 'BURJNIODA' & its logo, while Designarch accepted that Jumeirah is the owner of the trademark 'BURJ ALARAB' and its logo and further agreed to avoid using 'BURJNOIDA' in a way that suggests a link to Jumeirah and to refrain from future use of 'BURJ' or similar marks. Both parties agreed to withdraw their cancellation petitions against each other's trademarks.
(1) Designarch Consultants Pvt Ltd And Anr vs. Jumeirah Beach Resort LLC (FAO(OS)(COMM) 144/2021 & CMAPPL. 40965/2021 & Connected Matter
TRADEMARK
DELHI HC ORDERS INFLUENCER TO REMOVE DISPARAGING VIDEO
Recently, the Delhi HC ordered businessman & social media influencer, Mr. Prashant Desai, to take down a video disparaging COMPLAN, a registered trademark of Zydus Wellness Products Ltd. Desai had posted a video wherein he compared Complan with other brands, and advised against using them for children. Zydus Wellness argued that his claims were misleading and contradicted the product's benefits as stated on its packaging. They asked him to remove the video, but he didn't. The Court highlighted the significant influence social media has on public opinion and found Desai's negative statements were not backed by evidence, which could harm Zydus Wellness's reputation. Accordingly, the court ordered Desai to take down the video from all his social media handles page within two weeks.
(1) Zydus Wellness Products Ltd v Prashant Desai (2024:DHC:7432)
TRADEMARK
AMERICAN EAGLE OUTFITTERS SUES AMAZON FOR TRADEMARK INFRINGEMENT
American Eagle Outfitters ("AEO") filed a suit against Amazon, claiming to infringe 'Aerie' & 'Offline by Aerie' trademarks. The lawsuit, filed in Manhattan federal court, alleges that Amazon deliberately misled shoppers by using Aerie branding in sponsored ads and search results to direct customers to counterfeit products. AEO claims Amazon used "flagrant, unauthorised use" of its trademark to deceive consumers into believing genuine Aerie products were available on the platform. AEO says it told Amazon about the trademark issues over a month ago, but Amazon responded by changing the product names to misspelled versions. AEO wants to halt further trademark infringement & is seeking financial damages.
(1) American Eagle Outfitters Inc et al v Amazon.com Services LLC et al, U.S. District Court, Southern District of New York, No. 24-07251
COPYRIGHT
GERMAN COURT RULES AGAINST COPYRIGHT INFRINGEMENT IN AI DATA SET CASE
The Hamburg Regional Court decided that a non-profit organization did not violate a photographer's copyright by using his image without permission to create a dataset for training generative AI systems. Robert Kneschke, a seasoned German photographer, had initiated legal proceedings against LAION e.V., a non-profit organization known for creating vast datasets used in AI training. Kneschke claimed that LAION had included his photographic images in their "LAION 5B" dataset without his permission. The Court considered that the creation of such a data set by the AI system was subject to an exception to copyright provided for in German and EU law, which promotes scientific research.
COPYRIGHT
MUSIC VIDEOS REMOVED FROM YOUTUBE IN COPYRIGHT DISPUTE
Recently, YouTube users in the U.S. were astonished when a lot of music videos were suddenly blocked on the video streaming platform. The YouTube notice states that "This video contains content from SESAC," and "It is not available in your country. The Society of European Stage Authors And Composers ("SESAC") is a music licensing organisation that handles the performance rights and royalties of thousands of artists. The licensing agreement between YouTube and SESAC is nearing its end, and the two cannot agree on a new deal. YouTube won't be able to host songs covered by SESAC without an agreement.
(1) https://loudwire.com/music-videos-removed-youtube-sesac/
PATENT
GILEAD SCIENCES'S HIV DRUG PATENT APPLICATION OBJECTED
The U.S. based pharma giant Gilead Sciences wishes to patent their HIV prevention drug, 'Lenacapavir.'. However, Sankalp Rehabilitation Trust, a civil society organisation supporting those vulnerable to HIV, opposed the patent applications in 2021 on the grounds that the drug consists of a previously known compound and should not be considered an invention under the Indian Patents Act. Gilead Sciences has filed several patent applications in India for lenacapavir, including two applications filed in 2020 that seek patents for the choline & sodium salt in the drug. Sankalp further claimed that the patent applications for these salt forms of lenacapavir are not innovative.
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