Successfully reported this slideshow.

Ipr (case studies)

18

Share

Upcoming SlideShare
Case study
Case study
Loading in …3
×
1 of 28
1 of 28

Ipr (case studies)

18

Share

Download to read offline

CASE STUDIES ON IPR DISPUTES:
1. COCO COLA Vs BISLERI
2. WALMART AND HEALTH PARTNERS
3. COCO COLA Vs PEPSI
4. ‘Zandu Balm’ sues ‘Dabangg’ producers
5. Malteser or Maltesers? Mars takes Hershey trademark dispute to court

CASE STUDIES ON IPR DISPUTES:
1. COCO COLA Vs BISLERI
2. WALMART AND HEALTH PARTNERS
3. COCO COLA Vs PEPSI
4. ‘Zandu Balm’ sues ‘Dabangg’ producers
5. Malteser or Maltesers? Mars takes Hershey trademark dispute to court

More Related Content

Related Books

Free with a 14 day trial from Scribd

See all

Ipr (case studies)

  1. 1. In the High Court of Delhi (1)
  2. 2. • Plaintiff ( Coca Cola) was the largest brand of soft drinks operating in 200 countries. • Defendant No.1, which was earlier known as Aqua Minerals Pvt. Ltd., was a part of Parle group of Industries. • The owners of defendant, Mr. Ramesh Chauhan and Mr. Prakash Chauhan, on September 18, 1993, sold the trademarks , formulation rights, know- how, intellectual property rights, goodwill etc. of their products THUMBS UP, LIMCA, GOLD SPOT, MAAZA to the plaintiff. FACTS
  3. 3. • The company Bisleri Sales Ltd, had the secret beverage base for manufacturing maaza and was an affiliated company of Defendant no. 1. • On September 12, 1993, several agreements were signed between both the parties, such as, deed of assignment, goodwill assignment, know-how, confidentiality and non- use agreement, non- compete agreement, general assignment, etc. to give effect to the sale for a considerable money value. • Then, the plaintiff was envisaged with the right to sell the product Maaza within the territory of India.
  4. 4. • The defendant no. 1 retained the trademark rights of MAAZA in respect of other countries where it had been registered. • In March 2008, the defendant no. 1 got aware of the fact that the plaintiff had filed for registration of MAAZA in turkey. • As a result of this, it sent plaintiff a legal notice repudiating the Licensing Agreement and made it devoid of all other selling rights. • The plaintiff filed the suit for permanent injunction and damages for infringement of trademark and passing off, as the defendant had completely ignored many irrevocable and absolute rights embarked upon the plaintiff.
  5. 5. The court had the territorial jurisdiction over the matter, because the defendant had issued a news article in Delhi edition of Times of India, and the reports itself created the jurisdiction of the court as they showed his intention to use the mark by way of groundless threat. Also, the defendant had a factory at Shivaji Marg in New Delhi and the threat was also given as notice from New Delhi itself.
  6. 6. • The suit is not barred under Section 41 (h) and (1) of the Specific Relief Act 1963, as the agreement between both the parties was a determinable contract and plaintiff is entitled to an injunction for enforcement of its exclusive rights. • In view of negative covenant under Section 42 of the Specific Relief Act, the defendant no. 1 is not entitled to use the mark MAAZA in India. Hence, the interim order of injunction was granted to prevent the plaintiff from irreparable loss and injury.
  7. 7. On an appeal filed by the defendant against the order, the Delhi HC expressly barred Bisleri from selling Maaza products, however, it is specified that the company may continue to manufacture Maaza on Indian soil, provided the stock is exported. SOURCE : www.lexquest.com
  8. 8. • Health Partners Inc. filed a lawsuit against Wal-Mart Stores Inc. to resolve a logo design dispute between the organisations. • The Trademark case centers around a logo unveiled by Health Partners in 2014 and another used by Walmart’s Sam’s Club business. • Both groups have logos that feature overlapping tilted squares.
  9. 9. • Between 2011 and 2013,Health Partners combined with two other Minnesota organizations-Park Nicollet Health Services in St.Louis Park and Lakeview Hospital in Stillwater. • After the transactions were completed,Health Partners enlisted a brand design firm to develop a new logo for the combined system. • The new logo features three interlocking squares and incorporates elements and colours from each organization’s old logo. • Health Partners began using the new logo in April 2014.
  10. 10. • Health Partners filed a federal complaint to resolve uncertainty surrounding its logo. • According to lawsuit, Wal-Mart and Sam’s began demanding Health Partners stop using the new logo in 2014,saying the new design constitutes trademark infringement, as it closely resembles the logo they use and further use of HealthPartners logo would cause trademark dilution and constitute unfair competition.
  11. 11. Over the past two years, the parties have exchanged emails and letters and met in person to try to resolve the dispute, but Wal-Mart and Sam’s continue to object to Health Partners registration and use of its new logo. SOURCE : www.bizjournals.com www.startribune.com
  12. 12. (3) Coca-Cola vs. Pepsi- Cola • Trade-mark violations occur only when the “distinguishing feature ” of the original product has been borrowed without consent. • The most famous example of this came in Canada in 1942 in the case of Coca-Cola Co. Vs. Pepsi-Cola Co. In 1942, D.L.R. 657 (P.C.) where Coke sued Pepsi for violating its trade-mark.
  13. 13. • Coca-Cola has a registered trademark for their famous glass bottle, which means that no brand, including Pepsi, can use the glass bottle in any of their products. • In the Statement of Claim dated 14 October 2010, Coca-Cola has filed a $1 billion action against Pepsi for using a glass bottle, which is allegedly confusing because it is so similar to Coca-Cola’s iconic glass bottle’, interfering their intellectual property rights. • The court would likely to compare the two bottles, without their respective logos, and decide whether there is a strong likelihood that consumers will confuse the Coca-Cola bottle with the Pepsi bottle.
  14. 14. • Coca-Cola is the registered owner of a number of Australian trade marks that depict its famous Contour Bottle, which were included in the Statement of Claim and shown in the figure. • The Contour Bottle is a hallmark of Coca Cola’s branding – with its pinched in waist shape and silhouette distinguishing Coca Cola’s products from other sodas on the market. • Coca Cola has built a strong reputation in the Contour Bottle through significant promotion and marketing and claims that it has sold its Coke and Coca Cola products in the Contour Bottle since 1916 in the United States and since 1938 in Australia. Facts
  15. 15. • In May 2010, Coca Cola became aware that the Respondents were selling Pepsi and Pepsi Max in glass bottles similar to their Contour Bottle. • Images of those glass bottles, as featured in the Statement of Claim are depicted in the Figure. • Coca Cola demanded that the Respondents refrain from what it said was unlawful conduct. The Respondents refused. In response, Coca Cola initiated the Federal Court proceedings. Figure 2: Alleged Infringing Pepsi and Pepsi Max Glass Bottles
  16. 16. We all know Coca-Cola’s glass bottles gained its fame because it was associated with the soft drink. The shape of the bottle is famous because Coca-Cola made it famous. So when you look at the bottles without their logos, consumers will definitely be more confused than if you look at the bottles with their logos. This is exactly why Coca-Cola is protecting its trademark.
  17. 17. With respect to the trade mark infringement claim, there are two issues that will likely to dominate proceedings. 1. The first is the issue of use as a trade mark, which is likely to be raised in the Respondents’ defence, which is yet to be filed. 2. The other issue which will obviously present itself is the question of deceptive similarity.
  18. 18. • As a result of this conduct, Coca Cola claims it has suffered unspecified loss and damage and seeks to have the Court restrain the Respondents from continuing to sell its products in the said glass bottles. • Coca-Cola made the average glass bottle famous. Now, Pepsi just wants to take advantage of Coca- Cola’s goodwill and reputation just to boost its own sales. • Although Pepsi makes a strong case, this fact alone could destroy Pepsi’s chances of a victory. • It’s going to be a close call. Pepsi can argue the bottle is generic and there’s no way the two bottles can confuse the public, while Coca-Cola can argue that Pepsi is merely trying to free-ride on their goodwill and reputation.
  19. 19. SOURCE : www.opinionoutpost.com www.businessinsider.com.au
  20. 20. • On September 17, Emami Ltd served a legal notice to Arbaaz Khan Productions for using the phrase "zandu balm" in the "Munni badnaam hui" song of the Salman Khan blockbuster Dabangg citing copyright violation. • By using the brand name in the song, you have not only violated the copyright of my clients, but you have also made an attempt to defame the reputation of my clients and the product manufactured by them, said ZANDU BALM OFFICIALS. VS.
  21. 21. • The company asked the producer to remove the phrase "Zandu Balm" or delete the song from the film altogether. Emami, which acquired Zandu Pharmaceuticals in 2008 for Rs 700 crore, is a Rs 1,000 crore entity today. • Some inside news on September 19, "The issue is not as serious as it is being made out to be. They have sent a notice. The company is unlikely to take the matter to court. In fact, they are considering an out of court settlement, and then using the song to promote the product." And Arbaaz Khan said, "Now that our film is a big success, such things are bound to happen. Everyone wants a share of the pie."
  22. 22. • When the song’s promos went on air, Emami decided to strike a barter deal— allowing the film’s producers the use of Zandu Balm in return for rights to the song for its own advertisement. • Also, Mallaika Arora Khan, had to do an advertisement for the brand free of cost as the compensation. SOURCE : www.pinkvilla.com economictimes.indiatimes.com
  23. 23. Mars has filed a lawsuit against US confectionery firm Hershey over its Malteser product, which it claims is "passing off" as Mars' own popular Maltesers brand.
  24. 24. • Hershey sells its Malteser chocolate-covered malt ball product in red packaging, having owned the trademark for ‘Malteser’ – without the "s" – since 1998, while Mars has sold its 75-year-old Maltesers brand in red packaging since 1978. • Mars, which never registered a trademark, claims the move is simply designed to prevent it from selling Maltesers in the US in competition with Hershey’s Whoppers brand, which are also milk chocolate-covered malt balls. • As a result, Mars has filed a complaint at the US District Court for the Eastern District of Virginia, Alexandria Division, seeking a "permanent injunction" against Hershey’s use of the Malteser mark, along with damages for lost profits.
  25. 25. • Mars said in the lawsuit: "Hershey did not actually develop a unique product under the Malteser mark. Hershey sporadically passes off Whoppers candy as Malteser candy — selling Whoppers under the Malteser mark, without disclosing the switch to consumers — merely to reserve rights to the Malteser name.”
  26. 26. • A Hershey spokesman dismissed Mars’ claims as "without merit". He added: "The Hershey Co. has owned the Malteser trademark in the United States for more than 15 years. We intend to vigorously defend against this groundless litigation. • Mars declined to comment beyond the complaint. SOURCE : www.law360.com www.candyindustry.com

×