Recognizing the increasing popularity of virtual digital assets (“VDA”), pertinently, cryptocurrencies and NFTs, in India and the associated risks, on February 23, 2022, the Advertising Standards Council of India (“ASCI”) released its guidelines on advertisements related to VDA and the manner in which these advertisements must appear in various formats, namely, print/static, video, audio, social media posts and disappearing stories/posts unaccompanied by text. The guidelines will be applicable to all advertisements published on or after April 1, 2022. According to the guidelines, all advertisements for VDA products, VDA exchanges, or advertisements that feature VDAs must be accompanied by an “unmissable and prominent disclaimer” that “Crypto products and NFTs are unregulated and can be highly risky. There may be no regulatory recourse for any loss from such transactions.” This disclaimer should be made in a “dominant language” and may not include the words, ‘currency’, ‘securities’, ‘custodian’ and ‘depositories’. Moreover, information regarding returns for periods of less than twelve (12) months shall not be included in the advertisements. These advertisements shall also not contain statements that promise or guarantee future increases in profits and must clearly include the name and contact details of the advertiser. The guidelines also state that, given the risks involved with VDAs, celebrities and known personalities who appear in such advertisements must do their due diligence about the statements and claims made in the advertisements so as not to mislead consumers. ASCI has clarified that the guidelines are not to be treated as a legal recognition or endorsement of the VDA sector and that ASCI is only providing self-regulation for contents of advertisements that are permitted by law. The guidelines can be accessed at https://ascionline.in/images/pdf/vda-guidelines-23.02.22.pdf.

In continuance of the METABIRKINS saga, Hermès has now doubled down on its claims by amending the complaint filed by it against Mason Rothschild, the creator of the METABIRKINS. In the amended complaint lodged by Hermès with a U.S. District Court, Hermès has maintained that Rothschild is running afoul of federal trade mark law as he is confusing the consumers about the source and/or nature of the METBABIRKINS non-fungible tokens (NFTs), while also diluting the “distinctive quality” of Hermès’ world-renowned handbags and its branding. In furtherance of the initial complaint lodged by Hermès, Hermès alleged that by creating the collection of METABIRKINS NFTs and by using BIRKIN as part of its trade name, Rothschild has “simply ripped off its famous BIRKIN trade mark by adding the generic ‘meta’ to the famous trade mark BIRKIN, which simply means BIRKINS in the metaverse”. In terms of relief, Hermès is seeking monetary damages, including Rothschild’s profits, and injunctive relief to bar him from making any further use of its trade marks. It will be interesting to see how the Court will deal with matters involving trade mark holders and their rights in the ever-blossoming metaverse.

With the Qatar FIFA World Cup scheduled for later this year, an array of footballing superstars will be on show in the Middle East. Footballers all across the globe are cognizant of the number of eyeballs the global event garners and the opportunity it provides these athletes to present their brands to a global audience. Here’s some Football-IP trivia! Over the years, various footballers have successfully registered trademarks for sports equipment and clothing merchandise. French footballer, Eric Cantona, is considered to be the first footballer to obtain a registration for his famous chant, OOH AAH CANTONA, in 1997. During the 2018 FIFA World Cup in Russia, English footballer, Jesse Lingard, applied for four trademarks for his goal celebration for clothing and related merchandise. Other examples include, David Beckham’s DB 23, Cristiano Ronaldo’s CR7, Harry Kane’s HK and Gareth Bale’s ‘Eleven of Hearts’ goal celebration. Interestingly, Lionel Messi had to wage a nine-year long battle to obtain trademark protection for his name, which was opposed by the Spanish cycling company, Massi, on the ground that the similarity between the rival logos would cause confusion. However, the European Court of Justice (ECJ) ruled that the Argentinian’s reputation should be taken into account when deciding whether the public would be able to differentiate between the two brands and held that the footballer was too well-known for confusion to arise. With the modern footballer having an entourage of advisors, including lawyers, one can expect more and more footballers to obtain exclusivity over their initials/signature celebrations, etc. through trademarks and commercialize them as brands.

Recently, Microsoft instituted a suit seeking permanent injunction against Vacation Rental Services Private Limited & Ors. (“VRS”), that were using the well-known MICROSOFT mark and logo without any authorization or license from Microsoft. Microsoft’s case was that VRS had been misrepresenting themselves as being related to Microsoft in order to defraud innocent customers. In January 2021, the Cyber Cell of New Delhi had received an anonymous criminal complaint regarding fraudsters running online cheating/fraud racket from their call centre in Delhi, targeting foreign nationals of Spain, posing as executives of Microsoft. During the criminal proceeding, various hard disks, laptops, email accounts, wi-fi routers, etc. were seized from VRS’ premises and fake invoices issued on behalf of Microsoft were recovered from VRS’ computer systems. Moreover, criminal proceedings in Spain revealed that one of the defendants was the recipient of illicit money transfers from defrauding innocent victims. Microsoft averred that the defendants were acting in consort with each other to carry out infringing activities and duping innocent victims on the false pretext of being associated with Microsoft, which resulted is negatively impacting its goodwill and reputation. The court was quick to grant an ex-parte ad-interim injunction restraining VRS from using the MICROSOFT mark and logo and any deceptively similar marks and from misrepresenting and impersonating as being Microsoft. Microsoft Corporation & Anr. v. Vacation Rental Services Private Limited & Ors. CS(COMM) 158/2022 Delhi High Court.

On March 21, 2022, J. Prathiba Singh of the Delhi High Court issued directions to the Controller General of Patents, Designs and Trade Marks’ (“CGPDTM”) regarding opposition proceedings filed, and registrations issued, during the pandemic. The directions were issued pursuant to four (4) petitions filed before the Delhi High Court.   By way of background, in January 2022, the Hon’ble Supreme Court of India had passed an order suspending all statutory deadlines falling between March 15, 2020 and February 28, 2022. Notwithstanding this order, potential opposers could not file oppositions after the expiration of the statutory four (4) month period because the CGPDTM’s online filing portal was closed for such oppositions.  Justice Singh opined that the CGPDTM was required to comply with the order of the Supreme Court and extend the limitation period for filing oppositions. The judge held that the limitation period for filing oppositions against applications advertised during the pandemic shall stand extended until May 30, 2022.  She also held that Certificates of Registration issued in respect of trademark applications against which oppositions were filed, or could be filed by May 30th, shall either not be issued or stand suspended till the oppositions are decided by the CGPDTM. The Court also provided guidance regarding the procedure for filing the oppositions. The order, however, does not address Indian designations of International Registrations that have matured to registration during the pandemic. Moreover, in light of the order, the fate of injunctions in civil suits that were passed on the basis of trademark registrations obtained during the pandemic period, which may now stand suspended, is uncertain.

In a recent development, Ninth Circuit Court of Appeals ruled in favour of popstar Katy Perry in a case pertaining to copyright infringement and held that the popstar is not liable to pay $ 2.8 million worth of damages. The present dispute arose over Katy Perry’s 2013 release, Dark Horse. As per rapper Flame, Perry had plagiarised an eight-note ostinato from his 2009 song Joyful Noise. Initially, Flame was awarded damages but this decision was vacated by a Federal District Court Judge in 2020. Gray appealed against the decision. However, the Ninth Circuit Court of Appeals held that the melody over which Flame claimed exclusivity was not “particularly unique or rare” and that the original verdict suffocates musical creativity. It was also held that allowing such a copyright would be like allowing an improper monopoly especially when the ostinatos at issue consists entirely of commonplace musical elements, and that the similarities claimed does not arise out of an original combination of elements. It will be interesting to see how this verdict is construed in other similar lawsuits against artists such as Dua Lipa and Ed Sheeran. For now, it is established that victory is indeed in Katy Perry’s veins!.

The eagerly anticipated first ever Metaverse Fashion Week (“MVFW”), hosted by Decentraland, took place late last month. The MVFW spanned over a total of four days and gave the world a sneak peek into the future of virtual fashion shows! As soon as one entered the glitzy glamorous world of virtual fashion, you got an option to choose and personalize your avatar with a myriad of clothing items and accessories to choose from. All you needed to be a part of this fashion week was a stable internet connection! The event saw participation from over seventy brands and artists including fashion bigwigs such as Tommy Hilfiger, Dolce & Gabbana, Etro, etc. Another interesting aspect was that one could walk from store to store to purchase virtual clothing and once the purchase was finished, you would be redirected to a webpage allowing you to purchase a real-life wearable piece mimicking the virtual outfit you just bought. While the MVW brings with it plenty of excitement and possibilities, what remains to be seen is how intellectual property in fashion is protected from counterfeiters or infringers in the metaverse. There does seem to be a starting point in place since many luxury brands such as Balenciaga, Burberry, etc., have already filed trademark applications covering virtual goods and many brands are expected to follow suit. One thing is for certain though- the future truly is meta!.

Recently, the Delhi High Court refused an interim injunction to Soothe Healthcare Pvt. Ltd (‘Plaintiff’) against Dabur India Ltd. (‘Defendant’) in a suit alleging trademark infringement and passing off on the ground that no prima facie case was made out. The Plaintiff claimed to be involved in the business of personal hygiene products and the registered proprietor of the marks SUPER CUTESTERS, SUPER CUTES and SUPER CUTEZ in Class 5. The Plaintiff cited revenue and advertising figures to claim goodwill and reputation in its marks. As per the Plaintiff, it came across the defendant’s use of the deceptively similar SUPER PANTS mark and sent it a letter demanding cessation of all use. On the other hand, counsel for Defendant argued that SUPER is a laudatory word which is common to trade and that Defendant has sought registration for the device SUPER PANTS which includes the DABUR mark of the Defendant. Defendant also argued that there is no similarity in packaging of the rival products. The court agreed that the packaging is dissimilar and the word SUPER is common to trade and used by various sellers in a laudatory and descriptive manner. It was also held that registration for the Plaintiff’s marks would not give exclusive right over use of the word SUPER. Soothe Healthcare Pvt. Ltd. v. Dabur India Ltd., CS(COMM) 18/2022, Order dt. March 3, 2022.

Recently, the Delhi High Court granted an ad interim injunction to Bristol Myers Squibb Holdings Ireland Unlimited Company & Ors (“Plaintiffs”) against Angle Bio Pharma & Ors. (“Defendants”). The Plaintiffs filed the suit seeking an injunction restraining the Defendants from infringing their granted patent titled ‘Lactam-Containing Compounds and Derivatives Thereof as Factor Xa Inhibitors’, which is a novel pharmaceutical preparation and also known by the INN name APIXABAN. The patent was granted to the Plaintiffs on 4th April, 2011 and the term of the patent is valid till 17th September 2022. The Plaintiffs alleged that the Defendant No.1, Angle Bio Pharma, is advertising, offering and selling the product APIXABAN through its website and as well as through other platforms such as IndiaMart and Tradeindia, the Defendants Nos. 2 and 3, respectively. The court observed that Defendant No.1 is, clearly, offering the product APIXABAN for sale across the country and in bulk quantities, both through its own website as well as through the websites of the Defendant Nos. 2 and 3. Thus, the court held that, since there is no doubt that APIXABAN is the molecule over which the Plaintiffs enjoy exclusivity in view of Section 48 of the Patents Act, 1970, the Plaintiffs have made out a prima facie case in their favour. Accordingly, the court passed an order restraining the Defendant No. 1 from manufacturing, selling or offering for sale any pharmaceutical preparation of APIXABAN without license or authorization from the Plaintiffs and directing the Defendant Nos. 2 and 3 to take down the listings of the APIXABAN product within 36 hours upon receipt of the court’s order. The court further ordered that whenever the Plaintiffs come to know of any other links where APIXABAN is listed on the websites of the Defendant Nos. 2 or 3, notice shall be issued by the Plaintiff to them through counsel, upon which, within 36 hours, the said listings shall also be taken down, in compliance with the applicable guidelines relating to intermediaries. Bristol Myers Squibb Holdings Ireland Unlimited Company & Ors v. Angle Bio Pharma & Ors. [CS(COMM) 178/2022]. DHC Order dt. March 23, 2022

Recently, Modicare Limited (“Appellant”) appealed an order passed by the Registrar of Trade Marks refusing to register its application for the mark ‘SALON PROFESSIONAL’ covering hair care products in Class 3 before the IP Division of the Delhi High Court. One of the grounds for refusal of the application by the Registry was that the mark is descriptive of the goods covered by the application. The Appellant, in support of registration of its mark, claimed that it adopted the mark back in 2003 and had spent huge sums of money in promoting goods under the mark. It also relied on its registration for the mark ‘MODICARE SALON PROFESSIONAL’ dated 2016 to argue that registration of the refused mark should also be allowed. On perusing the manner in which the mark was used, the court noted that, while the Appellant’s application was for the word mark SALON PROFESSIONAL, it was using the mark in a logo form. The court observed that, since the mark which is in use by the Appellant is a device mark, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words ‘SALON’ and ‘PROFESSIONAL’. The Appellant, however, was willing to modify the application for the word mark to a device mark. Considering the long use of the mark and the registration for the mark ‘MODICARE SALON PROFESSIONAL’, the court directed to advertise the device mark on the conditions that: (a) the device mark will be associated with the prior registration for MODICARE SALON PROFESSIONAL, (b) the word mark will be replaced by the device mark in use pursuant to the Appellant filing the appropriate request at the Registry, and (c) there would be no exclusive rights in the words ‘SALON’ or ‘PROFESSIONAL’. MODICARE LIMITED vs REGISTRAR OF TRADEMARKS, C.A.(COMM.IPD-TM) 8/2022, Decision dated April 4, 2022