Intellectual Property Rights

Faisal Numan

LOUIS VUITTON VS. GOOGLE

The Case: LV Vs. Google

For several years, Google and a number of luxury

brands, including
fighting a battle

Louis

Vuitton,

have

been

The object of discussion is the Google Ad Words

system, the "purchase" of keywords by

advertisers who post their advertisements on the
search results page when an Internet user
searches for that particular word.

LMVHs beef was with ads selling Louis Vuitton

replicas being shown when someone Googled

Louis Vuitton. They were choked that Google
would be selling the Louis Vuitton trademark to
third parties specifically websites selling
counterfeits.

Google paying over $400,000 USD for trademark

infringement in 2005

Google took the case to the European Unions

highest courts where the battle continued for
another 5 years

THE CASE
2003: In 2003 LMVH sued Google in French courts

and eventually won in 2005

2005:

Google was convicted of promoting

counterfeiting and was forced to pay LVMH
damages

2006: The Paris Court of appeal went even further

by extending its verdict to the natural listing of

the search engine, claiming that the American
Internet giant was technically competent enough
to filter search results and exclude counterfeiting
websites

THE CASE
2008:

The appelate court asked the European

Court of Justice to speak on the case, based on
the European directive on brand protection

2009: The public procecutor of the European

Court of Justice, Poiares Maduro, gave his opinion

giving Google the advantage, saying that Google
did not cause any damage to brands by allowing
advertisers to purchase key words corresponding
to registered brands

The Judgement
The European Court of Justice has today given its
judgment in this case. Essentially it has decided
that:
1. Louis Vuitton can prevent
use of its trade mark as a keyword, without the
consent of Google.
2. Louis Vuitton cannot directly prevent use of its
trade mark as a keyword by Google unless Google
has "played an active role of such a kind as to give
[Google] knowledge of, or control over, the data
stored".

Hoechst Aktiengesellschaft vs.

Artee Minerals
FACTS
The appellant was the registered proprietor of

trademark 'ARELON'. This mark was registered in

class 5 with respect to pharmaceutical goods relating
to preparation for killing weeds and destroying
vermin. The respondent filed an application for
registration of the mark 'ARTEELON' in the same class
with respect to pharmaceutical goods.
The appellant opposed the application for registration
of trade mark filed by the respondents on the ground
that the registration of the impugned mark would be
contrary to provisions of Sections 9, 11, 12(1) and 18
of the Trade and Merchandise Marks Act, 1958.

Case Held
The IPAB held that the rival goods were same and the

only difference was the letters 'TE'. The Appellate

Board further held that the possibility of confusion
and deception is not ruled out and hence affirmed
the order rejecting the application for registration
filed by the respondent.
The IPAB further held that the benefit of use under
Section 54 is given only in case of rectification
proceedings when use of an associated trademark is
deemed to be use of the registered trademark
against which rectification proceedings are initiated
for non-use of the mark.

CCBN.com, Inc. v.
C-Call.com, Inc.
FACTS
Plaintiff CCBN uses its StreetEvents.com web site to provide

access to events calendaring service regarding stock market

information. Defendant C-Call.com uses its StreetFusion.om
web site to offer similar stock market information about
publicly traded companies. Access to the StreetEvents.com
site was free at the time of the suit while subscriptions to the
StreetFusion.com site cost up to $400,000. The issue in this
case turns on priority. While plaintiff used the mark on its
page beginning in January 1999, at that time the site was
only available to limited number of subscribers in a test
version. Plaintiff promoted its service at a trade fair in
February, 1999 and the first advertising was published in
May, 1999. The company applied for service mark
registration on June 2, 1999.

Defendant launched its web site under a different name (c-

call.com) in November, 1998. It registered the domain

name StreetFusion.com on April 2, 1999 and filed a
trademark application on April 7, 1999. Its web site was
operational at the new address as of late-April, 1999 and a
press release announced the launch of the site on May 1,
1999.
Plaintiff asserts senior rights to the StreetEvents.com mark.
The question, however, is what constitutes "use" of the mark
in the context of the internet. Advertising and promotional
use along are not sufficient to constitute use in commerce
unless such pre-sales marketing is extensive. There was no
evidence in the record of extensive marketing ad thus
plaintiff did not establish use in commerce prior to April,
1999 at the earliest. The court determines that the record is
unclear as to which company actively began providing
services in commerce under the disputed mark first.

Held.
Under the reasoning of this court, it is clear

that establishing a web site with only minimal

test marketing (or simply announcing the
intention of a future service) will not
constitute sufficient "use in commerce" to
establish priority for trademark infringement

PATENT WAR
Itistheissueregardingpatentwarona

particular selling two popular anti

diabetic drugs, between a US based
firm MSD and a Mumbai based firm
Glenmark that was conducted in Delhi
highcourt.
MSD's move comes a week after
Glenmark Pharma launched generic
versions of a range of antidiabetes
products sold by the US company
under the brand names Januvia and
Janumet.
Glenmark has branded its medicines
ZitaandZitaMet.
MSD confirms that they have filed a
suitinthehonourableDelhiHighCourt
against Glenmark for patent violation
oftheirdrugsJanuviaandJanumet.

Glenmarks comment
GlenmarkPharmaceuticalshascontendedthatithasused

SitagliptinPhosphateinitsantidiabetesdrugs,ZitaandZitaMet,
andtheUSfirmhasnopatentrightoverthissalt.
TheDelhihighcourtonreserveditsdecisionsonUSdrugfirm
MerckSharpandDohmes(MSD)appealagainstasinglejudge
benchorderrefusingtorestrainIndianfirmGlenmarkfrom
manufacturingandsellingantidiabetesdrugsZitaandZitaMet.A
benchofjusticesS.RavindraBhatandNajmiWazirireservedthe
judgementafterthecounselforboththedrugmanufacturingfirms
concludedtheirargumentsinthecase.
MSDhadearlierfiledtheintracourtappealagainsttheinterim
orderofthesinglejudgebenchwhich,on5April,hadrefusedto
restraintheIndiancompanyfrommanufacturingandsellingits
medicinesmeantfortreatmentofType2diabetes.

Cont.
ThesinglejudgesorderhadcomeontheUSfirmspleaallegingthattheIndian

pharmacompanyhadviolateditsIPRoveritsantidiabetesmedicines,Januviaand
Janumet,bycomingoutwiththeirowndrugscontainingthesamesalts.TheUSfirm
hassaidithadinventedSitagliptinsaltusedinitsantidiabetesdrugsandhaspatent
overthemolecule.
GlenmarkPharmaceuticals,ontheotherhand,hascontendedthatithasused
SitagliptinPhosphateinitsantidiabetesdrugs,ZitaandZitaMet,andtheUSfirmhas
nopatentrightoverthissalt.
SitagliptinPhosphatehasbeenadistinctproductfromSitagliptinandduetothis,the
USfirmhadobtainedseparatepatentforSitagliptinPhosphateintheUS,theIndian
firmhassaid.
MSDfirstappliedforaseparatepatentforSitagliptinPhosphateinIndiaandlater
abandonedit,Glenmarkhassaid.Onitspart,theUSdrugfirmhassaidantidiabetes
drugJanuviaisnotcostlyatRs..43apillwhichisroughly1/5thofitspriceintheUS.
Accordingtomarketsources,GlenmarksversioncostsaroundRs..30%less.

Case in favour of Glenmark

Januvia and Janumet are patented and enjoy IP

protection of 20 years in India.

However, under the Drugs and Cosmetics Act of
India, a company can apply for approval to market
a patented drug four years after its launch.
Glenmark has used this route to get an approval to
launch the drug.
Under the Drugs and Cosmetics Act, state-level
regulators can grant marketing approval even if a
patent exists, as long as the drug has been around
for four years.

Experts statements
regarding case
"Any data submitted to the government is not

considered patent infringement under the patent act.

Also, grant of marketing approval doesn't amount to
patent infringement under the Drugs and Cosmetics Act
of India," said Ali Asghar Dholkawala, advocate and
IP expert of law firm Wadia Ghandy and Company.
"From the drug regulatory side, there is nothing that
stops Glenmark from launching the drug. A drug
regulator cannot hold back an approval because of an
existing patent, the courts have made it clear. Now the
patent infringement issue will be solely determined by
the courts," said Shamnad Basheer, who runs the
blog Spicyip that tracks patents and intellectual
property disputes in India.

COPYRIGHT WAR
It was an issue between a

music cassetts company

Super Cassettes Industry
and a well known and one
of the most popular
website Yahoo.
The Delhi High Court in
India passed an interim
injunction that prohibits
Yahoo Video from
streaming copyright
content from Indian music
company, Super Cassettes
Industry.
The court, after finding a

Cont.
The music company, which uses the brand T-

Series, is seeking a permanent injunction and

damages for the alleged dissemination and display
of its copyrighted content on Yahoo Video.
Super Cassettes Industries last year sued by
YouTube, owned by Google, for similar reasons.
It obtained an interim restraining order on You Tube
in that case too, though the case has not been
finally disposed.
Super Cassettes Industries has filed the case
against Yahoo under Indian copyright laws.

Cont.
The disputes pitting Yahoo and Google against Super Cassettes

Industries points out to the differences between Indian laws and

the copyright infringement and take down provisions of the U.S.
Digital Millennium Copyright Act (DMCA).
While Internet companies like Yahoo offer to remove copyright
content that has been put up on their web sites without
permission, after sufficient proof is provided of the ownership of
the copyright and its misuse, Indian content providers demand
that Internet companies take responsibility for identifying
misused copyright material and taking it down from their sites.
Super Cassettes publishes large numbers of videos and music
cassettes, and it is not possible for the company to spend time
and resources to monitor copyright infringements on sharing
sites like those of Google and Yahoo.

COURTS DECISION
With its interim order, the Delhi High Court

also appears to have put on Yahoo the onus

for identifying and removing misused
copyright material from Super Cassettes
Industries on Yahoo Video.