WEBVTT Kind: captions Language: en-IN 00:00:23.840 --> 00:00:30.560 a very warm welcome in module five of week six of the course intellectual property disputes 00:00:30.560 --> 00:00:36.920 code practices and enforcement now as you know this week is whole dedicated on treadmark we 00:00:36.920 --> 00:00:42.920 have all dealt with the basic concept about the disputes treadmark definition statutory framework 00:00:42.920 --> 00:00:48.000 registration process infringement passing off then we have also gone into the details about 00:00:48.000 --> 00:00:55.360 the trademark infringement trademark dilution cyber squatting counterfeiting then production 00:00:55.360 --> 00:01:01.880 protection against the unjustified threats or the the further like justif jurisdictions 00:01:01.880 --> 00:01:07.720 where you can file the that trademark related litigation matters then we have seen the Civil 00:01:07.720 --> 00:01:14.480 criminal administrative remedies so pretty well idea we have got now about the trademark disputes 00:01:14.480 --> 00:01:20.040 now we will move into the details about some case laws Landmark case laws related to the trademark 00:01:20.040 --> 00:01:27.720 so here we will start so landmark cases if you see that the first Landmark case we can say 00:01:27.720 --> 00:01:36.480 it is of a citex company versus Jacobson Products Company it's a 1995 case and it is a like 00:01:36.480 --> 00:01:41.920 US Supreme Court have given the decision now issue under consideration in this particular 00:01:41.920 --> 00:01:48.760 case was whether color alone can be registered as a tread Mark so question was whether color alone 00:01:48.760 --> 00:01:55.280 can be registered as a trademark and here in this particular case the outcome was that Court held 00:01:55.280 --> 00:02:02.520 that color alone can be registered as a trademark if it has a acquired a secondary meaning because 00:02:02.520 --> 00:02:08.720 distinctiveness is a characteristic of a trademark and that if that trademark acquires that 00:02:08.720 --> 00:02:15.000 distinctiveness because of the color secondary meaning because of the color then you can consider 00:02:15.000 --> 00:02:21.320 it as a color as a trademark now here I will just put one concept of a trade race actually probably 00:02:21.320 --> 00:02:26.960 you are aware about the anchor versus Colgate case where color combination is copied and that is a 00:02:26.960 --> 00:02:33.440 Again The Landmark case you can just check that colors were like a white and red color okay so 00:02:33.440 --> 00:02:39.680 you this is a 1995 case you can just check that the the president is set here that yes color 00:02:39.680 --> 00:02:45.880 can be act can can act as a trademark provided it will have a secondary meaning now obviously 00:02:45.880 --> 00:02:51.560 what will happen it has open you can say the the further you can say the development in a trademark 00:02:51.560 --> 00:02:58.560 or advancement or evolution in a trademark that non-traditional trademarks can be considered when 00:02:58.560 --> 00:03:04.040 we are talking about a Trad Mark protection so that was the start because of this particular 00:03:04.040 --> 00:03:09.800 case now the next you can just check here the Adidas case now Adidas case and Adidas we have 00:03:09.800 --> 00:03:16.080 already seen that particular case now here the question with the Adidas this Mara mode CV it was 00:03:16.080 --> 00:03:24.920 the 2008 case in European jurisdiction and issue under this particular case was that use of a 00:03:24.920 --> 00:03:31.720 three tribes which are there in the that adidas logo that whether that three stripes if competitor 00:03:31.720 --> 00:03:39.280 use whether they are like a causing any trademark infringement now obviously here the question is 00:03:39.280 --> 00:03:47.440 like deliberated and the quote held that trademark owners can prevent use of a similar marks even 00:03:47.440 --> 00:03:53.200 without likelihood of a confusion because only three stripes they have copied and the main 00:03:53.200 --> 00:04:00.400 litmus test for the treadmark is like a primary test for trademark that is like a likelihood of 00:04:00.400 --> 00:04:08.320 a con cons confusion of the consumer right so here what the court court like held in this Cas is 00:04:08.320 --> 00:04:15.880 like that owners can prevent use of a similar Mark even without likelihood of a confusion if the use 00:04:15.880 --> 00:04:22.480 takes unfair advantage of the marks reputation because Adidas is like a if you see that three 00:04:22.480 --> 00:04:29.840 stripes three stripes is a very much we can say the characteristic of that adidas logo and here 00:04:29.840 --> 00:04:36.200 unfair advantage of that particular if somebody takes then again it will be a trademark 00:04:36.200 --> 00:04:42.440 infringement will be there so we can say that the the Str does it it strengthen the protection for 00:04:42.440 --> 00:04:49.600 a well-known marks in a European jurisdiction okay so that is particularly we can say 00:04:49.600 --> 00:04:54.160 related to wellknown so in first case we have just discussed that it is a start as a color as 00:04:54.160 --> 00:05:00.280 a trademark untraditional way unconventional way okay or non-conventional way you can say okay then 00:05:00.280 --> 00:05:06.840 well known Mark here and then the what the the three stripes only that small part is copied okay 00:05:06.840 --> 00:05:12.960 so that also may cause a confusion and there will be unfair advantage to the party now next case we 00:05:12.960 --> 00:05:20.200 will discuss about the metal and matal versus this MCA records okay now if you check this 00:05:20.200 --> 00:05:27.640 particular case issue was like a use of the Barbie trademark in the song barbig girl probably you 00:05:27.640 --> 00:05:35.640 have watched that song that barb by Aqua so the case was related to this particular issue let us 00:05:35.640 --> 00:05:44.000 go into the little bit details about this case so in 1997 matal filed this suit in US District 00:05:44.000 --> 00:05:52.400 Court for the central district of California bringing 11 claims against the MCM okay so now 00:05:52.400 --> 00:05:59.800 in this case you can just MC and there were the other parties were there so the cas is like 00:05:59.800 --> 00:06:09.080 brought by the matal now this matal claim that the song violated the trademark Barbie trademark 00:06:09.080 --> 00:06:16.440 and further matal says that Ally the song had violated their copyrights and a trademark 00:06:16.440 --> 00:06:23.720 of a barie and that its lyric had tarnished the reputation of their trademark and impinged on 00:06:23.720 --> 00:06:31.360 their marketing plan they also claim that the cover packaging of the single that used Barbie 00:06:31.360 --> 00:06:38.640 pink and registered trademark owned by the metal so in this case this metal said that copyright 00:06:38.640 --> 00:06:46.480 and treadmark both IPS are like a hampered both IPS are infringed in this particular case by the 00:06:46.480 --> 00:06:54.400 MCA MCA is like Aquas American record Lael is okay so they have done the infringement now what 00:06:54.400 --> 00:07:02.120 MCA says that MCA contexted that metal claim and that that counter claim they have given that for a 00:07:02.120 --> 00:07:10.520 defamation after metal had like linked this MCA to a bank robber okay so obviously in the argument 00:07:10.520 --> 00:07:17.040 MC has that that they have link with the bank robber and then this matal complaint was like 00:07:17.040 --> 00:07:23.560 a the the dismissed we can say the fellure to state claim and then the central district of 00:07:23.560 --> 00:07:30.920 California granted the the the the decision and what happened obious viously agreed party matter 00:07:30.920 --> 00:07:37.240 then appealed into the ninth circuit on appeal the ninth circuit ruled the song was protected 00:07:37.240 --> 00:07:45.600 as a parody under the trademark doctrine of a nominative use and then the First Amendment to the 00:07:45.600 --> 00:07:54.960 US Constitution that is in in opinion Pain by the the judge was Alex and he says that it 00:07:54.960 --> 00:08:03.080 is a adopted that Roger test what is that Rogers test is the par where the the creative usage of a 00:08:03.080 --> 00:08:09.880 trademark is allowed so that was Roger State Roger test and then Alex said that yes in favor 00:08:09.880 --> 00:08:16.800 of MCA they have given the decision okay so this is the situation now nine circuit also dismissed 00:08:16.800 --> 00:08:23.000 this MCS defamation counter claim concluded this ruling by saying that the parties are 00:08:23.000 --> 00:08:29.440 advised to chil actually so that was the advice given by the ninth circuit and then the 00:08:30.080 --> 00:08:38.800 obviously mat sort C that read in the to the Supreme Court of the United State but its petition 00:08:38.800 --> 00:08:46.120 was denied this is the situation so yes Supreme Court gone for the review of the decision that 00:08:46.120 --> 00:08:52.440 matal gone for the it he they have appealed further in Supreme Court and then they have 00:08:52.440 --> 00:08:59.440 that that obviously that rate was related to the review of the decision of the that lower courts 00:09:00.080 --> 00:09:07.720 but this petition was denied by the by the Supreme Court also so the situation here in this 00:09:07.720 --> 00:09:16.000 metal case was like this that the issue use of Barbie it was there and metal that Barby that 00:09:16.000 --> 00:09:24.760 popular that song was also like U popular and the Rogers test is applied and obviously the case 00:09:24.760 --> 00:09:32.320 was like given in favor of you can say the MCA and and it cited a first amendment protection 00:09:32.320 --> 00:09:38.160 and the Rogers test for the artistic relevance so this is also the situation so you can say 00:09:38.160 --> 00:09:43.560 that this is a case for balancing a trademark rights with a free speech so probably this 00:09:43.560 --> 00:09:48.560 this significance we can we can brought from this particular case let us now move further with the 00:09:48.560 --> 00:09:55.520 next case that is related to inter Flora versus Marx and Spencer okay it's again European Court 00:09:55.520 --> 00:10:02.760 Justice that case so what happens this if you see the issue issue under consideration is a use 00:10:02.760 --> 00:10:10.640 of a competitor's treadmark as a key word in a online advertising so you just imagine the 00:10:10.640 --> 00:10:19.320 name the trademarks trademark of that competitor it is used as a keyword you know that online you 00:10:19.320 --> 00:10:25.760 you can use that keywords obviously just like a metadata you know aware about that things so 00:10:25.760 --> 00:10:32.120 use of a competitors's treadmark as a keyword in a on online advertising now what was this case if 00:10:32.120 --> 00:10:38.320 you go into the details of that this inter Flora operates a flower delivery Network independent 00:10:38.320 --> 00:10:46.000 florist okay so that it is related to flower delivery while Marks and Spencers you can see 00:10:46.000 --> 00:10:51.840 it is having that own flower delivery services there right now what happened here that inter 00:10:51.840 --> 00:10:59.480 Flora objected that Mark Spencer's purchase of the keyword inter Flora using Google's ADW 00:10:59.480 --> 00:11:08.080 service just see that situation okay so objection was buying or purchasing of the keyword inter 00:11:08.080 --> 00:11:14.120 Flora by a through that Google's adword Services by Marx and Spencer now the effect of this 00:11:14.120 --> 00:11:21.600 purchase was that that a Google search engine who search for the term inter Flora would be 00:11:21.600 --> 00:11:27.600 shown a list of result with a links to the marks and spener so obviously the flow will go towards 00:11:27.600 --> 00:11:34.760 the marks and spener floral delivery service and it will be as a sponsored link and therefore above 00:11:34.760 --> 00:11:41.360 that it's it's like a like it's not a natural we can say the search it is a manipulated search 00:11:41.360 --> 00:11:49.280 right by particularly because of that purchase of that particular word inter florum so in this 00:11:49.280 --> 00:11:56.480 case what exactly the ruling was there that code provided guidelines for assessing whether keyword 00:11:56.480 --> 00:12:05.760 use infringes trademarks right okay keyword use infringes a trademark right so it set a 00:12:05.760 --> 00:12:13.400 standard you can say for a trademark usage in a digital advertising so in that digital we can 00:12:13.400 --> 00:12:21.160 say the the advertising or online advertising in the EU this particular you can say it has set 00:12:21.160 --> 00:12:26.640 the standard for a trademark because they have provided the guideline for assessing whether 00:12:26.640 --> 00:12:33.040 keyword use infringes treadmark right or not so that guidelines are set by this particular this 00:12:33.040 --> 00:12:41.400 case that is ENT Flora versus Marx and Spencer now let us move to the next that is a Tiffany versus 00:12:41.400 --> 00:12:50.120 eBay Services okay so eBay incorporate actually so this is again us us jurisdiction so issue 00:12:50.120 --> 00:12:57.560 under consideration in this particular case was eBay's liability for counterfeit typhonis goods 00:12:57.560 --> 00:13:05.680 sold on its platform so platform obviously eBay is providing the platform huh and problem was of a 00:13:05.680 --> 00:13:13.200 counterfeit Goods which are sold through this platform eBay platform so whether the platform 00:13:13.200 --> 00:13:21.280 like that that that they are responsible for this particular infringement so if you see tyan company 00:13:21.280 --> 00:13:29.480 it was founded in 1837 and it has a brand of luxury goods with a highend quality incl including 00:13:29.480 --> 00:13:39.320 that jewellry watches then home atems Etc okay now what happened this is that it is Renown 00:13:39.320 --> 00:13:48.120 for its rare and magnificant magnificent diamonds okay so that is the reputation of a Tiffany now 00:13:48.120 --> 00:13:55.080 what happened on the eBay platform it is an online Marketplace so it was founded in 1995 so what it 00:13:55.080 --> 00:14:01.320 allows it allows the registered users to buy and sell items so you can register there you can buy 00:14:01.320 --> 00:14:08.640 also you can sell items with other users so it's like a platform to do the sell and purchase of the 00:14:08.640 --> 00:14:15.880 products fine now eBay has more than 97 million active users globally that is the situation so 00:14:15.880 --> 00:14:23.360 in 2010 the users would worldwide collectively Trad in if you see 2010 case they have traded 00:14:23.360 --> 00:14:31.080 almost $2,000 worth Goods every second just see the transaction which is happening on 00:14:31.080 --> 00:14:38.320 the email every second the transaction worth of $2,000 so that much active that platform 00:14:38.320 --> 00:14:46.760 is okay so we can say that it is a the world's largest online marketplaces eBay as a world's 00:14:46.760 --> 00:14:53.240 largest Online Marketplace you can say now what was the contentions now what was the complaint 00:14:53.240 --> 00:14:59.240 so Tiffany as we have just seen that Tiffany and Company they have filed a complaint first in 2004 00:14:59.240 --> 00:15:05.120 that eBay constituted direct and contributory trademark infragment now you know what is direct 00:15:05.120 --> 00:15:10.400 what is contributive what is vicarious liability all that things we have dealt so the contention 00:15:10.400 --> 00:15:17.760 here was like a it is a contributory and a direct infringement by eBay because they are giving 00:15:17.760 --> 00:15:23.440 that platform okay and they are responsible for trademark infringement trademark dilution 00:15:23.440 --> 00:15:29.080 and false advertising all three words you are aware we have already dealt with that now since 00:15:29.080 --> 00:15:36.960 it facilitates and advertise counterfeit Tiffy jewelry on its online Market that was in 2008 00:15:36.960 --> 00:15:42.920 okay so that was the situation and in 2008 what happened that District Court decided in favor of 00:15:42.920 --> 00:15:49.520 eBay on all claims and they said that no eBay is not like responsible for that particular thing 00:15:49.520 --> 00:15:55.080 they are providing the platform now what happened this Tiffany appeal further for the decision in 00:15:55.080 --> 00:16:01.520 second circuit now circuit if you are not not getting that circuit code district code again 00:16:01.520 --> 00:16:07.760 visit that week three because we have in detail discussed this the hierarchy of courts in USM 00:16:07.760 --> 00:16:13.960 now the court affer the Judgment of the district court and with respect to the claims of the 00:16:13.960 --> 00:16:19.440 trademark infringement and dilution the false advertising claim was returned to the district 00:16:19.440 --> 00:16:26.040 court for further processing okay so dilution and infringement related claims like it was 00:16:26.040 --> 00:16:32.520 like as it is accepted you can say right it is approved by the circuit code but they have like 00:16:32.520 --> 00:16:38.400 regarding that false advertising claim the matter was like again returned to the district 00:16:38.400 --> 00:16:46.280 code for further processing okay and that again ruled in favor of a eay so if you see the outcome 00:16:46.280 --> 00:16:53.600 was that Court held the eBay was not liable for a trademark infringement as it looked appropriate 00:16:53.600 --> 00:17:00.720 step to remove infringing listing when notified so in short platform is not resp responsible because 00:17:00.720 --> 00:17:06.160 they are giving the marketplace they are just neutral that is the quote opinion that they 00:17:06.160 --> 00:17:13.120 are neutral in providing the platform and on that platform the transaction is happening they are not 00:17:13.120 --> 00:17:18.240 instigating anybody to do that or they are not contributing also directly into this particular 00:17:18.240 --> 00:17:25.560 activity right that that is the situation so courtel again that eBay was not liable for a 00:17:25.560 --> 00:17:31.800 trademark enragement as it took appropriate steps to remove infringing listings when notified so 00:17:31.800 --> 00:17:37.200 eBay immediately because of this case obviously eBay have taken the caution and if there is 00:17:37.200 --> 00:17:43.760 like infringing listing is there obviously they have like not allowed that particular like 00:17:43.760 --> 00:17:50.880 providers to host them on this particular platform so that measures are already immediately taken so 00:17:50.880 --> 00:17:56.320 that is the situation so it is important case we can say for the Online Marketplace liability 00:17:56.320 --> 00:18:02.720 because liability the the determination of this liability just like in copyright there was 00:18:02.720 --> 00:18:08.920 a case actually that whether a cable operators are responsible for the copyright infringement 00:18:08.920 --> 00:18:14.000 so this is in same line you can just check that particular case that whether a platform owner 00:18:14.000 --> 00:18:20.160 is responsible for the trademark infringement okay so clearly quote said that no liability 00:18:20.160 --> 00:18:28.920 is not with the that online Market Place okay so this is the situation now next like U us 00:18:28.920 --> 00:18:35.880 P versus booking booking.com this particular case we will just go into the details of that now in 00:18:35.880 --> 00:18:42.640 this case what was the issue just listen carefully now whether booking.com is a generic and this 00:18:42.640 --> 00:18:48.640 unregistrable trademark because it's a generic name booking so whether this can be a trademark 00:18:48.640 --> 00:18:55.960 or not that was the question now booking.com we know that it is online agency operating under both 00:18:55.960 --> 00:19:02.920 the names and with the that domain name also so okay now the company sought to trademark its name 00:19:02.920 --> 00:19:12.280 with a USP okay now what happened the USP denied the application the reason given is that the term 00:19:12.280 --> 00:19:19.520 booking because our trademark law ISS that general terms cannot get the that trademark protection 00:19:19.520 --> 00:19:26.640 so obviously USP followed that and what that what the reason given term booking as applied the 00:19:26.640 --> 00:19:33.480 class of traval services was a generic term and that booking.com had not shown how their 00:19:33.480 --> 00:19:40.400 Mark is Mark has gained the distinctiveness so how you can just differentiate that booking with 00:19:40.400 --> 00:19:46.440 a Booking.com having a distinctive nature so that is not at all we can say the like 00:19:46.440 --> 00:19:52.880 shown by the applicant and therefore that USPTO rejected the application fine now what 00:19:52.880 --> 00:19:59.000 happened booking.com obviously appealed this decision so trademark trial and appeal board 00:19:59.000 --> 00:20:07.760 to this booking.com appeal now what happened in this case then in that appeal that upheld 00:20:07.760 --> 00:20:15.560 the booking was a genor with the class of travel services and simply appending it with the Doom 00:20:15.560 --> 00:20:24.280 did not change its nature so USPTO decision is like a in favor of that only affiliate vard 00:20:24.280 --> 00:20:31.640 has given the decision now what happened obviously booking went to the next that is a district court 00:20:31.640 --> 00:20:40.040 of eastern district of a Virginia Next Level now there the court re reversed the decision and 00:20:40.040 --> 00:20:47.040 the court found that while booking was a generic term related to arranging tribal Services addition 00:20:47.040 --> 00:20:55.160 of the top level domain that is a doom implying an online Internet Commerce site it created A New 00:20:55.160 --> 00:21:01.960 Concept that was a district court decision they have analyzed this particular issue and they 00:21:01.960 --> 00:21:08.600 have come up with the conclusion that it is a New Concept and it is not a generate term so that 00:21:08.600 --> 00:21:14.760 was a district Cod decision so USPTO rejected affiliate Authority rejected district code said 00:21:14.760 --> 00:21:20.920 that no no this is not generic this is a like it is not no more like a generic okay so outcome what 00:21:20.920 --> 00:21:28.640 the code held that generic.com atom generic.com term is a not automatically generic and can 00:21:28.640 --> 00:21:35.440 be registered if has acquired a distinctiveness so obviously what happened with this case it expanded 00:21:35.440 --> 00:21:41.080 the protection for domain name trademarks so when we are talking about a domain name I can author 00:21:41.080 --> 00:21:46.600 for that I can is the authority and for trademark yes trademark Registry of particular jurisdiction 00:21:46.600 --> 00:21:53.920 is the authority but now what happened because of this decision that with one that dotcom okay 00:21:53.920 --> 00:22:00.840 with that generic word it changed the like it says that it acquired the distinctiveness 00:22:00.840 --> 00:22:07.000 and as it is acquired distinctiveness you can just we can consider this as a distinct and 00:22:07.000 --> 00:22:13.640 therefore this domain name can get the trademark so that is the situation so expended protection 00:22:13.640 --> 00:22:22.560 for the domain name Trad marks okay now let us move to the next that is next like a we will 00:22:22.560 --> 00:22:29.960 go into this that small video you can just watch that video and one more case Okay 00:22:29.960 --> 00:22:36.000 interesting proceedings and then we will move further yeah as per the most recent order the 00:22:36.000 --> 00:22:43.040 Bombay high court has directed pangali Aur limited to deposit rupees 50 lakh as a fine for continuing 00:22:43.040 --> 00:22:48.360 with the sale of camper related products even after the court had temporarily asked 00:22:48.360 --> 00:22:53.320 it to stop dealing with such products because there was a trademark dispute that patanjali 00:22:53.320 --> 00:22:58.560 was embroiled in with another company selling similar kind of camper based products which 00:22:58.560 --> 00:23:05.320 is mongam Organics limited now even though the order to restrain itself from being associated 00:23:05.320 --> 00:23:11.280 in such sales way back in August last year pangali continued to sell these products and even listed 00:23:11.280 --> 00:23:20.440 it on its website for as recently as July 8th this year now the next that is rag versus 00:23:20.440 --> 00:23:28.440 a fossil group okay now just see this RAC fastness this was a group you can just say 00:23:29.040 --> 00:23:34.680 and then the the there was a willful infringement so issue under consideration 00:23:34.680 --> 00:23:41.560 was a willful infringement is required for an award of profit so in trademark RIS if you want 00:23:41.560 --> 00:23:47.880 to you have to decide on the award of profit so there should be whether there should be a 00:23:47.880 --> 00:23:54.280 willful infringement that is a requirement to be proved that it is a willful infringement that 00:23:54.280 --> 00:24:02.760 was a question under consideration okay now just Che now this Roman fastness incorporate so and 00:24:02.760 --> 00:24:08.840 this fossil incorporate so these are the these are the two groups actually different groups 00:24:08.840 --> 00:24:14.400 fossil group is a global design marketing and distribution and it is a Innovative company 00:24:14.400 --> 00:24:20.840 involved in the manufacturing of a distinctive watches or accessories leather goods Etc Handbags 00:24:20.840 --> 00:24:29.600 and all that okay now this you can just say that romang if you see it is is also an American 00:24:29.600 --> 00:24:35.560 company involved in manufacturing of accessories and products such as clasps or Fasteners or 00:24:35.560 --> 00:24:43.600 closur Etc so okay so these are the two different companies working in this particular domains now 00:24:43.600 --> 00:24:51.760 what happens in one of their business ventures they both that RAC and this particular fossil 00:24:51.760 --> 00:24:58.960 they entered into the like agreement so what was that agreement that RX Fasteners will used by 00:24:58.960 --> 00:25:05.160 a fossil's leather good that was the agreement okay so what was the decision what was that 00:25:05.160 --> 00:25:12.680 agreement that RAC will RAC fastness will be used by a fossil's leather good that is the that is the 00:25:12.680 --> 00:25:20.560 agreement now what happened for them So eventually discovered in after few we can say that that 00:25:20.560 --> 00:25:28.560 months or years the observation was like that it was found that several fossil products 00:25:28.560 --> 00:25:38.120 s made in China we using a counterfeit Roman FAS agreement was usage of that Roman fers by fossil 00:25:38.120 --> 00:25:44.280 on the for their products but in China what is happening romx Fastener were used but it is a 00:25:44.280 --> 00:25:52.480 counterfeit it is a counterfeit RAC fastner is there so that are used by the fossil okay 00:25:52.480 --> 00:26:02.000 now what happened obviously Romax fossil along with the like several of its retailers for a 00:26:02.000 --> 00:26:10.760 trademark infringement okay in a United States district court for the that it was 00:26:10.760 --> 00:26:20.800 a district district court of a district ketut now here jury trial was held and a verdict reached 00:26:20.800 --> 00:26:28.240 in which it is said that fossil was found to have infringed on both patent and a trademark rights 00:26:29.440 --> 00:26:36.520 both okay and damages were initially awarded by the jury for patent royalties and 00:26:36.520 --> 00:26:47.600 separate award of like $156,000 us for a unjust enrichment and something around 6.7 million 00:26:47.600 --> 00:26:57.880 us for a deterrence for a trademark infringement so that was a decision of a district court now 00:26:57.880 --> 00:27:05.720 what happen happen further that the question was whether it is a willful act huh so 00:27:05.720 --> 00:27:14.200 agreed by this decision that romac moved to the US court of appeals for the federal circuit 00:27:14.200 --> 00:27:21.760 Federal decided willfulness as a precondition because act says that you have to prove that it is 00:27:21.760 --> 00:27:30.520 a willful infringement is there now circuit court again that decision was like agreed party 00:27:30.520 --> 00:27:39.160 that RAC party so they went to the Supreme Court okay and Supreme Court in 2020 they have given 00:27:39.160 --> 00:27:46.360 the decision huh unan unanimous opinion given by the Supreme Court that they have they said that 00:27:46.360 --> 00:27:52.720 shut down that the requirement of willful infringement in this regard to recovering of 00:27:52.720 --> 00:28:00.640 Award of profit so there is no necessity of proof to show that the willful infringement is there so 00:28:00.640 --> 00:28:07.520 outcome outcome in short is that Court held that willfulness is not an absolute prerequisits a 00:28:07.520 --> 00:28:15.240 very important decision and precedent is said in this case okay that you need not to give not 00:28:15.240 --> 00:28:21.520 to give proof that willful infringement that particular that characteristic you 00:28:21.520 --> 00:28:28.120 need not to proof okay and absolute pre which is which was absolute prerequisites for the 00:28:28.120 --> 00:28:33.240 Award of profit but that is not required that was a ruling in this particular case so we can 00:28:33.240 --> 00:28:39.760 say that it's potentially increase the monetary remedy for a trademark owners in the US so that 00:28:39.760 --> 00:28:46.440 was a rag and the fossil that was a guess okay now there are few more cases I guess you can 00:28:46.440 --> 00:28:52.240 just go into the details like I will just give you the the parties the VIP products and 00:28:52.240 --> 00:28:58.280 Jack Daniel's properties that is a one case which was I can just say that it is something related 00:28:58.280 --> 00:29:04.560 to the like the the decision I will just or significance of this case I will just shared with 00:29:04.560 --> 00:29:10.720 you it is clarified that the application of first amendment protection in a trademark cases you can 00:29:10.720 --> 00:29:15.960 just if you want you can again Roger test applied in this particular case you can if you want you 00:29:15.960 --> 00:29:21.760 can go into the details of that particular case then I guess we have already discussed few 00:29:21.760 --> 00:29:28.360 cases in one of the sessions earlier then there was some Hermes International and mass related 00:29:28.360 --> 00:29:35.560 case it the issue which is there that whether nft is depicting full covered that brickin Banks 00:29:35.560 --> 00:29:42.480 infringed Hermes treatment Hermes trademark okay so that was the issue under consideration jury 00:29:42.480 --> 00:29:48.360 found in favor of Hermes and concluded that nfts were not protected by the First Amendment so that 00:29:48.360 --> 00:29:54.080 was the decision if you want you can go into the dec details of that now we will just go into 00:29:54.080 --> 00:30:01.760 the key takeaways okay so if you go if you see the key takeaways in all these cases is like that it's 00:30:01.760 --> 00:30:09.000 evolving it proves that for example we have seen in this case that willful infringement 00:30:09.000 --> 00:30:13.920 is it as per act it was a requirement but the court decision Supreme Court decision said 00:30:13.920 --> 00:30:22.680 it is not required so when such decisions are like after deliberation such decisions come okay by the 00:30:22.680 --> 00:30:28.440 higher courts obviously it shows that the evolving nature of a trademark law so obvious L these 00:30:28.440 --> 00:30:34.680 cases demonstrate that how trademark law adapts the new technologies and business practices 00:30:34.680 --> 00:30:39.440 okay then further obviously it is balancing the interest which is again the Juris Prudential 00:30:39.440 --> 00:30:45.680 base of Ip so always that will be taken care that pre- speech and a Fair competition we have seen 00:30:45.680 --> 00:30:52.440 matal case huh that was the situation digital challenges are there eBay platform that marketpl 00:30:52.440 --> 00:30:59.960 we have seen so digital challenges will bring the CH that the case some some issues and yes court 00:30:59.960 --> 00:31:06.720 is taking decision after deliberation and the precedents are set in in in this particular 00:31:06.720 --> 00:31:13.080 situation then there are obviously the the crossborder differences are there but yeah 00:31:13.080 --> 00:31:19.680 means EU is following certain certain the the the guidelines are there us is following certain 00:31:19.680 --> 00:31:24.320 guidelines obviously in India We are following a different guidelines that minor differences 00:31:24.320 --> 00:31:29.960 definitely definitely it will be observed then some some non-traditional marks non-conventional 00:31:29.960 --> 00:31:36.480 marks may come up like color as a tread Mark sound as a tread Mark domain name as a tread Mark right 00:31:36.480 --> 00:31:42.080 so that that developments you can just assum right so that developments are there obviously because 00:31:42.080 --> 00:31:48.080 of that trendmark laws like you can say that it is EV the evolution is happening in that also and 00:31:48.080 --> 00:31:55.160 then the the cases obviously you can say that they have impacted the trademark rights and they have 00:31:55.160 --> 00:32:01.600 enforced that the the whatever the decisions are taken by the court obviously that are 00:32:01.600 --> 00:32:08.640 enforced and the remedies are available for the trademark owners so that court is obviously giving 00:32:08.640 --> 00:32:15.680 like a relief to the any infringement if it is happening okay so I guess this much is good enough 00:32:15.680 --> 00:32:24.560 considering a trademark case laws so now quiz time so just we have talked about the the review 00:32:24.560 --> 00:32:31.560 of the cases by a different at different levels actually like so you just check about what is that 00:32:31.560 --> 00:32:39.560 rate of a c okay so you just check that particular rate what exactly it is in one of the case we 00:32:39.560 --> 00:32:45.200 have just shared with you that is this re is like file and you just check what is the 00:32:45.200 --> 00:32:50.000 meaning of that okay so with this we are coming to the end of this session see you in the next 00:32:50.000 --> 00:32:56.960 session and yes with this we are completing this particular trademark related discussion 00:32:56.960 --> 00:33:04.920 week six is over over and now we will move to the next that is a copyright thank you