[vijai]

Background:
So it all started in 2010 when I was in class 10 and Android was just picking up pace. My brother bought the then most sort after flagship phone Samsung Galaxy S(1) yet a terrible experience in terms of UI/smoothness. Only solution to this absurdly unusable phone was to install custom OS. To install a custom OS, you need something called root. That is where my young brain wanted to know how it was all done. Spent my next one year learning to build custom Android OS (also called Custom Rom), how android generally works and learned to write my own apps.

Fast forward to 2012 October, I knew this was my stream and one day I might as well start a business. Hence started deciding on a name and came up with "Orpheusdroid". The name was coined after a Greek God of music - Orpheus and droid - a robot more in line with automation, intelligent stuffs. Quickly wanted to seal off the name and purchased the domain to reserve the name although I did not have much to do back then with the name "orpheusdroid" yet continuing to make custom roms for Galaxy S(1), Galaxy Note (1) under a different names (we were a team of 8 from different countries making rom for different phones before splitting up into multiple groups, multiple times for various reasons). To keep the domain active though, I kept on changing it into a news site, a forum etc until recently. Since 2013, I started publishing apps/freelance under Orpheusdroid brand (still unregistered).

Fast forward again to 2017 when GST was introduced, play store has put my account on hold since the account was registered as a business (under Orpheusdroid) but GSTN wasnt provided which was made mandatory. Decided it was the time and immediately registered it as a proprietorship firm (Did not want to go through hassle of yearly ROC filing, more paper work of a pvt. ltd given that I do not have plans to get it to next level yet). There it was, the company was born and was making few ten thousands of turnover a year.

Current situation:
Now that I have been into earning stage of life for about 2-3 years, I started to think seriously on what to do and started off with 2-3 niche products and deal with all the loss/debt/new entrant issues before I get on to the next stage of life where responsibilities are more with restricted freedom on financials, I decided to kick start the journey. Filed a trademark for my brand on 2019 December and it was accepted the Honorable GoI after vienna convention's scrutiny and was published in the Govt. Gessate.

3months challenge period was about to expire and just a week before the trademark was to be granted, received a "Cease and Desist" letter from Google India's law chamber demanding to withdraw the trademark, surrender my business, my company name and sign an undertaking that I would not indulge in any infringements in future. Baffled by their suppressive move, quickly engaged a lawyer to draft a reply notice stating I have been doing business along with Google for so many years and yet they try to suppress such a small player despite they having no problem in the past even when I had to engage with Google USA, Google EU and Google India's legal team in the past under the very same company name. Also assured there was no bad intention to impersonate or do deceptive business.

I knew by the time they sent me a legal notice, they wouldn't care about what I reply but still have their side of case ready to object it on last day because the legal minimum 7days time period (also what Google's lawyer mentioned) to respond was falling exactly on the last day to file a objection for the trademark. As I guessed, on last day of the time period to object, there comes a mail from Trade Mark Registry of a opposition from Google claiming that I infringe the word "droid" and its similar to 'Android" for which they own trademark. The entire opposition notice was flooded with word droid.

We have replied back to opposition stating it has nothing to do with "Android" as "orpheusdroid" is a single word coined back in 2012 and the syllable "An" cant be replaced with "Orpheus" and claim it to be sounding similar with many other claims and the typical lawyer's language to refute their claim. Yet again I knew this is ending in a court hearing. As I guessed, Google filed their evidence on why the name "Orpheusdroid" is a impugned mark.

There goes their brains. They filed a close to 350+ page document in which atleast 5 pages was flooded with claims that they own mark for "Droid" and another few past oppositions which has word droid in the name and logo. I was only curious on those cases which Google has filed abroad and won. Out of those most were for the logo which was a direct rip off of the Android's iconic android robot and few were abandoned applications. All the remaining pages were mere advertisement for Google's products Every page had screenshot of every single product Google has ever made And I came across few which I never knew.


With their evidence filing, my confidence on winning the case has gone much higher since all they cry about it word "Droid" while the case is:

1. "Droid" is a dictionary word and first coined in 1952 by a American science fiction author.
   

   Droid: Clipping of android. Coined by American science fiction author Mari Wolf in Robots of the World! Arise! (1952), and popularised by the film Star Wars (1977).

2. Droid is a trademark of "Lucas Films" now Disney since circa 1990.
3. Possible that Google has licensed "Droid" from Lucas now Disney for using in android
4. "Android" itself is a dictionary word.

I think it is not fair to restrict a dictionary word nor claim someone's else trademark as theirs (even when they have licensed it). The counter evidence is ready along with strongly putting forth the way Google's legal team themselves acknowledging the brand name in past and provided legal services under the very same brand with no objection but objecting now.

What are your views and is there any suggestion on making the case even stronger?

Regards,
Vijai

[BoneCollector]

Starting up a company at a young age is an achievement.

Now coming to this situation, I did a random Google search with word droid and it threw me various websites as well as apps with droid in it. Has Google tried to throttle them also? It's really crazy.

Google search.


Play store search.

[deepfusion]

I suggest you continue your suit with google. You will win. However, wrt your take on your main observations in your case,

1. "Droid" is a dictionary word (Colins) which means a root resembling a human, being used by you in your business since 2010. Please make sure you give something which proves the use by you.

Droid is a trademark of "Lucas Films" now Disney since circa 1990. Trademark would change based on use of the mark. Use in application to be different from movie media will need to be proved. If you can do it, please include this also.

Possible that Google has licensed "Droid" from Lucas now Disney for using in android. My suggestion, please don't use this in your defence.

"Android" itself is a dictionary word. Since Google is a behemoth, you will have to gather enough material to support.

My best wishes for your case.

[NPV]

Originally Posted by vijai

What are your views and is there any suggestion on making the case even stronger?

While I don't have anything specific that can help you, just wanted to caution you that anything posted on this thread is public and obviously visible to the internet search engines and will end up being indexed by Google, so any strong point that you have and mentioned here or those recommended by others here would be visible to Google and their legal teams.

Wishing you the best in this case, I hope you will go on to win this

[vijai]

Originally Posted by BoneCollector

Starting up a company at a young age is an achievement.

Now coming to this situation, I did a random Google search with word droid and it threw me various websites as well as apps with droid in it. Has Google tried to throttle them also? It's really crazy.

Runs down to few hundreds if not thousands to be exact. Have made a small web scraping script to scrap off all apps with droid in it and stopped at around 200

Originally Posted by deepfusion

I suggest you continue your suit with google. You will win. However, wrt your take on your main observations in your case,

The case is on. There is no way going back already. Layer is paid in full and is waiting for the hearing date.

1. "Droid" is a dictionary word (Colins) which means a root resembling a human, being used by you in your business since 2010. Please make sure you give something which proves the use by you.

Yes, this was done in the reply for objection as I think establishing usage timeline is prime factor right when filing a TM.

Droid is a trademark of "Lucas Films" now Disney since circa 1990. Trademark would change based on use of the mark. Use in application to be different from movie media will need to be proved. If you can do it, please include this also.

Well this is tricky due to many reasons. Lucas/Disney has tm across several classes which also covers "SaaS applications" if I'm not wrong.

Possible that Google has licensed "Droid" from Lucas now Disney for using in android. My suggestion, please don't use this in your defence.

Yes, have not included and even my lawyer advised the same for obvious reasons.

"Android" itself is a dictionary word. Since Google is a behemoth, you will have to gather enough material to support.

It is a well established fact that "Android" in modern English is derived from ancient Greek. Oxford dictionary has this stated way before even Computers went mainstream consumer device.[/quote]

Originally Posted by NPV

While I don't have anything specific that can help you, just wanted to caution you that anything posted on this thread is public and obviously visible to the internet search engines and will end up being indexed by Google, so any strong point that you have and mentioned here or those recommended by others here would be visible to Google and their legal teams.

Wishing you the best in this case, I hope you will go on to win this

Didnt strike me thanks for the caution. Wouldn't be revealing much of my future plans from now

P.S: Thanks everyone for the all the kind wishes!

[am1m]

Shame on Google, I thought only Getty Images did this sort of thing.

This article seems to have the outcome of a similar case in Russia, most of the article is not accessible without a login, but the case seems similar:

https://news.bloomberglaw.com/ip-law...c-abfdf9ec0000

[aditbelw]

We were threatened by Whatsapp in 2018 for publishing an app on playstore which deletes duplicate contacts.

Since our app publishing company is registered in US, we countered these fellas with "Bring it On". There were lot of calls to and fro, both sides. Eventually they backed out after hearing our legal guys.

Attached here is the first communication from them. Do not let these big guys bully you under any situation. In our case the communication was from their hired legal counsel based out of Indonesia.

[Jeroen]

The unfortunate thing here is as I see as follows: This is lawyer territory big time.

So although very appreciative of the comments of some or our members as to the use and historical provenence of Droid, I am not so sure that matters.

I have a little bit of experience dealing with IPRs and trademarks follow (very roughly) the same lines in most legal system as I understand it. But as always the devil is in the detail and there are noticeable differences in trademark legislation depending on where you apply for what kind of trademark.

In most legal system you can actually trademark just about any word, whatever dictionary you might find it. As long as you are not trying to to register as a trademark the words that describe what it is that you do.

A couple of examples: Apple is a registered trademark, but Apple did not get trademark for apples. They got their trademark for stuff related to computers and mobile devices. Windows is a dictionary word, but they are not in the business of selling windows, they are in the business of selling software and services.

In addition please note trademarks are not a name; a trademark is a name PLUS its goods or services. Therefore, trademark infringement analysis must include both! So technically the same word can be trademarked in combination with different goods or services. The trick here is it should be really different as to not cause confusion. Preferably completely different industries/goods/services that have nothing to do with one another. You can see the obvious problem in your case....

So it is really down how the trademark rules are or can be interpreted, ultimately how a court would rule. They don’t necessarily follow what many of us would think is logical and or fair, I am afraid.

Especially big companies tend to protect their trademark fiercely for all the obvious reasons. And they bring in the big lawyers too.

So unfortunately, you are going to be looking at what is likely to be a hefty bill from your lawyers. I don’t know if it is possible to recupperate any of that in case you win?

Good luck and keep us posted.

Jeroen

[vijai]

Originally Posted by am1m

https://news.bloomberglaw.com/ip-law...c-abfdf9ec0000

Do not let these big guys bully you under any situation.[/quote]
The very reason I fight this case. Now, It would be so much easy for me to just do a name change and move on abandoning the trademark. But:

1. I would loose my childhood dream company name
2. Let a IT giant bully me
3. Lost without a fight

Originally Posted by Jeroen

So although very appreciative of the comments of some or our members as to the use and historical Provenance of Droid, I am not so sure that matters.

I have a little bit of experience dealing with IPRs and trademarks follow (very roughly) the same lines in most legal system as I understand it. But as always the devil is in the detail and there are noticeable differences in trademark legislation depending on where you apply for what kind of trademark.

I have no experience in trademark too but with my current experience, I could definitely tell trademark registry, its laws and the judgement are a lot sane than many other legal wings - partly probably due to the face Indian trademark is part of Vienna convention. And true that there are a lot more intricacies than just name.

In most legal system you can actually trademark just about any word, whatever dictionary you might find it. As long as you are not trying to to register as a trademark the words that describe what it is that you do.

A couple of examples: Apple is a registered trademark, but Apple did not get trademark for apples. They got their trademark for stuff related to computers and mobile devices. Windows is a dictionary word, but they are not in the business of selling windows, they are in the business of selling software and services.

agreed.

In addition please note trademarks are not a name; a trademark is a name PLUS its goods or services. Therefore, trademark infringement analysis must include both! So technically the same word can be trademarked in combination with different goods or services. The trick here is it should be really different as to not cause confusion. Preferably completely different industries/goods/services that have nothing to do with one another. You can see the obvious problem in your case....

As seen by me, many different lawyers, we don't actually see any semblance except that the class of service overlaps. Despite that, there are discrepancies in what Google has filed first and then now which are actually too absurd in front of law (not going in details and not denying we won't be leaving any room for discrepancy).

Especially big companies tend to protect their trademark fiercely for all the obvious reasons. And they bring in the big lawyers too.

Let's agree to disagree on this. In many cases, they just do it as a "preventive measure". Many would just abandon IP filing once they see big corporate names on the legal notice. But, at the end, in front of the law, an entity is an entity, big or small. Law remains the same.

So unfortunately, you are going to be looking at what is likely to be a hefty bill from your lawyers. I don’t know if it is possible to recuperate any of that in case you win?

Honestly, It is a huge monetary loss for me (which I have already incurred consciously) considering I have lost double of what I have earned so far out of this business. Bill from lawyer is paid for already and the fight in on already. Possibility of recuperating the loss is far fetched right now but it's not the only motive here. The main motive is:

1. To show bullying a small player is not right.
2. If I win, set a precedence for other small players to fight against such giants.
3. An attempt to save my precious childhood dream.

And comparing the above to monetary loss, I see no problem loosing some. Even in the worst case, I get satisfaction that I did not give up without a tough fight.

[Jeroen]

Originally Posted by vijai

Let's agree to disagree on this. In many cases, they just do it as a "preventive measure". Many would just abandon IP filing once they see big corporate names on the legal notice. But, at the end, in front of the law, an entity is an entity, big or small. Law remains the same.

I don’t think we disagree here? They protect their trademark in many different ways, anything they see fit. Yes, many will give up if they need to go up one of the big conglomerates.

There is one law and it is equal to all. But having the right legal team can and does make a difference in most law systems. It is not a certainty, but it does tend to help. My dad was a lawyer and it was one of the things he taught me. When you go to court spend a lot of time finding the right lawyer for the specific case!

Originally Posted by vijai

And comparing the above to monetary loss, I see no problem loosing some. Even in the worst case, I get satisfaction that I did not give up without a tough fight.

That’s the spirit! Keep it up, I will be rooting for you all the way!!

Jeroen

[vijai]

Originally Posted by Jeroen

There is one law and it is equal to all. But having the right legal team can and does make a difference in most law systems. It is not a certainty, but it does tend to help. My dad was a lawyer and it was one of the things he taught me. When you go to court spend a lot of time finding the right lawyer for the specific case!

Guess I misunderstood you here. In that case, let's agree to agree

[hondafanboy]

See if you can somehow reach out to someone at Paytm , even to their CEO , may be via twitter. They seem to be fighting with Google on few issues. Someone from their team may help/ guide in right direction. You would need all kinds of help from anyone.

[Thad E Ginathom]

I think that, as they very well know, the scary thing about going up against big companies in a case is costs. You may be able to afford your lawyer, but if you loose and have to pay their costs as awarded against you ...

[AMG Power]

It is a generally accepted practice that common nouns should not be registered as trade marks as it becomes difficult to defend as proprietary. For instance Google is not something that anyone can lay claim to as it wasn't originally in the dictionary. In this case Google have added An before droid making Android a proprietary term. This does not give them rights over the word droid. Here is where you have an advantage as droid is in the dictionary.

It is almost similar to Microsoft taking you on because you use the word soft in your company name.

However, there is the law of first use and Google have started using this since 2008 whereas you have started using this in 2012. Here again, it's not the complete word but only part of a word which is not quite the same, so this is also to your advantage.

It is not an open and shut case either for you or Google. The case needs to be thought through and argued carefully so you will need good lawyers as the case progresses. The stronger your case becomes the more likely they will come forward for an out of court settlement.

If they do, you may probably make more money than you would selling software.

[adwaith]

Originally Posted by vijai

Background:
So it all started in 2010 when I was in class 10 and Android was just picking up pace. My brother bought the then most sort after flagship phone Samsung Galaxy S(1) yet a terrible experience in terms of UI/smoothness. Only solution to this absurdly unusable phone was to install custom OS. To install a custom OS, you need something called root. That is where my young brain wanted to know how it was all done. Spent my next one year learning to build custom Android OS (also called Custom Rom), how android generally works and learned to write my own apps.

Fast forward to 2012 October, I knew this was my stream and one day I might as well start a business. Hence started deciding on a name and came up with "Orpheusdroid". The name was coined after a Greek God of music - Orpheus and droid - a robot more in line with automation, intelligent stuffs. Quickly wanted to seal off the name and purchased the domain to reserve the name although I did not have much to do back then with the name "orpheusdroid" yet continuing to make custom roms for Galaxy S(1), Galaxy Note (1) under a different names (we were a team of 8 from different countries making rom for different phones before splitting up into multiple groups, multiple times for various reasons). To keep the domain active though, I kept on changing it into a news site, a forum etc until recently. Since 2013, I started publishing apps/freelance under Orpheusdroid brand (still unregistered).

Fast forward again to 2017 when GST was introduced, play store has put my account on hold since the account was registered as a business (under Orpheusdroid) but GSTN wasnt provided which was made mandatory. Decided it was the time and immediately registered it as a proprietorship firm (Did not want to go through hassle of yearly ROC filing, more paper work of a pvt. ltd given that I do not have plans to get it to next level yet). There it was, the company was born and was making few ten thousands of turnover a year.

Please refer to this link. I believe this case is very relevant to you. The Delhi High Court has held that mere use of a part of a registered trademark as a prefix or suffix will not amount to infringement.

The will try to come at you with the trademark being ' deceptively similar' or 'likely to cause confusion on the part of the public', but that seems quite farfetched IMO and the latter may cause you some trouble but you should come through without much trouble.

If you have anymore questions, please feel free to reach out.

Adwaith.