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Apple Inc. Versus Rohit Singh And Another

2016 (4) TMI 432 - DELHI HIGH COURT

Infringement of trademark - ex-parte ad-interim injunction - Held that:- At on the existing material before the learned Single Judge case was not made out to grant an ex-parte ad-interim injunction because an ex-parte ad-interim injunction in a matter concerning trademark violation should ensue only if a very strong prima-facie case is made out with respect to a trade mark which is inherently distinctive. A serious issue arises for consideration in the instant case concerning whether Split View .....

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Vacating the ex-parte ad-interim injunction dated March 01, 2016, we dispose of the appeal directing Apple to file its written statements of defence within two weeks and along therewith file all documents it seek to rely upon. The respondents are granted three weeks' time to file a replication and file such further documents as respondents desire. The next date of hearing before the learned Single Judge is May 09, 2016 and we request the learned Single Judge to hear arguments in the appli .....

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ge, Advs. JUDGMENT Pradeep Nandrajog, J. 1. Rohit Singh is a software developer and works as a consultant with Vyooh Low Level Computing LLP. The two joined in an action, as plaintiffs, claiming relief of damages as also an injunction against Apple Inc from using the mark 'SplitView' or a deceptively similar variant whereof in relation to its software products. 2. The action is one of passing of. 3. As per Rohit Singh, he developed three proprietary software products targeted at the end .....

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he year 2010 he gave an exclusive license of his software products to Yyooh Low Level Computing LLP. As per him, the motivation to develop a software on which two or more applications on the computer screen could be simultaneously opened was, he observing in the year 2005 that there was a consumer need to have two or more applications simultaneously opened. Consumers were using two monitors to overcome the problem which was cumbersome and costly. Having developed the software in the year 2005, h .....

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aimed reputation and goodwill in the product, disclosing sales of US$ 5.9 million over the last decade; with over 14000 paying customers. 4. He pleaded that Apple Inc launched an update to their operating software - Mac OS X El Capitan and iOS 9 in December, 2015 for computer and mobile devices respectively, which allowed the monitor and/or screen on the iPad to be split into two halves to enable working on two applications, and the feature had been named Split View by Apple Inc. He pleaded that .....

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it to notice of his right in the trademark SplitView to which he received a response from January 14, 2016 in which Apple accepted his right in the trademark SplitView but claimed using it in a descriptive sense; but simultaneously questioning whether SplitView could at all be a trademark; alleging it being descriptive. 5. As per Rohit Singh, SplitView is capable of being a trademark because the word Split and the word View are not words that would ordinarily be used in conjunction with each oth .....

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mons in the suit returnable for May 09, 2016, invoking power under Order 39 Rule 1 and 2 of the Code of Civil Procedure, the learned Single Judge granted an ex-parte ad-interim injunction in favour of Rohit and Vyooh Low Level Computing LLP and against Apple Inc restraining Apple Inc from in any manner using the trademark SplitView for any of the programmes and features within a programme or in any hardware or software. 7. Prima-facie finding in favuting LLP have been returned on the reasoning t .....

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Single Judge has reasoned that the trademark SplitView was prima-facie a unique combination of two English words Split and View. The learned Single Judge has reasoned that names such as Split Screen, Split Monitor, Multi View, Dual View, Multi Screen and Dual Screen etc. were available to highlight the feature of a software programme which could enable a user to simultaneously work on multiple windows on the users' computer screen. Learned Single Judge has reasoned that other software progra .....

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st an ex-parte ad-interim order the area encompassed in the appeal is small : Whether on the material placed before the learned Single Judge case was made out to grant an ex-parte ad-interim injunction. Apple has enlarged the area by urging suppression of material facts with reference to documents of Apple, through its predecessor NeXT Inc. being a prior user of the word SplitView since 1993 albeit as a feature of its product and with the plea that the same is good evidence that Split View is de .....

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s one of suppressio veri and suggestio falsi. It is also the case of Apple that though worded as a prohibitary injunction its acts as a mandatory injunction for the reason Apple would have to change its operating software. 9. We preface our discussion by highlighting that the area of the appeal sought to be extended required proper pleadings and thus one would be handicapped in deciding said factual matrix and that is the reason why remedy under Order 39 Rule 4 of the Code of Civil Procedure oug .....

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ion on March 28, 2016, said aspect was pointed out by us to the learned senior counsel for Apple, who replied that so ex-facie clear is the suppression and false pleadings that the appellant risks urging said aspect, sans pleadings before the learned Single Judge. 10. Thus, with respect to said aspect of the matter, the focus of our consideration would be : Whether ex-facie suppression or false pleadings emerge. For if the point becomes arguable, Apple has to be told to approach the learned Sing .....

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mory; processes its software and hardware. For its Mac and iPad products Apple offers the OS X El Capitan and iOS operating systems respectively. The OS X El Capitan Operating System, which was shown live in Court, contains many in-built features which as per Apple are functionalities available to users to perform various functions. For instance, a user can access one's e-mail using the 'Mail' feature. The 'Photos' features lets the user manage its photograph. The 'Notes& .....

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integrated with the operating system and are not sold separately by Apple to any user. A user wanting to avail all or any one of the features visits Apple's 'App Store' and downloads the OS X El Capitan Operating Systems and the package as a whole has to be purchased. The individual integrated features i.e. 'Notes' 'Mails' 'Photos' 'Safari' and 'Split View' cannot be purchased individually. As a matter of fact the purchaser cannot download thes .....

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y bought as a standalone product. By way of example, the software in Microsoft Office which a MacBook user can download from the internet or buy from the physical market in CD-RoMs and download the software on the laptop. It is in this background that Apple argues that there exists a distinction between a 'product' and a 'feature'. According to Apple, OS X El Capitan is the product which is bought and sold in the virtual market place of which Split View is a feature; to highlight .....

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ed by respondents is one for passing off, the distinction between a separately marketable product bearing a trademark as against a feature having no standalone status because of it being integrated within the operating system has to be kept in mind and if so kept, it would not be a case of passing off. Apple highlights that the trademark for its operating system software is OS X El Capitan and iOS and not 'Split View'. As per Apple the mode and manner of sale of products is also relevant .....

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on of Apple is that the term 'Split View' was never conceptualized by the respondents and has been used by companies around the world for many years before respondents first allegedly used the phrase. In this regard, Apple cited the following:- i. Use by its predecessor-in-use, NeXT Computer, Inc. which used NXSplit View and NSSplitView in the 1990s in relation to a multi-window functionality. ii. Patent applications by entities such as Xerox Corporation (US20050086259A1), International .....

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descriptive of the multi-window functionality provided by companies around the world for several decades and a consumer would never rely on a descriptive phrase to distinguish the product of the respondents from those of others. As per Apple it has not used the symbols 'TM' nor applied for trademark registration for the expression Split View in any country because it can never be claimed as a trademark and as per Apple it does not claim trademark rights over the expression. Apple highlig .....

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of a trademark registration. Apple contrasts the names of features such as 'Split View', 'Maps', 'Photos', 'Mail', 'Calendar' and 'Clock' etc. to highlight that being descriptive of the functionality provided by these features, being not capable of a trademark registration, Apple has not applied for a trademark registration for them. Thus, Apple states that for such features which are descriptive, since no one can appropriate the word, it has not .....

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ademark of the package. It is akin to a combo offer. To wit : A chicken burger + A can of coke + French Fries, under the banner 'Happy Meal'. The consumer buys Happy Meal and understands that he would get three things. The consumer cannot purchase only one of the three. 17. Put into distinct compartments the case of Apple hinges on four contentions: A. That SplitView/Split View is a descriptive term and cannot assume trademark significance. On this basis, Apple argues that Rohit Singh ca .....

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ch would be very relevant for purposes of grant of injunction. A sub-argument concerning this contention was that Rohit Singh was guilty of suppressing that Apple was a prior user (through its predecessor) of the word SplitView and that in the trade others were also using the word SplitView because it was an essential feature of the product. C. If there are various methods to describe an essential feature and in particular concerning the functionality of a product, any one or more may be used an .....

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ct, individually none is being sold and respondents' product is sold individually and this distinction would be akin to a situation where Apple has added matters. 18. We recant the essential principles that govern an evaluation as to what constitutes a descriptive use of a word versus a trademark use. 19. In the decision reported as 2012 (49) PTC 54 Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd., this Court had the occasion to evaluate the principles that establish descriptive use of a wor .....

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ted as 57 (1995) DLT 49 Automatic Electric vs. R. K. Dhawan, in the following words:- "The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression. User of the word "DIMMER" by others cannot be a defense available to the defendant, if it could be shown that the same is being used in violation of the statutory right of the plainti .....

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ple has claimed trademark rights in its response to the respondents' legal notice or in the instant appeal, but whether on facts, and on a prima-facie evaluation of the documents on record, Apple, from the perspective of the consuming public has in fact used Split View in a trademark sense. The law being succinctly stated in the decision reported as (2002) 3 SCC 65 Laxmikant V.Patel vs. Chetanbhai Shah as under:- "13. In an action for passing-off it is usual, rather essential, to seek a .....

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lement of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff is establishing probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly ir .....

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wo words) is an example of descriptive use, that cannot conflict with the respondents' use. Thus, Apple has used the descriptiveness argument, both to challenge the respondents' entitlement over SplitView as a trademark, as also in the form of a defence to justify use by it of Split View. 24. In support of the first argument, Apple has relied on a number of documents filed from pages 288 onwards to demonstrate third party use of Split View in a descriptive sense, thus arguing that no exc .....

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SplitView Object and SplitView Class are apparent on the face of the document, but the respondent response is that a document should not be read only skin deep and a little penetration would reveal that Microsoft provides a coding language for developers to build their own applications. SplitView is a component in the coding language to sub-divide a window, in one application only. Consumers will never be aware or be able to use this coding language. That it is not a product or a feature in a p .....

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or 'a split view', thereby making it apparent that the usage is descriptive. That it pertains to a functionality of Microsoft Word and the learned counsel for the respondents demonstrated the manner in which it shows up in the actual product itself. Counsel demonstrated that when one opens Microsoft Word, the toolbar at the top has a tab which says 'Split' and 'Split Window' under it. Counsel therefore concluded that it is apparent that this is not meant for a split scree .....

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uses the terminology Apache Open Office - Framework/SplitView. Apple relied on this document to urge that Apache is using the mark SplitView. The response was the same as was for the second document at pages 290-291 i.e. it is used for coding to display multiple views of the same document and not for multiple windows. It is not a word used on a product which will reach consumers. 31. The fifth is a document at page 299. It uses the terminology LG Android Split View. We find that the product feat .....

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It allows users to view multiple PDF documents on the same monitor. The response was that it uses Split View as a feature to open PDF documents and is not a comparable product and further that distinction between functionality and feature must be kept in mind. 33. The seventh is a document at pages 304-306. It uses the terminology Google Play - Split View Multi Screen Tablet. Learned counsel for the appellant referred to the same as one of the two examples, of Google using Split View. But conce .....

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and as per learned Counsel for the respondents, as a descriptive term for the application Skipper and is an example of an instance where an application (app) launched in 2010, and not very successful till date, used 'Split View' in its name/title to help the application (app) come up in search results. This phenomenon is known as app store optimisation/ad words optimization. 35. The ninth is a document at pages 309-310. It uses the terminology Football Manager. This is a game on a footb .....

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thod of showing multiple languages in mobile search results interface in India. This, according to learned counsel for Apple is the second instance of Google using Split View. Learned counsel for the respondents replied that it is evident from reading the article that only the author of the article has called the tabbed interface as Split View. The article quotes a twitter user, Abhijeet Mukherjee to say that 'Google is showing search results in English and a native language in a tabbed inte .....

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a patent application. 38. We may therefore summarise as to what emerges from the documents. A serious debate requiring proper pleadings concerning :- (i) Instances of third party use relied upon by Apple to constitute valid examples of descriptiveness of the Split View mark have to be seen in the context of whether a product similar to that of Apple and the respondents has been offered by such third parties under the said mark to customers with further pleadings on the subject whether 4 instance .....

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lone product. (iii) What is the effect of the document at serial No.9, which is an app/product called Football Manager, though called SplitView, but allows the user to view the game/application in multiple sections and therefore whether its field of operation is so distinct that there cannot be any overlap between the product of the respondents and the said product. The backdrop being that the software does not permit simultaneous viewing of two applications. (iv) Documents at serial No.3, 5 and .....

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elp the application come up in search results. 39. The sum and substance of respondent's contention put simply, is that the difference between the instances cited and Apple's case is that if Split View was understood in the context of Apple to have been used descriptively, then the question would be : what is the name/mark by which Apple's product/feature is to be identified by the consumers? 40. No product or application or feature can be nameless. If split view describes the produc .....

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s case (supra) that are relevant for the present case are: (i) The conclusion that the mark 'Sugar Free' has acquired a considerable degree of distinctiveness in relation to the appellant's product is based on mere assumption and is without any reasonable basis. (ii) The words 'Sugar Free' are always used along with the trademark 'AMUL' by the respondent within the same visual matrix and there is no possibility of confusion. 42. In other words, the first test to be ap .....

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-facie to be considered unique, although the words individually may not be so. There is prima-facie considerable strength in the respondent's argument that the respondent's product, for which the mark is being used for, is a split screen or a split monitor functionality - the view is complete, it is not being split, it is being reduced in size and there are multiple 'views' of applications (apps) or windows being made simultaneously available. This is for their personal edition. .....

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ication (app) review sites all go towards prima facie demonstrating the distinctiveness and reputation of the mark SplitView in the respondents' favour. 45. But on the other hand we find considerable material to establish to the contrary and we cite a few instances only. The first is a United States Patent Application published on December 19, 1995 pertaining to a product concerning a Particle Analysis Method. Explaining the background of the invention the patent claim discloses : 'The o .....

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Explaining the summary of the invention the patent claim discloses : 'The views are : split, composite, split-merge and composite-merge. .... Figure 6 illustrates a collision handler in a Split View in accordance with the present invention. ..... Buttons below the upper pain control the views that the user may utilize to resolve the conflicts. Split View button 330 will display a side-by-side view of the different part versions.' Of the many claims, claim No.2 is described, amongst other .....

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Excel-type spreadsheet and using scroll bars to navigate individual splits'. The fourth is a United States Patent Application published on January 26, 2006 pertaining to a product described as : 'Window Split System and Method'. Explaining the background of the invention the patent claim discloses 'Additionally, one application programme can perform different functions in each of the windows displayed on the screen. For example, a split view of an image'. 46. The four documen .....

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ow etc. to describe the same concept of simultaneously viewing akin to two windows on the same screen, albeit within the same application or simultaneously using two applications. It is trite that a number of alternative ways of describing a product is no answer to the criticism of the mark being adopted as a trademark and that different words and expressions can be descriptive of a product and it is not answer that since other words and expressions exist, I am entitled to appropriate the one wh .....

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in Cadila the Division Bench found that the trademark of the respondent therein was in fact 'Amul' and Sugar Free was used along with the word Dessert, it is not the case here since the Split View feature is claimed to be used by Apple as a descriptor with the product having no name. In other words, what Apple appears to be suggesting is that descriptive use by it merges in the name of the feature itself so the consumer is expected to use only one name to refer to it and to understand t .....

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48. In this regard the respondents have given examples of third party applications with the same functionality which do not in fact call themselves Split View or use split view in a descriptive sense. This list of applications (apps) such as Divy, AquaSnap, GridMove, WindowSpace, MaxTo, Gridy, Aero Shake was recorded with approval in paragraph 4 of the impugned order passed by the Learned Single Judge. These applications pertain to products which are identical or similar to that of the responde .....

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ave referred to a split view feature as a name demonstrating the distinction between the descriptive phrase 'Split Screen' functionality/mode/feature i.e. the words Split View perceived as a trademark for such a feature and perhaps the possibility of some ordinary consumers, with imperfect recollection, associating the words Split View as a trademark for the split screen feature and some associating the words Split Screen as descriptive of an essential feature of a system where visually .....

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rket and assuming Split View has used the word to name its product and not describe the product the effect of added matters needs a proper consideration. 52. In respect to the second argument (which would also subsume the charge of suppression), we summarise the respondents' submissions to demonstrate that Apple has in fact not used Split View in a descriptive manner. The arguments were:- (i) Apple uses Split View as the 'name' for the product feature - it appears as a stand-alone he .....

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d Spotlight is in fact a registered trademark under No.1896699 in Class 9 as well as the subject of a pending application in the same class under No.IRD 2674730 in India. Similarly, Swift (used in respect of a programming language), Safari (used for a web browser) and Metal (used for a graphics technology) are all bundled with El Capitan and are a part of El Capitan and yet individual trademark rights have been claimed by Apple in respect of each of them. (iv) For an ordinary consumer, there is .....

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rom the perspective of consumers is no different. It is in fact a common practice in the technology space to do so. Thus, Apple has claimed trademark rights over AirPrint, CarPlay, Cinema Tools, DVD@CCESS, DVD Studio Pro, FileVault, Final Cut, LaserWriter, LocalTalk, NetInfo, Photo Booth, QuickDraw, App Store and to an ordinary consumer Split View is no different from this body of trademarks. There is no indication or suggestion in any of the documents of Apple that Split View is being used in a .....

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l part of the programme is available standalone, coupled with the argument noted in paragraph 15 above, that the consumer understands when Apple uses the words 'Maps', 'Photos', 'Calendar' and 'Clock' it is for features and not products and therefore 'Split View' is used by Apple as a feature i.e. that the consumer recognizes that descriptive words are used by Apple to describe the essential functionality of its product and not the product and non-descript .....

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unction with a monitor splitting or screen splitting functionality offered by a software product/application (app) and was in fact called NXSplitView/NSSplitView in certain software developer toolkits, to describe a certain functionality that was to be used by app developers. The documents at appeal paper book pages 94 and 95 show that NXSplitView was clearly used in a kit for developers and not a trademark or a descriptive use of a product that was available to consumers. In respect of this doc .....

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e further indicates that there was no consumer recognition of NXSplitView or SplitView as a trademark and indeed the same was not used as a trademark or a descriptive name for a product for Apple to be entitled to any benefit in law of prior adoption. In any event, the NXSplitView/NSSPlitView manuals of 1993 and the 2006 book for software developers which seems to cross reference these developer tools do not discharge the threshold of what constitutes prior use in trademark law. Reference may be .....

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s Split View, is in fact of 2006 vintage. The same is clearly not correct as rightly pointed out by learned counsel for the respondents for the reason the right hand column is ex-facie in the nature of sponsored links that appear on the day of the search. Undisputedly OS X El Capitan was launched only in July 2015. 57. Learned counsel for Apple had drawn the attention of this Court to a notice sent by the respondents to Apple, to urge that respondents own best case would be the use of the trade .....

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ood earlier) and the said document reflects what the respondent's website looked like in December, 2005. At page 167 is the who is record for the respondents' domain www.splitview.com which shows that it was created on August 23, 2005. Page 194 is the first order notification of the respondents' product, under the mark SplitView, dated September 05, 2005. These three documents as also the others mentioned above were admittedly part of the suit record and the learned Single Judge has .....

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s use of SplitView for their software product thus clearly dates back to the year 2005. 60. However, nothing turns on this. If the respondents are found to be legitimate proprietors of SplitView as a trademark then whether the same was adopted in the year 2005 or 2007 is irrelevant in the facts of the present case. 61. In a nut shell, our finding would be that on the existing material before the learned Single Judge case was not made out to grant an ex-parte ad-interim injunction because an ex-p .....

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