The ownership of a patent allows the patent holder to restrain any other party from using the patented technology/work. This is a right in rem i.e. against the world at large. An infringement of patent rights can attract (a) an expensive law suit and (b) also tarnish the reputation of the infringer.

Changzhou First International Trade, a Chinese firm recently faced the wrath of the California based patent holder Future Motion. It has been reported that the price of the ‘Surfing Electric Scooters’ sold by Changzhou First International Trade was $550 at the online shopping portal Alibaba (which itself has a fair share of controversies surrounding it for sale of counterfeits) and this price is less than that of the product being sold by Future Motion. Allowing the Chinese firm to showcase as well as sell its ‘Surfing Electric Scooters’ would lead to direct economic losses for the US patent holder.

The patent in question is related to the invention of a one wheel hover board. Unlike the usual hover board having two wheels at the ends, the invented hover board has a wheel at the center to enable a rider to maintain balance on the board. Future Motion owns the design and utility patents for this board. CFI showcased the vehicle as a ‘Surfing Electric Scooters’ at the CES tech show, in Las Vegas, USA this prompted Future Motion to initially serve a cease and desist notice to the Chinese firm. When the firm declined to comply, Future Motion filed a suit and obtained a restraining order, followed by a request to the U.S. Marshall for seizing the showcased goods.

The Chinese firm’s stand is that they invented the device first; this argument can only be supported by proper evidence

A lesson from this episode this is that before exhibiting its products an entity must conduct a thorough search of patents in the concerned jurisdiction. A failure to do the same can be detrimental to the reputation of such entity. It will be interesting to see the events unfold at the trial stage.

The role of an expert witness is of an integral nature in litigation, a slight sway in one direction can lead to an alteration in the final verdict. In such situation if the expert holds a bias it will prejudice the trial and act as a boulder to delivering justice in the matter before the court. The Canadian Supreme Court in the case of White Burgess Langille Inman v Abbott and Halliburton Company Limited laid down the threshold to examine the admissibility of the expert’s evidence.

The shareholders of Abbott and Halliburton Company filed a suit for professional negligence against their auditors. The shareholders reached this conclusion after appointing a different auditing firm to review their financial statements. The auditors (Appellant) sought a motion for summary judgment against the shareholders (Respondent) to dismiss their claims following which the shareholders retained one Ms. Susan Macmillan, from the auditing firm on whose information they were relying upon, to submit an affidavit setting out her findings, conclusions and reasons as to why, in her opinion, the Appellant had failed to perform its duties. The Appellant sought to dismiss the Affidavit from being accepted on the grounds that it was biased.

The motions judge agreed with the Appellant’s claim but this decision was overturned by the Court of Appeal and on further appeal; the Supreme Court of Canada accepted the expert’s affidavit. The Supreme Court reasoned that it was of utmost importance to ensure that the expert leading the evidence is impartial and independent failure to confirm the same could lead to ‘egregious miscarriage of justice’. It further held that the admissibility of the expert evidence should be in two stages namely:

1. Threshold requirement of admissibility: This stage heavily relies on the following criteria:

—Relevance: whether the expert’s evidence is relevant to the case.

—Necessity: Whether the requirement of an expert’s evidence is necessary to the case at hand;

—Absence of any exclusionary rule: There should be no rule excluding in particular the expert’s opinion; and

—Properly Qualified expert: The expert should be holding the qualifications to provide an opinion in the matter.

2. Cost Benefit Analysis: The Court assesses in stage II whether the evidence provided by the expert is integral and beneficial to the ongoing trial, even if such evidence is likely to cause “potential harm to the trail process that may flow from admission.”

In the matter at hand the Court opined that the expert’s evidence was accepted since it met all the requisites for admissibility. Though in this case the expert concerned was an auditor, the ruling will also have an implication for experts in the patent trials. Patent trials heavily rely upon the information provided by the experts since; the judiciary cannot be expected to be aware of the intricate details concerning the invention.

The role of a judiciary is to ensure maintain checks and balances in the legislations being formed by the legislature but the judiciary cannot legislate. The UK High Court is facing a testing situation where the tobacco companies in U.K. have approached it against a recent U.K legislation which requires cigarettes to be sold only in plain packaging from May 2016.

A similar situation had arisen in Australia last year where plain packaging was made compulsory; the tobacco companies lost their battle there. The primary IP concern for the tobacco companies is that, the plain packaging will prohibit the use of their logo, design or any other copyrighted work on the cigarette packs. All the cigarettes will be sold in the same packaging (containing pictures of effects of smoking) with only the name of the brand being written in a standard format.

This implies that a consumer will no longer be able to distinguish the cigarette of one brand from the other based on their trade dress, which increases the likelihood of confusion among the consumers while purchasing cigarettes from a retail outlet. Trademark law discourages any likelihood of confusion among cigarette brands but in this case the government authorities are citing public interest in the imposition of such law therefore, trademark law might not be applicable. It will be interesting to see how the UK courts decide this matter.

An Asian American band ‘The Slants’ has been garnering a lot of attention globally for the name adopted by them. The band sought to register the name ‘Slants’ as a trademark, this was rejected by the Trademark office on the grounds that the use of the word ‘Slants’ for Asian-Americans was disparaging and the Lanham Act does not allow registration of disparaging marks. The US Court of Appeals for the Federal Circuit overturned the decision of the USPTO and also struck down the section that bars the registration of ‘disparaging’ marks.

The Appellate Court was of the belief that the band had been named ‘The Slants’ with the intention of expressing the racial and cultural divide that still exists in the country and the same could not be barred by law. It was considered as a form of freedom of speech and expression. Through this case, Freedom of Speech triumphed over the law of non-registration of disparaging trademarks in the United States.

A copyright lawsuit is no laughing matter particularly when allegations are levelled against a popular sitcom such as ‘The Big Bang Theory’ (TBBT). The merchandise of the sitcom relies on the popular quotes, phrases from the series. A popular song from the show is ‘Soft kitty, warm kitty’, this children’s nursery rhyme has gained immense popularity through the show and is often used in the show’s merchandised goods.

Ms. Ellen Newlin Chase and Margaret Chase Perry have stated in their lawsuit that this song was written by their mother, Ms. Edith Newlin, a nursery school teacher who died in 2004. It has been alleged that the makers of TBBT in 2007, obtained the permission to use the nursery rhyme from Willis Music Company that had published the song in a book ‘Songs for the nursery school’, instead of obtaining the license from the heirs of Ms. Newlin owning the copyright to the song. There has been no response given by the makers of the show but if these allegations are true it could mean that the show will have to do away with the popular song/lullaby as well as, pay damages for the unauthorized use of the same.

This lawsuit is a reminder that a thorough search must be conducted prior to using a work commercially because in the event such work belongs to another entity (still owning the rights) it can not only result in an economic loss but to some extent a loss of reputation.

American painter and photographer Richard Prince is in another copyright muddle. Photographer Donald Graham has claimed that Prince made unauthorized use of his photographs and sold them at $ 90,000. Richard Prince is often referred to as a re-photographer (takes photograph of an existing photograph) he tends to use existing photographs and makes certain changes (tweaks the picture slightly) to communicate a different meaning. The previous case involving him, Cairou v Prince, was a landmark judgment where the principles of determining a work being transformative enough to qualify for fair use was discussed. In that case Richard Prince had used images of individuals from the Rastafarian community and had altered them by superimposing ‘Sunglasses’, ‘Guitar’ etc. the superimposition was done in color over the original black and white images. The end result i.e. Prince’s work, communicated a different message from the original somber photographs and the Court held that Prince’s work would qualify as a transformative use and therefore, could not be considered as an act of infringement. However, this time around the courts may not hold the same opinion the reason being, the image used by Prince was taken from Mr. Graham’s Instagram account incidentally of a Rastafaraian smoking. It is also his claim that there has been no substantive change in the original picture apart from resizing (the image was printed and put out on a large canvass) and cropping.

smoking. It is also his claim that there has been no substantive change in the original picture apart from resizing (the image was printed and put out on a large canvass) and cropping.

One monkey has taken the copyright world by storm! Introducing Naruto, a six year old Macaque, who ingeniously took a selfie on a tourist's camera the photograph, went viral. There was a discussion on the copyright ownership in the photograph. Copyright Laws very clearly state that in case of photographs the copyright vests with the photographer but in this case the photographer is a monkey. Things took a turn when People for the Ethical Treatment for Animals (PETA) filed a suit in a court in San Francisco stating that the proceeds from the selfie should be diverted to Naruto. The U.S. Copyright law strictly states that it does not register the works which have been created by nature, animals, or plants. PETA not only sued David Slater for making money out of the photograph but also his publishers, in their application they demanded an injunction on the publication and circulation of the picture. PETA in its lawsuit contended that Naruto's actions were 'purposeful and voluntary' which is not very convincing, considering that Naruto is a monkey who obviously doesn't know the meaning of a photograph, let alone copyright. Judge William Orrick, presiding over the matter was not very impressed with PETA’s arguments and held that the organization was stretching the matter too far. He further stated that had the legislative intent been to include animals as potential owners of copyright, it would have been clearly specified in the legislation. He further stated that he would dismiss the suit in the upcoming hearing.

Interestingly, the photographer whose camera was used too, does not have the copyright. This means that copyright ownership of the picture vests with no one; in this scenario should the picture be considered to be within the public domain? At present this question remains unanswered.

Our new dynamic Controller General Mr. O.P. Gupta is on the right track by issuing another progressive order that has introduced a change in the numbering systems for the Patent applications in India. The new numbering format for patent Applications in India is- YYYYJTNNNNNN

Where:

Y = Year of filing of Patent Application

J = Jurisdiction in which the Application was filed

Each Jurisdiction has been assigned a number which are as follows:

Delhi = 1, Mumbai = 2, Kolkata = 3 and Chennai = 4

T = Type of Application, each application type has been assigned a number:

For e.g.: Ordinary patent = 1, ordinary divisional = 2, ordinary patent of addition =3 etc.

N = the fixed length common continuous running serial number applicable for all the Patent Offices in India.

Illustration: If an ordinary patent of addition is to be filed in the Delhi jurisdiction in the year 2016 the Application would be numbered as -201613___ (Insert 6 digit number given by the patent office).

In the earlier format for numbering a patent application there were eight independent series of application numbers and that was quite confusing for users and the Patent Office –Patent Number/Jurisdiction/Year of filing the Patent Application. It is evident that the new format makes it easier to conduct a patent search also; it provides information about the type of Patent Application. The previous format provided no such information it only demarcated a PCT application from a domestic one. This new format makes it convenient for Applicants to search for relevant patent applications.

Similarly, a new numbering format for Request for examination of patent has been implemented R/XYYYYJNNNNNN.

Where:

R = Regular request for Examination and X = express request for examination and the other alphabets hold the same connotation as specified for Patent Application format.

This numbering format makes it easier for searches and tracking the status of the request for examination. It can be said that this order of the Patent Controller seeks to implement an easier and convenient method for searching Patent Applications and Request for Examination.

This order can be accessed at the following link:

http://www.ipindia.nic.in/OfficeCircular/ officeOrder_31December2015.pdf

Ice creams are commonly used to cheer oneself or make up with a friend however, the name of an ice cream brand is also at the heart of a dispute between two parties. “Kwality” is a loved ice-cream brand in India but it was in the news for an IP dispute between the founding family of Kwality and an erstwhile business partner.

In 1982 an assignment deed was executed between the Founder of Kwality Walls, Mr. Iqbal Ghai and Mr. PL Lamba (Defendant) whereby, the latter was assigned the exclusive right and benefit to use the mark Kwality (trademark) along with the artistic work/logo (Copyright) in the Northern part of the country. Similarly, another assignment agreement was executed in 1991 where similar rights were given to the Defendant for use in Kolkata and Chennai respectively.

The Plaintiff , Mr. Ravi Ghai (son of Mr. Iqbal Ghai), in 2015 came across a news report where it was stated that the Defendant had assigned the mark ‘Kwality’ along with the artistic work to a third party for use in relation to milk products and non-alcoholic beverages. The Plaintiff stated that such an act of the Defendant was beyond the scope of the Assignment agreements executed in 1982 and 1991; it was stated that the agreements never gave the Defendant the right to assign the mark to any third party, it merely allowed the Defendant alone to use the mark and artistic work in relation to ice cream, ice cream on stick and ice cream powder. The Defendant failed to show to the Court the relevant paragraphs where it had been granted the right to further assign the mark and artistic work/logo.

On perusing the above stated facts the Delhi High Court granted a temporary injunction in favor of the Plaintiff restraining the Defendant from acting upon the assignment deed entered into with the third party. The matter is listed for framing of issues on 19th February, 2015.

What’s in a name? This quote of Shakespeare if put before an IP lawyer, will entail a long response. The name of a person however common, if it has attained the status of a brand it will no longer be open for another individual bearing a similar name to register its mark.

One would normally assume that a celebrity is a famous figure hence any product/site launched under a celebrity’s name would be available for use without any concern however, trademark laws do not always permit the same. Last year, popular singer Rihanna tried to register her middle name ‘Robyn’ as a trademark but she met resistance from DC Comics that owns the trademark for the character ‘Robin’ in the Batman series. Similarly this time Indian actor Salman Khan has stirred a controversy by proposing to launch a website ‘khanmarket’ as an online shopping portal. This proposal of his did not go down well with the Confederation of All India Traders who have stated that the name ‘Khan Market’ immediately invokes the identity of the popular Khan Market in Delhi. The Khan Market in Delhi is associated with luxury products and has been in place for close to six decades making it a popular shopping place in the city.

The CAIT in its letter to the actor has stated that the launch of his shopping portal with the name ‘khanmarket’ would create confusion in the minds of the consumers. It is important to note that the CAIT has raised a valid concern, apart from the fact that Khan market invokes the identity of the Delhi shopping place; also, the surname ‘khan’ in itself is a common surname and if the actor proceeds with such domain name registration it would create a monopoly over the commonly used surname which is not in the interest of the public at large. It remains to be seen how the actor responds to this petition of CAIT.