The World Intellectual Property Organization (WIPO) introduced Third Party Observations Service (TPOS) (under section 801(a), 804(b)) on April 13, 2017. This service allows third parties to make observations through the ePCT system (i.e., by accessing ePCT designated offices (DO) function) by citing prior art(s) which they believe to be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step.

Before the TPOS, the only people involved in the international phase of a PCT application were the applicant and the Offices (i.e., receiving office, International Bureau and International Searching and Preliminary Examining Authorities) for conducting various aspects of processing the application before entering the national phase. Third parties were getting some information during the processing of the application in the International Phase, but these parties had no opportunity to question the novelty and the inventive step of the PCT applications in the International Phase. The role of Third parties came into picture only after the application entered the National Phase in the respective countries. This changed on April 13, 2017 when the TPOS was introduced.

As per sections 801(b) (iii) and 801(b) (iv), a third party can only submit a single observation for an international application, and once submitted, it cannot be retracted or modified. There is also an upper limit of ten third party observations that can be filed to an international application, at the international phase.

It should be noted that only the observations and not the uploaded documents are made publicly available. Uploaded documents are only made available to the applicant, the competent International Authorities and designated Offices. If the observation is rejected by the International Bureau, the third party will be notified and provided with a reason. An Observation made by a third party shall:

- be submitted to the International Bureau through the third party observation system as provided in Section 801;

- be submitted between the date of international publication and 28 months from the priority date of the international application indicated;

- be in the language of publication, with the exception that copies of submitted prior art documents may be in any language;

- relate to the international application indicated;

- refer to prior art;

- be free of viruses or other forms of malicious logic;

- be free of comments or other matter not relevant to the question of novelty or inventive step of the invention claimed in the international application; and

- be free of comments or other matter which are an abuse of the third party observation system.

Any purported observation by a third party which, in the view of the International Bureau, appears not to be in compliance with aforementioned points, shall not be treated as a third party observation. The International Bureau shall inform the third party accordingly, unless the purported observation appears to be a clear attempt at abuse of the system. The purported observation shall not be open to public inspection and shall not be communicated to the applicant, by any International Authority or any designated Office.

The applicant will be notified about the first published observation, and all subsequent observations will be promptly notified after the expiration of 28 months from the priority date. The applicant may comment on the third party observations until the expiration of 30 months from the priority date. These comments must be submitted through ePCT or by sending a letter to the International Bureau. The comments of the applicant are published for public inspection.

Once received, the observations will be transmitted to a competent International Searching Authority, and/or International Preliminary Examining Authority involved in the processing of the application during the international phase. If the International Bureau has not yet received the international search report, supplementary international search report or international preliminary report on patentability respectively. To the extent that the observations are received by those Authorities in time to be taken into account in drawing up their respective reports, any prior art referred in the observations should be considered, provided that either a copy of the prior art is included, or it is otherwise immediately available to the examiner. The observations will also be transmitted to the designated Offices promptly after the expiration of 30 months from the priority date. The designated Offices are, however, not obliged to take them into account during national processing.

There are certain situations in which you cannot or should not make a third party observation:

- the international application has not yet been published;

- the time limit has expired (28 months from the priority date) – it is advisable to make any observations before the last day of the period so that there is the possibility of making corrections if your observation is initially found unacceptable for any reason;

- the international application has been withdrawn or is no longer being treated as an international application;

- you have already submitted an observation on this international application;

- a total of 10 observations have already been submitted for this international application;

- you are the applicant or if you represent the applicant. However, an equivalent function is provided as an “action” in ePCT called “observations on close prior art” where you must first sign in to the ePCT system. This function is available at any time up to 30 months from the date of priority, including before international publication; and

- if your account has “eOwner”, “eEditor” or “eViewer” rights for the international application, you will receive an error message warning you to use the above-mentioned “action” instead.

There are certain advantages related to third party observations: they are applicable worldwide, i.e., the designated offices can refer to the observations made on any international application. Submission of third party observations and the submission of comments by the applicant are free of cost.

Hungary based company M/s. Hell Energy Magyarorszag Kft. (Hell) is engaged in the manufacture and sale of non-alcoholic beverages and energy drinks. Hell is the registered proprietor of the trademark “HELL” which was adopted in 2006 for ‘non-alcoholic beverages and energy drinks’ in countries like Denmark, Estonia, Finland, Great Britain, Georgia, Germany, Ireland, Lithuania, Sweden, Serbia, Turkey and Uzbekistan. The mark ‘HELL’ is registered as a trademark in India in Class 32 since 2017.

Source – Judgement

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

Hell was aggrieved when it found out that one Shri Brahm Shakti Prince Beverages Pvt Ltd., was using the marks ‘HELLxxx’ and ‘HALL ENERGY DRINKS’ for identical products.

Consequently, Hell filed a suit in the Delhi High Court for trademark infringement. In the said suit, the Court had granted an ex parte ad interim order of injunction, in favour of Hell and also appointed Two Local Commissioners who seized large amounts of infringing products from the premises of Shri Brahm Shakti Prince Beverages Pvt Ltd.

The parties had, thereafter, settled their disputes under the aegis of the Delhi High Court Mediation and Conciliation Centre and had entered into a settlement in September, 2021 which clearly recorded that the Defendants had acknowledged Hell’s rights in the marks ‘HELL’, ‘HELL ENERGY’ and variants thereof. It was also confirmed and undertaken by Shri Brahm Shakti Prince Beverages Pvt Ltd. that they would not manufacture, sell or advertise products under the impugned marks ‘HELLxxx’ as well as ‘HELL ENERGY DRINK’ and that in any case of any violation of the settlement agreement a penalty of INR 20 Lakhs would be paid to Hell. On the basis of the said settlement agreement, the Court decreed the suit in favour of Hell.

However, Hell found out Shri Brahm Shakti Prince Beverages Pvt Ltd. violating of the terms of settlement pursuant to the launch of another product under the mark “HILLxxx”. Hell approached the Delhi High Court again and filed a Contempt Petition.

Source – Judgement

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only

Hence, the Court granted an ex parte injunction in favour of Hell and appointed a Local Commissioner to visit the premises of Shri Brahm Shakti Prince Beverages Pvt Ltd and seize the infringing goods. Thereafter, the Local Commissioner seized not only 13200 pieces and 11 rolls of Labels bearing 'HILLxxx'” but also the manufacturing machinery of the Defendant.

Against this, Shri Brahm Shakti Prince Beverages Pvt Ltd. took defence of being semi-literate and proposed to change its mark from 'HILLxxx'” to “PRINCE HILLxxx and then later to “PrinceB-Fastxxx”.

However, the Court being not convinced, permanently restrained Shri Brahm Shakti Prince Beverages Pvt Ltd. from using the mark “HILLxxx”, granted damages of INR 30 lakhs for the losses suffered by Hell. Additionally the Court held that, Shri Brahm Shakti Prince Beverages Pvt Ltd. would be liable to pay additional damages of INR 1 lakhs in case of violation of the Order.

We all have used Bluetooth Technology, and its logo is also quite well known. However, do you know the origin of the word Bluetooth, and the reason why its logo looks how its looks?

The Bluetooth technology was originally developed by Telefonaktiebolaget LM Ericsson (commonly known as Ericsson) and is presently used in many different products developed by several manufacturers.

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

The word Bluetooth and its logo and the composite mark (above) are registered trademarks of Bluetooth Special Interest Group (Bluetooth SIG). It is a Kirkland, Washington-based not-for-profit standards organization that oversees the development of Bluetooth standards and the licensing of the Bluetooth technologies and trademarks to manufacturers.

The organization does not manufacture any Bluetooth-enabled devices; instead it is responsible for licensing the Bluetooth trademarks to companies that are incorporating Bluetooth technology in their products.

The word Bluetooth traces its origin to 10th Century King of Norway and Denmark Harald “Bluetooth” Gormsson, who is believed to have lived in Denmark around 910-940 AD, credited for uniting the then warring Scandinavian tribes.

In 1996, when erstwhile major players of the industry Intel, Ericsson, and Nokia, collaborated to standardize the use of short-range radio technology enabling connectivity between mobile phones and notebooks to other devices using the short-range, low-power, and inexpensive wireless radios

Jim Kardach, the founding chairman of BLUETOOTH SIG, suggested “Bluetooth” as a temporary code name for all. Kardach quoted “King Harald Bluetooth was famous for uniting Scandinavia just as we intended to unite the PC and cellular industries with a short-range wireless link.

The Bluetooth Logo also comprises the alphabet H and B initials of Harald Bluetooth.

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

The debate regarding whether a user has the right to repair a device owned by him has been in existence for a considerable span, it originated in the USA when Massachusetts passed the Motor Vehicle Owners’ Right to Repair Act, 2012. The ones on the side that there should be a right to repair argue that Once a customer has paid for a device/ product, the manufacturer shouldn't be dictating how you use it, on the other hand, the companies including giants like Apple and Tesla have been defending themselves by claiming proprietary rights, technology rights design rights, intellectual property, and patent protections and the like, so that they can continue offering their repair services which are often at a steep price.

Placing an end to this debate, the Department of Consumer Affairs, Government of India on Thursday 14/07/2021 announced that it has set up a committee chaired by Nidhi Khare, an additional secretary, to develop a framework for 'Right to Repair. In the first meeting that happened on 13/07/2022, this committee identified the following sectors in which Right to Repair will be implemented which are farming equipment, mobile phones/ tablets, consumer durables, and automobiles/automobile equipment.

According to the 'Right to Repair' concept, customers must own a product completely after purchase. "…consumers should be able to repair and modify the product with ease and at a reasonable cost, without being captive to the whims of manufacturers for repairs"

In this article, we will try to explain how this Right to Repair would work, and what could be its implications?

What is Right to Repair?

The Right to repair as the name suggests is a law/regulation that would give a right to the consumers/users to repair a device /good that he has purchased from a Company himself/herself. It gives the user/consumer access to hardware and software tools from the respective company.

The jurisprudence behind the Right to Repair is that, the consumer can continue using a product/device that he has bought for money for its shelf life without incurring significant costs and the company shouldn’t be forcing the consumer to get it repaired only from it directly or indirectly, but not making the spares available in the market.

As per the Union Government statement this legislation is aimed to empower consumers and product buyers, developing a sustainable consumption of products and reduction of e-waste. As per the statement issued by the Centre “Tech companies should provide complete knowledge and access to manuals, schematics, and software updates and to which the software license shouldn’t limit the transparency of the product in sale. The parts and tools to service devices, including diagnostic tools, should be made available to third parties, including individuals so that the product can be repaired if there are minor glitches.”

The right to repair law will prescribe periods for which a company/manufacturer would be responsible for providing affordable options to consumers for repairing their devices.

Implications of Right to Repair in India

• Customers will be able to purchase their own set of tools to enable them to fix their devices/gadgets.

• Company will also give access to required software which the customer needs for repairing the gadget for a prescribed time

• Company will provide a clearly instructed manual that would aid users/consumers to repair the devices/gadgets.

• Users will have the choice of either repairing the gadget/device themselves or to go the Company repair center.

• Gadgets lifetime will increase.

• Repairs would be affordable.

• Reduced e-waste

• Organised refurbishing will be possible.

• Planned obsolescence of devices/ gadgets will end.

Position in other Countries

European Union adopted its Right to Repair legislation in 2019, giving access to requisite tools to customers for repairing digital products, particularly consumer appliances. The EU is planning to expand the scope of the legislation to cover other products

France has issued a reparability index/ score in 2021, a score ranging from 0 to 10/10 that is given over the ease of repair of a particular product; French law makes it mandatory for the manufacturers to display the index near the point of sale and manufacturer is also obliged to make the index available to anyone who requests it.

The index assesses 5 criteria:

1. Documentation

2. Disassembly

3. Availability of spare parts

4. Price of spare parts

5. Product-specific aspects

The reparability index needs to be self-computed by the Manufacturer by entering all the parameters in a spreadsheet provided by the French Ministry of Environment

The US has also passed its Digital Fair Repair Act in its New York state under which manufacturers are obliged to offer patented tools and remove software restrictions and let users/consumers repair the devices/ gadgets that they purchased.

How this could affect Companies?

Right to Repair is going to severely impact the internal product designs, and intellectual properties owned by the company in respect of its products. At the moment these are heavily guarded and repairs are done only at the company’s repair facility, however, now the companies will have to provide repair guides, spare repair tools, and software needed to the customer which may contain their protected IPs. The repair segment will be open for not only the customers but third party players which are already providing repair services underground but now they would be able to do this in a full-fledged manner.

This could create problems as the companies while repairing had a quality check, on the repairing activity, spares used, and the skill set of the repairer. However when this will be done by customers and third-party repairers, there are chances that the repairs are not done appropriately and the device malfunctions or gets damaged, therefore the Companies may need to amend their warranty policies. The warranty and customer policies offered right now were drafted considering repairs done at their service centres and not elsewhere.

Shubham: Sir, what is a Trademark Caution Notice?

Dr. Dewan: A trademark caution Notice is a Notice generally inserted by a trademark owner in Newspapers or magazines to inform the general public that its mark is registered and used by any other person of the mark without its authorisation will amount to infringement and will result in infringer becoming liable to civil as well as criminal action.

Shubham: Sir, who generally releases the caution Notice?

Dr. Dewan: The caution notice is generally released by the Trademark owner itself or by the attorney representing the owner. It is a good practice to get it released by the attorney because it has a greater psychological impact on the readers and many newspapers insist on the Certificate from the attorney for releasing the Caution Notice.

Shubham: Sir, the most common question Client’s ask is what is the additional benefit for publishing a Caution Notice in a high-readership paper?

Dr. Dewan: A high-readership paper reaches more readers and has been considered relevant during litigation by a Court. In recent times where readership has moved online, the significance of Caution Notices has diminished to a certain extent.

Shubham: Okay Sir, some clients also are not sure in which area should they release the Caution Notice?

Dr. Dewan: Shubham, the Client must identify from their marketing department the areas where they have sizable dealers and significant number of consumers. Also, they need to identify the areas where there have been or there are counterfeiters and counterfeiting activities. The purpose of the Caution Notice is twofold- to alert customers about counterfeit products and to warn counterfeiters that the trademark owner is aware of their activities and is likely to initiate action against them. A Caution Notice also serves as prima facie evidence of use of use of the mark and can be useful in a non-use action. Still further, issuing of a Caution Notice is like a general warning to all counterfeiters and although it warns the counterfeiters it does not give rise to a defence in favour of the counterfeiters of acquiescence and latches. Therefore, it is particularly important to publish a caution notice in the territory in which a potential infringer may reside or do business and still particularly, in a jurisdiction a potential litigation is to be filed.

Shubham: Okay, Sir what difference does it make if a client publishes Trademark Caution Notice in a newspaper versus if he is marking the product with the ® symbol?

Dr. Dewan: Shubham, marking an article with the ® symbol signifies the trademark attached to the article has been registered under the Indian Trademark law. It is like a general notification to all persons that a trademark owner’s mark is registered. It does not have the same effect as publication, although it has some subliminal marketing value in the eyes of customers. Publication generally bears a date and has evidentiary value. The owner cannot establish when the marking on the article took place.

Shubham: Sir, does the client need to publish the Caution Notice periodically?

Dr. Dewan: Publication of a Caution Notice is a one-time cost. It is a record of use of the trademark or a present and definite intention to use the mark. We recommend to Clients that publication of the Caution Notice at least once in a period of 5 years to partially satisfy the use requirement in Indian Trademarks Law.

Shubham: Sir, what would happen if a defendant pleads ignorance of the registration of a trademark?

Dr. Dewan: Shubham, a Trademark Caution Notice is like a Notice to the general public including the defendant. Once the Plaintiff (Trademark Owner) produces the Caution Notice as part of evidence, the defendant’s plea and therefore defence of ignorance will generally be discarded. A Court may actually ask the defendant to prove his ignorance which is something very difficult to you. Shubham, once a trademark is accepted, it is published in the trademarks journal and is open to Opposition by any person. A Caution Notice only reinforces the fact that the mark has gone through the publication process and was not objected to by anybody and was thereafter registered. This may even act as an estoppel to ignorance of the registration of the mark. In my opinion, a Court may be inclined to grant increased damages in favour of a trademark owner who is vigilant and has taken the efforts to inform the general public about the registration of its trademark via a Trademark Caution Notice.

Cadbury India Ltd., now known as Mondelez India Foods Pvt. Ltd. (Cadbury) is the registered proprietor of the mark "GEMS" for button chocolate covered with colourful candy shells. Cadbury also has copyright registrations in respect of a character known as ‘GEMS BOND’ which has been used Cadbury for promoting GEMS.

Source – Judgement

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

In 2005, Cadbury filed a suit in the Delhi High Court against Neeraj Food Products seeking a permanent injunction and damages for infringing its registered trademark “Gems”.

Cadbury claimed that, Neeraj Food Products had violated its trademark and copyright rights and using the mark ‘James Bond’ and ‘Jamey Bond’ with the image of chocolate buttons of similar colours as that to Cadbury on its packaging.

Source – Judgement

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

Though Neeraj Food Products had initially entered appearance, however the suit later proceeded ex-parte since no documents were filed to support its case, except a few raw invoices which dated back to 2001-2002.

The Court after comparing both the products observed that, Gems was one of the most popular and well-recognized chocolate products in India. The Court further observed that, trade dress i.e. get up, layout; colour combination of the packaging of a product’s played a significant role at the point of purchase. Thus, there was an immense likelihood of confusion, particularly considering the class of consumers that the product is targeted i.e. children.

The Court held that, Cadbury’s packaging was unique and that it was the registered proprietor of the trademark ‘Cadbury Gems’ as well as the artistic character known as ‘Gems Bond’. It was further held that, the infringing product were a complete knock-off of Gems.

Hence, the Court concluded that, not only did Neeraj Food Products infringe Cadbury’s mark, but had also constituted passing off and granted a permanent injunction in favour of Cadbury. The Court also directed Neeraj Food Products to pay an actual cost of INR 15.86 lakh worth damages to Cadbury within three months of the passing of Order.

Therefore, the Court not only strengthened the scope of proprietary rights of a registered trademark and copyright owner but also created a deterrent by awarding damages within the infringers who ride on the goodwill and reputation painstakingly accrued by the registered proprietors.

R K Dewan & Co. is delighted to share that Dr. Mohan Dewan was invited by the Korea Intellectual Property Association (KINPA) to deliver a bilingual presentation in Korean and English on “The Importance of registration of IPR and the process involved in India” for the members of the KINPA on 9th August, 2022.

In his 2-hour long presentation, Dr. Dewan elucidated on the importance of IP registration in India by the right holders in Korea owing to rapid globalization and enhanced trade. Further while highlighting on the increasing trends with respect to Korean businesses registering their IPs in India, measures to prevent infringement of the IP rights were also discussed.

KINPA is an association of intellectual property in-house experts in Korean companies, with the mission of contributing to growth and fostering competitiveness of its member companies.

R K Dewan & Co. is delighted to announce that it has been successfully instrumental in getting a Patent for a ‘FLAME RETARDANT COATING COMPOSITION AND ITS PREPARATION PROCESS’ granted in just 7 months from the date of filing of the Patent Application for SRM Institute of Science and Technology

Usually a patent application may take a substantial amount of time to be examined and if appropriate, granted. A general/regular route of the patent grant can take anywhere between 4 to 5 years from the date of filing. An application once made will get published after 18 months from the filing date. This has to be followed by a request for examination within 48 months. The invention is then placed in a queue for the generation of examination reports consequently. This process as a whole is extremely time consuming and can further get delayed based on the opposition.

R K Dewan & Co.’s Patent Filing and Prosecution service enables businesses to secure their inventions by leveraging a strong patent draft prepared by skilled patent attorneys. Our team of qualified registered Indian patent agents and patent attorneys with a technical background can help organizations make the right decisions.

In a written reply to a question in Rajya Sabha, the Minister of State for Defence Ajay Bhatt described the R&D wing of the Ministry of Defence, Defence Research Development Organisation’s (DRDO) efforts for enhancing self-reliance in the defence sector to create a “Made in India” defence eco-system. He stated that, DRDO had signed 1,464 ‘Transfer of Technology’ (ToT) agreements with Indian firms to supply key components to India’s defence setup till date.

The DRDO has been working relentlessly for providing home grown cutting-edge defence technologies to the Armed forces, as a continuous process, he added. These technologies not only handhold defence manufacturers but also pave the way for enhanced home grown indigenous state-of-art defence technologies.

As a separate reply to another question, the MoS Defence also informed that the Central Government was seeking to collaborate with an international engine company for co-developing and producing combat jet engines, which will have higher thrust capacities than 80 kiloNewtons (kNs), for India’s Advanced Medium Combat Aircraft (AMCA).

He further stated that, indigenous capabilities already exist with the DRDO and Indian industries to design, develop as well as manufacture of 80kN combat jet engines.

In June, the enhancement of funding under the Technology Development Fund (TDF) scheme was approved and Rs 50 crore per project was allotted from the earlier Rs 10 crore. The TDF scheme which is executed by Defence Research and Development Organisation (DRDO), supports indigenous development of components, products, systems and technologies by Micro, Small & Medium Enterprises (MSMEs) and start-ups. The scheme facilitates up to 90% of the total project cost and enables industry to work in consortium with industry/academia. Currently, 56 projects have been sanctioned under the TDF scheme.

Agreements pertaining to 21 technologies to be developed by 16 DRDO laboratories spread across India were handed over in April, 2022. Notably, these technologies involve Quantum Random Number Generator - developed by a DRDO Young Scientist Lab (DYSL- QT, Pune), Counter Drone System, Missile Warheads, Laser-directed Energy Weapon Systems, High Grade Steel, Propellants, Surveillance & Reconnaissance systems, Chemical, Biological, Radiological & Nuclear underground vehicles, Fire resistant armours, and Anti-Mine Boots.

Trivia

Walt Disney was afraid OF MICE!

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Pearls dissolve in Vinegar!

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A duck's quack doesn't echo, and no one knows why.

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Dentists have recommended that a toothbrush be kept at least six (6) feet away from a toilet to avoid airborne particles resulting from the flush.

- Provided by my good friend, Phil Furgang.

- Provided by my good friend, Phil Furgang.

1. PARASITES

What you see from the Eiffel Tower.

2. PARADOX

Two physicians.

3. PHARMACIST

A helper on a farm.

4. RELIEF

What trees do in the spring.

5. RUBBERNECK

What you do to relax your wife.

6. SELFISH

What the owner of a seafood store does.

7. SUDAFED

Brought litigation against a government

*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

The Pittsburgh Zoo & PPG Aquarium is one of only six major zoo and aquarium combinations in the United States of America.

Located in Pittsburgh, Pennsylvania, the zoo exhibits more than 4,000 animals representing 475 species, including 20 threatened and/or endangered species.

Intrestingly, if one takes a closer look at the white negative spacing on either side of the tree in zoo’s logo, one can spot a gorilla on the left and a lion on the right with a little bit of focus.

-Adv. Chinmay Pawar

Mahajanpadas- Surasena

*We do not claim any copyright in the photographs. They have been used for academic and representational purposes only

The Mahajanpada of ‘Surasena’ was located around modern day city of Mathura, which was its capital also, in the state of Uttar Pradesh in central - north India in the 6th century BC. Mathura was strategically located at the junction of the two famous ancient Indian trade routes i.e. the Uttarapatha and the Dakshinapatha.

Avantiputra was a powerful king of Surasena and also a follower of Buddhism. Due its close geographical proximity to mighty kingdom of Magadha, Surasena was annexed to Magadha, subsequently.