Canada is about to witness a shift in its trademark regulation system as its amended Trademarks Act will be coming into force from June 17th, 2019. Earlier, TM registrations were valid for a period of 15 years. The amended Act has shortened the registration term to 10 years. The same change in term is also made with respect to renewals.

The definition of trademarks has been broadened to client even non-traditional marks, such as scent, taste and texture, three-dimensional and moving images, and even holograms as trademarks.

One of the most important changes that the Act introduces is that ‘proof of use’ is no longer a mandatory requirement. However, registrations will still be subject to cancellation for non-use. While the current law requires applicants to declare actual use of the mark in Canada, the new law does not have this requirement. There is a possibility that this amendment may encourage trademark squatters from blocking trademarks. Squatters are persons/ entities obtaining trademark protection for globally famous marks in jurisdictions where the mark is not in use. So, when the genuine users of these marks decide to enter the jurisdiction, these squatters, who are already proprietors of these marks sell them at unreasonable amounts to the actual users. With a view of adhering to the international practices, Canada will now be implementing the WIPO-administered Madrid Protocol. Also, it will be adopting the Nice Classification for classification of goods and services while applying for trademark registration.

1. Expenditure on Disaster Management relief will now be considered as an activity under the Corporate Social Responsibility by the Ministry of Corporate Affairs (MCA).

Disaster relief can cover wide range of activities that can be appropriately shown under various items listed in Schedule VII of the Companies Act, 2013.

For example,

(i) medical aid can be covered under ‘promoting health care including preventive health care.’

(ii) food supply can be covered under eradicating hunger, poverty and malnutrition.

(iii) supply of clean water can be covered under ‘sanitation and making available safe drinking water’.

2. Independent Directors on Company boards may soon have to clear exams before being appointed as a Director for the company. The exam is likely to be an online assessment covering the basics of Indian Company law, markets and ethics. There will be a fixed time frame to clear the exam however, the number of attempts will not be restricted.

Recently, a survey was conducted to assess how much Indian customers trust their brands. The survey Report ranks brands in India according to their brand-trust ratio in the Indian market. Well, “Dell” was a topper in the list! Dell Inc., the laptop and computer giant, is now ranked the most trusted brand amongst Indian consumers. Dell has jumped up by 5 ranks compared to last year’s report. What started off as sale of home-made (or shall we say dorm-made) computers by a student named Michael Dell in his dormitory at the Texas University, Austin, soon launched a global revolution in personal computers. In India alone, Dell has over 680+ exclusive stores in India. This evolution is commendable. The brand derives its name from its founder Michael Dell. The use of the slanted “E” in its name has a mystery around it. While some say it signifies growth, others say it signifies the founder’s wish to ‘turn the world on its ear’.

Dell was followed by Jeep, LIC, Amazon and Apple as the top five most trusted brands in India. It is noteworthy that amongst these, only LIC is an Indian company while all others are American.

*The image has been taken from TRA's BRAND TRUST REPORT 2019 RANKINGS. All images have been used only for academic and representational purposes. We do not claim any copyright in any of the above images.

"Justice too long delayed is justice denied"

-Martin Luther King, Jr.,

Sterlite Technologies Ltd. (“Sterlite”) owns Patent Nos. IN 241433 and IN 280211 relating to a unique method of producing optical fibres. Sterlite contended that ZTT India’s (“Defendant”) products were manufactured in such a way that it was imperative for them to use the technical parameters of Sterlite’s process-patent technology. Sterlite filed a suit of patent infringement at the Delhi High Court alleging that the technical parameters of the Defendant’s product could not be achieved without use of the methods prescribed in Sterlite’s patented technology. Sterlite, inter alia, prayed to the Court to grant an interim injunction against the Defendant. Even before it could be ascertained whether the Defendant was using the patented method or not, the Court held that an interim injunction was a ‘need of the hour’. The Court held that “the life of a patent is limited and further considering the time taken in determination, whether there is infringement of patent, non grant of interim injunction often results in, the defendant, even if ultimately found to have infringed the patent, till the said determination, continuing to reap fruits of infringement.” This is a landmark case for the judiciary’s proactive approach towards protecting the patentee’s rights during the patent’s life-span.

While ascertaining the balance of convenience, the Court observed that in case no injunction is granted, then that at the end of the suit the patentee may be successful only in recovering the profits accrued to the Defendant. However, the profits which the patentee would have earned, had there been no infringement, cannot be recovered. It is noteworthy that costs of the innovator’s product include the cost of innovation and is always higher than the costs to the infringer. Hence, it is necessary to restrain the Defendant from selling the infringing goods with an interim order of injunction, until the court decides upon matter. To protect the patentee further, the Court has stated that the infringer’s non-compliance with interim orders, would entitle the patentee to take punitive action against the infringer.

The next question that comes to mind is whether the Defendant is harmed by such interim orders. For this, the Court observed that if the Defendant succeeds in its defence of denial of infringement or invalidity of the patents, then violation of the interim order will not affect it anyway. The order of the Court in this case clearly mentions that the Defendant, until the next date of hearing, is restrained from infringing the 2 patents of the Plaintiff. This does not restrain the Defendant from manufacturing or selling the goods per se.

It puts the ball in the Defendant’s court. If the Defendant can successfully convince the Court that there has been no infringement in the case, it would not be liable to comply with this interim order. This balanced approach of the Hon’ble Court is commendable.

Considering that any invention has to pass through the painful process of passing the tests of patentability, inventive step, and protecting the patent from revocations and oppositions for its entire lifetime, such an order is surely a sigh of relief for innovators around the country.

The Ministry of Commerce and Industry’s Department for Promotion of Industry and Internal Trade has published the draft Patents (Amendment) Rules, 2019 proposing amendments to the Patent Rules, 2003.

According to Rules 20 and 21 of the Patent Rules, 2003, if the applicant of an international application for patent has added India as one of the designated countries for patent application but has not yet complied with the requirements of priority documents as mentioned in the PCT regulations, then such applicant is required to file them before the expiration of the time limit of 31 months from the priority date. The proposed amendment requires that in case these priority documents are not in English, a duly verified English translation of the same is to be filed by the applicant within 3 months from the date of invitation to file it by the Appropriate Office. The proposed amendment further states that if the applicant does not comply with the same, his claim of priority will be disregarded.

As per Section 146 of the Patents Act, 1970, every patentee/ licensee is required to submit to the Controller information regarding the extent to which its patented invention has been commercially worked in India. According to the Rule 131 of the Patent Rules, 2003, this information is to be submitted in the format prescribed in Form 27 for every year within 3 months at the end of such year. The amendment proposes to clarify that the information is to be furnished in respect of every calendar year from the year subsequent to the year of patent grant. The said Form 27 of Second Schedule of the Patent Rules, 2003 is also proposed to be amended.

Policy Bazaar, an online aggregator of insurance plans acts as a marketplace for various insurance policies. The company had filed a case at the Delhi High Court against Acko General Insurance (Acko) which also an insurance provider, alleging a trademark infringement of the mark ‘Policy Bazaar’.

On May 16, the Court passed an ex-parte order restraining Acko from infringing the mark ‘Policy Bazaar’ in any manner, form or combination. Acko however submitted to the Court stating that, Policy Bazaar had misrepresented and concealed facts to obtain such an ex parte ad interim injunction. Acko, further stated that, Policy Bazaar was itself using the mark ‘Acko’ as a meta tag on its website which was resulting in Policy Bazaar site popping up as a sponsored link whenever an individual would type ‘Acko’ on any search engine. The Court on examining these submissions it was ascertained that Policy Bazaar, was in fact using the mark ‘Acko’. Policy Bazaar contended stating that they had stopped using ‘Acko’ since April 23, 2019.

The Court in its order, reasoned that, “PolicyBazaar owed a duty to the court and concealment of facts amounted to making an attempt to pollute the pure stream of justice, the court has repeatedly instructed that a party who didn’t disclose all material facts won’t have a right to be heard”. The Court considered this a deliberate act of concealing of facts and fined Policy Bazaar an amount of Rs. 10 Lakhs for the act. In addition to the fine, Policy Bazaar has also been ordered to submit an undertaking and an unconditional apology to the Court.

‘Law is a means to the end of justice. Hence while protecting the letter of law, justice should not be misplaced.’

The Hall of Nations and the Hall of Industries are 2 famous buildings designed and constructed by Mr. Raj Rewal and Mr. Mahendra Raj in 1972, the 25th year of the Indian independence. The ingenuity in its design and creation is attributed to the 2 architects. The Hall, situated at New Delhi, India, is known as the first “Large Span Concrete Structure” in the world. The Hall was occupied by Indian Trade Promotion Organization (ITPO) and was to be demolished in 2017 for redevelopment plans of constructing a building of the Integrated Exhibition and Convention Centre (IECC). The architect’s efforts of having the Hall declared as a heritage site by the Heritage Conservation Committee were not fruitful. The case at hand, Raj Rewal v. Union of India & Ors, deals with infringement of the author’s moral rights in the artistic work of the famous architect Mr. Raj Rewal (“Plaintiff”) after the building was demolished in 2017.

According to the Plaintiff such demolition of the Hall was infringement of the author’s moral rights in the work as per Section 57 of the Copyright Act, 2000. Section 57 states that the author of a work shall have the right to restrain or claim damages for distortion, mutilation and modification or other act that would be prejudicial to his honour or reputation. Such distortion, mutilation or modification of an artistic work is violation of the author’s moral rights in the work.

The question before the court was a grave one, because, on one hand is the right to property of the land owner, who has a liberty to use his land as per his wishes, while on the other hand, is the moral right of the author who designed the structure erected upon such land. The Court reviewed and critically analysed not only Section 57 of the Copyright Act, but also the laws and judicial precedents relating to property laws.

Before concluding the order, the Court has specifically empathised with the Plaintiff for his endearment towards his works of art and stated that his act of filing a suit to protect his work of art is understandable. The Court said, “Art is transformation of thoughts / ideas of the artist into form. The practitioners of such professions as of an architect or artist, thus give birth to something tangible and being in love with that is fully understandable. Their creation is like a child and falling in love with the child is an emotion which all can understand.” The Court also stated that the least that the defendant could have done was to cordially inform the architect before demolishing the structure.

However, as we are aware of “law being reason free from passion”, the Court dismissed this suit. The Court interpreted the words distortion, mutilation and modification in Section 57 of the Copyright Act to mean such mutilation or distortion of the artistic work which would would prejudice the reputation of the artist or which would make the work appear different from what the author had created or imperfect. The Court further stated that not displaying the work at all or demolishing the work in entirety cannot be said to be infringement of the author’s rights in the work. This interpretation of the Court favours redevelopment, town planning, reconstruction and ultimately progress- technological as well as economical.

Imagine a situation, wherein all the buildings and constructed structures are restrained from being demolished for protecting the author’s right! Therefore, distortion, mutilation or modification of a building can be restrained by the architect, however, complete demolition cannot be restrained. One must understand that though law is based on rationale, such rationale may sometimes lie outside the codified law; it may lie in the correct interpretation of the law.

A case was filed at the Hon’ble Delhi High Court by Channel 2 Group Corporation against Http://Live.Mycricketlive.Net/ & Ors..¹ Channel 2 submitted that they are the exclusive agency with whom the ICC Business Corporation FZ LLC (the organizer of ICC Men’s World Cup) 2019 (“World Cup, 2019”) had entered into an Audio Assignment agreement permitting them to stream the Cricket World Cup, 2019. Channel 2 alleged that the Defendant's attempt to stream the World Cup, 2019 will lead to irreparable losses which they in the past have incurred at various instances.

Channel 2 further submitted that, due to the unique nature of online piracy and the unstructured nature of the internet, enforcement of rights against such pirating websites is a time consuming and mammoth task. The pirated websites can switch from one domain name to other and most of the times, such websites hide under the garb of privacy, as a result of which it is difficult to pin down the allegations against such website owners. Thus, if at this stage the Court insisted on Channel 2 to identify the individual parties and collect evidence against each Defendant, it would delay the matter inconsiderably and lead to indispensable losses to Channel

It was further submitted that none of the Defendants were licensed or authorized to broadcast/stream the World Cup, 2019. Further, since the World Cup has already started and will continue till July 14, 2019, if the Defendants were not restrained with immediate effect, the Plaintiff will remain without any remedy.

The Court was convinced with the facts placed before it and thus passed an ex-parte injunction in favour of Channel 2, however, any defendant complying with the interim order of this Court may broadcast the relay of the score update only after a time lag of 15 minutes. The Court further directed the search engines to take down/delete from their search result pages, listings of websites/ URLs which are infringing upon the Plaintiff’s copyright and broadcast reproduction rights, as and when notified by the Plaintiff.

¹CS(COMM) 326/2019