01
Jan 10
Concept & Editing by: Dr. Niti Dewan
As a New Year begins lets look back at the year that was. This edition of our newsletter concentrates on the major events and occurrences of the year gone by.
We start off with a Judgment delivered by the Supreme Court which heartens those who are IP conscious. We are speaking of the Judgment delivered by Justices Markandey Katju and Asok Kumar Ganguly in the appeal filed by Bajaj Auto Limited against TVS Motor Company Limited. The Judgment delivered on 16.09.2009 stated categorically that which they have held once before in Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwala which was “….the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.”. The Supreme Court rightly pointed out that IP cases are kept pending for years and years and that this is a very unsatisfactory state of affairs and hence they directed that all courts and tribunals in this country punctually and faithfully deliver their final judgment within four months. If you wish to read the complete judgment please click here
Novartis AG, one of the top multinational pharmaceutical companies filed an Indian Patent Application 3003/CHENP/04 for Nilotinib Monohydrate, known by the trademark ‘Tasigna’ in USA and other western countries. Nilotinib is an anti-cancer drug molecule belonging to the category of tyrosine kinase inhibitors. Other known anticancer drug that belongs to this category is imatinib.
Cipla Ltd. a generic Indian pharmaceutical company filed a pre-grant –opposition to the above mentioned patent application, before the Controller Of Patents alleging that Nilotinib is an outcome of a minor modification in the known molecule ie. imatinib. It was also alleged that Nilotinib was just a derivative of a known chemical entity and it did not offer any enhancement in efficacy.
R. K. Dewan & Co. represented Novartis AG during the pre-grant opposition proceedings. A step by step analysis of each and every distinctly novel aspects of Nilotinib was presented along with rebuttal of the allegations of the opponent during the proceedings. The Controller passed a decision allowing the application while rejecting the pre-grant opposition filed by Cipla.
Two of the motorcycle industry’s big names have been in intense conflict with each other, not on the road but in the courts. If you are unfamiliar with the case this is what happened:-
The Hon’ble Supreme Court also decided that TVS shall be entitled to sell its product but it shall maintain accurate records/accounts of its all India and export sales.
The Madras High Court has, as of 30th November, 'framed issues' under Order XIV of the Code of Civil Procedure. The next step in the case would be summoning and attendance of witnesses.
The Delhi High Court on 23rd November 2009 put to rest some peculiar questions regarding jurisdiction of courts in this world of advertising on the internet (which is accessible from almost any where in the world). The most striking peculiarity of the case was that neither of the parties were located within the territorial Jurisdiction of the Court.
The facts were as such - The Plaintiff BANYAN TREE HOLDING (P) LIMITED a Singapore Company had a registered trade mark in India. The Plaintiff alleged that the Defendants (a company and its promoter both located in Hyderabad) were trying to encash on the reputation of the Plaintiff by advertising the Defendants’ project named “Banyan Tree Retreat” on their website www.makprojects.com/banyantree. The trade mark infringement case was first put before a single judge of the Delhi High Court who vide order dated 11.08.08 referred the questions of jurisdiction of the Court, to a Division Bench.
The Division Bench held that:
“For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.”
The Hon’ble High Court also held that:
“The Plaintiff would have to ….produce material to prima facie show that some commercial transaction using the website was entered into by the Defendant with a user of its website within the forum state resulting in an injury or harm to the Plaintiff within the forum state. ”
The 58 page judgment can be read here.
The Microsoft Corporation was admonished by Justice Dhingra of the Delhi High Court for filing in Delhi, four suits for copyrights violations against four parties who have offices in other cities (such as Ahmedabad, Pune, Bangalore, Mumbai and Chandigarh). The Hon’ble Court in December 2009 ordered that Microsoft deposit wit the Court Rs. 8 lakhs as cost security for deliberately choosing Delhi to file copyright violation cases, despite having offices in cities where the offences were allegedly committed by the opposite parties.
Justice Dhingra in the order observed “I consider that when the Constitution of India provides equality before law this equality has to be all pervasive and cannot be allowed to be diluted because of money power or lobbying power. One cannot be given liberty to choose a court of his liking because of his money power. There should be one definite court where the suit can be filed by everybody and one cannot hire the services of the court of his choice, i.e., Civil Judge, District Judge or High Court, because he can pay more court fee and advocate fee.”
Suits in general when filed by big corporations/ moneyed litigants are usually filed in High Courts (having original side jurisdiction – Bombay, Calcutta, Delhi and Madras) as they usually have offices within the High Court’s jurisdiction and also as it becomes more expensive for the Defendant (as the cost of appointing a senior advocate is high) and also its harder to access these forums if such Defendant resides in other districts/ towns. The expense and the distance give leverage to the Corporation filing the suit as the Defendant would ideally not be able to cover his losses by continuing with the litigation.
The Court observed that the law on the appropriate forum is as yet not settled and a difference in opinion still exists between different benches. “Taking advantage of this, suits of this nature are still being filed in the court of their choice (or choice of their advocates) by the plaintiffs. This creates a very peculiar situation in this country and shows how money power becomes important in choosing the forum and the courts become helpless in dealing with such ‘forum hiring’ ”. Specifically with regards to Delhi, the Court stated that the original jurisdiction of the High Court starts from Rs.20 lacs onwards and regardless of the actual damage, the relief sought in almost every suit for infringement of copyright, trademark, patent and design is valued around Rs.20 lacs so as to bring it within the jurisdiction of the High Court of Delhi.
The Court also observed “……it is easier to get ex-parte injunctions in High Court and once you get ex-parte injunction, the application on merits is invariably not allowed to be decided in time and the party having ex-parte injunction starts evading arguments on merits on one or the other ground.” The Court further observed the distinct situations that arise when it’s a copyright matter as opposed to a design or a Trade mark matter by saying “Moreover, when the defendants are not situated in Delhi, to contest litigation coming from Mumbai, Hyderabad, Bangalore itself becomes a source of harassment for the defendants and that seems to be a reason that in all those cases where ex-parte injunctions are granted, specifically in alleged copyright infringement case, the suits are never contested. The contest takes place only in those cases where infringement of trade mark and design is involved and the parties are normally locally situated and are able to give a meaningful contest to the allegations of violation. ”
The matter is presently pending in appeal before the Division Bench of the Delhi high Court.
Parle is a world renowned mark used on a variety of goods including biscuits and confectionaries on the one hand and beverages on the other. Several decades back there was a division in the business owning the Parle Trade Marks and a peaceful separate existence arrangement was arrived at by which one group of businesses belonging to some members of the family elected to continue the business for confectionary & biscuits while the other conducted their business in the field of beverages. The Trade marks were registered accordingly for the two groups separately. Both businesses grew in their respective goodwill for themselves. This peaceful separate existence was broken in 2007 when an off-shoot of the beverages group launched candies and subsequently snack foods. Actions were initiated by us on behalf of the confectionary business (Parle Products Pvt. Ltd.) and favourable orders have been obtained after protracted litigation. The matter is still subjudice and is likely to be decided early next year. This case will be a precedent for maintaining the sanctity of separate good will of different groups trading under a common name who although originally did business together have now gone their separate ways.
Google has been facing problems around the world for its practice of auctioning/ selling of key words which are Trade Marks of other entities. In the latest development, the Chennai High Court on September 18 2009, passed an injunction against Google, restraining it from infringing and/or enabling others to infringe, Chennai-based Consim Info Pvt. Ltd.’s registered trademarks Bharatmatrimony.com, Tamilmatrimony.com and Telugumatrimony.com by including them as adwords, keyword suggestions tool programme.
Consim also sought damages of Rs. 10.5 lakh from Google and other four respondents – People Interactive Pvt. Ltd, Jeevansathi Internet Services Pvt. Ltd. and Times Business Solutions Ltd.
In a dispute that has continued for over a year now between the Coca Cola Corporation and Bisleri, concerning the sale of the mango flavoured drink under the trade name Maaza, Coca cola has finally secured victory. The Delhi High Court passed an order on Oct. 20th 2009 making absolute, the interim injunction it passed against Bisleri in 2008 ordering them to halt the sale of their soft drink under the trade name Maaza in India.
“The court was pleased to dismiss Bisleri’s application for vacation of the ex-parte interim injunction against use of the Maaza trademark in India including the use for purposes of export from India as well as their application for rejection of the suit on the grounds that the Delhi High Court lacked the requisite jurisdiction,” said Anuradha Salhotra, an advocate who represented Coca-Cola.
In 2008, the Delhi High Court ruled in favor of Coca-Cola but restrained the company and its associates from using the trademark Maaza or any other deceptively similar trademark in relation to non-alcoholic beverages, syrups and other preparations till a final hearing.
Bisleri on the 8th of December filed a petition before the division bench challenging the order passed by the single-member bench on October 20th 2009.
In an interesting case, Tata Sons filed a complaint before the World Intellectual Property Organisation (WIPO) against the travel portal MakeMyTrip for the use of the word ‘TATA’ in the latter’s sister website okaytatabyebye.com.
Tata alleged that the domain name infringes its registered trademark/service mark TATA. It requested to get the disputed domain name transferred to it. It was also pointed out that the “Respondent (MakeMyTrip) is not commonly known by the domain name oktatabyebye.com” but as “MakeMyTrip”. WIPO concurred and stated “…the Respondent (MakeMyTrip) has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”
MakeMyTrip argued that “usage of the word ‘tata’ as a gesture finds its mention in the origin of a place called Ta Ta Creek as far back as in the year 1860.” and that the okaytatabyebye is a name derived from the common parlance “OK Ta Ta Bye Bye” since it signifies travel, journey and related activities. MakeMyTrip further stated that the expression “Ta Ta” has been used not as a standalone mark but as a generic description of bidding farewell for this Web site”. The WIPO however did not agree with MakeMyTrip’s contention and stated that “The Panel is of the opinion that the usage of the generic words “OK” and “Bye Bye” in the domain name does not really take away the identically and confusingly similar nature of the domain name with the registered trademark of the Complainant.”
WIPO directed on August 11 2009, that domain name okaytatabyebye.com be transferred to the Complainant
In a judgment pronounced in July by the Gujarat High Court, Cadila Healthcare Ltd. was held not to have a monopoly over the trademark Mexate, which is an abbreviation of Methotrexate. Cadila had, by instituting the suit against Goa based Wallace Pharma objected to Wallace's use of its trademark. Interestingly, both the companies have registered trademarks for their respective products. The similarities don’t end there, both drugs are used to cure similar ailments ranging from cancer, rheumatoid arthritis and psoriasis. Both the companies coined their brand names on the basic ingredients. While Cadila derived its trade name ‘Mexate’ from Methotraxate, Wallace adopted the trademark ‘Mext’, derived from Methotrexate and Folic Acid.
The order observed that since in the field of medicinal preparation it is a general practice to adopt the mark from the name of the drug itself, Cadila cannot claim monopoly over the mark which is an abbreviation of a basic drug.
Though the Court has ordered the co existence of the two brands Mext and Mexate, whether this co-existence will be peaceful and without confusion only time will tell.
Mahindra Satyam has agreed to make a payment of USD 70 million to its former client, Upaid Systems Ltd to settle all outstanding disputes with the British Company. As per the terms of the settlement Mahindra Satyam would pay Upaid a sum of USD 45 million upfront and the remaining USD 25 million in the next one year. The Settlement further requires that Mahindra Satyam get a worldwide royalty-free licence on Upiad’s patents.
Upaid had in 2007 filed a suit against Satyam in a Texas Court claiming damages of USD 1 Billion, alleging fraud, forgery, misrepresentation and breach of contract involving transfer of intellectual property rights in relation to project that the firms jointly worked on in the late 1990s. After the project was completed it was agreed in 1998 between the parties that Satyam would assign the patent of the software code (relating to the project) to Upaid. The assignment required the consent of the employees of Satyam working on the project. Upaid alleged that the signatures of the employees giving their consent were forged and that it was brought to the notice of Upaid by an ex employee of Satyam.
Though this dispute is now settled it is hoped that it serves as a reminder that proper documentation is crucial to IP management.
US District Court Judge, William Smith, of District of Rhode Island Court nullified the jury’s verdict directing Microsoft to pay a sum of 388 million US Dollars in a ruling that said Microsoft did not infringe on the Uniloc technology at issue and that the damages awarded were based on misleading evidence presented at trial.
The suit filed by Uniloc in September 2003 was regarding the alleged infringement by Microsoft of Uniloc’s security software. Uniloc claimed that Microsoft was using Uniloc’s software to prevent unlicensed use of Microsoft’s Windows XP operating system and parts of its Office suite of products.
Settling a long running patent-infringement dispute with InterDigital, Samsung Electronics has agreed to pay 400 Million US dollars. InterDigital alleges that their patents in wireless technology are used by most cell phone makers. InterDigital already has licenses with various companies including RIM, Apple and LG Electronics giving them a license to use it’s technology. Samsung will pay 100 million US dollars four times, over the next 18 months to use the patents covering digital technology and high-speed broadband through 2012.
The Ministry of Human Resource Development has proposed certain amendments to the existing act. The Union Cabinet has on 24th December 2009 accorded its consent for the bill to be introduced in the parliament. The draft of the Bill is expected to be tabled in parliament during the Budget session.
The amendments seek to bring the existing Copyright Act of 1957 in conformity with the two WIPO Internet Treaties, namely WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT). Though, India is as yet not a signatory to either of the two treaties, the MHRD states that it is necessary to amend domestic legislation to extend the copyright protection in the digital environment and these treaties set the international standard for the same.
To bring it in line with the two treaties the MHRD amongst other things wants to introduce the following change- “Through a new section in the Act, it is proposed to ensure protection to the Right holders against circumvention of effective technological measures applied for purpose of protection of his rights like breaking of passwords etc. while maintaining an appropriate balance between the interests of the right holders on the one hand and of Technology innovators, Researchers and Educational Institutions on the other.”
Other salient changes proposed are as follows:
Performers’ rights: “The Moral Rights of Performers” are proposed to be introduced in a new section along with enhancements of the rights of Performers.
Photographers’ rights: The period of copyright for photographers is proposed to be enhanced to “Life plus sixty years” instead of only sixty years as at present.
Amendments to address the concerns of the physically challenged: It is laudable that the MHRD considered the plight of the physically challenged and is trying to make compensation for their special requirements. According to the MHRD “A clause is proposed to be introduced as a fair deal clause to allow the production of copies of copyright material in formats specially designed for the physically challenged.”
Authors’ Rights: numerous amendments have been proposed to the rights of authors some of which are-
Directors’ rights: Another amendment in the copyright amendment bill is that the director of a cinematograph film shall be considered as a joint owner along with the Producer in respect of the cinematograph film. This amendment is meant to be prospective in nature however, in order to compensate the directors of previous films, the term of copyright of the film will be extended from 60 years after the death of the first owner to 70 years after such death. This is however ‘‘subject to the principal director entering into a written agreement with the owner of the copyright in the film during the subsistence of copyright’’. The accompanying note explains that this is meant ‘‘to extend the copyright term for the producer for another 10 years if he enters into an agreement with the director’’.
Amendments have been made to the IT Act in 2009 as can be seen here . One of the changes made to the Act makes the act subject to the provisions of the Copyright Act as well as the Patents Act. The prior section gave the IT act overriding powers over inconsistent provisions in other laws, the new amendment makes this subject to the provisions of the Copyright Act as well as the Patent Act; the section now reads:
SECTION 81 “The provisions of this Act [IT Act] shall have effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force. Provided that nothing contained in this Act shall restrict any person from exercising any rights conferred under the Copyright Act, 1957 or the Patents Act, 1970.”
One of the effects of this amendment would be that an intermediary such as an Internet Service Provider can no longer claim immunity from every offence, as is laid down by section 79 read with Section 81.
Section 79 reads as thus-
79. Network service providers not to be liable in certain cases. – For the removal of doubts, it is hereby declared that no person providing any service as a network service provider shall be liable under this Act, rules or regulations made thereunder for any third party information or data made available by him, if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence for contravention.
Explanation-For the purposes of this section,- (a) “network service provider” means an intermediary;
(b) “third party information” means any information dealt with by a network service provider in his capacity as an intermediary.
The United States of America is attempting to make reforms to its patent law. The bill has been introduced in both the Senate and the House of Commons. The Patent Reform Act of 2009 represents the third consecutive congressional session to overhaul the U.S. patent system since 1952. Some of the changes to be introduced are:
Patent Infringement litigation: the bill proposes to give defendants additional ways to combat infringement allegations and limit damages.
First to file: the amendment proposes to change the current US system from “first to invent” to a "first-to-file" system. This means that the USPTO would no longer permit patent applicants to, by the submission of sworn affidavits and documentary evidence, "swear behind" (antedate) newer references that would otherwise preclude their patent claims from being allowed.
Post-grant review: As per the bill, any party can challenge a patent's validity within 12 months of issuance. If a party contests the patent within that time frame, the USPTO must execute discovery procedures and arrive at a decision within 12 months.
Here are some of the other changes suggested http://en.wikipedia.org/wiki/ Patent_Reform_Act_of_2009.
The revision to the Chinese Patent Law which was passed in December 2008 has come into effect as of 1st October 2009. This is the third time that the patent law of the Peoples Republic of China has been amended since 1984. The latest amendment has been passed to create further consistency with international standards. The amendments are part of a national strategy to encourage Chinese companies to innovate and to further strengthen China’s legislative framework.
One of the major changes involves the practise of ‘double patenting’- China has a two tier patent system which consists of Invention Patents, Utility Model Patents (or Utility Patents).
An Invention Patent protects a new technical solution relating to a product, a process or an improvement thereof. A Utility Patent, covers a new technical solution relating to a product's shape, structure or a combination thereof.
The term of the Invention Patent is 20 years and that of the Utility Patent 10 years. The Utility Patent is granted in about one and a half years after a formal examination, in contrast Invention Patents are substantively examined and it can take around 3-5 years for grant. Until 2007, it was fairly common to obtain Invention Patents and Utility Model Patents on the same inventions; till the SIPO passed guidelines against such practice. The new amendment lays down that the same invention can only be granted one patent at any given time.
Now a person can file a Utility Patent application and an Invention Patent application however, such person will only be granted an invention patent if he abandons the Utility Patent (if granted and is still valid). Thus, one can now easily obtain a Utility Patent (which provides protection for 10 years) and in the meanwhile apply for an Invention Patent as well. If one is going to be granted an Invention Patent (20 years protection), one can simply abandon the Utility Patent.
According to WIPO Director General, Francis Gurry, the Singapore Treaty which came into force in March 16, 2009 is good news for trademark owners around the world as it opens the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently.
The treaty was signed by member states in Singapore on March 28, 2006. The treaty could only take effect however, if at least 10 of the signatories ratified the treaty. Australia was the tenth country to ratify the treaty.
As per the WIPO press release “The Treaty standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communication technologies, to process and manage evolving trademark rights. By establishing common standards for procedural aspects of trademark registration and licensing, the Treaty helps to create a level playing field for all economic operators that invest in branded goods. The Singapore Treaty establishes trademark office administration rules applicable to all types of trademarks, taking into account the advantages and potential of electronic communication facilities, while recognizing the varying needs of both developing and developed nations.” India is as yet not a signatory to this treaty.
Mr. P H Kurian has been appointed the new Controller General of Patents. Mr. Kurian is an IAS officer of 1986 batch of Indian Administrative Services. Before taking over as Controller General of Patents, Designs and Trademarks on 22nd January 2009, he was a Secretary to Government of Kerala, (Industries-Investment Promotion). He holds a Masters Degree in Chemistry and did research for three years in the Institute of Science, Bangalore which is one of the most prestigious Institutes of India. Mr. Kurian has brought about certain changes since he joined the office as can be seen by the notifications passed in 2009. We welcome him to the Indian Patent Office.
Mr. Naresh Prasad, an Indian, has been appointed chief of staff to WIPO Director-General Francis Gurry. Mr. Prasad has been the joint secretary at India’s Department of Industrial Policy and Promotion in the Ministry of Commerce. His role in modernizing India’s IP infrastructure and in facilitating agreement in international negotiations, particularly in the area of WIPO’s development agenda has been widely appreciated .
Patent examiners of the USPTO will soon be able to access the Database of Traditional Knowledge thanks to the Indian Government according its permission in November 2009. India’s Council of Scientific and Industrial Research, and the Department of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homeopathy is credited with the development of the Traditional Knowledge Digital Library (TKDL), which is a 30 million page searchable database of traditional knowledge translated from numerous languages such as Hindi, Sanskrit, Arabic, Persian, Urdu and Tamil into English, Japanese, French, German and Spanish. The EPO was allowed the use of the TKDL in February 2009.
The Indian Department of Industrial Policy and Promotion (DIPP) and United States Patent and Trademark Office (USPTO) announced on the 23rd of November 2009 that they have entered into a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation for intellectual property rights (IPR) protection and enforcement. Under the terms of the MOU, the USPTO and DIPP will cooperate on a range of IPR issues, focusing on capacity building, human resource development, and raising public awareness of the importance of IPR.
Secretary of the DIPP, Mr. Ajay Shankar said, “Our vision is to transform our IP system into a world class organization by adopting transparent, automated and user-friendly procedures. The MOU that we are signing today would help strengthen our capacity to achieve this objective.”
Offering a little hope in troubled times to around 12 Lakh weavers, the Registrar of Geographical Indications issued a Geographical Indication (GI) certificate in 2009 which declares that henceforth only saris produced in Varanasi, Azamgarh, Chandauli, Jaunpur, Mirzapur and Sant Ravi Dass Nagar (Bhadohi) will be considered Banarsi saris. The certificate covers silk brocades like Amru, textile goods not covered elsewhere such as bed and table covers, silk saris and dress materials such as Jamdani, Jangla, Jamawar Tanchoi, Tissue, cut work, butidar and silk embroidery saris. Here are some other things which have received GI Registration since April 2008.
Thailand, Peru and Chile have joined the PCT by depositing their instruments of accession at WIPO in 2009. A total number of 142 countries are now, contracting parties to the Patent Cooperation Treaty. We hope that many more nations will join their ranks in 2010.
In October 2009, Goal Zero, a small company located in Utah was awarded design patent number 600,000 by the USPTO. The patent was granted for the design of a battery system, which works in conjunction with a solar briefcase that recharges the system using sunlight. The first design patent was issued in 1842 to George Bruce of New York City for printing types. More than 23,400 design patents were issued USA in the fiscal year 2009 alone.
In a case before the Bombay High Court which will surely have far reaching implications for the legal fraternity, the court decided on 16th December 2009 that the words ‘to practice the profession of law’ in section 29 of the 1961 Act is wide enough to cover the persons practicing in non litigious matters. What this implies is that now foreign law firms in India would not be allowed to perform even non litigation tasks such as drafting of applications, consultancy work or any other sort of legal work that does not involve appearing before the courts unless their lawyers are registered with the Bar Council as per the provisions of the Advocates Act, 1961 as advocates. To read the full judgment please click here
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