Sep 20

RKD NewsNet September 2020 - Volume II

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

General News

  • Human Race vs. Virace!
  • The IPAB Chairman’s Term Extended for 3 months
  • International News

    Human Race vs. Virace!

    Currently, there is a raging war between two races. The human race versus the virace. The battles seem unequal.

    At the beginning of this year 2020, the human race felt that it was by far the most superior living entity on this planet. With technology and science on their side, the human race was able to subjugate every other living race and had the ability to exploit every non-living entity. Indeed with all their collective power on land, sea and air, members of the human race felt invincible. Having conquered this planet the human race had set its sights on conquering other heavenly bodies and planets.

    Then one member of the virace struck. The virace was considered a race of brainless entities. The science of the human race even loathed to classify any member of the virace as a living entity. It was considered a pariah, an outcast! Neither living nor non-living. It had consigned the virace to purgatory! There had been interactions between the two races several times before. But the two races had learned to live with each other in a mutually beneficial relationship. The virace always had great respect for the human race. After all the human body was its host and the members of the virace needed the host for its survival. If the host would die, how could the guest survive? The human race most often than not, treated the virace guests as infections, calling them "viral infections". When treated as a guest the virace would leave the host's abode within a certain period of time. As all good guests do. Humans even joked about it: "the infection will go away if left to itself in seven days. With treatment it will take only one week!

    But this time it was different. At first, the chieftains of the human race, were in denial mode. No battle existed. The puny virace member was insignificant. It was going to be isolated, contained, controlled and destroyed. After all said and done how could this member of a submicroscopic race worry the mighty human race. Then slowly, the tides started turning.

    The human race had divided the world into large and small hamlets, they called countries. Each hamlet had a chieftain. Within the hamlet itself the human race was a divided lot: divided by what they called religion, caste, gender and color. One hamlet blamed another for the "virace invasion and infiltration". One group in a hamlet blamed another group. Much later it dawned on the entire human race that this was war. According to the human race this was really war not a visitation by an unwanted guest. According to the virace it was survival, not war. It did not want even a skirmish or a battle; let alone a war. It only wanted a relationship. But what it got was war...all out war! The virace as any guest would do, got indignant. The virace spared no hamlet and no group. It did not discriminate between the hamlets or between the groups. Nor between the rich or the poor or the young or the old or the powerful or the weak. Many members of the human race "succumbed" to the intrusion. Largely, of their own doing, fear, ignorance, lack of understanding and rank avariciousness and greed of other members of the human race, often in their own hamlet!

    The virace had the ability to first enter as an uninvited guest the human race member's body through the body openings. The doors and windows that remained unattended or unguarded by masks and sanitizers. These unguarded doors and windows were an open invitation to the virace to enter as a guest. Once inside it housed itself into one of the many rooms inside the body of the human host...the cells of the body and in the process of replicating itself it feasted on the cell. Even unknown to the host the virace came and went quietly. Millions of these hosts were visited. The human race called such hosts "asymptomatic". By and large the guest left quietly. Most of the hosts did not even know that the guest had come and gone. But as a token of respect for its pleasant stay within the host, it left behind antibodies in the plasma of the host. These antibodies could always be used by weaker members of the human race in which the guest had entered for ensuring the virace guest had a safe exit. But for some influential members of the human race, there was no money in this gift.

    For money they needed to create vaccines, medicines and other tools of war. There was no money in plasma only gratefulness. Some other thoughtful members understood the meaning of this treasured gift and requested members who had been so visited to share this treasure with other members. The natives of the Indian hamlet had a tradition for treating a guest like God: they even had a saying for it: "Atithi Dev Bhav". They had the most potent of these treasures and their plasma was much in demand.

    By the end of 2020 over a million members of the human race were destined to perish, some directly some indirectly from the fear of the virace.

    The science people of the human race started their own internal battles. The battle of the vaccine. Who would come out with the first reliable vaccine that would protect members of the human race from the virace. Many vaccines were tested on innocent hosts with unexplained consequences. The fight for the cure. The human race had never really found a remedy to oust this guest from the host. But still they wanted to at least show they would try. After all, how could the mighty human race accept defeat from the puny virace. The virace only laughed. It thought by the time the puny human will develop the vaccine, or the medicine man will concoct what he would call "remedy", I will mutate into several other forms resistant to it.

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    The IPAB Chairman’s Term Extended for 3 months

    The Intellectual Property Appellate Board (“IPAB”), in India, is in the news over its appointments. In 2018, Hon’ble (Retd.) Justice Manmohan Singh of the Delhi High Court was appointed as the Chairman of the IPAB. He is considered a legend for his remarkable orders and judgments in various field of law, especially, Intellectual Property law. At the beginning of his career, in the 1980s, he joined the chamber of Shri. Anoop Singh, Advocate and actively practised on the original side of the Delhi High Court for around 9 years, before venturing into independent practise. He was elevated as an Additional Judge of the Delhi High Court in 2008. Almost everyday, the IPR fraternity, would look forward to the insightful decisions of Hon’ble Justice Manmohan Singh. His contributions to the field of intellectual property law are recognised in India as well as worldwide. One of the respected legends in the field of IPR, his contributions will be known for sculpting the jurisprudence on IPR law in India in the times to come.

    The Supreme Court had directed that Hon’ble Mr. Justice Manmohan Singh shall be allowed to continue as Chairperson of the IPAB for a period of 1 year from the date of his attaining the age of superannuation (until September, 2019). As per the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020 (“Tribunal Rules, 2020”) extension was sought for his continuance on the ground that he is entitled to continue till 01.01.2022. Meanwhile, since the Supreme Court is still hearing the matter pertaining to the validity of the Tribunal Rules, 2020, it has extended the term of Justice Manmohan Singh as Chairperson of the Intellectual Property Appellate Board (‘IPAB’) for a period of 3 months from September 16, 2020.

    In 2017, an erstwhile version of the Tribunal Rules, 2020 was struck down by the Supreme Court in the case of Rojer Mathew vs South Indian Bank and Others for contravening, inter alia, the fundamental rights, and the doctrine of separation of powers and independence of the judiciary.

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    -Ashima Sobti

    Japanese companies accelerating toward globalization, international transactions in intellectual property have become more robust.  According to the Balance of Payments Statistics released by the Ministry of Finance and the Bank of Japan, charges for use of intellectual property in 2019 have amounted 3.4 trillion JPY in surplus. Here are the TOP 5 trends you would want to know about the growing JPO.

    1. Number of applications by Japanese universities has increased:

    The ranking shows that top ten universities account for more than 30% of published patents by all universities.  In terms of the number of PCT applications filed in 2019, The University of Tokyo has ranked 12th among all universities worldwide while the University of California in the US has taken first place. The top 3 Japanese universities filing maximum patents are: The University of Tokyo at the top with 300 applications, Tohoku University is second with 268 applications and the third is the Osaka University with 263 applications.

    2. Technical Trends:

    The JPO releases technology trend reports, it shows “ IoT‐based maintenance management technology for infrastructural facilities “ as the topmost trend. In Japan, as infrastructure that was intensively developed after 1960 has aged and efficient maintenance and management of  infrastructure are in urgent need.  In a view of the number of  applications and its growth, China takes the lead, followed by Japan.

    3. V2X tech. is in top 10 tech patents filed:

    V2X communication technology is a wireless communication technology that connects vehicles with all kinds of things. Such connective capabilities include vehicle‐to‐vehicle and road‐to‐vehicle communications, and vehicle‐to‐vehicle and server‐to‐vehicle communications that utilize cellular network technology.  It is being researched and developed as a key for designing connected cars and self‐driving cars.  The market size of systems that use the technology will most likely expand in the future. The number of applications related to V2X communication technology is on the rise, especially those filed by Chinese and Korean applicants since 2015.

    4. Filing trends & examination period:

    Patent grant rate and number of JPO filings have not  fluctuated from the previous year. The number of filings in 2019 (307,969) are very close to those in 2018 (313,567). The success rate of appeal trials in 2019 is risen to 68%.  This rate has been increasing in recent years.
    Examination period: In 2019 JPO has successfully shortened the examination period as a result of an initiative that JPO has been working on for a long time. Surpassing USPTO (23.8 months)  and EPO (25.1 months) JPO has shortened its Filing to decision period to only 14.1 months to be the quickest amongst all to grant a patent.

    5. And the COVID highlights:

    The JPO has taken remedial measures for COVID‐19, which apply not only to designated time limits but also statutory time limits. (last updated on June 10, 2020) If someone is not able to carry out procedures within the time limits due to COVID‐19, they can refer to the JPO’s website and contact them as well.  Depending on the backgrounds of each case, actions to be taken will differ.
    SHIGA international patent office Report
    JPO annual report JPO states report -2020

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    Goda Kaisha IP Bridge v. TCL Communications Technology Holding Ltd.

    -Rajinder Sapru

    Goda Kaisha IP Bridge 1 (“IP Bridge”) filed a case2 at the United States District Court for the District of Delaware against TCL Communications Technology Holding Ltd. (“TCL”) and others, for infringement of US Patent No. 8,385,239 and 8,351,538. During the trial, IP Bridge alleged that the patents in suit are essential to the LTE standard and TCL’s devices are LTE compatible. IP Bridge relied on Fujitsu Ltd. v. Netgear Inc.3suggesting that infringement is established if the accused device is compliant with a standard and the patent is essential to the mandatory aspect of that standard. TCL did not come up with any evidence to counter this. The jury found that TCL was liable for infringement and awarded damages.
    Following the verdict, both parties filed motions for post-trial relief. TCL contended that the judgment of the District Court was flawed because the case of Fujitsu also referred to a “narrow exception” for proving infringement in the standard way i.e. comparing each element of a patent with the corresponding element of the accused device and that IP Bridge could not rely on the case of Fujitsu as it approved methodology in circumstances where the patent owner asks the District Court to assess essentiality in the context of construing the claims of the asserted patents. This contention was not accepted. IP Bridge demonstrated during the trial that LTE standard-compliant devices do not operate on the LTE network without infringing the asserted claims.
    IP Bridge argued that standard essentiality is a classic issue of fact and that the case of Fujitsu should not be relied upon for the proposition that standard essentiality must be determined in the context of claim construction. IP Bridge further argued that the Fujitsu judgment is to be read in the context of procedural posture. The Court of Appeals agreed that standard essentiality is a question of fact and is not an issue of law. It may be worthwhile to reproduce a part of the judgment of Fujitsu which reads, “We hold that a district court may rely on an industry standard in analyzing infringement. If a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. We agree that claims should be compared to the accused product to determine infringement. However, if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product. An accused infringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard”.
    The Court rejected TCL’s reading of Fujitsu.

    2 Goda Kaisha IP Bridge 1 v. TCL communications Technology Holding Ltd & others  United States Court of Appeals for the Federal Circuit, 2019-2215, August 4, 2020

    3 620 F.3d 1321 (Fed. Cir. 2010)

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    Tiffany v. Costco: Descriptive words over trademark exclusivity

    -Rajinder Sapru

    Tiffany and Company (“Tiffany”) is a major producer of fine jewellery including diamond engagement rings and has a large number of trademarks registered in its name. During the nineteenth century, Tiffany developed and sold a six-pronged diamond ring which was registered under the mark “Tiffany”. Since numerous advertisements, dictionaries, trade publications, and other documents have referred to diamond settings of that style as “Tiffany settings.”
    Costco Wholesale Corporation (“Costco”) sells engagement rings with a variety of setting styles which include bezel setting, cathedral setting, channel setting and the so-called Tiffany setting. The word “tiffany” is used at the point of sale only to identify the ring with a particular style.
    Tiffany filed a suit for trademark infringement and counterfeiting. The District Court of Manhattan, in its summary judgment, awarded damages to the tune of 21 Million USD. Costco appealed against the judgment and demanded a trial. 
    Tiffany alleged that the word Tiffany was not accompanied by the words “setting”, “style” or “set”. Tiffany also surveyed the customers of Costco and stated that 6 out of 3000 customers confused the rings with those of Tiffany. However, the sampling was considered to be de minimus evidence of confusion.
    Costco argued that though Tiffany is a brand name, the word is also associated with a particular style of widely used pronged rings. The name of the manufacturer of these rings is clearly mentioned. Costco countered that it was unlikely to confuse consumers and even if it did, under the Lanham Act, Costco was entitled to use the term “in good faith only” to describe the style of its rings4.
    The issue at hand was whether Costco acted in good faith or adopted the mark only to exploit the goodwill and reputation of a senior user with the intent of sowing confusion amongst the consumers about the source of the products5. Costco argued that the relevant population of customers who buy expensive diamond rings, like those of Tiffany, are sufficiently sophisticated and would understand the difference between a point of sale item and a branded item that comes packed in typically coloured and designed boxes. Costco gave sufficient evidence that “Tiffany” has a descriptive meaning independent of Tiffany’s brand and intended to invoke that descriptive meaning when it created its point-of-sale signs.
    The Federal Appeals Court vacated the summary judgment of the District Court and sent the case for a trial.

    4 15 U.S.C. § 1115(b)(4).

    5 Star Indus., 412 F.3d at 388.

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    HONDA and MICROSOFT caught in a trademark race

    What is peculiar about this headline, is that both these companies, Honda Motor Co. Ltd. (“Honda”) and Microsoft Corporation. (“Microsoft”) are well known international brands. Most consumers are aware of the sectors in which these brands function. While Microsoft, since its establishment, is engaged in the business of computers and software, Honda is prevalent in the automobile industry. Therefore, one may wonder, what could possibly have happened for these 2 brands to crossover in a trademark dispute. Read along to find out:
    On August 31, 2020, Honda filed an Opposition against Microsoft’s trademark application for the mark “POWER YOUR DREAMS” at the United States Patent and Trademark Office (USPTO) before The Trademark Trial and Appeal Board (US TTAB). Microsoft applied for registration of the mark in Class 28 with respect to, inter alia, video game consoles. Honda, on the other hand, is the owner of the mark “THE POWER OF DREAMS”, inter alia, in Classes 07 and 12.  Honda contended that it had started using the tagline as a part of its primary branding activities and it is now used in almost all promotional and advertisement content. It stated that the tagline is exclusively associated with Honda.
    The twist in the matter lies in the fact that Honda and Microsoft have already entered into a license agreement whereby Honda allows Microsoft to use its mark in the video game’s graphics.

    Image source: Notice of Opposition filed by Honda. We do not claim any copyright in the image and the same is used for representational and academic purposes only

    Honda is therefore apprehensive that in addition to the licensed mark, if Microsoft also adopts a deceptively similar tagline- POWER YOUR DREAMS, is likely to make a user recall HONDA’s mark and result in dilution of its trademark “THE POWER OF DREAMS”. Hence, the opposition.
    The key takeaway from this trademark dispute is that, while entering into licensing agreements or any agreement allowing use or sharing of trademarks/ designs/ copyright etc. the licensor should safeguard its intellectual property rights and have reasonably restrictive covenants to prevent the licensee/ subsequent user from using its IP and/or IP that is deceptively similar to its IP. Parties sharing or using the same intellectual property, must ensure that consumers are pointed to the accurate source of such IP, be it the licensee or the actual proprietor.

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    Imposters using domain names to offer fake McDonald’s franchise – injuncted!

    McDonald’s is engaged in the business of quick-service restaurants, which started in the United States of America in 1968. McDonald’s created its iconic Golden Arches logo and is using the same with its trademark "McDonald's" ever since. It ventured into the Indian markets in 1993 and has registered the marks in India as well.
    McDonald’s Corporation and its Indian subsidiary McDonald’s India (“McDonald’s) approached the Delhi High Court1 seeking an injunction against some unidentified imposters who were misusing McDonald’s name, registered trademarks, and the Golden Arches Logo. It was found that these imposters were registering domain names incorporating the registered trademarks of McDonald's and operating fake websites in an attempt to mislead the general public to apply for McDonald's franchise opportunities and collect monies illegally for such franchisees.
    It was also reported that, the existing franchise holders of McDonald’s started receiving several emails on their official e-mail IDs, messages on LinkedIn profiles, calls, and even couriers at their official addresses containing forged signatures of McDonald's franchise application forms and fake approval letters on the fabricated letterhead of McDonald's. 
    Aggrieved by the above, McDonald’s filed a complaint with the concerned police station requesting registration of a FIR and investigation into the fraudulent activities being carried out by misusing the registered trademark and tradename of McDonald's, its GSTIN, and registered address of its franchisee. It also claimed that a caution notice was issued in a leading newspaper.
    Furthermore, McDonald’s also filed a complaint with the domain registrar for suspension of the impugned domain names such as mcdonaldfranchises.com. It stated that when one fake domain was suspended based on the complaint, several other mirror websites with minor variations in the domain names of blocked websites were created by the imposters to continue their fraudulent activities.
    McDonald’s further claimed that no action was taken by the concerned police authorities despite McDonald’s filing a complaint at the Court of the Metropolitan Magistrate, Patiala House Courts, New Delhi seeking directions for registration of the FIR. McDonald’s also filed a similar complaint at the office of the Principal Commissioner, GST, Delhi. 
    It stated that the whereabouts of these defendants are not known. It also made the banks, wherein accounts have been opened by imposters to siphon off the money received from the applicants, parties to the suit.
    The Delhi High Court held that McDonald’s has made out a prima facie case and the balance of convenience is also in its favour. Furthermore, an irreparable loss would be caused to it if the injunction is not granted. 
    Hence the Court restrained the imposters from misusing McDonald's family of trademarks, registered address, GSTIN and their franchisee, domain names, websites, business paper, corporate stamps, etc. or any other similar business identification, in relation to their business and services to pass off or enable others to pass off their goods, services, and business as those of McDonald’s.
    The banks which were made parties to the suit, were also directed to immediately freeze the bank accounts of the imposters and also submit the identity of the account holder, KYC documents, identity-related documents, bank statements from the date of opening of the accounts till date.
    The National Internet Exchange of India was directed to disclose the complete identity of the registrants of the domain names from their records i.e., their names, address, phone numbers, email Ids, billing and payment details and the like.

    1 Mcdonalds Corporation And Anr vs National Internet Exchange Of India - CS(COMM) 324/2020, 17 August 2020

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    Hidden Meanings in Trademarks

    The Logo of the coveted Washington State University represents a roaring Cougar. But if you look closely, you’ll see that the Cougar is actually a stylisation of the letters W, S, and U, representing the term Washington State University in short form! Genius, right? Well so would be its students!
    Like we always say, you cannot unsee it!

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    Know the Real India



    The era of the Gupta reign commenced with the ascension of Chandragupta I to the throne of a fairly large kingdom established by his predecessors. But his son Samudragupta, during his reign of over 2 decades, established suzerainty over the vast land which can be called as an ‘empire in the true sense’. His conquests are documented by his court poet Harisena in ‘Prayag Prashasti’ and are inscribed on a pillar (Allahabad Pillar) situated at Prayagraj in the state of Uttar Pradesh. The inscription lists various states, kings and tribes which were brought under the Gupta empire by Samudragupta.
    Samudragupta conquered 12 states from Dakshinapath (southern part) and 8 kings of Aryavarta (mostly northern India). Many tribal kingdoms and 9 tribal republics either voluntarily or forcefully accepted servitude of Samudragupta. The 5 border states: Samtata (modern day South-east Bengal), Kamarupa, Davaka (now Assam), Nepala (Nepal) and Kartipura (now Kashmir) were paying taxes to Samudragupta. The foreign kingdoms of Kushanas and Shakas, sharing their borders with the Gupta empire, offered their services to Samudragupta. Also, the ruler of Simhala (present day Sri Lanka) Meghavarna established diplomatic and friendly relations with Samudragupta. Samudragupta also carried out the Ashwamedha (अश्वमेध) sacrifice to prove his imperial sovereignty.
    It is believed that the Guptas were devotees of Vishnu, a Hindu deity. However, Samudragupta adopted a policy of religious tolerance. Samudragupta permitted Meghavarna, a Buddhist ruler of Sri Lanka, to build a monastery at Bodh Gaya, an important city in the Gupta empire.
    Samudragupta proved his mettle as a warrior and an administrator. He was also fond of music and poetry. In fact, it is said that he was a Veena maestro (a classical Indian string instrument). Unfortunately, his poetic compositions did not survive the passage of time. 
    Undoubtedly, he was the most celebrated ruler of the Gupta dynasty followed by an able lineage of Guptas which made India the most desirable place in the world at that point in time.

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