ULTRA Marks Ultra-low Trademark Protection

Trademark battle between two giants of the Indian cement industry has led to a judgement that deals with claiming monopoly for any particular part of a trademark. UltraTech Cement Limited (“UltraTech”) filed a case against Dalmia Cement Bharat Limited (“Dalmia”). UltraTech alleged that a mark “Dalmia ULTRA” infringes on their trademark. The court did not find merits in UltraTech’s alligations.

UltraTech has several registered device/label marks, such as “UltraTech Cement”, “UltraTech Cement The Engineer's Choice”, “UltraTech concrete we make good concrete better”, “UltraTech readymix”, “Ultracem”, and “UltraTech white cement Pure White Cement”, among others. As is evident, the word “Ultra” forms an important part of their marks. Hence, UltraTech attempted to claim monopoly over the word “Ultra” by alleging that “Dalmia ULTRA” infringes on their trademarks.

The judgement deals with various aspects of claiming monopoly over a part of a trademark, which are herein discussed.

A trademark may include distinctive and non-distinctive portions. As an example, in the mark “UltraTech Cement”, the word “UltraTech” may be considered distinctive, whereas “Cement” may be considered as non-distinctive. One cannot establish monopoly over a non-distinctive portion of the mark is well established. Hence, in this example, one cannot establish monopoly over the word “Cement”. In this example, even when the distinctive portion, “UltraTech” is broken down into parts, such as, “Ultra” and “Tech”, each one of the parts of a distinctive portion of the mark may be held to be non-distinctive. Hence, UltraTech could not enjoy monopoly over the word “Ultra”.

A word may be considered as non-distinctive especially when such a word is commonly used in relation to the goods/services to which the trademark is applied. An adjective is more prone to be descriptive, rather than being distinctive. The judgement reasoned that “[s]ince we are here concerned with 'cement', a manufacturer may commonly describe his goods as ultra-tough or ultra- strong. No individual trader can possibly monopolize the term 'ultra' per se. Prima facie the word cannot be distinctive of any particular trader's goods.”

Monopoly may still be established over a part of a trademark if such part has come to be associated exclusively with the owner of the trademark goods/services by reason of a long, continuous and exclusive use. In the current case however, the judgement emphasised that “the corporate identity as well as stock and goods of [UltraTech] may be said to be associated with the word 'UltraTech' but not the word 'Ultra' itself.”

Further, there are better chances of claiming monopoly over a part of a trademark, if such part is a “fancy” word (example – “VapoRub”). Additionally, to establish monopoly, such a fancy word should “[evoke] an association with the [trademark owner’s] goods by reason either of its being part of the … registered trade marks or of the extensive sales and advertisements of the [owner’s] goods.” In the current case however, the judgement asserted that “Ultra” “cannot be said by any stretch of imagination …[to be] a fancy word…It is a common English word mostly used as a prefix, …and cannot be described as a prominent or essential feature of the Plaintiff's mark, affording the Plaintiffs a monopoly of its use.”

In essence, establishing monopoly over part of a trademark cannot be ruled out. However, to establish monopoly, such part should meet certain criteria as discussed earlier.

You can contact us to explore the option of working together. 

Best regards – Team InvnTree   

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Limited Requests for Expedited Examination of Patent Application in India

In the month of May 2016, several amendments were made to the Indian Patent Rules. The amendment introduced the option to expedited examination of patent applications, provided certain conditions are met. The amendment had also made it certain that the number of requests for expedited examination that will be allowed will be limited. Newly introduced rule, 24(C)(13), gave the Controller General of Patents, Designs and Trade Marks (CGPDTM) the authority to restrict the number of requests for expedited examination to be received every year.

Rule 24(C)(13):

Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

The CGPDTM, on June 14, 2016, has published a notification limiting the number of requests for expedited examination that will be accepted till December 31, 2016. As per the notification, the number of requests for expedited examination is restricted to 1000.

The Patents (Amendments) Rules, 2016 have come into force w.e.f. 16, May, 2016. In this regard the stakeholders and general public are hereby informed that in terms of provisions of sub-rule (13) of Rule 24C relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before 31" December, 2016 has been limited to 1000 requests.   

At present, the patent office website does not provide a dynamic utility to display the number of requests that are available in real time. Hence, at the time of filing requests using the online portal of the patent office, one will be able to know whether the number has been exhausted or not. Alternatively, we believe that the CGPDTM will again have a notification published once the number is exhausted.

At the time of writing this piece, request for expedited examination could still be filed. However, considering that 1000 is a small number relative to the number of patent applications filed in India, we anticipate the requests to be exhausted within the next couple of month, if not before that.

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

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Enforcement of Standard Essential Patents in India

Ericsson has been going all out to enforce its Standard Essentials Patents (SEP) against several mobile phone companies, such as Micromax, Intex and Lava, among others, who are primarily selling mobile phones in India. The outcome of these law suits will no doubt play a significant role in defining the future of licensing and enforcement of SEP in India.

The latest in these law suits is an interim judgement by The High Court of Delhi in the matter between TELEFONKTIEBOLAGET LM ERICSSON (Ericsson) and LAVA INTERNATIONAL LTD (Lava). The interim judgement is in favour of Ericsson. More importantly, the judgement deals with various aspects of licensing and enforcement of SEP.

The judgement held that, as is the well-established practice, demonstrating or establishing compliance of a device or a process with concerned standard is sufficient to confirm that the device/process is infringing an SEP.

As a step-wise approach, to allege infringement of an SEP, the following may be done:

  • Set out the relevant standards;
  • Map the standards with the claims;
  • Wherever implementation is optional, testing shall be done;
  • Wherever implementation is compulsory, an expert affidavit shall be furnished.

The judgement favours passing injunction order once an SEP patent prima facie is held to be infringed and no credible defence is established. In case any party is reluctant or unwilling and deliberately and intentionally avoids entering into license agreement on flimsy grounds, the injunction order is to be passed.

The judgement also appears to suggest that once the owner of SEP has entered into several FRAND agreements, the balance of convenience lies in favour of the owner, necessitating an interim order to be passed. The reasoning provided is that, in case the interim order is not passed or the defendant is not ready to enter into FRAND agreement, other licensees would also take the same stand which is being taken by the defendant. Hence, under such circumstances, the owner of the SEP would suffer irrecoverable loss and also injury.

The operative parts of the interim order (w.e.f. June 21, 2016) include the following:

  1. Lava shall not import mobiles under the patents and technology, which are subject of the suit patents, and not to sell the same in the market, directly or indirectly through agent, shopkeepers, dealers, distributors or any other person on its behalf. 
  2. Lava shall also not export the impugned goods.
  3. All Custom Authorities in India are directed not to release the impugned mobile phones if received from overseas countries under technology of suit patents of Ericsson to the Lava or any person on its behalf.

The operation of the interim order shall remain stayed till the final disposal, if the following conditions are met by Lava.

  1. Deposit a sum of INR 50 crores (approx. USD 7.7 million) with the Registrar General of the Court by way of FDR as security amount on or before 20th June, 2016;
  2. File statement of accounts for the period of 2011 to 31st May, 2016 before the Court by 10th July, 2016; and
  3. Continue to file statement of accounts every quarterly till the final judgment is delivered in the main suit.

The judgement is clearly in favour of Ericsson at this juncture. We will continue to monitor and analyse the suits involving Ericsson concerning their SEP in India, since the judgements will have far reaching implications on the subject of licencing in general, and licensing of SEP in particular.

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

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US Patent Cases Weekly Update May 31st June 7th, 2016

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

Go ahead, download the compilation for free!
Download in PDF format 
Download in spreadsheet format 
 
Feel free to check whether any of our patent support services can address your requirements.
You can also contact or ask us  a question and have it answered within 24 hours.
We specialize in offering patent support services to patent practitioners across the world.
 
Best regards – Team InvnTree   

US Patent Cases Weekly Update May 24th May 31st, 2016

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

Go ahead, download the compilation for free!
Download in PDF format
Download in spreadsheet format
 
Feel free to check whether any of our patent support services can address your requirements.
You can also contact or ask us  a question and have it answered within 24 hours.
We specialize in offering patent support services to patent practitioners across the world.
 
Best regards – Team InvnTree   

Patent Office India Published Patent and Design registration Information May 27th, 2016

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree.

The attached Pdf can be downloaded here

and can also be accessed  below.

If you would like to get weekly email updates of  Indian Patent office's published patent information, Subscribe to this service free of cost 

The publication includes published patent applications, design registration and granted patents, among other information, for the week of  May 27th, 2016

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as: 
1.    File pre-grant opposition on filed patents

2.    File post-grant opposition on granted patents 
 
I hope you find this data helpful. Check our patent services  page to find out if we cater to your needs.
In addition to providing other India specific patent services, InvnTree provides patent services such as, PCT National Phase filing in India
 
Also, feel free to contact us or ask us  a question and have it answered within 24 hours.This work is licensed under a  Creative Commons Attribution-NonCommercial 3.0 Unported License

US Patent Cases Weekly Update May 17th May 24th, 2016

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

Go ahead, download the compilation for free!
Download in PDF format
Download in spreadsheet format
 
Feel free to check whether any of our patent support services can address your requirements.
You can also contact or ask us  a question and have it answered within 24 hours.
We specialize in offering patent support services to patent practitioners across the world.
 
Best regards – Team InvnTree   

Patent Office India Published Patent and Design registration Information May 20th, 2016

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree.

The attached Pdf can be downloaded here

and can also be accessed  below.

If you would like to get weekly email updates of  Indian Patent office's published patent information, Subscribe to this service free of cost 

The publication includes published patent applications, design registration and granted patents, among other information, for the week of  May 20th, 2016

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as: 
1.    File pre-grant opposition on filed patents
 

2.    File post-grant opposition on granted patents 
 
I hope you find this data helpful. Check our patent services  page to find out if we cater to your needs.
In addition to providing other India specific patent services, InvnTree provides patent services such as, PCT National Phase filing in India
 
Also, feel free to contact us or ask us  a question and have it answered within 24 hours.This work is licensed under a  Creative Commons Attribution-NonCommercial 3.0 Unported License

 

Expedited Patent Examination in India

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Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

  • The patent applicant is a start-up
  • The patent applicant was a start-up at the time of filing the patent application
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

  • The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
  • The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

fee structure

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Conversion to expedited exam fee

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Flowchart for expedited examNote that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

You may also download the article for your reference. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

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Qualifying as a start-up as per the Indian Patent Rules

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Introduction

The Indian Government has announced various initiatives to promote start-ups. One such initiative brings various benefits to start-ups in their patenting initiatives. The benefits primarily correspond to discounts in government fees and expediting of patent examination. The government fees charged for start-ups will be the same as that charged for natural persons (individuals). In this article, we discuss the criteria to be met by an entity, regardless of whether the entity is Indian or not, to qualify as a start-up.  

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Criteria to qualify as start-up

Most of the criteria are objective, with one criterion being subjective in nature. To begin with the objective criteria are listed as questions, and if the answer to each of the below listed questions is in the affirmative (yes), then the entity qualifies as a start-up.

  1. Is the applicant for a patent a Private Limited company as defined in the Companies Act, 2013 or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002?

Explanation: At present, it appears that Non-Indian partnership and limited liability partnership firms may not qualify as start-ups, since registration in India of such firms appear to be mandatory to claim benefits. However, a Non-Indian entity as long as it meets the definition of a “Private Limited Company” as defined in the Companies Act, 2013, can qualify as start-up. The definition is provided below.

“private company” means a company having a minimum paid-up share capital of one lakh rupees (USD 1515 at conversion rate of USD 1 = INR 66) or such higher paid-up share capital as may be prescribed, and which by its articles,—

  • restricts the right to transfer its shares;
  • except in case of One Person Company, limits the number of its members to two hundred:
  • Provided that where two or more persons hold one or more shares in a company jointly, they shall, for the purposes of this clause, be treated as a single member:
  • Provided further that—

(A) persons who are in the employment of the company; and

(B) persons who, having been formerly in the employment of the company, were members of the company while in that employment and have continued to be members after the employment ceased, shall not be included in the number of members; and

  • prohibits any invitation to the public to subscribe for any securities of

 the company;

  1. Has the entity been registered or incorporated within the last five years?
  2. Has the turnover of the entity in each of the financial year in the last five years been less than INR Twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66)?
  3. Has the entity been formed without splitting up or reconstructing a business, which was already in existence?

The entity has to provide evidence in support of the above listed criteria to be recognized as start-up. The evidence for an Indian entity can include registration or incorporation certificate, and Balance sheet/Income tax acknowledgment for the corresponding years. Whether a declaration by a Chartered accountant regarding the income of the company be accepted is yet be determined. A foreign entity may provide equivalent documents as evidence.

Further, with regards to the subjective criterion, an entity to qualify as start-up should  be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property. The criterion is considered to be met if the entity aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow. The entity may provide evidence supporting its claim to have met this criterion by providing a declaration mentioning that based on the patent application that is being currently filed they are working towards developing and commercializing a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

We hope this article helps patent applicants decide which type of entity they fall under. You may also read our article to know about how to claim small entity status

You may also download the article for your reference. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License