Tata Sky Vs. YouTube – 101 On Video Takedown

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Companies might come across a situation where a video providing a way to circumvent their technology has been uploaded on an intermediary video hosting website. Such videos could have a detrimental effect on the company as well as its customers. One of the best ways to tackle such a situation before things go out of hand is by filing a complaint with the intermediary video hosting website to take down the video.

A similar situation was experienced by Tata Sky Ltd. (herein after referred to as “Tata Sky) who provides Direct to Home (herein after referred to as “DTH”) services to its subscribers through Set-Top-Boxes (herein after referred to as “STBs”) within the territory of India. Technological measures such as encryption were adopted on STBs of Tata Sky, which gave access to TV channels/contents that were available only to its subscribers. A video on YouTube uploaded by a third party taught how to break the encryption code on the STBs to access HD contents for free without subscribing to Tata Sky. Illegitimate access to HD contents on Tata Sky STBs was violative of its rights and of broadcasters who own the HD content that broadcast through Tata Sky platform, and was an offence under Section 66 of the IT Act. YouTube, on which the video was uploaded, was an intermediary according to subsection 4 of section 3 of Information Technology (Intermediary Guidelines) Rules, 2011.

YouTube website provides a list of categories of complaints under which one can file a complaint. Tata Sky had selected “other legal issue” among the list of categories of complaints provided on YouTube website. Tata Sky made a complaint to YouTube LLC to remove the video which taught the steps to break encryption code on the STBs of Tata Sky. The practice of the teachings of the video was an offense under Section 66 of the Information Technology Act, 2000 and hence, the complaint referred to Section 66 of the Information Technology Act, 2000. The complaint also required YouTube to immediately remove the video from YouTube website no later than 36 hours of receipt of the notice in line with sub-section 4 of Section 3 of the Information Technology (Intermediaries Guidelines) Rules 2011.

YouTube in its response to Tata Sky said they “have determined that a takedown notice under Section 512(c) of the DMCA is not appropriate for this type of complaint.” Further, Tata Sky was asked to consider submitting a complaint for other legal issues including alleged circumvention of technological measures.

During further exchange of correspondence between YouTube LLC and Tata Sky, YouTube viewed the complaint as one of a copyright violation and asked few questions to be answered by Tata Sky. Thereafter, Tata Sky filed a petition in the Delhi court to order an injunction to YouTube for unauthorized use of Tata Sky trademark. Based on the injunction ordered by the court, YouTube took down the video.

The court noted that the correspondence exchanged between YouTube LLC and Tata Sky reflected confusion to decide whether the complaint pertained to a trademark or a copyright infringement or to some other legal issue. YouTube has community guidelines to guide a person uploading content on what should not be uploaded. But the number of videos that are uploaded to YouTube are very huge, which makes it difficult to administer videos belonging to third parties and determine whether such videos are infringing the trademark, copyright or other proprietary rights.

Advocate appearing for YouTube LLC said that for certain contents such as child pornography as an instance, YouTube would not get into the exercise of first ‘categorising’ the complaint before proceeding to take down the content. The court was of the opinion that if YouTube’s review team had taken such a similar call based on the nature of the content of the video in question, then Tata Sky could have avoided approaching the court.

The court stated also that: “… there could be complaints regarding some material on the website of YouTube which by their very nature require it to act immediately without insisting on the Complainant having to clearly demonstrate that the complaint falls within one or the other category that YouTube has identified for the purposes of acting on such complaints.”

Advocate appearing for YouTube LLC stated that “every Court order is an occasion for YouTube to review its policy and strengthen it further.”.

In conclusion, it is hard for the reviewers of the video hosting website to review each and every video that is uploaded. Hence, it is advisable to the complainant to make the reviewers understand the nature of content of the offending video, which requires immediate removal of the video from the video hosting website.

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Generating Indian Trademark Registration Certificates is Only Few Clicks Away

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Over the past few years, various initiatives have been taken up to automate IP filing, prosecution, registration and maintenance in India. As part of these initiatives, the Indian Trademark Registry has announced successful automation of generation and issuance of trademark registration certificates.

It shall be noted that the option to access trademark registration certificates online will be initially available for trademark applications which have been published in the trademarks journals dated November 11, 2015 and thereafter.

The trademark registration certificates will be accessible to the trademark agent on record. The registration certificates will also be emailed to the trademark agent.

The initiative, as is evident, will substantially cut down paper work. This will also help the Trademark Registry streamline tasks, and concentrate on tasks that will help the registry clear the backlogs.  

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A guide for startups to obtain DIPP Certificate to Avail Benefits in the Indian Patenting Process

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In the month of May 2016, several amendments were made to the Indian Patent Rules, which enabled start-ups to avail expedited examination of their patent application. The amended Rules also set out the criteria to qualify as start-up. The Rules do not mandate certification by any government agency to qualify as start-up. However, the patent office has set-out an additional requirement, although questionable, for Indian entities to qualify as start-up. The additional requirement is not applicable to Non-Indian entities, and the patent office at present has not set out clear guidelines on how it would deal with Non-Indian entities claiming start-up status. Hence, Non-Indian entities may continue to meet the criteria as defined by the Rules to claim start-up status.

The patent office requires an Indian entity claiming start-up status to obtain a certificate from Department of Industrial Policy & Promotion (DIPP). The certificate may be obtained after the patent application has been filed.

The procedure below is only for applicants who have already filed a patent application and the same is published.

  1. Visit http://startupindia.gov.in/registration.php and fill in the details requested in the form
  2. Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”
  3. Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application
  4. Upload incorporation/registration certificate
  5. Against “Brief note on innovativeness of products /services offered by the entity”, upload a document in PDF format that provides details relating to the nature of business of your company and why products /services offered by your company is innovative
  6. With respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option
  7. Submit the application upon self-certification

We hope you find this information useful to avail benefits offered in the Indian patent system to start-ups from across the world.

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Transfer of Foreign-owned IP Not Taxable in India

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The Delhi High Court recently passed a judgment in the matter of CUB Pty Ltd (formerly known as Foster’s Australia Ltd.) Vs. Union of India. The judgement was in response to a writ petition filed as a result of Authority for Advance Ruling’s (AAR) ruling that income from the sale of the Trademarks is deemed to be income accruing in India, although the owner of the Trademark was located outside India. The basis for AAR’s ruling was that the IP was used, developed and registered in India, and should therefore be regarded as ‘situated in India’.

The Court decided in favour of CUB by holding that the location of the owner of an intangible asset would be the closest approximation of the location of an intangible asset. The court’s decision was based on the well-accepted principle of ‘mobilia sequuntur personam’, in the absence of specific provision in this regard.

While the judgement will no doubt be well received by companies involved in cross-border IP transactions, mergers and acquisitions, there is a possibility that the tax authority may appeal at the Supreme Court, considering the far-reaching implications.

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Its Official – Section 3(D) is the Most Formidable Hurdle for Pharmaceutical Patent Applications in India

The Indian Patent Office has been vehemently using Section 3(d) of the Indian Patent Act to prevent innovator companies from evergreening patents. This section of the Act has been a matter of debate and deliberation over the years. While several multinational innovation companies have not left any stone unturned to show this section in bad light, social welfare groups swear by it. 

Till recently, it was only by way of experience and surrounding speculation, it was considered that Section 3(d) is one of the most formidable hurdles for pharmaceutical patent applications in India. However, the official number of pharmaceutical patent applications that were rejected using Section 3(d) is now out.

The Minister of Commerce and Industry under which the Indian Patent Office functions has officially presented these numbers. As per the official statement, in the past three years, 955 patent applications in the field of pharmaceutical have been rejected. Out of the 955 patent applications, 618 patent applications have been rejected by citing Section 3(d) as one of the grounds for rejection.

Hence, based on the last 3 years’ statics, it can be concluded that, 65% of the pharmaceutical patent applications are rejected in India by citing Section 3(d) as one of the grounds. The statics clearly indicate that the patent office is extremely wary of applicants attempting to evergreen patents, and such attempts will most likely be confronted with Section 3(d).

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Indian Trademark Registry Clearing its Backlogs by Abandoning Applications!

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Several initiatives are being taken up to clear backlogs of trademark applications at the Trademark Registry. In one such initiative, several trademark examiners have been recruited. The increase in the number of examiners will certainly help in clearing some of the backlog, and expediting the examination process of newly filed trademark applications. However, improvement in efficiency in the operations of the Trademark Registry as a result of this initiative will certainly take considerable time.

Given the uproar by the international community about the slow processing of trademark applications in India, the Registry is hard pressed to show results in the short term. One of the ways to showcase improvement efficiency is by decreasing the number of backlog applications. In an effort to decrease this number, the Registry ordered abandonment of over hundred and fifty thousand applications in March 2016, alleging that applicants of these applications had not responded to examination reports. The Registry had to retract from its order considering that the facts stated by the Registry were not entirely correct.

Subsequently, the Registry dispatched examination reports for over 13000 applications, out of which the Registry alleges, it has not received reply for 9578 applications. The Registry, by way of notification dated July 11, 2016 has informed that these applications will be abandoned if reply is not received by July 31, 2016. The 9578 applications, which are likely to be abandoned, have been listed in the Registry’s journal.

The relevant portion of the journal can be accessed here 

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Toyota Wins the PRIUS Trademark Case to Set the Stage for Enforcing Unregistered Marks

Enforcing an unregistered mark is a challenge; more so when the mark is used and registered by another entity. Toyota found itself in a similar situation with regards to its trademark PRIUS.

In brief, Toyota sold its first PRIUS in the year 1997 in Japan, while PRIUS was launched in India only in 2010. In the year 2001, Deepak Mangal, the defendant in the case, adopted the mark PRIUS. The defendant even filed for registration of PRIUS in 2002, and the mark was registered subsequently. Toyota filed a suit to restrain the defendant from using the mark PRIUS, and came out victorious in a long drawn legal battle, which concluded in July, 2016.

One of the questions which the court tried to answer was whether Toyota’s trademark PRIUS enjoyed the status of well-known mark in 2001 and whether the trademark PRIUS had spill over reputation in India way back in 2001.

The evidence put on record by Toyota convinced the court that Toyota’s trademark PRIUS enjoyed the status of well-known mark and had spill over reputation in India way back in 2001. The evidence that proved the same is of importance, since similar evidence may be used in future by owners of marks who may never have adopted their marks in India, in the strict sense. A brief overview of such evidence is provided below.

Registration of the trademark in several countries

Toyota had registered their trademark PRIUS in 27 countries by as early as 1998.

Website

Toyota’s websites, which is accessible across the world, including India, were considered as one of the means by which the goodwill and reputation of the trademark PRIUS travelled in India.

Advertisements and articles

Books, advertisements and articles in trade magazines, write ups in newspapers and in other media were also considered to have spread awareness, knowledge and information amongst the Indian viewers about the trademark.

The judgement, apart from dealing with enforcing of unused and un-registered marks in India, also deals with concepts of passing off, which make it a judgement which must be read by everyone interested in trademark enforcement in India.

The judgement can be downloaded here 

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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.

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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.

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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. 

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