Indian Government prepped up to expedite examination of increasing patent and trademark applications

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India is one of the fastest-growing major economy in the world. Further, India is fast emerging as a major market for research and technology driven products. Hence, over the years, the number of patent applications filed in India has soared. In the year 2015, India stood at 9th and 6th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively. Similarly, the number of trademark applications filed in India has soared over the years. In the year 2015, India stood at 2nd and 9th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively.

To handle and prosecute the increase in number of patent and trademark applications, the commerce and industry ministry has been augmenting manpower and is providing training to them. At the CII India-UK Tech Summit held in New Delhi, between November 7-9, 2016 the Joint Secretary in the Department of Industrial Policy and Promotion, Rajiv Aggarwal said that a year ago, the first examination of trademark applications was taking almost a year and half. In the month of November, 2016 the time for first examination of trademark applications has come down to around 4-5 months. By March 2017, it is expected that the first examination of trademark applications will come down to only one month. Similarly, for the first examination of patent applications it used to take approximately 6-7 years. It is aimed to bring down the first examination of patent applications to just 18 months by March 2018.

Conclusion:

It can be clearly seen that Indian patent office is striving to meet the expectations of stake holders when it comes to faster prosecution of the applications related to patent and trademark. Faster prosecution of the applications will lead to further increase the filing of patent and trademark applications, which is beneficial to the stakeholders and the patent office.

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Importance of registering a Trademark: “Sualkuchi’s” Will Tell The Tale

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Having a long tradition of silk weaving, Sualkuchi, in Assam, houses the state’s largest and the oldest silk industry. This silk industry is the provider of employment to local weavers. In the recent years, exploitation of this industry had greatly affected the people as the originality of the silk was compromised with. The local weavers of the silk village have recently breathed a sigh a relief, after a saga of protests demanding a ban of textile products produced outside has ended with the decision of the Controller General of Patents and Trade Marks to issue a trademark to the handloom products.

History

Around March-April, 2013, violence agitated the silk village of Assam. The root cause leading to the violence at Sualkuchi was the procurement and sale of Banarasi silk clothes under the brand of Sualkuchi silk or Assam silk and misleading the people at large. Hundreds of silk weavers of Sualkuchi came out to the streets and burnt down silk products procured from Varanasi, which some local traders were marketing as genuine Assam silk. Heaps of such silk products that were stored in showrooms and godowns of these traders were burnt down to ashes. Local weavers alleged that the traders have indulged in the practice of taking away samples of the indigenous Assamese designs and motifs to traditional silk weaving pockets in places of Varanasi, engage silk weavers of these places to produce adulterated Assamese silk products, and finally taking back the finished products to Assam to sell as genuine Assamese products. The adulterated products were relatively lowly priced.  These aggrieved the local weavers and compelled them to protest such practices.

These events urged people to take steps to rather popularize their craft. It was then, that the initiation of the process of registering a trademark for the original Assamese products started. The “Sualkuchi Tat Silpa Unnayan Samity” applied for the trademark on September 6, 2013. The application was registered against the number 2592761 under class 24. The word “SUALKUCHI’S” will now be found on these silk products woven by the local weavers and artisans of Sualkuchi, as per the provision of the trademark.

Conclusion

Although the hostility that took place is condemned, the CGPDTM’s decision has played an important role in providing the local weavers a ray of hope that their efforts will be recognized nationwide by their registered trademark.

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Patent rejected for Pfizer Wonder drug

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Pfizer was denied a patent by Indian Patent Office for its wonder drug, XTANDI (Enzalutamide), effective for treating prostate cancer with a worldwide sale of 3 billion USD. Though this comes as good news to the consumers as the prices of the drug are expected to drastically reduce, there should not be a deliberate attempt to reject patent applications based on such intentions, which will only stifle innovation. The current market price of the drug is Rs. 3.35 lakhs for one pack containing 112 capsules accounting for a month’s dosage. The drug was developed at the University of California and was acquired by Pfizer when it bought the biotech firm Medivation. The drug is currently sold in India by Astellas Pharma.

The patent rejection was a result of pre-grant opposition proceedings filed by different entities such as BDR Pharmaceutical International, pharma company Fresenius Kabi Oncology and Indian Pharmaceutical Alliance (IPA) in addition to two more persons (Mr. Umesh Shah and Ms. Sheela Pawar). All these oppositions were filed at varying dates ranging from December 2012 to January 2016. The grounds of objection filed by the opponents varied, for example, BDR (Opponent 2) and IPA (Opponent 4) based their objections on grounds of lack of novelty [Section 25(1)(b)] in addition to other grounds whereas Fresenius Kabi Oncology (Opponent 1) opposed mainly on basis of Section 25(1)(e) which is the lack of inventive step.

The inventive step of the patent application was questioned by the Assistant Controller over US5411981 in light of US6518257 in combination with D1 (cited by Opponent 1 as J Med Chem. 2004 Jul15;47(15), 3765-16; A ligand-based approach to identify quantitative structure-activity relationships for the androgen receptors). The claim 3 of the application was found to lack inventiveness in light of US4097578. The final order, dated 8th November 2016, by Mr. Umesh Pandey, assistant controller Patents & Designs, read as, “in view of above instant application is hereby refused as the claimed invention is lacking inventive step under section 2(1)(ja) and also not patentable under section 3(d) and 3(e)”

Meanwhile, the attempts to reduce the prices of the drug XTANDI was also visible in US when various civil society organisations submitted a petition in January 2016 to the US National Institutes of Health (NIH) requesting for authorization of generic production of the drug, which was later rejected by NIH. 

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Indian Supreme court Judgements can be reproduced by anyone

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“No copyright over our judgements.” This is the gist of the ruling given by the Supreme Court in relation to the long-standing dispute, of certain firms holding virtual monopoly over producing the judgements of the apex court in book format and selling it to advocates, institutions and others.

Eastern Book Company (EBC) and Reed Elsevier (whose subsidiary is LexisNexis), two law publishing houses, disputed over the right with regards to the publishing of the Supreme Court judgements.

The dispute dates back to 2012, when Lucknow Bench of the Allahabad High Court gave order, restraining Reed Elsevier India Pvt Ltd from reproducing edited judgements, reported in “Supreme Court Cases” (SCC), published by Eastern Book Company. The judgement was based on the 2008 judgement of the Supreme Court in DB Mondak case as per which copyright vests in the following:

a) Creation of paragraphs in their copy-edited version by segregating existing paragraphs in the original text by breaking them into separate paragraphs and/or by clubbing separate paragraphs, and in the paragraph numbering.

(b) Internal referencing, after providing uniform paragraph numbering to multiple judgements.

(c) Inputs in respect of editor’s judgement regarding the opinions expressed by the Judges by using phrases like “concurring”, “partly concurring”, “dissenting”, “partly dissenting”, “supplementing”, etc.

(d) Editorial notes.

(e) Head notes

The argument, Eastern Book Company had put forth was that the SCC were based on its editors reading the entire judgement, understanding the questions of law and facts involved and then classifying the SCC as ‘concurring’, ‘partly concurring’, ‘dissenting’, ‘partly dissenting’ or ‘supplementing’. In these tasks, the editor uses sound judgement, creativity and legal skill. A very significant role done by the editor is to input the references, clarifications and explanations to the raw text of the judgements, either in the text or as footnotes and, most importantly, he puts editorial notes and comments.

 On the other hand, Reed Elsevier had argued that no publishing firm can claim copyright over Supreme Court judgements and that EBC was merely reproducing judgements uploaded on the judgement section of the Supreme Court’s website.

The court had ruled in favour of EBC and dismissed the case. The decision had prompted Reed Elsevier to approach the apex court.

On 23rd November 2016, a Supreme Court bench of Justices Ranjan Gogoi and NV Ramana, upheld the High Court’s ruling and dismissed the case. It ordered that no one can claim copyright over the judgements delivered by the apex court and that the judgements could be reproduced in its raw form by anyone without the risk of being accused of infringing copyright. However, it did clarify that Reed Elsevier cannot use the headnotes, footnotes, editorial notes, paragraph numbering, etc. used by the EBC as their own, as stated in the DB Mondak case.

We hope this article was a useful read. The attached judgement can be downloaded for your reference. 

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PHOTOCOPYING – Is it an act of Copyright infringement?

It is common practice to photocopy pages and excerpts of books or an entire book for educational purposes or purposes of providing instructions (or guidance etc.). Copier service providers run their services by charging a nominal rate for the copies on a per page basis. One of the reasons why using photocopies of books is preferred over purchasing the books, is the high cost involved with such books. The decisive question here is, whether the party (copier and/or the students) involved in making photocopies of someone’s literary work, be it for commercial profit making, or just for reasonable educational purposes infringe copyright.

The Delhi High Court’s judgement in The Chancellor, Masters & Scholars of The University of Oxford & Ors. Vs. Rameshwari Photocopy Services & Anr. dated September 16, 2016 is a benchmark decision that throws light on whether such acts are to be considered infringing.

In 2012, Plaintiffs, Oxford University Press, Cambridge University Press and Taylor & Francis had filed infringement suit against Rameshwari photocopy shop, the first defendant (the second defendant being Delhi University), a licensed vendor located in DU’s. The Plaintiffs alleged that the Defendants have infringed the copyrighted publications owned by the Plaintiffs by photocopying, reproducing and distributing copies of the publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the Plaintiffs’ publications and compiling them into course packs. Following this, the court passed an interim order preventing the photocopy shop from selling the compilations of photocopied texts.

Delhi University (second defendant) in their argument, supported the photocopier, stating that the reproduction of copies of books was for “reasonable educational needs” and not for “commercial profit making” thereby denying any act of infringement. The University stated that the syllabi for each academic year along with suggested reading materials are contained in different books of different publishers sold at high price, which may often pose as financial burden on the students. Moreover, owing to limited availability of copies of such books with the library, making copies become necessary.

However, the decision of Justice Rajiv Sahai Endlaw was not what would have favoured the Plaintiffs. Justice Endlaw has stated in his ruling that the action of each of the students of having the book issued from the library of the University and copying pages thereof, whether by hand or by photocopy, is not an act of infringement under the Copyright Law and dismissed the trial denying any act of infringement by the defendants.

This decision of the Court has upheld the basic rights of public to accessibility of educational materials and that limiting access to such materials is not acceptable as long as such acts are not meant for commercial exploitation of someone’s intellectual property. The decision has also opened eyes of public to look at laws and requirements that would benefit the public interest rather than following norms that would benefit private interest.

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Marrakesh treaty comes to force in India

Marrakesh VIP Treaty, a treaty on copyright, was adopted on June 28, 2013 in Marrakesh, Morocco. India, ratifying the treaty on 24 June 2014 at the 28th session of the Standing Committee on Copyright and Related Acts in Geneva, became the first nation to do so. Since then, 21 countries have followed suit. Much to everyone’s delight, the treaty has come into force on the 30th of September 2016.

It is not uncommon for the blind to endure hardships reading a printed book. Indeed, there are Braille books available all across the world to help the visually impaired, but not without its own troubles. The previous Copyright Laws did not offer much in this regard.
Indian Copyright Act of 1957 had no provision to facilitate the production and distribution of books in formats accessible to print-impaired readers. While the practice of converting books into Braille format did exist, doing so was not easy. Obtaining permission from publishers, authors is never an easy task, especially when money and other monetary benefits are involved.

With the Treaty coming into force, books can now be produced in Braille and other formats by organisations that cater to print-impaired readers, without seeking permissions from the publishers or the copyright holders. Further, it also allows Indian organisations to borrow books in accessible formats from libraries and other institutional holdings across the world. Beyond question, an exceedingly significant and grinning effect. In India, where policies take ages to get implemented, this one has already come into effect.

Books existing in an accessible format in another part of the world can now be loaned to an Indian organisation, without them having to go through the trouble of making a copy. Accessible Books Consortium (ABC), established by WIPO in June 2014, has already realised this vision. ABC has a centralised electronic multilingual catalogue of accessible books produced by libraries from across the world for the blind. This helps in countries accessing books available in other parts of the world. Nineteen libraries for the blind from 16 countries are already part of it.

In August this year, India launched Sugamya Pustakalaya, the largest collection of online accessible books available in the country. Once Sugamya Pustakalaya becomes part of ABC, many more visually impaired readers in India would have access to books from across the world, in different languages.
At a time when laws pertaining to Intellectual Property are being used as a tool to make the essential commodities costlier and further the divide between the upper class and the middle class, the Marrakesh Treaty, can be seen as the means in which the Intellectual Property laws can be used to make the world more kind, just, unprejudiced and humane.

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Monsanto Seed Patent Controversy

Monsanto, a US based agrochemical and agricultural biotechnology company, has been in news for its controversy over rights exercised by them based on their Indian patent 232681 related to genetically modified cotton seeds (Bollgard II). These seeds were obtained by introgression of certain genes of bacteria Bt (Bacillus thuringiensis) into cotton genome, thereby improving its resistance towards one of the deadliest cotton pest, bollworm. Monsanto, in a joint venture with an Indian company Mahyco Seeds Limited, has been licensing this patented technology (Bollgard II) to around 49 other Indian seed companies within the scope of agreements and royalty payments. In this way, over the last decade, around 90% of the cotton grown in India were making use of the patented technology from Monsanto, which improved drastically the cultivation of cotton since 2002, as per the reports.

However, over some years, legislation enacted by state governments for controlling retail prices has affected Indian companies as the legislation had no effect on royalty charges being paid to Monsanto. Due to this, the National Seed Association of India (NSAI), comprising of several Indian seed companies, have been in a dispute with Monsanto. Moreover, there have been reports of patent invalidity proceedings at DIPP (Department of Industrial Policy and Promotion) based on the clauses of Section 66 of Patents Act that could revoke a patent on grounds that the patent is “mischievous to the state or generally prejudicial to the public”.

As per reports, the Indian government slashed the royalty fees charged by Monsanto over Bt cotton seeds by 74% in March 2016. This move seems to have discouraged Monsanto from launching new seeds called Bollgard II Roundup Ready Flex technology in India, anticipating future losses. It said that it will “re-evaluate every aspect” of its position in India and re-think bringing new technologies in a regulatory environment that is “arbitrary and innovation stifling”.

Monsanto is currently being acquired by Bayer amidst its battle with Indian seed companies and Government over royalty prices. Meanwhile, NSAI has been making further moves by writing to the agricultural ministry stating that Monsanto has been falsely representing patent rights over seeds and plant varieties. The Indian Government expects to develop its own genetically modified cotton seeds to end Monsanto monopoly.

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Infringement of IP associated with the Rubik’s Cube

Seven Towns, which owns IP associated with Rubik’s Cube had filed a suit alleging infringement of their IP by Kiddiland. The Rubik’s cube was invented in 1974 by Erno Rubik and its 1975 patent has since expired. However, Seven Towns Ltd. (Plaintiff 1) owns the trademark of “Rubik” and “Rubik’s Cube”, trade dress of Rubik’s cube and the copyright in artwork of label on the packaging of Rubik’s cube. In India, Seven Towns Ltd. imports and distributes Rubik’s Cube through Funskool (India) Ltd. (Plaintiff 2), its authorized licensee.

In the case of Seven Towns v. Kiddiland, available here, at the time of filing the suit, Seven Towns Ltd. did not have any registrations for the three-dimensional Rubik’s Cube in India. Hence, Seven Towns Ltd. filed a case against Kiddiland and Cybershop Marketing Pvt. Ltd. related to passing-off of the trade dress of Rubik’s cube and copyright infringement related to its packaging. In this regard, Seven Towns Ltd. also provided a list of worldwide registrations and countries wherein the trade dress of Rubik’s cube had been accepted as a three-dimensional trademark.

According to the Plaintiffs, the distinctive features of the Rubik’s cube trade dress were as follows:

  1. A black border/cage consisting of lines of a particular width along with each of the six faces of the cube covered with nine square stickers with rounded edges, the stickers consist of particular shades of six solid colours namely red, blue, orange, green, white and yellow.
  2. The specific size and shape of the Rubik's Cube.

The Plaintiffs felt that the overall impression of the Rubik’s cube may be considered as an artistic work falling under on Section 2(c) of the Copyright Act, 1957. Further, they asserted that they are deemed to be entitled to protection in India by virtue of the International Copyright Order, 1999.

The Defendants argued that the Plaintiffs cannot claim exclusive rights over the basic colours or the black colour forming the border/cage. However, the court was of the opinion that the Plaintiffs were seeking protection over a combination of all the features and colours that constitute the appearance of the Rubik’s cube, namely, a combination of shape, size, colours, and black borders of the squares in the Rubik’s cube.

The court was provided with scanned copies of the two parties as shown below.

Plaintiff’s Rubik Cube:

rubik1

Defendant’s Rancho Cube: rubik-2The Plaintiffs’ pointed out that the appearance, packaging and labelling of the two products are similar in nature, and that there are more similarities than dissimilarities. The court agreed and was of the opinion that the Plaintiffs’ presented a strong case to establish passing-off. Hence, they upheld the claim of infringement as presented. Further, the court mentioned that if the Defendant attaches his own label to the trade dress of the prior user (the Plaintiffs’ Rubik’s cube), such a label would result in deception and also leads to a diluting of the Plaintiffs’ goodwill in the trade dress.

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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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