Judgement to increase transparency in functioning of the Trademark Registry

Trademark infrignement

A recent judgment makes it mandatory for the Registrar to record in writing the grounds for refusal or conditional acceptance of the application for registration of Trademarks.

This deviates from the prevailing practice in which the Registrar could refusal or conditional accept registration of Trademarks without recording the grounds for the same. Subsequently, the Applicant could apply to the Registrar seeking grounds for refusal or conditional acceptance. Such a practice was consistent with the provision of Rule 36(1) of the Trade Marks Rules, 2017, which is reproduced below.

36. Decision of Registrar.— (1) The decision of the Registrar under rules 33, 34 or 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.

While the prevailing practice was consistent with the aforementioned rule, Section 18(5) of the Trade Marks Act, 1999, requires the Registrar to record in writing the grounds for such refusal or conditional acceptance.

18. Application for registration.

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

Taking into cognizance the inconsistence between the provision of Section 18(5) and Rule 36(1), the Court held that Section 18(5) prevails over Rule 36, thereby making it henceforth mandatory for the Registrar to communicate grounds for refusal or conditional acceptance of application for registration of trademark. 

Useful download: Judgement in the matter of Intellectual Property Attorneys Association Versus The Controller General Of Patents, Designs & Trade Marks & Anr

Functioning of Intellectual Property Appellate Board

IPAB

The Intellectual Property Appellate Board (IPAB), which hears appeals against the decisions of the IPO, has been dysfunctional owing to lack of appointment of chairperson. In a related petition filed by Novartis AG, an ordered was passed seeking information regarding the total number of pending cases, and appointment of chairperson and technical members of IPAB. Further on, in a matter that has implications on the functioning of the IPAB, the Supreme Court struck down Tribunal, Appellate Tribunal and other Authorities Rules, 2017, and currently the Trademarks Act will govern the appointments to the IPAB till new rules are framed. With these developments, we hope the IPAB will be functional soon. Download Novartis Order and Supreme Court Judgement

IPO releases new manual for patent office practice and procedure

MPPP

The IPO has released a new Manual of Patent Office Practice and Procedure (MPPP). The manual has been prepared after taking into consideration stakeholders’ inputs on the draft manual published in March 2019.

The manual replaces the earlier manual of 2011. The manual takes into consideration the multiple amendments that have been made to the Patents Rules 2003 over the years and the substantial digitization of the processes at the IPO.

It should be noted that manual does not constitute rule making and, hence, does not have the force and effect of law. However, since the personnel at the IPO are expected to follow the practice and procedure laid out in the MPPP, the manual will largely dictate the general procedure that is likely to be practiced by patent agents during prosecution of patent applications.

The manual, compared to its earlier version, provides insight into how documents need to be submitted electronically and physically, when required, owing to the digitization efforts of the IPO. The manual also provides insight into certain procedures that have been streamlined owing to IPO’s adoption of WIPO-DAS. Additionally, the manual provides clarity on certain formal and procedural aspects, wherein the practice was not uniform across Controllers of various offices of the IPO, and with these clarifications, we expect uniformity in practice.

Regarding general contentious issues during prosecution, the manual incorporates a few case laws relating to “inventive step” requirement of patentability. However, regarding “non-patentable” subject matter requirement under Section 3 of the Act, the manual points to existing guidelines that specifically deal with computer-related inventions, traditional knowledge and biological material, biotechnology applications and pharmaceuticals. Hence, in terms of contentious issues, the new manual does not add anything significant.

We hope you found the summarization of the new manual useful. Feel free to contact us if you have any queries regarding the new manual.

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Patent Prosecution Highway between the Indian Patent Office and the Japan Patent Office

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The Indian Patent Office (IPO) and the Japan Patent Office (JPO) has commenced a pilot bilateral Patent Prosecution Highway (PPH) program and will begin accepting PPH requests from December 05, 2019.

Under the PPH program, examination of a patent application can be expedited in the IPO if at least one claim of a corresponding patent application in the JPO is indicated to be allowable, and vice versa.

Notably, the number of applications considered under the PPH program by each office is currently limited to 100 applications per year. Additionally, the IPO has limited the number of applications per applicant to 10 in a year.

Some of the other nuanced aspects of interest to patent applicants who are considering opting for the PPH program in India are discussed below.

Field of patent application

The IPO has limited this program to patent applications in the technical fields of electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy. The JPO on the other hand does not have such restrictions.

Priority of patent application

The Indian patent application sought to be considered under the PPH should have its earliest priority claim from an application filed at the IPO or the JPO. Further, in case the earliest priority is from a PCT application, then the PCT application should be filed with the IPO or the JPO as the receiving office.

Status of claim

The Indian patent application can to be considered under the PPH if a patent is granted to the corresponding Japanese patent application or at least a claim in the corresponding Japanese application is indicated to be allowable.

Status of examination

The Indian patent application should not have been allotted for examination for the application to be considered under the PPH program.

Documents required

The below listed documents are required for making a request under PPH.

  • All the office actions issued by the JPO (with translation in English)
  • Claims patented or identified to be allowable/patentable by the JPO (with translation in English)
  • Copies of non-patent literature cited in the office actions issued by the JPO
  • Claim correspondence table

The claim correspondence table should show how all the claims of the Indian application (as filed or amended) correspond to, or at least “sufficiently correspond” to the claims granted or indicated to be allowable by the JPO.

It shall be noted that the phase “sufficiently correspond” has been defined in the guidelines to include those claims that are narrower than the claim granted/allowable by the JPO. In view of this definition, it is our view that, as long as the independent claim in the IPO application is practically identical or narrower in scope compared to the claim patented or indicated as allowable by the JPO, the dependent claims of the IPO application need not as such “correspond” to any other claims of the JPO application. The reason for the instant view is that the dependent claims are in any case narrower claims compared to the independent claim, and hence they automatically “sufficiently correspond” to the claim patented or indicated as allowable by the JPO.

Procedure

Step 1

A request must be filed with the IPO for participating in the PPH program. The request is made by presenting documents as discussed above. The IPO examines the request to decide whether the patent application can be assigned special status for expedited examination under PPH program.

In case the IPO determines that the request does not meet the requirements set forth for participating in the PPH program, then the applicant is notified of the same. The applicant has 30 days to rectify the defects. The IPO then considers the rectification and make a final decision as to assignment of special status to the application.

Step 2

The patent applicant can make a request for expedited examination once the IPO assigns a special status to the patent application for participating in the PPH program.  

In conclusion, the pilot program is a welcome step towards making India an attractive destination for innovative companies. The success of this pilot program may open doors for establishing similar programs with other countries.

Useful download: Procedure guidelines for patent prosecution highway

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PepsiCo Withdraws Cases Against Potato Farmers – A Missed Opportunity

New potato isolated on white background close up

PepsiCo India Holdings Pvt. Ltd. (“PepsiCo”) had filed cases against several farmers and business entities alleging infringement of its IP in potato plant variety FL 2027. PepsiCo has now withdrawn cases filed against farmers, in view of what appears to be under political pressure. Although withdrawal of cases may have provided short-term relief to the farmers, a long-term solution in favour of farmers may have been achieved had the cases been pursued.

To provide a bit of background, PepsiCo has protected its potato plant variety FL 2027 under the Protection of Plant Varieties and Farmers Rights Authority (PPV&FR) Act, 2001. PepsiCo sought permanent injunction restraining the farmers from using FL 2027. The PPV&FR Act defines what constitutes infringement U/S 64 (reproduced below, with emphasis added). A breeder of a variety registered may allege infringement if any entity carries out acts that fall within the scope of Section 64.

64. Infringement.—Subject to the provisions of this Act, a right established under this Act is infringed by a person—

(a) who, not being the breeder of a variety registered under this Act or a registered agent or a registered licensee of that variety, sells, exports, imports or produces such variety without the permission of its breeder or within the scope of a registered licence or registered agency without permission of the registered licensee or registered agent, as the case may be;

(b) who uses, sells, exports, imports or produces any other variety giving such variety, the denomination identical with or deceptively similar to the denomination of a variety registered under this Act in such manner as to cause confusion in the mind of general people in identifying such variety so registered.

While Section 64 defines infringement, Section 39 protects various interests of farmers. Particularly, Section 39(1)(IV) (reproduced below, with emphasis added) entitles farmers to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under the Act in the same manner as he was entitled before the coming into force of the Act. Exception being, farmers are not entitled to sell branded seed of a variety protected under the Act.

39. Farmers’ right.—

(1) Notwithstanding anything contained in this Act,—

(iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act: Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act. Explanation.—For the purposes of clause (iv), “branded seed” means any seed put in a package or any other container and labelled in a manner indicating that such seed is of a variety protected under this Act. 

Notably, provisions of Sections 64 are “subject to the provisions of this Act”, whereas rights under Section 39 are “notwithstanding anything contained in this Act”. Therefore, the entitlement of farmers under Section 39 can be argued to triumph over the provisions of Sections 64. Consequently, it appears that an IP owner of a registered variety cannot stop farmers from saving, using, sowing, resowing, exchanging, sharing or selling (not as branded seed of a variety protected) his farm produce including seed of the protected variety. Given the forgoing observations, as mentioned earlier, a long-term solution in favour of farmers may have been achieved had PepsiCo continued to pursue cases against the farmers.

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New Head to Steer Indian Government Policies on Intellectual Property Protection

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A new government has been formed in India post the elections that concluded recently. The new government is led by the same political party that led the previous government. While Mr. Narendra Modi retains his position as India’s prime minister, there has been shuffling and introduction of new members into the union cabinet.

Among the cabinet ministers is Mr. Piyush Goyal, who took charge as Minister of Commerce and Industry. The Controller General of Patents, Designs and Trademarks (commonly referred as Indian Intellectual Property Office – IPO) functions under the Ministry of Commerce and Industry (MoCI). Consequently, Mr. Goyal will not only have a major role to play in steering government policies on intellectual property protection, but also in the functioning of the IPO.

Mr. Goyal is perceived to be a very competent minister and has held key portfolios in the previous government. He has extraordinary academic qualification, which many may argue makes him apt for the current job. As also mentioned on his personal website, he is all-India second rank holder Chartered Accountant and second rank holder in Law in Mumbai University. He was a well-known investment banker and has advised top corporates on management strategy and growth.

Mr. Goyal comes in at a time in which there is sustained pressure, especially from the US, to dilute some of the clauses of the patent statute, which can largely benefit pharmaceutical and agri-biotech industries. Also, the IPO has made considerable progress in its digitization efforts over the past few years. We hope there is exponential progress in the digitization front and policy adaptations to meet the everchanging innovation and social dynamics.

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Impact of Post Grant Opposition on Rights of a Patentee

Law gavel on white.

An interim order of the High Court of Delhi in Novartis AG Vs. Natco Pharma Limited dealt with rights of a patent owner when the patent is subjected to post grant opposition. The judgment can be downloaded here

Natco had filed a post grant opposition on a patent granted to Novartise. The Opposition Board has reserved its order on April 10, 2019. In the meantime, Natco launched a product under the mark NOXALK even before the decision on the post grant opposition could be issued. In response, Novartise brought a suit seeking permanent injunction alleging infringement of its patent by Natco.

From a patent law perspective, the issue to be decided was whether a patent owner can initiate infringement proceedings when a post grant opposition is pending.

Natco relied on the decision of the Supreme Court in Aloys Wobben and Anr. vs. Yogesh Mehra and Ors. AIR 2014 SC 2210 to argue that once a post grant opposition is filed, the rights therein are yet to be crystallized, since the post grant opposition is pending. The Supreme Court in Aloys Wobben (supra) had held that right of a patent holder crystallizes only after challenges (post grant opposition) raised to the grant of a patent are disposed of favorably, to the advantage of the patent holder. Natco contended that, in the absence of such crystallization, the rights available to the patent holder under Section 48 of the Patents Act does not exist. In other words, Natco contended that since the decision in the post grant opposition is pending, Novartis lacks the right to initiate a patent infringement suit.

The judgment can be downloaded here

The High Court of Delhi, while acknowledging the decision of the Supreme Court, made a distinction that that although the rights are not crystalized, the rights still subsists even during the pendency of post grant opposition. The High Court further added that “Section 48 of the Patents Act grants rights in favour of a patentee, which are not affected during the pendency of a post-grant opposition.” Furthermore, the High Court observed that the facts of the present case in which an allegedly infringing product is launched prior to the decision in the opposition by the entity opposing the Patent, did not arise in the facts of Aloys Wobben (supra). In view of the foregoing, the High Court of Delhi passed an order restraining Natco, for the time being, from carrying out any fresh manufacturing of pharmaceutical preparations comprising of the active pharmaceutical ingredient (API), “Ceritinib”.

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Contemplating effectiveness of proposed amendments to Drugs and Cosmetics Rules in tackling the menace of deceptively similar trademarks

Trademark infrignement

The problems faced by brand owners and consumers who deal with trademarks that are identical or deceptively similar are well known. In most such cases, consumers may be end up buying one product thinking its another, leading to inconvenience. However, when such confusions occur in pharmaceutical products, it may not just be a matter of inconvenience, but could have far reaching consequences. This very problem of pharmaceutical products marketed under trademarks that are confusingly similar is sought to be addressed in India by an amendment proposed to the Drugs and Cosmetics Rules, 1945.

The proposed amendment may be attributed to the directions given by the High Court of Delhi in a suit 

between Curewell Drugs & Pharmaceuticals and Ridley Life Science, although Indian courts have dealt with many cases involving drugs bearing confusingly similar names. The draft proposes to introduce the below recited rules to address the issue of drugs bearing confusingly similar names.

“In case the applicant intends to market the drug under a brand name or trade name, the applicant shall furnish an undertaking to the licensing authority that such or similar brand name or trade name is not already in existence so that the brand name or the trade name to be used by the applicant shall not lead to any confusion or deception in the market.”

It is pertinent to note that, Section 17B of the Drugs and Cosmetics Act, 1940 empowers the drug licence granting authority, Drug Controller General of India (DCGI), to raise objections in case of drugs bearing confusingly similar brand names, which is also pointed out by the Court. In view of said section, it is not clear how the proposed amendment to the Rules further empower DGCI to proactively tackle the problem.

One may argue that it is not the lack of provisions in appropriate statutes to deal with the problem, rather it is the lack of procedures and infrastructure to effectively implement the provisions, that has led to the problem not be effectively addressed. The Court in fact recognises this and has issued directions for consideration by the authorities to tackle the problem effectively. The directions are listed below.

  • Creation of a secured platform, to be under the supervision of the DCGI, which is accessible to all State FDAs, both for access of data and for uploading of data.
  • Creation of a “master electronic database” of all the approved brand names for manufacture and sale of drugs issued both by the DCGI and the State FDAs and making the same available to all state FDAs and Drug controllers through a secured platform. The list to be maintained and made available both brand wise and manufacturer wise, on the secured platform.
  • List of registered trade marks under Class 5 for pharmaceutical and medicinal preparations be obtained from the Controller General of Patents, Trade marks and designs and be made available to the approving authorities at the Central level and State level.
  • Access to the data be given to Drug Inspectors/Drug Controllers across the country;
  • Drug Inspectors/Drug Controllers to conduct regular and periodic inspections as per the Act and the Rules to ensure that the drugs that are being manufactured in a particular unit are duly licensed for. The reports of the said inspections to be submitted through the secured platform;
  • Periodic and regular reports of drug inspectors should be compulsorily submitted to the respective licensing authorities on the secured platform and a mechanism be set up for review of the said reports at the State level;
  • Periodic meetings ought to be held at the central level, to review the status of manufacture and sale of drugs across the country, under the aegis of the DCGI;
  • Strict action in accordance with law ought to be taken against those manufacturers who manufacture drugs without licences, who indulge in adulteration or contamination of drugs etc. A periodic report as to the number of actions taken, ought to be uploaded on the secured platform of the DCGI.    

Implementing procedures and developing technology platforms in line with the directions above is certainly the way forward if the authorities wish to tackle the problem proactively and effectively. We certainly hope that such long-term solutions, though time consuming and resource intensive, are implemented, given the serious consequence that may result from the problem of drugs being marked under deceptively similar trademarks.

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Crocs’ Litigation Brings Clarity About the Overlap Between Rights Conferred by Design Registration and Rights Against Passing Off Trademark

crocs

Protecting some of the core Intellectual Properties (IP) of a business using as many different forms of IP rights as possible might seem to be a logical thought process. While some of the IP, no matter how crucial, may only be protected using only one form of IP rights, there may be others that seem to have the potential to be protected using multiple forms of IP rights. One such IP that appear to have the potential to be protected using multiple forms of IP rights is aesthetic design.

Designs that are solely judged by the eye are primarily protected by way of design registration. Generally, design of a product although appealing to the eye, the design itself does not serve the putobleronerpose of identifying the product with a company. In other words, generally design of the product does not perform the function of identifying the source of the product, which trademarks do. However, there are instances when design goes beyond its normal function of being appealing or judged by the eye, to also identify the source of the product, which is the primary function of a trademark. Consider Toblerone’s triangle design of the product, which is recognized as a trademark. The triangle design of the candy can associate the candy with its source, and hence rightly protected as a trademark.

Statutes governing protection of trademarks in most countries, including India, recognize that designs of products can be trademark. However, if shape of a product is used as a trademark, then it is not considered a design in India. Section 2(d) of the Designs Act, 2000 excludes a trademark from the definition of “design”, which is protectable under the Designs Act. On the other hand, the Trademark Act, 1999 does not exclude a design registered under the Designs Act from being recognized as a trademark. Therefore, when a registered design is also claimed to be a trademark, then to harmoniously interpret the Designs Act and the Trademark Act, one of the below listed options may be adopted:

  1. design registration should be revoked; or
  2. registered design should not be considered a trademark.

In the litigation involving Crocs, the Court adopted the latter in its judgement. Crocs has design registration over the shape and configuration of a footwear and had attempted to restrain third party from infringing their design, which was not successful. The reasons for Crocs failure to get relief based on infringement of design is not discussed here, since the same is not very relevant to this article’s topic of interest. Crocs also attempted to restrain third party from copying their design on the ground of passing off. In response, the Court took the view that a registered design is not a trademark.

Although the Court has adopted the later of the above two options, I am inclined towards the former. In my view, any contention by the owner of the registered design that the design is a trademark should result in the revocation of the design registration. The design registration should be revoked since the Designs Act specifically states that a trademark is not considered a “design”. Notable, the Trademark Act, as discussed earlier, does not state that a shape of a product (design) cannot be a trademark on being registered as a design. Therefore, one can argue that the Designs Act and the Trademark Act contemplate a situation in which some registered designs over a period can acquire secondary meaning. Such a secondary meaning acquired by the design of the product enables the product to be associated with its source, which is the function of a trademark. Therefore, there can be situations in which a registered design transforms from being just a design, to a design that has the characteristics of a trademark. In the event of such transformation, the protection of the design within the Designs Act should terminate and the design should be accorded the status of a trademark. 

In conclusion, in the Indian context, till such time, if ever, a registered design is provided the protection of a trademark when the design acquires the trait of a trademark, it is advisable to decide beforehand whether a design is likely to be used as a trademark. In case the design is likely to be used as a trademark, then registering the design under the Designs Act may be detrimental to the interests of the owner of the design, since design protection is for a limited period and protection of the registered design as a trademark is unlikely.

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Updated manual of Indian Patent Office’s practice and procedure is expected soon

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The Indian Patent Office has released a draft manual of the Patent Office’s practice and procedure. The Office has sought suggestions on the draft manual from stakeholders. The updated manual once finalized will replace the existing manual. The manual provides guidance for effectively prosecuting patent applications at the Office, however, the manual does not have the force and effect of law. Nonetheless, the manual is considered important to anticipate the Office’s interpretation of various provisions of the statute, and fine tune patent prosecution strategy. We will be publishing a detailed analysis of the new manual once released.

The draft manual can be downloaded here. 

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