Relocation of copyright office to DIPP

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The Copyright Office recently announced the relocation of their office to Boudhik Sampada Bhawan, which is home to the Indian Patent, Trademarks and G.I. offices. It appears that the Copyright office has completed the physical and logical transfer to the Department of Industrial Policy and Promotion (DIPP).

The Copyright Office until recently was under the jurisdiction of the Human Resource Development (HRD) Ministry. However, the IPR policy released in May 2016 announced that the administration of the Copyright office was to be brought under the aegis of the (DIPP).

The DIPP was previously responsible for Intellectual Property Rights relating to Patents, Designs, Trade Marks and Geographical Indication. Hence, it seemed logical to consolidate the administration of all IP-related offices under a single administrative entity for uniformity in decision-making and administration. However, the real effects of this transfer on the Indian IP scene remain to be seen.

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Non-payment of Copyright royalties – raids on Indian music companies

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The Enforcement Directorate (ED) raided the Mumbai offices of major Indian music companies – Universal, T-series, Sa Re Ga Ma and YRF Music, on Friday the 3rd, for non-payment of royalties and laundering the royalty money into investments.

The raids were made in relation to a case against two entities that handle licenses in the Indian music industry, namely, the Indian Performing Right Society (IPRS) and the Phonographic Performance Limited (PPL). Chitra Singh, widow of ghazal singer Jagjit Singh, had filed an FIR with the ED naming IPRS and PPL. Script writer Javed Akhtar too had made a complaint about non-payment of royalties. The ED began investigations into allegations of money laundering derived from non-payment of license royalty.

IPRS is a copyright society that issues licenses for public performances, while PPL is a copyright society dealing with sound recordings. The two copyright societies are embroiled in various legal issues. One of them concerns the legality of these companies being allowed to issue licenses under the Indian Copyright Act. Another legal issue concerns the non-payment of royalty and subsequent money laundering. According to investigations made by the ED, IPRS had assigned their rights to issue licenses and collect royalties to PPL to share revenue. However, PPL allegedly indulged in fraudulent activities and did not pay IPRS their due royalty.

The ED is a specialized financial investigative agency that enforces the Prevention of Money Laundering Act, 2002 (PMLA). The music industry companies collected royalty from consumers and were entitled to pay 50% of the collected amount to music composers and lyricists. However, this money was supposedly used by different people in other investments. What makes the case noteworthy is that the fraudulent activities concerned are said to involve amounts up to Rs 1,500 – 2,00 crores (USD 230 million to 307 million).

The ED teams have apparently seized several incriminating documents pertaining to the records of royalty collections over the period and its fraudulent use. These documents will be gathered from Kolkata and Delhi to identify a money trail. It remains to be seen whether these companies will be allowed to continue issuing licenses, and what happens of the royalty that is rightfully owed to the composers and lyricists.

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Workshop on patenting computer related inventions in India

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InvnTree and Computer Society of India (Bangalore Chapter) have come together to conduct a workshop that addresses various nuances involved in patenting computer related inventions in India.  The details corresponding to the same are provided below.

Introduction

The number of software companies in India has been consistently increasing over the years. In the past, most of these companies provided software services. However, India has steadily moved up the value chain, resulting in a plethora of software product companies. Consequently, companies have been concentrating on innovation gain competitive edge over products of local and global competitors.

Competitive advantage based on innovation largely depends on how well the innovation can be protected, and there lies opportunities and challenges. Patent protection is one of the most preferred options, and in many cases the only practical option to protect innovation in the computer and software domains.

Patent protection of innovations in the computer and software domains has its peculiar challenges. These peculiar challenges have given rise to misconceptions, largely in the tech community, that inventions in the software domain cannot be patented. Adding to the challenges, different jurisdictions including India, US and Europe have developed varying frameworks for determining subject matter eligibility of software inventions.

In view of the foregoing, the workshop aims at providing an in-depth knowledge about eligibility criteria for patenting software inventions. Further, the workshop will provide a comparison between India, US and Europe in the context of software patenting. 

Workshop overview

The workshop will cover the following topics:

  • Overview of patents and its advantages
  • Overview of patent system and processes
  • Discussion on criteria to obtain a patent
  • Detailed discussion on software patentability in India
  • Detailed comparison between India, US and Europe in connection with software patentability
  • Role of copyright in software protection
  • Role of trade secret in software protection

Key take away

  • Good understanding of the patent system and its implication on business
  • Strategies for obtaining patent protection in different countries
  • Preliminary capability for scrutinizing innovations for the purposes of patenting
  • Understanding of the challenges, opportunities and framework for software patenting in India, US and Europe  
  • Understanding of supplemental means for protecting IP in software

Key speaker

Kartik Puttaiah | Founder | Patent and Trademark Agent | InvnTree IP Services Pvt. Ltd.

Kartik is the co-founder of InvnTree. He has over eleven years of experience in patent consulting and is proficient at providing patent services in technologies related to manufacturing, automation engineering, medical devices, software engineering, and telecommunication engineering.

His decade-long patent practice has made him an expert in securing patents, advising on patent portfolio development and mitigating IPR related risks. His counsel is especially sought after in hearings before the Indian Patent Office due to his impressive track record of successes there.

Kartik is a popular speaker at IP conferences and often delivers instructive talks on topics ranging from IP policies to the practical aspects of patent practice in India. Apart from delivering talks at conferences and seminars in India, he has enjoyed delivering speeches at conferences in the USA, Japan and South Korea.

Date and venue

  • November 18, 2017 (Saturday)
  • CSI Bangalore Chapter, Unit No.201, 2nd Floor, MB Center, 134, Infantry Road, Bengaluru – 560 001.

Registration Contact

  • Telephone: 080 22860461 / 40906171 / 09448905268 (mobile)
  • Email: bangalore.csi@gmail.com | mailto:manager@csibc.org
  • Website: www.csibc.org

Registration fee and account details

  • CSI-Member Industry: INR 3,000/- | Non Member-Industry: INR 4,000/-
  • CSI-Member Academic: INR 2,500/- | Non Member-Academic: INR 3,000/-
  • CSI-Student Member: INR 1,500/- | Other Student: INR 2,000/-
  • CSI Bangalore Chapter
  • A/c No. 33762189110,
  • Payable at State Bank of India, B1, Cross Road, MIDC, Andheri(E) Mumbai – 400 093.
  • IFSC Code / NEFT / RTGS Code: SBIN0007074,
  • MICR : 400002057, IFSC :SBIN0003298,
  • SWIFT Code :SBININBB363

India can now access WIPO’s file transfer systems

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The Controller General of Patents, Designs & Trade Marks (CGPDTM) signed a Cooperation agreement with the Director General of World Intellectual Property Organization (WIPO) on October 5th, 2017 at Geneva, Switzerland. This Cooperation treaty enables the exchange of data such as priority documents between the Indian Patent Office (IPO) and the WIPO, using WIPO Centralized Access to Search and Examination (CASE) and WIPO Digital Access Services (DAS).

The WIPO CASE system enables patent offices to share search and examination documents related to patent applications in a secure manner. This allows patent examiners from different offices to share examination results and thus increase the efficiency and quality of their work for patent applications that are filed in multiple offices.

The WIPO DAS system enables IP offices to securely exchange priority documents and certified documents through an electronic system. Traditionally, while filing applications in multiple offices, applicants had to request certified paper copies of documents from one office and submit them to another. However, the WIPO DAS allows applicants to a) request the first office to make the priority documents available; and b) request other offices(s) to retrieve those documents using DAS. The offices can then use DAS to electronically transfer or exchange the required priority documents. The DAS provides an easy, secure and inexpensive system to quickly transfer documents between offices.   

Once implemented, this agreement will greatly benefit the IPO as well as patent applicants by streamlining the process of getting a patent.

I hope you found our article informative.

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MoU between India and Sweden on IPR

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The Union Cabinet has given its approval to the Memorandum of Understanding (MoU) between India and Sweden on cooperation in the field of Intellectual Property Rights (IPR).

The MoU is aimed at establishing a wide ranging and flexible mechanism to exchange the best practices and to work together on training programs and technical exchanges to raise awareness on IPR and to improve protection of IPR in both the countries.

According to the press release by Ministry of Commerce & Industry, Government of India, a Joint Coordination Committee (JCC) will be formed with members from both countries to decide cooperation activities to be taken up under the MoU.

The MoU enables India and Sweden to exchange their best practices, experiences and knowledge on IP awareness among public, businesses and educational institutions, and to organize training programmes, exchange of experts, technical exchanges and outreach activities.

The MoU also aims at dissemination of information and best practices in protection, enforcement and use of IP rights among the industry, universities, R & D organisations and Small and Medium Enterprises (SMEs) through training programmes and events.

The countries will also exchange information and best practices on IP infringement in the digital environment, especially regarding Copyright issues.

Furthermore, both the countries will cooperate in automation and implementation of modern documentation and information systems for IP management. The countries also aim to understand mechanisms for protecting traditional knowledge.

Through the MoU, India has taken yet another initiative to participate as a major player in global innovation, as framed in its objectives of National IPR Policy 2016. This exchange of best practices in IPR between the two countries is expected to result in improved protection and awareness about India's range of innovations.

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Risks of adopting Gods’ names as Trademark

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Goodwill in a trademark is built over the years by making sustained investments into the brand. After having made these investments over the years, a trademark that cannot be enforced to the fullest desirable extent is certainly a setback. One such class of trademarks that has inherent limitations as to its enforceability are names of gods. Names of gods are commonly used as trademarks in a variety of businesses in India. While some of these trademarks may have been registered, others continue to be used as unregistered trademarks. Whether registered or unregistered, enforceability of such trademarks remains a challenge. We have analyzed a case concerning one such trademark, in which judgement was passed recently, to explore the angle of registrability and enforceability.

The Bombay High Court recently passed a judgement in a case between Freudenberg Gala Household Product Pvt. Ltd (hereinafter “Gala”) and GEBI Products (hereinafter “Gebi”). Gala started using a trademark “LAXMI” in respect of its product, brooms, in the years 1995. Gala subsequently applied for and obtained registration of the trademark “LAXMI” as a “label”. Notably, “LAXMI” is the name of a popular Hindu goddess. Gebi, on the other hand adopted the trademark “MAHA LAXMI” also in respect of brooms. “MAHA LAXMI” is another name of the same Hindu goddess “LAXMI”. The primary question before the Court was whether the registered label mark “LAXMI” was infringed by Gebi by the usage of the trademark “MAHA LAXMI” in respect of identical goods, brooms. The Court ruled in favor Gebi.

In this case, succinctly put, in-principle Gale contested that the scope of protection of its registered label trademark extends to the words within the label, and not just the label as a whole. Over and above that, since the word within the label is the name of a god, Gale sought monopoly over usage of name of a god as a trademark, expressed in whichever form, with respect to a certain class of goods.

It is well established that, where a label is registered as a whole, such registration cannot possibly give the proprietor of the trade mark exclusive statutory right over any particular word or name contained therein apart from the mark as a whole. Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd. The Court applied well established principles while dealing with label/device marks, to compare the registered label mark of Gale as a whole and the mark adopted by Gebi as a whole, to find that Gebi’s mark was not infringing on the label mark of Gale.

With respect to usage of name of gods, the Court prima facie found substance in assertion that names of gods are not exclusive and such words cannot be monopolized by one party. The Court further opined in the same context that claiming and protecting the label mark is different than to claim monopoly over a common word.

In conclusion, adopting names of gods as a trademark may be a risky proposition. Even if one has adopted such a mark, one may be able to register the mark as a label or device, and registration of the mark as a word mark as such may not be feasible. Further since exclusive statutory rights may not be claimed over such words, enforcement remains a challenge.

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Nuances of Copyright infringement by manufacture of products based on Engineering drawings

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A recent judgement of the Delhi High Court in Holland L.P. and another. vs S.P. Industries calls for a debate on copyright infringement, and overlap and exclusivity between copyright and industrial design protection laws in the country.

We start by providing an overview of events that led to the dispute between the parties. Holland L.P. had designed and developed an Automatic Twist Lock (“ATL”) system, and has supplied the same to the Indian Railways over the years, with an Indian partner. Indian Railways had floated a tender in the year 2012 for replacement and repair of a list of parts of the ATL devices supplied by Holland L.P. and its partner. The Indian partner of Holland L.P. and S.P. Industries participated, with the latter emerging as the successful bidder.

In this backdrop, Holland L.P. (“Plaintiff 1”) and its partner (“Plaintiff 2”) had sought permanent injunction restraining S.P. Industries (“Defendant”) from manufacturing, selling, offering for sale, advertising, directly or indirectly ATL and parts thereto, alleging that such acts of the Defendant amounts to infringement of copyright of the Plaintiff. The Court however, ruled in favour of the Defendant.

Now referring to the particulars, engineering drawings (2D drawings) of the ATL prepared by Plaintiff 1 was made available as part of the tender by Indian Railways with permission from Plaintiff 2. The Plaintiffs contended that they are the owners of the copyright over the engineering drawings and they have the exclusive right over three-dimensional representation of the engineering drawings. In other words, the Plaintiffs contended that they have the right to prevent others from manufacturing, selling, offering for sale or advertising a product based on the engineering drawings. The Plaintiffs further contended that engineering drawings are not “Design” as per The Designs Act, 2000, since such drawings are “functional” and do not “appeal to the eye alone”. The instant contention is particularly relevant because, in case the subject matter over which the Plaintiffs are claiming copyright protection, is protectable under The Designs Act, then copyright would cease after the Plaintiffs reproduce the ATL 50 times by an industrial process, as per Section 15 of the Indian Copyright Act. The Plaintiffs had in fact reproduced the ATL systems 50 times by an industrial process. 

On the other hand, the Defendant contended that the subject matter over which the Plaintiffs are claiming copyright, is protectable under The Designs Act, and since the Plaintiffs have reproduced ATL systems at least 50 times, the copyright of the Plaintiffs has ceased.

While there were various other contentions, we are particularly interested in understanding whether engineering drawings is subject matter of copyright protection alone, or are they protectable as industrial design under The Designs Act.

The Court is of the opinion that engineering drawings made for the purposes of production of ATL systems is subject matter, which is protectable as industrial design under The Designs Act. The Court is of the opinion that, any design (such as engineering/machine drawings) which is used for the purpose of industrial production of an article, is protectable as industrial design. The Court draws the instant opinion by conjoint reading of Section 2(d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957.

We agree with the Court’s interpretation only in part for reasons that follows. One would agree that a set of engineering drawings would include drawings that define the way a product looks. In other words, such subset of drawings defines how the finished article/product appeal to and are judged solely by the eye. Hence, such drawings may be subject matter of industrial design protection. However, engineering drawings may also include a subset of drawings that define how certain parts, which are housed inside the product, are configured. Hence such drawings correspond to parts that are purely functional and are incapable of appealing to and being judged solely by the eye. Hence, it may be inappropriate to come to a conclusion, as the Court has, that any design which is used for the purpose of industrial production of an article, is protectable as industrial design. Our sense is that, design of product will include subject matter, such as engineering drawings of “housed/functional” parts (purely functional and not expressly contributing to aesthetics), over which only copyright protection applies, and will also include subject matter, which substantially defines how the product is perceived by the eye, which is protectable as industrial design.

Having made the above observation, it is now worthwhile to explore whether the owner of copyright over technical drawings corresponding to such functional parts (not the product as a whole, which is subject matter of industrial design protection) stop others from manufacturing such functional parts. Section 52(1) of the Copyright Act precisely deals with this matter.   

Section 52(1): The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.

The above section makes it clear that, even though one may hold copyright over engineering drawings over purely functional parts, they will not be able to stop third party from producing such parts. In other words, provisions of the Copyright Act cannot be used to stop third party from producing (including other acts of commerce) such functional parts, irrespective of whether they are visible or hidden from being gauged by the eye.

In conclusion, drawings that define the way an article/product appeals to and is judged solely by the eye, is protectable as industrial design, and copyright in the same ceases to exist once the article/product is reproduced 50 time by an industrial process by the owner. Drawings of purely functional parts of an article/product are not protectable as industrial design, and only copyright protection exists. However, such copyright is not infringed by third party who produces such functional parts.

I hope you found our article informative. The judgment can be downloaded below. 

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India’s rise in the Global innovation index ranking

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The Global Innovation Index (GII) released the Global Innovation Index 2017 in June 15, 2017, in which India stood at the 66th rank. The GII 2017 lists 127 countries according to various aspects that are responsible for innovation. It is co-published by Cornell University (New York), INSEAD graduate business school (France), and the World Intellectual Property Organization (WIPO, an agency of the United Nations).

The GII focuses on innovation and uses a broad variety of information and sources for capturing data to develop the Index. The GII collates information related to seven sub-indexes, which comprises five input indexes and two output indexes. The five input indexes are: (1) Institutions, (2) Human capital and research, (3) Infrastructure, (4) Market sophistication, and (5) Business sophistication. The two output indexes that capture actual evidence of innovation outputs are (6) Knowledge and technology outputs and (7) Creative outputs.

India’s Department of Industrial policy and Promotion (DIPP) set up a ‘Task Force on Innovation’ which was tasked with assessing innovation creation and suggesting measures to enhance the innovation ecosystem in India in order to improve India’s GII ranking. The Task Force comprises government officials and experts from private organisations and academia. This team published an in-depth report after studying the Global Innovation Index 2017. The report compares rankings from 2015 and 2016, giving a clear-cut picture of how we have progressed in this time duration, and provides recommendations of various schemes and plans that can be implemented.

In particular, the output index ‘knowledge and technology outputs’ includes several indicators belonging to Intellectual Property. The ‘knowledge and technology outputs’ index comprises three sub-pillars, namely Knowledge creation, Knowledge impact and Knowledge diffusion, resulting in fourteen individual indicators altogether. The following tables showcase our rankings based on data collected in 2015 and 2016 (the GII 2017 report ranks nations based on 2016 data).

We witnessed an improvement in the ranking of the knowledge and technology outputs index. 2016 saw an overall improvement in all three segments, and a particularly commendable improvement seen in the knowledge impact indicators, wherein our rankings rose by 36 ranks.

GII-1Knowledge Creation

The knowledge creation sector did not see much of a rise in rankings. Further, it is worth noting that while the ranking for ‘Scientific and technical articles/ bn PPP$ GDP’ has remained the same, the score for the same has decreased from 7.5 to 7. The report mentions Uchchatar Avishkar Yojana (UAY) and Impacting Research, Innovation, and Technology (IMPRINT), both of which are Government programs that may aide intellectual property creation.  

Gii-2

            Further suggestions stress on the importance of improving the availability and quality of education. There needs to be a focus on higher education, namely graduate programs and higher programs, while stressing upon research in fundamental as well as applied knowledge.

            Another point to note here is that these indicators only capture data created by formal systems. However, there are numerous innovations occurring informally, at various levels. There is a requirement for a bridge linking formal knowledge as well as informal. Including this informal, unaccounted data would greatly benefit the Government as well as the people, along with increasing our rankings in this area.

Knowledge impact

The knowledge impact sector witnessed a considerable rise in rankings from the 84th rank in 2015 to the 48th rank in 2016. The major cause for this is the increase in rankings of ‘Growth rate of GDP per person engaged (constant 1990 PPP$)’ from the 38th rank to the 6th rank in the world.

Gii-3In case of knowledge impact, there is a need to create awareness on various opportunities available through the State and Central government. Proper knowledge must be imparted to the public with respect to any available benefits and schemes so that interested people or organizations may put them to good use.  

The report also mentions that programs and initiatives like Make in India, Start Up India, Smart Cities across the country, Industrial Corridor etc. would give a positive impact to the GDP growth in India.

Knowledge diffusion

The improvement in the knowledge diffusion sector was driven mainly by the ‘FDI net outflows, % GDP’, which saw a rise in ranking from the 92nd rank to the 60th rank. FDI net outflows is defined as the “net outflows of investment to acquire a lasting management interest (10% or more of voting stock) in an enterprise operating in an economy other than that of the investor.” It is also important to note we rank 1st in the world for ICT (Information and Communication Technologies) services exports, which was retained from 2015. 

GII-4

There is definitely a need for increasing a general awareness of IP among the public. Such awareness is especially required among Micro, Small & Medium Enterprises (MSMEs), since they are creating innovation but aren’t protecting it or utilising existing IP laws to gain the best benefits possible. IP protection in India must be improved.

Another indicator that concerns IP can be found in the ‘Creative outputs’ index, in which India’s rank improved by 1 from a ranking of 95th in 2015 to a ranking of 94th in 2016.

In particular, the ‘intangible assets’ sector concerns trademark applications and industrial designs, as shown below.

GII-5

            An increase in awareness regarding the identification, recognition and registration of trademarks and industrial designs among public, start-ups and MSMEs must be implemented. Further, Intellectual Property Facilitation Centres (IPFCs) should be strengthened and further replicated in all the districts; IP Cells need to be established in all Universities in India. This can result in higher IP filings that result in an improvement of our ranking in these sectors.

GII-6

            Overall, India witnessed a commendable rise in the Global Innovation Index Rankings, jumping from the 81st rank in 2015 to the 66th rank in 2016. The GII-2017 report states, “India is a good example of how policy is improving the innovation environment”. Schemes such as Start-up India, IMPRINT, UAY, Make in India and Industrial corridor, among many others, provide an encouraging view on improving innovation and industry. We hope that with the proper planning and implementation of such schemes, India may finally live up to its potential for Intellectual Property.

We hope this article was a useful read. 

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Trademark protection of architectural design

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A discussion on trademark protection of architectural design will typically begin with the Empire state building. It is because the building owned by a private firm secured its trademark early in 1931 and has enjoyed various economic benefits through the trademark protection for almost 80 years. Followed by the building, few other famous constructions like Eiffel Tower (at night when the lights are aglow) in Paris and Opera house in Sydney have also secured the trademark protection for their architectural design. However, India with numerous architectural marvels that are owned by an individuals or companies have not gained any trademark protection for architectural design until recently.

On June 19th, the Indian Hotels Company Ltd (IHCL) that owns The Taj Mahal Palace was granted a trademark for the hotel’s unique architectural design such as the red-tiled Florentine Gothic dome and the grand exterior. The Taj Mahal Palace is the first building of its kind in India to secure a trademark for its architectural design. India’s iconic luxury hotel, The Taj Mahal Palace that was built in 1903, has hosted numerous famous personalities and dignitaries from different parts of the world and is highly recognizable throughout India. Acquiring trademark registration was not cumbersome as the hotel already met the various prerequisites. In the backdrop of this registration, we discuss various aspects of Trademark protection of an architectural design. 

How can a building secure Trademark protection?

  • The first and foremost rule to apply for a trademark protection for an architectural design is that the building should be either owned by an individual or a company.  
  • The building should be distinctive which means that the building should be easily recognizable by many people.   
  • The building should represent a brand that associates a product or service to a source.

Once trademark protection is secured, the building or architecture can enjoy many economic benefits and prevent others from exploiting the architectural design and take advantage of it.

What can be called a trademark violation of an architectural design?

There are few aspects to judge a trademark violation:

  • The use of the trademarked building should be non-editorial. A building’s image published on a newspaper wouldn’t violate trademark. Whereas, an image of a building used to advertise another product could violate the trademark.
  • The use of the trademarked building to endorse identical or deceptively similar goods or services by third party may be considered infringement. Mc Donald’s in its advertisement for promoting burgers, cannot use an image of a KFC restaurant in the advertisement as it may lead to confusion among consumers.

Economic benefits of trademark protection: Empire state building vs NYC beer –  A case study

A building with a unique and a widely recognizable architectural design can apply for a trademark to prevent others from exploiting the economic benefit of the architectural design. For example, in the year 2016, ESRT Empire State Building LLC who owns the trademark of Empire state building since 1931, filed an opposition for the grant of trademark that was filed by NYC Beer for its alcoholic beverages.

 

NYC beer

The opposition application filed by ESRT Empire State Building LLC was based on the grounds of trademark dilution, likelihood of confusion and false suggestion of a connection with Empire state building. According to US law, the trademark dilution is proved and accepted if the trademark is recognized and famous. As a result, ESRT Empire State Building LLC was successful in winning the opposition as the building attracts millions of tourists and visitors every year and is easily recognizable by public. Also, the building management stated that, a gift shop in the building also sells few alcoholic and non-alcoholic beverages as a souvenir for the visitors. So, the NYC beer may be confused by people with the ones that is sold by the gift shop. The trademark protection, helped the Empire state building to hold its recognition and prevent any misuse of it by any other companies.

Scope of trademark protection of architectural design of a building

Sydney’s Opera House, the Empire State Building and The Taj Mahal Palace hotel could easily secure a trademark protection, as they fulfil all the prerequisites and are owned by private entities.

For some, it might be surprising that how Eiffel tower being a public property, managed to secure a trademark. Surprisingly, the Eiffel tower does not hold a trademark for its architectural design but for the lighting design. The Société d’Exploitation de la Tour Eiffel, the organization managing the structure defends the trademark protection saying that the lighting is an artistic work which is separate from the structure itself. Thus, an architectural design need not necessarily be a structural, instead it can be any other possible architectural design.

For example, Apple, the world’s famous and recognized electronic gadget manufacturer secured a trademark for its “architectural design of Apple stores” from USPTO on January 24, 2013. It is to be noted that every Apple store cannot be structurally same as they are in various places under various space constraints. However, the trademark protection is not for the structure but for the store’s layouts, with their open spaces and symmetrically arranged displays. The trademark protection of “architectural design of Apple stores” helps Apple to legally act against duplication of the “look and feel” of its stores by any of its competitors.

The Trademark protection of an architectural design helps many private firms protect the various aspects of their buildings and structures. It is good to see that Indian firms are also understanding the benefits of trademark protection and trying to get benefit out of their architectural designs.

We hope this article was a useful read. 

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The end of Roche vs. Cipla infringement lawsuit

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The tussle between Roche and Cipla that started in the year 2008 has come to an end with a compromise announced on 30th May 2017 between the parties.

Roche has an Indian patent over a drug, “Erlotinib hydrochloride”, for treating lung cancer. In the year 2006, Roche launched the drug in India under the name “Tarceva”. It was reported in January 2008 that Cipla is planning to launch a generic version of “Erlotinib” under the name “Erlocip”. Roche followed by initiating infringement proceedings against Cipla in January 2008.

Roche’s plea for interim relief by way of injunction was rejected by single judge with an opinion that injunction against Cipla’s manufacture was against public interest. Notably, Tarceva costed around INR 140,000 (~USD 2300) for a month’s dosage, whereas Elrocip costed only INR 48,000 (~USD 800). Subsequent appeal by Roche was mostly unsuccessful.

The turnaround in the case happened in 2015, when the case was moved to the Divisional Bench of the Delhi High Court where the judgement was in favour of Roche. The Divisional Bench held that Cipla was infringing Roche’s patent.

Followed by the judgement, Cipla filed a Special Leave Petition (SLP) requesting for appointing a technical expert, which was accepted by the Apex Court in 2016 after which the matter was adjourned. After almost decade long legal proceedings, on 30th May 2017 both the pharmaceutical companies finally came to an agreement and reached a settlement. In June 2017, Cipla moved the apex court seeking to withdraw the Special Leave Petition (SLP) filed against the DHC divisional bench’s decision given in 2015.

The case which is considered to be significant in the Indian pharmaceutical industry has come to an end after shedding light on various aspects of laws pertaining to patent protection of pharmaceutical products.

We hope this article was a useful read. 

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