Revised Guidelines for Examination of Computer-related Inventions (CRIs)

On 30th June 2017, the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) published Revised Guidelines for Examination of Computer-related Inventions (CRIs) that are applicable with immediate effect. The revised guidelines have replaced the Guidelines for Examination of CRIs, published on 19th February, 2016. The revised guidelines are short and precise as compared with the previous versions and have relaxed the criteria for patentability of the CRIs.

The heart of the 2016 guidelines was a three stage test to examine a CRI application, according to which the Examiners may:

  • Properly construe the claim and identify the actual contribution
  • If the contribution lies only in mathematical method, business method or algorithm, deny the claim
  • If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

Therefore, the requirement of a novel hardware was apparent under the three step test laid in 2016 guideline. The revised guidelines have however done away with this test. The revised guidelines focus on substance over form and states:

If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable. Even when the issue is related to hardware/software relation, the expression of the functionality as a method is to be judged on its substance. It is well-established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

The revised guidelines further discuss determination of excluded subject matter relating to CRIs. According to the revised guidelines, it is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.

Further, the sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some means indicating the functions of flow charts or process steps. It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed.

What is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.           

Hence, along with determining the merit of invention as envisaged under Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether or not they are patentable inventions under Section 3 of the Act.

Thus, it can be inferred that the revised guidelines focus on substance over form instead of novel hardware requirement. That is, while examining an application its substance is considered and a claim is taken as whole, if it does not fall in any of the excluded categories, the Examiner can proceed with other steps to determine patentability with respect to the invention.

Various stake holders associated with the software industry and Associated Chambers of Commerce & Industry of India (ASSOCHAM) have been lobbying for such a change. ASSOCHAM trough a communication to the Prime Minister’s Office, urged the Prime Minister to bring out appropriate amendments to the 2016 guidelines and simplify the criteria in pursuance of becoming a leading global player in areas of research and development (R&D) and software products.

In the view of the foregoing, it can be concluded that as the CGPDTM has done away with the requirement of novel hardware, the patentability criteria is eased out. This not only facilitates the patentability of CRIs but also attracts big software MNCs and startups to invest in the area of development of software technologies.

About the Author: Ms. Prigya Arora, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at prigya@iiprd.com

Registered Designs (Amendment) Bill of Singapore

Registered Design Act had originally been enacted in 2000 in Singapore. This act has gone through various amendments by formal and informal consolidations in 2001[1], 2005[2], 2012[3], and 2014[4]. Major change has been brought in act in 2001 and 2005 in which this act has been revised. This article includes the proposed reforms that have been tabled in the Parliament of Singapore for the Second reading on 8th May, 2017. The proposed changes aims to support modern business practices while continuing to balance the interests of design creators/owners and users and provide business certainty.

Key features of the Registered Design (Amendment) Bill

  1. Widened scope of registrable Design

The definition of “Design” in the proposed bill has updated to give expand the scope in granting of design right, which clearly aims to incentivize creativity and innovation. It is expected to include an important aspect i.e. colour under the umbrella of important component of design. However, the scope will not extend to colour per se but only to limited colours monopolizing that result in impeding design innovation.

Second important inclusion is of virtual designs of non-physical products that can be projected onto a surface and have useful functions. Those design need to fulfil two requirements (a) be capable of being represented clearly and without subjectivity; and (b) retain the same (or substantially similar) design features irrespective of the surface or medium they are projected on.

  1. Ownership of Rights

Under the current section 4 of the RDA the commissioning party is considered to be owner of rights by default, not the creator/designer. However, this bill gives creator/designer the actual right of ownership. According to proposed change ownership rights shall be vested with commissioning party, subjected to any agreement or liberty of contract between the parties concerned.

  • Extension of grace period for registration

If any designer had disclosed his/her design before registration and designer wish to register it that grace period of 6 month was granted for filing for registration. This grace period has been extended to 12 months as per the amendment under RDA.

  1. Allowance of multiple design of same classification under same application

Before, designer need to file one application for designs of same Locarno sub-classification.  However, each design has its separate application number and treated as individual application with separate fees for registration. The amendment will allow registration of multiple designs under the same broad category and through a single application, which in turn may reduce the costs involved with subsequent designs within the same application.

About the Author: Mohini Sharma, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Sources

  1. Helika Jurgenson,”Upcoming Reform: Registered Designs Regime in Singapore”, available at http://www.youripinsider.eu/upcoming-reform-registered-designs-regime-singapore/
  2. IP newsletter, available at https://f.datasrvr.com/fr1/017/70864/2017Apr17_IP_Newsletter.pdf
  3. Ministry of Law, Singapore at https://www.mlaw.gov.sg/content/minlaw/en/news/press-releases/legislative-changes-introduced-to-update-singapores-registered-d.html
  4. https://www.gov.sg/~/sgpcmedia/media_releases/minlaw/speech/S-20170508-1/attachment/Registered%20Designs%20Amendment%20Bill%20-%202R%20Speech%2008052017.pdf

Cambodia: Declaration on the procedure for applying to register the brand online

On May 4, 2017 [1] the Ministry of Commerce, Kingdom of Cambodia issued a regulation declaring a new online trademark registration procedure. This new online trademark system was launched on May 25, 2017 [2]. The new e-filing system [3] allows an applicant for easy and quick filing for new trademark applications. This system can be used by both local and foreign applicants (either individual or groups).Applicants either local or foreign can now upload the necessary documents and detailed certificates for mark registration online.

The newly launched online-filing portal is used only for filing new trademark applications, but the actions which are performed post-filing are to be filed manually and in person at Intellectual Property Department of Cambodia. However, the traditional paper-filing system for trademark applications still continues alongside the new e-filing system.

According to the ‘disclaimer details’ of the new e-filing system, the user account, i.e. the username & password to access the trademark Filing System is created upon a request to DIP official [4].But the foreign applicants must have a local registered trademark agent from Cambodia itself who can file their applications on their behalf.The payment for the filing fee by the applicants can be made either online or off-line. For offline payment of filing fees, the applicants have to pay to the Ministry of Commerce in one of the three cooperative banksgiven below:

  1. FOREIGN TRADE BANK (FTB)
  2. CANADIA BANK
  3. ACELEDA BANK

The e-filing portal ‘https://efiling.cambodiaip.gov.kh/efiling/’ [3] has been developed with the help of technical experts from World Intellectual Property Organization (WIPO) [5] with the goal of bringing Cambodia’s Intellectual Property department up-to-speed with other developed international patent offices. Yo Takagi, assistant director-general of global infrastructure at the World Intellectual Property Organisation (WIPO), said online filing systems make it easier for individuals and small and medium sized enterprises to register trademarks without physically going to the Commerce Ministry – thus being a huge boost to Cambodia’s burgeoning economy.

This new system is another milestone achieved by the department of Intellectual Property of Cambodia, having earlier becoming the first country in Asia to recognize European patents on its territory under the European Patent Organization (EPO) by signing a validation agreement with the EPO on 23 January 2017 [6].

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] http://www.cambodiaip.gov.kh/NewsDetail.aspx?id=110048

[2] http://www.akp.gov.kh/?p=103057

[3] https://efiling.cambodiaip.gov.kh/efiling/

[4]https://efiling.cambodiaip.gov.kh/efiling/disclaimerDetails

[5]http://www.wipo.int/edocs/mdocs/mdocs/en/wipo_tm_pnh_16/wipo_tm_pnh_16_t13.pdf

[6] https://www.epo.org/news-issues/news/2017/20170123.html

2016 – Trademark Act of Thailand – The amendments

The Government of Thailand has made several new amendments in their trademark act [1], which have become effective on July 28 2016. These amendments have brought significant changes in structural policy of Thailand. This includes Thailand’s ratification of the Madrid protocol, which allows an application for registration of sound marks. Other changes introduced via these amendments in the Trademark act, include the procedure and prosecution of trademark registration in Thailand, and, thus, the change in Intellectual Property (IP) strategy. Anticipatoryamendments to the registration and prosecution process are mention below.

  1. Multi-Dimensional Applications for Trademarks Allowed[2]

Previously, Thailand did not accepted multi-dimensional, multi-class filings using a single application, but multiple applications of single-dimensional, single-class filings were used instead. The changes via the amendments in the Trademark act of Thailand effective from July 2016, now allows multiple-dimensional, multi-class filings in a single Trademark application. This does not mean that the single class filing applications will not be accepted. They are still accepted.

There are both advantages and disadvantages of multiple-dimensional, multi-class filings [3]for the amended Trademark act. The main advantageis the ease inthe registration process for Trademark filing – same/single application can now be usedfor filing for protection in multiple-dimension, multiple-classes, which results in less paperwork, registration fees, and a more structured/streamlined process.

However, the majordrawback of the amendments is the possibility that complexitiesregarding one of the, multiple-dimensional, multiple-classes applied for could affect the approval process for the entire application as a whole. This is due to the factthat an application for multi-class, multi-dimensional filingsis treated as a single application, with each dimension being only a single component part of the application. This means that, at worst, an opposition or other objections in single class can delay the entire application to lapse altogether.

Because of the Pros and Cons of filing multiple-dimensional, multiple-classes trademark applications under the new Trademark act of Thailand; it has now become very important to devise a well-assessed IP strategy for selecting the type of Trademark application to be used. Some Trademarks can get the benefit of filing a single-class application when the main objective is the timeliness and the priority date of registration, or if the business plan is for short-time monetary gain and does not include future IP portfolio expansion. However, certain other trademarks with the potential for business as far as expanding IP portfolio is concerned would enjoy benefits of these amendments in the new Trademarks Act of Thailand. Therefore, a mixture of pros such as ease and timeliness of registration process and portfolio expansion may prompt IP owners to go for multi-dimensional, multi-class Trademark applications for potential business growth and portfolio expansion.

  1. No requirement of associated marks

In the previous Trademark Act of Thailand, i.e. the single-class filing process, the Intellectual Property department of Thailand used to ask IP owners to associate related/similar marks filed across various other classes. In other words, previously under Trademark Acts section 14 the Trademark registrar wasallowed to order the Trademark applicant of associating identical or similar trademarks [4] that relate to products or goods in same or different classes. This provision was required to avoid misunderstanding in pubic that different IP holders, which are similar or related as judged by the registrar, but, in fact, they belong to the same IP owner.The main drawback for IP holders due to this requirement was that the associated marks cannot be transferred or assigned separately, but must be assigned as a collection of registered “associated” marks, which required additional fees.

The amendments in the new Trademarks act of Thailand have removed the requirement of associated marks completely. After thesechanges have become effective, thetrademarkowners of associated marks are able to transfer and assign each mark single basis. [5]

Other amendments [6]

There has been a reduction in the period for filing amendments, appeals or opposition from previously 90 days to currently 60 days which is calculated from the day of receipt of related order from the Trademark Office.

Increase in time-period – from 30 to 60 days with respect to paying the registration fees.

Introduction of Grace Period for renewals– Renewal is possible within six months from the expiry date against a 20% surcharge.

About the Author: Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Footnotes 

[1] “Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol.” Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol | Tilleke&Gibbins. Tilleke&Gibbins, 3 June 2016.

[2] “Thailand Update: Trademark Amendment Act Brings Changes for Trademark Law.” Spruson&Ferguson.Spruson& Ferguson, 16 June 2016.

[3]1, 2016 August.”UPDATING NEW THAILAND TRADEMARK ACT.”IP NEWSLETTER (n.d.): n. pag. ILCT, 1 Aug. 2016.

[4] Mirandah. “Thailand – When Trade Marks Must Be Associated.” Mirandah Asia. Mirandah, 19 May 2017.

[5]”Hailand: Amendments to the Trademark Act Information Is Provided by Www.ip-coster.com.” Thailand: Amendments to the Trademark Act. IP Coster, 26 July 2016. Web

[6] European Patent Office: Comprehensive Amendment to the Trademark Act 

Singapore: The upcoming Intellectual Property centre of Asia

Today, the growth of global economy has become impossible without considering Intellectual Property.

 

In Asia, Singapore is witnessing a huge growth of its Intellectual Property segment and is slowly becoming the focus of Intellectual Property in Asia. Singapore is ranked fourth in the world and top in Asia for having the best IP protection in the World Economic Forum’s Global Competitiveness Report 2016-2017. Adding on to this, the government of Singapore has also come up with an IP Hub Master Plan [1] to develop the country as a worldwide IP hub. The Singapore government has taken few more steps such as launching an IP financial scheme and coming up with a Center of Excellence for IP valuation [2] to accelerate the growth of IP sector in the country.

 

Several data analytics experts have conducted various studies for visualizing the impact of the steps taken by the Government of Singapore. Few results from the case studies will provide an intellectual and a clear picture of how Singapore is progressing towards maintaining its top position as far as Asian IP sector is concerned. The results will also show that which entities (for example. Firms, local companies, global companies) are the major contributors in this progress.

 

Major contributors in Singapore IP

 

  • Almost 50% of patents filed in Singapore are invented in United States.
  • Almost 13% of the filed Patents in Singapore are invented in Japan [3].
  • Almost 95% of total patents filed in Singapore are filed by companies which are not originated in Singapore.

Thus more than 60% of filed patents in Singapore are invented in United States and Japan combined. The statistics in itself shows that global companies are very much interested in getting their IP protected in Singapore. This is possible mainly due to the steps taken by Singapore Government [1][2]. In addition to these steps the Government also provides monetary help for Research & Development and for filing patents to Singapore originated companies [4].Most patented technology areas in Singapore? [6]

Singapore: Granted Patents & Registered Trademarks

Data Analytics companies analyzed the trend of patents published at the patent office of Singapore to find out the number of applications granted. The analysis was done using the patent kind codes to consider various stages of patent applications. It was concluded that:

  • From the year 1999, the average number of granted patents by local and global entities at the Singapore patent office per year is more than 5,000. The rate of growth has been consistent over the past decades [5].
  • More than 21000 Trademark Applications have been filed in 2014, out of which around 19000 applications have been registered. [7]

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] Lee, Shaun. “IP Hub Master Plan: To Develop Singapore as a Global IP Hub in Asia.” Singapore International Arbitration Blog. N.p., 03 Apr. 2013. Web.

[2] “IP Financing Scheme Launched.” Spruson & Ferguson. N.p., 10 Aug. 2014. Web.

[3] GreyB. “The Race of Singapore to Become The Next IP Hub of Asia.” GreyB. GreyB, 10 Apr. 2017. Web.

[4] “Funding and Assistance.” Funding and Assistance. IPOS, 21 Sept. 2016. Web.

[5] “PTMT Products and Services Brochure.” Patent Statistics, PTMT Brochure. N.p., n.d. Web.

[6] SOURCE-WIPO STATISTICS DATABASE; LAST UPDATED 05/2017

[7] https://www.ipos.gov.sg/AboutIP/IPResources/Statistics.aspx

 

 

Indonesia: Amendments in Geographical Indications law &Trademark law

Indonesia: Amendments in Geographical Indications Law &Trademark law

 

October 27, 2016 was the day when the Indonesia Government passed the new law related to both trademarks and Geographical Indications [1] which will replace the Old Trademark Law (Law No. 15 of 2001 on Trademarks) and expected to be enacted soon after the assent from the President. Lots of amendments related to registration, protection and enforcement have been incorporated into the new Geographical Indications and Trademarks law.

 

The amendments in the new Trademark Law can be categorised as [2]

 

  • Prosecution— Process
  • Prosecution—Substance
  • Enforcement (Litigation)

 

Few amendments are yet to become effective and will take a year or so for their effectiveness. Therefore, it is sure that more changes will be visible in future as far as the Trademark law is concerned.

 

The below detailed description provides you brief details about the changes in the new trademark law:

 

(a) Prosecution—Process [3]

 

  • It is now possible to electronically file trademark applications. In other words filing new trademark applications is no longer illegal.

 

  • There is no need to submit signed copy of Statement of Entitlement forms at the time of filing of trademark application. Upon submission of a trademark application form along with the depiction of the trademark with stipulated fee, the respective trademark will be granted a filing date. However, the previous practise of submitting the mentioned documents is still prevailing.

 

  • Another amendment in the procedural stage of the prosecution is that the opposition period will now take place before substantive examination. Therefore, once the trademark application has been filed, they will proceed immediately to publication for a two-month opposition period. Previously, the opposition period was three months.

 

While these amendments were incorporated to fast track the examination & prosecution process, it also enables in increasing number of bad faith applications that are published for opposition and/or registered. Bad faith applications are an ongoing problem in Indonesia and previously, at least some of them were weeded out during the examination stage. Now, with publication taking place first, i.e within 15 working days after the filing date which means that practically every application that is filed will be published. Hence, it is of utmost importance that the whole prosecution (procedural) stage of the trademark application is monitored closely.

 

(b) Prosecution—Substance [3]

 

  • According to the new trademark law the definition of what can be included in a trademark has been somewhat expanded. Now, 3-dimensional trademarks marks, sound trademarks and holograms can be accepted for registration and filing in Indonesia.

 

  • A new amendment has been made in the law i.e. two additional criteria for rejecting a trademark application has been included. These two rejection criteria are (i) misleading or (ii) deceptive elements. Additionally, the new amendment states that a trademark application can be rejected based on an earlier-filed pending application.

 

  • According to the new law registration of generic trademarks is allowed only if they are combined with some distinctive elements.

 

(c) Enforcement (Litigation) [4] [5]

 

  • According to the new trademark law in litigation process a trademark cancellation action can now be performed based on a conflict with a prior geographical indication (GI) and/or traditional knowledge (TK) element.

 

  • According to the amendment additional provisions have been provided on preliminary injunctions. The target behind for incorporating such provisions in the new law is to increase their use. However, it remains to be seen if this will occur given the requirement, among others, for the plaintiff to pay a bond to the Court equal to the value of the allegedly infringing goods, which would be forfeited if the petition is not successful.

 

  • The new amendment has nearly doubled the penalties (criminal) for all types of infringement.

 

 

  • The new amendment establishes protection for unregistered but famous trademarks by specifically stating that such marks can form the basis of a trademark infringement claim or can be used to cancel a registered mark.

Additionally, applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

 

[1]http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_1.pdf

 

[2] “Indonesia: New Trademark Law.” Indonesia: New Trademark Law. IP Coster, 7 Nov. 2016. Web.

 

[3] “Indonesia’s New Trademark Law – An Overview of the Changes.” Indonesia’s New Trademark Law – An Overview of the Changes | Tilleke&Gibbins.N.p., 11 Jan. 2017. Web.

 

[4] Redfearn, Nick. “Indonesia’s New Trademark Amendments – a Summary.” Rouse – Indonesia’s New Trademark Amendments – a Summary. Rouse The Magazine, 3 Nov. 2016. Web.

 

[5] Lovita, Tania. “Indonesia’s New Law on Trade Marks and Geographical Indications.” Rouse – Indonesia’s New Law on Trade Marks and Geographical Indications. Rouse The Magazine, 31 Oct. 2016. Web.

 

 

Cambodia’s Intellectual Property

What is new in store for Cambodia’s Intellectual Property?

 

There are some recent developments in Cambodia as far as the IP of the country is concerned [1]. Out of these developments two of them have been major.

 

The first amendment came into existence on November 25th2016 [2]. The change was that the Cambodian kingdom Government to the Geneva (1999) Act submitted its instrument of Accession related to the Hague Agreement which is concerned with the global Registration of Industrial Designs [3].The above mentioned Geneva (1999) Act became effective on February 25th 2017 in Cambodia and enables the Hague System users to assign Cambodia in an application of international design.

 

The second amendment came into existence on January 23rd 2017[4] when Cambodia signed an agreement of validation with the European Patent Organization (EPO) and became the first country in Asia to do so. This change will be effective once it is incorporated and adopted into the law of kingdom of Cambodia, possibly by July 1st 2017. Based on this amendment, the European Patent applicants will be able to submit in future a request for validation in the kingdom of Cambodia, where the European Patent will have the same value and effect as a Cambodian national patent application and will be subjected to national law. The 2 major amendments discussed above will now be discussed in more detail below.

 

  1. Cambodia Following the Hague System

After submitting its instrument of Accession related to The Hague Agreement by the Cambodian kingdom Government to the Geneva (1999) Act, Cambodia is now a part of Hague system. This enables the Hague System users to assign Cambodia in an application of international design. The 1999 Act came into effect in Cambodia on February 25th 2017. Just like the Madrid protocol for trademarks, this system enables the applicants for obtaining multiple registrations on the basis of one single International application filed with World Intellectual Property Organization (WIPO) [5].

There are few other South-East Asian countries other than Cambodia which are a part of the Hague convention which includes inter alia Brunei and Singapore [6]. This move by Cambodian government has and in future will motivate other nations to also become a part of the Hague convention; as such a step is an economy booster for the participant country.

 

  1. Cambodia-EPO Validation Agreement

History was made on January 25th 2017, when the kingdom of Cambodia became the first Asian nation to sign an agreement of validation with the Patent Organization of Europe (EPO). This agreement will be effective possibly from July 1st 2017 as mentioned above and will be a part of Cambodian law. There are 38 European countries (“member states”) which are member of the EPO till date [7]. The EPO was set up for facilitating the members with a single procedure for granting of patents. There are, from 2010, some non-member nations with which the EPO has signed agreements of validation. These non-members are Tunisia, Republic of Moldova, Morocco, and now Cambodia. According to this agreement, once an applicant for a patent with WPO submits a request for validation in each or one of the chosen validation countries, the patent application can be extended to these validation states. In these validation states the European Patent will have the same value and effect as a national patent application and will be subjected to national law. Such a step by the Cambodian government will allow a boost in the businesses.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

[1] WATANABE. “Trends in Development and Issues Related to IP Systems in Three GMS Countries: Cambodia, Lao PDR and Thailand.” Trends in Development and Issues Related to IP Systems in Three GMS Countries: (n.d.): n. pag. InndsstIintUDteevEolofPImnetnetrAnnadtIisosnuaeslRReelaltaetdiOtonIsPASnysdtEAmrse Ian TShtrueedGieMs,S R Ciotusnutrmiees􀊢ikWanATAUNAnBiEv􀊣ersi9t5, 2011.

[2] “Cambodia Joins the Hague System.” WIPO – World Intellectual Property Organization.Wipo, 25 Nov. 2016.

[3] “The Hague Notification No. 131 Hague Agreement Concerning the International Registration of Industrial Designs Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.” TREATY/HAGUE/131: [Hague Agreement] Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs | Accession by the Kingdom of Cambodia. WIPO, 25 Nov. 2016.

[4] Office, European Patent. “Cambodia First Asian Country to Recognise European Patents on Its Territory.” EPO – Cambodia First Asian Country to Recognise European Patents on Its Territory. EPO, 23 Jan. 2017.

[5]”Hague – The International Design System.” WIPO – World Intellectual Property Organization.WIPO, n.d.

[6] “WIPO Singapore Office.” WIPO – World Intellectual Property Organization.WIPO, n.d.

[7]”European Patent Convention.” Wikipedia. Wikimedia Foundation, 31 May 2017.

 

 

Google AdWords Giving a Good Wallop to Trademark Law

Introduction

In this era of globalization, we use Internet on a regular basis in our daily lives. People are continuously trying to gain more profits and for this they sometimes adopt illegal practices for promotion of their goods and services. These practices include unauthorized use of a registered name or mark owned by their competitor. This misuse leads to infringement of rights of legitimate owner of the name or mark. A specific kind of software is generally used by search engines, called spider or crawler to gather information of web pages available on the Internet. In order to attract customers towards their websites, owners are continuously making use of “Google AdWords”, “Meta-Tags”, “Hyper- Linking”, “Deep- Linking”, etc.

The present article outlines relation between “Use of Google AdWords” and “Trademark Infringement”. Basically, Google AdWords are keywords to search for a particular category of goods and/or services required by a person. When a person types a particular keyword on a search engine, the search engine matches the keyword entered by the person with the Google AdWords of various web-pages, and accordingly displays the most prominent results. By using the competitors name and/or mark with various permutations and combinations, search engine results are effortlessly manipulated to lure the visitors to one’s website. Google AdWords are used to set the web links in a prioritized manner based on the queries of user. They act as a code for providing information about the web page, which helps in diverting Internet traffic to their websites, causing considerable commercial loss to the legitimate registered owner.

 

What is a Google Ad-Word?

Google AdWord is a successful and client capturing advertisement option that is also a misleading source with respect to the Trade Mark rights of a trademark owner. Google AdWords are basically keywords that are used by an advertiser of certain goods and services to advertise their products, wherein when a specified keyword is searched for, the search engine shows the advertisements/websites of various advertisers. Hence, in this way, Google AdWords are used to divert Internet traffic towards a particular advertisement/website. The keywords used, generally denote someone’s area of business. It is an intelligent system that highlights ads/website depending on the keyword search. Its use is very simple and Google is paid by the website owner for each and every click on their website. AdWords is a paid referencing service started by Google for business promotion.

 

Misuse of Google AdWords leads to Trade Mark Infringement

This is a very important question as to how the use of Google AdWords may lead to Trade Mark infringement. If a person selects any word to be used as an AdWord, which is either similar or identical to a third party’s trademark, does the person infringe the rights of the trademark owner?  It was held in the very famous Consim- Google AdWords controversy[1] that if these AdWords are used by the person which is similar or identical to the third party’s trademark, then this amount to diluting/tarnishing the goodwill or reputation of the third party as this creates confusion in the mind of the customers of the person whose trademark is allegedly infringed. Therefore, this should not be allowed and becomes a case of trademark infringement.

Let us understand this with the help of an illustration: Suppose ‘A’ is the registered trademark owner of certain brand. Now ‘B’ is using AdWords which is in competition to the business owned by ‘A’, and uses Trade Mark of A as one of the paid keywords in the Google Adwords. ‘B’ is therefore diverting the internet traffic towards his own advertisement by using Trade Mark of A such that when users search for A, advertisement of B would also be shown, thereby causing damage to the goodwill/reputation owned by ‘A’, which is not allowed under Trade Marks Law. Hence, selection of Google AdWords becomes very relevant in the eyes of Trademark Law.

A case, Matrix Cellular (International) Services Limited v TSIM Communication Services Private Limitedand IP Attorneys, which represents the plaintiff in the Delhi High Court, wherein the Plaintiff, Matrix Cellular (International) Services Limited, is the proprietor/ owner of the trademark MATRIX since 1995 in respect of ‘International roaming Sim cards’. The defendant is accused of dishonestly using plaintiff’s trade mark i.e. MATRIX as Google AdWords to divert the users to their website by creating a confusion in their minds. The Court recognized that the defendant has engaged in dishonestly using Plaintiff’s trademark to gain profits and the same has resulted in infringement of Plaintiff’s trademark, as a result of which the Court was pleased to grant an interim injunction in the favor of the Plaintiff.

 

Exemplary Landmark Cases

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. [2]

In this case, Appellant was a private limited company that provided online matrimonial services. In the course of its business, it had adopted several trademarks including Bharat Matrimony, Tamil Matrimony, Telugu Matrimony, Assamese Matrimony, etc. It had registered several domain names with these word marks. The respondents, Google India and its parent company were in the business of offering an advertisement program called AdWords. It generates ‘Sponsored Links’ on the right-hand side of any organic search results produced by Google, closely corresponding to the term searched for.

Google allows the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, more the chances that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of other players in their business to catch the attention of user and thereby divert the business meant for such other players. The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWords Program and Key Word suggestion Tool. It also restricted Google from passing off their services using the appellant’s trademarks and their closely resembling variants. The issue in question was whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.

Madras High Court thus concluded that the appellant had made a prima facie case and the balance of convenience lied in its favor and thus eventually granted an injunction.

  1. Rescuecom Corp. v. Google Inc. [3]

This is a very interesting case where the main question before the court was whether the use of trademark as keywords amount to Trademark infringement. The US Court of Appeal held that the use of trademark as keywords can be equated to the use of trademark as Meta –Tags. Therefore, Google was held liable for using the trademarked words in its Keyword Suggestion Tool. [4]

Conclusion

Thus, summarizing, use of Trademarks as a Google AdWords can be allowed if it comes under fair use, otherwise the same is restricted. Google is everywhere and it is estimated that approximately 80-85% of the world’s population uses it. If a person wants to mislead someone from the actual website of the proprietor to the impugned one it is the best platform available. Thus, customers are lured and are often misguided by the person violating by increasing the traffic and demand towards his/their website. The use of such Google AdWords is entirely dependent upon the facts and circumstances of case. Google AdWords being special keywords are embedded in web-pages and are often used by search engines in deciding the relevant websites to show in a search result. Therefore, the unfair and illegal use of the Google AdWords with respect to the Trade Marks leads to the Trademark infringement and irreparable damage to the legitimate owner. Choice of keywords becomes very important in this regard otherwise it would lead to infringement of other person’s rights. The concept of Google AdWords in relation to Intellectual Property should be understood and their misuse should be prevented.

About the Author: Ms. Yogita Agrawal, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

 

References

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2013 54 PTC 578 (Mad).
  2. 2013 54 PTC 578 (Mad).
  3. 562 F.3d 123 (2nd Cir. 2009).
  4. Mattel Inc. and Others vs. Jayant Agarwalla and Others 2008 (38) PTC 416; Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors. C.S. (OS) No.1155/2011.

Global Innovation Index Ranking 2017

On June 15 2017 WIPO has launched global innovation index containing worldwide ranking in term of innovation of year 2017.[1] The theme of the GII 2017, “Innovation Feeding the world,” looks at innovation carried out in agriculture and food system. Switzerland, Sweden, the Netherlands, the USA and the UK are the world’s most-innovative countries, while a group of nations including India, Kenya, and Viet Nam are outperforming their development-level peers.

India holds rank 60th this time. Although improving its rank 66th of previous year but still a long run to go. Switzerland and Sweden maintained their rank 1 and 2 respectively of previous year, this year also. UK dropped down from rank 3 to 5. Switzerland maintained rank from 7 consecutive years now. It has been found that slow and steadily India is emerging as innovation center in Asia.

Global Innovation Index is one of the leading benchmarking tool for business executives, policy makers and others seeking insight into the state of innovation around the world. The Global Innovation Index (GII) aims to capture the multi-dimensional facets of innovation by providing by providing a rich database of detailed metrics for 127 economies 0n the basis of metrics, from patent filing to education spending that provide decision makers an upgraded eye on innovation activities that help those countries to increase their economy and social growth.

The aim of GII is to note a continued gap in innovative capacity between developed and developing nations and lackluster growth rates for research and development (R&D) activities, both at the government and corporate levels.

 

“Innovation is the engine of economic growth in an increasingly knowledge-based global economy, but more investment is needed to help boost human creativity and economic output”.

“Innovation can help transform the current economic upswing into longer-term growth.” said WIPO Director General Francis Gurry to the press in press conference regarding the release of Global Innovation Index ranking.[2]

The GII 2017 is calculated as the average of two sub-indices. The Innovation Input Sub-Index gauges elements of the national economy which embody innovative activities grouped in five pillars:

(1) Institutions

(2) Human capital and research

(3) Infrastructure

(4) Market sophistication

(5) Business sophistication. The Innovation Output Sub-Index captures actual evidence of innovation results, divided in two pillars

(6) Knowledge and technology output

(7) Creative outputs.

Global Innovation index recognize the key role of innovation as a driver of economic growth and prosperity, and the need for a broad horizontal vision of innovation applicable to developed and emerging economies, the GII includes indicators that go beyond the traditional measures of innovation such as the level of research and development.

About the Author: Mohini Sharma, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

[1] Global Innovation Index 2017. (2017, June 15). Retrieved June 16, 2017, from https://www.globalinnovationindex.org/gii-2017-report

[2] Global Innovation Index 2017: Innovation Feeding the World. (2017, June 15). Retrieved from https://www.youtube.com/watch?v=2DPdOZjqYFM

Geographical Branding for the Mangoes from Guimaras (Philippines)

Guimaras, touted as the “Mango Capital of the Philippines”, celebrated its Manggahan Festival in May 22nd this year.[1] In fact no one will dispute if Guimaras is proclaimed as the “Mango Capital of the WORLD”, considering their sheer love for the sweet fruit, evident by the consumption and sale of varied items of mangoes, ranging right from ‘Mango Pizzas’ to ‘Mango Ketchups’!

But shifting attention from the region to the actual fruit, the reportedly (believed to be) ‘sweetest-variety’ Mangoes from the region, as reported by Manilla Bulletin[2], have finally been granted a Geographical Indication tag which will boost its export which had dwindled in the past few years owing to erratic weather conditions[3] Manila Bulletin’s report was further confirmed by the Western regional director of Department of Trade and Industry (DTI) of Philippines, Rebecca Rascon.

The GI tag provides protection to the unique native products originating from that particular region in the country and therefore certifies that the mangoes are grown and produced by members of Guimaras Mango Growers and Producers Development Cooperative. The move will surely go a long way in protecting the reputation of Guimaras Mangoes from “fake” and low quality mangoes, meanwhile also ensuring the label of ‘Guimaras Mangoes’ are no longer used by other producers to sell and earn profits from; and that the consumers are buying real Guimara mangoes only.

DTI’s Intellectual Property Office of Philippines (IPOPHL) was responsible for processing the registration of Guimaras mangoes as one of the country’s native products with geographical branding.[4]

The launch of the GI tag was the highlight of this year’s Manggahan Festival, which ended on May 22. The mango festival also coincided with the 25th founding anniversary of Guimaras, which was previously part of Iloilo province.

Guimaras Governor Samuel Gumarin, meanwhile has established Task Force Golden Island to strongly enforce and make sure that non-Guimaras mangoes are not sold in the local market.

About the author : Abin T. Sam, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] A. French, Lillberth. ‘New record in Manggahan ‘eat-all-you-can’. Philippines Information Agency. http://pia.gov.ph/news/articles/931495529552 (accessed on 16th June 2017).

[2] Yap, Tara. ‘Guimaras mangoes earn geographical branding’. Manila Bulletin. http://newsbits.mb.com.ph/2017/05/20/guimaras-mangoes-earn-geographical-branding/ (accessed on 27th June 2017).

[3] Santos, Maricyn. ‘GI seal protection from fake Guimaras Mangoes’. Banner News. https://thedailyguardian.net/banner-news/gi-seal-protection-fake-guimaras-mangoes/ (accessed on June 2017).

[4] ‘Guimaras gets IPO GI seal for sweetest mangoes’. Philippines News Agency. http://www.pna.gov.ph/articles/986928. (accessed on 16th June 2017).