Division Bench of Delhi High Court Passed an Interim Order against Glenmark Restraining Infringement of Symed’s Suit Patents (July 2015)

The High Court of Delhi has restrained Mumbai-based generic drug maker Glenmark Pharmaceuticals Ltd from manufacturing and selling, directly or indirectly, Linezolid, manufactured through the process patented by the Hyderabad-based pharma company Symed Laboratories Ltd. The Justices have made it clear that the appellant (Glenmark) may use any other process which may be a development of Glenmark process / Upjohn process so long as it does not infringe the patented processes of the respondent (Symed).

Background:

Symed Laboratories Ltd. is an Indian bulk drug manufacturer based in Hyderabad. Among other drug products, it manufactures Linezolid, an antibacterial used to treat skin and blood infection including pneumonia. Symed owns two process patents (IN213062 and IN213063) for the manufacture of intermediates for linezolid. The product patent for the drug is owned by Pfizer. Symed has sued a number of Indian manufacturers of Linezolid for patent infringement including Glenmark, Optimus Pharma, Alkem Laboratories Limited (Symed has now entered into a settlement with Alkem), Mankind Pharma Limited and Sharon Bio-Medicine Ltd.

The Delhi High Court had granted an ad interim injunction on 19 January 2015 restraining the Defendants, through their officers, directors, agents and distributors from manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in the production of Linezolid manufactured in a manner so as to result in infringement of the Symed’s registered Patents IN213062 and IN213063 till the disposal of the suit.

The grant of interim injunction had been predicated on four criteria:

  • That there is a prima facie case in favour of the plaintiff;
  • That the plaintiff is likely to suffer an irreparable injury if the defendant is not restrained;
  • That the balance of convenience lies in favour of the plaintiff; and
  • That public interest would not be dis-serviced by the grant of the injunction.

However, the injunction against Glenmark was vacated by the Delhi High Court consisting of Justice Badar Durrez Ahmed and Justice Sanjeev Sachdeva within 2 weeks of the Single Judge’s decision. The other defendants in this case have not been as lucky and continue to suffer the injunction.

While setting aside the January 19 order, the court noted: “It was incumbent upon the single judge to prima facie come to a finding that the active pharmaceutical ingredient (API) of both Glenmark and Symed were identical.”

“This (prima facie finding) does not appear to have been done. In these circumstances, we are vacating the interim order and modifying the same by directing appellant (Glenmark) to maintain accounts and file same in court..,” the Bench said and listed the matter for further hearing on 16 March 2015.

It was also noted by the Court that the single judge did not go into the point regarding applicability of section 104A of the Patents Act 1970 as per which in suits alleging infringement of process patents, the defendant (Glenmark) has to prove that its process is different from that of the plaintiff.

Symed Labs Ltd. vs Glenmark Pharmaceuticals Ltd. on 17 July 2015

In the very recent decision, the Delhi High Court has ordered that Glenmark shall use its process which is virtually identical to the Ujohn process as indicated in the expert report of Prof. Steven W. Baldwin (filed by Glenmark). The Court noted that the expert report indicates that the appellant (Glenmark) process and the Uphohn process are different from the process of preparation of Linezolid, which is employed by the respondent (Symed).

It has been agreed by both the parties that the appellant (Glenmark) shall manufacture Lineolid through its process indicated in the expert report which does not infringe upon the patented process of Symed as indicated in the report. The learned counsel for the respondent (Symed) has accepted the report to the extent that the process shown as the Glenmark process which is virtually identical to the Upjohn process does not infringe the patented process of Symed for production of Linezolid. The learned counsel for the appellant has also stated that they have not and shall not use the patented process of Symed numbered as IN213062 and IN213063.

Paragraph 24 of the report of Prof. Stephen W. Baldwin reads as under:

24. The two claimed intermediate compounds discussed above (PHPFMA and CHFA) do not appear in the Glenmark process for making Linezolid. Moreover, the reaction conditions involved in the various Glenmark process steps would not produce either of these claimed comounds, even as trace inpurities

[CHFA (N-[3-Chloro-2-(R)-hydroxprophy1]-3-fluoro-4-morpholinyl-anlaniline) : PHPFMA (N-3 [Phthalimido-2-(R)-hydroxprophyl]-3-fluoro-4 (morpholinyl) aniline]

While both the parties have accepted the above extracted paragraph No.24 of the report, the Justices have made it clear that the appellant (Glenmark) may use any other process which may be a development of Glenmark process / Upjohn process so long as it does not infringe the said patented processes of the respondent.

Dr. Singhvi, the learned senior Advocate stated on behalf of appellant (Glenmark) that the appellant has already been and will continue to take declarations from sellers of Linezolid to the effect that the seller does not violate anybody’s registered patent and will also in future specify in the declaration b the seller that he does not violate Symed’s aforesaid two patented processed, adding that in the event the respondent initiates legal proceedings against a seller for infringement of the aforesaid two patents, the appellant, on a request being made, would supply the aforementioned declaration.

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: antony@khuranaandkhurana.com

Compulsory Licensing Application against the Patented Drug SAXAGLIPTIN by Lee Pharma

Lee Pharma, a Hyderabad based Indian pharma company, has filed a Compulsory Licensing (CL) Application (in accordance with Section 84(1) of the Indian Patents Act) against one of the patented drug Saxagliptin for treating Diabetes Mellitus. The Patent on Saxagliptin was granted to Bristol Myers Squibb (BMS) in India on 30th April 2007 having number IN 206543 having title “A Cyclopropyl-fused pyrrolidine-based compound” which was assigned to AstraZeneca by way of Deed of Assignment. This is the third instance in India where a compulsory licence has been asked for. Earlier, Natco got its first CL against Bayer’s patented drug Sorafenib while the CL application from BDR against Bristol Myers Squibb (BMS)’s patented drug Dasatinib was rejected by IPO. The application for compulsory licensing against Saxagliptin drug was filed by Lee Pharma dated 29.06.2015 and can be seen here.

Grounds Relied by Lee Pharma for Compulsory Licensing:

  1. That the reasonable requirements of the public with respect to the patented invention have not been satisfied” (Section 84 (1) (a))

The Applicant- Lee Pharma has stated in its CL Application that Saxagliptin is not manufactured in India even after 8 years of grant of the Indian patent by BMS, rather is being imported to India by BMS or AstraZeneca and marketed by Astrazeneca. By citing form 27 filed by BMS with respect to working of patent India for the year 2013, Lee pharma stated in his application that the total number of tablets imported to India was 823,855 and total value was Rs. 654,629/-. Based on above, cost for importing one tablet in India is only Rs 0.80 per tablet whereas the same is being sold at market price of Rs. 41-45/- per tablet.

In an interesting fact, the applicant has further stated that Saxagliptin is one of the four main medicines which are used for the treatment of Type-II Diabetes Mellitus (DM). Further, the applicant has showed that the quantity of the imported tablets is too less to meet the requirements of Indian patients suffering from Type-II DM. They state that there are around 60 million diabetes type II patients, and that ‘even if’ only 1 million out of the 60.1 million were to be prescribed Saxagliptin, 823,855 units (as per Form-27) fall far short of the required amount which is about 0.23% of the total number of tablets required for a year. So there is more than 99% shortage of Saxagliptin in Indian market.

  1. That the patented invention is not available to the public at a reasonably affordable price (Section 84 (1) (b))

As discussed above, the cost of importing one tablet of Onglyza in India is only about Rs 0.80/ per tablet whereas the same tablet is being sold in Indian market by BMS and Astrazeneca at a market price of about Rs. 41-45/- per tablet.  Citing income per capita of an Indian, the applicant showed that the cost of one tablet of patentee’s medicine is more than the whole day earning. Therefore, according to the Applicant, excessive high price of the medicines is a barrier to access of Saxagliptin for the poor patients in India. Thereby the reasonable requirement of public is not being met in terms of reasonably affordable price.

  1. That the patented invention is not worked in the territory of India (Section 84 (1) (c))

The applicant further stated that even after passing a long period of eight years from the date of grant, the patentee has not taken adequate steps to manufacture Saxagliptin in India and make full use of the invention. Pertinently, in earlier Nexavar CL case, the same contention was raised and it was concluded by the Controller that the “worked in the territory of India” means “manufactured to a reasonable extent in India”.

  1. Efforts made by applicant for Voluntary licence (VL): (Section 84(6) (iv))

The applicant earlier requested the patentee to obtain Voluntary License to manufacture and sell the drug in India by writing to them on 02.05.2014. In response to said request for licence, the patentee asked for certain clarifications about the Lee pharma and at the same time disagreed to the applicant’s submission that “the Saxagliptin tablets (ONGLYZA) are not available to the general public at reasonably affordable price and thereby the reasonable requirements of the general public is not being met”. Further, the applicant received a reply from Patentee’s counsel asking for clarifications, manufacturing and marketing details, R&D status and other relevant details for which according to the Applicant, they replied promptly. Applicant sent reminder request to the counsel but did not receive any reply neither from the patentee nor from their counsel.

Another important factor, on which the applicant relied for considering a CL application, is the ability and capability of Lee Pharma to manufacture and cater to the needs of the entire public. Lee Pharma has stated in the Application that it can manufacture 10,00,000 tablets  a day with a price of Rs. 27/- per tablet. Also, the applicant stated that they had already asked for licence from State Government to manufacture Saxagliptin tablets.

Conclusion:

It would be interesting to see the fate of the CL application filed by the Lee Pharma, in view of the fact that this CL application is the third instance prior to which one CL has been granted and one has been rejected. However, it is pertinent to note that the prior two CL applications were for anti cancer drugs (life threatening diseases) while the present application is for Diabetes Mellitus (life management disease). Hence the decision would be noteworthy irrespective of the outcome of CL application which will have a great impact on the Industry regarding Compulsory Licensing practice/filing in India.

About the Author: Mr. Sitanshu Singh, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: sitanshu@khuranaandkhurana.com.

Section 3(D) of Indian Patent Act Strikes Again

India revoked yet another drug patent granted to a German MNC, Boehringer Ingelheim, for its respiratory drug, Spiriva (crystalline tiotropium bromide monohydrate) at a time when the US is putting pressure on Indian government for not providing adequate patent protection to multinational drug companies. In its decision, the patent office held that Boehringer failed to establish any technical advancement or any economic significance for the compound, and the monohydrate crystal form also fails to demonstrate any new therapeutic efficacy and therefore cannot fulfill the requirement of a patentable invention under Section 3(d) of the Patents Act.

Facts and highlights of the case:

  • Boehringer Ingelheim filed a patent application (558/DELNP/2003) for crystalline tiotropium bromide monohydrate in Patent Office, Delhi on 16th April, 2003.
  • A pre-grant opposition was filed by Intermed Labs Pvt. Limited on 05th November, 2007 against the grant of this patent application. The said pre-grant opposition was heard by the then Learned Controller Mr. S.K.Roy. However, the application was recommended for Grant of the Patent on 21st December, 2012 and was allotted the Patent No. IN254813.
  • CIPLA filed a post-grant opposition to Boehringer’s patent, claiming the drug was ‘obvious’, and the crystalline tiotropium bromide monohydrate did not demonstrate any significant change in ‘therapeutic efficacy’.
  • Indian Patent office issued an order on March 2015 to revoke the Boehringer’s patent (IN 254813) covering crystalline tiotropium bromide monohydrate.

This is considered as a landmark case as the patent was revoked after it was granted, with much scrutiny and examination, and after the pre-grant opposition had been dismissed a few years back.

Tiotropium bromide, being a pre-1995 molecule, was not patented in India as the Indian patent law did not provide patent protection for “products” till 1995. However, Boehringer filed a patent application for the crystalline tiotropium bromide monohydrate on the grounds that the monohydrate form is stable under rigorous manufacturing condition and post manufacture, and this specific form exhibits stable particle size distribution make it effective as an inhalable drug.

Cipla had filed an post-grant opposition to Boehringer’s patent in 2013, claiming the drug was ‘obvious’, and the monohydrate crystal form of tiotropium bromide did not demonstrate any significant change in ‘therapeutic efficacy’ as required under Section 3(d) of the Patents Act.

In its decision, the Patent office ordered,

            “The physical stability of the compound during formulation cannot be considered as a sole factor for improvement of therapeutic efficacy of the drug under as required under section 3 (d) of the Indian Patent Act, adding the compound is “a product of mere trial and error” and does not “involve any inventive skill”.

            “The data as submitted by the applicant relating to stability test provided in the reply statement fails to prove clearly the superior properties of the Monohydrate form in comparison with the prior art form, as stability does not have any relation with the therapeutic efficacy”, Assistant controller Ajay Thakur said.

            “In the present case, I would say that the Patentee achieved lowering of crystal growth of the active during the micronization process and such reduced particle size is effective to penetrate the lungs. But this cannot be considered to translate or exhibit enhanced therapeutic activity over the known substance “, Assistant controller Ajay Thakur said.

The Assistant controller further added that,

            “Grant of a patent in other countries cannot be cited as a proof of inventiveness, the fact as clear from the Chinese prosecution, where the Supreme People’s Court of People’s Republic of China upheld the invalidity of Boehringer’s crystalline tiotropium bromide monohydrate patent application reasoning that it lacked ‘unexpected technical effects’ and hence was not ‘creative'”.

Cipla (an Indian Pharma major) has been marketing the generic version of tiotropium bromide monohydrate under the brand name “Tiova” since 2003. The revocation of the patent paves the way for the Indian firm to continue selling its generic version in the Indian market.

Boehringer Ingelheim has a three month window to appeal to the Intellectual Property Appellate Board to seek a review on the order issued by the patent office.

The Section 3(d) was incorporated in the amended Patent Act with the objective of blocking the pharmaceutical companies’ attempt to claim patent right for incremental innovation involving new forms of a known molecule with no significantly enhanced efficacy. MNCs have been constantly trying to circumvent this provision ever since the Patent Act was amended in 2005. In view of the Public interest, the Indian government does not want pharmaceutical companies to unjustifiably profiteer from pharmaceutical substances that involve only incremental innovation.

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: antony@khuranaandkhurana.com

Criticism Sites using Confusingly Similar or Identical Domain Names

Medhavi Singh, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks into a trademark litigation relating to criticism sites using confusingly similar or identical domain names.

Cybersquatting is the buzz word in the arena of domain name disputes and various.IN Domain Name Dispute Resolution Policy (INDRP) and Uniform Domain Name Dispute Resolution Policy (UDRP) decisions regarding cybersquatting have taken front seat when it comes to recent Intellectual Property Law developments. The World Intellectual Property Organization (WIPO) has defined cyber squatting[1] as pre-emptive registration of trademarks as domain names by third parties, wherein the ‘first-come first-serve’ nature of domain name registration system is exploited by the virtual hoodlums of the cyber world called Cybersquatters to register names of trademarks, famous people or business. These Cybersquatters then auction the domain names or offer them for sale directly to the company or person involved at exorbitant prices far beyond the cost of registration; at times they also keep the registration and use the well-known marks or famous names to attract business or unwary customers to their own sites.

Increasing domain name disputes have raised numerous questions when it comes to adjudicating  cybersquatting matters and one such interesting question pertains to status of genuine, non-commercial criticism sites having deceptively similar domain names. WIPO panel for UDRP disputes has explicitly discussed this question and there seems to be a dichotomy of views[2].  A set of panel decisions, especially in case of US disputes, held that the respondent will have a legitimate interest in using trademark as part of the domain name if the registration of the criticism site is for fair and non-commercial use. Whereas other panel decisions affirmed that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark.

Before we elaborate on the above mentioned views of the UDRP panel it is pertinent to discuss the relevant provisions in the UDRP (identical to INDRP) when it comes to adjudicating domain name disputes. Para 4(a) of the UDRP (identical to Para 4 of INDRP[i]) lists following three essentials[3] that need to be established in order to prove that a domain name conflicts with the legitimate rights of the complainant:

  • Disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  • Registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
  • Disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Para 4(b)& Para 4(c) of the policy provides for ‘Evidence of registration and use in bad faith’ and ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name’ respectively.

Keeping in mind these provisions we can now discuss a few panel decisions elucidating the two prevalent views when it comes to non-commercial criticism sites having controversial domain names.

Cases where domain names were transferred

Walmart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D20000477

In the instant case disputed domain names were “walmartcanadasucks.com”,”walmartcanadasucks.com”, “walmartuksucks.com”, “walmartpuertoricosucks.com” and “walmartpuertorico.com”. No evidence was furnished by the respondent (the registrant of the disputed domain name) to demonstrate that “Walmarket Puerto Rico” or “Walsucks” was an established legal entity.  The panel in this case cited WalMart Stores, Inc. v. Walmarket wherein it was held that “Wal-Mart” trademark is well-recognized in many countries including the United States & Canada. It was stated by the panel that Walmartpuertorico.com is identical to the complainant’s trademark except for the presence of the generic top-level domain name “.com”, lowercase letters excluding the hyphen from the complainant’s trademark and the addition of ‘puertorico’. The generic top-level domain name and lowercase letters are devoid of any legal significance when it comes to establishing similarity or identity between marks. Also, the panel observed that elimination of hyphen may create visual difference but there won’t be any phonetic difference between the domain names. Addition of a place name, a common method for indicating the location, doesn’t alter the underlying mark to which it was added as a user is likely to assume that the complainant is associated with the domain name. When it comes to “sucks.com” sites registered by the respondent the panel held that the addition of pejorative term “sucks” is tantamount to creating a phrase “Wal-Mart Canada Sucks” thereby clarifying that the addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights. In this manner the panel addressed the first element of para 4(a) of the UDRP Policy.

The respondent in this case claimed that he had created the website for his forthcoming book “Wal-MartCanadaSucks.com” and was inviting stories of dissatisfied customers for his book. In addition to this, the respondent characterized himself as a “domain name consultant’ in a mail wherein he declared that the disputed domain names were for auction; this proves that the domain names were not mere non-commercial criticism websites but were created for commercial gains. It was therefore, concluded by the panel that the respondent’s claim to a ‘freedom of speech’ interest in establishing the disputed websites was contradicted by his own words and the respondent engaged in abusive registration of the above mentioned domain names within the meaning of Para 4(a) of the UDRP. Consequently, the respondent was ordered by the panel to transfer the domain names to the complainant.

Anastasia International Inc. v. Domains by Proxy Inc./rumen kadievCase No. D20091416

The disputed domain name in this case “Anastasia-international.Info” was created to be used as a website to warn prospective customers of the complainant’s business malpractices and the intent was to share the truth about the complainant, according to the respondent. The panel in this case held that since the respondent selected a domain name identical to the complainant’s trading name and did so deliberately keeping in mind complainant’s rights it cannot demonstrate rights and legitimate interests merely because the intent was to publish content that may be critical of the complainant; the panel did acknowledge that a person is entitled to express his views subject to legal restrictions and a person may use a domain name to do so provided the domain name in question doesn’t cause confusion or mislead the public as noted in The Royal Bank of Scotland Group plc case[4]. Hence, even if the respondent created the website in good faith for non-commercial purpose, the use of confusingly similar domain name was tainted. The subject domain name was thus ordered to be transferred to the complainant.

Cases where the complaint was denied

Howard Jarvis Taxpayers Association v. Paul McCauley Case No. D20040014

The domain name at issue is “hjta.com”, and it is evident that ‘hjta’ is an abbreviation for Howard Jarvis Taxpayers Association. The respondent asserted he’s a critic not a competitor and the domain name did not aim at disrupting the business of the complainant. The respondent also contended that confusing his website with the complainant’s website was improbable for the users as the appearance of the website and representation of criticism on the website was in such a way that it was highly unlikely to deceive a user into associating the website with that of complainant’s. Ergo, the respondent asserted that by creating the disputed website he was exercising his divine and lawful right to speak freely and to speak the truth. The panel in this case suggested that in case of U.S based criticism sites a legitimate interest can be construed specially if there are no other indications of bad faith; it was then concluded that the respondent was entitled to the protection of para 4(c)(iii) of the UDRP as he was making a legitimate non-commercial or fair use of the domain name without the intention to mislead consumers or to gain commercially. There was no evidence of cybersquatting and the website of the respondent appeared to be a classic criticism site. The complainant in this case in spite of prima facie deceptive similarity of domain name with the trading name of the complainant failed to prove lack of legitimate interest as well as existence of bad-faith and the panel therefore, declined the transfer of domain name to the complainant.

Sermo, Inc. v. CatalystMD, LLC Case No. D20080647

“sermosucks.com” is the disputed domain name in this case and as the name suggests the respondent is highly critical of the complainant’s management practices and hence registered the domain name. The panel reiterated “Wal-Mart case” decision as far as the deceptive similarity of the domain name is concerned and held that a domain name containing the trading name of the complainant along with a pejorative term giving rise to a phrase is a confusingly similar to complainant’s mark. However, when it came to the question of respondent’s legitimate rights in the domain name, the panel held that both parties in the matter were residents of the US and if the panel ordered transfer, the same would be prevented by the US courts. The panel for that reason believed in applying US legal principles and on this basis it was stated that the complainant had failed to establish lack of legitimate interest of the respondent in the domain name as the website was a criticism website. The panel pointed out that tarnishment prohibited by UDRP as held by the panel in previous decisions includes “unseemly conduct such as linking unrelated pornographic, violent or drug related images or information to an otherwise wholesome mark and fair use even if libellous will not constitute tarnishment”. The respondent’s website clearly mimics the complainant’s website but is highly critical of the complainant and it was obvious that no right minded organization will create a website like that for criticising its management practices and therefore there was no likelihood of confusion on the part of consumers. There was also no evidence of commercial activity on the website and hence, there was no cogent proof to establish lack of respondent’s legitimate interest or rights in the domain name or existence of bad faith. Transfer of the domain name was therefore denied in this case.

Recently the WIPO panel for UDRP disputes decided the following case wherein the domain name was transferred to the complainant.

Pinsent Masons LLP v. Peter Smith Case No. D20150796

The disputed domain name in this case is “pinsentmasons.lawyer” registered with GoDaddy.com LLC. The respondent contented that the intent behind registering the domain name was to provide a platform to the clients of the complainant (a law firm) and others to post their feedback and comment about the organization. The respondent was using a domain name identical to the trading name of the complainant and the respondent had no Legitimate Right or Interest in the domain name, this disputed domain name was also offered for sale before notice to the respondent of the instant dispute and there was evidence that the respondent had given a false registration address thereby creating reasonable doubt establishing bad faith. WIPO panel in accordance with the above discussion ordered the respondent to transfer the domain name to the complainant.

Indian case

RPS Infrastructure Limited v Jayanta Barua decided on 08/05/2010

The disputed domain name was “rps-savana.co.in” and the respondent registered the domain name as a common discussion platform for customers of the SAVANA construction project in which the respondent had personally invested and was concerned about the health and status of the project. According to the respondent, the website clearly specified that it was a personal, non-commercial website and was not affiliated to the complainant; it was further stated by the respondent that anyone visiting the website would easily find out that the website belonged to the respondent and not to the complainant. In respondent’s defence the complainant was aware of the presence of the website and even welcomed the creation of the website through an e-mail to the respondent; appearance of the website was nothing like that of complainant’s and the respondent was ready to address the copyright issues of the complainant. The arbitrator in this case held that the disputed domain name was definitely confusingly similar to that of complainant’s trading name, the respondent also lacked legitimate interest in the domain name as the domain name consisted of complainant’s trading name and nowhere was it specified that the website was a discussion forum and was likely to result in confusion. Therefore the complainant’s use of the disputed domain name was not considered fair use under para 7 (iii)[ii] of INDRP policy and it was held by the arbitrator that use of such a domain name under para 6 (ii)[iii] of the INDRP policy prevents the owner of the trademark from reflecting its mark in corresponding domain and establishes bad faith. The respondent had registered other domain names using complainant’s trading nameand it was beyond reasonable doubt that the same was done in bad faith. The domain name was thus ordered to be transferred to the complainant by the arbitrator in this case.

Conclusion

There is an abundance of domain name dispute decisions addressing the status of criticism websites and it is evident that confusingly similar domain names are discouraged from being used as criticism website unless the legal principles of the concerned country encourages otherwise. However, it is pertinent to protect trademarks from being used by cybersquatters for directing users to their websites in the garb of criticism websites and the divine right of freedom of expression.

[1]http://www.wipo.int/amc/en/center/faq/domains.html

[2]http://www.wipo.int/amc/en/domains/search/overview2.0/#24question 2.4

[3]https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm

[4] The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D20030166

[i]Any Person who considers that a registered domain name conflicts with his legitimate rights or interests may file a Complaint to the .IN Registry on the following premises:

  • the Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
  • the Registrant has no rights or legitimate interests in respect of the domain name; and
  • the Registrant’s domain name has been registered or is being used in bad faith

[ii] Registrant’s Rights to and Legitimate Interests in the Domain Name

Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant’s rights to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii) :

  • the Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

[iii] Evidence of Registration and use of Domain Name in Bad Faith

For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other

on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.

Win.rar wins over the Disputed Domain Name winrar.com under UDRP Proceedings: win.rar GmbH v. Win Road Assistance Repairs Pvt. Ltd

Recently, granting a major victory to our client, the World Renowned Data Compression Software System provider win.rar GmbH, Administrative Panel, WIPO under UDRP, in its recent decision vide Case no. D2015-0398, issued transfer of disputed domain name www.winrar.com  to win.rar GmbH. This article is to highlight the recent UDRP dispute wherein the Complaint was re-filed by win.rar GmbH over the long disputed domain name winrar.com adopted by one Win Road Assistance Repairs Private Limited. The Copy of the Decision can be accessed here.  

Brief Facts Of The Case

  1. Complainant in the present case is win.rar GmbH who is holder of exclusive worldwide distribution rights for well known WinRAR software by Mr. Eugene Roshal and Mr. Alexander Roshal. Complainant holds trademark for the trademarks WinRAR in various countries including India. While Respondent Win Road Assistance Private Limited has registered the domain name winrar.com since 2006.
  1. Being aggrieved by the adoption of the domain name winrar.com which comprises of the complainant’s well known trademark WinRAR causing confusion and deception to the potential users of the Complainant due to alleged misuse of the domain name, Complainant had filed its first complainant under UDRP in the year 2007 for transfer of domain name winrar.com to the complainant which was denied by the panel as complainant was not able to prove bad faith involved in the adoption of the domain name winrar.com by the Respondent.
  1. However Complainant re-filed the Complaint under UDRP in March 2015 on the ground of certain new relevant actions by the Respondent in respect of the domain name winrar.com and otherwise since earlier decision by the panel in 2008 vide case no. D2007-1768. The re filed Complaint was duly accepted by the Panel for adjudication.

Arguments On Behalf Of Complainant:

Following contentions were raised by the complainant in order to prove the essential elements under UDRP:

  1. It was contended that the Respondent was making illegitimate use of the domain name winrar.com by projecting counterfeit links for download of the renowned WinRAR software of the applicant which was causing irreparable loss to the complainant and its hard earned reputation. Thus the respondent has tarnished the image of the Complainant by diverting customers away.
  2. It was further contended that one of the Director of the Respondent had registered trademark with the word Winrar under class 42 for software in due course of time which is contradictory to what has been claimed by the Respondent in the earlier case on the basis of which earlier decision was rendered. The Respondent has contended in the earlier proceeding that the domain name was adopted for their automobile services and has nothing to do with the Complainant’s business of Software while soon after the decision registered the trademark with the word Winrar with the sole intention to circumvent the policy. Hence the malafide intention and bad faith of the Respondent was prima facie.
  1. It was further argued that one of the Director of the Respondent incorporated another Company in India with the name Winrar Software Private Limited dated 28th September 2008 soon after the earlier decision in their favor; contrary to what had been claimed in earlier proceeding. This incorporation of the Software Company with the Complainant’s trade mark was with sole intention to circumvent the policy and legitimize the illegal deeds of the Respondent.
  1. It was further put on record that the Respondent’s associate corporate named Compsys Domain Solutions Private Limited and Compdot Internet Services Private Limited had registered various third party domain names in bad faith and had been a party to various UDRP proceedings as Respondents. Pertinently in these disputes all the domain name were transferred to the respective complainant. This reveals that the respondent is engaged in a pattern of cyber squatting conduct giving rise to bad faith registrations and use of the domain names.

Arguments On Behalf Of Respondent:

Respondent’s contentions were as follows:

  1. The Respondent contented that the registered the disputed domain name was shortened version of long business name: “WIN” for Win, “R” for “Road”, “A” for Assistance and “R” for repairs.
  1. The Respondent claimed that they have no knowledge of the Complainant’s alleged trading activities. It was further contended that the Respondent’s rights were clearly established in earlier case D2007 1768. A director of the Respondent filed for trademarks nos. 1850490 and 1850491 “knowing the devious ways of the Complainant”.
  1. The Respondent contended that they had been commonly known the name “WINRAR”. The board of the Respondent’s shop is headed “WINRAR TYRE PLUS”. The name “Winrar” also appears on advertising leaflets, business cards, invoices, letterhead, cheques, bank account, bank statement. Accordingly the Respondent is conducting an active business and its name was not designed to circumvent the UDRP without any intention to carry out a legitimate business. The Respondent operated a genuine website at the disputed domain name for Winrar Garage since 2008.
  1. The Respondent further argued that their business is “very local in nature” and so the Respondent allows other advertisers onto its website as is normal practice on the Internet. As traffic from outside India was of no benefit to the Respondent, it decided to allow partial use of its site by advertisers offering the Complainant’s actual software, not counterfeit versions. The Complainant does not provide commission to resellers when users upgrade to its paid software; instead the Complainant allows resellers to bundle its free software with a toolbar or other software. There are hundreds of such sites. The Complainant, not the Respondent, has derived all revenue from the sale of the software. A few months ago the Respondent stopped advertising the Complainant’s software and the loss of revenue must have prompted the Complainant to file this case. The Respondent has never contacted the Complainant offering to sell the disputed domain name. It was the Complainant’s representative who has contacted the Respondent.
  1. The Respondent further contended that they have not disrupted the Complainant’s business or sought to do so. The parties are in no way competitors. The Respondent reiterated that it registered the disputed domain name to expand its own business, not to block the Complainant or create a likelihood of confusion with the Complainant’s marks. On the contrary it was contended that the Complainant was guilty of reverse domain name hijacking (“RDNH”). The Complainant has contacted the Respondent with different offers for the disputed domain name, which have failed, and now it is again resorting to the UDRP when there are no fresh grounds.

Decision

The Panel concluded that the incorporation of Winrar Softwares Private Limited in 2008 and the registration of the 2009 Trade Marks for “Winrar Software” and “Winrar Toolbar” by the Respondent’s director following the Roshal Case did not assist the Respondent. In the Panel’s view, those steps were likely to have been intended to circumvent the UDRP by projecting a veneer of respectability over the Respondent’s proposed offering of the Complainant’s software under the disputed domain name, which comprised the Complainant’s unadorned name and trade mark.

The Panel further concluded that the Respondent has no rights or legitimate interests in the disputed domain name and the same had been adopted in bad faith and that the Complainant has therefore established the all the three element of paragraph 4(a) of the Policy. Hence the Domain name winrar.com was ordered to be transferred to the Complainant.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

Now Unlock your Devices with a Selfie!

Abin Sam, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks into a patent relating to unlocking of devices with a selfie.

Passcodes and the famous Fingerprint-Scans may soon be a thing of the past. Apple, on March 2015, has been granted a Patent that lets users unlock and secure their phones with a selfie!

US Patent No. 8,994,499, titled “Locking and Unlocking a Mobile Device using Facial Recognition,” would let users unlock their devices by taking a photo of their face to prove who they are. It’s the biometric alternative to the Touch ID, Apple’s fingerprint scanner. The company describes using a mobile phone’s camera to capture an image of a user’s face, analyze it and unlock the device if the photo matches the owner’s face. The technology, Apple writes in its patent application, would eliminate some of the time-consuming steps for unlocking a device. As it stands now, users need to drag a slide bar and enter a password, steps that some used to find inconvenient. With facial recognition, the device would automatically unlock when a phone is moved into “a use position” and the camera image matches the initial one taken of the owner. No password would then be required.

But, facial recognition security isn’t new. Android phones also have an automatic unlocking feature called Smart Lock, which allows the device to open when it recognizes the user’s face — though Google warns this is less secure than, say, a password, since someone who looks like you also could unlock the phone. Facebook already uses facial recognition to identify people in photos uploaded to the social networking site, using your profile photos for comparison. That’s how it suggests “tags.” And more recently, Jack Ma, founder of the online retailer ‘Alibaba’, debuted Selfie-Powered Mobile Payments. The “Smile to Pay” will let users pay for goods using their device using facial recognition to authenticate their identity and notably too, this technology is not without its glitches. Hewlett-Packard had also introduced a computer with a built-in webcam whose face-tracking software had trouble seeing black people! The company acknowledged its cameras may have issues with contrast recognition in certain lighting situations.

But where Apple gives all these already existing technologies a beat is an interesting angle, according to which, it continues to secure your device even after it has been unlocked! For better understanding of this twist, it can be summarized simply into the fact that with devices with the said technology enabled, it would continue to periodically take photos of the user, and if the user no longer appears in the images, the device will automatically lock, resulting in blocking the unauthorised intruders from accessing the device’s contents. This twist of the technology by Apple though has not been explained in detail, especially in cases where the original user has given his device to a friend or family member for use. And even though it has been explained on paper or not, the point is that the technology still requires to be used in devices by people around the world for the ultimate recognition of the technology that the company actually aspires for.

But having said that, the fans of Apple devices, who will be happy to read about this technology and would be eagerly waiting for Apple to get this technology up and running in their devices soon, should be made to remember a fact that there is no guarantee that Apple will implement the technology, since the company obtains numerous patents that it never uses! This though can be explained to be of a precautionary, or intended to trip up or block competitors kind of a move from the company. But as the industry increasingly looks to kill traditional passwords, Selfie-Secured Devices surely do sound surprisingly believable.

Parallel Imports

A company sets different price for its products for different countries as per the requirements. Parallel Imports come about when there is a Currency and Tax Difference between two countries as stated above, encouraging people to import products from one country and sell it off in the other country to earn profit (For example: a person importing iphones from USA at lower price and selling those iphones in India after breaking the codes or selling magazine editions of one country into other at higher price). Now when we deal with Parallel Imports, the concept of ‘Principle of Exhaustion’ comes into consideration. It says that once the protected goods are sold to a consumer or buyer, the IP Rights associated with the same gets exhausted.  It is also known as ‘Exhaustion Doctrine’ or ‘First Sale Doctrine’.

What now needs to be clearly understood is that the Trademarks have a particular Goodwill coupled to it and Parallel Imports may injure them if the products are not of satisfying quality standards in the Imported Country. The main benefit of parallel import is that it encourages competition, and Trademarked or Genuine goods are available to consumers at different prices.

Parallel Imports basically constitute import of Non-Counterfeit or Genuine Goods from one country to another without the permission of the IP owner. The products are indeed legal, but are unauthorised because they are imported without the permission of the Proprietor. The products thus imported are often termed as Grey Products (and not black, owing to the fact that they are Genuine). The Parallel Imports cases are closely related to Trademarks and Copyrights and also equally to the International Trade Market, practically observed when people import goods (for example books or mobile phones) which have Trademarks and Copyrights attached with them.

Parallel Imports Related to Copyright

Earlier the definition of ‘infringing’ copy under Sec 2(m) of Indian Copyright Act was not broad, but since the Amendment, the meaning has been broadened which now clearly states “Provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country shall not be deemed to be an infringing copy”[1].

Parallel Import Related to Trademark

Sec 30(4) of the Indian Trademarks Act very evidently states that “Sub-Section (3) shall not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.” This section allows the Trademark owner to control the circulation of goods.”[2]

The two major issues that are often discussed regarding the Parallel Imports and Trademarks in India are Whether Parallel Imports make up Infringement under Section 29 of the Trademarks Act and Whether India recognises the principle of ‘International Exhaustion of Rights’ under Section 30 of the Trademarks Act.[3]

Samsung Electronics Company Limited & Anr. .(Plaintiffs) Vs. Kapil Wadhwa & Ors (Defendants).

Plaintiff no. 1 is a company incorporated under the laws of Korea and plaintiff no. 2 is a company under the Indian companies’ act, plaintiffs also informed about their business in India which has been initiated since 1995 when the plaintiff No. 2 was formed. It has a registered trademark “SAMSUNG” under which it carries business worldwide. In March 2011, plaintiffs received information from market sources that defendants were distributing, retailing and selling grey market printers of the plaintiffs in the market and not the ones supplied by the plaintiff No. 2.

Plaintiffs preferred an IA No.7774/2011 under Order XXXIX Rule 1 and 2 CPC which came up for hearing on 11.05.2011 and then on 03.06.2011. The  court ordered “The Defendants, their partners, and all others acting for and on their behalf are restrained from importing, exporting distributing, selling, offering for sale, advertising, directly or indirectly dealing in grey market ink cartridges/toners, or any other products of the plaintiffs under the mark SAMSUNG amounting to infringement of  plaintiffs registered trademarks.”

Defendants filed written statement and an application which is IA No.10124/2011 under Order XXXIX Rule 4 read with Section 151 CPC seeking vacation of interim order passed on June 3, 2011.

Hearing the parties on 8.7.2011, the court was pleased to pass an order partially modifying the order dated 3.6.2011 passed in the local commissioner application and the goods were released to the defendants with few directions. Arguments raised by the defendant was that “It is a settled law that the import, sale or resale of genuine printers by the defendants does not amount to infringement, dilution and passing off. The plaintiffs cannot impose restriction on sale or resale of genuine products originating from the plaintiffs. The present acts of the defendants are permissible under Section 30 of the Act of 1999.”

The defendants went into appeal and appeal was partially allowed. Impugned judgment and order dated February 17, 2012 is set aside insofar the appellants have been restrained from importing printers, ink cartridges/toners bearing the trade mark Samsung/SAMSUNG and selling the same in India. The counsels for Plaintiffs (Respondents) submitted before the Court, that an ordinary customer, who is provided with the warranties and after sales service by the Defendant (Appellant) may form a bad impression of product of Plaintiffs (Respondents), which can lead to damage of reputation of Plaintiffs (Respondents). The Division Bench while setting aside the order of the Learned Single Judge directed the Appellants/Defendants to prominently display in their showrooms that the products sold by them have been imported from abroad and that the Respondents (Plaintiffs) do not give any warranty qua the goods nor provide any after service and that the warranty and after sales service is provided by the appellants personally. 

Hindustan Lever Ltd. vs. Briju Chhabra

In the above mentioned case, the Plaintiff (Hindustan Lever Ltd) is the Registered Proprietor of the Trademark ‘LUX’. The Defendant used to import LUX soaps manufactured in Indonesia into India without the permission of Hindustan Lever Ltd when the imported LUX soap was for sale only in Indonesia (as indicated on the soap). It was argued by Hindustan Lever Ltd that such import of soap into India amounts to Infringement of its rights and that there shall be no guarantee that the product will be genuine. The High Court of Delhi agreed with the submissions of the plaintiff and ruled in their favor, since it was of the view that if the Imports had not stopped, then the plaintiff could suffer a huge loss due to defendant’s act of misrepresentation.

International Laws on Parallel Imports

Since the ‘Paris Convention’ and the ‘Berne Convention’ are silent on the issue and are not explicitly prohibiting the same, every country has resorted to having their own method of managing Parallel Imports. According to the TRIPS Agreement (Article 6), “for the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4, nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.”[4]

Countries on parallel imports

Australia: it permits the parallel import of certain products except books, cars, however software CD’s and music CD’s can be imported.

USA: Parallel import is legal in USA. It was made legal by establishing a legal precedent. “In the case of Kirtsaeng v. John Wiley & Sons, Inc., the US Supreme Court held that the first-sale doctrine applies to copies of a copyrighted work lawfully made abroad, thus permitting importation and resale of many product categories.”[5]

Hong Kong: Parallel importation is legal or permitted in Hong Kong under the trademark and copyright before the amendment came in July 6 of 2007.

Japan: “Japan‘s intellectual property rights law prohibits audiovisual articles marketed for export from being sold domestically, and such sale of “re-imported” CDs are illegal.”[6] 

Conclusion

From what can be understood, the main detriment of Parallel Import is that it promotes Free Trade and encourages competition, other than facilitating Trademarked or Genuine goods to be available at different prices, allowing the consumers to have an option to buy genuine goods at a cheaper price. What can also be understood is that if Parallel Imports are done away with, the manufacturers will have their own business monopolies, leading to goods being available at higher prices. Also consumers must note that Parallel Imports may assure lower priced products but they may not get the quality, service or satisfaction which they had in mind while buying the particular product, also another known fact being that Parallel Imports leads to a huge loss of revenue to the Trademark Holder due to the import of ‘grey goods’.

The Government definitely here must intervene in this matter so as to maintain a balance between the interests of the Consumers and Trademark Holders, so that no one is at a higher risk. Whereas obtaining an Interim Injunction with an Anton Piller order is still the most effective option when it comes to ways of tackling Parallel Imports.

Ultimately the bottom line is that the decision on whether to allow Parallel Imports is a choice between quality control and price control; between the economic rights of trademark owners and consumer access; between trade monopolies and free trade.[7]

References

  1. Jain Sneha, “Parallel Imports and Trademark Law”, JIPR, Vol. 14, Jan 2009.
  2. http://cis-india.org/a2k/blogs/parallel-importation-of-books
  3. http://www.mondaq.com/india/x/208942/Trademark/Customs+Circular+Parallel+Imports+Are+Legitimate
  4. http://www.worldtrademarkreview.com/Intelligence/IP-Lifecycle-India/2015/Articles/Parallel-import-issues-under-Indian-trademark-law
  5. http://copyright.lawmatters.in/2011/02/what-is-international-exhaustion.html
  6. http://www.trademarksandbrandsonline.com/article/the-legality-of-parallel-imports
  7. https://indiancaselaws.wordpress.com/2013/08/21/kapil-wadhwa-v-samsung-electronics/

http://www.indiankanoon.com

[1] Section 2(m) of Indian Copyright Act (amended Section)

[2] Section 30(4) of the Indian Trademarks Act, 1999.

[3] Article on Parallel import issues under Indian trademark law by; Ashutosh Kane & Sakshi Pande

[4] Article 6 of TRIPS Agreements

[5] http://www.wikipedia.com

[6] Ibid

[7] http://www.lexology.com/library/detail.aspx?g=50598d06-63bb-455a-baea-aea8cb1d8920

About the Author: Mr. Kapil Prajapati, interns at Khurana and Khurana, Advocates and IP Attorneys.

Delhi High Court Stays Order Restraining Lupin From Using Disputed Trademark ‘LUCYNTA’

Reportedly, Hon’ble Delhi High Court stayed an earlier order, dated 26 February, restraining Lupin from using the trademark “LUCYNTA” for its medicines, said to be deceptively similar to the trademark “NUCYNTA” of Johnson and Johnson.

It was argued on behalf of Lupin that Johnson and Johnson are neither selling any goods under the mark nor have any intention to do so in India. It was further argued that the ultimate test is to analyze who is first in the market being India. Further emphasis was laid on the argument that if an Indian company has honestly adopted the trade mark then a multinational must not try to throttle the Indian Company.

On behalf of Johnson and Johnson, it was argued that it was a well renowned name with reputation across the world. There was an awareness of the mark NUCYNTA even in those parts of the world where it was not used owing to its reach through advertisements, social media interalia.

In the same case, filed by Lupin, an order was passed on 26th February 2015 restraining Lupin from using the Trade Mark LUCYNTA. The order stands stayed and re-notified on Monday.

Pertinently over the last 15 years, multinational companies have increasingly cited the principle of trans-border reputation to protect the infringement of their trademarks in regions where they do not operate. And this was also the point of debate before Hon’ble Justice Badar Durrez Ahmed. It was also noted that Johnson and Johnson had not obtained any approvals from the concerned statutory authority for manufacturing and selling drugs under the trademark NUCYNTA in India even after period of three years had elapsed.

The next hearing is scheduled for 16 September. And Lupin was directed to give an account of its sales and profits under the trademark LUCYNTA at the next hearing.

It would be interesting to note the final verdict in the case having regard to the various aspects as claimed by the parties which includes honest adoption, prior use, trans border reputation inter alia.

Source: Livemint

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

Semiconductor Integrated Circuit Layout Design (SICLD)…… Unused Potential IP

When we indulge in conversations related to Intellectual Property, what typically comes to our mind are Patents or Trade Marks or Copyrights or maybe Geographical Indication (GI). Other Intellectual Property Protection Acts such as Industrial Designs and Semiconductor Integrated Circuits Layout Design Act (“SICLD” hereinafter) rarely attract our attention, hardly discussed and to utter surprise of all, being zero practiced so far.

Integrated circuits (ICs) form an integral part of every electronics device. To generate a desired output from a given input, electric signal has to pass through hundreds or even thousands of electrical/electronic components. A lay out is created to arrange these components in smallest possible area meeting the circuit requirement to gain some specific electrical output. With introduction of technologies such as very large scale integration (VLSI), and ultra large scale integration (ULSI), these circuits are getting further miniaturized day by day. To reduce power consumption and to enhance processing speed, new layouts designs are rolled out frequently, thanks to continuous research in the field.

An integrated circuit is an arrangement/pattern of transistors and other circuit elements on a semiconductor chip in accordance with a circuit that provides a logical electrical output. SICLD was introduced to protect layout of said unique arrangements of electrical components. Under this act “Layout-Design”, which essentially is the mask layout or floor planning of the integrated circuits, can be registered and protected.Information such as a procedure, process, system, program,and method of operation among others are exempted from protection.

India heavily depends on semiconductors imports to meet industry needs. Until last decade, 80-90% of semiconductors were imported from countries such as China, Japan, Korea among others. With initiatives like “Make in India”, “Digital India” and other efforts by newly formed government, promotion of local semiconductor manufacturing is logical. If statistics are to be believed, it is quite interesting to note that semiconductor import has come down to 65-70% during fiscal year 2014-15. According to Mr. Ashok Chandak, chairman of Indian electronics and semiconductor association (IESA), import may further come down to 50% during current fiscal year itself.

Prime Minister’s recent business tours, to countries such as China, Korea, Japan among others that are world’s leading semiconductor producers has attracted investment worth billions to India. With increase in number of companies that are willing to invest and setup their manufacturing units in India, semiconductor industry is going to see “Acche Din”.

Despite ever increasing research in electronics and semiconductors industry, it is hard to swallow the truth that there is little or zero awareness of SICLD. The fact is that the Indian SICLD Registry is still looking for first applicant to file an application. It is indeed depressing to see that the official gazette published by SICLD registry says “No Application Received” month after month, ever since it was first introduced.

With revival of semiconductor manufacturing in India, it is high time the SICLD registry also gets revived and makes way for “Acche Din” for itself. The registry with support of renowned law houses, can ensure something fabulous to attract layout design applications. Creating awareness through conferences, workshops, seminars and webinars can simply do wonders. Layout designs hold some unused and unturned potential.Who knows it may turn out to be best bet among all the intellectual properties during years to come.

About the Author: Lalit Suryavansi, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: lalit@khuranaandkhurana.com

Advocates as Patent Agents

In a landmark (and in a way divisive) judgment, Justice S. Tamilvanan of the Madras High Court, on 15th March 2013, allowed the writ petition filed by Mr. S.P. Chockalingam (W.P.No.8472 of 2006) and declared the amendments introduced to Section 126 of the Patents Act 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) as illegal, unconstitutional, ultra vires, void and unenforceable. Thereby restoring the status quo on the patent agent qualification under the Indian Patent Act, 1970 as was in existence before the Patents (Amendment) Act of 2005.

Now in order to comprehend the impact of the Madras High Court judgment and to know as to why this judgment is important, we need to get into the genesis of Section 126 and the legislative history of its amendments.

The original 1970 draft of Section 126 clearly said that Citizens (and not Advocates), who are Indians, over the age of 21 and had a ‘degree from any university’ in India could be registered as Patent Agents provided they clear the qualification exam conducted by DIPP. And as far as Advocates, those enrolled with the Bar Council had the prospect of getting registered and practice as a Patent Agent.

The 2002 Patent (Amendment) Act brought with it a slight change in Section 126, changing the words ‘degree from any university’ to ‘degree in science, technology or engineering’ and other than that everything else remained the same as the original 1970 version.

And then came the 2005 Patent (Amendment) Act, which in the course of amending Section 67(a), deleted Section 126 (1)(c)(i), due to which the Advocates with Science and Engineering backgrounds also, now no longer had the liberty as a ‘matter of right’ to be qualified directly as Patent Agents. Instead they were now required to clear the qualifying examination just as other citizens had to.

Pained by the amendments (though I am not completely sure whether the anguish was for the amendment of 2005, or for both 2002 and 2005 amendments!), Advocate Chockalingam in 2006, filed a Writ Petition under Article 226 of the Constitution before the Madras High Court in quest of a writ declaring the deletion of the amendment of 2005. What the petitioner contended was that the amendment of 2005 which omitted ‘advocates’ from Section 126’s domain was unconstitutional with reference to Section 30 of the Advocates Act, read with Articles 14, 19(1)(g), and 21 of the Constitution of India. It was also very correctly pointed out by the Petitioner that when the Patents Act does not provide any qualifications for being an inventor, then how is it that there could be a qualification for an inventor’s inscribe.  The present system meant that, where in one hand Advocates are allowed to argue Patent Matters, on the other hand they cannot file patents for his/her clients. Thus proving his point that there was no application of mind while omitting the word ‘advocates’ from Section 126.

The Judge, after listening to the contentions of the Petitioner, met the ends of justice by finding it equitable to allow the writ petition and declare that the impugned amendment as illegal, unconstitutional, ultra vires, void and unenforceable.

Now there are certain humble observations that I would like to make, which tells me that this decision passed by the Madras High Court is actually not completely correct.

I identify with the point that asking Advocates with Science backgrounds to clear qualifying examination to be registered as a Patents Agent is unfair towards them, when other citizens with just the Science background can go ahead and get registered as Patent Agents by clearing the same qualification exam. But the fact of the matter is that Patents being a field very different from other fields of law, makes it hard for ‘social engineers’ to file Specifications (complete or provisional) as explained in the Patents Act. A registered Patent Agent, in this case being a ‘social engineer’ with no knowledge of how to file a Specification (and trust me when I opine this that an ordinary case draft filed by an Advocate which he is taught during his LLB or BL degrees is poles apart and much less complex if compared to a Patent Specification explained in the Patents Act) will eventually prove to be a grave matter of concern to an inventor who will probably have to lose out on his hard worked and hard thought invention, just because now according to the Madras High Court every ‘social engineer’ who has a Science Background, has with him/her, “as a matter of right” the liberty to file a Specification.

Also in addition to the above point, what is observed by me is the fact that from a bare reading of the judgment, it can also be concluded that the Madras High Court even wanted to hold Section 53 of the 2002 (Amendment) Act as unconstitutional, but perhaps failed just because there was no challenge made for the said provision by the Petitioner.

And now after several months have passed since the Judgment by Honorable Madras High Court, the IPO has neither Implemented the decision nor has it Appealed against it. And on the other hand, there are several Advocates who are getting inquisitive to know as to how they can get registered as Patent Agents. Meanwhile, the only development regarding the case being an RTI filed by Mr. S. Venkatesh to the IPO, to which he was given the reply by IPO that the decision has been appealed for and since it is pending, nothing can yet be operationalized. This comes at a time when Advocates around the nation are wondering as to how they would be getting a ‘Patent Agent Number’ for themselves and as to why there is no information regarding the appeal filed by IPO (no information is coming from the Petitioner either regarding receiving of appeal papers!). Whoever is pursuing this matter and is contacting IPO for the same is being given the similar reply as was given to Mr. S. Venkatesh.

So basically as things stand today, Advocates with science backgrounds can automatically get registered as a Patent Agent. And the sheer absurdity in it being that they don’t even need to know how a Patent Specification is filed! But given the fact that the Respondents in the case are Controller of Patents and Union of India, the Petitioner can soon expect an appeal (actually it is just not the Petitioner who is expecting, but several other ‘curious’ Advocates too!) since it would highly be unlikely of the Respondents to let go of the monopoly they had been enjoying for such a long period of time!

About the Author: Mr. ABIN SAM, interns at Khurana and Khurana, Advocates and IP Attorneys.

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