Inside Secure states, France Brevets licenses NFC Patents to HTC

Access to robust data and effective analytics are the must for today’s business world. But sometimes it can be difficult to acquire good data. That’s where near-field communication (hereinafter referred as “NFC”) technology comes in. NFC is a short-range high-frequency wireless communication technology which enables the exchange of data between devices when they’re touched together or brought within a few centimetres of each other by using magnetic field induction.

Reportedly, on November 14, 2016, Inside Secure (INSD.PA) has announced that France Brevets have granted to HTC (mobile phone Company) a worldwide patent license under their NFC Patent Licensing Program for use in HTC’s products. [1]

INSIDE Secure, is a leader in security solutions for mobile and connected devices, provides software, silicon IP, tools and know-how required to protect customers’ transactions, content, applications, and communications. With deep security expertise and experience, the company delivers products with advanced and distinguished technical capabilities to serve the gruelling markets of network security, IoT security, content & application protection, mobile payment & banking.

France Brevets leads the efforts under the NFC Licensing Program in Asia, Europe, South America and Africa. NFC Technology LLC, France Brevets’ affiliate, leads the NFC Licensing Program in the US. The Program provides NFC-enabled device manufacturers the right to use the patents of INSIDE Secure, the NFC patents of Orange and also other patents acquired by France Brevets and NFC Technology, LLC. The licensing program caters multiple categories of NFC device manufacturers, for example, those manufacturing smartphones, feature phones, tablets, laptops, desktop computers, TVs, and smart meters offering a wide range of services such as mobile payment, transit, access control, customer retention programs and also ticketing.

France Brevets, created in March 2011, jointly owned by the French government and the Caisse des Dépôts ET Consignations, is the number one patent monetisation and investment fund in Europe. France Brevets aims to create a coherent patent cluster by acquiring public and private patents, then executing licensing strategies that best serve the interests of the patent holders and partners of France Brevets. More simplified it is tasked with helping private and public research to best monetise its patent portfolios from an international perspective. The key focus areas of France Brevets is Information Technology and Communication at large, Aeronautics and Space, Alternative Energy, Chemistry, Materials, Life Sciences and the environment.

Enormous usage of artificial intelligence has made the internet of things (IoT) more ubiquitous giving ways for NFC to become a staple of networks everywhere. Though NFC has only been deployed recently but is grow rapidly in importance and with NFC Patent Licensing Program soon will become a part of everyone’s daily life might be through social interactions, commerce, and identification etc.

References:

China (SIPO) Proposed Amendments Patent Examination Guidelines

On October 27, 2016, the Chinese Patent Office – State Intellectual Property Office (SIPO) published Revised Patent Examination Guidelines draft to remove the software and business method patents hurdles in Chinese Jurisdiction. The published draft will be open for public comments till November 27, 2016.

Chinese Patent Law, under Article 25(2) mandates that patent rights shall not be granted for “rules and methods for mental activities”. Such provision under Article 25(2) is frequently resorted to by patent examiners during examination for rejecting computer implemented business method patents. SIPO spotted the concern that although many patents are related to technical subject matter but they are concluded as “rules and methods for mental activities”, and hence not a patent eligible subject matter. To address the concern, SIPO proposed to amend the patent examination guidelines that relates to software patents as well as business method patents.

  1. Proposed Amendment clause with respect to Business Method:

Proposed draft elucidates, “Claims related to business methods that contain both business rules and methods and technical characteristics, shall not be excluded from the possibilities of obtaining patent rights be Article 25 of the Patent Law.”.

This proposed amendment, if eventually accepted, will certainly elevates the ease to obtain business method patents as the amendment provides clear elucidation to the patent examiners that the claims would not be rejected under Article 25(2) barely on the basis of a business method or rule.

According to this proposed clause, if a claim contains both business method and technical characteristics, the examiner shall not reject the claim on the grounds that the claim relates to “rules and methods for mental activities” under Article 25.

  1. Proposed Amendment clause with respect to Computer Software:

Another proposed change is made in the second line of Part II, chapter IX, section 5.2, paragraph 1, the third sentence of the Patent Examination Guidelines are amended from, “and describe in detail which parts of the computer program are to be performed and how to perform them” to provide that “The components may not only include hardware, but may also include programs.” Another proposed clause of revised draft states that apparatus claim related to computer software program will be eligible for patent rights, if it includes both hardware features and features pertaining to computer software programs. Such programs feature will be considered equally to the hardware features and shall not be treated as merely features so as to bar for patent rights. Further, the guidelines also clarifies that software per se is not a patent eligible subject matter as they are rules and methods for mental activities.

These revised amendments substantiate that red flags generated by examiner indicating non-patentability only on the ground of business method and software will no more exist. The examiners who are more vigilant in treating the patents under business method and software per se are now being addressed by Chinese Patent Office. Amended draft itself explains that claims relating to a business method are not excluded from patentability if they contain sufficient technical features.

iii. With respect to amendment of granted claims:

The proposed revised draft also focuses on amendment of granted claims. As per the current scenario, applicant can only either delete or combine the granted claims, wherein the revised draft proposal allows the applicants to make amendments in granted patent claims. Now, patentees will be able to add limitations from another granted claim in the same patent, but such amendment must be under certain limits. Claim can be amended as far as it is supported by the specification. This amendment will especially benefit those patent assertion entities who mainly focuses on licensing their patent assets.

These amendments will certainly attract worldwide companies that are generating software to enforce and monetize their IP. As China market will become more hospitable in software patents, companies across the globe will certainly try to grab the opportunity in China market.

Also the patent examination guidelines are not to be construed as law but rules for patent examiners at China’s State Intellectual Property Office (SIPO) to get educated about how to appropriately examine the patent applications.

About the Author: Kumar Tushar Srivastava, Sr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at tushar@khuranaandkhurana.com

RENOVA Expands Intellectual Property Portfolio For Cardiovascular And Metabolic Disease Treatments

Renova Therapeutics(hereinafter referred as “Renova”) founded in 2009 and headquartered in San Diego, California, a biopharmaceutical company develops gene therapy treatments for congestive heart failure (CHF) and other chronic diseases The Company also provides gene therapies in pre-clinical stage for those who suffer from Type II diabetes.

Reportedly, Renova has obtained an exclusive worldwide license to a urocortin 3 gene patent from the non-profit Research Development Foundation (RDF) and plans to research this therapeutic gene with the intention to create paracrine gene therapy treatments for patients with cardiovascular diseases such as heart failure. Reportedly, previously this year only, it has also entered into a worldwide exclusive license agreement for RDF’s patent portfolio of urocortin and stresscopin genes, as well as select peptides and proteins with the intention to explore use of this family of genes to create treatment for patients suffering from cardiovascular and metabolic diseases, with one of the world’s most common, incurable and expensive chronic diseases – type 2 diabetes.

 More than 28 million people globally are affected by heart failure and it is the only cardiovascular disease that is increasing in prevalence. It is the most common cause of emergency hospital admissions in patients with age 65 and older. Also, the incidence of type 2diabetes is staggering and growing rapidly, with 27.6 million people in the United States and approximately 370 million people around the world living with this debilitating disease.

This expansion of IP portfolio with RDF would permit Renova to expand inventive research in gene therapy resulting in empowerment for its­ paracrine gene therapy pipeline. Renova Therapeutics’ paracrine gene therapy treatments are based on a novel systemic approach that introduces therapeutic genes capable of leading the body’s cells to work more normally. This exclusive license approach exploits the use of peptide genes that possess favourable cardio-metabolic effects via their paracrine activity. This single-IV-injection treatment method is a base for future products that have the potential to fetch permanent improvements in heart failure and type 2 diabetes patients.

Definitely, patients suffering from CHS and other chronic diseases like type 2 diabetes will have profoundly positive effects on their health in near future as an outcome of Renova Therapeutics’ expansion of IP portfolio.

About the Author: Dr. Komal Tomar, Sr. Licensing Associate at IIPRD and Khurana & Khurana, Advocates and IP Attorneys and can be reached at commercialization@iiprd.com

Licensing Agreement for Multiple Pediatric-focused Products between Lupin and MonoSol Rx

Reportedly, Lupin Pharmaceutical Inc.(LPI,US subsidiary of pharma major Lupin Limited) and MonoSol Rx, a specialty pharmaceutical company have entered into a strategic licensing agreement (OCT-2016) wherein Lupin would develop multiple pediatric products utilizing MonoSol Rx’s patented PharmFilm® drug delivery technology.

Lupin Limited is an innovation led transnational pharmaceutical company which develops and offers a wide range of branded & generic formulations, biotechnology products, and active pharmaceutical ingredients (API) globally. Lupin is the 5th and the 7th largest[1] generics pharmaceutical company by market capitalization and sales globally; the 3rd largest Indian pharmaceutical company[2] by revenues; the 6th largest generic pharmaceutical company in Japan and the 4th largest in South Africa.

 Lupin Pharmaceuticals, Inc. Headquartered in Baltimore, Maryland, is dedicated to delivering high-quality, branded and generic formulations trusted by healthcare professionals and patients in the United States (US). LPI entered the US in 2004 and has since evolved into a market leader in generics and specialty pediatric treatments. LPI is the 5th largest pharmaceutical company in the US [3]by prescriptions.

MonoSol Rx is a specialty pharmaceutical company leveraging its proprietary PharmFilm® drug delivery technology in developing products that improve patient outcomes as well as address their unmet needs. These pharmaceutical and over-the-counter (OTC) products are developed independently and with partners. MonoSol Rx’s leadership in film drug delivery  and is supported by strong IP protection, a robust pipeline of prescription drug formulations with two FDA-approved products – Suboxone® sublingual film and Zuplenz® oral soluble film.

Patients who may have difficulty swallowing pills or tolerating medication in traditional delivery forms, PharmFilm® technology basically provides a minimally invasive substitute to pills/injections/ gels, with the aim of helping patients adhere to their prescribed treatment regimens in order to improve their health, especially children. This technology specifically offers the potential to support pediatric patients in particular, having difficulty with the currently available oral or injectable dosing of required medications.

Lupin is known for its commitment and successful track record of improving accessibility, patient experience and addressing unmet medical needs globally. The agreement lies in line with the company’s focus; addressing urgent, unmet medical needs, expanding into the specialty pharmaceutical market- pediatric sector, by providing solutions to meet the needs of children for a variety of indications. PharmFilm provides a benefit to patients by improving the efficacy, safety, convenience and holds great promise for pediatric applications.

Hope to see more developed and valuable pediatric-focused products in future by Lupin.

About the Author: Dr.Komal Tomar, Sr. Licensing Associate at IIPRD and Khurana &Khurana, Advocates and IP Attorneys and can be reached at commercialization@iiprd.com

THE ORIGIN STORY OF “SUPERHERO”

Ms. Sakshi Sharma, an intern at Khurana & Khurana looks into recent opposition matters pertaining to the Trade Mark Superhero of DC and Marvel.
Upon uttering the word Superhero, pretty obviously all you can picture are comic books or movies, the characters themselves or the two comic book giants which are constantly at loggerheads with each other, Marvel and DC. Hence, it comes as no surprise that the trademark of Superhero is registered by both of them. Yes, you read it right, both of them.
The instances of jointly registering trademarks are rare but not unknown and the words “Superhero” or “Superheroes” (and the diametric opposite i.e. Super villain) and all alternate versions involving these words are all registered as trademarks of Marvel and DC both. In fact, if usage of the trademark in this very article could amount to trademark infringement, provided that it is used for commercial purposes and unjust enrichment by means of free riding on the good will of the owner of the marks.
Through the years, Marvel or DC has pursued litigation against people for infringement of their trademark, the most recent being where a British Businessman was sued for the title of his book, “Business Zero to Superhero” and he won the suit. More about this can be read from here . But this suit has led to looking closely into the very existence of this trademark and on whether this is actually beneficial or not, both to the consumers and the owners of the mark.
Although joint ownership is not recognized in trademarks, in the year of 1979, Marvel and DC had applied for the mark and were granted so by the United States Patent and Trademark Office in the year 1981. The mark governs publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes. Since the ‘80s, they have owned the mark, and were granted renewal in 2009 last . Now, one can’t just register and renew the mark but must also take progressive steps to protect the mark from parties infringing, thus avoiding an opportunity of Trademark Office or the courts to state instances where the Comic Book houses (DC and Marvel) have failed to restrict the usage of the mark to themselves and thus use it against them.
There had been few popular instances which are noteworthy, apart from the above mentioned case of the British author’s book are, Superhero Cleaners, a house cleaning service where the employees were supposed to be dressed in the traditional tights and capes of a Superhero but Marvel and DC had sent them a notice when they attempted at registering their service under the Trademark of Superhero Cleaners, and their registration was subsequently abandoned.
Superhero Donuts, where two students aimed at selling donuts inspired not from comic books (and to avoid Marvel/DC from holding them for trademark infringement and to skip the line of usage permission) but from the heroes of the Bible. However, the term Superhero is still used by them.
Other instances include – Cup O’ Java Studio Comics being sued for their book, “A world without Superheroes” or how “Superhero Happy Hour” was changed to “Hero Happy Hour”. More cases can be read here
Now, the problem with the registration of the term “Superhero” with these two companies is that, firstly, the trademark and resultant rights arising from this are highly generic in nature. Take instances of Xerox or Frisbee, which unique terms in themselves have been so oftenly used that they are now used to denote a photocopy and a flying disc based toy and common association by the consumers is an essential to note here. Thus, in my opinion, the term Superhero, is neither an invention of a new term or any element of uniqueness, thus making the mark generic, not only by means of common usage but because of lack of the new creative element as well.
However, if the term superhero is considered to be generic then why hasn’t the Court struck it down yet. Further, drawing from the examples of Xerox and Frisbee itself, the companies still do own the trademarks, despite them becoming really common among the public. To decide on whether the mark is generic or not, what must be looked at, is the way it is used as in the registration of the mark itself, it is defined as descriptive and has been used that way by both the houses. In addition to this, there exist other superheroes that are famous and do not belong to either DC or Marvel, like Hell Boy or Spawn or Teenage Mutant Ninja Turtles and all of them are pretty famous amongst the masses as comic books or licensed movies. Therefore, though Marvel and DC comics are associated with “superheroes” the claim that the public associates the term “Superheroes” with these two houses only, in my opinion, is a feeble ground, thus rendering the claim of the mark as invalid.
Secondly, the concept of trademarks works in the way of protection of the product name and goodwill of companies by means of consumer recognition and since there are two competing houses registering for the same mark, it goes against the very nature and essence of trademarks being identification of a single source for the good. Apart from this, this registration can also be viewed as a market strategy by means of two houses monopolizing on the mark, thus eliminating competition. This registration thus, just seems unfair to small businesses, which is explained in detail in this article by Ross D. Petty where he states instances as to how Marvel and DC comics often bombard the smaller businesses with notices, thus leading to them abandoning their registration application.
The concept of joint ownership in trademark law is not new, but still is rare. There are three instances where the joint ownership of a mark is permitted. The first is in the context of a “composite mark” used by a joint venture where two unrelated entities may form a single joint venture, licensing their intellectual property, including trademarks, to that joint venture for use in the market. The second situation is “concurrent use,” whereby two parties are granted separate registrations, permitting them to use the same mark in connection with a similar product albeit in different geographic markets. The third scenario is when joint ownership is permitted and appears to extend logically from the classic Menendez doctrine: a trademark registration may be jointly owned by, and the goodwill associated with the mark apportioned among, the heirs of a unitary owner.
The joint ownership of the mark by DC/Marvel was not evolved overnight and in fact, both the competing houses had originally decided to battle for the owning the mark as well, by filing separately for the same. However, both these houses (and their smart lawyers) realized that the other would be using the mark as much as the one owning it, thus competing against one another in the courts for something as simple as the name of the book that they are publishing as well. To minimize this and the confusion at the source, joint registration of the mark was allowed and the rest they say is history.
In conclusion, whether or not this mark is actually a means of eliminating competition by limiting their usage of the term “Superhero” or is exploitative to smaller businesses or is what two owners of a registered mark do as their genuine duty for the protection of the mark is something that needs to be decided by the courts as and when disputes arise on a case to case basis but the recent case is a glimmer of hope, an exception to the usual rulings and stands true to one of the principles that “Superheroes” embody, nothing is impossible.

Research Exemption under Patent laws in India and USA

Whenever a patent is granted, patentee gets a right to prevent third parties from doing certain activities without the permission of the Patent Owner. Exercising any of the rights without permission of the Patentee constitutes the infringement and infringer is liable to be prosecuted in the court of law. However, rights granted to the Patentee are not the absolute rights and Patent Act provides for some exceptions. Section 48 and Section 107A of the Indian Patent Act, 1970 have been reproduced below which respectively provide for rights of the Patentees and certain activities that do not constitute infringement.

Section 48:

Rights of patentees.—

Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—

(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;

(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:

Section 107 A:

Certain acts not to be considered as infringement.—For the purposes of this Act,—

(a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product;

(b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product,

shall not be considered as a infringement of patent rights.

Getting into the background of the U.S. Patent laws, section 271 (e) (1) provides the counter part of the section 107A of the Indian Patent Act. This section was introduced after Hatch Waxman Act, 1984. Intention of this article is to compare and contrast the scope of the research exemption under the Patent laws (aka Bolar provision after the Roche Products, Inc. v. Bolar Pharmaceutical Co.) of India and USA.

Section 271 (e) (1)

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

 

Comparison of Indian and USA law w.r.t. the products for which exemption is granted:

While India allows research exemption for any product, USA restricts it to drugs or veterinary biological products other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques.

Comparison of Indian and USA law w.r.t. the law under which submission is to be made:

India allows research to be made for submission of information required under any law for the time being in force, in India, or in a country other than India. However, USA restricts it to the submission under a Federal law.

It’s very clear that though laws of both India and USA have provided for Bolar provision, laws of USA are more tilted in favour of Patentee as compared to the situation in India.

SEVEN TOWNS V. KIDDLAND: DELHI HIGH COURT ON TRADE DRESS PROTECTION

The concept of trade dress, although closely associated with trademarks is not explicitly recognized in Indian legislations unlike its U.S.A. counterpart. In Indian context, upon looking closely at the definitions of “mark” and “package” under S. 2 of the Trade Marks Act, 1999 we see that the trade dresses are also protected.

To define it, trade dress is the visual or sensual experience of a product and is inclusive of the packing, shape and combination of colours used in packaging, such that it distinguished the product from the ones of its competitors. So anything from the wrapping of Cadbury chocolates to the design of flagship stores of Apple Inc. would fall within the ambit of trade dress now.

A landmark case discussing the concept is the case of Walmart Stores v. Samara Brothers[i] where trade dress was defined as “a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”

However, the case of Vision Sports Inc. v. Melville Corp.[ii] draws a distinction as to the protection of trade dress and trademark protection wherein it was held that – In contrast, trade dress involves the total image of a product and may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims require the court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark. This was also reiterated in the case of Colgate Palmolive v. Anchor Health[iii].

In the recent case, Seven Towns v. Kiddland[iv], the concept of trade dress is discussed in detail along with comments on the previous case laws discussing the same subject matter. The dispute is with regard to infringement of trade dress of the Rubik’s cube by the product of the defendant called Rancho’s cube, in terms of not only the product in itself but also the packaging and labeling.

Brief Facts of the case:

The plaintiff in this case, Seven Towns and Funskool are the original manufacturers and distributors of the product called “Rubik’s cube” which has been sold since 1975, all across the globe. The inventor of the cube, Mr. Rubik had the invention of the toy patented, in addition to the product being trademarked after his own name, after an amendment to the original name of “Magic Cube”. The plaintiffs allege that the defendants have used a deceptively similar trade dress to that of their product in order to confuse the consumers and take undue advantage of their goodwill. Hence Plaintiff filed suit for permanent injunction, restraining infringement of copyright, passing off, dilution, and various other reliefs against the defendants along with the application for seeking various interim reliefs against the defendants.

Arguments of the Petitioner:

In order to prove that the defendants have used a deceptively similar trade dress to that of Plaintiff’s  product in order to confuse the consumers and take undue advantage of their goodwill, plaintiffs in the form of a table shown the similarities in the packaging of their product with that of the defendant like – copying of the diagonal shape of packaging which gives an impression of a 3D triangle bulging out, the usage of 6 primary colors to denote the product’s name, its font and a label that denotes the appropriate age for the product being placed at the lower left hand of the label to name a few. The Plaintiffs did not claim rights over the cube per se, but the expression of the cube i.e. a cube comprised of 36 smaller cubes, 3X3X3 cube with black as its base and green, red, blue, yellow, white and orange being the different colors on each surface of the cube. The petitioners also rely on the fact that they have obtained considerable goodwill and reputation in the market as manufacturers of the cube and how they have been vigilantly acting against any company that infringes their product, in addition to the worldwide recognition and reputation wherein the toy in itself is referred to “Rubik’s cube”. This petition is thus presented before the High Court against the defendants for the tort of passing off and infringement of trade dress, which has resulted in considerable loss to the plaintiff. The plaintiff further relied on the case law of Ideal Toy Corporation v. Plawner Toy Mfg. Corp.[v] where the U.S. Court of appeals relied on acquired distinctiveness and trade dress serving the purpose of identification of source, apart from determining the trade dress of the plaintiffs and how it was considerably reputed and recognized. Further reliance is also placed on the case law of Heinz Italia v. Dabur India Ltd.[vi] which states that an injunction must follow where it prima facie appears that the adoption of the mark in itself was dishonest, thus praying for the interim relief of an injunction against the defendants.

Arguments of the Defendants:

The defendants denied that the trade dress of the plaintiff is distinctive or well recognized and hence, the same cannot acquire goodwill or be reputed. They also claim that the product is not of superior quality and that they have substantially invested in the advertising of their product. A dissimilarity table is produced on behalf of the defendants and reliance is placed on the sale of units, the difference in price to show that the plaintiffs wish to eliminate the serious competition that they fact from the defendants. The defendants also mention the difference in name, in the place of manufacture as points of distinction in addition to stating that the trade dress of the plaintiff fails to be a well known mark as specified under s. 11(6) and s. 2(zg) of the Trade Marks Act, 1999 as the plaintiffs have failed to provide any documentary proof of the same.  The defendants further bring forth the concept of trans-border reputation stating that “The trademark registrations in other countries would show that the trade dress of the Rubik’s Cube enjoys statutory protection, recognition and popularity in a significant number of countries worldwide. The goodwill and reputation as part of products of plaintiff No.1 in India and its recognition and popularity has seeped into India on account of transborder reputation.”[vii] The defendants further rely on several judgments to show that trade dress must be examined in its entirety and not looking at specific elements like L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd.[viii] and Kellogg Company v. Pravin Kumar Bhadabhai[ix] and the case law of Frito Lay India v. Uncle Chips Pvt. Ltd.[x] which states that competition must be free. Additionally, reliance is placed on s. 15(2) of the Copyright Act, 1957 and the case of Microfibres Inc v. Girdhar Co.[xi] which states that copyright ceases to exist when more than 50 copies of the product are made. In addition to this, the defendants also state that only colors cannot be monopolized as they are not distinctive and lack creative or artistic input, relying on Colgate Palmolive v. Anchor Health.[xii] Further, the primary colors of the cube are a functional element of the puzzle and cannot be monopolized. The defendants also allege that the patent to the invention of “Magic Cube” has expired and the product is now in the public domain. Furthermore, reference to the puzzle as “Rubik’s Cube” is not an indicative of the reputation and good will that the product carries, quoting the examples of packaged drinking water being known as ‘Bisleri’ commonly and photocopies being called ‘Xerox’. The defendants also rely on Cipla v. M.K. Pharmaceuticals[xiii] to indicate as to how the trade dress of medicine worked in favour of the second entrant to the market.

Observations & Conclusions of the Court

Manmohan Singh, J. decided the matter on September 6, 2016 making interesting observations with regard to the general nature of trade dress, deciding on the test against which passing off and deceptive similarity must be determined, the extent of unfair trade practice by the second or subsequent entrant in addition to the actual dispute of granting of an interim relief to the plaintiff on the existence of a strong prima facie case.

In the case of Hodgkinsons and Corby v. Wards Mobility[xiv], the English courts had held that the test for determination of passing off was a 3 step process where – the plaintiff must have considerable goodwill in the market, there must be misrepresentation by the respondent and there must be consequent damage caused to the plaintiff. Justice Singh relies on Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh[xv] to state that regardless of subsistence of design right or its exhaustion, a passing off action can lie in given cases and discusses the observations of the case of Laxmikant V. Patel v. Chetanbhat Shah and Another[xvi], to state that passing off would be when a competitor initiates sale of goods and services in the same name or imitates the name causing injury to the business of the one who has property in that name. While commenting on the general nature of trade dress and thus what would comprise of passing off, Justice Singh uses the case of William Grant and Sons v. McDowell & Co. Ltd.[xvii]which further states for injunction there must be material disclosing that the public associates the object in question only with the plaintiffs. The case of William Edge & Sons Limited v. William Niccolls & Sons Limited[xviii] is relied on to explain that simply naming a product that was previously unnamed but had considerable popularity in the market as belonging to the subsequent entrant would not be distinguishing of the goods but would give the impression as belonging to the original manufactures and hence, passing off. The case of Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House[xix] is also reiterated to explain that the subsequent entrant had no reason to use the applicant’s color arrangements save as with the improper motive of benefitting from his good will and the essential question that needs to be asked is why the same colours would be used but to attract the plaintiff’s goodwill and trade reputation which would amount to passing off. Justice Singh also uses the case law of Reckitt & Colman Products Ltd. v. Borden Inc. & Ors.[xx] to reiterate that the question that needs to be asked here is not whether the plaintiff can sell his product the way he does but why the defendant would deliberately adopt the same and the case of Colgate Palmolive v. Anchor Health[xxi] which states that “Trade dress is the soul of identification of a product” and the test for passing off is likelihood of confusion or deceptiveness and it is the duty of the subsequent comer to avoid unfair competition and become unjustly rich. This is also explained in the case of Cadbury v. Neeraj Food Products[xxii]where it is stated that deception is the essence of the tort of passing off.

Justice Singh clarifies the position with respect to where similarities or dissimilarities are to be considered in the case of the tort of passing off, stating that it was the points of similarity that need to be considered rather than the points of dissimilarity thus taking into consideration the judgments of S.M.Dyechem v. CadburyIndia Ltd.[xxiii]and Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd[xxiv]. Relying on the judgment of Sanjay Kapur v. Dev Agri Farms[xxv] and several other judgments cited within the case, the learned judge in this judgment states that affixing their own label does not amount to exclusive trade dress capable of distinction and there must be clear distinctions and the duty lies on the second entrant to ensure that he is not indulging in unfair trade practices or free riding the goodwill and reputation of an existing competitor. Justice Singh also states that monopoly over a single colour can surely not be enjoyed but that is certainly not the case here as it is the combination of colours that the plaintiff allege as infringed and is protected as their trademark. There exists considerable goodwill on the side of the plaintiff and they do have a huge reputation in the market, thus ensuring that the mark is well known under s. 11(6) of the Trade Marks Act. In arguendo, although the defendants claim that they can change the shape of the cubes to make them distinctive of the plaintiff’s product, Justice Singh states that this question can be answered later, when such case arises. The defendants relying on the case of Cipla v. M.K. Pharmaceuticals[xxvi] is also declared as wrong as the purchase of toys is distinct from that of medicines which is elaborated in the judgment.

Therefore, the Delhi High Court in this case ruled in favour of the plaintiff finding a prima facie case and granted them an injunction against the product of the defendants while also clarifying significant changes with respect to trade dress protection. This case is certainly an essential to understand the concept of trade dress and the extent of protection in the light of monopoly over colours, the test of similarities and labeling products if indicative of distinctiveness. However, Hon’ble Court has also specifically mentioned that the findings are tentative in nature and the same shall not have any bearing when the same would be decided on merits. It would be interesting to note the final outcome of the suit.

About the Author: Ms. Sakshi Sharma, Intern at IIPRD and Khurana & Khurana, Advocates and IP Attorneys.

References:

  1. Wal-Mart Stores vs. Samara Bros., 529 U.S. 205, 120 S. Ct. 1339 (2000).
  2. Vision Sports, Inc. v. Melville Corp. 12 USPQ 2d 1740.
  3. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  4. Seven Towns v. Kiddland, I.A. No.13750/2010 in CS(OS) No.2101/2010, as decided on September 06, 2016.
  5. Ideal Toy Corporation v. Plawner Toy Mfg. Corp, 685 F.2d 78 (3rd Cir. 1982).
  6. Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1.
  7. Seven Towns v. Kiddland, Para 16.
  8. L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd, 2005 (6) BomCR 77.
  9. Kellogg Company v. Pravin Kumar Bhadabhai, 1996 (36) DRJ 509.
  10. Frito Lay India v. Uncle Chips Pvt. Ltd., (2000) 86 DLT 31.
  11. Microfibres Inc v. Girdhar Co, (2006) 128 DLT 238.
  12. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  13. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.
  14. Hodgkinsons and Corby v. Wards Mobility, [1997] FSR 178.
  15. Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh, (2013) 198 PTC 120.
  16. Laxmikant V. Patel v. Chetanbhat Shah and Another, (2002) 3 SCC 65.
  17. William Grant and Sons v. McDowell & Co. Ltd., 55 (1994) DLT 80.
  18. William Edge & Sons Limited v. William Niccolls & Sons Limited, (1911) AC 693 at 709.
  19. Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House, AIR 1977 Delhi 41.
  20. Reckitt & Colman Products Ltd. v. Borden Inc. & Ors., 1990 R.P.C. 341 at page Nos.414 to 416, 422, 426.
  21. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  22. Cadbury India Ltd. v. Neeraj Food Products, 142 (2007) DLT 724.
  23. S.M.Dyechem v. Cadbury India Ltd., (2000) 5 SCC 574.
  24. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 783.
  25. Sanjay Kapur v. Dev Agri Farms, 2014 (59) PTC 93 (Del).
  26. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.

Interplay of section 63 and section 64 of Indian Patent Act, 1970

What is the effect of surrender proceedings on the ongoing opposition/ revocation proceedings? Can they be linked to each other when neither of section 63 or section 64 are subject to each other? It is important to note that both the proceedings can be initiated at any time after the grant of the Patent. Section 64 can be initiated by any person interested, central government or by the alleged infringer in counter-claim. Section 63 can be initiated by Patentee and can be opposed by any person interested. Section 63 is one of those provisions of the Indian Patent Act, 1970 that is not much utilized. Unfortunately, even case laws have not been able to provide the much needed clarity on the provisions of section 63.

Recently IPAB had an opportunity to deal with the issue. Let’s see how IPAB fared at it. In this case, an offer to surrender a patent was made during pending revocation proceedings (No.29 of 2016). In these proceedings, patent under issue was IN224314, which was granted to ICOS Corporation of Eli Lily and Company.

Following grounds were used by the M/S MYLAN LABORATORIES LTD. in the instant revocation proceedings:

(1) That the invention as claimed in the impugned patent is not an invention within the meaning of the Patents Act [section 64(1) (d)];

(2) That the invention as claimed in the impugned patent is obvious or does not involve any inventive step [section 64(1)(f)];

(3) That the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention [section 64(1)(h)];

(4) That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of complete specification is not fairly based on the matter disclosed in the specification [section 64(1)(i)];

(5) That the subject of claims in the impugned patent is not patentable under the Act [section 64(1) (k)];

(6) That the First Respondent failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to its knowledge [section 64(1)(m)].

ICOS Corporation submitted as below to IPAB:

“With reference to the subject Revocation, we state that we represent respondent No.1, the patentee of the patent under dispute i.e. Patent No. 224314. We bring to the notice of this Hon’ble Board that the respondent No.1 no longer has business interest in maintaining the patent due to the presence of many generic products on the market in India. Consequently, the respondent No.1 do not intend to maintain this patent any longer and has offered to surrender the patent before the Indian Patent Office under Section 63 of the Indian Patents Act, 1970. A copy of said letter to Patent Office is enclosed herewith for your ease of reference. Under this circumstance, we see that it would be superfluous on the Board to expend its valuable time and effort on the present proceeding and we request the Board to pass suitable orders effecting the closure of revocation proceedings.”

ICOS did not contend against revocation grounds. Instead chose to surrender patent. Mylan argued that surrender proceedings have to be completed through procedure as established under section 63 and also argued that as long as surrender of patent has not been accepted, patent is valid and can be subjected to opposition/ revocation.

IPAB was to ascertain whether controller can accept the patentee’s plea to surrender his patent, while a revocation suit is pending before the IPAB.

IPAB revoked the patent by following explanation:

The readings of the above said provisions makes it abundantly clear that in the event of offer of surrender of a patent by a patentee, the Controller has to follow the procedure contemplated under section 63 of the Act. Therefore, as long as the said surrender proceedings are pending and unless and until the Controller accept the offer of surrender the impugned patent to be in existence and continued to be in the register. The instant application filed for revocation of the impugned patent has been filed as per provision under section 64 of the Indian Patents Act. As we have already pointed out the grounds raised by the applicant herein has not been disputed by the first respondent and more particularly the first respondent having clearly and categorically stated in their communication dated 09/02/2016 to the IPAB Registry and the Controller of Patents that they no longer has interest in the impugned patent and they are surrendering the impugned patent to the Patent Office and as such instead of allowing the Controller of Patents to follow the procedure contemplated under the section 63, as there is no legal impediment to revoke the impugned patent by this Bench and the impugned patent is liable to be revoked.

It is clear that IPAB did not want to relate surrender proceedings with revocation proceedings but did exactly the opposite by using grounds under surrender to reject revocation proceedings under section 64.   It is apparent that IPAB missed an opportunity to give fair reasoning of the revocation of the Patent and delinking the cause revocation with surrender proceedings. Surrender proceedings and revocation can be correlated with each other only to an extent that a patent accepted as surrendered cannot be subjected to opposition/ revocation proceedings and vice versa.

Unfortunately, we have to wait for another case study to clarify the uncertainty created by IPAB.

Amazon improves foothold in India: signs content licensing deal with T-series

E-commerce is growing widespread day by day in Indian market. It has become a current day reality from a buzzword, transformed the way business is done, transformed the way people transact and more specifically, has totally transformed the game for the Indian economy. Nowadays online market space is available for almost everything; you just think of something in your mind and can easily get without leaving your place. It has covered almost everything: tours, travels, entertainment, movies, hotel reservation, matrimonial services, recruitment services, banking services, electronic gadgets, fashion accessories, medicines, medical devices, groceries and the list goes on.

Indian retail sector has taken a great leap due to the growing popularity of e-commerce. Offering attractive and convenient shopping option has widened owing to acceptance and preference of only online shopping as a safe shopping medium. In more simple words it is now possible doing shopping for anything from anywhere at any time with online market space, that too, with ease of your own comfort and leisure. Be it your workstation or home or wherever, you can shop for the anything you want without even worrying about the closure or opening time of the market, and within the prescribed time period you will receive in your hands. Rising Internet access, increasing usage of smartphones and the preference of cashless transaction, being integral players, have facilitated e-commerce to propagate and flourish in each and every part of our country.

Growth and success emanates competition, which is getting intensified with major online retail players day by day. Over a year ago, Snapdeal and Flipkart were the two major players, and then Amazon India has overtaken Snapdeal’s market. Two horse race between Flipkart and Snapdeal, has now transformed in to two horse race again, but, between Flipkart and Amazon, replacing Snapdeal.

Reportedly, Snapdeal’s market share dropped to 14% from 19% a year ago while Amazon’s gained from 14% to 24% in the same period and Flipkart remains the leader despite a fall in market share to 37% from 43%.:

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Flipkart and Amazon are struggling high to win in the game of capturing Indian market share and to sustain that position.Both companies are developing various plans and strategies, like offering best discounted deals, announcing financial investments, acquiring major players in retail sectors, joining hands with big brands and signing licensing deal and agreements to have the batter coverage of the market. In the verge of the same Amazon has signed a long term content licensing deal with T-Series for its prime video services, which has not been launched yet, for pleasing the commitment of providing value added services to members . As a result of this deal, Amazon prime members would be able to enjoy the best of the Bollywood movies by T-Series within a few weeks of their theatrical release.Seventeen under production films by T-Series, which include Raabta, Chef, Tum Bin 2, Wajah Tum Hoetc. will be showcased to the members of prime video before their premier on TV. Previously Amazon has also signed almost similar type of pacts with Dharma Production, Vishesh Films and Excel Entertainment. Amazon is trying their level best to win their customers/members whole heartedly, fulfilling all of their need and interest. Indeed, Amazon is continuously improving its foothold in the Indian market to grab the position of leader in e-retail sector

But as we have seen historically, in internet business sector, there often remains single dominant leader like Facebook and Google in social networks and search engines respectively. Whereas, here it looks like oligopoly with two strong competitors Flipkart and Amazon; one is of home origin and another of American origin.

Battle is going on. Let’s wait and watch, who will takes all market? And we as customer enjoy their favours and offers.

About the Author: Dr. Komal Tomar, Sr. Licensing Associate at IIPRD and Khurana & Khurana, Advocates and IP Attorneys and can be reached at: commercialization@iiprd.com

References:

  1. http://economictimes.indiatimes.com/small-biz/startups/snapdeal-slips-against-its-two-main-rivals-flipkart-amazon-can-it-get-its-mojo-back/articleshow/54705032.cms
  2. http://economictimes.indiatimes.com/tech/internet/amazon-inks-content-licensing-deal-with-t-series/articleshow/54566544.cms
  3. http://tech.economictimes.indiatimes.com/news/internet/amazon-signs-up-dharma-productions-for-prime-video-push/54524365
  4. http://economictimes.indiatimes.com/small-biz/startups/amazon-signs-content-deal-with-vishesh-films/articleshow/54398306.cms
  5. http://economictimes.indiatimes.com/industry/media/entertainment/amazon-signs-up-excel-entertainment-to-ensure-enough-takers-for-prime-service-in-india/articleshow/53548913.cms

GOD BLESS NOVEMBER 27, 2016

Well, I am sure, this is what is crossing through the minds of the IP enthusiasts who have been waiting since long (2013-being specific) for their turn to appear for Patent Agent Examination (PAE). They were not able to do so for the want of examination taking place. November 27, 2016 has definitely brought sigh of relief for them.

Relief came for PAE aspirants when IPO official website announced on July 19, 2016 that PAE will be conducted before December, 2016. Then IPO released a tender on September 01 requesting quotation for supply of answer booklet and related works, supply of Optical Mater Recognition (OMR) sheets and printing of question papers for Patent Agent examination-2016. Tender can be accessed here. From tender it appears that paper one is likely to have question s. no. 1-40 with one option correct, whereas s. no. 41-50 with more than one option correct. IPO is expecting minimum 2000 applications and expects the figure to go high up to 6000.

Online registration of the Patent Agent Examination can be done here. Guidelines for filing the application can be accessed here. Applications for this exam can be made only online and between 28.09.2016 to 27.10.2016.

In an interesting deviation from the examination pattern of the previous exam, this time Schedule for Viva-Voce examination will be announced after the completion of written examination. Only those candidates who have scored minimum of 50% marks in each paper will be allowed to appear for Viva-Voce. Separate list for same would be provided.

We wish all the best to all the PAE aspirants. May they all come up with flying colours!