E- Filing of Application for Registration of Geographical Indications in India

Controller General of Patents, Designs and Trademarks issued public notice dated 11 March 2015 launching electronic filing of application for registration of Geographical Indication (GI) in India. Now the application for registration of GI can be submitted online to the Registrar of GI through the official portal at www.ipindia.gov.in or www.ipindia.nic.in. The payment for the same can be done through net banking, Credit cards and Debit Cards. Pertinently the same digital signature already registered for Trade mark, Patents or Design can be used for login and authentication into e-filing system of GI.

Source: http://www.ipindia.nic.in/iponew/publicNotice_11March2015.pdf

First time in India – Free IPR Clinic for Indian Startups – by Khurana & Khurana Advocates & IP Attorney

Even though Intellectual Property Rights (IPR), Innovation and knowledge protection is emerging to be a key driver in businesses, very few startups have the proper information and understanding of IPR, let alone the approach to forming an optimal IPR strategy for their business.

 Thus, as a leader and torch bearer in the IPR services Industry, we, Khurana & Khurana Advocates & IP Attorneys have decided to shoulder the responsibility of strengthening the IPR arsenal of Startups in India by conducting two weeks of free IPR clinics for startups, and use all our experience in dealing with Startups and Individual Inventors in providing customized solutions, counseling and guidance to budding entrepreneurs of India.

 The first IPR clinic session will start with the Mumbai office of Khurana & Khurana from 16th to 30th of March, 2015 where Khurana & Khurana IPR Consultants & Experts will conduct one to one interactive and solution based counseling on IPR strategy, approach and budgeting. With no fees or any other criteria involved in registration, the sessions will be conducted on a first come first serve basis.

 Having 2000+ clients, 4 offices in India, and 60+ experts, team Khurana & Khurana under the leadership of the partners Mr. Vinod Khurana, Mr. Tarun Khurana, Mrs. Meenakshi Khurana & Mr. Abhishek Pandurangi has always extended arms to Startup innovation and encouraged knowledge and transparency in the IPR ecosystem, and the Free Startup IPR clinics shall be yet another chapter in this story.

For registration please contact: Parvez Kudrolli at parvez@khuranaandkhurana.com / 9820519769 / 022-65281005

Recent decision of Delhi High Court in the case of GILEAD PHARMASSET, LLC V. UNION OF INDIA & ANR

Recently, the Delhi high court on dated 30th January 2015 set aside an order of the Deputy Controller of Patents and Designs. The impugned order rejected a patent to US drug maker Gilead for its hepatitis C drug “Sovaldi” on dated 13th January 2015. The detailed judgment can be found here.

Facts of the case:

M/S GILEAD PHARMASSET, INC, USA, filed a patent application on 30/05/2003 in USA and the corresponding application was filed in India through PCT on 27/12/2005 vide application no. 6087/DELNP/2005 (“A (2’R)-2′-DEOXY-2’FLUORO-2′-C-METHYL NUCLEOSIDE”). Two Entities, NATCO Pharma Ltd. and Delhi Network of Positive People +IMAK filed applications for pre-grant opposition, under Section 25 of the Act on dated 13 March 2014 and 17 March 2014 respectively. On 13th January 2015, the Patent Office rejected Gilead’s Hepatitis C drug, sofosbuvir (Sovaldi) on the basis of it failing to clear Section 3(d) of Indian patent act 1970 which prevents evergreening of patents and provides that no new form of an existing substance shall be patented unless the new form is more effective than the old one. The copy of the decision made by Controller General of Patents can be accessed here.  Being aggrieved by the order, the GILEAD filed the present writ petition under Article 226 of the Constitution of India.

Arguments advanced by the petitioner:

It was argued by the Counsel for the applicant that while passing the impugned order, Indian Patent Office (IPO) had taken recourse to the material and objections, which were placed on record by the applicants, who had filed their applications to oppose the grant of patent to the petitioner, under Section 25 of the Act. Further it was submitted that this aspect, was clearly demonstrable from the fact that, not only the grounds taken in opposition and documents cited were considered, while passing the impugned order, but even, the typographical errors contained in the applications, filed under Section 25 of the Act, got incorporated in the said order.

It was further contended that the once notice was issued to the petitioner for a hearing under Section 14 of the Act, to consider, whether to grant a patent as requested, IPO should also have heard the petitioner regarding objections raised in the application, under Section 25 of the Act. The learned counsel contended that, while documents in opposition filed by the entities, which had preferred applications under Section 25 of the Act were supplied, no opportunity, was given, to meet the objections raised by them.

Further it was submitted that the impugned order, had created a peculiar situation whereby, while it had returned a finding that the claims presented by the petitioner represented “novelty and inventive steps”, it sustained, the challenge, under Section 3 (d) of the Act, though the applicants, which had opposed grant of patent, had raised objections, on both counts.

Arguments advanced by the Respondent

On the other hand, the opponent contended that the exercise carried out by IPO under Section 14 and 15 of the Indian Patent Act, is quite different, from that, which IPO carries out while hearing applications filed under Section 25 of the Act. Further it was submitted that, while the material and/or objections filed by opponents, which had preferred applications under Section 25 of the Act, was supplied to the petitioner, IPO did not rely upon the same, while passing the impugned order.

Decision of the Hon’ble Court:

The hon’ble court observed that while petitioner’s request for a hearing under Section 14 of the Act was pending, two pre-grant oppositions were filed. Though, the documents filed by the opponents were supplied to the petitioner, no notice was issued to the petitioner with regard to the applications filed under Section 25 of the Act. Therefore, when hearing under Section 14 was finally granted to the petitioner on 24.07.2014, there was no clarity as to the extent and scope of objections, which it was required to meet while pressing ahead with its request for grant of patent. The petitioner, at best, would have prepared itself to rebut the objections raised in the FER. Further the court observed that combining S. 25 and the S. 14 proceedings, if Gilead would have been given an opportunity to be heard on both counts, it could have save not only time, effort but also have avoided the allegation of bias.

 The court accepted the Gilead’s claim and set aside the impugned order given by IPO and remanded for a fresh decision. The court also ordered IPO to fix a date of hearing both for Sections 14 and 25 proceedings and asked to send written communication to all concerned parties including the petitioner.

 Thus it would be interesting to see the decision by IPO after fresh consideration to the facts and circumstances in view of the fact that Gilead has already entered into license agreements with Generic companies of India for the drug “Sovaldi” as per the reported news in September 2014.

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

Music Rights for Use in Films

In recent times, music copyrights and their ownership/rights to producers, artists, among other stakeholders, have been under strong discussion across geographies. We are happy to have a written piece by Gemma Harrison, a freelance writer, on her high-level take on the Copyrights in Music.

This summer, the highest grossing film at the box office was Marvel’s Guardians of the Galaxy, as notable for its music choices as for its place in the growing range of Marvel superhero films sweeping Hollywood at the moment. Guardians of the Galaxy may have grossed upwards of $550 million worldwide, but it cost a cool $170 million to produce – not including Marvel’s expansive marketing campaign – and the music choices can’t have helped with that. Peppered liberally with a range of classic tunes from the 1980s, from David Bowie to 10cc, the familiar soundtrack of Guardians of the Galaxy was extremely visible, provided key plot points, and has spawned mix tapes and tie-in merchandise since the film’s release.

From a filmmaker’s perspective, it’s evidence of Marvel’s central market position, that they were able to negotiate such extensive rights to the tracks – many of which are extremely well-known or iconic. One can only fathom at how much it must have cost them.

Licensing Music for Filmmakers

There are several types of licence that filmmakers need to acquire in order to use a pre-recorded piece of music in films. First of all, the right to use a song differs from the right to use a specific recording of the song. This is particularly key for cover versions, where the rights to the song might not belong to the band who specifically recorded the version. Alternatively, some rights are likely to belong to the record company, with others being retained by the songwriters or performers. The rights to use of the underlying composition, and the specific recording or “master recording”, may very well belong to different people, all of whom have rights which they can enforce.

Once filmmakers have discovered who owns the rights, there are three types of permissions they typically need to obtain: the right to record and distribute copies of the song, to record the music in synchronisation with the moving pictures in the film, and thirdly to perform the song publically as part of the performance of the film. It’s complicated, and convoluted, and for popular songs it can be eye-wateringly expensive. In the case of Guardians of the Galaxy, where the screenwriters deliberately wrote the music into the film as a plot point, it’s a bold and ostentatious move, signifying their vast budgets, and even more vast bargaining power.

Bridgeport Music Inc v Dimension Films, Sampling and Fair Use

In 2004, the case of Bridgeport Music Inc v Dimension Films was heard in the United States, and reached the Court of Appeal. Bridgeport was centred on the digital sampling of a two-second guitar chord from a song, looped five times, without the permission of the rights holder. The federal judge decided that a two second clip was de minimis – that it was too small to cause any real harm to the claimant, and that the claim should be dismissed on that basis.

The Court of Appeal disagreed, deciding that the owner of copyright had an exclusive right to duplicate the work in question, or any part of it, of any length. The Court said, “Get a license or do not sample. We do not see this as stifling creativity in any way.”

The decision is controversial, and has not yet been followed by other Court of Appeal circuits. The reasons for this are several: firstly, it could lead to a single note being copyrightable by a party, which is widely seen as being far too restrictive. The chilling effect of not knowing how small a section of music is covered by copyright rules could be substantial. Others have said that the decision stifles fair use policies. Since the use of the clip in Bridgeport was transformative, for non-commercial purposes, and did not harm the market for the original work or its derivatives, fair use policy should be able to give the defendants some protection.

This could have a knock-on effect for filmmakers, especially those making educational films or films reporting or commentating on the news, which are given a higher status under fair comment rules. It remains the case that filmmakers still have to be careful about using pre-recorded songs in their films, especially since the licences they would need to obtain are extensive. Given that the United States case law has yet to encounter many cases of digital sampling or the use of new technology in copyright claims, we may expect the law to remain unclear or inadequate for a few years to come.

Further reading

Amendment in Design Rules and Fee

Controller General of Patents, Design and Trade Marks, Mr. Chaitanya Prasad, has issued a Public Notice on 1 January, 2015, wherein it has been put forth that, from December 31, 2014 Official Fees for filing a new Design application as well as other proceedings of Design has been amended. It has also been mentioned that applicants have been divided into two main categories and fee shall depend on type of applicant.

Highlights of amendments in Design rules:

  • Applicants have been divided in two main categories namely: “natural person” and “other than natural person(s)” categories. Second category of applicants has been further divided in to two sub-categories 1.) “small entity” 2.) “others except small entity” and fee structure is amended accordingly.
  • New form – 24 has been introduced which has to be submitted with all new applications for claiming the status of small entity.

Addition of new clauses in Design Rules:

  • A new clause has been inserted after rule 2(c) as under:

‘(ca) “person other than a natural person”, shall include a “small entity”;’

  • Another clause has been inserted after rule 2(e) which defines definition of small entities as under:

‘(ea) “small entity” means,

  1. In case of enterprise engaged in the manufacture or production of goods, an enterprises where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of the section (7) of the Micro, Small and Medium Enterprises Development Act , 2006 (27 of 2006); and
  2. In case of enterprise engaged in providing or rendering of services, an enterprises where the investment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of the section (7) of the Micro, Small and Medium Enterprises Development Act , 2006 (27 of 2006);
  • In rule 5(2) after clause (d), two new clauses have been inserted, as under :-
  1. “(e) in case an application processed by a natural person is fully or partly transferred to a person other than a natural person, the difference, if any , in the scale of fees between the fees charged from a natural person and the fees chargeable from the person other than natural person in the same matter shall be paid by the new applicant with the request for transfer.
  2. (f) in case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any , in the scale of fees between the fees charged from the small entity and the fees chargeable from the person other than natural person (except a small entity) in the same matter shall be paid by the new applicant with the request made for such  transfer.”,
  • In rule 6 after sub-rule (1), the following proviso has been inserted,:-

                 “Provided that in the case of small entity, every document, for which a fee has been specified,  shall be accompanied by Form-24.”

Amendments in Design Fees:

Following table gives the detailed fee structure after the amendment:

Untitled1 Untitled2

The notification can be seen here.

Belly Fireman! Rescued by Delhi High Court

In the recent decision of Delhi  High Court in the case of Reckitt Benckiser(India) Ltd v Dabur India Ltd, the Hon’ble court decided on the issue of deceptive similarity between the  television advertisement of Pudin Hara lemon fizz drink and Gaviscon

Facts of the case:

The plaintiffs is a member of  Reckitt Benckiser Group PLC who involved in the various consumer and healthcare products . It also manufactures Gaviscon which provide relief from heartburn and gastro oesophageal reflux. In the year 2006 the plaintiff started using Fireman Device for the advertising and promoting his product in the market. Fireman Device was registered in India in favour of the plaintiffs on 22nd October, 2007 in Class 5.

The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such as Pudin Hara, , Hajmola, Glucose-D etc. Reckitt Benckiser alleging that the ads for Dabur’s Pudin Hara lemon fizz drink had “infringed its trademark and copyright”. The point of dispute is the image  of Fireman /fire fighter.

Issues involved/Contentions

  • In both the advertisement a person is suffering from gastro-oesophageal reflux disease/heartburn.
  • Both the advertisements show fire burning inside the oesophagus.
  • Then a person consumes medicine & the medicine converts into the image of a fireman which extinguishes the fire by sprinkling the product on the stomach walls.

Delhi High Court decision

Trademark infringement

After comparing the advertisement, the Delhi High court concluded that Dabur’s fireman device was not deceptively similar to the registered mark. The mark appears to be different in terms of colour, representation and number. Therefore there was no likely hood confusion and no infringement had occurred.

Passing off

The defendant product i.e  Pudin Hara Lemon Fizz  is sold in Indian market since April, 2010 whereas the plaintiff product i.e Gaviscon was introduced in Indian market in November 2011.Hence Reckitt Benckiser could not establish goodwill  in India prior to Dabur and the element of misrepresentation was also missing. So, Dabur had not committed the tort of passing off.

 Copyright infringement

The court concluded that there were several dissimilarity between both  the advertisement  in respect of their  colour, representation and image of fireman device. The court relied on the Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the established principle that only the manner of expression of ideas is protected under copyright law (not the ideas themselves). Thus, the court held that there had been no copyright infringement.

 The court has, however, said that if there is any modification in the television Commercial Ad, Dabur would need to take necessary permission from the court.

About the Author: Ms. Pallavi Sharma, Trademark Attorney at Khurana and Khurana, Advocates and IP Attorneys and can be reached at:pallavi@khuranaandkhurana.com

Gentle Update on Khurana & Khurana: Acquisition of Closer2Patents and Opening Up of Mumbai Branch Office

We are very glad to announce Khurana & Khurana, Advocate and IP Attorneys (K&K) ‘s acquisition of Closer2Patents, a growing IP Consulting Practice based in Mumbai, effective 1’st Jan 2015. With a practice currently spread across three offices, Delhi, Pune, and Bangalore in India, K&K is among the leading IP and Commercial Law Practices with over 50 Practitioners and rankings/recommendations from Legal 500, Chambers, IAM, Managing IP, among many others, wherein representation of numerous Fortune 500 Corporates, Medium Sized Entities, Universities, and Individual Inventors/Start-ups, makes K&K among the most promising IP and Commercial Law Firms in India. Mumbai based Closer2Patents, on the other hand, founded by Abhishek Pandurangi, is a 5 year old growing IP Consulting Practice with over 10 Practitioners and a strong Prosecution and Consulting Practice in the IP Space, wherein acquisition of Closer2Patentscomplements the geographic presence of the firm that is strongly committed to client satisfaction and very sensitive to their feedback. With the integration between the firms, K&K would now be starting with a Mumbai Office, which would be spearheaded by Abhishek as a Partner in the firm and would expand the service offerings to areas of Media and Entertainment. With a strong base of Pharma and High-Technology clients, an office in Mumbai would help K&K consolidate its Practice in the financial hub of the Country, and offer its existing and potential clients with its strong and efficient service offering.

Recent decision of IPAB in the case of E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors

This article is relates to a recent judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 4th December 2014 in the case “E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors.

Brief Facts:

On 11th March, 2009 the trademark registry refused the opposition of the E.I.DU Pont De Nemours & Company (appellant herein) and allowed the application of trademark “NOMEX” under application No.499603 in Class 5 of the Galpha Laboratories (respondent herein) under the provisions of the Trade and Merchandise Marks Act,1958. Thus being aggrieved by the rejection by Indian trademark registry, an appeal was filed by the DuPont to IPAB. The copy of the decision made by IPAB can be accessed here.

Background:

The appellant’s Company is a limited company incorporated under Company’s Act 1956 having registered office in Mumbai. The appellant has production facilities for DuPont Crop Protection Products, Dupont Liquid Packaging Systems. The appellant has claimed that they have spent huge amount of time, money and efforts in promotion of trademarks registered under various classes in world over including India. The appellant has further claimed that they are registered proprietor of many trademarks covering more than 50 countries. The appellant has obtained registration and is registered owner of trademark “NOMEX” in many countries including India. The appellant has further stated that all the above registrations of the trademark has been renewed from time to time and are valid and subsisting. The appellant stated that they have obtained trade mark NOMEX under class 22, 16, 17, 23 and 24.

The appellant came to know through an advertisement dated 16th April, 1999 that vide journal No.1197, the respondent had filed an application under the name “NOMEX” vide application No.499603 dated 19th October,1988 under the Trade and Merchandise Marks Act, 1958 in respect of pharmaceuticals, medical preparations and substances in Class 5 claiming user as proposed to be used. The appellant has filed a Notice for Opposition dated 13th of August,1999 vide Opposition No.BOM-54010 against the registration of the trademark “NOMEX” in class 5 under the provisions of Trade and Merchandise Marks Act of 1958.

Decision by Assistant Registrar:

After hearing the pleadings by both the parties, the Assistant Registrar has passed an order on 11th of March, 2009 rejecting the Opposition of the appellant on the below grounds.

(i) The Assistant Registrar accepted the contention of the respondent herein that they took search on the trademark registry for the trademark “NOMEX” in Class 5 and also made a market survey in the market for medicinal products and there was no conflicting trademark in Class 5.

(ii) The Assistant Registrar held that there is no similarity and identical with the mark that of the opponent as per section 11(A) revised under section 11(1) of the Act. Hence, there is no possibility of confusion and deception under section 11 (C) revised under section 11 (3) of the

Trademarks Act, 1999. The goods of the applicants are entirely different from the opponent. Further the Assistant Registrar rejected the contention of the opponent that they have not proved prior user period from 1984 to 1988 and used his discretionary power under section 18(4) of the Act by granting registration of the trademark “NOMEX” in class 5 to the respondent.

Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said Trademark opposition.

 Arguments advanced by the Appellant:

It was argued by the appellant that the Assistant Registrar has failed to appreciate the appellant’s use of the trademark “NOMEX” in the international market since 1963 and in India since 1984. Further Trademark registry has failed to appreciate that the trademark adopted by the respondent is identical to the appellant, who is a prior adopter and user in India. It was further contended that the Assistant Registrar has erred in holding that usage of the mark by the respondent would not cause confusion and deception amongst the members of the public and trade as the respondent buyers are different from that of the appellant.

The appellant further claimed that “NOMEX” is a well-known trademark. The appellant also argued that the Assistant Registrar has failed to appreciate that the respondent has no use and is yet to use the mark and it is identical to the appellant trade mark. The Assistant Registrar has erred in holding the appellant has not proved prior user from 1984 to 1988.The Assistant Registrar erred by disallowing opposition of the appellant and further erroneously used his discretionary power under section 18(4) of the Act, which are contrary to principals of law. The Assistant Registrar has also erred in holding the respondent had taken proper steps, despite of no search report brought on record.

Arguments advanced by the Respondent:

The respondent contended that they had taken care and prior search in selection, adoption as there was no prior use of the trademark in the pharmaceutical industry. The respondent conceived and coined the trademark “NOMEX” for use in respect of medicinal and pharmaceutical preparations falling in Class 5. Further the respondent argued that the registration of application “NOMEX” in Class 5 will not cause prejudice to the appellant under section 9 of the Act as under section 8 to respondent trade mark is distinctive and capable of distinguishing from the goods of the appellant.

Decision of IPAB:

IPAB stated that while perusing the impugned decision of the Assistant Registrar of 11th , March, 2009, the Assistant Registrar has rendered a short cryptic order without assigning cogent reasons by simply quoting the provisions under the Trade and Merchandise Marks Act, 1958 revised under sections 11(1) and 11 (3) of the Trademark Act, 1999. The impugned order of the Assistant Registrar failed to disclose on what grounds or on what material record that he has allowed the registration to go ahead by rejecting the contentions of the appellant / opponent and further does not disclose any judicious reasoning, while exercising his discretionary power vested with him under section 18 of the Act for granting the registration to the respondent herein.

Further IPAB observed that the Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasoning as to how he had arrived into conclusion that the mark though identical and similar but still there is no confusion or deception. IPAB stated that the Registrar has failed to discuss the cogent reasons in accepting the application of the respondent allowing their trademark to be registered.

Thus in the light of averments, IPAB set aside the impugned order by trademark registry observing that the order was passed in gross violation of principal of natural justice and remanded the matter to the Assistant Registrar to consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law.

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

‘Pro Tem’ Relief to Xiaomi for importing and selling of Qualcomm based Handsets in India

Reportedly, a bench of Delhi High Court temporarily allowed Xiaomi to sell few of its devices in India about a week after the suspension of its sales in the third largest smart phone market of the world.

Xiaomi as well as online seller Flipkarthave been injuncted by Delhi High Court in its order dated 8th December 2014 from selling its line of smart phones for it has been prima-facie found to be infringing patents of Swedish technology company Telefonaktiebolaget LM Ericsson. We have reported on Xiomi injunction which can be found here.

Being aggrieved by the order passed by Single judge of Delhi High Court dated 8th December 2014, Xiaomi filed appeal challenging the order. Xiaomi had contended that Ericsson suppressed the fact that the Chinese mobile maker has also used chipsets of Qualcomm which has a license to use patents of the Swedish company. The bench was also told by Senior Advocate KapilSibal and Advocate AjitWarrier, appearing for Xiaomi, that on each Tuesday around one lakh units are expected to be sold on the site. Xiaomi has contended that it did not infringe Ericsson’s patents as Qualcomm has obtained a license from the Swedish company for its patented technology.

Therefore, reportedly on Tuesday 16th December 2014, the Hon’ble High Court granted permission to Xiaomi to continue importing smart phones which comprises of Qualcomm chipsets in them until the next scheduled date for the matter on 8th January 2015 subject to the condition that Xiaomi shall deposit 100 Indian Rupees for each device sold by them towards royalty in favor of the Registrar General of the Delhi High Court and the amount so deposited be kept in a fixed deposit.

Further, the court has also directed Xiaomi to furnish an affidavit, prior to the next date of hearing before the single judge, which shall disclose the number of devices sold by it till then along with the particulars of the invoices of the Qualcomm chipsets purchased by it.

As reported, an Ericsson spokesman said in an email to Reuters that “Xiaomi needs a license from Ericsson for all their phones imported to India, which will be clarified in the upcoming hearing” whereas Xiaomi said company would not comment on the developments.

As per the company’s website, Xiaomi Mi3 and Redmi 1S use Qualcomm chips while Redmi Note device uses a processor from MediaTek Inc.

Sources: Reuters and NDTV

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

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