Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors

The case H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors is based on the point of having a similar trademark to that of another brand. The harm it causes to the reputation of one brand which another brand has adopted is one of reputation. The Plaintiff, in this case in a well-known trademark, and would have lost its reputation at the hands of the Defendant, due to having a similar trademark in the same business circle which would cause the consumers to be misled. This is an unhealthy and unethical means of earning goodwill and reputation at the hands of another brand. Hence, when a trademark is imitated then it is a must to grant and injunction, which is what, was held. The Ld. Single Judge after hearing both the parties, accepts the interim application of the Plaintiffs and rules in favour of the Plaintiff, stating that the Defendants discontinue the business as they were earning goodwill wrongfully, and restrained the defendant from using their trademark in any manner.

Analysis of H&M Hennes & Mauritz AB & ANR v. HM Megabrands Pvt. Ltd. & Ors

Found in almost every shopping mall are the low-cost, trend-specific clothes and accessories of H&M. The Swedish company quickly made its place in India and became popular and successful, especially with the young girls. H&M is the plaintiff in the present case. The Plaintiff owns a trademark, H&M which was first registered in the United Kingdom in the year 1985. In the year 2005, the plaintiff registered the trademark in India as well and it is a well-known trademark. However, the defendants in the present case, HM Megabrands started marketing apparels under this name in the year 2011 and on April 11th, 2014, applied for registration of the trademark in India.

When the plaintiffs came across the trademark of the defendants, they realised that the trademark was astonishingly similar, and it could confuse and mislead people. The website of the defendants, http://www.hmmegabrands was found to be offering similar services and goods as the plaintiffs. Hence, the Plaintiffs filed a suit for trademark infringement and passing off.

The plaintiffs submitted that theirs was a well-known trademark and their products were extensively marketed and promoted on the internet and could be easily found by a simple Google search. Hence, it is the contention of the plaintiffs that the plaintiffs had knowingly and intentionally incorporated the alphabets H and M into their corporate name, and had purposely designed the alphabets H and M in such a manner that they looked similar to the trademark of the plaintiffs. The plaintiffs also believe that since the plaintiff and defendant were in the same line of business i.e., selling garments, they did not have the defence of having no knowledge of the plaintiffs’ trademark.

On the other hand, the defendants took a stand that the letters H and M were the initials of the defendants, Hashim Merchant and Hamza Merchant, and not any other reason as stated by the plaintiffs. The second and more important contention of the defendants was that the plaitiffs’ trademark did not have any recognition in India in 2011, when the defendants had first started selling garments under this name. Further, the plaintiffs had formally established themselves in India only towards the end of 2013 and the first store of the plaintiffs’ had opened in India only in the year 2015. It also contended that since there was no store of H&M in Delhi, the Delhi High Court did not have jurisdiction to decide the suit. The defendants further argued that even though the alphabets H and M were the same, the word Megabrands added made a clear distinction between the theirs and the plaintiffs’ trademark.

The two main issues that are raised in this case are:

  1. Whether the defendant had intentionally made a trademark similar to the trademark belonging to the plaintiffs?
  2. Whether the Delhi High Court had jurisdiction to decide the suit?
  3. Whether the plaintiffs’ suit would survive despite not establishing themselves in India when the Defendants had adopted their trademark?

The first issue decided by the Learned Single Judge was the issue of jurisdiction. The Judge as long as the effect of infringement or passing off, if any, by the defendants, of the trademark of the plaintiffs and/or of the goods of the defendants as the goods of the plaintiffs, can be felt in Delhi, the Hon’ble High Court of Delhi would have the jurisdiction to entertain the suit.

The Ld. Single Judge also rejected the argument of the defendants and said that adding a suffix or a prefix to the alphabets H&M would create distinctiveness between both the trademarks, and Megabrands being a generic word could be solely associated with the defendants. The way the alphabets H and M were written was similar to that of the Plaintiffs and considering that both the companies were in the same trade circle, the customers would be similar and it would cause some confusion. Further, the Ld. Judge also referred to Christopher Waldow’s Law of Passing off[1]which says that when a trademark is adopted by a party which is imitating another’s trademark, then an injunction needs to be granted. The Ld. Judge also referred to Mahendra and Mahendra Paper Mills v. Mahindra and Mahindra Limited[2] , wherein the Plaintiff had been using the word ‘Mahindra’ which had become so well-known and had acquired distinctiveness over the years, and it was held that the word ‘Mahendra’ used by the defendants would create an impression that there was some connection or relation to the plaintiff.

Deciding the issue of not being established when the defendants had adopted their mark, the Ld. Judge stated that the Plaintiff had sales in India since 2015, which was prior to the institution of the suit. Also, the Judge followed the principle of “first in the market” as established in the Neon Laboratories Limited v. Medical Technologies Limited[3]. The Ld. Single Judge also referred to the N.R. Dongre v Whirlpool Corpn.[4], which stated that wordwide prior user is given preference over the registered trademark in India.

The Ld. Single Judge ruled in favour of the Plaintiffs and upheld the interim application and restrained the defendants from using their trademark in any manner.

Conclusion

Having similar trademarks, especially to that of a well-known trademark is an unhealthy way of acquiring good reputation and misleading the consumers, who would innocently buy garments from the wrong company by mistaking it to be another brand. In order to avoid chaos and unhealthy competition, it is important that there be distinctive and independent trademarks. There are many cases around the world for using similar trademarks just to gain good reputation and goodwill falsely, which not only harms the reputation of the other company but also brings down the sales of that company. Hence, differentiated trademarks are a must.

Author: Vandya Nallamothu, a 5th Year BA LL.B (Hons.) student of Symbiosis Law School and intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 1995 Edition

[2] (2002) 2 SCC 147

[3] (2016) 2 SCC 672

[4] (1996) 5 SCC 714

Patentability of Computer Programmes with Technical effect & Contribution: In Light of FeridAllani v. UOI

The issue of patentability of computer programmes has been fluxed with puzzlement since ages. Through this blog we will dig into the concept addressing the topic of patentability of computer programmes with technical effect and contribution and analyse the meaning behind the suffix ‘per se’ added to computer programmes in the patents act, 1970, in light of the recent judgment of Delhi High Court, in the case of FeridAllani v. UOI.

A computer programme is a set of instructions that enables the computer to function or perform a particular task. According to the Copyright Act, 1957, Computer Programme means a set of instructions exhibited through codes, words, schemes, etc., including a machine readable medium, which enables the computer to perform certain tasks or achieve particular result[i]. A Computer programme is categorized as a literary work, copyrightable under the Indian Copyrights act.[ii]

Section 3 of the Patent act, 1970 enlists non-patentable inventions or things which are not considered to be inventions and hence not patentable under the Indian regime. Patentability of ‘Computer programmes per se’, has been restricted according to ‘section 3(k)’ of the Patent Act.

The issue of patenting the inventions related to computer programmes or computer related inventions have been clouded with puzzlement since decades. The legislature, since the proposal of patents( second amendment) bill 1999 and insertion of the term ‘per se’ after ‘computer programmes’ has tried to un-puzzle the whole scenario.

In the report of RajyaSabha on the Patents ( Second Amendment) Bill, 1999, it was clarified that the insertion of ‘per se’ post ‘computer programmes’ was done, so as to ensure that the computer related inventions are not rejected the grant of patent protection.

It was clearly stated that,

“In the new proposed clause (k) the words ”per se” have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.[iii]

The term ‘per se’ is not defined specifically in the patents or copyrights act. However, ‘per se’ literally means, ‘by itself’, or ‘in itself’ or ‘intrinsically’. The definition of ‘per se’ in relation to computer programmes, thus indicates that computer programmes in itself and by its own is not patentable and not in connection to other things thereof.[iv]

The patents ( amendment ) Ordinance, 2004 brought upon a proposal to amend and add upon the phrase, ‘a computer programme per se other than its technical application to industry or a combination with hardware’ in section 3(k), which was rejected by the 2005 amendment act, on the ground that it would give rise to the monopoly of multinationals.[v]

Draft manual on patent practice and procedure, 2005, further brought upon a 14 page annexure containing the provisions relating to Computer Related Inventions (CRI’s), followed by Draft manual 2008 and 2011.

Thereafter, in the year 2013, the first draft was prepared specifically with regard to the ‘Computer Related Inventions ( CRI’S)’, followed by the 2015 CRI guidelines, 2016 Guidelines and the revised guidelines for examination of CRI’s, 2017.

According to the 2017 CRI guidelines, Computer Related Inventions (CRIs) encompass inventions that entail the use of computers, computer networks or other programmable apparatus and also the inventions which involve features realised either wholly or partially by means of computer or other programmes.

The 2017 guidelines brought some amount of clarification with respect to exclusions expected under section 3(k) of the Patents act, 1970, so as to ensure speedy redressal of the patent applications related to CRI’s. It emphasised upon the legislative intent of Joint committee on patent (second amendment) bill, 1999, for attaching the suffix ‘per se’ to computer programmes. Further, in the guideline it was particularly stated that, Computer programmes are often claimed in the form of systemor method claims with some means indicating the functions of process steps and flow charts. The claims in substance, like method/process, apparatus/system/device, computer program product/ computer readable medium should not belong to the excluded categories and the focus while patenting should be on the underlying substance and not the particular form in which it is claimed.

The recent judgment of Delhi High Court in the case of FeridAllani v. Union of India[vi] proved to be a cutting edge decision on patentability of computer programmes with technical effect and advancement. In this case, a writ petition was filed against the order of IPAB, wherein it dismissed an appeal against the order of patent office who rejected their patent application on the ground that it was being hit by section 3(k) of the patent act, 1970. The high Court in this case considered the appeal of the petitioners and the three guidelines on CRI’s and held that, “the bar on patenting was with ‘computer programs per se’ specifically and not on all inventions based upon computer program. It further emphasised on the point that, in today’s digital world wherein almost all the inventions such as automobiles, microwaves, cars, mobiles etc., and innovation such as artificial intelligence and blockchain technologies, are based upon computer programs, it would be retrograding to hedge such inventions from patentability. Furthermore, the words ‘per se’ were incorporated to ensure that patentability of genuine inventions developed and based on computer programs was not impeded.”

The court in this case further allowed the writ petition and declared thatwhen an invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable, even though based upon a computer program. Further, the court directed the petitioner’s patent application to be re-examined in light of the CRI guidelines and established judicial precedents, within a period of two months. 

Conclusion: Therefore, wherein the computer programme includes things developed further upon or ancillary thereto, and demonstrates a technical effect or technical contribution, then it can be patentable. The guidelines on CRIs and established judicial precedents like in the case of FeridAllaniv. UOI, shall be taken into consideration while dealing with such patent applications.

Author: Vartika Prasad, 5th-year student of Amity Law School, Noida, and intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[i]Section 2(ffc). The Copyright Act, 1957

[ii]Section 2(o). The Copyright act, 1957

[iii]Patents ( Second Amendment) bill, 1999. Report of Joint Committee.

[iv]Guidelines for Examination of Computer Related Inventions (CRIs), 2017.

[v]The Ping-Ponging Paradigm of Patenting Computer Programmes in India (“Software Patenting” 1999-2020)by Swaraj Paul Barooah February 12, 2020. Access from: https://spicyip.com/2020/02/the-ping-ponging-paradigm-of-patenting-computer-programmes-in-india-software-patenting-1999-2020.html

[vi]W.P.(C) 7/2014 and CM APPL. 40736/2019

Crash Course For Cracking Patent Agent Examination (PAE) 2020

IIPRD, along with Khurana & Khurana, Advocates and IP Attorneys (K&K) has played a prominent role in supporting prospective candidates pursuing to become a registered Indian Patent Agent in 2018. The next examination for enrolling as an Indian Patent Agent has been proposed to be held in June 2020. In view of the upcoming Patent Agent examination, IIPRD along with Khurana & Khurana, Advocates and IP Attorneys (K&K) will be conducting a Professional Training Programme in Patent Law Practices and Procedures which intends to prepare prospective candidates exhaustively and comprehensively with regard to every single topic and infusing them with confidence required to achieve their dreams of becoming a thorough and competent patent professional.

A Patent Agent is a person who is authorised by law and is recognised by the Indian Patent Office to deal with patent applications in order to facilitate inventors and patent applicants. A Patent Agent therefore can represent an inventor or patent applicant including draft a patent specification, file and prosecute applications. A Patent Agent can also be engaged in the prevention of patent infringement and protection of patents. He/ She may also provide patentability opinions, support inventors with completion and submission of patent related application paperwork, conducting prior art search, construction of legally enforceable claims with regards to inventor’s ownership of the invention, revision of rejected patent application and making a strategic decision for the optimum time frame for the maintenance of the application and when it would be suitable to abandon the application.

If a patent application requires 2 weeks for preparation for filing stage, with on an average 40 work weeks for a Patent Agent, this means that a Patent Agent can prepare around 20 applications a year. Close to 50,000 patent applications are filed in India, of which 30% are filed by Indian applicants. With impetus from the government on innovation, increase in awareness about  patenting among innovators etc., the number of patent applications to be filed are bound to rise in the coming years, and hence, there is a steady demand for Patent Agents.

The rigour of the Patent Agent Examination has increased over the years, while at the same time, the competition for the Patent Agent Examination has become intense and cut–throat owing to the gigantic and ever increasing population of the country. And this is where we step in, to transform prospective candidates into potential contenders, a cut above the crowd. We provide candidates with a well experienced league of legends in the field of patent industry with decades of experience, who would be just a call away to clear out your path for victory. Leave no stone unturned! Do what is required!

This initiative comes with an earnest effort by IIPRD and its sister concern Khurana & Khurana, Advocates and IP Attorneys (K&K) to enable more & more candidates to transform themselves into patent agents with promising career benefits. The Patent Agent Examination Crash Course conducted by IIPRD in 2018 had over 90% success rate with over 30 Patent Agents qualifying across India. This time, together, we wish to better this success rate and hold the flag higher.

The Crash Course would involve an optimal combination of:

• Extensive physical/face to face interactions with, and teaching by the Faculty on designated course structure/modules.

• Sharing of Recorded Youtube Video sessions presented by faculties during Crash Course of 2018.

• Physical/Hard copies of Course Module on Patent Drafting and Manual of Patent Office Practice and Procedures (MPPP).

Contact details:

Bhumika
(M): +91-8920269831
(T): (120) 4296878 , 4909201 , 4516201
Email: bhumika@khuranaandkhurana.com,
course@iiprd.com

Tearing Down A Product to Look for Patent Infringement

In today’s world where most companies depend on other manufacturers to supply them with the necessary components to build a desired end product, it becomes strikingly important for a patent asserting body to understand the infringing parties and their role and significance in carrying out the infringement by the accused product. Product teardown reporting is a mechanical decomposition of technology-based devices. In industry, product teardown is generally used to understand how product works and guide enterprise toward more streamlined solutions in future.

Often referred as Bill of Materials (BOM), product teardown is basically a list of components, parts, modules, raw materials and their quantities required to build a product. In case of electronic devices, it helps to dive into the product and look for components and their contribution in patent infringement. Looking at subcomponents and theirs features/functions, an expert can easily pinpoint direct, indirect and contributory infringers. At the same time, one can calculate damages to be claimed from each infringer. Also, it helps patent holders to identify the actual infringer of its patented technology and other contributors that manufactured custom components for the product which indirectly resulted in infringement of accused product.

You can read more about patent infringement and about our approach towards preparing an infringement analysis report here.

We opened a mobile phone to list down and understand the role of underlying components in a patent infringement. For a researcher, teardown provides not only the list of components but also their role in the device and interrelationship between the components. Here is the summary report that covers list of components present a popular mobile phone

Author:  Sanjay Sharma, Senior Associate- Patents at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at sanjay@iiprd.com

Analysis of Shogun Organics Ltd. V/S Gaur Hari Guchhait and Others

Shogun Organics Ltd. V/S Gaur Hari Guchhait and Others is a case decided by the Hon’ble High Court at Delhi on 14th of August 2019. Shogun Organics Limited (Plaintiff) is a company engaged in the research, manufacture and sale of mosquito repellents. The plaintiff filed this suit for injunction in the year 2017 against Solex Chemicals Pvt. Ltd. (one of the Defendants) and other aiding parties. The plaintiff alleged that the defendants are using its patented technology and hence, should be granted injunction against them. Whereas, the defendants argued that the patented technology itself is not valid. The defendants submitted that the patented process was disclosed earlier in the year 1997 through an application made under the Insecticides Act, 1968, and is in public knowledge since then.

This article aims to highlight different prospects of the case dealing with novelty of a patent, prior publication, public use and public knowledge pertaining to a process patent. The author further elaborates upon the harmonious construction struck by the Hon’ble Court between the Patent Act, 1970 and the Insecticides Act, 1968. The controversy pertaining to information furnished about a patented process to a Government Authority was duly settled in this case. Whereas, the author is of the opinion that some aspects of such controversy remains unanswered.

This case was decided on the 14th of August 2019, by the Hon’ble High Court at Delhi. This case elucidates the concepts like novelty of a Patent destroyed through Public Use and whether information submitted to a Government Department would amount to Prior Publication or not? This article aims to elaborate upon the different facts and circumstances that this Hon’ble High Court took the aid of while deciding the matter.

Facts:

Plaintiff (Shogun Organics Ltd.) is a company engaged in the research, manufacture, and sale of mosquito repellents. The Defendant (Manaksia Ltd.) is a competitor of the Plaintiff. The plaintiff filed patent application in the year 2007 and was granted the same in the year 2009. The Defendant filed a pre-grant opposition in the year 2007 which was dismissed. The Defendant further filed a post-grant opposition in the year 2013 which was considered by the patent office and the patent was revoked. IPAB in the year 2014 set aside the order of the patent office, declaring it as an order without application of mind and reinstated the patent.

After conducting an investigation the Plaintiff came to know that the Defendant is using its patented technology. To restrain the Defendant and other aiding parties from causing any further damage to the Plaintiff, a suit for grant of permanent injunction was filed against the Defendants.

Submissions made by the parties:

Plaintiff- The Plaintiff submitted that it has been granted registration under section 9(3) of the Insecticides Act, 1968 in the year 1997. The defendant has been granted registration under section 9(4) of the act in the year 2009. The plaintiff’s contention was that the Defendant’s registration is merely a follow-on registration. As, according to the letter dated 9th February 2011, issued by CIBRC, Shogun Organics Ltd. is the only applicant registered under section 9(3) of the Act, for indigenous manufacture of D-trans-allethrin technical in India. If an applicant files for registration under section 9(4) for the same insecticide, the applicant must have the same process of manufacturing as that of the registrant under section 9(3). Therefore, it is pretty obvious that the Defendant was using the same process as that of the Plaintiff and hence, infringement is established.

Further, HPLC test reports along with an expert’s affidavit were also submitted. The test results proved that the Defendant is using the same technology as that of the Plaintiff.

Defendant-Defendant submitted that the Plaintiff filed for grant of patent in the year 2007. Whereas, the defendant has filed an application for registration under section 9(4) of the Insecticides Act, 1968 in the year 2006. As the Defendants and the people employed under them already knew about the patented process, it is clear that the patented process was already within public knowledge.

Considering the contention of the Plaintiff, that the Defendant is using the same process of manufacturing as that of the Plaintiff, the registered patent becomes invalid on the ground of prior use and prior publication. Prior publication because the Plaintiff, as well as the Defendant, have mentioned their process of manufacturing in the application submitted under section 9. 

Thirdly the Defendant submits a screenshot of the Plaintiff’s website showing that it was selling D-trans Allethrin since 2002. Which strengthens the Defendant’s argument for prior use and public domain even stronger.

Rebuttal by the Plaintiff

The Plaintiff submitted that the affidavit of PW-1 clearly mentions that there were various methods for producing D-trans Allethrin but they all had certain disadvantages attached to it. It was not until the Plaintiff developed a six-step synthesis process which was highly efficient and eliminated such disadvantages.       

As long as prior use of D-trans Allethrin is concerned, it is not denied that it was not used before the patent was filed for, but the process employed before for its production was totally different from the patented process.

Issues

There were two primary issues.

  1. Registration under the Insecticides Act would constitute as prior publication or not?
  2. Whether the Defendants have infringed Plaintiff’s Patent or not?

Decision of Court

Under Section 104A, whenever the subject matter of a patent is a process, the Court can direct the Defendants to prove that the process used by the Defendants is different from the patented process. It is a well-settled principle that the Defendant cannot withhold its best evidence especially if the same is within its own knowledge. The Defendants failed to submit the process of manufacturing used by the Defendants after given constant reminders by the Court. Hence, there was no evidence on record that could rebut the plaintiff’s case of infringement.

As long as the Defendant’s argument pertaining to Prior/Public Use was concerned, the court dismissed it after relying on the reasoning mentioned in Lallubhai’s case. Lallubhai’s case held that “if you have an article manufactured under a secret process and that article is of such a character that nobody by examining it can find out the secret of that manufacture, then the sale of that article in public cannot amount to public user of the process”. Hence, although the Plaintiff was using and selling D-trans Allethrin prior to the grant of patent but since nobody can ascertain the process of manufacturing by mere examination of the product it does not amount to Public Use.

The Hon’ble High Court after analyzing section 30 of the Patent Act and perusal of certain relevant judgments held that “disclosure to a Government Department or to any other authority, not just of the patentee, but by any other person would not constitute prior publication”.

Unanswered Controversy

In case of Process Patents, to destroy the novelty of a patent all the significant steps of the process should have been disclosed prior to patent application. In the present case the Hon’ble High Court held that unless the six-step distinctive process of the Plaintiff is not disclosed prior to the patent application, it cannot be said that the patent lacks innovative step. The exception under section 30 of the Patent Act addresses a separate controversy altogether. Section 30 ensures protection against any disclosure made to Government Authorities.

Whereas, the question that “what would have happened if the complete six-step process was disclosed by the plaintiff under section 9(3) of the Insecticides Act? still remains unanswered. Would the exception under section 30 still protect such disclosure or would render the process unpatentable?

Author: Udit Tewari, 5th-year student of Vivekananda Institute Of Professional Studies (GGSIPU), an intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] CS (COMM) 201/2017: (14.08.2019 – DELHC):MANU/DE/2598/2019: 2019 SCC OnLine Del 9653:Delhi High Court

[2]http://krishi.bih.nic.in/Acts-Rules/Insecticides_Act_1968.pdf

[3] Section 9 http://krishi.bih.nic.in/Acts-Rules/Insecticides_Act_1968.pdf

[4] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf

[5] ¶ 64,65 and 66 of Communications Component Antenna Inc. v ACE Technologies Corp. and Ors., CS (COMM) 1222/2018: Decided on 12th July, 2019:2019 SCC OnLine Del 9123: MANU/DE/2202/2019:Delhi High Court

[6] ¶10 Lallubhai Chakubhai Jarivala v. Shamalda Sankalchand Shah: AIR 1934 Bom 407:MANU/MH/0203/1934: 1934 SCC OnLine Bom 80 : (1934) 36 Bom LR 881:Bombay High Court

[7]¶104, 105, 106, 107 and 108: J. Mitra and Co. Pvt. Ltd. v. Kesar Medicaments and Ors: IA No. 11883/2006 (u/O 39 Rs 1 and 2 of CPC) in CS (OS) No. 2020 of 2006:2008 SCC OnLine Del 255 : (2008) 102 DRJ 106 : (2008) 148 DLT 198:MANU/DE/0306/2008: Delhi High Court

International Framework For Protection Of Intellectual Property In Space

INTRODUCTION

Over the past few years, there has been an increase in outer space exploration activity. It is pertinent to note that almost all activities in relation to the use and exploration of space are an outcome of intellectual inventions. Since inventions have no boundaries there should not be any restrictions with regards to its protection. Human beings, the creator of inventions, should also have the right to protect their inventions made in outer space. Bearing this in mind, this article focuses on the need for a uniform international legal framework for the protection of intellectual property rights in outer space.

NEED FOR A UNIFORM INTERNATIONAL FRAMEWORK

While intellectual property rights are based on a strict territorial approach, the concept of territorial sovereignty does not exist in outer space.[1]The outer space is open and free for exploration, access, and use by all states. While the law governing outer space encourages for sharing of the benefit arising from space exploration, the intellectual property law protects the rights of the persons over the creations of their mind.

With these conflicting views, the question arises as to how would the intellectual property in outer space be protected. The need for a uniform international framework for the protection of Intellectual Property in Outer Space can be determined from the following points:

A. APPLICATION OF NATIONAL LAWS

The Outer Space Treaty (OST) which represents a basic legal framework of international space law, states that the jurisdiction and control over a space object would remain with the State Party that registers such space objects.[2]

Similarly, Art 5 of the Inter-Governmental Agreement states that each partner shall retain its jurisdiction and control over the elements it registers.

Thus, for the purposes of control and protection of national property, in outer space, including intellectual property, national laws shall be applicable.[3]However, National laws have their own regulation as to international jurisdiction. Thus, in case of any dispute, there would be a clash of different legal principles thereby defeating the purpose of international co-operation.

B. PRIVATE ENTITIES

Latterly, there has been a boost in the development of private and commercial activities in space. As privatization minimizes the economic burden of a state, states have been in favor of the participation of private entities[4] in outer space activities. The private sector has an indispensable role in the development of space activities.

But the lack of a uniform legal framework would lead to a contractual agreement between the parties. The Parties would be required to negotiate upon intellectual property clauses in each international agreement with regards to ownership, right to use, licensing, confidentiality, etc.

While such a contractual agreement is valid among the parties concerned, it does not bind third parties. Thence the interests and enthusiasm of private entities in space activities will wane.[5] In fact, the failure to hold third parties liable could discourage such private entities from playing key roles in space-related activities.

Thus, the acquisition and protection of intellectual property will have a positive effect on the participation of the private sector, generating the development of outer space activities and space technology in general.

C. INTERNATIONAL SPACE STATION

The Code of Conduct which has been drafted to protect the intellectual property rights of Space Station users remains less effective as in case of any breach the claims would be made according to the parties’ respective legal regimes for intellectual property.

The question with regards to the inventions made partly on a space object registered by one state party and partly on another state party’s registered space object, where the technology of one party is used to develop the product and the process of developing the product takes place on a space object registered by other party and such other related questions remain unanswered.

D. ISSUE OF FIRST TO INVENT AND FIRST TO FILE

Currently, there exist two main patent systems namely:[6]

  1. First to invent; and
  2. First to file

One of the achievements of the World Trade Organization, during the Uruguay Round of Negotiation, was the adoption of the first to file system.[7]

However, it is necessary to re-examine the feasibility and application of this system to the inventions made in space. The period of filing ought to be extended as the act of filing will only start after their return to earth and showing the product or invention.

E. DEVELOPMENT OF SPACE ACTIVITIES

Space activities such as Remote Sensing, Telecommunications, Earth Observation, Satellite Programming, Research and Manufacturing in space, etc. have been developed. The emergence of space tourism in the near future and space activities being commercialized, both mean that a uniform, secure and a definite international legal framework is the need of the hour.

CONCLUSION

Though Outer space and Intellectual property are conflicting in nature, the barriers between the two are not insurmountable[8].With the co-operation of all states, a strong intellectual property protection law can be formulated. Better protection would also serve to encourage and safeguard the participation of private entities in outer space activities thereby determining prompt development of space technology which would indeed benefit the entire mankind. Therefore, by adopting and enacting an international framework, the intellectual property issues in outer space can be addressed effectively.

Author:  Tanushri Joshi, a 4th-year law student of  RILS Law College, an intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

[1] Article 2 OST.

[2] Article 8 OST.

[3] IGA ART 21, Inter – Governmental Agreement.

[4] Dan L. Burk, Protection of Trade Secrets in Outer Space Activity: A Study in Federal Pre-emption, 23 Seton Hall Review 563 (1993).

[5] Anna Maria Balsano, Intellectual Property within Public International Research Organizations: The Example of the European Space Agency, The Proceedings of the 36th Colloquium on the Law of Outer Space, IISL 3 (1993).

[6] Alejandro Piera, Intellectual Property in Space Activities: An Analysis of the United States patent Regime, 29 Air and Space Law, No.1, 50-51.

[7] Patent Perspectives, <http://www.ladas.com/patents/patpers.html&gt;

[8] A.M Balsano, ESA Legal Affairs, Paris, Intellectual Property Rights and Space Activities.

The Fugitive Bookie Sanjeev Chawla extradited to India

The magnate bookie and one of the prime accused in the Hansie-gate scandal, Sanjeev Chawla, has been extradited to India from the United Kingdom, 20 years after it rocked the entire cricket fraternity. This extradition is considered to be as the most high-profile extraditions under the 1992 India-UK Extradition Treaty.

Sanjeev Chawla, a London-based businessman, is one of the key suspects and played a central role in the 2000 match-fixing scandal, which also involved former South Africa Captain, Hansie Cronje alongside three others. While Hansie Cronje and the other South African players accepted their crime before the South African King’s commission, which was set-up to investigate the matters of match-fixing at depth, Sanjeev Chawla has been seeking refuge in the United Kingdom, after his Indian passport was terminated in 2000.  

This match-fixing scandal was unearthed by the Delhi Police when they were tipped-off and intercepted a call between Sanjeev Chawla and Hansie Cronje, wherein a huge sum of money was offered to Hansie by Sanjeev to lose matches in the on-going India-South Africa One Day International (ODI) series and perform in a particular pre-determined manner while also discussing about the details of other players who shall be on board to work out the plan successfully. On filing of the FIR by the Delhi Police, Sanjeev Chawla fled to the UK, where he acquired citizenship in 2005 since his Indian passport was revoked in 2000. Since then, the Indian Government has been trying to get him extradited to India. In 2016, he was arrested in London after an official request for extradition was put forth by the Indian Government and evidence regarding the same was produced in the UK Court. He exhausted all his rights to appeal in the United Kingdom, after the case went through the Westminster Magistrates Court, the High Court of England and Wales and the European Court of Human Rights in Strasbourg and hence, was finally extradited to India on the 13th of February, 2020, nearly four years after his extradition was requested by India.

The extradited bookie will be facing a criminal trial for cheating under the Indian Penal Code; since there is no law that deals with match-fixing per se. On his arrival in India, the trial court of Delhi had given 12 days to the Delhi Police to interrogate the bookie but he has been immediately shifted to Tihar Jail after an order by the Delhi High Court owing to a petition which has been filed claiming that police were not entitled to interrogate him and that the Indian Court had extradited on the terms with the UK Court, that he would be kept in Tihar Jail.

Sanjeev Chawla is often considered as the king-pin of all match-fixing events that happens throughout the world and has allegedly operated as the biggest betting syndicate in the 1990s, woking closely with the D-Company. Having him finally in the custody, it is to be seen that whether the police can go to the bottom of the matter and discover others involved in this crime which has corrupted the gentleman’s game. This extradition case would also mark a turning point on the matter of prison conditions in India, a stumbling block in past extradition cases, with the High Court in England accepting a series of Indian government assurances over the accused’s “safety and security” and complying with international requirements around “personal space and hygiene” while in custody.

It is interesting that even though the Delhi Police, alongside the Central Bureau of Investigation (CBI) excavated the entire match-fixing saga back in 2000, it was only in 2013 that an actual charge sheet was filed against Hansie Cronje, Sanjeev Chawla and others who were involved in this scandal. This shows the inefficiency and delay in the legal process in India in such cases due to which culprits like Sanjeev Chawla escape punishment for long and most of the innocent players and officials, sometimes, lose their peak years. Under a non-existent sports legislation and no punishment as such for match-fixing, it will be fascinating to see how the Indian Judiciary goes about this matter, apart from applying criminal law and if there is any mention of the much debated topic i.e. the need of an efficient sports regulation in India, which has certainly become the need of the hour.

The time is now most certainly ripe for the Indian Government to make a specific and central sports legislation while considering the recommendations made by various stalwarts in this field and legal institutions including the Law Commission of India, Justice Mudgal Committee and Justice Lodha Committee, who have laid down guidelines to legalize and regulate betting and gambling activities and also criminalize match-fixing and form a national sports regulatory body.

Author:  This article is written by Sudhanshu Sahoo, in case of any queries please contact/write back to us at arindam@iiprd.com.

Hindustan Unilever wins patent battle against Tata Chemicals Limited

Indian Patent Office in a protracted patent battle between Hindustan Unilever Limited and Tata Chemicals Limited has given a decision in favour of Hindustan Unilever Limited. The Assistant Controller of Patents and Designs had refused the patent application, related to water purifier, filed by Tata Chemicals Limited along with Tata Consultancy Services on July 8, 2008. The Assistant Controller of Patents and Designs refused the patent application based on a pre-grant opposition filed by Hindustan Unilever Limited which raised objections of the invention being obvious to a person skilled in the art.

According to market research, India’s market of water purifier was estimated to be at $391.4 million in 2019, and the Indian market is expected to expand at a Compound Annual Growth Rate (CAGR) of 13% to outreach $818 million by 2024. Furthermore, according to allied market research, the global market size of water purifiers was valued at $31,013 million in 2018. The global water purifier market is expected to grow at a Compound Annual Growth Rate of 9% from 2018 to 2025 to outreach $58,322 million by 2025. Thus, global business houses see a significant market potential of water purifiers due to increasing water pollution, and water-borne diseases such as cholera, typhoid, diarrhea, and cancer.

Tata Chemicals Limited along with Tata Consultancy Services claimed a patent for a water purifying device comprising a purification chamber that has an upper chamber and a lower chamber, such that the lower chamber has a nozzle for the outflow of water. The purification chamber is coupled with a water storage vessel, and the purification chamber is configured with a water filter such that water present in the water storage vessel is purified by a water filter of the purification chamber. The applicant claimed that the water purifying device is designed such that the water filter receives a uniform flow of water, and nozzle regulates the outflow of purified water from the water purifying device. The applicant described that the device could sustain uneven forces and pressures applied to the water filter of the purification chamber. Another advantage described by the applicant is that the water purifying device due to its cost-effectiveness can be used in villages for various purposes, and the device could be fixed on any vessel or even pot. Moreover, the applicant also mentioned various awards, including the “design of the decade” award earned by the water purifying device.

Hindustan Unilever Limited filed a pre-grant opposition against Tata Chemicals Limited along with Tata Consultancy Services on January 13, 2011stating that all features of the invention were present in prior arts and therefore invention lacks inventive step. Hindustan Unilever Limited also objected that merely claiming aesthetic changes in the nozzle for the outflow of water over the prior arts cannot bring any novelty to the water purifying device.

In response to objections raised by Hindustan Unilever Limited, Tata Chemicals Limited along with Tata Consultancy Services argued that claimed water purifying device comprises all necessary features including a nozzle for the outflow of water which has not been claimed in any of the cited prior arts.

The Assistant Controller of Patents and Designs, in an order dated January 2, 2020, is of the view that the arguments made by the applicant (Tata Chemicals Limited along with Tata Consultancy Services) regarding objections of lack of inventive steps are not sufficient. The Assistant Controller further stated that the water purifying device invention is novel but lacks an inventive step, and is obvious to the person skilled in the art. So, the Assistant Controller of Patents and Design accepted pre-grant opposition by Hindustan Unilever Limited and refused the grant of a patent application filed by Tata Chemicals Limited along with Tata Consultancy Services.

Author: Manik Mittal, Patent Associate, at IP and Legal Filings and can be reached at support@ipandlegalfilings.com.

References:

[1] Indian Patent Office, available at http://www.ipindia.nic.in/

[2] Water purifier market by technology, available at https://www.alliedmarketresearch.com/water-purifier-market

[3] Patent office rejects Tata’s plea for swach water purifier, available at https://timesofindia.indiatimes.com/business/india-business

[4] Hindustan Unilever stops Tata from patenting technology for water purifier, available at https://www.business-standard.com/article/companies/

Pre-grant opposition filed against Indian Patent Application no. 201721030943 dismissed

Recently, Khurana and Khurana Advocates and IP Attorney’s Patents team was successful in defending a pre-grant opposition filed to reject our client’s Indian Patent Application no. 201721030943. The application was opposed on grounds of lack of clarity and sufficiency of disclosure, lack of novelty, lack of inventive step, non-patentable subject matter under section 3(d), 3(f) and 3(k) of the Indian Patents Act, failure to disclose information under section 8 of the Indian Patents Act etc.

The patent application relates to an automatic gemstone polishing robot. In the well-reasoned order, the Indian Patent Office fully considered the facts of the case, relevant laws and precedents, Manual of Patent Office Practice and Procedure etc. to dismiss the pre-grant opposition. Along with this, the Opponent failed to provide any evidence along with representation as per Indian Evidence Act, Indian Patents Act and Rules thereunder – the burden of proof required from the Opponent to prove lack of novelty, inventive step etc. was not adequately met.

Controller’s Order can be accessed here.

Observations from the Controller in reaching his decision are as under:

Insufficiency of Disclosure: The Controller was of the view that all the features of the invention are clearly described to enable a person skilled in the Art to practice the invention

Lack of Novelty: The Controller was of the view that the prior art cited, IN 242710, is different from the present application. The prior art is teaching about pre-processing step of automatic diamond bruting in gemstone processing, while the Applicant’s invention claims a polishing machine which is a post-processing step.

Lack of Inventive Step: The Opponent relied upon seven documents, however, the opponent failed to establish which combination of prior arts will be able to achieve the present invention. For this, the Controller was of the view that most of the cited references are for altogether different steps, bruting and polishing, and therefore can’t be considered as inventive step killing documents. Two of the cited documents are disclosing about gemstone polishing unit, however, one of them is disclosing movement of a polishing assembly while the other relies on one or more sensors to measure weight applied with the diamond on polishing wheel only without any further analysis and feedback.

Not an invention within the meaning of the Act or not patentable under the Act: The Opponent submitted that the present invention is not patentable under Section 3(d), 3(f) and 3(k) of the Indian Patents Act. To this the Learned Controller was of the view that:

  • The present application claiming gemstone processing robot and the method of polishing gemstone are novel over the prior-art documents, and hence, there does not an example of “mere new use of a known process, machine or apparatus”. Based on this reason, it is manifest that the claimed invention does not fall within the ambit of Section 3(d).
  • The claimed invention satisfies the test of ‘Novelty’ and ‘Inventive step’ and it is evident from a comparative reading of the instant patent application and the prior-arts cited that – not only is the claimed invention more than a ‘mere workshop improvement’, the technology involved produces superior results in terms of quality of gemstone. The claimed invention consists of features and systems/components/devices which are dependent on each other and not the mere arrangement. Therefore, the invention does not fall within the ambit of Section 3(f).
  • In the opinion of Controller, even though there is contribution of image processing unit in the inventive step of theapplication but in-toto the claims, as amended does not fall within the ambit of Section 3(k).

Failure to disclose the information required by section 8: Applicant had filed Form-3 on time showing PCT Application no and publication.

Author: Arindam Purkayastha, Patent Attorney at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at arindam@khuranaandkhurana.com.

Physical Copy Doctrine versus the “Substantiality” Dictum

When it comes to the issue of copyright infringement of cinematograph films, there exist two schools of thought. One school believes that as far as cinematograph films are concerned, Section 14(1)(d) of the Copyright Act only protects the exact carbon copy of the work and not the contents in it.  They argue that in lieu of Section 13(4) of the Act, the rights to the different contents of the film rests separately with the respective authors such as the music director, screenplay writers etc. Section 14(1)(d) only gives the owner (producer) of a cinematograph film copyright protection to the exact “copy” of the work. This theory that they propagate is sometimes referred to as the “Physical Copy Doctrine”. The other school believes in a more broad reading of Section 14. According to them, a cinematograph film is more than a compilation of its underlying works. This school of thought believes that there is creative authorship that goes into the making of a cinematograph film which is beyond all the inputs from different underlying works of the film and this creative authorship is what puts the underlying works together. Hence, this creative work put by the producer in the form of choices and decision making deserves to be protected by copyright. The proponents of this school, therefore, argue in favor of the producer getting copyright protection beyond the exact copy of the film, emphasizing on the issue of “substantial” copying. According to them, Section 14(1)(d) also protects the producer from substantial copying and not only the exact copying of the work. It is this very argument that creates a conflict with the physical copy doctrine.

In order to find out which argument carries more weight, it is important that one looks into the judicial precedent on the issue of copyright protection of cinematograph films. Surprisingly, there are judgments with widely varying perspectives on the issue. One of the most authoritative judgments on this issue is that of RG Anand v. Delux Films[1]. The Apex Court in this 1978 case held that “if on a perusal of the copyrighted work the defendant’s work appears to be a transparent rephrasing; or a copy of a substantial and material part of the original, the charge of plagiarism must stand proved”[2]. Thus, the test of substantial similarity was laid down and in the years to come, the Indian courts have followed this dictum a number of times. However, a number of judgments that has followed this dictum have received a lot of flak and criticism from the adherents of the “physical copy doctrine”. This apparent conflict between the two theories came into the limelight recently when Justice Manmohan of the Delhi High Court came up with two judgments in July last year – the MRF Case[3] and the Yash Raj Films Case.[4] Both the judgments based its core on the “substantiality” theory and took a stand that was very different from that taken by the Bombay and the Madras High Court. Interestingly the Court observed the Calcutta High Court’s judgment in Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah[5] which was of the opinion that the object of the Copyright Act would not be achieved if the producer is not protected against copying of content of the cinematograph film. The Hon’ble Delhi High Court took a stand that cinematograph films are more than a sum of its parts and must enjoy full protection under the Copyright Act. It relied on the judgment of Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association[6] on taking this stand. The IPRS judgment said that a cinematograph film is a “felicitous blend, a beautiful totality………. Cinema is more than long strips of celluloid, more than miracles in photography, more than song, dance and dialogue and, indeed, more than dramatic story, exciting plot, gripping situations and marvelous acting.[7]  Justice Krishna Iyer through this verbose judgment tried to convey that in addition to various artists acquiring copyrights over their respective underlying works, the producer also acquires a similar copyright in lieu of being a “master of his combination of artistic pieces[8]. In addition to relying on the IPRS judgment, the Court also took note of Article 14bis(1) of the Berne Convention which says that the owner of the copyright in a cinematograph film shall enjoy the same rights as the author of an original work.

The stand taken by the Delhi High Court in MRF and Yash Raj, and the Calcutta High Court in Venkatesh Films has received praise from a section of the industry, especially the producers. However, the opponents have presented equally strong arguments criticizing the stand taken by the Court. It is also important to note that the Bombay High Court and the Madras High Court have given judgments with broadly varying opinion.

Although the Venkatesh Films judgment relies on the RG Anand case, it is important to take note of the fact that the object of copying in both the cases differed. While, in RG Anand, the Court looked into the copying of the expression of the ideas from a dramatic work, in Venkatesh Films, the Court was looking into the copying of the synchronization of images and sounds of the plaintiff’s film. Hence, relying on RG Anand was not appropriate. Relying on the Indian Performing Rights Society judgment by the Delhi High Court is also criticized. The IPRS judgment does a good job in establishing that a cinematograph is more than a sum of its parts and the owner of it must deserve separate copyright. However, the Delhi High Court fails to point out which particular sub-clause of section 14(1)(d) of the Copyright Act is violated. Furthermore, the Delhi High Court also relies on Article 14bis(1) of the Berne Convention as mentioned above, but it fails to see Article 14bis(2) which says, “Ownership of copyright in a cinematographic work shall be a matter for legislation in a country where protection is claimed.” It is pertinent to mention that the Supreme Court in the landmark Vishaka Case[9] has held that an international treaty can be relied on to interpret the law only when the domestic law has some lacuna or is silent about it. Also, India is a Dualist country that bars the judges from directly applying any International law.

Apart from the criticisms given by proponents of the Physical Copy Doctrine, it is important to note that there are several judgments that support their point of view as well. The Bombay High Court in the cases of Star India Pvt. Ltd. v. Leo Burnett (India) Pvt[10] and Zee Entertainment Enterprises v. Gajendra Singh & Ors.[11] was of the view that the copyright of a cinematograph film is only effected when a “physical Copy” or an actual copy is made. Even the Madras High Court in the case of Thiagarajan Kumararaja v. M/s Capital Film Works and Anr. [12] where the issue was with respect to the remake rights of a producer, the Court held that the producer does not have the right to remake a film as that would be substantially similar to the underlying works of the film. Therefore, this judgment also leans toward the physical copy doctrine, giving a narrow interpretation to the rights available to the producer under Section 14(1)(d) of the Act.

In this scheme of things where there is an apparent conflict between the interpretations given by the court with respect to the same issue, a standard position needs to be settled. The doctrine of Scene a Faire seems to be a perfect solution.  This doctrine emerges from the idea-expression dichotomy and tries to draw a line between the elements that can be protected as expressions of ideas and the elements that cannot. The case of Alexander v. Haley[13] crisply explains the elements that cannot be protected under this doctrine as “incidents, characteristics or settings which are practical matter indispensable or at least standard, in the treatment of a given topic”[14]. Interestingly, the RG Anand case explains and uses this concept in its judgment. However, over the years, High Courts have failed to incorporate this doctrine while interpreting the Copyright Act.

Such matters regarding copying of cinematograph films are becoming frequent and will only rise with the ever-growing movie industry. The makers of the film “Raabta” in the year 2017 was slapped with a copyright infringement suit by the makers of “Magadheera”, a Telegu film. The suit was later abruptly withdrawn by the plaintiffs. In another recent case, the makers of the film “Ujda Chaman” locked horns in a legal battle with the makers of “Bala” alleging copyright infringement in the dialogues and screenplay of the film. No further developments have been reported in the case since.  The issue of copyright infringement of cinematograph films has given rise to opposing stands taken by the High Courts and hence, adjudication on this matter by the Supreme Court along with the use of the concept of “Scene a Faire” is the need of the hour.

Author: Aparthiba Debray – B.A. LL.B. (Hons.), 4th year student of Institute of Law (Nirma University), intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com

References:

[1] AIR 1978 SC 1613

[2] ibid

[3] MRF Limited v. Metro Tyres Limited, CS(COMM) 753/2017
[4] Yash Raj Films Pvt Ltd v. Sri Sai Ganesh Productions, CS(COMM) 1329/2016

[5] 2009 SCC OnLine (Cal.) 2113

[6] (1977) 2 SCC 820

[7] ibid

[8] ibid

[9] Vishaka & Ors v. State of Rajasthan & Ors, AIR 1997 SC 3011.

[10] 2003 (2) BomCR 655

[11] 2007 (6) BomCR 700

[12] 2017 SCC OnLine Mad 37588

[13] 460 F. Supp. 40 (S.D.N.Y. 1978)

[14] ibid