Monthly Archives: May 2014

Patent Trolling and Fee-Shifting

Manish Kumar, intern at Khurana and Khurana, Advocates and IP Attorneys, looks at ‘fee-shifting’ paradigm in US Patent Act in light of US Supreme Court recent judgments.

The US Supreme Court, in its two recent judgments, has re-instituted its pre-2005 stand where the Courts had discretion of awarding reasonable attorney fees to the prevailing party and base their decisions in patent suits subjectively on case to case basis rather than on rigid and stringent conditions.

This stance of the Supreme Court has made the life of so called “patent trolls” difficult as they will not be allowed to bully other patent-holders or manufacturers in courts. These are the companies that bring lawsuits against small business entities with respect to their broad, substantially related or probable invalid patents or products. In such condition, it becomes more viable for these victims to settle the suit compromising their patent rights or seek license and save themselves from otherwise expensive and arduous lawsuits.

History of 35 USC 285

Prior to 1946 amendment of Patent Act, the American rule for awarding of attorney’s fee to the prevailing party in patent litigation did not exist and was governed by Marx v. General Revenue Corp., 568 U. S. 1946 that stated ‘[E]ach litigant pa[id] his own attorney’s fees, win or lose . . . .’ The 1946 amendment of the Patent Act incorporated section 70 in the Act that added a discretionary fee-shifting provision. The provision stated that a court “may in its discretion award reasonable attorney’s fees to the prevailing party upon the entry of judgment in any patent case.” The courts viewed this provision not as a ‘penalty for failure to win a patent infringement suit’ but as appropriate ‘only in extra-ordinary circumstances.’ The majority use of this discretion was based on ‘unfairness or bad faith in the conduct of the losing party, or some other equitable consideration of similar force.’ It was always difficult to enforce since it required adequate justification and establishing fraud practiced on the patent office or vexatious litigation.

The fee-shifting provision of the Patent Act was recodified as 35 USC 285 as “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”The whole debate now shifted to qualification of ‘exceptional cases.’ The courts, for next three decades, ignored the amendment and continued with its previous position under section 70 of the Act. After 1982, district courts started considering the patent suits in totality of the circumstances when taking decision under 35 USC 285.

This continued until the US Federal Court decided Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (2005), where the US Supreme Court took a more mechanical and rigid formulation which overruled earlier holistic and equitable approach. The court put forth following two conditions to be qualified for awarding fee to the prevailing party’s attorney’s fee:

1)      The litigation is brought in subjective bad faith, and

2)     The litigation is objectively baseless.

The Court stated that the case is to be considered as ‘exceptional’ under section 285 only when there has been material inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent,misconduct during litigation, vexatious or unjustified litigation. The litigation was considered to be ‘objectively baseless’ if it is ‘so unreasonable that no reasonable litigant could believe it would succeed.’

The decision on Brooks furniture case can be found here.

Recent Position

The US Supreme Court decided the two cases,Octane Fitness, LLC v. Icon Health and Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc.,on April 29, 2014, that have loosened the restriction on patent lawsuit fee-shifting provision of US Patent Act.

The cases can be found here (Octane) and here (Highmark).

In Octane Fitness, LLC v. Icon Health and Fitness, Inc.both the parties are manufacturers of exercise equipments. The respondent, Icon Health & Fitness, Inc., owns U. S. Patent No. 6,019,710 (’710 patent), which discloses an elliptical exercise machine that allows for adjustments to fit the individual stride paths of users. Icon is a major manufacturer of exercise equipment, but it has never commercially sold the machine disclosed in the ’710 patent. Octane Fitness, also manufactures exercise equipment, including elliptical machines known as the Q45 and Q47. Icon sued Octane, alleging that the Q45 and Q47infringed several claims of the ’710 patent. The District Court granted Octane’s motion for summary judgment on June 17, 2011, concluding that Octane’s machines did not infringe Icon’s patent. Octane then moved for attorney’s fees under 35 US 285. Applying the Brooks Furniture standard, the District Court denied Octane’s motion on September 6, 2011. It determined that Octane could show neither that Icon’s claim was objectively baseless nor that Icon had brought it in subjective bad faith. As to objective baselessness, the District Court rejected Octane’s argument that “judgment of non-infringement should have been a foregone conclusion to anyone who visually inspected Octane’s machines”.

In Highmark Inc. v. Allcare Health Management System, Inc. case, Allcare  owned Patent No. 5,301,105 (‘105 patent), which covers “utilization review” in “‘managed health care systems.” Highmark Inc., a health insurance company, sued Allcare seeking a declaratory judgment that the ’105 patent was invalid and unenforceable and that, to the extent it was valid, Highmark’s actions were not infringing it. Allcare counterclaimed for patent infringement. Both parties filed motions for summary judgment, and the District Court entered a final judgment of non-infringement in favor of Highmark.

Highmark then moved for fees under section 285 for fee-shifting. The District Court granted Highmark’s motion. The court reasoned that Allcare had engaged in a pattern of “vexatious” and “deceitful” conduct throughout the litigation. The district court awarded the Highmark attorney’s fees together with other damages.

Allcare moved to Supreme Court against the judgment to which the Court partly agreed to. It affirmed the District Court’s exceptional-case determination with respect to the allegations that Highmark’s system infringed one claim of the ’105 patent, but reversed the determination with respect to another claim of the patent.In reversing the exceptional-case determination as to one claim, the court reviewed it de novo. The court held that because the question whether litigation is ‘objectively baseless’ under Brooks Furniture ‘is a question of law based on underlying mixed questions of law and fact,’ an objective-baselessness determination is reviewed on appeal de novo and ‘without deference.’ It then determined, contrary to the judgment of the District Court that ‘Allcare’s argument’ as to claim construction was not ‘so unreasonable that no reasonable litigant could believe it would succeed.’

Conclusion:

Both the issues were to be decided regarding the attorney’s fee in which the prevailing parties (Octane and Highmark respectively) in the respective cases demanded the fee-shifting towards the losing parties. The court looked into the issue of law and upon the due consideration sent it back to the district court for reconsideration of the issue by instructing that the court should not decide on the basis of Brooks Furniture case, but take more subjective approach.  Thus, the present stand (as against decision of Brooks Furniture case) of the US Court is toward fee-shifting is more liberal and subjective.

Although there is another angle to this judgment that now that the fee-shifting is to be considered subjectively, the patent holders may restrain themselves from bringing suits even for their legitimate claims since it is never sure that the courts will be in their favor. Each case will have different notion and different courts may decide the same case differently, giving different justification for their subjective interpretation of the case. Therefore, these decisions of the US Supreme Court, on one hand will restrict frivolous patent lawsuits; on the other hand, it may encourage ‘patent trolls’ to strike more settlements and licensing than ever.

Why Protecting Patents in India is Giving Hard Time to Drug Patent Holders

Introduction

A lot has been discussed on the Novartis ruling indicating much higher standards of patentability under Indian law under section 3d. The ruling decided that any new form of known compound (in medicine) would be patentable only if there is enhanced ‘therapeutic efficacy’ over the known compound. Post Novartis ruling, a couple of patent revocation decisions at Intellectual Property Appellate Board (IPAB) ruled on section 3d giving precedent of Novartis. In addition, these decisions also seem to be setting higher standards of non-obviousness as compared to countries such as United States.

Case I: Fresenius Kabi Oncology Limited v. Glaxo Group Limited, decided in July 2013

a)     Case Facts:

Fresenius Kabi filed a revocation petition against Glaxo’s patent IN221171 (referred to us ‘171 hereinafter) claiming di-tosylate salts of Lapatinib on grounds of obviousness, section 3d and section 8. Fresenius alleged that the ‘171 patent was obvious to a person skilled in the art with reasonable expectation of success in view of the combined teachings of  D1  read along with D2 to D4.  D1 was a basic product patent of Glaxo (IN221017) disclosing Lapatinib free base and its various salts. Amongst salts, hydrochloride (HCl) salts were the ones selected and exemplified, however D1 also disclosed ditosylate salts as one example. Furthermore, background section of D1 discussed problems of hygroscopicity and instabity of HCl salts.  D2 was a prior patent disclosing ditosylate salts of different compounds disclosing the problems solved by the ditosylate salts such as better moisture sorption and better stability. D3 and D4 were general prior art literature articles disclosing pharmaceutical salts and selection of salts for basic drugs. Fresenius also alleged that the ditosylate salts of the said patent are new forms of known HCl salts of Lapatinib showing no enhancement in therapeutic efficacy and hence not patentable under section 3d as well. b)     Decision:  i. On Obviousness: IPAB, first of all, reinforced that under Indian law, it is the “person skilled in the art” (referred to as Ms. P. SITA) who would decide obviousness of the invention, rather than person having ordinary skill in the art as in United States and other geographies. It was held that Ms. P.SITA was not a dumb person who was ignorant of happenings in her field of art, but had skill to perform experiments with the knowledge of state of the art. It would be obvious for Ms. SITA to solve the problem of hygroscopicity and instability by combined teachings of D1 to D4. She already knew the problems being faced with HCl salts and the said prior art would give her motivation to prepare the ditosylate salts to arrive at the invention of the ‘171 patent with reasonable expectation of success. ii. On Section 3d: Citing precedent of Novartis ruling, it was held that the salts were shown not to have enhanced ‘therapeutic efficacy’. Better stability, better moisture sorption properties and other physicochemical properties exhibited by di-tosylate salts were rejected as proof of better ‘therapeutic efficacy’ over known HCl salts. Note: Fresenius also filed another patent revocation application against the basic product patent IN221017 claiming Lapatinib, which was dismissed by IPAB. Case II: Ajanta Pharma Limited v. Allergan Inc., Allergan India Private Limited and The Controller of Patents and Designs, decided in August 2013  a) Case Facts: Two Revocation Petitions were filed by Ajanta Pharma against Allegan’s two patents, one claiming fixed dose combination of Timolol and Bimatoprost (IN212695, referred to as IN‘695 hereinafter) marketed as Ganfort® and the other claiming fixed dose combination of Brimonidine and Timolol (IN219504, referred to as IN‘504 hereinafter) marketed as Combigan®. Both drug combinations are for treatment of ocular hypertension. Both patents were revoked by IPAB on ground of obviousness and section 8.

b)Decision:

i.On obviousness:

· IN‘695 Patent:

IPAB held that it was obvious for Ms SITA to arrive at the fixed dose combination of Timolo and Bimatoprost for the treatment of ocular hypertension in view of the combined teachings of known serial (five minute gap) administration of these two drugs further in view of Diestelhorst M. et al disclosing fixed dose combination of Latanoprost and TImolol for treatment of glaucoma, and two other prior art documents teaching better efficacy and potency of Bimatoprost over Latanoprost. Latanoprost was a predecessor of Bimatoprost, both belonging to the same class of Prostaglandin Analogs. The fixed dose combination of Latanoprost and TImolol was known to reduce side effects and increase potency to treat glaucoma as compared to individual drugs. IPAB rejected Allergan’s contentions that both drugs were structurally different or acted on different receptors. IPAB further rejected Allergan’s contentions of achieving unexpected effects of reduced side-effects and increased potency. Secondary considerations were not considered relevant in determining obviousness. IPAB held that Ms. P. SITA would find the drugs closely related and be motivated by teachings of Diestelhorst M. et al to produce fixed dose combination of Timolol and Bimatoprost with reasonable expectation of reduced side-effects and increased potency. She would know the trend going from monotherapy to adjunct therapy to fixed dose combination in order to optimize the convenience and the patient compliance. ·IN ‘504 Patent IPAB held that it was obvious for Ms. P.SITA to arrive at the fixed dose combination of Brimonidine and Timolol in view of the combined teachings of known topical administration of Brimonidine in combination with Timolol spaced 5 minutes further in view of Desantis disclosing fixed dose combination of Timolol and alpha 2 agonists. It was held that both Timolol and Brimonidine were commercially available. It was known that serial administration of Brimonidine and Timolol reduced intraocular pressure better than TImolol and Brimonidine alone. It was held that DeSantis expressly provided motivation for fixed combination to increase patience compliance.  It was held that when viewed under a proper standard, the evidence establishes a motivation to combine since it was common at that time to provide Brimonidine and Timolol sequentially and DeSantis taught fixed combination. IPAB also cited the US Court of Appeals judgement in respect of the US equivalent patent in Allergan Inc vs. Sandoz wherein the US equivalent patent was held invalid as obvious. Key take-aways:

a)Prepare to clear a higher bar: Ms. P Sita has more than ordinary skill

Obviousness standards in India are higher as compared to countries such as US, in such a manner that the skilled person in US is a “person having ordinary skill in the art”, called as PHOSITA whereas in India she is a “person skilled in the art” called as Ms. P.SITA. The level of skill of Ms. SITA looks to be higher than PHOSITA. IPAB, in above cases, cited Roche v Cipla wherein the judge highlighted in context of obviousness that Ms. P.SITA is a not a dumb person who is ignorant of happenings in her field of art, but has skill to perform experiments with the knowledge of state of the art.  Glaxo (the respondent in the above first case) cited various foreign decisions to show how obviousness is decided, who is the person Skilled in the Art, what is the Common General Knowledge and so on, however, IPAB citing Roche v. Cipla highlighted that observations made in foreign judgements would not be guiding factors. May be that is a reason that the US counterpart of the IN‘171 patent is a granted and unopposed patent whereas its Indian equivalent patent is held to be obvious and revoked. Not only US, even the corresponding EP granted patent passed EPO’s obviousness standards. Again for the combination therapy patents in India, as seen in the above Ajanta v. Allergan IPAB decision, standards of obviousness seem to be stricter. Both the patents of Allergan covering ophthalmic compositions were revoked. Ganfront®, for example, in US and EP is protected as EP and US patents, but here in India the patent is revoked. For combination therapy of A and B, if serial administration of A and B is known to alleviate the condition better than monotherapy and a fixed dose combination of A or B with C is known for alleviating the same condition, it seems that it will be difficult to pass the obviousness challenge in India, owing to Ms. P. SITA who would be knowing the happenings in her field and would know the trend going from monotherapy to adjunct therapy to fixed dose combination in order to optimize the convenience and the patient compliance. Furthermore, it seems that secondary considerations in India have not been considered relevant in India in determining non-obviousness. Unexpected effects are generally accepted in US as a means to rebut obviousness rejection. Thus, person skilled in the art in India is considered to be having more skill, more creative imagination as compared to the person having ordinary skill in the art in other important geographies such as US, and hence clearing obviousness challenge is tougher. For patent holders around the globe, to clear these higher standards of obviousness is becoming problematic. b)3d after Novartis: Physico-chemical properties are not enough This is clear that after Novartis case, salts (or other new forms) of known compounds would always be hit by section 3d unless enhancement of therapeutic efficacy is not proven. Physico-chemical properties would not be considered to impart therapeutic efficacy. The “therapeutic efficacy” test as laid down by Supreme Court (SC) in Novartis will be cited as precedent in all such cases. Again, patent holders around the globe would have hard time pursuing their salts (or other new forms) patent applications in India unless enhancement in therapeutic efficacy is proven. Considering that the pharmacophore remains the same in developing these new forms, proving enhancement in therapeutic efficacy would be very difficult. The enhancement in physico-chemical properties, which impart inventive step over the known compounds, would not generally be able to comply with “enhancement in efficacy” clause in section 3d till Novartis precedent prevails. Even though SC clearly laid down that physico-chemical properties such as increased stability, absorption, lower hygroscopicity etc. could not be said to enhanced therapeutic efficacy, regarding bioavailability, SC pointed that increased bioavailability may or may not lead to enhanced therapeutic properties and would be dependent on case to case basis. But again, proving enhanced bioavailability leading to enhanced therapeutic efficacy would be difficult. No matter how enhanced bioavailablity has helped the drug to perform better, the test relied by India is to prove therapeutic efficacy enhancement over the known compound.

The law of the land

The Indian Patent Office has been receiving criticism from the US and other developed countries for following such stricter standards of patentability in refusing applications and revoking patents. The intention behind section 3(d) and setting higher standards of obviousness is to prevent evergreening and frivolous pharmaceutical patents in India, so that the public access to medicines is ensured. Such provisions are necessary for protecting public interest and ensuring public access to medicines in developing countries like India. However, steps should be taken to ensure that genuine innovative inventions should not be rejected so that the right balance between patent protection and public access is maintained to further research and development of newer medicines.

About the Author: Meenakshi Khurana, Partner at Khurana and Khurana and can be reached at: meenakshi@khuranaandkhurana.com

Note: This Article was first published in a premier Managing IP magazine in March 2014 here

M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel , Section(64) patent act, 1970

Takshasheel Bouddha, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel &The Controllers of Patents & Designs. This judgment is with respect to Section 64 of Patent Act, 1970.

 Introduction:

The dispute was regarding of two patents i.e. Patent No.189027 and Patent No. 188787 granted to and held by respondent which the petitioner wanted to be revoked. Initially the petition for revocation was filed in honorable High Court of Gujarat from where it was transferred to IPAB. M/SAditi Manufacturing Company was petitioner while Mr. Bharat Bhogilalwas the respondent and both the parties were engage in the same set of business.

Both thepatents owned by respondent were on the same subject matter relating to the laser technology. Patent No.189027 was granted for a process of manufacturing engraved design articles on metals or non-metals using Lasers and Patent No. 188787 was granted for an improved laser marking and engraving machine.

 Petitioner‘s Argument

The petitioner M/S Aditi Manufacturing Company claimed that inventions are related to laser technology and engraving machine is not novel and it was already in public domain. The inventions also lack inventive step as per the requirement of Section 2(j)(a). A lot of prior arts were present disclosing identical product and process and therefore requirement of sections 3(k), 3(f) and 10(4) of ‘The Patent Act, 1970 were not met.

The revocation in both cases was sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of patent.

The specification was notably alike to US Patent No. ‘789 dated 26/03/1985 for “Reliable low cost light weight CS pumped Nd:Yag laser with option at Q-switching”. The claims were analogous to US Patent No. 4467172 and Japanese Patent No. 141679.

The petitioner also relied on the publication by Excel Control Laser Inc. in 1992 which described both the machine and process

The counsel for the applicant argued that the word “improved” in the patent claimed is vagueand is not clear. It is ambiguous in nature and therefore more clarity should be there.

The petitioner further argued that it is just a collection of known integers.

They further contended that patent has been obtained by suppression of information and there is no inventive step.

The petitioner counsel relied on the proposition of law laid down regarding revocation in  Air Master Equipments India (P) Ltd. v/s. Mr. Ramesh Nana Mahtre;M/s Bishwanath Prasad RadheyShyamv/sM/s Hindustan Metal Industriesand Monosanto Company v/s CoromandalIndag Product (P) Ltd.

 Expert Witnesses:

IPAB relied upon the expert opinion of Dr. D.D. Bhawalkar who had obtained the degree of PhD in ‘Laser technology’ from the University of Southampton, U.K. He had an opinion that there is nothing new described in the patents. He has written to M/s Legasis Partners that the laser marker is identical to US Patent No. 178. He has also stated that Galvos is in the market for a long time.

IPAB also consider the opinion of Mr. Utpal Nandi, another expert and a qualified Engineer from the Raja Ramanna Center for Advanced Technology for about 30 years. In his opinion, the patentee has not disclosed the appropriate facts related to prior art in Patent Office. Furthermore laser marker which was developed from components available in the market in 1995 at the Raja Ramanna Center. In his view there is no novelty or innovativeness in the said invention and if the patentee claims that the machine is improved one, he should show where the improvement lies.

 Respondent’s Arguments

The patentee rebutted relating to the cause of action. He also vehemently opposed the presence of technology in public domain. He merely denied all the prior inventions stating that all are different from his invention and are not known components.He further argued that if laser beam is not focused properly, the object cannot be marked and that is the most important and basic step of their basic process that is patented.  They also contended that they are unaware of Excel Control Laser publication.

According to the respondent, the applicants being non-technical did not understand the technical aspect of the invention and further that it is not a combination of known-integers or rearrangements.

Decision of IPAB:

Objections raised by the applicant were sustained by IPAB and the patents were revoked on the grounds that the invention was already known and there is neither any novelty nor any inventive step.

3D Trade Marks

In recent years, trade mark registries and courts have grappled with applications for silhouettes, shapes, scents, textures, short cartoons, single colors, body movement’s etc as trademarks. This invasion of the unconventional is due to the abstract nature of the legal definition of a trademark. On one hand the trade mark law has embraced an open- ended definition that emphasis the functional, rather than the ontological status of a sign. Any sign which does the communicative work of a trade mark, distinguishing goods or services on the basis of trade origin, can be registered as one. On the other hand, the trade mark registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trade mark that is visual and consists of words, devices or a combination of the two.

While such new types of marks raise interesting conceptual questions, they are of a more immediate and pragmatic concern to an Indian audience. It has been widely reported that the Indian trade mark registry recently registered a sound mark for Yahoo, followed by another for Allianz Aktiengesellschaft.

The Indian Trade Mark Registry in its revised Manual for Trade Mark Practice and Procedure. Several sections of the manual have started considering new types of marks specifically referring to non conventional subject matter, in contrast to the Trade and Merchandise Marks Act of 1958. Experience across jurisdictions suggests that the tribes of signs prepared to take advantage of this hospitality can be divided on the basis of sensory perception. These separate into visible signs:

1. 3D marks

2. Colors

3. Holograms

4. Slogans

and non- visible signs:

1. Sounds Musical and Non- Musical

2. Tastes

3. Textures

The Manual acts like a guide to the Examiners who apply the law while ensuring transparency for the users of the registration system.

At present the demand for Non- Conventional marks is relatively modest in India. Yet interest in such marks is gathering pace and this promises to be a future growth area, as producers and advertisers strive to stand out from the crowd through innovative marketing techniques. For example triangular shape of Toblerone Chocolate which has acquired trade mark significance over time. This open ended approach to subject matter is also evident in the Act of 1999. A trade mark is defined in section 2(1)(zb) as follows:

“ trade mark’ means a mark capable of  being represented graphically  and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”

 

Graphical Representation and Procedural Requirements:

The first set of challenges arises when an application is made to register unconventional subject matter. It becomes impossible to represent a sound or scent on a paper. The draft manual therefore devotes several pages to the graphical representation for color, scent, hologram and shape marks. it specifies that the graphical representation should be independently sufficient to identify the applicants mark; the representation should stand in place of the mark; and it should enable those inspecting the register to understand what the mark is. In doing so, it expressly maps on to UK registration practice and adopts the Sieckmann criteria. Ralf Sieckmann applied to the German trade mark registry to register a scent mark for various services. He attempted to represent the mark by:

(i) Indicating the name of the Chemical Substance. Methyl Cinnamate

(ii) The Structural Formula for that substance (C6H5-CH=CHOOCH3)

(iii) Indicating laboratories where samples may be obtained

(iv) Submitting an Odour Sample in a container

(v) Describing the Scent in words as “Balsamically fruity with a slight hint of cinnamon” was easily accessible and intelligible, it was not clear, precise or objective. On the other hand, the chemical formula was objective and a lay man won’t have understood the same. On a closer scrutiny, the Sieckmann criteria seem to have been developed with traditional visual marks in mind, and in satisfying some criteria an applicant may lose out on others.

In Libertal case, where the court confronted an application for the pure color orange for telecommunications related goods and services, it decided that merely reproducing the color on the sheet of paper was not sufficient and the written description might be imprecise.  However, UK Registry has accepted these color codes along with the written description of the color as adequate graphical representation. By contrast the draft adopts a curiously worded and ambiguous approach for representing single colors. It acknowledges UK position in permitting color codes, the states:

“the law or practice in India does not provide for such interpretation”

It goes on to refer to a case where the applicant used extremely technical terminology to explain a color and thereby failed the graphical representation requirement, as the basis of Indian Law, without specifying what will satisfy graphical representation criteria for color marks.”

 

Finally, there are two concluding points:

1. Flagging up of non conventional marks on the application form, so that special rules can be applied. The Trade Mark Rules and Manual are very clear that in certain cases, the application form must indicate the manner in which the mark is non conventional. A drawing of a 3D mark should not be treated as simple device mark at the time of registration, since this allows the applicant to escape the stricter scrutiny applicable to shape marks.

2. Trade Mark Examiners are entitled to ask for further and better particulars, including a written description of the trade mark being applied for. Under Rule 29(3)(ii) “Where, however, the registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the 3D mark, he may call upon the applicant t furnish… a description by words of the mark”. While the written description requirement is not compulsory, under Rule 25(12) for suspected non conventional marks this should be liberally used to request additional information so the sign being applied for can be defined appropriately. The aim of this section of the article has been to highlight the importance of procedure when it comes to non conventional marks.

 

3D Marks:

When it comes to Shapes, from a comparative perspective two main clusters of issues can be observed. The first cluster concerns establishing distinctiveness for shapes, while the second concerns functionality based objections to the registration of certain types of shapes. Beginning with distinctiveness, the Indian Registry adopted the EU’s position that the same distinctiveness criteria – as required by section 9(1)- should apply for all types of trademarks, including shapes. Here establishing acquired distinctiveness for shape or 3D marks, under the proviso to section 9(1), is relatively straightforward. The Manual adopts the Windsurfing factors to help structure the evidence required: the applicants market share under that market, the intensity and geographically widespread usage etc. however, one of the fundamental requirements is that the shape must have been used as a trade mark. It is not sufficient to claim a shape mark based on evidence of general advertising containing pictures of the product shape and consumer recognition of the associated mark. The evidence must specifically show that the relevant public trusts the shape to indicate commercial origin in the same way that they would trust a mark.

Manual echoes the Henkel decision. As a practical matter, it is difficult for shape marks to establish inherent distinctiveness. According to ECJ, such distinctiveness is still attainable for a sign “which departs significantly from the norm or customs of the sector thereby fulfils its essential function of indicating origin”. The Manual also adopts this position. The trade mark registry no doubt will be approached by applicants with novel, well designed or highly stylized products claiming that they also function as trade marks. However, a shape which is simply different or varies from that of competing products is not inevitably a trade mark. The requirement that a shape departs significantly from the norm and thereby fulfils its origin indicating function needs to be taken seriously.

In the EU, unsuccessful arguments to lower this inherent distinctiveness threshold have included suggestions that:

a) the 3D sign is simply a variant of a common shape

b) the distinctiveness threshold is crossed if a 3D sign is simply novel

c) if its components such as geometric shape and color, albeit individually commonplace, combine in non- obvious ways

d) there are sufficient difference between the features of the sign and that of products, which is not attributed to a technical reason

e) the relative public are specialist and sensitive to minor differences

f) where 3D mark is for everyday consumer products

Thus the formula for inherent distinctiveness for shapes mandate that it;

a) departs significantly from the norm and thereby indicates origin

b) it is applied to goods for which consumers are unusually sensitive to this difference.

 

Thus there is a palpable sense that the Indian trade mark law has finally caught up with the modern marketing techniques. Registries and court around the world are adopting a cautious approach to such subject matter. The Manual picks up on several of these issues and provides a robust structure within which to allow the gradual evolution of principles in this area. Non conventional marks are remarkably unsteady badges origin and rarely used without additional word or figurative marks to back them up. No manufacturer of mineral water is likely to do away with the company name or brand and rely solely on the shape of the bottle when selling the product. Such marks should therefore be given a cautious reception.

 

About the Author: Ms Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at: sheetal@khuranaandkhurana.com

INDIA SIGNS MARRAKESH TREATY FOR VISUALLY IMPAIRED

India has signed ‘Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled’ at a ceremony organised by the World Intellectual Property Organisation (WIPO) at Geneva during 28th April to 2nd May 2014 through Smt. Veena Ish, Joint Secretary in the Ministry of Human Resource Development.

Pertinently the Marrakesh treaty aims at creating a set of mandatory limitations and exceptions for the benefit of the blind, visually impaired and otherwise print disabled (VIPs). It requires Contracting Parties to introduce a standard set of limitations and exceptions to copyright rules in order to permit reproduction, distribution and making available of published works in formats designed to be accessible to VIPs, and to permit exchange of these works across borders by organizations that serve those beneficiaries. Further the Treaty also makes it clear that beneficiary persons are those affected by a range of disabilities that interfere with the effective reading of printed material. The broad definition includes persons who are blind, visually impaired, or reading disabled or persons with a physical disability that prevents them from holding and manipulating a book.

The treaty is expected to come into effect 3 months after 20 parties have ratified the treaty. However according to the sources, till date no country has implemented it.  In her statement, Joint Secretary, MHRD (India), Smt Veena Ish, highlighted that India’s Copyright Amendments which came into effect on June, 2012, are already in complete harmony with the Marrakesh Treaty, thus putting India in a good position to implement the treaty. She also stated that India will be ratifying this treaty ‘very soon’. She further added that the task does not end there but we need to have an appropriate mechanism in order to implement the provisions of the treaty in its true spirit with cooperation of all the member states and the International Bureau of WIPO.

G.R. Raghavender, registrar of copyrights and a director in the Indian Copyright office, said that organisations entitled to produce copies in accessible formats have to work for non-profit purposes, and can only charge expenses for the copy. Organisations that want to produce copies in accessible format on a profitable basis have to apply to the Copyright Board and can be granted a compulsory licence. He further stated that said India’s ratification of the treaty is expected by the end of May 2014.

The release said that once India ratifies it, the treaty will facilitate importation of accessible format copies from the member states by the authorised entities in the country, such as educational institutions, libraries and institutions working for the benefit of visually impaired persons.

This treaty, which was first adopted on 23 June 2013, was also signed by the European Union, France and Greece, bringing the total number of countries that have signed to 64, out of WIPO’s 187 members.

 

Sources: http://www.ip-watch.org/2014/04/30/four-more-wipo-members-sign-marrakesh-treaty-for-visually-impaired/

http://www.business-standard.com/article/news-ians/india-signs-treaty-on-published-works-for-visually-impaired-114050100453_1.html