Monthly Archives: September 2017

Brunei’s Intellectual Property Office Accession to Madrid Protocol

The Government of Brunei Darussalam on October 6, 2016 [1] deposited its instrument of accession to the Madrid Protocol for the International Registration of Marks in Geneva with the Director General of WIPO Francis Gurry [5]. The accession makes Brunei Darussalam the 98th member to the Madrid System. The aforementioned protocol came into force On January 6 2017 [1].

The local businesses and brand owners of Brunei Darussalam have already started using the Madrid System in order to ensure protection of their marks in 114 territories of the 98 member countries of the Madrid system [2]. This is achieved by filing a single international application in a single language and paying one set of fees in a single currency.

With the introduction of Madrid system in Brunei Darussalam, foreign brand and trademark owners can now easily seek protection for their marks & brands when they introduce their brands, products or services in Brunei Darussalam [2]. As WIPO celebrated 125 years of the Madrid System, the accession of Brunei Darussalam further displayed the System’s emergence as a key component for protecting marks internationally.

From its inception, the Madrid system has continued to develop according to the needs and requirements of the applicants thereby providing cost-effective and simple features for filing trademark applications across multiple territories. Today, the Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Applicants can modify, renew or expand their global trademark portfolio through one centralized system with its evolving E-Services options [4].

Notably, Brunei Intellectual Property Office, in addition to the Madrid System, has already implemented two other WIPO-administered international registration systems namely, the Patent Cooperation Treaty (PCT) and the Hague System for the International Registration of Industrial Designs in 2012 and 2013 respectively [3].

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 

References

[1] http://bruipo.gov.bn/Lists/News/NewDispForm.aspx?ID=1

[2] http://www.wipo.int/madrid/en/news/2016/news_0020.html

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

[4] http://www.wipo.int/madrid/en/

[5] http://www.wipo.int/about-wipo/en/dgo/

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Intellectual Property of Singapore Launches ‘Patents Open Dossier’

In a bid to continue the growth of Intellectual Property regime in Singapore, the Intellectual Property of Singapore (IPOS) has launched the Patents Open Dossier (POD) on July 24, 2017 [1] [3]. The recently launched POD is an online database, which provides a single point of access for individuals/innovators to access published patent documents.

This POD service have been added to and is available on IP2SG, which is the online e-service portal [2] of IPOS, which enables the public with simple access to a collection of selected published patent documents under Section 27 of the Patent Act and which are not restricted for inspection pursuant to Patents Rule 93(4) and 93(5). These documents comprises of Inventor search reports, the office actions and responses for published patent applications lodged on or after 14 Feb 2014 under the positive grant system, among many others [3].

After the launch of POD, individuals are now able to analyze, view, monitor and manage the patent profiles, which are of interest to them. There are several other advantages of this POD, which are:

  • Reduced time and cost for an individual to extract and analyze patent information of their interest;
  • Enabled work sharing between different IP offices via a single platform for search and examination results; and
  • Enhanced transparency of patent system through easy and increased accessibility of file prosecution histories.

Also, as an administrative concession, the individuals will no longer be needed to furnish any published search and examination results established by IPOS under the positive grant system when they file a Patent Prosecution Highway (PPH) request in the Office of Second Filing. The effective date for IPOS to be a participating Office under the initiative will be announced on a later date.

As a central agency in providing its Intellectual Property consultations and networking for the current & future growth of Singapore IP regime, the IPOS remains at the forefront of the latest IP developments happening globally. With the launch of POD, IPOS joins the ranks of the IP5 Offices, namely, the US Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO) and the State Intellectual Property Office (SIPO) that have developed a Global Dossier Initiative with the same purpose [1].

Below is the list of documents that are accessible and available for download on the POD platform [4]:

  1. Search Report
  2. Examination Report
  3. Written Opinion
  4. Search and Examination Report
  5. Written Submission in response to Written Opinion
  6. Examination Review Report
  7. Amendment and Correction of Specification
  8. Amendment and Correction of Abstract
  9. Patents Form and Common Forms (With the exception of Form CM10 and

Form CM12 and their related correspondence)

  1. Notification relating to the request made on Patents Form and Common Forms

(With the exception of Form CM10 and Form CM12 and their related correspondence)

Documents not available on Patents Open Dossier [4] are as below:

  1. Cover Letter
  2. Supporting Documents and Statements
  3. Statutory Declarations or Affidavit
  4. Certificate of grant of patent 

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] https://www.ipos.gov.sg/media-events/happenings/ViewDetails/launch-of-patents-open-dossier/

[2] https://www.ip2.sg/RPS/WP/CM/SearchSimpleP.aspx?SearchCategory=PT

[3] https://in.linkedin.com/company/ipos-international

[4] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/circulars/(2017)-circular-no-5—launch-of-open-dossier-and-patents-formalities-manual.pdf?sfvrsn=0

Energy and Industry Department at the Prime Minister’s Office (EIDPMO) Launches Trademark Search Kiosk

The Brunei Intellectual Property Office (BruIPO) is an office under EIDPMO and is responsible for the administration and registration of Intellectual Property (IP) including Patents, Trade Marks, Industrial Designs and Plant Varieties Protection (PVP) [2].  In its efforts to enhance its services to the public, BruIPO has recently introduced a trademark ‘Search Kiosk’ at the Business Support Centre (BSC) at the Design & Technology Building (D&T) in Anggerek Desa. This service of search Kiosk enables general public to allow searching for trade mark via the World Intellectual Property Organization (WIPO) Global Brand Database (GBD) and the ASEAN TMView database. These services are freely accessible.

Along with Singapore and the Philippines, Brunei Darussalam currently maintains one of the shortest turnaround times for trademark registration in the region at less than six months [1] and has also been looking at a further growth of its trade mark services by introducing an online portal for e-filing of trademarks in the coming time and has already implemented the Madrid Protocol for the International filing for Registration of Marks [3].

BruIPO along with Search Kiosk also offers other Intellectual Property related services for Subject Matter Experts through their Technology and Innovation Support Center (TISC) that allows inventors & innovators to easily access local, high quality technology information and related services, with the target of helping these innovators to exploit their innovative potential and to create, protect, and manage their intellectual property rights [2].  Few of the services BruIPO provides through TISC comprises of assistance in searching and retrieving technology information; training in database search and basic information on industrial property laws; management and strategy as well as advice on technology commercialization and marketing.

It should be noted that detailed information on BruIPO’s services especially ‘Search Kiosk’ is available at their helpdesk at the Business Support Centre whilst downloadable information such as forms and fee schedule can be obtained from BruIPO’s webpage on the EIDPMO’s website at www.ei.gov.bn.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.ei.gov.bn/Lists/Industry%20News/NewDispForm.aspx?ID=182

[2] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=73

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

Cambodia, China Sign MoU on Cooperation in the Field of Trademark and Branding

In a further step towards the development and strengthening of Intellectual Property regime of both Cambodia and China, a Memorandum of Understanding (MoU) on Branding Cooperation between the Ministry of Commerce of the Kingdom of Cambodia and National Administration of Industry and Commerce of the People’s Republic of China was signed on September 06, 2017 [1][3]. This MoU aims at providing better facilities for trademark and brand registration in both countries.

The MoU signing ceremony took place in the city of Phnom Penh which is the capital of the Kingdom of Cambodia and was held under the presidency of HE Ouk Prachea, Secretary of State, Ministry of Commerce, High Representative of HE Peng Sosachak, Minister of Commerce, and HE Ma Zhengqi, Deputy Minister of National Administration of Industry and Trade of the People’s Republic of China. This MoU will further serve the purpose of strengthening and broadening cooperation between China and Cambodia on an equal and mutually beneficial basis in the Markets, and to also promote the growth of more brands in the respective nations. Additionally, the memorandum will protect consumers and producers’ interests.

This MoU is in continuation with the previous Memorandums [2] which have been signed between Cambodia and China for bilateral cooperation in Intellectual properties. In the press release dated September 6, 2017, on the online portal of Cambodia it is stated that, through this Memorandum both China and Cambodia will share the related documents of intellectual property and also include mutual study visits to strengthen intellectual property regime and trade protectionism. Further under this MoU, China through their experts will be helping in the training of human resources to Cambodia on brand protection and brand control. In addition, China will also in the promotion of Cambodian products exhibitions, as well as building more of Cambodia’s brand in the market.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana and  Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

Sources

[1] http://cambodiaip.gov.kh/NewsDetail.aspx?id=110051

[2]http://www.cambodiaip.gov.kh/DocResources/5e50267e-486b-4114-86ef-022e96df991d_c786a043-b88d-4f64-9429-60a330efdc5f-en.pdf

[3] http://www.akp.gov.kh/?p=109309

WORK PLAN FOR BILATERAL COOPERATION IN 2017-2019

WORK PLAN FOR BILATERAL COOPERATION IN 2017-2019

BETWEEN

THE NATIONAL COMMITTEE FOR INTELLECTUAL PROPERTY

RIGHTS (NCIPR)/MINISTRY OF COMMERCE (MOC)

OF THE KINGDOM OF CAMBODIA

AND

THE STATE INTELLECTUAL PROPERTY OFFICE OF THE PEOPLES REPUBLIC OF CHINA

On August 17, 2019 [1] the Intellectual Property Office of the Kingdom of Cambodia, on its online portal, released Work Plan for Bilateral Cooperation in 2017-2019 between the National Committee for Intellectual Property Rights (NCIPR)/Ministry of Commerce (MOC) of the kingdom of Cambodia and the State Intellectual Property Office (SIPO) of the people’s republic of China. The Signing Ceremony on the Work Plan for Intellectual Property Cooperation for the year 2017-2019 between Cambodia and the PRC was held on March 25, 2016 [2][3][4].

Based on the Memorandum of Understanding (MoU) on the Cooperation which was signed on March 23, 2011[5] and also based on the Work Plan for Bilateral Cooperation which was signed June 27, 2014[6] between the National Committee for Intellectual Property Rights (NCIPR)/Ministry of Commerce (MOC) of the kingdom of Cambodia and the State Intellectual Property Office (SIPO) of the people’s republic of China, both parties made a consensus on the below mentioned work plan which will strengthen the bilateral cooperation between both parties in 2017-2019 as far as the Intellectual Property of both the nations are concerned. This work plan will remain valid until December 31, 2019 [1] and may be modified in writing with mutual consent of the parties. The work plan, as stated on the website [1] is as follows:

  1. Objective

The main objective is to recognize the importance of promoting Intellectual Property cooperation between both nations i.e. the Kingdom of Cambodia & the People’s Republic of China and its effect on nation’s economy, trade, science & technology. For this, both parties have made a consensus and expressed their strong desire to further strengthen their friendship and cooperation.

  1. High-Level Dialogues

Both parties agreed that high-level dialogues between the two countries keep each party well-informed of the latest trends & developments in the other country, and also provides an opportunity for the parties to exchange their views on future-IP cooperation and IP issues or.

  1. Training

SIPO will invite 5 officials from NCIPR/MOC, once per every year from 2017-2019, to attend intellectual property training courses which will be held in China and last for one week. SIPO will cover all international travel costs (round trip economy-class flight tickets) and local expenses in China (including meals and lodging) incurred by the invited NCIPR/MOC officials.

  1. Exchange of Documentation and Information

Both the nations have agreed on the continuation of exchange of patent related documents and information through the authorized contact persons for that purpose.

  1. Information Exchange & IT systems

Both the parties have reached a consensus on pursuing cooperation of the Cloud Patent Examination System (CPES) based on the 16 accounts provided by SIPO to NCIPR/MOC.

  1. Exchange of Information

Both of the parties agreed on enhancing the exchange of experience on genetic resources, traditional knowledge and folklore, national IP strategy, information technology and dissemination of IP information.

  1. Expenses

All the actions contemplated in the work plan will be subject to the availability and priorities of the funds with each party.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References :

[1] http://www.cambodiaip.gov.kh/NewsDetail.aspx?id=110050

[2] https://www.facebook.com/moc.gov.kh/posts/1160609867285223

[3] http://www.akp.gov.kh/?p=78467

[4] http://www.aseanthai.net/english/ewt_news.php?nid=1098&filename=index

[5]http://cambodiaip.gov.kh/TemplateTwo.aspx?parentId=2&menuid=175&childMasterMenuId=31&lang=en

[6]https://www.facebook.com/moc.gov.kh/photos/a.816890791657134.1073742054.689434681069413/816891918323688/

GROUNDLESS THREAT OF PATENT INFRINGEMENT

Introduction

Infringement proceedings involve high costs of litigation in defending the same with the possibility that any temporary injunction granted in the due course thereof would lead to revenue loss, loss of employment and several other impediments to the business. Moreover, embroilment in infringement proceedings or the mere possibility thereof leads to disrepute of the business. Thus, keeping in mind the serious effects and consequences associated with infringement proceedings for which no person should unnecessarily be subjected to baseless threats of infringement, groundless threats of Infringement has been kept as a civil wrong or offence.

Groundless Threat of Infringement

Groundless threat, also connoted to as unjustified/wrongful threat is a threat whereby the owner or any person (depending on the statute) threatens another with legal proceedings without basing the threat on any reasonable basis. IP laws provide protection to the victims of unjustified threats, by preventing the person(s) making the threats from doing the same. Examples of such provisions in IP statutes include Section 60 of the Copyright Act, 1957, Section 142 of the Trademark Act, 1999 and Section 106 of the Indian Patents Act, 1970.

Relief under Patents Act, 1970: –

The Court has the power to grant relief in cases of groundless threat of patent infringement under Section 106 of the Indian Patents Act, 1970. The scope of this provision includes a threat given by any person (who is entitled to or interested in a patent or not)  to any other person by circulars or advertisements or by communication, oral or in writing with proceedings for infringement of a patent. It is important to note that a mere notification of the existence of a patent does not constitute a threat of proceeding within the meaning of this section. The person aggrieved thereby may bring the suit praying for the following reliefs:

  • a declaration to the effect that the threats are unjustifiable;
  • an injunction against the continuance of the threats; and
  • such damages, if any, as he has sustained thereby.

 

LG Electronics India Pvt. Ltd. v. Bharat Bhogilal Patel & Others[1]

 

In this case the plaintiff approached the Hon’ble Delhi High Court on the premise that complaint preferred by Defendant No. 1, Bharat Bhogilal Patel, against the Plaintiff before Defendant No.2, Customs Office, on the basis of which said Customs department is acting upon and interdicting the goods imported by the plaintiff without approaching the Court in accordance with Patents Act, 1970 amounts to groundless threats. The defendant claimed to have obtained a patent in respect of “Process of manufacturing engraved design articles on metals or non-metals”.

Upon receiving show cause notice from defendant no. 2 Customs department, the plaintiff requested for the documents pertaining to the impugned patent and on perusing the same, found that the claims of CS(OS) No.2982/2011 Page No.3 of 10 the impugned patent allegedly lacked novelty as well as any inventive step. Accordingly, plaintiff filed revocation petition before the Intellectual Property Appellate Board (IPAB) challenging validity of the impugned patent. The Customs department continued interdicting the consignments of the plaintiff despite having been informed of the pendency of revocation proceedings. Subsequently, the case came up for hearing and the Court passed interim order in favour of plaintiff, staying the operation of complaint of Defendant No. 2 the Customs office.

Clause 4 of IPR (Imported Goods) Enforcement Rules, 2007: –

“It is pertinent to mention that while the mandatory obligations under Articles 51 to 60 of the TRIPS dealing with border measures are restricted to Copyright and Trade Marks infringement only, the said Rules deal with Patents, Designs and Geographical Indications violations as well, in conformity with the practice prevailing in some other countries, notably EU countries. While it is not difficult for Customs officers to determine Copyright and Trade Marks infringements at the border based on available data/inputs, it may not be so in the case of the other three violations, unless the offences have already been established by a judicial pronouncement in India and the Customs is called upon or required to merely implement such order. In other words, extreme caution needs to be exercised at the time of determination of infringement of these three intellectual property rights”.

Order passed by the Court: –

The Court explained the role of Customs officer in view of clause 4 of IPR rules and under para 95 of the judgement, “I do not agree with the statement made in the written statement by the Defendant No.2 Custom department that unless the stay orders are passed in the Revocation petition, they can proceed with the complaint filed by the owner of patent despite of any merit or demerit in the Revocation proceedings”.

The Court further explained the aspects of groundless threat and stated that “the custom shall act on the notice of the court, therefore if any proprietor or the right holder issues a notice to the custom officials and the custom officials act upon the same by causing restricting the imports of consignments of any party without the determination (prima facie or otherwise) of the factum of infringement of patent by the appropriated designated authority which is civil court under the governing law, then such notice by the right holder to the third party which is customs and the actions thereof by the customs either in the form of notice to that party or otherwise calling upon the party to explain its stand which no such position exists in law are all unnecessary illegal threats to that party”.

Conclusion

From the above discussion, it is clear that complaint to Customs and show cause notice sent by Customs Authority without adjudication of quantum of infringement by Civil Court amounts to groundless threat of patent infringement in light of clause 4 of aforesaid IPR (Imported Goods) Enforcement Rules, 2007.

Authors: Avadhi Joshi and Pratik Das, Legal Interns, Khurana & Khurana, Advocates and IP Attorneys and can be reached at info@khuranaandkhurana.com

References :

[1] 2012 (51) PTC 513 (Del) available at https://indiankanoon.org/doc/48055807/