Monthly Archives: July 2018

Crash Course For Cracking Patent Agent Examination (PAE) 2018

IIPRD, along with Khurana & Khurana, Advocates and IP Attorneys (K&K) has decided to play a supportive role in supporting the prospective candidates for patent agents in their pursuit for success in the upcoming Indian Patent Examination to be held on October 28th, 2018 by preparing the candidates exhaustively and comprehensively with regard to every single topic and infusing them with confidence required to achieve their dreams.

Any person who is authorised by law to deal with patent applications in order to facilitate inventors, can be regarded as patent agent. A patent agent can also be engaged in prevention of patent infringement and protection of patents[1]. He/ She may also provide with patentability opinions and play a vital role in preparation and filing of documents related to patent applications. Supporting 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[2].

Last year, around 25000 applications were filed out which around 10000 patents were granted[3]. On carefully analysing the statement, if an application required 2 weeks for preparation for filing stage, with on an average 40 work weeks for a patent agent, this means that an agent can prepare around 20 applications a year. Further, as number of applications to be filed are bound to rise, there is a steady demand for patent agents.

However, the competition for the Examination is still 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 the candidates with a well experienced league of legends in the field of patent industry with decades of experience is just a 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 associates and leading sister Law Firm Khurana & Khurana, Advocates and IP Attorneys (K&K) to enable more & more candidates to transform themselves into patent agents with promising career benefits.

Contact details:

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

Click here to register.

References:

[1]https://www.iipta.com/who-is-a-patent-agent/

[2]https://www.investopedia.com/terms/p/patent-agent.asp

[3]https://patseer.com/2017/06/india-filing-trends-2016-2017/

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Significance of Universities in Filing Patent Application

Universities and Institutes are considered to be the most important foundation for growth of any country. It is the place where most of the basic research is carried out, giving way to inventions. As Intellectual Property Rights (IPR)act as a shield to such invention from being misused by third parties, and help in commercialization of these inventions, it is highly recommended that such inventions be protected under the IP domain in order to guard owner’s interests in order to infuse development in respective field of invention.

Often times, since students are the ones who carry out research that may lead to inventions, it is imperative for them to get these inventions protected in order to commercialize the mas well as thwart misuse of the same by third parties. Moreover, there are various reasons as to why Academic Institutes or Universities should consider filing a Patent Application for protection of inventions that have been carried out in their campus.

 IP Division in University

IP policy in universities is an important toolfor encouraging generation, protection, and commercialization of IP in universities and research institutes. The policy provides a structure and frameworkthat can be used to promote generation, protection and commercialization of IP in Research and Technology organizations. Typically, an IP policy mainly focuses on benefit sharing and ownership of IPRs, strategies for commercialization and management of privately sponsored research, collaborative research, conflict of interest as well as other issues.

 Existence of IP policies in institutes and universities is a strong indicator of their commitment in promoting generation, protection and commercial exploitation of IPRs.[1]

In 2001, due to growing importance of IP institutional policies, WIPO published a booklet entitled Guidelines for developing IP Policies in African Universities and Research Organizations. While the publication title suggests that the guidelines are aimed at African institutions, the content is universally applicable and, as a result, the guidelines have since been used in several developing countries. Recently, a second edition was compiled and is currently awaiting publication entitled Choices in Developing IP Policies in Universities and Research Organizations. It addresses ten issues that senior managers of universities and research organizations may wish to consider while developing institutional IP policies.

Some countries have prepared model IP policies that universities and research organizations may adapt, depending on their mission, research culture and agenda. For example, the Nigerian Office for Technology Appropriation (NOTAP) has prepared a model IP policy, which it has made available to universities and research institutions in Nigeria. This has resulted in speeding up the process of developing IP.

In other words, IP divisions in Universities and Institutions help spread the awareness of importance of IPR, especially for filing patent application for an invention. Such awareness and advantages of Patent protection gives an incentive to members of Universities for more inventions, leading to greater skills. Thus, University, in the end produces high quality manpower that the world is chasing for.

Licensing

Unlike industrial scientists and engineers who generally are hired to invent and assign rights in their inventions to their employer without any residual rights to additional compensation, university personnel are in a different position. The prime focus of universities is to educate and, in some instances, to conduct technical research.[2] However, in case of any invention during the conduct of technical research, Universities must not lose an opportunity to file a Patent application and take benefits from it thereon. This helps the universities in investing more on R&D and helping them in overall development.

 Academic-Industrial Linkages

There are many instances where Universities collaborate with industries for innovating in a specific domain, which gives a lot of exposure to its faculties and students and help them gain a position in these industries, leading to a lot of acknowledgement of the respective Universities. This, in turns, encourages the entire Academic ecosystem to do more research leading to useful invention, leading the country in becoming the hub of research and development.

One such occasion where innovation ecosystem was built was for Drug discovery, in which recently about 45 MoUs were exchanged between Pharmaceutical industries and central institutes such as IITs, IISCs, NIOERs, IISc-B, NIFT NITs, RGIPT, RGNIYD& SPAs. It is steps like these that have led India to enjoy the position of leadership in the world’s pharmaceutical market in Generic medicines.  Much of the credit also goes to policy initiative in terms of Patent Act, 1970 which allowed process patents, enabling in transforming India from medicine importing country to exporting country and Private and Public skill and entrepreneurship of Pharma Industry.[3]

Further, It is observed that India has been increasingly getting involved in research and development, so much so that, various Multinational Corporations across the world has shifted their R&D base in India. This is a significant reason as to why Indian Universities should file for Patent applications as all of the above facts give incentives for the Universities to innovate more useful products that helps grow the society as well as the economy.

Government Policies Supporting the Filing of Patent Applications

The Government of India amended the Patent Act by introducing the following policies that gives incentives to academic institutions to protect their inventions under Patent law.

  • The act has provided a concession to small entities and individual in fees for filing applications. Under the Act, an individual is supposed to pay Rs. 1600/- and Small entities shall pay 4000/-, however other Legal Entity are obligated to pay Rs. 8000/- .Thus, giving approximately 50% relaxation to an individual and small entities.
  • Scheme for facilitating Intellectual Property Protection (SIPP) running on pilot basis till 31st March 2020, facilitating 80 % rebates to start-ups for filing Patent applications. They can also avail the special facility of expedited examination of their patent applications.
  • The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, has signed an Institutional agreement with Anna University to establish India’s second Technology and Innovation Support Center (TISC) at the Centre for Intellectual Property Rights (CIPR), Anna University, Chennai, under the World Intellectual Property Organization’s (WIPO) TISC program.[4]

Such reduction in filing fees for individuals, small entities and start-ups will help students to file patent application without any inconvenience. The objective of the aforesaid policies is to stimulate a dynamic, vibrant and balanced Intellectual Property Rights (IPRs) system in India to foster creativity and innovation, thereby promoting entrepreneurship and enhancing social, economic and cultural development

 Present Scenario

The data as presented below in Fig.1 and Fig.2 shows that the Indian universities have become more and more aware about the importance of IP over the last decade. The number of Patents filed by the various Indian Institutes of Technology for instance has increased from 91 in 2008-09 to 400 in 2016-17. IITs continue to top the rank list by filling the maximum number of applications in a year for the protection of their inventions within India, following which, Amity University and Indian Institute of Science score 2nd and 3rd rank. It is to be noted that Indian Institute of Science has shown remarkable growth in number of filing Patent applications in 2016-2017 as compared to the year 2008-2009. Further, Amity University recorded about more than 23% growth in the year 2012-2013. Moreover, CIPR has filed more than 185 Patents, 29 Trademarks, 39 Copyrights, 25 Industrial Design and has also assisted in filing 12 International Patent Applications.

                univversity_patent_1

                University_Patent_2

The process of liberalization, privatization and globalization which started in 1991 has gained momentum in recent times. This, in addition to the fact that technology is increasingly penetrating in all aspects of Indian society, has resulted in greater awareness of IPR among all institutions of India. The foremost among them have been the universities and research institutes.

However, this positive trend of greater awareness of IPR and high growth in number of patents being filed by Indian Universities have been somewhat limited to just the top universities of India. If India is to become a knowledge-based developed economy and society in the coming decades, the trend of greater number of patent filings has to permeate to all the Universities of India and not just remain at the top. Innovation has to be in the forefront of this process. The universities need to implement all the above mentioned steps in order to gain recognition and acknowledgment in the field of research and development and innovation by protecting them through patent law. The need of the hour is to equip our Universities enough, so that large numbers of them are able to engage themselves in good quality and innovative research, resulting in socially relevant and commercially viable inventions. Along with this, the Universities also need to ensure they are able to realize the commercial benefits of their invention by using the IPR regime.

Thus only when the recent trend as seen in the top Indian universities is further developed and replicated in other universities, will India truly realizes its goal of becoming innovative and knowledge-based developed economy and society.

Author: Pratistha Sinha, Associate and Rishabh Nigam, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]http://www.wipo.int/edocs/pubdocs/en/intproperty/958/wipo_pub_958_3.pdf

[2]http://www.tms.org/pubs/journals/JOM/matters/matters-0301.html

[3]http://pib.nic.in/newsite/PrintRelease.aspx?relid=130224

[4]http://pib.nic.in/newsite/PrintRelease.aspx?relid=173318

 

Case summary of “Cabell v. Zorro Productions, Inc.”

BRIEF INSIGHT INTO THE DISPUTE:

Introduction:

This case is a result of copyright infringement of a musical based on the story of Zorro.The character of Zorro originally was developed by Johnst McCulley which was further adapted in stories. All of the stories are part of public domain. Cabell (hereinafter “the plaintiff) made a musical based on the story available in public domain and Zorro Productions (hereinafter “the defendant) is the assignee of the character Zorro. The Plaintiff produced a musical titled “Z – The Musical of Zorro” and got its scripts and audio with the U.S. Copyright for original, novel elements of his work but not the elements in the public domain as of 1996.

The Plaintiff met the Defendant for the production of the Musical but the agreement did not materialise and the defendant gave a legal threat to the Plaintiff not to publish their work without a license from them. Later, the Defendant licensed the use of the character Zorro to Allende in 2005 and separate musical in 2008.

Facts:

  • The Plaintiff filed an infringement suit claiming that the novel and the musical was infringing its musical and seeking a declaration that the Plaintiffs’ musical is not infringing the copyright of the Defendant.
  • The Defendant cross-moved an application claiming that the Plaintiff was infringing its copyright.

ARGUMENTS BEFORE THE COURT:

The arguments advanced by the Plaintiff are –

  • The Defendant had access to the script of the musical of Plaintiff due to their exchanges with respect to a licensing agreement in 1966 which did not materialize.
  • The Plaintiff contended that there was substantial similarity between both the works.
  • The Plaintiff further contended that three characters from its script were sufficiently developed and therefore, it should be granted protection.
  • The Plaintiff’s musical was based on public domain and therefore, does not infringe the copyright of the Defendant

 The arguments advanced by the Defendant are –

  • The Defendant contended that the Plaintiff’s musical is infringing its copyright.
  • The Defendant further contended that Statute of Limitations will be applicable because when both the parties met for the licensing agreement, the Defendant had informed the Plaintiff that its musical is infringing the copyright of the Defendant.

DECISION OF THE COURT:

The court thus decided;

  1. That the Plaintiff’s musical does not infringe the Defendant’s copyright over the character of Zorro.
  2. That the Defendant’s musical and novel does not infringe the Plaintiff’s musical and does not have similar theme and setting.

CONCLUSION:

The Court analyzed the plaintiff’s claims. It was not disputed that the Defendant had access to Plaintiff’s script as a licensor holds a supervisory authority and there was an agreement between the Plaintiff and the Defendant which did not materialize so the Court cannot rule out a possibility of the Defendant having an access to the script. The Court followed the extrinsic test to conclude if there is a substantial similarity between the two works. The extrinsic test focuses on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events”. The Court determined that the plot of the novel was focused on the character Zorro’s childhood whereas the Plaintiff’s musical is based on Zorro when he is an adult. The Court found differences in the settings, theme, pace, mood and tone of the two works.  The Court concluded the claim of the Plaintiff by adjudicating that the claim of Plaintiff that three characters from the musical were sufficiently developed in the novel cannot stand as there is no substantial similarity between the two and the treatment given to them is also dissimilar.

Adjudicating on the claim of the Defendant that the Plaintiff is infringing its copyright, the Court concluded that a reasonable person will not find substantial similarity between the two musicals. The Court disagreed with the contention that Statute of Limitations will be applicable in the present dispute as the Defendant has the right to file an infringement claim whenever the Plaintiff produces its musical. The Court rested the dispute by applying the doctrine that a party abandons claims by not raising them in opposition to a summary judgment motion and held that the Defendant had abandoned its claims of copyright infringement by not raising it in opposition to a summary judgment motion and passed a declaratory judgment claim in favour of the Plaintiff in this regard.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Power of Controller to Review Own Decisions: Scope of Section 77(1) (F) & (G)

It is a general rule that once pronounced by a Court a judgment becomes functus officio and it cannot be altered or changed. However, an exception to this rule lies in the equity principle of ‘writ of error’. Writ of error is a writ filed where an error in delivering a judgment can be rectified on the grounds that human failing should not cause impediment to justice. This writ lays the basis for the modern-day ‘Review Petitions’ filed in the courts whereby the same court and same judge are allowed to review and alter their own judgments under extraordinary or unusual circumstances. This article analyses the power of the Controller under section 77(1) (f) and (g) of The Patents Act, 1970 to review his own decisions.

Scope of Section 77:

Chapter XV of the Patents Act 1970 refers to the powers of a Controller. Section 77 specifically bestows certain powers of the civil court on the Controller. It lays down the that the Controller shall have powers of a Civil Court while trying a suit under Code of Civil Procedure, 1908 in respect of the following matters:

1. summoning and enforcing the attendance of any person and examining him on oath;
2. requiring the discovery and production of any document;
3. receiving evidence on affidavits;
4. issuing commissions for examination of witnesses or evidences;
5. awarding costs;
6. reviewing his own decision on an application made within prescribed time and in the prescribed manner;
7. setting aside an order ex parte on application made within prescribed time and in the prescribed manner;
8. any other matter which may be prescribed.

Thus, section 77 confers upon the Controller certain essential powers of a civil court in order to enable him to deliver decisions in any proceedings before him under the Patents Act. This section is significant as it tends to state that any decision passed by the Controller in any proceeding before him shall be executed and enforced like a decree of Civil Court.

Section 77(1) (f) refers to the power of the Controller to review his own decision. The Civil Court has a similar power under Section 114 and Order 47 Rule 1 of the Code of Civil Procedure, 1908. A small parallel between the two provisions is drawn below:

Contents
Section 77(1)(f) of Patents Act
Section 114 of CPC
Initiation of review proceedings
On application of aggrieved party made in Form 24
On application of aggrieved party in prescribed format under Order 47
Limitation
Must be filed within one month from the date of communication of such decision to the applicant.[Rule 130 of Patent Rules 2003]
Must be filed within 30 days from the date of passing of such decree by the civil court.[Order 47]
Whom to apply
The Controller who passed the earlier decision
Application to be made to the very judge who passed the decree or made the order
Grounds for review

An application for review may be made on any of the following grounds-

(i) discovery of new and important matter or evidence; or
(ii)on account of some mistake/error apparent on the face of the record or;
(iii)for any other sufficient reason

An application for review of on order/decree may be made on any of the following grounds-

(i) Discovery of new and important matter or evidence; or
(ii) Mistake or error apparent on the face of the record; or
(iii) Any other sufficient reason

Appeal
No appeal shall lie from the Controller’s decision of review under section 77(1) (f).[Section 117 A]
No appeal shall lie from any order/decree passed in a Review Petition[Order 47 Rule 7(1)]

Therefore, from the above table it can be concluded that the powers of a Controller under Section 77(1) (f) of the Patents Act, 1970 are equivalent to the powers of a Civil Court under Section 114 of the Code of Civil Procedure, 1908. The mentioned provision thus gives wide powers to the Controller to review his own decision on the above mentioned grounds. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

Similarly, Section 77(1) (g) lays down the provision regarding setting aside of ex-parte orders passed by the Controller. The term ‘Ex Parte’ orders relate to those orders which are passed in the presence of just one party and without hearing the other. Clause (g) of the Section allows an applicant to make an application under Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller on request made (under Form-4) may allow. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

The order passed by the Controller in review is not appealable. Section 117A of the Act lays down the provisions for appeal from the decision/order of the examiner, controller or the state government to the Intellectual Property Appellate Board (IPAB). This is a mandatory provision laying down strict standards for appeal to IPAB. It clearly states that the appeal is allowable only in matters specifically mentioned under sub-section (2) of Section 117A.

The issue of appeal from a review application was discussed by the IPAB in the case of Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai[1]in the year 2012. The IPAB while laying down the difference between these sections stated that Section 117 A is a special provision allowing appeals to the IPAB in certain specified circumstances whereas Section 77(1) (f) is a general provision laying down the grounds for allowing review of decisions made by the Controller. Review can be done only by the Controller and not the IPAB. This decision of the Controller is final and Section 117 A does not specify Section 77 as a ground for appeal to IPAB, thus leaving no scope for making cases appealable before IPAB under section 77 of the Patents Act, 1970 Further, it was held that- “Appeal is a creature of statute and is not an inherent right. Unless there is a specific provision for appeal, there can be no appeal. Where there is no provision to appeal against a review petition then appeal herein is not maintainable…” (Para 11&12).

Thus, it can be concluded that the Controller has wide powers under Section 77 which are equivalent to the power of a Civil Court under Code of Civil Procedure. Parties may seek review of the decision of the Controller where they feel that some grave error has occurred on the part of the Controller. However, the only drawback of this provision is that the review application is filed before the same Controller and therefore may, at times result in the party seeking for such reviews, prejudiced. However, this provision is a welcome move to ensure justice. Also, this decision of the Controller is final and no appeal can lie against an order passed upon a review application. This ensures that unnecessary hindrance due to repeated frivolous litigations/prosecutions is avoided.

Author: Aishwarya M. Pande, Legal Intern, at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai; MANU/IC/0115/2012

[2] Section 77 of Patents Act, 1970

[3] Section 114 read with Order 47 of the Code of Civil Procedure, 1908

[4] Manual of Patent Practice and Procedure

[5]http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent–practice_and-procedure.pdf

[6]http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf

Too General To Be Trademark-Able: A “Cocky” Debate

There have been plethora of cases in India and abroad that discuss the menace caused due to monopolization of general English terms in course of business. The argument given by the proprietors is that to get a trademark over a name, it is important that the name is arbitrary and it does not describe the product that is being sold under it. While the importance of getting protection over one’s intellectual property is stressed upon, the bigger problem here lies with the concept of owning a name that everyone knows and uses in their day-to-day life. “Trademark Overreach or Trademark Abuse” refers to this practice of using and monopolizing general words as brand names. This article analyses the predicament of dominating general words for business purposes while highlighting upon the recent ‘COCKY’ controversy.

The COCKYGATE:

After Penelope Ward and Vi Keeland’s book ‘The Cocky Bastard’ became a major hit in 2015, number of romance novelists titling their books ‘Cocky’ was on the increase. The word is adored by these novelists for its implication to alpha-male heroes and for its under-playing potential. On 17th April 2018, the United State Patents and Trademark Office (USPTO) invited litigation when it granted a troublesome trademark on the general English word “COCKY”. Crux of the matter is that, self-published author Faleena Hopkins had filed for registration of trademark on the word “Cocky” in relation to a series of downloadable e-books in the field on romance, ‘Cocker Brothers of Atlanta’. The 19 book series is about Cocker brothers where each book features the word ‘Cocky’ in the title (books in the series can be viewed here Cocker Brothers Series). Adding fuel to the fire, Ms. Hopkins also wrote out to other authors to cease and desist from using the word in their book titles. Many authors like Jamila Jasper, Bianca Somberland have received notices from Ms. Hopkins stating that they should change the name of their books or else face legal actions. She also filed a complaint against these authors with Amazon as a consequence of which Amazon took down their books from sale. The matter came to light last week when many authors resorted to social media to write about the letters received from Ms. Hopkins with #COCKYGATE. The actions of Ms. Hopkins had led to an outcry in the romance writers’ community.

A petition to cancel the registration of ‘Cocky’ has been filed in the USPTO which has been signed by 17,000 people so far. The writers have claimed that romance novels usually involve alpha-male protagonists who are frequently described in the titles with this word. They also claimed that such generic terms cannot be trademarked. In her defense, Ms. Hopkins claims that ‘COCKY’ is an essential part of the titles of her books, hence, require protection. She said that she is received letters from the readers who lost their money thinking they bought her series. She stated that she is trying to protect the interests of such innocent buyers.

Analysis:

As stated earlier, general terms are not trademark-able. General terms refer to the terms or words that we use regularly in our day-to-day affairs or which are words of common tongue. General term is a term which ideally should not become the exclusive property of a single firm but at the same time it maybe a term which describes the source of a product or service provided under it; therefore, must not be appropriated by the rivals to use freely. Such terms cannot be trademarked unless they have attained a secondary meaning. A trademark claim may be overreaching if a mark similar to the registered mark comprised of a general term is separately registered and used in relation to a different class of goods. The court must not deny the defendants from using the general trademarked term unless it has acquired secondary distinctiveness.

Secondary Distinctiveness: An American Overview:

Federal Trademark Act, 1946 popularly known as the ‘Lanham Act’ governs the trademark law in the United States.  The act allows the owners of trademarks and service marks to register them on Principal Register. The refusal of registration is constrained to certain grounds enumerated in Section 2(a), (b), (c), (d) and (e) which includes grounds like mark being deceptively similar to another mark already registered, consists of immoral, deceptive or scandalous matter etc. This section is the American counterpart of Section 9 of the Indian Trademark Act, 1999, however, Section 2(f) of the Lanham Act provides an exception to refusal of registration on grounds of section 2(a), (b), (c), (d) and (e) (3), (e) (5). It states that “nothing herein shall prevent the registration of a mark used by the applicant that has become distinctive of the applicant’s goods in commerce”, thus, in US too, a general term can acquire protection only if the term has acquired a secondary meaning.

The Judicial outlook on this matter in United States is also in consonance with what the Act most states. Commonly descriptive terms or general terms used by the public or other businesses to describe a particular good cannot be trademarked unless it has acquired a distinctive meaning, in the sense that the public associates the term to a particular product of a particular company. Yet, there have been cases like the CITI Bank’s matter against AT&T over the term “THANK YOU”. The court sided with the defendants and stated that the term had achieved no secondary meaning, hence, CITI Bank cannot monopolize it.

Secondary Distinctiveness: Indian Perspective:

Section 9 of the Trademark Act, 1999 lays down the grounds for absolute refusal of registration of trademark and includes that a mark that is descriptive of the goods and services purported to be sold under it cannot be registered. It also bars registration of marks which have become customary in the current language or in bona fide and established practices of trade, however, the section gives an important exemption to the marks that have acquired distinctive character as a result of their use maybe registered. The exemption gives birth to the idea of ‘secondary distinctiveness’ which relates to the situation where certain terms acquiring a secondary meaning because of its use in the common parlance; such terms may be trademarked.

Examples of trademark overreach in India are many ranging from Ultratech’s claim over the term ‘Ultra’, or Reebok’s claim over the phrase ‘I am what I am’. In all these cases, the court ratio emphasized on the fact that a general term can be granted protection if and only if it is proven that the term has acquired distinctiveness and that public relate to the term by this secondary meaning rather than a definite meaning.

Conclusion:

In the present case also, the USPTO must take into consideration the genericness of the term ‘Cocky’ and the manner in which it is used by romance novelists in their titles. Generic terms should not be allowed to be trademarked unless there is proof of its acquired distinctiveness. The evidence of secondary distinctiveness must be made mandatory for those seeking to register generic terms as trademarks. Further while entertaining infringement suits involving such generic terms the Courts should be cautious to identify if the claim is bona fide; meaning, the generic term trademarked by the Plaintiff has attained a distinctive character and the public at large associates such term with the products of the Plaintiff.

Author: Aishwarya M. Pande, 5th Year, BA LLB (IPR Hons.), Institute of Law, Nirma University, Ahmedabad, Legal Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Trademark Registration no. 5447836 granted by USPTO

[2] http://tsdr.uspto.gov/#caseNumber=5447836&caseSearchType=US_APPLICATI

ON&caseType=DEFAULT&searchType=statusSearch

[3] Section 2, Federal Trademarks Act, 1946

[4] Section 9, Indian Trademarks Act, 1999

[5] https://timesofindia.indiatimes.com/life-style/books/features/romance-novelist-trademarks-word-cocky-stirs-up-controversy/articleshow/64108602.cms

[6] https://www.vox.com/culture/2018/5/15/17339578/cockygate-explained-romance-publishing-faleena-hopkins

[7] http://www.victoriastrauss.com/2018/05/09/trademark-shenanigans-weighing-in-on-cockygate/

[8]http://www.cbc.ca/radio/asithappens/as-it-happens-wednesday-edition-1.4665345/romance-writer-renames-book-after-author-trademarks-cocky-1.4665355

[9] James M. Treece and David Stephenson, ‘Another look at descriptive and generic terms in American Trademark Law.’,  66 Trademark Rep. pp 452,453

[10] Ultratech Cement Ltd. v. Dalmia Cement Bharat Ltd., (2015) 2 Mah LJ 354 (Bom)

[11] Reebok India Co. v. Gomzi Active, MANU/KA/0781/2006

Analysing Anuradha Doval V. Controller: A Revisit To Prior Publication And Novelty In Designs

Exactly a year back, Calcutta High Court gave an elaborate judgement discussing the conditions for grant of design. The case holds relevance as it discusses element of Novelty and Prior Publication in detail. This post will try to comprehensively analyse the case.

FACTS

The design-in-dispute is a bottle cap under class 09-01 bearing Application No. 222799. The Private Respondent applied for cancellation under all the grounds mentioned in Section 19 of the Designs Act, 2000. The grounds are:

a. Design has been previously registered in India.
b. Design was published prior to the date of registration.
c. Design is not new or original.
d. Design is not registrable under the Act.
e. It is not a design as per Section 2(d) of the Act.

The Private Respondent claimed that the design features of the bottle-cap were not original or new. To adduce his statement, he relied on three evidences. Firstly, he provided the impugned registration nos. 195268, 195269, 200344 and 200682. All these ‘registered’ designs had bottle caps and closures with shape and configuration which was claimed by the Applicant. Secondly, he also produced a document titled ‘Ambrosia’ which was a magazine published in January 2009 and alleged it to be a prior art. Thirdly, he contended that the claimed design was a conventional design which has been in use for a long time.

LEGAL TIMELINE

1.  Publication of magazine ‘Ambrosia’ Vol. 16 No. 8 JANUARY 2009
2.  Applicant filed for registration of ‘claimed’ design MAY 2009
3.  Design published in Journal MARCH 2010
4.  Private Respondent filed for cancellation of ‘claimed’  design under Section 19 DECEMBER 2012
5.  Controller upheld the cancellation of design
6.  Calcutta High Court upheld Controller’s decision APRIL 2017

 ISSUE

Whether the Controller was correct in allowing for cancellation of the registration of the design under Section 19 of the Act?

FINDINGS

In the present case, J. Soumen Sen found out that the Private Respondent is an expert and thus has the required expertise to decide the matter. The Court held that the claimed design was published prior to registration and hence liable to be cancelled under Section 19 of the Act. The Court relied on Ambrosia magazine and held that since it was published in February 2009, the design cannot be granted protection. It was devoid of novelty and originality. The Court upheld the decision of the Controller and justified the cancellation of registration of design.

ANALYSIS

The present judgement revisits the element of Novelty and Prior Publication. Both the conditions are grounds for cancellation of registration of design under Section 19 of the Act. The design in the finished article has to be judged solely by the eye is no new fact. The reason why this exclusion was granted to the eye was that the purpose of granting design is to encourage and reward design of a good product. This helps in protecting the skill, creativity and labor of product designers.

What amounts to prior publication is a question of fact. It depends upon case to case. The test of prior publication is satisfied only when the previously registered design is out in public. The details of the design applied to the article should be such that it is can be judged by the eye. A person of ordinary intelligence and imperfect recollection must be able to see the design in his mind’s eye and not rely on imaginative faculties in constructing the design. The main ratio is that cancellation of design will be allowed if the claimed design is substantially similar to the of the prior publication design.

J Sen also cited various landmark cases like Parle Products Ltd.(2008) and Gopal Glass Works (2005) to elaborate on the concept of novelty and publication. Specifications, drawings of any demonstration done in connection with the registration of design does not constitute publication per se of the said design. This applies in registration of a design in foreign country as well. It means that specifications of the design disclosed while getting a registration will not amount to prior publication. Also, the judgement states that to constitute prior disclosure, the publication needs to firstly, be in tangible form of the design so applied to the article. The main factor that needs to be compared in prior publication is the visual effect and the appeal of the picture illustration.

The Court also cites Reckitt Benckiser IndiaLtd. v. Wyeth Ltd (2013) and few paragraphs from Russell-Clarke and Howe on Industrial Designs VIIIth edition quoting:

“In practical terms, there are two main ways in which a design can be published: by prior use of the design, by selling or displaying to the public articles to which the design has been applied; and by paper publications of one sort or another. It is not, in fact, necessary that publication should be on paper; an oral disclosure, provided it is non-confidential, will amount to publication.”

One of the notable mention is of Section 4(1) of the Registered Designs Act 1949 of UK. It is an exception wherein no prior art will be constituted if the proprietor of the registered design applies for registration with modifications and variations subject to conditions in respect of another article. In such case, his previous registration or the publication of his design as registered will not constitute prior publication. However, the term of protection will be limited only to the term of original design. This proves to be a great deal in UK as an Applicant who finds out that the claimed design has been previously registered with respect to a different article is allowed to buy the earlier design and then enjoy the advantage under the said section.

However, there lies a shortfall in the judgement. J. Sen has based on his findings based on the expertise of the Respondent (Refer Para. 39 of the judgement). This has further been aggravated by absence of any mention of the qualifications of the un-named Respondent. The Court should have compared the features of the design physically. Rather, it just relied on the Respondent’s submission as he was an expertise in the said field. Apart from this point, the judgement is a must-read for summarizing the element of publication and novelty in Design protection.

Author: Esha Himadri, Legal Intern, at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Anuradha Doval v. The Controller of Patents and Designs [2017(71) PTC 288 (Cal)]

[2] Section 19, The Designs Act 2000

[3] Parle Products Private Limited v. Surya Food & Agro Limited [2009 (40) PTC 638 (Mad.) (DB)]

[4] Reckitt Benckiser India Ltd. V. Wyeth Ltd. [2013 (54) PTC 90 (Del) (FB)]

[5] Gopal Glass Works Limited v. Assistant Controller of Patents & Designs & Ors. [2006 (3) CHN 188]

[6] Russell-Clarke and Howe on Industrial Designs [VIIIth Edition]