Author Archives: IIPRD

Recent Grant of Patent is Valid Ground of Defence for Refusal of Interim Injunction in Infringement Suits: Galatea Ltd & Anr. V. Diyora and Bhandari Corporation & Ors.

BRIEF FACTS

Plaintiffs are Israeli companies, engaged in the business of developing and providing inclusion scanning methods in rough diamonds and the Defendants are Indian companies are also engaged in the business of manufacturing and providing inclusion scanning services and in some cases are engaged in selling of inclusion scanning machines and rendering inclusion scanning services to its customers. The Plaintiffs claimed infringement of their suit patent by the Defendants by using of infringing machines, directly or indirectly. An ex-parte interim injunction prayed by the Plaintiffs was rejected by the Ld. Single Judge on the ground that the Plaintiffs have not fulfilled the prima facie conditions necessary for an ex-parte injunction. The said Order rejecting the injunction was challenged in Gujarat High Court.

 CLAIMS

 Plaintiffs claimed that previous several inventions have been made to the presence of inclusions in transparent and partly polished stones through imaging but none could determine the exact location of the inclusion since refractive index of the stone and the air lead to generation of multiple images produced by a single inclusion further more inventions took place to reduce the refraction and to obtain accurate location of inclusions but they also failed. Plaintiffs’ claims to have invented an apparatus and a method which are the subject matter of Plaintiffs’ suit patent and the Defendants are manufacturing or procuring, importing and selling duplicate/infringing machines. They are using such machines to provide services to third parties.

JUDGEMENT OF LEARNED SINGLE JUDGE 

By the judgement dated 26.03.2008, Ld. Single Judge rejected the interim injunction application of the Defendants on the following ground:

  1. On the basis of commissioner’s report, no apparatus was found in the machine of the Defendants which would infringe Plaintiffs suit patent prima facie and the said machine is liable to be tested and after such only it can be determined whether infringement has taken place or not.
  2. The suit patent was considered to be new in the sense that it is granted on 22.2.2016 and its validity is yet to be adjudicated.
  3. Patents which are granted to the Plaintiffs in other countries cannot be made basis of an action of infringement in India.

Similarity in the end results of the machine does not determine the infringement

  1. Defendants pleaded against the use of vacuum pump or any apparatus for removal of bubbles and only because the end result of the two machines is the same, would not constitute infringement of the Suit Patent.
  2. The Defendants were directed to maintain separate accounts for sale of any machines manufactured and/or sold by any of the defendants and restrained them from using any device for bubble removal in their machines till final disposal of the suit.

Appeal was preferred by the Plaintiffs against such Order of the Ld. Single Judge.

APPEAL BEFORE DIVISION BENCH

Interpretation of Section 107(1) and 64 of Patents Act

Mere grant of patent would not give an indefeasible right to the plaintiffs to enforce the patent in a suit and to claim the interim injunction pending such suit. If the patent is old time tested one, existing since long, the Court would consider it with due regard and would lean in favour of enforcing it in absence of any other reason to the contrary. On the other hand, if the patent is relatively new, the Court would be slow in enforcing it at the interim stage, unless shown to be beyond vulnerability. In the context of patent being new or old, the Courts have often employed a yardstick of six years time. The Bench relied on judgments of TVS Motor Company Limited(supra), V. Manioka Thevar v. Star Plough, TEN DC Wireless Inc and Anr. V. Mobi Antenna Technologies (Shenzhen) Co Ltd Works, Melur.

 Essentials for deciding to grant or refuse an injunction in a Patent infringement suit are:

  1. Whether patent is an old time tested one or a recent one?
  2. Whether the person interested have either applied for revocation of the patent or opposed the patent in the suit?
  3. Whether in such proceedings the defendants have made out a prima facie case of vulnerability of the patent on any of the grounds otherwise available for revocation of the patent such as lack of any innovative step or existence of prior art?

Held

The Bench held that the predominant prima facie feature of the patented apparatus and method invention claimed by the Plaintiff is the vacuum pumps which remove the impurities and bubbles to eliminate the possibility of third refractive index which removes distortion in images of inclusions in the gemstone.  Controller’s report was also taken into account that vacuum pumps are essential part of the suit patent and Defendants also stated that they are not using vacuums pumps in their device which was also revealed from the Court Commissioner’s report who, at the time of inspection, did not find any device containing vacuum pumps.

Most integral reasoning given by the Court for refusing the interim injunction to the Plaintiffs was that the Patent itself is a recent one and has not been previously tested in court of law, also the Defendants have succeeded in demonstrating the vulnerability of the suit patent by citing various similar techniques used widely for of inclusion in gemstones. Considering all factors and arguments, the Hon’ble Court refused the interim injunction since it was found that prima facie case, irreparable loss and balance of convenience bends towards the Defendants, at the present stage.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] R/APPEAL FROM ORDER NO. 109 of 2018, High Court of Gujarat

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Regulation of Content Available On Video-On-Demand Players Like Netflix, Amazon Prime, Zee5, Hotstar

There are various video-on-demand streaming (VOD) platforms like Netflix, Amazon Prime, Hulu, Hotstar etc. which provide online streaming services allowing people watch a wide-variety of contents like TV Shows, web-series, sitcoms, movies, documentaries etc. What makes these VOD’s different from a typical television channel or a movie theatre is that they allow the viewer to choose and decide what, where and when to watch the videos we like. Therefore, one can enjoy unlimited viewing of the content available on such online streaming platforms without taking pain of watching a single commercial. These platforms are subscription based , a person can avail the services from these platforms which include video contents along with rating guides and episode synopsis in-order to help viewers decide what they want to watch and what they don’t. However, these VOD’s are facing multiple court cases wherein there are allegations of depicting contents on their apps which are not morally good for the society.  Before going into the details of the issue, it is important to understand the reason why such issue has arisen in the first place. For a better understanding let’s have a look at the petition filed before the Delhi and the Bombay High Court.

The Petition

Few days back, a PIL has been filed in Delhi High Court by an NGO called Justice for Rights Foundation seeking framing of guidelines to regulate the functioning of online media streaming platforms /on-demand entertainment apps such as Netflix, Amazon and others[1] alleging that they show “unregulated”, “uncertified”, “sexually explicit”, “vulgar”, “inappropriate”, “religiously forbidden” and “legally restricted” content. Some of their shows often “depict women in objectifying manner”. In August, 2018 the Ministry of Information and Broadcasting has received an application to ban shows like Sacred Games, Game of Thrones, Spartacus etc. in India. The petition was filed before the Hon’ble court seeking guidelines in order to regulate the uncertified, pornographic, sexually explicit, vulgar, profane and legally restricted contents broadcasted on the online platforms including Netflix, Amazon etc. seeking a writ of mandamus to the respondents to frame legal provisions/guidelines in order to regulate the said online platforms and contents broadcasted on the online platforms, and to direct the respondents to pass necessary directions to all such online platforms to remove such content with immediate effect. It was alleged that these shows contain “obscene, nude and vulgar scenes” which are cognizable offences under the Cinematography Act, Indian Penal Code, Indecent Representation of Women (Prohibition) Act and the Information Technology Act. For instance, content from ‘Charlie and the Chocolate Factory’ where the scene depicting animal (the holy ‘Cow’) abusive is available for view (for viewers of age 7 years and above) on Amazon Prime video.

A similar petition has also been filed before the Nagpur bench of Bombay High Court by Divya Gontia against AltBalaji for broadcasting show ‘Gandi Baat’ and against Netflix for ‘Sacred Games’.[2] In this case, the petitioner has approached the court under Article 226 and 227 of the Indian Constitution in the interest of securing justice to the general public of the country and especially members/supporters of Indian National Congress whose revered figure Shri Rajiv Gandhi is sought to be defamed in the name of artistic freedom. It was alleged that the show ‘Sacred Games’ has inappropriate dialogues, speeches and even political attacks which are derogatory in nature and harms the reputation of the former Prime minister Shri Rajiv Gandhi. The petitioners have taken the reference of Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal where the court observed that in today’s context electronic media has become the most powerful tool because of its audio visual impact and its widest range covering almost all the sections of the society and can be easily accessible by the children at home. [3] Further, it was also alleged that the show incorrectly depicts historical events of the country like Bofors case, Shah Bano case, Babri Masjid case and communal riots, which is maligning the reputation of the former Prime Minister Rajiv Gandhi and also defames him internationally. The petitioners have taken the plea that the portrayal of historical figures especially a former prime minister has to be done in a historically accurate manner and creativity cannot be used as a pretext to malign or sully their image. Also, it is reprehensible that only for the sake of TRP and to earn some profit the producers have come down to such a level that they have projected former prime minister in the bad light when he is a role model to millions of Indians.

What Are The Consequences?

In the aforementioned petition filed before Delhi High Court, the main issue before the court is that Netflix and Amazon are broadcasting illegal and morally inept contents on the on-demand web shows which are vulgar, vile and violent. The petition was filed seeking intervention from the High Court to clamp down on the “unregulated, uncertified, sexually explicit, vulgar, profane and legally restricted content broadcasted on the online platforms including Netflix, Amazon Prime Video etc. The petitioner has demanded the Hon’ble High Court to frame regulatory guidelines for online shows and to ban objectionable content on online shows. In case if the court has accepted the arguments of the petitioner, then there are highly likely chances that these on-demand entertainment apps can face possible ban. However, the matter was not taken up since the bench did not assemble and it is expected to be taken up next on November 14.

Are There No Laws To Restrict Such Platforms?

The answer to this question is NO. There are various acts that govern different domains; however, since such VOD platforms are actually a mix of many domains, there is no single law which covers it completely. For example, in the above mentioned petition ,it was alleged that the contents depicted in these VODs platforms is violative to the Information Technology Act, 2000 (hereinafter referred to as the ‘IT Act’). Section 79 of the IT Act puts onus on the intermediaries to observe due diligence while discharging their duties under the act and to observe guidelines as prescribed by the Central government. However, Section 79 of the IT Act does not apply to all the online platforms in the present case as a blanket provisions as these platforms stream third party content and also give self generated content.

Further, the Cinematograph Act, 1952 is not applicable to an online movie streaming service as the same along with its rules only govern the censorship of films in Theatres and Television, and content that is streamed online does not fall under the domain of Cinematograph Act. Further, the Section 3 of the Cinematograph Act provides for the establishment of Central Board of film Certification   (CBFC) and the purpose behind is to certify films which are intended for “public exhibition”. The term “public exhibition” has not been defined anywhere in the act or its rules therefore, there is issue of interpretation involved that whether public exhibition would include only to film available for watching only in public places like Multiplex or it would also include video content available to public for watching whether in public or private.

The Cable Television Network (Regulation) Act, 1995 governs the cable network operators, and under Rule 6(n) of the Cable Television Network (Regulation) Rules, 1994 they are required to ensure that the films that can be accessed by their viewers should be certified from CBFC. Going by this analogy, the term “exhibition” of films can be said to include “exhibition” of films for private viewing by the public.

Why These Acts Cannot Be Applied To Video–On-Demand Platforms?

However, the problem persists as different media are regulated by different legislative frameworks, one cannot compare Netflix or Amazon prime with a multiplex as Netflix provides viewing in Private. We can also not compare Netflix with a Cable operator as they have pre fixed sequence of content and viewer can not choose what and when and where he wants to view the content, all he can do is to change the channel, but he does not have any control over the sequence of the content, whereas in the case of video-on-Demand Platforms viewer has absolute control over what, when, where he want to watch. Another major difference between Cable operator and video-on-demand platforms is that the former uses satellite signals to distribute content whereas the latter uses networks of telecom operator and hence they cannot be equated.

Indecent Representation of Women

The scenes depicted on these online entertainment apps are also violative to the Indecent Representation of Women (Prohibition) Act (IRWA), 1986 which seeks to “prohibit indecent representation of women through advertisements or in publications, writings, paintings, figures etc”.  The Act penalizes persons involved in the publication, distribution and packaging of prohibited materials however, such material can be published for scientific purposes or representation of ancient monuments. Recently, the Nagpur bench of the Bombay High Court took a strong view over pornographic contents of Netflix, Amazon Prime, Hotstar and other channels on internet and directed the Information and Broadcasting Ministry to initiate effective steps to control and regulate these contents. The bench comprising of Justice Bhushan Dharmadhikari and Justice Murlidhar Giratkar also directed the concerned ministries to set up a pre-screening committee for monitoring the contents before they are released on online media. The direction issued by the High court will be helpful in curbing crudity, sexual or unsavoury language, vulgar actions, nudity, sex and immodesty on web series.

Right To Free Speech And Expression

These video-on-demand cannot be left to broadcast unrestricted, unregulated content in the name of right to free speech and expression, as even the fundamental right of freedom of speech and expression granted under article 19(1)(a) of the constitution of India, 1950 is also subject to certain restrictions, like respect of the rights or reputation of others, protection of national security or of public order or of public health or morals etc. The word ‘reasonable restriction’ corresponds to the societal norms of decency. The contents shown on such online platforms are definitely violative of Article 19 of the Indian Constitution and therefore the said platforms are bound by reasonable restrictions guaranteed under article 19(2). The fundamental right to carry on trade or business does not extend to carry on trade or business of products or equipment that could interfere with the safety, health or peace of the citizens. Furthermore, the said content on such online platforms shows women in bad light and merely as an object which is also violative of their fundamental right to live with dignity as enshrined under article 21.

Conclusion

In the above backdrop, it is high time for the government to come up with stringent laws in order to put a check on the contents that are not morally appropriate for the society. In the present case, no efforts were made to regulate the said online platforms or to remove such legally restricted contents in order to put an end to this problem. This ignorance of the government actually provides such platforms another opportunity to perpetuate the illegality. The said online platforms go unchecked due to lack of certifications or legislations and are not regulated properly because of lack of guidelines or provisions of law specifically dealing with such contents. Now, it really becomes important to tackle such online platforms which operate unregulated and unchecked on an urgent basis.

I strongly believe that anything that disturbs public tranquility or public peace disturbs public order. The right of freedom of speech and expression cannot be extended in order to accommodate “just anything” to be beamed in every home especially when it concerns the former prime minister of our country who is a hero to the millions of people. Netflix in the present case have taken undue liberty and have completely distorted the historical facts which directly impact the reputation of Shri Rajiv Gandhi and are highly slanderous. In Kanu Biswas v. State of West Bengal case, the court held that “in order to determine the effect of an act on the law and order situation in the society, it is important to see the disturbance of the current life of the community which leads to the disturbance in the public order.”[4] We believe that the inaction on the part of the Information and Broadcasting ministry in not taking a proactive step to control and regulate the online streaming platforms led to the violation of Fundamental Rights guaranteed under Article 19 and 21 of the Indian constitution because there is an inseparable interconnection between freedom of speech and stability of society.

We believe that the screening of pornographic contents, vulgar gestures and talks are overriding the Indian culture and morality and there is no controlling and monitoring authority for such video-on-demand platforms. Therefore, it becomes important that there must be a monitoring machinery to control such web contents. Also, in interest of the public at large, the Hon’ble court must impose deletions on visuals and dialogues relating to former Prime Minister Rajiv Gandhi which are found to be derogatory in nature and under article 19(2) reasonable restrictions can be imposed on freedom of speech and expression on account of ‘Public order’ which is synonymous with public peace, safety and tranquility.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development, Mr. Rishabh Tripathi, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com.

References:

[1]  Justice for Rights Foundation v. Union of India W.P (C) No. 11164/2018.

[2]  Nikhil Bhalla v. Union of India Writ Petition (Civil) Number 2018/7123.

[3]  Secretary, Ministry of Information and Broadcasting, Govt. of India v. Cricket Association of Bengal (1995) 2 SCC 161.

[4]  Kanu Biswas v. State of West Bengal [1972] 3 SCR 831.

Japan & India Vowing To Grow Together In The Field Of IP

One of the latest developments in the economic relations between the two Asian countries – Japan and India is the implementation of pilot program of Japan-Indian Patent Prosecution Highway (PPH) in the first half of fiscal year of 2019.

The two countries have always been collaborating with each other through different projects in various fields. One such association is present in the field of Industrial Property since 2015, where a Memorandum of Cooperation (MOC) was signed by the countries in order to further the investment and business expansion by Japan’s industrial sector in India, which is believed to have an incredible potential to become one of the leading markets in the world and a hub for innovation, research and development.

Further, in May 2017, the Japan Patent Office and the Office of Controller General of Patents, Designs & Trade Marks (CGPDTM) of India signed an enhanced new Action Plan, where both the bodies would perform new initiatives with respect to Intellectual Property such as follow-up of training courses for new Patent Examiners of CGPDTM or sending JPO officials who are well-Versed with Patent Prosecution highway (PPH) to India.

Later, on October 30 this year, the Prime Ministers of India and Japan proceeded their cooperation for developing and enlarging the scope of Intellectual Property Rights by realizing the true potential of India-Japan economic partnership. They mostly focused on Patent prosecution which led to Japan’s strong support for key transformational initiatives such as “Make in India”, “Skill India” and “Clean India Mission”, through sharing of resources and advanced technologies, and active mobilization of Japanese public and private sector investments. Identifying such co-operation of the two countries in the field of Intellectual Property Rights, Japan and India agreed to start a bilateral Patent Prosecution Highway Programme on pilot basis in certain identified fields of inventions during the first quarter of Financial Year 2019. Through this, they welcomed the expansion of Japan’s Foreign Direct Investment in India under the “India-Japan Investment Promotion Partnership”, the progress made in Japan Industrial Townships (JIT) and other initiatives included in the Japan-India Roadmap for Investment Promotion.

This program is expected to be beneficial to both the countries in many ways. Now, the Japanese companies can request for expedited examinations in India through simplified procedures, based on their applications whose claims have been determined to be patentable in Japan and after claims can also be determined to be patentable in Japan, applicants can acquire patents swiftly and expand their business smoothly in India. On the other hand, India can emerge as the favorite place of making investments as Japan would be making lot of investments in India, especially in the field of IPR.

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

References:

[1] http://pib.nic.in/newsite/PrintRelease.aspx?relid=184458

[2] http://www.meti.go.jp/english/press/2018/1030_001.html

Unpaid Patent Annual Fee Causes Huge Losses to Patent Office of Indonesia

Indonesian Patent Office has sent letters to 7600 patent owners in Indonesia in order to recover the unpaid annual fee along with Interest as soon as possible. It has come to notice that Rp 150 Billion ($12,000,000) is unpaid which has caused huge financial loss to the government. Most of the owners presented themselves as ‘Foreign entities’ on recieving the said letters.

Article 115 (1) of Indonesian Patent Law 2001 provides that a patent shall be deemed void, incase the patent owner fails to pay patent annual fee for consecutive 3 years.  Therefore, according to the said law, Thousand of Patents were abandoned by patent office due to non-payment. However, the patent owner can still clear the unpaid amount even tough patent is passively abandoned. Otherwise it will be consider as debt.

The Indonesian Directorate General of Intellectual Property Rights (DGIP) signed a Memorandum of Understanding (MOU) with the Indonesian Anti-Counterfeiting Society (MIAP) to handle this situation.

Indonesian Directorate General of Intellectual Property (DGIP) attempted to recover the debt in 2015; unfortunately the approach failed and did not succeed.

The DGIP has now taken strong decision of not accepting any new patent filing applications from the defaulter patent owners who have not cleared the pending debt of their previously filed Patents. The Indonesian patent office is determined to settle all such debt by 15.02.2019. This surprising move by DGIP has made patent holders worry and think whether the payment of the outstanding annuities will actually have any effect for the future patent applications by them.

Author: Ms. Deepika Sharma, Sr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  deepika@iiprd.com.

References:

[1] http://www.managingip.com/Article/3335641/Indonesia-Unpaid-patent-annual-fees.html

[2] https://www.shelstonip.com/news/indonesian-patent-office-gets-tough-unpaid-fees/?utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original

[3]http://www.iprlawbor.com/data/Newsletter%20June%202013%207th%20edition.pdf

Case Comment: M/S Shree Rajmoti Industries Vs M/S Shri Vishwaprabha Food

Brief Facts of the Case

The plaintiff in this case claimed to be owner of the trademark “Rajmoti” that it adopted in 1962. The plaintiff used “Rajmoti” as a trademark as well as a distinctive logo for edible oils that included cotton seed oil and groundnut oil. The plaintiff later expanded the business to mineral and aerated waters, beers, fruit drinks, juices, etc. The word “Rajmoti” is also a remarkable feature of the Plaintiff’s business name i.e. M/S Shree Rajmoti Industries. The plaintiff claimed that its trademark was registered in classes 29 (Meat, Fruits, Milk and Oils), 31 (Grains, Fresh Fruits and Vegetables), 32 (Water and Non-Alcoholic Beverages), 35 (Business Services and Consulting) and 42 (Technology and Software Services).

The defendant in the case at hand was engaged in manufacturing and selling of rice. The plaintiff claimed that the defendant used the mark “Rajmoti Rice” and thus the act of using an identical mark as that of the plaintiff constituted trademark infringement and passing off.

The plaintiff prayed for a decree of permanent injunction preventing the defendant from using rice or any other goods under the impugned trademark or label bearing the word “Rajmoti Rice” or any other trademark or label which is either identical with or deceptively similar to the word “Rajmoti”.

Issue before the Court

Whether the use of the word “Rajmoti” for rice would violate plaintiff’s right’s in the trademark “Rajmoti”?

Holding of the Court

The single judge bench of the Calcutta High Court ordered an ex parte interim injunction. The court reasoned that the principle of irreparable harm was applicable in the present case.

In order to answer the question before it, the court took into consideration the usage of the marks by both the parties and concluded that the plaintiff had been extensively used the mark for decades unlike the defendant who could not support its claim that it had been using the marks since 2007.

The court took into account the nature of the products and the way these products are sold in the markets. It concluded that both rice and oil are usually sold in close proximity and the customer base is also identical. The court then said that it was common for an owner of a trademark to employ the same mark for similar products while expand business. The court relied on Supreme Court’ judgement in Laxmikant Patel v. Chetanbhai Shah where it was held that the business may be carried on in the future especiallyfuture market expansion should also be taken into consideration while judging passing off.

Finally, the court applied Section 29(2) of the Trade Marks Act, 1999 and held if the trademark is identical to the registered trade mark, it is sufficient if the goods are either identical or similar for constituting infringement under the section.

As in the present case, the products, edible oils and rice were of similar nature and thus, the plaintiff must be provided remedy in form of interim injunction.

Author’s Comments

Judging by the facts and evidence presented before the court, the case seems to be a classic example of passing off and infringement.

The evidence showed that the plaintiff used its trademark since 1961 as opposed to the defendant who claimed that it has been using the said trademark since 2007 but could not produce evidence before the court to prove its usage. Further, sales figures of plaintiff are in crores which shows the widespread usage of his trademark. There is no question of delay in filing of the suit for injunction. As rightly held by the court in this suit, the nature of goods sold by the plaintiff and the defendant are of similar nature and so is the market of consumption of these goods. It is important to note that customers of the plaintiff are common and unwary people who could be easily misled. Thus, it is highly likely that the defendant’s usage of plaintiff’s trademark would deceive customers and can cause damage to plaintiff’s business reputation.

We must also throw light on court’s mindfulness of “natural expansion of business” doctrine.In light of these circumstances, we should visit a recent Supreme Court’s judgement inNandhani Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. where this doctrine was argued. The court, in this case, finally held that the respondent’s/plaintiff’s business was solely meant for trading in milk products only (class 29) and it had not intent to expand its business to other products that fall under class 29 or 30 in the future. Relying on this conclusion, the court ruled in favour of the appellant who dealt with food products such as meat and fish.

In the present case, however, the plaintiff’s consistent expansion of business coupled with its extensive use of the trademark was the reason behind court applying “natural expansion of business” doctrine in favour of the plaintiff. Further, the fact that defendant failed to show that it had been using the trademark in good faith for products in which the plaintiff’s goods had not acquired distinctiveness.

The case is important as the doctrine of natural expansion of business has been comparatively less prominent in Indian trademark regime.

Author: Mr. Parimal Kashyap, 3rd year BA LLB(Hons.) at Dr. Ram Manohar Lohiya National Law University, Lucknow Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  pratistha@iiprd.com.

Patent Lawsuit Against Stevia Suppliers

PureCircle USA, Inc. a subsidiary of PureCircle Ltd. and PureCircle, Sdn Bhd, which is based in Kuala Lumpur, Malaysia has filed a complaint in the U.S. District Court against Sweegen, Inc. claiming that Sweegen’s and Blue California’s Bestevia® are infringing its patent (U.S. Patent No. 9,243,273) which is a method for making Rebaudioside X (Reb-M) is a sweetener derived from Stevia Plant. It was claimed in the lawsuit by PureCircle that Bestevia Rebaudioside M is made by converting Rebaudioside D to Rebaudioside X, also known as Reb M, by using an enzyme called UDP-glucosyltransferase. According to the lawsuit, PureCircle owns or co-owns 77 U.S. patents and is the major producer of stevia globally and due to high demand of sweeteners in the market they are planning to increase the production by 200%.[1]

Sweegen is engaged in selling zero-calorie, Non-GMO Project verified, plant-based Reb-M and Reb-D for use in the food and the beverage industry. The products offered by companies for using stevia sweetners include carbonated beverages, juices, yogurts, ice-creams, nutritional foods, and confectionary goods.  Sweegen, Inc. holds 13 patents along with 130 pending patent applications worldwide regarding stevia sweeteners and is focused on providing next generation stevia sweeteners by including at least 7 novel methods for producing plant-based, Non-GMO, Reb M.[2] The technology is used to make Reb M, which is found sparingly in the stevia leaf and is used in reducing sugar applications like beverages, dairy products and other foods. According to the lawsuit, the patent was issued on 16th January, 2016 and Sweegen on Feb. 21, 2017 announced the commercialization of its Bestevia Rebaudioside M and described the process for making it as a “proprietary and patent pending bioconversion” and also an “enzymatic conversion”. The lawsuit further said that SweeGen has an exclusive license agreement with Conagen, which owns U.S. Patent No. 10,023,604 and the patent involves method for converting Reb D to Reb M. The lawsuit said that based on information received, it is derived that defendants have committed infringement buy making, using, selling, offering for sale, importing, advertising and/or promoting products in the district and the state of California that infringes one or more claims of the patent-in-suit. It is presumed that SweeGen will definitely defend and protect strong IP position against the competitor for the benefits of global customers.

Author: Ms. Deepika Sharma, Sr. Patent Associate and Rishabh, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  deepika@iiprd.com.

References:

[1]https://www.foodbusinessnews.net/articles/12535-stevia-suppliers-face-off-in-patent-lawsuit

[2]https://www.prnewswire.com/news-releases/sweegens-statement-regarding-purecircle-lawsuit-300715090.html

Remote Desktop Protocol (RDP) Licensing Agreement Between Microsoft And Trugrid

Microsoft Corp. and Trugrid (N.E. Desktop Software, Inc.) have entered into a licensing agreement to enable access to Microsoft’s Remote Desktop Protocol (RDP) technology for TruGrid’s simple and secure workplace, hosted in Microsoft Azure. This agreement will give a client straightforward yet secure access solutions to do business in digital world. The RDP license allows the companies that are creating an implementation of the Remote Desktop Protocol (RDP) set to license the Intellectual Property Rights they need from Microsoft by signing the RDP client license. Non-windows thin client devices and non-windows based client software are the products that might need these rights to interact with Windows Remote Desktop Servers (Sessions or VM based).

TruGrid includes fully integrated security and cloud scalability and it simplifies corporate-wide access to Enterprise workplaces that are based on Microsoft Remote Desktop Services (RDS). Micky Minhas, head of Microsoft Technology Licensing said that the licensing agreement with TruGrid can help partners around the world to meet the evolving needs of their customers in the cloud.[1] The partners who are involved in developing variety of different solutions including non-windows thin client services and third party collaboration software that consumes RDP system will ultimately get the benefit from the Remote Desktop Protocol Licensing Agreement.

RDP implementer are required to obtain a patent license for RDP from Microsoft to use the RDP 8 feature set. Microsoft under a fixed fee agreement made it easier to obtain required patent license to use the RDP 8 feature set to interact with the appropriately licensed Windows Remote Desktop clients and servers. Peter Ayedun, CEO of TruGrid said, “The agreement will enhance Microsoft RDP and enables TruGrid to support and secure millions of simultaneous connections via our integration with the Microsoft Azure Cloud.[2]

 The RDP client license helps the RDP implementer in:

  1. Providing free documentation support via community forums.
  2. Free attendance at the protocol PlugFest events where attendees get a chance to meet the Microsoft engineers directly and receive presentations about any specific area of protocol technology.
  3. Getting access to Network Analyzer tool which helps a protocol analyzer can capture, view and analyze network traffic.
  4. Test suites: Microsoft has begun releasing test for different protocols and will continue to roll them out over time.
  5. RDP license enables the RDP implementer to get access to :-
  6. RDP 7.1 reference sources
  7. RDP 8 progressive codec and clear codec reference sources[3]

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

References:

[1]https://www.microsoft.com/en-us/legal/intellectualproperty/mtl/trugrid

[2]https://www.microsoft.com/en-us/legal/intellectualproperty/mtl/trugrid

[3]https://techcommunity.microsoft.com/t5/Enterprise-Mobility-Security/Remote-Desktop-Protocol-Licensing-Available-for-RDP-8/ba-p/248069

Evolution of Intellectual Property Protection in Myanmar

On February 15, Upper house (Amyothar Hluttaw) Parliament of the Union of Myanmar adopted Trademark and Geographical Indication Bill, Industrial Design Bill, Patent Bill and Copyright Bill.

Amendments were made in Copyright bill by Lower house (Pyithu Hluttaw) which was returned to Upper house on Sept. 12. The approval process of the same is now at final stage. Currently, the Lower House Bill Committee is reviewing the Trademark Bill. Deliberations are going over the issue whether the

Parliament will hold to pass the said bill or wait for other intellectual property (IP) laws to be approved. ,

New law enforcement

As per Article 92 of Trademark Bill states, that the trademark owners which are registered with Registry of Deeds and Assurance will have to re-file the application in accord with new law to continue enjoy rights of a registered mark. The Lower House is also considering adding transition period (three to six months) so that trademark owners can re-apply for their marks.

The Trademark Bill is likely to be submitted before the Lower House by the Bill Committee within a  month. After Parliament’s approval, the Bill will then be submitted to the President Office for signature. After which, it will be enacted as a law within fourteen days.

New features included in the new law

Myanmar was following the practice of First -to-use rule, which shall be changed to First-to-file rule, following the new laws in the country.

First-to-file is a legal concept which specifies the owner of the right to the grant of a patent for an invention. The first-to-file system is practiced in many countries including the US.

Another new change would include trade mark, service mark, collective and certification marks and possibly three dimensional, or product shape, marks in the ambit of Registered marks. Few of the following features have also been introduced by the new law :Protection of geographical indications through registry,

  1. Protection of well-known marks against misuse and availability of opposition and cancellation actions
  2. Priority and exhibition rights.

In the new law, there is no procedure for automatically re-registering marks.  Therefore, all marks already recorded would need to be re-filed in order to gain protection in Myanmar. There is also no provision addressing potential conflicts between marks which is likely to cause legal uncertainty.

Patent and design bill

While the patent and design bills are making less progress, they should soon follow the same trail as the copyright and trademark bills. Although, Upper House of Myanmar voted in favor of Patent and Design Bills however, the bills cannot be enforced unless approved in Lower House.

There are good chances of Copyright Bill and Trademark Bill to be enacted within a year.  Therefore, in light of such developments, companies must start building strategies to protect their IP rights.

Understanding of GI

Geographical indication means goods which originate in particular territory of a country, region or a locality in that territory, with special quality, reputation or other characteristics of the goods is essentially attributed to its geographical origin.

Benefits of new laws

It is expected that the changed laws in Myanmar will promote economic development of the country as the said bills are expected to modernize IP rights protection in the country and such amended laws for Geographical indications (GIs), which are collective intellectual property rights shall ensure legal protection for farmers and handicraft producers against cheating. Additionally, these Laws will protect consumers against misleading information or bad quality products with signs that indicate a specific geographical origin with distinct qualities or reputation.

Therefore, Such changes in laws would help in building a strong IPR regime in the country, thereby escalate investment. Bills on IPR laws would provide steady protection to inventions, products as well as trademarks and tradenames.

Author: Ms. Deepika Sharma, Sr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  deepika@iiprd.com.

References:

[1]https://www.mmtimes.com/news/how-far-has-myanmar-progressed-towards-intellectual-property-protection.html

[2]https://www.mmtimes.com/news/mps-bone-intellectual-property-rights.html

[3]https://unctad.org/meetings/en/Presentation/aldc2014-12-11_Myanmar.pdf

Apple Fights Qualcomm Patents With 5G And National Security Claims

Apple and Qualcomm’s long battle over patent licensing fees has taken a surprising turn due to 5G and national security concerns.  The International Trade Commission hearing in Washington, D.C may block the import of certain iPhones that allegedly to violate Qualcomm patents.

A very peculiar claim by Apple says that banning iPhones made with patent-infringing Intel modems might threaten United States national security.   Apple makes iPhones that alternate between Qualcomm and Intel modems, a ban affecting only Intel’s modem would increase Qualcomm business. In new generation iPhones the performance of Intel’s 4G cellular chips are not as good compared to Qualcomm’s processor but Apple have relied upon Intel’s modem because of differences over Qualcomm’s patent licensing fees. Intel is working on developing 5G modems at this point of time which can put US ahead of China  in the race of 5G. So hurting Intel’s modem sale might affect the country’s national  interest.

The gist of the lawsuits : Apple is saying that Qualcomm abused it’s monopolistic market position and charged the company  five times more in payments than all other cellular patent licensors they have agreements with,  combined, relating to baseband processors used in iPhones. The legal tussle between Apple and Qualcomm seems far from over but Qualcomm has high hopes that a victory will give it an edge in patent royalty negotiation with Apple which it has perceived  as a very challenging customer.

Qualcomm denies that any wrong has been committed  and slams Apple on numerous accounts. It also accused Apple  of “giving government agencies false and misleading information and testimony” about the company, and for interfering with contracts it has with “manufacturers of Apple’s cellular devices.” In addition to this Qualcomm claims Apple has intentionally misrepresented the performance of iPhones with it’s modems.

It’s not fair to blame Apple for wanting to break away from the monopoly of Qualcomm on iPhone modems, and Qualcomm obviously wants to be omnipresent in the hands of maximum number of people .

Whatever be the result, our phone isn’t as good as it could be because of a very ugly corporate tussle.

Author: Ms. Tanuja Prasad, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@khuranaandkhurana.com.

References:

[1] https://mashable.com/2017/04/11/qualcomm-suing-apple-affects-iphone-quality/#aat2fi8tpPq3s

[2] https://blog.ipleaders.in/ip-licensing-agreements/

[3] https://www.techiexpert.com/qualcomm-vs-apple-legal-fight-on-nsg-and-5g/

Copyright Societies And The Copyright (Amendment) Act, 2012

Introduction

Copyright Societies are formed to collectively administer the work in order to protect its copyright, these societies are formed and managed by authors and owners of such works. It is not practically possible for every author or owners to keep a track of all the uses of their work. When a person becomes a member of national copyright society, his work is being kept under better vigilance and track of all the uses of his work are kept strictly because of the powers and facilities granted to copyright societies, also, collection of all the royalties for the usage of the work becomes easier. Moreover, our country being a member of the international conventions, the Indian copyright societies have a chance to collaborate with foreign societies and this facilitates the collection of royalties in those countries for usage of the work as well. It is therefore, in the interest of copyright owners to join copyright societies to get maximum economic benefit of their works.

Copyright Societies in India

In India a copyright society is registered under Section 33 of the Copyright Act, 1957. Such societies are formed by authors and owners and only one society can be registered to do business in respect of the same class of works. Formation of a copyright society requires minimum of seven members.

The business of providing licence for any dramatic, artistic, musical or literary work incorporated in cinematic or sound recording form should be carried out only through a copyright society duly registered under this act. The period for registration granted to a copyright society is five years and it can be renewed bore expiry of this period or at the end of it.

Effect of Copyright (Amendment) Act, 2012 on Copyright Societies

The Copyright (Amendment) Act, 2012  (2012 Amendment) came into force with the primary objective of establishing an equitable and just framework for administration of copyright and sharing of revenue to protect the rights of owners and authors incorporated in cinematography and audio recordings.

The amendment of 2012 added to the burden with respect to “issuing or granting licence” in respect to the above mentioned works. Previously, the Copyright (Amendment) Act, 1994 added Section 33 to the Act which made it mandatory that only copyright societies can grant licence or issue copyright licence. As a part of the 2012 Amendment, section 33(3A) was added, which laid down a new guideline that any copyright society carrying out the business of granting or issuing copyright licence must register itself again within the period of 12 months from the date of the amendment. Therefore, any copyright society which existed prior to the amendment has to re-register itself within the given time frame. Also, there was no punishment prescribed in case any copyright society fails to do so.

Problems with the Amendments in 2012 and 1994

There are always 2 sides of every coin. Though the attempt of government in the amendments was genuine, there are certain ambiguities that jeopardise the interest of non-author owners of a copyright in case of creative works. Section 33 which was inserted by the 1994 Amendment mandated only the copyright societies to carry in the business of “issuing or granting licence” for creative works. But, it does not say anything about the copyrightable work. Also, it has to be taken into consideration that Section 18 of the Act says that the owner of creative work can assign the copyright to any “person”.

Therefore, an owner or author has the right to assign his copyright to a production company and also has the right to assign it to any other person at the same time. So, in such a process, forming a copyright society is not necessary. However, a specific bar is created by Section 33 on any other person or entity who may be assigned any such right as stated in Section 18 to issue these licence as a copyright author or owner of a copyrightable work. The ambiguity is that only a copyright society has the right to get involved in business of issue of licence by virtue of Section 33, even when under Section 30 the copyright owner has the valid right licence a work. Section 30 and 18 are provisions of the act since it came into existence. The impact on these sections by Section 33 which was added later has not been clarified either by the statue or any of the amendments. It is still ambiguous as to whether Section 18 and 30 will prevail over Section 33 or not, this ultimately leads to high legal ambiguity while deciding the matters by the courts.

It is a mandatory for the production companies in the music and film industries to engage  third parties for collecting and licencing and for collecting public performance licences as well for collection of fees in that respect. Alternatively, there is an option to assign, in terms of Section 18, public performance rights to third-party collecting and licencing bodies who can monitor such right so as to ensure that no infringement of any copyright is done by the non-owners. The third party due to their specialization in such activities make sure that no infringement in any form is done in country like India with such a massive population.

A fine example of such a scenario is the case of Novex Communication (P) Ltd., a company, which as per its website, in terms of Section 30, is holding authorization as agents or is assigned with rights under Section 18 for administration of copyright and licencing purposes.

There is a presence of legal vacuum upon the interests of the third party licencing entities carrying out the work of issuing and granting licence in respect of creative works. The 2012 Amendment might have clarified the position with regard to the same but it has only added up to the ambiguity by providing a new sub-section (1) of Section 33. Now, according to this section, only a copyright society can carry out the work of business of granting licence for issuing or granting of any copyright with respect to any dramatic, artistic, literary musical or artistic work incorporated in a film or sound recording. This proviso leaves bodies like Novex on an uncertain footing legally.

Conclusion

Copyright societies which are formed for a specific purpose of granting/issuing licences for usage of any artistic work are being put up at a more ambiguous position after the 2012 amendment. This ambiguity has not being resolved by any judicial pronouncement till date. There are few judgement by some High Courts on the said issue but they too are contradictory and indecisive. Given the developing stage of the copyright laws in India, there are high chances that the subsequent licencing disputed will allow High Courts and even Supreme Court to interpret the law and lay down proper position in order to avoid any form of ambiguity.

Author: Mr. Akash Gupta, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@khuranaandkhurana.com.