Indonesia: Amendments in Geographical Indications law &Trademark law

Indonesia: Amendments in Geographical Indications Law &Trademark law

 

October 27, 2016 was the day when the Indonesia Government passed the new law related to both trademarks and Geographical Indications [1] which will replace the Old Trademark Law (Law No. 15 of 2001 on Trademarks) and expected to be enacted soon after the assent from the President. Lots of amendments related to registration, protection and enforcement have been incorporated into the new Geographical Indications and Trademarks law.

 

The amendments in the new Trademark Law can be categorised as [2]

 

  • Prosecution— Process
  • Prosecution—Substance
  • Enforcement (Litigation)

 

Few amendments are yet to become effective and will take a year or so for their effectiveness. Therefore, it is sure that more changes will be visible in future as far as the Trademark law is concerned.

 

The below detailed description provides you brief details about the changes in the new trademark law:

 

(a) Prosecution—Process [3]

 

  • It is now possible to electronically file trademark applications. In other words filing new trademark applications is no longer illegal.

 

  • There is no need to submit signed copy of Statement of Entitlement forms at the time of filing of trademark application. Upon submission of a trademark application form along with the depiction of the trademark with stipulated fee, the respective trademark will be granted a filing date. However, the previous practise of submitting the mentioned documents is still prevailing.

 

  • Another amendment in the procedural stage of the prosecution is that the opposition period will now take place before substantive examination. Therefore, once the trademark application has been filed, they will proceed immediately to publication for a two-month opposition period. Previously, the opposition period was three months.

 

While these amendments were incorporated to fast track the examination & prosecution process, it also enables in increasing number of bad faith applications that are published for opposition and/or registered. Bad faith applications are an ongoing problem in Indonesia and previously, at least some of them were weeded out during the examination stage. Now, with publication taking place first, i.e within 15 working days after the filing date which means that practically every application that is filed will be published. Hence, it is of utmost importance that the whole prosecution (procedural) stage of the trademark application is monitored closely.

 

(b) Prosecution—Substance [3]

 

  • According to the new trademark law the definition of what can be included in a trademark has been somewhat expanded. Now, 3-dimensional trademarks marks, sound trademarks and holograms can be accepted for registration and filing in Indonesia.

 

  • A new amendment has been made in the law i.e. two additional criteria for rejecting a trademark application has been included. These two rejection criteria are (i) misleading or (ii) deceptive elements. Additionally, the new amendment states that a trademark application can be rejected based on an earlier-filed pending application.

 

  • According to the new law registration of generic trademarks is allowed only if they are combined with some distinctive elements.

 

(c) Enforcement (Litigation) [4] [5]

 

  • According to the new trademark law in litigation process a trademark cancellation action can now be performed based on a conflict with a prior geographical indication (GI) and/or traditional knowledge (TK) element.

 

  • According to the amendment additional provisions have been provided on preliminary injunctions. The target behind for incorporating such provisions in the new law is to increase their use. However, it remains to be seen if this will occur given the requirement, among others, for the plaintiff to pay a bond to the Court equal to the value of the allegedly infringing goods, which would be forfeited if the petition is not successful.

 

  • The new amendment has nearly doubled the penalties (criminal) for all types of infringement.

 

 

  • The new amendment establishes protection for unregistered but famous trademarks by specifically stating that such marks can form the basis of a trademark infringement claim or can be used to cancel a registered mark.

Additionally, applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

 

[1]http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_1.pdf

 

[2] “Indonesia: New Trademark Law.” Indonesia: New Trademark Law. IP Coster, 7 Nov. 2016. Web.

 

[3] “Indonesia’s New Trademark Law – An Overview of the Changes.” Indonesia’s New Trademark Law – An Overview of the Changes | Tilleke&Gibbins.N.p., 11 Jan. 2017. Web.

 

[4] Redfearn, Nick. “Indonesia’s New Trademark Amendments – a Summary.” Rouse – Indonesia’s New Trademark Amendments – a Summary. Rouse The Magazine, 3 Nov. 2016. Web.

 

[5] Lovita, Tania. “Indonesia’s New Law on Trade Marks and Geographical Indications.” Rouse – Indonesia’s New Law on Trade Marks and Geographical Indications. Rouse The Magazine, 31 Oct. 2016. Web.

 

 

Cambodia’s Intellectual Property

What is new in store for Cambodia’s Intellectual Property?

 

There are some recent developments in Cambodia as far as the IP of the country is concerned [1]. Out of these developments two of them have been major.

 

The first amendment came into existence on November 25th2016 [2]. The change was that the Cambodian kingdom Government to the Geneva (1999) Act submitted its instrument of Accession related to the Hague Agreement which is concerned with the global Registration of Industrial Designs [3].The above mentioned Geneva (1999) Act became effective on February 25th 2017 in Cambodia and enables the Hague System users to assign Cambodia in an application of international design.

 

The second amendment came into existence on January 23rd 2017[4] when Cambodia signed an agreement of validation with the European Patent Organization (EPO) and became the first country in Asia to do so. This change will be effective once it is incorporated and adopted into the law of kingdom of Cambodia, possibly by July 1st 2017. Based on this amendment, the European Patent applicants will be able to submit in future a request for validation in the kingdom of Cambodia, where the European Patent will have the same value and effect as a Cambodian national patent application and will be subjected to national law. The 2 major amendments discussed above will now be discussed in more detail below.

 

  1. Cambodia Following the Hague System

After submitting its instrument of Accession related to The Hague Agreement by the Cambodian kingdom Government to the Geneva (1999) Act, Cambodia is now a part of Hague system. This enables the Hague System users to assign Cambodia in an application of international design. The 1999 Act came into effect in Cambodia on February 25th 2017. Just like the Madrid protocol for trademarks, this system enables the applicants for obtaining multiple registrations on the basis of one single International application filed with World Intellectual Property Organization (WIPO) [5].

There are few other South-East Asian countries other than Cambodia which are a part of the Hague convention which includes inter alia Brunei and Singapore [6]. This move by Cambodian government has and in future will motivate other nations to also become a part of the Hague convention; as such a step is an economy booster for the participant country.

 

  1. Cambodia-EPO Validation Agreement

History was made on January 25th 2017, when the kingdom of Cambodia became the first Asian nation to sign an agreement of validation with the Patent Organization of Europe (EPO). This agreement will be effective possibly from July 1st 2017 as mentioned above and will be a part of Cambodian law. There are 38 European countries (“member states”) which are member of the EPO till date [7]. The EPO was set up for facilitating the members with a single procedure for granting of patents. There are, from 2010, some non-member nations with which the EPO has signed agreements of validation. These non-members are Tunisia, Republic of Moldova, Morocco, and now Cambodia. According to this agreement, once an applicant for a patent with WPO submits a request for validation in each or one of the chosen validation countries, the patent application can be extended to these validation states. In these validation states the European Patent will have the same value and effect as a national patent application and will be subjected to national law. Such a step by the Cambodian government will allow a boost in the businesses.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

[1] WATANABE. “Trends in Development and Issues Related to IP Systems in Three GMS Countries: Cambodia, Lao PDR and Thailand.” Trends in Development and Issues Related to IP Systems in Three GMS Countries: (n.d.): n. pag. InndsstIintUDteevEolofPImnetnetrAnnadtIisosnuaeslRReelaltaetdiOtonIsPASnysdtEAmrse Ian TShtrueedGieMs,S R Ciotusnutrmiees􀊢ikWanATAUNAnBiEv􀊣ersi9t5, 2011.

[2] “Cambodia Joins the Hague System.” WIPO – World Intellectual Property Organization.Wipo, 25 Nov. 2016.

[3] “The Hague Notification No. 131 Hague Agreement Concerning the International Registration of Industrial Designs Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.” TREATY/HAGUE/131: [Hague Agreement] Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs | Accession by the Kingdom of Cambodia. WIPO, 25 Nov. 2016.

[4] Office, European Patent. “Cambodia First Asian Country to Recognise European Patents on Its Territory.” EPO – Cambodia First Asian Country to Recognise European Patents on Its Territory. EPO, 23 Jan. 2017.

[5]”Hague – The International Design System.” WIPO – World Intellectual Property Organization.WIPO, n.d.

[6] “WIPO Singapore Office.” WIPO – World Intellectual Property Organization.WIPO, n.d.

[7]”European Patent Convention.” Wikipedia. Wikimedia Foundation, 31 May 2017.

 

 

Google AdWords Giving a Good Wallop to Trademark Law

Introduction

In this era of globalization, we use Internet on a regular basis in our daily lives. People are continuously trying to gain more profits and for this they sometimes adopt illegal practices for promotion of their goods and services. These practices include unauthorized use of a registered name or mark owned by their competitor. This misuse leads to infringement of rights of legitimate owner of the name or mark. A specific kind of software is generally used by search engines, called spider or crawler to gather information of web pages available on the Internet. In order to attract customers towards their websites, owners are continuously making use of “Google AdWords”, “Meta-Tags”, “Hyper- Linking”, “Deep- Linking”, etc.

The present article outlines relation between “Use of Google AdWords” and “Trademark Infringement”. Basically, Google AdWords are keywords to search for a particular category of goods and/or services required by a person. When a person types a particular keyword on a search engine, the search engine matches the keyword entered by the person with the Google AdWords of various web-pages, and accordingly displays the most prominent results. By using the competitors name and/or mark with various permutations and combinations, search engine results are effortlessly manipulated to lure the visitors to one’s website. Google AdWords are used to set the web links in a prioritized manner based on the queries of user. They act as a code for providing information about the web page, which helps in diverting Internet traffic to their websites, causing considerable commercial loss to the legitimate registered owner.

 

What is a Google Ad-Word?

Google AdWord is a successful and client capturing advertisement option that is also a misleading source with respect to the Trade Mark rights of a trademark owner. Google AdWords are basically keywords that are used by an advertiser of certain goods and services to advertise their products, wherein when a specified keyword is searched for, the search engine shows the advertisements/websites of various advertisers. Hence, in this way, Google AdWords are used to divert Internet traffic towards a particular advertisement/website. The keywords used, generally denote someone’s area of business. It is an intelligent system that highlights ads/website depending on the keyword search. Its use is very simple and Google is paid by the website owner for each and every click on their website. AdWords is a paid referencing service started by Google for business promotion.

 

Misuse of Google AdWords leads to Trade Mark Infringement

This is a very important question as to how the use of Google AdWords may lead to Trade Mark infringement. If a person selects any word to be used as an AdWord, which is either similar or identical to a third party’s trademark, does the person infringe the rights of the trademark owner?  It was held in the very famous Consim- Google AdWords controversy[1] that if these AdWords are used by the person which is similar or identical to the third party’s trademark, then this amount to diluting/tarnishing the goodwill or reputation of the third party as this creates confusion in the mind of the customers of the person whose trademark is allegedly infringed. Therefore, this should not be allowed and becomes a case of trademark infringement.

Let us understand this with the help of an illustration: Suppose ‘A’ is the registered trademark owner of certain brand. Now ‘B’ is using AdWords which is in competition to the business owned by ‘A’, and uses Trade Mark of A as one of the paid keywords in the Google Adwords. ‘B’ is therefore diverting the internet traffic towards his own advertisement by using Trade Mark of A such that when users search for A, advertisement of B would also be shown, thereby causing damage to the goodwill/reputation owned by ‘A’, which is not allowed under Trade Marks Law. Hence, selection of Google AdWords becomes very relevant in the eyes of Trademark Law.

A case, Matrix Cellular (International) Services Limited v TSIM Communication Services Private Limitedand IP Attorneys, which represents the plaintiff in the Delhi High Court, wherein the Plaintiff, Matrix Cellular (International) Services Limited, is the proprietor/ owner of the trademark MATRIX since 1995 in respect of ‘International roaming Sim cards’. The defendant is accused of dishonestly using plaintiff’s trade mark i.e. MATRIX as Google AdWords to divert the users to their website by creating a confusion in their minds. The Court recognized that the defendant has engaged in dishonestly using Plaintiff’s trademark to gain profits and the same has resulted in infringement of Plaintiff’s trademark, as a result of which the Court was pleased to grant an interim injunction in the favor of the Plaintiff.

 

Exemplary Landmark Cases

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. [2]

In this case, Appellant was a private limited company that provided online matrimonial services. In the course of its business, it had adopted several trademarks including Bharat Matrimony, Tamil Matrimony, Telugu Matrimony, Assamese Matrimony, etc. It had registered several domain names with these word marks. The respondents, Google India and its parent company were in the business of offering an advertisement program called AdWords. It generates ‘Sponsored Links’ on the right-hand side of any organic search results produced by Google, closely corresponding to the term searched for.

Google allows the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, more the chances that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of other players in their business to catch the attention of user and thereby divert the business meant for such other players. The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWords Program and Key Word suggestion Tool. It also restricted Google from passing off their services using the appellant’s trademarks and their closely resembling variants. The issue in question was whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.

Madras High Court thus concluded that the appellant had made a prima facie case and the balance of convenience lied in its favor and thus eventually granted an injunction.

  1. Rescuecom Corp. v. Google Inc. [3]

This is a very interesting case where the main question before the court was whether the use of trademark as keywords amount to Trademark infringement. The US Court of Appeal held that the use of trademark as keywords can be equated to the use of trademark as Meta –Tags. Therefore, Google was held liable for using the trademarked words in its Keyword Suggestion Tool. [4]

Conclusion

Thus, summarizing, use of Trademarks as a Google AdWords can be allowed if it comes under fair use, otherwise the same is restricted. Google is everywhere and it is estimated that approximately 80-85% of the world’s population uses it. If a person wants to mislead someone from the actual website of the proprietor to the impugned one it is the best platform available. Thus, customers are lured and are often misguided by the person violating by increasing the traffic and demand towards his/their website. The use of such Google AdWords is entirely dependent upon the facts and circumstances of case. Google AdWords being special keywords are embedded in web-pages and are often used by search engines in deciding the relevant websites to show in a search result. Therefore, the unfair and illegal use of the Google AdWords with respect to the Trade Marks leads to the Trademark infringement and irreparable damage to the legitimate owner. Choice of keywords becomes very important in this regard otherwise it would lead to infringement of other person’s rights. The concept of Google AdWords in relation to Intellectual Property should be understood and their misuse should be prevented.

About the Author: Ms. Yogita Agrawal, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

 

References

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2013 54 PTC 578 (Mad).
  2. 2013 54 PTC 578 (Mad).
  3. 562 F.3d 123 (2nd Cir. 2009).
  4. Mattel Inc. and Others vs. Jayant Agarwalla and Others 2008 (38) PTC 416; Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors. C.S. (OS) No.1155/2011.

Global Innovation Index Ranking 2017

On June 15 2017 WIPO has launched global innovation index containing worldwide ranking in term of innovation of year 2017.[1] The theme of the GII 2017, “Innovation Feeding the world,” looks at innovation carried out in agriculture and food system. Switzerland, Sweden, the Netherlands, the USA and the UK are the world’s most-innovative countries, while a group of nations including India, Kenya, and Viet Nam are outperforming their development-level peers.

India holds rank 60th this time. Although improving its rank 66th of previous year but still a long run to go. Switzerland and Sweden maintained their rank 1 and 2 respectively of previous year, this year also. UK dropped down from rank 3 to 5. Switzerland maintained rank from 7 consecutive years now. It has been found that slow and steadily India is emerging as innovation center in Asia.

Global Innovation Index is one of the leading benchmarking tool for business executives, policy makers and others seeking insight into the state of innovation around the world. The Global Innovation Index (GII) aims to capture the multi-dimensional facets of innovation by providing by providing a rich database of detailed metrics for 127 economies 0n the basis of metrics, from patent filing to education spending that provide decision makers an upgraded eye on innovation activities that help those countries to increase their economy and social growth.

The aim of GII is to note a continued gap in innovative capacity between developed and developing nations and lackluster growth rates for research and development (R&D) activities, both at the government and corporate levels.

 

“Innovation is the engine of economic growth in an increasingly knowledge-based global economy, but more investment is needed to help boost human creativity and economic output”.

“Innovation can help transform the current economic upswing into longer-term growth.” said WIPO Director General Francis Gurry to the press in press conference regarding the release of Global Innovation Index ranking.[2]

The GII 2017 is calculated as the average of two sub-indices. The Innovation Input Sub-Index gauges elements of the national economy which embody innovative activities grouped in five pillars:

(1) Institutions

(2) Human capital and research

(3) Infrastructure

(4) Market sophistication

(5) Business sophistication. The Innovation Output Sub-Index captures actual evidence of innovation results, divided in two pillars

(6) Knowledge and technology output

(7) Creative outputs.

Global Innovation index recognize the key role of innovation as a driver of economic growth and prosperity, and the need for a broad horizontal vision of innovation applicable to developed and emerging economies, the GII includes indicators that go beyond the traditional measures of innovation such as the level of research and development.

About the Author: Mohini Sharma, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

[1] Global Innovation Index 2017. (2017, June 15). Retrieved June 16, 2017, from https://www.globalinnovationindex.org/gii-2017-report

[2] Global Innovation Index 2017: Innovation Feeding the World. (2017, June 15). Retrieved from https://www.youtube.com/watch?v=2DPdOZjqYFM

Geographical Branding for the Mangoes from Guimaras (Philippines)

Guimaras, touted as the “Mango Capital of the Philippines”, celebrated its Manggahan Festival in May 22nd this year.[1] In fact no one will dispute if Guimaras is proclaimed as the “Mango Capital of the WORLD”, considering their sheer love for the sweet fruit, evident by the consumption and sale of varied items of mangoes, ranging right from ‘Mango Pizzas’ to ‘Mango Ketchups’!

But shifting attention from the region to the actual fruit, the reportedly (believed to be) ‘sweetest-variety’ Mangoes from the region, as reported by Manilla Bulletin[2], have finally been granted a Geographical Indication tag which will boost its export which had dwindled in the past few years owing to erratic weather conditions[3] Manila Bulletin’s report was further confirmed by the Western regional director of Department of Trade and Industry (DTI) of Philippines, Rebecca Rascon.

The GI tag provides protection to the unique native products originating from that particular region in the country and therefore certifies that the mangoes are grown and produced by members of Guimaras Mango Growers and Producers Development Cooperative. The move will surely go a long way in protecting the reputation of Guimaras Mangoes from “fake” and low quality mangoes, meanwhile also ensuring the label of ‘Guimaras Mangoes’ are no longer used by other producers to sell and earn profits from; and that the consumers are buying real Guimara mangoes only.

DTI’s Intellectual Property Office of Philippines (IPOPHL) was responsible for processing the registration of Guimaras mangoes as one of the country’s native products with geographical branding.[4]

The launch of the GI tag was the highlight of this year’s Manggahan Festival, which ended on May 22. The mango festival also coincided with the 25th founding anniversary of Guimaras, which was previously part of Iloilo province.

Guimaras Governor Samuel Gumarin, meanwhile has established Task Force Golden Island to strongly enforce and make sure that non-Guimaras mangoes are not sold in the local market.

About the author : Abin T. Sam, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] A. French, Lillberth. ‘New record in Manggahan ‘eat-all-you-can’. Philippines Information Agency. http://pia.gov.ph/news/articles/931495529552 (accessed on 16th June 2017).

[2] Yap, Tara. ‘Guimaras mangoes earn geographical branding’. Manila Bulletin. http://newsbits.mb.com.ph/2017/05/20/guimaras-mangoes-earn-geographical-branding/ (accessed on 27th June 2017).

[3] Santos, Maricyn. ‘GI seal protection from fake Guimaras Mangoes’. Banner News. https://thedailyguardian.net/banner-news/gi-seal-protection-fake-guimaras-mangoes/ (accessed on June 2017).

[4] ‘Guimaras gets IPO GI seal for sweetest mangoes’. Philippines News Agency. http://www.pna.gov.ph/articles/986928. (accessed on 16th June 2017).

Headline: Dealing with John Doe Orders in India

Standfirst: In an effort to reduce piracy, the media and film industries are increasingly seeking John Doe orders against internet service providers, illegal unlicensed distributors and cable operators, say Amruta Mahuli, Abhijeet Deshmukh and Abhishek Pandurangi of Khurana and Khurana.

Pullquote:

“The injunctions on blocking of entire websites ought not be granted ‘unless it is demonstrated that the entirety of the website contains, and contains only, illicit material’.”

 

With one of the largest multimedia industries and consumer bases in the world, India’s media law jurisprudence has always attracted interest. Accordingly, in 2003 Indian finally entered the “John Doe orders era”, or the “Ashok Kumar orders era” as it is referred to in the Indian Judiciary context.

In 2003 the Delhi High Court in the case of Taj Television & Anr v Rajan Mandal & Orsfor the first time passed an exparte interim order allowing the plaintiff to search and seize equipment and devices of unknown defendants, thus starting the jurisprudence of passing orders against John Does/Ashok Kumars. While the Taj Television judgment was considered sketchy when it came to the implementation and formulation of directions for execution, the Indian courts have, in the past decade, evolved to deal with IP infringement instances.

Legislative background

The John Doe orders jurisprudence in India is still considered in its developing phase wherein the Indian judiciary and legal system are making a conscious effort to improve and evolve their laws with technology. John Doe orders in India are governed by Order 39,rules 1 and 2 of the Civil Procedure Code, 1908 (CPC), read with section 151 of the CPC and the provisions of the Specific Relief Act,1963 related to permanent injunctions.

Therefore, as prerequisites to procure John Doe orders, plaintiffs need to prove the prima facie case, with the balance of convenience and potential damage, while establishment of proprietary rights of the owner is mandatory. The Indian courts often rely upon the following John Doe order factors in the 2003 case Bloomsbury Publishing Group v News Group Newspapers:

“First, the claimant needs to demonstrate that he has a good arguable case against the defendant. The stronger the order, no doubt the stronger that case should be. Second, the order has to be in terms which clearly state what the defendant must and must not do. Third, it must be possible to identify the defendant against whom the order is sought. Fourth, it will only be effective against a person who, when made aware of the terms of the order, will understand that it applies to him.”

Having said that, there are certain intricacies involved, such as execution of orders in the light of technical limitations, and jurisdiction issuesaround the name of John Does identified merely on the basis of a numerical IP address, which may not actually fall within the court’s jurisdiction.

Implementing John Doe orders

In an effort to reduce piracy and its menace, the booming media and film industries have welcomed this change with a warm embrace, seeking John Doe orders for numerous movies against internet service providers (ISPs), illegal unlicensed distributors and cable operators.

On the other hand, some Court dictums have also attracted criticism for their overreaching effect. Such was the case in Star India v Sujit Jha and Ors, where the Delhi High Court passed a pre-emptive order to block 73 websites in their entirety meeting out the prayer by the plaintiff under the guise that: “It is extremely easy for the website to provide access to the blocked content through another URL since a mere change of a character in the URL string will result in a completely new URL.

“Consequently, it is extremely easy for a website to circumvent and thus nullify any order that directs blocking of specific URLs since such websites can very easily provide access to the same content by merely changing one character in the URL string. Thus, unless access to the entire website of the named and unnamed defendants is blocked, there is no alternate and efficient remedy that is open to the plaintiff.”

On appeal, the Divisional Bench of the Delhi High Court narrowed the scope of the order by restricting the blocking of certain URL links rather than the entire websites, but a bit too late—only after conclusion of the relevant sports series.

On another front, the Bombay High Court set out the protocol for the execution of John Doe orders against ISPs in the case Balaji Motion Pictures & Anr v Bharat Sanchar Nigam & Ors. The plaintiffs in this case were directed to serve a public notice stating the crux of the case and order passed by the court to the defendants, thus providing “sufficient service” to the defendants allowing them a period of four days to apply against the grant of injunction.

Denying excessive and unreasonable requests by the plaintiffs against John Doe defendants in the Dishoom case, Justice Patel strongly dissented with the plaintiff’s plea for blocking of access to 134 URL links that mostly were web addresses for entire websites, thus engraving a strong precedent that the injunctions on blocking of entire websites ought not be granted “unless it is demonstrated that the entirety of the website contains, and contains only, illicit material”.

On the other hand, the concerns raised by Justice Singh in Star India regarding setting up of illicit links on a differently named website or on the same website under a hidden or misleading HTML link or tag do not appear far from the truth as well.

The plaintiff in most cases procures the said order with the hope of prohibiting piracy of its films through various portals such as popular streaming websites, while on the other hand, the ISPs complain of web policing; finding the right balance and setting out strong precedents is therefore what the Indian judiciary is currently focused on.

Judicial guidelines

In 2016, the Bombay High Court in the case Eros International and Anr v BSNL & Others extended the requisite guidelines, not just for the executing authorities but also for the jury and the plaintiff, to deal with unidentified defendants, especially ISPs and anonymous bloggers who violate the piracy laws.

The court has instructed copyright holders to verify and authenticate the allegedly illicit links prior to requesting their blocking, while advocates and general counsels are mandated to verify these links again. Last, enforcing Order 39,rule 1 of the CPC, the plaintiff is mandated to submit all the material before the High Court as an affidavit on oath.

The court also issued guidelines to be followed by the courts while issuing a John Doe order: they are advised to review the list and verify its authenticity or delegate a neutral third party to do so. The ISPs are instructed to display a message on the blocked webpage that includes the particulars of the case and reason for blocking, the address of the copyright holder and a statement that any aggrieved person, including the viewers, may approach the court with atleast 48 hours’ notice to the advocates of the plaintiff.

This judgment also narrowed the validity of the block to 21 days, after which the plaintiff would be required to approach the court and obtain an order for extension of the ban.

Policing guidelines

With more and more John Doe orders being sought by media houses, the reality of how badly the media industry is affected by such piracy is evident, but courts are pressing towards the balance against arbitrary and unreasonable relief. Plaintiffs may reasonably limit their request for the relief sought, and the legislative and executive authorities may take a step further and establish regulatory commissions to police selected websites that are suspected of some infringement rather than completely shutting them down.

In the case of Reliance Big Entertainment v Jyoti Cable Network & Ors, the court asked the police to assist the film production companies to curb piracy without any norms or guidelines, thus granting excess discretion for the enforcing authorities which may stand to Constitutional scrutiny.

While such judicial activity spells trouble for illicit web users and websites promoting piracy, there is a new market for online entertainment platforms and streaming services where one can stream videos at a nominal cost or in some cases no cost at all. Unlike sites where there is a risk of pirated videos being uploaded, these services stream only pre-recorded or live videos and have obtained requisite licences from distributors, thereby stifling piracy.

The substantial urban population in India, who once habitually streamed and downloaded videos, books and songs online from illicit sources, are now opting for the safe sources, which guarantee good quality. Indian society and courts are trying to travel away from piracy, and although the destination seems far away, quite a distance has been covered.

Authored by:

Amruta Mahuli is an Attorney-at-law at Khurana and Khurana. She can be contacted at: [mumbai@khuranaandkhurana.com]

Abhijeet Deshmukh is an Attorney-at-law at Khurana and Khurana. He can be contacted at: [abhijeet@khuranaandkhurana.com]

Abhishek Pandurangi is a partner at Khurana and Khurana. He can be contacted at: [ abhishekp@khuranaandkhurana.com]

IIPRD among top 100 Intellectual Property Blogs- FEEDSPOT

IIPRD, with great pleasure, is happy to announce that it has been ranked as one of the top 100 Intellectual Property Blogs writer from thousands of top Intellectual Property Blog writers on IP, Patents, Trademarks and Copyrights by Feedspot.

IIPRD strives to ensure delivering and providing insights to the IP industry continuously and extensively to help their clients, International Law Firms as well as stakeholders to keep them updated/aware about the updates, analysis and insights to the recent happenings in the IP domain across various jurisdictions.

IIPRD is a premier Intellectual Property Consulting and Commercialization/Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to International Corporates.

Being ranked among the Top 100 Intellectual Property Blog writers, we would like to extend our gratitude to all our readers, netizens as well as IP stakeholders, helping us to evolve day by day and continue to create benchmarks in the industry.

IIPRD look forward to continue with our sincere efforts in contributing knowledge and excellence to stakeholders across the industry.

NPDC Supplementary Details

Patents are a major area of business proficiency nowadays and recently in India too, it has become as important as marketing, finance, corporate governance, and manufacturing economics. India’s growing R&D operations have taken a beating due to lack of in-house professionals to file patents applications. Even then, the numbers clearly indicate that there is a great deal of patenting activity going on among companies across India. Patent Specification, besides being the most important document in the entire patent registration procedure, is also considered to be one of the most complex Techno-Legal documents. Drafting of Patent Specification is a device of great importance and thus should not be left to a layman to design it. It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words may prove tricky when the draft-person is an amateur. Unclear and indefinite languages used in the specification are always likely to draw competitors, or any person concerned to invalidate or oppose the patent or the patent application. And not only is the language significant, satisfying the requirements of patentability is equally vital.

And here is exactly where the National Patent Drafting Competition (NPDC) plays a crucial role in bringing greater awareness and respect for Patents in a coveted and competitive way. NPDC through its nationwide reach will aim to promote development of Patent Drafting as a Skill Set, encouraging more and more technical people to take up Patent Drafting as a Professional Competency and also identifying and honoring Top Patent Drafters in the Country. This initiative of NPDC comes with an earnest effort by IIPRD, its associates, leading sister Law Firm, Khurana & Khurana IP and Attorneys (K&K) and Sughrue Mion. Other partners serving us in this endeavour are TIFAC, PAAI, Spicy IP, IBLJ and Lex Witness.

NPDC commences on 1st of August 2017, when IIPRD and K&K will put forth on their respective websites (www.iiprd.com and www.khuranaandkhurana.com) three invention disclosures, one each in three different domains (Electronics/ Hi-Tech, Mechanical and Chemistry/Pharmaceuticals). The NPDC will be active till 20th August  2017, within which timeframe, Eligible Participants would need to write Complete Patent Specifications (along with Drawings, if applicable) which complies with the Indian Patent Act. Please note that one participant can file only one Patent Specification which will be one domain of his choice.

Complete details of the modus-operandi of the Competition can also be seen here.

Any Practitioner having a Technical/Science Background is eligible to participate in the Competition. So for instance, the Participant could be a student, a practicing Attorney, an in-house counsel, a scientist, a faculty, or any other stakeholder having a technical qualification.

In order to enable serious participants to submit their specification, a small Participation Fees of INR 1000 (USD 50) is to be submitted by each participant, which can either be paid by means of Bank Transfer or though a DD or a Cheque in favor of “IIPRD”. The Draft should reach IIPRD’s Office by 20th August 2017.

 Drafted Patent Application can be sent to Competition@iiprd.com or can be sent in Hard Copy to IIPRD’s, Greater Noida Office. In either way, drafted patent applications should be received by IIPRD on or before 20th August 2017.

Evaluation of the Drafts would be done collectively by representatives from each International Law Firm and Khurana & Khurana, IP Attorneys, coordinated by IIPRD. Their collective decision on selection of the Winners will stand final and shall not be open to change in any manner. The Winners will be decided based on a combination of numerous factors (such as flow of the Specification, Scope covered through embodiments, Claim drafting strategy and Accurary of technical coverage).

On 1st September 2017, two winners for each technology domain would be announced on the websites of IIPRD and K&K.On around 28th September 2017 (to be confirmed soon), during the 3-Days International Pharmaceutical Patent Conference being organized by IIPRD at Hotel Hilton (Andheri East) Mumbai, prize distribution of the winners would take place form 1700 hrs to 1800 hrs, wherein the first winner for technology domain would be given a price of Rupees One Lakh Only (INR 100000) or USD 2000, and the second winner for each technology domain would be given a prize of Rupees Fifty Thousand Only (INR 50000) or USD 1000.

For any of your query/question, please feel free to write to competition@iiprd.com, and/or call 0120-4296878/2342010 and speak with Mr. R. Srinivas.

Exclusions in Patentable Subject Matter in Malaysia

Malaysia’s Patent Act similar to other countries jurisdictions excludes certain subject matter from protection under patent. Such subject matter is defined under section 13(1) of Malaysia’s Patent Act.

The Malaysian patent law uncovers some of the non-patentable subject matter relevant to the life sciences industry in Malaysia. This non-patentable subject matter in Malaysia affects the life sciences industry. Some of the related examples are: discoveries and scientific theories; plant or animal varieties or essentially biological processes for the production of plants or animals; methods of treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body. [1]

The Malaysian IP office (MyIPO) for its Interpretation and application of sections 13(1)(a) and 13(1)(b)  is highly influenced by European Patent Convention (EPC) 2000 and European guidelines for the lawful protection of biotechnological inventions.

Section 13(1)(a)

It relates in general to discoveries. Although, Malaysian patent law does not provide protection for discovery of new species, but it is possible to protect the composition/methodology of an extract obtained from new species, if it fulfills the patentability requirements.[2]

Section 13(1)(b)

It states that flora or fauna varieties or essentially biological processes for their production, other than man-made living microorganisms as well as microbiological processes and products of such processes, cannot be patented. To provide protection for new plant species, likely to Europe, Malaysia has also followed a “sui generis system”. Thus, since October 2008, the “Protection of New Plant Varieties Act 2004” is in force. [2] [3]

Practical observation on MyIPO’s interpretation and application under section 13(1)(b) in lieu with animal varieties shows that it is highly influenced by European Patent Convention 2000 and the directive 98/44/EC. [2]

Solutions

EPC 2000 provisions were followed by MyIPO to interpret and apply the provisions of section 13(1)(d) for treatment and diagnosis methods which would be beneficial for the pharmaceutical and medical. The section 13(1)(d)’s subject matter interpretation for exemption under protection has been expanded in Chapter IV, point 3.5 of MyIPO’s Guidelines for Patent Examination (October 2011).

Under section 13(1)(d), it’s been stated that all non-therapeutic treatment methods are patentable whereas surgical or therapy based treatment methods are exempted from protection. It covers all the cosmetic methods and methods which are practiced on human or animal body. Cosmetic methods includes straightening/waving of hair or any other cosmetic application on human body for the cosmetic purpose. [4]

Additionally, technical methods of measuring/recording human characteristics which have an industrial application can also be protected under MyIPO. MyIPO doesn’t allow the biological characters to be patentable. For example, artificial manufacturing of prosthetic limbs, different diagnostic scanning approaches are allowed to be protected under law. Furthermore, diagnosis approaches which involve alive organism for analyzing information that produces intermediate results and does not directs a treatment decision also patentable. [4] [5]

Similar to EPO, MyIPO believes the theory that curing any disease is same as its treatment by therapy, based upon this theory MyIPO excludes the prophylactic methods from the patentable subject matter. [3] [4]

Rooted from European Patent Convention provisions, MyIPO does not exempt apparatuses used in treatment or diagnosis from a patentable subject matter which implies that surgical, therapeutical or diagnostic equipments can be claimed. Through this insight, substances/compositions used for treating a disease if claimed are patentable. [2] [4]

Inspite of the fact that generally “treatment methods” claims are not patentable in Malaysia, still it’s possible to acquire protection over such methods through Malaysian IPO. Malaysian IPO permits to pursue patent over few types of purpose-limited products. These purpose limited products uses medical usage of claims. [4]

About the Author :Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

REFERENCES

[1] Ramachandran, Sumah. “PATENT PROTECTION IN MALAYSIA – A BASIC GUIDE.” PATENT PROTECTION IN MALAYSIA (n.d.): n. pag. http://www.bioeconomycorporation.my. BIOTECHCORP, 23 Dec. 2011.

[2] Office, European Patent. “The European Patent Convention.” Article 53 – Exceptions to Patentability – The European Patent Convention, Convention on the Grant of European Patents – (European Patent Convention), Part II – Substantive Patent Law, Chapter I – Patentability. Espacenet, n.d.

[3] “Malaysia.” Malaysia: Protection of New Plant Varieties Act 2004 (Act 634). WIPO, n.d. Web.

[4] Rights, Journal Of Intellectual Property, and Asif E. “Exclusion of Diagnostic, Therapeutic and Surgical Methods from Patentability.” Exclusion of Diagnostic, Therapeutic and Surgical Methods from Patentability 18.May 2013 (2013): 242-50. Journal of Intellectual Property Rights, 8 Apr. 2013.

[5] RAMACHANDRAN, Suman. “PATENT REGISTRATION PROCEDURE IN MALAYSIA.” BIOTECHCORP, 10 July 2009. Web.

MyIPO allocates Fund for students

A fund of RM 500,000 has been allocated by the Intellectual Property Corporation of Malaysia (MyIPO) for school and university students in the country to register their Intellectual Properties (IP), said Domestic Trade, Cooperatives and Consumerism Minister Datuk Seri Hamzah Zainudin.[1]

The ministry had been strongly encouraging the students to be creative and to patent their products before being commercialized. “The cost to register intellectual properties is very high, which is RM 1,500 and that is why we are allocating a special fund. We will assess all applications to register the intellectual properties via a new application.” he told[2] reporters after the closing ceremony of ‘IP Funtastic’ programme at SMK Sungai Bayor near Selama on April 29, 2017.

‘IP Funtastic’, the two day programme which was organized by MyIPO, aimed at creating imaginative and tech-savvy capitalists and saw a total of 30 students from various schools of the country participate in it. Students as well as teachers were exposed to application design technologies and websites via coding to develop their own IPs during the course of the programme. The same were then uploaded to ‘IP for Youngsters’, a portal and mobile application that gathers creative works by students in the country.

REFERENCES

[1] BERNAMA. “MyIPO Allocates RM500,000 For Students To Register Intellectual Properties”. bernama.com. http://www.bernama.com/bernama/v8/ge/newsgeneral.php?id=1351874 (accessed 22nd May 2017).

[2] BERNAMA. “MyIPO Allocates RM500,000 For Students To Register Intellectual Properties”. bernama.com. http://www.bernama.com/bernama/v8/ge/newsgeneral.php?id=1351874 (accessed 22nd May 2017).