Tag Archives: Google

Do Software Patents actually fall under the ambit of Section 3(k)?

Section 3k is often criticized for its ambiguity of the words “computer programme per se”. Though the Indian Patent Act doesn’t explicitly disallow software programs, a lot has been left to interpretation of the same, which in turn has been to many companies’ benefit. This article will analyze the patentability of software programs with support of a few cases.

Earlier in Accenture Global Service GMBH v. Assistant Controller of Patents & Design and the Examiner of Patents where applicant sought for a patent on a method to generate a data mapping document. The objection against the method’s technical effect being unidentifiable, the applicant submitted that the present claims recite “technical solution to a technical problem of need for a data document design system and design tools that addresses one of the most important technical challenges faced by database systems is data migration.”  After analyzing the inventions on merits, the Patent Office observed that the invention is not software per se, it is rather a system having web-services and software and thus, is not falling in the category of section 3(k) and patent was granted in May 2013.

In 2009, Facebook sought a patent on a method “for generating dynamic relationship-based content, personalized for members of the web-based social network”. The objections against the grant was ‘the method being nothing but an algorithm implemented through software thus falling under Section 3(k) and being non- patentable.’ The applicant contended that section 3(k) was not applicable in this case because the invention “implements a technical process and has a technical effect” and further went on to explain the intricacy of the method. These amendments to the claims satisfied the Patent Office’s objections and thus it granted the patent in February 2017.

Another patent was granted to Facebook on 25th April, 2017 “for a method of providing access to user profile data maintained by Facebook to third-party application“. Facebook submitted that “the present invention included hardware limitation and provided technical improvements and benefits like checking privacy setting associated with the user profile and based on the privacy setting the access is provided to the third party application and the third party application personalizes the user content data.” The Patent Office concluded that this doesn’t fall under purview of Section 3(k), and duly granted it a patent.

In Feb 2005, Google sought for a patent on an invention titled, ‘phrase identification in an information retrieval system’. One of the claims disclosed it to be a basic mathematical algorithm with the logical steps thus falling under section 3(k) of the Patents Act, 1970[1] and therefore not being patentable. However, Google reasoned that its invention is not an algorithm or a computer program per se, “but provides a technical solution to a technical problem of how to automatically identify phrases in a document collection”. It claimed that the technical solution i.e. the end product which is an index, stored in a memory consisting of related valid phrases, is inventive. On hearing the above submissions, the Patent Office concluded that it is “a technical advancement over the prior art” and thus granted it the patent in May 2017.

In 2009, Apple applied for a patent on a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. The objections against the invention was that it was merely a software program and thus falling within the scope of computer programs per se i.e., under the provision of section 3(k) of the Act. Apple submitted that the method “although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of hitherto known techniques.” Accepting this submission, the Kolkata Patent Office granted the patent.

It is pertinent to note that the ambiguity regarding the provision under section 3k was cleared by the CRI Guideline 2016, which provided that Patents on computer programs can be conceded if the inventor demonstrates that the invention incorporates a computer program “in conjunction with a novel hardware. However, the CRI guidelines have failed to explain the term ‘Novel Hardware’. Hence, the question regarding patentability of software still remains ambiguous. Also the position regarding the mathematical or business program remains the same, being a non-patentable subject matter. But looking at the practice followed by the Patent Office Office of granting the patents to softwares which can be considered as business method under section 3k of the Patent Act.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com and  info@khuranaandkhurana.com.


[1] http://www.iiprd.com/section-3-k-indian-patent-act-case-studies/

[2] http://ipindiaservices.gov.in/decision/830-CHENP-2009-29876/830chenp2009-GRANT.pdf

[3] http://www.financialexpress.com/industry/mark-zuckerbergs-facebook-gets-patent-in-india-for-creating-relationship-based-content/559789/

[4] http://ipindiaservices.gov.in/decision/6799-CHENP-2009-35703/6799-chenp-2009.pdf

[5] http://ipindiaservices.gov.in/decision/647-KOL-2005-36087/647KOL2005.PDF

[6] http://ipindiaservices.gov.in/decision/461-KOLNP-2009-36006/461KOLNP2009.PDF


Revolutionizing Gesture Recognition Technologies: Project Soli

Google has been a pioneer of a number of leading inventions and projects that have not only changed the way we perceive science and technology but has also made out lives easier and leisurelier. From Google Cardboard to Driverless cars to Google glasses, Google has never disappointed us when it comes to show casing its talent in the world of technology and innovation.

Have you ever fantasied of lowering the volume of your system or changing the time on your phone by making just tiny movements with you hands in air without even touching the screen, like Minority Report and Iron Man movies? Yes? Then Google’s next project has come as an answer to all your fantasies. In June 2015, Google, during it annual developer conference announced the world’s first radar based key technology project, Project Soli that would change the way shoppers interact with wearable devices.

About the project

Soli is a creation of Google’s research and development lab, ATAP (Advanced Technology and Projects), headed by Dr. Ivan Poupyrev, an award-winning scientist, inventor and designer in the field of design and technologies who is famous in blending the realities of digital and physical world. Mr. Poupyrev was Principal Research Scientist at the Walt Disney Imagineering research division.

Soli is a new sensing technology that makes movements or detects touchless gesture with the help of miniature radar. The entire sensor and antenna array is incorporated into an ultra-compact 8mm x 10mm chip (size of a finger-nail). The Soli chip can be embedded in wearable, phones, computers, cars and IoT devices in our environment[1]. Soli has no moving parts; it gets attached onto a chip and consumes little energy. The chip does not get bothered by light conditions and works through most materials.

The radars emitted by the chip, keeps a track of movements with sub-millimeter accuracy, helping you control the volume of a speaker, or dialing number in mid-air. Google’s Soli radars are so accurate that they not only detect the exterior of an object, but also its internal structure and rear surface, helping you to know what the thing is.

How does Soli work?

The Soli Sensor:

Project Soli is based on the concept of touchless interactions, which can be achieved with radar system. The device used in the project is RadarCat (Radar Categorization for Input and Interaction) and functions like any normal radar system. It is a small, versatile radar-based system to identify material and object classifications that help you interact with digital devices.

Think that you are walking in dark and you use torch to see the objects. The light beam that travels out from the torch, reflects off objects in front of you, and bounces back into your eyes, which helps you see the objects lying near you. RadarCat also functions in a very similar manner. The base units fires electromagnetic waves at its target, some of which gets bounce back and return to the radar antenna helping in detecting the movement and gesture of the hands.

It is just not the bouncing back of the radar that helps Soli in analyzing the hand movements, size, shape, orientation, material, distance, and velocity of the object but properties such as energy, time delay, and frequency also help in analyzing the work.

So in short, the radar base emits a broad beam of electromagnets, which in turn gets reflected because of the hand gestures. The sensor then receives motion of signals as a series of reflections, which in turn is detected by the radar chip and are transformed into multiple representations. From these representations, engineers can extract features, such as “range doppler distance”. The features are then passed to machine learning algorithms, which interpret them and approximate hand motions based on the signals received.[2]A device that is capable of classifying and interpreting gestures, perceives all the motion signals. For example:-

  • A pinching motion can indicate the press of a button.
  • Rubbing a finger along the length of a thumb can indicate moving a slider, say for volume control.
  • Pulling your thumb across your pointer knuckle simulates dragging a screen.

The radar sensors used in Soli does not require large bandwidth and high spatial resolution like the traditional radars. Rather Soli’s evaluation board has juts two transmit antennas and four receive antennas. It’s spatial resolutions rely on motion resolution that can be perceived by subtle changes from signals that are received over time. It is because of this signal variation that Soli can distinguish complex finger movements and deforming hand shapes within its field.

Limitations of RadarCat

  • RadarCat does occasionally confuse objects with similar material properties (eg. Glass of mirror or a class of a mug),
  • It takes longer to detect a hollow object as compared to the solid objects with flat surfaces.
  • It also needs to be taught how exactly each object looks like before it can recognize it.

How is Project Soli helpful?

The project Soli is futuristic interface that will forever change the way we use all the technological devices, and not just wearable. A smart watch with a Soli chip wouldn’t need a digital crown as you could just wave your fingers in the air to get things done. The work forth going by ATAP is not marvelous but commendable too as to how they transformed a briefcase size radar system into a fingernail sized chip that fits any smart watch. Soli in no time, after its release, will be get updated and could be worked from meters away, which would mean that with a snap of a finger you could control your devices.

This comes as boon for that area of medical field that are under a constant threat of infections and contamination. The benefit of gesture recognition feature over the present multi touch inputs would be that we no longer would be requiring screens. Which would be all new accomplishment in the world of machine and electronics.

Gesture recognition inputs will be a revolutionary and groundbreaking feature in the field of VR devices and play station. This project can further help in improving operator safety at work place. If the operator’s hands aren’t near moving parts of the machine then there are great chances of reducing onsite accidents.


The pace at which developments in technology and digital world is moving is faster than expected. The Project Soli will forever change our perspective on how we interact with machines, specially the wireless ones. Soli was initiated not just with the aim to quantify and interpret human gestures, but it also aimed to refine it to that extent that they could make use of gestures without receiving any interference from the environment.

Project Soli would be seen having major impact on the virtual and augmented reality. Today, where while using VR headsets we have to hold the controller, with this revolutionary project, we can simply use gestures movement to define how a user roams a virtual world.

Google, later this year, would start shipping development kits worldwide for its project, confirmed the ATAP officials at the Game Developer Conference. It would be interesting to see where developments in interface of Soli will take us

ABOUT THE AUTHOR: Ms. Shireen Shukla, intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at  swapnils@khuranaandkhurana.com.


Views expressed in this article are solely of the intern and do not reflect the views of either of any of the employees or employers.

[1] ATAP: Google: Soli; What are the potential applications of Soli? <https://atap.google.com/soli/#how-it-works&gt;

[2] Kate Smith: The Tiny Radar Chip Revolutionizing Gesture Recognition: Google ATAP’s Project Soli; All about Circuit < https://www.allaboutcircuits.com/news/radar-chip-revolutionizing-gesture-recognition-google-atap-project-soli/&gt;

And we thought Java API’s were open?

Oracle vs. Google is truly one of the most amazing IP battles that I have personally observed in the recent past. What millions of developers and customers would have literally thought to have been considered open Application Programming Interfaces (API’s) when it comes to JAVA, is potentially turning out to be proprietary from the perspective of Federal Circuit. This is really an example of a fantastic unsettling discussion that Copyright Infringement always leads one to. The present post would be kept relatively brief given that the magnitude of the case, and potential implications it can have on thousands of software companies and independent developers using Java packets, API’s, classes, and methods, as a platform to develop their software/websites, is unimaginable and cannot be assessed at this stage if Oracle wins the present appeal/case and starts suing entities of all sizes on API/Package infringement. The present article however would not focus on the fair use discussion that Google contends as an argument, and also would not detail about the GPL, Specification License, and Commercial License that are available to developers but rather would try to give the impact that API’s per se, if held copyrightable, can have on people at large.

The aforementioned case started four years back when Oracle bought Java from Sun, and focused on Google’s use of Java API’s in Android, wherein Google was claimed to have copied certain elements—names, declaration, and header lines—of the Java APIs in Android in the process of using Java programming language to design its own virtual machine, the Dalvik virtual machine (VM), for writing its own implementation for the functions in the Java API, and ended up writing 37 packages that were similar to the corresponding Java packets. In 2012, the district court largely sided with Google, saying that the code in question could not be copyrighted. It was held back then that “As to the 37 packages, the Java and Android libraries are organized in the same basic way but all of the chapters in Android have been written with implementations different from Java but solving the same problems and providing the same functions.” Therefore, in view of each API that can, in general, include a plurality of packages, each of which can in turn include a plurality of classes in which exist one or more methods, it was held that, “Ninety-seven percent of the source code (of Google’s Android) in the API packages is different; it’s only the three percent that overlaps that formed the heart of Oracle’s copyright claim. That three percent included packages, methods, and class names. But those declarations—like starting a function with package java.lang—can only be used in certain ways. “In order to declare a particular functionality, the language demands that the method declaration take a particular form”.

However, last month (in May 2014), came a reversal from the federal appeals court, which stated that “Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination with instructions to reinstate the jury’s infringement finding as to the 37 Java packages,“. The decision comes as a surprise as Java API’s are extensively used/incorporated in numerous online and offline softwares all over the world, and if access to Java API’s is held copyrightable, sustainable action can potentially be taken against practically any entity/developer that incorporates calls to such API’s without prior license from Oracle. It was on similar lines that Google and digital rights groups argued that APIs should not be copyrightable because developers need them to produce interoperable programs. “An API is dictated primarily by functional requirements, not creativity or aesthetics, even more so than the internal implementation of a piece of software. Copyright protects creative expression, not functionality,” Mitch Stoltz, an Electronic Frontier Foundation attorney said in an e-mail. “Also, the purpose of an API is to enable two pieces of software to interact. While copyright may protect software against copying, it shouldn’t prevent building new software that can interact with existing programs. That impedes creativity rather than strengthening it.”1

In addition, it was also contended by Former Sun CEO Jonathan Schwartz, acting as a witness for the defense, that “These (Java API’s) are open APIs, and we wanted to bring in more people…we wanted to build the biggest tent and invite as many people as possible.” It was for this reason that, according to Schwartz, they had given a go ahead to Google to use the Java API’s till the time they don’t use their brand name “Java”, and had stated that “I’d also like Sun to be the first platform software company to commit to a complete developer environment around the platform, as we throw Sun’s NetBeans developer platform for mobile devices behind the effort. We’ve obviously done a ton of work to support developers on all Java-based platforms, and we’re pleased to add Google’s Android to the list.”.

Few exemplary Java API’s, which form the basis of softwares being built relying on Java can be seen here, wherein these API’s typically form the foundation on which the actual new source/software code is written to get the desired functionality. Therefore, the statements “It’s only the code itself—not the “how-to” instructions represented by APIs—that can be the subject of a copyright claim”, and “So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API,” written by the judge of the lower court prior to recent reversal gave a sense of relief to the developers globally, and in case the API’s per se are restricted to use unless through a valid executed license, each access or incorporation of the API would be a violation from the Copyright infringement standpoint.

In sum, the recent reversal by the appeals court stating that “We find that the district court failed to distinguish between the threshold question of what is copyrightable — which presents a low bar — and the scope of conduct that constitutes infringing activity. The court also erred by importing fair use principles, including interoperability concerns, into its copyrightability analysis. For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection.”, brings along with it a sense to otherwise publicly available API’s and how they would be interpreted in case their developers now start claiming infringement by applications that use such interface to connect their software with the other components.

Although the matter is sure to be taken to the highest level of legal remedy available by Google to come to a logical conclusion, assuming the reversal is upheld, the precedent set by the instant case is bound to send a strong message down to every developer who has ever taken advantage of Java or any other coding platform software interface APIs.At the same time, even if it is clear and accepted that Java programming language is open is free for anyone to use, it is the very use of these Java Packages (API’s) that enables significantly shorter software development time and reduction on overall software cost, and therefore, at this stage, its even unimaginable as to the impact that non-allowance of use of most commonly used API’s such as for string manipulation, java.lang, java.text, object creation, Java SDK, HTML manipulation, among other heavily used APIs can have on software coding time, manpower cost, incremental cost that customers are going to pay when enforcement starts happening left, right, and center. A brief call with a close friend and technical architect at a large Indian Software development company a few days back also helped me learn that Oracle is already in the process of making Java API’s paid and asking each company to enter into a commercial license, making most of these Indian companies to look out for other avenues such as Open JDK to escape such an inconvenient position.

  1. http://arstechnica.com/tech-policy/2014/05/oracles-java-api-code-protected-by-copyright-appeals-court-rules/

Rockstar Consortium US LP et. al.v. Google Inc

Gopikrishnan M, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at Google Inc. been accused of infringing technology related to its searching technology itself.

Yet another high-tech and high-profile patent war is on, this one involving a combined attack on the search giant’s core technology. Google is being sued for direct patent infringement in a suit filed on 31st of October, 2013 in the US District Court in Texas. Plaintiffs, Rockstar Consortium and NetStar Technologies (jointly owned by Apple, RIM/Blackberry, Ericsson, Microsoft and Sony) have accused Google Inc. of infringing a patent that is related to web search advertisement. Google has been sued in the past for bypassing user privacy, but perhaps this is the first time the search giant has been accused of infringing any technology related to its searching technology itself. Google is considered to be the pioneer in web search technology and leads the searching industry by a very high margin (as of 2013, Google owns around 80% of the web search market share).

Background of Technology

Nortel Networks Corporation, a Canadian company, holds a granted patent US6098065, titled “Associative Search Engine”, which accepts user queries and produces search results in response. The results also contain advertisements that are related to the entered search query. The following figure in the patent illustrates how their algorithm works, providing search results as well as user targeted advertisements.


Image retrieved from the Nortel Patent

Above figure illustrates different entities that constitute the patented service. A brief understanding of the patented method is provided below:

In operation, an end user enters a query into a terminal computer, which is connected to a server. The server in turn is connected to a router which connects the computer to the Internet. Search engine can be configured to process three databases, i.e. Contextual Database, Product Database, and User Profile Database. While the Database Search Engine processes search results for the entered query, an associative search Engine searches the product (advertisement) database in relation with the search query based on the user database, which has information as to the past preferences of the user. As a result, the database search engine produces results in accordance with the user query and the associative search engine enhances it by choosing between the general search results and search results based on what the user actually wants.It also generates user targeted advertisements which will be displayed along with the search results.The search engine, in a way predicts what the user would want based on his past preferences.

In an example, consider a situation depicting practical significance of the patented method. A law student uses a search engine functioning with the inventive method being spoken about. User database would have information relating to the student including his profile, preferences, interests, among other like details. When the student searches for “Europe”, advertisements displayed would be something targeted at him, for example “Study in Europe – A career launcher website”. An investment banker, on the other hand may not get the same results when he searches for the same query.

First independent claim of US ‘065 reads as follows:

  1. A method of searching for desired information within a data network, comprising the steps of:

receiving, from a user, a search request including a search argument corresponding to the desired information;

searching, based upon the received search argument and user profile data, a database of information to generate a search result; and

providing the search results to the user

wherein searching the database includes correlating, as a function of a fuzzy logic algorithm, the received search argument and user profile data to particular information in the database, and providing the particular information as the search results.

Google uses very similar technology for placing ads. The popular Google service “Google AdWords” uses user based advertisement delivering tools like ‘Contextual Targeting’, ‘Topic Targeting’, ‘Interest Targeting’ and more of such tools whose concepts of working are very similar to the patented method.

More information about the same and how Google AdWords works can be found at Google’s AdWords web page.

Fight for the Nortel Patents and the Subsequent Law Suits

When the Canadian based Nortel Corporation went bankrupt, around 6000 of their patents were auctioned. Google tried to acquire all of the patents starting their bid from $900 million dollars eventually raising them up to $4.4 billion but failed. Rockstar acquired the patents for $4.5 billion.  This was followed by Google’s acquisition of Motorola for $12.5 Billion

Now Rockstar has filed an infringement suit against Google Inc. alleging that Google has infringed their family of patents relating to ‘associative search’. They have alleged that Google already knew about the infringement and took part in the auction knowing the same.

An extract from the plaint reads as follows

Google has infringed and continues to infringe the ‘065 patent by its manufacture, use, sale, importation, and/or offer for sale of systems, methods, products, and processes for matching search terms with relevant advertising and/or information based on those search terms and other user data, including but not limited to Google’s process of receiving search requests from a user, using its search engine to generate search results based at least in part on the search request, selecting  —through Google’s AdWords and/or any other products, methods, systems, or services Google uses to store and choose relevant advertising — a relevant advertisement based on the search request and/or user data, and providing the search results together with the particular advertisement to the user; and additionally Google’s systems, methods,  products, processes of using other user  data aside from the search request to help select the search result and/or advertisement; and additionally and alternatively its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale infringing systems, methods, products, and processes in the manners described above. Google is liable for its infringement of the ‘065 patent pursuant to 35 U.S.C. § 271

Accusation Made

Plaintiffs here have accused Google of infringing their patents submitting that they own the IP and technology used by Google to sell advertisements, which overlaps with their ‘065 patent and hence according to 35 U.S.C. § 271, they are liable of patent infringement. The plaintiffs Rockstar consortium have filed suits against Google for infringing 7 patents all relating to the same family. The other patents are US 7,236,9697,69,2457,672,9707,895,1787,895,183 and 7,933,883. Moreover they have specifically mentioned, that Google despite losing an attempt to acquire the patent-in-suit(i.e. all the above 7 patents) at the auction, infringed and continues to infringe the patents-in-suit. The plaintiffs have accused Google of willful infringement and have asked for enhanced damages of past and future loses under 35 U.S.C. § 284 and attorney charges for prosecution under 35 U.S.C. § 285.

A general non-technical reading into Google’s technology shows that its concept is similar to ‘065 patent. But the page ranking and ad ranking algorithms used by them are very different and way more complex and efficient. Google’s desperate effort to acquire Nortel’s patents and their subsequent accession of Motorola Mobility shows how critical it was for them to have access to the technology. Plaintiffs have pointed out the same in their plaint, leading to a situation wherein Google might have a tough time defending themselves in this face off. Another interesting development is the introduction of Patent Litigation Integrity Act by the US Congress (an anti trolling law which is heavily backed by Google), which protects active inventors and innovators against patent trolls. Google may even defend the case using the provisions of this act. With all these developments in progress, it will be interesting to see how this lawsuit turns out.

What’s in a domain name?

The original role of having a domain name was to provide an internet address for computers. With the increasing rate of commercial activities on the web, a domain name is now seen as a way of identifying the business of the company. A potential consumer is always lured to the company after he/she goes through their website. Hence, a company keeps it in mind to obtain such domain names which are easily identifiable and related to their established Trade Marks.

One of the raging crimes in the recent years committed on the web, is ‘cybersquatting’. Cybersquatting is defined as a malpractice where individuals use a domain name reflecting the name of a prior existing company, intending to attain profit from the goodwill of a Trade Mark already belonging to someone else.  Mostly, websites belonging to celebrities or huge companies are at risk. Cybersquatters earn profit in a way that they ride on the fame and reputation already acquired by the company. Additionally, they would ask for higher prices when they sell the domain to the original owner of the domain name. Some cybersquatters also resort to posting derogatory remarks about the personality or the company on their websites, which would only discourage prospective consumers.

Cybersquatting was captured precisely in Manish Vij v. Indra Chugh, AIR 2002 Del 243, where the Delhi High Court held that “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.

The first cybersquatting case under the World Intellectual Property Organization (WIPO) was decided on January 14, 2000.  In World Wrestling Federation Enetertainment v. Michael Bosman, 1 N.C. J. L. & Tech. 3 (2000) the US based World Wrestling Federation (WWF) filed a suit against a California resident who had registered the domain name ‘worldwrestlingfederation.com’ and offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the domain name in question was registered in bad faith by the registrant in violation of WWF’s Trade Mark. The WIPO held that the respondent’s domain name was identically and confusingly similar to the Trade Mark of WWF and ordered him to transfer it to WWF.

The first case in India with respect to cybersquatting was Yahoo Inc. v. Aakash Arora, 1999 IIAD Delhi 229 where the defendant initiated a website ‘YahooIndia.com which was nearly identical to the plaintiff’s renowed website ‘Yahoo!’ and also provided similar services. The Delhi High Court ruled in favour of the plaintiff and observed, “it was an effort to trade on the fame of Yahoo!’s Trade Mark. A domain name registrant does not obtain any legal right to use that particular domain name simply because he has registered the domain name, he could be still liable for Trade Mark infringement.”

In another instance, in Rediff Communication v. Cyberbooth & Anr. 2000 PTC 209, the defendant had registered a domain name ‘radiff.com’ which was similar to ‘rediff.com’. Holding the view that the value and the importance of a domain name is like a corporate asset of a company, the Bombay High Court decided the case in favour of the plaintiff.

Further, in Tata Sons Ltd. v. Monu Kastrui & others, 2001 PTC 432, the defendant had registered a number of domain names that bore the name ‘Tata’. The Court ruled in favour of the plaintiff and stated that domain names are not only addresses but Trade Marks of companies also, and they are equally important.

On May 15, 2009, in Google Inc. v. Herit Shah, Case No. D2009-0405), Google won a cybersquatting case against an Indian teenager who had registered ‘googblog.com’. The WIPO held that it was confusingly similar and ordered the respondent to transfer the rights of the domain to Google.

The dispute between technology and already existing Trade Mark rights resulted in several legal battles for huge companies like Bennett & Coleman, McDonald’s to name a few. There arose a need for a new legislation to protect domain names and provide remedies against cybersquatters. This also led to the inception of International Community for Assigned Names and Numbers (ICANN) and Uniform Domain-Name Dispute-Resolution Policy (UDRP) who authorized the process of determining disputes regarding domain names. Such an authority was necessary since sometimes it is not even clear who is the owner of the infringing domain name or in instances where the cybersquatter is from another country.

The World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center deals with domain name disputes under the new UDRP which is applicable to generic top-level domain names adopted by the ICANN on August 26, 1999. The WIPO Center’s Domain Name Dispute Resolution service specifically regulates domain name disputes with the e- filing facilities and a well maintained case administration system.

On accord of the Indian case precedents mentioned above, we can see that there is a gaping hole in the arena of cyber laws to prevent cybersquatting. While resolving such disputes, Indian Courts have resorted to the principle of passing off on whether the goodwill of the complainant was endangered or not and whether the marks are confusingly similar.

The menace of cybersquatting has pushed legislatures globally to take serious note of it. The United States enacted the Anticybersquatting Consumer Protection Act (ACPA) to take control of this growing hazard. It is about time India too follows suit and comes up with its own legislation.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Let’s Google it !

David Elliot, from Arizona, owned 750 websites with domains like ‘googlegaycruises.com’ and ‘googledonaldtrump.com’ among many others.  His argument was that he needed to use the word ‘google’ because he was developing an internet based business that will promote charity, commerce, community, relationships, personal health etc. He further stated that he did not register the domain names in the hope of attracting internet users who are seeking to avail the company Google’s specific search engine service. In fact, the users who wanted to search for a topic, typed the word ‘google’ and came across Elliot’s websites. He had even spelt the word ‘google’ correctly in all the domain names, when he could have misspelt the same in order to create confusion among the users.

Google applied for its first trademark in 1997 and since then it has received a number of certificates covering its mark. On July 8, 1998, one of the co-founders of Google, Larry Page himself used the word ‘Google’ as a transitive verb when he wrote on a mailing list- ‘Have fun and keep googling!’

The District Court of Arizona ruled the case in favour of Google, forcing Elliot to hand over all the domain names to Google.

Elliot, now has sued Google, claiming that they should not be allowed to use the word ‘Google’ as its trademark anymore since ‘google’ means ‘search on the internet’, which made it a common transitive verb. His complaint states that the American Dialect Society declared it to be the ‘word of the decade’. He further claims that in 2010, Google itself had claimed that it would lose its trademark if the word ‘google’ was used synonymously for any search.

If consumers start using a trademark as a common word, then it becomes a generic term. A trademark or service mark that becomes generic in a particular country, is no longer entitled to protection since it is freely available to use.

There are many well known cases where certain brands could not hold on to their trademark. In Bayer Co., Inc. v. United Drug Co., 272 F. 505, ‘aspirin’ was held generic (in the United States) for acetylsalicylic acid pain reliever. But it was still protected in about 80 countries. Bayer also lost its case to protect its Trade Mark ‘Heroin’. Other brands like Kleenex and Xerox tried to save their marks, but in vain, since people commonly ask for a Kleenex instead of a tissue and for a xerox when they want to photocopy something. Band-aid did the same with bandages. In Haughton Elevator Co. v. Seeberger (Otis Elevator Co.), 85 U.S.P.Q. 80, ‘escalator’ was held as a generic term for ‘moving staircase’. In King-Seely Thermos Co. v. Aladdin Indus Inc., 321 F.2d 577, ‘thermos’ was held to be a generic word for vacuum-insulated bottles. In DuPont Cellophance Co. v. Waxed Prods. Co., 85 F.2d 75, ‘cellophane’ was held generic for transparent cellulose sheets. In Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, ‘pilates’ was held generic for a form of exercise.

Now, Google needs to prove that users associate the word ‘google’ with the company and not as a transitive verb in itself.

About the Author: Ms. Madhuri Iyer, Trade Mark Associate at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com