Tag Archives: IPR

Obtaining a Certificate of Recognition from DIPP for IPR benefits

“A start-up would now require only a certificate of recognition from the Department of Industrial Policy and Promotion (DIPP) and would not be required to be examined by the inter-ministerial board, as was being done earlier. This is one rapid change that we have brought in,” said  Nirmala Sitharaman, Minister of Commerce and Industry in New Delhi at the ‘Start-up India States’ Conference’ in  2016.

This has been done to improve the ease of doing business by entrepreneurs, when earlier there was a complex and elaborate process of approaching the inter-ministerial board to procure the IPR benefits. After May 16, 2016, Start-Ups have been made eligible for expedited examination of Patent Applications.

This post particularly discusses the procedure of obtaining a ‘Certificate of Recognition’ from Department of Industrial Policy and Promotion (DIPP) before and after filing the Application of Patent.

Procedure to be followed varies depending on whether Start-Up has applied for Patent (and the application is published) or has not applied yet.

Type 1:

The procedure below is only for applicants who have NOT filed the application of patent.

The Application form is available on http://www.startupindia.gov.in/registration.php

Click on Startup India Services > Startup Recognition > Application.

  1. Fill the required information regarding the following ;
      a. Name of the Entity;
      b. Nature of the Entity – Private Limited Company/Limited Liability Company/Registered Partnership
      c. Incorporation/Registered No.
      d. Date of Incorporation/Registration
      e. Address of Registered Office
      f. Details of authorized representative
      g. Details of Directors/Partners
  2. Either of the following supporting documents are required to be filed in the Application for the Certificate.
      a. Letter of Recommendation, in a form specified by the DIPP from an incubator recognized by Government of India  ;or
      b. Letter of support by any incubator which is funded, in relation to the project, from Government of India or State Government as a part of specified scheme to promote innovation ; or

A panel of facilitators has been constituted for providing assistance and support in filing applications for Intellectual Property Rights (IPR), wherein, Department of Industrial Policy and Promotion (DIPP) would bear the facilitation cost. The list of the Incubators is available on ; –http://startupindia.gov.in/uploads/pdf/List_of_facilitators_for_patents.pdf

      c. Letter of Recommendation, in a form specified by the DIPP from an incubator established in post-graduate college in India; or.
      d. Letter of funding from the Government of India or any State Government as a part of specified scheme to promote innovation; or – If the Government of India or State Government has provided funds as a part of any scheme to promote innovation to the applicant, a Letter of Funding by GOI or State Government is admissible as a legit document to be submitted.
      e. Letter of funding of not less than 20 percent in equity by any Incubation Fund/Angel Fund/Private Equity Fund/Accelerator/Angel Network duly registered with Securities Exchange Board of India that endorses innovative nature of the business – If SEBI has funded,  not less than 20% in equity by any above mentioned Funds which endorses the innovative nature of the business of the entity to the applicant, A Letter of Funding by SEBI can be submitted.
      f. Letter of recommendation from Industry association recognized by DEPARTMENT OF INDUSTRY POLICY AND PROMOTION – A Recommendation  Letter can be obtained by any Industry Association or Organisation which is recognized by DIPP.

The list of Industries/Organisations which can provide for the letter of Recommendation  are available on www.startupindia.gov.in .

Click on Information> List of Industry Association/Organisations for Recommendation Letter.

  1. Incorporation or Registration Certificate- Company/ Partnership Incorporation/LLP/ Registration Certificate is MANDATORY to be submitted.
  2. A Brief note or a supporting document regarding the innovativeness of the idea of the product or services offered by the entity.
  3. With respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option.

The FORMAT for the above mentioned “Letter of Recommendation,  Letter of Support from Incubator, Letter of Funding from SEBI, Recommendation letter from Industry Association/Organisation”  is available on http://www.startupindia.gov.in/startup-recognition.php

An application for a certificate is processed within a period of 10-25 working days from the date of Application, if accepted, the certificate is available to be procured.

Type 2:

The points below discuss the procedure for obtaining a Certificate of Recognition for applicants who have filed for patent and the same is published.

  1. Visit http://startupindia.gov.in/uploads/pdf/List_of_facilitators_for_patents.pdf and fill in the details requested in the form as mentioned above.
  2. Against Nature of Recommendation, Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”.
  3. Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application.
  4. Upload Incorporation/ Registration Certificate.
  5. Against “Brief note on innovativeness of products /services offered by the entity”, upload a document in PDF format that provides details relating to the nature of business of your company and why products /services offered by your company is innovative.
  6. As mentioned above, with respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option.
  7. Submit the application upon self-certification.

PENALTY FOR FALSE REGISTRATION:
If the application is found to be obtained, without uploading the document or uploading any other document or a forged document, the concerned applicant shall be liable to a fine which shall be fifty per cent of paid up capital of the startup but shall not be less than Rs. 25,000/- (Rupees Twenty Five Thousand only).

About the Author: Himani Kohli, D.E.S Law College (Fergusson Capmus), Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at swapnils@khuranaandkhurana.com

First time in India – Free IPR Clinic for Indian Startups – by Khurana & Khurana Advocates & IP Attorney

Even though Intellectual Property Rights (IPR), Innovation and knowledge protection is emerging to be a key driver in businesses, very few startups have the proper information and understanding of IPR, let alone the approach to forming an optimal IPR strategy for their business.

 Thus, as a leader and torch bearer in the IPR services Industry, we, Khurana & Khurana Advocates & IP Attorneys have decided to shoulder the responsibility of strengthening the IPR arsenal of Startups in India by conducting two weeks of free IPR clinics for startups, and use all our experience in dealing with Startups and Individual Inventors in providing customized solutions, counseling and guidance to budding entrepreneurs of India.

 The first IPR clinic session will start with the Mumbai office of Khurana & Khurana from 16th to 30th of March, 2015 where Khurana & Khurana IPR Consultants & Experts will conduct one to one interactive and solution based counseling on IPR strategy, approach and budgeting. With no fees or any other criteria involved in registration, the sessions will be conducted on a first come first serve basis.

 Having 2000+ clients, 4 offices in India, and 60+ experts, team Khurana & Khurana under the leadership of the partners Mr. Vinod Khurana, Mr. Tarun Khurana, Mrs. Meenakshi Khurana & Mr. Abhishek Pandurangi has always extended arms to Startup innovation and encouraged knowledge and transparency in the IPR ecosystem, and the Free Startup IPR clinics shall be yet another chapter in this story.

For registration please contact: Parvez Kudrolli at parvez@khuranaandkhurana.com / 9820519769 / 022-65281005

Competition Law and IPR- Friends or Foes?

An intellectual property right holder is granted legal rights to protect his intellectual property- here is where competition law plays a huge role by ensuring that such power and monopoly is restricted in the market.

Both intellectual property rights and competition law have co-existed separately and peacefully since a number of years. It was later understood that competition law can provide a boost to IPR since the market would be unpredictable, less complacent, more innovative and grow faster due to the impact of competition law. A plethora of cases[1] as held by the ECJ elaborated on the fact that the real concern that competition law has with IPR is not with the existence of IPR but with its exercise.

There are theories that imply usage of competition laws in IPR issues.

(i) Potential abuse of monopoly with respect to pricing, especially in developing countries where effective substitutes to IPR protected products may not be readily available.

(ii) With regard to business strategies and dominant abuse of IPRs, competition law provides a cushion in the form of anti competitive agreements. Section 3 of the Competition Act, 2002 deals with anti competitive agreements like horizontal agreements (agreements to limit production/supply, fix prices, bid rigging, allocate specific markets) vertical agreements (tie-in arrangements, exclusive supply/distribution arrangement, resale price maintenance, refusal to deal).  Cartels are further restricted under the domain of anti competitive agreements. Cartels are agreements between enterprises, persons, a government department and association of persons not to compete on price, product, services or customers.

Further, abuse of dominant position is dealt under Section 4 of the said Act. Such abuse is prominent by predatory pricing, limiting production of the goods, creating barriers to entry of such goods, denying market access, gaining advantage in another market by using dominant position in the present market.

It is pertinent to note that the Competition Act 2002 incorporates a blanket exception for IPRs under Section 3(5) based on the principle that IPRs deserve to be isolated and protected the essential element is innovation. If the Act interferes in technological or artistic or intellectual innovation, the resultant product would not reflect the novelty that it intends to provide. Hence, the Act merely does not permit unreasonable actions or methods from taking place under the pretext of protecting one’s IPR. To conclude, the Competition Act guards those IPR licensing, or other supply/distribution agreements which is governed by or for IPR products or services.

What is appalling is that the Act does not mention exhaustion, compulsory licensing or parallel importation. Also, an IPR holder would definitely resort to a complaint under Section 4 since his rights are curtailed under Section 3. Abuse of dominant position would albeit provide a much narrower scope as compared to proving an anti competitive arrangement, but nevertheless, all IPRs have the potential of raising an issue in competition policy perspective. Hence, this bar in fact, gives more power to the IPR holder and there is no consideration of public interest or licensees or assignees.

In the case of Dr. Vallal Peruman v. Godfrey Phillips (India) Ltd. (MRTP Commission 1994) and Manju Bharadwaj v. Zee Telefilms Ltd.  (MRTP Commission 1996) it was held that the view that unfair trade practices could be triggered by the misuse, manipulation, distortion, contrivance or embellishment of ideas, it would amount to trade mark misuse and the IPR holder would expose himself to an action.

In another interesting case, US v. S C Johnson & Sons (c iv. No. 4089 – 59 fed. reg. 43, 859, 25th August, 1994) Bayer AG was a major global supplier of insecticides except in USA. It developed a new unique and potent active ingredient for insecticides for household use and secured a patent for the technology. It licensed the new technology to S C Johnson & Sons, which was a dominant market leader in pesticides market, the market share being 50-60%. The Antitrust Division of the US challenged in the US Court, this licensing arrangement which reduced incentives of Bayer to compete with Johnson in manufacture and sale of household insecticides and which further helped Johnson to increase its dominance in the US market. The Court decided that Bayer should offer the patented ingredient to other pesticide manufacturers on reasonable terms. Further, Johnson’s competitors were allowed access to active ingredients that Bayer may introduce later. Through this decision, the court sought the maintenance of competitive markets while protecting the IPR.

Balance between Competition Law and IPR in India

In India, the IPR laws like the Patent Act or Copyright Act or Trade Marks Act have over riding powers over the Competition Act in matters related to any abuse of IPR. If an anti-competitive result arises from the exercise of the rights by the patent holder, the Patent Amendment Act (2005) provides for issue of licenses to stop such anticompetitive activity. It is abysmal that the role of Competition Commission of India is nil in this respect. Instead, an amalgamation of the two Acts can be made, where tie-in arrangements, prohibiting or revoking license in case of any infringed competing technology, patent pooling, royalty payment, measures to be taken after the patent has expired, and so on. Competition Law needs to override the IPR Acts when it comes to handling any market abuse of the later.

As mentioned earlier, the Competition Act exempts mergers and dominant abuse in the market. Such exemptions should be made with leniency and not arbitrary.

Despite the fact that IPR and Competition Law are seen as overlapping fields of law with conflicting purposes, it is prominent for them to work in tandem to maintain balance in the market. IPR, on one hand, allows IPR holders to exercise exclusivity over their work, whereas Competition Law on the other hand, restricts any kind of monopoly in the market by holding restrains as earlier mentioned.  Thus, in a way, it can be said IPR holders abuse their position by creating dominance in the market.

Leaving aside conflicting interests, there are other ways where IPR and Competition Law are in sync with each other. By creating and protecting an “idea” or “expression”, IPR has carved a niche in the market by introducing diverse products and services, which only enhances competition. This competition would involve creating the best product in the market in terms of innovation, price, consumer growth, to name a few.

Friends or foes, we cannot say. A dichotomy between IPR and Competition Law cannot be changed, but ensuring their co-existence is the only way forward.

[1] Consten & Grundig v. Commission [1966] CMLR 418 ; Deutsche Grammophon Gesellschaft v. Metro-SBGroβmarkte GmbH [1971] CMLR 631; Keurkoop v. Nancy Kean Gifts [1983] 2 CMLR 47 and RTE & ITP v. Commission [1995] 4 CMLR 718, at para 49.

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

Follow us on Twitter: @KnKIPLaw .

Practice Pointer: Form 27 Requirement in India (Statement Regarding the Working/Non-Working of Issued Patents)

It is needless to say that one core mandate of protecting one’s intellectual property is to promote the progress of science for the benefit of humankind. At the same time, it is also important to ensure that a patentee’s right of excluding others from making, selling, using, offering to sell, and importing the protected subject matter is not misused and does not lead to non-practicing or non-commercialization of the IP by anyone, which would defeat the abovementioned purpose in entirety.

One such tool for the Indian Patent Office, to prevent misuse or rather non-use of patented inventions is to seek periodic information from the patentees as to the extent of commercialization done (also interchangeably referred to as working of the invention), wherein the extent includes informing the Patent Office of the number of licenses granted (if any), revenues/sales generated from the sale/license/commercialization of the patent, parties/stakeholders involved in or responsible for actual commercialization of the patent. Working of a Patent can include but not limited to manufacturing the products in India (either by the patentee or the license) for use in India or for export, importing the patented product in India, and licensing the patent rights.

The above information is covered under Section  146(2) of the Indian Patent Act, 1970, which states that “Every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and  at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India” read with rule  131(1) of the Indian Patent Act 1970 which requires that this “information should be filed every calendar year, within three months of the end of each year.” The deadline for filing this information therefore is 31’st March of each year and is applicable only to Patented inventions. The statute specifies a provision for submission of information in Form 27 regarding the details of ‘working of a patent’ granted in India, which is a statutory requirement.

The information sought by the IPO in Form 27 can be summarized as follows:

A. For not ‘working of patent’: the reasons for not working and steps being taken for ‘working of the invention’ to be provided by the patentee.

B. In case of establishing ‘working of a patent’, the following yearly information needs to be provided:

i) The quantity and value of the invention worked; which includes both local manufacturing and importation.
ii) The details to be provided if any licenses and/or sub-licenses have been granted for the products during the year.
iii) A statement as to whether the public requirements have been met partly/adequately to the fullest extent at a reasonable price.

It would be noted herein that even if the patent is commercially not worked in India, the patentee or the licensee needs to explain the reasons for not working and steps being taken for working of the invention. Such information on commercialization of patented products/method, along with other provisions such as Compulsory Licensing, at least in principle, would make the Patentee prompted to work the invention at the earliest rather than merely having a negative mindset of waiting for third parties to use/work the patented subject matter and then subsequently sue them for infringement actions and claiming their accounts of profits.

The Patent Act has also provides that if any person refuses or fails to furnish information as required under Sections 100(5) and 146, he shall be punishable with imprisonment that may extend to 6 months or fine which may go up to rupees ten lakh (one million).

Gopanjali Singh, Patent Associate, IIPRD, Gopanjali@iiprd.com

No Exclusive Trademark Rights to Lord Krishna’s name: Delhi High Court

Delhi High Court’s Division Bench recently upheld the Single Judge Bench Judgment declining the claim of the Appellant, Bhole Baba Milk Food Industries Ltd. (a diary products manufacturer) of exclusive right over the use of word ‘Krishna’ for dairy products.

The Appellant has obtained registration of the mark “KRISHNA” having pictorial reflection of Lord Krishna standing on a lotus flower for dairy products falling in Class-29 of the Trade Mark Act vide Trade Mark No. 597519 and has been manufacturing ghee, milk products and dairy products since 1992. The Appellant has also obtained registration of the label mark “KRISHNA” in the same class vide Trade Mark Nos 783679 and 599070. Following is the representation of the mark 597519 and 599070 respectively

The Appellant accused Parul Food Specialties Ltd (Respondent, also a diary products manufacturer), of infringing on its trademark “Krishna” The Respondent were selling ghee under the mark “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. The Appellant further asserted that the word “KRISHNA” has become a “well known” within the meaning of Section 2(zg) of Trade Marks Act and has acquired secondary distinctiveness (as evidenced from their sales figures).

On January 19, 2011, the Single Judge, Justice Rajiv Shakhdar refused to give exclusive trademark rights of the word “Krishna” and declined to grant injunctive relief to stop the Respondent from using mark “Krishna”, but directed the Respondent to change the font size and to print the words “PARUL’S LORD” with the same prominence as the word “KRISHNA” so that it would not be confused with the products of the appellants.

The Appellant thereon appealed to the Division Bench, consisting of Justice Pradeep Nandrajog and Justice Sunil Gaur. The division bench upheld  the single-judge bench’s order against Bhola Baba’s plea and said: “We are in agreement with the view taken by the learned single judge not only for the reasons given by the learned single judge but the additional reason, as in the instant case, a deity may be associated with a particular kind of goods.  It is common knowledge that Lord Krishna, as a child, was known for his love of milk and butter and thus Lord Krishna is closely linked with milk and butter and this would certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products”.

The Division bench further highlighted that the registration obtained by the Appellant is not per-se to the word “KRISHNA” but is to the word “KRISHNA” written in a distinctive form. The Division bench concluded that “The distinctiveness to which the appellant can lay a claim is to what it has got registered as a whole and such registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin”.

Judgment of the Division Bench is tentative and the Final decision post trial would be with respect to the evidence led.

The Complete judgment of the Division Bench can be read from here and the complete Single-Judge Bench’s Order is available here.

The Indian Trade Marks Registry has recently uploaded on their website a list of 86 marks which have been prohibited from grant of registration and the list can be viewed by clicking here.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: Trademark@khuranaandkhurana.com.