Trans-Border Trademark Landscape in India Post Toyota-Prius Judgement

INTRODUCTION

A trademark is any word, mark, logo, brand, name, slogan, or other visual element that differentiates one company’s products or services from those of another. Trademarks are considered Intellectual Property Rights and are legally protected under both national and international laws. The rationale for giving legal protection is that trademarks symbolise quality standards and prevent counterfeiting of the company’s products, therefore increasing the company’s goodwill. In India, trademarks are controlled by the Trademarks Act of 1999, which provides an exhaustive framework for trademarks.

One of the many aspects of trademark recognition is the Trans-Border reputation of a trademark. Trans-border reputation means that when the trademark of the company gains goodwill and is reputed globally, beyond the territorial limits of the country where the trademark is filed due to its widespread presence in the market through physical presence product, promotion, advertisements and/or publicity.

Trans-border trademark recognition has become more important in recent years to assist traders in protecting their trademarks internationally. Because the courts acknowledge this element of trademarks, third parties from other countries are limited to registering any trademark that suggests any likeness to a trademark previously filed by one nation in another country.

EMERGENCE

N.R. Dongre vs. Whirlpool Corporation, 1996 (16) PTC 583

Facts:

Whirlpool Corporation and its Indian subsidiary launched a lawsuit against N.R. Dongre in India for trademark infringement. Whirlpool was selling washing machines in India using the same trademark that N.R. Dongre was accused of infringing. The appellants (Whirlpool) contended that they have long used the disputed trademark and that the appellant’s company’s goods have a trans-border reputation. One of the several issues presented in this case was whether Whirlpool was widely recognised in India and had a trans-border reputation.

Held:

The Delhi High Court’s single and division benches both decided in Whirlpool’s favour. It stated that the appellants’ evidence proved that they had been long-time users of the mark in question, whilst the respondents failed to show their innocence for using the mark. Division Bench of the Delhi High Court further acknowledged the mark’s trans-border reputation and indicated that it is not required to have the goods present in physical form to recognise the trademark, but that the product is recognised in the market through marketing, as was the case here. The Supreme Court likewise supported the Division Bench’s judgement, stating that overturning the Division Bench’s decision would cause irreparable injury to Whirlpool because they had been using this mark for a long time.

The concept of trans-border has evolved through this case and the courts have heavily relied on this case to determine the cases of trans-border trademark recognition of multinational companies.

TOYOTA JIDOSHA KABUSHIKI KAISHA vs. M/S PRIUS AUTO INDUSTRIES LTD. & ORS. 2018 (73) PTC 1

Facts:

Toyota (hereafter referred to as plaintiff), an internationally recognised automobile manufacturer, introduced a car named the ‘PRIUS’ for which trademark registrations were submitted across the world. Prius Auto Industries (hereafter referred to as the defendant) is a company incorporated in India that manufactures and sells vehicle components and accessories. Toyota filed before the Single Judge Bench of the Delhi High Court for a permanent injunction against Prius Industries for violating Toyota’s trademark, which it had already filed. If the injunction is not granted, Prius Industries will obtain an unfair advantage over Toyota’s brand reputation and goodwill, which is detrimental to Toyota.

Held:

The Single Judge Bench issued an ex parte ad interim injunction prohibiting the defendants from using Plaintiff’s registered trademarks.

The defendants filed an appeal with the Delhi High Court’s Division Bench against the ruling. The Division Bench decided that Prius lacked a transborder reputation in India, and that print media marketing had minimal impact on the public. Furthermore, no substantive evidence suggested that the public was confused about both items.

The Supreme Court heard an appeal, and upheld the Division Bench’s ruling. Toyota claimed that the ‘PRIUS’ mark was marketed internationally in print media, but failed to demonstrate that the ‘PRIUS’ brand had established significant goodwill and recognition in the Indian market prior to when Prius Industries applied to use the same mark. They also said that if people affiliated with the sector or the items are aware of the mark, it has built a positive reputation and goodwill in the market.

However, the court did not agree with this but rather agreed with the territorial principle to be the primary focus. It noted that in order to establish a trans-border reputation, the mark must have gained goodwill in the Indian market before anyone else may submit a trademark application for it. Because it was not clear in this case that Toyota had a significant level of goodwill for its automobile, the Division Bench of the Delhi High Court’s decision to overturn the permanent injunction was affirmed.

CONCLUSION

According to the well-established precedent set by Whirlpool, even in cases when a product is not physically present in the market, the company’s mark alone would be enough to identify it as a trans-border reputation in the Indian market. The Toyota decision provided more clarification on this issue, with the court ruling that a trademark cannot be considered to have trans-border recognition just because it is printed in newspapers and magazines. Whether or not the general public has been impacted and influenced by these commercials is one of its key components. It acknowledged the territorial doctrine and placed a strong emphasis on the spillover of global reputation to the Indian market prior to its adoption by others.

The Toyota case expanded the scope of trademarks’ trans-border reputation in the Indian market and gave greater protection to those using marks that were not acknowledged in the Indian market but were registered as trademarks elsewhere in the world. Following this precedent, each case’s facts will be interpreted differently because a variety of factors will be taken into account when determining whether a company’s trademarks have a trans-border reputation. This ensures better protection to the other company and fair and equal justice for all which forms the basis of the Indian Constitution. 

Author : Riya Shah, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD

SOURCES

1. https://www.mondaq.com/india/trademark/665844/transborder-reputation-and-passing-off-action-toyota-prius-case
2. https://singhania.in/blog/trans-border-reputation-of-trademarks-in-india
3. https://www.khuranaandkhurana.com/2022/05/28/the-issue-of-transborder-reputation-of-trademarks/
4. https://www.theippress.com/2021/10/26/effect-of-prius-judgment-on-trans-border-reputation-of-trademarks/
5. https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf
6. https://indiankanoon.org/doc/163092085/

Overview of Ticona Polymers, Inc. vs. Registrar of Trademarks

INTRODUCTION

The matter at hand involves an appeal coming from the Senior Examiner at the Registrar of Trademarks’ office rejecting a trademark application. This appeal is covered by Section 91 of the Trade Marks Act of 1999. Ticona Polymers intended to register the term “COOLPOLY” for two product categories, however their application was denied for two reasons: the proposed mark lacked distinguishing characteristics, and the words within the mark were deemed descriptive of the product.

WHAT IS A TRADEMARK?

According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is defined as a symbol that may be graphically expressed and has the ability to differentiate one individual’s products or services from those offered by others. This broad category of trademarks includes signatures, names, labels, headers, and other features.

WHAT IS DISTINCTIVENESS AND DESCRIPTIVENESS IN TRADEMARKS?

Section 9(1) of the Trade Marks Act of 1999 explains the absolute reasons for rejecting a trademark application, stating unequivocally that a mark that clearly describes the characteristics or features of products and services is ineligible for trademark registration. Nevertheless, Section 9(1) not only enforces a complete ban on registering descriptive marks but also incorporates a provision that permits such marks to be registered if they have acquired distinct recognition through previous use or are recognized as well-known trademarks.

FACTS OF THE CASE

The case revolves around an appeal to the Delhi High Court under Section 91 of the Act, stemming from a trademark application rejection. In this application, the appellant sought to register the term “COOLPOLY” for two specific classes of products: Class 1, which pertains to plastic and carbon molding materials used for creating molded plastic items, and Class 9, encompassing molded heat sinks for computers, their components, and molded electrical conductors. The Senior Examiner at the Registrar of Trade Marks’ office declined this application on October 26, 2020. The primary grounds for rejection were objections raised under Sections 9(1)(a) and 11(1) of the Trade Marks Act. These objections focused on the distinctiveness of the mark and the availability of equivalent marks in the trademark registration.

APPELLANT’S CONTENTIONS

The legal counsel for the appellant stated that the well-established policy of not dissecting a trademark into its many components during the registration review is widely acknowledged. Although Section 17(1) of the Trademarks Act clearly indicates that this idea pertains to cases of trademark infringement, it also applies to evaluating registration eligibility with required adjustments. Because the act of registering contains inherent benefits such as protection against infringement, the principle also applies in this case.

RESPONDENT’S CONTENTIONS

According to the respondent’s legal counsels, it is well-established legal principle that a simple combination of two common phrases or abbreviations, even if never before used, cannot be regarded a newly coined phrase. The terms in question in this case were “COOL” and “POLY.” This principle holds as long as the combined phrase conveys an identical meaning to the average individual, whether through visual or auditory means, as the separate words in their regular form. This principle had been upheld in prior legal cases, including E. Griffiths Hughes Ltd. v. Vick Chemical Co. and A.R. Khaleel And Sons v. Registrar of Trade Marks In India.

DELHI HIGH COURT’S OBSERVATIONS

In delivering its judgment, Justice Hari Shankar of the Delhi High Court underscored a fundamental principle: the assessment of a trademark should consider it as a cohesive entity rather than disassembling it into its constituent parts. This principle, firmly grounded in Indian trademark law, is not confined solely to cases of trademark infringement but also extends to the stage of trademark registration.

[Image Sources: Shutterstock]

With regard to the specific trademark under scrutiny, “COOLPOLY,” the court noted that this term lacks any apparent meaning within the English language and does not constitute a commonly used word. Consequently, it retains the capability to differentiate between the products of one entity and those of another if utilized as a trademark. The court also pointed out that the Registrar’s decision lacked clarification regarding the mark’s distinctiveness. Additionally, the court argued that even if the issue of descriptiveness had been raised, it would not be valid because “COOLPOLY” is a unique, newly coined word. Even when examining the words “COOL” and “POLY” individually, they do not describe the products covered by the Appellant’s application, such as plastic and carbon molding materials, in any way.

Consequently, the court overturned the Registrar’s decision, asserting that the Chief Examiner’s rationale for rejecting the mark lacked a legal foundation. The court instructed the Registrar to ensure the publication of the “COOLPOLY” trademark application in the Journal of Trade Marks.

ANALYSIS AND CONCLUSION

The “COOLPOLY” trademark case underscores the vital importance of evaluating trademarks as whole entities within the domain of intellectual property law. At the core of this ruling lies the Delhi HC’s firm support for the anti-dissection doctrine, affirming that trademarks must be evaluated as unified entities rather than deconstructing them into their constituent parts. The court’s decision in favour of the “COOLPOLY” trademark underscores the word’s absence of inherent meaning within the English language, a pivotal element in trademark distinctiveness. Significantly, the court rejects the idea of descriptiveness by asserting that “COOLPOLY” constitutes a freshly minted term. Even when examining its individual elements, “COOL” and “POLY,” they do not depict the goods encompassed in the application. This verdict not only reaffirms the necessity of holistic trademark evaluation but also highlights the broader role of trademarks in preserving the distinctiveness of brands and fostering innovation in the marketplace.

Author : Manya Manohar, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

REFERENCES

• Ticona Polymers, Inc. Vs. Registrar of Trademarks, 2023 SCC OnLine Del 1234
• The Trademarks Act, 1999
• E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654
• A.R. Khaleel And Sons v. Registrar of Trade Marks In India, AIR 1963 Mys 122
• https://cleartax.in/s/trademark-act-1999

Impact of AI on Trademark Law: Recent Developments and Future

Introduction

In this rapidly changing world of Intellectual Property law, artificial intelligence is transforming trademark law by challenging long-held beliefs. The intersection between trademark law and artificial intelligence providing excess to opportunities and challenges, making a deep understanding of both present developments and the potential long-term effects. Artificial Intelligence has transformed trademark management processes by offering exceptional levels of efficiency and accuracy in work such as trademark monitoring, enforcement and research. These technologies carry on to proceed at a never-before-seen pace. Trademark law experts can efficiently see conflicts and infringement by the use of artificial intelligence. AI inspired solutions that facilitate accurate browsing of long databases. However passionate digital platform observation given by AI powered real time brands monitoring solutions enables trademark owners to safeguard their companies in a progressively connected world However, these types of evolutions also raise challenging legal issues, such as how to resolve legal ambivalence, who is liable for trademark infringement when AI creates the brand, and larger ethical and legal repercussions. In light of this, as AI keeping up to transforming the world of trademark law. It is imperative to look at recent legislative and legal changes as well as possible future challenges and opportunities.

The Development of AI in Trademark Administration

Artificial intelligence (AI) has transformed traditional trademark management techniques by providing previously unheard-of levels of efficiency and accuracy. Let’s examine the salient features of the development of AI in trademark management:

• AI-Powered Trademark Searching: This innovation has completely changed the field of brand protection. With unprecedented speed and accuracy, trademark practitioners may now do thorough searches across enormous libraries of already-registered trademarks and other data. Artificial intelligence systems are highly skilled in discerning minute resemblance and variations among the trademarks, making it feasible to quickly identify the possible disputes. This functionality reduces the chances of unintentionally infringing the already-registered trademarks while also streamlining the trademark clearance process.
• Real-Time Brands Monitoring: Proactive brands security has now entered a new phase with the introduction of AI brand monitoring technologies. In order to find out the any trademark infringements in real-time, these systems continuously scan a variety of online venues, such as social media networks, e-commerce websites, and digital marketplaces. Trademark owners may quickly detect unlawful usage, counterfeit goods, and brand dilution by utilizing artificial intelligence (AI), which enables prompt intervention and enforcement actions. Maintaining brand integrity and stopping illegal activity on digital platforms require real-time brand monitoring.
• 
  Expanded Enforcement skills: Thanks to AI technologies, trademark owners can now successfully encounter infringement by having access to expanded enforcement skills. Large amounts of data can be analysed by AI algorithms to find out trends in unlawful distribution, counterfeit production, and trademark infringement. Furthermore, the automation of enforcement procedures, including the issuance of takedown requests, cease-and-desist letters, and court filings, is made possible by AI-powered enforcement tools. AI helps trademark owners to spend resources more effectively and resolve trademark disputes more quickly by automating repetitive operations and streamlining enforcement efforts.

Obstacles and Legal Matters to Consider:
1. Liability Attribution for Trademarks Generated by AI:
In trademark law, determining culpability for AI-generated trademarks is a major challenge. When AI systems generate trademarks on their own without human assistance, ownership and accountability issues come up. In order to create frameworks that fairly distribute culpability among AI developers, users, and the AI systems themselves, courts must address agency and accountability issues.
2. Ambiguities in the Trademark Infringement: As an AI-generated material proliferates, conventional ideas of trademark infringement become more nuanced. It gets harder and harder to tell the difference between authentic works and automated work when AI algorithms produce logos, slogans and other type of trademark-related materials. The challenge for courts is to modify the current legal frameworks to take into account the subtle of AI-generated trademarks and provide precise standards for infringement.

3. Ethical and Regulatory Implications: Adding AI to trademark law creates more ethical and regulatory issues than just the legal ones. Concerns around the algorithmic bias, data privacy, and the moral of the application of AI to intellectual property management must be addressed by stakeholders. The duty of creating rules and regulations to guarantee the ethical development and application of AI technologies within the trademark ecosystem falls to regulatory authorities
4. Human Involvement Requirements: Historically, trademark law has mandated that people be present during the trademark invention and registration process. But as AI systems advance, it gets harder to determine how much human involvement is required to qualify a trademark. To what degree AI-generated trademarks should be eligible for registration and protection, courts and legislators must decide on this matter.

5. Preservation of Consumer Trust: Concerns concerning the preservation of consumer trust are raised by the increasing use of AI in trademark administration. There is a chance of mistakes or oversights when AI algorithms are employed to automate processes like trademark monitoring and searching, which could erode customer trust in the authenticity of trademarks. In order to keep customers’ faith in the brand, it is imperative that AI-driven procedures are transparent, accountable, and accurate.

6. International Harmonization: Reaching international harmonization is difficult due to the international scope of trademark law and the quick development of AI technology. Attempts to provide uniform norms and guidelines for AI in trademark law are complicated by differently shaped legal frameworks and approaches to AI regulation in different countries. In order to enhance international mutual recognition of intellectual property rights, unify legal concepts, and ease information transfer, collaborative actions are required.

Future Repercussions and considerations:

• Development of Ethical AI: As AI continues to be important to trademark law, it is difficult to ensure that AI is developed ethically. The ethical use of AI technology, taking into account factors like algorithmic bias, neutrality and transparency must be given top preference by the stakeholders. In Trademark supervision, we can reduce possible dangers and can preserve equity and justice by encouraging the moral AI development techniques.
  
• Continuous Monitoring and Adaptation: Keeping up with the latest developments in trademark law requires constant observation and adjustment as AI technologies advance and new difficulties appear. Trademark experts need to be on the lookout, always evaluating how AI is affecting trademark management procedures and modifying their plans as necessary. Trademark experts may maintain the integrity of intellectual property rights in the digital era and successfully traverse the ever-changing field of AI in trademark law by remaining vigilant, adaptable, and knowledgeable.
• Regulatory Frameworks: As AI becomes more and more prevalent in trademark law, strong regulatory frameworks that both handle new issues and promote innovation are required. Legislators must work with technologists, legal professionals, and business stakeholders to pass laws that give clarity on matters like data protection, liability attribution, and AI governance. Regulatory systems can encourage responsible behaviour by defining precise norms and principles.
• Adaptation and Innovation: To successfully traverse the transforming world of artificial intelligence in the trademark law, trademark experts must hold adaptation and innovation. To fully utilizing the AI while managing trademark portfolios, interaction with AI technology, ongoing learning, and the implementation of better practices are crucial. Trademark experts can improve brand safety efforts and streamline trademark management procedures by excepting creative practices and remaining up to date with technology advancements.
  

Cooperation and Knowledge Sharing: To successfully managing the critical issues raised by AI in trademark law, collective methods and knowledge-sharing programs are crucial. It is important that stakeholders from the fields of academics, government, industries and civil society unite in order to share best practices, perspectives, and work together in research and development projects. By uplifting cooperation and information exchange, we might all work together able to solve new problems, stimulate creativity, and enhance the ethical use of AI to trademark management.

Conclusion  

In summary, the incorporation of artificial intelligence (AI) into trademark law signifies a significant change in the intellectual property environment, characterized by both revolutionary possibilities and complex obstacles. Recent advancements have demonstrated how AI can improve trademark administration by facilitating effective searches, providing real-time monitoring, and improving enforcement capabilities. But these developments also bring with them difficult legal issues, such as attribution of blame disputes, unclear trademark infringement claims, and wider moral and legal ramifications. In order to effectively navigate the changing trademark landscape going forward, proactive adaptation and collaboration are essential. Stakeholders need to plan ahead for technology breakthroughs, strike a balance between innovation and intellectual property protection, and encourage the development of ethical AI.

Through the implementation of cooperative strategies including as international harmonization initiatives, interdisciplinary cooperation, and stakeholder engagement, the trademark ecosystem can effectively tackle the diverse issues raised by artificial intelligence (AI) while optimizing its potential advantages. Ultimately, parties involved may guarantee that trademark law continues to be strong, equitable, and successful in protecting intellectual property rights in the digital era by embracing responsible innovation and respecting the values of openness, accountability, and fairness.

Author : Astha Sharma, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.
 

Bibliography

• Lee Curtis, a. R. (2020, june ). Trademark Law Playing Catch-up with Artificial Intelligence? Retrieved from WIPO MAGAZINE: https://www.wipo.int/wipo_magazine_digital/en/2020/article_0001.html
• Wills, K. (2022). AI around the World: Intellectual Property Law Considerations and beyond. Journal of the Patent & Trademark Office Society, 186.
•  Batty, Rob, Trade Mark Infringement and Artificial Intelligence (August 16, 2021). New Zealand Business Law Quarterly (Forthcoming),http://dx.doi.org/10.2139/ssrn.3978248^[1]
• Moreland, Anke and Vieites Novaes de Freitas, Conrado, Artificial Intelligence and Trade Mark Assessment (October 29, 2019). Moreland, A. & Freitas, C. (2021), Artificial intelligence and trade mark assessment, in Hilty, R., Liu, K-C. & Lee, J-A. (eds.), Artificial Intelligence & Intellectual Property, Oxford University Press, p. 266 – 291, Available at SSRN: https://ssrn.com/abstract=3683807
• Gangue, Dev S., Eye, Robot: Artificial Intelligence and Trade Mark Registers (October 10, 2019). Forthcoming in N. Bruun, G. Dinwoodie, M. Levin & A. Ohly (eds.), Transition and Coherence in Intellectual Property Law, (Cambridge University Press, 2020),  https://ssrn.com/abstract=3467627

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Compulsory Licensing in India –

Navigation Intellectual Property and Access to Essential Medicines during COVID-19

India’s use of compulsory licensing during the COVID-19 pandemic underscored the delicate balance between intellectual property rights and public health emergencies. This approach enabled the government to authorize the production of patented drugs or vaccines, addressing the urgent need for affordable healthcare solutions. The move highlighted the crucial interplay between public health and intellectual property law in times of crisis.

Introduction

Compulsory licensing in simple terms will be described as middle path to maintain a balance between Patent rights and access to live saving mechanism. When a government allows a third person to use the patented product or process without the consent of the patent holder in circumstances enumerated by the government.

To address access challenges in the context of medicines like treatments for HIV/AIDS, hepatitis C, and cancer, governments have turned to compulsory licenses. This legal measure gained prominence when governments sought to overcome patent barriers to facilitate the importation or production of generic antiretroviral treatments for HIV/AIDS in the early 21st century. Over the past two decades, compulsory licenses have been considered or employed by countries almost a hundred times for various medicines.

Fast track patent Grant mechanism

Due to COVID fast track patent grant mechanism was introduced, usually patent applications may take a considerable amount of time to be examined and approved under appropriate circumstances. In India patent grant usually takes 3-6 years from the date of application filling

There are 4 steps in usual process

• Filling and publications
• Searching and examinations
• Filling response to examination report
• Decision of the examiner

As a breakthrough in the fight against the slow moving process of patent grants, the Indian Government brought into force, Patent (Amendments) Rules 2016 and incorporated under Rule 24C of Patent (Amendment) Rules 2019.

The existing provisions of these rules permitted applicants to submit a request for a swift examination of their patent application in accordance with Rule 24C of the Patent Rules 2003.

Only If

The Applicant fell under the category of Startup

        Or

An application had indicated India as the competent International Searching Authority (ISA) or it was elected as an International Preliminary Examination Authority (IPEA) in the corresponding international application

The Main Objective of Compulsory Licensing are

• Dealing with business practices or the disregard of patent regulations especially when they fail to meet the needs of our country.
• Making sure that patients can access patented medicines even if they are too expensive or not readily available.
• Allowing the public to use patents, for commercial purposes.
• Granting permission for licenses in cases where patent holders refuse to license producers, including those within our country.
• Managing the possibility of shortages in stock.
• Protecting health in situations, like emergencies, urgent circumstances and epidemics.

What are the provisions under 84-92 of the Indian patent act 1970.

Under the Indian Patent law, Compulsory Licensing have been dealt with under Chapter XVI of the Indian Patent Act,1970.

Under Sections 84-92 of the Indian Patent Law, it further mentions the Perquisites.

Applying for Grant of Compulsory license

 Section 84 of the Indian Patent Act allows any interested party, including the license holder, to apply to the Controller for a compulsory license after three years from the patent’s grant. This application can be based on the fulfillment of the following conditions:

    (a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

   (b) that the patented invention is not available to the public at a reasonably affordable price, or

   (c) that the patented invention is not worked in the territory of India

Moreover, license granted on the accountability and ability of the applicant’s work to the public Advantage. Nature of the invention and measures taken by the patentee to make full use of the invention.

Section 92(1) of the Indian Patent Act states that

In situations of national emergency, extreme urgency, or for public non-commercial use, the central government may grant compulsory licenses for sealed inventions by issuing a notification in the Official Gazette.

After the notification has been issued, any interested party may apply to the Controller for a license. The Controller will then grant a license to the applicant, along with appropriate terms and conditions.

Amid the COVID-19 outbreak, MSF has been consistently urging the use of flexibilities provided by the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement of the World Trade Organization (WTO). These flexibilities include the use of compulsory licenses and government-use licenses, which can address the ongoing issues. To tackle the severe impacts of the pandemic, MSF has been advocating for additional measures to be adopted by WTO and its member countries. These measures should temporarily halt the enforcement and application of relevant intellectual property (IP) to ensure uninterrupted production and supply of essential COVID-19 health technologies throughout the pandemic, until global herd immunity is achieved.

Article 31(b) waives the need to obtain authorization from the right holder of a patented product

There were certain limitations of Compulsory licensing during pandemic

• It may invite unwanted pressure
• It requires case by case approach
• It does not provide an effective remedy for emerging and evolving patent barriers
• It must be used primarily to supply in domestic market

Conclusion

It is within the authority of countries to issue compulsory licenses for essential health technologies. However, in order to ensure unobstructed access to medical tools for COVID-19, they should consider temporary automatic measures such as the TRIPS waiver proposal initiated by South Africa and India. This proposal temporarily suspends certain obligations related to the granting and enforcement of intellectual property on essential health technologies. It provides a crucial legal option to address monopolies on intellectual property during a pandemic. It is recommended that all governments support and adopt this initiative.

Author : Nishchay Agarwal , in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD.

References:

• https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/compulsory-licensing-india-and-changes-brought-it-trips-agreement-2021-10-12_en
• https://www.iisd.org/articles/policy-analysis/trips-waiver-negotiations-mc12
• https://msfaccess.org/compulsory-licenses-trips-waiver-and-access-covid-19-medical-technologies
• https://www.ncbi.nlm.nih.gov/pmc/articles/PMC7242884/

Nft And The Underlying Issues

INTRODUCTION

What we call “Non-Fungible Tokens” (NFT) is a novel approach to tokenizing assets on the Ethereum blockchain. You simply need some elementary computer abilities to make your own unique NFT, which will then be signed with your digital fingerprint. Because it is incomparable to other NFTs, it cannot be compared to others and is hence non-fungible. On the other hand, fiat currencies and cryptocurrencies like bitcoin are fungible, such that one dollar is always equal to another dollar’s worth. They allow for the authentication of digital works of art and other items by encoding a certificate of authenticity in the form of a token on the blockchain.

Digital contracts on the Ethereum blockchain have given content creators unprecedented power. Projects using NFT use blockchain, a distributed ledger that can’t be hacked. Art, music, in-game items, and movies are all examples of digital assets that portray physical stuff. They may be bought and traded online, typically using bitcoin, and are encoded using the same underlying software as numerous cryptocurrencies. Anybody with access to a computer and the internet may create an NFT and sell it on the internet, with Open Sea being the most popular venue.

ISSUE WITH THE IP

As the NFT has become entrenched in popular culture, ushering in a new age of technical innovation in the arts, fresh issues have arisen concerning its use. There has been widespread oblivion over IP usage outside of academic circles. For instance, how can one forbid others from creating similar NFTs of their work, in whole or in part, or how does the simple act of purchasing the NFT not allow the purchaser the right to utilise the art in the development and sale of things other than the NFT?

The listing for an NFT will be deleted from the marketplace after a notice and takedown, but the NFT itself will still be active on the blockchain, breaching the Doctrine of Fair Deal and causing irreparable injury to the author’s moral rights.

Concerns about legal repercussions paled in comparison to the NFTs’ aspirations, which grew as their uses spread into the creative fields. Creators and consumers alike face issues with NFTs if intellectual property legislation is not properly understood.

NFTs AND LAW

Although the Indian legal framework around NFT is murky at best, it is possible to speculate on the likely stance of the courts by looking at precedents and existing laws.

i. Law of Trademarks

Web3.0 trademark infringement stems from web2.0’s legal standing, namely the similarities between the domain name and NFT. The most prevalent cause of domain name conflicts is cybersquatting, which occurs when a third party registers a company name, product name, or other identifier that belongs to another party as a domain name.

The Trademarks Act of 1999 affords trademark-like protection for domain names in India. Whoever breaches a domain name that has been registered in accordance with a lawful proclamation is subject to the penalties outlined in Section 29 of the aforementioned Act.

One is likely to face legal action under Section 29, Trade Marks Act, 1999, if you create NFT that infringes on the trademark of another party. Hermès, a French luxury goods business, recently became the first major brand to take legal action over the use of trademarks in the metaverse when it sued an artist for creating NFT of counterfeit handbags. At first, Hermès warned the developer to stop working on the project, calling him a “digital speculator” who was just interested in getting rich quickly. Hermès launched a complaint against the developer, charging trademark infringement related to his MetaBirkins NFTs, which are digital knockoffs of the brand’s signature handbag. The company is seeking monetary damages in addition to an injunction against the creator’s NFTs, the destruction of any already minted samples, and ownership of the project’s domain name, which is currently registered to a party other than Hermès.

As a result, it is recommended that when developing NFTs, creators refrain from using any third-party trademarks.

ii. Law of Patents

There are now accessible patents for NFTs, and more are likely on the way. Nike, to use just one example, has been granted a patent for “generating cryptographic digital assets for footwear,” which would allow buyers to verify the authenticity of their purchases and carry around a digital collectable version of their shoes in their digital wallets. The total number of blockchain-related patents is on the rise.

For an idea to be protected by a patent in India, it must meet a number of criteria, including being novel, valuable, and not intuitive. It also can’t be one of the unpatentable invention types described in sections 3 or 4 of the Act.

The position of patent law on NFTs is confusing since NFT is both an art and a computer programme. To add insult to injury, the law makes it clear that in India, software or computer programmes are not patentable in and of themselves. In particular, according to Section 3 of the Patents Act of 1970, “a mathematical or business process, or a computer programme per se, or algorithms,” are not innovations and hence cannot be patented. This means that until the government issues a formal announcement or passes legislation, the question of its legitimacy remains unanswered.

iii. Law of Copyrights

Literary, artistic, educational, and musical works are all protected by copyrights, a kind of intellectual property that gives the rightful owner the exclusive right to reproduce and distribute the work in question. In accordance with Section 17 of the Copyright Act of 1957, the author automatically acquires sole ownership of the work upon its creation.

CONCLUSION

The fields of NFTs, Copyright, patent, and trademark law need to start working together if they are going to reach their full potential as a new vehicle for creating and trading the inherent value of creative works. On the other hand, creatives and enterprises that are interested in entering these markets need to proceed with prudence and be mindful of the inherent dangers of IP at all times. Consequences of NFT copyright, NFT trademark, or NFT patent violation in India are not known.

Many of the current IP conflicts in the sector appear to require judicial intervention, despite the platforms’ efforts to resolve IP concerns. Challenges to the legal claims will come from problems ranging from jurisdiction to merely identifying the liable party.

In addition, if you are able to pinpoint a specific business or person who is infringing your IP, you will have a pressing need to validate and authenticate copyright ownership before minting NFT to collect evidence that proves the minter has the required authorization to do so. On the other hand, it may be impossible, impractical, or too expensive to go after random copycats who are stealing your IP within the NFT.

To sue someone for anything they did on the blockchain would be difficult since their activities are decentralised, pseudonymous, and global. NFTs provide an intriguing new opportunity to reach a wider audience, get traction in a new industry, and perhaps even monetize your efforts. If you’re an artist or brand owner, you need to know that putting your IP at risk might have disastrous results.

Further, artists or corporations may opt to licence their brands rather than develop NFTs. NBA Top Shot was made possible, for example, because Dapper Labs was granted a licence to use the NBA name and other trademarks. If you’re a cricket fanatic and you manage to get your hands on an NFT of MS Dhoni’s World Cup helicopter shot, you’ll have a guaranteed smash hit on your hands and will have trouble meeting client demand. The development of NFT-related laws will be an intriguing topic to follow.

Author :Harsha Parakh, a student at Disha Law College. In case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES:

• Sulakshya P, “NFT And Its Relationship With IPR – Fin Tech – India” (NFT And Its Relationship With IPR – Fin Tech – India, November 17, 2021) <https://www.mondaq.com/india/fin-tech/1132188/nft-and-its-relationship-with-ipr&gt; accessed December 6, 2022

• Sneha Mahawar, “First-Principles Analysis of the Implications of IPR Law on NFT – iPleaders” (iPleaders, April 17, 2022) <https://blog.ipleaders.in/first-principles-analysis-of-the-implications-of-ipr-law-on-nft/&gt; accessed December 6, 2022.
• Surana, “NON-FUNGIBLE TOKENS & INTELLECTUAL PROPERTY RIGHTS – AN ANALYSIS – SURANA & SURANA” (NON-FUNGIBLE TOKENS & INTELLECTUAL PROPERTY RIGHTS – AN ANALYSIS – SURANA & SURANA, April 6, 2001) <https://suranaandsurana.com/2022/04/06/non-fungible-tokens-intellectual-property-rights-an-analysis/&gt; accessed December 6, 2022.

IPR Waiver and Covid-19 Vaccines

December of 2019, this is when the outbreak of novel coronavirus disease (COVID-19) was initially noticed in a seafood market of Wuhan city in Hubei Province of China. On March 11, 2020 World Health Organisation declared COVID-19 as a pandemic and that’s when the things changed. Every country was in the race of developing a vaccine for this disease and certain high-income nations came up with a vaccine too, but their ability to fight the disease or what we call their effectiveness was always questioned. Before it all became a mere business, in October of 2020, India and South Africa took the initiative and requested the World Trade Organisation (WTO) to suspend the intellectual property rights related to COVID-19 vaccine for a limited period of time. The countries had asked the TRIPS Council to recommend, a waiver on the implementation, application and enforcement of four sections in the second part of the agreement. These sections are “1, 4, 5, and 7”. They pertain to copyright and related rights, industrial designs, patents, and the protection of undisclosed information. 

According to India and South Africa, the intellectual property waiver might help middle income countries as this will open up space for production with “emergency use authorisations (EUA)” — such as those developed by Pfizer, Moderna, AstraZeneca, Novavax, Johnson & Johnson and Bharat Biotech – since most part of production was concentrated in the high-income countries, only. Middle income countries were only able to produce vaccines through “licensing or technology transfer agreements”. Basically, the main objective of making this request was to ensure rapid scaling-up of manufacturing of vaccines and ensuring accessibility and affordability of vaccines for all.

INTELLECTUAL PROPERTY RIGHTS AND ITS SIGNIFICANCE

“Intellectual property (IP) pertains to any original creation of the human intellect such as artistic, literary, technical, or scientific creation. Intellectual property rights (IPR) refer to the legal rights given to the inventor or creator to protect his invention or creation for a certain period of time. These legal rights confer an exclusive right to the inventor/creator or his assignee to fully utilize his invention/creation for a given period of time.” 

In modern economy, intellectual property plays a vital role. It has also been conclusively established that the intellectual labour associated with the innovation should be given due importance so that public good emanates from it. Since the market place has seen a jump in investments in new technologies, there has been a quantum jump in the costs of research and Development (R&D), as well. The stakes of the developers of technology have become very high, and hence, the need to protect the knowledge from unlawful use has become expedient, at least for a period, that would ensure recovery of the R&D and other associated costs and adequate profits for continuous investments in R&D. Drugs and Pharmaceuticals, more than any other technological area, match the description of globalization and a need to have a strong intellectual property system. Cost of introducing a new drug into the market can be anywhere around $300 million to $1000 million with which comes a tonne of associated risks at the development stage. There exists no doubt in it, that no company would appreciate its intellectual property becoming a public property without any financial benefit to it or having adequate returns. Pharmaceutical industry is basically driven by its scientific knowledge and a company’s success is largely dependent in Research and Development (R&D) efforts and not manufacturing know-how. Therefore, investments in R&D in the drug industry are very high as a percentage of total sales. There is high cost attached to the risk of failure in pharmaceutical R&D with the development of potential medicines that are unable to meet the stringent safety standards, being terminated, sometimes after several years of investment. It takes at least 8-10 years from the date of compound synthesis for the final medicine to be delivered to the market place.

DETERRENTS OF WAIVER

Pharmaceutical companies including Pfizer and AstraZeneca had opposed the proposed waiver — saying “eliminating IP protections would undermine the global response to the pandemic, including the ongoing efforts to tackle new variants. It could also create confusion that could potentially undermine public confidence in vaccine safety and create a barrier to information sharing. Most importantly, eliminating protections would not speed up production”.

Not only this, the founder of Microsoft – Mr. Bill Gates, had expressed his opinion against the proposal and sharing COVID-19 vaccine technologies. He also said in one of his interviews that, “The thing that’s holding things back, in this case, is not intellectual property. It’s not like there’s some idle vaccine factory, with regulatory approval, that makes magically safe vaccines”. He also mentioned that it would not be feasible for a company to move vaccines to a developing nation.

The International Federation of Pharmaceutical Manufacturers & Associations (IFPMA) has pointed out the “real challenges” in scaling up production of COVID-19 vaccines. These include – trade barriers, limited supply chains, scarcity of raw, and the unwillingness of high-income countries to share doses with low-income nations.

VACCINE DIPLOMACY

As the COVID -19 pandemic continuous to rage dynamically, the world is still suffering from inadequate vaccine production and its shortages. Even after 170 million cases (approx.), over 3 million deaths and 22 months of pandemic Nations worldwide struggles to create a mechanism for equitable supply of vaccine. Current situation of vaccine production and supply is very flawed because the gap between vaccine supply of developed and developing companies are widening day-by-day. According to a magazine named Science, almost 85% of the vaccine administered worldwide are injected to rich and middle-income countries.

International diplomacy and relations have Overtaken the vaccination drives and administration and because of this international effort for equitable distribution of vaccine has compromised. The COVAX initiative, even though it was a great multilateral approach to provide vaccines globally has faced a lot of problems. Vaccine manufacturing and supple are uneven as per density. West countries produce most of the vaccines while countries like India and Russia find it very difficult to scale up their production. These problems get more worse because of numerous components such as non-availability of Raw material, Profit motive of big pharma companies and Pharma Lobbies which tend to control the rate of vaccine and its supply with using Intellectual Property Rights as weapon at the cost of human life and well-being. Adding to these points Vaccine Diplomacy has become a method for dominant countries to increase their influence and control in Diplomatic world.

While the west countries make administering the vaccine to their citizen as their priority, countries like Russia and China supply their stock in developing market to create a soft power for themselves. The mission which is to save humanity have converted into Diplomatic faceoff between prominent countries.

Vaccines are now considered as important weapon in International Politics and it is a part of what some groups refer to as Global Nationalism, to gain more dominance in this geopolitical struggle of powers. The difference between administering vaccines can be identified by the fact that in Developed and more Income countries, citizens are vaccinated every second while in underdeveloped countries large number of people await their first dose.

Many higher-income countries which have immense technology and IPR monopoly use this power to fuel their economies and develop it to become stable after the Lockdown. Because of the trade war with China going on, USA must put their economy first before human development. While USA and other west countries are occupied in this Russia and China have aggressive policies to fulfil the vacuum of vaccine by bilateral accords and negotiations. They are keen on taking their influence over the international arena.

WILL THE WAVIER OF IPR PROMOTE TECHNOLOGY TRANSFER ?

With respect to COVID vaccines whole body of knowledge that is used for developing the vaccine is not necessarily patented. But some of that knowledge is kept disclosed as trade secret. Patenting only ensures that companies can earn profit with their technological innovations. Even though patent information may make it feasible for outsiders to obtain development results that are equivalent to those accomplished by the patented technology through a similar process without breaching the patent right, maintaining the technology undisclosed as a trade secret or implementing critical procedures into it may be an efficacious method of preserving the technology’s appropriability. Through the technique of “reverse engineering,” which refers to the process by which the active ingredients of a medicine are determined because of DE formulation, pharmaceuticals may be easily pirated and trafficked onto the black market. Over this, it is usually seen to be important to avoid the occurrence of counterfeiting using patents.

While it is unknown how much of the relevant technological information is still to be patentably secured, it seems like there are various technical reasons for not acquiring comprehensive patent protection at this point. The Pfizer and Moderna vaccines make use of advanced technology built on messenger RNA (mRNA), and it’s the first time such technique is used in a realistic context. It is quite possible that such vaccines will be difficult to fake since their production entails use of complicated manufacturing techniques and proprietary technology.

When you patent anything, you are making specialist knowledge available to the public and providing guidelines on how to replicate patented inventions. Since it clarifies the rights of ownership to advanced technologies, it serves the function of reducing cost of technology transfer. The technical knowledge necessary for producing a certain product may not be preserved in any written or other tangible form if the trade secret is not disclosed, and it may be appropriate to transfer the technical data as progressive knowledge acquisition. As a result, it is possible that transfer of technology will become more difficult.

If technical data about patented vaccines is publicly disclosed, and it becomes feasible to manufacture the vaccines in third-party nations, as is generally the case, an increase in supply would benefit people since the elimination of a monopolies reduces cost for vaccines. Among past instances, we should consider the application of the WTO TRIPS agreement waiver to HIV/AIDS medications in 2001, which was the first time this had been done. Médecins Sans Frontiers believes that the costs of patented pharmaceuticals have plummeted to less than a 10th of their previous levels in only one year, hence expanding access to the treatments around the globe. Given the fact that the principle of competition is effective, it is expected that access to COVID-19 vaccinations would enhance.

In contrast, the positive example of the waiver applied to HIV/AIDS drugs may be hard to emulate if, as the pharmaceutical industry asserts, developing nations total absence the technology necessary to create and maintain vaccines, if the swift rise for vaccine raw materials induces production to be interrupted all around globe, or if limitations are levied on the export of vaccine raw materials.

Even if the patent is deferred, an unregulated distribution of production areas would be inefficient, provided that concept of scale economies appears to apply when fixed costs (such as those associated with factories, storage facilities, and other infrastructure) associated with vaccine development are extremely high. The most efficient way would almost likely be to concentrate vaccine manufacturing in a smaller number of specific nations with significant manufacturing capacity and then export the vaccines from those countries to other countries.

INDIA’S ROLE IN VACCINE DIPLOMACY

Ever since inception of the coronavirus outbreak, India has served as a model of success. Despite being one of the first nations to implement full lockdown and masking laws, the country has shown a dramatic increase in the number of coronavirus infections in latest days. Although the rate of infection increased, it fell just about as rapidly as it rose, with experts claiming a range of possible justifications, including outstanding mask adherence by the public, a nationally united quarantine approach, and the possibility of natural immunity in the public. Even though it launched considerably later than many western nations, India has been able to vaccinate over than 10 million citizens in a very short period.

The Government of India was among the first governments to indulge in “vaccine diplomacy,” that is a strategy for assisting countries who otherwise be incapable of getting access to promising vaccine candidates in the pipeline. According to the Ministry of External Affairs of the Indian government, “the Government of India has received multiple requests for the delivery of Indian made vaccines from surrounding and important regional allies.” By these requests and in compliance with India’s stated commitment for using India’s vaccine manufacturing and shipping capacity to assist all of humanity in the struggle against the Covid pandemic.

This is consistent with India’s traditionally recognized position in the development of vaccines for the whole world. For many years, India was hailed as having a thriving pharmaceutical sector, particularly because it is the world’s largest manufacturer of vaccinations. According to a previous Forbes article, the country’s expanding rapidly $19 billion-dollar pharmaceutical industry is due to the fact that “Many frequently utilised and very well medicines are broadly shipped overseas from India, such as Paracetamol (also known as Acetaminophen or Tylenol), anti-viral such as acyclovir, essential vitamins, progestin, and antimicrobials, among others.

In terms of production capacity, there are several industry-leading pharmaceutical companies in India that are stepping up their efforts to combat Covid-19, including the renowned Serum Institute of India and Bharat Biotech, among others.

ARGUMENTS IN FAVOUR OF WAIVER	ARGUMENTS AGAINST THE WAIVER
The pandemic is a global public health problem.	Reduced or no returns on R&D investments of pharmaceutical companies.
Patent holders cannot produce enough vaccines to meet demand.	Companies incur huge expenses as vaccine production requires specialised technology and best of brains.
Public funding is used for the development of some COVID-19 vaccines.	Pharma companies would hesitate to take the initiative, next time when there prevails a situation like COVID-19.

Author: Vishwas Nagori and Vaishnavi Deshpande –a students of NMIMS (Indore), in case of any queries please contact/write back to us at Khurana & Khurana, Advocates and IP Attorneys.

Trade Secret Vs Patents

Intellectual Property Rights (IPRs) are the intangible assets created by the human mind. The governments have taken immense steps by creating legal frameworks to protect these assets through various means intended for the benefit of the innovator for disclosing his / her invention. This includes the offering of monopoly to the innovator.

_{[Image Credit: Shutterstock]}

The widely accepted and known IPRs are patents, trademarks, copyrights, and geographical indications, which are protected through statutory laws. This blog discusses the relatively lesser-known IPR, “Trade secret” and how it differs from the Patents.

Trade Secrets:

The main aim of the IPR laws is to promote new technologies, artistic expressions, and inventions while advancing economic growth. However, it is always not feasible to protect the company’s inventions / intellectual assets through patents alone. Trade Secrets are of great value in these circumstances and offer to protect confidential information, which is classified as a secret having high commercial viability. Examples of trade secrets include secret formulae / recipes like KFC, Coca-Cola, etc.

Since no registration or filing requirements are in place for trade secret protection, there are high risks associated with the trade secrets, particularly when the secret in divulged to a third party. Unauthorized copying and duplicate products/processes are the major impact factors that would also result in a severe economic impact on the actual owner of the Trade secret. Therefore, the company has to take greater measures on its own to protect the confidential information to maintain the secrecy to the fullest extent possible.

Trade secrets offer the profitable option for protection since it does not have to fulfil the governmental regulations like applications or registrations. Further, they also offer the companies many advantages like perpetual monopoly until the secret is divulged to a third party. However, they are considered to be the weakest of the IPR protections since it may lose its protection when there is a failure in the face of the company to take appropriate/reasonable measures to maintain the secrecy.

Patents:

Patents on the other-hand offer protection through monopoly for a limited period i.e., normally 20 years for the disclosure of the information to the public. Since, competitors have access to the products, manufacturing processes and / or formula after a patent request is filed, it promotes healthy innovation competition and would result not only in the economic significance but also results in technological advancements.

However, the monopoly for a period of 20 years offers to exclude the others from making, using, selling the invention without the consent of the patent owners. Any violation of the above would ensue in infringement of the protected inventions and would result in the costly litigations that might result in injunctions, royalties, damages, etc. Hence, companies would always take necessary legal steps like licensing, assignments, etc. before practicing the protected inventions. These will ensure the protection of the economic interests and growth of the innovator companies. Further, patent protection enables the innovator to gain larger market shares, control competition, etc.

Additionally, patenting involves regulatory processes like filing and registration with stricter norms; they offer the highest protection to the inventions by stricter enforced under the law.

Author: Govindhaswamy Srinivasan, a Principal Associate – Patents at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at support@ipandlegalfilings.com

Supreme Court Stays Controller General of Patents, Designs and Trademarks Guideline Dated 18.05.2020 and 20.05.2020

The Delhi High Court, by virtue of the order dated 21^st May 2020 in the case of Intellectual Property Attorney Association (IPAA) and Anr vs The Controller General of Patents, Designs and Trade Marks and Anr. the Plaintiff seeked to quash the Public Notice dated 18.05.2020 passed by the Respondent, and thereby restrain them from acting on it, and further, sought direction from the Respondent No. 1 to issue a Clarificatory Notice for all IP statuses, in compliance of the Order passed by the Supreme Court on 23.03.2020 in Suo Moto, Writ Petition (Civil) No. 3/2020.

The Petitioner has placed reliance upon the order given by the Supreme Court on 23.3.2020, which was directed keeping in view the current pandemic, that the period of limitations in all proceedings, irrespective of the limitation prescribed under the General Laws and Special Laws, whether condonable or not, shall stand extended, with effect from 15.03.2020, and last until further orders passed by the Supreme Court.

The Petitioner claims that in contradiction, the Respondent passed a new guideline dated 04.05.2020, which starts the limitation period from 25^th March 2020 and extends the limitation period only until 18.05.2020, i.e. one day after the expiry if the current Lockdown period.

The Petitioner contends that as per the Supreme Court’s Orders:

1. The protection period of limitation under general and special laws is triggered from the 15.03.2020 and not the 25.03.2020

2. The fixture of the cut-off date as 18.05.2020 for the completion of various act/proceedings, filings, payment of fees, etc. in the matter of any IP litigation is both against the Supreme Court’s order dated 23.03.2020 and also a burden on litigants as well as their advocates.

3. Merely because a skeletal staff is now working in various IP offices, under the administrative control of the Respondent, it cannot lea to a conclusion that the lockdown has ended, and hence by not extending that timelines expiring on 18.05.2020 and thereafter, the Respondent has put the Litigants and Attorneys in a jeopardy by forcing them to move out of their houses and file opposition/counter statements/evidences etc. at the IP offices in order to avoid the application, opposition, rectifications being abandoned. Even the extension of limitation between 15.03.2020 and 17.05.2020 to any outer timeline of 01.06.2020 is placing enormous burden on the stakeholder, as the window is too narrow.

The Counsel for the Respondent, in his defence submits that the petitions (without fee) under Rule 6 (6) of the Patent Rules have been provisioned through e-filing mode and it is also to be notified that delay in transmitting or re-submitting documents to the Patent Office may be condoned/timeline be extended by the Controller General on a Petition made in that respect.

The Court held that:

1. No Court, Tribunal or any authority can act in contradiction to the Order of the Supreme Court dated 23.03.2020, which has been passed in exercise of the Supreme Court’s powers under Article 141 and 142 of the Constitution.

2. Under Article 144 of the Constitution, all authorities, whether civil or judicial, located within the territory of India, are required to act in accordance to the Orders passed by the Supreme Court of India.

Therefore, in conclusion, via Oder dated 21.05.2020 the Court held that the best course forward would be to suspend operations of the public notice dated 18.05.2020 and 20.05.2020, as well as directed the Respondents to act in accordance to the Supreme Court notice dated 23.03.2020. Hence, the Respondent No. 1 was directed to file and affidavit within a period of two weeks, in response to the present application. The matter is next listed on 17.06.2020.

References:

[1] https://www.iiprd.com/wp-content/uploads/2020/05/Order-21-May-2020.pdf

Grant of Multimedia mark by UKIPO

The United Kingdom Intellectual property Office (UKIPO), on 26^th June 2019, granted a multimedia mark to Japan’s technology giant Toshiba. With this grant, Toshiba has become the first enterprise ever to have been granted a multimedia mark by the UKIPO. The trademark shows several multi-coloured polygons that zoom out representing an Origami and disappearing.

Interestingly, this grant also corresponded with the British IP day which is also celebrated on the 26^th of June. The grant of first-ever multimedia trademark is seen by many as a way of marking the IP day by the UKIPO.

WHAT IS A MULTIMEDIA MARK

Unlike the traditional trademark, a multimedia mark combines elements of sounds and images. Earlier, marks that were capable of being represented graphically were only allowed to be registered with the trademarks office, but now animation clips, brief video clips, jingles, etc. are also allowed to be registered as a trademark.

CHANGE OF LAW IN EUROPEAN UNION

As mentioned above, only those marks which were capable of being represented graphically were allowed to be registered as a trademark under the laws of the European Union earlier. This changed with the introduction of the new law that was made applicable on the 1^st of October, 2017.

The European Union directive 2015/2436 has changed the requirement of graphical representation of a trademark, and in effect has allowed multimedia marks to be registered. Article 3 of the 2015/2436 directive[1] that has allowed the registration of multimedia trademarks reads as follows:

Signs of which a trade mark may consist:

A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor

Hence, the above definition excludes the necessity of a trademark to be represented graphically. Now, all that is required is that the competent authorities and the public is able to determine the precise subject matter.

CHANGE OF LAW IN THE UK

These provisions were introduced in the UK trademark law through the 2018 trademark directive. The directive, issued by the UKIPO, clearly states[2] that the applicant of the trademark is no longer required to provide a graphical representation of his trademark. He can instead present his trademark in a different range of electronic formats such as mp3 or mp4 as long as it has been presented clearly and others can understand what it is.

The new changes have opened a whole new Pandora box for the enterprises who would be really interested in availing these opportunities in the near future. But it is important to remember that the very basic requirement of a trademark registration still remains in place i.e. the mark must be capable of distinguishing the applicant’s product. The new multimedia trademark still will have to satisfy this requirement for a successful registration.

Author: Varun Sharma, LL.B., 3rd Year, Campus Law Centre, University of Delhi, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1] https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32015L2436

[2] https://www.gov.uk/government/publications/implementation-of-the-trade-mark-directive-2015/implementation-of-the-eu-trade-mark-directive-2015

Google Files Patent for Narrow Band Satellite Android Phones

A recent publication from the United States Patent and Trademark Office (USPTO) of a patent application has revealed that Google, the US technology giant may launch a smartphone with the additional narrowband satellite connectivity option. If this turns out to be true, it will make the already much-desired android smartphones even more desirable over its rivals.

WHAT IS A NARROWBAND SATELLITE COMMUNICATION

The narrowband satellite communication uses one or more orbital satellites for enabling communication between users. This is different from the traditional method of communication that uses cell towers to enable users to connect with each other wirelessly. This form of communication will allow the users to have an additional option through which they can communicate. The smart device will effectively choose between the 5G connection available and the narrowband satellite connection as per the quality of each connection available at a certain point of time.

For Example: If a smartphone user tries to make a phone call in the middle of New York, with 5G connectivity available to him, the smartphone will make use of the available 5G connection for making that call. But if the user is travelling in the suburbs, where his 5G connection does not have the service required to make a call, the smartphone will switch to the narrowband satellite communication system and make the using the orbital satellites available in that region.

GOOGLE’S FUTURE PLANS

It is still not certain what exactly Google will do with this patent. In its patent application, it has marked out the various situation where the use of this narrow band satellite system will be productive. It has given the example of a driver who is stranded on the roadside with no cellular coverage will not be able to call for roadside assistance, a hiker who may not be able to avail the cellular services in the remote areas to contact emergency services.

Another example that Google gave, and which according to me is the most important one, is the use of this technology in the time of a natural disaster. Natural disasters are known for disrupting cellular connectivity even in the middle of a metropolitan city. Google has placed this technology to be used in such a situation.

COST INVOLVED

Using the new, satellite-based connectivity option will not come cheap for the users. They will have to pay a premium on what they are already paying for making use of this technology. The users can expect an increase in charges with this technology. But given the situation in which this technology is stated to be used, for eg., in a remote area, during a disaster, it may hurt the users that much to pay the extra few bucks for availing this service.

On the other hand, Google may launch this service as an elite form of communication service for law enforcement agencies, industry players, lawyers and all others who might need an affordable satellite smartphone.

It needs to be seen what Google comes up with using this technology. It is well to mention that Apple already has a patent in the domain of satellite phone which it had acquired from Nortel in 2013, but didn’t really make any use thereof. But given the history of Google, it is much more aggressive when it comes to new forms of communication, so we just might see a possible satellite-based Android smartphone in the future.

Author: Varun Sharma, LL.B., 3rd Year, Campus Law Centre, University of Delhi,Intern at Khurana & Khurana, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1] https://patents.google.com/patent/US5903835 

[2]  https://www.patentlyapple.com/patently-apple/2019/06/google-files-patent-for-android-phones-with-narrow-band-satellite-communications.html