News

Delhi HC: IP Disputes to be Adjudicated by Designated Commercial Courts

In an appeal against the order of the Additional District Judge (“ADJ”) (non-commercial) refusing ex parte injunction against an alleged act of trademark infringement, the High Court of Delhi noticed the mass practice of undervaluation of IP suits to escape the rigours of the provisions of the Commercial Courts Act, 2015 (“CCA”). The Court, in this case, was called upon to decide if the valuation of the ‘specified value’ of such IPR disputes has any role to play in determining whether the District Court has jurisdiction.

The Court observed that it is clear in the IPR-related enactments that IPR disputes are a set of disputes which lie only before the District Court. But with the enactment of the CCA, the subject-matter jurisdiction over IPR disputes now vests with the Commercial Courts, at the District Court Level. The court held that although Plaintiff is free to value the suit in the manner it so chooses, it cannot be whimsical, arbitrary, or unreasonable. In case of undervaluation, Plaintiff must give definite reasons for such valuation. 

In light of the same, the court has issued the following direction:

  1. IPR suits have to be instituted before District Judge who have been notified as commercial courts, by valuing it at Rs. 3 lakhs or above.
  2. Even the suits valued below the prescribed valuation shall be heard by the commercial District Judge to determine if such valuation is whimsical, inadequate or has been deliberately undervalued.
  3. Upon examination, if the suit is found to be undervalued, the Court shall direct the Plaintiff to either amend the suit or pay additional court fees.
  4. Even if the suits valued below the prescribed valuation are found to be adequate, they shall continue to be heard by Commercial Courts, to maintain consistency.

 

Impact

 

Litigants who want to institute IP suits  must mandatorily file the same in the district court which has been designated as commercial court, irrespective of the value of the suit. If the value of the suit is below Rs 3 Lakhs, the court will examine whether the valuation is made arbitrarily. If the court accepts the valuation below Rs 3 Lakhs, the suit shall still be adjudicated by the same court but the provisions of the Commercial Courts Act will not apply.

News

Delhi HC Restores Patents Filed by EU

The Delhi High Court restored two patents filed by the European Union which were subsequently abandoned due to non-filing of the Reply to First Examination report. The High Court noted that while the deadline is non-extendable in nature, the same can be condoned on a case-to-case basis.

While highlighting the importance of Patent Agents and analysing the facts and circumstances of this case, the Court opined that the Applicant had every intention of pursuing the application and that the Applicant’s erstwhile agent acted against the intent of the Applicant. 

The Applicant was conscious of the fact that the patent may be maturing for examination and took the initiative to keep in touch with the patent agent from the very inception. Further, while placing reliance on the judicial opinion in respect of responses to FER or other deadlines, it was evident that if the Applicant did not have an intention to abandon the application and if the Court is convinced that there was a mistake of the patent agent and the Applicant is able to establish full diligence, the court ought to be liberal in its approach. 

Among other things, the Court also took into consideration, the recommendation of the 161st Parliamentary Standing Committee’s Report which called for flexibilities in the Indian Patent Regime concerning deadlines and timeframes in patent prosecution before the Patent Office.

News

Domestic Patent Filings Surpass International Patent Filings in India

Through a Press Release posted on 12th April, 2022, it has been duly notified that for the first time in the last 11 years, the number of domestic patent filings surpassed the number of international patent filings at the Indian Patent Office in the January-March 2022 quarter. As per the data released, out of the total 19796 patent applications filed, 10706 were filed by Indian applicants against 9090 by non-Indian applicants.

The Union Minister of Commerce and Industry, Consumer Affairs, Public Distribution and Textiles, Shri Piyush Goyal acknowledged and appreciated the continuous efforts of DPIIT for strengthening Indian IP regime by fostering innovation and reducing the compliance burden. He also mentioned that the concerted initiatives of the DPIIT and IP office paved the way for IP awareness across all strata of society. Further, while the number of IPR filings was on a steady rise, the pendency of the patent application at IP offices was reduced. He also envisioned that the achievement shall take India closer to its target of being within the top 25 nations in the Global Innovation Index.

The Press Release also identified key initiatives by the government that anchored India’s IP regime and listed the following achievements:

  • Filing of patents have increased from 42763 in 2014-15 to 66440 in 2021-22, more that 50% increase in a span of 7 years
  • Nearly five times increase in grant of patents in 2021-22 (30,074) as compared to 2014-15 (5978)
  • Reduction in Time of patent examination from 72 months in Dec 2016 to 5-23 months at present, for different technological areas
  • India’s ranking in Global Innovation Index has increased to 46th in 2021 (+35 ranks) as compared to 81st in 2015-16.

News

ASCI frames advertisement guidelines for Virtual Digital Assets

On 23rd February, 2022 the Advertising Standards Council of India (ASCI) released guidelines that have been made applicable to all virtual digital assets (VDA) related ads, including cryptocurrencies and non-fungible tokens (NFTs). The guidelines shall be made applicable on such advertisements released on or after 1st  April 2022.

Further, advertisers and media owners shall ensure that post 5th April 2022 earlier advertisements do not appear in the public domain, unless they comply with the new guidelines.

All advertisements of VDA products, VDA exchanges or featuring VDAs shall carry the disclaimer that says, “Crypto products and NFTs are unregulated and can be highly risky. There may be no regulatory recourse for any loss from such transactions”.

It is also asserted that such disclaimer should be prominent and unmissable by the consumers. For example:

(a) In print or static, equal to at least 1/5th of the advertising space at the bottom of the advertisement in an easy-to-read font, against a plain background, and to the maximum font size afforded by the space.

(b) In video, it should be placed at the end of the advertisement against a plain background. A voiceover must accompany the disclaimer in text. The voiceover should be at a normal speaking of over two minutes in long format video, at the beginning and at the end of the video. The disclaimer must remain on screen for a minimum of five seconds.

(c) In audio, the voiceover should be at a normal speaking pace at the end of the ad and must not be hurried. In the case of long format audio of over 90 seconds, the said disclaimer should be repeated at the beginning and at the end of the audio.

(d) In social media posts, such a disclaimer must be carried in both- the caption as well as any picture or video attachments.

(e) In disappearing stories or posts unaccompanied by text, the said disclaimer will need to be voiced at the end of the story in the manner laid out in points (a) or (b) above.

(f) In formats where there is a limit on characters, the following shortened disclaimer must be used “Crypto products and NFTs are unregulated and risky” followed by a link to the full disclaimer.

(g) The disclaimer must be made in the dominant language of the advertisement

(h) In addition to the above, all disclaimers must meet the minimum requirements laid.

The guidelines warn the Advertisers against using the words “currency”, “securities” and “depositories” since consumers associate those terms with regulated products. The information in advertisements should not be compared to regulated asset classes.

No advertisement shall portray VDA products or VDA trading as a solution to money problems, personality problems or other such drawbacks and  shall not contain statements that promise or guarantee a future increase in profits

Every advertisement for VDA products must clearly give out the name of the advertiser and provide an easy way to contact them (phone number or email). This information should be presented in a manner that is easily understood by the average consumer.

The guidelines maintain that since this is a ‘risky’ category celebrities or prominent personalities who appear in VDA advertisements must take special care to ensure that they have done their due diligence about the statements and claims made in the advertisement, so as not to mislead consumers.

News

Karnataka HC lifts Ban on Online Gambling

On 14th February 2022, the Karnataka High Court lifted the ban on the State’s recent online gambling law on the grounds of being unconstitutional, providing a major relief to skill-based online gambling firms that previously had to shut down operations in the State.

On 22nd December 2021, the High Court had reserved its judgement on the law that came into effect from 5th October 2021. The series of petitioners included the Skill gaming industry body All India Gaming Federation (AIGF), self-regulatory fantasy sports industry body Federation of Indian Fantasy Sports (FIFS), real-money gaming firms Mobile Premier League (MPL), Games24x7, A23(Ace2Three), Junglee Games, Gameskraft and Pacific Games, among the dozen others who had moved to the high court against the law.

The petitions had challenged the constitutionality of the amendment made to the Karnataka (Police) Amendment Act that banned all forms of online gambling which involved the transfer of money. The said amendment came into effect as a consequence of public interest litigation filed in the Karnataka High Court which sought a ban on online gambling. The amendment removed the distinction between the game of skill and the game of chance, hence bringing skill-based gambling start-ups within its purview.

News

Santosh Vikram Singh – One of India’s Top IP Lawyers in 2021

Our Partner, Santosh Vikram Singh was recognised as one of India’s top 15 IP Lawyers in 2021 by the Asian Legal Business in its November- December Edition, 2021. 

 

What ALB Publication says?

 

Singh is a partner at Fox Mandal & Associates, spearheading its IP law practice and a key partner
of the firm’s sports law and entertainment law team. He was admitted to the India Bar in 2009 and has been a part of Fox Mandal for over two decades. Among his clients, Singh has led a team of IP attorneys to assist Samsung Electronics, Korea, since early 2000 in their various IP issues. He further assisted Samsung’s Indian R&D centre in planning their IP journey in India with several hundred granted and pending patents. He also assisted the client in getting various recognitions for filing the maximum number of patent applications from South India for multiple years in a row.

Singh also advised Mitsubishi UFJ Research & Consulting, Japan, on numerous occasions on several study reports (projects) related to research on implementations of India Patent Law (Consistency with TRIPS Agreement). Furthermore, the team led by Singh was instrumental in helping TATA SIA Airlines adopt the mark “Vistara”.

In addition, Singh and his team have been advising Dover Corp, USA and its group companies in patent-related matters, including data mining, infringement analysis, patent searches, advisory, and prosecution work. He regularly assists Dover India in IP transactional and software licensing assignments. Singh was selected as one of ALB India’s Top 15 IP Lawyers list in 2020. “Working with Santosh and his colleagues has always been a pleasurable and professional experience,” says Bruce Lilling, owner of IP Dinosaur. “Fox is a big firm with a small firm feel. For close to 25 years, I have used them as my go-to firm in India for my clients.”

News

Tier I Firm in India – Copyrights/Trademarks and Patents

Asian Legal Business (ALB) has recognized Fox Mandal as a Tier I Firm in Asia for Patents, Copyright and Trademark. This is the fourth year in a row that we have been recognized by ALB.

Organization: Asian Legal Business

News

Covid-19 vaccines: Patent Rights Vs. Public Interest

The recent pandemic has reignited the long-debated issue of Patent Rights Vs. Public Interest. We all have been deliberating on whether Patent rights are Public rights or Private rights – perhaps now is the time to decide.

Considering the lightning speed at which Pharma companies around the globe have responded with the development of a vaccine, they have surely earned the right to demand for rewards for such a hard work.

Generally, where a Vaccine takes years to develop before it is made available to the public, here, this has been achieved (almost) within months through unparalleled hard work.

This discussion is around the Patent rights available to the Pharma companies to reap the benefits of hard work and investment vs. public rights to get access to the life-saving vaccines at affordable rates. What is right vs. what is ethical?

The big question here is, whether the respective Govts step in to intervene in fixing the price (affordable) of vaccines once it is available, or would it be unjust and unfair for the Pharma companies and they deserve the return for their investment?

Further, how would the Govt intervention pan out in the long run considering the deterrent effect it might have in future in similar situations? It is a debate of heart vs mind, humanity vs. business, right vs. ethics.

Speakers: Santosh Vikram Singh + Outside Panelists

News

The Future of Protecting Generic Terms: Post Booking.com

Booking.com case came to limelight on June 30, 2020 when the US Supreme Court gave it’s ruling in favour of the Company allowing the mark to be registered with the USPTO.

Even though this mark has been registered in most of the prominent jurisdictions without much trouble and perhaps no one heard of it but the matter became a hot topic only after the US Supreme Court ruling.

Speakers: Santosh Vikram Singh + Outside Panelists