Securing your Data with the Trade Marks Registry

Data privacy has been a cause of concern for individuals and corporates, however, when sharing personal information with government authorities, we tend to overlook this concern. Has one ever wondered how secure her confidential, proprietary, or personal information is while sharing it with a government agency like the Trade Marks Registry?

Indian Intellectual Property Offices come under the Ministry of Commerce and Industry; therefore, they are under the control of the Central Government. The Trade Marks Registry, established in 1940, primarily acts as a facilitator in matters relating to the registration of trademarks in India.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address, and the proof of use of the trademark. The digitization of the Registry in 2017 prompted the current practice of recording information on a public access system.

 

Fundamental Concerns

Mailing Address: Open and easy access to such personal information exposes an applicant to scams and other unwanted solicitations. For instance, scam emails (that appear to have been sent by the TMR seeking maintenance fees) from third parties attempt to deceive applicants into paying additional fees. Everyone recalls how anyone who filed an international application between 2005 and 2015 was duped by international scammers who obtained their information from the WIPO. By oversight, many people were duped into paying huge amounts of money.

If an attorney represents an applicant, the TMR does not send correspondence about the trademark application directly to the applicant. In such cases, the Registry directly communicates with their authorised attorneys. Hence, if an applicant receives any mail relating to their trademark, they should consult their attorneys, who may evaluate it to guarantee that a scam letter is not mistaken for real contact.

Documents to support the use of the mark: Applicants are frequently required to submit documentary evidence to support their applications and commercial use of their marks. Such evidence is often public, but an applicant might disclose information they would not intend to make public, such as bills, financial papers, reports, and other confidential information. There is no mechanism to have them masked or deleted from the TMR’s database if such information is uploaded or disclosed.

 

Initiatives by the Trade Mark Registry

In recent times, the TMR has adopted the practice of restricting public access to evidentiary documents submitted during opposition/rectification proceedings that the competing parties upload on the TMR. However, similar documents filed during any other stage, such as filing and pre-opposition prosecution, are still exposed to public access, even if they are documents or information relating to commercial confidence, trade secrets, and/or any other form of confidential, proprietary, or personal information.

However, the advantage of such an open and publicly available database is that it serves as a countrywide “notice,” which means that an alleged infringer of your trademark cannot claim ignorance of your brand. However, disclosure of such information exposes applicants to email scams and other unwanted solicitations and can also harm their competitive position in the market.

In September 2019, on account of various representations made by numerous stakeholders regarding the TMR’s display of confidential, proprietary, and personal information,[1] a public notice was issued by the Registry, inviting stakeholders’ comments on the aforesaid concerns.

The TMR proposed the classification of such documents into two categories:

  • Category I: Documents that are fully accessible and available for viewing or downloading by the public.
  • Category II: Documents for which details will be available in the document description column, but viewing and downloading will be restricted.

 

Roadblocks and Viable Course of Action

Notably, the Right to Information (RTI) Act, 2005, obligates public authorities to make information on their respective platforms available to the public in a convenient and easily accessible manner. There are some notable exceptions to this rule, i.e., information related to commercial confidence and trade secrets is exempted from being disclosed or made accessible to the public in so far as their disclosure leads to a competitive handicap for the disclosing party. Personal information is also exempted to the extent that its disclosure leads to an invasion of privacy or if it has no relation to public activity or interest.

Hence, it is crucial to understand that while such a classification, as has been suggested by the TMR above, might seem like a good initiative on the surface, the lack of any concrete boundaries assigned to the terms “confidential” or “personal” information leaves the Registry with unquestioned discretion to generalise datasets and to restrict access to documents on the TMR website. A simple example could be data collected by the TMR through pre-designated forms, including Form TM A, Form TM O, etc. Most of these forms generally mandate the submission of certain personal information, including the proprietor’s name, address, telephone number, etc. However, this cannot simply mean that the TMR denies the general public access to such trademark application forms, as this would defeat the primary goal of advertising such marks on the Registry, which is to seek any opposition or evidence against such marks. Thus, while the objective behind such a classification of documents might be well-intended, restriction of access to certain documents might lead to a conflict of interest for the TMR, and it might end up over-complicating the due-diligence processes, leading to increased costs and resources.

Such generalised classifications are, hence, only viable in theory. The TMR might end up entertaining hundreds of RTI applications if it decides to limit access to certain documents, which might be necessary for proper due diligence and prosecution. The free and open availability of documents enables the public to have smoother and easier access to essential records and credentials of the trademark proprietors, thereby allowing the masses to have a better understanding of the prosecution history of important trademarks of the target company.

In the long run, a rather sustainable alternative for the TMR might be introducing a multi-factor authentication system for the parties interested in carrying out due diligence or prosecution against a mark. A multi-factor authentication system for gaining access to the records and documents on the Registry might lengthen the entire process in the short run. Nonetheless, the move could be game changer in the long run because it would allow the Registry to restrict access to confidential and personal data of its users to parties with an original or vested interest in the registration of a mark.

Such an approach would not only enable the Registry to provide open and efficient access to necessary documents to the parties who have an original or vested interest in the registration of a mark, but it would simultaneously vest it with the flexibility to protect the sensitive, confidential, as well as personal data of its users from scammers or non-interested parties.

 

Privacy-by-Design

A Privacy-by-Design approach is the future of the modern-day web, and as long as the Registry does not implement more elaborate internal safeguards on its website and databases to protect the privacy and integrity of public data contained therein, it is always recommended that applicants work with an experienced trademark attorney who can assist applicants in reducing the exposure of their information to individuals or a class of individuals with ulterior motives and mitigating the harm associated with the usage of their data.

References:

[1] Public Notice dated 06/09/2019 re Categorization of Documents on the TMR. Accessible at: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Catergorization_of_Docs.pdf.

The Trade Marks Registry (TMR) is a public filing system. That means once a trademark application is filed with the TMR, a lot of information is placed on record, including the applicant’s and its representative’s personal data, such as mailing address and the proof of use of the trademark. 

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CCPA Introduces New Guidelines to Ban Surrogate Advertising  

In the latest development in the advertising space, the Central Consumer Protection Authority (CCPA) under the Department of Consumer Affairs has introduced ‘Guidelines for Prevention of Misleading Advertisements and Endorsements for Misleading Advertisements, 2022’. These guidelines aim to curb misleading advertisements and endorsers by putting a complete ban on surrogate advertising effective June 09, 2022. These new guidelines will apply to all advertisements irrespective of the form, format, or platform. 

The Consumer Protection Act, 2019, provides for ‘misleading advertisements’ under Section 2(28).

Section 2(28): “Misleading advertisement” in relation to any product or service means an advertisement that— (i) falsely describes such product or service; or (ii) gives a false guarantee to or is likely to mislead the consumers as to the nature, substance, quantity or quality of such product or service; or (iii) conveys an express or implied representation which, if made by the manufacturer or seller or service provider thereof, would constitute an unfair trade practice; or (iv) deliberately conceals essential information.

The new guidelines touch upon each sub-section of section 2(28) and provide further definitions to include conditions for non-misleading and valid advertisements, definitions for bait and free-claim advertisements, and the complete ban on surrogate/indirect advertisements.

 

Salient Features  

 

Bait Advertising  

An advertisement in which goods, products or services are offered for sale at a low price to attract consumers. The guidelines lay down that:

  • The ad should not entice consumers to buy the goods or services without a reasonable prospect of selling them at a price offered in the advertisement.
  • There should be an adequate supply of the advertised goods or services to meet the demand created as a result of the advertisement.
  • The advertisement should state that the stock is limited; if the ad is to assess the demand, the same should be stated, and it should not omit restrictions regarding the availability of goods or services.

 

Free Claim Advertisement 

The advertisement should make clear the extent of commitment that a consumer shall make to take advantage of a free offer and should not use the term “free trial” to describe an offer that promises to pay the money back to the consumer in case of non-satisfaction if it requires the consumer to make a non-refundable purchase. Free claims should not be made in the advertisement –

  • If the consumers have to pay anything other than the unavoidable cost of responding to the ad or packing, handling or administration of free goods or services or if the price has been increased (except where such increase results from factors unrelated to the cost of promotion) or when the quality or quantity of goods or services has been reduced;
  • If an element of the package is included in the price, it should not be advertised as free.

 

Advertisements Targeting Children

In addition to taking measures to protect the general public from being misled, the CCPA has also laid down measures to protect the sensitive and impressionable minds of the younger generations.

  • It provides that advertisements that target or address children shall not condone or encourage activities that are dangerous for children or take advantage of their inexperience, and/or encourages practices that are detrimental to children’s wellbeing, etc.;
  • Advertisements should not be such as to develop negative body image in children or give any impression that such goods, product or service is better than the natural or traditional food which children may be consuming.
  • Advertisement for junk foods, including chips, carbonated beverages and such other snacks and drinks, should not be advertised during a program meant for children or on a channel meant exclusively for children.
  • The Guidelines also prohibit advertisers from featuring children and personalities from sports, music or cinema for products requiring  a health warning or for products children cannot purchase

 

Due Diligence Endorsers

The guidelines clearly state that the endorsements should reflect the genuine, reasonably current opinion of the endorser regarding their representation. Such endorsement must be based on adequate information or experience with the goods or services and must not be deceptive. Foreign professionals are barred from making endorsements in all circumstances where Indian professionals are barred.

If a connection between the trader/manufacturer and the endorser exists, such connection should be disclosed if such information is likely to affect the value or credibility of the endorsement and the audience does not reasonably expect the link.

 

Disclaimers 

While laying down provisions for disclaimers in advertisements, the Guidelines state that a disclaimer may expand or clarify the main offer but cannot contradict or hide the material claim made in the advertisement or attempt to correct a misleading claim made in the ad. Further, it provides that a disclaimer should be in the same language and font as the claim made in the advertisement and that the placement of the disclaimer shall be at a prominent and visible place on the packaging (ideally be on the same panel). Also, if the claim is presented as a voiceover, the disclaimer shall be displayed in sync with the voiceover and at the same speed as the original claim made in the advertisement.

Apart from the features mentioned above, the guidelines also stipulate specific duties on the manufacturer, service provider, advertiser, or advertising agency to ensure compliance in advertisements, which primarily deals with the veracity of the information/claims made in the advertisements. These guidelines are to be read as part and parcel of the Consumer Protection Act, 2019, and the non-compliance with the provisions shall also invite penalization as provided in section 21 of the Act.

These guidelines will also apply to government advertisements issued by PSUs engaged in providing consumer services along with those issued by private agencies. Moreover, the advertising guidelines for self-regulation issued by the Advertising Standards Council of India (ASCI) will also apply simultaneously.

 

Conclusion 

In the last few years, the regulatory bodies have undertaken many reformations and measures to control how and what is advertised. As our country is moving towards digitization, the need of the hour is to closely monitor the content that is made available to the public, mainly on online social media platforms. The guidelines intend to protect the interests of consumers by introducing more transparency and coherence in the way advertisements are published so that consumers can make informed decisions.

 

 

You may read our blog post detailing surrogate advertising and its enforceability for a deeper understanding of the issues.  

Image Credits: Photo by Dennis Maliepaard on Unsplash

The guidelines also stipulate specific duties on the manufacturer, service provider, advertiser, or advertising agency to ensure compliance in advertisements, which primarily deals with the veracity of the information/claims made in the advertisements. These guidelines are to be read as part and parcel of the Consumer Protection Act, 2019, and the non-compliance with the provisions shall also invite penalization as provided in Section 21 of the Act.

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Demystifying the Inventorship Rights of an AI System in India

In this age of technological advancement, Artificial Intelligence (AI) has taken a giant leap from undertaking more straightforward tasks to originating marvellous inventions. Can an AI system be considered an inventor? This question has been beguiling jurisprudence across the globe for a considerable time. However, through the recent decision of Thaler v. Commissioner of Patents, the Australian Federal Court has forced jurisdictions across the world to re-think the inventive capacity and the role of AI in the contemporary ecosystem of innovation.

Through this article, we have tried to determine the implications of the Thaler decision and examine the position of the Indian legislation on the inventorship rights of an AI.

Factual Matrix

Dr. Stephen Thaler designed the Device for Autonomous Bootstrapping of Unified Sentience (DABUS). DABUS is an artificial intelligence system that pioneered the creation of an optimised beverage container and a flashing light for use in emergency circumstances. In the persistence of such a creation, Dr. Thaler filled patent applications worldwide, including in Australia, Canada, China, Europe, Germany, India, Israel, Japan, South Africa, the United Kingdom, and the United States.

“The Deputy Commissioner” rejected Dr. Thaler’s patent application in Australia, which named DABUS as the inventor. The matter was contested and finally, the Federal Court of Australia determined that the AI could be recognised as an inventor under the Australian Patent Act. According to the Court, the patent would be owned by Dr. Thaler, the developer, owner, and controller of DABUS. The Court determined that the legislative intent was to encourage innovation and that nothing in the Patent Act expressly or implicitly forbids AI from being named as an inventor.

Indian Stance: Inventorship Rights of an AI

In India, recently, the Controller General of Patents recorded objections to recognising an AI as an inventor in the matter of patent application numbered 202017019068, citing the provisions under Section 2 and Section 6 of the Patents Act 1970 (“Act”). The term “inventor” has not been defined under the Act. However, Section 6 states that, among other things, a patent application can be filed by any person claiming to be the true and first inventor of an invention.[1]

A bare reading of the provisions indicates that a natural person is distinguished from others. One can also observe that anyone other than a natural person will be unable to claim inventorship. Consequently, a natural person who is true and first to invent, and who contributes his originality, skill, or technical knowledge to the innovation meets the criteria to be acknowledged as an inventor in India.

In the case of V.B. Mohammed Ibrahim v. Alfred Schafranek, AIR 1960 Mysore 173, it was held that a financing partner cannot be an inventor, nor can a corporation be the sole applicant that claims to be an inventor. The Court, through this decision, emphasised that only a natural person (who is neither a financing partner nor a corporation) who genuinely contributes their skill or technical knowledge towards the invention shall qualify to claim inventorship under the Act.

In the light of this judgement, it can be perceived that an AI can also contribute its skill or technical knowledge to an invention and become an inventor. However, a reference to Som Prakash Rekhi vs Union of India & Anr, AIR 1981 SC 212, clarifies the qualification of a legal ‘person’ under Indian law. The Supreme Court observed that ‘personality’ is the sole attribution of a legal person. Such a ‘personality’ is an entity that has the right to sue or can be sued by another entity. An AI is not capable of using such rights, nor can it perform the required duties of any juristic personality independently. For instance, it cannot enter into an agreement or transfer or acquire patent/patent application rights. It would also be impossible for an AI to oppose or revoke a patent application. Hence, an AI falls short of the standards for being deemed an inventor in India.

Furthermore, the legislative intent behind the Indian Patent Act as found in the Ayyangar Committee report of 1959[2] suggests that inventors are mentioned in a patent application as a matter of right. Whether or not the actual deviser has a proprietary claim on the innovation, he has a moral right to be acknowledged as the inventor. This confers reputation and boosts the economic worth of the inventor. The inventor may give up his ownership interest in a particular patent due to a contract/agreement in law, but he retains his moral right.

An examination of legislative purpose and current public policy reveals a desire to protect the rights of the inventor/natural person who creates IP and can use his moral rights. On the other hand, AI cannot be granted moral rights nor appear to enjoy the benefits intended by legislation or public policy. Given this, designating AI as an inventor/co-inventor under current Indian rules seems impossible until explicit revisions are made.

Role of AI and Economic Growth in India

The Parliamentary Standing Committee “(“Committee“”) constituted under the Dept. of Commerce, analysed the current landscape of the IPR regime in India and observed its contribution to promoting innovation and entrepreneurship in the country in its report titled “Report 161: Review of the Intellectual Property Rights Regime in India” presented in the Rajya Sabha on  July 23rd, 2021. In particular, it examined the challenges that exist in the current legislative structure including the inventorship rights of an AI.

The Committee acknowledged the relevance and utility of AI-based cutting edge technology and machine learning, particularly in current times, significantly affected by the pandemic, in which digital technology proved to be instrumental in responding to the global crisis. Further, the Committee placed reliance on a report released by Accenture titled “How AI Boosts Industry Profits and Innovation” which estimated AI to inject US $ 957 Billion into the Indian Economy by 2035, if used optimally, to understand further the impact and role of AI and technology in the contemporary landscape and its relationship with Intellectual Property. 

Therefore, the Committee recommended a review of the relevant provisions of the Indian Patents Act, 1970 [Section 3(k)] and the Copyrights Act, 1957 on a priority basis to afford inventorship rights to AI in India. The Report also stated that “The Committee recommends the Department that the approach in linking the mathematical methods or algorithms to a tangible technical device or a practical application should be adopted in India for facilitating their patents as being done in the EU and U.S. Hence, the conversion of mathematical methods and algorithms to a process in this way would make it easier to protect them as patents“. Thereby including algorithms and mathematical processes under the ambit of patent law.

The Committee concluded that the legislative framework amendments would protect the works of an AI (either autonomously or with assistance/inputs from a human), incentivize pioneering inventions and R&D in the country, and maintain an enabling ecosystem for the protection of human intelligence innovations. The Committee maintained that the embargo placed on the inventorship rights of an AI would dissuade significant investments in the sector since such AI induced innovations would not be protected in the country.

Conclusion:  A Way Forward for Inventorship Rights of an AI System 

The decision would have a favourable impact on the holder of an AI. However, commentators have expressed concerns regarding the difficulties that may arise due to the extending of patent protection to AI-generated concepts, such as:

  • Impact on the Copyright law: A result of such a decision may lead the courts to re-examine the subject of AI authorship and regard AI as a creator of AI-generated works, which will open a Pandora’s box of judicial conflicts.[3]
  • It could potentially raise the bar for innovation or fundamentally alter the definition of a ‘person skilled in the art,’ making it more difficult for human innovators to obtain patent protection.
  • Accepting inventorship to include AI systems would elevate AI to the status of a legal person, allowing it to hold and exercise property rights.
  • It raises concerns about who has the right to use or own the AI-created product. As the AI system is not a legal body, it cannot enter into agreements allowing it to transfer its inventorship rights.

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.[4] We anticipate that all IP offices adopt a unified approach to successfully address the emerging difficulties posed by inventions by AI.

References: 

[1] Section 6, the Patents Act, 1970.

[2] Shri Justice N. Rajagopala Ayyangar, Report on the revision of the patents law, 1989.

[3] Rita Matulionyte, Australian court says that AI can be an inventor: what does it mean for authors? Kluwer Copyright Blog (September 2021).

[4] Lam Rui Rong, Can Artificial Intelligence Be an Inventor Under Patent Law? Australian Federal Court Says ‘Yes’ but U.S. District Judge Says ‘No’, SKRINE (September 2021).

Image Credits: Photo by Gerd Altmann from Pixabay 

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.

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Squaring the Snags of Online Hearings

The Indian Trademarks Registry (“TM Registry”) had always extended the facility of virtual hearings much before the onset of the pandemic. However, not many IP attorneys and Trademark Agents preferred to utilise this resource due to issues surrounding the system and the process.

Recently, the Delhi High Court, in the case of Pawandeep Singh v. The Registrar of Trademarks & Anr., W.P.(C)-IPD 7/2022 & CM 30/2022, pointed out numerous inefficiencies in the virtual hearing system of the Trademarks Registry and instructed the concerned authorities to streamline and optimise the current system.

The petitioner in this matter had filed a writ petition against the orders passed by the Registrar of Trademarks in respect of Application No. 3981639 for the mark “SWISS”. The grouse of the petitioner was that the order was passed without affording a hearing to the petitioner, which violated the principles of natural justice.

The agent who had logged in for the hearing was kept in the virtual waiting room at the time of the hearing and was not admitted. Hence, the petitioners were not allowed to put forth their oral arguments. However, it was officially recorded that submissions were heard. The petitioner informed the Hearing Officer via email regarding the situation, but no response was received. The petitioner was further surprised when he received the refusal order.

The ‘Hon’ble Court, based on the submissions made by both the parties, recorded the following observations:

  1. The cause list for hearings at the Registry is published monthly.
  2. The TM Registry’s virtual platform allows only three people to be present in the hearing at any given time, and the remaining attendees are kept in the waiting room.
  3. An order that the Hearing Officer passes has two parts, the templated portion and the non-templated portion where the Hearing Officer types out the order. The templated piece is not editable and states that the matter was set down for hearing and, eventually, the hearing took place on a particular date.

In this matter, the Hearing Officer did admit that the petitioner in the present case was not heard, and the templated portion of the impugned order is contrary to the fact. The illegality is compounded when the order captures that the hearing took place, whereas the counsel was kept waiting in the waiting room but was not admitted.

The Court remarked and directed that the Controller General of Patents, Designs & Trademarks must devise a proper mechanism for holding show cause hearings by including the following features:

  1. Publication of cause list notices daily.
  2. Utilising a platform with an open link.
  3. Matters should be called serial number-wise for certainty and convenience of the applicants.
  4. Removal of templates from the order statements which may vary on a case-to-case basis.
  5. Some extra space is made available for Senior Examiners to put their brief reasons for allowing or refusing the application.

The Court held that a proposal on behalf of the Controller General of Patents, Designs & Trademarks in respect of holding show cause hearings on the points outlined above should be placed on record within two weeks. It may also consult the IP fraternity and stakeholders if required.

The matter has also brought to the forefront the inefficiencies of the online hearings, which stakeholders have long since been bringing to the attention of the Registry. With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

Image Credits: Photo by Sora Shimazaki from Pexels

With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

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A Shot in the Arm for Innovation and IP: Budget 2022

The past two years have brought to the forefront the paramount importance of technology. The Economic Survey 2021-22 was a precursor to the Union Budget that built a foundation for a wave of innovations by incorporating a tech-forward and futuristic outlook across various relevant sectors. Drone technology, artificial intelligence, blockchain and the issuance of a Central Backed Digital Currency (“CBDC”) were a few of the issues that were highlighted.

The Finance Minister mentioned the word ‘Atma Nirbhar’ approximately six (6) times in her address. The vision of self-reliance, or ‘Atma Nirbhar’, has been a rallying call for the government in the last few years, hence manifesting the importance of this philosophy.

Green India

 
There has been increased awareness of both the ill effects of climate change as well as the various pollutants that are damaging the environment. The Union Budget took note of this with announcements for the implementation of Energy Service Models (ESCO) as well as the development of business models for batteries or energy as a service. The Finance Ministers’ mention of a battery swapping policy as well as interoperability standards for charging electric vehicles indicates an urgency for innovation in this space to reduce the carbon footprint. With an increased focus on electronic vehicles, the future is indeed bright for battery makers to bring forth further innovation to reduce costs for battery replacement as well as tackle the inadequacy of public charging infrastructure. Such innovation will lead to an increase in patented technology in the field of green energy. In addition, the impetus given through the additional allocation towards solar equipment manufacturing and the issuance of green bonds for boosting green infrastructure are big steps towards a green economy driven by technological enablement.


The 5G connection

 

The much-anticipated 5G spectrum auctions are set to be conducted in 2022 to facilitate the rollout of 5G mobile services. As a part of the PLI Scheme, a designed-led manufacturing framework is proposed to be launched to build a strong 5G ecosystem in the country. The technology will be a catalyst to innovation in several sectors such as healthcare, automotive, research, defence, manufacturing etc. Additionally, 5G and R&D shall prove to be a stepping stone into the new era of businesses being more appreciative of the complexities and importance of the IP regime to gain maximum benefits amidst a growing tech-friendly and driven market.

Wearables

 

With the announcement of a graded rate structure of the customs duty rates, the focus on ‘Atma Nirbhar Bharat’ is very much prevalent to facilitate further domestic manufacturing of wearables. This can be an impetus for further innovation from both existing domestic companies as well as the genesis of newer ones. Wearables have garnered a lot of attention in recent times and there is a lot of scope for newer players in this field with unique trademarks whose innovations will give rise to numerous patents.

Eye in the Sky

 

Climate change has adversely impacted the farming sector and the need of the hour is sustainable land management and a change is required in the manner of farming. The announcement of the ‘Drone Shakti’ scheme as well as the use of drones to assist in spraying of insecticides and nutrients and for crop assessment heralds the advent of e-agriculture which is important for an agriculture-based country like India. A drone can assist farmers with crop production, early warning systems and disaster risk reduction. Additionally, the drones–as–a–service (DRaaS) model will act as a fillip for startups in this nascent sphere of activity and increase innovation and adoption of drone technology for e-agriculture in the coming years.

Blockchain Technology

 

Months of uncertainty ended with the announcement of the CBDC, which will act as an impetus to the digital economy. The CBDC will be based on blockchain technology, thus also welcoming the use of blockchain technology in the future as a building block for the digital economy. The introduction of the digital yuan in China heralded the incorporation of new mechanisms to adopt CBDC’s among apps and providers of payment solutions. The government intends to launch the digital rupee from 2022- 2023 and therefore, this year will be a watershed moment for the adoption of blockchain technology.

The advent of the blockchain will increase its utility in various other sectors as well such as sports, NFT’s, smart contracts, etc.

 

Edtech

 

Education has moved from the erstwhile hallowed classrooms to the living room in the last two years. Classrooms became virtual and education too was touched by the Digital India initiatives. Into this space came EdTech companies with tie-ups and a range of courses to upskill not only students but professionals as well. The Union Budget proposed the launch of a digital university to enable access to education to all at one’s doorstep. Additionally, the Budget announced a skill-development initiative in a digital ecosystem called the DESH stack e portal. The use of technology in the education sector will not only increase, but we will see further innovation in both the medium of dissemination of information as well as the advent of artificial intelligence-based learning tools and the issuance of certificates via the use of blockchain technology to name a few changes one could see. With each platform wanting to garner the largest consumer base, the protection of intellectual property will be at the forefront of this sector.

HealthTech

 

The pandemic has not just intensified the need for health-related technological innovation, but the digital support offered by AI and automation during the crucial period has also punctuated the future of HealthTech with burgeoning prospects. This has been acknowledged in the budget with the introduction of an open platform for the National Digital Health Ecosystem consisting of digital registries of health providers and health facilities, a unique health identity, consent framework, and universal access to health facilities. This would legitimize, increase access as well as boost consumer confidence in the sector’s offerings, thus leading to more investment and more innovation. Moreover, the recognition of mental health issues, as well as the support system, proposed to be established to address them in the form of a ‘National Tele Mental Health Programme’ and Tele-mental health centres of excellence makes this discipline, which was hitherto marred by discomfiture, lucrative.

The Future

 

With path-breaking changes in both the technology at use as well as the improvements in the current technology at use, we will see a huge number of intellectual properties being created. The renewed focus on ‘Atma Nirbhar’ will encourage startups to push forward with innovation in varied fields that will optimise a market ecosystem that deploys the use of drones, e-agriculture, EdTech, blockchain etc.

There has always been a direct correlation between innovation and the protection of intellectual property. The views of John Locke through the Labour Theory and Hegel through the Personality Theory are of utmost relevance considering this forward-looking union budget. Intellectual Property and its protection will not only reward the creator for their work, but will also protect their personality in the work, resulting in continued innovation.

With the stage set for some landmark innovations in the upcoming years, and various actors waiting in the wings, intellectual property and the challenges of enforcement will take centre stage.

References:

Image Credits: Photo by kiquebg from Pixabay 

There has always been a direct correlation between innovation and the protection of intellectual property. With the stage set for some landmark innovations in the upcoming years, and various actors waiting in the wings, intellectual property and the challenges of enforcement will take centre stage.

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Marrakesh Treaty: Making Literature Accessible to All

There are over 2.2 billion people blind or visually impaired worldwide, and about 90% of them live in developing or least developed countries. Considering their economic situation and available infrastructure, education and access to the literature are significant issues. Only less than 10% of books published every year are available in a format accessible to them.

Without access to books and magazines, the visually impaired cannot receive the required education or realise their full potential. With a single objective to increase access to books, magazines, and other printed materials for people with print disabilities, the Marrakesh Treaty was adopted by the member states of WIPO in 2013 (the “Treaty”), which also forms part of the body of international copyright treaties administered by WIPO.

 

How did the Marrakesh Treaty Eventuate?

 

In 2006, the WIPO Standing Committee on Copyright and Related Rights’ Study on Copyright Limitations and Exceptions for the Visually Impaired, led by Judith Sullivan, set the ball rolling for copyright exceptions for the benefit of the visually impaired. This move prompted many states to make exceptions to their copyright law.

Following that, a proposal for the Treaty was first tabled before the WIPO by Brazil, Ecuador, and Paraguay for the World Blind Union (WBU) during WIPO’s 18th Standing Committee on Copyright and Related Rights (SCCR) in 2009. The proposed Treaty set forth minimum standards of copyright exceptions and facilitated the cross-border exchange of accessible formats. Consequently, the Forty-Second WIPO General Assembly decided to convene a Diplomatic Conference on limitations and exceptions for visually impaired persons/persons with print disabilities in June 2013.

The Diplomatic Conference to Conclude a Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities, was held from 17th to 28th June 2013 in Marrakesh, Morocco, which adopted the Treaty on 27th June 2013. The Treaty aligns with the human rights principles in the Universal Declaration of Human Rights (UDHR) and the United Nations Convention on the Rights of Persons with Disabilities (UNCRPD).

India became the first country to ratify the Treaty on 24th July 2014. The Treaty received 79 signatures in the first twelve months that it was open for signatures, and it entered into force on 30th September 2016 currently with 80 Contracting Parties on board.

 

Salient Features of the Marrakesh Treaty

 

Definitions Under the Marrakesh Treaty:

“Works” are defined to mean literary and artistic works within the meaning of Article 2(1) of the Berne Convention for the Protection of Literary and Artistic Works.

“Beneficiary Persons” is defined as someone affected by one or more in a range of disabilities that interfere with the effective reading of printed material. This definition includes visually impaired persons and those with a physical disability that prevents them from holding and manipulating a book.

The definition of “Accessible format copy” is broad and covers any format that permits a person with a visual impairment or other print disability to access the content as feasibly and comfortably as a person without such a disability, including digital formats. The accessible format copy is used exclusively by beneficiary persons. It must respect the integrity of the original work, taking due consideration the changes needed to make the work accessible in the alternative format and the accessibility needs of the beneficiary persons.

“Authorised entity” is defined as an entity authorized or recognized by the government to provide education, instructional training, etc., to beneficiary persons on a non-profit basis. It also includes a government institution or non-profit organization that provides the same services to beneficiary persons as one of its primary activities or institutional obligations.

 

Obligations of the Member Countries Under the Marrakesh Treaty:

 

Article 4 of the Treaty refers to the obligation of the contracting parties to fulfill two primary obligations, i.e.:

  1. Contracting Parties shall provide in their national copyright laws for a limitation or exception to the right of reproduction, the right of distribution, and the right of making available to the public as provided by the WIPO Copyright Treaty (WCT); and
  2. To facilitate the availability of works in accessible format copies for beneficiary persons.

These limitations and exceptions mean that a range of acts is permitted without infringing copyright.

Article 5 highlights the obligation about the Cross-Border Exchange of Accessible Format Copies. As per this article, all contracting Parties shall have a necessary provision in their Statutes wherein if an accessible format copy is made under a limitation or exception or according to the operation of law, that accessible format copy may be distributed or made available by an authorized entity to a beneficiary person or an authorized entity in another Contracting Party.

 

Application of the Marrakesh Treaty in India

 

The Copyright Act (Amendment) Act 2012, which was enacted in India much before the Treaty was adopted, had already incorporated a provision which grants the exception of fair dealing with the reproduction, distribution, and making available of published works in accessible formats for the disabled.

 

The 2012 Amendment of Fair Dealing Exception

 

The Copyright (Amendment) Act, 2012 provides certain exceptions to copyright infringement as fair dealing under Section 52. The provision permits limited use of copyright material without the owner’s authorization.

The Copyright (Amendment) Act, 2012 brought a new provision under Section 52(1) (ZB), which made conversions of work into an accessible format for the exclusive benefit of disabled persons a fair dealing exception to the infringement of copyright. This extends to the adaptation, reproduction, issue of copies, or communication to the public of any work in an accessible format for persons with disabilities, by any person or organisation working for the benefit of the persons with disabilities.

Section [(zb) 52] highlights that the; adaptation, reproduction, issue of copies or communication to the public of any work in an accessible format, by:

(i) any person to facilitate persons with disability to access to works including sharing with any person with disability of such accessible format for private or personal use, educational purpose or research; or

(ii) any organisation working for the benefit of the persons with disabilities in case the standard format prevents the enjoyment of such works by such persons:

Provided that the copies of the works in such accessible format are made available to the persons with disabilities on a non-profit basis but to recover only the cost of production. Provided further, the organization shall ensure that the copies of works in such accessible format are used only by persons with disabilities and take reasonable steps to prevent entry into ordinary business channels.

 

Recommendations of Parliamentary Standing Committee on Commerce

 

The Parliamentary Standing Committee (“Committee”) constituted under the Dept of Commerce, inter alia, examined the challenges faced in ensuring a balance between copyright protection of the publishers and public access to affordable educational study material in its recent report titled “Report 161: Review of the Intellectual Property Rights Regime in India” presented in the Rajya Sabha on 23rd July 2021.

The Committee observed that the fair use exception is having a detrimental impact on the publishing industry and authors who are mainly dependent on royalties. On the other hand, it also observed that protection of copyrights of publishers and authors which encourages enrichment of quality books and public accessibility of such works at an affordable rate counterbalanced to maintain the overall literary culture and image of the country. Hence, in order to overcome this conflict, the Committee made the following recommendation:

  • Section 52(1) of the Copyright Act, 1957 should be amended to facilitate a fair and equitable ecosystem of literary culture in the country by allowing reprographic works in Government-owned educational institutions and storing it in libraries for their easy access to students as well as stipulating limitations to unrestricted commercial grants to copy books and literary works and storage of copied works in digital formats.
  • Libraries should be upgraded to provide easy access to the works of foreign publishers by the students
  • The earliest implementation of National Mission on Libraries (NML), a Government of India initiative to modernize and digitally link close to 9,000 public libraries across the country works.
  • A comprehensive study of the Berne Convention provisions regarding Protection of Literary and Artistic Works to promote a regime of copyright which will be of advantage to both copyright holders and the public.
 

Compulsory License to Reproduce Published Work for the Benefit of Disabled for Profit

 

In addition to the fair dealing exceptions, the Amendment also provides for Compulsory Licensing to any person working for the benefit of the disabled to publish any work on which copyright exists.[1]

Considering the more significant public interest involved in the license proceedings, the Act mandates that Courts shall make necessary endeavors to dispose of such applications within two months from the date of receipt of the application.

 

Reproduction and Cross-border Exchange of Published Works

 

In line with the Treaty’s commitment to make accessible format works available to the beneficiaries across the boundaries, WIPO in June 2014 established the Accessible Books Consortium (“Consortium”). This public-private collaboration brings together all the key players, including the organisers, beneficiaries, publishers, and authors. It is a multiparty collaboration that offers books in an accessible format to blind and prints disabled people across the globe.

As of now, the Consortium holds over six lakhs books in accessible formats in over 80 languages in 93 partnered libraries that are available without legal formalities to the beneficiaries and organisations that assist such people. The Treaty also allows unlocking of Digital Rights Management Amazon Kindle (DRM) book, which can then be reproduced in Braille format and made available to the beneficiaries without the prior consent of the copyright holders.

In India, the Consortium initially covered two states, i.e., Bihar and Madhya Pradesh, by providing support of converting books from standard IX to XII in accessible formats and offering reading assistant devices at a subsidised cost.

The India chapter started with the Daisy Forum of India (“DFI”), which in collaboration with Tata Consultancy Services (TCS), National Institute for Empowerment of Persons with Visual Disabilities (NIEPVD), and the Government of India; launched Sugamya Pustakalaya, India’s first and most significant collection of accessible books hosting over 6.75 lakhs in accessible formats across in as many as 17 languages across DFI libraries.

Since then, multiple NGOs, libraries, Online databases, software programmes have been established. Saksham Trust, a Delhi-based NGO working for the exact cause, is another such organisation.[2] Also, various reading softwares have been developed, such as the INDO-NVDA software, making computers accessible for visually impaired people.

 

Conclusion

 

While India has one of the most progressive copyright exceptions for the benefit of the disabled globally, it is pertinent to note that India hasn’t fully incorporated provisions of the Treaty in her national law. Provisions related to cross-border availability, privacy, and cooperation remain absent. To achieve the objective of the Treaty, it is pertinent that all Contracting Parties comply with their obligations to foster an accessible environment for the disabled.

Image Credits:

Photo by Jaredd Craig on Unsplash

While India has one of the most progressive copyright exceptions for the benefit of the disabled globally, it is pertinent to note that India hasn’t fully incorporated provisions of the Treaty in her national law. Provisions related to cross-border availability, privacy, and cooperation remain absent.

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Online Games Involving Money Now Banned in Karnataka

In a major setback to the Online Gaming platforms and all other gaming entities in Karnataka falling under the category of wagering or betting, the Karnataka Government on 5th October 2021 notified the Karnataka Police (Amendment) Act, 2021, (“Act”/”Amendment”) which prohibited all forms of online gaming involving a transfer of money.

The controversial legislation comes in the backdrop of the upcoming T20 World Cup involving a huge stake for online gaming companies, including MPL, Dream11, to name a few. Further, it is said to damage Bangalore/Karnataka’s position as the country’s start-up capital which houses about 92 gaming companies and employs over 4,000 persons. 

Key Amendments Made Through the Karnataka Police (Amendment) Act, 2021

The Amendment widened the scope of certain definitions under Section 2 of the Act. Some of the key amendments are:  

The definition of the term “Gaming” under Section 2(7) has been revised to include online games that involve “all forms of wagering or betting, including in the form of tokens valued in terms of money paid before or after issue of it, or electronic means and virtual currency, electronic transfer of funds in connection with any game of chance“.

Similarly, Section 2(11) that defines “Instruments of gaming” has been substantially expanded and now includes any article used or intended to be used as a subject or means of gaming, including computers, computer system, mobile app or internet or cyberspace, virtual platform, computer network, computer resource, any communication device, electronic applications, software and accessory or means of online gaming, any document, register or record or evidence of any gaming in electronic or digital form, the proceeds of any online gaming as or any winning or prizes in money or otherwise distributed or intended to be distrusted in respect of any gaming“.

The Amendment has also introduced a new Section 12(A) that defines “online gaming” as “games as defined in clause (7) played online by means of instruments of gaming, computer, computer resource, computer network, computer system or by mobile app or internet or any communication device, electronic application, software or on any virtual platform;

Further, Section 78 has been amended to criminalize activities related to opening certain forms of gaming centres and penalize anyone who opens, keeps or uses cyber cafes, computer resources, mobile apps, the internet, or any communication device as defined in the IT Act for online gaming. Offences under Section 78 have been made cognizable and bailable.

The Amendment has also increased the nature of, and scope of punishments for various offences. Offences under Section 78 and Section 87 of the Act that deals with gaming in public streets are punishable with imprisonment of up to six months or a fine of up to ten thousand rupees. 

Punishments under Section 79, which criminalizes keeping common gaming house, and Section 80, which criminalizes gaming in common gaming-house, have been increased to imprisonment of up to three years and a fine of up to one lakh rupees. 

Previously, Sections 79 and Section 80 did not apply to wager in games of pure skill. The Amendment removed this exception, bringing games of skill as well under the purview of the ban.

Judicial Stand on Similar Bans Placed on Online Gaming

Recently in the case of Junglee Games v. State of Tamil Nadu[1], the Madras High Court struck down the Tamil Nadu Gaming and Police Laws (Amendment) Act, 2021, which was similar to the Amendment in Karnataka, holding that such a blanket ban was excessive and disproportionate and that it was violative of Article 19(1)(g) of the Constitution.

The Rajasthan High Court in Saahil Nalwaya v. State of Rajasthan and Ors. [2] held that online fantasy sports, which functions under the Charter for Online Fantasy Sports Platforms of the Federation of Indian Fantasy Sports, the self-regulatory body in the online fantasy gaming industry which we have discussed before, are protected under Article 19(1)(g) of the Constitution.

The Supreme Court in Avinash Mehrotra v. The State of Rajasthan[3], dismissed an SLP from a decision of the High Court of Rajasthan, thereby upholding the judgements of the Rajasthan High Court, the Punjab and Haryana High Court, and the Bombay High Court, that games such as Dream11 do not involve any commission of the offence of gambling and betting.

Considering these judicial stands, the constitutional and legal validity of the Amendment is also in question, and the Amendment will likely be challenged in Court.

 

Effects of the Amendment Banning Online Gaming in Karnataka

Immediately after the Amendment Act was notified, Online platforms started geotagging and blocking access to their apps for users in Karnataka. While MPL and PayTM First seem to have blocked access to their users in Karnataka, some other online fantasy sports apps are still trying to interpret and adhere to the new legislation.

Industry experts predict that the ban will impact over 10% of online transactions in the country and will cause around 7-12% loss of revenue to the online gaming industry other than damaging the investor-friendly tag of Karnataka. 

 

The Way Forward

This move is the latest of the numerous attempts by legislatures in different States of the Country to ban online gaming. Such actions are criticized for showcasing the misplaced concern of the legislature for online games, and critics advocate for regulation instead of an outright ban. While clarity is needed and perhaps the rules which are yet to be framed may help clear the air, the Gaming industry may not wait until then from moving to Court challenging the blanket ban.

References

[1] (2021) SCC OnLine Mad 2762.

[2] D.B. Civil Writ Petition No. 2026/2021.

[3] SLP (Civil) Diary No. 18478/2020.

 

Image Credits: Photo by Aidan Howe on Unsplash

The order of the Mumbai Tribunal has, indeed, widened the scope of ‘onus’ placed on the assessee to prove the genuineness of a particular transaction. Such ‘onus’ will not be deemed to be discharged by merely filing the documents before the tax authorities, but the assessee would have to go one step further to justify the rationale of such transactions in order to prove that the transaction has not been entered as a colorable device to defraud the Revenue.

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2020 In Rewind: Trademarks In India

The entrepreneurship space has seen major evolution with conducive policies and enabling technological environment in the past few years. Specifically, the digital landscape has levelled up in traffic and capabilities owing to the pandemic last year and everything moving online. With that, the intellectual property and technology laws are grappling to catch up to the developing situation and adequately protect the rights of the stakeholders in the sector. Until that happens effectively, the courts are taking a pro-active step to align the developments with the legal intentions and business requirements. With this in view, we witnessed some interesting case updates that took place in the field of trademarks and domain name disputes in the past year. Here is a brief of the key trademark-related updates in India that took place in the year 2020.

I.LEGISLATIVE DEVELOPMENTS

There was no significant legislative development in the trademark practice, apart from the Trademark Registry’s decision to go completely virtual with respect to prosecution hearings. The Trademark Registry and the Intellectual Property Appellate Board (IPAB) much like all the judicial and quasi-judicial bodies across the country, for the time being, has done away with the physical mode of hearing, and it is taking up matters via video conference.

II.SIGNIFICANT CASE LAWS

Here is a recap of key cases within the domain:

Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019 |31-01-2020

In this case, the division bench of the Delhi High Court had set aside the lower court’s order restraining Amazon from allowing the sale of products of Amway India, a Direct Selling Entity, from its platform. Amway India filed a trademark infringement suit against Amazon on the ground that the e-commerce giant is liable as an intermediary for allowing and continuing to allow Amway India’s products (which it alleged were counterfeited products) to be listed on the former’s website by one of Amway’s direct seller. The lower court found Amazon liable for trademark infringement for non-observance of Direct Selling Guidelines and failing to demonstrate due diligence.   

The Division bench while setting aside the lower court’s order ruled that Direct Selling Guidelines are merely advisory to State Governments and Union Territories and they are not binding laws, and hence, it cannot be enforced against e-commerce intermediary. The Court further refuted the claim of trademark infringement on the ground that India follows the principle of international exhaustion of Trademarks, meaning once a good is lawfully acquired by the Direct Seller, the rights over the said good (including right re-sell) vested in the Direct Seller. Hence, Amazon as well as the seller were saved under the second sale exception to trademark infringement under section 30 (4) of the Trademarks Act, 1999.

Imagine Marketing Pvt. Ltd. V. Exotic Mile (CS(COMM) 519/2019) | 21-01-2020

The Plaintiff, commonly known in the market as “BoAt”, consumer electronics brand, sought an injunction against the Defendants from using the mark “BOULT” for the manufacture and sale of electronic audio gadgets mainly earphone, headphones, etc.

The Delhi High Court (single bench) had passed an interim injunction restraining the Defendant from using the mark “BOULT” ruling that it was deceptively similar to “BoAt” and that even their taglines were similar to each other. However, the Division Bench ordered a stay on the injunction order by stating that “prima facie there is no similarity visually or phonetically between the original Plaintiff and the Defendant.”

The matter is now evenly poised, and we await to see if the Division Bench would have a different take on its opinion after hearing the arguments.

Reckitt Benckiser (India) Pvt. Ltd v. Mohit Petrochemicals Pvt. Ltd. CS(COMM)No.141/2020 & I.A.Nos.4034-37/2020 | 28-05-2020

In an infringement suit filed by Reckitt Benckiser, the Delhi High Court while imposing Rupees One Lakh on Mohit Pharmaceuticals, permanently restrained them from selling hand sanitizers under the brand name “Devtol” which was considered deceptively similar to the Plaintiff’s well-known trademark “Dettol”.

M/s ITC Limited v. Nestle India Limited 2020 SCC OnLine Mad 1158 | 10-06-2020

ITC had launched its Sunfeast Yippie Noodles in two varieties – one of which was “Magic Masala”. Defendant i.e., Nestle had adopted the name “Magical Masala” for one of their instant noodle product. Since Plaintiff had not registered the expression “Magic Masala” as a trademark, it filed a passing-off suit against Defendant. Defendant affirmed that they were using the term “Magical Masala” as a flavour descriptor. The Defendants further contended that “Magic” and “Masala” were the two most common terms that were used in the culinary industry and therefore could not be monopolized.

The High Court of Madras held that the expressions “Magic” and “Masala” were common terms that were used on a day-to-day basis in the Indian food industry and Indian culinary, therefore the same could not be monopolized by the Plaintiff or the Defendant. The court further opined that even Plaintiff had used the term “Magic Masala” as a flavour descriptor rather than a trademark or a sub-brand. Therefore, the court concluded that ITC had used the term “Magic Masala” in a laudatory manner and the same could not be monopolized.  

Hindustan Unilever v. Endurance Domain and Ors. 2020 SCC Online Bom 809 | 12-06-2020

In this case, Plaintiff approached the Bombay High Court seeking to suspend domain names with Plaintiff’s HUL trademarks which were registered under the authority of Defendant, a domain name registrant. Even though the Court was quick to grant relief to the defendant, it opined that Domain name registrants were neither equipped nor authorized to indefinitely suspend domain names once registered, since there was no human element involved to oversee the legitimacy of domain names.

The Court ruled that deciding what should or should not be suspended (or blocked) is a serious judicial function that could be arrived at only by assessing and balancing rival merits. Moreover, the Court observed that anyone can use a VPN to bypass a proxy server or firewall and have access to such blocked websites by masking the originating country IP of the user, hence, such ‘access blocking’ only offers a hollow and faux sense of safety to the Registrant. Besides, holding the Registrar liable if he is unable to effectively block access would expose the Registrar to the constant threat of contempt proceedings.

International Society for Krishna Consciousness (ISKON) v. Iskon Apparel Pvt. Ltd and Ors. 2020 SCC Online Bom 729 | 26-06-2020

In a trademark infringement and passing off suit instituted against the Defendant’s use of ISKON APPAREL, the Court while restricting Defendant from using the same ruled that ISKON is a well-known mark. This was a follow-up to Plaintiff’s pleading that the trademark “ISKON” be declared a well-known trademark. Plaintiff submitted that it was the first to create the name in the year 1996 in New York and over time it has created a global presence which is inclusive of India and the brand was not restricted to only one particular good or service but was into the diverse range of goods and services. The court after scrutinizing the evidence submitted by Plaintiff ruled that the brand name “ISKON” fell under the ambit of a well-known mark under the Trademark Acts of 1999.

Louis Vuitton Malletier vs Futuretimes Technology India Pvt Ltd CS(COMM) 222/2020 | 03-07-2020

Louis Vuitton had filed a civil suit against the Defendants, an e-commerce platform named Club Factory to restrain the sale of any counterfeit goods comprising their trademark. The Plaintiff prayed that the Defendants be restrained from selling any product with Plaintiff’s trademark, including “LOUIS VUITTON”, “LV Logo”, Toile monogram pattern, Damier pattern and/or LV flower pattern, or any other similar pattern that would constitute an infringement of the Plaintiff’s registered marks. The Delhi High Court, acting on it, issued summon notice to the Defendants. We wait to see if this case takes the same route as the case of Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019, to base the outcome on the evidence of counterfeited products or if it holds Club Factory liable in case the Defendant fails to demonstrate the minimum standard of due diligence as required from an intermediary. 

Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. 2020 SCC OnLine Mad 1503 | 17-07-2020

Defendant, Patanjali, was restrained from using the word “Coronil” to market its product i.e., immunity booster tablets which Defendant claimed to have passed the test of clinical trials to cure coronavirus. The Court held that since Plaintiff had acquired registration of the trademark ‘CORONIL- 92 B’ in 1993 and had been using the same in relation to Acid inhibitor for industrial cleaning, Defendant’s action amounted to infringement under Section 29(4) of Trademarks Act, 1999. The court also opined that Patanjali’s use of the word ‘Coronil’ could deceive the consumers with respect to the likelihood of curing coronavirus through the tablet. Hence, considering the reputation of Plaintiff’s registered trademark and the larger public interest, the Court restrained Plaintiff from marketing its product under the name “Coronil”.  

Plex, Inc v. Zee Entertainment Enterprises Limited 2020 SCC OnLine Bom 989 | 01-10-2020

The Bombay High Court refused to grant an interim injunction as sought by Plaintiff (Plex) against ZEEPLEX, a pay-per-view service launched by Zee. The Court reasoned that Plaintiff’s case of passing off failed the trinity test since it was unable to establish any reputation, the similarity in services, and anticipated injury due to the adoption and use of ZEEPLEX, while Defendant had a long-standing reputation in India.    

Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd.  CS (COMM) 217/2020 | 12/10/2020

In an infringement suit by the logistics company “Delhivery” against the user of the mark “Deliver-E” for identical services, Delhi High Court held that Delhivery was a generic name describing the kind of service it provided i.e., delivery, and hence, it did not have the characteristics of an enforceable trademark.

Anil Rathi v. Shri Sharma Steeltech CS(COMM) 654/2019 | 23-10-2020

The Delhi High Court ruled that the use of the personal name, surname, or family name under Section 35 of Trademarks Act, 1999 was limited to personal use only and such rights did not extend to granting licenses to third parties for commercial use. In the instant case, Plaintiff had approached the Delhi High Court seeking an injunction against the use of the surname “RATHI” as a trademark by Defendant. The Court observed that there was a family arrangement in place which regulated the use of the family mark, and the act of Defendant of licensing the mark to third parties was in clear violation of the said arrangement, making Defendant liable for trademark infringement.

The PS5 Case Trademark Squatting Case: TM Opposition by Sony Interactive Entertainment Inc [Opposition No. 1040632] against TM Application PS5 [Application No. 4332863] filed in Class 28 by Hitesh Aswani

Sony’s launch of its latest edition of gaming console Play Station 5 of PS5 in India was halted when it discovered that an infamous trademark squatter named Hitesh Aswani had surreptitiously filed a trademark application for “PS5” on October 29, 2020, for the identical specification of goods that were covered under Sony’s PS4 trademark registration bearing application no. 2481440. Sony, understandably, filed an opposition against the said trademark, and the Applicant withdrew his application.

Sony filed its earliest trademark application for the mark “PS5” in Jamaica before Hitesh Aswani on October 03, 2019. Sony used the Jamaican application as the basic application to file international registration through the Madrid Protocol, claiming priority of October 03, 2019.

This was a textbook case of trademark squatting. Sony had priority over the squatter, and it is a settled position of law that priority trumps everything else as per law in India. Further, the mala fide intention of the squatter was evident from the almost verbatim replication of the specification of goods covered under Sony’s PS4 trademark registration.

This case reached its logical conclusion when Hitesh Aswani withdrew his application as well as the opposition which paved the way for Sony to register its mark in India and proceed to launch the product in India.

Sassoon Fab International Pvt Ltd. v. Sanjay Garg & Ors. [IPAB] ORA/171/2020/TM/DEL | 04-12-2020

In one of the most noteworthy cases that came up before the Intellectual Property Appellate Board (IPAB), the registration of the mark ‘N95’ bearing App No. 4487559 registered in Class 10 in favour of Mr. Sanjay Garg was stayed. IPAB observed that the N95 was prima facie a generic term that was used to provide the quality of the masks hence it was hit by Section 9 of the Act. Since Plaintiff had filed a rectification petition against the registration of the said mark before filing the instant petition, IPAB deemed it necessary to stay the operation of the Registration until the Rectification Application was finally decided and disposed of.     

Gujarat Cooperative Milk Marketing Federation Ltd. & Anr vs. Amul Franchise.in & Ors CS(Comm) 350/2020

This case concerned fraudulent registration of multiple websites with the term “AMUL” as prefix/suffix. In this case, the Delhi High Court directed the Registrar of Domains to suspend/block domain names containing the term “Amul”. The Court also restrained the Registrar from the further offering for sale of such domain names so ordered to be blocked.

The Delhi High Court rejected the Registrar’s contention that due to lack of adequate technology it cannot ensure that these websites containing ‘AMUL’ therein would not be made available for sale and suggested that the Registrar could utilize the same filter it employs to ensure that websites under obscene and/or words denoting illegality are not available for sale. This decision is in stark contrast with an earlier single judge bench order of the Bombay High Court dated June 12, 2020 – Hindustan Unilever Limited v. Endurance Domains Technology LLP, 2020 SCC OnLine Bom 809wherein it held that Domain name registrants are neither equipped nor authorized to indefinitely suspend domain names once registered, since there is no human element involved to oversee the legitimacy of domain names.

CONCLUSION

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. Also, the IPAB’s order to put a stay on the registration of “N95” for medical equipment and apparatus exhibited the dismal examination standards at the Trademarks Registry since the term ‘N95’ is generic to medical products and no amount of use can justify the registration. We witnessed a handful of contrasting rulings in the year 2020 and a couple of disputes are lined up to be adjudicated in the year 2021. These are a few topics that are revisited time and again to not only protect the proprietors of the registered trademarks but also make sure that no defendant is being harassed unnecessarily by registered proprietors.  

 

Image Credits: Photo by Riccardo Annandale on Unsplash

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. 

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Why filing of Provisional Patent Application keeps you ahead in the Patenting race?

With an additional focus to build an Innovation based entrepreneurial eco system, innovation is happening at the drop of a hat. However, the floodgate of invention around the race does not seem to be limited to an ingenious mind but also requires a go-getter attitude. As we know, Patent protection works on a “first to file” basis and not on “first to invent” which means it is granted to the one who files the Patent application first, subject to fulfilling other patentability criteria.

A Patent application has to be filed along with certain Specifications (details/working of the invention). These specifications are of two types i.e. Provisional and Complete. Therefore, the application can be filed along with the Provisional or Complete Specification. If filed with Provisional, the Complete specification needs to be filed within 12 months.

 

Provisional Specification is very basic in nature and does not require details about the invention, unlike Complete Specification. Perhaps the difference between the two specifications is clear from the preambles of the specifications itself i.e.:

Preamble of the Provisional Application: “The following specification describes the invention”.

Preamble of the Complete Specification: “The following specification describes the invention and the manner in which it is to be performed.”

 

Even though, the Provisional Specification does not require claims, detailed descriptions, drawings etc., however, due care needs to be taken to ensure that the specification is broad enough so the objectives of the invention is covered as Complete Specification cannot be broader than what was disclosed in the Provisional.

 

Many times, during the office action as well as during the infringement or revocation attack, it is the provisional specification, which is first scrutinized to check if the invention was covered clearly. Therefore, even though it is provisional, taking professional guidance while drafting would be advisable to avoid possible mishaps in the future.

 

In order to stay ahead in the competition of technological advancement, R&D companies and other IP sophisticated companies around the globe, work on new inventions and file applications with the bare minimum information to get a priority date for their inventions. This is done before deep diving into specifics such as looking at the prior art or doing the feasibility test for the product/process etc.

 

Ideally, if an inventor comes up with an invention, she should not wait for the invention to be fully developed or for the feasibility test to be done. Needless to mention, millions of researchers around the globe are working on similar subjects and one never knows who might be coming up with similar invention in some part of the world and perhaps may be moving faster to file the patent application to claim priority.

 

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

 

Ideally these 12 months period are given so one can carry out the patentability/ prior art search, which help the inventors tremendously in working around similar inventions.  Further, the Companies/inventors could also use the (provisional) Patent Application number to discuss the invention with potential investors, partners, licensee, etc. with due caution. 

 

In a situation where the inventor is unable to file the Complete Specification within the due date due to unavoidable circumstances, there is an option to file a request to post-date the application for a maximum period of six months subject to non-disclosure of the invention in the public domain.  

 

Considering these obvious advantages, filing a Patent Application along with a Provisional Specification could and would prevent a genuine effort from being a day late and a dollar short.

 

 

 

Image Credits: Photo by Med Badr Chemmaoui on Unsplash

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

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