Thursday, September 30, 2010
Posted by S at 9:20 PM
In a notification dated 29 September 2010, the CG has stated that on the finalisation of the draft notification published in the Gazette earlier in the month (which we posted on here), the services relating to official searches under the Trade Mark Rules will stand discontinued. The notification, which can be accessed here, says,
"Once, the notification comes into force the access to the trademark database will be made open and freely available to the public for search. This will bring greater transparency and facilitate business decisions to apply for a trade mark on an immediate basis from anywhere in the world. More similar measures to bring transparency and openness in the trademark administration is being initiated in the proposed amendments of Trade Marks Rules information regarding which can be accessed from IPO official website www.ipindia.nic.in "
The upshot also of this decision is that the Trademarks Registry will no longer earn revenues from searching, which, as a commentor on our previous post pointed out, is likely to be to the tune of Rs 4 crore. However, this will be made up for in considerable measure and more by the increased application fees.
We join other members of the IP community in celebrating the cumulative improvements in public services being provided by the IPO. And we hope to see several more improvements in procedures and facilities. Towards this, we would urge readers to provide the Intellectual Property Office with reasoned inputs for improving the Trademark Rules by 31 October 2010.
We would like to thank Karthik Murthy for having pointed us to this notification.
D.M. Entertainment v Baby Gift House-A Review
An individual’s property is the extension of his personality. This was pointed out by Hegel and is commonly known as the Hegelian justification of intellectual property rights.[i] Celebrity status is not easy to achieve. It is conferred to a few by the rest. This status is achieved in different forms. Some achieve it by votes and some by skill and talent. This aura of a personality is built through years of dedication (in most cases, but some are born with it!!) and sweat. And thus, the personality once gained, it is envied by others.
It is at this juncture that there is a possibility of ‘trespass’ into the personality for sheer gain, either monetary or otherwise. To claim this right, it is necessary to establish that fame is a form of merchandise i.e an act intended to promote his goods it would be termed as an unfair trade practise, misappropriation of IP of the celebrity, an act of passing off.[ii] The justification of publicity right being an intellectual property right that flows from the Lockean Labour theory which states that only the creator can has the right to exploit his creation in a manner that he wants. A celebrity having put enough efforts in attaining the most coveted fame and prosperity is his property.
The recognition of publicity rights of celebrities is adequate worldwide. In the United States, the right to exploit the economic value of the name and fame of an individual is termed as publicity right.[iii] In Australia , the ball was set rolling with a few ballroom dancers successfully suing for a passing off action as their photographs were published on a magazine cover.[iv] The Australian jurisprudence has evolved ever since.[v] In England and Wales, the position in Australia is followed.
The Indian judiciary is guilty of lagging behind with regard to this issue. One of the pioneer judgements to have discussed publicity rights in India was ICC Development (International) Limited v Arvee Enterprises[vi]. The publicity right concept was derived from human dignity as enshrined under Articles 19 and 21 of the Indian Constitution.
In this present case, DM entertainment v Baby Gift House and others, is a landmark case in the Indian context of celebrity merchandising. Daler Mehndi, the most famous pop star hailing from Punjab has created a niche audience and is immensely popular amongst Punjabi-pop music lovers. The appellant company was incorporated in 1996 to manage the artist’s escalating career. The crux of the case is that the defendants had prolific businesses in selling miniature toys of Daler Mehndi and majorly cashed on to his popularity. Majorly aggrieved, the plaintiff company filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.
The plaintiff company had been assigned all the right, titles and interests in the personality of the artist along with the Trademark, Daler Mehndi. It was contended by the plaintiff that the unauthorised or unlicensed use of or any part of the reputation of the artist, with respect to goods or services of any manner will lead to make an impression on the public that the goods or services are associated with the singer. And hence it was submitted that such a use would lead to passing off. It was further averred by the plaintiff that such use was done for commercial exploitation without adequate permission from the person or any other authorised by him, shall constitute infringement of the person’s right to publicity.
Section 29 of the Trademark Act-1999 (hereinafter the Act) lays down the aspects of infringement of trademark. it elucidates that a when a person is using , in course of trade any mark, which is identical or deceptively similar to a registered mark and which he is not entitled or licensed to use shall be deemed to infringe onto the rights of the person who has the lawful right over the mark.
The Act does not give a specific description of passing off as a result it has been derived through judicial precedents drawn from common law. Put simply , passing off would occur when the mark is not only being used deceptively similar to the mark of another but it is being used to create confusion in the minds of the consumer that results in the damage or loss of business for the person or company who/which is the lawful owner of the trademark.
Character merchandising is an area of law which is unexplored in India. The first case that dealt with this was Star India Private Limited v Leo Burnett India (Pvt.) Ltd.[vii] But jurisprudence is still young and needs moulding. Prior to the Star India judgement the Indian courts have had opportunities to address this issue. The most recent example would be Katrina Kaif’s filed a suit against a public hygiene company alleging transgression of publicity rights, but the Bombay High did grant an order restraining the company from using certain advertisement. Also, Saurav Ganguly, the flamboyant former Indian Cricket captain, wanted relief against Tata tea for using his fame to sell tea. The courts in these cases the court did not address the issue of publicity rights.
Incidentally, the same court that gave a judgement of the D.M. Entertainment case rejected temporary injunction relief in the case of Chorian Rights Limited v MS Ishaan Apparel & others[viii] due to insufficient evidence. The Indian Courts has acknowledged character merchandising by citing the Star Burnett Case. This shows that the Indian judiciary is keen to address this issue, which it did not prior to the D.M Entertainment case. But in this case it has done so and quite emphatically at that. The court meted out a compensatory amount to the tune of `. 1, 00,000. The intent of the judiciary is clear and now it is time for the legislature to flex its muscles to come to the rescue of our onscreen heroes.
[i] Kanu Priya, INTELLECTUAL PROPERTY AND HEGELIAN JUSTIFICATION, NUJS Law Review 2008 vol.1 No. 2
[ii] Anurag Pareek, Arka Majumdar, Protection Of Celebrity Rights-The Problems And The Solutions, JIPR Vol.11, 2006,November, pp415-423
[iii] See Michael Doughlas and Catherine Zeta Jones v Hello Limited, Hola S A and others, 2003 EWHC 786 CH
[iv] Henderson v Radio Corp Pty. Ltd ,  RPC 218
[v] See Paul Hogan v Koala Dundee Pty Ltd (1988) ALR 187, Also See Paul Hogan v Pacific Dunlop (1988) AIPC 90-578
[vi] 2003 (26) PTC 245 ¶ 14
[vii] (2003) 2 B.C.R. 655
[viii] CS(OS) 1154/2009 available online at
The Spicy IP team thanks Subhajit for sharing his views with the readers and look forward to similar valuable inputs from him in future. A copy of the actual case is available here.
- In-House Counsel
- Lawyers / Outside Counsel
- Business Development Managers
- Marketing Managers
- Trademark Service Provider
- Company Secretaries
Wednesday, September 29, 2010
As Kshitij rightly argues, we need to create more 3 year programs of a quality that matches up to the best 5 year programs. The Rajiv Gandhi School of IP law at IIT Kharagpur is a good step in this direction. DU has always had an enviable 3 year program record. And now the Jindal Global Law School (JGLS) promises to give a complete face-lift to 3 year courses.
But these schools are few and far between and we need more such degree programs.
However, I'm not so sure that Kshitij's proposal that lateral entry be permitted for graduates from other disciplines to the NLU's (in the 3rd year) is a viable one. Most national law schools do not just offer BA subjects (social science courses such as economics and sociology) in their first two years. Rather they intersperse it with a good sprinkling of basic legal subjects as well. This appears sensible policy to me, as students need some sense of the law in their first two years. A thoroughly compartmentalised BA vs LLB program defeats the very purpose of an integrated BA LLB course. And if this were to be the case, we may as well have just had separate BA and LLB courses and degrees.
Without much ado, I give you Kshitij's thoughtful musings on this theme. But first, a little background on Kshitij:
He is a qualified chemical engineer from Indraprastha University, and a student of law at University of Delhi (LC2). He is a registered patent agent, and working as a patent professional since 2006. Presently, he is involved with a start up company in Intellectual property service domain. Before working with this start up, he had a brief stint at an IP law firm, ZeusIP Advocates. He started his career from a knowledge process outsourcing company, Evalueserve.
Lack of 3 year LLB programs at top law schools: Restricting access to quality legal education
Gone are the days, when the term lawyer imaged a black robed guy sitting in a court chamber. Lawyers are now commonly seen in the carpeted bays of corporate offices. The practice has moved from saving shady criminals to overseeing merging of multi-national companies. From contending a family feud over a piece of land to getting injunctions over intellectual property infringement. Certainly, the legal profession is rapidly evolving, and so are the firms in the legal services industry. Cross-domain professionals are now highly sought. Company Secretaries well aware of business and compliance laws, Charted accountants that are versed with tax laws and PHDs that are well versed with patent laws.
Such professionals are accepted with open arms, and of course remunerated very well. Going forward, there seems to be an optimistic demand in the industry regarding such professionals. However, the concerns remain regarding the supply. The question therefore arises whether our legal education system is providing doctors, engineers, PHDs, CAs and civil administrators with enough opportunities to access quality education? The Bar Council of India, the body responsible for accreditation of courses at law schools, prescribes two streams of law courses required to be enrolled as an advocate viz. a 5 year integrated LLB degree open for students after 10+2 or 11+1, and a 3 year law course for graduates. The onus of choosing what to offer rests on the law schools.
At present, none of the top law schools including NLSIU, NLUI, NALSAR and NUJS, provide 3 year LLB programs (although initially few of the top law schools did offer 3 year LLB programs, but, then they gradually moved to the 5 year programs). This leaves graduates, and more importantly professionals, with very few options to pursue quality legal education. The reasons for not providing 3 year LLB programs are best known to these law schools. Some suggest that 5 year programs are easy to mange, and students are able to save a year in completing their education.
However, most often than not lack of interest in students for 3 year LLB courses is quoted as an excuse. But, is lack of interest really a justified reason to restrict these programs? Recently, IIT Kharagpur started a 3 year LLB program restricted to engineers, doctors and post graduate in sciences, and it has been a success. The 3 year LLB program at University of Delhi (the only program that has some credibility and quality) has always been well attended by professionals from civil administration, police, corporate, engineering, and information technology, and most of them enter into the legal profession as a litigator or a consultant, after the completion of the program.
Jindal Global Law School, probably the first law school set up with a vision of providing globalized education in India, has also instituted a 3 year LLB program. 3 year LLB programs at other universities, such as Banaras Hindu University and Banglore University, are also seriously attended. This clearly shows that takers of 3 year LLB programs have always been present.
Another reason given by administrators is that professionals do not consider study of law seriously, and only see it as a part time vocation. Law is serious business, and market forces cannot be allowed to govern studies in law. This argument though partly true, is not true in its entirety. Lackadaisical attitude has been prevalent in many students regarding legal education, wherein working professionals pursue LLB programs with a typical “ho jayega” (we will manage it somehow) attitude, and wherein graduates pursue LLB programs with a typical “kuch nahin se kuch to sahi” (better study law then do nothing) attitude.
However, this does not mandate closing the doors of quality education for professionals who are serious about studying law. I am sure, if given an opportunity of studying at top law schools of the country, a professional will definitely think of means to balance professional occupation with studies, and even might think of taking a sabbatical. Also, when a professional decides upon pursuing legal education, then his/her decision is based on much more deliberated grounds as compared to the decision of a typical teenager, who usually enters these top law schools right after completing schooling.
Also, opening up 3 year LLB courses does not mean compensating standards of education, such as relaxing minimum attendance criteria etc. Neither does it mean mandatory setting up of evening classes. Maintaining the standards of education is always in the hands of administrators. However, having evening classes scheduled for students, who are needy and want to work side by side for their sustenance, might not be a bad idea. Offering late evening classes has been a known concept at the B-schools in India. University of Delhi successfully runs an evening program at two of its centres. The onus of meeting the expectation of a law program is completely on the students enrolled at the program. In fact, the strict curriculum and attendance policies (some of which requires a minimum attendance of 75 percent) will automatically instill a sense of urgency and seriousness, if lacking in enrolled students.
The old Bar Council of India (BCI) rules (rule 5, 7 and 8 of section A) mandated all law schools to provide an option of lateral entry in their 5 year LLB courses, wherein graduate and post graduate students can enter the 3rd year of such programs. Notwithstanding, the concept of lateral entry might not be an attractive proposition anyway for professionals as this would mean studying with fellows, who are easily 5-6 years junior to them. This at least provided flexibility to professionals, post graduates and graduates to enter laterally into the 5 year LLB programs. However, these rules have been scrapped by the BCI and the latest set of BCI rules (rule 13 of Section A) prohibits such lateral entry and exit. In fact, the latest proposed rules of the BCI suggest implementation of an age bar to the entry of both 5 year and 3 year LLB programs. As per the proposed rules, no candidate above the age of 20 would be admitted to the 5 year LLB program, and nobody above 30 years of age will be allowed to join the 3 year LLB program. Imposition of such bar is not at all mandated.
On one hand, policy makers consider law to be sacred and a profession of the mature, and on the other hand, they are restricting entry of experienced and learned administrators, police officers, doctors and scientists into the profession!
Therefore, a review of 3 year LLB policy at top law schools is highly desirable. Further, a review of lateral entry to 5 year LLB by the BCI is also necessary as this might provide means for professionals and graduates to pursue quality legal education. Opening up evening classes on the lines of law program at University of Delhi can also be looked upon. Until then, it might be fair to say that our legal education system, which is supposed to imbibe the philosophies of justice, might be ignorantly or intentionally imparting injustice to law aspirants, and especially to a class of professionals including civil administrators, engineers, doctors, PHDs, CAs and CS. Excluding such a class of professionals will not only ruin the chances of taking up the level of legal profession in India, but might also ruin any chances of having domino effects on the standards of our judiciary.
Tuesday, September 28, 2010
The Intellectual Property Website (IPO) has now put up the Gazette of India notification on the Draft Amendments to the Trade Mark Rules 2002, as published on 7 September 2010, a copy of which can be accessed here. Suggestions and comments are invited, which may be forwarded to the Joint Secretary, Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry, Udyog Bhavan, New Delhi 110011, with 45 days from the date of advertisement.
In a related development, the IPO has also extended the time limit for inviting suggestions for any changes to the TM Rules, 2002, generally. This now stands open till 31 October 2010, and interested persons are invited to respond via email to cgoffice-mh@nic and firstname.lastname@example.org .The Office has also put up word and pdf formats of the Rules in order to make it easy for amendments to be suggested.
The key draft amendments as advertised in the 7 September notification are:
- Doing away with the request for search of a trademark (Rule 32, and Rule 24(1) and (2) are omitted*; and the following related forms are also removed -- TM-54 which deals with such a request; TM-71, i.e., request for expedited search; and TM-75, request for search for a company name)
- The official fees for applying for a trademark are to be increased to Rs 3,500 from the existing Rs 2,500 (with reference to entries 1 to 7, and 10 of the First Schedule of the existing TM Rules)
If these amendments go through, it will mean a couple of things -- first, obviously, official fees for TM applicants will go up by a steep 40 %. While this will certainly not be received too well by applicants and attorneys in general, the second change is probably more interesting: no more TM searches by the Registry will obviously entail a huge reduction in the workload of the Registry -- here, I speculate, for I don't have numbers on how many requests for searches have been entertained. In any case, it will mean that the Registry will now likely have the time to focus on the actual process of deciding on the registrability of trademarks, which is arguably its central function.
No searches will also mean some reduction in profits for the IPO. That said, the Registry already has an online paid search facility available, which appears to be in frequent use. The online paid search is cheaper (at Rs 400) than the request for a physical search (at Rs 500). However, the search methodology of the online facility has scope for considerable improvement, by allowing more sophisticated search options, e.g., wildcard searches, boolean search options, and so on.
Relatedly, I speculate on whether the online search will eventually be available to anyone for free, which will be incredibly useful (and will probably dry up a lot of income sources!) -- does anyone know of the IPO's plans on this front? One can technically still search the database for free, but this requires keying in certain mandatory criteria (e.g., proprietor's name, name of the mark, and class) -- which defeats the concept of a true search.
Added Later -- [At least two readers, Biju Nambiar and an anonymous person, inform that the online search is also intended to be made free, according to the amendments. I'm grateful for the corrections being pointed out. It also means that all of my speculation on the online search facility stands - ahem - amended. All search will be free, which works well for everyone., except the Registry, which will therefore make *no* money from searches. It may, however, make up for emptying coffers - Rs 4 crore, you say? - with the additional official fee coming from the filing.]
Guest Post: Vernor v. Autodesk Inc: Thumbs Up for Software License Agreements (SLAs)!
Timothy Vernor sold authentic copies of AutoCAD software on eBay which he purchased from a garage sale and from Cardwell/Thomas Associates (CTA). Autodesk issued a DMCA (Digital Millennium Copyright Act) notice to eBay claiming the sale as an infringement of their copyright to which his account was suspended for a month on grounds of repeated infringement. In reaction to this Vernor obtained a declaratory judgment by the District Court which concluded that Autodesk sold copies of the software to CTA by imposing “contractual restrictions on use and transfer of the software” and it is not a license.
The issue before the Court was whether the CTA was the owner of the AutoCAD software purchased from Autodesk? Whether the sale of the software by Vernor on eBay is protected by the doctrine of first sale? Alternatively, if CTA was mere licensee, whether the sale by Vernor amounts to copyright infringement?
(iii)The Doctrine of First Sale
The exclusive right of distribution of software by the owner is limited by first sale doctrine. According to the doctrine of first sale the purchaser of a copyrighted work can dispose of the copy by sale or otherwise without amounting to copyright infringement. Only the “owner” of the copy can avail this defense and this does not extends to “licensees” as the title rests with the licensor. Therefore, determination of status of the purchasers i.e. licensee or owner, becomes critical for availing the defense.
(iv)The Essential Step Defense
Storage of the software in the Random Access Memory (RAM) of user’s computer is indispensible for running the program. Making of such copy by the “owner” would not be an infringement as it is an essential step in the utilization of the computer program. This is known as the essential step defense and is peculiar to copyrights relating to software. It limits the extent on reproduction rights of the owner of the software. This defense, however, is available only to “owner of a copy”. The expression “owner of a copy” has similar meaning as “owner of a particular copy” of copyrighted software under the first sale doctrine. The Court pointed out that the usage of copies of software can be licensed at the same time copies themselves are sold. For instance installation of the software can be restricted by the license to limited number of computers as it is not an essential step for use of the software.
(v)Owner v. License
In order to determine whether the user is a licensee or an owner of a copy, the Ninth Circuit prescribed the following considerations:
(a)Firstly, if the copyright owner specifies that the user is granted a license
(b)Secondly, whether any significant restrictions are imposed on the user’s ability to transfer the software by the copyright owner such as retaining the title to the copy, required its return or destruction or required the transferee to maintain possession of the copy for the agreements’ duration; and
(c)Finally, any notable restrictions are imposed on the usage; for instance forbidding duplication.
Referring to precedents it deduced that retention of title by the copyright owner does not entail absence of the defense or indefinite possession of copy by the user makes a valid case for availing the defense.
(vi) Is Vernor an “Owner” or “Licensee” of the Copy of the Work?
The written agreement accompanying the software stated that the “license” is nontransferable and the written consent of Autodesk is needed for transferring or leasing of the software within Western Hemisphere and not beyond. Further, the SLA restricts use of the software outside of the Western Hemisphere and against modifying, translating, or reverse-engineering the software, removing any proprietary marks from the software or documentation, or defeating any copy protection device. Moreover, non-compliance with the terms of the license and unauthorized copying would lead to termination of the license. The Ninth Circuit, hence, concluded that Vernor was not an “owner” of the software as Autodesk retained title to the software and imposed significant transfer restriction and thereby he is disqualified from taking the defense of first sale. The Court also reversed the decision of the district court and vacated the summary judgment in favor of Vernor.
The Ninth Circuit acknowledging the non-precedential value of policy arguments presented by the parties, recognized such considerations and advised the Congress to modify the first sale doctrine and the essential step defense if it deems fits after taking them into account. Arguing for SLAs, Autodesk contends that this would enable tired pricing, increase sales, tackle piracy and lowers prices. Vernor opined that the decision is not in consonance with the law’s aversion to impose fetters on alienation of personal property and shows utter disregard to economic realities. The American Library Association expressed that it would hamper non-profit libraries’ ability to lend for non-commercial purposes and distribute out-print software. It also, feared that such licensing practices might be adopted by book publishers, record labels and movie studios.
Monday, September 27, 2010
Our frequent readers maybe aware of the infamous Ramkumar case last year wherein a small inventor had successfully enforced his patent rights under the IPR Enforcement Rules, 2007 to seize cellphone imports of huge companies like Micromax & Samsung on the grounds that they were violating his patents. Ultimately Customs Authorities released the consingments after it was sucessfully argued that Ramkumar's patents were of dubious quality.
This time however the Commissioner of Customs has refused to enforce Bharat Bhogilal Patel's dubious patents because of which he moved the Bombay High Court. The High Court disposed the writ once the Commissioner of Customs agreed to give Mr. Patel a formal hearing. The Order of the Bombay High Court can be accessed over here.
We managed to access the file wrappers of both patents. The first patent bearing application no: MUM/610/1998 was granted as patent no: 189207. The second application bearing no: MUM/611/1998 was granted as patent no: 188787. For all those of you who are interested in having a look at a pure Indian patent specification which cites zero prior art, we have loaded both file-wrappers on to our website - spicyip.com. It is also interesting to note the examination procedure itself wherein the examiner had to plead with the patentee to file the basic documentation such as title deeds etc. Please click on the following links to download the file-wrappers – Patent No: 189207 – Part I/Part II & Patent No. 188787.
Anyway getting to the main point of this post, I noticed that both patents were in fact granted by Patent Examiners on behalf of the Controller. Every letter from the patent office to the applicant/patentee, in both file wrappers, is signed by the Examiner on behalf of the Controller. This includes the letter informing the applicant that his patent has been in order for grant. Not a single communication from the Patent Office is signed by the Controller. I've seen this happening in other patents granted by the Patent Office, Mumbai. The two main issues that arise in this context are as follows:
Image from here.
I. Which is the authority that can grant a patent under the Patent Act?
As per the Patent Act, 1970 only the Controller of Patents can grant patents. This is understood from a joint reading of Section 14, 15, 16, 17, 18, 19, 20, 21, 25 & most importantly Section 43. All these Sections refer to only the Controller. The term Controller is defined in Section 2(2)(a) and Section 73 of the Patent Act, 1970. As per Section 73(2) the Controller General of Patents may appoint as many examiners and other officer and with such designations as it thinks fit. As per sub-clause 3 of the same provision, the Controller General of Patents may delegate his functions under the Act to such 'officers' who are appointed under sub-clause 2. The Controller General of Patents delegates his function through the issuance of Office Circulars. I'm guessing these officers are designated as 'Deputy Controller of Patents, Joint Controller of Patents or Assistant Controller of Patents'.
Moreover as per the scheme of the Patent Act under Chapter IV, the examination and grant of patents is a two-tiered structure i.e. under Sections 12 and 13 it is the Examiner who examines the intial patent application for obviousness and anticipation before submitting a report of the same to the Controller under Section 14. After the Examiner submits the report to the Controller under Section 14 the Act vests the power to grant or deny a patent under Section 15, 42 etc. lies only with the Controller and not the Examiner. The fact that the Controller may have signed the Patent Certificates is insignificant in the overall analysis since as clarified by the Delhi High Court in the case of Dr. Snehalata v. Union of India a patent is effectively granted when the patent office communicated the same to the patentee through a letter. Therefore subsequent acts such as the patent certificate and the entry into the registry of patents are only administrative functions. The main decisions pertaining to the grant of a patent have already been communicated through the letters signed by the examiners.
II. Can the Controller further sub-delegate his power to an Examiner?
As per the correspondence in our custody it appears that the Examiners in both cases have signed on behalf of the Deputy/Asst. Controller of Patents. This would imply that the Deputy/Asst. Controller of Patents has sub-delegated his powers to the Examiners. The substantial question of law therefore is whether or not the Deputy/Asst. Controller of Patent can delegate powers which themselves have been delegated to him under Section 73 of the Patents Act, 1970. In my opinion such sub-delegation is illegal and will be dismissed by a Court of Law. I have outlined the reasons for the same below.
A fundamental maxim of administrative law is delegates non potest delegare. This basically means 'one to whom power is delegated, cannot himself further delegate that power'. There are several Supreme Court precedents upholding this very fundamental principle.
In the leading case of Sahni Silk Mills (P) Ltd. And Anr. vs Employees' State Insurance Corporation JT 1994 (5) SC 11, the Supreme Court, in pertinent part held the following:
By now it is almost settled that the legislature can permit any statutory authority to delegate its power to any other authority, of course, after the policy has been indicated in the statute itself within the framework of which such delegatee is to exercise the power. The real problem or the controversy arises when there is a sub-delegation. It is said that when Parliament has specifically appointed authority to discharge a function, it cannot be readily presumed that it had intended that its delegate should be free to empower another person or body to act in its place.
It is therefore implied that while delegation of powers under Section 73 by the Controller General of Patents is valid, the same cannot be further delegated by the designated controller to the examiner. Both patents therefore suffer from a gross error in law and should be set aside in case a writ petition is filed against them by the importers.
Most importantly however I would request the experienced patent practitioners to comment on whether examiners granting patents is a normal practise of the Indian Patent Office, in which case thousands of invalid patents may have been granted. A fit case for the Controller General to exercise his powers under Section 66 of the Patents Act?
This provision comes a close second to section 3(d) in terms of its potential to cause sleepless nights for patentees. And has been the subject matter of leading patent disputes, such as the Roche vs Cipla litigation concerning Erlotinib. However, apart from this Chemtura decision, analysed by Prashant (where Justice Muralidhar refused to grant an interim injunction to the patentee on the ground that a failure to comply with section 8 gave strong grounds to invalidate the patent), I hadn't found any decision where this section has been successfully invoked to invalidate a patent. Well, at least, not till now...
Thanks to Sandeep's excellent coverage of recent patent office opposition decisions, I was alerted to two post grant oppn decisions, where the IPO invalidated related patents of Richter Gideon, a Hungarian company dealing with compositions and processes covering Levonorgestrel, an active that is found in Cipla's (and now Piramal's) best selling contraceptive "I" pill (shouldn't Apple be suing here?).
In the decision dealing with the patent covering the "process" to create the said Levongestrel composition, the Assistant Controller, Dr Amarendra Samall held that the patent ought to be invalidated on grounds of lack of novelty and inventive step. Most interestingly, he also revoked it on the ground that the patentee had failed to comply with section 8!
I extract the relevant portion from his decision below:
"The patentee filed the PCT application through national phase entry on 09th December, 2003 providing the statement and undertaking in Form 3 on the priority data only.
Their next submission (updated information in Form 3) in this context was filed only on 25th October, 2004 mentioning its entry into several countries. Intimation of grant of such an application was send to patentee on 20th June, 2006.
Even though substantial updated information on the corresponding application filed in foreign countries were expected to be available like the information in JP and USA, the same was not informed to the Indian Patent Office. I view this irregularity by patentee as violation of provision as required under Section 8 of Patents Act. I conclude that such a ground of opposition is validly established by the opponent."
With this decision, patent applicants would be well advised to carefully adhere to the requirements of section 8. And not follow regular global strategy where patent applications and their families are kept secret to the best extent possible.
In order to be on the safe side, applicants and their attorneys ought to err on the side of abundance i.e. overload the IPO with information and keep the IPO updated on the progress of patent applications at each of the foreign offices. Counsels in each country where these applications are being prosecuted ought to be instructed to send this information in a timely manner. In any case, even without the sword of section 8 hanging over them, counsels are expected to keep their clients updated on the progress of a patent application in a timely manner! With section 8 swinging into operation, this expectation takes on a more serious turn.
Of course, this information need be provided only where the foreign applications relate to the same patent family i.e covers the same or substantially the same invention.
Friday, September 24, 2010
Thursday, September 23, 2010
[Warning -- Long Post]
Shalimar Chemical Works Ltd. ('Shalimar') [the original plaintiffs, and the appellants in the present suit] are the registered owners of the trademark Shalimar for coconut hair oil (class 3) and all edible oils (class 29). They filed a trademark infringement suit in 1995 against Surendra Oil & Dal Mills (Refineries) ('Surendra') in Hyderabad, seeking, among other things, a permanent injunction on their use of the word Shalimar. During trial, Shalimar submitted photocopies of trademark registration certificates.
Scene 1: The trial court -- Third Additional Chief Judge, City Civil Court, Hyderabad
The trial court "marked" the photocopies as exhibits "subject to objection of proof and admissibility". In 1998, the trial court dismissed the suit on grounds that the available evidence on record did not establish Shalimar's case. This was mainly because the trademark registration certificates were not filed in original, with reference to Sec.31 of the Trade and Merchandise Marks Act, 1958. (Image from here.)
(For reference, Sec.31(1) "In all legal proceedings relating to a trade mark registered under the Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.")
Scene 2: Single Judge Bench, Andhra Pradesh High Court
Shalimar then went in appeal to the Andhra Pradesh High Court, where it also filed an application under Order 41, Rule 27 of the Civil Procedure Code (CPC) (production of additional evidence in Appellate Court) to accept the original registration certificates as additional evidence. The single judge bench hearing the matter allowed the originals and the appeal, and granted the permanent injunction against Surendra.
Scene 3: Division Bench, Andhra Pradesh High Court
Surendra, aggrieved by both the accptance of the additional evidence, and the eventual decision of the single judge, went in further appeal to a division bench (DB) of the High Court. The DB observed that there was no justification to admit the original certificates at the appellate stage, and referring to Order 41, Rule 27, CPC, noted that additional evidence could be allowed only in three circumstances, as follows:
- The Trial Court had refused to admit evidence which ought to have been admitted.
- The party who wanted to produce additional evidence had exercised due diligence and such evidence was not within his knowledge or reach during the trial of the suit.
- The additional evidence can be ordered to be produced if the Court feels that a document was necessary for pronouncing of the judgment.
"Neither of these three conditions were satisfied in this case. The original documents were all along in possession of the plaintiff. At no stage the Trial Court had refused to admit them in evidence. Since the documents were all along in the possession of the plaintiff, therefore he could not fill up the lacuna by producing them in the Appellate Court."With the originals taken off the record, Shalimar's case was bound to be dismissed. In 2003, the appeal was allowed, and the trial court order (of injunction refused) was restored.
Scene 4: The Supreme Court of India
Shalimar, represented by senior advocate P.P. Rao, wreachedthe Supreme Court in 2005, where they argued that the DB had taken a very narrow view of the CPC. Towards this, Mr Rao cited what the Supreme Court termed "the illuminating and perennially relevant passage from the judgment of Vivian Bose, J. in Sangram Singh vs. Election Tribunal, Kotah, Bhurey Lal Baya, 1955 (2) SCR 1 (at page 8) :
"Now a code of procedure must be regarded as such. It is procedure, something designed to facilitate justice and further its ends: not a penal enactment for punishment and penalties; not a thing designed to trip people up. Too technical a construction of sections that leaves no room for reasonable elasticity of interpretation should therefore be guarded against (provided always that justice is done to both sides) lest the very means designed for the furtherance of justice be used to frustrate it."On their part, Surendra, represented by senior advocate P.S. Narasimha, argued that the original registration certificates were the primary evidence in the case, and in their absence, the trial court had no choice but to dismiss the suit. Surendra also pointed out that the single judge (Scene 2) after taking the originals on record had straightaway pronounced the final judgment in favour of Shalimar without allowing an opportunity of rebuttal.
The Supreme Court candidly observed that "serious mistakes were committed in the case at all stages," and then went on to list them one by one:
- The trial court should not have "marked" the photocopies as exhibits in view of Surendra's objections. It should have declined to take them on record and left Shalimar to support its case by whatever means it proposed, rather than leaving the admissibility issue copies open and hanging, by marking them as exhibits subject to objection of proof and admissibility.
- The single judge rightly allowed Shalimar's appeal to produce the original certificates as additional evidence because that was in the interest of justice and sufficiently justified under clause (b) of Order 41, Rule 27. But the judge erred in proceeding to allow the appeal and not giving Surendra an opportunity to rebut.
- The DB was wrong in deciding on the additional evidence. But it was right in holding that the way the single judge disposed of the appeal caused serious prejudice to Surendra.
Given the tone of comments that this blog has been increasingly receiving over the past few days, we do need to lighten the atmosphere a little. So I take this opportunity to crack a very bad photocopy joke, which goes something like this --
- Q. What did X do after taking a photocopy? (plug in your preferred name/s)
- A. She compared it with the original document for spelling mistakes.
For now, the Draft Rules can be downloaded from here.
We also receive several comments that are irrelevant and have nothing to do with the subject matter at issue. Illustratively, in response to one of our blog posts, we received a comment asking us to decide whether a vegetarian leader (Adolf Hitler) was better than a non veg alcoholic (Winston Churchill). While this is an extremely thought provoking issue, it simply did not relate to the serious issue that we were debating on the blog. Namely, brainstorming ways to incentivise our patent officials better by inter-alia ensuring better performance related incentives.
Unless, of course, the person was suggesting that from a policy perspective, a vegetarian Controller General heading the IPO was a rather dangerous proposition ala Hitler. And that we should engender more Churchill style leaders by insisting that all our CG's were confirmed meat eating alcoholics!
Anyway, back to the main thrust of this post: We urge you to desist from personal attacks and irrelevant comments. Please contribute in a meaningful way and constructively to the issues at hand. And please keep your comments polite as best as you can. We know that some of you are raging to attack and demolish, but personal attacks will always hinder a true engagement with issues. As it then becomes more about the person and less about the issue. You can always critique in a healthy manner without getting personal.
We're trying to up the ante for IP policy debates in this country and to foster an eco-system where the government and other IP functionaries are more transparent and engage with stakeholders in a more meaningful manner to evolving optimal IP policies. Kindly help us in this cause by participating constructively. Thank you.
ps: we intend to ramp our CLAM platform to engender more collaborative IP policy making. We are looking out for interested folks who can help us construct a much more user friendly platform. We already have CLAM hosted on a tiki-wi platform, but received feedback that its not particularly alluring to potential participants. Thanks to the untiring efforts of a bright law student, Sai Vinod, we are now experimenting with Debateopedia. But would really like some of you who have the vision and technical competence to give us a more optimal solution in this regard. We will offer a prize of Rs 20,000 to anyone who can come up with the best platform in this regard. You have to conceptualise it and also implement it.
If you're interested in contesting, please email me at shamnad [at] gmail.com.
pps: image from here
The case, Archie Comic Publications Inc. v. Purple Creations was decided through a judgment of Justice Mukta Gupta and Justice Vikramjit Sen. The facts in this case are as straightforward as they come:
i. Archie applied for registration in India under Class 16, stating user of their mark in India from 1979. The only basis for the claim of such use, as shown through the case, was a single invoice from a book store in New Delhi, and claims of importation.
ii. They claimed to have knowledge of the Defendant since 2004 when they came across a TM advertisement for PURPLE ARCHIE.
The case, of course, gets a little murkier from here on.
The jurisdiction paragraph of the suit, is in my opinion, a little vague stating only that the Court had the jurisdiction to try and entertain the suit based on the following:
(a) A part of the cause of action had arisen with the territorial jurisdiction, and,
(b) The Defendant's mark had been advertised in the TM Journal which was circulated in Delhi.
The Court, in appeal, was called upon to decide an Application under Order 7 Rule 11 of the Code of Civil Procedure i.e. to examine whether the Plaintiff in its Plaint had in fact made out material facts establishing that the Court had the necessary jurisdiction.
The Appellant sought to rely upon Section 134 (2) of the Trademarks Act, 1999 to state the necessary jurisdiction was present. The Delhi High Court, unfortunately, disagreed.
Relying on the (in)famous decision of IPRS v. Sanjay Dalia, the Division Bench (comprising of one Judge who in fact wrote the Sanjay Dalia decision) held that the additional forum for the Plaintiff to institute a suit as provided under Section 134(2)- just like the similarly worded Section 62 (2) of the Copyright Act, could not be read disjunctively from Section 20 of the Code of Civil Procedure.
For our readers, who at this point are slightly lost in the numerous provisions mentioned above, a quick refresher: The Code of Civil Procedure in India allows a party to file a suit where the Defendant resides, or carries on business or personally works for gain or where a part of the cause of action has arisen against the opposite party. In contradistinction, the TM Act and the Copyright Act provide- what most of us consider- an additional forum for the filing of a law suit i.e. where the Plaintiff (the aggrieved party) resides, or carries on business or works for gain.
Getting back to the facts of this case, the Delhi High Court held that the provision in the TM Act and the CPC would have to be read conjunctively, i.e that apart from the fact of residence/ business of the Plaintiff being carried out, a part of the cause of action would also have to have arisen within the jurisdiction of the Court.
Proceeding on that basis, the Delhi High Court on the facts as presented in the Plaint held that this was not the case at hand, and dismissed the suit.
While the Delhi High Court may have been aided in the completely inadequate pleadings of the Plaintiff, they also refused to allow amendment to the plaint.
It seems to this blogger, that a worrying trend in jurisdiction matters has begun- which can only be rectified by the Apex Court. For IP Practitioners and those who regularly follow the blog, you may remember that the judgment in IPRS v. Sanjay Dalia has been stayed and is currently pending in appeal before the Supreme Court, and is likely to be heard sometime in October. Perhaps a clearer discourse on jurisdiction in Copyright and Trademark matters is likely to emerge? One can only hope so.
Image from here and here.
Blog Title from completely unrelated song here.
Other Britney hits can be accessed here.
Wednesday, September 22, 2010
Readers will remember the tid-bit on Emami serving a legal notice alleging copyright infringement on the makers of Dabangg for the use of word Zandu in the song Munni badnam hui. Turns out that the FMCG Emami is now open for an out-of-court settlement with Sree Astavinayak and Arbaaz Khan Productions.
As ET reports here, Arbaaz Khan, producer of Dabangg said :
“We are in a dialogue with them (Emami), hopefully, all will be settled without any issue. When asked whether this means he is looking at an out-of-court settlement, he added, Yes looks like it.”
Sources suggest that the makers of Zandu Balm had approached the producers for the use of the song Munni badnam for its promotional campaigns.
Did Emami finally realise that they actually had no case against the producers?