IP NEWS WEEKLY UPDATE – 30 JUNE 2022
India’s key achievements related to patent filings:
The Union Minister of Commerce and Industry announced the key achievements that the country has been performing in relation to patent filings. The domestic patent filing has surpassed the international patent filing between the period of January to March 2022, which is the first time in 11 years. Further, there has been nearly five times increase in the grant of patents in 2021-22 as compared to the year 2014-15. Another key achievement by the patent office is that there has been a reduction in time of patent examination from 72 months as of Dec 2016 which is now between 5-23 months at present, for different technological areas.
Agriboard International Llc vs Deputy Controller Of Patents:
The Appellant is a company based at United States which had filed a patent application in 2020 before the IPO. As per the First Examination Report there were objections relating to novelty on the ground of the subject invention being anticipated, and lack of inventive step. Following which the response to FER was filed by the Applicant following which a hearing was held and an order of rejection was provided. The stand of the Appellant is that the order does not have any reasons for the refusal of the grant of patent and that there is no analysis as to the differences or similarity between the cited prior art and the invention of the Appellant. The Appellant claims that the same is clearly distinguished by the Appellant in its reply to the FER and stresses that giving reasons in an order is an essential element of the principle of audi alteram partem. The Court opined that there are key elements to be analysed and considered before rejection of an application on the ground of lack of inventive step and without discussion of these elements a bare conclusion would not be permissible. It was decided that the earlier order be set aside and the matter be remanded back to the IPO for a fresh consideration.
The introduction of the Protection of Traditional Knowledge Bill, 2022, to the Lok Sabha
Shashi Tharoor, the Congress MP from Thiruvananthapuram, presented the Protection of Traditional Knowledge Bill, 2022. The protection for traditional knowledge and culture proposed by this bill does not entail any property rights. The Union of India would have ultimate control over the Traditional Knowledge, and its prior owners or communities would be regarded as its custodians. It further states that this protection would be given without respect for intellectual property rights.
The Intellectual Property Office of Singapore raises financing for IP dispute parties choosing REMPS mediation
Beginning on April 1, 2022, corporate companies will have access to the Revised Enhanced Mediation Promotion Scheme (REMPS) offered by the Intellectual Property Office of Singapore (IPOS). The REMPS is an expansion of IPOS’s Enhanced Mediation Promotion Scheme (EMPS) that offers businesses with IP disputes involving Singaporean and international IP rights extra financing regardless of the mediation’s outcome. For dispute cases involving Singapore and international IP rights, REMPS offers a higher funding amount of around 17%, or up to US$10,262. Parties may earn up to US$7,330 for issues affecting exclusively Singapore IP rights. Parties may deduct up to 80% of the costs associated with their legal counsel and other mediation-related expenses from the funds. If just one party submits a REMPS funding application, that party may request up to US$2,199 for each mediation case.
The Delhi High Court refuses the registration of RMPL while reviving PPL’s application for a copyright society
Phonographic Performance Ltd. (‘PPL’) and Recorded Music Performance Limited (‘RMPL’) have recently received interim reliefs in their dispute over registration as copyright societies under the Indian Copyright Act in a recent order dated April 11, 2022, issued by a division bench of the Delhi High Court. The Division Bench granted, as a pro tem measure, a stay on the decision of the Single Judge to the extent that it forbids RMPL from using the word “ordinary” in the proviso to Section 33, the Registrar’s behaviour with PPL—first rejecting its withdrawal application and then passing a contradictory order declaring the withdrawal to have been granted—and PPL’s operation under Sections 18 and 30 of the Copyright Act. Additionally, the Division Bench has given the Registrar four weeks to review the PPL application while the appeal is pending.
World Intellectual Property Day 2022
Every year on April 26th, World Intellectual Property Day is commemorated. The purpose of the occasion is to increase public understanding of how patents, copyright, trademarks, and design impact our daily lives. In civilizations all throughout the world, the utilization of intellectual property (IP) rights is employed to promote innovation and creativity. The Department for Promotion of Industry and Internal Trade held a conference where it was announced that the number of patents granted has grown five times in a matter of seven years since the Government adopted the Intellectual Property policy in 2016 and that the number of Trademarks registered has also increased four-fold during this period. It was also stated that the government has taken a series of measures, including reducing the number of forms for trademarks and patents, to further strengthen the country’s IPR regime. One of the key takeaway from the conference is the fact that only those industries which invest in Knowledge and Innovation would survive and for Knowledge and Innovation to survive, Intellectual Property becomes a very, very important tool.
Examining the Delhi High Court’s injunction on use of Adwords in the MakeMyTrip vs. Booking.com Case
In a ruling on April 27, 2022, Justice Prathiba M. Singh granted Makemytrip an interim injunction in the case of Makemytrip India Private Limited vs. Booking.com B. V. & Ors. The Court opined that using the plaintiff’s registered marks on the Google Ads Program as keywords by the defendants would amount to trademark infringement and passing-off, thus they were forbidden from doing so.
Fair Use: Restricting expression with Copyright?
In Shemaroo Entertainment Limited v. News Nation Network Private Limited, the Bombay High Court issued an order on April 27, 2022, prohibiting News Nation from using, incorporating, recording, distributing, broadcasting, telecasting, or publishing any works from the Plaintiff’s library of cinematographic works on its news channels. This order comes in light of news networks’ use of copyrighted material and considers whether it violates Section 52(1)(a)(ii) and (iii) of the Act of 1957 or if it is a limitation on copyright.
The Supreme Court recently discussed the issue of compulsory licensing of Covid-related products in its first hearing in the suo moto case
A recent ruling by the Supreme Court established a flexible compulsory licensing structure for the patented medications and vaccines used during COVID-19. The Court ruled that the Central Government should make any licensing decisions in order to guarantee that these essentials are licensed in a just and equitable way.
Red Bull Ag vs Pepsico India Holdings Pvt Ltd:
The Plaintiff initiated the present suit in the year 2018, seeking interim injunction against the defendants and restraining them from using the tagline “STIMULATES MIND. ENERGIZES BODY” claiming it to be deceptively similar to their tagline “VITALIZES BODY AND MIND.” It is claimed that the Plaintiff has been using the mentioned tagline since 1987 and the same has been registered as a trademark. They also claim that the usage of the mark/ tagline has become a source identifier of its products and on account of long and extensive usage, it has acquired distinctiveness in relation to the products of the plaintiff. The Defendant contended that they have filed a rectification petition against the plaintiff’s mark on the ground that the registration is in contravention of provisions of the Act as the tagline used by the plaintiff is completely descriptive and that registration ought not to have been granted by the Trademark Registry. The Court was of the view that both the taglines used by the plaintiff and the defendants are descriptive and laudatory in nature and observed that the plaintiff had failed to establish a prima facie case in its favour.
CNIPA announces crackdown on 482,000 malicious registered trademarks in 2021:
CNIPA held a press conference in the month of April and had announced a crackdown on 482,000 maliciously registered trademarks in the course of the trademark examination process. The count included about 60 maliciously hoarded and about 1,600 maliciously registered trademarks that harmed social and public interests. Further, in the course of Opposition proceedings the office had cracked down a total of 30,000 malicious registered trademarks and announced that the number of trademarks invalidated ex officio was five times the total in the past 10 years. It was also announced that the number of international patent applications submitted by Chinese applicants through Patent Cooperation Treaty (PCT) amounted to about 69,500, thus the country ranks first in the world for the third consecutive time.
Levi Strauss- Stitching design infringement suit:
The brand had approached the court seeking protection of its stitching design, claiming that the same was adopted back in the year 1873. They claim that they have been using the same design on all of their textile products. Levi Strauss said that it approached the Court following a discovery that its products with the infringing stitch design on were being sold and made available on various e-commerce platforms, including leading platforms such as Amazon and Flipkart. The Court was of the opinion that the ‘Arcuate Stitching Design’ mark, which has been used in the plaintiff’s textile products serves as a unique identifier in respect of the goods of the particular brand and that the mark in relation to the design had attained the status of a well- known mark. It was identified that Imperial Online Services Private Limited was selling denim jeans with the identical design mark through its website and other e-commerce platforms. Thus the Delhi High Court imposed a cost of ₹4 lakhs and directed the e-commerce sites to take down links to garments that were using the mark.
Snapdeal’s plea for trademark infringement related to domain names rejected:
Snapdeal had approached the Delhi High Court seeking suspension of registrations infringing its trademark and prohibition of future registration of domain names which may infringe its trademark. The court was of the opinion that it can’t restrict DNRs from granting registrations containing the term Snapdeal since not all the alternatives to the domain name will necessarily be infringing in nature. The Delhi HC also warned that DNRs are responsible for making sure that the domain names they offer to a consumer does not infringe on any registered trademarks. It was also stressed that incase of providing deceptively identical names the DNRs would be charged with trademark infringement. Further, the court advised Snapdeal to necessarily petition the court against each domain name that infringes its trademark, which is a long and cumbersome exercise and emphasized that there is no shortcut to justice.
World Book and Copyright Day:
April 23, celebrated as the World Book and Copyright Day with the intention to promote and recognise the benefit of reading books, publishing and copyrighting the same and the same is being organized annually by the UNESCO. Every year a country would be selected as the World Book and Copyright Capital of the year. As of 2022, Guadalajara (Mexico) has been named World Book Capital of the year. The day emphasizes on the importance of books and the benefits of copyrighting the same.
Nokia- Lenovo settle patent disputes:
Nokia had initiated patent infringement suits against Lenovo in the year 2019 and complained that Lenovo had infringed 20 video-compression technology patents belonging to them. The cases were initiated in various jurisdictions including United States, Brazil, India and Germany. In certain jurisdictions it was ruled that Lenovo infringed Nokia’s patent, and ordered an injunction and a recall of products. Presently, the company has preferred to settle the issue thus putting an end to the litigation in other jurisdictions. The terms of settlement stands undisclosed.
HTC Corporation initiates trademark infringement suit against LV Degao:
HTC Corporation, the plaintiff who claims to be a leading manufacturer of consumer electronic items, used the letters HTC on all its products such as smartphones, other electronic devices, etc. the trademark for the same was registered in various countries and as far as India was concerned, the plaintiff registered its mark in the year 2006. Degao, the Chinese company is engaged in the business of manufacturing electric hair trimmers, hair clippers and hair dryers. The Plaintiff claims that the Defendant uses its mark on their products which is being sold and distributed through various channels including popular e-commerce websites and is in the attempt of registering the same. It is pertinent to mention that the Plaintiff has been taking action against the Defendant’s mark in various jurisdictions and the USPTO has declared that the Defendant’s mark has been abandoned. Another point to be noted here is that the Plaintiff had undertaken Rectification proceedings against the Defendant application to register the mark. Thus the court has ordered an interim injunction where the Defendants are restrained from involving in any kind of activity in relation to the mark in question until the decision in the rectification/cancellation proceedings is rendered.
Modicare Limited vs Registrar of Trademarks:
The present Appeal has been initiated by Modicare Limited which is involved in direct selling business and claims to be functioning since 1996. The Appellant adopted the mark ‘ACHIEVERS ACADEMY’ used in respect of events in relation to honoring its high achieving consultants. The company had applied for the registration of the mark under various classes including classes 35 and 45 which were rejected by the Registrar of Trademarks on the ground that several other marks were already present in the said classes’ which were similar to the Appellant’s marks. The contentions of the Appellant was that most of the marks cited by the Registrar were not in use currently and the use of the mark by the company would include the presence of their house mark. The court was of the opinion that the marks cited by the Registrar contain largely similar/ identical marks in respect of identical/ similar services. At the same time, it could be understood that the marks were either refused or were not in use. After taking an overall view the Court opined that the applications filed by the Appellant be proceed for advertisement, but the Appellant had to alter its applications to include the house mark as a prefix and the description of the goods in all the applications should be altered to confine to direct selling business alone.
The British School v. The British School:
In the case of The British School Society v. Sanjay Gandhi Educational Society, the Court had rightly concluded that use of identical marks for identical services would constitute misrepresentation in the course of rendering the particular service and that such continuous use may cause irreparable prejudice and damage not merely to the legitimate owner’s goodwill alone but to various consumers availing the said service. The Plaintiff had approached the Court seeking permanent injunction against infringement of trade mark, passing off and damages against the Defendant who was running a school with a name and mark identical to that of the Plaintiff. The Plaintiff also came to know that a website www.thebritishschool.org was being run by the Defendants, thus claim that the usage of identical mark by the Defendant constitutes to infringement of its trademark. The Court was of the opinion that usage of an identical mark by the Defendant was not only affecting the Plaintiff but also the students who had enrolled in the school, thus ordered the Defendants to change their name and that the process shall be undertaken in an expeditious manner so that no inconvenience is caused to the students studying in the schools. Further, the Certificates and other documents to be given to the students studying in Defendants’ schools shall be issued and were allowed to bear the name and mark in question only till the end of academic year 2021-2022.
Inox India Pvt Ltd. v. Cryogas Equipment Pvt Ltd. & Ors.:
The 2018 Copyright infringement suit filed by Inox India has now been rejected. The company accused CEPL of copying the designs of their tanks and hiring two ex- employees of Inox for this purpose. It had approached the Court seeking an injunction against CEPL, whereas CEPL argues that the designs of their products and Inox’s products were completely different and that they had created the designs of their products out of their own research and efforts. It was further contended that the present suit falls under the Designs Act and not the Copyright Act, thus argued that the suit ought to be dismissed. It could be understood that Inox did not register their design under the Designs Act and the provision under Section 15 (2) of Copyright Act was quoted which says that copyright in any design, which can be registered under the Designs Act 2000 but hasn’t been registered shall cease as soon the article to which the design has been applied has been produced more than 50 times by the owner. It was evident that the Plaintiff had sold more than 50 products thus the question that prevailed was that does the copyright on the design of the Plaintoff still exist. The Court stated that Inox had lost its protection once it manufactured more than 50 products, thus the plaint was rejected.
EU dismisses Poland’s complaint over Copyright reform:
The Copyright reform adopted back in the year 2019 was opposed by a number of countries. The countries were against the concept that the European law holds platforms legally responsible for enforcing copyright as they have the duty to check what users post to prevent any event of Copyright infringement. Across the media industry, various professionals and sectors accepted and welcomed the reform except for internet giants. It was argued that the policy would pose as a threat to freedom of expression. Presently, the EU Court has dismissed Poland’s complaint over the same and opined that there are various procedural safeguards included in the process, which aims to protect the rights and freedom of speech of the users of the platforms, thus is in no way a threat to the same.
Apple sues startup over trade secret theft:
Apple sues the startup Rivos, claiming that it poached the company’s engineers to steal confidential information, documents and trade secrets about its designs, especially those in relation to manufacturing of chips. It is claimed that the startup has hired over 40 former Apple employees. Apple accuses the engineers of taking files from Apple containing thousands of documents, which covered confidential internal projects, as well as those related to designs. Presently, the company has sued for a breach of contract against, misappropriation of trade secrets against the two former employees and the startup seeking damages and rewards over the thefts, reasonable royalty for the misappropriation and injunctions to prevent future use of their trade secrets.
JTH Tax LLC. initiates franchise and trade secret lawsuit against Nest Financial Services:
The complaint states that while the members of Nest Financial Services operated under a franchise, the members also functioned a competing business and once such franchise agreement was terminated, proprietary and confidential information in relation to tax preparations have been misappropriated by Nest Fin Services. The case is now pending before the Georgia Northern District Court where JTH seeks damages, rewards over the theft and prevention of further usage of their confidential information.