ASIAN PATENT ATTORNEYS ASSOCIATION. 54th Council Meeting, Adelaide, Australia 2007 REPORT OF THE RECOGNIZED GROUP OF INDIA

Transcription

1 ASIAN PATENT ATTORNEYS ASSOCIATION 54th Council Meeting, Adelaide, Australia 2007 REPORT OF THE RECOGNIZED GROUP OF INDIA PRATHIBA M. SINGH Secretary, APAA (Indian Group) SINGH & SINGH ADVOCATES F-12, JANGPURA EXTENSION, NEW DELHI

2 1. Legislative changes Trademark The most important development in India in terms of legislation is the introduction of the Trade Mark Amendment Bill The said Bill has been introduced in order to begin the process of accession of India to the Madrid Protocol for international registration of trade marks. The Bill was to be taken up for consideration in the Indian Parliament in the last session (Monsoon Session). However, it could not be taken up and is now expected to be taken up on the Winter Session of the Parliament. The broad amendments which are contemplated under the proposed Amendment Bill 2007 are as follows: a. Amendment of Section 21(1) Period of opposition: Once a trademark application is filed, it is examined in the due course. After the objections under the Examination Report are cleared, the mark is advertised in the Trademark Journal for opposition. Under the existing Section 21 (1) of the 1999 Act, a total of months is the available period to file an opposition to a trademark application. This period of 3+1 months is counted from the date when the Journal is released to the Public. This is being reduced to a period of three months and the one month extension period has been removed. This would reduce the time for filing of notice of opposition from a total of 4 months to 3 months. b. Section 23(1) Outer limit for issuance of registration certificates In the Indian Trademark registration system experience has shown that sometimes a trademark application takes a very long period to get registered. However, once India accedes to the Madrid Protocol, long delays in issuance of certificates for trademarks which are not opposed would not be acceptable to the international community. In view of this, the Bill proposes an outer limit of 18 months from the date when the period for Opposition expires, for issuance of the trademark certificate by amending Section 23(1). Indefinite delays in registration would be streamlined in view of the statutory outer limit which is

3 now being contemplated. This is a positive amendment which is being made and would help applicants and trademark owner to a very great extent. Such an amendment would also make the Indian Trademark Registry accountable to trademark owners and practitioners. c. Introduction of Chapter IVA: This chapter seeks to define the terms used in the registration system under the Madrid Protocol and set out the procedure for International Registrations. It defines the term basic application, basic registration, international application, international registration. The salient features of the sections in this chapter are: i. Persons who have already applied for trademark registrations or own registered trademarks in India can make an international application for international registration of the mark. ii. Similarly, a person holding an international registration can seek a registration in India on the basis of the said international registration. This would have application to all parties who already own registered trademarks under the Madrid Protocol system. iii. Any person seeking to file an international application can designate any of the countries in which the protection is sought. India would also be a receiving office for such international applications. iv. An international application filed in an Indian trademark office would be forwarded to the international bureau by the Indian office. v. If within a period of 5 years of an international registration, the basic application under section 18 or the basic registration under section 23 has been withdrawn or cancelled, the automatic effect of the same will be felt on the international registration unless there is an appeal pending. After the expiry of this period the, the international registration

4 becomes independent of the basic registration/application vi. If the Registrar receives an international registration through the international bureau, the Registrar can take a view on the basis of the circumstances in India whether to accept the application or to impose any conditions or limitations on the registration. For this purpose, the Registrar can afford a hearing to the applicant concerned. vii. All provisions which apply for examination of trademark applications in India viz. absolute grounds, relative grounds, limitations, applications, oppositions, advertisements etc. would apply to international applications. Thus, all the international applications which are filed in the international bureau and which designate India as a country seeking registration have to go through the same procedure after they are forwarded to the Indian office. Thus, the steps of examination report, response to examination, hearing, advertisement and opposition would be equally applicable to International applications. viii. If an international application is made designating India, the date of priority for the Indian application shall be the date of the international application. ix. If a person has an international registration of a trademark and has a pending application in India then for all practical purposes in India it shall be treated as a pending application and not as a registered trademark. x. The term of trademark shall be a period of 10 years and renewal shall also be 10 years each. PATENT: The Government of India though Ministry of Commerce and Industry, Department of Industrial policy and promotion vide Gazette notification no. 12/15/2006-IPR-III

5 dated April 3, 2007 appointed April 2, 2007 as the date on which all cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patents other than on a counter-claim in a suit for infringement and rectification of Register pending before any High Court shall be transferred to the Appellate Board Patents Act, 1970 as amended on 1 January 2005 permits both pre-grant and post grant oppositions. Unfortunately, due a faulty wording of the applicable provision, there is no time limit imposed for instituting pre-grant oppositions. Thus, under the law, a pre-grant opposition may be instituted by any person, any time, as long as a patent has not been granted on an application. This has enabled several unscrupulous parties to delay grant of patent on an application by filing frivolous serial oppositions. 2. Significant Intellectual Property Cases Trademarks: i. Zee Telefilms Ltd Vs. Union of India injunction against Registrar of Trademarks (Unreported-C.M.(M) No.183 of 2007) The plaintiff ZEE, one of the premier television broadcasters, claimed that the Registrar of Trademarks had accepted and published applications by one of the respondent for registration of trademark ZEE. The Respondent had filed over 100 applications for registration of the trade mark ZEE and its variants for mouth fresheners. The Registrar of Trademarks had advertised the mark in the Trademark Journal without examining the applications and thus the company had to face the burden of opposing all such applications published and further to keep a track of all such applications published. The Delhi High Court in a historical order restrained the Registrar of Trade Marks from proceeding further in any of the Respondent s trade mark applications. Even the registration certificates already granted were stayed. The decision, though interim in nature, is a first of its kind wherein the statutory body has been restrained from performing its statutory function, where such function was not performed in accordance with the provisions of the Act.

6 ii. Cadila Healthcare Limited Vs. Gujarat Cooperative Milk Marketing Federation Limited & Anr. This case relates to the use of the mark SUGAR FREE. The grievance of the plaintiff was that the use of the mark SUGAR FREE by the defendants for their Probiotic Frozen Dessert was violative of its rights in the said mark. Though earlier the Delhi High Court had passed an ex-parte order of injunction restraining the Defendants from using the mark SUGAR FREE for their food preparations, the said injunction was subsequently varied so as to allow the defendants to use the expression Sugar Free as part of a sentence or as a catchy legend so as to describe the characteristic feature of their products. The defendants were however restrained from using the expression Sugar Free in the present font size which is conspicuously bigger that its trade mark AMUL. While varying the injunction, the Ld. Single Judge inter alia held that the plaintiff s mark SUGAR FREE has acquired some degree of secondary meaning among the relevant section of the public. While arriving at this conclusion, the Court considered the fact that the plaintiff had almost 3/4 th of the market for Sugar Substitutes. iii. Hyundai Corporation vs. Rajmal Ganna CS (OS) No of 2005 Judgment dated 14 th September 2007 This case relates to the use of the trademark Hyundai by the defendant for sale of television, antennas etc. The defendant had adopted the mark for its goods which include televisions, cables, audio, video, cable TVs, calculators, machines, stabilizers, installation of lighting, heating, cooking, refrigeration, ventilation etc. The defendant was using the mark with a malafide and fraudulent intention to create deception and confusion in the public at large and to trade upon the goodwill and trans border reputation of the plaintiff and to pass off bad quality goods as that of the quality products of the plaintiff. The defendant challenged the territorial jurisdiction of the court as well as the trademark Hyundai being a generic and common word. The Hon ble Delhi High Court however rejected the plea of the defendant regarding the nature of the mark. The court held that the word Hyundai is not a word of common use and that the same consists of a transliteration of Chinese and Henkul characters meaning ``present generation'`, use whereof was commenced by the

7 Hyundai group in the year 1976 in Korea. The Court further held that the defendant had not even attempted to give an explanation as to how it came to coin the word HYUNDAI. The court further held that a threat of sales would confer jurisdiction to the court. The Hon ble Delhi High Court injuncted the defendant from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods bearing the trade mark HYUNDAI. iv. NISHABD & Kabhi Alvida Na Kehna Cinematograph films (2006(33) PTC 381 & 2007(34) PTC 591) The two cases related to protection to movie titles as trade marks. The Court held that movie titles are protectable as trade marks so long as they are not in common use but have literary merit. Such titles can be protected on showing of secondary meaning. However, due to the delay in approaching the court, injunction was refused in these cases. COPYRIGHT: i. G. Buttan vs. State & Anr (34) PTC 636 In this matter the petitioner was involved in duplicating various cinematograph films and music in the form of VCD s and other forms worth crores of rupees and was having a production capacity of 20,000 CDs per day. He was arrested on a complaint by the Copyright owner. He moved for bail before the Delhi High Court. The High Court dismissed the bail application of the petitioner. Further the court observed that they cannot remain oblivious to fast spreading tentacles of piracy. The court further observed that Piracy in relation to cinematograph films tends to strike a crippling blow on entire film industry which, in turn, seriously jeopardizes the national economy. This observation of the High Court shows the seriousness with which copyright piracy cases are being dealt with. ii. Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula & Anr. [2007 (34) PTC 81 (Del)]

8 This was a case where Fashion designer Suneet Varma filed a suit for infringement against the producers etc. of the movie Bunty Aur Bubly. The case related to a blue cape (poncho) worn by a famous Bollywood film actress Rani Mukherji in the said movie. The producer had moved an application for dismissal of the suit saying that the said dress worn by the lead female protagonist was only incidental to the principal matter represented in the film or as a background and therefore, the same would not amount to copyright infringement. However, the court held that the importance given to this dress could not be undermined in as much as the producer himself thought that it would be of some worth to show the actress wearing this dress on various promotional materials as well as on inlay cards used on audio/video cassettes in as much as it would enhance the promotional prospects of not only the film but the sale of audios/videos in all forms, including cassettes/cds/dvds. Therefore, the plea of the producer that this particular costume worn by Rani Mukherji was by way of background or merely incidental was not accepted and their application was dismissed and the suit was permitted to continue against the costume designer and the producer. The matter is still pending. iii. Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) This was a case relating to designs of upholstery. The plaintiff claimed to have copyright in various artistic works applied to upholstery design. The plaintiff did not have a registered design however they claimed a copyright in the drawings and the artistic motifs etc. The question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproductions of the said upholstery fabric design. The Court although upholding that the motifs etc. of the plaintiff was artistic and also holding that the defendants had copied it, held that more than 50 reproductions had been made and refused to grant injunction under section 15 of the Copyright Act. The Court, primarily, took the view that since this was a protectable design and the plaintiff has not applied for registration of the design, hence no protection would be granted

9 PATENTS: i. Novartis AG vs. Union of India (UOI) through the Secretary, Department of Industry, Ministry of Industry and Commerce and Ors. In this matter, Novartis lost a patent case against Cipla over its cancer drug Glivec when the Office of the Controller General of Patents, Designs & Trade Marks ruled that the drug is not an invention that was patentable. The case was filed earlier this year, after the Indian Patent Office refused to grant a patent to Novartis for its cancer drug, Glivec. India had introduced a provision within its patent law - section 3(d) - which excludes 'incremental innovations' from protectable inventions. Since a patent had previously been granted for Imatinib (the active ingredient of Glivec) in many countries prior to the introduction of product patent laws in India. This meant that Novartis was refused a patent for what it claimed to be an innovative and improved therapy. Novartis challenged the constitutional validity of section 3(d), but the case has been dismissed by the High Court in Chennai. ii. Bilcare Limited vs. Amartara Private Limited MIPR2007(2)42 The plaintiffs had filed a suit for infringement of patent against the defendants. The claim of the plaintiff was of patent violation by the defendant in respect of metallized packaging film patent of the plaintiff. The defendant claimed invalidity of the patent on the ground that there was no novelty in the same and such a film already existed in the market. This was apart from the plea that the plaintiff failed to disclose that it was not manufacturing the product itself, but sourcing the same from Nan Ya Plastics Corporation in Taiwan which was also the source from which the defendant had procured the material. The Hon ble Delhi High Court held that the documents suggested that the product was in existence prior to the date of the patent application. The court further held that an invention must be new and useful. It is not enough that purpose is new or that there is novelty but in application

10 there is a mandatory requirement of novelty in mode of application. Hence the injunction was refused. iii. Hetero Drugs Ltd. vs. Wockhardt Ltd. and Ors. MIPR2007(1)403 DESIGNS The case relates to the validity of the Exclusive Marketing Rights granted in Nadifloxacin 10% Cream granted to Wockhardt. The respondent s application for grant of patent was refused by the Controller of Patents. They thereafter challenged the order before the Hon ble Bombay High Court. However the High Court refused to stay the order passed by the patent office. The respondents had earlier obtained a stay from the Supreme Court in view of the fact that the respondents had been granted Exclusive Marketing Rights (EMR) in respect of the product in question. The aforesaid EMR in terms provided that it shall continue to be in force for a period of five years or till such time as the application for product patent is granted or refused. Since the grant of patent was refused by the Patent office, the Supreme Court vacated the stay granted earlier. i. Gopal Glass Works Ltd. v. Asst. Controller of Patents & Designs & Ors (33) PTC 434 (Cal), The High Court of Calcutta has set aside the order of the Controller of Designs canceling the design registrations of the appellant on the ground that the design has been pre published. The court has held that the controller did not consider the definition of original u/s 2(g) of the Designs Act It has been also held that mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation. The court also observed that to constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be in tangible form of the design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing photographs or

11 explicit picture illustrations that clearly depict the application of the design on the same article with the same visual effect would be sufficient. INTERNET i. Essel Sports Pvt. Ltd. (Indian Cricket League) Vs. K. Ramesh & Ors. In a case which is almost the first of its kind, the parallel cricket league called the Indian Cricket League filed a suit against 4 to 5 persons who had indulged in registration of similar domain names. The said defendants had not only used the similar domain names but had also used the names of the plaintiffs group Chairman, Group name, Housemark as part of their source codes. The case, therefore, related to passing off of domain name, metatagging, hyper linking. The Delhi High Court passed an order of injunction restraining the defendants from using the mark Indian Cricket League/ ICL either as domain names or part thereof, trading style or in any other manner. The court also restrained the defendants from using the plaintiffs Indian Cricket League logo with or without the photograph of the Chairman of the plaintiffs Sh. Subhash Chandra and or in his name / image. Further the defendants were restrained from using any expression, names, marks including the names Indian Cricket League, ICL, Zee, Essel Group, Subhash Chandra etc. or any other terms or expressions identified with the plaintiffs as part of their source code thereby resulting in illegal meta-tagging and providing links to each other s websites by misrepresenting with any of them as the official website of the Indian Cricket League ii. Citicorp & Another V/S Todi Investors (2006(33) PTC631) Citicorp filed a suit claiming a decree of permanent injunction against the defendants from using the trade mark CITI as a domain name and a decree of mandatory injunction for the transfer of domain name citi.in. The defendants challenged the maintainability of the suit before the High court on the ground that all disputes arising out of the registration and use of.in Internet domain name are

12 covered by.in domain name disputes resolution policy. The court held that in the scheme of the policy and the rules there is no explicit ouster of the jurisdiction of the civil court. The ratio of the Court was that a suit for Damages & Passing Off is still maintainable despite a mandatory arbitration clause contained in the INDRP which is similar to the UDRP. CONCLUSION It can be seen from the above that the main highlight of the report from our country is the introduction of the amendment in Trade Mark to pave way for the Madrid Protocol. This would lead to higher and better protection of trademarks on a uniform basis and would also streamline the trademark registration system in India to registrants. PRATHIBA.M.SINGH Secretary APAA (Indian Group)