India RG Report 2014

ASIAN PATENT ATTORNEYS ASSOCIATION
63rd Council Meeting
Penang, Malaysia
th
8 to 11th November, 2014
COUNTRY REPORT FROM THE RECOGNISED GROUP OF INDIA
D. Calab Gabriel (Mr.)
Secretary, APAA (Indian Group)
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The past one year yet again proved to be an engaging one in terms of several
prominent judicial pronouncements being made by the Supreme Court, various High Courts
and Intellectual Property Appellate Board (IPAB) as well as some developments at the Patent
and Trademark Offices. These and a few other key developments have been highlighted in
this report.
A.
PATENTS
Increased activity was seen in the Patents domain with the Patent Office, Intellectual Property
Appellate Board (IPAB) as well as the Courts bustling with contentious patent matters.
Activity at the legislative front was also observed by way of amendments in the Patent Rules.
At the Patent Office level, Indian Patent Office started functioning as an International
Searching Authority (ISA) for PCT applications. Guidelines on examination of computer
related inventions and pharmaceutical inventions were framed and discussed with
stakeholders for final implementation. Some of the important developments are as given
below:
I Legislative Update
1)
Patent Rules amended
Effective February 28, 2014, the new Patents (Amendment) Rules 2014 have come into force.
The new Rules primarily consist of revision in the existing fee structure across all actions. A
brief summary of the Rules is as follows:



A new category of applicant, namely, “small entity” and a new Form applicable
thereto have been introduced.
For the purposes of the amendment, “small entity” shall be interpreted as per the
Micro, Small and Medium Enterprises (MSME) Development Act, 2006. As per the
current definitions, an MSME, in the case of an enterprise engaged in the
manufacture or production of goods would be an enterprise where the investment in
plant and machinery does not exceed INR 10 crores (approximately, USD 163,600)
and in the case of an enterprise engaged in providing or rendering of services would
be an enterprise where the investment in equipment does not exceed INR 5 crores
(approximately USD 81,700). To support the claim to a “small entity”, the applicant
is required to produce documentary proof accordingly.
Some monetary concessions have been provided to applicants who fall under the
category of small and medium size enterprises.
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The amendments have also led to a revised official fee schedule with a general substantial
increase in fees. In an attempt to encourage applicants to use the electronic filing mode
available on the Patent Office website, the amendment has introduced a 10% additional
surcharge on manual mode of submitting documents under each activity, thereby making
paper filing of documents a bit costlier than the electronic filing mode.
II Recent development at the Patent Office
1) Indian Patent Office starts functioning as International Searching Authority (ISA) and
International Preliminary Examining Authority (IPEA)
On September 8, 2014, a new building with state of art facility was inaugurated for the
functioning of the Indian Patent Office as International Searching Authority (ISA) and
International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty
(PCT). Work has already started on this front and India has marked its name among the other
ISA/IPEA recognized under the PCT. Since English is the official language, Engl
2) Guidelines for examination of patent applications
With a view to streamline the examination of patent applications and to give critical guidance
to examiners for examining applications from various technical domains, the Patent Office
has initiated issuance of guidelines for examiners. Till now, such guidelines have been issued
and made public for Biotechnology related inventions as well as Traditional Knowledge and
Biological Materials. In the last year, draft guidelines have been made available for
examination of Computer Related Inventions (CRI) and Pharmaceutical inventions.
Stakeholder meetings have been held and the final versions will be issued shortly.
III Patent Practice change based on case law
1) Proof of right mandatory for all patent applicants
In an order passed in the matter of NTT DoCoMo Inc. Vs. The Controller of Patents &
Design, the Intellectual Property Appellate Board (IPAB) has held that in cases where a
patent applicant is not the true and first inventor of the invention, it is mandatory to file a
“proof of right” while applying for the patent. This ruling is applicable to all patent
applications, irrespective of whether they are being filed in India as Convention applications
or as PCT National Phase applications.
The IPAB looked into the scope of Section 7(2) of the Indian Patents Act, 1970, which
required an applicant, other than the true and first inventor, to establish “proof of the right” to
file a patent application. A proof of right document is either in the form of an endorsement by
the true and first inventors, assigning their rights in the invention to the applicant or any other
supporting document, such as an assignment deed transferring the rights in the invention to
the applicant. Section 7(2) expressly provides that, “Where the application is made by virtue
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of an assignment of the right to apply for a patent for the invention, there shall be furnished
with the application, or within such period as may be prescribed after the filing of the
application, proof of the right to make the application”. A proof of rights document has to be
filed within a period of 6 months from the date of filing of the Indian application or at any
time thereafter with an appropriate petition for condoning the delay.
A notification issued by the Controller General of Patents in 2004 had waived the
requirement to submit such proof in cases where the patent applicant was the same in the
priority country and in India. Relying on this notification, the applicant in this case did not
submit the proof of right document as it was the applicant in the convention country and in
India. The IPAB, however, rejected this contention and held that since the law was clear in
this respect, a proof of right must be furnished by applicant, irrespective of the application
being filed through the Convention or the PCT National Phase route in India. In effect, the
IPAB‟s order nullified the 2004 notification.
The order is, however, silent as to whether this requirement is applicable only to cases which
are currently pending or even those cases which have been granted in the last decade without
the proof of right document on record.
IV Important Case Laws
1)
Dr. Aloys Wobben and Ors. vs. Yogesh Mehra and Ors. (Supreme Court, 2014)
An appeal against an order of the Division Bench of the High Court was filed before the
Supreme Court of India which had held that prosecution of proceedings for revocation of
patents instituted before the Intellectual Property Appellate Board (“IPAB”) can proceed
simultaneously with counter claim proceedings for revocation of the very same patents in the
suits for infringement. In other words, concurrent proceedings in patent matters could
proceed unimpeded.
The first appellant, Dr. Aloys Wobben, is an eminent scientist who has got nearly 2700
patents to his credit for inventions in the field of wind turbine generators and energy
convertors. He has been engaged in the manufacture of wind turbines under the name
Enercon GmbH. The second appellant, Wobben Properties GmbH, holds the rights in the
patents and designs of Dr. Wobben in India by virtue of an assignment. The three
respondents in the case were Yogesh Mehra, Ajay Mehra (being the directors of the joint
venture of Dr. Wobben for its business in India) and Enercon India Pvt. Ltd., (being the joint
venture entity in India). In 2008, after an association of 14 years with the respondents, Dr.
Wobben terminated all the license arrangements in respect of the intellectual property rights
granted to Enercon India. Thereafter, disputes arose between the parties because the
respondents continued to use the appellants‟ intellectual property rights.
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It emerges that the respondents filed 23 revocation petitions against Dr. Wobben‟s patents
under Section 64(1) of the Patents Act before the IPAB. These petitions were not filed on the
same day. As a counterblast to these revocation petitions, Dr. Wobben filed a total of 10
patent infringement suits on various dates before the Delhi High Court. The respondents in
turn filed counterclaims in some of these suits.
Troubled by these numerous proceedings, Dr. Wobben approached the High Court first and
then the Supreme Court. As seen from Section 64, it provides for revocation of a patent either
by way of a petition before the IPAB or by way of a counter-claim in a suit for infringement
of the patent before a High Court.
Applying the principle of res sub-judice, the Court held that the remedies available under
Section 64 of the Indian Patents Act were not conjunctive because the word “or” used therein
separating the different remedies, would disentitle a party to avail of both the remedies, for
the same purpose, simultaneously. Further, since the Section starts with the words, “Subject
to the provisions contained in this Act”, the said Section is subservient to other provisions of
the Act. Hence, even a post-grant opposition proceeding initiated under Section 25(2) of the
Patents Act will bar a person from filing a “revocation petition” under Section 64(1) or filing
a “counter-claim” in an “infringement suit”.
In particular, the judgment laid down the following rules:
 If prior to the infringement suit, a defendant has filed revocation under Section
64(1) before the IPAB, then the defendant would be disentitled to file a counter
claim;
 If the defendant counter claims for revocation in a suit, he cannot thereafter file
revocation under Section 64(1) before the IPAB; and
 If any interested person has filed a post-grant opposition under Section 25(2), he
is barred from filing revocation before the IPAB under Section 64(1) or filing a
counter claim as a defendant in an infringement suit.
2)
Mumbai High Court upholds compulsory license to NATCO
In 2012, the Indian Patent Office granted a compulsory license in favour of Hyderabad based
Natco Pharma Limited (“Natco”) for the anti-cancer drug, Sorafenib Tosylate, used for
palliative treatment of liver and renal cancer. The drug is claimed by an Indian patent, being
no. 215758 that was granted to Bayer Corporation (“Bayer”) in 2008. The drug, sold by
Bayer under the brand name „Nexavar‟, was launched in India in 2008. Bayer appealed the
Controller‟s order at the IPAB. IPAB ruled in favour of Natco, reaffirming the conclusion
arrived at by the Controller General. The IPAB however clarified that import per se would
qualify as “working the patent” within the scope of the Patents Act. However, the Patentee
will be required to give reasons as to why the drug cannot be manufactured locally.
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Bayer had appealed before the Bombay High Court against the IPAB order which upheld the
Compulsory License for Nexavar issued by the Indian Patent Office to Natco. In a recent
order, the Bombay High Court agreed with IPAB decision and held that the grant of
compulsory licenses is to be considered on a case to case basis. Further, importation is
considered as working so long as the patentee can justify the same.
3)
Section 8 requirements
Section 8 imposes an ongoing duty upon patentees to keep the Patent Office informed of any
developments on corresponding foreign applications covering same or substantially same
invention, including name of country, application number, refusals, abandonment, grants and
patent numbers, until the Indian application proceeds to grant or refusal. Section 8 also places
a duty on an Applicant to provide details relating to novelty and inventive step and copies of
accepted/granted claims on the corresponding foreign applications when required to do so by
the Controller.
In 2009, the Delhi High Court, in the case of Chemtura vs. Union of India in fact refused
grant of interim injunction since failure to comply with requirements of Section 8 was
considered to be a serious issue affecting the validity of the patent. The Hon‟ble Court was of
the view that the duty under Section 8 cannot be ignored since it flows from a statutory
provision.
In the latest development on this issue, the Delhi High Court ruled in a suit for infringement
of a plaintiff‟s essential patent by the defendant [Koninklijke Philips Electronics N.V. v. Maj.
(Retd) Sukesh Behl & Anr]. The defendant had filed a counter-claim which challenged the
validity of the essential patent. Relying on the judgment passed in Chemtura case, the
defendant contended that the suit patent should be revoked on grounds of non-compliance
with Section 8. The defendant relied on a letter addressed to the Controller of Patents by the
plaintiff which stated that some information regarding pending foreign applications had been
inadvertently missed. Differing from the Chemtura case above, the Court stated that it could
not be said that the plaintiff had willfully suppressed information as there was no admission
by the plaintiff to this effect. However, it would have to be seen if the matter not disclosed
was material to the grant of patent. Case law in this area continues to develop.
4) Patent law emerging in telecom sector
In a recent appeal [XU Dejun & Others vs. Vringo Infrastructure, Inc. & Another] concerning
a CDMA technology patent, a Division Bench of the Delhi High Court, reversed the trend of
setting interim arrangements in the form of royalty rates in favour of a plaintiff, where the
plaintiff alleges infringement of Standard Essential Patents (SEPs) and claims FRAND (fair,
reasonable and non-discriminatory) negotiations. Recognizing the time sensitivity of patent
litigation matters, the Court, inter alia, ordered an expedited trial of the suit.
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In the early part of 2013, in the Ericsson vs. Micromax series of cases, the Delhi High Court
had ordered Micromax to pay interim royalty to Ericsson during the pendency of the suit
based on Ericsson‟s contention that Micromax had infringed its SEPs on 2G, 3G, EDGE and
AMR technologies and claimed royalty on FRAND terms.
In the backdrop of the above order, in November 2013, Vringo Inc. (along with its wholly
owned subsidiary – Vringo Infrastructure Inc.), a US based patent holding company, obtained
an ex parte ad interim injunction order from the Delhi High Court in a suit for patent
infringement against the Chinese telecom equipment giant, ZTE Corporation. Vide an order
dated November 8, 2013, ZTE was restrained from manufacturing, assembling, importing,
selling or offering for sale or advertising their products (telephone instruments, mobile
handsets, tablets, handheld devices, dongles etc.) or any other similar devices that include the
3G technology CDMA2000 technology which may be covered by the said patent of Vringo
Inc.
Before the Single Judge of the Delhi High Court, Vringo had claimed that it acquired a patent
portfolio including SEPs in the field of CDMA technology from Nokia. The suit was for the
infringement of one of such acquired patents (Indian Patent number 243980), claimed to be
an SEP in the field of CDMA technology. Vringo alleged that since ZTE Corporation was
manufacturing various CDMA2000 compliant products (such as mobile phones, tablets,
dongles and other infrastructure equipment), it would necessarily require to use the
technology which was the subject matter of the suit patent. Accordingly, Vringo alleged that
ZTE could not import, sell or market the said products in India without obtaining a license
from Vringo on FRAND terms. The Single Judge granted an ex parte interim order in favour
of Vringo.
Aggrieved by the said order, ZTE filed an appeal before a Division Bench of Delhi High
Court. ZTE, inter alia, claimed non-infringement and contended that Vringo, being a nonpractising entity (NPE) has not worked the patent in India. Vringo Infrastructure has sued
ZTE globally in what appears to be an attempt to force ZTE to agree to FRAND licensing
terms. ZTE took the categorical plea that FRAND licensing should be preceded by proof of
validity of patent being established and the issue of infringement being held against ZTE.
Relying on the view taken in the Ericsson v. Micromax orders, Vringo argued that ZTE be
directed to first pay royalty on per product basis till the pendency of the suit.
After consideration of the arguments of both the parties, the Court passed a consent order
vacating the ex parte interim injunction, without fixing any royalty rates in favour of Vringo.
Further, the Court declined to follow the precedent set in Ericson v. Micromax series of
cases. The case is still in progress.
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5) Interim injunctions granted in several pharmaceutical patent cases
We also witnessed a trend of the High Court towards granting interim injunctions in
pharmaceutical patent matters.
Novartis patent suits in Vildagliptin
In a move to enforce its Indian Patent No. 212815 for Type 2 Diabetes Mellitus (Type2DM)
compound Vildagliptin, Novartis initiated a series of suits as quia timet action before the
Delhi High Court against various pharmaceutical companies. The said patent was filed as a
national phase application in India from PCT International Application No. PCT/EP99/09708
dated 09.12.1999 as a mail box application claiming priority from US Patent Application No.
09/209,068 dated 10.12.1998. Said patent was granted by the Indian Patent Office on
17/12/2007.
Novartis is marketing Vildagliptin in India as two separate pharmaceutical products. While
one contains Vildagliptin only as the Active Pharmaceutical Ingredient (API) under the brand
name GALVUS, the other comprises Vildagliptin and Metformin Hydrochloride sold under
the brand name GALVUSMET. Vildagliptin is believed to be the first gliptin developed,
second being Sitagliptin (marketed by Merck under the brand name JANUVIA).
Novartis had applied under Right to Information Act, 2005 (RTI) seeking information from
the relevant State Drug Controlling authority regarding grant of permission to manufacture,
sell and market Vildagliptin and Metformin Hydrochloride pharmaceutical products to
entities in India. Based on the reply received from the respective State Drug Controlling
authority, Novartis initiated infringement suits before the Delhi High Court against the
entities who had been granted permission to manufacture and sell Vildagliptin and/or
Metformin Hydrochloride pharmaceutical products.
In all, Novartis has initiated quia timet action by way of infringement suit filed before Delhi
High Court against 7 pharmaceutical companies namely Zee Laboratories Ltd., Wockhardt
Ltd., Biocon Limited, Alembic Pharmaceuticals Ltd., Cadila Healthcare Ltd., Glenmark
Generics Ltd. and Bajaj Healthcare Ltd.
Novartis‟ main contention was that, since the Defendants had been granted the permission to
manufacture Vildagliptin pharmaceutical products it was established that the Defendants
intent to launch such product which will constitute infringement of the suit patent. Further,
Novartis stated that as per their knowledge the Defendants have not yet launched their
products in the market.
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Considering the arguments made on both sides, the High Court in the above suits favoured
injunctions in favour of Novartis in some of the suits while passing restraining orders in
others.
6) Positive news for bio-nutraceuticals
In a well-reasoned order [Kibow Biotech Inc. vs. La Renon Healthcare Pvt. Ltd.] in
November 2013, the IPAB set aside presumptions made about India‟s position on
pharma/biopharma patents post the Supreme Court decision on Novartis‟s anticancer drug,
Glivec. The IPAB upheld a product patent relating to a dietary supplement comprising a
probiotic composition that reduced the need for kidney patients to undergo dialysis. The
product patent entitled, “Compositions for Augmenting Kidney Function” was registered in
the name of Kibow Biotech Inc., a US-based pharmaceutical company, which manufactured
this product under the brand name “Renadyl”. The patent application was filed on March 28,
2006, for a probiotic composition for augmenting kidney function by removing toxic
nitrogenous metabolic by-products and inhibiting the overgrowth of undesirable bacteria in
the gastrointestinal tract. The original patent application contained 20 claims, covering both
product claims as well as method claims. However, when the patent was granted on
September 29, 2009, these were eventually amended to 10 claims covering the composition,
and the method claims were deleted as they were not permitted under Indian Patent law. In
2012, a revocation petition was filed against this patent by La Renon Healthcare Pvt Ltd.,
(„La Renon‟) a Gujarat based Indian company, which sold a similar product in the market
under the brand “Cudo”. In 2011, the Madras High Court had dismissed a suit by Kibow
Biotech against „La Renon‟ for infringement of its patents, including the patent under
discussion here. The revocation petition claimed that the invention was not patentable under
Indian law and raised grounds of obviousness and lack of inventive step.
Though La Renon, had filed several documents in support of the ground of obviousness, the
IPAB noted that 33 of such documents, were unsupported by any pleadings or grounds. As
for the remaining prior art documents, the IPAB noted that none of the documents taught,
either alone or in a combination, the specific limitations claimed by Kibow Biotech in its
patent. While rejecting the ground of obviousness, the IPAB noted that mere speculation of a
hypothesis was not enough to defeat the claimed invention on the ground of obviousness. The
IPAB also rejected La Renon‟s argument that the composition claimed by Kibow Biotech
was a mere admixture and therefore, did not qualify as patentable subject matter. It held that
the disclosure in the specification of the patent went against La Renon‟s contention and that
the claimed composition was indeed a synergistic composition having unexpected benefits
and was not a mere admixture.
Lastly, La Renon alleged false suggestion and misrepresentation in obtaining the patent,
stating that the composition as claimed could not be administered to patients with renal
problem because the various ingredients of the composition, such as, protein and fat soluble
vitamins A, D, E and K would over-stress the kidney by increasing nitrogenous waste in the
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body. Kibow Biotech countered that the composition of the impugned patent did not claim to
treat kidney disorder but acted in the intestine on the unfiltered waste and toxins present in
blood, thereby enhancing the functions performed by the kidney during normal conditions.
The IPAB agreed with Kibow Biotech that augmenting “kidney function” was not the same
as augmenting the “kidney functioning” per se. It was, therefore, held that the petitioner had
deliberately misconstrued the scope and ambit of the invention. Based on the above analysis,
the IPAB dismissed the revocation petition and imposed costs of INR 20,000 (approximately
USD 320) on the petitioner, La Renon Healthcare Pvt. Ltd.
This order passed by the IPAB is one of the few orders on cases involving biotech based
products in India and has indeed been received very well by innovator companies in India
and abroad. According to news reports, following the positive order from the IPAB, Kibow
Biotech Inc. is all geared up to enter India‟s fast-growing dietary supplement market with its
various proprietary products, including Renadyl.
7) Restoration of Patent – Mumbai High Court
The Bombay High Court (Teijin Limited v. Union of India, February 2014) restored a patent
that had ceased due to procedural lapses on the part of the Patent Office. Teijin, the patentee,
filed a constitutional writ to restore its patent that was annulled by the Patent Office for
failure to pay renewal annuities. Teijin claimed that it had paid the annuity due for the 3rd to
9th year; however, the patent number in the request had an error and upon noticing the same,
it had immediately addressed a letter to the Patent Office seeking to correct the same. The
payments for the 10th and 11th year annuities were also made well in advance of the deadline
and the same were accepted by the Patent Office. However, when the 12th year annuity
became due, Teijin was shocked to learn that the Patent Office records reflected its patent to
have ceased in 2009 itself, apparently due to non-payment of the 11th year annuity.
In the writ, Teijin claimed that the Patent Office violated the principles of natural justice by
cancelling its registered patent without intimation or granting a hearing. In defence, the
Patent Office argued that it never received the letter sent by Teijin‟s patent agent to rectify
the error.
After hearing the parties, the Court opined that the Patent Office had indeed faltered in not
keeping its records in order, even when it accepted the annuities paid by Teijin for the 3rd to
11th year. It noted that the Patent Office neither intimated the patentee regarding the
discrepancy in the patent number in its records, nor did it accord the fees paid by Teijin to
restore the patent in question. Based on the fee receipts produced by Teijin, it was held that
Teijin had paid all annuities due for renewal of its patent within the prescribed time period
and that it was the Patent Office which had failed to rectify the register or promptly intimate
Teijin to rectify any errors. The Patent Office was, therefore, directed to restore the patent.
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8) Nitto Denko Corp v. Union of India
A civil writ petition was filed by Nitto Denko Corporation, questioning the delay in the
issuance of FER and seeking directions regarding timeline of issuance of first examination
report (FER) and expediting patent prosecution. The Delhi high court issued an
order directing the Indian patent office to file an affidavit indicating the state of affairs in the
patents office regarding issuance of FER and to disclose the year wise pendency of patent
matters. Upon the court‟s direction, a committee has been constituted to look into expediting
examination of patent applications, recruitment of examiners, compensatory measures for
applicants whose examination is delayed etc.
B. TRADE MARKS:
I. Recent Developments/Notifications – TRADE MARK REGISTRY
1) The Controller General of Patents, Designs and Trade Marks (CGPDTM) launched a
Dynamic Trademark Utility which will allow the public to see on real time basis, the
detail of Examinations of trade mark applications, show cause hearings, publications
in the trade marks journal, registrations of trade marks, disposal of applications (i.e.
by way of abandonment, refusal, etc.) and other notices issued month/date wise.
2) In a further progressive step towards digitization, the Trademark Registry has notified
that replies to office actions or examination reports can be filed online. The replies to
office actions along with supporting document can be uploaded online through the
comprehensive e-filing services of trademark.
3) The Registrar of Trade Marks published classification of goods and services under
Section 8(1) of Trade Marks Act, 1999 for the purpose of Registration of Trade
Marks.
4) In view of India‟s accession to the Madrid Protocol, the CGPDTM published
“Guidelines for functioning under the Madrid Protocol”. The document provides
guidelines to be followed by the Applicants at the time of filing international
application with the Indian Trademark Registry and also lays guidelines for foreign
applicants while designating India in their international application.
5) The CGPDTM issues Public Notice with respect to auto-emailing of QR Coded
correspondences such as Cash Book Receipt, O-3 Notices and Renewal Intimations of
Trade Marks.
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6) The CGPDTM in extension of e-filing services of trademarks launched online
services that would include e-facility for filing forms of renewal, opposition,
corrections, duplicate registration certificate, Legal certificates etc.
7) The CGPDTM issued Public Notice regarding release of all TM Forms through
comprehensive e-filing of Trade Marks.
Comprehensive e-filing service of Trade Marks is an online service provided by the
Trade Marks Registry on the IP India web-portal, which allows filing of TM Forms
and other documents required for registration/renewal/rectification/opposition/
correction to done online in a soft copy form rather than a physical copy to be filed
with the Registry office. Since there are five Trade Mark Registry offices across
India, this online filing service makes it far more efficient. Earlier the documents
needed to filed with the applicable registry office (on basis of jurisdiction) in the
physical form and this meant that there was the added cost of postage as well as the
time it takes for the post to reach the pertinent office. E-filing is cost and time
efficient way of filing documents with the registry. The CGPDTM has made the
facility of e-filing open for all TM Forms and documents between November 2013
and March 2014.
8) The CGPDTM launched a Stock and Flow based Dynamic Trademark Utility which
will provide the applicants/stakeholders with the facility to view the Trade Marks
under different stocks and the flow of the trade mark applications among the various
stocks.
9) The Government has amended certain provisions in the Trademark Rules, 2002, in
consequence of which the basic trademark application fees in per class has been
increased from Rs. 3,500 to Rs. 4000 and the fees for expedited examination of
trademark has been increased from Rs. 12,500 to Rs. 20,000.
II.
Statistical Analysis of Trademark Application Trends In India (2005-2013
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1) Applications Filed
Applications Filed (2005-2013)
200000
180000
160000
140000
120000
100000
80000
60000
40000
20000
0
179317 183588
123514 130172
85699
194216
141943
103419
As evident from the above graphical representation, the trade mark filing in India has
been on a consistent rise. In the year 2012-13, a record high of 194216 trade mark
applications were filed which is an increase of about 5.79% compared to the previous
year.
2) Indian Applicants v. Foreign Applicants
Indian Applicants vs
Applicants Indian Applicants
180000
160000
140000
120000
100000
80000
60000
40000
20000
0
Foreign
167701 169602
117014 119371
73308
179436
134403
88210
12361 15209
6500
10801
13
7540
11616 13986 14780
There has always been a huge difference in number of applications filed by the Indian
applicants as compared to the foreign applicants. In 2012-13 the number of
applications filed by Indians was 1,79,436 (92.39%) whereas applications originating
from foreign applicants were 14,780 (7.61%).
3) Applications Examined
Applications Examined (20052013)
250000
200000
150000
100000
50000
0
205219
77500 85185 63605
205065
202365
116263
25875
The trend in examination of applications has not been consistent for the period 2005
to 2013 (2009-10 and 2011-12 witnessed a dip in the number of applications
examined). However in the year 2012-13 the number of applications examined
witnessed a good increase.
4) Number of Trade Marks Published in the Journal
Trade Marks Published (2005158665
2013)
160000
140000
120000
100000
80000
60000
40000
20000
0
124250
104260102777102234
85724
44770
14
74871
5) Number of Trade Marks Registered
Trade Marks Registered (2005-2013)
200000
180000
160000
140000
120000
100000
80000
60000
40000
20000
0
184325
109361
115472
100857 102257
67490
51735 44361
The above graphical representation shows that even though the number of
applications filed has been on a rise the number of registrations has not corresponded
to the increase. This indicates towards the trend that examination of applications has
become stricter and registration certificates are not being granted with the same ease
as earlier.
III
Important Case Laws
1) An entity cannot monopolise use of a word for a business of which the said word is
so descriptive
The Delhi High Court in the matter of Living Media India Ltd. & Anr. vs Alpha
Dealcom Pvt. Ltd. & Ors., observed that the word „TODAY‟ is not an invented word,
it is an adopted word which is descriptive of the business of news and current affairs
and therefore cannot be monopolised by any one entity. In the said case, the plaintiff
(India Today Group) had filed a suit for restraining the defendant from launching
news channel named „NATION TODAY‟.
2) A Multinational Company cannot claim trademark infringement only on the basis
of international presence
The Intellectual Property Appellate Board (IPAB) in the case of Jones Investment Inc.
Co. v. Mr. Nagarajan Srinivasan held that a multinational company cannot claim
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infringement of trademark by a local Indian company purely based on international
presence, unless they can expressly establish that their presence extends to India or
precedes that of the Indian company.
3) Personality Rights of Music Composers
April 26, 2014 – The High Court of Bombay in the matter of Sonu Nigam v. Amrik
Singh (Alias Mika Singh) And Another recognized the personality rights of music
composers and singers from Bollywood industry. Mika Singh, in order to promote
himself displayed hoardings and posters, which were different from official hoardings
and poster of Mirchi Awards, 2013. The hoardings carried huge pictures of Mika
Singh along with smaller pictures of other artists, including but not limited to, Sonu
Nigam, without their consent and permission. The Court vide its Order, restrained the
Defendants from displaying the pictures of the Plaintiff without consent and ordered
the Defendant to pay INR 10 Lakhs as damages towards specified charities, as
consented by the parties.
4) Limits of Commercial Disparagement
The High Court of Delhi in the matter of GM Modular Switches v. Havells upheld the
principle “though a competitor can claim that its products are the best in the world
but he cannot say that his products are good and that of his competitors’ are bad”
and in line with the same ordered the Defendant to refrain from telecasting, displaying
and broadcasting its advertisement which was held to be deliberate and aimed at
reducing the sales of the Plaintiff.
5) Slogans/Taglines serve the purpose of trademark
The Delhi High Court in Procter & Gamble Manufacturing Co. Ltd. v. Anchor Health
& Beauty Care Pvt. Ltd. discussed descriptiveness of a trademark. The court held that
the tagline ALLROUND PROTECTION is not generally descriptive of toothpaste
and further explained that taglines/slogans are valid trademarks as they serve the
purpose of trademark by enabling consumers to identify the goods and services
provided by one from those provided by another. In the present case, the defendant
themselves had applied for registration for trademark protection of
“ALLROUNDER” and “ALL-AROUND PROTECTION” in USA. The court
applied the legal principle of approbate and reprogate and held that defendant
therefore cannot claim that the plaintiff‟s mark “ALLROUND” is descriptive.
16
6) Issue of trademark infringement/ passing off in the trade of alcoholic beverages
M/S Allied Blenders & Distillers Pvt. Ltd V. Shree Nath Heritage Liquor Pvt. Ltd.The case involved dispute between plaintiff‟s trademark Officer’s Choice and
defendant‟s trademark Collector’s Choice. In the said case, the Court observed that
the test of similarity / dissimilarity is to be applied in the light of the product / goods
or services in consideration and may be different for different category of products,
goods or services, depending not only upon the nature and character of the product,
its use by consumers but also the trade channels. Further the Court while arriving at
its decision analysed various factors like associated thinking of consumers, the
importance buyer‟s place on brand choice and finally held that prima facie the
customers / consumer’s memory is likely to mix "Officer" with "Collector" and
thus the possibility of trademark "Officer’s Choice" of the plaintiff being
remembered / recalled as "Collector’s Choice" cannot be ruled out.
7) Protection of common/ colloquial phrases
The Bombay High Court in the case of Techlegal Solutions Pvt. Ltd. v. Mrs. Genelia
Ritiesh Deshmukh & 7 Ors. stated the proposition that the mandate of intellectual
property rights should not unnecessarily extend to cover all uses of common/
colloquial phrases in use in India. The dispute in the said case involved Marathi term
Lai Bhaaari over which the plaintiff claimed monopoly despite the fact that the term
was not coined by it but a very well- known, old colloquial established in Marathi.
8) The issue of Meta- tagging
July 07, 2014- The Bombay High Court in the case of People Interactive (I) Pvt. Ltd.
v. Gaurav Jerry & Ors. dealt with the concept of meta- tagging and defined the same.
The dispute in the said case revolved around plaintiff‟s domain name shaadi.com and
defendants‟ domain name shaadihishaadi.com. The Court while ruling in favour of
the plaintiff explained the term meta- tagging and observed Meta- tags are a special
type of tag. They do not affect page display. Instead, they provide additional
information: the author of the webpage, the frequency of updation, a general
description of the contents, keywords, copyright notices and so on. They provide
structured data (actually, meta-data) about the web page in question. Meta tags are
always used in a web-pages „<head>...</head>‟ section, before the display section
that begins with the tag „<body>... ... </body>‟.
9) Substantial Pre-registration changes in trademarks not to be allowed
July 24, 2014- In June, 2012 the Indian Trademark Registry had notified that No
request for amendment shall be allowed which seeks substantial alteration in the
17
registration of trademark. The said order was challenged by Intellectual Property
Attorneys Association (IPPA). However, the Controller General of Patents Designs
and Trademark (CGPDTM) observed that as a common practice the provision of
making pre-registration alterations in a trademark was being misused by the
Applicants.
The CGPDTM in this regard made the following observation - substantial amendment
in the trademark, proprietor details, specification of goods/services (except deletion
of some of the existing items), statement as to the use of mark shall not be permitted,
however request for amendment in the proprietorship of the trademark on the basis of
valid assignment or transmission; amendment in address of the applicant or in the
applicant‟s address for service; deletion or confinement of any item in the
specification of goods/services,- confinement/limitation in the area of sale of
goods/rendering of service may be allowed.”
10) Supreme Court allows bonafide use of one’s own Family’s name
August 4, 2014- The Supreme Court has in the case of Precious Jewels & Anr. v.
Varun Gems discussed the application of Section 35 of the Trademark Act, 1999
which deals with the provision of Saving for use of name, address or description of
goods or services. The Apex Court in the said case held that Section 35 is a saving
clause which provides that nothing in this Act shall entitle the proprietor or a
registered user of a registered mark to interfere with any bona fide use by a person
of his own name, address or description of goods or services. Thus, the Court‟s
prima facie observation acknowledges the right of using one‟s own name or surname
as part of trademark.
11) Silence is not equivalent to acquiescence
September 10, 2014- The Bombay High Court in the case of Emcure Pharmaceuticals
Ltd. v. Corona Remedies Pvt. Ltd. dealt with Section 33 of the Trademarks Act, 1999
which provides for the Effect of Acquiescence. The Court while ruling in the case
elaborately dealt with Section 33 which provides that the proprietor of an earlier
trademark cannot contest the validity of registration of a subsequent trademark, if he
has acquiesced in the use of the subsequent trademark for a continuous period of five
years. However, the Bombay High Court in the present case ruled that mere delay
will not defeat the rights of the registered proprietor and observed that the
essential to the doctrine of acquiescence is that it is accompanied by encouragement
or inducement and that silence is not equivalent to acquiescence under Section 33.
18
C.
I
COPYRIGHTS:
Administrative developments
1) E-Filing of Copyright Applications – The system of electronic filing has been introduced
and electronic filings of Copyright Applications have begun.
2) Digitization of Data & Online Search Facility – The data relating to copyright
applications and registrations is now available online and open to public search.
II
Judicial developments – Important Case Laws
This year many important questions of law were raised before the Courts resulting in
landmark judgments that have shaped the interpretation of the Copyright Act, 1958.
Some of the notable decisions within the realm of Copyright law are as under.
1) Multi Screen Media Pvt Ltd vs. Sunit Singh & Ors - CS (OS) 1860/2014
In a significant case seeking John Doe orders and reliefs against as much as 473
identified websites, the plaintiff, Multi-Screen Media Pvt Ltd, having the sole and
exclusive right to the broadcast reproduction rights in the 2014 FIFA World Cup had
filed a suit for permanent injunction against the world at large, comprising of some
known persons and other unknown persons labeled as 'Ashok Kumar' (John Doe)
from hosting, streaming, broadcasting, rebroadcasting, retransmitting, exhibiting,
making available for viewing and downloading etc., the channels of the Plaintiff in
relation to the 2014 FIFA World Cup in any manner through different mediums or
does any other thing which infringes the Plaintiff‟s broadcast reproduction rights. The
Plaintiff had also filed 473 websites stating that they were infringing the exclusive
rights of the Plaintiff. An ex-parte injunction was granted by the Hon‟ble Court.
The said case is relevant as it was the first case in which the Court gave a direction to
the Department of Telecommunications and the Department of Electronics and
Information Technology to ensure and secure compliance of the said order by calling
upon the ISP‟s registered under it to block access to the various websites identified by
the Plaintiff.
One of the Defendant ISP, Bharti Airtel submitted that not all websites were rogue
websites and the Plaintiff amended the list to 219 rogue websites. The said Defendant
was directed to scrutinize the list and if any legitimate website was included in the list
the Plaintiff shall be informed of the same and barring such website all other websites
be injuncted. Accordingly, the said defendants blocked the 219 websites on its DNS
19
servers. The Plaintiff withdrew the suit stating that they would not want to press the
suit any further, as the FIFA World Cup 2014 had come to an end.
2) Institute for Inner Studies & Ors. vs Charlotte Anderson & Ors. [2014 (57) PTC
228 (Del)]
In an interesting case involving copyright on Pranic Healing Techniques, the Hon‟ble
Delhi High Court not only elaborately discussed the scope and ambit of Copyright
Law in relation to literary works describing useful arts but also laid down the
distinction between the realms of Copyright protection as opposed to Patent
protection.
The Plaintiffs filed this case praying for an injunction against the Defendants in order
to restrain the Defendants from carrying out activities of spreading Pranic Healing
teachings, techniques, practices and courses invented by the Master Choa Kok Sui
("Master") and organizing and continuing to organize workshops, training
programmes, seminars in relation to Pranic Healing without authorization from the
plaintiffs. The Plaintiffs inter alia claimed copyright in the Pranic Healing Techniques
on the basis of the following:
o
o
o
Their copyright titles in the books written by master, trade literature, CD Roms
etc.;
Claim of copyright in the material stated in the books; and
Copyright in the Pranic Healing techniques and exercises as the works of
choreography which finds place of protection under the head of dramatic works
under the law of copyright
The Court observed qua the question of copyright in the books, being a literary work
describing a useful art, that copyright shall only subsist over the manner of description
of the art principles or in the language employed by the author and not over the art
itself. The court held that the copyright is restricted to the language and arrangement
employed in the book. The court further held that the protection would not extend to
the performance of the useful art, in this case Asanas.
The Court clarified qua rights asserted by the Plaintiffs over the Asanas of Modern
Pranic Healing which was contended to be different from traditional Pranic Healing,
that such rights would only be available within the ambit of Patent laws and not
Copyright law. Copyright law cannot confer any monopoly in relation to the Asanas
per se.
The Court also held the argument regarding yoga not being patentable and therefore
rejection of claim of copyright would render the Plaintiffs remediless to be inherently
20
fallacious inasmuch as whatever is not patentable cannot be considered copyrightable
as a matter of necessary consequence.
Qua the protection of Asanas of Pranic Healing as „dramatic work‟ under the realm of
Copyright Law, the Court held that the same could not be brought within the
definition inasmuch as the Court observed that where there exists a reasonable doubt
as to complete certainty of the performance of the work in the manner conceived by
the author or writer, the work in such cases falls short of the requirement of fixation
or certainty of the performance and therefore cannot be called as dramatic work.
3) Tech Plus Media Private Limited v. Jyoti Nanda & Ors. [C.S.(OS) no. 119 of 2010]
The Hon‟ble Delhi High Court dismissed the suit by a company against one of its exemployee which claimed copyright infringement of its database of users holding that
the database was nothing but a collection of e-mail addresses and the plaintiff could
not said to have authored such database, having any contribution in the same.
Although databases are included within the definition of literary work under the
Copyright Act, the High court relied upon the landmark decision of the Supreme
Court in Eastern Book Company v. D.B. Modak where the Supreme Court while
rejecting the “sweat of the brow” doctrine, recognized the “modicum of creativity” to
be the more apt threshold and held that for a compilation of data to be protected by
copyright, it must be demonstrated not only that the creator exercised labour and
capital, but also skill and judgment such that it is not a mechanical exercise. The
Hon‟ble Court thus dismissed the suit holding the plaintiff “had not pleaded the
material propositions of fact essential to succeed in an action of infringement of
copyright”.
4) M/s. Jagdamba Impex vs M/s. Tristar Products Private Ltd. [2014 (59) PTC 149
(Del)]
Tristar Products Pvt. Ltd., the plaintiff in this case, was claiming copyright over the
drawings of a machine developed and manufactured by it that was used for cutting
hair combs inasmuch as the Plaintiffs were claiming copyright over the drawings of
the machine and no rights under the Designs Act, 2000 were claimed. The Plaintiff
alleged that the Defendant has infringed its copyright by manufacturing and
marketing a machine with the identical shape, measurement and artistic features. An
interlocutory injunction was granted to the Plaintiff in this regard by the lower court.
The Court observed that more than 50 articles viz., combs, had been produced by
Tristar Products by the application of the drawing/design in which copyright was
21
claimed. Consequently, the Court held that no copyright can be claimed by virtue of
Section 15(2) of the Copyright Act.
It was argued that the entitlement of the Trsitar Products is to produce three
dimensional or two dimensional articles by use of the designs/drawings because of the
right of the respondent/plaintiff in the machine and the drawings/designs from which
the machine is made and that Tristar Products is not barred under Section 15 of the
Copyright Act. It was argued that the right under Section 14(2) which deals with an
entitlement of a person who is the owner of the copyright because of
existence/continuation of existence, can continue to exist in spite of Section 15.
The Court rejected the aforesaid contention of Tristar and observed that the lower
court passed the order of interim injunction without considering the provision of
Section 15(2) and consequently the impugned judgment was held to be contrary to
law and therefore set aside. This case clearly lays down that Section 14 does not have
overriding effect over Section 15(2) of the Copyright Act. Therefore, even though the
Copyright Act provides confers on the owner of copyright in n „artistic work‟ the right
to depict the same in two and three dimensions, if the artistic work comes within the
definition of „design‟ and has been produced over 50 times, the copyright comes
within the mischief of Section 15(2) and can no longer be enforced.
5) Ramesh Sippy vs Shaan Ranjeet Uttamsingh and Ors. [MIPR 2014 (1) 32]
The appellant i.e. Ramesh Sippy, claimed to be the “author” and “first owner of
copyright” in the cinematograph film „Sholay‟ and thereby entitled to “author‟s
special rights”. The Appellant claimed to be the individual solely responsible for the
making of the film Sholay save and except for financing.
The Court observed that the Appellant retired from Sippy Films a few months prior to
the release of the film Sholay in 1975. Further, that the appellant is shown only as the
director of the film in the credits and Sippy Films as it‟s producer. The Appellant
contended that although Sippy Films may have provided the finance for the film, he
alone took initiative and responsibility for the film and authored it and thereby was
the owner of copyright in the film Sholay.
The Appellant prayer was to restrain the Respondents from releasing a 3D version of
the film inasmuch as the argument advanced by the Appellant was that in
consideration of the financing, he had only entrusted to the Sippy Films (partnership
firm), the distribution and exhibition rights i.e. the exclusive rights to cause the said
film Sholay to be communicated to the public and for that purpose entrusted in
confidence the negatives thereof to the said firm to make copies of the said film
Sholay only in normal 2D format only and not in any other format. Accordingly, the
22
afore-stated limited rights in the said film Sholay within the meaning of Section 14 of
the Act were entrusted to the said firm (since dissolved).
The Respondents on the other hand, contended that it was not the Appellant but his
father, G.P. Sippy who was responsible for the making of the film Sholay.
The Court observed that the Appellants conduct post the release of the film would be
crucial to deciding the present case. The Court observed that the Appellant was aware
of a 3D version of the file prior to filing the suit and had no objection to the same at
that point. The Court further observed that in the past 4 decades since the film‟s
release, the Appellant had not defended his rights while others asserted the very rights
the Appellant now contends. Moreover, the Court agreed with the decision of the
Single Judge that the authorship of a work comes into existence only when the work
is complete. The film Sholay was completed only post the retirement of the appellant
from the partnership firm. Therefore, the Court held that the appellant could not make
out a prima facie case of copyright infringement in the instant case.
The Court in this case has laid down that authorship of a work only comes into
existence upon completion of the work and that conduct of the party is relevant and
necessary to consider when copyright is asserted after a long period of time of the
work being created and released.
6) Paragon Rubber Industries vs Pragati Rubber Mills and Ors. [2014 (57) PTC 1
(SC)]
The issue involved in this suit was whether in a composite suit would be maintainable
wherein the Court has jurisdiction to grant relief prayed for under the Copyright Act,
1957 but not for the relief prayed for under Trade & Merchandise Act, 1958. The
Plaintiff in the case had filed a composite suit under 1957 Act and 1958 Act, however
although the Court had jurisdiction under The Copyright Act, 1957 inasmuch as the
Plaintiff carried on business within the jurisdiction of the Court, the Court lacked
jurisdiction under the Copyright Act, 1958 inasmuch as neither were the Defendants
goods available within the jurisdiction of the Court, nor did the Defendants carry on
business and reside within the jurisdiction of the Court.
The Supreme Court of India held that such a suit would not be maintainable unless the
court has jurisdiction to entertain the suit in relation to the entire cause of action and
the entire relief. This case settled the law relating to jurisdiction in the case of
composite suits.
23
7) Tekla Corporation & Anr vs Survo Ghosh & Anr [C.S. (OS) no. 2414 of 2011]
In this case, the Hon‟ble Delhi High Court refused to recognize a defense of
“copyright misuse” holding that Section 52 of the Copyright Act provides exhaustive
list of defenses to copyright infringement and nothing outside Section 52 could
constitute a valid defense.
In the present case, the plaintiff claimed copyright in a software programme and
alleged that the defendant had installed software without the authorization of the
plaintiff. The defendant on the other hand alleged that their actions did not constitute
infringement as the terms of the copyright license such as bundled maintenance
service agreements and training fee, exorbitant penalties, etc constituted Misuse of
Copyright by the plaintiffs. The court however rejected to recognize this as a defense
and held that this would “tantamount to allowing a person to unilaterally decide that
the owner has lost the copyright for the reason of misuse thereof and to thereby usurp
the rights otherwise exclusively vested in the owner” .
8) Pepsico Inc. v. PSI Ganesh Marketing & Another [C.S. (OS) no. 157 of 2013]
In this case, involving infringement of Copyrights in the artistic label AQUAFINA of
the plaintiff, the Hon‟ble Delhi High Court awarded punitive damages of about US$
8000 against the Defendant, who chose to remain ex-parte. The Hon‟ble Court noted
the concern as to piracy in the country and observed that these damages would “make
up for the loss suffered by the plaintiff and deter a wrong doer and like-minded from
indulging in such unlawful activities”. Similar orders as to punitive damages were
passed in Atlantic Industries & Ors vs Simron Food Processors (P) Ltd [C.S.(OS)
no. 2185 of 2011] a suit involving copyright infringement of the Schweppes label
9) King.com Limited v. Appeejay Surrendra Park Hotels Limited [Suit no. 576 of
2014]
In a suit for copyright infringement involving the popular logo of the “Candy Crush
Saga” game, the Hon‟ble Bombay High Court granted an order of injunction
restraining the defendant from using the images of “Candy Crush” in relation to its
online advertisements for a live music gig.
III
Legislative developments
There were no legislative developments this year.
24
D.
DESIGNS:
According to the Annual Report, 2012-13 issued by the Indian Patents & Designs Office, the
number of design applications filed during the year 2012-13 were 8337. The applicants from
India filed 5428 applications while the remaining 2909 applications originated from abroad.
In the case of applications originating from abroad, U.S.A. lead with the maximum number of
applications (886) followed by Germany (554), Japan (544), Switzerland (193) etc.
Out of the total 9800 applications including the 1463 backlog applications, 6776 applications
were examined during the reporting year 2012-13. 45 applications were not registered on
grounds of abandonment and 3 applications were refused under the Designs Act and the
Rules. The number of designs registered during the year was 7252. Out of the total registered
designs, 4662 applications originated from India and the remaining 2590 originated from
abroad.
I
The trends of last five years are given below.
Trend in Design Applications:
Year
Filed
Examined
2008-09
6557
6446
2009-10
6092
6266
2010-11
7589
6277
25
2011-12
8373
6511
2012-13
8337
6776
Registered 4772
6025
9206
6705
7300
There have been no significant changes in the legislature as of now as compared to last year
with respect to Indian Designs Act, 2000 or the Designs Rules, 2001 since the APAA Council
meeting in 62nd APAA Council meeting at Hanoi, Vietnam.
However, following are some of the recent judgments delivered by courts after the previous
year judgments wherein provisions of Design Act, 2000 have been interpreted.
26
II
1)
Important Case Laws
Whirlpool of India Ltd. v. Videocon Industries Ltd. (Bombay High Court, NOTICE
OF MOTION NO. 2269 OF 2012 in Suit no. 2012 OF 2012)
The main issues of the case were:
i) A suit for infringement of design is maintainable against a registered proprietor of a
design.
The court held that a suit for infringement under Section 22 lies against any person including
a subsequent registered proprietor.
ii) Functionality
The Court held that for a defense of functionality to succeed, it was not sufficient that the
form had some relevance to the function. For the defense to succeed, the design must be
the only mode or option which was possible considering the functional requirements of the
product in question. Therefore, the Court held that the external shape of the Plaintiff‟s
washing machine had no bearing on the functionality of its product and disallowed this
defense of the Defendant.
iii) Lack of novelty
The Court dismissed this defense of lack of novelty as raised by the Defendant for the
following two reasons:
The first reason given by the Court was that the factum of novelty and originality in the
Plaintiff‟s design was established by the fact that the Defendant who is in the field of
manufacturing washing machines for the last many decades had not manufactured a model
with a design similar to the Plaintiff‟s.
The second reason was that as the Defendant itself had registered a design identical to the
Plaintiff‟s, it cannot now contend that the Plaintiff‟s design is not novel or original.
iv) Two registrations on the same day for plaintiff‟s design
The Defendant took the defense based on the argument that “if the minor differences between
the two designs of the Plaintiff were such that the latter can be regarded as a novel and/or
original one, then a fortiori and/ or by logical deduction, the Defendant‟s product, which
contains far greater differences from the Plaintiff‟s designs inter se, must also be regarded as
containing sufficient novelty and/ or originality for the same not to be regarded as
constituting infringement and/or piracy."
While considering this argument of the Defendant, the Court considered the scheme of
Section 6, Designs Act, particularly Sections 6(3) and 6(4) of the Act. The Court held that
27
Section 6 manifests a legislative scheme whereby when the registered proprietor and fresh
applicant for registration are the same, registration can be granted of either the same design in
relation to other articles in the same class or with minor modifications to the same article or
other articles in the same class. Hence, the Court did not accept this argument of the
Defendant as well.
v) Issue of Passing Off:
On the issue whether the Defendant‟s product amount to a misrepresentation to the extent that
potential consumers mistook the Defendant‟s product for the Plaintiff‟s product The Court stated that the product in question was semi-automatic washing machines which
are at the bottom end of the spectrum of washing machines and are purchased by “persons
who are not as educated/ discerning as persons purchasing top end washing machines. ….
The class of purchasers of such machines will not necessarily be educated persons in the
cities but also include semi-literate or persons who are not literate in villages and/ or rural
areas.”
The court further stated: The Court states: "A potential customer for such a washing machine
will also include persons who had visited houses of others and have seen or heard reports
about the Plaintiff‟s products. These persons will more often than not only have had a fleeting
glimpse or distinct (distant?) view of the Plaintiff‟s product in another household but may
have received very positive reports about the machine from the purchaser thereof without
naming the brand.
Such persons may have also seen Plaintiff‟s machine figure in advertisements or photographs
and with the passage of time may have a fleeting recollection thereof, which are largely
based on its distinctive shape and appearance. If such a person were to come across the
Defendant‟s washing machine, such a person would immediately believe that this is exactly
the machine he or she saw either at the residence of somebody else or in the photographs or
advertisements seen earlier. In such circumstances, such person would immediately
assume that the Defendant‟s products were what he or she had seen and/or heard so highly
spoken about. Such a person would purchase the Defendant‟s product on the belief that it was
the Plaintiff‟s product or was associated with the Plaintiff. This clearly constitutes passing
off.”
2) Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir and Ors., High Court of Delhi,
February 24, 2014
In this case, the court vacated an ex-parte interim injunction granted in favour of helmet
makers Steelbird. The court held that the registered design on the basis of which Steelbird
had initiated infringement proceedings against defendant was not “new or original”.
28
In this case, the court laid down a test for novelty and originality. Citing Simmons v.
Mathieson & Cold (1911) 28 R.P.C. 486 "In order to render valid the registration of
………. there must be novelty and originality, it must be a new or original design. To my
mind, that means that there must be a mental conception expressed in a physical form which
has not existed before, but has originated in the constructive brain of its proprietor and that
must not be in a trivial or infinitesimal degree, but in some substantial degree”.
Citing Phillips v. Barbro Rubber Company (1920) 37 R.P.C. 233 “while question of the
meaning of design and of the fact of its infringement are matters to be judged by the eye, it is
necessary with regard to the question of infringement, and still more with regard to the
question of novelty or originality, that the eye should be that of an instructed person, i.e. that
he should know what was common trade knowledge and usage in the class of articles to
which the design applies. The introduction of ordinary trade variants into an old design
cannot make it new or original.”
Drawing a distinction between 'new' and 'original' the court cited Buckley L.J. said in Dover
Ltd. vs. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (27 R.P.C. 498) that 'new' is
referred to a case where the shape or pattern was wholly new in itself and on the other hand
'original' to the case where it was old but new in its application to the particular subject
matter.
Using these two tests and observing that there was evidence placed before it that
demonstrated that other manufacturers had conceived of this design before the plaintiffs and
therefore it lacked novelty. Originality is clearly not present as the subject matter of the
competitors‟ products was the same i.e. helmets. The court also observed that the “beak
shaped design” is a common practice in the industry and therefore not original to the
plaintiffs. On these grounds the court vacated the injunction.
3) Standard Corporation India Ltd. v. Tractors and Farm Equipment Ltd, Madras High
Court O.S.A.No.107 of 2013 Date of Decision April 4, 2014
In the original suit from which appeal arose, the respondent (plaintiff in the original civil
suit) had contended that the appellant was blindly imitating the tractors manufactured by it,
thereby infringing on their copyright in the artistic work in the drawing for its tractors. The
appellant had filed an application praying for the dismissal of the civil suit on the grounds
that it was not maintainable under Section 15(2), Copyright Act. The appellant contended that
under Section 15(2), the copyright in any work capable of being registered as a design and
but had not been registered, would cease as soon as any article to which it applies has been
reproduced more than 50 times. In this case, the drawings in which the copyright was claimed
had been used more than 100 times prior to the filing of this suit. In this regard, the appellant
cited the case of MICROFIBRES INC. Vs. GIRDHAR & CO., (2009 (40) PTC 519 (Del.)
(DB) which had clarified the law on Section 15(2), Copyright Act.
29
The respondent, on the other hand, while agreeing with the ruling in Microfibres argued that
it was inapplicable in the instant case as the drawings could not be registered as a design.
They argued that there was no doubt that “a design, which is functional in nature and has
certain functional features” could not be registered as a design. Section 2(d), Designs Act,
2000 also specifically excludes any artistic work as defined in S.2(c), Copyright Act from
being registered as a design.
The Division Bench ruled that the appellant had not shown sufficient cause or reason to
interfere with the findings of the learned single judge that the suit could not be dismissed as it
was not barred by law and as there were triable issues existing for the consideration of the
Court. The Division Bench stated ”A right existing in a person or an entity to seek certain
reliefs before a Court of law, when disputes had arisen, cannot be curbed, at the outset,
without having proper reasons to do so. As there are triable issues, which are to be decided
in the civil suit, in C.S.No.602 of 2007, we are of the considered view that the present
original side appeal is liable to fail.” The Division Bench dismissed the appeal.
E.
GEOGRAPHICAL INDICATIONS
I
Important case law
1)
Settlement recorded before High Court in the Champagne dispute
Comité Interprofessionnel du Vin de Champagne (CIVC) a body in charge of the administration
and protection of the rights in the geographical indication CHAMPAGNE for and on behalf of the
numerous Champagne wine producers which are its members, had received an interim injunction
from the Delhi Court in 2012 restraining a Californian company, F. Korbel & Bros, Brown
Foreman Worldwide LLC and its Indian distributor from using the expressions, “California
CHAMPAGNE” and “Russian River Valley CHAMPAGNE”, on wines produced in
California.
A settlement arrived at by the parties was recently recorded by the Delhi High Court. CIVC
is. Its powers and duties include the responsibility to enforce its statutory rights against any
unauthorized use of CHAMPAGNE on wines that do not originate from the Champagne
region in France.
The highlights of the settlement are as follows:

The defendants agreed not to use any label or packaging that includes the name
„Champagne‟ or its deceptive variations or the expression „Methode Champenoise‟
to export, import, sell or distribute any alcoholic spirits or beverages in India or
other countries where Champagne is protected as a geographical indication through
registration, legislation or agreements.
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
In addition, as and when Champagne is protected in any other country through
registration, legislation or agreements, CIVC may intimate the defendants in writing
and the defendants will extend the terms of the settlement agreement to those
countries as well. There are nearly 80 countries that are currently listed in a
schedule to the settlement where this agreement will take effect.

The settlement assumes significance in that CIVC has managed to stop the
defendant from wrongly using the name „Champagne‟ in 80 countries through a
single agreement which also has the potential for a gradual wipe out of such
unauthorized use by the defendants globally.
CONCLUSION:
I conclude that the above report is a mere collection of major highlights of a very interesting
year for IP in India. We can say that IP in India is not only developing into an interesting
area, India is taking major strides to build an effective IP environment in the country.
I also wish to extend my heartfelt thanks to the individual committees whose inputs were
used to prepare this Country Report.
D. Calab Gabriel (Mr.)
Secretary
APAA (Indian Group)
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