We are all aware that a document, falling within the description in Schedule I of the Maharashtra Stamp Act,(the “Act”) and which is executed within the State of Maharashtra, is liable to be stamped at the rates stipulated in the said Schedule.

According to the World Intellectual Property Organisation, “any confidential business information which provides an enterprise a competitive edge (emphasis added) may be considered a trade secret. This could include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes.”

Counterfeit products, in the trademark sense, are produced with the intention of taking advantage of the popularity of a brand and the superior value of the goods and services associated with that brand....

The term logo is derived from Greek as an abbreviation of the term “logo type”, meaning a “word and an imprint”...

In the second week of September 2014, two different Appellate Benches of the Delhi High Court pronounced judgements in two pharmaceutical trademark cases.

Use is a fundamental concept in trademark jurisprudence. Registration of a trademark is a voluntary act on the part of a trademark owner in the sense...

On the 15th of July 2014, quietly and without much fanfare, the Bombay High Court passed judgment on the writ petition filed by Bayer Corporation in the celebrated compulsory license case between them and Natco...

The Indian patent system has the unique distinction of having an elaborate system in place to ensure that a patent is not wrongly granted for a “questionable” invention...

In a recent decision the United States Supreme Court held that Aereo infringed the public performance right included in the copyright of broadcaster’s on-air programming by....

In what appears to be a classic case of trademark trolling and is a surprising development......

Freedom of speech and expression, subject to reasonable restrictions imposed by the State is a fundamental right guaranteed under Constitution of India...

Section 17 of the Indian Patents Act provides for postdating of patent applications....

In Tekla Corporation & Anr. vs. Survo Ghosh & Anr decided by the Delhi High Court recently, the Court was required to consider the Doctrine of Copyright Misuse (“the doctrine” ) as evolved in the US courts....

Many inventions, particularly those that relate to biological material include such material which is not available to the public...

Fluid- the work suggests movement. Fluid Trademarks stand true to their name.

Jinchun Ji sought trademark registration for “雪佛龙” (“Chevron” in Chinese version) before the Chinese Trademark Office (TMO) in respect of goods falling in Class 12 viz. automobiles and motor cycles. Chevron Intellectual Property LLC (a subsidiary of Chevron Corporation) opposed the application on the grounds that the impugned mark was similar to its mark and which was otherwise registered in respect of the goods petroleum oil (crude oil or refined oil), industrial oil.

Creating a successful brand in the marketplace requires a lot of work and is an extremely expensive exercise. But, once a brand is established the obvious question is ‘what next’? A common strategy adopted by large corporations is to introduce a ‘Flanker Brand’.

In Anchor Health and Beauty Care Private Ltd vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd & Ors. the Delhi High Court decided a case involving the expression “ ALLROUND” for toothpaste.

Online visibility has become indispensible for a successful business. Domain names are offered for sale on a ‘first come, first served’ basis with very little information required from the registrant....

The principle of conditional grants to proprietary rights in any intellectual property is to promote public interest...

Astroturfing

13 June 2014

Astroturfing is a term derived for artificial grass. It is a practice of providing a designed support for a sponsor which conveys an impression that it originates from a disinterested party....

Infringers of patents in India have several weapons available to them in their arsenal...

Unlike most other jurisdictions, in India no document is valid legally, unless it is stamped under the appropriate Indian Stamp Act.....

In Enterprise Holdings, Inc. v. Enterprise Auto Rentals, Justice Manmohan Singh of the High Court of Delhi delivered a judgment in favor of the plaintiff against an entity using the trade name Enterprise Auto Rentals and the trademarks ENTERPRISE and ENTERPRIZE.

Recently, the High Court of Delhi settled the issue of whether merely lodging an application for the registration of a trademark by the defendant gives the plaintiff jurisdiction to file and succeed in an action for trademark infringement. Analco (India) Pvt. Ltd. v. Navodya Exim Pvt. Ltd., CS (OS) No. 1764/2009 (Del. Jan. 23, 2014).

Design litigation is on the rise in India. Steelbird Hi-Tech India Ltd. (SBHT), a manufacturer of helmets, registered a design...

Last December, the divisional bench of the Delhi High Court rendered a decision...

Galderma, a Swiss pharmaceutical company majoring in dermatological preparations...

R. K. Dewan & Co (RKD) represents ‘KamaSutra’, India’s second largest...

On 28th February, 2014, the Indian Patent Office published and implemented a new set of rules which came into effect immediately. Under these rules, a new Applicant Entity referred to as a “Small Entity” has been created. There are now therefore three different Applicants and different sets of fees will apply to each of these Applicants.

Criminal remedies are very effective and create the strongest deterrence in the market but are often less opted for as proposed remedies to combat piracy. A brief snapshot of the criminal remedies is as under...

Biotechnology may be defined as the combined use of science and technology to exploit biological processes. Biotechnology contributes to advancement in the life sciences and offers tremendous scope for improving human health and furthering a nation’s economic development.Many biotechnology inventions involve sequencing genes, systems to selectively express...

In continuing R K Dewan & Co.’s tirade against the usurpation of reputed Indian brands in China by local infringing companies, our client HEM Corporation (HEM), a reputed Indian incense stick manufacturing company, successfully challenged a Chinese trademark registration obtained by a local company, Chengdu Heaven Art Commerce & Trade Co. Ltd (Chengdu Heaven Art) at the China Trademark Review and Adjudication Board (TRAB).

“BRAND BULLY”

28 February 2014

Recently, Facebook was accused of being a ‘brand bully’ by a Nashville-based pet-themed social network called Facepets.com.....

The inventor is the principal actor in the patent prosecution drama. Section 7 of the Indian Patents Act prescribes that where the application is made by virtue of an assignment of the right to apply for a patent for an invention....

In a recent case, Neo Foods Pvt. Ltd vs. Neo Milk Products Pvt. Ltd, the Delhi High Court had to decide on the issue of whether the products, milk and pickles, can be considered to be similar.....

Oodles of Noodles

6 February 2014

In a recent case, Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd, the Delhi High Court decided a case of passing-off based on the principles of common law...

The REAL case

6 February 2014

In the case of Dabur India Ltd vs. Real Drinks Pvt. Ltd, the High Court of Delhi was required to decide on the issues of passing-off, infringement, jurisdiction and maintainability of a suit where the Plaintiff and the Defendant were both registered proprietors of trademarks containing the word “REAL”...

Granting a major victory and relief at the same time to our client, the Indian tools manufacturing company, TAPARIA TOOLS LIMITED, the China Trademark Review and Adjudication Board (TRAB) in a recent decision reversed the China Trademark Office’s decision in an opposition case filed by TAPARIA against a local Chinese Company QINGDAO XINLIAN TOOLS CO. LTD....

Introduced in 1990, the World Wide Web has experienced enormous growth and popularity. In spite of several other useful features, connectivity to Web pages with the click of a button remains the most prominent feature offered by the Web. This connectivity between Web pages can be achieved by linking and framing.

Well-known Trademarks

10 January 2014

In a recent case, R K Dewan & Co was successful in obtaining an order of permanent injunction for Lavasa Corporation...

The Registrar of Trademarks published on 29th November 2013 an exhaustive alphabetical list of goods and services..

Once seen only on sailors and convicts, tattoos have found their way into mainstream society and are here to stay. There has been a considerable rise in the number of people who are seen sporting tattoos with themes that range from devotion to a particular rock band to the memory of a deceased loved one.

The Right to Invalidate

30 November 2013

In the event of infringement of a trademark, there are various strategies which are adopted by the trademark owner and by the infringer. The aim of the trademark...

Looking to the backlog of matters pending for post registration changes, the Indian Trademark Registry has taken an initiative to start a special drive during the months of December 2013 and January 2014, for the disposal of rerecord of post registration changes requests.

IPO bags the ISA tag

18 November 2013

An agreement between the World Intellectual Property Organization (WIPO) and the Indian Patent Office (IPO), hereinafter referred to as ‘the Agreement’, recently came into force, whereby the IPO commenced working as an International Searching Authority (ISA) and an International Preliminary Examination Authority (IPEA), under the Patent Co-operation Treaty (PCT). The IPO now joins ranks with the likes of the Australian Patent Office, the Canadian Patent Office, the European Patent Office (EPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United

Forum Choices

12 November 2013

“Forum shopping” is the informal name given to the practice adopted by some litigants to have their legal case heard in the Court thought most likely to provide a favourable judgment.

It is a common belief that IP litigation in India can be lengthy and expensive. However, with proper handling and selection of an appropriate forum, this belief can be rendered moot.

Trademark licensing is an effective way of commercializing trademarks. A person licensing (the “Licensor”) the trademark allows another party (the “Licensee”) to use the trademark in a particular manner within a specified territory and for a stipulated period of time.

The Ms. P. Sita Saga

24 October 2013

Inventive step is defined in Section 2(1)(ja) of the Indian Patents Act, 1970 (the Act) as ‘a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art’. The term ‘person skilled in the art,’ a vital ingredient of this section, has surfaced time and again in many judgments and has attracted extensive debate amongst legal practitioners and scholars alike, as to who the person skilled in the art actually should be. The Intellectual Property A

The manner in which information is shared with friends and colleagues has changed drastically since the outbreak of mobile technology. These days, almost every mobile user uses multiple mobile applications associated with social media services, social networking, social gaming and the like. The growing popularity of such mobile applications comes with important legal issues as this industry is highly prone to intellectual property rights (IPR) infringement.

The IPAB by its order dated 26th August, 2013, stunned the IP fraternity at large by holding that the trademarks Mex and Kamax are deceptively similar.

Cizer v. Lizer

22 October 2013

A trade mark may be refused registration for a number of reasons including the fact that the trade mark is devoid of distinctive character or if it is of such nature as to deceive members of the public. On these grounds the owner of the trademark ‘Cizer’ recently succeeded in having the trademark ‘Lizer’ removed from the Register of Trademarks.

Good, better…. best

22 October 2013

Consumers these days get lost in a sea of products to choose from in each category. It would be ideal if the consumer could purchase the best product without having to expend time and effort on research.

The IP arena saw a victory of right over wrong with the ones in the right getting asked for damages. India is not known as a jurisdiction where huge damages are awarded often.

What if you manufactured toys and Santa Claus who was merely supposed to give your toys to kids stole your trademark and started to claim it as his own?

Colour As a Trademark

7 September 2013

More than in any other jurisdiction, in India, colour and colour schemes play a crucial role in distinguishing a product or a service. This is primarily because although a large segment of the Indian population is not conversant with the English alphabet; many brands are usually in the Roman Script.

Shades of Grey

7 September 2013

INTA recently filed an ‘amicus curie’ brief in an appeal pending before the Supreme Court of India, expressing its view on the question of Parallel Imports and Exhaustion of rights. Though not a party to the suit, INTA has filed this brief as a ‘friend of the Court’ in order to influence the decision by providing a global perspective to the question of parallel imports.

The recent decisions of the Intellectual Property Appellate Board (“IPAB”) have, to a certain extent, clarified the status of descriptive/laudatory trademarks in the Indian context.

The Intellectual Property Appellate Board on 31st July, 2013 passed an order which is the first of its kind. Both the parties succeeded and failed at the same time. Surprised? In cross petitions between HAB Pharmaceuticals & Research Limited (HAB) and VEE EXCEL DRUGS & Pharmaceuticals Pvt. Ltd (Vee Excel), the IPAB passed orders for removal of both the impugned registered marks VEGAH & VEGA ASIA from the Register of Trademarks, albeit for different reasons.

The Intellectual Property Appellate Board yet again chastised the Indian Trademark Registry in its Order dated 12th July, 2013 for irregular procedure. The IPAB by way of two orders of the same date has laid down the general principles governing the registrability of a mark, which is identical to an existing registered trademark.

The patent system was designed with a view to promote innovation, by granting exclusive monopoly rights to the patent holder for a limited period of time. These rights are granted not for using the invention, but for preventing others from using it without the patent owner’s consent. An erroneously granted patent, however, would prejudice the rights of the public to freely use that technology. Therefore, it is essential to provide a mechanism whereby only good quality patents are granted.

The Indian Patent Office has issued a set of guidelines for the examination of patent applications in the field of CRIs (Computer Related Inventions) so as to bring about uniformity and consistency in the examination of computer related inventions.

Inconsistency in the arguments put forth by patent applicants and their attorneys and the subsequent prejudice to their intellectual property (IP) portfolio, is not a new occurrence in the IP sector. A recent decision on a patent application of a pharmaceutical giant has led to the resurfacing of this unfortunate issue that has urged people, time and again, to practice by the maxim, ‘Don’t raise your voice, improve your argument’.

Blogging, which first took off in the latter half of the 1990s, has since been used as a unique platform for people to share their thoughts, feelings, experiences and opinions.

The Intellectual Property Appellate Board (IPAB) on 5th July 2013, dismissed Monsanto Technology’s appeal regarding the invention titled, ‘A method of producing a transgenic plant with increased heat tolerance, salt tolerance, or drug tolerance’ thereby upholding the Controller’s decision to refuse the patent application.

The Delhi High Court recently decided an interesting case relating to comparative advertising. The case was instituted by Reckitt Benkciser (India) Ltd. (the owners of the brand “DETTOL”) against Hindustan Unilever Ltd. (the owners of the brand “VIM”). Reckitt Benkciser (India) Ltd. (‘RBL’) sued Hindustan Unilever Ltd. (‘HUL’) for commercial disparagement and sought interim injunction against HUL restraining HUL from publishing advertisements disparaging the ‘DETTOL HEALTHY KITCHEN’ trademark. The Delhi High Court found in favour of RBL and granted an order against HUL.

RKD laid the trail for suits against disparagement of trademarks in films, when we successfully represented Godrej Sara Lee Ltd, getting a permanent injunction and damages worth INR 500,000 against Super Good Films, who had shown Godrej Sara Lee’s insect repellent “Hit” in a bad light in one of their films.

The Trade Marks (Amendment) Bill was passed by the Parliament and assented to by the President on 21stSeptember 2010. The Trade Marks (Amendment) Rules, 2013 have been made to give effect to the Trade Mark (Amendment) Act 2010.By notification dated 8th July 2013, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force to enable India to accede to the Madrid Protocol.

In a recent order of the Bench of the Intellectual Property Appellate Board, the Bench held that the Board had the power to review its own orders. In the opinion of the Board, there are six points in favor of reviewing an order passed earlier by the IPAB.

The Indian Patent Office issued a notification on June 12, 2013 regarding the release of the Draft Patent (Amendment) Rules, 2013 with a view to further amending the Patent Rules 2003. The primary aim, as is evident on the face of the draft, is to increase the fees associated with various procedures under the Patents Act, 1970.

Provisions for third party observations are well established in certain jurisdictions like the UK Intellectual Property Office and the European Patent Office (EPO). From September 2012, the America Invents Act also introduced provisions for third-party submissions on US patent applications. These provisions are based on similar concepts as the pre-grant oppositions in several countries like India, New Zealand, Australia, Peru etc., of assisting the patent office in determining the patentability of the invention before the grant of the patent and to increase the validity and quality of the gran

A patent is an instrument of commerce. The value of the patent depends upon its specification and therefore, it is extremely important that the specification should be drafted with accuracy and clarity. Writing a good specification involves a great deal of time, effort and money, but if the specification is poorly drafted, even more time, effort and money may be spent in defending the claims. Carefully drafted claims can secure a company’s financial future or spell a company’s ruin.

Sugen/Pfizer lost their patent rights relating to Sunitinib, a drug for treating renal cell carcinoma (RCC) and imatinib-resistant gastrointestinal stromal tumor (GIST) on account of weak and unplanned strategic Intellectual Property Management. They failed to understand the ground realities about the Patent System in India whichled to a complete letdown in forecasting the potential threats.Though the Assistant Controller accepted the novelty of the subject matter disclosed in IN209251, the patent was revoked on the grounds of lack ofinventive step based on the teachings of threeprior art pate

On the 1st of April 2013, the Indian Supreme Court pronounced its judgment in the Special Leave Petition preferred by Novartis to determine the true import of Section 3(d) of the Patents Act 1970 as a result of the rejection of the product claims by the Controller of Patents and the Intellectual Property Appellate Board (IPAB).

In the last decade, there has been a shift in the perception and coverage of the term trademarks. Having always been seen as words or pictorial symbols, trademarks have now evolved beyond this purview to include specific shapes and packaging techniques (3D trademark), sounds (aural trademark), specific color combinations, holograms and even smell (olfactory trademark).

In 2002, the foreign filing license requirement was introduced in the Indian Patents Act of 1970. This requirement provided that any inventor who is a resident of India should file or cause to be filed a patent application for his/her own invention first in India; and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India.

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol.

With the advent of the information age, software is increasingly being created and used to implement most forms of technology. However, it is seen that the Intellectual Property Laws such as those relating to patents and copyright, which are creatures of the pre-information age, have been slow to adapt toinclude protection of software within their ambits.

Along with every patent application filed at the Indian Patent Office, the applicant is required to give...

Absolute ground for refusal of Trade Mark...

The advent of rapid technological growth and a manifold increase in the number of suppliers who make products and services available to consumers coupled with rising costs of such products and services has led to the birth of an alternate industry involved in bringing fake, illegal and counterfeit goods to the market.

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol. This accession will take effect from the 8th of July 2013. On or after that date, trademark owners outside India can designate India as part of an international application under the Protocol.

Classification goods and services into different classes for the purpose registration of trademarks enables systematic storage and retrieval of information.

In this article, we have collected terms commonly found in computer security jargon that seem to be incomprehensible and have tried to explain them in easy to understand language so that they do not seem well incomprehensible!

This article provides an overview of the 'Madrid System for International Registration of Marks' which allows individuals and corporate houses to register and protect their marks in a number of countries.

This article discusses the issues involved in the role and status of a technical member in the overall constitution of the Intellectual Property Appellate Board (IPAB).

Weights and Commodities

27 September 2007

A brief introductory overview of “The Standards of Weights and Measures (Packaged Commodities) Rules 1977” along with guidelines and precautions for stakeholders.

An introduction to the Indian Intellectual Property Appellate Board and a briefer on its jurisdiction and procedures...

Having complied with the TRIPS regime in satisfying the minimum standards of Intellectual Property protection, India is now looking at ways and means to ensure a foolproof enforcement mechanism.

An analysis of the real issues involved in the controversial case of the Basmati Rice Patents from various perspectives: commercial, legal and general. Point-to-point explanation of widely held misconceptions arising from limited awareness.

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