R. K. Dewan & Co. : IPR Blog

It is not that India lacks inventors/ innovators or that these inventors are not coming up with commercially viable inventions/ innovations. The truth of the matter is that, either our inventors are un aware that their inventions are eligible for protection under the patent law OR if they are aware of the patent law they do not trust it enough to disclose their inventions by filing patents. A great many inventors are disillusioned by the ‘protection’ that our patent regime offers.

Their mistrust is not unfounded; the time, effort, intelligence and perseverance in coming up with an invention is phenomenal and the regime which aims to protect only succeeds in making their invention public, bleed them dry with increasing legal costs for having a patent registered and in the end the inventor gets no benefits in terms of recognition or commercial gains.

Following are the short comings in the Indian Patent regime that are responsible for the decline of Indigenous patents in India:

1. 1. Prima Facie Validity of Patents not recognized by Courts:

The Courts in India do not consider a granted patent to be prima facie evidence of proof of validity even after the stringent examination it is put to before its grant. The Patents Act has a section which states that the patent Certificate is accepted as prima facie evidence of proof of validity of the patent/ claims.

Over the years the patent regime has misinterpreted the provision of Section 13(4) of the Patents Act of 1970 which states as under:

13. Search for anticipation by previous publication and by prior claim

(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.

It usually happens that the Court before which a patent infringement is brought assumes that the act states that the fact that the patent is granted is proof of its validity. Whereas if the section is correctly interpreted it implies that the examination conducted by the controller is not proof of the validity. The purpose behind drafting this section appears to be to save the controller from any liability arising from an improper / incomplete examination.

The Patent law fails to take into account the main motive behind filing an application for grant of patent is to obtain protection from any person infringing the patent; however if after waiting for 4-5 years to obtain a right to sue infringers the patent holder learns that the courts do not recognize his patent certificate as proof of the patents validity it would most certainly discourage the inventor from going through the tedious and lengthy process of obtaining a patent.

1.1. “Old Patent” & “New Patent”:

In cases involving patent infringement in India the general practice of the Courts is to grant interim injunction only in cases where 6 years have elapsed since grant of the patent. There is no section in the patent act which forms the basis of this practise followed by the Indian Courts. This practise of the courts signifies that the judiciary does not trust the Executive to examine the patent properly and grant a patent.

This practise is saddening since it takes 4-5 years for grant of a patent and an additional 6 years after such grant after which the courts will grant an interim injunction in case of infringement. Hence for a period of 10-11 years the applicant cannot effectively enforce his patent rights and obtain an interim injunction in a suit for infringement. This allows an infringer enough time and motive to infringe with impunity and make hay while the patent is ineffective. Moreover since the life of a patent is only 20 years half the life of a patent elapses before the patent holder can effectively enforce his patent rights and obtain an interim injunction in a suit for infringement.

The Applicant having faith in the Patent Regime and discloses his precious invention over which he has spent time and money developing and the courts entrusted by the law to enforce his rights do not, as a practise, grant an interim injunction before 6 years have lapsed since grant of the patent.

1.2. infringement before publication cannot be sued for:

A baffling peculiarity of the Indian Patent Act is that it does not allow the Patentee to sue for an infringement which takes place before the publication of the application. Section 45 of the Patents Act, 1970 illustrates this peculiarity and is reproduced as under:

45. Date of patent

2[(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.]

(2) The date of every patent be entered in the register.

(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before 3[the date of publication of the application].

Ideally as is observed around the world infringement which takes place after the provisional specification has been filed may be sued for after the grant of the Patent even if such infringement takes place before the publication.

In India for some in explicable reason if a person infringes the patent before the publication of the application, such infringement goes unpunished.

Thus the infringer in India has the law suited to him rather than a law which aims to protect the inventor’s rights effectively. To summarise:

1. infringement which takes place before the publication is in effect allowed by the law;
2. the patentee cannot sue until the patent has been granted (though this is the case the world over);
3. even after grant of patent the patentee will be unable to get an order for interim injunction against the infringer unless at least 6 years have elapsed since the grant of the patent;
4. even if he has been granted the patent and has received the patent certificate the same will not be considered prima facie evidence of proof of validity of the patent.

Taking into account the abovementioned points if the number of indigenous patents are to increase then the law needs to be amended and the way the judiciary interprets the law needs to be changed. The Courts need to start trusting the competency of the patent office in deciding the validity of the patent. Only after these changes are made shall the indigenous inventor start trusting the patent regime and disclose the invention which he has hitherto kept secret.

–By Advocates

Tushar Shrikhande & Sahil Ahuja

In this world of Corporations looking to explore new markets the primary asset which remains constant regardless of the location is the Trade Mark. In most cases an organization looks to expand its already flourishing business to different shores in order to exploit new avenues of business. It is crucial in such cases to have the same trade mark in order to build or rely upon an already existing reputation (even though such reputation may be in a different country) and simultaneously it is critical to see to it that others do not trade upon one’s good will/ reputation. In cases of expansion of business beyond the borders of one’s home it becomes absolutely crucial that one registers one’s trade mark in order to have a right to use it in the new territory and also restrain others from doing so.

Trade marks are territorial in nature; If a trade mark is registered in one country it unlikely that it would enjoy protection in another country unless the laws of such country recognize transborder reputation and extend Trade mark protection in such territory. Even if laws of a country provide for protection of trade mark rights by recognising transborder reputation, the chances of an already existing registered trade mark emerging victorious in a suit is highly likely. Thus, not registering the trade mark in a particular territory implies that one’s trade mark may not enjoy exclusivity in such territory and worse one may be even be restrained from using one’s trade mark in such territory. An example of this is a trade mark dispute that took place in France in the year 2008- Infosys Technologies was restrained by a French Court from using the name “Infosys” in France as a trademark, corporate name, trade name and domain name.  The court held that Infosys was infringing the trademark of a French consulting firm by the name of ‘Infosys France’.

Generally it is much cheaper to register a trade mark than to defend a trade mark infringement suit or a suit for passing off of goods or services. It often happens that if a company is unable to exploit the market on its own it may license the Trade Mark to another company (distributor) to use in that territory and obtain royalties/ license fees for such use. It is common place that such distributor registers the trade mark- in some cases the distributor conducts its business honestly and registers the trade mark in the name of the Principal however in some cases the Distributor registers the trade mark in its own name. In cases like this revocation proceedings need to be initiated and this comes to be more expensive than having the Trade mark registered by the Principal in its own name. In September 2010, Parle Products Pvt. Ltd. (‘Applicant’) represented by R. K. Dewan & Co. and the Australian attorneys – IP Gateway, were successful in obtaining an order for costs and removal of the Trade Mark ‘PARLE’ which had been registered in the name of Nina Bhavangiri (‘Opponent’), who was Parle Product’s Erstwhile Distributors.

Registration of trademark serves the function of a shield as well as a sword. As a shield it actively contributes towards brand recognition and corresponding sales and increase of good will. It further protects the business from suffering due to passing off/ infringement suits being brought upon by another party. Generally, trade mark registration is a prima facie proof of ownership of rights over the trade mark. Thus, if a company is entering a new market it will be unable to resist a suit for infringement / passing off nor will it be able ensure exclusive use of its trade mark. Thus, it will do well to register its trade mark in that country before commencing its operations in such country.

As a sword, registration of a trade mark enables the trade mark holder from others using same or confusingly similar trademarks in connection with related products and services and thus benefitting from the company’s reputation in an unauthorised manner.

An example illustrating the disadvantages of not registering your mark in prospective markets is reproduced hereunder in the case of Hilltone vs. Hilton featured RKD’s newsletter in September 2010:

In a case before Additional District Judge Narinder Singh Dadda, Sirohi, Rajasthan (Civil Original Suit: 02/2008) filed by Hotel Hilltone against the famous Hilton International Corporation, the additional judge has passed an order permanently restraining the Hilton Group from operating in India under its “Duplicate Trade Mark” Hilton.

Hotel Hilltone Rajasthan based petitioners contended that they were founded in 1973 and were registered under the Companies Act, 1956. The Rajasthan based hotel sought to restrain the Hilton International Corporation from operating in India by using a “deceptively similar trademark”.

The Addl. District judge surprisingly found in favour of Hilltone hotel disregarding the fact that the Trademark ‘Hilton’ is internationally recognized and has been in existence much before Hiltlone.

Hilton International Corporation has appealed to Rajasthan High Court challenging the order and though the High Court is yet to hear the case on its merit; it has refused to stay the order of the Addl. District Judge. The rationale behind this surprising decision of the Hon’ble High Court seems to be “When registration of the Hilton Hotel has not been quashed and it is still in existence in their name and they are running their business in the said registered name, as such their apprehension is totally unfounded that due to judgment impugned they will suffer irreparable loss”

Another such example was the dispute between the trade marks ‘Nandu’ and ‘Nando’. A suit for infringement of trade mark was filed at the Bombay High court by Balkrishna Hatcheries (owner’s of Nandu brand) against Nando’s International, an irish chain of restaurants, in India. The court initially awarded an ad interim injunction against nando’s on grounds of deceptive similarity and passing off in favour of our Nandu however later it recognised nando’s trasborder reputation and nandu’s lack of reputation in hotel industry and  vacated the order of injunction. Had Nando’s trade mark been registered it would have been able to establish its trade mark rights right at the inception  of the case.

For the full judgement please refer to the following link http://bombayhighcourt.nic.in/data/judgements/2007/OSNMS364006.pdf

–By Advocates

Tushar Shrikhande & Sahil Ahuja

Piracy of Indian films in the U.S is a phenomenon that has been causing huge losses to the Indian Film Industry and has been prevalent since quite a few years. Duplicated CDs and DVDs of popular hindi movies are being sold rampantly. Film maker Bobby Bedi has rightly said that India is losing huge chunks of its entertainment profits to global pirates, and America is becoming the battleground. “We are losing 90 percent of our home video market in the UnitedStates…one billion dollars per year through piracy and related activities in theUnited States,” said the producer of ‘Bandit Queen’. This problem of piracy can easily be curbed if the films are copyrighted under the U.S copyright laws.

If a suit for infringement of copyright is filed statutory damages between $750 and $30,000 per work can be awarded as per the US copyright laws .Moreover, if willful infringement can be proved damages upto $150,000 per work can be granted. In order to avail protection of the law and claim damages sustained due to piracy, copyright registration in the US is absolutely necessary. Copyright registration of a film estabilishes a public record of the copyright claim in the US copyright office. A certificate of registration is issued to the applicant. If registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law. Thus copyright registration  is indispensible in order to file a suit for infringement and thereby curb piracy.

The time the Copyright Office requires to process an application varies, depending on the number of applications the Office is receiving and clearing at the time of submission and the extent of questions associated with the application. The average time taken to process a copyright application online is about three months and the cost involved is minimal as compared to the benefits of registration. For copyright registration of a film an applicant has to submit 4 copies of the film on a CD or DVD. Copyright registration of a film can be applied for by the producer, owner or author.

To conclude ,“a stitch in time, saves nine”. Timely protection of films through copyright registration in the US can go a long way in curbing the hazards of piracy. In a nutshell, to effectively enforce your copyrights in a work and be able to obtain statutory damages , registration of copyright is essential.

–By Advocates

Tushar Shrikhande & Sahil Ahuja

Recently an article titled ‘IPR Protection in Agriculture: An Overview’ penned by Dr. Dewan was featured in the March, 2011 issue of the Journal of Intellectual Property Rights. The following is an abstract of the same:

Private rights in living objects have always been controversial. Agriculture provided the first wave in human civilization. Therefore, agriculture including plant breeding and agricultural methods pre-dated any form of IPR protection unlike industry and commerce. Traditionally, IPR was not applied to agriculture. In recent times, this position has changed and increasingly agriculture is seen as an industry that cannot survive without research and development and astute investments. This has made it necessary that IPR in all its forms be extended to agriculture.

Click here to read the full article

When an entity holds a patent, no person is entitled to make, offer for sale, sell/ import product which infringes any of the claims of the patents. Such a person includes the Government; and in case of an Indian patent this would mean the Govt. of India. In the case of a medicine the product patent would be a drug. It is well known that a drug cannot be introduced in the market without the approval of the Food and Drug Authority (FDA) which could be the Drug Controller General of India (DCGI). Therefore, I believe that the FDA, which gives marketing approval to an infringer to market a drug which infringes a patent of another entity, would be in the nature of an accomplish or an abettor in such case.

Rightly speaking, the Plaintiff (who is a patent holder) should make the FDA or the DGCI as a co-defendant. This should have been the modus operandi in the Bayer case, rather than attacking the Govt. of India rules relating to marketing approvals.

– Dr. Mohan Dewan

Introduction:

Simply stated, a domain name is an address of a website which appears on the internet. Domain names normally contain trade marks of business entities. In case a person is desirous of locating / procuring details of such business entities it would type in the domain name on the internet and which in turn would lead to the relevant website of the business entity.

Like trade marks, domain names are almost always susceptible and attacked by cyber-squatters who squat by preemptively dishonestly and in bad faith registering trade marks of third parties.  The practice of cyber-squatting exploits the very first come first served nature of domain name registration with domain name registration systems world over albeit their having no business connection whatsoever with the proprietor of the trade marks concerned. On account of a relatively simple and inexpensive mode of internet domain name registrations, cyber-squatters more than often register hundreds of trade marks as domain names. Once this is achieved such cyber-squatters offer the so registered domain names to the proprietors of the trade mark at prices far beyond the cost of registration. Alternatively the illicit practice of retaining the domain name so registered by them for their own dishonest use is often not ruled out.

Cyber-squatting has led to disputes and litigation between dishonest cyber-squatters and legitimate proprietors of trade marks. Over the last decade although no international legal standards existed to resolve domain name disputes, The Internet Corporation for Assigned Names and Numbers (“ICANN”), an organization responsible for amongst various other things management of generic top level domain names such as .com, .net and .org found itself to be in a dire need of a solution to the domain name dispute resolution problem. The process of negotiating a new international treaty was considered to be too slow and new national laws would most likely be too diverse. What was needed were internationally uniform and mandatory procedures to deal with what are frequently cross-border disputes.

With the support of its member States the World Intellectual Property Organization (“WIPO”) which has the mandate to promote protection of intellectual property rights conducted extensive consultations with members of the internet community world over. Post this it prepared and published its report containing recommendations dealing with internet domain name issues and disputes. Based on the reports recommendations ICANN adopted the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and which came into effect on and from 1^st December 1999 for all ICANN accredited Registrars of internet domain names.

Under the UDRP, WIPO is the leading ICANN accredited domain name dispute resolution service provider. As of the year 2000 some 65 percent (of about 1,850) of all cases filed under the UDRP were filed with WIPO. Additionally, a growing number of registrars of country code top level domains have designated WIPO as a dispute resolution service provider.

How does the UDRP work?

The UDRP permits complainants to file a case with the resolution service provider specifying:

• The domain name and a question ;
• The respondent or holder of a domain name
• The registrar with whom the domain name was registered
• The grounds for the complaint

The grounds in a complaint set out the manner in which the illicit domain name is identical or confusingly and deceptively similar to a trade mark in and unto which a legitimate proprietor of a trade mark (normally the complainant) has proprietary rights. The complaint further questions and disputes as to the manner in which the respondent who normally has no legitimate right, title or interest in and unto the trade mark and which has been dishonestly registered and in utmost bad faith.

Taking into consideration the facts and circumstances of a given dispute, WIPO appoints an expert “neutral” or panelist from its roster to decide such cases and issue a decision. Parties to a dispute may opt to register either one or three panelists to a given case. In deciding a dispute the panelist would bear in mind and keep in consideration the following:

• Whether the disputed domain name is identical or confusingly similar to a trade or service mark and otherwise in which the complainant has legitimate right, title and interests
• Whether the respondent has any legitimate right, title and interests in the disputed domain name (as to whether it at all offers goods and or services under the same name)
• Whether the domain name was dishonestly registered and / or is being used in bad faith.

Resolution of domain name disputes by WIPO are adjudicated by highly qualified panelists, by means of thorough and expeditious administrative procedures and overall impartiality and credibility. Resolution of domain name disputes by WIPO are much faster than normal litigation in courts. A domain name case filed with WIPO is normally concluded within two months using online procedures. Fees are much lower. There are no in person hearings except in extraordinary cases.

In a domain name dispute a domain name is either cancelled, transferred or sustained (complainant is denied and the respondent keeps the domain name) Monetary damages are not awarded in UDRP domain name disputes and no injunctive relief is available. An accredited domain name registrar which is bound to abide by the UDRP’s decision unless appealed within a given frame of time. The resolutions offered by WIPO are mandatory in the sense that accredited registrars are bound to take the necessary steps to enforce a decision such as transferring the disputed domain name. However, under the UDRP either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution.

Suggested Tariffs

1. Reviewing client grievance and responding to the same
2. Preparing and providing clients with a suggested draft of the complaint to be filed with WIPO
3. Finalizing and filing the same before WIPO
4. Reviewing the respondents response to the complaint filed and offering our comments / advice on the same
5. Reporting the decision passed by the panel adjudicating the dispute

In the event the respondent  decides to challenge the Panel’s decision by filing a lawsuit before a “Mutual Jurisdiction” as provided for by the UDRP Rules , then contesting the same. The concerned registrar will then take no further action until it receives:

(i) Satisfactory evidence of a resolution of the dispute between the parties; or

(ii) Satisfactory evidence that the domain name registrant’s lawsuit has been dismissed or withdrawn; or

(iii) A copy of an order from the court in which the lawsuit was filed dismissing the lawsuit or ordering that the domain name registrant has no right to continue to use the domain name.

Tariffs for 1. to 4. above would be Rupees 2,50,000 /. Such sum would however exclude any out of pocket expenses necessarily required to be incurred by us in attending to the matter.

In the event the Panels decision is challenged by the respondent, contesting the same before a court having competent jurisdiction would need to be ascertained and provided as “mutual jurisdiction” defined by the UDRP Rules would not necessarily be confined to the territory of India. It may hence be necessary to engage the services of an associate overseas.

Tushar Shrikhande