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Wednesday, November 23, 2011

Territorial Jurisdiction Of Court Where The Trademark Application Is Applied For Registration

South African Breweries International (Finance) B.V. a company registered in Netherlands, along with its Indian joint venture company, promoted with SAB Group filed a suit for permanent injunction, rendition of accounts, damages and delivery up of the infringing packaging and material against Mohan Goldwater Breweries Ltd in year 2002 & Anr.

The trademark “CASTLE”, which was originally adopted and used by Charles Glass, doing business as Glass & Company in respect of “beer”, in the year 1884. In 1895, Glass & Company was taken over by the South African Breweries Limited, which assigned worldwide rights in the trademark CASTLE to Avalon International Incorporate, which subsequently changed its name to SABMARK International Incorporated. Subsequently, SABMARK International assigned those rights to South African Breweries International Holdings Inc., which, in turn, assigned them to South African Breweries International (Finance) B.V i.e. Plaintiff herein. It claimed registration of the trademark CASTLE and CASTLE label in respect of beer in a large number of countries and also claims sale of US$ 1billion. According to the them, the trademark CASTLE is a well-known mark in India and is well-recognized worldwide on account of its extensive availability in various countries and duty free shop of various airports. It also claimed to be sponsoring the South African Cricket team for past 10 years and claimed that on account of such wide publicity, Indians would be familiar with the trademark CASTLE. It was also alleged that they had been selling beer in India since 1974, under the trademark CASTLE. They also applied for registration of CASTLE (label) on 29th April, 1995 and the word mark CASTLE on 6th February, 1996. The registrations were granted during pendency of the suit.
The Mohan Goldwater Breweries Ltd i. e. Defendant no. 1 herein sent a notice dated 15th April, 2002 to South African Breweries International (Finance) B.V. i.e. plaintiff claiming ownership of the trademark CASTLE PILSNER in respect of beer. They also claimed that the trademark OLD CASTLE and CASTLE were registered in their favour on 30th May, 1972 and 22nd October, 1973 respectively and also claimed that the plaintiffs were passing off their goods as those originating from the defendants and, thereby infringing their registered trademark.
On enquiry, the plaintiffs came to know that the trademark registrations in favour of the defendants had been removed from the record of Registrar of Trademarks and in fact, the defendants never sold any product bearing the trademark CASTLE. The plaintiffs had sought an injunction, restraining the defendants from manufacturing, selling, offering for sale or advertising any beer or alcoholic beverages, using the trademark CASTLE. They also sought delivery up of all the goods, packaging material bearing the impugned mark besides damages of Rs 20,00,000/-.
The defendant no. 1 contested and filed a written statement taking a preliminary objection that since it was carrying on business of manufacture and sale of beer under the trademark CASTLE only in Uttar Pradesh, Delhi Court has no jurisdiction to try the suit. It is claimed that CASTLE is one of the oldest brands being used by defendant No. 1 to sell its beer and it has been selling bear using the trademarks CASTLE and OLD CASTLE since 1970-71. It is also alleged that registration of the trademark OLD CASTLE (label) was granted to defendant No. 1 on 30th May, 1972 vide Trade Mark No.280552, whereas registration of the trademark CASTLE PILSNER STRONG BEER label was granted w.e.f. 22nd October, 1973, vide Trade Mark Registration No. 291623. It was also claimed that the renewal of the aforesaid trademarks was applied by defendant No. 1 on 13th June, 2000 and 17th May, 2000 respectively. It was also claimed that since the trademark CASTLE is being used by defendant No. 1, the plaintiffs have no right to use the aforesaid mark.
There was also another defendant in the matter, but in 2010, The matter between the plaintiff and defendant No.2 was compromised vide settlement contained in IA No. 4700/2010. Under the settlement, the plaintiff acknowledged defendant No. 2 to be the proprietor of the trademark KING CASTLE in respect of whisky, whereas defendant No. 2 acknowledged the plaintiffs to be the proprietors of the trademark CASTLE in respect of beer and other non-alcoholic beverages falling under International Class 32 of the Trademarks Act. Defendant No. 2 undertook not to use the trademark CASTLE in respect of beer or any other goods falling in Class 32 of the Trademarks Act. It also undertook not to seek registration of the trademark CASTLE for any goods falling in Class 32 of Trademarks Act.

On the question of territorial jurisdiction, Plaintiff alleged that Defendant No.1 is a Company having offices in Lucknow as well as in Delhi. Delhi office of defendant No.1 was stated to be 4F, Hansalya, 15, Barakhamba Road, New Delhi. Reliance was placed on Section 20 of the Code of Civil Procedure, it provides that every suit shall be instituted in a Court within the local limits of whose jurisdiction, the defendant, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain or in a Court within local limits of whose jurisdiction, the cause of action, wholly or in part, arises. The explanation to Section 20 provides that a corporation shall be deemed to carry on its business at its sole or principal office in India or in respect of any cause of action arising at any place where it has also a subordinate office, at such place. Therefore, if the cause of action either wholly or in part arose in the jurisdiction of this Court, it would have territorial jurisdiction to try the present suit. It was also alleged that defendant no. 2 has office in Delhi and products of the Defendant no. 1 were also sold in Delhi. The defendant no. 1 denied having any office in Delhi or selling any products in Delhi. It was further claimed that since the plaintiffs had learnt that the defendants had applied for registration of trade mark in Delhi, they could claim for injunction to prevent any sale of the infringing products in Delhi and in that case, Delhi Courts would have jurisdiction, whether any sale in Delhi has taken place or not.

The Court applied the ratio laid down by Supreme Court in Dhodha House and observed that in the opinion of this Court was that an advertisement by itself in a Trade Mark Journal would not confer jurisdiction on a Court within whose territorial limit the advertisement is published or is seen. In the opinion of this Court, if an application for registration of the impugned trade mark is made in the territorial jurisdiction of a Court that Court would have jurisdiction to try the suit relating to the particular trade mark. Since defendant No.1 applied for registration of the trade mark to the Registrar of Trade Marks at Delhi, as is evident from the advertisements, this Court would have jurisdiction to try the present suit.

The Court also relied on Exphar SA & Anr. v. Eupharma Laboratories Ltd. & Anr. AIR 2004 SC 1682, where a cease and desist notice was given to the plaintiff at its office in New Delhi alleging infringement of the copyright of defendant No.1 by the plaintiff. Supreme Court held that a cease and desist notice in a copyright action cannot, particularly in view of Section 60 of the Act, be termed as a mere notice which is not sufficient to confer jurisdiction and that such a threat may give rise to a right to institute a suit but counter such threat and ask for relief on the ground that the alleged infringement to which the threat related was in fact an infringement of any legal right of the person making such threat. Section 60 of the Copyright Act is identical to Section 142 of the Trademarks Act and therefore this judgment does support the proposition that if a cease and desist notice is received at Delhi, the Courts would have jurisdiction to entertain a suit at the instance of the person to whom such a notice is given.

Injunction can also be sought in case of threatened use of a Trademark

In a suit for for permanent injunction, rendition of accounts, damages and delivery up of the infringing packaging and material filed by South African Breweries International (Finance) B.V. a company registered in Netherlands, along with its Indian joint venture company, promoted with SAB Group against Mohan Goldwater Breweries Ltd in year 2002 & Anr. Delhi High Court held that Injunction can be sought not only in a case of CS actual use but also in a case of threatened use of a trademark. The owner of a trademark is well within his right in coming to the Court, for grant of an injunction, the moment he has a genuine apprehension that the defendant is likely to infringe his mark or to pass off his goods as those of the plaintiff. He need not necessarily wait till actual invasion of his rights and the law entitles him to take remedial action, well in time, whenever there is a reasonable threat of his right being invaded.

Thursday, November 3, 2011

Amendment of claims in infringement Suit whether permissible without amending the plaint

In Re: Glaverbel S.A. vs Dave Rose & Ors., Justice A. K. Pathak, Delhi High Court rejects IA seeking amendment in claims as allowed in another suit without amending the present suit. The Court also relied on certified copy of Patent Office wherein the amendment sought in claim did not reflect.
Here the Plaintiff vide an interlocutory Application 12535/2011 (under Section 151 of CPC)sought the amendment in present suit (CS (OS) no. 594/2007 of independent claim 1 as allowed in CS (OS) no. 593/2007.
The originally allowed claim under Patent No. 190380 read as under
A Mirror with no copper layer comprising:
i) a vitreous substance,
ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,
iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and
iv) at least one paint layer covering said silver coating layer."
Plaintiff had filed CS(OS) No. 593/2007, against one Shri Anand Mahajan for permanent injunction praying therein that the defendant be restrained from infringing the Indian Patent No. 190380 of the plaintiff as also for rendition of accounts. In the said case, plaintiff also filed an application under Sections 57 and 58 of the Patents Act read with Section 151 CPC being IA No. 13519/2007 seeking amendment in the Claim No. 1. By way of amendment, plaintiff sought to insert "a sensitizing material, typically tin, and" at the beginning of clause (ii) of Claim No. 1. After the proposed amendment clause (ii) of Claim No. 1 reads as under:-
"(ii) a sensitizing material, typically tin, and at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"
A Single Judge of this Court vide order dated 10th September, 2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass Europe SA vs. Anand Mahajan and Ors. disposed of said application whereby allowed the aforementioned amendment. The operative portion of the order reads as under:-
"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention.

At best, even if the defendants' objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."
It was contended by Plaintiff that the amendment in claim no. 1, as allowed vide order dated 10th September, 2009 passed in CS (OS) No. 593/2007, is clarificatory in nature and does not alter the scope of invention. Claim nos. 9 and 10 of the same patent specifically mention about sensitization of the mirror by tin chloride. This fact was taken note of by the Single Judge while allowing the amendment. Clerical correction of claim no. 1 does not change the nature of the claim no. 1. Besides this, order of amendment is "in rem" and has attained finality and can be read in this case without amending the pleadings of this case. Correctness or incorrectness of the order dated 10th September, 2009 cannot be gone into in this case. Amended claim no. 1, in terms of order dated 10th September, 2009, can be read in all other proceedings without amending the pleadings in other cases. Defendants have understood the claim no. 1 as a copper free mirrors in which first step is sensitization with tin chloride. This is evident from the averments made in para nos. 17, 18 and 19 of the written statement. Defendants in their written statement, have taken a plea that a patent claim "sensitization by tin chloride" is not new, therefore, the patent is invalid. Defendants have also cited prior art like "Franz", "Shipley", "Orban" and "Buckwalter" in para 18 of the written statement and have stated that "sensitization by tin chloride" is an old concept. Thus, no formal amendment of pleading in respect of claim No.1 is required in this case. Defendants are not prejudiced in this case even if amended claim No.1, as contained in the order dated 10th September, 2005 is read in this case. It was further contended that the whole purpose of opposing the present application by the defendants is to seek de novo trial. In other words, defendants will seek time to file amended written statement and recall of the Plaintiff’s witnesses for further cross examination. This will not do any good to anyone except that final adjudication will get delayed. In nutshell, contention of plaintiff was that there is no need to amend the plaint. It was further contended that plaint is not required to be amended if not necessary. According to him existing pleadings are sufficient to indicate that defendant has understood the claim of plaintiff regarding sensitization by tin of the mirror manufactured by it. Subsequent event of amendment in claim No.1 can be taken note of in this case without amending the pleadings of this case.
The Defendant contended that the plaintiff is seeking amendment in claim no. 1 without amending the plaint, which is not permissible under the law. It was further contended that in the order dated 10th September, 2009 it has been categorically mentioned that the amendment does not attract the provisions of Sections 58 and 59 of the Patents Act; meaning thereby amendment in claim no. 1 was not allowed under the said provisions of Patents Act. Accordingly, amendment can be read only in CS(OS) No.593/2007 and not in other proceedings. Amendment in claim no. 1 permitted by the Court was not recorded in the Patent Office. Certified copy of the Patent Ex.PW1/3 has been issued by the Patent Office in the month of March, 2009, which does not contain amended claim no.1. This indicates that amendment was not allowed under Sections 58 and 59 of the Patents Act. Amendment could at best be read as an amendment of claim No.1 in that particular suit and not in patent records. It was further submitted that plaintiff has to amend claim no. 1 in this case and for the said purpose he has to file appropriate application under Order 6 Rule 17 CPC seeking amendment in claim no.1 which application is, otherwise, not permissible in this case as the trial has already commenced, inasmuch as, plaintiff's witnesses have already been cross- examined. The only contention acceptable under the law is that a plaint can be amended after the start of trial when the plaintiff had exercised due diligence and in spite of that he could not seek the amendment earlier. In the instance case, plaintiff was well aware of the order dated 10th September, 2009; whereas plaintiff's evidence was concluded in this case on 21st July, 2011, much thereafter. In any case even if such an amendment is permitted in the present suit the defendants have to respond to such amendment by filing amended written statement, inasmuch as, have to cross examine the Plaintiff’s witnesses on this point. It was further contended that the plaintiff cannot be allowed to bring on record the amended claim no. 1 in this case indirectly so as to prejudice the defendants. Under the Patents law a patent can be obtained either in a product and/or in a process. Claims Nos.1 to 8 in the suit reflect product patents; whereas claim Nos. 9 to 20 are the process patent. By adding tin in the product claim no. 1, the plaintiff is trying to expand its monopoly even in a product having layer of tin by way of such amendment, which is not permissible under the law.
After considering the contentions of both the parties, the Court was unable to persuade itself to accept the contention of the plaintiff that the amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, can be read in this case without amending the pleadings of this case. Court observed that it is well settled that a case is decided on the facts involved therein as are emerging from the pleadings duly proved by the evidence adduced in support thereof. No judicial notice of the facts emerging from the pleadings and the evidence led in some other case can be taken for deciding the controversy between the parties in a different case. It is the fact pleaded and the evidence led in that particular case alone which has to be considered. Judicial pronouncements can be referred to at the bar in support of a legal preposition but the facts involved therein cannot be read as the facts of such cases where such reports are referred. Subsequent events can be considered only if the same are brought on record by seeking necessary amendment in the pleadings and not by noticing the same from the facts emerging from the pleadings and the documents of other cases, which may have been referred to in the reports. Even though plaintiff is at liberty to refer and rely on the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 in support of law laid down therein but the fact remains that the amended claim no. 1 cannot be read in this case. Judgment has to be pronounced in this case on the pleadings and the evidence adduced i.e. either documentary or ocular, in this case. It appears that plaintiff was conscious of this fact and for this reason only plaintiff had expressed its desire to amend the plaint initially, as is evident from the perusal of order dated 5th February, 2010. However, subsequently, on 3rd May, 2010 Plaintiff made a statement that he does not intend to file any application for amendment. Consequently, issues were framed. Merely because amendment of the pleading would result in delay in disposal of the suit by itself cannot be made a ground to adopt a shortcut by reading the amended claim No.1 as permitted in CS (OS) No. 593/2007 in the present case, without amending the pleadings. Plaintiff cannot be permitted to achieve its objective of amending the claim no. 1 in this case indirectly.
If the matter is viewed from another angle then also the course adopted by the plaintiff cannot be permitted. Amendment in claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been recorded by the Patent Office in its record. Certified copy of patent, issued by the Patent Office after more than 6 months of the order dated 10th September, 2009, contains un-amended claim no.1. It is this certificate which has been placed on record in this case and has been proved. Plaint also contains un-amended claim. Evidence led by the parties, which is in consonance with the pleadings of the parties, alone can be read at the stage of final adjudication of the matter. There is no gain saying in reiterating that evidence led beyond the pleadings cannot be looked into. Accordingly, the amended claim no. 1 cannot be read in this case without plaintiff taking necessary steps to get the claim amended in this case as well.
For the foregoing reasons, the Court held that plaintiff though can refer the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 at the time of hearing but same cannot be permitted to be taken on record as a document so as to read the amended claim No.1, in this case. Amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, cannot be read as amended claim No.1 in this case. As regards permission to the plaintiff for placing on record certified copy of amended patent no. 190380 as and when received from the Patent Office, the same also cannot be granted at this stage. However, plaintiff is at liberty to file appropriate application as and when he receives the certified copy from the Patent Office.
Accordingly application was disposed of in the above terms. Therefore Along with I.A. No. 13631/2011 (u/Sec. 151 CPC) by Defendants) became infructuous and was disposed of as such.

Sunday, October 23, 2011

Alcohol Advertising, packaging and Labelling requirements in India

Alcohol Advertising, packaging and Labelling requirements in India

Author: Sudhir Kumar

The minimum legal age to purchase liquor in India ranges from 18 years in some state to 25 years in others. Under Indian Law, there are restrictions on advertising of alcohol. With effect from September 8, 2008, the Cable Television Network (Regulation) Amendment Bill has completely prohibited cigarette and alcohol advertisements in India through television. Some states allow advertising through bill boards, hoarding etc. subject to many restrictions. Further another mode of liquor promotion in India is through surrogate advertising (brand name promotion) through advertising bottled waters, juices, soda etc. and promoting sports and other events. There is lot of hue and cry over surrogate advertising as major thrust in such advertising is on liquor brand promotion. The government controlled channels are very cautious while broadcasting any surrogate advertisement. The available mode of advertisement is through product placement in the liquor vends, bars and sign boards.

The latest avenue for advertisement for alcohol brands is Social Media i.e. facebook, twitter etc. that allow access to target consumer directly. These platforms are exploited for brand promotion though contests and other innovative promotional activities. No specific regulations are made to check social media yet.

Alcohol (whether manufactured locally, bottled or Imported) is subject to the labelling provisions under the Standards and Weight and Measures (Packaged Commodities) Rules, 1997.

The labelling declaration must include:

a) Name and address of the Manufacturer, Packer or Importer

b) Generic and common name of the packaged commodity (i.e. Whisky/ Rum/ Vodka/ Scotch/ Wine/ Beer)

c) Net quantity in terms of standard units of weights and measures (in millilitres and litres) when packed.

d) Month and year of manufacture

e) Maximum Retail Price (MRP)

As the excise and other applicable laws in respect of alcoholic goods differ from one state to other, printing of "MRP" is not mandatory provided that the retailers display the retail sale price of the package prominently in their premises.

In addition, the standards of Weights and Measures (National Standards) Rule of 1998 prescribe that the alcoholic strength be declared on the label as percentage of volume and stated as "xx % Vol".

A warning as to injurious effects of alcohol must be printed on every unit (bottle/ packet). In some States safety holograms certifying that due duties/fees has been paid and the liquor is of prescribed standard, as approved by Excise Commissioners are required to be printed on each unit.

Article Source: http://www.articlesbase.com/regulatory-compliance-articles/alcohol-advertising-packaging-and-labelling-requirements-in-india-5329872.html

About the Author

Author is practising Advocate, Registered Patent Agent and Trademark Attorney. Author is partner with IntellexIP Advocates and is member of Supreme Court Bar Association, Delhi High Court Bar Association, New Delhi Bar Association, Asian Patent Attorneys Association. Author can be reached at s.kumar@intellexip.com or www.intellexip.com

Saturday, July 23, 2011

Intellectual Property Enforcement in India

In India there are multiple statues dealing with Intellectual property enforcement and issues. India also follows common law principals in dealing with IP issues. The statutes dealing with Intellectual Property matters in India are:
1. Trademarks Act, 1999 and Rules there under
2. Copyright Act, 1957 and Rules there under
3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005 and Rules there under
4. Designs Act, 2000 and Rules there under
8. Geographical Indication of Goods (Registration & Protection) Act, 1999 and Rules there under
9. Semiconductor, Integrated Circuit Layout Design Act, 2000 and Rules there under
10. Plants Varieties Protection and Farmers’ Rights Act, 2000 and Rules there under
11. Information Technology Act, 2000 and Rules there under
12. Customs Act, 1962 and Rules there under

Besides the above, India also follows common law for protection of Intellectual property rights.

Patent Infringement:
Patent infringement proceedings can only be initiated after Grant of patent in India but it may include claim retrospectively from the date of publication of Patent in Indian Patent Journal subject to law of limitation. Under the Limitation law does not allow action/suits in respect of matter where cause of action had arisen more than three years from the date of suit.

Acts constituting infringement of Patent Rights: -
• Making
• Using
• Selling
• Distributing
• Importing
• Offering any of the above
All persons or incorporations directly or indirectly involved in any of the above stages may be held liable for infringement.

Appropriate forum:
A suit for infringement has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen. However, as soon as a counter claim for revocation of patent is filed against the suit for infringement of patent, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Burden of proof
The onus of establishing the infringement is on the plaintiff. However, in case of patent involving a process for obtaining a product where the plaintiff first establishes that the products obtained are identical, the court may shift onus on the defendant.

Interim Injunction:
The Court may also allow interim injunction against the infringer.

Defences to Infringement of Patent in India
The following defences are available in India as a defence in Patent Infringement:
1. Any of the grounds under which Patent can be revoked
2. By govt of India or for Govt. of India for its own use
3. Experiment or research
4. Imparting instructions to pupils
5. For Patent in respect of Medicine or drug, for its own use of Govt. of India, for distribution in Govt. Dispensary and hospitals or by gazette notifications to other dispensaries, hospitals and medical institutions.


Enforcement of Trademark Rights

Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark.

Appropriate forum:
A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Before Trademark Registry- Administrative Remedy
1. Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3 months time.

2. Cancellation (before the Registrar as well as Appellate Board)- Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and non-use till the cancellation petition.

Before Courts- Civil Remedy
Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action.

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order,
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Besides Civil remedies, the proprietor of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered:-
• Falsifying a Trade Mark;
• Falsely applying a Trade Mark;
• Making or possessing instruments for falsifying a Trade Mark;
• Applying false trade description;
• Applying false indication of country of origin;
• Tampering with an indication of origin already applied to goods;
• Selling goods or possessing or exposing for sale of goods falsely marked;
• Falsely representing a trade mark as registered;
• Improperly describing a place of business as connected with the Trade Marks Office;
• Falsification of entries in the Register.
Procedure and punishment
The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed.

Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both.

Confiscation of imported goods bearing counterfeit marks

Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with informations as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence.

Trans-border Reputation
Trans-border reputation of trademarks is well recognised and accepted in India even if said mark is not registered in India.
Enforcement of Copyright
India is a member of the Berne Convention and TRIPS, therefore owner of copyright from another member country will get same copyright protection in India. However, the duration of copyright shall not exceed the original duration in the member country.

Infringement of copyright
Copyright in a work is deemed to be infringed when any person, without a license granted by the owner of the copyright does anything, the exclusive right to do which is by the Act conferred upon the owner of the copyright.

Acts Constituting Infringement of copyright
The following acts if done or authorised to be done by someone else, without consent or permission of the copyright owner, are considered as infringement of copyright:
i) Reproducing the work in any material form;
ii) Issuing copies of the work to the public not being copies already in circulation;
iii) Including the work in any cinematographic film;
iv) Making an adaptation of the work ;
v) Doing any of the acts specified at (i) to (iii) above in relation to adaptation of work
vi) Communicating the work to the public, if aware that such act shall amount to infringement of copyright
vii) Making, selling, letting on hire, distributing, importing or holding trade exhibits in public of infringed work.
Appropriate forum:
A suit for infringement of copyright has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Test to determine infringement
One of the surest test to determine whether or not there has been a violation of copyright is to see if the trader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a copy of the first.

Before Copyright Registry- Administrative Remedy
Registrar of Copyright has the power to ban import of infringing copies into India and delivery of infringing copies of copyright work confiscated earlier from infringer to the owner of the copyright on an application made by the owner of copyright or his duly authorized agent.

Before Courts- Civil Remedy
The owner of the copyright has the following remedies against infringement:

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Copyright Infringement is a cognizable offence (non-bailable offence) the offence of infringement of copyright is punishable with imprisonment, which may extend from a minimum punishment of 6 months to maximum of 3 years and with a fine not less than fifty thousand rupees and extending upto two lakh rupees. For the second and subsequent conviction the minimum term of imprisonment is increased to minimum one year and minimum fine is one lakh rupees.


Enforcement of copyright in Designs

Appropriate forum:
A suit for piracy of design has to be filed in a District court within whose territorial jurisdiction the cause of action has arisen. However, as soon as any ground as to cancellation of design is taken in said suit or any other proceedings, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Piracy of Design
Following acts without consent or license from the registered proprietor amount to piracy of registered design:
1. Apply or cause of apply to any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof for sale;
2. Import any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof;
3. Knowingly publish or expose or cause of publish or expose for sale an article in any class in which design is registered where design or fraudulent or obvious intimation thereof has been applied.

Damages towards piracy of design
For any piracy of registered design the defendant has to pay sum up to Rs. 25,000 towards the contravention. However maximum damages allowed are Rs. 50,000 in respect of a single design.

Injunction for design right violation
Besides awarding the damages the proprietor may also seek injunction against repetition of contravention.

Defences to piracy of design in India
The defences available for defence in piracy of design is are any of the grounds under which design can be cancelled.

Industrial Design law and Practice India

As per Indian Designs Act, 2000, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principal of construction or anything which is in substance a mere mechanical device and does not include any trademark, property mark and copyright as defined under the Indian laws.

What Designs are Registrable
Only those designs that are new or original are subject matter of registration in India. Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. Further no copyright in the design shall vest in Applicant if more than 50 copies of the design has been manufactured commercially. A design is not registrable if it is not significantly distinguishable from known designs or combination of designs or if it comprises scandalous or obscene matter.

Design Applications in India
Design application in India can be classified under two categories depending upon their priority claim.
1. Ordinary design application without any priority
2. Conventional design application- has to be filed within 6 months from date of filing of conventional application

In case of conventional design application, certified copy of the priority document has to be filed within 3 months from the date of filing of application in India.

Design offices in India
There are four design office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the design office within whose territorial jurisdiction the agent/ attorney for applicant is located.

Design filing requirements in India

Following are the basic requirements for filing an ordinary design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.
Conventional Design filing in India
Following are the basic requirements for filing a conventional design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides
7. Details of priority, if any, including application number, date of filing and country of filing

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Design prosecution in India
Design prosecution in India involves following stages:
1. Filing of application & issuance of receipt of fee along with application number
2. Issuance of official acknowledgement
3. Issuance of Examination report with objections, if any ordinarily within 2-4 months of filing of application
4. Responding to Examination report within 6 months from date of filing of application in India which can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing
5. Hearing, if any
6. Acceptance of application
7. Issuance of Registration certificate

Term of Design Registration
The term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of another 5 years.

Renewal of designs
A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years

Copyright Law and Practice in India

Copyright is a combination of various rights that allows owner of copyright the exclusive right to print, distribute, and copy the work and to prohibit others from doing the same without his consent. It is an original expression of an idea that is subject matter of copyright. Copyright is provided automatically to the author of any original work covered by the law as soon as the work is created. The author does not have to formally register the work and extends to unpublished as well as published works.

Copyright extends to original literary (including computer programmes), dramatic, musical, artistic, cinematographic films and sound recording.

License or assignment
Copyright is a moveable property can be transferred or can be assigned or licensed for a consideration.

Copyright office in India
The only Copyright office in India is located at New Delhi. All Indian and foreign applications have to be filed in New Delhi office for copyright Registration.

Copyright filing requirements in India

Following are the basic requirements for filing of a Copyright application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class and description of work
3. Statement of further particulars
4. Nature of applicant’s interest in copyrighting the work
5. Title of work
6. Language of the work
7. Details of publication of work, if published, including name, address, nationality of publishers
8. Details as to owners of various rights in the work comprising the copyright, including extent of their right and particulars of assignment and license, if any
9. Name, address, nationality of other persons, if any authorised to assign or license the work comprising the copyright.
10. Location of work including name, address, nationality of person in possession of work, in case of an artistic work and completion of year in case of architectural work
11. Certificate from Registrar of trademarks if the artistic work is used or capable of being used in relation to any business
12. 5 copies of the specification (physical form or electronic form)

Term of Copyright
1. In published literary, dramatic, musical and artistic works (other than a photograph) published during lifetime of author- 60 years from first day of following year in which the author dies.
2. In literary, dramatic, musical and artistic works (other than a photograph) published anonymously or pseudonymously- 60 years from first day of following year in which the work is first published. Duration as explained in serial number 1 above, if identity of author disclosed before expiry of term of copyright.
3. In literary, dramatic, musical and artistic works (other than a photograph) published posthumous- 60 years from first day of following year in which the work is first published.
4. In photograph - 60 years from first day of following year in which photograph is first published.
5. In Cinematographic films- 60 years from first day of following year in which film is first published.
6. In Sound recording - 60 years from first day of following year in which sound recording is first published.
7. In works where Government, public undertaking or international organisation is first application - 60 years from first day of following year in which work is first published.
8. In Broadcasting - 25 years from first day of following year in which broadcast is first made.
9. In Performance - 50 years from first day of following year in which performance is first made.

In case of foreign works, the term shall not exceed the term for which the work is originally protected in the country of first publication.

Exception to infringement of copyright
A fair dealing with literary, dramatic, musical and artistic works (not being a computer programme) for private use including research including criticism or review of the work, for purpose of reporting in a newspaper, magazine or similar periodical or by broadcast, sound recording or by photographs or for purpose of a judicial proceeding or for purpose of reporting for judicial proceedings or for instruction for purpose of education or examination.

Licensing and Assignment
Owner of the Copyright can license as well as assign his work. The assignment has to be in writing and must clearly identify the work, duration and territorial extent of such assignment. In case of work under employment, the employer shall be the owner of the work in absence of any agreement to contrary.

Compulsory Licensing
Compulsory Licensing can be invoked under certain circumstances for both published as well as unpublished works. Compulsory licenses can also be sought for the purposes of production and publication of the translation of works.

Friday, June 24, 2011

House of Representatives in US are debating a patent reform, H.R. 1249 aka America Invents Act

House of Representatives in US are debating a patent reform, H.R. 1249 aka America Invents Act. This legislation intends to change US’s, “First-to-Invent” system to globally prevailing “First-to-File” regime. Provision for Post-Grant opposition is to be allowed under the draft bill This Bill will allow a Post-Grant opposition before a judge. US already have two post grant patent re-examination procedures. This additional procedure may be used by Big Boys to bully small inventors and businesses by enhancing cost of retaining a patent sizeably.

Tuesday, June 21, 2011

ASWAL ASSOCIATES- Patent and Trademark Attorneys: Rwanda and Qatar became PCT Contracting states, PC...

ASWAL ASSOCIATES- Patent and Trademark Attorneys: Rwanda and Qatar became PCT Contracting states, PC...: "On May 31, 2011 Rwanda (RW) became the 144th PCT contracting state and PCT will enter into force on 31 august 2011. Earlier this month on Ma..."

Rwanda and Qatar became PCT Contracting states, PCT to cover 144 countries

On May 31, 2011 Rwanda (RW) became the 144th PCT contracting state and PCT will enter into force on 31 august 2011. Earlier this month on May 3, 2011 Qatar (QA) became the 143rd PCT contracting state. PCT will enter into force on 3 August 2011. Thereafter, it would be possible to file pct application and designate any of 144 countries of choice for patent protection.

There was not a new contracting state in 2010, though there was reification for the Kingdom in Europe, the Netherlands Antilles and Aruba. The Netherlands Antilles ceased to exist on 10 October 2010. As from that date, the PCT continues to apply to CuraƧao and Sint Maarten. The PCT also continues to apply to the islands of Bonaire, Sint Eustatius and Saba which, with effect from 10 October 2010, have become part of the territory of the Kingdom of the Netherlands in Europe.

Last time there were new contracting state introduced in 2009, when Peru (June 6, 2009) and Thailand (December 24, 2009) became the 141 and 142 contracting state respectively.

Monday, June 20, 2011

PH Kurian, the Controller General of Patents, Trademarks, Design India resigns

PH Kurian, IAS the Controller General of Patents, Trademarks, Design India has resigned last week from his post. Speculation is that he is returning back to Kerala Cadre and would be joining the Kerala Govt as principal Secretary.

He was responsbile for bringing about transparency and accountability in the Patent, trademark and Design Office.

Friday, April 15, 2011

The Department of Industrial Policy and Promotion (DIPP) has admitted on affidavit before Delhi High Court that TM Registry has lost whopping 44,000 files relating to trademarks

A writ was filed before the Delhi High Court by one aggrieved company (Haldiram) seeking inspection of certain trademark prosecution and opposition files. In the Course Petitioner was joined by several other parties who impleaded themselves. As TM Registry was not able to provide any convincing explanation for same the Court ordered an enquiry by the Secretary of the DIPP, under whose supervision and control the Patent, Trade Marks, Design and Geographical Indication of Goods offices comes (DIPP comes under the Ministry of Commerce, Government of India)

As per the affidavit filed before the Delhi High Court, DIPP stated that most of the files were misplaced when the Trade Marks Registry was decentralized from Mumbai to the other cities and files were moved from Mumbai to other offices. The Court was informed that a FIR had been filed with the police with respect of missing files sought by the petitioner for inspection and files would be reconstructed through existing records of the trademark, (i.e. TM journals/ electronic database).

Sunday, March 27, 2011

Proposed Patent (Amendment) Rules 2011 and mandatory E- Filing of Patent documents

In order to improve the efficiency and transparency in filing and processing of Patent Applications and to ensure accuracy of Patent data as well as related certificates provided by the Patent office, the Govt of India has proposed to make e-filing of Patent applications mandatory. The draft of proposed amendments i.e. Patent (Amendment) Rules 2011 have been published for inviting public opinion and is expected to be notified soon. Any objections and suggestions to same may be submitted to Ministry of Commerce. Government of India by April 1, 2011 (i.e. within 45 days of publication of notification as to proposed draft Rules).

The major proposed changed suggested under the draft Rules are as follows:

1. All Patent Documents must be filed electronically duly authenticated by Applicant or Agent.

2. Mandatory requirements as to filing of Patent documents with Patent office (except to drawings and affidavits):

(i) Typewritten or printed in Hindi or English (unless directed or allowed by Controller) in large and legible characters not less than 0.28 cm in height and 1.5 spacing in between lines
(ii) A-4 paper with margin of 4 cm on top and left side and 3 cm on right and bottom.
(iii) Numbered in consecutive Arabic numerals at centre of bottom of sheet;
(iv) The description of the invention and claims must be numbered every 5th line of each page of description and claims at right half of the left margin;
(v) Signature on Patent documents in language other than in English and Hindi to be accompanied by a transcription in English or Hindi capital letters;

3. Where the invention relates to a sequence listing of nucleotides and/ or amino acids sequences, the sequence listing must be filed in computer readable form (ASCII text file) and additional fee would be applicable for filing sequence listing (which is not applicable as of now)

4. Where online transmission of Patent documents cannot be initiated or could not be completed for whatever reasons, document can be handed over or send by post to Patent office so as to reach there within the stipulated time frame.

5. Where Patent Documents are amended, the amended as well as superseded patent documents shall be submitted electronically. Every new or amended document be marked at Header of documents as Amended and while resubmitting the Patent documents an undertaking must be submitted that unamended pages are the same as originally submitted earlier.

In case of Individual Applicant Government has proposed to provide assistance in E-filing to those for whom E-filing is not convenient and Controller has been vested with power of direct acceptance of their Patent documents in other forms and manner than explained above.

Madrid Protection in India: Advantages and Disadvantages

India became member of Madrid Protocol on July 8, 2013. The Initial advantages of Madrid system were huge as compared to filing a conventi...

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