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Thursday, December 26, 2013

DOCTRINE OF ESTOPPEL BY ACQUIESCENCE OR WAIVER FOR INFRINGEMENT

Acquiescence as a defense:

Section 33 (1) of the Trademarks Act, 1999 provides that if the earlier Registered Proprietor has acquiesced for a continuous period of 5 years in the use of a registered trademark, being aware of that use, he is not entitled to either seek invalidation of such later mark or oppose its use in relation to goods or services in relation to which it has been so used, unless registration of such mark was applied in bad faith.

The essential for defense of acquiescence shall be:

(a)    The mark should be registered

(b)   The earlier registered proprietor should be aware of use of such registered mark for a period of 5 years or more

(c)    The subsequent Applicant/ registered proprietor has used such registered trademark for a continuous period of 5 years

(d)   The subsequent mark if registered cannot be cancelled unless registration was applied in bad faith

(e)    The subsequent mark cannot be opposed for usage in respect of goods or services in respect of which it has been so used, unless application was made in bad faith

This section clearly establishes that if there is acquiescence for a continuous period of 5 years, the usage of such mark cannot be stopped by earlier registered proprietor. Though any application or registration of such mark can be challenged either in rectification or opposition proceedings if such application was made in bad faith.

Where such doctrine applies, the proprietor of later trademark is not entitled to oppose use of the earlier registered mark or exploitation of the earlier right. Burden of proof is on the defendant.

Acquiescence vs. Consent

Acquiescence is implied consent by remaining silent spectator. Section 30 (2) (c) of the Trademarks Act provides that express or implied consent by the registered proprietor or registered as to use of the mark is a defense to infringement. But as the infringement is a continuous process this consent may be withdrawn subsequently and such acts would amount to infringement unless a defense of acquiescence is available.  In other words implied consent of 5 years can be termed as acquiescence.

Laches:

Failure to assert one’s rights in a timely manner can result in a claim being barred by laches. Laches is an equitable defense or doctrine asserted in litigation. It is defined as an "unreasonable delay pursuing a right or claim by one party in a way that prejudices the opposite party". The person invoking laches is asserting that an opposing party has "slept on its rights," and that, as a result of this delay, circumstances have changed such that it is no longer just to grant the equitable relief sought for such as an interim or temporary injunction. Laches is a form of estoppel for delay. A successful defense of laches will find the court denying the request for equitable relief. However, even if equitable relief is not available, the party may still have an action at law if the statute of limitations has not run out.

The Hon’ble Supreme court of India in Khoday Distilleries Limited vs. The scotch whisky association and others, bared challenge to “peter scot” on principles of acquiescence and/ or waiver.
 

Appellant i.e. Khoday Distilleries Limited hereinafter “Khoday” was a company incorporated under the Companies Act, 1956 and manufactured whisky under the mark “Peter Scot” since May, 1968.  Its application for registration of its mark was accepted and allowed to proceed with the advertisement, subject to the condition that the mark would be treated as associated with Reg. T.M. No.249226-B. The said trade mark was subsequently registered. Respondents came to know of the appellants mark on or about 20th September, 1974. They filed an application for rectification of the said trade mark on 21st April, 1986.  Appellant by way of affidavit explained coining of the mark “Peter Scot” where “Peter” was his father’s name and “Scot” was his nationality. Another factor behind the coining of this brand name was the internationally known British explorer, Captain Scott, and his son Peter Scott, who is widely known as an artist, naturalist and Chairman of the World Wildlife Fund. 
 

However, the application for rectification was allowed. The appellant then preferred an appeal before the High Court. One of the main ground of appeal was that in one of the affidavit filed on behalf of the respondents affirmed by Ian Barclay it was stated that the respondents were aware of infringement of mark as far back in 1974 but as no action was taken in relation thereto till 1986, therefore the application for rectification was barred under the principles of waiver and acquiescence.
 

A learned Single Judge of the High Court dismissed the said appeal and as regards the plea of acquiescence held that the acquiescence if it is to be made a ground for declining to rectify, must be of such a character as to establish gross-negligence on the part of the applicant or deliberate inaction which had regulated in the appellant incurring substantial expenditure or being misled into the belief that the respondents though entitled to, had deliberately refrained from taking any action and were unmindful of the use of the mark by the person in whose name it was registered and held that the facts of this case are not such as to warrant the conclusion that there has been acquiescence.
 

On an appeal a Division Bench of the High Court, dismissed the said appeal and appellant approached the Supreme Court against said order. 
 

Supreme Court relied on ratio laid down by Oliver, L.J., in Taylor Fashions Ltd. v. Liverpool Victoria Trustees Co. Ltd. [ (Note) [1981] 2 W.L.R.] 576

“Of course, estoppel by conduct has been a field of the law in which there has been considerable expansion over the years and it appears to me that it is essentially the application of a rule by which justice is done where the circumstances of the conduct and behaviour of the party to an action are such that it would be wholly inequitable that he should be entitled to succeed in the proceeding.”

Supreme Court observed that “Thus, in cases involving equity or justice also, conduct of the parties has also been considered to be a ground for attracting the doctrine of estoppel by acquiescence or waiver for infringement.”

The ratio laid down in M/s. Power Control Appliances and others v. Sumeet Research and Holdings, [(1994) 2 SCC 448 ] was relied, where Supreme Court held :-

26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White Sr. John Romilly said: It is important to distinguish mere negligence and acquiescence. Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill.

Supreme Court observed that the question again came up for consideration in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and others, [(2006) 8 SCC 726] wherein it was held :-

103. Acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allowing another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc.

The delay by itself, however, may not be necessarily a ground for refusing to issue injunction.

It was opined:-

106. The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lays by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief.

It was furthermore observed:-

108. Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. (See Spry on Equitable Remedies, 4th Edn., p. 433.)


Taking into considerations all peculiar facts of the case as well as precedents laid down by Supreme Court it was observed that stand of respondents to object to the evidence that was produced before the learned Single Judge with regard to the increase in the volume of sale of Peter Scot, on the other hand urging that if a comparison is made of the Indian whisky and Scotch Whisky it would appear that some Indian whiskies are costlier than some of the Scottish brands.  The stand taken by the respondents is self-contradictory and is not fair and Supreme Court was of opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver. 

 
As regards the question as to consideration is as to whether the use of the term Scot would itself be a sufficient ground to form an opinion that the mark Peter Scot is deceptive or confusing. The Supreme Court relied upon precedents operating in Australia and United States of America.

 
The Supreme Court observed that they are concerned with the class of buyer who supposed to know the value of money, the quality and content of Scotch Whisky. Who are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.  Trademark Registry, the learned Single Judge as also the Division Bench of the High Court, therefore, failed to notice the distinction, which is real and otherwise borne out from the precedents operating in the field. The SC further observed that had these tests been applied the matter might have been different.  In a given case probably SC would not have interfered but intend to do so only because wrong tests applied led to a wrong result. 

 
The Supreme Court allowed the appeal and dismissed the impugned judgement of High Court, thereby cancelling the rectification proceedings in respect of “Peter Scot’ mark abs reinstating the Registration in favour of Appellant.

Wednesday, October 16, 2013

Indian Patent office starts functioning as International Searching Authority and International Preliminary Examining Authority under the PCT

Since October 15, 2013 the Indian Patent office starts functioning as International Searching Authority and International Preliminary Examining Authority under the PCT


The fee for Search and Preliminary Examination is very reasonable. A Search with Indian Patent Office (IPO) could be done for as little as USD 40 (for Individual) and USD 160 for Companies. Similarly where IPO has chosen for Search, the Preliminary Examination could be done for as little as USD 40 (for Individual) and USD 160 for Companies, in other cases cost would  USD 60 (for Individual) and USD 200 for Companies.

The Fees and Charges are as follows: 

Kind of Fee or Charges
Amount (INR)
1Search fee (Rule 16.1(a))10000 (2500)"
2Additional fee (Rule 40.2(a))10000 (2500)"
3Protest fee (Rule 40.2(e) and 68.3(e))4000 (1000)"
4Late furnishing fee (Rule 13ter.1(c) and 13ter.2)4000 (1000)"
5Preliminary examination fee (Rule 58.1(b)):
 - where the international search report was issued by the Authority10000 (2500)"
 -in other cases12000 (3000)"
6Additional fee (Rule 68.3(a)):
 –where the international search report was issued by the Authority10000 (2500)"
 –in other cases12000 (3000)"
7Cost of copies (Rules 44.3(b), 71.2(b) and 94.2), per page4

Sunday, June 16, 2013

Suggestions to Draft Patent Amendment Rules 2013

Some of the suggestions and objections are general and may not have bearing to the draft Amendment Rules but to prevailing Patent Law/ practice/ procedure. Nothing wrong in earning more revenues but there are other ways through which they can earn. One would be fee for expedited examination of Patent Applications.

As forwarded to 'chandni.raina@nic.in' (chandni.raina@nic.in) on Fri 14/06/2013 11:15 AM

My objections are as follows:

No plausible reason has been provided for such steep increase in official fee when the Indian Patent offices are lagging in delivery of services. It takes 4-5 years for a Patent to be examined in India and by each passing year the pendency is increasing. Though there is no examination for 4-5 years from date of filing of request for examination, there is no extension provision if deadline for 48 months for filing request for examination is missed. When no apparent examination is to happen immediately after filing request for examination (and in fact it takes 4-5 years thereafter) , there should be provision for late fee or extension for filing request for examination. The increase in fee should come with accountability in services and a definite time frame should be provided for examination of the Application. Similarly an onus should be cast on Examiner to respond to any response to examination report within a fixed time or the response should be deemed to be appropriate and the Application should be granted within a definite time frame. This increase in fee works only for Govt. as Patents are Granted usually in their 6-8th years and without getting any exclusive rights over the Patent, the Patentee is to pay annuity for such period. There should be a provision for extension of term of Patent where the Patent was not examined timely (within 6-12 months) of filing request for examination.

The above draft amendment in Rules does not take into consideration the additional Govt. fee suggested under earlier draft Patent Amendment Rules 2010 where for some of the services (for which no fee is due as of now) e.g. filing of sequence listing of nucleotides and/ or amino acids. The fifth schedule that was proposed to be added under earlier draft Patent Amendment Rules 2010, there is no indication of fee for same here. Similarly in view of these draft amendments some of the provisions of draft Patent amendments Rules 2011 would be redundant and proposed amendments under those draft rules 2011 would be brought afresh especially concerning the formatting part of documents. 

The draft rules propose to add 10% surcharge for filing forms/ documents under physical mode. This is adding salt to injury. The e-filing platform is redundant as it supports only two banks namely SBI and Axis bank, therefore it cast a negative obligations for Applicant or its Agents/ Attorneys to have an account with said banks and only if they are capable of using the internet banking facility of those banks, they can file the Application or forms, where fee is payable. No. of banks have not been increased since last many years and this surcharge is nothing but to give monopolistic advantage to those two banks and Patent office. Even the income tax department has come to accept payment by no. of banks. In this age of plastic money there is no provision as to make payment by credit or debit cards.

USPTO is far more ahead when it comes of supporting e-filing system. They don’t require digital signature for filing documents, all they require is clean scanned copy of duly signed document. They accept payment by credit cards as well as Attorneys hold account with USPTO and all they have to do is provide a confirmation in writing (by electronic mode) to charge their account for due amount.

Levying such surcharge when the system supports bank accounts of only two banks is restrictive and arbitrary. The patent office should allow payment of fee through all banks that have been allowed license by the RBI and should not pick and choose and discriminate against any bank and their customers.

My suggestions are as follows:

-       Increase in fee should corresponds to answer-ability and accountability in Patent Prosecution which can be achieved in following manner
(A)   Patent Examination time frame to be brought to within 6 months from date of filing of Examination
(B)   Ensuring automatic publication of applications after 18 months, so that grant is not delayed for want of publication
(C)   Allowing late filing of request for examination, with subject to monthly increasing extension fee (to ensure timely compliance and at the same time, not to take away rights of Inventor/ Applicant for missing a deadline)
(D)  Adjusting the term of Patent where there is delay in examination of application within a stipulated time frame (within 6 months from filing request for examination)
(E)   After filing of response to examination report, there should be a definite timeline within which the Examiner should respond otherwise the objection should be deemed to have been withdrawn. 12 months deadline is maximum period available to Applicant, not to patent office.

-       Surcharge for filing documents physically should be done away with till more banks are made part of e-payment gateway, The surcharge should be levied only after increasing the no. of banks.
(A)   The no. of banks through which payment could be made should be enhanced, all leading private and nationalized banks should be made part of payment portal
(B)   Even payment should be allowed by Credit/ Debit cards


-       If E filing is coming into picture, the patent office based jurisdiction or application no. should be done away with. The examination report can be send by email to the Applicant/ Patent Attorney or by post by centralized Examination unit. If after considering the response, the Examination unit is still not convinced, they should mark case to any office of the Applicant/ Attorney choice and the Examiner of concerned unit/field therein should be allowed to discuss the invention/ objections with the Applicant/ Attorney and even hearing could be held with the Controller of said Patent office. This will bring uniformity in Patent examination, and time frame of examination would become identical across all Patent offices. This process is being followed for Trademark matters where examination is carried out at Mumbai TM Registry but afterwards reply to examination report and hearing etc. the Trademark Office is same where application was filed (cases are allotted from Mumbai TM Registry). 

Friday, June 14, 2013

India proposes to increase Patent fee by 100% under Draft Patent Amendment Rules 2013

Draft Patent Amendment Rules 2013 propose to increase the current Official fee of various Patent services by 100%. No plausible reason has been provided for such steep increase in official fee when the Indian Patent offices are lagging in delivery of services. It takes 4-5 years for a Patent to be examined in India and by each passing year the pendency is increasing. This move apparently appears to discourage the Applicants from filing and/or maintaining patents in India  and gradually reduce the pendency.

The above draft amendment in Rules does not take into consideration the additional Govt. fee suggested under earlier draft Patent Amendment Rules 2010 where for some of the services (for which no fee is due as of now) e.g. filing of sequence listing of nucleotides and/ or amino acids. The fifth schedule that was proposed to be added under earlier draft Patent Amendment Rules 2010, there is no indication of fee for same here. As there would be contradiction in fee applicable, it appears that the said draft amendments of 2010 have lost significance and proposed amendments under those draft rules 2010 would be brought afresh, especially concerning the official fee. Similarly in view of these draft amendments some of the provisions of draft Patent amendments Rules 2011 would be redundant and proposed amendments under those draft rules 2011 would be brought afresh especially concerning the formatting part of documents.  

The draft rules propose to add 10% surcharge for filing forms/ documents under physical mode. This is adding salt to injury. The e-filing platform is redundant as it supports only two banks namely SBI and Axis bank, therefore it cast a negative obligations for Applicant or its Agents/ Attorneys to have an account with said banks and only if they are capable of using the internet banking facility of those banks, they can file the Application or forms, where fee is payable. No. of banks have not been increased since last many years and this surcharge is nothing but to give monopolistic advantage to those two banks and Patent office. Even the income tax department has come to accept payment by no. of banks. In this age of plastic money there is no provision as to make payment by credit or debit cards.

USPTO is far more ahead when it comes of supporting e-filing system. They don’t require digital signature for filing documents, all they require is clean scanned copy of duly signed document. They accept payment by credit cards as well as Attorneys hold account with USPTO and all they have to do is provide a confirmation in writing (by electronic mode) to charge their account for due amount.


Levying such surcharge when the system supports bank accounts of only two banks is restrictive and arbitrary. The patent office should allow payment of fee through all banks that have been allowed license by the RBI and should not pick and choose and discriminate against any bank and their customers. 

Wednesday, May 29, 2013

Coca Cola Company Gets domain cokestudio.in

Delhi High Court restrained the defendant by a permanent injunction from using the trade marks COKE and/or COKE STUDIO of the COCA Cola Company as a domain name or part of the domain name, as a trade mark or part of a trade mark, a trade name or corporate name or as part of a trade or corporate name, as a metatag or otherwise on the internet or the world wide web, or in any other manner whatsoever so as to infringe the registered trade marks of the Coca Cola Company or pass off their business as and for the business of Coca Cola Company. Delhi high Court also issued direction to the National Internet Exchange of India c/o ISPAI (Internet Service Providers Association of India) and also to the Registrar of domain name M/s A to Z Domains Solutions Pvt. Ltd. to transfer the domain name cokestudio.in to the Coca Cola Company.

Tuesday, May 28, 2013

A composite suit for infringement of a registered design and a passing off action would not lie

Full bench of Delhi High Court on a reference held that:

(i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design (subsequent registrant). The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, no such words of limitation are found in said Section.

(ii) A plaintiff is entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.

While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.

(iii) A composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.


Passing off action can be instituted in case of Registered Design

Full bench of Delhi High Court on a reference held that:

(i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design (subsequent registrant). The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, no such words of limitation are found in said Section.

(ii) A plaintiff is entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.

While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.


(iii) A composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.

Previous Registrant of Design can file Infringement suit against subsequent Registrant

Full bench of Delhi High Court on a reference held that:

(i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design (subsequent registrant). The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, no such words of limitation are found in said Section.

(ii) A plaintiff is entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.

While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.


(iii) A composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.

Tuesday, May 14, 2013

Nothing FAIR In FRAND (Ericsson- Micromax Patent Litigation)

Ericsson filed patent infringement litigation against Micromax Informatics Ltd. and Mercury Electronics Ltd. for infringing its patents. Essentially these patents relate to use of speech codec (combination of speech coder and speech decoder) for coding the voice signal (in a compressed form) from the caller end and transmitting it via a radio link as coded/ compressed speech frames to the receiver end where it is decoded. Typically in a discontinuous transmission no coded speech frames are send while speaker is inactive. Here transmitter at regular interval sends speech parameter suitable for generation of comfort noise in the decoder.

Ericsson states in its patents that speech coders and decoders are conventionally provided in radio transmitters and radio receivers, respectively and cooperate to permit speech (voice) communications between a given transmitter and receiver over a radio link. A mobile phone is a conventional radio communication device comprising a Radio transmitter having a speech coder (for sending coded voice frames) and a radio receiver having a speech decoder.

Now various Patents that appear to have been asserted are discussed herein below:

Patent no. 203716 (IN/PCT/2001/00551/MUM): A method and apparatus for preserving perceptually relevant non-speech information in an audio signal

This intervention relates to method for first determining whether audio signal is considered to be speech or noise formation (well known) and then determining whether the audio signal includes non-speech information that is perceptually relevant to a listener and selectively overriding first determination of speech or noise in response to second.

The method (First IC) herein only determines and overrides determination carried under first step. It may either treat the non-speech information as to noise and non-relevant to listener or it may consider such non-speech information as relevant to listener. In both instances the claims are only determining and how they are determining it is not claimed at all. The first determination is prior art and consequent the second determination is nothing but an obvious determination, the moment there is determination as to audio signal as to speech or noise, the determination of relevancy begin then and there itself. Relevancy of such non-speech information is a subjective term and may vary from individual to individual.

The apparatus IC similarly refers to an apparatus that performs above method. Conventionally a mobile phone has all those components that are referred to in such an apparatus. Non tangible component such as audio signal are included therein in the apparatus. The Apparatus as such lacks novelty and is obvious for same reasons as the method claim.

The LPD in relation of above Patent was issued on January 8, 2007.

Patent no. 213723 (IN/PCT/2001/00552/MUM): Method and apparatus for generating comfort noise in a speech decoder

This invention from the title appears to relate to invention for generating comfort noise, but in effect all the claims of this Patent are identical to claims granted in above Patent.

The LPD in relation of above Patent was issued on February 1, 2008.

The International filing date is shown as November 12, 1999 in E-register of Patents, it is shown as November 8, 1999 in the LPD issued by Patent office. The Corresponding PCT Application no. is PCT/SE/1999/002073 (with International filing dated as November 12, 1999) and its national phase details on WIPO identify both Patent Application no. i.e. IN/PCT/2001/00551/MUM as well as IN/PCT/2001/00552/MUM. Apart from India the corresponding PCT national phase applications was filed twice only in South Africa as this is the country that lacks substantial examination system, but India does have substantial examination system, yet it granted identical claims in both Applications. The PCT claims are identical to claims granted in both Applications in India as available in respect of above Patent from Indian Patent office website. All these claims are silent about comfort noise generation as asserted by Ericsson.

It raises serious questions as to why identical Patents are granted to Ericsson in this matter, and raises serious questions about nature of Examination carried out by the Examiner concerned and Patent office.  

The Patent No. 213723 is very vital for Ericsson in the above litigation as it was the major claim asserted by Ericsson in their initial communication to Micromax alleging infringement. Ericsson had claimed that mapping of the above Patent (that time they did not identify the Patent no. but only the Patent Application no.) claims to the AMR speech codec and claimed that Micromax model X332 is capable to supporting AMR speech and can set up AMR speech class successfully. The claims identified in the said communication refer to different set of claims then what are made available by Patent office on their website or what was there on PCT Application when filed. Later on other Patents were also asserted but without any detailed mapping like the above Patent.      

The technology is stated to consume comparatively lesser bandwidth/space and allows the service provider to serve more customers at one point of time. This technology can also be used to cut off the noise from the caller side so that when decoded at receive side, the voice signal is clear and with least background noise. It   also suggest in one of the embodiment of invention, that some selective voice frames (dividing voice signal to frames/ sub frames), determining the noise frames and selectively avoiding transfer of such voice frames (to save lesser bandwidth and space and allowing telecom company to have more user at a time) and generating matching voice frames at the receiver end.. As the patent claims though claiming method and apparatus are essentially system based claims suggesting a particular method of performing the invention employing various components/ apparatus and not all of the apparatus may belong to the Ericsson. All these claims disclose is need and how this need can be fulfilled (receiving, coding and decoding), can be assumed by person skilled in art (I would say semi-skilled in art). It needs to be checked whether they have claimed how their coder and decoder function and if there is any novelty in such coder and decoder, considering Section 3(k) of the Indian Patents Act.

Their invention allow the telecom company to find out which one of the subscriber is using the technology and accordingly the telecom company would prefer those using the technology so that it can accommodate more subscribers at a time (those not using the technology would be dumped or asked to wait till the no. of active subscribers reduces).

Do we need to look at into who is the beneficiary of these inventions? First thing that comes into mind is telecom service provides and they are not included in this litigation (as they are already managing the telecom services of these service providers). An invention that requires involvement of at least two mobiles (subscribers) both equipped with coder and decoders and at least one telecom tower, can an infringement action lie against mobile company alone. The system and methodology is incomplete till all participants are involved. If an action can be performed collectively, then the liability should be collective in nature.       

Second, if Micromax happen to be honest and bonafide purchaser of Chip/ circuit board and it is within the express knowledge of the Ericsson that their technology (essential part is use of coding and decoding algorithms) is being manufactured and sold by said company (I believe it is also made one of the defendant in the suit). But Ericsson chose to ignore the small company as the royalty they would be getting there would be minimal compared to if they catch the mobile company (as cost of mobile would be higher than the chip/ circuit board).

The single bench of the Delhi High Court passed an ex parte interim order against Micromax and authorized seizure of documents from Micromax’s office regarding the sales and import of the mobile phones using said technology. Micromax preferred an appeal but the Divisional bench directed them to approach Single bench and approach only if they are not heard within 30 days as per the provisional of Law (CPC).  Constrained that their sale would be effected during the interregnum period, Micromax entered into an interim arrangement with the Ericsson. It appears that royalty rates are agreed between 1.25% to 2% of the sale price. The single bench referred the matter for meditation and Justice A.P. Shah (Retd.) was appointed as a mediator for proceedings.

Micromax should go against Ericsson for these 8 Patents and assertion of infringement. First of all, when they are rightful purchaser of the chip from a third party and had Ericsson sued that company alone their 1-2% royalty rates would be insignificant (as the cost of chip is comparatively low), so they come after the bigger guy to seek bigger royalty. This issue needs to be examined, is this suit bad for non-joinder for necessary party as telecom service provider is not made party here by Ericsson (question is can they make them parties randomly as it is in subscriber’s hand which telecom company they choose) and secondly can they assert patent infringement against Micromax just because some of their mobile have those chips which when used in a mobile together with communication system of service provider (at both end) makes a system that is actually claimed by Ericsson. In totality their so called system cannot work unless the signals are coded and decoded and it requires the chip with same technology at both ends (with hardware requirements of the service provider).

If this litigation is carried forward by Micromax, this could be a landmark judgment in evaluating system claims.

Wednesday, April 10, 2013

INDIA ALL SET TO JOIN MADRID SYSTEM FROM JULY 8, 2013



On April 8, 2013, India has become signatory to Madrid Protocol for International Registration of Marks at the World Intellectual Property Organisation. Currently there are 88 other member countries to Madrid System (Madrid Protocol and Madrid Agreement) for the international registration of trademarks. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which maintains the International Register of marks. The system will come into force in India in 3 months i.e. July 8, 2013.

Advantages of Madrid system is that it allows filing a single application, in one language to be filed with the trademark office of the home country to obtain protection in several countries. It guarantees on the period within which potential grounds of refusal to protect a mark can be raised by the offices of the designated countries. It allows a single request to record changes (transfers, changes of name or address, etc.) which may affect the registration as a whole or in part. A single request for renewal can be made.

Prerequisites for filing an International Application:
  • Existence of a registered or pending mark for same goods and service with “Office of origin” from where international application is to be filed.
  • Applicant must be person who has a real and effective industrial or commercial establishment or a domicile in, or who is a national of, one of the countries party to the Protocol.
  • Basic fee of 653 Swiss francs for black and white mark or 903 Swiss francs where the mark is in color
  • Name of the Countries where protection is sought must be listed in the international application. Additional countries can be designated at any time, provided they are party to the Protocol at the time of the designation. Such subsequent designations are useful where new countries accede to the Protocol or simply where the holder’s interest in a country develops after the international registration has been made.
  • Either a standard designation fee of 73 Swiss francs or an individual designation fee whose amount is fixed by the country concerned (but may not be higher than the amount that would be payable for registering the mark directly with the office of the country concerned, for example in respect of India the amount fixed by Trademark Registry cannot exceed INR 3500) for each designated country;

The Office of origin may charge a handling fee for forwarding the international application to the International Bureau. The fees are to be paid direct to the International Bureau although, in some cases, the Office of origin may collect and forward them.

A supplementary fee of 73 Swiss francs is payable for each class of goods and services beyond the third class.  This supplementary fee is payable only if there are one or more countries designated with standard designation fee. Accordingly if all the countries designated are ones in respect of which an individual designation fee is payable, no such supplementary fee is payable.
An international application can be filed in any one or more language amongst English, French or Spanish as the Office of origin may restrict.

It is also possible to claim priority in an International Application from a first national or regional application, by filing the International Application within six months of the filing of that first application.

The Office of origin then forwards the international application to the International Bureau of WIPO. The office of origin has to supply the International Application to WIPO with all essential details within 2 months of filing. The Office of Origin has to certify that the mark in the international application is the same as in the basic application or registration, that the applicant is the same person as the owner of the basic application or registration and that the goods and services listed in the international application are covered by those listed in the basic application or registration. The International registration bears the date on which the international application was filed with the Office of origin.

The International Bureau checks that all the filing requirements are met and that the goods and services are correctly classified. If so, the mark is recorded in the International Register. The International Bureau then notifies the international registration to the Offices of the designated countries. The International Bureau does not examine whether the mark as such qualifies for protection, or whether an identical or similar mark has already been registered; that is to be examined by the respective Offices of the designated countries.

From the date of the international registration, the protection of the mark in each of the designated countries is the same as if the mark had been the subject of an application filed direct with the Office of that country. If no refusal is notified within the prescribed time limit, the protection of the mark in each designated country is the same as if the mark had been registered by the Office of that country. The Office of a designated country has the right to refuse protection of a mark in the territory of that country. Refusal may be made on any of the grounds on which an application for registration filed direct with that Office might be refused. Refusal is notified to the International Bureau and recorded in the International Register.

Normally, any refusal must be issued within 12 months from the date on which the Office concerned was notified of such designation. By making a declaration, a country may extend this time to 18 months. Similarly, by making a declaration, a refusal based on opposition may be issued after expiry of 18 months period, but in that case the country must notify the International Bureau about possibility of such opposition within 18 months. It allows holder of an international registration to know whether his mark has been accepted for protection in each of the designated countries, or whether protection has been refused in one country or whether there is still a possibility of refusal on the basis of an opposition in a particular country.

The holder has the same right to contest the refusal with the Office that issued it as if the mark had been deposited direct with that Office. It is advisable to hire services of Local Attorneys within such jurisdiction to attend to the objections/ refusal, who may guide the holder as to local provisions and practices to counter such objections/ refusals. If the refusal relates to only few of the goods and services listed in the international registration, and the refusal is not contested and/or contest is not successful, the mark stands protected for the remaining goods or services, without any action being needed on the part of the holder. In India typically objections in relation to one class is not only based on identical-ness or similarity of goods or services, but mainly because of existence of another identical or deceptively similar mark in same class, there objection has to construed as objection to such entire class.   

The international registration shall be dependent on the application or registration with the Office of origin (the “basic application” or “basic registration”) for the first five years. After the end of the five-year period, the international registration becomes independent of the basic application or basic registration. It is the period within which the basic application is subject to “central attack”. If, during the first five years following the date of the international registration, the basic application is refused or withdrawn, or the basic registration is canceled, the international registration must also be canceled. This is also the case if the basic registration is refused after the end of this five-year period as a result of an action begun within that period. If the refusal or withdrawal of the basic application or cancellation of the basic registration is for only some of the goods or services, the cancellation of the international registration will likewise be partial and limited to those goods or services.

Duration of an international registration is ten years from date of filing or priority. It is further renewable for periods of ten years each, on payment of requisite fees to the International Bureau.

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