SALIENT FEATURES OF PATENT AMENDMENT RULES 2024

 

1.     Form 1 amended to provide gender and age of Applicant and inventors as well as email and phone no. of Applicant. For natural person, mentioning of age is not mandatory.

2.     Form 3: Statement and Under taking as to corresponding Foreign Applications. First Form 3 is to be filed within 6 months as usual. If raised as objection in FER, it needs to be filed within 3 months.  The Controller can use the accessible and available databases, for considering the information relating to applications filed in a country outside India and for reasons recorded in writing. The Controller can demand fresh statement and undertaking on Form 3 within 2 months. Controller has power to condone delay up to 3 months on request being made on Form 4.

3.     Divisional Application: Rule 13 (2A) introduced which gives option to file further applications to Applicant in respect of invention disclosed in complete or provision specification or even on the basis of a further application already filed (divisional or divisional).

4.     Request for Examination: in respect of Application filed on or after March 15, 2024, the request for examination needs to be filed within 31 months from earliest priority (earlier time was 48 months).

5.     Grace Period (Form 31): where application anticipated by public display, provision made for filing application for Patent within 12 months of such pubic display.

6.     Pre- Grant Opposition: As per amended Sub Rule 3 of Rule 55, the Controller has to first consider if prima facie case made out. If no prima facie case made out, notify the Opponent and provide hearing if requested and pass order recording grounds of refusal of representation within one month of such hearing, if no hearing is requested, then order recording grounds of refusal is to be passed within one month of such notification to Opponent If a prima facie case is made out, within one month of receiving representation, Controller to pass order and notify the applicant.  Applicant to file its statement and evidence within 2 months (Earlier 3 month time).

7.     Post Grant Opposition. As per amended Sub Rule 4, of Rule 56, the Opposition board to submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within 2 months (Earlier 3 month time) from the date on which the documents were forwarded to them.

8.     Certificate of Inventorship. As per the new rule 70A provision introduced for “Certificate of inventorship” on filing request on Form 8A with prescribed fee (900 e-filing or 1000 physical filing).

9.     Reduction in Annual fee if paid in advance: If annual fee is paid in advance of more than 4 years a discount of 10% shall be applicable.

10.  Form 27: Statement as to working of Patents to be filed for every 3 financial years (instead of every financial year). 3 months condonation of delay or extension possible on filing request on Form 4.

11.  Power of Controller Generally. Power of Controller under Rule 137 (Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct) now subject to newly introduced sub-rule (2) i.e. The provisions contained in sub-rule (1) shall be not be applicable for matters related to- (i) extension of time or condonation of delay under sub-rule (5) of rule 12; (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21; (iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of rule 24C; (vi) sub-rule (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii) sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.”

12.  Power to extend time prescribed: The Controller’s power to extend time and condone delay now not subjected to the specific provisions (that provides specific timelines-  clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130). Notwithstanding anything contained in these rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request made in Form 4, where such request is made before the expiry of the said period of six months: Provided that such request may be made any number of times within the specified period of six months.

Use of registered marks on the Google Ads Program as keywords amounts to trademark infringement and constitutes passing-off: Delhi High Court

 

In the matter of Makemytrip India Private Limited vs Booking.com B. V. & Ors., vide its order dated 27th April 2022, Justice Pratibha M. Singh of Delhi High Court granted injunction in favour of Make My Trip (hereinafter “MMT”.

MMT had filed the suit seeking protection of its registered trademarks 'MakeMyTrip' and its variants used by Booking.com B.V. as keywords on the Google Ads Program for promoting its services as advertisements when search results are displayed on the Google search engine. The contention of MMT was that when a search is carried out for 'MakeMyTrip' in the Google search bar, quite often the first advertisement which is displayed in the search results in the advertisement category is that of Booking.com, who is one of the major competitors of MMT. According to MMT, such use of its registered mark would constitute infringement, especially when done by its competitor such as booking.com.

 

Booking.com relied on the judgment of the European Commission in Case AT.40428-GUESS dated 17th December, 2018 (“Guess” judgement), that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword, including by competitors. Booking.com contended that apart from conducting business in India, it is also a global player in the area of providing hotel bookings, airline bookings etc. An injunction restraining it from bidding on the trade mark of MMT would put it in contravention of the law of other foreign jurisdictions such as the European Union. Therefore, it ought to be permitted to file a reply in this matter, before any order is passed. It further contended that any restriction which may be put on the use of MMT’s mark 'MakeMyTrip' as a keyword through the Google Ads Program would be contrary to competition law. It was finally contended that the words 'make', 'my', 'trip' can be used in a generic and descriptive fashion, which in any case ought not to be injuncted in view of Sections 34 and 35 of the Act. 

Court observed that the factual background of the present case is distinct from those in the judgment of the European Commission in “Guess” case/judgement. The European Commission was concerned therein with a case where authorised distributors and retailers of 'GUESS' products were contractually being prevented from using 'GUESS' brand names and trademarks as keywords or bidding on the Google Ads Program. Court observed that the European Commission was dealing with 'intra-brand' competition and partitioning national markets, being restricted contractually. In the case at hand, the facts are entirely different as MMT seeks to restrict Booking.com, which is its competitor, from using its mark as a keyword through Google Ads Program.

Court observed that as per Kerly's Law of Trade Marks and Trade Names (15th Ed., p.628 & 629) a third party bidding on trademarks as sponsored keywords for use by internet search engines can constitute misrepresentation. The "invisible" use of a mark as a keyword (metatag) can constitute passing off as a matter of principle.

Court was prima facie of the opinion that the use of MMT 's registered mark 'MakeMyTrip' on the Google Ads Program as a keyword amounts to trademark infringement and would be detrimental to MMT's monetary interest. Court opined that it is not permissible to allow competitors such as Booking.com and even Google to encash upon the reputation of MMT's mark for their own monetary advantage.

Court restrained Booking.com as well as Google from using the mark 'MakeMyTrip' together/ in conjunction, with or without spaces for the purpose of using it as a keyword on the Google Ads Program till the next date of hearing.

Being conscious of global repercussion of the interim injunction, court also clarified that the injunction shall be restricted to the territory of India and granted one week’s time to Booking.com and google to comply with/implement the order.

Extended date to file Opposition against any trademark published from Journal No. 1928 dated 18/11/2019 to Journal No. 2036 dated 24/01/2022

The Office of CGPDTM, Mumbai, Govt of India public notice dated March 28, 2022 in compliance to the direction of the Hon’ble High Court, Delhi under Order dated 21/03/2022 in the matter of W. P. (C) IPD 4/2022 & CM 27/2022 & Others. has clarified that any person who wishes to file an opposition against any trademark published from Journal No. 1928 dated 18/11/2019 to Journal No. 2036 dated 24/01/2022 (both inclusive, irrespective of status of the application whether it be registered / opposed / accepted & advertised /advertised before acceptance) may submit the same in the respective jurisdictional office of the Trade marks  registry either through hand or post as to reach to registry office on or before May 30, 2022

Trademark Registation in Myanmar

The Parliament of Myanmar has passed the Myanmar Trademark Law on January 30, 2019. Myanmar is making efforts to commence the new Trademark system by replacing the current practice of registration of Trademarks by registration of Deeds of Trademark Ownership Declaration with the Office of the Registration of Deeds. 

 The Intellectual Property Office (IPO) of Myanmar will be established under the Ministry of Commerce of Myanmar.

The trademark system will recognize existing trademark registrations, for that the IPO of Myanmar will commence a “soft-opening” period starting from January 2020 for these existing trademark registrations to be re-filed within six (06) months on a first-to-file principle.  

Fresh Trademark Applications can only be filed after above period is over i.e. tentatively July 1, 2020.

There is no bar to secure registration by earlier method till then and therefore it is possible to file new applications under the existing system (as decaration of ownernship) before December 31, 2019 and re-filing the said applications on and after January 1, 2020 to take advantage of first to file rule. 

The Trademark Applications shall be processed for formality and substantive examiantion. The requisition as to documents and fee is yet to be finalised. 

Patent Amendment Rules 2019

With effect from September 17, 2019, Patent Amendment Rules, 2019 have been notified.

The Rule 24 (C) has been amended to include 8 other types of categories (3 to 10 as mentioned below) where expedited examination would be available.

Now the expedited examination is possible for following cases:

1. Where Indian is indicated as ISA or elected as IPEA in corresponding PCT Application
2. If Applicant is start up
3. If Applicant is small entity
4. If Applicant/s is/are natural persons/ and at least one of them is female
5. If Applicant is Govt Department
6. If Applicant is an institution established by a Central, Provincial or state Act, and which is owned or controlled by the Govt.
7. If Applicant is Govt company
8. If Applicant is an institution wholly or substantially financed by the Govt.
9. If invention pertains to a notified sector
10. If there is an agreement with a foreign patent office and Applicant is eligible under such arrangement

There is no distinction between Indian or Foreign Applicant and the Rules are applicable to any foreign applicant too. The requisite documents have also been indicated where ever possible. Two categories (9 and 10) would not come into force immediately and appropriate notification would be issued from time to time for priority sector as policy need or agreements would be signed for reciprocal arrangements with foreign patent office to extend similar benefits to Indian Applicant. 

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 convention or ordinary application in India. For example, there was no limitation as to no. of goods or services in the description for Madrid filing, while those entering India otherwise were to pay for each additional character beyond 500 characters excluding space. Further, there was no mandate for payment of association fee, while other applicants with prior applications were to pay association fee for each of their prior application. Other advantage of course was saving the attorney fee and centralisation of trademark portfolio.

But since the Trademark Amendment Rules 2017 have been notified from March 6, 2017, the disparity as to misc. fees for extra characters and association fee has been removed. Now even for direct Application into India otherwise than Madrid route, there is no limit as to description of goods or services. 

However, the major advantage a direct filer has as compared to Madrid filing, is the examination, the direct applications are examined within a month of filing, whereas for Madrid Application it takes time for designation, allocation of IRDI no., examination of application and then communication of Provisional refusal if any to the Applicant. The time lapse is so big that where one has filed two applications for same mark on same day, one through Madrid and one direct, it is possible that one may get a registration certificate for its direct application before Madrid Application is examined.

There may be repercussions where two or more entities are adopting the same mark simultaneously and are coming to India through different routes. One other major disadvantage of Madrid system qua India is that it does not allow Applicants to claim user date, where a direct Applicant in India may file an application along with user affidavit/ evidence and where user is substantial and prior than the cited marks, on basis of same, the application may be allowed to proceed to registration, even where similar marks are on register. 

Unlike the direct Trademark applications which are allowed with some disclaimer and limitations, the Indian Trademark Registry has not yet started allowing the Madrid designated applications with disclaimer or limitation. They are either accepted in totality or objections are retained.

Besides watch services for conflicting marks that are usually offered by all major IP firms in India would be big issue, in absence of instructions Applicant would not be aware if some mark conflicting to its mark is sought to be registered in India.

Considering pros and cons, direct filing still looks more beneficial, where brand owners have substantial stake in the marks.

Trademark Amendment Rules 2017

Trademark Amendment Rules 2017 have been notified from March 6, 2017. The positive feature of amendment is that now only few forms are applicable for various proceeding. The dichotomy in practice where ordinary Applicant was supposed to pay for extra character beyond 500 characters as well as association with earlier mark (whereas those entering through Madrid were exempted), is done away with.

The drawback is Govt fee has been increased  up to 125% for various services. But the impact is minimum for natural persons, small entity and start ups where increase in fee is only 12.5% for e-filing and 25% for physical filing.

The provision as to declaration of a mark as well known mark on payment of fee by Registry is somehow controversial provision, as earlier only the Court and IPAB were vested with such powers. Now it needs to be seen what marks are declared as well known by registry. If used carefully, this provision may save substantial costs towards infringement and passing off action, as such declaration would come handy for the holders of well known mark. However, the Trademark Registry is insisting on evidence in support so that a reasoned order could be passed after assessing all the claims and information provided by the claimant.

Besides the above amendments the TM Registry has reduced the examination time to 1-2 months for newly filed applications. Where user is claimed, a duly notarised affidavit in support of the user is to be filed for claiming the user date.