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.

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.

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.