Polo (label with device of polo player) and GE monogram declared well known
November 19, 2012
Polo does one chakkar
Pursuant to decisions by Delhi High Court in December 2011 wherein the marks Polo (label with device of polo player) and GE monogram were declared well known, the Controller General of Patents Designs and Trade Marks has issued notification that the two trademarks be added to the Register of Well known Trade Marks maintained by the Trade Marks Registry. The marks have been declared well known trade marks within the meaning of Section 11 (8) of the Trade Marks Act, 1999.
At present there are 56 declared well known trade marks on the Register of Trade Marks. The complete list can be accessed here.
Special drive initiated for disposal of oppositions and rectifications by Indian Trade Marks Registry
November 14, 2012
Controller General of Patents Designs and Trade Marks has issued a notice that a special drive has been initiated for disposal of oppositions and rectification on the basis of requests for withdrawal is made in these cases. The link can accessed here.
The relevant dates are as below:
November 30, 2012: In order to expedite the orders for clearing these oppositions/rectifications, the Trade Marks Registry requires to be communicated with information regarding the case number, date of request and other such relevant details
17 December 2012 to 21 December 2012: these cases shall be appointed before the nominated officers on these dates
Therefore, if there are any matters that are pending registration despite of the withdrawal letter or settlements being entered between parties, then this is a good opportunity to expedite such registrations.
A "Billion" reasons -Apple wins against Samsung in USA
August 27, 2012
In the much highlighted in battle of tech giants Apple and Samsung, Samsung Electronics has suffered a body blow as the Jury found that except for one patent, Samsung infringes all seven patents of Apple.On the counter claim of Samsung, the jury has found that none of the patents of Samsung were infringed by Apple's iPhone and iPad tablet. A nice comparative chart is provided here at WSJ website.
Qatar now receiving PCT applications
August 14, 2012
CPIPR (The Centre for Protection of Intellectual Property Rights), Qatar has is now competent to receive the National Phase Patent applications under the Patent cooperation Treaty (PCT). This is significant move since now Qatar joins the significant ranks of countries under the aegis of PCT.
CGPDTM makes available the list of pending applications & granted patents in the field of Food & Pharmaceuticals
August 13, 2012
The Controller General of Patents, Designs and Trade Marks has issued list of Patents granted in the field of Food from 1-1-2009 to 31-12-2011 and list of Patents granted in the field of Pharmaceuticals from 1-1-2009 to 31-12-2011. The complete list can be accessed here.
European Patent Office revokes European patent EP 1 604 700 of
B. Braun Melsungen AG, in opposition proceedings
initiated by Poly Medicure Ltd.
July 24, 2012
By the decision of 4 July 2012, the Opposition Division of the European Patent Office revoked the European patent EP 1 604 700 issued to the German company B. Braun Melsungen AG. The application, based on which the revoked patent was granted, had been transferred from the former applicant Injectimed Inc. to the actual patentee B. Braun Melsungen AG.
Poly Medicure Ltd., India, initiated post grant opposition proceedings with the European Patent Office against this patent. In these opposition proceedings, the Opposition Division of the European Patent Office considered detailed submissions of the patentee and the opponent as well as plural expert opinions. In oral proceedings the Opposition Division decided that the patent was inadmissibly extended beyond the scope of the original disclosure of the patent application as filed. The patentee is entitled to file an appeal against this decision.
The German company B. Braun Melsungen AG has asserted the European patent EP 1 604 700 in plural European countries against competitors’ products. Poly Medicure Ltd. is one of the defendants in these litigation proceedings. Besides pointing to the technical differences between the features of the attacked products and the asserted patent, Poly Medicure Ltd. took the position that the asserted European patent EP 1 604 700 is also not valid. This holding was confirmed by the recent decision of the European Patent Office.
PCT-THIRD PARTY OBSERVATION SERVICE
July 16, 2012
Until now, the only people involved in the international phase of the PCT have been the applicant and the Offices conducting the various aspects of processing (receiving Office, International Bureau and International Searching and Preliminary Examining Authorities).
PCT has now included “third party observation service” which now permits third parties to make certain observations on an international application during the international phase if they believe that the claimed invention is either not new (lacks novelty) or is obvious (lacks inventive step). This service offers an effective way for third parties to bring relevant prior art to the attention of applicants, International Authorities and designated Offices during the international phase of PCT processing.
The key points of the service are as follows:
· Observations on an IA can be submitted from the international publication date until 28 months from the priority date using the third party observation service.
· A person may only make a single observation on any particular IA.
· A maximum of ten observations may be submitted on any particular IA.
· An observation consists of a list of at least one and up to a maximum of ten citations that refer to documents published prior to the international filing date (or patent documents having a priority date before the international filing date), together with a brief indication of how each one is considered to be relevant to the novelty or inventive step of the claimed invention.
· Preferably, the observation should be accompanied by a copy of each relevant cited document, which will be made available to the applicant and Offices, but will not be made publicly available on PATENTSCOPE.
· The applicant is permitted to respond to observations by third parties until 30 months from the priority date, but is not required to do so. This can be done either through ePCT private services or by sending a letter to the International Bureau.
· The observations and any responses by the applicant will be notified to the applicant, ISA (if the international search report has not yet been received by the IB), IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and DOs.
· It is up to the individual Offices to decide what use to make of an observation. The person who submitted the observation does not have any additional right to intervene in the processing of the international application, save what may be possible in the national phase through opposition and similar procedures.
· The observations (excluding copies of cited documents) and any responses by the applicant will be made publicly available on PATENTSCOPE.
The Controller General issues order granting Compulsory License in the matter of NATCO Vs. BAYER
March 15, 2012
In the first case of its kind the Controller General of Designs, Patents and Trade Marks has granted a compulsory license under section 84 of the Indian Patents Act, 1970 to Natco Pharma Ltd in patent no. 215758 of Bayer Corporation. Read the full judgment here
© VUTTS & ASSOCIATES, ADVOCATES 2012
Business Methods are not patentable in India-IPAB Rule against Yahoo, Inc
January 22, 2012
Intellectual Property Appellate Board (IPAB) has given the first decision in India involving patentability of business method patents. The case Yahoo, Inc. vs. Assistant Controller of Patents OA/22/2010/PT/CH is a very important development in denying the non-ptentibility of pure business methods as envisaged under Section 3(k) of the Indian Patents Act, 1970. It is interesting that Yahoo, Inc. was able to overcome the objections of novelty and non-obvious except the objection under Section 3(k) and hence the appeal is dismissed.
The Bench also noted and indicated that the the four Indian Patent Office must follow standard practices- "... it cannot be disputed that there should be a uniform practice, when similar inventions come up for grant of patent. There cannot be conflicting positions. If indeed the Patent Office had been adopting different standards, it is not desirable. If the patents granted to Google suffer from the same vice of S.3 (k) then as and when the question arises, it will be dealt with. But we cannot allow this appeal, ignoring the patentability bar merely because it is alleged that in other cases erroneous decisions have been issued. We cannot examine the correctness of those grants in the absence of that patentee."
© VUTTS & ASSOCIATES, ADVOCATES 2012
English Wikipedia anti-Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA) blackout on January 18, 2012
January 18, 2012
Wikipedia community announced that it will black out the English-language Wikipedia for 24 hours, worldwide, beginning at 05:00 UTC on Wednesday, January 18 as a protest against proposed legislation in the United States — the Stop Online Piracy Act (SOPA) in the U.S. House of Representatives, and the PROTECT IP Act (PIPA) in the U.S. Senate. According to Wikipedia if the Acts are passed, they would seriously damage the free and open Internet, including Wikipedia. Below is the statement issued by Wikimedia Foundation-
“To: English Wikipedia Readers and Community
From: Sue Gardner, Wikimedia Foundation Executive Director
Date: January 16, 2012
Today, the Wikipedia community announced its decision to black out the English-language Wikipedia for 24 hours, worldwide, beginning at 05:00 UTC on Wednesday, January 18 (you can read the statement from the Wikimedia Foundation here). The blackout is a protest against proposed legislation in the United States — the Stop Online Piracy Act (SOPA) in the U.S. House of Representatives, and the PROTECT IP Act (PIPA) in the U.S. Senate — that, if passed, would seriously damage the free and open Internet, including Wikipedia.
This will be the first time the English Wikipedia has ever staged a public protest of this nature, and it’s a decision that wasn’t lightly made. Here’s how it’s been described by the three Wikipedia administrators who formally facilitated the community’s discussion. From the public statement, signed by User:NuclearWarfare, User:Risker and User:Billinghurst:
It is the opinion of the English Wikipedia community that both of these bills, if passed, would be devastating to the free and open web. Over the course of the past 72 hours, over 1800 Wikipedians have joined together to discuss proposed actions that the community might wish to take against SOPA and PIPA. This is by far the largest level of participation in a community discussion ever seen on Wikipedia, which illustrates the level of concern that Wikipedians feel about this proposed legislation. The overwhelming majority of participants support community action to encourage greater public action in response to these two bills. Of the proposals considered by Wikipedians, those that would result in a “blackout” of the English Wikipedia, in concert with similar blackouts on other websites opposed to SOPA and PIPA, received the strongest support. On careful review of this discussion, the closing administrators note the broad-based support for action from Wikipedians around the world, not just from within the United States. The primary objection to a global blackout came from those who preferred that the blackout be limited to readers from the United States, with the rest of the world seeing a simple banner notice instead. We also noted that roughly 55% of those supporting a blackout preferred that it be a global one, with many pointing to concerns about similar legislation in other nations. In making this decision, Wikipedians will be criticized for seeming to abandon neutrality to take a political position. That’s a real, legitimate issue. We want people to trust Wikipedia, not worry that it is trying to propagandize them.
But although Wikipedia’s articles are neutral, its existence is not. As Wikimedia Foundation board member Kat Walsh wrote on one of our mailing lists recently,
We depend on a legal infrastructure that makes it possible for us to operate. And we depend on a legal infrastructure that also allows other sites to host user-contributed material, both information and expression. For the most part, Wikimedia projects are organizing and summarizing and collecting the world’s knowledge. We’re putting it in context, and showing people how to make to sense of it. But that knowledge has to be published somewhere for anyone to find and use it. Where it can be censored without due process, it hurts the speaker, the public, and Wikimedia. Where you can only speak if you have sufficient resources to fight legal challenges, or if your views are pre-approved by someone who does, the same narrow set of ideas already popular will continue to be all anyone has meaningful access to. The decision to shut down the English Wikipedia wasn’t made by me; it was made by editors, through a consensus decision-making process. But I support it.
Like Kat and the rest of the Wikimedia Foundation Board, I have increasingly begun to think of Wikipedia’s public voice, and the goodwill people have for Wikipedia, as a resource that wants to be used for the benefit of the public. Readers trust Wikipedia because they know that despite its faults, Wikipedia’s heart is in the right place. It’s not aiming to monetize their eyeballs or make them believe some particular thing, or sell them a product. Wikipedia has no hidden agenda: it just wants to be helpful.
That’s less true of other sites. Most are commercially motivated: their purpose is to make money. That doesn’t mean they don’t have a desire to make the world a better place — many do! — but it does mean that their positions and actions need to be understood in the context of conflicting interests.
My hope is that when Wikipedia shuts down on January 18, people will understand that we’re doing it for our readers. We support everyone’s right to freedom of thought and freedom of expression. We think everyone should have access to educational material on a wide range of subjects, even if they can’t pay for it. We believe in a free and open Internet where information can be shared without impediment. We believe that new proposed laws like SOPA and PIPA, and other similar laws under discussion inside and outside the United States — don’t advance the interests of the general public. You can read a very good list of reasons to oppose SOPA and PIPA here, from the Electronic Frontier Foundation.
Why is this a global action, rather than US-only? And why now, if some American legislators appear to be in tactical retreat on SOPA?
The reality is that we don’t think SOPA is going away, and PIPA is still quite active. Moreover, SOPA and PIPA are just indicators of a much broader problem. All around the world, we're seeing the development of legislation intended to fight online piracy, and regulate the Internet in other ways, that hurt online freedoms. Our concern extends beyond SOPA and PIPA: they are just part of the problem. We want the Internet to remain free and open, everywhere, for everyone.
Make your voice heard!
On January 18, we hope you’ll agree with us, and will do what you can to make your own voice heard. Sue Gardner,Executive Director, Wikimedia Foundation __
Move it or lose it!
January 16, 2012
"The Indian Express", the well known newspaper, has not succeeded in stoping its breakway from using "New Indian Express". Primarily, the mistake by Indian Express was that it had acquiesced to the use of " New Indian Express". The lesson is that if you are aware in a violation/infringement of your IP rights, then immediately take steps. The full judgement can be accessed by clicking here.
New Rules for filing trade mark applications
January 12, 2012
The Controller General of Patents, Designs and Trade Marks vide CG/F/Public Notice/2011/ 81 dated January 9, 2012 has issued a public notice requiring that the all new trade mark application are filed with following information, namely:
1. Actual description of Goods /Services in respect of which the trade mark is proposed to be used or has been used should be mentioned and terms like "all goods/ services", "etc", "all other goods/ services included in class ", "goods/services not limited to" shall not be entertained.
2. The names of proprietors in case of proprietorship firm, the names of all partners in case of partnership firm, name of managing trustee in case of Trust and name of person representing the society in case of Society, should be mentioned.
3. In case of 'User' of the trade mark the actual date, month and the year should be given and not just the year and/or the month.
4. Proper translation/transliteration of the trade mark should be provided in case of Non-English / Hindi characters appearing in the mark.
5. The trade mark should be clearly visible
If any or all of the above requirements are not complied with, the trade mark applications will not be processed.
© VUTTS & ASSOCIATES, ADVOCATES 2012
_Supreme Court of India lays down guidelines for ex-parte injunctions
August 7, 2011
The Apex Court of India-The Supreme Court of India-on July 4, 2011 in Ramrameshwari Devi & Ors. vs Nirmala Devi & Ors. has laid down guidelines for the grant of ex parte orders. The guidelines are positive and are listed as below:
(a) Usually the court should be cautious and extremely careful while granting ex-parte ad interim injunctions or stay orders. Ordinarily short notice should be issued to the defendants or respondents and only after hearing concerned parties appropriate orders should be passed.
(b) The better course for the court is to give a short notice and in some cases even dasti notice, hear both the parties and then pass suitable biparte orders. Experience reveals that ex-parte interim injunction orders in some cases can create havoc and getting them vacated or modified in our existing judicial system is a nightmare. Therefore, as a rule, the court should grant interim injunction or stay order only after hearing the defendants or the respondents and in case the court has to grant ex-parte injunction in exceptional cases then while granting injunction it must record in the order that if the suit is eventually dismissed, the plaintiff or the petitioner will have to pay full restitution, actual or realistic costs and mesne profits.
(c) If an ex-parte injunction order is granted, then in that case an endeavour should be made to dispose of the application for injunction as expeditiously as may be possible, preferably as soon as the defendant appears in the court.
(d) It is also a matter of common experience that once an ad interim injunction is granted, the plaintiff or the petitioner would make all efforts to ensure that injunction continues indefinitely. The other appropriate order can be to limit the life of the ex-parte injunction or stay order for a week or so because in such cases the usual tendency of unnecessarily prolonging the matters by the plaintiffs or the petitioners after obtaining ex-parte injunction orders or stay orders may not find encouragement.
(e) It must be dispelled the common impression that a party by obtaining an injunction based on even false averments and forged documents will tire out the true owner and ultimately the true owner will have to give up to the wrongdoer his legitimate profit.
(f) It is also a matter of common experience that to achieve clandestine objects, false pleas are often taken and forged documents are filed indiscriminately in our courts because they have hardly any apprehension of being prosecuted for perjury by the courts or even pay heavy costs. In Swaran Singh v. State of Punjab (2000) 5 SCC 668 this court was constrained to observe that perjury has become a way of life in our courts. It is a typical example how a litigation proceeds and continues and in the end there is a profit for the wrongdoer.
(g) Pleadings are foundation of the claims of parties. Civil litigation is largely based on documents. It is the bounden duty and obligation of the trial judge to carefully scrutinize, check and verify the pleadings and the documents filed by the parties. This must be done immediately after civil suits are filed.
(h) The Court should resort to discovery and production of documents and interrogatories at the earliest according to the object of the Act. If this exercise is carefully carried out, it would focus the controversies involved in the case and help the court in arriving at truth of the matter and doing substantial justice.
(i) Imposition of actual, realistic or proper costs and or ordering prosecution would go a long way in controlling the tendency of introducing false pleadings and forged and fabricated documents by the litigants. Imposition of heavy costs would also control unnecessary adjournments by the parties. In appropriate cases the courts may consider ordering prosecution otherwise it may not be possible to maintain purity and sanctity of judicial proceedings.
(j) The Court must adopt realistic and pragmatic approach in granting mesne profits. The Court must carefully keep in view the ground realities while granting mesne profits.
(k) Litigants who obtained ex-parte ad interim injunction on the strength of false pleadings and forged documents should be adequately punished. No one should be allowed to abuse the process of the court.
(l) The principle of restitution be fully applied in a pragmatic manner in order to do real and substantial justice.
(m) Every case emanates from a human or a commercial problem and the Court must make serious endeavour to resolve the problem within the framework of law and in accordance with the well settled principles of law and justice.
(n) If in a given case, ex parte injunction is granted, then the said application for grant of injunction should be disposed of on merits, after hearing both sides as expeditiously as may be possible on a priority basis and undue adjournments should be avoided.
(o) At the time of filing of the plaint, the trial court should prepare complete schedule and fix dates for all the stages of the suit, right from filing of the written statement till pronouncement of judgment and the courts should strictly adhere to the said dates and the said time table as far as possible. If any interlocutory application is filed then the same be disposed of in between the said dates of hearings fixed in the said suit itself so that the date fixed for the main suit may not be disturbed.
(p) According to us, these aforementioned steps may help the courts to drastically improve the existing system of administration of civil litigation in our Courts. No doubt, it would take some time for the courts, litigants and the advocates to follow the aforesaid steps, but once it is observed across the country, then prevailing system of adjudication of civil courts is bound to improve.
(q) While imposing costs the courts have to take into consideration pragmatic realities and be realistic what the defendants or the respondents had to actually incur in contesting the litigation before different courts. The courts have to also broadly take into consideration the prevalent fee structure of the lawyers and other miscellaneous expenses which have to be incurred towards drafting and filing of the counter affidavit, miscellaneous charges towards typing, photocopying, court fee etc.
(r) The other factor which should not be forgotten while imposing costs is for how long the defendants or respondents were compelled to contest and defend the litigation in various courts. The appellants in the instant case have harassed the respondents to the hilt for four decades in a totally frivolous and dishonest litigation in various courts. The appellants have also wasted judicial time of the various courts for the last 40 years.
Vutts & Associates LLP, Advocates
Trade mark files reconstituted by the Indian Trade Mark Registry
August 7, 2011
The Indian Trade Marks Registry has reconstituted most of the files 44, 000+ files lost and only 8183 files remain to be reconstituted. As usual, the Controller General of Designs, Patents and Trade Marks-Shri PH Kurian has done a fantastic job upholding order of Justice Murlidhar of the Delhi High Court. Hopefully, the remaining files shall be reconstituted very soon.
Copyright 2011. Vutts & Associates LLP, Advocates
44, 000 trade mark files lost by the Indian Trade Mark Registry
April 11, 2011
The Indian Trade Marks Registry has lost records of over 44,000 files relating to trade mark registration and oppositions. In an affidavit before Justice Murlidhar of the Delhi High Court, the Department of Industrial Policy and Promotion (DIPP) has stated that the Trade Marks Registry has lost a record 44,000 files relating to trademark registrations and oppositions.
The breakdown where physical files are missing from the five different Registries in India is as below:
1. DELHI 7, 291
2. MUMBAI 9. 180
3. CHENNAI 15, 557
4. KOLKATA 10, 179
5. AHMEDABAD 2,197
The files that have been lost appear to be pre-2006. We do not have the list of the applications that are missing.
The Registry has given a guideline for handling this situation.
Copyright 2011. Vutts & Associates LLP, Advocates
India- Draft manual of Geographical Indications
April 6, 2011
The draft manual of Geographical Indications Practice and Procedure has published by the Office of Controller General of Patents, Designs and Trade Marks. This draft manual is open for comments till April 20, 2011. The comments can be sent by email to email@example.com. The draft manual can be accessed through the link http://www.ipindia.nic.in/manuals/DraftManual_GI_PracticeProcedure_31March2011.pdf.
International trade mark application possible under Madrid Protocol in India
February 10, 2010
Trade Marks (Amendment) Act, 2010 with effect from September 21, 2010, has incorporated the Madrid Protocol which will allow Indians to file international trade mark applications or if the indian trade mark is registered, allows the Indian business to designate foreign countries. This is great news for Indians businesses and individuals since they will require filing only one application which will be automatically transmitted to the Trade Mark Offices of the countries designated (chosen) by the applicant. Trade Marks (Amendment) Act, 2010 has incorporated the provisions as Chapter IVA, Sections 36A to 36G. The Rules have not yet been framed, therefore, at present Indians will have to wait a little more before they can move an international trade mark application
The Madrid Protocol brings with it several benefits and few disadvantages. The benefits are that for person who is an (a) an Indian citizen; or (b) is domiciled in Indian or (c) who has a real and effective industrial or commercial establishment in India or the contracting state, one application can be filed and protection can be extended to 83 countries (on the last count). The application shall be filed in the Indian Trade Marks Registry which after a basic scrutiny (essentially the scrutiny of goods and services) shall forward it to WIPO. WIPO shall in turn shall forward the application to the chosen countries by the applicant. If no objection is raised by the national offices with 12 or 18 months, then the application shall be accepted.
If an objection is raised then, an attorney or agent will be required to be appointed for that country.
The disadvantage is that if the international application is challenged in India, then all the applications in designated countries stand to fall if the action in India is successful. This kind of attack is called “Central Attack”. In case of a Central Attack the application in designated states will require to be separated out and filed as independent applications within a period of three months. This obviously increases the costs for the applicant.
Just like any system, the protocol has some disadvantages. Nevertheless, it is indeed a great means of extending the protection to a large number of countries and there is a tremendous saving in costs.
Copyright 2011. Vutts & Associates LLP, Advocates
Increase in the official filing fees for trademark applications
January 29, 2011
The fee for filing of application to register a trademark for a specification of goods or services included in one class has been increased from Rs. 2, 500/- to Rs.3, 500 /-. The above revision is effective from 29.12.2010.
All applicants/agents/advocates who have filed trademark applications from 29.12.2010 onwards are required to tender the deficiencies in fees Rs. 1,000/- (Rupees One thousand only) per application in respect of applications filed from the date of notification till issuance of this notice, on or before 28th February, 2011, failing which the Registrar shall not act on the matter until the said additional fee has been paid. The deficiencies of fees received thereafter shall result in shifting of filing date to actual date of payment of balance fees.