FIRM PROFILE: ADITYA & ASSOCIATES

Transcription

1 FIRM PROFILE: ADITYA & ASSOCIATES (formerly Ess Vee Intellectual Property Bureau) is one the leading Law and consultancy firm established in 1995 specialized in protection and enforcement of Intellectual Property Rights namely Patents, Trademarks, Designs, Copyrights, Internet Laws and Domain name, Geographical Indications and other allied matters. Over the years, Aditya & Associates has gained experience and proficiency over a gamut of Intellectual Property Rights (IPRs) related practice, assignments and issues, not only in India but through out the world over. Throughout the journey of our since inception, we have successfully secure and enforce protection of intellectual assets of our esteemed clients including their valuable inventions, trade marks, eye appealing designs and domain names not only in India but in several countries around the world. The firm is headquartered in Mumbai (Bombay), the commercial capital of India. The very city that houses the Head Office of the Trade Marks Registry and Office of the Controller of Patents & Designs. The Firm s other offices are in Chennai and Pune. AREAS OF SPECIALIZATION: Our firm s area of expertise and specialization includes Patent, Trademark, Design, Copyright filing, prosecution, maintenance, litigation; IP Asset Management, strategies and audit; IP Counseling and advising; IP Protection against infringement and passing off; IP due diligence Licensing, Franchising; Internet law; Domain Name protection; IP Valuation.

2 Recent case law analysed Vipul N Bhuta and Mayuri N Khobragade of Aditya & Associates set out the provisions relating to jurisdiction in IP in India, and ask whether small companies are at the mercy of multinationals Jurisdiction, as far as IP is concerned, is a very complex issue. The rules, regulations, laws and provisions relating to jurisdictions differ depending on the type of IP. The types of IP covered in this article are trade marks, copyright, patents and designs. Trade marks Trade mark applications are filed as per the territorial jurisdictions of each office of the Trade Marks Registry situated at Delhi, Kolkata, Ahmedabad, Mumbai and Chennai. The jurisdiction is decided on the principal place of business in India of the applicant, and in the case of a non-resident, the jurisdiction is dependent on the address of service in India given by the foreign applicant. A notice of opposition, against any application that is published in a Trademark Journal, is to be filed with the territorial jurisdiction of that Trade Mark Office where the application was filed. Applications for rectifications may be made either to the Registrar of Trade Marks or the Intellectual Property Appellate Board (IPAB) directly. Appeals against the order or decision of the Registrar in respect of rectification or alteration of the register should be filed before IPAB within a period of 90 days. However, if any dispute is pending before any court, the application for rectification is to be filed directly with IPAB. IPAB came into force with effect from September The provisions relating to IPAB are contained in sections of Trademark Act, 1999 but applicable to trade mark and patent matters. The object of IPAB is to hear and decide all appeals from the decisions and orders of the Registrar who has come from the High Court. IPAB also deals with original applications for rectification of the register. The appeal against the order of IPAB will lie before the Supreme Court as an SLP According to Section 100, all appeals against Registrar decisions and all rectification proceedings pending before any High Court are transferred to IPAB. A civil suit for a trade mark infringement or passing off cannot be instituted below a district court with jurisdiction to try the suit (Section 134). As per the Limitation Act, 1963, the period of limitation for filing suit for infringement of a trade mark is three years from the date of infringement. Where the infringement is a continuing one, a new cause of action would arise every time an infringement occurs. The criminal proceedings can also be initiated in addition to civil suit under Sections 102 to 120 of the TM Act. The jurisdiction for the purposes of filing a case would depend upon the activities of the defendants and their place of business, such as where the cause of action has occurred, where part of the cause of action has occurred, or where the defendants reside or work for gain. However, the Trade marks Act, provides for an exception with respect to a registered trade mark, allowing a registered trade mark owner to file a case within the jurisdiction of a court, from where he is carrying on his business or has his office. This provision is an exception to the general rule. Recent case law includes M/S Matrumal Dhannalal Oil Mill v M/S Abhishek Enterprises. The plaintiff failed to show that he carried on his business in Delhi or that the defendant had been selling his goods at Delhi and passing them off as those of the plaintiff. The averments made by the plaintiff failed to confer any territorial jurisdiction on this court. Once it held that the court had no territorial jurisdiction, it needed not go into the merits of the case and deal with the matter in question. The plaint is ordered to be returned to for presentation to the proper court of jurisdiction. Other recent case law includes Naini Plywood Pvt Ltd v M/S Markendeya Plywood Pvt Ltd. In this case an order was made subject to two conditions. The defendant was granted leave to apply for rejection of the plaint on the grounds of lack of jurisdiction of this court or the inconvenience of the defendant to be represented at the trial. W W W. M A N AG I N G I P.CO M I N D I A I P FO C U S

3 In The Financial Times Ltd v Bennett Coleman and Co Ltd, it was held that if the rectification proceedings are pending as on the date of the suit, the court has no option but to stay the suit. Copyright Copyright is a well-recognised form of property right that has its roots in the common law system. Today, copyright law has extended protection not only to literary, dramatic, musical and artistic works but also sound recordings, films, broadcasts, cable programmes, typographical arrangements of publications and computer programs. Jurisdiction for filing applications: for copyright registration of each work, separate applications have to be made to the Copyright Office. Jurisdiction for filing suit of infringement or passing off: ubi jus ibi remediem (where there is a right, there is a remedy). In Tata Oil Co Ltd v Hansa Chemicals, PTC, the Delhi High Court held that remedies available to a holder of copyright are independent of each other, entitling the aggrieved party to sue for any or all relief available to him under law. These remedies are: Vipul N Bhuta Vipul N Bhuta is a High Court and patent attorney, who is a commerce and law graduate from the University of Mumbai (Bombay) and fellow member of the Institute of Company Secretaries of India. He is a registered patent attorney with the Government of India and is a registered trade mark agent in Canada. Bhuta has had vast corporate experience of over a decade in matters relating to intellectual property and other commercial legal matters related to IPRs, due diligence, commercial contracts, JVs, mergers, acquisitions and spin offs, before venturing into an independent practice in IP. Today, he deals with all IP issues both contentious and non-contentious, domestically and internationally. Bhuta s opinion is regularly featured in some of the reputed monthly legal journals. He also regularly contributes to seminars, and has presented papers on IP issues in India, Singapore, Hong Kong and the United States. He is the co-founder of Aditya & Associates (formerly known as Ess Vee IP Bureau) which is one of the leading law firms in India specialising in IP practice. He is a member of INTA, APAA, AIPPI, AIPLA, ECTA, IBA and FICPI. i) Civil remedies (sections of the Copyright Act 1957): a plaintiff in a suit for infringement of his copyright can seek remedies like an ex-parte interlocutory order (the Anton Piller Order for search and seizure of offending articles); perpetual or interlocutory injunction; damages on account of profits; account of profits as an alternative to damages. Every suit or civil proceeding for infringement of all types of copyright is instituted in the district court with jurisdiction. Jurisdiction is determined on the basis of the place where cause of action (infringement) has arisen or where the plaintiff voluntarily resides or operates his business. This is a departure from the general principle as laid down, wherein the place of suit is determined on the basis of residence or place of business of the defendant (The Daily Calendar Supplying Bureau v The United Concern). A civil suit has to be filed within three years from the date of infringement. Where the infringement is continuing one, a new cause of action arises with each infringement. ii) Criminal remedies: criminal proceedings may be initiated, in addition to a civil suit, in the Court of Magistrate or the Magistrate of the First Class. The trial court may also direct police officers to seize without warrant, all infringing copies of the work and accessories used for production of infringing work (Section 64) (Laxminarain Mehta v Gramophone Co of India Ltd) iii)administrative remedies: The Copyright Act provides for a quasi-judicial body called the Copyright Board for adjudicating certain kinds of copyright cases such as: appeals against the orders of the Registrar of Copyright; applications for rectification of entries in the Register of Copyrights; disputes on assignment of copyright; compulsory licences to publish or republish works (in certain circumstances); compulsory licenses to produce and publish a translation of a literary or dramatic work in any language after seven years from the first publication of the work; disputes as to whether a work has been published or about the date of publication or about the term of copyright of a work in another country; fix rates of royalties in respect of sound recordings; and, fix the resale share right in original copies of a painting, a sculpture or a drawing and of original manuscripts of a literary or dramatic or musical work. Recently, the radio broadcasters moved a transfer petition before the Supreme Court to consolidate all the appeals against the Compulsory Licensing decision, of the Copyright Board, before the Supreme Court. The reason for filing this petition was obviously the fact that multiple appeals were pending before more than one 2 6 I N D I A I P FO C U S W W W. M A N AG I N G I P.CO M

4 High Court. If the issues and parties are the same before multiple forums the Supreme Court would usually be inclined to consolidate them in one location. In IPRS v Sanjay Dalia, the Delhi High Court decided to look at section 20 of the Code of Civil Procedure in conjunction with the specific provisions already available in the Copyright Act and its sister provision the Trademark Act. It states that all suits instituted must be at the place where the defendant or one of the defendants resides, carries on business or personally works for gain, or where the cause of action arises wholly or in part. On the other hand, in what seems almost contradictory, section 62 of the Copyright Act and section 134 of the Trademark Act favour the plaintiff and notwithstanding anything contained in section 20 of the Code of Civil Procedure allow for the institution of the suit by the plaintiff at any district court where the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The Court however, in this matter, dealing purely with alleged use of copyright, held in favour of the defendants by placing reliance on several cases dealing with the interpretation of Section 20 of the Code of Civil Procedure. Stating that the cause of action was an aspect inseparable from the suit itself, the judge read section 20 of the CPC conjunctively with the jurisdictional provisions contained in the Copyright and Trademark Act. In Sholay Media & Entertainment PVT Ltd & ANR, the Court had vacated the interim injunction against Vodafone and had ordered Universal to deposit the royalties from the Sholay ringtones with the Registry of the High Court. As noted in the interim judgment the assignment deed between Sholay and Universal was capable of being interpreted either way and the Court therefore refrained from making any observations at the interim stage. This means that if a statute has vested in a particular authority the jurisdiction to hear a particular type of dispute then the civil court is impliedly barred from hearing such an appeal. In the context of this particular dispute these provisions ensure that all disputes pertaining to the assignment of copyrights under the Copyright Act are to be decided by the Copyright Board. Designs A design gives aesthetic sense and appearance to the product which attracts customers. The creative originality of designs needs legal protection against copying. Therefore, the law provides for registration of original design and prohibits its copy by others. Filing applications: to be registered as a design in India, the law makes it mandatory to process both or either of the criteria of novelty and originality. To be novel a design need not be new. A new arrangement of old components or combination of colour, a new pattern or ornament or shape which may result in novelty of design that is appealing to eye is registrable. If the design is not new, it can still be registered provided it is original. An application to register a design is made to the controller of design. Any person aggrieved by the These provisions ensure that all disputes pertaining to the assignment of copyrights under the Copyright Act are to be decided by the Copyright Board decision of the controller refusing to register a design may appeal to the High Court. The appeal should be made within three months of the decision. Jurisdiction for cancellation of registration: there is no provision in the Design Act, 2000 in respect of preregistration opposition to a design application. Therefore, if a person intends to oppose the registration, then the provision as per law is to be applied for cancellation of the registered design under section 19 of the Design Act. Jurisdiction for filing suit for infringement of designs: Infringement of a copyright in registered design is known as piracy of registered design. If the design is not registered under the Design Act, 2000, the proprietor will have no legal right to take any action against the infringer. The protection to the registered proprietor Mayuri N Khobragade Mayuri N Khobragade has a masters degree in law from the University of Mumbai specialising in IP law. She is a senior associate at Aditya & Associates, actively involved in all issues relating to intellectual property, in particular contentious and non-contentious trade marks and copyright. In addition to advisory work, she is closely involved in drafting and vetting various agreements. She was admitted in the Bar Counsel of Maharashtra and Goa in the year W W W. M A N AG I N G I P.CO M I N D I A I P FO C U S

5 under the Design Act, is by way of civil remedy. It is the sole responsibility of the proprietor to see that his design is not being infringed by others. It is the proprietor s duty to file a suit of infringement against the infringer. In a court not below a district court appealable to the High Court. It might be possible in some cases to prosecute the design infringers under Indian Penal Code for various offences such as conspiracy, fraud and cheating. Recent case law includes an order in Urooj Ahmed v Maya Appliances, where the court was faced with a pure question of law: can a suit for infringement of design be filed in the court within whose jurisdiction the plaintiff resides. There is no such provision in the Design Act; and on a plain reading, it ought to be clear that a suit must be filed in accordance with the general principles in the Code of Civil Procedure (so in the court in whose jurisdiction the defendant resides). However, the judge held in this suit that infringement of design must be held to be the same as a suit for infringement of copyright in the design. Therefore, the provisions of section 62 of the Copyright Act would apply to a case of infringement of design as well. Accordingly, the court concluded that a suit for infringement of a design can be filed in the court in whose jurisdiction the plaintiff resides. Patents Not every invention is worthy of a patent. In order to obtain a patent an invention has to pass through the triple requirement of newness (novelty), non-obviousness and usefulness. Further, even if these conditions are fulfilled, an invention may be denied a patent if it is prohibited under the law. Every application for a patent shall be for one invention only. Jurisdiction for filing applications: an Indian resident can file an application for patent at the appropriate Patent Office, located at Mumbai, Delhi, Chennai and Kolkata, under whose jurisdiction he resides or has his principal place of business. For non-residents, the address for service in India of his agent determines the appropriate patent office. Jurisdiction for filing oppositions: The Patent Act, 1971 provides for both pre-grant and post-grant opposition, to prevent the issuance of trivial patents without indulging into expensive and time consuming litigation. A notice of opposition is submitted within the jurisdiction of the controller of patents in whose office the subject patent application was filed. Every appeal against the decision of the controller can be filed beforeipab within three months of the decision. Jurisdiction of IPAB: The Appellate Board for the purpose of the Patent Act, is the same as constituted under the Trademarks Act, A patentee or opponent may file an appeal in IPAB for any decision of the controller within three months from the date of the decision or within such further time as IPAB may allow. Jurisdiction for filing an application for rectification of the register: to rectify the register by IPAB, IPAB may, on the application of any person aggrieved (a) by the absence or omission from the register of any entry; or (b) by any entry made in the register without sufficient cause; or(c) by any entry wrongly remaining on the register; or (d) by any error or defect in any entry in the register, make such order for the making, variation or deletion, of any entry. In any proceeding under this section IPAB may decide any question that may be necessary to decide in connection with the rectification of the register. Revocation of Patent: a patent may be revoked on any of the following grounds, at any time during the life of the patent: i) by the High Court, on a counter-claim for revocation of the patent made by the defendant in a suit for infringement; ii) by IPAB, on the petition of any person interested or of the Central Government; iii) by the Central Government, revocation of the patent in public interest; iv) by the High Court, on petition of the Central Government for failure to comply with the request of the Central government to make, use or exercise the patented invention; v) by the Controller of Patents, revocation for non-working of the patent; and vi) by the Controller of Patents, revocation of patents related to atomic energy on direction from the Central government. Jurisdiction for filing suit of infringement or passing off: a suit for infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. However, when the defendant makes a counter claim for revocation of patent, the suit shall be transferred to the High Court because the High Court alone has the jurisdiction to revoke patents. A suit can also be initiated by the aggrieved person making a groundless threat. The remedies available are injunction, damages or account of profit, delivery up or destruction of the infringing goods or a certificate of validity of the claim in question. It may be noted that unlike copyright or trade mark there is no provision for criminal proceedings for infringement of patent. Recent case laws include that of Somasundaram Ramkumar. In a writ petition challenging the orders of the Mumbai and Chennai Commissioners of Customs, who had held that Samsung and other dual sim mobile phone companies did not infringe Ramkumar s patent by importing dual sim phones. The High Court stayed the orders on the ground of jurisdiction, holding that the Customs Commissioners did not have the jurisdiction to decide patent infringement. 2 8 I N D I A I P FO C U S W W W. M A N AG I N G I P.CO M

6 Aloys Wobben v Enercon (India) Limited WP 2010, The Madras High Court dismissed Wobben s petition on the grounds that the Supreme Court case law suggested that when there were multiple appealable issues before a court, all of them must be decided while the suit is being disposed and that the suit cannot be dismissed on the basis of only one issue. Aloys Wobben v Shri Yogesh Mehra & others: in this case Justice Ravindra Bhat rejected an application filed by Wobbens, seeking either dismissal or a stay of revocation petitions filed by Enercon India, before IPAB against certain patents, which were also the subject of counter-claims for revocation before the Delhi High Court. Recording the reasons for his dismissal Justice Bhat states that patent rights are different from other rights and that Parliament has consciously provided for multiple forums for revocation and to override those rights by invoking the Doctrine of Election would be against the interests of public policy especially since staying the counter-claims for revocations would seriously prejudice the defence in the infringement suits. He also cites Supreme Court case law which states that the Doctrine of Election does not act as estoppel against the statute. Misuse of provisions for jurisdiction Special provisions for instituting a suit against infringement or passing off where the plaintiff (and if more than one party, any one party) resides or carries on business as per section 62 of the Copyright Act, 1957 and section 134 of the Trade Mark Act, 1999 are possibly meant for convenience to the plaintiff against the threat of infringement or passing off. However, in the last decade, the contrary has been noticed, and the misuse of these provisions has become very common. It is not out of place to mention that several orders have been passed and obtained (and mostly ex-parte) against small and unknown parties on behalf of large corporations and multinationals merely on the basis of a very small branch office or distributor office situated in a small place or a flat in a complex, while its registered or corporate office is situated in another city. Thus, instead of approaching the District or High Court These jurisdiction provisions are being rampantly misused where that registered or corporate office is situated, jurisdiction is in essence created and ex-parte orders are obtained. We have noticed and experienced exparte orders against some parties who are using trade names or trade marks for several years and even decades, which many times not similar but without hearing their pleas, it is considered similar even though they have rights due to long and continuous use. Now, these small companies and parties are unable to fight back mainly due to the heavy expenses involved in litigation and so unable to place their views and facts before the Court. It is necessary to look into the possible views of the other side before arriving at a conclusion, especially when a case is not prima facie made out by way of asking the Plaintiff(s) to serve notice on other side. We are of the opinion that these jurisdiction provisions are being rampantly misused and small companies and individuals are left facing the might of money in the form of large multinational corporations. This needs to stop. W W W. M A N AG I N G I P.CO M I N D I A I P FO C U S