ASIAN PATENT ATTORNEYS ASSOCIATION

Transcription

1 ASIAN PATENT ATTORNEYS ASSOCIATION 59 th Council Meeting Makati City, Philippines November 2011 COUNTRY REPORT FROM THE RECOGNISED GROUP OF INDIA Hari Subramaniam & Prathiba M Singh

2 As in the previous year, there have not been significant developments in the statute but once again the past one year has seen several judicial pronouncements, by various High Courts and the Intellectual Property Appellate Board (IPAB) as well as changes in practice in the Patent and Trademark Offices. Our respective Committee Reports capture these developments but the important judicial pronouncements and other key developments have been highlighted in this report. A. PATENTS: There has been a spurt in the number of cases before the Courts in the recent times. These not only include infringement suits but also writs against decisions of the Patent Office and the Intellectual Property Appellate Board (IPAB). Judges are increasingly becoming familiar with the Patents Laws and it is hoped that judicial intervention in various important areas will help in clarifying the law in the times to come. Some of the recent decisions are listed here: 1. CARLOS ALBERTO PEREZ LAFUENTE VS. UOI & ORS. MANU/DE/3811/2011 In this case the Delhi High Court was approached by a Spanish Inventor whose patent application was deemed to have been withdrawn due to failure to file a request for examination in time. A writ petition was filed by the Inventor challenging the position taken by the Patent Office on the ground that he had filed the request for examination with 48 months as specified in the PCT Guidelines. Rule 24B(1)(i) of the (Indian) Patent Rules 2003 prescribes that a request for examination should be filed within 48 months from the date of priority or date of filing whichever is earlier. It was argued that there was a conflict between the PCT Guidelines IN 09 and Rule 24 B(1)(i) of Patents Rules, Therefore, there was confusion as to whether the request for examination is required to be filed within 48 months from the date of priority or from the date of filing of application for Patent.

3 The Hon ble Delhi High Court after considering said Rule as also the PCT Guidelines directed the Patent Office to hear the Applicant and other similarly situated applicants. The Delhi High Court set aside the Order treating the application as withdrawn and has directed the Patent Office to reconsider the Patent Application of the Applicant. 2. NIPPON STEEL CORPORATION VS. UOI 2011(46)PTC122 In this case also the Patent Application was treated as withdrawn due to failure to file the request for examination in time. After the application was treated as withdrawn, the Applicant made an application to amend the priority date which was rejected by the Patent Office. This was challenged in a Writ Petition before the Delhi High Court. The Delhi High Court dismissed the Writ Petition on the ground that on the date the request to amend the priority date was made, the patent application in question had already been deemed to have been withdrawn. The Court held that once the deadline for filing a Request for Examination (RFE) under Section 11B of the Patent Act was missed and the application was treated as withdrawn, it cannot be reinstated by amending the priority date subsequently. In other words, before the request for amendment of the priority date was filed, the patent application in question had already ceased to exist. Justice S. Muralidhar of the Delhi High Court, held that a request for amendment could only be made on an application that existed in law. The Applicant argued that failure to file a Request for Examination on time was due a bonafides error and constituted a mere procedural irregularity which could be corrected by a petition under Rule 137 of the Patents Rules, The Court rejected this plea as well on the ground that a petition for correction of irregularity could again only be made in respect of an application that existed in law and not on an application that has been deemed to have been withdrawn. Dwelling on the legislative intent, the Court further noted that the time-limits under Section 11-B(1) of the Act read with Rule 24-B of the Rules, are mandatory and not merely directory.

4 3. ELECTRONIC MACHINE TOOLS Vs. Power Engineers and Precitek Components (P) Ltd 2011(46)PTC323 This case highlights the role of a Scientific Advisor under Section 115 of the Patent Act. The Court, in a suit for infringement of patent, had directed seizure of the infringing products. Thereafter, the Court had appointed a Deputy Controller of Patents and Designs to inspect the infringing products and to submit a report as to whether there is any infringement of Patent. The Plaintiff filed an application for scraping of the report. The Court held that the Scientific Advisor did not possess the necessary qualification prescribed by Rule 103 of the Patent s Rules. Moreover, before comparing the two products and preparing the report, no notice was given to the parties. She personally did not inspect the products of the Plaintiffs. Thus, the judge scrapped the report of the Scientific Advisor. This case highlights the importance of following the correct procedure while seeking appointment of the Scientific Advisors and to ensure that the person who is appointed as a Scientific Advisor is competent and possess the necessary technical qualification and also conducts Inspection in a most transparent and fair manner. The above case emphasises the need to follow the procedure of law correctly. Apart from establishing absence of delay and prima facie case of infringement, it is also important to follow the laws relating to procedure and evidence correctly. 4. NOKIA CORPORATION VS. DEPUTY CONTROLLER OF PATENTS AND DESIGNS. 2011(46)PTC70

5 Nokia s application was filed under the National Phase (PCT) in India on 18 August 2009, claiming priority from a US application filed on 11 January 2007, seven days after the 31 month period for National Phase Entry expired. The Indian Patent Office refused to take the application on record on the ground that there is no provision under the law for extending the 31 month period. In response, Nokia filed the application once again, along with a request under Rules 137 and 138 of the Indian Patent Rules, requesting the Patent Office to condone the delay. This request was not entertained and the matter reached the courts. The Patent Office argued that requests under rules 137/138 ought to be made within the prescribed time limit. Since the request was not made within the 31- month period, it could not be taken on record. Justice Vinod K. Sharma of the Madras High Court disagreed and quashed the Order of the Patent Office. The Court remanded the application to the Patent Office, observing it was not correct on the part of the Controller of Patents to have rejected the application, by treating it to be not maintainable. It also held that: An application for extension is to be filed within one month after expiry of prescribed time under Rule 20. In case, an application is moved for extension of time it is required to be decided on merits by taking into consideration facts and circumstances of each case. 5. Durect Corporation Vs Union of India (Not yet reported) In a recent judgement in Durect Corporation vs. Union of India issued in May 2011) the High Court of Delhi held that it was incumbent on the Patent Office to take petitions for condonation of delay in a late national phase entry on record, provide the applicants with an opportunity to be heard, consider whether the reasons provided for the delay were justified, and issue a reasoned decision. Without explicitly stating so, the High Court has effectively interpreted rules of procedure governing PCT national phase applications under our law as being subordinate to the provisions of the Patent Cooperation Treaty and PCT Regulations.

6 An additional important part of the ruling is that an adverse order of the Patent Office on this point would be open to appeal. Therefore, the IPAB cannot simply follow its earlier interpretation that late national phase entries are not allowable. The IPAB would have to hear the appeal on the merits of each case and determine whether the Controller was correct in holding that there was insufficient cause for condonation of delay. Effectively, the Court emphasised the findings of the Chennai High Court in 2010 in Nokia Corporation vs Controller of Patents. 6. PATENT OFFICE PRACTICE: The Patent Committee report from India highlights the position relating to National Phase applications and Division Phase applications. The said report has also highlighted the difficulties in obtaining extensions where it was statutorily permissible. The recent judgement of the Delhi High Court in Chemtura Corp Vs Union of India, where the non-compliance of requirements Section 8 (disclosure of details corresponding foreign applications as well as copies of search and examination reports on the corresponding foreign applications) was a ground for rejection of an injunction is worth mention. B. TRADE MARKS: The trade marks Committee Report from India details various interesting issues with respect to substantive law as well as administrative reforms:. These include: (a) proposal and suggestions for amendment of Trade Marks Rules, 2002; (b) making online search facilities free of cost to the public;. (c) increasing the government fee for filing one trade mark application in one class to INR 3500/- (d) implementation of digital filings Our Trade Marks Committee also reports an interesting conflict between a manufactures and a seller in RFCL Ltd. Vs. PPPL. This case highlights the disputes

7 of brand ownership that manufacturer and sellers can get into unless they have well drafted document and agreements in place. The matter is at present sub judice. Our Trade Marks Committee Report also highlights the protection of the shape as Trade character/trade dress in the case of GORBATSCHOW WODKA KG VS. JOHN DISTILLERIES LIMITED Other judicial decisions which deserve mention are: 1. ARUN JAITLEY VS. NETWORK SOLUTIONS 181(2011) DLT 716 The Plaintiff, Mr. Arun Jaitley is the Leader of Opposition in the Indian Parliament. The case related to the Defendants website The Court held that domain names are protected under the law of passing off and personal names constituting domain names would be granted similar protection. The Court further held that the name is inherently distinctive and being a popular name, deserves trade mark protection. Thus, despite the personal right to use a personal name, the Plaintiff succeeded in satisfying the Court that it is distinctive with sufficient popularity to qualify for commercial trademark protection. The Court also found that there was malafide intention on the part of the Defendant in trafficking in the domain name, with the objective of extracting a hefty auction price from the Plaintiff. The Court also granted punitive damages to the tune of INR to the Plaintiff for causing hardship and harassment and mental torture in recovering the domain name and directed the transfer of the said domain to the Plaintiff with immediate effect. 2. T.V. VENUGOPAL VS. USHODAYA ENTERPRISES LTD. AND ANR (2011)4SCC85 This is a recent judgment of the Supreme Court where the Plaintiff was the Publisher of a Largest selling Newspaper in Telugu Language called Eenadu. The Defendant was selling incense sticks (Agarbatti) under the mark ASHIKA'S EENADU. The Supreme Court held that Eenadu of the Plaintiff was a well known mark in Andhra Pradesh and restrained the Defendant from using this mark in the State of Andhra Pradesh.

8 C. DESIGNS: The Design committee report gives useful information relating to the digital filing in India. The total number of application has dropped from 6597 in to 6092 in % of the filing is by Indian Companies. The highest numbers of designs are filed by US followed by Germany and then Japan. The Patent Office has published a Manual of Designs Practice And Procedure. The design registrations are normally issued within nine months from the date of filing but the Designs Office normally does not reject an application without providing the applicant with an opportunity to be heard in the matter. On the judicial front, an important decision in the area of designs is: 1. GORBATSCHOW WODKA KG VS. JOHN DISTILLERIES LIMITED MANU/MH/0630/2011 In a recent judgment this year by the Bombay High Court, the Plaintiffs, Henkell & Co. Sektkellerei KG won a major case against John Distillery, a local distillery in India, which was producing vodka under the trademark Salute in bottles deceptively similar to the Plaintiff s Vodka Bottles. According to the Plaintiff the first version of its bottle was introduced in 1958 and was modified in The present shape of the bottle was devised in Vodka being synonymous with Russia, the famous onion dome of the Russian Orthodox Church was the inspiration behind the bulbous shape of the bottle. The design was registered in India by the Defendant before the Plaintiffs vodka had entered the Indian market officially. The Plaintiff claimed that the international profile of its brand under the "trade mark shape of the bottle" is impressive as it is one of the top fifteen premium Vodkas in the world and that it has a global goodwill and trans-borders reputation transcending geographical barriers. The Defendants argued that there was no question of passing off since they catered to different levels of the society. They could however, not explain the adoption of that particular design in question unlike the Plaintiffs.

9 The Court held that the Plaintiffs had made out a strong prima facie case for the grant of injunction. The court further held that irreparable injury would be caused to the established reputation and goodwill of the Plaintiffs if the Defendants were allowed to proceed ahead. The Defendants were thus restrained from using the impugned bottle and or any other shape identical or deceptively similar to the Plaintiff's mark in relation to its products. D. COPYRIGHT: In the area of Copyright the most important statutory change is the introduction of the Copyright Amendment Bill in the Parliament. It will be recalled that the Copyright Amendment Bill had been referred to the Standing Committee last year. The Standing Committee submitted its report. However, after the Report of the Standing Committee, the Government carried out with several amendments in the Bill. The Bill finally introduced in the Parliament had the following salient features: a. conforming of the provisions of the law with the World Intellectual Property Organisation s WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty. The treaties deal with protection of authors of literary and artistic works and rights of performers and producers of phonograms; b. inclusion of the producer and principal director of a film and the producer of a sound recording in the definition of author. It excludes a person from the definition of performer in a film if his role was incidental and in the normal course of practice is not acknowledged in the credits of a film; c. definition of copyright as the exclusive right of the author to reproduce a literary or dramatic work or computer programme or artistic work; d. protection of performer s right by allowing a performer to make sound or visual recording of the performance and allow its reproduction in any

10 medium, issuing copies to the public or selling or renting a copy of the recording; e. expansion of the definition of copyright to allow artistic works, cinematograph films and sound recording to be saved in electronic forms; f. enhancement of the term of a copyright for a cinematograph film. For a principal director, the copyright is for 70 years. For a producer, the copyright is 60 years, extended to another 10 years if he enters into an agreement with the principal director g. attempt to introduce a system of statutory licencing for cover version of a sound recording so that right of copyright holder of literary or musical work is protected and allow statutory licencing to radio organisations of published works. The rate of royalty to be fixed by the Copyright Board. Recent times have also witnessed important decisions on compulsory license cases in respect of radio stations. The litigations on Compulsory Licenses on Radio Stations have now reached the Hon ble Supreme Court of India. The Copyright Committee had last year reported that the Copyright Board had fixed 2% of the net advertisement revenue of a ratio station as the total amount to be paid as royalty for use of sound recording. This decision has been challenged before the Chennai High Court and various other High Courts. In view of the Judgment of the Supreme Court earlier this year, the said rate has now started bearing qua most sound recording owners except one major player. The said player has now filed petition before the Hon ble Supreme Court challenging the applicability of the said rates qua its sound recordings. In a recent case, Powers of the Copyright Board to grant interim orders in compulsory license petition was also examined. The Division Bench of the Delhi High Court in a case involving the Copyright owners held that the Copyright Board has the powers under Section 31 to make interim arrangement of payment by radio station while the compulsory license petition is pending. This decision was challenged before the Supreme Court by the

11 Copyright owners and the Supreme Court has now stayed the judgment. The issue of whether the Copyright Board can make interim arrangement in compulsory Licenses petition is already pending before the Supreme Court of India. Role of APAA (India Group) Recently, APAA, Indian Group filed a writ petition before the Delhi High Court seeking constitution of Benches of IPAB in different States and also seeking immediately appointment of Chairman, Vice-Chairman and technical Members of the Board. There was an eight months gap during which period the IPAB did not have Chairman and the technical members. The said position led to a back log of cases. The writ petition filed by APAA Indian Group helped in speeding the process through the intervention of the Court. The Delhi High Court vide order dated 24 th October, 2011 has also directed the Central Government to look into the various deficiencies in infrastructure, staff etc. of IPAB and has directed the Government to file status report in this regard. The APAA, India Group has also been organizing seminars on the World IP Day where sitting judges, ministers, senior professionals and law makers are invited to speak on burning issues. These seminars are well attended and provide a platform to the key players, leading attorneys, IP rights holders and law makers to interact freely. Thus, the APAA Indian Group is playing an important role as a body of IP Professionals in streamlining and ensuring effective IP administration in the country.