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How to file a Patent in India?

By: Ayushee Subhadarshini

As it is said an invention is not your own until it is patented- so what is patent? How do we patent our invention? The simple answer to this is patent is the Exclusive legal right given to the inventor so as to protect its invention. we may say that it is a form of intellectual property. Basically, it is a title given to the owner of the invention for a certain time period which protects and secures the invention from any third party interference. In order to get a patent the inventor in return has to disclose all the information of the product, method, process, research etc of the invention.

Patents can be a three types- utility patent, design patent and plant patent. In utility patent the invention may be a product or process and it can be patented for up to 20 years .For example, engines of automobiles. Design patent it is a kind of registration in which the appearance of a particular design is patented it may be extended for up to 15 years. For example, logo of a brand (Note- design patent only count for appearance and not any functional aspect) .Plant patent is not found in India. In this if a farmer crossbreeds and produces a new variety of plant it may be patented.

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A big question arises on what can be patented- first a process or method can be patented .a new process which may be short, more efficient and user-friendly, which may give good quality products can be patented. Second a composition can also be patented like combination of certain substances or an active ingredient with other substances or mixture of certain elements or chemicals or substances. Therefore any useful composition is patentable. The third one is research .a research on some product process or approach can also be patented because this research might be used while making a product so it is patentable.

There are certain criteria which are needed for patenting. The invention must be new or novel. it should be of total originality ,it should not be found anywhere in the world .it should be an inventive step .either it may have some Technical Advancement some economic significance or both etc. it should be an inventive product the product; should be capable of industrial application in essence it should be fit for use in industries.

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Now there are inventions which cannot be patented.[1] Section 3 and 4 of Indian Patent Act 1970 lists out non patentable subject matter like scientific discoveries ,living beings ,plants ,animals ,organisms, new form of known substances ,mere addictive combination, traditional knowledge ,business methods ,mathematical methods and atomic energy etc.

There are certain procedures which are needed to be followed for getting a patent granted:

First the complete concept or idea of the invention should be written down in detail. it should include what is the invention or Idea, its working mechanism, how the invention helps in solving a problem ,the field of the invention, advantages of it ,elements or objects or composition involved in it ,any competitors of the invention etc.

If the invention includes research then the lab record should also be included. Visual illustrations play an important role- so sketches drawings, charts; diagrams should be designed to explain the working mechanism of the invention. As we know that all inventions cannot be patented so checking upon patentability is a very important step.

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Second step includes the drafting of patent application. as we know that a patent has both technical and legal aspects, for drafting a patent application it requires a lot of skills and practice .filing it on own would be a huge mistake as it might cause hindrance in the opportunity. this being the most crucial step requires a good patent agent or an attorney who will not only file the application but would stay and supervisor in the whole process like till the commercialization phase where the real money comes in by providing license or by selling the patent rights .this step costs depending on the fees of patent attorney or agent and it may require a time period of 8 to 15 working days.

After the drafting and reviewing of application by the inventor the patent is filed in a government office where a receipt is generated with an application number. there are three types of applications which can be filed in the patent office- the first one is the provisional application which is filed at an early stage of the research or development of the invention, it secures the filing date, 12 months is provided for giving the complete specifications and it is low in cost .the complete patent application is drafted when all the necessities and specifications required are available to file a patent. The international patent application provides protection to patent rights outside the country as well because as we know that patents are territorial in nature it can only be secured inside the country.

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Fourth step includes an examination request where an examiner is appointed by the controller to review the patent application only after receiving the request for examination .The examination report is generated after the review .it is a kind of prosecution where the patent application is prosecuted at every step before the grant of patent.

Fifth step includes the response to the objections. Mainly patent applications receive some or the other kind of objection in the examination report .the patent agent or attorney may give a written response to the objections raised. After analyzing it, if the objection is still not resolved then a meeting or communication of any kind is set up between the inventor with the examiner in the presence of attorney to clear up the objection.

In the sixth step the application is placed in order for grant. Once it meets all the patents criteria and is cleared of any hindrance the patent is granted.

There are certain advantages of filing a patent:

  • A patent certainly gives protection to the invention and stops others from copying it.
  • It also helps to protect it from competition at early stages of invention.
  • It can also be used as a source of revenue by selling the patent rights or by providing license one can collect royalties from it.
  • A premium can also be charged for an invention because it is unique and no one else’s making it.
  • It gives more credit profit to an inventor and their company as well.

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Being advantageous at times there are also certain disadvantages of a patent:

  • Makes the invention a public record i.e., information of it is publicly available .rather than keeping it a secret may help to stay afar from competitors.
  • Applying for a patent is time consuming during which the certain invention may become outdated.
  • For filing an application ,patent agent or attorney is required who charge heavy amount .putting money somewhere where the probability of getting the result is not a short is not a good move.
  • Patents are time specific -filing dates, Annual fees all must be checked accordingly or it may get cancelled anytime.
  • The territorial nature of patent provides service to exposure outside the country.

Landmark cases on Patent in India:

[2]Bajaj Auto Limited versus TVS Motors Company – in this case the defendants infringed the patent which concerns the invention of the technology of improved internal combustion engines of the plaintiff.      This case is important as it also includes the doctrine of pith and substance.

[3]Novartis AG vs. Union of India- in this case Novartis filed patent application for its new version of cancer drug that is glivec. The case was regarding the filing of patent application for a new version of a known drug molecule. This is prohibited under Section 3(d) of Indian Patents Act, 1970. since the existing drugs patent has already expired the generic version which is also cheaper in cost is permissible for supply. so the application for leave it is rejected.

[4] F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd-In this case the plaintiff filed a suit for injunction, for curbing infringement and for claiming damages .The defendant argued that the drug was for treatment of cancer and was a derivative of parent drug, the composition was same except for one alternative .This was upheld in the Supreme Court.

Section 118-124 of the Patents Act,1970 provides provisions of penalties.

Section 108 of the Patents Act,1970 provides provisions for relief.

                     Act                                                 Punishment

Contravention of secrecy provisions  relating to certain inventions Imprisonment up to 2years or fine or both
Falsification of entries in register,etc Imprisonment up to 2 years or fine or both
Unauthorized claim of Patents  rights Fine up to 1-lakh rupees
Wrongful use of words “patent office” Imprisonment up to 6 months or fine or both
Refusal or failure to supply information Fine up to 10-laks or imprisonment up to 6 months or both
Practice by non-registered patent agents Fine up to 1-lakh rupees, up to 5 lakhs in second offence.
Offence by companies Liable for proceedings, punished accordingly.

           

RELIEF IN AN ACTION FOR INFRINGEMENT

 

PATENT OFFICES IN INDIA

PATENT OFFICE TERRITORIAL JURISDICTION
Mumbai The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli

 

Delhi The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh
Chennai

 

 

 

Kolkata

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and the Union Territories of Pondicherry and Lakshadweep.

 

Rest of India (States of Bihar, Jharkhand,

Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands)

 

 

 

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Conclusion

Patent filing may seem a long and complex process but one should always remember the importance of a patent. Patent would always ensure that no third party can claim your rights without permission and order. Legal bodies are always out there to help people when necessary. An intelligent approach matters the most while filing a patent. With technological and digital advancements patent filing may become easier day by day. Make in India has a real significance over patents. We should not only encourage inventions and grant them patent, it also signifies the product to work in India. This helps in building up of the economy. It helps in more turnover for businesses, more credibility and many more to it.

[1] Indian Patent Act 1970

[2] MIPR 2008 (1) 217

[3] (2007) 4MLJ 1153

[4] I.A 642/2008 in CS (OS) 89/2008

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Blog Intellectual Property Law

The Exordium of Copyright System in UK

By: Himali Sylvester

Introduction

 It has often been espoused that homo sapiens are inherently ‘possessive’ in nature. In other words, it could be said that human beings are born with the unique ability of ‘claiming’ possession over materials. It was not too long ago that the discourse of property and possession unfolded. The two erudite minds in the 17th century, Jean Jacques Rousseau and John Locke both discussed property in starkly different ways. Rousseau contemplated that the need for property is not an inherent human characteristic and that it is a product of ‘general will’ sanctioned by the State.[1] On the other hand, John Locke strongly condoned that those human beings in the state of nature are governed by human reasoning with a deep-seated need to assert control over what they believed to be their own.

Consequently, when this certain ‘own’ was taken away from an individual, she felt the need to protect it and therewith arose the concept of ‘right’. Such individual right received the consent of the community and became moral right and eventually, with the sanction of the state, such right transcended to become a legal right. For a large part of history however, the idea or notion of possession was confined to only tangible objects -to actual physical possession -to that which a man might pass from hand to hand. It is only in the dawn of history, with the palpable advent of literature and printer, that rights over intangible property came to be realised.

The Greeks

The Greek contribution to drama and literature cannot be undermined. One cannot help but be reminded of Homer and the rhapsodists who cannot ever fade from human memory. It must however, be prudently noted that rhapsodists published their poems by word of mouth and the spoken poem flew away with the voice of the speaker and lingered only in the memory. Even when the poems and proses were translated to writing, after paper made it possible to preserve the labours of the poet and the historian, these authors had not any thought of making money by multiplying copies of their works, yet. The dramatists in Rome felt quite content with the compensation they had received and thus, the question of rights over the theatrical performance did not particularly arise. At the time, there was a notable trend of transcribing drama into text and of making copies of popular proses. While authors complained about the mangled translations, they still hadn’t realised that wide-spread copying and transcription of their intellect was in some way a moral wrong. In fact, some authors considered it a matter of ‘honour’ to allow their literary labour to be widely circulated.

 

Advent of the Printing Press

It was only after Gutenberg had set up as a printer, that the possibility of definite profit from the sale of the works of the author became visible to the author. Until then authors had felt no sense of wrong. With the invention of printing, there was a chance of profit and as soon as the author saw that this profit diminished by an unauthorised reprint of her work, she felt conscious of the injury caused and thus, protested against it in as many ways as possible. With time, public will be inclined towards the authors and some sort protection was granted to them in the form of ‘copyrights’, by penalising ones that seek unauthorised copies of an author’s work.

The World Order

Traces of copyright grants can be seen in many European states, i.e the then divided continental Europe. The Senate of Venice issued an order, in 1469, that John of Spira should have the exclusive right for five years to print the epistles of Cicero and of Pliny[2]. This privilege was an exceptional exercise of the power of the sovereign state to protect the meritorious work of a worthy citizen. It granted only a limited protection for about two literary works. But it established a precedent. A precedent which has been carried down over centuries so much so that for four hundred years now, any book published in Venice is, by international conventions, protected from pillage for a period of at least fifty years.

In 1491, Venice gave Peter of Ravenna, and the publisher of his choice, the exclusive right to print and sell his Phamnix,3-the first recorded instance of a copyright awarded directly to an author. Germany issued its first copyright at Nuremberg in I501. France covered that privilege only for one edition of a book and if the book was sent for a next edition, a second patent had to be obtained.

Early Days of England

The King’s supremacy in England accorded certain privileges to authors and publicists that the sovereign considered sacred and important. In 1518, the King’s Printer by the name Richard Pynson, issued the first book cum privilegio. The book’s title page declared that no one else should print or import in England any other copies for two years. Further, in I530, a privilege for seven years was granted to John Palsgrave as commensuration for the value of his work and the time spent on it. This event has been noted as the first recognition of the nature of copyright as furnishing a reward to the author for his labor in England.

Wynkyn de Worde in the year 1533 procured the sovereign’s protection for the second edition of his book, Witintons Grammar. Ten years prior to that, the first edition of Worde’s book had been released which during the decade had again been reprinted by Peter Trevers without authorisation. Protesting against the despoilment, Worde in his subsequent editions vigorously condemned Trevers’ actions and on account of that, Worde applied and secured protection for his works. This is another notable example of copyrights unfolding in England.

Timeline of Statutory Development

Details

Dates

Star Chamber Decree supporting copyright

1637

Ordinance of the Commonwealth concerning licensing was pronounced. Copyright was subordinate to political objects.

1643

Licensing Act

The Act enacted gives copyright coupled with license.

1662

British Statute of Anne

First Copyright Act was enacted. Copyright to be for fourteen years, and if author then alive, for fourteen years more. Conjointly, the author possessed the power to regulate price

   1710

Copyright to be for twenty-eight years absolutely, and further for the life of the author, if alive

1812

Fine Arts Copyright Act

Copyright to be for the life of the author and seven years longer, or for forty-two years, whichever term last expires.

1842

The Copyright Act

1911

 

Statutory Development

The Printers and Binders Act,1534, banned the import of foreign works and enabled the Lord Chancellor to limit the price of books. A charter was granted by Philip and Mary in 1556, intending to prevent the propagation of the Protestant Reformation. The Stationers’ Company received its Royal Charter which gave the company the power to decree who could print books. It also granted the company the right to seize illicit or pirated works[3]. Further censorship was introduced by Henry VIII who required that all books should be approved before publication.

In another instance, the famous ‘Decree of Star Chamber concerning printing’ issued in I637 set forth the following:

that no person or persons whatsoever shall at any time print or cause to be imprinted any book or pamphlet whatsoever, unless the same book or pamphlet, and also all and every the titles, epistles, prefaces, poems, preambles, introductions, tables, dedications and other matters and things whatsoever thereunto annexed, or therewith imprinted, shall be first lawfully licensed.’

  1. Licensing Act

The Licensing Act of 1662 conferred upon the company the right to sue for any infringement.

To bestow such a right, a register of licensed books was maintained wherein certain members were accorded the powers to search and seize books that were not licensed. Understandably, the Licensing Act could not operate for too long as it failed to distinguish between intellectual piracy and physical piracy.

  1. British Statute of Anne

With the enactment of the Statute of Anne, 1710, first time in British history, ‘copyright’ was statutorily recognised as a legal right. It afforded security and entitlement upon authors with the intention of promoting extensive learning.

Key requisites of the Act 

  1. As per the provisions of the Act, the Author of a book yet to be printed shall have the sole right printing for 14 years and if the author survives the 14 years, an additional 14 years of the aforesaid right shall be granted to him.
  2. Infringers must forfeit the infringing books found in their custody and shall be fined with half amount to be paid to the crown and the other half to the plaintiff.
  3. Only books entered for publication in the ‘Register Book’ of Stationer’s Company can be sued for infringement.

Precedents

  1. Bach v. Longman[4]

Brief Facts – The case discussed on the issue of whether or not printed music fell within the purview of copyright protection as conferred by the Statute of Anne.

Ratio Decidendi- It was held by the Court that printed music fell perfectly within the scope of protection granted by the Statute of Anne.

  1. Gyles v. Wilcox[5]

Ratio Decidendi The doctrine of fair abridgement was propounded for the first time in UK history. The main discourse in the case revolved around whether or not an abridgement of copyright inherently constituted copyright infringement, or whether they could qualify as a separate, new or derivative work. The Justice ruled that abridgement fell under two categories:

  1. True abridgements
  2. Coloured shortenings

True abridgements include a genuine effort shown on the part of the editor to constitute a new work which is not intended to infringe upon the copyright of the original.

  1. Walter v. Lane

Brief Facts – Certain reporters working for The Times newspaper took down some notes during a series of speeches delivered by the Earl of Rosemary, a renowned politician.  The verbatim speeches were then transcribed and published in the newspaper, The Times.  Using these published speeches with verbatim quotes from the paper edition, the respondent published a book. The issue was whether journalists have copyrights.

Ratio decidendi – The court held that the reporters were authors under the Copyright Act 1842. The effort, skill and time that spent was sufficient to make them original. According to Lord Brampton, writing reports required considerable intellectual skill and labour beyond the mere mechanical operation of writing.

  1. Fine Arts Copyright Act and Copyrights Act

As the name suggests, the Fine Arts Copyrights Act extended the terms of copyright to fine arts as well. Fine arts would include music, dance, paintings etc. Successively, the Copyright Act of 1911 was passed which consolidated all protections with respect to the Berne Convention and the salient features of Act included:

  1. Extension of term of copyright to life and 50 years posthumously.
  2. The need to register in the ‘Register of Stationers’ to receive protection was done away with
  3. Work that remained unpublished is also entitled to protection
  4. The Act includes all forms of arts such as literature, painting, music, photography etc.

Current Regime

  1. Copyright, Designs and Patents Act, 1988

Currently, copyrights in UK is governed by the Copyright, Designs and Patents Act enacted in 1988. For copyright to subsist the literary, dramatic, musical and artistic work must adhere to the ‘originality’ criterion. Obviously, such work should not be copied from another and must be produced based on individual skill, judgement and own work. Additionally, the work must be recorded in writing and must meet the UK qualification of nationality of the author or the requisite of ‘place of first publication’. The copyright should not have already expired.

It has often been said that the aforementioned statute provides a close list of works that can claim copyright. However, in the decision of Brompton Bicycle Ltd. v. Chedech[6] it was held that a close list may not always be efficacious in the protection and enforcement of copyright. In another landmark case of Express Newspapers v. News (UK) Ltd[7] , the precedent set in Walter v. Lane was upheld, reiterating that journalists are also authors. 

  1. Duration of Copyright Protection

 Terms of protection include:

  1. For literary, dramatic, musical and artistic works for a period of the author’s life and 70 years after her/his death.
  2. For computer generated literary, dramatic, musical and artistic works copyrights subsists for 50 years from the end of the calendar year in which the work was made.
  • In a film the copyright expires 70 years after the last date in the calendar year of the death of the principal director, the author of the screen play and the composer of music, if any in the movie.
  1. Copyright in a sound recording ends 50 years from the last day in the calendar year that it was published.
  2. Copyright in broadcast also subsists fro 50 years from the end of calendar year in which it was published.
  3. Copyright in the typographical arrangement of published edition expires at the end of 25 years from the end of calendar in which the edition was first published.

Landmark Case Law pertaining to a Current Discourse

Temple Island Collections Ltd v New English Teas Ltd[8]

Brief facts – The Claimant’s photograph was a picture of a bright red bus with the Houses of Parliament and Big Ben in black and white in the backdrop. Additionally, Westminster Bridge, and the river in black and white was present in the foreground. The Defendant used a similar photograph in their souvenir products, just that the picture was taken from a different angle. The claimants sued the defendants for infringement of copyrights.

Judgement – Judge Birss found that the Defendant’s photograph infringed the Claimant’s copyright in its photograph.

Discourse – The decision raised several questions in the legal fraternity and its potential impact on what is known as the stark difference between idea and expression. The English Courts have recognised a principle in copyright cases which embraces the idea that a line should be drawn between the idea behind a work, which tends not to be protected by copyright, and the expression of that idea, which can be protected.  It has often been contended by many commentators hat, in the aforementioned circumstance it was the idea that was similar and not the expression of it and hence, the defendants cannot be sued for copyright violation.

Conclusion

The copyright system adopted by UK dates back to a gradual development and evolution that took place over many centuries. The current system is an aggregate and consolidation of various principles, ideas and rules that evolved overtime to protect the intellectual labour of creative authors and it is no doubt that it was the English-speaking race that persevered for the first time to change the special privilege of copyright to a statutory right that today governs all ‘useful works of art’.

 

[1] Matt Schrage, Rousseau and Locke on property and state, MODERN POLITICAL THOUGHT (Apr. 17, 2021, 9:50 PM IST), https://blogs.harvard.edu/mattschrage/2018/04/26/rousseau-and-locke-on-property-and-the-state/.

[2] Brander Matthews, The evolution of copyright, JSTOR (11-04-2021 21:48 UTC ), https://www.jstor.org/stable/2139530.

[3] The UK Copyright Service, https://copyrightservice.co.uk/copyright/history-copyright (last visited Apr.17, 2021).

[4] 2 Cowper 623 (1777).

[5] (1740) 26 ER 489.

 

 

 

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Blog Intellectual Property Law

Trademark Dilution

By: Muskan Sharma

Introduction

Trademark Dilution is an act when someone uses a trademark, without any authority, that tarnishes or blurs the image of a famous mark. Dilution is a type of violation of a trademark, in which the defendant’s use, though not causing the likelihood of confusion, blurs distinctiveness or tarnishes the image of the plaintiff’s famous mark. The protection provided by Section 29(4) of the Trademarks Act, 1999, to the dissimilar goods and services, is based upon the ‘doctrine of dilution’.

The irony is that the expression ‘dilution’ has not been used expressly anywhere in the Trademarks Act, 1999. A plain reading of Section 29(4) of the Trademarks Act, 1999 reveals that a person infringes an already registered trademark if he, not being a person authorized with the permitted use, uses a trademark which—

  1. is similar to or identical with the already registered trademark, and
  2. is used to represent those goods and services which are way different from those for which the trademark was first registered, and
  • the registered trademark is a famous mark, and
  1. is detrimental to the distinctive characteristics of the registered trademark.

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Importance of Doctrine of Dilution

The purpose behind the protection of trademarks is to avoid weakening or dilution of trademarks. If the subsequent user resorts to the use of the similar or near the similar mark in respect of the same goods or services, it would not only decrease the value of the famous mark i.e. trademark of the prior user but ultimately result in dilution of the mark itself. Such an invasion made by the subsequent user is nothing but a commercial invasion. It may yield greater profits to the subsequent user for sometime but will harm the market in the long run.

A Trademark is like a property and no unauthorized person is allowed to commit trespass on it. Such a kind of dilution or weakening of the famous mark, therefore, need not be accompanied by the element of confusion.

In Caterpillar Inc. v. Mehtab Ahmed[1], the Delhi High Court has highlighted the importance of the ‘Doctrine of Dilution’. The Delhi High Court observed:

“So far as doctrine of dilution is concerned, it is an independent and distinct doctrine. The underlying object of this doctrine is that there is presumption that the relevant customers start associating the mark or trade mark with a new and different source. It results in smearing or partially affecting the descriptive link between the mark of the prior user and its goods. In other words, the link between the mark and the goods is blurred. It amounts to not only reducing the force or value of the trade mark but also it gradually tapers the commercial value of the marks slice by slice. Such kind of dilution is not a fair practice that is expected in trade and commerce”[2].

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Trademark Dilution in India and USA

Indian Courts have recognized the following as essentials of dilution under Section 29(4) of the Trademarks Act, 1999:

  1. The impugned mark should be similar or identical to the injured mark,
  2. The one claiming injury caused by dilution must prove that his trademark is a famous mark,
  • The use of the impugned mark is without any due cause and authorization, and
  1. The use of the impugned mark amounts to taking unfair advantage of the reputation of the famous mark or is detrimental to the distinctive characteristics of the famous mark.

The US Courts have a stricter approach than Indian Courts. In India, the trademark needs to have a reputation whereas according to the US laws, the trademark should be a famous mark. In the US, the user of an averagely well-known trademark cannot claim for dilution of a trademark. A clear distinction has to be made between a mark with a reputation and a famous mark. Dilution rights are indeterminate in nature and therefore, the standard of fame required to claim dilution rights should be high. A trademark that is not distinct and famous cannot be diluted.

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In the USA, the Trademark Dilution Revision Act, 2006 has been enacted to deal with Trademark Dilution. The Act provides that to determine whether the impugned mark satisfies the required degree of fame, the following factors should be taken into account:

  1. The extent, duration, and geographic reach of publicity and advertising of the trademark, whether publicized or advertised by the owner or third party,
  2. The volume, amount, and geographic extent of sale of goods or services offered under the representation of the famous mark,
  • The extent of the recognition of the famous mark, and
  1. Whether the famous mark was registered in some register or under any previous legislation.

Forms of Trademark Dilution

Trademark dilution does not cause confusion and comes mainly into two forms:

  1. Blurring, and
  2. Tarnishment

Take the example of ‘Coca Cola’ and ‘Coke’. Both the names and the shape of the bottle in which the beverage often comes are famous marks. If a third firm markets its product as ‘Coca Cola’, it will lead to ‘trademark infringement’. If a third firm markets its product as ‘Sugary Cola’ in Coke-shaped bottles, it can weaken the uniqueness of the characteristics of the bottle. This will amount to Blurring. However, if another firm sells vodka and label it as ‘Coca Cola Vodka’, it can damage the brand image associated with the name ‘Coca Cola’. It will amount to tarnishment.

Therefore, a conclusion can be drawn that when it affects characteristics associated with the name of a famous brand or a famous mark, it is blurring. However, if the process leads to the weakening of the distinctiveness of the name of the famous brand or famous mark, it is tarnishment.

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Dilution by Blurring

Blurring refers to the subverting of the distinctiveness caused by the unauthorized use of a famous mark on dissimilar products. Blurring takes place when a third party uses a trademark in such a way that it decreases the likelihood that the famous mark will be a unique identifier of the prior registered products and services. It hinders the market growth of the owner of the famous mark being used.

Dilution by Tarnishment

Dilution of a trademark may also be performed by either sullying or impairing a distinctive quality of a trademark of an already existing user. This is usually known as ‘dilution by tarnishment’. The purpose behind such an invasion is to degrade, tarnish, or dilute the distinctive quality of a trademark. For instance, if an attempt is made to communicate an idea that a particular product of a senior user is injurious to the health or is inferior in quality and some epithet is used in the advertisement. If one has to convey the idea that Coca Cola is not good for health, and his advertisement campaign states Drink Cocaine in the same font and script as used by the senior user, he will be considered liable for dilution of a trademark.

The act of dilution of a trademark by way of tarnishment is mostly with regard to strong, well-recognized, and famous trademarks. It has the effect of weakening or diminishing the identification value and strength of the trademark. There is no need to establish the likelihood of confusion with regard to affiliation, source, and connection. This is so as some potential buyers may be confused as to the source or affiliation while others may identify the source or affiliation without any hassle.

Landmark Cases

  • Bata India Ltd. v. M/S. Pyare Lal & Co. Meerut City & Ors.[3]

The Plaintiff company ‘Bata India Ltd.’ came to know about ‘Batafoam’ which used to deal in sofas, cushions, mattresses, and similar items. ‘Batafoam’ was using the name ‘Bata’ in the same form and style and an average customer would’ve mistaken both the trademarks as the same.

The Hon’ble Allahabad High Court held that this action of the defendant of using Bata’s trademark will cause damage to the reputation of the plaintiff. It is a trespass on the right of the plaintiff over the trademark ‘Bata’. Bata’ is neither a fancy name nor a paternal name and not related to the defendant in any case. It is a name well-known in the shoe industry. The Court observed that the defendant is causing not just deception in the minds of the buyers but an injury to the plaintiff as well.

  • Daimler Benz Aktiegesellchaft and Anr Hybo Hindustan[4]

The Delhi High Court observed that the use of the trademark ‘Benz’ for underwear by the defendant whereas the plaintiff has been already using the same trademark ‘Benz’ for cars would be discrimination against the usage of the pre-acquired trademarks by the plaintiffs. The Delhi High Court, therefore, granted the injunction which the plaintiff sought against the defendant.

  • Ford Motor Company CR Borman[5]

In the present case, the question before the Court was whether the use of the trademark ‘Ford’ to represent shoes by the defendant amounts to an infringement of the plaintiff’s right over the famous mark ‘Ford’ to represent automobiles.

The Court observed that the use of a famous mark for two different classes of products also amounts to tarnishment of a trademark. Therefore, the defendant’s action of using the trademark ‘Ford’ to represent shoes does amount to an infringement of the plaintiff’s right over the famous mark ‘Ford’ to represent automobiles.

  • ITC Ltd. v. Philip Morris Products SA[6]

The plaintiff was the owner of the ‘WELCOMEGROUP’ logo containing a device displaying folded hands. In a suit for dilution of trademark, the Hon’ble Court stated that the plaintiff has to pass a more stringent test (than the deceptive similarity standard) of proving similarity or identity. The observed that a global look, rather than a focus only on the mutual elements of the mark, is to be taken while deciding if the impugned or junior mark infringes, by dilution of an existing registered mark. The plaintiff’s mark resembles a ‘W’ but the gesture of ‘Namaste’ is discernible. All the defendant’s previous marks resemble ‘M’ (Maybe Marlboro). Considering the overall marks for the logo, without cataloguing minutely the dissimilarities or similarities, this court discerns no ‘similarity’ or ‘identity’ in the overall presentation of the two marks.

  • Bayerische Motoren Werke AG Om Balajee Automobile (India) Private Limited[7]

In the present suit, the applicant moved an application before the Delhi High Court seeking ad interim injunction against the defendant for using ‘DMW’ mark for e-rickshaws it manufactures. The plaintiff pleaded that ‘BMW’ is a famous mark and represents the existence of ‘Bayerische Motoren Werke’, A German automobile manufacturing company. The defendant used a deceptively similar mark for e-rickshaws. The last two letters of both the trademarks are ‘M’ and ‘W’ and the first letter of both marks ‘B’ and ‘D’ are phonetically similar. Therefore, the mark ‘DMW’ and ‘BMW’ are deceptively similar.

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The Delhi High Court observed that the defendant had adapted to the essential features of the famous mark of the plaintiff and the phonetic and visual resemblance was apparent. ‘DMW’ mark was supposed to cause confusion in the minds of the buyers due to the deceptive similarity between the two.

The Court held that in the case of famous marks like ‘BMW’, the use of a phonetically and visually similar trademark by the defendant does constitute infringement under Section 29(4) of the Trademarks Act, 1999 because it is detrimental to the reputation of plaintiff’s famous mark ‘BMW’. It was further held that the ‘deceptively similar’ standard was not a part of the infringement under Section 29(4) of the Trademarks Act, 1999, and the question of deceptive similarity would not arise in trademark dilution cases.

Conclusion

Trademark Dilution is, therefore, a process of trademark infringement where the subsequent use of a trademark dilutes the essence of a famous mark and uses the diluted mark for his own publicity and advertisement. Trademark dilution can be carried out by two methods namely, Blurring and Tarnishment. The idea behind the protection of famous marks from the process of trademark dilution is to preserve their uniqueness and distinctive characters. It also prevents the birth of confusion in the minds of buyers with respect to the goods and services associated with a brand’s famous mark.

In India, the trademark dilution regime is governed by Section 29(4) of the Trademarks Act, 1999 whereas in the US, the trademark dilution regime is regulated by the Trademark Dilution Revision Act, 2006. In India, there needs to be some level of reputation of the already registered trademark to constitute a case of trademark dilution whereas in the US, the already registered trademark should be a famous one to constitute a case of trademark dilution. The concept of Trademark Dilution under both regimes is similar to a great extent but there are slight distinctions like the standard of ‘reputation’ and ‘fame’.

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[1] 2002 (25) PTC 438 (Del)

[2] Ibid.

[3] AIR 1985 All 242

[4] AIR 1994 Delhi 236

[5] MIPR 2008 (3) 418

[6] 2010 (42) PTC 572 (Del)

[7] CS (COMM) 292/2017

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IP and MSMEs: The Climacteric Role of Intellectual Property in the Future of MSMEs

By: Rushika M

“Intellectual Property is the oil of the century. Look at the richest men a hundred years ago; they all made their money extracting natural resources or moving them around. All (of) today’s richest men have made their money out of intellectual property.”

-Mark Getty

  1. Introduction

Intellectual property is an important legal and cultural issue.[1] The increasing speed of technological advancement and economic integration in recent years has highlighted the importance of intellectual property[2] and put great stress on the knowledge and ability of persons, businesses and entities to protect their intellectual property rights. One of the sectors of society most affected by its lack of cognizance and perception of intellectual property is the Micro, Small and Medium Enterprises (hereinafter “MSME”) sector. Therefore, the importance and pre-eminence of intellectual property for the MSME sector is the keynote of this article.

  1. What are MSMEs?

As previously mentioned, MSME stands for Micro, Small and Medium Enterprises. As the term suggests, MSMEs essentially refer to small businesses in the private sector. Across the world, regulators and financial institutions apply parameters such as the strength of employees, annual sales valuation, fixed assets valuation, loan size proxies and similar parameters to define MSMEs and classify entities accordingly. Even the World Bank classifies MSMEs based on three criteria: (i) employee strength; (ii) size of assets; and (iii) annual sales.[3]

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In India, the classification of MSMEs is made under the Micro, Small and Medium Enterprises Development Act, 2006 wherein, the three categories of entities are defined under section 6 of the Act,[4] in respect of their investment in Plant and Machinery or Equipment and their turnover value as follows:

  • Enterprises whose investment does not exceed one crore rupees or turnover does not exceed five crore rupees are Micro enterprises;
  • Enterprises whose investment does not exceed ten crore rupees and turnover does not exceed fifty crore rupees are Small enterprises; and
  • Enterprises whose investment does not exceed fifty crore rupees and turnover does not exceed two hundred crore rupees are Medium Enterprises.

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  1. Role of Intellectual Property in MSMEs

Across the world, the MSME sector significantly contributes to socio-economic growth and development of nations. In India alone, an approximation of 6.3 crore MSMEs contribute to 29% of India’s GDP from national and international trade operations.[5] Their contribution to entrepreneurial development and employment in the country is also tremendous. In light of the same, it is of considerable prudence to secure and protect the interests of MSMEs as they are also consequential to the economy at large.

Conventionally, MSMEs have relied on the creation and accumulation of tangible assets such as land, machinery and office equipment, along with their revenue and receivables, to boost their financial standing, valuation and prestige in the industry.[6] However, by dint of scientific and technological developments in the recent past, MSMEs have been catapulted into a quest of an entirely different nature wherein each entity is competing to amass intellectual property of the greatest value. It is hence the actuality of the present day that intellectual property shall play a colossal role in determining the ensuing path of the MSME sector.

Primarily, intellectual property enables MSMEs to protect their ideas and innovations. MSMEs spend large amounts of money, time and resources in the research and development of various works, technologies and products. However, their work is often taken advantage of and commercially exploited as their ideas are copied, or cheap replicas or imitation products are produced and passed off as the product of the MSME or sold by competitors. In either case, MSMEs are the entities that suffer great economic losses and setbacks. Intellectual property rights protect and safeguard MSMEs against these very dangers apprehended, and in cases of violation or infringement of rights, provide MSMEs with adequate remedies and reliefs to secure their interests.

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Secondly, intellectual property allows MSMEs to harness the commercial value of their work in the form of revenue verticals, licensing agreements, further research and development arrangements, etc. thereby allowing MSMEs to recoup their investments and also encouraging further investments in innovation and scientific advancement.[7]

Thirdly, intellectual property plays a significant role in the establishment and promotion of the MSME’s brand identity.[8] Not only does it prevent other entities from imitating the MSMEs creations, it also protects the image of the MSME from being tarnished or impersonated by others. Thus, intellectual property enables MSMEs to retain the authenticity and originality of their identity.

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Further, intellectual property adds to the value chain of business at each level, may it be the stage of ideas and innovations, research and development, or the actual production of the good or commodity. Even at the marketing and distribution level, intellectual property constantly adds value to the product and to that of the MSME. Some intellectual properties hold a greater individual valuation than the sum total of all the other tangible assets of the enterprise combined.[9] Therefore, effective intellectual property management is key to enhancing the corporate and monetary worth of the MSME.

Finally, effective intellectual property management also aids MSMEs in attracting potential investors, in accessing financial resources and in entering new market areas.[10]

  1. Conclusion

From the above, it is evident that intellectual property plays an indispensable role in securing the socio-legal and economic interests of MSMEs. Not only does intellectual property provide a clearly discernable competitive advantage to MSMEs, it is in fact quintessential to the growth and subsistence of MSMEs in the future. Inadequate knowledge and protection of intellectual property could quite possibly result in the closure of various MSMEs as large corporate entities with massive resources dominate the industry and create legal monopolies under the garb of intellectual property protection. Therefore, the acute need of the hour is for MSMEs to recognize and appreciate the role of intellectual property in determining the future of the MSME sector and in preventing its apprehended downfall.

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[1] BCS, The Chartered Institute of IT, “Leaders in Computing: Changing the Digital World” (BCS, The Chartered Institute of IT, 2011)

[2] HE Dr. Talal Abu-Ghazaleh, https://www.talalabughazaleh.com/page.aspx?page_key=key_in_his_word#:~:text=%22The%20increasing%20speed%20of%20technological,effectively%20serve%20the%20global%20community.%22 (last visited April 25, 2021).

[3] International Finance Corporation, “Micro, Small and Medium Enterprise Finance in India”, (International Finance Corporation, 2012). https://openknowledge.worldbank.org/bitstream/handle/10986/26553/114457-WP-IN-MSME-Report-03-01-2013-PUBLIC.pdf?sequence=1&isAllowed=y

[4] Micro, Small and Medium Enterprises Act, 2006, §6, No. 27 of 2006, Acts of Parliament, 2006 (India).

[5] India Brand Equity Foundation, https://www.ibef.org/industry/msme.aspx#:~:text=India%20has%20approximately%206.3%20crore,2.1%20million)%20units%20in%202019 (last visited April 25, 2021).

[6] Rahul Bagga, “Why MSMEs should treat Intellectual Property Rights assets”, Economic Times (April 25, 2021, 11:58 p.m.), https://economictimes.indiatimes.com/small-biz/sme-sector/why-msmes-should-treat-intellectual-property-rights-as-assets/articleshow/69304077.cms?from=mdr

[7] National Institute for Micro, Small and Medium Enterprises, https://nimsme.org/IPR-and-Its-Implications-for-MSMEs (last visited April 25, 2021).

[8] Siddharth Mahajan, “MSMEs must protect their ideas; investment in IP protection is asset not expense”, Financial Express (April 25, 2021, 11:58 p.m.), https://www.financialexpress.com/industry/msme-other-msmes-must-protect-their-ideas-investment-in-ip-protection-is-asset-not-expense/1801781/#:~:text=Intellectual%20Property%20Rights%20(IPRs)%20are,%26%20Medium%20Enterprises%20(MSMEs).

[9] Altacit Global, https://www.altacit.com/resources/ip-management/msmes-and-intellectual-property-rights/ (last visited April 25, 2021).

[10] DK Sinha, “Need of Intellectual Property Rights (IPR) for MSMEs”, Your Article Library (April 25, 2021, 11: 58 p.m.), https://www.yourarticlelibrary.com/law/need-of-intellectual-property-rights-ipr-for-msmes/41149.

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The Android Schism: Google LLC v. Oracle America, Inc.

By Rushika M

“The fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technological world.”-    Justice Breyer                                                                                                   Introduction

‘Android’ is not a concept unfamiliar to most of us. It is a software platform and an operating system that provides computer programmers with the necessary infrastructure to develop new programs and applications. Since its launch in the year 2008, its valuation has quickly multiplied into billions of dollars. While the aforementioned is common knowledge, the dispute relating to the development of Android is rarely known to most. However, the latter, being of immense significance to the tech and legal industry alike, is the keynote of this article.

Background and Facts of the Case

The programming language Java, originally developed at Sun Microsystems which was later acquired by the tech giant Oracle, is one of the most popular and widely used programming languages today. Consequently, computer programmers spend years learning the language and subsequently using it. Essentially, the platform enabled users to write programs using Java code that could be run on any desktop or laptop computer, regardless of the underlying software. This is possible through a tool called Application Programming Interface (API) which allows users to use prewritten codes in their own programs to build certain functions without requiring them to write their own codes from the scratch to perform the same functions.

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The facts of the instant case[1] are thus, as follows. When in the year 2005 Google acquired Android, Inc., it initially entered into dialogue with Sun about the possibility of licensing the entire Java platform for its new smartphone technology Android. However, the idea of Android being about an open-source platform with minimal restrictions did not gel with the interoperability policy of Sun as the same would undermine the free and open business model conceived by Google. Consequently, Google built its own platform with original codes of millions of new lines. However, wanting millions of programmers who were already familiar with Java to be able to easily work with its new Android platform, it also copied approximately 11,500 lines of code from the Java SE program that were part of the API tool.

Subsequently, upon acquiring Sun Microsystems, Oracle brought a suit against Google for copyright infringement and hence the present dispute arose.

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In the first instance, the District Court ruled in favour of Google while deciding that the code was not the kind of creation to which the protections of copyright law were extended. In the second instance on appeal, the Federal Court ruled in favour of Oracle, finding that the code was indeed copyrightable and Google’s use was more than required, and hence could not be treated as fair use. Consequently, Google filed a petition for certiorari before the Supreme Court of the United States in respect of which the hon’ble court has recently rendered its decision.

In the instant case, two questions were presented before the Hon’ble Court.

  • Whether the code in respect of which infringement was alleged was copyrightable?
  • Whether Google’s use of such code was saved by the defense of ‘fair use’?

Judgement of the Supreme Court

As previously mentioned, Google’s petition posed two important questions before the hon’ble court. In respect of the first question, the court was of the opinion that given the rapidly changing technological, economic, and business-related circumstances, it must not answer more than was necessary to resolve the dispute. Therefore, for arguments sake, it decided to assume that the entire Sun Java API fell within the definition of that which could be copyrighted. Instead, it decided to focus on the second question posed before it.

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In respect of the second question, i.e., whether Google was entitled to the defense of fair use, the court applied the considerations as laid down in leading cases such as Campbell v. Acuff-Rose Music, Inc.[2] and the statutory factors as provided under the Copyright Act.[3] In doing so, its decision was based on the following four parameters:

  • The nature of the copyrighted work;
  • The purpose and character of the use;
  • The amount and substantiality of the portion used;
  • Market effects.

With regards to the first parameter, the court found that the nature of the copyrighted work pointed towards fair use for two notable reasons, First, Google wrote its own programs to perform each task that its API would call up. Second, it recognized that some works were closer to the core of copyright than others and found that Java’s declaring code, if copyrightable, was further from copyright than most computer programs.

Answering in respect of the second parameter, the court was of the view that Google’s use of the copyrighted work was not only consistent with the constitutional objective of copyright law, i.e., creative “progress”, but was also transformative in nature and hence, on this issue too, the court found in favour of fair use by Google.

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On the third issue of the amount and substantiality of the portion used, it discussed two possibilities: (i) that the use of 11,500 lines, i.e., 37 packages may be prima facie substantial, (ii) that if millions of lines of Java code were considered, the use was merely 0.4% of Java’s code. Further, it recalled the judgments wherein the court held that it was not the quantity of copyrighted material used but rather the quality that must be considered. If the portion used was small, but nonetheless formed the heart of the work, then it would amount to an infringement. The Supreme Court hence considered whether it was necessary for Google to use all the codes that it had or was the use excessive. It found that such use was indeed necessary to accomplish Google’s objective and hence was ‘substantially’ fair use.

Finally, deciding on the fourth parameter, the court considered the uncertain nature of Sun’s ability to compete in Android’s marketplace, the sources of its loss of revenue, and the risk of creativity-related harms to the public, and decided that the parameter of ‘market effects’ also weighed in favour of fair use.

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Hence, in light of the abovementioned findings, the court concluded as follows:

“We reach the conclusion that in this case, where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of the Sun Java API was a fair use of that material as a matter of law.”

Analysis and Conclusion

Google and Oracle’s dispute has been a long-standing one. Many interested parties in the technological industry and the legal fraternity have keenly awaited this judgement that could quite drastically alter the course of copyright jurisprudence.

The decision of the Supreme Court in the instant case, appears at the outset, to be fair and well-reasoned. Considering the lack of technical knowledge of the judiciary, especially in respect of recent and continually evolving technologies and software, the judgement clearly lays out sound explanations in deciding on various parameters. However, a striking observation from the judgement is the conspicuous distinction drawn between computer programs and traditional copyrightable concepts. This distinction could manifest as a dangerous precedent for copyright protections and could possibly even dilute them to a great extent. Further, although the judgement appears to be favourable to various software and computer programmers today, this distinction treating computer programs differently could subsequently prove to be disadvantageous to these very programmers.

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In conclusion, it is stated that at present, the anticipated impact of the instant judgement is based merely on assumptions and conjecture. The denouement of this judgment however, will only be known as courts decide further disputes on similar issues while treating the judgment in the case of Google LLC v. Oracle America,[4] Inc. as precedent.

[1] Google LLC v. Oracle America, Inc., MANU/USSC/0003/2021.

[2] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

[3] Copyright Law of the United States of 2020, 17 U.S.C., §107, https://www.copyright.gov/title17/title17.pdf.

[4] Supra, 1.

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Analysis of Laws relating to Patents in India, U.S.A. and U.K.

By: Siddharth Sutaria

1.1.WHAT IS PATENT?

Patents were one of the first types of intellectual property to be recognized in modern legal systems. Today, patented inventions pervade every aspect of life, from electric lighting (patents held by Edison and Swan) to the iPhone (patents held by Apple).

Patents are a form of IP used to protect a product or process that is new, involves an inventive step and has some form of industrial utility.

Patents are concerned with the protection of an invention.

By patenting an invention, the patent owner gets exclusive rights over it, meaning that he or she can stop anyone from using, making or selling the invention without permission. The patent lasts for a limited period of time, generally 20 years. In return, the patent owner has to disclose full details of the invention in the published patent documents. Once the period of protection has come to an end, the invention becomes off patent, meaning anyone is free to make, sell or use it.

1.2.WHAT TYPE OF INVENTIONS ARE PATENTABLE?

PATENTABLE SUBJECT MATTER:

In order to be eligible for patent protection, an invention must fall under ARTICLE 27.1 OF THE TRIPS AGREEMENT. Provided that, subject to certain exception or conditions under that agreement, patents shall be available for any invention, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of an industrial application.[1]To qualify for patent protection, an invention must be of some practical use and must offer something new which is not part of the existing body of knowledge in the relevant technical field (what lawyers call the prior art). But these requirements of utility and novelty are not enough; the invention must also involve an inventive step – something non-obvious that could not just have been deduced by someone with average knowledge of the technical field.[2]

Furthermore, the invention must not fall under non- patentable subject matter, such as,

  • A mere idea (e.g., law of nature or principle) without application are not patentable.
  • Pure mathematical algorithms (e.g., E = mc2) are not patentable.
  • An inoperable device (e.g., Perpetual Motion Machine) are not patentable.
  • An obvious improvement of an old device is not patentable.

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PATENT LAWS IN INDIA, USA AND UK

2.1. INDIA

The recognition and enforcement of patent rights in India is principally governed by the Patents Act 1970 and the rules issued under the Act. The Act has been amended several times and was substantially amended by the Patents (Amendment) Act 2005 to bring the Indian patent regime into line with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPs).

The latest amendment to the Patents (Amendment) Rules 2019 came into force on 17 September 2019 to ease the procedural rules concerning e-filing of documents under which original documents will be required only on being requested by the Patent office. The amendment also expanded the eligibility criteria for expedited examination of applications under the Patents Act, 1970 to include applicants such as small entities, government departments, and government-funded bodies and so on.

Court decisions are a relevant source of patent law in India. Indian courts also rely on decisions of both European and US courts as sources of patent law. In the last couple of years, Indian courts have adjudicated on a number of substantive patent law issues, including:

  • Infringement (Merck Sharpe and Dohme Corporation v Glenmark)[3]; F Hoffman La Roche v Cipla Ltd.)[4]
  • Patentability (Novartis v Union of India)[5]; Merck Sharpe and Dohme Corporation v Glenmark[6]; F. Hoffman La Roche v Cipla Ltd.[7]).
  • Fair, reasonable and non-discriminatory licensing (Telefonaktiebolaget LM Ericsson v Intex Technologies[8]; Telefonaktiebolaget LM Ericsson v M/s Best IT World (India) Pvt Ltd (iBall)[9].).
  • Permissibility of exports under the Indian Bolar Exemption (Bayer Corporation v Union of India & Ors. LPA No. 359/2017 and Bayer Intellectual Property GMBH & Anr. v Alembic Pharmaceuticals Ltd.)[10]
  • Grant of patent for computer programs (Ferid Allani v Union of India).[11]

The Indian Patent Act, 1970 holds that a mere discovery of a new form of a known substance or the mere discovery of a new use of a known substance would not be patentable.[12] India being a party to the TRIPS Agreement expressly incorporates within its domestic legislation the ‘Patentable Subject Matter’, enumerated in Article 27 of the TRIPS Agreement, which reads as: “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application[13] which indicates the qualification of the Novelty-Utility-Non Obviousness test.

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“Invention” means a new product or process involving an inventive step and capable of industrial application[14]. A bare perusal of the definition clearly shows that even a process involving an inventive step in an invention within the meaning of the Act. It is, therefore, not necessary that the product developed should be a totally new product. Even if a product is substantially improved by an inventive step, it would be termed an invention[15]. What is to be noted here is that patents are not only given on “new inventions” but also on “inventions” as defined in the Patents Act, 1970.

Patent protection cannot be obtained for a “mere idea”[16]. The principle of Patent Law is that an idea or discovery as such is not patentable. It neither forms a part of prior art or technique. It is the practical application of the idea or discovery that leads to patentability.

Inventive step is a feature of an invention that involves technical as compared to the existing knowledge or having economic significance or both and that makes an invention not obvious to a person skilled in the art. To meet the inventive step, there has to be a technical advancement or economic significance or both. The requirement of technical advancements, therefore, diluted and compromised by the fact that a patent could simply be granted on economic significance alone.[17]

2.2.UNITED STATES OF AMERICA

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time (usually, 20 years) from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.[18]

United States patent law is codified in Title 35 of the United States Code, and authorized by the U.S. Constitution, in Article One, section 8, clause 8, which states:

The Congress shall have power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.[19]

The first US Patent statute was enacted with the object entitled “An Act to promote the Progress of Useful Arts”. It was a short Act that contained seven sections and specified the basic requirement to include “any useful art, manufacture, engine, machine or device, or any improvement therein not before known or used”.

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After U.S. became the member of the Paris Convention, there were two developments in U.S. influencing the development of patent law, the Sherman Act of 1890 and the Evarts Act of 1891. In 1952, the structure of modern patent law was adopted and since then, several amendments have been made. The Patent law is Title 35 of the United States Code which governs all cases in the USPTO.

2.3. UNITED KINGDOM

In Europe, two patent systems co-exist. Under the European Patent Organization (EPO & EPOrg) patents are granted which may cover up to 38 European states including the United Kingdom. The provisions for grant of patents in U.K. can be considered from the U.K. Patents Act 1977 (As amended) and also from the EPC (European Patent Convention).

The UK has legal systems in England and Wales, Northern Ireland and Scotland, but the Patent law on the necessary changes is the same for everyone. There are two ways to obtain patent protection in the UK which includes filing in national patent offices and filing a single European patent at the European Patent Office in Munich defining those countries where the patent is protected. The latter machine offers great cost benefits to those who are patented.

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Patent enforcement in the UK means that the owner must continue to see the laws of each country where the patent is registered. The patent system in the UK is expensive and the results of the enforcement plan may not be consistent but the system is complete and therefore very effective in eliminating flawed patents.[20]

It is also important to note the availability of threat actions and cost penalties to deter the casual assertion of weak claims. A peculiarity of the European patent system is that once the patent is granted by the European patent office it transforms to local patents in each of the signatory countries that were designated in the application.

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COMPARATIVE ANALYSIS

3.1. SIMILARITIES IN PATENT LAWS OF INDIA, USA AND UK

Patent laws in India, USA and UK are very similar as they all grant developers certain rights for a specified period of time in exchange for their disclosure in relation to the established production method. The legal systems of the USA, UK and India have some of the same characteristics which are the general requirements of Novelty, Non-transparency / initiative to create and use inventions that must be patented. The basic principles of Patent law are generally the same worldwide; the difference lies mainly in the processes of each program.

Although a few aspects of patent law have been harmonized internationally, there are still many significant differences between the processes followed in the USA, UK and India discussed in this study.

3.2. DISTINCTION BETWEEN THE PATENT LAWS OF INDIA, USA AND UK

In UK [Article 60 of the EPC] and India[Section 2(y), 6 and 7 of the Patents (Amendment) Act, 2005], the first to have filed the patent application are considered as the inventor which means that the filing date is what is considered and is given the first priority even if a second person comes up with the invention before the first. Which in case of USA, in case of two or more applications for the same invention a determination is made as to who invented it first. If two or more applications are filed by different inventors claiming substantially the same patentable invention a proceeding known as an “interference” is instituted by the USPTO to determine who is the first inventor and entitled to the patent. (35 U.S.C. Section 135) provided that the patent has not been issued, nor the application been published, for more than one year prior to the filing of the conflicting application, and provided also that the conflicting application is not barred from being patentable for some other reason. However, the first applicant to file has the prima facie right to the grant of a patent, but if the second patent application is been filed for the same invention, the second applicant can lodge interference proceedings to determine who was the first inventor and thereby who is entitled to the grant of a patent.Thus in the US, the patent goes to the first to invent and not to the first to file. Every Patent Office in the world is based on a “first to file” system.

US has a one-year grace period (35 US Code Section 102). This means that the inventor can publish his invention 1 year before filing the patent without losing patent rights. However, if the inventor discloses his or her own work more than 1 year before the filing of the patent application, then he/she is barred from obtaining a patent.Whilst in UK [Article 54 EPC] and India [Sections 2(l), 29, 30 and 31 of the Patents (amendment) Act, 2005], the one-year grace period is absent. If an inventor makes his/her work public a year before he files a patent for the said work, he/sheautomatically loses all potential patent rights.

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The patent for a business method is an important point of distinction between the USA, the UK and India. Business method patents are not owned and have never been patented in the UK or any other country in Europe and in India business methods are not patented individually but can be patented if the new approach seeks to resolve the technical problem and is naturally structured. Or, in the case of the USA, patents for business methods are valid as long as it is more than just the implementation of a well-known business process.

India, USA and UK have a similar situation with patent applications i.e., patent applications are published 18 months after the date of submission, unless they have been issued. The only difference is that, in the UK and India they cannot apply for non-publication.

In the UK, once a patent has been granted, anyone has the right to oppose it within nine months of the grant. If a Patent is found to be invalid, it is revoked in all countries at the same time. Indian Patent Law only applies to patent disputes where the patent application was published but before the patent was granted. While the USA has a re-examination process that is different from that of the opposition party. In re-examination, anyone can submit reasons and evidence to the USPTO to challenge the validity of a patent granted.

3.3.CONCLUSION

This paper aims to shed light on the most common patent systems in India, the UK and the US and identifies significant similarities and differences between similarities.

By carefully examining the patent laws of the USA, India and the UK, it can be said that the patent process in India is almost identical to that of the UK and differs from that of the USA. Almost every country has its own Patent Law, and if you wish to apply for a Patent in a certain country, you must apply for a Patent in that country, depending on the needs of that country. Patent laws do not apply internationally.

Overall, efforts should be made to bring in patent laws of different countries in order to overcome errors, unfair advantages and lacunae in relation to certain areas of law. This is an important step in raising profits for founders around the world.

 

[1]Intellectual Property- Law and Management by Rodney D Ryder.

[2]https://www.wipo.int/publications/en/details.jsp?id=4528

[3]CS(OS) 586/2013 judgment dated 7 October 2015.

[4]RFA(OS) 92/2012, judgment dated 27 November 2015.

[5](2013) 6 SCC 1.

[6]supra

[7] supra

[8]Cs(Os) No.1045/2014, judgment dated 13 March 2015.

[9]CS (OS) 2501/2015, judgment dated 2 September 2015.

[10]RFA(OS)(COMM) 6/2017 (March 22, 2019), Division Bench of the Delhi High Court (Bayer cases).

[11]  2019 SCC Del 11867.

[12] Commission of Intellectual Property Rights (CIPR) Report of September, 2002.

[13] Article 27, TRIPS Agreement.

[14] Section 2 (1) (j), Patents Act, 1970.

[15] Dhanpat Seth v. Nil Kamal Plastic Crates Ltd., 2008 (36) P.T.C. 123 (H.P.) (D.B.).

[16] IBM Corp.’s Appln., [1980] F.S.R. 568.

[17] Ram NarainKher v. Ambassador Industries, New Delhi, A.I.R. 1976 Del 87

[18]35 U.S.C.A. § 154(a)(2).

[19]https://en.wikipedia.org/wiki/United_States_patent_law#cite_note-1

[20] International Patent Law, ISBN 978-1-587-62382-0, Lucas Bateman, Cobbetts Solicitors, Leeds.

 

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Trade Dress Protection in India and U.S.A.

By: Diksha Garg

Introduction

Intellectual and incorporeal property rights have been incorporated to protect the ownership rights of inventors. Over the course of the past few decades’ deliberations on whether the notion of product packaging and the appearance of the product could be considered within the purview of the aforementioned rights as well. A subset of trademark, trade dress necessarily refers to the “get-up” of a product.[1] It includes all composite aspects of a product that make up the visual appearance of the product.[2] While in its inception “trade dress” protected only the superficial aspects of the appearance of the product, the scope of the same was enhanced later to include “all elements of the product which is later presented to the consumer.”[3]

The raison-de-tat to extend protection not just to the commodity, but also to its appearance and packaging can be to identify and distinguish similar commodities, which is imperative for the consumer as well. One of the first instances to witness the protection of Trade Dress in the U.S was when the courts conclusively held that the “defendant’s packages constitute the unfair use of the plaintiff’s trade dress.”[4] Trade dress of a company is also protected to prevent any misperception for the consumers and to ensure that the product is from genuine manufacturers.

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Trade Dress Protection

U.S.A

The jurisprudence on trade dress protection is largely inspired from that of the United States. The U.S has surmised a statutory framework for the protection of trade dress rights. The Section 43(a) of the Lanham Act, 1946 provides for such protection.[5] Lanham Act accords protection to registered trademarks that are in “use in commerce” or have been acquired with a bona fide intent to use in commerce. As per the aforementioned provision: –

“Section 43(a) – (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

  1. is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
  2. in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act. 15 U.S.C. §1125.”[6]

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In regard to a trade dress infringement, the aggrieved party must sufficiently fulfil the test and show that the “get up” of the commodity is inherently distinct or has acquired distinctiveness via secondary means, that there is a possibility of misperception as to the genuineness of the commodity and that the trade dress is non-functional.[7] Based on the above criteria interpreted by the courts, to seek a remedy for the infringement of the trade dress, the aggrieved must show:

  1. Distinctiveness

A mark may be distinctive in two ways – inherently distinctive or acquire distinctiveness via secondary means.[8] To acquire Trade Dress through secondary means essentially refers to the ability to create a distinct association in the minds of the consumer of the mark and its origin. The trade dress is acquired through longevity in use and its favourable acceptance by the consumer.[9] The two-fold test of the Supreme Court was cemented in the case of Two Pesos v. Taco Cabana[10] while deliberating and examining the distinctiveness of products irrespective of their configuration and packaging.

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  1. Non-functional Trade Dress

There exists an interesting dilemma while examining the issue of non-functional aspects of trade dress. At the outset it must be realized that this criteria for qualification under trade dress rights, refers to the ability of the seller to show that the design or packaging as a whole is not functional.[11] The reason being that the ability to secure each aspect of a product as “trade dress” would only lead to monopolization and unfair competition. Trade dress must be considered as a complex composite of features jointly and not severally.[12] Furthermore, inclusion of the functional aspects of the product within the scope of trade dress regime would create a conflict between the trade dress rights and patent rights. Precedents dictate that, “there exists a fundamental right to compete through imitation of a competitor’s product, which right can only be temporarily denied by the patent or copyright laws.”[13]

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  1. Emulation of the Trade Dress Would Result in Confusion

The concern of a likelihood of confusion only arises when there is a possibility when the consumer may possibly, after viewing a mark or trait, associate or misperceive the product and services of one company/manufacturer to be of another.[14] The ascertainment of the “likelihood” is carried out not by assessing all aspects of the trade dress of the plaintiff and the infringer, but on the overall impression created.[15] Thus, in most cases the evaluation of the likelihood of confusion is perceived as a gordian knot allowing the company with the better goodwill and reputation to emerge victorious.

INDIA

Though the jurisprudence of Trade Dress in India has evolved from that of the United States, it is notable that unlike the U.S, India does not have an explicit statutory backing to support the Trade Dress regime. However, the Section 2(1)(m) of the Trade Marks Act, 1999 provides some reprieve and recognises trade dress rights. The section defines a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.[16] Further, “package” is inclusive of case, container, folder, et al.[17] Additional protection is accorded by including within the ambit of “trade mark,” the visual aspects such as shape of products while analysing the distinguishing aspects of a product and its graphical aspects to grant a trade mark protection.[18] As with regard to the various elements of trade dress protection, the criteria is identical to that of the U.S.[19]

Further, the courts have unambiguously held that use of similar packaging as that of a plaintiffs product would amount to an infringement of the intellectual property rights of the plaintiff and that the defendant is restrained from utilising the same.[20] In the widely known case of Gorbatschow Wodka K.G,[21] the hon’ble High Court of Bombay found that the shape of the bottle of the defendant was deceptively familiar to that of the plaintiff, and that continued use of same was likely to infringe the rights of the plaintiff and thus the defendant was restrained from further use of the same. In another instance, the courts have also recognised the colour combination of similar products operating under different trademarks as trade dress.[22] While deliberating in the case of Christian Louboutin,[23] the Indian Courts for the first time declared trade dress “well-known” status similar to trade mark.

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Conclusion

There is a world of difference between the jurisprudence and protection of Trade dress in India and U.S. The reason being that the laws of India are still at a nascent and developing stage. The formalisation of a Trade Dress regime happened only vis the amendments of 2003 and is not completely at par with that of the U.S. An added advantage for the U.S regime is the structure provided through the legislative provisions. However, Indian laws are not quite as far behind and the increase in competition in the market has contributed affirmatively towards the growth of trade dress concerns.

[1] Kiran Mary George, Trade Dress Law in The Commercial Kitchen: Exploring the Application of The Lanham Act to Food Plating in The Culinary Industry, 10 NUJS L. Rev. 3 (2017). Available at: http://docs.manupatra.in/newsline/articles/Upload/1D11F646-E493-49B5-9E0D-7788D5C9B5EE.pdf

[2] Hartford House Ltd. v. Hallmark Cards Inc., 846 F.2d 1268

[3] Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27

[4] Eastman Kodak Co. v. Royal-Pioneer Paper Box Manufacturing Co. 197 F. Supp. 132 (E.D. Pa. 1961)

[5] Lanham (Trademarks) Act of 1946, 15 U.S.C § 1051 et seq.

[6] Ibid

[7] Gen. Motors Corp v. Urban Gorilla, LLC 500 F.3d 1222

[8] Abercrombie & Fitch Co. v. Hunting World Inc., 1 537 F.2d 4

[9] Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769

[10] 529 U.S. 205

[11] American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136

[12] Ibid

[13] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205

[14] Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837

[15] Fremont Co. v. ITT Continental Baking Co., Inc., 199 U.S.P.Q. 415

[16] Trade Marks Act, 1999, § 2(1)(m), No. 47, Acts of Parliament, 1999 (India). Available at: https://www.indiacode.nic.in/handle/123456789/1993?locale=en

[17] Ibid, at § 2(1)(q) – “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.

[18] Ibid, at § 2(zb).

[19] Subodh Asthana, Trade Dress Protection in India and US, IPleaders Blog, (Mar 15, 2021 10.30 PM), https://blog.ipleaders.in/trade-dress-protection/

[20] Cadbury India Limited & Ors. v. Neeraj Food Products, 142 (2007) DLT 724

[21] Gorbatschow Wodka K.G v. John Distilleries Ltd., 2011 (47) PTC 100 Bom

[22] Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 Del

[23] Christian Louboutin Sas v Mr. Pawan Kumar & Ors., 2018 SCC OnLine Del 9185

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The Copyright Bargain: Fair use in the United States and the United Kingdom

By: Rushika

Of all the creative work produced by humans anywhere, a tiny fraction has continuing commercial value. For that tiny fraction, the copyright is a crucially important legal device.

-Lawrence Lessig

Introduction

Creators of any artistic or literally work often do so in the hopes of benefitting financially and commercially from the same. However, in a competitive and capitalistic world, creators are frequently suppressed by the more powerful entities and their work exploited. There are also various issues that arise in respect of who the owners of the work are. Copyright is that legal mechanism that protects the rights of the creators of works and enables others to identify the true owner of the work.

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Copyright

Often described as the engine of progress,[1] copyright is the legal term used to describe the rights that creators have over their artistic or literary works.[2] The Copyright, Designs and Patents Act, 1988 of the United Kingdom defines copyright as a property rights which subsists in (a) original literary, dramatic, musical or artistic works, (b) sound recordings, films or broadcasts, and (c) the typographical arrangement of published editions.[3] Extending similar protections, Copyright Law of the United States contained in Title 17 of the U.S. Code defines the contours of copyright as a protection that subsists in the original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.[4]

The need and importance of copyright law is firmly established today. That copyrights of creators must be jealously safeguarded is not contended. However, on many occasions, the works of copyright owners may be used for various non-commercial purposes such as education, research, news reporting and charitable purposes to name a few. To prevent such uses of the work could result in some highly undesirable consequences such as misinformation, and could even halt progress to a significant extent, which is quite contrary to the intended purposes of copyright protection. This article discusses the fair use and fair dealing of copyrighted works in the context of the United States of America and the United Kingdom of Great Britain and Northern Ireland respectively.

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Fair Use in the United States of America

Fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances. In the United States of America, section 107 of the Copyright Act provides the statutory framework that determines the nature of a use and whether the same is fair. It provides that the use of copyrighted work for purposes such as- (i) criticism, (ii) comment, (iii) news reporting, (iv) teaching, (v) scholarship; or (vi) research, does not amount to an infringement under the Act. Further, in order to determine whether the use is fair or not, it calls for consideration the following four factors:[5]

 

  1. The purpose and character of the use, including whether such use is of a commercial nature or it is for non-profit educational purposes

In evaluating fair use, courts often approach a dispute with the intention of balancing the purpose of the use with the character of the use. While non-profit educational uses and non-commercial uses are more likely to find favour with the court, transformative uses are also received with a positive outlook by the courts. In TCA v. McCollum,[6] when the routine of the black comedy Hand to God was featured in a play, the court held that the play’s usage was transformative because the audience must be aware of the original in order to get the joke. However, this does not mean that the use must always be transformative. For instance, in Swatch v. Bloomberg[7], it was held that use for the purposes of news reporting was not required to be transformative.

 

  1. The nature of the copyrighted work

Another important factor for the courts to consider is the nature of the copyrighted work. Here, they must analyze the degree and extent to which the work relates to the purposes of copyright such as encouraging creative expression. Consequently, use of factual work is more likely to be considered fair rather than use of more creative or imaginative works such as novels, movies or songs. For instance, a defendant in a music file sharing case could not claim a fair use defense since he had failed to provide evidence that his copying of music files involved any transformative use. The court held that the defendant was confusing “‘fairness’ and ‘fair use’ and that fair use was not a referendum on fairness in the abstract.”[8]

 

  1. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

In applying this test, courts oft look at the quality and quantity of the substance used. Where less than 1% of a person’s unpublished letters were copied and the purpose was informational, the same was held to be fair use.[9] However, where the unpublished letters were the “backbone” of the biography, it was found that the letters may have been taken more as a means of capitalizing on the interest in the person whose letters they were rather than in providing a critical study of the author.

In other contexts, even when a small amount of the copyrighted work was used, it was held to not be fair use when the same was the “heart” of the copyrighted work. For instance, when a television station’s news broadcast used 30 seconds from a four-minute copyrighted videotape of the 1992 Los Angeles beating of Reginald Denny, the court finding that the use was commercial and that it took the heart of the work, and affected the copyright owner’s ability to market the video, held that the same was not a fair use.[10]

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  1. The effect of the use upon the potential market for or value of the copyrighted work

The final factor for consideration under section 107 is the extent to which the unlicensed use causes harm to the existing or future market interest of the original work. Where the use effected the owners right to make future derivative works, it was held to not be fair use.[11] Similarly, where the material taken was substantial and the publication adversely affected the potential market for authorized books about the program, it was held to be an infringement.[12]

While the above four factors are explicitly identified for consideration by courts under section 107 of the Copyright Act, the courts may also place weightage upon other factors if the need may arise, based upon the individual facts of the case. Therefore, no specific formula can be evolved to identify infringement under the Act.

Fair dealing in the United Kingdom

Similar to the concept of fair use in the United States, exception to the copyright law exists in the United Kingdom under the principle of fair dealing. The Intellectual Property Office of the United Kingdom describes ‘fair dealing’ as ‘a legal term used to establish whether a use of copyright material is lawful or whether it infringes copyright.’ It further states that there is no statutory definition of fair dealing and the same ‘will always be a matter of fact, degree and impression in each case. The question to be asked is: how would a fair minded and honest person have dealt with the work?’[13] Accordingly, the courts have identified two essential factors that are relevant in determining whether a particular dealing with a work is fair or not. These are as follows:

  • Whether the use of the work affects the market of the original work; and
  • Whether the amount of work taken is reasonable and appropriate, and if the same is necessary to be taken.

In this respect, it is the view of the Office that where the work acts as a substitute for the original work and results in loss of revenue to the owner of the work, it is likely that such a dealing is not fair. Further, conventionally, only the use of a part of the work is permissible under the principle of fair dealing.

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Section 29 and 30 of the Copyright, Designs and Patents Act, 1988 outline the purposes and parameters within which the potential defense of fair dealing may be applicable. These are as follows:[14]

  1. Quotation, Criticism and Review: Where short extracts from the work have been reproduced for the purposes of criticism and review, the same is permissible provided that the critique or review is genuine. A more general defense of quotation is available as extracts may also be used for other purposes such as academic research or writings.
  2. News Reporting: This exception applies to use of copyrighted materials such as textual extracts or short video clips, for purposes of reporting current events that are of national or international importance.
  3. Parody, caricature and pastiche: This exception introduced in 2014 is made in respect to the use of various existing works to generate fresh or new social commentaries for purposes of humour or ridicule without the requirement of obtaining the permission of the original author.
  4. Research and private study for non-commercial research: Where single copies of a work have been made or where short extracts have been taken from them for non-commercial research or for private study by entities such as students and researchers, and the same has not been published or shared with others, such a use is exempted under the Act.
  5. Preservation or replacement copies: Often, it is necessary to preserve or conserve the original works of copyright owners that may otherwise be lost or destroyed. Further, with technological advancements, without the creation of digital formats of works, they may become obsolete. In such circumstances, replication of works would be fair dealing provided that the work is not one of multiple copies and it is not possible to obtain another copy of the same.
  6. Educational uses for instruction and examination: Use of work for teaching purposes, instructing students, etc. is not considered infringement provided that they are not used for commercial purposes.
  7. Text or data mining: Text or data mining is a fairly new concept that implies an automatic process of scanning or analyzing large amounts of data using scripts customized to look for patterns, or discover relationships and trends that are otherwise not visible through a normal reading. The purpose of this exception is to enable scientific growth and progress using computer technology where the research is not for the commercial benefit of the researcher. However, the researcher is required to comply with certain legal requirements such as legal access to the data through subscriptions, etc.

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It may be noted that while fair use and fair dealing appear to be similar to a great extent, the two terms are not interchangeable. An exception to copyright law that may be available in the United States under the principle of fair use may not necessarily be available under the law of the United Kingdom under the principle of fair dealing. While fair use is a more general defense and can be widely interpreted by the courts, the exceptions under fair dealing are stricter and more limited than those of the States. They are also less open to interpretation than the exceptions under fair use. Hence, this distinction between the two principles must be borne in mind at all times while considering the issues of copyright infringement in the two countries.[15]

Conclusion

Copyright is of immense importance to enable progress and development. Without the protection of copyright laws, most literary and artistic works would be of no value. This is neither favourable to the interests of the owners of the works nor to the economy. However, the protection afforded cannot be so stringent that it becomes detrimental to the overarching interest of society at large. Therefore, the exceptions carved out under the principles of fair use and fair dealing are highly significant. With the United States and the United Kingdom being two of the most developed countries in the world, the protections, and the exceptions to the protections afforded by them to various entities becomes of great relevance as legislators of various other nations look upto the same to formulate their own laws. Considering that the exceptions mentioned hereinabove are neither too liberal nor so stringent that they are insufficient, they appear to be suited well to the present purposes. Further, as observed, with changing circumstances, the exceptions have also been amended to include more advanced purposes such as data mining, hence keeping the law relevant and preventing the same from becoming outdated. However, with the number of fast-paced and unexpected technological advancements that have been taking place lately, it remains to be seen how the jurisprudence will evolve to encompass the same.

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[1] Intellectual Property Talent Search Examination, What is the Importance of Copyright? (Mar. 10, 2021, 11:17 AM), https://iptse.com/why-are-copyright-laws-important/

[2] World Intellectual Property Organization, Copyright (Mar 10, 2021, 11:17 AM), https://www.wipo.int/copyright/en/

[3] Copyright, Designs and Patents Act, 1988, c.48 §1, https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/957583/Copyright-designs-and-patents-act-1988.pdf

[4] Copyright Law of the United States of 2020, 17 U.S.C., §101, https://www.copyright.gov/title17/title17.pdf.

[5] U.S. Copyright Office, More information on Fair Use (Mar 10, 2021, 11:17 AM), https://www.copyright.gov/fair-use/more-info.html.

[6] TCA Television Corp. v. McCollum, No. 15 Civ. 4325 (S.D. N.Y. Dec. 17, 2015)

[7] Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. 742 F.3d 17 (2d Cir. 2014).

[8] Capitol Records Inc. v. Alaujan, 2009 WL 5873136 (D. Mass., 7/27/09).

[9] Wright v. Warner Books, Inc., 953 F.2d 731 (2d Cir. 1991).

[10] Los Angeles News Service v. KCAL-TV Channel 9, 108 F.3d 1119 (9th Cir. 1997).

[11] Castle Rock Entertainment, Inc. v. Carol Publ. Group, 150 F.3d 132 (2d Cir. 1998).

[12] Twin Peaks v. Publications Int’l, Ltd., 996 F.2d 1366 (2d Cir. 1993).

[13] Intellectual Property Office, Exceptions to Copyright, (Mar. 10, 2021, 11:17 AM), https://www.gov.uk/guidance/exceptions-to-copyright.

[14] The University of Edinburgh, Copyright Exceptions and Fair Dealing, (Mar. 10, 2021, 11:17 AM), https://www.ed.ac.uk/information-services/library-museum-gallery/library-help/copyright/copyright-exceptions-and-fair-dealing

[15] ibid.

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Trademark Registration Process in India- Checklist

By:- Rajat Nischal 

A trademark if perceived in a true layman’s sense would be referred to as a visual representation of a word, label, numeric characters, name, or device consumed by an entity in order to segregate/ distinguish its own identity/ services or goods from the previously present comparable services/goods stemming from a different entity/organization. A trademark operates its being in such a sedulous approach that it delivers an exclusive identity (i.e., an exclusive mark which a third party cannot optimize) of that specific service/good offered by that specific service provider/ entity. The moment an entity enrolls itself as a registered trademark, it transmogrifies its own self as an untouchable asset or intellectual property for an entity which is optimized in order to protect the reputation and status of that specific brand/entity.

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Considering the contemporary scenario in India, the trademarks are registered under the Trademark Act, 2016 by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Post the registration as a trademark, the trademark owner gains a right to take legal action for damages when trademarks infringements of occur. Subsequent to a successful registration, symbol ‘R’ can be used by the trademark owner making the validation of his rights for a fixed period of 10 years. Nevertheless, the trademarks forthcoming their expiration can easily be renewed by a simple submission of renewal application.

REGISTRATION CHECKLIST

The registration procedure encompasses the following;

  • Filling up registration application form,
  • Examination of the trademark
  • Publication of the trademark
  • Advertisement of the trademark
  • Opposition (objections) if raised/ found
  • Registration of the trademark and renewal of the trademark after every 10 years.

The checklist consists of a basic necessities

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  1. SEARCHING A TRADEMARK

The applier is suggested to be cautious during the course of selection. This is because, tremendous variety of trademarks are predominantly registered and to make it indisputable, the mark should truly be unique. A thorough research on the trademarks database which is available with the trademarks registry has to be conducted before choosing a unique and exclusive trademark.  The database is a prominent option because the search discloses all the types of trademarks that are already available in the market, either registered or unregistered.

  1. FILING APPLICATION

The concerned application may be filed either in a multi or a single class. The same totally hangs to the specific service/good that the entity holds. The application Form TM-A which can be filled in either ways, may it be online or offline. For offline the applier shall visit the official trademark office depending upon the jurisdiction and for online, the applier shall refer the official intellectual property India website. The trademark application encompasses numerous documents prescribing comprehensive and detailed specifications of the trademark.

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  • EXAMINATION BY THE AUTHORITIES

After filing the application, asper the guidelines of the Trade Marks Act of 2016, an obligatory examination process of the trademark application is conducted by the government examiner.

The submissions of their examination might reveal certain objections which may be absolute or limited in nature; the aforesaid examination report by the concerned authorities is dispensed within a span of 30 days of having filed the application. In response of the same, in order to remove the objections, an obligatory rational response (including arguments and evidence) to the objections shall be submitted before the authorities.

  1. AFTER THE EXAMINATION 

Upon filing a reply to the investigation report, the authority Examiner may hold legal proceeding if the Examiner is not completely satisfied with the reply filed or if the objections are not satisfied. After the hearing, the Inspector can approve the trade mark and either forward the request for publication to the journal or refuse the application if there is still an estoppel.

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  1. MARKETING AND PUBLISHING

After the application for registration has been approved, the said trademark shall be marketed and published in the Trade Marks Journal for a term of 4 months.

The purpose of the publication and ads is to encourage the general public to file an opposition to the registration of the label. The Trade Marks Journal is accessible on the Official Registry website, which is published every Monday of the week.

  1. DISAPPROVAL

After the publication of the trademark, any person who has been aggrieved can file a notice of opposition to the registration of the published trademark. The said notice shall be filed via form TM-O within a deadline of 4 months of the actual publication in the trademark journal. In the event of opposition, all the mechanism will function asper the prescribed procedures of law (the said includes; facts, counter-statement complaint, arguments etc.).

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  • REGISTRATION

The final piece to this whole process is the successful registration of the trademark which comes after travelling journey full of estoppels.

Moreover, in the scenario where no opposition is raised towards the registration of the trademark during the 4 months publication period then, the same will get itself successfully registered within 7 working days.

CATEGORIES OF TRADEMARK UNITS IN INDIA

In India, trademarks can be registered in a multitude of forms. The same includes wordmark, label, logo, as well as device mark. As a condition, the choice to file a trademark as a word mark or logo is indeed a very challenging choice to accept.

  1. GENERIC MARK

The Generic marks denotes a very generalised explanation of their product or seller. These comprise commonly known words like “food,” “shoes” or “watch.” However, the aforesaid words are a part and parcel of the daily routine of an individual’s life and giving exclusive usage rights for such words would truly amount gross injustice to other individuals of the society. For an illustration, trademark registration for the term “restaurant” is impossible as well as irrational in its very basis. And lawfully, such sort of a registration would exhaustively upshot an unfair monopoly over the entire food and beverage industry. Henceforth, if such terms are registered, unknowingly, countless businesses will have to shut themselves down unnervingly. So, an entity if perceives to uphold a registered mark in its name it shall add another modifier exclusive to its products.

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  1. SUGGESTIVE MARK

Suggestive marks register terms that indicate the quality of a service without actually referring to it in a literal way. Imagination from the end of the user is a key factor in the identification of the mark. A good example would be Netflix, as it makes reference to its service line without explicitly mentioning that it is a video streaming network.

  1. DESCRIPTIVE MARK

While the generic mark may reflect a commodity or its supplier, the Descriptive Mark refers to just the merchandise. That being said, as these words are considered part of the common language, they are nevertheless non-registerable. However, the inclusion of a ‘signifier’ to identify and define the substantial nature of the substance may qualify it for trademark protection.

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  1. FANCIFUL MARK

This sort of trademark is the easiest one to file. It just includes a new term that does not actually have any meaning for the general public. While smoother to file.  In specific, the corporation should closely analyse how the brand will be perceived by the public. It is better to carry out careful study into whether it will be easy to recognize, read, or pronounce. Fanciful marks require informed forethought, too. Brands will most likely prefer their trade to achieve favourable characterizations, but businesses shall also acknowledge the cultural overtones of their fanciful trade mark.

  1. LOGO

A logo in its true basic sense, enshrines the trademark holder with utmost rights over the amalgamation of words, design, and images together. For an illustration; Adidas, Puma, Nike, Reebok, etc. Above and beyond this, if the customer base of the company is truly based upon its logo, then obviously the entity would prefer to register a patent on that particular logo.

The covering given to the words in the logo mark is reduced as opposed to the regular word marks so the rights in the logo are only valid as a whole. Consequently, if an entity/individual pertains a wish to register a clearly styled appearance or a union of stylized words and design, the registration of a trademark as a logo will be essential.

  1. WORD MARK

One of the most convenient and sober registration processes belongs to the word mark; a word mark is specifically designated for the name / title of the entity. For an illustration, Britannia and Jio solely possess the word of their entity as a registered mark and the said is called to be acknowledged as a word mark. Post the registration of a trademark as a word mark, the owner gains a blanket right over the usage and practice of the concerned word. The rights wholly support for the variations made in its font or writing style/size, until and unless the word is used asper and in line of the legal specifications enlisted, the word lies in the boundaries of the blanket of the rights owned by the applier.

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Categories
Blog Intellectual Property Law

The Conundrum of Priority Disputes: Isaac Newton versus Gottfried Wilhelm Leibniz

By: Rushika M 

“It is most useful that the true origins of memorable inventions be known, especially of those that were conceived not by accident but by an effort of meditation. The use of this is not merely that history may give everyone his due and others be spurred by the expectation of similar praise, but also that the art of discovery may be promoted and its method become known through brilliant examples.”[1]

-Gottfried Wilhelm Leibniz

One of the oldest and most controversial intellectual property disputes in the world is the peculiar case of Sir Isaac Newton and Gottfried Wilhelm Leibniz. As rightly described by Jason Socrates Bardi in the title of his book ‘Calculus Wars’, the dispute between Newton and Leibniz is the ‘greatest mathematical clash of all time’.[2]

The dispute between Newton and Leibniz was not an uncommon one, especially in the 17th century which has been described by the American science historian D. Meli as the “golden age of the mud-slinging priority disputes.”[3] Both men being great mathematical minds and accomplished intellectuals, claimed priority over the invention of Calculus. For those unaware, Calculus is the branch of mathematics that deals with the finding and properties of derivatives and integrals of functions, by methods originally based on the summation of infinitesimal differences.[4] In short, it is the study of continuous change.[5] Presently, the use of calculus is indispensable in many fields of science and mathematics such as physics, computer science, engineering, statistics, economics, medicine, and demography to name a few. Both, Newton and Leibniz sought to establish the same as their own invention. However, the distinguishing quality of their case is not only the nature and subject-matter of dispute but also the manner in which each sought to establish their priority.

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A brief description of the dispute is as follows. Infinitesimal calculus may be expressed in one of the two forms: (i) as a notation of fluxions or (ii) as a notation of differentials. Newton employed fluxions in his research which can be dated back to as early as 1666. However, he did not publish his work until the year 1693. On the other hand, Leibniz employed the method of using differentials and formulated his own notation which can be dated back to as early as 1675.[6] He also referenced the same in his letter addressed to Newton in the year 1677 and included it in his memoir of 1684.[7] The dispute between the two men arose when Newton claimed that Leibniz was made aware of Newton’s research long before he arrived at his own notation and hence, Newton was the first inventor of calculus, while Leibniz had only formulated another notation based on the principles and work of Newton.[8] Since the prevalent method of establishing priority in the 17th century was not in the form of first publication or registration as it is in the present era and the usual mechanisms were in the form of anagrams, sealed envelopes, correspondences or a private message exchanged between peers, etc., the dispute between Newton and Leibniz could not be effectively resolved on the basis of first publication.

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Primarily, evidence lies in favour of Leibniz’s claim of a notation independent of Newton’s for three reasons: (i) Leibniz, who is presumed to have acted in good faith, always alluded to his discovery being his original work and this claim was undisputed for a few years; (ii) his work was published long before Newton published his method of fluxions; and (iii) in his private papers, Leibniz demonstrated the originality of his derivations and their independence from Newton’s work. However, those contesting Leibniz’s claims questioned his good faith and believed that he had been acquainted with Newton’s work in or before 1675, the reason being that Leibniz frequently corresponded with a Mr. John Collins, who was not only well-acquainted with Newton’s work, but had also received copies of the same from Newtons mentor Isaac Barrow.[9] When, in 1849, C. I. Gerhardt found copies of Newton’s work in Leibniz’s manuscripts, the claims were further substantiated. However, since it is inconclusive as to when Leibniz obtained the copies, the same cannot be considered conclusive evidence in the matter. Doubts were also cast on Leibniz’s testimony when he anonymously published a slanderous review of Newton’s tract on quadrature implying that Newton had borrowed the idea of the fluxional calculus from Leibniz and when he deliberately altered or added to important documents before publishing them, and falsified a date on a manuscript.[10] In any event, the entire dispute was also tainted by a bias favouring Newton who, while serving as the President of the Royal Society, found favour in the committee report of the Society that presided over the dispute. Although the matter came to a temporary end with the death of Leibniz and the modern consensus is that both Newton and Leibniz developed their ideas independently, debates between the supporters of the two persist to this day.

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Upon a brief analysis of the above dispute, two things are evident: (i) that much of the dispute between Newton and Leibniz was caused by assumptions which were often unsubstantiated; and (ii) the evidence presented by the gentlemen was mostly testimonial or by way of hearsay. It was perhaps due to this reason that the dispute remains unresolved to this day. Or perhaps it was the nature of the dispute resolution mechanism at the time that is to blame. Irrespective of the same, what remains consistent to this day is the topical nature of priority disputes, may it be in the field of science and mathematics, or literature, or any other domain, thus resulting in the substantial growth and relevance of intellectual property laws and jurisprudence.

At present, in India, the Indian Patents Act, 1970 is the one comprehensive law that safeguards the interests of inventors or patent holders in India. The Patents Act, 1977 would be the legal authority in the European Union, including the United Kingdom of Great Britain and Northern Ireland. A priority dispute today would be resolved under the dispute resolution mechanisms of these laws and such being the case, the standard of evidence required to prove the claims of either party would be far greater than those evidenced by Newton and Leibniz during the 17th century. It is likely that the dispute would not even have persisted for as long as it did at the time. Regardless, the case of Sir Isaac Newton and Gottfried Wilhelm Leibniz is a memorable one and one of immense significance not only to academicians and scientists, but also to legal practitioners in the field of intellectual property law.

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[1] G. W. Leibniz, The Early Mathematical Manuscripts of Leibniz; Translated and with an Introduction by J. M. Child, The Open Court Publishing Company, 1920. (Reprinted by Dover Publications, 2005.)

[2] BARDI, J. S. (2006). The calculus wars: Newton, Leibniz, and the greatest mathematical clash of all time. New York, Thunder’s Mouth Press.

[3] Hans Gaab and Pierre Leich Simon Marius and His Research, Springer, 2019.

[4] Oxford Languages, Calculus.

https://www.google.com/search?q=calculus+meaning&rlz=1C1CHBF_enIN859IN859&oq=calculus+&aqs=chrome.3.69i59l2j69i57j0i433j46j69i60j69i61j69i60.4602j0j7&sourceid=chrome&ie=UTF-8

[5] Cambridge English Dictionary, Calculus. https://dictionary.cambridge.org/dictionary/english/calculus

[6] Norma B. Goethe, Philip Beeley and David Rabouin, The Interrelations Between Mathematics and Philosophy in Leibniz’s Thought,  http://ndl.ethernet.edu.et/bitstream/123456789/57413/1/19.pdf.pdf#page=119

[7] Blank, B. E. 2009 Review of J. S. Bardi: The Calculus wars. Notices of the AMS 56:602–610.

[8] Sir Isaac Newton, The Correspondence of Isaac Newton, 7 v., edited by H. W. Turnbull, J. F. Scott, A. Rupert Hall, and Laura Tilling, Cambridge University Press, 1959–1977.

[9] Supra, 6.

[10] Ibid.