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Office No. 1410, 14th Floor, Maker Chamber V, Nariman Point, Mumbai
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Tel : +91 124 668 8146 / +91 124 668 8147

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Mumbai (Entertainment and Media Practice)

Office No. 213, 2nd Floor, A-wing, Crystal Plaza, Andheri Link Road, Andheri (W), Mumbai.
Tel : 022-62360762

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Mumbai (Corporate and Transactional Practice)

909/A, Capital Building, Bandra Kurla Complex, East Mumbai- 400098

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Bangalore:

21/2, 1st Main Road,
Opp Indian overseas Bank,
Gandhinagar,
Bengaluru - 560009

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Kanpur:

77A, Cantt., Kanpur - 208004

July 2014 Newsletter

CONTENTS - INDIA

1. DELHI HIGH COURT RULES ON PRESUMPTION OF VALIDITY UNDER INDIAN
PATENT LAW
2. DELHI HC DECIDES ON A DECEPTIVELY SIMILAR TRADEMARK
3. DELAY IN USING A TRADEMARK DOES NOT DISENTITLE A PARTY FROM USING ITS
TRADEMARK
4. INTERNATIONAL EXHAUSTION DOES NOT APPLY TO PRODUCTS NOT ACCQUIRED LAWFULLY
5. CHARAK PHARMACEUTICALS WINS CASE AGAINST GLENMARK OVER DRUG NAME
6. STEELBIRD HI-TECH INDIA LTD. VS. SPS GAMBHIR & ORS.
7. WHIRLPOOL OF INDIA VS. VIDEOCON INDUSTRIES LTD.
8.  BJP FILES CASE IN WIPO CENTRE FOR INFRINGEMENT OF ITS DOMANI NAME

CONTENTS - INTERNATIONAL

1. SUPREME COURT RULES SOFTWARE PATENTS THAT COVER 'ABSTRACT IDEAS' ARE INVALID
2. APPLE LOSES VOICE RECOGNITION PATENT LAWSUIT
3. THE CHEVRON CASE: DIFFERENTIAL TREATMENT UNDER CHINESE AND INDIAN TRADEMARK LAWS
4. USPTO STATEMENT ON BLACKHORSE V. PRO FOOTBALL (TTAB CANCELLATION NO. 92046185)
5. ORACLE WINS COPYRIGHT RULING AGAINST GOOGLE OVER ANDROID (ORACLE AMERCIA VS. GOOGLE INC.)

INTELLECTUAL PROPERTY RIGHTS - INDIA

1. PATENTS:
1.1 DELHI HIGH COURT RULES ON PRESUMPTION OF VALIDITY UNDER INDIAN PATENT LAW:

In a recent decision, in the case of 3M Innovative Properties Company v M/S Venus Safety & Health Pvt Ltd, the Delhi High Court reversed its previous order of December 18 2013, which had issued an ex parte interim injunction against Venus, restraining it from infringing 3M’s Indian patent.

A key aspect of this decision was the court’s ruling on the presumption of validity of a patent and the relative irrelevance of the six-year rule in Indian patent law.

Presumption of validity and six-year rule
The six-year rule of Indian patent law can be traced to the 1965 decision of the Madras High Court in Manicka Thevar v Star Ploughs, which borrowed the rule from English patent law.

According to this rule, a court will not grant an interim injunction in the case of recently granted patents – with 'recent' being less than six years. The rule presumes that patents older than six years are valid and therefore removes the need to examine the validity of the patent at the interim stage. Thus, the chances of an interim injunction being granted are substantially higher if a court does not investigate issues of patent validity.

The Delhi High Court cautioned that:

[the] rule of presumption of validity after six years is not to be applied strictly in every case. It depends upon case to case basis and its merits, nature of defence raised and the evidence available on record which is produced by the defendant.

However, the ruling made a concession to patentees when it stated that:

it is correct that in case the patent in question has been tested in earlier cases and before the patent office in favour of the patentee, in those type of cases, the burden on the Defendant to demonstrate credibility would be of a higher degree.

Thus, it appears that the court will be willing to presume a patent valid if it has survived previous litigation. This is an important concession because previous judgments – particularly that of the Supreme Court in Biswanath Prasad Radheyshyam v Hindustan Metal Industries ((1979) 2 SCC 571)) – have been clear in concluding that an Indian patent cannot be presumed valid. 

Returning to the present case, the court examined the validity of the patent at issue in light of the prior art produced by the defendant and concluded that the validity of the patent was in serious doubt. Therefore, the court concluded that the patentee had failed to establish a prima facie case.

The court also examined the other grounds for granting an interim injunction, such as the balance of convenience and irreparable injury, before deciding to vacate the ex parte interim injunction. The case is currently posted for trial.

Comment

Patentees who have successfully defended their patents in litigation should highlight such victories when they are trying to establish a strong prima facie case for the grant of an interim injunction. If the patent has not been tested in previous litigation, the court will likely conduct a mini-trial at the interim stage by examining the validity of the patent in light of prior art submitted by the patent owner. – [3M Innovative Properties Company v M/S Venus Safety & Health Pvt Ltd,]

2. TRADE MARKS:
2.1 DELHI HC DECIDES ON A DECEPTIVELY SIMILAR TRADEMARK
The Defendant in this case was restrained by an interim injunction from using the impugned Trademark ‘AMAFORTEN’ or any other trademark deceptively similar to the trademark of the Plaintiff ‘ANAFORTAN’. Hon’ble Court observed that the Plaintiff is a much prior user in point of time in the said trademark and the trademark of the Defendant is also phonetically, visually and structurally similar to that of the Plaintiff. The Defendant has slavishly copied the mark and design of the product of the plaintiff for a drug which has the same therapeutic use. – [Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Ors., dated 25th April, 2014 (Delhi HC)]

2.2 DELAY IN USING A TRADEMARK DOES NOT DISENTITLE A PARTY FROM
USING ITS TRADEMARK: DELHI HC
 
Issue in this case was whether the plaintiff is, by virtue of its mark having being registered prior to the impugned mark being used by the defendant, entitled to an injunction against infringement although it used its mark after the defendants started using the impugned mark. Held that there is nothing which disentitles the Plaintiff to maintain an action for infringement. The Defendants having used the impugned mark after the Plaintiff’s mark was registered, cannot succeed in this action for infringement. – [Wockhardt Ltd. v. Remed Healthcare Pvt Ltd. & Anr., dated 25th April, 2014 (Delhi HC)]

2.3 INTERNATIONAL EXHAUSTION DOES NOT APPLY TO PRODUCTS NOT ACCQUIRED LAWFULLY

The Plaintiff sought permanent injunction against unauthorized sale of its products which were not shown to be acquired legally and products bearing its trademarks which were found to be contraband. Granting Injunction, the Delhi High Court observed that had the defendants obtained the said infringing products legally from authorized channels, subsequent sale in India might have been protected under principle of international exhaustion. On sale of products found to be counterfeit the court held that use of trademarks on the same was passing off and caused damage to the plaintiff. Being of the view that the defendants were small players, unlikely to stock huge quantity of infringing goods the court awarded nominal damages. [Philip Morris Products S.A. & Anr. V. Sameer & Ors., dated March 10, 2014 in CS ( OS) No. 1723/2010 (Delhi HC)]

2.4 CHARAK PHARMACEUTICALS WINS CASE AGAINST GLENMARK OVER DRUG NAME:
The Bombay High Court has granted relief to ayurvedic drugmaker Charak Pharmaceuticals in a six-year-old case involving its product Evanova, directing Glenmark Pharmaceuticals to rename its drug Econova within four weeks since its name is deceptively similar.
Physicians and pharmacists could mistakenly prescribe the wrong drug due to similar names, the high court held in its judgment on Thursday. “Very often, many prescriptions are made via telephone to the pharmacist and others are handwritten and frequently handwriting is not legible,” Justice SJ Kathawala observed while passing the order.
Mumbai-based Charak Pharma had filed a case for perpetual order restraining Glenmark from infringing its registered trademark of ‘Evanova’ by use of the mark ‘Econova’ or any other mark deceptively similar to its registered mark – [Charak Pharma Pvt. Ltd. vs. Glenmark Pharmaceuticals Ltd. dated 21st January 2014 (Bombay HC)]

3. DESIGNS:

3.1 STEELBIRD HI-TECH INDIA LTD. VS. SPS GAMBHIR & ORS.

Design litigation is on the rise in India. Steelbird Hi-Tech India Ltd. (SBHT), a manufacturer of helmets, registered a design bearing No. 241153 for one of their products. In November 2013, it came to SBHT’s knowledge that the defendant was manufacturing helmets using a design similar to its design. SBHT filed a suit for permanent injunction to curb infringement of its Design, passing-off, rendition of accounts and also claimed damages. SBHT also filed an application for interim reliefs. An interim order was passed in SBHT’s favour in December 2013. In response, the defendant filed a reply opposing the interim reliefs granted and sought a vacation of the order. Both designs are shown below:



The Court considering the arguments put forth by both parties and bearing in mind the nature and scope of the statute, opined that “a product manufactured by Studds Accessories Ltd (a third party) bearing a similar design was already available in the market, and the design of which would certainly have been conceived much prior to 1st December, 2011. The product brochure of STUDDS along with the above said price list is filed with the present application which shows beyond doubt that the plaintiff’s registered design is neither new nor original.’

The Court vacated the ad-interim relief order dated 6th December, 2013 holding prima facie that the plaintiff’s design was not new or original and not entitled to protection. 

Defendants can now rely on third party competitor price lists and catalogues as a defense against an action of infringement of Design against them. [Steelbird Hi-Tech India Ltd. vs. SPS Gambhir & Ors. , dated February 24, 2014 (Delhi HC)]

3.2 WHIRLPOOL OF INDIA VS. VIDEOCON INDUSTRIES LTD.

In a battle over washing machines where two companies swirled, whipped up and tumbled through copyright claims, the Bombay high court recently ruled in favour of Whirlpool. Justice S J Kathawalla allowed an interim application filed by leading manufacturer Whirlpool against another major player Videocon which it said was infringing its designs. 

Whirpool had in 2012 challenged a washing machine designed by Videocon as having "virtually the same design, features shape, colours and configuration" as its product for which it already had an existing design registration for a decade or more. [Whirlpool of India vs. Videocon Industries, dated May 27, 2014 (Bombay HC)]

4. DOMAIN NAME:

4.1 BJP FILES CASE IN WIPO CENTRE FOR INFRINGEMENT OF ITS DOMANI NAME:

After the 2014 Lok Sabha Elections, it’s very evident as to how political parties endorse, advertise and use their name as a brand, thus enjoying a similar status as that of a Trade Mark. Their activities and identity is recognized through this name. A recent case on the point may be Bharatiya Janta Party vs lahead, vainay KM/Whoisguard/Namechip.com/Enom Inc. In the aforementioned case, the complainants lodged a case in the WIPO Arbitration and Mediation Centre against Bharath Journals and Publishers for infringement of their domain name bjp.com.

Factual Background and contentions

Bharatiya Janta Party (BJP), earlier known as the Bharatiya Jana Sangh , established in 1951, was one of the four parties, nationally recognized in the first general elections in India. BJP (complainant) in its complaint states that it owns various domain names like bjp.org, bjpsmorcha.org, bjp25.org while its supporters own domain names like friendsofbjp.org, ofbjp.org and bjpnris.com. In the present matter, it is alleged that the disputed domain name bjp.org was registered in bad faith because:

  • The first respondent has used a privacy shield to conceal its identity.
  • The disputed domain name id directly linked to the website of its rival party congress.org.in as the page title displayed “ All India Congress Committee”(AICC)

The Complainants also submitted that a general Internet search conducted in 2010 of the name “Bharath Journals and Publishers” immediately directs to the Indian National Congress’s website. This hyperlink was later removed in 2011 after a notice was served on them. Printouts of the search done in 2010 have also been furnished as evidence. The respondents argued that mere assertion of bad faith is not enough as no evidence has been produced substantiating the claim. It was also contended that the usage of any three letter abbreviation does not confer any trademark right. They further contended that the Publication House has been functioning for many years, thus there was no bad faith in the registration of the domain name.

Findings of the panel

The panel considered various aspects of the Complaint.

As per paragraph 4(a) of the Uniform Domain name Dispute Resolution Policy (UDRP), three elements have to be established by the complainant to prove whether there is an actual infringement or not. These are:

  • Whether the disputed mark is Identically or Confusingly similar- 

The Complainants provided various documents to prove to the panel that the abbreviation BJP has become synonymous with name of the Complainant. These documents included extensive media coverage, unsolicited media references, published news reports, reference by independent commentators and usage by the general public of the abbreviation BJP.  After examination of the documents, the panel concluded that the BJP is a well known mark, thus establishing common law rights in the favour of the complainant. Thus the respondent’s mark is confusingly similar to the Complainant’s work.

  • Whether the Respondent’s lack rights or Legitimate Interests-

The Complainant’s contended that the domain name was being held passively by the Respondents, thus they do not have a valid interest over the same. It was found that the Respondents have not used the domain name from 1997 to 2008, thus finding the contention of the Complainant true. The Respondents submitted that they were planning to use the domain name, once the dispute is over. But the Panel held that mere assertion of a contemplated business plan is not sufficient to establish rights and legitimate interests.

  • Whether the mark was registered and used in bad faith-

The evidence on record showed that the adoption of the domain name by the Respondents was much later than the Complainant’s. Further, the respondent argued that they were not aware of any link on their website which directs to the Congress’s website, which was unacceptable to the Panel. Therefore, the Registration was said to be in bad faith.
On the basis of all the above reasons and findings, the Panel transferred the domain name in dispute, bjp.org in the name of the Complainant.

INTELLECTUAL PROPERTY RIGHTS (INTERNATIONAL IPR NEWS):

1. PATENTS:

1.1 SUPREME COURT RULES SOFTWARE PATENTS THAT COVER 'ABSTRACT IDEAS' ARE INVALID:

Software patents aren't dead, but they just took a blow. In a unanimous decision, the Supreme Court has ruled that a series of banking patents didn't cover a concrete software process but an abstract idea, throwing them out and potentially setting a stricter precedent for future patents.

Alice Corp. and CLS Bank are both major financial institutions, and they've been sparring for years in court. The issue is a series of patents that cover a kind of electronic escrow or "intermediated settlement," where a third party holds the real money while "shadow" balances are shown to both sides during trading. In order to preempt a threat from Alice, which held those patents, CLS asked for a court to declare them invalid, saying that the basic idea was obvious and that the patents didn't add more than a generic software process to carry it out. Alice countersued, alleging that CLS had infringed its patents, and the Supreme Court took up the issue in late 2013.

Alice attempted to prove that its patents were more than just an idea by pointing to the specific software steps that it had to carry out. But the court found that these steps weren't ultimately much more than "stating an abstract idea while adding the words 'apply it with a computer.'" The claims "simply recite the concept of intermediated settlement as performed by a generic computer. They do not, for example, purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field." Each of the steps that Alice described were basic computer functions like adjusting account balances, keeping records, and issuing automated instructions, and the finished product didn't transform them into something more than the obvious sum of their parts.

Alice Corp. v. CLS Bank has been one of the most closely watched patent cases of the year. It takes on what patent reform advocates see as the unreasonably broad category of "software patents," which cover a process implemented on a computer rather than a piece of design or a physical invention. Earlier, the case was somewhat hyperbolically said to spell the "death of software patents," but this decision doesn't necessarily stop people from patenting a software "idea," as long as its technical steps are concrete improvements or new designs, not an aggregation of existing steps.

1.2 APPLE LOSES VOICE RECOGNITION PATENT LAWSUIT

Apple Inc. lost its patent infringement lawsuit against a Chinese government agency and a Shanghai technology company on Tuesday.

Apple had sued the Patent Review Committee under the State Intellectual Property Office and Shanghai Zhizhen Network Technology Co. Ltd in February, accusing the latter infringing the copyright on its voice recognition software, Siri.

Beijing No.1 Intermediate People's Court did not support Apple's position and Apple said at court that it will appeal.

In June 2012, Zhizhen, developer of voice recognition technology Xiao i Robot, accused Apple of intellectual property rights infringement, claiming its patent was applied for in 2004 and granted in 2006.

Siri was first developed in 2007 by Siri Inc., a start-up company acquired by Apple in 2010, and appeared first on the iPhone in fall 2011.

Xiao i Robot began in 2003 as a chat bot for MSN, Yahoo Messenger and other similar networks. It has expanded to IOS and Android where it bears a striking similarity to Siri.

Trials at a Shanghai court opened in 2012 but no verdict was given. Apple later applied to the Patent Review Committee under the State Intellectual Property Office to invalidate the Xiao i Robot patent. When the committee supported Xiao i Robot, Apple sued the committee and the Shanghai company.

Apple has faced many lawsuits in China in recent years. In June representatives of Yishijia Network Technology Co., Ltd filed suit against Apple and Woshang Information technology Co., Ltd over use in Apple's app store of a trademark Yishijia owns. The company is asking for compensation of more than 100 million yuan (about 16 million U.S. dollars).

The dispute began in April, when Yishijia applied to upload the mobile application for Homevv, an online shopping platform, to the store. The application was rejected as the Woshang app, bearingthe same trademark, was already there.

Yishijia, which has owned the Homevv trademark since 2010, asked Apple to take Woshang's app down multiple times but was rejected.

In 2012, Apple paid 60 million U.S. dollars to Proview Technology (Shenzhen) to end a protracted legal dispute over the iPad trademark in China.

2. TRADE MARKS:

2.1 THE CHEVRON CASE: DIFFERENTIAL TREATMENT UNDER CHINESE AND INDIAN TRADEMARK LAWS
Jinchun Ji sought trademark registration for “雪佛龙” (“Chevron” in Chinese version) before the Chinese Trademark Office (TMO) in respect of goods falling in Class 12 viz. automobiles and motor cycles. Chevron Intellectual Property LLC (a subsidiary of Chevron Corporation) opposed the application on the grounds that the impugned mark was similar to its mark and which was otherwise registered in respect of the goods petroleum oil (crude oil or refined oil), industrial oil. It additionally contented that automobile and motor cycles for which the impugned mark was being sought to be registered was in a sense related to petroleum and related products and on account of which could cause confusion in the minds of the consumers.

However after considering the matter the Chinese Trademark Review and Adjudication Board (TRAB) came to the conclusion that the nature, the channels through which they were distributed and the ultimate consumers of the goods were different and resultantly not cause any confusion.
Chevron pursued the matter through an administrative lawsuit against Jinchun Ji and TRAB before the Beijing Higher People's Court but which however upheld the ruling of the TRAB and led to the grant of registration of the impugned trademark “雪佛龙” in Class 12.
It would be significant and pertinent to note the legal position had the aforesaid case been decided in India under Indian trademark laws.
The applicable provisions of the Trademarks Act, 1999 state that:

  • If a trademark that is identical or similar to an earlier trade mark is sought to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, it shall not be registered if or to the extent the earlier is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark. Courts would whilst determining whether a trademark is well known take into consideration several factors such as the knowledge or recognition of the trademark in India, it’s promotion, use, registration, record of successful enforcement of the rights subsisting in the trademark and whether it has been recognized as well-known by the court, number of consumers, number of persons involved in the channel of distribution.
  • A registered trademark is infringed by a person who not being a registered proprietor or a person by way of permitted use, uses in the course of trade, a mark which is identical with or similar to the registered trademark in relation to goods and services which are not similar to those for which the trade mark is registered, the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.  

                     
In 2013, the Intellectual Property Appellate Board, India (IPAB) by its order in an appeal filed by the Japanese electronics major Sony Corporation, refused the registration of the trademark “abt Sony” the registration of which was sought by a Kolkata-based firm AB Textiles. The order was passed pursuant to an appeal filed by Sony Kabushiki Kaisa, also trading as Sony Corporation, against the decision of the Deputy Registrar of trademarks, Kolkata, permitting AB Textiles to register the trademark ‘abt Sony’ and refusing Sony Corporation’s opposition against it. AB Textiles had sought registration of the trademark in respect of goods falling in Class 25 viz. ladies and gents undergarments. IPAB’s bench allowed the appeal filed by Sony Corporation, refusing registration of the trade mark.

The bench came down heavily on the decision of the Deputy Registrar in refusing the Japanese firm’s opposition and allowing the textile firm to register the trade mark. “It is clear the respondent was trying to take unfair advantage of the famous mark Sony to the detriment of the reputation of the appellants and is against the honest practice in industrial or commercial matters”.  It was observed the essential features of the respondent’s mark ‘abt Sony’ included the whole of appellants mark ‘Sony’ with ‘abt’ used only as a prefix in conjunction with Sony. What the members of the trade and / or the general public would ask for was Sony garments and not “abt Sony” garments leading to a possible confusion as regards the source and origin of the garments.   

2.2 USPTO STATEMENT ON BLACKHORSE V. PRO FOOTBALL (TTAB CANCELLATION NO. 92046185):

Federal registrations for the "Redskins" trademarks involved in this proceeding must be canceled.
The USPTO Trademark Trial and Appeal Board has determined, based on the evidentiary record in the proceeding before it and on applicable law, that the petitioners met their burden to establish that the term "Redskins" was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued. Thus, the federal registrations for the “Redskins” trademarks involved in this proceeding must be canceled.

The decision to cancel the registrations means that, if not appealed or if affirmed following a possible review by a federal court, the trademark owner - Pro Football, Inc. - will lose the legal benefits conferred by federal registration. These benefits include the legal presumptions of ownership and of nationwide scope of rights in these trademarks, as well as the ability to use the federal registration ® symbol, and to record the registrations with the U.S. Customs and Border Patrol Service to block importation of infringing or counterfeit foreign goods.

The decision does not, however, require the trademarks in the involved registrations to be changedor no longer be used by Washington, D.C.’s pro football team. The Trademark Trial and Appeal Board does not have jurisdiction in a cancellation proceeding to require that a party cease use of a mark, but only to determine whether a mark may continue to be registered.

This decision can be reviewed by a federal court. The registrations will not appear in the USPTO’s records as cancelled until after any judicial review is completed.

3
. COPYRIGHT:

3.1 ORACLE WINS COPYRIGHT RULING AGAINST GOOGLE OVER ANDROID (ORACLE AMERCIA VS. GOOGLE INC.):

In a recent decision, Oracle won a legal victory against Google on Friday as a US appeals court decided Oracle could copyright parts of the Java programming language, which Google used to design its Android smart phone operating system.
 
The case, decided by the US Court of Appeals for the Federal Circuit in Washington, is being closely watched in Silicon Valley. A high-profile 2012 trial featured testimony from Oracle's chief executive, Larry Ellison, and Google CEO Larry Page, and the legal issues go to the heart of how tech companies protect their most valuable intellectual property. 

Google's Android operating system is the world's best-selling smart phone platform. Oracle sued Google in 2010, claiming that Google had improperly incorporated parts of Java into Android. Oracle is seeking roughly $1 billion on its copyright claims.
 
A San Francisco federal judge had decided that Oracle could not claim copyright protection on parts of Java, but on Friday the three-judge Federal Circuit panel reversed that ruling.

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