IP-Message

Domain Name Registration and Dispute Resolution

2011-05-18T03:32:00.001-07:00

What is Domain Name?
A domain name is used to represent the owner of the address in order to locate computers on the Internet. The main purpose of a domain name is to provide recognizable names to mostly numerically addressed Internet resource. To simplify the differences among Domain name, URL and Registered domain name, the bellow mentioned example can be cited.
When a company’s domain name is same to its company’s name or one of their particular products, their domain name can be commercially exploited by other competitor companies and there is a chance of loosing the valuable IP assets of that company. Company whose domain name is registered will have the legal right to file a lawsuit against the unauthorized users.
There are two types of domain name one is “generic top-level domains (g-TLD)” and “Country Code Top Level Domain Name (cc-TLD)”. In the top-level of the hierarchy appears after the last dot ('.') in a domain name. In "iocl.com", the top level domain name is .COM. The .COM name is the most common top-level domain name, and is used to indicate that the domain name is owned by a commercial enterprise. Other common top-level domain names include .ORG (for non-profit organizations), .NET (for network and Internet related organizations), .EDU (for four-year colleges and universities), and .GOV (for government entities).
Apart from this each country has been given a unique top-level domain name. For an example, .IN indicates a domain in India and .UK indicates a domain in United Kingdom.

What are the benefits of domain name registration under trade marks law?
Domain name registration is considered as the most effective legal way to ensure legal protection under trade mark law through out the territory of a country where the trademark right was granted.
Under the statutory right to a registered trade mark, the registered owner of the domain name can protect his/her intellectual property rights against detrimental exploitation
What is the procedure for registration of a Domain name under Trade Marks (amended) Act 1999?
There is no specific section or rules in India to register the domain name under the Trade Marks (amended) Act, 1999 and Trade Marks (amended) Rules, 2002.
However it is a general practice before the Trade Mark Registry India that anyone interested can file a trade mark application for registration of its domain name.
The detail procedure to file and registration of a trademark for domain is same as the procedure envisaged in the Trade Mark Manual Portion.

Is there any International Domain name dispute Resolution system?
The Internet Corporation for Assigned Names and Numbers (ICANN) is a not-for-profit public benefit corporation to keep internet’s unique identifiers system secure, stable and interoperable. ICANN provides a globally accepted domain name dispute resolution system under the Uniform Domain Name Dispute Resolution Policy (UNDRP). The details rules and procedure to file a complaint and filing of defense argument, the formation panel to hear the disputes etc. discussed under this policy is available at: http://www.icann.org/en/dndr/udrp/uniform-rules.htm.
ICANN provides a number of providers who can deal with the domain name disputes.
In particular, ICANN involves in the following-
1. It coordinates the allocation and assignment of the three sets of unique identifiers for the Internet, which are
a. Domain names (forming a system referred to as "DNS");
b. Internet protocol ("IP") addresses and autonomous system ("AS") numbers; and
c. Protocol port and parameter numbers.
2. It coordinates the operation and evolution of the DNS root name server system.
3. It coordinates policy development reasonably and appropriately related to these technical functions

What are the key issues to be analyzed while a Domain name dispute arises?
Some of the key issues should be analyzed in a domain name disputes are-
 Whether the domain name holder has trademark rights over the domain name?
 Whether the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
 Whether the domain name holder used or using (prior to the dispute) of the domain name in connection with a bona fide sale of its goods or services?
 Whether the domain name holder using the mark in a bona fide non-commercial or fair use way at a web site accessible at the domain name?
 Whether the domain name holder made an attempt to divert consumers from the trademark owner's web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
 Whether the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
 Whether the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
 Whether the domain name holder provides false information when applying for the registration of the domain name (or does so in connection with other domain names)?
 Whether the domain name holder registered domain names of other parties trademarks?; and
 Whether the trademark of the owner’s trademark satisfies the criteria of distinctive and famous?

What is WIPO Arbitration and Mediation Centre to adjudicate the disputes relating to Domain name?
It provides international dispute resolution system on the basis of the ICANN’s UNDRP. The WIPO Arbitration and Mediation Center is recognized as the international leading institution in the resolution of Internet domain name disputes. Since December 1999, the Center has administered over 32,000 proceedings, of which over 17,500 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) which is adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP applies to disputes in the generic Top-Level Domains (gTLDs) (e.g., .com, .net, .org), as well as an increasing number of Country Code Top-Level Domains (ccTLDs) (e.g., .in for India, .au for Australia).
A detail guidelines on the dispute resolution procedure before the WIPO Mediation and Arbitration Centre is available at: http://www.wipo.int/freepublications/en/arbitration/892/wipo_pub_892.pdf
In 30th April 1999, WIPO recommended and published a report on the issue and dispute resolution process on domain name. Based on the WIPO’s recommendation ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UNDRP) which came into effect from 1st December, 1999.
There are a number of ICANN accredited domain name dispute resolution providers under UNDRP from time to time. WIPO is the leading ICANN accredited domain name dispute resolution providers in the world. According to WIPO about 60% of all cases filed under WIPO domain name dispute resolution policy.

What are the types of Domain name disputes?

There are two types of controversies that can rises under Domain name dispute. In the first type of dispute, an individual reserves the domain name of a well-established company for the purpose of re-selling it to the company at a higher profit which is called “Cyber squatting.” The second type of dispute involves two established companies with similar domain names.

Cyber squatting can be defined as the practice of registering a domain name with an intention to earn profit by selling it to the trademark owner. Basically, there are two things which are responsible for this practice. First, Registrar of trade marks grant domain name registration on first come first served basis. Secondly, a trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration.

Is there any case precedent on domain name disputes in Indian courts?
Indian Courts have seriously dealt with Cyber squatting and have confirmed that such activities shall be looked upon. In the case of Tata Sons Limited v, Bodacious Tats & Ors., the defendants were unable to establish any legitimate interest for the use of “TATA” as their domain name. Hence, the Delhi High Court restrained the use of the trademark “TATA” as a domain name. Similarly, in Dr. Reddy’s Laboratories Ltd v. Manu Kasouri, the Court found that the defendant had bad faith in registering “Drresddyslab.com” as their domain name. One of the significant cases in this regard is Yahoo case where the Internet website sued an Internet pirate who had not only registered the domain name “Yahooindia.com” and many other variations of it but had used “Yahooindia” as a trademark in a similar manner on its website. The Delhi High Court granted an injunction restraining the defendant from using “Yahoo” either as a part of his domain name or as a trademark or from copying any of the contents of the plaintiff’s web page and thereby infringing yahoo’s copyright.

Fujifilm won $16 Million Award for Lens-Fitted Film Packages

2010-08-24T21:52:00.001-07:00

FUJIFILM CORPORATION V. JACK C. BENUN AND JAZZ PRODUCTS LLC, POLYTECH ENTERPRISE LTD. (PE)
AND POLYTECH (SHENZHEN) CAMERA CO. (PC)
Facts:
This case is concerns single-use cameras, or Lens-Fitted Film Packages (LFFPs). Fuji owns U.S Patents relates to LFFP. Once the LFFP is used by a consumer and it is taken the processor and the processor opens the LFFP and processes the film. The film processor does not return empty LFFP (shell) to the consumer. The defendant Jazz used to keep LFFPs and refurbished the LFFP and sold it as new LFFP in the market. It was the 6th Appeal from the Courts decision findings that the first defendant and the other companies controlled by him is liable for infringement of the Fuji's LFFP. In 2005 Fuji sued Benun, Jazz and others for patent infringement. After Bankruptcy Court for the District of New Jersey shut down Jazz, PE supplied Jazz with LFFPs that were refurbished by PE's Subsidiary company PC. PC involved in operating a factory in China where the LFFPs were refurbished. Later on Jazz purchased the Jazz Photo Corp's inventory about LFFPs made by PE and PC (collectively ploytech). The District Court made preliminary injunction against Jazz from selling in or to U.S. Later on Jazz again started re-importation of the LFFPs which was in question and the District Court found defendants liable for contempt of the preliminary injunction based on the clear and convincing evidence that the re-imported LFFPs were infringing as determined by the sampling process. In 2009 the defendants moved in limine to bar reference to prior litigations and administrative actions and to collaterally estop Fuji from Litigation.
Issues: Whether the Defendants are liable for patent infringement?

Judgment:
After finding from both party’s argument and evidence, at the close of Fuji’s case, defendants moved for judgment as a matter of law (JMOL) under Fed. R. Civ. P. 50(a) on Fuji’s infringement claim based on defendants refurbishing Achiever-brand LFFPs. Defendants’ JMOL motion, which contained no other issues, was denied. The jury found willful infringement of Fuji’s patents by the defandants’ and awarded $16 million in favor of Fujifilm.

Culling Frivolous Patents in India

2010-01-21T03:47:00.001-08:00

Frivolous patents/applications related to pharmaceutical science are dealt by the Indian Patent Office by the provisions available in the Indian Patents (Amendment) Act, 1970.
As per the current provision, frivolous inventions disclosed at the Indian Patent Office can be opposed both before the grant of patent (u/s 25(1)) and after the grant (u/s 25(2)). Frivolous patent applications are scrutinized by the patent office examiners during examination. Section 3(d) of the Act plays an important role in this regard.
As reported by the “Live Mint”, the National University of Judicial Science (NUJS), Kolkata, had conducted a study on the provisions available in the Indian Patents Act to deal with frivolous patents.
It is revealed from their study that the said three provisions, sections 25(1) , 25(2), and 3(d), were the basis of rejecting 7 out of 10 patents rejected in the area of drugs, and 15 out of 20 rejected in other areas in recent years.
Section 3(d) of the Act strictly bars from patenting inventions related to salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance, unless they have significant synergistic effect over the prior art. This provision of the Act also restricts pharma giant from “ever greening” their already granted patents.
Pre-grant opposition and post-grant opposition are other two instruments by which frivolous patenting are prevented.
It seems that the number of opposition is very less in India against the frivolous patent, although there are very effective provisions available in Indian Patents Act to oppose the frivolous patent and subsequent rejection by the Indian Patent Office.
Pre-grant opposition is known as 'opposition by way of representation' under section-25(1) of the Indian Patent Act, 1970. Any individual or legal entity having interest can file an opposition on the ground mentioned in this section after the publication of application, but before the grant of the patent.
Even if a patent is granted, any individual or legal entity having interest over the subject matter as disclosed in the granted patent, can file post-grant opposition. Post-grant opposition is filed under section-25(2) of the act by filing Form-7. The patented matter is laid open for opposition by third party for a period of 1 (one) year from the date of publication of the patent.
As per the recent report of “livemint.com”, patent opposition in India is very less due to insufficient understanding of available provisions by local companies and patient groups.
It is also noted that the number of patents rejected by the Indian patent office during the examination procedure is more than the number of opposition in India. It indicates that the filing of frivolous patent in India is increasing day by day. This is so greatly because of the insufficient understanding and lack of awareness regarding prevailing Indian Patents Law among the people as well as corporate managers.

Idea Patenting

2010-01-21T03:43:00.000-08:00

The subject matter of an idea shall satisfy a numbers of parameter to get a patent protection. The conditions of patenting an idea are-
a. It shall be ‘novel’.
b. It shall involve an ‘inventive step’ (followed by India and Europe) or it shall be ‘non-obvious’ (followed by United States) to a person skilled in the art.
c. There must be some ‘industrial application’ (followed by India and Europe) or ‘usefulness’ (followed by U.S.)
Now, in India and in Europe ‘use claim’ in a patent drafting is not allowable while in US the use claim is allowed for Utility patent application. On the contrary the definition of ‘industrial application’ as defined under section-2(1) (ac) of Indian Patent Act, 1970 (amended) “capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry”. Similarly, according to Article-57 of the European Patent Convention, 1973 defines ‘industrial application as “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. So as per applicable patent law in India and Europe the subject matter of a patent application shall be capable or susceptible of being ‘used’ in the industry.
Coming to the US patent law where there are 3 types of utility of an Idea that has to be satisfied at the time of filing ‘utility’ patent and these utilities are-
a. There must be a ‘specific’ utility of that patent application
b. There must be some ‘credibility’ and,
c. That patent application shall have some ‘substantial utility’
Carefully if you go through the matter you will observe that India and Europe directly is not allowing use claim in the specification, but in an other way round India and Europe allows product claim by process where there are two probability exists. First of all that process might be known to the prior art and secondly the process might be a new idea at all, but in both cases product is patentable. Product patent is basically granted because it shows some industrial use or application. Subsequently, a product patent by process may be granted for new use although there is another product which uses the same process. On the other hand a product by process may be granted although the same products exist which uses the same process, but later product shall show substantial modification or improvement of the former product. You can get a fresh product patent if you incorporate some new technologies into old product.
Now, in my opinion under section-2(1) (ac) and Article-57 of the Indian and European Patent Law there is a loophole which is capable of granting a product patent on the basis of different use. It is mentioned above that India and Europe dose not allow use claim in the specification, but in directly the product is basically made only for use. We don’t mention the term ‘use’ in the specification. What we claim in the specification is that the independent claim for product with the help of defendant process claim or independent process claim.

WRIT PETITION

2009-12-24T02:20:00.000-08:00

Writ Petition:
The expression ‘Writ’ is not defined in our ‘Constitution. In a dictionary meaning writ is ‘a formal order in writing to be issued under the seal, in the name of a Sovereign, Government, Court or other authority, commanding an officer or other person to whom it is issued, to do or refrain from doing some act specified therein’. The writ petition does not confer any inherent right to the petitioner, rather it is a power vested upon the High Court (Article-226) and Supreme Court (Article-32) to exercise when there is a presence of an error regarding laws on fundamental rights and irreparable damages. For an example relating to tax issue High Court will not interfere under Article-226 of the Constitution of India, rather can question the tax related disputed matters and can reverse or quash the order of the tax authority. The National Tax Tribunal that has been established under Article-323B of the Constitution does not take away the supervisory powers of the High Court and the Supreme Court under Article 226/32. Recently, the Supreme Court in the case of L. Chandra Kumar v. Union of India, (228 ITR 725) had an occasion to test the Constitutional validity of such exclusion of power vested under Article-226/227 and Article-32 of the Constitution in favor of such Tribunals and held that to the extent these exclude the jurisdiction of the High Courts and the Supreme Court under Articles 226/227 and 32 of the Constitution, are unconstitutional on the ground that it affects the basic structure of the Constitution.
In an another case where the Madras High Court held in Aditanar Educational Institution v. Assistant Director of Income-tax (297 I.T.R. 376) that the relief under Article 226 of the Constitution of India can be granted in spite of the availability of alternate remedy under the statute, only based on undisputed facts. When the High Court finds that factual disputes are involved, it would not be desirable to deal with them in a writ petition.
Under Article-226 the High Court can not consider evidence as Court of appeal, but can make a conclusion arrived on irrelevant grounds can be set aside. On the other hand under Article-32 of the Constitution Supreme Court have the power and original jurisdiction to issue writ for the enforcement of fundamental rights guaranteed in Part-III of the Constitution.
Court is also empowered to refuse the writ petition if there is any efficient alternative to get the remedy by way of Appeal or Review. The objective of the writ is to prevent miscarriage of justice, equity and good conscience.

There are five writ petitions in the Constitution of India and those are Writ of Mandamus, Writ of Habeas Corpus, Writ of Prohibition, Writ of Certiorari, Writ of Quo Warranto.
1) The Writ of Mandamus (means ‘we command’) is generally filed by the petitioner where the Court gives direction to any government, sub-ordinate Court, corporation or others public authority to do something or refrain to do something. It demands some activity on the part of the body or person to whom it is addressed. It commands the person to whom it is addressed to perform some legal duty of public nature, which he has refused to perform, when such performance cannot be enforced by any other adequate legal remedy. Mandamus is available against judicial/quasi-judicial as well as administrative authorities. Prohibition and Certiorari are available only against judicial and quasi-judicial authorities. According to Article-361 of the Constitution a Wirt of Mandamus can not lie against the President or Governor of a state for the exercise of their duties and power.
Example: In Commissioner of Customs (Seaport Import) v. Unistar World Trade, 2009, the Madras High Court held that a Writ of mandamus can be granted in a circumstance where the petitioner has made a request and the denial of the request is performed by the Court.
2) The Writ of Habeas Corpus (means ‘has his body’) is in a nature of an order calling upon the person who has detained another to produce the latter before the Court for ensuring the legal justification for such confinement. Any interested person can file this writ on behalf of the detainee. The purpose of this writ petition is to ensure the release of a person from detention, but this does not conclude the acquittal of a person from his guilt.
Example: In Nilabati Behera v. State of Maharashtra (AIR 1993 SC 1960) case, where the Orissa police arrested son of the writ petitioner for the purpose of police interrogation and during the pendency of the petition the son of the petitioner found dead on railway track, wherein Court allowed the writ petition and the petitioner was awarded Rs. 1,50,000 as a compensation.
3) The Writ of Prohibition (means ‘to forbid’) is issued by the Court to an inferior judicial and quasi-judicial authority that forbid the latter to continue some proceedings therein in excess of its jurisdiction or usurp a jurisdiction with which it is not legally vested or act mala fide having personal interest in the cause. This writ is generally available before trial or during the course of trial where authorities are acting without jurisdiction. Prohibition is generally issued by the Court where the dispute is relates to issues having lack of jurisdiction. This writ is issued by the superior Court against the inferior Court from continuing with the proceedings.
Example: In Thirumala Tirupati v. Thallappaka (AIR 2003 SC 3290), the Supreme Court of India has categorically defined that when a Writ of Prohibition can be issued-
1. Proceeds to act without jurisdiction or in excess of jurisdiction.
2. Proceeds to act in violation of the rules of natural justice.
3. Proceeds to act under a law which is ultra vires or unconstitutional.
4. Proceeds to act in contravention of the fundamental rights.
4) The Writ of Certiorari (means ‘be certified’) is filed under Article-226 of the Constitution and it is issued for correcting gross error on jurisdictional matter, that is when a subordinate Court is found to have acted without jurisdiction/overstepping the limits of jurisdiction or acting in flagrant disregard of law or the rules of procedure or acting in violation of principles of natural justice where there is no procedure specified, and thereby occasioning failure of justice. Certiorari is available at later stage for cancellation of authority assumed without jurisdiction. This writ is issued to quash judicial/quasi-judicial order, judgment or decision of an inferior court delivered after the conclusion of proceedings and to pronounce Perverse and subjective orders.
Example: In the case of M/S Himalaya E-Com Marketing & Finance Ltd. & Ors. v. GNCT of Delhi & Ors (16th May 2008), where the petitioners were been prayed for a Writ of Certiorari quashing of two FIRs that has been filed against them. Petitioner argued on the basis of the violation of fundamental rights. The Delhi High Court held that “a Wirt Court is required to see is whether the assertions made in the complaint/FIR constitute an offence if the same are presumed to be correct”. Applying this test Court held that “we have no manner of doubt that the allegations made against the petitioners justified the registration of the FIRs against them for initiating investigation into the same”. In the result, this Writ petition fails and is hereby dismissed.
5) The Writ of Quo warranto (means ‘by what warrant or authority’) is a prerogative writ where Court directs a person to show on what authority he or she is for exercising some of the powers or rights or holding a public office . This can be issued to correct a wrongful assumption of a public office. This is issued when the office is a public office and substantive in nature/created by statute or by Constitution/the respondent has asserted his claim to that office. The objective of this writ is to see that a person holding a public office shall not usurp the public office.
Example: If a person who is an IPS officer who has to be leave his office within 30 years from the date of joining, but if he hold the office even after the expiry of 30 years and using power vested upon him then any interested person can file a Writ of Quo Warranto against him arguing that the IPS fellow is using his power without any authority.

PATENT INFRINGEMENT SUIT-SECTION-104 INDIAN PATENT ACT

2009-12-24T02:19:00.000-08:00

Patent Infringement Suit:
Section-104 of the Patents (amended) Act, 1970 envisages that no suit for infringement of a patent shall be instituted before any Court inferior to a District Court having jurisdiction to try the infringement suit. This section deals with the jurisdictional issues regarding infringement of the patent under the Act as well as jurisdiction of the High Court to deal with the Counter claim filed by the defendant. In case of the Counter-claim the Court shall transfer the patent infringement case to the High Court together with the Counter-claim for revocation of the patent.
If in a suit for infringement of a patent, a Counter-claim for revocation of the patent is made by the defendant, the suit, along with the Counter-claim is to be transferred to the High Court for decision. Under Section-64 of the Act, any ‘interested person’ can file a petition for revocation of a patent before the High Court having Original Jurisdiction to deal with the matter. In Ajay Industrial Corporation v. Shiro Kanao of Ibaraki (AIR 1983 Del 496) the Delhi High Court defined ‘interested person’ as ‘a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register’….. The Court went on and said that ‘there is no statutory requirement that in a case where a suit for infringements is pending, revocation of the patent can be sought for only by way of a counter-claim and not by way of a separate and independent application’.
Recently in 2009, there is an infringement case where the parties involved in the case were Individual v. Samsung, Ltd., L.G. electronics and ors.
The issue was involved in regards to the jurisdiction of the Court to deal with the patent infringement issues. Here the plaintiff (Somasundaram Ramkumar) got a patent over the dual SIM phones in 2008. The defendants’ were importing the phones. Under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 a patentee can file an application before the Customs authorities to block the importation of the patented product that violates the rights of the patentee. Upon application filed by the plaintiff the customs authority seize the imported dual SIM phones. The defendants’ moved to the Delhi High Court by filing a WRIT petition arguing that the patent is not novel and also challenged the provisions of the Indian Customs Act, 1962. Later on the Mumbai and Chennai Customs Commissioners held that the seizure of the defendants’ imported products was wrongful, because it did not violate the rights of the patentee. The plaintiff filed a WRIT petition before the Madras High Court by arguing that the Custom Commissioner does not have the Jurisdiction to deal with the patent infringement case. Subsequently, the Madras High Court ruled in favor of the petitioner saying that the custom authorities does not have any jurisdiction under section-104 of the Indian Patent Act (amended), 1970 do deal with the matter of patent infringement.

REVIEW PETITION UNDER INDIAN PATENT ACT

2009-12-24T02:12:00.000-08:00

Review Petition u/s-77 (1) (f)) of Indian Patent (amended) Act, 1970

Section-77(1) (f) of the Indian Patent (amended) Act, 1970 envisages that the applicant of a patent can make an application to review the decision of the Controller. On application made in Form-24 under the Patent (amended) Rules, 2003 any applicant may seek to review the decision of the Controller. Under this section the Controller has certain powers like those of a Civil Court to deal with certain legal matters. This section says that the controller 'shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908' and one them is reviewing Controller's own decision u/s-77(1)(f) and the application shall be made ‘within the prescribed time and in the prescribed manner’.
Rule-130(1) of the Patent Rules, 2003 provides that a patent applicant can file a Review petition before the Controller to review his decisions u/s-77(1) (f) of the Act. The application is to be made within 1 month from the date of communication of such decision to the applicant or exceeding not more than another 1 month where it is made by Form-4. Here the applicant shall set forth proper ground on which he/she has sought the review.
This issue can be discussed thoroughly by some of the relevant case judgments given below-
In Magotteaux International S.A. and Another v. Assistant Controller of Patents and Designs and Others, 2007 (Delhi High Court) case, where the petitioners had applied for a patent named ‘composite wear component’. During the pre-grant opposition the applicant sought four (4) amendments under section-78 of the patent act, 1970. However no opposition had been received by the respondent no.3. Later on the patent was granted and was ready to publish under section-43(2) of the Patent Act, 1970.
The respondent no.3 filed a review petition u/s-77(1) (f) of the Act against the said grant of amendment u/s-78. The contention of the respondent no. 3 was that, since section-78 of the Act empowers the Controller to correct some clerical error, but that does not allow the Controller to make any amendment of the patent application. The application for review subsequently has been dismissed by the Controller (respondent no.1). The said respondent no.3 filed WRIT petition before this Court and Court set aside the previous order of the respondent no.1 and remanded the case to the respondent no.1 for further review, but this has also gone in vain on technical grounds. The respondent no.3 further moved before the High Court of Delhi saying that the Controller's decision was impugned and no reason has been set forth to justify the rejection of the review petition.
The High Court of Delhi opined that the decision of the respondent no.1 was impugned and directed that the Patent Office shall publish the granted patent with 4th amendment. For the disputes regarding other three (3) amendments it is open to the petitioner to move an appeal under section-117A in respect of the disallowance of the three amendments.
In another case Michigan State University, E.Lansing, USA v. The Assistant Controller of Patents, Patent Office, Delhi Branch and The Controller General of Patents, Trademarks, Designs and Geographical Indications, Patent Office, Mumbai Branch (2008, IPAB-Chennai), where the appellant filed a patent application titled 'Transgenic Plants Producing Polyhydroxyalkanoates' (for a ‘gene expression cassette’) and subsequently this was granted by the Patent Office, Delhi. During the examination process two divisional patents have been filed based on the first patent application. One of the divisional applications was the subject matter of this case. During the examination process the examiner objected the divisional application on the ground that it does not satisfy the definition of an invention envisages u/s-2(1)(j) of the Patent (amended) Act, 1970 and it falls under the non-patentable subject matter as defined u/s-3(b) and 3(j).Later on the applicant filed the amended version to the Patent Office and again the Assistant Controller after examination rejected the application on the ground that it is not satisfying section-2(1) (j) of the Patent Act, 1970.
Aggrieved by this impugned order of the Controller of Patents, the appellant filed the review petition u/s-77(1) (f) before the Assistant Controller over the same divisional application that is being rejected by the said Assistant Controller on the ground that the applicant has not been complied with the requirements of the patent office and it is deemed to have been abandoned u/s-21(1) of the Patent Act.
The appellant filed an appeal before the Delhi High Court by contending that the decision of the Assistant Controller was impugned that violates well settled proposition of law and no reason has been set forth why the patent is abandoned. The High Court transferred the case u/s-117G to the Intellectual Property Appellate Board (IPAB), Chennai.
The IPAB opined that “We are not satisfied that the order of abandonment is sustainable. Having stated in the impugned order that the subject matter and claims are not patentable under section-2 (1) (j) the reasons in support thereof ought to have been stated, instead of relying upon abandonment under section 21 (1). The impugned order for the said reasons is not sustainable. We are, therefore, of the view that this divisional application for patent be remanded back to the Patent Office with a direction that the learned Controller of Patents shall offer an opportunity of hearing to the party as per the provisions of law and then decide the matter in accordance with the law. The appeal is allowed in part, in terms as above”.

PATENT OF ADDITION-INDIA

2009-12-24T02:09:00.001-08:00

PATENT OF ADDITION: Section 54, 55 and 56 of Indian Patents Act

A patent of addition is a patent granted for any improvement in or modification of an invention described or disclosed in the complete specification of the “main invention”. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.
For a patent to be granted as a patent of addition, the date of filing of the application must be either on the same date as the filing of the main invention or later than the filing date of the main invention.
A patent of addition is not granted earlier than the patent of main invention.
A patent of addition is granted for a term equal to that of the patent for the main invention and it remains in force as long as the main patent is in force. No renewal fees are payable for patent of addition.
The patent of addition can become an independent patent if the applicant requests the Controller to revoke the main patent and make the patent of addition as an independent patent for the remainder of the term. When the patent of addition becomes an independent patent the renewal fees are payable for the rest of the term.

MAREVA INJUNCTION-INDIA

2009-12-24T02:04:00.000-08:00

Mareva Injunction in India
Mareva Compania Naviera SA v. International Bulkcarriers SA [1975] 2 Lloyd's Rep 509.-In this case the plaintiffs, Mareva Company (the ship-owners) issued a writ against the defendant company (the charters) for an unpaid hire and damages for repudiation of a charter party. On an ex parte application the Hon'ble Judge granted injunction restraining the defendant from removing or disposing out of the jurisdiction moneys standing to the credit of the charters' account at a London bank. Thereafter the plaintiff appealed against the judge’s refusal to extend the injunction. Here the plaintiffs are the owner of the vessel Mareva and they let it to the defendants. The hire was payable half monthly in advance. Later on the charters sub-chartered it. The defendants let the vessel on a voyage charters to the President of India. The Indian High Commission according to their obligation paid 90% of the freight, but paid it to a bank in London. Out of that the defendants paid it to the ship-owners, the plaintiffs, the first two installments of the half monthly hire. But subsequently the defendants were failed to pay the 3rd installment. Now the plaintiffs moved to the Court and filed a writ petition arguing that the defendants are failed to comply with their obligation.
The Hon'ble Judge opined that "in my opinion that principle applies to a creditor who has a right to be paid the debt owing to him, even before he has established his right by getting judgment for it. If it appears that the debt is due and owing, and there is a danger that the debtor may dispose of his assets so as to defeat it before judgment, the Court has jurisdiction in a proper case to grant an interlocutory judgment so as to prevent him disposing of those assets. It seems to me that this is a proper case for the exercise of this jurisdiction. The Hon'ble Court also opined that "in my judgment the charters here have a strong case on the merits. We have not heard any argument from the other side because it is an ex parte application. In these circumstances I would reserve my own views until I have heard argument from the other side if any such argument is put forward. But, in the absence of any such argument, in my view this injunction should be continued”.
Thereafter, the appeal has been allowed and the injunction was continued.

Indian Scenario on ‘Mareva Injunction’:
In India there is no provision equivalent to section-45 of the Supreme Court of Judicature (Consolidation) Act 1925, a Mareva injunction, but there are some substantial case law in India where the Indian Court has applied the principle taken form 'Mareva case' while pronouncing the ex parte injunction order in order to meet the natural justice and equity.
The concept of Mareva Injunction evolved in the case of Mareva Compania Naviera SA v. International Bulkcarriers SA [1975] 2 Lloyd's Rep 509. Most of the common law countries recognizes this foreign judgment and its principle as a precedential case law and apply the principle of this case while dealing the injunction petition in their country Court of law.
Order-XXXVIII (Arrest and Attachment before Judgment), Rule-5 (Attachment before judgment) of Indian Code of Civil Procedure, 1908 envisages that-
“Where defendant may be called upon to furnish security for production of property
(1) Where, at any stage of a suit, the Court is satisfied, by affidavit or otherwise, that the defendant, with intent to obstruct or delay the execution of any decree that may be passed against him-
(a) Is about to dispose of the whole or any part of his property, or
(b) Is about to remove the whole or any part of his property from the local limits of the jurisdiction of the Court, the Court may direct the defendant, within a time to be fixed by it, either to furnish security, in such sum as may be specified in the order, to produce and place at the disposal of the Court, when required, the said property or the value of the same, or such portion thereof as may be sufficient to satisfy the decree, or to appear and show cause why he should not furnish security.
(2) The plaintiff shall, unless the court otherwise directs, specify the property required to be attached and the estimated value thereof.
(3) The Court may also in the order direct the conditional attachment of the whole or any portion of the property so specified.
(4) If an order of attachment is made without complying with the provisions of sub-rule (1) of this rule such attachment shall be void”.

In M/S Rite Approach Group Ltd. v. M/S Rosoboronexport Ltd. (Arbitration matter, In the High Court of Delhi, FAO (OS) No. 102 of 2004, decided on March, 2007) where the appellant prayed for ex parte injunction order by relying upon the 'Mareva Case' as a case precedent. In this case the Court although rejected the injunction petition, but opined that- "injunction order even as per the Court of Appeal can be issued in extraordinary circumstances. Mareva or freezing injunction is passed when there is evidence or material to show that the debtor is acting in a manner or is likely to act in a manner to frustrate subsequent order/decree of the court or tribunal. The Court therefore freezes the assets of the debtor to prevent the assets from being dissipated, to prevent irreparable harm to the creditor. It prevents a foreign defendant from removing his assets from the jurisdiction of the court. It is like and akin to ‘attachment before judgment’ and conditions mentioned in the said provision should be satisfied before freezing injunction order is passed".
In an another case, Tata Sons Ltd. v. H. P. Singhal, where Tata Sons has obtained an ex parte injunction from the Delhi High Court in a suit filed against the defendant. The defendant was duping gullible employment seekers by offering jobs in a company called 'Tata India Ltd.', with its address in Delhi. The Hon'ble High Court Judge had passed an order in the nature of a 'Mareva Injunction', freezing the defendant’s assets, including bank accounts, as the defendant was involved deceiving people by using Tata’s brand name.
(Available at: http://tata.com/company/releases/inside.aspx?artid=N/JLyT5SbxY=)

In one article written by Justice R. K. Abichandani (Judge, High Court of Gujarat) on "Role of Judiciary in the Effective Protection of Intellectual Property Right" in the Gujarat High Court's Web portal; where the Hon'ble Judge while discussing about the injunction petition under Order-XXXIX of the Code of Civil Procedure, 1908 opined that "the Courts are empowered to make interlocutory orders under Order-XXXIX Rule-7 of the Code for detention, inspection or preservation of any property which is the subject matter of the suit and for this purpose to authorize any person to enter upon or into any premises in possession of any other party and authorize samples to be taken. Ex parte orders of this nature can be made under Rule-8(3). Thus it was already within the jurisdiction of the Indian Courts to make orders under the procedural rules contained in the Code like Anton Piller order or the Mareva injunction. Where no specific provision is made it has inherent jurisdiction under Section-151 of the Code to make orders necessary for the ends of justice."

In a Judgment i.e. Nirma Ltd. v. Lentjes Energy (India) Pvt. Ltd, 2001, pronounced by Gujarat High Court that recognized the 'Commentaries on Russell on arbitration' and the Court approved that 'power to grant an interim injunction extends to granting of a Mareva injunction in appropriate cases..'

In case of Mareva Injunction, the court has power to freeze defendant’s assets, where there exists a probability of the assets being dissipated or cancelled so as to make a judgment against him worthless and un-enforceable. This remedy appears to be similar to the interlocutory order to “attach property before judgment” under the Code of Civil Procedure, 1908. The Court may allow this injunction based on the affidavit of evidence alone filed by the plaintiff itself.
Therefore, the Indian Court has the power to pass orders of “attachment of property” before passing any award for securing the interest of the plaintiff in any ex parte injunction petition. The content of the power would same as the power exercised by the Court under that said Order-38, Rule-5 of the Code of Civil Procedure wherein appropriate cases the Court can order “attachment of the assets” of a party to survive till judgment is passed in this matter.
The main ingredients, which an applicant should satisfy on an ex-parte application to become entitled to a Mareva injunction, are -
a. There must be an arguable claim;
b. There must be a real risk that the final judgment in applicants favor would remain unsatisfied;
c. There must be full and frank disclosure of all the material facts;
d. The exercise of discretionary power by the court.

DECLARATORY SUIT

2009-12-24T02:03:00.000-08:00

Declaratory Suit:
Generally, party seeking solutions to a dispute file a declaratory suit by asking the declaratory judgment. It is often sought in a situation that involves contracts, leases, IPR disputes, deeds etc. It is a preventive justice as the purpose of this judgment is to inform the parties of their rights to help them to avoid violation of specific laws or term of the contract. It is filed when a party is threatened with law suit and the threatened lawsuit is not yet filed or when the party think that their rights under any law is going to going to conflict or a counterclaim to prevent the plaintiff to file the similar law suit again.
Declaratory Judgment is merely a direction of the Court to the parties which is binding to the parties. Declaratory judgment is pronounced by the Court in civil cases where Court declares the rights, liabilities, duties of the parties over a certain issues. It does not decide any award of damage at all.
Section-34 of the Indian Specific Relief Act, 1963 stipulates that “Discretion of court as to declaration of status or right. Any person entitled to any legal character, or to any right as to any property, may institute a suit against any person denying, or interested to deny, his title to such character or right, and the court may in its discretion make therein a declaration that he is so entitled, and the plaintiff need not in such suit ask for any further relief”.

The proviso of this section also envisages that “no court shall make any such declaration where the plaintiff, being able to seek further relief than a mere declaration of title, omits to do so”.

According to Setcion-35 of the Act, “a declaration made under this Chapter is binding only on the parties to the suit, persons claiming through them respectively, and, where any of the parties are trustees, on the persons for whom, if in existence at the date of the declaration, such parties would be trustees”.
Similarly, in United States under 28 USCA 2201 of the Declaratory Judgment Act, 1934 that allows for declaratory judgments concerning issues related to federal laws.
For example, sometime the original owner of the patent does not respond initially against the alleged infringer for violation of his right and in that situation if the alleged infringer thinks that there is a threat to the issue then the alleged infringer can also file a declaratory suit asking for declaratory judgment over the patent issue to resolve the situation and eliminate the dispute to make a bar to the owner from filing a suit against the alleged infringer in the near future. In this situation the owner of the patent have to come to the jurisdiction of the alleged infringer in his own cost to settle the dispute.
Judge may issue a cease and desist order for the purpose of prevention of a certain activity relates to the disputed subject matter. Declaratory suit is an emergency measure to prevent possible irreparable damage.

Injunction

2009-12-24T01:48:00.000-08:00

Injunction:
Injunction is a judicial process or an order restraining a person from continuation of any wrongful act. The rules that governs the grant of injunction are envisages in section-36 to 42 of the Indian Specific Relief Act, 1963 and Order-XXXIX (temporary injunctions and interlocutory order)-Rule 1 (cases in which temporary injunction can be granted) & Rule 2 (injunction to restrain repetition or continuance of breach), Section-151 (Inherent power of the Court) of the Code of Civil Procedure, 1908. Section-38 of the Specific Relief Act, 1963 says when and against whom the perpetual injunction can be granted; Section-39 of the act talks about the Mandatory Injunction and it is provided by the Court to secure the interest of the one party where the interest is breached by the other party. In the continuing section-39 of the Specific Relief Act, 1963 which provides that a plaintiff can claim damages before the Court by putting forth his/her claim in the plaint. This is filed in addition to a suit under section-38 and 39 or separately.
There are four types of injunction and those are Anton Piller Injunction, Mareva Injunction, Interlocutory Injunction and Perpetual (permanent) Injunction.
1. Anton Piller Injunction: This is an ex parte order to make an inspection of the defendant’s premises. The Court may grant such an order to the plaintiff wherein there is a possibility of the defendant destroying or disposing of the incriminating material. It is an order for inspection of the premises of the defendant.
An ex parte order means an order passed on the basis of the application of the plaintiff without giving the defendant a notice of the application, because such a notice would enable the defendant to tamper the evidence; hence ex parte order is passed. This concept was evolved in the case of Anton Pillar v. Manufacturing Process [(1976) RPC 719], where ex parte interlocutory order was granted. After hearing in camera, the Court authorizes plaintiff to inspect premises of defendant and take inventory of the offending material.
Example: In the case EMI v. Kishorilal [(1976) RPC 333], it was held that such an order may authorize samples to be taken or experiment to be made on or with any property which is the subject matter of the action.
There are three conditions requisite for the declaration of an Anton Piller Order-
a. There must be a strong prima facie case in favor of the plaintiff.
b. If Such an Order is not granted which will cause irreparable damage to the applicants for injunction.
c. There must be clear evidence that the defendant have incriminated documents or things in their possession & that there is a real possibility that they may destroy those material if any notice of application is served.

2. Mareva Injunction: This is such an Order of the Court that empowers the Court to ‘freeze’ defendant’s assets and other properties related to the suit; where there exists a probability of the asset and property being dissipated or cancelled so as to make a judgment against him worthless or unenforceable. The concept of this injunction evolved from the case named Mareva Compania Naviera SA v. International Bulkcarriers SA [1975] 2 Lloyd's Rep 509. This is basically a common law remedy that the Court provides to the plaintiff by ‘freezing’ the defendant’s asset or other properties to prevent the possible harmony to the plaintiff.
3. Interlocutory Injunction: This is the most commonly sought and most often granted form of injunction. It serves to take action against the defendant on the basis of past wrongful act done. The interlocutory injunction is an order restraining the defendant from continuation of the acts which amount to a wrongful act in the eye of law. For example, an interlocutory injunction serves the purpose of preventing further infringement of a Trademark or Patent, during the pendency of the case before the Court.
In case of urgency the Court can grant an ex parte i.e. without serving a notice to the opposite party. However this ex parte injunction is granted for a limited period. Party seeking an ex parte interim injunction has to discharge the duty of making full disclosure to the Court regarding all material facts to get Court’s discretion whether or not to grant interlocutory injunction. The Court may also reject the application of an ex parte injunction on the ground that the disclosure is not full and true. Therefore it is a discretionary power of the Court; hence the applicant can not claim it as a matter of right to have an ex parte order granted in his favor.
Example: In Wander Ltd. and Anr. v.Antox India P. Ltd. (MANU/SC/0595/1990) the Supreme Court on interlocutory injunction held that “Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of a legal right asserted by the plaintiff & its alleged violation are both contested… The object is to protect the Plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial”.
4. Perpetual (Permanent) Injunction: It is an order restraining the defendant totally from doing any act which infringes the rights of the proprietor of any property. It is generally granted when the suit is finally decided. It usually follows when the grant of interim injunction against the infringement was granted at the beginning of the suit. It can be granted also in cases where no interim injunction has been granted.
Example: In Montres Rolex S. A. v. Amit Gupta and Ors. (30.3.2006) case Plaintiff is a worldwide renowned manufacturer of watches which are marketed under the trademark of ROLEX. According to the plaintiff, the plaintiff has been using this trademark since 1913, much prior to the user of the mark ROLEX by the defendants.
This was a suit for permanent injunction and damages under Sections 105 and 106 of the Trademark Act, 1999. When summons were issued in the suit initially, the defendants entered appearance. They did not, however, file any written statement but filed a reply, which was an application for interim injunction filed by the plaintiff under Order 39 Rules 1 and 2 CPC.
Thereafter the defendants failed to appear and this Court by an order dated 25.07.2005 directed that the defendants be proceeded with ex parte.
The plaintiff thereafter led its ex parte evidence by way of affidavit of one Mr V. Seetharaman. The said Mr V. Seetharaman claimed to be the constituted attorney of the plaintiffs.
The Supreme Court held that “ROLEX is well known worldwide, as established by
the evidence led by the plaintiff, who has gone un-rebutted. The plaintiff has been utilizing this mark for its products which are essentially quality watches which go under the name of chronometric instruments because of their precision in recording time. Therefore, it would not be wrong to assume that the plaintiff is keen to guard its reputation with regard to its mark ROLEX”. Hence, the Court allowed permanent injunction and ordered defendant to restrain from using the trade mark of plaintiffs’.

CHECKLIST FOR BRAND VALUATION

2009-12-24T00:59:00.000-08:00

Checklist for brand Valuation:

Company Logo and Trade Mark:- (This is required to separate your company's brand identity from the other competitors brand.

This will distinguish your products and services from others in the market)

1. Whether your company has any logo?

2. Whether your logo is consistently applies to your product and communication?

3. Whether your logo has been protected under the umbrella of Trade Mark?

4. Do you think that you can sell your logo as a Brand?

5. Whether there is any prospective buyer of your Brand?

6. If you wish to sell your logo as a brand, do you think you would get a satisfactory price for your brand logo?

Company Patent:-

1. Whether your company owned any patented technology?

2. What is the market value of that patented technology?

3. Whether any of your product has been covered by the patented technology?

4. Whether your company has any licensed patented technology? If yes then what is the exact market value of that licensed patented technology?

5. Whether the technology owned by licensee (your company) is a non-exclusive or exclusive?

6. What are the patents are available in the market that yours competitors own?

7. Whether the technology is documented in anywhere in the world at any patent office?

Company Identity in the Market:- (This presents your company across all media such as website, signage, advertisement, trucks etc.)

1. Do you think that your company has a corporate identity in the market?

2. Whether your Corporate Identity is applied everywhere?

Company Brand: - (This will make a reputation in the market about your staff and suppliers; on the other hand customers and competitors)

1. Whether your company have acquired a brand title in the market?

2. Whether yours company management understand company brand?

3. Whether the suppliers and customers well aware of your brand?

4. Whether your brand increasing your company GOODWILL in the market?

5. Whether you have trade marked all your intangible assets that includes patents, trade mark, trade names, designs or models as well as copyright, know how and trade secret?

6. Whether Your Company is well aware of maintaining of the company's brand and Intangible assets?

7.Do you have any knowledge that how your intangibles and tangible assets take a major role in your company's brand value?

8. Do you maintain a proper portfolio of your all intangible properties?

Customers:-

1. Do you have any idea of about yours customers in the market?

2. Whether your customers are well known to your brand?

3. Do you know whether your customers are getting profitable by your products or services?

Competitors:-

1. Do you have any database about your competitors lead in the same market?

2. Do you ever been maintained a database of the products and services of your market competitors?

3. Have you ever been compared yours product and service price with your competitors product and services?

4. Have you compared yours brand name with the others competitors brand name?