The Indian Patent Office, on 15th February, published its draft manual for Design Practice and Procedure. The draft can be accessed from the IPO website here.

Readers may recall that the draft manual for Patent Practice was introduced in 2008 and after lot of consultation with the stakeholders; a revised draft had been published in November 2010. The finalized manual was to be published by year end, which, unfortunately is yet not completed

This draft design manual has the same format as followed by the draft Patent Manual and goes into details providing leading cases, both from the Indian courts and English Jurisprudence.

The Patent Office invites comments to the draft by 10th March, which would be the first step in one of the multiple consultations before finalizing the manual. However, we hope that this process would be rather faster than that of the Patent manual.

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An Indian search engine Guruji.com’s CEO Mr Anurag Dod, along with some other executives, were arrested on 29th April on charges of making available the copyrighted musical works owned by T-Series.

News reports quote the FIR (First Information Report) registered in Bangalore as stating that this is “for infringement and displaying in Guruji.com web site film songs of 1) Om Shanthi Om 2) All the best 3) Bhool Bhulaiya 4) Apka Suroor 5) Aashiq Banaya Apne which belong to Super Cassettes Industries Ltd Copy Right Owner Ship”.

Copyright infringement being a criminal offense, the plaintiff is at liberty to choose either civil, criminal or both these remedies.

The search engine Guruji.com allows users to search and play music from sites which offer free music.

This looks like another Pirates Bay case in making and this is going to go a long way to act as jurisprudence for interpretation of the IT (Amendment) Act 2010 and the way India would determine the safe harbor principles of intermediaries.

Jet Airways, after a good financial earning report, was on the business front pages last week, but there was also some patent trouble brewing in the background.

Mint (on 25th Jan) carried a report on a pre-grant opposition filed by Jet Airways against grant of a patent on herringbone seat (used in business class) by Virgin Atlantic covered by the Indian application 500/CHENP/2004 (Application number details was obtained from source here)

This opposition in India is another chapter in ongoing patent dispute which is in its final stages in the UK and EP.

The EP application had graduated into a patent EP1495908. The EP patent was opposed by Contour (along with Cathay Pacific & Airbus), but was unsuccessful; subsequently an appeal filed against the opposition decision is pending at the Board of appeal at the EPO. The file history of the EP patent can be found here along with the documents filed during the proceedings.

In the UK, the EP patent was used in an infringment suit against Contour. Virgin was unsuccessful at the first instance, where in Jan’09, Justice Lewison [2009] EWHC 26 (Pat) held Virgin’s patent valid but not infringed by Contour. Virgin appealed against this decision, and this time found luck. The Court of Appeal, on Oct’09, overturned the previous decision and ruled [2009] EWCA Civ 1062 in favor of Virgin, holding the Patent to be valid and infringed. Premier (Contour) was earlier involved in designing the seats with Virgin and had also supplied the allegedly infringing seats to other airlines including Jet Airways.

Reports on UK proceedings can be found in IPKat here and here, and detailed analysis at JIPLP here .

As a counter to the Indian opposition, and with a shot in the arm by a favorable decision in the UK, mint on 26th Jan reported that Virgin has filed an infringement suit against Jet Airways in the UK.

The pre-grant opposition to the Indian Patent application is pending at the Chennai Patent Office and is presently at hearing stage, which was postponed to February. Surprisingly, Mint states that adjournment was sought by Virgin asking for time to reply, which may not be the case, as all such reply must be filed well before entering into the hearing stage.

The main grounds of opposition raised by Jet through their attorney Mr. LaxmiKumaran is the ‘design and technology has been in the public domain’ and as per Mr. Basheer ‘can be disqualified due to lack of novelty’.

Unfortunately, we could not find the exact document(s) that were relied upon (sorry no online file history available in India!), but we hope that there is something new to those relied by Contour in EP and UK, if Jet hopes to give any worthwhile challenge to destroy the novelty, especially since the novelty requirement is the same, derived from the UK Act and the patent was already held valid (twice) by the UK courts.

Though at present the visibility seems to be low, the skies look cloudy and going tough for Jet Airways, which if unsuccessful, will incur huge loss (money and time), and subsequent patent infringement suits if Virgin is successful in obtaining a patent in India.

With two big players in the ring with lot at stake (including pride), whatever the outcome, it is sure to be appealed and also with infringement suit also on cards, this case looks like one which will not die down anytime soon. We just hope that at the end of it all, we are left with some good jurisprudence to rely upon.

Apple unveiled its most awaited tablet PC this week and called it iPad, in line with it’s customary ‘i’ prefix. While all are talking about the product, Fujitsu is crying foul on use of its trademark.

 

Fujitsu’s in 2002 launched a handheld device called IPAD and also filed for a trademark 76497338, which was published in Sep’09 and open for opposition. Apple has since then sought for 3 extensions for time to keep their options open for filing an opposition.

 

This is not the first time Apple is in trouble for its trademark. Earlier, the use of iPhone was objected by Cisco and a Japanese company, which was sorted out by mutually agreeing to use it and change its Japanese spelling to avoid confusion. Other Apple trademark battle with companies include the famous Beatle’s music company Apple Corp and Woolsworth (read here)

 

Others registered users of the mark IPAD included Siemens for a programmable Electric Drives (3389082), keypads for entering pin (3405828) and a company selling bra inserts (3396165). More IPAD marks applied and on the pipeline at the USPTO were, a medical equipment company (77149473), cleaning industry (77876096) and finally on 16th Jan 2010 by IP Application Development LLC who is applying for Apple (77913563).

 

We could expect the opposition filed anytime now, unless some mutual agreement is reached by then. But as noted here, Apple will not be able to rely on the filing of its mark as it is not the applicant. It would be interesting to note the strategy Apple uses and its arguments when it finally decides to oppose.

Just when we were thought that the Google Adwords trademark infringement case was about to end in Europe, the Indian chapter of litigation just started.

Google sells words/terms to Internet search advertising and displays the advertisement in the right side whenever the term is searched using Google search engine.

But what happens when the terms turnout to be registered trademarks?

Companies such as shoe stores, for example, may buy the trademarked words pay Google so their name appears alongside Internet search results for a brand of designer shoes they sell or even a counterfeit, which is what happen in Europe when Google sold the Adwords of famous luxury brands to other who sold imitation products of the luxury brands.

Louis Vuitton had filed number of suits in different jurisdiction in Europe for trademark infringement claiming that Google had no right to use their mark and sell them to others for advertisement. The litigation in the France was heard by the European Court of Justice and on 22nd September, adviser and Advocate General Poiares Maduro in his opinion had favored Google, noting that they had not committed trademark infringement and the use by Google did not amount to ‘use of trademark’. A detailed analysis of this opinion can be read from IPkat blog here. The complete opinion of the Advocate General to the European Court of Justice in the Louis Vuitton v. Google can be read here.

Now the Indian Chapter of Google Adwords litigation has started.

Consim India, a company that owns the famous Indian matrimony website bharatmatrimony.com, has filed a trademark infringement suit against Google.com at the Madras High Court for what is alleged to be a two pronged infringement by Google. It is also been reported that they have been successful in obtaining an injunction, stoping Google from displaying such ads. However till date we don’t see any action. The reports from Medianama (which can be read here).

1. First alleged infringement by Google was that when the trademarks of Consim India like ‘bharatmatrimony.com’ are searched through Google, competitive website such as shaadi.com and simplymarry.com were displayed in the advertisement space of the search results.

This is the common activity by Google where certain Adwords including trademarked terms were sold to the competitors and on which the trademark owners had been fighting with Google in different jurisdiction for sometime now.  The above-mentioned case of Louis Vuitton also related one such abuse of trademarks.

One interesting issue pointed out by medianama (here) in their report was that Bharatmatrimony themselves were involved in such practices, i.e when one typed shaadi.com as the search term, advertisements by bharatmatrimony would be displayed on the side.

However when checked today, this was removed.

2. Second allegation by Consim was that when a generic term is searched, Google displayed advertisement which had the trademark of Consim but did not direct to their site. In other words when someone searched for ‘Tamil Bride’, which is a generic keyword, advertisement from competitors were displayed which used trademarked terms in the text of the Advertisement including the term bharatmatrimony but instead linked to the competitor’s websites.

Read medianama reports for more information on this. This round of Google Adwords infringement will sure be interesting.  We would keep you posted on the developments as it happens.

In a landmark Judgment which could change the landscape of Patent litigation in India, the Supreme Court has pronounced the judgment on the Bajaj v. TVS’s appeal on injunction today (16th Sept).  Copy of the Supreme court judgment on Bajaj v. TVS’s appeal can be downloaded (Bajaj V TVS SC )here

The bench consisting of Justice Markandey Katju and Justice AK Ganguly judged that

1. The matter is to be disposed on merits at the Chennai HC, with directions to complete the full trial and pronounce orders latest by 30th November 2009.

2. TVS has been allowed to sell its bikes with Twin Spark Plugs, with a Court Receiver being appointed to maintain books of Profit.

3. Issues directive for lower courts for IP litigation.


For background understanding of our readers, below is a synopsis of the facts of the case

  • In  Dec 2007 Bajaj claimed TVS had infringed the Patent and filed an infringement suit at Chennai HC against TVS.  Single Judge of the Madras HC issued a temporary injunction  on 16th February, 2008 of the Manufacture and sale of TVS Bikes with alleged infringed twin spark plug.
  • TVS appealed against this decision at the Division Bench of the Chennai HC against the injunction and the Division Bench Madras HC on 18 May, 2009 had decided prima facie that there was no infringement by TVS and allowed TVS to manufacture and sell the bikes.
  • Bajaj then appealed at the Supreme Court against the Madras Division bench decision and the Supreme Court issued an interim order (dt 08th June, 2009) allowing TVS to manufacture but restrained it from selling till the final order is passed.
  • Today’s judgment is the final order passed by the  Supreme court on the appeal on injunction.

The prime importance  that comes out from this judgment  is the direction issued by the SC in relation to the infringement cases handled in the country.

Disapponted that the matter in the Madras HC has been pending for more than 2 years, the Apex court sets guidelines for IP litigation.

In Page  3- 4 of the judgment (enclosed), the bench had cited a case of M/s. Shree Vardhman Rice & Gen Mills vs. M/s Amar Singh Chawalwala  (No.21594 of 2009 decided on 07th September, 2009) where the court noted that :

“…Without going into the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper.

Proviso (a) to Order XVII Rule 1(2)C.P.C. states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary. The Court should also observe clauses (b) to (e) of the said proviso.

In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.” (Emphasis Added)

The SC reiterated this stance in today’s judgment  (Pg 4) and observed that

“As has been observed by us in the aforesaid case, experience has shown that in our country, suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. This is a very unsatisfactory state of affairs, and hence we had passed the above quoted order in the above-mentioned case to serve the ends of justice. We direct that the directions in the aforesaid order be carried out by all courts and tribunals in this country punctually and faithfully(Emphasis Added)

This is a landmark judgment by the Supreme Court and would form basis of litigating other Intellectual Property Rights related cases in India. The Trial court is supposed to give the judgment on merits within 4 months and the matters must proceed on day to day basis.

If followed, this will drastically change the working of Indian courts in Intellectual Property litigation scene and be a positive step towards a strong Intellectual Property enforcement regime in India.

Further to Justice Katju recusing himself from hearing the Novartis Glivec appeal, the Special Leave Petition (SLP) was listed today (11 September) before the Bench consisting of Justice Dalveer Bhandari and Dr. Justice. B.S. Chauhan.

The Supreme Court bench headed by Justice Bhandari issued notices to Centre and all the other parties involved and sought their replies. The respondents include the Ministry of Industry and Commerce, the Controller General of Patent and Design (CGPDTM), the NGO Cancer Patient Aid Association Centre and Pharma companies Natco Pharma, Cipla, Ranbaxy Laboratories and Hetero Drugs.

This SLP is an appeal against the IPAB decision which upheld the Chennai Patent Office decision to refuse the Novartis’ patent application for its cancer drug Gleevec based on Sections 3(d) and 3(b) of the Indian Patent Law.


For those interested in the appeal, a copy of the Special Leave Petition filed by Novartis at the Supreme Court in the Glivec case is available here from the IP Watch website.

Read more from Times Of India here

Indian Patent office has invited applications from interested persons for empanelment as a Scientific Advisors to provide technical assistance to various Courts in India. This invitation is open till the 30th of November 2009.  The notice is available at the IPO website (here).

According to Section 115 of the Indian Patent Act , in any suit for infringement or in any proceeding before a court, the court may appoint an independent scientific adviser to assist the court or to inquire and report on any such question of fact or of opinion to the court.

The Patent Office is required to maintain a roll of such advisors who can be appointed by the court as per Rule 103 and must be updated annually.

Qualification for empanelment as a scientific advisor are (Rule 103)

  1. He should hold a degree in science, engineering, technology or equivalent;

  2. At least fifteen years’ practical or research experience; and

  3. Holds or has held a responsible post in a scientific or technical department of the Central or State Government or in any organization.

The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee and any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by Parliament by law for the purpose. (Section 115)

This is a welcome move by the Controller General to publicly notify such invitation for scientific advisors. With litigation increasing by the day and absence of specialized courts or bench for deciding complex technical matters, it was time to update that roll with the best people available.

For our erudite and learned readers who would qualify for this, you may download the notification (here) and proforma (here).

A federal jury in California has held two Web hosting companies and their owner liable for contributory trademark and copyright infringement for hosting sites that sold counterfeit Louis Vuitton goods and not acting even after Louis Vuitton had sent numerous notices to the Web hosting company.

In a decision last week, the jury awarded damages totaling more than $32 million against hosting companies Akanoc Solutions Inc., Managed Solutions Group Inc their owner Steven Chen for knowingly allowed several Web sites they hosted to sell products that infringed Louis Vuitton’s copyrights and trademarks.

The US Digital Millennium Copyright Act’s (DCMA) protects ISP from contributory infringements if they can prove that they do not have actual knowledge of the infringement and upon obtaining such knowledge acts expeditiously to remove, or disable access to, the material  and does not receive a financial benefit directly attributable to the infringing activity. In this instance however the Web hosts had been informed of the activity by Louis Vuitton but still refused to implement a policy for removing the offending sites, which was their responsibility.

This is said to be the first successful application on the Internet on contributory liability for trademark infringement.

Though this looks like a clear case of non compliance on the part of the web hosts, in reality, it would be difficult for web hosts to scrutinize between valid complains before acting upon it, as it is no legal expert to scrutinize trademark infringements and cannot pull the plug off its customers without being 100% sure.

Microsoft’s appeal, against the last month’s decision imposed by the U.S. District Court in I4i v. Microsoft Corp patent infringement case, has been successful in staying the district court order on its Word program.

The U.S. Court of Appeals for the Federal Circuit (Washington) put on hold the order imposed by the district court until the final hearing in the appeal proceedings. The last month’s decision by the District court had found Microsoft infringing patents relating to customizing XML, a way of encoding data to exchange information among programs and ordered the world’s biggest software maker to alter its Word Software program by 10th Oct or halt its sales in addition to a $200 mn fine.

Oral arguments on the appeal are scheduled for Sept. 23 in Washington.