Trade barriers between countries can not only cost you business but also your domain name. This was proved in the recent judgment dated 19th August, by a WIPO Administrative Panel’s Alan L. Limbury, in a domain name dispute between an Indian company and a Pakistani company. The complaint, Mahashian Di Hatti Limited (trading as MDH Spices), a famous Indian company selling spices and condiments under the logo MDH, had filed a complain for transfer of domain name www.mdhfoods.com registered by Syed Hussnain Ali Kazmi of Muhammad Dawood Hassan Food Company, a Pakistani company

The complaint (MDH Spices) in nearly a century long business, had acquired repute among Indian and Pakistani nationals and had also obtained registration of its mark MDH in at least 10 other countries other than India, however due to trade barrier between India and Pakistan it did not sell its product in Pakistan. On the other hand Muhammad Dawood Hassan Food Company (trading as MDH foods) had been selling spices and claimed to be in business since 1983 and has also applied for registration of the mark MDH in Pakistan.

The panelist though accepting that the disputed domain name was confusingly similar to the Complainant’s mark noted that the respondent had legitimate rights to use the name.

Noting that the Complainant does not sell its goods into Pakistan, (and consequently may not enjoy there the same fame as it claims to enjoy elsewhere) the panelist adjudicates that this left a possibility the Respondent did not have the Complainant in mind when registering the disputed domain name. He further went to note that there was evidence the Respondent, whose trading name incorporates the initials MDH (standing for Muhammad Dawood Hassan),  has been trading in foods and spices and advertising under the MDH mark in Pakistan since 1984 and had also applied to register that mark in that country (Pakistan) before registering the dsiputed domain name. Therefore on the above reasoning, the panel noted the complaint had failed to prove absence of legitimate rights on the part of the Respondent and thus the request for the domain name transfer was denied.

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The Supreme court Bench headed by Justice Markandaya Katju which was supposed to hear the Novartis appeal on Monday (31/8), recused itself from hearing the case noting that it may not be proper for him to sit in on this case.

Justice Katju is said be a supporter of making a balance between the need to give monetary inducements to new inventions, and making available these inventions to the broad masses in the underdeveloped countries at affordable prices. Read Shamnad in his blog spicyIP here.

We note that this was a very decent move made by the H’ble judge. Rather than giving a biased judgment being influenced by personal opinion, it was better that he recused himself from the case which involve such important issues and also being intensely followed by many around the world.

The Supreme Court has posted September 15th as the date for final disposal of the Bajaj Auto v. TVS Motors patent infringement case on the twin-spark plugs technology. The bench on Monday (31/8) continued the earlier interim order of June 8 allowing TVS Motor to manufacture TVS Flame, the alleged infringed product, having the claimed twin-spark plugs technology for which Bajaj Auto claims it holds the patent rights.

Bajaj’s petition at the Supreme Court against the Madras High court order allowing TVS to use the twin spark technology resulted in the June 2009 interim order, where the SC asked TVS to make an undertaking stating that it would only manufacture the product but refrain from moving its “finished product (motorcycle) from its warehouse” and ordered both parties to restrained from using the said order for any other purposes including publicity.

The Supreme Court, on Friday, dismissed the special leave petition (SPL) by Roche, challenging the division bench order of the Delhi High Court. The division bench had earlier in April 2009, upheld the order refusing the injunction which issued by a single judge of the Delhi High court, and even awarded costs for suppression of facts in a poorly reasoned judgment.

Noting that it was already 4 months since the division bench order of April and the final hearing on merit of the infringement case (Roche vs Cipla) has already commenced at the Delhi High court, the Supreme Court dismissed the petition and ordered that the ongoing trial at the Delhi High Court be expedited. The SC further went on to note that nothing in the Delhi division bench order would bind the trial court judge.

Read the mint report on this matter here and the analysis by Shamnad in his blog Spicyip here. Spicyip has been covering this matter for a while now read here.

Novartis has filed an appeal at the Supreme Court (India’s Highest Court) challenging the refusal of its patent application for its blood cancer drug Glivec by the Intellectual Property Appellate Board (IPAB- India’s IP tribunal).

The IPAB in its decision in July had rejected Novartis’s appeal against refusal of its Patent Application for its drug Glivec by the Indian Patent Office (Chennai) back in January 2006 on grounds that the application was not patentable under Section 3(b) (Public order, since the drug was high priced) and 3(d) (failing to give a significantly enhanced efficacy) of the Indian Patent Act.

Read more on Mint, Hindu, Times of India reports on this. SpicyIP has been covering this matter from day one, read them here

In the case of Versata Software Inc. v. SAP America Inc., the  U.S. District Court (Eastern District of Texas (Marshall)) has found SAP guilty and ordered a payments of $138.6 million to the respondent for violation of its  patent rights. Versata Software claimed that SAP wrongfully used technology covered by a patent relating to the way items are priced and systems configured for products with multiple levels. According to Bloomberg  reprots this is 4th highest in US and the 11 highest overall damages awarded in a Patent litigation this year.

Read Bloomberg, IndiaTimes or PCWorld reports for more details

In a decision dated 11th August, WIPO Domain Dispute Arbitrator Pavan Duggal had ordered the transfer of the domain http://www.oktatabyebye.com (disputed domain) to Tata Sons (Complaint) from makemytrip.com(mmt) (Respondent), the travel & ticketing company, who hosted a online travel community allowing users to share their travel experience on the contested domain. Though the respondent (mmt) had argued that the common parlance “OK Ta Ta Bye Bye” was used as a farewell and that the disputed domain was not used in bad faith for deriving illegal benefits from the name TATA, the arbitrator ruled that the domain was confusingly similar to the mark ‘Tata’ and the respondent had no legitimate right to use the name. Moreover the Arbitrator had noted bad faith on the part of the respondent since the advertisement and offers on the home page of the disputed domain was from makemytrip.com, therefore the purpose of utilizing the domain name <oktatabyebye.com> appeared purely to funnel Internet traffic and thereby bring it to the website “www.makemytrip.com” for commercial gain.

This decision seems harsh, particularly since the domain was based on the colloquial context for the application of the term ‘Tata’ to mean farewell, neither was there  bad faith on part of the respondent towards misguiding the public.  Last heard the respondent had intended to appeal against transfer of the domain at the Indian Courts.

Read the press reports Medianama (here) and Business Standard (here) for more on this topic and the report by Indiatimes (here) on why Cybersquatters eye online travel market.

Another interesting fact tweeted by Cleartrip is that <makemytrip.com> has also cybersquatted on the domain <clearmytrip.net.in> (see here), now that’s called bad faith registration.

This 26th day of August in IP History

In all started with second session the Patent Co-Operation Treaty (PCT) Working Group meeting the in May this year (Read all the reports here) where PCT reform was mooted. The aim of the reform was to provide a more effective PCT system which avoids the need for duplication of work. In spirit, this reform mooted by the PCT is the need for the hour. With increasing backlog in the national patent offices and inadequate resources leading to delayed grants which has a negative impact on technology and the economy, such a reform should be blessing.

As per the proposed reform, (as per PCT/WG/2/11 )

  1. More than one Authority (say A & B) reviews the Patent Application and gives a comprehensive search report.

  2. Another authority (say C) now Performs combined international/national examination using: their own search results; search reports from the previous authority A & B;

  3. Authority C now acts like a Examination body receiving response from applicant.

  4. Authority C also allows for and prior art submissions by 3rd parties before issuing patentability report.

  5. If the report is positive then it automatically qualifies for a patent in the member country, unless the member country issues a notice of refusal.

Though all the member nations acknowledged the need for a stronger PCT to reduce duplication of work, there was no consensus on the proposal and it has been decided to further discuss on the proposal. However certain sections of the community have already started crying foul even before the reforms could take any shape. The generic Indian Companies in particular are up in arms against any such idea being mooted.

One such editorial on Economic Times can be read here and subsequent analysis of the editorial by SpicyIP can also be read here. The most recent article on Economic Times comes from the Dr.Y.K.Hamied, Chairman & MD, Cipla Ltd (here) warns the Indian Govt not succumb to the WIPO pressure (Looks more like Cipla pressurizing the government)


Basically the Indian Generic community has two major issues.


Afraid of possible amendment to the Patentability, especially Section 3(d)

Their first concern is that the PCT reforms would force India to accept the examination made by other Authority other than India and thus limiting the freedom of India to apply substantive conditions of patentability. Generic Pharma companies worry that this would force India to grant patents for incremental inventions which otherwise was not be possible under section 3 (d) of the Indian Patent Act. The generic industries which survive by manufacturing such drugs would be the most affected by this.

However this issue was addressed by WIPO in their summary of the Chair (PCT/WG/2/13) para 5 which reads

The Meeting agreed that the relevant PCT bodies should continue their work to improve the PCT. The Meeting agreed that the PCT system can and should function more effectively, within the existing legal framework of the Treaty provisions

– to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States;

– without limiting the freedom of Contracting States to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures.”

Further WIPO itself has condemned a news report in pharmabiz which made its stand clear stating

there is not – and never has been – any consideration at WIPO of what your article describes as a “global patenting system” which would “dilute the sovereignty of developing nations in determining patentability of applications for inventions and do away with flexibilities granted under the TRIPS Agreement”

More on the PharmaBiz report and WIPO’s clarification can be read from SpicyIP here.


Afraid of possible amendment to the Patent process, especially Pre-grant opposition proceedings

India is one of the very few counties who have two opposition proceeding. India Patent Act allows for a full fledged pre-grant opposition proceeding, including bi party hearing before the Controller. This has been used, rather abused, by the generic companies to the maximum extent for successfully delaying the grant of Patent. The proposed reform to PCT procedure takes into account the majority of member countries (as they have a single opposition (Post Grant)) and provides for 3rd parties observation.

The report adopted by the working group (PCT/WG/2/14) in its para 58 would clarify the PCT stand on this matter

In response to a query by one delegation as to whether it was intended that International Authorities be required to respond to third party observations, the Secretariat stated that, while the details of any system allowing for the submission of third party observations were still to be discussed, there had been no intention that such responses be mandatory. In this context, several delegations stated that more discussions were needed on the possible details of such system, including whether the applicant should be entitled to comment on any such third party observations and the possible need for translations of such observations. One delegation stated that it wished to reserve its position on the proposal to set up a system allowing for the submission of third party observations, noting the possible impact on the pre-grant opposition system existing under its national law.

It is rather obvious which was the delegation (Indian) who had reserved its comments noting the pre-grant opposition under its laws. Though one may not be a big fan of Section 3(d) or the existing pre-grant opposition proceedings, we believe WIPO would not be a forum to sort out national issues therefore let us have some faith on the Indian Delegation to come up with the best for the country position.

So Generic companies stop complaining and start inventing!


Patently Yours

This 25th day of August in IP History

  • In 1840, a patent for seeding machine was granted to Joseph Gibbons (US patent no 1,731).. later a patent of addition ( AI43 ) was filed to this patent.