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S.S. Rana & Co. presents the Annual Bulletin 2019!!!

As we bid adieu to 2019, we present our annual compendium, comprising of legal news and views which made a mark this year.

Prime Minister Narendra Modi was once again the top newsmaker in India while securing a landslide victory in 2019 Indian General Election. After a year round of debates and hullabaloo, the practice of triple talaq in India was declared as unconstitutional from August 01, 2019. In one of the most important development in the political and Constitutional timeline of India, Article 370 of the Constitution which gave a special status to the State of Jammu and Kashmir was abrogated. This development created a lot of political conundrum and civil unrest in the nation and was subsequently followed by the long awaited verdict of the Supreme Court in the Ayodhya Ramjanam bhoomi case, wherein the Apex Court granted the entire disputed land to the Deity Ram and directed the Centre and State of Uttar Pradesh to grant alternative land to Muslims to build a Mosque.

The uncovering of economic developments witnessed this year, reveals that India’s position in Ease of Doing Business 2020 Report jumped by 14 paces and India has been consistently recognized as an emerging superpower by several global platforms. The Report recognizes India’s judicial quality as a significant determinant of higher firm performance, for both exports and domestic sales. It further suggests that a 10% increase in judicial quality increases firm sales by 1–2%. The Report applauds India’s effort in removing procedural impediments while commencing a business like abolishing of fees for the SPICe company incorporation form, electronic forms of MoA and AoA, enabling of post clearance audits and enhancing electronic submission of documents for trade across borders.

The year 2019 has also been epoch-making when talking about Intellectual Property (IP) developments in India. The Annual Report of 2017-18 indicated increase in trademark registrations, copyright filing and examination and patent filings by Indian and foreign applicants. Apart from this, the digitization of the copyright office and computerization of copyright registration process was also in news.

The enactment of Patent Amendment Rules, 2019 which came into force in September this year is also a crucial update when talking about IP developments in India. The Amendment Rules deserve special mention as they introduced substantial modifications in terms of provision for expedited examination of patent application for start-ups and female applicants in India.

The year end was marked by cabinet’s approval for Patent Prosecution Highway (PPH)  on November 20, 2019, followed by issuance of Procedure Guidelines for Patent Prosecution Highway on November 28. India’s PPH programme has initially commenced between the Japan patent Office (hereinafter referred to as ‘JPO’) and IPO for an initial period of three years. The e-filing of Form under the Guidelines for requesting information for PPH from the IPO commenced on December 05 and it is estimated that more than 100 applications have already been filed under the Guidelines and in some cases even confirmation have been received from the IPO for expedited examination of such applications.

Meanwhile, the year 2019, has also been memorable and monumental for S.S. Rana & Co., as the firm completed 30 glorious years of hard work and commitment since 1989, and was also successful in retaining the ISO certifications, namely, the with ISO 27001:2013 certification (Global Standard for information security management system) and ISO 9001:2015 certification (Global standard for quality management principles) which reinforces the Firm’s commitment towards instilling best practices aimed at improving its business performance and providing proactive and high-quality legal services to it’s clients.

However, the best bit of the year was that the Firm’s Managing Partner, Vikrant Rana was listed amongst India’s Top 100 Lawyers by India Business Law Journal. Mr. Vikrant Rana was also ranked in Band 2 for IP litigation by Chambers & Partners Asia Pacific 2020 and was also awarded with ‘IP Gems of India 2019’ at the Questel IP executive Summit.

The Founding Partners of the Firm, Mrs. Bindra Rana and Mr. Sohan Singh Rana were inducted in the Global Hall of Fame by World Auto Forum for their contribution towards the legal ecosystem at India and the world. Mrs. Bindra Rana was also bestowed with the Lifetime Achievement Award by ASSOCHAM (International Conference for Menstural Hygiene management & gender equality awards 2019).

The Firm was presented with the ICCA Excellence Award 2019 and was also with the Best Corporate Award for Women Empowerment 2019 by ASSOCHAM (International Conference for Menstural Hygiene management & gender equality awards 2019). 

Catch a glimpse of our celebrations on completing 30 years!!!

Coffee with HR!!

Cofee is Kafi Fun!!!

The idea behind this is something more than the drafts made, it’s a coffee break.

Employee Engagement is one of the core strengths of S.S. Rana & Co. the firm believes in creating wow experience for employee as well so that an employee strives for impeccable outcomes. Thus, in a quest of building employee centric brand, the firm has a round of Coffee once every month with its employees and conducts fun engaging activities! The moments shared are not fugacious and we make sure that every moment spent together are counted and worthy

Leadership Connect

In a pursuit of building to strive for impeccable outcome driven culture. The Firm wants to ensure that the values that drive in the New Joiners is in the line with the Management’s thought process and give them a chance to lead a conversation.

Every month a ‘Leadership Connect’ is organized which is an enriching interaction with the leadership (Mr. Vikrant Rana). This is an opportunity to gauge your employee understanding and to connect with the Firm’s strategies and program.

Constitution Day with S.S. Rana & Co.

On the propitious occasion of Constitution Day, we ensured to create some mesmerizing moments by indulging in some exhilarating activities. The celebration was a glimpse of the legacy of defined by the Indian Constitution. This time the legal minds were put under immense pressure to translate the constitution into pure Hindi. Freedom in mind, faith in words! A special mention to all the participants for their enthusiastic participation.

Sparking the Idea of Innovation: Vigyan Srijnotsav 2019

On the cold winter mornings of December 4-6, 2019 all the budding minds in New Delhi flocked to the National Science Centre (NSC), Pragati Maidan, New Delhi for the Vigyan Srijnotsav, 2019. It aimed to foster a passion and aptitude for science and technology and provide a unique platform to avant-garde and creative Innovators. There were around forty-five stalls at the fair showcasing their fantastic innovations. The festival was a celebration of science and innovation with first-hand information from the creators themselves. It was about participation, not competition. This was a place to meet and interact with likeminded innovators from different walks of life.

S.S. Rana & Co. marked its presence, for the fifth time, at the festival, through its CSR Initiative, IP4KIDS, a sensitization program to spread awareness about Intellectual Property Rights among the younger generation. The idea was to ignite a spark in the young minds about Intellectual Property Rights, so that they learn how to protect their inventions, creativity and be incentivized for their contribution to the human race. The initiative aims to stimulate in the young minds of children a culture of innovation, and to inculcate in them a respect for the fruits of one’s labor, as we firmly believe that when one creates IP, he respects IP, as he expects others to respect his IP as well. Building respect for IP means helping create an environment in which IP can fulfill its role to stimulate innovation and creation. It also means fostering an environment in which the system of protection provides equitable benefits for both innovators and users of IP.

With a team of volunteers, the IP4Kids welcomed the curious minds to educate them and give a perception about Intellectual Property. With a number of engaging activities like IP Quiz, Logo Quiz, Idea Contest, One on One interaction, the event gave an opportunity to the younger generation to openly discuss and know about Intellectual Property Law. There were also mini parallel events organized by the National Science Centre such as innovation workshops, Make it at Science Centre, On the spot Design, Family Science Quiz, etc.

The turnout was better than last year and feedback showed that all, especially the kids enjoyed the interactive session with the IP4KIDS team. The volunteers from the Firm also delivered a a presentation on ‘Importance of Intellectual Property’ during a special session titled ‘Safeguarding Ideas’ organized by NSC. The session was very interactive as the participants were very inquisitive about the Intellectual Property Rights.

Overall the response was positive. The fruitful event concluded with the Firm being awarded a memento for participating in the fest and spreading awareness about Intellectual Property Rights among the younger generation.

Run with us – Airtel Delhi Half Marathon 2019

When the feet does the talking!!!

And the Marathon tradition continues. S.S. Rana & Co. successfully participated in yet another airtel Delhi Half Marathon held on October 20, 2019 in New Delhi. There were a total of 52 members who participated in the run, 33 for 5 km and 19 for 21 km. Out of the total participants ‘Keshav Raj’ was the fastest, he completed 21 Kms in 1 Hr 57 Min. The Firm’s record time of 1 Hr 47 Min made in 2017 still remained unbeaten.

73rd Indian Independence Day with S.S. Rana & Co

73rd Indian Independence Day with S.S. Rana & Co

Like every year S.S. Rana & Co. celebrated Independence Day with full zeal and patriotism this time. The office was decorated with tricolor balloons, flags and ribbons represented the true patriotic feeling and love for the nation among all the employees.

A quiz contest “Guessing the Freedom fighters name” was conducted in which images of freedom fighters were shown and participants from office had to guess the right name. Along with that, a “Kite flying” competition was also conducted. Best Dressed Male and Best Dressed Female tags were also given to people who showed patriotism with the spirit of unity in diversity through their dressing. The legal eagles of SSRANA & Co.  shone bright in their regional traditional attire and wished all a Happy Independence Day in their respective regional languages.

It was an absolute fun seeing everyone enjoying and participating in all these activities with full spirit of Colorful and Multicultural India. The celebration was followed by a snack party. 

2019
Corporate
Round Up!!

Supreme Court: Mere reference to 1940 Arbitration Act will not render the entire Arbitration Agreement invalid

10/04/2019

In this case of Purrushottam s/o Tulsiram Badwaik v. Anil, the disputed clause of the partnership deed was “That in case of any dispute between the partners as regards interpretation of this Deed or any other matter connected with the partnership business, the same shall be referred to for arbitration in accordance with the provisions of Indian Arbitration Act, 1940, and the decision of the Arbitrator shall be final and binding on all the partners.”

While the Appellant argued that the reference to the 1940 Act in the partnership deed has to be necessarily referred to the Arbitration process, as prevalent on the date of signing of the Agreement and that the same would not defeat the intention of the parties to go for arbitration as a dispute resolution mechanism, the Respondents contended that issue whether relationship between the parties would be governed by the 1940 Act or the 1996 Act was so fundamental, that any mistakes in that behalf would invalidate the entire arbitration clause and as such there could not be any reference to arbitration at all.

Court’s Holding- The Supreme Court eventually in view of precedents ruled in favour of the Appellant and observed that the date of commencement of the arbitral proceedings was crucial and if such commencement was after 1996 Act had come into force, the provisions of the 1996 Act would govern the situation.

The Court opined that the correct approach would be in promoting the object of implementing the scheme of alternate dispute resolution and that any reference to 1940 Act, in the arbitration agreement would be of no consequence and the matter would be referred to arbitration only in terms of 1996 Act consistent with the basic intent of the parties to refer the disputes to arbitration.

Read Full Story here.

India: Supreme Court settles the Law with regard to ‘seat vs venue’ of Arbitration

09/04/2019

The Hon’ble Supreme Court in the case of Union of India v Hardy Exploration and Production, held that the contractual clause between the parties to the contract stipulating Kuala Lumpur as the ‘venue’ of arbitration did not amount to a choice of juridical seat between the parties. The decision rendered by the three judge bench of the Apex Court tends to provide clarity on the ‘venue vs seat’ conundrum in arbitration cases.

In the case as per the Product sharing contract (PSC), the venue of arbitration was provided as Kuala Lumpur, unless otherwise agreed between the parties. The Arbitral Tribunal while rendering its award in favor of the Defendant signed and delivered the Award in Kuala Lumpur. This award of the tribunal was challenged by the Union of India.

The case eventually reached the Supreme Court which was confronted with the intrinsic issue that when the arbitration agreement between the parties provided for the venue for holding the arbitration sittings by the arbitrators but does not specify the “seat”, then on what principles, the Court (Delhi High Court) had to decide the seat of the arbitral proceedings.

The Supreme Court bench while referring to the precedents in the case and Article 20 and 31(3) of the UNCITRAL Model Law was of the view that in the case in hand there was no determination with respect to the seat of arbitration. The Court observed that when only the term ‘place’ was mention in the agreement between the parties then, the place of the arbitration would be equivalent to ‘seat’ of arbitration. But, if a condition precedent had been attached to the term ‘place’ in the agreement, then the said condition had to be satisfied to consider ‘place’ as ‘seat’ of arbitration.

Read Full Story here.

India: Dissenting Opinion of Two High Courts on Online Sale of Medicines

18/04/2019

It is strange and rather unusual to see that online pharmacies are in a state of confusion due to different views taken by the Delhi High Court and Madras High Court over sales of medicines on online platform. It is seen that with two conflicting orders by two different High courts, the online medical retailers are going to differ in their approach unless a final order along with the rules governing it is passed.

Madras High Court’s View

On December 17, 2018, the Single Bench of the Madras High Court imposed a ban on online sale of medicines until the issuance of notification of the regulatory draft and further directed that the e-pharmaceutical companies to apply for requisite licenses within two months of the date of the notification.

After such a ban, the whole e-pharmaceutical industry was thrown in a state of confusion as there was a complete prohibition on the sale of medicines online until the government notifies regulations to that effect and a sudden ban would inconvenience people dependent on online sale and home delivery of drugs.

Aggrieved by the ban an appeal was preferred by the e-pharmacy companies before the Division Bench of the Madras High Court. A two-judge Bench of the Madras High Court suspended the said order of Court banning online sale of medicines and the interim relief to online pharmacies – will continue until a final order of the Court comes out.

Delhi High Court’s View

A PIL was filed before the Delhi High Court by the Delhi-based dermatologist who alleged that a lot of medicines were sold everyday on the internet and online portals without any rules and regulations governing them which effects the health of the patients and might lead to drug epidemic, drug abuse. It was further alleged in the said PIL that the online sale of medicines is not permitted under the Drugs and Cosmetics Act, 1940 and the Pharmacy Act, 1948.

In the said case, initially the Single Judge of the Delhi High Court directed the Central Government as well as the Delhi Government to restrain the online sale of medicines by e-pharmacies as the same is not permitted under the Drugs and Cosmetics Act, 1940 and the Pharmacy Act, 1948. Thereafter, in an appeal before the Division Bench of the Delhi High Court. The Division Bench ruled that “once the rules come into play, you (online pharmacies) can start selling it (medicines). Problem is that today there are no rules regulating it”. The Hon’ble Judges in the said order refused to vacate the stay order on the sale of drugs and medicines on online portal.

It can be rummaged by the entire scenario that the e-retailers of the medicines and e-pharmacists are in the awe of serious scepticism after two contrasting views have been taken by two different courts of India.

Read Full Story here.

Also read Delhi Imposes Ban on Online Sale of Medicines

India: Government of Haryana Grants Exemption from Periodic Renewals under Shops and Commercial Establishment Act

17/04/2019

The Punjab Shop and Commercial Establishments Act, 1958 is a state enactment which provides for the regulation of conditions of work and employment in shops and commercial establishments. The Act provides safety, health and welfare provisions that the employer in such establishment is required to implement. The owner or the authorized person of the establishments covered under the Act is required to register under the Act.

Periodic renewal of Registration certificate

The Act provides for periodic renewal of Registration certificate by March 31, of every year with a grace period of thirty days. The Government of Haryana wide notification dated November 21, 2018, has exempted commercial establishments and establishments from the requirement of periodic renewal of the Registration certificate.

Analysis

The notification issued by the labor department of Haryana Government exempts establishments and commercial establishment from the requirement of periodic renewal of registration certificate mandatorily required to carry own the business by the establishments covered under the Act. Earlier, the owner of these establishments required to renew their registration certificate by March 31, with a grace period of 30

Read Full Story here.

India: Overview of the Drugs and Cosmetics (Tenth Amendment) Rules, 2018

15/02/2019

Drugs and Cosmetics Act, 1940 and Rules were passed with the aim to ensure that only qualified personnel are engaged in manufacturing, importing, distribution and sale of drugs and cosmetics, confirming safe and effective drugs and cosmetics are being sold. It also prevents entry of substandard drugs and cosmetics in the Indian market. The Act and the Rules have been amended several times since coming into force to meet the need of the hour.

Amendments

The latest amendments made in the Rules are for implementation of increase in application fees for grant of various import licenses, registration certificates for Drugs and Cosmetics and permission for import of New Drugs and Fixed Dose Combinations. These amendments have been brought vide the Drugs and Cosmetics (Tenth Amendment) Rules, 2018 w.e.f. October 12, 2018. The Ministry of Health and Family Welfare directed concerned officers in Central Drugs Standard Control Organization (CDSCO) (HQ) and its Zonal, Sub-zonal and Port offices to ensure implementation of the above amendment via office memorandum dated December 17, 2018.

Read Full Story here.

Registration of the GST, ESI, EPF under Companies (Incorporation) Third Amendment Rules, 2019

29/05/2019

According to the notification the rules are applicable from the date of its publication in official gazette i.e. 29th March, 2019.MCA is continuously making registration procedure simple, fast & centralized. Currently, the form SPICE is required to be filed for incorporation of a company with MCA. A new linked e-Form AGILE has been introduced by MCA with effect from 29th march 2019, through which an applicant registering company can apply for GST Registration, ESI Registration and EPF Registration along with the company registration in Spice Form.

As per the new notification, every application of the registration of the company shall be accompanied by the e-form AGILE for taking registration under GST, EPFO and ESIC. However, taking all the numbers is not mandatory but the company have option to tick in only those boxes in which the company wants to register itself.

 Read Full Story here.

India: E-reporting of air pollution incidents

11/06/2019

The alarmingly high rates of pollution have raised great concerns for the Government. The dipping air quality index specifically during the festive season is indicative of the worsening of the environment and the dangers of the prospective increase of pollutants therein.  In view of the deplorable conditions of environment, the Central Pollution Control Board has informed the Supreme Court that it has created social media account on Twitter ( https://twitter.com/CPCB_OFFICIAL ) and Facebook ( https://www.facebook.com/Central-Pollution-Control-Board-315289479059625/ ) to facilitate citizens in lodging complaints pertaining to air pollution incidents in Delhi-National Capital Region. Apart from the social media accounts, complaints can be lodged through Sameer mobile App.

Read Full Story here.

India: Amended Companies Law for better management

10/06/2019

The Government promulgated the Companies Amendment (Ordinance), 2018 (hereinafter referred to as the “Ordinance”) on November 2, 2018 after receiving the assent from the President of India. The said ordinance has been brought into effect with the twin objectives of promotion of ease of doing business within the country along with better corporate compliance. Some of the aspects aimed at being covered under the said ordinance are;

  • Reduction of burden: Shifting of jurisdiction of 16 types of corporate offences from the special courts to in-house adjudication, which is expected to reduce the case load of Special Courts by over 60%, thereby enabling them to concentrate on serious corporate offences.
  • Easing penal provisions: The penalty for small companies and one-person companies has been reduced to half of that applicable to normal companies.
  • E-adjudication: Instituting a transparent and technology driven in-house adjudication mechanism on an online platform and publication of the orders on the website.
  • Strong regulation: Strengthening in-house adjudication mechanism by necessitating a concomitant order for making good the default at the time of levying penalty, to achieve the ultimate aim of achieving better compliance.
  • Unclogging of NCLT: To administer the legal affairs in respect to a company, the Government has provided the National Company Law Tribunal (also referred to as the “NCLT”) established for resolution of civil as well as criminal disputes thereto. Minimizing the burden on NCLT shall aid its focus on serious corporate offenses. Some of the measures taken to de-clog NCLT are:
  1. enlarging the pecuniary jurisdiction of Regional Director by enhancing the limit up to INR 25,00,000 as against earlier limit of INR 5,00,000 under Section 441 of the Act;
  2. vesting in the Central Government the power to approve the alteration in the financial year of a company under section 2(41); and
  3. vesting the Central Government, the power to approve cases of conversion of public companies into private companies.
  • Curbing Shell companies: Shell companies are the non-trading entities incorporated under the multiple layers of subsidiary companies which be used as device to effectuate illegal transactions such as tax evasion, money laundering etc. Declaration of commencement of business provision has been re-introduced to better tackle the menace of shell companies.
  • Better Corporate Management: Recommendations related to corporate compliance and corporate governance include greater disclosures with respect to public deposits; greater accountability to filing documents related to creation, modification and satisfaction of charges; non-maintenance of registered office to trigger de-registration process; and holding of directorships, beyond permissible limits to trigger disqualification of such directors.

India: Determining Customer’s Liability in Unauthorized Electronic Payment Transactions

07/06/2019

The Reserve Bank of India vide notification dated January 04, 2019, reformed the area of unauthorized electronic transactions in prepaid payment instruments (hereinafter referred to as ‘PPIs’) by defining customer liability and bringing all the customers to the same level with regard to electronic transactions made by them via any non-bank. PPIs are the methods such as internet account, wallets, mobile wallets, smart cards, etc., wherein goods and services can be purchased against the value pre-stored in such instruments. PPI mechanism was explained in detail in our earlier article.

Transactions– The notification differentiates between two types of transactions covered under the scope of the notification. Firstly, remote online transaction which do not require physical PPIs to be presented at the point of transactions and secondly proximity payment transactions which require the physical PPIs such as cards or mobile phones to be present at the point of transactions.

Customer’s Liability

The liability of the customers is defined three ways based on contributory fraud, negligence or other deficiencies. These are –

  • If there is a contributory fraud, negligence or other deficiency on the part of the PPI issuer, in this case no liability shall lie on the customer. The customer shall have no liability in this case.
  • If there is loss due to the negligence of the customer such as sharing payment credentials, the customer in this case shall bear the entire loss until the unauthorized transaction is reported to the PPI issuer. Any further loss shall be borne by the PPI issuer.
  • Lastly, in case the fault does not lie on the issuer or the customer and the customer reports within three days, no liability shall be borne by the customer. If the customer reports after three days but before seven days, the customer will be liable towards the transaction amount however not more than ten thousand rupees. Beyond seven days it will be in accordance with the issuer’s policy.

Read Full Story here.

RERA does not bar Homebuyers complaint under Consumer Protection act against builder

01/06/2019

In a judgement dated April 17, 2019 “Ajay Nagpal Vs. Today Homes & Infrastructure Pvt Ltd. the National Consumer Disputes Redressal Commission (hereinafter referred to as “NCDRC”) has held that RERA Act does not bar filing of a complaint under the Consumer Protection Act 1986 against a builder/developer.

The bench headed by Justice R K Agrawal was dealing with a batch of complaints filed by homebuyers for compensation from “Today Homes & Infrastructure Pvt Ltd” for not delivering possession of flats as stipulated in the builder-buyer agreement.

The inference was drawn from the judgement passed by the Hon’ble Supreme Court of India in “Aftab Singh v. Emaar MGF Land Limited & Anr in Consumer Case No. 701 of 2015” on December 10, 2018, wherein the Court reiterated the well-established law that valid arbitration agreements do not bar the jurisdiction of National Consumer Disputes Redressal Commission (“NCDRC”) and other consumer forums.

In “Aftab Singh v. Emaar MGF Land Limited & Anr in Consumer Case No. 701 of 2015” passed by NCDRC in December 2017., the dispute was between a group of home owners (“Buyers”) and Emaar MGF Land Private Limited (“Builder”), who failed to complete the construction and deliver the villas within the timeline stipulated terms and conditions in the builder buyer agreement between the parties. The Builder filed an application under Section 8 of the Arbitration and Conciliation Act, 1996 (provides that a judicial authority shall, on the basis of the arbitration agreement between the parties, direct the parties to go for arbitration) to refer the case for arbitration as the agreement contained a valid arbitration clause. The Buyers, on the other hand, contended that the jurisdiction of consumer forums available to them through the Consumer Protection Act, 1986.

It was observed in the case that the Arbitration agreement does not bar a consumer complaint as held by the National Consumer Disputes Redressal Commission (NCDRC) while referring to the Supreme Court decision in “Emaar MGF Land Ltd. vs. Aftab Singh, Review Petition (C) No’s. 2629-2630 of 2018 in Civil Appeal No’s .23512-23513 of 2017”, the Commission held that the fact that Arbitration can be proceeded under the Arbitration and Conciliation Act, 1996 is not a ground to restrain the Consumer Fora from proceeding with the Complaints.

Read Full Story here.

India: SC restricts plying of old vehicles

25/06/2019

The Apex Court has prohibited the plying of 15-year old petrol and 10-year old diesel vehicles in the National Capital Region. It was also directed that the list of such vehicles be published on the web site of Central Pollution Control Board and transport department. The said order has been passed taking into consideration the “very critical” and “horrible” levels of pollution in the region.

The Court permitted the Environment Pollution Control Authority to take pre-emptive steps under the Graded Response Action Plan without strict adherence to pollution stages delineated in the plan. Taking into account the number of vehicles and the travel duration made therefrom reveals the cause of the alarmingly high chocking levels of pollution in the region. Attributable to the unfit nature of the old vehicles, they tend to consume more fuel and contribute more towards the destruction of the surrounding ecosystem.

With the objective of dealing with the pollution caused by the release of harmful components by vehicles, the Government also introduced Bharat Standard- VI seeking reduction of improper emissions thus working towards protection of the surrounding ecosystem. In furtherance to the same, the Supreme Court imposed a bar on the automobile companies from manufacturing and selling vehicles that are not compliant with the Bharat Standard- VI emission standards after March 31, 2020.

Read Full Story here.

Amendment to Companies Act for CSR

02/08/2019

The Companies (Corporate Social Responsibility) Rules, 2014 were enforced on February 27, 2014 in order to ensure proper monitoring and regulation of the corporate social responsibility activities undertaken by the companies.

As a further amendment to the provisions of the Act, the Union cabinet on July 17, 2019 cleared the Companies (Amendment) Bill 2019 whereby the following changes may be introduced:

  • Companies would be mandated to deposit funds for mandatory corporate social responsibility expenditure for a given fiscal in the escrow account for up to 3 years, if the amount is part of an ongoing project that requires funding in stages; AND
  • Any due expenditure for a fiscal that is not spent within 3 years would to be transferred to the National CSR Fund

This will enable the Government to ensure better utilization of the unused corporate social responsibility fund for public welfare.

Read Full Story here.

Supreme Court issues notices against illegal sand mining

02/08/2019

The Supreme Court of India vide its order dated July 24, 2019 issued notice to the Centre, the Central Bureau of Investigation (CBI) as well as the States of Tamil Nadu, Punjab, Madhya Pradesh, Maharashtra and Andhra Pradesh to respond to the petition claiming alleging illegal mining within their territories.

Brief facts

A writ petition was filed against the rampant mining incidents for major and minor minerals being reported across the river basins in the States listed above. The petition emphasized the importance of sand as an important mineral of the society which is protects the environment in the below stated manner:

  1.  Acting as a buffer against strong tidal waves and storm;
  2.  Serving as a habitat for crustacean species and marine organisms;
  3.  Used for making concrete, filling roads, building sites, brickmaking, making glass, sandpapers, reclamations;
  4. Encouraging tourism industry by offering beach attractions.

Legal monitoring

With a view to regulate the mining activities being carried on in the country, following legislations are in force in order to equip the Central as well as the State Governments to ensure conservation of environment and the minerals:

  • Mines and Minerals (Development and Regulation) Act, 1957
  • Mines Act, 1952;
  • Mineral Concession Rules, 1960;
  • Mineral Concessions and Development Rules, 1998.
  • Mines Rescue Rules, 1985;
  • Environment (Protection) Act, 1986

Issue in concern

Allegations were made in the petition stating lack of the existence of a mining plan approved from a competent authority which is a prerequisite for obtaining a mining lease or environmental clearance and in contravention to the Sustainable Guidelines, 2016. The petition recommended for:

  1. Non issuance of Environment Clearance to any sand mining project without a proper Environmental Impact Assessment, Environmental Management Plan and public consultation;
  2.  Approved mining plan to be a mandatory prerequisite for undertaking mining activities;
  3. Union of India not to grant any Environmental Clearance for sand mining project without taking into account the cumulative impact of the sand mining in the entire area/region;
  4. Termination of the leases of the entities engaged in illegal mining;
  5. CBI to register and investigate sand mining scams that have been highlighted in the present petition

The Supreme Court vide issuance of its order dated July 24, 2019 seeks responses from the Centre, the Central Bureau of Investigation and the 5 States mentioned above in order to ascertain the allegations of environmental degradation made attributable to them.

Read Full Story here.

Arbitration and Conciliation Amendment Bill, 2019

07/09/2019

The amendments to the Arbitration and Conciliation Act, 1996 were passed by both the Houses of the Parliament and became a law on August 09, 2019 after the President of India gave its assent to the amendments. The amendments shall be known as Arbitration and Conciliation (Act), 2019 and will be treated as additional to the Arbitration and Conciliation Act (Amendments), 2018.
Some of the key highlights of the Arbitration and Conciliation (Amendment) Act, 2019 (‘Amendment Act’) are set out below:


1. Arbitration Council of India: Under the amendment establish an independent body called the Arbitration Council of India (ACI) for the promotion of arbitration, mediation, conciliation and other alternative dispute redressal mechanisms.

2. Appointment of arbitrators: Under the new amendments, the Hon’ble Supreme Court and Hon’ble High Courts of various states may now designate arbitral institutions, which parties can approach for the appointment of arbitrators. For international commercial arbitration, appointments will be made by the institution designated by the Supreme Court. For domestic arbitration, appointments will be made by the institution designated by the concerned High Court. In case there are no arbitral institutions available, the Hon’ble Chief Justice of the concerned High Court may maintain a panel of arbitrators to perform the functions of the arbitral institutions. An application for appointment of an arbitrator is required to be disposed of within 30 days.

3.Relaxation of time limits: Under the old Arbitration Act, 1996, the arbitral tribunals were required to make their award within a period of 12 months (extendable to 18 months with party consent) for completion of all arbitration proceedings. The new amendment, 2019 seeks to remove this time restriction for international commercial arbitrations. It adds that tribunals must endeavor to dispose of international arbitration matters within 12 months.

4.Completion of written submissions: Under the old Arbitration Act, 1996 no time limit to file written submissions before an arbitral tribunal. The amendment now requires that the written claim and the defense to the claim in an arbitration proceeding, should be completed within six months of the appointment of the arbitrators.

5.Confidentiality of proceedings: The Bill provides that all details of arbitration proceedings will be kept confidential except for the details of the arbitral award in certain circumstances. Disclosure of the arbitral award will only be made where it is necessary for implementing or enforcing the award.

6.Amendment to Section 34: Section 34 of the Act replaces the words “furnishes proof that”, with “establishes on the basis of the record of the arbitral tribunal that”.

7.Amendment to Section 45: Section 45 of the Act has been amended to substitute the words “unless it finds”, with the words “unless it prima facie finds”.

8.Applicability of Arbitration and Conciliation Act, 2015: The Amendment, 2019 also clarifies that after the insertion and adoption of Section 26 of the Arbitration and Conciliation Act, 2015, the Arbitration Act, 2015 shall only apply to arbitral proceedings which started on or after October 23, 2015.

Impact of Recent Changes in Income Tax Laws (Effective Since September 1, 2019)

05/09/2019

The General Elections delayed the presentation of the Union Budget for Financial Year 2019-20. The Finance Minister Ms. Nirmala Sitharaman presented her first Budget in July, 2019 and the changes arising in furtherance of the Budget have come into effect since September 1, 2019. This article discusses some of the key changes in the Income Tax laws.

1. Tax Deducted at Source (‘TDS’) on additional payments towards purchase of immovable property

For the purpose of computation and deduction of TDS while making the payment towards immovable property, an assessee is now required to include charges towards:
• club membership fees,
• maintenance fees,
• parking fees,
• electricity and water facility fees, and
• charges towards other amenities and services
Earlier the payments made towards the above-mentioned amenities and services were not included in the total consideration for the purpose of computation and deduction of TDS.

2.Banks and financial institutions can be asked to report even small transactions

The Central Government can now direct the banks and financial institutions to report any kind of transaction which may be useful for verifications of returns filed by an assessee.
Earlier transactions exceeding INR 50,000 were required to be reported to the government.

3.TDS on cash withdrawal from bank accounts

As an another attempt in the direction of promoting a cashless economy, total cash withdrawals exceeding INR 1 crore during a financial year from bank accounts, shall entail a TDS obligation of 2%.

4.TDS on payments made by individuals and HUFs to contractors and professionals

In case the total payments made by individuals/ HUFs to contractors and professionals in a financial year are in excess of INR 50 lakhs, the same will now be subject to TDS at the rate of 5%.
Earlier, no such requirement of TDS existed when such payments were made for personal use or if the concerned individual/ HUF was not subject to audit for its business/ profession.

5.TDS on life insurance

In case the life insurance maturity proceeds obtained by an assessee are subject to tax, the same shall now be subject to TDS at the rate of 5% on the net income portion.
Net income portion = (Total amount received) – (Total amount of insurance premium paid)

6.PAN to become inoperative if not linked with Aadhaar

The non-linking of PAN with Aadhaar by the deadline specified by the Government will not leave the PAN to be invalid but will however, render it inoperative. This will help in protecting the validity of transactions previously done by the assessee citing PAN.

Conclusion
The above mentioned changes in the Income Tax laws of India amongst other changes are some of the significant changes made keeping into consideration and in the interest of the evolving Indian economy.

CCI Introduces “Green Channel” Clearance for Mergers & Acquisitions(M&A)

10/10/2019

The Competition Commission of India (‘CCI’) is the concerned organization patronizing and fostering the importance of competition in the markets, safeguarding the interests of consumers and ensures that freedom of trade is carried on by the participants.

One of the key functions of the CCI is to control the mergers and acquisitions, above a specified financial threshold (combinations). Ever since the CCI was setup, it has cleared 666 combinations.

Owing to the relentless efforts and endeavours by the CCI for expediting the M&A filing approvals, CCI has initiated a new mechanism which entails automatic scheme of approvals for combinations under the ‘Green Channel’. In accordance with this mechanism, the combination is deemed to have been approved upon filing of the notice in the prescribed format. This initiative would result in significant reduction of time and cost of transactions. This initiative was announced by way of a press release no. 8/2019-20 dated 19 August 2019 issued by the Competition Commission of India.

In addition to the above, the CCI has also revised its pre-filing consultation guidance note for the purpose of expanding its ambit to include consultation for assisting parties to determine whether their combination is eligible for Green Channel.

The parties concerned who intend to file the combination notice may meet the concerned team at the day and time specified for this purpose.

The objective of the Green Channel is to maintain and promote a prompt, apparent and responsible review of combination matters, create a balance between enabling and implementation capacities, create a culture of acquiescence and support economic growth.

CCI Receives the First Green Channel Combination

In a recent development, the CCI on has now received the first green channel combination. The same was announced by CCI vide its press release dated October 7th, 2019. The combination herein related to the acquisition of the Essel Mutual Fund (Essel MF), by an entity forming a part of the Sachin Bansal Group.

India: Homebuyers get financial creditors status

30/10/2019

The Supreme Court recently in the case of Pioneer Urban Land and Infrastructure Limited vs. Union of India upheld an amendment made to the Insolvency and Bankruptcy Code, 2016 (hereinafter referred to as ‘IBC’). This provides the homebuyers with the right to take legal action against the developers.

The said amendment led to the IBC treating the homebuyers as financial creditors. While hearing a batch of 140 petitions filed by several real estate agencies, the Supreme Court said that the Real Estate (Regulation and Development) Act, 2016 (hereinafter referred to as ‘RERA’) shall be read harmoniously with the Consumer Protection Act and IBC and, in case of any dispute or ambiguity, the provisions of IBC shall prevail. Therefore, the home buyers can now seek relief under three different laws, namely – the Consumer Protection Act, IBC and RERA.

Read Full Story here.

Advertising Game on Social Media? Do’s and Don’ts

07/12/2019

The gaming sector has been gaining rapid popularity in this cyber age. Video games and games on hand held devices are emerging as a source of playing games like never before. This has resulted in expansion of the horizons of gaming industry, whereby start-ups and budding entrepreneurs are developing new games to attract gamers around the world.

Role of advertisements

There is hardly any industry which has been left untouched by the impact of Advertisements. Advertisement is considered as one of the most trusted tool or form of communication for informing consumers and public in general about different types of products and services being offered. In the modern era, internet and social media platforms have emerged as a new tool for advertisement of one’s products or services in order to maximize the revenue generation potential. Similarly, the gaming sector has also been using various social media platforms as a medium of promotion.

Requirements of social media platforms for advertising

The social media caters users from varied backgrounds which use their services to showcase the quality of the products or services for sale. Before such advertisements are broadcasted it is essential that the same are acceptable as per the provisions of the applicable law.

Law in India

The advertisements in India are regulated by Government as well as authorities such as Advertising Standards Council of India (hereinafter referred to as “ASCI”) thereby preventing any prohibited content from being displayed in any advertisement.

  • The Code for Self-Regulation formulated by ASCI requires the advertisements to adhere to fair and just legal practices and ensure compliance to norms, including but not limited to, being based on honest representations, not being be offensive to public, not encourage any harmful/ hazardous substances, must encourage fair competition, etc.
  • Specific to the gaming industry, online skill games with stakes are often confused with gambling activities operation of which is not legal in India. The Information Technology (Intermediaries Guidelines) Rules, 2011 read with Section 79(2) the Information Technology Act, 2000 requires ‘intermediaries’ like internet service providers, network service providers, search engines, telecom operators etc. not to host or transmit any content which inter alia relates to or encourages gambling (Rules 3(2)(b), Rule 3(4)). Therefore, it is of extreme importance to clarify that the online games being offered for real time money do not fall within the purview of gambling.
  • Gaming falls within the exclusive jurisdiction of the respective State law. Many States in India do not allow the offering of game of skills with stakes such as the States of Assam, Odisha, Telangana, etc. Therefore, it is essential that neither the skill games for money (including the online games) are offered in the States prohibiting them nor are the advertisements indicating their availability to the users resident thereof, be made.

It cannot be denied that owing to wide accessibility and internet penetration, social media platforms serve as a better and more effective way of engaging users and creating a larger customer base for the gaming business. As playing games on the online mode are preferred these days, opting for advertisement strategy on social media platform can be beneficial to business houses operating in the gaming industry, provided appropriate and permissible advertisements are broadcasted


2019
IP Law
Round Up!!!

Geographical Indications

India: Tamil Nadu earns two more GI tags- Dindigul Locks and Kandangi sarees

25/09/2019

The Geographical Indications Registry (herein after referred to as ‘GIR’) in Chennai has recently granted Geographical Indication (hereinafter referred to as ‘GI’) tag to Tamil Nadu’s Dindigul locks and Kandangi Sarees, this takes the total number of such indigenous products in Tamil Nadu that have been granted GI tag to 31.

The GIR for Dindigul Lock has been granted to Hardware and Steel Furniture Workers Industrial Co-operative Society Limited and the Amrar Rajiv Gandhi Handloom Weavers Cooperative Production and Sales Society Limited, that applied for the GI tag, with exclusive rights over the respective products. Read Full Story here

India: Irish Whiskey gets GI Tag

10/09/2019

The Irish Whiskey Association (hereinafter referred to as ‘IWA’) was granted a Geographical Indication (hereinafter referred to as ‘GI’) tag for Irish Whiskey sold in India. The protection signifies that only spirits that are produced in Ireland will now be able to use the label “Irish whiskey”.

According to the IWA, India sold 2.3 billion bottles last to become the largest producer of whiskey in the world with majority of it being produced in the last year. As per the figures released by International Wine and Spirit Record (hereinafter referred to as IWSR),[1] India is home to 4 of the world’s 10 fastest growing spirits brands in the year 2018.[2] The annual report published by IWA in May 2019 disclosed that the sales of Irish whiskey has increased by two times to 34,000 cases in 2018.

Irish whiskey has already won a GI tag in European Union member countries in April this year. Furthermore, the IWA has won GI protection in Australia earlier this year and last month they also secured a GI tag in South Africa. The IWA is planning to further enhance growth internationally, especially in Latin America and the US, high growth regions like Delhi are also part of the plan.

India: Protection of Geographical Indications

GI registration benefits in India

To know more about GI click here.

India: Draft amendment to the Geographical Indications of Goods (Registration & Protection) Rules, 2002

27/09/2019

The Ministry of Commerce and Industry on September 16, 2019 has released the Draft amendment to the Geographical Indications of Goods (Registration & Protection) Rules, 2002 (hereinafter referred to as the ‘draft amendment rules’). The amendment proposes to further strengthen the Intellectual Property Ecosystem by reducing the fees to be paid for the GI registration process and easing the procedure for registration of an authorized user of the registered geographical indication.

The draft amendment rules were released for the information of the stakeholders and is available for suggestions and comments by stakeholders for a period of thirty days from the date on which the Official Gazette, containing the notification, were made available to the public.

Read Full Story here.

Copyright

Artistic Work Under Copyright Law: Roderick John Andrew Mackenzie v. Himalayan Heli Services Pvt. Ltd

22/03/2019

In the present case, the Delhi High Court noted that Roderick John Andrew Mackenzie (hereinafter referred to as “the Plaintiff”) had merely contributed to an aspect of the artistic work whereas the copyright in a work would exist only for the composite mark. Accordingly, the Court observed that none of the parties had copyright in the artistic work.

Facts

  • The suit was filed by the Plaintiff against Himalayan Heli Services Pvt. Ltd (hereinafter referred to as “the Defendant”) for the purpose seeking permanent injunction restraining the Defendant their employees, servants, agents etc. from using or otherwise copying, selling, offering for sale, counterfeit/unlicensed versions of the Plaintiff’s copyright in his artistic work ‘HIMLAYAN HELI SERVICES’ in any shape, form or manner which amounted to infringement of the Plaintiff’s copyright.
  • Plaintiff was a mountaineer who had far-reaching experience of expeditions in the Himalayas and was involved in the business of sking, trekking and rafting.
  • Defendant was a private limited company incorporated in July, 1998 as a 100% subsidiary of the M/s World Expeditions (India) Pvt. Ltd., who was engaged in the business of conducting helicopter operations.
  • It was alleged by Plaintiff that it noticed on the internet and elsewhere that the Defendant was infringing Plaintiff’s copyright and had titled it as “HIMLAYAN HELI SERVICES” and was using the artistic work of the Plaintiff consisting of pictorial representations of the said artistic work with identical shades, lay-out, features, get-up etc. on its websites, letter heads, stationery, business cards etc.
  • It is claimed that the Defendant was infringing the artistic work of the Plaintiff by means of posting the insignia in the various exhibitions, galleries, newspaper etc both in Delhi and Trans border.

Court’s Analysis

After hearing the respective parties to the suit, the Court framed various issues and held as under:-

  • Whether the Plaintiff has any right, title or interest or copyright in the artistic work ‘HIMALAYAN HELI SERVICES’? and Whether the Defendant is the owner of the copyright in the artistic work ‘HIMALAYAN HELI SERVICES’?”

The Court relied on the case of R.G. Anand vs. M/s Delux Films & Ors. and after perusal of the contentions raised by either parties held that neither the Plaintiff nor the Defendant could claim any copyright in the artistic work for which registration had been granted to the Plaintiff vide registration No.A81931/2008 i.e. triangular mountain with the clouds and a helicopter even though the same was being used as a logo for the joint venture. It was observed by the Court that Plaintiff had placed no documents on record to show that prior to 1998 the Plaintiff was using the mark “HIMLAYAN HELI SERVICES” whereas the Defendant had placed on record documents to show that before Plaintiff joined the joint venture i.e. Himalayan Heli Services Private Limited, his organization was called as M/s. Himachal Helicopter Skiing bearing the logo being a triangular mountain with a ski trail surrounded by clouds.

With regard to the logo Himalayan Heli Services depicted with a Dojre, the Court observed that neither in the plaint nor in the evidence the Plaintiff claimed that he was the creator or author of the said artistic work and mere grant of copyright in favour of the Plaintiff would not inure a right to the Plaintiff.

  • Whether the Plaintiff has suppressed material facts and the effect thereof?”

The Court stated that in the suit in hand the Plaintiff had claimed for injunction restraining the Defendant from using its copyright in the artistic work but it was required by the Plaintiff to plead that that the Plaintiff had been working with the Defendant from 1989 to 2006 till the time disputes arose between the parties. As a joint venture both the Plaintiff and the Defendant were using logos which falsified the claim of the Plaintiff as an exclusive user. Further, the claim of the Plaintiff that he came to know about Defendant’s user before filing of the suit was also falsified by the documents placed on record by the Defendant. The Court had placed on the cases Badami v. Bhali reported in (2012) 11 SCC 574, Meghmala v. G. Narasimha Reddy reported in (2010) 8 SCC 383. The said issue was decided in favour of the Defendant as it was held that the Plaintiff concealed material facts in the plaint.

  • “Whether the Plaintiff has acquiesced in the Defendant’s use of the said artistic work?”

The Court observed that the claim of the Plaintiff came to know about the infringement in January 2009 was falsified as the certificate of registration, in respect of the logo triangular with a helicopter in between along with the clouds and Himalayan Heli Services with the ‘Dojre’, exhibited by the Plaintiff was of the year 2008 when the Plaintiff parted from the Defendant’s Company. While, the Defendant had placed on record documents relating back to year 1993,1995 and 1996, which showed that the Defendant had been using the said mark since then. Defendant had also placed on record documents of the Himachal Heli Skiing wherein the triangle used by the Plaintiff was with a ski trail and not a helicopter.

The reliance was placed by the Court on the case of Power Control Appliances v. Sumeet Machines Pvt. Ltd reported in (1994)2 SCC 448, Khoday Distilleries Ltd. v. Scotch Whisky Assn reported in (2008) 10 SCC 723. The Court held that the Plaintiff was not entitled to the relief of injunction due to the acquiescence by the Plaintiff when he ignored the use of Trademark by the Defendant. It was observed that the Plaintiff used the artistic work along with the Defendant, that is, triangle depicting the mountain with the clouds.

  • Whether the Plaintiff is entitled to permanent injunction to restrain the Defendant from using the artistic work ‘HIMALAYAN HELI SERVICES’?”

The Court observed the contention raised by the Defendant that both the logos were designed by the Defendant and Plaintiff had never used the same and it had been using the logo of a mountain with triangle with the ski trail and the clouds. It was held that despite there being registration in favour of the Plaintiff, the Defendant had acquired goodwill in the same. It was decided by the Court that the Plaintiff was not entitled to seek an injunction. The Court relied on Jai Narain Parasrampuria v. Pushpa Devi Saraf reported in (2006) 7 SCC 756, Citadel Fine Pharmaceuticals vs. Ramaniyam Real Estate (P) Ltd reported in 2011 (9) SCC 147.

In view of the above explanations rendered by the Court, it was of the view that the Plaintiff was not entitled to relief of injunction.

Read Full Story here.

India: Delhi High Court on the Copyright on Photographs uploaded on Facebook

30/05/2019

In the case of Fairmount Hotels Pvt. Ltd. vs. Bhupender Singh , the Hon’ble Delhi High Court has recognized copyright on photos uploaded on Facebook. The Hon’ble Court while adjudicating the dispute over copyright on the photographs of the Plaintiff’s hotel, decided in favor of the Plaintiff as the Defendant did not raise any objection against the contended rights of the Plaintiff over the photographs.

Facts

The conflict arose in 2015 when the Fairmount Hotels Pvt. Ltd. (hereinafter also referred as “Plaintiff”) came across a Facebook page of Mr. Bhupender Singh (hereinafter also referred as “Defendant”) which displayed the pictures of the Plaintiff. Thereafter a suit for infringement of copyright of the Plaintiff on the photographs used by the Defendant was filed before the Hon’ble Delhi High Court. The Plaintiff claimed the act of the Defendant as fraud and use of unfair means to attract the innocent people in disguise of the Plaintiff. The Defendant was an ex-employee of the Plaintiff and after serving the Plaintiff for about 4 years, opened a hotel of his own in Manali by the name of Mountain Inn, and in order to promote his hotel posted the photographs of the Plaintiffs hotel on his Facebook page.

Court’s Observation

The Court observed that the Plaintiff was able to establish prima facie case for ex-parte ad interim injunction and further observed that the Plaintiff’s rights and interest would be irreparably prejudiced, if such interim order is not passed also considering that the balance of convenience also falls in favor of the Plaintiff. Therefore, the Defendant was restrained from using the Plaintiff’s photographs on his Facebook page at the interim stage.

Final Order dated April 05, 2018 by Hon’ble Justice Manmohan

On the suit for permanent injunction for restraining the Defendant from using the photograph of the Plaintiff’s hotel on his Facebook page claiming copyright on the said photographs, the Hon’ble court accepted the submissions/ undertaking by the Defendant and on a request of cost by Plaintiff and after considering the financial condition of the Defendant, directed the defendant to pay a cost of INR 50,000 to Plaintiff.

Analysis


In the original suit, the Plaintiff argued exclusive copyright over their website and contents thereto, however, the Court did not comment on the copyright-ability of a website.

The Copyright Office, as per the information available on the website and vide orders passed by Learned Registrar of Copyright, is of the opinion that a website as a whole is not subject to copyright protection, however, some component of the website which fall within the ambit of literary, artistic, sound recording and cinematograph films under the Copyright Act, 1957 are protectable under such independent categories vide separate application filed in this regards. It is further noted that the website contains various non-copyrightable content particular to websites may include but are not limited to ideas or future plans of websites, functional elements of websites, unclaimable material, layout and format or ‘look and feel’ of a website or its webpage; or other common, unoriginal material such as names, icons or familiar symbols.

The debated question in such a situation is “Should “look and feel” of a website be covered as copyright-able subject matter?”

The “Look and Feel” of a website is the creativity of the website holder that ensures unique components of the website so as to be attractive and user friendly. The look and feel of a website is not a fixed feature but variable as per the requirement of the website holder. This variable feature can be modified and incorporated in the website in order to be associated completely with a specific proprietor/ brand or associated with particular website.

In Internet era, a website is essential to distribute information, to attract public attention and to act as a platform between the website holder and its customer/clients. In such a situation, the ‘look and feel’ of the website makes the first impression to the customer, and therefore, the efforts taken by the website holder to create unique ‘look and feel’ is ideally creativity and therefore copyright-able subject matter. It is important to note that with time the companies are making major investments on web portal for communication with the public, and this communication includes various trademark, product information, fonts and design of contents, effects and animation using the brand/ trademark etc.

With the launch of new products / services of a company, the website is the first platform updated for public access. This motivates the company to emphasize more on the overall features of the website which may attract more attention and publicity. Even major brands are using their trademark as background image for the website, using the color combination of the trademark (if any) and/or using a specific animation/ combination of color and font etc. With the focus of companies on attracting more public attention on their website, the ‘look and feel’ is ought to gain consideration to determine association with a brand. In such circumstances, it is a fair opinion to consider ‘look and feel’ of the website as copyright-able.

As software works are protected separately under the software category, similarly a provision for protecting the look and feel of the website can be considered under a separate category for the website. Considering the competition between the rival companies, the website is the most effective medium to promote the business and goodwill of a company. The Copyright Office has also considered the copyright-ability of an APP under software category subject to submission of source and object code as provided under Rule 70 (5) of the Copyright Rules 2013. It is important to note that the registration of an APP covers any screen displays generated by that program, provided that the computer program (code) generating the screen display is submitted by the applicant. Therefore, if registration of APP through it source code and object code, is eligible to protect the screen display which basically is the ‘look and feel’ of the APP, then even the programming and coding causing the ‘look and feel’ of the website must be considered as copyright-able subject matter.

Read Full Story here.

Does playing music in marriages and religious ceremonies amount to copyright infringement?

30/08/2019

The Copyright Law in India enumerates certain set of acts which constitutes fair dealing/ fair use of the copyrighted works, as mentioned under Section 52 of the Copyright Act 1957 (hereinafter “the Act”). Various situations mentioned under Section 52 of the Act, include use of work in educational institutions, residential buildings for its residents, in clubs and similar organizations for non-commercial audiences etc. However, one such circumstance which even though clearly mentioned but was open to confusion is sub-clause (za) which states:

(za) the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.

Explanation.— For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage;]

The explanation clearly mentions that marriage procession and other social festivities associated with marriage is included in the definition of religious ceremony under sub-clause (za). However, the obscurity over the claim persists with the incessant use of multiple copyrighted works in a ceremony without payment of any royalty for the use. In order to address this issue, various representations by the stakeholders seeking clarification on whether use of sound recordings in course of marriage and related functions, will require license from the respective copyright societies, was made to the Ministry of Commerce and Industry (Government of India) and Copyright Office.

In light of the above, a Public Notice, dated August 27, 2019 has been issued by Copyright Office, providing a clarification as under:

“In view of the provision contained in Section 52(1) (za) of the Act, read with the explanation thereto, it is evident that the utilization of any sound recording in the course of religious ceremony including a marriage procession and other social festivities associated with a marriage does not amount to infringement of copyrights and hence no license is required to be obtained for the said purpose.”

Hence, the Government has now clarified that use of sound recording for marriage and related functions, is a non-infringing activity under Section 52 of the Act and therefore, there is no requirement for obtaining license from Copyright Owner or the Copyright Society. The public notice brings a clarity and tries to remove any confusion that existed with reference to the said provision.

However, this clarification gives rise to another issue i.e., Whether the utilization of sound recording in course of any marriage or related functions, organized in a hotel or commercial premises, will require to obtain a license? In order to understand the intention behind this question, reference to Section 52(k) is made, which states:

(k) the causing of a recording to be heard in public by utilising it,—

(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;

Thus, in view of the aforesaid provision under clause (k), the recording to be heard in public must be done in an enclosed room or hall for common use of resident, or as part of activities of club or similar organizations, provided that it is not a hotel or commercial establishment or organization established/ conducted for profit. Therefore, the above provision excludes hotels and other commercial establishments like banquet halls wherein ceremonies like marriage and other gatherings are run for profit, from the ambit of fair act of recording being heard in public. Hence, in light of the provision under the present public notice clarifying that the no license is required for use of sound recording for marriage and related functions, still does not address the contentious issue entirely. Even though the public notice clearly mentions that in marriage and related functions, the use of sound recording is protected under Section 52, then whether such protection will also extend to such use for the marriage and related function being organized in a hotel or any related commercial establishment is still uncertain.

An opinion in this regard may be concluded that where there is an express exclusion of hotels and commercial establishments from the use of recording to be heard in public, then such restriction may also extend to marriage and related ceremonies. Since the public notice does not render a clarification about the premises where such recordings will be accepted as fair act, playing of sound recordings in marriage and related functions in hotels and commercial establishments may be a cause of concern for the copyright holders.

India: Enforceability of Foreign Country Registered / Unregistered Copyright

31/05/2019

The term ‘foreign work’ is not defined under the Copyright Act, 1957, (hereinafter referred to as the ‘Act’). However, to determine “foreign work”, it can be reasoned that any work which does not qualify as “Indian Work” under Section 2 (l) of the Act is classified as “foreign work”. In order to protect Indian works in foreign countries, India has become a member of the following international conventions on copyright and neighboring (related) rights:

  1. Berne Convention for the Protection of Literary and Artistic works
  2. Universal Copyright Convention
  3. Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms
  4. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties
  5. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

The aim of all the copyright conventions / agreements / treaty is focused on the principle that the original creativity or works of the mind, which is the subject matter of protection under copyright law, should be disseminated and distributed regardless of their national borders.

Read Full Story here.

Trademark

India: Supreme Court of India says that ‘monopoly’ cannot be enjoyed over entire class of goods

09/04/2019

The Hon’ble Supreme Court of India in the case of M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd held ‘that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods particularly when he is not using the said trade mark in respect of certain goods falling under the same class’.

Brief Background

  • Karnataka Co-Operative Milk Producers Federation Ltd (hereinafter referred to as ‘the Respondents’) stated that they adopted the mark ‘NANDINI’ in 1985 and since then has been producing and selling milk and milk products. The Trademark registration of the mark ‘NANDINI’ belongs to it in Class 29 and Class 30.
  • Nandhini Deluxe (hereinafter referred to as ‘the Appellants’) was running restaurants under the mark ‘NANDHINI’ since 1989. It applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants.
  • The registration of the same was opposed by the Respondent. However, the objections of the Respondent were dismissed by the Deputy Registrar of the Trade Mark who allowed the registration of the ‘NANDHINI’ mark in favor of the Appellant.
  • The Respondent’s grounds for opposing the registration of the ‘NANDHINI’ mark were that:
    • It was deceptively similar to the mark of the Respondent and was likely to deceive the public or cause confusion.
    • The Respondent argued that it has maintained a long and sustained use of the mark ‘NANDINI’ because of which it has acquired a distinctive character and was well-known to the public which associated ‘NANDINI’ with the Respondent.
    • It further contended that it had exclusive right to use the said mark and any imitation thereof by the Appellant would lead the public to believe that the foodstuffs sold by the Appellant were in fact that of the Respondent.
  • After rejection by the Deputy Registrar, the Respondent filed an appeal with the Intellectual Property Appellate Board, Chennai (hereinafter referred to as ‘the IPAB’) praying that the registration given accorded to the Appellant should be cancelled.
  • Vide order dated October 4, 2011, the appeal of the Respondent was allowed by the IPAB. Further, vide order dated December 2, 2014 (hereinafter referred to as ‘the impugned order), the writ petitions filed by the Appellant in the High Court of Karnataka (hereinafter referred to as ‘the High Court’), against the order of the IPAB, were dismissed by the High Court.
  • The reasons for rejecting the writ petitions of the Appellant in the impugned order of the High Court were:
    • The mark NANDINI as held by the Respondent has acquired a distinctive character and has become well-known;
    • The use of another mark is different only in one alphabet but with no difference in spelling or pronunciation in the local language and would very likely to cause confusion in the minds of public if allowed to be registered for the commodities falling in the same class;
    • Argument of the Appellant herein that it was running the business of restaurant since 1989 and the Respondent had started using the mark ‘NANDINI’ since the year 1985 only for milk and not for other products was rejected on the ground that there is no foundation in facts for the aforesaid argument and no material was produced to substantiate the same.

The issues that fell for consideration before the Supreme Court were:

  1. Whether the Appellant is entitled to seek registration of the mark ‘NANDHINI’ with respect of the goods in Class 29 and 30?
  2. Whether the mark ‘NANDHINI’ of the Appellant infringed the mark ‘NANDINI’ of the Respondent?

Court’s Judgement

  • The Court took note of the fact that though the Respondent was a prior user, the Appellant was also using its trade mark ‘NANDHINI’ for 12-13 years before it applied for registration of the said Trademarks.
  • It held that though the goods of the Appellant as well as Respondent fall under the same Classes 29 and 30, they were different from each other. It further took note of the fact that ‘NANDINI/NANDHINI was a generic word, as it represents the name of Goddess and a cow in Hindu Mythology, and not an invented or coined word of the Respondent.
  • Therefore, on question of deceptive similarity it was held that, ‘though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the Appellant has written NANDHINI as its mark is totally different from the style adopted by the Respondent for its mark ‘NANDINI’. Further, the Appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the Respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the Appellant’s mark with that of the Respondent when these marks are seen in totality’.
  • It also observed that ‘the reasoning of the High Court that the goods belonging to the Appellant and the Respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the Appellant to have the registration of the concerned trade mark in its favour, would be meaningless. That apart, there is no such principle of law’.
  • On the issue of monopoly and Trademarks, the Court held that: ‘The proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods, but the provisions of this Section do not cover the same class of goods’.
  • Therefore, the impugned order was set aside and restored the Registrar’s order allowing registration in favor of the Appellant.

Read Full Story here.

India: E-Commerce platforms are prohibited to sell Amway, Modicare and Oriflame products in violation of the Direct Selling Guidelines – Delhi High Court

16/07/2019

The war between Direct Selling Companies and E-Commerce entities started in the year 2018 when Amway India Enterprises Pvt. Ltd., filed a series of suits against E-commerce websites such as 1MG.com, Heathkart.com, Snapdeal.com, Flipkart.com, etc., for perpetual injunction, tortious interference with its legitimate business, and unfair competition. The premise of such legal action was the violation of its Direct Seller’s Contract (hereinafter referred to as the ‘DSC’), which allows sellers to market, distribute, sell products and provide services to the end consumers. The said contract is dictated by Amway’s Code of Ethics and Rule of Conduct. However, the direct sellers are not permitted to sell Amway’s products on any e-commerce platform or in retail or wholesale stores without prior authorization from Amway. A large number of Amway products bear unique codes which are used to track the source of the seller.

Vide Notification dated October 26, 2016, the Government of India, issued the Direct Selling Guidelines to regulate the business of Direct selling entities and protecting the interest of the consumers. Clause 7(6) of the said guidelines prescribes that no person shall sell the goods or services of a direct selling entity including on an E-Commerce marketplace without prior permission of the direct selling entity. In accordance with the said Guidelines, Amway had submitted its undertaking that it is 100% complaint with the said guidelines.

When Amway came across the unauthorized and illegal listing of its products on various E-Commerce platforms, it sent legal notices requesting them to delist their products. In fact, various Government agencies such as FSSAI, ASCI, also wrote to the major E-Commerce platforms to comply.

The whole issue eventually reached the Delhi High Court, wherein the Court passed the following directions:

  1. The Defendants who are impleaded as sellers are restrained by an interim order of injunction from advertising, displaying, offering for sale products of the Plaintiff, on all the ecommerce platform or on the mobile application.
  2. The E-Commerce entities are restrained from displaying, advertising, offering for sale, selling, facilitating repackaging of any of the Plaintiffs’ products on their websites and mobile applications, except of those sellers who produce written permission/consent of the Plaintiff for listing of their products on the set e-commerce platform.
  3. The sellers, if any, who produce consent given by the Plaintiffs, allowing sale of its products through ecommerce platforms, the ecommerce platforms shall, clearly, provide the name, address and contact details of the said sellers, including the telephone numbers, email address, etc., in a prominent manner, along with the product description.
  4. If the Plaintiffs find during the pendency of the suit that any of the sellers have displayed their products on the E-commerce platforms or mobile application without thier consent, then they shall give notice to the e-commerce platforms for taking down the listings of such sellers, which shall be duly taken down within a period of 36 hours by e-commerce platforms.

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India: 20-Year-Old Legal Battle between Amul and Anul finally concludes

30/05/2019

After a 20-year-old legal battle, Kaira District Cooperative Milk Producers Union Limited popularly known as Amul has successfully protected its trademark from Shri Shakti Dairy and Kuldeep Enterprises, who were held by the Commercial Court in Vadodara to be guilty of infringing Amul’s trademark by selling and marketing their products under names that were matching with Amul’s original tradename.

Brief Facts

  • In 1998, it was brought to the notice of Kaira District Cooperative Milk Producers Union Limited, known as Amul Dairy and the Gujarat Cooperative Milk Marketing Federation Limited (hereinafter referred to as ‘the Plaintiffs’) that a private dairy named Shri Shakti Dairy (hereinafter referred to as ‘the Defendant’) based in Naroda was selling milk pouches very similar in name and design to its trademarked brands ‘Amul Taaza’ and ‘Amul Shakti’. The copied pouches were being sold by Kuldeep Enterprises as Anul Taaza and Anul Shakti.
  • After they learned of it, the Plaintiffs sent a legal notice to the Defendant as well as Kuldeep Enterprises, who were marketing “Anul Shakti” and “Anul Taaza”.
  • The Defendant continued to sell their products with the similar brand names over the years.
  • The Petitioner then moved to the District Court in Nadiad against them.
  • Later, the case was transferred to Vadodara where a new Commercial Court had been set up.

Issue

  • Whether Defendant’s actions of selling and manufacturing their goods by the name of “Anul” under the names “Anul Shakti” and “Anul Taaza” was an infringement of the trademarks of Amul?

Petitioner’s Contentions

  • It was contended that the Defendant was engaged in the selling and manufacturing of items named as “Anul Taaza” and “Anul Shakti”, which were deceptively similar to Amul’s well-known brands “Amul Taaza” and “Amul Shakti”.
  • It was argued that the products of the Defendant were sold at village areas under the name “Anul” where the village folk could very easily get confused as it would be difficult for them to differentiate between the two.
  • It was also argued that the color scheme used by Anul on their dairy pouches was also similar to that of Amul’s.
  • It contended that the Defendant’s actions of selling their products under the deceptively similar name of Anul, using similar get up in the packing and using an identical color scheme highlighted the Defendant’s malafide intention of imitating the trademark and reputation of the Plaintiff.

Defendant’s Contentions

  • It was contended that there was no scope for confusion to be caused to the customers because the names used for its brand was phonetically different.
  • It was submitted that there were others as well who were imitating the labels of the Plaintiff Amul, and thus, Amul Dairy did not have any monopoly right on the said label and trademark.
  • It was argued that the case was misconceived because the Defendants have themselves coined and invented the term “Anul”.

Court’s Decision

  • It held that the brand names “Anul Taaza” and “Anul Shakti” rhymed with the names of the products of the Plaintiff. Therefore, the brand names were deceptively similar to Amul’s brand name and was likely to cause confusion among customers.
  • The Court took note of the fact that there were several documentary evidences of the registration of Amul and its milk brands that were produced. It was thus held to be clear that “Amul” is the registered trademark of Amul Dairy. Moreover, the Defendant failed to furnish any evidence to prove that “Anul” was coined and invented by it.

Thus, the Defendant, its marketing firm along with their agents, dealers and distributors were injuncted from manufacturing, processing, marketing and packing under the impugned labels. The Defendants were restrained from selling their dairy products under the name “Anul”, “Anul Shakti” and “Anul Taaza” or any other deceptively confusing trade name .

India: Delhi High Court says exact use of Trademark needed to constitute Trademark Infringement

30/05/2019

The Delhi High Court in the case of Mankind Pharma Ltd Vs. Chandra Mani Tiwari and Anr. held that ‘to constitute infringement under Section 29(5), it is required to have the same or identical trade name and merely having a similar or deceptively similar trademark to the registered trademark would not constitute infringement.’

Brief Facts

  • Mankind Pharma Ltd. (hereinafter referred to as ‘the Plaintiff’) was the registered proprietor of the mark ‘MANKIND’ in 42 different classes. It had been using it for three decades by adding prefix or suffix to the elements ‘MANKIND’ and/or ‘KIND’.
  • Around November 5, 2016, the Plaintiff, while going through the record of the Trade Marks Registry, found out that the trade name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’ (hereinafter referred to as ‘Defendant No. 2’) belonged to Chandra Mani Tiwari (hereinafter referred to as the ‘Defendant No. 1’), who was the director of Defendant No. 2.
  • The Defendant no. 2 was doing business under the trademarks such as ‘MERCYMOX’, ‘MERCYCOUGH’ and ‘MERCYCOPE.
  • Cease and Desist letters were sent to the Defendants. However, it refused to comply giving false and frivolous reason.
  • Therefore, the Plaintiff instituted a suit against the Defendants before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction to restrain the Defendants from infringing the Plaintiff’s trade mark/trade name ‘MANKIND’ and series of marks with the suffix/prefix ‘KIND’ and from passing off their business/goods as that of the Plaintiff, by adopting and using the trade name ‘MERCYKIND PHARMACEUTICAL PRIVATE LIMITED’ or in any other manner whatsoever thereby.

Issues

  • Whether the Defendant is guilty of infringing the Plaintiff’s trademark and passing off of the Plaintiff’s goods by using the word ‘KIND’ in his tradename of “MERCYKIND”?

Plaintiff’s Contentions

  • It was contended that the Defendants were carrying on their business by impersonating themselves to be under the umbrella of the Plaintiff.
  • It was contended that the trade name ‘MERCYKIND PHARMACEUTICAL PRIVATE LIMITED’ was deceptively similar to the Plaintiff’s corporate name/trade name ‘MANKIND PHARMA LIMITED’.
  • It argued that any trade name in the pharmaceutical company containing the element ‘KIND’ would amount to dilution of the Plaintiff’s well-known trademark and result in infringement and/or passing off the Plaintiff’s reputed trade name ‘MANKIND’.

Defendant’s Contentions

  • It contended that on doing a mere search of the online records of the Registrar of Trade Marks in Class 05 would reveal that there are over 120 trademarks registered or pending, other than the registrations or applications in the name of the Plaintiff, in the names of several other entities/individuals, each of whom have registered or have applied for registration of marks with the suffix ‘KIND’.
  • It argued that on seeing its corporate name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’, as a whole, had no deceptive similarity with the Plaintiff’s trademark ‘MANKIND’.
  • It further argued that mere presence of a publici juris term ‘KIND’ does not make the marks of the Plaintiff and the Defendant deceptively similar.
  • It submitted that, in the course of its business, it coined and adopted several unique, distinctive and eye catchy trademarks with prefix ‘MERCY’ to market its medicinal and pharmaceutical preparations.
  • It contended that the Plaintiff did not hold any registration for the word ‘KIND’ per se and its trade name ‘MERCYKIND’ did not constitute infringement within the meaning of Section 29(5) of the Trade Marks Act, 1999.
  • It submitted that if ‘ATORKIND’ and ‘ATORVAKIND’ were visually, structurally and phonetically different, as admitted by the Plaintiff in the reply to the Examination Report of the Registrar of Trade Marks on the application of the Plaintiff for registration of “ATORVAKIND”, then ‘MERCYKIND’ and ‘MANKIND’ cannot be the same.

Court’s Decision

  • The Court noted that the Plaintiff took a stand ‘ATORVAKIND’ is different from ‘ATORKIND’. This according to the Court was a relevant fact to be considered for the purposes of interim injunction. Therefore, the Court held that since Plaintiff concealed this fact, it was disentitled to any equitable relief.
  • The Court analyzed the question that whether the affixation of the name of the Defendant No.2 with the word ‘MERCYKIND’ amount to use as a trade mark for the purposes of Section 29 of the Trade Marks Act, 1999?
  • The question was answered by Court in negative. It held that
    ‘mere affixation of the name of the Defendant No.2 as manufacturer or marketeer of the drugs/medicines sold by the Defendants would not qualify as a use thereof as a trade mark even under Section 29(6) of the Act.’
  • The Court also opined that drugs are prescribed by doctors by their generic name and not trade name, and hence the showing of manufacturer’s name in the drug was of not much consequence.
  • On the point of violation of Section 29(6) of the Trademarks Act, the Court held that ‘The Legislature, inspite of having used the words ‘identical with, or deceptively similar to’ in Section 29(1) to (4), having used different words in Section 29(5) and having not used such words in Section 29(5), is deemed to have not constituted use as name or part of the name, of a word or mark deceptively similar to the registered trade mark of the Plaintiff, as infringement thereof by the Defendants. What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, there would have been infringement under Section 29(5), if the Defendants, as part of their name, had used ‘MANKIND’ or any other registered trade mark of the Plaintiff. Merely because ‘MERCYKIND’ in the name of Defendant No.2 Company may be deceptively similar to ‘MANKIND’ or any other registered trade mark of Plaintiff with ‘KIND’ as prefix or suffix, would not amount to infringement under Section 29(5).’

Therefore, distinguishing between cases of infringement by use of ‘trade name’ under Section 29(5) of the Trade Marks Act, and the cases of infringement by use of ‘trademark’ under sub-sections (1) to (4) of Section 29, the Court held that ‘to make out a case of infringement by use of ‘trade name’ under Section 29(5), mere similarity or deceptive similarity with the registered trademark was not sufficient and that there has to be exact use of registered trademark or part of it as the trade name of the business. The test of “similarity or deceptive similarity” was applicable only for cases of infringement by use of ‘trade mark’ covered by sub-sections (1) to (4) of Section 29.’

India: Delhi High Court’s In-Depth analysis of Law Governing Trademark Renewal

31/05/2019

Hon’ble Justice Vibhu Bakhru of the Delhi High Court, in a recent decision in the case of M/S Epsilon Publishing House Pvt … vs Union Of India, has rendered an in-depth analysis of provisions and rules pertaining to renewal of mark, removal of mark on non-renewal and restoration of trademark. The case highlights the statutory duties of Registry in cases of renewal of trademark.

Brief background –

  • The petition challenges an order (hereinafter referred to as ‘the impugned order’) passed by the Registrar of Trademarks (hereinafter referred to as ‘the Registrar’).
  • M/S Epsilon Publishing House Pvt. Ltd., (hereinafter referred to as ‘the Petitioner’) claims that it is engaged in the business of printing since 2000 has been using the trademark ‘EASY NOTES’ on all its printing material since 1999. The Petitioner has also secured registrations of its trademarks, ‘EASY NOTES’ (Registration No. 1590623) in class 16; ‘E.A.S.Y.’ (Registration No. 1409455) in class 16; and ‘EPSILON’ (Registration No. 1107286) all in class 16.
  • The registration of ‘LOKPRIYA EASY NOTES’ in favor of Pardeep Kumar Jain (hereinafter referred to as ‘Respondent No. 3’) was applied for on May 02, 2001, which was given to Respondent no. 3 on March 07, 2007. Similarly, the registration of ‘EASY NOTES’ (Petitioner’s trademark) was applied on August 14, 2007, which was registered in the Petitioner’s favor on March 25, 2010.
  • The registration of Respondent No. 3’s mark ended on May 02, 2011. An application was filed for renewal of Respondent’s trademark registration on May 19, 2011. Thereafter, on March 13, 2013, the Petitioner filed a petition before the Trademark Registry seeking cancellation of the registration of the Respondent No. 3’s trademark. Subsequently, another request was filed by the Petitioner for obtaining certified documents relating to Respondent no. 3’s trademark application. To which a reply sent through a letter dated September 17, 2013, to the Petitioner that Respondent No. 3’s trademark did not appear to be renewed.
  • Again on May 22, 2015, a suit for permanent injunction was filed by the Petitioner against the Respondent no. 3, seeking a permanent injunction restraining Respondent no. 3 to use its trademark. Again on April 12, 2017, the Petitioner filed objections with the Registrar of Trademark, inter alia, praying for removal of Respondent No 3’s trademark from the Register.
  • The Trademark Registry ignored the objections of the Petitioner and renewed the trademark ‘LOKPRIYA EASY NOTES’ in favor of Respondent no. 3.
  • Thus, this petition was filed by the Petitioner

Issue Raised –

  • Was the order passed by the Registrar of Trademarks on May 04, 2017, in contravention with Section 25 of the Trademarks Act, 1999 (hereinafter referred to as ‘the Act’)?

Petitioners’ Arguments –

  • In light of Section 25 (3) of the Act, the Petitioner submitted that since the renewal application was not filed before the expiration of Respondent No 3’s trademark (i.e. on or before May 02, 2011), the Registrar was required to remove the trademark from the Register.
  • It was submitted that the application of renewal was made 17 days after the expiration of the trademark, and thus, should have been accompanied by the prescribed surcharge in addition to the prescribed fee. Since there was no surcharge accompanying the application, hence, it could not be scrutinized by the Trademark Registry.
  • It was also submitted that the said Section does not give any discretionary power to the Registrar to disregard the delay. Also, in this case the exception given in Section 25 (3) of the Act is not applicable. Thus, Respondent No 3’s trademark should be removed accordingly.
  • The Petitioner also contended that he should be given an opportunity to be heard as the third party rights had been vested in favor of the Petitioner on account of non-renewal of the trademarks, in light of Rule 66 of the 2002 Rules.

Respondent’s Arguments:

The Trademarks Registry (hereinafter referred to as ‘Respondent no. 2’) filed an affidavit as per the order passed by the Court on July 07, 2017. In the affidavit it was affirmed that:“It is submitted that the process of renewal is initiated after getting requisite fee amount by cash section on specified form TM-R (Form-TM-12 under the old Trade Mark, Rules 2002) by cash section and then it is sent for scanning and uploading in concerned section. Thereafter, the renewal requests are notified in renewal section wherein section scrutinizes the application and if request of renewal is as per law, the marks are renewed by the renewal section. However, during the scrutiny of renewal requests, if any deficiency is found, a compliance letter is issued. It is further submitted that in normal course, the Registrar of Trade Marks sends compliance letter and such notice was issued in the present matter also.”

Court’s Decision

  • The Court took note of the fact that the renewal application was filed on May 19, 2011, accompanied by a consolidated cheque for a sum of ‘INR 9,000/’- out of which ‘INR 5,000/-’ was for the renewal fee. However, the said form was not scanned or uploaded and, therefore, the said form was not scrutinized by the renewal section of the Trademark Registry and remained pending. This came to light on receipt of a letter dated March 20, 2017, sent by Respondent No. 3 seeking information as to the status of the renewal request.
  • The Court pointed out that Respondent No. 2 has a practice of issuing a communication indicating deficiencies, if the applications filed are not found to be in order, which in this case was not done. Thus, it would be unfair to Respondent no. 3 if they are penalized for it. The Court pointed out that Respondent No. 3 had
    no opportunity to cure its application, as it was confirmed by Respondent No. 2 that the application of Respondent No. 3 was not scrutinized, and herefore was not processed further.
  • Talking about Rule 11 (5) of the 2002 Rules, the Court said that it does not mean
    to completely ignore any application that is not filed in the prescribed format. In the present case, it ispointed out that there is a consistent practice to examine all applications for renewal and to point out deficiencies. This would obviously include the deficiency in payment of fee/surcharge as well, thus, enabling the concerned party to cure the same.
  • Ponting out Rules 64 (1), 65 and 66 of the 2002 Rules, the Court stated that in the present case Respondent no. 2, has not taken any steps to remove the trademark from the Register and consequently no such removal has been advertised.
  • Not accepting the contention of the Petitioner, the Court specifically made it clear that ‘If the renewal fee is not paid by the date of expiry, the mark is not immediately removed from the Register. First, the fact of non-payment of the renewal fee is published. The proprietor has a period of six months from the date of expiry within which to file a request for renewal together with the renewal fee and an additional renewal fee. Pending the filing of such a request, the registration is in limbo. It has expired but has not been removed from the Register.’
  • Refuting the contention of the Petitioner, the Court specified that ‘the registered proprietor would be deprived of the grace period of six months in terms of proviso to Section 25 (3) of the Act’.

The Court was of the view that Respondent no. 3 cannot be penalized as the Trademark Registry did not adhere to the timelines as required. The defect is a curable one, if it was brought to notice and since the Registry failed to do so, Respondent no. 3 could not be deprived of the right to cure the defect within the time prescribed under the Trade Mark Rules. Further, the Court said that no interference by this Court is called for as the present case is not one of restoration of a trademark that has been removed from the Register. Therefore, in the light of above reasons the petition was dismissed by the Court.

India: Stay Trademark Infringement Suit in case of Rectification Proceeding – Supreme Court

31/05/2019

The Supreme Court of India, recently in a remarkable judgement clarified the ambiguity regarding the question of rectification of a trademark if an infringement suit is pending.

Court’s Decision and Analysis

  • The Court took into consideration Sections 46, 56, 107 and 111 of Trademark Act, 1958, corresponding to Sections 47, 57, 124 and 125 of the 1999 Act.
  • Discussing the scheme of the trademark law for the purpose of the issue in this case two contrary judgements were referred in detail:
    • The Delhi High Court in the case of Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals, took the view was that while cases falling in the Section 124 (1) of the Trademarks Act, 1999 the Civil Court dealing with infringement suit would be obliged to adjourn the proceedings and await the outcome of the rectification proceedings; and
    • The Madras High Court in B. Mohamed Yousuff v. Prabha Singh Jaswant Singh and Others, took the contrary view and held that Section 124 (i) and (ii) operate at two different levels and in two different situations. The Court held that both the sub clauses focus their field of operation only with regard to the stay of suit of infringement and the same does not deal with the discretion of the court to permit or not to permit the rectification the filing of the rectification application. The High Court was of the view that Section 124 (i) and (ii) does not disclose that the provision of 1999 Act mandates a party to just obtain permission/ leave of the court to file a rectification application, which is a statutory right, vested by the Act and cannot be curtailed by any other provisions of the Act.
    • The Supreme Court also considered the full bench judgement of the Delhi High Court, wherein it took the view that the provisions of Section 124 (3) of the Act should be interpreted to mean that if rectification proceedings are not filed within the period stipulated under Section 124 (3) of the 1999 Act, or any extended period, the issue of invalidity of the registered trademark would not survive to be decided and the said plea would be deemed to have been abandoned.
  • Therefore, after the discussion, the Court held that: “all questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court or the IPAB and not by the Civil Court. The decisions will bind the Civil Court. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity.
  • Therefore, it meant that it is important to first resolve the root cause of any matter i.e. issue of invalidity and a decision on the same would bind the parties before the Civil Court. Only in the situation wherein the decision is against the party raising it or the party abandoning it, the suit will go on to decide on other issues in the suit.

Read Full Story here.

Trade Mark Registry required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from the register: Delhi High Court

02/08/2019

In an order passed by the Delhi High Court in the case of Vijay Kumar Salwani vs. Union of India, Hon’ble Justice JR Midha held that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.

BRIEF FACTS

  • The Petitioner in this case is Vijay Kumar Salwani trading as M/s Modern Namkeen Bhandar.
  • The Petitioner challenged the removal of its registered Trade Mark without issuance of a mandatory notice under Section 25(3) of the Trade Marks Act, 1999 and sought for his mark to be reinstated, and the said removal to be set aside.
  • The Trade Marks Registry submitted that a public notice dated 24th September, 2010 had been issued inviting petitions regarding marks that had been removed in the preceding months. Petitioners mark was presumed to have been abandoned as no representation from his side was received, the mark was removed.
  • The Registry further submitted that it had issued a notice under Section 25(3) to the Petitioner, but it did not have proof of serving such notice.

PETITIONER’S CONTENTIONS

  • The Petitioner, Vijay Kumar Salwani, challenged the removal of his registered trademark from the Register of Trade Mark without having been issued a mandatory notice under Section 25(3) of the Trade Marks Act, 1999. The Petitioner’s mark was removed on the grounds of non-renewal, however he had not received any notice under Section 25(3) which is a mandatory requirement.

RESPONDANT’S CONTENTION

  • Learned standing counsel for Central Government, Mr. Akshay Makhija, submitted that the notice under Section 25(3) of the Trade Marks Act, 1999 was issued by the department but the record of the notice is not available.

COURTS ANALYSIS

  • The Court was of the view that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.
  • The Court further stated that the removal of the registered Trade Mark by the Trade Mark Registry is liable to be set aside and the department is at liberty to issue fresh notice under Section 25(3) of the Trade Marks Act, 1999.
  • In all cases where the Trade Marks Registry has removed registered trade mark and the record of mandatory notice under Section 25(3) of the Trade Marks Act is not available, , the Registry was ordered to consider the application for renewal as and when received without raising any technical objection.

RELEVANCE OF SECTION 25(3) OF THE TRADE MARKS ACT, 1999

  • Section 25(3) is as follows:
  • At the prescribed time before the expiration of the last registration of a trade mark the Registrar
    shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:
  • Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section.
  • The Registry is mandated to send a notice as per Section 25(3) of the Act with respect to the date of expiry and conditions for renewal to the registered proprietor of a registered trademark when the said mark is approaching the end of 10 years period. The same is prescribed by Section 25(3) of the Act, as well as Rule 58 of the Rules. The significance of the section is emphasizes by Rule 58, of the Trade Mark Rules, 2017 wherein it states that the Registrar shall send a notice at the address of service
  • Section 25(3) is mandatory in nature, and the same has been iterated in various judgements over the years. The Delhi High Court in Union of India v. Malhotra Book Depot 2013 (54) PTC 165 (Del) (DB) delivered a judgement on the same lines streamlining the focus on the mandatory nature of the said section.

The Vijay Kumar Salwani v. UOI order reiterates and reinstates the binding and obligatory nature of Section 25(3) and clarifies that a “public notice” does not qualify as a statutory notice as is to be served by the registry compulsorily.

INDIA: Delhi High Court issues directions for Mandatory Documents to be filed in Trade Mark Infringement Suit

30/10/2019

The Hon’ble High Court of Delhi has recently issued a set of practice directions pertaining to the documents which are to be filed mandatorily along with the plaint in Trademark Infringement disputes. The directions were given in the case Amrish Agarwal v M/s Venus Home Appliances Pvt Ltd. vide judgement dated August 27, 2019.

The Petitioner, Amrish Agarwal, filed the present appeal against the order dated August 04, 2018 by the Trial Court. In the said order, the Trial Court took on record the Legal Proceedings Certificate relating to the trademark ‘Venus’, which according to the Petitioner was filed at a belated stage by the Respondent, M/s Venus Home Appliances, as the evidence was already concluded and the matter was listed for final arguments.

The Petitioner relied on the decision passed by the Single Judge of Delhi High Court in Gold Rock World v Veejay Lakshmi Engineering Works Ltd[1], to argue that the document could not be taken into record at this belated stage.

The Court observed that the Court ought to be able to see the mark. Therefore, either the Legal Proceedings Certificate or the Registration Certificate along with the Journal extract should be filed by the Petitioner along with the Plaint.

The Court further observed that trademark registration are matters of public records which can be accessed by visiting the Indian Trade Mark Registry’s website. However, the Certificate of Registration along with the journal extract or the Legal Proceedings Certificate are to be placed as documentary evidence for the Court to consider the registration of the trade mark in question.

The Court, after going through the Petitioner’s contentions, was of the view that the Trademark Registration Certificate should have been filed at the initial stage, however in the interest of justice the Court took on record the Legal Proceedings Certificate, subject to payment of Rs. 50,000 as costs to be paid to the Defendants.

Thereafter, the Court passed the following directions pertaining to the documents that are necessary to be filed in a suit for Trade mark infringement –

i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.;

ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;

iii. Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online;

iv. In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;

The Court directed the Registrar General to communicate these directions to the Districts Judges, especially the Judges of the Commercial Courts, so that the judgement can be complied with. Furthermore, the order is to be communicated to the Controller General of Patents, Designs and Trade Marks and the Joint Secretary, DPIIT to ensure that the Legal Proceedings Certificates are issued without delay and within a period of 30 days.

IPO Issues Notice for Disposal of Cases Pending in Opposition/ Rectification and which have been Settled Amicably

20/09/2019

In a welcome move, the Trade Marks Registry has issued a Public Notice dated September 19, 2019 so as to expedite the conclusion of such opposition/rectification matters which, though have been amicably resolved by the concerned parties, have not been subjected to closure vide a final order by the Registry.
The reason cited for the delay in passing final orders is ‘Lack of Information’ in respect of the pending matters with the Trade Marks Registry. In view of the same, the Registry has directed parties concerned in such opposition/rectification matters, to bring the said matters to the notice of the concerned officers of the respective branches of the Trade Marks Registry, and to provide them with documents in support thereof vide emails as listed in the notice.The move is a commendable effort on the Registry’s part to reduce its backlog of pending opposition/rectification cases, and the same will subsequently also pave way for other matters which have not been settled between parties and require to be heard by the Registry on a priority basis for early disposal. Further, the said efforts may also prove to be a boon to parties who even after entering into settlement, have not been able to successfully obtain registration and exercise statutory rights over their trade marks.

India: Trademark Office to give Grounds when Refusing Trademark Application

11/11/2019

Recently, the Hon’ble Delhi High Court, has held in the case of Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr., that the Registrar of Trademark is bound by duty to send the copy of the order passed under Section 18(5) of the Trade Marks Act, 1999, containing the grounds of refusal or conditional acceptance and material used by the Registrar to arrive at his decision should be furnished.

In this case, the single judge bench of the Delhi High Court was adjudicating upon a writ petition filed by the Petitioner who was aggrieved by the orders passed by the Registrar to refuse applications for registration of trademarks in violation of Section 18(5) of the Trade Marks Act, 1999.

Section 18(5) of the Trade Marks Act, 1999, provides that it is mandatory for the Registrar to record the grounds for refusal or conditional acceptance of the application in writing for registration of Trade Marks. The Petitioners contended that Rule 36 of the Trade Marks Rules, 2017 is in violation of Section 18(5) as it provides for sending copy of the order without the grounds for refusal/conditional acceptance to the applicant.

The Petitioner submitted that Rule 36 of the Trade Marks rules states that the Registrar shall convey his decision on the trademark application to the applicant in writing and the applicant may appeal against the decision to the Registrar within 30 days from such decision. The Registrar shall provide the grounds of refusal/conditional acceptance after such an appeal is filed. Therefore, the Petitioner contended that Rule 36 is violative of the compulsory requirements of Section 18(5) of the Trade Marks Act, 1999.

The Court accepted the writ petition and thereupon directed the Registrar to record the grounds for refusal/conditional acceptance in writing in order to properly implement Section 18(5) of the Trade Marks Act, 1999. The Court further directed the Registrar to send the order containing grounds of refusal/conditional acceptance to the applicant within two weeks of passing the order. The Court said, “the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.”

An Analysis of Patentability under Patents Act, 1970: Monsanto Technology LLC V Nuziveedu Seeds Ltd.

29/05/2019

The issue in the present case revolves around the fact that whether the technology ‘Methods For Transforming Plants To Express Bacillus Thuringiensis Deltaendotoxins’ used by Monsanto Technology LLC. is patentable under the Patents Act,1970.

Facts

A sub-license agreement dated February 21, 2004 was entered into between Monsanto Technology LLC (hereinafter referred to as ‘Plaintiffs’) and Nuziveedu Seeds Ltd. (hereinafter referred to as ‘Defendants’). Monsanto Technology LLC is a joint venture between Monsanto and India’s Maharashtra Hybrid Seeds Co (Mahyco) and is involved in the business of creating a large number of donor Bt. cotton seeds and to distribute them to seed companies. On the other hand, Nuziveedu Seeds Ltd. is a private sector seed company involved in developing new hybrids and varieties of cotton. Under the sub-license agreement, Defendants were entitled to develop “Genetically Modified Hybrid Cotton Planting Seeds” and commercially use the same by using the Plaintiffs’ technology on payment of license fee/trait value on the patented technology. The license was terminated by the Plaintiffs with regard to the issue on payment of trait value after the change of the price control regime by the State.

A suit was preferred by the plaintiffs before the Single Judge of the Delhi High Court for injunction in order to refrain the Defendants from using their registered trademark thereby infringing their registered patent as the license agreement had been terminated.

Single Judge Order

The learned Single Judge after considering the submissions of the either parties observed that the issue in hand regarding the suit patent required an expert opinion and the patent claim could be examined only after completion of the entire trial. In view of the existing patent registered under Section 48 of the Patents Act the parties were ordered to remain bound by the sub-license agreement and the trait value to be paid as per law.

Division Bench Order

Aggrieved by the order of the learned Single Judge, the respective parties preferred an appeal before the Division Bench of the High Court and the Bench dismissed the appeal of the Plaintiffs’ and held that the suit patent of the Plaintiffs falls under the exclusion provided under Section 3(j) of the Patents Act,1970 and hence the suit patent is not patentable. The court also granted the Plaintiffs liberty to claim registration under the Protection of Plant Varieties and Farmers’ Rights Act, 2001(hereinafter referred to as PPVFR Act) stating that the two acts were not complimentary to each other but rather exclusive. It was ordered that the Plaintiffs should be bound by the obligations under the license agreement including the payment of trait value by the Defendants as per law.

Appeal before the Hon’ble Supreme Court

The plaintiffs preferred a Civil Appeal seeking permanent injunction against the Defendants from using their trademark and violating their registered patent No. 214436. Further, to refrain the Defendants from using or selling their hybrid seeds bearing the patented technology.

Contentions raised on behalf of the Plaintiffs

  • It was argued that initially the suit was filed for injunction against the infringement of the existing patent and not on account of lack of patentability.
  • The Division Bench has committed an error by delving into the issue related to process claims 1-24 which was never in issue.
  • The suit patent comprised of a DNA construct or nucleotide sequence in claims 25-27 comprising of three different components. The DNA construct when inserted in a plant produced a ‘fusion protein’ which comprised of Cry2ab S-endotoxin 7 bonded with the transit peptide. The “Nucleic Acid Sequence” (NAS) is not a living organism but a chemical created in the laboratory.
  • It was contended that the chemical/gene construct was not a plant variety, hence, not eligible to seek protection under PPVFR Act and the same would be denied registration as per Section 2(za) read with Section 14 and 15 of the PPVFR Act.
  • It was submitted that the DNA construct was the creation of human invention and therefore, not covered under PPVFR Act.
  • It was alleged that the conjoint reading of Sections 2(j) and 3(j) of the Patents Act will depict that it excludes both patentability of transgenic plants as well as those invented through conventional breeding techniques i.e the production of plants or variety through ‘an essential biological process’ is not patentable under Section 3(j) of the patents Act.

Contentions raised on behalf of the respondents

  • It was alleged that the claims 25-27are product claims which are essentially biological process claims.
  • It was submitted that the genetically modified cotton planting seeds were not patented as it was developed by the Defendants vide conventional breeding method.
  • The Plaintiffs ‘gene’ becomes an inheritable part of the plant by an irreversible biological process is not patentable.
  • There is no inventive step involved in the Plaintiffs patent claim and the inventive process starts when the NAS is inserted in a plant cell. The exclusion under Section 3(j) of the patents Act applies as soon as it is inserted in the plant cell.
  • It was concluded by stating that the NAS only adds a trait to a plant which leads to development of a transgenic variety donor seeds and the seeds are not patentable under Section 3(j) of the patents Act and entitled to the benefit under PPVFR Act.

Observations and Findings of the Hon’ble Supreme Court

  • It was clarified by the Apex court that the patent claims 1-24 were with regard to the processes and claims 25-27 were with respect to the chemical process called NAS.
  • The DNA construct was inserted in a plant which confers the trait of insect tolerance to the plant and it comprised of three components i.e. A promoter, a gene for the production of Cry2Ab 5-endotoxin and a component for the production of a transit peptide. Cry2Ab-5, a nucleic acid sequence was used to be inserted in a plant cell at a particular location for the production of ‘a fusion protein’ which comprised of Cry2Ab 5-endotoxin 7 bonded with transit peptide. The Plaintiffs’ technology allowed cotton plant to produce CryAb 8-endotoxin which was a patented invention. The production of fusion protein is important to be effected in a plant which can be done through Plaintiffs’ technology and the ‘bacillus thuringiensis strain’ does not produce a fusion protein.
  • It was further stated that the Division Bench should have confined its finding only on the issue regarding injunction. The issues in the present case required expert advice and evidence to ascertain whether patented DNA sequence was a plant or a part of a plant, which was to be considered only at the final hearing of the suit.
  • It was finally said that “The order of the Division Bench is set aside. The order of the Single Judge dated 28.03.2017 is restored and the suit is remanded to the learned Single Judge for disposal in accordance with law.”

Conclusion

After rummaging through the entire findings as averred by the Hon’ble Supreme Court in the present case, it is perused that the question with regard to the fact that whether the technology ‘Methods For Transforming Plants To Express Bacillus Thuringiensis Deltaendotoxins’ used by Monsanto Technology LLC. is patentable under the Patents Act,1970, was not conclusively decided by the Apex Court. It was observed by the court that the patentability and the exclusion of suit patent could be examined only after considering the entire evidence(s) on record and considering the expert evidence on the issues related to chemical process, biochemical, biotechnical and micro-biological process. Therefore, the present status remains that the technology of the Plaintiff remained as a registered patent under the Indian Patent No.214436 titled as “Methods For Transforming Plants To Express Bacillus Thuringiensis Deltaendotoxins” until any further finding avowed by the learned single Judge on the concerned issue.

India: Patent Prosecution Highway gets Cabinet’s Approval

21/11/2019

The Union Cabinet on November 20, 2019 approved the proposal for adoption of Patent Prosecution Highway (hereinafter referred to as ‘PPH’) programme by the Indian Patent Office (hereinafter referred to as ‘IPO’) under the Controller General of Patents, Designs & Trade Marks, India (CGPDTM) in collaboration with Patent offices of various other countries and regions.

A significant growth has been witnessed in number of patent applications received by the Patent Offices across the world. One of the major catalyst in this growth is globalization in sectors like commerce, technology, education etc. Same patents being filed in multiple countries has forced patent offices to come together and work in cooperation with each other. Large number of pending patents and a bid to increasing productivity has encouraged Patent offices to work together by opting for the avenue of Patent Prosecution Highway (hereinafter referred to as ‘PPH’).

PPH helps in speeding up the process of examination for corresponding applications in the IP offices involved. As per the PPH programme, the participating patent offices agree that when claims in an application is allowed by the first patent office, the applicant can request for speedy examination of corresponding claims in an application that is pending in the second patent office. PPH helps in reaching the final disposition of a patent application more speedily and efficiently than the normal procedure.

The India’s PPH programme will at first commence between the Japan patent Office (hereinafter referred to as ‘JPO’) and IPO for an initial period of three years. The Pilot programme will allow the Indian Patent Office to receive patent applications only in some specified technical fields:

  • Electrical
  • Electronics
  • Computer Sciences
  • Information Technology
  • Physics
  • Civil
  • Mechanical
  • Textiles
  • Automobiles
  • Metallurgy

However, the JPO may receive applications in all fields of technology.

The Commerce and Industry Ministry of India has decided that the scope of the programme may be extended in the future. Their own guidelines for implementation of the programme will be framed by the patent offices.

Related Post

India: An overview of Procedure Guidelines for Patent Prosecution Highway

India: Patent Amendment Rules, 2019 Comes into force

25/09/2019

The Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) recently brought about an important change in the patent ecosystem. The CGPDTM on September 17, 2019, published the Patent (Amendment) Rules, 2019 (hereinafter referred as “Rules”).

The Department of Industrial Policy and Promotion (DIPP) had previously published a draft for proposed amendments to the Patents Rules, 2003 on December 4, 2018 inviting objections and suggestions from all persons likely to be affected thereby.

Key takeaways from the Amended Rules 2019 are as follows:

1.      Electronic Submission of Records- The Amended Rules mandate that the Patent Agent shall file, leave, make or give all documents only by electronic transmission duly authenticated. Further, if required, the original document shall be submitted within a period of 15 days.

2.      Expansion of Rule 7: The second proviso in Rule 7 (1) has been substituted as follows:

“Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.”

Under the amended Rules apart from small entity, startup has also been incorporated. Earlier the proviso only mentioned about small entities.

3.      Applicants eligible to file request for Expedited Examination- Expansion of Rule 24 C:  The IPO through this amendment added the following applicants in the category of applicants eligible for expedited examination purposes and accordingly Form-18A has been changed:

a. Applications wherein India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application:

b. that the applicant is a startup (both Indian and Foreign):

c. that the applicant is a small entity (both Indian and Foreign):

d. that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female (both Indian and Foreign):

e. that the applicant is a department of the Government (both Indian and Foreign):

f. that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government (both Indian and Foreign):

g. that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013) [both Indian and Foreign]:

h.that the applicant is an institution wholly or substantially financed by the Government (both Indian and Foreign):

i. that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government:

j. that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Offic

4.      Amendment in the Fee Schedule- Official fee for transmittal of International Application (for e-PCT filing) and preparation of certified copy of priority document and e-transmission through WIPO DAS have been removed.

 The present Amendment introduces substantial modifications in processing and regulation of patent applications in India. The amended rule pertaining to expedited examination for start-ups and female applicants is a progressive move towards ensuring promotion and growth of innovation.

Intellectual Property

India: Ministry of Commerce and Industry Proposes reduction in IP filing fees for Start-Ups and MSMEs

18/09/2019

The Ministry of Commerce and Industry has proposed to reduce application filing fees for Patent, Design and Geographical Indications for start-ups and micro, small and medium enterprises (hereinafter referred to as ‘MSMEs’) to promote innovation in India.

According to the current procedural regime, an individual, commercial entity, group or industry has to pay a certain amount of fees at several stages of the registration and filing of the application for Intellectual Property Rights.

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India: IP Filing on the rise since Government’s strong steps towards IP Sensitization

18/04/2019

India is committed to protect Intellectual Property Rights of all innovators and entrepreneurs and a comprehensive National IPR policy is being finalized’, Prime Minister Narendra Modi assured a gathering of British businessmen during his maiden trip to the UK back in 2015. His comments came at a time when several countries and multinational corporations want India to bring its IP laws at par with global standards.

The Office of the Controller General of Patents, Designs and Trade Marks (hereinafter referred to as the ‘Office’), aims to meet requirements of constantly changing IP landscape and aspires to strengthen the culture of transparency, accountability and efficiency in its management. It endeavors to establish a vibrant and balanced IP regime in the country to support the country’s innovation and developmental objectives. The Office has undergone sweeping transformations due to various initiatives for easing of access to all stakeholders, augmenting efficiency in the processing of IP applications, accomplishing uniformity and consistency in the examination of application, strengthening transparency and dissemination of IP related information, nurturing bilateral co-operation at the international level and leveraging the level of IP awareness amongst the public.

Recently, the Cell for IPR Promotion and Management, released the new filing statistics of the IP Office for the year 2017-18 available over here.

Read Full Story here.