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2019

Intellectual Property Newsletter: December 2019

In the recent times, India has been trying to establish itself as an Intellectual Property Rights (IPR) friendly nation in the world, by defining its standards as per the Global Intellectual Property norms. This has been clearly reflected in some of the latest developments in the laws related to Intellectual Property Rights in India. One such effort can be seen in the Indian government’s vision to set-up fully computerized Intellectual Property offices based on the United States Patent and Trademark Office model. The Government has recently approved the Patent Prosecution Highway Program which will ease and expedite the process of patent examination in India. Changes in the Manual of Patent Office Practice and Procedures have clarified and eased several filing processes. Other developments in the IP regime include the Defence Research and Development Organisation (DRDO) allowing free access of its 450 patent to industries. This newsletter aims to bring to you the latest updates in the IP segment.

1. Govt. Approves Patent Prosecution Highway Program- Measure to Expedite Patent Examination in India

The Union Government with its notification dated 20th November 2019 has affirmed a proposal for adoption of Patent Prosecution Highway (PPH) programme by Indian Patent Office in collaboration with Patent office of various other countries and region[1]. This programme is aimed towards efficacious work sharing and accelerated processing of patent application by way of bilateral arrangements between patent offices. Prosecution in this programme refers to the process of drafting, filing and negotiating with the respective patent office in order to obtain patent protection. This program by way of sharing information and inputs amongst patent offices enables expeditious patent prosecution procedures.

As per the programme, the participating patent office agrees to speedy examination of corresponding patent claims when such patent application has been already accepted by other collaborating patent office. This enables faster final disposition of patent claim by easing of procedures. Japan’s patent office will be 1st patent office to collaborate with Indian patent office for initial period of 3 years. This programme is expected to be extended to patent offices of other countries in coming years.

This programme is welcome measure for enabling faster final disposition of patent claim. But caution needs to be ensured as extension of programme might require curtailing flexibilities allowed to local sectors (like pharmacy), in order to tailor patent laws according to International standards.

2. DRDO grants free patent access to boost indigenous production

In its latest policy formulation, DRDO has eased down the need for licence and royalty for use of Indian patent held by the agency. By this move DRDO has put it’s over 450 patents (covering missile technology, aeronautics, naval system, electronic, communication etc.) for free access to industries for commercial exploitation[2]. Such initiative can be seen as an attempt to ease the current disconnect between IP creators and potential users. Through policy the Indian industries can avail DRDO patents at zero cost, giving them the opportunity for enhancing their capabilities and improving supply chain. This free licence to DRDO patent will be granted to public and private entities including start-ups after taking into account the entities’ capacity to absorb technology, production capabilities, and quality control mechanisms. The entities will be required to apply for such free licence with relevant technical and financial details and these applications will be scrutinised by the expert committee; and if eligible, it will be granted non exclusive licence for a period of one year.

This is grant by DRDO is a welcome step to help indigenous industries by allowing them access to technology which might enable them to increase their output and enhance their capabilities.

3. Government brings key changes in Manual of Patent Office Practice and Procedure (2019)

The Union Government with its notification came up with a New Manual of Patent Office Practice and Procedures. This New Manual tries to accommodate various developments like automating and digitalizing the process. This New Manual also tries to increase transparency in functioning of Patent Office[3].

In the New Manual, the Government has clarified that where an application and all the ancillary documents have been digitally signed by the Applicant/ Patent Agent there is no requirement for physical signature. Also, the New Manual has eased the online payment mechanism which provides for fees to be paid through a payment gateway with all the prevalent major modes of payments like Net banking, Credit Cards, Debit Cards and Unified Payments Interface (UPI). Amendments in the New Manual also clarify on condonation of delay in specified cases such as difficulty in filing documents online due to online transaction failures.

This New Manual is a welcome step towards easing the procedures by bringing-in more clarity, transparency in the payment process and enabling digitalizing the process.

4. Filmmaker’s win over YouTube and Google in Copyright violation case

In a recent copyright violation suit filed by the filmmaker Suneel Darshan (Plaintiff)[4], the District Court of Gurgaon, imposed liability on YouTube and Google (Defendants). The Plaintiff had accused both online platforms for sharing and circulating his works without prior authorization.

It was argued by the Defendants that they are only service providers and the content has been uploaded by their users and thus they cannot be made liable for any copyright infringement. The Defendants further argued that such copyright infringement suit must be brought against the offenders who uploaded the work, rather than the service providers. Further, they also stated that there was no prior communication made by the Plaintiff raising his concern regarding the said content infringing his copyright on their service platforms. The Court while deciding the matter in favour of the Plaintiff held that the Defendants are guilty of infringement as they had exclusive knowledge of the offender(s) uploading such content and they being such giant online service providers had access to monitor, locate and remove such URLs uploaded on the online platform which are in infringement to the works of any existing copyright holder. Thus, we can see that the Court has increased liability of intermediary platforms in case of IPR infringement.

5. Steer Engineering Pvt. Ltd. v. Glaxosmithkline Consumer &Ors.: Copyright infringement on filing Patent Application

In the case of Steer Engineering Pvt. Ltd. v. Glaxosmithkline Consumer & Or[5]., the Karnataka High Court has decided on copyright infringement when filing International Patent Application. The Appellant in this case is an Innovator Company developing various technologies, including the technology relating to extrusion process. The Appellant had entered into a Master Services Agreement (MSA) with the Defendants for transfer of the said technology of extrusion process to be used in manufacture of Horlicks, a famous nutritional food powder. In furtherance of this MSA, the Appellant shared with the Defendants the various test results and data related to the process. The Defendants having received the right to patent of the technology by virtue of the MSA, filed for an international patent application submitting with it all the test results and data provided to them by the Appellant. The Appellant alleged that Defendants’ patent application infringed their copyright as it revealed various test results and data which were confidential in nature. It was argued by the Defendants that the MSA gave them control over all the information and IP which was gathered for the purposes of any project between the parties. The Court while ruling in favour of the Defendants stated that there was no infringement of copyright as the Appellant had failed to produce the original work (test results) and instead produced was a redacted document. Also, Appellant had failed to indicate confidential nature of such information at the time of transfer under the MSA and therefore they cannot claim violation of copyright. This is an interesting case law which throws light on the laws relating to confidential information and copyright of test results in India.

6. Make My Trip (India) Private Limited V. Make My Travel (India)[6] Private Limited: Mere silence no acquiesce

The Delhi High Court in a recent matter has granted “temporary ad-interim injunction” in favour of Make My Trip (India) Private Limited (Plaintiff) in a trademark infringement case. The Plaintiff is one of the famous Tours and Travels Service Provider Company in India having registered trademarks "MakeMyTrip", "MMT" and tag lines "Memories Unlimited" and "Hotels Unlimited". The Defendant Company too was involved in providing travel services and was using the word-mark “Make My Travel”, letter mark “MMT” and the tag line “Dreams Unlimited” and “Hotels Unlimited” as well for their company promotion. The Plaintiff filed an infringement case against the Defendant accusing them of violating their trademarks by using similar marks causing a deception amongst general public that the Defendant’s company is that of the Plaintiff’s. The Plaintiff’s argued that it has an immense reputation and goodwill in the market on account of extensive and continuous use of marks to which the Defendant took the defence of acquiesce, arguing that the Plaintiff had no action against them, even though the Defendant was using similar word marks since 2011. The Court ruling in favour of the Plaintiff held that the word marks used by the Defendant were identical and deceptively similar in nature, concept and idea which are evident from use of the words in specific combination. It also stated that taking into account both companies providing similar service makes Defendant liable of violating Plaintiff’s trade mark. Further, in reference to defence of acquiesce taken by Defendant , the Court referred to judgement in case of Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd[7] where it was held that positive encouragement becomes necessary element for defence of acquiesce, and mere silence of the Plaintiff or non-intervention against the violator doesn't amount to consent.

This case becomes important as it upholds the principles that mere silence or non intervention doesn’t amount to acquiesces. Also, for acquiesce to be taken as a defence positive encouragement on the part of victim must be shown.

Author: Ms. Srishti Singhania, Senior Associate, and Ms. Sarjana Pandey, Associate, at Singhania & Co., Mumbai. In case of any queries please contact/write back to us at srishti@singhanialaw.com or sarjana@singhanialaw.com or mumbai@singhanialaw.com.

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[5] Steer Engineering Private Limited v. Glaxosmithkline Consumer Healthcare Holdings (US) LLC and Ors., Commercial Appeal No. 5 of 2019, Karnataka High Court, 18th October 2019.

[6]Make My Trip (India) Private Limited v. Make My Travel (India) Pvt. Ltd., CS(COMM) 889/2018, Delhi High Court, 18th October 2019.

[7]Emcure Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd., 2014 SCC OnLineBom 1064, 2015 (1) BomCR 197, 2014 (60) PTC 332 (Bom).

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