Tuesday, 20 February 2018

Global Intellectual Property Index: India’s Ranks 44 out Of 50


In the 2018 Global Intellectual Property Index, (hereinafter referred to as ‘GIPI’) India has secured 44th position out of 50 countries - a jump from 43rd of 45 economies in 2017. This year India has managed to perform slightly better in the annual International IP Index. The improvement was expected to happen due to better protection for trademarks and copyrights and easier rules to patent computer-related innovations. India scored 12.03 out of 40 and its scores have increased to 30% in comparison to last year’s 25% i.e. a significantly 5% jump.
In an interview to BloombergQuint, Patrick Kilbride, vice-president of GIPC, said that ‘For the first time, India has broken free of the bottom 10 percent of economies measured. Compared with 25 percent (8.75 out of 35) of the possible total score in the fifth edition, India scored 30 percent (12.03 out of 40) in the sixth edition, representing the largest percentage improvement of any country measured.’
The ‘Guidelines on the Examination of Computer-Related Inventions’ issued in July, 2017, strong performance in new indicators and improved technological environment have all impacted positively on the rankings this year. However, there are still some grey areas on which the nation plans to work this year. These areas are unnecessarily prolonged, lengthy pre-grant opposition proceedings, inadequate IP protection given to Life Sciences, limited framework for protection of life sciences, Compulsory licensing, limited participation in international treaties, etc.
STATISTICS FROM 2018 GIPC REPORT
TOP 5 COUNTRIES IN INTERNATIONAL IP INDEX[1]
INDIA[2]





India: Patent Examination/Grant process gains momentum in the fiscal year 2017

Centre for IPR Promotion and Management (CIPAM), the other day reported that the Indian Patent Office has observed a dramatic push upwards over the previous years with regard to patent examination(s) and grant process.

The process of patent examination and grant has been more streamlined due to recruitment of more patent examiners with the Indian Patent Office (IPO) and the objective of the Department of Industrial Policy and Promotion is to bring down the average time taken to grant patent within 18 months from the current norm of 5-7 years.

As per the below figures published by the Centre for IPR Promotion and Management established within India’s Department of Industrial Policy and Promotion (DIPP), the numbers display that although the filing of patent application has gone down a little, there has been a massive improvement in the number of patent examinations conducted, patents granted and the overall disposals by the IPO.




This significant move of the IPO shall remove the significant backlog of the patent office which was estimated to be around 2 lakhs patents applications during the previous years and also transform the outlook of the patent office among major patent owners.

Source: https://www.lexology.com/library/detail.aspx?g=a178e7a4-7153-4cc3-adae-20162fd9de22

Wednesday, 7 February 2018

Indian Patent Process to be Streamlined – Need of the Hour !!


In a recent interview with the Minister of State for Commerce and Industry, Shri CR Chaudhary, clarified that approximately 2.32 lakh patent applications are still pending with the Indian Patent Office.
It was affirmed that the pendency of such large number of patent applications is primarily due to shortage of technical manpower with the IPO.  

He further added that while overcoming the pendency, several prominent measures have been taken to streamline the patent process in India and make it more user friendly.

As recently as late last year, the Controller General of Patents, Designs and Trade Marks (CGPDTM) also started a SMS alert facility for the applicants and patent agents in respect of patent applications, wherein they will be receiving alerts notifying them of the progress of the applications at various stages of processing. The CGPDTM, under the Ministry of Commerce and Industry, said the alerts will also inform the applicants about timelines and deficiencies which may lead to refusal or abandonment of application.

However, in order to avail the aforesaid facility, applicants and agents are requested to update their mobile numbers in the address for service for applications. For more details about the Official Press Release click here.

India: Digitization of Copyright Office for improving transparency


January 12, 2018                                                                                             New Delhi

In an attempt to improve transparency and cut down delays in examination of copyright applications, the Copyright Office through a public notice dated January 12, 2018, stated that it would be publishing orders and hearing notice issued in relation to applications filed for registration of Copyright.

As per Rule 70 (12) of the Copyright Rules, 2013, the Registrar of Copyright shall give an opportunity of hearing before rejecting any application filed for registration of any work.

This initiative regarding the publication of orders and hearing is an incredible move towards improving transparency of intellectual property registrations. This attempt of following the procedure of publishing orders and hearing notice under the said rule would definitely improve transparency and ease the procedure related to the Registration of Copyright in India.

The public notice dated December 04, 2017 can be accessed here.

India: Ferrero Rocher granted permanent injunction against D-Lizie for trade dress infringement


The Hon’ble Delhi High Court in Ferrero Rocher SPA & Anr. v. Piyush Devangan & Anr.[1], vide judgement dated January 22, 2018 granted an ex-parte permanent injunction and decreed the suit in favour of Ferrero Rocher for infringement of its trade dress. Allegedly, the Defendants were manufacturing and selling look a likes of the Plaintiff’s Ferrero Rocher chocolate specialties under the mark/name ‘D-Lizie’ and/or any other goods under the trade dress which is deceptively similar to that of the Plaintiff.

Contentions of Plaintiff:

The Plaintiff, through its counsel, contended that the Defendants were infringing its registered trade mark and its trade dress and made the following submissions:

  • That Plaintiff’s chocolates are sold under the trade mark ‘FERRERO ROCHER’ at worldwide level and are amongst the best known confectionary products in the world.
  • That the consumers and trade alike identify and recognize the products of the Plaintiffs from a distance owing to the distinct packaging style of ‘Ferrero Rocher’ having the following unique elements:

a)      Rounded crushed sold wrappers;
b)      A white sticker on individual products;
c)      Each resting in a fluted brown coloured cupcake shaved holder;
d)     Uniquely packaged individual chocolates packed in transparent boxes which clearly show the contents of the box without opening it;
e)      Bearing a white label on the lid with the image of the chocolates;
f)       Unique shape and packaging of the transparent box with round edges

  • That the Plaintiff’s trademark and trade dress are well known and have been used for several decades and have become a characteristic part of identification of Ferrero Rocher chocolate specialties.


A comparison chart of the rival packaging/trade dress is reproduced herein below:
                    Plaintiff’s Products
Defendant’s Product

Decision of Court:

The Court, agreeing with the averments made in the plaint and the evidence led by the Plaintiff, held that the Defendants were infringing the statutory and common law rights of the Plaintiff with respect to the said product packaging and the trade dress and accordingly decree was passed in favour of the Plaintiff and against the Defendants, thereby restraining the Defendants from dealing in any manner with the confectionary products which are look a likes of the Plaintiff’s ‘Ferrero Rocher’ under its trade dress. The Plaintiff was also entitled to cost as per bill of cost filed by the Plaintiff.

Concluding Remarks:

Ferrero Rocher in order to protect its rights over its mark and trade dress, took to court, the Defendants Piyush Devangan & Anr, for infringement of not only its trademark registration but also trade dress of the Plaintiff. The court passed an ex-parte order in favour of the Plaintiff. On comparison of the impugned products, the court was of clear opinion that the Defendant was in fact infringing the trademark and dressed the suit of “Ferrero Rocher” by selling its product “D-Lizie”.


[1] CS(OS) 872 of 2014

Flipkart India restrained from using Trademark ‘MarQ’



E-commerce major Flipkart’s attempt to build a brand for large appliances with its newly created private label “MarQ” has faced a setback after an Additional District Judge of the Patiala House Courts vide order dated January 18, 2018 in M/s Marc Enterprises Pvt. Ltd. v. Flipkart India Pvt. Ltd.[1] passed an order restraining the use of the mark “MARQ” as prima facie, the court was of the view that it was phonetically similar to the mark of the Plaintiff “MARC”.

Plaintiff’s Assertions:

The Plaintiff, i.e., Marc Enterprises Pvt. Ltd. contended that the mark of the Defendant is infringing the mark of the Plaintiff. The Plaintiff made the following submissions:
  1. That the Plaintiff is user of the trademark “MARC” since 1981 and that the mark is registered since 1984 for electrical goods in classes 7, 9, 11, 16 and 21.
  2. That the Defendant had proposed to use the trademark “MARQ” for similar or identical goods and therefore, interim injunction in favor of the Plaintiff be granted to prohibit the Defendant from using the mark “MARQ” for its similar or identical goods.


Defendant’s Submissions:

The counsel for the Defendant submitted that though no notice has been issued to the defendant so far but he has come to know from the cause list that a case is filed by the Plaintiff against the Defendant. The court observed that since the Defendant is present in the court it would be in the interest of justice to give him also an opportunity to address arguments on the aforesaid interim application of the Plaintiff.

The Defendant, i.e., Flipkart Pvt. Ltd. refuted the contentions of the Plaintiff and put forward the following assertions:
  1. That the Defendant had already applied to get the registration of the mark “MARQ” under the Trade Marks Act, 1999, which is pending registration.
  2. That the mark was not deceptively similar in any manner to the Plaintiff’s mark “MARC”.
  3. That the Defendant had already launched its products in the market in August, 2017 and that the Plaintiff had sufficient knowledge of the same but did not take any action, therefore, the aforesaid application of the Plaintiff may not be allowed.

A comparison chart of the rival marks have been reproduced herein below:
S. No.
Plaintiff’s Mark
Defendant’s Mark
1.       

2.       
The letters in the mark are written in all capitals letters.
The letters used in its trademark “MARQ” are all small letters.

Decision of the Court:

The court observed that the impugned mark “MARQ” of the Plaintiff was prima facie phonetically similar to the Plaintiff’s trademark “MARC”. The court further observed that the Plaintiff had claimed user since 1981 and the Defendant claimed its user since August, 2017, therefore, it seemed that the prima facie case, balance of convenience and irreparable loss were in favor of the Plaintiff. Therefore, the Hon’ble Court restrained the Defendant to use the trademark ‘MARQ’ in respect of its products in any form and from any platform till the next date of hearing. The matter will be taken up next on February 05, 2018.

Concluding Remarks:

Flipkart, in an attempt to take its private label strategy beyond electronics, fashion and furniture, launched its first in-house brand for large appliances, “MarQ”, in August last year. In January this year, the company launched an exclusive line of air conditioners and smart televisions under “MarQ” at the Consumer Electronic Show (CES) 2018 in Las Vegas. The ACs were scheduled to go on sale on Flipkart from the beginning of April, 2018 while the Smart TV was scheduled for May this year. Flipkart Pvt. Ltd. is most likely to take any of recourse to vacation of the order before the same court, or alternatively to go in appeal to the High Court to obtain a stay on the temporary injunction order.


[1] TM No. 12 of 2018, Patiala House Court.

India: CIPAM releases Reports on IPR Regime in India




The Centre for IPR Promotion and Management (hereinafter referred to as the ‘CIPAM’) on January 24, 2018, released two reports titled ‘Intellectual Property Rights Regime In India- Initiatives by the Government’ and ‘Intellectual Property Rights Regime In India- An Overview’.

The reports ‘Intellectual Property Rights Regime in India- an Overview’ discuss at length about the important trends and extraordinary features in the year 2017 related to different aspects of IPR. Highlights of this report were the discussions on access to healthcare, the impact of TRIPS measures for data exclusivity and patent linkages on public health in India and the global trend of compulsory licensing.

The report ‘Intellectual Property Rights Regime in India- Initiatives by the Government’ threw light on the steps and legal reforms that the Indian Government is taking to improve the IPR regime of the country. The report also mentions the trends, statistics and data related to filing and enforcement, and the strong steps that Department of Industrial Policy & Promotion has taken to improve the IPR system with respect to openness and transparency in administrative working.