India: Patent Office to be affirmed as a Depositing Office

Source: www.ipindia.nic.in

Recently, the Controller General of Patents, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) and the World Intellectual Property Organization (hereinafter referred to as the ‘WIPO’), entered into a cooperative agreement at Geneva, Switzerland (headquarters of WIPO).

The Agreement was signed to facilitate the regular exchange of data between these offices including Indian Patent documents, search and examination reports through WIPO CASE (Centralized Access to Search and Examination) and WIPO Digital Access Services (DAS), thereby enabling the priority documents to be made available electronically.

The WIPO CASE system allows patent offices to securely share, search and examine results related to patent applications in order to facilitate work sharing programs.

DAS authorizes applicants to request the first office (known as the Depositing Office or Office of First Filing) to make priority documents available to the system and then to request other offices (known as the Accessing Offices or Offices of Second Filing) to retrieve those documents via the service.

The Agreement also envisages the following activities;

·    improvement of IP business services that includes projects for digitalization, data capture and data quality improvement,

·         data exchange for the dissemination of IP information,

·         provision of business systems by WIPO for digitization,

·         document management, and

·         creation of national and/or regional IP databases.

The implementation of the aforesaid agreement will promote the CGPDTM as a depositing office for WIPO CASE, enabling the office to make available the search and examination reports of Indian Patent applications.

India: Copyright Office to be relocated

Source: copyright.gov.in

As reported in our IP News Alert dated April 03, 2017 and August 07, 2017 which can be accessed here and here, the Finance Act, 2017 as a part of its stride to reduce the number of Tribunals, merged the Copyright Board with the Intellectual Property Appellate Board.

In response to the above mentioned developments, the Copyright Office has released a Public Notice dated October 16, 2017 stating relocation of the Copyright Office to the Intellectual Property Office at New Delhi at the below address with effect from October 23, 2017 -

Boudhik Sampada Bhawan

Plot No. 32, Sector-14, Dwarka

New Delhi-110075

Ph: 011-25300200

The present move to bring all Intellectual Property Offices under one building is a welcome step, as it will bring a strong sense of efficiency back into the system and all the procedural hassles previously faced by an applicant will be done away with. As recently as last year, the Government of India announced that Copyright and Semi-Conductors are to be brought under the ambit of the Department of Industrial Policy and Promotion. Such a transfer had the consequence of consolidating all IP related functions under one body, and instill a certain sense of uniformity in decision making at national and international levels. Before such a move Copyright was under the preview of the Human Resource Development Ministry.

The Public Notice dated October 16, 2017 can be accessed here.

India: Copyright Office gets digitized

September 18, 2017                                                                                                           New Delhi

In an attempt to make India digitized and improving transparency, the Copyright Office would be publishing, on its website, applications for registration, particulars of work entered under section 45, correction of every entry made in the Register under section 49 and rectification order under section 50 of the Copyright Act, 1957.

The online availability of the aforesaid information in respect of Copyright applications would provide opportunity to the public at large to view such information which was earlier viewable only on inspection of register at the Copyright Office and thereby improve transparency.

Through a public notice the Copyright Office stated that every publication shall be treated as a notice to every person who claims or has interest in the subject matter of Copyright or has dispute regarding the said application and the said application would be examined if no objection is received within 30 days.

The public notice further stated that, if no work or documents are received after issuance of notice then such application would be treated as abandoned.

The Copyright Office would be publishing the list of such applications on first Friday of every month.

Said public notice dated August 31, 2017 and September 01, 2017 are available here and here.

Right to Privacy: The Next Step Supreme Court on Data Privacy on Social Media

What is Data Privacy?

Data privacy is suitably defined as the appropriate use of data. When companies and merchants use data or information that is provided or entrusted to them, the data should be used according to the agreed purposes.[1] The necessity of maintaining strict data privacy is applicable most stringently to collected personal information, such as medical records, financial data, criminal records, political records, business related information or website data, but in an age when most personal information is voluntarily shared and accessible over broad-based social media platforms, the stringency of data privacy has become more relevant than ever in the context of shared personal data.

Why is Data Privacy Important?

With systematized digitisation of data, and modes of communications and transactions transitioning online, users are obliged to divulge personal details at every step in order to avail essential services. All of this information gets stored in huge databanks, reservoirs of the world’s personal data, and the user can never be sure who has or does not have access to these reservoirs of information. The only thing standing between a user and the unscrupulous exploitation of her/his divulged personal details is by governments, corporations or even criminal elements, is the nebulous world of data protection law.

As early as the 1960’s and 70’s, governments, government-affiliated, as well as private organizations had started tapping the resource that was the personal information of a large majority of the population of the world. This led to alarming questions about the collection and storage of such great quantities of personal data- Who had access to it? Was the information stored accurate? Was it being distributed without the knowledge of the persons involved? Could it be used for discriminating against them, or for abusing their rights?

From these concerns, data protection laws started getting formulated in the developed nations. Data protection laws now exist, in some form or other, in over 100 countries worldwide. But with the growing rise in online threats, such as hacking, ransomware, identity theft, e-commerce fraud, cyber-stalking, cyber-bullying, to name just a few, data privacy measures have become a priority security concern for the international community.

Data Privacy and Social Media

While the very idea of social media may seem like anathema to data privacy- social media relies on motivating users to voluntarily divulge and sharing personal information and media among diffuse groups of people- it is for this very reason that the need for data protection and privacy is becoming the greatest concern in this field.

Recently, widespread hacking and the compromising of user accounts across social media platforms have raised fears that the largest internet giants, prominently social networks, may be mining user information and selling them to third party entities to generate revenue and to promulgate targeted advertising.

Supreme Court’s Notice to Major Social Media Players

In Special Leave Petition 804/2017, more popularly called “the WhatsApp Case”, two students have challenged WhatsApp’s new privacy policy after it was acquired by Facebook. They claim that WhatsApp divulged user data to Facebook which violates the fundamental right to privacy, as recently pronounced by the nine-judge Constitution Bench of the apex court in the August 24 judgement in Justice K.S. Puttaswamy (Retd.) & Anr. vs. Union of India & Ors[2]. The five-judge bench presiding over this case issued notices to Google and Twitter, along with the Government of India, seeking their legal opinion on data sharing with cross-border corporate entities, which is currently not governed by any law in force in India. Facebook and WhatsApp, in the meantime, have been ordered to file sworn affidavits, testifying to not sharing user information with third parties. The two matters are to be heard in conjunction and have been listed for November 20, 2017.

The impact of the Right to Privacy judgement was keenly felt in the proceedings of the case which took place on September 6, with Ms. Madhavi Divan and Addl. Solicitor-General Tushar Mehta referring to the relevant paragraphs of the landmark judgement dealing specifically with protection of user data privacy, and the constitution of an expert committee, headed by former Supreme Court Justice, Shri B.N. Srikrishna, to deliberate upon the position of data protection law in India and present its recommendations. Senior counsel K.V. Vishwanath, appearing on behalf of one of the impleaded parties in the case, also stressed on the necessity of the apex court to create guidelines in the interim, before dedicated legislation is passed on the issue of data protection.

By means of this petition, petitioner Advocate-on-Record Pallav Mongia has challenged the constitutional validity of the Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data Or Information) Rules, 2011 as well as the clarification in this regard as issued by the Ministry of Communications and Information Technology on August 24, 2011.

The situation as it stands in India at present is that existing Indian data privacy laws do not apply to entities situated outside the country. This is worrisome as user data collected by major social media platforms are stored on servers and databanks located outside India, and therefore fall outside the purview of Indian jurisdiction. Moreover, the content, website and data generated on websites such as Facebook.com, Twitter.com or Google.com is controlled by the principal entities, Facebook Inc., Twitter Inc. and Google Inc., which are body corporates instituted and existing outside the reach of Indian law.

The user is caught in a trap, in such a situation. Privacy policies formulated by websites tend to be “take it or leave it” affairs, leaving the user facing the dilemma of completely surrendering her/his privacy, or not being permitted to use social media at all. Thus, while technically such user consent does constitute “informed consent”, it is extracted without leaving the user much room in terms of choice.

Recently, the problem of data leakage to cross-border international entities took on the scope of a national security concern when, in the apprehension of a possible war with China, the Ministry of Electronics and Information Technology doubled down on its scrutiny of Chinese smartphone manufacturers such as Oppo, Vivo, Xiaomi, Lenovo, Gionee as well as global players such as Apple and Samsung.

Conclusion

Source: https://yourstory.com/2017/07/data-privacy-protection-law-india-supreme-court/

In conclusion, given that more than 2.5 quintillion bytes of data are consumed every day, the risk of breaches in data privacy are higher than ever before and just as significant. It is becoming more and more imperative that the government treat this matter with as much seriousness as the Supreme Court has done and take active legislative steps to protect the data privacy of its citizens.

Additional References:

https://inc42.com/buzz/google-facebook-whatsapp-data-privacy/  

http://economictimes.indiatimes.com/news/politics-and-nation/have-set-up-a-panel-on-data-protection-centre-tells-sc/articleshow/60393654.cms  

http://www.legallyindia.com/views/entry/sc-asks-centre-social-media-websites-on-aor-s-petition-for-keeping-indians-data-in-india  

http://www.huffingtonpost.com/sam-cohen/privacy-risk-with-social-_b_13006700.html

https://business-law-review.law.miami.edu/social-media-privacy/

https://www.americanbar.org/publications/blt/2014/01/03a_claypoole.html

http://www.livelaw.in/scs-privacy-judgment-casts-shadow-whatsapps-data-sharing-policy-case/

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[1] https://blog.eiqnetworks.com/blog/bid/313892/the-difference-between-data-privacy-and-data-security, as accessed on September 13, 2017.

[2] WP (Civil) No. 494 of 2012.

Delhi High Court Switches Off Misuse Of Trade Mark “Syska” By Syska Mobile Semi-Conductors

Source : http://syskaledlights.com/

Recently, in the case titled as “Shree Sant Kripa Intellectual & Anr. Vs. Syska Mobile Semi-Conductors & Ors.” being CS (COMM) No. 559/2016, the Delhi High Court decreed the suit for infringement of the trade mark SYSKA and passing off, and copyright infringement in favour of the Plaintiffs and against the Defendants. The case was proceeded ex-parte against the Defendants, who did not appear in Court despite service.

The peculiar facts of the case are briefly stated as under:-

Brief facts and contentions of the Plaintiff-

·         The Plaintiff no.1 claimed to be a partnership firm and the partners of the Plaintiff no.1 firm are the directors of the Plaintiff no.2 company.

·         The Plaintiff no.1 firm claimed to be the proprietor of the trademark “SYSKA” and has issued licenses in favour of the Plaintiff no.2 company, authorising them to use the said trademark.

·         The Plaintiff no.1/firm is claimed to have been constituted in the year 2013 and is stated to be in the business of manufacturing, selling and distributing LED light products, mobile phone accessories, services pertaining to downloading of movies on telephones, insurance of mobile phone etc. The main object of the said firm is stated to be to develop and maintain intellectual properties, i.e., trademark, copyright, design, patent etc. and to license the same to its associate entities. The Plaintiff no. 1/firm has devised various marks such as "SYSKA", "SYSKA LED light years ahead", "SYSKA LED" lounge, "SYSKA ACCESSORIES", "SYSKA gadget secure" etc.

·         The trademark “SYSKA” is stated to have been adopted in the year 2013 by the predecessors-in-interest of the Plaintiff no.1 and assigned to it along with other pending trademark applications, and the Plaintiff no.1 firm has sought substitution of its name in the records of the Registrar of Trademarks.

·         The Plaintiff no.1 firm also claims to have copyright registrations in the trademarks, "SYSKA ACCESSORIES" and "SYSKA LED LIGHT YEARS AHEAD" and it claims to have filed various trademark applications.

·         The Plaintiffs are claimed to have sold LED light products worth approximately INR 300 crores / INR 3 Billion (Approx. USD 46.2 Million*). The licensees of the Plaintiff no.1 are further stated to have sold mobile accessories worth INR 68 crores / INR 0.68 Billion (Approx. USD 10.4 Million*). The Plaintiffs are further stated to have spent considerable amounts in advertising and publishing the trade mark SYSKA and its logo.

·         The Plaintiffs contended that the trademark SYSKA has become a household name and that the people associate the said mark exclusively with the Plaintiffs and its associated entities.

Defendants’ Activities

·  The Defendants are alleged to have hosted a website under the domain name, www.syskamobilecorporation.com, and are allegedly using the Plaintiff’s SYSKA logo on the said website and are claiming to have offices in Dubai, Taiwan, etc.

·         It is further alleged that upon investigation, it was found that the Defendants are making such claims with the ulterior motive to cheat the public and cause damage to the Plaintiffs' reputation.

·         It is alleged by the Plaintiffs that the Defendants are involved in the business of providing employment to youngsters after charging huge fees and are engaging in the practice of assuring employment in the Plaintiffs' firms/companies. The Plaintiffs are stated to have received information that the Defendants had approached various institutions like K.N. Modi Foundation etc. seeking campus placements. It is alleged that such representations made by the Defendants are false to their knowledge as the Plaintiffs have never authorised them for making such representations.

·         The Defendants are alleged to have illegally adopted their trade name, SYSKA for undertaking their activities, including printing t-shirts with the logo and mark, which is identical to the Plaintiffs' logo. Adoption of the said trademark/trade name by the Defendants is alleged to be with the motive of deceiving the public at large.

Decision of The Court

Vide its order dated April 06, 2015, the Delhi High Court had granted an ex-parte ad interim injunction in favour of the Plaintiffs and against the Defendants. The Court had further appointed two Local Commissioners to visit the premises of the Defendant nos. 1 and 2.

Further, since the Defendants did not appear despite service, they were proceeded ex-parte.

Also, the request of the counsel for the Plaintiffs for giving up the prayers for order for damages and order for delivery up of infringing material was accepted by the Court.

The Plaintiffs filed their ex-parte evidence and proved their averments as well as copies of the Copyright registrations in favour of the Plaintiffs. The Plaintiffs further proved that the Plaintiffs' trademark SYSKA is being advertised through the medium of television and magazine. They have also proved the screen shots taken from the Defendants’ website www.syskamobilecorporation.com, and the business activities of the Defendants.

After hearing the Plaintiffs as well as having perused the papers, the Court was of the view that due to extensive use over substantial period of time, the Plaintiffs' trademarks SYSKA and SYSKA logo have acquired reputation and goodwill in India.

The Court, on the basis of the evidence on record, held that the Defendants have been blatantly using the Plaintiff’s name and logo on their website, amounting to unauthorised reproduction of the Plaintiffs’ trademark and copyrighted logo.

Further, as per well settled law laid down by the Supreme Court of India, the Delhi High Court held that as the Plaintiffs' evidence has gone unrebutted, said evidence is accepted as true and correct.

Consequently, the Court accepted the allegation that the trademark and logo pertaining to the name SYSKA being used by Defendants on their website amounts to infringement of the Plaintiffs' copyright, and, use of illegal trade activities by the Defendants is bound to cause incalculable losses, harm and injury to the Plaintiffs and immense public harm. Accordingly, the suit was decreed for permanent injunction for infringement of the trade mark SYSKA and its variations, in favour of the Plaintiff along with the actual costs including lawyers’ fees, local commissioner’s fee as well as the amounts spent on purchasing the court fees. It may be pertinent to note here that the Plaintiffs gave up their prayers pertaining to delivery up of all infringing material and for damages of INR 5 Crores / INR 50 Million (Approx. USD 772,022*).

*@1 USD = 64.91 INR

India: Calcutta High Court decides when a Design can be stated to be anticipated by prior known designs

Source : http://calcuttahighcourt.nic.in/

Recently, in the case of  T.K Shawal Industries Pvt. Ltd. vs. The Controller Of Patents And Designs & Ors., the Calcutta High Court was approached in appeal by T.K Shawal Industries Pvt. Ltd. (hereinafter referred to as the ‘Appellant’) against the order of the Controller (hereinafter referred to as the ‘Defendants’) dated January 20, 2016.

Facts

Kay Cee Exports, had registered a scarf design under Class 02-05 bearing number 252082 dated March 5, 2013 with the Indian Patent Office. The novelty was claimed to be residing in the surface pattern of the scarf. The Controller after verification and satisfaction issued a certificate of registration of the aforesaid design.

A petition for cancellation of the registered design No. 252082, for ‘scarf’ was filed on February 12, 2014 under Section 19 of the Designs Act, 2000 (hereinafter referred to as the ‘Act’) by the Appellant.

Further, on January 20, 2016, the Deputy Controller had rejected the cancellation petition of the registered design.

Issues

The design registration was challenged on four grounds available for cancellation under Section 19 of Designs Act, 2000 namely –

a)      that it has been published prior to the date of registration;

b)      that the design is not a new or original design;

c)      that the design is not registerable under the Act;

d)     that it is design is not distinguishable from designs or combination of known design.

Contentions of the Appellants

·      It was claimed that the design registered was capable of being anticipated by prior known designs.

·   The Appellant stated that it was also engaged in similar line of activities as the design registrant i.e. Kay Cee Exports. The Appellant also furnished on record copies of its invoices and shipment details of shawls of similar designs being exported to different countries, all dated prior to the registration date of the scarf design.

·     It was further claimed that the design lacked novelty since the surface pattern applied to the impugned design was nothing but combination of already known designs. There is no novelty in the surface pattern of the scarf which is the subject matter of the impugned design registration.

·      The Appellant referred to the decision of the Learned Single Judge in the case of Wimco Limited Vs. Meena Match Industries reported at 1983 (3) PTC 373 (Del) Paragraphs 11, 12, and 13 in support of the submission that the registered impugned design was well-known and published prior to the date of application of the design of Kay Cee Exports.

·    A reference was made to the decision in the case of ITC Limited vs. Controller of Patents & Designs, where it was held that an idea may be potentially capable of registration but it has to be reduced into a visible form to be identified with.

·       Furthermore, he also referred to the case of Anuradha Doval vs. The Controller of Patents & Designs & Ors., where the Calcutta High Court had the occasion to consider what would constitute prior publication. The Court had said that “if a document is to constitute prior publication, then a reader of it, possessed ordinary knowledge of the subject, must from his reading of the document be able, at least, to see the design in his minds eye and should not have to depend on his own originally to construct the design from the ideas which the document may put into his head.”

Contentions of the Respondents

·      The Respondents when presiding over the cancellation petition perused the evidence on record and reached a finding that none of the documents and/or invoices referred to the impugned design shows any prior publication of the design.

·     The Respondents also examined other documents to decide if the registered design could be considered as devoid of newness. Each of the said documents were scrutinized and the finding of the Respondents was that the pictures show variety of dresses including scarves in different color and pattern but none of these documents ascertain the details of the publication and the source of said documents.

·    The Respondents  relied on the decision of the Delhi High Court in the case of Hello Mineral Water Pvt. Ltd. Vs. Thermoking California Pure reported at 2000 (20) PTC 177 for determining as to whether novelty could be claimed of the surface pattern.

·    The Respondents found that none of the documents /invoices showed any prior publication of the design. It appeared that the articles covered under the said invoices only relate to 'shawls' and not to 'scarfs' especially when they fall under different class of goods.

Decision of the Court

• Justice Soumen Sen of the Calcutta High Court heard the matter and observed that the invoices and shipment details attached by the Appellant were pertaining to sale of shawls which is a different article from scarfs and fall under different class of goods under the Design Act, 2000. Therefore, the cancellation petition was dismissed.
• In absence of any cogent evidence to show that the pattern disclosed in the application for registration is taught by a prior published document, the findings of the Controller who is an expert in the field do not call for any interference.