India – 10 Key IP cases and developments of 2018

  1. Patent office take steps for being a Smart Office:

    The Indian Patent and Trademarks Offices have considered the need to build efficiency adapting technology to make prosecution quicker. Towards achieving this objective, both offices have now started to provide option of conducting hearing through video conferencing. In addition to this, the Controller General of Patents, Designs and Trademarks has also invited tenders for the services artificial intelligence, Blockchain, IoT and ‘other latest technologies’, useful for Patent Processing system of IPO.

  2. Making working Statement simpler for granted Patents:

    The current structure of Form 27 relating to the submission of working statement of the Patent to be filed by the Patentees and licensees every year on or before 31st March has been subject of intense debate. The issue came up before the Delhi High Court as part of public interest petition to bring to the court’s attention that working statements are either not being filed or complete information is not being disclosed by the Patentees under  garb of it being confidential. The Court directed the Patent Office to take appropriate steps required for effecting the necessary modification in the Form 27. Hopefully a new form will be rolled out as the process of public consultation on this issue has been completed.

  3. First ever fast track full trial decision on “Standard Essential Patent” provided much needed clarity:

    The Delhi High Court’s decision determining infringement of the Patent owned by Philips over DVD technology that were declared as Standard-Essential Patent (SEP) by European Patent office and US, caught lot of attention as the case has been first SEP case decided after a fast track full trial. The suit concerned DVD video player technology over which Philips has claimed Patent rights. The defendants were importing DVD player components and assembling them in India. The court considered that the plaintiff is seeking royalty at FRAND terms. It recognized Philips claim and ordered payment of royalties. A decree of punitive damages to the tune of ₹5 lakhs (approx US $ 7000) was also passed in favour of plaintiff.

  4. Monsanto looses its patent over genetically modified cotton seeds:

    This was an important decision of 2018 where two judges bench (Division Bench) of the Delhi High Court declared Monsanto’s patent on ‘Bt Cotton technology’ as invalid on the basis of section 3(j) of Indian Patent Act, which prohibits the grant of patents for plants, plant varieties or seeds or any part thereof. The broad interpretation of term ‘essentially biological process” has come under severe criticism and has been termed as erroneous. Monsanto filed an appeal before the Supreme Court (apex court) challenging the decision. However, the Supreme Court did not grant any interim relief to Monsanto. In other words, refused to stay the order of the High Court.  The Appeal is likely to be decided during this year.

  5. No seizure of imported goods infringing Patent:

    With the introduction of Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018, the government has specifically excluded from the ambit of Rules, seizure of any imported goods that infringe a Patent. The Custom authority realizing the complexity of such determination took this decision which has been subject of intense debate previously in a case concerning dual SIM technology. The new Rules are now confined to trademarks, copyright, Design and Geographical Indications.

  6. IPO proposes preference to Women for expedited examination:

    The Indian Patent Office has released draft amendment rules on December 4th The majority changes are to expedite examination of the applications and the provision of having the bench of controller/s for deciding pre-grant opposition matters in contrast to the single controller as per the existing practice. With respect to expediting the prosecution of the patent applications according to the current practice, the examination can be expedited only if the applicant was a start-up company or India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application. As per the proposed rules, more patent applicant/s will be able to request for expedited examination. The provision can now be availed by women applicant/s, Government undertaking/organizations and by the applicants that are eligible under agreement between Indian Patent Office with another participating patent office.

  7. Intermediaries come under fire on safe harbor provisions:

    The court recently examined the practices followed by e-commerce portals in selecting and enrolling sellers on their platform. Further, it examined if such practices made them an active participant as opposed to being an Intermediary. The brand owners Christian Louboutin SAS, Luxottica Group, Skullcandy Inc. and L’oreal in different cases questioned the role of e-commerce operator in controlling sale of counterfeit goods on their platform. The Court while examining the procedure followed by e-commerce portals in enrolling the seller and executing the order placed on the platform culled out 26 tasks which if performed (most or all), by online marketplace in course of their business, would take them out the ‘safe harbor’ of Section 79 of IT Act, 2000 and render them active participant. In other words, they will no longer be treated as intermediaries in online transactions between buyer and seller.

    Thus, liable for unlawful act/activities including IP violations. The judgment reinforces that stricter measures are needed for curbing sale of counterfeit products on online marketplaces/portals which is a growing menace.

  8. No protection to Christian Louboutin ‘red colour’ :

    While Christian Louboutin had a favourable decision from European Court of Justice (ECJ), in similar circumstances, the High Court of Delhi dismissed its claim of exclusivity in the red colour for shoe sole on the ground that a single colour cannot be granted protection as a trademark. The ruling came in the context of a suit for trademark infringement and passing off filed by Christian Louboutin against a Mumbai based party, namely Abubaker & Ors., who were selling ladies footwear with the similar red soles. Interestingly, decision was in contrast to an earlier finding by another judge of the Delhi High Court holding ‘red sole’ of Christian Louboutin to be a well known mark. The judge primarily based its ruling on definition of a “mark” holding that a ‘mark’ under the Indian Trademark Act {Section 2(m)} categorically used the expression ‘combination of colours’. Thus a single colour does not qualify as a mark.

  9. Amway obtains ‘John Doe’ order to curb unauthorised sale:

    The ‘John Doe’ orders have been commonly granted by the Indian courts in case of online piracy in music, film and software industry. The John Doe orders have also been granted in case of counterfeiting of products where the problem is widespread and identity of traders could not be determined. This is the first time ‘John Doe’ orders have been granted in case of goods being sold outside the distribution chain where they were meant for direct sales. Amway while obtaining the orders argued that pursuant to investigation they have found a number of parties selling their products illegally and without authorisation after removing the unique codes placed on the lid of the product. In some case even without issuing invoice and not providing the benefit of Return/Refund Policy that is likely to harm their reputation.

  10. Court clarifies a combined Design Infringement and passing off action is permissible :

    The issue of overlap between Design and Passing off has been clarified by the five judge bench of Delhi High Court in one of the recent judgement issued in the case titled Carlsberg Breweries versus Som Distilleries and Breweries Ltd. The suit was for infringement of a registered design as well as passing off in respect of bottle and overall get up of the “Carslberg” mark. The primary issue was whether a composite suit joining the two causes of action – one for infringement of a registered design and the other for passing off of the plaintiff’s goods bearing a deceptively similar get up is maintainable. The court allowed the joinder of the suit/s in such cases “on account of existence of common questions of law and fact between the two causes of action of infringement of a registered design and passing off, therefore to a considerable extent, the evidence of the two causes of action will be common. In such a situation to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in waste of time, money and energy of the parties and also of the courts.”

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