Monday, May 16, 2016


The Patent (Amendment) Rules, 2016 have been notified with effect from May 16, 2016. The salient feature of the Rules are as follows:

1. It is now possible to delete the no. of claims while filing the PCT national phase application in India (as this amendment only allows deletion of claims, amendment of claims can only be made after filing of national phase)

2. Timeline for putting application in order for acceptance has been reduced to 6 months from 12 months earlier. A further extension of 3 months would be made available on filing of request for extension.

3. Where India has been indicated as ISA or IPEA, it is possible to file expedited request for examination on Form 18A. The fee for expedited request for examination is INR 8000 for natural person and start ups, INR 25000 for Small entity, and INR 60000 for other entity, and this request can only be filed online.

4. Also in case of start up a request for expedited examination could be filed on Form 18A and fee payable shall be INR 8000.

5. It is possible to turn the earlier request for examination to expedited request, by paying the balance requisite fee (exceeding the normal examination fee).

6. However, Application is not yet published or not request for early publication is filed, the request for expedited examination shall be filed along with request for publication.

7. An obligation has been cast on the Controller to Dispose off the Application within 3 months of filing of last response or final date of acceptance, whichever earlier.

8. Startups shall be allowed to pay the discounted official fee as payable by natural person, where the invention is filed by startup alone or with natural person/s.

9. A new Form 1 has been issued and it shall bear a unique Identification no. allotted to Applicant (as is being done in case of Trademarks).

10. For claiming startup status, a duly notartised affidavit may be required for non-Indian entity.
  

Friday, July 10, 2015

Supreme Court clarifies Suit section 62 of the Copyright Act or section 134 of the Trade Marks Act to be filed plaintiff is residing or carrying on business if cause of action wholly or partly has also arise there

Supreme Court  in Indian Performing Rights Society Ltd. vs. Sanjay Dalia held that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner and clarified that if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place.

The Court observed that under Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, an additional forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases.

The Court held that the expression “notwithstanding anything contained in the Code of Civil Procedure” does not oust the applicability of the provisions of section 20 of the Code of Civil Procedure and it is clear that additional remedy has been provided to the plaintiff so as to file a suit where he is residing or carrying on business etc., as the case may be. Section 20 of the Code of Civil Procedure enables a plaintiff to file a suit where the defendant resides or where cause of action arose. Section 20(a) and section 20(b) usually provides the venue where the defendant or any of them resides, carries on business or personally works for gain. Section 20(c) of the Code of Civil Procedure enables a plaintiff to institute a suit where the cause of action wholly or in part, arises. The Explanation to Section 20 C.P.C. has been added to the effect that Corporation shall be deemed to carry on business at its sole or principal office in India or in respect of any cause of action arising at any place where it has subordinate office at such place. Thus, ‘corporation’ can be sued at a place having its sole or principal office and where cause of action wholly or in part, arises at a place where it has also a subordinate office at such place.

On a due and anxious consideration of the provisions contained in section 20 of the CPC, section 62 of the Copyright Act and section 134 of the Trade Marks Act, and the object with which the latter provisions have been enacted, it is clear that if a cause of action has arisen wholly or in part, where the plaintiff is residing or having its principal office/carries on business or personally works for gain, the suit can be filed at such place/s. Plaintiff(s) can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he/they are residing or any one of them is residing, carries on business or personally works for gain. However, this right to institute suit at such a place has to be read subject to certain restrictions, such as in case plaintiff is residing or carrying on business at a particular place/having its head office and at such place cause of action has also arisen wholly or in part, plaintiff cannot ignore such a place under the guise that he is carrying on business at other far flung places also. The very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is the convenience of the plaintiff. The rule of convenience of the parties has been given a statutory expression in section 20 of the CPC as well. The interpretation of provisions has to be such which prevents the mischief of causing inconvenience to parties.


The intendment of the aforesaid provisions inserted in the Copyright Act and the Trade Marks Act is to provide a forum to the plaintiff where he is residing, carrying on business or personally works for gain. The object is to ensure that the plaintiff is not deterred from instituting infringement proceedings “because the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence”. The impediment created to the plaintiff by section 20 C.P.C. of going to a place where it was not having ordinary residence or principal place of business was sought to be removed by virtue of the aforesaid provisions of the Copyright Act and the Trade Marks Act. Where the Corporation is having ordinary residence/principal place of business and cause of action has also arisen at that place, it has to institute a suit at the said place and not at other places. The provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act never intended to operate in the field where the plaintiff is having its principal place of business at a particular place and the cause of action has also arisen at that place so as to enable it to file a suit at a distant place where its subordinate office is situated though at such place no cause of action has arisen. Such interpretation would cause great harm and would be juxtaposed to the very legislative intendment of the provisions so enacted.

In our opinion, in a case where cause of action has arisen at a place where the plaintiff is residing or where there are more than one such persons, any of them actually or voluntarily resides or carries on business or personally works for gain would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain.

At the same time, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have removed the embargo of suing at place of accrual of cause of action wholly or in part, with regard to a place where the plaintiff or any of them ordinarily resides, carries on business or personally works for gain. We agree to the aforesaid extent the impediment imposed under section 20 of the CPC to a plaintiff to institute a suit in a court where the defendant resides or carries on business or where the cause of action wholly or in part arises, has been removed. But the right is subject to the rider in case plaintiff resides or has its principal place of business/carries on business or personally works for gain at a place where cause of action has also arisen, suit should be filed at that place not at other places where plaintiff is having branch offices etc.

There is no doubt about it that the words used in section 62 of the Copyright Act and section 134 of the Trade Marks Act, ‘notwithstanding anything contained in CPC or any other law for the time being in force’, emphasise that the requirement of section 20 of the CPC would not have to be complied with by the plaintiff if he resides or carries on business in the local limits of the court where he has filed the suit but, in our view, at the same time, as the provision providing for an additional forum, cannot be interpreted in the manner that it has authorised the plaintiff to institute a suit at a different place other than the place where he is ordinarily residing or having principal office and incidentally where the cause of action wholly or in part has also arisen. The impugned judgments, in our considered view, do not take away the additional forum and fundamental basis of conferring the right and advantage to the authors of the Copyright Act and the Trade Marks Act provided under the aforesaid provisions.

The Supreme Court further refuting the submission of the Appellant observed that it is settled proposition of law that the interpretation of the provisions has to be such which prevents mischief. The said principle was explained in Heydon’s case [76 ER 637]. According to the mischief rule, four points are required to be taken into consideration. While interpreting a statute, the problem or mischief that the statute was designed to remedy should first be identified and then a construction that suppresses the problem and advances the remedy should be adopted.
The rule was explained in the Bengal Immunity Co. v. State of Bihar [AIR 1955 SC 661] by S.R. DAS, CJI as follows: “It is a sound rule of construction of a statute firmly established in England as far back as 1584 when Heydon’s case (supra) was decided that for the sure and true interpretation of all Statutes in general (be they penal or beneficial, restrictive or enlarging of the common law) four things are to be discerned and considered:

1st - What was the common law before the making of the Act?
2nd - What was the mischief and defect for which the common law did not provide?
3rd - What remedy the Parliament hath resolved and appointed to cure the disease of the commonwealth, and
4th - The true reason of the remedy;

Considering the first aspect of aforesaid principle, the common law which was existing before the provisions of law were passed was section 20 of the CPC. It did not provide for the plaintiff to institute a suit except in accordance with the provisions contained in section 20. The defect in existing law was inconvenience/deterrence caused to the authors suffering from financial constraints on account of having to vindicate their intellectual property rights at a place far away from their residence or the place of their business. The said mischief or defect in the existing law which did not provide for the plaintiff to sue at a place where he ordinarily resides or carries on business or personally works for gain, was sought to be removed. Hence, the remedy was provided incorporating the provisions of section 62 of the Copyright Act. The provisions enabled the plaintiff or any of them to file a suit at the aforesaid places. But if they were residing or carrying on business or personally worked for gain already at such place, where cause of action has arisen, wholly or in part, the said provisions have not provided additional remedy to them to file a suit at a different place. The said provisions never intended to operate in that field. The operation of the provisions was limited and their objective was clearly to enable the plaintiff to file a suit at the place where he is ordinarily residing or carrying on business etc., as enumerated above, not to go away from such places. The Legislature has never intended that the plaintiff should not institute the suit where he ordinarily resides or at its Head Office or registered office or where he otherwise carries on business or personally works for gain where the cause of action too has arisen and should drag the defendant to a subordinate office or other place of business which is at a far distant place under the guise of the fact that the plaintiff/corporation is carrying on business through branch or otherwise at such other place also. If such an interpretation is permitted, as rightly submitted on behalf of the respondents, the abuse of the provision will take place. Corporations and big conglomerates etc. might be having several subordinate offices throughout the country. Interpretation otherwise would permit them to institute infringement proceedings at a far flung place and at unconnected place as compared to a place where plaintiff is carrying on their business, and at such place, cause of action too has arisen. In the instant cases, the principal place of business is, admittedly, in Mumbai and the cause of action has also arisen in Mumbai. Thus, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act cannot be interpreted in a manner so as to confer jurisdiction on the Delhi court in the aforesaid circumstances to entertain such suits. The Delhi court would have no territorial jurisdiction to entertain it.

The avoidance of counter mischief to the defendant is also necessary while giving the remedy to the plaintiff under the provisions in question. It was never visualised by the law makers that both the parties would be made to travel to a distant place in spite of the fact that the plaintiff has a remedy of suing at the place where the cause of action has arisen where he is having head office/carrying on business etc. The provisions of the Copyright Act and the Trade Marks Act provide for the authors/trade marks holders to sue at their ordinary residence or where they carry on their business. The said provisions of law never intended to be oppressive to the defendant. The Parliamentary Debate quoted above has to be understood in the manner that suit can be filed where the plaintiff ordinarily resides or carries on business or personally works for gain. Discussion was to provide remedy to plaintiff at convenient place; he is not to travel away. Debate was not to enable plaintiff to take defendant to farther place, leaving behind his place of residence/business etc. The right to remedy given is not unbriddled and is subject to the prevention of abuse of the aforesaid provisions, as discussed above. Parliament never intended that the subject provisions to be abused by the plaintiff by instituting suit in wholly unconnected jurisdiction. In the instant cases, as the principal place of business is at Mumbai the cause of action is also at Mumbai but still the place for suing has been chosen at Delhi. There may be a case where plaintiff is carrying on the business at Mumbai and cause of action has arisen in Mumbai. Plaintiff is having branch offices at Kanyakumari and also at Port Blair, if interpretation suggested by appellants is acceptable, mischief may be caused by such plaintiff to drag a defendant to Port Blair or Kanyakumari. The provisions cannot be interpreted in the said manner devoid of the object of the Act.

The Court further refuted the argument that Heydon’s rule is not applicable where the words of the statute are clear. Reliance has been placed on M/s. Hiralal Rattanlal etc. etc. v. State of U.P. and Anr. etc. [1973 (1) SCC 216] in which it has been observed that when the provision is unambiguous and if from the provision legislative intent is clear, the court need not call into aid the other rule of construction of statutes such as that of ‘mischief’. The Court opined that when two interpretations are possible, the court has to adopt the one which furthers the object as provided in the statute itself.


Court opined that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above.

Tuesday, June 23, 2015

NOTICE FOR SUSPENSION OF CLEARANCE OF INFRINGING GOODS

The Intellectual Property Rights (Imported Goods) Enforcements Rules 2007 allows registration of notice for suspension of clearance of infringing goods by Indian custom authorities, but rarely this notice is registered by Registered Proprietor/ Owners of Intellectual property rights (Right Holder).

Registration of notice allows the IP owner protection against import of infringed goods especially in case of Copyrights, Trademarks and Designs. Though Patents are also covered but they involve more technicality and expertise as compared to other IP rights. The period of protection is minimum one year unless any shorter period is demanded by the right holder.

The notice is to be filed along with certified copy of the IP right, Annexure containing details of Right Holder's rights as well as grounds for registration of notice and prescribed fee of INR 2000. An indemnity bond along with surety bond is to be supplied along with the request. Where such request is filed through an Attorney, POA should be supplied. 

Wherever required, the custom office may demand photographs or sample of the product/article/work (IP right). Where information is not provided in requisite format the Custom office may demand same from the Right holder.

Within 30 days of filing of such notice or providing of requisite information/details as demanded by custom authorities, the custom authorities have to either register such request or reject it. Once registered, the custom office shall inform the validity period of the notice, which is minimum of one year unless any shorter period is sought by right holder. Once notice is registered, the custom office notifies all custom offices covered under said notices.


Once any import of goods is suspended, the Custom office informs the right holder as well  as importer about such suspension with reasons for such suspension.


Where within 10 working days from the date of suspension of imported goods, the Right holder does not join the proceeding, the custom office may decide the matter on merit. The time limit may be extended by 10 working days by custom offices in appropriate cases.


The right holder and importer are allowed to examine the goods, even representative samples for examination, testing and analysis where felt necessary. 


Where the right holder joins the proceedings and the goods are found to be infringing the IP rights the custom officials can seize such goods. Under intimation to right holder, the seized goods would be destroyed under official supervision or disposed outside normal trading channel by custom authorities  and after obtaining NOC or concurrence from the right holder. The right holder may oppose to manner/mode of disposal by custom authorities within 20 day of information. The cost towards detention and destruction shall be borne by the right holder.


Goods of non-commercial nature contained in personal baggage or sent in small consignments for person use does not come under the purview of these regulations. 


However, in case of perishable goods such time limit is only 3 working days, further extendible to 4 working days where custom officials are satisfied and same does not affect the condition of goods.

Monday, June 22, 2015

Notice of Provisional Refusal by Indian Trade marks Registry

Since last few months Indian Trade marks Registry has commenced examination of Madrid Registration designating India. Where the Registry has any objection to the Trademark a  provisional refusal report is issued by IRDI Section and forwarded to WIPO and then WIPO notifies the Right Holder. The registry normally issues the notice of provisional refusal to WIPO within a week of issuance of same and within 15 days of receipt WIPO dispatches the notice to right holder vide registered mail.

The deadline to respond to provisional refusal is one month from the date of receipt of notice of provisional refusal by the Holder or his legal representative. The response to provisional refusal is required to be filed through an Agent (either a Trademark Agent or an Advocate) or through a representative, having address within territory of India.

A response to provisional refusal or request for reconsideration of provisional refusal, evidence in support of prior use of Trademark in India by way of Owner's Affidavit, or limiting the scope of protection or a request for hearing can be sought the Agent/ Attorney/ Representative.

Unlike the typical examination reports issued to Applicants in India, the notice of provisional refusal by Trademark Registry also provides in detail the essential provision under the Indian Trademarks Act as well as information relating to subsequent procedure.

Overall Madrid system is advantageous as Indian Trade Marks registry is not levying extra fee per additional character where description exceeds 500 characters (excluding space), though those who file Application with Indian Trade Marks registry have to pay such fee. Further, it is unclear if similarly any objection as to requirement of association would be raised by the Trade Marks registry, where right holder is also applicant/ registered proprietor of an earlier mark.

Above practices of subjecting the Indian Applicant to extra fee, clearly amounts to discrimination by Trade Marks Registry and accordingly the Sub Rule 16 of Rule 25 of the Trademark Rules, 2002 is liable to be struck down.


Friday, January 2, 2015

Design (Amendment) Rules 2014 Notified

Design (Amendment) Rules 2014 have been notified with respect from December 30, 2014 and similar to Patents Act,  three categories of Applicants have been introduced i.e. Natural Person, Small entity and other entity.  For claiming small entity status Form 24 has to be filed (similar to Form 28 under Patents Act). The fee payable by small entity is twice that of payable by a natural person and the fee payable by other entity is 4 times that of payable by a natural person.

Small entity means an entity whose investment in plants/ machines in case indulged in manufacturing/ production of goods is less than 10 crores (approx. 1.6 Millions US Dollars, RBI  reference rate shall prevail) and in case indulged in service industry the investment in equipment is less than 5 crores (approx 0.8 Million US Dollar RBI  reference rate shall prevail). It is to be noted that while calculating investment in plants and machinery, the cost of pollution control, research and development, industrial safety devices, and such other things specified under THE MICRO, SMALL AND MEDIUM ENTERPRISES DEVELOPMENT ACT, 2006 is to be excluded.

In case of foreign entity an affidavit duly executed and notarised could be filed along with Form 24 to claim the small entity status, such document should be filed along with every document for which a fee is specified. 

Where an Applicant is transferred to small entity or other entity, respective difference in scale of fee is to be paid. 

Friday, August 8, 2014

Trademark (Amendment) Rules 2014 notified

The Trademark (Amendment) Rules 2014 have been notified and w.e.f. August 1, 2014, the Govt fee for filing Trademark Application in India has been increased to INR 4000 from earlier 3500. There is approx 15% increase in Govt. fee towards filing Now. Earlier in December 2010 the Govt fee was increased from INR 2500 to INR 3500.

Further, the Govt fee towards express examination has also been increased from INR 17500 to INR 20000.

Sunday, March 16, 2014

Supreme Court held that Registration of FIR is mandatory under Section 154 of the Code, if the information discloses commission of a cognizable offence and no preliminary inquiry is permissible in such a situation

While considering under Section 32 of Constitution of India in Criminal Writ Petition no. 68 of 2008 titled Lalita Kumari Vs. State of UP & Ors. as to whether “a police officer is bound to register a First Information Report (FIR) upon receiving any information relating to commission of a cognizable offence under Section 154 of the Code of Criminal Procedure, or the police officer has the power to conduct a “preliminary inquiry” in order to test the veracity of such information before registering the same?” and in view of the conflicting decisions of Supreme Court on the issue, larger bench (5 Judge Bench) of the Supreme Court held that

(i) Registration of FIR is mandatory under Section 154 of the Code, if the information discloses commission of a cognizable offence and no preliminary inquiry is
permissible in such a situation.

(ii) If the information received does not disclose a cognizable offence but indicates the necessity for an inquiry, a preliminary inquiry may be conducted only to ascertain whether cognizable offence is disclosed or not.

(iii) If the inquiry discloses the commission of a cognizable offence, the FIR must be registered. In cases where preliminary inquiry ends in closing the complaint, a copy of the entry of such closure must be supplied to the first informant forthwith and not later than one week. It must disclose reasons in brief for closing the complaint and not proceeding further.

(iv) The police officer cannot avoid his duty of registering offence if cognizable offence is disclosed.  Action must be taken against erring officers who do not register the FIR if information received by him discloses a cognizable offence.

(v) The scope of preliminary inquiry is not to verify the veracity or otherwise of the information received but only to ascertain whether the information reveals any cognizable offence.

(vi) As to what type and in which cases preliminary inquiry is to be conducted will depend on the facts and circumstances of each case. The category of cases in which preliminary inquiry may be made are as under:
(a)Matrimonial disputes/ family disputes
(b)Commercial offences
(c) Medical negligence cases
(d)Corruption cases
(e) Cases where there is abnormal delay/laches in initiating criminal prosecution, for example, over 3 months delay in reporting the matter without satisfactorily explaining the reasons for delay.

The aforesaid are only illustrations and not exhaustive of all conditions which may warrant preliminary inquiry.

(vii) While ensuring and protecting the rights of the accused and the complainant, a preliminary inquiry should be made time bound and in any case it should not exceed 7 days. The fact of such delay and the causes of it must be reflected in the General Diary entry.

(viii) Since the General Diary/Station Diary/Daily Diary is the record of all information received in a police station, we direct that all information relating to cognizable offences, whether resulting in registration of FIR or leading to an inquiry, must be mandatorily and meticulously reflected in the said Diary and the decision to conduct a preliminary inquiry must also be reflected, as mentioned above.