IPTome 2023
LEGISLATIVE UPDATES
PATENT CASE LAWS
DESIGN CASE LAWS
PLANT VARIETY CASE LAWS
TRADEMARK CASE LAWS
COPYRIGHT & PERSONALITY CASE LAWS
GEOGRAPHIC INDICATION CASE LAWS
CYBER & DIGITAL CASE LAWS
K&S Partners’ Trademark Practitioners Recognized in WTR 1000
K&S Partners is proud to announce its outstanding achievements in the World Trademark Review (WTR) 1000 2024 edition. The firm has been ranked as the prestigious ‘Gold Band’ for both “Prosecution and Strategy” and “Enforcement and Litigation,” reflecting its exceptional capabilities and results in these areas.
In addition, K&S’ attorneys, including Founder and Chairman, Jyoti Sagar, have received various individual recognitions.
- Founder and Chairman, Jyoti Sagar – ‘Recommended Individuals’ category
- Trademark Chair, Latha R Nair – Prosecution & Litigation (Gold)
- Partner, Practice Lead (Digital), Ashish Chang Marbaniang – Enforcement & Litigation as well as Prosecution & Litigation (Silver)
- Partner, Ashish Kanta Singh – Prosecution & Litigation (Silver)
- Partner, Prashant Gupta – Enforcement & Litigation (Silver)
- Senior Associate, Shatadal Ghosh – Enforcement & Litigation (Bronze)
The WTR’s analysis highlights K&S Partners’ “skilled, responsive, and creative” trademark prosecution, as well as the firm’s reliability, experience, and business-oriented approach. As per client feedback shared with WTR, “They (K&S Partners) are super organized, and we rarely have to chase them for updates or delivery of work. The team is very friendly and good fun to deal with. Their advice is clear and, on the rare occasion that they have made a mistake, they resolve it quickly and without a fuss. They are a world-class IP practice who we enjoy working with immensely.”
WTR 1000 is a unique guide that identifies the top trademark professionals in key jurisdictions around the globe. World Trademark Review undertook an exhaustive qualitative research project to identify the firms and individuals deemed outstanding in this critical practice area.
Please click here to view the WTR 1000 2024
About K&S Partners:
With six offices across India and a team of 140+ IP professionals, K&S Partners offers a full range of intellectual property rights management services to its clients across Trademarks, Patent, Copyright, Litigation, Geographical Indications, and Design practices. Founded in 1994, K&S Partners is an intellectual property boutique law firm with a focus on providing comprehensive legal solutions in the area of intellectual property rights. Celebrating over three decades of IP excellence, the firm has won several global and national accolades for its outstanding services. With a team of experienced attorneys and a strong commitment to excellence, K&S Partners has established itself as a leader in the field, serving clients across India and around the world.
Ravi Bhola and Amrish Tiwari are recognised IAM Global Leaders 2024!
Ravi Bhola and Amrish Tiwari are recognised IAM Global Leaders 2024!
To qualify for inclusion in IAM Global Leaders, individuals must be ranked in the gold tier of the IAM Patent 1000 – the market-leading annual directory that identifies the top law and attorney firms and individuals in the world’s most significant patent jurisdictions.
Kolkata High Court Rules GUI Capable of Design Registration in India
In UST Global (Singapore) Pte Ltd v The Controller of Patents and Designs and Anr, the Kolkata High Court set aside the order passed by the Assistant Controller of Patents and Designs (Controller). The Court held that the Controller’s refusal to grant design protection for UST Global (Singapore) Pte Ltd. (UST) GUI design of “Touch Screen”, a new surface ornamentation, was unsustainable. The Court ordered the Controller to consider the matter afresh and provide an opportunity to UST for a hearing.
On September 4, 2019, the Controller rejected the design registration for UST’s ‘touch screen’ GUI, stating that a GUI is only visible when the device is activated, and thus cannot be considered a design for an article. The Controller had also noted that GUIs are primarily created through software development, not industrial manufacturing processes.
Challenging the Controller’s order, UST appealed before the High Court on December 6, 2019, arguing that this order is erroneous as GUI is a software, an intellectual property, and an article of value, and hence capable of registration. Further, UST added that the design is original and has never been in the public domain. UST also added that GUI is a 2D design that is visible as soon as the display is turned on, without the need to touch the device vis-à-vis the design. Additionally, UST stated that a well-implemented GUI can positively influence customers in buying such products.
The Court agreed to the observations submitted by UST and further added that the process of application of the subject design i.e., GUI on the finished article is a mechanical and manual process that falls within the definition of “industrial process”. In support of this, the Court held that a software developer creates a source code for a GUI, which is embedded in micro-controllers and micro-processors and is displayed on the screen by electronically illuminating pixels. Therefore, the design is applied to the article by an industrial process and means. The Court considered the following judgments while dealing with the appeal:
- Gramophone Company Ltd. v Magazine Holder Company (1910) 27 R.P.C. 152;
- P. Ferrero and CSPA’s Application (1978) RPC 473;
- Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38; and,
- K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.
The Court passed the order on March 20, 2023, and directed the Controller to reconsider the matter afresh within three months from the order and provide an opportunity for UST to be heard.
This first-of-its-kind order deals with the design registration of GUIs in India. Orders like these give the confidence to file design registrations for GUIs in India.
Draft Patents (2nd Amendment) Rules 2024 to implement the changes enacted by the Jan Vishwas Act, 2023
The Ministry of Commerce and Industry announced the Draft Patents (2nd Amendment) Rules (draft Rules), 2024 on January 2, 2024.
The draft Rules propose to amend Section 120, 122, 123, and 124 of the Patents Act, 1970 (the Act), to implement the Jan Vishwas (Amendment of Provisions) Act, 2023, which decriminalized about 40 plus Indian legislations, including the Patents Act. Read our earlier update on this here.
Key Aspects of the draft Rules:
- Adjudication of Penalties: The draft rules establish a framework for the adjudication of penalties related to patent infringement, focusing on unauthorized patent claims (Section 120), failure to supply information (Section 122), and practices by non-registered patent agents (Section 123).
- Filing Complaints: The newly proposed Form 32 allows any person to file a complaint with the adjudicating officer against any violations of the above-listed provisions. The complaint must include a statement and supporting evidence. The adjudicating officer will assess the maintainability of the complaint, notify the alleged violator and provide them requisite time to file a reply statement along with Form 14.
- Hearing and Final Order: The adjudicating officer will conduct a hearing based on the complaint and the alleged violator’s response. If a violation or non-compliance of sections 120, 122 or 123, is confirmed, a final order will be passed within 3 months along with a suitable compensation as decided by the officer. The draft provides the factors to be considered by the adjudicating officer while adjudging the quantum of compensation.
- Appeals Process: Aggrieved parties can appeal against the adjudicating officer’s order under section 124A of the Jan Vishwas Act.
- Appeals Time period: Appeals can be filed with appellate authority within 60 days on Form 33, extendable by one additional month. The appeal should include grounds of appeal along with a copy of the order of the adjudicating officer.
- Procedure for Appeals: After registering the appeal, the appellate authority will notify the adjudicating officer, who must reply within 21 days. Both parties will present their arguments during the hearing, after which the appellate authority may confirm, modify, or annual the original decisions, or order a re-evaluation. Wherever possible, the proceedings should be concluded within six months.
- Enhancement of Penalties: If the appellate authority considers enhancing penalties, a reasonable opportunity for a fair hearing will be provided to the appellant.
- Ex-parte Hearings: In case of ex-parte hearing, the appellate authority may dispose the appeal. However, if the appellant provides a sufficient cause for their absence, the appellate authority may set aside ex-parte order; the appeal may be reinstated within one year.
- Costs and Timelines: Filings fees for Form 32 and 33 costs is proposed as INR 10,000 (~ USD 120) for individuals, startups, MSMEs, and educational institutions, and INR 15,000 (~ USD 180) for others. The adjudicating officer and Appellate Authority may adjourn hearings for reasons with sufficient cause and with the prescribed fee.
- Documentation: The order of adjudicating officer as well as Appellate Authority shall be in writing, reasoned, dated and signed.
Stakeholders have been invited to submit their suggestions or objections to these rules by February 2, 2024.
To share your suggestions and comments with us, if any on the Draft Rules, please reach out directly to your K&S Partners contact or write to us at patent@knspartners.com by January 31, 2024.
Jan Vishwas (Amendment of Provisions) Act, 2023 Decriminalizes Intellectual Property Laws in India
The Jan Vishwas (Amendment of Provisions) Act, 2023, (JV Act) came into force on August 11, 2023. The term ‘Jan Vishwas’, which translates as ‘public trust’ in English, signifies a significant step towards trust-based governance and ease of doing business.
The JV Act ushers in a transformative era by revising penalties for non-compliance, emphasizing financial penalties over punitive measures, and striving to eliminate imprisonment or excessive fines for minor contraventions.
While the JV Act seeks to decriminalize 183 provisions within 42 Central Acts under 19 Ministries/Departments, this note specifically delves into its impact on intellectual property (IP) laws namely, the Indian Patents Act, 1970 (Patents Act), the Trade Marks Act, 1999 (TM Act), the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act), and the Copyright Act, 1957 (Copyright Act).
Patents Act, 1970:
The JV Act has significantly revised the Patents Act with amendments made to five sections and the omission of one section.
Omitted Section:
- Section 121 – Use of the words “Patent Office”: The omitted section used to deal with the wrongful use of the words “patent office” as a place of business.
Amended Sections:
- Section 120 – Representation of Patented Articles: The amendment to this section escalates the penalty for falsely representing an article as patented or under a patent application in India to INR 10,00,000 (USD ~12,000) from the earlier INR 1,00,000 (USD ~1,200). Additionally, a fine of INR 1,000 (USD ~12) is imposed for each continuing day of the violation.
- Section 122 – Statement of Working of Patents: The key amendments to this section include a reduction in the penalty for failing to provide a statement of working (Form 27) to INR 1,00,000 (USD ~1,200) from the previous INR 10,00,000 (USD ~12,000). Moreover, under Section 122(2), the provision for imprisonment for submitting false information has been replaced with a fine, calculated as either 0.5% of the total sales or turnover, or INR 5,00,00,000 (USD ~6,00,000), whichever is lesser.
- Section 123 – Practice by Non-Registered Patent Agents: The amendments to this section increase the fine for practice by non-registered patent agents to INR 5,00,000 (USD ~60,000) from the earlier INR 1,00,000 (USD ~1,200). An additional penalty of INR 1,000 (USD ~12) is imposed for each continuing day of the violation.
Newly Included Sections:
- Section 124A – Adjudication of Penalties: This section authorizes the Controller General of Patents, Designs and Trade Marks (Controller) to appoint an adjudicating officer to conduct inquiries and impose penalties, ensuring a fair hearing for the concerned individual.
- Section 124B – Appeal: Aggrieved individuals can appeal against the adjudicating officer’s decision to a higher-ranked appellate authority within 60 days of receiving the order. The appellate authority must resolve the appeal within 60 days, with a provision for late appeals under certain conditions. If there is no compliance with the order of the adjudicating authority within 90 days, there is a fine of INR 1,00,000 (USD ~1,200) or imprisonment for up to one year, or both.
- Section 159 (Sub-section 2) – Insertion of New Clauses: Two new clauses (xiiia) and (xiiib) have been added post clause (xiii) to outline the procedures for inquiries and appeals as per sections 124A and 124B.
Trade Marks Act, 1999:
The JV Act has brought forth several amendments within the TM Act, targeting various sections to refine the penalty structure and adjudication process.
Omitted Sections:
- Section 106 – Penalty for Removing Piece Goods, etc. – The section imposed penalties for removing piece goods, cotton yarn, or cotton thread from any premises referred to in Section 81 of the TM Act, for sale without marking them as required by that section.
- Section 108 – Penalty for improperly describing a place of business as connected with the Trade Marks Office. This section imposed penalties for inaccurately describing a place of business as being associated with the Trademarks Office.
- Section 109 – Penalty for falsifying entries in the Register: Under the erstwhile section, penalties were levied for falsifying entries in the register.
Amended Sections:
- Section 107(2) – Replacement of Imprisonment Clause: The clause in this section previously imposed imprisonment for falsely representing a trademark as registered. This has now been substituted with a fine which is calculated as either 0.5% of the total sales or turnover, or the gross receipts in a profession, or a sum of INR 5,00,000 (USD ~6000), whichever is less.
- Section 140 – Penalty for failure to provide information on imported goods: The punishment for failing to provide information on imported goods under this section has been replaced with a fine of INR 10,000 (USD ~120).
Newly Included Sections:
- Section 112A – Introduction of adjudication mechanism: A new adjudication mechanism is introduced by which the Registrar can appoint an adjudicating officer to conduct inquiries, hold hearings, and impose penalties concerning violations within the TM Act.
- Section 112B – Outline of the appeals process: It lays down the appeals process against decisions made under Section 112A by the adjudicating officer. Any person aggrieved by the order of such adjudicating officer can file an appeal before an appellate authority as provided under the amendments. If a person fails to comply with the order of such adjudicating officer or appellate authority, within ninety days of such order, such person is punishable with a fine of INR 1,00,000 (USD ~1,200) or imprisonment for a term which may extend to one year, or with both.
- Section 157(2) – Adjudication and Appeals Procedure: Two new sub-clauses, namely, (xxxiiia) and (xxxiiib) are added to clause (xxxiii) pertaining to the procedural aspects of the newly introduced sections 112A and 112B. Sub-clause (xxxiiia) outlines the procedure for holding inquiries and imposing penalties as per section 112A, while clause (xxxiiib) delineates the form and manner for preferring appeals under sub-section (2) of section 112B.
Geographical Indications of Goods (Registration and Protection) Act, 1999
The JV Act made one amendment, two omissions, and three new introductions in the GI Act.
Omitted Section:
- Section 43 and Section 44 – Penalties: Section 43 dealt with penalties for improperly describing a place of business as connected with the Geographical Indications Registry. Section 44 dealt with penalties for falsification of entries in the Register.
Amended Sections:
- Section 42 (Sub-section 2) – Change in Penalty Terms: Imprisonment for falsely representing a Geographical Indication as registered has been replaced with a fine. The fine is now calculated as either 0.5% of the total sales or turnover, or a sum of INR 5,00,000 (USD ~6000), whichever is less.
Newly Included Sections:
- Sections 37A & 37B – Section 37 describes what amounts to applying a GI. Section 38 describes what amounts to falsifying and falsely applying GIs. Section 39 provides penalties for these offences. Sub-clauses A and B have been added to Section 37 for adjudication of penalties under the JV Act for adjudication of the punishment for these offences and for appealing against it, respectively. The amendments give the Registrar powers to appoint officers to adjudicate penalties. Any person aggrieved by the order of such adjudicating officer can file an appeal before an appellate authority as provided under the amendments. If a person fails to comply with the order of such adjudicating officer or appellate authority, within ninety days of such order, such person is punishable with a fine of one lakh rupees or imprisonment for a term which may extend to one year, or with both.
- Section 87 – Additional Rules for Inquiry and Appeal: Sub-clauses (oa) and (ob) have been added to govern the manner of preferring an appeal under Section 37.
Copyright Act, 1957
Omitted Sections:
- Section 68 – Penalty for making false statements: This section imposed penalties for making false statements with the intention of deceiving or influencing any authority or officer under the Copyright Act.
The Jan Vishwas (Amendment of Provisions) Act, 2023 has significantly reduced the penalties from imprisonment to fine in various important provisions, especially the Patents Act, 1970.
Although the JV Act attempts to introduce an appeal mechanism under the various intellectual property statutes discussed above, it continues to retain a provision for imprisonment on failure to comply with the order of the adjudicating officer or the appellate authority.
For further assistance, please reach out directly to your K&S Partners contact or write to us at patent@knspartners.com.
Draft Trade Marks (1st Amendment) Rules, 2024
The Department of Promotion of Industry and Internal Trade (DPIIT), under the Ministry of Commerce and Industry, Government of India, has notified the draft Trade Marks (1st Amendment) Rules, 2024 (draft Rules) and invited public suggestions and comments before February 9, 2023.
The draft Rules introduce two prospective provisions, Section 112A and 112B, to the Trade Marks Act, 1999 (Act) by Item 30(D) of the newly enacted Jan Vishwas (Amendment of Provisions) Act, 2023 along with related procedural guidelines. Additionally, also it suggests incorporating three new forms, namely Form: TM-D, TM-OPP and TM-DA, into the Second Schedule of the Act.
The key proposed amendments in the draft Rules include:
- Filing of Complaint (Form TM-D): Any person may file a complaint using Form TM-D against a false representation trademark under section 107 of the TM Act. [Rule 105A]
- Quashing and Dismissal of the Complaint Summarily: If no prima facie case for the maintainability of the Complaint has been made, the complaint shall be quashed and dismissed by the appointed Adjudicating Officer. [Rule 105B & 105C]
- Summary Proceeding: In a prima facie case, the alleged violator is served a notice and a complaint, and must respond with a written submission on Form TM-OPP within 15 days from the date of the issuance of the notice. [Rule 105D (a) & (b)]
- Manner of Holding Inquiry: A show cause notice shall be issued to the alleged violator and thereafter a final order shall be passed within 60 days. The draft proposes that while adjudging the quantum of compensation, three factors should be taken into consideration: (a) the amount of gain of unfair advantage, wherever quantifiable; (b) the amount of loss caused to any person; and (c) the repetitive nature of the default. [Rule 105D (c)]
- Time-Period Extension: The time period for responding to the show cause notice can be extended on showing sufficient cause and the payment of fees. An adjournment order may also be passed at the hearing. However, the proceeding must be completed and the penalty or compensation must be imposed or awarded, respectively, within 90 days. [Rule 105D(d)]
- Appeal: Aggrieved parties can appeal, using Form TM-DA within 60 days of receiving the order, accompanied by a fee of INR 5,000 (~ USD 60) in favour of the Appellate Authority. [Rule 105E]
- Registration and Disposal of Appeal: General rules as to registration, admission and serving a copy of the appeal shall be followed. The responses need to be filed within 21 days, extendable by another 21 days. The hearing will be scheduled no earlier than 30 days after notifying the parties about the same, shall be fixed for hearing the appeal and on which the Appellant Authority may pass any order including an order of adjournment. [Rule 105F & 105G]
- Procedure in Appeal: The Appellant can plead on other grounds also, not specified in an appeal if the omission was not wilful or reasonable. The Appeal shall be heard and decided within 60 days from the filing date, where possible. One adjournment may also be granted to the parties. Further, the appeal may be disposed of ex-parte also, however, this order may be set aside and the appeal may be restored, not beyond 1 year, on showing sufficient cause of the absence by the opposite party. [Rule 105H]
Stakeholders are invited to submit their suggestions or objections to these rules by February 9, 2024. To share your suggestions and comments with us, please reach out directly to your K&S Partners contact by February 3, 2024.
IPTome 2022
IN THIS EDITION
18PATENT UPDATES
2DESIGN UPDATES
16TRADEMARK UPDATES
3COPYRIGHT UPDATES
5CYBER & DIGITAL UPDATES
The Indian IP offices have moved many of their services to virtual platforms and implemented processes that have accelerated India’s IP application process and brought it on par with many developed countries.
Jyoti Sagar Chairman and Founder