Delhi High Court Critiques Non-Speaking Patent Refusal
In late May, the Delhi High Court issued an order that yet again condemned a non-speaking refusal decision by the Controller of Patents and Designs (the Controller). The Court was hearing an appeal filed by Huhtamaki Oyk and ANR (Huhtamaki) against
the refusal decision, which merely reproduced information already on record. Allowing the appeal, the Court emphasized the need for reasoned orders and application of mind, calling out the cut-and-paste job in this specific refusal decision.
Additionally, the Court criticised the laconic manner in which Controllers are deciding patent applications, forcing patent applicants to approach the Court thus wasting precious time of the limited patent term otherwise available for the patentee.
Court Questions Controller’s Rejection of Fungicidal Treatment Method
In May, in an appeal made by Decco Worldwide Post Harvest Holdings B.V & Anr (Decco), the Calcutta High Court criticized a rejection order issued by the Assistant Controller of Patents and Designs (Controller). Decco had applied for an Indian patent for an invention of a fungicidal treatment method to prevent leaf disease that infects banana plants.
The Court took note of the lack of reasoning by the Controller and their failure to appreciate the facts presented by the Decco. Specifically, the Court was perplexed and questioned the Controller’s lack of clear explanation for categorizing the invention, a fungicidal treatment method, as a non-patentable subject matter under section 3(h) of the Act since it deals with the patentability of methods of agriculture and horticulture, not plant treatment methods.
Delhi High Court Reinforces Indian Position on Business Method Patents
In May, the Delhi High Court affirmed the Indian position on the non-patentability of “Business Methods” in the case of Open TV Inc. v The Controller of Patents and Designs. The Court stated that for a business method to be patentable, it must address a business or administrative problem and provide a solution in its own form, separate from being just a business method.
The case involved an appeal by Open TV Inc. (Open TV), a California-based company, against the rejection of their patent application titled “System and method to provide gift media” by the Controller of Patents and Designs (Controller).
A brand new world – protecting trademarks in the virtual era
With the popularisation and growth of the metaverse and, of course, the proliferation of non-fungible tokens (NFTs), the world of luxury goods is expanding into digital spaces.
Versace, Tommy Hilfiger and McDonald’s are some of the brands that are already securing their trademarks for NFT-authenticated virtual goods, seizing the opportunities of the virtual world. Additionally, these brands are also exploring new branding opportunities in the metaverse, as demonstrated by Gucci’s opening of Gucci Town – a virtual space on Roblox, with a consumer base of more than 200 million.
Madras High Court delivers judgement in favour of Saint Gobain Glass France
On June 22, 2022, the Hon’ble High Court of Madras delivered a judgment in favour of Saint-Gobain Glass France (“Plaintiff”) in a patent infringement case against infringer M/s. Harsha Exito Engineering (P) Ltd (“Defendant”).
The suit [Civil Suit (Comm. Div) No.409 of 2019] was filed in June, 2019 by the Plaintiff under Section 104 of the Patents Act, 1970 praying for permanent injunction against the Defendant, its officers, Directors, Agents, Distributors and Customers restraining them from using, employing, manufacturing, assembling, selling, offering for sale, advertising including through their and third party websites, products, devices and systems that are used for installation of glass panels, so as to result in infringement of Indian Patent No.305596 (“Suit Patent”), until the Defendant has procured appropriate licenses and permissions from Plaintiff; (ii) delivery of infringing components/ elements, semi-manufactured products/parts, products, devices and systems manufactured using the patented technology, devices and systems including packaging, labels, brochures and other printed material for the purposes of destruction; (iii) damages in respect of use, manufacture, sale, export, import or any other infringing activity in relation to products, that infringes the suit Patent and (iv) for the costs of the suit.
Watch what you say: Free speech and disparagement in the digital age
In Hindustan Unilever Ltd. v. Reckitt Benckiser (India) Pvt. Ltd, the issues of comparative advertisement were agitated in an appeal before a Division Bench (DB) of the Delhi High Court.
In the appeal, the DB upheld a decision of the Single Judge Bench (SB). By the said decision, the SB had restricted Hindustan Unilever Limited (HUL), the defendant, from broadcasting its advertisements for the toilet cleaner under the trademark ‘Domex’ that contained references to the plaintiff, Reckitt Benckiser’s (Reckitt), toilet cleaner ‘Harpic’. The dispute arose when HUL broadcasted a television commercial, aired three YouTube videos and issued a print advertisement to promote ‘Domex’. These advertisements claimed that (i) Domex was better as its effect lasted longer than Harpic, (ii) Harpic is an ordinary toilet cleaner, effective only for one flush, (iii) Domex is effective for more than 100 flushes, and (iv) unlike Domex, ordinary toilet cleaners cannot combat bad odour. Reckitt claimed that the representation of the “ordinary toilet cleaner” in the advertisements was that of the Harpic bottle. Reckitt, therefore, argued that these ommercials were misleading and disparaged its trademark Harpic.
Delhi High Court reaffirms the basis for assessing the patentability of computer-related inventions (CRI)
With the popularisation and growth of the metaverse and, of course, the proliferation of non-fungible tokens (NFTs), the world of luxury goods is expanding into digital spaces.
Versace, Tommy Hilfiger and McDonald’s are some of the brands that are already securing their trademarks for NFT-authenticated virtual goods, seizing the opportunities of the virtual world. Additionally, these brands are also exploring new branding opportunities in the metaverse, as demonstrated by Gucci’s opening of Gucci Town – a virtual space on Roblox, with a consumer base of more than 200 million.
NFTs’ growth raises a common question: how do they intersect with intellectual property rights, especially trademark protection? This article provides some pointers on navigating the tricky terrain of protection of trademarks by examining some of the guidelines emerging from the trademark offices of the US, Europe and the UK.
Delhi High Court injuncts STREET ARMOR trademark in a suit by Under Armor Inc
In Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd, Under Armour Inc (UAI), the American company trading in sports apparel, took Aditya Birla Fashion & Retail Ltd (Aditya Birla) to the Delhi High Court for trademark infringement.
UAI asserted its rights in its registered trademarks UNDER ARMOUR and STRT ARMR against Aditya Birla’s trademarks STREET ARMOR, STRT ARMR and a logo mark incorporating these marks. UAI contended that Aditya Birla’s marks were deceptively similar to its trademarks. While restraining Aditya Birla in the hotly contested case, the Court made some keen observations which hold relevance for trademark protection and prosecution in India.
At first, the Court decided the issue of deceptive similarity in favour of UAI. While the Court disagreed with UAI that ‘ARMOUR’ was not an essential element of its mark, it noted that, when viewed as a whole, Aditya Birla’s marks must be regarded as infringing UAI’s marks. The Court noted that ARMOUR is not descriptive in nature for sports apparels and that the respective marks of the parties were used on identical goods. It also did not miss the attention of the Court that Aditya Birla was being dishonest in its trademark adoption as it seems to be ‘straining every nerve’ to come as close to UAI’s trademarks to deceive the public – it even imitated the abbreviated version ‘UNDR ARMR’ by adopting ‘STRT ARMR’.
In its defence, Aditya Birla asserted that ARMOUR is “common to the trade” by submitting a list of registered marks on the Register of Trademarks. The Court, however, drew a distinction between ‘common to the trade’ and ‘common to register’ (sic). The Court noted that products bearing marks which stand registered on the Register of Trademarks may never see the market, or may, at best, make sporadic appearances. Hence, for the use of an expression to be regarded as “common to the trade”, it must be positively established that the use of the expression in the trade is frequent, customary, or habitual. Registration of multiple marks containing the expression is not an indication of the same.
Another unsuccessful defence raised by Aditya Birla related to the arguments raised by UAI during the prosecution of its trademarks before the Trade Marks Office (TMO). During the examination of its trademarks, the TMO had cited several marks containing the element ARMOUR as conflicting in the First Examination Report (FER). UAI overcame the objections on conflict by successfully arguing in its response to the FER that its marks are different from the cited marks containing the word ARMOUR and that these must be considered as whole. Aditya Birla argued that this was a material fact which UAI suppressed and that the plaint must be rejected as UAI in the suit is claiming to the contrary – i.e., that ARMOUR is the dominant part of its mark. Relying on established precedents, the Court rejected this argument and held that such an argument sustainable only if Aditya Birla’s mark was cited in the FER, which was not the case.
Though Aditya Birla filed an appeal against the order, it was unsuccessful in availing a stay on the order of the Single Judge.
Netflix and IP – The Rise and Rise of the OTT Platform Globally
In 2007, when Netflix switched from being a DVD rental store to providing online streaming services, the over-the-top (OTT) media service was considered a joke. How could online streaming compete with cable TV? But today, OTT platforms like Netflix, Disney+, and Amazon Prime Video have changed how the world ‘watches TV’!
While Netflix built an empire out of couch potatoes glued to the platform, it is also an intellectual property (IP) powerhouse, with a portfolio that covers content creation techniques to user experience enhancements and data analytics. This article is an attempt to provide insights into the fascinating world of Netflix’s IP.
Netflix’s copyrighted content
Copyright protection is granted for the original expression of an idea through literary, artistic, dramatic, and musical works, as well as mechanical rights in the form of cinematograph films and sound recordings. For example, by creating and owning the rights to hit shows like “Stranger Things” and “Orange is the New Black,” Netflix can control the entire lifecycle, from production to distribution.
As early as 2008, Netflix obtained a year-long license from the then Starz Media (now Starz Distribution) to stream 1,000 movies on its platform, including, “Pirates of the Caribbean, At World’s End”, “Spider-Man 3”, and “Ratatouille”. Netflix also has exclusive agreements with Universal Filmed Entertainment Group and Sony Pictures Entertainment to stream their movies. Netflix India has gained licenses to stream regional content in India such as RRR, Gangubai Kathiawadi, etc. to increase its regional user base.
Demystifying patentability requirements and prosecution strategies
Artificial intelligence (AI) is transforming all industrial sectors by enabling machines to perform tasks that usually require human intelligence. Indeed, it is causing a paradigm shift in the healthcare industry. Protecting innovations concerning AI-enabled healthcare products is important to gain a competitive advantage, promote innovation and continue encouraging investment into research and development.
To create AI-enabled healthcare products, a combination of mathematical models, methods and algorithms are employed in the processes of training, testing and deploying the models in a software solution. Vast quantities of healthcare data (eg, electronic health records and medical images) are subjected to the AI model development process, or machine learning pipeline, to develop trained and tested models that can be deployed in software to provide a real-world healthcare application.