India
- Patent Rules Amendments
The Draft
Patents (second amendment) Rules 2005 which incorporate the suggestions
arising out of the discussions between industry, patent attorneys
and the Ministry of Industry and Commerce, are likely to replace
Patents Rules of 2003. The Rules now appear to be more equitable
as they put responsibility on both the applicant and the Patent
Office to ensure compliance of the procedures within a well-defined
period. Some of the major changes proposed are with regard
to filing of pre-grant opposition with the appropriate office and
include a statement and evidence if available in support of the
representation and a request for hearing, if so desired.
The following
changes are proposed in the Draft Patents Rules 2005:
1. A provision
has been inserted that no patent shall be granted before the expiry
of six months from the publication of the application under Section
11(A) against 3 months as had earlier been identified in Rule
55(1) for filing a pre-grant opposition.
2. It is
also proposed to ensure that a request for prior permission for
filing an application outside India under Section 39 of the Indian
Patents Act shall ordinarily be given by the Controller within 21
days from the date of filing of the request as opposed to three
months provided earlier, except in cases of inventions relating
to defence and atomic energy.
3. The Draft
Rules proposed changes to the fee structure and timelines provided
in the Patents Rules of 2003.
Judicial
Decisions:
.1. Glaxo
Smith Kline (GSK) EMR application:
GSK
had filed EMR applications on June 30,2000. After conducting
a hearing the Controller of Patents rejected these on the grounds
of novelty and anticipation as well as the fact that the applicant
for grant of EMR was not the same entity that had procured the marketing
approval in India. The applicant filed a writ in the Calcutta
High Court holding that the order passed by the Controller was on
account of a misapplication of the law and was not open to him to
conduct prior novelty searches and the petition be treated
as a single economic entity in considering the matter. The
High Court reminded the Controller to pass a fresh order within
a week, but the Controller once again rejected the petitioner's
EMR applications citing the reason that these violated Sections
3(d) of the Act. A fresh writ was filed with the Calcutta
High Court which held that the Controller could not have rejected
the applications under Section 3(d) when no objection had been raised
to the petitioner's claims in the examiner's report which the Controller
was bound to follow and directed to decide afresh within a fortnight
taking into account the examiner's report.
2. Trade
marks and colours:
In
the case of Colgate Palmolive vs. Mr. Patel & others, the Court
restrained the defendants from passing off the red and white trade
dress of Colgate and direct them to change their trade dress to
red & gold on the ground that trade mark infringement.
The Court held that the limited of the right to one or more colour
could not be considered to be diluted or limited within the said
colour scheme. The word "limitation" under Section
10(1) of the Trade and Merchandise Marks Act refers to the limitation
to, and not of, that particular colour.
3. Copyright
issues in disputes:
In Amar
Nath Sehgal vs Union of India, Amar Nath Sehgal, a renowned sculptor,
claimed violation of his moral rights in a mural that was created
for a project of the Govt. of India. The legal injury to the
sculptor arose when the government tore down the mural and dumped
it into a storeroom. The court gave a verdict in favour of
Sehgal and passed a mandatory injunction agains the Union of India,
directing to return the mural to Sehgal and granting transferring
all rights in the mural from the government to Sehgal to restore
the mural and sell it. The court also granted damages of Rs.500,000
in the matter.
The Copyright
Act 1957 sets out certain uses that do not constitute infringement
under the Act. One case was where the defendant published
a guide to a textbook published by the petitioner's company, lifting
verbatim of exercises and the key to exercises from the textbook
and incorporated into the guide. When Petitioner company filed a
copyright infringement suit, the defendant invoked the fair dealing
exceptions under the act. The Court rejected the argument
of fair use and ruled, Verbatim lifting of the text to the extent
of copying the complete set of exercises cannot be in any manner
termed as review, criticism or a guide to the original work.
4. Development
in damages:
In the case
involving infringement of the trade mark and copyright of the trade
mark and log, the Court held that a party who chooses not to participate
in court proceedings and evades court proceedings must suffer the
consequences of damages on the ground that there is a larger public
purpose involved to discourage such parties from indulging in such
acts of deception, even if the same has a punitive element, it must
be granted.
A case involving
infringement of copyright in a database the Court held that where
the extent of the business cannot be ascertained compensatory
damages may be quantified by adopting the principle of what would
be the similar cost of creating the thing had it not copied.
5. Domain
name policy formed:
The Uniform
Dispute Resolution Policy (UDRP) and the Indian Dispute Resolution
Policy (INDRP) differ on the domain name in many places. The
UDRP gives protection to a trade name or a personal name where the
complainant has acquired rights while the INDRP gives protection
to a name, trade mark or service mark in which the complainant has
rights. The arbitration proceedings in accordance with the
INDRP Rules and Policy makes it mandatory for the registrant of
the impugned domain name to participate in the administrative proceedings
once a complaint is initiated against him. This is in contrast
with the UDRP policy which states that, neither party, the complainant
nor the respondent, is barred from submitting the dispute to a court
of competent jurisdiction for independent resolution before such
mandatory administrative proceeding is commenced or concluded.
Under INDRP Policy, the remedies available to a registrant are the
cancellation of the domain name or the transfer of the domain name.
The award of costs is a major enhancement on the UDRP, which categorically
states that the panellist cannot award costs.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
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