POLICY CHANGES
Publication of Delhi High Court Intellectual Property Rights Division Rules, 2022.[1]
On February 24, 2022, the Delhi High Court Intellectual Property Rights Division Rules, 2022 and the High Court of Delhi Rules Governing Patent Suits, 2022 were published in the Official Gazette. All IPR lawsuits, cases, procedures, or disputes before the IPD of the Delhi High Court are subject to the Rules. According to the Rules, “IPR subject matters or cases or processes or disputes” refer to all initial, appellate, and other IPR-related proceedings filed before the IPD. It will also cover IPR lawsuits, revocation and cancellation requests, new legal actions, appeals, and petitions from various IPO’s.
Report on 'Review of the Intellectual Property Rights Regime in India’ was presented to both Houses of the Parliament on 6th April, 2022.[2]
The Department Related Parliamentary Standing Committee (DRPSC) on Commerce by Shri V. Vijayasai Reddy, M.P., Rajya Sabha presented its 169th Report on Action Taken by Government on the recommendations/ observations of the Committee contained in its 161st Report on 'Review of the Intellectual Property Rights Regime in India on 6th April, 2022 to both Houses of the Parliament. The 169th Report reflects the action taken by Government on 82 recommendations of the 161st Report of the Committee.
These recommendations were significant in suggesting a credible road map for strengthening the IPR regime of India. The Report had emphasized upon the need to establish an appropriate legislative framework on IPR in conformity with the changing dynamics of innovation; to encourage financing and commercialization of IP assets in the country; combative measures against counterfeiting and piracy; active coordination between enforcement agencies and administrative efforts for deftly handling the IPR issues.
It also suggested that departments focus their efforts on supporting AI innovators by passing new legislation or amending the IPR rules already in place, to make room for AI-based ideas. In order to coordinate efforts among various Ministries, Departments, and Governmental Agencies in the enforcement and adjudication of IP laws and to stop IP crimes in the nation, particularly with regard to counterfeiting and piracy, the committee here proposed the establishment of a Central Coordination Body on IP Enforcement.
Read the 161st Report presented to the Rajya Sabha on 23rd July, 2021 here.
Read the 169th Report presented to the Rajya Sabha on 6th April, 2022 here.
National Intellectual Property Awareness Mission (NIPAM) achieves the target of training 1 million students on Intellectual Property (IP) awareness.[3]
National Intellectual Property Awareness Mission (NIPAM) has achieved target of imparting Intellectual Property (IP) awareness and basic training to 1 million students on 31st July 2022, ahead of the deadline which was 15 August 2022. NIPAM, a flagship program to impart IP awareness and basic training, was launched on 8 Dec 2021 as a part of the “Azadi Ka Amrit Mahotsav'' celebrations. The program is being implemented by Intellectual Property Office, the Office of Controller General of Patents, Designs and Trade Marks (CGPDTM), Ministry of Commerce and Industry. During the period 08 December 2021 to 31st July 2022, the following milestones were achieved:
- No. of participants (students/faculty) trained on IP = 10, 05, 272
- Educational institutes covered = 3662
- Geographical coverage = 28 states and 7 Union Territories
The way forward is to strengthen the NIPAM program further to nurture and encourage innovation and creativity, thereby contributing towards cultural and economic development of the society through a revamped manner utilizing the existing resources of the IP Office in collaboration with Atal Innovation Mission (AIM), AICTE, UGC etc.
Delhi High Court creates an Intellectual Property (IP) Division along with the Cell for Intellectual Property Rights Promotion & Management (CIPAM).[4]
The Delhi High Court has created an Intellectual Property Division (‘IPD’) at the High Court to deal with matters related to Intellectual Property Rights.
As per the Office Order dated 7 July 2021 signed by the Registrar General, the IPD would be governed by the IPD Delhi High Court Rules which are in the process of being framed. Further, the original proceedings before the IPD would also be additionally governed by the Delhi High Court (Original Side) Rules, 2018 and the provisions of the Civil Procedure Code as applicable to commercial disputes and the provisions of the Commercial Courts Act, 2015.
According to this Office Order No. 667/Original Side/DHC, the IPD Benches shall be notified by the Hon'ble Chief Justice from time to time. The IPD of Delhi High Court would deal with following matters:
All original proceedings and appellate proceedings including Writ Petitions (Civil), Civil Misc. (Mains), RFA, FAO etc., relating to IPR disputes, except matters that are to be dealt with by a Division Bench.
All fresh filings in the various IPR categories would also be dealt with by the IPD.
IPR suits, revocation applications, cancellation applications, other original proceedings, appeals from the office of Registrar of Trade Marks, Controller of Patents, Copyright Registrar and all other proceedings which were hitherto maintainable before the IPAB.
IPR JUDGMENTS
Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Ors., 2022 SCC OnLine SC 61.[5]
Hon’ble Supreme Court of India held in the above matter that in infringement cases, the Court cannot inquire as to whether the infringement was likely to mislead or create confusion once it is established that the Respondent’s trade mark is identical to the Appellant's registered trade mark in the same or similar class of goods and services. The Hon’ble Court then arrived to the judgment that the High Court had miscalculated in its interpretation of the test set forth under S.29(4) of the Act because it had neglected to consider other provisions that applied to the facts of the case at hand as well as other laws.
Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. & Ors., CS (COMM) 657/2021.[6]
In the present case, the Hon’ble High Court of Delhi assessed whether the stitching pattern, which is only a pattern added to the Plaintiff's products and not the product design, qualifies as a trademark insofar as it links the jeans to the Plaintiff. After consideration by the Hon'ble Court, it was decided that the stitching pattern serves as the Plaintiff’s trademark since it allows consumers to identify the jeans as coming from the Plaintiff even in the lack of a corresponding name or emblem. The current case represents a very clear acknowledgment of non-traditional trademarks and is likely to be referenced and relied upon in future cases involving related topics.
Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, IA 2821/2021 in CS (COMM) 94/2021.[7]
In this case, the anti-dissection test's significance in evaluating the trademark as a whole was discussed by the Hon’ble High Court of Delhi. But because it placed a lot of focus on the dominating portion test, it stood out. The Hon’ble Court concluded that there was no exclusivity with regard to the word “Pride” as a component of “Blenders Pride” using the plain glance test. There was therefore no infringement. Additionally, it was decided that there was not a false likeness with the mark “Imperial Blue” at first glance.
M/s Knit Pro International v. The State of NCT of Delhi & Anr, CrA 807 of 2022.[8]
The Hon’ble Supreme Court of India in the instant case held that an offense of copyright infringement u/s 63 of the Copyright Act, 1957, was a cognizable and a non-bailable offense. The Court observed that if the offense was punishable with imprisonment for three years and onwards but not more than seven years, then the offense was a cognizable offense and in case where the offense was punishable for imprisonment for less than 3 years or with fine only, then the offense could said to be non-cognizable.
DHL International Gmbh v. DLH Express Services Private Ltd, CS (COMM) 563/2020.[9]
The Hon’ble Delhi High Court issued a permanent injunction in favour of DHL International GmbH and ordered DLH Express Services Private Ltd. to withdraw its trademark application for the trade mark “DLH EXPRESS SERVICES (P) LTD” in the instant matter. The Plaintiff's trademark “DHL” was also deemed to be a well-known trademark by the court, particularly in the fields of logistics, freight transportation, courier services, international money, etc.
Delhi High Court - Listing of all intellectual property suits before designated commercial Courts, and calls for review of cases valued below INR 3 lakhs for improper valuation.[10]
In an effort to control intellectual property lawsuits filed in Delhi, the Delhi High Court issued an order on June 3, 2022, in the case of Vishal Pipes Ltd v. Bhavya Pipe Industry, FAO-IPD 1/2022, passing specific directions with regard to lawsuits filed before Delhi district courts that hear cases with values between INR 3,00,000 and INR 2,00,00,000.
ITC Ltd v. Central Park Estate Private Ltd., CO(COMM.IPD.TM)763/2022, 14th November, 2022.
This case was a landmark in ascertaining the importance of well-known marks as per Indian law, with a parallel discussion on the principle of territoriality and famous marks doctrine under US law. Plaintiff’s registered trademark, “Bukhara” was used in respect of a famous restaurant that had acquired goodwill and had been in the hospitality business since 1975. Consequently, the Defendants adopted the mark “Balkh Bukhara” for their restaurants. The Plaintiff’s primary contention was that “Bukhara” was a well know mark under Section 2(zg) of the Act, and hence, should be awarded protection under Section 11(2) of the Act.
NOTABLE NEWS
World Intellectual property Indicators, 2022 released by WIPO.[11]
The report encompasses the creative space and highlights the details of new products and services in the market. As per the report, India has climbed up the ranks with respect to the number of both patents and trademarks filed. However, in the cases of designs, India has been stagnant at the 13th rank since 2018. Further, Asian economies lead a worldwide bounce back to a 1.6% growth in patent applications in 2020, which is 3.3 million patent applications.
Also, as per the report India’s IP office surpassed that of Japan to become the 5th largest in terms of trademark filing with 424,583 filings done in 2020. Moreover, in comparison to other countries India is behind with the number of patents examiners which ultimately leads to lesser number of patents being granted in the country.
MSME ministry launches innovative scheme to promote creativity, entrepreneurship in sector.[12]
The MSME ministry on Thursday launched an innovative scheme to promote creativity, adoption of latest technologies and increase awareness about importance of intellectual property rights among MSMEs. The scheme is an amalgamation of the incubation, design and IPR (intellectual property rights) schemes of the ministry.
It would act as a hub for innovative activities, besides facilitating and guiding development of ideas into viable business prepositions that can benefit society directly and can be marketed successfully.
Govt seeks stakeholder inputs on IPR issues in proposed trade pact with Canada.[13]
The department has asked stakeholders to furnish details on the IPR areas which are of “prime considerations” such as patent, trademark, copyright, design, geographical indications, enforcement, commercialization and technology transfer, and regulatory approval.
As per the proforma issued by the DPIIT, they also have to provide areas of concern such as filing, registration, enforcement or commercialization of stakeholders’ IP rights in Canada, and the level at which the challenges were observed such as IP offices, enforcement agencies or any other government or regulatory agency besides the focus areas for the government in its collaborative efforts with Ottawa.
Indian patent filings surpass figures of international patent filings.[14]
The Indian Patent Office (IPO) saw a significant milestone in the quarter of January to March 2022, when domestic patent filings gradually increased year over year and for the first time in 11 years overtook international patent filings. A total of 19796 patent applications were submitted to the IPO, of which 10706, or 54.08%, were submitted by applicants from India compared to 9090 by non-Indian applicants. The main explanation given for the low number of domestic patent filings in India in 2019–20 was the country's low level of knowledge of intellectual property rights (IPRs), according to a report issued by the parliamentary committee in July 2021.
DPIIT takes series of steps to strengthen IPR regime.
Mr. Anurag Jain (Secretary, DPIIT) said that government has taken a series of steps to increase innovation and the knowledge economy. These steps include:
- Reducing the number of forms for trademarks and patents, to further strengthen the country's IPR (intellectual property rights) regime.
- Reaching to a level where 80 startups are being registered every day in our country, being highest in the world.
- In trademarks, initially there used to be 74 forms which have been brought down to just 8 and similarly for patents, all the forms were scrapped and now there is only one form
- IP has also been included in the course of NCERT.
- There is a lot of engagement with colleges across the country where 18 IPR chairs have been set up and 135 IPR cells have been formed.
He further stated that to increase awareness about IPR, there is a need to inculcate seeds of IP in the minds of young people.
India needs to be superpower in Intellectual Property: PM's adviser.
Adviser to the Prime Minister, Amit Khare, has said people have to be creators of knowledge and not borrowers as the country aspires to become a superpower in Intellectual Property (IP). At the 72nd foundation day of IIT Kharagpur, Khare stressed the need for linking "our past knowledge with the future", saying institutions like IITs have a role to play in it.
"We are an IT superpower, but we need to be an IP superpower because knowledge is power," Khare observed on the nation's demand to transform into an IP global power. Observing that a multidisciplinary method is required for knowledge building, Khare stated that new horizons of expertise are emerging as a result of the interaction between bio-science and engineering, which are being employed to identify large amounts of data to help develop policies, whether in the social sector or in the field of health and wellbeing.
Clarity on IPR key for success of space startups.
Clarity on intellectual property rights (IPR) is crucial for the success of startups in the space sector was observed by ISpA chairman Jayant Patil who was addressing a meeting of startups and investors organized by Indian Space Association (ISpA) and Kalaari Capital. The space policy of the government which is expected to focus on ease of doing business in the emerging sector, is in the final stages of consultations and shall also give a roadmap for the private sector to contribute to technology transfer, remote sensing and satellite communication.
He also said that said the issue of intellectual property rights was the major pain point for the startup community in the space sector, which was two years ago also opened up for private participation by the present government. According to him, the policy will get legal support for implementation after the Space Bill is approved by the Parliament.
DEVELOPMENTS IN STARTUP SECTOR
Govt increases charges of IP facilitators for startups.[15]
Govt increases professional charges of IP facilitators for startups patents, fees at the time of filing of application has been increased to Rs 15,000 from Rs 10,000 earlier. Similarly, for trademarks and designs, it has been revised upwards to Rs 3,000 from Rs 2,000.
Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP) is further extended for a period of three years with effect from 01-04-2020 to 31-03-2023.[16]
Department for Promotion of Industry and Internal Trade (DPIIT) via notification dated 02.11.2022 notified an extension of SIPP Scheme for 3 years and revised Scheme for Facilitating Start-Ups Intellectual Property Protection.
DEVELOPMENT IN AI AND METAVERSE
Macdonald’s file for trademark for virtual restaurant in Metaverse (USA).
In February, McDonald's submitted a trademark application to the USPTO for a virtual fast-food restaurant as well as for virtual goods and services. Additionally, the business previously submitted 10 applications to the US Patent and Trademark Office for the McCafe and McDonald's brands. The trademarks indicate that they are for fictitious food and drink goods. Another says it involves running an online restaurant simulation with home delivery.
It also aims to trademark “on-line actual and virtual concerts” and other entertainment services within its virtual McCafe. This request by Mcdonald’s was followed after Panera Bread’s filing for the “Paneraverse,” that is a bakery company to trademark its downloadable, virtual food and beverage items “for use in virtual worlds,” along with NFTs and the option to purchase actual goods in the virtual world to be delivered.
Meta hit with trademark lawsuit by virtual-reality company MetaX.
A trademark suit was filed against Meta Platforms Inc. (owner of Facebook) in Manhattan Federal Court by MetaX LLC, alleging that Meta has copied its name with respect to metaverse. MetaX LLC is a company involved in creating immersive virtual-reality experiences.
MetaX alleged that it had been "crushed" by Facebook's rebrand and said its "ability to operate as Meta has been eviscerated." Further, it accused Meta Platforms of infringing its federal "Meta" trademarks, and requested the court to pass directions to prohibit the social media company from using "Meta" for goods and services that are similar to those given by MetaX and also to give monetary damages.
MetaX also argued that Meta Platforms' new focus on the metaverse and related VR and augmented-reality technology are similar to its business and that it has begun providing such "immersive experiences" at places like Coachella and South by Southwest.
The article has been authored by the IPR team of KAnalysis. Views are Personal.
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Read from source: https://blog.kanalysis.com/a-summary-note-onscheme-for-facilitating-start-ups-intellectual-property-protection-sipp/ ↑