India follows International Exhaustion - Delhi HC

In a most recent and landmark judgment on the issue of "exhaustion principle" in Indian trademark law, a Division Bench of the Delhi High Court has held that Indian trademark law follows an “international exhaustion” regime. 

The Bench comprising of Justices Pradeep Nandrajog and Siddharth Mridul partially allowed the appeal filed by Kapil Wadhwa and others (Appellants) against the judgment of Single Judge Justice Manmohan Singh in Samsung Electronics Co. Ltd. & Anr. v. Kapil Wadhwa & Ors., wherein the Single Judge had held the Appellants guilty of trademark infringement and had ruled that trademark law prohibits the sale of imported genuine products without the authorization of the registered proprietor in India.

 

The appeal was partially allowed by the Division Bench, thereby setting aside the judgment dated February 17, 2012 insofar as the Appellants had been restrained from importing printers, ink cartridges/toners bearing the trade mark Samsung/SAMSUNG and selling the same in India. However, the Appellants have still been injuncted from meta-tagging their website to that of Samsung. 

 

Way back in the single bench judgment of this case, Samsung Electronics Co. and its Indian subsidiary Samsung India had initially filed a suit claiming that the Appellants were selling genuine and unaltered Samsung printers imported directly from foreign markets into India without due authorization.  The Single Judge had held that the Appellants were guilty of trademark violation. It was against this judgment, the Appellants had filed an appeal.

 

Samsung was reprsented by Pravin Anand of Anand & Anand while the Kapil Wadhwa and others were represented Saikrishna Rajagopal on instructions from Shwetasree Majumdar of Fidus Law Chambers.

 

The Court observed that the single judge adopted an “erroneous approach” to conclude that unless goods are imported into India by the consent of the registered proprietor of a trade mark “the act of importation is not permitted” as per sub Section 3 of Section 30 (of the Trademarks Act), which provision provides for “acquisition by consent for the purposes of import”. In the appeal, the Court recognized the the principle of international exhaustion under the Trademarks Act, 1999 and observed that the same was clear from the fact that the term ‘in any geographical area’, in the Statement of Objects and Reasons to the Trade Mark Bill 1999 “clearly envisaged that the legislative intent was to recognize the principle of international exhaustion of rights to control further sale of goods once they were put on the market by the registered proprietor of the trade mark”. 

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Copy of the Judgment

New IP Protection law in Panama to impose hefty fine

Panamanian legislators on Wednesday night passed a new Intellectual Property  Protection Law, which would allow commerce officials to impose fines of up to $100,000 for copyright infringements without a trial or civil suit.   

There is a U.S.-Panama free trade agreement which was  approved last  year and this piece of  legislation is meant to bring Panama into compliance with the trade agreement. The legislation has yet to get the Presidential assent. 

As always, some civic groups and organizations representing audio-visual artists and musicians are criticizing the measure, saying it threatens free speech. 

Other artists support the law, hoping it will cut down on pirated versions of their works. Will this legislation prove to be a boon to the artists who support  it, only time will tell.

Beijing to give IPR protection to brands

For long China has been the hotspot for creating fakes of many international brands.  But that is set to change. Dongcheng District of Beijing will enhance IPR protection in Wangfujing Shopping Street to protect brands by governmental service and supervision. 

Nowadays, 53 out of the top 100 world famous brands have set up stores in Dongcheng District, particularly Wangfujing Shopping Street where local and international brands converge. 

“By governmental service and supervision, on the one hand, the district will provide overall protection for these brands, on the other hand, Dongcheng District will create enabling environment for the development of these brands in the district and Wangfujing Shopping Street,” said a principal from Dongcheng District.

It is a welcome move on the part of Chinese  government. This move will restore the faith of many international brands in China.

Contributed by: Abhishek 

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Amar Remedies accused of “passing off”

Dabur Ayurvedic Natural Health Care Products India has filed a case against Amar Remedies, for infringing on the intellectual property rights (IPR) to its brand Meswak. Dabur in the has alleged that Amar Remedies manufactures a toothpaste under the brand name  Siwak and exports it to Algeria.

Along with IPR infringement, Dabur in the suit has also alleged that Amar Remedies has attempted to "pass off" Siwak as Meswak. Passing-off in IPR law means making a false representation that is likely to induce a person to believe that the goods or services are those of another.

In the petition Dabur has alleged that Amar has dishonestly adopted the the said mark Siwak on the toothpaste only with a view to trade on its  goodwill and  reputation 

Contributed by Abhishek Kukreti

The second China-US International Cooperation Forum on IPR begins

The 2nd China-US International Cooperation Forum on IPR kicked off Wednesday in Washington DC, with the objective of promoting bilateral exchanges on intellectual property rights (IPRs) protection. Government officials and representatives from the private sector participated in the Forum.

Addressing the Forum, the Deputy China International Trade Representative Chong Quan said "For China, encouraging innovation and protecting IPR not only cater to the need of restructuring its economy at the moment, but will also promote future development of its society. China has established a profound legal framework and law enforcement mechanism in dealing with IPR protection. And the government is deepening and broadening its work in the field. The Chinese government has set the target of building an innovation-oriented country and has therefore put IPR protection at a national strategic level."

The Chinese representatives also enlisted the past effective actions taken by the government for IPR protection. For example, in 2010, the central government launched a 10-month-long campaign in China to suppress the manufacturing and selling fake and shoddy goods. In 2011, the central government set up a national leading group led by Vice Premier Wang Qishan to deal with IPR infringement. All these efforts have achieved effective results.

David Kappos, the US Under Secretary of Commerce for intellectual property, praised China's efforts in this regard. The prime focus of this Forum will be on the information industry, particularly the internet. 

The Chinese deputy trade representative Chong Quan pointed out the challenges presented by internet industry, as he said that:
"The internet industry has entered its golden era. In China, to date, the volume of online transaction has reached six trillion yuan per year. That accounts for 13% of the total GDP. It has no doubt become a new economic growth point. Meanwhile, the protection of internet IPR has become an outstanding issue. At the recent China-US legal exchange conference, experts from both countries acknowledged that in the face of rapid technological innovation, IPR protection is more dependent on international cooperation. Only cooperation can bring development as well as create a win-win situation for both countries. Such a cooperative concept is not only conducive to our bilateral diplomatic relations, but will also benefit our cooperation in the fields of economy and trade, as well as IPR protection."
"By May 2011, all agencies of the Chinese central government were using legitimate software only. By June 2012, all provincial governments were doing so," he said, adding that municipal and township governments across the country are expected to catch up by the end of 2013.

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Significant changes on the anniversary of AIA

In 2011, when the America Invents Act (AIA) was given the shape of law on September 16 last year, some significant changes were introduced to U.S. patent law, including changes to patent litigation rules and U.S. Patent and Trademark Office (USPTO) procedures. While some changes - particularly those related to patent litigation (such as limitations on joinder of defendants, the elimination of the best mode invalidity defense, an expansion of the prior use defense, and provisions regarding proof of willful and induced infringement) - went into effect immediately, some additional aspects of the Act, including significant changes to procedures within the USPTO, were implemented on September 16, 2012.

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Ek tha Tiger in copyright controversy !!

After a series of movies like Jannath 2 and Desi Boyz, now it is the turn of Salman Khan starrer Ek Tha Tiger. According to reports Salman's blockbuster has met with a copyright infringement case after one Mr Anand Pande has filed a complaint with Mumbai police alleging that the producers have stolen his script and made it into a movie without providing him adequate compensation.

However Hindustan times report that Neelesh Mishra, Co-writer of Ek Tha Tiger has vehemently denied the charges of copying and even challenged Anand Pande to prove his charges.

Mumbai Police have already lodged an FIR against the producer Aditya Chopra and Director Kabir Khan. Anand Pande has also filed  a complaint against them with the Film Writers Association.

Pnade has earlier approached the Mumbai Highcourt who directed the police to launch an FIR on the issue.

Source

Barfi ! faces the Murfy Trademark issue.

A day before release of Barfi !, the upcoming movie of Anurag Basu, the British manufacturers Murphy Radio sent the notice to the producers UTV group and Ishana films, alleging trademark infringement. In the notice, the company has claimed that the makers have used 'Murphy', 'Murphy Radio' and 'Murphy Munna' in the title song as well as in the film without taking an NOC (no objection certificate) from them. 

The notice, sent through advocate Sujeet G Kurup, says, “The company Murphy Enterprises owns at least 32 trademarks under several classes. If the notice is not taken seriously, the company will file a legal suit against the Barfi team, bringing a stay on the movie release, or further perusal claiming damages worth Rs. 50 crore.”

The main point of controversy is over the song Ala Barfi, the lyrics of which are: “Barfi jo amma ji ki kokh mein tha soya/ Amma ne murphy ka radio mangaya/ barfi munna jaisa lalla/ amma ka tha sapna/ Munna jab haule haule duniya mein aaya/ Baba ne Ceylon wala station lagaya/ Radio on hua, amma off hui/ Toota har sapna.”

However, UTV responded positively, by saying “We are clear there has been no infringement whatsoever, and are in the process of responding to the notice.”

 

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Draft of National Intellectual Property Rights Strategy prepared

The Department of Industrial Policy and Promotion under the Industry Ministry has prepared a draft National IPR Strategy. The Sectorial Innovation Council on IPRs had given its recommendations. It may be mentioned here that this council was set up in April, earlier this year to come up with a national IPR strategy. 

Based on the recommendations, this draft has been prepared.  However, the draft has not yet been circulated for inter-Ministerial consultation, Minister of State of Commerce and Industry Jyotiraditya Scindia said in a written reply to  Rajya Sabha on Wednesday.

In accordance with TRIPS Agreement India’s IP laws were amended to incorporate  provisions of the said Agreement and in 2010, the Trademark Act was  amended to enable accession to the Madrid Protocol which is a filing treaty and will allow companies to register their trademark in the Member-countries of the Protocol through a single application. Similarly, the Copyright Act, 1957 was amended in 2012. 

The amended Act which came into force on 21st June 2012, inter alia includes provisions of the WIPO Copyright Treaty (WCT) and WIPO Performance and Phonograms Treaty (WPPT). 

 It is a welcome step on part of the government as it would give a boost to the creation of new ideas with industrial applications.

Source

Contributed by: Abhishek Kukreti

Apple vs. Samsung: Is the verdict pro-consumer?

The victory of Apple against Samsung in the famous patent case indicates the arrival of hard days for its rivals. Samsung has termed its defeat as loss to consumers; on the contrary, Apple has termed its victory as the gain for the American patent system and innovation. The judgment is symptomatic of the high investment in innovation to be made by Apple’s rivals, which indicates higher costs for everyone.

Though, Samsung will have to pay $1.05 billion to Apple. But ultimately, it is its customers, who will have to pay higher prices as the device manufacturers pay more to Apple for license of the technology they already use. It would result in several Samsung and Android devices going out of the market, whereby the consumer will face shortage of choice.

Following are the devices that will be adversely affected:

1.      Galaxy S,

2.      Galaxy S II,

3.      Nexus S,

4.      Mesmerize,

5.      Vibrant,

6.      Fascinate,

7.      Skyrocket,

8.      Continuum,

9.      Prevail,

10.  Infuse,

11.  Gem,

12.  Mesmerize,

13.  Indulge,

14.  Replenish,

15.  Epic 4G Touch,

16.  Droid Charge,

17.  Nexus S smart-phones

18.  Galaxy Tab and

19.  Galaxy Tab 10.1

The verdict may result in a gain for Apple in terms of market share and profits in the form of sharp rise in its share prices after the verdict. But the verdict does not lie in the favour of consumers for many reasons.

Choice and competition must prevail in the market, which is not going to be the aftermath of the decision. This may make the losers unite to take revenge from Apple to often beat Apple in whichever way they can.

Further, as observed by Judge Richard Posner in an earlier Apple versus Motorola case, Apple often adopts patent litigation as a tool not for safeguarding breakthrough innovation, but to stall and delay competitors. 

Conclusively, there is an open question. Does the verdict favour the market and consumers of smart-phones?

Apple vs. Samsung: remarkable day for Apple

In a much awaited judgment that has been a landmark one in the IP realm, to be precise, patent realm, the US court jury has ordered Samsung to pay Apple $1.05 billion. There is a room for appeal against the judgment.

Giving brief insights of the case, Apple Inc. filed its patent infringement lawsuit against Samsung Electronics Co., in April 2011, claiming $2.5 billion. Samsung Electronics Co. fired back with its own lawsuit seeking $399 million.

In its verdict, the US court jury in California rejected all Samsung's claims against Apple. However, the jurors also decided against some of Apple's claims involving the two dozen Samsung devices at issue, declining to award the full $2.5 billion Apple demanded.

The U.S. trial was the latest skirmish between the two tech giants as they have filed similar lawsuits in eight other countries, including South Korea, Germany, Japan, Italy, the Netherlands, Britain, France and Australia.

In the home court ruling, Samsung won global patent battle against Apple as judges in a Seoul court held that Samsung didn't copy the look and feel of the iPhone and ruled that Apple infringed on Samsung's wireless technology. But they also held that Samsung had violated Apple's technology behind the feature that causes a screen to bounce back when a user scrolls to an end image. Both sides were ordered to pay limited damages.

Before the US Court's verdict against it, Samsung had also lost previously in European court, where judges ruled that Samsung patents were part of industry standards that must be licensed under fair terms to competitors.

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Trademark Infringement Suit over Kyuss Lives ! decided

In a trademark infringement lawsuit filed by former Kyuss guitarist Josh Homme and bassist Scott Reeder against their ex-bandmates, vocalist John Garcia and drummer Brant Bjork, involving the use of the latter pair's current incarnation, Kyuss Lives !, judge S. James Otero of the United States District Court Central District of California has given the verdict on 20^th of this month. According to the judgment, Kyuss Lives ! has been allowed to the Defendants to be used as a signature for live performances, but not for recordings.

"The court will issue a preliminary injunction prohibiting defendants from using the Kyuss mark in any capacity unless the word 'Lives' follows the word 'Kyuss' in equally-prominent lettering," says the verdict.

In his statement, Bjork previously claimed that Homme and Reeder had only trademarked the Kyuss name after Bjork had left the band in 1993, thus giving rise to issue as to whether the pair can be held liable for stealing the title.          

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Copyright drama in Gujarat theatre

The writer-director duo, Vihang Mehta and Suresh Rajda, who rocked Gujarat theatre (with hits starting from 'Chhinna' in 1979 to 'Flat No. 44'), for over two decades scripted a copyright battle in Gujarati rangbhoomi. Mehta has alleged that he wrote the Gujarati play 'Ame Janiye Chiye Tame Kaun Chho', which has been stolen by Rajda, who recently staged the Gujarati play 'Dial Wrong Number', which according to Mehta, is an unauthorized adaptation of his play 'Ame Janiye Chiye Tame Kaun Cho', constituting an infringement of copyright.

The additional district judge (ADJ) of the Vadodara district court M V Zala has granted a stay over adaptation of any of the 18 full-length plays and 10 one-act plays penned by Mehta. The court has also granted an ex-parte interim injunction on performance of 'Dial Wrong Number'.

The IP advocate Avadhoot Sumant of Satya Vidhi & Company represented Mehta.

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Copyright tussle compels Google to alter search results

It may be a thrash for the torrent hosting websites. But, it was a victory day for the big media companies as they won a battle against online piracy on Friday. The event of their victory emerged when Google agreed to alter its search algorithms to favour web sites that offered legitimate copyrighted movies, music and television.

With the beginning of next week, algorithms of the Google would take into account the number of valid copyright removal notices, that are received by the web sites. As a result, the web sites facing multiple, valid complaints about copyright infringement may appear lower in Google search results.

The move of Google came as victory news for the entertainment industry, as it was, for years pressurising Google and other Internet sites to act against online piracy.

This announcement from Google came after more than six months of a much heated tussle between big media companies and technology companies. The entire tussle involved the proposed legislation intended to crack down on pirated online content, particularly by rogue foreign Web sites.

However, Google has denied removing pages from copyright-infringing web sites from its search engine unless it receives a valid copyright removal notice from the rights’ owner.

According to the statements of Google, it had received copyright removal requests for over 4.3 million web addresses in the last 30 days, according to the company’s transparency report, which was more than what it received 2009.

WIPO launches IP Facts and Figures 2012

WIPO has launched 2012 IP Facts and Figures, which provides an overview of intellectual property (IP) activity based on the latest available year of statistics. Due to the time involved in collecting and reporting statistics to WIPO, most national and regional IP office statistics refer to 2010. 

Four types of industrial property, namely patents, utility models, trademarks and industrial designs has been covered in the publication. The publication focuses on application data only, which is the most often used measure of IP activity. 

The data used in the report have been taken primarily from the WIPO Statistics Database, which is based on WIPO’s Annual IP Survey and on data compiled by WIPO in processing international applications filed via the PCT, Madrid and Hague systems. 

See complete report

Apple v. Samsung: Early Days of iPhone in the Courtroom

In the famous multibillion-dollar patent showdown, Apple Inc, on Friday, deployed two of its executives as ammunition, including a software chief who assembled the design team for the original iPhone. 

In the court room, the Apple Software Chief Scott Forstall narrated the early days of iPhone development. According to the testimony the secret design work was codenamed as the “Purple Project”. He further added that he pinned a note on the door of the dorm, “Fight Club,” a reference to the movie’s screed to ensure what happened behind closed doors remained there.

The entire aim of the testimony was strengthening Apple’s legal argument and to prove that it was too much involved to develop products such as the iPhone and iPad, which have been “slavishly copied” by rival Samsung. Forstall further added that there was need of secrecy as Apple was making a new phone “out of whole cloth.”

Apple marketing chief Phil Schiller, used a video slide showing that Apple spent more than $1 billion on U.S. advertising on the iPhone and iPad between 2008 and 2011 and told the jury how Samsung’s copying has fostered consumer confusion and made it harder to market Apple products.

Facing the questions from the rival as to whether the iPhone 5, (set to be released in September), would have a different design than the iPhone 4S, Schiller declined to discuss the design, saying it was confidential.

The trial continued on Friday after the U.S. District Judge Lucy Koh rejected Apple’s bid to end the case immediately with a judgment in its favor.

Koh also condemned Samsung’s legal team for its “theatrics” and “sideshow,” but refused to stop the trial. The trial resumes Monday morning with the testimony of another Samsung executive and several Apple experts.

Source

Smartphone Patent War: Apple versus Samsung

On 15^th April, 2011, Apple sued Samsung, alleging that the later copied the look and feel of its iPhone and iPad in its product Galaxy S line. Apple said “Rather than innovate and develop its own technology and a unique Samsung style for its smart phone products and computer tablets, Samsung chose to copy Apple's technology, user interface and innovative style in these infringing products,” according to the Wall Street Journal

This suit was later expanded to include 13 more products, including the Galaxy Tab 10.1, Nexus S 4G, and the Droid Charge.

Samsung filed a countersuit, targeting Apple for infringing on five patents relating to wireless networking technology (though it later dropped one countersuit that was filed in a U.S. federal court to simplify its proceedings).
In 2010 Apple had also dragged HTC (for 20 instances of patent infringement) and Motorola (alleging that its multi-touch smart-phones use Apple-owned intellectual property) in the patent battle. By August, 2011, there were 19 ongoing lawsuits (at present the number of lawsuits is more than 50) in 12 courts in nine countries on four continents.
Judgment of Various Courts across the Globe.

Country	Judgment	At present
Germany	Court blocked the sale of the Galaxy Tab 10.1 in Europe, with the exception of the Netherlands. Later the court tightened its ruling and only applied the ban to sales within Germany	Appeal by Samsung
Australia	Samsung agreed not to sell the Galaxy Tab 10.1 in Australia until it settles an ongoing patent dispute with Apple.
Netherlands	A Dutch court in The Hague, imposed a ban on the Galaxy smart-phones but not the tablets, at the request of Apple.

Apart from the abovementioned courts, the parties are also fighting in France, Japan, USA, International Trade Commission (ITC), United Kingdom, Italy and South Korea.

Current Status.

In the lawsuit pending before a US District Court, on 1^st August, 2012, Apple said in its filing with U.S. District Judge Lucy Koh that a July 31 statement from Samsung’s lawyer, (wherein Samsung intended to convey to jurors, through the media, arguments contesting Apple’s central allegations that Samsung copied the iPhone and iPad) was “bad faith litigation misconduct”, which was meant to prejudice the jury. Hence, it requested the court to issue sanctions granting judgment that Apple’s asserted phone-design patent claims are valid and infringed by Samsung.

Samsung, in an 2^nd August filing, countered that Apple’s request should be rejected because Samsung’s statement was protected free speech.

The court dismissed Apple’s request for a judge to punish its lawyer’s public disclosure of evidence excluded from trial

The case is Apple Inc. v. Samsung Electronics Co. Ltd., 11- cv-01846, U.S. District Court, Northern District of California (San Jose).

15% increase in the number of fake products seized at EU borders in 2011

According to the European Commission’s annual report on customs actions to enforce intellectual property rights (IPR), released on 24^th July, 2012, over 115 million fake products (dealing with more than 91,000 cases) were seized by the Customs officials stationed along the European Union’s external borders in 2011, which was estimated to be 15% more than articles seized in 2010 (dealing with about 80,000 cases, seizing about 103 million articles).

China was at the top of the list of source countries for counterfeit goods last year. Also several EU member states have come into picture as countries of origin for different categories of fake products.

Given the increase in the quality and diversity of counterfeit products, the European Commission has recognised the industry’s important role in tipping off officials about IPR infringements.

Find full Report here