Patent & Trademark Review: Essential Developments in Indian IP Law

In this Newsletter, we bring to you some interesting developments in the field of Indian Intellectual Property law that took place in the months of February and March 2024.

The Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) issued the Patents (Amendment) Rules, 2024 (“Amendment Rules”) in the Official Gazette of India on 15^th March 2024 for amending the Patent Rules, 2003 (“Patent Rules”).

These rules came into effect immediately upon publication i.e., from 15th March 2024, addressing crucial aspects of Indian patent practices and procedures. These amendments are expected to spur growth in patent filings and processing across the country.

Following are the introductions sought by the Amendment Rules –

 Extension of Deadlines under Rule 138:

• Previously, Rule 138 (power to extend time prescribed) empowered the Controller to condone delays for up to one month, with a few exceptions. However, after the recent amendment, the Controller can now extend the time specified for any act or proceeding under this rule, or condone any delay, for a period of up to six months.
• The title of Rule 138 has now been changed to “Power to extend the time specified or condone delay”.
• Additionally, the extension can be requested using Form 4 before the initial six-month period expires, and it can be requested multiple times within that time frame.
• The filing fee for Form 4 online varies based on the entity type –

1. Natural Persons, Startups, Small Entities, and Educational Institutes are charged INR 10,000,
2. larger entities are charged INR 50,000.

Voluntary Filing of Divisional Application:

The new rules clarify that divisional applications can be voluntarily filed by the applicant as per Section 16 of the Patent Act,1999 (“the Patent Act”) by the Applicant, even based on inventions disclosed in the provisional specification. Section 16 of the Patent Act provides for the “Power of the Controller to make orders respecting division of Application”.

This amendment aligns with the decision of the Division Bench of the Delhi high Court in the case of Syngenta Ltd. v. Controller of Patents and Designs (471/2022) which clarified that a divisional application can be filed as long as the plurality of the inventions is disclosed in the claims of the specifications.

Reduced Timeline for Request for Examination (RFE):

Rule 24B(1) of the Amendment Rules provides for the reduced timeline wherein the timeline for filing the RFE has been reduced from 48 months to 31 months from the priority date or Indian Application Date (whichever is earlier) , aiming for a more expedited examination process.

Opposition Process and Timelines:

Both pre-grant and post-grant opposition processes have been revised, with changes in official fees and timelines for response.

• PRE GRANT OPPOSITION:

• Under the previous rules, no official fees was payable for filing a pre-grant opposition. This has changed and the official fees for filing pre-grant opposition is now INR 20,000.
• Following the filing of a pre-grant opposition, the Controller will initially assess the maintainability of the representation.
• If the Controller is unsatisfied that the Opponent has established a prima facie case, the Opponent may request a hearing, after which the Controller will issue a speaking order either admitting or rejecting the opposition.
• However, if a prima facie case is established by the Opponent, the Controller will provide a reasoned order and notify the Applicant accordingly.
• If the representation is deemed maintainable, the application will be subject to examination under Rule 24C of the Patent Rules which covers expedited examination.
• The timeline for replying to the notice has been reduced to two months from the previous three months, with the possibility of extending by six months through Rule 138 of the Patent Rules.

• POST GRANT OPPOSITION:

According to the Amendment Rules, the Opposition Board must now provide its recommendations within two months from the date of receiving documents, which is a reduction from the previous three-month

• Additionally, in an effort to streamline the post-grant opposition process and discourage unnecessary fillings, the official fees for submitting post-grant opposition representations have been adjusted as follows:
  • For large entities it is increased from INR 12,000/- to INR 40,000/-
  • For others i.e Natural Persons, Startups, Small Entities, or Educational Institutes etc. it is increased from INR 2,400/- to INR 10,000/-.

Working Statement (Form 27):

The Working statement must be submitted every three years, starting from the year after the patent was granted. The first statement of working will have to be submitted within six months from the end of the third financial year. Previously, the Working Statement had to be filed every year.

• Failure to file the statement may result in the Controller granting a delay extension of up to three months upon request using Form 4.
• Online submission of Form 4 incurs a fee of INR 2000 for Natural Persons, Startups, Small Entities, or Educational Institutes, and INR 10,000 for others, such as large entities.
• The statement of working must include:
  • .Confirmation if the patent is commercially active or inactive. It is pertinent to note that if the patent is inactive, adequate reasons for its inactivity should be provide. There is no need to provide any information about the value of the commercials if the patent is commercially active.
  • Indication of whether the patent is available for licensing.

The introduction of this provision for disclosing licensing availability allows patentees and licensees to explore commercial opportunities. Moreover, the transition to filing the statement every three years reduces their administrative burden and costs compared to regime of annual reporting.

Prescribed Form for Availing Grace Period:

• The grace period is a timeframe before filing or prioritizing a Patent Application, allowing an inventor to disclose their invention without compromising its novelty for patenting.
• Section 31 of the Indian Patent Act, 1970, allows applicants a 12-month grace period to file patent applications under certain conditions. Previously, this grace period was outlined only in the Patent Act, with no mention in the Patent Rules.
• However, with the Amendment of the Patent Rules, a new Rule 29A was introduced, along with Form 31, to request the grace period. Form 31 includes specific requirements: Applicants must disclose the earliest date of use, publication, or disclosure of the claimed inventions, and provide relevant documentary evidence to support the request for the grace period.
• Filing Form-31 online incurs a fee of INR 500 for Natural Persons, Startups, Small Entities, or Educational Institutes, and INR 2500 for others, such as large entities.
• This amendment aims to safeguard inventor rights by providing flexibility, allowing innovators to showcase their inventions without immediately forfeiting patent rights, provided they meet specific conditions and submit patent applications within the specified 12-month timeframe.

Declaration of Inventorship:

The Amendment Rules include a new Rule 70A and Form 8A, focusing on certificates of inventorship. Now, inventors can request a certificate by submitting an application and paying a fee of INR 900. Previously, Indian Patent certificates did not list inventors, but this change allows inventors to be recognized for their inventions.

Controller’s General Power to Obviate Irregularity:

As per Rule 137 of the Patent Rules, the Controller’s authority to allow amendments in documents or overlook irregularities does not extend to the following acts:

– Extending time or condoning delay beyond three months for filing Form 3

– Request for National Phase Entry

– Filing English translations of International applications

– Filing Priority Documents

– Filing Requests for Examination

– Filing Replies to Office actions (FER)

– Filing Replies to Pre-grant Oppositions

– Payment of Renewal fees

– Deadline extensions for filing review petitions

– Extensions beyond six months for filing working statements.

Fee Waivers in Indian Patent Rules

1. Inventor Mention Fee: Previously, requesting to include an inventor in a patent application cost INR 4,000 for large entities and INR 800 for others. This fee is now waived.
2. Patent Surrender Fee: The fee for requesting to surrender a patent under Section 63 of the Patent Act used to be INR 5,000. This fee is also now waived.

The updated Patent Rules provides significant relief for Applicants and Patentees seeking patent rights in India. These changes aim to simplify paperwork, shorten processing times, and speed up patent grants by providing for a more efficient process.

FACTS

MakeMyTrip (India) Pvt. Ltd. (MIPL), a leading travel company in India, provides a wide range of travel services domestically and internationally via its website and other platforms. MIPL owns trademarks for “MakeMyTrip” and “MMT.” MIPL initiated a Commercial Suit alleging trademark infringement by Google’s Ads Program, specifically concerning the use of its trademarks as keywords to display Booking.com’s ads on Google’s search results page in the Hon’ble Delhi High Court. Google Ads Program operates through real-time keyword auctions, enabling advertisers to bid on relevant keywords for their products or services. MIPL also participates in this program to promote its services. However, MIPL argues that Booking.com’s utilization of its trademarks as keywords constitutes trademark infringement under the Trade Marks Act,1999.

It is pertinent to note that the learned Single Judge initially concluded that using a registered trademark as a keyword constitutes trademark infringement. They accepted MIPL’s argument that Booking.com’s use of the “MakeMyTrip” or “MMT” mark as a keyword infringed Sections 29(2)(b), 29(4)(c), 29(6)(d), 29(7), and 29(8)(a) of the Trade Marks Act, 1999. The judge reasoned that this use amounted to advertising with MIPL’s trademarks and allowed Booking.com to benefit from MIPL’s goodwill. Additionally, the judge observed that using trademarks as keywords could unfairly take advantage of MIPL’s trademarks and potentially constitute passing off, violating Section 29(8) of the Trade Marks Act, 1999.

The Division Bench overturned the impugned judgement of the single judge bench, asserting that using trademarks as keywords does not inherently constitute infringement under Section 29(1) of the Trade Marks Act. Subsequently, MIPL filed a Special Leave Petition in the Hon’ble Supreme Court. However, the Hon’ble Supreme Court in its three-line order stated that they were not inclined to entertain the Special Leave Petition filed in this subject under Article 136 of the Constitution of India and subsequently dismissed the Petition.

We will discuss the issues that were dealt with by the Division Bench of the Delhi High Court and its final decision.

ISSUES

1. Whether the use of MIPL’s trademarks as keywords by Booking.com constitutes trademark infringement under Section 29(2) of the Trade Marks Act, 1999?
2. Are the provisions of Section 29(4) of the Trademarks Act, 1999 applicable when the goods or services of the registered mark and the impugned mark, similar?

RELEVANT PROVISIONS OF TRADEMARKS ACT, 1999

• Section 29(2)– A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
• its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
• its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
• its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

• Section 29(3) – In any case falling under clause (c)of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
• Section 29(4)(c) – A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

• Section 29(6)(d) – For the purposes of this section, a person uses a registered mark, if, in particular, he – uses the registered trade mark on business papers or in advertising.

• Section 29(7) – A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
• Section 29(8)(a) – A registered trade mark is infringed by any advertising of that trade mark if such advertising—takes unfair advantage of and is contrary to honest practices in industrial or commercial matters

JUDGEMENT

The Division Bench overturned the impugned judgement of the single judge bench, asserting that using trademarks as keywords does not inherently constitute infringement under Section 29(1) of the Trade Marks Act. It dismissed the argument that Booking.com’s use of MIPL’s trademark ‘MakeMyTrip’ as a keyword violates Section 29(4)(c) of the Trademark Act, 1999, as the goods and service description of Booking.com are similar to the goods and service description of MIPL’s trademarks. The Court clarified that Section 29(8) of the Trademarks Act, 1999 is not applicable unless the use of MIPL’s trademarks as keywords leads to confusion or deceit, and Section 29(7) does not apply to such use. Moreover, the Hon’ble Delhi High Court ruled that the presumption of confusion under Section 29(3) can be rebutted based on available evidence without a full-fledged trial.

Subsequently, MIPL filed a Special Leave Petition in the Hon’ble Supreme Court, with the case focusing on businesses competing for visibility in search results via Google Ads’ auction mechanism, where payment to Google is based on clicks. MakeMyTrip raised concerns about potential overlap in search results due to Booking.com’s use of its trademark.

However, the Hon’ble Supreme Court in its three-line order stated that they were not inclined to entertain the Special Leave Petition filed in this subject under Article 136 of the Constitution of India and subsequently dismissed the Petition. The Hon’ble Supreme Court posed a pertinent question highlighting the need to understanding user motivations and the approach in which the customers interact with online platforms. Furthermore, the Hon’ble Supreme Court also questioned where the auction for Google keywords involved the Trademark itself or merely a right to claim a space in a website, posing an urgent need of interpretation since if the auction pertains to trademarks, it implies ownership and control over the brand involved, whereas, if the auction only pertains to claim a space, it would relate to the visibility of the brand on the search screen and there needs to be a balance between competition, recognition of a brand and the rights of the consumer. The Hon’ble Supreme Court however, dismissed the Special Leave Petition due to lack of substantial evidence.

KS&CO’s COMMENTS

In the present judgment, the Court extensively analysed the provisions of the Trade Marks Act, 1999 and precedent-setting legal rulings to arrive at its decision. It highlighted that the mere use of trademarks as keywords does not automatically constitute trademark infringement unless it results in confusion or confers an unfair advantage to the defendant. This interpretation aligns with the fundamental principles of trademark law, emphasizing the need for actual confusion or unfair competition to establish trademark infringement.

Furthermore, the Court delved into the nuances of Section 29 of the Trade Marks Act, 1999, particularly emphasizing the significance of similarity in goods and services when determining infringement. The Court examined Section 29, particularly focusing on the petitioner’s citation of 29(2)(a) and (c) of the Trade Marks Act, 1999. This section suggests that using a similar trademark for identical or similar goods or services may constitute infringement if it leads to confusion. However, the Court determined that no deception was present in this case. It highlighted a scenario where booking a ticket on ‘MakeMyTrip’ would not inadvertently lead to ‘Booking.com,’ concluding that such use of MakeMyTrip’s mark as a keyword does not imply its use as a trademark and does not cause confusion among the public. Regarding MMT’s argument that deception from using a trademark as a keyword contradicts honest practices and constitutes infringement under Section 29, the Hon’ble Court suggested that such arguments should be addressed in a trial. At this preliminary stage, the use of a keyword does not imply its use as a trademark.

Moreover, the Court’s ruling shed light on the presumption of a trademark creating confusion in the minds of the consumers, under Section 29 of the Trade Marks Act, 1999. Contrary to the notion that this presumption must be dispelled only through a full-fledged trial, the Court asserted that it can be rebutted based on the material available before trial.

The Court’s ruling that using trademarks as keywords does not automatically infringes trademarks unless it causes confusion or unfair advantage emphasizes the need of evidence based assessment over presumptions.  This approach of the Court highlights the importance of addressing the issues of confusion efficiently and effectively and collecting evidences regarding the same even before the commencement of formal trial proceedings in trademark infringement cases.

T SERIES & Anr v. DREAMLINE REALITY MOVIES AND OTHERS

(FAO No. 6386 of 2023)/ 2024 SCC OnLine P&H 661

In the High Court of Punjab and Haryana at Chandigarh

Decided on 22^nd February, 2024.

BACKGROUND

The Additional District Judge in Ludhiana issued an order on November 23, 2023, granting Dreamline Reality Movies (Dreamline) an injunction against Super Cassette Industries Private Limited (T Series”), preventing them from producing, broadcasting, selling, or releasing the film “Dear Jassi” until the case was finally determined.

However, the Punjab and Haryana High Court recently, on February 22, 2024, overturned this ruling, stating, “The events and details from a person’s life cannot be copyrighted unless the individual claiming copyright infringement has created a work that explicitly depicts such a life story.”

 STORY OF JASWINDER KAUR SIDHU

Jaswinder Kaur Sidhu, alias Jassi was born and raised in Maple Ridge, British Columbia, fell in love with Sukhwinder Singh Sidhu during a visit to India despite her family’s disapproval due to their differing social status and clan affiliation. They married secretly but faced relentless pressure from Jassi’s family to annul the marriage. Jassi’s attempt to escape to India with Sukhwinder ended tragically when they were kidnapped, leading to Jassi’s murder in the year 2000.

FACTS

The key facts of the case revolve around T-Series’ plan to create a film titled “Dear Jassi,” which is inspired by the life of Jaswinder Kaur Sidhu. T-Series claimed to have acquired rights for the film from a book authored by Mr. Fabian Dawson by paying an authorization fee. However, Dreamline Reality, who purportedly obtained rights from Jassi’s husband, Sukhwinder Singh, filed a lawsuit seeking an injunction against T-Series, asserting their right to produce the film and claiming copyright over Sukhwinder’s story. The Trial Court granted an interim injunction in favor of Dreamline Reality, restraining T-Series from exhibiting the film until the lawsuit’s final resolution. T-Series appealed against this order to the Hon’ble High Court of Punjab & Haryana.

ISSUE

– Whether the life story of Sukhwinder Singh, as claimed by Dreamline, constituted a work eligible for copyright protection?

– Whether Sukhwinder Singh’s right to privacy could be invoked to claim copyright over his life story?

JUDGEMENT

The Punjab and Haryana High Court ruled against Dreamline’s claim of having rights to Sukhwinder Singh’s life story, stating that Singh could not assign those rights, as he had not created any work on his life story.

T-Series had the right to produce the film based on Sukhwinder Singh’s story, as they acquired adaptation rights to a book including his narrative.

The Court noted Sukhwinder Singh’s story’s extensive coverage in public records, media, and previous films, exempting it from copyright restrictions. It also held that certain aspects of Singh’s life, once in the public domain, were not unconditionally protected by privacy rights.

Additionally, it clarified that celebrity or publicity rights typically apply to those with celebrity status, which Singh lacked. As Dreamline failed to establish irreparable loss from the film’s release, appeal of T-Series was allowed, and the District Court’s order was overturned.

K&S CO’S COMMENTS

The Court’s analysis presents a comprehensive examination of the legal complexities surrounding copyright, privacy rights, and personality rights in the context of real-life narratives.

A) Copyright Protection and Public Domain Limitations:

Firstly, the Court emphasized that copyright protection relies upon the existence of a tangible work involving creativity and effort, rather than mere facts or ideas. This is a fundamental principle for determining the eligibility of a work for copyright protection under the Copyright Act, 1957.

Regarding Dreamline’s attempt to stop T-Series from depicting Jaswinder Kaur’s life story, despite her being deceased and leaving no published works, the court upheld that once information is in the public domain, copyright claims cannot be made. This highlights the importance of understanding copyright limitations when narratives are widely known or documented.

B) Court’s observation on Privacy Rights:

The Hon’ble Court’s observation on privacy rights shows how privacy works in the world of creative expression. The Hon’ble Court denied Dreamline’s attempt to use Sukhwinder Singh’s privacy rights to claim copyright. This reaffirms that privacy rights are not absolute and needs to be considered alongside other laws, like copyright law.

C) Court’s observation on Personality/Celebrity Rights:

The Court scrutinized the concept of personality rights within the case’s legal framework. It dismissed Dreamline’s claim to Sukhwinder Singh’s “right to commercially exploit his privacy,” highlighting limitations on such assertions that such ‘celebrity rights’ or ‘publicity rights’ can only be claimed by those persons who have acquired status of celebrity and have a distinct identity denoting their goodwill which can be commercially valued. In this case Sukhwinder had not acquired the status of a “celebrity”.

Overall, the current case provides valuable insights into the legal intricacies surrounding copyright, privacy rights, and personality rights, offering guidance for future legal disputes involving the depiction of real-life individuals in creative works.

The ruling in T-Series v. Dreamline Reality Movies by the Punjab and Haryana High Court sets a noteworthy precedent for defining the parameters of copyright protection for life stories portrayed in artistic works, providing direction and clarity to those involved in the entertainment sector.