By Amarjit Singh

INDIA

By Amarjit Singh

A:Legislative changes

~Subsequent to the 49th Council Meeting of APAA at Kota Kinabalu, there has been no legislative changes in Intellectual Property Laws.

~However, by way of Delhi High Court Amendment Act (Act No.35 of 2003) the pecuniary jurisdiction of Delhi High Court to entertain suits (including those relating to Intellectual Property matters) was enhanced from Indian Rs. 5 Lacs (approximately US$11100) to Indian Rupees 20 Lacs (approximately US$ 45000).

B:Changes in Procedure

~Intellectual Property Appellate Board (IPAB) has been constituted to deal with the appeals arising against orders passed by the Registrar of Trade Marks and / or Registrar of Geographical Indications of Goods. The jurisdiction of the High Courts to entertain and hear such appeals has been taken away and all pending appeals (those filed prior to 6th October, 2003) stand transferred to the Appellate Board by operation of Section 100 of the Trade Marks Act, 1999,

~The jurisdiction of the High Courts to decide rectification proceedings in respect of the entries wrongly made or wrongly remaining on the Register of the Trade Marks or Geographical Indication of Goods has also been taken away and vested in Intellectual Property Appellate Board. The concurrent jurisdictions of the Registrar of Trade Marks/Geographical Indication to deal with rectification petition remain.

~Designated officers have been appointed by the Controller General of Patents, Designs and Trade Marks to furnish the opinion under Sub-Section (4) of the Section 115 of the Trade Marks Act, 1999 which is a pre-requisite to any search and seizure action in respect of counterfeit goods and goods bearing the falsified trade marks,

~Traditionally, a notice of opposition was strictly required to be filed in the office of the Registrar of Trade Marks within whose jurisdiction the application was originally filed. Of late, the Registrar has evolved a practice of forwarding a notice of opposition filed in a wrong jurisdiction to the office of the Registrar having jurisdiction. The rights of the opponent are thus not affected even where a notice of opposition has been lodged erroneously in a wrong jurisdiction.

-Similarly, applications, responses, oppositions, cancellation petition under the Patents Act 1970 and/or The Designs Act 2000 which were traditionally required to be filed in the appropriate office of the Controller, can now be filed in any of the office at Delhi, Mumbai, Chennai and/or Calcutta. The controller has evolved a practice of forwarding such documents filed in a wrong jurisdiction to the office of Controller having jurisdiction.

C:Significant Intellectual Property Law Cases

Trade Marks

The most important case this year was the Supreme Court decision in the matter of Milment Oftho Industries V/s. Allergn-Inc, wherein the mere prior adoption of the mark was considered sufficient for the grant of interim injunction in a passing off action. The mere fact that the foreign company had not used the mark in India was considered as irrelevant if they were first in the world market. The principle of law laid down by the Division Bench of the High Court of Delhi that in a case of prior adoption V/s. prior use, the person, who uses the mark prior in point of time gets a proprietary right stood over-ruled by implication by this decision of Supreme Court.

In another significant decision The Supreme Court held that use of internet domain name and protection thereof were subject to the legal norms applicable to other Intellectual Property Laws such as trade marks.

In Dabur India Limited V/s. Emami Limited (reported in 2004 (29) PTC 1) the High Court of Delhi restrained the defendant from telecasting disparaging advertisements, whereby, message was sought to be conveyed that consumption of the product of the plaintiff during summer was not advisable and the product of the defendant was more effective. The court held that a manufacturer is entitle to make a statement that his goods are the best and also make some statements for puffing of his goods but the same would not give a cause of action to other traders or manufacturers of similar goods to institute proceedings as there is no disparagment or defamation to the goods of the manufacturer so doing. However, a manufacturer is not entitled to say that his competitor’s goods are bad so as to puff and promote his goods.

In another significant decision, in the matter of Geepee Ceval Proteins and Investment Pvt. Limited V/s. Saroj Oil Industries (2003 (27) PTC 198) the Geographical name CHAMBAL used as a trade mark by the plaintiff in respect of edible oil was protected.

In yet another significant decision The Supreme Court in the matter of Hardie Trading Ltd. V/s. Addisons Paints & Chemical Limited held that “use” for the purposes of Section 46(1) of the Trade and Merchandise Marks Act, 1958 (which is equivalent to Section 57 of the Trade Marks Act, 1999) may be other than physical and it may be in any other relation to the goods. The order passed by the Joint Registrar and the High Court for cancellation of registered trade mark on the ground of non-use in physical form was set aside by the Supreme Court.

In Midas Hygiene Industries Limited V/s. Sudhir Bhatia & Others 2004 (28) PTC 121, the Supreme Court of India held that mere delay in bringing action is not sufficient to defeat grant of injunction in case of infringement either of trade mark or of copyright.

In Pepsi Co., Inc. Vs. Hindustan Coca Cola Ltd. (2003 (27) PTC 305), The Division Bench of Delhi High Court held that use of a registered trade mark in comparative advertising constitute infringement.

In Phonographic Performance Limited Vs. Music Broadcast (P) Ltd 2004 PTC 282, the Bombay High Court in a significant decision on Copyright Law held that broadcasting is a separate species of communication to the public and further held that the Copyright Board had the powers to grant compulsory licenses to more than one party.

Patents

The Controller granted for the first time Exclusive Marketing Rights (EMR) for certain drugs under the provisions of the Patents Act in cases where the product patent applications are still pending. The High Court of Madras, granted interim injunctions in favour of the EMR holder and against the generic manufacturers of the products in question. Novartis AG V Adarsh Pharma 2004 (29) PTC 108 the Court held application by previous publication or by prior claim has no relevancy while examining Patent claim in the context of deciding to grant or not to grant EMR. Further, the EMR grant provisions of the Act have been challenged, inter alia, on constitutional grounds, in diverse proceedings including some pending in the Supreme Court of India.

Designs

In a significant judgment pronounced by the High Court of Delhi in the matter of Glaxo Smith Consumer Health Care JMP V/s. Anchor Health and Beauty Care, the court vacated the interim injunction and held that it was not open to the plaintiff to obtain multiple registration for variation of design, which were mere trade variants.

In a very significant decision, Madras High Court in the matter of Officine Lovato S.P.A. Vs. Raajan Automobiles (P) Ltd. (2003 (27) PTC 343) restrained the defendants from infringing the plaintiff right by adopting the same design/patent. It was held that the plaintiff made out a prima facie case by producing material documents which would show that the plaintiff was the exclusive owner of patent, design and mark as claimed and had built up a considerable business market with a good reputation. The Court held that the defendants cannot infringe the plaintiff’s mark or design or patent. The Court further held that assuming for the purpose of argument that the plaintiff was yet to complete registration formalities it was clear that in terms of Chapter CXXII in the respect of Member Convention Countries similar privileges and rights were granted to its own citizens in respect of grant of patent and the protection of patents rights were secured. Therefore it cannot be stated that the registration of the patent in other countries was of no use or avail.

In Faber Castell Aktiengesellschaft Vs. Pikpen (P) Ltd. (2003 (27) PTC 538), The High Court of Bombay held that the registration done under the Designs Act 1911 shall continue to be in force and have effect as if done under the corresponding provisions of the new Act by virtue of sub-section (2) of section 48 of the new Act except that any proceeding pending in any Court at the commencement of the new Act may be continued in that Court as if the new Act had not been passed. All other matters relating to registration and cancellation of registration of designs would be governed by the new Act.

Other Developments

-The Geographical Indications of Goods (Registration & Protection) Act, 1999 has come into force effective September 15, 2003.

-The first applications to be accepted for advertisement in the Geographical Indications Journal under the Act are DARJEELING and DARJEELING logo.

-Subsequently these have been published in the first Geographical Indications Journal.

-The Geographical Indications Journal is a bi-monthly publication as per notification issued by the Registrar of Geographical Indications.

-These applications have been applied for by Tea Board India in respect of a fine black tea grown and produced in the Darjeeling District West Bengal, India.

-The second Geographical Indications Journal has also been published and contains advertisements in respect of Chanderi Silk and Pochampalli Ikat, both textile products.

Conclusion

With the advent of the Agreement on Trade Related Aspects of Intellectual Property (TRIPS), the nations of the world are swiftly approaching a new realm of intellectual property protection. This factor coupled with technological developments is giving rise to the emergence of several intellectual property rights such as the protection of plant varieties, geographical indications and data base. With the laws in place, in the coming years, India is certainly going to see a lot of development in the all fields of Intellectual Property Laws, practice and procedure.