The past few years have seen a tremendous upsurge in intellectual property awareness - to an extent that it can be called an era of IP awakening. The IP awakening in India is unleashing massive creative energy. The great difference from the past is that it is now mapped and measured due to protective IP rights mechanisms. From 1972 to the 1990s, the research and development expenditure in the country grew more than 50 fold, but patent filing remained static at 3500 to 4000 applications per year. Inventions were being made but were not protected due to a general disbelief in the system coupled with a lack of awareness.
At present, interestingly, CSIR is the third largest applicant under the PCT, from developing countries. Therefore there is a perceptible change in the perspective of the government and the initiative is being taken by the scientific community. Today the number of patent applications filed annually is approximately 10,000. People are recognizing the immense potential that lies in their creative skills. The creative skills that they possess are now being harnessed and channeled into productive resources.
Legislation complies with international standards
India demonstrated its commitment to its international treaty obligations, including TRIPs, by implementing the Patents (Amendment) Act, 2002, which along with the Patent Rules, 2003, came into effect from May 20 2003; the Trade Marks Act, 1999 along with the Trade Mark Rules, 2002; and the Geographical Indication of Goods (Registration and Protection) Act, 1999 and the Rules for its implementation (with effect from September 15 2003). With the coming into force of these enactments, India has complied with the TRIPs Agreement.
Recognition of IP in general legislation
The growing importance and significance of IP can be seen in the fact that non-IP laws also include reference to IP rights. For instance the Companies Act has been amended by the Trade Marks Act, 1999 rendering a name as undesirable for registration as a corporate name if it conflicts with a registered trade mark. Additionally, if a company has been registered under a name which is identical with or closely resembles a registered trade mark, the company shall change its name.
Such has been the impact of the growth in the software industry that non-computer software companies have been seen adopting words such as infosys, software, systems, infosystem, computers, cyber, cyberspace in their corporate names. To curb this, the Ministry of Industry had to issue a departmental Circular dated May 13 1999 to the Registrar of Companies directing him to allow companies to register such names only if a substantial portion of their income is derived from the software business. This illustrates the tremendous public perception in the potential of IP, so much so that everyone wants to jump on to the IP bandwagon, in order to derive some benefit, in whatever form it may be.
Similarly, Section 3 of the Competition Act, 2002 provides that the right of a person to restrain any infringement of or to impose reasonable restrictions as may be necessary for protecting any of his rights conferred on him under the Copyright Act, Patents Act, Trade Marks Act, Geographical Indications Act, Designs Act, or the Semi-Conductor Integrated Circuits Lay-out Design Act, shall not be restricted as being anti-competitive.
Alternative dispute resolution
A unique and very welcome trend has been initiated by ordering mediation through a mediator appointed by the court as was recently done by the Delhi High Court in a matter pertaining to threatened defamation of a well-known trade mark. In matters where settlement is a possibility but perhaps due to the posturing between the parties it does not happen voluntarily, courts are increasingly following the practice of gently nudging the parties to a mediation or a conciliation as a possible way of resolving the dispute. The importance of this aspect can be gauged from the fact that a mediation seminar is being organized under the aegis of INTA.
IP litigation
While the courts continued to deal with the traditional IP matters pertaining to passing off and counterfeiting, a constant attempt is being made by both rights owners and also the courts to take IP litigation to the next level. The courts have adopted an innovative and experimental approach rather than being rule-bound. This has been achieved both by expanding on and developing the well-established principles and also by exploring new avenues.
Protecting trade dress comprising a colour combination
In Colgate Palmolive Company and Another v Anchor Health and Beauty Care Pvt Ltd, Suit No 691 of 2003, the plaintiff sought an injunction against the defendants' use of the trade dress and colour combination of red and white in a ratio of 1:3 in relation to identical products, namely tooth powder when the marks being used by the two parties were completely distinct, being Colgate and Anchor. The court granting an injunction in favour of the plaintiff held:
May be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.
Trans-border reputation
The Delhi High Court in George V Records, SARL v Kiran Jogani, Suit No 739 of 2003, recognized spill-over trans-border reputation of the mark Buddha-Bar for restaurants and music albums. There are numerous cases where trans-border reputation has been permitted to be established through advertisements published in international newspapers and magazines circulated in India. But in this case, perhaps for the first time, the Court took cognizance of reports, write-ups and interviews of the plaintiff, which appeared in newspapers.
Recognition of the concept of a single economic entity
The court in the Buddha-Bar decision also recognized the concept of a single economic entity in holding that the plaintiff has proprietary rights in the mark Buddha Bar even if for music-related business it was held by a sister or affiliated company, which was not a party to the suit. This would have tremendous impact on actions filed by mega-corporations, which owing to the exigencies and practicalities of modern business practices often divide ownership of their IP assets over different entities tied together in one group, which may even be spread over different geographical territories. By this ruling the parent company would be able to assert proprietary rights in the assets of its group companies while initiating action for their protection, thereby avoiding a multiplicity of proceedings.
IP redress through non-IP principles
Courts are willing to play a pro-active role by expanding the frontiers of IP laws. Where a certain wrong needs redress, but the claimant is unable to put it strictly within an IP pigeon hole, the courts readily extend and apply principles of common law and accord protection to the right owner. Two recent decisions well illustrate this trend.
The Delhi High Court in Tata Sons ltd v Amit Kumar, Suit No 2158 of 2003, restrained the defendant from causing transmission of unsolicited bulk electronic mail to any user of the services of Videsh Sanchar Nigam Ltd (VSNL), India's leading international telecommunications service provider and the first internet service provider. In the absence of anti-spamming legislation, the court recognized and gave protection against spamming, the sending of unsolicited bulk communication which is of a commercial nature, under the tort of trespass and the principle of unlawful disturbance of possession of the goods of VSNL.
In Emergent Genetics India Pvt Ltd v Shailendra Shuvam, Suit No 50 of 2004, the Delhi High Court applied principles of the law of confidentiality in giving protection to hybrid cotton seeds which are genotypically identical seeds of the plaintiff and the principles of the copyright law to protect unique sequencing information locked inside genes of hybrid varieties of the plaintiff. This approach was necessitated by the fact that the Protection of Plant Varieties and Farmer's Rights Act has not been notified as yet, though it has been passed by both the Houses of Parliament.
Ambush marketing
In ICC Development (International) Ltd v Arvee Enterprises, 2003 (26) PTC 245 (Del) ICC - through its event management arm, ICC (Development) International Ltd (IDI) - filed a suit seeking a permanent injunction against Philips's use of the words World Cup in its promotional scheme offering World Cup ticket cum travel packages to South Africa as prizes for customers purchasing Philips products. IDI pleaded that Philips's advertisement amounted to ambush marketing, since Philips has not paid to become an official sponsor, and therefore should be restrained from carrying on such activity whereby it seeks to ride on the goodwill generated by the event. The court holding for Philips held that the phrase ambush marketing is used by marketing executives only and this form of opportunistic commercial exploitation of an event amounted to constitutionally protectable commercial speech. Thus, it was for the legislature to decide how far to curtail legitimate fair competition and freedom of speech.
Right of publicity
The Delhi High Court in a landmark decision on the right of publicity in an event such as the World Cup Cricket South Africa, 2003, in the World Cup case, supra, observed that the right of publicity could not extend to non-living entities, such as events, because (1) there are alternative theories for protection of such events within intellectual property laws; (2) protection afforded to an event would be against the basic concept of persona, which, by its very definition can inhere only in an individual or any indicia of an individual's personality. The court explained that though an individual may acquire the right of publicity by virtue of association with an event, that right does not inhere in the event in question, nor in the organization behind the event. This was the first decision on the right of publicity by any court in India.
John Doe orders
The courts are willing to relax the strict procedural requirement of naming the defendants against whom an action is initiated by passing equivalents of John Doe orders. Where the defendants belong to an identifiable class but cannot be determined individually due to the nature of their activities, the courts are willing to give relief in the nature of Anton Piller orders authorizing court-appointed commissioners to enter the premises of the defendant and record evidence of their infringing activity. This path-breaking trend was started in Taj Television v Raj Mandal, 2003 FSR 407, where court commissioners were authorized to enter the premises of various cable operators who were transmitting the FIFA World Cup football matches, 2003 in violation of the broadcast reproduction rights of the plaintiff. These orders are typically passed in the context of specific events, where the IP rights may exist or be of relevance for a specific period of time. Once the wrongdoing persons are identified, they are added as defendants to the suit. Such an order is of immense value in situations where time is of the essence if the IP right is to be safeguarded in a meaningful manner. The concept was further expanded by granting an open-ended Anton Piller order in Taj Television v Mahalakshmi Communications, Suit No 242 of 2004, whereby known and unknown cable-operators were restrained from telecasting of the India-Pakistan cricket series, without the authorization of the plaintiff. The order of injunction was to take effect as soon as the court commissioner would have served on the cable operator the order of the court.
Functional designs are not registrable
In M/s Glaxo Smithkline Consumer Healthcare v M/s Hindustan Lever Ltd, Suit No 1214 of 2003 before the High Court of Delhi, the court while refusing an injunction to the plaintiff in respect of a registered design for a toothbrush handle which the defendant was alleged to have copied, held that the design registration was bad in law as Section 2(a) of the Designs Act, 2000 mandates that a design registration can be obtained for an article but the product that is the subject matter of the plaintiff's design registration in effect pertains to a part of an article, being the handle of a toothbrush, and therefore does not qualify as an article. Additionally proprietorship could not be claimed over the hand-grip design on account of the same being a mere mechanical device which is therefore barred from registration under Section 2(d) of the Act, and it being a functional feature, the said attribute being acknowledged by the plaintiff itself on the packaging in the description "ergonomically shaped handle for total control of your cleaning". The Court went on to hold that the plaintiff's handle portion is a trade variant incapable of being design protected and a few similarities of lines and angles between the competing products do not create design rights or establish infringement. The court concluded that the defendants have not infringed the plaintiff's rights since on comparing the brushes as a whole on a side-by-side comparison of the essential features of the two designs, the similarities are immaterial and not substantial.
Traditional knowledge
While a comprehensive law protecting the interests of owners of traditional art and knowledge is being contemplated, as a first step, recognition has been afforded to traditional knowledge at the legislative level. The Patents Act, 1972 (as amended in 2002), makes specific mention of the traditional knowledge of India, by including reference to it in the list of non-patentable inventions and by providing a ground of opposition and rectification of a registered patent, that an invention is anticipated if the knowledge behind the invention is available within any local or indigenous community in India or elsewhere or the complete specification does not disclose or wrongly mentions the source or geographical origin of the biological material used for the invention.
Exclusive marketing rights (EMR)
So far 15 applications have been filed for the grant of EMR. Of these three have been allowed, four have been rejected and the remaining eight are pending disposal. A perceptible shift has been noticed, inasmuch as after the first few EMR applications were rejected, the Patent Office has been more open to the grant of EMRs. The controller, while refusing two EMR applications filed by SmithKline Beecham held that the examiner in the course of examination under Sections 3 and 4 of the Patents Act, 1970 found that the subject matter in question was not novel and therefore could not be considered as an invention. The controller held that an EMR is a subset within a patent right. A patent can only be granted under the Act on an invention; therefore an EMR can also only be granted on subject matter which is an invention. These orders have been challenged by SKB in writ petitions before the Delhi High Court, since the Patents Act does not provide for an appellate procedure. Recently an EMR was granted in favour of Novartis for its anti-cancer drug Glivec, which was similarly challenged before the Delhi High Court. However, the writ has been dismissed for want of territorial jurisdiction.
Developments
India has been notified as an international depository authority, pursuant to its becoming a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms on December 17 2001. Accordingly, the Microbial Type Culture Collection (MTCC) at Chandigarh has been named as the said depository by the government of India.
Another development that is taking place is that increasingly more and more technically trained professionals are joining IP firms to assist in the patent departments. This is in keeping with the IP awakening sweeping the country and it augurs well for the future as it opens up the field to interactions from analogous fields, introduces competitiveness and encourages inter-sector movement. This trend is only going to pick up in the coming times as after the amendment to the Patents Act, a person must have a degree in science, engineering or technology to qualify as a patent agent.
Far ranging changes have been brought about in the civil procedural laws and the law of evidence. Now evidence can be admitted by electronic means, which includes downloads from the internet. Evidence can be led of documents of which the originals are not available but which have been scanned into computer systems and stored on magnetic memory. There is a further need to amend and modernize the laws of evidence, as it specially impacts IP cases where often times the plaintiff is a foreign company, thereby giving rise to difficult questions arising from issues of resolution of conflict of laws regarding the proof and admissibility of documents, ownership of title, corporate structure and contractual laws.
For India the journey from a state of a total lack of IP awareness to the present state of proactive pursuit of IP has been a long and arduous one. Having unleashed India's IP potential in the recent past, the time has now come to harness or rather charter the tremendous IP strengths and energies of the country.
Profile: Pravin Anand |
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Pravin Anand has been a partner of Anand and Anand in Delhi since 1980. He completed his law studies in 1979 at Campus Law Centre in Delhi and has been practising both as an advocate, and as a patent and trade mark attorney, since then. Pravin has been counsel in many of the leading intellectual property cases. Pravin is the author of several key papers on intellectual property and has been invited to speak for the WIPO, IBA, INTA, AIPPI and UN among many others. He has been called to advise the Indian Parliamentary Committees on Copyright, Trade Marks and Patents which have resulted in a number of key bills including the Copyright (Second Amendment) Bill, the Trade Mark Bill 1993 and the Patents (Second Amendment) Bill 1999. |
Anand & Anand
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Email: pravin@anandandanand.com
