Intepat IP Services Pvt Ltd (“Intepat”) is a niche Intellectual Property (IP) services Company that provides a broad range of customized services in Intellectual Property matters, that includes patents, trademarks and design.
Intellectual Property (IP) is one of the most valuable assets of a modern day enterprise as it is non exhaustive, high return yielding and it acts as an instrument to establish leadership in the relevant market. IP has the potential to explore extensive business opportunities and attract voluminous profits for a commercial entity. For example, Nokia’s IP licensing arm generates about $600 million in steady royalty income every year. The transfer of rights in the Mobility technology by Motorola to Google brought fortunes to the former worth $12.5 billion.
Often is the case that enterprises fail in ascertaining the full worth of their IP and hence avoid to act towards protecting it. Consequently, this leads to undervaluation of the IP assets and substantial loss to the IP owners in terms of failure to explore business opportunities.
Therefore, a thorough review of the enterprise’s IP assets with the objective of determining their legal status, economic potential and strategic importance is pre-requisite for efficient commercial appropriation of such assets. This systematic reviewing process is generally referred to as an “IP Audit”.
Laying down the Foundation
The primary step towards a productive IP Audit is identification of the suitable mode through which audit is to be conducted. During the process of identification, the purpose of study must be set out so as to assure utmost level of precision and efficiency in the auditing process. Individual roles have to be assigned and the expected period of auditing along with budget allocation must be laid down before commencement of the audit.
Identifying A Suitable Methodology
A broad approach for auditing may be adopted if the purpose is to scrutinize and systematize the IP portfolio of an enterprise. This also helps in development of an IP management approach and IP-driven culture within the firm. On the other hand, an IP audit can be conducted in the form of due diligence. The primary purpose is to evaluate the worth of a company’s IP and assessing the risk and value of such IP. Such IP audits are generally carried on to make the best out of a prospective corporate restructuring opportunity. Apart from this, an IP due diligence also smoothen outs the process of assignment and licensing of such the assets.
The Preliminary Stage
In order to effectuate an error free IP audit, it is always advisable to prepare a detailed checklist describing the major tasks which need to be undertaken. Some of the most relevant heads in the checklist are; constructing an IP Asset Inventory, a legality check of all the IP assets, review of the firm’s IP strategy and its compatibility with the entity’s business strategy, risk identification and management thereof.
An Overview of the Process
IP Audit is an extensive process which includes multiple stages of fact finding and analysis of the company’s IP portfolio. Broadly, the process focuses on reviewing the IP assets inventory of the company, ownership details, protection of the assets, contracts pertaining to such IP assets and infringement issues. A major facet of IP auditing process is a SWOT analysis wherein emphasis is put on revealing the strengths, weaknesses, opportunities and threats of the enterprise regarding its IP portfolio and practices.
The Post-Auditing Operation
When a detailed report is forged out of the auditing process, the loopholes in IP management of the company must be identified on the basis of which specific remedial actions need to be taken. Following the audit, the entity must strive towards securing its unsecured IP assets, exploring the IP-centric business opportunities, eliminating all the IP infringement possibilities and bringing its IP practices in consonance with the strategic objectives of the company.
The biggest challenge in completion of a successful IP audit is to drive it to its end stage. The process can be so long and cumbersome that the managers may lose their interest in the auditing process. In order to eliminate these challenges, a strict planning must be done before commencing with the core stage of auditing (as discussed above under “Methodology” and “the Preliminary Stage”). Conclusively, it is noteworthy that the understanding of “asset worth” in contemporary business world has transcended beyond the worth conceived by the company’s physical assets. In fact, the 21st Century global market places more emphasis on the intrinsic value of an entity’s intangible assets, which majorly comprises of its Intellectual Property. Therefore, it is high time that IP-driven businesses realize the actual worth of their predominant asset portfolio and make the best of its efficient utilization.
Big Pharma is a multi-billion dollar industry that acts as one of the cornerstones to a successful healthcare paradigm, while simultaneously pushing the envelope when it comes to technical and scientific advancement through a strong intellectual property portfolio. Its greatest challenge is striking a balance between financially exploiting its own trademarks to the maximum in an exclusive manner, while dispensing medicare services without disadvantaging any segment of its target market. The situation is exacerbated, not only by the differential application of trademarks in the pharmaceutical sector as it requires a higher standard of care, but also the intervention by Healthcare Regulation Agencies to ensure trustworthy, safe, distinctive drugs with a minimal likelihood of confusion.
A trademark is not simply a mark or a visual symbol that denotes the proprietor or the quality of a product, but goes far as crystallizing customer loyalty even after the expiration of a patent term for a medicament. The law, thus, rewards registration of trademarks with statutory remedies in case of infringement under Section 29(1) of the Trademarks Act, 1999 in an effort to reduce the risk of confusion on the rational layman having imperfect memory. Since identicalness and deceptive similarity can have fatal implications in the pharmaceutical industry, the judiciary has gone beyond the bare provisions of Section 9(2)(a) and Section 11(1)(b) containing Absolute and Relative grounds for refusal of registration respectively by not only placing a differential burden of proof on the plaintiff but also by shifting the onus on the applicant when denouncing the deceptive nature of an applied trademark. The Likelihood of Confusion Doctrine has further been jurisprudentially developed from prior precedents and the imputation of foreign rulings to protect the interests of the proprietor, medical professionals and end-user consumers.
The contention arises from the intended two-fold amelioration of constitutionalized health and business rights enshrined in Article 19(1)(g) and Article 21 of the Indian Constitution respectively, as it is difficult to reconcile regulation emanating from consumer protection law and fundamentally different intellectual property rights. Creating a rigid criteria to gauge at the confusion arising from similarity in the drug industry falters when compared to circumstantial determining of the impact of a possible co-existence of opposing signs. Likelihood of confusion is influenced by phonetic, design, packaging or pattern similarity, or treatment of the same ailment with an even greater room for error when verbally or self- prescribing by the average individual. Deception, after all, flows from something contained in the mark, or from the nature of its use or resemblance to a senior mark.
The application of Section 13 regarding the prohibition of the registration of generic and chemical names in the above sector also poses a unique challenge in the realization of their trademark rights– drug monikers are primarily either ailment based or on the principal components amalgamated with associative pre-fixes or suffixes. Thus, what is trademarked is different from the actual name of the drug that is bought by consumers and this can understandably have an adverse impact on all the parties involved. A consumer’s loyalty and logical inadequacy, among other drawbacks, must not be allowed to be abused and, the courts have tackled different elements through many cases- Cadila Healthcare Ltd. vs Cadila Pharma Ltd. where a lesser burden of proof was required as medicines are life-threatening, Ranbaxy Laboratories Ltd. vs Anand Prasad & Ors. where deceptively similar suffixes in drug names were held to be against public health and welfare, and Win Medicare Pvt. Ltd vs. Galpha Laboratories Ltd. & Ors. where it was adjudged that there was a high risk of confusion due to the similarity in trade dress, colour and packaging.
The European Court of Justice has taken a step further by offering clarifications on the nature of confusion, that, when read with Section 11(1) classifies the likelihood of being deceived into direct confusion where the public confuses the sign and the mark in question, indirect confusion or association where the public makes a connection between the proprietor of the sign and those of the mark leading to confusion, and strict association where the similarity of the mark and the sign bring to mind the memorable mark even though the two aren’t necessarily confused. Furthermore, it has also provided elements in Sabel vs Puma which builds on the Evershed Formula, without boxing in the discretion of the adjudicator or excluding extraneous circumstances. The basis for evaluation of the risk of confusion is dependent on whether the infringed and the infringer’s drug treats the same disease, as the consumer base is different if the ailment is different; the amount of time consumed in ensuring correct administration of the drug by end-users and pharmacists; whether it is over-the-counter or a prescription based medication as, the former would require greater attention leading to a lower requirement of proving deceptive similarity while the inverse would be true for the latter; and who the actual consumer is, and the extent to which the doubtful impression is offset by knowledge and skill in the field.
The above cannot be considered in isolation, and couching the takeaways of the Smith Hayden Application within the Amritdhara Pharmacy case, which together forms the bedrock for testing confusion, produces a lesson where it is vitiated if: a substantial number of the senior mark’s customers are not confused or deceived even if the applicant uses his mark in the fair and normal use of the registered goods, keeping in mind the relative circumstances of the case, the average intelligence and imperfect recollection of the layman and that deceptive resemblance can only be established by answering who the mark is intending to deceive and the rules of comparison to establish such similarity. The ruling in the Lipidrol case is a notable exception as it was a departure from the expectation of a low level of attention from the consumers as doctors were brought within its confines, but that doesn’t take into account uninformed end-users, possibility of stress, and mistakes creeping into their considerations.
It is imperative that health should be of greater importance than intellectual property and, the lack of elaborative confusion/ association related provisos in contemporary Indian trademark law prevents the adequate reduction of risk of likelihood. Big Pharma, as well as end-users, are in urgent need of such clarifications to avoid a negative impact on goodwill, life and business. Now is a good time as any to look West for answers.
 M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd on 9 May, 2000
 National Sewing Thread Co. Ltd vs James Chadwick & Bros. Ltd. 1953 AIR 357
 el Monaguillo SA v Province of Buenos Aires (Supreme Court, 1982)
 Química Montpellier S.A. vs. Investi Farma S.A.”, Case No. 440/2013, Setpember 9, 2016
 Bass Ratcliff & Gretton Ltd. vs Nicholson & Sons Ltd. (1932) 49 RPC 88 p.107
 Appeal (Civil) 2372 of 2001 and Special Leave Petition (Civil) 15994 of 1998
Article 4G of the Paris Convention advocates for divisional patent applications which seek to ensure that the inventors’ multiple inventions are protected individually and that the objections raised in the examination report are rectified in a productive manner. In India, Section 16 of the Patents Act, 1970 incorporates the provision for division of applications. The provision stipulates for filing of an additional application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the parent application. Such application can be filed by the applicant voluntarily or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention.
Ascertaining the Effectiveness of Section 16
The provision endeavors to protect multiple inventive concepts separately. However, the provision has been misused in order to monopolize a particular segment or to frivolously stretch the examination process. A brief understanding of the following cases can be helpful in ascertaining the effectiveness of Section 16-
1) The Delhi Network Of Positive People V. Union Of India & Ors. [W.P.(C) No.2867/2014]
The case concerns with Anti-Retrovirals (ARVs) drugs which when taken in combination of three, help in the treatment of HIV. Prices of these drugs were exorbitant till a bunch of Indian generic pharmaceutical companies offered to make the same medicines at much lower costs. This resulted in a fall in prices of the said medicines and which in turn enabled the developing and least developed countries to provide treatment to persons living with HIV/AIDS. In order to neutralize the effect of low cost medicine in the market, the patentee of ARVs went ahead to file multiple patent applications relating to individual drugs and monopolize the sale of the same.
The court accepted the allegations made against the drug company, that the divisional applications were filed with the intent to keep the patent applications alive and/or to revive the patent applications which were about to be rejected/refused. Therefore, it could be inferred that the applicant had been misusing the provision for filing divisional application with claims which are identical to the claims of the parent application.
However, the procedural intricacies often render the deliverance of justice ineffective as it happened in this case. The court left the petitioners devoid of any remedy citing the following reason:
Although the errant patent applications suggest of abuse of procedure, it is beyond the court’s jurisdiction to provide the form and manner in which any application for patent may be processed in the Patent Office and the details to be furnished by the applicant to the Controller etc.
2) LG Electronics Inc. v. The Controller of Patents & Designs 7 Ors. [Order No. 111/2011. IPAB]
While adjudicating on a divisional application filed by LG Electronics, the Board negated the argument of the applicant that the word “or” in the provision confers discretion upon the applicant i.e., to divide a patent application suo moto. It was held that the word “or” was conjunctive in its aim and hence the divisibility of an application shall be based on a plurality of distinct independent inventions. Hence, the Board disallowed the appeal as the claims in the parent application were same as those contained in the divisional application.
If the applicants in such cases are given unqualified liberty to file divisional applications, the examination and re-examination stage will not terminate in a time bound manner and the patenting processes in the country will be severely impeded. Such a custom will harm the society as it will deprive them of gaining access to the patented works within a reasonable time. Frivolous divisional applications can be used as a tool to extend the life of the patent, thereby stretching timelines as prescribed under the law.
Law strives to provide a remedy to its subjects, which at times becomes impossible due to the ill intent of men with whom the law concerns. Divisional patent applications have been transformed into a tool to deceive the authority and the public at large. From here, the onus lies upon our legislature and the executive to fill in the loopholes in the patent application processes and curtail frivolous filings of divisional applications.
A recent Supreme Court judgment pronounced over the issue of “bad faith filings” has baffled the business world as well as legal experts. In Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited (Civil Appeal Nos.5375-5377 OF 2017), the apex court has refused to accept the automobile giant Toyota’s objection against registration of the mark “PRIUS” in favour of an Indian automobile parts manufacturer, Prius Auto Industries Ltd. Toyota pleaded “bad faith” on the part of Prius Auto and the same was rejected by the Court.
Toyota had launched its car, PRIUS, in several countries in the year 1997. However, the car was launched in India only in 2010, by which time Toyota had not filed for registration of the mark ‘PRIUS’ in India. Prius Auto, on the other hand, had obtained registration for the mark PRIUS in India in the year 2002 and had been using the same since the year 2001 for its business of automobile spare parts. In its judgement, the Supreme Court did not find Toyota’s online evidence sufficient as to conclude that back in 2001-02 its brand PRIUS was well known in India. The Court was of the view that the online evidence was not ‘a safe basis to hold the existence of the necessary goodwill and reputation’ because in the year 2001 India had limited online exposure. Hence, the ruling ended up being in favour of Prius Auto on the ground that it was the first to use and register in India and there cannot be any element of “Bad Faith” on the defendant’s part.
A Past Perspective
Under The Trade Marks Act, 1999 “bad faith” has not been defined or elaborately discussed except a contextual mention under section 11(10) (ii), forming part of the relative grounds for refusal of registration. Therefore, it becomes essential to find an epicenter for this analysis back in the previous rulings of Indian Courts on the subject matter.
In the year 2004, Supreme Court had held that non-use of a mark by foreign companies in Indian market will not affect its prior user status if the mark was used first in the global market. [See Milmet Oftho Industries & Ors. vs. Allergan Incorporated [2004 (12) SCC 624]. However, from the ruling of the apex court in Prius Auto case it appears as if the ratio of Milmet Oftho has been considerably downplayed, giving prior registration in India prominence over the principle of ‘first in the world market’. Indian courts have on other occasions as well denied registration of marks on the ground of bad faith even if the opposing party did not have a presence in India, for example registration of the mark “PANADOL” was denied in the case of Winthrop Products Inc. v. Eupharma Laboratories Ltd. [1998 (18) PTC 213 (Bom).
The decision, as it reads now in Prius Auto case, may cause nightmare to the foreign companies and bring unwarranted results for them. These companies may be those who are well known in India but may not be operating in India or they deal in specialized goods targeting a small group of consumers. Conclusively, the judgement delivered in the Prius Auto case suggests that a settled principle has been converted into a grey area of law. Thus, the dust will only settle once the apex court confirms or clarifies its stance on the burning issue of “Bad Faith Filings.”
Bad Faith Filing: A tool to deprive the Righteous of their Rights.
“Bad faith filings” refer to such applications for trademark registration wherein the applicant’s mark is identical or similar to the mark of a third party, especially renowned-brand owners, in order to take advantage of the fact that the genuine trademark user has not registered the same.
An alliance against the common plight: TM5
TM5 is an international organization of five domestic trademark offices, i.e., the Japan Patent Office (JPO), the Office for Harmonization in the Internal Market (OHIM), the United States Patent and Trademark Office (USPTO), State Administration for Industry and Commerce of the People’s Republic of China (SAIC) and the Korean Intellectual Property Office (KIPO). The group of five has strived towards building a common consensus on the policy making and administering trademark regimes concerning the member states’ respective jurisdictions.
TM5 has driven a project titled as “Continuation/Expansion of Bad Faith”, objective being information exchange on the said subject and propagating user awareness on ways they can respond to bad-faith trademark filings. In pursuance of this, TM5 has held seminars since 2010 wherein information on operational practices at each member state’s trademark office was shared internally. Seminar held in Tokyo (2013) was dedicated to a comparative analysis of member states’ domestic laws and practices whereas, the Hong Kong meet (2014) focused on legal systems and practices for bad-faith trademark filings by TM5 partner offices.
Excerpts from the Report on “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”
Defining “Bad Faith”
In the report it was concluded that none of the TM5 offices have adopted a definition for the term “bad faith”. Nevertheless, the important factors determining bad faith at each of the TM5 offices are common:-a) extent that trademarks are considered to be well-known;b) an intention of an unfair purpose; c) existence of a relationship between applicants and other persons.It was also concluded that these factors are not exhaustive for the purpose of determination of bad faith. It implies that while assessing bad faith in actual cases, any bad-faith filing should be determined with full consideration given to all relevant factors and circumstances pertaining to individual cases.
Stages of Adjudication on “Bad faith”
JPO and KIPO– Examination of “bad faith” can be conducted even at the ex-officio examination stage i.e., the first stage after filing of application. Further, “bad faith” can be ascertained after Oppositions are received as well as during the trial for validation/ invalidation.
SAIC and USPTO– A plea of “bad faith” is allowed at the Opposition stage. The ground of “bad faith” can also be raised in the trial for invalidation after registration of the mark.
OHIM– “Bad faith” is allowed to be requested only after the trade mark has been registered i.e., in an invalidity/cancellation action or counter-claim in national infringement proceedings.
The Common Principles of Adjudication
Establishment of “bad faith” directly relies on the establishment of “ill-intent” in the mind of applicant. Undisputedly, the issue is a subjective one in toto. Therefore, a judgement on bad faith is pronounced after a thorough scrutiny of the facts and the circumstantial evidence in each case.Under all the five jurisdictions, the burden of proof lies on the person pleading bad faith. Moreover, a likelihood of confusion among the rival marks is no proof of bad faith on the part of applicant.
An erroneous decision over bad faith filing may cause substantial harm to the business of a genuine mark holder or it may deprive a genuine applicant of the exclusive rights arising out of registration of the mark. Therefore, it is pre-requisite that patent offices across the globe consensually lay down certain principles which shall guide the examination and adjudicatory processes on “bad faith disputes”. It is still unpredictable what TM5 will come up with in its subsequent meetings. Whether a new disciplined model will be forged out to curb the menace of “bad faith filings” Or will the existing framework hold good enough for resolution of future disputes?
Image Source: Wikipedia
I: Understanding Plain Packaging:
The recent WTO ruling upholding Australia’s right to standardize packaging of tobacco products has not only struck fear in the hearts of tobacco companies but has also forayed into plain packaging laws and, the role they play in balancing intellectual property rights and public interest and safety. Simply put, the act of displacing distinctive and appealing packing of tobacco products with homogenous design dominated mostly by pictorial and textual warnings related to the ill-effects of tobacco consumption, is called plain packaging. Countries such as Ireland and the UK have also made headway in consciously limiting the exercising of intellectual property rights of the proprietors of ‘disfavoured’ products. Imputing the lessons from such progressive perspectives into the Indian paradigm will be difficult, but not impossible as the judicial and legislative back and forth in India has offered substantial clarification.
II: The Development of Tobacco Legislation:
India has over 100 million tobacco users with almost one in three adults admitting to having used it regularly. In an effort to curb the tobacco epidemic, the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (“COTPA”) and the Cigarettes and other Tobacco Products (Packaging and Labelling) Rules, 2008 were introduced. However, the fundamental regulatory purpose of the legislation was being vitiated through the sale of tobacco products in attractive packaging. It was also directed by the Supreme Court, having received no response till date, to the Ministry of Health, pursuant to a PIL being filed in 2016, that delaying the implementation of plain packaging was in violation of the rights of the citizens under Articles 14 and 21 of the Constitution.
Conversely, with a noticeable decrease in tobacco consumption of 3 percent in Australia post the introduction of plain packaging laws in 2011, and with Brazil finding success by removing descriptors from the plain packs that further decreased the ratings of appeal, taste and smoothness, and associations with positive attributes, certain changes were required to be made to reassert the importance of health over commerce in India.
To that end, Article 3(1)(b) of the above Rules was altered in 2014 to increase the size of the health warning on the principle display area from 40% to 85%, along with printing of manufacture details and the prohibition of brand promotion. After all, Article 47 of the Constitution vested a duty with the state to raise the level of nutrition and standard of living to improve public health.
III: Role of the Judiciary: Constitutional Considerations
The amendment was challenged in the Karnataka High Court in 2017 as being violative of Section 28 of Trade Marks Act, 1999, Article 14 and Article 19(1)(g) which refers to exclusive right of trademarks, right to equality and right to business, respectively. Since the State could not establish the inadequacy of the previous 40% requirement with empirical data, the reason for uniform applicability for all tobacco products having different packaging schemes and the requisite balance between a proprietor’s trademark rights and public health concerns, it was held to have a detrimental, unjustified impact on business in a discriminatory manner that caused unfair limitation of intellectual property rights, and consequently struck down. Moreover, Article 11 of the Framework Convention on Tobacco Control (FCTC) also recommended the introduction of warning labels for 50% of the packet cover, so it seemed prima facie that there was no meaningful objective that was being accomplished.
However, in Health For Millions Trust vs Union Of India, the Supreme Court stayed the High Court’s order and reinstated the 85% requirement as it not only viewed that as a reasonable restriction on Article 19(1)(g) but also that a policy based decision on the health risks posed to citizens could not be struck down, simply for the want of empirical data. Instead of hinging on the rationale behind the numerical increase, it subscribed to the view that any display warning below 85% did not adequately inform and safeguard the health of the consumers. Business and Intellectual Property considerations fell flat when there existed a need to prevent the desensitisation of products causing the “destruction of health”. The Trademark argument was also handled internationally with the UK arguing that as a negative right, limitation of the trademark did not withhold the rights of the proprietor and, Australia debunked the claim that it was seizing the intellectual property of tobacco companies by pointing out that there was an proprietary benefit to the Commonwealth that would amount to an acquisition.
IV: Problems with Plain Packaging
India took a step in the right direction by intervening on behalf of Australia in the WTO dispute. However, cost-effective tobacco control mechanisms aren’t free of concerns as it makes it harder to control the entry of counterfeit products, strengthening the possibility of plain packaging doom for other disfavoured industries such as soda and alcohol, limits the ability to exercise copyright and trademark rights for tobacco companies to just on paper, increases the attractiveness of tobacco consumption that stems from the appeal often associated with experimenting with the illicit and the forbidden, might usher in a brutal price war as a distinguishable factor to increase consumption and, almost 75% of all cigarettes in India are sold loosely, thus minimizing interaction with the homogenous packing. Over 14% of all consumed tobacco was illegal in 2013 in Australia, highlighting the potential for adverse consequences.
While it is hard to truly gauge at the effectiveness of policies on behalf of public health, it is an established fact that tobacco consumption increases the incidence of various forms of cancer. Intellectual Property and Commerce can only be afforded protection when the health of the individuals participating in such spheres have been assured. However, the pros and cons must be analysed and an enlightened collaborative approach must be taken by the branches of the government to ensure maximum positive impact to the parties involved from standardized packaging.
E-commerce has become a haven for the counterfeiters to make unlawful profits by deceiving consumers across the globe. Counterfeits have become one of the biggest economic issues of this era. By 2022, the value of counterfeit and pirated goods is predicted to grow to $2.8 trillion and cost 5.4 million jobs. It has brutally dented the business relationships among producers, intermediaries and the consumers. China has historically been known as the global factory of counterfeits. Therefore, it does not come as a surprise that a Chinese multinational e-commerce giant has consistently been in the headlines for its involvement in the mass distribution of fakes.
Alibaba- “the notorious market”
Alibaba, an e-commerce giant has always been on the radar of law enforcement authorities because of its involvement, intentional or unintentional, in distribution of counterfeit products. In 2014, Ni Liang, Senior Director of the Security Department for Alibaba Group, presented a paper on Alibaba.com’s IP protection practices at the Ninth meeting of the WIPO Advisory Committee on Enforcement in Geneva, Switzerland. Mr. Liang boasted about his company’s efforts in curbing piracy which includes a voluminous expenditure of more than 100 million Yuan each year in order to fight inferior and counterfeit products. The company has established a task force comprising of 5,000-strong professional IP protection team, staff from relevant departments and online volunteers. Alibaba has also come up with an intellectual property protection platform- AliProtect. As claimed on their official website, AliProtect strives to provide a platform for right holders and their agents to enforce intellectual property rights efficiently.
Ironically, since 2016 the U.S. Trade Representative (USTR) has put Alibaba’s Taobao on its blacklist over suspected counterfeits sold on the shopping platform. Tabao has been classified as “Notorious Market”, a designation for the world’s biggest violators of IP, trademark, and copyright law. The action has obviously outraged Alibaba as is evident from the statement of the Group President, Michael Evans- “In light of all this, it’s clear that no matter how much action we take and progress we make, the USTR is not actually interested in seeing tangible results.”
A Growing Parasitical Economy in India: Challenges Ahead
Cyberspace involves extraordinary complexities and challenges when it comes to its regulation. It cannot be disputed that law enforcement agencies of most countries are not equipped and trained to deal with cybercrimes including online piracy. Jurisdictional issues bring with them legal challenges for law enforcement agencies as the violators of IP, trademark, and copyright laws, operate trans-nationally. Hence, a preliminary issue is always on the table to be deliberated upon.
India is among those countries which are at the receiving end as far as parallel market of fakes is concerned. According to a report in RedSeer, a market research firm, the Indian e-commerce industry lost USD 3.4 billion in Gross Merchandise Volume (GMV) due to product returns in 2017. According to a survey conducted in India by LocalCircles, 12% consumers said that they had received counterfeit products on Snapdeal, while 11% said Amazon and 6% cited Flipkart.
India’s business is booming better than ever before in e-commerce sector and it brings with it an opportunity for India’s young entrepreneurs to access global markets and consumers in a faster and cost effective way. However, the scourge of piracy has belittled this opportunity. Consumers do not have unconditional faith on e-commerce platforms anymore and one of the responsible factors for the deteriorating business relations is- lack of action on the part of regulators. Therefore, the regulatory authorities need to take a stringent approach to curb the menace of online piracy. If not done so, young and developing businesses in countries like India will incur irreparable damage.
With the signing of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005, Section 25 of the Patents Act, 1970 was amended to include the ability to oppose patents before and after they are granted. This ensures proper appropriation of intellectual property and internationally harmonizes the patent regime. Patents are revoked in cases of infringement or claims by licensors, or if it is deemed as against public policy by the Central Government, as the exclusive financial rights that come with it aren’t absolute, and can be done so at any point during the lifetime of the patent.
Who can Initiate?
Generally, the Central Government, one who makes a counter-claim in a suit for infringement and any person who has a direct, tangible and commercial interest who has been injured or affected by the continuance of the patent on the register or by its use (“Person Interested”) have the right to initiate revocation proceedings.
Jurisdiction and Multiplicity of Suits
Section 104 states that only the Intellectual Property Appellate Board or the High Court can be approached for revocation as no suit of infringement can be brought before a court inferior to the District Court having jurisdiction.
Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in the Enercon (India) Ltd and Ors. vs. Enercon Gmbh, that post grant opposition proceedings and petitions or counter-claims of revocation against the same patent, cannot be simultaneously instituted. Frivolous litigation shouldn’t be encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.
Section 64: Grounds for Revocation
Principally, Section 64 contains inexhaustive grounds that dictate the conditions that warrant the revocation of patents:
1. Invention is obvious, lacks an inventive step or utility
2. Invention isn’t new and, has been publicly used or published in India before the priority date or it is foreseen in light of the knowledge available within any local or native community in India or elsewhere.
3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to invention
4. The scope of patent specifications is incomplete or the specifications have either been already claimed in a patent that is granted
5. The patent was wrongfully obtained in violation of another party’s rights, such as through incorrect or false representation, or leave to modify specifications was obtained through fraudulent means
6. The information that has been disclosed under Section 8 is known to be false by the Applicant or he has been unable to furnish the required details
7. Complete specification omits or erroneously attributes geographical origin or biological matter used in the invention
8. The invention was either secretly used before the date or claim or the Applicant contravened secrecy instructions under Section 35
9. The complete specification neither describes the invention and method sufficiently nor does it disclose the best method of performing it which was known and entitled protection.
5. Beyond Section 64
Section 65 allows patent revocation if it is pertaining to the safety, production, control, use, treatment or disposal of atomic energy or a radioactive substance governed by the Atomic Energy Act, 1962 while Section 66 deals with a patent that in inherently or has been exercised in a mischievous or prejudicial manner causing harm to the State and the public. To prevent a patent from re-validating workable traditional knowledge, the Central Government revoked the patent in the case of Avesthagen Ltd. which had patented “A synergistic ayurvedic/functional food bioactive composition (Cincata) and a process of preparation thereof” that involved Jamun, Lavangpatti and Chandan to treat diabetes.
Section 85 deals with compulsory licenses of patents that haven’t been worked in India or have not been made affordable for the general public or lack reasonable requirements of the public within a two year time-frame. If one who has been given such a right isn’t in a position or is unwilling to take advantage of it, it is only fair that someone else be allowed to exploit it.
After giving an opportunity to the patentee to be heard, the relevant authority may make such declaration in the Official Gazette that the patent stands revoked. The owner of a patent must never be under the impression that once it has been granted, the said piece of intellectual property can be utilized according to his whims and fancies. Since it was granted to forward greater good in the first place and there are situations when new information come to light, a provision to revoke patents once granted is a key procedure in the protection of intellectual property rights.
 Ajay Industrial Corporation vs Shiro Kanao of Ibaraki City AIR 1983 Del 496
The battle to take over the household has heated up recently with increased capabilities coming to virtual assistants. Apple’s Siri, Google’s Assistant, Amazon’s Alexa and Microsoft’s Cortana not only boast a strong patent portfolio but have also collectively captured a majority of market share and user awareness. What makes them unique is their ability to fulfil simple tasks such as playing music, managing one’s schedule and answering questions while simultaneously having access to a trove of user data and application permissions that allow for greater complexity with regards to day to day control, such as manipulating lights, temperature and intelligent monitoring of one’s premises.
The goal is to automate laborious, technological tasks thereby improving the standard of living and ushering in a fundamental paradigm shift that maximizes contemporary and future technological capabilities. This is made possible by natural voice recognition with deep system integration, empowered by the necessary computing power, and its abilities are only enhanced when connected with other ‘smart’ devices. However, the approach taken by the software giants to achieve ubiquity in every facet of human life raises both privacy and intellectual property concerns, and makes one consider Orwellian implications.
Google has been at the forefront of technological innovation through advanced machine learning and speech pattern analysis utilized by its artificial intelligence (“AI”) developed in-house. Google Assistant has been shored up through the filing, and granting of multiple patents that has guaranteed exclusive financial use of primary and auxiliary methods and technologies that allow hands-off operation of digital devices. What is concerning though, is the potential it expresses to target ads in a more concentrated manner, and the extent of access to personal information required to fulfil certain basic tasks.
To breakdown the inner workings of Google Assistant from purely a patent standpoint, the symbiotic relationship between the underlying technologies must be considered. Multiple smart home devices combine their sensors to detect words and other inferences so as to maximize the input of information, that is then responded to via notifications on the contextually relevant device through its user interface. Keywords become ‘hotwords’, as Google calls it, when associated with certain actions which are recognized to begin processing the request of the user. An illustration would be saying “Ok Google” out loud which switches on the mike of the speakers as it begins to listen. Voice Models are created initially to help judge the nature of information and the extent of actionable access to the users. Thus, not only are the owners and other permitted parties given contextual information that produces tailored responses but different voices are given varied information, based on how the Assistant identifies you, or lack thereof. The latter is to prevent unauthorized access by unrecognized personnel. The verbal input is then translated into text that is comprehensible by the Assistant with capabilities to understand multiple inputs, and able to provide a direct output such as reciting a poem, or an indirect output such as switching on the lights and reducing the temperature.
As an intelligent automated assistant capable of speaking to other devices and services within its ecosystem, it can indoctrinate traditionally analog devices into the fold such as a coffeemaker, or a garage door. Simply serving the role of a middleman is short-sighted and the Assistant brings speaker recognition wherein different profiles are assigned based on audio input, using a neural network that can include other devices in the long run that interact with one another at a systemic level.
This mesh network connected to the internet and via a Local Area Network (LAN) enables privacy-aware personalised content sharing and ascertain information by collectively using all available hardware and software resources in a ‘Smart Home’. The leap towards complete automation is when policies are implemented on connected devices based on sensed observations such as a monitoring system whereby a message being sent to the parent if the child is trying to access the liquor cabinet (inferring ‘mischief’) or automatically play soothing music to calm down a crying baby. This is arguably the beginning of what Artificial Intelligence can achieve when coupled with a Virtual Assistant and the objective is to achieve ubiquity. The possibilities are limitless, but so is the potential for abuse.
As the Consumer Watchdog revealed, access to not only a vast repository of information that includes a person’s health data but also being able to monitor a person by employing different methods during their ‘downtime’ at home brings to mind the Orwellian nature of technological implementation. Profiles can be created that help target ads better and personal data sold, Google’s ubiquity can enable absolute control over ad-generation models, commercial third parties such as insurers and utility companies could benefit from home data, hackers can exploit vulnerabilities that could allow the malicious actors to access and profit off of private information, while conversely, law enforcement could also utilize smart camera footage and query history from the Google Assistant in an effort to tackle crime.
Total permeation of virtual assistants and their allied smart devices in the household can raise ‘thorny’ issues and one needs to be cautious of the price that is to be paid if technology is to make his life as easy as it does. With a continuous acquisition and licensing of patents by multinationals, the process of innovation is only accelerating. Expansion of the collection of personal data can magnify the risk of someone finding out something personal, but when used properly, virtual assistants are the realization of a dream that proves that the future is now.
The WIPO administered Global Brand Database search tool provides a common platform for users to check whether their product/service identities can be registered as trademarks. Additionally, it helps you to explore the brand landscape and retrieve brand related data sources. The portal provides access to three WIPO databases – international trademarks registered under the Madrid system for the international registration of marks; appellations of origin registered under the Lisbon system for the international registration of appellations of origin; and armorial bearings, flags and other state emblems as well as the names, abbreviations and emblems of intergovernmental organizations protected under Article 6ter of the Paris Convention for the Protection of Industrial Property.
The Trademark Search
A trademark search can be made on “Search By” areas wherein one needs to specify the term in respect of which the search is required. The fields provide automated suggestions to make the process easy and less time taking. For specific information, you may chose to enter specifications such as Brand, Names, Numbers, Dates, Class and Country.
Filters are available to confine your search area for a more accurate result. You can enter the following specifications to filter your search:- Source, Image, Status, Application Date, Expiration Origin, Designation, Nice Class or Registration Date.
On 21st December 2012, OHIM and WIPO came up with an integrated version of Global Brand Database managed by WIPO and TMview, managed by OHIM. Now, the smart button feature, which is now active in both the Global Brand Database and TMview, enables users to search in one tool and then to conduct the same search in the other tool, without the need to re-input the search criteria.
WIPO has always strived towards making its database more and more effective and user friendly. On May 10th 2014, WIPO introduced one-of-a kind image search function for its Global Brand Database. With this new feature, users can search for visually similar trademark and related brand information just by uploading an image on the portal. It supplements other search criteria such as Vienna classification codes, brand-holder name, country of origin, etc. Now, merely by uploading the proposed logo/mark users can sift through millions of images from 15 national and international collections of other registered images which may hinder the registration of proposed image.
Further, WIPO has uploaded video tutorials on their website so as to ensure that users make the best out of the available data.
WIPO has appreciably upgraded its Global Brand Database so that users do not face difficulties in accessing trademark information available therein. With the pacing world, it becomes pertinent to ameliorate search tools and provide the users with best of features objective being efficiency and precision. We expect that institutions like WIPO will continue to cater to the need of public in future as well.