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Class of Trademark for goods and services

Classification of goods for Trademark Registration

Prima-facie while going for registration of any trademark we know the exact class of the trademarks. However, there are some goods and services which creates the confusion while selection of the class for the trademark. Following is a comprehensive list of the goods and services alongwith the respective class thereto (courtesy – Trademark Department). This list will be helpful for all IPR practitioner in field of Trademark. Please go through the link for the comprehensive list of goods and services and their respective classes:

List of Goods and Services

Some crazy inventions......

Invention… Some inventions for the perfect weekend and at  the year-end…..

 Single-wheel motorcycle.....

 You must have saw this in men in black -3, however, this is original……

REGISTRATION OF DESIGN

REGISTRATION OF DESIGN

In our daily life we see a lot of artificial articles and things which carries a specific shape or dimensions which enable us to identify that article and create a impression in our mind to its manufacturer. That specific shape or dimension is called “Design”. Legislation has defined the design per Section 2(d) as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

Design has been identified as the Intellectual Property Right of the person who creates or draws such shape, configuration or pattern using his skills.

Points to be taken care before making application of design (Section 4):

·         Design shall be new and original

·         Design shall not have been disclosed to the public anywhere in India or abroad by any publication or use prior to the date of filing

·         The Design shall not resemble with the designs already registered.

·         The design shall not be any scandalous or obscene material.

·         Any work which consist any literal or artistic work cannot be applied as the Design such as paintings, books etc.

Step wise procedure:

·         Any person being the proprietor of a new or original design or the legal representative or the assignee can apply for the registration, which includes any partnership firm and body corporate.

·         Before applying for the registration of design the department may be approach for the search of the design through Form-7 (Rs. 1000/-). It may be taken note that the Form-7 is submitted only to the Kolkata Office. The zonal offices are entitled to take only Form-1. Hence, any request to search shall be submitted to the Kolkata Office only. However if the registration number is know then Form No. 6 (Rs. 500/-)

·         The search is not mandatory, however, recommended. An application for the registration may be made to the department at the Address under Form -1 with a fee of Rs. 1000/-. The Application shall be submitted to the Design Wing of the Patent Office at "Intellectual Property Office", CP-2, Sector V, Salt Lake, Kolkata - 700 091 or any of the Branch Offices of the Patent Office at Delhi, Mumbai and Chennai. The Application (Form-1) shall be accompanied with:

                                 (i).            Cheque of Rs. 1000/- drawn in favor of The Controller of Patents, Kolkata.

                               (ii).            Representation (in quadruplicate of size 33 cm x 20.5 cm with a suitable margin) of the article. Drawings \ sketches should clearly show the features of the design from different views and state the view (e.g. front or Bide).

                             (iii).             A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, work, letter, numerals should be endorsed on each representation sheet which should be duly signed and dated.

                              (iv).            Power of attorney (if necessary).

                                (v).            Priority documents (if any) in case of convention application claimed under Section 44 of the Designs Act, 2000.

The Department shall analyze the application and shall communicate the applicant about any defect thereto. After rectification of the defect, a certificate of registration is issued in the name of the Applicant.

Disclaimer: The procedure mentioned above is based upon the individual analysis of the author. Author or any of its associates shall not be liable for any damages, of whatsoever in nature, caused due to any person acting solely on behalf of this article.

Use of trademark for unrealted goods and consequences

Using the registered mark in unrelated/different goods amounts to the infringement of trademark.

In the recent judgment delivered by Hon’ble Delhi High Court in Anchor Health & Beauty Care Pvt. Ltd. vs. Shivam Hygienes India Pvt. Ltd, a penalty of Rs. 5,00,000/- alongwith the litigation cost of Rs. 25,000/- was imposed on the user of similar trademark for altogether different goods.

The plaintiff, Anchor Health & Beauty Care Pvt. Ltd , has filed the suit alleging infringement of its trademark “ANCHOR” by the defendant, Shivam Hygienes.

The Plaintiff is a well known Indian Company belong to the ANCHOR group of companies. The initial range of products offered by the plaintiffs were switches, which were manufactured from a small unit in Mumbai. However, over the past 45 years the group had spread, and is claimed to be a truly Indian Multinational having a large range of products including the FMCG products such as Anchor White Tooth Paste, Gel Tooth Paste, Dyna Soap and confectionery items. The plaintiffs claim user of their mark ANCHOR in a large number of classes and for a large specification of goods since the year 1963. The class wise registration claimed to have been obtained by the plaintiffs for its mark ANCHOR. The plaintiffs claim that the mark ANCHOR is registered in a large number of countries and applications for registration are pending in several countries.

The claim of the plaintiffs is that apart from the statutory rights in the trademark ANCHOR, the plaintiffs also enjoy common law rights in their mark and logo owning to such extensive, long and continuous use.

The plaintiffs placed on record the packaging material used by the defendants to market their CTC Tea under the brand ANCHOR with the device of ANCHOR. The defendants have used the mark ANCHOR and the device in the following manner:

Hon’ble High Court analyzed the fact and opined as follows:

Ø In the present case, the impugned mark adopted by the defendant bears the same word “ANCHOR” as that of the plaintiff. Owing to the fact that the plaintiff’s mark is associated with FMCG products like soaps , toothpastes etc, amongst other goods, the use of the word “ANCHOR” by the defendant in respect of FMCG products, like tea in the instant case, is likely to mislead a consumer into believing that the defendant’s product is offered by the plaintiffs.

Ø A consumer with imperfect memory is likely to remember the name “Anchor” and associate the defendant’s goods with those of the plaintiffs, even if the logo of the defendant isn’t identical to the plaintiff’s trademark, but bears a close resemblance to it.

Ø The products sold under the impugned mark are available at the same stores, on the same shelves, where the plaintiff offers for sale its FMCG goods and therefore there exists a high likelihood of confusion amongst consumers. (In case of Hamdard National Foundation)

Ø Notably, even in cases where the goods offered under the impugned mark are not cognate to the plaintiff’s goods, the Courts have leaned in favour of preventing a party from riding on another’s goodwill to mislead the consumers.

Ø In Bata India Limited, the plaintiffs’ trademark “Bata” was registered in respect of canvas, rubber, leather shoes etc. The defendants were using the impugned mark “Batafoam” in respect of mattresses, sofas, cushions etc. The Court restrained the defendant from using the impugned mark observing that

Ø Other cases in this context are :

(i) Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3(Del);

(ii) Microsoft Corporation Vs. I. Sadiq Batcha & Ors., 2009 (40) PTC 477 (Del); and

 (iii) St. Ives Laboratories INC Vs. Sunny Bakshi & Anr., 2009 (41) PTC 231

Hon’ble High Court deliver the judgment as follows:

“In view of the aforesaid discussion, and the aspects that the trademarks are identical and logos are confusingly and deceptively similar and are being used by the defendant in respect of cognate goods, in my view, the plaintiffs have made out a case for grant of injunctive relief, as prayed for in the plaint and for award of damages against the defendant. Accordingly, the suit is decreed in terms of prayer (a) of para 25 of the plaint. A further decree is passed in favour of the plaintiffs and against the defendant for Rs. 5,00,000/- towards damages. The plaintiffs shall also be entitled to costs, which are quantified at Rs. 25,000/-.”

Disclaimer: The Articles published here is solely intended for information purpose.

Registration of Software as Patent

Registration of Software as Patent

India, in terms of Intellectual Property, is witnessing a number of changes in recent time. It includes the verdict of Supreme Court over Novartis case, amendment in Copyright Rules, Trademark Act and other major initiation of the Government.

However, still the debate is hot over the basic issue to allow the software to be registered as Patent. In the current scenario software can be registered as the Copyright under Copyright Act.

In India, as per definition given under section 2(1)(j) of Patent Act an Invention means a new product or process involving an inventive step and capable of industrial application. Further, Patent Act excludes certain terms which cannot be patented. Section 3 provides for the exclusions such as

“(k) a mathematical or business method or a computer programme per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;”

Patents (Amendment) Ordinance, 2004 was proposed to make amendment in Section 3(k) as follows:

“k) a computer programme per se other than its technical application to industry or a combination with hardware;

 (ka) a mathematical method or business method or algorithms;”

However, through the enactment of the Patents (Amendment) Act, 2005, which did not include these amended provisions of the ordinance, the position of 2002 amendments were restored automatically.

Therefore, the re-instatement of the original phraseology of section 3(k) clearly indicates that the legislature intended to retain the original scope of exclusion and did not approve its widening under this sub-section as attempted through the ordinance. Although, the initiation of registration of software as patent would have  granted a better option to the author against piracy and use of software.

In global scenario since 1998, United States of America allowed the software-related inventions (and mathematical algorithms in general) as patentable having some "useful, concrete and tangible" result, in addition to the usual criteria (novelty, non-obviousness and industrial application). However, in Europe and to some extent in Japan, they are only patentable if "sufficiently technical in nature" (which excludes business methods in particular).

In India certain computer related invention such as any new method/process, apparatus etc. are patentable and can be applied for registration. But any computer programme per-se cannot be applied as patent. 

For more details on registribility of Compter Related Inventions as patent please visit http://ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdf.

Note: The information produced above are subjected to change  of the legislation. The author or any of its associates shall not be  liable for any damages occurred, directly or indirectly, to any person because of any action taken solely based on this article.

Legal Suit for infringement of trademark through dialogues.....

YEH JAWANI HAI DIWANI.....

Hamdard National Foundation v. Hussain Dalal,

CS(OS) No.1225/2013, decided on June 07, 2013

DELHI HIGH COURT

HAMDARD NATIONAL FOUNDATION & ANR., the Plaintiff in this case have filed the instant suit for infringement of trade mark, passing off, commercial disparagement and tarnishment of goodwill and damages. Along with the suit, the plaintiffs have filed the interim application seeking prayers as contained in the application.

HAMDARD NATIONAL FOUNDATION is a well known laboratory in the field of ayurvedic preparations and is carrying on business for more than 100 years from now. It is stated that the plaintiffs have given several useful products to the public at large which are not merely famous in India but world over. The plaintiffs state that the trade mark ROOHAFZA is one of the most popular trade mark in respect of sharbats which gives cooling effect to the human body. The said trade mark has been put to extensive use since the year 1907 and the trade mark ROOHAFZA is registered since the year 1945 prior to independence of this country.

In the light of the same, it is the grievance of the plaintiffs that the defendants have recently released the movie with the name YEH JAWAANI HAIN DEEWANI which has hit the cinema halls and the said movie contains some dialogues which somehow show the well known product ROOHAFZA in the manner which is detrimental to the interests of the plaintiffs as a proprietor. The plaintiffs in order to fortify its stand has reproduced the offending dialogues in the film which are reproduced as under:

Son: “Yeh Roohafza Bahut Bekaar Hai”

Mom : “Sab Thik Ho Jayega”

Son: “Siwaye Is Roohafza Ke……   Bahut Bura Hai”

Counsel for HAMDARD argued that

a)      that the existence of the dialogues in the movie would definitely damage the good will and reputation of the plaintiffs and is an actionable wrong in common law as well as in statute.

b)      no merchant or trader is entitled to say that the product of the competitor is bad or of inferior quality.

c)       the same Hero (actor of the film) on one hand is promoting the PEPSI drink and in the present movie he is speaking dialogues which are detrimental to the product i.e. ROOHAFZA drink against the interest of his client.

HIGH COURT OBSERVES the matter and opined as follows:

a)      What is an infringement is not merely visual representation of the product in the bad light under the provision of Section 29 (9) of the Act but it is the infringement of the trade mark if the same is caused by way of spoken use of the words and the visual representation of the said words.

b)      the cinematograph film is a visual representation of the motion picture containing sound recordings, dialogues which are presented in the audio and video format before the public at large. The said cinematograph film is definitely covered within the ambit of the visual representation which is larger genus under the provisions of Section 29 (9) of the Act. Thus, the provision of the Section 29 (9) further makes a statutory infringement of the registered trade mark if the same is caused by the spoken words.

c)       Freedom of speech includes the right to freely express one’s opinions by words of mouth, writing, printing and all other means is a freedom guaranteed to citizens of India under Article 19(1)(a) of the Constitution of India. It is also recognized that freedom of speech is not an absolute unlimited right. Article 19(2) provides reasonable restrictions on what is guaranteed by Article 19(1)(a) of the Constitution as law provides some safeguards against abuse if it causes likelihood of prejudice to a person or party without his fault.

The High Court of Delhi in its order passed that

a)      The said offending dialogues in the film are uncalled for, the same are in poor taste and these could have been avoided. The same are likely to tarnish the reputation of the plaintiffs.

b)      In view of the above discussion and explicit provisions of the Trade Marks Act, it is clear that the infringement of trade mark can be caused by the spoken words and visual depiction of the same in the form of presentation in the movie.

c)       Therefore, the prima facie case is made out by the plaintiffs for infringement of trade mark and also of passing off which may injure the reputation of the plaintiffs before the public.

d)      The balance of convenience and irreparable loss is not in favour of the plaintiffs as the movie is already put to release and thus the same would be beyond the control of the defendants to put any kind of disclaimer in the already released movie.

e)      However, certainly, the defendants can be prevented to release the home video version of the movie or any version of the movie on television which should not contain the objectionable dialogues as contained in para 19 of the plaint and discussed above which can be done by the defendants by editing the film.

Delhi High Court has  prevented the release on TV of the said movie..... 

Novartis Case : An Insight

Novartis Case: A landmark judgment from 
Supreme Court of India

Supreme Court of India has given a landmark judgement in latest Novartis case, covering the vital aspects of Section 3(d), Section 2(1)(j) and Section 2(1)(ja)  of the Patent Act, 1970 and protecting the interest of the public at large against costly medicines.

This case is associated with the Patent Application bearing number 1602/MAS/1998 filed by the Novartis (“a leading pharmaceutical drug manufacturer MNC”) for granting of patent for beta crystalline forms of “Imatinib Mesylate”, a drug used for curing cancer and tumors. Before getting in depth of the judgment and points ruled by the Apex Court lets go through the major aspects of the case.

In backstage, Jurg Zimmermann, an inventor at Swiss pharmaceutical company Novartis, invented a number of derivatives of N-phenyl-2-pyrimidine-amine including a derivative known as “Imatinib” (Non-proprietary name by WHO). “Imatinib” - a drug having properties to cure chronic myeloid leukemia, a special sort of blood cancer caused due to white blood cells, and also used in cure of tumor. It is to be noted that the Imatinib was founded in free base form.

The N-phenyl-2-pyrimidine-amine derivatives, including Imatinib, were submitted for patent in the US. The application was made on April 28, 1994 and patent was granted on May 28, 1996 under US Patent No. 5,521,184 (“the Zimmermann Patent”). The Zimmermann compounds (i.e., derivatives of N-phenyl-2-pyrimidine-amine) were also granted a European patent under Patent No. EP-A-0 564 409.

Later on the Imatinib was further refined in form of beta crystalline. For the clarity it is pertinent to mention that Crystalline form of any substance refers to the degree of structural order in a solid. In a crystal, the atoms or molecules are arranged in a regular, periodic manner. A free base Imatinib was changed in form of crystal through the method as explained well in the application. It will be cumbersome to discuss the method in detail as it consist the technical jargons.

The product, “Imatinib mesylate” comes into existence which was marketed as “Gleevec” by Novartis.

Novartis filed patent application in India on July, 1998, however, the Patent Laws were in transitional stage and the application was put down in “mailbox”. Novartis on the other hand made application for Exclusive Marketing Right for the Imatinib Mesylate in India. The case remain silent till 2005, when India enunciated Patent Amendment act 2005 and repealed Section 5 which puts bar over the products patents.

On 15^th December, 2005, assistant controller of patent rejected the registration on the following grounds:

i.                     The application is anticipated by the prior patent of Zimmermann

ii.                   The process is obvious to the person skilled in the art.

iii.                  The product is a mere discovery of known product Imatinib.

iv.                 Contention of priority date is not acceptable as Switzerland was not a convention country as on 17^th July, 1998.

Novartis, appealed against the order of Controller to Madras High Court, whereas matter was shifted to IPAB (Intellectual Property Appellate Board). The Board accepted the novelty in process but refuse to grant patent on the product based on the grounds contained in Section 3(d).

Novartis filed writ petition before the Apex Court contending the order of IPAB is invalid and Section 3(d) is unconstitutional as it violates Article 14 and also contravenes the TRIPS Agreement.

Mr. Gopal Subramanium and Mr. Andhyarujina, learned senior advocate presenting the case for Novartis have given some very fine arguments in favor of the registration of patent.

The Supreme Court of India considering the international treaties and the interest of public at large refused the registration and dismissed the appeal with cost on the grounds as follows:

1.       The contention that Patent Laws violate the TRIPS Agreement and Article 14:

The reason for making amendment in the Patent Act in 2005 was to make the patent laws in consonance with the TRIPS Agreement and to provide the necessary and adequate safeguards for protection of public interest, national security, bio-diversity, traditional knowledge to the country. The amendment was also done to allow the patent of pharmaceutical product and agricultural chemical substance in India which was not allowed prior to 2005. In the context of the same it shall:

a.       Limit the scope of patentability to only new chemical entities.

b.      Prevent patent for new usage or dosage of known drugs

c.       Provide simple procedure within the time limit for granting compulsory license.

d.      Protect the generic drugs available in market

e.      Ceiling on the royalty paid to the pharmaceutical company.

Moreover, the Novartis was granted exclusive marketing right for its product Gleevec to sell the drugs in India at Rs. 1,20,000 whereas the generic drugs of the same are avalble in Rs. 8,000 to Rs. 10,000. The Act can’t be said as contravening any provision of Article 14 of the Constitution of India.

2.       There has been a lot of similarity between the Imatinib patent of Zimmermann and Imatinib Mesylate patent as filed by Novartis.

3.       Zimmermann patent teaches any person skilled in the art how to use Imatinib, or a pharmaceutically acceptable salt thereof, in a pharmaceutical composition for treating tumors or in a method of treating warm-blooded animals suffering from tumoral disease.

4.       Further, Novartis send legal notices to NATCO for marketing a drug in UK having similar capabilities of Imatinib Mesylate on the basis of old Zimmermann patent. It directly confers that the new application is basically based upon old Zimmermann patent. Hence, it is only a new form of known drug and cannot be patented as per Section 3(d) of the Patent Act, 1970.

5.       The Imatinib mesylate was discussed in an issue of January, 1996, of a journal called Cancer Research, titled as “Inhibition of the Abl Protein – Tyrosine Kinase in Vitro and in Vivo by a 2 – Phenylaminopyrimidine Derivative” and was also published in Nature Medicine Magazine of the year 1996, titled as “Effects of a selective inhibitor of the Abl tyrosine kinase on the growth of Bcr- Abl positive cell.” The Supreme Court opined that the Imatinib Mesylate cannot be said as new product, having come into being through an “invention” that has a feature that involves technical advance over the existing knowledge and that would make the invention not obvious to a person skilled in the art.

6.       Imatinib Mesylate is a known substance from the Zimmermann patent itself.

This case apparently shows the concern of Indian Judiciary towards the weaker sections, not only of India bur to those countries whom India supplies the generic drugs…. I personally anticipate some more landmark judgment from Apex Court which will help the public at large and create a hope in judiciary.

Note: The facts produced here have been selected from the judgment available with Supreme Court of India. Please refer CIVIL APPEAL Nos. 2706-2716 OF 2013, (ARISING OUT OF SLP(C) Nos. 20539-20549 OF 2009). The contents produced in this Article are meant solely for information purposes and author does not intends to report anything causing harm to any business, directly or indirectly.