News Updates

DigiLocker Facility by Indian Government

DigiLocker, a National Digital Locker System has been recently launched by the Govt. of India. The Digital Locker (elocker) is part of Prime Minister Narendra Modi’s Digital India program/initiative. Department of Electronics & Information Technology (DeitY) under Ministry of Communications & IT- Government of India, has launched the Beta version of this online documents storage facility. The DigiLocker is an Aadhar-linked storage facility provided to store one’s important documents like Voter Id card, PAN card, BPL card, Driving license, education certificates etc. These documents will be linked to one’s Aadhar number and can be treated as authorized documents. Hence in future people will not have to carry physical documents while applying for jobs or government certificates or educational institutions etc. The facility is available to all stakeholders including Residents (individuals based on Aadhar card), Issuers (Registrar office, Income Tax department, RTO, Educational institutions etc.,) and Requesters (Employers, Universities, Passport Office etc.).

Google reveals Alphabet, but BMW already owns the trademark

One can only assume that before Larry Page and Sergey Brin chose Alphabet as the name for their new holding company, they did not Google it. If not they could have discovered that the Internet domain, as well as the trademark Alphabet, already belonged to the German automaker BMW. Alphabet is the name that Google's founders have given the newly created parent entity that will house the Google search business and several smaller holdings like Nest, a maker of smart thermostats, and Calico, a company focused on longevity. But Alphabet is also the name of a BMW subsidiary that provides services to corporations with vehicle fleets. In terms of trademark infringement, it's no problem for two companies to have the same name, as long as there's no possibility of confusion for customers. In this case, there is at least one clear connection between the two organizations: BMW is a car manufacturer and Alphabet owns Google, which has a line of self-driving cars. BMW is looking into the possibility of trademark infringement. As for the Alphabet domain, Google's new company has secured, so BMW can continue using without worry.

Most controversial “.SUCKS” domain open for registration

.sucks is a new domain extension launched by a Cayman Islands based entity called Vox Populi Registry Ltd. In 2014 Vox reportedly paid over US$ 3 million to ICANN for the rights to manage the .sucks domain. As per John Berard, Founder-Vox Populi; the .sucks domain is a platform for legitimate critical commentary, which is definitely not being considered true by others. In simple terms it is nothing but “legalized extortion”. The .SUCKS registry is perhaps the most controversial of the new generic top level domains (gTLDs), which ICANN has continued to roll out. As of now, several large and well-known organisations like Google, Amazon, Microsoft, Yahoo, eBay, WhatsApp, have registered different variants of the .sucks domain. Similarly, many celebrities such as Taylor Swift, Justin Bieber, Oprah Winfrey, Rihanna, Mark Zuckerberg, Hillary Clinton etc. have registered their own .sucks domains.

New law to protect from patent trolls

A new Florida law went into effect which intends to stop the practice of patent trolls. While enacting the law the legislature recognized the assertion of unjustified patent infringement claims as a growing practice. The new statute uses two primary tools to bring an end to this unfair and abusive practice. First the statute establishes eight issues a court should consider in determining if the infringement claim was made in bad faith. Second it creates a private cause of action for the victims of unfair patent infringement claims that allows a court to award "equitable relief.

Google Launches New Patent Search Feature

Google unveiled a revamped search tool designed to help experts and the public access a wider array of prior art search that could make it easier to determine whether to file a patent or not. The new patent search is made easier to be used by both experts as well as general public. Given the rising interest in safeguarding IP among developers and founders who may have never had to consider patents much before, the search tool could prove to be useful. The updates today covers a single search interface where Google will integrate both searches for patents as well as prior art. Along with prior art, Google is incorporating another visual tool into the patent search by way of Google Scholar, its vertical search focused on academic research and other scholarly literature.

Taxing the Use of IP

The Commissioner of Sales Tax, Mumbai has issued a circular declaring that Maharashtra VAT is leviable on transactions involving transfer of right to use intangible goods (including trademarks and copyright), even if the rights are transferred to more than one person. The circular is based on Bombay High Court’s decision in Tata Sons v. State of Maharashtra. The sales tax department of Maharashtra has declared that the law laid down in Tata Sons, which was specific to the 1985 Act (Maharashtra Sales Tax on the Transfer of Right to use any Goods for any Purpose Act, 1985) is equally applicable in the case of VAT. In conclusion the levy of service tax on transfers of right to use under the Finance Act in addition to the levy of VAT seems undoubtedly unconstitutional. It will be very interesting to see when, where, and how it is challenged.

Case Updates

The maker of the high-end military-style watches MTM sued Amazon for misleading consumers in its portal. MTM tightly controls its distribution channels and doesn’t have right to sell MTM’s watches. When Amazon consumers searched for “MTM Watches” in Amazon’s search engine, consumers were provided a list of “aesthetically similar, multi-function watches manufactured by MTM’s competitors” such as Luminox and Chase-Durer, but the search results page did not expressly say that Amazon doesn’t carry MTM watches. MTM claimed that Amazon’s search results constituted trademark infringement. Though the lower court ruled in of Amazon, however on appeal the order was reversed by majority which said “A jury could infer that the labeling of the search results, and Amazon’s failure to notify customers that it does not have results that match MTM’s mark, give rise to initial interest confusion.”

Probendi, an Irish software development firm, filed a petition in a Milan court claiming in its petition that Apple has systematically used iWatch wording on the Google search engine to direct customers to its own website advertising Apple Watch. Apple has thus violated the iWatch trademark held by Probendi in the European Union since 2008. It was furthermore claimed by that Apple is paying for Google ads that show Apple Watch-related search results when a user searches for iWatch on Google's search engine. iDevices such as the iPhone and iPad with the prefix "i" are very popular, but Apple was not able to name its smart watch iWatch probably because the trademark was already taken by another company. Probendi has now also stated on its official website that the company has the sole rights to use the name "iWatch" on its products.

The IPAB has allowed an appeal filed CSIR against Hindustan Unilever regarding the former’s application for a patent on a novel iodising agent for table salt. CSIR’s application filed in 2004 covers both the iodising agent and the process for its preparation. Pursuant to HUL’s pre-grant opposition, CSIR amended its application and reduced the number of claims from 11 to 7. After hearing the opposition, the Assistant Controller rejected the application in 2013 on grounds that the application lacked an inventive step, which led to the present appeal. The IPAB accepted both the claims of CSIR, noting that the iodising agent and the process for its preparation were not anticipated by prior art, and that the improved efficacy of the agent due to CSIR’s claimed process was demonstrable as against the iodising agents produced by pre-disclosed processes.

The Indian Patent Office has rejected the application by Eureka Forbes for a patent for its flagship iron removal water purifier – “Aquasure”, on grounds of lack of inventive step and insufficient disclosure. Hindustan Unilever Ltd (HUL) had filed a pre-grant opposition against the said application, alleging that the usage of resin for removal of iron as well as its usage in gravity water filters is well known. It was further argued that the impugned patent application fails to satisfy the criteria of obviousness and inventive step and hence needs to be refused.

The Madras High Court has granted an interim injunction restraining Vivekananda Institute of Technology from using the acronym ‘VIT’ in relation to its engineering colleges. Since Vellore Institute of Technology was the prior registered owner of the mark VIT for education services and the mark was well known mark, the court had to decide was whether the defendant could be allowed to use ‘VIT’ for their educational institutions set up in Jaipur. The court held that since the registration of the plaintiff was not limited to any geographical location, the fact that the defendant operated only in Rajasthan could not be used as a defense.

The Supreme Court has dismissed Governments’ appeal against Madras High Court’s decision, which held certain provisions of the IPAB as unconstitutional. The Apex Court dismissed the SLP stating that the there was no reason to interfere with the ruling of the Madras High Court since the law was well settled and clear. By way of background, the Madras High Court had ruled that :

  • (a) ILS (Indian legal service) officers could not be appointed as judicial members to the IPAB;
  • (b) Joint registrars (of the Trademark office) could only be appointed as technical members (trademarks) to the IPAB, if they had at least 12 years of experience in the practice of law at the bar or with the state judiciary;
  • (c) those appointed as technical members on the patents side could not write any judgments in patent cases or adjudicate the matter in any way but are to simply assist the bench; and
  • (d) the selection committee for appointment of various members to the IPAB ought to be predominated by those with judicial experience.

The Supreme Court has passed a landmark ruling in a copyright and breach of confidence case between scriptwriter Jyoti Kapoor and producer/ director Kunal Kohli. The Apex Court ruled in favour of Jyoti Kapoor stating that there were similarities between her script ‘R.S.V.P’ and Kunal Kohli’s upcoming film ‘Phir Se’. This judgment may boost confidence of many writers who are strapped due funds and are wary of tackling large production houses through a long-drawn court battle.

For information purpose only.
Reference to any Trademark in this newsletter relates to news about its respective company. The said TM is proprietary of such company.