News Updates

CGPDTM Launches New Patent Search Facility with Full-Text Search Capability

The Controller general Patents, designs and Trademarks (CGPDTM) on 27 February, 2015, has announced the introduction of a new search tool named INPASS. The INPASS allows full-text search to be conducted for patents as well as patent applications, allowing for search using wild-cards, truncation and Boolean operators. With this, the IPAIRS (the Indian Patent Information Retrieval System) has now officially been withdrawn. Thus, it is hoped that the new search capabilities introduced by CGPDTM will be a step forward in making patent information accessible to the public and facilitating greater transparency.

German Company’s Patent for Asthama Drug Revoked After the Dismissal of Pre-grant Oppositions

Recently, in a landmark case, Indian patent Office has revoked a patent on asthma drug, Spiriva, held by the German major Boehringer Ingelheim , on an opposition filed by Cipla. The said patent was previously granted after methodical scrutiny and examination and dismissal of the pre-grant opposition. The said patent was revoked on the grounds that it lacked inventive step, failed to demonstrate therapeutic efficacy as well as requirements under section 3(d). The main reason behind the whole revoking was to prevent “evergreening” of patents in relation to chronic ailments.

India Accepts E-Filing of Design and Geographical Indication Applications

The Controller General of Patents, Designs and Trade Marks in India Mr. Chaitanya Prasad extended the electronic filing system for filing Design applications and Geographical Indications. Applicants can now file application for Designs and Geographical Indications through IP India’s official portal The e-filing facility includes the comprehensive payment gateway for payment through net banking, debit cards and credit cards. Existing digital signatures used for patents and trademarks can be used for authentication into the e-filing system of design.

Ms.Swift and her Trademarks

Taylor Swift, the successful US songstress, recently filed a number of trademark applications at the USPTO for word marks. The marks are lines or quotes of lyrics from songs or song titles of her most recent album 1989. Ms Swift’s applications include applications for the phrase “THIS SICK BEAT”, “PARTY LIKE IT’S 1989”, “CAUSE WE NEVER GO OUT OF STYLE”, “NICE TO MEET YOU. WHERE YOU BEEN?, “COULD SHOW YOU INCREDIBLE THINGS”, all used in her various musical offering, including her hit song 'Shake it off'. Interestingly, however, Ms Swift’s applications seem to have triggered a wider “freedom of speech” debate. Ms Swift's trademark applications have been addressed as an example of the "ridiculous ability of the rich to legally own words".

Personalised Medicines: the US Presidential Initiative

President Obama recently announced his ‘Precision Medicine Initiative’ in which $215 million dollars would be invested to ‘pioneer a new model of patient-powered research’ in which treatment takes into account a person’s ‘genes, environments, and lifestyles’, the aim being to choose the treatment which is most likely to be effective. Taking his cue from the White House, it can be concluded that this would be a good time to revisit this topic which was previously touched in 2012 wherein, it was discussed about the direction the European Patent Office (EPO) was taking in assessing novelty of patient groups, making it more difficult to obtain patents for personalised medicine inventions. The US Supreme Court decision in Mayo was also criticized for making the situation difficult in the US. Since then, things have got better in Europe and much worse in the US.

NLU-Delhi releases Report on Online Intermediary Liability in India

Some rather interesting news has been brought to our notice – the Centre for Communication Governance at National Law University Delhi has just released a new report on Online Intermediary liability in India. This is a part of a global research project by the Global Network of Internet and Society Research Centers and the Berkman Center for Internet & Society at Harvard University examining the rapidly changing landscape of online intermediary liability, and aimed at informing and improving Internet policy-making globally. The series of case studies for which the report has been written explores online intermediary liability frameworks and issues in India, Brazil, the European Union, South Korea, the United States, Thailand, Turkey, and Vietnam. The India case study maps and analyzes online intermediary liability.

‘Jan Aushadhi’ – An Umbrella Brand for Generic Medicines

In a welcome development, the Government of India launched ‘Jan Aushadhi’ campaign to provide quality medicines at affordable prices to the masses. The Centre will procure medicines in bulk from public as well as private drug manufacturing firms and rebrand them under ‘Jan Aushadhi’. These medicines will be sold in the retail market at a competitive price, allowing consumers to buy cheaper, quality product from the government. The GoI initiative is to be appreciated in the light of recently released Draft National Health Policy, 2015 which proposed raising public health expenditure to 2.5% from the present 1.2% of GDP. The government’s latest move of providing an umbrella brand for generic drugs is aimed at enabling consumers to make that critical choice. Once the brand is rolled out, the government plans to make it mandatory for public hospitals to prescribe it wherever possible. However, we still have a long way to go.

Case Updates

A Texas federal jury has awarded $15.7 million to Rembrandt Wireless Technologies LP, a Pennsylvania-based business technology company after finding that Korean electronics giant Samsung Electronics Co. Ltd. infringed on two Rembrandt patents covering Bluetooth technology. The five-day trial focused on two Rembrandt patents, U.S. Patent Nos. 8,023,580 and 8,457,228. Rembrandt argued that its patents for Bluetooth "enhanced data rate" inventions were infringed by Samsung in its Galaxy S phones. The case is Rembrandt Wireless Technologies LP v. Samsung Electronics Co. Ltd., et al., No. 2:13-CV-00213, in the U.S. District Court for the Eastern District of Texas. U.S. District Judge - Rodney Gilstrappresided.

The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs, adding two of the world’s biggest economies to a WIPO-administered registry that supports creators worldwide. The accessions broaden the geographical scope of protection of industrial designs, bringing membership in the Hague System to 64 contracting parties. Designers in Japan and the USA can now readily protect and promote their industrial designs in dozens of other countries around the globe that are Hague members. And designers in those countries now have easier access to protection in two of the largest global economies. This is a win for businesses and designers everywhere and signals a major advancement for one of WIPO’s premier registry services.
Apple has suffered a patent defeat involving some of the technologies it uses in its iTunes store. The company has been ordered to pay $533m to Smartflash, a British Virgin Islands-based firm that owns and licenses tech-related patents but does not make products itself. Apple's defeat by Smartflash is the latest in a series of victories by companies referred to as non-practising entities (NPEs), and denounced by their critics as being "patent trolls". The scale of the penalty imposed on Apple was, in part, determined by the fact that the jury felt the tech giant had not only used Smartflash's intellectual property without permission, but had also done so "wilfully" - meaning it had been aware of the infringement. Smartflash had sought $852m in damages for Apple's unauthorised use of the patents, basing its calculation on the number of Mac computers, iPhones and iPads that had been sold.
In a hard hitting ruling, the Madras High Court declared critical provisions of the Trademarks Act providing for the establishment of the IPAB (Intellectual Property Appellate Board) as unconstitutional. In particular, the court held that the section providing for Indian government officers to be elected as judicial members to the tribunal was invalid in law. They also held that any committee constituted to select members to this august tribunal should compulsorily be predominated by judges or those with requisite judicial qualifications. Till date, all such committees have been eminently stacked with government folks and bureaucrats (for the most part). Lastly, it was also held that a technical member cannot become a Vice Chairman or a Chairman, absent the requisite judicial qualifications.
The Madras HC has come out with an order on the writ petition with respect to problems associated with the Trademark Agent Exams in India. The Court also noted the petitioner’s suggestion that a training course be conducted for facing the examination and the possibility of taking the assistance of a specialized institution for that purpose. Therefore the Court directed the respondents to conduct the TM agent exam in the first half of 2015-16, to look into the petitioner’s suggestions regarding training courses and whether the assistance of specialized institutions are required for conducting the exam as well. The Court also stated that the existing vacancies must be filled in by this examination and the examination schedule should be printed well in advance in order to enable the applicants to prepare. The deadline proposed by the respondents was accepted by the HC and is currently 30 September 2015.

On 5 March 2015, Judge Paul Crotty from the Southern District of New York (SDNY) granted Oprah Winfrey’s motion to dismiss the trade mark infringement suit filed against her over her use of the “Own Your Power” slogan. It was held that the plaintiffs’ (Simone Kelly-Brown is a motivational speaker and the owner of Own Your Power Communications Inc. She has been using the phrase “Own Your Power” in workshops and seminars since 2004, and owns the OWN YOUR POWER service mark, which was registered in May 2008) registered trade mark was descriptive and could not therefore serve as a mark. Oprah Winfrey used the “Own Your Power” phrase on the cover of the October 2010 issue of her O magazine, which had power as its theme. The phrase was also used on banners at a promotional event for the O power issue. The defendants also used the phrase online and on Oprah Winfrey’s television show.

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.