Samsung’s Patent Shows Its Vision for Phone with an Expandable Screen

 

Intellectual Property

Samsung, the South Korean tech giant, is in the news for several announcements, including information regarding the launch of Galaxy Note 10 and 10+, which is set to take place on 7th August, 2019, at the Unpacked event. Although the Galaxy Fold smartphone hasn’t launched yet, talks about the South Korean multinational conglomerate is planning to come up with another phone, are already in the air.

In a recently published patent documentation, the firm has proposed the design of a phone that will be available with a pull-out display. The patent got filed around the end of 2018, but approved in May and published from the Korean Intellectual Property Office on 24th June 2019.

The patent details show the phone with a smart expandable display that extends the screen’s width by nearly fifty percent. The display panel is set to open on the right-hand side. When the user opens the screen, a frame border will also get opened around the display to safeguard it. The smartphone with this design will not just provide the tablet-sized viewing experience but also keep the screen protected. The information also unveils a punch-hole camera that appears in the middle of the front display. The patent doesn’t share information about the technical aspects and functioning of the phone.

Undoubtedly, the details of the new smartphone excite the users, but as this is just a patent filing till now, it is difficult to predict when Samsung will release the exciting gadget.

There is a dire need to note that the firms frequently file patents, but it is not necessary that each ends up into the light of day. Ultimately, whether Samsung will bring a smartphone-based on this design or not, remains confusion. For more visit: https://www.trademarkmaldives.com/

Bombay HC imposed a fine of Rs 5 Croreon defendantsin IPR conflict

Intellectual Property Rights

Once Mahatma Gandhi, the father of our nation said, “There is a sufficiency in the world for man’s need but not for man’s greed”. Invoking this impactful phrase in a dispute related to Intellectual Property Rights, the Bombay High Court (HC) fined Rs 5 crore on a group of people. The defendants were directed to pay the money to Tata Memorial Hospital in Mumbai.

A brief about the case

It was Nippon Steel and Sumitomo Metal Corporation who filed the case against the Kishor Jain and others.The case revolved around a complaint made to Nippon Steel by a Saudi Arabia based steel company questioning the quality of carbon pipes it purchased to use inoil plants. Nippon itself made inquiries and detected that the defendants were selling seamless pipes under the false direction. The purchasers were misguided that Nippon, the renowned companyin this niche had manufactured those pipes.

Justice SJ Kathawalla heard the dispute and passed an order,and added that this case is the perfect example to show the level to which some unscrupulous people likethe defendants here, can fall in order to make big bucks.Unfortunately, such sort of people doesn’t have any respect for principles or ethics. Moreover, they never mind putting the country’s reputation at stake by executing the unsolicited tasks.

When quizzed at the court, the second defendant named as JeetendraBuradinformed that he tends to purchase the poor-quality pipes from a local shop in the marketplace at Navi Mumbai. After that, HirenKamod, Nippon’s lawyer added that the trios (all three defendants) themselves have admitted their unlawful activity of selling on the name of others.According to the inspection report of offices and warehouses of suspects, it was found that they were indulged not onlyin trademark infringementbut also in forgery.

It was March 26, 2019, when the High Court had restrained the infringing undertakings and seized the goods pertaining to Intellectual Property Rights (IPR) dispute. Moving ahead, Justice Kathawalla decided punishment that can prevent such conflicts in the future. The Court took this matter seriously and imposed a heavy penalty of Rs 5 crore to set a strong precedent. Defendants were directed to pay the amount to Tata Memorial Hospital in Mumbai as the litigant Nippon Steel and Sumitomo Corporation had no objection in giving away the money in charity. For more visit: https://www.trademarkmaldives.com/

Importance of Intellectual Property Rights in Modern Times

intellectual property right

In the 21st century, intellectual property rights have played a key role in indigenous and international trade of every country. With the advent of growing digitalisation, there is a huge risk of innovative ideas being stolen by an outsider, without any prior permission and consent.

The importance of intellectual property protection varies across the world. Almost, every nation which relies upon international trade is now taking strong action for intellectual property rights protection. A robust IP law structure is partly responsible for the overall growth of the economy of a nation.   Unlike any other tangible asset which can be secured by locking up or fencing up, intangible assets like IP, in contrast, is accessible to the common people and can be misused by anyone. In a few situations, self-protection is also done by integrating the IP asset and tangible asset.

Intellectual Property Rights enhance the intrinsic value of all kinds of goods and services, as a unique idea is the core and foundation of every business. If the business is not unique from others, it will be unlikely to be differentiated from the competitor’s product and services.  Nowadays, many cases of the unique idea being stolen by the third party are quite common. But, there are still so many people who do not deem it imperative to secure their distinct design or logo. Hence, it is important to secure intellectual property, which would otherwise perilous to business growth.

INTELLECTUAL PROPERTY

Intellectual Property can be defined as a set of intangible assets owned by any individual person or institution. Like various physical properties, intellectual property provides the same competitive advantage to a business.

The protection of intellectual property in a web-based environment is crucial for a business than ever before, as the unique designs and logos are more vulnerable and can be easily replicated by anyone.

THREE TYPES OF INTELLECTUAL PROPERTIES RIGHTS:

An Intellectual Property right is majorly divided into three types- trademark, copyright and patent:

  1. TRADEMARK

A trademark can be a logo, design, or a mark of a business or an individual to distinguish his products and services from the competitors. A unique symbol enables a customer to easily recognize the product and relates to the brand value of a business.

  1. COPYRIGHT

Copyright protects a tangible creative expression like a painting, music compositions and a book.  It is one most used intellectual property rights given to the producers of an original creative piece, which includes both published and unpublished work.

  1. PATENT

A patent protects the unique and distinct creation from illegally sold, used by an outsider for a set time period. In other words, a sovereign authority grants the intellectual property rights to the inventor through a set procedure.

FOLLOWING ARE THE KEY ADVANTAGES OF PROTECTING INTELLECTUAL PROPERTY RIGHTS:

 

  1. CONVERT THE CREATIVE IDEA INTO PROFIT

Generally, ideas do not possess any commercial value on their own. In the modern era, Intellectual Property rights have great untapped potential to convert your creative ideas into profit- yielding machine. IP registration through copyright, patent, or trademark will result in a steady stream of commercial gains and extra revenue, which will expand and improve the bottom line of business.

  1. TO EASE THE MARKETING PROCESS

The intellectual property acts a great tool for establishing the distinct identity of both brand and business. It helps to distinguish the products and services of one seller from the other in the market, which further helps in easily promoting them to their prospective clients.

  1. FOR RAISING FINANCE FOR THE COMPANY

Any IP right holder can monetize and commercialize the IP assets via licensing, sale and can use them as collateral for debt financing.  IP assets can also be used for raising public funding, loans and to get government subsidies.

  1. FOR PROTECTING THE CREATIVE IDEAS

There are so many cases of creative ideas being replicated through illegal means by an outsider for commercial gains. So, it is mandatory to secure the IP rights before it gets infringed by anyone. A person can take IP protection, irrespective of the kind and size of the business. So, evaluate the business needs and circumstances and take appropriate action for IP protection.

  1. IMPROVE THE EXPORT OPPORTUNITIES OF A BUSINESS

IP assets accelerate the level of competitiveness in the export market for goods and services. The IP right holder can protect brands and design to market and promote their products and service abroad, and can also take franchising agreement from the overseas companies.

  1. BOOSTS THE BUSINESS GROWTH

Needless to say that, Intellectual Property protection cannot be overlooked in the cut-throat competitiveness. There are huge chances that the unprotected creative idea can be used by the rivals, which will result in shrinking the market share and slow down of business growth. Shrinking of market share in the formative stage can be detrimental to the overall business growth and performance.

Furthermore, it is important to note that IP Protection is the sole responsibility of the owner to secure from any infringement, as no one else will make an effort to protect the idea from being copied by someone.

CONCLUSION

Thus, it can be concluded that IP protection is extremely significant, and there must be proper IP laws in each country to protect the indigenous manufacturers from the outside completion.

The government also needs to improve the overall structure of IP laws for forging a long-term social and economic development of a company. The government needs to formulate proper IP laws for individual and companies, as laws should neither be too strict or lenient. For more visit: https://www.trademarkmaldives.com/

Oil Proprietor Convicted in Intellectual Property Right Dispute

copyright infringement

The Bombay High Court has sentenced an oil proprietor of an edible oil firm for 8 weeks for blatant breach of the March 2017 order for copyright infringement of Cargil India Pvt. Ltd, an Indian arm of the US-based multinational giant. Justice SJ Kathawlla of Bombay High Court was hearing the Cargil Pvt. Ltd’s plea against Aslam Noor Siddiqui of MM Oil Enterprises.

The Plaintiff filed an IPR infringement suit in March 2017 and held that its Gemini oil well-known trademark rights were infringed by the defendant, which the latter launched in the market under the name of ‘Genuine’ oil. Rohan Kadam, Plaintiff’s lawyer stated that even the packaging was very similar and thus alleging “passing off” through a deceptively similar trademark “Genuine- Refined Sunflower Oil” and deposited those packets as evidence in the court.

The Court passed an interim order in April 2017, to restrain the owner from further manufacturing and selling of the product. Justice Kathawalla also stated that the accused at the initial stage tried to make a false statement through his lawyer that the huge jars and pouches which contained thousands of litres of edible oil were eaten by rats. The Court opined that any leniency in Intellectual Property Rights cases would send a wrong message across society at large that the court itself has zero regards to the flagrant disregard shown by the proprietor, and is embracing the forgive and forget policy. And such an accused should not be shown any mercy in sentencing.  In addition, it will also portray that any litigant can flout the Court orders with indemnity and still be conferred with leniency and compassion by the Court. Any such trend would set the wrong precedent and would demolish the principle of deterrence, which the court intended to serve.

Moreover, the Court also noted that apology rendered at the last juncture was neither in good grace, nor it was showing any sign of contrition, but the only purpose was just to avoid the punishment. It was after this that the accused and his advocate came forward and appraised the court and agreed that he has violated the law, and accepted the 8-week sentence, but pleaded to surrender after the holy month of Ramadan, i.e., June 14, 2019, at 10:00 am. The Judge agreed to his plea and ordered that the arrest warrant be executed only on June 14 by Azad Maidan police station.

However, the Court in the judgement asserted that he has observed the growing unhealthy trend being set up amongst a section of litigants, who often flagrantly violate the court’s laws and orders with impunity. At such juncture, the Court cannot be a mute spectator, and it needs to step in to stop the trends of brazenly flouting the IPR rules. For more visit: https://www.trademarkmaldives.com/

Google and IPRS Sign A Deal for Music Licensing in India

Copyright

The Indian Performing Right Society Limited (IPRS) has issued a music license to Google, granting the company to utilize its members work collection across YouTube and other pertaining services in India. The IPRS is registered under the Copyright Act, 1957, is a representative body of the music composer, lyricists and music publishers, sanctioned for granting the music license to any person. Christophe Muller, YouTube’s Global Head of Music Licensing, termed this agreement as a positive step in the YouTube‘s ongoing commitment to  fairly pay to the music owners, including composer, lyricist,  songwriter for their  incredible contribution  and to protect their Intellectual Property Rights. This deal was also meant for ensuring that their valuable users are able to enjoy their favorite songs of artists and to discover all the latest songs on YouTube. He also said the deal will add more value to end-user experience across the country.

Javed Akhtar, Chairman of the IPRS, has called the agreement a historical one for Indian Authors, music owners for giving them more autonomy on their creative piece. He also added that IPRS is fully determined to make sure that this relationship goes well in future, and prove favorable to the creative fraternity in a more tangible and meaningful way. For more visit: https://www.trademarkmaldives.com/

Industrial Design Protection in India

Industrial Design Protection in India

Industrial Design Protection is provided for the features or characteristics of shape, configuration, surface pattern, or combination of lines or colors, which, when applied to a functional article, either a two-dimensional or a three-dimensional article produces or increases aesthetics, and improves the visual appearance of the design. In India, The Design Act, 2000 governs and deals with the mechanism of registration of Industrial Designs. Once the Industrial Design is registered, it lasts for a period of 15 years from the date of registration with the first renewal due in the 10th year, and subsequent renewal in every 5th year.

In India, as per the Design Act, 2000, the pre-requisites which any article should meet to qualify for Industrial Design Protection are as follows:

  1. The design should be novel and original.
  2. The design should be applicable to a functional article.
  3. The design should be visible on a finished article.
  4. The design should be non-obvious
  5. There shouldn’t be any prior publication or disclosure of the design before the date of application for registration.

How can a person obtain an Industrial Design Protection in India?

In India, the registration process for Industrial Design Protection is fairly simple. The application is to be filed at the Design office either via the paper filing option or using the online filing option. All designs are categorized according to the Locarno Classification, which classifies goods for the purpose of their registrations and further helps in Design searches. An application is to be submitted at the Design Office along with the desired designs, classification code, and a description of the design. Once the application for Industrial Design is filed, it goes through an examination process to determine if the design can be registered or not. Accordingly, the Design Office may issue a statement of objection in the examination report, to which the applicant must respond within 3 months from its date of receipt. The application for Industrial Design Protection is abandoned if the applicant fails to respond to the objections raised within the stipulated period of time. On the basis of the applicant’s response to the objections, the Design Office determines if the application should be accepted, rejected, or put up for a hearing. If accepted, the application is processed for registration. After the registration, the particulars of the application, along with the representation of the article will be published in the Official Gazette. Once granted, the Industrial Design becomes exclusive to the owner if there are no objections raised from any third-party sources.

What is the difference between Patent Protection and Industrial Design Protection?

In several cases, a question or a query may arise pertaining to which type of protection to opt for between Industrial Designs and Patents. So here’s a detailed difference between patents and industrial designs to give you a basic understanding of their main aspects.

PATENTS

  • What can be protected?

A technical enhancement, new process, or manufacture, which is novel, unique, and useful, can be protected as patents.

  • Duration of protection and renewal term:

The patent of invention lasts for 20 years in the country of filing with no extension after 20 years.

  • Maintenance of Right:

An annual fee has to be submitted for a duration of 20 years.

INDUSTRIAL DESIGNS

  • What can be protected?

Any functional article of use which has a novel ornamental appearance can be protected as industrial designs.

  • Duration of protection and renewal term:

An industrial design is valid for a duration of 15 years with first renewal in the 10th year and subsequent renewal in every 5th year.

  • Maintenance of Right:

A Fee is required after 10 years if an application for renewal is submitted.

Why should one look into filing an application for Industrial Design Protection?

In the present era of creativity, aesthetics, and presentation, the outer appearance of any product is very important as it makes the product more appealing and attractive. This aspect increases the marketability of your product and raises a need to protect it from others who may copy or illegally adopt similar looking products in the market. In a number of cases, the design itself becomes the identity of a brand. Industrial Design Protection also encourages creativity, which leads to an expansion in the manufacturing and industrial sectors. So protect your novel creations by thinking beyond just functionality and looking into eye appeal too. For more visit: https://www.trademarkmaldives.com/

Trademark Enforcement and Protection: Bangladesh

trademark protection

In Bangladesh, the mechanism of trademark registration and protection is governed under the Trademark Act, 2009, and the Trademark Rules, 1963.  As per the 2009 Act, the trademark owner possesses the sole right to refrain others from further using it in any kind or manner.  Any person who tries to imitate or produce an identical product which is already registered under the trademark act is considered as an infringement of trademark rights.

PROTECTION OF TRADEMARK

A person needs to submit a trademark application with the Department of Patents, Designs, and Trademarks (DPDT), Dhaka for trademark registration. A registered trademark is valid for the period of 7 years from the application date and can be renewed every 10 years after submitting the required fee.

PROTECTION OF WELL-KNOWN MARKS

In Bangladesh, well-known marks are acknowledged by the Trade Mark Registry under the International, National and Cross Border Reputation. According to the Trademark Act, 2009, the protection of a well-known trademark is given under the following levels:

  • Measures against the identical or same well-known mark registration
  • Action against the unlicensed use of the well-known marks

INFRINGEMENT

A trademark right is infringed if a person violates or uses an already registered trademark without any authorized access from its owner. Under Sec 29 of the 2009 Act, a person is deemed to infringe a registered trademark in the following ways:

  1. Where a person uses a trademark which is identical or similar to an already registered trademark used in the course of trade, for the similar goods or services not being a registered proprietor/user and causes confusion on the part of the public.
  2. Where the registered trademark is used in the course of trade, for the goods or services which are not similar but has a reputation in Bangladesh and the use of the mark by the person without due cause, takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark.
  3. Where a person who is not being duly authorized by the registered proprietor or a registered user, uses the trademark on a material intended to be used, for labeling or packaging goods, as business papers, or for advertising goods or services.
  4. Where a person not being a registered proprietor/user uses a registered well-known trademark for the identical or similar goods or services for which the mark has been registered.
  5. Where a person not being a registered proprietor/user uses a registered well-known trademark for the goods or services which are not identical or similar to those in respect of which the mark has already been registered, by using the mark in relation to those goods or services, would point out a connection between those goods or services and the owner of the registered well-known mark, and that the interests of the owner of the registered well-known mark are likely to be damaged by such use.

REMEDIES

When the rights of a proprietor of a registered trademark are infringed in Bangladesh, the following actions can be taken for the remedy:

  1. CIVIL ENFORCEMENT: The Trademark Act of 2009 provides both infringement suits and passing off actions in case of registered and unregistered trademarks respectively. In the case of infringement suits, the trademark must be registered in Bangladesh as per Section 24 (1) of this act. In the case of civil proceedings, passing-off proceedings can be instituted before an assistant judge or a joint district judge. However, Trademark Infringement suits can be instituted only in a district court or higher.

The Code of Civil Procedure establishes that rights holders may file suit for permanent injunctions before the Dhaka District Court. If the infringement is proved, a suit for damages may then be filed separately.

A) PRELIMINARY MEASURES:

The administrative authorities have no direct jurisdiction over counterfeiters and the seizure and/or confiscation of the infringing goods in question. The law governing agencies such as the police, the Bangladesh Rifles and the Rapid Action Battalion takes cognizance of any matter relating to counterfeiting only after being directed to by the Chief Judicial Magistrate’s Court, since the imitation or use of false trademarks is a non-cognizable and a bailable offense under Sections 482, 483, 485 and 486 of the Code of Criminal Procedure.

Besides civil infringement suit, IP rights holders may file an application for a temporary injunction under Order 39, Rules 1 and 2 of the Code of Civil Procedure. If it is proved that there is a prima facie arguable case and that the balance of inconvenience is in the IP rights holder’s favour, then the court may grant a temporary or interlocutory injunction against the counterfeiter when the suit is filed.

B) REMEDIES:

The following remedies are available by way of civil action:

  • Temporary injunction;
  • Permanent injunction and attachment order with a declaration that the goods are counterfeit; and
  • Claim for damages.

It can take up to three to four years for a case to be finally decided.

2. CRIMINAL PROSECUTION: The following are criminal offenses punishable under the Bangladesh Penal Code, 1860:

  • Using a false trademark so as to mislead consumers about the origin of the goods; and
  • Counterfeiting a trademark used by another person.

The punishment for using a false trademark is imprisonment for up to one year or a fine, or both. The punishment for counterfeiting is imprisonment for up to two years or a fine, or both. The courts also have the power to set the prison term and the amount of any fine. In addition, the Penal Code identifies a number of activities as a criminal offense and sets out various enforcement measures available to rights holders. Two such offenses and their punishments are as follows:

  • Making or possessing any instrument for the purpose of counterfeiting a trademark – the punishment for this offense is imprisonment for up to three years or a fine, or both; and
  • Selling, exposing or possessing for sale or any purpose of trade or manufacture any goods bearing a counterfeit mark –the punishment for this offense is imprisonment for up to one year or a fine, or both.

 

A) PRELIMINARY MEASURES:

In cases of counterfeiting, a rights holder may file a criminal complaint with the police, which then investigates. If the complaint is proved, the case then goes to trial before a court. In addition, police officials may launch raids against counterfeit and pirated goods and may take legal action.

All criminal proceedings begin in the magistrate’s court. All criminal cases relating to false trademarks or counterfeiting are tried by a magistrates court (first or second class, or a metropolitan magistrate in an urban area). Any appeal against the magistrate’s order must be made to a district magistrate or session judge.

B) Remedies:

Remedies available in criminal actions include the following:

  • Raids on the premises where the counterfeit goods are stored;
  • Seizure of the goods;
  • Destruction of the counterfeit goods; and/or
  • The imposition of penalties on the accused.

 

  1. BORDER MEASURES (CUSTOMS): All trading activities in Bangladesh are regulated and administered by the Ministry of Commerce under the Imports and Exports (Control) Act1950. Additionally, Under Section 15 of the Customs Act, 1969, the import of goods, whether by air, land or sea, is prohibited that fall within the following categories:
  • Goods marketed under counterfeit trademark or false trade description.
  • Goods manufactured or produced outside Bangladesh and intended for sale under a design in which copyright exists under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a license or the rights holder’s written consent; and,
  • Goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.

Under Section 17 of the Customs Act: “if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.”

There is no provision for the recordal of trademarks with Customs. However, upon receiving a complaint from a rights holder, Customs may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Moreover, a rights holder may approach the High Court to obtain an order directing Customs to detain and/or seize the counterfeit goods. For more visit: https://www.trademarkmaldives.com/

Government Seeks to Extend the Copyright Framework to Maximize its Reach

trademark law firm

The Government is proposing new amendments to extend the reach of songs and videos to maximum people at a reasonable price, which in case of dispute is regulated by the quasi-judicial body Intellectual Property Appellate Board (IPAB). The copyright framework which was earlier confined to radio and television is now looking to include all forms of broadcasters under its horizon.  This new draft in Copyright Act endeavors to grant all the benefit of statutory license provisions to all the broadcasters.

The Department for Promotions of Industry and Internal Trade (DPIIT) proposed changes in the Copyright (Amendment) Rules, 2019, and solicited public comments and views till June 29. The draft rules seek to introduce changes in the copyright framework to effectively deal with the growing technological advancement and to establish uniformity with other relevant legislation.

According to expert, these changes will permit non-traditional broadcasters including web and Internet Protocol television (IPTV) to grant a compulsory license for the copyrighted content from the content owner, which was earlier restricted to radio and TV broadcaster.

Presently, the Copyright Act includes only TV and radio broadcast companies who are authorized to seek approval from the copyright owner and negotiate the price unilaterally or through Section 31D of the Intellectual Property Appellate Board Act.

The draft also suggests substituting of Copyright Board with the Appellate Board. It also asserts that in cases where the royalty is undistributed due to the author or other owners till the end of the period of 3 years from the end of the financial year in the collection of the royalty occurred, then in that situation copyright society shall repay the amount of the licensee within a 3 months from the end of that financial year.

The government has also put forward amendments in the patent regime to bring transparency in the working requirement for a patented invention on a commercial scale in India.

The DPIIT seeks to amend Form 27, which informs the Patent Office whether it is registered patent in India or not. Earlier, it was hanging with no explicitness on what needed to be disclosed and what should not be disclosed. For more visit: https://www.trademarkmaldives.com/

Internet Broadcasting is Not Included, Under Section 31D of the Copyright Act: Bombay HC

Copyright Act

The Bombay High court has permitted an interim injunction in the favour of Tips Industries against Airtel-owned music streaming app Wynk. The Plaintiff sought a short-term order to limit Wynk from further downloading and streaming of Tips Music. Justice SJ Kathawalla has refuted the claim that online streaming service is authorized to grant a statutory license for internet broadcasting, under Section 31D of Copyright Act.

Background

The plaintiff is Tips Industries Ltd., owner of the music label in India, which has copyright over the considerable depository of popular music. In 2016, Wynk Music Ltd was given the license of this repository. The license was terminated in 2016,  and both the parties tried to reach an agreement of the terms and conditions for allowing Wynk to download and stream the music repository of Tips.

After the negotiation was dismantled, Wynk took refuge by advancing Section 31D of the Copyright Act. Under the Section 31D of a statutory licensing scheme as per any broadcasting organization, desirous of ‘communicating to the public’ any music recording, should obtain a statutory license for the same, by paying the royalty fee to the copyright owner, as per the charges fixed by the Intellectual Law Board.

Tips challenged the claim of Section 31D by the Wynk, and took legal action against Wynk for infringing their sound recording copyright under section 14 (1) (e).  Justice CJ Kathawalla turned down the accused’s claim for the violation of the copyright, and prima facie found Wynk guilty for two grounds- first, for selling the music under Section14) (e) (ii), secondly, for permitting the downloading and offline streaming of the plaintiff’s work, and for communicating the Tips’ work to the public through their streaming service, under Section 14 (1) (e) (iii).

The Bombay High Court addressed Wynk’s claim of copyright infringement, and ended the confusion related to online streaming and the statutory licensing  scheme under Section 31D:

  1. Section 31D does not comprise the purchasing or downloading

The court stated that Wynk’s  music app’s feature of granting the customer the right to download song and store for the unlimited time period constituted a sale and not public communication, and consequently, did not include the broadcasting as per the Section 31D. Hence, Wynk did not have any right to claim a statutory license for the same.

  1. Section 31D does not include Internet Broadcasting

Wynk argued that Section 31D encompasses online Broadcasting and its streaming service is also covered under the radio broadcasting.

The defendant also refers the inter alia, upon a DPIIT office memorandum from 2016, which entail that Section 31D does cover internet broadcasting.

 However, the court straight away declined this defence.

The court held that Section 31D was a deviation to copyright case, and must not be taken as a precedent for all the cases. Justice Kathawalla also claimed that section 31D clearly incorporates only radio and television broadcasting, and does not include internet broadcasting. Consequently, the defendant could not claim that the legislature intended on ‘radio’ broadcast to comprise the online broadcasts.

The court also denied the defendant‘s dependence upon the Government of India Office Memorandum, asserting that it was not in the ‘guidelines nature’ and needed statutory authority and consequently could not exist in the under Section 31D, statutory scheme.

  1. Section 31D cannot be referred without the regulation of the prior rates by the IPAB

The court held that the Independent Payment Advisory Board, (IPAB) did not have the authority of directing the rates for internal broadcasting. Further, the  Court asserted that statutory scheme under Section 31D, consists of the Copyright Act’s Rules 29, 30, and 31,  specifying that prior regulation of royalty rate by the IPAB was extremely crucial for the statutory license citation, under Section 31D.

Wynk also tried to hold that Rules 29, 30, and 31 were ultra vires section which were meant for the royalty rate regulation, but this line of reasoning was rejected by Justice Kathawalla, who proposed that there is a huge difference between the statute and the rules.

Finally, the court granted an interim injunction to the Tips industries, considering the fact that they made a prima facie case, would have suffered a massive loss of revenue, and the balance of convenience was also granted in the plaintiff’s favour. For more visit: https://www.trademarkmaldives.com/

 

Laws for Registration of Well-known Marks in India

Laws for Registration of Well-known Marks in India

WHAT IS A WELL-KNOWN TRADEMARK?

A well-known trademark is a trademark which is widely known to the prominent section of the public and enjoys a relatively high reputation. If any other party uses that protected well-known mark on their products or services, it would be deemed a sign that the product or service is associated with the later service provider and hence would amount to infringement of trademark rights.

Any trademark which is not recognized as a well-known mark in India by the court or the trademark registrar makes it mandatory for trademark registry to fortify the well-known mark against any discordant marks, brand or any domain name.

Recognition of marks as well-known marks drift from its primary objective of trademark registration; as trademark registry is given orders to not register any marks which are virtually identical or similar to the registered well-known trademark.

 

FOR REGISTRATION OF A WELL-KNOWN TRADEMARK

  • Relevant provisions of Trademark Act and Rules, 2017:
  • Sections 11 (6)-11 (9), Trademarks Act, 1999: The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including:
  • The knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark;
  • The duration, extent and geographical area of any use of that trademark;
  • The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
  • The duration and geographical area of any registration of, or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trademark;
  • The record of successful enforcement of the rights in that trademark; in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.

Section – 11 (7): The Registrar shall, while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account, the number of actual or potential consumers of the goods or services;

 

  • The number of persons involved in the channels of distribution of the goods or services;
  • The business circles dealing with the goods or services, to which that trademark applies.

Section – 11 (8): Where a trademark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

 

Section – 11 (9): The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:—

 

  • that the trademark has been used in India;
  • that the trademark has been registered;
  • that the application for registration of the trademark has been filed in India;
  • that the trademark:
    1. is well known in; or
    2. has been registered in; or
    3. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
  • that the trademark is well-known to the public at large in India.
  • Rule 124, Trademarks Rules, 2017: Determination of well-known Trademark by Registrar:
  • Any person may, on an application in Form TM-M and after payment of fee as mentioned in the First Schedule, request the Registrar for determination of a trademark as well known. Such request shall be accompanied by a Statement of the case along with all the evidence and documents relied on the applicant in support of his claim.
  • The Registrar shall while determining the Trademark as well-known take into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999.
  • For the purpose of such determination, the Registrar may call such documents as he thinks fit.
  • Before determining a trademark as well known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
  • In case the trademark is determined as well known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.
  • The Registrar may at any time if it is found that the Trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing the due opportunity of hearing to the concerned party.

 

Required Documents as per the Guidelines issued by TM registry in 2017:

  • TM-M Form with payment of Rupees 1 Lakh. (ONLY E-filing allowed);
  • A statement of the case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark;
  • Evidence of the use of the mark and annual sales turnover of the business using the mark;
  • Evidence of advertisements and publicity using the mark and related costs;
  • Evidence of actual or potential users of the mark;
  • Evidence of knowledge or recognition of the mark in India and overseas; and
  • Details of successful enforcement of rights with respect to the mark, if any, especially with respect to the mark being well known, including a copy of the judgment of an Indian court or registrar of trademarks determining the mark as being well known.
  • The size of the document submitted along with a statement of the case as evidence / supporting document should be in PDF format with a resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
  • Any person who wants to object to the inclusion of the trademark in the list of well-known trademarks may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents if any.
  • A copy of the objection may be communicated to the applicant for comments within the stipulated time.
  • The office will communicate the decision in respect of the objections to the parties concerned.
  • The final decision of the office regarding the inclusion of the trademark in the list of well-known trademarks will be communicated to the applicant.
  • In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website. For more visit: https://www.trademarkmaldives.com/