VOL X                                                  ISSUE NO. 17                                        August 21, 2018


In This Issue

India: Radio Mirchi wins against Radio Nasha at the Delhi High Court

The Delhi High Court recently in the case of Entertainment Network (India) Ltd. v. HT Media Limited, held that the mark ‘RADIO NASHA’ of HT Media Limited was deceptively similar to that of Entertainment Network (India) Ltd’s Trademark ‘PEHLA NASHA’ which might lead to confusion among the consumers and they might accidentally access HT Media Limited’s service instead of the service of Entertainment Network (India) Ltd. 

....................................................................................................

India: Shri Suresh Prabhu clarifies issue of pendency in Patent and Trademark Applications during the question hour of Lok Sabha

In the question hour of Lok Sabha on August 6, 2018 the focus was shifted on the pendency of the Patent Applications with the Controller General of Patents, Designs & Trade Marks (CGPDTM). The Minister of Commerce and Industry, Shri Suresh Prabhu was questioned on the same.

....................................................................................................

 

 

Patentability of Block Chain Technology

Blockchain technology is basically a type of technique or platform used to implement public ledger system. With the increasing popularity of cryptocurrency and other blockchain/public ledger system based applications, block chain technology is attracting a lot of attention. With increasing popularity of technology, there is a steep raise in filing of patent applications claiming invention based on block chain technology

.................................................................................................... 

India: Constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013 upheld

Recently, the Delhi High Court in the case of Anand Bhushan v Union of India upheld the constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013.

....................................................................................................

 



India: Radio Mirchi wins against Radio Nasha at the Delhi High Court

 

  

 

Source: www.delhihighcourt.nic.in

 

 

 

The Delhi High Court recently in the case of Entertainment Network (India) Ltd. v. HT Media Limited, held that the mark ‘RADIO NASHA’ of HT Media Limited was deceptively similar to that of Entertainment Network (India) Ltd’s Trademark ‘PEHLA NASHA’ which might lead to confusion among the consumers and they might accidentally access HT Media Limited’s service instead of the service of Entertainment Network (India) Ltd.

 

The Court held that the act of HT Media Ltd in adopting the name ‘RADIO NASHA’ is not bona fide as they did so while being aware of the fact that Entertainment Network Limited was the prior registered owner of the name ‘PEHLA NASHA’ and there is no distinction between the services of both the parties.

 

Brief Facts

  • Entertainment Network (India) Ltd. trading as 'Radio Mirchi' (hereinafter referred to as the 'Plaintiff') operates in the radio broadcasting and experiential marketing segment under its trade mark ‘Radio Mirchi’ along with the Mirchi logo.

  • The Plaintiff launched its 24 hours non-stop free radio channel under the Trademark ‘PEHLA NASHA’ in 2014.

  • HT Media Ltd. trading as 'Fever' (hereinafter referred to as the 'Defendant') airs its radio channels through the radio station titled “Fever 104 FM”, which is a direct competitor of the Plaintiff’s Radio Mirchi.

  • The Defendant launched a new FM radio channel under the name/mark ‘RADIO NASHA’ which was alleged to be identical/deceptively similar to the Plaintiff’s trademark.

  • It was learnt by the Plaintiff that the Defendant had applied for registration of the mark ‘RADIO NASHA’.

  • On February 22, 2016, the Plaintiff filed a complaint to the Ministry of Information and Broadcasting to not approve ‘NASHA’ as the brand name for any FM Broadcaster since the Plaintiff was the prior adopter thereof.

  • The Plaintiff also filed the suit for permanent injunction before the Delhi High Court (hereinafter referred to as ‘the Court’) restraining the Defendant from using any Trademark that is identical or deceptively similar to the Plaintiff’s Trademark ‘PEHLA NASHA’.

Issues

  • Whether the Plaintiff’s Trademark ‘PEHLA NASHA’ is being infringed upon by the Defendant’s mark ‘RADIO NASHA’?

Plaintiff’s Contentions

  • It submitted that that the online radio station of the Plaintiff was operated in the same manner as a full-fledged radio station and used the same hardware, software, equipment etc. as is required to run a regular FM radio station;

  • It also submitted that the audio streams for the internet radio station ‘PEHLA NASHA’ of the Plaintiff were created in the studio and thereafter were broadcasted through servers on Gaana.com platform;

  • It contended that it was the prior adopter of the mark ‘NASHA’, since it was operating from 2014.

 

  • It contended that the services of the Plaintiff and the Defendant were identical and both play the same genre of songs.

  • It also argued that there was no other radio service under the name ‘NASHA’.

  • It was further argued that the Defendant had not given any reason whatsoever for adopting a mark with the word ‘NASHA’ which formed the predominant part of the mark of the Plaintiff.

  • It was alleged that the Defendant was earlier using the mark “Radio Fever” and it was inexplicable as to why the Defendant had abandoned the mark with the word ‘Fever’.

 

Defendant’s Contentions

  • I t contended that that the word ‘NASHA’ was a commonly used term in the field of music as well as internet music streaming websites and had been used prior to use by the Plaintiff, by many third parties and who till date continue to use the same. Therefore, the word ‘NASHA’ was not distinctive of the Plaintiff.

  • It contended that there was a difference in the product of the Plaintiff and the Defendant.

  • It submitted that the service of the Plaintiff can be accessed through internet, all over the world, however the service of the Defendant was a FM Radio, which was available only within 20 kilometers.

  • It argued that the number of ‘Likes’ on the social networking page ‘PEHLA NASHA’ of the Plaintiff were not such as to show any goodwill for the service of the Plaintiff, it cannot claim to have acquired a secondary meaning or even a reputation.

Court’s Decision

  • The Court was of the view that both were catering to the needs of the patrons of free music to earn revenue from advertising. The Court held that ‘the differences pointed out by the Defendant were not such which can be distinctive of the services of the two’.

  • The Court further held that ‘it was immaterial that the music platform under the mark ‘PEHLA NASHA’ of the Plaintiff was accessible from use of medium of Wi-Fi/internet and the music platform of the Defendant under the mark ‘RADIO NASHA’ was accessible through the medium of radio/transistor and transmitted through frequency modulation airwaves’.

  • The Court found merit in the Plaintiff’s contention that ‘radios were hardly used anymore and that people can easily access radio music through their smartphones. Thus, it cannot be said that the instrument, through which the music under the mark ‘PEHLA NASHA’ of the Plaintiff and music under the mark ‘RADIO NASHA’ of the Defendant can be accessed are different or that the same obliterates the similarity/deceptive similarity.

  • It was assumed by the Court that the Defendant hoped, either to cause loss or harm to the Plaintiff by incorporating the word ‘NASHA’ in its mark or to gain from the goodwill of the Plaintiff, as it admitted that the Plaintiff was the prior adopter of the mark ‘PEHLA NASHA’ and there was trade rivalry between them.

  • It was further held that ‘the word ‘NASHA’ was a word of Hindi language which meant intoxication which need not always be of alcohol. The Plaintiff, by adopting the said word in its mark for music services, attempted to lure the patrons to get intoxicated and addicted to its music.’

  • ‘NASHA’ was held to be the dominant part of the mark of the Plaintiff with the word ‘PEHLA’ therein being unlikely to be remembered.

‘The Defendant was therefore restrained from using the mark ‘RADIO NASHA’ or any other mark similar or deceptively similar to the mark ‘PEHLA NASHA’ of the Plaintiff in relation to broadcasting, re-broadcasting, radio broadcasting and internet broadcasting services.’

 

 

Back To Top


India: Shri Suresh Prabhu clarifies issue of pendency in Patent and Trademark Applications during the question hour of Lok Sabha

 

 

Source: www.ipindia.nic.in

 

In the question hour of Lok Sabha on August 6, 2018 the focus was shifted on the pendency of the Patent Applications with the Controller General of Patents, Designs & Trade Marks (CGPDTM). The Minister of Commerce and Industry, Shri Suresh Prabhu was questioned on the same.

 

The queries raised was regarding the statistics of the Patent and Trademark pending application and the reason for rapid increase in the number of pending patent applications. To which Hon’ble Minister replied that the patent pendency is measured in terms of pending requests for examination after the request is filed. Giving numbers he showed that the pendency of patent applications at examination stage has reduced from 2,04,177 as on March 2017 to 1,55,438 as on June 2018. Similarly, for trademarks, 4,54,833 applications are pending at various stages of disposal, out of which 42,304 are pending at the examination stage.

 

Further, the Hon’ble Minister was questioned about the proposed action plan to develop infrastructure in all patent offices in the country and other steps proposed to be taken by the Government so as to deal with the mounting number of patent and registration applications. The Hon’ble Minister in his reply highlighted the steps taken by the Government to reduce the pendency. Some of the steps mentioned were:

  • That the issue of lack of technical manpower for examination and disposal of patent applications was addressed by increasing the available manpower through creation of new posts.

  • Recruitment of 459 posts of Examiners of Patents and Designs.

  • Sanctioning of 84 new posts of Examiners and 95 posts of Controllers.

  • 2016 Amendment of Patent Rules to simplify procedures for disposal of patent applications.

  • Updation of the website of Indian Intellectual Property Office to make it more interactive, informative, user-friendly and transparent.

  • The steps, like enablement of computerised work-flow, automation and IT, taken in order to facilitate the examination work and optimize the speed and quality of examination were also highlighted.

 

 

 

Back To Top

 



Patentability of Block Chain Technology

 

Blockchain technology is basically a type of technique or platform used to implement public ledger system. The blockchain is an indestructible digital ledger with respect to economic transactions that can be programmed to record not just financial transactions but virtually everything of value. Data can be sent across a network securely by implementing blockchain’s ledger methodology and cryptographic techniques. The technique will ensure that the data is from the correct sources and that there are no interim obstructions interim. If this technology is used more widely then the probability of hacking can be decreased.

 

In contrast to conventional centralized data management system, blockchain technology integrates data in a unique ledger while maintaining consistency even with a decentralized management. The benefit of decentralized control is that it eliminates the risks of centralized control. With a centralized database, anybody with sufficient access to that database can destroy or corrupt the data within. Therefore, no centralized version of this information exists for a hacker to corrupt. Hence, decentralization is the essence and strenght of blockchain technology.

 

With the increasing popularity of cryptocurrency and other block chain/public ledger system based applications, block chain technology is attracting a lot of attention. The growth in prices of cryptocurrency is evidence of popularity of block chain technology. With increasing popularity of technology,[1] there is a steep rise in filing of patent applications claiming invention based on block chain technology. The innovators of block chain technology are still confused about patentability of inventions based on block chain technology.

 

Generally, inventions covered in patent application are required to satisfy the test of novelty, non-obviousness and industrial applicability. There is no doubt about industrial applicability of block chain technology in areas like cryptocurrency, logistics, asset management, insurance, peer to peer lending platforms, Internet of Things, etc. Hence, the main issues in determining patentability of block chain-based inventions are:

  • Whether the invention is anticipated by prior art (patent literature or non-patent literature published before filing of patent application) or product already in use or offered for sale before filing date?

  • Whether invention is obvious to person ordinarily skilled in the art looking at state of art or closest prior art?

With respect to the first issue, there are assumption in the industry that block chain technology per se has limited novel features because innovators are merely using existing technology for making transactions.[2] However, the implementation of technology at large scale has posed new challenges and problems. There is no doubt that block chain technology in its current form needs improvement considering high power usage, latency in execution of transaction, inefficiency in storage of records, efficient distribution of proof of work among miners, etc. This provides innovators in the field of block chain with opportunity of coming up with new solutions. [3]

 

With respect to second issue, it needs to be examined whether new techniques proposed for improving efficiency or security in block chain technology implementing public ledger system are similar to one existing in traditional platforms other than block chain (existing applications like electronic payment systems and other fin-tech technology) and whether it is obvious for person ordinarily skilled in the art to apply same technique in block chain technology. In such evaluation of similarity of proposed invention with existing technology, the focus should be whether such existing (known) platform is independent of trusted central entity for validation which is key feature of block chain technology. If the inventive feature of proposed inventions are implemented in existing platforms which is independent of trusted central entity, then proposed invention will not be considered patentable being obvious to person skilled in the art.

 

Apart from novelty and non-obviousness, the other key issue involved in patentability of block chain technology which is implemented as software platform is whether invention will be considered as patentable subject matter under Section 3(k) of Indian Patent Act which prohibits patentability of computer programme per se, algorithm, business methods, etc. The parallel provisions under US patent law is 35 USC Section 101 which prohibits patentability of business methods and abstract ideas.

 

In November 2008, Bitcoin’s creator, known by the pseudonym Satoshi Nakamoto, published a paper via the Cryptography Mailing List titled “Bitcoin: A Peer-to-Peer Electronic Cash System” where he described blockchain. The bitcoin network is in operation since 2009 and qualified as “prior art” hence it is against any new attempt to get patented but important additions and variations which results in new utility can be patented.

 

In Alice Corp v CLS International ,[4] US Supreme Court held that computer implemented methods of assessing settlement risk in financial transaction are ineligible for patent protection, and that laws of nature, natural phenomena, and abstract ideas are not patentable because they are “the basic tools of scientific and technological work.

 

Such limitation may create prejudice against block chain technology in fin-tech industry considering its implementation as method for performing financial transaction. However, the invention covering techniques which improves functionality of technology, processes or security of payment system may be considered eligible for patentability.[5] In addition, where the invention is merely proposing the use of existing block chain technology with new business model, the proposed invention will not be considered patent eligible subject matter.[6]

 

Further, the claims for patent application claiming block chain technology-based inventions need to be drafted considering that such platforms involve multiple parties (e.g. in case of cryptocurrency, miners implement validation of public ledger records, cryptocurrency exchange provide platform for trade of cryptocurrency, cryptocurrency wallet manufacturers provides security solution for cryptocurrency traders) and all components of the invention might not be implemented by each party. Therefore, separate independent claims need to be drafted for each of the prospective invention keeping in mind entities involved in implementation of technology. Alternatively, separate patent application can also be filed for separate inventions, if these inventions are unique and distinguishable. [7]

 

Looking at complicated legal and technical issues involved in patentability of block chain technology, there is a need to develop and train legal practitioners in this specialized area so that innovators are provided with quality legal advice. Further, most of the innovators do not show interest in patent protection because they consider this technology as more suitable for open source. The innovators need to be made aware that patent protection can also be used as defense against infringement action filed by competitors. Therefore, the innovators in the field of block chain technology needs to be proactive when it comes to filing patent applications for improved techniques and systems.

 

_____________________

 

[1]https://ipspotlight.com/2018/01/22/trends-in-patenting-blockchain-technologies/ 
[2]https://ipspotlight.com/2018/01/18/intellectual-property-strategies-for-next-
generation-cybersecurity-technologies/ 
[3]https://ipspotlight.com/2018/01/18/intellectual-property-strategies-for-next-
generation-cybersecurity-technologies/ 
[4]3 Alice Corporation Pty. Ltd. v. CLS Bank International, et al, 573 US, 134 S.Ct. 2347 (2014)
[5http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_
Examination_of_Computer-related_Inventions_CRI__.pdf 
[6]https://www.alixpartners.com/media/3782/ap_the_race_to_patent_the_
blockchain_sep_2016.pdf 
[7]https://ipspotlight.com/2018/01/26/defensive-patent-strategies-for-blockchain-and-distributed-ledger-technologies/ 

 

Back To Top



India: Constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013 upheld

 

Source: www.delhihighcourt.nic.in

 

Recently, the Delhi High Court in the case of Anand Bhushan v Union of India upheld the constitutionality of Rules 56, 57(5), and Rule 61(5) of the Copyright Rules, 2013.

 

Brief Facts

  • Anand Bhushan (hereinafter referred to as ‘Petitioner No. 1’) is a shareholder and Joint Managing Director of M/s Pitambar Publishing Co. Pvt. Ltd. (hereinafter referred to as ‘Petitioner No.2’).

  • Petitioner No. 2 is a Company registered under the Companies Act, 1956. Petitioner No. 3, the Indian Reprographic Rights Organization (hereinafter referred to as "IRRO"), is a registered Society under the Societies (Registration) Act, 1860, having its head office in Delhi, whereas Petitioner No.4, the Federation of Indian Publishers (hereinafter referred to as "FIP"), is also a registered Society which is an apex body representing the Indian Publishing Industry and engaged in promoting and representing the interests of the said industry.

  • It was submitted that the Petitioner’s publishing business and commercial activities extended to the whole country and beyond, specifically Delhi, which was a major center for publishing activities.

  • It was further submitted that their constitutional rights were affected by the Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013.

  • Thus, the following Petition.

Issues

  • Whether Sections 11(2), 12(2), 31 and 33A (2) of the Copyright Act, 1957 (as amended by the Copyright Amendment Act 2012; “Act” for short) violate the provisions of Articles 14, 19(1)(c) and 19(1)(g) of the Constitution of India?

  • Whether Rules 3, 47(1), 56(3), 56(4), 56(5), 56(6), 57, 59(7) and 61(5) of the Copyright Rules 2013 (“Rules” for short) violate the provisions of Articles 14, 19(1)(c) and 19(1)(g) of the Constitution of India.

  • Whether the Petitioner’s prayer to prohibit the Respondent from making any appointment to the Copyright Board in terms of the impugned provisions is justified or not?

Petitioner’s Contentions

  • It contended that the Sections 11 (2) & 12 (2) of the Act suffered from the vice of excessive delegation. Also, Rule 3 of the Rules was argued to be violative of Article 14 of the Constitution, being contrary to the principles for appointment of Tribunals like the Copyright Board laid down by the Supreme Court.

  • It contended that the expression ‘unreasonable element’ should be read as by applying the doctrine of 'noscitur a sociis', which meant, the expression ‘unreasonable’ in Section 33A(2) of the Act must take its color and meaning from the words ‘anomaly and inconsistency’ in the tariff scheme.

  • It submitted that the challenged Rules impose unreasonable, unjustified and fatuous restrictions on the Copyright Society registered under Section 33 (3) of the Act, without any rationale. Also, the said Rules limited the frequency of tariff revisions (whether upward or downward), which was beyond any rule-making power conferred by the Act.

 

Respondent’s Contentions

  • It claimed that the decision of the Copyright Board cannot be considered as wide and unlimited as the final orders of the Copyright Board can be challenged before the High Court.

  • It submitted that Section 31 of the Act provided for compulsory license in case of abuse of rights. It argued that the Copyright Board, only after giving a reasonable opportunity of being heard to the owner of the copyright in the work, would direct the Registrar to grant a compulsory license as per the rates fixed by the Board.

  • It also submitted that Rule 56 introduced a system of transparency in fixing prices by the Copyright Societies and governed and regulated the system of fixation, collection and distribution of royalties. Further, Rules 59(6), 59(7) and 61(5) were in harmony with the legislative intent of Section 35(3), which provided for equal membership of authors and owners.

  • Therefore, it argued that the Rules were not, in any way, violative of Articles 19(1)(c) & (g) of the Constitution.

 

Court’s Decision

  • With regards to the noscitur a sociis argument of the Petitioners, the High Court (hereinafter referred to as ‘the Court’) was of the view that it would not like to curtail or water down the scope and ambit of language employed and adopted, given the importance to the Copyright Board for the said purpose.

  • It held that ‘while exercising the power of judicial review, it is not to examine merits of delegated legislation. A writ petition for judicial review of the Rules would lie only on certain well-defined grounds. Courts cannot always go into the merits or demerits of a policy reflected in the substratum of the Rules. The parameters of judicial review of subordinate legislation have been succinctly stated in various decisions of the Supreme Court.’

  • It further held that Rule 56 does not in any way ran counter to or defeated the rights of the Copyright Society to fix and claim reasonable tariff. The Court specified that the object and the purpose behind Clauses (a) to (d) of Rule 56 was to ensure that different Copyright Societies should publish tariffs which have some form of uniformity and consistency for the users to be able to understand and appreciate them. It was a regulatory exercise and not an exercise which curtails freedom and discretion of Copyright Societies to fix tariff.

  • With regard to Rule 57, the Court held that it ensures that the Board while examining the question whether the tariff was unreasonable can examine the prevailing standards of royalties to such commercial exploitation of works. This according to the Court was not an unreasonable or illegal stipulation which the Board must take into consideration while deciding the appeal. If an appeal was filed, the Board can issue general directions on whether the tariff was unreasonable and suffers inherent inconsistency.

  • Regarding Rule 61, the Court refused to accept the argument of the Petitioner that some of the members of the Copyright Societies cannot be treated as legitimate or righteous members under the Act as in the view of the Court the argument was hypothetical and based on assumption that a wrong or ineligible person would be enrolled as a member of the Copyright Society. The Court further held that in case a wrong or ineligible person was enrolled, he can always be removed from the Copyright Society by following the procedure in accordance with law.

The Court held that ‘the Rules do not negate the principal enactment and it cannot be said that they are repugnant to or in derogation of the object or purpose which the principal enactment seeks to achieve. The impugned rules were held to be in consonance with the main enactment, i.e., the Copyright Act 1957. The writ petition was therefore dismissed.

 

 

Back To Top



  |/span>   |   |   |   |   |   |   |   |   |  
© Copyright 2017-18, S.S. Rana & Co. All rights reserved