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SSRana Newsletter 2021 Issue 19

October 13, 2021

Upto 80% rebate on Patent fees for Educational Institutions!

patentThe Patents (Amendment) Rules, 2021 entail a rebate of up to 80% rebate on Patent fees for Educational institutions.

Extension of Limitation Period Recalled! Intellectual Property Office India

swissIn view of Apex Court’s order, the Office of CGPDTM has now notified that the period of limitation shall be computed in accordance with Supreme Court’s order of September 23.

Red Bull v. Red Horse- Trademark Infringement

onlineThe Plaintiff i.e. Red Bull in the case alleged that the Defendant i.e. Red Horse was offering for sale/selling candies under the name RED HORSE with a packaging/ style similar to that of Red Bull.

Challenges of ‘Royalty Free Music’

delhiCommercial exploitation of musical copyrighted works has often led to legal battle on accounts of absence of a valid licensing agreement.

UAE Joins Madrid Protocol

delhiOn September 28, 2021, the Government of the United Arab Emirates deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General.


Upto 80% rebate on Patent fees for Educational Institutions!

patent

By Johny Solomon Raj and Dhruv Mathur

The Ministry of Commerce and Industry (Department for Protection of Industry and Internal Trade) vide its notification dated September 21, 2021 has released the Patents (Amendment) Rules, 2021[1], highlighting a rebate of  up to 80% rebate on Patent fees for Educational institutions. The support provided by the Indian government for the Educational Institutions would monetarily help the budding scientists and inventors of the institute, to protect their inventions, and at the same time, motivate the institutions to bring forward their Research and Developments devised in their guidance!

Patent (Amendment) Rules, 2021- Quick Takeaways

PRE-AMENDMENT POST-AMENDMENT COMMENTS
Rule 2

 

Definitions

Rule 2

 

Definitions

 

(ca) “educational institution” means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognized by an authority designated by the Central Government or the State Government or the Union

territories in this regard;

Rule 2 has been amended to insert sub-rule (ca) to introduce the definition of “educational institution” as a university which is established under any Act of the Centre or any Province/State, or an educational institution recognized by any government authority whether Central or State or Union territories.
Rule 7

 

Fees

 

(1) The fees payable under section 142 in respect of the grant of patents and applications therefor, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule.

Provided that ten per cent additional fee shall be payable when the applications for patent and other documents are filed through physical mode, namely, in hard copy format:

Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.

 

(3) In case an application processed by a natural person and/ or startup and/ or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer

Rule 7

 

Fees

 

(1) The fees payable under section 142 in respect of the grant of patents and applications therefor, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule.

Provided that ten per cent additional fee shall be payable when the applications for patent and other documents are filed through physical mode, namely, in hard copy format:

Provided further that in the case of a small entity, or startup, or educational institution, every document, for which a fee has been specified, shall be accompanied by Form-28.

(3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer

The second proviso to Rule 7(1), has been amended to include educational institutions within its purview, which earlier only included small entities and startups.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Also, in sub-rule (3) of Rule 7, educational institutions have also been included in the parties that can process or transfer such application. Pre-amendment, the Rules were only limited to natural persons, small entities and startups.

Conclusion

The present amendment to the Patent Rules is indeed a welcome move and advances the scope of patent filing by educational institutions. It also encourages research and innovations by educational institutions which is one of the most intrinsic parameters while determining the development and progress of any economy today, and also add to India’s IP portfolio!

[1] https://ipindia.gov.in/newsdetail.htm?758

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India: Patent Amendment Rules, 2019 Comes into force

REDUCED FEE FOR PATENTS FILED BY ELIGIBLE EDUCATIONAL INSTITUTIONS- PROPOSED AMENDMENT

 

 

Extension of Limitation Period Recalled! Intellectual Property Office India

swiss

By Soumya Sehgal and Bhanu Dhingra

The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) has issued a public notice dated October 03, 2021 in furtherance of Supreme Court’s order dated September 23, 2021 recalling the extension of limitation period.[i]

Also read Supreme Court- Extension of Limitation period recalled

The Apex court in its order of September 23, 2021, had held that the period from March 15, 2020 till October 02, 2021 shall stand excluded from computing limitation period.

The Hon’ble Supreme Court inter alia held that –

“8. Therefore, we dispose of the M.A. No.665 of 2021 with the following directions:-

  1. In computing the period of limitation for any suit, appeal, application or proceeding, the period from 15.03.2020 till 02.10.2021 shall stand excluded. Consequently, the balance period of limitation remaining as on 15.03.2021, if any, shall become available with effect from 03.10.2021.
  2. In cases where the limitation would have expired during the period between15.03.2020 till 02.10.2021, notwithstanding the actual balance period of limitation remaining, all persons shall have a limitation period of 90 days from 03.10.2021. In the event the actual balance period of limitation remaining, with effect from 03.10.2021, is greater than 90 days, that longer period shall apply.
  • The period from 15.03.2020 till 02.10.2021 shall also stand excluded in computing the periods prescribed under Sections 23 (4) and 29A of the Arbitration and Conciliation Act, 1996, Section 12A of the Commercial Courts Act, 2015 and provisos (b) and (c) of Section 138 of the Negotiable Instruments Act, 1881 and any other laws, which prescribe period(s) of limitation for instituting proceedings, outer limits (within which the court or tribunal can condone delay) and termination of proceedings.”

In view of the aforesaid holding of the Supreme Court, the Office of Controller General of the CGPDTM has now notified that period of limitation shall be computed in accordance with the afore-cited order dated September 23, 2021 of the Hon’ble Supreme Court of India.

[i] https://ipindia.gov.in/writereaddata/Portal/News/759_1_Public_Notice_03-10-2021.pdf


 

Red Bull v. Red Horse- Trademark Infringement

online

By Arpit Kalra and Pranit Biswas

Red Bull is a brand which is almost synonymous with energy drinks, on a global scale. Just like the brand name, equally famous is their product packaging and logo, comprising of the red-bull design (reebyull2 /redbull6 ). This rather ubiquitous brand was recently the subject matter of a trademark infringement matter before the Hon’ble High Court of Delhi.

THE PLAINTIFF

As noted above, the Plaintiff, Red Bull AG, is involved in, inter alia, manufacturing, and marketing of energy drinks sold under the Red Bull Marks. The Plaintiff is the owner of various trade marks in India, with the ones relevant to the present case being reebyull2, , RED BULL,redbul4 , redbull5/ redbull6. As noted in the Order also, Plaintiff’s trademark RED BULL is specifically recorded as a well-known trademark in the list of well-known marks maintained by the Trade Marks Registry. Further, Plaintiff’s marks and redbull8 have been declared as ‘well-known’ by the Delhi High Court in the case of Red Bull AG Vs. C. Eswari & Ors.[1]

THE DEFENDANT

Defendant herein is a company named BAKEWELL BISCUITS PRIVATE LIMITED, which is engaged in, inter alia, manufacture, and sale of various confectionery products. The Defendant has an active website at https://www.bakewellbiscuits.co.in/.

FACTUAL BACKGROUND

The Plaintiff discovered that Defendant is offering for sale/selling candies under the name RED HORSE with packaging/ style:redbull9 , as the same was advertised on their website. Thus, the Plaintiff issued a Cease & Desist Notice to them, which went unanswered. However, Defendant through their counsel had purportedly reached out to the Plaintiff’s counsel, but the same did not lead to compliance.

The Defendant had also filed an application for the mark in class 30 vide application no. 4327842 dated October 22, 2019, which was opposed by the Plaintiff in 2020.

In view of the above facts, the Plaintiff being aggrieved, filed a suit before the Hon’ble High Court of Delhi, inter alia seeking ex-parte and/or ad-interim relief along with an application for appointment of Local Commissioner (although the Plaintiff has requested to keep the said application pending for the time being, due to the prevailing COVID-19 situation in the Delhi/NCT area. Further, the Plaintiff had also sought exemption from serving advance suit papers on Defendant.

Court Order

Observations

The Court observed that Plaintiff had successfully established a prima facie case for an ex-parte decree in its favour as the balance of convenience was in their favour and that Plaintiff would suffer irreparable loss in case ex-parte interim injunction was not granted.

While the Learned Single Judge Mr. Sanjeev Narula did not discuss the matter in depth in the Order dated May 18, 2021, a comparative chart of the Plaintiff’s marks vs. the Defendant’s marks was laid out, which leaves little to the imagination:

redbull11redbull12

Thus, till the next date of hearing, the Court restrained the Defendant from using the above marks in question, in respect of any goods.

Conclusion

The above case appears to be a glaringly obvious prima facie case of infringement, and as one would expect in such a case, the Court has acted in the best interests of the right holder, especially by exempting the Plaintiff from serving advance suit copies upon the Defendant.

[1] CS (COMM) 1062/2018

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Challenges of ‘Royalty Free Music’

delhi

By Ananyaa Banerjee and Isha Tiwari

Introduction

Bob Marley was once quoted as saying “one good thing about music, when it hits you, you feel no pain”. However, this statement may not ring true for victims whose musical works have been exposed to Copyright Infringement. For generations, music has provided soul to artists’ works worldwide and the importance of legal protection for such works has developed simultaneously. Music producers are zealously tackling copyright infringement wars as it threatens to wreak havoc over their artistic efforts. In a similar case of infringement in Grand Upright Music Ltd v. Warner Bros. Records[1], it was famously opined by the presiding judge that “thou shalt not steal.” But what if you had no intention of stealing the intellectual work of another and just wanted to explore cheap options without having to pay steep royalties. Given the general public’s benign understanding of convoluted copyright provisions, terms of fair use and the era of Web 2.0, it is only evident that lawsuits would tail-gate. The article will specifically delve into royalty terms with respect to musical works and shed light into the ongoing legal battle between Freeplay Music, LLC. and Ford Motor Co.

What are ‘Royalty Free’ Works?

A general misconception would be that ‘Royalty Free’ music is free to use, which essentially it is not. In layman terms ‘royalty free’ means that once permission is secured from the copyright owner, the user does not have to pay compensation or ‘royalties’ for recurrent use of the subject copyrighted work. Unfortunately, the Indian Copyright Law does not define the term ‘royalties’, instead provides guiding parameters for the Copyright Board for calculating the amount of royalty to be paid for using a copyrighted work.

Typically, if a copyrighted musical work is used in a home video, it would not entail any legal liability and be termed as fair use, but the exemption would fall through if it’s being used for commercial viewing. This is where royalty-free works step in for being useful for content creators who seek out platforms to provide them with cheap and hassle-free musical content. In fact, most of these platforms such as Audio Jungle, Soundstrip, AUDIIO, Ben Sound run on annual non-exclusive license fee. One such platform is Freeplay Music, LLC. (“FPM”) which allows users to avail copyrighted musical works by attaining an automated license agreement for commercial and personal use. A nifty advertising technique to attract with ‘free’ content, but no copyright owner would actually permit another to mint profits off its intellectual property without adequate compensation. As per its partnership with YouTube in 2013, users can avail FPM’s services for free provided for personal use and on payment of an annual fee for commercial use on the media platforms[2].

The Copyright Battle – Freeplay Music, LLC. Vs. Ford Motor Co.

In April, 2020, the automobile manufacturer giant, Ford Motor Co. (“Ford”) landed itself in a Copyright Infringement battle with FPM. The federal lawsuit was filed in the State of Michigan, wherein it was contended by FPM that Ford had used multiple songs as part of the background music in its promotional advertisements in April, 2017, without attaining any license or paying royalties. Per its contentions, FPM first attained knowledge of copyright infringement when the audio recognition company, TuneSat identified 54 songs out of its 50,000 songs library, being used in 74 advertisements and thus, sought statutory damages worth USD 150,000[3] per infringed work, amounting to USD 8.1 million.

On the other hand, Ford has accused FPM of false advertisement through its trade name and deceptive marketing communications, as per which consumers would prima facie incorrectly assume its music content is free for use, when in fact the payment terms were buried in tedious terms and conditions and the detailed license fee was added onto its website for public viewing only in 2018.

Extent of Liability while using ‘Free’ Music in a Copyrighted Work

In FPM’s case particularly, its policy states that all songs are free for download, provided they satisfy the below mentioned stipulations[4]

  • YouTube – The content is only for personal use on YouTube. The user also gives an explicit right to FPM and YouTube to insert ads in any manner, whether ancillary to the user’s video content or not, while uploading on YouTube or another YouTube based platform. An interesting point here is that nowhere has the definition ‘personal use’ being described for a better understanding of the users. For commercial purposes, the user has to obtain a license for business use.
  • Education – FPM content is free for use for the purposes of educational projects and learning.
  • National Television Broadcast – The content is free for all the qualifying network broadcasters operating on a national basis.

A prima facie perusal of FPM’s ‘Limited License’ reveals that it is non-exclusive, revocable, non-assignable, personal, and non-transferable license to download, display, view, use, play ‘the content’ on a personal computer, browser, laptop, tablet, mobile phone or other Internet-enabled device  and/or print one copy of the content as it is displayed, in each case for personal, non-commercial use only. It clearly stipulates no entitlement of copyright ownership, or any other intellectual property right in the said content and may be immediately suspended or terminated for any reason, based on FPM’s sole discretion, laying the groundwork for user’s liability[5]. Therefore, a user can only escape the clutches of liability if the content is being used in a personal video, which loosely translates to a home video meant for private viewing only. For the purposes of YouTube, the user may have to enlist the video content as ‘private’ as per YouTube’s setting or risk being taken down from the platform.

Reading the Fine Print in Terms & Conditions

It is safe to say that most users have the default habit of skipping the ‘terms and conditions’ policy of any service but such e-contracts (which do not require attestation) have been upheld for their legally validity in courts, even in India. So, would FPM entail any liability for advertising its services as ‘free’ leading its users to believe they aren’t infringing on any copyrighted work or is it a permissible marketing strategy? One of the basic facets of a valid contract is ‘offer and acceptance’, and an offer which one does not see, shouldn’t be held as valid. It is the responsibility of the service provider to mention such terms and conditions in simple and lucid language, with clear visibility for a user’s understanding, failing which it would be rendered unenforceable. In Specht vs. Netscape[6], the United States Court of Appeals for the Second Circuit upheld that a user cannot be made liable for terms and conditions which were not adequately visible. However, entities such as FPM typically have an iron clad license agreement, with complex legal jargon which non-IP sensitised users would reasonably not understand.

Further, it is interesting to mention that FPM entitles itself to make profits from streaming ads on the user’s personal videos, in addition to charging a licensing fee for business use of its content. Therefore, the service may seem ‘free’ to the user but might actually be a clever way to secure licensing fees from them.

Ford accused FPM, similar to a feud back in 2015 with Machinima, Inc., on accounts of violation of fair competition by misleading public with its elaborate display of the word ‘free’ in its trade name and services titled “Songs free for YouTube and more”, as a means of usurping license fees from its users[7]. Further, it was contended that rather than issuing a take-down notice, FPM sends a notice threatening with legal action unless the user agrees to pay the license fee, allegedly sent by TuneSat, a company having close ties with FPM.

A Case of Genuine Infringement or False Advertising?

Commercial exploitation of musical copyrighted works has often led to legal battle on accounts of absence of a valid licensing agreement. In 2020, the online music platform, Spotify, settled USD 1.6 billion infringement lawsuit with Wixen Music Publishing for allegedly streaming the songs without a proper license[8]. Platforms that offer users to freely use their copyrighted works are under a strict liability to clearly identify to their users the terms of agreement, as it is unreasonable to expect a user to comprehend the implied intent of the service provider. So, it appears to be a valid argument that Freeplay’s overt way of publicising free services might actually be a covert way of tricking users into extorting lucrative licensing fees and therefore, false advertising and deceptive licensing practices.

Although the Copyright Law entitles every copyright owner to exercise ownership over one’s work, such practices may not always encourage creativity and may even be detrimental to productivity, as lawsuits are notorious for draining out money and time over the course of their pendency. Guilty or not, it does highlight the growing importance of having clear knowledge about one’s intellectual property rights in their work and where the line of fair use ends and infringement begins.

[1] 780 F. Supp. 182 (SDNY 1991)

[2] https://freeplaymusic.com/#/about-us

[3] Section 504 (c)(2) Remedies for infringement: Damages and profits, Copyright Law of the United States; https://www.copyright.gov/title17/92chap5.html; accessed on May 19, 2020

[4] FAQs; https://freeplaymusic.com/#/faq; accessed on May 19, 2020

[5] Freeplay Music LLC Terms of Use Agreement; https://freeplaymusic.com/#/terms; accessed on May 19, 2020

[6] 306 F.3d 17

[7] Machinima, Inc. vs. Freeplay Music, LLC; https://www.courtlistener.com/docket/4152546/1/machinima-inc-v-freeplay-music-llc/

[8] Spotify settles $1.6 billion copyright infringement lawsuit; https://www.engadget.com/2018-12-20-spotify-settles-1-6-billion-copyright-infringement-lawsuit.html


UAE Joins Madrid Protocol

food

By Abhishek Chandok and Kanv Sagar

On September 28, 2021, the Government of the United Arab Emirates deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General. The Madrid Protocol will enter into force for the United Arab Emirates on December 28, 2021. By signing the accession of instrument, UAE becomes the 109th member of the Madrid System, which now covers 125 countries. UAE also becomes the third country in the Gulf Cooperation Council (GCC) alongside Bahrain and Oman to join the Madrid Protocol.

The Madrid Protocol is bringing the world closer together with respect to the trade opportunities and in the expansion of IP related co-operation between countries. UAE’s adoption of the Madrid Protocol, will not just help the big brand owners in UAE to take their brands to other member countries but also the local business owners like SME’s and entrepreneurs will benefit from the simple registration process of the Madrid Protocol. The local business owners in UAE could seek protection of their trademark in the 124 territories of the System’s other 108 members through a single application filed with the UAE, IP Office and payment of a single set of official fees. This will help them in significantly reducing the costs and efforts during their expansion in other 108 countries.

In addition, the foreign applicants could also obtain protection for their marks by designating UAE in their Madrid Application along with other member countries. From December 28, 2021, using WIPO’s online subsequent designation service, foreign companies and trademark owners can expand their trademark protection through the Madrid System to include the consumer market of UAE. The accession of UAE to the Madrid Protocol is a positive step towards promoting trade cooperation between countries and offering a convenient/ cost-effective solution for brand owners worldwide and in the Middle East region.

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