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SSRana Newsletter 2022 Issue 01

February 17, 2022

India climbs 35 ranks in Global Innovation Index

stairs-block-fingerAs per the rankings in the Global Innovation Index, India has ascended its way up to hold its ranking at 35, as compared to 81st rank in 2015-16 to 46th rank in 2021.

Hike in Patent Filing Fees in Europe/ EPO!

patent-Facilitation-CenterThe European Patent Office (EPO) has very recently announced an increase to its official fees by approximately 3%, which shall come into effect on April 1, 2022.

Indian Trademark law applicability to Foreign Defendants with No Physical Presence in India

delhi-high-court-boardThe Delhi High Court in the case culled out certain criteria that are needed to be met in order for the Indian courts to exercise territorial jurisdiction over foreign Defendants in online/internet trade mark infringement cases.

C.A.R.T- Can Acronyms be Registered as Trademarks?

brand-blackcolorIn order for an individual or an entity to claim statutory rights in an acronym under the Trade Marks Act, 1999, firstly, either the full form of the acronym (original name/phrase) has to be registered as a trademark, or at least be eligible for trademark protection.


India climbs 35 ranks in Global Innovation Index

stairs-block-finger

By Lucy Rana and Swaraj Singh

In 2020-21, Indian residents filed 40% of the total patent applications, which is more than double the number filed in 2010-11.

As per the rankings in the Global Innovation Index, India has ascended its way up to hold its ranking at 35, as compared to 81st rank in 2015-16 to 46th rank in 2021. As per an overview of the statistical data of last 10 years provided by the World Intellectual Property Organization (WIPO), it has been deduced that the patents applications granted in India have immensely been increased, whereby the number of patents granted in India has gone up to 28,391 in 2020-21 from 7509 in 2010-11. There have been a rapid increase in the filing of patent applications in India during the same period, i.e. 39,400 in 2010-11 to 58,502 in 2020-21 making it a jump of 30%.[1]

The meteoric increase in the filing of patent applications is the reason behind the boost in India’s ranking at the Global Innovation Index. It is pertinent to note that the sudden growth in the filing of patent applications in India coincides with the modern start-ups boom in India.

Various steps have been undertaken by the Government of India by way of providing incentives to encourage and promote educational institutions and start-ups towards innovation and filing of patents.

The boom of start-up initiative in India kick-started in the year 2016 to extend a helping hand for budding entrepreneurs in India. It has been recognized via the Startup India Programme that the start-ups receives up to 80% rebate in regard to patent filings.[2]

In addition, the Ministry of Commerce and Industry vide its notification dated September 21, 2021 has released the Patents Rules, 2021, highlighting a rebate of up to 80% on Patent fees for Educational Institutions. The constant support provided by the Indian government has also encouraged Educational institutes and tech companies with research and development (R&D) centres to help the Indian residents to actively file for IP applications in India.

The trends of Patent Applications filed by the Indian residents compared to the total applications filed over the last 11 years is as below:[3]

graph

In 2020-21, Indian residents filed 40% of the total patent applications in India, which is more than double the percentage of patent applications filed by Indian residents in 2010-11.[4]

The climb in India’s ranking on the Global Innovation Index is indeed a positive step towards advancing the scope and ambit of filing patent applications in India.

[1] https://economictimes.indiatimes.com/news/economy/policy/increasing-examiners-reducing-application-process-time-can-help-grow-patents-granted-in-india/articleshow/89249204.cms?from=mdr

[2] https://ssrana.in/corporate-laws/startups-registration-related-laws/startups-india-incentives/

[3] https://ipindia.gov.in/annual-reports-ipo.htm

[4] https://www.moneycontrol.com/news/business/startup/economic-survey-2022-india-climbs-35-ranks-in-global-innovation-index-but-lags-in-patents-count-8008541.html

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Global Innovation Index 2020: India ranked at 48 among 131 countries

 

Hike in Patent Filing Fees in Europe/ EPO!

patent-Facilitation-Center

By Renu Bala and Johny Soloman Raj

Changes in Official EPO Fees effective from April 1, 2022 

The European Patent Office (EPO) has very recently announced an increase to its official fees by approximately 3%, which shall come into effect on April 1, 2022.

The last fee increase of EPO occurred in April, 2020 and in the present hike, most of the official fees have increased by about 3%. The changes in fee payments in EPO happen biennially – for instance in 2018, there was a reduction in fees in 2018.

For innovators/ companies who are considering filing patent applications with the EPO at present, should definitely keep the below salient points in mind, in light of this recent development:

  • Cost savings can be made by filing the patent application with EPO prior to April 01, 2022.
  • If any procedure such as paying grant fee, renewal fee is due, then the patentee may wish to pay the fees prior to the abovementioned date, so as to avoid incurring additional official fee due to the hike.
  • If a party is considering to file an appeal against an issued decision, they may wish to do so before the fee increases on April 01, 2022.

Comparative analysis on different segments of Fee payments (In the year 2020 & 2022)

Different Segments of fee payment Fee in 2020 Fee in 2022
Filing fee 125 EUR 130 EUR
Search fee 1350 EUR 1390 EUR
Designation fee 610 EUR 630 EUR
Examination fee 1700 EUR 1750 EUR
Granting fee 960 EUR 990 EUR
Renewal fee

–          For 3rd year

–          For 4th year

–          For 5th year

–          For 6th year

–          For 7th year

–          For 8th year

–          For 9th year

For 10th and each subsequent year

490 EUR

610 EUR

855 EUR

1090 EUR

1210 EUR

1330 EUR

1450 EUR

1640 EUR

505 EUR

630 EUR

880 EUR

1125 EUR

1245 EUR

1370 EUR

1495 EUR

1690 EUR

REFERENCES:

Major changes/consideration in official EPO Fee

Also read:

Artificial Intelligence (AI) can be an Inventor? EPO says NO!!!

 

Indian Trademark law applicability to Foreign Defendants with No Physical Presence in India

delhi-high-court-board

Tata Sons recently filed a suit seeking permanent injunction to restrain foreign Defendants dealing in crypto currency, from using the trade mark “TATA” as part of the brand under which their crypto currency is made available to the public, that is, “TATA coin/$TATA”, or as part of their corporate name or domain name. The judgment of the Delhi High court dated October 26, 2021[i] in the said matter brought out certain interesting points for consideration regarding the jurisdiction of the Indian courts, whether the Plaintiff could seek an injunction against the Defendants’ mark, the Defendants being located outside the sovereign borders of India and the requirement of the intention to target the Indian market.

The Plaintiff

The Plaintiff in the given case was Tata Sons Private Limited, who provided a platform for trading in crypto currency under their well-known trade mark “TATA”.

The Defendants

The Defendants, Hakunamatata Tata Founders and others, were dealing in crypto currency under the trade mark “TATA coin/$TATA” in the U.K. and the U.S. However, they did not have any outlets in India nor were they carrying out any overt manufacturing or marketing activities within India.

Contentions of Tata

Tata argued a number of grounds in order to assert the territorial jurisdiction of the Delhi High Court over the Defendants, including:

Factual Contentions:

  • That Indians could purchase the Defendant’s crypto currency from their website, which was accessible in India.
  • That there is an admission, in the “White Paper” of Defendant no. 1, that it was involved in financial activities relating to India.
  • That the Twitter page of the Defendant reflected queries from various Indians regarding the process to purchase the Defendant’s “TATA coin/$TATA” crypto currency.
  • That India had the second highest internet traffic to the defendant’s website hakunamatata.finance with 50 visitors each day.
  • The Defendant had various Indian followers on the social media site Telegram.

Legal Contentions

  • That the Defendants had purposefully availed the territorial jurisdiction of the Court by making available their crypto currency under the infringing mark “TATA coin/$TATA”, in India, through the abovementioned website.
  • That there existed sufficient connection as required, between the infringing activities of the Defendants and the prejudice caused to the Indian customers and Tata, including the dilution of its goodwill.
  • That the jurisdiction of the Delhi High Court over the impugned activities of the Defendants was also bolstered by the effect of the said acts being felt with the Court’s jurisdiction, as the “TATA coin/$TATA” crypto currency could by purchased online by anyone situated in India, including Delhi.
  • That the Defendants had a clear intention to target the Indian customers.

Issue and Findings by Delhi High Court

Whether the Delhi High Court had the territorial jurisdiction to issue any injunctive direction to the Defendants, who were located outside India, with no physical Indian presence, or injunct the use, by them, of their “TATA coin/$TATA” mark?

The Hon’ble High Court discussed the case of (India TV) Independent News Services Pvt. Ltd. vs. India Broadcast Live LLC (2007) 35 PTC 177 (Del) at length, where, under similar facts and circumstances of the Defendants being located in the U.K. and the U.S., India TV, the Plaintiff, had claimed to be aggrieved by the Defendant’s use of the domain name “www.indiatvlive.com” and had been successful in availing an ex parte ad interim injunction, restraining the Defendants from using any combination of the terms “India” and “TV” in their domain names.

However, some key differences in the facts of the India TV case, as noted by the Delhi High Court in the present case, were:

  • That the Defendant’s website therein, expressly mentioned India as one of the countries whose residents could subscribe to their services through their website,
  • That the Defendant’s CEO in a public statement had acknowledged the opportunity provided by their website to target the Indian customers,
  • That the Defendants had acknowledged their Indian presence in their written statement, and
  • That they claimed to be the first IPTV delivery system of Indian content from India.

The Court examined Tata’s contentions and observed that:

  1. The accessibility of the website of the Defendant to persons within the jurisdiction of the Court would not, by itself, empower the Court to exercise jurisdiction over the Defendant.
  2. Something more substantial, indicating purposefully directed activity, by the Defendants to persons located within the territorial jurisdiction of this Court, is necessary.
  3. It was not the case of the plaintiff that the Defendants invited customers from India to purchase its crypto currency or responded to the queries posted on their Twitter page.
  4. 50 Indian visitors each day to the Defendant’s website was a remarkable small number and neither this, nor the alleged Telegram followers indicated that the Defendant was selling in/targeting the Indian market.
  5. Unlike in the India TV case, where the Defendants were admittedly, targeting India overtly as a customer base (refer to the key differences in the facts of the India TV case mentioned above), there were no facts on record to depict the same for the Defendants in the present case.
  6. The mere fact that some queries happen to be posted by persons in India, again, cannot indicate, any intent on the part of the Defendants to target the Indian market.
  7. There is no specific reference to India, on the website of the Defendants, as one of the preferred markets from where the Defendants’ crypto currency could be purchased. No conscious targeting of India, therefore, exists. Apparently, the Defendants’ crypto currency could be purchased, using the QR Code and the methodology indicated on the Defendants’ website, by a customer located anywhere in the world. This factor, therefore, too, cannot indicate any conscious targeting of the Indian customer base by the Defendants.

Therefore, the Court distinguished the facts of the present case from those of India TV and culled out certain criteria that needed to be met in order for the Indian courts to exercise territorial jurisdiction over foreign Defendants in online/internet trade mark infringement cases. These included:

  • The Defendant had to be carrying out infringing activities within the jurisdiction of the Indian courts,
  • The Defendant’s website had to be accessible by persons situated within such jurisdiction,
  • The said website of the defendant must be interactive, and
  • The level of interactivity of the said website should be such as to confer upon the Defendant, an irrefutable overt intent to target the Indian customers.

Therefore, orders which would operate to the prejudice of nonresident Defendants can, therefore, be passed by Indian Courts only if (a) the defendants’ activities have a sufficient connection with India, (b) the cause of action, for the Plaintiff, arises out of such activities and (c) the exercise of jurisdiction would be reasonable.

The Hon’ble High Court accordingly postulated that the intent of the Defendant to target the customer base in India was a sine qua non for the Indian courts to exercise territorial jurisdiction over such foreign Defendants. The Court held that such an intention, to target the Indian market, was evidently absent in the facts of the present case.

Conclusion

This judgment holds an “intent to target” as a mandatory requirement in internet trade mark infringement cases for the Indian courts to exercise jurisdiction over foreign defendants and the Court did not issue directions, as sought, to the Defendants as they were outside the territorial reach of the Court. Tata was unable to secure an injunction restraining the Defendants situated in the U.K. and the U.S., from using the trade mark “TATA coin/$TATA” as the Court did not find any such intent to target the Indian market on the part of the foreign Defendants. However, this was a prima facie view which was taken by the Court, and Tata might still have a shot at a favorable outcome post the trial, if they are able to delineate facts showcasing the Defendant’s intent to target the Indian customers.

[i] http://164.100.69.66/jupload/dhc/CHS/judgement/26-10-2021/CHS26102021SC3162021_182724.pdf

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Territorial Jurisdiction of the Delhi High Court in Trademark Infringement Cases

 

C.A.R.T- Can Acronyms be Registered as Trademarks?

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By Ananyaa Banerjee and Diksha Singh

Acronyms Trademarks- An acronym is an abbreviation constructed using an aggregation of the initial letters or syllables (or combination thereof) of a lengthier name or phrase. They are easier to remember and communicate and are therefore more effective in increasing the reach and value of a brand. For example, the acronyms BCCI for ‘The Board of Control for Cricket in India’, or BMW for ‘Bayerische Motoren Werke’ are well-known and popular due to them being easier to remember than the full form names.

Well-known acronyms have also been granted protection by the Indian courts. For example, in VIT University v Bagaria Education Trust & Ors[1], the Hon’ble Madras High Court held that since the Plaintiff, Vellore Institute of Technology had been using the acronym ‘VIT’ since 2001, it had become well-known, and the Defendant cannot use the mark ‘VIT’ as it would cause great confusion in the minds of the general public.

Further, in a recent ruling of UFO Contemporary INC v Creative Kids Wear (India) Pvt Ltd, a clothing line’s former licensee was restrained from use of the acronym ‘UFO’ which stands for Under Fourteen Only.[2] The Plaintiff, UFO Contemporary INC, had registered the mark ‘UFO’ in India and had been using it since 1982 for its clothing line. The Defendant, Creative Kids Wear (India) Pvt Ltd, had been granted license by the Plaintiff for use of the mark ‘UFO’ for domestic sales, even though full ownership of the mark had not been given to them. Despite the same, the Defendant had proceeded to apply for the mark ‘UFO’ in 2019. The Hon’ble Delhi High Court ruled that the Defendant’s application for the acronym ‘UFO’ was malafide and an attempt to encash upon the goodwill and reputation of the Plaintiff and its well-known mark ‘UFO’, and therefore, passed an injunction against the Defendant.

Protection given to Acronyms and their scope

In order for an individual or an entity to claim statutory rights in an acronym under the Trade Marks Act, 1999, firstly, either the full form of the acronym (original name/phrase) has to be registered as a trademark, or at least be eligible for trademark protection, and secondly, the acronym itself has to be registered as a trademark under the Act. It is important to note that registration of the ‘original name/phrase’ does not automatically include the registration of its acronym under the Trade Marks Act, 1999. However, one possible way to enforce rights in an acronym even if it is not registered per se, is by proving that the acronym has acquired sufficient goodwill and reputation to the extent that members of the public and trade recognize it as the exclusive source of goods/services being provided thereunder. For example, in a foreign case, the acronym ‘NKJV’ which stood for ‘New King James Version’ was granted registration as the applicant was able to prove that it had acquired distinctiveness[3]. Similarly, in India, the acronym ‘KSRTC’ in itself may not be distinctive, however, it has acquired distinctiveness in Kerala and Karnataka for Kerala State Road Transport Corporation and Karnataka State Road Transport Corporation, respectively, and co-exist in both the states.[4]

Generally, while considering whether an acronym is generic or not, the meaning of the acronym itself is also taken into account i.e., if the underlying words are not distinctive whereas the acronym is, then it will not be considered generic and would qualify for protection under the Trade Marks Act, 1999. As per McCarthy on Trade Marks and Unfair Competition (Third Edn Vol. 2), if the acronym is not recognizable as that original generic term, then the acronym is like a fanciful mark, and protectable. However, in some cases, contrary view has been taken wherein it has been observed that acronyms may also be considered descriptive if the resulting word or the underlying words are descriptive. For example, the acronym ‘CV’ for ‘Continuous Vision’ was denied registration as it was descriptive of the function of the goods i.e., trifocal lenses. Therefore, the law appears unsettled on this point.

Once an acronym is registered, the registered proprietor’s chances of success increase manifold in being able to take action against similar/identical acronyms in respect of similar/identical goods or services. However, if the other acronym varies even in one letter, then the chances of success drop as the overall impression of the acronyms and what they stand for will be taken into account. For example, in the case of International Student Identity Card Association & Anr v Abhishek Tiwari & Ors[5], the Plaintiff’s acronym ISIC for ‘International Student Identity Card Association’ and Defendant’s acronym ISID for ‘Indian Student Identity Card’ were in question. The court held “that the letters ID are descriptive of the product — identity cards. Prima facie, the plaintiffs cannot by virtue of registration of the ISIC Mark claim monopoly in the use of the initial letters of the words that are descriptive of the business.” The court further held that Defendant’s mark ‘ISID’ is different and does not violate Plaintiff’s rights. However, a different view was taken in the case of Ram Krishan & Sons v ILM Consulting,[6] wherein the court found Defendant’s acronym ILM to be deceptively similar to Plaintiff’s acronym IILM (standing for ‘Institute for Integrated Learning in Management’) and restrained the Defendant from using it.

Acronyms Trademarks- Possible Issue & Solution

If two entities share acronyms, but different full names, which entity would have valid claim over the acronym? Based on the divergent court opinions as well as lack of specific legislative clarity on this issue, at the moment the claim stands at the court’s interpretation of the facts and circumstances of every unique case. While it is just that an entity with a prior valid claim ought to be given priority, it is not inconceivable that two entities may have equally valid claims, and may be permitted to co-exist (as seen in the KSRTC case), especially if they apply to different contexts.

Read: Abbreviations as Trademarks- Kerala v. Karnataka! #KSRTC

In the case of Science Olympiad Foundation v Shivalik Olympiad Foundation,[7] it was held that Defendant’s mark SOF for the wording Shivalik Olympiad Foundation was identical to Plaintiff’s mark SOF for the wording Science Olympiad Foundation. The Plaintiff had been using the acronym ‘SOF’ since a very long time and had priority of use therefore, court ruled in favor of the Plaintiff.

Conclusion

Despite the fact that the law on registerability of acronyms is not well-defined and is ambiguous, courts both Indian and foreign have given several rulings favoring protection of acronyms as trade marks, and have also held the view that registration of an acronym plays a beneficial role as it is easier to recollect, and can help in identifying the brand effortlessly. However, more clarity on the subject by way of specific and particular legislation in this area may assist or garner acronyms better protection as compared to the present position.

[1][1] O.A.No.576 of 2012 (Madras High Court)

[2] CS (COMM) 375/2020 (Delhi High Court)

[3] In re Thomas Nelson, Inc 97 USPQ2d 1712, 2011, WL 481341 (TTAB 2011)

[4] https://ssrana.in/articles/abbreviations-trademarks-kerala-karnataka-ksrtc/

[5] (2017) SCC Online Del  7301

[6] CS (COMM) 136/2016 (Delhi High Court)

[7] CS(OS) No. 2590/2015 (Delhi High Court)

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Titiksha Sinha, Associate at S.S. Rana & Co. has assisted in the research of this article.

 

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