IP Law Newsletter Volume XI, Issue 09

 

 

 

 

 

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Role of Standard Setting Organisation (SSO) in Standard Essential Patents

Imagine you open a shop for selling lawn tennis rackets, where the handle is patented by a particular company and the string required in the racket is patented by another. So, in order to have a complete racket, you will need a license from both these companies. Now suppose one of them refuses to grant you the license for undisclosed reasons and the other is offering a price too high. Well, you’ll have no option except to not open a shop for selling lawn tennis rackets. But what happens if the same issue comes up with something that we all use in our day to day life!>
In the case of Microsoft Corp. v. Motorola Mobility, Inc^[1] the uphill task of defining Standard Essential Patents (SEP) was attempted by the court where they said that, a given patent is essential to a standard if use of the standard requires infringement of the patent, even if acceptable alternatives of that patent could have been written into the standard. This simply means that to reach a specific standard in a product there is a requirement of a certain element within the product which is patented by someone. And to decide what the standard is, there are standard setting organizations (SSO), which see to it that the licensing of those patents happen at fair, reasonable and non-discriminatory (FRAND) prices.>
First let us try to understand the status of SEPs in Indian law from the perspective of last year’s Delhi High Court judgment in the case of
Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors.^[2] In this particular case, the patent was on a channel decoding technology used for video playback function in a DVD player that the plaintiff’s claimed was used by the defendants without taking a license from them. The court gave the order in favor of the plaintiff, but certain issues came up which are yet to be answered. Here we will only be focusing on the part of the case that deals with SEP.>
There are two points to begin with. Firstly, the court accepted the standard presented by the plaintiff even though it was not recognized in India, simply on the basis that they could map the patent to the standards. Secondly, the mapping plaintiffs showed was based on their US and EU patents’ mapping to some relevant standard, despite the fact that their patent in India, USA and EU were different. This is something that raised criticism from several legal experts. What made the court accept the two major arguments regarding the standard that the plaintiff presented? It is because there is an unsaid tendency to reside on foreign certification, or as one can relate to the typical Indian mindset, that what is accepted in a foreign country might just be correct. Now the question arises whether Indian SSOs, be it governmental, semi-governmental or private, should reside upon foreign SSOs? A closer look at some of the SSOs will extensively elaborate over this idea. >
So, what happens in this case is that all the competitors in a market sit together and decide what common standard they are going to use, and it should be the same for everyone. Taking an example of the telecom industry, the Code Division Multiple Access (CDMA) and Global System for Mobile Communication (GSM) are two basic technologies in the industry. Now the products they run are electronic chips, keypad, microphone, display, software etc. which are further part of a laptop such as display, keyboard, mouse, camera, Bluetooth, USB port, motherboard, battery, operating system and other application software etc. Enterprises manufacturing telecom products have to develop interoperable products so that finally all products can be assembled together, thereby ensuring vertical and horizontal compatibility. Both technology owners and manufacturers are stakeholders in the standard setting process. A standard is formulated after clearing objections of major stakeholders, and the commercialization takes place accordingly.
^[3]
A major issue that arises with standards is that there is no hierarchy on which one should be prioritized over the other, an issue that was seen in the Phillips case. Is it mandatory to have a standard certificate from an Indian SSO or not, and if not then in what circumstances? These are questions that the court was silent upon. Further, several countries like Germany or USA, have adopted specific models to determine standards in a specific industry. Whereas despite endorsing pro-competitive benefits of standards by S Raghavan committee in their report on Enacting Competition Legislation, there was no adoption of a specific policy in India.^[4] This is why both public and private standard models seem to be adopted depending upon the convenience, which has raised several competition law issues that in most cases collide with the patent law.

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[1] MICROSOFT CORP. V. MOTOROLA, INC., MOTOROLA MOBILITY, INC., AND GEN. INSTRUMENT CORP. 104 U.S.P.Q.2D 200
[2]CS(COMM) 436/2017
[3]Teece & Sherry, 2002-2003
[4]Paragraph 4.6 of Raghavan Committee Report, available at www.mc.gov.in

 

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Chur Chur Naan on Trial: Praveen Kumar Jain V. Rajan Seth & Ors

In the streets of Delhi that are brimming with diverse street food vendors from chandni chowk to jama masjid, from chole bhature to gol gappas. One of the famous eateries claims Intellectual Property Rights infringement of the city’s favorite ‘Chur Chur Naan’. The Delhi High Court tries the question as to whether the phrase ‘Chur Chur Naan’ can be protected under the Intellectual Property Rights regime.

FACTS:

• The present case has been filed by Mr. Praveen Kumar Jain (hereinafter referred to as “the Plaintiff), against Mr. Rajan Seth & Ors. (hereinafter referred to as “the Defendant), in the High Court of Delhi (hereinafter referred to as “the Court”).
• The present case involves two outlets based in Paharganj which sell Naan and other food items. The Plaintiff claims exclusive rights in the expression `Chur Chur Naan’ against the Defendant who uses a similar expression for its outlet. The question is whether there can be any monopoly in the expression ‘CHUR CHUR NAAN’ or ‘AMRITSARI CHUR CHUR NAAN’.
• The Plaintiff has filed the present suit for permanent injunction restraining infringement of trade mark, copyright passing off, rendition of accounts etc. The trademarks over which the Plaintiff seeks injunction are ‘CHUR CHUR NAAN’, ‘AMRITSARI CHUR CHUR NAAN’ and ‘PAHARGANJ KE MASHOOR AMRITSARI NAAN’.

CONTENTIONS OF THE PLAINTIFF

• The Plaintiff contended that it has applied for/ obtained registration of various trademarks including ‘CHUR CHUR NAAN’ and derivatives thereof. Two marks applied for by the Plaintiff namely ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ are registered.
• The Plaintiff further contended that the trademarks of the Plaintiff being registered, the Plaintiff enjoys exclusive rights under Sections 28 and 29 of the Trade Marks Act, 1999 (‘Act’).
• he Plaintiff while relying upon several judgments namely in;Automatic Electric Limited v. R.K. Dhawan & Anr. 77(1999) DLT 292; (hereinafter referred to as, “Automatic Electric”) and
  ;The Indian Hotels Company Ltd and Ors. v. Jiva Institute of Vedic Science and Culture 2008 (37); PTC 468 (Del) (hereinafter referred to as, “Jiva Institute”), contended that since Defendants themselves having applied for the registration of the mark ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN‟, they are estopped from claiming that the expression ‘CHUR CHUR NAAN‟ is generic and descriptive.
• Plaintiff contended that it enjoys enormous reputation and this is evident from the fact that the Plaintiff has been covered on television channels as Paharganj Ke Mashoor Chur Chur Naan and the said fact shows that the Plaintiff is entitled to an injunction owing to the extensive goodwill which it enjoys.
• The Plaintiff further submitted that various marks such as ‘EENADU’ and ‘PAKWAN’ which are also descriptive have already been protected by Courts.
• In lieu of the above the Plaintiff sought an injunction against the Defendant Nos.1 and 2 from using the name ‘PAHARGANJ KE CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’.

CONTENTIONS OF THE DEFENDANT

• The Defendant submited that there are a large number of outlets which use the name ‘CHUR CHUR NAAN‟. It was further submitted that the trademarks of the Plaintiff are liable to be rectified as they lack basic distinctiveness.
• The Defendant also contended that ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN‟ is completely descriptive, no monopoly can be granted to such descriptive/generic expressions.

COURT’S ANALYSIS

• The Court while recognizing that the Plaintiff did have registration for the mark ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ and in lieu of the same enjoys protection under Section 28 of the Trademark Act, however these rights are subject to some exceptions carved out in the Act. . Under section 35 of the Act if there is bona fide description of the character or the quality of the goods or services, there cannot be infringement of a registered trademark. Section 35 reads as under: –
  “35. Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.”
• The Court also opined that the expressions such as ‘CHUR CHUR NAAN’ cannot obtain monopoly and stated,
  “Expressions such as ‘NAAN, CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN’ are similar to expressions such as Amritsari Kulcha, Malabar Parantha, Hyderabadi Biryani, Kashmiri Dum Aloo, Chettinad Chicken, Murthal ke Paranthe, Mangalore idli, etc., and such other food products which are used in common parlance by the general public. The word ‘CHUR CHUR’ merely means `crushed’ and `Chur Chur Naan’ means `Crushed Naan’ and nothing more. It is incapable of acquiring trade mark signification. ‘CHUR CHUR’ is a terminology which is used in normal conversational language and there cannot be any monopoly in respect of an expression such as „CHUR CHUR’.”
• The Court recognized the fact that various third party websites such as zomato.com, justdial.com, eattreat.in, that various third parties are using ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ with various prefixes and suffixes. The Defendants have also shown on record that it is the common practice in the trade for food outlets to use names such ‘Chandni Chowk Ke Mashoor, Dilli Ke Mashoor, Delhi Walo Ki Mashoor’ etc., The same are very common to the trade and are used by a large number of parties as is evident from the entries from third party websites which are placed on record. Thus, there cannot be any monopoly on the terms ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN as the same are generic.
• The question pertaining to the judgement cited by the Plaintiff, was answered by the Court by saying that the same could be easily differentiated on the basis of the facts of both the cases, and said,
  “In sofar as the judgements in Jiva Institute (supra) and Automatic Electric (supra) are concerned, the same are distinguishable on facts.. Moreover, both in Jiva Institute (supra) and Automatic Electric (supra) the argument of the Defendants therein was that the marks were descriptive. In the present case, the issue is that the expressions are completely generic. If registrations are wrongly granted or applied for in respect of completely generic expressions, the Court cannot ignore the generic nature of the marks and confer monopoly on the same in favour of any party.”
  Hence it was held the support of the above mentioned cases could not be taken in the present case and the ‘CHUR CHUR NAAN’ being a generic term cannot be granted protection.
• The Court also noted that most of the entities are distinguishing themselves from each other by using prefixes which are distinctive in nature for example „Sanjay Chur Chur Naan, Vijay Chur Chur Naan, N.S. Chur Chur Naan, Chawla de Mashoor Chur Chur Naan‟ etc. In view of the same Court directed the Defendants to distinguish their marks from that of the Plaintiff that was ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN’ in order to avoid consumer deception or confusion.

CONCLUSION

In light of the discussion above we can conclude that various descriptive terms such as ‘CHUR CHUR NAAN’ which essentially describe the nature of the product and other food item names that are widely used by various eateries throughout the country cannot enjoy a monopoly regarding the same. However the names should be distinct to the extent that a consumer can differentiate between different vendors, so as to not case customer deception and confusion.

 

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RTM to send mandatory notice before removing a Trademark: Delhi High Court

Recently, in an order passed by the Delhi High Court in the case of Vijay Kumar Salwani vs. Union of India, Hon’ble Justice JR Midha held that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.

BRIEF FACTS

• The Petitioner in this case is Vijay Kumar Salwani trading as M/s Modern Namkeen Bhandar.

• The Petitioner challenged the removal of its registered Trade Mark without issuance of a mandatory notice under Section 25(3) of the Trade Marks Act, 1999 and sought for his mark to be reinstated, and the said removal to be set aside.
• The Trade Marks Registry submitted that a public notice dated 24th September, 2010 had been issued inviting petitions regarding marks that had been removed in the preceding months. Petitioners mark was presumed to have been abandoned as no representation from his side was received, the mark was removed.
• The Registry further submitted that it had issued a notice under Section 25(3) to the Petitioner, but it did not have proof of serving such notice.

PETITIONER’S CONTENTIONS

• The Petitioner, Vijay Kumar Salwani, challenged the removal of his registered trademark from the Register of Trade Mark without having been issued a mandatory notice under Section 25(3) of the Trade Marks Act, 1999. The Petitioner’s mark was removed on the grounds of non-renewal, however he had not received any notice under Section 25(3) which is a mandatory requirement.

RESPONDANT’S CONTENTION

• Learned standing counsel for Central Government, Mr. Akshay Makhija, submitted that the notice under Section 25(3) of the Trade Marks Act, 1999 was issued by the department but the record of the notice is not available.

COURTS ANALYSIS

• The Court was of the view that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.
• The Court further stated that the removal of the registered Trade Mark by the Trade Mark Registry is liable to be set aside and the department is at liberty to issue fresh notice under Section 25(3) of the Trade Marks Act, 1999.
• In all cases where the Trade Marks Registry has removed registered trade mark and the record of mandatory notice under Section 25(3) of the Trade Marks Act is not available, , the Registry was ordered to consider the application for renewal as and when received without raising any technical objection.

RELEVANCE OF SECTION 25(3) OF THE TRADE MARKS ACT, 1999

• Section 25(3) is as follows:
  
  (3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar
  shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:
  
  Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section.

• The Registry is mandated to send a notice as per Section 25(3) of the Act with respect to the date of expiry and conditions for renewal to the registered proprietor of a registered trademark when the said mark is approaching the end of 10 years period. The same is prescribed by Section 25(3) of the Act, as well as Rule 58 of the Rules. The significance of the section is emphasizes by Rule 58, of the Trade Mark Rules, 2017 wherein it states that the Registrar shall send a notice at the address of service
• Section 25(3) is mandatory in nature, and the same has been iterated in various judgements over the years. The Delhi High Court in Union of India v. Malhotra Book Depot 2013 (54) PTC 165 (Del) (DB) delivered a judgement on the same lines streamlining the focus on the mandatory nature of the said section.
• The Vijay Kumar Salwani v. UOI order reiterates and reinstates the binding and obligatory nature of Section 25(3) and clarifies that a “public notice” does not qualify as a statutory notice as is to be served by the registry compulsorily.

 

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Getting Ready to Combat With Data Breach: Kal, Aaj Aur Kal

The onset of digitalization by the proliferation of internet has permitted people to explore the cyber-space for meeting various requirements of day to day life. The amount of data that is shared across internet today is beyond imagination. From ordering a cab to ordering food to booking tickets for travel to shopping to communicating with friends to making new relationships everything can happen with just a tap of finger and sharing of information.

However, one storm that is threatening the digital space is data breach. The World Economic Forum 2019 global risk report has named cyber-attacks and data breaches as the fourth and fifth most serious risks facing the world today. It’s the second year in a row in which these threats have been present in the top five list of risks. Past few years can easily be considered as the year of data breaches as many global websites complained of data breach. In the era of digitization data breach is happening at such a level, that keeping a count of such instances is almost impossible. Therefore, it is important to know the current safeguards against data breach and also what does future holds to fill in the gaps of current safeguards.

Current Status of Data Protection: In Case of Data Breach

Section 43 A of The Information Technology Act, 2008, inserted vide Information Technology Amendment Act, 2008, is the current recourse we have in case of a data breach.

Currently, this is the only section that deals with Data Protection in detail. The Section provides for imposition of liability on a body corporate as further defined in the Section, who is involved in dealing with sensitive personal data, in case there is a breach of the same due to lack of implementation of preventive measure on its behalf. A maximum liability of Rs. 5 Crore has been mentioned in the Section.
The Future of Data Protection: Steps to be Taken to Deal with Data Breach under Draft Personal Data Protection Bill, 2019

With the intent of being a jurisdiction having a comprehensive Data Protection Law to dedicatedly deal with the instances of data breach, the Draft Personal Data Protection Bill, 2018 was released in 2018.

In case of a data breach the first question that comes to mind is that, who will be accountable for such a breach. The answer to this question has been glimpsed in Section 11 of the Draft Personal Data Protection Bill, 2018 (hereinafter referred to as “the Bill”), the Section provides,

“11. Accountability. —

1.  The data fiduciary shall be responsible for complying with all obligations set out in this Act in respect of any processing undertaken by it or on its behalf.
   
2. The data fiduciary should be able to demonstrate that any processing undertaken by it or on its behalf is in accordance with the provisions of this Act.”
   

Thus, if there is any contravention to the provisions of this Bill, then the Data Fiduciary will be held liable. The duties corresponding to this have been mentioned throughout the various provisions of the Bill, however Section 31 (1) provides that it will be the duty of the Data Fiduciary to establish safeguard measures to for:

1. use of methods such as de-identification and encryption;

2.  steps necessary to protect the integrity of personal data; and

3. steps necessary to prevent misuse, unauthorized access to, modification, disclosure or destruction of personal data.

Section 32 of the Draft Personal Data Protection Bill, 2018 provides the steps that would be mandatory for the Data Fiduciary and the Data Processors to take, in case a data breach takes place. A closer study of the Section throws light on the fact that a great duty will be imposed upon the Data Fiduciary, their liability of the duty can be basically divided into three folds,

1. First and foremost duty of the Data Fiduciary, in case of a personal data breach, is to inform the Authority as specified in the Bill, this notification to the Authority must contain the nature of the data breach, number of Data Principals affected, possible consequences of the breach and necessary remedial measures to be taken. This notification should be made to the Authority as soon as possible, however in the case where it is not practicable to provide the information instantly, such information should be furnished to the Authority after the compilation is complete and without any unnecessary delay.

2. The second duty that has been imposed upon the Data Fiduciary is that, they must inform the Data Principals of the data breach, if the same has been ordered by the Authority after their assessment of the breach.

3. The third fold of their duty is to take remedial measure that need to be implemented on their behalf to mitigate the damages that have occurred due to the data breach, and to take measure to prevent the same from happening in the future.

Suggestive Measure that can be Employed by Companies in Case of Data Breach
Some measure that can be taken by a company in case a data breach occurs are as follows:

1. The first and foremost step that should be taken is to determine the extent of the data breach. This would entail an introspective study of the data of the firm to enlist what all data has been stolen, what was the nature of this data and how sensitive was the information that was stolen.

2. The company must inform the relevant authorities as soon as practicable about the said breach, a delay in reporting the breach can be very injurious to the company and may entail an increased liability.

3.  In cases where it is applicable or required, the affected persons, i.e., the people whose data has been breached must also be informed.

4. In case the company stores information about foreign citizens, it is crucial to consider the domestic laws of those citizens if their data has been breached.

5.  The next to be taken by the company should be to conduct a security audit, to flush out what was the cause of such a security breach, and what are the lacks in the current security regime of the company which have facilitated such an attack, this would also include identifying and implementing any remedial measure that need to be taken by the company to reduce the damage.

6.  The final step should be updating the security of the company, to address all the bugs and to have a framework that ensure such an attack doesn’t happen again. It should be noted that the security framework of a company should be regularly monitored and updated so as to prevent any breaches.

Case in point: Facebook data breach
Introduction Recently a data breach that left the whole globe in shock was the Facebook data breach. It was estimated that about 50 Million accounts were affected by the said breach. This was a first of its kind attack in the 14 years history of Facebook, where the attackers were able to have access to the complete accounts of the users, they could see everything that was present in the accounts of the user, including all the third party applications that were linked to Facebook, such as Instagram. Spotify, Tinder, etc. However, it has not been ascertained whether the attackers did or did not have access to the personal messages of the users.
Series of events
The data breach of Facebook occurred when the “View as” feature of the Facebook, which enables a user to see this profile as it would appear to another user viewing it, was hijacked. The upload video option on Facebook that was introduced to enable easy uploading of birthday videos was converted to “view as” option. When this view as option was clicked, it generated an access token, which was used to gain access to the accounts of the users.
As soon as this bug was detected, steps were taken by Facebook, but till then it was too late. Around 90 million people were logged out of their accounts in order to mitigate the damage. 50 million were the ones who were affected and 40 million were the ones who were anticipated to be affected.
The hackers that were involved in the said data breach have not yet been identified.
Legal implications
The widespread network of Facebook has attracted liability from various jurisdiction. A probe has been initiated by the European Union Authorities, into the said data breach. It is being anticipated that there is a possibility that Facebook might be face a fine of 1.63 Billion Euros.
Case in point: Instagram Data Leak
Nearly 49 Million Instagram accounts were affected by a data leak that took place in 2019, a lot of Instagram influencers, such as food bloggers, lifestyle bloggers were affected by the same. Various information of the users such as their biodata, profile picture, number of followers, location by city and country, contact information such as e-mail i.ds and phone numbers, were leaked. The said information was available on Amazon Web Service, without any passwords.
The investigation led to a Mumbai based company called Chtrbox, which provides the information as to how much a person should be paid to advertise on their Instagram page, based on their number of followers, engagement, reach, likes and the shares they have. Subsequent to these events, Chtrbox took their database offline.
Investigation is still being conducted on the said data leak, as many users who had never been in contact with Chatterbox also alleged that their data had been leaked.