26 October, 2019
Recent Judgements
The Hon’ble High Court passed an order dated 27th August, 2019 pertaining to trademark infringement of the mark “VENUS”, wherein the Hon’ble Court listed the requirements in terms of documents that has to be submitted to the Court by a litigant to not only substantiate but also prove its rights when it comes to a registered trademark and protection of its statutory rights. In the present case the Court allowed the belated filing of the Respondent/ Plaintiff’s documents with an order for costs also passed against them…..
The Hon’ble Court observed “In matters involving trademark infringement, there is no doubt that the trademark registration itself is a matter of public record, and can be accessed by visiting the Trademark Registry’s website itself. However, in order for the Court to consider the registration, documentary evidence in the form of either the trademark registration along with the journal extracts or the Legal Proceeding Certificate ought to be placed on record.
Even though the documents are there on record, no initiative was taken by the Plaintiff, to obtain certified copies of the said public record in order to rely on the same in the proceedings. Therefore, the defendant opposed to bring the Legal Proceeding Certificate on record.
The Hon’ble Court directed the Plaintiff to pay a cost of Rs. 50,000 to the Defendant and allowed to bring the Legal Proceeding Certificate on record. The Hon’ble Court also gave a list of documents that has to filed along with the plaint –
- Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.
- In case LPC is not available – a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Moreover, the party ought to file the LPC prior to the commencement of the trial in cases of disputed trade-marks.
- Usually during the admission/denial, parties are not permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online
West Bengal and Odisha, both wanted to own the popular sweet, rasogula under the Geographical Indication (GI). A GI tag is beneficial as it identifies the good with a country, region or locality of that country. Once the GI is registered, the proprietor has a right to file its infringement.
West Bengal State Food Processing and Horticulture Development Corporation Limited got the GI registered as ‘Banglar Rasogolla’ in November 2017, thus winning the dormant fight between the two states.
Section 1 (3)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter as the “Act”), states that “geographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.”
According to West Bengal, the sweet was originally from Bengal as it is made of ‘Chana’ which is fragmented milk or spoilt milk. Moreover, according to a report by historian Haripada Bhowmik, channa cannot be given to Lord Jagannath as it will be considered sacrilegious. However, the state of Odisha claims that even though Rasagulla is not mentioned in the Chhappan Bhog, it is served to the Lord Jagannath on Niladri Bije (last day of Yath Ratra) is provided in Niladri Mahoday, an age-old scripture.
Even though Bengal got the GI tag on November 2017 for “Banglar Rasogolla”, Odisha received the GI tag for “Odisha Rasagola” on 23.02.2018. The fight for the GI tag turned out to be a win- win for both the states as both of them received a GI for its own type of rasagulla. Moreover, if we take away the respective state name from the tag, then rasagulla has no GI. The GI has been given as Banglar Rosogolla and Odisha Rasagola not to rasagulla in general.
Policy Updates
1.Leaving and serving documents – Rule 6 provides for a process that has to be followed when an application, notice or other document authorized or required to be filed, left, made or given at the patent office. Rule 6(1A) was substituted, whereby it states that the Patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated and if any document is asked to be submitted in original then it has to be done in fifteen days or else it will be deemed as not filed.
2. Fee – Rule 7 provides for the fees payable as per Section 142 of the Act in respect to grant of patents and applications. The second proviso of Rule 7(1) was substituted whereby in the cases where fee has been specified for a small entity, or startup, every document, Form-28 has to be accompanied with the fee.
3. Expedited examination of applications– Rule 24 C provides that an applicant can file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B in specified grounds. As per the amended Rules 2019, the following grounds for an applicant to file the request was substituted
(a) applicant is a startup; or
(b) applicant is a small entity; or
(c) applicant is a natural person and where there are joint applicants all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or
(d) applicant is a department of the Government; or
(e) applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
(f) applicant is a Government company as per section 2 (45) of the Companies Act, 2013 or
(g) applicant is an institution wholly or substantially financed by the Government;
(h) application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government. However, public comments have to be invited before any such notification, or
(i) applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office. The application has to be filed as per the provisions given under this act.
4. Schedule – The First Schedule provides the fee payable as per Rule 7 of the Patent Amendment Rules, 2019. As per the amended Rules, Rule 48 A and Rule 49 A are newly inserted. Rule 48A deal with Transmittal fee for International application and Rule 49 A deals with preparation of certified copy for of priority document and e-transmission through WIPO DAS. In the Second Schedule, the amended Rules inserted various grounds applicable for FORM 18 A as per Section 11 B of the Patent Act, 1970 and Rule 24 C of the Patent Amendment Rules, 2019.
For further information, please contact:
Manoj Kumar, Partner, Hammurabi & Solomon
Manoj.kumar@hammurabisolomon.com
