Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

As patent attorneys, adhering to deadlines is pivotal for the success of a patent application. In India, two critical deadlines to bear in mind while prosecuting patent applications are those for filing a request for examination and responding to the first examination report.

Charter 4 Corp, the plaintiff, claimed to have adopted the 'Supreme' mark back in 1994 in the United States and had been using it in India since 2006, gaining popularity among Indian customers. The company boasted over 700 global registrations for the mark 'Supreme', and they had also filed applications for their 'Supreme' red-box device mark in India.

Kamdhenu Limited filed an appeal against a decision of the Registrar of Trademarks, who had dismissed their application to have their trademark 'KAMDHENU' included in the "List of Well-Known Trademarks." The Registrar's rejection was the absence of an affidavit along with the supporting evidence to establish the well-known status.

Practitioners have long wished for a separate IP division in High Courts. With the abolishment of the Intellectual Property Appellate Board in 2021, cases previously filed with or pending before the IPAB have been transferred to the High Courts. It then became imperative to establish a separate IP division in the High Courts. Following this objective, the High Court of Madras established an Intellectual Property committee to devise the necessary procedures. Subsequently, based on the…

The Controller General of Patents, Designs & Trade Marks (CGPDTM) has taken recent initiatives to clear backlogs in trademark prosecution and opposition matters, and a public notice was issued on February 6, 2023 encapsulating a gargantuan list of trademark application numbers that are said to pertain those applications that could be “deemed to be abandoned” as per the provisions of law. The said list was published along with Trademark Journal No: 2090, and the Office has been simultaneously…

In a trademark infringement suit filed by Hermes International, one of the prayers by HERMES is that the mark of Hermes is declared as a well-known trademark within the meaning of Section 2(1)(zg) of The Trade Marks Act, 1999.

In a welcome move, the Indian Trademark Office (TMO) issued a public notice via Trade Marks Journal No. 2090 dated February 6, 2022, whereby the general public & IP practitioners were informed that 1. Applications for which a response to the examination report has not been filed within the prescribed time & 2. Applications that have received oppositions and for which the TMO has properly served the notice of opposition to the applicant but where no counter-statement has been filed with the TMO

Indian business owners are constantly worried about the Ease of doing business, but yet they were not aware of one ranking where the country was in the top 10 places once. It is the Ease of doing Piracy. Twenty years back computer and computing services were very rare thing that was used only for exceptional activities, but now it has become a necessity for everything. When computers started to become the norm for every business in the first decade of the 21st century, businesses had to incur a…

Microsoft discovered that the defendants were illegally using its software products, including Microsoft Windows, Microsoft Office, and Windows Server. Upon investigation, it was found that the defendants had 130 computer systems, most of which had Microsoft's software installed on them, but the licenses held by the defendants did not match their usage. This indicated that the defendants were engaging in the unlicensed use of Microsoft's software products. Despite repeated requests from…

In a welcome move the Controller General of Patents, Designs & Trade Marks by public notice dated December 16, 2022 eliminated the mandatory requirement of filing physical copies of the forms for filing a design application in India. As a result, applicants are encouraged to use the online portal to file forms and documents related to design registration. These documents should be filed online and must be digitally signed in accordance with the Information Technology Act, 2000.