Sound Board

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

The doctrine of prosecution history estoppel is popularly associated with patent litigation. In the context of patents, the doctrine constitutes a legal defence to an assertion of infringement whereby the Examiner determines the scope of infringement by examining if there is an overlap between the elements of the impugned products/process in light of the claims of patent, rather than a literal infringement of the same. Although not as apparent as in patent prosecution, prosecution history…

Branding is important because not only does it create a memorable impression among the public, but it allows consumers to know what to expect from your company. It is a way of distinguishing your brand from the competitors. One of the most essential factors of starting a new business is choosing the right name for it. Get that wrong, and it is no exaggeration to say that your brand will sink even before it has a chance.

Not very long ago, the Indian Designs Office notified the Designs (Amendment) Rules, 2021 and now the Copyright Office (hereinafter referred to as ‘CRO’) too has notified the Copyright (Amendment) Rules, 2021. The Copyright Rules, 2013 was last amended in the year 2016 subsequent to which, it was done recently.

However, the question remains - why has an option for renewal not been provided? Granted, it would ensure fewer instances where the right would have lapsed, and the protection would continue unbeknownst to the authorities (although the right holder must inform customs authority when his intellectual property ceases to be valid or if he ceases to be the owner of such intellectual property right). In this respect, the lack of an option for renewal enables authorities to properly examine the…

The Australian government recently passed legislation that has the potential to completely rework the way in which news is disseminated on the internet. The Australian News Media Bargaining Code, passed by the Australian legislature in February 2021, seeks to mandate that Big Tech companies like Google and Facebook pay news producers in order to use their content. The timing of the move appears in line with developments around the world, with calls to regulate Big Techs seen all across the…

In a major development, the Government of the Islamic Republic of Pakistan acceded to the Madrid Protocol on February 24, 2021, making it the 108th member of the Madrid system which now covers 124 countries in total. Pakistan also becomes the fourth SAARC country to join the Madrid Protocol after India, Bhutan, and Afghanistan.

The recent spat between BigBasket and Daily Basket borders on this blur. BigBasket, the largest online grocery store in India slapped a Cease-and-Desist notice on Daily Basket, a young startup, alleging infringement of their trademark. They claimed that the mere mention or reference of a name containing “basket” in word or logo form for any E-commerce business and related products would confuse the relevant class of consumers into assuming association with BigBasket.

The Supreme Court indicated that it was proposing to lift the suo moto extension of the limitation period granted by it on account of the COVID-19 pandemic, with effect from March 15 this year. Following this, on 8th March 2021, the Court passed an order ending the extension of the limitation period.

The much-awaited amendment to the Indian Patents (Amendment) Rules, 2020, came into force on 19 October 2020. The amendment relates to the Indian Patent Office's requirement of annual filing of the statement of working of patents by the Patentee/Licensee.

The Indian Government has recently notified an amendment to the Designs Rules, 2001. The Designs (Amendment) Rules, 2021 (“the Amendment Rules”), were notified in the Official Gazette on January 25, 2021, and are deemed to be in effect from that date.