LETTER FROM INDIA

INTELLECTUAL PROPERTY

CORPORATE LAW

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Issue 17 January, 2005

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The New Year has brought glad tidings. Product patents for pharmaceuticals, chemicals and food are now a reality. The top level country domain '.in' is available to the general public. A closer look at these and some other developments.

To meet India's obligations under the TRIPS Agreement, the Patents (Amendment) Ordinance, 2004, effective January 1, 2005, has been promulgated. The changes introduced are significant, particularly in the context of the pharmaceutical industry. Key highlights are elucidated below:

• Product patents have been introduced in all fields of technology. Accordingly, inventions in areas such as chemicals, food and pharmaceuticals hitherto entitled to process patents would now become eligible for product patent protection.
• The provision prohibiting the patentability of inventions relating to computer programmes per se has been modified. What is now prohibited is patent protection of computer programmes per se other than its technical application to industry or a combination with hardware.
• The facility relating to Exclusive Marketing Rights ('EMRs') and a transitional provision for an automatic and priority examination process for black box applications linked to EMR applications has been discontinued.
• Pre-grant opposition has been replaced with post-grant opposition procedure. The opposition period will stretch for one (1) year from the date of publication of grant of the patent. A provision for unilateral representation against pending patent applications is also envisaged.
• A provision for enabling grant of compulsory licenses for export of medicines to countries which have insufficient or lack of manufacturing capacity for meeting public health emergencies has been introduced (in line with the Doha Declaration).
• Enabling a claim for damages in an infringement action retrospectively from the date of publication and not from the date of acceptance of the patent application as was provided earlier. However, in the case of Black-Box applications, damages can be claimed only from the date of grant.
• Introduction of a provision for requesting early publication of an application.
• Request for examination of an application to be made after publication of the application but within thirty six months from the priority date or date of filing of application, whichever is earlier, as opposed to the earlier period of forty eight months from the filing date.
• The time frame for putting an application in order for acceptance subsequent to its first examination has been further shortened to six (6) months, extendible by three (3) months, from the date on which the first statement of objection is issued. The time frame for putting an application in order for grant (which has been examined before January 1, 2005) remains a non-extendible twelve months.
• Provisions relating to 'first filing' in India for an Indian resident with respect to an application relating to any invention have been re-introduced. Substantive increase in official fee in respect of various activities for example, an additional official fee will now be levied in all cases where the pages of specification exceed 30 and the number of claims exceed 10. The requirement of payment of a sealing fee has been dispensed with.

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January 1, 2005, also marked the introduction of a new Domain Name Policy in India. Earlier, the only extensions available to the general public were not-so-short or easy-to-remember extensions like co.in, gen.in, firm.in, etc. and they did not attract too many registrations. Now, with the domain name extension '.IN' in place (previously available to a select few), registrations for 'www.domain.in' are open to companies / individuals both in and outside India without any restrictions. Of course, old appellations like co.in, net.in, org.in, gen.in, firm.in, ind.in., etc. continue to be available, as always.

A further change is that initial registration will now be for a five (5) year period as opposed to a maximum of two (2) years in the past. Also, applications will be processed faster - the intended time frame being twenty-four hours - and the official fee for registering a domain name has been reduced as well. In order to protect the rights of legitimate trade mark proprietors, the period from January 1, 2005 to January 21, 2005, dubbed the 'Sunrise Period', has been provided for owners of registered marks to apply for .IN domain names corresponding to their registrations. Applications may also be made for old extentions like co.in, gen.in, etc. Details on the requirements for registration during the Sunrise Period are available at our website, www.remfry.com. For the general public registrations will open on February 16, 2005.

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On the trade marks front, we have a couple of interesting decisions to report. In the case of Eastman Kodak vs. Ajit Kumar Mehta, the Defendant was restrained from using the Plaintiff's sign 'KODAK EXPRESS Quality Monitoring Services Program' since, the Defendant, in clear violation of the terms and conditions of the agreement with the Plaintiff's, was using non-Kodak products in his business.

The Court was of the view that the Defendant by representing itself as a member of the Plaintiff's Quality Monitoring Services Program while using non-Kodak products was perpetrating fraud on the consuming public and that a prima facie case for grant of an ex-parte ad-interim injunction had been made.

This case once again addressed the basic function of a trade mark which is to indicate trade source and quality of a product. It reinforced the fact that in protecting the interests of a bona fide trade mark proprietor, the larger interest of the consuming public is protected.

The decision in SAP Aktiengesellschaft Systeme, Anwendungen, Produkte in der Datenverarbeitung & Anr. vs. Sandesh Manohar Patang, acknowledges the principle of dilution vis-à-vis well-known marks.

The Court, keeping in mind the statutory and proprietary rights of the Plaintiffs in the trade name and trade mark SAP in India as well as globally, recognized the apparent dishonesty of adoption of the mark SAP by the Defendant in respect of a similar service. It came to the conclusion that apart from the trade and revenue loss, there may be a much more damaging and irreversible effect on the reputation of the Plaintiffs if an ex-parte ad-interim injunction was not granted

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Another significant development which deserves mention is the grant of the first Geographical Indication ('GI') in India for 'Darjeeling Tea'. Interestingly, figures revealed that of the 30 million kilograms of Darjeeling Tea available in the world market last year only 10 million actually originated from the Darjeeling region. Hopefully, the registration granted would now give teeth to the lawful proprietors to prevent such misuse and deception. Since GI protection is territorial, international applicants shall have to file separate applications in India for protecting their indications. In view of the same, we expect a surge in the number of foreign applications especially relating to different varieties of wine and cheese for protecting the GIs located outside India. May be it would be a good idea to be an early bird rather than engage in a legal battle over ownership rights later.

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Every change in law and policy is designed to bring India in tandem with the highest global standards. This represents, so to speak, the 'new India'. We will keep you abreast of fresh developments as they unfold.

© Remfry & Sagar January 2005

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"Letter from India" is intended to provide our clients and associates with information of general nature on legal issues and recent developments in the areas of intellectual property, foreign investment and corporate laws. It should not be relied upon as legal advice or opinion.