De Penning & De Penning

The Doctrine of Foreign Equivalents in Trademark Law

The Doctrine of Foreign Equivalents in Trademark Law ensures foreign language trademarks are distinctive, preventing generic or descriptive terms in another language. This article explores why the doctrine is crucial in our globalised market.

DELHI HIGH COURT CLARIFIES JUDICIAL STAND POINT OF DIVISIONAL APPLICATIONS

The Division Bench of the DHC has held that, for filing a divisional application, ‘plurality’ of inventions may also be ascertained from the specification. Further, the doctrine of what is not claimed is disclaimed cannot be applied while assessing maintainability of a divisional application.

Grace Period Exemptions on Scientific Publications under the Indian Patent Law

An important criterion for an invention to secure a patent grant is that it must be new. But, what happens when inventors publish the details of their invention in a scientific journal beforehand? Section 31(d) of the Patents Act,1970 provides for an exception. This article explores its provisions.

Climate Change and the Increasing Number of Green Trademarks

Green trademarks are a growing trend driven by climate change concerns. They signify a commitment to sustainability, but pose challenges as well, requiring standardised regulations. Protecting green labels involves creative trademark registration to navigate these complexities.

EXAMINATION REPORTS- COMMON OBJECTIONS AND POSSIBLE RESPONSES

In India, a trademark’s distinctiveness is considered during the examination process. This article discusses some the common objections raised by the Examiner and best possible ways of overcoming such objections through a written response.

Additional Experimental Data: An Aid to Bridge the Technical Effect Gap

The role of experimental data in patent applications and its importance in demonstrating technological advancement and sufficiency are crucial. Experimental data strengthens patent credibility and should be included from the outset, with awareness of country-specific practices.

Shape of Goods - Trademark or Design?

Trademark and design protection for product shapes in India's legal landscape is a complex discussion. This article highlights the eligibility criteria and overlapping possibilities. It also sheds light in situations where the thin line of bifurcation between trademark and design rights fades.

Rochem v. Nirtech – Understanding the Protection of Confidential Information

The Rochem v. Nirtech case in India delves into the challenge of reconciling ex-employee rights with protecting corporate confidentiality. The court emphasizes the need for precise evidence, highlighting the intricacies of maintaining this balance in legal disputes.

Importance of Patents for Disruptive Innovations

Disruptive technologies reshape existing markets, necessitating robust and strategic intellectual property protection. Innovators must be provided proactive, comprehensive IP strategies to nurture and safeguard innovations in India's thriving tech ecosystem.

IP INFRINGEMENT AND RESPONSIBILITIES OF E-COMMERCE PLATFORMS

E-commerce platforms grapple with intellectual property (IP) infringement issues. Safe Harbour provisions shield them from direct IP liability. Recent IT Act amendments aim to increase intermediary accountability and user-friendliness without compromising safe harbour protection.

Non-use Vulnerability of Registered Trade Marks

The right to use a trademark exclusively grows out of its consistent usage with respect to a business. However, a registration of a trademark may be vulnerable by any third party on the premise of non-use. This article explores the provision on non-use action, definition of the 'person aggrieved’, t

Import of Medical Devices into India: Opportunities and Challenges

When it comes to medical devices, India is mostly dependent on imports. To change this scenario, the government is actively implementing several measures to increase domestic production. However, several guidelines are needed to understand the metes and bounds of the Indian Patents Act.

SCOPE OF FAIR USE WITH RESPECT TO SOUND RECORDINGS

The article explores the scope of fair use of sound recordings, as the content of most recordings is subject to multiple layers of copyright protection, due to underlying works. The second part of the article discusses fair use with reference to the recent trend of digital sampling and rap versions.

Role of IP Valuation in the Indian Start-Up Market

Start-ups play an essential role in the growth of the Indian economy. Having a robust IP portfolio provides start-ups with an edge against their competitors. This article explores the role of IP valuation in the Indian start-up market. It looks at how IP valuation takes place and its benefits.

Enhancing Efficiency and Timelines in the Examination of Indian Patent Applications

Enhanced efficiency and improvement in timelines of disposal of patent applications in India hold immense importance. It inspires innovation and filing of patent applications for inventions, resulting in the economic growth of India as a whole.

KEY CHANGES PROPOSED IN “THE DRAFT PATENTS (AMENDMENT), RULES, 2023”

The Draft Patent (Amendment), Rules, 2023 was published in the Gazette of India on 22 August 2023. A brief note stating and explaining the proposed changes is given here.

Recession and Intellectual Property Rights

The article discusses the importance of Intellectual Property for an entity, especially during recession. The article further sheds light on how entities leverage their Intellectual Properties during recession and on measures entities can take to protect their Intellectual Property after recession.

Cybersquatting in India - Everything You Need to Know

This article is focusing on various aspects of cybersquatting which includes the meaning of cybersquatting, types of cybersquatting, impact it has on businesses and the remedies to tackle this menace.

Generic Words As Trademarks: A Comprehensive Assessment of Legal Boundaries & Practical Implications

This article discusses use of generic words as trademark and the conditions under which a generic word can be allowed to be used as trademark. Genericide of trademarks has also been discussed in this article.

Impact of Section 4 on the Examination of India Patent Applications

Capturing the impact of Section 4 of Indian Patent Law on inventions utilizing radioactive material, this article highlights a judgment from Bombay High Court directing IPO to provide reasoned order instead of blanket dismissal of applications. Tips to tackle Section 4 objection are also provided.

EVOLUTION AND FUNCTIONING OF COPYRIGHT SOCIETIES IN INDIA

The article explains the evolution of some of the active Copyright Societies, in the age of commercialization and digitalization. The author also analyses some of the Indian judicial pronouncements that clarified statutory provisions and brought transparency to the functioning of these societies.

Maintainability of Divisional Applications in India: Delhi High Court Revisits the Boehringer Decisi

The Delhi High Court held in Syngenta v. Controller of Patents that if a divisional application is filed suo moto by the applicant, both the requirement of plurality of inventions and establishing support for the divisional claims in the parent application claims do not apply.

Promoting Geographical Indications in India

Geographical Indications (GIs) are certifications for goods from specific regions, representing cultural traits and significance. Indian Government initiatives promote GIs, such as the GIs Act, Export Promotion Councils, boosting consumer awareness, opening markets, and supporting exporters.

2023 Special 301 Report of USTR on the State of IP Protection and Enforcement in India

The United States Trade Representative (USTR) releases a Special 301 report on the adequacy and effectiveness of Intellectual Property (IP) rights in countries trading with the US. India remains on the Priority Watch List in the 2023 USTR Special 301 report.

The Effects of Russia-Ukraine War on the IPR in Both Nations

On 24th Feb '22, Russia started its invasion of Ukraine. Several nations imposed wide ranging sanctions. Russia announced counter sanctions including suspension of IPR. We briefly look at the implications and evaluate how challenging it is for foreign companies to work in Russia.

Understanding Domain Names and Whether You Can Use Them as Marketing Tools

This article discusses what are domain names, the relationship between domain names & trademarks and highlights the importance of domain names for marketing purposes and provides tips for an effective domain name marketing strategy.

Literal Interpretation: Courts Must Exercise Caution and Vigilance on Ex-Parte Orders

This article discusses one of the important reliefs in relation to trademark infringement or passing off : ex-parte injunction orders. It also highlights the interplay between the statutory provisions under the Trade Marks Act, 1999 and the Code of Civil Procedure, 1908 coupled with legal maxims.

IP Trends and Strategies for Emerging Technologies: Everything You Need to Know

This article explores the trend in IP for emerging technologies and the strategies applicants can adopt to obtain their IP rights in India and across the globe with specific focus on why, when and where to obtain patent rights for emerging technology inventions.

The Role of the Indian Patent System in Fostering Start-up Innovation

The Government's Startup India initiative and related measures have fostered a favorable environment for Startups to secure their Intellectual Property. This article discusses the various options for Startups to utilize these pro-IP initiatives to gain a stronger competitive edge.

Introducing additional documents in a pending suit

De Penning & De Penning was successful in bringing on record additional documents during pendency of an infringement suit in India.