Intellectual art can take various forms of innovation and creation including books, articles, songs, musical compositions, films, and software. In the world of creative works, authors hold the rights to their original creations, whether it is a book, song, or an artwork. However, when these works are used to create something new, like a movie based on a book or a remix of a song, the question arises: should the original authors still be entitled to a share of the profits? The Indian Copyright Act, 1914 was introduced to protect creators’ rights, following the invention of the printing press. Advancements in technology and the rise of modern inventions prompted amendments to the law, eventually leading to the passing of the Copyright Act, 1957 (“Act”). As the art and entertainment industry expanded, courts began to grapple with the complexities of derivative works, those that are based on pre-existing works. It became clear that even small contributions by an author to a new creation, such as a song that is sampled or a scene from a book that becomes part of a film, should be recognized and protected.  The courts have regularly upheld the rights of authors to claim royalties every time their work is communicated to the public. The Copyright (Amendment) Act, 2012 has significantly altered the legal landscape regarding the rights of creators of original works. The amendment ensures that authors receive fair compensation for the ongoing use of their works, even if the original work has been transformed into a derivative creation. Further, these amendments introduced a more structured system for royalty payments, with clear guidelines and rules for collecting and distributing royalties. Copyright societies were also empowered to establish tariff schemes for different types of public performances and uses of works.  The “right to receive royalty” for authors of musical and literary works underwent significant changes with the Copyright (Amendment) Act, 2012. Prior to these amendments, the Act primarily recognized the subsisting copyright in the original works, alongside performer’s right to have an exclusive right over his/her “performance” and special rights for authors. However, the industrial practice at the time was often skewed in favour of large companies, such as producers, publishers, and music labels, where most authors would assign all their rights to these big-ticket entities in exchange of a fixed aggregate without anticipating the future returns of such product. As a result, even if their work became hugely popular, the authors would not receive any share of the profits post such assignment. This position has been substantially altered after the amendments, which addressed this imbalance, and ensured that authors of the underlying works would receive a share of the royalties whenever their work was used, with the only exception being when the work is shown in cinema halls. The authors now have the right to receive royalties equal to those received by the assignees of such rights, excluding royalties from cinema hall exhibitions. This right is inalienable as it cannot be assigned or waived by the authors, except in favour of legal heirs or copyright societies.  A very significant and debated question is whether the “right to receive royalty” is a subset of “copyright” under Section 14 of the Act or a contractual right? In other words, if an author does not receive royalties for their underlying work that has been publicly used, can they claim copyright infringement, or is it simply a breach of contract? One possible interpretation is that the right to royalties is an inherent part of the copyright, stemming from Section 14 of the Act, which grants the right holder the exclusive right to “do or authorize doing…” If this is the case, the author can file a suit for copyright infringement for failure to pay such royalty under Section 51 of the Act, and, consequently, seek civil remedies.  Alternatively, it can be argued that the right to receive royalties cannot be considered as “copyright” and rather, is a contractual obligation between the author (assignor) and the entity receiving the rights (assignee). As such, Sections 18 and 19 of the Act, that impose restrictions relating to assignment/waiver of underlying artists’ rights, merely regulate the performance of contracts, ensuring that the aspect of royalties is included, otherwise rendering such contracts as void or voidable.  Additionally, Section 19(3), which specifies that the assignment of copyright must include royalty terms, clarifies that royalty is considered a mandatory contractual obligation. Theoretically, both interpretations could be applied, however, the second seems more plausible in the scheme of the Act as the third and fourth proviso (amendments upholding the rights of underlying artists with respect to the right to claim royalty) to Section 18 only applies in case of assignment.  The Bombay High Court, in the case of Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd. and Indian Performing Rights Society Ltd. v. Music Broadcast Ltd. (2023 SCC OnLine Bom 944 Bombay High Court) relied upon the Statement of Objects and Reasons of the 2012 Act and the Parliamentary Standing Committee Report on the Copyright Amendment, to positively interpret the change in law and directed the defendants to pay appropriate royalties to the authors of underlying works. This decision reinforced the legal interpretation that ensures the rights of authors to receive royalties for their works.  To simplify, authors have exclusive rights over their creations, regardless of the fact whether it is assigned or not. For third parties who are neither licensees nor assignees, Sections 51 and 55 of the Act secures an author’s right to sue for infringement and unauthorized use without getting an official license or without entering into an assignment.  However, where the copyright is assigned for an underlying work, which is used and incorporated to form a derivative work, the law becomes very clear, that an author has remedy under Section 19A of the Act, which specifically empowers authors/assignees to approach the Commercial Court for any such dispute, with the Court having the authority to issue orders, including the recovery of unpaid royalties. 

Bad faith is generally understood as a narrow legal concept that is a shade milder than malice and implies breach of faith or wilful failure to respond to one’s known obligation or duty. Bad judgment or negligence is not “bad faith”, which imports a dishonest purpose, or some moral obliquity and implies conscious doing of wrong. It is much more than a mistake of judgment and is synonymous with dishonesty.   Imputing bad faith in trade mark infringement disputes in India is a critical aspect that underscores the integrity of trademark law and the protection of brand identity. The concept on bad faith, though, not alien to trade marks law, it has, yet, not been defined in the Trade Marks Act, 1999 (“Act”). In fact, the only reference to bad faith is under Section 11(10)(ii) of the Act as one of the relative grounds for refusal of registration of mark. In spite of this, while analysing relative rights, tribunals and courts across various jurisdictions, including India, have evaluated intentions of the parties involved, as bad faith can significantly impact such disputes, particularly in assessing the legitimacy of the claims of a subsequent proprietor of a similar trade mark.   In Gromax Plasticulture Ltd v. Don & Low Nonwovens Ltd., Lindsay, J., defined “bad faith” to include some dealings which fall short of the standards of acceptable commercial behaviour deserved by reasonable and experienced men in the particular area being examined. In Surene Pty Ltd v Multiple Marketing Ltd, the Cancellation Division of EUIPO ruled that bad faith is the opposite of good faith i.e., unfair practices involving lack of good faith, based on acts infringing a third person’s rights, generally implying or involving, but not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive. Conceptually, bad faith can be understood as a “dishonest intention”. The Hon’ble Delhi High Court, in the case of Manish Vij vs. Indira Chugh, defined bad faith as something that does not merely imply bad judgment but “the conscious doing of a wrong with a dishonest purpose.   While, in the absence of any statutory definition, bad faith elements are to be determined on a case-to-case basis, if we are to narrow it down to specific acts of wrongdoing, such acts would include, intention behind and prior knowledge before adoption of a trade mark, conditions under which the mark was adopted and subsequent use of the mark, commercial and financial aspect behind adoption of the mark, series of events that followed the adoption of the mark and the evidentiary findings. Discussed below and a few of such actions which amounts to bad faith.   Conscious Knowledge: There is a possibility that a subsequent proprietor of a trade mark, was aware of an earlier mark on which the subject mark is based or is derived from, such that use of the later mark is likely to be confused with that of an earlier mark. This knowledge can be established by numerous ways, including, if the parties have, in the past, engaged in or had business relationship, as a result of which the infringer was aware of the earlier mark. Another instance of ‘conscious knowledge’ could include cases where the earlier mark is widely used or known in the economic sector and is a popular name amongst the consumers, so much so that, the infringer ought to be aware of the use of the mark. For example, MRF, MAGGI, HONDA.   Competitive Relationship: If the trade channels and the target consumers of both the parties overlap or are vastly similar, as the registered proprietor of an original and earlier trade mark, it raises suspicions of bad faith. In the case of Volvo versus Volvo, the Hon’ble Delhi Court restrained defendants from using the brand VOLVO in connection with mixers, grinders, juicers, and their parts and ordered the defendant to withdraw application(s) filed to register the trade mark at the Registry citing dishonest and unfair exploitation of the plaintiff’s well-known brand by the defendants. The Court noted that since the plaintiff coined the mark VOLVO in 1915 and use it since then, it had acquired a considerable amount of goodwill and reputation in the market. The defendant had no legitimate purpose to use it other than to capitalise on the plaintiff’s well-established goodwill by leading customers to believe that mixers, grinders, and juicers marketed under the VOLVO brand are made and/or sold by the plaintiff, who is probably the manufacturer, and that they are likely to be of a much higher quality.   History of habitual infringement: Bad faith is easiest to establish if the party is a habitual infringer who has, in the past, caused multiple incidents of infringement without any valid and cogent explanation.   Mala fide intention viz-a-viz co-incidence: Infringing parties often claim that their mark was adopted independently without any reference to any earlier mark in a suit. While this may hold good in some cases, courts usually reject these arguments without a sound justification of adoption. In Suzuki Motors v. Suzuki India Limited, the Hon’ble Delhi High Court, rejected the defendant’s explanation for adopting the SUZUKI trade mark as an after-thought, stating that it is natural for parties who have copied a trademark to try and explain its conduct and the derivation of the adopted words. If a trade mark with a prior continuance and use element has been copied, even a plausible explanation cannot defend infringement, passing off, and unfair competition of an earlier trade mark. In Sterling Agro Industries Limited the court rejected the defendant’s arguments of rival marks being dissimilar and ruled that the defendant’s application to register the mark NOVYA, during the existence of the plaintiff’s registered mark, NOVA and coupled with adoption of identical packaging, suggested a deliberate attempt to exploit the plaintiff’s goodwill and mislead consumers.   Colloquially speaking, bad faith is an unfair practice by an infringer to profit from the goodwill and reputation of an earlier trade mark by confusing consumers about

The rampant rise of social media influencers has drastically changed the advertising landscape in India. The paradigm of content consumption in India, once steered by traditional celebrities, is now observing a shift towards social media influencers, who may have a smaller but highly interactive audience. The Advertising Standards Council of India (“ASCI”) plays an indispensable part in shaping standards of ethics in advertising industry. The ASCI, established in the year 1985, ensures that advertisement its Code for Self-Regulation. This code is hinged on four principles – (i) truthful and honest representation, (ii) non-offensive to public, (iii) against harmful products and situations, and (iv) fair in competition. Eventually, this shift has turned to be a persuasive power in forming consumer preferences and influencing purchasing decisions with a single social media post. Considering these circumstances, ASCI has expanded its role to include regulations for influencer marketing. Its Guidelines for Influencer Advertising in Digital Media (‘Guidelines’) help consumers recognize when content is sponsored, ensuring transparency and authenticity in promotional material. These Guidelines aim to uphold ethical practices in influencer marketing and protect consumers from misleading advertising. The ASCI, in the Guidelines, defined the term “influencer” as “someone who has access to an audience and the power to affect their audiences’ purchasing decisions or opinions about a product, service, brand or experience, because of the influencer’s authority, knowledge, position, or relationship with their audience.” The core principle of the Guidelines is the principle of disclosure. This ensures that consumers are aware of potential biases and can make informed decisions based on genuine endorsements rather than undisclosed promotions. The key tenets of the Guidelines are pivoted around the following requirements: i. Disclosure of Commercial Relationships – The underlying purpose of this disclosure is double-edged, one is to inform consumers about the commercial nature of the content they are consuming, thereby prompting them to make informed decisions, and the other one is to enable influencers to mitigate the risk of consumer confusion or deception. ii. Identification of Advertised Content – Influencers are required to label promotional, sponsored, or collaborative content with clear disclosures in the relevant language. This will help to distinguish between organic and incentivized content, which will help the consumer to make informed decisions. iii. Accuracy of the Advertised Content – The influencers are expected to verify their claims made through testing or confirming product/service details, to ensure accuracy and credibility. Tailored Guidelines for Health and Financial Influencers – These specific guidelines demand influencers to have mandated qualifications or certifications to promote related goods and services. Moreover, in case of any concern raise by consumer or identify by ASCI, the ASCI will issue notices to both the brand owner and the influencer. Given that the ASCI is a self-regulatory body, any violation will be governed by the Consumer Protection Act, 2019, which stipulates a penalty in the form of imprisonment for a term up to two years and a fine up to INR 10,00,000 (ten lakh rupees) for making a false or misleading advertisement. The key driving factor of the Guidelines is the need to protect consumers from deceptive advertising practices, which underscore the importance of ethical considerations in influencer marketing. Amidst the lucrative collaborations and sponsored content, ethical considerations stand as the foundation of responsible and transparent influencer marketing. By adhering to the Guidelines outlined above, influencers not only uphold their credibility but also empower audiences to make informed choices, fostering trust in the influencer-brand-consumer relationship. Influencers are also expected to exercise diligence in ensuring that the information they disseminate is accurate and reliable. Whether endorsing skincare products, fashion brands, or lifestyle services, influencers bear a responsibility to uphold the integrity of their recommendations. In fact, ethical considerations extend beyond mere compliance with the Guidelines. Influencers are urged to exercise caution and sensitivity in their content, refraining from endorsing products or messages that could potentially harm or mislead their consumers. The Guidelines have raised awareness about ethical considerations within the influencer community. Influencers are now more cognizant of their responsibilities towards their audience and the brands they collaborate with. This has resulted in a more conscientious approach to content creation, with influencers striving to uphold integrity and professionalism in their workspace. Moreover, the discussion on the Guidelines is no longer confined to the realm of advertising ethics but has also transcended in the domain of intellectual property law in India. Influencers, in their efforts to comply with the Guidelines, are now more cautious about the content they create and share. This amplified caution extends to ensuring that their content does not infringe upon any copyrights held by third-parties. The influencers are mitigating the risk of facing legal repercussions for infringement, by obtaining valid licenses for the use of copyrighted materials. Additionally, influencers are advised to exercise caution when referencing or displaying trade marks belonging to brands in their content, which includes avoiding any unauthorized use of trade marks that could potentially mislead consumers or imply an endorsement that does not exist. By adhering to the Guidelines, influencers contribute to maintaining the integrity and exclusivity of trade marks while curtailing the risk of trade mark infringement claims. Clear disclosures of sponsored content help distinguish between genuine endorsements and advertised content, thereby safeguarding the reliability of brands and their trade marks. In addition, in June 2022, the Central Consumer Protection Authority (“CCPA”) notified the Guidelines for Prevention of Misleading Advertisements and Endorsements for Misleading Advertisements, 2022, in order to strengthen the enforcement of various parameters outlined in the ASCI’s Guidelines for Influencer Advertising in Digital Media. This alignment underscores significant overlap between the provisions of both sets of guidelines. Essentially, the guidelines notified by the CCPA specify certain duties for manufacturers, service providers, advertisers, and advertising agencies, with an underlying drive to ensure that the advertised claims are evaluated, substantiated, verified, or supported with relevant data, and which may require to be corroborated with evidence, upon CCPA’s direction. These guidelines are additionally responsible for ensuring that advertisements are not directed to individuals and entities

In the complex world of brand development and association, single colours have emerged as a powerful and sophisticated branding strategy. While most trademarks are associated with logos, names, or slogans, brands are increasingly choosing single colour marks to create a unique identity. One can easily recognize Tiffany and Co.’s blue, Cadbury’s purple, T-Mobile’s magenta, Mattel’s pink, etc, and these colours have become synonymous with the brands, such that consumers can easily recognize them without inscribing any traditional trademarks on them.   Obtaining a registration for a single colour mark can be legally challenging since a singular colour in itself does not pass muster as being inherently distinctive. Given the potential for monopoly and the limited range of solid colour pigments, courts have set a higher standard of proof for brands seeking to protect single colour marks. In order to secure protection over single colours, brands must demonstrate a strong association between the colour and their specific goods or services, ensuring that it is not widely used by competitors.   Legal Provisions and Perspective of the Trade Marks Registry   While the Trade Marks Act, 1999 (hereinafter referred to as “TM Act”), does not explicitly address single colour trademarks, they may be granted protection by providing a wider interpretation to the scope of Sections 2(1)(m) and 2(1)(zb) of the TM Act, the definitions of a mark and a trade mark. Single colour trademarks are also eligible for protection if they meet the criteria of being distinctive, non-functional and graphically representable.   The draft Manual of Trademarks issued by the Trade Marks Registry (“Registry”) (which is a guideline to bring uniformity and consistency in the administration and examination of trademark applications by the officers of the Registry), recognizes that marks consisting of a single colour may often be subject to objections under Section 9(1)(a) of the TM Act, as they inherently lack the capacity to distinguish one’s goods and services from other. Nevertheless, such trademarks may be eligible for registration if it can be established that the mark has acquired distinctiveness by way of substantial evidence.   In order to establish acquired distinctiveness, brands would have to show that the single colour does not serve a practical purpose (like indicating a product’s flavour or quality) and is uniquely associated with the brand alone. This would require extensive evidence, which may include worldwide registrations, promotional and advertising materials featuring the colour mark in India, social media campaigns, public consumer surveys, unsolicited media coverage, etc.   In fact, the Registry has, over the years, granted registration to single colour marks that meet the stringent criterion related to non-functionality and acquired distinctiveness. Details of some of the registrations granted to single colour marks by the Registry are as follows: International Perspective   While some jurisdictions, like the United States and Canada, have granted trademark protection to single colours, European courts have been more cautious. The US Supreme Court in Qualitex Co. v. Jacobson Products Co. recognized that a single colour can be recognized as a trademark under the broad language of the Lanham Act if it is distinctive, has acquired secondary meaning and is non-functional in nature.   However, European courts have been less favourable to recognizing rights over single colours, as they view colours per se as not being a means of identification in commercial practice. Moreover, they are concerned that granting exclusive rights to single colours could create an unjustified competitive advantage for a single trader. However, they have carved an exception if the colour is unusual or striking to those goods or services, not commonly used in the relevant industry, and if it does not serve a decorative or functional purpose.   In Societe des Produits Nestle v. Cadbury UK Limited, the UK High Court, while granting Cadbury partial registration for the colour purple, observed that while considering the registration of single colour marks, even if it has become distinctive, they must also satisfy the tests of being clear, precise, self-contained, easily accessible, intelligible, durable and objective.   Judicial Trends in India   Despite the progress on the prosecution front, enforcement of such colour marks against other members in the trade continues to be a bigger challenge. Indian courts have clarified and interpreted the principles surrounding single colour marks through various cases. However, the position remains unsettled and have resulted in conflicting judgements.   In one of the earliest instances, the Delhi High Court in Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., in its obiter, observed that even a single colour has been recognized as a trade mark. It also recognized certain exceptions, where colours are functional or are common to the trade, for e.g., blue for ink and red for lipstick.   However, the Delhi High Court took a divergent stance in Cipla Limited v. M. K. Pharmaceuticals and rejected Cipla’s claim for exclusive rights over orange tablets sold in an oval shape. The Single Judge observed that there cannot be any monopoly over single colours in the pharmaceutical industry as medicines are not bought by consumers on the basis of colours. Instead, the court emphasized on the significance of names of the medicines rather than their colour or shape as distinguishing factors. In Marico Limited v. Mukesh Kumar, Marico successfully protected its iconic packaging for ‘Parachute’ hair oil which consists of a blue (Pantone 285C) bottle with text on top. The court ruled that while Marico didn’t claim exclusive rights over the colour itself, the combination of the colour and other packaging elements created a distinctive brand identity, and the use of the blue colour in the same shade by the defendant enhanced the likelihood of confusion between both the products.   Since 2017, Christian Louboutin has been actively protecting its rights in the red colour sole of its iconic high-heeled shoe. In December 2017, the Delhi High Court in Christian Louboutin SAS v. Pawan Kumar (hereinafter “Pawan Kumar”), recognized the distinctive character of the red sole and granted injunctive relief. Moreover, the court also observed that owing to extensive use, promotion and presence of the red sole in

The names of cities, states and countries are often used by businesses to refer to their goods and services. Some well-known examples are British Airways, The New York Times, India Gate, etc. Since names of cities, states and countries cannot be monopolized, it leads one to wonder whether trade marks which incorporate names of geographical locations would be considered as an indication of the goods/services having emerged from a particular region, such as a geographical indication, and would thereby not be allowed to be monopolized.      Courts have often held that geographical terms and words used to designate a locality, a country, or a section of a country cannot be monopolized as trade marks. However, a geographical name not used in “geographical sense” to denote the place of origin but used in an arbitrary or fanciful way to indicate origin or ownership regardless of location, may be sustained as a valid trade mark[1]. This blog delves into this distinction in detail. Position in Law and Practice   The trade marks statute makes it abundantly clear that trade marks which consist exclusively of marks or indications which may designate, inter alia, the geographical origin of the goods shall not be registered[2]. The statute also envisages that a registered proprietor cannot assert their rights against a third-party’s bona fide use of the name of a place of business as a trade mark[3]. Further, as per the guidelines governing trade mark filings[4], registration of the name of a place is permissible if the place does not have a reputation or association with the geographical origin of goods and/or services covered by the filing.   As such, it is evident that neither in the statute nor in practice, is the use of geographical terms in trade marks barred. While determining whether a trade mark is excluded from registration owing to use of geographical names, credence ought to be given to ascertaining whether the trade mark consists exclusively of geographical terms and whether it is capable of being used by other traders to describe the characteristics of their goods/services[5].   There have been several instances where the Trade Marks Registry (“Registry”) has taken a favourable stand in cases where proprietors, with the names of cities/states/countries have applied for registration of their marks for entirely unrelated goods/services. For example, CAMBRIDGE for readymade garments, MONACO for electrical wires, cables, etc., BALI for lingerie, etc. However, there have also been cases where the Registry has not applied the statutory tests and has denied registration to marks that meet the statutory criteria.   In the landmark case of Abu Dhabi Global Market v. The Registrar of Trade Marks, Delhi[6], the Registry’s order refusing registration of the mark ABU DHABI GLOBAL MARKET Device, since ABU DHABI is a geographical name and the capital of UAE, the mark as a whole is non-distinctive, and cannot be monopolised, was called into question by the Delhi High Court.   It was the plaintiff’s case that the view taken by the Registry, stating that ABU DHABI is the name of a place and constitutes the most prominent part of the mark sought to be registered, was entirely misplaced. In fact, the plaintiff submitted evidence both before the Registry and the Delhi High Court showing that the mark was being used with full knowledge of the UAE government.     The court, while expressing its disagreement with the reasoning of the Registry, stated that the statute only bars registration of a mark consisting of words which exclusively designates the geographical origin of a place. Composite marks, therefore, stand ipso facto excluded from the scope of this section, even if part of such marks consist of indicative wording/s. The mark in the present appeal, being a composite mark, which couples the words ABU DHABI, GLOBAL and MARKET with a logo cannot be barred from registration. Further, the court, while refuting the Registry’s contention that ABU DHABI forms a dominant part of the mark observed that the principle of “dominant part” is alien to the test of distinctiveness under the statute. The court, accordingly, remanded the application back to the Registry asking it to advertise it in the Trade Marks Journal.   Conclusion   While there is still ambiguity in the way the Registry exercises its judgement on cases involving geographical names, courts have reinforced the statutory parameters for determining registrability of such marks.   In order to secure registration, the way forward is proving that the geographic names used in trade marks have no relation whatsoever with the goods for which they are applied. The proprietor of such mark has to prove that the geographic name is so unique that no trader would have used such name for the goods/services applied for and that use of such mark would not lead the consuming public into believing that the goods/services originate from that geographical location. Adding to this, the secondary significance or acquired distinctiveness is also paramount for registration of a geographical name.   Stakeholders can be rest assured that if their mark is sufficiently distinctive and meets the paraments under the statue, registration of marks that include geographical names is easily achievable in the Indian jurisdiction. [1] Imperial Tobacco Company of India Limited v. The Registrar of Trade Marks reported, AIR 1977 Calcutta 413. [2] Section 9(1)(b) of the Trade Marks Act, 1999. [3] Section 35 of the Trade Marks Act, 1999. [4] Chapter II: Examination of Applications filed for Registration of Trade Marks. [5] Double Mint 2004 RPC 18, 327. [6] C.A. (COMM-IPD-TM) 10/2023

Updated: Jan 17, 2025 The goodwill and reputation of a brand is built, in large measure, on the quality of the goods and services in relation to which it is used. Therefore, any licenses granted around the brand must be granted with thought and caution. A trade mark acts as the source identifier for a brand, and is the cornerstone of its reputation in the market. Therefore, it is imperative that a trade mark maintains its distinctiveness which can only be done by ensuring that the products do not lose their quality. While licensing agreements may seem like run of the mill contracts, a lot is at stake for brand owners if caution is not exercised.     Quality control is pivotal in license agreements.  A naked license is one under which a licensor risks use of its trade mark by a licensee without incorporating proper quality control measures. Such licences may allow licensees to use the trade marks in relation to goods/services which are lacking in quality or do not resonate with the brand owner’s values. As such, this may lead to consumer confusion and blurring and tarnishment of the trade mark.     The Trade Marks Act, 1999 (“Act”) recognizes use of a trade mark by person(s) other than the registered proprietor, so long as such use is authorized. While the Act does not expressly encapsulate the concept of naked licensing, it does address the quality control measures to be exercised by a registered proprietor.     In the provision detailing the requirements for an application for registration of a registered user, i.e., a person authorized by the registered proprietor to use the trade mark, the application is required to be accompanied by an affidavit, which includes details about the relationship between the registered proprietor and registered user, specifically statements outlining the extent of control that the registered proprietor would continue to have. The application is also required to include a statement regarding the conditions or restrictions, if any, proposed with respect to the characteristics of the goods/services, to the mode or place of permitted use, etc.   The Act also includes a provision empowering registered proprietors to cancel the registration of a person as a registered user if they are found to not comply with the quality control measures set out in the licensing agreement.     Indian Courts have also, on various occasions, highlighted the importance of quality control measures while licensing intellectual property.  The Delhi High Court, in Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur opined on the importance of quality control in the maintenance of the distinctiveness of a trade mark, and noted that lack of control may lead to complete loss of distinctiveness.     The importance of ensuring quality control was also discussed in detail in the case of Double Coin Holding Ltd. v Trans Tyres (India) Pvt Ltd and Anr., where it was held that “goodwill in a brand does not come to be created only on account of its promotion and advertising. The primary reason for a trademark acquiring goodwill in the market is the quality of the product, which is sold under that name. If a product is of inferior quality, no amount of advertisement and promotion can build the brand under which the product is sold. Of course, the brand building and promotion supplements the efforts of the manufacturer, who is primarily responsible for maintaining quality of the product.”    In the case of UTO Nederlands BV v. Tilaknagar Industries Ltd., the defendant had contended that the licensing agreement entered into between the parties was a bare license. The court, however, while finding that the license was not a bare license held that “it is reasonable to presume that parties who seek and obtain a license to use a trademark, acknowledge the reputation and goodwill attached thereto. If the products sold under the said mark had no goodwill and reputation in India, a party would not negotiate a license to use the same on…onerous terms and conditions. I would readily infer therefore that the defendant was aware of the reputation and goodwill attached to the said trademarks and therefore, sought and obtained a license to use the same in India…”    Trademark licensing agreements enable businesses to expand into new areas and collaborate with experts in these fields to expand their brand’s reach. However, businesses should, especially while licensing their brands, in the Indian landscape, examine the quality control clauses in the agreements. Specifying the goods/services in relation to which the mark is being licensed, restrictions regarding modification, and randomized quality testing are some of the safeguards against the perils of unintentional naked licensing.  

Recently, the Indian Patent Office published “The Draft Patent (Amendment) Rules, 2023”. In recent years, with the increase in the number of patent applications and the backlog at the patent office, the Indian patent office has embraced several new digital initiatives, onboarded more examiners, and signed bilateral and multilateral agreements for the exchange of information between patent offices. In view of these developments and to meet the evolving international best practices there is a need to revisit the current procedures, requirements, and timelines governed by Patent Rules 2003, which were amended 20 years ago. In this post, we have tried to consolidate the proposed amendments under the Draft Patent (Amendment) Rules, 2023 . 1. Revised Timelines a) Rule 12 (Form 3) Under this rule, the applicant is required to file a statement of undertaking for a patent within 6 months from the date of filing the application. Further, under rule 12(2), the current rules mandate that the information related to corresponding foreign applications must be filed within 6 months. The draft rules 2023 propose to ease the burden of rule 12(2) on the applicants, by requiring the Applicant(s) to submit the updated Form 3 details within 2 months after the issuance of the initial statement of objection. Further, under rule 12(3), the current regulations stipulate that the applicant shall furnish any information relating to objections concerning foreign applications as required by the control within 6 months. The draft rules 2023, under rule 12(3), propose the Controller to consider the information relating to the processing of the application in a country outside India that is accessible using public databases. Further, under the proposed new rule 12(4), the Controller may, for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within 2 months from the date of such communication. Additionally, the new proposed rule 12(5) gives the applicants the opportunity to request an extension for submitting the Form 3 details, using Form 4. b) Rule 24B (Form 18) Under this rule, the applicant is required to file a request for examination in Form 18 within 48 months from the date of priority or from the date of filing the application, whichever is earlier. The draft rules 2023, under rule 24B (1), propose to reduce the time for filing a request for examination from 48 months to 31 months. Further, the draft rules 2023 clarified under the new rule 24B(1)(vi), that for applications submitted before the implementation of the Patents (Amendment) Rules, 2023, there shall be no change in the existing time limit, i.e., 48 months. This amendment is aimed at reducing the overall Application disposal time at the Indian patent office. c) Time for Putting an Application in Order for Grant (Form 4) Under the current rule 24B and rule 24C, the applicant can request to extend the time to put the application in order for grant by 3 months. Such a request must be filed before the expiry of the 6 months period from the FER issue date using Form 4. The proposed draft amendment relaxes rule 24B(6) and rule 24C(11), by allowing the Applicant to file the request for an extension within the period of 3 months using Form 4 (i.e. any time before 9 months from the date of issuance of FER) 2. Divisional Application The scope of a divisional patent application is clarified in the draft rules 2023 with the inclusion of new rule 13(2A), which states that “A patent applicant may, if (the Applicant) so desires, file a divisional application under section 16, including in respect of an invention disclosed in the provisional specification”. This amendment may be incorporated in view of the recent Syngenta Limited vs. Controller of Patents and Designs case. 3. Grace Period The Draft Rules, 2023 propose a new Form 31, under a new rule 29A, for applicants to provide details of public disclosure of the invention before the date of filing the patent application. This amendment binds the Applicant to explicitly put on record the details of earlier public disclosure (within the grace period of 12 months) to avoid anticipation by public display under Section 31. 4. Opposition Proceedings a) Rule 55 In the opposition proceedings, the draft rule 2023 propose to amend the rule 55(3) to read “on consideration of the representation, the Controller shall first decide the maintainability of the representation and thereafter if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.” Further, the Draft rules 2023 propose amendments to rule 55(4) to shorten the time limit for the applicant to respond to the notice of opposition from the Controller to 2 months, whereas the current rules require the applicant to respond to the notice of opposition from the Controller within 3 months. Additionally, the Draft rules 2023 proposed new rules 55(6), 55(7) and 55(8) in the opposition proceedings. Firstly, the new rule 55(6) stipulates the Controller to decide the opposition within 3 months after considering the representation and submissions made, either by (i) rejecting the representation and granting the patent; or (ii) accepting the representation and refusing the grant of patent. Further, the new rule 55(7) states that the procedural guidelines outlined in sub-rules (2) to (4) of rule 62, along with those specified in rule 63, will be applied to the hearing process under this rule 55. Lastly, the new rule 55(8) states that, in case of a patent application, if the representation for opposition is filed and found maintainable then the patent application will undergo expedited examination in accordance with rule 24C. b) Rule 56 The Draft Rules 2023 proposed to reduce the time limit for the Opposition Board to submit their report from 3 months to 2 months. The amended rule 56(4) reads “[t]he Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to

In the first part [P1] of this two-part article, we compiled the global innovation landscape and market trends in the meat substitute industry. In the second part of this article, we delve into specific aspects of meat substitutes that qualify for patent protection and explore strategies for building a patent portfolio for companies which are active or aspiring to venture into this space. Patentable Aspects of Meat Substitutes Patents are filed to protect various aspects of meat substitute innovations. The following is a list of a few patentable aspects of meat substitutes with examples for a fair understanding of the subject: Possible Objections from Indian Patent Office for Meat Substitues General Objections: In general, for any invention to be granted patent protection in India the following requirements must be met: Specific Objections: Apart from the Novelty and Inventive step objections, which are relatively more technical in nature, for inventions pertaining to meat substitutes, it is observed that objections related to non-patentable subject matter under sections 3(d) and 3(e) of the Indian Patent Act are common. Strategy for Building a Patent Portfolio Creating a strong patent portfolio requires strategic planning, budgeting, and continuous monitoring. It is a long-term and continuous process for companies of any scale to stay relevant and ahead of the competition. Over time, a patent portfolio should be tuned to generate revenue or create an entry barrier but not remain an overhead cost to a company. With this aim, companies operating at all stages in the value chain of the meat substitutes industry should focus on identifying improvements in their products and processes and assess their patentability. A patent prior art search is a good start for such an assessment. Further, various factors like the market opportunity, budget, technology relevance, the significance of the improvement and possible alternatives, play a major role in curating inventions that are worthy of patent protection. The following are a few simple pointers that would lay a good foundation for building an effective patent portfolio. · Build IP awareness within the company and encourage teams to innovate. · Engage expert patent consultants, who understand the meat substitutes space, early on for strategic planning, evaluating inventions, handling patent activities, budgeting, and monitoring the meat substitutes space. · Getting a patent is important, but having a strong enforceable patent that keeps competitors out is the real goal. · Identify key markets and file patents early to establish priority. · A well-drafted patent application may avoid unwarranted objections raised by Patent Offices, secure broader protection, and reduce future costs. Conclusion The meat substitute industry is experiencing a significant transformation, with patents playing a pivotal role in accelerating innovation. With the rising demand for meat alternatives, companies that strategically plan, seek expert consultation and file patents promptly can ensure their market position and foster sustainable growth. By comprehending patent-worthy aspects of meat substitutes and adeptly addressing potential objections, businesses can forge a strong patent portfolio that not only shields against competitors but also fosters a culture of innovation.

Recently, the Bombay High Court has pronounced a series of decisions in matters in which parties appealed decisions of the Trade Marks Registry (hereinafter “Registry”) refusing to register marks. It is interesting to note that, in a majority of these orders, the Registry’s decisions were set aside and then remanded back to Registry for fresh consideration.   A review of the Court’s orders has revealed that, in a majority of cases, the Court has emphasized that the quality of examination at the Registry must improve. For instance, in Methodical Mind LLC V. The Registrar of Trade Marks & Anr., the Court stated that the Registrar had been refusing registration of marks without proper application of mind. In Helix OpCo, LLC V. Registrar of Trade Marks, it held that the Registrar must take into account all the documents uploaded and facts presented by the applicant, including foreign registrations. In Arjo IP Holdings AB V. The Registrar of Trade Marks, the Court held that, in accordance with well-settled principles of trade mark law, it was improper to dissect marks while comparing them. The Court has also stressed that the Registry must pass reasoned orders while refusing applications. In I Am The Ocean, Llc V. Registrar Of Trade Marks, the Court observed that the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 require the Registrar to set out reasoned grounds for refusal of an application.   Another issue that has come up in matters before the Bombay High Court is the lack of consideration of attendant circumstances surrounding a cited mark in Examination Reports issued by the Registry.  In Henkel AG and Co. Kgaa V. The Registrar of Trademarks, the Court observed that the Registrar took an easy approach and only took note of the fact that the rival marks were similar.  However, the Court held, that the Registrar failed to consider other aspects such as the fact that one of the cited marks was already deemed as abandoned and another cited mark was opposed by the third-party with whom the applicant had a co-existence agreement.     In Mitsubishi Materials Corporation V. The Senior Examiner Of Trade Marks, the Court further explicitly directed the Registry to honor the law and principles of natural justice and give an applicant a reasonable opportunity to respond to any additional objections raised by the Registry at a later stage.   We are sure that the holdings in these recent cases will, undoubtedly, go a long way in seeing better quality of examination at the Registry.

With the global population surpassing 8 billion, raising health and environmental consciousness, and the need to meet the United Nations SDGs, there is a notable increase in investment and innovation in plant-based meat and meat analogue products. This is a first part of a two-part article aimed at compiling the global innovation landscape and market trends in the meat substitutes industry using publicly available resources and patent data. What are Meat Substitutes? Meat substitutes are edible products derived from plant-based sources or products developed in a lab using advanced techniques. As a viable substitute, they closely resemble conventionally produced meat. Meat substitutes go by different names like meat analogues, alternative protein, cell-based meat, cultured meat, artificial meat, and clean meat, among other names. Advancements in science and technology, and new food formulations are driving the development of meat analogues and their production methods. Market Trends The global plant-based meat analogue market is estimated to be approximately 8.5 billion dollars in 2023. This market is expected to grow to 67.9 billion dollars over the next decade[1]. In India, as per Indian Retailer Bureau estimates[2], the plant-based meat market is likely to reach 3,500 Crores rupees by 2026. Wakao Foods, an Indian startup, in June 2023 announced its largest-ever shipment of jackfruit-based meat products weighing 13 tons to the USA[3]. All indicators point out that the plant-based meat market is rapidly expanding, and India is gearing up to play its role in this transformative sector. Meat Analogues Patent Insights Meat analogues can be broadly categorized into plant-based meat and cultured meat. Globally, there are over 5,000 patent applications covering various inventions related to meat analogues composition, preparation methods, different agents/ingredients, specific characteristics, machinery, cell cultures, packaging etc. · Global innovation landscape: The companies investing/innovating in the meat analogues space appear to choose China, Europe, the USA, South Korea, Canada, and Australia as their primary markets for protecting their inventions, as can be inferred from Infographic-1. India features among the top 10 choices for global investors/innovators in this space to protect their inventions. Infographic-1: Count of patent families related to meat analogues by country · Meat Analogues Technology Innovation & Investment Trend: The innovation trend (no. of patents filed) in meat analogues and plant-based meat space is on the rise since 2010, with a notable spike after 2019. Clearly, the investment trend and thereby the innovation trend in this space is rapidly rising, as depicted in Infographic-2. Patent data for the years 2022 and 2023 is not considered due to a lack of complete information. Infographic-2: Annual count of patent families globally related to meat analogues for the period 2003-2021 · Companies investing in protecting their innovations globally The patents in the meat analogues space are spread out amongst multiple players, and there are no clear monopolies in this space. Globally, big conglomerates such as Nestle, Unilever, P&G, and Marsare leading the innovation in this space. DSM-Firmenich is leading the innovation in aroma, taste, texture, and nutrition aspects of meat analogues. Refer to Infographic-3 for entities pushing the boundaries of meat analogues globally. Infographic-3: Count of patent families of Top 13 companies globally, in the meat analogues space · Companies investing in protecting their Innovation in India Mirroring the global trend, in India, the patents are spread-out among different entities in the meat analogues space with no monopolies. Foreign companies are evidently taking the lead in the Indian market. Interestingly, foreign startups like Aleph Farms, Impossible Foods and Redefine Meat are also showing interest in the Indian market by filing patents in India. Refer to Infographic-4 for top entities filing for patents in the meat analogues space in India. Infograph-4: Count of patent families of Top 10 companies filing in India, for the meat analogues patents Conclusion The meat substitute/analogues industry is experiencing an impressive surge in investment and innovation, driven by the rising population, health and environmental consciousness, and the United Nations SDGs. With the market projected to grow significantly in the coming years, both established conglomerates and startups are actively protecting their innovations worldwide. India, as a key market in this transformative sector, is attracting the attention of foreign companies and startups alike. However, to fully harness the potential of this growing market, there is a need for Indian businesses to innovate in this space, protect their intellectual property rights, and explore opportunities to expand globally. Up Next >> In part two, we delve deep into specific aspects of meat analogues that could be protected under Indian patent law and explore strategies for building a patent portfolio for companies and startups active or aspiring to venture into this space. [1] https://www.futuremarketinsights.com/reports/meat-substitutes-market [2] https://www.indianretailer.com/article/whats-hot/consumer-behavior/plant-based-meat-market-to-reach-rs-3-500-crore-by-2026.a8185 [3] https://economictimes.indiatimes.com/industry/cons-products/food/wakao-foods-exports-13-tonnes-of-jackfruit-based-plant-meat-to-the-usa/articleshow/101298442.cms