Guidelines for Accessibility and Reasonable Accommodation for Persons with Disabilities (Guidelines) is a set of guidelines issued by the Office of Controller General of Patents, Designs & Trademarks (O/o CGPDTM) vide Order dated March 04, 2022. These guidelines are an attempt to align interactions of IP Offices under O/o CGPDTM (IP Offices) with the Rights to Persons with Disability Act (RPwD Act) to provide two-fold facilitation – (1) accessibility and (2) reasonable accommodation to Persons with Disabilities (PwDs) who interact and practice with the IP Offices.

By virtue of the guidelines, O/o CGPDTM takes the initiative to make ICT-related trademarks, documents, and other online facilities and systems more accessible. A nodal officer (disability) [nodal officer] has been appointed by O/o CGPDTM on a temporary basis to address the needs of agents, attorneys, and other PwDs.

According to the Guidelines, in order to facilitate accessibility, installation of screen readers; audio speakers; and braille printers at appropriate locations have been ordered. The same would also be provided on the receipt of an email by a PwD to the nodal officer seeking assistance with specific mention of the Controller/Registrar/Examiner before whom a representation has to be made. Similar facilities are also made accessible to Patent and Trademark Agents with disabilities.

As for reasonable accommodation, the Guidelines prescribe that the same would be provided by O/o CGPDTM upon a request of a PwD to the nodal officer, made in advance. The nodal officer shall also consult with the concerned Controller/Registrar/Examiner if what is requested is a reasonable accommodation. Also, while determining the most appropriate accommodation, the nodal officer shall discuss specific requirements with the requestee and also with the concerned Controller/Registrar/Examiner.

The Guidelines provide that the nodal officer may also provide sufficient time to PwDs for converting documents into accessible formats, appropriate adjournments and time extensions not exceeding fourteen days are also provided with prior consultation with the Controller/Registrar/Examiner. In case of denial of any request for reasonable accommodations, the nodal officer shall provide reasons for such denial.

The Guidelines also include a grievance redressal mechanism by way of which the nodal officer is duty-bound to address all grievances pertaining to accessibility and reasonable accommodation. Non resolvent of the same within a period of ten working days entitles the seeker to send a grievance to the O/o CGPDTM. The requisite contact details of the nodal officer (disability) and O/o CGPDTM are provided in the Guidelines. 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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The 161^st Parliamentary Report on “Review of the Intellectual Property Right Regime in India” recommended curtailing the time period of advertisement of a trademark application from 4 to 2 months. The author believes that a shorter advertisement period will facilitate more trademark filings.

Being a nation with a significant working population and its current standing among many countries to file a large number of trademark applications annually, India might have to ensure quick and prompt prosecution of applications through to registration. While theoretically, an application can, in the absence of objections and oppositions, attain registration within a timeframe of 7-10 months, this timeframe practically often serves as the minimum period for an application to proceed to publication in the Trade Marks Journal.

Contentious proceedings (such as oppositions) are lengthy and take a minimum of 18-24 months for their final disposal, adding another point for delay in prosecution and the subsequent issuance of a registration certificate. The entire proceeding entails the stages of submission of pleadings, evidence and scheduling of hearings before the TM Office. Delay in service of pleadings, evidence and hearing notices contributes to further delay in the proceedings and consequently, registration of the application. 

While each stage in trademark prosecution is important to ensure proper scrutiny, transparency, and justice to the parties, reducing the timeline for advertisement could serve as the first step in expedited prosecution of an application. It could also encourage proprietors to secure formal protection of their brands on the guarantee that the process will be time-bound. Start-ups would also be encouraged to protect their trademarks at their inception without worrying about the long timeframes and non-routine costs associated with requesting expedited processing. The author believes that the resultant increase in trademark filings would also have the added benefit of increased revenue for the TM Office.

Given the TM Office’s current schedule of publishing Trade Marks Journals on a weekly basis, interested parties can conduct their due diligence and monitor potentially conflicting marks within the 2 months and pursue an opposition against such concerning applications. In this regard, a 2-month period would also suffice as opposed to the current 4-month period which adds a degree of laxity to the process. The 2-month model has proved successful in several jurisdictions including in the United Kingdom, Spain, and Japan, among others, and the author believes it could also be fruitful in India.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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India follows the First to Use principle, therefore, use of trademarks in commerce is of utmost importance. It, thus, becomes necessary to monitor the usage of trademarks. In India, there is no mechanism to audit the post-registration use, making it possible for a trademark to be registered indefinitely without being put to actual use. The author opines that there is a need to implement a post-registration trademark audit programme.

It is well-settled that the non-user of trademark does not deserve monopoly. Otherwise, this would lead to trafficking of trademarks and be prejudicial to the interests of bonafide parties. It is indisputable that several trademarks, despite attaining registration, have not been put to actual use for some or all goods/services claimed thereunder. Such registrations, in turn, become an impediment to new legitimate applications from proceeding to registration. The ostensible and non-continuous use of a trademark can have an adverse effect on bonafide users. This also creates a space for malafide actions such as trademark squatting.

In 2017, USA implemented a similar program which proved successful. Indian Trademark Office (“TMO”) is among the first in the country to implement its services over the digital space. This provides the feasibility for adoption of this program with Artificial Intelligence to monitor and track usage of trademarks post registration in a timely and organized manner.

This program would help in expediating the adjudication of the pendency of cases at the TMO, specifically rectifications filed on the ground of non-use. It should be made mandatory for the registrant to file an affidavit of commencement of use and/or continuous use within prescribed time periods and periodically, upon attaining registration. The TMO should strictly scrutinize the evidence of use especially in cases where applications proceeded to registration on a ‘proposed to be used’ basis.

Moreover, this program would also contribute to the revenue of the TMO. The TMO may issue office actions to call upon the registrant to furnish evidence of use within a stipulated timeframe. Failing which and/or in the absence of sufficient reliable evidence, the TMO may also impose fines upon the registrant for lack of bonafide use of the trademark while directing such registration be expunged from the register or imposing conditions thereof.

The author opines that this program would effectively help in cleaning out the register and maintain its sanctity. Hence, the implementation of the post-registration audit program would prove beneficial to the interests of legitimate parties and also keep up with the objective of the trademark law for the time being in force.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

As per the current IP regime worldwide including India, inventorship (or authorship) in case of Artificial Intelligence (AI) made inventions (or creations) vests with its inventor (or creator). Claims have been made in several countries to name AI as the inventor of inventions that are made by AI without any human intervention. This would logically require granting artificial legal personhood to AI and amending IP laws across countries including India. As like other legal entities, granting artificial legal personhood to AI results in bestowing it with legal rights and obligations. In the context of IP, the legal right confers the inventor an exclusive right for a fixed period of time that prevents others from using his invention without his consent. This allows the inventor to make returns on his invention which creates incentives for promoting further innovation (or creation). However, in my opinion, granting artificial legal personhood status to AI, which makes them eligible for inventorship status, is not necessary to further innovation, as AI systems are unreceptiveto any incentives created.

In order for an incentive to be a stimulus for further innovation, the entity which possesses the inventorship status must be receptive to the incentive that is created. Unlike other artificial legal entities like corporations, the incentives created by way of granting inventorship status for AI made inventions, can be realized by only their creator(or operator) due to the nature of complexities involved in financial operation of the AI.

While corporations function financially independent of its members, no matter the level of technological sophistication achieved by AI, it is still a product of humanswho oversee its financial aspects. For example, the costs incurred during the development, and marketing of AI made inventions are borne by its owner as AI is incapable of bankrolling these investments by itself. The returns enabled by way of grant of IPR have also to be handled by its owner due to its incapacity to operate independently.

Thus, even after the AI attains inventorship status, it still has to be controlled by humans. This means that the financial incentives will also be realized by its owner, which is anyway the case if the owner of the AI is made the inventor for the AI made invention. Therefore, in my opinion, granting inventorship to AI systems by recognizing them as artificial legal persons for the purpose of furthering AI made innovation is superfluous and unnecessary as the incentives created either way will only be realized by the owner of the AI.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

The Coronavirus Disease 2019 (“COVID-19”) has provided an impetus to certain unpopular sectors in which it has brought about unprecedented change. One such sector is the Indian market for counterfeit products. While counterfeit products have existed in our Indian markets since a long time, the spread of COVID-19 in the country witnessed an increased availability of such products. The author believes that the ongoing pandemic has indeed acted as a strong catalyst in increasing counterfeit products in the Indian market. 

The shortage of Covid-19 related necessities especially during the first two waves of the ongoing pandemic had instilled a deep-seated fear in the minds of people. This fear coupled with a strong need for protection and security led to desperate measures to procure and unfortunately, hoard most Covid-19 related necessities. The author believes that it is the ‘dire’ need of  necessities (or in most cases, anticipation of a dire need in future) that has caused the huge imbalance in the demand-supply chains across the globe. This need created opportunities for the production of essential goods that could be made readily available as the demand for such products increased. The huge demand thus led to the production of counterfeit goods by numerous local and small-scale manufacturers and businesses.

The current market scenario has been instrumental in providing opportunities to small-scale manufacturers and sellers of  goods to revive their incomes that were either stopped or significantly reduced during the nationwide lockdowns and subsequent loss of livelihoods. Small businesses have monetized on the need and fear in the minds of people  and created counterfeit products in massive numbers. Even though the gap between demand and supply might have been bridged, the aim to exploit the public at large under the garb of providing cheaper substitutes to life-saving essentials cannot be ignored. This has proved to be quite dangerous as the usage of such counterfeit goods is not effective and efficient to fight against the contagious virus and they are a threat to human health and safety.

The counterfeit goods are being sold with false claims of them being effective enough to lessen the impact of the virus or even save one from contracting it in the first place and  unfortunately, gullible customers fall prey to such false claims. Moreover, besides being sold via traditional trade channels, these counterfeit products are also being sold through e-commerce platforms in India. These platforms have made it extremely convenient for people to purchase desired quantities of such necessities from the comfort of their homes. These online markets are a breeding ground for such sellers of counterfeit products as it is easy for them to target vulnerable customers who might not be vigilant enough to check the authenticity of the source of goods being purchased by them.

It is noteworthy that these are desperate times and not every consumer is mindful to do their due diligence before purchasing essentials online. Therefore, there should be checks and compliances for essentials sold during a health crisis such as the ongoing pandemic. The lack of effective measures towards curbing the problem of counterfeit goods is even detrimental to IP rights that vests in the owners of various brands and stringent measures should be implemented uniformly across the country to safeguard the same. Therefore, the author believes that the current market scenario during the ongoing pandemic has proved to be more conducive to the manufacture and sale of counterfeit products than ever before.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP