WEEKLY REPORT

19.07.2021 to 23.07.2021

Day 1 – Date : 19.07.2021 (Monday)

My Guide instructed me to find relevant case laws on the legislative intent over the
amendment of Rule 138 of Patent Rules 2003, in the year 2003.
The rule 138 of the patent rules 2003 reads as-
(1) Save as otherwise provided in the rules 24, sub-rule (4) of rule 55 and sub-rule (1A) of
rule 80, the time prescribed by these rules for doing of any act or the taking of any
proceeding thereunder may be extended by the Controller for a period of one month, if he
thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time made under these rules shall be made before expiry of
prescribed period. (emphasis provided) Prior to the 2003 rules the language of rule 138 was
different to the extent of use of the phrase shall be made before expiry of the extendable
period. The change of the word ‘prescribed’ from ‘extendable’ has caused a problem in
calculating the total period in which one can apply for extension of time. Prior to 2003, the
time for filing an extension for filing a national phase application would be calculated to be
32 months as 31 months (statutory limit for filing national phase application) + 1 month (the
extendable period) . But after the amendment of 2003, the use of the word prescribed
changed the calculation for application for extension to a period of 31 months only i.e the
statutory prescribed period. Our clients were already 8 days late that the prescribed 31
month period and wanted to seek condonation of the delay under rule 138. I was asked to
find supporting case laws for the filing of such application. –
1. Nokia Corporation Vs. Deputy Controller of Patents and Designs 2011(46) PTC 70 Mad
2. Kailash v. Nanhku (2005) 4SCC 480,
3. National Phase Application No 1494/DELNP/2010 dated 4th March, 2010 based on PCT
Application No.PCT/US2008/069688 10th day of July 2008 filed by INFORMATION IN PLACE,
Inc, USA
Day 2 – Date : 20.07.2021 (Tuesday)
Research on Potential action for infringement of Copyright and Trademark against a foreign
Website. Our clients DABUR had a renowned and world famous trademark ‘REAL’ of which
they found unauthorized use under the domain name www.realfruitjuices.com.au in
violation of the trade mark rights of Dabur. The website was also using YouTube embedded
videos, owned by DABUR in violation of copyright of existing in the videos.
The website also featured images of ‘sonai bendre’ who endorses the brand ‘Real Fruit
Juice’ in violation of personality rights of the celebrity (who is no longer ambassador of the
brand).
I was asked to make an opinion on the possible legal actions that could be taken against the
infringing website. The following actions could be taken
1. UDRP complaint can be filed under paragraph 4(a) of the UDRP policy
2. Copyright infringement suit for the unauthorised use of videos/ Cease and Desist Notice
3. Trade mark action/ Passing off.

In the case of trademark infringement, the court may award the following remedies:
- Temporary injunction
- Permanent injunction
- Damages
- Account of profits (damages in the amount of the profits gained from the
infringement)
- Destruction of goods using the infringing mark.
- Cost of legal proceedings.
Also, According to Section 55 of The Copyright Act, 1957, where copyright in any work has
been infringed upon, the owner of the copyright shall be entitled to all such remedies by
way of injunction, damages, & accounts

Day 3 – Date : 21.07.2021 (Wednesday)

My Internship guide gave me a brief about why intellectual property rights are important –

1. Encourages innovation: The legal protection of new creations encourages the

commitment of additional resources for further innovation.
2. Economic growth: The promotion and protection of intellectual property spurs
economic growth, creates new jobs and industries, and enhances the quality and
enjoyment of life.
3. Safeguard the rights of creators: IPR is required to safeguard creators and other
producers of their intellectual commodity, goods and services by granting them
certain time-limited rights to control the use made of the manufactured goods.
4. It promotes innovation and creativity and ensures ease of doing business. It
facilitates the transfer of technology in the form of foreign direct investment, joint
ventures and licensing.

IPR is one of the sources of security for intangible properties which are still open to the
public and which can be quickly replicated by anyone. IP crimes have become the part and
parcel of the digitized era leading to failure of business.

Day 4 – Date : 22.07.2021 (Thursday)

I was taught the essentials of drafting an opposition against a trademark and was showed
how it is done.
Under TM rules 2017, A notice of opposition to the registration of a trademark under sub-
section (1) of section 21, with such particulars as specified in Rule 43, shall be filed in form
TM-O within four months from the date of publication of the trademark journal in which the
application for registration of the trademark was advertised or re advertised.
Where a notice of opposition has been filed in respect of a single application for the
registration of a trademark for different classes of goods and services, it shall bear the fee in
respect of each class in relation to which the opposition is filed.
Where an opposition is filed only for a particular class or classes in respect of a single
application made under sub-section (2) of section 18, the application for remaining class or
classes shall not proceed to registration until a request in Form TM-M for division of the
application together with the divisional fee is made by the applicant.

Where in respect of a single application for the registration of a trademark no notice of

opposition is filed in a class or classes, the application in respect of such class or classes
shall, subject to section 19 and sub-section (1) of section 23, proceed to registration after
the division of the application in the class or classes in respect of which an opposition is
pending.
A copy of notice of opposition shall be ordinarily served by the Registrar to the applicants
within three months of the receipt of the same by the appropriate office:
Provided that where the applicant has already filed the counter statement on the basis of
the copy of notice of opposition made available in the electronic records on the official
website, the requirement of service of copy of the notice of opposition to the applicant shall
be dispensed with.
Day 5 – Date: 23.07.2021 (Friday)
It was the last day of my Internship period. Was given research work to understand the
stages in an Opposition proceeding
Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement : Any person wanting to
oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with
the prescribed fee within four (4) months of advertisement of the mark. It is first sent to the
Registry for review and if all the formalities are met, the Registry will then serve the notice
on the other party.A counter-statement or reply to the opposition must be filed within two
(2) months. There is no extension to file a counter-statement which means that if the
Trademark Applicant fails to file a counter-statement within two (2) months of receiving the
Notice, the mark shall be deemed abandoned. The counter- statement is first sent to the
Registry for review and if all the formalities are met, the Registry will then serve the
counter-statement on the Opponent.
Stage 2 – Filing of Evidence in support of Opposition : Within two months (extendable by
one (1) month of receiving the counter-statement, the Opponent has the choice of
providing evidence in support of his opposition in form of an Affidavit to strengthen the
case. The Opponent can choose to waive filing an Affidavit if he wants to rely on the facts
stated in the notice of opposition. Whatever maybe the choice, the Opponent has to inform
the Officials and the other party within the prescribed time otherwise the opposition will be
tagged as abandoned.

Stage 3 – Filing of Evidence in support of Counter- Statement : Within two (2) months of
receiving evidence/intimation of waiver by the Opponent, the Applicant has to file evidence
in support of his counter-statement /application. The Applicant also has an option to waive
his right to submit any evidence.

Stage 4 – Filing of Evidence in Reply : Within one (1) month of receiving evidence/waiver,
the Opponent again has the option to file additional evidence in support of his opposition.
This option is given to achieve some sort of finality in the proceedings, to rebut the evidence
produced by Applicant.

Stage 5 – Hearing : Ordinarily with three (3) months of the completion of evidence, a
hearing is appointed and the parties are notified. After hearing the parties and considering
the evidence, the Registrar shall decide whether the trademark is to be accepted or not.

SUBMITTED BY
A.MAHATHI POORNIMA
20FLICHH020001
BA LLB SECTION D