30 Jan 2013

Renewal Of An Expired Trademark In India And United States

Trademark law of India is passing through an interesting and developmental phase. Recently Samsung has raised the issue of international exhaustion of a trademark under Indian trademark law. Similarly, trademarks registrations in India have also increased as India is becoming a favourite destination for commercial activities world over.

Trademark registration in India is regulated by the Trademarks Act 1999 of India. A registered trademark is valid for a period of 10 years that can be renewed for another 10 years at a time. Further, international registration of trademarks under Madrid Agreement and Madrid Protocol can also be explored by applicants. However, the Madrid Agreement and Madrid Protocol and its applicability and implementation in India are still in a flux.

There may be cases where a trademark holder fails to renew his/her/its trademark in time. Renewal of an expired trademark is the only option left in such cases. In India even if the mark has been expired, one can apply for its re-registration. If someone else applies for registration of expired trademark as per the prescribed procedure, owner of expired trademark can file objections at the registry, tribunal or appropriate forum.

In United States (US), to keep the registration alive or valid for all trademarks registrations, except for non Madrid Protocol based registrations, the registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of his/her/its registration.

For Madrid Protocol Based Registration, after the protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of his/her/its U.S. registration and the invalidation of protection of the international registration by the United States Patent and Trademark Office (USPTO).

Under Section 8 of the Trademark Act, 15 U.S.C. §1058, a §8 Declaration of Continued Use is required to be given by the trademark owner. The Declaration is a sworn statement, filed by the owner of a registration that the mark is in use in commerce. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.

The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods.  The USPTO has no authority to waive or extend the deadline for filing a proper §8 Declaration. Registrations finally cancelled after the expiry of permissible period due to the failure to file a §8 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act.  The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration.  Registrations finally cancelled after the expiry of permissible period due to the failure to file a §71 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.  

The holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal of the international registration with the International Bureau (IB). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.

Perry4Law hope this information would be useful to all concerned stakeholders.

Source: IPR Services In India.

20 Jan 2013

Online Gambling Laws And Regulations In India

Online gambling in India has aroused great interest among many e-commerce entrepreneurs of India. This is because online gambling is a very remunerative and profit oriented business. However, online gambling is also a complicated business filed as many laws and technical issues have to be resolved at the same time.

We have a central law on gambling called the Public Gambling Act of 1867. Similarly, we have many state laws on gambling that are mostly based upon the central law. Further, almost all the state laws are regulating real world or offline gambling in India. The exception in this regard can be found in the laws applicable in places like Goa and Sikkim.

Recently Goa has made its casino laws very stringent keep in mind the money laundering, black money and tax evasion issues in mind. Similarly, Sikkim is also in the process of harmonising its laws with the central laws.

As far as judiciary is concerned, the Supreme Court of India has made a distinction between skills based and chance based gaming activities. Of course, each case depends upon its own facts and circumstances and the respective state law and we cannot apply one decision uniformly in all cases of gambling and online gambling. 

The e-commerce laws and regulations in India are still at the infancy stage. As a matter of fact, a majority of e-commerce portals and players in India are not following the laws of the land in true letter and spirit. Surprisingly, there is a general misconception among the e-commerce players of India that for running an e-commerce website in India they need not to follow much law. On the contrary, there are well recognised legal requirements to start an e-commerce website in India and the legal formalities required for starting e-commerce business in India.

The chief among these e-commerce players are online pharmacies, online gambling and gaming portals, electronics e-commerce websites, etc. They fail to understand that use of technology has brought additional legal issues that are primarily techno legal in nature. Their continued ignorance may bring civil, criminal and financial penalties. The recent spate of FDI crackdowns by India government proves this point.

At Perry4Law and Perry4Law’s Techno Legal Base (PTLB) we believe that cyber law due diligence, Internet intermediary liability and cyber due diligence for Indian companies must be kept in mind by various e-commerce websites and players. The skill and chance and state subject legal arguments are not sufficient to comply with complicated techno legal requirements of India as on date. So before launching an e-commerce portal, the concerned person or company must make it sure that techno legal requirements are duly complied with.

Source: E-Commerce Laws And Regulations In India.

6 Jan 2013

Optical Character Recognition (OCR) Legal Issues India

Optical character recognition (OCR) is one of the most important stages of e-discovery or cyber forensics process. OCR is the process where images of handwritten, typewritten or printed text are converted into machine-encoded text using the mechanical or electronic conversion.

The main purpose of OCR is to digitise printed texts so that they can be electronically searched, stored more compactly, displayed on-line through virtual data rooms, and used in machine processes such as machine translation, text-to-speech and text mining. OCR is also very important for presenting and defending claims and obligations in civil and criminal proceedings.

OCR, e-discovery and cyber forensics are sometimes combined while investigating financial frauds and crimes, serious frauds, forensics audit, white collor crimes, corporate frauds, fraud risk analysis, IT and cyber frauds, etc.

However, there are certain techno legal issues that must be taken care of while engaging in the OCR activities. If these techno legal issues are not followed properly, the end OCR product may not be admissible in a court of law or other investigation.

Further, only relevant material must be converted into legally admissible electronic records, including OCR. A proper chain of custody must be maintained at all stages of converting printed and other text documents into digital documents and OCR.

There is no sense in converting the entire paper based document s in to electronic format as not all electronic versions would be relevant to the case or investigation. Even lesser electronic records and OCR would be held admissible in a court of law.

According to Perry4Law and Perry4Law’s Techno Legal Base (PTLB) the most important attribute while engaging in the OCR exercise meant for litigation purposes is to first ascertain the relevant documents and then convert them into digital format keeping in mind the admissibility criteria while following proper chain of custody. 

If you are interested in our techno legal services, you may contact us in this regard. See our techno legal services, cyber forensics services, US, UK and EU laws compliances, etc in this regard.

Inter-Ministerial Group Will Study TRAI Recommendations On Broadcasting

Telecom Regulatory Authority of India (TRAI) has recently given some very far reaching and significant recommendations to the Indian government. TRAI’s recommended liberal shareholding rules for telecom service providers is one such recommendation. TRAI has also provided its recommendations regarding the feasibility of entering into broadcasting business by the Central and State Government(s).

Now an inter ministerial group has been set up to examine recommendations made by TRAI regarding the broadcasting business by Centre and States. The group has been set up by the Information and Broadcasting Ministry (I&B Ministry) and it would be headed by the Additional Secretary J S Mathur.
The I&B Ministry would reach a conclusion only after the group studies the TRAI’s recommendations. I&B Ministry had earlier sought clarifications from TRAI on whether Central or State Government(s) or entities on which they have control could be allowed to enter broadcasting or distribution of channels.

TRAI had given an opinion that Central Government Ministries, Departments, Companies, Joint Ventures or Entities which belong to or are funded by Centre or State Government(s) should not be allowed to enter in to the business of broadcasting and or distribution of TV channels.

Many States have approached the I&B regarding the issue at hand and the group’s finding may help the Ministry at reaching a conclusive decision.  

TRAI Recommended Liberal Shareholding Rules For Telecom Service Providers

Telecom Regulatory Authority of India (TRAI) has recommended liberal and relaxed shareholding rules for service providers provided the stakes do not lead to control of spectrum. This means that no spectrum trading would not be permitted. TRAI has provided its suggestions to the Department of Telecommunications (DoT).

Further, as per the recommendations, new service providers will be able to own more than 10% equity in more than one operator in a service area. However, it will be permitted only if the operator owns spectrum in just one company. This means that the substantial equity/cross-holding requirement should only be linked to spectrum holding.

For instance, a mobile service provider can own a company that is operating fixed line services in the same service area. This was not permitted under existing guidelines. At present, an operator is allowed to own more than 10% equity in only one company in a service area.

The regulator has also recommended that sharing of the spectrum should be permitted for the new operators. Old operators will have to pay the new price of spectrum determined through the auction.

If accepted, this would be a major relief to the new operators. Service providers are demanding that spectrum sharing should be permitted as it would reduce the cost of providing services and would increase efficiency.

MTS Plans To Continue Its Operations In India In 2013

Telecom operations in India were in doldrums in the year 2012. The licences of many telecom service providers involved in 2G spectrum allocation were cancelled after the directions of Supreme Court of India.

Even taxation issues were in limelight when Vodafone dragged the disputed tax to the level of Supreme Court and won the case. Now Indian government has once again served a tax due notice upon Vodafone. Vodafone has reacted to the same by denying any pending tax payments and has made Vodafone’s intention of invoking international arbitration for tax disputes with India very clear.

One of the telecom operators whose licence was cancelled by the Supreme Court is MTS. The Russian industrial group Sistema owns 57% of shareholding and stakes in the MTS and the remaining is with its Indian partner. MTS has also made it clear that it will continue its operations after its licences expire on 18 January 2013. The company is optimistic for a favourable decision in its favour to an appeal filed by it against a decision in 2012 to cancel its licences.

Telecom Regulatory Authority of India (TRAI) has already told all telecom operators affected to tell their customers of the expiry of the licences after 18 January. MTS has responded by saying it “wishes to inform millions of its customers that being fully committed to its customers and the investments it has made in India, it intends to continue its operations beyond 18 January 2013 and in this context has taken and is taking all the possible steps, to ensure the continuity of its services beyond 18 January 2013”.

MTS has already filed a curative petition against the judgment seeking to annul the cancellation of its licenses. MTS believes that it has a very good case in the curative petition both in facts and law and is hopeful of a favourable order of restoration of its licences.

5 Jan 2013

Vodafone May Invoke Arbitration For Fresh Tax Demands By India

The Vodafone taxation controversy in India has again resurfaced. Vodafone has been served with tax due notice by Indian tax authorities. Vodafone reacted in the much anticipated manner and denied any tax due on its part. Vodafone is also feeling confident due to the ruling of Supreme Court of India in its favour.

Meanwhile, the Parliament of India amended the tax law of India with retrospective effect. At Perry4Law, we believe that legally there are few options still available to both Indian government and Vodafone. It is not the situation that either party to the dispute has absolute case.

While the Indian government has the backing of a retrospective law yet Vodafone can invoke arbitration proceedings before international tribunals under the concerned Bilateral Investment Protection Agreement.

In fact, Vodafone has already served an arbitration notice to the Indian government regarding the proposed tax. However, Indian government declared such notice to be premature and ignored it. Now that Indian government has raised fresh tax liability claims, Vodafone may serve a fresh notice to initiate the international arbitration proceedings.

Vodafone has already acknowledged the receipt of fresh demand notice by Indian tax authorities. However, Vodafone told Indian government that it is not liable to any tax on the deal in question. The reminder does not include a deadline for payment and it pertains to the alleged capital gains tax arising from the sale of assets by Hutchison Whampoa to Vodafone in 2007.

Now that a fresh tax demand has been raised, it is for the Vodafone to challenge the same either in Indian courts or at an international arbitration forum. It seems Vodafone would prefer the arbitration mode as against the litigation in India but only time would tell what would be Vodafone’s choice.

Vodafone Again Served With Tax Due Notice By Indian Tax Authorities

Vodafone taxation controversy in India is not willing to die. Vodafone has claimed that on Saturday it has received a reminder notice from Indian tax authorities on disputed tax dues. The dues pertain to the acquisitions made by Vodafone in the year 2007 of Indian mobile assets. However, no deadline has been prescribed for the payment by the tax authorities of India.

Vodafone has given a standard reply by stating that according to Vodafone’s beliefs no tax is due to be paid by it. Vodafone is of the firm opinion that no tax is payable on the above transaction made in the year 2007. Vodafone’s major relief point is the judgement given by the Supreme Court of India in its favour.

The only option left for India was to formulate and enact a validation law that can cure the defects pointed by the Supreme Court while adjudicating the Vodafone’s case. The government exactly did the same thing by amending 50-year-old tax laws enabling it to make retroactive tax claims on long-concluded corporate deals.

The constitutionality of such retrospective validation law is still to be analysed. However, this retrospective amendment has once again brought to life the dead Vodafone taxation controversy.  

4 Jan 2013

Supreme Court Asked Indian Government To Monitor And Regulate All Clinical Trials Of Experimental Drugs In India

Pharmaceuticals are both boon and bane depending upon its use and misuse. For instance, clinical trials of experimental drugs in India is going more on the side of a bane that is emerging as a potential threat and havoc to human lives in India.

So much so that the Supreme Court of India has directed Health Ministry of India to monitor and regulate all clinical trials of experimental drugs in the country until further notice. The Court has also showed its unhappiness with the growing use of clinical trials of experimental drugs in India without much monitoring and said that this scenario has caused “havoc”.

Supreme Court did not stop here and it revoked the power of the Central Drugs Standard Control Organisation (CDSCO) under the Drugs Controller General of India (DCGI) in this regard as well. CDSCO has been the apex agency for monitoring clinical trials in India so far.

The Court has also directed the health secretary to file an admissible affidavit within four weeks after it refused to accept one filed by deputy drugs controller. The Court refused to admit such affidavit because in October the Court made its intentions clear that it may bar clinical trials in India unless the Health Ministry provides information within a month regarding deaths during such programmes. The Court also sought explanation regarding compensation and general practices when new drugs are tested on Indians.

Surprisingly, no laws were in place between 2005 and 2012 for new chemical entities and yet the government was approving trials very casually. If this is not enough, illegal and unregulated online sales of prescribed medicines in India are happening right under the nose of Indian Government. Online pharmacies in India are violating Indian laws and Indian Government is least interested in curbing this practice.

We have weak health related laws in India, including those pertaining to online sales of prescribed medicines in India. We have no dedicated data protection laws in India and privacy laws in India. Even data exclusivity laws in India need to be formulated. A regulatory framework for data exclusivity In India can be really helpful in this regard.

Google Settles Patents Licensing And Antitrust Claims With FTC

In a much anticipated move, Google settled the patent abuse and antitrust complaints with the federal Trade Commission (FTS) of United States (US). However, the antitrust probe initiated by the European Union (EU) is still pending a resolution.

Various projections have revealed that Google, Facebook, Samsung etc may face more scrutiny from EU and US Regulators. As per Global Taxation And Anti Competition Regulatory Issues In 2012 And Projections Report For 2013 By Perry4Law,  the year 2013 would see an enhanced regulatory scrutiny by various regulatory bodies and authorities throughout the world. Countries are also entering into bilateral treaties to make the respective companies liable for their acts or omissions.

The report further states that as on date many multinational companies and technology giants are avoiding tax liabilities and are avoiding compliance with various regulatory requirements. This would not be an easy task in the year 2013.

These predictions and projections seem very accurate as many cases were settled in the year 2012. These include cases and settlements pertaining to Walmart probe, UK tax avoidance case, unauthorised sale of e-book in China, e-book price escalation lawsuit, EU-publishers e-books price fixing settlement,  regulatory scrutiny by EU and US, etc.

In the present case, FTC investigators were of the opinion that they didn't find enough evidence to support complaints that Google unfairly favors its own services in search results. Google has also agreed to license certain patents to mobile phone rivals and stop a practice of including snippets from other websites in its search results.

To give effect to this settlement, Google will sign an agreement requiring the company to charge reasonable prices to license hundreds of patents deemed to be essential for rival mobile devices such as Apple Inc's iPhone, BlackBerry and smartphones running on a Microsoft Corp's Windows software.

Under the FTC resolution, Google's rivals will now be able to request that their excerpts are left out of Google's search results without having to fear that links to their sites will be penalised in Google's search rankings. Google has further agreed to adjust the online advertising system that generates most of its revenue so marketing campaigns can be more easily managed on rival networks.

3 Jan 2013

Google, Facebook, Samsung Etc May Face More Scrutiny From EU And US Regulators

Multinational companies have been trying new policies and strategies to maximise their profits. Sometimes these policies are legally sustainable whereas at other times they violate laws and regulations of one or more nations.

These developments took place in the year 2012. The year 2013 may see more regulatory actions against big multinational companies and technology companies. The Ireland route of tax management may also be closely monitored. In fact, on 21 December 2012, an Agreement to Improve International Tax Compliance and to implement the Foreign Account Tax Compliance Act (FATCA) was entered into between Ireland and United States.

Not only taxation issues but even anti trust issues may see more focus. For instance, Google is already facing an antitrust investigation relating to its search services in the hand of European Union (EU) and Federal Trade Commission (FTC). Google has already settled $22.5 million settlement with FTC over charges that it bypassed Safari browser privacy settings that blocked cookies. Samsung Electronics will be facing charges from the European Commission for breaking antitrust rules in its refusal to provide competitors like Apple access to its technology. The European Commission believes that Samsung abused its dominant position in the market by filing patent lawsuits against its rival Apple

 Meanwhile, the FTC is investigating Google over possible antitrust violations and will subject Facebook to audits of its privacy policy for the next 20 years. FTC would ascertain whether Google's search engine results favour Google products over its rivals'. Although FTC was ready to settle that case before the holidays, without harsh remedies, late last month it shelved the inquiry and put stronger penalties back in play. A resolution is expected in January.

Regarding Facebook, FTC negotiated a consent order with Facebook to settle charges that it had engaged in “unfair and deceptive practices” when changes in its settings revealed personal information that Facebook users had regarded to be private. As part of the settlement, Facebook agreed to audits of its privacy policies for 20 years.

Facebook was also in controversy recently when its subsidiary, Instagram, proposed to deploy users' pictures to serve targeted advertisements. Facebook had to change that plan due to public protests. This is a good sign for privacy protections of the users/consumers of these companies.

Unfortunately, public awareness about privacy protection and data protection is still very poor in India. Even we have no dedicated privacy protection laws in India and data protection laws in India. However, this does not mean that multinational companies and technology companies can take Indian users and consumers lightly.

Source: Legal Enablement Of ICT Systems In India.

Google’s Antitrust Suit For Search Abuses Before FTC May Be Settled Very Soon

Antitrust or anti competition issues are very frequently agitated these days. Not only rival are very particular in bringing their competitors to books who are indulging in antitrust activities but even the regulatory bodies have become very vigilant in launching investigations against defaulting companies.

Perry4Law has already discussed about the Global Taxation and Antitrust Regulatory Issues In 2012 And Projections Report for 2013.  The same has covered most prominent international taxation and antitrust investigations, cases and settlements of the year 2012. The research report of Perry4Law has further projected the trends for the year 2013.

The latest to add to this list is the allegations by Microsoft against its chief rival Google. Microsoft has alleged that Google executives have blocked a full-featured YouTube app for Windows Phone. These allegations have been labeled by none other than the chief lawyer of Microsoft through his blog post.

Google is already facing antitrust investigation regarding its search services and this allegation of Microsoft may put additional pressure upon Google. The antitrust investigation against Google may result in a settlement most probably within this week.

As far as our own experience with Google’s search is concerned, Perry4Law’s Techno Legal Base (PTLB) has observed that Google censored and demoted many of our blogs simply to serve its own commercial interests. For instance, the following blogs have been demoted and subjected to manual action penalty by Google without any reason and justification:

(1) Cyber Forensics In India

(2) Cyber Security In India

(3) E-Discovery Services In India

(4) E-Commerce Laws And Regulations In India

(5) Perry4Law Techno Legal Base (PTLB)

(6) Corporate Laws In India

(7) Techno Legal Online Dispute Resolution Services.

(8) International ICT Policies And Strategies, etc.

Clearly, there is substance in the allegation of misuse of s almost monopolistic position of Google’s search capabilities. Platforms that do not or are not supporting Google’s own commercial interests are frequently demoted and censored.

With the continuous censorship and SERPs manipulations by Google, we have started dedicated initiatives like websites, blogs and news censorship by Google and India blog and a LinkedIn discussion group titled websites, blogs and news censorship by Google and India.

Google is also deliberately engaging in anti DMCA activities. Google has once again removed the original and copyrighted article instead of removing the copyright infringing material. Our article titled “Cyber Security Capabilities of India Must be Strengthened” has been shifted to draft folder by ignorant employees of Google. Even after republication, the original link is not inactive.

We hope both Federal Trade Commission (FTC) and European Union (EU) would consider all the aspects before reaching any settlement regarding Google’s SERPs manipulations. Interested parties may contact us from their official e-mails ids for more information in this regard.

Global Taxation And Anti Competition Regulatory Issues In 2012 And Projections Report For 2013 By Perry4Law

This article is part of the research work of Perry4Law, India’s exclusive techno legal corporate, IP and ICT law firm.

Taxation and antitrust laws are in limelight these days throughout Europe, United States (US), United Kingdom (UK), China, India and other places of the world. Consider the examples of various technology companies that are in the limelight for the wrong reasons.

For example, recently an e-book price escalation lawsuit has been settled by Penguin Group. Similarly, the European Commission and publishers’ settlement for e-book price fixing is another incidence where regulatory bodies have taken acts of technology companies seriously. Media reports are also projecting that Google, Facebook, Samsung etc may face more scrutiny from EU and US regulators in the year 2013.

In the United Kingdom as well regulatory authorities are not happy with the taxation affairs of various multinational and technology companies. Public outcry erupted when allegations of tax avoidance were labeled against Amazon, Google and Starbucks regarding UK Tax Laws.

Even in China companies are facing punishments for violating local laws. For example, Apple has been fined by Beijing Court for unauthorised sale of e-book. Indian government is also not far behind. After canceling the telecom licenses of many telecom companies, now Indian government would ascertain beneficiary in Walmart probe to ascertain possible violation of Indian laws.

The Competition Commission of India (Procedure in Regard to the Transaction of Business Relating to Combinations) Regulations, 2011 have also been formulated by the Competition Commission of India in 2011 to regulate anti competition combinations. The same may be pressed more frequently in the year 2013.

The year 2013 would see an enhanced regulatory scrutiny by various regulatory bodies and authorities throughout the world. Countries are also entering into bilateral treaties to make the respective companies liable for their acts or omissions. Presently many multinational companies and technology giants are avoiding tax liabilities and are avoiding compliance with various regulatory requirements. This would not be an easy task in the year 2013.

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