Archives for June 2010
According to the Indian Patents Act, once a patent has been granted in India, an annual Statement of Working of Patent, known as Form 27, is required to be filed at the Patent Office within 3 months of the end of every calendar year (i.e. the deadline to submit the 2009 statement will be 31 March 2010). The objective of the submission is to indicate the extent to which the patented invention has been commercially worked in India for each respective year.
A notification was recently issued by the Controller of Patents regarding this, reminding patentees and licensees that evidence of use of a patented invention must be submitted on or before the 31st of March every year. Those who fail to comply with this regulation may incur a fine of up to 1 million Rupees (USD25000).
Singapore Patent No. SG 42669, entitled “Arachidonic Acid and Methods for the Production and Use thereof”, owned by Martek Biosciences Corporation has the dubious honour of being the first Singapore Patent revoked by the Intellectual Property Office of Singapore (IPOS) under Section 80 of the Singapore Patents Act.
By way of history, the SG 42669 Patent, a national phase application of PCT Application No. PCT/US96/00182 entered into national phase in Singapore on 2 July 1997 as Singapore application No. 9703038-1, and was subsequently granted on 30 March 1999.
The Patentee submitted amendments to the patent claims on 6 September 2006, pursuant to Section 83 of the Patents Act and rule 80(3) of the Patents Rules. The amendments were subsequently advertised on 30 October 2006 in Patents Journal No. 200610A without any further opposition and accepted after the prescribed opposition period. These amendments were allowed as they did not result in the specification disclosing any additional matter nor did they extend the protection conferred by the Patent.
A mall in Kota Kinabalu has retained its rights to use the trademark “Suria” (which means “Sun” in Sanskrit and “Malay”) after a one year battle in the High Court of Kota Kinabalu. In 2009, the owner of Suria KLCC mall, Suria KLCC Sdn Bhd (“Suria KLCC”) sued the developer of Suria Sabah mall, Makamewah Sdn Bhd, for trademark infringement and passing off and sought for an injunction and damages.
The case was decided in favour of the Suria Sabah mall developers (“SS developers”) on the grounds that (i) there was no proof adduced to show that SS developers misrepresented themselves, (ii) “Suria” is a common, non-distinctive word and thus Suria KLCC had no exclusivity to the word, (iii) Suria KLCC’s registered mark is not merely for the word “Suria” but for “KLCC” and the swirl device as well; the combination of the elements makes the mark distinctive.
In the recently decided case of JOST CRANES Gmbh & Co. KG v. JOST CRANES SDN BHD which was heard at the Kuala Lumpur IP Court, Judge Dato’ Azahar bin Mohamed decided in favour of the German company, Jost Cranes GmbH & Co. KG and expunged the registered
trademark from the Trademark Register.
The JOST mark was registered by Jost Cranes Sdn Bhd (the Respondent) on 22 July 2003, in Class 7 for cranes including parts and accessories thereof.
The German company (the Applicant) initiated an expungement action in 2009 on the grounds that the JOST mark was wrongfully entered into Register. The Applicant argued that the Respondent could not be the owner of the mark since the Applicant is the first user of the JOST mark in Malaysia.