WEEK 1

TASKS ASSIGNED
1. Finding relevant case law 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. –
 Nokia Corporation Vs. Deputy Controller of Patents and Designs 2011(46) PTC
70 Mad
 Kailash v. Nanhku (2005) 4SCC 480,
 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

2. 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. A Takedown notice could be sent to Copyright office of Australia under REG 201
of the Copyright regulation 1969 of Australia.
4. Trade mark action/ Passing off.

3. Research on Media Laws

4. Research on licensing of cover versions of songs

5. Research on infringement of copyright over websites

 Limitations as to making of a cover of a foreign song.

 Whether embedding
 Licensing YouTube
of sound videos constitute copyright infringement?
recording
 Licensing of a cover version of a sound recording.
 Procedure to obtain license under section 31 of copyright act, 1957

 Procedure for ‘takedown notice’ to the infringing website

 Procedure for UDRP complaint

6. Analysis of the new Trade Mark rule 2017

 Prepared a note on the comparative analysis of Trademark Rule 2002 and the
Trademark Rule 2017.

7. Research on the doctrine of Patent Exhaustion

 Research on Principle of exhaustion followed by the law in China
 Research on Dectrine of First Sale in USA and China
 Research on Parallel imports of patented products

8. Finding Case Law

 Finding case law supporting the proposition - ‘non-statutory guidelines are not
enforceable in a court of law’

WEEK 2

1. Drafting of opposition
 Drafted opposition against Trade Mark “FIZZOLCAL-1000” for Nestle
 Drafted opposition against Trade Mark “EXTRALUBE LG” for LG corp.
2. Research on John Doe suits
 Jurisdiction of court in john doe suits
 Appropriate court fee in john doe suits
3. Research on passing off
  Value of doctrine of prior use in comparison to doctrine of reputation and
goodwill
4. Assistance in documentation
5. Research on Media Laws
 Media Law and constitution
 Media Law and IPR
 Media Law and contracts
 Personality Rights

WEEK 3

1. Research for opinion

 Opinion to LG on possible action for infringement against Samsung for use of
trademark ‘QLED’
 Opinion to SANTAK electronics on possible action for infringement against
use of trademark ‘SANTECH’

2. Rechecking of compilation of documents

 Proofreading/re-checking compilation of Documents for DESAY

3. Research on Bit coin

 Complete research on Bitcoin technology and its legal status across the globe.
 Regulatory framework and possible legal issues revolving Bitcoin system

4. Research on registration of music album

 Requirement of NOC from author- requirement if author dies heirles
 Copyright registration procedure of a music album

5. Research on copyright law

 Enforcement of copyright in ‘Sound recording’ and ‘musical work’ – how

 Difference between ‘sound recording’ and ‘musical work’ under copyright law
and possible differences in registration process.
different?

6. Research for case laws

 Research on powers of registrar to condone delay in filing of TM-6 (counter
affidavit)

7. Case note
 Prepared a case note/summary of Britannia ltd. V. ITC ltd ( FAO(OS)
(COMM0 77/2016 & CM Nos. 33194-97/2016)

8. Research on passing off

 Passing off as a Qua timet action.

 Complete research on action of Passing off in all kinds of intellectual

property.
 Evolution, Ingredients, damages-calculation of passing off
WEEK 4