March Newsletter - Lex Protector

1. OFFICIAL NEWSLETTER OF LEX PROTECTOR LLP Patent Slump : Global Filings Dip for the First Time in 14 Years Case Brief : Jindal Industries Private Limited v. Suncity Sheets Private Limited and Anr. What’s New : Mexican Trademark Office Implements Important Changes Our Success Story : Navigating Trademark Prosecution vis a vis Controlled Substances Act www.lexprotector.com

2. Patent Slump Global Filings Dip for the First Time in 14 Years For over a decade, global innovation has been on a steady rise, reflected in a consistent increase in patent filings. But a recent report by the United Nations World Intellectual Property Organization (WIPO) throws a curveball. For the first time in 14 years, international patent filings have declined. The report highlights a 1.8% drop in filings in 2023 compared to 2022, totaling 272,600 applications. This dip is attributed to two major factors: economic uncertainty and rising interest rates. With inflation on the rise and a looming recession a concern, businesses are likely tightening their belts. Research and development (R&D), which often leads to patentable inventions, can be an expensive undertaking. In such a climate, companies might be more hesitant to invest in innovation Higher interest rates also play a role. Startups and smaller businesses, which are often at the forefront of innovation, may find it harder to secure funding for their projects due to the increased cost of borrowing. However, the report also identifies a bright spot: India. While the global trend dipped, India bucked the trend and saw an increase in patent filings. This suggests that some countries might be prioritizing innovation even amidst economic challenges. The decline in patent filings is a cause for concern. Innovation is a key driver of economic growth and development. A slowdown in innovation could lead to stagnation in various sectors. It remains to be seen whether this is a temporary blip or a long-term trend. The coming years will be crucial in determining the impact of the current economic climate on global innovation. Written By : Keya Modi

3. Jindal Industries Private Limited v. Suncity Sheets Private Limited and Anr. “Bona fide use of one’s trademark does not amount to trademark infringement ” The Delhi High Court denied an application for injunction filed by the Plaintiffs against the defendants in a dispute over the use of the "JINDAL" brand and noted that Section 35 of the Trade Marks Act permits legitimate uses of personal concluded that the defendants' use of the name did not violate the plaintiff's registered trademarks. an interlocutory names, and Jindal Industries Pvt. Ltd. claimed that the defendants' use of a similar mark infringed upon their registered trademarks and constituted passing off. In response, the defense contended that 'JINDAL' is a common surname, and its usage by Defendant 2, Rachna Nitin Jindal, is legitimate and protected under Section 35 of the Act.

4. Court Findings The Court laid down the following analysis: a. Section 35 starts with a non obstante clause, which gives it overarching applicability over every other provision “in this Act”. The Defendant would be entitled to the benefit of Section 35, in respect of the use, by her, of “Rachna Nitin Jindal” or, for that matter, “R N Jindal” or even “RNJ”. In each case, what is clearly been referenced is her name. b. The Court observed that the disputed mark, prominently featuring 'RNJ' and 'R N Jindal', did not overly emphasize 'JINDAL' to suggest infringement. It asserted that the entire mark, not just 'JINDAL', should be considered. c. The Court discussed the consequences of registering common names as trademarks, emphasising that monopolising a common surname to exclude others from genuine use is not supported by law. d. In contrast to the US, where Parker Knoll may imply otherwise, Section 35 protects genuine use of one's name, even if it's used as a trademark. While Parker Knoll suggests innocent use is unacceptable, in India, bona fide use is protected under Section 35. The application for interim injunction filed by Jindal Industries Pvt. Ltd. was dismissed, with the Court finding that the plaintiff did not establish a prima facie case of trademark infringement or passing off against the defendants.

5. Mexican Trademark Office Implements Important Changes The recent changes to the Federal Law for the Protection of Industrial Property in Mexico are highlighted as follows : a. Electronic Document Transmission : Trademark registration certificates can now be transmitted electronically, with the same legal validity as physical copies. b. Requirement of Use : Trademark owners are now mandated to use their trademarks in the national territory of Mexico as registered or with modifications that maintain the distinctive character of the mark. c. Declaration of Use: Trademark owners must declare the real and effective use of their trademarks, the corresponding products or services along with the corresponding fee within three months following the third year after registration. d. Consequences of Non-Use: Failure to declare use or to use the trademark for three consecutive years will result in the lapse of registration or cancellation, respectively. e. Registration Duration and Renewal: New trademark registrations are granted for an initial period of 10 years from the date of registration and are subject to renewal. Renewal is contingent upon demonstrating the use of the mark during the three years preceding the renewal application. f. Mandatory Use of Legal Marks: Trademark owners are required to use legal marks such as "Trademark," "Marc. Reg.," or "M.R." alongside their trademarks in Mexico. Failure to do so may impact the owner's ability to seek injunctive relief or initiate legal proceedings for damages and criminal prosecution in cases of infringement. However, it does not affect the validity of the trademark registration itself. These amendments aim to ensure that trademark rights are upheld and properly maintained, emphasizing the importance of active use and compliance with legal requirements.

6. Our Story : Navigating Trademark Prosecution vis a vis Controlled Substances Act Do you know that USPTO can reject your trademark application if your applied for mark is used in relation to any product that is blacklisted under The Controlled Substances Act, 1971? One such substance is called Delta-9 THC which is often present in consumables like gummies, vaporisers and health supplements. Our team of experts were able to understand and mitigate the potential losses by overcoming the refusal in a strategic manner by balancing the requirements of Lanham Act with Controlled Substances Act. We were successful in securing federal trademark registration through research, proactive compliance measures, and effective communication. Our Editorial Team Editor in chief : Siddharth Mathur Assistant Editors : Keya Modi, Foram Shah Research Assistants : Keya Modi, Foram Shah Blog Author : Keya Modi Designer : Sanskruti Mohanty

7. Think International Trademarks, Think Protector ! Lex