The SpicyIP Highlight of the week !
The SpicyIP Highlight of the Week was the first post by Arundathi, where she discusses a recent case regarding a ruling passed by the US District Court for the Eastern District of Virginia (Alexandria Division) in favour of Belmora. The matter was in reference to the question of Article 6bis (on well known trademarks) of the Paris Convention and how the Principle of Territoriality accommodates the Article’s provisions within its ambit. Belmora’s FLANAX, which was trademarked and sold in the US, as well as marketed in Mexico, had a trade dress similar to Bayer’s FLANAX – which was trademarked and sold in Mexico. Belmora’s FLANAX capitalized on the reputation and goodwill of the Bayer’s FLANAX. Bayer claimed that Belmora’s FLANAX deceived consumers into thinking its pain relief medicine was similar to Bayer’s FLANAX pain relief medicine sold in Mexico. Relying on Article 6bis of the Paris Convention dealing with the well known marks provision, Bayer successfully got the TTAB to cancel Belmora’s 2005 FLANAX trademark registration in 2014 pursuant to the Lanham Act.
She writes that the main question was whether this ruling went against the Principle of Territoriality, as the Court crisply put it – “Does the Lanham Act allow the owner of a foreign mark that is not registered in the US and further has never used the mark in US commerce assert priority rights over a mark that is registered in the US by another party and used in US commerce?” Deciding that the answer was in the negative, the Court reversed the TTAB’s ruling cancelling Belmora’s FLANAX trademark registration. She goes on to juxtapose the stance of the US Court in this case to the general stance adopted by the Courts in India, as in the NR Dongre v Whirlpool Corporation [(1996) 5 SCC 714 ] case where the principle of transborder reputation was upheld. Arundathi then concludes by stating that Indian courts adopt a fairer stance when keeping in mind the intent with which Trademark law was established, and that protection of a company practicing in the manner that Belmora is essentially unfair.
The next post was by Spadika, announcing the Workshop & Conference on Intellectual Property and Public Health to be held from 23-27 March, 2015 in New Delhi, co-hosted by The Institute for Studies in Industrial Development and Public Health Foundation, Public Health Foundation of India, Third World Network and Indian Society for International Law. A variety of themes are expected to be discussed, such as Intellectual property rights and access to medicines, International and Indian Patent law, the TRIPS agreement and Biomedical innovation and innovation pathways. She goes on to briefly discuss the target group and selection process and method of application for the conference.
Anubha then put up Part II of her two-part series where she discusses a submission made by Centre for Internet and Society, India on the first draft of the National IPR Policy which concluded this month. Two other submissions have already been discussed on SpicyIP (here and here). She writes that the submission begins with a comment reiterating that a National IPR Policy is not something to be rushed into without sufficient evidence and consultation. It claims that the vision, envisaging a ‘growth for all’ policy, and the mission, expressing a commitment to establish a balanced, dynamic and vibrant intellectual property system in India are at odds with the methods suggested by the draft policy. Anubha writes that the submission also brings to notice the draft policy’s faulty assumption that increased IP will lead to increased innovation, emphasizing that there is no established nexus between the two. The submission also warns against the introduction of a utility model protection system that can negatively impact small scale business enterprises by favouring foreign companies over it. Further, the submission brings to attention the policy’s commitment to increasing output at national research labs and universities which is in contravention to its vision of knowledge sharing, as well as the recent steps undertaken by the government to make research openly accessible. Lastly, she states that the submission urges for the policy to not only study the role of limitations and exceptions for the purpose of future policy development, but also be flexible so as to include, adopt and periodically renew of limitations and exceptions in India’s intellectual property laws.
In the fourth post this week, Spadika brought attention to the introduction of a new search tool called INPASS by the Controller General of Patents, Designs and Trademarks (CGPDTM) that uses wild cards, truncation and Boolean operators to allow a full text search to be conducted for patents and patent applications. She notes that following a SpicyIP sponsored petition in 2009 pleading for “greater transparency and more access to patent information.”, in the subsequent years, more and more information relating to patents has been made available online – for instance, the Indian Patent Information Retrieval System (IPAIRS) launched in 2010. She writes that with the introduction of INPASS, the IPAIRS has now been officially withdrawn.
Lastly, I wrote on the glaring differences between invention and innovation as seen in Russia, and commented on Russia’s existing innovation policy that focuses on innovation growth in metal and defence industries as opposed to hi tech consumer goods industries where commercialization of inventions is best possible. I then went on to mention Mr. Loren Graham, Professor at MIT’s article here that talks about the need to ensure that basic fundamental rights relating to free speech and expression are in place before considering exponential growth in innovation in a country where existing socio political and economic systems are not conducive to achieving modernization in innovative technologies. I further elaborate on the need to put an end to the huge counterfeit industry in Russia that has been threatening the legitimacy of available intellectual property rights for a long time now. In conclusion, I stressed on the need to offer the Russia people the rights and protections necessary to lead their scientific brilliance to economic fulfilment.
International Developments
- Apple ordered to pay $533 million for patent infringement after a Texas federal jury finds that the iTunes software infringes on three patents owned by patent licensing firm Smartflash LLC.
- Apple slapped with lawsuit by Ericsson over alleged violation of 41 patents related to iPhone and iPad-used technology.
- The implications of medical marijuana as a Geographical Indication in Jamaica
- Japan’s Trademark Act of 2014 Amendment to introduce colour and sound marks.
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Great roundup! I have to say I’m very interested in how that search tool develops. Thanks for posting.