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SpicyIP Weekly Review: January (2013) Week 1


This new year Barry Sookman announced the most popular intellectual property and technology blogs. It gives us great pleasure to inform you that SpicyIP was ranked 8th best blog in the world. Dennis Crouch’s Patenly-O was rated the best and Micheal Geist’s blog was the best tech blog at 4th place. We thank our readers for their support!
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Dr. Rongxiang Xu instituted a suit against the Nobel Assembly, for libel and unfair competition in a California court, for the later’s statements in relation to last year’s Nobel Prize in Physiology or Medicine to Sir John Gurdon and Dr. Shinya Yamanaka. The prize was awarded for their work in ‘showing that mature cells can be reprogrammed to become pluripotent, with the ability to grow into different tissues in the body.’ Dr, Xu, however, claims to have discovered regenerative cells way back in 1984 and this discovery was useful in US patent 6991813B2. PR Newswire criticized the Nobel Prize jury for for ignoring Dr. Zu’s pioneering work in regenerative medicine. Dr. Zu believes that the statements are detrimental to his reputation and requested a clarification from the Assembly on the ‘pluripotency by reprogramming.’ The Assembly, on the other hand, claims to have never heard of Dr. Xu.

Swaraj in this post raises a larger question on the importance of non-financial incentives in innovation policy.  Apart from scientific curiosity, peer recognition motivates scientists to work a lot and therefore he suggests that innovation systems should make use of these incentives to facilitate innovation more appropriately.

The Unfair Competition Act, 2011 and its Implications on Indian Manufacturers (SpicyIP Fellowship Guest Post Series)

L. Gopika Murthy (II Year, NLSIU) analysed the implications of the Unfair Competition Act, 2011 (UCA) passed in US’s Washington and Louisiana on Indian manufacturers. The UCA is aimed at preventing manufacturers from stolen illegal or stollen IP (pirated or non-licensed software). Third party selling or offers to sell products which used stolen IT are liable under the Act. The IT right holder would be entitled to damages and other injunctive reliefs. The Act further mandates a 90 day written notice requirement on the right holder to allow the manufacturer to disprove allegations or cure defect. UCA is applicable to foreign manufacturers as long as the product is sold in Washington or Louisiana. In 2010-11, 60% of India’s software exports were to the US and 64% of software used is pirated. Evidently, many Indian manufacturers using pirated software in their businesses are amenable under the UCA. The Act has received support from several quarters, including Anand & Anand which hoped that the law would ensure better respect for IP rights in India.

Plain Packaging Law for Tobacco Products (SpicyIP Fellowship Guest Post Series)

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L. Gopika Murthy (II Year, NLSIU) analyses the issues surrounding the plain packaging laws in light of the recent Private Bill on the Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Amendment Bill 2012 proposed by Shri. Baijayant Panda. Coincidentally, Austrian introduced plain packaging legislation on December 01, 2012 to dissuade youth from taking up smoking. In an attempt to de-glamorize consumption of tobacco products, the Bill seeks to impose restrictions on use of brand logos, colours and promotional text on packaging material.

Plain packaging laws already stood to a constitutionality challenge before the Australian High Court for grounds that the State acquired intellectual property on unjust terms. Seven judge bench of the High Court upheld the vires as the law does not ‘involve the accrual of a benefit of a proprietary character to the Commonwealth which would constitute an acquisition.’ Australia is also defending allegations of breach of WTO commitments of fair and equitable treatment. If the Bill ever becomes law, India too is likely to face WTO proceedings and defend a potential constitutional challenge under Article 300A for deprivation of IP rights without adequate compensation.

Colours as Non-Conventional Trademarks? (SpicyIP Fellowship Guest Post Series)

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Rupkatha Basu (IV Year, KIIT) in this guest post discusses the whether colours can be protected under the Trade Marks Act, 1999 in light of the Cadbury’s successful claim for registration of purple colour in UK. The Birmingham High Court in September last year dismissed Nestle’s appeal Cadbury’s trademark registration over the use of purple colour as a trademark for its chocolates. The court categorically stated that the public generally associates purple color with the chocolates manufactured by Cadbury. In India, on the other hand, the Trade Mark Registry rejected Cadbury’s application for registration of purple colour. The Colour Depletiton Theory bars registration of seven basic colours, however, shades of colours are permissible. The Registry does not seem to recognize the theory and permits registration of colours only in combinations.

Rupkatha argues that the inclusive definition of trademark under Section 2(1)(zb) of the TM Act, 1999 includes unconventional marks such as single colour. Further, the Indian courts in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. and Cadbury Ltd. v. ITC Ltd have acknowledged colour as a part of trade dress. Moreover, the Draft Manual for Trade Mark Practice and Procedure (Para 5.2.1.2) provides for registration of colour mark if the ‘proprietor has used the mark distinctively to educate the public that it is a trade mark.’ Therefore, Cadbury deserve registration over the purple colour as the basic objective of trademark (i.e. identity of source) is fulfilled.

Online Certificate Course on Competition Law & Intellectual Property Rights

Federation of Indian Chambers of Commerce and Industry (FICCI) announced an Online Certificate Course on Competition Law & Intellectual Property Rights (IPComp). This course focuses on the interlinking between the competition law and IPR. Duration of the course is two month (February-March, 2013) and consists of six modules (Introduction, Competition laws in India, Main feature of competition law, IPR and competition: conflict / common goals of competition law and IPR, How to resolve the conflict between IPR and competition law and case laws). The course is open to students from law stream, lawyers, industry professionals and students pursing Company Secretary course. Last date for registration is January 25, 2013. For further details, please visit www.ficcipcourse.in or email at [email protected]

International Developments

Johnson & Johnson rolls out TB drug at ‘affordable’ prices (The Hindu, Financial Times & USA Today)

Johnson & Johnson (J&J) receive regulatory approval from the US Food & Drug Administration (FDA) for shipping supplies of bedaquiline, a drug to cure tuberculosis. Close to 1.4 million people die due to tuberculosis every year and this is the first drug developed in over four decades, reports The Hindu. To be sold under the brand name Sirturo, J&J has pledged to make it ‘affordable’ to everyone. J&J also obtained a ‘priority review voucher’ from FDA as an incentive for developing treatment for tropical diseases. This would give them priority in obtaining approvals for their future experiments and this could enable to enjoy patent monopoly for six more months.

UK to free-up its copyright laws (The Guardian)

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The UK Department for Business, Innovation and Skills (BIS) on December 20, 2012 announced measure to free-up its intellectual property and copyright laws to create greater freedom for consumers in usage of copyrighted works. The report recommends 10 major changes to copyright law including research, education, use of quotations and parodies. More importantly, the government proposed lifting of restrictions on ‘format shifting’. With this user are legally entitled to make copies of songs from legally purchased CD to music players and laptops. The Government shot down the request from record companies to introduce a levy or tax on copying devices (music players, laptops, etc.) as compensation for legalizing format shifting. Furthermore, it noted that this move would have minimal impact on sales. The changes were recommended in order to bring the copyright regime in tune with people’s reasonable expectations. The other recommendations include the establishment of a digital copyright exchange,  a ‘one-stop shop’ for obtaining clearances for use of copyrighted content by 2013.

Cooperative Patent Classification (CPC) system launched (AG-IP-News)

The USPTO and EPO launched the Cooperative Patent Classification (CPC) system. The system aims to develop a common internationally compatible classification system for technical documents used in the patent granting process for an user community of over 20,000 patent examiners across 45 patent offices. With more than 250,000 classification symbols based on the International Patent Classification System (IPC), the new system aims to foster ‘patent harmonisation efforts’ and provide effective prior art searches.

Apple’s tiff over Amazon’s ‘appstore’ (IPKat)

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Apple sued Amazon for use of the term ‘appstore’ in relation with the sale of apps for android devices and Kindle Fire. Apple’s action was on multiple grounds including trademark infringement, false designation of origin and false description. The US District Court for the Nothern District of California in a partial summary judgment evaluated and rejected the claim that this constitutes ‘false advertising’ under S. 43(a) of the Lanham Act. Reiterating the essential elements of the provision the court found that Apple failed to show that there existed a ‘false statement of fact’ which ‘deceived or has the tendency to deceive a substantial segment of the audience’ as Apple could not establish that consumers associated ‘appstore’ with the specific/ distinctive attributes of ‘Apple App Store’.

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Google & Yahoo indirectly funds pirated websites: USC Report (International Business Times)

A recent study conducted by University of South California’s Annenberg Innovation Lab revealed that search engine giants, Google and Yahoo place ads on pirate sites thereby supporting movie and music pirate sites. Google rejected the findings and stated that presence of Google code does not automatically entitle financial support from Google.

Record number of cyber squatting cases in 2012 (Domain Name Wire)

WIPO’s Uniform Domain-Name Dispute Resolution (UDRP) received a record 2,879 cases in 2012 relating to 5,081 domains. This, however, does not indicate a rise in cyber squatting.  Many such matters are ruled invalid and most of the filings do not necessarily pertain to cyber squatting activity. Furthermore, many brand holders continue to resolve disputes through informal means. In comparison number of domain names registered, the number of cases filed is at an all-time low according to Domain Name Wire.

InterDigital sues Huawei, Samsung & ZTE for patent infringement (Bloomberg)

In 2011, InterDigital Inc. (IDCC) filed a complaint, with the U.S. International Trade Commission, against Huawei Technologies Co., ZTE Corp., Samsung Electronics Co. claiming that several of their products infringe up to seven of its patents. Through this complaint which is due for hearing in February, IDCC is seeking an order which would prevent import of such products into U.S. (and additionally cash compensation through a companion lawsuit in the Federal Court in Wilmington, Delaware). Building on this complaint, IDCC has filed a new patent-infringement claim against the said companies for using its technology related to the latest mobile-phone standards. In response to the earlier patent claim Huawei filed an antitrust complaint with European Union regulators and has further alleged that IDCC’s licensing fees demands are ‘unreasonable and discriminatory’.

Google off the FTC’s hook (Wired)

A lengthy 19 month probe into Google’s search and patent licensing practices, the Federal Trade Commission (FTC) failed to bring any charges against search engine giant’s products and services. However, Google agreed to reduce restrictions on AdWords platform and license its patents in reasonable terms. Consumer groups are, however, were displeased with the FTC.

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