SpicyIP Weekly Review – 31st March to 6th April

reviewWe started this week with Mathews reporting on the stay granted by the IPAB on the Chennai Patent Office’s order revoking Pfizer’s patent in the drug Detrol (read our original post here). The IPAB reasons that the balance of convenience is very much in favour of the petitioner for granting the relief of stay and that Ranbaxy had adequate time to appear and argue the matter and that there was no need to delay the matter any longer.

Anubha then reported on what is the SpicyIP highlight of the week, the action by the Enforcement Directorate in slapping money laundering charges on two Indian firms for allegedly using the SAIL trademark on TMT bars which they were selling, without authorisation, which is an offence under the Trademarks Act. She goes on to analyse how until 2012 the number of people arrested was merely 22 and that in such an atmosphere, the action of the ED comes across as zealous.

I followed up this post with a case note on the Delhi High Court’s grant of an injunction restraining MindGym Kids Library Pvt. Ltd., an Indian company, from infringing upon the trademark of Mind Gym. The order was a fairly extensive commentary on the law of the grant of injunctions in the case of passing off and infringement actions. The court affirmed a number of well settled principles such as how trans-border reputation contributes to the goodwill of a company, that a claim of different fields of activity doesn’t really affect a passing off claim etc.

Aparajita and Gopika then posted on a fairly interesting development, the passage of the Free Flow of Information Act of 2013 in the United States, which shields certain “covered journalists” from potential prosecution by the government for the disclosure of their sources. However the Act introduces a characterisation of a “legitimate press” to whom this protection applies and excludes media like watchdogs and blogs. They go on to argue that there is indeed a test that helps to identify when bloggers are acting as journalists and therefore are to be entitled to protection. The test states that that the purpose must be newsgathering with an intention to disseminate to the public, the process must be that of investigative reporting and the final product must be news in order for journalistic privilege to extend to a blogger. They also argue that self-regulation is the best form of regulation for bloggers due to their heterogeneity, dependence on reputation and other pre-existing laws.

The next post was a tidbit that I wrote about the Open Source Drug Discovery project of the CSIR losing its funding due to a delay on the part of the Ministry of Science and Technology. The OSDD had employed a fairly innovative model of exchange among scientists and students across more than 34 academic institutions and was involved in some good work in TB drug research. This is a great loss to drug R&D effort in India.

Anubha then reported that the Health Ministry’s plans to compulsorily license Dasatinib was met with an opposition by the Department of Industrial Policy and Promotion which stated that the Health Ministry had not adequately made out a case to produce or grant a compulsory licence for Dasatinib. The Health Minisry’s use of S.84 of the Patents Act was rejected as the Controller was empowered grant a licence only upon receiving an application, and did not authorise the Government to issue one. The Health Ministry also attempted to invoke S.92, but the DIPP clarifies that the circumstances as required under S.92 did not prevail in the country at the time.

Concluding the week was Spadika’s post reporting on the triumph that Vishnupriya Hosiery Mills had against Jones Investment Co. in a trademark opposition claim that the latter had filed for the mark “Jones”. The court relied on a decided case to conclude that in the case of a multinational corporation that was not present in India or had no intention of selling their product in India should not be allowed to “throttle” an Indian company “if the Indian Company has genuinely adopted the mark and developed the product and is first in the market”. Vishnupriya was in the market from 1993 whereas Jones Investment Company had only entered the market in 1996 and had also failed to establish an international reputation prior to 1997. She also notes that the IPAB held that the quantum of sale is absolutely immaterial as long as the applicant company is able to discharge the burden that the registration of their trademark would not cause confusion in the minds of the consumers.

An earlier post of ours dated Feb 11th, 2014 has had a small edit for clarification. You can view the post here.

On the international front, the following stories caught our attention:

  1. The court of Brussels declares the Louboutin mark as invalid. The court ruled that the mark which was for the red sole of the shoe was a shape mark and did not significantly differ from the norm of the sector to serve as an identification of the source (read here).
  2. IPKat also reports on an update in the IP war between Unilever and P&G in which they observe that the EPO had finally “dissolved” Unilever’s patent.
  3. Patently-O’s interesting post on suing end users of a product, i.e. the consumers for infringement of a patent and jurisdiction questions that arise thereof in Microsoft v. DataTern.
  4. Perhaps what is the most anticipated IP decision will be the SCOTUS decision in Alice Corporation Pty. Ltd. v. CLS Bank Int’l which deals with un-patentable subject matter and abstract ideas and closely ties in with the idea of whether computer programs are patentable. Patently-O covers the oral arguments here.


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