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SpicyIP Weekly Review (15th to 21st September, 2014)


spicyip weekly reviewWe started quite a busy week off with a post by Gopika on the Diageo Brands v. Khoday Distilleries case. Khoday was allegedly applying for the registration of and utilising marks that were deceptively similar to Diageo’s marks. The latter therefore sought an injunction on both of these practices. In her analysis she points out that, “Courts are loath to grant injunction restraining parties from applying for registration and getting possibly infringing marks registered….However, [an] injunction can be obtained restraining parties from committing infringement of trademark through use, attempting to use or by asserting a right to use a trademark.”

Rupali posted next about a trademark dispute at the Bombay High Court involving Emcure Pharmaceuticals’ marks OROFER and OROFER- XT. The court had to consider questions of deceptive similarity and the three part test in order to arrive at a ruling. I followed this up with a tidbit about the new infrastructure and transparency measures at the IPO. The Stack and Flow system introduced at the IP Office allows for real time tracking of applications allowing for greater transparency.

Spadika then posted about an update in the ongoing dispute between Vringo and ZTE at the Delhi High Court, on the scope of who is an expert under S.45 of the Indian Evidence Act. The Court states that, “it is accepted and recognised that a person could be an expert in an area of specialised knowledge by experience and he or she need not hold a degree in the field of specialised knowledge. A person can also become an expert by virtue of one’s avocation or occupation.”

This was followed by Rupali’s post on the Madras HC’s decision to reconstitute the IPAB Vice Chairperson’s selection committee. In her post she ties to point out new legal arguments attacking the legality of the selection committee. She also observes that, “Justice Sanjay Kishen Kaul (Chief Justice of the Madras High Court) was of the view that Justice Basha (current chairman of the IPAB) and not the Secretary, DIPP ought to be the Chairman of the selection committee tasked with selecting the Vice Chairman to the Board.” She followed this up with a post, which is perhaps the SpicyIP Highlight of the week on the licenses that Gilead has entered into with 7 Indian generics for manufacture and sale of Sovaldi. These licenses would reduce the price by almost 250 times as opposed to the price in the United States. She however cautions that there are concerns being expressed that since the patenting process has run into trouble in various countries, this could just be an effort to regulate the generic manufacture.

This week also saw the creation announcement of SpicyIP’s ‘journal’ section. Update: In addition to this, we have decided to publish some notes that have been submitted to us in a “SpicyIP Discussion Paper Series” that is being made available under our Resources Section. The first note in this series was by John E. Matheson, titled “Patents and Standards: FRAND Challenges for India’s ICT Sector”. The note discusses several problems that can and have come up with Standard Essential Patents (SEPs) and related commitments. The note can be downloaded here.

rajinijoke1Speaking of firsts, Rajnikanth knocked on the doors of the Courts for the first time (dare I say knocked?) to protect his personality rights. Gopika who had the privilege of writing about this, reports that he had approached the Madras High Court to primarily stay the release and screening of the Hindi film ‘Main Hoon Rajinikanth’. The case was premised on the international (universal?) stature of his personality, his deliberate decision not to commission a biopic (like any film maker could do justice to such a film) and the “immoral nature” of some of the scenes of the film.

Aparajita bought us our next post on Poly Medicure’s (an Indian company that manufactures medical devices) win in a five year long patent battle against B Braun (German medical devices and pharma giant). She writes that, “The patent litigation revolved around B Braun’s patents that cover certain features of intravenous (IV) safety catheters. The EPO revoked two of Braun’s patents after which Braun appealed to the Board of Appeals. However, the appeal was dismissed and the patents of B Braun stand revoked.”

Spadika posted a tidbit on Mr. Naresh Prasad, an Indian Diplomat being appointed as the Assistant Director General of WIPO. Devika then followed this with a tidbit on the suit filed by the makers of the popular mobile game Candy Crush Saga against people who attempted to infringe their trademarks in the advertisement of a live music gig. She reports that they were restrained from doing so.

Madhulika then reported on a quia timet injunction filed by Novartis against Ranbaxy to protect their antidiabetic drug. The suit was to prevent Ranbaxy fom manufacturing and selling a generic version of Vildagliptin (Galvus). She writes that, “Interestingly the court observed the fact that Ranbaxy had applied for revocation of Novartis’ patent shows that the defendant (Ranbaxy) wants to launch the compound patented.”

Our next post was a guest post by frequent guest blogger Shashank Mangal who does an interesting analysis of the provisions regarding the groundless threat of infringement proceedings across various IP statutes. His post contains a meticulous comparative table and some fairly interesting conclusions that he brings out.

Aparajita brought us the last two posts for the week – the first on the maintainability of multiple trademark suits. The case held that if a person claims to have rights over the use of a particular mark, he is entitled to file separate suits, in different courts, for each mark the defendant uses. Her next post was a tidbit on the introduction of Free Multilingual Terminology Database by the WIPO.

Calls, Events and Competitions:

  1. The Rajiv Gandhi School of IP Law’s ‘IIT Law Review’ has released the call for papers for their inaugural issue. More details here.
  2. The INTA is organising the Ladas Memorial Essay Competition with a $2,500 prize. The competition is in two categories – professionals and students. The submission deadline is the 6th of February, 2015.
  3. Lex Witness is organising the 3rd Annual Media, Advertising and Entertainment Legal Summit (MAELS 2014) on the 16th of October, 2014 at the Le Meridien, Delhi. With some prominent speakers already confirmed to attend the event, this will surely be an event that would be worth attending. Early registration entitles a 15% percent discount.

International Stories:

  1. The IPKat has some extensive reporting taking place at the AIPPI Congress taking place in Canada. Click here to get started off.
  2. IPWatch reports on the selection of the top officials at the WIPO.
  3. They also carry this interesting story on a ruling that Google is not yet a generic word for the purpose of TM law.
  4. PatentlyO reports on this interesting case (VirnetX v. Cisco and Apple) talking about patent eligibility of VPN Software, infringement and damages.
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Thomas J. Vallianeth

Thomas is a final year law student at the National Law University, Jodhpur pursuing a B.Sc. LL.B. (IP Hons.) course. His first exposure to IP law was at a workshop that he attended in High School and ever since then, he has pursued a keen interest in the field. However, his real interests lie in the interfaces between Technology Law and IP, with an active interest in the Open Source movement.

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