SpicyIP Weekly Review ( March 15 – March 22, 2015)

spicyip weekly review

The SpicyIP Highlight of the Week !

In this week’s Highlight, Kartik analysed and discussed in great  detail the recent judgement in the Telefonaktiebolaget LM Ericsson v. Intex case delivered by Justice Manmohan Singh of the Delhi HC, where Ericsson had been granted an injunction against Intex for any devices that infringed upon Ericsson’s eight Standard Essential Patents – we had earlier reported on the case  here and here. In the course of this post, Kartik analyses point by point the various arguments advanced by both the parties. He begins with Ericsson’s argument that although it owned multiple SEPs required for any device to comply with 2G, 3G and ARM standards, Intex appeared to be importing and selling products that it claimed to be compliant, without having licensed any patents from Ericsson. Intex, on the other hand questioned the essentiality and legitimacy of the patents owned by Ericsson, and stated that such patents were in violation of Section 8 and 23 of the Indian Patents Act. Intex also argued against Ericsson’s insistence that royalties be paid on the basis of selling price of each product in the market, and not the profit margin on the sale price of the chipset in which the technology is used. Both these arguments were rejected by the Court. However, what Kartik noted was intriguing, but rather troublesome was the Court’s rejection of Intex’s arguments with regard to the non patentability of computer programmes under Sections 3(k) and 3(m) of the Act. This was done after the Court undertook an analysis of the position adopted in the EU, UK and USA in the matter and recognized that when applying the tests of ‘technical features/character’ and ‘significantly more’ used in these countries, as long as the invention itself was patentable, the use of ‘modern technical means in the form of a computer program’ in the application of the invention should not be a barrier to granting the patent.

In our first post of the week, Shamnad sir highlighted the important points of the ruling passed by the Madras HC (we broke the news here) striking down key provisions concerning appointments to the IPAB as unconstitutional, pursuant to the writ petition filed by him in 2011. He began with the Court’s agreement with the need to uphold the separation of executive and judicial powers doctrine in the constitution, and that the existing eligibility criteria posed a threat to the same. The court took note of the government’s choice to steer clear of setting things right, and stressed on the need for the members of the Tribunal to be predominantly judicial. The Court also agreed with Shamnad sir’s that even a technical member must possess legal/judicial competence before he can be called upon to adjudicate on the Board. It stated that a person holding an Executive post cannot possibly exercise the role of a Judicial Member sans the legal training and experience. Taking into account Section 85(6) of the Act that holds that appointment of a person as Chairman of the IPAB must be made only after consultation with the CJI – a process that involves a recommendation being made by the CJI, which is then sent for ‘approval’ to the Appointments Committee of the Cabinet (ACC). Holding that the practice of seeking parliament approval is illegal, the court said that the CJI’s recommendation must be given due importance by the Cabinet, and no approval shall be required by the same. Shamnad sir further wrote that the Court strongly emphasized on the importance of the IPAB and the need to ensure its judicial competence by appointing members from a legal background only, since the matter before it is a judicial one, and the mere power of judicial review of the IPAB decisions does not grant bureaucrats a free ticket into attaining membership to the Board. Although this groundbreaking ruling would alter future appointments to the Board, Shamnad sir wrote, the existing members appointments are to continue, and remain unaffected by the decision.

Arundathi then wrote about the IPR Workshop on Patent Strategies in EU for Pharma and Biotech to be held in Hyderabad on April 30, 2015 and in Mumbai on May 1, 2015. The workshop is going to be conducted by Professor Heinz Goddar, Senior Partner, Boehmert & Boehmert and his colleagues, and will provide comprehensive insight into recent developments at the European Patent Office and case law, followed by analysis and practical considerations on how the law affects claim and specifications in Europe, with specific reference to Germany.

In the next post for the week, I wrote about the curious John Doe order that Shemaroo Entertainment received for its newest release ‘Hunterrr’, against potential piracy of its movie. What was interesting about the Press Note released was the claim that action can also be taken against a person watching the film from an illegal source which seemed rather strange considering that India’s existing copyright laws don’t seem to incorporate a provision deeming viewing pirated movie content as constituting copyright infringement. The post goes on to examine relevant provisions that appear to negate such a claim, and finally deduces that presently, watching pirated movies online or after downloading it does not constitute copyright infringement under the Indian Copyright Act, 1957.

Lastly, Gopika reported on the decision of the Mumbai High Court in the case of the trademark dispute filed by ‘Cafe Madras’ against Lime &Chilli Hospitality Services which opened up their own version of Cafe Madras in Mumbai. The judgement made for an absolute pleasure to read, and she writes that two main issues were under consideration. Gopika wrote that firstly, the Defendants claimed that the mark had become common to trade and exclusivity and therefore could not be granted to anyone, while at the same time applying for the registration of ‘Cafe Madras’ as its trademark, itself – the Court applied the principle of approbation and reprobation to dismiss this claim. The defendants went on to state that there existed atleast 6 other resteraunts carrying on business under the name ‘Çafe Madras’. The Court found that three of these were the plaintiff’s outlets, one had already been closed due to a decree granted to the Plaintiff in a similar matter, another was a multi cuisine restaurant with insignificant sales and, and no proof was found to establish the sixth restaurant’s existence. The second issue was regard to passing off, and whether the defendant’s use of the ‘Cafe Madras’  has the likelihood of causing deception and confusion to the customers – and the court noted that confusion had already occurred.  The Court recognized that in the 21st century, where internet websites dedicated to the restaurant industry, the reputation and goodwill of the plaintiff cannot be held to be locally confined, and especially so since the restaurant has been using the trademark since over a half a century. The Court accepted the plaintiff’s claim of passing off, and ruled in favour of the Plaintiff in both the issues.

International Developments

  • March Madness’ now a trademarked term associated with the NCAA Men’s Basketball Tournament.
  • British Law now criminalizes copyright violation – Section 52 restricting design rights on mass produced items to 25 years after the year in which they were first manufactured or marketed now stands repealed ; photographers and museums to be affected.

Kiran George

Kiran Mary George is a Third Year student at ILS Law College, Pune. Her first stint in the world of Intellectual Property law was an internship with a registered copyright society that granted her an insight into the world of copyright in music. Since then, her interest in IPR has taken strong hold, and she enjoys keeping close tabs on developments in the field. She is still discovering her interests, but so far takes a special liking to open access, copyright and trademarks.

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