Highlights of the Week !
In her first post for the week, Arundathi examines the order passed by the Competition Commission of India (CCI) in the iBall v Ericsson case, noting that this is yet another instance where the CCI is insistent on exercising jurisdiction in Standard Essential Patents (SEPs) matters. She writes that in 2011, Ericsson had issued a letter to iBall alleging that its patents relevant to iBall’s past, present and future GSM and WCDMA compliant products were being infringed by iBall. After several attempts were made by Ericsson to threaten iBall with patent infringement proceedings, pushing it to enter into one sided Non Disclosure agreements, demanding unreasonably high royalties and more, iBall alleged violation of Section 4 of the Competition Act, 2002 and asked for an investigation into abuse of dominant position by Ericsson. The Commission found prima facie dominance by Ericsson in the ‘Standard Essential Patents for 2G, 3G and 4G technologies in GSM standard compliant mobile communication devices in India’ market. It found that the charging of two license fees per phone for the use of the same technology to be discriminatory, specially so because the royalty rates charged appeared to have no connection to the functionality of the product, but were instead linked to the cost of manufacturing the product – contrary to what the FRAND terms mandate. The Commission ultimately ordered the DG to conduct and complete an investigation into the matter. She further notes that the facts of the case are similar to those in the Intex and Micromax case. [we blogged about this earlier here, here, and here]. She writes that the CCI ordered the DG to investigate the matter despite the Delhi HC in Intex holding that the CCI was entering into an adjudicative and discriminatory process, restricting the DG from passing final orders pending the adjudication of the matter. She writes that an appeal from the Commission’s decision or a writ petition before the HC challenging the boundaries of the jurisdiction of CCI and seeking clarification as to the same is only but a matter of time.
In the next post, Matthews examines the unfavourable consequences of delay in filing ‘passing off/trademark’ interim injunction applications despite the case strongly being in favour of the plaintiff. An interim application had been filed by the plaintiff before the Delhi HC seeking to restrain the defendants from using the ‘SHRI RAM’ trademark for running schools. Although the trademark application of the plaintiff is pending before the Registrar, the plaintiff claimed to be the prior user of the trademark, having established their first school in 1988. The court first considered the question of whether the defendant’s ‘SHRI RAM’ trademark comprised an essential feature of the plaintiff’s trademark, and consequently held that the two marks were deceptively similar as a result. So far as passing off was concerned, three of the four essential requirements required to establish passing off were deemed fulfilled by the Court – the plaintiff was a prior user, a proprietor of the mark, and the mark did cause confusion and deception in the minds of the public. The Court however, noted that there had been a delay in filing the application, which had tipped the scaleds in favour of the defendant. The Court stated that the matter would affect not only the interests of the defendant, but also those of the parents and children who have paid the admission fees to the defendant’s schools and are currently studying there and thereby, allowed the defendant to continue using the SHRI RAM trademark subject to disclaimers.
Following Balaji’s earlier post examining the Vifor-Symed dispute over iron carboxymaltose, in this post he examines and counters one of the arguments in the comments he received to the post – the claim that patentees suffer huge and unquantifiable losses in the absence of injunctive relief due to price erosion. He identifies the biggest flaw in the argument put forth, stating that the argument makes the assumption that price-slashing by patentees is prevalent, thus essentially making the harm suffered by them unquantifiable. He asserts that the belief associated with the unquantifiablity of losses suffered by the plaintiff is more myth than fact. He holds that all the empirical data seen so far appears to point to quite the opposite, that patentees continue to stick to the pricing strategies they have come up with irrespective of the costs at which generic equivalents of the drug are made available in the marked, and cites three drugs that have been the subject of rather explosive public litigation, as examples – Januvia, Tarceva and Nexavar.
In our next post for the week, as a part of our interrogating interim injunctions series, Sahil Dama brought us a post where he discusses the difficulty in getting vacations so far as interim injunction orders are concerned, in the light of the Microsoft Corporation v. Dhiren Gopal and Ors., [2010 (42) PTC 1 (Del)] case. Here, Microsoft Corporation had filed four different suits against four different defendants, who had allegedly infringed on Microsoft’s software copyright by using pirated/illegally copied software at their offices. Microsoft argued that issuing notices would serve against their interests by offering time and opportunity to the defendants to get rid of the illegal software, thereby rendering consequent suits filed unproductive. Thereby, an ex parte injunction restraining the defendants from using the pirated software was granted by the Delhi HC. He traces the several hardships caused to defendants as a result of these injunctions, as acknowledged by the court.
Sahil Dama brought us another guest post where he discusses two important judgements that laid down guidelines aimed at protecting the defendant’s interests from the severe impact of ex parte injunctions. With regard to the first case, FDC Limited v. Sanjeev Khandelwal, 2007 (35) PTC 436 (Mad), he discussed the six guidelines that the Madras HC laid down. Sahil then discussed the relevance of Order 39 Rule 3A of the Civil Procedure Code in Venkatasubbiah Naidu v. S. Chellappan and Ors., AIR 2000 SC 3032 in the same light. In this case, he notes that Justice Trivedi observed that Order 29 Rule 3A and similar provisions aimed at safeguarding the interests of the party against whom the ex parte injunction is passed, at the same time, overburden the already burdened courts with more responsibility, hindering the courts’ ability to implement the guidelines, as a result of which the provision has failed to achieve its stated object.
Gopika then wrote in, briefly examining the importance of the need to recognize the right of attribution as an artist’s moral right, in the light of Prof. Mira Sundara Rajan’s (Professor of IP Law at the University of Glasgow) guest post on IPKat discussing the right of attribution under US copyright law with regard to the Maya Angelou commemorative stamp released by the US Postal service that was accompanied by a quotation often cited by Angelou : A bird doesn’t sing because it has an answer, it sings because it has a song.” However, despite the fact that it was found that the quote was actually the brainchild of Joan Walsh Anglund, the stamp was not withdrawn because the US does not recognize the right of attribution – which is unlike the case in India, where Anglund would have had the right to claim authorship for the same.
Gopika then analysed the recent judgement brought out by the Supreme Court dealing with the provisions of the Companies Act concerning the National Company Law Tribunal(NCLT) and the National Company Law Appellate Tribunal (NCLAT). She examines the three main issues considered here – the constitutionality of the NCLT/NCLAT, the qualifications to become a Technical Member of the NCLT/ NCLAT, and the constitution of the selection committee to constitute Members of the NCLT/ NCLAT, and observes that all of these are analogous to the issues considered in the Madras HC order dealing with IPAB appointments under the Trademarks and Patents Act, which we have covered here and here. She concludes by noting that the High Courts and the Supreme Court appear to be following similar rationales so as to bring the working of the Tribunals in line with the Constitution.
Announcements
–Job Vacancy at Sujata Chaudhri IP Attorneys
International Developments
- Oracle v. Google battle to go to US Supreme Court?
- 7th Circuit denies appeal in Mirza Baig v. Coca-Cola Co. case.
