SpicyIP Weekly Review (29 June – 5 July)

Folks, we’ve had a rather busy week ! Posts have come pouring in, covering a whole melange of issues. Here’s a quick review of the week’s posts :

spicyip weekly review

Our SpicyIP Highlight of the week is definitely Shamnad’s article that he originally wrote for the Wire, where he talks about the unhindered thriving of the cosy cliques and cabals that infest the country’s legal ecosystem. He begins with the defect-ridden collegium system, that although had originally been borne out of noble intentions, is now one characterized by opacity and arbitrary processes – and further comments that the NJAC has defeated the very reason the collegium system was done away with by failing to remedy the issues that plagued the latter. He then comments on the Bar Council of India’s authoritarian method of working and tears into the BCI’s issue of a dodgy tender to conduct the All India Bar Exam. Finally, Shamnad wrote about this year’s and the previous years’ CLAT-astrophe – the brainchild of the CLAT committee, which comprises the Vice Chancellors of the various National Law Universities (NLUs) in India, and the committee’s unfailing yearly blunders. Shamnad concludes by stating that the ‘rule of law’ concept routinely taught in law schools, is one that can be seen to be blatantly breached today by those who consider themselves to be well above the boundaries carved by the law.

Aparajita then summarized the decision passed by the Madras HC in the VIT trademark case, restraining the defendant, Vivekananda Institute of Technology, from using the acronym VIT (used and registered by the Vellore Institute of Technology) in relation to its engineering colleges. The Vellore Institute of Technology was the prior registered owner of the trademarked ‘VIT’ acronym, and argued that the acronym as associated with the institute had come to acquire much goodwill and reputation at the national and international level. The plaintiff raised two main contentions – the similarity of the marks that increases the likelihood of confusion, and the defendant’s mala fide intention – both of which were accepted by the Court. Aparajita finally notes that while the Court considered the first two factors relating to unauthorized use and likelihood of confusion under Section 29(2)(c), it failed to explicitly note the third factor – trademark dilution- necessary to establish infringement, and goes on to briefly explain its applicability here.

Then, Spadika wrote a piece  on the recent Indchemie Health Specialties … vs Intas Pharmaceuticals trademark infringement matter. The plaintiffs are registered proprietors of the trademark ‘Cheri’, used in haematinic preparations for iron deficiency, sold in the form of syrups, tablets and capsules. When they applied for registration of the trademark, the Registrar permitted it when the plaintiff agreed to restrict the trademark’s applicability only to pharmaceutical preparations and not including within its ambit medicinal preparations as well, on account of the descriptiveness of the term ‘cherry’.. The Defendants produced a dietary supplement (not a pharmaceutical preparation) called ‘Multi Cherry’ which was to be taken as advised by a dietician. The Court held that in line with Section 28(1), given that the plaintiff had forgone their trademark over medicinal preparations, a trademark with regard to goods outside of the class in which the trademark is registered cannot be enforced. The Court thereafter considered Section 29, and noted that there was no likelihood of confusion in the eyes of the consumer. Spadika then considers and answers in the affirmative three questions that the decision raises – a) whether a trademark can be be construed narrowly due to its registration only with regard to a particular class of goods b) whether a greater likelihood of confusion would offset the narrow interpretation of ‘similarity c) and whether such likelihood of confusion exists in the present case.

In the next post for the week, I put up another reminder about the National Patent Drafting Competition to be conducted by IIPRD, in support of Khurana and Khurana, Sughrue Mion for those who missed it. It is being held with the objective of increasing awareness on patent issues and equipping practitioners with knowledge concerning the essentials of patent drafting.

Thomas then put up a tidbit  on the recent draft policy released by the Government of India on the imminent need to promote standardisation in the medical field in the light of the lack of a regulator to oversee the massive Indian market for medical devices. In addition to encouraging the setting up of a National Medical Device Authority in this regard, the policy also suggested targeted efforts at fostering innovation through the introduction of concessional power tariffs, interest subsidies, funding options and tax incentives. Thomas notes that although the document itself is quite promising, it fails to make any explicit mention as to the free accessibility of the standards.

This was followed by my post on the Anjali Mashelkar Inclusive Innovation Award – to be awarded to the most novel business idea or model aimed at resolving the issues that plague the lives of the underprivileged and impoverished in India.

Next, Balaji put up a post that he co-authored with Swaraj, where he discussed the discovery (thanks to an anonymous tip off) of a Compulsory License application( the third one so far) filed by a Lee Pharma – a manufacturer of pharmaceutical products – for a patent covering Saxagliptin – a dipeptidyl peptidase-4 inhibitor of the same family as Sitagliptin and Vildagliptin, used to treat Type II Diabetes Mellitus by achieving glycemic control without the accompanying weight gain. The patent was initially granted in 2007 to Bristol-Myers Squibb, which later assigned the patent to AstraZeneca. He writes that to obtain a Compulsory License under Section 84 of the Patents Act, the applicant needs to show that they have made good faith efforts to negotiate with the patentee for atleast six months so as to procure a voluntary license from the patentee. If such negotiations do not bear fruit a voluntary license is not granted by the patentee, a compulsory license may be granted on three grounds : a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or b) that the patented invention is not available to the public at a reasonably affordable price, or c) that the patented invention is not worked in the territory of India. Balaji and Swaraj then analyse each ground in the light of Lee’s application and contemplate what works in Lee’s favour and what works against it.

Finally, Thomas wrote on the recent decision in the IPRS v. Sanjay Dalia case in Part I of his two part post, where the Supreme Court clarified the law on where copyright and trademark infringement suits can be filed. This decision essentially concerned two separate matters that were clubbed on appeal on account of similar factual circumstances. The suit in this case was that of copyright infringement filed before the Delhi HC – despite the fact that the plaintiff, IPRS, has its head office in Mumbai and the defendants owned theatres in Maharashtra. The SC held that the suits could be filed only in the District Court that exercised jurisdiction over the place where the cause of action (in whole or in part) arose, if the plaintiffs instituting the suit had an office in that jurisdiction. Thomas notes that the main question arising in both of these matters is the same – whether the plaintiff having a registered office in a particular place can file a suit in another jurisdiction. He considers the contentions advanced by both sides, and ultimately notes that the analysis of the Court depends on three questions : a) whether the Heydon’s rule should be applied in this case, and if so in what manner b) whether Section 20 of the Code of Civil Procedure is applicable c) if so, how does this provision interact with the provisions of Section 134 of the Trademarks Act and Section 62 of the Copyright Act. He then goes on to analyse the Court’s observations with regard to the Heydon’s Rule, and its applicability in this case.

Thomas then follows up with Part II, where he considers the applicability of Section 20 of the Code of Civil Procedure in this case, and then attempts to analyse how Section 20 interacts with Section 134 of the Trademarks Act and Section 62 of the Copyright Act. He then considers the implications of the Court’s decision in the case, writing that most importantly, it would effectively prevent litigants from suing in a particular jurisdiction when the cause of action has arisen elsewhere, and in the process causing massive inconvenience to defendants – often not particularly well-off – by forcing them to travel far and wide to appear before the Court. He however, notes that the judgement grants them only a limited relief in the instances where the cause of action has arisen in a place where the plaintiffs have a subordinate office. He ultimately states that upon looking at the picture as a whole, it might very well be premature to decide whether the decision will favour either of the parties.

Finally, we had a guest post by Ritvik Kulkarni, where he considered the recent writ petition filed before the Division Bench of the Delhi HC by the Delhi Network of Positive People (DNPP), attacking the exploitative practice of filing divisional applications before the Controller. He notes that despite the fact that Section 6(1) of the Patent Act allows divisional applications to be filed only in respect of the invention applied for in the parent application, and Section 10 mandating that a patent application containing a claim of complete specification must only be in relation to a single invention, and in the case of a group of inventions, to a single inventive concept – many pharmaceutical companies quite blatantly abuse the process by filing multiple divisional applications identical to the first application. In its petition, the DNPP requested the Court to issue specific directions to the Ministry of Industry and Commerce, and the Controller to take corrective steps to resolve this issue. The Division Bench of the Court, whilst noting that it did not have the jurisdiction to direct public bodies to legislate upon patent law, directed the respondents to treat the petition as a representation of the DNPP’s grievances, and to look into the matter and take appropriate action. Ritvik goes on to note a significant lacking in the petition – the absence of any mention with regard to a specific divisional patent application, which essentially resulted in the dilution of the petitioner’s locus itself.


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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