SpicyIP Weekly Review: July 11th to 17th

We have two amazing posts making this week’s highlights: the first by our guest Harshavardhan Ganesan and the other by Balaji Subramanian.

For the first highlight, Harsha brought us his insightful take over the blossoming of an unfortunate relationship between tragedies and trademark. He starts off with a brief account of the opportunistic attempts to trademark BREXIT for beer and laments over similar attempts in relation to terms, such as JE SUIS CHARLIE, which are associated with tragic events. Similarly, he also points out that the Indian TMR is also facing TM applications for NIRBHAYA (for buses) and 26/11 (for hotels), which are associated with a brutal rape and a horrific terror attack respectively. Lastly, he puts these opportunistic acts to the test of corporate ethics and public morality and recommends enactment of concrete legislative provisions to regulate the same.

Our second highlight of the week is Balaji’s two-part series on the Delhi HC’s treatment of the Merck-Teva infringement dispute over Merck’s Sitagliptin patent. He brings a critique of Delhi HC’s decision in granting Merck an ex parte ad interim injunction restraining Teva from manufacturing the Sitagliptin API and emphasizes that the Single Judge did so without returning a finding of balance of convenience and irreparable harm. On being challenged (the O39R4 IA), the matter was eventually listed on 8th July 2016. When Teva tried to vacate this order through a review application, the Court listed this application to be heard on 8th July as well. Teva then appealed this order in light of the delayed listing and of the failure to decide the fate of the ex parte injunction within 30 days. However, the Division Bench upheld both orders.

In the second part, Balaji opines that the DB has erred in upholding this listing order. He questions the relevance of defendant’s non-submission of written statement and consent in adjournment while granting an injunction. Further, he states that the bench goes overboard in dismissing Teva’s plea for expedited disposal on the ground that the suit patent only expires in 2022 and that this would leave the defendant enough time to obtain regulatory approval after the infringement suit is decided. This is because such an order flies in the face of Supreme Court’s rulings strictly require that IP cases, and mainly temporary injunctions, to be disposed of at the earliest. Balaji firmly takes the stand that generic manufacturers have a right to produce and experiment with patented drugs regardless of whether such research occurs “just in time” for patent expiry or not and says that it is not the Court’s business to interfere with Teva’s marketing strategy.

Our first post of the week was the first of Inika’s two-part series on Uruguay’s thumping victory against Philip Morris (PM) before an ICSID Tribunal. The Tribunal upheld the validity of two controversial laws of made by Uruguay: one that prohibits tobacco companies from marketing cigarettes in ways that falsely present them to be less harmful than others, and one on plain packaging, that requires tobacco companies to use 80% of the front and the back of cigarette packs for graphic health warnings. In particular, the Tribunal shot down the PM’s argument that Uruguay expropriated its property and denied it fair and equitable treatment. For the next part of this post, Inika has promised to take us to a deeper discussion over plain packaging in the context of investor-state disputes after giving us a more detailed analysis of this award.

In this week’s second post, Prof. Basheer published the second installment of his new series on Sex and IP (“IP Juris-purience”). In the first part, Prof. Basheer covered the Viagra patent controversy and discussed its fate in UK, Canada and China. In this part, he makes a saucy analysis of a copyright infringement claim over Malayalam blockbuster film “Avalude Ravukal” (translated: her nights). R. Madhavan, a relatively unknown writer claimed that the film’s bold story of a sex worker was almost completely based on a story (“Alayazhi”) that he had written and sent for publication to a magazine (Malayalanadu). However, the Kerala High Court held that there was no substantial similarly between the movie and the plaintiff’s story. Prof. Basheer highlights the fact that the Court completely missed out on even mentioning the crucial aspect of (defendant’s) “access to the copyrighted work”. He then concludes with a discussion over the necessity of proving “access” in light of the Led Zeppelin case on “Stairway to Heaven”.

We then had Rahul’s critique on the adjudication by Justice Manmohan Singh of the Delhi HC over punitive damages in the TOYOTA PRIUS passing off dispute. At the outset, he reiterates Prashant’s stern observation that the Delhi HC’s jurisprudence on punitive damages in IP cases in general is founded upon a fallacious understanding of applicable legal principles blind reliance on precedents which are completely inapposite for purposes of helping a court decide the quantum of damages. Rahul notes that the Court’s decision of fixing the punitive amount as Rs. 10 Lakh was completely arbitrary. He also analyses in detail the statutory provisions of the TM Act in this regard. He relies upon a brilliant paper wherein its author Eashan Ghosh argues that the jurisprudence of the court as regards the grant of damages is mired in considerable confusion and lacks a sense of continuity or uniformity. In this paper, Eashan also recommends that three questions be satisfied by any Court before granting punitive damages. Rahul then concludes by adding two questions of his own.

Next, Vasundhara brought us an analysis of TVS’ patent application for ‘Shock Absorber with helper spring’ and the subsequent successful pre-grant opposition to it by Bajaj before the Chennai Patent Office. She has discussed in detail the applicant’s argument of reverse infringement. She notes that the Deputy Controller, in declaring a lack of inventive step, failed to appreciate the subtle difference between the test of enablement and that of reverse infringement. Lastly, she also deals with TVS’ successful attempt at obtaining a temporary injunction from the Madras HC for an allegedly disparaging advertisement released by Bajaj.

And in our last post for the week, Rahul has discussed Justice Patel’s recent John Doe order issued against 110 websites in order to protect the film “Great Grand Masti” against online piracy. Rahul received a comment to his earlier post; wherein a reader has exhaustively described his ordeal of suffering a misdirected John Doe order. Rahul’s current post one is a testament to the fact that academic worries expressed on reckless John Doe orders have transcended into material concerns in the real world. He remarks that such an order by Justice Patel flies right in the face of his own cautionary note that John Doe orders must be based on concrete and precise information and must be narrowly tailored to block specific URLs in contradistinction to entire websites. Lastly, He concludes by offering an insightful comment on the possible measures Courts (and the Legislature) should employ to regulate the issuance of the notorious John Doe orders in IP disputes.

That’s all folks!


Ritvik M Kulkarni

Ritvik Kulkarni is a final year student at ILS Law College, Pune. He is the Student Coordinator of the ILS Intellectual Property Rights Cell and Student Editor at the ILS Abhivyakti Law Journal since 2014-15. Ritvik first learnt of IP while preparing for his first moot; and has been regularly taking his weekly IP fix ever since. Additionally, he takes interest in learning the law and practice of domestic and international dispute settlement. Speaking of disputes, he's an ardent follower and jabra fan of Game of Thrones. You can get in touch with him at [email protected]; and dont worry he loves F.R.I.E.N.D.S too.

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