SpicyIP Weekly Review (October 23 -29)

spicyip-weekly-reviewThis week’s topical highlight is Balaji’s coverage of an MCI Notification that amended the  Indian Medical Council (Professional Conduct, Etiquette and Ethics) Regulations, 2002 to effectively make it mandatory for doctors to prescribe generic drugs, and preferably in capital letters. Balaji notes numerous unsuccessful approaches in the past to mandate generic prescription, that failed due to varying reasons such as concerns of drug quality, and the unavailability of generic drugs. He then effectively summarises the prospects for the implementation of the notification in the country.

The thematic highlight of the week is undoubtedly Prof. Basheer’s enlightening post on how the first ever John Doe order in India was envisaged. He recounts his role in the historic lawsuit of Taj Television vs Rajan Mandal & Ashok Kumar while working under Mr. Pravin Anand. As there was no jurisprudence in India to support a John Doe, or an Ashok Kumar order as we know it today; they relied on cases from the US, Canada, UK, Australia and New Zealand – which were accepted by Justice Dalveer Bhandari leading to the said order. Prof. Basheer goes into detail of the enforcement campaign that followed, as well as highlights the innovation that India’s IP jurisprudence has seen from Mr. Pravin Anand. In conclusion, he delves into the recent John Doe jurisprudence, and promises a follow up piece on the history of John Doe.

Prashant started off the week with his piece on whether the DU Photocopy judgement places any limits on photocopying, a reply to Prof. Basheer’s and Ananth Padmanabhan’s posts. He points out that many of the works in dispute are compilations of smaller works; and when one chapter of the book is copied – it is the entirety of the work that is copied, and not a fraction of the book. In conclusion, he notes that Justice Endlaw did not bring up the issue of percentages of a copyrighted work in his judgement, and instead focused on the ingredients of Section 52(1)(i).

Mathews then brought us a note on the Karnataka High Court’s judgement of M/s. Avighna Coffee Private Limited v. M/s. Cothas Coffee Co. He notes that the order is significant for two aspects of Trademark law – lifting the corporate veil, and re-affirming the clean hands doctrine. The case centered around the alleged infringement of the trademark ‘cothagiri’, ‘Cothas Coffee’ and ‘Cothas’.  Mathews observes that although the Court lifted the corporate veil of the Appellant to find them guilty of infringement, they had used their corporate structure to circumvent the legal restrictions. He further notes that the Respondent tilted the case in their favour as they successfully convinced the Court of this circumvention – which negated the Appellants strong case on the non-existence of deceptive similarity. In conclusion, he observes that it is always safer to approach dispute resolution with clean hands on all issues, to avoid the negation of what could have been a strong case on a few out of the total issues in contention.

Next, was my post on the Pierce Brosnan – Pan Bahar controversy. I first dealt with the advertisement that started it all off, and then with his response, clarifying that the contract between them had stated that he would be endorsing only a ‘natural’ product, that contained neither tobacco, supari nor any harmful agreement. I analysed two legal issues that could arise out of this: the misuse of publicity rights, and the breach of contract between Brosnan and Pan Bahar. Another point to be considered is the permissibility of surrogate advertisements for harmful substances.

Prashant then brought us his analysis on a strange new order by the Delhi High Court in a lawsuit filed by Gulf DTH FC LLC against Dish TV India. The lawsuit deals with the alleged spill over of Dish TV’s signals in territories that Gulf DTH had broadcasting rights in, and the consequential sale of STB’s in those territories. Prashant notes many legal infirmities in this order, starting with the fact that the alleged copyright infringement is in a foreign country and not in India, which negates Gulf DTH’s rights under the Copyright Act. He notes that Justice Murlidhar failed to consider the territorial nature of copyright law, and that the Copyright Act “extends to the whole of India”, as provided for in Section 1(2).

Next, we carried a guest post by Mr. Sandeep K. Rathod on new trends in Pharmaceutical Patent Infringement Action. He addresses the recent practice of pharmaceutical companies filing lawsuits against individuals, which upon deeper checks turn out to be patent infringement suits against generic pharmaceutical companies. These checks reveal that the suits are filed against senior officers of the company, who act as the named defendant and the actual generic company shielded by the umbrella clause ‘and another’. This causes the name of the generic company to not appear on searchable cause lists, and the company remains unaware of any such ‘ex-parte’ suits filed. He finds this practice worrying, as it prevents the generic companies from presenting their defence until after the injunction has been issued.

Pankhuri then ended the week with a reminder of the upcoming deadline  of October 31st to apply to SpicyIP’s New IP Case Law Team. A total of 3-4 law students/lawyers will be chosen to prepare quick summaries of about 3-4 IP orders/judgments each per week for a minimum period of six months. She has provided all details relevant to the application procedure.

International Developments

  1. US court rules for music companies in MP3tunes copyright case
  2. Oracle takes Java copyright dispute with Google to appeals court
  3. Copyright conundrum: European Commission proposes tweeting to infringe copyright
  4. FCC adopts new privacy rule limiting what ISPs can do with your personal data

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