SpicyIP Weekly Review (March 5-11)

The topical highlight of this week is Professor Basheer’s post on the decision of the Oxford University Press and other publishers to withdraw their suit against Delhi University and its photocopier, Rameshwari. Professor Basheer commences his analysis by noting that the verdict brings to an end a legal saga that dragged on for five long years and then shares a highly informative timeline of the case. He then notes how the Delhi High Court’s verdict, while protecting the interests of publishers, was a huge win for educational access in India. Finally, he expresses the hope that this verdict will pave the way for a more collaborative relationship between publishers and universities/students, as opposed to the kind of confrontational relationship which culminated in this case.

The thematic highlight of this week is Inika’s two-part analysis of the Bombay High Court’s Full Bench verdict on the interplay between Section 29(4) and 29(5) of the Trademarks Act, 1999 in the case of Cipla versus Cipla Industries Pvt. Ltd.
In the first part, she sets forth the factual matrix of the case and notes that the two significant facts of this case were the fact that the plaintiffs and defendants sell different goods and the defendants’ use the plaintiffs’ trademark as part of their trade name. She then talks about the Raymond decision in which a Division Bench of the Bombay High Court had arrived at the conclusion that Sections 29(4) and 29(5) operate entirely in different spheres, meaning thereby that a defendant cannot be liable if it uses the plaintiff’s trademark as part of its tradename when it deals in dissimilar goods or services. She then analyzes the verdict of Justice Patel in the Cipla case, in which he arrived at the conclusion that the Raymond case ought to be reconsidered, in light of the fact that it has the effect of rendering a plaintiff remediless when its mark is used by a defendant, dealing in dissimilar goods, as part of its corporate name.

In her second post, she grapples with the reasoning deployed by the full bench in reaffirming the ratio of the Raymond case. More specifically, she notes that the full bench, on the application of the literal rule of interpretation, arrived at the conclusion that Section 29 only regards the use of the plaintiff’s trademark by the defendant as part of its trade/corporate name as trademark infringement when the same relates to the goods or services for which the mark is registered. She then examines the court’s disagreement with the Delhi High Court’s verdict in the case of Bloomberg Finance versus Prafull Saklecha and outlines the court’s response to the 4 questions framed by Justice Patel for its consideration. Finally, she concludes by noting that the verdict creates a loophole in Indian trademark law that has the effect of rendering a proprietor of a well-known mark remediless when its mark is used by another proprietor, dealing in dissimilar goods, as part of its trade/corporate name.

Our first post this week comes from Inika who analyzes the Bombay High Court’s decision to allow the release of the movie ‘Rangoon’. She begins by outlining the gravamen of the plaintiff’s case, on the basis of news reports, given that the order released by the court does not record the same.
She then discusses leading judgments on copyright infringement in films, concluding that the plaintiff will be able to prevail if it is able to show that the director of Rangoon, Vishal Bhardwaj, had access to the script of the film that the plaintiff intended to release.
Thereafter, she delves into the vexed question of whether fictional characters can be copyrighted, noting that Indian courts have hitherto failed to answer this question in a satisfactory fashion and have not delineated the conditions under which this can be done.
Finally, she talks about the tests developed by American courts to determine whether a particular fictional character is eligible to claim copyright protection and concludes with the hope that the Bombay High Court will use the opportunity presented by this case to clarify the law on this issue.

Next, Pankhuri informed us that INTA is organizing a half-day workshop on ‘Building Aspirational Brands’ at the St. Regis Hotel in Mumbai on 15th March. Those interested can register for the event here and for INTA’s annual meeting in Spain here.

Thereafter, Pankhuri informed us that the World Trade Institute of the University of Bern, Switzerland and the Centre for WTO Studies, Indian Institute of Foreign Trade are currently inviting applications for their course on International Trade Law and Policy from 5th to 30th June. Interested candidates can fill the registration form available here.

Thereafter, I analyzed the Delhi High Court’s recent judgment in the case of Kent Ro System and Anr. Versus Amit Kotak and Ors. In which it refused to compel intermediaries to screen content violative of intellectual property laws on an ex-ante basis. After setting forth the factual matrix of the case, I delineated the arguments of the parties on the obligation of intermediaries to engage in ex-ante screening. Thereafter, I dealt with the court’s decision to reject the plaintiffs’ prayer and articulated the 3 reasons given by the court in support of this conclusion. Finally, I commented on the wider ramifications of this decision, noting that this verdict has the effect of creating two distinct and separate legal regimes, insofar as the ex-ante screening of content is concerned, based on the nature of the content.

Next, Rajiv shared with us the reasons why he believes that the practice of charging for expired patents in portfolio licenses should stop. He commences his post by noting that the argument offered by patent owners in favour of portfolio licensing is deeply flawed, inasmuch as it fails to take note of the fact that the value of the portfolio is likely to change significantly over a period of time. He then notes that the bundling of patents that portfolio licensing entails is also problematic from a competition law lens, inasmuch as it results in appreciable adverse effects on competition. He then adverts to a recent Delhi High Court order on the payment of royalty for portfolio licensing and notes, on the basis of examples of GSM, GPRS and EDGE, that defendants have been compelled to pay royalty even after the expiry of the patents that form part of the portfolio. Finally, he notes that the methodology used for the calculation of the royalty amount is also flawed and needs to be rectified.

Next, Pankhuri discussed the Delhi High Court’s decision that export of a patented drug is also covered within the four squares of the bolar exception statutorily engrafted in Section 107a(a) of the Indian Patent Act. She notes that the court has allowed Natco to export to China Sorafenib Tosylate, a drug for which it was granted a compulsory license, thereby rejecting Bayer’s argument that the same would be beyond the terms of the compulsory license. We will be putting out a detailed post on this judgment soon!

Next, we published a post from Afreen Hashmi, a fellowship applicant, who notes with dismay that there are a limited number of women in the field of IPR. She begins by calling into question the proposition that all significant inventions in recent centuries have been made by men, by citing the example of such women as Margaret E. Knight and Maria Beasley. After briefly discussing the strategies that can be adopted to close the gender gap, she notes that this problem is not just confined to patents but also extends to other branches of IPR. She refers to the examples of madhubani paintings and kantha embroidery in support of the proposition that the intellectual assets created by women are often commercialized without their consent or participation. Finally, she argues that there is a need for legal and policy intervention to foster the involvement of women in IP creation and exploitation.

Next, Balu discussed the Allahabad High Court’s decision to confirm the interim injunction granted to Eastern Book Company against Thomson Reuters on the same terms as the one granted against Reed Elseiver. Noting that the judgment is perfectly in consonance with the Supreme Court’s landmark judgment in Eastern Book Company versus D.B. Modak, Balu notes that the judgment has further crystallized the ratio of D.B. Modak.

Next, Pankhuri informed us that the Centre for WTO Studies, Indian Institute of Foreign Trade is organizing an international conference on the TRIPS-CBD Linkage on March 15-17th at the Indian Institute of Foreign Trade, New Delhi. The draft agenda of the conference can be found here.

Next, Prateek shared the salient features of the Trademark Rules, 2017. He notes that the total number of forms has been brought down from 74 to 8, by designing various forms in such a way as to make them applicable for multiple purposes. He notes that the effect of the sharp rise in the filing fees for various purposes has been offset by the grant of concessions to startups and small enterprises. Relying on the views of Professor Basheer, Prateek states that the constitutional tenability of the rule by virtue of which the trademark registry has been vested with the power to declare well-known marks may be challenged. Finally, he notes how the rules focus on digitizing existing processes through e-filing, video-conferencing and greater use of email communication.

In this week’s final post, Pankhuri informed us that the Applied Research Centre for Intellectual Assets and the Law in Asia at the School of Law, Singapore Management University is looking for research fellows. Those interested in this opportunity should click here.

International Developments

1. The Federal Circuit has Invalidated 6 Patents Held by Intellectual Ventures on Computer Processes
2. The U.S. Patents Trial and Appeal Board has Upheld the Validity of 4 Patents Granted to Acorda Therapeutics over Ampyra Tablets
3. French Court Finds Jeff Koons Guilty of Copyright Infringement
4. Two EU Internet Advocacy Organizations Have Urged Internet Users in Europe to Express Their Disagreement with a Proposed Directive That Envisages the Installation of Content Filtering Technologies
5. China has Granted Preliminary Approval to 38 Trump Trademarks


Rahul Bajaj

Rahul Bajaj is a fourth year law student at the University of Nagpur. His interest in intellectual property law began taking a concrete shape when he pursued Professor William Fisher's online course on copyright law in the second year of law school. Since then, Rahul has worked on a diverse array of IP matters during his internships. He is particularly interested in studying the role of intellectual property law in facilitating access to education.

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