SpicyIP Weekly Review (June 25- July 1)

This week’s topical highlights were brought to us by Sreyoshi and Shamnad Sir through their posts on the Exide Trademark dispute and on Tribunal Appointments, respectively. Sreyoshi, in her piece, analyses the settlement between Exide Industries (Exide India) and Exide technologies (Exide USA) which concluded a two decade long legal battle instituted by Exide India citing trademark infringement and passing off  by Exide USA. The battle can be traced back to 2012, when the Delhi High Court decided in favor of Exide India citing laxity on the part of Exide USA in protecting its trademark and the absence of any ‘special circumstances’ to justify the same.  Exide USA appealed against this decision, and a division bench of the DHC, using a unique approach, restored the rights to the trademark to both the competitors. The Court discussed issues of retention of goodwill, transnational reputation, bonafide & concurrent use etc. to decide the case, raising important questions concerning the retention of goodwill post assignment of the trademark and the true scope and effect of concurrent use of an identical trademark for similar products. This order was then stayed on appeal by the Supreme Court, which also restrained Exide US from using the mark until final adjudication of the matter; which is not required following the discussed settlement.

In his article, Shamnad Sir highlights the recent order given by the Madras High Court, making all appointments to the 19 tribunals (under the purview of the Finance Bill and related rules) subject to its final order in the writ petition filed by the Madras Bar Association, questioning the constitutionality of  Sections 156 to 189 of the said act. Analyzing the constitutionality challenge, Shamnad Sir notes that this welcome move by the Bar Association challenges the malicious attempt of the Government to wrest control of judicial tribunals, which hitherto followed a system of appointments that adhered to the constitutional values highlighted in R. Gandhi vs Union of India.  He concludes the piece by calling the Finance Act the ‘last nail in the coffin of trivializing justice through tribunalization’, and hopes that the Court will not take this lying down.

The thematic highlight of this week has to be Divij’s post on Matal v Tam, in which he focuses on the relationship between free speech and trademarks in the light of the aforementioned judgment rendered by the US Supreme Court. Simon Tam, a member of the rock group called the The Slants, aimed to register the name of the band as a trademark. However, the same was refused by the US Patents and Trademark Office (PTO), citing a clause of the Lanham Act which expressly prohibited registration of trademarks that were ‘disparaging’   or that may cause ‘contempt or disrepute’ towards persons, living or dead’. It reasoned that this trademark may ‘disparage…or bring into contempt, or disrepute’ persons of ‘Asian descent’. Simon challenged this decision before the Trademark Trial and Appeal Board and further before the Federal Circuit Court of Appeals, where the latter held the clause to be unconstitutional. The PTO appealed to the Supreme Court, which held in Tam’s favor. The main question before the Supreme Court was whether the said clause of the Lanham Act violated the first amendment to the Constitution of the United States, which provides for the protection the freedom of speech. Finding that Trademark constituted private commercial speech, the Court further held that the clause could not withstand even the lower standard of scrutiny accorded in cases of protection of commercial speech.  It held in favor of the respondents, applying the standard of viewpoint neutrality which states that a law cannot discriminate between speech based on the government’s opinion of what such speech conveyed. It held that the clause prohibited content which gave offence, according to the government’s viewpoint, hence violating the first amendment. Divij concludes his piece by highlighting the importance of this case when placed in the larger public debate around offensive trademarks, but also questions the ease of applicability of this test in cases where mark sought to be registered is one expressly aimed at offending or being discriminatory.

This week witnessed many exciting posts, beginning with Rahul’s post on the Delhi High Court’s summary judgment in case of Ahuja Radios v. A Karim, concerning the infringement of a trademark. The importance of this summary judgment rests in the use of Order 13-A of the Civil Procedure Code, introduced in the procedural scheme of disposing IP disputes in a summary fashion (i.e. without a full-fledged trial) by the Commercial Courts Act, 2015. The discussed summary judgment marks the second time the Court has used the provisions under Order 13-A in an IP dispute, throwing light on  the court’s initiative to leverage the power of these new procedural provisions, which it hopefully continues to do with due caution.

This was followed by Divij’s post on India’s Commitment to Open data, in which he analyzes the claims of the government’s commitment in the light India’s falling rank in the  recent Global Open Data Index. Suggesting a relook at not only the enforcement mechanisms of open data laws, he advises changes in the legal framework itself. Assessing the National Data Sharing and Accessibility Policy (“NDSAP”), which was introduced to ensure transparency in governance under the Right to Information Act, he notes a volley of problems with the policy; like it being limited to ‘access’ to data, with the exact scope being undefined,  the classification of shareable and non-shareable data being entirely discretionary, its falling short of encouraging open data in India, among others. He then problematizes Open Data Licenses (“ODL”), meant to clarify the legal position on the use of government data, noting that the drafters ignored public comments that highlighted issues with the license. He then links the concept of open data to open innovation, concluding that the non enthusiastic approach of the government only adds to these inefficient mechanisms and legal loopholes which stunt the building of a stronger innovation culture, which needs looking beyond strengthening IP laws.

This post was followed by Inika’s intriguing post on the Taj Mahal Palace Hotel obtaining a trademark, making it the first building in India to do so. This trademark was granted for “services providing food and drink; temporary accommodation”, and includes the captioned picture of the Taj Mahal Palace and Tower Wing Exterior. She then enlists several buildings trademarked similarly across the globe, with even photography being prohibited under domestic laws. She then proceeds to analyze the rights granted under the Trade Marks Act 1999, arguing that if the buildings satisfies the dual test of graphical representation, and functions as an indication of source, it should be granted protection under the Act. She then analyzes these two components and the concept of the ‘image mark’, before discussing possible reasons to worry about this trademark. Firstly, she writes about the right to public heritage, which argues that the Taj Mahal Palace Hotel  is synonymous with the city of Mumbai itself, and hence rights to it cannot vest in a private entity. Secondly, she grapples with possible clashes with copyright law and thirdly, she states that in public interest, a few conditions to the use of the mark need to be instituted. She concludes by highlighting two possible ways in which the image of the hotel can be used: through a license granted by the hotel depending on the nature of the use, and statutorily permitted use, which may not prohibit models/ photographs.

This week also witnessed updates on two SpicyIP events by Pankhuri.  The First was the notification of the 6th Annual IP Teaching/Research Workshop, 2017, to be held in NLSIU, Bangalore from July 2, 2017 – July 3, 2017 by the Centre for Innovation, Intellectual Property and Competition (CIIPC), National Law University, Delhi and Centre for Intellectual Property Rights & Advocacy (CIPRA), National Law School of India University, Bangalore, accompanied by a detailed schedule.

The second was the update on the CIIPC’s Second Annual Roundtable on Innovation, Intellectual Property and Competition to be held in Taj Westend, Bangalore from July 1, 2017 – June 2, 2017  by Centre for Innovation, Intellectual Property and Competition (CIIPC), National Law University, Delhi, accompanied by details and the draft agenda of the round table conference.

Our week was concluded by another update by Pankhuri regarding vacancies in New Delhi office of S. Majumdar & Co., directed towards lawyers specializing in IP litigation. Further details can be found in her post.


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