Others

SpicyIP Weekly Review (September 10 – 23)


The thematic highlight for this fortnight was Prashant’s post in response to a recent article by Professor Lawrence Liang on the DU Photocopy Case, almost one year since it was decreedPrashant, who has previously critiqued the judgment in some incisive pieces on this blog, challenges certain premises on which the article celebrates the Delhi High Court’s judgment, including jurisprudence on whether copyright is a statutory or a natural right, as well as the history and effect of the Stockholm Convention Protocol Regarding Developing Countries. One year after the landmark judgment, the discussion highlights issues on educational fair dealing which remain to be resolved.

The topical highlight was Sreyoshi’s post on the Bombay High Court’s order restraining an unauthorised remix of Keh Doon Tumhe, the Kishore Kumar ballad from the movie Deewar. The Bombay High Court held in favour of the Plaintiff, Trimurti Films, rejecting the Defendant’s argument that a contract by which it had been assigned rights in the sound recording of the song also subsumed the rights to the underlying music and lyrics. As Sreyoshi notes, the judgment is important in the context of the treatment of remixed versions of songs under the Copyright Act, post the 2012 amendments – the question of whether remixes are entitled to statutory licensing as cover versions of sound recordings, remains to be authoritatively answered by courts in India.

Flagging off an interesting series of posts on the framework of intellectual property law, Prateek wrote about the seminal case of Baker vs Selden, a 1879 judgment of the US Supreme Court, where the court explained the distinction between rights under copyright law and under patent protection by examining the difference between the description of an art and the use of the art being described. Prateek’s post was succinct and useful, and I’m looking forward to more of this series.

In other news, I reported on the application by a company named the Screenwriters Rights Association of India (SRAI), to be recognised as a copyright society under the Copyright Act. The application was filed by the SRAI to license the works of film writers, and its members currently include Javed Akhtar and Saket Choudhary, among others.

I also wrote about the settlement between the producers of the Manganiyar Seduction and a copycat production which utilized the same stage structure and directions. While the dispute has been settled, the news was a springboard to an analysis on whether stage directions such as lighting and movement could be considered to be copyrightable under Indian law.

Next, Prashant brought us news that the Competition Commission of India has outsourced a study on “Situation Analysis to understand the prescription and referral pattern of Hospitals and Medical Practitioners and also the tie-ups and networking amongst various stakeholders in Health Care Sector.” Prashant highlights the problems in the CCI contracting out such a study, which includes a big question mark on the CCI’s power to enter into such a contract, as well as several issues with the construction of the RFP itself (limiting the applicants to the NCR, issues with the eligibility criteria for the panel, etc.).

Sreyoshi informed us about the Copyright Office’s decision to make applications for copyright registration more open and transparent. The Copyright Office, through two recent notifications, has decided to publish a list of copyright applications, as well as registrations granted by the office and corrections or rectifications to the same.

Next, Pankhuri informed us that the Centre for Innovation, Intellectual Property and Competition, National Law University, Delhi will be organising the second Asia-Pacific Workshop on Innovation, Intellectual Property, and Competition which will take place from February 5 – 10, 2018. The workshop will explore important contemporary issues at the interface of competition law and IP. The last date for applications is October 31, 2017.

Other Developments

Indian

Starting this week, we will be informing our readers of other recent IP developments in India  as well, in our weekly reviews.

Judgments/Orders

1. Wealth Advisors (India) Pvt. Ltd. v. Citibank – Madras High Court [September 6, 2017]

The court dismissed a writ petition praying for quashing of IPAB’s order allowing Respondent’s application for removal of Petitioner’s mark ‘WEALTHADVISORS’ Logo from the register upon concluding that it is not distinctive under Section 9 of the Act. The Court held that the Petitioner’s mark and logo had not acquired any distinctiveness as on the date of application and also, the words ‘WEALTH ADVISORS’ have become ‘publicly juris’. It further held that these words are not only suggestive, but also descriptive in nature, and thus, as such, no one could claim exclusivity over their use.

2. M/S Aggarwal Tobacco Manufacturing Co. v. Mr. Santosh Chaurasia – Delhi High Court [September 8, 2017]

The court granted an interim injunction restraining the Defendant from selling its products under the mark ‘RAILY’ in a trademark infringement and passing off suit filed by the Plaintiff company selling its tobacco products under the trademarks ‘RALLY’/‘AFGHAN RALLY’. The Defendant had claimed that the Plaintiff’s marks are not unique, that he had coined the word ‘RAILY’ and that he had been using it since 2010 as opposed to the Plaintiff who started using ‘RALLY’ only in 2012. The court rejected his arguments, holding that the marks ‘RALLY’ and ‘RAILY’ are deceptively similar and the defendant was not able to prima facie prove ‘prior use’.

3. Shree Sant Kripa Intellectual & Anr. v. Syska Mobile Semi Conductors & Ors. – Delhi High Court [September 11, 2017]

The court granted an ex-parte permanent injunction restraining the Defendant from passing off their goods as that of the Plaintiff and infringing the copyright in its artistic work/logo titled ‘SYSKA’ by hosting the website under the domain name ‘www.syskamobilecorporation.com’ and using the Plaintiff’s trademark and logo ‘SYSKA’, which have acquired reputation and goodwill in India, on this website, the t-shirts printed by it etc.

4. Bata India Limited v. M/S B.S.R. Stylish Walk – Delhi High Court [September 11, 2017]

The court granted an ex-parte permanent injunction restraining the Defendant from infringing the Plaintiff’s trademark ‘BATA’, infringing the copyright in its artistic work and passing off its goods as that of the Plaintiff by carrying on their business under the name and style ‘BATA Showroom’.

5. Hindustan Unilever Ltd. v. Shailender Kumar – Calcutta High Court [September 13, 2017]

The court granted an ex-parte interim injunction restraining the Defendants from infringing Plaintiff’s copyright in the art work displayed on the packet in which its detergent powder ‘Active Wheel’ is sold by selling its detergent powder ‘Active White’ in a prima facie deceptively similar packet.

6. Aakash Educational Services v. Akash Educational & Charitable Trust & Ors. – Delhi High Court [September 14, 2017]

The court granted an ex-parte permanent injunction restraining the Defendants from infringing the Plaintiff’s registered trademark ‘AAKASH’, infringing the copyright in its art work titled ‘AAKASH’ and passing off their services as that of the Plaintiff by using the identical mark ‘AKASH’ for running their coaching centres named ‘AKASH Charitable Trust’ and ‘Akash Learning Centre’.

7. Drs Logistics (P) Ltd. & Anr v. Sandeep Chohan alias Sandeep Kumar & Ors. – Delhi High Court [September 15, 2017]

The court granted an ex-parte permanent injunction restraining the Defendants from infringing or diluting the Plaintiffs’ registered and well known trademark ‘Agarwal Packers & Movers’ and other registered marks and passing off their services as that of the Plaintiff by using a number of trademarks, trade names and domain names identical/deceptively similar to them. It, inter alia, directed the Defendants to permanently transfer/delete/block the domain name ‘www.agarwalpacknmove.com’ and pay punitive damages of Rs. 3 lacs to the Plaintiff.

8. M/S Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors.– Delhi High Court [September 18, 2017]

The court dismissed a writ petition filed by the petitioner challenging an order passed by the Registrar of Trademarks renewing the trademark ‘Lokpriya Easynotes’ that had expired in 2011. The challenge was made on the grounds that since the application was made after the expiration of the registration of trademark, it was required to be accompanied by the prescribed surcharge in addition to the prescribed fee, but it was not. The Court held that the defect was a curable one, which the Registrar ought to have brought to the applicant’s notice and since the Registrar failed to do so, the applicant could not be deprived of the right to cure the defect within the time prescribed under the Trade Mark Rules.

9. Sanjay Agarwal Alias Sanjay Kr v. The State Of Jharkhand – Jharkhand High Court [September 14, 2017]

The dispute concerned the alleged sale of duplicate electrical wires under the Havell’s brand name, and the accused was apprehensive of arrest under Section 63 of the Copyright Act. Holding that the Copyright Act would not apply in this situation, the court granted anticipatory bail to the accused.

10. Kent Ro Systems Ltd & Anr v. M/S Kentech Ro Systems & Anr. – Delhi High Court [September 19, 2017]

The court granted an ex-parte injunction restraining the Defendants from infringing the Plaintiff’s registered trademark ‘KENT’ and passing off their goods as Plaintiff’s by selling identical goods (water purifiers) under a deceptively similar mark ‘KENTECH’ and using the domain name ‘kentechro.com’. It, inter alia, directed the Defendants to transfer the domain name and pay punitive damages of Rs. 3 lacs to the Plaintiff.

News

1. Over 1,400 flour mills face closure threat over GST levy on branded packs

2. Not a single tweet withheld in India between Jan-June 2017: Twitter Transparency report

3. Complainant does not appear in court for 6 years, man let off

4. State’s bid to get GI registration for gamosa

5. Govt’s trademark Rajasthali falls prey to piracy, legal action sought

6. Intellectual Property (IP) Policy In India Affecting The Appliances And Consumer Electronics (ACE) Industry

7. ‘R&D investments into seed sector under threat’

8. Julie 2: Pahlaj Nihalani sued by NR Pachisia over copyright breach

International

1. Nokia gets decision in patent arbitration with LG

2. Malaysia moves forward to combat Hepatitis C; issuing compulsory license to produce generic treatment

3. Roche wins expanded EU approvals for Gazyvaro, Actemra

4. Taylor Swift faces copyright lawsuit for lyrics of ‘Shake It Off’ 

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