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SpicyIP Weekly Review (October 29-November 4)


This week, we had two thematic highlights –

Simrat Kaur, an IP lawyer based out of New Delhi, wrote a guest post on Copyright Surrogacy. Simrat introduces copyright surrogacy as the attempt to reclaim copyright in public domain works. This process includes the making of digital reproductions of works that have passed into the public domain, and then claiming copyright protection over these digital reproductions. Simrat then traces the treatment of such “digital surrogates” under different jurisdictions – specifically the US and the EU – both as subjects of copyright as well as trademark law. She identifies the contradictory views taken by courts in the US and in Germany, in allowing copyright protection for digital surrogates. Finally, she deliberates upon how such digital surrogates are likely to be treated under Indian law.

Balu covered a recent interview with a member of TamilRockers, one of India’s rather well-known torrent websites. Balu notes how the interview has given us all riveting insights into the world of piracy, and draws on some of the many ways in which the pirates conduct their business. He then observes that the success of the torrent world is due to its high demand base. As long as this demand remains high, it is not likely that much will deter the pirates from continuing with their business.

Our topical highlight was Prof. Basheer’s post on the GM- technology related confusion that seems to be plaguing our government off-late. Prof. Basheer draws on some recent news: although the Maharashtra government claims that BGII has lost its efficacy, it has requested the Centre to denotify it as a BT cotton category, stating that the primary aim behind it is to reduce costs and increase accessibility for poor farmers. Prof. Basheer notes this paradox, especially in view of DIPP’s revocation proceedings against Monsanto on the ground of reduced efficacy of their BT cotton patent, despite having recently recognised GM technology as an industry ‘standard’. He wonders if this is all an instance of policy confusion, or a giant, concerted effort against Monsanto.

Pankhuri announced a call for applications by the ANU Centre for European Studies (ANUCES), for the Jean Monnet Geographical Indications Fellowship. The deadline for applications is November 30, 2017.

Finally, I reported on the criminal complaint(s) initiated by the Assistant Registrar of Trademarks, Chennai before the JMFC, at Telangana, against four proprietors. This is a rare instance of criminal enforcement of trademarks – as it was initiated by the office of the registrar. I outline the provisions of the law, under which the complaint(s) was filed, and then go over the details of the complaint(s) – including the marks involved, the names of the proprietors, and the timeline of the proceedings leading to the complaint.

Other Developments

Indian 

Judgments/Orders

  1. Monsanto Holdings Pvt. Ltd. v. M/S Real Agro Seeds & Anr — Delhi High Court [October 30, 2017] This order gave effect to a joint application for compromise petition filed by the plaintiff and the first defendant under Order 23 Rule 3 read with Section 151 CPC and suit was decreed accordingly to that effect. Since the second defendant did not file appearances, this suit for permanent injunction against trademark and copyright infringement proceeded ex parte. The plaintiffs claimed that the defendants were passing off their cucumber seeds as the plaintiff’s by using the plaintiff’s mark MALINI. Since the suit was ex parte, the averments of the plaintiff were deemed to be true and correct and the suit was disposed off accordingly.
  2. M/S Orient Ceramics and Industries Ltd. v. Square Ceramic Private Ltd. & Ors — Delhi High Court [October 30, 2017] Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s mark ORIENT, by the defendant’s deceptively similar mark ORIENTO, both from the tiles and ceramics market. The plaintiff argued that it has used its registered mark since 1982, and it was an integral part of its corporate identity, protected by copyright law as well. Relying on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980], the Court held in favour of the plaintiffs and granted a decree of permanent injunction. The Court also awarded damages of Rs. 10 lacs, despite non-appearance of defendants who did not also render accounts, as the actions of the defendants were malafide in nature, evidenced by their non-appearance and their objective to freeride on the goodwill of the plaintiff.
  3. Lifestyle Equities Cv v. QDSeatoman Designs Pvt. Ltd.  — Madras High Court [October 13, 2017] The issue in this case was whether IPR disputes would be arbitrable, in the context of a trademark servicing agreement. The Court noted that the list of unarbitrable disputes in Ayyaswamy was merely illustrative, and not the ratio or conclusion of the SC. It also reiterated that a patent right may be arbitrable, but the very validity of the underlying patent is not arbitrable, concluding that the dispute in this suit may be arbitrable. It finally decided that this issue is left open for the arbitral tribunal to decide under S.16 of the Arbitration and Conciliation Act, 1996, (competence of tribunal to rule on its jurisdiction) for the limited purpose of deciding interim measures under S.9 of the same Act.
  4. Jain Riceland Pvt. Ltd. v. Sagar Overseas— Delhi High Court [October 30, 2017] Suit was filed for permanent injunction and related reliefs against trademark infringement and passing off. The Court found that in this case the products of the parties are identical — edible oil. Relying on the Cadila Healthcare Case, the Court held that there can be no IPR over the phrase ‘LOW ABSORB’ and ‘SWAD’, as both are quite clearly common descriptive expressions even though the respondent claimed it to be a trademark due to several years of use. The court cautioned that words which describe the products cannot be trademarks. The Court further noted that the colour scheme and packaging of both the products were completely different, and the respondent had not been using the phrase for a long enough period to achieve distinctiveness. The appeal was hence dismissed.
  5. Inner Trip Reiyukai International and Anr v. Inner Trip Reiyukai International Society and Ors.— Delhi High Court [November 1, 2017] This order gave effect to a joint application for compromise petition filed by the plaintiff and the first and second defendant under Order 23 Rule 3 read with Section 151 CPC and suit was decreed accordingly to that extent. Defendants Nos. 3 to 7 never entered appearances despite service of summons. The right of the said defendants to file their written statements was closed by an order dated 23rd April, 2015. Defendants No.8 and 9 were also served and were negotiating settlement with the plaintiffs.  The suit was decreed in favour of the plaintiffs and against the Defendants Nos.3 to 9 along with the actual costs as the averments made in the plaint were uncontested, and deemed to be true and correct.
  6. Nokia Corporation & Ors v. Movieexpress & Ors — Delhi High Court [November 3, 2017] Suit was filed for declaration and permanent injunction against the use of the plaintiff’s trademark, NOKIA in the defendants’ film as Mr.NOKIA and/or Mr. NO.KEYIA and/or Mr. NA-VKIA. The Court found that the latter words are deceptively similar to the plaintiff’s mark and may cause confusion among the public. The Court also noted that the plaintiff was able to show a prima facie violation of its exclusive rights, and the non-appearance of the defendants indicated to their malafide intentions. The Court hence held in favour of the plaintiffs and awarded them damages to the tune of Rs. 5 lacs, as well as costs of the litigation.
  7. Kent Ro Systems Ltd & Anr. vs Mr Jiten Aggarwal & Ors. — Delhi High Court [November 2, 2017] This case was regarding the infringement of the plaintiff’s marks, KENT PEARL, KENT GRAND+, KENT PRIME, KENT GOLD and KENT SUPREME. Defendant no. 4 had previously entered into a compromise agreement with the plaintiffs and the suit was decreed accordingly to that extent. Defendant Nos.1-3 had not entered appearances, and hence the Court found that the averments made in the plaint were deemed true and correct. Hence, the suit was disposed off accordingly.

News

  1. ICMR releases Handbook on IPR & Technology Transfer to step up awareness among scientists
  2. Govt moves to finalize methodology to fix prices of new drugs
  3. Copyright Office to be relocated
  4. Odisha govt may apply for GI tag on hand-woven ethnic shawl
  5. Khadi trademark: Why Modi govt is so worried about protecting this IP
  6. Govt starts SMS alert facility for patent applications

International

  1. Merck Process for Stabilizing Antibiotic Compound Invalid as Obvious
  2. British Telecom Awarded Patent for Blockchain Security Method
  3. CBS sues man for copyright over screenshots of 59-year-old TV show
  4. UK: Black cab shape not distinctive enough to be trademark

Sreyoshi Guha

Sreyoshi is a law student at Symbiosis Law School, Pune. Her favourite thing about Intellectual Property Law is Copyrights. She can usually be found doing one of three things: dog-earing her favourite pages of her books, looking up a Zomato menu, or day-dreaming of the day she’ll finally meet John Mayer. She doesn’t have any notable achievements, except probably that one time when she encountered a crazy pigeon, and lived to tell the tale. Send her your thoughts at: [email protected]

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