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SpicyIP Weekly Review (December 31-January 6)


Hello, readers! The first week of the year has been quite exciting for the blog, with our year-end review of 2017 in Indian IP, Prof. Basheer kicking off SpicyIP’s Interview Series, and Prashant breaking some major developments at the IPAB, along with some other interesting reads and news.

Pankhuri curated our Top 10 lists for 2017 as a year in review post. The post highlights crucial developments in four fields –

a) Top 10 IP Cases/Judgments (Topicality/Impact)

b) Top 10 IP Cases/Judgments (Jurisprudence/Legal Lucidity)

c) Top 10 IP Legislative and Policy Related Developments, and

d) Top 10 Other IP Developments

It’s a great way to catch up on anything important you may have missed out the previous year!

To kick off 2018 on a high note, we’re excited to present the SpicyIP interview series – frank conversations about law and life with IP luminaries. We were honoured that Ms. Justice Prabha Sridevan (retd.) of the Madras High Court and the IPAB spoke to us at length about her career, her motivations, her time at the bench and insights into the state of IP jurisprudence in India. This is a must read, and we hope you enjoy the future interviews in this series.

For our topical highlight for the week, Prashant highlighted an important and distressing development – the appointment of Mr. Justice Manmohan Singh (retd.) of the Delhi High Court to the charge of the head of the Intellectual Property Appellate Board. As Prashant notes, there are certain issues with this appointment, not least that Justice Singh has additional charge of another tribunal, which could hinder his role at the IPAB.

For our thematic highlight, Prof. Basheer had us pondering about the meaning of ‘newness’ in innovation and the future of intellectual property, a theme we’re sure to return to repeatedly over the course of the year. Tying in Socratic parables and artificial intelligence, Prof. Basheer leaves us wondering what paradigm shifts in IP and patent jurisprudence await us in the future.

Sreyoshi brought us the news of PPL’s 11th hour efforts to injunct various public houses from using their repertoire without authorization, by obtaining favourable orders at the Bombay and Madras High Courts. While the Bombay High Court granted an injunction against the various defendants, the Madras High Court ordered the Defendants to make a security deposit in the interim. Sreyoshi analyses the orders in light of the fact that PPL continues to demand royalty payments and administers copyrights without being a copyright society which is authorized to do so under the Copyright Act, and raises important questions about the role and propriety of such companies.

Next, Rajiv brought us his take on the TCL Mobile Limited, and TCT Mobile v. Telefonaktiebolaget LM Ericsson in California on the point of FRAND license obligations and royalty determination. Rajiv notes that the case is significant in that it assessed the royalty rates on the entire portfolio being contested, as well as a rare judgement that analysed the ‘Non-Discriminatory’ aspect of FRAND licenses.

Next, we had a guest post from Ms. Punkhuri Chawla, a Research Analyst at the Jindal Initiative on Research in IP and Competition (JIRICO) at the O.P. Jindal Global University. Pankhuri’s post examines Standard Essential Patents jurisprudence in India, in the context of interim orders, which is a particularly important study given the prevelance of such interim arrangements. The post examines instances of interim arrangements made between Plaintiffs and Defendants in SEP cases, and the larger implications of these, in particular the possible implications on encouraging research and development investment in high technology sectors, where SEP’s usually come into play.

Finally, I brought to you news of the Delhi High Court order, whereby it refused to grant an injunction to protect the domain bookmyshow against the domain bookmysports.com. My post highlights the infirmities in Ms. Justice Gupta’s analysis of the Plaintiff’s prima facie case, which remains silent on many counts and obfuscates standard trademark infringement analyses.

Other Developments

India

Judgments

  1. Unit No. 362 vs M/S. Hype – Delhi District Court [December 12, 2017]

The court passed a decree of permanent injunction restraining the defendants from infringing the copyrights of the plaintiff and directed them to render accounts of all revenues and profits illegally and unlawfully earned from any events at which the plaintiff’s copyrighted sound recordings were publicly performed without a license. It was held that such a performance without a valid license from the plaintiff would constitute infringement of the plaintiff’s copyrights as the plaintiff was held to be the exclusive owner of the ‘On Ground Performance’ Rights of the songs assigned to it by Zee.

  1. M/S Three-N-Products Pvt. Ltd. vs M/S Kairali Exports And Anr. – Delhi High Court [January 3, 2018]

The plaintiff filed the suit seeking permanent injunction restraining the defendants from passing off, infringement of trademark and for rendition of account, etc on the ground that the plaintiff was the prior adopter of the mark “AYUR”, which was denied by the Court as the word AYUR was neither an invented word nor associated only with the goods of the plaintiff as claimed and the word “AYUR” has been used historically and is derived from the Hindu Vedic Texts. The Court held that a generic or descriptive mark has lesser legal protectability and a higher burden of proof on the person claiming distinctness, in light of which the defendant’s mark “AYURVASTRA” is completely distinct from that of the plaintiff in its style, design and getup making the explanation for its adoption reasonable and thus dismissed the plaintiff’s application.

  1. M/S Castrol Limited & Anr. vs Iqbal Singh Chawla & Anr.– Delhi High Court [January 3, 2018]

The court granted the plaintiffs a permanent injunction restraining the defendants from using the mark ACTIV and/or ACTIVE in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration as that of the plaintiffs. However, the injunction was held to not affect the right of the defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration as it was a dictionary word descriptive of the product sold. The court also passed a decree in the sum of Rs. 2,00,000/ in favour of the plaintiff against defendant no. 1., directed the defendants to deliver up to the plaintiff the infringing label packaging etc. as well as to pay up the costs of the suit to the plaintiff.

  1. Impresario Entertainment & Hospitality Pvt. Ltd. v. S & D Hospitality – Delhi High Court [January 3, 2018]

The Delhi High Court held that it has no territorial jurisdiction to entertain the trademark infringement and passing off suit filed by the Plaintiff, a company having its registered office in Mumbai and running a number of restaurants under the trademark ‘Social’ in various cities including Delhi, against the Defendant who’s operating two restaurants under the trade mark ‘SOCIAL MONKEY’ in Hyderabad. Applying the tests laid down by the Division Bench in the Banyan Tree case, the court noted that the cause of action in this case cannot be said to have arisen in Delhi as even if the customers from Delhi can book the Defendant’s restaurants in Hyderabad through the Zomato and Dine-Out websites, the commercial transaction cannot take place unless the customers go to Hyderabad and avail the Defendant’s services. It further observed that the Plaintiff cannot claim the cause of action to have arisen in Delhi on the basis of a solitary transaction through the internet.

News

1. Nilambur Teak becomes the first forest produce to get its own GI tag

2. A2B alleges trademark breach

3. IPO as ISA – the progress so far

4. Sunburn feels the heat of songs’ copyright owner

5. No monopoly over a ‘perforated’ footwear design, Delhi HC tells Crocs India

International

1. German ‘hate-speech’ law tries to regulate Facebook and others – will it work?

2. Taylor Swift asks to shake off copyright lawsuit

3. USITC to probe Apple following Qualcomm complaint

4. Spotify sued for $1.6bn over copyright infringement

 

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