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SpicyIP Fortnightly Review (April 17-29)


Topical Highlight

The topical highlight for this fortnight was Rajiv’s analysis of the recent ruling of the United States Supreme Court (USSC) in the case of Oil States Energy Services v. Greene’s Energy Group, upholding the legality of the post grant review process before the Patent Trial and Appeals Board. Going over the facts and procedural history of the case, Rajiv notes that the process for post grant review was brought into American patent law by way of the ‘America Invents Act’ in 2011. Although this fundamentally changed American patent law and made it pari materia to global patent law, it was opposed by industry groups. He argues that this decision by the USSC is notable because it strikes down this opposition by industry groups, and ensures that this post-grant review process remains within American Patent Law.

Thematic Highlight

This fortnight, we had two thematic highlights –

Ms. Latha Nair wrote a brilliant guest post on the propriety of registering regional foodstuffs as GI. As she notes, this discussion is timely, considering the recent (on-going) GI tussle between West Bengal and Odisha over ‘Rasogolla’. Arguing that the situation concerning GI in foodstuffs presents a grave policy challenge to India, she suggests that the Act be amended to exclude the registration of foodstuffs with generic recipes, among other things. She also draws on the EU GI regime – notably the ‘Traditional Specialties Guaranteed’ system and suggests that India adopt a similar system to protect its traditional recipes.

Justice (Retd.) Prabha Sridevan commemorated the World IP Day, 2018 by articulating her thoughts on the theme for this year: ‘Celebrating Women in IP’. She takes us through global jurisprudence, the lives of successful women and their experiences with sexism, etc. before expressing her views on how best to celebrate Women in IP – especially within the Indian context. Her thoughts are in themselves, prompts for further discussion and reflection.

Kick-starting this fortnight, we had a guest post by Dr. Deepa Kachroo Tiku on the recently delivered judgment by the Delhi High Court in the Monsanto-Nuziveedu dispute, on the patentability of biotech inventions. Dr. Deepa delves into the question of patentability u/s 3(j) and argues against the Court’s holding that all processes involving plant biotechnology are eventually “essentially biological processes”. Observing that this is a dangerously erroneous understanding, she cements her point by critically analysing the provisions of the patent act, the court’s interpretation biotech patent laws in Europe as well as the provisions of the PVPFR Act.

Next, I wrote on the recent ‘moral rights’ dispute between lyricist, Mr. Javed Akhtar and composer-artist duo Amaal Mallik and Armaan Mallik. Using this dispute as a prompt, I delve deep into some of the hitherto unexplored issues posed by moral rights: i.e. the evolution of the international standard of moral rights protection, and the economic aspects of such rights. In Part II, I plan to address some of the policy related aspects of the same.

Finally, Mathews reported on the recent take down of certain parody videos mocking Rahul Gandhi, from Youtube. The takedown was a result of a copyright infringement notice served by Congress. Mathews traces the line of argument followed by congress, and then disagrees with the allegations of copyright infringement, as put forward by them. He argues that videos in question qualify under “criticism and review” and are therefore to be considered as “fair dealing” under copyright law.

Events & announcements

Pankhuri announced that the London School of Economics is calling for abstracts for its symposium on The Access, Use and Circulation of Biogenetic Resources: The Nagoya Protocol and Implementing Measures. The symposium is scheduled to be held on September 11-12, 2018. The deadline for submitting abstracts is May 20, 2018.

Pankhuri announced that the Inter University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT is hosting a seven-day exhaustive training programme for law teachers from 22nd to 29th June, 2018. The theme for 2018 is “Collective forms of IP”. The deadline for submission of applications is May 15, 2018.

Pankhuri announced that Prof. Shubha Ghosh, Crandall Melvin Professor of Law and Director of Technology Commercialization Law Center at Syracuse University College of Law are inviting proposals for a book project, tentatively titled ‘Forgotten Intellectual Property Lore’. The deadline for submission of proposals is June 30, 2018.

Other Developments

Indian

Judgments

M/s MRF Ltd. v. Raadhakrishna Reddy – Madras High Court [March 28, 2018]

The court granted ex-parte perpetual injunction restraining the defendant, former dealer of the plaintiff, from infringing the plaintiff’s registered trademarks including ‘MRF’ as well as the copyright in its artistic works, by continuing to use them even after the termination of the dealership. It also awarded exemplary damages to the tune of Rs.10 lakhs under the amended Section 35A of CPC.

Sandisk LLC v. Ishu Narang – Delhi High Court [April 11, 2018]

In a summary judgment, the court granted permanent injunction restraining the defendant from infringing plaintiff’s registered trademark ‘SANDISK’ as well as copyright in its artistic work and passing off its goods as those of the Plaintiff by selling counterfeit products. It also directed the defendant to pay Rs. 4,45,000 for value of goods seized at its premises and hand over those goods for destruction to the Plaintiff.

Vior (International) Ltd. & Anr. v. Maxycon Health Care Private Ltd. – Delhi High Court [April 12, 2018]

The court passed an ex-parte injunction restraining the defendant from infringing the Plaintiff No. 1’s patent over ferric carboxymaltose by manufacturing and selling it under the misrepresentation on its website that it has been granted a license to manufacture and commercialize it. The defendant was also restrained from infringing the Plaintiff no. 2’s copyright in the literary write-up /content of its website by brazenly copying it on its website. The Court also awarded damages to the tune of Rs. 10 lakhs to the Plaintiffs observing that “the damages should be awarded not merely to compensate the plaintiffs for the loss that has been sustained by reasons of the defendants‟ wrongful act, but also to punish the defendants in an exemplary manner and vindicate the distinction between a willful and innocent wrongdoer”.

 M/s. Novex Communications Private Limited v. M/s. VVT Hotels Private Limited and Anr.  – Madras High Court [March 28, 2018]

In a summary judgment, the Court granted a permanent injunction restraining the Defendants from infringing  the copyright in sound recordings of the Plaintiff by publicly performing or communicating them to the public, or allowing their premises or any premises under their control to be used for it, without obtaining a license from the Plaintiff. However, the Court did not find it a fit case to award costs or additional relief to the Plaintiff in light of the Defendants stating in their affidavit that they had not played the Plaintiff’s sound recordings and will play them in the future (if they wish to) only after obtaining a license from the Plaintiff.

Marico Ltd. v. Mrs. Jagit Kaur – Delhi High Court [April 20, 2018]

In an ex-parte rectification proceeding, the court set aside the judgement of the Copyright Board, and accordingly cancelled/rectified respondent’s copyright registration of artistic work for the label ‘NIHAL UTTAM’, while terming it to be a colourful imitation/ substantive reproduction of appellant’s original label, namely ‘NIHAR COCONUT OIL’. The court further noted that Copyright Board made fundamental errors as inter alia instead of comparing both labels and considering whether the impugned label lacks originality to determine passing off action, the Board earlier rejected rectification petition on the ground that the word ‘NIHAL’ and ‘NIHAR’ owe their origin to different languages, i.e. Sanskrit and Persian, respectively.

Deere & Company & Anr. v. Malkit Singh & Ors. – Delhi High Court [April 23, 2018]

In an oral judgement, the court while allowing defendants to file written statement, also granted interim injunction against defendants restraining them from using plaintiff’s trademark including trade dress comprising of distinctive green and yellow color combination, in respect of agricultural products which includes Combine Harvesters, Rice Transplanter, Threshers etc. The plaintiffs had filed the suit inter alia for infringement and dilution of their trademark, and passing off of trade dress, while asserting that by virtue of an earlier decision of the same court their trademark, including green and yellow color mark, has been declared well-known trademark. Accordingly, the court was of the view that prima facie case of infringement and passing off is made out in favor of plaintiff, and granted injunction until further orders.

Marico Limited v. Vivek Mittal –  Mumbai High Court [April 11, 2018]
The Court granted an ex-parte interim injunction restraining the Defendant from directly or indirectly disparaging or denigrating any products of the Plaintiff, specifically “PARACHUTE ADVANSED”, “HAIR & CARE”, “SAFFOLA OILS” and “SAFFOLA OATS”, any contents thereof or the process involved in their manufacture. The Defendants were also restrained from infringing the Plaintiff’s trademarks “PARACHUTE ADVANSED”, “MARICO’S HAIR & CARE” and “SAFFOLA”, and were directed to take down/ remove and/ or block/ restrict access to YouTube videos set out in the Plaint and any other audio or video of similar nature.

News

International Developments

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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