SpicyIP Fortnightly Review (May 20-June 2)

Thematic Highlight

This fortnight’s thematic highlights were brought by Adarsh Ramanujan and our fellowship applicant, Kashish Makkar, respectively:

Adarsh Ramanujan wrote an interesting guest post, throwing some much needed light on the element of “public interest” during the grant of injunctions in patent proceedings. He deconstructs the “public interest element” – taking us through the way various aspects of it are understood by both Indian and foreign courts. He concludes by suggesting ways in which parties should approach the “public interest” factor during patent injunction deliberations.

In his second submission forthe fellowship, Kashish attempts to unveil an interesting backdrop to the DU photocopy dispute. Observing that the judgment has political undertones, he argues that the Delhi High Court in its judgment should have approached the question of infringement and fair use as a question of fact, instead of as a question of law. He observes that the Court’s interpretation and application of the latter defeated what he believes to be the legislative intent behind fair use provisions.

Topical Highlight

This fortnight’s topical highlights brought us back to the Monsanto – Naziveedu dispute:

First, we had a guest post by Mr. R.K. Trivedi, Director (Technical) of National Seed Association of India (NSAI). His post was in response to Prashant’s earlier post on whether Monsanto’s invention can be protected as a plant variety and seek benefit-sharing from Nuziveedu. Disagreeing with Prashant, Mr. Trivedi observes that The Delhi High Court has critically gone through the provisions of Indian Patents Act and PPV&FR Act to hold that India has a well-balanced legal framework that protects the rights of plant breeders, farmers and biotech companies. He then argues that India’s PVP legislation is not a copy of the UPOV model, but is instead, a novel, well-balanced legislation that protects the interests of all stakeholders. He concludes by observing that the decision is fair and bound to encourage innovation and competition in the market.

Following this, we had another guest post by Mr. Bhagirath Choudhary, the founder director of the South Asia Biotechnology Centre (SABC), New Delhi and Dr. Usharani KS, who practices at Prometheus Patent Services, Hyderabad. Their co-authored post was in response to, and in strong disagreement with Mr. Trivedi’s post. Notably, Dr. Usharani and Mr. Choudhary argue that Mr. Trivedi’s post is self-contradictory on key grounds and urge that the discussion be taken towards the more important aspects of the issue: i.e. invalidation of a biotech patent u/s 3(j) of the Patents Act; and scope and limits of patent rights upon the backcrossing of a patented gene into a seed or a plant variety.

Other Posts

Mathews covered the recent case of M/s Hilton Roulunds Ltd v. Commissioner of Income Tax (2018), where the Delhi High Court held that the expenditure incurred by the assessee for acquiring trademark was revenue expenditure, instead of capital expenditure. Mathews disagrees with the Court’s ruling – arguing that the nature of expenditure in the present case is a one-time expenditure, which is characteristic of capital expenditure. He further substantiates this argument by observing that in the instant case, the assessee can use the trademark for an indefinite period, which improves earning capability and is indicative of capital expenditure.

Next, our fellowship applicant, Prarthana Patnaik brought us her third submission for the fellowship. Prarthana discusses the copyright infringement claims surrounding Google’s ‘View Image’ extension – the tool by which Google allows for pictures to be directly available for viewing and downloading. She explores the same in the context of fair use, direct and secondary infringement liability. Subsequently, she analyses Google’s potential liability by studying the treatment of the abovementioned tests within American and Indian jurisdictions.

This was followed by a post by another one of our fellowship applicants, Rishabh Mohnot. In his post which doubles as his second submission for the fellowship, Rishabh deals with the revocation of a patent on the ground of in utility. He explores the contours of application of this ground by dividing his analysis into two broad categories: date of determination of utility; and concept and threshold of usefulness.

Events & Announcements

Pankhuri announced that the National Law University, Delhi was looking to engage three full-time Research Fellows (Law) for the Centre for Innovation, Intellectual Property and Competition (CIIPC), at its campus in Dwarka, New Delhi. The deadline for sending applications was June 3, 2018.

Other Developments

Indian

Judgments

M/S Maya Appliances Pvt. Ltd. v. Preethi Kitchen Appliances Pvt. Ltd. & Anr. – Madras High Court [April 28, 2018]

The court allowed an appeal against the single judge’s order granting an ad-interim injunction restraining the appellant from infringing the respondent no. 1’s copyright in the registered design of its tripod-shaped base unit for its ‘Preethi Zodiac’ series of mixer-grinders and passing off its mixer-grinders as that of respondent no. 1., by selling any mixer grinders with features identical or similar to respondent No. 1’s design. The appellant – the registered proprietors of its own tripod-shaped base unit design for its ‘Vidiem V Star’ series of mixer-grinders – submitted that its design is different from respondent 1’s design. The court observed that whether two designs are substantially similar or not is to be determined by applying the visual appeal test. Applying the test to the facts of this case, it noted that in the present case, since the plaintiff had not claimed monopoly over the tripod shape and thus, if the tripod is ignored, there was no similarity between the designs at all. It further pointed out the various dissimilarities between the two designs and thereby concluded that there was no substantial similarity which could be considered as fraudulent or obvious imitation.

Sandisk LLC & Anr v. Transton – Delhi High Court [May 10, 2018]

The court granted a permanent injunction restraining the defendant from infringing plaintiff’s registered trademark ‘SanDisk’ and the Red Flame Logo and passing off its goods as that of the plaintiff by selling counterfeit goods bearing the plaintiffs’ ‘SanDisk’ trademark and product packaging. The plaintiff contended that their statutory rights have been interfered with and that it had lost business, trust of consumers and its image among other members of trade. The court observed that “due to extensive use, the plaintiffs’ mark SANDISK, and Red Frame logo have acquired reputation and goodwill globally as well as in India“. It noted that the defendant was using the plaintiff’s registered trademark and product packaging to sell counterfeit products in order to unfairly benefit from the reputation and goodwill of the plaintiff and to pass off the plaintiff’s services as their own, and that this was likely to cause  incalculable losses and injury to the plaintiff as well as harm to the public. Consequently, the court decreed in favour of the plaintiff and held that it was entitled to compensation of Rs. 33,16,320/-. It, however, refused to grant punitive damages, keeping in view of the judgments in HRCN Cable Network case (2017) and the HUL case (2014).

M/S Raj Traders v. Commissioner Of Customs — Custom, Excise & Service Tax Tribunal [May 14, 2018]
Certain goods imported by the applicant were found to be non-compliant with Indian Bureau of Standard requirements. The Tribunal observed that the customs officials may be able to determine violations of copyright and trademark at the border itself, patent, GI and design infringement prove to be tricky to determine in the absence of judicial pronouncements to that effect, hence the officials must proceed with caution. Further, when all formalities associated with the registration of IPR may be undertaken by the Customs department, protection will be accorded at all the ports as specified in the notice, doing away with the need for multiple notices.

Saregama India Limited v. Eros Digital FZ LLC and Anr. — Calcutta High Court [May 16, 2018]
Application filed for removal of party in a suit against copyright infringement, wherein the applicant claimed that he was merely an agent of foreign principals and hence not liable for any copyright violation committed by them. The Court found that at a preliminary stage of the trial, one is not concerned with the merits of the dispute, and the averments in the plaint are deemed to be true. Therefore, rejecting the application, the Court directed the applicant to file their written statement in response to the plaint.

Cello Plast v. La Opala R. G. Ltd. & Ors. — Calcutta High Court [May 18, 2018]
The order dealt with an appeal against a lower court order rejecting an application for ad interim relief in a suit for passing off of identical or nearly identical depiction of trees or flowers or plants or the like on the opalware plates. The court, observing that the etchings on the glassware looked similar, but the order of the lower court was not passed completely without reasons or appeared to be bad to the meanest mind in the sense that it is outlandish, and hence refrained from interfering with the same, leaving behind the issues to be determined while hearing the interlocutory application.

La Opala R.G. Ltd v. Cello Plast & Ors.  — Calcutta High Court [May 16, 2018]

The Court, in a suit for passing off of petitioner’s trade dress for opal glass tableware, found that the trade dress of defendant’s products were deceptively similar to that of petitioner’s product trade’. The Court also rejected the argument that since glassware is sold in cartons, deceptive similarity does not arise if the carton displays the trade name of the defendant, observing that glassware can be sold without the carton as well and that in any case sale in cartons is not a defence to infringement. Since the petitioner was able to show, prima facie, that there was a case of infringement, the Court granted the interim order sought.

M/S H.T Media Ltd & Anr. v. Susheel Kumar & Ors. — Delhi High Court [May 22, 2018]
The Court observed that the adoption and using of counterfeit domain name or registered trademark, trade dress or deceptively similar domain name, unequivocally amounts to the infringement and passing off of the plaintiff’s IPR. Hence, the Court awarded a decree of permanent injunction. The Court also observed that plaintiffs have suffered loss of goodwill and reputation, and hence are entitled to punitive damages as well. Based on the malafide conduct of the defendants and their non-appearance before the Court, the plaintiffs were awarded punitive damages of Rs.10 Lac as well as costs of the litigation.

Christian Louboutin SAS v. Abubaker & Ors. — Delhi High Court [May 25, 2018]
The Court dismissed the suit for TM infringement and passing off of the plaintiff’s RED SOLE mark, relying on legislative intention behind SS.2(m) and 9(1)(a-b) of the TM Act, 1999 held that a TM can only be represented through a Combination of colours, not a single colour. Further, it was also held that the law laid down in the Deere Casewas wrong as it did not take into account the language of S.2(m), relying on the ratio in N. Bhargavan Pillai (Dead) & Anr. v. State of Kerala, (2004) 13 SCC 217. The Court distinguished this case from the previous Christian Louboutin Case (Del HC, 2017) by relying on Padma Sundara Rao (Dead) & Ors. v. State of Tamil Nadu & Ors. (2002) 3 SCC 533 wherein it was held that ratio of judgment is fact-dependent and even difference of a single fact can make difference in the ratios of the two cases, coupled with the aforesaid point. Court also rejected the argument that red sole is a device TM and thus a device is capable of being a mark and therefore a TM, once again relying on the above mentioned legislative intention. To be a ‘device’ for the device to be a TM, such a device must have standalone independent existence in itself so as to have an identity of its own even without being part of the product. S.10 is also not applicable to this case because it also uses the terms combination of colour. Lastly, S.30(2)(a) precludes a claim for infringement, stating that when a characteristic of a TM is functional to the product in question, another trader cannot be restrained from using the same, especially when the defendant is using the trade name VERONICA to distinguish his products from the plaintiffs’. There is no confusion or deception between the two, nor is there a case for passing off given the above points of law.

Elektrobit Automotive GmbH v. DDIT — ITAT, Delhi [May 22, 2018]
The ITAT held that in order to qualify as royalty payment, a transfer of all or any rights (including the granting of any licence) in respect of copyright has to be shown, and distinction has to be made between the acquisition of a “copyright” and a “copyrighted article”. In the present case, there was no transfer of copyright by the assessee and it was a case of mere transfer of a copyrighted article, as the licensee was prohibited from copying, decompiling, de-assembling, or reverse engineering the software without the written consent of the licensor, who retained the incorporeal copyright. The right to use the copyright of a software is different from the right to use a the software itself, and payment for the latter does not amount to royalty, and hence would be business income (not taxable in India). As a result the appeal was partly allowed in favour of the appellant.

News

• Rustom writer files complaint against Shahid Kapoor’s Batti Gul Meter Chalu
• RGV stole my story yet again: Jaya Kumar
• Madras HC upholds TRAI tariff order, regulation for broadcasting sector
• RMPL Applies For Registration as Copyright Society
• Private publishers must pay Rs 63,000 per subject a year to Balbharati
• Delhi High Court grants John Doe order for the film ‘Deadpool 2’
• Hindustan Unilever fights for rights over Kwality Walls
• India pitches for WTO talks on checking theft of traditional knowledge
• India seeks to generate more support at WTO on linking TRIPS to bio-piracy
• Ice cream company guilty of copyright infringement
• Haier advertisement case: Delhi High Court interim order favours Voltas
• Christian Dior settles plagiarism dispute with Indian design studio People Tree

International

• USA: EFF Fights for Public Access To Patent Disputes
• Japan Patent Office extends grace period to 12 months
• Photographers Shutter at Plan to Boost Copyright Fees
• Michael Jackson’s estate sues ABC for copyright infringement
• New York: Judge Denies Author Attempt to Trademark ‘Cocky’