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SpicyIP Weekly Review (August 26-31)


Last week, Rishabh Mohnot had reported that the IPAB’s website (ipabindia.org) was malfunctioning. This week, Rishabh wrote a report on the reasons for this. In his report, he states that the domain name was voluntarily auctioned to a private party on 2nd May this year! Further, the domain name, ending with ‘org’ has flouted the Guidelines for Indian Government Websites (GIGW) 2018, under which a Government website must possess the secondary domain name ‘gov’. Thus, he suggests that the auction might be a sign that IPAB is rectifying its mistake. There is sufficient evidence to corroborate this, as ‘ipab.gov.in’ is currently unavailable with the IPAB being the registrant organization. However, he suggests that the buyer of the domain name has the ability to create email addresses and the legitimacy that IPAB has granted to it by using it for 3 years.

Devika Agarwal discussed the Delhi HC’s decision to vacate an interim order restraining the defendants, Micro Labs, Natco Pharma and Dr. Reddy’s Laboratories from violating the plaintiff, AstraZeneca’s registered patent; TICAGRELOR sold under trademarks BRILINTA and AXCER. The defendants were planning to launch generic versions of the drug and hence, the dispute. The first issue was whether Form 27 covered BRILINTA and AXCER under IN 229. The court relied on Novartis to reject the artificial dichotomy between coverage and disclosure in a patent, as it would evergreen the patent. The second issue was whether the plaintiff had suppressed material facts. The court ruled held that the plaintiff had omitted to disclose important facts. The third issue, which was deliberated upon, was whether the suit patents were liable to be revoked under Section 3(d). The court held that there was no proof on enhanced therapeutic efficacy of the suit patents. Both the species and the genus patent could be used as platelet inhibitors. Thus, the therapeutic efficacy of the suit patents over IN 229 was not proven and the court ruled in favor of the defendants. The fourth issue was whether the plaintiff had failed to disclose relevant patent revocation proceedings in foreign jurisdictions. The court held that the plaintiff had not done so, as the plaintiff had appealed the revocation, which was an implied stay on the order.

Rajiv K. Chowdhury reported on Novartis AG v. Natco, where the Delhi HC clarified the black letter law on Section 62(2) read with Section 11A(7) of the Patents Act 1970, whereby which no suit for infringement lies for a revoked patent. This includes the period between its revocation and the date of publication of application for its renewal. It also includes an unregistered patent until its grant.

In an interesting piece, Swaroop Mamidipudi wrote on the JNU data depot report and whether it violates the Copyright Act, a subject on which there have been two contrary blog posts (which can be found here and here). In his post, he makes textual arguments in favor of the depot. The ‘issue of law’ was whether the step where a computer program that crawls through databases that JNU has access to, violates copyright law. He answers this in the negative. Firstly, he contends that Section 14(a)(i) means, “storing by electronic means” is a subset of “reproduces the work in ‘material form’.” With reference to Daily Calendar Bureau v. United Concern, he argues that “storing by electronic means” must be readable for it to qualify as reproduction. In the data depot, the work is mined but not readable and hence, may be “storage by electronic means” but not reproduced within the meaning of Section 14(a)(i). Secondly, in an arguendo, he contends that the argument that Section 52(1)(a)(i) applies to private or personal and not public research is flawed, since the former qualifies the use of the works themselves, and not making the work available. Lastly, he supports a wider reading of the exceptions under Section 52 in order to promote academic interests, like the court did in the Delhi University Photocopying case.

SpicyIP Announcements

This week, Swaraj Paul Barooah informed us of the Shamnad Basheer IP/Trade Fellowship with Texas A&M University School of Law, in collaboration with the Association for Accessible Medicines. The selected fellow will get the coveted opportunity to work closely with Prof. Srividhya Ragavan of Texas A&M University School of Law and Jonathan Kimball of the Association for Accessible Medicines to produce a white paper that examines and evaluates the role of the Special 301 submissions of the Pharmaceutical Research and Manufacturers of America to the Office of the U.S. Trade Representative (USTR). The deadline to apply is 15th September 2019.

Other Developments

Indian

Judgments

Apollo Hospitals Enterprise Limited v. Sai Apollo Pharmacy – Madras High Court [August 6, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademarks “APOLLO” and “APOLLO PHARMACY” by using a deceptively similar mark “SAI APOLLO PHARMACY” in respect of pharmacy services. The Court observed that the Plaintiff was the registered proprietor of the mark “APOLLO PHARMACY” and that the Defendant was using the Plaintiff’s mark in a similar font by reducing the size of the prefix “SAI”. Therefore, the Court concluded it to be a clear case of infringement of the Plaintiff’s marks

D. Sunil Kumar Reddy v. Lodhi Calcium Products– Madras High Court [August 8, 2019]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “ASIAN CEMENT” by adopting an identical mark in respect of cement. In arriving at the decision, the Court noted that the Plaintiff was the registered proprietor of the mark. The Court further noted that the Plaintiff had a substantial turnover and had appointed dealers in various states, which indicated its permanent reputation and goodwill. After comparison of the Parties’ cement bags, the Court concluded that the Defendant had adopted an identical mark to the Plaintiff’s mark with a malafide intention.

A.D. Padmasingh Isaac v. M/s. Kalyan’s Enterprises – Madras High Court [August 14, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AACHI” by adopting an identical mark in respect of the sale of Kulambu chilli powder. The Court observed that even the get-up and colour scheme of the Defendant’s packaging were deceptively similar to that of the Plaintiff, thereby constituting a clear case of infringement of trademark.

M/s. Syed Ibramsha Cottage Industries v. M/s. Jayanthi Agencies – Madras High Court [August 16, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “ANIL BRAND” by adoption of the mark “GOLD WINNER” in respect of the sale of stationery. After comparison of the Defendant’s packaging with that of the Plaintiff, the Court observed that the get-up and colour scheme of the Defendant’s packaging were deceptively similar to that of the Plaintiff, thereby constituting a clear case of infringement of trademark.

Castrol Limited v. Sun Petroleum – Madras High Court [August 21, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “CASTROL” by using a deceptively similar mark in respect of lubricants. The Defendant submitted an affidavit through which it claimed that it had stopped carrying on the retail business of selling lubricants in 2009 and was not infringing the Plaintiff’s mark anymore. In light of the affidavit, the Court disposed off the case and noted that the Plaintiff could file a fresh case if the Defendant infringed its mark in the future.

Unilever Plc and Another v. Royal Ice Cream – Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “CORNETTO” by adopting a deceptively similar mark “KORNETTO” in respect of ice-creams and frozen desserts. The Court observed that the Defendant’s adoption of the deceptively similar mark was prima facie infringing in nature and appointed a Special Officer to inventorize the infringing products at the Defendant’s godown.

Emami Limited v. Shree Baidyaraj Ayurved Bhawan Private Limited  – Delhi High Court [August 26, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “ZANDU PANCHARISHTA” by using a deceptively similar mark “BAIDYARAJ PANCHARISHTA” in respect of medicinal ayurvedic preparations. The Court observed that the Plaintiff was the registered proprietor of the mark and that the mark was not generic in nature as it had no connection to its use for curing digestive ailments. Moreover, the Court did not find any strength in the Defendant’s argument that the mark was registered by third parties.

Warner Brothers Entertainment Incorporation v. Moviesflix.net and Others – Delhi High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing the Plaintiff’s copyright in its cinematograph films by unauthorized communication of such works through their domain names, and by further allowing the viewers to make unauthorized copies of such works. In arriving at this decision, the Court noted that there was a prima facie case in favour of the Plaintiff along with the balance of convenience, and irreparable harm would be caused to it if an injunction was not granted in its favour. Accordingly, the Court directed the telecom service providers to block the Defendants’ websites. Further, the Court referred to its previous decision in UTV Software Communication Limited to observe that the Plaintiff could implead mirror sites through mere filing of an affidavit with sufficient supporting evidence of the same.

Hindustan Unilever Limited v. Rohit Singh– Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using the mark “SHINE PLUS EASY WASH” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a colourable and deceptive imitation of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Hindustan Unilever Limited v. Vinod Harde – Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using the mark “NINE SHINE” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a colourable and deceptive imitation of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

News

  • Copyright Office clarifies that no license is required for utilizing sound recordingsin the course of any marriage related function.
  • Writer John Charles accuses makers of the film ‘Kaappaan’ of plagiarism and moves Madras HC for an interim injunction.
  • Chennai court dismisses film director KP Selva’s plagiarism charge against the makers of the film ‘Bigil’; also denies permission to file a fresh suit before the Madras HC.
  • Amazon moves Supreme Court challenging Delhi HC’s interim order that restrained various e-commerce platforms from enabling sale of products of direct selling companies without their consent.
  • Kalyan Kankanala argues that data mining from JNU Data Depot is ‘fair and enabling’.
  • Bengaluru based artist, Shilo Shiv Suleman accuses the makers of the film ‘Saaho’ for copying her 2014 artwork ‘Pulse and Bloom’ for the film’s poster.
  • Upon Reliance Jio Infocomm’s petition, Corporate Affairs Ministry directs three companies, Jiokind Healthcare, Jio Rich and Doctor Jio Healthcare to change their names within six months.
  • Pakistani actress Mehwish Hayat alleges that Alia Bhatt’s Prada song is copied from Pakistani song ‘Gore rang ka zamana’.

International

  • USPTO invites public comments on patent-related issues regarding AI inventions.
  • Film and music companies protest against Copyright Amendment Bill in South Africa, urge the President to not sign it; others hail it as a move towards increasing access to education.
  • China’s revised drug law removes generic drugs approved in other countries but not in China from the category of fake medicines; may open door for Indian generic medicines.
  • You Tube comes under mounting pressure, as South Korea cracks down on massive copyright infringement.
  • “Baby Shark” song owner Pinkfong faces a copyright infringement lawsuit in South Korea — based on a public domain song.
  • Sony, Warner, UMG file a massive copyright infringement lawsuit against RCN accusing it of not doing enough to prevent piracy.
  • In the first half of 2019, China accounts for 70% of global blockchain patent applications.

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