Others

SpicyIP Fortnightly Review (Nov 18 – Dec 1)


Topical Highlight

Recently, the Delhi HC set aside two interim injunction orders passed against Natco. In a post co-authored by Pankhuri Agarwal and Bhavik Shukla, these orders were identified as a welcome restoration of the three-pronged test for the grant of interim injunctions in India. The earlier orders of Justice Endlaw had done away with the three-pronged test in light of the interests of the patentee. However, the authors note that the three-pronged test must be retained to ensure that a balance is maintained between the interests of the patentee and the defendant.

Thematic Highlight

In an insightful post, Latha Nair helpfully lays out a string of comments made by Justice Rajiv Sahai Endlaw in his judgments on legal drafting and practice. These comments primarily call out needless verbosity in plaints, unverified objections in replies, uninformed verification of pleadings by counsel and the practice of requesting modifications and rectification of pleadings due to the counsel’s own shortcomings. Latha Nair notes that these are problems must be dealt with by the Commercial Courts Act, with a possible solution that may be adopted from other jurisdictions being restrictions on word count, pages, line spacing or font size.

Other Posts

In her guest post, Abhilasha Nautiyal discusses the relevance of trans-border prosecution history estoppel in the context of patent litigation. She noted that a recent decision of the Delhi HC in Communication Components Antenna Inc v Ace Technologies Corp, laid down a new principle for claim construction –  that a difference in claim language between a corresponding foreign claim and the Indian claim will have a bearing on the Indian claim only if the difference is ‘substantial’ and not merely ‘clarificatory’. She notes that the decision of the Delhi HC may be contrary to earlier decisions of the Supreme Court and other High Courts.

In their post, Balu Nair and Pankhuri Agarwal write on the Supreme Court’s decision in Rojer Mathew v South Indian Bank Ltd. This case has struck down the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 (‘Rules’) framed under Section 184 of the Finance Act, 2017 on the grounds that they impinge on judicial independence. Specifically, in the context of the IPAB, this means that appointments to the tribunal will once again be governed by the Trade Marks Act, although the merger of the Copyright Board into the IPAB seems to be left intact. The Trade Marks Act is woefully inadequate in its exposition of the rules related to the appointment of members to the IPAB, which leaves much uncertainty in the interim.

The Government of India recently approved the Patent Prosecution Program between India and Japan. In his post, Mathews George notes that this is the first time India has entered into such an agreement, which will work on a pilot basis for a period of three years. This agreement hopes to promote work-sharing and enable accelerated processing of patent applications. Mathews notes that this agreement may also result in an improvement of the functioning of the IPO, as they may now adopt practices followed by Japan’s patent office, which is known for its quality of functioning.

Mathews George wrote a post on the trade secret issues that arose in the Karnataka HC’s decision Steer Engineering Pvt Ltd v Glaxosmithkline Consumer. The subject matter of the dispute was a process of extrusion for the manufacture of Horlicks, which was only shared on a ‘need-to-know’ basis. Both the plaintiff’s claims, based on Section 2(o) of the Copyright Act 1957 and common law protection of confidential information, failed. Mathews notes that India is yet to develop robust jurisprudence on the protection of confidential improvement, and points to the need for contracts to effect such protection.

In a helpful conceptual post, Mathews discusses the fundamentals of trade secret law along with comparative perspectives from American jurisprudence. He points out some of the differences between patent protection and trade secret protection, and then discusses the problems associated with enforcing trade secrets in court. He then discusses the statutory framework of trade secret protection in the United States of America.

Pankhuri brought to our notice the details of an initiative of the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT), which has instituted a Minor Research Project with the objective of encouraging young teachers from Kerala and the rest of India, to undertake research in the area of intellectual property rights.

Mathews wrote a post highlighting the review of India in CISAC’s Global Collections Report 2019. He notes that the report highlights an increase in collections in India and puts it down to increased mobile usage. He concludes by discussing the global influence of the EU Copyright Directive and the unique dilemma it poses in India, which must now adapt to using concepts from both common law and civil law systems.

Other Developments

Indian

Judgments

Hindustan Unilever Limited v. Sambhu Das – Calcutta High Court [November 13, 2019]

The Court granted a decree of ex parte interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered trademark “ACTIVE WHEEL” by using a deceptively similar mark “ACTIVE SANGITA” in respect of detergent powder. The Court noted that the mark used by the Respondent were prima facie infringing of the Petitioner’s mark. Moreover, the Court observed that the artistic work of the Respondent was a colourable and deceptive imitation of the Petitioner’s artistic work.

Hindustan Unilever Limited v. Viver Lifecare Private Limited – Calcutta High Court [November 13, 2019]

The Court granted a decree of interim injunction restraining the Defendant from using the mark “AZADI DETERGENT POWDER” on packets in which the Petitioner’s “ACTIVE WHEEL” was being sold. The Court noted that the Respondent’s packets were a colourable and deceptive imitation of the Petitioner’s artistic work, resulting in its copyright infringement.

Super Cassettes Industries Private Limited v. M/s. SVM NewsSuper Cassettes Industries Private Limited v. K.K. Media Solutions Private Limited – Delhi District Court [November 16, 2019]

The Court granted an ex parte permanent injunction restraining the Defendants from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid licence. The Court observed that the Defendants had caused substantial loss and damage to the Plaintiff on account of its continuous copyright infringement. Accordingly, the Plaintiff was granted punitive damages of Rupees 5 lakhs.

News

  • Filmmaker Nandi Chinni Kumar has sent legal notices to makers of upcoming Hindi movie ‘Jhund’ and actor Amitabh Bachchan, who is playing the lead role in the film, for copyright infringement.
  • The Indian Patent Office dismissed two pre-grant oppositions filed by Indian Pharmaceutical Alliance and Pankaj Kumar Singh against Immunogen Inc.’s Indian Patent Application no. 885/CHENP/2008.
  • A new policy formulated by the DRDO recently states that no licence fee or royalty will be applicable to the use of Indian patents held by the research agency.
  • Illegal cancer drugs from Bangladesh flood Indian market.
  • A divisional application of Merck for a process for producing tiacumicins B granted.
  • A ‘Make in India’ innovation for Neuropathic pain medication.
  • Delhi High Court seeks response from the Registrar of Trade Marks to explain the uploading of backdated o-3 notices on its website.
  • All IPAB hearings of this year cancelled.
  • Gujarat-based Root’s Decor files for patent for virtual reality-based system.
  • The Supreme Court has rejected Anchor Health & Beauty Care’s appeal seeking restoration of its criminal complaint against Colgate.
  • Dabur to sue Marico’s Parachute oil for their print advertisement.
  • Ogilvy-Vivo put ‘plagiarism’ spat to rest, reach an ‘amicable agreement’ outside court.
  • Researcher gets patent for genetic disorder screening.
  • In supersession of earlier Manual of Patent Office Practice and Procedure published on 22nd day of March, 2011, a new Manual of Patent Office Practice and Procedure is published with immediate effect.

International

  • ATN supports orders by the Federal Court of Canada to block piracy sites.
  • IP High Court admitted $1.3 million damage compensation as equivalent to the license fee.
  • Turkish Patent and Trademark Office has published a new trademark examination guideline.
  • U.S. photographer takes on Pinterest for committing and encouraging copyright infringement.

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