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SpicyIP Fortnightly Review (January 6 – 19)


SpicyIP Fortnightly Review (January 6 – 20)

Bhavik Shukla

Last week, Swaraj wrote a post on the paradigm-changing order of the Delhi High Court in Ferid Allani v. Union of India & Ors. Through this order, Justice Pratibha Singh directed the Patent Office to re-examine an application filed for a “method and device for accessing information sources and services on the web”. He notes that the order seems to contain three reasons for such a direction: (i) many inventions today are based on computer programs, and it would be retrograde to say that all such inventions would not be patentable, (ii) only computer programs ‘per se’ are excluded from patentability, but inventions based on them that demonstrate a technical effect/contribution are patentable (iii) three sets of interpretative guidelines in respect of computer related inventions (CRIs) have been issued after the filing of the application which clarify the meaning of technical effect/advancement. Being unconvinced with the aforementioned reasons, he wonders as to why a re-examination was required in this case when the IPAB’s reason for rejection was not that the claimed invention is a CRI but that it did not disclose any technical effect or technical advancement and the court didn’t even examine if IPAB’s reasoning was erroneous. He ponders upon the possibility of this re-examination opening door to challenges against any and all applications decided prior to the issuance of these guidelines. He further points out the Court’s failure to address the jurisdictional argument raised by the Respondent and questions as to whether non-legally binding guidelines could form basis for directing re-examination of a decision under Article 227 of the Constitution. He views this order as part of a policy reasoning where software has become the mainstay of most inventions, more so with the emergence of AI-related software, and further explores methods for incentives to be granted for such innovation. He concludes by stating that India should be careful while adopting such a software patenting approach.

In a riveting piece, Pankhuri analysed the Delhi High Court’s decision in Fox Star Studios v. Aparna Bhat & Ors., wherein the makers of the film ‘Chhapaak’ were directed to acknowledge the inputs of the Defendant, the lawyer who represented the acid attack survivor whose life the film is based on, in the film’s opening credits. She notes that in this particular case the principle of promissory estoppel was found to be applicable, but wonders if otherwise (in absence of any contract law obligation) there exists any legal right (of a contributor who’s neither an author nor a performer) to claim such acknowledgement. She also looks into the court’s finding on promissory estoppel and argues that, based on the facts stated in the decision, the essential requirements of promissory estoppel could not be said to have been fulfilled in this case. Accordingly, she notes that the Court’s decision seems to be driven more by sympathy and other factors than legal reasoning. She then goes on to examine the court’s observations on a contributor having a (proprietary) right in his/her inputs and an independent (moral) right to be acknowledged for them, and also the judgments cited by it in support. She points out that neither this decision nor any of the judgments cited provide any clear basis in law or equity for such a right of contributors (other than authors and performers) in India. Ultimately, she hopes that the trial court in its final decision would look into these issues and provide clarity on the law on (public) acknowledgment of a person’s contribution to a work in India.

SpicyIP Announcements          

Pankhuri also informed us about Cochin University of Science and Technology’s Workshop on Research Methods in IPRs, in collaboration with the Inter-University Centre for IPR Studies to be held in Kochi from February 28-29, 2020. The workshop shall comprise lectures and a total of 13 exercises spread over two days, aimed at imparting training to research scholars in research methodology. The deadline for submitting applications is January 31, 2020.

Other Developments

India

Judgments/Orders

Intex Enterprises Pvt. Ltd. v. Ashu Telecom – Delhi District Court [January 8, 2020]

The Court rejected the grant of an injunction in favour of the Plaintiff from restraining the Defendant from using its mark “INTEX” on goods. The Court noted that the Plaintiff had failed to prove that the items recovered by the Local Commissioner were infringing. Moreover, the seized goods were not produced before the Court during the trial. Accordingly, the Court concluded that the Plaintiff had failed to prove their case by leading cogent and convincing evidence that the Defendant was engaged in infringing activities.

State v. Rahul Gupta – Delhi District Court [January 10, 2020]

The accused in this case was found in possession of various packaging material bearing the mark “SWAGAT GOLD TOBACCO”, without any proper bill or purchase documents. The Court emphasized that it was a principle of criminal law that prosecution is supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. It was noted in the findings of the Court that the case property was never produced before it, and the details of the raided premises were not correctly recorded. In light of these lapses, the Court noted that the Prosecution had failed to prove the case beyond doubt or that the recovered property was counterfeit in nature as the same was never examined by the witnesses. The Court noted that an offence under Section 63 of the Copyright Act, 1957 could only be made out when the accused “knowingly” commits an act, and such knowledge of the accused has to be proved through clear and conclusive proof.

M/s. Fun World and Resorts (India) Pvt. Ltd. v. Nimil K.K. – Kerala High Court [January 13, 2020]

The dispute between the Parties arose on account of the Appellant’s alleged infringement of the Respondent’s copyright in its “UNDERWATER MOBILE GLASS TUNNEL AQUARIUM”, exhibited by the Respondent at various exhibitions. The District Court granted a temporary injunction in favour of the Respondent, and restrained the Appellant from using its design in fairs. However, the Court vacated the injunction temporarily for the period of the “Onam Fair”. Subsequently, the Court noted that pending disposal of the appeal, the Appellant would not be entitled to seek further extensions on the vacation of the injunction. The Court noted that the Plaintiff had applied for registration of its design in the “UNDERWATER MOBILE GLASS TUNNEL AQUARIUM”, and the same was under consideration. The Court noted that the registrability of the design had to be decided at trial, and at the interlocutory stage only a finding of a prima facie case is sufficient to grant an injunction. Accordingly, the Court noted that the Respondent had made out a prima facie case for infringement of its copyright in the tunnel, and granted a temporary injunction in its favour.

Marico Limited v. Abhijeet Bhansali – Bombay High Court [January 15, 2020]

The Court granted an interim injunction restraining the Defendant from making disparaging and denigrating statements against the Plaintiff’s mark “PARACHUTE” through its videos posted on YouTube. The Court noted that the Defendant was not a competitor of the Plaintiff, but a “social media influencer”, and accordingly had a higher responsibility to ensure that his statements did not mislead the public and that he was disseminating correct information. With respect to the statements made by the Defendant, the Court observed that the Plaintiff had to establish that the statements in the video were false to the knowledge of the Defendant or were made with reckless disregard to the truth. The Court noted in respect thereof that the Defendant had compared the Plaintiff’s oil with ‘virgin coconut oil’ in contrast to his claimed ‘organic coconut oil’. Furthermore, the Court noted that the Plaintiff marketed its product as merely coconut oil, and not virgin coconut oil and hence the comparison drawn by the Defendant was incorrect. Accordingly, the Court noted that neither the test relied upon nor the articles used by the Defendant were true, and the resultant effect of the video was disparagement/slander of the Plaintiff’s goods. The Court further dealt with the ancillary defences of the Defendant, and further noted that misleading information which disparages someone or influences consumers to buy a product cannot be disseminated under the garb of education by the Defendant. The Court subsequently noted that the balance of convenience lay in favour of the Plaintiff, as the Defendant’s video was detrimental to its reputation and commercial health. Therefore, the Court ordered the video to be taken down during the pendency of the case.

M/s. S. Oliver Bernd Freier GmbH & Co. v. Sushant – Delhi District Court [January 15, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “OLIVER” by using an identical mark in respect of apparels. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the mark, and the Defendant had no right to use it. Moreover, the Court noted that the Defendant’s use of the mark was with the intent to unjustly enrich from the Plaintiff’s reputation and goodwill. Accordingly, the Court granted damages in favour of the Plaintiff to the tune of Rupees 50,000, in light of the Defendant’s continuous infringement since 2012 coupled with the Plaintiff’s loss of reputation.

Astrazeneca AB & Anr. v. Emcure Pharmaceuticals Ltd. & Anr. – Delhi High Court [January 15, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ patented compound “TICAGRELOR”. At the outset, the Court dealt with the objection raised by the Defendants under Section 3(d) of the Patents Act, 1970. In respect thereof, the Court accepted that the Plaintiffs had been successful to demonstrate that “TICAGRELOR” was produced under its patent No. IN 209907 and not anticipated by its previous patent numbered IN 241229. Moreover, the Court noted that the patent no. IN 209907 had not been anticipated by any previous patent. Regardless of having proven this, the Court refused to grant an injunction in favour of the Plaintiffs, as its patent expired on December 2, 2019. Additionally, the Defendants had already launched their product and the balance of convenience lay in their favour. The Court merely directed the Defendants to maintain the accounts of sale of its drug.

Arg Outlier Media Asianet News Pvt. Ltd. v. Shailputri Media Pvt. Ltd. – Calcutta High Court [January 15, 2020]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “REPUBLIC” by using a deceptively similar mark “REPUBLIC HINDI” in respect of a television channel. The Court noted that the Defendant was aware of the Plaintiff’s mark when it purchased the domain name “www.republichindi.com”, and there was nothing on record to suggest that the Defendant concurrently conceptualized its mark. Additionally, the Court noted that the Defendant’s mark had a similar colour combination and font to that of the Plaintiff to note the deceptive similarity between them.

Giant Rock Media and Entertainment Private Limited v. Priyanka Ghatak & Ors. – Delhi High Court [January 7, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s exclusive right to make adaptations of the Defendant No. 3’s literary work titled “CBI INSIDER SPEAKS: BIRLAS TO SHEILA DIKSHIT”. The Defendants were subsequently restrained ex parte by an order of the Court from communicating its web series to the public over the internet. The Court noted that on an examination of the book chapter alleged to be infringed by the Defendants, it could not be ascertained whether the same was original or merely a reproduction of the case files of the CBI. In this regard, the Court observed that the Plaintiff had failed to provide any document for comparison to determine the originality of the book chapter. Moreover, the Court noted that the Plaintiff had not even attempted to draw a comparison between the book chapter and the Defendants’ web series. Accordingly, there could not be any claim for infringement of copyright. The Court rejected the Plaintiff’s plea of breach of confidentiality on the basis that its pleadings did not contain any reference to it. Furthermore, the Court observed that the Plaintiff could not prove its case prima facie and the Defendant No. 2 would suffer irreparable loss as it had already released its web series. Therefore, the Court vacated the previously granted ex-parte interim order in favour of the Plaintiff.

News

  • The Intellectual Property Office in collaboration with the Confederation of Indian Industries has invited applications for National IP Awards 2020.
  • Bombay High Court allowed release of ‘Umeed’ movie, noting that there can be no monopoly of copyright in the idea or subject of a film.
  • Usilampatti police arrested three partners of a local television channel for unauthorized telecasting the recent Rajnikant-starrer Darbar.
  • A Bangalore court granted an interim stay on the release of web-series titled ‘Afsos’ in a copyright infringement suit.
  • Spotify and Warner Chappell Music (WCM) ended their nearly year-long copyright licensing dispute in India, thereby making WCM’s catalogue available to Indian customers.
  • IPAB officially launched a new website under the government domain name- www.ipab.gov.in.
  • Delhi High Court barred Cipla, Torent, Emcure and Alkem from launching a generic version of Bristol Myer’s drug, Apixaban.
  • Madras High Court restrained B. Firdous Ahmed from using the trademark and symbols of Ambur Star Biriyani.
  • Patent Office rejected Tata Chemicals’ patent application for its water purifier, Swach on grounds of it being ‘obvious’ and lacking an ‘inventive step’.
  • Bombay High Court refused to grant an interim stay on the release of film ‘Chhapaak’ in a copyright infringement suit filed by writer, Rakesh Bharti.

International

  • A court in Shenzhen, China ruled that an article written by artificial intelligence (AI) is protected by copyright.
  • German Ministry of Justice published draft amendment to Patent Act.
  • UK Advertising Standards Authority banned vaping products from being promoted on Instagram.

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