Others

SpicyIP Fortnightly Review (February 18 – March 1)


(This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Namratha, our new Student Fellow, discussed the notice issued by the Delhi HC on a petition challenging the Drug (Prices Control) Order, 2013 (‘DPCO’) and its amendment in 2019. She traces the origin of the DPCO to the Essential Commodities Act, 1955, and discusses grounds of the petition filed by the All India Drug Action Network (‘AIDAN’). First, she points out to the discrepancy in the ‘new drug’ exemption under DPCO 2019, as compared to the Drugs and Cosmetics Rules, 1945, stating that the inconsistency in the language enables a drug to seek exemption from 1-9 years. Second, she supports AIDAN’s point that there is no rationale between linking of the Patent Act and DPCO, as the two are not related, either historically or on the basis of policy. Third, she discusses the ground of AIDAN’s opposition relating to exemptions to be granted in respect of orphan drugs, noting that a better alternative in respect of the same could be sought. Finally, she deals with the petition’s opposition on the ground of public health, noting that price control ensures affordable access to drugs. In view of the aforementioned, she comments on the availability of recourse to price control and compulsory licensing, and concludes that the use of either may not ideally serve to increase access to drugs.

Thematic Highlight                                                                         

In a co-authored post, Swaraj and I discussed the persistence of flawed indicators in the 2020 edition of the GIPC IP Index. Drawing attention to the incorrect analysis of the intellectual property situation in the Indian jurisdiction, the post mentions that inquiry under specific indicators is not thorough. Furthermore, the post notes that GIPC serves as a lobbying group for the American industry, considering its pharma-heavy approach and its attempt at globalizing American standards of IP protection. The post goes on to mention the faulty set of indicators which continue to plague the Index from its previous editions, namely, compulsory licence, extent of copyright protection, membership and ratification of international treaties, and term of protection for industrial designs. We conclude by stating that though the Index has become well-recognized, readers should avoid taking its content at face value.

Other Posts

In his post, Rishabh wrote about Yash Raj Films’ (‘YRF’) alleged misappropriation of royalties that belong to members of the Indian Performing Rights Society’s (‘IPRS’). He notes that IPRS filed an FIR against YRF on behalf of its members, and YRF subsequently obtained a stay on any investigations  ensuing from the same.He explains that the case against YRF has been filed on two grounds: criminal breach of trust under the Indian Penal Code and infringement of a right under the Copyright Act, 1957. Further, he points out the flaw in YRF’s reliance on it being the owner of copyrighted works, by noting that this ground cannot be used to deprive authors from receiving their entitled royalty. He notes that YRF’s application to quash the FIR before the Bombay HC shall not hold, if a prima facie case is made out against it. In his view, a prima facie case shall be made out against YRF on the two grounds mentioned above. In conclusion, he states that determination of the application by the Bombay HC may reveal the true nature of the Copyright (Amendment) Act, 2012.

Swaraj reported on the possible review of the IP Acts in India before Trump’s visit. He notes based on public information that the review appears to be a USPTO Agreement. Though the content of the Agreement has not been made available, he comments that it might well be possible that the USPTO intends to indoctrinate its Indian counterpart. Further, he notes that this Agreement comes in light of the GIPC Rankings and USTR’s Special 301 Process, and suspects such timing to be aimed at coercing India into adopting certain measures. However, he states that all this is just speculation,and one should wait for solid news to surface on the subject.

In a guest post, Sushant discussed arbitrability of disputes in respect of Standard Essential Patents (‘SEPs’). He espouses arbitration in respect of SEPs as it ensures technical expertise of the panel,  almost no jurisdictional issues, confidentiality of the matter, and enforceability of the arbitral award. Going further, he notes that Indian courts allow rights in personam to be subject to arbitration. He claims that SEP arbitration usually involves these rights, but there might be cases where they might affect rights in rem. In light thereof, he states that arbitration can be resorted to for cases which arise out of an existing licence between the parties. Referring to the CJEU’s jurisprudence, he notes that there is a requirement for a mechanism which involves arbitration, before resort can be had to a dispute resolution mechanism. He raises a caution with respect to certain aspects of SEP-related arbitration, before concluding that arbitration offers an effective mechanism to deal with core patent and anti-trust law issues.

Latha wrote a post on the judgment of the Division Bench (‘DB’) of the Bombay HC in Abhijeet Bhansali v. Marico Limited. Through this judgment, the Court set aside the Single Judge’s order which had directed the Appellant to take down the video related to the Respondent’s coconut oil, “Parachute”. In the post, she critically discusses the DB’s order for making incorrect factual assumptions. First, she refutes the DB’s statement that the Appellant had made a fair and honest comparison between ordinary and virgin coconut oil; second, she observes that the court mistakenly relied on the unclaimed fact in the video: that the Respondent’s coconut oil was made from fresh coconuts, third, she states that the use of virgin coconut oil in the video was not for comparing with the Respondent’s product, but for the purpose of providing extra information; fourth, she notes that the court erroneously relied on the statements of the Appellant, without actually distinguishing between the characteristics of ordinary coconut oil and virgin coconut oil; and finally, she observes that considering the Appellant’s business survives on viewership, the video aimed to merely attract viewership.

Prashant wrote a post in response to Latha’s post. He notes that the video compares ‘Parachute’ coconut oil and organic coconut oil, to arrive at the conclusion that the latter is superior. In respect of disparagement cases, he notes that opinions have to be separated from facts, as opinions cannot form a legal basis for disparagement. To substantiate his point, he traces the origin of defamation actions to note that the threshold to prove defamation was very low historically, but began rising with courts taking into account constitutional principles in respect of defamation. In this context, he observes that the YouTuber cannot have acted with malice, as the Single Judge failed to make a distinction between fact and opinion and the burden to prove absence of actual malice was imposed on him, instead of Marico company.

Lastly, Adarsh discussed the impact of the EU Copyright Directive on “information society service providers” (ISSPs) publishing “press publications” online. He notes that the 2-year period of exclusivity to publishers has been granted in order to ensure that they derive monetary benefits for publications in the digital arena. He discusses the position of other countries in this respect, and draws attention to a case in the United Kingdom, where reproduction of headlines as well as an extract was ruled to be infringement of copyright. On reference to the ECJ, he notes that the question was narrowed and only considered in respect of a website, where the ECJ noted that such temporary reproduction would be exempted under Article 5(1) of the Directive 2001/29. Pointing towards sections 52(1)(b) and (c) of the Indian Copyright Act, he notes that a similar interpretation can be arrived at in India. Finally, he states that right of publishers can only be said to exist in the EU, and will not automatically lead to an injunction in India.

Other Developments

Indian

Judgments

Maya Appliances Private Limited v. Preethi Kitchen Appliances Private Limited and Another– Supreme Court of India [February 11, 2020]

The dispute between the Parties concerned alleged infringement by the Appellant of the Respondents’ design in respect of a base unit of a mixer grinder. Additionally, the Respondents filed a suit against the Appellant claiming infringement and passing off of the design registration. In response to this, the Appellant also filed a cancellation petition against the Respondents’ design. The Court noted in light of these facts that the two cancellation petitions as well as the Respondents’ case were pending in nature. Accordingly, it directed the Controller of Designs to transfer the cancellation petitions to the Madras High Court within two weeks of the order.

Puma SE v. TarsemLal and Another– Delhi District Court [February 13, 2020]

The Court granted a permanent injunction restraining Defendant No. 2 from infringing and passing off the Plaintiff’s mark “PUMA” by using an identical mark in respect of apparel and footwear. In arriving at this decision, the Court observed that the Local Commissioner’s report on seizure of goods from the shop of Defendant No. 2 had been unchallenged. Moreover, the Court also stated that a previous interim injunction had already been granted in favour of the Plaintiff. The Court also granted nominal damages to the tune of INR 50,000 in favour of the Plaintiff on the ground that infringing goods were seized from the shop of Defendant No. 2.

Central Park Estates Private Limited and Others v. Provident Housing Limited – Delhi High Court [February 17, 2020]

The Court granted an ex parte ad interim injunction restraining the Defendant from infringing and passing off the Plaintiffs’ mark “CENTRAL PARK” by using a deceptively similar mark “PROVIDENT CENTRAL PARK” in respect of real estate development. The Court drew reference to a previous case which was ruled on similar facts to note that the marks had a similar essential feature, and accordingly restrained the Defendant from adopting the mark in respect of real estate projects.

Steelbird Hi-Tech India Limited v. Asia Fibre Glass Products and Another– Delhi High Court [February 17, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing the Plaintiff’s design in its helmet by using an identical design. In arriving at this decision, the Court noted that the Defendants had failed to discharge the onus in respect of infringement, as they did not file any evidence. The Court also granted damages to the tune of Rupees 96 lakhs on the basis of the ex parte unrebutted evidence of the Plaintiff.

HT Media Limited and Another v. www.theworldnews.net and Others – Delhi High Court [February 17, 2020]

The Court granted a permanent injunction restraining the Defendants’ from reproducing and communicating the Plaintiffs’ news articles on its website, and from using the Plaintiffs’ mark “HINDUSTAN TIMES”. The Court noted at the outset that the Defendants had engaged in a blatant violation of the rights of the Plaintiffs by reproducing their copyrighted content, and further claiming copyright on such matter. The Court noted that the whereabouts of Defendant No. 1 could not be ascertained, but the website was used to target Indian customers specifically. With respect to the determination of the website as a “rogue website”, the Court observed that the primary purpose of the Defendants was to aggregate news articles and make them available to the public. In doing so, the Court noted that it infringed upon the Plaintiffs’ intellectual property rights, namely copyright and trademark. Accordingly, the Court noted that the Defendants’ website could be termed as a “rogue website” in terms of the UTV Software order.

Chaurang and Others v. Shemaroo Entertainment Limited and Others – Bombay High Court [February 18, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement and passing off of the Plaintiffs’ mark “MARATHI BANA” through adoption of a deceptively similar mark “SHEMAROO MARATHI BANA” in respect of a television show. The Court noted that the outset that the Plaintiffs had incorrectly represented their sales figure to be Rupees 55.17 crores in respect of the sole show, Marathi Bana. Further, the Court observed that the mark “MARATHI BANA” was a very common expression used widely in the Marathi language, and could not be said to be distinctive in nature. Accordingly, the Court noted that the Plaintiffs had failed to make out a prima facie case for the grant of an interim injunction.

Hatsun Agro Product Limited v. Kamadenu Dairy Farms – Madras High Court [February 19, 2020]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AROKYA” by using a deceptively similar mark “AROGIYAM” in respect of milk. In arriving at this decision, the Court noted that the Plaintiff was involved in manufacturing various dairy products, and had undertaken substantial promotional expenses in respect of its products. Moreover, the Court observed that the Defendant adopted a phonetically similar mark to that of the Plaintiff in respect of the same goods.

Novartis AG and Another v. Sun Pharmaceutical Industries Limited – Delhi High Court [February 20, 2020]

The Court granted an ad interim injunction restraining the Defendant from infringing the Plaintiffs’ patent in the product compound “NILOTINIB”. In arriving at this decision, the Court noted that the Plaintiffs were the owner of the suit patent, and the launch of a drug in such case would result in an infringement of the patent. The Court also noted that all the three elements for the grant of an injunction had been made out by the Plaintiffs.

Endemol Shine Nederland Producties B.V. and Others v. Andaman Xtasea Events Private Limited and Others – Bombay High Court [February 21, 2020]

The Court granted an ad interim injunction restraining the Defendants from infringing and passing off the Plaintiffs’ marks “BIGG BOSS”, “BIG BROTHER”, device of eye, and the tagline “INDIA ISSE APNA HI GHAR SAMJHO”, by using deceptively similar marks in respect of a television show. The Court noted that the adoption of such deceptively similar marks could not be mere co-incidence, and the Defendants’ attempt was to associate with the Plaintiffs’ show in order to deceive the public. The Court observed that such representation by the Defendants’ would result in misleading not only the viewers, but also the contestants in the show. In that light, the Court noted that the Plaintiffs had made out all the three elements for the grant of an interim injunction.

Roche Products (India) Private Limited and Others v. Cadila Healthcare Limited and Others – Delhi High Court [February 24, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ patent in “TRASTUZUMAB”. In this respect, the primary question which arose before the Court related to the maintainability of the suit on the ground that the approval granted by the DCGI and DoB was appealable under Rule 122DC of the Drugs Rules. Elaborate discussions ensued on this provision, and the Court noted that the new rules under the Drugs Rules clearly restricted the persons to whom the appeal was available. Accordingly, the Court stated that the Plaintiffs could not appeal as it had been limited only to an “applicant who is aggrieved”. In conclusion, the Court observed that in light of the deletion of the provision of appeal under Rule 122DC itself, the challenge to the maintainability of the suit had become inapplicable.

CDE Asia Limited v. JaideepShekhar and Another– Delhi High Court [February 24, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the patent and design of the Plaintiff in its device “FM 120 CONEXUS”, used to classify various materials. The Defendant No. 2 argued in light of Section 25(2) of the Patents Act, 1970 that the right of the patentee could only be crystallized after the expiration of a year provided for giving the notice of a post-grant opposition. However, the Court noted that the Supreme Court of India in the decision of AloysWobben did not hold that a suit for infringement within one year of grant of the patent would be unmaintainable. Furthermore, the Court observed that a patentee could rely on its granted patent in order to file an action for infringement. With respect to the argument on territorial jurisdiction, the Court observed that the products were offered by the Defendants for sale in Delhi, and were carrying on business within the Court’s jurisdiction. In light of the aforementioned facts the Court observed that it had jurisdiction in the matter.

Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills– Calcutta High Court [February 27, 2020]

The dispute between the Parties arose on account of the Respondent’s alleged use of the Petitioner’s mark “SONY” in respect of hosiery products. At the time of filing the suit, the Petitioner merely claimed for a passing off action, as its application for trademark had not been granted by the Registry. The Court noted at the outset that though a case had to be decided on rights of the parties at the date of filing the suit, a diversion could be made from this position if a fact arising thereafter had a fundamental impact on the relief prayed for. In that light, the Court permitted the Petitioner to amend its plaint to include an action for infringement of the mark “SONY”, in addition to the already existing action of passing off. Accordingly, the order of the Single Judge was set aside, and the application for amendment of plaint was allowed.

Lupin Limited v. Union of India and Others – Delhi High Court [February 27, 2020]

The Petitioner was granted a product patent in respect of a drug, but the National Pharmaceutical Pricing Authority (‘NPPA’) stated that it had not applied for an exemption under Para. 32(i) of the amended Drug Price Control Order, 2013. In this respect, the Court observed that the primary question before it was whether a prior approval was required from the NPPA before the launch of a drug or was a mere intimation to the NPPA enough. In order to determine this question, the Court granted NPPA time to file its stance, while noting that no coercive measures shall be taken against the Petitioner in the meantime.

Saregama India Limited v. Sky B (Bangla) Private Limited– Calcutta High Court [February 28, 2020]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s copyright in its sound recordings, lyrics and music in the songs. The Defendant disputed the Plaintiff’s ownership of copyright over the sound recordings. In response, the Plaintiff presented sample deeds to show ownership, and the Defendant argued that the clauses of such deeds could not constitute assignment of ownership of copyright. The Court referred to a previous case, and noted that in the present case it could not be stated that the Plaintiff would not succeed at trial or that the Plaintiff was not the owner of copyright. Accordingly, the Court concluded that the Plaintiff made out a prima facie case along with a balance of convenience in its favour for the grant of an interim injunction.

News

  • Trade Marks Registry publishes response to stakeholders’ comments/suggestions received in light of the public notice dated December 12, 2019.
  • Bengaluru city court issues non-bailable warrants against Kannada film actor and director, Rakshit Shetty and music director, Ajaneesh Loknath for allegedly copying a song.
  • Shashwat Gautam, a former national coordinator in the Congress Party’s data analytics accuses Prashant Kishor of stealing a campaign slogan, logo and data.
  • India and U.S. sign a knowledge-sharing agreement on IPR ahead of U.S. President Donald Trump’s visit; Civil society expresses concerns (see here and here).
  • Rejecting opposition, Patent Office grants U.S. firm Gilead patent for HIV drug, Cobicistat.
  • Patent Office invites online applications for Patent Agent Examination, 2020 likely to be held on June 28, 2020.
  • Delhi HC states that an owner of a registered trade mark cannot be changed in a mechanical manner upon filing of a Form (see order here).
  • India TV alleged of stealing an animation artist’s exclusive 3D video of the Ram Mandir.
  • New facilitators for patents, designs and trade marks added under the Start-Ups Intellectual Property Protection (SIPP) scheme.
  • A copyright agent in Gujarat alleged of extorting traders by scaring them of trademark violations in branded products.
  • Music composer, A.R. Rahman challenges notice demanding service tax for transfer of copyright in music composed for films to film producers; Madras HC stays operation of notice.
  • Patent Office rejects Google’s application on wearable electronic devices as they lack inventive steps.
  • Director of film Mr. India, Shekhar Kapur raises question of director’s creative rights amidst talks of its re-make.
  • DPIIT holds stakeholders’ meeting to discuss copyright issues and the provisions under the Copyright Act and Rules.
  • Patent Office to start accepting more requests for expedited examination under the bilateral Patent Prosecution Highway pilot program commenced with JPO.
  • UK Artist TroyBoi accuses the makers of ‘Baaghi 3’ for recreating his song ‘Do You’.

International

  • Geneva Act of WIPO’s Lisbon Agreement on Appellations of Origin and Geographical Indications enters into force.
  • United Kingdom won’t be seeking involvement in the Unified Patent Court despite its ratification of the underlying agreement in April, 2018.
  • China hits back at the United States’ efforts to ‘block’ its WIPO candidate.
  • Amanda Solloway confirmed as the United Kingdom’s minister for IP.
  • The United Kingdom confirms that it has no intention of implementing the EU Copyright Directive, 2019.
  • Oscar winning film, Parasite alleged of being a plagiarized version of the Tamil film, MinsaraKanna.

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