SpicyIP Weekly Review (March 16 – 22)

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

Topical Highlight

Swaraj covered all the adjournments issued by the various IP offices in India due to the COVID-19 outbreak. First, he notes the adjournment of all in person hearings in various Patent Offices in India till April 15, 2020, the notice for which directs video conferencing in the alternative. [As per a notice issued today, all video conferencing hearings at the Patent Office scheduled till 31st March stand cancelled]. Second, he refers to notifications adjourning design matters to varying dates. Third, he observes in line with the Public Notice of the Trade Marks Registry that trademark matters scheduled up to 15th April shall be re-scheduled after the said date. [As per a notice issued today, the applicants have been allowed to file requests for extension of time (now or after situation becomes normal).] Fourth, he notes the adjournments by the IPAB in matters listed for Chennai and Delhi. Fifth, he observes that according to the notice issued by the Copyright Office, the Registrar of Copyright shall re-schedule the listed matters in ‘due course of time’. Finally, he provides information on the functioning of various courts in India.

Thematic Highlight                                                                         

Balu discussed the copyright issues in respect of legal pleadings in India, in light of the SC’s recent decision in Chief Information Commissioner v. High Court of Gujarat, wherein it was held that copies of legal pleadings cannot accessed through the RTI Act but only under the procedure provided under the respective courts’ rules. Balu notes that pleadings are copyrightable as they are original literary works involving use of lawyers’ ‘skill and judgment’. Nevertheless, he states that pleadings may, however, be made available to the public by news websites etc. under section 52(1)(d) of the Copyright Act which permits reproduction of a work for the purpose of a report of judicial proceeding. He, however, notes that the provision is very unclear (as it does not use the term ‘publication’) and narrow in its scope (as it may not allow archiving unless accompanied by a report). Further, though he suggests that pleadings may also be published under section 52(1)(a)(iii) of the Act which permits fair dealing with a work for the purpose of reporting current events, he notes that the provision may hinder legal websites to solely archive them, use them for a report on older cases, or reproduce them entirely. Furthermore, he notes that though some courts may issue pleadings to third parties under their rules on basis of a sufficient cause being shown, the source of such power is worth exploring. He concludes by noting that access to pleadings is currently shrouded in a web of unclear laws and necessary amendments should be made in the law to enables unhindered access to pleadings.

Other Posts

In his first post, Lokesh Vyas, our Fellowship applicant discusses the absence of rights of film directors under the Indian copyright law, considering the recent controversy over the making of a trilogy based on the renowned film, Mr. India. He observes that a ‘producer’ is the sole author and owner of copyright in a cinematograph film in India, and the copyright law fails to appreciate the director’s intellectual contribution to it. Furthermore, he notes that a director does not even have moral rights under the Indian law and in absence of the same, his rights are merely contractual in nature. He notes that the joint authorship proposal under the Copyright (Amendment) Bill, 2010, which noted the principal director to be an ‘author’ of copyright in a film should be adopted. He notes that the intellectual labour and skill of the directors should be recognized, if not through amendment in the law, then by courts on a case-by-case basis relying on the Dominant Author test. He concludes that monetary risk should not be the ultimate determinant of authorship and copyright in films, and the director should be given due recognition for his contribution.

Divij wrote on the India-specific recommendations of prominent software and internet industry associations made to the USTR for the Special 301 Report. He notes that these associations have submitted that India be included in the ‘priority watch list’, quoting piracy as a major concern. Similarly, these associations have voiced various concerns over the provisions of the impending Personal Data Protection Bill, especially in respect of provisions affecting cross-border flow of data. He also notes that the Business Software Alliance made specific reference to software patenting in India, while expressing its reluctance to comply with the patent working requirements. In conclusion, he observes that the focus of the representations this year have shifted to data governance over the general concerns of piracy in India.

SpicyIP Announcements

We notified our readers of the Royzz & Co. International Student Scholarship for IP LL.M. at the University of New Hampshire, Franklin Pierce School of Law. Further details including the scholarship’s first recipient’s experience as well as application guidelines can be found in the post. The deadline for the receipt of scholarship applications is April 1, 2020.

Other Developments

Indian

Judgments

Makemytip (India) Private Limited v. MTB Travel Planner Private Limited and Another – Delhi High Court [February 27, 2020]

The Court granted a permanent injunction restraining Defendant No. 1 from infringing and passing off the Plaintiff’s mark “MAKEMYTRIP” by using a deceptively similar mark “MAKETRIPBAZAAR”, and from infringing the copyright in the Plaintiff’s logo by using the “MY” element in its logo. In arriving at this decision, the Court observed that the mark, domain name, logo and the website design adopted by Defendant No. 1 were deceptively similar/ identical to those of the Plaintiff. The Court noted that the Parties provided the same services, and the use of the mark would lead to probability of confusion and deception. Furthermore, the Court observed that Defendant No. 1 had adopted deceptively similar/ identical elements of the Plaintiff with an intention to ride upon its reputation and goodwill.

Starbucks Corporation v. Copamocha Café and Restaurant and Another – Delhi High Court [February 28, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “FRAPPUCCINO” by using an identical mark in respect of handcrafted beverage items. The Court observed that the Plaintiff had sent notices and subsequently followed up in respect of the name change of the Defendants’ beverage, but its name remained unaltered. Accordingly, the Court noted that the Plaintiff had made out a case for the grant of an injunction.

M/s. Matrimony.com Limited v. Kalyan Jewellers India Limited and Others – Madras High Court [March 13, 2020]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Appellant’s mark “MATRIMONY” along with various prefixes. The Single Judge dismissed the case, and noted that the marks of the Appellant were generic and descriptive in nature. With respect to infringement, the Court observed that the Respondents had merely used the ‘Adwords’ in order to get into the platform from which the customers could choose from the websites to use. The Court noted that an action for passing off could not be made out as the Appellant’s marks were generic in nature, and giving it monopoly over the marks would lead to lesser choices for the customer. Additionally, the Court stated that the Appellant could not indicate that its marks had attained secondary meaning in the nature of the trade, and noted that the customers take decisions in respect of websites consciously.

M/s. Kaleesuwari Refinery Private Limited v. M/s. SK Food Products – Madras High Court [March 13, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s get-up, colour scheme, design, phonetical and alphabetical font similarity on its packaging of edible oil. The Defendant submitted an affidavit through which it claimed that it shall stop using the same in respect of its packaging. In light of the affidavit, the Court disposed of the case.

Hakimuddin Bhemat v. Supreme Sales Agency – Calcutta High Court [March 16, 2020]

The Court modified the subsisting interim order between the Parties, thereby allowing the Defendant to use the mark “SSG BHARAT” as the same was not opposed by the Plaintiff and was not deceptively similar to the Plaintiff’s mark “BHARAT SHAKTI”.

Peps Industries Private Limited v. Kurlon Limited – Delhi High Court [March 16, 2020]

The Court refused to grant an interim injunction in favour of the Plaintiff, thereby not restraining the Defendant from using the mark “NO TURN” in respect of mattresses. The Court after discussing certain decisions noted that the action of passing off shall be unaffected by registration provided under the Trade Marks Act. In respect of the Defendant’s use of the mark, the Court observed that it had been using the mark since 2007 but its sales were intermittent in nature, and accordingly a defence under Section 34 of the Trade Marks Act could not be established. Furthermore, the Court noted that the Plaintiff was the later user of the mark since 2008 and its mark was descriptive in nature. The Court also stated that the Plaintiff had failed to place any documents on record to show that its mark had acquired distinctiveness through use.

Prof. Dr. Claudio De Simone and Another v. Actial Farmaceutica SRL and Others – Delhi High Court [March 17, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged passing off of their new product through linking it with the Plaintiffs’ “Di Simone Formulation” and thereby unjustly enriching themselves at the cost of the Plaintiffs. The Court observed that the plaint did not disclose any cause of action against the Defendants, as the action of passing off could not be initiated in respect of patents, which are a statutory right in India. Moreover, the Court noted that the patent based on which the Plaintiffs had asserted their claim had already expired in the U.S. The Court also noted that in the absence of a patent in favour of the Plaintiffs in India, its know-how was in the public domain as its U.S. patent had expired, and could have been freely adopted by the Defendants.

News & Opinions

• Many coronavirus related trademarks such as “dhl CoronaVirus Preventive”, “Anti-Corona”, “Corona Sanitizer”, “Nocorona”, “Corona Safe: Antivirus Spray with Vitamin E”, “COVID-RELIEF”, “Covidac” and “COVIDIUM” filed with the Trademark Registry (see here and here).
• CoSara Diagnostics Private Limited, an Ahmedabad-based firm is the first to get a licence to manufacture COVID-19 testing kits from the Central Drugs Standards Control Organisation (CDSCO).
• Cipla announces to work with Indian Institute of Chemical Technology (IICT) to develop three antiviral drugs – Favipiravir, Remidesivir and Bolaxavir – which are being tested for treatment of Covid-19; Lasa SuperGenerics also announces to work with IICT to develop Favipiravir.
• Cotton seed manufacturers want government to immediately increase price of BT cotton seed in light of the fast approaching planting season in Punjab and Haryana.
• IIT Delhi start-up, Fabiosys Innovations is developing infection-proof fabrics, which kill around 99.9% of the pathogens in 1-2 hours, to prevent Hospital Acquired Infections, which are a big problem with countries like India.
• Patent Office revokes Pharmacyclics Inc.’s patent for its anti-cancer drug, Ibrutinib on the ground of obviousness, following a post-grant objection filed by Laurus Labs.
• A piece in The Print argues that the Gopalakrishnan-led committee, constituted by the Ministry of Information and Technology for creation of a set of rules to govern non-personal data, must define non-personal data in a manner that protects IP rights, serves genuine public interest and promotes innovation.
• A Parliamentary Standing Committee in its report presented in the Lok Sabha panel urges the Government to include a fair use clause in the Cinematograph (Amendment) Bill.
• In the wake of COVID-19, Bombay HC postpones site visits and meetings by court receiver’s staff in 16 IP disputes by atleast one week.

International

• Israel for the first time invokes its compulsory licensing powers to permit import of generic version of HIV drug, Kaletra which is still under a patent there unlike in many other countries including India, to treat patients affected with COVID-19.
• Donald Trump offers large sums to German company for exclusive US access to coronavirus vaccine.
• IP offices around the world take various measures in the wake of COVID-19.
• Many library copyright specialists in the US issue a public statement to provide clarity for U.S. colleges and universities about how copyright law applies to the many facets of remote teaching and research in the wake of the COVID-19.
• Anthony Levandowski, former head of Uber’s self-driving unit has pleaded guilty to stealing trade secrets from Google.
• The German Federal Constitutional Court declares the Act of Approval for the UPC Agreement null and void.
• Spherix Inc. stocks soar after executing an agreement with the University of Maryland, Baltimore for a coronavirus drug.
• Numerous applications have been filed before the USPTOfor registering ‘coronavirus’ related trademarks .
• Many copyright holders around the world make a number of works freely accessible in order to ‘ease the coronavirus impact’ [see for instance, here, here, here, here and here]. This includes IP media platforms like WTR and IAM who have made Covid-19 coverage free to view.
• Labrador Diagnostics clarifies that its infringement action against bioMerieux Inc. focuses on activities over the past six years and does not relate to COVID-19 testing.
• A piece in The Hill argues that even if the coronavirus vaccine is invented, it may very well be unaffordable.