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SpicyIP Weekly Review (March 23 – 29)


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

Topical Highlight

Namratha covered the first (reported) coronavirus related IP dispute in India, where Hindustan Unilever (‘HUL’) took Reckitt Benckiser (‘RB’) to the Bombay HC over its allegedly disparaging handwash advertisement. She states that HUL claimed first that RB’s advertisement disparaged its soaps, second that RB had copied its earlier published advertisement, and third that RB was creating a false propaganda that washing hands with soap bars is ineffective against the virus. Subsequently, she lays down the essentials for a disparagement claim to succeed, followed by the defences against a disparagement claim, being (i) section 30(1) of the TM Act, 1999, and (ii) free speech defence under Article 19(1)(a). Examining the presence of a prima facie case against RB, she observes that if HUL’s claims were proved right, the advertisement would have a ‘detrimental effect’ against HUL’s product, thus proving the disparagement claim.

Thematic Highlights                                                                          

Prashant wrote on the possible resolution to the problems which may arise due to the lack of stockpiling of equipment to fight COVID-19 in India. He notes that it is imperative for India to develop an IP policy that tides it over the pandemic. He observes that the grant of a compulsory licence under sections 92, 100 or 102 of the Patents Act, 1970 may be viable options, but only when the technology is available to the public at reasonable prices. He notes that while exercising one of the aforementioned options, the government must be aware of the extent of ‘know-how’ it possesses in respect of that technology. As an alternative, he suggests that bulk public procurement of patented technology may be effective, failing which technology transfer may be triggered. Ultimately, he observes that the Prime Minister’s Office should seriously consider putting together a team of experts to prepare an IP policy. In conclusion, he notes that the pandemic is appropriate to grant a compulsory licence.

This was followed by a guest post by Rahul, wherein he argues that it is not only wise for the Government to use the patent law flexibilities to ensure accessibility to medical devices required to combat COVID-19, but also mandated by the fundamental right to health guaranteed under Article 21 of the Indian Constitution. He also reflects on the role that the courts can play in this regard. Drawing from the jurisprudence of the ICESCR Committee, he highlights the Indian government’s duties to protect and fulfil the health requirements of its populace. He notes that imposition of positive obligations in themselves are not contrary to patent law, as: first, the Parliament has statutorily provided for such measures in the Patents Act, and second, this mode of imposition of obligations is a common practice of the Indian courts. He concludes by stating that the use of levers of compulsory licensing are mandated by the Right to Health.

Other Posts

Latha discussed the issue of extension in deadlines in IP prosecution in light of the COVID-19 outbreak. She observes that though the Indian IP Office (‘IPO’) has granted adjournment of hearings, it has not yet granted extensions of deadlines for filings in IP prosecution. Further, she mentions two notifications of the IPO: first, relating to the cancellation of all Video Conferences scheduled up to March 31 in the Patent Offices; and second, relating to the request for extension of time for submission of documents related to trademark applications. She notes that the second notification may not have a legal standing despite invocation of section 131 of the TM Act, 1999. Finally, she notes the issues relating to signature and stamping of documents and waiver of fees for extension of deadlines, and hopes that the IPO will provide a resolution to the various issues arising in light of the COVID-19 lockdown.

Swaraj covered the various relevant IP issues in the wake of the COVID-19 pandemic. First, he notes that there are several initiatives for an open access to ‘information, research and data’ concerning the virus. However, he emphatically urges for a movement towards a more ‘sustainable’ and ‘equitable’ publishing model for academic writing. Second, he mentions that entities have access to culture possible in such testing times, before suggesting that even libraries may be propelled to follow suit in providing such access. He also wonders if there has been a rise in Netflix subscriptions/ piracy rates, while questioning the ‘underuse’ of copyright exceptions for benefit of persons with disabilities. Third, he discusses various developments in the fileld of patents, where he observes that Israel has granted a compulsory licence to import a generic version of the HIV/AIDS drug, Kaletra. He wonders if the first world would still view compulsory licensing in an adverse light after realizing the impact of the pandemic. Subsequently, he questions the implications of the U.S.’s policy on other countries in such public health crisis while citing Gilead’s applications for Remdesivir. Last, he notes that drug development models can potentially change in light of the pandemic, and it may be possible that R&D price de-linkage may finally start to gain momentum.

In a two-part post, Mathews discussed the main points of the ‘2019 Global Trademark Report Card’ (‘Report’) by the Trademark Working Group. In the first post, Mathews notes that he is unsure of how the procedure for registration of certification marks may lead to loss of control over its certification in India; and that legal formalities cannot be done away with entirely, as it may prejudice the working of the system. He further discusses how the Power of Attorney, notary and vakalatnama are not an ‘unnecessary formality’ in India. Finally, he points out that the report fails to offer a ‘convincing’ solution to the problem of subsequent designations under the Madrid Protocol in India.

In the second post, Mathews states that he is apprehensive of the successful working of the Commercial Courts Act in India, as claimed by the Report. He subsequently deals with the points of ‘number of hearings’, ‘opposition proceedings’ and ‘cancellation proceedings’. Further, he notes that the ‘temporary’ grant of injunctions in India subsist for a long time, due to the systemic delays in the system. Though the Report offers quite an optimistic view on training of judges and specialized benches, he observes that judicial training has not been given enough attention, and the quality of justice delivery varies across India. He notes that the lawyers agree with the Report’s finding that seizure of counterfeit goods involves considerable delays. In conclusion, he notes that there is a need for a ‘credible institutional audit’ to correctly capture issues in the Indian context as the Report incorrectly praises/ criticizes the Indian system on certain issues.

Other Developments

Indian

Judgments

Frito-Lay North America, Inc. and Others v. Balaji Wafers Private Limited – Bombay High Court [January 21, 2020]

The Court granted an ad-interim injunction restraining the Defendant from infringing the Plaintiff No. 1’s ‘ridge design’ in its edible chips. The Court observed that the Defendant’s design was a prima facie imitation of the Plaintiffs’ registered design. In response to the Defendant’s claim that the design had been previously published elsewhere in the world, the Court noted that the Plaintiffs’ designs, applied to their chips indicated a marked distinction from the general wave-like designs of chips. The Court also noted that such distinctions could not be dismissed in small size eatables like potato chips as trivial. Accordingly, the Court observed that it could not be concluded that the Defendant had made out a case for the cancellation of the Plaintiffs’ registration. Moreover, the Court noted that the Plaintiffs had made out all the elements for the grant of an injunction in their favour.

Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited – Delhi High Court [March 23, 2020]

The Court granted an ad interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “BMW” by using a deceptively similar mark “DMW” in respect of e-rickshaws. In arriving at this decision, the Court noted that there was a clear visual and phonetic resemblance between the marks of the Parties and the Defendant had adopted the essential features of the Plaintiff’s mark. Furthermore, the Court observed that the Defendant’s adoption of the mark “DMW” was dishonest and was with an intent to ride upon the Plaintiff’s goodwill and reputation.

Brilliant Public School Society and Another v. Brilliant Public School Sitamarhi – Chattisgarh High Court [March 23, 2020]

The dispute between the Parties arose on account of the Respondent’s alleged infringement and passing off of the Appellants’ mark “BRILLIANT PUBLIC SCHOOL” by using an identical mark in respect of providing educational services. The Trial Court refused the grant of injunction to the Appellants on the ground that the word “BRILLIANT” is generic in nature, and that the Appellants had failed to establish the elements for the grant of an injunction. The Court set aside the decision of the Trial Court, and noted that there was no evidence before it to declare that the mark “BRILLIANT” was used by large number of institutions in the country or abroad. Moreover, the Court observed that the Appellants were the prior user of the mark and had been successful in establishing a strong case for the grant of an injunction.

News & Opinions

  • K.M. Gopakumar and Prathibha Sivasubramanian from the Third World Network discuss how  patent law could pose barriers to accessibility to two potential anti-COVID-19 drugs – Remdesivir and Favipiravir – that are under patent protection in India.
  • Xiaomi patents new mask in India with improved fit and protection amidst the COVID-19 pandemic.
  • Johns Hopkins University says that it didn’t authorize use of its logo on a report titled ‘Covid19 for India Updates’ which claimed community transmission to have started in India in early March.
  • Interim orders passed by various courts have been automatically extended in wake of the lockdown.
  • Despite COVID-19, patent publications and grants increase at the Indian Patent Office, but there has been a 61% decrease in trademark examinations over the last week.
  • Attorney General KK Venugopal creates and provides access to his antiquarian book collection of 591 books; says they are not protected by copyright in India.
  • The Indian Performing Right Society Limited (IPRS) declares an Emergency Relief Package to support around 3150 members amidst the COVID-19 pandemic.

International

  • China refuses registration of coronavirus related trademark applications under the provision that prevents registration of signs which are ‘detrimental to socialist ethics or customs, or [have] other unwholesome influences’.
  • SCOTUS holds that states are immune from copyright suits.
  • AbbVie gives up patent rights to HIV drug Kaletra amid COVID-19 tests.
  • Relecura makes patent innovation research platform freely available to researchers in light of the COVID-19 pandemic.
  • South Korea launches a ‘patent information navigation’ system to provide an accurate information on the latest inventions and treatments related to the COVID-19 pandemic.
  • BeyondSpring Inc., a biopharmaceutical company, submitted its US patent application for BPI-002, for ‘methods of treating viral infections, including COVID-19’.
  • The Chaoyang District Market Supervision Bureau fines Beijing Yijie Shunda International Intellectual Property Agency Co. Ltd., 100,000 RMB for filing malicious marks related to the COVID-19 pandemic.
  • Numerous scientists and lawyers start the ‘Open COVID Pledge’ to boost cooperation and make IP widely available to end the COVID-19 pandemic.
  • US District Court for the Southern District of New York rules that videogame makers are free to use NBA stars’ tattoos.
  • CJEU hold that trademark owners can seek compensation for infringement which took place before cancellation of their marks due to non-use.
  • The Coronavirus Aid, Relief and Economic Security Act, passed by the Senate in the U.S. grants ‘emergency relief authority’ to the USPTO Director and the Register of Copyrights.
  • A piece on Medicines Law & Policy blog argues that there is an urgent need for global collaboration, access to developmets and affordability of new medical technologies.
  • A piece on IPWatchDog discusses how TikTok used blockchain to defeat copyright infringement.
  • A piece in the EFF argues that the U.S. government should use its statutory authority under 28 U.S.C. §1498 to issue compulsory licences on patents that hinder access to existing technologies and development of new technologies to benefit public health.
  • A piece in the National Law Review argues that a vaccine for COVID-19 may well be the newest bargaining chip in a trade war between the U.S. and China.
  • A piece in the Bloomberg Opinion argues that patents must take a backseat in the fight against the pandemic, as it touted the pandemic to be ‘extraordinary circumstances’ justifying such a step.

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