Others

SpicyIP Weekly Review (March 2 – 8)


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

Topical Highlight

Prashant wrote on the order appointing Justice Manmohan Singh to the IPAB until September 21, 2020, a year beyond his actual tenure, pursuant to a Supreme Court order in a petition filed by AIPPI. He notes that the petition was not the first instance where the lawyers have sought his extension or re-appointment. Further, he states that this order of the SC is without any precedence and that statutory retirement ages should not be similarly circumvented. Ultimately, he notes that lawyers affiliated with the AIPPI should not be allowed to appear before Justice Manmohan Singh, considering a ‘perception of likely bias’ towards AIPPI which specifically sought his extension.

Thematic Highlight                                                                         

In a guest post, Dr. Vikas Kathuria discussed the impact of Section 4A in the draft Competition (Amendment) Bill, 2020 on abuse of dominance cases related to IP rights. He claims that IP and competition law serve a ‘complementary’ function, but competition law may prevent exercise of IP rights detrimental to innovation. He explains that the inclusion of Section 4A would enable a dominant firm to invoke its IP rights as a justification to anti-competitive practice. He argues that as it stands, Section 4 balances IP and competition. The addition of Section 4A will erode this and existing SEP jurisprudence in India. In conclusion, he observes that the absence of riders such as Section 4A would empower courts to limit new anti-competitive activities.

Other Posts

In a post in the series on the ‘Parachute’ disparagement case, Prashant disagreed with Latha’s standard of ‘actual malice’ on the ground that it violated the fundamental right to freedom of speech. He notes that the ‘actual malice’ standard is established only in case where a statement is uttered without truth, or with the knowledge that it is false. He expounds on the standard of actual malice through the case of NYT v. Sullivan, which allows for protection of speech with ‘factual errors’. He states that Latha highlighted the use of ‘virgin coconut oil’ instead of ‘organic coconut oil’ by Abhijeet Bhansali, to further note that even such a claim was to be proved by Marico, thereby implying that the same was a speech with ‘factual error’. Finally, he observes that the outcome of the case bolsters free speech and holds the powerful accountable.

Adarsh wrote a post on the common order of the Delhi HC in the Trastuzumab litigation saga concerning Roche. Through this judgment, the Court decided that the suit was maintainable. Adarsh observes that this common order dealt with the maintainability of a suit in light of the availability of an appeal from the DCGI’s order under Rule 122DC of the Drugs and Cosmetics Rules. He notes that the issue was not comprehensively dealt with as: first, the Court noted that the same question was pending decision before the Division Bench of the Court; and second, the Court pointed out that there was an amendment in the Rules, according to which the appeal provision could only be triggered by the applicant. He concludes by noting that the Court had ‘indirectly rejected’ the application on the maintainability issue, but had not yet disposed of the application.

Adarsh also discussed the recent orders of the Bombay and Madras HCs which granted injunctions against organizers from using live bands or music systems to play copyrighted songs. He observes that the orders do not contain elaborate reasoning for the grant of injunctions, but claims that such an activity could infringe copyright which includes the rights of ‘communication to the public’ or ‘perform in the public.’ Before opening the post to thoughts and comments of the readers, he notes that the correct position of law according to him is that an author would not be able to seek an injunction if his rights have already been assigned to a music label.

In a guest post, Anupriya Dhonchak wrote about the policy questions arising out of the protection of smell marks in India. She notes that smell marks are not registrable in India due to the requirement of ‘graphical representation’ of a mark. This requirement, which was borrowed from the EU has now been abandoned in the EU, but continues to remain a part of Indian law. She notes that the grant of smell marks would violate the functionality doctrine by granting monopoly to a person over a useful feature, which falls more appropriately under the ambit of the patent or design laws. She quotes the decision in Norwich Pharmacal Co. v. Sterling Drug to substantiate her argument that a smell should not be trademarked, unless it does not add substantial value to the product. Further, she notes the various problems which might arise through the grant of protection to smells and their enforcement before the court. In conclusion, she observes that certain policy questions remain to be considered before the subject matter of trademark can be extended.

In another guest post, Debmita Mondal wrote about her experience at the IP and Innovation Researchers of Asia 2020 Conference (‘IPIRA’). She notes that the second edition of the conference was organized in Indonesia and witnessed participation from over 150 research scholars and academicians from various countries. Further, she observes that the conference acted as a platform to globally connect with the academic community and offer researchers feedback on their presentations. The post notes that a workshop followed the conference which offered valuable lessons in researching. After observing the smooth functioning of the conference in light of COVID-19, she concludes that the IPIRA offers a wonderful opportunity to IP enthusiasts to learn and grow.

SpicyIP Announcements

The School of Law at the Singapore Management University (SMU) has called for applications for a research fellow/ research associate position as well as a program of sponsoring PhD candidates at their final year of thesis writing to come to SMU for six months.. Further details (job qualifications, job description etc.) pertaining to both the programs can be found in the post. A common deadline for the receipt of applications has been set to April 2, 2020.

The Inter University Centre for Intellectual Property Rights Studies is offering a fellowship program during April to June 2020. The eligibility criteria for the fellowship is that the applicant must be a teacher in any University or College in India for less than 10 years, and a fellow shall be paid Rs. 25,000 per month. The last date for application for the fellowship is March 16, 2020.

Other Developments

Indian

Judgments

Star India Private Limited v. Moviestrunk.com and Others – Delhi High Court [February 17, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of copyright of the Plaintiff’s film “MISSION MANGAL” through communication to the public and permitting viewing and downloading of the same, without authorization. The Plaintiff pleaded that the Defendants were ‘rogue websites’ within the meaning of the UTV Software order, as their principal activity involved reproduction, publication and communication of infringing material over the internet. The Court noted that the evidence placed on record by the Plaintiff actually pointed out to infringing activities being carried on by the Defendants. Moreover, the Court observed that the Defendants’ failure to enter appearance displayed their casual indifference to the IP rights of the Plaintiff. Accordingly, the websites were determined to be ‘rogue websites’.

Prasar Bharati v. Ritu Arya and Others – Delhi High Court [February 27, 2020]

The Court refused to grant an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “DOORDARSHAN” by its adoption as title of their film. In arriving at this decision, the Court noted that though the Plaintiff had made a prima facie case, the Defendants’ film was to be released the next day. In light thereof, the grant of an injunction would result in monetary and business damages to the Defendants.

Genetech Inc. and Others v. Drugs Controller General of India and Others – Delhi High Court [March 2, 2020]

The Applicants filed a petition for inspection of its documents to be carried out by an independent expert, as they contained confidential information and test data generated in respect of its drug “TRASTUZUMAB”. The Court noted that an ‘expert’ would not be limited to an external expert, or the same would have been explicitly observed by the Court previously. Additionally, the Court stated that the inclusion of an internal expert would give the Plaintiff a fair chance to amend its pleadings. The Court also noted that Rule 17 of the Delhi High Court (Original Side) Rules, 2018 was not applicable to the present case, as it was not a commercial matter.

Unilever Plc and Another v. Nandu Kumar – Bombay High Court [March 2, 2020]

The Court extended the already granted ex parte interim injunction to further restrain the Defendant from infringing and passing off the Plaintiffs’ mark “FAIR & LOVELY” by manufacturing or distributing cosmetic preparations with counterfeit packaging or containing marks, identical or deceptively similar to the Plaintiffs’ mark.

Shemford Schools Private Limited and Another v. R.R.R. Education and Charitable Trust and Another – Delhi High Court [March 2, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiffs’ mark “SHEMFORD” by adopting an identical mark in respect of establishing schools. The Court noted that the Defendants had continued to use the Plaintiffs’ marks, even after the termination of the Memorandum of Association between them authorizing such use. Moreover, the Court observed that the rival marks were phonetically, structurally and visually identical, and that the use of mark by the Defendants would lead to confusion in the minds of the parents of the prospective students.

Zee Entertainment Enterprises Limited v. Sunil Seth and Others – Bombay High Court [March 3, 2020]

The Court granted an ad-interim injunction restraining the Defendant No. 1 from infringing the Plaintiff’s copyrights in its films “LAADLA”, “BOL RADHA BOL” and “DIL AASHNA HAI” by broadcasting the same on its channel on YouTube. The Court observed that the Plaintiff had acquired rights in the aforementioned films, and the Defendant No. 1 had acted in infringement of the Plaintiff’s rights. Moreover, the Court noted that the Defendant No. 1 was put to notice of the infringement by the Plaintiff, but it still did not appear before the Court in that regard.

Kamruddin Mehsaniya v. A. Hafsabi and Another – Bombay High Court [March 3, 2020]

The Court granted an ad-interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “KIMIA” by using deceptively similar marks “KIMAA” and “KEEMA” in respect of wet dates. The Court observed that the Defendants had adopted the deceptively similar marks dishonestly and such adoption was likely to result in confusion and deception in the minds of the consumers. The Court also noted that the Defendants had adopted the mark with an intention to ride on the goodwill and reputation of the Plaintiff.

Bajaj Electricals Limited v. Gourav Bajaj and Another – Bombay High Court [March 3, 2020]

The Court granted an ex parte interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “BAJAJ” by using a deceptively similar mark “APNA BAJAJ STORE” and a domain name containing the mark “BAJAJ”. In arriving at this decision, the Court noted that the Plaintiff was the proprietor of the “BAJAJ” marks and its artistic labels. The Court also observed that in light of the nature of goods, the possibility of confusion and deception could not be ruled out. Accordingly, the Defendants had dishonestly adopted the mark with an intent to take advantage of the goodwill and reputation of the Plaintiff.

Torque Pharmaceuticals Private Limited v. Emami Limited – Calcutta High Court [March 4, 2020]

The Court allowed the Plaintiff’s application for the transfer of suit to the High Court on the ground that Section 22 of the Designs Act, 2000 enables such transfer when the ground for cancellation of the registration of a design is invoked.

Travellers Exchange Corporation Limited v. M/s. Mittal Travelx – Bombay High Court [March 4, 2020]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “MITTAL TRAVELX” by using the mark “TRAVELEX” in respect of providing travelling services. However, the Defendant noted that it would change its name and not include the mark “TRAVELX” or any mark visually or phonetically similar to the same.

Zee Entertainment Enterprises Limited v. Ameya Vinod Khopkar Entertainment and Others – Bombay High Court [March 4, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s copyright in its film as well as infringement of its trademark in the mark “DE DHAKKA” by intending to produce a sequel to the same. The Court examined the deed of assignment by which rights in the film were vested in the Plaintiff to conclude that the right to produce a sequel to the movie were not assigned to the Plaintiff. Moreover, the Court noted that the parties to the assignment deed had no intention to assign any other rights in the Plaintiff than the ones explicitly mentioned in the deed. Accordingly, the Court observed that the Plaintiff had failed to make out a prima facie case for the grant of an injunction.

Novex Communications Private Limited v. Sea Princess Hotels and Properties Private Limited – Bombay High Court [March 4, 2020]

The Plaintiff alleged infringement of copyright in its sound recordings by the Defendants. The Court disposed of the application for the grant of an interim injunction on the ground that the Defendant had stated on oath that it would not play any songs in its hotels without due and proper authorization of the Plaintiff.

News

  • The Government rejectsrequest filed for conducting the Patent Agent Examination in Hindi in addition to English.
  • Delhi HC observes that IPAB’s purpose of speedy disposal of IP matters has been completely defeated due to appointment woes.
  • WIPO announces a training program to be held in Nagpur from June 1 to 12, 2020.
  • The Government plans to offer tax and other incentives to pharmaceutical companies to set up R&D base in India.
  • In a recent order in the Roche v. Reliance Lifesciences (Trastuzumab suit), the Delhi High Court allows Roche’s internal member to look at Reliance’s documents.
  • Following AR Rahman, music director GV Prakash Kumar approaches Madras High Court for an interim injunction on the GST notice over the permanent transfer of music copyrights to movie producers.
  • In an article in the Hindu, Rahul Unnikrishnan (an advocate at the Madras High Court) argues that the re-framed The Tribunal, Appellate Tribunal and other Authorities Rules, 2020 notified last month are also unconstitutional.

International

  • England & Wales HC judge questions whether changes to the UK’s patent system could help the country to respond better to emergencies as the coronavirus outbreak.
  • WIPO elects Singapore IP chief, Daren Tang as its new leader.
  • EPO President, Antonio Campinos notes that the withdrawal of the UK from the UPC is not a decisive blow.
  • Supreme People’s Court in China rules on the registration of Louboutin’s red sole single-colour mark.
  • Meghan Markle and Prince Harry set to abandon “Sussex Royal” trade mark applications in the UK.

Leave a Reply

Your email address will not be published.