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SpicyIP Weekly Review (March 9 -15)


Topical Highlight 

In an extremely topical post, Swaraj wrote about how COVID-19 (Corona Virus) has brought forth the tension between public health and private-profits. Given the widespread panic, there have been many calls for delinking R&D costs from drug prices and finding new pharmaceutical innovation models. Swaraj notes that while open-access, open sharing of information along with greater calls for collaboration have been used in the emergency response, big pharmaceutical companies are still pushing for greater IP protection and liberty to set prices for their drugs.

Thematic Highlight 

Prashant wrote a post on the lobbying against Indian IP Law before the United States Trade Representative. The USTR’s annual ‘Special 301’ hearing names and shames America’s trading partners based on their efforts to protect American IP. This post looks into submissions made by the US Chamber of Commerce, National Association of Manufacturers, Alliance for Fair Trade with India and US-India Strategic Partnership Form and FICCI. Prashant notes and analyses that the standard complaints of these groups have concerned Section 3(d), Section 8, the lack of a linkage between regulatory approvals under the Drugs & Cosmetics Act and the Patents Act, the compulsory licensing provisions in the Patents Act and Section 146 disclosure of working and the lack of smooth functioning of the IPAB. While the newer complaints are regarding Section 31D of the Copyright Act and increasing use of price control.


Other Posts 

I wrote a thematic post on how Amazon is changing the nature of trademarks. In the post, I discuss how e-commerce platforms have built an enormous market in the past 15 years and how their significance and functions have expanded over time. In the process, they have also managed to build their own brands and become a brand themselves. With the same, the determination of intermediary liability of those platforms has become increasingly important. The Christian Louboutin judgment stands as a crucial point in the jurisprudence of the same which provides a list of ’21 tasks’ to identify how e-commerce platforms interact with the brands they sell. I note that with the introduction of brand registries and incentives for listing brands on platforms, trademarking has become more about brand registrability than brand recognizability.

I also wrote a post on the Delhi High Court judgment in Novartis Ag & Anr v. Sun Pharmaceutical Industries in which Sun Pharma was restrained from launching a generic version of Novartis’ Nilotinib. The post discusses the background to the case while deliberating on a standard to be set for court orders to record reasons for granting interim injunctions in case of pharmaceutical patents. The post discusses the Roche v. Cipla judgment by Ravindra Bhat J. to identify parameters for recording reasons in cases of interim injunctions given its deliberation on the issue of public interest and price. I conclude by highlighting the concerning trend of interim injunctions being granted readily when they are supposed to be exceptional remedies.

Next, Adarsh wrote a two-part post on the M/s. Indian Record Manufacturing Company Limited v. AGI Music Sdn Bhd and Ors case. The Madras High Court in this case permanently restrained the defendants, including music composer Illaiyaraja, from infringing the plaintiff’s copyright over certain identified musical works/sound recordings.

In the first post, Adarsh notes that the present Illaiyaraja case (Illaiyaraja II) is based on the decision in AGI Music Sdn Bhd v. Ilaiyaraja and Anr (Illaiyaraja I). The cause of action in Illaiyaraja II arose when a newspaper article stated that Ilaiyaraja had given the right of administering the musical work of all his songs in films produced before 2000 to AGI. The judgment held in favour of the plaintiff based on the 1977 Supreme Court IPRS judgment and Illaiyaraja I. Analyzing Illaiyaraja I, Adarsh points out that the Court relied on the proviso (b) to Section 17 to hold that the first owner of a Copyright in a cinematographic film and subsequently ‘sound recordings’ (including Illaiyaraja’s works in this case) is the producer of the film. The Court held that the issue of ownership under Section 17 of the Copyright Act does not change even after the 2012 amendment. Further, Adarsh pointed out that Illaiyaraja I failed to interpret ‘copyright therein’ that refers to a cinematographic film in proviso (c) of Section 17 correctly by highlighting the inconsistencies in rights regarding musical works and visual recordings.

In the second post, Adarsh highlights how despite Illaiyaraja I and Illaiyaraja II arriving at the same conclusions, Illaiyaraja I stands as a wrong judgment. The contradiction persists because Illaiyaraja I has a completely different law applying to its facts. Unlike Illaiyaraja II, the former is not bound by IPRS 1977. Pointing out the differences between the current definition of Section 2(f) of the Copyright Act which defines cinematographic film and what it was in 1977, Adarsh notes 4 points concerning the meaning with reference to visual recording, soundtrack, sound recording and accompanying visual recording. Given these differences, In conclusion, Adarsh said that paragraph 17 of IPRS 1977 has limited relevance in today’s statutory context and applies to fact situations preceding the 1994 Copyright Amendment Act. Whereas, paragraphs 15, 20 and 21 of the IPRS judgment of 1977, however, would apply for both pre- and post- 1994 amendment situations.

This was followed by Latha’s post debating whether India should join the Geneva Act of the Lisbon Agreement, 2015. The enactment of the Geneva Act was a result of the reform of the Lisbon Agreement on the Protection of Appellations of Origin and their International Registration (“Lisbon Agreement”), which was initiated by WIPO in 2009. While the Lisbon Agreement applies only to Appellations of Origin (AOO), namely, those names of products that have a particularly strong link with the place of origin, the Geneva Act extends that protection to all Geographical Indications (GIs) covered by the TRIPs definition. Noting the salient features of the Act for India, Latha suggested that India must seriously consider acceding to the Geneva Act. Given the number of GIs registered and pending in India, a well-administered GI protection system such as the one provided by the Geneva Act would give an economic boost to stakeholders. Latha suggests that the government could use this as an opportunity to carry out some of the much-needed amendments to the GI Act.

In another post, Adarsh wrote on the Single Judge Delhi High Court judgment in the case of Genentech Inc. and Ors. V. Drugs Controller General of India and Ors. This judgment allows Genentech’s in-house employee/expert to inspect the documents placed on record under a Confidentiality Club. Adarsh notes that the judgment dilutes the purpose of a confidentiality club by expanding its scope to beyond advocates and independent external experts. However, given the change in Delhi High Court (original side) Rules, 2018 and the point that the judgment concerned itself only with the facts of this case, Adarsh notes that this judgment cannot be a precedent in other matters while going into the technicalities of the order.

In a guest post, Sachin Sathyarajan wrote on the election of Singapore’s Daren Tang as the Director-General of WIPO in light of the US-China Trade War. The Chinese candidature was opposed by the US and its allies’ Singaporean candidate, Daren Tang, who eventually won the elections. Sachin notes that despite Tang’s very impressive breadth of experience, the minimal support he received from the developing nations in the election is a point of speculation. WIPO adopted a Development Agenda in 2007 and Singapore is not a member of the Development Agenda Group, hence, how potential polarization plays out needs to be seen. The informal geographical rotation of WIPO’s leadership is also discussed, wherein Sachin highlights 3 of the last 4 WIPO directors have been white men from developed countries. Lastly, Sachin discusses the voting process in WIPO where only 83 of WIPO’s 193 member states vote, and in conclusion notes the need for extending voting rights to all WIPO member states.

In another guest post, Pragati Agarwal wrote on the locus standi of a private entity seeking GI protection for Chinnor rice that is grown in the Balaghat district of Madhya Pradesh. Section 11(1) of the GI Act, 1999 throws light on the locus of a party seeking the GI tag and requires that only an association of persons or producers or any organization or authority established by or under any law can make an application for GI tag. The applicant in the case of the Chinnor rice is a private trading company and hence cannot be expected to represent the interests of producers of goods in a geographical area. Pragati discusses the issue further and concludes that Section 11 of the GI Act aims to protect those persons who are directly involved in the creation of GI products.

SpicyIP Announcements 

The Third World Network (TWN), Tata Institute of Social Sciences (TISS) Mumbai and Jan Swasthya Abhiyan are organizing a five-day workshop on Access to Medicines, TRIPS and Patents in the Developing World from April 20-24, 2020 in Guwahati, Assam. The workshop focuses on deepening the understanding of the intricate linkage between access to medicines and the barriers presented by IPR and IP policy framework. The workshop also aims to equip the participants to make law and policy interventions. Further details about the workshop can be found in the post.

NLSIU’s Journal of Law and Technology (IJLT) announced a call for papers for publications in Volume 16 of the Journal. The submission deadline for the same is 15th April 2020. IJLT is a student-edited, peer-reviewed, open access law journal published annually by NLSIU, Bangalore. The categories of submissions include Articles (5000-12000 words), Essays (3000-5000 words) and Case Notes, Legislative Comments, Book/Article Reviews (2000-6000 words).  Further details on the guidelines can be found in the post.

Other Developments

Indian 

Judgments 

SK Cosmetics v. The Controller General of Patents, Designs and Trade Marks and Others – Delhi High Court [February 11, 2020]

The dispute between the Parties arose on account of the specific ambit of Forms 33 and 34 of the previous Trademark Rules. The Petitioner claimed that the filing of these forms could not result in an alteration in the ownership of its mark. The Court agreed with the Petitioner that the filing of the aforementioned forms could only result in a change in the description or address under the mark, but not its ownership. Moreover, the Court noted that the Respondents had already effected change in the Petitioner’s marks, so as to maintain its proprietorship unaltered.

Sporta Technologies Private Limited and Another v. Edream 11 Skill Power Private Limited – Delhi High Court [February 27, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiffs’ mark “DREAM 11” by using a deceptively similar mark “EDREAM 11” in respect of an online fantasy cricket league. The Court observed that the Plaintiffs had placed several materials on record to show infringement on part of the Defendant, and that the Defendant’s mark was phonetically, structurally and visually similar to that of the Plaintiffs’ mark. The Court also noted that the Plaintiffs’ averments had not been rebutted by the Defendant, as it failed to appear before the Court, despite service to it.

Super Cassettes Industries Private Limited v. Prime Cable Network and Another – Delhi High Court [February 28, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid licence. Accordingly, the Plaintiff was granted damages to the extent of the loss of licence fee of Rupees 8.1 lakh.

ERD Technologies Private Limited v. Shree Ambeshwar Mobile Centre and Others – Delhi High Court [March 5, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “ERD” by using an identical mark in respect of electrical goods. The Court also directed the appointment of Local Commissioners for an examination of the allegedly infringing material.

International Society for Krishna Consciousness v. Iskcon Apparel Private Limited and Another – Bombay High Court [March 6, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “ISKCON” by using an identical mark in respect of its garment business. The Court observed that the Plaintiff is the registered proprietor of the mark “ISKCON”, and its use by the Defendants was prima facie infringing in nature. Moreover, the Court noted that the Defendants adopted the mark “ISKCON” with a view to ride upon the goodwill and reputation of the Plaintiff.

Inter Ikea Systems BV v. Harish Chaudhary and Another – Delhi High Court [March 12, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “IKEA” by using an identical mark. The Court noted that the Plaintiff had been successful in fulfilling all the three elements for the grant of an interim injunction. Moreover, the Court directed the Defendants to suspend its domain name i.e. “www.ikeasteelfab.com” along with its social media accounts till further orders.

Disney Enterprises, Inc. and Others v. Rlsbb.unblocked.ltda and Others – Delhi High Court [March 12, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ copyright in their films by transmitting them over the internet. The Court noted that the Plaintiffs had fulfilled all the three elements for the grant of an injunction, and noted that the Defendants arrayed were ‘rogue websites’ in terms of the UTV Software order on the basis of the evidence presented before it.

News

  • Government clarifies to the Bar Council of Tamil Nadu and Puducherry that there is no proposal for shifting of Principal Bench of Intellectual Property Appellate Board (IPAB) from Chennai.
  • YouTube removes Kannada Actor Kicha Sudeep’s Kotigobba 3 teaser due to a copyright infringement claim by Sanjay Kumar Pal.
  • Bengaluru police files an FIR against social media platform ShareChat based on a copyright infringement complaint by Lahiri Recording Company for facilitating users to download its copyrighted musical content without its consent. ShareChat claims that it is in compliance with copyright law and terms the compliant as an ‘intimidation’ tactic. The Internet and Mobile Association of India (IAMAI) states that this FIR is an overreach as the IT Act (with its 2008 amendment) mandates a ‘notice and takedown’ procedure for copyright infringement.
  • A city civil court in Ahmedabad issues notice to Microsoft for allegedly infringing IT company Azure Knowledge’s registered trademark  ‘Azure’ by using identical and deceptively similar marks such as ‘Microsoft Azure’, ‘Azure Cloud for All’, domain name www.azure.microsoft.com
    etc.
  • Madras HC grants interim injunction restraining Symphony Recording Company Ltd. from distributing, manufacturing or selling songs of singer ‘Mahanadhi’ Shobana for prima facie infringing her copyright in songs recorded by her as minor. The Court holds that the assignment agreements, based on which Symphony was claiming its right, were unenforceable as it was executed when Shobana was a minor.
  • Madras HC dismisses Madhya Pradesh’s and Madhya Shetra Basmati Growers Association’s plea challenging the exclusion of 13 districts in MP for GI tag for basmati rice grown in the Indo Gangetic Plain. The Court rejects the maintainability of the plea as the GI Registry has already issued GI tag to other states based on APEDA’s (Agricultural and Processed Food Products Export Development Authority) application for Basmati Rice grown in the Plain.

International 

  • Biocon, Mylan win patent litigation for insulin glargine device patent against Sanofi in the US.
  • International Trademark Association (INTA) annual meeting to be held in November 2020, in the US.
  • Coronavirus outbreak may force US, China to rework trade deal implementation.
  • The European Copyright Society Conference to host its annual conference on 15 May 2020 in Karlsruhe with the theme ‘Fundamental Rights and Copyright in the European Multi-Layer Legal System’.
  • Chinese Intellectual Property Agency punished for malicious Corona-Related Trademark Filings.
  • Trump tries to gain exclusive access to German CureVac’s Coronavirus vaccine.

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