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SpicyIP Weekly Review (April 20 – 26)


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

Topical Highlight

Namratha wrote about Cancer Patients Aid Association’s (‘CPAA’) call for revocation of Gilead’s Remdesivir, a drug being tested as a probable cure for COVID-19. She states that Remdesivir was granted a patent in India in February 2020, and that it has been touted as ‘essential’ for treatment of COVID-19 patients suffering from other serious health conditions simultaneously. She further notes that CPAA’s plea maintains that Remdesivir is hit by section 3(d) of the Patents Act and that its claims are obvious to a person skilled in the art. She examines the grounds of revocation put forth in CPAA’s letter, and observes that the claims in the letter lack the backing of expert evidence. Giving an overview of revocation of patents in public interest, she states that the setting is ideal in light of the COVID-19 pandemic, for the government to exercise its executive powers. However, she warns that such a move may spark off retaliation from India’s trading partners.

Thematic Highlight

I wrote a post discussing the conundrum surrounding the classification of the offence under section 63 of the Copyright Act as cognizable or not. I begin with highlighting the protracted nature of the debate concerning the classification of the offence contained in section 63. I emphasize upon the fact that the Delhi HC has found a solution through its reliance upon the Supreme Court’s decision, but that such an approach lacks sound legal reasoning. Subsequently, I refer to the recent decision of the Rajasthan HC in Nathu Ram v. State of Rajasthan, where the HC observed that the matter of classification required to be determined by a larger bench. I link this discussion on the classification of the offence to its implications on freedom of speech and expression. Accordingly, I state that the classification of the offence under section 63 as ‘cognizable’ would grant unbridled powers to the police, while also preventing creative endeavours from being undertaken due to the fear of an arrest.

Other Posts

The last week saw Prashant and Arun continue their debate on whether IPAB needs to be shut down. In Prashant’s rejoinder to Arun’s counter, he notes that the former Chairperson of the IPAB, Justice Prabha Sridevan along with first generation IP lawyers and IP lawyers from Bombay support the move to shut down the IPAB and transfer its functions back to the High Courts. He contends that Arun avoided engaging with a number of issues previously raised on the blog regarding the ‘quality of appointments’ to the IPAB. He further points out cases where the IPAB arrived at faulty decisions. With respect to Arun’s point concerning Justice Manmohan Singh, Prashant notes that he has, on many occasions in the past, criticized his faulty legal reasoning on the blog. Subsequently, he observes that the infrastructure at the IPAB has been stagnant, in spite of promises of improvement. Finally, he notes that shutting down of the IPAB and transferring its functions back to the HCs is prudent as: first, the HC does not have ‘technical members’, and second, it will not be non-functional for long periods of time.

Arun begins his reply to Prashant’s rejoinder by stating that in a recent interview by Justice Prabha Sridevan, she emphasized upon the importance of the IPAB as a tribunal. He notes that Prashant’s argument on certain lawyers being in favour of scrapping the IPAB is ‘unsubstantiated and unnamed’. Arun does not agree with transferring matters pending before the IPAB back to the HCs due to the existing burden on them and the delay involved in disposing cases. He further suggests that a moving roster of judges and members as has been successfully implemented at the NCLT, can be created for the IPAB as well. Subsequently, he notes that scrapping of the IPAB will give rise to new issues, as the existing statutory regime as well as numerous decisions of the Supreme Court are predicated on the existence of IPAB. Moreover, he also expresses concerns that district courts, which are the natural forums for IP disputes, may be ill-equipped to deal with IP matters for want of specialized knowledge.

Through an insightful post, Justice Prabha Sridevan opines that IP jurisdiction should be firmly restored to the High Courts. She states that the IPAB was never meant to be empowered, and notes the delay in its appointments and inadequate infrastructure as a testament to the same. Further, she observes that IP is intertwined with the concept of ‘public interest’, and accordingly favours the reversion of IPAB matters to constitutional courts. She states that all the functions of the IPAB can be smoothly and efficiently subsumed by the HCs. Referring to the COVID-19 crisis, Justice Sridevan argues that the duty in respect of IP rights should be ‘solely’ vested with HCs and not with the IPAB, which sits irregularly.

Latha examined whether the Trade Marks Act permits sub-licensing of trademarks. She observes that sub-licensing is not permitted under the Act for various reasons. First, the reading of provisions related to ‘permitted use’, namely, sections 2(1)(r) and 49 indicate that the permitted use agreements are by the proprietor in writing to the user, thereby barring the licensee from entering into agreements to further license such rights. Second, she notes that the Act mandates quality control to be exercised by the proprietor alone, which again bars a licensee from sub-licensing. Third, she notes that section 54 of the Act explicitly prevents a registered user from further licensing or transmitting the mark. Fourth, she notes that section 48(2) of the Act concerning permitted use does not envisage sub-licensing of the mark. She notes that the Act does not envisage an exclusive license in respect of trademarks, before concluding that India may be one of the few countries which does not provide for sub-licensing of marks.

Adarsh wrote a post on the US Supreme Court’s decision in Frederick L Allen v. Roy A. Cooper, III, Gov of North Carolina. Through the judgment, the Court held that a State was immune from claims of copyright infringement on the principle of sovereign immunity. He notes that in spite of an explicit provision stripping the State’s immunity in respect of copyright infringements, the SC relied upon a precedent which held a similarly-worded law to be invalid as it abrogated sovereign immunity of the States. He further points out that the SC did not accept the argument based on the ‘due process’ clause, as it considered States to be victims of an ‘honest misunderstanding’, and not guilty of ‘wilful infringement’ of copyright. He concludes by pointing out the potential violation of US’s international obligations under the TRIPS Agreement, as it does not offer a blanket immunity from copyright infringement to governments or any of its instrumentalities.

On the occasion of the World IP Day, Balu wrote about realizing the potential of the fair use provisions in supporting creativity and innovation through reference to section 52(1)(j) of the Copyright Act. First, he notes the wide ambit of section 52(1)(j), clarifying the permissible activities and the audience covered by it in respect of film screenings by educational institutions. Second, he states that section 52(1)(j), similar to its American counterpart does not provide immunity against piracy, and further notes the narrower scope of the fair use provision concerning educational activities under the American law. Third, he emphasizes upon the wide scope of section 52(1)(j), and claims that it may even extend to online teaching.

SpicyIP Announcements

We informed the readers about Sagacious IP’s virtual conference on ‘How MSMEs can Innovate and Lead into a Green Future’. The Conference is scheduled to be held tomorrow (April 28, 2020) between 2 PM to 5 PM IST. Further information on the issues to be addressed by the speakers, the roster of speakers and the process for registration (which is free) is mentioned in the post.

Other Developments

India

Judgments

Jai Bhagwan Gupta v. Registrar of Trade Marks and Others – Delhi High Court [March 3, 2020]

The Petitioner had registered marks ‘JEERA PUJARI’ and ‘JAI PUJARI BRAND’ in respect of jeera and sauff since 1980. In spite of its registrations, the Petitioner noted that the Registrar of Trademarks was advertising various trademarks consisting of the word ‘PUJARI’. The Court set out the relevant provisions in respect of application and acceptance of trademarks, and noted that in recent times all trademarks were being advertised before acceptance without examining if they were fit for registration. The Court also stated that an order was required to be passed recording the reason for the acceptance of a trademark. Accordingly, the Court directed the Registrar of Trademarks to ensure that an order is passed in respect of marks which proceed to advertisement, and that such acceptance of marks should not be without the application of mind.

Creative Travel India Private Limited v. Creative Tours and Travels and Another – Delhi High Court [April 21, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s mark ‘CREATIVE TRAVEL’ by using a deceptively similar mark ‘CREATIVE TRAVEL AND TOURS’ in respect of the travel industry. The Court granted an ex-parte interim injunction in favour of the Plaintiff, which was subsequently vacated. In the meantime, the IPAB ordered Defendant No. 1’s registration of the mark ‘CREATIVE TRAVEL AND TOURS’ to be expunged. The Court noted that the mark of Defendant No. 1 continued to be on the Register of Trade Marks only because of the interim order of the Bombay High Court which stayed the IPAB’s order. The Court observed that Defendant No. 1’s name resembled the Plaintiff company’s name, and both provided identical services. Moreover, the Court observed that confusion between the marks was implicit as the ‘prominent and distinguishing’ parts of both the names was ‘CREATIVE’. Rejecting the Defendants’ plea that the word ‘CREATIVE’ is generic, the Court noted that Defendant No. 1 had itself registered the mark and could not adopt such a plea. Regardless, the Court noted that the adoption of the mark ‘CREATIVE’ in respect of travel and tourism would not be generic to the trade. Considering Defendant No. 1’s appeal to the Supreme Court against the IPAB’s order, the Court noted that in case the appeal succeeds, the Plaintiff would be eligible to the reliefs on the grounds of infringement and passing off, and otherwise, only the ground of passing off. The Court also noted that a case of delay in bringing forth the action could not be made out against the Plaintiff, as the Defendants had failed to prove knowledge on the part of the Plaintiff. In light of the Plaintiff’s stance, the Court noted that its decree would not serve as a hindrance for the Defendant No. 1 to change its name to ‘CREATIVE ENTERPRISES’.

Reckitt Benckiser (India) Private Limited v. Hindustan Unilever Limited – Delhi High Court [April 22, 2020]

The dispute between the Parties arose on account of the Defendant’s advertisement for its mark “LIFEBUOY” which was allegedly disparaging and injurious to the goodwill and reputation of the Plaintiff’s mark “DETTOL”. The Court noted that the Defendant’s advertisement in respect of which allegations were made was last aired in 2018. The Court stated that there were previous orders of the Calcutta High Court which had restrained the Defendant from comparing its product with that of the Plaintiff. With respect to the Defendant’s argument that in a previous decision the Court had held differently from the decisions of the Calcutta HC, the Court observed that there was nothing in its previous order to effect such a reading. Moreover, the Court observed that the Plaintiff had made out a prima facie case of disparagement, as the Defendant’s advertisement was motivated by malice. Accordingly, the Court granted an interim injunction restraining the Defendant from airing the advertisement till the final decision in the suit.

News

  • The Patent Office, Delhi directs all officers of the rank of Deputy Controller and above to attend office on all working days.
  • Anna University files patent for its enhanced sanitizer which claims to eliminate not only the outer envelope of the Coronavirus, but also its genetic material.
  • Indian pharmaceutical companies, namely Cipla, Glenmark and Dr. Reddy’s Laboratories reported to have apparently started working on the development of Gilead’s patented drug Remdesivir, considering its promising results in trials.
  • Publishers of Assamese classics warn members of the public of copyright infringement action for transmitting unauthorized PDF versions of the books.
  • A report by NASSCOM states that 1338 patents were filed by India-domiciled companies in the US in 2018-19.
  • Justice Pratibha Singh of the Delhi HC, in a piece in the Times of India, argues for the creation of a public platform of all stakeholders to share their research and communicate, in addition to facilitating filing of patents and providing information concerning on-going research in the field.

International

  • US grants a patent to Israeli Professor, Jonathan Gershoni’s technology which aims to strengthen the human immune system to block the Coronavirus.
  • Knowledge Transfer Ireland announces a dedicated COVID-19 non-exclusive, royalty-free licence in order to aid national response to the COVID-19 pandemic.
  • Amazon, IBM, Microsoft and Sandia National Laboratories join the ‘Open COVID Pledge’ by making their patents freely available for the fight against COVID-19. We have reported on the Open COVID Pledge here.
  • New York photographer Steve Sands sues Jennifer Lopez for copyright infringement over use of her own photograph on Instagram, without taking any permission or paying any compensation.
  • Cyprus regains its UK certification trade mark rights for its famous cheese, ‘halloumi’ following an administrative fault which caused the loss of those rights.
  • A piece in Bloomberg Law argues that the COVID-19 pandemic has called for a focus on voluntary methods of sharing intellectual property.
  • A piece in Qrius argues that the moral underpinnings of IP rights should be honoured in light of the COVID-19 pandemic, and companies should forfeit their patent rights in favour of public interest.
  • A piece in JDSupra argues for a new approach to be adopted by courts to grant patent damages for “public interest infringement” while developing products to fight COVID-19.

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