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SpicyIP Weekly Review (March 30 – April 5)


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

Topical Highlights

Divij wrote on the voluntary initiatives undertaken across the world for facilitating improved access to COVID-19 related IP. First, he provides insight into the ‘Open Covid Pledge’, which aims to grant a ‘royalty-free patent licence’ for any entity to adopt, in order to end or minimize the impact of COVID-19. However, he notes the uncertainty surrounding the position of licensed IP incorporated into products, as the grant of such licence is time-limited. Second, he covers Costa Rica’s proposal for a pool of IP to help in the battle against COVID-19. He notes that the proposed IP pool has a broader coverage than similar patent pools, as it intends to cover copyrights and regulatory data. Third, he notes that the Chief Scientific Advisors of 13 countries have requested publishers to provide access to scientific research published by them. In conclusion, he states that public health and scientific research are highly dependent on patent monopolies and research of commercial firms, and the same should be realized soon.

I wrote on the trademark related issues thrown up in light of the COVID-19 pandemic. In relation to the registration of ‘Coronavirus’ and ‘COVID-19’ related marks, I note that they are most likely to be refused as first, they carry a high potential to deceive the public by misrepresenting the characteristics of goods and services, and second that most marks are descriptive in nature. Further, I note the attempt of companies to rake in profits in light of the pandemic by covering the specific cases of ‘sanitizers’ and ‘food supplements’. Dealing with already registered marks, I discuss that there would be no question of trademark dilution in light of the precedents. I further note that cancellation of marks on the ground of loss of distinctiveness or potential to deceive appears far-fetched. Finally, I note that companies may re-brand themselves in light of their association with a pandemic, and conclude in the hope that indiscriminate filing of trademarks will stop.

Thematic Highlights                                                                        

Prashant wrote on the decision of the Government of India (‘government’) to axe royalties to be paid by Indian seed companies to Bayer under IP licensing agreements. He explains that this decision controls not only the retail price of cotton seeds, but also “trait fees” which cover ‘fee for patented technology, “know-how” and other services.’ He notes that though the ‘trait fees’ have consistently fallen over the past three years, its benefit has not been passed on to the farmers. Further, he suggests that the government’s decision may lead to more restrictive IP licensing agreements in the future. Analysing the government’s decision from a trade perspective, he notes the effect of suspension of U.S.’s GSP trading privileges on Indian industries. He concludes by noting that a trade-off should ideally be between farmer incomes and incentivizing companies like Bayer to make their technologies available in India, rather than between profits of Indian seed companies and profits of MNCs.

This was followed by Prof. Ragavan’s post, where she examined the legality of suspension of GSP trading privileges by the U.S. She notes that the GSP program envisages a ‘non-reciprocal’ basis of preferential trade treatment to developing countries. She further states that the purpose of GSP was to promote the participation of the developing countries. She notes that the GSP benefits cannot be unilaterally withdrawn by countries, unless they ‘positively and beneficially’ promote the needs of a developing country. Subsequently, she clarifies that any withdrawal that cannot be termed a ‘benefit’ to a developing country being affected (India), and aimed at it as a sanction would be a violation of the WTO’s Appellate Body precedent. Contextualizing the discussion, she notes that it is highly unlikely that Bayer will bring a dispute on the suspension of royalties against India using the U.S. or that the USTR will detrimentally move against India affecting ‘food’ or medicines, given the situation of COVID-19 worldwide.

In a quick response to Prof. Ragavan, Prashant notes that his point concerned only the Bt technology owned by Bayer, and not food crops. He further clarifies that the invocation of the Essential Commodity Act, 1955 by the government is not linked to IP, and this is the first time that the government has used it in respect of licensing fees for IP. With respect to the suspension of GSP benefits, he notes two decisions taken by the Trump administration which purely pertain to trade law. Rebutting Prof. Ragavan’s argument on unilateral withdrawal of GSP benefits, he notes that developed countries have the freedom to selectively apply their GSP programs. He concludes by that trading positions will perhaps be more protectionist after the pandemic ends, and there is a possibility of retaliatory trade action by the U.S. then.

Other Posts

Namratha reported on the decision of the Bombay HC in Zee Entertainment Enterprises v. Ameya Vinod Khopkar. Through this judgment, the Court refused to grant an ad-interim injunction restraining the Defendants from making a sequel of the film ‘De Dhakka.’ Namratha states that the parties relied upon the deed of assignment entered into between them to claim that the other party did not have a right over future works in relation to the film. She further notes that the Judge concluded that there was no prima facie case in favour of the Plaintiffs as, first, the words ‘sequel rights’ did not appear in the assignment deed; second, the deed was only meant to transfer ‘negative rights’ in the film; and third, the sequel had completely different script, dialogues, concept etc. Examining the assignment deed, Namratha points out that its language is highly vague, and could not be extended to cover ‘prequels’ or ‘sequels’, as they were not explicitly mentioned therein.

Latha discussed whether the Indian Copyright Act permits sub-licensing by a licensee. She notes the manner in which a valid licence may be granted under the Act. Furthermore, she observes that a licensee cannot justify sub-licensing by stating that she acts as an agent of the licensor as, first, a licensee cannot represent a licensor in contrast to an agent who represents the principal, and second, sections 19(1) and 30 of the Act do not grant any sub-licensing rights to the licensee. However, she notes that an exclusive licensee under the Act may sub-license, but only when there is an express clause granting such rights to it under the licensing agreement.

Raunaq Kamath from Ira Law discussed the discrepancy in registration and subsequent enforcement of generic words as domain names and trademarks. He throws light upon the internet.in domain name dispute in India to conclude that generic domain names are susceptible to cancellation, unless the registrant can demonstrate acquired distinctiveness in its favour. Subsequently, he refers to the ongoing dispute in the case of United States Patent and Trademark Office v. Booking.com in the U.S. concerning the registration of the trademark ‘booking.com’. He points out that though India has been open to grant trademark registrations to generic domain names, courts often do not see the merit in the enforcement of such generic marks in contentious proceedings. He cites the court decisions in relation to various domain names to substantiate his point. In conclusion, he wonders if the mark ‘booking.com’ if granted registration in the U.S. will be enforced in the future.

Aditya Gupta from Ira Law covered the decision of the Delhi HC in the case of Prof. Dr. Claudio De Simone v. Actial Farmaceutica SRL, where the Single Judge held that the same innovation cannot enjoy both trade secret and patent protection. Aditya observes that the decision on the type of protection (patent or trade secret) may involve consideration of various factors namely, the ease of reverse engineering that technology and its pace of development. Subsequently, he points out that ‘sophisticated patentees’ invoke a ‘layered protection model’ for different aspects of their invention. In relation to the decision, he notes that the Court’s holding regarding unpatented know-how being in the public domain is incorrect. He argues that a better course of action would have been for the Court to examine if the aspects of technology claimed as know-how were actually disclosed to the public. He concludes by noting that regardless of the possible flaws in the Court’s analysis, he does not suggest that the Plaintiffs should have succeeded.

SpicyIP Announcements

We informed you about ‘PatSeer’s Hackathon to beat COVID-19’, an initiative aimed at aiding researchers in their ongoing research on medical devices, vaccines or drugs to combat COVID-19. More details regarding the questions which can be asked and the working of the Hackathon can be sought from the post.

Other Developments

India

  • Dr. Kumar Vishwas sues Zomato India and Radio City alleging copyright infringement of his copyrighted poem “Koi Dewana Kehta Hai”.
  • Badshah and Jacqueline Fernandez’s latest music single ‘Genda Phool’ faces copyright infringement allegations. Boroloker Bitilo, the singer of the Bengali folk song is reported to not have the financial means to initiate proceedings in a court.
  • A piece in Business Today discusses if intellectual property will be a hurdle in India’s fight against COVID-19.
  • BHU researchers apply for a patent for a new COVID-19 test kit.

World

  • Online teaching during pandemic raises copyright concerns in US.
  • A piece on Patentology argues that it is unlikely that the Australian government will invoke crown use provisions in light of the COVID-19 crisis.
  • A piece in the IPWatchDog discusses that while innovators rush to solve the COVID-19 pandemic, countries contemplate the grant of compulsory licenses.
  • A piece in the PatentlyO argues that the CARES Act which gives the USPTO Director the power to extend certain deadlines does not cover original filing deadlines, PCT filing deadlines, non-provisional application deadlines and deadlines for inter parties review petition.
  • A piece in Law360 argues a situation in which the U.S. government allows patent infringement for developing and manufacturing COVID-19 drugs.
  • A piece in the Stat argues that invocation of Bayh-Dole may be needed to get affordable COVID-19 treatment.
  • A piece in the International Policy Digest covers various developments taken place in science and technology in order to mitigate COVID-19.
  • South Korea: GemVax and Kael expands GV1001 patent to cover COVID-19.
  • R-Pharm files a patent application for an innovative treatment for COVID-19.
  • S7 LLC, a developer and manufacturer of diagnostic tests announces a pending patent for a rapid COVID-19 test.
  • VBI Vaccines joins the global hunt for the Coronavirus vaccine adopting a pan-Coronavirus approach.
  • Health Canada authorizes N8 Medical patent for an endotracheal tube to fight COVID-19.
  • Tran and Associates donates patent services for innovative inventions to stop COVID-19.
  • Activision wins first amendment-trademark case to depict Humvees in Call of Duty.
  • Japan’s Sharp sues Tesla for patent infringement over network gear.
  • Amazon wins EU court battle in trade mark dispute with cosmetics firm, Coty.
  • Music companies threaten to sue TikTok over copyright infringement.
  • Amarin Corp. loses patent lawsuit on its primary heart drug, Vascepa on the ground that its claims are “obvious”.

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