SpicyIP Weekly Review (May 18 – 24)

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

Topical Highlight

The Delhi High Court and an Anti-Suit Injunction – Part I & II

In a two-part post, Mathews wrote about the Delhi HC’s recent decision in HT Media Ltd. v. Brainlink Int., wherein it granted an interim injunction restraining a New York-based corporation from using the domain name ‘www.hindustan.com’ and proceeding with this suit or filing a related suit before any court. In Part I, he highlights the contention between the parties to the suit, before noting that the Plaintiff sought an injunction against the proceeding filed by the Defendant before a US District Court. He notes that the Court held that the Defendant was engaged in cyber-squatting, and further found it amenable to its jurisdiction based on the ‘effects doctrine’.

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In the second part of the post, Mathews discussed his reasons for disagreement with the judgment of the Delhi HC. First, he states that the judgment is contradictory to the ‘evidentiary threshold’ laid down by the SC. Second, he observes that the Plaintiff’s mark ‘Hindustan’ is weak as it has become ‘publici juris’ and cannot be exclusively claimed. Third, he notes that the application of the ‘overall impression test’ is limited, as the Defendant’s mark is a domain name. Fourth, he states that the Defendant is also entitled to invoke the jurisdiction of the US courts through the ‘effects doctrine’. Highlighting further examples of anti-suit injunctions and their repercussions, he states that it is uncommon for courts to cede their jurisdiction. Accordingly, he observes that the Delhi HC should have been cautious with the grant of the anti-suit injunction. In conclusion, he notes that the appropriate remedy in such cases of cyber-squatting lies through the UDRP route.

Thematic Highlight

Fact Checking the Fact Check: Is Circulation of Free E-Newspapers Permitted under Copyright Law?

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In a pertinent post in the COVID-19 times, Balu wrote about the legality of downloading and circulating of PDFs of newspapers. He divides e-papers into two categories, first, which come with a user agreement and second, which do not. Giving the specific example of ‘The Hindu’, he observes that ‘terms of use’ may prevent sharing of entire newspapers. However, he states that the Copyright Act permits sharing of individual articles from such newspapers. Subsequently, he gives examples of newspapers which do not have a specific ‘terms of use’ clause attached to them. In such case, he argues that one may construe the presence of an implied license to freely download and circulate the paper. Delving into the scope and application of implied license to e-papers, he observes that a definite determination cannot be arrived at as circulation of complete e-papers cannot be considered a normal use, but the absence of user agreements for certain e-papers may be construed to permit their free download and circulation.

Other Posts

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Submission Guidelines for the Shamnad Basheer Essay Competition on Intellectual Property Law

Having announced the Shamnad Basheer Essay Competition on IP Law on the occasion of Prof. Basheer’s birth anniversary, we received several queries concerning the format of the competition. We answered a few common questions, the responses to which can be viewed here. In case of further queries, do not hesitate to write to us at [email protected].

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EBA’s Recent Ruling on Patentability of Plants and Animals : Any Impact on India?

Adarsh covered the decision of the Enlarged Board of Appeal through which it approved Rule 28(2), which provides that products obtained exclusively by essentially biological processes are not patentable. He opines that the ruling comes in light of the various EU Member States’ approval of Rule 28(2) through its inclusion in their domestic laws. He further notes that the ruling does not have any impact in India due to differences in the statutory languages of the EU and India, and delineates through a lucid table the patentability criteria in the EU as influenced by the case discussed.

Other Developments

Decisions from Indian Courts

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Delhi HC grants an interim injunction against Zydus Wellness’ prima facie disparaging advertisement [May 14, 2020]

In Horlicks Ltd. & Anr. v. Zydus Wellness Products Ltd., the Delhi HC restrained the Defendant from airing its prima facie disparaging advertisement till the disposal of the suit. The dispute between the Parties arose on account of the Defendant’s advertisement for its mark “COMPLAN” which was allegedly disparaging and injurious to the goodwill and reputation of the Plaintiffs’ mark “HORLICKS”. The Court noted that the Parties had a litigation history, wherein the impugned advertisement over television was previously made over print media. In that case, the Defendant agreed to publish a revised advertisement, which clearly noted that the comparison of the protein quantity was based on the serve size recommended by the Parties. However, the Plaintiffs stated that in the short 6 second advertisement over television, the Defendant did not run such a disclaimer concerning the basis of comparison. In the absence of such a disclaimer, the Court observed that the Defendant’s advertisement would be prima facie disparaging in nature.

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Bombay HC refuses an interim injunction to the Plaintiff and permits release of the web series ‘BETAAL’ [May 22, 2020]

In Sameer Wadekar & Anr. v. Netflix Entertainment Services Pvt. Ltd., the Bombay HC refused to grant an interim injunction, thereby not restraining the Defendant from releasing the web series ‘BETAAL’. The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s copyright in his script titled ‘VETAAL’, through its adaptation in a web series to be released on the Defendant’s platform as ‘BETAAL’. The Court noted that the Plaintiff had failed to establish a link to indicate that his script was copied. Moreover, the Court observed that the Plaintiff should have been aware of the Defendant’s web series, as it was advertised on numerous occasions before the release of the trailer. The Court also noted that it is common knowledge that ‘Vetaal’, a Hindu mythological character is associated with super natural powers. Accordingly, the Court refused to grant an interim injunction in favour of the Plaintiff.

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Other News from around the Country

  • SC seeks Government’s response to whether the publication of bare Acts by private parties violates its copyright.
  • IP Office extends timelines under the IP Acts and Rules administered by it to June 1. Copyright Office also extends deadlines under the Copyright Act and Rules for a duration of 15 days after the lockdown is lifted.
  • Patent Office issues a public notice concerning submission of documents for a petition filed under Rule 6(6) of the Patent Rules.
  • Patent Office issues a public notice regarding the postponement of the patent agent examination until further notice.
  • India urges countries to use the flexibilities contained within the TRIPS Agreement to ensure access to treatments during the COVID-19 pandemic.
  • ISRO receives a patent over its process to manufacture lunar soil simulant, which is used to test rovers and study the properties of lunar soil.
  • Tripura University’s assistant professor to file a patent for a robot believed to be effective in the fight against COVID-19.
  • A piece in The Wire argues that the coronavirus pandemic has the potential to bring about a change in the understanding and application of IP law.
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News from around the World

  • More than 130 countries at the World Health Assembly adopt a resolution to fight the COVID-19 pandemic collectively by ensuring access and distribution of health technologies.
  • WHO and Costa Rica announce the progress of their technology pooling platform which shall ensure access to COVID-19 treatments.
  • University of Valencia files a patent application for a COVID-19 vaccine which is based on the SARS-CoV-2 protein.
  • NellOne Therapeutics Inc. files for a patent for a COVID-19 treatment aimed at curing viral respiratory infections.
  • US rejects clauses pertaining to intellectual property in the EU-backed resolution on the global handling of the COVID-19 pandemic.
  • US Copyright Office notes in its Report that the prevalent safe harbour system in the US in ‘unbalanced’ and ‘out of sync with Congress’ original intent’.
  • US and UK object to a global patent pool for COVID-19 drugs at the recently concluded World Health Assembly.
  • A piece in The Guardian argues that the widening of the patent eligibility criteria in the US during the COVID-19 pandemic will sound a disaster for public health.
  • A piece in IPWatchdog argues that the patent mechanism for access to life-saving medicines during the COVID-19 pandemic will differ in the US and EU, considering their diverging views on compulsory licensing. 

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).


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