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SpicyIP Weekly Review (May 4 – 10)


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

In a guest post, Nikhil Purohit wrote about the decision of BMW AG v. Om Balajee Automobile (India), wherein the Delhi HC granted an interim injunction restraining the defendant from using the mark ‘DMW’. Beginning with the Court’s analysis on deceptive similarity, Nikhil notes that the Court failed to acknowledge the obvious differences in the parties’ logos. He further observes that the Court failed to correctly apply the principles laid down in the SC’s decision of Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation, by omitting analysis on the various factors laid down in the case. Subsequently, he notes that the Court failed to adequately address the grounds related to dilution of a mark under section 29(4) of the Act. He states that the Court conveniently concluded that the defendant’s use of the mark was with an intent to encash upon the goodwill of the plaintiff and to its detriment, without relying upon any evidence.

Latha responded to Kapil’s counter by noting, first that while the 1938 UK trademark statute from where India borrowed the term ‘permitted use’ has remained unchanged in India, the UK trademark statute has not only been amended to use the term ‘license’, but also provides for sub-licensing option under section 28(4) of their 1994 Act. She argues that this legislative history is important while debating this issue. Second, she relies on a Delhi HC ruling to note that user by a sub-licensee is explicitly rejected in India. Further, she states that the inclusion of section 2(1)(r)(ii) of the Act was solely to recognize the validity of unrecorded licenses and that the same could not be extended to interpret permissibility of sub-licensing. Third, she observes that the Act requires a connection in the course of trade to be established between the proprietor and the licensee. Rebutting Kapil’s point that ‘quality control’ can be outsourced, she argues that such licensing would amount to trafficking in the mark. Fourth, she accepts that unregistered marks can be licensed, but disagrees with Kapil’s argument on the permissibility of sub-licensing on the basis of the three aforementioned points.

Prashant and Rahul shared a petition drafted by them, requesting the government to consider scrapping the IPAB and transferring its functions back to the commercial courts and HCs. Through the draft petition, Prashant and Rahul highlight the various issues which have plagued the IPAB since its inception, and suggest that transferring the IPAB’s functions back to commercial courts would desirably address such problems. This draft of the petition is open to comments and endorsements from readers, who may reach Prashant at preddy85[at]gmail.com. Prashant and Rahul intend to send the petition to the Ministry of Commerce today.

Other Developments

India

  • The CGPTDM issues a public notice extending the due dates at all IP offices to May 18, 2020.
  • The IPAB announces that its Chairman will physically attend office with 100% attendance, while the remaining officers shall work at 33% strength. Through his address to the legal fraternity, Justice Manmohan Singh assures that IPAB will remain functional.
  • Delhi HC restrains a New York-based corporation from proceeding further with a domain name suit against Hindustan Times.
  • Gilead confirms that it is in negotiations with domestic pharmaceutical companies to manufacture Remdesivir.
  • A piece in ETNow News outlines the various forms of compulsory licenses which may be evoked to make treatments to COVID-19 available in India, and further notes that patent-holding companies may even enter into licensing mechanisms with Indian companies.
  • A piece in the Financial Express argues that COVID-19 has exposed problems in the Indian pharmaceutical sector from its heightened reliance on Chinese APIs.

International

  • Ennaid Therapeutics files for patent for a drug which seeks to block the two proteins which cause COVID-19 from invading healthy host cells.
  • Israeli research team intends to file a patent for an antibody which attacks the coronavirus and neutralizes the body.
  • Polyrizon Limited files a patent application in the US for an innovative technology which prevents the intrusion of the coronavirus through upper airways and eye cavities of persons.
  • Gilead plans on expanding production of Remdesivir by entering into collaborations with pharmaceutical companies around the world.
  • Gilead may face compulsory licensing despite its plan to collaborate with domestic companies in the US.
  • The USPTO announces a new program through which patent applications of small businesses working towards coronavirus-related drugs will be fast tracked.
  • A piece in the Livemint argues that Least Developed Countries can make Remdesivir accessible to their populations by ignoring Gilead’s patent over it.
  • A piece in The IPKat argues that the private use exception, necessity exception or compulsory license may be invoked as exceptions to liability for patent infringement in Italy.
  • A piece in Rwanda Today argues that access to the COVID-19 vaccine, when invented will be highly restricted for poor and less knowledgeable communities.
  • A piece in the National Law Journal contemplates the various problems that may be encountered with conducting virtual patent infringement trials in the US.

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