Copyright Others Patent Trademark

SpicyIP Weekly Review (July 20 – 26)


Topical Highlight

Does JioMeet’s GUI Infringe Copyright in Zoom’s Software?

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Nikhil wrote about the controversy of JioMeet’s GUI infringing Zoom’s software. Addressing the controversy that ensued after JioMeet was released, the issue of non-literal copying of computer software is examined. Nikhil explores the primary considerations that courts would need to address on the issue and the possible outcomes. First, the copyrightability of Zoom’s GUI is analyzed under Section 2(o) and Section 2(ffc) of the Copyright Act. Then, the particular elements of Zoom’s GUI and its copyrightability are discussed. Next, Nikhil analyzes the substantial similarity between JioMeet and Zoom’s GUI to check if the ‘manner and arrangement’ and the ‘expression’ of Zoom’s GUI can be given protection. In conclusion, it is noted that Zoom has a strong claim to prove infringement should it consider taking the matter to court.

Thematic Highlight

IDMA Sues the Central Government over ‘Missing’ Technical Member for Patent Cases at the IPAB

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Prashant wrote about the Indian Drug Manufacturer’s Association (IDMA) suing the Central Government over the missing technical member for patent matters on the Intellectual Property Appellate Board (IPAB). The petition filed by IDMA comes a year after the Mylan case in which the Delhi HC passed an order that allowed the Technical Member for Plant Varieties to hear patent-related matters in lieu of a Technical Member for Patents who was yet to be appointed. The Delhi HC order which goes completely against the statutory scheme of the law is now being challenged. It is noted that the counsel for the Central Government stated that a Technical Member for Patents was appointed (read the order here) and the same was notified on 21st July 2020. The notification is not available and there is no update regarding the same on the IPAB website. However, this tweet indicates that B.P. Singh has been appointed as Technical Member for Patents, Copyright and Trade Marks.

Other Posts

Solutionism, Social Innovation and IP

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Swaraj wrote on the idea of technology-solutionism, a side effect of assuming the IP System to be a proxy for innovation. Technology-solutionism has led to the common understanding that solutions to all our problems will be technological and incentivized through the marketplace, and gives the Copyright and Patent systems a large role to play in the same. Writing about grassroots innovations and social innovation, Swaraj notes that there is very little diversity in background and life-perspective of those who are ‘incentivised’ by the formal IP system. This has led to the reproduction of an unfair system due to which a lot of brilliance that is found in the informal economy is lost out. The focus of the IP system on only innovation rather than progress is then critiqued. Then the very interesting idea of the difference between regular innovations and social innovations is discussed. It is noted that social innovations and re-examining the innovation and incentive systems are a good place to start to think about increasing inequality in the world and the post is concluded with a reading list on the same, which can be accessed here.

Onerous Copyright Licensing, Fair Dealing and Alternatives to TikTok

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Anupriya wrote on the copyright obstacles that a comparable Indian substitute for TikTok would have to face post the Indian Government’s ban on the app. First covering the three types of licenses – synchronization licenses, publishing rights, and mechanical rights – that a platform similar to Tiktok would require, it is noted that given the vast resources required for the same, only big market players may be able to enter the fray. Discussing transformative use, the fair dealing possibilities for such an app is analyzed to state how the newly created content can be understood as transformative review. Noting the impact of the same on free speech, Anupriya argues that one of the goals of the fair dealing provisions under Section 52 of the Copyright Act is to realize the right to freedom of speech and expression under Article 19(1)(a) and to increase cultural production. In conclusion, it is stated that Tiktok as a platform has been successful in diversifying the creation and dissemination of creative content and the search for an alternative should not have to face onerous licensing requirements.

Reengineering of the Requirement of Disclosure of Foreign Applications by the 2019 Patent Manual

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In a guest post, Shivam Kaushik wrote on the impact and legality of the guiding principles regarding the requirement of disclosure of foreign patent applications, as introduced by the 2019 version of the Manual of Patent Office Practice and Procedure. Shivam notes that the 3rd version of the Manual stealthily dilutes the requirement of disclosure of information regarding foreign applications provided under Section 8 of the Patents Act, 1970, and Rule 12 of the Patents Rules, 2003. After an explanation of how these two provisions are to be read together, the mandatory nature of the disclosure requirement is emphasized. With WIPO’s Digital Access Service (DAS) and Centralized Access to Search and Examination (CASE) system being made available to the Indian Patent Office, the latest Manual lays down certain ‘guiding principles’ regarding the requirement under Section 8 and this makes a digression from the procedure prescribed in the statute. Questioning the legality of these ‘guiding principles’, Shivam examines if the Manual can modify a parliamentary Act/ executive Rules prescribed in the Patents Act and Rules. In conclusion, it is stated that the Manual does not have the legal backing to effectuate the change to accommodate DAS and CASE and thus is working outside the framework of the statute law.

Virtual Reality, Augmented Reality and Trademark Law: How Freely Can Imagination Run?

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In a guest post, Bhavya Solanki and Medha Bhatt wrote on the applicability of the fair use provisions of trademark law to the unauthorized use of trademarks in the virtual world. With the increase in use of technologies like Virtual Reality (VR) and Augmented Reality (AR) that highly resemble the real world, there is also an increase in mimicking trademarks owned by proprietors in the real world. Focusing on the fair use provisions of the Trade Marks Act under Section 30(2)(a) and 30(2)(d) that permit third party use, the principles of descriptive and nominative fair use is analyzed. Noting that the Indian trademark law jurisprudence on the subject is underdeveloped, US judicial pronouncements on video games are discussed to outline the ‘use in commerce’ threshold for claims of infringement to succeed. Lastly, the defense of free speech that protects artistic expressions from trademark claims in the US is discussed. In conclusion, it is noted that even though the Indian jurisprudence on the matter is underdeveloped, the unauthorized usage of trademarks in the virtual world can be insulated by invoking the sub-provisions of Section 30 of the Trade Marks Act.

The Fortunes of Indian Copyright Societies

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Prashant also wrote on the financial state of the Indian Performing Rights Societies (IPRS) and Phonographic Performance Ltd. (PPL). He had earlier written about the declining fortunes of these societies in 2018. He notes how the 2012 amendment to the Copyright Law was to turn this around as the amendment allowed composers and lyricists to assign their right to collect royalties to only copyright societies. However, the effect of the same was reflected on IPRS’ finances only in 2018-19, when its revenue almost tripled from the previous year. Noting that this increase may be due to the accounting method, the other reason for the increase is said to be because of IPRS managing to build entirely new heads (licensee fees from affiliated societies in other countries and foreign streaming services) of revenue that did not exist in the previous years. The situation of PPL, however, is not comparable with its revenues being much lesser than what it was in 2009-10. This can be attributed to PPL not being recognized as a copyright society and some of the largest music labels preferring to work outside its purview. Lastly, the Indian Singer’s Rights Association’s (ISRA) track record is presented.

JGLS’ Panel Discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ [July 25]

We announced an online panel discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ that is being organized by the Centre for International Legal Studies at Jindal Global Law School. The panel is scheduled to be held on July 25, 2020, and is part of a series of events titled ‘International Law, Political Economy and COVID-19’. The panel discusses issues such as the adequate representation of the interests of the Global South in response to COVID-19, better recognition of indigenous and low-cost innovation systems. It is designed for law students, legal professionals, and others having an interest in international law and intellectual property rights. Further details about the panelists, the topic, and the access link can be found in the post here.

LexisNexis IP’s Live Webinar on ‘Patent Analytics: A Scientific Approach’ [August 6]

We announced LexisNexis IP’s webinar on ‘Patent Analytics: A Scientific Approach’ that is scheduled for the 6th of August 2020. The webinar will discuss analytic methodologies to give insights for R&D Strategy, Benchmarking, Portfolio Management, Licensing, Mergers, and Acquisitions and more.  The webinar will be led by Tharraniiswari Gunasekaran, LexisNexis’ IP Specialist for India & SEA region. Further details about the webinar and registration can be found in the post here.

Other Developments

Decisions from Indian Courts

IPAB stays the operation of registration for ‘FK’ trademark in infringement case [15 July 2020]

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In M/s F.K. Bearing Group Co. Ltd. v Vinod Kumar and Anr, the IPAB found in favour of the applicant who was the prior adopter of the trade mark ‘FK’ and granted a stay in the trade mark registration process of the same. The applicant (a manufacturer of bearings) claimed that they had been using a trademark ‘FK’ (converted into an artistic logo) since 1969. They dealt in several countries under that trade mark and that they were a  registered proprietor for the same in India since 2004. The respondent was earlier a distributor for the applicant, engaged in the resale of applicant’s products bearing the registered trademark. However, the respondent then managed to obtain the registration of that trade mark in 2009. The Registrar of Trademarks had failed to cite the earlier identical trade mark of the applicant at the time of registration. The Court held that the applicant was the prior user and adopter of the trade mark. Hence, the applicant made a strong prima facie case in their favour and the Court stayed the operation of the registration for trademark by the esrpondent until the rectification petition filed by the respondent is finally decided.

Delhi HC grants interim relief to Reckitt Benckiser in ‘Colin’ and ‘Harpic’ trade mark infringement suit [21 July 2020]

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In Reckitt Benckiser India Pvt Ltd vs Ms Super Shine Industries, a single-judge bench of the Delhi High Court granted an interim injunction in favour of the plaintiff in an infringement suit concerning the ‘COLIN’ and ‘HARPIC’ marks. The case of the plaintiff before the Court was that the defendant had been infringing its registered trademark “COLIN” and “HARPIC” and copying its trade dress comprising of artwork in the label and packaging of its products. The defendant, on the other hand, had claimed that it was not in the business of manufacturing and selling glass and toilet lavatory cleaners, and further that such trade dress is no longer in use. The plaintiff contended that the defendant nonetheless profited from the infringing packaging. The Court agreed that the plaintiff had succeeded in setting up a prima facie case for infringement and that the balance of convenience was also in its favour. Hence, an interim injunction was granted against the defendants.

Madras HC refuses relief in trade mark infringement case concerning the mark ‘ICAI’ [22 July 2020]

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In V. Venkata Siva Kumar vs Institute of Cost Accountants of India, a two-judge bench of the Madras High Court refused to grant relief in a trade mark infringement case concerning the mark ‘ICAI’. The appeal arose out of the case wherein, as per the petitioner, the first respondent (which is a company incorporated in the year 1944) was not entitled to use the acronym ICAI, as such usage would deceive members of the public and lead them to believe that the first respondent and the third respondent (a statutory body established under the Chartered Accountancy Act for the regulation of the profession of chartered accountancy) are the same entity. The writ petition was to restrain such use and to direct the first Respondent to change its acronym. The petition was dismissed on grounds of the Petitioner not having the locus standi to espouse the cause of the third respondent, the names of the first respondent and third respondent not being identical from the perspective of the alleged violation of the CA Act (which prohibits a person from using a name or seal identical or so nearly resembling that of the CA Institute so as to be deceiving to the public). Further, the CA Act enables prosecution only on complaint by the Council of the CA Institute or the Central Government, which the petitioner was not. It was argued by the defendants that there was an alternative remedy in the case by way of initiating proceedings under the Trade Marks Act, 1999, and such proceedings should have been initiated by the registered proprietor of the trademark alone. The Madras High Court concurred with the findings and dismissed the appeal.

Delhi HC grants interim injunction in favor of the plaintiff in ‘Black Diamond’ trade mark infringement suit [23 July 2020]

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In M/S Babu Ram Om Prakash vs Mr. Roger Aoun, a single-judge bench of the Delhi High Court restrained the defendants from using the trademark ‘BLACK DIAMOND’ or any other mark which is deceptively similar to the said mark which infringes plaintiff’s trademark and copyright as also passing off its goods as that of the plaintiff. The defendant in December 2019 filed an application for registration of the trademark ‘BLACK DIAMOND’, which was the registered trademark of the plaintiff. The defendant’s products under the ‘BLACK DIAMOND’ mark were available for online sale and the plaintiff alleged trade mark infringement. The products which the defendant was selling also related to Class-3 products which were the same as that of the plaintiff’s. The Court agreed that a prima facie case had been established by the plaintiff and balance of convenience lay in their favour and thus granted the injunction.

Delhi HC stays orders passed by Senior Examiner of Trade Marks due to inordinate delays [23 July 2020]

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In M/S Aman Engineering Works vs Registrar, Trade Marks, Trademark Registry, a single-judge bench of the Delhi High Court stayed the operation of the orders passed by the Senior Examiner of Trademark for inordinate delays. The petitioner had started using the wordmark “KRANTI” and got the registration on the same as a Partnership Firm. Subsequently, the respondent filed an application for the registration of “KRANTI” as well. Objections were raised but were not attended by the respondent. Further, another application was filed by the respondent for registration of wordmark ‘B&M KRANTI’. After an alleged delay of over 25 years from the date of the Examination Report, an application came to be preferred by the respondent for review of Registrar’s decision and after an inordinate delay of 17 years after abandoning the application relating to wordmark ‘RITE KRANTI’. On the same day, another application came to be preferred for review of the decision, after an alleged inordinate delay of 16 years after abandoning the application relating to wordmark ‘B&M KRANTI’. By the impugned orders, the Senior Examiner of Trade Marks entertained the applications for review and allowed the review applications. The Court observed that the issue of the jurisdiction of the Senior Examiner to condone delay beyond the maximum period of 60 days provided under the Rules, required consideration and is also required to be tested as to how the delay of over 16 years had been condoned and the review applications allowed. Noting that the petitioners had made out a prima facie case in its favour, the Court stayed the operation of the impugned order and its consequential effects until the next hearing.

Delhi HC grants interim injunction in herbicide patent infringement case [23 July 2020]

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In UPL Ltd v Modern Insecticides Ltd, a single-judge bench of the Delhi High Court granted an interim injunction to the plaintiff to prevent the infringement of their patent rights held in the manufacturing of certain herbicides. The plaintiff was in the business of manufacturing insecticides, rodenticides, pesticides, etc. and had approached the Court alleging that the defendant had infringed its patents for an herbicide and was exporting and intending to manufacture the same for the domestic market as well. The Court held that the plaintiff had established a prima facie case in its favour. The Court thus granted an injunction restraining the Defendant from manufacturing, selling, distributing, etc., any product that infringes on plaintiff’s patent.

Madras HC grants permanent injunction in ‘Thalappakatti’ Biriyani trade mark case [24 July 2020] [Editors note, an earlier error in this summary has now been corrected]

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In M/s. Thalappakatti Naidu Anandha Vilas Biriyani Hotel v Thalapakattu Biriyani, a single-judge bench of the Madras High Court granted a permanent injunction in favor of the plaintiff with respect to the infringement of the mark ‘Thalappakatti’ Biriyani. The plaintiff’s hotel had been started in 1957 and had since gained a reputation for its Biriyani in the name of Thalappakatti Naidu Biriyani. The plaintiff claimed prior usage of the mark and name from at least 1999, though in fact the name had been used since 1957. The defendant had been using the name, except for substituting ‘u’ for ‘i’ at the end of the name, with the name Thalappkattu Biriyani. The Court granted a permanent injunction in favour of the plaintiff, restraining the defendant from infringing on the plaintiff’s trademark or in any manner passing off marks that were deceptively similar to the plaintiff’s trademark. The Court dismissed the reliefs relating to rendering an account of profits and the surrender of unused goods. [Editor’s note: An earlier version of this post mistakenly said that the Court ordered the defendant to render an account of profits, and the surrender of all unused goods. This error is regretted and has now been corrected]

Other News from around the Country

  • Cipla is set to launch Favipiravir, an off-patent anti-viral drug that has shown promise in clinical trials for the treatment of mild and moderate cases of COVID-19. The cost-effective process used by Cipla for the drug’s production has been developed by the Council of Scientific and Industrial Research (CSIR).

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  • A piece in The Week discusses whether the coronavirus pandemic can lead to a reassessment of vaccine patent laws.
  • Jubilant Generics has received approval from the Drugs Controller General of India (DCGI) to manufacture Remdesivir, a potential cure for COVID-19.
  • The Council of Scientific and Industrial Research (CSIR) has suggested regulating the price of the experimental COVID-19 medicine Remdesivir.
  • Facebook has signed a music licensing deal with the copyright society Indian Performing Rights Society (IPRS) to strengthen its music library.
  • A piece in The Wire discusses the changes in IP law that countries are undertaking to prioritize access to health care during the COVID-19 pandemic.
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    A piece in LiveLaw discusses the relevance of the US Special 301 Report and Global Intellectual Property Centre’s (GIPC) IP Index 2020 to the Indian IP regime and policy.

  • A team of Indian researchers has come up with and filed a patent for a smart social-distancing device that gives out an alert whenever a COVID-19 patient gets too close one’s person.
  • Patanjali has sought the Madras High Court to vacate the earlier injunction granted against it for the use of the mark ‘Coronil.

News from around the World

  • Indonesia has adjusted its compulsory licensing guidelines in preparation for ensuring access to an eventual COVID-19 vaccine.
  • Apple’s justification of the delays caused by COVID-19 for postponing a Texas patent infringement trial failed as the U.S. District Court for the Eastern District of Texas stated that it had taken sufficient steps to limit health risks for the trial to continue.

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  • A piece in The Guardian deliberates on how the world needs a ‘people’s vaccine’ for coronavirus and that a big-pharma monopoly must be avoided in its production.
  • Australia’s Monash University developed and filed for a patent for a new blood test that can trace coronavirus in 20 minutes.
  • A piece published in the Maastricht University blog highlights the barriers created by patent law in the creation of a COVID-19 vaccine.
  • Moderna lost a challenge in the US Patent and Trademark Office over a vaccine technology patent relating to lipid nanoparticle held by Arbutus Biopharma.

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).

 

3 comments.

  1. AvatarAK

    Hi, this is with respect to the article on M/s. Thalappakatti Naidu Anandha Vilas Biriyani Hotel v Thalapakattu Biriyani. The judgement says, the injunction relief was decreed and the ones related to accounts of profit and costs was dismissed. Does this mean the relief for accounts of profit and costs was not granted by the court.? Could you please confirm by reviewing the judgement again.

    Reply
  2. AvatarAdvocate Shubham Borkar

    Dear Spicy Ip,

    We rely on you for news, please be careful while publishing case reviews. In Thalappakatti Biryani judgement , the court has clearly dismissed reliefs c and d which in respect of accounts for profit and surrender of infringing goods. It has only decreed permanent injunction and costs.

    Reply
  3. AvatarNamratha Murugeshan Post author

    Dear Reader,

    Thank you for bringing it to my notice. My apologies for the oversight. The case review has been edited to reflect the same.

    Reply

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