SpicyIP Weekly Review (August 10 – 16)

Topical Highlights

Breaking News: Controller General’s Office Agrees with Our Petition for Scrapping the Intellectual Property Appellate Board

In this post, Prashant reports on a petition he had submitted to the Ministry of Commerce along with Rahul Bajaj, asking it to consider shutting down the Intellectual Property Appellate Board (‘IPAB’). As seen from a file-noting of the Ministry accessed through RTI, the office of the Controller General of Patents, Designs and Trademarks has agreed with most of their contentions. Prashant discussed few key comments from the Controller General (‘CG’). The CG agreed with the limited expertise of technical members for patent matters. The CG also noted that since High Courts have access to technical evidence as affidavits from experts filed by parties and scientific advisors, technical expertise is not a problem for them. The CG also considered shifting appellate jurisdiction from IPAB to commercial benches of High Courts to be a good idea due to overlapping jurisdictions and most cases anyways reaching the High Courts. Prashant also noted some other interesting takeaways from the file noting such as shifting of IPAB Chennai office, setting up of new IPAB bench, and appointments to the IPAB.

DIPP Appoints ‘Technical Members’ to IPAB – Legality under Doubt

In this post, Prashant discusses an order dated July 21, 2020 concerning the appointment of five technical members to the Intellectual Property Appellate Board (‘IPAB’). He suspects these appointments may not be legal because they appear to have been made under the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017, that were struck down as unconstitutional in the Roger Mathew case. The qualification criteria and the composition of the selection committee provided in the new rules notified in 2020 is different from that of 2017 Rules. The fact that the only advertisement for technical members for the IPAB on the DIPP’s website is dated July 25, 2018, and that the DoPT’s order refers to an office memo dated November 25, 2019, support his suspicion that these appointments have been made under the 2017 Rules and likely to be illegal.

Thematic Highlight

What We Understand and Imagine Dynamic IP Injunctions To Be

In this guest post, Eashan Ghosh looks at the Indian jurisprudence on dynamic IP injunctions following the recent order by the Delhi High Court in Snapdeal’s favour. He highlights the differences between the Snapdeal order and the Disney order that I had covered earlier, particularly its nature being a trademark infringement claim as against a copyright claim. He also points out that the mechanics of dynamic injunctions largely remain uncontested in India. Furthermore, he argues that the Indian courts have not focused on the long range nature of dynamic injunctions. He emphasises how dynamic injunctions are merely an improved form of standard injunctions and thus must permit access to rights and opportunities, and that they will always be incomplete solutions. Additionally, he highlights the consequences of incorrectly applied dynamic injunctions. Finally, he contemplates the way forward for dynamic injunctions, should they be set up in the form of master litigations or would the court need to step aside.

Other Posts

The Dilemma of Graphical User Interfaces: A Need to Rethink Design Protection?

In this post, I study the protection provided by the Designs Act, 2000, and the accompanying rules, to Graphical User Interfaces (‘GUIs’). I note that Class 14-04 of the classification of articles deals with ‘Screen Displays and Icons’ and covers GUIs provided they satisfy other requirements such as originality and no prior publication prescribed by law. I then look at the unclear and contradictory stance taken by the Designs Office in granting registration for GUIs. Particularly, I assess a rejection of registration for an application filed by Amazon for registering a GUI, and contrast this to some recent instances where registration has been accorded. Furthermore, I argue that the Amazon order misapplied the existing principles of law concerning, inter alia, the non-functionality of GUIs, their visual appeal, and the understanding of the term ‘Article’. This becomes particularly problematic in light of India’s recent accession to the Locarno Agreement. I conclude by discussing a possible sui generis framework for protection of GUI designs, detaching protection from the article concerned.

Revocation of Novartis’ Ceritinib Patent Stayed: Unraveling the IPAB Order

In this post, Adyasha looks at the confusing orders surrounding revocation of Novartis’ patent in the cancer drug, Ceritinib. Based on a post-grant opposition filed by Natco, Novartis’ patent was revoked by the Controller on grounds of obviousness and lack of inventive step. Recently, the IPAB has stayed this revocation. The stay order points out that the Controller, while relying on Natco’s delayed evidence showing Ceritinib to be a part of the Markush structure of two previous patents held by Novartis constituting prior art, fails to consider Novartis’ rebuttal evidence that the said genus patents did not identify Ceritinib’s specific compound structure or its advantages. Adyasha then looks at the Indian jurisprudence on genus and species patents as developed from the Supreme Court’s decision in Novartis v. Union of India. She specifically looks at the conflicting treatment of this theme by the Delhi High Court in two cases concerning AstraZeneca’s Ticagrelor patent. She considers the stay order to be a right step since greater scrutiny is necessary to determine if the previous patents enabled the working of Ceritinib.

SCOTUS Grants ‘Booking.com’ Trademark Protection: How Far can Domain Name Trademark Protection Extend?

In this post, Namratha looks at the extent of protection of generic .com trademarks in light of the recent US Supreme Court decision granting limited trademark protection to ‘Booking.com’ while noting the ‘unique’ nature of domain names ‘indicating a single site’ making it difficult to prove likelihood of confusion. She particularly analyses if trademarks with Generic top-level domains (‘gTLD’) such as ‘.com’ could be used to block Country Code top-level domains (‘ccTLD’) such as ‘.in’. She considers that protection of ‘Booking.com’ would not automatically protect ‘Booking.in’ even if they refer to the same website since trademark law is not focused on the product but the arrangement of the mark. Finally, she explains the Uniform Domain Name Dispute Resolution Policy and how a dispute between a gTLD and a ccTLD might be brought forth.

IPAB’s Ferid Allani Order and the Changed Indian Patent Landscape for Software Patents

In this guest post, Rajiv analyses a recent IPAB order setting aside the Patent Office’s order rejecting patent for a computer related invention. He charts out the complex trajectory of this application, stretching over 19 years across several forums. He provides a detailed description of the nature of the claim, its unclear wording and its invention in combining GUI with search optimisation. His primary objection with the IPAB’s order is that while it elaborates on the technical effect of the invention, it fails to assess whether the claims incorporate the features having the technical effect which had not been done here. This absence of specification meant it was in violation of Section 10(4)(c) of the Patents Act as the protection is confined to the claims. Additionally, he argues that the Patent Office should have provided a clearer order as against a two-page rejection in an application like this with a complex legal history. He adds that the Patent Office should have been represented before the IPAB and given a hearing.

Call for Papers: NLSIU’s Indian Journal of Law and Technology (IJLT) Vol. 17 [Submit by Oct 31]

In this post, we informed our readers about NLSIU Bangalore’s Indian Journal of Law and Technology (IJLT) inviting original and unpublished manuscripts for publication in its Volume 17. The deadline for submission is October 31, 2020. Further information on the submission guidelines is mentioned in the post.

Book Release: Digital Copyright Law – A Comparative Study of the Limitations and Exceptions Relating to Education

We had a guest post by Dr. Betsy Rajasingh announcing the release of her book ‘Digital Copyright Law: A Comparative Study of the Limitations and Exceptions Relating to Education’. The book aims to question the dominant narrative propagated by developed countries that stronger copyright protection incentivizes the creation of new works. It advocates for a copyright system that evenly balances the rights of copyright owners with public interest in access to digital copyright works for educational purposes. The book comprises of seven chapters divided in three thematic parts. The first two chapters provide an introduction on copyright law and Digital Rights Management. The next three chapters discuss the law on fair use, the three part test on exceptions to copyright, and the implications of digitization on education and related exceptions to copyright. The remaining chapters discuss the doctrine of first sale/copyright exhaustion, with particular focus on the emerging concept of digital exhaustion. The book can be found in the recently published list of IP books on this blog (also accessible from the Resources section of the website here). Further details on the essays and links for ordering the book online can be viewed in the post here.

Decisions from Indian Courts

  • Madras High Court, in a division bench decision, stayed the single judge order restraining Patanjali from using the ‘Coronil’ mark and imposing costs to the tune of Rs. 10 lakh. [August 14, 2020]
  • Delhi High Court, in TM25 Holding BV & Anr. v. Karthik Bhaskar & Anr., granted an ex-parte ad-interim injunction restraining the defendants from using the Plaintiff’s registered ‘WOKKIE’ device mark and other marks for selling its goods. [August 13, 2020]
  • Delhi High Court, in FK Bearing Group Co. Ltd. v. Kunal Trading Corp. & Anr., granted an ad-interim injunction restraining the defendants from using the plaintiff’s registered trademark/ artistic work ‘FK’for dealing in bearings or other allied goods. [August 10, 2020]
  • Delhi High Court, in Elementia Wellness Pvt. Ltd. v. Tes Beauty Services Pvt. Ltd. & Anr., granted an ad-interim injunction restraining the defendants from using the mark ‘Tatva Spa’ or any other mark deceptively similar to plaintiff’s earlier well-known mark ‘Tattva Spa’ for their spa services or on any website. [August 6, 2020]

Other News from Around the Country

  • Punjab’s Chief Minister Amarinder Singh has opposed the inclusion of Madhya Pradesh in the states producing the Basmati rice claiming that it would hamper farmers’ interests and exports for states having a GI tag.
  • A famous Ahmedabad based restaurant chain by the name of Honest Restaurants has sued a jelly producing company for trademark infringement for selling its products under the brand name of ‘Honest Jellies’.
  • Pharma Company Zydus Cadila has launched the Remdesivir drug, used on severally critical COVID-19 patients in India, by the brand name Remdac.
  • A Bengaluru based startup, IShield, has developed an affordable self-disinfecting mask for preventing the spread of COVID-19, and has applied for a patent for using the molecule involved on a fabric for disinfecting the virus.
  • An Indian company named Excel 3D Advanced Technologies has made an N-100 mask called XD100 and has applied for a patent due to its unique design.
  • Amazon has obtained patent in India for its method of auto authentication of mobile transactions based on user’s location and proximity of merchant location.
  • A Surat-based software engineer has invented a low-cost touch-free panel for lifts called ‘Sparshless’ to reduce contact on common surfaces amidst the pandemic, and does not intend to patent the invention.
  • Vivo’s sub-brand, iQOO, has filed trademark applications for the marks ‘iQOO PAD’ and ‘iQOOBOOK’.
  • The Bengaluru-headquartered company, Mphasis, has received a US patent for its AI system to analyse unstructured data sets.
  • Huawei has filed for a patent for an all-screen fingerprint technology in six countries including India.

News from Around the World

  • The Australian government has made an announcement regarding proposed reforms in the country’s copyright laws concerning, inter alia, orphan works and the fair dealing exception in the digital world.
  • The Brazilian Supreme Court has taken up the case to adjudicate the tussle between IGB Electronica and Apple on the exclusivity of rights over the trademark ‘iPhone’ in Brazil.
  • Michael Skidmore, the lead singer and songwriter of the band Spirit, has petitioned the US Supreme Court to take up an appeal concerning copyright infringement by Led Zeppelin’s ‘Stairway to Heaven’.
  • Apple has been ordered to pay over $500 million as damages by a Texas court in a 4G patent infringement suit filed by PanOptis.
  • The US Postal Service has filed for a patent for safe mail-in polling amidst the pandemic using blockchain technology.
  • The US Court of Appeals for the Ninth Circuit ruled in favour of Qualcomm, overturning a district court decision that found it to be in violation of the antitrust law owing to its patent licensing model.
  • Microsoft’s new branding for providing low-code capabilities on its Power Platform and Teams Products as ‘Dataflex’ has been stalled due to the existence of a prior mark with the same name.
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