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SpicyIP Weekly Review (August 24 – 30)


Topical Highlight

Patanjali’s Coronil Trademark: The Dilemma of Dilution

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In this post, Adyasha discusses the Madras High Court’s recent order restraining Patanjali from using the word ‘Coronil’ on its immunity-booster tablets. She argues that the Single Judge’s interpretation of dilution under Section 29(4) of the Trade Marks Act 1999, is riddled with serious inconsistencies. Patanjali contended that Arudra’s trademarks did not meet the well-known mark threshold for Section 29(4) to apply. However, the Court held that ‘reputation in India’ was to be interpreted literally. Adyasha argues that this leads to an absurd situation where a claim under Section 29(4) can succeed if reputation in India (an apparently lower threshold) can be established, whereas if the offending trademark is preemptively opposed during registration, the senior mark will have to prove that it is a well-known trademark (higher threshold) to ensure refusal. This creates an inconsistency that could promote bringing dilution claims under Section 29(4) rather than opposing registration. Further, she notes that the Court relied on Blue Hill v. Ashok Leyland in its reputational analysis, overlooking the fact that the class of goods of both marks in that case were the same, which was not the situation in the present case. She concludes that trademarks present only in highly specialized channels with few consumers such as Arudra’s mark, have a lower burden of proof to establish their reputation but enjoy anti-dilution protection at par with marks that have a larger consumer base. Extending protection to such niche-fame-trademarks across classes could arguably be anticompetitive.

Thematic Highlight

Interrogating the Norm of Anonymity in Research Ethics- Visibility, Representation and The Right to Attribution 

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In this post, Anupriya questions the norm of anonymity, typically a part of research ethics in India and abroad. She argues that such norms assume a lack of agency on part of research participants to choose to be named for their works. She explores how the right to claim authorship under the Indian Copyright Act can allow women and minorities to assert control and agency over their narratives as part of their creative expression. She explores various scenarios where copyright in the research may vest in the researcher, the research subject or be covered by fair dealing exemptions as per the Indian Copyright Act. She also discusses if consent forms, as required by research ethics, can be said to constitute a waiver of copyright. She argues that anonymity has some benefits regarding safety, privacy and concerns regarding retaliation towards subjects. However, guidelines requiring anonymity as a norm should move to a system which presupposes research subjects’ agency to opt for or out of anonymity. She concludes that there is a need to reconcile institutional guidelines with the rights provided by the Copyright Act.

Other Posts

Call for Papers: NLU Jodhpur’s Journal of Intellectual Property Studies Vol 4, Issue 1 [Submit by Sep 15]

Recently, we informed our readers that NLU Jodhpur’s Journal of Intellectual Property Studies (JIPS) is inviting papers for publication in the Winter 2020 Issue (Volume IV, Issue 1) of the Journal. The manuscripts must pertain to the field of intellectual property law or to related fields such as media and technology law. The deadline for submission for manuscripts is September 15, 2020. Further information on the submission guidelines is mentioned in the post.

Online Symposium on WIPO-WTO-WHO Trilateral Study on Promoting Access to Medical Technologies and Innovation [September 2]

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We also informed our readers that DPIIT IPR Chair, NLU Delhi and Rajiv Gandhi National Institute of Intellectual Property Management are jointly organising an online symposium on WIPO-WTO-WHO trilateral study on promoting access to medical technologies and innovation on September 2, 2020. The symposium aims to discuss the recent trilateral report from an integrated health, trade and IP perspective in the post-COVID-19 pandemic scenario. More details regarding the symposium are mentioned in the post.

Decisions from Indian Courts

  • Allahabad High Court in Mohammad Chand & Anr. v. State of U.P. & Ors., dismissed the petition to quash the FIR in the case, concerning the preparation of counterfeit Dabur Amla Oil, and held that the case deserved to be tested based on material collected during investigation. [August 28, 2020]
  • Delhi High Court passed an order in Super Cassettes Industries Ltd. v. Relevant E Solutions Ltd. & Ors., wherein TSeries filed a suit against the defendants for using the short video sharing app Roposo, whose music library allegedly infringed the plaintiff’s copyright. The Court allowed the defendants to cooperate with the plaintiffs and ensure compliances of the alleged violation. [August 27, 2020]

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  • Delhi High Court in AstraZeneca AB & Anr. v. Micro Labs Ltd., granted an ex-parte ad-interim injunction in favour of plaintiffs for prima facie making out the case that defendants infringed their patent for the drug molecule DAPAGLIFLOZIN. [August 27, 2020]
  • Delhi District Court in Adidas India Marketing Ltd. v. Kumar Garments, restrained the defendants from using the plaintiff’s trademark ADIDAS in relation to any of their apparel and ordered them to hand over all impugned finished and unfinished goods bearing the violative trademark and pay punitive damages worth Rs.5,00,000/­, along with interest at 12% per annum during the suit’s pendency till its realization. [August 27, 2020]
  • Delhi High Court in Pharmacyclics LLC & Anr. v. BDR Pharmaceuticals Ltd., issued notice to defendants to file a response within a week, on account of the allegation that their Indiamart profile allegedly marketed the product IB-TIB, a generic version of the plaintiff’s patent protected compound IBRUTINIB, sold under the brand name IMBRUVICA. The Court held that the matter deserves further consideration. [August 25, 2020]

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  • Delhi High Court in AstraZenca AB & Anr. v. West Coast Pharmaceuticals Works, decreed the suit due to settlement arrived at between the parties wherein the defendant acknowledged the plaintiff’s patent rights in the compound DAPAGLIFLOZIN. Defendants undertook not to use the compound or any formulation of it in its own pharmaceutical products and not to file any application seeking the cancellation of the plaintiff’s patent. [August 25, 2020]
  • Delhi District Court in Adidas India Marketing Ltd. v. Shiv Chetna Hosiery, restrained the defendants from using the plaintiff’s trademark ADIDAS in relation to any of its apparel and ordered them to hand over all impugned finished and unfinished goods bearing the violative trademark, pay punitive damages worth Rs.5,00,000/­, along with interest at 12% per annum during the suit’s pendency till its realization. [August 20, 2020]

Other News from around the Country

  • The IPAB maintained the stay on the Controller’s order which revoked the Indian patent granted to Pharmacyclics LLC covering the product IBRUTNIB vide its order dated August 7, 2020.
  • The Indian IT Ministry launched Project Chunauti, a start-up challenge from which around 300 projects will be selected and provided with up to INR 25 lakh seed funding, IPR and patent advisories, incubation and mentorship facilities, among other kinds of support.

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  • The Indian Performing Right Society Limited (IPRS) unveiled IPRS 2.0 with its state of the art license administration and announced the implementation of the world’s most advanced operating system to enhance the monetisation capacity for copyright societies.
  • As per latest amendments to the Companies (Corporate Social Responsibility) Rules, 2014, the Ministry of Corporate Affairs inserted a provision allowing firms to claim CSR benefits for investing in efforts to find drugs to combat Covid-19.
  • SAS India and its partner CSM Technologies has associated with the Govt. of Odisha to respond to the Covid-19 pandemic using data analytics and evidence based policymaking through its innovative software and services.
  • Uttar Pradesh government created a corpus worth Rs 150 crore to encourage start-ups in UP, funding them at the stages of ideation, patent registration, participation in domestic and international events, among other things.
  • Khadi and Village Industries Commission (KVIC) issued legal notices to Khadi Essentials and Khadi Global for unauthorized and fraudulent use of its brand name Khadi.
  • Reliance Retail issued a caution notice informing the public that it did not operate any dealership or franchisee model yet, and would not hesitate to take legal action against persons who were misusing its trademarks by creating fake websites or duping others by pretending to grant franchisee of Jiomart services.
  • In a piece in the Financial Express, T.V. Ramachandran noted that India’s recent Report on Non-Personal Data Governance Framework can lead to regulatory turf wars, blurring the lines of jurisdiction between the Data Protection Bill, the Copyright Act, the Competition Act, the fundamental Right to Privacy, and their governing authorities.
  • IIT Kharagpur researchers filed for a patent in India for developing a micro-needle, thinner than human hair for injecting drugs to patients painlessly.

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  • India may soon carry out saliva-based tests for diagnosing COVID-19 if the government approves the process which is said to be safer for healthcare workers and less discomforting for individuals.
  • 70 year old Ahmedabad-based ice-cream brand Havmor sued Delhi based pickles and cereal brand, Usha Aunty’s Havmore for trademark violation.
  • A Noida-based factory manufacturing and selling counterfeit products of popular household brands like Harpic, Dettol, Surf Excel etc. was busted by the police.
  • The Indian Patent Office has granted a patent to Japan Tobacco entitled “Nitrogen containing spiro-ring compound and medicinal use of same” covering the commercial product, Delgocitinib.
  • Charotar village in Gujarat earned registration under the The Protection of Plant Varieties and Farmers’ Rights Act, for traditional varieties of its ginger and turmeric, which have recently garnered attention as immunity boosters.

News from around the World

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  • Activist researchers revealed that Moderna, a Massachusetts biotech company which is also a frontrunner for  developing a Covid-19 vaccine, failed to disclose government financial support for any of the 126 patents filed in its 10-year history, violating the 1980 Bayh-Dole Act, which requires companies to disclose the receipt of government help in their patent applications.
  • Sparks Group, claimed to be one of the largest online piracy organisations by the Europol which shut down many of the Group’s servers, regularly bootlegged unreleased movies and TV shows, and two of its members have been arrested by the U.S. Department of Justice.
  • The UK Supreme Court affirmed a decision holding that Huawei would either have to pay a global rate set by U.K. judges for patent royalties to Unwired Planet International Ltd. or face an order restricting its British sales.
  • Berkeley Lights Inc. faces a legal battle against Vancouver-based rival AbCellera Biologics Inc., over patents pertaining to technology being used to develop antibodies against Covid-19.
  • Merck Sharp & Dohme Corp. filed a petition in the US District Court for the District of Delaware, against Aurobindo Pharma Ltd. alleging that the Indian drug maker plans to launch generic versions of its drug Janumet before expiration of Merck’s patent.

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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