SpicyIP Weekly Review (September 20 – 27)

Topical Highlight

University of Miami Wins Appeal at IPAB over Cancer Drug Patent ‘Coenzyme Q10 Formulations and Methods of Use’

Praharsh discussed the IPAB’s order allowing an appeal against the Controller of Patents’ rejection of the University of Miami’s application over a pharmaceutical composition for treatment of cancer. The Controller had rejected the application stating, among other things that: a) the additional documents submitted by the appellant to explain the post research scenario were grossly substantive and result of further research; b) the revision of claim was beyond the scope of specification made; and c) the specification on record lacks technical data to prove enhancement of efficacy. The Board held that the Controller violated principles of Natural Justice by not specifying the reasons for rejecting the application on ground of sections 3(d) and 3(i). It further held that the additional documents were merely supportive of the original claim and were therefore within the application’s scope. Praharsh points out that despite the fact that neither the Controller nor the appellant adhered to the prescribed timelines the Board did not clarify on this issue. Nor did it take any strict action. Additionally, he notes that the Board acknowledged the foreign registration of a similar invention, despite it being held by the Board in Novartis v. UoI that such registration holds no persuasive value. He finally notes the increasingly common trend of the Controller’s office not making any representation before the Board in several such appeals.

Thematic Highlight

Khadi v. Khadi – KVIC’s Clash at the EUIPO

In a guest post, L. R. Vijaypriya discussed the trademark registration of ‘Khadi’ in the name of a German company at the EUIPO, the cancellation petition filed by KVIC and its final outcome. She begins by recounting the government’s efforts to establish the cultural symbol of ‘Khadi’ as an ‘Indian brand’, by setting up the Khadi Village Industries Commission (KVIC) as an the authority to control, regulate, and authorise the use of the term ‘Khadi’ on products. She explains the measures taken by KVIC over the years. In particular, KVIC had recently filed for cancellation of the KHADI trademark in EU. However, the Cancellation Division held that the claims of invalidity do not fulfill the requirements of an earlier trademark per EUTMR. Further, as export documents evidenced only limited shipment to 5 European countries, it failed to meet the standards of a well-known mark. On the issue of deceptiveness, it concluded that as ‘Khadi’ is not part of the common knowledge of the relevant public in the EU. Lastly, it noted that mere prior knowledge of Indian use, does not attribute an act of bad faith. Vijaypriya notes that despite loss in this case, KVIC has filed a cancellation application on grounds of non-use on 31st May, 2019, as part of its proactive measures to protect the rights over ‘Khadi’, worldwide.

Other Posts

Online Session on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ [September 27]

We informed our readers of the online session on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ organized by Hidayatullah National Law University (HNLU), Raipur, in collaboration with CAN Foundation, at 11:30 A.M on Sunday, September 27, 2020. The session hosted Justice Gautam S. Patel of the Bombay High Court along with Justice Prathiba M. Singh of the Delhi High Court. Hon’ble Justice Patel used this opportunity to pay tribute to Prof. Basheer and the legacy he carved out in terms of access to education through IDIA, as well as his contributions to the study and advancement of intellectual property law and his brainchild, the SpicyIP blog. The recording of the session is available here.

Bona Fide or Not?: Usage of Common Surnames as Trademarks

In a guest post, Varsha analysed the case of Anil Rathi v. Shri Sharma Steeltech, whereby the Delhi High Court rejected the plea for usage of a surname in the course of trade. An MoU and Trust Deed regulate the usage of the RATHI mark between the members of the Rathi Family. The court found that the defendant’s act of issuance of licenses in his personal capacity for the usage of impugned mark amounts to infringement, as the issuance is ultra vires the MoU and Trust Deed. The court rejected the defendant’s Section 35 argument, i.e., he could use the mark as that was his surname. It held that Section 35 of Trade Marks Act 1999 is restricted to personal use of marks and does not to extend to the grant of licenses or use by artificial entities. Varsha compares this case to that of Supreme Court’s decision in Precious Jewels v. Varun Gems, pointing out that the court’s rejection of the ‘TMT RATHI’ mark on grounds of it being different from a full name mark might not be completely sound. Finally she refers to a previous decision of Delhi HC where it was held that the word ‘RATHI’ forms an essential part of registered mark and it cannot be used by the defendants with prefixes or suffixes, pointing out that Anil Rathi failed to cite this.

The Law Gazette’s 1st National IPR Quiz Competition for Law Students [October 4]

We announced for our readers the Law Gazette’s 1st National IPR Quiz Competition for law students on October 4, 2020, which is to be held in the memory of Late Professor Dr. Shamnad Basheer. The deadline for registration is October 3, 2020. Further details regarding the competition can be found on the post.

Lawctopus’ Online Certificate Course on Intellectual Property – Law and Practice [Oct 1 – Dec 30]

We notified for our readers that Lawctopus is offering an online certificate course on Intellectual Property – Law and Practice from October 1 to December 30, 2020. The deadline for registration is September 30, 2020. Further details regarding the competition can be found on the post.

Other Developments

Decisions from Indian Courts

• IPAB in Ram Chandra Maurya v. Union of India dismissed a petition seeking to restrain the defendants from manufacturing engines, by using complainant’s copyrighted literary work titled, ‘Motions of 4th& 5th law and Motions of 6th Law’ on grounds of it being beyond the scope and power of the Copyright Act [September 14, 2020].
• Punjab & Haryana High Court in Vikas Jain & Anr. v. State Of Drugs Controller & Ors. directed all parties, involving members of the same family on both sides, to maintain status quo ante with regard to the manufacturing rights of the disputed trademarks ‘COSMO SILKY’ and ‘COSMO’, until the final adjudication of pending cross-suits before Delhi High Court [September 18, 2020].

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  Delhi High Court in Living Media India Limited & Anr. v. www.News-Aajtak.co.in noted the extensive use and awareness of the plaintiffs’ ‘AAJ TAK’ trademark and directed that the websites/domain names of http://www.news-aajtak.co.in, http://www.aajtaknewsdaily.com, http://www.newsaajtaklive.com, http://www.aajtakreport.com be blocked/suspended and the uploads made on various social media platforms administered by them that include infringing material, be taken down [September 24, 2020].

Other News from around the Country

• Acting upon an order issued in response to several petitions filed by copyright societies, music producers and broadcasters, IPAB has issued a Public Notice inviting suggestions from interested persons with regard to the fixing of royalties for communication of Sound Recordings to the public by way of broadcast through Radio under section 31D of the Copyright Act, 1957.
• The Indian Intellectual Property Office’ Annual Report (PDF) for year 2018-2019 is now available.
• Chakhesang Women Welfare Society (CWWS) filed a complaint against fashion designer Ritu Beri and the Tribal Co-Operative Marketing Development Federation of India (TRIFED), Ministry of Tribal Affairs, for alleged infringement of registered Geographical indication in Chakhesang shawls.
• India and Denmark signed a Memorandum of Understanding to increase cooperation in the field of IP rights by exchanging best practices and other collaboration.
• Khadi and Village Industries Commission forced e-commerce portals Amazon, Flipkart, Snapdeal and others to remove over 160 web links selling products in the brand name of ‘Khadi’.
• A piece in Medianama discusses India’s position of having the maximum number of TikTok videos removed between January and June 2020 at a whopping 3,768,292 in number.

News from around the World

• WIPO launched ‘WIPO Lex-Judgments’ a New Free Database of over 100 judicial decisions on Intellectual Property law from 10 countries and available in 6 languages.
• The High Court of England & Wales upheld two decisions of the UKIPO in the DABUS – AI Patent case, finding that a machine does not meet the requirement of an ‘inventor’ under the Patents Act 1977, and only a person can be deemed to be so.

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  Facebook has announced an update to its ‘Rights Manager’ tool that will enable photographers to claim ownership over their images, identify when those images have been used without permission, and issue takedown requests.

• Peter Paterno, an attorney for the Doobie Brothers, sent a creatively drafted cease-and-desist notice to comedian Bill Murray, accusing him of copyright infringement over the use of the band’s song, ‘Listen to the Music’, featured in a commercial for Murray’s line of golf apparel.
• A piece in Hollywood Reporter discussed Justice Ruth Bader Ginsberg’s legacy in US copyright law.