SpicyIP Weekly Review (November 2- 8)

Topical Highlight

Trademark Renewal Procedure: A Slip in IPAB’s Decision in Eveready Industries v. Kamlesh Chadha?

In this post, Adarsh notes the IPAB decision in Eveready Industries India Ltd v. Mrs. Kamlesh Chadha allowing rectification and directing the removal of two marks of the Respondent from the Trade Marks Registry. He deals with a specific aspect of the decision wherein IPAB considered one of the marks to have expired in 2006 due to non-renewal, and no restoration petition being filed. He argues that this holding was incorrect since as per several decisions the procedure under Section 25 of the Act has to be strictly followed. This requires a mandatory notice to be issued by the Registrar of Trademarks three months before the expiry of a mark. As per the IPAB decision it appears that it was not in dispute that such notice was not sent to the respondent. Therefore, the holding of automatic lapse of the mark in 2006 is erroneous.

Thematic Highlight

Is Intermediary Liability Decision in Shree Krishna Int’l v. YouTube Copyright Dispute in Line with MySpace?

In this guest post, Harsh and Arth analyse the Gurugram District Court’s decision on intermediary liability for copyright infringement in Shree Krishna International v. YouTube (2019) in light of Delhi High Court’s landmark decision in MySpace (2016). They highlight three primary flaws in the decision of the District Court (‘DC’). First, it considered a mere notice of the title of the infringing works as sufficient and putting the burden on the intermediary to search for infringing content, thereby using a ‘general awareness’ standard as against ‘specific knowledge’. Not only is it impractical, but the intermediaries are also not capable of making correct assessment of copyright infringement. Second, it was incorrect in holding that the intermediaries earned illegal profit and were liable for secondary infringement due to insertion of advertisements. The MySpace approach of distinguishing between modification of content and format should have been followed. Third, it erroneous concluded that the ad-insertion amounted to an active role on part of intermediaries and they were not entitled to safe harbour protection. They, thus, conclude that the Punjab & Haryana High Court, where the DC decision is on appeal presently, should arrive at a similar conclusion as the principles enunciated in MySpace.

Other Posts

RTI on Opposition Details Reveals Concerning (and Possibly Wrong?) Numbers

In this post, Swaraj and Praharsh analyse the statistics on pre-grant and post-grant oppositions before the Patent Office from 2016-17 to 2019-20 as per the data obtained through annual reports of the office and an RTI filed by them. In the context of pre-grant oppositions, they noted that while the number of oppositions and the number of patent applications both expectedly rise, the disposal numbers show an interesting deviation suddenly in 2018-19 (399 as against 108 in 2017-18 and 67 in 2019-20). They, however, note that despite the importance of knowing pendency rates, the same are not disclosed for pre-grant oppositions. Through approximate calculations they note that even assuming a 25% withdrawal rate, over 2,000 applications currently remain pending. For post-grant oppositions, on the other hand, the reports provide pendency rates. However, there appears a glaring discrepancy in the data since pending applications in 2019-20 are shown as 99 whereas it should be 214. They, however, note that this does not factor in any possible withdrawals, but such withdrawals appear improbable given that such oppositions are filed by interested parties and no withdrawals had been reported in the preceding years.

Retroactive Trademark Assignment Agreements: Another Slip in IPAB’s Decision in Eveready Industries v. Kamlesh Chadha?

In this post, Adarsh analyses IPAB’s holding against retrospective trademark assignment in its recent order in the Eveready dispute. He raises concerns about this broad sweeping denial by the IPAB and highlights that no provision in either the Indian Contract Act, 1872, or the Trade Marks Act, 1999, generally prohibits retrospective assignment of rights. He then discusses IPAB’s jurisdiction in deciding upon the validity of a trademark assignment. He first notes that if an assignment agreement is registered under Section 45, the same can be appealed against under Section 91, which was not done in the instant case. As an alternative, he states that theoretically someone can independently apply to the IPAB or Registrar if aggrieved by any entry made in the register. Even assuming the maintainability of a rectification petition under Section 57 given its broad wording, he reads it in conjunction with the amended Section 45 to highlight a legislative intent that the validity of an assignment agreement is to be decided by a court of competent jurisdiction.

Decisions from Indian Courts

• Madras High Court in Ashique Exports (P) Ltd. v. Suresh K.K., dismissed a trademark infringement suit seeking permanent injunction on the use of the mark ‘Super Wash’ by the defendant. It held that the plaintiff could not establish itself as a prior user of the mark and the evidence submitted by it was inadmissible since they were Xerox copies without any indication of why original was not filed. Additionally, it held that since the defendant was not carrying any business within the territorial jurisdiction of the court, it could not grant the desired relief. [November 4, 2020]
• Delhi High Court in ATE Enterprises Pvt. Ltd. v. Suresh S.G., granted an ad interim injunction in favour of the plaintiff, restraining the defendants from using the plaintiff’s confidential and proprietary information, but did not grant an injunction with respect to the defendants’ patent application as a remedy existed in form of pre-grant opposition. [November 2, 2020]
• Delhi High Court in Astrazenca Ab v. Alkem Laboratories Limited, denied an interim injunction to Astrazeneca against generic companies for the patent in the drug Dapagliflozin. [November 2, 2020]
• IPAB in University of Copenhagen v. Controller of Patents, allowed an appeal against the Controller’s decision in denying patent protection subject to the appellant deleting one of the independent claims from its application. [October 27, 2020]
• IPAB in Dow Agrosciences LLC v. Controller of Patents, allowed an appeal against the Controller’s decision in denying patent protection on the ground of non-filing of proof of right document despite the furnishing of the PCT Declaration under Rule 4.17(ii). [October 27, 2020]
• IPAB in Esco Corporation v. Controller of Patents & Designs, allowed an appeal against the Controller’s decision denying a divisional application for a patent for a wear member. [October 27, 2020]
• IPAB in Tony Mon George v. Controller General of Patents, Designs, and Trademarks, allowed an appeal against the Controller’s decision denying a patent application for a Stem Cell Factor Inhibitor considering the amended application to contain ‘new’ claims. IPAB held that the claims in the amendment application were not ‘new’ and remanded back the application to the Controller to conduct the tests of ‘novelty’ and ‘inventive step’ which it failed to do earlier. [October 27, 2020]
• IPAB in UCB Pharma SA v. Controller General of Patents and Designs, dismissed an appeal against the Controller’s decision denying a divisional application since the subject matter of the same was already covered in the parent application without any multiplicity of inventions objection. [October 27, 2020]

Other News from Around the Country

• BananaIP in a three-part post (available here, here, and here), uploaded their submissions to the Registrar of Copyrights for amendment of the Copyright Act, 1957.
• Sakal Media Group has filed a trademark infringement suit against a Newslaundry reporter for the use of their logo in a story concerning sacking of employees by Sakal amidst the pandemic.
• BananaIP published their comments on the draft High Court of Delhi Rules Governing Patent Suits, 2020.
• Mirzapur 2 producers have issued an apology incorrectly using references to the novel Dhabba, written by the 81-year old popular novelist Surendra Mohan Pathak, in the series and have promised to rectify this error within three weeks.

  

• The profile picture of BCCI’s official handle was recently removed by Twitter owing to a copyright infringement claim.
• Professor Shivlal Mewada of Government Holkar Science College, along with his team, has obtained an Australian International Patent for a system for detecting cyber-attacks.
• The National Botanical Research Institute has filed a patent for its herbal drug NBRI-Uro-05 to be used for treatment of kidney stones.
• Vijay Kirloskar, the chairperson of Kirloskar Electric Co Ltd, has sued his nephews in a Pune court for illegal use of Kirloskar logos by seven entities despite not being shareholders of the Kirloskar Proprietary Limited.
• An IIT Indore research team has developed ruthenium catalysts for producing hydrogen gas from methanol on a large scale, and have applied for a patent for the same.

News from Around the World

• The UK IP Office published a set of key information on how the UK IP system and the Office will operate after the transition period ends on December 31, 2020, for a smooth departure from the EU IP systems.
• A German appeals court has lifted the enforcement of an injunction obtained by Nokia against Lenovo restraining it from selling its products in Europe.
• The European Patent Office (EPO) Technical Boards of Appeal has ruled in favour of Sanofi and Regeneron, invalidating certain claims of a European patent held by Amgen, relevant for the drug Praluent sold by the two companies.