Copyright Design Patent Trade Secret Trademark

SpicyIP Weekly Review (March 22 – 28)


Topical Highlight

Delhi HC Looks Into Access And Innovation Questions On Rare Diseases

Lorenzo’s Oil, a fantastic 1992 movie on a child with a rare disease and the lengths his parents go to find a treatment for him

In this post, Swaraj analyses an order issued by Justice Prathiba M. Singh of the Delhi High Court with regards to patients suffering from ‘rare diseases’. The order sets out three major directives: a) requiring the government to finalize the long pending National Health Policy for Rare Diseases, b) setting up of a ‘National Consortium for Research and Development on therapeutics for Rare Diseases’, and c) setting up for a ‘Rare Diseases Committee’ which would manage and utilise a ‘Rare Disease Fund’. He first provides a background to the issue highlighting the problems posed by rare diseases, exorbitant treatment costs, and government inaction. He then notes that the court had formed an expert committee to look at possible solutions to the rare diseases problem including immediate treatment options and crowdfunding costs, and directed that the National Policy for Rare Diseases be finalized by March 31st, 2021. He then highlights the lack of clarity on Sarepta Therapeutics’ non-operational patient assistance programme, crowdsourcing as the inefficient but possibly the only immediate solution for the impugned case, and government’s non-spending of its rare diseases budget. The court held this non-spent budget and crowdsourced funds to be shifted into the new ‘Rare Disease Fund’ which would be managed and utilised by AIIMS. Finally, he notes that the order interestingly also addresses ‘innovation’ concerns by setting up a ‘National Consortium for Research and Development on therapeutics for Rare Diseases’.

Thematic Highlights

Intellectual Property Rights in Covaxin – Part 1 (Waiver of IPRs)

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In Part I of this three-part post, Anupriya and Anik discuss the possibility of waiver of the patent and trade secret rights in Covaxin which has been created by Bharat Biotech and the ICMR. They first assess the ownership over Covaxin. They note the General Financial Rules, 2017, that stipulate that ownership of rights should ideally vest with the sponsor government. However, the funding agreement between Bharat Biotech and ICMR is not available online and it is unclear whether the government retains the IP rights to Covaxin. Reports of Bharat Biotech’s collaboration with a US firm to co-develop Covaxin for the US market, however, indicates it possessing the requisite IPR. They note that government’s retention of IPR ownership over vaccines funded by it would allow it to share them with the developing world. They then argue that waiver of IPR over all COVID projects funded by the government is a better solution than the other suggested alternative of compulsory licensing. They then analyse the difficulty in enforcing a disclosure of technological know-how covered by trade secret protections since what exactly is sought to be shared may not be clear unless companies volunteer to make this information accessible. They note the ineffectiveness of a waiver of patent protection unless proactive disclosure of ‘know-how’ takes place.

Copyright and Trademark Offences – Bailable or Not?: Bombay HC Also Weighs In

 

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In this post, I analyse the recent Bombay HC decision holding offences under Section 63 of the Copyright Act and Section 103 of the Trade Marks Act to be non-bailable. The court looked at various Bombay HC decisions and a Rajasthan HC Division Bench decision to hold these offences to be non-bailable as the maximum possible punishment is 3 years. I argue that this decision might be considered per incuriam and not good law as it does not consider the Supreme Court’s decisions in Rajeev Chaudhary v. State (N.C.T.) of Delhi and Avinash Bhosale v. Union of India which have been considered by other HCs to arrive at a conclusion contrary to that of the Bombay HC. I then analyse the impact of holding these offences as non-bailable on freedom of speech in the country. I particularly highlight six issues posed by the order in that it will dissuade creativity, silence criticism, hamper fair use, allow for trademark bullying, make the differentiated culpability model of these legislations redundant, and further subjugate vulnerable groups.

Other Posts

Lego Succeeds at EU Level for the Simplest of Reasons

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In this post, Adarsh analyses the recent decision of the General Court of the European Union in favour of Lego. The General Court analysed Articles 8 (1)-(3) of the Council Regulation (EC) No. 6/2002 on Community Designs. It noted the overlaps between subclauses (1) and (2) of Article 8 that prohibit design registration for features dictated solely by a technical function and those that are necessary for mechanical connection of the product, respectively. The General Court held that where a feature falls within both these subclauses, benefit of Article 8(3) maybe granted which holds that designs may nevertheless be granted in features allowing the multiple assembly or connection of mutually interchangeable products within a modular system. It overruled the Board of Appeal decision as that failed to assess Article 8(3) and did not identify the “smooth surface of the upper face of the product” having bearing on Article 8(1). Adarsh then analyses the dispute in context of Indian law and argues that so long as there is evidence to show that at least one feature of the lego block is dictated by visual appearances the Indian statutory criteria of “judged solely by the eye” would stand fulfilled.

Some Musings on Supreme Court’s Judgement on Taxation of Software

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In this post, Adarsh analyses the recent Supreme Court decision concerning the classification of payments under distribution agreements/end-user license agreements (EULA). He identifies four particularly interesting questions posed by the judgment. First, in light of the distinction between ‘reproduction’ and ‘use’ highlighted by the SC, what remains as the purpose of EULA, and whether it could simply be replaced by a declaration that that this is not a license to copyright. Second, another possible cause of action independent of the copyright infringement could be the breach-of-contract due to EULA. However, where restrictions are placed on the incidents and benefits of ownership, is it even logical to call the transaction a ‘sale’ of goods. Third, as the concerned product might also be covered by patents, would a EULA that purports to give permission to “use” the software product then be a “license” under the Patents Act if not the Copyright Act. Finally, the conclusion might be different where softwares are digitally sold where the ‘lawful copy’ is the copy of the software as downloaded under the EULA. This would be directly covered by Section 14(1)(b) of the Copyright Act.

Hero Electric v. Lectro E-Mobility: Ambiguated Arbitrability of IP Disputes?

picture of freddie mercury with the caption "I want to ride my Bike!"

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In this guest post, Lokesh analyses a recent Delhi High Court decision on arbitrability of IP disputes. He first summarises the complex fact situation including a Family Settlement Agreement (‘FSA’) and a Trademark and Name Agreement (‘TMNA’) allocating rights to use the mark ‘Hero’ among the four family groups of the Manjul group. Disputes arising out of or in connection with the FSA had to be adjudicated through arbitration. He then notes that the court not only denied that the dispute, if settled in favor of the plaintiff, would operate in rem but also denied the infraction of any provision of the Trade Marks Act, holding it to be merely a contractual issue. He then summarises the Indian jurisprudence on arbitrability of IP disputes and critiques the decision on three points. First, the court failed to assess whether the action and the rights involved were in rem or in personam. Since it was an infringement suit, it would have in rem implications by defining the scope of the plaintiffs’ rights. Second, the issue involved was a question on the scope and the validity of the registrations of trademarks which is a pure question of law. Finally, the Court failed to appraise the implications of the case on the public due to the confusion in identifying the mark’s owner.

Call for Chapters: Inclusive Wealth Generation through IP Commercialization

We informed our readers about a call for chapters by the WBNUJS IP Chair for a book on the theme ‘Inclusive Wealth Generation through IP Commercialization’. The date for submission is 31st March, 2021. Further details including the submission guidelines can be accessed from the post.

Decisions from Indian courts

  • The IPAB in TVS Motor Company Ltd. v. The Controller of Patents & Designs, allowed the appeal, set aside the Respondent’s order rejecting a patent application filed by the Appellant, and directed the Respondent to grant the impugned patent. [March 25, 2021]
  • The Delhi High Court in Dabur India Limited v. Shiv G. Shetti, granted an ex-parte ad-interim injunction in favour of the plaintiff and directed taking down or restricting access to specified URLs linking to video disparaging the plaintiff’s ‘REAL’ marks. [March 24, 2021]
  • The Delhi High Court in Reddys Laboratories Limited v. Eros International Media Limited, dismissed the plaintiff’s temporary injunction plea seeking restraining the release of the defendant’s film ‘Haathi Mere Saathi’ over the use of an entity named ‘DRL’. [March 23, 2021]

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  • The Madras High Court in Chinnamswami v. M/S. Balaji Consumer Products of India, noted that no effective progress had taken place in the case pending since 2002, and hence dismissed the same with liberty to the plaintiff to institute a fresh suit in case of violation of their marks. [March 22, 2021]
  • The Delhi High Court in NL Blinds Pvt. Ltd. v. SSG Furnishing LLP, with consent of the parties, transferred the suit to the original jurisdiction of the court in accordance with Section 22(4) of Design Act and suspended the interim order pending final adjudication. [March 22, 2021]
  • The Madras High Court in Handy Instant Foods v. Nature’s Care, noted that no effective progress had taken place in the case pending for 19 years, and hence dismissed the same with liberty to the plaintiff to institute a fresh suit in case of violation of their marks. [March 22, 2021]
  • The Delhi High Court in Allied Blenders And Distillers Pvt. Ltd. v. Prakash Distillery And Chemical Co. Pvt. Ltd., reserved orders on the prayer for ad interim injunction, opposed by the defendant on the ground of want of jurisdiction. [March 22, 2021]
  • The Madras High Court in Intel Corporation v. S. Ramanan, noted that no effective progress had taken place in the case pending since 2002, and hence dismissed the same with liberty to the plaintiff to institute a fresh suit in case of violation of their marks. [March 22, 2021]
  • The Delhi District Court (Rohini) in M/S Solar Sales India v. Shanky Mittal, granted permanent injunction restraining the defendant from using any marks deceptively similar to the plaintiff’s registered ZONE mark, and also decreed Rs 1 lakh of damages in favour of the plaintiff. [March 22, 2021]
  • The Calcutta High Court in Kaira District Cooperative Milk Producers Union Ltd. v. Maa Tara Trading Co., granted interim injunction restraining the defendant from using the plaintiff’s well-known mark Amul. [March 22, 2021]

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  • The Bombay High Court in Hindustan Unilever Limited v. Greypixy Udyog, held that “that setting out two separate prayers, one for infringement and one for passing off is a singularly unwise practice”. [March 22, 2021]
  • The Delhi District Court (Tis Hazari) in Retail Royalty Company v. Lemon Security and Services Management Pvt. Ltd., granted a permanent injunction restraining the defendants from using any mark deceptively similar to the plaintiff’s registered flying eagle mark. [March 20, 2021]
  • The Delhi High Court in Novartis Ag v. Eris Lifesciences Limited, disposed of an application seeking injunction restraining the defendant from dealing in a pharmaceutical composition comprising combination of sacubitril + valsartan, in light of the defendant’s statement to abide by the interim injunction orders of the High Court for the State of Telangana and its affidavit submitted before the same. [March 19, 2021]
  • The Delhi High Court in Audioplus v. Manoj Nagar, granted interim injunction restraining the defendant from using marks deceptively similar to the plaintiff’s registered STUDIOMASTER mark with the leeway to use the trade name/trademark STUDIO MAN, albeit, without any stylisation. [March 19, 2021]
  • The Madras High Court in International Foodstuffs Co. LLC v. Iceberg Walnut Foods India Private Limited, granted a permanent injunction restraining the defendants from using its ICEBERG mark, and thereby from infringing the plaintiff’s registered LONDON DAIRY mark. [March 17, 2021]
  • The IPAB in Tony Mon George v. Assistant Controller of Patents & Designs, allowed the appeal, set aside the Respondent’s order rejecting a patent application concerning a centrifugal separator for cleaning of gas filed by the Appellant, and directed the Respondent to grant the impugned patent. [March 15, 2021]

Other news

  • The Copyright Office has introduced e-filing facility for registration/ renewal of a Copyright Society and a Performers’ Society w.e.f. March 19, 2021.
  • In the latest edition of the International Intellectual Property (IP) Index released by the US Chamber of Commerce Global Innovation Policy Centre (GIPC), India has ranked 40 among 53 global economies.
  • Over 250 members of European Parliament and national parliamentarians have urged the EU to support the India-South Africa proposal of temporary waiver of vaccine related patents.
  • The short video company Kuaishou unveiled its music copyright settlement standards for short videos and live broadcast scenes on the platform as per which music copyright owner will receive payments based on the amount of usage of the concerned songs.

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  • A federal jury in Texas has directed Apple to pay nearly $ 308.5 million as damages to Personalized Media Communications LLC, a licensing firm, in a patent infringement suit filed by the latter.
  • A trademark infringement suit has been filed by Decathlon Sports India against NCR-based Pentathlon Sports.
  • Taylor Swift and Evermore Park have dropped the respective copyright infringement suits filed by them against each other.
  • Costco is challenging the punitive damages awarded to Tiffany’s in their ongoing trademark infringement suit over the sale of generic diamond engagement rings bearing Tiffany’s name.
  • India and Japan have agreed to further strengthen cooperation in verification of patents.

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