SpicyIP Weekly Review (March 8 – 14)

Topical Highlight

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The Third to Tango: After Pakistan, Nepal Opposes India’s GI Application for Basmati

In this post, Praharsh discusses the implications of Nepal joining Pakistan’s opposition to India’s application for registration of GI over Basmati in the EU. He noted that this could be the first IP dispute between the three South Asian countries.  He highlighted three major reasons reported for Nepal’s opposition: 1) Basmati is grown and consumed traditionally in Nepal; 2) Nepal has worked extensively with national and international scientists, since 1965, to develop different varieties of rice using local basmati landraces; 3) Basmati has social and cultural ties with the Nepalese communities. Further, he mentioned that unlike Pakistan which recently granted a GI status to Basmati, Nepal still protects its GIs under its trademarks law. He noted that this is pertinent because even though GI status is not a requisite for filing the opposition, it may play an important role in giving the opposition teeth against the application. He noted that as per the EU regulatory framework (Council Regulation 510/2006) under Article 7.5, the interested parties would now be engaged in consultations running for six months wherein they would try to reach an agreement, failing which the committee will hear the matter according to Decision 1999/468/EC before deciding on it.

Thematic Highlight 

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Supreme Court Recognises Doctrine of Copyright Exhaustion in Softwares, And Its Subservience to EULAs

In this guest post, Vedangini Bisht and Shubham Chaudhary analyse a recent Supreme Court order in the case of Engineering Analysis Centre for Excellence Pvt. Ltd. v. CIT, which recognised the Doctrine of Copyright Exhaustion vis-a-vis Software. They note that this recognition would allow for the creation of secondary markets, and in effect, alternative distribution models, fostering greater access by creating an avenue where if a work is withdrawn by the right holder, it would continue to remain in circulation. They argue that the case provides overriding powers to End User License Agreements (“EULA”) to restrict the doctrine of copyright exhaustion since the Court laid down that even in situations where the software is purchased directly by an end-user from a foreign supplier or manufacturer, the payments for using foreign software would not amount to ‘royalty’ which is taxable in India since all the rights with respect to further sale of it would be restricted by the EULA. They also note that the Court clarified that conveying the title of software to distributors would not amount to first sale, which would render copyright exhaustion inapplicable to distributors. They argue that this is a correct reading of the law, and it grants software developers control over the price of their software in geographical markets.

Decisions from Indian Courts

  • The Bombay High Court in NBU Bearings Pvt. Ltd. & Ors. v. Union of India held that the two independent remedies sought in the case under different statutes namely section 53of the Copyright Act, 1957 and IPR Rules framed under the Customs Act, 1962 could be construed harmoniously as independent of each other. Deciding in favour of the petitioners, the Court held that since the proceedings between the petitioners and respondents regarding ownership of the “TR” brand were still pending, the imported goods concerned, suspended from clearance would have to be released to the petitioners subject to their executing such bond with such surety or security and such conditions as may be specified in the bond in accordance with law. This would done as per a hearing by the Commissioner of Customs and/or by the duly authorised officer within one week from the date of receipt of this order and the officer would pass an appropriate order within one week thereafter. [March 12, 2021]
  • The Bombay High Court in Cinefones v. Cinefones Systems & Anr., a case concerning a peculiar trade mark and copyright infringement and passing off action wherein the impugned mark was only one i.e., “CINEFONES”. This was held to be the plaintiff’s registered mark in whose artistic depiction it also held copyright. An ad-interim injunction was granted pending the hearing and final disposal of the suit, restraining the respondents from infringing the plaintiff’s trademark and copyright in the impugned mark in relation to its overhead projectors, lamp, antenna, receiver etc. or allied products and all other goods included in class 9. [March 12, 2021]
  • The Bombay High Court in Franco-Indian Pharmaceuticals v. Vaibhav Vohra & Anr. granted an ad-interim order on being satisfied that there existed a strong prima facie case and balance of convenience in favour of the plaintiff, and that irreparable injury would be caused to the plaintiff if such relief would not be granted. The Court held that pending the hearing and final disposal of the suit, the respondents would be temporarily restrained from using the plaintiff’s trademarks “DEXORANGE”, “DEXORANGE PAEDIATRIC” and “DEXORANGE PLUS” in relation to their medicinal and pharmaceutical preparations. [March 10, 2021]
  • The Delhi High Court in Natures Essence Pvt. Ltd. v. Protogreen Retail Solutions granted an interlocutory injunction in favour of the plaintiff restraining the defendants from infringing the plaintiff’s registered trade marks “NATURE’S INC.” and “NATURE’S ESSENCE”. [March 9, 2021]
  • The Bombay High Court in Sharmilee Kapur & Anr. v. Mr. Kiran Bharekar dismissed the appeal holding that there was no reason to interfere with the impugned order. The Court found no merit in the appellant’s allegation that the respondent’s mark “TANMAN” is deceptively similar, almost identical to and merely a re-arrangement of the appellant’s mark “ATMANTAN BE TRANSFORMED.” [March 9, 2021]
  • The Delhi High Court in Merck Sharp & Dohme Corp & Anr. v. Actis Generics Pvt. Ltd. granted an ex-parte injunction restraining the defendant from manufacturing, using, selling or dealing with either API or intermediates or any product, which infringes the plaintiff’s claimed subject matter Patent No.209816, including Sitagliptin or any of its pharmaceutically acceptable salts. [March 5, 2021]
  • A Delhi District Court in Siemens Product Lifecycle v. Lucent Engineering Company granted a permanent injunction in favour of the plaintiffs, restraining the defendants from infringing the software programmes of the plaintiffs, including NX software, awarding the plaintiff compensatory damages of Rs.5,00,000/- and punitive damages of Rs.5,00,000/- respectively, along with costs of the suit (assessed at Rs.1,92,150/). The defendant was directed to pay the total amount of Rs,11,92,150/- to the plaintiffs within 4 weeks from the date of judgment, failing which plaintiffs were held to be entitled to interest @ 12 % per annum on the aforesaid amount from the date of the order till its realization. [March 3, 2021]
  • The Bombay High Court directed the Centre to decide on the representations made by two multidrug-resistant tuberculosis (MDR-TB) survivors who filed PILs for directing the government to allow non-commercial production of Bedaquiline and Delamanid, which are two drugs essential for the treatment of MDR-TB.
  • The Bombay High Court refused to grant pre-arrest bail to a man charged for selling substandard goods and violating trademark and copyright provisions. The Court held that infringement offences under Section 103 of the Trade Marks Act and Section 63 of the Copyright Act are non-bailable.

Other News

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    A Mumbai court directed the city police to register an FIR against actor Kangana Ranaut in relation to copyright infringement alleged by Ashish Kaul, the author of ‘Didda: The Warrior Queen of Kashmir’.

  • 44,534 start-ups have been recognised by the Department for the Promotion of Industry and Internal Trade (DPIIT). These start-ups will be eligible for many incentives, including income tax benefits, an 80 percent rebate on patent filing fees and a 50 percent rebate on trademark filing fees.
  • Sajid Sheikh and Gunjan Deshpande in a piece for The Wire Science highlighted the crucial role played by generic drugs in healthcare in India.
  • An article for the Economic Times argued that the Indian government should buy out the IPRs in Covaxin from its developers Bharat Biotech and ICMR to walk the talk as per its demand, along with South Africa, that members of the World Trade Organisation waive all IPRs in relation to vaccines and medication for Covid-19.
  • A German district court in Mannheim ruled in favour of LG Electronics in a mobile technology-related LTE standard essential patents infringement suit.
  • As per the WHO Director-General, the WHO’s international program (COVAX) for getting coronavirus vaccines to the world delivered 20 million vaccine doses to 20 countries in its first week of distribution.
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