SpicyIP Weekly Review (August 23 – 29)

Topical Highlight

Sun Pharma v. Cipla: Madras HC Rejects COVID as an Excuse for Passing Off

In this guest post, Kedar Ganesh Dhargalkar analyses the recent case of Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., and the socio-legal opportunism of the defendants’ arguments for condonable trademark infringement, set in the backdrop of the ongoing global pandemic. The Defendant Sun Pharmaceuticals Industries Ltd. allegedly infringed the Plaintiff Cipla Ltd.’s copyright and registered trademark by thrusting its deceptively similar goods and flooding the high-in-demand but low-in-knowhow market, with its imitation products. The Court granted an ad-interim injunction in favour of the plaintiffs. Kedar notes that the defendants in their counter applications to quash the order highlighted that in the backdrop of pandemic, the medicines produced by the Company were in high demand due to their ability to relieve some of the major symptoms of Covid-19. They also stressed that since the company had stocked up a large amount of the goods under consideration and since these were medicinal supplies, which on an average, had an expiration period of just one year, they should be allowed to make their drugs available for commercial supply in the market. The Court rejected these arguments of urgency and public interest as having no bearing on the adjudicatory question before it. Kedar concludes that the Court set a much-needed precedent, by settling that even a medical necessity induced by COVID cannot be a free-pass for the pharma-companies to blatantly infringe IP rights and later play victim by justifying their act under the pretext of public emergency.

Thematic Highlight

Delhi HC IP Division Rules: An Opportunity to Strengthen Procedural Framework

In this guest post, Eva Bishwal analyses the foreseeable problems arising out of the abolition of the IPAB and the creation of the IP Division while discussing the scope of building a robust procedural framework in the form of the IPD Rules. She notes that while IP matters are gradually being renumbered and transferred to the IPD, there is insufficient guidance (in the form of notifications or practice directions) on the management of such matters currently. She highlights that the two chief challenges anticipated are increase in backlog and handling technical matters. She stresses that the transferred cases from IPAB when added to the existing backlog of IP cases in the Delhi High Court is bound to increase the caseload significantly. She suggests that the IPD Rules should provide for penalties for bad faith conduct of parties such as filing frivolous applications and pleadings which unnecessarily draw out the proceedings. Eva highlights that handling technical matters (patents, geographical indications and plant varieties) will be a special challenge to deal with as it is critical that judges have a comprehensive understanding of not only the legal framework, but also the technical subject, market forces, and the manner in which inventors and investors rely on IP rights. Thus, she notes that regular training for judges on the technical subject matters is crucial. She also notes that the IPD Rules provide a chance to codify procedure for IP specific formats such as, dynamic injunction suitsJohn Doe suits etc. She concludes that it is important that the Delhi High Court consider the potential hurdles for IPD and address them through the IPD Rules.

Other posts

Harpic v. Domex Advertisement: Product Disparagement or Nominative Fair Use?

In this guest post, Pragya Jain offers an independent analysis of the law in relation to comparative advertising and nominative fair use and applies it to analyse a recent YouTube commercial by Domex, a Hindustan Unilever Ltd. (HUL) brand, which compares the brand to Harpic. Based on precedent, Pragya argues that the advertisement of HUL for Domex disparages the image of its competitor product, Harpic of Reckitt Benckiser by taking a direct dig at Harpic as a toilet cleaner and questioning its utility in containing malodour and disinfecting the toilet over a large period. On the question of whether Hindustan Unilever can defend themselves on the grounds of nominative fair use, Pragya observes that it it isn’t difficult to identify the product, i.e. Domex, without referring to Harpic, and arguably the purpose of the advertisement to present Domex as an odour remover could have been achieved without mentioning or referring to the Harpic trademark. Thus, she notes, based on the tests laid down by the Madras HC in Consim Info Pvt. Ltd v. Google India Pvt. Ltd., that the defence of nominative fair use may not be available for Hindustan Unilever. She concludes that while the final outcome in this ongoing dispute is awaited, this much can be said: while comparative advertising itself is not illegal, advertisers should, however, guarantee that the basis for comparison is fair and accurate, and not chosen to give themselves an unfair advantage.

Announcing the Winners of the 2nd Shamnad Basheer Essay Competition on IP Law!

In this post, we announced the winners of the 2nd Shamnad Basheer Essay Competition on IP Law. The first prize goes to Ramakash G Suriaprakash, from Tamil Nadu National Law University, Tiruchirappalli (batch of 2021), for their essay titled, ‘Inventions Seriously Prejudicing the Environment: Can the Precautionary Principle Offer a Way Out?’ The second prize goes to Devangini Rai, from University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University (batch of 2021), for their essay titled, ‘Infringement of Publicity Rights: An Intellectual Property Approach.’ The third prize goes to Shrudula Murthy, NALSAR University of Law, Hyderabad (batch of 2023), for their essay titled, ‘A Conflict of Rights: Public Photography, Copyright and Innovation.’

Parliamentary Standing Committee Report on IPR – a Regressive View

In this post, Rahul and I briefly highlighted some of the points and relevant excerpts from our Editorial piece for The Hindu (available behind a paywall here), discussing the Parliamentary Standing Committee Report on IPR in light of the State’s obligations as part of the Right to Education. We highlighted the nature of these obligations and the Committee’s discussion on the Delhi High Court’s landmark judgment in the DU photocopy case, wherein the Court [the Single Judge  and the Division Bench] adopted a robust understanding of the educational exception enumerated in the list of fair dealing provisions in Indian copyright law. We then went on to analyse the flaws in the Committee’s views in its discussion of the DU Photocopy case. We concluded that at a time of deepening socio-economic inequalities when educational needs should have been a priority, the Committee’s suggestions are regressive instead of forward looking.

Decisions from Indian Courts

  • The Chhattisgarh High Court in Bhupesh Goyal v. State of Chhattisgarh, dismissed the writ petition (criminal) noting that the facts on record make it clear that a prima facie offence is made against the petitioners for using the word ‘Chuski’ which infringes the trademark and copyright of the respondent, the owner of ‘Goyal Chuski Chai’. Thus, the Court held that prima facie the registration of FIR against the petitioners is not an abuse of the process of law which warrants interference by this Court. [August 27, 2021]
  • The Bombay High Court in Sholay Media Entertainment Pvt. Ltd. v. Narendra Hirawat and Co. & Ors., allowed the four appeals challenging the order passed by the Single Judge of the Court whereby two notices of motions taken out in the suits filed by the Plaintiff were allowed, and an injunction was granted against the Appellants. The plaintiffs in the suit had argued that the licences granted to the appellants were exclusive licences under the Copyright Act, 1957, with a special status. However, the Court noted that nothing had been shown to it from the provisions of the Copyright Actthat an exclusive licence, if given on certain terms and conditions, which are breached, cannot be terminated by the owner, holding that the plaintiff had failed to establish that it was and has always been ready and willing to perform an essential part of the terms of the contract. Thus, the Court held that the mandatory injunction granted by the Single Judge was inequitable. [August 26, 2021]
  • The Karnataka High Court in Kirloskar Aaf Limited v. M/S American Air Filters, partially allowed the appeal, setting aside the impugned Judgment passed by the Additional City Civil and Sessions Judge, Bengaluru insofar as it related to the direction to the first defendant to pay a sum of Rs.2,500/- per day from the date of the decree for the unauthorized use of Trade Mark and trade name of plaintiffs. [August 26, 2021]
  • The Bombay High Court in B4U Television Network India Ltd. v. Krupali Babubhai Savani, passed an ad-interim order holding that a prima facie case existed in favour of the plaintiffs. The Court noted that the defendant’s adoption of the mark B4U FASHION, of which the plaintiff is the registrant and prior user cannot be explained, and satisfies all three tests of passing off. [August 26, 2021]
  • The Bombay High Court in Reliance Industries Ltd. v. Ashok Kumar, passed an ad-interim order restraining the defendants from using in any manner in relation to their soap dish, sanitary fittings or any other like sanitary and hardware goods, the plaintiffs’ distinctive and prior used trademarks and copyright in JIO, pending the hearing and final disposal of the suit. [August 23, 2021]
  • The Bombay High Court in Sony Pictures Network India Pvt Ltd v. State of Maharashtra, stayed the investigation on a Pune Police FIR in which Karad Urban Co-operative Bank (KUCB) alleged that in the third episode of the web series, ‘Scam 1992: The Harshad Mehta story,’ which aired on SonyLIV App, a logo was displayed in the background which resembles its trademark, causing severe damage to its financial, commercial and social reputation. [August 23, 2021]
  • The Delhi High Court in Gujarat Cooperative Milk Marketing Federation Ltd & Anr v. Maruti Metals & Anr., granted an ex-parte ad-interim injunction in favour of the plaintiffs in a trademark infringement suit which alleged that the defendants were using a misleading mark i.e. ‘Amul Cookware’ for selling kitchenware and utensils, in violation of the plaintiff’s trade mark in Amul. [August 13, 2021]

Other News

  • According to Piyush Goyal, India’s Union Commerce & Industry Minister, India’s ranking in the Global Innovation Index rose to 48th in 2020 after a record number of patents were awarded in 2020-21 and 14.2 lakh trademarks were registered in the previous four years.
  • Zydus Cadila announced that it has received an Emergency Use Authorization (EUA) from Indian authorities to administer ZyCoV-D, the world’s first DNA-based COVID-19 vaccine, for adults and teenagers.
  • In an article for ORF Online, Sakthivel Selvaraj explores whether ‘Universal vaccination against COVID-19 in India is a global public good or a private commodity?’
  • In a patent case related to the anti-cancer pharmaceutical Imbruvica, a US District Court judgement against the drugmaker Natco Pharma and its marketing partner in the US, Alvogen Pine Brook LLC, USA, led to a dip in Natco Pharma’s stock price.
  • In an article for Bloomberg Quint, Susan Decker discusses the work of Prof. Ryan Abbot in putting man and machine on an equal footing when it comes to inventorship under international patent law regimes, in light of recent decisions on the issue by courts in Australia and South Africa.
  • A non-fungible token (NFT) marketplace has been launched by Alibaba Group of China, which permits customers to buy and sell NFTs while also facilitating licensing and selling of IP.
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