SpicyIP Weekly Review (August 9 – 15)

Topical Highlight

Ensuring Access to TB drugs: Is Compulsory License the Way?

In this post, Rahul Bajaj and Praharsh Gour analayse the underutilisation of Indian patent law’s robust flexibilities to promote patient interest. They highlight that this failure is typified by the stark realities that have come to light in a pending public interest litigation before the Bombay High Court [BHC], regarding access to life saving drugs. They discuss the facts and figures surrounding multidrug-resistant tuberculosis in India as well as the prices of bedaquiline and delamanid required to cure it. They discuss the best potential route for a compulsory license under the Indian Patents Act, and the ways in which the government can make the best use of it. They note that the grant of a compulsory license does not translate into the transfer of knowhow from the patentee to the license and therefore, the transfer of knowhow should be made part of the licensing arrangement between the patentee and the licensee. Another factor that inhibits the government from using these levers is the fear of facing backlash from the Global North, especially the USTR’s 301 process. However, they argue that India can use the CL flexibility, safe in the knowledge that its actions are on a firm legal footing. They highlight that the Court can play a constructive role in this process by exacting accountability from the government and ensuring that it comes up with an action plan to secure the enjoyment of the right to health for TB patients who need the drugs at issue. They conclude that judicially nudged use of patent law levers is critical for the deployment of flexibilities in our patent law for TB patients who desperately need access to these drugs.

Thematic Highlight

Parliamentary Standing Committee’s Recommendations Concerning AI and IP: A Little Late or Way too Early?

In this post, Varsha Jhavar analyses the Parliamentary Standing Committee Report’s (hereinafter the Report) recommendations for ‘revisiting of IPR legislations and implementing a strong IPR framework’ in order to ‘extract benefits from AI’. She argues that the Report does propose a bigger picture, but falls short of discussing any real issues or providing any implementable suggestions. She analyses the Report’s recommendations pertaining to the amendment of patent laws in order to facilitate inventorship and ownership by AI. She notes that the terms ‘AI-generated works’ and ‘AI solutions’ have not been explained in the Report, even though it is pertinent to define and distinguish them. She questions the need for incentivising AI to encourage innovation since AI does not have the same motivations as humans do. She also highlights that other factor such as the AI’s human inventor’s incentivization, the employer’s interests are also important but the Report does not engage seriously with these questions. She also notes that it will be challenging to ensure that AI fulfils its obligations since the sanctions that work in the case of humans, won’t work on AI. She argues that ‘electronic persons’ or some other kind of sui generis legal status will have to be created in order to accommodate AI within the existing system. She notes that one of the changes to Indian Patent law could be to allow the employer to directly become the owner of his employee’s inventions, analogous to Section 17 under the Copyright Act, 1957. She also argues that in case it is concluded upon research that AI is capable of autonomously generating an invention, then the disclosure requirement will have to be reconsidered in order to accommodate the AI’s unique nature. She concludes that the Report’s recommendations, though well-intentioned, lack details and do not seem to be well-thought out.

Decisions from Indian Courts

  • The Delhi High Court in Krown Biscuit Pvt. Ltd. v. Richfield Industries Pvt. Ltd., held that the defendant’s trade dress/label WHITE MAGIK for its cream biscuits was deceptively similar to the plaintiff’s trademark BLACK MAGIC for its biscuits. The Court passed an interim order restraining the defendants from using the impugned trade dress/label or any other trade dress/label which is deceptively and confusingly similar to the plaintiffs’ trade dress/label. [6 August, 2021]
  • The Delhi High Court in Star India Pvt. Ltd. vs Moviesghar.Art & Ors., held that the plaintiffs had made out a prima facie case in their favour, and thus, restrained the defendants from communicating to the public, hosting, storing, reproducing, streaming, broadcasting, etc. the cinematograph film of the plaintiffs, ‘Bhuj: The Pride of India’ (available exclusively on their digital platform ‘Disney + Hotstar’), which would amount to infringement of the plaintiffs’ copyright and broadcast reproduction rights. [9 August, 2021]
  • The Bombay High Court in Franco-Indian Pharmaceuticals Pvt. Ltd v. Alencure Biotech Pvt. Ltd., granted ad-interim relief to the plaintiffs upon finding that a prima facie case and balance of convenience existed in their favour, and absent relief, irretrievable prejudice would be caused to them. The Court passed an ad interim injunction against the defendants, restraining them from using the trade mark GIAVIT for their medicines which is phonetically, structurally and visually similar to the plaintiff’s registered mark DIAVIT. [10 August, 2021]
  • The Delhi High Court in Sporta Technologies Pvt. Ltd. v. John Doe & Anr., held that the plaintiffs had made out a prima facie case, and granted ad interim relief in their favour, restraining the defendants from using the mark “mydream11” or any other mark which may be deceptively similar to the plaintiffs’ mark “DREAM11” as a trademark, trade name, domain name or otherwise on any social media platform or in any other manner which could amount to infringement or passing off of the plaintiffs’ marks. [9 August, 2021]
  • The Delhi High Court in Star India Pvt. Ltd. v. Yodesiserial.Su, granted ad interim relief in favour of the plaintiffs, restraining the defendants and their agents from communicating to the public, hosting, storing, reproducing, streaming, broadcasting, re-broadcasting or making available for viewing the 26 shows and films of the plaintiffs. The Court held that based on the material on record, prima facie, the plaintiff has subsisting copyright in respect of the 26 works enumerated in the plaint, and that defendant Nos. 1 to 48 are engaging in piracy of the plaintiff’s copyright and content. [9 August, 2021]
  • The Delhi High Court in Viacom18 Media Private Limited v. Www.Oreo-Tv.Com, held that the plaintiff had invested time, effort and money in acquiring the exclusive rights in the La Liga 2021, granting interim relief to the plaintiffs, and restraining the defendants from broadcasting/ communicating, telecasting, to subscribers or otherwise, through any means, the LA Liga 2021, whether through the plaintiffs’ Channels or platform or any other channel; or doing any other thing which is likely to lead to infringement of the exclusive rights of the plaintiff in the La Liga 2021. [9 August, 2021]
  • The Kolkata High Court in Ganesh Grains Ltd. v. Ganesh Department Stores, held that the petitioners established a prima facie case for issue of an injunction in respect of the trademark “GANESH” and are entitled to stop the respondents from using the said trademark for relevant goods, namely, Atta, Maida, Sooji, etc., until the Court is in a position to consider further facts on affidavits. [13 August, 2021]

News from India       

  • The Tribunals Reforms Bill, 2021, which proposes to abolish 9 appellate tribunals, including the Intellectual Property Appellate Board (IPAB), was passed by the Rajya Sabha.
  • The E-Register of Designs has been made available on the website of Controller General of Patents Designs and Trademarks and can be accessed here.
  • In an article for The Wire Science, ‘COVID Vaccines: Where Does India Truly Stand on the TRIPS Waiver?’, Priti Patnaik highlights that compulsory licences have long been opposed by the Indian government, and one of the major problems that the Indian government has yet to address is why it does not use pharmaceutical PSUs to manufacture pharmaceuticals and vaccines.
  • In an article for ET Prime, Sachin Dave notes that several multinationals and Indian technology companies are sparring over the applicability of tax over copyrighted software after a Supreme Court judgement held that payments made by local consumers for the purchase of software from foreign corporations or distributors cannot be taxed as royalty.
  • Editors of The Frontier Manipur, an independent news website, claimed that a bogus copyright complaint was being used to target their work.
  • PV Sindhu and her agency Baseline Ventures are suing over 20 firms for utilising her picture and name for moment-marketing purposes without her consent or authorisation.

Other News from Around the World

  • The World Trade Organisation (WTO) is gearing up for its 12th Ministerial Conference, which will take place in Geneva from November 30 to December 3. However, the difficulties in reaching an agreement on the manufacturing and distribution of Covid-19 vaccines, medications, and diagnostics geared at supporting an inclusive recovery is the most important task facing the WTO.
  • Guns N’ Roses has filed lawsuits in several tour venues, alleging that illicit peddlers deprive the band of revenue from sale of its merchandise, over which it owns a registered trade mark.
  • A District Judge in Waco, Texas, rejected Intel’s plea to reverse a $2.18 billion fine for infringing VLSI’s patents, according to Reuters.

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