SpicyIP Weekly Review (July 26 – August 1)

Topical Highlight

A Parliamentary Standing Committee Report that Challenges the Fine Balances Within the IP System

In a guest post, Dr. Arul George Scaria writes about the macro and structural issues with the recently released Parliamentary Standing Committee Report on IPR. He notes the list of recommendations in the Report while highlighting the pro-industry nature of the same. The post focuses on three methodological flaws in the Report. Dr. Scaria points out that the Report lacks focused questions of enquiry and instead undertakes a superficial review of all IP laws in the country. Second, he notes the lack of extensive stakeholder consultation while drafting the Report. Third, he points out that the Report misses an opportunity to study urgent IP issues such as the ones concerning the COVID-19 pandemic in detail to facilitate informed debates. He concludes by noting the value of such reports in informing policy and decision-making and that without focused questions, extensive literature review, and extensive stakeholder consultation the Report fails to contribute towards making meaningful and balanced changes.

Thematic Highlights

Back from the Dead? Parliamentary Committee on IP Suggests Against Scrapping of IPAB

Praharsh wrote about the Parliamentary Standing Committee’s recommendation on reinstituting the IPAB. He first summarizes the Standing Committee Report’s recommendation on reinstitution of the IPAB with more structural autonomy and administrative reforms. In his analysis, Praharsh writes that since its inception the IPAB has struggled due to executive interference in member appointments and long vacancies in the Board. He also writes about the issues with the tribunal culture in India. He notes that the Report offers only a lip service recommendation to re-establish the Board without weighing in the pros and cons, and also without suggesting measures for a seamless revival of the IPAB.

Parliamentary Standing Committee and Copyright Reform: One Step Forward, Three Steps Back

Adyasha wrote about the Parliamentary Standing Committee’s recommendations on the copyright regime in India. Starting off with the copyright exceptions, she writes about how the Standing Committee Report views the exception to infringement under Section 52 as widely scoped and detrimental to the publishing industry and authors.  She discusses how this recommendation lacks nuance and showcases a myopic understanding of copyright law without consideration for the impact it would have on education and access. She notes that the recommendations adversely impact research and education avenues, especially during a pandemic, and threaten to reduce an already rigid Section 52(1) to a footnote in the proprietary copyright regime. Covering the other reforms suggested in the Report, Adyasha writes about the positive recommendation on community libraries, the rather out-of-place recommendation on studying the Berne Convention to create a copyright regime beneficial to the public and right-holders, the suggested extension of registration term of copyright societies from 5 to 10 years and the suggestion on inclusion of internet broadcasts within the meaning of Section 31D. She concludes by noting the superficial nature of the Report and its lack of explanatory reasoning and how it heavily favors right-holders’ interest over public interest.

Parliamentary Standing Committee Report on IPR: Tipping the Scales of Patent Law? Part I and II

Continuing our posts on the Parliamentary Standing Committee Report, I wrote a II-part post on the Report’s recommendations on patent law reform. In Part I, I covered the suggested amendments to Section 3 of the Patents Act which concerns the exclusion of certain subject matters from patent protection. The Report suggests amending Section 3(b), 3(c), and 3(j) to review the patentability norms concerning public order/morality, discovery of non-living substances and patenting plants and seeds respectively. I looked into the possible implications of further bringing down the number of exclusions from Section 3 and how over-extending monopoly rights would seriously impair accessibility.

In Part II, I looked at the amendments suggested to the procedural aspects of the Patents Act, which captures the Committee’s intention to direct changes that would increase patent filing in the country. The various reforms concern the patent application exam and the creation of specialized ADR forums for IP cases. I wrote about how the recommendations make a focused effort on speeding up timelines without giving much thought to the structural issues that plague the patent regime in the country. The Committee has focused on patent filing as the end-all of progress without consideration on how a robust R&D environment is required for fostering innovation. In conclusion, I note that the Report’s lack of justifications/evidence for these changes is concerning and that it over-emphasizes the role of patent protection in promoting innovation.

Other Posts

India’s Accession to the Locarno Agreement: Amendments to the Design Rules, 2001 & Other Impacts

In a guest post, Yashi Agrawal writes about India’s recent accession to the Locarno Agreement and its implications for India’s design laws. India formally acceded to the Locarno Agreement on June 7, 2019, and subsequently, the Design Rules, 2001 were amended in January 2021. Prior to the Locarno Agreement, design classification in India was based on product material and post acceding, all articles are classified in accordance with the Locarno Classification. Discussing the benefits of the accession to India, Yashi writes that in addition to aligning India with international norms, it also facilitates design searches and improves the chances of design registration applications being accepted in other jurisdictions. Yashi notes that accession to the Agreement is a further step forward to India’s innovation goals and with WIPO administering the Locarno Agreement, accession would also strengthen India’s relationship with the organisation.

Fonts and Typefaces: Are they Copyrightable?

In a guest post, Shivam Kaushik discusses the copyrightability of fonts and typefaces from an artistic work perspective under the Copyright Act, 1957. Shivam first addresses the argument that no copyright protection exists for fonts and states that, unlike the US position, in India severability of artistic aspects and utilitarian aspects of works is not a necessity to obtain copyright protection. He then discusses how Section 16 of the Copyright Act affects the copyrightability of fonts. Making a case for copyright protection for fonts, he proposes that highly artistic fonts that display originality of expression may be given protection to overcome the idea/expression dichotomy that affects this subject.

Call for Applications: Research Positions at Center for Communication Governance (CCG) at NLU, Delhi

We announced that National Law University, Delhi’s CCG is inviting applications for various research positions including full-time researchers and part-time consultants. CCG works with information law and policy and aims to contribute to improved governance and policy-making.  Details on the positions open, responsibilities, required qualifications and the application process can be viewed in the post here. The last date for applying is August 15, 2021.

Decisions from Indian Courts

  • The Bombay High Court in Siddhant Icecreams LLP v. Natural Ice Cream granted a time-limited ad-interim injunction in favor of the Plaintiff based on a prima facie case and balance of convenience as the Defendant had infringed upon the Plaintiff’s trademark in “Natural”. [July 26, 2021]
  • The Madras High Court in Praba’s V Care Health Clinic v. M/S I-Care Aesthetic Clinic refused to grant a perpetual injunction in favor of the Plaintiff and to restrain the Defendant from using the mark “I CARE” as the same did not infringe on the Plaintiff’s registered trademark “V CARE”. The Court noted that the mark used by the Defendant cannot be said to confuse or mislead consumers with respect to the Plaintiff’s products and services. [July 29, 2021]
  • The Madras High Court in Iceberg Walnut Foods v. Iceberg Icecreams dismissed a case of the Plaintiff seeking a permanent injunction against the Defendant for using the trademark “Iceberg” as the Plaintiff had attached the wrong party to the suit. [July 29, 2021]

News from India

  • India’s ambassador to the WTO stated that the COVID vaccine IP waiver negotiation deadlines could not be met due to the failure of a few members to engage with the text-based waiver negotiation.
  • Indian Kanoon reported receiving a notice under the DMCA for copyright infringement for uploading court judgments, in which no copyright persists.
  • The Union Minister for Commerce & Industry Piyush Goyal discussed ways to build a robust IPR regime and stated that IP awareness and reduction in IP filing fees for start-ups, MSMEs, and women entrepreneurs are expected to encourage innovation in India.
  • Union Minister Piyush Goyal also reviewed various initiatives undertaken by the Office of Controller General of Patents, Designs & Trade Marks and reiterated India’s commitment to bolster the ecosystem of patents, design, trademarks and GI systems.

Other News from Around the World

  • A German Federal Court ruled in favor of Lindt & Spruengli and accorded its gold bunny chocolate’s foil wrap trademark protection.
  • The UK High Court of Justice ruled in favor of InterDigital in a patent infringement case against Lenovo regarding a 4G LTE mobile networking technology.
  • The US Senate Judiciary Committee discussed four bills aimed at reducing drug prices for consumers. The bills intend to increase the Federal Trade Commission’s (FTC) powers to initiate actions against patent abuse by brand pharmaceutical companies.

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