This post has been co-authored with Gaurangi Kapoor, Ishant Jain and Swaraj Barooah
Wishing our readers a very happy and healthy new year! In line with our annual tradition, we take stock of the top IP developments that occurred in 2022.
This year, we have divided these developments into four categories:
a) Top 10 IP Judgments/Orders (Topicality/Impact)
b) Top 10 IP Judgments/Orders (Jurisprudence/Legal Lucidity)
c) Top 10 IP Legislative and Policy Related Developments, and
d) Other IP Developments
The decisions in the first category, i.e., Top 10 IP Cases/Judgments (Topicality/Impact) reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem etc. We’ve tried to represent a diversity of subject matter also in this list, so its a mixed bag of cases dealing with patents, trademarks, copyright law etc.
The decisions in the second category, i.e., Top 10 IP Cases/Judgments (Jurisprudence/Legal Lucidity) reflect those that we thought reflected a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive.
The third category lists out notable developments on the legislative and policy side and includes important amendments, proposals for amendments, release of policy notes and reports etc.
Cases on Topicality/Impact
1. M/s Knit Pro International vs The State of NCT of Delhi & Anr [Supreme Court of India]
In a chilling and significant development, the Supreme Court has ruled that offences under Section 63 of the Copyright Act 1957 (Act), having a term of imprisonment for six months to three years, shall be cognizable and non-bailable. This means that any person who knowingly infringes or abets infringement of a copyright or any other right under the Act can be arrested by the police without a warrant. For instance, a person can be arrested for sampling copyrighted music for a show. While the First Schedule of CrPC categorises offences with an imprisonment of less than three years separately from offences with an imprisonment of three years and more, the Supreme Court overlooked this distinction on the ground that such an interpretation will deter copyright infringers. The Court, however, has not given any proper reason for reaching this conclusion. One of the implications of criminalising copyright infringement to this extent is that it might pave another way for industries to weaponize copyright and threaten even legitimate users for permitted purposes.
2. Anil G Karkhanis v. Kirloskar Press [Bombay High Court]
In what may become the first instance of compulsory licensing of a literary work in India, Bombay High Court passed an order directing the Registrar of Copyright to issue a notice in the copyright journal and two newspapers regarding an application under Section 32 of the Copyright Act to translate Mira Behn’s autobiography ‘‘The Spirit’s Pilgrimage” from English to Marathi. Technically it appears that either Section 31A or Section 32 could’ve been used for this matter, it may turn out to be a valuable precedent that Section 32 has been utilised here, if it proceeds all the way. This is because unlike Section 31A, Section 32 can also be utilised when the original author/publisher is found and denies permission to translate into another language, so long as 7 years have passed from the first publication. The notice period concludes 120 days from the public notice (dated 26 October 2022) after which we will know whether this will pass on to a compulsory licence or not.
3. Knitpro International vs Examiner Of Trade Marks Through Registrars of Trademark [Delhi High Court]
In a problematic order dealing with shape marks, Delhi High Court noted that under the law of trademarks, the threshold for extending exclusive rights to the shape of a product is quite high and the registration for shape marks can only be granted if the concerned mark has acquired a secondary meaning. Alongside, the court held that, it has to be shown that the concerned shape mark is not the generic shape of the product, but rather is a distinctive shape. The issue with this reasoning of the court is that it sets up an additional threshold to the ones mandated by the legislature, while registering shape marks. The law allows for seeking registration on ‘proposed to be used basis’, however, by this decision such applications, which haven’t garnished any acquired distinctiveness, cannot frutify.
4. Kanishk Sinha And Another vs The Union Of India And Another [Calcutta High Court]
In an important case concerning the issue of patent linkage in a non-pharma sector, the division bench of Calcutta High Court refused to grant patent linkage to the Appellant holding that doing so in whatever form, would give a controlling handle to the writ petitioners beyond the legal remedies available to them under the Patent Act. The case concerned a writ petition filed against the order declining the Patentee’s request for linkage of the VAHAN e-Module for registration of electric vehicles, by the Secretary, Ministry of Road Transport & Highways. The court held that a grant for patent linkages would be subject to an assessment by the courts and will only be granted where a patentee can demonstrate clearly that the remedies under Patents Act, 1970 can truly not address the legal issues arising out of their case.
5. Nippon A&L Inc. v. Controller of Patents [Delhi High Court]
In a problematic decision concerning amendments to the patent claims, the Delhi High Court permitted amendment to the patent claims beyond its scope by deeming the amended claims to be a step down from ‘product-by-process’ claim to a ‘process claim.’ The court relied on a decision of the European Technical Board of Appeal (the “Board”) in one Konica/Sensitizing application in doing so. However, such a reliance on foreign authority can be deemed as erroneous since the decision in Konica is based on a substantively different legislation. Furthermore, Section 59 (1) of the Indian legislation does not permit such an understanding as it expressly states that the amended claim must fall wholly within the scope of a claim of the specification before the amendment.
6. Patil Automation v. Rakheja Engineers Pvt. Ltd. [Supreme Court of India]
Here, the Supreme Court clarified that pre-institution mediation under Section 12A of the Commercial Courts Act is mandatory and can only be done away with when the suit contemplates an urgent interim relief. The decision expressly stated that if the plaintiff does not follow the mediation process, the plaint can be rejected. While the court does not define what “urgent interim relief” will entail, one view is that an urgent case for interim relief will either show that infringement/ loss has already occurred or that fear of infringement/ loss is clear and imminent. In patent infringement cases, quia timet injunctions are based on threat of infringement and possible future injury, and thus in light of this decision it can be argued that since applications seeking quia timet actions are largely based on apprehensions, it may not be possible for the applicant seeking quia timet actions to establish urgency. Therefore, in light of the above understanding, the implication of this decision could mean that the patentee will ideally have to undergo mediation instead of seeking an quia timet injunction.
7. Kantara Varaha Roopam Controversy [Palakkad District Court, Kozhikode District Court, Kerala High Court]
One of the most talked about IP disputes of the year concerns the movie ‘Kantara’ and its song Varaha Roopam. Two separate rounds of litigation were instituted against the same party over the same cause of action. It was alleged that the song ‘Varaha Roopam’ infringes copyright of another song ‘Navarasam’. On basis of these allegations separate interim injunctions were granted by different courts restraining the movie’s release on OTT platform and directed takedown of the allegedly infringing song music apps. However, after the initial rounds of interim injunctions, the courts returned the respective plaints for the lack of jurisdiction, putting the dispute to an end.
8. Avery Dennison Corporation v. Controller of Patents & Designs [Delhi High Court]
In a landmark decision, the Delhi High Court held that mere simplicity in the invention will not deter it from patent protection. The court discussed different tests to determine the existence of the inventive step and lack of obviousness and held that these tests cannot be applied in a straitjacket manner. However, the court held that “one of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious.”
9. Jumeirah Beach Resort Llc vs Designarch Infrastructure Pvt Ltd. [Delhi High Court]
In a problematic order, the Delhi High Court presumed the power to direct the Trademark Registry to transfer 5 rectification applications, despite acknowledging that there is no provision in the Trademarks Act to do so. The court justified this on two grounds- 1) If the Registrar of the Trademark can ‘refer’ the matter to the court under Section 125 (2) of the Trademarks Act, why can’t the court ‘direct’ such a transfer when the connecting matters are already pending before the court; 2) The ultimate goal in all the commercial matters is an expeditious and meaningful disposal of the suits. However, in this “end justifies means” approach, the court missed out on discussing how the order is justified in light of the procedural laws and doctrine of separation of power.
10. Neetu Singh & Anr v. Telegram FZ LLC & Ors [Delhi High Court]
In an order clarifying the jurisdiction for intermediary liability under copyright infringement, the Delhi High Court held that its jurisdiction cannot be ousted merely on the ground that the data server containing information of copyright infringers is situated abroad. The court noted that the infringement was concentrated in Delhi since the copyrighted works were being circulated there and the materials contained preparatory content for Indian competitive examinations which is relevant to the Indian scenario since. Citing the Information Technology Intermediary Guidelines and Digital Media Ethics, 2021 (IT Guidelines) it stated that it is the duty of Telegram as a platform to take all effective steps required to protect IP rights, including rights of copyright owners.
Cases on Jurisprudence/Legal Lucidity
- ThyssenKrupp Rothe Erde Germany GmBH v. The Controller of Patents and Dr. Reddy’s Laboratories Limited & Anr v. The Controller of Patents [Delhi High Court]
This is a landmark decision clarifying the jurisdiction of high courts in hearing appeals against the orders of the IPO under Section 117A and revocation petitions, after the Tribunal Reforms Act, 2021. The Delhi High Court joined three matters of which two pertained to revocation applications ( Thyssenkrupp Rothe Erde Germany GMBH v. The Controller of Patents and Dr. Reddy’s Laboratories Limited & Anr. v. The Controller of Patents & Anr.) and the third one was an appeal under Section 117A of the Act. The court held that with regard to revocation applications both dynamic and static effect of the grant of the patent will come into play and thus stated that a revocation petition under Section 64 can be filed wherever the effect of the patent is felt. With regard to appeals under Section 117A, the court held that appeals challenging the order or direction of the Patent Office would lie before the High Court having territorial jurisdiction over the appropriate office.
2. FMC Corporation & Ors. vs Natco Pharma Limited [Delhi High Court]
In an important development, a Division Bench of the Delhi High Court, discussed the application of doctrine of equivalents on process patents. The present appeal arose from an impugned order where the Single Judge had refused to grant an interim relief against Defendant’s launch of Chlorantraniliprole (CTPR). The Division Bench modified the doctrine to apply on process patent matters by directing that first, the essential elements of the process need to be identified, and then the manner in which these elements interact with each other at each step needs to be observed. And, if this interaction of essential elements is similar in the competing methods, then only can the claim of infringement be sustained.
3. Nokia Technologies Oy vs Guangdong Oppo Mobile Telecommunications Corp Ltd. [Delhi High Court]
In a detailed decision, the Delhi High Court refused the request to pass an interim order, under Order XXXIX Rule 10 r/w Section 151 of the CPC, holding that the agreement between the parties was on a counter-licensing basis and does not indicate admission by the Defendant about any liability towards the Plaintiff. The Plaintiff had alleged that the Defendant is using its SEPs and therefore had sought directions from the court for the Defendant to deposit an amount which shall represent royalty at FRAND terms. However, the court, deferring to the communications between the parties, refused to acknowledge that there was unequivocal admission regarding the subject patents to be SEPs or that the rate of royalty sought by the Plaintiff was on FRAND terms.
4. Vishal Pipe Ltd. v. Bhavya Pipe Industry [Delhi High Court]
In a very precise order concerning the valuation of a suit and the appropriate forum to list the dispute, the Delhi High Court has clarified that all IPR matters, instituted before District Court should first be listed before the District Judge (Commercial). It further states that if the suit subject-matter IP is valued below 3 lakhs rupees, the District Judge (Commercial) will examine whether the valuation is correct or not. If the valuation is found to be below 3 lakhs rupees, the suit will be treated as a normal civil suit by the district commercial court. If the valuation is found to be above or equal to 3 lakhs rupees, the suit will be treated as a commercial suit as per Commercial Courts Act. It further clarified the specified value of the IP suit should be based on the market value of the subject matter IP and not that of the reliefs claimed. Subsequent to this case, a Division Bench of the Delhi High Court clarified that the provisions of the Commercial Courts (Amendment) Act, 2018 cannot be applied retrospectively.
5. Diageo Brands v. Alcobrew Distilleries [Delhi High Court]
In an extremely detailed order dealing with basics of designs law case, Delhi High Court refused to grant an interim injunction to the Plaintiff, holding that it has not been able to make a prima facie case of obvious or fraudulent imitation by the Defendant. In reaching the above conclusion the court relied on a plethora of decisions and held that comparisons between the competing designs have to be made by instructed eye, which is aware of the prior art and not the eye of an average consumer who will see the bottle on a shelf from a distance.
6. Bright Lifecare Pvt. Ltd Vs Vini Cosmetics Pvt. Ltd. & Anr, [Delhi High Court]
In a clearly worded order, the Delhi High Court held that protection under IP laws can be extended to an advertising campaign if it signifies source and becomes distinctive of the plaintiff. However, the court noted that the test for distinctiveness will be quite high. The court further opined that while there cannot be a monopoly over an idea of a muscular person working out in the gym, hitting a punching bag (subject matter of the Plaintiff’s commercial) the expression of the idea should be dissimilar. On the assessment of similarity, the court held that the assessment is not merely of the individual elements that have been alleged to be copied and whether these elements can be monopolised, but the overall effect of the Defendants commercial on an ordinary viewer is to be seen. Comparing the competing commercial, the court held that the Defendant’s expression is a colorable imitation of the Plaintiff’s advertising commercial and restrained the same from being available on YouTube.
7. Peps Industries Private Limited v. Kurlon Limited [Delhi High Court]
In an order clarifying the powers of courts to question the validity of trademarks, Delhi High Court held that it’s not within the ambit of the court to suo motu question the validity when the same is not disputed or brought in question. The present order came in the backdrop of an appeal against the Single Judge’s order, where despite the mark being registered and in continuous use, the court refused to grant an interim injunction on the ground that the mark “No Turn” was descriptive. The Division Bench set aside the impugned order and held that even descriptive marks can be registered if they have acquired distinctiveness. The court further noted that the single judge erred in giving a finding which was never raised in defence by the Defendant.
8. Frankfinn Aviation Service Private Limited v. Tata SIA Airlines [Delhi High Court]
In a very well reasoned order, the Delhi High Court vacated the ex-parte interim injunction granted against the Defendant, restraining it from using the phrase “Fly Higher”. The Plaintiff enjoys proprietorship over the mark ‘Fly High’ and approached the court to restrict the Defendant from using the phrase ‘Fly Higher’ for it being similar to its registered mark. While initially an ex-parte order was granted, the same was vacated after it was argued that both the parties operate in separate sectors and that the Defendant does not use ‘Fly Higher’ as a trademark but rather in conjunction with its registered well-known mark. The court held that the plaintiff’s trademark will not prohibit others from using it as an expression for the purpose of describing the characteristic feature of their product and when the defendant is using it in a descriptive sense and not as a trademark.
Highlighting the importance of claims in the patent prosecution process, the Delhi High Court clarified that the “unity of the invention”, “plurality of the invention” and whether they form a “single inventive concept” has to be determined from claims. The court clarified that the divisional application under Section 16 has to be an application that arises from a parent application disclosing a “plurality of inventions”. However, it further noted that ultimately the ‘plurality of inventions’ should be highlighted in the claims as “the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the ‘Claims‘.” Thus, the court opined that “if applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., ‘what is not claim is disclaimed’.” Read the two-part post on the case here and here.
In a landmark case concerning the fate of a trademark after winding up of the proprietor enterprise, the Karnataka High Court held that cessation of business does not destroy the goodwill established by the mark. The case concerned ownership of the mark ‘Yezdi’ which was registered by Ideal Jawa (India) Ltd. However, later the proprietor filed a winding-up petition and an Official Liquidator was appointed to look over the winding process. In 2007 the Registrar of Trademark removed the registration in favour of the company owing to non-payment of the renewal fees and subsequently in 2013 and 2014, Respondent no. 4 (Boman Irani) filed an application for registering Yezdi word and device marks. The court, rejecting the proprietorship of Respondent no. 4, noted that the goodwill of the mark will continue even when the registration of the trademark with regard to its proprietor is removed from the register. The court also held that once the property becomes custodia legis (in the custody of the court), no person can deal with the properties of the company in liquidation. On this basis, the court held that registration in favour of the Respondent no. 4 is null and void.
IP Legislative and Policy Developments
The Economic Advisory Council to the Prime Minister (EAC) suggested two ways to fast-track the process of granting patents. First, it suggested hiring more examiners; and second, limiting the timeline for filing pre-grant opposition to 6 months. As the post, argues fixing such short timelines for filing pre-grant oppositions sets a herculean challenge for the opponent to come up with a maintainable opposition. Furthermore, this doesn’t seem like a viable solution in light of the contributory delays by the parties in other formalities.
The Indian Patent Office put up three public notices pertaining to hearings during the patent prosecution stage. The first notice states that only the concerned patent agent or representative should represent a party before the controller. It also states that an advocate who is not a patent agent can appear before the controller if they are authorised by the party to represent it and during the hearing, they are accompanied by the party. The second notice states that a party shall be eligible for only 2 adjournments to the hearings and the hearing should be conducted within 10 days from the date of its notice/ intimation. The third notice states that parties seeking adjournment of the hearing must state the reasons for it.
Media reports surfaced that after the decision of the Supreme Court in Shreya Singhal v. Union of India, India has proposed a similar law during the negotiations of a proposed UN treaty on “countering the use of information and communications technologies for criminal purposes.” Shreya Singhal decision was discussed in detail on the blog here and here.
Bilaterals.org published a leaked draft of the India-UK FTA IP Chapter. Considering that there are no markups, it cannot be ascertained as to which provisions have been proposed/contested by the UK and which ones have been proposed/contested by India. However, the terms which have been presented in the leaked draft text contain excessively maximalist TRIPS-plus provisions.
Office of Controller General of Patents, Designs & Trademarks came out with ‘Guidelines for Accessibility and Reasonable Accommodations for Persons with Disabilities’ to facilitate accessibility and reasonable accommodations to PwDs practicing and interacting with IP Offices.
Jan Vishwas (Amendment of Provisions) Bill, 2022 was tabled before the Lok Sabha. The Bill proposes to amend 42 Acts to “to amend certain enactments for decriminalising and rationalising minor offences to further enhance trust-based governance for ease of living and doing business.” Of the notable amendments suggested, the bill recommends decriminalising the act of falsely representing a trade mark as registered and non-submission of a working statement.
8. Developments pertaining to Intellectual Property Division Benches
The Intellectual Property Division (IPD) of the Delhi High Court observed some key developments. First the high court notified the ‘Delhi High Court Intellectual Property Rights Division Rules 2022’ and the ‘High Court of Delhi Rules Governing Patent Suits 2022’ for the practice and procedure regarding appellate, original jurisdiction and other miscellaneous petitions arising and listed before the IPD. Then, the revised the roster of the IPD with Justice C. Hari Shankar, Justice Sanjeev Nirula and Justice Amit Bansal taking over the division from Justice Prathiba M. Singh, Justice Navin Chawla and Justice Jyoti Singh. Speaking of other courts, Calcutta High Court notified the nomenclature for IP matters with regard to Appeals and Original Applications/ Petitions for listing in the cause lists, which seems like the first step towards establishing an IPD-like arrangement in the Calcutta High Court. Additionally, Madras High Court has also established a committee comprising Justice M Sundar, Justice Abdul Quddhose and Justice Senthil Kumar Ramamoorthy, assisted by IP lawyers Shuba Shiny, Sathish Kumar and M S Bharath, to frame rules concerning cancellation actions and appeals transferred from IPAB to it.
Union Health Ministry published amendments to the Drug Rules, 1945 that inserts a clause in Rule 96 introducing the need to implement QR codes for ensuring authenticity and traceability for 300 common drug brands, including analgesics, vitamins, diabetes, and hypertension medicines etc.
MeitY published the Draft India Data Accessibility & Use Policy for public comments. One of the notable proposals of the policy is that the government data that has “undergone value addition/transformation” at the central level can be sold in the open market for an “appropriate price”.
Other IP Developments
After the Quad group discussion on the TRIPS waiver, the Ministerial Conference of the WTO subsequently issued a declaration, waiving the TRIPS provisions relating to patent rights. However, this decision is applicable to COVID-19 vaccines related patents. Parallel to this development. Moderna sued Pfizer alleging patent infringement of three out of eight patents that cover its Covid 19 vaccine (Spikevax). While at the outset this may seem like litigation between two private parties, the outcome has potential to have ramifications on the development and supply of mRNA vaccines globally.
Recently appeals have been filed before the Delhi High Court against 2 orders of the Indian Patent Office, whereby the patent applications were rejected on the grounds of Section 3(i). Section 3(i) states that patents cannot be granted to diagnostic methods, and on basis of this, the Controller has rejected the above applications. However, there is no clear interpretation on the patentability of diagnostic methods. The court perhaps agrees with this conundrum too and thus has appointed an amicus to assist in interpreting the provision.
3. WIPO members approve two diplomatic conferences on designs and genetic resources/TK protection.
It was highlighted that the Diplomatic conferences are negotiating rounds that can result in the adoption of multilateral treaties. The Design Treaty is to streamline global systems for protection of designs, whereas the genetic resources/ TK protection agreement aims at addressing intellectual property questions related to access to, use of and benefit-sharing in genetic resources, such as plants, animals and micro-organisms and associated TK.
Philip Morris’s and ITC’s patent applications concerning nicotine delivery devices were rejected by the Patent Office for falling under Section 3(b) i.e. invention being contrary to public order/morality/health.
Emphasising on the principle of ‘Common but Differentiated Responsibilities and Respective Capabilities’, India pushes for a dedicated fund for developing countries for biodiversity conservation at COP15 Montreal.
In a refreshing development, the Delhi High Court has taken aid of an academic expert, Prof Arul George Scaria to interpret Section 52(1)(za). The appointment of the academic expert took place for the case of Phonographic Performance Ltd v Lookpart Exhibitions and Events in which the Defendant has sought protection under the said provision for playing copyrighted works at social events and commercial venues. The matter was ultimately settled out of court (although the court did take the report on the record), and thus Punjab and Haryana High Court’s narrower interpretation of the provision in Novex Communications Pvt. Ltd. v. Union of India & Anr remains the latest judicial order on the controversy.
Kerala High Court took suo moto cognizance of a breast cancer drug’s (Ribociclib) unaffordability, following the unfortunate passing away of the petitioner who had earlier made a pleading for the government to use the Patent Act levers to curb the rising prices of it. The court had previously asked the government to make a reasoned order, however, owing to the State’s inaction the court took suo moto cognizance. Read the post on this development here.
8. Ladakh gets its first GI tag in Raktsey Karpo Apricot, taking the total number of GIs in India to 432.
9. High Courts’ stance on the need for reasoned orders from the Indian Patent Office (IPO) [Delhi and Bombay High Court]
Delhi High Court passed multiple orders reprimanding the Patent Office for its lackluster orders and directing it to reconsider the patent applications with reasoned and clear orders. The first instance is DS Biopharma Limited v. The Controller of Patents and Designs, where the court held that the IPO’s order must specify the ‘known substance’ while rejecting a patent application on the basis of Section 3(d). The second order was passed in Art Screw Co. Ltd. vs The Assistant Controller of Patents and Designs where the court set aside the IPO’s order for containing “reasons that no one can understand”. In a similar vein, Bombay High Court too reprimanded the IPO, in Ceres Intellectual Property Company Limited v/s Controller of Patents, for summarily dismissing a patent application on a method pertaining to atomic energy, without giving any substantial reasons. The court held this to be a violation of the principle of natural justice and directed the IPO to consider the matter afresh and pass an order on merits. See here, here and here for our posts on it.
Holding that a refusal to grant the trademark without even affording an opportunity to hear the applicant is contrary to the principle of natural justice, the Delhi High Court has asked the Controller General to devise a proper mechanism for holding show cause hearings. The court also prescribed essential features that the mechanism should have which notably included adopting a platform with an open link enabling more individuals to join the hearing at a time.