[This weekly review is co-authored with SpicyIP intern Niranjana Biju. Niranjana is a second-year student pursuing B.A. LL.B. (Hons.) from NUALS, Kochi. She is keenly interested in exploring various fields in law, especially IP, TMT and dispute resolution.]
Here are the quick summaries of the 3 posts, 7 case summaries and other IP developments that took place last week. Important IP cases that we’re missing out on? Especially from other High Courts? Please let us know so we can include them!
Highlights of the week
Jab We Met (if at all): Do Patent Oppositions and Examination Run on a Parallel track? Delhi High Court to Examine
Do patent oppositions and examinations run on parallel tracks? Or are they adversarial in nature? The Delhi High Court explored the above two questions in the now stayed Single Judge order passed in the Natco v. Asst. Controller of Patents and Designs. Highlighting the key findings of the order, Praharsh discusses the questions now posed for appeal.
IP Financing in India – Part I: Perfection of Security and (Non) Registration of Copyright
Despite the increasing importance of intellectual property in the modern economy, there is a surprising lack of attention given to IP financing in India. This two-part guest post by Bharat Harne brings out the less-discussed Indian perspective on IP financing, with Part I dealing with the key issues to be addressed by a policy reform so as to encourage IP financing. The post explores the implications of a complicated security perfection regime and non-mandatory registration of copyright on IP financing.
IP Financing in India – Part II: The Supreme Court and (mis)interpretation of Banking Regulation Act, 1949
Part II of the two-part guest post by Bharat Harne on IP Financing in India focuses on the 2018 Supreme Court decision in Canara Bank v N.G. Subbaraya Setty & Anr that made some important observations on the use of trademarks as collateral. The judgment, while dealing with the issue of res judicata, restricted the use of intellectual property as collateral for financing transactions. Questioning this move of the Supreme Court, the post delves into the concept of legal assignment as followed in the United Kingdom.
Delhi High Court clarifies that an improvement to the combination of prior art is patentable.
Case: Biomoneta Research Vs Controller General of Patents Designs on 13 March 2023 (Delhi High Court)
The matter pertained to an appeal against the order of the controller rejecting a patent application for ‘Air Decontamination Assembly’. The respondent had rejected the application holding that the same does not meet the requirements of Section 2(1)(j) as the subject invention constitutes the elements of prior art(s) D2 with elements of D1 and D3. The court however, ruled this as a hindsight approach and instead emphasized that the subject invention is an improvement to the combination of prior art. The court relied on the EPO guideline on combinations, British Celanese Ltd. v. Courtaulds and Albert Woods and Amcolite v. Gowshall to hold that if the combination or a working interrelation produces a new and improved result, the subject matter is patentable. The court also considered secondary factors like size of the device, less maintenance cost etc. to hold that the subject invention is not a mere combination but is an inventive step.
Delhi High Court allows for placing additional documents on record before framing the issues.
Case: Bennett Coleman and Co. Ltd. v. ARG Outlier Media Pvt. Ltd. & Ors., on 6 March, 2023 (Delhi High Court)
In this case, the plaintiff, Bennett Coleman & Co. Ltd., filed an application to place additional documents on record, before framing the issues, against the defendants, ARG Outlier Media Pvt Ltd, which also included the examination reports of the Registry and the responses by the defendants regarding trademark/taglines that are the subject matter of the suit. The Court allowed the application and permitted the plaintiff to place the additional documents on record as despite the documents being available in the public domain at the time of filing of the suit, the need for filing the aforesaid documents arose only on account of the stand taken by the defendants in the written statement. Regarding the objection of the defendants that the documents related to Defendant No. 1 are not relevant since he was no longer a party to the suit was rejected since the aforesaid documents can be relevant for determining whether an incorrect stand has been taken by him or not. The defendants argued that these trademarks/taglines were descriptive in nature, but this was rebutted by the plaintiff in its replication.
Delhi High Court clarifies factors to be kept in mind while examining difference between suit design and prior art.
Case: Sirona Hygiene Pvt. Ltd. v. Amazon Seller Services Pvt. Ltd. on 14 March 2023 (Delhi High Court)
The case pertained to allegations of design infringement by Defendant no. 7 of the plaintiff’s registered design of urination device. The concerned defendant however, argued that the plaintiff’s design lacked novelty and is not original as another product ‘P-mate’, albeit different in shape, serves the same purpose and was existing in the market before the plaintiff’s design. The court held that two factors are to be kept in mind while examining whether the difference between the suit design and prior art are sufficient to impart novelty or not- first, the reason why the controller has regarded the design as novel and second, the purpose to which the article is put to use. The court held that the controller has expressly recognized that novelty in the suit design resides in its shape and configuration and thus, the difference in shape of the suit design and the prior art cannot be said to be minor or as mere trade variants.
Delhi High Court sets aside Controller’s order for rejecting application on the basis of grounds not mentioned in the FER and the notice of hearing.
Case: Satbir Singh vs Assistant Controller Of Patents on 15 March, 2023 (Delhi High Court)
The Delhi High Court allowed the appeal under Section 117A(2) against the Controller’s order. The controller had rejected the appellant’s application for lack of inventive steps [Section 2(1)(ja)] and for being a mere arrangement or re-arrangement, not amounting to technical advancement [Section 3(f)]. The appellant argued that both examination report and the notice of hearing were silent on the Section 3(f) objections and thus the impugned order should be set aside. Though the counsel for the Respondent submitted for the matter to be remanded for the purpose of affording an opportunity to the Appellant to meet with the objection under Section 3(f), the Court refused to do so as such a limited remand does not take into account the interlinkedness of both the objections.
Calcutta High Court relies on a Supreme Court ruling to hold that Hotels are “consumers” and not “Multiple System Operators”.
Case: Kishan Tibrewalla & Ors vs The State Of West Bengal & Anr on 20 March, 2023 (Calcutta High Court)
Admitting a revision petition, Calcutta High Court stayed the proceedings of a copyright infringement case lodged against the petitioner. The petitioner runs a hotel in Kolkata and was sued for broadcasting channels of Star Den Media Services Pvt. Ltd., MSM Discovery Pvt. Ltd. etc. through their cable TV network service without any written permission from the distributor. The petitioner however argued that they are the end user of TV network services operated through Cable TV Network and are thus consumers paying requisite charges to the Cable TV Network services. They further relied on the Supreme Court’s decision in the Hotel and Restaurant Association & Anr. Vs. Star India (P) Ltd. & Ors. wherein the court had held that hotels providing service of television and TV signals are “consumers” and not “Multiple System Operators”.
Calcutta High Court passes an ex-parte interim injunction order restricting Inreco from streaming songs of singer Jasdev Yamla.
Case: Inreco Entertainment Private Ltd. vs M/S. Nav Records Private on 17 March, 2023 (Calcutta High Court)
Calcutta High Court passed an ex-parte interim injunction order restricting the Defendant from streaming songs of singer Jasdev Yamla. The petitioner is a music company and claims to own copyright of the singer’s songs which were allegedly being streamed by the defendant. Though the matter was ex-parte the order notes that in response to the petitioner’s cease and desist notice the defendant requested the petitioner to come to Delhi to check the purported agreement by and between the respondents and the said “Jasdev Yamla”. However, no copy of the said agreement was shared with the petitioner.
Calcutta High Court delves on what can amount to “industrial process” with respect to GUI registration.
Case: Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs on 20 March, 2023 (Calcutta High Court)
Calcutta High Court remanded back the order rejecting the application for registering petitioner’s GUI’s design. The respondent had held that since GUI is visible only in ON mode or operating mode, it cannot be treated as a design. Furthermore, the respondent had held that GUI does not follow the process of industrial manufacturing and is mainly created by software development processing. The court, however, relied on the Locarno Classification and the 2021 amendments to the Designs Rules to hold that GUI’s can be registered. The court also held that design registrations can be applied to any internal or external features if they appeal to the eye and enhance aesthetic value. Since the subject GUI is a 2-D design, the novelty of the same can be judged by the eye as soon as the device is turned on. With regard to the finding on the absence of “industrial process”, the court held that application of GUI is via embedding source code in microprocessors and then displaying on screen of the device and thus the same can be regarded as “industrial process”.
Other IP developments
- Spotify removes Zee Music company’s catalog, including most streamed songs in a licensing dispute.
- Orissa Police arrests owner of Entertainment company, Pabitra Entertainment, for copyright violation in Bhubaneswar.
- Johnson & Johnson’s set to lose patent on bedaquiline, a drug used in curing TB, in July after the Indian Patent Office rejects its secondary patent application.
- “India currently holds 127 patents for 6G,” says Telecom Minister Ashwini Vaishnaw.
International IP developments
- The Weeknd Reaches Settlement in Copyright Infringement Lawsuit Over ‘Call Out My Name’.
- Internet Archive loses US copyright lawsuit relating to its digital book lending program.
- US judge overturns $469 mln verdict against Dish Network over streaming patents.
- EPO revokes Amgen antibody patent (for drug Repatha) amid ongoing battle with Sanofi.
- BlackBerry signs up to $900 million patent deal after sale to Catapult collapses.