1. Bayer Corporation v. Union of India: In a very significant development, the Delhi High Court held that ‘export’ of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 (India’s Bolar exemption) and thus does not amount to patent infringement. It accordingly allowed Natco to export Bayer’s patented drug ‘Sorafenib Tosylate’ (for which it was granted a compulsory license in 2012) to China for the purpose of conducting development/ clinical studies and trials. However, two months later, the order was stayed by a Division Bench which asked Natco to file a separate application seeking permission for exporting the drug for experimental purposes and observed that it would be permitted to export only a limited quantity of the drug.
Del HC Allows Natco to Export Bayer’s Nexavar under the Bolar Exemption
2. Patel Field Marshal Agencies Ltd. v. PM Diesels Ltd. & Ors. : In a landmark decision, the Supreme Court conclusively settled an extremely important issue that whether, upon the institution of a suit for infringement under the Trademarks Act, the remedies for rectification of a trademark under Sections 47 and 57 (before the IPAB) are still available to the litigant, in case the plea of validity has been abandoned by the relevant litigant. The Supreme Court took note of the conflicting decisions of the various High Courts, and found that where the question of validity has not been taken up by the court, the statutory authority has the power to decide a rectification claim by the litigant. However, in a case where the court comes to a prima facieconclusion on validity, the only remedy available is an appeal.
(SpicyIP Duet) Aten, Hut! The SC Clarifies Law Regarding Rectification Proceedings
3. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. : In a notable development for Indian trademark law, the Supreme Court reiterated that IP rights are “territorial” and not “global”. The court refused to grant an injunction restraining the defendant from using its registered trademark ‘Prius’ even though Toyota was a prior user of the mark. It reasoned that even though Toyota’s mark was well-known outside India, Toyota failed to prove that it enjoyed a reputation in the ‘Indian’ market at the relevant point of time i.e. the year 2001 when the defendant began using the mark in India.
Breaking News: Toyota Loses Trademark Battle over Prius at Indian Supreme Court
4. Kent RO Systems Ltd. & Anr. v. Amit Kotak & Ors : In a welcome development, the Delhi Court ruled that there is no obligation on the intermediaries to screen content alleged to be violative of intellectual property laws before publishing the same (i.e. on an ex-ante basis). It, therefore, refused to direct E-bay to remove listings of water purifiers that allegedly infringed Kent RO’s registered design from its website or to issue a prohibitory injunction preventing E-bay from publishing the same in the future.
5. Thiagarajan Kumararaja v. M/s Capital Film Works and Anr. : The judgment filled up some of the void in the jurisprudence relating to the inter-play between the rights of the producer of a cinematographic film and that of the authors of underlying works. The Madras High Court, deciding on the question whether dubbing of a film into another language would fall foul of the rights of the scriptwriter, held that the producers have the right to replace the sound recording of the original film with a different language. The Court based its finding on an expansive reading of the phrase ‘communication to the public’ under Section 2(ff) and observed that ‘dubbing’ would fall under the said definition. The Court also observed that dubbing is distinct from translation, and the producer’s rights to communicate the film to the public, through dubbing, does not affect the rights of the author of the underlying script. Nevertheless, on the question of whether the right to communicate a film to the public includes the right to remake the film entirely, the Court answered the same in the negative as it felt that this would entail making changes to the underlying script, without the author’s consent.
Madras HC: Producer’s Right to ‘Communicate to the Public’ Includes the Right to Dub
6. Paramount Surgimed Ltd. v. Paramount Bed India Pvt. Ltd. : In a notable decision on the effect of misrepresentation in a suit, which seeks equitable reliefs, the Delhi High Court held that suppression or misrepresentation of facts in the plaint was fatal to a claim for equitable relief. The bigger takeaway from the decision is that even when the Plaintiff has registered a mark, dishonesty on its part would result in its right to claim equitable relief, including relief in the form of interim injunction, being rendered nugatory.
“PARAMOUNT” TM #Delhi HC #Clean Hands Doctrine #Equitable Reliefs
7. Neetu Singh v. Rajiv Saumitra : The judgment shed light into the relatively unchartered territory of Section 17 (c) of the Copyright Act and clarified that when the ownership of copyright is disputed between an employer and an employee, it is the terms of employment that have to be looked into. The Court went on to even clarify what is to be looked into to determine the terms of employment. For instance, in the case of a Director, it is any subsisting agreement, or the Articles of Association or the Memorandum of Association of the company. Relying on this principle, the Court held that in the instant case although the Plaintiff was working as a Director of the Defendant No. 2 company from 2012 to 2014, it noted that the Defendants had failed to prove that the literary work was authored as part of her duties and obligations as a Director and granted an injunction in favour of the Plaintiff.
Delhi HC Order Clarifies Aspects of Section 17 of the Copyright Act
8. Dashrath B. Rathod & Ors. v. Fox Star Studios India Pvt. Ltd. & Ors. : In yet another Justice Patel master class, the learned judge came down heavily on the tendency of parties to approach the court at the eleventh hour seeking injunction against impending movie releases. The judgment laid down in no uncertain words that the attempts to snatch last minute injunctions at the cost of putting both the opposite party and the court machinery under undue pressure should in no way be tolerated, especially when not even a prima facie case of copyright infringement was made out by the Plaintiff in the instant case. In a double whammy to the Plaintiff, who sought injunction against the release of the Defendant’s movie Phillauri, Justice Patel, relying on the provisions of the Commercial Courts Act, 2015, imposed a cost of Rs. 5,00,000 lakhs on the Plaintiff.
“Phillauri” Copyright Infringement Case #Lastminute Complainants
9. Anil Kapoor Film Co. Pvt. Ltd. v. Make My Day Entertainment & Anr. – In a very well-reasoned interim order, the Bombay High Court refused to grant an ad-interim injunction in a claim of passing off by the makers of the film ‘Veere Ki Wedding’ (under production) against the makers of the film ‘Veere Di Wedding’ (then soon to be released). The court noted that not only was the title (“Veere Di Wedding” translating into “My best friend’s wedding”) extremely common, the plaintiff needed to prove reputation through consumer recognition – i.e. the title should be associated with the public mind as referring only to the plaintiff’s work, which according to it was next to impossible in this case because the movie was not even in existence. It also rejected the argument on misrepresentation, clarifying that just by virtue of having a made a film with a similar title, the defendant cannot be said to have attempted to deceive the public.
10. Krishna Plastic Industries v. Controller of Patents and Designs & Anuradha Doval v. The Controller Of Patents And Designs & Ors. : In appeals against two orders of the Controller of Designs, the Calcutta High Court clarified some important aspects of the Designs Act, 2000, namely, the scope of ‘new and original design’ and the responsibility of the Controller in issuing orders. In the first judgment, inter alia, the court considered the distinction between a shape and configuration and a pattern or ornament, and opined that ornaments or patterns, particularly if pronounced (as in the case of grooves in a hot water bottle or markings on a chair) may also constitute a ‘shape or ornament’, applied upon an article, and asked the Deputy Controller to make a reasoned decision on the issue as to whether the surface pattern constitutes a shape, configuration, pattern or ornament. In the second judgment the court held that ‘in order to claim novelty, there has to be a significant change or difference in the design, although, it may have a common source.’ It further held that the Controller has the expertise to decide the matter of similarity between the two designs, and that the Appellate Court would not interfere with the Controller’s order unless it found that the Controller ‘proceeded on some wrong principle’.