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In Part I of this post, I highlighted the possible copyright and trade secret protection over the data mandated to be shared under the Revised Non-Personal Data (NPD) Governance Framework (the Report/Revised Report), and how the Report either overlooks or misunderstands these possible IP protections. In this part, I discuss the shortcomings in the Revised Report’s justifications for overriding IP protection and other rights over NPD. I also briefly explore alternatives to the Report’s heavy-handed regulatory architecture by turning to possible solutions within competition law.

Data as  a Property/Resource within A Community Rights Framework

The Report notes that there is no consistent precedent recognising trade secret protection over data in the form of property rights enforceable against third parties (9.4, Revised Report) However, as I had noted earlier, like English law, Indian courts have recognised that the duty of confidentiality extends to third parties, even without the existence of privity of contract. Moreover, although trade secrets are not protected as property, and crimes against property in the Indian Penal Code cannot be invoked for confidential information, the Indian Supreme Court has recognised the right to IP such as copyright to be covered under the principles of property ownership for the purposes of Article 19(1)(g) and Article 300A of the Constitution. This means that the Report underplays the availability of the right to protection of trade secrets enforceable against third parties.

The Report also argues for the state’s ability to exercise its eminent domain power over data despite trade secrets protection in any case (9.4, Revised Report). Eminent domain refers to the sovereign’s power to appropriate private property for public uses. In my post on the initial Report, I had highlighted concerns regarding accountability and misuse stemming from the government’s possible invocation of its eminent domain powers against private entities’ right to IP in the case of data acquisition.

Article 39(b) of the Constitution, a directive principle enshrining the state’s responsibility to distribute material resources of the community for common good, is cited in the Report as the constitutional justification for mandatory data sharing. The Report also relies on the Supreme Court’s judgment in State of Karnataka vs Ranganath Reddy, wherein ‘material resources of the community’ in Article 39(b) was interpreted to include “every thing of value or use in the material world”. The Committee notes that data resources are immensely valuable in today’s age and would fall within this broad interpretation (9.7, footnote 11, pg. 34, Revised Report). However, as noted here, the constitutionality of this justification is not settled as this interpretation of Article 39(b) is currently pending challenge before the Supreme Court in the case of Property Owners’ Association & Others vs State of Maharashtra & Others.

Alternatives to this Heavy-Handed Regulatory Architecture

This governance framework constitutes a deliberate design choice by the Committee to supplant the private market based on contractual rights with a heavy-handed regulatory architecture for access to certain NPD.

However, in a Medianama roundtable, Mr. Parminder Jeet Singh, a member of the Kris Gopalakrishnan Committee defended this heavy handedness by noting that mandatorily shared data has to be thought of as a layer of necessary infrastructure without which new players would be precluded from entering the market. This makes it seem like the Committee is addressing a competition law problem through the framework, without once referring to competition law or the tools that could be used to curb market power due to data monopolies under it.

It could be argued that in case of such market failure, a compulsory licensing framework tailored to data could be evolved which grants access against monopolisation of works. For instance, under the Copyright Act, the Intellectual Property Appellate Board (IPAB) ascertains the situations where a compulsory license may be granted on a case-by-case basis where there has been a market failure. Further, IPAB’s decisions can be appealed before the relevant High Court and even the Supreme Court, providing an effective appellate mechanism, which the NPDA does not provide.

The creation of a public law for data through the current framework is being justified by overstating the problem in private data marketplaces without exploring alternative solutions. Competition law could be useful for accessing data where a dataset is indispensable to enter an industry or a relevant market and sector-specific regulations can also facilitate access to data held by competitors and third parties.

For instance, in its Report in 2019, the Competition Law Review Committee, set up by the Government to suggest amendments to the Competition Act, highlighted concerns regarding the relationship between market power and control over data. It noted that the definition of ‘price’ under section 2(o) of the Competition Act, 2002 is broad enough to include non-monetary considerations such as data and preferences revealed to digital market players. Section 19(4)(b) of the Act, referring to ‘resources of the enterprise’, used to assess the dominance of firms, was interpreted as wide enough to include control over data. Section 19(4) was also regarded as being inclusive enough to consider ‘network effects’ as a relevant factor for the determination of a firm’s dominance. The CLRC also suggested the introduction of necessary thresholds to ensure that digital transactions involving asset light businesses causing an appreciable adverse effect on competition do not evade competition assessment.

Conclusion

As Vidushi Marda cautions in context of the Report, the proposed open access datasets will not be equally susceptible to exploitation by everyone. Madhavi Sunder and Anupam Chander call the belief that a resource in the public domain by force of law will be open to equal exploitation by all, “the romance of the public domain”. They emphasise the role played by knowledge, power, ability, wealth and access in making some persons more capable of exploiting the public domain than others. They take the example of Linux, an operating system rivalling Windows, whose creators refused to surrender all property rights in it and insisted on the GNU General Public License (GPL), which made it freely available for others to use, copy, modify etc., but ensured that subsequent derivations of the initial program were also distributed under the GPL. This is because the authors note that providing for programs in the public domain “entirely unencumbered by property claims would make them easily susceptible to propertization by others.” I have noted previously how this applies to traditional knowledge or ‘commons’ by highlighting the systemic advantages making certain constituencies more capable of profiting from the commons at the cost of others. Similarly, the compliance costs for the framework are likely to affect smaller Indian players more while the benefits of the same may be disproportionately reaped by a few software firms.

The current framework runs the risk of widening the gaps between the data trustee and the citizen, vesting authorities with excess power without realising its purported objective. Thus, there is a need to rethink the rationale behind the framework, accord fillips to smaller data businesses and tackle concentration of market power in data by exploring alternative solutions.

Hitting the (seemingly) final nail and ending the trail of extension requests, the Supreme Court via its order yesterday (12/02/2021 (pdf) ) dismissed the application seeking another extension to the tenure of the incumbent IPAB Chairperson. The application for extension was filed by the AIPPI (aka the International Association for the Protection of Intellectual Property) and was a part of a writ petition which was disposed of by the court after tagging it to Madras High Court Bar Association decision. Readers may recall that AIPPI is the same organization which had filed an earlier petition in 2019 through which the very first extension was granted to the incumbent Chairperson (Prashant has blogged about the petition and the subsequent extension here). 

The decision was given by a three judge bench comprising J. Nageshwar Rao, J. Hemant Gupta and J. S. Ravindra Bhat. While a detailed post assessing the implications of the judgement will follow soon, to quickly highlight in this post – the main points of  the decision center around clarifying the laws regarding the term of the IPAB Chairperson; the controversy surrounding the appointment of the incumbent Chairperson and clarifying that the Chairperson of the Board can also be a technical member. The last point above is especially interesting since it counters the reason for the first extension of the incumbent Chairperson via order dated 18.12.2019 i.e. “the post of Chairman of Intellectual Property Appellate Board (IPAB) cannot be allowed to be vacant.” Through the present decision, the court has suggested a solution to avoid the past situation of long vacancies in post of the Chairperson from raising up. We’ll expand on this in the coming post. 

An interesting fact surrounding this petition, is the head on collision between two gigantic IP organizations in India. As mentioned above, the petition was filed on behalf of the AIPPI, which proclaims to work towards development and improvement of laws for the protection of intellectual property. And on the other hand, among the multiple third parties which intervened in the present case one was Indian Drug Manufacturers Association (IDMA). While the judgement hasn’t named the organization specifically, an anonymous reader pointed out IDMA’s involvement in the dispute in a comment to a previous post. Now we know that the Indian courtrooms aren’t oblivious to such confrontations between organizations vouching for different levels of IP protection, for instance the DU Photocopy case, Novartis case, and the ongoing Sci-hub litigation, all have seen interventions by multiple non parties. However, such confrontations (until now) were limited largely to the substantive issues concerning the scope of intellectual property rights and interpretation of laws concerning them. This perhaps marks the first occasion where such organizations, representing different lobbies, locked horns with each other regarding appointment or rather re-appointment of a specific individual to a particular position. 

What happens to cases decided after the term had ended?

The petition at the heart of the decision was filed on 05.12.20 by AIPPI which is 26 days prior to the date of the incumbent Chairperson’s retirement. Subsequent to a few hearings, the application was listed, for the first time after the date of the incumbent Chairperson’s retirement, on 04.01.21 along with two other petitions (pdf). One of these other applications bearing number MA 2234/2020 in W.P.(C) No.279/2017, concerned extension of the incumbent Chairperson of a different tribunal (Telecom Disputes Settlement and Appellate Tribunal (TDSAT)). Interestingly, the court granted an extension of three months to the incumbent Chairperson of the TDSAT on the grounds of “peculiar facts and circumstances” of the case but did not make any mention of the above application by AIPPI! It must also be noted that no stay order was passed against the supposed effect of the Madras High Court Bar Association decision, by virtue of which the date of retirement of the incumbent Chairperson of the Board was fixed on 31.12.20. 

Therefore, in light of the above it is very unclear as to what is the authority by which the incumbent Chairperson has been hearing the matters, as recently as 12.02.2021. It also raises the question as to what shall be the fate of the matters disposed or even heard by the incumbent Chairperson in this duration? Given that the above decision by the Supreme Court seems to be silent on this, it may take further legal action to get some clarity on these questions.

Sidenote: I would like to thank one of our readers for pointing me towards the above order dated 04.01.2021. The reader wishes to remain anonymous. I would also like to thank Prashant for his inputs and comments. I would also like to point out that as per the IPAB cause list for 15.02.21, the incumbent Chairperson is still sitting on the bench and probably still hearing matters. 

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Just hours ago we broke the story about the Supreme Court judgement (pdf) dismissing the application seeking extension of the incumbent IPAB Chairperson and now we are in knowledge of an immensely interesting Draft Bill (pdf) introduced in the Lok Sabha which proposes to shut IPAB for good! The Bill was introduced the day before yesterday (11.02.2021) by the Union Finance Minister Ms. Nirmala Sitharaman, bearing the title “The Tribunals Reforms (Rationalisation And Conditions Of Service) Bill, 2021”. While seeking to dismantle the IPAB, the Bill proposes to transfer its powers to High Courts (for patent, trademarks, GI, Plant Varieties related issues) and to Commercial Courts (for copyright matters). (see here, here, here and here for the previous debate  between Prashant and Arun on scrapping/ keeping IPAB.)

Those of you who have followed the 2021 Union Budget, might be aware that the government sought to reform the tribunal system in the country to ensure “speedy justice”. The bill seems to be in furtherance of this endeavor. The Statement of Objects and Reasons of the proposed bill under para 3 and 4  accords the reasons for shutting down IPAB and 4 other appellate authorities and I am not surprised to see that they resonate well with the reasons which Prashant suggested in his posts here and here. The two para (s) are reproduced here for your reference:

3. In the second phase, analysis of data of the last three years has shown that tribunals in several sectors have not necessarily led to faster justice delivery and they are also at a considerable expense to the exchequer. The Hon’ble Supreme Court has deprecated the practice of tribunalisation of justice and filing of appeals directly from tribunals to the Supreme Court in many of its judgements, including S.P Sampath Kumar versus Union of India (1987) 1 SCC 124, L. Chandra Kumar versus Union of India (1997) 3 SCC 261, Roger Mathew versus South Indian Bank Limited (2020) 6 SCC 1 and Madras Bar Association versus Union of India and another (2020) SCC Online SC 962. Therefore, further streamlining of tribunals is considered necessary as it would save considerable expense to the exchequer and at the same time, lead to speedy delivery of justice. Accordingly, it is proposed to abolish some more tribunals and transfer the jurisdiction exercised by them to the High Court.
4. The tribunals that are proposed to be abolished in this phase are of the kind which handle cases in which public at large is not a litigant or those which neither take away any significant workload from High Courts which otherwise would have adjudicated such cases nor provide speedy disposal. Many cases do not achieve finality at the level of tribunals and are litigated further till High Courts and Supreme Court, especially those with significant implications. Therefore, these tribunals only add to another additional layer of litigation. Having a separate tribunal requires administrative action in terms of filling up of posts and such other matters, and any delay in such action further delays disposal of cases. Reducing the number of tribunals shall not only be beneficial for the public at large, reduce the burden on public exchequer, but also address the issue of shortage of supporting staff of tribunals and infrastructure.

Though the bill has only been proposed in the lower house as of now, I don’t think it will face any resistance in becoming an Act owing to the majority enjoyed by the NDA in both the houses of the Parliament. We are saving the discussion on the nitty gritties of the Bill for a later post along with the separate post on the above Supreme Court ruling, however, one cannot help but notice the uncanny coincidence that just the day after the proposal of this bill, the apex court dictates a judgement dismissing the request for extension of the incumbent Chairperson of the Board!

Topical Highlight

Breaking: Supreme Court Dismisses Application Seeking Extension of Justice Manmohan Singh as IPAB Chairperson

Praharsh informed our readers that this week the Supreme Court dismissed the AIPPI application seeking another extension to the tenure of the incumbent IPAB Chairperson. The application for extension was a part of a writ petition which was disposed of by the court after tagging it to Madras High Court Bar Association decision. Praharsh highlights the issues taken up by the court – the laws regarding the term of the IPAB Chairperson; the controversy surrounding the appointment of the incumbent Chairperson; and the clarification that the Chairperson of the Board can also be a technical member. He notes that along with AIPPI, the Indian Drug Manufacturers Association also intervened in this litigation making this the first occasion where such IP organizations, representing different lobbies, locked horns with each other regarding appointment of a specific individual to a particular position. He further points out that no stay order was passed against the supposed effect of the Madras High Court Bar Association decision (of which this is a part), which fixed the date of retirement of the incumbent Chairperson of the Board on 31.12.2020. Thus, it is unclear as to what is the authority by which the incumbent Chairperson has been hearing matters at the IPAB, as recently as 12.02.2021. The Supreme Court’s silence on the fate of the matters disposed or even heard by the incumbent Chairperson in this duration leaves a lot of uncertainty.

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Breaking: Finance Minister Proposes a Draft Bill in the Lower House to Shut IPAB

Praharsh also reported that a Draft “The Tribunals Reforms (Rationalisation And Conditions Of Service) Bill, 2021” has been introduced in Lok Sabha by the Union Finance Minister Ms. Nirmala Sitharaman, proposing to shut IPAB for good. The bill seems to be in furtherance of the government’s plan to reform the tribunal system in the country to ensure ‘speedy justice’, which was brought up in the Union Budget 2021. The Statement of Objects and Reasons of the proposed bill point towards this end, and are reproduced in the post.

Thematic Highlight

Revised Non-Personal Data Governance Framework and Intellectual Property Implications 

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In Part I, Anupriya discusses the revised NPD framework released in December. In this part, she raises concerns regarding possible copyright and trade secret protection over the data mandated to be shared and analyses the shortcomings of a community rights framework in the context of data. She observes that the recognition of ‘sovereign purpose’ as a legitimate ground to gain access to a combination of personal and non-personal data, without having the data scrutinised by the NPD Authority is dangerous. She also discusses the problems with sharing of data from the High Value Datasets for public good. Coming to the issue of copyright, she criticizes the Committee’s approach for failing to consider that a subset of a dataset in itself could also be a result of original compilation of data and thus enjoy copyright protection. Regarding trade secret protection, the report mandates that aggregate data be shared with data trustees who will create an HVD for public access. She criticizes this approach for taking a simplistic view of data trustees that may have been set up to further the interests of certain private sector entities. She also points out that the framework runs the risk of promoting regulatory arbitrage.

In Part II, Anupriya highlights the shortcomings in the Revised Report’s justifications for overriding IP protection and other rights over NPD. She notes that the Supreme Court has recognised the right to IP such as copyright to be covered under the principles of property ownership for the purposes of Article 19(1)(g) and Article 300A of the Constitution, something the Report has highly understated while discussing trade secret protection. She criticizes the invocation of eminent domain powers against private entities’ right to IP in the case of data acquisition, as well as the reliance on Article 39(b) of the Constitution, a directive principle enshrining the state’s responsibility to distribute material resources of the community for common good. To tackle the issue of competition barriers created by heavy data protection, Anupriya suggests that a compulsory licensing framework similar to the one present in the Copyright Act could be devised. The framework would be tailored to data to authorize access to data against monopolisation of works. She suggests that Competition law could be useful for accessing data where a dataset is indispensable to enter an industry or a relevant market and sector-specific regulations can also facilitate access to data held by competitors and third parties. She concludes that there is a need to rethink the framework, as it runs the risk of widening the gaps between the data trustee and the citizen, vesting authorities with excess power without realising its purported objective.

Other Posts

Can Celebrities be Sued for Posting Paparazzi Photographs of Themselves on Social Media?

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In a guest post, Manasa Venkatachalam examines the issues involved in suing celebrities for copyright infringement for posting unauthorized paparazzi photographs of themselves on social media, from an Indian perspective. She explains that in case of paparazzi photographs, the photographers are the owners under Section 17 of Copyright Act, and thus enjoy the exclusive right to commercially exploit it. The only possible exception to this right that a celebrity sharing her photograph may claim is that of ‘private or personal use’, under Section 52(1)(a). Relying on a Bombay high court case, she argues that due to the public character of the audience in social media posts, they may not enjoy this exception. Comparing this with the US copyright law, Manasa recounts Gigi Hadid’s lawsuit, where she claimed fair use exception for sharing a paparazzi photograph of herself and made arguments hinting that as the subject of the photograph, she is a joint author of the same. The case did not explore these arguments and thus left these questions unanswered. Manasa also examines the possible conflict between the photographer’s copyright and the right of publicity of the celebrity in question, and concludes that the former is likely to triumph over the latter. She concludes with the note that when it comes to celebrities sharing their own pictures on social media, the non-commercial use argument is quite weak as they earn immense revenue through social media engagement.

Other Developments

Decisions from Indian Courts

• A Delhi District Court in Samsonite IP Holding v. A. K. Prasad decreed a suit in favour of the Plaintiff passing a permanent injunction thereby restraining the Defendant, its associates, agents etc. from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing or using the impugned trademark AMERICAN TOURISTER or any other identical with and/ or deceptively similar word/mark/label/device to the plaintiff’s said trade mark/label in relation to their impugned goods and business of bags, suitcase, slings, and related/allied products and from doing any other acts or deeds which is amounting to infringement of trademarks and copyrights of the plaintiff as well as amounting to passing off the goods of the defendants as that of the plaintiff [February 8, 2021].
• Bombay High Court in Yogi Ayurvedic Products Pvt.Ltd v. The Yogi passed an ad-interim injunction restraining the Defendants from using the impugned trade mark ‘THE YOGI’ and/or from using the impugned website www.theyogi.store or any other trade mark deceptively similar to the Applicant’s well-known trade mark ‘YOGI’ so as to pass off or enable others to pass off the Respondents’ goods as and for that of the Applicant’s goods in any other manner whatsoever [February 8, 2021].
• Delhi High Court in Merck Sharp And Dohme Corp & Anr v. Chiral Biosciences Limited passed an order of ex parte ad interim injunction restraining the Defendant, its directors, employees, officers, servants, agents and all others acting for and on its behalf from manufacturing, using, selling, distributing. advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in either API or intermediates or any product, that infringes the claimed subject matter of the Plaintiffs’ Indian Patent No 209816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts, including Sitagliptin Phosphate Monohydrate [February 6, 2021].
• IPAB in Novartis AG v. Asst. Controller of Patents & Designs vacated the decision of the Asst. Controller to defer the pre-grant hearings till physical hearing starts, and directed the Asst. Controller to offer hearing through video confencing to all the parties in seriatim as clarified in earlier paragraphs, strictly following the directives and decide the matter on merit [February 3, 2021].
• IPAB in Allegro Pharmaceuticals v. Controller of Patents & Designs set aside the order of the Controller which had rejected the appellant’s application and ordered that the patent be granted on the amended set of claims [February 1, 2021].
• IPAB in Adrenomed AG v. Deputy Controller of Patents and Designs set aside the order of the Controller which had rejected the appellant’s application under Section 3(i) of the Patents Act, 1970 and ordered that the patent be granted on the amended set of claims [February 1, 2021].
• Bombay High Court in Siyaram Silk Mills Ltd v. Kaluram Gopal Sharma passed an ad-interim injunction restraining the Defendants from using the impugned mark SIYARAM’S and/or any mark and/or expression identical with and/or deceptively and/or confusingly similar in any manner to the mark SIYARAM, so as to infringe the Plaintiff’s registered trademarks [January 27, 2021].
• Bombay High Court in Ajanta Pharma Ltd v. I-Well Pharma passed an ad-interim injunction restraining the Defendants from using the Plaintiff’s trademark OLOPAT bearing Registration No. 1370425 in Class 05 by the use of the impugned trademarks OLPET and OLPET KT and/or any other trade mark deceptively similar to the Plaintiff’s registered trademark in respect of medicinal and pharmaceutical preparations [January 13, 2021].
• Bombay High Court in Rockwool International v. Sana Traders passed an ad-interim injunction restraining the Defendants from using in any manner in relation to ‘Inorganic Mining Products and Insulating Material in the shape of Loose Fibers, Bats, Mats or Tubes used in Buildings, Portable Buildings, Stone Monuments and Chimney Pots or any other goods contained in Class 19’ any mark identical with or deceptively similar to the Plaintiff No.1’s trade mark ROCKWOOL registered under No. 505844 in Class 19 so as to infringe the same [January 11, 2021].
• Bombay High Court in Franco Indian Pharmaceuticals v. Macphar Remedies passed an ad-interim injunction restraining the Defendants from using the Plaintiff’s trademark in any manner in relation to their medicinal and pharmaceutical preparations the trademark MACXORANGE or any mark identical and/or deceptively similar to the Applicant’s trademarks DEXORANGE registered under No.269335, DEXORANGE registered under No.469669, DEXORANGE PAEDIATRIC registered under No.480645, DEXORANGE PLUS registered under No.2478272 and DEXORANGE registered under No.2984819 all in class 05, so as to infringe the Applicant’s registered trademarks [January 8, 2021].
• Bombay High Court in Glenmark Pharmaceuticals Ltd v. Biowil Formulation passed an ad-interim injunction restraining the Defendants from using the impugned trade mark CANDISHINE or any other trade mark being deceptively similar to the Plaintiff’s trade mark CANDID and the CANDID series of marks so as to infringe the Plaintiff’s registered trade mark [December 28, 2020].
• Calcutta High Court in Shambhu Nath And Brothers & Ors v. Ram Karan Yadav passed an ad-interim injunction restraining the respondent from infringing the petitioners’ registered trademark TOOFAN by manufacturing, selling, marketing, advertising in print or electronic media or internet or distributing or otherwise dealing in fans of electrical goods or goods falling under class 11 and/or any other goods under the offending mark or TOOFUN under any other mark which is identical with and/or deceptively similar to the petitioners’ registered mark TOOFAN in any manner [September 18, 2020].

Other News

• Draft Patents (Amendment) Rules, 2021 was published in the Gazette of India.

• Twitter logo

  Twitter blocked hundreds of accounts flagged by the Ministry of Electronics and Information Technology after being held for non-compliance.

• Farmers from the Hati area of Sirmaur district in Himachal are trying to obtain a Geographical Indication tag for their unique “ginger powder” grown in the Bella Valley.
• A US trade panel has ruled in favour of South Korean battery maker LG Energy Solution Ltd, in a trade secret case and issued a 10-year import ban on some lithium-ion battery products by SK Innovation Co.
• After a two year battle, Meghan Markle has won a privacy case against a British tabloid over its publication of a letter she wrote to her father.
• The Supreme Court of Russia has rendered a decision affirming the legal protection of sculptures as self-standing copyright works within a monument.
• The Government of Canada has launched a public consultation discussing the extension of its general copyright term of protection from 50 to 70 years after the life of the author.

We have received a lead from one of our readers on an issue regarding the filing of working statements (Form 27) as per the amendments made to Patent Rules, 2003 in October last year.

The Patent Rules, 2003 require patentees as well as patent licensees to file a statement disclosing information regarding the extent to which the patented invention has been worked in India on a commercial scale. The format for this statement is Form 27, provided in the Second Schedule of the Rules. In October 2020, the Government notified the Patent (Amendment) Rules 2020 (‘Amendment’) which considerably altered the patent working disclosure norms by bringing forth a revised version of Form 27. In an earlier post, Pankhuri has analysed the revised Form 27 in depth. A table comparing the revised form to the original form can be viewed here.

Among the many significant changes, is the amendment to Rule 131(2), which shifts the time period for which the statements are to be filed, from ‘calendar’ year to ‘financial’ year. Thus, patentees are now required to file their working statements for the period from 1st April to 31st March as opposed to 1st January to 31st December as required earlier. While no explanation has been provided, this may have been done to align with the timeline followed by Indian companies and firms for preparing financial statements, as they usually observe an April-March financial year. The time provided to file the statements has also been increased from 3 months to 6 months from the end of the year, thereby pushing the deadline for submission to 30th September.

However, a practical issue has arisen due to the switch from the calendar year system to the financial year system that would inevitably happen in the current cycle. No clarity is offered on how the timelines are to be followed during this switch. The Amendment came into effect immediately, i.e., from 19th October 2020. At this point, patentees had submitted the working statements for the year 2019 as per the calendar year system (January 2019 – December 2019) and had entered into the new cycle for year 2020. Due to the Amendment coming into force midway, the next set of working statements due would be for the period of April 2020 to March 2021, followed by April 2021 to March 2022, and so forth. This leaves a gaping hole in the timelines – the first quarter of 2020, for which no instructions have been provided.

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There are three possibilities that can be imagined:

First, the switch is observed from 2019 itself and statements are sought for April 2019-March 2020, leading to a huge 9 month overlap for the time frame between April-December 2019. This would be onerous and lead to avoidable duplication of efforts. Thus, it is highly unlikely that the government would seek this.

Second, the three month period of January-March 2020 may be skipped altogether and statements filed directly from April 2020-March 2021. While this would offer no inconvenience to the companies and firms, it appears improbable that the Government would entirely do away with the disclosure requirement for a whole quarter simply for convenience during the switching process. After all, the disclosure of patent working details is mandatory under Section 146 of the Patent Act, 1970. Rule 131(2) and Form 27 merely provide the means to facilitate this disclosure.

Third and final possibility is that the Patent Office may seek a separate working statement covering only January-March 2020 to be submitted in addition to the statements for the Financial Year April 2020 – March 2021. If this route is followed, the Patent Office would additionally have to clarify the deadline for this quarterly statement’s submission. The 6 month deadline brought in force by the Amendment would have ended on 30 September 2020 for this period and is therefore frustrated.

The one clarity that the Amendment does provide is that for newly granted patents, the working statements become due from the financial year following the one in which they were granted. So, for patents granted between January-March 2019, working statements must be filed from the Financial Year 19-20 onwards.

However, the lack of clarity for the rest of the patentees has created a lot of uncertainty, particularly as the Financial Year 20-21 is drawing to a close. Moreover, Section 122 of the Patent Act, 1970 lays down a penalty of fine up 10 lakhs for non-compliance with the disclosure requirements. With Form 27 amended for the first time since its introduction many years ago, there is no precedent which may be expected to be followed in the present case. The Patent Office or the Department for Promotion of Industry and Internal Trade must issue a clarification as soon as possible.

Readers who might have any information as to how this situation is to be handled are welcome to share the same through comments.

We’re pleased to bring to you a three-part guest post by our former blogger Aparajita Lath, tracing the birth and early life of the Indian Trade Marks Register. Part I of the post can be viewed below and Parts II and III can be read here and here.

Aparajita is a lawyer based in Bangalore. Her previous posts on the blog can be viewed here, here and here.

The Grand Old Indian Trade Marks Register: Episode 1 (1877- 1881)

 Aparajita Lath

The Indian Trade Marks Register is now 80 years old. Established in 1940, this register ‘institutionalized’ trademark protection in India. The rules of this institution have lived long. Before analyzing whether they lived well, the following three posts will be dedicated to tracing the birth and early life of this institution. This post will cover the first phase of legislative activity. The subsequent posts (see here and here) will attempt to examine the change in commercial opinion from  ‘no registration’ to  ‘pro registration’.

Archival material reveals that the creation of such a system was no easy task. Opinions differed and often changed. Even powerful commercial associations were hot and cold, yes and no, in and out, in their decisions.

It all formally started in 1879 (informal negotiations appear to have started in 1877). A Trade Marks Bill was introduced before the Council of the Governor General of India, on the wishes of the Bombay Chamber of Commerce and Millowners Association, Bombay. Similar legislative activity had just wrapped up, or so it was hoped, in England with the passage of the Trade Marks Registration Act, 1875. Prior to this enactment, English trademark law was fragmented. In the absence of a centralized law on registration, common law remedies, criminal remedies and trade specific laws made up the legal landscape. Trademarks for cutlery ware in Hallamshire were protected by registration with the Cutlers Company of Sheffield. The Cutlers Company of Sheffield would later play a significant role in influencing Indian law and policy on trademarks.

In the absence of a law on registration, Indian commercial and mercantile communities set up their own regulatory order. For instance, in 1886, the Millowners Association, Bombay passed a resolution where members agreed to register all their trademarks in the books of the association. All rights were to be established only through registration. Rules were put in place and disputes were to be resolved by arbitrators.

The need, however, was felt for a government law on this subject especially since manufacture, particularly cotton manufacture, was increasing in India. While common law afforded protection to reputation / goodwill generated from the use of trademarks, such actions were cumbersome. Owners of trademarks were on the backfoot since rights to a trademark were confirmed, in individual cases, by a particular set of circumstances. It was hoped that a registration system would transform trademark protection. It would assist in establishing property rights upfront, serve as notice to other traders, cheapen and also reduce trademark disputes.

In 1879, a bill was therefore proposed, along the lines of the 1875 Act in England, for establishing a centralised trade-marks registry in Calcutta. This was a convenient location for administrative reasons since the patents registry had already been set up there. The bill specified that there would be no action for trademark infringement unless a trademark was registered. Despite the enhanced protection granted by a registration system, this bill would not see the light of day. It was abruptly withdrawn, around 1881, on the recommendation of the associations on whose behest the bill was introduced in the first place. This recommendation was also endorsed by other leading commercial associations in India. Suddenly, they were all of the opinion that a centralised registration system and a legislation was not necessary and may even prove to be inconvenient. Were they wrong when it was right? Read Part II of the post to know more about the reasons for this change of heart.

*References

Abstract of the proceedings before the Council of the Governor General of India on the Trade Marks Bill, 1879 (here)

Annual General Meeting of the Millowners Association, Bombay, 1886 (here)

Referred to Lionel Bently and David Higgins in ‘Trade marks and brands: An interdisciplinary critique’, generally for a background on the historical developments in the English trademarks system.

In Part I of this three-part guest post tracing the birth and early life of the Indian Trade Marks Register, Aparajita discussed the first phase of legislative activity. In Part II (below) and Part III (here) of the post, she examines the change in commercial opinion from ‘no registration’ to ‘pro registration’.

Aparajita is a lawyer based in Bangalore. Her previous posts on the blog can be viewed here, here and here.

The Grand Old Indian Trade Marks Register: Episode 2 (1881-1920s)

 Aparajita Lath

As discussed in Part I of this post, a bill for establishing a nation-wide trademark registration system was introduced in 1879 but was quickly withdrawn. Initially, it was felt that registration would transform trademark protection as registration would increase certainty regarding ownership of trademarks, serve as notice to others reducing use of similar marks, establish property rights in the trademark itself, and all this would help reduce and maybe even cheapen trademark disputes. Despite this promised transformation of rights, the commercial community recommended the withdrawal of the bill that proposed the establishment of a nation-wide trademark legislation.

Why did the commercial community change their mind? Some of reasons are documented in letters exchanged between the Governor General of India in Council and Secretary of State for India, London between 1903 and 1909. During this period, the Cutler’s Company of Sheffield and the Association of Chamber of Commerce of UK urged that a legislation should be undertaken in India, along the lines of the English statute. This prompted the London office to refer the matter to the India office and the local chambers of commerce for their opinions. The Indian commercial community had quickly realised that such a law would be positively disadvantageous to them and resisted its passage. Such a law was inherently international in character and its implementation created uncertainties regarding rights of Indian traders and merchants.

While Indian manufacturing was on the rise, British made goods (especially cotton and cloth) dominated the Indian bazaars. During this period, it appears that separation between production and distribution had emerged in England. Many British firms were still too small to engage in both manufacture and distribution of their products. Therefore, independent merchants were engaged for distribution. Merchants either used their own trademarks or sometimes continued to use the same mark as the manufacturer. It appears that the same mark could be owned by one person in England and by another in India (presumably a merchant). There was therefore uncertainty on how English trademarks would be registered in India. Would they be deemed to be registered in India as a matter of course or would they have to be re-registered? Neither option seemed viable. If they were automatically considered to be registered, this would create conflicting rights in India. The second option of re-registration of English trademarks was also considered unviable. This process would be expensive and would require addressing complicated questions regarding priority of user. Further, from an implementation perspective, it was observed that no expert staff was available in India to scrutinise applications and the expenditure would be considerable.

The other solution of Indian trademarks being registered and governed by the English statute was also rejected. The fear was that most Indian trademarks, however well-known in the Indian market, were not distinctive enough to qualify as ‘trademarks’ as defined under the English statue and would therefore be refused registration. Any distinctive element, if added to the trademark, would destroy its identity and therefore deplete its value.

Further, special difficulties were highlighted in the cotton and cloth markets. There had emerged multiple brands with only small differences between each. Such a market would not fit well within a registration system that was intended to create exclusive property rights for unique marks that did not overlap. It would therefore be complicated and expensive to include this class of goods within a system of registration.

There was also growing concern that use based protection granted to unregistered trademarks would be abolished. Similar concerns and confusion prevailed in England after the passage of 1875 Act. This matter was put to rest only in 1905 when the law in England was amended to clarify that unregistered trademarks would continue to be protected under common law.

The requirement of such a system in India was also questioned. It was observed that England would benefit from such a system as the right of ownership of the original mark was the most difficult question that came up and registration was of great value to facilitate proof of title. The situation in India was very different. It was argued that the question of ownership of the original mark was rarely raised. The primary concern in India was whether or not the mark in question was an imitation of the original mark. This was a question of fact, to be decided on a case to case basis, on the common law principles of likelihood of confusion. A system of registration was considered to be of no service for this.

Questions regarding the adoption of a registration system continued to be ventilated in the country for several years. By 1883, trademarks had been classified as industrial property and a multilateral treaty for the protection of industrial property had been signed. Surprisingly, despite the pressure, the commercial and mercantile community did not change their opinion for a very long time. They permitted the passage of the Merchandise Marks Act, 1889 that amended trademark provisions of the Indian Penal Code. With this legislation, trademarks registered in England were protected in India against fraudulent application and use. However, since there was no central registration system, rights to a trade mark continued to be acquired only through use till as late as 1940. The next and final part of this post will attempt to analyse the changes that may have triggered the requirement and final passage of a comprehensive trademarks legislation in India.

*References

The Annual Report of the Millowners Association Bombay, 1909 annexes copies of the correspondence between the Indian and London offices on the subject of trademark registration (here)

In Part I of this three-part guest post tracing the birth and early life of the Indian Trade Marks Register, Aparajita discussed the first phase of legislative activity. In Part II (here) and Part III (below) of the post, she examines the change in commercial opinion from ‘no registration’ to ‘pro registration’.

Aparajita is a lawyer based in Bangalore. Her previous posts on the blog can be viewed here, here and here.

The Grand Old Indian Trademarks Register: Episode 3 (1920-1940)

Aparajita Lath

A country with strong commercial interests like India somehow managed without registered trademarks till 1940. As discussed in Part I and Part II of this post (here and here), the proposal for registration based rights tempted the commercial community at first, but was later discouraged. However, by 1920s, commercial opinion bounced back in favour of registered trademarks. The reasons for this change in opinion is unclear as the report of the Select Committee that considered the Trade Marks Bill in 1939 does not appear to be available online, nor it is with the TMR nor with the Lok Sabha digital library. The change may, however, be inferred from certain changes in the commercial landscape.

By 1939, the cloth and cotton markets were no longer dominated by British goods. The annual reports of the Millowners Association, Bombay show that these markets were now dominated by Indian and Japanese goods. The start of the second world also led to a speculative rise in demand for goods. The abnormal demand due to war, led to an increase in deliveries from mills to go-downs. It was in this setting that the Trade Marks Bill for the establishment of a comprehensive trademark registration system was discussed once again in 1940.

The reported increase in Indian manufacture was repeatedly highlighted in the Council of State debates on the Trade Marks Bill in 1940. It was observed that the Indian economy in 1940 consisted of two subsets. One, the ‘old village economy’ and the other, large scale industries. In the village economy, makers of goods were in direct contact with consumers and relied on personal contact to market and sell goods. Trademarks were less important in this economy. Large scale industries, on the other hand, were unable to personally contact consumers and therefore a gap emerged between makers of goods and consumers. Trademarks were valuable to large scale manufacturers as they were substitutes for personal contact. Trademarks would also satisfy consumers that a particular product was of a particular make and standard and consumers would ‘refuse all substitutes’.

With the increase in manufacture and a growing customer base, emerging large-scale enterprises had succeeded in creating a reputation in the market. Consequently, trademarks of established enterprises became reputed through use. It appears from the discussions on this bill that unpleasantness between traders over use of similar trademarks was on the rise. So much so, trademark suits originally filed in subordinate courts were being transferred to high courts on the grounds that such cases were of ‘great general importance to the manufacturing community’. For instance, such a transfer happened in the case of The Swadeshi Mills Co. v. Juggi Lala in 1926. The plaintiff, Swadeshi Mills, had established their business in 1900. Their business had grown and by 1922 the value of goods manufactured by them was over rupees 800 lakhs. The plaintiff alleged that the defendant’s use of a similar lotus trademark ate into 9% of their profits. Apparently, the sale of the plaintiff’s goods (with the lotus trademark) steadily rose till 1924. From 1924 the plaintiff observed a sharp decline in the sale of their goods (from rupees 58 lakhs to just 37 lakhs). Around the same time, they realized that the defendant had entered their market with a similar trademark selling similar goods. In a short period of three years, the defendant is said to have sold goods worth rupees 32 lakhs.

With markets being cut and possible profits being eaten, the established commercial community appears to have changed their opinion on the requirement of registered trademarks. The debates before the Council of State throw light on the fact that there was growing uncertainty on ownership of trademarks. The discussions also highlight that the absence of a centralized and consolidated list of trademarks created an information gap which increased disputes. A registration system was now believed to be the solution – to establish certainty, reduce disputes and cheapen litigation.

By this time, some of the concerns that were initially raised regarding a consolidated government register also seem to have been addressed. To protect the interests of Indian enterprises and avoid disputes concerning conflicting foreign marks, the 1940 Act provided a head-start period of six months for Indian trademarks to be registered. After which, the government was empowered to make reciprocal arrangements with countries for registration of foreign trademarks, on a case to case basis. To address complexities specific to trademarks used in the cotton and cloth markets, the Act proposed special provisions for textile marks. Given a high concentration of mills in Bombay, a branch office was established in Bombay for administrative convenience (the main office being in Calcutta). Concerns regarding the status of unregistered trademarks were also addressed by recognizing common law rights.

After many long years and much debate, the first, comprehensive law that established a nation-wide system of trade mark registration came into being in 1940. From receiving around three thousand trademarks applications in 1956, the Trade Marks Registry received more than three lakh trademark applications in 2018-2019. Faith in this institution has surely increased over time.

Heard it through the grapevine and saw in the causelist that Retd. Justice Manmohan Singh is still holding hearings in the IPAB and passing orders. Just a couple of days ago we reported that the application for Justice Singh’s extension as the IPAB Chairperson was rejected by the Supreme Court. The Court in its judgement (pdf) expressly noted that the tenure of the incumbent Chairperson ended on 21.09.2019 and further rejected the notion that the incumbent must remain as the Chairperson by virtue of being the sole judicial member of the Board. However, despite the above decision, it is unclear as to what is the authority by which hearings are still being held by the incumbent. In this post I shall assess the key pointers from the above decision of the Supreme Court.

Background 

The petitioner AIPPI filed a miscellaneous petition before the Supreme Court seeking directions that till a new Chairperson of the IPAB is appointed, the incumbent should continue to function as Chairperson. To this regard the petitioner raised three arguments

1) The incumbent Chairperson is eligible to hold the office by the virtue of Section 89A of the Trademark Act, 1999 which states that the tenure of office and maximum age of retirement would be governed by Section 184 of the Finance Act, 2017; 

2) The incumbent Chairperson continued to remain in office by the decision of the Court in Rojer Mathew case; 

 3) If the tenure of the incumbent is not extended then the Board will be unable to function as it will be without a judicial member.

The Supreme Court rejected the application for the extension and clarified the position of the law on the tenure of the Board’s Chairperson. The Court also negated the assumption that the Chairperson is a judicial member or that only a judicial member is capable of becoming the Chairperson. For ease of reference I have drawn a flowchart (pdf) of events surrounding the case.

Extension of the incumbent Chairperson under Section 89A of the Trademark Act, 1999 and Rojer Mathew Decision

The Petitioners argued for extension of the incumbent Chairperson, who was appointed under Section 89A of the Trademark Act. They argued that Section 89A takes supremacy over Section 86 of the Trademark Act. Section 89A was inserted by the Finance Act, 2017 and points to Section 184 of the Finance Act for the term of the Chairperson. Section 184 states that the term of the Chairperson is to be fixed as per the rules framed by the Centre which cannot prescribe for a Chairperson whose age exceeds 70 years. They further argued that the incumbent Chairperson stayed in office by virtue of the Supreme Court decision in the Rojer Mathew case, which scrapped the Tribunal Rules, 2017, framed by the Centre and stated that till new rules are framed, the terms of all the sitting members and Chairpersons of various tribunals were to be protected on the basis of the relevant statute before the Finance Act, 2017. (see here for Balu and Pankhuri’s assessment of the Rojer Mathew Decision) Consequently the new Tribunal Rules 2020 were framed which were modified by the Supreme Court in Madras High Court Bar Association case by fixing the term to 70 years. (see here for our assessment of the decision)

On the other hand, the intervenor argued that Section 184 does not ipso facto prescribe or indicate any term of appointment or tenure, except to enumerate outer limits of tenure terms. Thereby arguing that the term prescribed by the Act means that the age of the Chairperson should not exceed 70 years and not that it shall last till the Chairperson reaches 70 years.

The Court agreed with the intervenors in the matter and made the following key observations with regard to the term of the appointment:-

1. The tenure of the incumbent Chairperson had ended on 21.09.19 which was 43 days before the Supreme Court decision in Rojer Mathew, scrapping the 2017 Tribunal Rules.  
2. The Finance Act merely stipulates the potential maximum age limits and tenure limits.
3. The only arrangement regarding the tenure of the Chairperson, between the 2017 Rules and the Rojer Mathew decision was made by the interim orders in the Kudrat Sandhu. The Court in these interim measures prescribed for a term of 5 years or the maximum term under the old legislation and subsequently clarified it to mean that the Chairperson shall hold the term till he attains 65 years. (combined pdf of all the relevant orders)

The Necessity of a Judicial Member

The Petitioners also contended that the tenure of the incumbent Chairperson must be extended since he is the sole judicial member in the Board and in his absence the Board will be headless and will not be able to function. The Court observed that the board cannot remain headless when there are other members in it. As per Section 84(3) a Chairperson can function as both a judicial and technical member. The Court read it to mean that a Chairperson can be a technical member as well. The Court then noted that Section 87 enables a Vice-chairperson, or as the case may be the senior-most member of the board to act as Chairperson in the event of a vacancy to that position, or in the event of the incumbent’s inability to function in the post. Recalling that “incumbent five technical members all hold legal qualifications”, the Court observed that “four of these incumbent members were practising advocates in specialized fields of intellectual property (trademarks, and copyright) and one technical member (patents) had experience in the Patent Office.” Thus, “the fact that they were appointed as technical members cannot obfuscate the fact that they are legally trained and qualified.” 

The order is pretty clear on the decision and has left no scope for doubt regarding interpretation of the existing law on the tenure of the Chairperson. However, as pointed out above the IPAB is still holding hearings and might be disposing of the matters with the incumbent as the Chairperson. Considering the above state of affairs in the IPAB, another decision by the Supreme Court comes to my mind where the court held-

“It must be grasped that judicial discipline is self discipline. The responsibility is self responsibility. Judicial discipline is an inbuilt mechanism inherent in the system itself. Because of the position that we occupied and the enormous power we wield, no other authority can impose a discipline on us. All the more reasons Judges exercise self discipline of high standards. The character of a Judge is being tested by the power he wields.” 

“Because of the power he wields, a Judge is being judged with more stricter than others. Integrity is the hall-mark of judicial discipline, apart from others.”  

We’re pleased to bring to you a guest post by Justice (Retd.) Prabha Sridevan on the recent Bill moved by the Government in the Parliament proposing to shut down IPAB and the way forward. Justice Sridevan needs no introduction – she served as a judge of the Madras High Court from 2000 to 2010 and as the Chairperson of the IPAB from 2011 to 2013 and her stint as both resulted in a number of significant IP developments, which we have covered here, here, here and here. A more elaborate profile and Prof. Basheer’s interview of her published on the blog in 2018 can be viewed here and here. She has previously also written guest posts for us, which can be viewed here and here.

Govt’s Proposal to Shut Down IPAB and the Way Forward

Justice (Retd.) Prabha Sridevan

The news that IPAB would be scrapped filled me with joy.

We are told that tribunals are needed for the expert insight that technical matters require, that may elude the regular judges however high the court may be. We are also told that because of the ease of procedure and speedy disposal. Tribunals lightens the traffic jam in courts and so they are necessary. All I can say is ho-hum.

Please read Monsanto Company v. Coramandal Indag Products (P) Ltd. judgment penned by Justice Chinnappa Reddy way back in 1986. Crisp, comprehensive and aligned to the Constitution, it is. It is not convolutedly drafted like some claims are. It is simple. The great judge is a “regular” judge and not a technical one but knew how the law lay. More recently on a 1^st of April in the year 2013, the Novartis judgment was written by a “regular” judge, Justice Aftab Alam. He did not balk at eliciting expert guidance when he needed it. Humility is the hall-mark of greatness. Prof. Shamnad Basheer told me that at the start the Bench said that since the subject was unfamiliar explanations were needed, but that within a week Justice Aftab Alam was on top of the problem, asking probing questions. So you do not need to be a chemistry expert, or a molecular biology expert, you need application, the idea of justice and law and the focus to decide IP questions (stress on “idea of justice and law”).

When the Madras High Court was hearing the first Novartis case, the IPAB was formed and cases stood transferred to it from High Court. Presumption was IPAB was on the same tier as High Court and appeals against its orders went to the Supreme Court. Presumption wrong, press “delete”. Against an order of IPAB, a writ petition lay to the High Court. With the patent life expectancy being what it is, a writ petition to the High Court and then a special leave to the Supreme Court, could make the decision on the validity of the patent purely academic. Then again, the circuit-structure of the IPAB staggered the hearings, so the pendency too staggered. I am informed that it takes years for a revocation petition / appeal against a rejection to reach finality. The delay in filling up vacancies is well-known. SpicyIP calculated that “in its 17 years of existence, the IPAB has not had a Chairperson for a cumulative total of 1,130 days!” So “speedy disposal” vanishes like those toilet rolls did in supermarkets when the C-virus happened.

The two ostensible reasons for tribunalisation cannot therefore be sustained.

The purse is with the Government, the appointment is with the Government. I have filed a detailed report drawing from my experience as Chairperson of IPAB before the Madras High Court highlighting the problems in this area. It is not a happy report. I have also written ‘Whose tribunal is it anyway‘ in Hindu. The independence of tribunals is a big question mark. Pay parity for the staff, regularisation of their service were some of the issues IPAB had to grapple with, while deciding the Tykerb patent, Bayer v. Natco and other cases. Not a cakewalk at all, believe me.

High Courts decide constitutional rights that are enshrined in the Constitution. If the jurisdictional space of the High Courts is eaten up by tribunals, then what is left? It sorely reminds me of the monkey and the litigious cats of Aesop’s fables.

I have written a guest post about the same subject right here last year. So why should I write again? I am worried. The new normal requires a constitutional vision regarding access to health and life (see the discussion here). We are dealing with the right to life, please! Random doling out of interim and other orders makes me petrified today more than before. Moreover the IPAB cannot mould the relief as a constitutional court can. The presence of public interest in every IP case, requires a jurisdictional space that is not constrained. I have elsewhere said that “A sui generis mechanism to handle the modus operandi of IPR disputes would make the most sense.” A High Court can employ innovative tools as in a PIL, and essentially most IP disputes contain public interest, especially those involving pharmaceutical patents. Tribunals will be over-stepping their limits if they try such a line.

So what next? An IP bench in the High Courts. The Government can save all the money that is spent on the infrastructure inadequate though it is, and the salary paid to the Chairman, members and staff. We have had tax benches in every court and they are given different case numbers (in Madras High Court, it is T.C). So an IP bench will not be a novelty. IP cases can have separate numbers and go on a separate track. The composition of the IP Bench must not be changed too often. There could be a panel of expert advisors for every area of expertise applicable (patents, G.I., plant varieties etc.) from whom the Court can get the expert insight to help them decide the dispute. There could be party experts and Court appointed experts to rule out bias. Time lines can be fixed to ensure quick disposal.

These amendments scrapping the IPAB are most welcome.

P.S. I heard that even after the Supreme Court refused to extend the Chairman’s term, hearings were held at the IPAB. I hope it is inaccurate information.

Topical Highlight

Justice Prabha Sridevan on Govt’s Proposal to Shut Down IPAB and the Way Forward

In this guest post,  Justice (Retd.) Prabha Sridevan notes that the Government’s proposal to scrap the IPAB is a welcome change. She argues that the functioning of the IPAB makes the two ostensible reasons for tribunalisation unsustainable: expert insight and speedy justice. She argues that regular courts are also more than capable of eliciting expert opinions, citing multiple cases where this has been done. Further, the staggered hearings at the IPAB often increase the pendency of cases before it. She notes that it takes years for a revocation petition / appeal against a rejection to reach finality, thereby eluding speedy justice. Further, the independence of the IPAB is suspect, given that the government controls it financially and is in charge of appointments to it. She also cautions against the eating up of the jurisdictional space of High Courts by tribunals, particularly because IP cases involve public interest and constitutional rights, adjudicating upon which maybe beyond the ambit of a tribunal’s jurisdiction. She concludes by arguing for the creation of an IP Bench in the High Courts.

Thematic Highlight

The Grand Old Indian Trade Marks Register: Episode 1 (1877-1881)

In part 1 of this three-part post, our former blogger Aparajita Lath, traces the birth and early life of the Indian Trade Marks Register, which ‘institutionalized’ trademark protection in India. In the first part she covers the first phase of legislative activity. She notes that prior to the enactment of the Trade Marks Registration Act, 1875 in England, English trademark law was fragmented, and without a centralized law on registration, consisted of common law remedies, criminal remedies and trade specific laws. As manufacture, particularly cotton manufacture, increased in India, the need for trade mark registration and protection was also felt. She highlights that while common law protected reputation / goodwill generated from the use of trademarks, such protection involved cumbersome actions and a trade mark system would allow the establishment of property rights upfront, serving as notice to other traders, cheapening and also reducing trademark disputes. Thus, in 1879, a bill was proposed, as per the 1875 Act in England, as per which there would be no action for trademark infringement unless a trademark was registered. However, this bill was withdrawn abruptly because suddenly, leading commercial associations that had backed it initially changed their stance and agreed that a centralised registration system would not only be unnecessary but also inconvenient.

The Grand Old Indian Trade Marks Register: Episode 2 (1881-1920s)

In part 2 of this post, Aparajita focuses on the period from 1881 to 1920s. By examining archival records, she discovers the reason behind the Indian opposition to the legislation establishing a nation-wide trademark registration system. The Indian commercial community led the opposition to the legislation. As British-manufactured goods were trading in India through independent merchants, it raised uncertainties regarding trademark ownership and all solutions seemed unviable. Furthermore, there was lack of expert staff to adjudicate upon trademark application. The community was also worried about the alternative of Indian trademarks being registered under the English statute as they felt that Indian trademarks would not be considered distinctive enough under the English law. This fear was heightened in cotton and cloth markets, where brands had negligible difference. It was also believed that a registration system was not required in India as it was only imitation that was generally under dispute and not ownership. As a result of this opposition, rights to a trade mark continued to be acquired only through use till the 1940s.

The Grand Old Indian Trademarks Register: Episode 3 (1920-1940)

In part 3 of this post, Aparajita highlights certain changes in the commercial landscape which led to commercial opinion bouncing back in favour of registered trademarks. She notes that by 1939, the cloth and cotton markets were no longer dominated by British goods but by Indian and Japanese goods. She also highlights that the abnormal demand due to the second world war, caused an increase in deliveries from mills to go-downs. Large scale industries were unable to personally contact consumers and therefore a gap emerged between makers of goods and consumers, increasing the importance of trademarks as substitutes for personal contact. There were also debates regarding growing uncertainty on ownership of trademarks which led to the belief that a registration system was required. Aparajita concludes by noting that the first, comprehensive law that established a nation-wide system of trade mark registration came into being in 1940, and as the growing number of trademark applications received by the Trade Marks Registry demonstrates, faith in this institution has certainly increased over time.

Other Posts

Justice Manmohan Singh Holds Hearings at IPAB Despite Supreme Court Ruling

In this post, Praharsh notes that as per the causelist, Retd. Justice Manmohan Singh is still holding hearings in the IPAB and passing orders despite the Supreme Court’s rejection of the application for extending Justice Singh’s tenure as the IPAB Chairperson. Praharsh highlighted the judgment’s clarification of the position of the law regarding the tenure of the Board’s Chairperson. He also provided a helpful flowchart (pdf) to make it convenient to understand the developments surrounding the case. He highlighted the Court’s ruling that Section 184 of the Finance Act does not ipso facto prescribe or indicate any term of appointment or tenure, except to enumerate outer limits of tenure terms. He also noted that the Court negated the assumption that the Chairperson is a judicial member or that only a judicial member is capable of becoming the Chairperson, holding that as per Section 84(3) of the Trade Marks Act, a Chairperson can function as both a judicial and technical member. He concluded by arguing that the authority under which hearings are still being held by the incumbent is not clear.

Image from here

The Amended Form 27 and Uncertainty in Timelines for Filing

In this post Adyasha, highlights an issue regarding the filing of working statements (Form 27) as per the amendments made to Patent Rules, 2003 in October last year. She points out that the amendment to Rule 131(2) shifts the time period for which the disclosure statements are to be filed, from ‘calendar’ year to ‘financial’ year. This changes the time period for filing statements from 1st January to 31st December (as required earlier) to 1st April to 31st March. Due to the Amendment coming into force midway, the next set of working statements due would be for the period of April 2020 to March 2021, followed by April 2021 to March 2022, and so forth. This leaves a gaping hole in the timelines – the first quarter of 2020, for which no instructions have been provided. Adyasha suggests that there may be three possibilities to deal with the issue. Firstly, the government could observe the switch from April 2019 itself and invite statements for financial year April- March 2020. Secondly, the statutorily mandated disclosure requirement for January-March 2020 may be skipped altogether. Thirdly, the Patent Office may seek a separate working statement covering only January-March 2020. She concludes by stressing upon the need for a clarification from The Patent Office or the Department for Promotion of Industry and Internal Trade.

Decisions from Indian Courts

• The Delhi High Court in Allied Blenders and Distillers v. Agribiotech Industries Ltd. decreed the suit in accordance with the terms of settlement, as per which the defendant would not use any marks deceptively similar to the plaintiff’s trademarks, OFFICER’S CHOICE, OFFICER’S CHOICE BLUE and CHOICE, and/or pass off the plaintiff’s goods as its own. The plaintiff affirmed that it would not pursue its claims for delivery up of the impugned CHETAK WHISKY products, for rendition of accounts of profit against the Defendant, for recovery of damages against the Defendant, and for costs of the present proceedings. [February 19, 2021]
• The Bombay High Court in Godrej Consumer Products Ltd v. Deepak Bhatia, disposed of the suit in accordance with the Consent Minutes which noted that the Defendants would be restrained by a perpetual order and injunction of this Court from infringing the Plaintiff’s registered trade mark HIIT by use of the impugned mark SUPER HIIT, and would also deliver up the impugned goods to the plaintiff for destruction. [February 16, 2021]
• The Delhi High Court in TM 25 Holding BV v. Uma Manja Shivappa, granted an ex- parte ad-interim injunction in favour of the plaintiffs, restraining the defendants from using the mark GS STAR which is deceptively similar to the plaintiff’s trade mark G-STAR. [February 16, 2021]
• The Bombay High Court in Ceat Ltd. v. JKM Tyres Ltd., granted an ad interim order restraining the defendants from using on their signage the impugned artwork of CEAT or using the impugned mark or trade dress of CEAT in relation to their products, till the final disposal of the suit alleging copyright and trademark infringement as well as passing off. [February 16, 2021]
• The Bombay High Court in a design and trade mark infringement suit in The Supreme Industries Limited v. M/s. Young India Impex, pertaining to the design of a folding table and the trade mark ‘SUPREME’, noted the defendant’s plea that it was a prior user of the design complained of, and recalled/vacated its orders dated 30.06.2020 and 30.07.2020. [February 15, 2021]
• The Delhi High Court in its order in Sporta Technologies Pvt Ltd v. Dream11 Prime & Ors. allowed the plaintiff’s application for extension of the injunction order dated 14.10.2020 to defendant Nos. 66 to 149, restraining them from infringing the plaintiff’s registered DREAM 11 trademark and passing off the plaintiff’s goods as their own. Defendant No. 52 was also directed to unlock the domains www.dream11.life, www.dream11.org, www.dream11.net, www.dream11.co and www.dream11.co.in. [February 11, 2021]
• The Meghalaya High Court in M/S. B.R. Industries v. State of Meghalaya & Ors. held that Courts of Deputy Commissioner and Additional Deputy Commissioner are Principal Civil Courts of Original Jurisdiction in the district, constituting “District Courts” within the meaning of Section 134 of the Trade Marks Act, and are hence, competent to try the suit under the Act. It directed the District & Sessions Judge (Additional Deputy Commissioner) to dispose of the suit concerned, on merit after hearing both sides, preferably within six months from the date of receipt of the order. [February 11, 2021]
• The Income Tax Appellate Tribunal (ITAT), Pune in Norton Life Lock Inc, Pune v. Asstt. Commissioner of Income Tax, Pune held that the sale consideration received from selling software products to the end-users, distributors, or resellers is business income and not Royalty income, which as such is not taxable in India. [February 5, 2021]
• The Bombay High Court in Bajaj Electricals Ltd v. Urban Foodmart India Pvt. Ltd. & Ors., passed an interim order, restraining the Defendants from passing off or infringing the plaintiff’s well-known trade mark BAJAJ SUPERMART in relation to their food retail chain. The defendants were directed to remove all signage, use of marks on shopping bags, cartons, packing material, etc. within a period of three weeks. [February 5, 2021]
• The Delhi High Court via an ex-parte order restrained more than 36 vendors on Flipkart, Amazon, Paytm Mall, Snapdeal and TataCliq from selling goods bearing Shenzhen Jiayz Photo Industrial. Ltd.’s mark BOYA on their counterfeit products. [February 10, 2021]

Other News from around the Country

• 7 Intellectual Property Law teachers from across the country have formed a
  Like Minded IP Teachers’ Working Group on Intellectual Property and Public Interest, and released a manuscript titled, Social Dimensions of Copyright Infringement and Enforcement, reflecting on the Sci-Hub Litigation before the Delhi High Court.
• BigBasket, India’s largest online grocery retailer, sent a ‘cease and desist’ notice to Daily Basket for trade mark infringement and passing off due to use of the word ‘basket’ in word or logo form in relation to their e-commerce business.
• The government recently introduced a bill in the Lok Sabha, The Tribunal Reforms Bill, 2021, which aims to scrap existing tribunals set up under laws relating to cinematograph, copyright, trademark, airports authority, customs, patents and others.
• In this article for LiveLaw, Gopi Trivedi & Anay Amin highlight some key points from the Government of India’s all-inclusive patent scheme for start-ups and small enterprises.
• Actor Sherlyn Chopra, sought anticipatory bail from the Bombay High Court after a Sessions Court rejected her bail application, in a case involving allegations of obscenity against her for publishing ‘adult content’ on free pornographic websites. She claimed that the content was for a subscription-based international portal and she was a victim of copyright infringement and piracy.
• Nagraj Manjule’s film Jhund, which was embroiled in a copyright dispute, is set to be released on 18 June, 2021.
• In this piece for the Economic Times, Saubhik Chakrabarti argued that Google and Facebook should not be allowed to take most of the revenue generated from digitally available news content in India, in light of copyright agreements signed by Google with news publishers in France and its ongoing efforts to do the same in Australia after regulatory pushes by the Australian government.

News from around the World

• It was reported that Elsevier and Springer Nature teamed up to obtain an injunction in the UK, and that UK ISP TalkTalk would block (or is already blocking) access to the Sci-Hub domain ‘sci-hub.se’, as a result of an injunction handed down by a UK court on February 15, 2021.
• Pakistan decided to register Himalayan pink salt as Geographical Indication (GI) to preclude other countries from using it unauthorizedly.
• A top US Democratic lawmaker, Representative Jan Schakowsky, is lobbying the Biden administration to support a waiver of the World Trade Organization’s intellectual-property obligations to allow developing countries to improve access to vaccines in light of the Covid-19 pandemic.
• Brussels-based European consumer campaign group BEUC noted that TikTok’s “unfair” copyright policy massively violated user rights via terms that grant TikTok an irrevocable right to use videos without payment.

Despite the plethora of materials online, any student, researcher or professor would know that access to scholarly information is a lot more difficult than what it should be. Most of the time, if you’re serious about research, the ‘research’ journey is more about how many paywalls you can climb (legally or not so legally), as much as it is about how good the material you can find is. To get around this, many folks rely on plug-ins like UnPayWall and Google Scholar Button, and others rely on Sci-Hub and LibGen. Others still are well versed in asking around for ‘that friend of a friend’ who is sitting in a top global university who has access to at least some subscription services, unlike the less fortunate masses. However, while its true that this poses a huge Access to Information / Access to Knowledge issue, this of course does not mean that publicly available scholarly information is of lower quality or less utility than that material which is hidden on the other side of paywalls. Indeed, there is a tonne of great research, literature and commentary that has been made publicly available free of cost. Most professors are pretty much required to publish for promotions, tenure, and reputational reasons, and for varied reasons, usually end up doing so with publishers who charge. So they instead put out pre-print versions of their scholarship, out on various public databases. Though here – the problem is that of either not knowing how and what to filter, or the paradox of choice. There is so much information out there, how does one know what information to spend their limited time on? At a less abstract level – I’ve spoken to students as well as professors who say they would love to spend more time on IP but have too many classroom constraints, so they don’t end up doing this, nor do they know how to go about it outside the classroom.

So, in a very ambitious attempt, a group of us have spent the last couple of months trying to work on an “Open” IP Syllabus, for whoever might find it useful. And are very excited to share a first draft version for feedback, coincidentally in the ongoing fair use/fair dealing week. While the end-goal is to make an over-arching syllabus, for now, only a draft version of the first two chapters are being shared.

Who this is for: Anyone interested in IP! We’ve tried to include short readings as well as long readings in each section (and have marked them as such) so interested readers can decide how much time they want to spend looking into a topic. Short readings’ include anything from a blogpost to approx 15-17 pages of text, and ‘long readings’ being anything more than that. We’ve tried to ensure a variety of perspectives, so that anyone, anywhere in the world will hopefully find something of interest/use – while also trying to ensure that major India focused pieces are included.

What it includes (and will include): Chapter 1 “Introduction to IP” deals with three main areas: (1) History and Evolution of IP; (2) Theoretical Justifications and Underpinnings; and (3) Counter-Enclosure movements. Chapter 2 focuses on various different lenses through which IP can be viewed. Titled “Approaches to IP/IP Lenses”, it currently includes (1) IP & Innovation, (2) IP & Development, (3) IP & Climate Change, (4) IP & Health, (5) IP & Competition, and (6) Beyond IP / IP Futures, IP & Human Rights.

Chapters currently in progress (not currently shared) include chapters focused on Institutions, Fundamental Principles, and then specific chapters for different types of IP.  As is already evident, these classifications are neither hermetically sealed off from one another, nor are they holistic. They are merely a first attempt at classifying a lot of information, and we would love to hear from you on how any part of this could be improved. Currently, the attempt has been to include a variety of perspectives, as well as to mix up seminal pieces with more contemporary reflections. The intra-sectional classification is a simple ‘short readings’ and ‘long readings’ break up, with ‘

There are of course several disclaimers: first off – that while it would be ideal to include as many great pieces as possible, it is not only practically impossible to include all the great pieces, it is also essentially an exercise in subjectivity – so I have to apologise in advance for all the great pieces that don’t end up being included in here. As of the current draft – we have kept certain sub/sections like “Access to Medicines” and “IP & Health” limited – not because of insufficient scholarship but because of too much to choose from. We also have a list of papers that we want to include but haven’t verified yet. We will fill that in slowly over time.

Additionally, the collation is naturally limited by our own understanding of IP and its various nuances. Our process currently involves the research team (6 of us) independently researching and sending across pieces that they think are worth adding, and a verification process that involves me accepting or rejecting it, with feedback from other subject matter experts as and when required. As such – please do email to let us know if you think a piece should not be in the syllabus, along with your reasons. Aside from all of the above – there is also the possibility that we’ve made a mistake altogether. For now, we’ve staying away from case-law. We may or may not add Indian case law in at a later point – depending on how much time this takes, and how much time we can manage for this. Needless to say, even in its current form, I expect the rest of this syllabus to take at least a year or so to complete.

Finally – the team who worked on this: Praharsh Gour, Lokesh Vyas, Shivam Kaushik, Shriya Gopalakrishnan and Tanushka Joshi all have provided wonderful research on this and it’s been lovely working with them on this. Additionally, a huge shout out to Pankhuri Agarwal, Arul Scaria and Akshat Agrawal for sharing multiple resources and varied course syllabi! I would also be remiss if I didn’t mention Joe Karaganis, director of the Open Syllabus Project, as it was a conversation with him a few years ago that sparked the idea of trying this. It took a few years to start putting it into action – but hopefully this version will prove useful to IP researchers!

And here is the link to the document:

Draft Version: The Non-Definitive Open IP Syllabus_Version 1.1 (25-02-2021) Containing draft Chapters 1 and 2.

P.S. Depending on the feedback, we may or may not put out blogposts on updated drafts and future versions – but we will certainly keep this and future updates available in the Resources Section of the blog. That section also has a growing list of Open Access IP Textbooks. We encourage usage and sharing of the syllabus for personal, research, educational, etc purposes. If you’re using the syllabus for commercial purposes, (or are feeling generous!) – well – let’s just say it would be nice if you got in touch for how to contribute to SpicyIP!

The Single Bench of the Delhi High Court headed by Justice Pratibha Singh, in its recent order in Prashant Reddy v DCGI, came down heavily on the drug regulator for egregious violation of the Right to Information Act.

The case arose in relation to the report of Dr. T.M. Mohapatra Committee, a committee which was constituted by the Drugs Controller General of India pursuant to the scathing criticisms in the 59^th Parliamentary Standing Committee Report on the existing mechanism for approval of drugs in India. Prashant had earlier covered the key findings of the Parliamentary Standing Committee here. On perusing the Parliamentary Standing Committee report, one may wonder whether the lackadaisical approach of the regulatory system can only be treated as a mere function of its incompetency and ineptitude. Some of the key findings of the Parliamentary Standing Committee were: (i) the absence of local clinical trials for new drugs (since the response levels of people of different ethnicities vary, local clinical trials are relevant for evaluating the effects of new drugs); (ii) files regarding certain controversial drugs were missing from the Central Drug Standards Control Organization (CDSCO); and (iii) certain drugs were cleared based on dubious expert medical opinions.

The petitioner made several unsuccessful attempts to obtain the copy of Dr. T.M. Mohapatra Committee report under the RTI Act. When the petitioner approached the Central Information Commission (CIC) for obtaining the copy of the aforesaid report, an incomplete copy of the report was made available to the petitioner. The petitioner, thereafter, filed a writ petition before the Delhi High Court for a copy of the complete report and sought directions for digitization of all the records of the DCGI in respect of the clinical trials. Though notice was issued on 29 September 2020, the DCGI has so far not filed a counter affidavit. Taking a serious exception to the blatant violation of RTI Act, the High Court imposed costs of Rs. 25,000 on the DCGI. Further, if the counter affidavit is not filed and/or costs are not paid, then a senior official of the DCGI has to be present in-person on 19 March 2021 (the next date of hearing). The DCGI has also been asked to file a status report in relation to the digitization of its records.

From the directions issued by the Court, it is evident that the Court has taken a serious note of the flagrant violation of the RTI Act. The CDSCO, in its submissions to the CIC, revealed that it did not have this vital report and therefore, it had to procure the report (in the form available) from Dr. T.M. Mohapatra himself.  On receiving this absurd request, even Dr. T.M. Mohapatra, in all likelihood, might have wondered where his report finally ended up!!

It is quite encouraging that the Delhi High Court has taken a pro-active stand in protecting the value of transparency; a value that lies at the heart of good governance. Unless the report is made public in toto, it will be difficult to evaluate the startling findings of the Parliamentary Standing Committee.

Participative democracy and eternal vigilance of the citizenry

The 2^nd Administrative Reforms Commission report notes that, “The Right to Information Act is a path-breaking legislation which signals the march from darkness of secrecy to dawn of transparency. It lights up the mindset of public authorities, which is clouded by suspicion and secrecy. Openness in the exercise of public power – Executive, Legislative or Judiciary – is a culture, which needs to be nurtured, with privacy and confidentiality being an exception. The right to information will also be a powerful means for fighting corruption. The effective implementation of the Right to Information Act will create an environment of vigilance which will help promote functioning of a more participatory democracy.” (Preface of Right to Information – Master Key to Good Governance)

[The theses on transparency and eternally vigilant citizenry are in line with the scholarship of Prof. John Dewey – the acclaimed American philosopher and psychologist who taught Dr. B.M. Ambedkar in Colombia University from 1913 – 1916. Prof. Dewey refused to view democracy as a single-faceted political concept. On the other hand, he perceived it as an ethical ideal where an educated citizenry, armed with scientific temperament, participates in it. Dr. Ambedkar is said to have stated that he owed his entire intellectual life to Prof. Johan Dewey.]

Coming to the practical realities (i.e. a vital report in its entirety or its parts being missing), one can legitimately wonder at the gulf between things “as they should be” and realities “as they are”. Since the Delhi High Court has now given a clear indication that it is prepared to come down heavily on the regulator in case of non-compliance with the RTI Act, let us hope that the full report will finally see the light of day.

Thematic Highlight

A Draft “Open” IP Syllabus

In this post, Swaraj shared the first draft version of an ‘Open’ IP Syllabus that he along with a small team of researchers has worked on in the last few months. The syllabus is aimed to contain materials that are legally and publicly available free of cost and outside of paywalls, touching upon diverse themes concerning intellectual property law. While the completion of the entire syllabus is expected to take some time, this post includes the draft of the first two chapters of this proposed syllabus. These chapters deal, in turn, with ‘Introduction to IP’ and the ‘Approaches to IP/IP Lenses’. The draft can be accessed here.

Decisions from Indian Courts

• The Calcutta High Court in Duroply Industries Limited v. Ncl Industries Limited, granted an ad-interim injunction restraining the defendant from using any marks deceptively similar to that of the plaintiff’s registered ‘DURODOOR’ and ‘DURODOOR TILES’ marks. [February 25, 2021]
• The Bombay High Court in Shemaroo Entertainment Ltd. v. Tv9 Media Maharashtra Pvt. Ltd., granted a temporary injunction against the defendant restraining them from broadcasting or communicating to the public films or parts of films on which the plaintiff has the copyright. [February 24, 2021]
• The Delhi High Court in Cadila Healthcare Limited v. Uniza Healthcare LLP, dismissed an application by the defendant for rejection of plaint, and granted an interim injunction restraining the defendant from manufacturing or selling products with the ‘ZACLEAR’ or any other deceptively similar mark to that of the plaintiff’s unregistered ‘ZYCLEAR’ mark. [February 22, 2021]
• The Delhi High Court in The Bhaktivedanta Book Trust India v. www.friendwithbooks.co, granted an ad interim injunction restraining the defendant from reproducing the plaintiff’s copyrighted works. [February 22, 2021]

  Image from here

• The Delhi High Court in Exide Industries Limited v. Krishna International, appointed a Local Commissioner to inspect the non-compliance of interim injunction issued against the defendants restraining them from using the plaintiff’s registered EXIDE mark. [February 17, 2021]
• The Delhi High Court in Makemytrip (india) Pvt. Ltd. v. M/S Travelogy, granted the plea for permanent injunction from using the plaintiff’s MakeMyTrip and MMT marks, against one of the defendants who had no objections to the decree. [February 17, 2021]
• A Bangalore commercial court has granted an ex-parte temporary injunction in a passing off and copyright infringement suit filed by TATA for protecting their product Sunfeast YiPPee! Magic Masala against the Nepal-based Chaudhary Group’s Wai Wai X-Press Noodles Majedar Masala.

Other News from around the Country

• The government of India has released the new Information Technology (Guidelines for Intermediary and Digital Media Ethics Code) Rules, 2021.

  Image from here

• A group of academics has written to the Delhi High Court to rule against the academic publishers that have filed a copyright infringement case against Sci Hub and Libgen.
• An interview of Alexandra Elbakyan was recently published on The Wire Science discussing her Sci Hub project and its importance for research.
• Radio companies have recently challenged the IPAB ruling that allowed members of the IPRS to claim separate royalties from radio stations.
• The cloth dolls made by tribal communities in the Jhabua district of Madhya Pradesh will soon get a Geographical Indication Tag.
• The popular Free Fire streamer Total Gaming claims to have received over 20 fake copyright notices in the past two months including a recent copyright strike on YouTube.

News from around the World

• European news publishing companies are pushing for a similar law to that of Australia to force companies such as Facebook and Google to pay for using their content.
• Alphabet, the parent company of Google, is in talks with Spanish publishers to enter licensing deals, to restart the Google News service in Spain which was shut down in 2014.

  Image from here

• Skyhorse Publishing, the publisher which released Woody Allen’s memoir ‘Apropos of Nothing’ is deliberating on filing a copyright infringement suit against HBO for its docuseries “Allen v. Farrow” that used excerpts from their audiobook without permission.
• Barclays and the TD Bank Group have joined the Open Innovation Network, a consortium to defend Linux from patent trolls.
• The bike manufacturer Peloton has filed petitions with the Patent and Trademark Office seeking cancellation of rival Mad Dogg Athletics Inc.’s marks for the words ‘spin’ and ‘spinning’, which move has been rebuked by Mad Dogg.

We are pleased to bring our readers another guest post by Amit Tailor, discussing a recent practice he has observed of the IPAB/Board ‘suggesting’ amendments to patent applicants, and allowing them without concurring with the Controller. The post also goes on to review the statutory vires of this practice.

Amit is working as Manager (Sr. Scientist) at Cadila Healthcare Ltd., handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. The views expressed here are personal. This is Amit’s 5^th guest post for SpicyIP, and his 4^th related to the IPAB and its functioning. His previous posts can be accessed here, here, here and here.

Intellectual Property Appellate/Advisory/Adjudicatory Board

Amit Tailor

Pic from here

These questions regarding the scope of an appeal before the IPAB and what kinds of relief the board can grant and under what circumstances etc., arose after a few decisions of the board, wherein the board appears to have gone over and above their appellate jurisdiction, either by acting in an advisory role, or by acting as a court of first instance (Controller, in this case)  in the handing down of certain decisions.

The Board being Advisor and Adjudicator

Here are some of such instances wherein (I personally believe that), the Board has stepped beyond its mandate.

1) Finding that all the grounds of objections raised by the patent office have been complied by the applicant and there is no further ground for objection; the board directed the applicant to enter certain further amendments for ‘better clarity’ and directed the Controller to grant the patent thereon, instead of asking his/her opinion or remanding for reevaluation on merits. (Oncotherapy Science, Inc. vs Assistant Controller OA/52/2014/PT/CHN para 15-16; Tata Chemicals Ltd. vs Controller OA/4/2018/PT/MUM para 12-13).

2) Finding that there was sufficient ‘room’ for the applicant to claim the desired subject matter (on multiple occasions), but they failed to do so (on all occasions);commenting that the subject matter not claimed is ‘disclaimed’; and determining that the refusal of the amendments by the Controller is justified, based on the submissions of the applicant himself; then, instead of holding that the applicant accountable for their selection of claim scope for prosecution, the board declared that “No applicant should suffer for the ‘error’ in initial drafting”(!!!); ‘partially’ allowed the applicant to amend the claims as a special case (!!!!) and then went on to ‘redraft’ the claims on its own (!!!);directed the applicant to submit the same before the Controller and going a step ahead, instead of directed the Controller to determine the patentability of the ‘board amended’ claims, directed the Controller to grant the patent thereon. [Allegro Pharmaceuticals, Llc vs Controller OA/12/2020/PT/CHN para. 14-20]

3) Firstly, finding a new ground on which the claim(s) can be objected to, i.e. raising a fresh issue suo moto, during the appeal process; and then instead of remanding the case back to the adjudicating authority to adjudicate on merit, the board on its own volition declared it as a “drafting error” without requiring the applicant to explain their position expressly on the issue, went on to award the “benefit of doubt” (!!!) to the applicant and directed the Controller to grant the patent. [Dow Agrosciences LLCvs Controller OA/18/2020/PT/CHN para 13-14]

i.e.i) Finding new issues on appeal, ii) adjudicating the same ex-parte without hearing the Controller, iii) after having declared all the objections of adjudicating authority null, still directing the applicant to amend the claims, and iv) instead of directing the Controller to adjudicate the ‘suggested’ amendment(s), directing the Controller to directly allow the amended claims; … all of which don’t appear to be of appellate nature but, as suggested, of advisory and/or adjudicatory nature.

Does The Board Have These Powers?

Therefore, the question that arises here is whether the Board has those powers under the Statute? Does the Patent Act or Rules made thereunder, or any other relevant statute for that matter, supply the Board with the necessary power to ‘direct’ or ‘suggest’ the amendments up front and allow the version of the claims that has not been discussed before or adjudicated by the Controller?

What Does The Statute Say?

Chapter X and Chapter XIX of the Patents Act provide relevant provisions for amendments & for the Appellate Board respectively.

Chapter XIX of the Patent Act encompasses the provisions for filing and handling the Appeals before the Appellate Board and also the functioning, powers etc. thereof. The Appellate Board for the purpose of the Patents Act is established by, and draws its statutory existence from, Section 116 of the Patent Act which directs that the Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act;  and while discharging their functions under this act, the Board is mandated u/s 117B to follow the process as provided in sub­sections (2) to (6) of section 84 and sections 87, 92, 95 and 96 of the Trade Marks Act, 1999; of which relevant to this inquiry is Sec 92 – which allows the board to deviate from the procedure laid down in Code of Civil Procedure, 1908 (“CPC”) but requires it to be guided by the principles of natural justice, and allows the Board to regulate its own process including fixing the place and time of hearing. Said Sec 92 also grants it the “same” power as are vested in a civil court under CPC in respect of(a) receiving evidence;(b) issuing commissions for examination of witness;(c) requisitioning any public record; and(d) any other matter which may be prescribed.

Chapter X relates to provisions for amendment of applications and specifications wherein, Section 57 prescribes provisions for amendments before the Controller and Section 59 provides conditions subject to which amendments can be made, and Section 58 specifically deals the amendments before the Appellate Board (or High Court). The relevant portion of Sec. 58 is reproduced herein –

(1) In any proceeding before the Appellate Board … for the revocation of a patent, the … Board …, may, …., allow the patentee to amend his complete specification …., and if, in any proceedings for revocation the Appellate Board, …. decides that the patent is invalid, it may allow the specification to be amended … instead of revoking the patent. [emphasis supplied]

Discussion: 

The clear and unambiguous language of Section 58 indicates that the Board has very limited power to allow amendments before it, i.e. only during the revocation proceedings, and that to by allowing the patentee to amend the same, and in no case the Board can direct or suggest amendments on its own. None of the provisions of Chapter XIX either provides any express provision for allowing amendments before the Board. As per express intent of the legislature contemplated in the clear language of Sec. 116, the Board can exercise the jurisdiction, power and authority conferred on it by or under the Patent Act only. The Board is granted the liberty to deviate from the procedures laid down in the CPC, only to be bound by the principles of natural justice. The powers akin to civil court under CPC provided to the board are also for the limited purposes of receiving evidence and examining witnesses, contempt etc. The Patent Act does not supply any such powers to the Board to ‘suggest’ or ‘’direct’ amendments or allow the amendments before it to be granted, without hearing the controller.

The Act expressly provides provisions for amending claims before the Controller only, and grants very limited authority to the Board to allow amendments, as discussed. Earlier, I had discussed in detail (here and here) that the Board cannot grant a patent either, but can only mandate the Controller to do so. The board on occasion(s) has stated that the role of Controller is not adversarial rather he is a quasi-judicial authority responsible of deciding the case based on facts and evidence produced before him (see e.g., OA/67/2020/PT/DEL at para 15); but, isn’t it the position of the Board, also, when it comes to being an appellate authority, especially under the scheme of the Patent Act? The board for sure cannot be adversarial, but at the same time cannot be an advisor either. The Board– on one hand needs to protect the applicant against unjust denial of protection they are entitled to, but on the other hand, the Board must also not inadvertently take the side of the patent applicant by helping them when the application is not good enough. The Board must also protect the public interest by not suggesting amendments to make ‘objection worthy’ claims ‘allowable’ and directing the authority having the original jurisdiction (the Controller) to allow the amendments presented before the appellate authority without allowing the one having the original jurisdiction present their views on the same; which is practically the views of the public or for protecting the public from any ‘unjust’ claims.

Therefore, I humbly submit that requiring further amendments after having found all the objections of the Controller have been complied, suggesting amendments to the applicant on its own, or allowing amended claims bypassing the Controller’s authority is outside the vires of the Board under the Patent Act, and validity of such claims is a mixed question of fact and law.

The views expressed here are strictly personal and is not intended to counter or to come in conflict with anyone. Any views other than the one presented herein regarding the authority of the Board to acquire advisory or ‘Controller roles are happily welcomed for a healthy debate on this issue. This discussion will become even more interesting after the recent reports (here and here) that the Central Govt. is mulling to do away with the IPAB.

As widely reported in the media, and shared via social media posts, the legal team of BigBasket sent a ‘cease and desist letter’ to Daily Basket on 17^th February, 2021 alleging infringement of their trademark. The disparity in the sizes of both the companies was immediately evident to everyone: BigBasket by its own admission is the largest online food and grocery store in India whereas Daily Basket claims to be a tiny bootstrapped Coimbatore-based two-person start-up. Daily Basket is an online/offline grocery startup currently only serving in Coimbatore.

The Notice

BigBasket in its cease-and-desist letter/notice claimed that “…the mere mention or reference of a name containing “basket” in word or logo form for any e-commerce business and related products conjure in the minds of relevant class of consumers and members of trade as that of being associated with our client (BigBasket).”

Thus, BigBasket’s notice would have you believe that it has a monopoly over the word, ‘Basket.’ Here first of all, let’s consider the use of the word “Basket” in relation to grocery store items. The word is arguably descriptive or at least suggestive of the goods and services provided by the company. The point of the e-commerce company is to provide customers an online basket/cart/pantry in which they can add products for ordering, which would then be delivered to the customers. That is why, unsurprisingly Amazon’s online grocery business is called Amazon Pantry, and the word ‘Basket’ has been used for similar services by online grocery store Nature’s Basket since 2005, far before BigBasket even commenced its business. Thus, unlike say Grofers which is a completely arbitrary, fanciful and coined brand name for online grocery services, the use of Basket in its brand name is not as unique and novel as BigBasket’s notice would make it seem. Why is this relevant?

The Law

As per Section 2(1)(zb) of the Trade Marks Act, 1999, a ‘trade mark’ means, “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”

This distinguishing function of trade marks, also known as distinctiveness may be inherent in the mark itself or acquired through use over time. The spectrum of distinctiveness was laid down by Justice Learned Hand in the 2nd Circuit Court of Appeals case of Abercrombie & Fitch Co. v. Hunting World, Inc. [537 F.2d 4 (2nd Cir. 1976)] as follows:

Generic marks— do not qualify for protection

Descriptive marks—may sometimes qualifies for protection

Suggestive marks —qualify for protection

Arbitrary or fanciful marks—qualify for stronger protection than suggestive marks

Invented marks– qualify for the strongest protection

Since the strength of protection of trade marks lies on the aforementioned spectrum, a suggestive or descriptive mark would have to acquire secondary meaning or acquired distinctiveness in the minds of the consumers for it to be protected. This secondary meaning in relation to BigBasket has been acquired by the unique combination of the two descriptive words as a whole. It is therefore, absurd for BigBasket to claim a monopoly over Basket, just as it would be unreasonable for the company to claim proprietorship over the word ‘Big’ and send a notice to say, Big Bazaar for selling groceries online.

Protection is granted to the mark as a whole. The Bombay High Court held in the case of Sky Enterprise Private Ltd. v. Abaad Masala and Co. that the defendant could not use the exact combination as the plaintiff’s registered trade marks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ in that particular order. However, each individual word in a different order to describe the pepper masala could be used by any trader.

The test to determine confusion with an earlier mark requires the confusion to be real and proximate, and not fanciful and remote, amongst a substantial number of people as per the U.K. Court of Appeals (Chancery Division) in the case of Mitsubishi v Fiat. The Court here allowed the registration of the mark “Lancer” for cars by Mitsubishi as against “Colt Lancer” used by Fiat for its cars, on the ground that the two marks were visually distinguishable.

Image from here

Image from here

In the present case too, apart from the word ‘basket’, there are no similarities in the marks used by Daily Basket and BigBasket. The colours, font, graphics and complete names of the brand are clearly different, leaving no room for confusion. The channels of distribution of the goods for the two companies make it abundantly clear that customers cannot purchase Daily Basket’s products without encountering their trade mark.

Similarly, the Delhi High Court held in the case of Cadilla Healthcare Ltd. v. Dabur India Ltd. that difference in the defendant’s product packaging demonstrated enough added matter to distinguish its products from that of the plaintiff who claimed to be the trade mark owner of ‘Sugar Free’ along with its variants ‘Sugar Free Natura’, ‘Sugar Free Gold’ and ‘Sugar Free D’LIT’. The Court arrived at this ruling despite the use of the words ‘Sugar Free’, by the defendant in relation to its products.

Further, it has been held in the case of 1A Pharma GMBH v. The Joint Registrar Trade Marks by the IPAB (citing English precedent) that while comparing marks, it is not correct to take a part of the word and compare it with a part of the other word; the entire mark must be considered as a whole and compared with the other mark as a whole. This principle of considering the overall impression of the mark instead of the similarity/dissimilarity of one word within it applies to the case at hand since it is extremely unlikely that BigBasket and Daily Basket would either appear or sound confusingly similar to the average consumer.

Image from here.

The Confusion

As per Section 29(2) of the Indian Trade Marks Act, a trade mark is considered to be infringed by a person who uses a mark which “is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” This extends the test of classic form confusion regarding the source or origin of goods or services to also include situations where- a person will be confused if they wrongly assume some broader economic connection between the user of marks. However, likelihood of association should not be considered as an alternative to likelihood of confusion, but as a test that defines the scope of confusion.

Mark Lemley and Mark McKenna have argued that trade mark law’s extension of actionable confusion to sponsorship or affiliation confusion has taken a life of its own, resulting in overprotection of trade mark monopolies even when the confusion is not detrimental to consumers’ decision-making process.

However, apart from preventing consumer confusion, trademark law’s development over time may also extend to protecting the trademark owner’s interest in certain cases. The recognition of ‘well known’ marks and the doctrine of dilution reflect this orientation. This stems from the belief that consumer confusion may be heightened in cases where the mark that is used unauthorizedly, is well-known. At the same time, it was noted by the IPAB in the case of Jones Investment Co v. Vishnupriya Hosiery Mills (covered on the blog here), that quantum of sales of the plaintiff company was immaterial as long as the applicant company was able to prove that the registration of their trademark would not cause confusion in the minds of consumers. This sent out an unequivocal message that trade mark law should not be weaponised by big corporations to grow bigger at the expense of smaller firms.

Therefore, BigBasket’s size, profits, popularity and presence throughout the country justify the protection of its mark but they cannot extend its monopoly to words like basket, which may be commonly used in trade and combined with other words by proprietors to brand their own goods under a different mark.

The Bullying

BigBasket’s accusations against Daily Basket are akin to trade mark bullying (covered on the blog here). The notice requires Daily Basket to cease all its operations and accuses it of dishonestly adopting its mark to deceptively make it similar to BigBasket, among other things. As per the United States Patent and Trademark Office’s Report on Trade Mark Litigation Tactics, a trade mark bully is someone “that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” (footnote 51)

Indian Law

Section 142 of the Indian Trade Marks Act provides for the law against groundless threats of legal proceedings. It notes that when a person via circulars, advertisements or some other means threatens another with legal action for infringement of a registered trademark, the person so threatened may bring a suit against such person for the purpose of obtaining a declaration to the effect that such threats are unjustified. The remedies for the aggrieved party include an injunction restraining the other person from continuing to make the said threats or recovery of damages.

Image from here

The Psychology Behind the Bullying

Judicial remedies and sanctions against the same may be ineffective since the smaller entity could lack the wherewithal to engage in the ruinous litigation at all. This makes public shaming an option that smaller entities can use with some success. In the present case, Daily Basket chose to hit back by providing an interactive website, bbisabully.com, countering each of BigBasket’s claims to demonstrate that the company was engaging in corporate bullying. Many social media posts against BigBasket also generated significant online traction supporting Daily Basket’s online campaign.

BigBasket issued a statement in response to this clarifying that it raised an objection to the mark with the trade mark registry to protect its brand and it intends to resolve the issue with Daily Basket in an amicable manner. They also noted that this was part of brand owners’ overall trade mark strategy, which entails steps undertaken for enforcing their marks, including sending cease and desist notices to potential infringers.

Reportedly, this is not the first time that BigBasket has opposed trademarks with the term ‘basket’. It has previously opposed marks such as Daily Basket (filed by another Delhi based entity), ‘Wow Basket’, ‘Smart Basket’, ‘Fresh-o-Basket’, ‘Kitchen Basket, ‘Bada Baskets’, ‘Budget Basket’ and even a trademark application for only the word ‘basket’. Many of these applications were filed in the context of retail services, food products and groceries.  BigBasket’s response to the controversy brings to mind Jessica Kiser’s attribution of trade mark bullying to the mark owner’s vague and uncertain duty to police third party trade mark use for potential infringement as well as inherent cognitive biases such as loss aversion which result in systematic judgment errors and overestimation of risk, eventually culminating into aggressive enforcement of trade marks.

Conclusion

Finally, this dispute comes ahead of BigBasket’s $200-250 million dollar acquisition by Tata Sons Ltd. If organisational cultures are anything to go by, the trade mark strategies of both companies are already suited for alignment, given TATA’s infamous and aggressive enforcement of its trade marks (covered previously on the blog here).

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On 15th February, the Department of Science and Technology released a new set of guidelines liberalising India’s Mapping and Geospatial Data regime by removing the existing multi-layered licensing procedures applicable on private entities. In light of these guidelines, I will discuss how maps and geospatial data can be protected as intellectual property, as well as the possible interplay between IP concerns and the personal data protection regime.

The New Guidelines

Historically, India has maintained a strong regulatory mechanism over mapping and geospatial data intelligence. The Survey of India [‘SOI’] enjoyed the sole authority to engage in the exercise and allowed limited licenses to private entities. Despite a move towards partial liberalisation in 2005’s National Map Policy, a 2016 Draft Bill threatened to render all unlicensed maps in India, illegal. These new guidelines have been issued under the National Map Policy 2005, which happens to be the source of mapping guidelines in India. The guidelines provide that any violation will be dealt with under applicable laws. While there are no mapping ‘laws’ currently in place in India, a set of Publication Instructions released by the Survey of India in 2016 enlist map publication-related offences punishable under laws including the Copyright Act, 1957, Official Secrets Act, 1923, and notifications passed under Customs Act, 1962. As guidelines do not have the force of law, it would have been better if a legislative enactment were to lay down the framework of India’s mapping policy.

Under the new guidelines, private companies, organizations and individuals have been authorised to collect, generate, prepare, disseminate, store, publish, update and/or digitize Geospatial Data and Maps and process the same without any security approvals or licenses. Ground-truthing, which refers to procuring of information through direct observation, has also been permitted. This would allow companies to use their own digital technology to collect data rather than relying on the government’s databases. . However, a few barriers have been imposed. These benefits are restricted to Indians alone and the government will soon release a negative list consisting of sensitive attributes over which restrictions will continue.

This radical change will provide a huge boost to the private sector as mapping and geospatial data are an indispensible component of various industries – infrastructure, transportation, smart power, logistics, e-commerce as well as agriculture, environment protection and increasingly, healthcare services in the COVID era. This data is a key intellectual asset, not just for companies to utilise their mapping technology to generate geospatial solutions that would support their business operations, but also for volunteer open-source mapping projects like OpenStreetMap and DataMeet which form part of the larger Open Data movement.

Data Protection

Notably, geospatial data collected from individuals is likely to have implications under the Personal Data Protection Bill 2019, which is still in the works. PDP Bill lays down a privacy-based framework for companies that collect and use ‘personal data’, i.e., data that is capable of identifying the person to whom it belongs. A large amount of location information is generated by tracking the time and location details of mobile phone users, and would most probably qualify as personal data. PDP Bill would require the data principal’s consent to be taken before this is done and also mandate deletion of such data if consent is later withdrawn. Additionally, location information often happens to be the key to intimate details about a person such as their religious beliefs, political affiliation or ethnicity. PDP Bill classifies this as ‘sensitive personal data’, and contains additional accountability measures for transfer of such data outside India.

Aside from individual privacy, accumulation of location data can reveal important patterns that may have implications for security interests as well. In 2018, a global heat map released by a fitness app exposed the location of US military officers and thus, secret military bases.

With the proliferation of geospatial data and its rising importance in the economy, businesses will seek to obtain IP protection over it, so as to ensure that their data provides them a real competitive advantage over rivals. However, IP is a private right. When IP protected geospatial data comes under the PDP regime, there may be clashes between the two. For e.g., can a data principal seek to have here information deleted if it now constitutes the (intellectual) property of the company that collected that data? Geospatial intelligence may witness a significant interplay between intellectual property and data protection laws.

Copyright Protection

Mapping involves two different subjects for copyright protection: (i) the maps themselves and; (ii) the geospatial datasets used to create them.

Book by John Green

Maps are expressly recognised as copyrightable under Section 2(c) of the Copyright Act, 1957. Interestingly, since the value of maps depend on their accuracy – a factor which also decreases copyrightability – cartographers have for long practiced a technique called ‘map trapping’, to prove copyright infringement without compromising on accuracy. They intentionally mark their maps with places that do not exist in reality, in order to detect copycat maps. These places could be streets, called ‘trap streets’ or even whole towns known as ‘paper towns’. One such town, ‘Agloe’ in New York State, has an interesting story of how it began as a paper town but people moved there believing it to be real, and so the mapmakers actually lost their claim against an allegedly plagiarised map!

In the age of digitized maps, such issues are no longer common as geospatial information has overtaken physical maps as the major business asset.

Geospatial data consists of large amounts of location data collected either through remote-sensing, radar, satellite and drone imagery or generated from navigation systems, social media applications that track location by default, customer information entered into radio-cab and food delivery apps, traffic cameras, surveillance systems, etc. Such data comes broadly within the scope of ‘compilations’ or ‘databases’, which are recognised as literary work under the Copyright Act. However, in order to enjoy copyright protection, they must show originality. Post the Supreme Court’s decision in EBC v. DB Modak, the ‘exercise of skill, labour and judgment’, is no longer accepted as a threshold of originality. Compilations and databases need to show a ‘modicum of creativity’ for protection. Thus, only a unique selection and arrangement of data is protected and not data in its raw form.

This poses a problem because unlike client lists, geospatial data consisting of geographical information such as landscape, climate and topography is collected via means that can be utilised by any entity, making it harder to prove specific selection and arrangement. This factual nature makes it more likely to be termed raw data.  Moreover, even if a dataset as a whole is found to be original, other parties are not precluded from copying its components or non-original subsets, regardless of the skill and labour exercised to procure it and the competitive advantage it offers. Geospatial data could perhaps be better protected under a sui generis database protection law, akin to the Directive 96/6/EC adopted by the European Union, which extends protection to non-original databases.

Copyright’s limited protection to geospatial data is further subject to fair dealing exceptions, which have been inconsistently interpreted in India. Some courts lean towards an open-ended four-factor test (fair use doctrine), while others emphasize strict adherence to statutory exceptions (Nikhil discusses this here).  It is difficult to predict how courts will apply the exceptions crafted for copyright law on geospatial data, which can be used in a wide range of industries, from real world simulations in videogames to aviation training.

Geospatial data deals with information taken from publicly available sources and is commonly used in public utility projects. Therefore, from a policy perspective, it is worth questioning whether allowing copyright protection over it would actually promote innovation, as awarding strong monopoly rights may allow the first-movers in the business to prevent others from utilising it.

Trade Secret

While geographical data relating to the physical features of terrain would not qualify as ‘secrets’, location information acquired through an entity’s own operations such as customers’ travel routes, residence and similar details may be protected as trade secrets. Trade secrets in India are protected either under contract law, or the common law doctrine of breach of confidence. Courts usually require plaintiffs to show:(i) that the information in question is not known to public; (ii) that it provides the plaintiff with commercial advantage; and (iii) the plaintiff has undertaken reasonable efforts to maintain the secret. However, there is uncertainty in this regard as some courts have denied protection to customer information.

Public funding and Government Copyright

The maps published by SOI are under the Government of India’s copyright (see Section 1(2), here). The new guidelines order SOI and other government agencies to ‘simplify procedures and abolish forms/licenses’ to make its maps and geospatial data accessible. Presumably, they retain copyright over it as the guidelines, which are silent on this issue, otherwise state that geospatial data produced by utilising public funds will be provided to government agencies free of cost and to others at fair charges. This is similar to countries like the UK, where Crown copyright subsists over government-created data.

Some scholars have argued (see page 19, here) that if data is collected by utilising public funds in exercise of public duties, why should the public have to pay again to access it?  Even if the government does retain copyright over this data (which it ideally shouldn’t), the fair dealing exceptions in Section 52 permit usage for a number of purposes that are mostly non-commercial in nature. Thus, if members of public require maps or geospatial data for uses falling within the scope of Section 52, SOI should not be charging them as they are not legally required to pay. This is all the more relevant when seen in light of the cases where agencies such as SOI have failed to publish accurate maps that the public requires (see this EPW article).

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The issue of IP protection of jewellery has hardly been discussed or adjudicated upon in India. Generally, it is understood that the sketch of the jewellery design can be protected as artistic work under copyright law, while the actual appearance of the jewellery, such as the configuration, pattern can be protected under design law. But, it’s more complicated than that. There are many questions without clear answers, such as, whether jewellery is protectable under copyright or design law in India, and whether the conversion of original drawings into three-dimensional form, would be termed an ‘adaptation’ or ‘reproduction’. In Part I, I have analysed relevant case laws in an attempt to answer the above issues. Part II will be coming soon, in which I will look into the question of protection of traditional jewellery designs and also explore the possibility of protection of jewellery as ‘shape marks’. These posts will analyse relevant jurisprudence for understanding the applicable IP framework for jewellery protection in India.

Copyright v. Design Protection

In order to understand the relationship between copyright and design law, it is first necessary to differentiate between ‘design’ and ‘artistic work’. Section 2(c) of the Copyright Act, 1957 defines ‘artistic work’ as including, amongst other things, a drawing and any work of artistic craftmanship. Section 2(d) of the Designs Act, 2000 defines ‘design’ as ‘features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye’ and excludes ‘any mode or principle of construction or anything which is in substance a mere mechanical device’. Most importantly, ‘design’ also excludes any artistic work as defined in section 2(c) of the Copyright Act, 2000.

The difference between two can be better understood by referring to Bombay High Court’s decision in Pranda Jewelery v. Aarya 24K. This case dealt with the issue of copyright infringement in case of gold sheet articles of deities and religious symbols. Here, the court gave the example of copying of a painting onto a canvas or paper and explained that when it is copied, the features of shape, configuration are not applied, but the very painting is reproduced. However, when features of shape, configuration are applied to articles such as a refrigerator or a mixer, the court opined that the ‘features or patterns though they are contained in drawings, diagrams or plans and though they may have artistic quality, are ‘designs’.’

Section 15 of the Copyright Act, 1957 provides that copyright will not subsist, in respect of any design registered under the Design Act, 2000. It further states that if a design can be registered under the Designs Act, 2000, but has not, then the design is protected to the extent of fifty applications. This means that when designs are registered under the Designs Act, 2000, they can be protected for fifteen years, otherwise for not more than fifty applications. (Earlier posts on design v. copyright debate can be found here.)

In Pranda Jewelery, the court held that the drawings, as well as, the reproduction of it in gold plate in three dimensional form constituted artistic work. The reasoning behind this was that ‘what is produced is the artistic work itself.’ It was clearly stated that the plaintiffs have a copyright in the reproduction of the drawings in the form of gold plates. This copyright was held to be distinct from the copyright in the underlying drawings. The court also added that even in the case that they are designs, and not artistic works, it has not been shown that there have been more than fifty applications. The court does not appear to be entirely sure of its decision, as it has considered the possibility of the three dimensional gold plate constituting a design.

The situation would be quite different if the jewellery itself is considered to be a design, distinct from the copyright in the drawings of the design. If the drawing is considered to be protected under copyright law and the jewellery is protected under design law, i.e., simultaneous protection under design and copyright law, wouldn’t that essentially mean that the design is being protected for way longer than fifteen years?

A fashion clothing case might better help us to understand the position with regard to jewellery in case it is manufactured more than fifty times. In Ritika Private Limited v. Biba Apparels, a single bench of the Delhi High Court held that as Ritu Kumar had reproduced a specific design on clothing more than fifty times, the design was neither entitled to design protection, nor entitled to copyright in the original drawing. The court stated that if the prints were created from copyrighted works and then printed on dresses, ‘may be in such a case without saying so finally on this aspect’, a copyright infringement suit might have arisen. But since, the dresses were being created by industrial process and not by exact affixation of the print taken from the copyrighted work on the dress, the court stated that copyright has not been violated. In essence, the court held that there is no IP protection available to a certain design that has been reproduced on clothing more than fifty times. (discussed in detail here) In case of jewellery, the court would probably take the same stand if someone decides to produce more than fifty copies of another’s designs through industrial process.

That brings us to another question, what about protection of bespoke designs that have been handcrafted, couldn’t they be protected as works of ‘artistic craftsmanship’? On 9 February, in the case of A. Sirkar v. B. Sirkar Jahuree Pvt. Ltd., the commercial court at Alipore allowed a temporary injunction application for copyright infringement and passing off of jewellery. In this case, both the parties were jewellers and the plaintiff had claimed its jewellery to be the result of ‘artistic craftsmanship’, but the court did not question, discuss or decide upon this aspect. In Pranda Jewelery, the court held gold sheet jewellery to be artistic work itself, i.e., it was protected under the same category as a drawing, and did not discuss anything regarding artistic craftsmanship.

In Microfibers Inc. v. Girdhar and Co., a division bench of the Delhi High Court observed that the legislative intention behind the Copyright Act, 1957 and Designs Act, 2000 appears to be granting higher protection to ‘pure original artistic works’ and ‘lesser period of protection to design activity commercial in nature’. The term of protection granted by the legislature for copyright is life plus 60 years, while for a design it is 15 years and thus, the court reflected that the legislature intended to treat commerce and art differently.

After examining the above cases, the answer for IP protection of jewellery does not seem straightforward. It’s difficult to predict what decision a court would give regarding a particular piece of jewellery, whether it would consider the piece to be an artistic work or a design. It cannot be surely determined where design rights begin and copyright protection ceases. The only thing that is clear is that copyright in the original drawing continues to exist, while it ceases to exist for a design under Section 15 of the Copyright Act, 1957, if more than fifty applications are done. If a design has been applied more than fifty times without registration and the court decides to follow the judgement in Biba Apparels, then protection to the original drawing may also not be given. This might leave the jeweller in a position where they can’t prevent others from duplicating their designs.

Thus, if a jeweller plans on making more than fifty applications of a certain jewellery design, then the safe way to go would be registration of jewellery designs under Designs Act, 2000 and if the plan is to make less than 50 copies, then based on the law non-registration does not appear to be a problem. If the decision regarding the number of copies has not been made before hand, then the designs should be filed for registration prior to marketing and sale, as Section 4 of the Designs Act, 2000 prohibits the registration of a design that ‘has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration’. Another consideration is whether the jewellery would fall under the category of artistic craftsmanship, because if it does then design protection is out of question.

Adaptation or Reproduction Right

When original drawing of a jewellery design is brought to life, i.e., converted from paper to their three dimensional form, should this conversion to be called an ‘adaptation’, or ‘reproduction’, In A. Sirkar, the court called it the former, while in Pranda Jewelery, the conversion of sketches into gold articles was referred to as ‘reproduction’. The legal implications of using both these terms needs to be understood better, in order to see which may be a more appropriate term for describing the creation of jewellery from a drawing.

Section 2(a) of the Copyright Act, 1957 defines adaptation in relation to an artistic work as ‘any use of such work involving its rearrangement or alteration’ (emphasis supplied) and also as ‘the conversion of the work into a dramatic work by way of performance in public or otherwise’. Section 14(c)(i) grants the copyright holder the exclusive right of reproduction in case of artistic works, in ‘any material form including – …(C) depiction in two-dimensions of a three-dimensional work’. Since jewellery is generally created in the exact manner as it has been initially drawn on paper, reproduction seems to be the suitable term in this context. The right to adaptation would be applicable, if the three-dimensional outcome is slightly different than the two-dimensional drawing, or if a drawing for jewellery has been inspired from an earlier work, or if the jewellery has been altered at any point. Reproduction or adaptation, whichever the appropriate term depending on the particular piece of jewellery, it would be applicable irrespective of whether the jewellery would be protected under design or copyright law, as the underlying work would be protected under copyright law.

(H/t to A. Banerjee for drawing our attention to A. Sirkar v. B. Sirkar case).

Topical Highlight

BigBasket and Daily Basket Row – Confusion or Bullying?

Logos of the companies

Anupriya analysed the widely reported ‘cease and desist letter’ sent by BigBasket to Daily Basket alleging infringement of their trademark on the word, ‘Basket.’ She begins by explaining how the term “basket” pretty much indicates grocery business in general. She revisits the Trade Marks Act and a number of cases discussing the spectrum of distinctiveness of a trademark and argues that while comparing marks, it is incorrect to take a part of the word and compare it with a part of the other word; the entire mark must be considered as a whole and compared with the other mark as a whole. Relying on this, she criticises BigBasket’s claimed monopoly on ‘basket’. Further, she recounts the principles relating to ‘likelihood of confusion’ and well-known marks, to assert that trade mark law should not be weaponised by big corporations to grow bigger at the expense of smaller firms. Finally, she discusses the practice of trademark bullying and the legal remedies available against it to smaller businesses, with reference to the social media retaliation approach adopted by DailyBasket.

Thematic Highlight

Of Geospatial Data Deregulation, Intellectual Property and Personal Data Protection

Book by John Green

I analyse the recent Geospatial Data Deregulation Guidelines. I begin by reviewing the Mapping policy of India, and the impact of the liberalisation plan on innovation. I then examine the implications of geospatial data processing under the Personal Data Protection Bill, considering cases where such data consists of information that qualifies as ‘personal data’ or ‘sensitive personal data’ and thus creates conflicts with the data fiduciary’s IP rights. I also discuss the conditions for protection of maps and geospatial data under copyright law and argue that not only is copyright law an inadequate tool for its protection, but the policy question of monopolization of geospatial data itself needs detailed consideration. I also look into the possibility of limited types of location information being eligible for trade secret protection under India’s judicial doctrines. Lastly, I discuss how the Government of India owns copyright over maps and geospatial data it collects by utilization of public funds intended to be used for public purposes. Criticising this, I argue that the government should not retain this copyright, or at the very least, not charge taxpayers for non-commercial uses which they are entitled to under the fair dealing exceptions in Section 52.

Protection of Jewellery: A Combination of Trademark, Design and Copyright Law? – Part I

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In this post, Varsha looks into the question of IP protection of jewellery in India. She begins by clarifying the statutory scope of design protection and copyright protection of artistic work with reference to the case of Pranda Jewellrry v. Aarya 24k, which dealt with the issue of copyright infringement in case of gold sheet articles of deities and religious symbols. She then considers the case of jewellery itself being a design, distinct from the copyright in the drawings of the design. She compared this with a single bench of the Delhi High Court regarding fashion apparel, which held that no IP protection available to a certain design that has been reproduced on clothing more than fifty times. She then discusses the case of A. Sirkar v. B. Sirkar Jahuree, where an Alipore court allowed a temporary injunction application for copyright infringement and passing off of jewellery. In this case, both the parties were jewellers and the plaintiff had claimed its jewellery to be the result of ‘artistic craftsmanship’, but the court did not question, discuss or decide upon this issue. Finally, she states that when original drawing of a jewellery design is brought to life, i.e., converted from paper to their three dimensional form, this conversion would be called an ‘adaptation’, or ‘reproduction’, depending on the level of accuracy with which it is done.

Other Posts

DCGI Draws Ire of Delhi High Court for Violating the RTI Act

Matthews discussed the Delhi High Court’s recent order in Prashant Reddy v DCGI, against the drug regulator for violation of the Right to Information Act. He explains that the case arose in relation to the report of Dr. T.M. Mohapatra Committee, which was constituted by the Drugs Controller General of India pursuant to the scathing criticisms in the 59^th Parliamentary Standing Committee Report on the existing mechanism for approval of drugs in India. Prashant had made several attempts under the RTI mechanism to obtain the T.M. Mohapatra Committee Report, and had only been sent an incomplete copy of the same by the Central Information Commission. Thereafter, directions issued by the Delhi High Court in September 2020 in response to Prashant’s writ petition were also not followed. Matthews notes that the CDSCO, in its submissions to the CIC, revealed that it did not have the report and had to procure it from Dr. T.M. Mohapatra himself. The Delhi High Court has taken note of the flagrant violation of RTI Act and has imposed costs of Rs. 25,000 on the DCGI. The DCGI has also been asked to file a status report in relation to the digitization of its records. Matthews commends this order, explaining how it emphasizes transparency and therefore, good governance.

Intellectual Property Appellate/Advisory/Adjudicatory Board?

In a guest post, Amit Tailor discussed a recent practice of the IPAB/Board ‘suggesting’ amendments to patent applicants, and allowing them without concurring with the Controller which he believes to be beyond the scope of its statutory mandate. He recounts cases of the board finding a new ground on which the claim(s) can be objected to, i.e. raising a fresh issue suo moto, during the appeal process; and then instead of remanding the case back to the adjudicating authority to adjudicate on merit, the board on its own volition declared it as a “drafting error” without requiring the applicant to explain, and similar instances. Looking into the scope of the Board’s mandate, he revisits Section 58 of the Patents Act which indicates that the Board has very limited power to allow amendments before it, i.e. only during the revocation proceedings, and that to by allowing the patentee to amend the same, and in no case the Board can direct or suggest amendments on its own. The powers akin to civil court under CPC provided to the board are also for the limited purposes of receiving evidence and examining witnesses, contempt etc. and not to ‘suggest’ or ‘’direct’ amendments or allow the amendments before it to be granted, without hearing the controller. Amit thus concludes by criticizing the Board as it must protect the public interest by not suggesting amendments to make ‘objection worthy’ claims ‘allowable’.

Other Developments

Decisions from Indian Courts

• Delhi High Court in Rohit Sharma v. A.M Market Place Pvt Ltd & Ors dismissed an appeal filed against an interim injunction passed by a Trial court where it decided to proceed ex-parte as there was no infirmity to be found with order with regards to delivery of summons to the Appellant [March 3, 2021].
• Gujarat High Court in Vimal Dairy Limited v. Gujarat Tea Depot Company dismissed an appeal refusing to interfere with the injunction passed by a trial court which had restrained the Appellant from using the trademark, ‘VIMAL’ [March 1, 2021].
• Delhi High Court in Himalaya Drug Company & Ors v. Ashok Kumar & Ors passed an ad-interim injunction restraining the defendants and its associates from using the impugned trademark ‘HIMALAYA’ or any other identical with and/ or deceptively similar word/mark/label/device to the plaintiff’s said trade mark/label in relation to their impugned goods [February 24, 2021].
• Madhya Pradesh High Court in M/s Mold Tek Packing v. SD Containers, ruled that for purpose of justice the civil suit in question can be tried only by invoking clause 9 of Letters Patent read with rule 1(8) of Chapter IV of High Court Rules, 2008, and thereby directed the Registry to list the matter before appropriate Single Bench of the Court [February 27, 2021].

Other News

• Delhi High Court has directed Google to suspend the advertising account of HappyEasyGo on the Google Ads Programme as part of the trademark infringement suit preferred by MakeMyTrip.
• A piece in Hindustan Times weighs the arguments relating to India and South Africa’s Proposal to WTO to waive certain provisions of the TRIPS Agreement.
• US-based Intercontinental Brands, maker of Oreo has moved the Delhi High Court against Parle Products, alleging that the design of one of its biscuit brands is similar to that of its popular biscuit.
• Dolby has approached the Delhi High Court alleging violation of Standard Essential Patents by Reliance Jio and Reliance Rerail.
• Tribal dolls, better known as “aadivasi gudiya” from Jhabua district of Madhya Pradesh, are reportedly set to receive a Geographical Indication (GI) tag.
• A US court ordered chip-making giant Intel to pay nearly $2.18 billion to VLSI Technology, an affiliate of SoftBank-owned Fortress Investment Group, for alleged infringement of two patents.

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We’re pleased to bring you a guest post by Vedangini Bisht and Shubham Chaudhary on a recent Supreme Court order wherein the Doctrine of Copyright Exhaustion was recognised vis-a-vis Software. Vedangini and Shubham are both fourth year students at National Law University, Delhi. Vedangini has earlier written guest posts for us on frequently overlooked corollaries of academic patenting here, and the need for an expansive application of copyright exhaustion on digital medium here.

Supreme Court Recognises Doctrine of Copyright Exhaustion in Softwares, And Its Subservience to EULAs

Vedangini Bisht and Shubham Chaudhary

Does the doctrine of Copyright Exhaustion also exist in software? Can it be restricted through a EULA? The ill-effects of not recognising digital copyright exhaustion, especially in computer programmes, has been discussed by one of the co-authors here on the blog.

On 2 March 2021, the Supreme Court in Engineering Analysis Centre for Excellence Pvt. Ltd. v. CIT held that amounts paid by Indian companies for using software developed by foreign companies would not be considered as “royalty” which is taxable in India. While the case is primarily concerned with issues related to tax law, it also touches upon copyright issues related to End User License Agreements (“EULA”) of software and the doctrine of Copyright Exhaustion. Briefly, the Court recognised the doctrine of Exhaustion in software and held that the EULAs in the facts of the case were not licenses under Section 30 of the Copyright Act, 1957 (“Act”) as they did not transfer any rights given under Sections 14(a) or 14(b) of the Act to the Indian distributors. Hence, the Supreme Court recognised EULAs that allow end users to use software but do not transfer or exhaust any rights given under Sections 14(a) or 14(b).

While the Delhi High Court has previously adopted the same view that the said amount could not be a royalty, a view also adopted by the Madras High Court, the Karnataka High Court has adopted a different position, a combined appeal from which is how the question reached the Supreme Court.

The decision has been hailed by tax experts, as it brings to a close a contention which had been around for two decades.  But the Court has also set clear two important issues with respect to the doctrine of Copyright Exhaustion.

Recognition of the Doctrine of Exhaustion in software

First, the Supreme Court has made clear that there indeed exists Copyright Exhaustion in computer programmes. It did so by stating that the 1999 Amendment to the Act re-established the doctrine of exhaustion in the statute.

120. As has been mentioned hereinabove, section 14(b)(ii) of the Copyright Act was amended twice, first in 1994 and then again in 1999… After the 1999 Amendment, what is conspicuous by its absence is the phrase “regardless of whether such copy has been sold or given on hire on earlier occasions”. This is a statutory recognition of the doctrine of first sale/principle of exhaustion.

This sets to rest the debate regarding the effect Section 14(b)(ii) had on the doctrine of Copyright Exhaustion provided under Section 14(a)(ii).

The 1994 Amendment to Section 14(b)(ii) created an exception to the doctrine of Copyright Exhaustion in software. However, it had largely been the understanding that, had the aim of deleting the words “regardless of whether such copy has been sold or given on hire on earlier occasions” in the 1999 Amendment Act  been to re-establish the doctrine of copyright exhaustion, then this would have been achieved by Section 14(a)(ii) itself. That would render Section 14(b)(ii) largely redundant. Hence, it was debated that Section 14(b)(ii) still continued to be a clear exception to First Sale Doctrine. Section 14(b)(ii) being a specific provision in respect of computer programmes, would override Section 14(a)(ii).

With the doctrine of exhaustion now being recognised in computer programmes, this shall now allow for the creation of secondary markets, and in effect, alternative distribution models. An immediate social consequence would be greater access. It creates an avenue where if a work is withdrawn by the right holder the work would continue to remain in circulation. This would further increase competition in the market and consequently, would provide better consumer experience.

EULAs Ability to Restrict Copyright principles?

However, what this case also does, is provide overriding powers to EULAs to restrict the doctrine of Copyright Exhaustion. The Court laid down that in even in situations where the software is purchased directly by an end-user from a foreign supplier or manufacturer, the payments for using foreign software did not amount to ‘royalty’ which is taxable in India since all the rights with respect to further sale of it are restricted by the EULA in this case. Restriction of copyright exhaustion through EULAs has also been recognised in the US, where the Court has largely held that a software user is a licensee rather than an owner of a copy where the copyright owner significantly restricts the user’s ability to transfer the software. It appears that India is moving in the same direction.

Another important consequence of the doctrine of Exhaustion is that this recognition allows users to modify products, adapting them to their own needs. However, it is also necessary to mention that in the present case, the EULAs explicitly forbid the end users from reverse engineering the software. The fair dealing provisions contained in Sections 52(1)(aa) to (ad) of the Act include reverse engineering of software for certain purposes. Hence, it can be argued that engaging in reverse engineering does not result in copyright infringement. However, as has been shown in another article on the blog, the law in India is unclear on whether EULAs can restrict fair dealing provisions.

Reverse engineering allows a consumer to customise the software they own as per their own needs. Further, it is essential to improve the inter-operability of the software with other programmes. Inter-operability and compatibility of software falling in the same category would improve competition in such category, as consumers can switch to a competing software without losing their work. Restrictive EULAs would grant the right of developing such improvements exclusively to the base software maker which can charge any price for supplying such improvements. Unfortunately, this has not been dealt with by the Court in this case and the uncertainty still remains.

Transfer from copyright owners to distributors does not amount to first sale

Second, the Supreme Court has clarified the position of distributors when it comes to sale of software, and held that conveying the title to distributors would not amount to first sale. Hence, Copyright Exhaustion does not apply when it comes to distributors.

142. The language of section 14(b)(ii) of the Copyright Act makes it clear that it is the exclusive right of the owner to sell or to give on commercial rental or offer for sale or for commercial rental “any copy of the computer programme”. Thus, a distributor who purchases computer software in material form and resells it to an end-user cannot be said to be within the scope of the aforesaid provision. The sale or commercial rental spoken of in section 14(b)(ii) of the Copyright Act is of “any copy of a computer programme”, making it clear that the section would only apply to the making of copies of the computer programme and then selling them, i.e., reproduction of the same for sale or commercial rental.

The Court also contrasted it with the John Wiley case, where low-price editions of a book were sold in a territory where they were not permitted to be sold. Since the sale was not permitted, the sale of them could not be considered ‘copies already in circulation.’ That is the reason the doctrine of exhaustion was not applicable. But in this case, the copies are put in circulation by the foreign suppliers themselves via distribution agreements, and thus would not be hit by Section 14(a)(ii).

While agreeing that the 1999 Amendment of Section 14(b)(ii) has titled the provision in favour of the purchaser, the Court sought to bring attention to the objective of introducing section 14(b)(ii) in the first place. The objective is to prevent copies of computer software once sold from being reproduced and then transferred by way of sale or otherwise. A distributer cannot be understood as the user of the computer software at all. And has to pass on the said software, as shrink-wrapped by the owner, to the end users. They merely act as intermediaries. Hence, there is no grant of copyright interest of distribution, as was argued by the CIT, and therefore, no payment of royalty.

This, according to the authors, is a correct reading of the provision. This has the implication that software developers can control the price of their software in geographical markets. If the copyright interest of distribution was granted to distributors, then competing distributors (who have entered into agreements with the software developer) in the same geographical market could compete to offer the best price to end users. The software developer could still ensure profits by receiving adequate remuneration for transferring the interest to the distributors

Conclusion

While there are some issues that certainly remain, most of these are inherent to Copyright Exhaustion in software all around the world, and it is expected that they shall be resolved with time. The decision is well-reasoned and brings the much-needed clarity to the doctrine of Copyright Exhaustion in software; and its relation to EULAs.