On July 13, 2018, the All India Council for Technical Education (AICTE) released a circular announcing the ‘Intellectual Property Talent Search Examination 2018’. Launched jointly by the Associated Chambers of Commerce and Industry (ASSOCHAM) and Ericsson, the talent search will reward high school students (Class 9-12) and undergraduate students who score well on the online examination.

The objective of this test is to spread awareness about IPR by sensitising the youth and fostering innovation amongst them. This is in furtherance of the objectives laid down in the National IPR Policy 2016, one of which is “IPR Awareness: Outreach and Promotion”.

As part of this IP proselytizing mission, the government set up the Cell for IPR Promotion and Management (CIPAM). CIPAM has in the past conducted a number of awareness programmes in schools and industrial associations.

The ‘Intellectual Property Talent Search Examination 2018’ comes as a successor to a number of similar initiatives. However, as Prof. Basheer and Pankhuri note in their recently published paper (covered on our blog here), indoctrinating school children with a formalistic one sided view IP may do more harm than good. As they note:

“The policy advocates that IP be taught in schools. Leading one to ask: wouldn’t a course designed to make children more creative be better for fostering creativity than bogging them down with an additional course on intellectual property? Even if schools lack the resources to impart specific courses on creativity, they could at least ensure that they don’t stand in the way of what might otherwise have been a natural flowering of creativity in children. A truth tellingly captured by Mark Twain’s sentiment: “I have never let my schooling interfere with my education.” A strenuous course on a legal regime whose alleged impact on innovation and creativity is highly contested is hardly the right recipe for a blossoming of creativity in schools.”

And at another point, they note:

“The policy assumes that innovation and creativity can be fostered only through increased IP protection, and fails to acknowledge the more significant role played by non-IP factors such as education, infrastructure, culture, financing, etc. Is it the country’s IP regime that is problematic? Or does the malaise lie elsewhere? Could it be cultural, where parents put undue pressure on their children to take up secure salaried jobs, as opposed to risky entrepreneurial ventures? Such factors are absent from the “problem representation” of the policy, and therein lies its biggest flaw. IP policy making should be driven by facts, and not faith. It must be based on empirical studies and stakeholder surveys and not on intuitions and assumptions.”

It is time that IPR is recognised and represented as a means of creation of wealth, but also a driver of socio-cultural progress and prosperity. Not just as a weapon to wield for owners, but also as a harbinger of open access to knowledge and educational resources.  Alas, one can only hope!

Image from here.

Thematic Highlight

Prof. Basheer and Pankhuri provided a critical analysis of the National IPR Policy 2016. They note that the policy is not worth celebrating, since it largely endorses dogmatic views of IPR and lacks the creativity necessary for a robust policy framework. They do, however, point out that the policy has done well to recognise the importance of open-access works and rewarding innovation through prizes and awards. They provide excerpts of their recently published paper, which provides the first comprehensive take on the policy.

Topical Highlights

Prarthana covered a recent decision of the Assistant Controller of Patents and Designs on a patent application for a pharmaceutical for the cure of giardiasis, a disease that affects cats and dogs.  While the application was eventually withdrawn, the First Examination Report found that the drug was merely a new use of a known substance, and did not have the requisite synergistic effect required under Section 3 of the Patents Act, 1970.

Divij wrote another post on the recent judgment of the Delhi High Court on standard essential patents.  He argues that on the issue of ‘essentiality’ of the patent, the court improperly placed reliance on the examination reports submitted by the plaintiff, without requiring the same to be proven. He also notes that the determination of damages was inconsistent with domestic and international jurisprudence.

I wrote on a circular issued by the AICTE, announcing the ‘Intellectual Property Talent Search Examination 2018’. This test has been announced in furtherance of the push towards increasing awareness in IPRs at an early stage amongst students at school and university. Although these efforts are commendable, I draw from Prof. Basheer and Pankhuri’s paper to argue that conducting these talent searches through examinations may not be the best way to spread awareness and recognise talent.

SpicyIP Events

Pankhuri brought to us an announcement of a certificate course on ‘IP Licensing and Competition Law’ organised by the Centre for Innovation, Intellectual Property and Competition at National Law University, Delhi. The course is to be held from August 22-26 in Delhi. Those interested are required to apply by 10 August 2018. Candidates will not have to pay a registration fee.

Other Developments

Indian

Judgments

Christian Louboutin v. Ashish Bansal & Another – Delhi High Court [July 31, 2018]

The Court granted an ex-parte decree of permanent injunction restraining the Defendants and their affiliates from using the Plaintiff’s mark “RED SOLE”, with respect to footwear, on the ground that the Plaintiff was the registered proprietor of the mark and the Defendant adopted a counterfeit trademark and a deceptively similar domain name to sell its goods, which practically amounted to infringement and passing off of the Defendant’s mark. Furthermore, the Court granted the Plaintiff punitive damages in addition to compensatory damages, in light of the immense loss to its goodwill and reputation.

M/s. Micro Labs Limited v. M/s. Eris Lifesciences Limited – Madras High Court  [July 24, 2018]

The dispute concerned the Respondent’s use of the mark “OLMIN” in respect of its product for anti-hypertension, in infringing and passing off Appellant’s trademark “OLAMINE” concerning its dermatological ointment. The Court dismissed the appeal for the sought injunction, stating that the products of the Parties were different in nature and served different purposes. However, the Court granted a stay on the proceedings till March, 2019 in light of the pending rectification application before the Intellectual Property Appellant Board.

News

Government considering restrictions on royalty payments

Thrissur court passes an interim order against Karwaan screening

Delist fake goods sellers, Delhi High Court tells Amazon

Satyameva Jayate lands in trouble over copyright issue for recreating Tajdar E Haram in the film

Delhi HC restrains firm from using ‘Limeroad’ trademark

International

Landmark Marilyn Monroe copyright dispute decided

Music companies seek a court order against Sky on copyright

SESAC, Music Industry compromise on Copyright Reform Bill in US

Steve McQueen’s family sues Ferrari over trademark

Tesla files a patent to make electric car batteries safer

Long read

There has been panic and alarm amongst doctors, especially gynecologists, since the announcement by the Ministry of Health & Family Welfare (MOHFW) on June 27, 2018 that only one public sector undertaking, Karnataka Antibiotics & Pharmaceutical Ltd. (KAPL) would be authorized to manufacture and supply oxytocin for the Indian market from July 1, 2018. The drug oxytocin is considered a critical hormone for maternal healthcare since it is used for inducing labour and more importantly, to control bleeding during labour, which can otherwise be a cause of death amongst young Indian women who tend to be anemic.

While several media reports reported the restricted manufacturing order as being announced only on June 27, the order restricting manufacture of oxytocin was issued on April 27, 2018. This strangely worded order, which was issued under Section 26A of the Drugs & Cosmetics Act, forbade the private sector from manufacturing this drug for the Indian market while still allowing them to manufacture for the purposes of exporting the hormone manufactured in India. Limiting the manufacture to only one public sector undertaking understandably caused panic amongst the medical community because the government was basically disrupting an entire market dominated by the private sector and could lead to potential shortages. Given that India has a population of 1.3 billion people, it is doubtful if just one company can meet the demand of the entire nation. It is perhaps for this reason that the government has pushed the deadline to September 1.

The background of the events leading to this order is a perfect illustration of the quackery that passes off as health policy in this country.

The court of its own motion, the amicus & the absence of evidence

The government order dated April 27 begins with the observation that the High Court of Himachal Pradesh in the case of ‘Court on its motion v. State of Himachal Pradesh’, had observed that “there is large scale clandestine manufacture and sale of the drug Oxytocin leading to its grave misuse, which is harmful to animals and humans” and that it had ordered the government to consider the feasibility of restricting the manufacturing of Oxytocin to only the public sector.

A reading of the High Court’s order delivered by a bench of Chief Justice Mansoor Ahmad Mir & Justice Tarlok Singh Chauhan reveals that the judges took up this issue of alleged misuse of oxytocin, on November 24, 2014 after they read a news item published in daily Hindi vernacular Amar Ujala alleging the “illegal use of lethal vaccine Oxytocin on fruits, vegetables and animals”. In reality, Oxytocin is not a vaccine but a hormone, naturally produced by the human body. The most common allegation, which has also been made in Parliament, by animal activists, like the incumbent Minister for Child Development Maneka Gandhi, is that Oxytocin is misused by dairy farmers to induce labour in cattle so as to force their bodies into producing milk.

 As if often the case with such public interest litigations, the high court appointed a senior advocate as amicus curiae to assist the court. The court records that the amicus curiae had “painstakingly” placed on record material demonstrating the supposedly rampant and widespread misuse of Oxytocin on milch animals, fruits and vegetables which was harmful to not just the animal but also on humans who drank the milk of these animals. The judgment records the following as the possible effects of Oxytocin on the human body:

“The Oxytocin not only effects the cow/buffalo, it filters into the milk and consequently, has been held responsible for breast and uterine cancers, male impotence, excessive hair on woman and balding for men, early or erratic periods, early development of breasts (in both sexes). Its use is also considered harmful eyes, especially in children. The hormone affects the reproductive ability of woman. Its most common symptoms are exhaustion and loss of energy. Consumption of Oxytocin infected milk by pregnant woman increases risk of hemorrhage. It is also responsible for high spike in tuberculosis cases in humans. (e) Beef all over India has been found to be extremely toxic with large amount of this drug. (f) The direct infusion of this drug in vegetables, fruits and other consumables for humans is also widespread making such food items highly infected with Oxytocin.”

Astonishingly, the court does not cite a single scientific study or research paper to back its claims.

This is not insignificant because the central government in 2010 had commissioned the Indian Medical Research Council (ICMR) to address various health and safety issues related to Oxytocin. In one of the studies published in the Indian Journal of Medical Research, which is the official publication of the ICMR, a team of 5 scientists from the National Institute of Nutrition (a unit of ICMR) concluded that “These findings suggest that exogenous OT injections do not influence its content in milk. Further, OT present in milk is rapidly degraded during intestinal digestion, ruling out its intestinal absorption and associated adverse health consequences, if any.” In other words, there was no evidence that oxytocin administered on milch animals would have an adverse effect on the human body.

There is a second study, reportedly conducted by the National Dairy Research Institute (NDRI) in September, 2016 which reported that oxcytocin had no side-effects on the health of animals and milk because the hormone is a naturally occurring in milch animals and is similar to other hormones like insulin. The risk, as per the study, of continuously administering oxytocin is that the milch cattle develop an addiction and don’t respond to normal milk ejection stimuli. This second study has been cited by the incumbent Minister of Health J.P. Nadda in the Rajya Sabha on December 2, 2014 while responding to a question from Dr. Chandan Mitra asking the government whether it had studied the ill effects of Oxytocin on animals and human beings. The same study was cited once again by the incumbent Minister for Agriculture Radha Mohan Singh in response to a question in the Lok Sabha by Supriya Sule and Satav Rajeev on the effects of administering Oxytocin on animals. The amicus and by extension the High Court appear to have been entirely unaware of the above discussed studies because there is no mention of either study in the judgment.

The multiple regulatory deliberations on Oxytocin at the DCC

The two statutory bodies under the Drugs & Cosmetics Act are the Drugs Consultative Committee (DCC) and the Drugs Technical Advisory Board (DTAB). While the first is committee consisting of representatives of different state drug controllers with a mandate to ensure uniformity of regulations amongst the country, the second is an expert body consisting of regulators and independent experts with a mandate to provide technical advice to the Central Governmen i.e. the Ministry of Health & Family Welfare (MOHFW). Both bodies can only make recommendations to the MOHFW which then takes its own decision.

Maneka Gandhi

The issue of stricter regulation of Oxytocin was discussed at both the DCC and DTAB on multiple occasions, in response to petitions and questions in Parliament by Maneka Gandhi demanding action against the misuse of Oxytocin. The DCC discussed the issue on July 20, 2012 and November 12-13, 2013. The minutes of these meetings record mostly generic statements about the supposed misuse of Oxytocin and how it is pushed through clandestine operations – there is no mention of any statistics or verifiable source of information regarding the “widespread misuse”. The meeting in 2013, records that the issue was being taken up specifically because Maneka Gandhi had raised the issue of misuse of Oxytocin with the Secretary of Health. These two meetings of the DCC find mention in the High Court’s order. A third meeting not mentioned in the court’s order, took place on October 16, 2015 where Maneka Gandhi herself turned up before the DCC to share her views with the members. Going by the minutes, it does not appear that Maneka was even aiming for a ban of Oxytocin but better regulation of clandestine, illegal manufacture and sales.

The DTAB’s finding that Oxytocin & the central government’s orders

The DTAB first discussed this issue on November 25, 2013 because Maneka Gandhi had raised it in Parliament. Unlike the DCC meeting held just days earlier, the DTAB noted the fact that the Department of Animal Husbandry, Dairying and Fisheries, Ministry of Agriculture had not recommended the ban of the hormone for veterinary uses because it had therapeutic applications on animals. As a result, the DTAB declined to recommend a ban on the drug for veterinary uses. Instead it made generic recommendations to state drug controllers to curb misuse of the drug through increased surveillance and raids.

A few months after that meeting, on January 17, 2014 the central government issued an order under Section 26A of the Drugs & Cosmetic Act, 1940 ordering the formulations meant for veterinary uses to be sold to only veterinary hospitals while ordering bulk oxytocin manufacturers to supply the active pharmaceutical drug only to licensed manufacturers. The opening line of this particular order noted that the central government “is satisfied that the drug Oxytocin has a definite therapeutic use in certain medical conditions”.

Three months after that order was issued, on April 1, 2014 the DTAB met to discuss only Oxytocin; there was no other item on the agenda. The minutes of the meeting record, with some exasperation, that notwithstanding the order issued on January 17, 2014 tightening the distribution channels of Oxytocin, “Smt. Maneka Sanjay Gandhi, M.P. has however, again written to the Secretary, Ministry of Health and Family Welfare that the misuse of Oxytocin, is leading to a substantial loss of livestock in the country.” The minutes also record that the “Secretary, Health and Family Welfare, had therefore, desired that the matter should be expeditiously placed before the DTAB for its considerations.” Despite the pressure from Maneka Gandhi, the DTAB, to its credit, reiterated its position that the hormone has a definite role in the medical field both for humans and animals thereby ruling out any ban on the legitimate manufacture of the drug especially when sale of the hormone was possible only under prescription. Regarding the problem with manufacture and sale of the drug through illegal channels the DTAB concluded that the problem of misuse could not be countered by banning the drug. The committee instead prescribed a public awareness strategy combined with new rules on maintaining records of sales of Oxytocin.

Six months after the DTAB meeting, and after Maneka Gandhi became the Child Development Minister in the Modi cabinet, the then Drug Controller General of India (DCGI) G.N. Singh sent a circular to all state authorities, informing them that “Smt. Maneka Gandhi, Hon’ble Minister of Women & Child Development has taken up the matter with the Secretary, Ministry of Health & Family Welfare that the misuse of Oxytocin, is leading to a substantial loss of livestock in the country.” The circular then notes that an inter-ministerial committee was constituted by the MOHFW to study the problem and that the committee had recommended all state authorities to keep a strict eye on illegal use of Oxytocin and to investigate the sources of illegal supply. The circular also requests all state authorities to provide details of manufacturers of Oxytocin along with the statistical information on the seizures conducted, quantity seized, persons arrested, prosecutions filed during the previous three years. Finally, it appears, the central government was trying to collect information to figure out the scope of the allegations about Oxytocin misuse but the question is whether drug regulators were the appropriate authorities who could even collect such information.

State drug regulators can only regulate the quality and sale of the drug till the point of the sale (chemist). Thereafter, the manner in which a drug is misused by diary farmers on milch cattle falls within the jurisdiction of authorities under The Prevention of Cruelty to Animals Act, 1960. It is only police officers and other authorities under this legislation who can prosecute cases of misuse of Oxytocin on animals. Drug inspectors have no jurisdiction to prosecute cases of cruelty to animals. It follows that they will not have any credible information on the scale of misuse of Oxytocin. Going by the figures presented in Parliament on March 20, 2018 by Krishna Raj, the Minister of State of Agriculture and Farmers Welfare (also responsible for Animal Husbandry) in response to a question by MP George Baker, there were less than handful of prosecutions related to misuse of Oxytocin. His response in Parliament listed 8 cases in Chattisgarh related to seizure of Oxytocin injections, 1 case in Karnataka, 4 cases in Tamil Nadu and 7 cases in Uttar Pradesh. A different set of figures was put forth in Parliament on July 20, 2018 by the Minister of State for Health Ashwini Kumar Choubey who reported a total of 42 cases filed in the previous year by different state drug regulators and the central regulator. Most of these cases are likely for violation of the Drugs & Cosmetics Act rather than offences under the Prevention of Cruelty to Animals Act because as explained earlier, Drug Inspectors cannot prosecute cases of animal cruelty, they can only prosecute violations of the Drugs & Cosmetics Act. In the case of Oxytocin there are special rules requiring packaging of the hormone in a single blister pack which several manufacturers appear to be violating this rule attracting prosecutions from the regulators. In no event is this proof of misuse of the hormone on milch cattle.

In 2015, the DTAB took up the issue of Oxytocin twice, once at its 69^th meeting on April 22 and a second time at its 70^th meeting on August 18. The DTAB invited to these meetings, experts from the Indian Veterinary Research Institute (IVRI), ICAR – Ministry of Agriculture and the National Dairy Research Institute (NDRI). All the experts concurred that Oxytocin was required even for veterinary purposes and could not be banned. The problem identified by the experts was the unauthorised manufacture and sale of Oxytocin. The Joint Commissioner of FDA, Maharashtra stated in the 70^th meeting that the Oxytocin manufactured by units licensed under the Drugs & Cosmetics Act was too expensive to be used by milkmen and that the problem was with raw material being smuggled across the border for crude manufacturing by unlicensed units. According to the Commissioner, it was this Oxytocin that was cheap enough to be used by dairy farmers. Both times, the DTAB agreed that the only response to the problem was increasing surveillance and educating diary farmers about the downsides of overusing Oxytocin.

The High Court and its judgment  

The High Court in its judgment dated March 15, 2016 takes note of only the DTAB meetings in 2013 and 2014, missing out the more detailed deliberations in 2015. The court then concludes, without citing any evidence whatsoever, “that inspite of various provisions of the Drugs and Cosmetics Act and other statutes in place, this Court cannot be oblivious to the fact that there is large scale manufacture and sale of drugs carried out in clandestine manner and that there is grave misuse of Oxytocin by farmers and dairy owners, which is the matter of great concern.”

The fact of the matter however is that not a single one of the meetings of the DCC or DTAB ever produced any particulars regarding the scope of the problem. It is thus baffling that the High Court concluded that the problem was rampant. However, convinced as it was about the misuse of Oxytocin, the court decided that it must issue directions for both the state government and the central government. One of these directions that was made to the State of Himachal Pradesh (and not the Union of India) was “to consider the feasibility of restricting the manufacture of Oxytocin only in public sector companies and also restricting and limiting the manufacture of Oxytocin, by companies to whom licenses have already been granted.” For almost two years, the central government did nothing about a feasibility report and rightly so since the direction was aimed at the state government and not the central government.

The pressing question now is what has changed between the 70^th meeting of the DTAB held in August, 2015 and the order of the MOHFW on April 27, 2018 to force the MOHFW to restrict the manufacture of oxytocin to the extent that the domestic supply of this crucial hormone is restricted? The answer again, appears to be Maneka Gandhi.

Did Maneka propose restricting manufacture Oxytocin to only the public sector?

In June, 2017 several months before the government issued the order restricting manufacture of Oxytocin, the Hindu reported that the government was considering restricting the manufacture of the hormone by only public sector undertakings. The report attributes the idea for restricting the manufacture of the drug to Maneka Gandhi and even quotes her close associate Gauri Maulekhi backing the proposal. Maulekhi is perhaps better known for her role in forcing the government to introduce the highly controversial Prevention of Cruelty to Animals (Regulation of Livestock Market) Rules, 2017. Those rules which threatened to derail the entire cattle trade in the country, jeopardising the livelihoods of farmers, was the result of a PIL filed by Maulekhi before the Supreme Court in 2014.

The screws start tightening thanks to the Health Secretary

In March 30, 2017 just months before the report in the Hindu, the DCGI in a communication to state drug regulators, noted that the Secretary of Health had convened a meeting on March 14, 2017 to “take stock of situation relating to restrict and regulate manufacturing of Oxytocin and to permit its manufacturing in PSU in compliance to the judgment of the High Court of Himachal Pradesh”. It is not clear why the Secretary was under the impression that the High Court’s order was directed towards the central government when the recommendation to study the feasibility of restricting the manufacture to the PSU sector was directed at ‘respondent No.1’, the state government. Nevertheless, in September, 2017 the Ministry wrote to the DCGI instructing him to communicate to all state governments to take certain directions to comply with the terms of the High Court’s order. This included the constitution of special teams in each district to control the sale of Oxytocin, strictly enforcing licensing of manufacture of Oxytocin, publishing on the internet details of licences and monthly manufacturing of Oxytocin and finally steps to sensitise the pubic on misuse of oxytocin. Restricting manufacture to the public sector was not yet on the agenda.

The DTAB met once again on February 12, 2018 and Oxytocin was yet again on the agenda. The minutes of the meeting record a terse recommendation to prohibit the import of Oxytocin and restricting the supply of Oxytocin to only registered hospitals and clinics in both the private and public sector. Unlike the minutes of the earlier meetings that recorded the views of different members the minutes of this meeting only stated the final conclusion without any reasoning. More importantly though, the DTAB never made a recommendation to the Ministry to restrict manufacture to only the public sector.

The meeting with the manufacturers of Oxytocin & the restrictions that followed

Four days after the DTAB’s meeting, the new DCGI Eswara Reddy issued a notice summoning all the manufacturers of Oxytocin on February 22, 2018 to discuss the issue of illegal manufacture and use of Oxytocin since there were reports that the hormone was being misused in India on milch cattle. There was no mention in the notice of any plan to restrict manufacture of the drug to only the public sector.

After meeting the manufacturers, the DCGI issued a public notice on February 28, 2018 regarding the alleged misused of Oxytocin. The notice invited public comments on a proposal to restrict the manufacture of Oxytocin to only KAPL and also clearly mentioned the High Court’s judgment as the inspiration behind the move. The notice also made it clear that the private sector could still manufacture but only for export and not the Indian market. The notice was entirely silent on the earlier DTAB meetings that discussed the issue threadbare.

While the minutes of the meeting with the manufacturers are not publicly available, it is known is that the government clearly stepped up efforts on the Oxytocin issue in the months that followed. The push appears to have come from the Prime Minister’s Office as reported by the Wire which conducted a high-level meeting. The source cited in the Wire’s report was a circular issued on April 6, 2018 by the Anti-Smuggling Unit of the Central Board of Excise and Customs (CBEC) informing its various departments that subsequent to a meeting held at the Prime Minister’s Office (PMO) it was decided that all the bonafide requirements of Oxytocin should be met by indigenous production and all imports should be banned. All units were thus alerted to the possibility of smuggling and were instructed to keep vigilant.

Thereafter on April 9, 2018 Dr. Eswara Reddy chaired a meeting of the DCC consisting of all state drug regulators, where they were informed that amongst other measures DTAB at its meeting on February 12, 2018 had recommended restricting manufacture of Oxytocin only to public sector units. This was blatantly false because DTAB never made such a recommendation in its February meeting.

The orders under Section 10A & 26A

In April, the Ministry of Health issued two orders related to Oxytocin. The first was issued on April 24, 2018 under Section 10A of the Drugs and Cosmetics Act, 1940 prohibiting the import of Oxytocin into India, with immediate effect, on the grounds that the central government was “satisfied that the use of the drug Oxytocin and its formulation in any name or manner is likely to involve certain risk to human beings and animals and that it is necessary and expedient to prohibit the import of the said drugs in the public interest.” This was a grossly incorrect statement because government ministers in Parliament as well as the DTAB have time and again, reiterated that Oxytocin was of vital importance for both humans and animal. In fact, in its earlier Section 26A order issued in January, 2014 the MOHFW had categorically expressed its satisfaction that Oxytocin had a definite therapeutic use in certain medical conditions. What changed this conclusion?

The reason the MOHFW had to blatantly lie in this manner was because Section 10A of the Drugs & Cosmetics Act allows the government to prohibit import only if it is satisfied that the use of a drug is likely to involve any risk to human beings or if it lacks therapeutic value or lack therapeutic justification.

The second order was issued by the MOHFW on the April 27, 2018 under Section 26A of the same legislation and was to come into effect from July 1, 2018 (which date has been pushed to September 1, 2018). Unlike, the import ban order, the order under Section 26A was justified on the grounds that the High Court of HP had “observed” that “large scale clandestine manufacture and sale of Oxytocin was leading to its grave misuse, which is harmful to animals and humans”. This possibility of misuse is quite different from classifying the drug itself as a risk to animals and humans, as was the language used in the order under Section 10A.

Citing the High Court’s recommendation to study the feasibility of restricting Oxytocin to public sector units, as well as the DTAB recommendation to regulate the manufacture of the hormone, the order of the MOHFW imposes a number of conditions on the sale of Oxytocin, the most important of which was the decision to restrict manufacture for the domestic market to only the public sector, while allowing the private sector to continue manufacturing for exports. The order is entirely silent on how these supplies from the private sector would be barred from entering the domestic trade channels. In addition to restricting sales to the public sector, the order by the Ministry also disrupts the entire distribution market by mandating the sale of Oxytocin by the public sector directly to registered hospitals in the public or private sector or to specified government programs. The sale through chemists was completely prohibited. This means that regular trade channels are completely disrupted leading to severe market inefficiencies that will likely cause the price of the drug to spike once the ban is actually enforced.

The orders for a crackdown

Following this comical process, in the month of May, in preparation for the clampdown on Oxytocin, the DCGI issued an office memorandum informing his staff that the issue of misuse of Oxytocin had been discussed at the “highest levels of the government” before the orders were issued under Section 10A and Section 26A and that all officers of the Central Drug Standards Control Organisation (CDSCO) would have to launch special operations to prevent and detect illegal manufacturing, sale and distribution of Oxytocin with the cooperation of the police, if necessary. The circular ended with the direction that the matter was to be given the “top priority”. Sure enough, in the following months the CDSCO announced large seizures in Bihar, while the police in Hyderabad and Punjab also announced large seizures. While the seizure in Bihar was allegedly due to violation of packaging norms, the seizures in Hyderabad and Punjab appear to be blatantly illegal because neither police force has the power to seize those drugs from distributors unless they had proof that the drug was being illegally administered to milch cattle in a way that violated the Prevention of Cruelty to Animal Act, 1960.

Why did no one in the pharmaceutical industry challenge the order in April itself?

What is more intriguing about this entire episode is the fact that nobody in the pharmaceutical industry challenged the Ministry’s orders until July 31 when it was reported that Mylan challenged the legality of the order, although even that is not visible on the Delhi High Court’s website.

The chronology of the events documented in this bizarre episode raise some very basic questions which need some deliberations:

1. The competency of the legal justice system to adjudicate issues that are deeply embedded in Science. Did the amicus accurately represent the facts and did the Bench understood the issues?
2. The disproportionate influence that well-meaning activists have on policy making. Whether the actions of the Ministry led by the Minister Menaka Gandhi were driven by a specific agenda is anyone’s guess.
3. The role of the regulator and the regulatory process once again in using scientific evidence to implement policy is once again highlighted in this episode. Political pressure notwithstanding, the role of the regulator is to speak for public health.

The larger question to ask at this stage, is who in the private sector is going to profit from the government’s extremely arbitrary actions and whether this regulatory action was a charade?

According to Times of India, Novartis obtained favourable court orders restraining five Ahmedabad-based pharma companies from manufacturing its patented drug for diabetes, Vildagliptin. Further, citing validity of its patent till 09 December 2019, Novartis moved the commercial court in Vadodara to ensure that four other companies do not get into production of the drug. It is reported that Novartis approached the Court after obtaining the requisite information from the State Government.

Justice Yogesh Khanna of the Delhi High Court, in his judgment dated July 31, 2018 (“Louboutin-3”), has granted permanent injunction and punitive damages against a Delhi based retailer for infringing the famed ‘Red Sole’ trademark of Christian Loubutin. The order appears to have taken a diametrically opposite view to the one taken by another judge of the same Court, Justice Valmiki Mehta, who barely a month ago, had held that Christian Louboutin’s ‘Red Sole’ Trademark was not eligible for trademark protection (“Louboutin-2”). Louboutin-2 itself was notable for the fact that it disagreed with the decision of another Single Judge of the same Court, who had earlier given an injunction along the lines of Louboutin-3 and had in fact declared Christian Louboutin’s ‘Red Sole’ as a ‘Well Known Trade Mark’ (“Louboutin-1”). With the latest decision, the Delhi HC seems to have slipped into a jurisprudential quagmire of sorts, with no certainty as to what the exact law on the topic is.

Soul of the Judgment

Before getting into the details of the judgment, readers may note that, in letter, the Indian Trade Marks Act, 1999 (“Act”) only provides trademark protection to “combination of colours” and not to a single colour. This distinction had formed the core of the decision in Louboutin-2 and led to the ruling that ‘Red Sole’ of Louboutin is not capable of getting protection under the Act (as discussed in detail below). Coming to the facts of Louboutin-3 (which are more or less the same in Louboutin-1 and 2), Christian Louboutin (“Plaintiff”) alleged that the Defendant had infringed its ‘Red Sole’ trademark. As the name suggests, ‘Red Sole’ trademark is borne out of the specific tone of red colour which is applied to the outsoles of the Plaintiff’s footwear. The trademark of the Plaintiff is registered with the Indian Trademark Registry and has received registration in other jurisdictions as well. Moreover, it was claimed that it had also achieved distinctiveness as a ‘well-known’ trademark. As per the Plaintiff, the Defendant retailer was selling footwear which had red outsoles similar to that of the Plaintiff and was thereby infringing its trademark. Although it would appear that there were contentions as regards infringement of the domain name as well as the trade dress of the Plaintiff, the extent to which the Defendant infringed these is unclear from the judgment.

After observing that the Plaintiff is the registered owner of the ‘Red Sole’ trademark and that the same has been “granted after rigorous examination by the trademark office”, the Single Judge gives us a description of the evidence adduced by the Plaintiff to prove its claims. Interestingly, as in Louboutin-1 and unlike in Louboutin-2, there is no deep-dive into whether mere registration itself is sufficient to exclude others from applying red colour to their products. The Single Judge thereafter goes on to grant the reliefs prayed for, including those of permanent injunction and punitive damages, observing that if a defendant’s trademark is visually and phonetically similar, no further proof needs to be considered in disposing off an infringement suit. This is strikingly similar to the approach taken in Louboutin-1, wherein also the court after listing the categories of evidence available before it, decreed in favour of the Plaintiff without looking into the vexed question of whether a single colour could have been eligible for registration in the first place.

What is striking here is that while Louboutin-1 and 3 have reached the same conclusion, Louboutin-2 has taken a diametrically opposite path with apparently the same set of facts.

The Odd Soul Out

Unlike Louboutin-1 and 3, Louboutin-2 ventures into the question of whether under the Indian law, a single colour can receive trademark protection. The Court decisively answered this question in the negative for the following reasons:

1. Language of the Act: Under S.2(m) of the Act, which defines a ‘mark’, the legislature has explicitly used the phrase a “combination of colours” as opposed to one single colour. By corollary, a single colour which does not qualify to be a mark under S.2 (m) of the Act cannot get protection as a ‘trade’ mark;

2.Inapplicability of US position: Although the Plaintiff pointed to a US case law, which has extended protection to a single color, the Judge observed that the same would not apply to India as the US legislation, unlike India, does not place any bar on registering single colours;

3.Inapplicability of Indian case laws: Despite the Plaintiff quoting two Indian judgments (including Louboutin-1), the Court observed that these decisions had not accounted for S.2(m) as well as S.30 (2) of the Act. The Court relied on a Supreme Court decision to hold that a judgment which has not considered a direct provision of a law shall not have a binding effect;

4.Distinctiveness: Although trademarks, otherwise incapable of registration, can be registered upon acquiring distinctiveness, a single colour being incapable of passing the first test of being a mark cannot acquire distinctiveness;

5.Exemption under S.30(2)(a): The proverbial final nail in the ‘Red Sole’ coffin is the exemption under S.30(2)(a) of the Act. As per it, if the trademark pertains to a characteristic of the good, then other persons when they use such characteristic for their own goods are exempted. The Court even goes on to assert that such characteristic, as covered by S.30(2)(a) “will include such functional aspects of the goods which would give an appeal or looks to the products/goods”. Thus, if a registered trademark is of such nature that it may also be a characteristic of the good, then the trademark owner cannot prevent others from using it as a feature of their goods. In other words, ‘Red Sole’ is also performing a non-trademark function, which others in the industry cannot be prohibited from exploiting.

As to the passing-off claim, apart from the exemption granted by S.30(2)(a), the Judge also notes that the issue would arise only if “defendants were not selling their goods under any wordmark trademark, and simply by applying red colour to the soles of the ladies shoes/footwear, but that is not the case herein, since the defendants are very much using a wordmark trademark being  VERONICA”, which was completely different from that of the Plaintiff. Thus, Louboutin-2 rejects, en masse, the claims of the Plaintiff.

 Reconciling the Decisions

So, are these seemingly incompatible decisions reconcilable? First of all, Louboutin-2 makes it clear in no uncertain terms that single colours cannot become a trademark. It would appear that the discussion on S.30(2)(a) exemption was de hors this finding and was made arguendo. So, could it be that the judgment in Louboutin-2 was swayed by the fact that the Defendants were only exploiting the characteristic of the ‘Red Sole’ without using the wordmark ‘Christian Louboutin’? Again, nothing in Louboutin-1 or 3 indicates that facts were any different in those cases (except for a reference in Louboutin-3 that there was use of a deceptively similar domain name and general references to “other registered trademarks of the Plaintiff”). In fact, the decision in Louboutin-2 distinguishes itself from Louboutin-1 on the sole ground that Louboutin-1 failed to account for a statutory provision. Thus, at least on the face of it, one will have to assume that these decisions are at odds with each other.

As to the larger question of whether single colours can be a trademark, the Trademark Manual (“Manual”), throws some light on this. The Manual recognizes that a single colour is capable of obtaining registration. Nevertheless, the Manual clearly warns (at page 57 under ‘Combination of Colours’) that such marks will be liable to objections under S.9 (1) (a) and weighty evidence may be required to overcome these objections, given that they are not inherently distinctive. The Manual goes on to add (at page 84) that while “a colour per se is not normally used by traders as a means of brand identification..” and “consumers are not in the habit of making assumptions about the origin of goods based and services based solely on their colour or colour of their packaging”, single colours may be “in exceptional circumstances be capable of denoting the origin of a product or service”. The Manual itself gives one a hint of what may constitute such exceptional circumstances. As per it, if the colour is “very unusual and peculiar in a trade and is recognized by traders and consumers alike that it serves as a badge of origin for that class of goods”, it may be registerable.

This blog itself has discussed this question in detail in the past and it is beyond the scope of this post to re-evaluate this question. For now, it suffices to say that there is clear ambiguity in the Louboutin series of decisions by the Delhi HC, which requires to be reconciled at the earliest.

Image from here

[Warning: Long post follows!]

The CCI, in a recent order dated 27th July, 2018, passed under Section 26(1) of the Competition Act, 2002 (“the Act”), instructed the Director General to investigate claims of price discrimination made by the Informant, Noida Software Technology Park Limited (“NSTPL”) against Star India Pvt. Ltd. (“Star India”), Sony Pictures Network India Pvt. Ltd. (“Sony”) and Indian Broadcasting Foundation (“IBF”).

Factual Overview

NSTPL is a distributor of TV content and it uses the new Head-end in the Sky (HITS) technology, a “potentially new disruptive” technology due to its numerous advantages over traditional distribution technologies.

In services provided by Multi-System Operators (MSO) and Local Cable Operators (LCO), the cable operator provides channels on a lump sum basis and the consumer is left with no choice when it comes to choosing these channels. Often, the picture quality is also low in these services. Since they are not addressable systems, the number of subscribers remain undisclosed. HITS and DTH (Direct to Home), both ,“addressable systems”, tackle this problem by employing the Conditional Access System (CAS) for encrypting TV signals and Subscriber Management System (SMS) for managing subscriber details and content and allowing users to exercise their choice of channels . The main point of difference between these two systems lies in the fact that in DTH, transmission can take place only via Ku band and in HITS, transmission can take place vie Ku band or C band. C band is said to be more effective and have a wider coverage than Ku band. HITS is said to be far superior to other technologies due to its wide reach, high quality transmission services and economical low-cost infrastructural set up. (For more information regarding the functioning of the technology, read this.)

Big media broadcasters, Star India and Sony, need no introduction. Both are members of the IBF, a representative umbrella body formed to protect the interests of its member broadcasters.

The Regulatory Framework

Regulation 3.2 of TRAI’s Interconnection Regulations, 2004 (“Regulations”) deals with the “must provide” and non-exclusion principle by mandating all broadcasters to provide access to channels to all distributors, including HITS operators who approach them, on non-discriminatory terms. The Regulations also require the framing of a Reference Interconnect Offer (RIO), which is to form the basis of all Interconnection Agreements. A RIO lays down the “technological and commercial terms” on which TV signals are offered by broadcasters to TV Distributors. The Regulations also allow for mutually negotiated agreements between broadcaster and distributor, apart from the RIO.

Past Litigation

Ever since the inception of the technology, HITS operators have faced various regulatory and legal hurdles. Way back in 2008, Dish TV approached the TDSAT, since an agent of broadcasters was withholding their channels from Dish TV on account of it being a HITS operator (Currently, Dish TV no longer holds a HITS license). Though the TDSAT noted the many benefits of the HITS technology, it ultimately decided the case against Dish TV on the sole basis of a regulatory oversight by the TRAI. Although Regulation 3.2 of the Regulations had been amended to include HITS operators, the existing policy regarding downlinking channels at the time (as per the 11^th November 2005 notification) did not cover HITs operators.

In 2013, the TDSAT considered a matter where the content aggregator, Media Pro, refused to enter into an RIO with NSTPL alleging that the technical standards laid out in Schedule IV of the Fifth Amendment to the Regulations needed to be more stringent qua HITS operators, since there was a risk of piracy of TV channels. More specifically, it was alleged that due to the huge “footprint” of HITS operators, more than one country was covered by it and a transmodulator could be used to smuggle signals into another country. Observing that the same could be done by other operators too and that operators cannot be expected to adhere to higher norms than the ones specified in Schedule IV, the Tribunal decided in favour of NSTPL. Problems with Media Pro, however still continued.

In 2014, NSTPL again approached the TDSAT following Media Pro’s refusal to reveal rates at which TV channels were provided to other similarly placed distributors. Media Pro claimed that it was not bound to disclose such details in relation to other distributors and was only bound to give signals to NSTPL on the basis of its RIO, which it claimed was non-discriminatory. The RIO it offered to NSTPL only had a la carte channels but in its agreements with other distributors, it offered bouquet rates, thereby reducing the reach of NSTPL’s operations to viewers. Further, the ratio of a la carte and bouquet rates, as per Clause 13.2A.12, was not adhered to. It also refused to enter any mutual negotiation with NSTPL. The TDSAT delivered its judgment in 2015 and decided upon various important issues. The Tribunal held that any negotiations between parties (and mutually agreed upon contracts) would be subject to principles of non-exclusion, non-discrimination and reasonableness under the Regulations. Though the TDSAT ruled that HITS operators were different from others (DTH and MSO), due to the differing technology, they ought not to be excluded from being offered similar commercial terms as other distributors. The Tribunal also deemed that the disclosure of terms of agreements entered into with other broadcasters was necessary, considering that none of the other distributors were making RIOs as per Regulations. The Tribunal lastly deliberated on the RIO. The RIO in this case offered the highest permissible rate under TRAI tariff orders, hence compelling NSTPL to accept it at high and arbitrary rates. Noting that the RIO was perpetuating discrimination instead of preventing it, it termed it as a “faux RIO”. It held that that when parties are bound by such RIOs, violation of principles contained under the Regulations take place. It further gave several directions on what a “proper RIO” was to consist of: all formats of packaging channels, along with respective prices, (adhering to the prescribed ratio) on the basis of which negotiation can be entered into. (For the copyright issue in this case, refer to our post here.) Accordingly, it ordered all broadcasters to enter into fresh Agreements.

In the present case, the Informants alleged that the broadcasters were offering RIOs with highly onerous commercial terms and were simultaneously entering into agreements not based on the RIOs with certain distributors on favourable commercial terms. Specifically, NSTPL alleged that Star India had released a RIO with an inventive scheme containing several discounts in 2014 which excluded HITs operators. After NSTPL requested Star India to make the RIO available to them, Star India offered to do the same in 2015, provided that they clear Star India’s dues. However, instead of offering the RIO, they issued disconnection notices to NSTPL. Sony, on the other hand, was in a RIO based agreement with NSTPL till 2016, after which they stopped supplying channels to them, alleging that they had defaulted in payment.

The CCI Order: Allegations. Counter-Allegations and Final Decision

While there were numerous arguments and issues in this case, let me focus on the most important ones:

Jurisdiction: Who’s to Decide, TRAI or the CCI?

Star India, in its contentions, accused NSTPL of forum shopping since they had already approached the TDSAT on similar grounds. They further argued that pricing and manner of offering fell under TRAI’s jurisdiction and was hence, an ‘occupied field’.

The Commission held that the matter was well within its jurisdiction since its powers were “additional and not in derogation” to TRAI’s power to regulate broadcasting practices under Section 62 of the Act. Quoting a recent Bombay High Court judgment in Vodafone India v. CCI, where the Court held that the CCI can only opine in a matter if it has been suitably settled under relevant Telecommunication Laws and/or decided by Regulatory Authorities or High Courts, the Commission observed that that the same had taken place in the current case. The TDSAT and TRAI both had confirmed price discrimination practiced by the broadcasters, in their earlier orders. Citing a Madras High Court judgment, which had dealt with the validity of the  2017 TRAI Regulations for addressable systems and its related tariff order under the TRAI Act, 1997, the CCI went on to observe that the matter had already been decided by the High Court. It hence concluded that the matter was open to the CCI to decide.

Section 3(4) and Section 4: Price Discrimination

NSTPL complained of various discriminatory tactics undertaken by broadcasters. According to them, the broadcasters were entering into side agreements for ‘carriage fees’ (for carrying channels) and ‘placement fees’ (for placing channels prominently in distributors’ bouquets) with vertically integrated and preferred distributors. The broadcasters, on their part, did not deny this and merely stated that only the TRAI could regulate the quantum of such fees.

Another method of price discrimination alleged to be practiced by the broadcasters was of making ‘bouquets’ of channels, i.e., grouping unpopular channels with popular ones so that even the former can garner advertising revenue by getting switched ‘on’ in the subscriber’s Set Top box. It was alleged that the channels in these bouquets were offered at more attractive prices in non-RIO based agreements than the a la carte rates of these channels in RIO based agreements, thereby compelling subscribers to opt for the bouquets rather than the individual channels.

Star India also admitted that they gave lower discounts to NSTPL and claimed that the practice was not discriminatory since they claimed that small players have less reach and there is less scope for broadcasters to earn advertisement revenue through them.  (This allegation was not dealt with by the CCI but it is an accepted practice in light of the 2015 TDSAT order which had observed as such: “It, thus, follows that the broadcaster might agree to give its channels for distribution on comparatively lower licence fee if it ensured a greater reach of its channels to the viewers and thus a larger potential for advertisement revenue. Volume-based discount in the licence fee is recognised by the Regulations 10…”)

The NSTPL alleged that the above-mentioned practices amounted to ‘constructive’ refusal to deal under Section 3(4). They also contended that there was ‘outright’ refusal since the commercially viable RIO which Star India had released in 2014 excluded HITS operators. Star India and Sony mainly refuted such claims by stating that their RIO rates were regulated wholesale prices, approved by TRAI and hence, no claims of price discrimination could be brought against them.

Under Section 4, NSTPL strived to prove the collective dominance of the broadcasters and how they were abusing their dominant position to deny market access, whereas the broadcasters tried to refute the same.

Holding that Section 4 cannot apply to a case of collective dominance, the CCI focused on Section 3(4), which also required analysis of market power. On examining their channels, the Commission came to the conclusion that Sony and Star India enjoyed a dominant position in ‘Sports’ and ‘Entertainment’ genres. It then considered the TDSAT observations regarding how badly framed RIOs could be used as a “coercive tool”. It applied these observations to refute the broadcasters’ contentions that ‘refusal to deal’ cannot take place if channels are offered at RIO rates and instead observed that such coercive RIOs can be a mechanism for refusal to deal. Further, it held that broadcaster’s dealing with NSTPL solely on the basis on RIO was discriminatory according to the TDSAT ruling and hence, it amounts to contravention of Section 3(4) of the Act.

Accordingly, it passed the order for investigation.

Analysis of the CCI’s Take

Given that Star India and Sony admitted that they offered differential pricing to Informant vis-à-vis other distributors and that there has been a finding of contravention of Section 3(4) against them, the situation appears to tilt mostly in NSTPL’s favour. However, there are some tricky legal issues that this case throws up.

Jurisdictional tussles between the TRAI and the CCI are quite common. CCI’s ability to intervene in TRAI regulated matters stems from two provisions of the Act: Section 60 describes the overriding effect of the Act and states that it would have effect “notwithstanding anything inconsistent therewith contained in any other law” and Section 62  states that the provisions of the Act were “in addition to, and not in derogation ” of other laws.

With respect to broadcasting services, the CCI has taken a similar stance to the one taken in this order in its past decisions i.e., it has relied on Section 62 to decide on a TRAI regulated matter. It has even gone on to state in one order that though it acknowledged TRAI’s status as a sectoral regulator in the broadcasting market, competition in this market would fall within exclusive jurisdiction of the CCI. The Supreme Court, in a case where the matter had been settled by the TDSAT and the parties had approached the CCI thereafter (similar to the present case), held that the CCI had a “positive role” to play and could rule on such matters, observing as follows:

“The Preamble of the Act, read with the aforesaid provisions, would show that the Commission set up by the Competition Act certainly has a positive role to play. A perusal of Sections18 and 19 would show that it is a positive duty of the Commission to eliminate all practices which have an adverse effect on competition…Section 60 then gives the Act overriding effect over other statutes in case of a clash between the Act and such statues to effectuate the policy of the Act, keeping in view the economic development of the country as a whole.”

Should such an approach, however, be allowed?

The CCI’s reliance on the Bombay HC decision is puzzling since the Bombay HC clearly stated that “interconnection agreements” (which is exactly what the CCI ruled upon) comes within the ambit of the Authority/TDSAT exclusively and not the CCI. The Commission’s reliance on the Madras High Court judgment is also equally puzzling. Since the High Court had examined the validity of certain provisions of the 2017 Regulations and the related tariff order which laid down certain restrictions related to mixing of channels in bouquets, caps on MRP rates and discount rates of these channels, it can be assumed that the Commission was trying to draw a connection to facts of the present case by stating that the Madras HC judgment dealt with “discriminatory pricing”. However, these provisions were mostly discussed from the point of view of content regulation and their validity was upheld under the TRAI Act, 1997. The present case, on the other hand, does not deal with the issue of content regulation and instead deals with various means of price discrimination against the Informant. Hence, it is unclear as to how the issues in the present case can be said to have been decided by the Madras High Court. In a nutshell, the question of jurisdiction remains undecided and a conclusive interpretation by the Apex Court on the same is required.

Irrespective of whether the CCI should have ruled on this matter or not, its approach towards ending discrimination towards HITs operators is commendable. By keeping the HITs technology out of the market, broadcasters have effectively prevented consumers from accessing a superior technology resulting in consumer’s choice taking a backseat. In all these matters, consumer interest should be the prime focus of the deciding authority. Hopefully, this latest order will compel other broadcasters to revise their RIOs  to ensure that HITs operators are offered non-discriminatory terms and are placed on the same level field as other operators.

Image from here.

Don’t believe me? Read this decision where a patent claiming a sexually stimulating device (a unique vibrator) was denied on the ground that it was an “immoral” invention under section 3(b) of the Patents Act.

In this case, the applicant, Standard Innovation Corporation (a Canadian entity) claimed a creative vibrator, branded now as “We-Vibe”. Unlike other vibrators, this does not really look like a vibrator, but is a rather interesting U-shaped device: sort of like a pair of headphones! Better still, this innovative apparatus offers dual stimulation to a woman in that it stimulates the G-spot and the clitoris; and can be used during regular sexual intercourse. As advertised on the applicant’s website:

“She wears it during sex for extra stimulation to her clitoris and G-spot and together you both share the vibe.”

For more background, see this review which states:

“When most of us think of the word “vibrator”, we think of women and masturbation—solo masturbation. And for a very long time, that was a fairly accurate picture of a vibrator’s only purpose. But then, a company named Standard Innovations introduced the original We-Vibe—they called it a “couple’s vibrator” and it was designed to essentially be worn on the woman’s vulva during sex. Suddenly, vibrators seemed to have a lot more potential in the bedroom.”

Indeed, this product has become so popular that it occupies a pride of place in gift kitties handed out to celebrities that turn up for the Oscars.

Patent Claim:

And now to the technicalities of this allegedly pornographic patent. Claim 1 of the patent (filed in several countries including India) reads as below:

“A sexual stimulation device comprising:

• an inner arm dimensioned for insertion into a vagina;
• an outer arm dimensioned to contact the clitoral area when said inner arm is inserted in the vagina; and
• a flexible connecting portion connecting the inner and outer arms,

characterised in that said device is dimensioned to be worn by a female during intercourse, and said connecting portion is narrow to permit sexual intercourse when said inner arm is inserted in the vagina.”

To paraphrase this in simpler language, let me draw from an ITC complaint filed by Standard Innovation against its main competitor, Lelo.

“The patent is directed to a sexual stimulation device worn by a woman during intercourse that includes an arm dimensioned for placement inside a vagina and an arm dimensioned for placement against a clitoral area. The arms taper down toward a connecting portion that connects the two arms, and at least one of the arms has a tear-drop shape.”

Unfortunately, the Patent Office (speaking through an Assistant Controller in April last year) wasn’t pleased…or “stimulated” as the case maybe. Rejecting the patent, it held as below:

“The subject matter claimed in the instant application relates to “sexual stimulating vibrator” and its intended use or commercial exploitation could be contrary to “public order” or “morality” and falls under section 3(b) of the Patents Act (as amended) and is not allowable…. Mostly these are considered to be morally degrading by the law.”

The decision contains some knotty nuggets on Sex and the Law; with the patent office pontificating on why “sexual pleasure” is morally abhorrent and how sex toys are obscene objects. But best of all is the finding that these toys are “useless” and “unproductive”! Anyway, here goes:

Law vs Sexual Pleasure

1. “The law views sex toys negatively and has never engaged positively with the notion of sexual pleasure.”

There you have it. The law is apparently at odds with “sexual pleasure”! So when you engage in the productive enterprise of procreating, focus just on reproducing. And don’t derive any pleasure whatsoever. Tis the age of austerity! Forget the fact that we are also the land of Kamasutra. As the famous comedian Papa CJ once quipped: “I’m from the land of Kamasutra. I can f%%^ you in more ways than you can ever imagine.” Speaking of the Kamasutra, did you know that sex toys find a mention in this grand cultural treatise of ours?

Useless Sex Toys?

2. “These are toys that are not considered useful or productive.”

For those that thrive on sex toys, this must come as a rude shock! The ITC complaint (that I’d mentioned earlier) spells out the many splendoured uses for this devilish device.

“Such devices are useful in a number of contexts, including improving relationships, increasing pleasure for a partner, sexual-disorder treatment, promoting monogamy and marital stability thereby reducing transmission of sexually-transmitted diseases, and increasing satisfaction of sex life of an individual and thereby contributing to an overall wellness/productivity gain for the individual.”

Perhaps by “productive”, the Patent Office meant the ability to actually “produce” children: the main point of sex according to Section 377 of our criminal code, a highly problematic provision that was independently invoked by the patent office as below.

Section 377 and Unnatural Sex

3. “Article 377 bans any sort of sexual intercourse that is termed to be unnatural biologically. Therefore sex toys (sexual stimulation device), also known as adult toys are banned on the premises that they lead to obscenity and moral deprivation of individuals.”

Section 377 appears to be the flavour of the season…with a renewed challenge against its constitutional validity at the Supreme Court. At its core, it criminalises any sexual activity that is allegedly against the “order of nature”, including homosexuality. And indeed any other form of intercourse outside of procreative sex, perhaps even condom usage, as I’ve argued in an earlier paper.

Problematic as this provision is, its invocation here is tad bit surprising though, since the section is very specific in its application to only certain “subjects”:

“Whoever voluntarily has carnal intercourse against the order of nature with any man, woman or animal, shall be punished with…”

As can be seen, the section applies only if there is a “person” (whoever) at one end who engages in “unnatural” sex with another person (man/woman) or animal.  Clearly, a vibrator is outside the scope, for it is neither a person (at least not yet) nor an animal.

Unless of course the argument is that the use of this vibrator during the course of regular procreative sex renders the sex itself between two consenting adults “unnatural”!

Sex Toys as Obscene Objects?

4. “Importing and selling sex toys, considered as an ‘obscene’ object and hence illegal in India. Under Section 292 of the Indian Penal Code which defines the term ‘obscene’ and provides for punishment for distributing any such object. Section 292 (1) defines ‘obscene’ as follows: “a book, pamphlet, paper, writing, drawing, painting, representation, figure or any other object, shall be deemed to be obscene if it is lascivious or appeals to the prurient interest….”.

Here again, at least one court has made it clear that sex toys are not necessarily “obscene”. In Kavita Phumbra v. Commissioner of Customs (Port), Calcutta, the Calcutta High Court held as below:

“In our opinion, an article or instruction suggesting various modes for stimulating the enjoyment of sex, if not expressed in any lurid or filthy language, cannot be branded as obscene. Acquisition of knowledge for enjoyment of sex through various means is not by itself a prohibited activity, provided it is not done through obscene language or pictures. The concerned items are meant for adults and as such their importation for restricted sale to adults only should not be considered to be on the wrong side of the law.”

In the case at hand, the device does not even look like a vibrator. Fairly innocuous, as I mentioned earlier (almost like headphones) and far from obscene (at least in terms of its visual appeal). How then can it qualify as obscene under the logic of the above ruling? Further from a constitutional law perspective, any potential ban on goods has to be balanced against the fundamental right to free speech (under Article 19(1)(a) and the right to trade under Article 19(1)(g). For an insightful discussion around the legality of sex toys, see this piece in the wonderful I-Pleaders blog.

Conclusion:

All of this no doubt makes for salacious reading. And furthers our series of posts on IP-Juris-prurience (see here and here).But on a more serious note, we need step back and ask: is it prudent to vest the Patent Office with the authority to make “moral” or immoral determinations of this nature? Do they have the institutional competence to wade into this problematic terrain?

This is not the first time the Indian Patent Office has rejected a patent on this ground. In an earlier post, I recounted an old rejection (as narrated to me by the dear departed Shanti Kumar-ji), where the Patent Office condemned an application claiming a new medicinal powder prepared from skeletal remains (of dead bodies dug up within a week of burial).

Patent offices often struggle with doing their regular job i.e. making “technical” determinations on the merits or otherwise of an invention (does it represent a significant enough cognitive/creative leap to merit a patent?). Having them play the role of a “moral” arbiter is moronic, to say the least! As this case amply demonstrates, apart from the issue of institutional competence, they don’t even get the law right (misinterpreting section 292 and section 377 of the Indian Penal Code). And even commit logical fallacies in their reasoning, apart from a torrent of tortuously worded and grammatically goofy sentences.

Given the various infirmities with this problematic patent rejection, I wonder why it wasn’t appealed. Or was it?

ps: In future posts, I hope to reflect on the comparative position of this patent in other countries (the Indian patent office claims that this patent was rejected in Japan as well: but a quick search reveals that it was only abandoned there, and not rejected). I also hope to bring you the fascinating side story of how Standard Innovation sued one of its biggest competitors over this patent (before the ITC and other US courts) and how it had to finally settle, after a mixed bag of results (see here and here).

pps: I really want to thank Pankhuri Agarwal for pointing me to this case and for helping with this post. Also, image from here.

In an interesting judgment delivered late last month, a Supreme Court (“Court”) bench consisting of Justices A.K. Sikri and Ashok Bhushan ruled on the principles to be adopted for resolving trademark disputes concerning goods or services falling within the same class(s).

While the Court appears to have arrived at the correct destination, I share Eashan Ghosh’s view that the Court could have adopted a more legally robust path in arriving at that destination.

[Long post ahead!]

Factual matrix

The Respondent, M/S. KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD., started using its trademark under the name ‘NANDINI’ for milk and milk products in 1985. The Appellant, NANDHINI Deluxe, which runs a chain of restaurants adopted the trademark ‘NANDHINI’ in 1989.

Pertinently, while the Respondent only deals in milk and milk products, the Appellant deals in such products as fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, etc. Further, it bears noting that NANDINI/NANDHINI is a generic word that refers to the name of a goddess or a cow in Hindu mythology.

The genesis of the dispute that eventually worked its way up to the Supreme Court can be traced to an application filed by the Appellant for the registration of the trademark ‘NANDHINI Deluxe’. Contesting this application, the Respondent submitted that the Appellant’s mark was confusingly and deceptively similar to the Respondent’s and aimed at encashing the latter’s goodwill and reputation.

Rejecting the Respondent’s opposition, the Deputy Registrar held that there were several pertinent differences between the Appellant’s and Respondent’s mark, which I shall advert to a little later, and hence granted registration to the Appellant’s mark. While doing so, the Deputy Registrar directed the Appellant to remove ‘milk and milk products’ from the list of goods for which it was seeking registration, as these goods overlapped with the Respondent’s and were not sold by the Appellant in any case.

The Respondent challenged the Deputy Registrar’s decision before the IPAB in two appeals. Curiously, the IPAB arrived at diametrically opposite results in the two appeals. It held in the first appeal that the two parties dealt in different goods and that no likelihood of confusion had been established. As a result, it reaffirmed the Deputy Registrar’s order.

In the second appeal, the IPAB held that the goods that the two parties dealt in were within the same classes (classes 29 and 30). Further, the Respondent’s mark had acquired distinctiveness and hence the registration of the Appellant’s mark could not be permitted.

The Appellant’s writ petition against the IPAB’s second decision was dismissed and the IPAB’s view reaffirmed. This resulted in the filing of the Supreme Court appeal under discussion.

Approach of the court:

The Court commenced its analysis by noting that the singular question that it was called upon to answer was if the registration of the Appellant’s mark was permissible, in light of the fact that the gravamen of the Respondent’s case was that the Appellant’s decision to adopt this mark was aimed at encashing the Respondent’s goodwill.

In order to answer this question, the Court first pointed out 3 critical differences between the Appellant and Respondent’s marks. First, while the classes into which the goods of the parties fell were the same, the goods themselves were different. This difference is further fortified by the fact that, while the Respondent is a cooperative society selling milk products, the Appellant runs a chain of restaurants.

Second, the term ‘NANDINI’ is not a product of the Respondent’s ingenuity; it is a generic term referring to a Hindu Goddess. Finally, and very crucially, there are several pertinent differences between the two marks, such as: (a) difference in manner of writing the name; (b) addition of the word ‘Deluxe’ and the tagline ‘the Real Spice of Life’ to the Appellant’s mark; and (c) the fact that a lamp is depicted in the Appellant’s logo whereas the Respondent’s logo consists of a picture of a cow, below which the word ‘NANDINI’ is written and the whole logo is encapsulated in an egg-shaped circle.

The Court then proceeded to apply the principle spelt out in the 1953 judgment in the case of National Sewing Co as per which such a dispute has to be resolved by looking at the marks from the standpoint of an average man of ordinary intelligence. Reasoning that the 3 differences outlined above make the marks significantly different, the Court held that there is no basis to conclude that there exists a possibility of confusion.

To buttress its conclusion that the goods sold by the parties are of a different character, the Court noted that several products sold by the Appellant fall into classes other than 29 and 30. Further, it relied on its own 1996 judgment in the case of Vishnudas Trading, as an authority for the proposition that registration of a mark qua goods belonging to a particular class does not give the proprietor of the mark monopoly over all goods falling within that class.

Analysis:

While it would be difficult for anyone to dispute the Court’s principal finding that the significant differences between the two marks make any possibility of confusion fairly remote, the Court’s judgment would have rested on a sounder jurisprudential foundation if it had clearly articulated the parameters governing its analysis of the dispute and adhered to the same.

First, the Court adverts to the test laid down in the 1961 Second Circuit judgment in the case of Polaroid Corporation for assessing the scope of trademark protection qua goods for which the trademark has not been granted. The Polaroid Court outlined an illustrative list of 8 parameters, such as the strength of the prior owner’s mark, the quality of the defendant’s product and the sophistication of buyers.

In stead of applying the Polaroid framework to the facts obtaining in the case at hand, however, the Court abruptly jumps to the principle articulated in the National Sewing Co. case which I discussed above.

Thereafter, to conclude its analysis, the Court relies on the tests laid down by the Delhi High Court in the case of Nestle India for the application of Section 11(2) of the Trademarks Act, 1999. For the sake of clarity, it bears mention that Section 11(2)(b) clarifies that a trademark for goods dissimilar to goods for which there is a registered mark is not to be registered if the registered mark is a well known mark. Further, for this embargo to apply, it must also be established that the applicant is seeking to take unfair advantage of the registered mark without due cause.

As the Court notes at para 21, the Nestle Court had outlined 4 conjunctive conditions that must be met for Section 11(2)(b) to apply. Those parameters are a reiteration of the conditions spelt out in Section 11(2)(b) which I described above. Without assessing the facts of this case against the touchstone of those parameters, however, the Court abruptly arrives at a finding at para 32 that : “ The aforesaid discussion leads us to hold that all the ingredients laid down in Section 11(2) of the Act, as explained by the Delhi High Court in Nestle India Ltd., have not been satisfied.” In the discussion preceding this paragraph, all that the Court does is to drive home the point that the marks have several differences and there is no basis to conclude that there is a likelihood of confusion.

To be sure, the Court, after returning this finding at para 32, does observe that the Appellant’s mark was not aimed at extracting an unfair advantage of the Respondent’s reputation. However, it does not examine whether the Respondent had amassed reputation for its mark in India, or whether the Appellant’s adoption of the mark was without due cause.

In fact, at para 23, the Court observes: “We proceed on the presumption that the trade mark ‘NANDHINI’, which is registered in the name of the appellant [sic Respondent] has acquired distinctiveness though the appellant disputes the same.” It is difficult to fathom the basis upon which the Court draws this presumption in the first place. More troublingly, after having done so, it goes on to observe at para 32, as I stated above, that the Respondent has actually not put forth anything to indicate that its mark had acquired distinctiveness by 1989.

Finally, as Sreyoshinotes in this incisive post, the use of the ‘added matter’ test, which is premised upon ascertaining if the (allegedly) deceptively similar mark has any additional features compared to the original mark, may not be an effective parameter in cases like this one. Given that the public consuming these products may lack the capacity to appreciate the additions made to the original mark, it may have been more apposite for the Court to confine the scope of its enquiry to comparing the essential features of the marks.

A friend of mine informs me that a leading international mediator (one of the top 5 in the world) is willing to mediate a high stakes IP dispute for free. Any takers? Please let me know soon. He will be in Bangalore soon and can do this between August 23rd and  25th. If interested, please email me at <info@idialaw.com>

We’ve reflected on the merits of mediation in previous posts here and here. I’m given to understand that this creative win-win approach is being deployed in a number of IP disputes these days. And would be grateful for more leads on such cases from our readers in the know.

For those interested, we’ve included a significant component of mediation (and other ADR) in our quest to convert underprivileged IDIA scholars into CHAMPS (lawyers who are Creative, Holistic, Altruistic, Mavericks and Problem Solvers).

Interestingly, I had an exchange with a leading IP persona on mediation vs the harsh adversarial process. And extract my email response as below:

“But honestly, I’m finding (more often than not), that my legal training enables me to win an argument easily….only to find later that what the other person argued (and lost) was much closer to the truth! Its a bit unnerving, but I guess we’ve become addicted to the process. Truth be damned! As an IDIA trainee to whom I was pontificating on the power of the law once remarked: “The law is so strange…. whoever tells the better story wins! Even if their story is not true!” After more than 20 years of studying and practising the law, I couldn’t have put it better!  Indeed, the adversarial process has damaged us deeply. They say that even in wedding cards, a lawyer sees the “weds” as “versus”! Wish I’d paid more attention to my classes on ADR (alternative dispute resolution), including mediation and other less aggressive (and adversarial) ways of dispute resolution. Ones that paved the way for more creative solutions and left both parties better off.”

ps: Image from here

Thematic Highlight

Prashant wrote a special report on certain regulatory restrictions passed by the Ministry of Heath and Family Welfare; the Ministry announced that the Karnataka Antibiotics and Pharmaceuticals Ltd.(a PSU) would be the sole authority for manufacture and supply of the pregnancy drug, oxytocin. In his report, he examines a Himachal Pradesh HC judgment which suggested the need to restrict manufacture of oxytocin to the public sector and claimed that adverse effects were caused by oxytocin. He also examines the regulatory discussions related to oxytocin at the Drugs Consultative Committee and Drugs Technical Advisory Board. He further examines the series of events which led the Ministry to release such restrictions. He concludes that the order reflected the government’s arbitrariness in shaping the nation’s health policy.

Topical Highlight

Prof. Basheer notified everybody about an Indian Patent Office decision in which a patent for a rather  innovative vibrator was denied on the ground that it was an “immoral” invention under Section 3(b) of the Patents Act! Adopting a rather patronising attitude, the Office went on to describe such sex toys as useless and unproductive. It even went on a completely unrelated tangent and invoked Section 377 to state that these toys were banned under the Section. Disagreeing with the Office on all grounds and providing cogent reasons for his dissent, Prof. Basheer concludes that the Office should not be allowed to assume the role of a “moral arbiter”.

Other Posts

Mathews released a tidbit on Novartis’ win at the Gujarat High Court, with the Court complying with Novartis’ request to impose restrain orders on five other Pharma companies from manufacturing the anti-diabetes drug, Vildagliptin.

Balu examined a recent Delhi HC judgment, which granted permanent injunction and punitive damages against a retailer for infringing the Loubotin ‘Red Sole’ trademark. He then examines two other Delhi Hc decisions of the past, where the Delhi HC has taken opposite stands; in the first one, the HC claimed that the ‘Red Sole’ was a well-known trademark and the in the second one, the HC claimed that the same was not eligible for trademark protection. He ends his post by stating that  these decisions could not be reconciled with each other and that there is a need to clear the legal ambiguity in this matter.

I wrote a post on a recent CCI order in which Star India and Sony were accused of price discrimination by Noida Software Technology Park, a HITS operator. Briefly emphasising on the multiple advantage provided by the HITS technology in comparison to other distribution technologies, I go on to highlight other instances where HITS operators have had to face legal and regulatory hurdles. I then summarised the CCI order, where the Commission instructed the Director General to conduct investigation against Star India and Sony. In my take on the CCI’s order, I mostly focus on the jurisdictional tussle between the TRAI and CCI and analyse whether the CCI should have been allowed to interfere in the present matter. I conclude, however, by agreeing with the Commission’s stance on this matter.

Rahul analysed a Supreme Court judgment on a trademark registration dispute. The matter revolved around the use of trademark ‘NANDINI’ by the Respondent for its milk products and the use of the trademark ‘NANDHINI’ for a chain of restaurants by the Appellant. The Court permitted the Appellant to register their trademark mainly on the premise that goods sold by each party were of different character. Though Rahul agrees with the the Court’s finding, he argues that the requirements under Section 11(2)(b) for not registering a mark were not looked into by the Court. He also adds that the ‘added matter’ test would not be effective in the present case.

Lastly, Prof.Basheer passed on the news that an international mediator was willing to mediate Indian IP Disputes for free! For those interested, contact him at <info@idialaw.com>

Other Developments

Indian

Judgements

Tata Sons Limited & Another v. Krishna Kumar & Others – Delhi High Court [August 6, 2018]

The Court granted an ex-parte permanent injunction restraining the Defendant from directly or indirectly using any marks identical to or deceptively similar to the Plaintiff’s mark “TATA”, specifically “TATA”, “TATA FINSERVE PVT. LTD.”, “TATA FINANCE CORPORATION LTD.”, “TATA FINANCE SERVICES” and the domain name “www.tatafinserve.com”, in respect of the business of providing loans, insurance and financial services. In granting the injunction, the Court noted that the mark of the Defendant was closely, visually and phonetically similar to the registered mark of the Plaintiff. The Court also decreed that the infringing domain name of the Defendants must be transferred to the Plaintiffs, and awarded them punitive damages of Rs. 10 lacs for the immense loss to goodwill and reputation.

Super Cassettes Industries v. Sky Vision Digital Cable Network – Delhi High Court [August 6, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid license. The Plaintiff was further granted costs of Rupees 43 Lakhs, a sum arrived at by the Court through calculation of the amount charged by the Defendant in providing services to its customers.

M/s. Mex Switchgears Private Limited v. M/s. Omex Cables Industries and Another – Delhi High Court [August 3, 2018]

The dispute concerned the Respondent’s use of the mark “OMEX GOLD” in respect of electric switchgears and switches, in infringing and passing off Appellant’s trademark “MEX” in respect of identical goods. The Court granted a permanent injunction in favour of the Appellant stating that the Respondent’s mark was deceptively similar to its registered trademark as the addition of the letter “O” was likely to create confusion and deception of a connection with their goods. It was also noted by the Court that the Respondent bore a malafide intent in attempting to register other deceptively similar marks. There was no order for costs.

Grandcure Healthcare Private Limited v. M/s. Finex Healthcare Private Limited and Another – Delhi High Court [August 2, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “FRAVIA” in infringing and passing off the Plaintiff’s mark “BRAVIA” in respect of pharmaceutical preparations. In arriving at this decision, the Court stated that the mark of Defendant is phonetically and deceptively similar to the trademark of the Plaintiff, and that in view of such similarity confusion among the public would be inevitable. The Plaintiff was further awarded costs of Rupees 2 Lakhs.

News

• Delhi HC restrains firm from using ‘Limeroad’ trademark
• Plagiarism: Teachers to lose jobs, students their registrations, says new HRD norms
• Ayush Ministry objects to HUL’s Ayush brand
• ‘The rice that needs no cooking’: magic rice variety from Assam gets GI tag

International

• Ghana embarks on copyright education project
• EmuParadise is binning its ROM library following Nintendo’s ‘copyright’ action
• Audit Giant Intuit Gains Patent for Bitcoin Transactions over Text Messages
• USPTO proposes CLE and Bar Dues for Patent Practitioners

(This post has been co-authored with Prof. Shamnad Basheer)

Yesterday, we highlighted a problematic Patent Office decision, rejecting a claim to a sexual stimulation device (a unique vibrator) on the grounds of immorality under Section 3(b) of the Patents Act. More specifically, the Controller held:

1. That an apparently innocuous looking sex aid device to further intimacy between couples is “obscene”

2. That the said device is not “useful or productive”

3. That the law does not take kindly to sexual pleasure

4. That Section 377 applies, despite the said provision applying only between a person on one end and a person/animal at the other. Not a vibrator!

The last paragraph of the decision reads thus:

“Applicant or applicant’s agent neither appeared for the hearing on the scheduled date nor filed any written submission in response to the hearing notice. Therefore, in view of the outstanding objections as above, this application no. 4668/DELNP/2007 is hereby refused under section 15 of the Patents Act.”

Some (including a rather senior official at the Indian Patent Office) took this to mean that the applicant hadn’t bothered to respond to the objections raised by the Patent Office. If only they had bothered to dig a bit more. What was even funnier was that a number of IP attorneys were falling over themselves to “like” his social media comment (possibly to endear themselves to him). As we’ve noted in the past, the reason behind some of the worst Patent Office excesses is that quite often, IP attorneys (with some notable exceptions of course) lack the courage to take on the Patent Office, despite blatantly wrong orders/illegalities. They worry that any adverse remarks against powerful patent officials would prejudice their standing in other cases. Hopefully the younger generation of IP lawyers will reverse this ridiculous reverence.

Anyway, a review of the prosecution history of this particular patent application reveals that the Applicant had indeed filed a reply to the first examination report. As can be seen, the applicant (through its lawyers, Anand & Anand) clearly stated that it did not agree with the objection raised by the Controller, noting as below:

“The Learned Controller appears to have objected to the claims on the basis that they are directed to a sexual device that can be used to stimulate sexual desire, and consequently could be contrary to public order or morality. We respectfully submit that the claims as amended are directed to a sexual stimulation device that is dimensioned to be worn by a female during intercourse. In fact, one embodiment of the presently claimed device has been successfully marketed as the We-vibe, which is a couples device designed to be worn while making love and can be used by couples to improve their sexual relationship.

The presently claimed device is specifically designed for use during penile-vaginal intercourse (as evidenced by the teaching throughout the present application where the term “intercourse” is clearly intended to refer to penile-vaginal intercourse). The flexible connecting portion of the device is narrow to permit sexual intercourse when the inner arm is inserted in the vagina. In this way the device can be used to encourage couples to participate in penile-vaginal intercourse, thereby enhancing an activity that will occur anyway and as such is not contrary to public order or morality. Frequency of penile-vaginal intercourse is associated with sexual satisfaction, relationship satisfaction and good health (see attached reference Costa & Brody, Arch. Sex. Behav.(2012) 41: 9 — 10).

Based on the foregoing, we respectfully submit that the presently claimed device is not contrary to public order or morality but would rather benefit the public, for example, by improving relationship satisfaction and health.”

And yet despite this response, the Patent Office insisted on raising the very same objection. Culminating finally in a rejection decision that was unsound in both logic and the law.

Patent Office Training

The senior patent official mentioned earlier first tried to justify the Patent Office decision on the (wrongly assumed) ground that the applicants did not respond to the Patent Office objection. To which our response was: are we a banana republic? Just because a party does not respond, does this mean that the Patent Office can decide anyway it wishes. In blatant derogation of the law and logic?

After the said official finally realized (after one of us responded to him) that the applicant did in fact respond to the FER, he argued that one cannot blame the Patent Office for faulty decisions since they are not experts in the law. A point that we deeply sympathise with. For it’s clear from the decision that the said controller is deeply wanting, in both the law and logic. But unfortunately, this cannot serve as an exculpatory factor. For isn’t it incumbent on the government to train patent officials in the law? After all these are quasi-judicial authorities and are called on repeatedly to interpret the law. PH Kurian (a former Controller General and one of the best things to have happened to the Indian Patent Office had mooted this idea and one of us had referred him to NLU Delhi (which as I understand did start some training programmes in the law for them). As we quipped to the senior patent official on Twitter: “why don’t we spend more time on giving them more training in Indian law? And less time in indoctrinating them through USPTO/EPO style training?”

Secondly and perhaps more importantly, this raises another important issue (one that we alluded to in the last post). When the Patent Office struggles with its regular job of determining the technical merits or otherwise of an invention, can we expect them to wade into issues of morality? Do they have the institutional competence to serve as an arbiter on this count? 

Utility of Sex Aids?

As we’d mentioned in the earlier post, the legality of this device (under India’s obscenity laws) will have to be balanced against other competing considerations, such as freedom of speech. And more importantly, against considerations of its overall utility in terms of better relationships between partners, enhancing sexual health, intimacy etc.

Speaking of utility, did you know that vibrators were apparently first used to further public health? Apparently, it was used by doctors in the 19^th century to cure women of hysteria.

Moving to the present day, doctors now counsel couples to use such devices to further intimacy.

Further, the ITC complaint referenced in the earlier post  highlighted the diverse uses of this sex device meant to spark up a couple’s love life.

“Such devices are useful in a number of contexts, including improving relationships, increasing pleasure for a partner, sexual-disorder treatment, promoting monogamy and marital stability thereby reducing transmission of sexually-transmitted diseases, and increasing satisfaction of sex life of an individual and thereby contributing to an overall wellness/productivity gain for the individual.”

Comparative Patent Position

The Patent Office also referred to a Japanese decision which apparently rejected the application on similar grounds. The Controller noted as below:

“The instant application’s corresponding Japanese national phase Application for patent no. 2007-545799 is refused on the ground of affecting public order and morality as follows “It means that a woman uses the invention concerning the Claims 1-18 of an application concerned for either the object for autoerotism assistance or sexual intercourse, sexuality is stimulated in vain, and being a thing with a possibility that it may be used as the ** implement which produces ** of abuse, or a self-** implement is admitted. Therefore, an invention concerning Claims 1-18 of an application concerned is an invention with a possibility of injuring health or public order, good customs, or the public. Regulation of Article 32 of Japanese Patent Law cannot receive a patent.”

By way of background, Article 32 of Japanese Patent Act is similar to section 3(b) of the Indian Patents Act and reads as below:

“any invention that is liable to injure public order, morality or public health shall not be patented.”

A tad bit surprising that Japan (known for its rather creative sex toys) refused this patent on grounds of morality. As this piece notes:

“..the [Japanese] sex industry is the second largest industry in the country. The combination of traditional attitudes with a post industrial technological complex has given rise to some strange phenomena in the country’s sexual culture.

 …In the Shibuya district of Tokyo is The Vibe Bar Wild One, which has quite a philosophy: “See, touch, and feel.” For 3,000 yen, women and couples can sample some of the over 300 domestic and imported vibrators displayed on the wall behind the bar for up to 90 minutes while they sip their drinks. With close access to the Shibuya metro station, the bar even features English-speaking staff to cater to curious tourists.”

Given this oddity (Japan refusing a claim for a sex toy on the grounds of morality), we probed a bit further and found that Form 3 submitted by the Applicant to the Indian Patent Office contradicts the stand of the Indian Patent Office. And so does the ITC complaint referred to in our previous post. Both these documents reflect the status of the patent as ‘abandoned’ and not ‘refused’! A commenter on our blog however insists that the patent was refused. Can someone help clarify?

Image from here

We are pleased to bring to you a two-part guest post by Adarsh Ramanujan on the WTO Panel Report in the tobacco plain packaging dispute.

Adarsh is an advocate primarily assisting clients as a litigation attorney. He has recently started his own counsel practice with offices in Delhi and Chennai after having spent considerable time with Lakshmikumaran & Sridharan at their New Delhi and Geneva offices. He obtained his B.Sc. LL.B. (Hons.) degree (Gold Medalist) from National Law University, Jodhpur  and LL.M. degree from University of California, Berkeley. He is a qualified Patent Agent in India. A major portion of his time is spent, practicing in the areas of IP & Technology Laws as well as in International Trade Law. He was however branched out into doing commercial litigation and arbitration work. His expertise also extends to regulatory laws such as environmental laws, biodiversity laws and cyber laws. Adarsh is currently teaching a seminar course on commercial arbitration in NLU, Delhi and has previously taught patent law in NLU, Jodhpur and at the CEIPI Institute (University of Strasbourg). He has authored or co-authored close to 30 publications on diverse topics, including on IP, WTO, constitutional law and international tax.

Adarsh has written several guest posts for us in the past as well, which can be viewed here, here, here, here, here and here).

Some Reflections on the WTO Panel Ruling in the Plain Packaging Dispute: Pulling the Rug from under Your Legs and Missed Opportunities – Part I

Adarsh Ramanujan

As a practitioner in international trade law, I have always loved the WTO Dispute Settlement Body (DSB) Reports (the Appellate Body Reports more than the Panel Reports, to be honest). They are structured and well-written, though unnecessarily lengthy at times. They display great depth in treaty interpretation. We get to put forth highly sophisticated arguments on treaty interpretation and the DSB Reports provide a detailed reasoning for accepting or rejecting those arguments.

The Panel Report in the tobacco plain packaging dispute (summarized on this blog here earlier) is no exception. Obviously, that does not mean I always agree with them. I am not convinced that the Panel got everything right in holding that the Tobacco Plain Packaging Measures (TPP measures) do not violate the TRIPs Agreement. I also do not think that the Complainants raised all the right arguments. They missed some important ones.

It’s a long Panel finding and will take several detailed articles to cover my thoughts and some of this also extends to the TBT Agreement. For now, in this two-part series, I will restrict my myself to the TRIPs Agreement alone and limit myself to a few specific points relating to trademarks.

1. In Part-I, I will cover the points where the Panel went wrong:

a. Registrability of potentially registrable non-distinctive marks (Article 15.4).

b. Cancellation of registered but inherently non-distinctive signs (Article 16.1)

c. Maintenance and/or acquisition of well-known mark status (Article 16.3)

2. In Part-II, I will cover the following point where the Complainants argued incorrectly:

– Diminishing enforcement possibilities through loss of distinctiveness

A. Registrability of potentially registrable non-distinctive marks

Let’s start with the first point under Article 15.4 of the TRIPs Agreement where the Panel went wrong. This provision states –

“The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.”

The complainants argued that the measures created obstacles to the registration of new non-word signs (meant for tobacco products) not inherently distinctive since they now have no opportunity to acquire distinctiveness through use on such products. The Panel concludes that allowing the use of a sign to acquire distinctiveness is not regulated by the TRIPs Agreement. According to the Panel (among others, refer to para 7.1864, 7.1869, 7.1887):

– the obligation under Article 15.4 applies only to ‘trademarks’ and not ‘signs’

– ‘trademark’ is defined in Article 15.1 only covers signs that have already acquired distinctiveness as opposed to signs capable of acquiring distinctiveness in the future

As the title to my post indicates, the WTO Panel has effectively ruled that a WTO member country can pull the rug from under your feet and get away with it. This is not a good faith interpretation of a treaty – the age-old pacta sunt servanda doctrine enshrined under Article 26 of the Vienna Convention has been given a go-by.

For non-inherently distinctive marks, the WTO Panel has ruled that the obligation under Article 15.4 applies only after the mark acquires distinctiveness and is not applicable to the period before the acquisition of distinctiveness. This gives an easy way out to Members to create obstacles to the registration of marks for particular products by never allowing them to acquire distinctiveness in the first place. Members cannot be given the leeway to render an obligation ineffective by preventing the circumstances that would give rise to such obligations. While this case may have been for trademarks on tobacco-related products, the Panel failed to appreciate that its ruling on Article 15.4 applies across the board to all trademarks across all products and services.

B. Cancellation of registered but inherently non-distinctive signs

The second point where the Panel got it wrong relates to Article 16.1. This provision states –

“The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.”

Cuba’s (one of the complainants) argument was that the plain packing measures cause loss of distinctiveness of registered trademarks that consist of non-inherently distinctive signs that had previously acquired distinctiveness by use. Such marks could be invalidated for lack of distinctiveness, and owners of trademarks previously protected and used could lose the minimum level of protection guaranteed by Article 16. The Panel rejected this claim (among others, refer to paragraphs 7.2005, 7.2010, 7.2011) on the following basis:

– Article 16.1 does not obligate members to refrain from regulatory conduct that might negatively affect the distinctiveness of such trademarks through use.

– Use of the trademark to maintain or further strengthen a mark’s distinctiveness is not a right under Article 16.1, but only a legitimate interest to be considered under Article 17.

– Article 16 of TRIPs is not relevant to assess any measure that may affect distinctiveness of non-inherently distinctive signs and consequently, is not attracted to situations of cancellation/invalidation on that ground.

My criticism here is identical to the earlier point. If a registered but non-inherently distinctive mark is cancelled because of its loss of distinctiveness (due to non-use), the right under Article 16.1 is just taken away.

C. Maintenance and/or acquisition of well-known mark status

The third point where the Panel got it wrong relates to Article 16.3. This provision states –

“Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”

The argument before the Panel was that only consistent use would permit a trademark holder to maintain and/or attain a well-known mark status. Without this status, a trademark holder may not enforce against use in non-similar goods. The Panel rejected both aspects of the claim (among others, refer to paragraphs 7.2109, 7.2121, 7.2123, 7.2127, 7.2129) –

– Factually, acquisition and maintenance of well-known mark status can be through use outside Australia.

– Legally, Article 16.3 and Article 6bis do not obligate Members to permit or maintain the occurrence of the factual circumstances described in these provisions.

Yet again, from a legal perspective, the Panel has enabled members to ingeniously undercut Article 16.3 by taking away the triggering event that entitles enforcement against non-similar goods.

The factual finding of the Panel is even more troublesome. Is it sufficient for trademark holders to rely on reputation from one country to prove its well-known status in another? Our very own Supreme Court in the Prius case ((2018) 2 SCC 1) did not consider that cross-border reputation alone (without actual proof of reputation in India) would suffice for protection. I am sure one would find similar rulings in other parts of the globe. Therefore, for the Panel to have relied solely on cross-border reputation as a factor to conclude that trademark holders can nevertheless attain the well-known mark status is fallacious.

Please click here to view Part II of this post.

In Part I of this two-part guest post on the WTO Panel Report in the tobacco plain packaging dispute, Adarsh argued that the Panel didn’t get everything right in holding that the Tobacco Plain Packaging Measures (TPP measures) do not violate the TRIPs Agreement and discussed three points on which he believes the Panel went wrong. In Part II of the post below, he argues that the Complainants also didn’t raise all the right arguments and missed some important ones.

Some Reflections on the WTO Panel ruling in the Plain Packaging Dispute: Pulling the Rug from under Your Legs and Missed Opportunities – Part II

Adarsh Ramanujan

In this part, I will cover the point where the Complainants went wrong, regarding Article 16.1. This provision states –

“The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.”

The Complainants’ argument on this claim was that by prohibiting certain trademarks from being used on tobacco products, the measures result in a reduction in the trademarks’ distinctiveness. This then branched into a two-fold argument:

– the erosion in distinctiveness measures reduce the universe of “similar” signs against which enforcement action can be initiated;

– the erosion in distinctiveness reduces trademark owners’ ability to prove “likelihood of confusion”.

The Panel interprets this argument as one relating to the reduction in the instances of infringement and rejects that this amounts to a violation of Article 16.1 (among others, in paragraph 7.2000). , The Panel holds that the TRIPS obligation is to provide remedies if there is a likelihood of confusion. The creation or maintenance of the factual circumstances that would result in such “likelihood of confusion” is not an obligation under the TRIPs Agreement, according to the Panel. Therefore, by reducing the instances where a likelihood of confusion arises (factually), a member does not violate Article 16.1.

The problem with the Complainant’s argument is actually factual. Imagine the following matrix:

In the first two instances above, it is to be noted that the measures prohibited use of non-word signs on tobacco products by everyone, including infringers. Effectively, the measures prevented infringement by use of the identical or similar non-word sign on an identical product. Preventing such infringement is an inevitable effect of the measures. Raising an Article 16.1 claim here makes little sense.

As for the third instance above, though I cannot guarantee this, intuitively, I do not see how a registered non-word sign for tobacco products could be infringed by a third party using a word mark on tobacco products (as mandated by the measures).

It is the last two instances in the above matrix that bother me. The real question is whether a registered non-word sign could be infringed by use of an identical or similar sign in “similar” goods not covered by the TPP measures. The answer is ‘yes’. Traditionally, what would constitute “similar goods” involves an assessment of several factors, such as whether they are sold in close proximity, through the same channels of distribution, whether retail customers would automatically associate the marks on these different classes of goods. Take, for example, lighters, matches, and pipes. They are more than likely to be considered as “similar goods” and many more can be imagined. What if an accused infringer uses a registered non-word sign (registered for tobacco) on such “similar goods”? Assuming they are similar goods, that would be an act of infringement and the trademark holder may stop the same under Article 16.1. The ability of a trademark holder to prove likelihood of confusion in such cases is seriously eroded because of the TPP measures – the non-use of the non-word sign by the proprietor on tobacco products for a sufficiently long time would reduce the likelihood of confusion among consumers on the products being from two sources.

The last two instances are the strongest points under Article 16.1. Perhaps, I missed this, but I do not see the complainants having pressed such an argument. But the nature of the argument is highly factual and hypothetical. Whether the WTO Panel would have considered this to be sufficient to declare the law itself as incompatible, however, remains a question.

In any case, at least Honduras has preferred an appeal to the WTO Appellate Body, but in the context of the points discussed here, the appeal relates to only Article 16.1 and not Articles 16.3 and 15.4. One would have to wait and see how the appeal progresses.

Image from here

We’re glad to inform our readers that Médecins Sans Frontières (MSF) Access Campaign is looking to hire a Trade and Intellectual Property Analyst. This is a full time position based in New Delhi. The deadline for submitting applications is August 19, 2018. For further details, please read the post below:

Trade and Intellectual Property Analyst, MSF Access Campaign [New Delhi]

Job Description

In a judgment delivered last Friday, Justice Valmiki Mehta of the Delhi High Court (“Court”) ruled on a copyright infringement dispute which involved the application of well settled legal principles, but to a very interesting fact pattern.

The facts of the case lie in a very narrow compass. The Appellants have a registered copyright for a concept called Jeeto Unlimited (“Jeeto”). Jeeto entails an arrangement whereby home viewers of a quiz show are able to participate live in a quiz show. These home viewers are allowed to answer the same questions that are put to the contestants participating in the show and are rewarded for the correct answer based on the reward for the correct answer for the contestants participating in the TV show.

The Appellants contended that they presented this concept to the first Respondent, Sony Entertainment Network, which runs the famous show Kaun Banega Carorepati (“KBC”) in the shape of a concept note. Thereafter, they were compelled to sign a consent letter to the effect that Sony would have the freedom to use the concept without incurring any liability.

The Appellants further contented that Sony misappropriated the Appellants’ concept and that the use of this concept also constituted breach of the Appellants’ confidential information which they had shared with Sony in the shape of the concept note.

Court’s view:

Justice Mehta arrived at the conclusion that the Appellant’s copyright had not been violated. This conclusion essentially rested on three planks.

First, and most fundamentally, Justice Mehta held that it is a well settled principle, recognized most famously by the Supreme Court in its 1978 judgment in the case of RG Anand versus Delux Films that a concept is not entitled to copyright protection. A reading of the definition of a work u/s 2(y) of the Copyright Act, along with the list of protected subject matter u/s 14, he held, gives rise to the inexorable conclusion that copyright protection extends only to a concrete expression of a concept, not to the underlying concept or idea itself.

Second, assuming that copyright protection is permissible for a concept, hypothesized the court, it bears mention that it is an admitted position that the concept of home viewer participation in a quiz show is not a product of the Appellants’ intellect. It is a well known idea which has existed in the public domain for a substantial period, so the Appellants are not entitled to copyright protection even on this score.

Further, he quoted with approval the Trial Court’s findings that, since the underlying idea was to enable home audience participation in a quiz show, some similarities between the Appellants’ concept and the KBC system were bound to occur, such as the mode of communication used and the provision for a monetary reward for a right anser. This analysis that the trial court conducted is nothing but the application of what is called the Scènes à faire doctrine. This doctrine recognizes the intuitive principle that, when two people seek to portray something that is broadly similar, similarities in the manner of portrayal are bound to occur.

Further, the Court also quoted with approval the Trial Court’s view that, assuming for the sake of argument that the Appellants’ concept was protected subject matter, there were some crucial differences between the Appellants’ and Respondent’s concepts. To illustrate, while the Appellant’s concept involved selecting home audience based on a lottery, the Respondent’s test was fastest finger first. While the Appellants’ concept entailed a close linkage between the actual contestant and the home audience, such that they would play the game simultaneously, the KBC show has a different game for the home audience and the actual contestant.

Finally, in response to the Appellants’ argument that the use of their concept constituted breach of confidential information, the Court held that the Appellants had themselves signed a consent letter authorizing Sony to use this concept, so it did not lie in their mouth to challenge the use of their information.

Analysis:

The central holding of the Court, viz. a concept is not entitled to copyright protection, is far too well settled a legal principle to require any discussion. As the American Supreme Court noted in the celebrated judgment of Feist Publication versus Rural Telephone Service Co: “copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work [internal citation omitted]. This principle, known as the idea-expression or fact-expression dichotomy, applies to all works of authorship… This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.”

I would submit, however, that the judgment is found wanting in a couple of areas outlined below.

First, while arriving at its finding that the Appellant’s concept is not entitled to copyright protection as it has existed in the public domain, the Court makes the following observation: “It is noted that in the plaint there is no averment that appellants/plaintiffs are first in the world who have innovated such a concept of play along audience sitting at home, and also as conceded before this Court that from a reading of the plaint filed by the appellants/plaintiffs no such averment exists in the plaint.”

In making this observation, the Court essentially substitutes the originality threshold, which is imposed for copyright protection, with the novelty threshold which is imposed for determining patentability. More specifically, the Court wrongly proceeds on the premise that a work must be novel for it to receive copyright protection.

I would submit that, if the concept for which the Appellants were seeking protection was not hit by the idea-expression dichotomy, they would have been able to obtain protection for the same if they had been able to show that it was independently created and contained some amount of creativity. The moment the Appellants had been able to demonstrate that the manner in which they sought to operationalize the concept of home viewer participation in a quiz show entailed some unique features, they would have obtained protection for the same, and there was no need for them to be the first to come up with the idea.

This principle is most felicitously captured in Judge Learned Hand’s example in a 1936 judgment: “Borrowed the work must indeed not be, . . . but if by some magic a man who had never known it were to compose anew Keats’s Ode on a Grecian Urn, he would be an ‘author,’ and . . . others might not copy that poem, though they might of course copy Keats’s.”

Second, the Court’s answer to the Appellant’s argument that that the use of its concept constituted breach of confidentiality is that the Appellants signed a consent letter empowering the Respondents to use the concept. To the Appellants’ argument that the Consent Letter was obtained by coercion, the Court merely reiterates the Trial Court’s following observation:

“knowing the consequences of the consent letter, the plaintiff claimed to have been rendered helpless for signing the consent letter twice. Yet, the plaintiff failed to produce the contents of consent letter alongwith his plaint. And not to say no effort was ever made by the plaintiff to call for the production of said consent letters from the defendants,if it were in their custody.”

In my view, the basis for returning an adverse finding against the Appellants, qua their claim that the consent letter was coerced out of them, could have only been that they failed to place anything on record to prove the compulsion. It is difficult to fathom how, merely by looking at the consent letter, the Trial Court or High Court would have been able to answer the question of compulsion. Put differently, rather than refusing to reject the argument that there was no compulsion on the ground that the Consent Letter was not brought on record, the Court would have done well to return this finding on account of the Appellants’ failure to place on record a body of evidence to prove the compulsion.

Save for these errors, the judgment otherwise appears to rest on a firm footing and will most likely withstand further scrutiny if the Appellants choose to challenge it.

Image from Wikimedia Commons

Things tend to go sour when nobody watches the watchdog. This seems to be particularly true of our hon’ble courts when they act in ex parte or undefended suits. In the latest development on this front, the Madras HC, in M/s. Sathya Movies vs M/s.Suresh Production Entertainment Private Limited, has upheld the Plaintiff’s claim that it was entitled to the protection of its film title, ‘Naan Aanaiittaal’, which was registered with the Tamil Film Producers Council.

Mr. Justice C. V. Karthikeyan, writing for the Madras HC, examined the plaintiff’s evidence, which, according to the court, proved their ownership over the film ‘Naan Aanaiittaal’. On this basis, and in the absence of any defence from the defendants, the Court decreed that the defendants may not use the title of the film, without further examining the merits of the Plaintiff’s claim to the film title.

This decision is contrary to the Court’s own examination of film title protection in M/s Lyca Productions v J. Manimaran and Ors, which we previously examined here. Even previously, the Madras High Court has categorically held that there can be no claim for copyright over the title of a film or a literary work. The Court even examined the effect of registration of a film title with a trade association and held that the title registration scheme was purely on a self-regulatory basis which stated that it would not have legal effect.

Unfortunately, the decision seems to have passed the notice of Justice Karthikeyan, merely because there was no representation from the defendant to bring it to his attention. The decision assumes either that the film title ‘Naan Aanaiittaal’ (which translates to ‘If I Order’) passes the originality threshold for copyright protection; or that the registration with the film association binds the defendant.

This trend of unreasoned ex-parte orders, where the plaintiff’s claims are not even prima facie examined, is dangerous and creates bad precedent, and is a particularly worrisome aspect of a court foregoing its responsibilities to come to the correct legal decision notwithstanding the absence of an adversarial process to help in its adjudication. We have previously reported on the case of ex parte ad-interim orders being passed against ISPs, and the disastrous consequences this has had for online freedoms.

We are pleased to bring to you the fourth post in the ongoing series of insightful posts by Prof. (Dr.) N.S. Gopalakrishnan on India’s problematic plant varieties’ regime. The earlier posts in the series can be viewed here, here and here.

Problems with the Indian Plant Varieties Regime (IV):

Obliterating the “Farmers’ Variety” (Part I)?

Prof. (Dr.) N.S. Gopalakrishnan

Introduction

It is well documented that informal innovation in plant breeding by traditional farmers is one of the most important components of sustainable agriculture. It involves significant skill, effort, patience, observation, selection, saving, sowing and re-sowing of seeds. Along with this, farmers also follow the practice of sharing their seeds with others. These practices have traditionally helped maintain in situ conservation of seeds, ensuring supplies even in case of crop failures. Thus, traditional breeding is a natural process and the outcome is unique varieties of seeds with genetic variability selected by the farmers only after it is proved sustainable and suitable to particular local soil and climatic conditions. Being natural, it also possesses the quality of resisting local pests, as also ensuring high yields. It is the physical properties such as shape, size, colour, aroma, pest and disease resistant, stability of the stem etc., that are the distinctive features used by farmers to identify and select the seed. Hence the environmental and genetic variations are reflected in the phenotype of the crop. Farmers understand only the observable traits (phenotype) and not the genetic makeup (genotype – genes and genetic structure) of the seed which modern breeders are familiar with. Therefore, farmers’ varieties based on natural breeding, are distinctive in terms of features, time tested and stable to suit the soil and environmental conditions. It is also important to note that in situ conservation is a prerequisite for the continued existence of a farmers’ variety. Such practices are innovative and necessary to maintain the long term food security of a nation. It is also well documented that landraces with genetic variability are the basic raw materials for the development of improved varieties based on modern breeding techniques. It is in this context one has to examine the various statutory provisions relating to the protection of “farmers’ variety”.

Registration of Farmers’ Variety

Section 14(c) of the Act considers farmers’ variety as a separate category for registration under the Act. According to section 2(l) “farmers’ variety” means a variety which –

• has been traditionally cultivated and evolved by the farmers in their fields; or
• is a wild relative or land race or a variety about which the farmers possess the common knowledge.

According to section 16(1)(d)&(e) “any farmers or group of farmers or community of farmers claiming to be the breeder of the variety” can file an application for registration of farmers’ variety. Any authorized person can also file an application on behalf of them in the prescribed manner. Thus it is clear that three categories of farmers are entitled to file an application for registration provided they are the breeders of the farmers’ variety. But an examination of definition of “breeder” under section 2(c) of the Act reveals that only “… a farmer or group of farmers … which has bred, evolved or developed any variety” are treated as breeders. This creates confusion as to the status of the “community of farmers” as breeders to file application. Only the term “farmers” is defined under section 2(k) the Act to mean “any person who – (i) cultivates crops by cultivating the land himself; or (ii) cultivates crops by directly supervising the cultivation or land through any other person; or (iii) conserves and preserves, severally or jointly, with any other person any wild species or traditional varieties or adds value to such wild species or traditional varieties through selection and identification of their useful properties”. The definition obviously includes individual, group of farmers and community of farmers. But the Act has not clarified the farmers who are entitled to file an application for registration of the first and second category of the farmers’ variety. From the combined reading of the above definitions, the possible inference could be: (a) if a farmer, group of farmers or community of farmers can prove that they actually bred, evolved or developed the variety then they can file an application for that variety and (b) in other cases the group of farmers or community of farmers who are actually cultivating the varieties from generation to generation can file an application and claim the benefits of registration. The application for group of farmers or community of farmers may be filed by an authorized person on their behalf in the prescribed manner as mandated in section 16(e) of the Act. But it is unfortunate to note that there is no explanation in the Act regarding the requirements to be satisfied to be a “group of farmers” or “community of farmers” for filing an application. There are also no guidelines to find out the difference between these two categories of farmers and their entitlement to file an application. This created considerable problems in implementing the registration particularly of the second category of farmers’ variety. This will be dealt in detail in forthcoming blog posts.

Thus the inclusion of two categories in the definition of farmers’ variety makes it abundantly clear that our Parliament wanted to capture not only existing traditional varieties that are identifiable with farmers who actually evolved it, but also varieties that are cultivated by farmers from generation to generation. It is true that the Act has not defined “wild relative”, “land races” or “variety about which the farmers possess the common knowledge”. But literature makes it evident that these are varieties repeatedly selected based on desirable traits to ensure high yielding, pest resistant and suit local soil and environmental conditions and being conserved in situ by the farming community from generation to generation. This is further substantiated by the definition of “farmer” in section 2(k) of the Act to include anyone who “conserves and preserves, severally or jointly, with any other person any wild species or traditional varieties or adds value to such wild species or traditional varieties through selection and identification of their useful properties” (emphasis mine).

Even though section 39(1)(ii) of the Act confers the right of the farmer to register farmers’ variety, it is to be noted that unlike other varieties, there is no express provision for the determination of the criteria or field test to be conducted for identifying farmers’ variety and the procedure to be followed for registering this variety. It is evident from section 15(1) and (3) that the criteria of NDUS stipulated in the Act is applicable to only new varieties and cannot be applied to farmers’ variety for registration under section 14(c) of the Act. The separate mandate for development of DUS under section 15(2) is only for extant varieties and not for farmers’ variety to be registered under section 14(c). This is further strengthened from the proviso to section 18(1) which reads as: “that in case where the application is for the registration of farmers’ variety, nothing contained in clauses (b) to (i) shall apply in respect of the application and the application shall be in such form as may be prescribed”. This gives an impression that the farmer is exempt from giving details of DUS as mandated under the Act. It is important to note that as per section 15(3)(b), the distinctiveness criteria for a new variety is based on the difference in “essential characteristics”, a term defined in section 2(h) thus: “essential characteristics” means such heritable traits of a plant variety which are determined by the expression of one or more genes of other heritable determinants that contribute to the principal features, performance or value of the plant variety”(emphasis mine). One of the conditions in the definition of “variety” in section 2(za) makes it clear that it is based on “the expression of the characteristics resulting from a given genotype of that plant grouping”. Thus the Parliament is very clear that the test of DUS for a new variety is based on genotype or genetic makeup which modern breeders are likely to be familiar with. However, such DUS standards cannot be extended to farmers’ variety that are traditionally bred, evolved or developed by the farmers based on phenotype i.e. physically observable traits.

This seems to be the reason why the farmer is exempted from having to provide proof of DUS, unlike those that claim a “new variety” for registration. Since farmers’ varieties are developed based on cultivation through a number of seasons, the phenotype characteristics of the farmers’ variety are time tested and capable of distinguishing one from another. As such, there is no further requirement of testing. This appears to be the rationale behind our Parliament not specifying any procedure for registration of the same. However, it would have been far better if this had been explicitly stated rather than left to inference.

An examination of the procedure followed by the Authority reveals that contrary to the statutory mandate, the Authority has deployed different tactics to render ineffectual the possibility of easy registration of farmers’ varieties by the farming community. Over and above the time limit prescribed for registration of the farmers’ variety mentioned in the earlier post (II), these strategies include; (i) use of the same registration form (as used for “new” varieties) mandating proof of DUS as specified in the Act and Guidelines; (ii) An additional requirement of endorsement of the application for registration from local officials to authenticate the identity and genuineness of the farmers’ claim for their variety; (iii) extending DUS and Guidelines developed for new varieties for testing the standards with concessions on field test based on Regulation 2009; (iv) following the same procedure like notification for opposition etc before registering the variety; and (v) limiting the registration to only farmers’ varieties that are identifiable with an individual, group or community of breeders, and not extending to a group or community of farmers.  These are examined in detail with the help of registration data and case studies in two forthcoming blog posts.

Image from here

In July I had written about how I had filed applications under the Right to Information Act, 2005 seeking information from the government regarding assertions made in a news report by Vidya Krishnan of the Hindu in March of this year. A copy of the Hindu’s report was appended to my RTI application.

In her report, Krishnan had mentioned that the government had requested Janssen and Otsuka for voluntary licenses for their new TB drugs, bedaquiline and delaminid and that both companies had turned down the requests. Krishnan also stated in her report that Dr. Soumya Swaminathan the then Director General of the Indian Council of Medical Research (ICMR) [she is currently the deputy DG of the WHO] had chaired a panel in September 2017 recommending that the government issue a compulsory license for bedaquiline and delaminid.

As I reported earlier, the Ministry of Health transferred my RTIs to the DGHS who then transferred it to the CDSCO who then transferred it to ICMR. Government bodies are allowed to transfer RTI applications when they do not have the said records with them. This was surprising though since Krishnan had stated that the Ministry of Health had tried negotiating voluntary licenses with the companies. A transfer then would mean that the Ministry did not have any record of any negotiations or even a copy of the supposed recommendation by Swaminathan that the Ministry issue a compulsory license.

After following up with ICMR, I finally received a reply (display left) from the Administrative Office for the Director General stating that ICMR never held any meeting with the Ministry of Health recommending a compulsory licence for the drug bedaquiline.

ICMR’s reply is in complete contradiction to the following assertion in Krishnan’s report:

“On September 19, 2017, a panel chaired by Dr. Soumya Swaminathan, then Director-General of the Indian Council of Medical Research and currently the Deputy Director-General of the World Health Organisation (WHO) recommended, among other steps, that the Health Ministry consider issuing a compulsory licence (CL) for the two TB drugs.”

After receiving a reply from ICMR, I wrote the following email to Dr. Swaminathan:

“Dear Dr. Swaminathan,

By way of introduction, I’m an Assistant Professor at the National Academy of Legal Studies & Research (NALSAR), Hyderabad where I teach intellectual property law.

For the last several months, I have been trying to get copies of this panel report mentioned in this Hindu report where you allegedly recommended the issuance of a compulsory licence for bedaquiline: https://www.thehindu.com/sci-tech/health/extreme-tb-no-licence-to-heal/article22920634.ece

So far, the Ministry of Health, DGHS, the CDSCO and ICMR have all claimed that they do * have a copy of any such report. Can you please confirm whether the statement attributed to you is true: “On September 19, 2017, a panel chaired by Dr. Soumya Swaminathan, then Director-General of the Indian Council of Medical Research and currently the Deputy Director-General of the World Health Organisation (WHO) recommended, among other steps, that the Health Ministry consider issuing a compulsory licence (CL) for the two TB drugs.”

Regards”

(edit: * I should have stated that all three authorities “claimed that they did not have a copy of any such report” – the error is regretted)

It has been a week and I have not yet received a response from Dr. Swaminathan.

The question that I would like to pose to our readers is this – Did Krishnan simply manufacture the information regarding Swaminathan’s recommendation for a compulsory licence as well as the supposed failed negotiations for voluntary licenses with Janssen and Otsuka? If any of her assertions are true, why is it that nobody in the government has a shred of paper to back her assertions? Why has ICMR denied making any recommendation for a compulsory license for bedaquiline?

I normally would not bat an eyelid if such a news report appeared in other newspapers but I’ve been a reader of the Hindu since I first started reading newspapers as a kid. For all its shortcomings, I tend to believe news published in the Hindu because they have a reputation for publishing facts after verification. However, I have noticed glaring issues with Krishnan’s health reporting. A few years ago, she published a front-page story on a whistleblower at GVK Bio – like many of her stories, it was well written but unfortunately with little truth to it. At the time I was a lawyer for Dinesh Thakur, who had also been contacted by the whistleblower – I assisted Dinesh in researching two pieces that he published on the Wire where he blew huge holes into Krishnan’s reporting. Thus, the bedaquiline compulsory licensing story is not the first case of her facts not adding up.

I can understand journalists getting some facts mixed up in a rush to meet crazy deadlines but the bedaquiline story is not one of those cases. There is simply no trace of any evidence in government records that backs Krishnan’s claims. The question therefore is whether Krishnan published fake news on the front page of the Hindu?

SpicyIP has been bustling with activity this week, with posts on diverse areas and active engagement from our readers.

Thematic Highlight

In another post in the ongoing series on the plant variety regime in India, Prof. N.S. Gopalakrishnan discusses farmers’ varieties in the Indian regime. He notes that there are discrepancies in the individual or people that can apply for registration of a farmer’s variety under the legislation. He further notes that the legislation does not provide clear guidance for the identification of farmers’ varieties.

Topical Highlights

Prof. Basheer and Pankhuri wrote a follow-up post on a recent decision of the patent office on the morality of a device meant for sexual pleasure. In this post, the authors point out that the applicant had placed their objections to the issues raised by the Patent Office concerning morality on record, dispelling speculation that the decision was passed without opposition from the applicants. They further note that, even in the absence of a reply, the Patent Office must pass decisions with deference to the rule of law.

Rahul critiqued a recent judgment on the copyrightability of a concept note. In this case, a show which envisaged a quiz show format in which home-viewers could participate for prize money was examined. Rahul notes that while the court upheld the long-standing principle that concepts cannot be copyrighted, it erred by applying the ‘novelty’ standard in patent law. He further argues that the appellant had a strong confidentiality claim, which the court ostensibly overlooked.

Pankhuri brought to us a two-part guest post by Adarsh Ramanujan on the WTO Panel ruling in the Plain Packaging Dispute. In Part-I, Adarsh highlights the short-comings of the Panel Report with respect to certain trademark issues. He argues that the Panel found incorrectly on aspects concerning the potentially registrable non-distinctive marks, cancellation of registered but inherently non-distinctive signs and maintenance and acquisition of well-known mark status.

In Part-II, Adarsh highlights potent arguments that the complainants in the case failed to raise effectively. Specifically, he argues that the contention pertaining to Article 16.1 of TRIPs was misplaced in the present fact scenario. He posits, rather, that the Panel should have focussed on whether a registered non-word sign could be infringed by use of an identical or similar sign in “similar” goods not covered by the TPP measures to reach a decision.

Divij wrote a tidbit on the Madras HC’s recent decision in M/s. Sathya Movies vs M/s.Suresh Production Entertainment Private Limited, where it upheld the copyright in the title of the film ‘Naan Aanaiittaal’ in an ­ex-parte hearing.

SpicyIP Jobs

Pankhuri informed us about a job opening at Médecins Sans Frontières Access Campaign for the position of a Trade and Intellectual Property Analyst. The position is based out of New Delhi and the deadline for applications is August 19, 2018.

Other Developments

Indian

Judgements

1. Radico Khaitan Ltd. v. Shanty Raina & Ors. – Delhi High Court [August 13, 2018]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered mark and label “NJAU” by using an identical mark in respect of liquor. In arriving at this decision, the Court examined the evidence submitted by the Plaintiff and concluded that the Defendants were using the Plaintiff’s mark and its product in order to sell counterfeit goods with a view to benefit from its reputation and goodwill. The Court also stated that though the Defendant was exporting the counterfeit goods to Nigeria and not operating in India, the mere application of the Plaintiff’s mark in India constituted use of the mark in India. Moreover, the Court awarded damages of Rupees 9,86,580 after calculating the number of cartons manufactured and exported by the Defendants.

2. A & A Dukaan Financial Services Private Ltd. v. Mr. Abhishek Kohli & Ors. – Delhi High Court [August 13, 2018]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “bankbazaar” and “bankbazaar.com”, along with its domain name “www.bankbazaarloan.com” by using a deceptively similar mark “bankbazaarloan.com” in respect of online technology for aggregation, display and comparison of financial products. In arriving at this decision, the Court observed that the Defendants had no real prospect to defend its claim as the mark was registered in favour of the Plaintiff and, they had failed to appear or file a written statement. Moreover, the Court decreed the transfer of the domain name www.bankbazaarloan.com to the Plaintiff.

3. Nahar Singh Mahipal Jain v. Shri Vineet Jain – Delhi District Court [August 14, 2018]

The dispute concerned the alleged infringement of the Plaintiff’s associated mark “CLASSIC GOLD” in respect of edible and non-edible colours and chemicals by using a deceptively similar mark “NEW CLASSIC GOLD” in respect of selling drinking chocolate and allied goods. The Court dismissed the case stating that the Plaintiff had failed to disclose the fact relating to the registration of its mark by the previous partnership firm and in the absence of any assignment from the previous firm, there could be no right in favour of the Plaintiff to use the mark.

News

1. Bennett, Coleman & Co. takes real estate developers to court over illegal ad inserts

2. SII bags patent for humanity award for Rotasiil vaccine

3. Patent registration system in India to improve with new process and bigger team

4. Matrimony.com obtains High Court injunction against websites misrepresenting its brands

5. Pictorial Warning Covering 85% of Packaging Space Mandatory In All Tobacco Products: SC Makes Stay On Karnataka HC Judgment Absolute

International

1. TiVo announces a renewal of its IP license with Altice

2. Copyright issues close DC ‘Rick and Morty’ pop-up bar

3. Artist Alexa Meade transforms models into 2D works of art

4. Daimler trademark filing implies autonomous driving tech with AI possibly in the works

5. Apple patent hints at Siri recognising multi-user voices 

We are happy to bring to you yet another insightful post in the ongoing series of posts by Prof. (Dr.) N.S. Gopalakrishnan on problems with India’s plant varieties’ regime. This post is Part II of the three-part post where Prof. Gopalakrishnan critically examines the procedure followed for registration of farmers’ varieties. Part I of the post can be viewed here and the earlier posts in the series, here, here and here.

Problems with the Indian Plant Varieties Regime (IV):

Obliterating the “Farmers’ Variety” (Part II)?

Prof. (Dr.) N.S. Gopalakrishnan

Farmers’ variety, as explained in the earlier post, is the unique outcome of the traditional innovation methods adopted by the farming community. To promote and preserve such informal innovation methods, our Parliament inter alia envisaged separate registration for the farmers’ variety, without too many formalities. It is evident from post III that the Authority has been registering it as an independent category under section 14(c) of the Act, and has excluded it from the “extant variety” category to be registered under section 14(b). Unfortunately, contrary to the intention of the Parliament, the Authority has followed procedures that are detrimental to the farmer by prescribing a complicated application form along with the need for an endorsement for registering the farmers’ variety. It has also illegally used the criteria of DUS and test Guidelines developed for registering new varieties to test the suitability of the farmers’ variety for registration. The implications of this insidious strategy to effectively obliterate the category of “farmers’ variety” are examined below.

Application for Registration and Endorsement

The first step taken by the Authority in 2006 to register farmers’ variety was to include the farmers’ variety in the application Form 1 for registration of new and extant variety. At the outset, it is to be noted that this is contrary to the proviso to section 18(1) of the Act which stipulates a separate application form for the registration of a farmers’ variety. As per Form 1, the farmer was expected to provide all details similar to that of an applicant for registration of a new variety. One of the important requirements in Form 1 is to furnish the details of DUS features of the variety. The farmer was also bound to provide DUS features including the group characteristics as specified in the test Guidelines. The “Technical Questionnaire” with specific details of DUS was also to be attached along with the application. A perusal of the technical questionnaire reveals that the kind of technical details called for (in relation to establishing DUS criteria) is the same as that for a new variety using formal breeding techniques. Quite clearly, no farmer will be in a position to give these details unless his traditional variety is scientifically tested by a modern breeder in the laboratory and filed. As such, Form 1 was not only hostile to the farmer but also against the mandate of the Parliament which, as per the proviso to section 18(1), exempted the farmer from furnishing DUS details for registration.

It was only in 2013 that the Central Government amended the 2003 PV Rules and included Rule 25A prescribing  a separate application form for the registration of farmers’ variety. However, even this form is found seriously wanting. Rather than seeking information based on traditional innovation practices followed by farmers, this new form replicates all the contents of Form 1, save the requirements relating to DUS. This is again contrary to the proviso to section 18(1) and gives the impression of a badly edited version of Form 1. Most of the information required under this new form is rather irrelevant for the registration of a farmers’ variety. The most worrisome feature is the absence of any provision to collect information regarding the physical features of the farmers’ variety (phenotype). This shows the apathy of the Authority in appreciating the mandate of the Parliament to develop a separate application form that captures the essential features of the farmers’ variety bred, evolved or developed through informal breeding methods. One hopes that the application form is amended in the near future to make it more simple and relevant to farming communities.

Annexure I for Endorsement

The most troubling part of Form 1 was Annexure I to be attached along with the application for the registration of farmers’ variety. This annexure is essentially a declaration by the applicant, endorsed either by the concerned Panchayat Biodiversity Management Committee, or District Agricultural Officer, or Director of Research of concerned State Agricultural University or District Tribal Development Officer. This is retained in the new form prescribed in 2013 as well. A perusal of Annexure 1 indicates that the applicants must declare that they “are the initial and exclusive developers and continuous conservers of the candidate variety” and the official has to endorse that “It is hereby certified that the above said candidate variety is bred/developed and continuously conserved and cultivated only by the applicant farmer/group of farmers/community of farmers who is/are permanent residents of above said village(s) and I am fully conversant with the applicant farmer/group or community of farmers and that the candidate variety is due to their efforts”(emphasis mine). This requirement has the following implications. Firstly, it is a requirement not envisaged by the Act and a clear case of discrimination, since there is no such requirement when registering new and extant varieties. It also shows the level of distrust in farmers who seek to register their varieties. Secondly, the farmer can register only those varieties that are “bred/developed and continuously conserved and cultivated” by them and not varieties that have only been conserved and cultivated, including “wild relatives or land races or varieties about with farmers possess common knowledge”, a category that is expressly included in the definition of “farmers’ variety”. It is significant to note that the definitions of the farmers’ variety, farmers and breeder as explained in the earlier post uses terms such as “cultivates, conserve, preserve and evolved” to capture the traditional breeding and in situ conservation. This is to ensure registration of all farmers’ varieties, irrespective of whether its origin could be traced back to a farmer, group of farmers or community of farmers. As such, this requirement contravenes the intention of Parliament. Finally, the categories of “group of farmers” and “community of farmers” as applicants are included in the new form and Annexure I, without prescribing any guidelines to distinguish between them. Given the social, economic, religious and cultural background of the Indian villages, this is bound to create practical problems. It is difficult to comprehend how this is permissible under the law and leaves much room for manipulation. The problems that cropped up during registration are illustrated in the next blog post through a case study of the registration of Gandhakasala and Jeerakasala: two traditional farmers’ rice varieties from the State of Kerala.

Proposed amendment to Annexure I

It is shocking to note that the Authority in its 29^th Meeting held on 16^th April 2018 (Agenda item 18) decided to amend the Sixth Schedule in the Rules (relating to Annexure I) and change the officials who are authorised to issue the certificate. As per this decision, the proposed officials are: “Director of Research of SAUs/Project Co-ordinators/Directors of concerned mandated crop based institutes of ICAR through any of their offices/branches in their jurisdiction”. Further, it is deplorable to note that the Authority also decided that “to maintain genetic purity in farmers varieties submitted for DUS testing, an amendment will be made to the effect that before filing of the application for registration of farmers’ varieties, the endorsing Authority shall have to conduct/facilitate under its functional jurisdiction a screening test on field for establishing the genetic Uniformity and Stability criteria of the variety to depose and file the affidavit in PPV&FR Authority and thereafter the application for registration of farmers’ be filed”.

This practically means that the farmer has to first approach the local agricultural research institute to get his or her variety scientifically tested and screened before filing an application. Only those varieties that are proved to be “genetically pure” will be recommended for registration. This not only adds an additional burden on the farmer, but also excludes a number of farmers’ variety from registration. This is clearly an attempt to use modern breeders and the standards of formal breeding to validate varieties that are developed and conserved though informal breeding techniques followed by farmers. This is contrary to the intention of the Parliament and urgent intervention is necessary to prevent the Authority from implementing this decision to safeguard the interest of farmers.

DUS Testing for Farmers’ Variety

Contrary to the provisions of the Act, the Protection of Plant Varieties and Farmers’ Right (Criteria for Distinctiveness, Uniformity and Stability for Registration) Regulation, 2009 expressly includes provision for DUS testing of farmers’ variety. It is significant to note that the 2009 Regulation was made in exercise of the power to make regulation under section 15(2) of the Act to register an extant variety. The title of Regulation 5 shows that it deals with the criteria for DUS of farmers’ variety. According to the regulation, the farmer applying for registration of a farmers’ variety under section 14(c) shall “submit half the quantity of seeds as divided into five equal number of packets for the purpose of field test and also for storing in National Gene Bank …”. Regarding “distinctiveness”, it is stated in sub clause (2) that “wherever the distinctiveness of the variety is required to be verified, field test will be conducted for DUS in the test Centre”. There is no mention of separate criteria of DUS. Thus, it gives the impression that the general criteria of DUS and the test Guidelines developed to conduct the field test based on genotype for new variety will apply for determining the distinctiveness of farmers’ variety as well. The use of the terms “wherever distinctiveness of the variety is required to be verified” gives an impression that distinctive test is not mandatory for all cases, and one expects the Authority to specify when it is required. But no information/guidelines are available in this regard and the Annual Reports are very sketchy, when dealing with the registration of farmers’ variety.

Regarding the method of field test, it is stipulated in sub clauses (3) and (4) that “the farmers’ variety along with an example variety and any other similar variety shall be evaluated on a “paired row test”. It is further specified that “it shall be a replicate trial and will be conducted for one season at two locations for the limited purpose of confirming distinctiveness following the descriptors as such may be specified in the Journal”. According to sub-clauses (6) and (7) dealing with uniformity and stability, it is clarified that “the uniformity level for Farmers’ variety for the respective species level shall not exceed double the number of off-types specified in the Journal” and “if the variety meets the uniformity criteria, it shall be deemed to have met the stability criteria”. The Authority in September 2009 Journal (Volume 3, No.9 page 7) notified for 15 crops such as bread wheat, rice, maize, sorghum, green gram, black gram, jute, etc., the permitted off-type/population of new variety/hybrid to be applied for determining the uniformity level for the farmers’ variety. Thus it is clear that the criteria of DUS and the Guidelines for a “new variety” is applicable to farmers’ variety as well, with some minor concessions as specified in the Regulations.

If one scans through the Annual Reports from 2008 to 2017, only in the 2009-10 to 2011-12 Reports, in Chapter 2 dealing with “Progress of Plant Variety Registry”, there is a brief mention about the “Grow Out Test” being carried out for the applications received for farmers’ varieties. Even this brief description disappeared from 2012-13 onwards (except in 2015-16). What is striking is the rather elaborate manner in which the registration of new varieties, notified extant varieties and varieties about which there is common knowledge bred by the modern breeders have been detailed in the annual reports. Contrast this with the rather miserly mention of farmers’ variety evolved and conserved through informal breeding methods; a contrast that reflects the step motherly attitude of the Authority towards the registration of farmers’ variety.

A quick reading of the Chapter dealing with DUS testing in the Annual Reports clearly indicates that the farmers’ varieties are tested for DUS. Even though “Grow Out Test” is mentioned for farmers’ variety, no information is available in the Annual Reports to discern whether this is based on a different set of criteria of DUS and Guidelines for testing. There is also no information regarding the development of separate criteria of DUS or Guidelines for testing the farmers’ variety, other than the concessions on testing provided in the Regulation 5 of 2009. This compels one to infer that the criteria of DUS and test based on the Guidelines developed for new varieties are being followed in case of farmers’ variety as well. Clearly expecting farmers (who rely on phenotype) to comply with tests devised for new varieties (that rely on genotype) will do them more harm than good.

One wonders as to how Authority has brazenly infused its own set of laws/norms to render a regime that is rather hostile to farmers, and militates against the intention of the Parliament. It is no surprise then that there were only 7 applications for the registration of farmers’ variety during 2006-08. It is also pertinent to note that out the initial 7 applications, it was only in December 2009 that the first three certificates for farmers’ variety were issued by the Authority followed by one each in April 2012, April 2013, November 2014 and one is still under DUS testing as per the application status issued by the Authority on 7^th May 2018. The Annual Reports clearly indicated that before registration the application along with the DUS test report was notified for objection which is evident from the public notice issued in the Journal. This also shows the time taken by the Authority in conducting the DUS test, notifying the application for opposition and issue of the certificates.

What makes one upset is the insistence of the Authority to conduct DUS for the time tested farmers’ variety that too after insisting for a certificate from a responsible local official endorsing that it was continuously in cultivation. In the context of the Authority illegally exempting the DUS test for the notified extant variety as illustrated in post III, there seems no justification for insisting DUS test for farmers’ variety using Guidelines that too developed for testing new varieties bred using modern breeding techniques when Parliament is silent about it. It appears that the failure of the Authority to structure an application form seeking complete details of the farmers’ variety based on traditional breeding practices is the main reason for this unfortunate situation. This also demonstrates the closed mindset of the Authority towards promoting informal innovation methods followed by the farmers which the Parliament wanted to simultaneously encourage. This calls for an urgent intervention of the Parliament by prescribing specific requirements for the registration of farmers’ variety. The registration trends of farmers’ variety and the associated problems are examined in the following blog post.