Here’s wishing all our readers a Happy New Year! We hope 2018 lived up to your expectations. If it didn’t, forget about it. It’s in the past now – best leave it there as 2019 beckons!

As always, we take this time to reflect upon the year gone by – taking a walk down memory lane to recount all the exciting developments that took place in 2018, and reshaped the Indian IP landscape.

This year, we’ve divided the developments into three broad categories:

1. Top Cases/Judgments Based on Topicality/Impact
2. Top Cases/Judgments Based on Jurisprudence/Legal Lucidity
3. Top Legislative, Policy-Related and Other Developments

The decisions in the first category, i.e., Top IP Cases/Judgments based on Topicality/Impact reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem etc. We’ve tried to represent a diversity of subject matter also in this list, so we have a fair sprinkling of cases dealing with patents, trademarks, copyright etc.

And the decisions in the second category, i.e., Top IP Cases/Judgments based on Jurisprudence/Legal Lucidity reflect those that we thought reflected a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive. The second category contains judgments which we feel have done a fairly good job in reiterating, laying down or rejecting legal principles. These judgments have also been included for their lucidity and sound legal reasoning. Please note here that both these categories are not mutually exclusive.

The third category lists out notable developments in the legislative and policy sectors and includes important amendments, proposals for amendments, releases of policy notes and reports. We’ve also highlighted important developments in other sectors that have had a significant impact on the IP landscape.

Top Cases/Judgments Based On Topicality/Impact

1. Mosanto v. Nuziveedu: In a very controversial ruling, the Delhi High Court declared Monsanto’s patent for Bt. Technology invalid on the ground that it did not qualify as patentable subject matter under Section 3(j) (which prohibits the grant of patents for plants, plant varieties or seeds or any part thereof). In order to determine the subject matter, the court claimed that the patent was not granted for a “product” or “method” and was instead granted for a “place in the genetic sequence of the DNA”. It further found the patent invalid since it was sought for an “essentially biological process”. As Prashant Reddy rightly notes, the Court’s claim construction and its validity analysis were quite flawed. The matter is now under appeal before the Supreme court, and one awaits the final word on this.
2. Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors.: We broke the news of India’s first Post-Trial Standard Essential Patent judgement delivered by the Delhi HC. The Court found certain local manufacturers of DVD players liable for infringing Philip’s patents, which the Court found to be Standard Essential Patents. In a later post, Divij Joshi broke down the judgment for readers and pointed out several flaws. Amongst other aspects, the Court found the suit patent to be essential since it could be mapped to a standard, without analysing the standard or the allegedly infringing patent itself.
3. Carlsberg Breweries v. Som Distilleries: In its recent decision on design-trademark, overlaps, the Delhi HC clarified the long-standing confusion which had arisen after the (in)famous Micolube judgment. According to the provisions of the Design Act and Trade Marks Act, registration of a design would be required to be cancelled once it started functioning as a trademark and hence, it was debated that remedy for passing off for a registered design could not be claimed. The Delhi HC clarified that this remedy could not be claimed for trademark infringement and only trade dress infringement or any other similar infringement of the registered design.
4. Christian Louboutin SAS v. Ashish Bansal-In its latest judgment on trademark protection for Louboutins (which we’ve termed Louboutin-3), the Delhi HC again contradicted its previous decisions and granted permanent injunction and punitive damages against a retailer for infringing the “Red Sole” trademark of Louboutin. In its previous decision aka Louboutin-2, delivered a month before this ruling, the Court had held that the trademark in issue was not eligible for protection. Interestingly, the Louboutin-2 judgment had contradicted a decision in 2017 aka Louboutin-1, where the same Court had adopted a similar reasoning as that in Louboutin-3 and even went on to declare the “Red Sole” trademark as a well-known one. These contradictory judgments have hence led to a jurisprudential imbroglio which needs to be addressed as soon as possible.
5. Christian Louboutin SAS v Nakul Bajaj and Ors: In yet another decision dealing Louboutins, the Delhi HC attempted to clarify principles of intermediary liability of online marketplaces. The Court held that the defendant was not entitled to “safe harbour” protection under Section 79 and examined: (1) “intermediary” under the IT Act, (2) the instances where intermediaries can claim immunity under Section 79 and (3) the relationship between infringement under the Trade Marks Act and the IT Act. The Court, however, failed to consider that not all platforms can be considered to be “intermediaries”. They also failed to discuss primary and secondary liability of online marketplaces.
6. Anand Bhushan v. Union of India: In a significant development, a Division Bench of the Delhi HC examined the constitutionality of Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013. The Rules lay down the manner in which copyright societies can frame their Tariff Schemes, the manner in which Tariff schemes can be challenged etc. It was argued, quite correctly, that these Rules went far beyond the scope of power delegated to the government under Section 33A of the Copyright Act. The Court, however, upheld the constitutionality of the Rules. In their opinion, the Rules did not derogate the parent legislation i.e., the Copyright Act.
7. Dinesh Parmar v. The Controller General of Patents: In an interesting decision, the Bombay HC dismissed certain objections raised against the Patent Agent Examination. An answer provided in the answer key was disputed and it was contended that an alternative option of the multiple-choice question was the correct answer. The Court relied on the Kanpur University decision to observe that answers provided in answer keys should be assumed to be correct unless it is proven to be wrong. They further stated that such answers cannot be proven wrong in an inferential manner and thereby concluded that the Petitioners had failed to establish that the option was undoubtedly wrong.
8. Sanjay Kumar Gupta v. Sony Picture Networks India Pvt. Ltd.: In a judgment with a riveting factual matrix, the Delhi HC cleared KBC makers of allegations of copyright infringement. The appellants, in this case, had a concept termed “Jeeto Unlimited”, where home viewers of a quiz show could participate live in a quiz show and were rewarded for answering correctly. It was alleged that, on presenting this concept to Sony, they were compelled to sign a consent letter which allowed Sony to use the concept without incurring any liability. The case was decided in favour of the KBC makers by relying on the famous RG Anand v. Delux Films judgment which had held that a concept is not entitled to copyright protection.
9. GI Registry Rejected MP’s Claim For The Basmati GI Tag: The Geographical Indications Registry passed an order in March, rejecting Madhya Pradesh’s bid for the ‘basmati’ GI tag for rice grown in 13 of its districts. The Registry had rejected the GI claim on mainly two grounds: (1) failure to establish similar quality as that of basmati rice (2) failure to establish “popular public perception” of rice in MP to be basmati rice. The Registry’s decision has been challenged in the Madras HC by way of a writ petition.
10. Shamnad Basheer v. Union of India: The Delhi HC disposed of the patent working PIL matter and directed the Government to bring about all necessary amendments in the relevant patent working provisions, within strictly imposed deadlines.
11. Glenmark Pharmaceuticals Ltd. V. Curetech Skincare: In a noteworthy development, the Bombay High Court recently imposed costs of a heft amount og 1.5 crores against Galpha Lobratories and others for “habitually” committing trademark infringement of pharmaceutical products. The defendants submitted to the imposition of these costs and did not contest the suit. This is most probably the largest order of exemplary costs in a trademark infringement case.

Top Cases/Judgments Based on Jurisprudence/Legal Lucidity

1. Carlsberg Breweries v. Som Distilleries: A five-judge bench of the Delhi High Court delivered a definitive judgment on issues of composite suits involving design infringement and passing off. It held that a composite suit for design infringement and passing off is maintainable, and further, a remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark, and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement.
2. Epsilon Publishing House v. Union of India: In this case, the Delhi High Court rendered a judgment that significantly impacts the law that governs the renewal of trademarks. In this case, the appellant’s mark was alleged to be liable for removal due to a failure to observe renewal requirements under the Trade Marks Act and Rules. However, on an interpretation of the applicable legal provisions, the court held that the renewal was valid. This is because the discrepancies (of delay and non-payment of surcharge) occurred only due to lapses by the registry rather than the appellant.
3. Fermat Education v. Sorting Hat Technologies Pvt. Ltd: In the backdrop of an interesting factual matrix, the Madras High Court delivered an important judgment interpreting the meaning of ‘intermediaries’ in light of the safe harbour provision in the Information Technology Act. The case primarily concerned the infringement of the proprietor’s copyright in a question bank created for Common Admission Test (CAT) aspirants. The evidence left no doubt that the questions were reproduced on the defendant’s website. However, the defendant argued that they are a website that connects educators to students, and only host content that is uploaded by its users. As such, it should be protected by the safe harbour provision under Section 29 of the Information Technology Act. The court held against the defendant’s, because the ‘Terms and Conditions’ of the website indicated that they possessed knowledge and a significant amount of control over material uploaded on its website. However, the court did not justify its use of control as a factor to determine whether a platform qualified as an intermediary, especially since the definition of ‘intermediary’ under the Information Technology Act makes no reference to control.
4. Kajal Aggarwal v. VVD & Sons: The Madras High Court reiterated that the statutorily prescribed duration for copyright in a work is non-derogable. In this case, it was held that the producer was entitled to exploit a cinematograph film for the statutorily prescribed 60 years, despite a contract to the contrary, which indicated one year as the period beyond which the film could not be exploited. While the appellant unsuccessfully argued that this negated the consent of both parties, it may have been wiser to argue that allowing reduction the duration of the copyright would further copyright law’s objective of increasing access for the public.
5. Navigators Logistics v. Kashif Qureshi: The Delhi High Court delivered a lucid judgment that settles the position of law relating to the protection of consumer lists. This was a classic case where an employer alleged that a former employee was using their customer list to compete with them. With respect to copyright, the court held that the employer had failed to establish that the list was ‘original’ under the ‘skill and judgment’ standard espoused in Eastern Book Company v D.B. Modak. On grounds of confidentiality, the court held against the employer. It concluded that it is not possible to claim confidentiality in every customer list, since most details are available in the public domain. Therefore, the plaintiff must specifically establish the economic or commercial value of their customer list in order to protect it.
6. Shamnad Basheer v. Union of India: In a crisp and well-reasoned judgment, the Delhi High Court clarified that patent working information is not confidential and has to be mandatorily submitted by all patentees. Further, all licensees have to comply with the disclosure requirement. The court did not endorse the argument of the intervenor, who asserted that Form 27, through which the disclosures must be made, was vague and therefore inapplicable. This judgment is a victory against the rampant non-compliance of the requirement to disclose patent working by patentees.
7. Sphaera Pharma Pte. Ltd. v. Union of India: In a lucid and well-reasoned judgment, the Delhi High Court emphatically stated that the Patents Act, 1970 does not offer any scope for considering a request for patent examination filed beyond the prescribed period of 48 months from the date of filing of the application. In this case, an attempt to file a request for examination had been made within the prescribed time period, but the request did not get uploaded due to some technical reasons. However, this was not condonable because the requirement is mandatory and leaves no scope for exceptions.
8. M/s Sathya Movies v. M/s Suresh Production Entertainment Pvt. Ltd.: The Madras High Court delivered a lucid decision examining film title protection in the context of copyright law. The court held that the title of a film is not protected under copyright law, since it lacked originality on account of its descriptive nature and the settled position of law. More importantly, the judgement also dealt with the issue of the scope of protection offered by so-called ‘title registration schemes’ run by film associations, and whether they are effective at all. The court concluded that such schemes for registration of titles, under the rules and bye-laws of these societies were only binding on its members, and moreover, in the present case, the title registration scheme was purely on a self-regulatory basis which stated that it would not have legal effect. The court also held that registration of titles with film associations was not a ‘trade practice’ which could grant the titles legal protection in court.
9. The Indian Performing Society v. Vodafone Idea Ltd.: The Calcutta HC directed Vodafone to deposit a whopping amount of Rs. 2.5 crore in a copyright infringement suit filed by IPRS. The decision raised two main issues, amongst others: (1) The nature of the “right to receive royalty” available to authors of musical and literary works and (2) Against whom this particular right can be exercised and the enforcement mechanism for ensuring the same. In our analysis of this post, we came to the conclusion that the right to receive royalty is not an exclusive right under Section 14 of the Copyright Act and that it is, in effect, a contractual term used between the assignor and assignee of the copyright in underlying works, as mandated by the statute.
10. Texmo Industries v. Roshan Kumar: In a tentative judgment on an important issue, the Madras High Court opined that the power to declare a mark as well-known lies solely with the Registrar. The court relied on the plain text of Section 11 to state that only the Registrar should have the power to determine well-known marks. It also noted that Registrar is also better placed to examine a number of factors that determine whether a trademark is well-known, and courts should, therefore, refrain from making this determination. However, the court referred the question to a higher bench due to differing views from benches of similar strength. However, this judgment sits uncomfortably with a circular issued by the Ministry of Commerce and Industries, which requires judgment from a court that the mark is well-known before the Registrar can declare it to be so.

Top Legislative, Policy and Other Developments

1. Indian IPR Administrative offices opening up to new technologies

Following on the heels of various other jurisdictions, Indian IPR administrative offices have taken several steps to introduce new, exciting technologies! We reported about two important developments: (1) Introduction of Video-Conferencing by the Copyright Office for Hearing Applicants (2) Proposal by the Controller General of Patents, Designs and Trademarks to Introduce AI, Blockchain and Internet of Things in IP Enforcement.

2. Government Releases Reports on IPR in India – Focus on Access to Healthcare, Remedies for Piracy

In a welcome move, The Centre for IPR Promotion and Management (CIPAM) released two well-researched documents summarizing various aspects of the Indian IPR regime.  One of these documents, in particular, lists institutional reforms by the Government over the past few years and also provides a helpful summary of filing and enforcement statistics.

3. India Signed up to Internet Copyright Treaties

The Union Cabinet approved a proposal to accede to the WIPO Copyright Treaty, 1996 (‘WCT’) and the WIPO Performance and Phonograms Treaty, 1996 (‘WPPT’). WCT specifically sets out a framework for the protection of authors’ rights in the digital environment and also makes the protection of computer programs and databases mandatory. The WPPT pertains to the rights of performers and producers of phonograms. It protects, specifically in a digital environment, the rights of actors, musicians, singers and producers of soundtracks. While this move will benefit copyright owners, but may result in diplomatic pressure provisions that are uniquely applied in India, such as those pertaining to ‘Technology Protection Measures’.

4. Delhi HC Demanded Updates and Imposed Strict Deadlines for Patent Working/Form 27 Disclosure Amendments

The Delhi HC has been taking several steps to bring about changes in the patent working disclosure requirements. It first asked for a status report on patent working in a hearing in Jan while dealing with the patent working PIL. It then later called for comments from the public on patent working and Form 27. The Patent Office then published stakeholders’ comments on its website, thereby speeding up the process considerably.

5. Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, Notified

In a highly welcome move, the Central Government recently amended the Intellectual Property Rights (Imported Goods) Enforcement Rules, thereby revoking the power of customs officers to seize imports on the basis of mere complaints of patent infringement. This amendment will, presumably, render the Ericcson judgment (wherein they had held that customs officers could suspend clearance of good if they had “reason to believe” patent infringement claims) invalid.

6. The Government’s Proposal to Amend the Sports Broadcasting Law

The government has been actively trying to increase access to our favourite sport channels and has even proposed to amend the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharti) Act (“SBS Act”), an Act which requires all private broadcasters to share sporting events of national importance with Prasar Bharti. The Cable Television Networks Act (“CTN Act”) mandates that all cable operators are required to re-transmit all DD channels to their users. Back in 2017 though, a SC judgment held that the signal shared with DD could not be re-transmitted over cable networks under the SBS Act, notwithstanding the mandate under the CTN Act. The government has now proposed an amendment to the SBS Act that will allow such re-transmission. If this measure is carried out successfully, it would imply that people would only need a cable TV or DTH network to view sporting events and would not have to subscribe to costly sports channels for the same.

7.  New Law to Hardcode Public Interest into Injunction Jurisprudence

The Specific Relief (Amendment) Bill, 2017, which inter alia amends the law pertaining to the power of courts to grant interim reliefs in the context of infrastructure projects has been passed into law. A new Section 20A is to be inserted, along with Section 41(ha), which strips the power of the court to grant injunctions in contracts pertaining to infrastructure projects that would impede the progress of infrastructure projects. With respect to patents, the new law would mean that no injunctions can be granted to patentees against the government or private contractors in cases involving contracts pertaining to electricity generation and distribution, and railways.

8. Copyright (Amendment) Act, 1999 and Copyright (Amendment) Act, 2012 repealed

 In light of the current government’s efforts to repeal redundant laws, the Parliament repealed the Copyright (Amendment) Act, 1999, Copyright (Amendment) Act, 2012 and the Competition (Amendment) Act, 2007. While one interpretation of this action may result in the conclusion that the substantive provisions of these amendments have been repealed, another suggests that post-amendment, the original statute exists only as amended, and therefore repealing the amending act would not affect it. This latter interpretation is backed by precedent from the Supreme Court of India.

9. Petition Filed in Supreme Court to Challenge Constitutionality of Provisions on Compulsory and Statutory Licensing in the Copyright Act

A petition that challenges the constitutional validity of Sections 31(1)(b) and 30D is currently being heard by the Supreme Court. Sec. 31(1)(b), which creates a compulsory licensing regime, and Sec. 31D, which allows for mandatory licensing to broadcasting organisations on terms decided by the IPAB, were brought in through amendments to ensure broader dissemination and address the unfair power balance that reflects in grossly unbalanced contracts. These provisions are being challenges because of alleged arbitrariness, unfair impediment on the rights of the copyright holder and creating and unfairly favourable position for broadcasters.

10. Application by RMPL for Registration as Copyright Society Sparks Debate Over Author Rights

The Recorded Music Performance Limited (“RMPL”) applied for registration as a copyright society. Its application again raised the debate regarding value deprivation caused to authors due to flaws in the model of these societies and the  influence of big music companies. In light of Phonographic Performance Limited’s (“PPL”) pending application for registration as copyright society, the question of whether both these entities should be allowed to register arises. In our answer to this issue, we responded by stating that plural societies would have an adverse impact by creating unnecessary competition and a lot of confusion. We further opined that choosing RMPL over PPL would not be a wise decision since the latter has a wider membership and has collected and delivered huge royalties in previous instances.

11. Advocates Challenged the Requirement of a Patent Agent Examination to Practice before the Patent Office

We first reported about a suit filed against the Controller General of Patents in the Madras HC. The Petitioner contended that they were qualified to appear before the Patent Office without clearing the Patent Agent Examination since the Advocates Act gives them the right to practise in all forums. The Petitioner based his argument on the Chockalingam ruling, which declared an amendment (which deleted a provision that allowed advocates with degrees in science and technology to enrol as patent agents, without taking the patent examination) as unconstitutional. Later, we also reported two more petitions on similar points lying before the Delhi HC and the Madras HC.

12. Policy to Encourage Intellectual Property Awareness Amongst Youth

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. This is in furtherance of the objectives laid down in the National IPR Policy 2016, one of which is “IPR Awareness: Outreach and Promotion”. However, indoctrinating school children with a formalistic one-sided IP view may do more harm that good. Rather, focussing on encouraging innovation and creativity may serve the purpose of the national policy better.

(This post has been put together by Prarthana Patnaik and Rishabh Mohnot with inputs from Pankhuri Agarwal and Prof. Shamnad Basheer)

Image from here

Even as we were bidding adieu to 2018, one of the most contentious IP issues cropped up. Thanks to Disney’s trademark over Hakuna Matata (from the Lion King) and an online petition protesting against this blatant cultural (mis)appropriation! I reflect on this in the Hindustan Times and excerpt some portions below. Hardly a stress free issue. But then again, these are complex cases not amenable to easy resolution. The best we can do is to continue to debate and remain open to plural perspectives. And on that note, here’s wishing all of you a wonderful New Year from all of us at SpicyIP.

Excerpts from HT piece on Disney’s trademarking of Hakuna Matata.

“Recently, I did a session on “stress relief” for law students who are part of IDIA (Increasing Diversity by Increasing Access to Legal Education), a project to empower underprivileged communities through legal education. A key part of the session involved the use of music to beat stress. To this end, I played them ‘Hakuna matata’, a smash hit from Disney’s musical blockbuster The Lion King. Hakuna translates roughly to “there is/are no” and Matata means “problem(s)”. Taken together, this Swahili phrase, as the song itself goes, “…means no worries, for the rest of your days. A problem free philosophy”.

Little was I to know that even as this number was being belted out at the Indian Law Institute (ILI) in Delhi (the situs of our stress relief session), an online petition was doing the rounds, protesting Disney’s misappropriation of “Hakuna Matata”. Way back in 1994, Disney filed a trademark application for this phrase, which finally converted to a grant in 2003. However, it is only recently that this appropriation began to attract some attention, thanks to Disney’s announcement of a live-action remake of the old classic.

Many have decried this as yet another example of cultural misappropriation by a first world corporation. What is even more striking is that Disney wasn’t even the first to popularise this term through music. Rather, a Kenyan band (“Them Mushrooms”) deployed this in 1982 for their celebrated single “Jambo Bwana”. Why then did Disney go out of their way to blatantly appropriate an indigenous African phrase as its own trademark?

….

While Disney’s actions may pass legal muster, what of ethics? For many see this as a moral issue, triggering memories of an oppressive colonial past. To make matters worse, this is not first time that Disney has been accused of such misappropriation. Some years ago, it tried to trademark “Dia de los Muertos”, the name of a Mexican festival meant to commemorate the dead. This was in relation to “Coco”, another Disney blockbuster which released last year, and is themed around the Mexican festival.

Fortunately, in the light of widespread protests, Disney backed down and abandoned its trademark application. But will it do the same with Hakuna Matata? For one, the term does not boast any special religious or spiritual significance. Second, the term is not endemic to any one indigenous group or community. Third, the trademark application has already converted to a grant; so no question of abandoning it.

….But what can be done? While many call for new legal norms, the law comes with its own set of constraints. Particularly in a dispute as complex as this, involving issues of culture, anthropology, economics and politics.”

ps: Image from here.

We are pleased to bring to you an insightful guest post by Dr. Deepa Kachroo Tiku on a contested provision of patent law involving the exclusion of plants/animals and essentially biological processes. As readers are aware, this exclusion (section 3(j)) is at the forefront of a big ticket patent battle between Monsanto and Nuziveedu. As we understand, the hearings have concluded and the court is expected to issue a decision sometime soon.

Deepa is a partner at K&S Partners and based out of the Gurgaon (Nation Capital Region) office. She is a registered Patent Agent with the Indian Patent Office and an attorney at law. She specializes in the area of Life Sciences, with an emphasis on patent drafting, prosecution and contentious practice, particularly biotechnology and pharmaceuticals as well as biomedical, nanotechnology, chemistry and polymer related inventions. Her practice also involves advising both domestic as well as International clients on Plant Variety Protection in India as well as Biodiversity Act of India. Deepa also advises on enforcement of patents, freedom to operate, due diligence, technology transfer and licensing. She is a regular speaker at various IP Fora and works on IP policy related issues as well.

Deepa does not represent either party to the dispute and her views are personal. She had written a guest post for us on the judgment pronounced by the Division Bench of the Delhi High Court on the same dispute earlier last year. Prashant’s post on the same judgment can be viewed here.

Excluding “Essentially Biological Processes”: Implications for Monsanto vs Nuziveedu

Dr. Deepa K. Tiku

Section 3(j) of the Indian Patents Act excludes plants, animals and “essentially biological processes” (for the production of plants and animals) from patent protection. The Delhi High Court relied significantly on European precedents to hold that Monsanto’s claimed invention covering the Bt gene construct and a process for preparing the transgenic Bt Cotton plant amounted to an “essentially biologically process”. However, a recent European development casts doubt on the earlier European precedent relied upon by the High court. As such, it is important to reflect on this and what implications it might have for the Supreme court appeal, where the matter is now pending. And a decision expected anytime soon. To appreciate this issue, some background is in order.

As I’d noted in a previous post in relation to the Delhi High court ruling:

“With due respect to the Learned Bench, I must say, I am disappointed with at least the fact that the final order was passed with a fleeting analysis of the science involved and interpretation of claims granted on the invention which made it possible for Indian farmers to grow cotton without getting attacked by the notorious Cotton Bollworm….

The order goes to the extent of stating that all processes involving plant biotechnology are eventually “essentially biological processes”. This in my view, is a dangerously erroneous understanding.

The Patents Act does not provide a definition for the terms “parts of plants or animals” or what constitutes an “essentially biological process”. Thus, since 2005, patent practitioners and patent examiners/controllers have relied upon commonly available dictionary definitions of these phrases or on the European Patent Convention (“EPC”) and the Directive 98/44/EC of the European Parliament (“Biotech Directive”) which also excludes these types of subject matters. Art. 2(2) of the Biotech Directive as well as Rule 26(5) of the EPC states that “a process for the production of plants or animals is essentially biological if it consists entirely of natural phenomenon such as crossing or selection”. Further Art. 4(1)(b) of the Biotech Directive precludes from patentability, essentially biological processes for the production of plants or animals. Art. 4(3) however clarifies that Art 4(1)(b) will be without prejudice to the patentability of inventions which concerns a microbiological or other technical process or a product obtained by means of such a process. Article 53(b) of the EPC echoes the same.

While the order applies the “Tomato” and the “Broccoli” decisions of the EPO Enlarged Board of Appeals to evaluate the meaning of “essentially biological processes”, it is important to know that these decisions pertained to patents on new varieties of tomato and broccoli produced using natural methods of crossing and breeding. Neither of these varieties were transgenic and therefore, no recombinant construct was introgressed to prepare these varieties with improved traits. Hence the reliance on these orders to assess whether Monsanto’s patent which covered Bt cotton recombinant nucleic acid and constructs, invented by Monsanto through wet lab biotechnology, appears misplaced to me.

It is also important to note that in Europe, transgenic plants and animals and biotechnological methods of producing them remain patentable. The consequence of the above decisions and subsequent amendment in the European Patent Rules is that plants and animals obtained by methods which include classical breeding steps (i.e., those which only result in a mixing of genes of the parental lines) are not patentable before the EPO.”

Several European decisions have clarified the scope of “essentially biological process”. However, there have been interesting twists and turns. In 2015, in the Tomato and Broccoli cases (G 2/12 and G 2/13), the EPO’s Enlarged Board of Appeals (EBA) held that, a plant or animal obtained by “classical” breeding means could in principle be patented if it involved a technical step, howsoever trivial, modifying the genome. This is an important point to appreciate, since unlike India which excludes all plants and animals from patentability, Europe only excludes plant and animal “varieties” produced by purely classic methods of crossing and selection from patent protection. Such varieties are anyway protected under a separate regime.

So far so good. Unfortunately, in a bid to reverse the findings of the EBA above, the EU Commission issued a notice in November 2016 stating that the legislative intent of the Biotech Directive was to exclude plants and plant parts (products) obtained by essentially biological processes from patentability. The EPO’s Administrative Council then amended Rules 27 and 28 of the EPC in 2017 to incorporate the Commission’s direction that the products of essentially biological processes (namely plants and animals) be excluded from patentability.

Relying on the Rules 27 and 28 EPC amendments of 2017, the Delhi High Court had observed “Thus, the exclusion of transgenic plants and seeds propagated after hybridization from patentability under section 3(j) of the Patents Act, 1970, is congruent with the amendment of Article 53(b) of the EPC, wherein, patents cannot be granted in respect of plants or animals exclusively obtained by means of essentially biological process. The conclusion that the court draws therefore, is that transgenic plants with the integrated Bt. Trait, produced by hybridization (that qualifies as an “essentially biological process” as concluded above) are excluded from patentability within the purview of section 3(j), and Monsanto cannot assert patent rights over the gene that has thus been integrated into the generations of transgenic plants”.

The above finding is replete with several flaws as I noted in my previous post and as even noted by another blogger from SpicyIP here. But even more importantly, the very reliance of the court on the European precedent (the amendments to the EPC by the Admin Council) is now misplaced, given that the EPO Technical Board of Appeals (TBA) just ruled that the amendments are without any force whatsoever. More specifically, the TBA held that the amendment to Rule 28(2) is in conflict with Article 53(b) as interpreted in the Tomato/Broccoli EBA decisions. According to Article 164(2) EPC, the Articles prevail and hence the amendment to Rule 28 is null and void. The full text of this decision is still awaited.

Since the Delhi High Court relied heavily on the EBA’s decision and the Rule 28(2) amendments of 2017, will the above reversal of the interpretation of “essentially biological processes” have any impact on the Supreme Court’s findings? Firstly, as I noted in my earlier post, the Delhi High Court conflated the issue of an “essentially biological process” involved in making new varieties of Tomato and Broccoli with that of a biochemical entity which effectively changed the whole genome of a Cotton plant. This by itself should be sufficient for the Supreme Court to overturn on this count. Further, the High Court’s suggestion to Monsanto to protect its variety under PPVFRA should also be easily questionable by the Supreme Court, since Monsanto does not own any such variety in the first place. And lastly, this latest development in Europe which reversed an earlier interpretation (that products of a patent exclusion (essentially biological processes) cannot also be patented) should suggest serious caution in importing the earlier European precedent.

As an unbiased observer of this big ticket patent battle, I can only hope that the apex court’s interpretation of the law does not spell the death knell for biotechnological innovations in India. If technology such as Bt cotton that effectively revolutionized farming, making millions of farmers better off, is not considered innovative enough to be patentable, it is hard to tell what else can be. One hopes that the apex court hands down a decision that balances out all these concerns appropriately.

We started 2019 with a bang-and quite a few interesting posts!

Thematic Highlight 

We had an enlightening guest post related to the Mosanto v. Nuziveedu case. In her post, the author notes that the Delhi HC had relied on a number of European precedents to conclude that Monsanto’s claimed invention covering the Bt gene construct and a process for preparing the transgenic Bt Cotton plant amounted to an “essentially biologically process” (which is excluded under Section 3(j) of the Patent Act). She notes, however, that a recent European development casts doubt on this particular interpretation.

Topical Highlight

Prashant wrote about the Uttarakhand HC’s “flight of fancy” in a recent judgment, where they held that Divya Pharmacy would be subject to  benefit sharing obligations under the Biological Diversity Act, as per which they would be required to make payments to the Uttarakhand State Biodiversity Board. The Court, in its judgment, noted the differential treatment meted out to Indian and foreign companies in this regard and concluded that it would be legally absurd to treat entities differently. Prashant, however, notes that such differential treatment is in accordance to India’s protectionist stance.

Other Posts

The yearly review of 2018 was co-authored by Rishabh and me, under the guidance of Prof. Basheer and Pankhuri. We listed out India’s top IP developments which have been covered on the blog. Our review has been divided into 3 sections: 1) Top Cases/Judgments Based on Topicality/Impact, 2) Top Cases/Judgments Based on Jurisprudence/Legal Lucidity and 3) Top Legislative, Policy-Related and Other Developments

Prof. Basheer wrote a brief and interesting post on the “Hakuna Matata” trademark controversy. The trademark is sought by Disney. In his post, Prof. Basheer deliberates on the allegations of cultural appropriation charged against Disney for the current ongoing controversy and previous instances. He further deliberates on the ability of the mark to be trademarked and the interplay between ethics and law.

Other Developments

Indian

News

• Bombay HC to decide if copyright can be claimed on traditional songs
• TI wins case against Malaysian firm
• Simmba Movie to carry a Disclaimer Clarifying Ownership of Trademark “Simba”, records Delhi HC
• Delhi HC grants interim injunction in case lodged by FMC Corp
• HC restrains Kent RO from using air purification company’s trademark

International

• Peru’s application on GI tag for Pisco accepted
• Judge rejects Ed Sheeran’s appeal of copyright lawsuit
• Japan Extends Its Copyright Protection to 70 Years
• Cartier lost a trademark battle over the word “love”
• Huawei files trademark for “3D CuteMoji” which may feature on the P30 series
• Supreme Court agrees to hear Trump administration’s effort to restrict vulgar trademarks

As some of you may have heard, the USPTO denied a trademark to Erik Brunetti’s “FUCT” line of apparel on grounds that the mark was immoral/scandalous! The Court of Appeals for the Federal Circuit (CAFC) ruled that the refusal was unconstitutional since it violated the constitutional guarantee of free speech. The US government appealed and the US Supreme Court just granted cert and will hear arguments soon.

As Dennis Crouch notes in Patently O:

“..the Federal Circuit sided with Brunetti — holding the statute unconstitutional as contrary to the Free Speech provision of the First Amendment.  In its decision, the court followed the Supreme Court’s lead in Matal v. Tam, 137 S. Ct. 1744 (2017). In Tam, the Supreme Court addressed disparaging marks — also prohibited under Section 2(a) — finding that the prohibition on registration to be contrary to free speech rights.  The Government then petitioned the Supreme Court to review the case, and the court has now granted certiorari with the direct question:

“Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.”

So we’re back to the IP vs “morality” issue again. And in this context, “free speech” as well. An issue of increasing importance to India, given that the Delhi high court once again endorsed the view that even corporations have the right to free speech (“commercial” speech) under the Constitution. This was a dispute pertaining to comparative advertising and alleged disparagement (Horlicks vs Complan).

But then again, as I asked in a previous post, should IP offices decide what is moral and what is immoral? Particularly IP offices in developing countries such as India which are strained for resources and struggle to get even regular IP registrability issues right. For an interesting discussion on these issues, see our previous posts here and here.  Prarthana’s post in particular takes you back to an exciting debate on this point between Justice Gautam Patel and Professor Josh Sarnoff (though largely limited to the issue of copyright and content censorship). And on that note, SpicyIP wishes all of its readers a wonderful new year.

ps: Image from here.

Artwork from Wikimedia Commons

The Ministry of Information and Broadcasting recently published a draft amendment to the Indian Cinematograph Act of 1952, with the stated aim of countering film piracy. The draft amendment, to Section 7(4) of the Cinematograph Act reads –

“Notwithstanding any law for the time being in force including any provision of the Copyright Act, 1957, any person who, during the exhibition of an audiovisual work, cinematographic in an exhibition facility used to exhibit cinematograph   films   or   audiovisual   recordings   and   without   the   written authorization of the copyright owner, uses any audiovisual recording device to knowingly make or transmit or attempt to make or transmit or abet the making or transmission of a copy or visual recording or sound recording embodying a cinematograph film or audiovisual recording or any part thereof or a copy of sound   recording   accompanying   such   cinematograph   film   or   audiovisual recording   or   any   part   thereof   during   subsistence   of  copyright   in   such cinematograph film or sound recording, shall be punishable with imprisonment not exceeding three years and shall also be liable to fine not exceeding Rs.10 Lakhs, or to a term of imprisonment for a term not exceeding three years or both.”

The Ministry has called for public comments on the draft amendment by February 2^nd. While film industry bodies have hailed the move as a necessary step to combat film piracy (expectedly), the terms of the amendment themselves are blunt and disproportionate, and stifle fair dealing provisions under the Copyright Act. In this post, I will break down the proposed amendment and explain why it ought to be opposed.

Section 7 of the Cinematograph Act prescribes the penalties for contravention of offences related to the Act. The draft amendment:

A. Uses non-obstante language to override any contrary terms of the Copyright Act.

B. Goes on to state that any person who:

1. in the course of the exhibition of any ‘audiovisual work, cinematographic’ (sic)
2. in an ‘exhibition facility’ and
3. without express permission from the copyright owner,

makes a recording of the film or of the sound recording in such film, shall be punished with:

1. imprisonment for a term not exceeding three years and liable to a fine not exceeding 10 lakhs, or merely imprisonment, or… both.

There are several issues with this draft amendment, least of all the shoddy drafting. The poor drafting is reflected in repetitive and redundant wording of the punishment proposed for the offence. (“shall be punishable with imprisonment not exceeding three years and shall also be liable to fine not exceeding Rs.10 Lakhs, or to a term of imprisonment for a term not exceeding three years or both”) and an incomplete sentence (“during the exhibition of an audiovisual work, cinematographic in an exhibition facility …”). Some terms in the draft amendment are also unclear and undefined. For example, the Cinematograph Act does not define an ‘exhibition facility’, although the section applies only to exhibitions of cinematographic films and their sound recordings in such facilities.

Further, there is no clear rationale for placing such a provision in the Cinematograph Act and overriding the Copyright Act, as the former is the law for the certification of films and does not concern the rights or entitlements of copyright holders, a subject squarely covered by the latter. In fact, the entire subject of film piracy is squarely one of infringement already covered under the Copyright Act.

The offence is broadly worded and captures the making of a copy of a film or its sound recording or any part thereof, which can also include making short clips of the movie on your phone, for any purpose, without an exception. By overriding the provisions of the Copyright Act, the amendment fails to consider the right of fair dealing which is available under the Copyright Act under Section 52, and which protects certain non-permissioned uses of copyrighted works, such as for personal use or criticism or review. This is a fundamental part of the balance that the Copyright Act seeks to achieve between protecting rights and increasing access to knowledge and cultural works, and the draft amendment under the Cinematograph Act flagrantly does away with any such balance, criminalising actions as benign as recording and sending a short clip of a film to a friend on WhatsApp.

Finally, the penalties proposed in the draft amendment are blunt and disproportionate. The draft amendment mandates up to three years in imprisonment with the possibility of an additional fine. As per its current drafting, there is no option where the offence may be punished with only a fine, either. This is a heavily disproportionate sanction for merely the act of creating a copy of a film or a part of a film, without making any finding of wide-scale abuse of rights at a commercial scale, which is what anti-piracy measures should actually aim to counter.

The Ministry of Information and Broadcasting is accepting public comments to the draft amendment until February 2, 2019. You can voice your opposition to this amendment by mailing the following email address:

jsfilms.inb@nic.in

Or sending submissions by post to:

Joint Secretary (Films), Ministry of Information and Broadcasting, Room No. 545, ‘A’ Wing, Shastri Bhawan, Dr Rajendra Prasad Road, New Delhi – 110001

 In a judgment delivered today, the Supreme Court set aside the judgment of a Division Bench of the Delhi High Court which had revoked Monsanto’s patent and remanded the matter to the trial court. The issue of patent validity remains open and has not been decided by the court, as has been wrongly reported by the media.

This litigation had kicked off in 2015 with Monsanto winning at the interim stage before the trial court followed by it losing grandly before the Division Bench and winning again before the Supreme Court. We have blogged about the case over here, here, here and here.

After a reportedly lengthy hearing running into many hours, the Supreme Court delivered a judgment that skirted all the patent law issues raised before it and kicked the matter back to the trial court for a judgment on the merits. According to the court, the Division Bench erred by going into complex issues of fact without the benefit of a trial. As I had mentioned in my earlier post, the reason the Division Bench decided the case without the benefit of parsing evidence through a trial was because both parties had consented to waiving their right to a trial. At the time, I was incredibly surprised by Monsanto’s decision to waive its right to trial in such a complicated case and I was wondering if the Division Bench had mis-understood the scope of Monsanto’s consent to waive trial. The Supreme Court appears to have bought Monsanto’s argument that this was in fact the case and that it had only consented to a waiver for a trial on patent infringement and not patent invalidity as construed by the Division Bench.

The relevant extract from the SC’s judgment is reproduced below:

The   plaintiffs   had   never   consented   to   a   summary adjudication regarding the validity of its patent.  The consent referred to by the Division Bench, had been given only to decide whether the plaintiffs’ patent had been infringed or not, as also the scope of the patent, so as to allow or disallow the   relief   of   injunction.     It   is   incomprehensible   that   the plaintiffs   holding   a   valid   registered   patent   under   the   Act nonetheless would have agreed to a summary consideration and   validation/invalidation   of   the   patent.

Simply put, the Supreme Court refused to believe that Monsanto could have taken the “incomprehensible” decision to waive its right to a trial in a patent invalidity proceeding. But I went back to the Division Bench’s order passed on May 8, 2017 on the last day of oral arguments and it is clear as day that Monsanto did consent to a hearing on merits:

During the course of hearing, with consent of the parties, the arguments with regard to the issue of patentability and applicability of Section 3(j) of the Patents Act, 1970 were heard finally.

If Monsanto had not consented to a waiver of trial on the invalidity issue, it should have approached the Division Bench asking for a correction of the order. That Monsanto did not take the step of filing an application before the Division Bench to rectify the order of May 8, 2017 is astonishing to say the least. The final judgment by the Division Bench was delivered on March 9, 2018 giving Monsanto almost 9 months to rectify the record.

But what is perhaps even more incomprehensible is the absurd argument that Monsanto successfully sold to the Supreme Court i.e. it wanted to waive its right of trial only in the patent infringement lawsuit and not in the patent invalidity counterclaim. (A counterclaim for patent invalidity and revocation is usually filed in response to a patent infringement lawsuit)

The fact of the matter is that when a court has to decide on the issue of patent infringement, the main defense available to the defendant under Section 107 of the Patents Act is to argue the grounds of invalidity under Section 64. So, if a court decides only an infringement lawsuit it can still decide that a patent is not infringed because it is not valid but technically it cannot revoke the patent unless it is hearing a counterclaim seeking revocation of the patent. I know it sounds silly but in order to revoke a patent, a prayer to that effect has to be made in a counterclaim or a revocation petition, after paying the necessary court fees. The failure to file a counterclaim by the defendant does not stop the court from coming to the conclusion that the patent has not been infringed because it is invalid under Section 107. Thus, even going by Monsanto’s half-baked defense, the Supreme Court should have over-ruled the Division Bench on the issue of revoking the patent while holding up the findings on the patent’s invalidity.

All three judgments rendered in this case so far by the trial court, the Division Bench and the Supreme Court have been a huge disappointment with judges committing massive blunders. Of all the three judgments, this one is the most distasteful.

We’re pleased to bring to you an interesting guest post by Dr. Sunanda Bharti. Dr. Sunanda is an Assistant Professor in Law at Delhi University. She has written a guest post for us in the past as well, which can be viewed here.

Is Braille a ‘Language’ Capable of Translation, Reproduction or Adaptation under Copyright Law?

Dr. Sunanda Bharti

It is ITC’s advertisement in which the leading health and hygiene brand, Savlon is shown introducing Braille enabled packs of Savlon Antiseptic Liquid that reignited my interest in Braille. The occasion was the World Sight Day (WSD), which is celebrated every year on the second Thursday of October to draw attention on blindness and vision impairment. WSD 2018 fell on 11^th October, 2018.

Though the news would prompt a legal mind to think about trademark law, it is copyright law that is the subject of this post. I would want the reader to think about the following questions and issues-

1) What is Braille for copyright law purposes? A ‘language’ or something else? If a literary work is converted to Braille, is it translation?

And further…

2) If a literary work is converted to Braille, can the nature of the activity be adaptation or reproduction?

Answer to question 1 – What is Braille? A language or something else? If a work is converted to Braille, is it translation?

Braille is not a language. It is a tactile reading and writing system used by blind and visually impaired people who cannot access print materials. It uses raised dots to represent the letters of the print alphabet. It also includes symbols to represent punctuation, mathematics and scientific characters, music, computer notation and foreign languages.

It is obvious that Braille is used to enable the visually challenged to review and study the written word—irrespective of the language in which the word might be originally written.

Understood thus, Braille becomes a universal code for all languages.

Now is where the matter becomes interesting. Since Braille is not a language, the word ‘translation’ cannot be used in its context (though the term is randomly and loosely used in respect of Braille). Translation is commonly understood as conversion of a work in a language other than the original one. One can only translate a language into another language.

To elaborate, if I, being the author and owner of a copyrighted literary work, want to convert my work into Braille, the output would not be a translation. For instance, if I write ‘aap kaise ho‘, which is essentially Hindi, using the Roman script (as mentioned), it still remains Hindi, not English–it is transliteration and not translation. In order for it to qualify as ‘translation’ in English, it should be worded as ‘How are you?’. In Braille, the exact same thing is reproduced using the six dots writing system–it qualifies as transliteration at the most, and not translation. Hence, technically speaking, if  someone else, say VillanX—to keep things interesting, unauthorisedly converts my work into Braille, section 14(a)(v) rights are not violated.

At this juncture, a look at section 14(a) of the Copyright Act, 1957 would come in handy. It states thus:

For the purposes of this Act, ‘copyright’ means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—

(a) in the case of a literary, dramatic or musical work, not being a computer programme,—

(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;

(ii) to issue copies of the work to the public not being copies already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi).

The act of converting my literary work into Braille may count under any of the boldened ones above. Translation has been ruled out above. Let me deal with the other two one by one.

Answer to question 2 – if a literary work is converted to Braille, what is the nature of the activity— adaptation, reproduction?

Does conversion of the stated literary work amount to adaptation under section 2(a)(v)? May be. The answer does not come easy, given the ambiguity in the expression ‘rearrangement or alteration’. If conversion of the work into Braille is taken as ‘rearrangement or alteration’ of the original work, the output may be taken as adaptation. And in such a scenario, the exclusive right to adapt my literary work into Braille would remain with me. Meaning, my section 14(a)(vi) rights would be violated by VillanX.

That brings me to the last query. Does producing such Braille version of my literary work amount to ‘reproducing the work in any material form’ under section 14(a)(i)?

Though I am inclined the most towards this answer, the difficulty does not get settled easily either. Because, in reproduction, whether one should remain true to the content or true to the expression, or both, is debatable. Conversion of my literary work into Braille is being true to the content but not expression, in the technical sense, because the copier (VillanX) would be copying the exact literary content, albeit not in the original language but into the six-dot Braille code/script.

Similarly, if reproduction is taken to mean making copies without change, conversion into Braille would not amount to reproduction by VillanX. He is safe.

Some Clue Towards Harmonious Interpretation given by ‘Accessible Format’

The new amendment in Section 52(1)zb uses the expression ‘accessible format’. It saves adaptation, reproduction, issue of copies or communication to the public of any work, in any accessible format, from being branded as infringement. This has been ensured in public interest.

This guarantees that when the VillanX produces a Braille version of my literary work to facilitate persons with disability to access the work for private or personal use, educational purpose or research, I cannot say that it’s infringement of my work.

The Explanation regarding ‘accessible format’ in Rule 77 of the Copyright Rules, 2013 for the first and perhaps the only time uses the word ‘Braille’. It states that the term ‘accessible format’ shall include Braille, Daisy, large print, talking books, digital formats and all other formats that can be used by persons with disabilities.

Section 52(1)(zb) also throws light on what Braille is, for the purposes of the Copyright Act, 1957. It is notable that the opening words of the sub-section state thus: ‘the adaptation, reproduction, issue of copies or communication to the public of any work in any accessible format, by—…

…omitted

…omitted

The above seems to suggest that the expressions, (i) adaptation, (ii) reproduction and (iii) communication to public can be used in respect of Braille as well (amongst other accessible formats). This means that when Braille version of copyrighted works are produced, either adaptation or reproduction takes place. This understanding generates some clarity on section 2(a)(v)–understanding that Braille does fit into the definition of adaptation as it seems to qualify as ‘use of any work involving its rearrangement or alteration’. It also offers clarity on section 14(a)(i)–understanding that Braille also fits into the scope of ‘reproduction’.

In conclusioni

It is strange that one talks of various rights under the Indian Copyright Law in favour of the disabled, including visually challenged. There are celebrated provisions introduced in the Indian Copyright Act, 1957 in 2012, such as (1) fair dealing exception for the disabled; and (2) compulsory license for making works accessible to the disabled. However, one hardly finds any literature on the exact scope of such rights in the context of Braille. As elaborated above, one can discern that even the most basic of expressions, such as translation, adaptation and reproduction become a subject of detailed (and hopefully engaging) study.

Image from here

We are pleased to announce that the Indian Journal of Law and Technology Blog is calling for articles from students and academics interested in the field of law and technology. For further details, please see the call for submissions below:

Call for Submissions to the Indian Journal of Law and Technology Blog

About IJLT

The Indian Journal of Law and Technology (IJLT) is a student-edited, peer-reviewed, completely open access law journal published annually by the National Law School of India University, Bangalore. The IJLT is the first and only law journal in India devoted exclusively to the study of the interface between law and technology.

The journal carries scholarship in the areas of intellectual property rights, internet governance, information communication technologies, access to medicines, privacy rights, digital freedoms, openness, telecommunications policy, media law, innovation etc. along with focusing on perspectives on contemporary issues involving the intersection of law, technology, industry and policy.

About IJLT Blog

The IJLT Blog is inviting blog articles, keeping in mind IJLT’s objective of spreading greater awareness on issues pertaining to Law and Technology. It is aimed at producing pieces which are not strictly scholarly, and make for an interesting read. While entries which have an interesting take on not-so-recent issues will also be accepted, entries pertaining to recent, innovative and cutting-edge issues will be given priority.

Submission Guidelines

Interested authors are requested to send their respective articles in .doc/.docx format on ijltblog@gmail.com. The scope of the articles should fall within the mandate of IJLT, which can be found on the IJLT website. Any references should be in the form of hyperlinks in the main body of the blog post. Footnotes may be used, but should be avoided as far as possible.

The submissions will be accepted on a rolling basis. 

The word limit for the article is set at 1000-1500 words.

An article can be co-authored by a maximum of two people.

Contact

If you have any queries, please feel free to post them on ijltblog@gmail.com or on +91 8197998480.

Some of you may be wondering as to what happened to the patent working PIL filed in 2015. As noted in the last post, the Delhi High Court had disposed of the petition in April last year, directing the Government to complete all steps towards effectuating necessary amendments to optimise the patent working provisions; and all to be completed within strict timelines. It also asked the Government to place a report before it upon completion of this exercise.

As per its undertaking, the Government had agreed to publish the amended version of Form 27 as approved by the competent authority (DIPP) on or before July 6 last year. However, it has not done so till date. Nor has it held any further consultation on the subject. The Petitioner (through his counsel) made repeated enquiries to the Patent Office on the status of this exercise, but never received a response.

All of this demonstrates a deliberate disregard for binding directions issued by the Court. More egregious is the fact that in the interim, the Government did see it fit to effectuate other proposed amendments to the Patent Rules. These draft amendments were published last month but they do not make any mention of Form 27 or patent working, despite clear directions from the Court.

Concerned with this blatant contempt of a court order, the Petitioner filed an application on 7^th January, bringing this deliberate delay to the notice of the court and seeking appropriate directions. The matter came up for hearing on 9^th January and the Court directed the Government to file a status report in 3 weeks’ time. The next date of hearing is 15^th February, when the Court will consider the said report.

The matter was argued by Sai Vinod on behalf of the Petitioner. Amit Mahajan represented the Government.

A copy of the application as filed by the Petitioner, can be viewed here and all our previous posts related to this matter, here. Once the order is available, we’ll upload a copy of that as well.

Thematic Highlight 

We had a guest post on the issue of whether Braille, as a language, is capable of translation, reproduction or adaptation. The author first analyses the nature of Braille and comes to the conclusion that it’s a universal code for all languages and hence, can only be transliterated and not translated. She then analyses whether the conversion of a literary work to Braille would constitute adaptation or reproduction under the Act. She also goes on to analyse whether the same would fall under ‘accessible formats’ under Section 52(1)(zb) and hence, not be counted as infringement. She concludes that there is a need to address the legal lacunae in the application of the Copyright Act to Braille.

Topical Highlight

Prashant wrote about the recent SC judgment where the Court set aside the Delhi HC’s judgement which had revoked Mosanto’s patent and remanded the matter to the trial court. The Supreme Court based its decision on the reasoning that Mosanto had only consented to a waiver for a trial on patent infringement and not patent invalidity, as concluded by the Division Bench. Prashant, in his post, however draws our attention to an order passed in 2017, from which we can conclude that Mosanto must have consented to a waiver of trial on the invalidity issue.

Divij wrote about a recent draft amendment to the Indian Cinematography Act which states that any person caught recording a film or its sound recording without permission from the copyright owner would be imprisoned for 3 years and/or pay a fine of Rs. 10 lakhs. In his post, Divij points out several issues in the draft amendment including its shoddy drafting and its dicey position vis-a-vis the Copyright Act, amongst other glaring flaws.

Other Posts

Pankhuri provided us an update on the Patent Working PIL. The Government had last agreed to publish the amended version of Form 27, as approved by the DIPP, on or before July 6 last year. It has still not done this till date. Also, the Government did not follow the Court’s directions and made no reference to Form 27 or patent working in its amendments to the Patent Rules, released last month. On 7th January, an application was filed by the Petitioner before the Court, drawing attention to this prolonged delay.

Prof. Basheer wrote a brief piece on the “FUCT” trademark issue. Recently the Court of Appeals for the Federal Circuit ruled that the USPTO’s refusal to grant trademark to the “FUCT” line of apparel on the grounds of immorality/scandalous subject matter was unconstitutional and against the principle of free speech. In his discussion of this recent development, Prof. Basheer raises a question (which he has done in a couple of posts previously too): Should IP offices decide what is moral and what is immoral?

SpicyIP Announcements

Pankhuri informed us about a call for submissions to the Indian Journal of Law and Technology Blog. They are calling for articles from students and academics who are interested in the field of law and technology.

Other Developments

Indian

Judgments

Meena Prints Private Limited v. Sri Sai Bhavani Handlook House and Other – Bombay High Court [January 3, 2019]

The Court granted a temporary injunction restraining the Defendant from using the marks “MEERA PRINTS” or “MEENA PRINTS” in infringing and passing off the Plaintiff’s identical/ deceptively similar mark in respect of textile goods. The final disposal of the case was set for 21 January 2019.

The Ritz Hotel Limited v. Canada Fly Consultancy & Others – Delhi District Court [January 3, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the word “RITZ” in its domain name in infringing and passing off the Plaintiff’s identical mark in respect of hospitality services. In arriving at the decision, the Court noted that the mark “RITZ” was registered in the Plaintiff’s name and by its long, extensive and continuous use, it had become inseparable and synonymous with the goods of the Plaintiff. Consequently, the Court expressed its apprehension that if the Defendant was permitted to use the mark, it would cause wrongful loss not only to the Plaintiff but also the public at large. The Court also considered it appropriate to grant punitive and compensatory damages to the tune of Rupees 1 lakh in light of the Plaintiff being unnecessarily dragged into litigation.

State v. Tribhuvan Sharma and Others – Delhi District Court [January 4, 2019]

The accused in this case were found in possession of 45 fake laptop batteries and 54 fake laptop adapters having a duplicate logo of “HP”, without any proper bill or purchase documents. The Court emphasized that it was a principle of criminal law that prosecution is supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. It was noted in the findings of the Court that one of the Prosecution Witness was not even able to clearly identify the accused persons in the Court, and that the police had failed at an honest attempt to join public witnesses during the raid. In light of these lapses, the Court noted that the Prosecution had failed to prove the case beyond doubt or that the accused persons were present at the shop at the time of the raid conducted by the police or that the goods were counterfeit in nature.

Levi Strauss & Co. v. Anto Mani Roy – Delhi District Court [January 4, 2019]

The Court granted a permanent injunction restraining the Defendant from using the mark “LEVI’S”, in infringing and passing off the Plaintiff’s identical mark “LEVI’S” in respect of readymade garments as well as allied and cognate goods. In arriving at this decision, the Court took cognizance of the fact that the Plaintiff was the registered proprietor of the mark “LEVI’S”. It was also stated by the Court that the Local Commissioner’s report on the seizure of infringing goods also pointed to goods carrying the logo and mark identical to that of the Plaintiff.

M/s. Super Cassettes Industries Private Limited v. M/s. CTV Cable Network – Delhi District Court [January 4, 2019]

The Court granted a permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted musical and audio visual works through its cable network namely, “CTV NEWS” without obtaining any license. In arriving at this decision, the Court stated that continuous infringement by the Defendant had caused substantial loss and damage to the Plaintiff’s business which was predominantly dependent on license income. The Court in pursuance of the aforementioned awarded punitive damages of Rupees 15 lakhs in favour of the Plaintiff.

State v. Aakash Gupta – Delhi District Court [January 8, 2019]

The case against the accused was that he was found in unauthorized possession of articles pertaining to the brands of M/s. Hindustan Unilever Limited (“HUL”), for which he had no license or authority under the Copyright Act. The Court recorded that it was a principle of criminal law that prosecution was supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. In the present case, the Court noted that the Prosecution could not prove that the Protector was an authorized representative of HUL or that HUL had registered copyrights in the seized articles. Further, it was also noted that the Prosecution’s witnesses had given contradictory testimonies and due to patent contradictions in the Prosecution’s case, the benefit of doubt had to be extended in favour of the accused. Thus, the accused was acquitted of the charges against him.

Roderick John Andrew Mackenzie v. Himalayan Heli Services Private Limited – Delhi High Court [January 8, 2019]

The dispute between the Parties arose on account of the alleged use by the Defendant of the Plaintiff’s copyright in his artistic work “HIMLAYAN HELI SERVICES”. The Court first decided the issue of whether the Plaintiff had a copyright in his artistic work. It was noted by the Court in this respect that the Plaintiff had merely contributed to an aspect of the artistic work whereas the copyright in a work would exist only for the composite mark. Accordingly, the Court stated that none of the Parties had copyright in the artistic work. The Court also noted in an answer to another issue that the Plaintiff was guilty of suppressing material facts in relation to the artistic work. In order to arrive at this conclusion, the Court stated that the Plaintiff had suppressed the fact that it was acting in association with the Defendant in creating and using the artistic work while conducting a joint business. Subsequently, it was noted by the Court that there could be no case for permanent injunction in favour of the Plaintiff as there was no copyright in the Plaintiff’s artistic work.

Needle Industries (India) Private Limited and Another v. Virmual Praveen Kumar – Delhi High Court [January 8, 2019]

The Court granted a permanent injunction restraining the Respondent from using the mark “555” in infringing and passing off the Appellant’s identical mark in respect of haberdashery goods. In the previous suit, the Respondent had conceded the issue pertaining to ownership of the mark in favour of the Appellant. The Court thus cited the previous suit and held that the Appellant being the owner of the mark “555” had the exclusive right to use it in respect of goods.

HSIL Limited v. Gujarat Ceramic Industries & Another – Delhi High Court [January 8, 2019]

The Court granted an ex parte permanent injunction restraining the Defendants from using the marks “HINDUSTAN VITREOUS” or “H VITREOUS” in infringing and passing off the Plaintiff’s identical/ deceptively similar marks in respect of sanitary ware products. In arriving at this conclusion, the Court noted that the Plaintiff was the registered proprietor of the mark. Further, the Court noted that the Defendants had no real prospect of defending the claim as the evidence of the Plaintiff was unrebutted.

News

• Bizman held for using Jawed Habib’s trademarks, produced before Bombay High Court
• Internet service providers must not air Viswasam: Madras high court
• Rajinikanth begins trademark registration for TV Channel

International

• TPP Copyright Laws Come Into Effect in Japan, Allows Breaches to Be Charged Without Initiation From Rights Holder
• News Media Pushing Back on Google Opposition to EU Copyright Changes
• Photographer Sues Georgia GOP, Kemp Campaign for Copyright Infringement
• Netflix faces trademark suit over Black Mirror: Bandersnatch
• Foreign companies file record number of patent applications in China

Monsanto’s fight against Nuziveedu and other seed companies over BT Cotton (that Prashant recently blogged about) will rate as one of the toughest patent battles ever. Not just patents, but involving a whole host of other laws including:

i) Contract law (given that licensing contracts between Monsanto and some of the seed companies such as Nuziveedu were terminated)

ii) Constitutional law (Monsanto’s challenge to cotton price control orders issued by govt)

iii) Arbitration law (given that there are countless arbitration proceedings pending before various fora for recovery of moneys under the licensing contracts)

iv) Competition law, given a competition complaint that is pending against Monsanto

v) Tort law/Regulatory law issues: For alleged resistance to the pink bollworm (paradoxical though for seed companies to rely on this ground, and at the same time insist on using the patented technology!)

vi) Other areas of IP law such as Plant Variety Protection (which I personally think shouldn’t apply at all to this particular dispute), and Trademark law.

Little wonder then that the biggest beneficiaries of this dispute so far have been the lawyers. On both sides of the business and ideological spectrum (given that there are a number of intervenors now too). And their cash registers will continue to ring even as the matter was shunted from the Supreme court to the trial court. Just to be clear (given all the “spin” associated with this case): In its recent decision, the Supreme Court restored the patent that had been invalidated by the Delhi high court. Which means that the patent is now in force and can be enforced. However, this is not to say that the Supreme Court held the patent to be “valid”. Rather, it carefully held that this determination would require a full fledged trial and therefore remanded it back to the Delhi high court.

As I argue in a piece for the Hindustan Times, we now await the trial court determination on patentability. But one can be sure that whichever way the trial court holds, the matter will find its way back to the Supreme Court. So, to recap a theme that found resonance in our latest IDIA conference on “Law & Story Telling”, showcasing keynote addresses from the ever insightful Justice Chandrachud and Javed Akthar (a master story teller, who single handedly changed our copyright scheme to foster social justice): “Story Abhi Baki Hai Mere Dost”! (translation: “The Story Is Still Not Over, My Friend”).

Anyway, for those interested, here is a decoding of the ruling, in language that I hope will clarify rather than confuse. This was published in the Hindustan Times. The full piece can be found here. Some excerpts below:

“After hearing extensive arguments from a battery of counsels, the SC finally ruled that the division bench ought not to have summarily invalidated the patent without the benefit of a full-fledged trial.

This, in effect, is the crux of the SC ruling. That, unless the scope of an invention was assessed through elaborate evidence/witnesses, courts could not be expected to make a meaningful ruling on patent validity. The division bench apparently did this in a summary manner owing to an alleged concession from Monsanto. However, in the SC, Monsanto contested this, stating that it had not waived its right to a full trial on this issue. The SC agreed with Monsanto, since it was self- evident that no patentee would ever waive such a valuable right. However, for future purposes, in order to reduce the scope for such confusion, courts must video record all proceedings so that submissions by parties are accurately captured and can be replayed in case of a doubt.

The SC also endorsed the initial single-judge order in this dispute: that seed companies, whose licences were terminated for non-payment, could use Monsanto’s patented technology, but only upon payment of royalties/trait fees as fixed by the government under the CSPCO.

So what now? The trial court is faced with the enviable task of deciding an extremely complex patent dispute and, in particular, the metes and bounds of section 3(j), a statutory provision that excludes plants and plant parts from patent eligibility.

Delightfully crisp and lucid, the SC ruling zeroes in on the key issue: whether or not the man-made genetic construct as patented by Monsanto amounts to a “plant” or “plant part”? This issue will, in turn, hinge in significant part on whether or not the process of inserting the genetic construct is a reversible one. While seed companies argue that the process is irreversible, Monsanto contends otherwise.

…One is not certain how long the trial court will take to issue its decision. But whichever way this goes, one can be certain that the matter will find its way back to the SC. At this stage, one hopes that the judges will sink their teeth right in and proffer a patent interpretation that bodes well for the future of innovation, food and farmers.”

ps: Image from here.

We’re pleased to bring to you a guest post by Siddharth Sonkar. Siddharth is a 4th year student at NUJS, Kolkata.

Does Sui Generis Protection of Unoriginal Databases Reconcile Access and Incentive to Actualise Public Good?

Siddharth Sonkar

Recently, theft of databases, especially in the Business Processing Outsourcing (BPO) sector in India has reportedly become endemic, ushering the database industry towards a market failure. Database industry in India loosely comprises companies which generate databases relating to banking and finance stock markets, travel, ticketing or legal information. These companies commercially exploit databases containing information relating inter alia to names, addresses, credit ratings and incomes. Databases are compilations or collections of information or records organised in order to be easily accessed or retrieved.

Is Sui Generis Protection Desirable for India?: an Industry Perspective

Professor Anirban Mazumdar in his book entitled ‘Database Law: Perspectives from India’ points out that databases which are not original in nature also require protection in order to continue to exist in the market. A questionnaire was prepared and circulated amongst database stakeholders such as Microsoft, Eastern Book Company, Adobe and Google. The responses led to the conclusion that databases require updates every three months due to the proliferation of information from changes and discoveries. The responses led to the conclusion that the absence of sui generis protection in India neglects the effort expended in updating existing databases, discouraging people from contributing by updating existing databases. Mr. Apar Gupta makes a similar case in his work. In fact, as early as in 2003, a WIPO expert report assessing the need for sui generis protection of databases in India highlighted that 80% of Indian databases emanate from the government domains, meaning private players in the industry contribute to only 20% of databases today. The dearth of private participation in the creation of databases could be attributable to the absence of sui generis protection of databases in India.  The WIPO expert report suggested the adoption of sui generis protection of databases in order to harness the full potential of the Indian database market. The report deemed commercialisation of data, especially in the fields of remote sensing, genomic and bioinformatics, through sui generis protection desirable for India.

While an updated database may not necessarily meet the standard of originality for non-original databases in India (discussed a bit later in this post), the investment made in updating databases does require some protection. This is because updating a database is often done with the intention of maximising profits. An example of an investment incurred in updating a database is the transaction costs associated with data collection through street-by-street service or phone service formatted by data entry operators so as to make the updated information easily accessible to clients. These databases will be produced with the intention of maximizing profits. In case of most compilations of factual data, especially in situations where information is predictably organised, databases fail to meet the prerequisite of originality, resulting in their prejudice from protection.

Need for a Holistic Assessment to Accommodate Third World Concerns

Professor Indranath Gupta in his work entitled ‘India’s Participatory Role in the Database Debate at WIPO’ highlights the criticism of the WIPO report on two grounds: First, since at the time of the report, there was no credible data available in writing, the methodology was mostly based on the perspectives of key personnel in the industry. Second, the report does not clearly address third-word concerns, especially of the academic and scientific communities, with allowing monopoly over unoriginal databases, which could possibly reduce access to databases. He also highlights how the delegation of India has time and again reflected ambivalence in adopting sui generis protection of unoriginal databases, citing the absence of evidence needed to arrive at any consensus in this respect.

In order to corroborate the commonly held perception in favour of sui generis protection, there is a need to conduct a more inclusive empirical study to assess the feasibility of the existing regime within the Indian context, involving stakeholders from inter alia the scientific and academic communities as well in order to achieve a holistic view. Such an evaluation should also observe the relationship between private participation in the database industry and access to information, to see whether there exists a need to better synchronise with the object of copyright law, i.e., to facilitate learning.

Surprisingly, in a span of more than 15 years since the expert report, while a lot has been written in this respect, no such study has been conducted to this effect.

Existing Legal Framework Surrounding Databases in India

I shall now explain the existing Indian framework accommodating protection of databases stemming from the Copyright Act, 1957, Information Technology Act, 2000 the upcoming Personal Data Protection Bill. I also explain the fuzzy distinction between database protection and personal data protection, which indicates how information technology law in India, even after the enactment of the Bill, will only afford protection to databases containing personal information.

Information Technology Law

Rule 6 of the Information Technology (Reasonable Security Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011 imposes a restriction on accessing data without the prior permission of the information provider.  Apart from the SPDI Rules, Section 43 of the Information Technology (‘IT’) Act, 2000 attributes liability on any person who copies or extracts any computer database.

The proposed Data Protection Bill (‘PDPB’) offers protection only against unauthorised processing (collection or use) of personally identifiable information (PII). An example of PII would be a database containing financial information relating to individuals. An example of information that is not PII would be, say, flight schedules. This means that if a database owner creates a database containing information other than that which is personally identifiable, the PDPB (if enacted) will not offer any protection against unauthorised processing (collection or use) of such data. The law will have to fall back upon section 43 of the IT Act under such circumstances. However, when the database would contain PII, the data protection law would require anyone wishing to use that information to follow the principles of data protection enshrined in the PDPB (if enacted), failing which the unauthorised user would invite sanction under the  data protection law.

Copyright Law

The Copyright Act, 1957, defines literary work to encompass computer programmes, tables and compilations including computer literary databases. Original literary work is copyrightable based on section 13(1)(a) of the Act. The creation of databases is preceded predominantly by intellectual labour and effort. In order to qualify for protection, the subject matter must reflect originality in the selection or arrangement of the contents in the database. The protection afforded to a compilation or database is limited to its selection and arrangement and not the database as a whole. This is to ensure that information in the public domain is not monopolised by database creators as a result of copyright protection; such monopoly could result in shrinkage of information in the public domain, which in turn would undermine public good derived from access to information.

Standard of Originality in Databases

Though the standard of originality for literary works is low, the threshold for compilations and databases is higher since creativity often becomes a component in determining originality. While most other works easily qualify the test of originality, in case of databases, the determination of originality is often crucial in determining the copyright-ability of the work since facts cannot be created but only discovered. Different jurisdictions use different standards to evaluate originality in databases.

In Feist Publications v. Rural Telephone, the SCOTUS observed that since databases are derivative works, beyond skill and labour, there is a need to ensure that there exists ‘minimum degree of creativity’ in order to claim originality.  In Canada, on the other hand, the Supreme Court added another dimension to the concept of originality in CCH Canadian Ltd. Here, the Court held that originality should result from skill and labour that is not mechanical or negligible involving individual skill and judgement.

In Eastern Book Company, the Supreme Court of India held that head-notes of judgements in electronic form constitute derivative literary work. The sweat-of-the-brow and Feist doctrines were rejected. The Court came up with its own unique Indo-Canadian test of skill and judgement which contained a tinge of creativity.  The Court further acknowledged that when a compilation is created from original work, it is more than a mere rearrangement of the original work often involving skill, labour, judgement or capital. An original derivative work in the form of a database or compilation could result from a unique selection and arrangement of pre-existing material if skill, labour and capital are used in its creation. Copyright protection has been given to compilation of information on satisfying these criteria.

Due to the Eastern Book Company, non-original databases in India do not receive protection. This results in free-riding of collated information by merely changing its selection and arrangement, a dis-incentive for database owners to put in strenuous labour in updating existing databases, antithetical to the sweat of the brow doctrine.

Sui Generis Protection of Non-Original Databases in the European Union

Realising the anomaly in only protecting original databases, the Directive 96/6/EC adopted by the European Union (EU) offers two-tiered protection to databases: First, it offers copyright protection to original databases. Second, it offers sui generis protection to non-original databases. A non-original database receives protection if a substantial investment is made in obtaining, verifying and presenting its contents. The term ‘substantial investment’ is not defined in the Directive but would have to be assessed in terms of successive alterations, additions or deletions.

The Directive allows the creator an exclusive right to preclude the extraction (or scraping) of or any part of the database. The Database Directive protects against copying of the database but not the use of information or data that may be gathered in the database. The rationale is to prevent the misappropriation of the financial and professional investment made in collecting contents of databases to safeguard the interests of database makers. While the Directive has received some criticism for failing to be upheld by sufficient fair dealing exceptions, the Directive has triggered strong demands from the database industry for similar regimes in other jurisdictions.

Conclusion

It would be prudent for India to deliberate upon the desirability of a new database law which offers a sui generis right to creators of non-original databases. The first step, therefore, is to empirically assess the qualms of diverse range of stakeholders in relation to sui generis protection. The object of copyright law is to facilitate learning by balancing access to information and incentive to make information available in the first place. A sui generis database law could, therefore, balance the competing interests by carving out the sui generis right in a manner that prevents monopolisation of  information. This could also be done in two ways: 1) by precluding keeping the duration of protection as 5-10 years, after which the information would seep into the public domain; 2) by safeguarding fair use of these databases by inter alia allowing educational and scientific institutions to access these databases.

Image from here

We’re pleased to bring to you an insightful guest post by Roshan John, examining the amendments proposed by the recently published Draft Patent (Amendment) Rules, 2018 in light of the India’s recent agreement with Japan on having a patent prosecution highway program. Roshan works as a Trade and IP analyst for Access Campaign of Médecins Sans Frontières.

DIPP’s Proposed Patent Rules Amendment to Legitimize India-Japan Patent Prosecution Highway

Roshan John

The Department of Industrial Policy and Promotion (DIPP) had recently notified “Draft Rules” to further amend the Patent Rules, 2003. The Draft Rules seek to (a) expand the list of applicants who can apply for an expedited examination of the application and (b) amend the rules of procedure of pre-grant opposition. The Patent Rules details the procedure to be followed while implementing the provisions of the Patents Act, 1970 and guides the Indian Patent Office (IPO) in considering the applications made under the Act. Being a comparatively easier process than legislative amendments, the Rules are often amended (seven times so far) to validate the policies of the Government.

Expedited Examination of Application

More recently, in 2016, the Patent Rules were amended to introduce a procedure relating to expedited examination of the application—a process aimed at fast track disposal of patent applications. It cuts down the time taken to examine a patent application and issue a first examination report, which in turn expedites the entire process. Presently, a request for this service can only be raised if any of the two following grounds are satisfied:

1. That India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
2. That the applicant is a startup.

These provisions were considered as the Government’s attempt to popularize India as a patent filing hub, and provide a strong ecosystem conducive to the growth of start-ups. The proposed Draft Rules further seek to expand this list to the following categories of applicants:

1. Small entities;
2. Female applicants, in case of natural persons;
3. Government undertaking;
4. Applicants eligible for an arrangement for processing an international application pursuant to an agreement between IPO with another participating patent office

It is evident that the DIPP has expanded the list of applicants who can file for expedited examination so as to reduce the pendency of the patent applications at the IPO and cut down the time for grant of patent. However, the proposed amendment, specifically the inclusion of the last category of applicants is deeply concerning as this looks like a step towards harmonizing patent examination globally. It is critical that the amendments be seen in the light of India’s recent agreement with Japan on having a patent prosecution highway (PPH) program, which is nothing but a hasty policy decision.

Patent Prosecution Highway Program

PPH are administrative collaborations that fast track patent applications in one country, based on the grant of patent in the other country, by taking advantage of the search and examination results of the office of first filing. The PPH may seem like a relatively easy and efficient way to accelerate patent examination and issuance, but the process shall squeeze the TRIPS flexibilities available to countries to tailor substantive patent laws according to local needs. Though the Draft Rules don’t explicitly mention PPH, but they suggest providing a legal framework and expansion of PPH to all forms of technology, including pharmaceuticals.

The amendment is clearly a result of 1^st JPO-DIPP Review Meeting, where the JPO had encouraged India to expand the grounds for requesting expedited examination of a patent application. This agreement, held without discussion with lawmakers and concerned stakeholders, provides a leeway to pursue substantive harmonization of patent examination standards. Moreover, this agreement comes amidst strong criticism from developing countries to a WIPO attempt to achieve this harmonization. Thus, at present, there is currently no international agreement in force that obligates India to harmonize patentability criteria, examination standards, procedures, and decisions.

Developed countries like Japan, United States, and European Union backed by multinational pharmaceutical corporations are effectively using joint PPH program to adjust the patent system and examination standards in developing countries like India, which remains a concern for the rest of the world. It is important to understand that India-Japan PPH will not be restricted between these two countries. This will lead to an implied agreement for fast track examination from pharmaceutical corporations from other countries including the United States which is aggressively pursuing an IP enforcement agenda without consideration on the negative impact on generic competition and access to medicines. It should be borne in mind that within its existing framework, the India-Japan PPH program fails to take into consideration, particularly the role India plays as a key producer of generic medicines, as well as the greater need of least developed members to increase access to affordable medicines.

The proposed amendment proposes for a quick out of turn examination of patent applications, which can only be made possible by sharing search and examination results, having combined examiner training etc. In the context of medicines, training to patent examiners supported by developed countries such as Japan rarely emphasize on a stricter patentability criteria. More importantly, the fast track examinations shall most likely miss the extra-layer of scrutiny provided by pre-grant oppositions as the opponents will find it difficult to oppose an application in such a short period. Although the amendment has a rider that the patentability of the applications filed on the basis of such an agreement will be in accordance with the Act, but the assurance is not enough, especially at a time when India is granting patents like never before. India being a developing country and a key producer of generic medicines, PPH fails to ensure its needs for access to affordable medicines.

Call for Action

The Rules framed under the Patents Act can have a positive or negative impact on access to medicines, public health and the right to health of people. Several countries, more often the developing ones, change policies because of continued pressure, biased technical assistance from developed countries, and free trade agreements with TRIPS Plus IP standards. The IPO has been focusing on granting patents expeditiously resulting in a 50 percent hike in patents granted in 2017 than it did in the previous year. The increased reliance on foreign patent offices like Japan would only increase the quantity of patents by disregarding quality of patents completely. A recent study revealed that 72 percent of granted patents for pharmaceuticals are granted to unmerited inventions—marginal improvements over previously known drugs for which primary patents exist. Keeping this in mind, the IPO should steer its focus towards granting quality patents than on the quantity. Thus, India’s specific practices and public health safeguards in patent law and rules should not be diluted in view of the different development and health needs of the country.

MSF Access Campaign and Lawyers Collective have submitted a response to this Draft Rules, which can be accessed here.

Image from here

In an order passed a few days ago, the Delhi High Court issued an injunction against Zee Media from using Rajat Sharma’s name in all its print and electronic advertisements. It further directed the defendants to remove all hoardings across the country which mention Mr. Sharma’s name.

Here’s a brief background of the case at hand. For promoting its new channel, Zee Hindustan, the defendants had published the following advertisement on January 9, 2019 in the front page of the HIndustan Times:

In the guise of introducing the “anchor-less” news channel Zee Hindustan, the advertisement clearly takes digs at famous TV journalists Arnab Goswami, Anjana Om Kashyap and Rajat Sharma. By implication, it states that viewers will no longer watch Mr.Goswami’s (in)famous debates or browse through Mrs. Kashyap’s news channel Aaj Tak (renamed condescendingly as “Kal Tak”).  In particular, it makes a reference to Rajat Sharma, the Chairman and Editor-in-Chief of IndiaTV and insinuates that people will no longer watch his popular, long-running show, “Aap Ki Adalat“. (interestingly, Mr. Sharma’s show had previously featured on Zee TV and Star Plus before being featured on India TV! Bad blood, anyone?)

These advertisements spurred Mr. Sharma to file a suit for permanent injunction against Zee Media. The Court relied on the famous Titan Industries and the Shivaji Rao Gaikwad (covered on the blog here) cases to reiterate well-known principles of personality rights aka right of publicity of celebrities. It came to the conclusion that the above advertisement was prima facie illegal and that the balance of convenience was in the favour of plaintiff.

Simply put, personality rights are identity rights of famous individuals i.e., people whose identities have acquired a sort of brand value. These rights, originating from privacy rights of individuals, allow them to control when, where and how their identities are used.

Though the Court relied on the Titan Industries case, it is surprising that they did not apply the famous test for determining liability for infringement of right of the publicity laid out in this case, which is as follows (and which was later cited in the Shivaji Rao Gaikwad case too):

“Validity: The plaintiff owns an enforceable right in the identity or persona of a human being.

Identifiability: The Celebrity must be identifiable from defendant‟s unauthorized use Infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The right of publicity extends beyond the traditional limits of false advertising laws.“

On applying each of the criteria, we see that the plaintiff, Mr. Sharma, indeed had an enforceable right in his public persona/identity as a famous TV show host. Further, Mr Sharma could be clearly identified in the advertisement since there was a clear reference to his well-known TV show. The fact that the advertisement was disparaging in nature does not make a difference here since personality rights account for all sorts of unauthorised usages of indicia of identities of famous individuals.

All in all, it can be concluded that the decision of the Court is correct in principle. A bit more analysis about this evolving field of IP would have been appreciated, though.

Images from here and here

The Indian Performing Right Society (IPRS) has been readmitted to International Confederation of Societies of Authors and Composers (Cisac) as an associate member, after spending two years in exile. The readmission comes after a string of reforms carried out within IPRS, that that bring it in compliance with Cisac rules and best practices.

Cisac is a non-governmental, not-for-profit organisation, and is the world’s leading network of authors’ societies, with 239 members in 122 countries. It represents more than four million artists (from diverse fields such as music, audio-visual, drama, literature and visual arts) to protect their rights and promote their interests worldwide.

In 2016, IPRS had been expelled from Cisac after a compliance review had found a lack of compliance with Cisac rules. However, the expulsion has now been reversed, after Cisac’s board and general assembly found that significant reforms within IPRS have made it compliant with the Cisac rules. These reforms have been aided by Cisac, and include changes in corporate governance, transparency, licensing, collections and distribution of royalties.

Going forward, Cisac has also agreed to offer specialised support to aid further reformation within IPRS through its comprehensive Development Review. The reincarnation of IPRS has also been boosted by the Government of India’s support, along with its recent reregistration under the Indian Copyright Act. IPRS Chairman Javed Akhtar acknowledges the same in his statement:

“This homecoming is the occasion to acknowledge the decisive support received from the Government of India when all hope was lost as well as the unsparing assistance from and support of CISAC towards transparency and a compliant IPRS, for which the creative community will be forever grateful. Now we must look to the future. I want to assure all those who entrust their copyrights to the ‘new IPRS’, of our determination to become in the shortest possible time, a world-class Society, accurately tracking and monetizing all usage of their musical works in the country.”

Image from here.

Topical Highlight

Prof. Basheer wrote a post on the Monsanto decision that was recently passed by the Supreme Court. In his post, he highlights the magnitude of the litigation that has taken place and the different areas of law that must be considered. He also notes that much is yet to come from the dispute since the Delhi High Court will now conduct a trial over the patentability of the technology, which he suspects will also be a decision that will be challenged before the Supreme Court.

Thematic Highlight

Prarthana wrote a post on a recent order passed by the Delhi High Court in Rajat Sharma v Zee Media. The order imposes an injunction against Zee Media from using Rajat Sharma’s name in all its print and electronic advertisements, following its use in a malicious advertisement campaign by Zee. Prarthana notes that the court soundly relied on established precedent in reaching its decision, although the judgment was wanting of deeper discussion on this area of law.

Other Posts

In a guest post, Roshan John analyses the amendments proposed by the recently published Draft Patent (Amendment) Rules, 2018 in light of India’s recent agreement with Japan on having a patent prosecution highway program. He notes that this amendment will impact access to medicines, public health and the right to health of people, and the increased reliance on foreign patent offices like Japan would increase the number of patents by disregarding the quality of patents completely.

I wrote a post on IPRS’ recent readmission into Cisac, a global advocacy body for the rights of performers. IPRS had been removed in 2016 following violations of Cisac rules but has since become compliant after going through Cisac aided reformation.

Other Developments

Indian

Judgments

Nike Innovate CV v. Hina Imported Shoes (Settled) – Delhi High Court [January 7, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “NIKE” in infringing and passing of the Plaintiff’s identical mark in respect of readymade garments, sporting goods and other allied products. The Court noted that the Plaintiff was the registered user of the mark and the mark had subsequently acquired distinct features in light of its prevalent use. Moreover, the inspection of the Local Commissioner also indicated that the goods of the Defendant were deceptively similar to those of the Plaintiff.

North Face Apparel Corporation v. Mohammad Nasim – Delhi District Court [January 10, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark or copyright in the phrase “THE NORTH FACE” through its use in respect of the Defendant’s readymade garments, clothing, footwear and other allied and cognate goods. In arriving at the decision, the Court noted that the Plaintiff was the registered proprietor of its marks and the impugned marks adopted by the Defendant were structurally, visually and phonetically similar to those of the Plaintiff, thereby causing not only confusion among the public but also the loss of reputation and goodwill to the Plaintiff. Additionally, the Court awarded punitive damages of Rupees 1 lakh in favour of the Plaintiff due to the loss caused to their goodwill and reputation.

The Nalgonda Rangareddy District Milk Producers Mutually Aided Cooperative Union Limited v. Mother Dairy Fruit and Vegetable Private Limited – Delhi High Court [January 10, 2019]

The dispute between the Parties arose on the use of the mark “MOTHER DAIRY” after the termination of a collaboration agreement between them. The Appellant could only use the Respondent’s mark “MOTHER DAIRY” in terms of the Settlement Agreement between the Parties after the termination of the aforementioned collaboration agreement. However, the Appellant continued the use of the mark even after the termination of the Settlement Agreement between the Parties. In view of the same, the Respondent filed a suit claiming infringement of its registered trademark. The Single Judge granted an injunction against the Appellant by restraining it from using the aforementioned mark in any form. The Court set aside this injunction of the Single Judge and stated that the Settlement Agreement specifically permitted the Appellant to use the mark “MOTHER DAIRY” in respect of its goods. Accordingly, the Court found it just to hold that the rights of the Parties would be governed by the Settlement Agreement until the final adjudication of the suit.

Hugo Boss Trade Mark Management GmbH and Company v. Ms. Sheetal Sabharwal – Delhi High Court [January 11, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered marks “HUGO BOSS”, “BOSS” and other “BOSS” formative marks by using a deceptively similar mark “BOSS BIG BOSS” in respect of apparel, garments and other allied and cognate goods. The Court observed that the Defendant had no real prospect to defend the claim as the mark was registered in favour of the Plaintiff and its use by the Defendant would inevitably infringe upon the Plaintiff’s reputation and goodwill.

Shriram Pistons and Rings Limited v. Owner/ Proprietor – Delhi District Court [January 15, 2019]

The Court granted a permanent injunction restraining the Defendant from using the marks “SHRIRAM” or “USHA” in infringing and passing of the Plaintiff’s identical marks in respect of engine components like pistons, valves, and other allied and cognate goods. In arriving at this decision, the Court noted that the Plaintiff was the registered owner of the marks. Moreover, the presence of counterfeit products bearing the Plaintiff’s marks in the Defendant’s possession, as recorded by the Local Commissioner was also considered by the Court. Accordingly, the Court stated that the Defendant had caused substantial loss and damage to the Plaintiff on account of continuous infringement of its marks. In light of the aforementioned, the Court granted damages to the tune of Rupees 2 lakhs in favour of the Plaintiff for the loss caused to its business.

News

• Bombay HC Imposes 25 Lakhs Costs For Preventing Court Inspection in Copyright Infringement Matter
• India doing well in digital IPR: WIPO chief
• Amul sends legal notice to Google India for displaying fake and fraudulent websites
• Bombay High Court just put Chandamama magazine up for sale

International

• German court throws out Qualcomm’s latest patent case against Apple
• Suven Life secures product patents in Australia, Singapore

We’re pleased to inform you that ITechLaw is organising the 15^th ITechLaw 2019 International India Conference from January 30, 2019 to February 1, 2019 at the JW Marriott in Bangalore. For further details, please read the announcement below:

15th ITechLaw 2018 International India Conference (January 30 – February 1, 2019, Bangalore)

The 15^th ITechLaw 2018 International India Conference organised by ITechLaw is coming again to Bangalore. The conference will be held from January 30 to February 1, 2019 at the JW Marriott, Bangalore. The conference begins with a special CyberSpaceCamp® for lawyers with 0-3 years of experience in technology law. Participants at this event at Nishith Desai Associates receive very discounted prices to attend the full conference (view more details here).

About This Year’s Conference

The conference theme is Re-Imagining Tech Regulations for the Digital Economy. The agenda is planned by the local planning committee with inputs from both in-house and private practice lawyers to cover hot topics in technology law today.  The conference will feature more than 60 expert speakers who will share their ideas and thoughts on the latest technological and legal trends. Some of the sessions include:

• Re-imagining Intermediary Liability in the Age of Fake News, Hate Speech, and Information Wars
• Data Fiduciary: A Bold New Idea in the Big Data World
• Rethinking the Role of Government in the Age of Big Data
• FinTech in Asia: Balancing Regulation and Innovation
• Policy and Regulatory Challenges for the Future of Mobility
• Changing IP Landscape in eCommerce and Impact on Intermediaries
• General Counsel Forum
• Talks on Artificial Intelligence
• OTT: Is Convergence a Reality or an Excuse to Regulate
• Policy Making for the Emerging Tech in India
• Internet of Humans to Internet of Things
• Regulating DNA Technology
• Communications Panel: Rethinking Existing Licensing Frameworks and New Challenges

The full agenda is available for review here. The conference also features the General Counsel Forum focusing on the challenges and opportunities that in-house legal teams face today. On Thursday evening, 31 January 2019, ITechLaw hosts an exclusive Gala Dinner, which is an excellent occasion to socialise and network with other attendees. You may register to attend just the Gala, if you wish.

Registration

Register now for the CyberSpaceCamp ®, the full conference, or just the Gala dinner.

About ITechLaw

ITechLaw has been serving the technology law community worldwide since 1971 and is one of the most widely established and largest associations of its kind. It has a global membership base representing six continents and spanning more than 70 countries. Its members and officials reflect a broad spectrum of expertise in the technology law field. ITechLaw informs and educates lawyers about the unique legal issues arising from the evolution, production, marketing, acquisition and use of information and communications technology. ITechLaw is a forum for the exchange of ideas and in-depth examination of information technology and telecommunications law issues.

Can a culture die? It’s debatable.

Can a culture be erased from the memories of the public and/or assimilated completely into a dominant culture? When we think of the loss of several Indian languages, the whitewashing of our favourite Disney heroes, the loss of cultural identities of indigenous people across the world and other similar instances, it seems quite plausible, doesn’t it? And this issue lies at the heart of the discourse surrounding cultural appropriation. Quite simply put, cultural appropriation is the use of a cultures’s symbol, artifact, ritual etc. from a different culture, often without giving adequate compensation to the source community for such usage and/or resulting in the perpetration of negative stereotypes. This term and its implications has, however, faced severe backlash from various critics. Most cases are said to amount to harmless acts of “cultural exchange” or “cultural borrowing“. It hence becomes crucial to differentiate between genuine cases of appropriation which require public attention and legal consideration and baseless allegations used to pull off publicity stunts.

Protection of Cultural Expressions and IP-Is there a Link?

The best way to protect such cultural facets would be to protect them as Traditional Cultural Expressions (“TCEs”), provided they fall within the scope of the term. In its documents prepared for its 39th Session to be conducted in March 2019, the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore of the WIPO has described TCEs as “tangible and intangible forms in which traditional knowledge and cultures are expressed, communicated or manifested” (the exact definition can be found in their Draft Articles here). The Committee also provides two kinds of protection for TCEs:

(1) Positive Protection: This refer to the use of IP and non-IP approaches to “prevent others from gaining illegitimate access to traditional knowledge” and to build up self-made enterprises based on these expressions.

(2) Defensive Protection: This refers to a “set of strategies to ensure that third parties do not gain illegitimate or unfounded intellectual property rights ” over such expressions.

The problem with IP approaches to such cases are that IP laws is most countries do not recognise such situations. For instance, if we examine the legal situation in India, we find that our IP legal framework is ill-equipped to protect TCEs, as has been elaborately discussed by Sreyoshi in an earlier post on cultural appropriation.

For more clarity on legal intricacies involved in cases of cultural appropriation, the following two sections lay out recent instances where such allegations have cropped up.

The Itsy-Bitsy Kiini v. The Victoria’s Secret Bikini-Who’s the Real Copycat?

Remember the scene where the Narrator in the  film, Fight Club,  remarks that “everything’s a copy of a copy of a copy“? This adage seems to literally apply when it comes to this world-famous bi(kiini)! Fashion lovers and active Instagram users may be aware of the popular Victoria’s Secret Crochet Trim Teeny Triangle Bikini Top and the Crochet Trim Cheeky Bottom. Available in bright hues, composed of tiny, yet well-fitted dimensions and clothing and complete with a distinctive crochet-and-elastic finish, the bikini is certainly eye-catching and unique. These bikinis, however, have been labelled as rip-offs of the Kiini bikini. The Kiini is an equally famous brand of bikinis promoted by several celebrities and made famous on Instagram and other social media outlets. Ipek Irgit, the owner of Kiini, filed a suit against Victoria’s Secret in 2015. The suit was later put to rest via a confidential settlement in 2017. In 2018, Ms. Irgit sued Neiman Marcus and two other swimwear companies for unfair competition and for violating Kiini’s trade dress. The lawyer representing Marcus and the companies, Jason Forge, did a bit of digging and uncovered interesting tidbits about the making and evolution of the Kiini, all of which can be found in this engrossing New York Times article. The long and short of it is that the Kiini is apparently a knockoff too! Maria Ferrarini, an independent street artist hailing from Brazil, started weaving and selling these colourful crochet-and-elastic bikinis way back in 1994. Apparently, her bikinis “inspired” the famous Kiini (and other knockoffs too, it seems). After this information came out in the public, Ms. Irgit dropped the suit and Ms. Ferrarini was adequately compensated. Though it’s not clear if this handmade crochet-and-elastic design can be considered to be a traditional cultural expression, some commentators have termed this as a classic case of cultural appropriation. And that’s not the end of the story (or knockoffs) yet. According to this report, Liverpool-based, fashion e-tailer MissPap is selling bikinis which look highly similar to Kiinis. And at much cheaper rates, too!

Hakuna Matata…It means no worries for the rest of your days-Apparently not for Disney!

Often quoted by the lovable Timon-Pumba duo in the Lion King movie, this catchy Swahili phrase (which literally translates to “no trouble”) became almost as famous as the movie. This phrase is also reportedly used often in common parlance by Swahili speakers. In 1994, Disney applied for a trademark on this phrase and the same was granted in 2003. In 2018, tens of thousands netizens signed an online petition which decried the grant of this trademark as yet another act of cultural appropriation, colonialism and robbery and termed it as “an assault on the Swahili people and Africa as a whole“. It has also been revealed that a Kenyan band had used this term way back in 1982 in a famous musical composition. Although Disney’s trademark of the phrase is justified under trademark law,  it does lead to a number of ethical dilemmas about theft of ideas, language and culture.

I can go on and on about various other interesting cases which have arisen recently (for instance, this bikini has been alleged to promote fetishisation of Asian women and the photographer Charles Freger is being accused of cultural appropriation for his recent works). For the sake of brevity however, I’ll limit the scope of my discussion to these two examples. The conclusions which can be drawn from the above discussion are:

1. It is nearly impossible to define the concepts of TCEs and “cultural appropriation” accurately since they are highly subject to public opinion and scrutiny and cultural history and sentiments. Also, the very concept of cultural appropriation seems to suggest that various facets of cultures can be “owned” like a “cultural property” by the members of such culture. Protection of cultural property has been provided under Article 1 of the Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property 1970. The definition however makes no mention of TCEs or any similar term. Thus, building an IP law framework on the basis of such vague, amorphous notions of these terms would prove to be a daunting task.
2. There is a (very) fine line between inspiration/appreciation and appropriation. (In fact, there’s a thin line between inspiration and outright copying, as has been proved by several past instances!) Artists often defend themselves against allegations of appropriation using arguments of artistic freedom and cultural inspiration which gives them the leverage to adopt such expressions in their works. Some artists further argue that their works honour and promote these cultures by providing them wider exposure on larger platforms. However, it is undeniable that certain works blatantly try to pass off a cultural expression as a product of original thought, instead of a byproduct of a culture (as can be seen from the above-describes instances). Legal recourses in such cases seem to be quite limited.
3. Social media has often proven to be a useful platform to speak up against genuine cases of such appropriation. On several occasions, though, these platforms are also used to perpetuate victim complexes and ugly stereotypes about minority and dominant cultures alike.

Given the various conceptual and legal uncertainties underlying cases of cultural appropriation, more discourse is required on the same for a uniform and workable legal framework for protection of cultural expressions. As Prof. Basheer puts it in his article, the need of the hour is a finalised WIPO text “that would not only prevent the cross-border misappropriation of cultural expressions, but also permit indigenous communities to proactively leverage their intangible wealth“.

Image from here

Thematic Highlight

Our thematic highlight came from Prarthana, who wrote on the impact of intellectual property law may on culture. In her post, she discusses the meaning of the term ‘cultural appropriation’, which she notes may be lost due to incorrect usage. She notes that the crossroads between intellectual property and culture comes most concretely in WIPO’s draft articles on ‘traditional cultural expressions’, which speaks of protecting community rights over cultural expressions and manifestations. She concludes by discussing two recent examples of alleged appropriation and argues that folding it within the legal framework is difficult, especially because an accurate definition of cultural expressions is impossible in a subjectively determined world.

SpicyIP Events

Pankhuri informed us that ITechLaw is organising the 15th ITechLaw 2019 International India Conference from January 30, 2019 to February 1, 2019 at the JW Marriott in Bangalore.  

Other Developments

Judgments

Blueberry Books & Others v. Bharti Goyal & Another – Delhi High Court [January 14, 2019]

The Plaintiffs had filed a suit in order to seek declarations that they were the owners of copyrights in the books “EIGHT SCIENCE OLYMPIAD BOOKS PARTS 1-8” and “MATHS OLYMPIAD PARTS 1-6” in light of the executed agreement with the Defendant. It was claimed by the Defendant that the firm was not a registered partnership, and in light of the same, the declaratory suit would fail. The Court held in favour of the Defendant and stated that the mandatory provisions of the Partnership Act would apply, and the Plaintiff being an unregistered partnership firm could not file a suit for enforcing a right arising from a contract without it being registered.

M/s. Millennium Automation & Systems v. M/s. Celkon Impex Private Limited – Delhi High Court [January 15, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “MILLENNIUM” by using a deceptively similar mark “CELKON MILLENNIUM” in respect of mobile phones. The Court examined the evidence placed on record and observed that the Plaintiff was the registered proprietor of the mark “MILLENNIUM” and was using the same in its corporate name as well. The Court further noted that the Defendant’s use of the mark even if done innocently would not confer any rights upon it in violation of the Plaintiff’s registered mark.

Mallcom (India) Limited & Another v. Rakesh Kumar & Others – Delhi High Court [January 17, 2019]

The Court found the interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “TIGER” by using a deceptively similar mark “TICER” in respect of safety shoes, valid. In arriving at this decision, the Court noted that the font of the rival marks was identical and that the Defendant had merely replaced the alphabet “G” with alphabet “C” to create confusion in the minds of the general public.

Bigtree Entertainment Private Limited v. D. Sharma & Another – Delhi High Court [January 21, 2019]

The dispute between the parties arose on the Defendant’s use of the prefix “BOOKMY” in its domain name and corporate name in relation to booking of events. The Plaintiff “BOOKMYSHOW” claimed sole proprietary rights over the prefix “BOOKMY” and thereby prayed for an injunction in its favour. The Court noted that it could not be lost sight of that the phrase “BOOKMY” was descriptive of the services offered by the Plaintiff and was a generic English term. Moreover, the rival marks were different in their appearance and would not lead to confusion among the public. In light thereof, it was concluded that the Plaintiff had failed to make a prima facie case for an injunction.

News

• ‘Uri’ copyright row: Film-makers pay author settlement amount, no credit in movie
• Copyright Office Introduces Provision for Online Submission of Literary/Dramatic and Artistic Work and related documents
• Copyright issue: Delhi HC restrains site from using copies of TOI, ET
• Gujarati Singer Kejal Dave moves HC against stay on song

International

• Apple Applies for new ‘EarPods’ Trademark with Extended Coverage
• China approves trademarks for Ivanka Trump’s defunct company