In a country where a person’s beauty is usually based on the melanin content in one’s skin, products promising fairness and “even skin tone” are abundantly available in the Indian cosmetics industry, most of which target the fairer sex (pun intended) as their main customer base. Lately, however, the Indian cosmetics industry has been acknowledging changing gender roles and the  shift from traditional perceptions of masculinity and femininity by introducing beauty products especially targeted towards men, including fairness products. A recent order from the Delhi HC brings this trend to the forefront.

Factual Background

This is not the first instance of bad blood between Hindustan Unilever Limited (“HUL”) and Emami. Previously, HUL had  brought a complaint in the ASCI (Advertising Standards Council of India) against Emami’s fairness campaign for its Fair and Handsome mens’ fairness brand variants, which was later rejected by the Council. HUL had also aired an advertisement depicting consumers’ confusion about their product, “Men’s Fair and Lovely” and Emami’s product “Fair and Handsome” and how their product was original and Emami’s product was “doosra” (secondary/fake). The Court granted an injunction in favour of Emami and restrained HUL from circulating and displaying the ad.

In the present case, HUL brought a suit against the defendant, Emami, praying that the latter be restrained from telecasting a commercial which allegedly disparaged HUL’s product “Fair and Lovely”. In the impugned advertisement, a man is jeered at by another for using a “pink fairness cream” intended for women. He is then introduced to Emami’s Fair and Handsome cream and is told that such a cream would be prove to be effective for men’s “tough skin”.

Arguments 

HUL claimed that though its product “Fair and Lovely” was mainly intended for women, both men and women were using it. The product is encased in a pink and white tube and displays a “dual face device” (a logo depicting  person’s complexion before and after using the product). HUL claimed that the impugned advertisement clearly referred to their product and disparaged it by undermining its effectiveness on men’s skin. Since both the creams contained the main active ingredient “niacinamide” (a skin lightening agent), HUL argued that it was false to state that their product would not have the desired effect on men’s skin.

On the other hand, Emami pointed out that HUL had admitted on their website that different skin products were required for men due to the differences in skin of men and women and this ran contrary to their arguments in the present case. They argued that they only stated the truth, which could not amount to disparagement. They also argued that they did not refer to HUL’s product in any way. They further stated that the entire intent of the advertisement was to inform male consumers that fairness creams intended for female consumer were not effective for men.

Judgment

The Court first focussed on whether there was any reference to HUL’s product. It noted that, previously, the ladies’ fairness cream tube in the advertisement was pink and white in colour and had the “dual face device” symbol on it. These features were altered after the Delhi HC ordered Emami to do so since they made the product appear similar to HUL’s product. It was, hence, concluded that no such reference to HUL’s product could be made out from the altered advertisement.

The Court then states that Emami correctly pointed out the contradiction in HUL’s stance regarding the need for separate fairness creams for men and also pointed out that HUL too had a separate fairness cream for men. It then focused on the intent of the advertisement to highlight the need for such separate products for men and concluded the same could not amount to generic disparagement.

Revisiting principles on Generic Disparagement and Comparative Advertising

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In January, I had written a brief post alleging the illegality of the hearings conducted and the orders passed by the IPAB. I had argued that the IPAB had violated the law because it failed to meet the quorum requirements under provisions of the Trade Marks Act, 1999 read with the IPAB (Procedure) Rules, 2003 (‘quorum requirements’) when conducting hearings and passing orders.

Since the retirement of Technical Member Sanjeev Kumar Chaswal on December 5, 2018, the IPAB has remained without a sitting Technical Member, and therefore, without the quorum required under Section 84(2) of the Trade Marks Act. Despite this situation, we had received documents from lawyers at ARS & Associates, Chandigarh, which revealed that the IPAB had conducted hearings on several occasions and passed at least two orders without meeting the quorum requirements (the IPAB website continues to remain dysfunctional). However, some of our readers have suggested that the IPAB is not culpable of any wrongdoing as it had not heard or passed any orders on substantive aspects of pending matters, and is simply ensuring that matters do not get held up needlessly.

In this post, I will attempt to analyse whether hearings and orders that are not on ‘substantive aspects’ of disputes can be legally conducted and passed by the IPAB in the absence of a quorum.

Can Administrative Orders Be Passed Without Quorum?

In my previous post, I had shared two orders that had been passed by the IPAB without a quorum. The first, passed in Puma SE v Arun Jain, was an order of withdrawal which stated:

“The learned Counsel of the applicant seeks to withdraw the present petition. The applicant states that the Trade Marks in question is already removed. The Petition is disposed of. Status report is taken on record.”

The second, passed in Puma SE v Abhishek Kumar, was an order of settlement which stated:

“The Learned Counsel for the applicant states that since the dispute between Applicant and Respondent no. 1 has resolved in Civil Court. In view of the said settlement, the counsel withdraws the said petition. Petition is disposed of.”

I argued that these orders violated the quorum requirements, based on a combined reading of Section 84(2) of the Trade Marks Act and Rule 20 of the IPAB (Procedure) Rules, 2003.

Section 84(2) requires that:

“Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification in the Official Gazette, specify.”

Rule 20 of the IPAB (Procedure) Rules, 2003 further requires that:

“Order to be signed and dated.—

(1) Every order of the Appellate Board shall be signed and dated by the Members of the Bench.

(2) The order shall be pronounced in the sitting of the Bench.”

On the basis of these provisions, I concluded that the IPAB needs to meet the quorum requirements to hear or pass any kind of order for all matters that come before it. However, some readers suggested that the two orders extracted above do not need to fulfil the quorum requirements. They pointed out that the mentioned orders are not on merits and are only administrative in nature as the bench is not adjudicating or applying their mind while passing them. Further, it was argued that not passing such orders would only increase the backlog in the IPAB, which is not desirable either. One of the readers specifically noted:

“Re: the “example” of an “order passed without quorum” that the author cites, I have the following comment:

A counsel’s voluntary withdrawal of a proceeding is not an order in the matter or a hearing on merits. When a party withdraws a proceeding, the bench is not adjudicating on it at all. Why should an attorney be inconvenienced and a simple act of withdrawal postponed for lack of quorum? If that happened then the critique would be “non application of mind”, “delays and backlog”, etc. Seems that the IPAB cannot win either way.”

I believe that the kind of orders referred to above are administrative orders, and would include orders that do not require an objective determination of rights and obligations of disputing parties. These would include, for example, orders relating to the issuance of summons and payment of batta. Judicial orders, on the other hand, include orders that make an objective determination on the rights and obligations of the disputing parties based on principles of law. The argument, therefore, is that orders not passed on merit do not involve an objective determination of the rights and obligations of disputing parties. They are administrative in nature, and therefore do not require a quorum.

On a literal reading of the quorum requirements, this argument would fail, since they make no distinction between different types of orders. While this leads to the ostensibly inconvenient conclusion that even administrative orders cannot be passed without a quorum, Rule 27, on the additional functions and duties of the Deputy Registrar, reveals that such matters form a part of the functions of a Deputy Registrar of the IPAB:

“In addition to the functions and duties assigned under rule 26, the Deputy Registrar shall have the following functions and duties subject to any general or special orders of the Chairman, namely: ­—

(i) to receive all applications, appeals, counter-statements, replies and other documents;

(ii) to decide all questions arising out of the scrutiny of the appeals and applications before they are registered;

(iii) to require any application, appeal, counter-statement, replies presented to the Appellate Board to be amended in accordance with the rules;

(iv) subject to the directions of the Chairman, to fix date of hearing of the application or appeals or other proceedings and issue notices therefor;

(v) direct any formal amendment of records;

(vi) to order supply of copies of documents to parties to proceedings;

(vii) to grant leave to inspect the record of the Appellate Board;

(viii) to requisition records from the custody of any court, Registrar of Trade Marks or other authority;

(ix) to decide questions relating to extension of time in respect of filing of counter-statement, reply, rejoinder, etc.”

Rule 27, therefore, reveals that the burden of fulfilling administrative duties in matters is, therefore, upon the Deputy Registrar. A bench need not concern itself with the same. A literal reading of the quorum requirements, which would require a quorum for all orders, would therefore not lead to any administrative inefficiencies or inconveniences at the IPAB since the Deputy Registrar is capable of taking care of the same.

Can Orders on Withdrawal and Settlement Be Classified as Administrative Orders?

Even if we were to ignore this understanding of the quorum requirements, and argue that administrative orders do not require a quorum, it would be incorrect to classify the orders on withdrawal and settlement as administrative orders.

On several occasions, the Supreme Court has attempted to articulate the distinction between administrative and judicial orders. In Shankarlal Aggarwal v Shankarlal Poddar, it noted:

“One of the tests would be whether a matter which involves the exercise of discretion is left for the decision of the authority, particularly if that authority were a Court, and if the discretion has to be exercised on objective, as distinguished from a purely subjective, consideration, it would be a judicial decision. It has sometimes been said that the essence of a judicial proceeding or of a judicial order is that there should be two parties and a lis between them which is the subject of adjudication, as a result of that order or a decision on an issue between a proposal and an opposition. No doubt, it would not be possible to describe an order passed deciding a lis before the authority that it is not a judicial order but it does not follow that the absence of a lis necessarily negatives the order being judicial.”

In the context of an order passed by a Magistrate, in Nara Chandrababu Naidu v State of Telangana, the Supreme Court also noted:

“Whether an order is a judicial order or administrative order depends on the following two conditions: (i) whether any discretionary power is left over to the Magistrate and if so, exercising of such discretionary power should be based on sound principles of law; and (ii) the order passed by the Magistrate directly or indirectly or by necessary implication affects the rights of the parties to the proceedings. If the order passed by the Magistrate satisfies the above two conditions, it is a judicial order. If not, it is only an administrative order. In other words, passing of a judicial order mandates application of mind by the Court as the same eventually affects the rights and personal liberty of an individual. An administrative order is one which regulates the proceedings of the Court without affecting the rights of the parties to the proceedings. For example: (i) issuance of summons, (ii) payment of batta, etc. The test to be applied is whether the impugned order passed by the learned Special Judge affects the rights and liabilities of the petitioner or not. If the answer is affirmative, it falls within the ambit of judicial order and if the answer is negative, it falls within the ambit of administrative order.”

Based on these principles, I would argue that orders of withdrawal and settlement would qualify as judicial orders. This is because both orders require an objective assessment of the appropriateness of allowing a withdrawal or settlement in light of adduced evidence (Order XXIII of the Civil Procedure Code, 1908), to ensure that proper consent has been taken, the application has been made in the proper form and no impropriety in the withdrawal or settlement. Further, these orders affect the rights of the parties to seek recourse before the IPAB, since a fresh case on the same cause of action is generally not permitted after withdrawal or settlement. Therefore, even though a withdrawal or settlement may not feature arguments from parties, it still requires an objective application of principles of law that affects the rights of parties and is therefore judicial in nature.

In similar contexts, the Supreme Court has noted that orders passed relating to admissions, under Order XII of the CPC, cannot be referred to as administrative orders. Further, the Kerala High Court also noted that an order granting an adjournment cannot be classified as an administrative order (see paragraph 10 of Babu Premarajan vs Superintendent of Police). Orders relating to admission and adjournments are not always contested or critical to a dispute, but are still not considered to be administrative in nature. It would therefore be consistent with this line of jurisprudence to find that orders of withdrawal and settlement are also judicial orders.

It may be worth noting that while the IPAB is not bound by the Civil Procedure Code, it possesses all the trappings of a civil court by virtue of the powers vested in it under Section 92 of the Trade Marks Act and must follow the principles of natural justice. The above discussion, therefore, would be relevant for the IPAB in coming to a decision.

Can the IPAB hear cases on grounds of backlog of matters?

Another argument put forth by our readers was that the IPAB should be allowed to conduct hearings and pass orders on non-substantive aspects of a matter because this would ensure that there is no unnecessary piling up of cases at the IPAB.

However, if we were to accept the literal interpretation of the quorum requirements, which permits no exceptions for types of orders, then allowing hearings and orders to be passed would be patently illegal. Allowing such a violation of the law would not be appropriate, no matter how noble the objective is.

In a similar fact situation in NGT Bar Association v Union of India, the Supreme Court did not allow the National Green Tribunal to continue hearing matters without an expert member on the bench, despite having knowledge of the consequent backlog that would arise due to vacancies at the tribunal.

Further, as one of our readers pointed out that classifying orders of withdrawal and settlement as administrative would result in indiscriminate refiling of suits with the same cause of action, with legal principles such as res judicata remaining inapplicable to administrative orders. This may even result in an increase in the work-load of the IPAB, since parties may misuse this loophole to refile cases as many times as they deem fit.

Conclusion

The IPAB has, therefore, by passing orders relating to withdrawal and settlement, flouted the quorum requirements under the Trade Marks Act and IPAB (Procedure) Rules, because there is no exception for administrative orders. Even if there were such an exception, orders relating to settlement and withdrawal are not administrative in nature. Further, the noble goal of reducing the backlog at the judiciary cannot justify violating a provision of law.

In the next post, I will discuss Section 84 in more detail, specifically checking if the Chairman has the power to override the quorum requirements.

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Online piracy, that bugbear of copyright owners, has received significant attention from courts in India and abroad, which hope to craft an elegant solution to protect rightsholders interests in a digital economy, who face inherent limitations considering the manner in which data sharing and information flows over the internet work.

The Delhi High Court through its judgement in UTV v 1337x.to, delivered on April 10, has made a significant contribution to this jurisprudence in India, particularly by crafting a new remedy of a ‘dynamic injunction’, whereby rights-holders do not need to go through the ‘cumbersome’ process of a judicial order in order to issue blocking orders to ISPs. Instead, as per this ruling, the plaintiffs have been allowed to approach the Joint Registrar of the Delhi High Court (an administrative position), to extend an injunction order already granted against a website, against a similar ‘mirror/redirect/alphanumeric’ website which contains the same content as the original website.

Mr. Justice Manmohan’s order is important for its detailed consideration of the issues involved in issuing website blocking injunctions, (at least compared to similar blocking injunctions we have seen in the past) as well as for the unique final remedy crafted to secure copyright holders’ interests in the form of a dynamic injunction.

Case Background

The plaintiffs, including UTV Software Communications Ltd., are companies engaged in ‘creating content, producing and distributing cinematographic films around the world including in India’. The defendants are, inter alia, thirty identified websites, along with John Doe defendants, the Ministry of Electronics and Information Technology, the Department of Telecom and various ISPs.

The plaintiffs contend that the defendant websites host and provide access to their copyrighted works, in a manner which infringes their rights under the Indian Copyright Act. The plaintiffs provided access to a sample of such infringing content as evidence that the websites were primarily engaging in online piracy.

The principal defendants (the websites) did not respond to the summons, presumably since they are hosted outside of India. However, as the issues were deemed to be questions of law ‘of general public importance’, the Court appointed an amicus curiae, Mr. Hemant Singh, to assist the court with its determination on the questions of law.

Judgement and Order

The Court outlines seven issues for determination, which are dealt with point by point –

• Whether an infringer of copyright on the internet is to be treated differently from an infringer in the physical world? 


The court answers this in the negative, holding that the distinction sought to be made by ‘internet exceptionalists’, between online and offline infringement is an artificial one, and states that “there is no logical reason why a crime in the physical world is not a crime in the digital world especially when the Copyright Act does not make any such distinction.”

• Whether seeking blocking of a website dedicated to piracy makes one an opponent of a free and open internet?

Once again, this strangely-framed issue is answered in the negative. According to the Court, “…the key issue about Internet freedom, therefore, is not whether the Internet is and should be completely free or whether Governments should have unlimited censorship authority, but rather where the appropriate lines should be drawn, how they are drawn and how they are implemented.”

• What is a ‘Rogue Website’? 


This issue is at the crux of the case, since the injunctions are directed against supposedly ‘rogue websites’ or, using a term the Court borrowed from the Singapore Supreme Court, Flagrantly Infringing Online Locations (FIOL). The Court states that such websites are those ‘which primarily or predominantly share infringing content’. The Court then outlines some indicative factors which can be used to determine whether a service is an ‘FIOL’, including the volume of traffic received by the website, or whether it contains indexes or categories which provide the ‘means’ for infringement.

Strangely, the Court sidesteps the issue of determining whether any of these rogue websites are liable to intermediary liability protection, an issue which, in my opinion, is central to the case, and which I will come back to in my next post. 

• Whether the test for determining a ‘Rogue Website‘ is a qualitative or 
a quantitative one? 


This discussion pits two countervailing trends regarding website blocking injunctions against each other. One the one hand, the Court considers applying the ‘quantitiative’ test for blocking injunctions, with reference to the Bombay High Court orders in Eros v BSNL. In this case, Mr. Justice Patel of the Bombay High Court refused to issue John Doe blocking injunctions against entire websites, stating that specific instances of infringement would be required to be proven. (The Bombay HC order also cited posts on this blog authored by Prof. Basheer, on the considerations which must go into a blocking injunction).

However, the Delhi High Court pitted this against its own composite bench judgement, which applied a ‘qualitative’ view to blocking injunctions, and held that such injunctions should be granted where there the ‘rogue websites’ are ‘overwhelmingly infringing’. The Court held that, requiring the copyright owner to identify each infringing element would place too onerous a burden on copyright owners, particularly in instances where these websites can easily change a URL which has been taken down or blocked.

• Whether the defendant-websites fall in the category of ‘Rogue Websites‘?

The Court answers this in the affirmative, after looking into the ‘factors’ outlined regarding when a website can be termed a rogue website, including whether the owners mask their ownership details, whether there is ‘disregard’ for copyright, whether the website provides indexes and databases leading to infringing content, and, importantly, whether other jurisdictions have treated such websites as infringing websites. Considering all these factors (as per the plaintiffs affidavits), the Court held that all of the defendant websites are rogue websites.

• Whether this Court would be justified to pass directions to block the ‘Rogue Websites’ in their entirety?

Stemming from its determination above, the Court held that “…This Court is of the view that while passing a website blocking injunction order, it would have to also consider whether disabling access to the online location is in the public interest and a proportionate response in the circumstances and the impact on any person or class of persons likely to be affected by the grant of injunction. The Court order must be effective, proportionate and dissuasive, but must not create barriers to legitimate trade. The measures must also be fair and not excessively costly.” The Court notes that any website blocking must be necessary and proportionate and commensurate with the nature of the infringement, as well as whether legitimate content is being blocked. However, it does not proceed with analysing whether these conditions are being met in each of the specific cases, proceeding on the concluded assumption that these are rogue websites, and that blocking the websites in their entirety is both necessary and proportionate to the needs of the rights holders.

• How should the Court deal with the hydra headed ‘Rogue Websites‘ who on being blocked, actually multiply and resurface as redirect or mirror or alphanumeric websites?

Finally, perhaps the most significant aspect of this judgement is that it creates a new procedure to extend website blocking injunctions beyond those specified in the court order, to those websites which are ‘mirror/alphanumeric/redirect’ websites created after the injunction orders, known as a ‘dynamic injunction’. The Court referred to the Singapore High Court’s decision in Disney v M1, where the Court, considered the issue of websites with different domain names or IP addresses providing access to a website which is the subject of an existing blocking order. The Singapore Court, in this case, crafted a ‘dynamic injunction’ whereby a plaintiff could file an additional affidavit stating to the court why a new website fell within the purview of an existing blocking order, and forwarding the same to an ISP, which could dispute the merits of the blocking order.

The Delhi High Court in this case notes that the ‘dynamic injunction’ stemmed from specific provisions of Singapore law. However, the Court held that it was within its inherent powers under Section 151 CPC to craft a solution of a similar nature, and that the plaintiffs could avail of a similar injunction by impleading additional websites under Order 1 Rule 10 of the CPC.

However, the court considers that the judiciary itself should not be burdened with constantly monitoring such affidavits and adjudicating upon their validity. The order therefore delegates the power to adjudicate upon the issue of additional websites being added to an existing blocking order to the joint-registrar of the Delhi High Court, who functions in an administrative capacity (mostly in dealing with matters of purely procedural importance). In this case, the power is delegated under very specific provisions of the law, namely Section 7 of the Delhi High Court Act, 1966 read with Chapter II, Rule 3(61) read with Rule 6 of the Delhi High Court (Original Side) Rules 2018. The same rules also allow an aggrieved party to appeal against the joint registrars’ orders.

Finally, the Court ‘directs’ the MeitY and the DoT, who are also defendants in this case, to consider a suggestion whereby they can come up with a policy for a graduated response scheme, where individuals who access ‘pirated content’ can be notified of the same by ISPs, and if they do not refrain from continuing such actions, they may be fined.

Topical Highlight

Divij wrote a post on India’s first ‘dynamic’ website blocking injunction, issued by the Delhi High Court. This order allows for the plaintiff to apply for the extension of an injunction to ‘mirror/redirect/alphanumeric’ websites (that contain the same content as the original prohibited website) to the Joint Registrar of the Delhi High Court.

Thematic Highlight

I wrote a post on the nature of orders and quorum requirements at the IPAB, in light of the orders passed despite continued vacancies. I argued that the applicable provisions do not allow for an exception for ‘administrative orders’, and further, that the orders passed were not administrative in nature based on jurisprudence from the Indian Supreme Court.

Other Posts

Prarthana wrote a post on the latest order in a tussle between Hindustan Unilever Ltd and Emami concerning fairness creams. The court passed an order that rejected HUL’s allegation that Emami has disparaged its product because there was no specific reference to HUL’s product or generic disparagement. She concludes by pointing out that the judgment delivered by the court lacked clarity on its decision on generic disparagement.

Divij shared his post on Medianama, where he writes on the evolution of copyright law to catch up with the development and usage of technology.

SpicyIP Events

Pankhuri informed us of upcoming Annual Refresher Course for Law Teachers on Developmental Perspectives on IPRs, to be held at CUSAT, Cohin from June 21-28, 2019.

Other Developments

Indian

Judgments

Tata Sky Limited v. National Internet Exchange of India and Others – Delhi High Court [April 2, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged use of the Plaintiff’s mark “TATA SKY” and its slight modifications in registering domain names. The Plaintiff in light of the repeated registrations of such deceptive domain names prayed for a dynamic injunction against Defendant No. 1. The Court observed that there was merit in the Plaintiff’s argument and stated that such grant of an injunction to prevent registrations in the future would keep pace with the infringers, and eliminate the grievants from continuously approaching the courts. The Court also suggested that Artificial Intelligence could be employed within the parameters of law in order to prevent such registrations. However, the Court did not conclusively decide the matter and was of the opinion that a question of public interest arose, which could only be decided by the Chief Justice.

Hindustan Unilever Limited v. Ankit – Calcutta High Court [April 4, 2019]

The Court granted an interim injunction restraining the Respondent from infringing the Petitioner’s mark “EXCEL” and its artistic work on the packaging, by the adoption of deceptively similar marks “MR. EXCEL” and “MS. EXCEL” and imitative packaging, in respect of detergents. In arriving at this decision, the Court noted that the packaging of the Respondent and its colour scheme was very similar to the Petitioner’s packaging. Accordingly, the Court stated that it was a prima facie case of infringement of trademark and copyright in the label of the Petitioner’s packaging.

Elder Projects Limited and Another v. Elder Pharmacia LLP and Others – Delhi High Court [April 5, 2019]

The Court vacated the interim injunction against all Defendants which restrained them from using the Plaintiff’ marks “ELDER” and “EVERVIT” or any other deceptively similar marks, in respect of manufacturing and selling pharmaceuticals. The Court had previously granted an interim injunction against Defendant Nos. 1 and 5, however, the present suit was filed to claim passing off remedies against Defendants Nos. 2-4. The Court observed at the onset that the Plaintiff No. 1 had not sought the permission of its sister concern and thus, such use could not be characterized as “permitted use”. Moreover, it was noted that since five years have not passed since the continuous use of the mark by the Plaintiff No. 1, there could not be any claim of acquiescence. In light of the aforementioned, it was concluded that the Plaintiff No. 1 was infringing a registered trademark, and therefore could not bring an action of passing off against another infringer.

Baskaran v. The Deputy Registrar of Trade Marks– Madras High Court [April 5, 2019]

A writ petition was filed by the Petitioner for its expired mark “TAJMAHAL”, used in respect of pappads, for the renewal of the mark even though the stipulated period for renewal, as prescribed under the Trade Marks Act had expired. The Petitioner relied on the fact that the Trade Marks website showed the mark’s status as “registered”. The Court observed that the Respondent had a statutory and mandatory duty to issue notice under Form O-3 to the Petitioner before removing its mark from the register. In absence of issuance of this notice, the Court noted, the mere expiry of time would not take away the Petitioner’s right of ownership over the mark. Thus, the Court directed the Respondent to fulfil its mandatory and statutory duty by issuing the Form O-3 to the Petitioner, and the Petitioner would then be allowed to pay the renewal fee. Consequently, the Registrar would consider the merits of the Petitioner’s application.

Sandisk LLC and Another v. M/s. B-One Mobile and Others – Delhi High Court [April 9, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing of the Plaintiff’s “RED FRAME LOGO” and its peculiar packaging, by using deceptive and colourable packaging for the sale of memory sticks. In arriving at the decision, the Court noted that the Plaintiff’s mark “SANDISK” has acquired reputation and goodwill globally. It was also observed by the Court that the Defendant had consistently used the Plaintiff’s registered marks and its packaging, thereby qualifying for prima facie infringement.

Christian Louboutin SAS v. Abubaker and Others – Delhi High Court [April 11, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement of the famous “RED SOLE” mark of the Appellant, in respect of footwear. The original suit of the Appellant was dismissed by the Single Judge stating that a single colour does not qualify for protection under the Trade Marks Act, 1999 and that the Appellant’s word mark “CHRISTIAN LOUBOUTIN” was completely different from the Respondents’ mark “VERONICA”, among other reasons. The Court set aside the order of the Single Judge, by first claiming that the original suit could not be dismissed in limine as there was no “admission” on part of the Plaintiff of the Defendant’s case, as required by the Civil Procedure Code, 1909. With respect to the validity of a trademark consisting of merely a single colour, the Court observed that the suit did not relate to the question of the validity of the mark, and in such a situation the validity of the mark would be prima facie presumed if it is registered. However, the Court refrained from further commenting on this aspect as it considered that such deliberation could prejudice the merits of the case. Ultimately, the Court stated that the Single Judge should have referred the matter to a larger bench of two judges because he was unable to agree with the decisions of co-ordinate Single Judges. The suit was accordingly restored before the Single Judge.

News

• Rajya Sabha TV accuses The Wire of stealing, illegally possessing and using copyrighted material
• Yera prevails over Era in trademark copy suit in Gujarat
• Delhi HC asks YouTube to remove two PewDiePie songs
• Glytec gets patent allowance for Therapy Advisor
• Madras high court stops firm from using FIEO trademark
• HC Restrains 30 Torrent Sites From Hosting Copyrighted Content, Orders ISPs To Block Them
• To shield patents, firms seek information on generic drug launches

International

• Donald Trump’s tweet using ‘Batman’ music yanked for copyright violation
• Report by US Trade Body takes on Indian Digital Policies
• Valeo remains France’s leading patent filer for third year in a row
• Alexa will now be able to pull out important data from your health records

We’re pleased to inform you that the 2019 WIPO-UNIGE Summer School will be conducted in Geneva from June 24 to July 5, 2019. The deadline for applications is May 15, 2019. For further details, please read the announcement below.

2019 WIPO-UNIGE Summer School in Geneva in June!

Interested in spanning the IP Globe in 2019? Join the WIPO-UNIGE Summer School in Geneva! The Summer School, this year in its 9th edition, gathers each year participants from around the world with various backgrounds (from law to biology). The 2019 edition of the Summer School will start from June 24, 2019 and end on July 5, 2019. The Summer School will be held at the Headquarters of the World Intellectual Property Organization (WIPO) and at the University of Geneva. An additional exciting feature of the Summer School will be the Second IP Researchers Europe Conference (IPRE), which is organized by the University of Geneva in collaboration with the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO). Participants to the Summer School will participate to IPRE and discuss current global hot IP topics with junior and senior IP scholars.

The deadline to register for the 2019 Summer School is May 15, 2019. Applications should be submitted though the WIPO’s website. More information is available here.

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We’re pleased to bring to you a guest post by Shalini Bhutani. Shalini is an India-based independent legal researcher and policy analyst working in the Asian region.

The ‘Farmers’ Rights’ Law Lays the IPR Trap

Shalini Bhutani

One day intellectual property rights (IPRs) in the seed sector granted to MNCs would entrap farmers. This is precisely what farmers’ groups and concerned citizens in the country had been warning against, ever since India chose to introduce IPRs through the Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001. IPR infringement suits against farmers are just about beginning in India.

What happened?

Last year onward PepsiCo India Holdings (PIH) Pvt. Ltd. has been pursuing legal action against both rival local firms[1], a cold storage and seed business[2] and four farmers collectively[3] in Gujarat whom it believes are infringing its IPRs. Early this year too it reportedly came across farmers in Gujarat growing its IPR-protected potato varieties. The company employed a private intelligence agency, namely Indus IntelliRisk and IntelliSense Services Pvt Ltd. to visit certain farmers’ fields in January and February 2019. It then commenced individual suits to stop four farmers from using its potato plant variety FL 2027 (commercial name FC­5).[4] The company alleges that these farmers have been producing the variety without its permission. According to PIH, this is ‘infringement’ as per Section 64 of the PPV&FR Act.

The suits were filed in early April 2019 in the Commercial Court in Ahmedabad, Gujarat for:

1. permanent injunction restraining the farmers from using FL 2027 registered under the PPV&FR Act; and
2. passing off such products being those of PIH, in violation of the company’s rights over the trademark FC5.

An ex parte ad interim injunction was granted to PIH on 10 April 2019. The farmers have been summoned to appear in court at the next hearing on 26 April 2019.

Registered Varieties

Potato (Botanical name: Solanum tuberosum L.) is one of the 151 crop species that are open for registration under India’s PPV&FR Act.[6] No farmers’ varieties of potato have so far been registered. As of end of February 2019, a total of twenty-five potato varieties have been granted IPR under the Act (see table below). A certificate of registration for a variety confers an exclusive right on the breeder to produce, sell, market, distribute, import or export the said variety.

Table: Potato Varieties registered under different categories of the PPV&FR Act

• Compiled by author from the data on the PPV&FR Authority web site

On 1 February 2016, PepsiCo India got IPRs for two of its potato varieties, namely FL 1867 (Reg.No. 50 of 2016) and FL 2027 (Reg.No. 59 of 2016) from the PPV&FR Authority in India. The term of plant variety protection (PVP) is fifteen years, i.e. till 31 January 2031. It is for FL 2027/FC 5 that the company has filed suits.

Not surprisingly, other than by the Indian Council of Agricultural Research (ICAR) the registrations for potato are by dominant private sector players. HZPC Holland B.V. – a Dutch MNC, is the world’s largest potato supplier. Mahindra HZPC Pvt Ltd is a (60:40) joint venture of Mahindra Agri Solutions Ltd (a group company of Mahindra & Mahindra Ltd) and HZPC Holding B.V. HZPC is also member of Breeders Trust, which is an organisation of ten leading European potato breeder companies. Breeders Trust supports these companies in the implementation and enforcement of their plant breeders’ rights and in the prevention of the illegal trade in plant propagation material.

PepsiCo is an American MNC formed in 1965 with the merger of the Pepsi-Cola Company and Frito-Lay, Inc., with headquarters in New York, USA. PepsiCo’s snack food company, Frito Lay, is the leader in the branded potato crisp market and manufactures Lay’s Potato Chips. The process-grade varieties of potato FL 1867/FC3 and FL 2027/FC5 are central to this chips brand. PepsiCo India Holdings (PIH) Pvt Ltd, a subsidiary of PepsiCo Inc. was incorporated and registered in India in 1994 under the Companies Act, 1956.

PIH reported a net profit of Rs 190 crore in 2017-18.

Contract Farming

PepsiCo entered India in 1989; the same year it set up a potato R&D farm in Sangrur, Punjab. From a mini-tuber laboratory there potato plantings are supplied to farmers across India and even exported to other countries.

Potatoes are one of the primary crops in which PepsiCo has a direct relationship with farmers. This is in two ways: one, for multiplication and production of potato seeds, and two, for cultivating the potatoes to be used in the manufacture of its chips. PIH has been undertaking contract farming of potatoes in several states, the first being Punjab in 1995. Over 50% of the company’s procurement comes from contract farming. But it is since 2004-05 that it started what it calls ‘collaborative farming of process-grade potatoes’ in India. Under a contractual agreement with farmers, it supplies its ‘proprietary advanced seed varieties’ FC3 and FC5. This does not mean that the potato seed is always of best quality; there have been instances in the past when PIH reportedly supplied defective potato seed to farmers.The assured buy-back of the produce at pre-agreed prices makes the contract attractive to farmers.

The contract that the company enters into with farmers, usually has specific stipulations on its proprietary materials:

Grower represents and warrants that it shall not, during the subsistence of this agreement:

(i) sell or dispose of the PIH variety potato seeds or multiplied chip grade potatoes to any person or company other than to PIH or any party designated, in writing by PIH; or

(ii) use the PIH variety potato seeds, for any purpose, other than multiplication under the terms of this Agreement.

– PIH Contract 2015

The contract does not allow its farmers to sell in the open market; except in cases where the PIH needs have been met and the production is more than expected. A 2014 research paper points out that till that year the company had not pursued legal action against ‘defaulter’ farmers. The company has chosen to initiate legal suits only after getting IPR protection over its potato varieties in India.

Farmers’ Story

Gujarat is amongst the top five states in India for its share of potato production, followed by Punjab in sixth place.^[10] Deesa, in Banaskantha district has emerged as the centre of potato production in Gujarat. Farmers in the potato-producing region of Gujarat may get their seeds and propagating material directly from the company or from local seed dealers. Irrespective of the source, if farmers have saved some planting material from their potato harvest, the question is if the re-use of that is an infringement of PIH’s PVP. The company asserts that it is.

There is also a grey market of potato tubers that exists. Sometimes spuds too small for processing are left over; these find their way through seed traders to the farmers. Often they may not be marketed in the original name or denomination that is IPR-protected. Therefore, until and unless governments are able to plug this supply, the farmers run the risk of being at the receiving end of IPR infringements, while the seed dealers/traders ought to be held accountable. Those ‘copying’ seeds can be penalised invoking Sections 68 to 71 of the PPV&FR Act.

Public Sector

These cases also raise the larger issue of public sector responsibilities. If there were more public sector varieties, which were preferred by farmers and a ready market for the produce from them, then perhaps the farmers would not get locked-in into corporate contracts. Interestingly, while PIH avers that FL 2027 is similar to ICAR’s Kufri Chipsona-3, yet its claim for PVP is that it is a DUS hybrid/line that differs from the latter.

Another aspect to consider is how public sector institutes play a support role to the IPR system. Most SAUs and other ICAR R&D institutes are now occupied in testing the distinctiveness, uniformity and stability (DUS) of the sample planting materials deposited in the processing of PVP applications. The DUS testing centres for potato are: ICAR-CPRI, Shimla and two Central Potato Research Stations at Modipuram and Jalandhar respectively. In fact, an international DUS testing workshop on potato was conducted by the PPV&FR Authority at ICAR-CPRI last year, with the company representatives of PepsiCo, Mahindra HZPC, Rasi Seeds and ITC attending.

PepsiCo imports the tissue plantlets of FL 2027 from Frito Lay, USA via ICAR-CPRI. In the present cases, PIH not only conducted genetic fidelity tests of the farmers’ tubers in its lab in Zahura, Punjab, but also sent 9 farmers’ samples to ICAR-CPRI, Shimla, Himachal Pradesh to compare with the reference potato sample of FL 2027.

FL 2027 is the hybrid of Frito-Lay’s proprietary FL 1867 and the publicly bred Wischip variety of the University of Wisconsin. So there too a product of the public sector is involved. That is also the reason ICAR institutes themselves seek IPR on extant (existing) varieties; if ever the planting material becomes interesting to seed companies for crossing then the terms and conditions for use of the public variety can be negotiated.

Legal Safeguards

Successive governments have for long projected the PPV&FR Act as being a law in favour of farmers. If indeed it is, then the Authority must insist on legal interpretations that do not go against farmers.

Section 39(1)(iv) of the PPV&FR Act recognises farmers’ freedoms to save, use, sow, resow, exchange, share or sell their farm produce including seed of a protected variety. This is over and above all other provisions in the Act by virtue of the words ‘(n)othwithstanding anything contained in this Act’. The proviso to the section only puts an embargo on farmers with respect to the sale of branded seed of an IPR-protected variety. Section 28 of the Act grants exclusive rights to breeders who have registered their varieties. But as per the text of the law, the infringement provision in Section 64 is ‘subject to the provisions of this Act’ and therefore can be said to be subject to Section 39 as well. The three provisions have to be read harmoniously in the light of the legislative intent.

In the present cases, it is to be established if the farmers sold potato seed (to be cultivated), or the unprocessed potato produce that is the raw material to make Lay’s chips. In either case, the concerned authorities must clarify the legal situation. The government must be watchful of any dilutions of the so-called farmers’ rights by companies and courts.

PIH clearly seeks to use the legal system against anyone threatening its legally granted breeder rights. Seed MNCs have also gone after farmers in other jurisdictions, such as in USA and Indonesia to aggressively protect their IPRs. The most famous case being that of a Canadian farmer Percy Schmeiser sued by the biotech seed giant Monsanto for patent violation of its genetically modified Roundup Ready canola, when the seeds had accidentally landed on his farm.

Meanwhile, the farmer-friendly veil of the PPV&FR Act has clearly been lifted. The entrapment is evident.

—

[1] PepsiCo India Holdings Pvt Ltd versus Atop Food Products Pvt Ltd R/SCA No. 6244 of 2018

[2] PepsiCo India Holdings Pvt Ltd versus M/s Krishna Cold Storage Civil Suit No. 8 of 2018

[3] PepsiCo India Holdings Pvt Ltd versus M/s Prabhudas Patel & Others Civil Suit No. 7 of 2018

[4] PepsiCo India Holdings Pvt Ltd versus Bipin Patel – Commercial Trademark Suit Number 23 of 2019, Commercial Court at City Civil Court, Ahmedabad;

PepsiCo India Holdings Pvt Ltd versus Vinod Patel – Commercial Trademark Suit Number 24 of 2019, Commercial Court at City Civil Court, Ahmedabad;

PepsiCo India Holdings Pvt Ltd versus Chabilbhai Patel – Commercial Trademark Suit Number 25 of 2019, Commercial Court at City Civil Court, Ahmedabad;

PepsiCo India Holdings Pvt Ltd versus Haribhai Patel – Commercial Trademark Suit Number 26 of 2019, Commercial Court at City Civil Court, Ahmedabad

(Village Medhkampa, Taluka Vadali, District Sabarkantha, Gujarat)

[5] Full list of crops species that are eligible for IPR under the PPV&FR Act: http://plantauthority.gov.in/List%20of%20150%20Crop%20species%20registration%20under%20Extantaandfarmers.htm

[6] UP, WB, Bihar, MP and Gujarat are the top five states in potato production in India. http://agricoop.gov.in/sites/default/files/Monthly%20Report%20on%20Potato%20for%20March%202018.pdf

In a guest post, Shalini Bhutani argues that the Protection of Plant Varieties and Farmers Rights Act 2001 is likely to have a detrimental impact on the well being of farmers. She highlights the recent string of  lawsuits filed by PepsiCo India, asserting breeder rights in varieties of potatoes against farmers in Gujarat, to caution that the pro-farmer aspects of the legislation could be in serious threat.

SpicyIP Events

Pankhuri informed us of the 2019 WIPO-UNIGE Summer School that will be conducted in Geneva from June 24 to July 5, 2019. The deadline for applications is May 15, 2019.

Other Developments

Indian 

Judgments 

Nuvoco Vistas Corporation Limited v. JK Lakshmi Cement Limited and Another – Delhi High Court [April 15, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “CONCRETO” by using a deceptively similar mark “CONCRETA” for the sale of cement and other building materials. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the mark “CONCRETO”, and the Defendant’s use of a visually and phonetically similar mark to the Plaintiff’s mark would constitute infringement. It was further observed by the Court that the Defendant, being in the same trade as the Plaintiff should have been aware of its registered mark. The Court also dismissed the Defendant’s argument that its product was a different cement product, by stating that the registration of the Defendant’s mark was aimed at “cement” and not any special variety of the same.

News

• Comedian Kunal Kamra Could be Sued By BSE for Photoshopping Picture of Iconic Building
• Delhi HC Restrains Justdial From Using PVR Trademark On Its Platform, Observes Prima Facie Case Of Infringement
  
• LG patent hints at a smartphone with triple front camera setup
• Local pharma companies to challenge MNCs in pneumonia vaccine space
• Gujarat: 3 companies restrained from launching diabetes medicine
• Chennai: NGO to bring novel eye care for poor

International 

• Donald Trump Gets Called Out For GoT-Inspired Tweet

We’re pleased to announce that PHD Chambers of Commerce and Industry in collaboration with United IPR is organizing an interactive session on ‘Best Practices in IPR’ on April 26, 2019 in New Delhi. For further details, please read the announcement below:

Event on “Best Practices in IPR” this World IP Day at PHD House, New Delhi

In the spirit of celebrating this World IP Day, PHD Chambers of Commerce and Industry in collaboration with United IPR is organizing an interactive session on ‘Best Practices in IPR’ with a mission of creating IPR awareness on April 26, 2019 at 02:30 PM at the PHD House, 4/2, Siri Institutional Area, August Kranti Marg, New Delhi – 110016.

The event will begin with a Panel Discussion on various aspects of IPR by practitioners, academicians and dignitaries from the industry, law enforcement and prolific experts in the field of IPRs. Inspired by this year’s theme of the World Intellectual Property Office (WIPO) for World IP Day, the panel discussion would focus on the interrelation between IPR and the world of sports and on how IPR is a significant contributor in the steadfast growth of the industry.

It would be an open session with the dual objective of education and networking and also offers a free Intellectual Property Clinic, wherein the experts from the IPR Industry shall assist the members of community, students and industry with all the queries in relation to legal formalities for successful brand development and idea protection.

In order to avail free registration for the event, kindly send an email with your contact details to trademark@unitedipr.com.

We are pleased to announce that Indian Journal of Law and Technology (IJLT) is inviting original and unpublished manuscripts for publication in Volume 15. For further details, please see the call for submissions below:

The Board of Editors of the Indian Journal of Law and Technology (IJLT) is pleased to invite original and unpublished manuscripts for publication in Volume 15 due to be submitted by the 10^th of May, 2019.

About the Journal

The Indian Journal of Law and Technology (IJLT) is a student-edited, peer-reviewed, 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.

The previous issues of the IJLT have featured scholarly writings by distinguished scholars such as Jonathan Zittrain (Harvard Law School), Justice Michael Kirby (High Court of Australia), Yochai Benkler (Author of ‘The Wealth of Networks’), Gavin Sutter (Queen Mary University of London), Professor Stephen Hobe (International Institute of Space Law), and Shamnad Basheer (Founder, SpicyIP).

The Journal is presently indexed on research databases such as WestLaw, HeinOnline, the Legal Information Institute of India (ILI) and Manupatra. Following the policy of open access, all the articles from previous issues are available on our website.

Issue/Scope

Any broad area of law and technology. We have previously carried submissions on and invite submissions in the areas of:

• Blockchain and Cryptocurrency
• Cloud Computing
• Data Protection
• Free-Speech and Openness
• Hard and Soft Intellectual Property Rights
• Intermediary Liability
• Media and Entertainment Law in the Digital Age
• Pharmaceuticals and Access to Medicines
• Privacy Rights
• Technology, Innovation and Competition
• Telecommunications Policy and Regulation, etc.

This list is merely illustrative and we are happy to discuss other areas of interest as well. We generally encourage submissions with a developing country perspective or a comparative approach that benefits the developing world.

Word Limit and Footnoting Style

IJLT is now accepting submissions under the following categories:

1. Articles (5000-12000 words).
2. Essays (3000-5000 words) and
3. Case Notes, Legislative Comments, Book/Article Reviews (2000-6000 words).

We are also open to discussing potential submissions that are substantially longer or shorter. Please get in touch with us for further information. Please note that we do not accept unsolicited book reviews.

The above limits are exclusive of footnotes. Substantive footnoting is allowed.

Submission Guidelines

1. All submissions must be accompanied by a cover letter stating the name(s) of the authors, their institution/affiliation, the title of the submission and contact details.
2. An abstract (not more than 250 words) must be submitted.
3. Co-authorship (up to a maximum of 3 authors) is permitted.
4. The body of the paper shall be in Times New Roman, font size 12, 1.5 line spacing.
5. Footnotes should be in Times New Roman, font size 10, single line spacing.
6. Kindly follow the Oxford University Standard for the Citation of Legal Authorities (OSCOLA).

Format of Submission

 Please send in your submissions in MS/Open Word (*.doc OR *.docx OR *.odt), along with the following information:

1. Full Name of the Author
2. Position / Year of Study
3. Institutional Affiliation (if any)
4. Contact Details of the Author
5. An abstract of not more than 200 words

Deadline

Although, all submissions are accepted on a rolling basis, however the deadline for submissions for the 15th Volume is May 10^th, 2019. We will announce further deadlines on a necessity basis.

Please send original, unpublished papers to ijltsubmissions@gmail.com.

Please feel free to browse our website for further details (www.ijlt.in).

Contact

Nikhil Purohit

(Editor-in-Chief, IJLT)

Email: nikhilpurohit@nls.ac.in

Some of you may have heard of an exceptional book series on intellectual property (IP) called “Kritika”. Published by Edward Elgar and edited by the wonderful trio of Professor Peter Drahos, Hanns Ullrich and Gustavo Ghidini.

In their third volume, we (Rahul Bajaj and me) have contributed a chapter on the Indian patent office titled “Who am I? Of Patent Independence and ‘Adjudicative Regulators’”.

This SSRN link offers you a free download of the near final version of this piece. The link to the book series etc is here. If you cannot get hold of the final published piece, please let me know.

For those interested, the abstract is below. The paper cuts across patent law and constitutional/administrative law. And a bit of metaphysics as well (as evident from the title). It draws from this post of mine published in 2016.

It proposes a new label called “Adjudicative Regulators”. We’re hoping that this new brand could help define other government agencies as well that perform a significantly “adjudicative” task.

ABSTRACT

“Who am I? Of Patent Independence and ‘Adjudicative Regulators’”.

In this paper, we reflect on the question: who or what exactly is the patent office? And how best do we secure its judicial proficiency and independence? We offer a framework for assessing the above question, after cutting through the vast morass of often confusing case law in this regard that has failed to draw a conceptually sound distinction between the judicial, the quasi-judicial and the administrative.

We argue that agencies such as the patent office tasked with a high level of adjudicatory functions are predominantly “judicial” in character and ought to therefore be categorized as “Adjudicative Regulators.” As such they are to be vested with a significant degree of judicial competence and independence. We offer some broad suggestions in this regard.

Our frame is likely to be useful for characterizing other regulatory agencies with predominant judicial functions, and could well prove instructive for agencies in other countries with legal regimes similar to that of India.”

I also reproduce the introductory section below.

INTRODUCTION

Who am I? An eternal enigma that has confounded the best of existential philosophers. A question that might even be posed by institutions such as the patent office, as a recent controversy in India demonstrates.

While the Department of Industrial Policy and Promotion (“DIPP”), an Indian government agency that oversees the functioning of the patent office, labels the office as a scientific organisation, the Department of Expenditure (“DoE”) insists that it is nothing more than an administrative agency.

Although this titular tussle took place within a rather limited frame (the applicability or otherwise of certain service benefits in the form of a time bound career advancement scheme), it forces us to interrogate the true nature of the patent office.

An interrogation that assumes prominence given a very controversial allegation last year that the Indian government made a private secret assurance to US pharma lobbies that it would not invoke compulsory licensing provisions in the Patents Act, 1970  for commercial purposes; an assurance that raises profoundly troubling questions about the autonomy and independence of the patent office.

To be sure, the Government issued a subsequent clarification stating that it never made any such assurance. However, the meekness of the clarification reinforces the suspicion that the Government may not be averse to the idea of withering away statutory safeguards such as compulsory licensing. Indeed, soon after the Government issued this clarification, the National Human Rights Commission asked the Government to submit a report as regards its stance on this issue. Further, Lee Pharma and BDR Pharma, two generic manufacturers that were seeking the grant of a compulsory license, chose not to appeal against the rejection of their application in light of reports of this private assurance.

Questions as to the integrity and independence of the office again took centre stage when a patent controller (Hardev Karar), who denied a patent to a major US pharmaceutical company over a highly contentious Anti HCV drug (Sovaldi) was taken to task by his superiors. Soon after Karar’s ouster from the case (pursuant to a court order remanding the case for a fresh determination to the patent office), another patent official came to the exact opposite conclusion; and went on to grant the patent, deploying reasoning that can only be described as dubious.

All of this throws into question the independence of the patent office. It is from this vantage point that we ask the larger question: Who or what is the patent office? And how best do we secure its independence?

We begin by exploring the current controversy in India as to whether or not the patent office is a “scientific” establishment or merely an administrative office. We then point to the fact that Indian courts have characterized executive agencies vested with “judicial” functions (such as the patent office) as “quasi-judicial” bodies. However, there is, as yet, no conceptually clear boundary between the purely administrative, the quasi judicial and the purely judicial. Courts are yet to define the term “quasi-judicial” with any precision.

While steering clear of such definitional precision (a task we fear may demand a full-fledged paper in its own right), we suggest that, at the very least, quasi-judicial bodies could be categorized into two classes: those whose predominant function is a judicial one (such as the patent office), from those whose judicial function is merely incidental. We propose that agencies at the higher end of the “judicial” spectrum be categorized as “adjudicative regulators” and vested with a significant degree of autonomy and independence.

A number of prominent scholars have argued that the patent office is a regulatory agency and that patents ought to be viewed through a regulatory lens. The US judiciary has drawn on this sentiment, albeit in the context of administrative law and the extent of deference to be accorded by courts to patent office decisions.

 We draw on this insight and develop it further to suggest that the patent office is no ordinary regulator, but one whose predominant function is adjudicative in nature. As such, we label it as an adjudicative regulator (AR).

We end by offering concrete suggestions for vesting adjudicative regulators such as the Indian patent office with greater autonomy and independence.”

ps: image from here.

Image from here

We’re pleased to pleased to bring to you a guest post by our Fellowship applicant, Arushi Gupta. Arushi is a 2nd year student at Maharashtra National Law University, Mumbai. This is her second submission for the Fellowship.

Article 13 (of the EU Directive) and The Economics of Copyright Enforcement in the Digital Age

Arushi Gupta

On 26^th March 2019, the Parliament of the EU passed the amended EU Copyright Directive. In previous posts on SpicyIP, here and here, the developments of the Directive were tracked. By way of amendment, the EU inserted Article 11 and Article 13 (Article 15 and Article 17, respectively, in the final text). Article 11 is a “link tax” which mandates platforms to pay license to link out to news publishers. Whereas, Article 13 states, “online content sharing service providers (OCSSP) and right holders shall cooperate in good faith in order to ensure that unauthorized protected works or other subject matter are not available on their services.” It departs from the current system of “notice and takedown” (NTD) (also followed in India) in which rights-holders issue a notice to intermediaries to remove infringing content. The new system is “notice and staydown” (NSD), which mandates OCSSPs to put in “best efforts” to prevent unauthorized copyrighted material from uploading and procure licenses from right holders. For this, OCSSPs have to invest in upload filter technology. This faced significant criticism from experts, activists, rights-holders and the business world.

Problems with Article 13

The aim of Article 13 is twofold. First, it is to make OCCSPs pay right-holders and reduce the value gap. Second, it is to reduce infringing content on the Internet. There would be drastic consequences. For the business world, the impact would depend on the revenue. The reform is aimed at making the likes of Google, Facebook and You Tube rightfully remunerate rights-holders. However, giants like Google might actually benefit since it sells substantial amount of upload filter technology. On the other hand, small or new companies might find the cost for content filter technology unsustainable or a barrier to their entry, respectively.

This reform oversimplifies artistry. Today, the Internet is thriving on inspiration. To create more art, artists are relying on previous art. This is especially true for fandom, remix, and sites like Pinterest, Instagram or Deviant Art. This is the “participatory culture”. Such reform would chill participation and free speech.

Critics have assailed upload filter technology as a “censorship machine”. But, they fail to take into account that regardless of law, intermediaries were likely to move towards automation (for e.g., You Tube’s content ID). Further, other forms of censorship (for e.g., nipples, political content) already exist. Thus, censorship is not a unique harm of Article 13.

Article 13 was uniformly criticized. Inadvertently, every criticism was the effect of inefficient technology. In response, some have argued that this signals the end of copyright law in the digital age.

The Role of Copyright in the Digital Age

Let’s not be hasty. In this post, I would make an economic assessment of copyright law and Article 13 to understand the future of copyright in the digital age. The economic rationale for copyright is the trade-off between the cost of creation and the incentive to create. It is assumed that no one creates for free. Thus, copyright creates an artificial scarcity and blocks access to the work to charge an admission in order to prevent free riding. This is a positive externality, which the law internalizes. These benefits are internalized as long as the costs of internalizing do not exceed the social benefits. Further, it is important to reduce social costs. Here, exception of fair use/dealing is relevant.

In the digital space, it is impossible to block access to the work. Thus, the problem of copyright enforcement crops up. If there were no copyright, then there would be free riding. Copyists would offer those works for lesser, which would reduce the profits of innovators and they would be unable to put more in research and development and justify the cost of authorship. In the digital field, this is exacerbated since the cost of copying is virtually zero. Thus, removal of copyright is no solution at all. Rather, it is the enforcement strategy that has to be assessed.

The NSD regime establishes intermediary liability to remove not only duplicate copies but also works of similar kinds. To understand the economics of the regime, Martin Husovec used the Learned Hand formula. This is a rule of negligence, which calculates when the duty of care arises. It is premised on the understanding that a rational, cost-minimizing individual would prevent the harm when the investment in precaution is lower than the cost of the harm sustained. According to the formula, the intermediary is liable when B<PL where B is the cost of taking precautions and PL is the product of the probability of the harm (P) into magnitude of the harm (L). The preference of precaution should take into account the social costs. Thus, in simple terms, the benefits (PL) must outweigh the cost (B) to trigger intermediary liability (B<PL).

Interestingly, due to automation, B decreases. Thus, even in works with a modicum of creativity or where PL is otherwise lower (e.g., when right holders do not want to enforce rights or are not gaining benefits from doing so), there is protection of copyright. Without automation, B is higher, which means the cost of enforcement is higher. However, with automation, more works are “copyright worthy”. In fact, automation supports copyright!

The new regime is not a rule of strict liability that intermediary liability is triggered as soon as copyrighted material is uploaded on its platform. Rather, liability is triggered when the intermediary has the requisite knowledge that the uploaded work is copyrighted. Under Article 13, the benefit is that the intermediary cannot escape liability if it had pre-requisite knowledge of the ownership of the work or was notified by the right holder of the same. Thus, NSD does not remove all content but the content, which the intermediary knows lacks authorization.

Thus, the shift is the cost of screening from right-holders to intermediaries to target the major problem with NTD. Under NTD, right-holders could not cope with the amount of infringing content online. Thus, they could not screen all the content and notify the intermediary, which resulted in users’ free riding. Inevitably, to solve this problem, either the right-holder or the intermediary had to invest in content filtering technology (or human resources).

Article 13 solves this problem with respect to automated content, which can easily be removed. Thus, the intermediary liability is indeed triggered when B is lower than PL, which means that intermediaries do not face higher costs when removing infringing content that is harming right-holders. The social cost is constant. However, the Internet and copyright is more complicated than that.

With respect to imperfectly automated content (for e.g., fair use, public domain work), Article 13 creates a unique social cost of over-blocking because the technology is not well equipped to deal with exceptions and limitations of copyright law. Thus, it creates false positives. Ideally, in these cases, intermediaries should opt for semi-automation or manual. Then, B would rise. B>PL and liability would not arise.

However, faced with liability, they would choose the most commercially viable option. Thus, under Article 13, there is overuse of automation. Due to overuse of automation, Article 13 increases social costs. Historically, copyright law emerged in response to printing technology and the labor invested in order to create a work. Its architecture restricts others from making “copies” of a work. It is based on the romantic idea of authorial genius or that a work can originate from a single author. However, the Internet is built on dialogue between users and works. Professor Lawrence Lessig describes this as the “read and write” culture. The Internet thrives on transformation of works, which occurs when users contribute value to the original work. Therefore, Article 13 hurts participatory culture and threatens the foundation of democratic content generation on the Internet.

Article 13 would only succeed once it balances the trade-off perfectly. This would happen when technology would be able to take into account ‘fair use’. Fair use does not “free ride” on original copyright as it neither reduces the economic value of the work nor does it substitute the original. Thus, it does not affect the return on the work and therefore, the incentive. Rather, it lowers the social cost as it allows others to use the work. If properly implemented, Article 13 would be the perfect solution, as it would lower the costs by internalizing the positive externality and providing a high incentive to the right-holder. To this effect, lowering the copyright protection in derivative works (which could either limit the term of protection or type of works, for e.g., exclude sampling, remixes, fan fiction) or exempting non-commercial derivative works are good solutions. In other instances, perhaps even in commercial works, fair use can be permitted when the transaction cost of monopoly is used to block social benefits. Under Article 13, the exception of pastiche, parody and criticism accounts for this.

From the business perspective, there were several arguments raised against the viability of Article 13 as it raises transaction costs for new and small intermediaries. Article 13 has essentially mandated the use of upload filter technology, which is unviable for small intermediaries. Further, big players might develop and keep the technology with themselves as a competitive advantage over small players. Thus, the market, which under the previous regime had more incentives to update technology and inevitably would have switched to automation, is now prematurely forced to do so. Article 13 was unnecessary and will hurt the market. In a heterogeneous society, like the Internet, the cost (upload filter technology, automation) is higher. In comparison, the cost of externalities is lower. In such a situation, the cost of intervention of the State is more than the benefit derived. Thus, the State should not intervene, as it is an impediment to economic growth. This means that the market itself could have solved the market failure (of poor copyright enforcement) and internalized these externalities by improving the cost of automation and enhancing innovation.

Thus, the overuse of automation is hurting businesses, right-holders and the Internet culture. Until technology satisfies our demands, it has no place in law. Thus, Article 13, although well intentioned, will be EU’s undoing and hurt its Internet.

Will India Succumb to the Dark Side?

aka the Priority Watch List Strikes Again.

For the 27^th year in a row, India has made it to the infamous Priority Watch List in the Special 301 Report – an annual classification exercise by the office of the US Trade Representative, meant to put pressure on nations allegedly not complying with United States’ domestic standards for intellectual property protection. The list classifies certain countries as belonging to a ‘watch list’, or a ‘priority watch list’, and is meant to strengthen any potential trade action that the US may wish to bring against such countries in international forums like the WTO or in bilateral trade agreements.

We have covered previous inclusions into this list here. While the report points out to important inadequacies in India’s IPR regimes (such as patent processing times, or the exports of counterfeit pharmaceuticals), what is particularly notable for the Special 301 report is the ‘patently’ obvious hypocrisy and double standards at play, the US’s attempts to arm twist the domestic policies of sovereign nations (despite their compatibility with multilateral norms like the TRIPS), and the strong influence that lobbying parties like the Pharmaceutical Research and Manufacturers of America have on the outcome of the report.

This year’s Special 301 report continues the USTR’s grouse with several Indian laws and TRIPS-compliant exemptions, particularly those utilised for access to medicines and access to knowledge. For example, the report criticises the ‘potential threat’ of compulsory licensing, even though, as Prof. Basheer has pointed out, the US continues its own forms of granting ‘judicial’ compulsory licensing). Further, the report lashes out against the patentability standards under the Indian Patents Act, stating “In the pharmaceutical sector, Section 3(d) of the India Patents Act restricts patent-eligible subject matter in a way that fails to properly incentivize innovation that would lead to the development of improvements with benefits for Indian patients.” Recall that Section 3(d) is meant to prevent the evergreening of patents, which was upheld by the Supreme Court in Novartis v Union of India.

The report also criticises the Indian Government’s efforts to require FRAND licensing for GM products with seed companies, even though, as we reported on the blog, these guidelines were subsequently withdrawn 3 years ago.

Interestingly, another point of criticism in the report pertains to the recent online broadcasting licensing saga playing out between music publishers and online streaming services. While the issue is sub-judice, the report points out that “overly-broad exceptions for certain uses have raised concerns about the strength of copyright protection and complicated the functioning of the market for music licensing.” It also praises India’s accession to the WIPO TRIPS+ treaties (colloquially called the internet treaties) and calls for legislative action to reflect the treaties requirements.

More Bluster than Bite?

The outcome of the Special 301 report relies upon the US following up its findings with actions in international forum. Generally, the USTR recommendations seem to be ignored by the target nations, although one objective of the exercise is to prioritise countries against whom the US intends to pursue action in the WTO dispute settlement proceedings.

However, the Trump presidency has somewhat changed the dynamics of Section 301, the namesake law which allows unilateral executive action in order to enforce US trade rights. The law has resulted in tariffs and trade barriers being imposed against China, with one sticking point being the lack of enforcement of US patents by the Chinese Government. Whether The Donald will turn his eyes to India next, and what implications this could have, though, remains to be seen. At the very least though, we can expect the US’s gripes about India’s legitimate public interest patent and copyright exemptions to continue.

Thematic Highlight

In her second application for the SpicyIP Fellowship 2019-20, Arushi wrote a post on Article 13 (now Article 17, in the final text) of the EU Directive. In her post, she focusses on the economic rationale of copyright law i.e., the trade-off between the cost of creation and the incentive to create. She concludes that Article 13 fails to balance this trade-off due to overuse of automation and the threats it poses to the participatory culture of the internet.

Topical Highlight

Divij wrote about India’s inclusion in the US Trade Representative Special 301 Report 2019. In his post, he mentions that India has been included in this list for the last 27 years. The Report points out several inadequacies in the Indian IPR regime, some of them being patent processing times, exports of counterfeit pharmaceuticals, FRAND licensing for GM products with seed companies (which was withdraw later) etc.

Other Posts

Prof. Basheer wrote a post on “Who am I? Of Patent Independence and ‘Adjudicative Regulators'”, a chapter in the third volume of the Kritika book series, which was jointly written by him and Rahul Bajaj. In their work, they delved into the role and functions of the Indian Patent Office and concluded that since the patent office is often expected to carry out a number of adjudicatory functions which  are “judicial” in character, they should be recognised as “Adjudicative Regulators.”

Pankhuri announced that the PHD Chambers of Commerce and Industry, in collaboration with United IPR, organised an interactive session on ‘Best Practices in IPR’’. The event was scheduled on April 26, 2019  and took place in New Delhi.

Further, she also notified us about a call for submissions for Volume 15 of the Indian Journal of Law and Technology. The last date for submitting original and unpublished manuscripts for the same is May 10, 2019.

Other Developments

Indian

Judgments

Bata India Limited v. Chawla Boot House and Another – Delhi High Court [April 16, 2019]

The Court granted an interim injunction restraining the Defendant No. 2 from infringing and passing of the Plaintiff’s mark “POWER” by using a deceptive similar mark “POWER FLEX” for the sale of footwear. The Court deleted the name of the Defendant No. 1 on the grounds that it was a mere retailer, not engaged in infringement. In arriving at the decision, the Court noted that though the Defendant No. 2’s primary mark was “RED CHIEF”, it had used the mark “POWER FLEX” inside its shoes on a standalone basis. The Court further observed that the conflicting marks belonged to the category of footwear, and the Defendant No. 2 could not have pleaded ignorance about the existence of the Plaintiff’s famous mark. The Court also rejected the Defendant No. 2’s argument pertaining to the mark “POWER” being descriptive in nature because of its used in relation to footwear.

Living Media India Limited and Another v. Vijayan Madhavan Praveen and Another – Delhi High Court [April 16, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “INDIA TODAY” by using a deceptively similar domain name “indiatoday24X7.com” in respect of online news services. In arriving at this decision, 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 the Defendant had failed to appear or file a written statement.

Koninlijke Philips N.V. and Another v. Amazestore and Others – Delhi High Court [April 22, 2019]

The Court granted an ex parte permanent injunction restraining the Defendants from engaging in piracy of the Plaintiffs’ registered design of beard trimmers, and from further infringing the copyright and trade dress in the trimmers’ packaging. The Court observed that on a close comparison of the products, it appeared that the Defendants’ products very closely resembled the aesthetics of those of the Plaintiffs’. It was also noted that such imitation on part of the Defendants was mala fide with an intent to operate in the same industry as that of the Plaintiffs. The Court observed in relation to copyright and trade dress that the Defendants had engaged in brazen reproduction of the Plaintiffs’ packaging in order to create deception among the buyers. Furthermore, the Court awarded compensatory damages to the tune of Rupees 2.15 crores in favour of the Plaintiffs for their repeated infringements, as well as aggravated damages to the tune of Rupees 1 crore, in light of the Defendants’ conduct of contempt in respect of the interim injunction.

News

• Delhi HC allows Alembic, Natco Pharma to export Bayer drug ingredient
• Matrimony.com obtains junction against Kalyan Matrimony, others
• Many essential drugs priced much higher than manufacturing cost: WHO
• Spotify will remove all of Saregama’s music within 10 days
• Willing to grant licenses to farmers: PepsiCo submits in potato infringement suit
• NBA issued guidelines on Access to Biological Resources and Associated Knowledge and Equitable Sharing
• IPR & trademark violation: HUL steps up legal action to curb counterfeit menace
• Indian start-ups file 200 patents; Wipro, TCS, RIL among top intellectual property assets creators in US: NASSCOM

International

• Apparel and Footwear Giant Nike Files Trademark Application for Cryptokicks
• Universal Music’s Trademark Application for “As Heard On TV” Denied by the U.S. Patent & Trademark Office
• China Raises Top Fine for Trademark Infringement, Tightens Rules on ‘Squatting’
• Court Reverses Misguided Fair Use Ruling; Restores Order For Photo Copyrights
• Amazon tries bringing in lawyers for sellers claiming patent infringement
• World IP Day celebrated around the globe, Special 301 released, and IP Australia annual report

We’re pleased to inform you that the Texas A&M University is offering scholarships (covering 50% of the tuition fees) for prospective students from India for its IP Law as well as General LL.M. and M. Jur. programs this year. For further details, please read the announcement below:

Texas A&M University Launches in India in a Big way for its LL.M. and M.Jur. Programs with Offers of Scholarships to Indian Students

The Texas A&M University launches into India in a big way in 2019, announcing scholarships (covering 50% of the tuition fees) for prospective LL.M. and M. Jur. students from India this academic year. The University is also committed to providing conditional TOEFL waivers and processing applications from Indian applicants early this year.

As a Tier 1 research institution and the sixth largest university in the United States, Texas A&M University is widely recognized both within and outside the United States, making our degrees, including graduate law degrees, highly marketable. The University’s IP Law program is nationally ranked in the US.

The University is located in Fort Worth which is a vibrant international business hub and home to more than 20 Fortune 500 companies and top-ranked in job growth, livability and safety as a top 20 “Best Place to Live” by U.S. News and World Report.

Texas A&M LL.M. & M. Jur. Programs

Texas A&M’s graduate law degrees provide rigorous classroom and online instruction, experiential learning, practical drafting skills and a wide range of professional development and networking opportunities to prepare students for global success. Graduate students are immersed in the study of law alongside J.D. students in the classroom and in online learning.

LL.M. Program

If you’ve ever considered earning your Master of Laws, there is no better place than Texas A&M University School of Law. The school offers two in residence 24-credit LL.M. programs: (a) LL.M. in Intellectual Property Law and (b) General LL.M. The one-year LL.M. program provides a concentrated post-graduate legal study program for practicing lawyers or graduates of foreign or domestic law schools. Students have the option to pursue a thesis or non-thesis LL.M. degree and may be enrolled on either a full-time or part-time basis. The General LL.M. degrees are customizable and designed for students who wish to develop a specialization in a particular area of law, for international students seeking an understanding of U.S. law and procedure, including those who may wish to sit for an eligible Bar Examination in the US. The LL.M. in Intellectual Property is a structured program for lawyers seeking world-class instruction in copyright, trademark, patent, and international IP law. The Master of Laws (LL.M.) in Intellectual Property degree is for lawyers i.e. those who have already earned a J.D., LL.B. or comparable law degree. This degree targets practicing attorneys, U.S. law school graduates and international law students, including those wanting to sit for the Texas ​Bar ​Examination.

M. Jur. Program

We also offer three in residence 30-credit M. Jur. programs designed for professionals who seek legal education and training but who do not plan to practice law: (a) M. Jur. in Intellectual Property Law and (b) General M. Jur. These 1-2 year programs provide students with an interest in areas such as business, finance, energy, or administration with a solid understanding of the legal issues relevant to their career and prepare them to interact most effectively with lawyers and the legal system. The M.Jur. in Intellectual Property is a structured program for ​IP professionals seeking world-class instruction in copyright, trademark, patent, and international IP law. Master of Jurisprudence (M.Jur.) in Intellectual Property degree for non-lawyers – the first of its kind in Texas. This degree targets those who do not plan to practice IP law, but whose careers can benefit from IP education. Potential M.Jur. candidates include patent and trademark agents, technology managers, artists, writers, musicians, inventors, scientists, engineers, software developers, marketing specialists, government officials, business executives, public policy experts, journalists, and academics and graduate students in non-law disciplines.

Texas A&M Intellectual Property Graduate Program

In today’s global, information-based economy, it is more important than ever to acquire a sophisticated understanding of different areas of law. Whether you pursue an IP career or one in natural resources, or, own a start-up or are involved in crafting IP or technology policies for your country, our uniquely designed LL.M. and M.Jur. graduate degrees will prepare you for the complex and ever-evolving technology and law landscape.

​There are many reasons ​why one will want to study​ IP at Texas A&M Law. Our main features include:

• Nationally ranked IP program: Texas A&M Law’s IP program is ranked consistently ranked as a top IP law programs in the United States by U.S. News and World Report.
• World-renowned faculty with ​​7 full-time IP professors: Learn from leading scholars and practitioners in this specialized ​area, who will serve as ideal mentors for your IP career. The IP faculty at the law school is internationally most diverse when compared with other US law schools. The seven IP faculty members include Prof. Srividhya Ragavan, a graduate of National Law School of India University (NLS), Bangalore. The other six members are Prof. Peter K. Yu, Prof. Irene Calboli, Prof. Glynn S. Lunney, Jr., Prof. Saurabh Vishnubhakat, Prof. Jeff Slattery and Prof. H. Brian Holland. Several of the faculty including Prof(s). Peter Yu, Irene Calboli and Srividhya Ragavan focus on the trade regime and intellectual property issues involving India, China, Asia and Europe.
• Innovative curriculum with over 20 IP courses: Texas A&M Law offers an expansive curriculum of IP courses, covering a wide array of current topics while providing real-world practical experience.

Further Information

For more information on the Texas A&M University’s graduate law degrees, the application process or the scholarships, please visit our website. Also, TAMU hopes to be locally present in Bangalore, India through Shōōnya Consultancy Services. Interested candidates may directly call or write to Ananya Gupta from Shōōnya Consultancy Services at:

p: (+91) 7204686355

m: (+91) 8660325611

w: shoonyalegal@gmail.com

e: shoonyaconsultancy@gmail.com

Recently, the Delhi High Court took cognizance of the inconvenience caused to litigators due to vacancies at the IPAB (covered on the blog earlier here and here) and issued a notice to the Department of Industrial Policy and Promotion (DIPP) demanding a status report on the appointment of Technical Members to the IPAB. The status report submitted to DIPP revealed that advertisements to fill the posts of Technical Members for the Copyright and Trademarks side (2 members each) and Patents side (1 member) had been issued on July 25, 2018, and the DIPP is currently in the process of interviewing candidates that have applied and shall complete appointments within 3 months. The Delhi High Court fixed the matter for May 24, 2019, for progress updates.

Image from here. 

In the previous part of this post, I had argued that there is no exception to the quorum requirements on the basis of the nature of the order. Therefore, even if the orders passed by the IPAB without quorum were administrative orders (which I argued were not), they would not be free from the quorum requirements.

In this part of the post, I try to delve deeper into Section 84 of the Trade Marks Act and check whether the Chairman’s authority can override the quorum requirements, to allow for a single member bench.

Section 84: Scope for Manoeuvre?

The root of the obligation that requires one Judicial Member and one Technical Member to form a quorum at the IPAB is Section 84(2) of the Trade Marks Act. It states that:

Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification2 in the Official Gazette, specify.

However, Section 84(3) ostensibly creates some exceptions to this requirement:

(3) Notwithstanding anything contained in sub-section (2), the Chairman—

(a) may, in addition to discharging the functions of the Judicial Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the case may be, the Technical Member, of any other Bench:

(b) may transfer a Member from one Bench to another bench:

(c) may authorise the Vice-Chairman, the Judicial Member or the Technical Member appointed to one Bench to discharge also the functions of the Judicial Member or the Technical Member, as the case may be, of another Bench.

It is clear that Section 84(3) grants the Chairman some powers to ensure that benches meet the quorum requirements in certain extenuating circumstances. For instance, under Section 84(3)(a), the Chairman has the power to serve on more than one benches in cases of vacancies or shortages in personnel. Similarly, under Section 84(3)(c), the Chairman has the authority to grant the same power to any other member of the IPAB in order to fill vacancies in other benches.

However, I would argue that a more elaborate discussion on the meaning of Section 83(3) is warranted, especially in the context of whether the Chairman’s power to fill vacancies allows him to fulfil a dual role on a single bench. As a matter of interpretation, this question boils down to: whether the phrase ‘any other Bench’ in Section 84(3)(a) includes the Chairman’s Bench?

‘Any other Bench’: Does it include the Chairman’s Bench?

The meaning accorded to the phrase ‘any other bench’ under Section 84(3)(a) is crucial to the question of whether the Chairman’s authority can overcome the quorum requirements by creating a single member bench. If the interpretation of the phrase includes the Chairman’s bench, then the Chairman’s authority will constitute an exception to the quorum requirements. If the interpretation does not include the Chairman’s bench, then the authority of the Chairman is limited to allowing one member to serve on multiple benches, but not to allow for a single member to serve a dual role on one bench.

A plain interpretation of Section 84(2)(a) would suggest that ‘any other Bench’ would not include the Chairman’s bench. This is because the same provision refers to the Chairman’s bench as ‘the Bench’ and then goes on to use the phrase ‘any other bench’. The use of different phrases would, therefore, mean that ‘any other bench’ would not include the Chairman’s bench. Such an interpretation of the IPAB would also sit well with its objective to ensure that intellectual property matters are heard not only by judges but also persons who are experts in the technical aspects of the subject matter of the intellectual property rights. (Although realists may say that in the absence of an exception to the quorum requirements, most cases are being heard by judges of the High Courts anyway, and not technical members).

However, it is arguable that this plain interpretation of Section 84(3) is inadequate since it does not pay heed to the non-obstante clause in the chapeau of the provision. Section 84(3) begins with: “Notwithstanding anything contained in sub-section (2)”. This indicates that what follows in Section 84(3) is contradictory to the rule laid down in Section 84(3). I would argue that the plain interpretation of Section 84(3) does not lead to any contradictions with the rules in Section 84(2), and is therefore suspect for not according meaning to the non-obstante clause.

Let us examine this argument in greater detail. Section 84(2) lays down one requirement – that a bench shall consist of two members – one Judicial and one Technical Member. The plain interpretation above does not contradict this requirement. It only enables the Chairman to ensure that all benches fulfil the quorum requirements by authorising himself or any other member to sit on more than one bench. Since Section 84(2) is not the provision that places a bar on the number of benches a particular member may sit on, there is no contradiction. Further, Section 84(2) also begins with the phrase “Subject to the other provisions of this Act“, which not only indicates that the legislature intended to create exceptions to it, but also that there must be a provision in the Trade Marks Act that contradicts it, lest this phrase would be left redundant as well.

To accord meaning to the chapeau of Sections 84(2) and (3), one would have to read the phrase ‘any other Bench’ as one would in ordinary English, broadly. It would then include the Chairman’s bench, thereby allowing him to pass orders on a single member bench and contradicting the requirement of two members on a bench laid down under Section 84(2).  Such an interpretation gives greater power to the Chairman to ensure proceedings continue and matters are heard, especially in situations such as the present one, where there is a shortcoming of members in the IPAB.

It would seem that neither of these interpretations is desirable because the plain interpretation would disallow the functioning of the IPAB right now, and the alternative interpretation may be stretching the boundaries of interpretation beyond what the legislature may have intended.

Conclusion

The current situation of the IPAB is not desirable, but it is similar to the situation of many of the other tribunals in India. Recently, a 5 judge bench of the Supreme Court began hearings of petitions concerning the poor state of the tribunals in the country, including the NCLAT, National Green Tribunal and IPAB among many others. The court passed an order that requires the government to streamline the functioning of tribunals by bringing their administration under a single nodal agency of the government. The order has seemingly yielded immediate results, with the Cabinet approving the creation of 3 extra posts for Judicial and Technical Members each, at the NCLAT. One can only hope that the same enthusiasm is shown towards appointments at the IPAB as well.

I would like to thank Prof. Shamnad Basheer, Pankhuri Agarwal and Mr Himanshu Arora for helpful discussions. All errors, however, remain solely my own.

Picture from here. 

We’re pleased to announce that the World Intellectual Property Organisation (WIPO) is organizing the International Conference on Intellectual Property and Development, entitled “How to Benefit from the IP System”, on May 20, 2019 in Geneva. For further details, please see the announcement below:

International Conference on Intellectual Property and Development: How to Benefit from the IP System

Join stakeholders from government, civil society, IGOs, NGOs, industry and other sectors to share insights in different domains of intellectual property (IP) and development. Explore national, regional and international knowledge and experience on recent IP and development issues, and strategize on how best to benefit from the IP system.

What

International Conference on “IP and Development – How to Benefit from the IP System”, organized in the context of WIPO’s Development Agenda.

Program Highlights

– Welcome address by Mr. Francis Gurry, Director General of WIPO

– Introductory remarks by Ambassador H.E. Mr. Hasan Kleib of Indonesia, Chair of the CDIP

– Keynote address by Ambassador H.E. Ms. Amina C. Mohamed, Cabinet Secretary of Ministry of Sports, Culture and Heritage of Kenya

Four Panels

Participants will explore the following panels:

– How the IP system benefits innovation.

– How the IP system benefits creativity.

– How the IP system benefits global issues.

– Open discussion on the challenges and opportunities of the IP system in the current world.

When

Monday, May 20, 2019

Where

WIPO New Conference Hall (with interpretation in the six UN languages)

Webcasting (English and the floor language) at: https://www.wipo.int/webcasting/en/

More Information and Registration 

More information on the Conference, including the full list of Speakers, is available at: www.wipo.int/meetings/en/2019/ip_development_conference.html. Registration is open at www3.wipo.int/registration/en/form.jsp?meeting_id=51386.

On April 15, 2019, the Bombay HC imposed costs of Rs. 5 crores in its order in Nippon Steel & Sumitomo Metal Corporation vs. Kishor D Jain & Anr. Nippon Steel, represented by Remfry and Sagar, filed a suit when they received a complaint made to them by Yanbu Steel Company, a trading company based in Saudi Arabia, about the quality of some Carbon Seamless Pipes which were to be used in oil plants. The company informed Nippon Steel that they were falsely induced by the defendants to believe that these pipes were manufactured by Nippon. It was later discovered that the pipes were manufactured by a third-party manufacturer. The defendants duped the company by affixing the Nippon Steel’s trademarks on the pipes and providing forged certificates bearing Nippon Steel’s trademarks/logos to the company.

Justice J.S. Kathawalla opened his order with Mahatma Gandhi’s famous quote “There is a sufficiency in the world for man’s needs but not for man’s greed”. He made pertinent observations on the necessity of good quality pipes in sensitive areas; if pipes in oil plants do not meet the requisite quality and standards, they are bound to lead to accidents and disasters.

Noting that there was a need to send out a serious message and to deter other such unscrupulous entities from providing spurious pipes, the Court decided to deal with the matter with an “iron hand” and imposed Rs. 5 crores costs on the defendants. The Court further directed that the costs were to be paid to the Tata Memorial Hospital, a charitable organisation based in Mumbai.

It is interesting to note that the Bombay HC has imposed exemplary costs in the past citing similar concerns. (Divij had previously reported about a Bombay HC order in which exemplary costs of Rs. 1.5 crores were imposed for trademark infringement of pharmaceutical products.). The Court’s direction to pay such costs to Tata Memorial Hospital, while well-intentioned, is subject to scrutiny. In a post on a Delhi HC order imposing costs in a trademark infringement matter and directing the same to be used for planting trees, I had questioned the Court’s authority to deal out directions which were unrelated to the heart of the dispute. Irrespective of whether the Court has the power to deal out such directions related to the usage of costs, it is heartening to see the Court take a hard-line approach to such cases of counterfeit having wide public health and safety implications.

Image from here

We’re pleased to announce that the Inter University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT is conducting an empirical study orientation programme on Research Methods in IPRs on June 29, 2019. The deadline for submission of application forms is May 25, 2019. For further details, please read the announcement below:

Research Methods in Intellectual Property Rights: An Empirical Study Orientation Programme

Intellectual Property Rights is one major field of interest for the international community, and the relevance of empirical studies in IPR related areas is increasing with rapid changes in the market behaviour. However the dearth of workshops and training programmes on empirical data analysis in IPR studies poses a serious challenge to researchers, as a wrong methodology may significantly affect the authenticity and reliability of their research findings. The training programme aims at addressing this crucial problem by imparting training to IP researchers to properly conduct a research, and analyse the results of empirical study to support their findings in IPR policy research.

About the Workshop

The current workshop is an effort to enrich research scholars and faculties in intellectual property related areas on research methodology with hands-on training. This workshop is open for academics who are working in the areas of intellectual property law. There is a clear transition from conceptual to empirical research work in IP research. The core objective of this workshop is to make researchers confident in analysing empirical data in their fields of intellectual property research. By providing an overview of empirical studies in different areas of IP, this workshop intends to help the target group in learning more about how to approach and use data in their own research and scholarly work. All the sessions will be comprised of lectures and practical exercises.

Course Structure

• Necessity of empirical studies in IP
• The basics of empirical research – selection and collection of data, precautions to be taken while selecting data etc.
• Use of Google search engine and web scrapping techniques in IP research
• Making sense of IP data
• Introduction to Microsoft Excel in IP data management
• Literature review in IP research using Mendeley and preparing bibliography
• Use of web scrapping in IP research

 Eligibility

All registered Ph.D. scholars and faculty in recognized law universities/legal research institutes from any branch of IPR may send their application (online) for the workshop. The candidates should have basic knowledge of IPR and computer applications. The list of selected candidates will be published on May 25, 2019.

Intake

Since this is workshop in the mode of hands-on training, maximum intake for the course shall be 18 participants. (12 outstation and 6 within state). The selection committee will select the participants for hands-on training based on the stage of their research work, credentials given in the registration form and biography. The selected participants are requested to bring their own laptops to get hands-on experience in handling software applications introduced during the Course.

Application Procedure

Application can be submitted only through the online link provided in the website of the department. No other modes of submission like courier or other offline modes will be accepted. Registration form is available at http://ciprs.cusat.ac.in. The link shall remain open till 5 PM on 25^th May, 2019.

Registration Fee

There is a registration fee of Rs. 1000.  Accommodation to outstation participants will be provided on twin sharing basis, for which charges will have to borne by participants. No TA/DA shall be provided to the participants. The participants who require accommodation has to intimate the organizers within 7 days of publication of list of candidates selected for the workshop.

Online Registration Form

http://tiny.cc/0ke24y

Dates to Reckon

• The tentative date of workshop is 29^th June, 2019.
• Last date for submission of application form is 25^th May, 2019.
• List of selected candidates will be published on 1^st June, 2019 and shall be communicated to the participants via their e-mail address provided at the time of submission of online application.
• Venue: Conference Hall, Inter University Centre for IPR Studies, Cochin University of Science and Technology, Kochi, Kerala

Resource Person

Dr. Anson CJ, currently working as Assistant Professor at Inter University Centre for IPR studies, has published extensively in both peer reviewed journals and the law reviews and his research work has been cited largely. He also holds a Ph.D. in IPR and Management – worked as a research officer at DIPP Chair of Cochin University of Science and Technology. He has received couple of research grants for his work in the areas of geographical indications/intellectual property policy. He is also a principal investigator of a research effort on studying management of Collective Property through cooperative societies.

Workshop Organiser

Dr. Anson C J

Mob: 9400610461

Contact Information

For any queries/ clarifications, please contact:

Faculty Coordinator

Bilal Nazeer

Research Officer

Mob: 8547082805

Inter University Centre for IPR Studies, Cochin University of Science and Technology

Student coordinator

Naveen Gopal

Research Scholar

Mob: 9895897061

Inter University Centre for IPR Studies, Cochin University of Science and Technology

Topical Highlight

Prarthana wrote a post on the imposition of a staggering Rs. 5 crore in costs in Nippon Steel & Sumitomo Metal Corporation v Kishor D Jain. The case concerned the sale of low-quality pipes to a customer intending to use the same in oil plants. This constituted trademark infringement because the pipes were improperly branded with Nippon Steel’s labels. Justice Kathawalla thought it necessary to impose such extraordinary damages because of the use of low-grade material in an oil plant may result in disasters of great magnitude, and hence must be deterred.

Thematic Highlight

I wrote a post examining Section 84 of the Trade Marks Act 1999, discussing whether it is possible to carve out an exception to the quorum requirements of the IPAB on the basis of the Chairman’s authority. I argue that a plain interpretation would not allow for such an exception, but highlight that the ambiguities in the provision may result in alternate interpretations as well.

Other Posts

Pankhuri informed us of scholarships available for Indian students pursuing an LL.M. or M.Jur. Program at Texas A&M University, which cover 50% of the tuition fees.

I covered the Delhi High Court’s issuance of notice to the Department of Industrial Policy and Promotion, which demanded the submission of a status report on the filling of vacancies in the IPAB. The status report submitted to DIPP revealed that advertisements to fill the posts of Technical Members for the Copyright and Trademarks side (2 members each) and Patents side (1 member) had been issued on July 25, 2018, and the DIPP is currently in the process of interviewing candidates that have applied and shall complete appointments within 3 months. The Delhi High Court fixed the matter for May 24, 2019, for progress updates.

SpicyIP Events

Pankhuri informed us of the International Conference on Intellectual Property and Development, on the topic ‘How to Benefit from the IP System’, to be held in Geneva on May 20, 2019, at the WIPO Conference Hall.

Pankhuri also informed us of the Inter-University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT’s empirical study orientation programme on Research Methods in IPRs on June 29, 2019. The deadline for submission of application forms is May 25, 2019.

Other Developments

Indian

Judgments

Anil Verma v. R.K. Jewellers SK Group and Others – Delhi High Court [April 25, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s registered marks “WE BUY GOLD”, “CASH FOR GOLD” and “GOLD BUYERS” by use of identical marks in respect of gold and precious metals business. The Court granted an interim injunction in favour of the Plaintiff for the marks “CASH FOR GOLD” and “GOLD BUYERS” on the ground that the Plaintiff was the registered proprietor and the prior adopter of the marks, and that the Plaintiff’s marks were not descriptive in nature due to their failure to describe the entire range of services offered by it. However, the Court noted that the mark “WE BUY GOLD” completely described the activities undertaken by the Plaintiff, and was prima facie descriptive in nature. Another application filed by the Defendant was clubbed along with the application for an interim injunction, relating to the stay of the suit for infringement. The Court noted in this respect that though its findings were that the Plaintiff’s marks “CASH FOR GOLD” and “GOLD BUYERS” were not descriptive, while the mark “WE BUY GOLD” was descriptive, the Defendant’s challenge could not be disposed of off as being frivolous and without any basis. In view of the same, the Court observed that the Defendants would be permitted to file an application before the IPAB for cancellation of the three marks mentioned above, and the relief for infringement shall remain stayed for 3 months. Ultimately, a contempt petition filed by the Defendants was also decided with the aforementioned applications. The Defendants had alleged that the Plaintiff, being aware of the subsisting injunction against them had failed to abide by its terms and actively pursued a means of criminal intimidation. The Court stated that the Plaintiff was guilty of civil contempt due to its breach of the Court’s orders, and consequently ordered the Plaintiff to pay a sum of Rs. 20 lakhs to the Defendants.

M/s. Paridhi Udyog v. Jagdev Raj Sarwan Ram Dhiman – Delhi High Court [April 29, 2019]

The Court disposed of off the Plaintiff’s suit for the grant of an injunction to restrain the Defendant from using its mark “AADHAR SHREE” by using a deceptively similar mark “AADHAR SHILA” for the sale of Plaster of Paris and plaster sheets. In arriving at this decision, the Court observed that it did not have jurisdiction to entertain the case, because the Plaintiff’s principal place of business was in Rajasthan and the cause of action pertaining to the suit had also arisen in Rajasthan. Moreover, it was noted by the Court that the Plaintiff had failed to show that any of its goods were supplied in Delhi or that the Defendant had infringed its mark within the territorial jurisdiction of Delhi. However, the Court went on to discuss the substantial case of infringement and observed that the conflicting marks were closely similar in their appearance and phonetically similar, but did not grant any relief due to the lack of territorial jurisdiction to try the case.

Raymond Limited v. Radhika Export and Another – Bombay High Court [April 30, 2019]

The Court granted an ex parte interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “RAYMOND” and “COMPLETE MAN”, and from infringing its copyright in the “RAYMOND” artistic work by using identical marks in respect of its apparel business. In arriving at the decision, the Court observed that the Plaintiff was the registered proprietor of the aforementioned marks, and has acquired immense goodwill and reputation in the same. Additionally, the Court noted that the Defendants’ were neither the authorized dealers nor the authorized distributors of the Plaintiff, and hence were not permitted to use the marks.

Novex Communication Private Limited v. Great Indian Nautanki Company Private Limited – Bombay High Court [May 2, 2019]

The Court granted an ex parte interim injunction restraining the Defendant from infringing and passing off the copyright in the Plaintiff’s sound recordings. It was noted that the memorandum of understanding between the parties which granted the Defendant the right to use the sound recordings of the Plaintiff had been terminated due to defaults made in the payment. The Court observed that in light of such facts, the Defendant infringed the Plaintiff’s copyright in its sound recordings by playing them without authorization.

Disposafe Health and Life Care Limited and Others v. Hindustan Syringes and Medical Devices Limited and Others – Delhi High Court [May 3, 2019]

The dispute between the Parties arose on account of two suits, wherein the Single Judge denied the grant of an injunction against the Respondents in the first suit. In the second suit, the Single Judge restrained the Appellants from using the marks “DISPOCAN” and “DISPO” formative marks, which were deceptively similar to the Respondents’ marks “DISPOVAN” and “DISPOCANN”. Before deciding on the issue, the Court noted that the Respondents had been given a limited right to use its registered mark “DISPOCANN”, in a particular style and only for a class of goods. Furthermore, the Court observed that the Respondents did not have registration for any mark named “DISPO” and that its registered marks were per se portmanteau words, wherein the word Dispo referred to the quality of the products. It was also noted that the word “DISPO” has not acquired a secondary association with the Respondents’ products. In light of the same, the Court mentioned that the impugned order of the Single Judge could not be sustained, but the Appellants would not be permitted to use “DISPOVAN” and “DISPOCANN” as the same was voluntarily undertaken by them.

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