We’re pleased to announce that the NUALS Intellectual Property Law Review, operating under the aegis of the Centre for Intellectual Property Rights (CIPR), NUALS, is inviting submissions on the contemporary issues related to intellectual property rights for publication in the second volume of the journal. The deadline for submissions is December 15, 2019. For further details, please read the call for papers below:

 Call for Papers: NUALS Intellectual Property Review (Vol. 2)

The NUALS Intellectual Property Law Review is a peer-reviewed, double blind and open access journal, operating under the aegis of the Centre for Intellectual Property Rights (CIPR), NUALS. With the objective of the journal being the exposition of contemporary developments in intellectual property law, we encourage authors to explore the latest developments in the field, while also giving readers an insight into overlooked areas of the law.

We invite contributions from academicians, practitioners of the legal profession, researchers, post-graduates and under-graduate students of law. Contributions may be in the form of articles, essays, notes, commentaries and reviews. Submissions will be put through an exhaustive review process and published on the official website of the University (nuals.ac.in) as well as the CIPR website (ciprnuals.in)

Categories of Submissions

• Articles: 5000-7000 words
• Essays: 3000-5000 words
• Notes, Comments and Reviews: 1000-3000 words

Word count is exclusive of footnotes. Longer submissions will be considered at the discretion of the editorial board.

 Guidelines for Submission

1. All submissions are to be made in the electronic form, and must be sent to theiplawreview@gmail.com. Submissions must be received on or before 15^th December, 2019.
2. All submissions must include an abstract not exceeding 300 words.
3. Submissions must be accompanied by a brief note including the following information:

• Name
• Postal Address
• Name of Institution
• Course of Study (if applicable)
• Academic Year

4. In submission of work, the author undertakes that the work is original and has not been submitted, accepted or published elsewhere.
5. All submissions will be subject to a plagiarism check at the first stage of evaluation. If work is found to be unoriginal or plagiarised, it will be rejected at the first instance.
6. Authors will be intimated of receipt of submission within one week from date of submission.

Formatting Guidelines

1. The submission must be made in .docx / .doc (word document) format. PDFs of submissions will not be accepted.
2. The body of the manuscript must be according to the following specifications:

• Times New Roman font
• Font Size 12
• Line spacing 1.5

3. Submissions must follow the Bluebook (20^th edition) style of citation. Footnotes must be in Times New Roman, font size 10 with single line spacing.

On acceptance of submission, authors will be issued a certificate of publication.

Contact

For any queries or clarifications, reach out to us at theiplawreview@gmail.com or +91 8197874621 (Pranav Valiathan Pillai, Editor-in-Chief).

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[This post has been co-authored with Bhavik Shukla, a 5th year student at National Law Institute University (NLIU), Bhopal.]

The Patent Office released a list of newly enrolled/ retained scientific advisors last month. A total of 37 advisors have been included in the list, out of which 22 scientific advisors have been retained from the previous list published in 2010.

Section 115 of the Patents Act, 1970 (‘Act’) grants a court (hearing matters under the Act) the power to appoint independent scientific advisors to assist courts in any proceedings, or report upon any questions of fact or opinion (not involving a question of interpretation of law). The Patent Office is required to maintain a roll of such advisors and update it annually under Rule 103(1) of the Patent Rules, 2003 (‘Rules’). The eligibility requirements for appointment of such advisors are stipulated under Rule 103(2).

The Patent Office had invited applications for enrolment or continuation as a scientific advisor in February last year. For new enrolment, the application form required the applicants to fill in their contact details, educational qualifications, professional experience and research experience (if any) and also mention if they are working with any S & T department of the Goverment. The declaration for retention as a scientific advisor merely required the present advisor to furnish an updated biodata, if any. The list of selected advisors was published early last month. The list contains names of 37 advisors, 15 newly enrolled and 22 retained from the 2010 list. The following are the number of advisors appointed across four groups in comparison with the list published in 2010:

Inclusion of Patent Agents as Advisors and Failure to Specify the Same

In an earlier post, Prashant had expressed concern over inclusion of some Patent Agents in the list of scientific advisors. He had noted that “[a]lthough there is no statutory bar against ‘patent agents’ being empanelled, one would think that there might be a conflict of interest for them to appear on such a list.” In a welcome move, this time the Patent Office has limited the number of Patent Agents to just 2 in contrast to around 6 in the 2010 list. Interestingly however, neither the new list nor the previous one specify if a particular advisor is a Patent Agent. Isn’t this a violation of Rule 103(1) which requires the roll of scientific advisors to include their designations and their technical and practical experience?

Failure to Update the List Annually

Further, Rule 103(1) mandates the Patent Office to not only maintain a roll of scientific advisers but also update it annually. Then how come after 2010 the list was updated and published only now in 2019 i.e. 9 years later? Doesn’t this amount to a blatant violation of the Patent Rules?

Failure to Include Photographs and Specimen Signatures

Furthermore, Rule 103(1) requires the roll of scientific advisors to contain their specimen signatures and photographs apart from other stipulated information. However, neither the 2010 list nor the 2019 list does so. Again, doesn’t the failure to do contravene the Rules?

Code of Conduct

Given the significance of the role that scientific advisors play in the patent litigation proceedings, Prashant had recommended framing of a code of conduct for these advisors in his post here. No such code seems to have been in put in place yet. It is important that the Patent Office considers formulating not only a code of conduct but may be also rules or guidelines as to the appointment of and provision of assistance by these advisors .

If any of our readers have any information in relation to the issues raised above, please do share it with us!

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We’re pleased to bring to you a guest post by our fellowship applicant, Akanshha Agrawal on the Draft Guidelines on Geographical Indications Logo and Tagline released by DPIIT in June this year. Akanshha is a 3rd year student at National Law University, Delhi. This is her second submission for the Fellowship. Part I of her first submission can be viewed here.

DPIIT’s Draft Guidelines on Geographical Indications Logo and Tagline: Issues and Challenges

Akanshha Agrawal

In India, Geographical Indications (‘GI’) relating to goods are registered and protected under the Geographical Indications of Goods (Registration and Protection) Act, 1999. This is a sui generis legislation for registration of GIs which was enacted by the Parliament to comply with TRIPS. Prior to 2018, there was no common logo or tagline for GIs in India. To remedy this, the Department of Promotion of Industry and Internal Trade (DPIIT) organised a public contest and launched the selected Geographical Indication logo and tagline (as shown in the image) on 1^st August, 2018. The logo is proposed to act as a certifying mark which can be used on all Indian GI products registered in India or abroad across different categories. This was done to encourage the promotion and marketing of Indian GI products.

To regulate the usage of the GI logo and tagline and thereby protect the interests of genuine GI producers in India, in June this year, the Department further issued the Draft Guidelines for Usage of GI Logo and Tagline for comments from stakeholders. The Guidelines lay down certain terms and conditions as per which the use of the logo and tagline will be allowed. For instance, it permits the use of the logo and tagline in relation to only Indian GI products and not the foreign ones, whether registered in India or abroad. It further prohibits the use of the logo or tagline for illegal purposes, against public interest or in a derogatory fashion. The logo and tagline can be used without prior approval by all registered proprietors and authorised users of registered Indian GI products (in relation to the particular GI they are registered for), DPIIT itself, all other Government bodies (for programmes directly organised by them) and Indian Embassies/Missions abroad (for GI promotion sponsored or supported by them). However, for any other use as specified in the Guidelines, prior permission of DPIIT needs to be obtained by the user. A form for applying for the same has been provided in the Guidelines. Any such request would be considered on the basis of the Guidelines on merit and approved by the concerned Joint Secretary.

Easy Identification of GI Registered Goods

The Guidelines are a welcome step in bringing uniformity and easy identification for GI registered products. One of the central issues related to GI registration in India has been the lack of a common logo to identify registered products. There exist individual logos for various products such as Mysore Agarbathi, Assam Tea, Darjeeling Tea, etc. This is in contrast to other jurisdictions such as European Union, Thailand etc. which have a common logo. The lack of a common logo could create difficulties in the identification of the product. Without a common logo, a consumer could be unable to identify if a particular product is registered as GI or not, which leads to issues in brand building for the product. The newly proposed logo will go a long way in helping easy identification of registered products.

The procedure laid down for obtaining permission to use the logo and tagline is quite simple. Only a form seeking relevant details is required to be submitted. Also, there is no requirement of payment of any fees for receiving permission to use the same.

Issues With the Guidelines

The DPIIT has taken a welcome step in increasing awareness and promoting the Indian GI registered products by introducing the common logo and tagline. These will help in protecting the interests of genuine GI producers. However, there are a few issues with the Draft Guidelines which one hopes are addressed in the final Guidelines.

Firstly, the Guidelines fail to specify a time limit within which the permission for usage of the logo and tagline must be granted. The lack of a stipulated time frame opens up a window for unnecessary delay in grant of permission.

Secondly, as per the Guidelines, the Department will not be liable for any claims arising out of any unauthorised use and/or violation of the logo and tagline. The Department conveniently shrugs off any responsibility here. Although it is entitled to take action in such cases, it is not bound to do so even if they are brought to its notice by an aggrieved consumer (who uses a product with a mistaken belief of it being a GI registered product due to the presence of the logo/tagline) or genuine GI producer.  Further, since these Guidelines do not appear to have any legal force, one wonders if it would be possible to obtain any remedy based on them.

Thirdly, the Guidelines state that the logo cannot be used for illegal purposes, against public interest or in a derogatory fashion. However, the DPIIT fails to provide any explanation or lay down any objective test as to the meaning of the terms ‘public interest’ and ‘derogatory’. As these are highly subjective terms, there is scope for arbitrariness in the Department’s decisions under this provision. Further, these are issues which an administrative body may not have the expertise or the competence to decide. Moreover, there has been no recourse provided against Department’s denial or withdrawal of permission to use the logo and tagline on any ground. In fact, there’s no requirement for the Department to even specify the reason/s for its denial or withdrawal.

Fourthly, should the usage of the GI logo and tagline even be governed by way of these Guidelines or should it be brought under the purview of the GI Act and Rules? In the latter case, the issues of enforceability, remedies against unauthorised use, appeal mechanism against decisions on denial or withdrawal of permission etc. could be addressed.

Lastly, even though the common logo and tagline is a big step towards protection of the interests of GI producers, it is not enough. The common logo and tagline will help in product identification; however, the products will not be sold unless widespread awareness in created in respect to the same. In India, two successful examples of GI helping in widespread identification of products are Basmati Rice and Darjeeling Tea. However, in both of these cases, enormous costs were incurred to ensure the same. Agricultural and Processed Food Products Export Development Authority (APEDA) and Tea Board of India spent huge amounts towards GI protection of these products. It is essential for DPIIT to undertake measures for generating awareness on the availability and significance of the GI registered products in order to increase their marketability and thereby further the income of the GI producers.

We are pleased to inform our readers that the Second IP & Innovation Researchers of Asia Conference will be held on February 27 & 28, 2020 at the Faculty of Law, Universitas Indonesia, in Jakarta, Indonesia. The deadline for submission of the request to present a paper and the abstract is October 30, 2019. For further details, please read the post below:

Second IP & Innovation Researchers of Asia Conference

February 27-28, 2020

The IP & Innovation Researchers of Asia (IPIRA) Network is pleased to announce the Second IP & Innovation Researchers of Asia (IPIRA) Conference, which will be held on February 27-28, 2020 at the Faculty of Law, Universitas Indonesia, in Jakarta, Indonesia.

The Second IPIRA Conference is organized by the Faculty of Law, Universitas Indonesia in collaboration with Texas A&M University School of Law, and the Faculty of Law of the University of Geneva, the World Intellectual Property Organization (WIPO), and the World Trade Organization (WTO),

The IPIRA Conference is an initiative created to provide a forum for academics and other researchers to present and discuss their papers and works-in-progress with colleagues from other universities, policy makers, and other stakeholders. The First IPIRA Conference was hosted at the International Islamic University Malaysia on January 30 – February 1, 2019. 

The scientific organizers welcome submissions by senior, mid-career, and junior academics writing on topics related to IP law-related issues in Asian law, international law, and comparative law. The IPIRA Conference aims at gathering academics from all over the world to promote discussion and interaction between them during the Conference.

For specific information about submissions to present see http://ipresearchersasia.org/annual-conference/ or email the organizers at the address IPResearchersAsia@gmail.com.

The deadline to submit an abstract and a request to present is October 30, 2019.

There will be no registration fee or any other costs associated with attending the Second IPIRA Conference. However, all presenters must cover their own travel-related and accommodation expenses. The organizers are working to secure funds to partially assist a limited number of researchers with financial needs from developing countries in Asia. For more information, see http://ipresearchersasia.org/annual-conference/.

Image by EFF.

In a major ruling on October 3, 2019, the CJEU in Case C-18/18 – Eva Glawischnig-Piesczek v Facebook Ireland Limited, held that national courts may direct injunctions against online content-hosting intermediaries like Facebook, which require the intermediary to block the specific content globally, as well as blocking identical or equivalent content or information. This marks a crucial turn in online content regulation in the EU, as it explicitly endorses a ‘notice-and-stay down’ standard for content removal, and endorses upload filters for online content, the difficulties of which we have written about here and here.

Case Background

The genesis of the dispute lies in a Facebook post containing the photograph of Austrian politician Eva Glawischnig-Piesczek, a member of the Austrian ‘Greens’ Party. The post in question linked to a news article along with certain commentary on Ms. Glawischnig-Piesczek, which she requested Facebook to take down. Facebook did not comply with the take-down request, and the complainant referred the dispute before the Austrian Commercial Court, which directed Facebook to remove the specific post as well as (a) identical posts and (2) information ‘having an equivalent meaning as that of the comment’, which would have the effect of violating the complainant’s personality rights.

The Commercial Court’s ruling was ultimately appealed up to the Austrian Supreme Court, which referred the following questions of law to the CJEU –

‘(1) Does Article 15(1) of Directive [2000/31] generally preclude any of the obligations listed below of a host provider which has not expeditiously removed illegal information, specifically not just this illegal information within the meaning of Article 14(1)(a) of [that] directive, but also other identically worded items of information:

–       worldwide; 

–       in the relevant Member State;

–       of the relevant user worldwide;

–       of the relevant user in the relevant Member State

(2) In so far as Question 1 is answered in the negative: does this also apply in each case for information with an equivalent meaning?

(3) Does this also apply for information with an equivalent meaning as soon as the operator has become aware of this circumstance?’ 

Article 14 of the e-Commerce Directive, which governs intermediary liability in the EU, exempts hosting intermediaries from liability in instances where it does not have knowledge of the illegal activity or information, or acts expeditiously to remove or to disable access to that information when it is made aware of the same.

Article 15 of the e-Commerce Directive provides that: ‘Member States shall not impose a general obligation on providers … to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.’ Article 15 explicitly limits EU states from requiring intermediaries to be performing general search and surveillance obligations to filter hosted content. However, as per recital 47 of the directive, this “does not concern monitoring obligations in a specific case and, in particular, does not affect orders by national authorities in accordance with national legislation.”

The CJEU Ruling and It’s Global Implications for Free Speech and Privacy

The CJEU ruled that EU law does not preclude –

• ‘a host provider such as Facebook from being ordered to remove identical and, in certain circumstances, equivalent comments previously declared to be illegal.’ This is the endorsement of the notice-and-stay down requirement. It implies that an injunction may be directed not against a specific piece of content, but any reproductions of that content, without gaining specific knowledge (for example, through a distinct notice procedure) of that content. However, the ECJ goes even further and requires that the host provider must also remove equivalent The court reasons that “the illegality of the content of information does not in itself stem from the use of certain terms combined in a certain way, but from the fact that the message conveyed by that content” and for an injunction to be effective, it must also be directed towards “information, the content of which, whilst essentially conveying the same message, is worded slightly differently, because of the words used or their combination, compared with the information whose content was declared to be illegal.”
  
• ‘An injunction from producing effects worldwide, within the framework of the relevant international law which it is for Member States to take into account.’ There is sparse rationale provided for this, particularly given the more conservative approach adopted by the court in its recent ruling on the Right to Be Forgotten/de-listing obligation under the GDPR. The Court does not foreclose the possibility of global takedowns, but nor does it seems to offer any guidance to the member states on the scope of such global takedowns and what ‘relevant international law’ must be taken into account here, or what role the e-Commerce directive has in determining such scope.

The present ruling stems from increasing tensions globally concerning the inaction of by social media companies in light of illegal online information. The most remarkable aspect of this case is the move from requiring specificity of content takedowns (for example, through a notice-and-takedown provision which details the particular matter which is illegal), the law in the EU now allows general takedowns for both ‘identical’ and ‘equivalent’ information, thus requiring intermediaries and platforms (instead of courts and lawmakers) to make broad determinations of the legality of content usually without adequate context and certainly without political authority for the same.

While this marks a clear acknowledgement that the EU is willing to subject intermediaries to more stringent rules for preserving individual rights, at the same time, the ruling offers little balance on considerations of issues of freedom of expression. In particular, the ‘equivalency’ requirement is incredibly broad and paves the way for over-filtering of legitimate content. Further, In ruling that the E-Commerce directive does not preclude extra-territorial or global effects, without examining the precise scope of these effects, it also undermines judicial comity and international human rights standards on the freedom of expression and privacy (outside of the EU).

Of particular concern is the court’s nonchalant endorsement of automated filtering requirements is of concern – in effect the only manner in which the objectives of this ruling can be enforced. In Paragraph 46, the Court notes – ‘(protection against defamation) … is not provided by means of an excessive obligation being imposed on the host provider, in so far as the monitoring of and search for information which it requires are limited to information containing the elements specified in the injunction, and its defamatory content of an equivalent nature does not require the host provider to carry out an independent assessment, since the latter has recourse to automated search tools and technologies.’

Even as the limitations of automated technologies and ‘upload filters’ have repeatedly been brought to the notice of lawmakers and judges, particularly in recent debates concerning the updated Copyright Directive, there has been little effort to grapple with the legal consequences of these technologies, which are viewed as straightforward panaceas for complex determinations of law and policy. A more detailed analysis of the effects of this ruling on the freedom of expression and privacy are available here.

Thematic Highlight 

In her first submission, fellowship applicant Akanshha Agrawal wrote on the free speech, morality and trademark law debate in light of the recent Iancu v Brunetti decision of the Supreme Court of the United States. She discussed the implications of the decision to strike down the ground of immorality to refuse trademark registration, including concerns overuse of racial slurs in trademarks. She also noted the use of ‘Urban Dictionary’ as evidence in the case. In the next part of her post, she will discuss potential implications on Indian jurisprudence around the immorality exclusion.

Topical Highlight

In a post co-authored by Pankhuri and Bhavik Shukla, it was reported that the Patent Office has released a list of newly enrolled/ retained scientific advisors last month. A total of 37 advisors have been included in the list. They note that despite this announcement, several rules may have been flouted, including those relating to annual updation of the list and the failure to include photographs and signature specimen, amongst others.

Other Posts

Justice Ravindra Bhat has recently been appointed to the Supreme Court of India. In his post, Prashant notes that this is a positive development for Indian IP jurisprudence since Justice Bhat has written several judgments on important IP cases, including the Roche v Cipla matter and the Monsanto case.

Divij wrote a post on the ruling of the CJEU in Case C-18/18 – Eva Glawischnig-Piesczek v Facebook Ireland Limited. In this case, the CJEU held that national courts may direct injunctions against online content-hosting intermediaries like Facebook, which require the intermediary to block the specific content globally, as well as blocking identical or equivalent content or information. Divij notes that this marks a crucial turn in online content regulation in the EU, as it explicitly endorses a ‘notice-and-stay down’ standard for content removal, and endorses upload filters for online content. He argues that the judgment marks a clear acknowledgement that the EU is willing to subject intermediaries to more stringent rules for preserving individual rights, at the same time, the ruling offers little balance on considerations of issues of freedom of expression.

The CJEU recently delivered two significant judgements on the scope of the delisting and de-indexing requirements (or the Right to Be Forgotten) to be followed by search engine operators under the EU’s data protection laws. In his post, Divij discusses the implications of these judgments. The first case seems to have held that Google is not obliged to carry out de-linking requests globally. In the second case, the Court held that for information that falls in special (sensitive) categories, there is a default obligation on search engines to de-link such information. Divij is sceptical about whether these decisions are victories for free speech in light of existing jurisprudence.

In her second submission, fellowship applicant Akanshha Agrawal wrote on the issues and challenges with the DPIIT’s Draft Guidelines on Geographical Indications Logo and Tagline. The draft proposes to create a logo and tagline as a mark that certifies goods that have received GI tags. She notes that while the draft will improve awareness and identification of GI goods, it fails to create a time limit on processing requests for grant and place responsibility on the government for misuse of the logo, amongst other things.

The Trade Marks Registry (TMR) had issued a public notice requesting suggestions from stakeholders regarding the display and availability of documents on its official website. In her post, Aparajita discusses the merits of the changes proposed, including the distinction created between a category of documents that will be fully accessible and can be viewed/downloaded by the public and a second category that will contain only the name of the document but viewing/downloading will be restricted in light of the RTI Act.

SpicyIP Events

Pankhuri brought to our notice the Second IP & Innovation Researchers of Asia Conference, which will be held on February 27 & 28, 2020 at the Faculty of Law, Universitas Indonesia, in Jakarta, Indonesia. The deadline for submission of the request to present a paper and the abstract is October 30, 2019.

Pankhuri brought to our notice the call for papers for the NUALS Intellectual Property Law Review, operating under the aegis of the Centre for Intellectual Property Rights (CIPR), NUALS. The deadline for submissions is December 15, 2019.

Other Developments

Judgments

Amrish Agarwal v. M/s. Venus Home Appliances Private Limited – Delhi High Court [August 27, 2019]

The dispute between the Parties concerned the delayed filing of the Legal Proceedings Certificate by the Plaintiff in an action relating to the mark “VENUS”. The Defendant filed a petition objecting the filing of this certificate at a late stage in the trial. The Court agreed with the Defendant that the certificate was to be filed at the initial stage. However, it permitted the Plaintiff to file the certificate in the present case on the ground that substantive justice was to be done between the Parties, contingent to the payment of Rupees 50,000 as costs to the Defendant. In further proceedings, the Court laid down guidelines stating that the Legal Proceedings Certificate had to be filed along with the plaint and also stated the documents to be filed in its absence. Moreover, the Court observed that at the time of admission or denial, the parties should not to be permitted to deny the fact of registration. Ultimately, the Court directed the Registrar to communicate the order to all District Judges for compliance, and the CGPDTM and the Joint Secretary, DPIIT to ensure that Legal Proceedings Certificate are issued without delay.

Hindustan Unilever Limited v. Satveer Kumar and Another – Calcutta High Court [September 9, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using deceptively similar trade dress, graphics and colour scheme with its mark “TOTAL SUPER DETERGENT POWDER” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and had substantiated the infringement of its mark by the Defendant. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Oravel Stays Private Limited v. Hotel Maan Manuhaar; Oravel Stays Private Limited v. Hotel Royal Aashiyana; Oravel Stays Private Limited v. Hotel Metro – Delhi District Court [September 9, 2019]

The Court granted ex parte decrees of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “OYO” by using an identical mark in connection with their hotel names. The Court noted that the Plaintiff was the registered proprietor of the mark and had made a prima facie case for infringement of the same. Additionally, the Court observed that the depiction of the Plaintiff’s mark was a deliberate and conscious move on the Defendants’ part which was aimed at denigrating the Plaintiff’s mark.

Hindustan Unilever Limited v. Atul Tiwari – Calcutta High Court [September 11, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s marks “SURF EXCEL” and “ACTIVE WHEEL” by using various marks in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the marks and the Defendant had adopted colourable and deceptive imitations of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Hindustan Unilever Limited v. Avadh Kishor Saha – Calcutta High Court [September 11, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s marks “RIN” and “ACTIVE WHEEL” by using a deceptively similar mark “SUPER ULTRA RIN” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the marks and had prima facie depicted the infringement of its marks. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Saregama India Limited v. Balaji Motion Pictures Limited and Others – Delhi High Court [September 13, 2019]

The Court granted an interim injunction restraining the Defendants from infringing the Plaintiff’s copyright in the song “VAR DHAGALA LAGLI KAL” through the use of its purported Hindi recreation in its cinematograph film “DREAM GIRL”. The Court noted that all rights in the music of the soon to be released film of the Defendants had been solely vested in Defendant No. 3. The Court stated that the Defendant No. 3 though paying royalty to the Plaintiff under the Court’s order did not choose to approach the Plaintiff before incorporating the Hindi version of the song in the cinematograph film, and this was in itself a sufficient ground for the grant of an injunction in the Plaintiff’s favour. The Court further observed that the Plaintiff had proved a prima facie case in its favour and irreparable injury and balance of convenience were also viewed to be in its favour. The Court finally noted that the exclusion of the Plaintiff from the credits of the film is an irreparable injury which cannot be compensated.

Reliance Life Sciences Private Limited v. M/s. Genetech Incorporation and Others – Delhi High Court [September 18, 2019]

The dispute between the Parties arose on account of the Appellant’s launch of the drug “TRASTUREL”, which was claimed to be the biosimilar of the Respondents’ “TRASTUZUMAB”. The Respondents claimed that the Appellant’s drug could not be termed a biosimilar due to inadequate testing to show such results. The Single Judge passed an interim injunction in favour of the Respondents and directed the Appellant to not call their drug a biosimilar to that of the Respondents’ drug. On appeal, the Court noted that the authorities had granted approval to the Appellant’s drug, and the same could not be considered illegal. Moreover, it was noted that the Single Judge could not injunct the approval granted by the authorities as it would necessarily mean decreeing the suit. The Court also observed that the Respondent’s patent had expired and it was also to be examined if it had filed the suit with malice to unnecessarily stifle competition. In light of the aforementioned discussion, the Court granted an interim stay on the order of the Single Judge.

Ad Ideas Private Limited v. View Ad Ideas and Others – Calcutta High Court [September 18, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendants from infringing and passing off of the Plaintiff’s mark “AD IDEAS” by using an identical name as part of the Defendants’ corporate name. In arriving at the decision, the Court noted that it could be prima facie ascertained that the Plaintiff was the prior user of the mark “AD IDEAS”, and the same had become exclusively associated with it. The Court further observed that the infringement by the Defendants was prima facie proven by the Plaintiff through the annexures advanced in the proceedings. Finally, the Court granted the Defendants a period of seven days to present their defence, failing which the interim order would be made final.

Shambhu Nath and Brothers and Others v. Usha International Limited – Calcutta High Court [September 26, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “TOOFAN” by using an identical mark in respect of electric fans. In arriving at the decision, the Court observed that the Plaintiff had been able to prima facie establish infringement on part of the Defendant. The Court also noted that the Plaintiff was a prior user of the mark and its goods had acquired goodwill and reputation in the market.

Asian Paints Limited v. Mytri Paints – Bombay High Court [September 26, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “APEX ULTIMA” by using the mark “ULTIMA” in respect of selling cement primers. The Court arrived at this decision after a perusal of the Defendant’s container but was of the opinion that the appointment of a Court Receiver would be unfit at the stage.

Shemaroo Entertainment Limited v. Landmark Apartments Private Limited and Others – Bombay High Court [September 30, 2019]

The Court granted an interim injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted songs from its film “DULHE RAJA” through its news channel “HINDI KHABER”. In determining infringement, the Court acknowledged that the Plaintiff was the owner of copyright in the film and had made out a prima facie case in its favour. Moreover, the Defendant had continued with its activities in spite of being served with a cease and desist notice.

SRMB Srijan Private Limited v. Super Smelters Limited and Others – Calcutta High Court [September 30, 2019]

The Court granted a decree of interim injunction restraining the Respondents from passing off the Petitioner’s “X” ribbed pattern used by it on TMT bars by using a deceptively similar “YY” ribbed pattern in respect of its TMT bars. The Court observed at the outset that the Petitioner’s registration under the Designs Act, 2000 had been cancelled in 2010. Accordingly, the Petitioner chose to rely on its trade mark rights to seek an action for passing off, stating that it had been a prior user of the “X” ribbed pattern in respect of TMT bars. In accepting the maintainability of this passing off action, the Court noted that the Petitioner began using its “X” ribbed pattern as an unregistered trademark before registration under the Designs Act, 2000, and continued to use it even after the cancellation of its design in 2010. Ultimately, the Court observed that the Petitioner had been successful in making a prima facie case for passing off, considering that the Respondents’ TMT bars’ trade dress and pattern were deceptively similar to those of the Petitioner.

Glaxo Smithkline Pharmaceuticals Limited and Another v. Naval Kishore Goyal and Others – Delhi High Court [October 1, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off of the Plaintiffs’ mark “ZENTEL” by using a deceptively similar mark “FENTEL” in respect of an identical pharmaceutical preparation. In arriving at this decision, the Court noted that the rival marks were visually, structurally and phonetically similar and were to be used as a treatment for the same condition. Moreover, the Court noted that the Plaintiffs had been successful in proving that their mark was a coined word and had been used since 1980. With respect to the question of passing off, the Court observed that the Defendants’ adoption of the mark “FENTEL” was dishonest and with a prima facie intent to pass off the goods of the Plaintiffs. Consequently, the Court awarded damages to the tune of Rupees 3 lakhs in favour of the Plaintiffs after disagreeing with their speculative method of calculation of the Defendants’ profits.

Kamal Raheja v. Universal Tradelink – Delhi High Court [October 4, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “AMAIRA” by using a deceptively similar mark “AAMIRA” in respect of cosmetics products and henna. The Court observed that the Plaintiff was the registered proprietor of the mark “AMAIRA” and had proved through unrebutted testimony that the Defendant was using a deceptively similar mark in order to pass off its goods.

News

• IPAB becomes headless as Justice Manmohan Singh retires.
• PhonePe drags BharatPe to court over usage of ‘Pe’ as a suffix.
• All’s not well in Hero: Cousins cross swords over trademark.
• Civil court summons singer Kinjal Dave over charges of copyright infringement.
• AICTE asks universities to share patent rights with students for on campus inventions.
• Delhi HC passes directions on documents to be mandatorily filed with plaint in trademark infringement matters.
• Delhi HC restrains entity from using mark, colour scheme of Malabar Gold.
• Cure.fit settles out of court with Book Your Game.
• Machilipatnam imitation jewellery loses GI battle.
• Ujda Chaman director planning to send legal notice to Bala makers: This is a clear case of copyright violation.
• The Madras HC has restrained websites from uploading Sivakarthikeyan film
• IMI releases Digital Music Study 2019 – ‘A National Snapshot of Music Engagement’.
• Tamil Nadu earns two more GI tags- Dindigul Locks and Kandangi sarees.
• Public health activists have expressed apprehensions that provisions in the proposed Regional Comprehensive Economic Partnership could dilute clauses in India’s patent law that enable the p production of affordable generic medicines for patients in India and the developing world.
• Enai Noki Paayum Thota full movie leaked online to download by Tamilrockers.
• AICTE to take up patent rights for on-campus inventions issue with commerce ministry
• The clock is ticking on the question of whether ByteDance pays creators in relation to its famous app, TikTok.

Opinion

A piece in the New Indian Express discusses the possibility of a pan masala suing Dassault Aviation for copyright violation?

International

• Global biosimilar market to increase 5 times by 2023.
• High Court told not to review Lilly’s $20M Cialis patent loss.
• Google may acquire TikTok rival Firework.
• Meghan Markle Letter on what the law says about the press, privacy and the public’s right to know.

An appeals bench of the Delhi High Court finally heard and disposed, last month, an appeal filed by Reliance Life Sciences in 2016, against an order that Justice Manmohan Singh had delivered in a lawsuit filed by Genentech. Since this is a strange case, it is necessary to recap the origins of this lawsuit.

Around 2013, Biocon, Mylan and Glenmark were circling around Genentech’s patents and pending patent applications over the biologic Trastuzumab, that is sold under the brand name Herceptin®. The drug which is primarily used for treating a particular type of breast cancer, HER2+, has earned a reputation of being a wonder drug in medical circles. The drug earns Genentech and its parent company Hoffman La Roche, an estimated US $ 7 billion a year – yes, you read that right – those figures are per year. In its last Form 27 filing for the Indian patent no. 205534 covering this drug, Genentech revealed that it had earned Rs. 130 crores in a year from the Indian market.

In 2013, as we first reported, Genentech had failed to pay the Patent Office a renewal fee of Rs. 12,000 for its patent no. 205534 by the annual deadline, leading to the lapse of the patent which otherwise would have expired only in 2019. Although the Patent Office, in a statement to us, had indicated to us that they would be willing to consider an application for restoring the patent, Genentech announced that it would not be seeking restoration of the lapsed patent. The next year, when Biocon and Mylan were preparing to launch their biosimilar of Herceptin, they were sued by Genentech and Roche before the Delhi High Court in a rather baffling lawsuit. The biotech giant could not sue for patent infringement since it owned no valid patents. Instead the company tried suing for some twisted version of the tort of “passing off”. Basically, it was argued that the biosimilar made by Biocon and Mylan, were not equivalent as the original product manufactured by Genentech, that these products did not comply with Guidelines for Biosimilars and hence could not claim to be as efficacious as the drug sold under the Herceptin brand. Thus, the prayer by Genentech and Roche was that all such references be deleted from the product inserts of these biosimilars and that these companies be restrained from marketing their products as equivalent to Herceptin. This would have basically made it very difficult for these biosimilars to be marketed because doctors would likely not prescribe biosimilars unless they performed in the same manner as the originator product.

As we explained earlier on this blog, the regulatory pathway for biosimilars is different from the pathway for small molecule drugs and a company launching a biosimilar has to conduct its own full-fledged clinical trials – it cannot depend on mere bioequivalence data. This makes the regulatory approval process for biosimilars far more complicated and Genentech’s lawsuit created a stir about the quality of the biosimilar manufactured by Biocon and Mylan. However, since the DCGI had signed off on the launch of the biosimilar by Biocon and Mylan and approved the packaging, it was simply not possible for Genentech to argue that the Biocon and Mylan were riding of its goodwill in a manner that was detrimental to it. In addition, there were a host of other legal issues such as whether the DCGI could even be sued in a civil lawsuit (as opposed to a writ petition) because the Drugs & Cosmetics Act provides the DCGI with certain immunity for its regulatory decisions.

Luckily for Genentech, the matter landed up before Justice Manmohan Singh, who delivered a most atrocious judgment running into 227 pages and which went against Biocon and Mylan on several issues. For an earlier post of ours, on the judgment, please click here. If I ever go back to teaching in law school, I intend to use his judgment as a prime example of what students should avoid in the course of legal writing. After a round of messy appeals, Biocon and Mylan managed to get Justice Manmohan Singh’s order set-aside. We covered that over here.

Reliance Life Sciences which got sucked into similar litigation in 2015, as it too was launching a biosimilar, was not so lucky in one aspect. Justice Manmohan Singh had compelled the company to market its drug under the name ‘Reliance Trastuzumab’ or ‘TrastuRel’ rather than just Trastuzumab which is the International Non-Proprietary Name (INN) for the drug. Apart from this condition going against the labelling requirement of Rule 96 of the Drugs & Cosmetics Rules, 1945 it was also causing trouble for Reliance Life Sciences when it was bidding for government tenders. These tenders apparently required all applicants to list the generic name or INN without indicating any proprietary elements. Since Biocon and Mylan had got a similar condition vacated by the appeals bench in 2016, Reliance Life Sciences wanted similar relief from the court.

The appeals bench led by Justice Vipin Sanghi granted Reliance Life Sciences the prayer that it sought, noting in pertinent part, that the conditions imposed by Justice Manmohan Singh were prima facie in contravention of Rule 96. The second line of reasoning was that Reliance Life Sciences could not be denied the same relief that was granted to Biocon and Mylan, especially when their drug was approved by the DCGI. The judgment however records several damaging statements made by Genentech’s counsel in court, against the manner in which Reliance Life Sciences conducted its clinical trials to get approval of its biosimilar. After having read some of the allegations made by Genentech, any doctor will think twice about recommending Reliance’s product, especially since the judgment does little to provide the counter to these allegations. I suspect, this is the true intent behind Genentech’s litigation – to cause doubt about how Indian companies carry out their clinical trials for biosimilars. I am afraid, this strategy is going to work, if judges are going to record all the allegations without providing the counter or without testing the evidence through a rigorous cross-examination. As a thumb rule, I do not think judges should record any of these allegations in their judgment unless they have examined the underlying evidence.

Interestingly, the appeals bench also passed some pretty scathing remarks against Genentech. In pertinent part, judgment makes the following observation:

“The submission of the appellant that the suit is actuated by malice –with the object of stifling competition, needs serious consideration. There is no purpose to be achieved in creating unnecessary and meaningless obstacles in the conduct of its business by the appellant. Even according to the respondent/ plaintiff, the appellant is manufacturing and marketing its biosimilar drug for over three years. Thus, we find the objection of the respondent/ plaintiff to grant of similar interim relief to the appellant, as is operating in the appeals of Biocon and Mylan, to be completely unjustified.”

This is a significant observation by the appeals bench because the Competition Commission of India, in 2017, acting on a complaint by Biocon had refused to initiate an investigation on whether Roche and Genentech were indulging in vexatious litigation. We covered that order in a series of posts over here. The CCI had agreed to investigate both companies on other related issues related to their dominance vis-à-vis Herceptin. It would be interesting to see if Reliance Life Sciences could use the High Court’s observations to reopen the question of whether Genentech and Roche indulged in vexatious litigation against their competitors as a tactic to delay the launch of lower priced products.

Image from here

We’re pleased to bring to you an insightful guest post by Jagdish Sagar, an independent lawyer practicing largely in the field of copyright and entertainment law in Delhi, on the (in)applicability of the statutory licensing scheme under Section 31D of the Copyright Act to internet broadcasting. Mr. Sagar was formerly a partner at Anand and Anand till 2011. Prior to that he was a civil servant till 2004. During his service with the Central Government he served as the Joint Secretary of the Ministry of Human Resources & Development in the early 1990s and was closely involved with not only the drafting of the Copyright (Amendment) Act, 1994 but also India’s negotiations with the WTO prior to the signing of the Agreement on Trade Related Intellectual Property (TRIPs). Mr. Sagar has written guest posts for in the past as well, which can be viewed here and here.

Our previous posts on this issue can be viewed here.

Broadcasting, Internet and Section 31D of the Copyright Act

Jagdish Sagar

The Bombay High Court’s decision in the Tips v. Wynk case was correct as far as it went, but, in my respectful opinion, incomplete in that there are more compelling reasons to hold that the statutory licence under section 31D of the Copyright Act does not extend to the internet.

What Is a “Broadcasting Organisation”? 

A broadcasting organisation is the organisation that enjoys rights under section 37 of the Copyright Act, not under section 14. The broadcast reproduction right that a broadcasting organisation enjoys has been provided essentially to protect its signals transmitted by electromagnetic waves. These very limited rights are classified as “neighbouring” or related rights, but not as copyright, both in our Act and in the international treaty system: broadcasters’ rights are protected under the Rome Convention of 1961, not under the Berne Convention; the TRIPS Agreement likewise distinguishes them from copyright. The Division Bench of the Delhi High Court distinguished this right from copyright in ESPN Star Sports v Global Broadcast News Ltd. & Ors. 2008 (38) PTC 477 (Del):  “We have found that the broadcast reproduction right in respect of telecast of live events like a Cricket match are separate and distinct right as from copyright and as such Section 61 [of the Copyright Act] is not applicable to broadcast reproduction right.”

The Nature of Broadcasting

In India, at any rate, broadcasting is a strictly regulated industry. Broadcasting organisations require two kinds of licences, viz. (i) a Grant of Permission Agreement (or similar regulatory approval) to offer broadcast services, which is granted by Central Government in exercise of its powers under the venerable Indian Telegraph Act, 1885; and (ii) a wireless operating licence under the Indian Wireless Telegraphy Act, 1933.

Each broadcasting licence granted by the Government is for the broadcast of signals within a certain spectrum in a specific technical mode, such as  for satellite broadcasting or for DTH or for terrestrial broadcasting or for FM Radio, etc. Broadcasting licences are limited in their territorial coverage and are subject to controls in regard to content. The consumer receives the broadcast on a device envisaged by the Indian Wireless Telegraphy Act, 1933; and not on a computer/mobile device over the internet.

Thus a broadcasting organisation cannot communicate content to the public over the internet in its capacity as a broadcasting organisation in exercise of its broadcasting licence.  Any person, howsoever designated (i.e. even if he calls himself a broadcaster), who communicates any kind of content to the public via the internet (even if he calls it, say, “internet radio”)  merely does so on the same footing as any other person uploading content for downloading or streaming on the internet; no kind of licence is required for this activity (fortunately, at least not so far).

“Broadcast” and “Communication to the Public” under the Copyright Act

The definitions of “broadcast” in section 2(dd) and of “communication to the public” in section 2(ff) have to be read harmoniously. The two definitions are reproduced below:

(dd) “broadcast” means communication to the public-

(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or

(ii) by wire,                                                    

and includes a re-broadcast;

(ff) “communication to the public” means making any work or performance available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing physical copies of it, whether simultaneously or at places and times chosen individually, regardless of whether any member of the public actually sees, hears or otherwise enjoys the work or performance so made available…” (NB: I have omitted the Explanation, not being relevant here.)

Now, although the term “communication to the public” occurs in both definitions it would be erroneous to conflate the two. Since the legislature has provided a different definition for “broadcast” in section 2(dd) it has to mean something different from “communication to the public” under section 2(ff). “Communication to the public” is a broader term including within its scope every mode of communication of any copyrighted work of any kind to the public by any means whatsoever, except the issue of copies. But “broadcast” as separately defined in section 2(dd) is a much narrower term: it is only one of many possible instances of “communication to the public”. This is obvious having regard to the nature of permissible activities of a broadcasting organisation. “Broadcast” is a subset of “communication to the public”.

This is also apparent from section 31(1)(b), under which a complainant can seek a compulsory licence only when (emphasis added) the copyright owner “has refused to allow communication to the public by broadcast, of such work … on terms which the complainant considers reasonable;” In other words, the possibility of compulsory licence is restricted to “communication to the public by broadcast” and does not extend to all communication to the public.

The pertinent law on statutory interpretation is trite, but is stated succinctly by a three-judge bench of the Supreme Court in J.K. Cotton Spinning and Weaving Mills Co. Ltd. v. State of U.P. & Anr. (AIR 1961 SC 1170):  “In the interpretation of statutes the courts always presume that the legislature inserted every part thereof for a purpose and the legislative intention is that every part of the statute should have effect.”

Summing Up

(i) All communication to the public is not broadcasting; broadcasting is only the communication to the public of content by means of the signals which the broadcasting organisation is licensed to transmit under a set of laws that have nothing to do with copyright and “neighbouring” or related rights.

(ii) The intellectual property that broadcasting organisations enjoy under the Copyright Act is only (a) the neighbouring rights granted by section 37 of the Copyright Act and (b) the possibility of obtaining non-voluntary licences to transmit copyrighted content belonging to third parties, by means of electromagnetic signals (only within the technical parameters permitted under their particular broadcasting licences) by following the procedure laid down in sections 31(1)(b) or 31D.

(iv) Sections  31(1)(b) and 31D of the Copyright Act apply only to the communication of content to the public by broadcast in the sense described above. Neither these provisions nor broadcasting organisations have anything to do with the internet.

(v) It follows that no person who is not a broadcasting organisation, duly licensed as such under the laws regulating broadcasting, and enjoying the neighbouring rights granted by section 37, can possibly avail himself of the statutory licence under section 31D.

The Bombay High Court Judgement

In its lucid and well-reasoned interlocutory judgement in the Tips v. Wynk case, the Bombay High Court rightly rejected several defences made in that case (“fair use”, transient use under sections 52(1)(b) and (c), reliance on the notorious OM dated 05.09.2016 etc) that are not germane to my argument here.

Besides rejecting weak defences, the Court based its conclusions on inferences of legislative intention from the proceedings of the Parliamentary Select Committee and from the wording of section 31D(3).  The Court also found Rules 29(3) and 29(4) to support its conclusions. It is submitted that this route to the same conclusion that I have reached, though correct, was perhaps more circuitous.

Learn how to prioritise from the best! (News clipping               taken from LiveMint)

As readers know by now, the Nobel Prize in Economics (officially known as “The Sveriges Riksbank Prize in Economic Sciences in Memory of Alfred Nobel”) went to Esther Duflo, Abhijit Banerjee and Michael Kremer for their work in development economics. All three have done remarkable work and several sites have discussed this in varying degrees of detail as a web search will show (for eg: do check the Marginal Revolution blog which has listed out the various papers done by all three economists). For the purposes of this blog post, I’d like to focus on some of the early work done by Michael Kremer in the area of patents and public health in developing countries – theoretical work that has since also been converted to practical action via what are called “Advanced Market Commitments” (AMCs) for vaccines. While not without their criticisms, AMCs have received billions of dollars in backing, with estimates that they will lead to the saving of millions of children’s lives in developing countries. (Do note: From the press release, the trio won the Nobel “for their experimental approach to alleviating global poverty”. Though they do mention vaccines as well as child-health, there is no direct reference to the work discussed here)

• Michael Kremer, Patent Buy-outs: A Mechanism for Encouraging Innovation, 1998, Quarterly Journal of Economic Affairs (PDF available here)

The drawbacks of the patent system, especially in sectors involving public goods (health, education, etc) have drawn the attention of a number of legal and economic scholars over the last few decades. These drawbacks include biasing research direction away from products that cater to uncertain or non-rich markets (eg: relative lack of treatments for tropical diseases), the tendency to avoid, or the inability to price discriminate which leads to ‘pricing out’ poorer consumers (eg, the extremely high prices of several life saving drugs), the incentive towards producing ‘me-too’ products, and so on. However, while the patent system has its drawbacks, the question that needs answering is – what is an alternative or better way of incentivising innovation?

Snippet from Kremer’s 1998 paper

Image from here. Snopes article on mis-attribution of author of quote here.

However, while other scholars, most notably Michael Polanyi also looked at supplementary prize systems via patent buyouts conducted by the government (via his paper “Patent Reform – 1943 article but still behind a paywall link), Kremer differs by suggesting a market mechanism to determine the value of the patents. He also suggests that it be limited to the pharmaceutical industry, by a limited trial to determine how successful it can be. The market mechanism he suggests, is holding an open auction process for anyone to bid on the patent. This, he suggests, will help use the market’s knowledge to better estimate the patent’s value, rather than leaving it to the government to decide. Once the bids are received, 90% of the time, the government will buy it out via a process that utilises a combination of the bids to come up with a patent-value, and with the possibly of a small percentage increment when further incentives are required. To ensure that players are incentivised to bid, the private player will be able to successfully purchase the patent 10% of the time. There are further nuances that I won’t go into here, but Kremer does a reasonably thorough job at pre-empting potential issues. Nonetheless, to several other scholars, the idea still overall seemed theoretically elegant but practically impractical.

Fortunately however, those with power and deep pockets, thought otherwise. Kremer, along with co-authors, proposed a modified version of this in the form of “Advance Market Commitments” (AMCs) for neglected diseases. (2005 paper here, 2006a PDF paper here, 2006b PDF paper here). This involves an offer (which acts as a ‘floor’, in case of a bidding process) of a financial commitment made by donors for a drug not yet available. The AMCs thus look to substitute the expected lifetime revenues that a product would make on a profitable market, with an up front payment, so as to provide an incentive for the development of a product for diseases prevalent in low-income countries.

The year 2007 saw five countries (Canada, Italy, Norway, Russia, the United Kingdom) along with the Bill & Melinda Gates Foundation commit $1.5 billion towards a pilot AMC project for the development of a vaccine for pneumococcus based illnesses. (Check SpicyIP’s coverage of AMCs in 2007 here). The vaccines are being delivered through the Global Alliance for Vaccines and Immunizations (GAVI). According to their webpage, more than 143 million children across 60 countries have received this vaccine, thanks to the AMC financing so far!

It will certainly be worth watching how this idea continues to develop and effect change in the patent and public health world! If nothing else, I do hope that Kremer’s Nobel Prize now will lead to any re-invigoration of this idea / these types of ideas to address the systemic issues with the patent regime! For those generally interested in this area, we have a previous post comparing the trade-offs made by patents, vis-a-vis alternatives like prizes, and a commons-based approach.

P.S. Some context-relevant fun / random facts I discovered in the course of writing this post:
1. It looks like a typo back in 1943 has erased noted polymath Michael Polanyi’s contribution from patent law! His 1943 paper, “Patent Reform” seems to be the only paper he wrote directly on patents, and it was widely recognised for it’s novel contribution to the patent policy/theory discussions. However for unknown reasons (to me at least), his name was spelt as Michael Polanvyi (with a ‘v’) on that paper, and has been cited as such in all the various papers that have cited it! While the 1943 paper doesn’t mention his designation, the author “Polanvyi” does sign off as being in Manchester, and Polanyi was teaching at the University of Manchester at the time. Further, Polanyi (using this spelling) later defended Polanvyi’s idea, in first person, in this Nature article.

2. In the context of Nobel Prize winners – Michael Polanyi was also the father of Nobel Prize winner (Chemistry) John Polanyi, (as well as brother of noted economist Karl Polanyi).

3. Esther Duflo (who, among all her various awards, incidentally, was also awarded the Infosys Prize the same year that Shamnad Basheer was awarded it) is now the youngest person to win the Economics Nobel Prize. The former holder of the distinction of being youngest economist to win the Nobel Prize, Kenneth Arrow, is also well regarded for his contribution towards the ‘alternatives to patent’ discourse due to his 1962 paper titled “Economic Welfare and the Allocation of Resources for Invention“. It looks like Nobel prize winning authors have been talking about this for a while. Might not be a bad idea for policy makers to start examining these ideas more seriously!

Image from here

We’re pleased to bring to you a guest post by our fellowship applicant, Antony Moses. Antony is a 4th year student at NUALS, Kochi.

Do Not ‘Broadcast Yourself’ over Trivial Claims: Applying the De Minimis Standard to Copyright Claims on YouTube

Antony Moses

Recently, YouTube made changes to its copyright enforcement policy. The new policy prevents copyright owners from making use of the “Manual Claims” tool to claim copyright infringement for:

• Short song clips (eg: 5 Secs of a song)
• Unintentional audio (eg: music from passing cars).

The Manual Claiming tool enables copyright owners to manually place claims on videos containing their content when a claim is not otherwise registered by the Content ID system, YouTube’s automated infringement scanner. By the earlier policy, copyright owners freely used the Manual Claims tool to register claims and sue such YouTubers who made use of their content, irrespective of the extent of infringement. In such a contingency, any revenue made by such videos would be transferred by YouTube to such claimants, in part or in whole, depending on the size of the claim.

However, by the new policy, such frivolous claims will no longer be considered as a ground for a valid copyright claim.

This shift comes in the wake of aggressive copyright claims made by record labels during the course of this year. Several cases have been reported wherein YouTubers have lost all or most of their earnings to record labels over trivial claims. In worst cases, it has resulted in videos being taken offline. In one such instance, a guitar tutorial video featuring a two-second lick from the Eagles song, ‘Hotel California” was removed. Therefore, by introducing this new policy, YouTube hopes that the interests of both YouTubers and copyright owners will be adequately balanced.

However, the shift comes with a catch. Though copyright owners can no longer monetise such videos via a claim for infringement, they can choose to prevent the creator from monetizing the video or they can block the video entirely. Currently, the policy is effective only against audio claims and though it will result in more blocked videos in the short-run, YouTube expects the shift to be rewarding for YouTubers and for copyright owners in the long run. The online platform expects that copyright owners, instead of tracking down such videos, will just let them go, since the incentive to make money is lost.

Will the Shift Work?

But I opine that this shift is not a sustainable one. Firstly, YouTube’s strategy may not yield the expected results, since, copyright owners could still opt to block monetization or the video itself. Furthermore, what a “short song” would be is still open to debate. Apart from the reference point of the example provided by the Twitter post, a YouTuber is nothing but lost for guidance. Secondly, a majority of the infringing material is caught by the Content ID system. Therefore, if an audio clip is caught by the Content ID system, copyright owners would still be able to monetise such videos, regardless of how brief or unintentional the audio is. Hence, the shift is at best, a band-aid and at worst, a restraint over creativity.

The Alternatives

Then, what is the alternative for YouTube? By the operation of Article 13 of the recently enacted European Union Directive on Copyright in the Digital Single Market, YouTube is obligated to take action on copyright violations, irrespective of the degree of infringement, lest their protection under the ‘safe harbour’ provision be taken away.

Furthermore, traditional fair use exceptions do not help in all circumstances.  For example, if we were to take a conservative approach to fair use, merely using 5 seconds of a guitar lick from a well-known song in a music tutorial video may constitute infringement, especially if the same is used for a commercial purpose and if the song is highly identifiable by the public at large. However, on the other hand, these parameters may become invalid in a case where 5 seconds is lifted from several copyrighted audio clips to create an entirely different work. In such a case, it would, arguably, fall under fair use since it falls within the parameters of a transformative work. Therefore, with regards to YouTube videos, the traditional tests of Fair Use may not always be successful.

The Solution

I opine that the solution lies in distinguishing trivial or de minimis claims from serious cases of infringement. In the 2012 judgment of India TV Independent News Service v Yashraj Films, the High Court of Delhi recognised that the de minimis maxim must have application in copyright law as well.

The application of the de minimis principle will sufficiently assuage the interests of both creators and copyright owners, unlike the present injunction-based policy regime, which strips a YouTuber of his economic rights under Section 14 of the Copyright Act 1957.

But How Much is De Minimis?

There is no quantitative standard as to the amount of infringement that shall fall within the de minimis exception. The current YouTube policy provides an example for use of unintentional audio as 5 seconds. Does that mean that YouTubers are bridled by this declaration? It only seems invidious to assume the same.

There have been clear instances wherein the purported content has been used repetitively throughout the course of a song or atleast, for a period of thirty-five seconds and it was held to be non-infringing.  On the contrary, there have been case laws to the effect that usage of copyrighted content for a period of 16 seconds has been held to be a valid ground to enforce infringement.  Therefore, we may infer that the test for de minimis does not concern itself with the parameters of time.

As Professor Nimmer explains it, the doctrine is employed only, “if so much is taken that the value of the original is sensibly diminished, or the labours of the original author are substantially to an injurious extent appropriated by another, that is sufficient in point of law to constitute a piracy pro tanto[1]”.

The test for de minimis can be summed up by making use of the following questions,

1. Is the content only “briefly visible”? (Sandovall v New Line Cinema Corporation)
2. Is the use only “incidental”? (Diodato Photography, LLC v Kate Spade LLC)
3. Is the content recognizable? Is it in focus or obscured? (Gordon v Nextel Communications)
4. Was a substantial portion of the plaintiff’s work copied? Is the copy qualitatively and quantitatively insignificant? (Newton v Diamond)
5. Is the defendant trying to make a profit by using the plaintiff’s materials? (Twentieth Century Fox Film Corporation v Marvel Enterprises Inc.)
6. Is the copying detrimental to the value of the copyright owner’s creation in the market? (Video-Cinema Films Inc v. Lloyd E. Rigler-Lawrence E. Deutsch Foundation)

Conclusion

Unlike the fair use doctrine, the de minimis doctrine accommodates more flexibility in interpretation. Quantitatively trivial transgressions by YouTubers must be assessed by the de minimis standard instead of the present ambiguous scheme. This shall contribute to the effective identification of actual infringers instead of innocent content creators. However, the application of the de minimis standard could be challenging, especially in an algorithm such as the Content ID tool. However, as a first step, parameters of minimum time or audio length, relative to the length of a song, can be added to the algorithm. This will make the application of the de minimis standard easier. As an additional check, the de minimis standard could also be provided as a defence for YouTubers during an appeal to the platform with regards to the removal of content.

Topical Highlight

Prashant wrote a post on an order passed by the Delhi HC concerning the marketing of a biosimilar of the breast cancer drug Herceptin by Reliance Life Sciences. Genentech, which owned the erstwhile patent for Herceptin, filed a suit against Reliance claiming that their drug did not comply with Guidelines for Biosimilars and hence could not claim to be as efficacious as the drug sold under the Herceptin brand. In this appeal, the Delhi HC overturned the decision of Justice Manmohan Singh that held in favour of Genentech in a similar case against Biocon and Mylan, thus giving the go-ahead to Reliance Life Science’s biosimilar. However, Prashant notes that the judgment records a number of damaging allegations against the way Reliance conducted its clinical trials, which may make doctors hesitate before prescribing their drug.

Thematic Highlight

Swaraj wrote a post on some of the earlier work of Michael Kremer (recent winner of the Nobel Prize in Economics) in the field of patents and public health in developing countries – theoretical work that has since also been converted to practical action via what are called “Advanced Market Commitments” (AMCs) for vaccines. Kremer has proposed to solve the conflict between incentives and accessibility by looking towards a prize system as a supplement, rather than an alternative to the patent system. This proposal has seen interest from a number of countries, and still remains relevant in the field of public health.

Other Posts

In his first submission, fellowship applicant Antony Moses critically discusses the changes in YouTube’s copyright enforcement policy. The change allows copyright owners to block or restrict commercialisation of infringing content, but not claim the money made by infringing content. Antony argues that this change may not result in the desired balance that YouTube is attempting to create. He argues, instead, for the incorporation of the ‘de minimis’ rule in YouTube’s copyright enforcement policy and Content ID software, which would be more flexible and objective in its application.

In a guest post, Jagdish Sagar wrote on the decision of the Bombay HC in Tips v Wynk. He notes that while the decision in the case is correct, it missed out on more persuasive reasons to reach the same. He argues that since broadcasting over the internet does not require a license, ‘broadcasting via the internet’ should not constitute ‘broadcasting’ under the Copyright Act 1957. As a consequence, Section 31D cannot be made applicable to internet broadcasters such as Spotify or Wynk.

Other Developments

News

• Plea in Madras HC to block release of Vijay’s film ‘Bigil’.
• Hike becomes one of the top three patent filers in India.
• Delhi High Court dismissed the petition of German drugmaker against Natco Pharma.
• China accounts for nearly half of global patent filings: UN
• Delhi HC refuses to grant ad-interim injunction to Saregama for copyright infringement.
• DPIIT launches website and mobile app for IPR.
• India among top 10 countries in intellectual property filings.
• Centrient Pharmaceuticals initiates a second patent litigation in India against Dalas Biotech Limited.
• Exam answer sheet is information under RTI: Madras HC.
• Dr Zeus threatens ‘Bala’ makers for plagiarising his song ‘Don’t Be Shy’

Opinion

A piece in the Hindustan Times discusses the role of intellectual property rights in the reformation of the education sector.

International

• Katy Perry and Dark Horse collaborators appeal for a re-trial in plagiarism judgement that cost them almost 3 million dollars.
• Twitter suspends pro-Trump meme creator for copyright violation.
• US-India IP Dialogue aimed at strengthening IP collaboration.
• Sun pharma gets a global license for CSIR-IICT’S patents for new drug compounds.
• Quick Heal gets US patent for signature-less, behaviour-based detection technology.
• Justin Bieber is being sued for posting a paparazzi photo of himself.

Image from here

The Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPV Act) is probably one of the least understood IP laws in this country. Arbitrary and ultra vires actions of the PPV authority certainly don’t help the cause, irrespective of whether the motive is right or wrong.

In this case, I am referring to Public Notice 01/2019 published in May 2019 and clarified in a certain meeting with stakeholders in August 2019. To the best of my knowledge, there is no challenge to this Public Notice currently pending in any court. There are several aspects to the discussion and therefore, this is intended to be a multi-part series. This is Part-I.

What Does the Public Notice 01/2019 Do?

The Public Notice 01/2019 creates a so-called “compound” system for seeking registration of ‘hybrids’ and ‘parental lines’. I don’t intend to make this entry into a detailed exposition of plant varieties from a scientific perspective, but the following pictograph is useful to understand the terms ‘hybrid’ and ‘parental lines’.

Image from here

With reference to the above example, a different hybrid will be obtained if Parent 1 is crossed with a different parental line, say, for instance, with Parent 3. Similarly, a different parental line can be crossed with Parent 3 to obtain a different hybrid. The key points to remember are:

1. one of the parents of one hybrid can also be a parent for several other hybrids; and
2. a change in one of the two parents can change the hybrid.

P.S: This is assuming we have a single cross or a two-way hybridization. Interestingly, the Public Notice 01/2019 states that hybrids obtained by three-way or four-way hybridization are not registrable under the PPV Act. This will require a separate detailed explanation and more on that in a separate blog post.

The Public Notice 01/2019 states that registrations of parental lines and hybrids would only be permitted as a composite package. This system is made applicable to future applications for registrations, as well as all pending applications but not for registrations already granted.

The ‘compound’ application system is as below:

• The same registration number for the parents and the hybrid will be retained with a different suffix for the parents and the hybrids;
• The applications for each of the parents and/or hybrids can be filed separately and even spaced across time;
• The compound system is not just a procedural matter though and extends to substantive rights. The rights over the hybrid is co-terminus with the rights of the parent lines. Thus, if one or both of the parents is already registered / applied for, the hybrid’s registration will relate back to the earliest of the registration dates and thus, the rights over the hybrid will terminate along with that of the parent.
• The registrability criteria for hybrids and parental lines are also made inter-dependant. In general, under the PPV Act, a registrable variety must satisfy the critical ingredients, of being ‘distinct’, ‘uniform’ and ‘stable’ (Refer Section 2(za)(ii)-(iii) of the PPV Act). This is otherwise known as the DUS standards. The inter-dependency created as per the Public Notice 01/2019 (read with the clarification issued as per the stake holder meeting in August 2019) is summarized in the matrix below:

Case III as per the matrix is my interpretation of paragraph (f) of the Public Notice 01/2019 read with the meeting minutes of August noted above. Said para (f) of the notice and the language used in the meeting minutes of August, are extracted below:

“f) If a candidate hybrid variety or any of the parent/parents under DUS testing fails on Uniformity test, and in the case of parent/parents on Stability test, then the hybrid along with its parents that generated it shall be rejected.”

“…Para (f) refers to hybrid failing uniformity test and parents failing stability test in which case all will be rejected…”

The meeting minutes refers to a situation of rejecting both the parent and the hybrid if the hybrid fails the uniformity test and the parent fails the stability test. Granted, the language used in para (f) of the Public Notice is different (since it refers to uniformity of parents as well and not just the hybrids). Ultimately, the PPV Authority would have to clarify what it really intended to mean because the difference in language used across the two documents is certainly unhelpful. For now, though, I will assume that the language used in the subsequent meeting minutes of August is what the authority truly intended.

Ultra Vires – Term of Protection

I have several legal issues with this Public Notice 01/2019 and frankly, it is not possible to bring these all out within this one blog post. The main issue on which I will focus on here is the fact that the notice is ultra vires. The Public Notice 01/2019 is purportedly issued under Section 20 PPV Act, which is simply the provision empowering the PPV Authority to examine any filed applications for acceptance – sort of an initial scrutiny. There is no empowerment under Section 20 to frame guidelines of this nature.

Apparently, this lack of power was raised as an issue in a stake holder meeting in August 2019 and the minutes indicates that the PPV Authority has continued to maintain that Section 20(1) empowers it and/or will consider whether other provisions need to be referred to.

There is a general power under Section 8(1) of the PPV Act enabling the authority to take measures at it deems fit for “the encouragement for the development of new varieties of plants and to protect the rights of the farmers and breeders”. There is also power conferred under Section 95 of the PPV Act to frame regulations “consistent with this Act and the rules made thereunder to carry out the provisions of this Act”, subject to those regulations being laid before the Parliament as per Section 97.

On the face of it, the Public Notice 01/2019 does not fall within the scope of Section 8(1) or 95(1). Even if the PPV Authority is able to demonstrate the existence of any express or implied powers, it is moot point because no such power conferred on a creature of a statute can be exercised in a manner that is contrary to the statute itself. In this case, by amending the eligibility criteria for registration and the term for which exclusive rights can be exercised, the PPV Authority is amending the PPV Act.

Under Section 28(6) of the PPV Act, for trees and vines, the registration is initially valid for a period of 9 years (and 6 years for other crops). This is renewable subject to a certain maximum period:

The fact that the term of the hybrid is made coterminous with a parent is not consistent with the PPV Act. The Patents Act, 1970, for instance, expressly refers to such a situation in the cases of patents of addition. Nothing similar is contained in the PPV Act and for the Authority to bring this into effect is worse.

Ultra Vires – Eligibility Criteria

As far as the eligibility criteria is concerned, in theory, each item for which registration is sought, must fulfil the definition of ‘variety’ as per Section 2(za) and fulfil the DUS standards as defined in Section 15(3)(b)-(d) [Note: if registration is sought as a novel variety, then an additional of novelty as per Section 15(3)(a) needs to be satisfied. This is not relevant for this blog entry]. Meaning thereby, each variety for which registration is sought must separately fulfil the DUS requirement. Therefore, for instance, a hybrid must be a ‘variety’ and inter alia, must also be ‘distinct’. A parent must also independently be a ‘variety’ and inter alia, be ‘distinct’.

By extension, by connecting the eligibility criteria of one variety with another, the PPV Authority goes beyond what is contemplated in the statute. So, the Public Notice 01/2019 does appear, on the face of it, to be ultra vires even on this issue. However, the more I think, the more I feel there is a lot more to be discussed on this point and so, stay tuned for Part-II.

Please click here to view Part II and here to view Part III of this three-part post.

In a sharply worded order passed last week, Justice Pratibha Singh of the Delhi High Court has made scathing observations regarding the dysfunctional Intellectual Property Appellate Board (IPAB) and has demanded answers from the Secretary of the DIIPT on the state of affairs at the IPAB.

The tribunal is empowered to hear appeals against orders of the IP Office, as well as the power to hear revocation petitions against trademark and patent matters as well as fix royalty rates under the Copyright Act. It is required to hear these matters by constituting benches of two, consisting of one judicial member and one technical member who is supposed to be an expert either in trademarks or patents or copyright or plant varieties, depending on the matter that is being heard. Currently there are no judicial members on the IPAB because of which it cannot conduct hearing.

Justice Pratibha Singh, in her order, summarises, the state of affairs at the IPAB in the following words:

“The IPAB is a specialized forum which was constituted under the Trade Marks Act and the Patents Act in order to ensure expeditious disposals of intellectual property matters. The manner in which the IPAB has been functioning during the last over 15 years shows that at every stage, there has been delay in the appointments being made to the IPAB, both of judicial members and technical members. Further, adequate infrastructure and autonomy is also not granted to the IPAB in order to make its functioning efficient and smooth. The statement of objects and reasons when the Trade Marks Act was amended, clearly records that the purpose of the IPAB is for speedy disposal of appeals and rectification applications, which at that time was jurisdiction which was vested in the High Courts. However, this purpose has been completely set at naught owing to the manner in which the IPAB has been functioning since the time it has been constituted.”

As a lawyer, prior to her elevation to the bench, Justice Pratibha Singh had sued the Government of India, in her capacity as the Secretary of the Asian Patent Attorney Association (APAA) on the grounds that the IPAB was not being provided enough resources. Those petitions filed 6 years ago were quite successful and lead to the IPAB getting a permanent office in Delhi. Until then the IPAB was leading a ‘nomadic existence’, as Aparajita had described it in her post over here.

Over the years, the IPAB has had a truly fraught existence, save for the few years when Justice Prabha Sridevan churned out some great jurisprudence in the years that she was the Chairperson of the IPAB. There have been serious worries about the independence of the IPAB and Shamnad had even filed a PIL before the Madras High Court, where a great legal team consisting of Senior Advocate Arvind Datar and Vineet Subramani convinced a bench headed by the then Chief Justice Sanjay Kishan Kaul to strike down parts of the Trade Marks Act in order to guarantee the independence of the IPAB. The judgment can be accessed here.

Yet, here we are, almost 9 years after Shamnad first filed that PIL, discussing the state of affairs because of another assault on the IPAB’s independence by the Finance Act, 2017. While discussing the constitutionality of the Finance Act, 2017 a few years ago, I had pointed out how it was important for IP Bar Associations to take up the fight to protect judicial independence of the IPAB. Strangely, apart from Justice Pratibha Singh, who as a lawyer was ready to sue the government over the functioning of the IPAB, most other IP lawyers appear to be either disinterested or simply clueless about the state of affairs at the IPAB. I use the word “surprising” because the IP Bar has the most to gain from a fully functional IPAB, yet they do very little to make sure it functions. Other bar associations like for example the one representing practitioners before the Debt Recovery Tribunal (DRT), went all the way till the Supreme Court to ask for reform of the DRTs. Perhaps, Indian IP lawyers are earning too much money through IP prosecution before the IP office to really care about litigation before the IPAB.

We are now at the stage, where the IPAB has been dysfunctional for a good portion of the 16 years for which it has been in existence and it is time to ask whether the government should be petitioned to simply shut down the IPAB and revert the functions vested in the IPAB back to the High Courts.

Image from here

In a much-lauded decision, Justice J. R. Midha of the Delhi High Court has made it easier and quicker for applicants to appeal a decision of the Registrar of Trade Marks arising from a refusal or partial acceptance of a trademark.

This decision arises from a writ petition (Intellectual Property Attorneys Association v. Controller General of Patents, Designs, Trade Marks & Anr) that challenged the non-speaking orders passed by the Registrar of Trade Marks while refusing trademark applications. The petitioner, Intellectual Property Attorneys Association (IPAA), argued that such orders were in violation of Section 18(5) of the Trade Marks Act, 1999 (“the TM Act”).  The said section reads as follows:

“Section 18: – Application for registration:

…..

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decisions.”

IPAA further pointed out that Rule 36 of the Trade Marks Rules, 2017 is inconsistent with Section 18(5) of the TM Act. Rule 36 reads as follows:

“36(1) Decision of the Registrar: The decision of the Registrar under Rules 33, 34 & 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at his decision.”

The Court accepted the argument of IPAA and held that Rule 36 is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute, namely, Section 18(5) in so far as it empowers the Registry to communicate the decision of the Registrar without the grounds of refusal or conditional acceptance. Accordingly, it observed that Section 18(5) would prevail over Rule 36.

The effect of the decision for an aggrieved applicant is two-fold: first is that it reduces one procedural step in the appeal process, namely, applying to the Registrar, seeking the grounds of refusal or conditional acceptance. Secondly, it saves the time of an aggrieved applicant in waiting for the written communication of the Registrar of the grounds of refusal or conditional acceptance before it can file an appeal.

More importantly, this ruling is bound to increase the transparency at the Trade Marks Registry.

Image from here

In Part-I of this three-part post, I provided a brief summary of the compound system of registration for parents and hybrids, created under the Public Notice 01/2019 of the PPV Authority. I had offered my view that the notice is ultra vires as far as it affects the term of protection for hybrids. I had ended it by noting prima facie that the notice may also appear ultra vires as far it links the eligibility criteria between parents and hybrids, with a caveat that a further discussion may be needed.

In this Part-II, I continue discussing the issue of ultra vires, qua the aspect of linking the eligibility criteria – Distinctness, Uniformity and Stability, or DUS for short.

Distinctiveness

As for distinctiveness, the Authority has been careful in stating that the distinctiveness of parent or the hybrid will suffice for the (parent + hybrid) combination subject to genotypic differentiation as per special testing contemplated under Section 19 read with Rule 29. I think this is an important condition. As most practitioners would know, the DUS testing conducted for plant variety registration (i.e. field trials) focusses on ‘phenotype’ – this relates to an observable characteristic, which is distinct from ‘genotype’ – this relates to the genes/genetic makeup that code for a characteristic. The short point is that not all genes/genotype results in an observable characteristic. Field trials can only enable the study of observable characteristics and thus, for genotype differences without corresponding observable characteristics, a special test would have to be undertaken (genetic level analysis).

Therefore, I do not consider the PPV Authority to be diluting the distinctiveness criterion. Rather, the acknowledgement is that in the ‘compound’ system, the distinctiveness need not be limited to only phenotype but also genotype.

Stability and Uniformity

If the parent lacks stability, the parent is anyway not registrable independently. However, there may be a logical reason for this to affect the hybrid as well.

As per Section 2(za)(iii), for a hybrid to be considered a ‘variety’ in the first place, the hybrid must be “considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation”. Simply put, the focus here is that the variety can be propagated or reproduced ad infinitum without being changed. There was a debate sometime in the past as to whether hybrids would fulfil this requirement. I don’t intend to replay this debate here but the reason for this debate was that hybrid seeds would not always result the same hybrid plant. Readers may recollect the pictogram I took out in Part-I. The complete pictogram from the same source indicating this point is as below:

Image from here

The conclusion of this debate at the UPOV and the EU level was that the F1 hybrid (the first-generation hybrid) could fulfil this criterion since the hybrid can be propagated unchanged through the crossing of its parental lines. The F2 hybrid (the second-generation hybrid) would not fulfil this criterion because the traits will ‘segregate’ and they will not be identical to the F1 hybrid.

Similarly, for a hybrid to be registered, it must independently fulfil the criterion of ‘stability’. A variety is ‘stable’ as per Section 15(3)(d) “if its essential characteristics remain unchanged after repeated propagation or, in the case a particular cycle of propagation, at the end of each such cycle”. Once again, the F1 hybrid could fulfil this criterion since the hybrid can be reproduced unchanged by repeated use of its parents. The F2 hybrid would not fulfil this criterion.

Therefore, there is a logical link between the lack of stability in the parent and the lack of stability in the hybrid.

On a similar note, the PPV Authority may also justify a linkage between the uniformity of the parents with that of the hybrid. As per Section 15(3)(c), a variety is uniform, “if subject to the variation that may be expected from the particular features of its propagation it is sufficiently uniform in its essential characteristics.” ‘Uniformity’, in simple terms, refers to individual plants of that variety consistently having the same characteristics. Logically, if the parents are not ‘uniform’, the hybrid produced therefrom is unlikely to be uniform.

P.S: However, what confuses me is that the language used in the Public Notice and the Meeting Minutes of August. These documents do not seem to link uniformity with uniformity, and stability with stability. Instead, there seems to be a “mix and match” approach for these criteria, as I noted in Part-I. Perhaps, the arbitrariness of the Public Notice could be questioned by the sheer ambiguity in language. Or perhaps, there is another element of the puzzle which I am missing.

The International Seed Federation takes the view that the DUS of a hybrid can be tested on the hybrid or on its parents. A similar sentiment is expressed in the UPOV document that provides a general introduction to DUS testing, where it is indicated that a hybrids’ DUS can be tested through the parents involved. TGP/8 and TGP/9 from the UPOV provide further details as to how distinctness of the hybrid can be assessed with the help of parents (the so-called “parent formula” approach).

So, Is the Public Notice Ultra Vires Qua the Linking of Eligibility Criteria?

From the above analysis, it appears that there is a substantive and logical link between the DUS of parents and the hybrid. The contention of the PPV Authority could be that if the correct application of the statute in any event would link the eligibility criteria of the parents with the hybrids, making this explicit vide a Public Notice cannot be questioned. At best, the PPV Authority could contend, the Public Notice is simply a formulation of DUS testing guidelines applicable for hybrids, qua the linking of eligibility criteria.

Let us examine the scheme of the Act, Rules and Regulations in the context of the DUS testing requirement. For simplicity-sake, I have broken this down to the following matrix:

Thus, the statute does contemplate the possibility of the Authority requiring seeds of both the candidate variety and the parental material for testing purposes. Whereas the “standards” of testing are to be specified in “regulations”, which the Authority is empowered to issue under Section 95, the “manner and method” of testing is to be prescribed in “rules”, which the Central Government is empowered to notify under Section 96. In either case, whether it is a rule of a regulation, the Act prescribes a procedure under Section 97, whereby it is placed before the Parliament.

The first point to be made here is that the Public Notice is neither a rule nor a regulation and it has certainly not passed through the procedure prescribed under Section 97. When a statute empowers doing something in a certain way, it must be done only in that way and deviance cannot be tolerated. Of course, while this would strike down the Public Notice, the Authority can re-issue the same content as a Regulation after ensuring appropriate compliance under Section 97.

Second, and the more important issue to be decided substantively is whether the linkage in eligibility criteria is a matter of “standard” or does it concern the “manner and method” of testing? The PPV Authority is entitled to frame regulations only if it concerns the former and not the latter (that is for the Central Government). In my view, the Public Notice is providing a manner and method of testing – the hybrids’ DUS is being evaluated by testing the parent. In which case, the PPV Authority does not have the power under the PPV Act to frame such a regulation.

The issue is complicated further by Rule 22(2) & (3) of the PPV Rules framed by the Central Government. Under these clauses, the Central Government has effectively empowered the Authority, inter alia, to “develop DUS test and other test criteria”. Arguably, a method of testing hybrids by testing their parents could be justified as a “DUS test…criteria” applicable for hybrids. However, supporting the Public Notice (or a regulation with the same content) under this Rule may not turn fruitful in the long-run, because, on the face of it, Rule 22(3) is contrary to the legislative intent behind Sections 19(1) & 19(3), which categorically split the subject matter on which the Authority and the Central Government are to act.

In my analysis, therefore, the Public Notice is unlikely to withstand legal scrutiny qua linking of eligibility criteria. Even if framed as a regulation under Section 95 by the Authority, the question of power remains. Nevertheless, I would think that any Court confronted with the issue may find it necessary to interpret Rule 22 of the PPV Rules carefully and you never know, Rule 22 itself may have to be challenged.

Stay tuned for Part-III, where I intend to discuss further on the Public Notice.

Please click here to view Part III of the post. 

On October 24th, the Niti Aayog released the first edition of the India Innovation Index (III). The Institute for Competitiveness was the knowledge partner for this endeavour. After years of various other global and pseudo global innovation (and IP) indices, it is a welcome development to see a national index that examines innovation within the country. It’s a 250+ page document with a substantial amount of data and analysis, as well as a large number of (very useful) graphical representations, that give a good few hours of interesting reading. The report has distributed its focus on a number of factors, not placing undue importance on IP. In fact, the report even goes on to state (page 53) that despite the large amount of importance given to patents, grassroots innovations are a fairer indicator for a country like India.

However, there seems to be some dissonance between the Report, and what Niti Aayog (NA) and Institute for Competitiveness (IFC) have said otherwise – for the recommendations that came out of the NA+IFC Roundtable on “Innovation for Prosperity”  held on Dec 4th, 2018, (also referenced and incorporated in the Report) were to consult with industry on Section 3(d) of the Indian Patents Act, as well as on the usage of Compulsory Licences.  In this post, I will quickly go over the report, and then come back to this issue. For a one line summary – overall, great start to examining innovation in the country, but that one page out of the the 256 page document that suddenly incorporates recommendations made prior to the creation of the report gives cause for worry. For the longer version, read on.

Objectives and Approach of the Report

From the preface of report: “The Index aims to perform two objectives. The first one is to help better understand a state’s innovation ranking and relative performance by incorporating key indicators relating to the seven pillars that can be used to understand the performance of a state with regards to its innovation capabilities. Secondly, it aims to empower states to improve their innovation policies while leveraging their strengths and overcoming their challenges”

The 7 pillars that it refers to are: Innovation input aka ‘enabler’ pillars: (1) Human Capital, (2) Investment, (3) Knowledge Employment, (4) Business Environment, and (5) Safety and Legal Environment; and Innovation output aka ‘performance’ pillars: (1) Knowledge Output and (2) Knowledge Diffusion. Table taken from III Report.

You can view the overall chart of scores by state on page 56 of the report, or by viewing the PDF here. It was good to see that the report was not reduced to a simplistic ranking of states, but rather, though it did rank states on the above shown 33 indicators, the focus was on identifying areas of strengths and weaknesses of each state. In an attempt to compare states against their relative peers, they were divided into 3 groups in an attempt to compare states against their relative peers:-
(1) North-east and hill states, (2) Union Territories, city-states and small states, and (3) Major states. Contrasted to how reductive ranking-focused reports tend to become, this relative-to-peers strength/weakness approach is a much more useful approach, providing starting points for policy makers, etc.

The report also has a number of interesting visualisations based on their data, such as this one.

Recommendations on India’s IP Regime. 

Clearly some effort has gone into the making of this report, as well as into the communication of the large amounts of data that it has produced. This is very welcome. Having said that – it is somewhat strange that only 3 pages of this report are kept aside for “Learnings and Recommendations”. Out of these 3 pages, 1 page (page 209) seems to just be a summary recap of the 2018 round-table referred to above, along with their recommendations. This is strange, because while the rest of the report relies on the data collected and presented in the report, 1/3rd of the already small ‘Learnings and recommendation’ chapter seem to be presented on the basis of what was discussed at a round-table before this report was created.

There are primarily 3 IP centric recommendations mentioned and all are on this one pager. It mentions that the round-table panelists spent some time discussing two of the most discussed aspects of the Indian IP regime – that of Section 3(d) and Compulsory licenses (CLs). While the language in the report is kept neutral, a look at the slightly more in depth whitepaper from the round-table (which this section of the report indicates it is based on), provides more insight on what the report language is hiding. Referring to both Section 3(d) and CLs, it says that there is wide belief that these are affecting India’s innovative capabilities and therefore claims it is important for the Indian Government and the industry to develop a plan of action beneficial for the industry as well as the general public! It then goes on to recommend the following (emphasis my own) :

1. A consultation mechanism prior to issuance of a CL, so as to enhance coordination between industry and government.
2. Deliberate Section 3(d) with industry
3. Discuss India’s CL provisions with industry, to ensure transparency and predictability

There is nothing wrong with involving industry, and indeed, it is desirable to get industry at the table when creating policies etc for innovation, so long as it is along with the various other stakeholders! This blog (and nearly every other Indian source writing on India’s IP regime) has done more and enough on Section 3(d) and CLs as a simple search will show. But even ignoring all of that – given that these recommendations have just been taken and placed into the India Innovation Index – it bears highlighting that the reason mentioned in the whitepaper for these recommendations is that ‘there is wide spread belief‘ these provisions are impacting India’s innovative capabilities!

Taken from Page 6 of the round-table whitepaper. Reminds one of the leaps of logic taken by the US Chamber of Commerce’s GIPC Report.

Further, the jump from this ‘belief’, to the recommendations that industry has the answers, is another cause of mystery to me. Surely some sort of data could have been presented, the basis of which recommendations could be then made? It’s a shame to see that in an innovation report that is otherwise full of actual data and reasonable rigour, these explicitly stated ‘belief’ based recommendations are the ones presented as recommendations for India’s IP regime.

Industry-Academia Linkages and Academia IP Policies

Finally, even though not under the heading of “IP Regime”, the report does make a couple of more interesting suggestions – increasing industry-academia linkages, and encouraging universities to create IP policies. These types of advances are indeed long due and so long as they’re carried out properly, should help India’s innovation potential. However, it does raise a question – what ever happened to the the ‘2008 Protection and Utilization of Public Funded Intellectual Property Bill’ more popularly referred to as the Indian ‘Bayh-Dole’ bill? The intent of the bill had been to regulate the patenting of public funded research. At the time, there was a big hullabaloo around the draft bill, with various concerns being pointed out (see this summary from a conference Shamnad had organised in 2009, and other resources here) along with various recommendations to improve it. On a quick search, I can’t seem to find anything about what happened to the bill eventually. If readers have more information, please do comment below.

In any case, on Sept 9th, 2019, the DIPP released the Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions. Given that this is essentially the answer to one of the recommendations from the India Innovation Index, it will be interesting to do a more in-depth review of these policies – and I hope to bring this out in the coming few days.

On October 23, a single judge of the Delhi High Court – Justice Prathiba M Singh – issued an interim injunction directing Google, Facebook, YouTube, Twitter and other unnamed intermediaries to take down on a global basis, defamatory content uploaded on their platforms against Baba Ramdev (‘Judgment’). The Judgment is significant as it went beyond the conventional mode of ‘geo-blocking’, whereby the take-down of URLs is limited to specific geographic locations.

Background

The present Judgment is only a link in a rather longish chain of litigation surrounding the publication of a book titled ‘Godman to Tycoon: The Untold Story of Baba Ramdev’ by Priyanka Pathak-Narain. Upon the publication of the book, Ramdev approached the Delhi High Court alleging that it contained portions which were defamatory to him. An ex-parte ad interim injunction was granted by the High Court in May 2018, after which the Supreme Court directed it to expedite the hearing of the case and decide it by September that year. Subsequent to the SC order, in September, a single judge of the High Court restrained the publication, distribution and selling of the book and directed that certain offending portions be deleted. The direction itself was interim in nature as it was made subject to the final outcome in a civil suit between the parties.

The Judgment under consideration though stems from the publication of certain videos, which were based on the offending portions of the book, on the defendants’ platforms. Although, in January this year, the Court had passed an interim injunction directing the defendants to disable access to the offending URLs and weblinks for the India domain, no direction was passed on Ramdev’s request for global blocking. Through this Judgment, the Court sought to address this request for global blocking.

Although the intermediaries were willing to carry out geo-blocking thereby limiting accessibility of offending content in India, Ramdev argued that this was an ineffective solution. This is because internet users in India could still access such content using VPNs and other mechanisms. Thus, the only effective remedy was to issue a global blocking order, submitted Ramdev.

Internet intermediaries argued that such a global blocking posed many legal difficulties for them. Primarily, given the varying standards of defamation law across jurisdictions, disabling access across the world may put them on the wrong side of the law in jurisdictions with a higher threshold for establishing defamation. A number of other arguments were raised, including that the plaintiff’s reputation is localized in India and thus geo-blocking is sufficient, and despite the cause of action being one in personam, the suit was filed by a Power of Attorney holder.

Decision

Although the Judgment runs into 76 pages, the reasoning in favour of a global blocking order is found in page 63 onwards. It is important to note at this point that since the impugned videos were admittedly based on the portions of the book which had already been held to be prima facie defamatory, the Court does not make a separate assessment of whether the videos are defamatory in nature.

As to the rationale for global blocking, the Court relies on the safe harbour provision for intermediaries – Section 79 of the Information Technology Act, 2000 (‘IT Act’). It observes that in order to avail the immunity provided therein, intermediaries have to disable access to the offending material residing in or connected to a computer resource. Relying on the definition of “computer resource” in the IT Act, the Court goes on to hold that it is not merely a single computer but “encompasses within itself a computer network, which would include a maze or a network of computers. Such a computer network could be a global computer network”. Thus, for an effective adherence to the intermediary obligation under S.79, removal or disablement has to be effected on the computer network completely.

The Court thereafter reasons that jurisdiction to direct removal is vested with a court where the uploading of offending materials takes place. Thus, if the uploading takes place from an IP address located in India, then Indian courts would have the jurisdiction to direct removal from the entire computer network. It further observes that the obligation to disable access would be incomplete if users can gain access to off-shore platforms of the defendants. Additionally, the obligation to disable access, as envisaged in S.79, is not limited to disabling access to users located in India. Thus, the Court concludes that geo-blocking does not sufficiently fulfill the obligations on intermediaries.

The Court sums up its reasoning by stating that: “so long as either the uploading takes place from India or the information/data is located in India on a computer resource, Indian courts would have the jurisdiction to pass global injunctions”. But, the Court notes in a later portion that if the material is uploaded from a location outside India, but disseminated in India, then intermediaries need to only geo-block.

Some Observations

One of the main reasons why the Court favoured a global blocking order was that an “injunction order passed by the court has to be effective”. Nevertheless, as the Court itself acknowledges, the race between technology and law is a ‘hare and tortoise race’. This is very much true of the global blocking mechanism devised by the Court. As noted by the Software Freedom Law Center, it is not difficult to technologically outwit the Court’s jurisdiction. Using VPNs, a user located in India can easily mask the IP address and make it appear as if the material is being uploaded from outside India, negating the Court’s jurisdiction.

Another sticking point in the Judgment is that the Court effectively brushes aside key countervailing arguments in relation to freedom of speech and conflict of laws. It addresses these arguments by merely noting that they have to be balanced against equally hefty values like right to reputation, national security, national integrity etc (without actually undertaking a balancing exercise). As Gautam Bhatia had argued at the time of the ex-parte injunction last year, Indian courts seem to increasingly view freedom of speech as a mere annoyance to be brushed aside when confronted with competing claims.

Moreover, consider what will happen if courts across the world join in on the global blocking bandwagon. This would make it easy to approach a domestic court in any part of the world with a propensity to pass such orders and obtain a global censorship. What this would do to free speech is imaginable.

The Judgment has now been challenged by Facebook before a Division Bench, which has refused to grant a stay. Nevertheless, it has restrained any contempt action being taken against Facebook till it decides the appeal.

We are pleased to announce that Inter University Centre for IPR Studies, Cochin University of Science and Technology (CUSAT) is organising the seventh annual ‘Rethinking Intellectual Property Rights’ workshop on the theme ‘Role of IPR in the Realm of Sports’ for law students and students of other disciplines interested in this area (under graduates, post graduates and research scholars). The programme is scheduled to be held from January 31- February 2, 2020. For further details, please read the announcement below:

Rethinking Intellectual Property Rights
Seventh Annual Workshop
Theme of 2020: Role of IPR in the Realm of Sports

About the Annual Workshop

Rethinking IPR is an annual National Level Workshop for Law students and students of other disciplines interested in IP research (undergraduate, post graduate and research scholars) organized by the IUCIPRS, CUSAT to initiate critical thinking regarding the role of Intellectual Property Rights in a social context. The pedagogical practice existing among the Law Schools in India predominantly approaches IP from a commercial angle, often ignoring the social implication of IP.

The main objective of Intellectual Property law is to maintain a correct balance between protection of IP and providing access to the public to the modern technology and its benefits. The western approach of looking at IP as a catalyst of development is being followed by our law schools without being interrogated. Our experience with the western approach signifies that it stifles innovation and research and creates barriers in the enjoyment of benefits by the public. The question therefore is, should India imitate the western practices, both statutory and judicial, or whether we should evolve our own jurisprudence of IP reflecting wider questions of national development and the welfare of people.

About the Theme of 2020 : Role of IPR in the Realm of Sports

Sports is no more just a leisure or physical activity. It has developed into a major entertainment source and multimillion-dollar business industry. Multinational companies invest in major sporting events on a wide variety of ways, from sponsoring a national team to broadcasting a major sporting event. Innovation and creativity are key drivers in the world of sport. In every sporting field, inventors and creators are working behind the scenes to push the boundaries, creating new opportunities for enjoyment and for athletes to better their performance. Creators can be given the rights to exclude others from using their inventions or designs or other creations. Today IP is found everywhere to protect the innovators, including sports.

Technological advancements that result in better sporting equipment are protected by Patents. Some countries have provided patent for different sports moves as well. The distinct identity of events, teams and their gear can be a subject matter of Trademark and Design. Copyright-related rights generate the revenues needed for broadcasters to invest in the costly undertaking of broadcasting sports events to fans all over the world.

Many countries have provided a mechanism to protect these innovations in sports through IP, which has become an issue of concern all around the globe. Most important question that we are addressing though the Workshop theme is that, whether there is a need to protect the sports activities through different IP regimes in India. The purpose of the Workshop would be to analyze jurisprudential and fundamental concepts and try to dig out the possible answers to it.

Sub-themes

Broader themes are mentioned herein, which are not limited. Students may select any area which fits into the main theme of the Workshop.

1. Sports and Copyright
2. Sports and Patents
3. Sports and Trademarks
4. Sports and Designs

Registration and Selection Process

Law students and students of other disciplines interested in this area (undergraduate, postgraduate and research scholars) willing to prepare a paper on any of the sub-themes could apply. The sessions of the workshop are designed in a manner reflecting the concerns of the access to intellectual property goods and the role of competition in facilitating affordable access to the IP goods. Students are urged to prepare papers accordingly so that each session will comprise of two student presentations representing the conflicting interests.

Step 1: Each student is allowed to register by sending an abstract (maximum 300 words) on one or two sub-themes on or before November 20, 2019. Based on the title and abstracts submitted by the students as approved by IUCIPRS, the sub-themes will be allocated to the students. We encourage original single author papers, though joint submissions with a maximum of two authors are also permissible. Selection will be based on the quality of the paper submitted.

Step 2: Intimation for the selection of abstracts will be given on or before December 1, 2019. Selected students would then require to get registered by making the payment of the workshop fee along with the formal registration. Submission of abstracts must be made through e-mail at rethinkingipr2020@gmail.com.

Step 3: Students would further be required to send the full paper by December 31, 2019. Students shall be asked to revise their paper after 1st and 2nd screening.

Participants are required to register by paying ₹ 2500, which is inclusive of lunch, tea and snacks during the workshop hours. Participants are required to take care of their travel and stay during the days of the workshop. Total number of participants is limited to 35. All participants are expected to take an active role in the workshop.

Awards/ Certificates

Selected papers will be published as seminar proceedings of the workshop.

Contact and Registration Details

For any queries, please contact:

Coordinators:

Karishma Birthare, Ph. 9497674656, birtharekarishma29@gmail.com
Bilal A.Nazeer, Ph: 08547082805, nazeer.bilal1@gmail.com

Student Coordinators:

Sreenath KP, Ph. 7012059818, kakkadsreenath@gmail.com
Amrutha Murali, Ph. 8089679235, ambluedolphin@gmail.com

For registration, please visit http://ciprs.cusat.ac.in/.

Thematic Highlight

Adarsh wrote a two-part post on the various misunderstandings surrounding the Plant Varieties Act (“PPV Act“). In the first part of the post, he focussed on the Public Notice 01/2019 (“Notice“) published in May 2019, which created a compound system for seeking registration of ‘hybrids’ and ‘parental lines’. He points out that the Notice is ultra vires since the Notice has been issued under Section 20 of the PPV Act, which is simply the provision empowering the PPV Authority to examine any filed applications for acceptance and does not give the power to frame such guidelines. In the second part of this post, he points out that the Notice is ultra vires qua the linking of the eligibility criteria between patents and hybrids i.e., Distinctness, Uniformity and Stability and provides a detailed analysis of the same. Readers will have access to further discussion on this Notice in the third part of this post, which will be published shortly.

Topical Highlight

Balu posted about a judgment of the Delhi HC wherein Justice Prathiba M Singh issued an interim injunction directing various intermediaries to take down on a global basis, defamatory content uploaded on their platforms against Baba Ramdev. The Court relied on Section 79 of the IT Act (aka the safe harbour provision) which provides that in order to avail the immunity for intermediaries provided therein, intermediaries have to disable access to the offending material residing in or connected to a computer resource. In his post, Balu points out that the Court ignored all arguments relating to freedom of speech and conflict of laws.

SpicyIP Events

Pankhuri released an announcement that the Inter University Centre for IPR Studies, Cochin University of Science and Technology is organising the seventh annual ‘Rethinking Intellectual Property Rights’ workshop on the theme ‘Role of IPR in the Realm of Sports’ for law students and students of other disciplines interested in this area (under graduates, post graduates and research scholars). The programme is scheduled to be held from January 31 to February 2, 2020.

Other Posts

Latha Nair wrote about a Delhi HC judgment wherein the Court directed the Trademarks Registry to record grounds of refusal of applications, as required under Section 18 (5) of the Trademarks Act. The Court held that Rule 36 of the Trademarks Rules, in so far as it empowers the Registry to communicate the decision of the Registrar without the grounds of refusal or conditional acceptance, is arbitrary and inconsistent with the mandate of the statute and hence, Section 18(5) would prevail over Rule 36. Latha Nair points out that this decision will shorten the appeals procedure and save time of the aggrieved applicant. Further, she points out that the decision will help in increasing transparency in the Trade Marks Registry.

Swaraj wrote a post on the Indian Innovation Index 2019. (“Report“) , released by the Niti Aayog in partnership with the he Institute for Competitiveness. In his post, he summaries the objectives and the approach of the Report. The Report helps to understand every state’s innovation ranking and relative performance and aims to empower states to improve their innovation policies. In his post, he states that though the Report has collated quite a bit of useful data, it does not give very substantial recommendations.

Prashant wrote about a Delhi HC order which pointed out the dysfunctional nature of the IPAB and demanded answers from the Secretary of the DIIPT on the state of affairs at the IPAB. In his post, Prashant observes that the IPAB has been dysfunctional since the past 16 years and continues to remain so despite of past endeavours to rectify the situation. He suggests that the government should explore the option of shutting down the IPAB and reverting the powers vested in the IPAB to High Courts.

Other Developments

Indian

Judgments

Flipkart Internet Private Limited v. Somasundaram Ramkumar – Madras High Court [September 13, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “FLIPKART” by using a deceptively similar mark “FLIPPINGKART”. The Court observed that the Plaintiff was the registered proprietor of the mark “FLIPKART” and the Defendant had adopted the mark with a malafide intention to harm the goodwill and reputation of the Plaintiff.

M/s. MRF Limited v. Vinod S. George – Madras High Court [September 13, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “MRF”, and from infringing the Plaintiff’s copyright in its artistic works. The Defendant admitted to infringement and submitted that it would desist all infringing activities.

Mohammed Mohideen v. M/s. Kalanjiam Dresses – Madras High Court [September 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “KALANJIYAM” by using a deceptively similar mark “KALANJIAM” in respect of textile goods. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a similar mark in order to sell its goods. The Court ordered the grant of punitive damages to the tune of Rupees 5,000 in favour of the Plaintiff as the Defendant continued its infringing activities, despite the legal notice provided by the Plaintiff.

M/s. Mahesh Valve Products Private Limited and Others v. Kapila Rubber Industries – Madras High Court [September 23, 2019]

The Defendant was alleged to have infringed the Plaintiff’s trademark “STUMPER” as well as its copyright over the Plaintiff’s pouch. In proceedings before the Court, the Defendant admitted to having committed infringement and declared that it would desist any further infringing actions. Moreover, the Plaintiff did not press for damages in respect of the infringement. Accordingly, the Court disposed of the suit without awarding any damages to the Plaintiff.

M/s. Bell Products Private Limited v. M/s. Solanki Products and Another – Madras High Court [September 24, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark, as well as infringing the Plaintiff’s copyright in its artistic works with respect to stationery. The Court observed that the Defendant had adopted a similar mark and artistic work as that of the Plaintiff, and that the Plaintiff’s evidence to prove infringement remained unchallenged.

Castrol Limited v. Jay Bharat Petroleum Products Company (India) – Madras High Court [September 25, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work of the “CASTROL ACTIV” label. The Court arrived at this decision on the Defendant’s admission of infringement and submitted that it would desist all infringing activities.

Less Than Equals Three Services Private Limited and Another v. Paras Mehra and Others – Delhi High Court [October 11, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ copyright in its website “www.quickcompany.in” through the Defendants’ action of copying its source code. The preliminary question before the Court to decide under these facts pertained to whether the Plaintiff had disclosed the identity of the author of the copyrighted work as well an agreement vesting such copyright in the company in line with the requirement pronounced in the Tech Plus case. On an examination of the affidavit of the author of the copyrighted work, the Court concluded that the copyright was vested in the Plaintiff expressly. Accordingly, the Court dismissed the preliminary question and granted the Defendant the leave to seek framing of an issue in the same regard.

Jawed Habib Hair and Beauty Limited v. Jawed Habib Hair and Beauty and Another – Bombay High Court [October 16, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s marks “JAWED HABIB”, “JH”, “JH JAWED HABIB” and “JAWED HABIB HAIR AND BEAUTY” as well as from infringing its copyright in the artistic work containing “JAWED HABIB” while carrying on the business of a salon. The Court noted that the Plaintiff was the registered proprietor of the aforementioned marks. The Court further observed that the franchise agreement entered into between the Parties had expired, and accordingly the Defendant could not be permitted to use the Plaintiff’s intellectual property.

Meher Distilleries Private Limited v. Raisen Marketing Private Limited and Another – Bombay High Court [October 17, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark, along with its copyright in the artistic work embossed on its liquor bottles and packaging. The Court considered the fact that the Defendant was a habitual offender, and noted the existence of a strong prima facie case for injunction.

M/s. Super Cassettes Industries Private Limited v. KTV News and Entertainment (KTV) – Delhi High Court [October 18, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid licence. The Court observed that the Defendant had committed repeated infringement by ignoring communications from the Plaintiff and failing to pay licence fees. The Plaintiff was further granted damages of Rupees 25 lakhs, considering the substantial loss and damage caused by the Defendant on account of its continuous infringement.

M/s. Steer Engineering Private Limited v. M/s. Glaxosmithkline Consumer Healthcare Holdings (US) LLC – Karnataka High Court [October 18, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged use of information maintained by the Appellant concerning the nutritional drink Horlicks, along with the Respondents’ revealing confidential information through filing an International Patent Application in respect of the extrusion process required to be implemented for the manufacture of nutritional drinks. The Appellant filed a case claiming copyright in information, as well as claiming the grant of an injunction in respect of the patent application. The Trial Judge noted that the Master Services Agreement entered into between the Parties gave the Respondents control over all information which was gathered for the purposes of any project of intellectual property rights between the Parties. Additionally, the Trial Judge noted that the three elements to prove grant of injunction were not fulfilled by the Appellant, as it had placed no documents to show the test of experiments or even that the experiments were done within the premises of the Appellant. The Appellant filed an appeal to this decision. With respect to the infringement of copyright in respect of the information, the Court noted that the Appellant had failed to make a prima facie case before it as it had not placed the original document before the Court but a redacted version of the same. In dealing with the confidential information revealed through the filing of the patent application, the Court noted that the Appellant had not indicated when the same had been generated, and had failed to identify the scope of such information. The Court also noted that the patent application was filed in 2016 but the Appellant filed an action in this respect only in 2019. In light of the aforementioned discussion, the Court noted that the decision of the Trial Judge was not exercised in a perverse manner. Accordingly, the appeal was dismissed by the Court without any costs.

 Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited – Delhi High Court [October 18, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “MAKEMYTRIP” through the use of a deceptively similar mark “MAKE MY TRAVEL”, abbreviated identical to the Plaintiff’s mark “MMT”, along with the use of the tag line “DREAMS UNLIMITED”, with respect to travel services. In arriving at this decision, the Court observed that the marks of the Parties were phonetically, visually, structurally and conceptually similar as the Defendant had merely changed the last word of the Plaintiff’s mark, thereby conveying the same meaning, idea and concept. Moreover, the Court noted that the target audience of both the Parties is the same. With respect to tag lines, the Court noted that the Defendant’s tag line “DREAMS UNLIMITED” was deceptively similar to those of the Plaintiff’s, namely “HOTELS UNLIMITED” and “MEMORIES UNLIMITED”, as they had no difference in idea or concept. Having considered these aspects, the Court noted that all the three elements for the grant of an interim injunction tipped in favour of the Plaintiff. Furthermore, the Court noted that the Defendant’s adoption of the mark was dishonest in nature and its defences of suppression and acquiescence would be subjected to a deeper analysis during the course of trial.

Larsen & Toubro Limited v. Bindra Electric Company and Another – Delhi District Court [October 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “L & T” and its variations, by using deceptively similar marks in respect of offering construction services. The Court noted that the Plaintiff had failed to prove that the goods sold by the Defendant No. 1 were counterfeit or that they carried the logo of the Plaintiff, and hence the case against it was dismissed. With respect to Defendant No. 2, the Local Commissioner had found certain products in its premises which carried marks deceptively similar to those of the Plaintiff. Accordingly, the Court granted damages of Rupees 10,000 towards damages on account of loss of profits based on the quantity of the recovered products from the Defendant No. 2’s premises.

Rao Chunni Lal Kanwar Singh Educational Trust and Another v. Aravali International School and Another – Punjab-Haryana High Court [October 22, 2019]

The Petitioner filed a revision petition challenging a previous order which allowed for the review of an order passed in 2018. The Petitioner argued that the ground of copyright could not serve as a cause of action in order to restraint a person from running an institute with a similar name. However, it was pointed out by review that the Respondents had registered its mark since 2004. Accordingly, the order of 2018 was restored, as the error on part of the previous court was expressly evident.

State v. Nawal Jain – Delhi District Court [October 30, 2019]

The accused in this case was found in possession of duplicate bats, basketballs, badminton rackets and other sports items bearing a logo of “PUMA” and “NIVIA”. The Court emphasized that it is a principle of criminal law that prosecution is supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. It was noted in the findings of the Court that the complainant had not received any special training in distinguishing fake goods from original ones. Additionally, there was no recording of the raid being conducted, thereby making it doubtful and improbable. In light of these lapses, the Court noted that the Prosecution had failed to prove its case beyond doubt, and the accused was entitled to a benefit of doubt.

Hindustan Unilever Limited v. Rahul Shaw – Calcutta High Court [October 30, 2019]

The Court granted an ex-parte decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL”, “SURF EXCEL” and “SUNLIGHT” by using the marks “ACTIVE WHEEL”, “SURF EXCEL EASY WASH” and “SUNLIGHT” respectively, in respect of selling detergent. In arriving at the decision, the Court observed that the Petitioner was the registered proprietor of the marks. Moreover, the Court noted that the Respondent’s products infringed the artistic works of the Petitioner, comprised in the label, packaging, trade dress and overall get-up of its products.

Hindustan Unilever Limited v. Rajesh Jain – Calcutta High Court [October 30, 2019]

The Court granted an ex-parte decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “RIN” and “VIM” by using a deceptively similar mark “RIM” in respect of selling detergent products. The Court observed that the Petitioner had prima facie proven infringement by the Respondent’s mark, and the balance of convenience also lay in its favour.

Su-Kam Power Systems Limited v. Mr. Kunwer Sachdev and Another – Delhi High Court [October 30, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged use of the Plaintiff’s mark “SU-KAM”. At the outset, the Court noted that the Plaintiff was the registered proprietor of the mark, and the Defendant No. 1’s defence to use of the mark on the basis of its prior adoption and licencing would be inconsequential to the result of the case. Moreover, the Court noted that the trademark licencing agreement between the Parties was only for cable TV business, as they were only conducting that business at that point of time. Regarding the deed of assignment for the mark, the Court observed that the same was void for breach of fiduciary duty and on account of lack of quorum at the Board Meeting, thereby discounting Defendant No. 1 from relying on it. The Court also stated that the Defendant No. 1 was estopped from leading evidence to prove its title to the mark as it had made representations that the Plaintiff was its exclusive owner. In light of the aforementioned points, the Court noted that the Defendants had no real prospect for defending the Plaintiff’s allegations, and there was no reason for a trial.

GSK Consumer Healthcare SA v. EG Pharmaceuticals & Others – Delhi High Court [October 31, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s mark “OTRIVIN” through adoption of a deceptively similar mark “BIOTRIVIN” in respect of nasal decongestant. The Court observed in the beginning that the Defendants had presented mere bare denials in its written statement, without providing a counter to the Plaintiff’s written statement. Deciding on the similarity of the mark, the Court observed that the Defendant could not use the prefix “BIO” to distinguish its mark from the Plaintiff’s mark. Moreover, the Court noted that the drugs being sold under the rival marks had different chemical compositions, and a confusion between them would be fatal to an “old customer”. Further, the Court stated that an action for infringement could not be maintained against the Defendant as its mark was previously registered, and though its registration had lapsed, the same had not been removed from the Trademark Register. Regardless of the Plaintiff not selling its goods in India, the Court observed that a possibility of confusion for a foreign brand could arise in this extremely globalized world. Ultimately, the Court noted that the Plaintiff had fulfilled all the three elements for the grant of an injunction to award it an interim injunction against passing off its drug.

News

• Delhi HC raps Trade Marks Registry for delay in registrations, says process needs to be streamlined.
• GI body asks Odisha activist to file documents afresh
• Bajaj Auto, TVS Motor settle all cases related to patent infringement
• West Bengal wins ‘sticky’ Rosogolla battle with Odisha, gets to keep GI tag on coveted dessert
• The Patents (2nd Amendment) Rules, 2019 – published for objections or suggestions
• The Draft Designs (Amendment) Rules, 2019 – published for objections or suggestions
• Delhi HC directs Registrar of Trade Marks to explain backdated uploading of O-3 notice on website
• Dr Zeus accuses Bala makers of remaking his hit song ‘Don’t Be Shy’ without permission
• Madras High Court allows scriptwriter to file fresh plagiarism suit against Vijay’s film Bigil
• DPIIT launches app for Intellectual Property Rights for SMEs and startups

International

• Facebook uses copyright law to tackle hacking operations and phishing websites
• House of Representatives voted to approve the Copyright Alternative in Small-Claims Enforcement Act
• Europe joins international agreement on geographical indications
• Katy Perry sued for $150000 by photo agency due to copyright infringement over old Halloween picture
• TuneIn loses its massive copyright infringement suit in the UK
• French media groups to take Google copyright fight to court

Image from here

In Part-I and Part-II, I had previously shared a summary of the Public Notice 01/2019 as well as my views on whether (and the extent to which) the said notice is ultra vires. In this Part-III, I intend to take the discussion forward with only one other point

Why Only Single Cross Hybrids?

Readers may recollect that in the previous posts, I referred to a pictogram to illustrate and differentiate a parent from a hybrid. Those images reflected a single cross hybrid where the hybrid is obtained from crossing two parents. The Public Notice 01/2019 states that only such hybrids could be registered (if at all) since –

“…three-way crossed or double crossed or multiparent chain-crossed hybrid can never be identically reproduced by mating the same parents to establish stability and uniformity parameters in the resultant hybrid.”

For the uninitiated, the images below illustrate a “double cross” and “three-way cross” hybrid.

Images from here

I believe readers would get the general picture from the above and appreciate that there are more possible combinations. Therefore, hybrids can be generated from several ‘parents’, so to speak. The Public Notice states that such other hybrids requiring more than one ‘cross’ would not satisfy the requirements of law (specifically, the uniformity and stability or the U and S requirements) and thus, applications for the same will not be accepted.

The UPOV guidance document on the DUS testing appears to provide guidance to test uniformity of the following categories of hybrids:

• Single-Cross Hybrid Varieties Resulting from Inbred Parent Lines
• Single-Cross Hybrid Varieties Not Resulting Exclusively from Inbred Parent Lines
• Multiple-Cross Hybrid Varieties

Said document states the following w.r.t. the last category of hybrids, i.e. multiple-cross hybrid varieties:

“For other than single-cross hybrids (e.g. three-way crosses or double crosses), a segregation of certain characteristics is acceptable if it is compatible with the method of propagation of the variety. Therefore, if the heredity of a clear-cut segregating characteristic is known, it is required to behave in the predicted manner. If the heredity of the characteristic is not known, it is treated in the same way as other characteristics in cross-pollinated varieties, i.e. relative tolerance limits, for the range of variation, are set by comparison with comparable varieties, or types, already known (see section 6.4.2)”.

As for the ‘stability’ criterion, the aforesaid document states:

“In practice, it is not usual to perform tests of stability that produce results as certain as those of the testing of distinctness and uniformity. However, experience has demonstrated that, for many types of variety, when a variety has been shown to be uniform, it can also be considered to be stable…

Where appropriate, or in cases of doubt, stability may be tested, either by growing a further generation, or by testing a new seed or plant stock to ensure that it exhibits the same characteristics as those shown by the previous material supplied. Further guidance on the examination of stability is considered in document TGP/11, ‘Examining Stability’.”

So, I studied the document TGP/11 noted above, only to conclude that it does not add much more in substance, except to note that hybrid’s uniformity and stability, where required, can be tested by testing the parents (the parental formula approach I mentioned in Part-II). I did a further general search across a few jurisdictions that provide PVP rights, to only note that most guidance documents simply adopt language that is identical with or similar to the UPOV documents I have referred to above.

This brings me to the conclusion that most jurisdictions I am aware of and certainly those that have a definition of “variety” similar to the UPOV do not carte blanche reject applications for registration of multi-parent hybrids.

Nothing in our statutory scheme justifies taking an approach that is contrary to the above position. For convenience, I extract the definition of uniformity in Section 15 of our PPV Act, below:

“(c) uniform, if subject to the variation that may be expected from the particular features of its propagation it is sufficiently uniform in its essential characteristics;”

(Emphasis supplied in bold)

The qualifiers “subject to variation…expected” and “sufficiently” attached to the term “uniform” give the impression that some variation is allowed. The UPOV (1991) carries a similar but not identical definition in Article 6(1)(c) and the UPOV guidance document referred to above, suggests that such multi-parent hybrids could be nevertheless be ‘uniform’ subject to certain tolerances. The guidance proceeds on the assumption that some variation is definitely expected in multi-cross hybrids (due to the way they can be reproduced/propagated). So, the question is whether the PPV Authority is entitled to take a position and that too, through a Public Notice, that the accepted tolerance is ‘zero’?

In my opinion, the answer is an emphatic ‘no’. The position taken in the Public Notice is affirmatively stating that certain subject matters are not entitled to registration. The question once again comes to the existence of power and nothing in the Act entitles the Authority to determine subject matters that can be protected; this is done by the statute itself. Again, it would be a different matter if the notice simply verbalises the inevitable and necessary consequence of the application of the statutory criteria. This is not the case, however, as seen above.

I think there are many other aspects to the Notice worth discussing. But I think its time I moved on from this topic! I do expect this notice to be challenged at some point and that could also throw up more issues.