The Appointments Committee of the Cabinet (ACC) issued an order on Monday, with the Supreme Court pointing a gun at its head, appointing Justice Manmohan Singh to the Intellectual Property Appellate Board (IPAB) until September 21, 2020 despite Justice Manmohan Singh having hit the statutory retirement age on September 21, 2019.

The ‘gun’ in question was a highly irregular order passed by the Supreme Court on December 20, 2019 in a petition filed by AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle which in English translates into the International Association for the Protection of Intellectual Property) asking for the appointment of Justice Manmohan Singh to the IPAB until the government finalized new appointments to the IPAB. This is not the first time lawyers from Delhi, have tried to get an extension or reappointment of Justice Manmohan Singh to the IPAB. In July, last year, we had blogged about another case, where the Delhi High Court was being asked to consider giving Justice Manmohan Singh an extension beyond his retirement date until his replacement was appointed. The Delhi High Court did not pass any such order.

I fail to understand this enthusiasm for Justice Manmohan Singh because several of his landmark orders have been overturned. From a strictly academic standpoint, his orders lack the intellectual rigour that we see from other judges at High Courts. But returning to the facts of this case, there was absolutely no legal precedent to the remedy sought by the AIPPI before the Supreme Court. Statutory retirement ages cannot be bypassed by a court of law. These days however, the Supreme Court is no longer constrained by the law or by the need to provide reasons. Its order giving Justice Manmohan Singh an extension is bereft of any legal reasoning – it only reasons that the IPAB cannot be headless and hence an extension would be provided. When the government did not issue the appointment order for two months, Justice Pratibha Singh of the Delhi High Court pulled up the government, after which the appointment order was issued by the ACC on March 2.

The ethical quandary now for the AIPPI is whether its members, which consists of a significant number of IP lawyers in Delhi, can appear before Justice Manmohan Singh, given that he owes his next six months on the bench to the efforts of the AIPPI. Just to be clear, in the past, IP associations like APPA have sued the government for the lack of judges on the IPAB but they never asked for the appointment of a specific judge, they always prayed for the appointments to be made without naming any names. This petition by the AIPPI is the first time where lawyers specified their preference for a specific judge. The test for recusals is not necessarily examples of actual bias by a judge towards a lawyer but also the perception of likely bias. This is because justice must be seen to be done. I think that standard would be met in this case where an association of lawyers specifically asked for the appointment of a judge and the judge is appointed as a result of their efforts. I trust the ethical compass of the AIPPI will kick in before any redlines are crossed.

But nevertheless I would like to hear the views of our readers on this issue. And it goes without saying that AIPPI has an open invitation to respond to this post on SpicyIP.

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Last week, the Delhi High Court issued yet another order in the Trastuzumab litigation saga. This time, it is common order in two suits bearing CS (COMM) 1119/2016 (Roche v. Cadila, DCGI and DoB) and CS (COMM) 540/2016 (Roche v. DCGI, DoB and Hetero Drugs Ltd.). This litigation saga has previously been covered here, here, here, here and here. Suffice to say that broadly, the prayers in these suits are similar to the ones in the other suits against Biocon/Mylan and Reliance.

By this order, the Court decided to proceed with the suits, deciding solely on the question of maintainability. Therefore, the order does not contain anything of substance as far as IP rights are concerned.

Even on the issue of maintainability, the order does not contain anything of substance. The history of the proceedings as recorded in the order indicate that the parties were heard as to the maintainability of the suit earlier in 2016/2018 and this revolved around the question of whether the plaintiffs had any cause of action de hors the alleged invalidity of the marketing approval granted by the DCGI. In particular, the contentions seem to have focused on whether the suits are maintainable in a situation where the approval granted by the DCGI for the biosimilar were appealable under Rule 122DC of the Drugs and Cosmetics Rules.

The Court took into account the fact that in the other suits, judgments were issued by a Single Judge of the Delhi High Court on April 24, 2016. This was in the case bearing CS (OS) 355/2014 and CS (OS) 3284/2015, i.e. the Biocon/Mylan and Reliance matters. In those judgments dated April 25, 2016, the Single Judge had ruled, among others, that the appeal remedy under Rule 122DC of the Drugs and Cosmetics Rules does not enure to the benefit of Roche and therefore, those suits were maintainable. The judgment dated April 25, 2016 was appealed before the Division Bench, where the mattes are pending and there was also an appeal to the Supreme Court in the Reliance matter, covered in my previous post.

Thus, as on date, it appears that the Division Bench is seized of the same issue of maintainability in the Biocon/Mylan and Reliance matters. The Supreme Court order dated December 17, 2019 in the Reliance matter did not also deal with the aspect of maintainability of the suits in the light of Rule 122DC of the Drugs and Cosmetics Rules.

There was an argument raised that the earlier judgments dated April 25, 2016 did not address an important aspect of interpretation of Rule 122DC (on the meaning of the term “any person aggrieved”) and therefore, there was a need for the Court to answer the same in this case. However, though all of these prior orders related entirely to other parties, the Court felt that in view of the pendency of the matter before the Division Bench in other proceedings where the same issue of spending among other issues, it may not be appropriate to foray into the same issue again. The fact that there was no finding in the Supreme Court order on this issue and that the Division Bench orders were restored by the Supreme Court, also weighed on the mind of the Court.

Moreover, the Court notes, the law itself had undergone some change in the meantime since the New Drugs and Clinical Trial Rules, 2019 were notified in March 2019. The Court noted that though an appeal provision existed in these new rules as well, it was confined only to the applicant before the DCGI and not to others. In these circumstances, the Court held that the matter could not proceed.

There also appears to be an application filed by Cadila (in CS (COMM) 540/2016) that the suit was liable to be stayed under Section 10, CPC in view of a previously instituted suit by Cadila in Bombay High Court. The Court clarified that it was not giving any finding on the same.

Further, there also appears to be an Order VII, Rule 11 application for rejection of plaint by Hetero Drugs (CS (COMM) 540/2016) (summons was issued in this suit on January 9, 2017). Frankly, it does not look like the Court has expressly dismissed this application since all applications have been listed for disposal on the next date. However, by refusing to go into the maintainability issue, it appears that it has been indirectly rejected this application and it is unclear whether there would be anything left for the Court to decide on this application on the next date.

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The recent orders of the Madras High Court in Phonographic Performance Ltd. v. the Accord Metropolitan and Ors. and Indian Performing Right Society Ltd v. K Murali and Ors., as well as those of the Bombay High Court in six connected matters (Phonographic Performance Ltd v. Hotel Hilton & Ors and 5 others similar matters) were widely reported in media. All the Plaintiff associations obtained interim injunctions against hotels/pubs/event organizers from playing any of the copyrighted works they claim to manage in Christmas/New Year parties. The orders cover to both live bands as well as playing the sound recordings through music systems.

Unfortunately, the orders did not really carry much reasoning other than ticking the boxes in a summary manner. Further research led me to a lengthier article which is expected to be published with the Journal of Intellectual Property Studies (Volume II Issue II) (expected April 2020). However, with the permission of the journal, I wanted to summarize my conclusions here.

The conclusions I draw in said forthcoming article are as follows:

• Copyright holders could potentially make out a prima facie case that such acts amount to copyright infringement under the head “communication to the public”.
• The above point would be applicable to all copyright holders qua literary works (lyrics), musical works (composition), performance (performers) and of course, music labels (sound recordings).
• In addition, qua literary works (lyrics) and musical works, live events could also be potentially tagged as infringing under the head “perform in the public”.

I emphasize the word “could” in the above conclusions because I do not believe this is a slam-dunk issue. I draw a parallel with foreign jurisprudence on the subject. There are a few subjective factors for a Court to appreciate in such cases. My contention is that, at a minimum, it requires certain set of factors for the Court to consider (and for the parties to argue), and for such factors to be elucidated in the orders.

Another critical issue I raise in the article is the standing of the Plaintiff associations in such cases (quite apart from the issue of whether only registered copyright societies can file such claims). There is an important distinction to be made between collecting agencies representing/managing the rights of authors/performers on the one hand and the collecting agencies representing/ managing the rights of music labels. In theory, every ‘song’ so to speak comprises multiple subject matters each with separate set of rights attached to it – the lyrics, the musical work, the performance rights of the performers and the sound recording itself (one may also add a cinematograph film to this list, as the case may be). Thus, every right holder for each subject matter (and consequently, those representing such right holders) may have a legal right to sue. Typically, the authors in the underlying works tend to assign their rights to the music label, while, of course, under the 2012 Amendment, retaining the right to seek remuneration on an equal basis post-assignment as well. I argue in this article that such additional rights to authors right does not entitle them to seek injunctive relief against third parties if they have assigned their rights already.

I am happy to receive any thoughts or comments!

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We’re pleased to bring to you a guest post by Anupriya Dhonchak exploring policy questions regarding protection of smell marks. Anupriya is a 4th year law student at National Law University, Delhi.

Policy Questions Regarding Protection of Scent Marks

Anupriya Dhonchak

One of the cutting edge topics in trademark law today is the issue of non-conventional trademarks. As per the Indian Trade Marks Act a ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. The non-exhaustive nature of this list makes the definition abstract and focuses more on the rationale for affording protection to marks i.e. their capability to distinguish goods and services for consumers on the basis of trade source.

Non-conventional trademarks however include smell and sound marks. In this post, I will discuss smell marks, which have had a chequered history in different jurisdictions. In 2001, the European trademark registry held in the landmark case of Ralf Sieckmann v. Deutsches Patent und Markenamt that an olfactory mark could not be granted to a “methyl cinnamate” scent, described as “balsamically fruity with a slight hint of cinnamon” for its failure to fulfil the graphical representation requirement. The strict standards for graphical representation laid down in Sieckmann were adopted in the Indian Draft Manual of Trade Marks (2015), which although lacking the force of law, noted that scent marks cannot be graphically represented under Indian trademark law. The graphical representation requirement was waived in the EU as per the Trademark Reform Package (2017), though non-traditional trademarks would still need to comply with the clarity and precision standards as per the CJEU’s judgment in Sieckmann, which require the mark to be: clear, precise, self-contained, easily accessible, intelligible, durable and objective (para 55). Through this post, I examine some concerns regarding providing a state monopoly over a smell to the first trader that makes her product smell artificially better.

A previous post on this blog on this issue argued that non-conventional trademarks are not undesirable because they make free intellectual resources inaccessible. Quoting McCarthy, it was argued that one could not conclude that any item was in the public domain until all possible exclusive IP rights over it had been exhausted. However, the point is not that classical music can potentially be trademarked by a manufacturer of dental equipment to make the equipment’s noise less unpleasant, despite another musician’s copyright over it, but that such a trademark restricts the sound from being used by other manufacturers as an attractive selling feature to benefit a larger set of consumers.

A more important question is whether smell marks fall foul of the functionality doctrine? The functionality doctrine in trademark law is based on the anti-competitive effects of granting a single producer a monopoly over a useful product feature. It is reflected in Section 9(3) of the Indian Trade Marks Act which recognises in the context of shape marks that a shape that results from the nature of the goods or is necessary to obtain a technical result  is prohibited from registration. This prohibition under trademark law is because the protection of designs and functionalities for a limited time lies within the domain of patent and not trademark law (which allows for protection in perpetuity).

An illustrative example of a prohibition on ‘smell marks’ is the case of Norwich Pharmacal Co. v. Sterling Drug, Inc., where the U.S. Court of Appeals observed that the colour pink for a liquid preparation used to treat stomach disorders was functional and thereby could not be monopolised by a single producer as it provided a “pleasing appearance to the customer and sufferer.” This broad ruling is critical as smell marks are typically and will predictably be used to improve the overall experience of using the product that they’re attached to. When the product is inherently ugly, unpalatable or foul smelling, the scent or pleasant appearance may add substantial value to the product.  Therefore, if a medicine smells like strawberry and via some scratch and sniff branding, the consumer can identify it uniquely at the point of sale, one pharmaceutical company should not be allowed to monopolise it and exclude other traders from using strawberry smelling medicines. Thus, smells can be trademarked only if it can be demonstrated that the smell does not add substantial value to the product and that the consumers’ decisions to buy the product is not based on its smell.  Further, the smell must distinguish the product in the market, allowing the consumer to unequivocally trace its source at the point of sale. Furthermore, as per the ECJ’s ruling in the context of shape marks in Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd, registration of non-conventional trademarks that achieve a technical result could not be justified  because of the existence of “other shapes capable of achieving the same technical performance”.

The previous post on this issue posited two separate questions qua the desirability and capability of registration of non-conventional trademarks and answered both independently and affirmatively. I argue that the impracticability of precisely delineating the subject matter of non-conventional trademarks (particularly smell marks), materially expands the scope of trademark protection available and thus, also has a bearing on the desirability of such protection itself. In other words, the practical inability to tell apart smells objectively (particularly because they are perceived differently by different people), runs the risk of trademark over enforcement. Currently, innovation around the reproduction of complex odours using multiple odour capsules is increasing. As the legal certainty regarding the registration of smell marks solidifies, even when the precision of what is protected remains debatable, it will lead to a doctrinal creep in the usage of resources otherwise freely available. This includes not just the trademarked formulae but also odours with different formulae which approximate the trademarked smell since people would rather not use these ‘desirable’ smells or sounds than run the risk of infringement. This lack of precision can also translate into a likelihood of confusion among consumers and is pertinent to what they end up associating with the brand: the specific formula sought to be trademarked or even different formulae which might smell similar to varying degrees? With respect to the scent of fresh cut grass for tennis balls which was registered as a mark in the U.K, Prof. Vaver astutely questions, “Do we need a spectrogram produced by an electronic nose technologist to delineate it?” Similarly, representation via a stave and a cleft was considered adequate for registration of a sound mark in the Shield Mark case despite being arguably unintelligible to an audience that is not music literate. This is important because causing confusion is an absolute ground for refusal of registration of a mark as per Section 9(2)(a) of the Indian Trade Marks Act.

Finally, Sieckmann aptly laid down the rationale for the graphical representation requirement in trademark law – to define the precise subject of the mark and allow competitors and users to determine unequivocally the exact nature of the mark. While simple descriptions of scent marks grant a few sellers a monopoly and prohibit others from utilising common, routinely available features to make their products attractive, more complex descriptions may approximate patent claims and increase the transaction costs for the scope of registration to avoid infringement, along with cluttering consumers’ environment with competing scents. These are some policy questions that merit consideration before we expand the subject matter of what can and should be allowed to be trademarked today.

We’re pleased to bring to you a guest post by Debmita Mondal, Assistant Professor, Hidayatullah National Law University (Raipur), on her experience at the Second IP & Innovation Researchers of Asia Conference, recently held in Jakarta, Indonesia.

Experience at the Second IP and Innovation Researchers of Asia (IPIRA) Conference, 2020

Debmita Mondal

The IP and Innovation Researchers of Asia (IPIRA) 2020 Conference took place last week on the 27^th and 28^th February at Faculty of Law Universitas, Indonesia. This is the 2^nd edition of the annual conference organized by the IPIRA Network for Asian research scholars and academicians to present their research or work-in-progress and discuss the same with colleagues from different parts of the world. IPIRA Conference was co-organized this year by Faculty of Law Universitas, Indonesia, World Intellectual Property Organization (WIPO), World Trade Organization (WTO), Texas A&M University School of Law, and the School of Law, University of Geneva.

The IPIRA Conference witnessed participation from over 150 research scholars and academicians from various countries in Asia, like Malaysia, Indonesia, Thailand, Singapore, Pakistan, Bangladesh, Sri Lanka, Nepal as well as countries like the United States, various European countries, Australia, Ethiopia, Russia, etc.  A record number of participants came from India, me being one of such presenters. The Conference ran into 5 or 6 parallel sessions over two days. According to the information and graph prepared and presented by Prof. Henny Marlyna, Faculty of Law, University of Indonesia (FHUI), ‘Pharmaceutical patents and access to medicines’ was one of the issues most presented, discussed and debated on in the Conference closely followed by the topic of Geographical Indications, Plant Variety Protection, Artificial Intelligence, Blockchain, Traditional Knowledge and Cultural Expressions, and Overlapping IP Rights.  Due to vast number of presentations that I attended; it is difficult to give an overview of each session individually. For those interested, the full Conference program is available here and the abstracts here.

The sessions held over two days were a treat for a young academician like me. Several interesting issues and their intricacies regarding regulation and control from IP perspective were discussed and debated between scholars from different jurisdictions. The IPIRA Conference acted like a platform to globally connect the academic community and offer to academicians a forum to discuss their works and, in general, current relevant issues both through doctrinal analysis and empirical data. With renowned Chairpersons moderating the panels and by adopting the method of compulsory Q & A sessions after each session, the IPIRA Conference provided an excellent opportunity for each researcher to get a valuable feedback on their research as well as the audience a chance to quest their curiosity for more information.

The IPIRA Conference 2020 was followed by a Workshop for IP Teachers and Researchers on 29^th February, 2020. The Workshop had two sessions, the first on “What are Current, Relevant, and Impactful Research Topics?”  chaired by Prof. Jacques De Werra along with panelists Prof. Owais Shaikh, Prof. Sean O’Connor, Prof. Ha Le Thi Thu and Prof. Henry Marlyna and the second one on “Research Methodologies: What and How to Choose?” chaired by Prof. Irene Calboli with panelists like Prof. Gregory N. Mandel, Prof. Agus Sardjono, and Prof. Miranda Risang Ayu Palar.

The Workshop was a commendable addition by IPIRA Organizers as the panelists enlightened us on various relevant challenges a researcher faces while choosing a research topic. While Prof. O’Connor highlighted issues like research agenda v. research topic, topic v. perpetual topic, academic research v. policy papers, Prof. Shaikh gave a developing country perspective there. He talked about how a challenge of choosing  a “sexy topic” comes primarily to a researcher from developing country when he faces a hard battle to stay “relevant” domestically v. globally. In the other session, several research methodologies were revisited and debated on their shortcomings.  Prof. Mandel highlighted how “cross-cultural attitudes” have an impact on methodology adopted, while Prof. Sardjonos and Prof. Ayu Palar told us about the participatory legal research they have conducted in Indonesia to understand the needs of diverse indigenous people from Indonesia.

The organization of the two days Conference along with the Workshop was an impressive task achieved by Prof. Irene Calboli, the founder of the IPIRA Network, and the IPIRA Conference’s organizers, considering the recent travel restrictions put by several governments due to spread of COVID-19 coronavirus. Though several participants and resource persons had to reconsider their travel in highlight of the same, Prof. Calboli and her team meticulously managed the last-minute changes and pacified some nerves (including mine). The efforts of the staff and students of the Faculty of Law Universitas Indonesia are highly commendable as they made us feel welcome and even organized for us a cultural night to showcase the traditional Indonesian dance forms. I am grateful to the WIPO Academy for selecting me for sponsorship this year along with several other scholars from different countries.

The IPIRA Conference 2020 was a magnanimous platform for exchange of ideas and feedback for research and work-in-progress for IP enthusiasts as well as mating place for cultural diversity across the globe. IP enthusiasts interested in participation in this happening annual Conference next year, please join IPIRA Network here to stay updated.

(This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Prashant wrote on the order appointing Justice Manmohan Singh to the IPAB until September 21, 2020, a year beyond his actual tenure, pursuant to a Supreme Court order in a petition filed by AIPPI. He notes that the petition was not the first instance where the lawyers have sought his extension or re-appointment. Further, he states that this order of the SC is without any precedence and that statutory retirement ages should not be similarly circumvented. Ultimately, he notes that lawyers affiliated with the AIPPI should not be allowed to appear before Justice Manmohan Singh, considering a ‘perception of likely bias’ towards AIPPI which specifically sought his extension.

Thematic Highlight                                                                         

In a guest post, Dr. Vikas Kathuria discussed the impact of Section 4A in the draft Competition (Amendment) Bill, 2020 on abuse of dominance cases related to IP rights. He claims that IP and competition law serve a ‘complementary’ function, but competition law may prevent exercise of IP rights detrimental to innovation. He explains that the inclusion of Section 4A would enable a dominant firm to invoke its IP rights as a justification to anti-competitive practice. He argues that as it stands, Section 4 balances IP and competition. The addition of Section 4A will erode this and existing SEP jurisprudence in India. In conclusion, he observes that the absence of riders such as Section 4A would empower courts to limit new anti-competitive activities.

Other Posts

In a post in the series on the ‘Parachute’ disparagement case, Prashant disagreed with Latha’s standard of ‘actual malice’ on the ground that it violated the fundamental right to freedom of speech. He notes that the ‘actual malice’ standard is established only in case where a statement is uttered without truth, or with the knowledge that it is false. He expounds on the standard of actual malice through the case of NYT v. Sullivan, which allows for protection of speech with ‘factual errors’. He states that Latha highlighted the use of ‘virgin coconut oil’ instead of ‘organic coconut oil’ by Abhijeet Bhansali, to further note that even such a claim was to be proved by Marico, thereby implying that the same was a speech with ‘factual error’. Finally, he observes that the outcome of the case bolsters free speech and holds the powerful accountable.

Adarsh wrote a post on the common order of the Delhi HC in the Trastuzumab litigation saga concerning Roche. Through this judgment, the Court decided that the suit was maintainable. Adarsh observes that this common order dealt with the maintainability of a suit in light of the availability of an appeal from the DCGI’s order under Rule 122DC of the Drugs and Cosmetics Rules. He notes that the issue was not comprehensively dealt with as: first, the Court noted that the same question was pending decision before the Division Bench of the Court; and second, the Court pointed out that there was an amendment in the Rules, according to which the appeal provision could only be triggered by the applicant. He concludes by noting that the Court had ‘indirectly rejected’ the application on the maintainability issue, but had not yet disposed of the application.

Adarsh also discussed the recent orders of the Bombay and Madras HCs which granted injunctions against organizers from using live bands or music systems to play copyrighted songs. He observes that the orders do not contain elaborate reasoning for the grant of injunctions, but claims that such an activity could infringe copyright which includes the rights of ‘communication to the public’ or ‘perform in the public.’ Before opening the post to thoughts and comments of the readers, he notes that the correct position of law according to him is that an author would not be able to seek an injunction if his rights have already been assigned to a music label.

In a guest post, Anupriya Dhonchak wrote about the policy questions arising out of the protection of smell marks in India. She notes that smell marks are not registrable in India due to the requirement of ‘graphical representation’ of a mark. This requirement, which was borrowed from the EU has now been abandoned in the EU, but continues to remain a part of Indian law. She notes that the grant of smell marks would violate the functionality doctrine by granting monopoly to a person over a useful feature, which falls more appropriately under the ambit of the patent or design laws. She quotes the decision in Norwich Pharmacal Co. v. Sterling Drug to substantiate her argument that a smell should not be trademarked, unless it does not add substantial value to the product. Further, she notes the various problems which might arise through the grant of protection to smells and their enforcement before the court. In conclusion, she observes that certain policy questions remain to be considered before the subject matter of trademark can be extended.

In another guest post, Debmita Mondal wrote about her experience at the IP and Innovation Researchers of Asia 2020 Conference (‘IPIRA’). She notes that the second edition of the conference was organized in Indonesia and witnessed participation from over 150 research scholars and academicians from various countries. Further, she observes that the conference acted as a platform to globally connect with the academic community and offer researchers feedback on their presentations. The post notes that a workshop followed the conference which offered valuable lessons in researching. After observing the smooth functioning of the conference in light of COVID-19, she concludes that the IPIRA offers a wonderful opportunity to IP enthusiasts to learn and grow.

SpicyIP Announcements

The School of Law at the Singapore Management University (SMU) has called for applications for a research fellow/ research associate position as well as a program of sponsoring PhD candidates at their final year of thesis writing to come to SMU for six months.. Further details (job qualifications, job description etc.) pertaining to both the programs can be found in the post. A common deadline for the receipt of applications has been set to April 2, 2020.

The Inter University Centre for Intellectual Property Rights Studies is offering a fellowship program during April to June 2020. The eligibility criteria for the fellowship is that the applicant must be a teacher in any University or College in India for less than 10 years, and a fellow shall be paid Rs. 25,000 per month. The last date for application for the fellowship is March 16, 2020.

Other Developments

Indian

Judgments

Star India Private Limited v. Moviestrunk.com and Others – Delhi High Court [February 17, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of copyright of the Plaintiff’s film “MISSION MANGAL” through communication to the public and permitting viewing and downloading of the same, without authorization. The Plaintiff pleaded that the Defendants were ‘rogue websites’ within the meaning of the UTV Software order, as their principal activity involved reproduction, publication and communication of infringing material over the internet. The Court noted that the evidence placed on record by the Plaintiff actually pointed out to infringing activities being carried on by the Defendants. Moreover, the Court observed that the Defendants’ failure to enter appearance displayed their casual indifference to the IP rights of the Plaintiff. Accordingly, the websites were determined to be ‘rogue websites’.

Prasar Bharati v. Ritu Arya and Others – Delhi High Court [February 27, 2020]

The Court refused to grant an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “DOORDARSHAN” by its adoption as title of their film. In arriving at this decision, the Court noted that though the Plaintiff had made a prima facie case, the Defendants’ film was to be released the next day. In light thereof, the grant of an injunction would result in monetary and business damages to the Defendants.

Genetech Inc. and Others v. Drugs Controller General of India and Others – Delhi High Court [March 2, 2020]

The Applicants filed a petition for inspection of its documents to be carried out by an independent expert, as they contained confidential information and test data generated in respect of its drug “TRASTUZUMAB”. The Court noted that an ‘expert’ would not be limited to an external expert, or the same would have been explicitly observed by the Court previously. Additionally, the Court stated that the inclusion of an internal expert would give the Plaintiff a fair chance to amend its pleadings. The Court also noted that Rule 17 of the Delhi High Court (Original Side) Rules, 2018 was not applicable to the present case, as it was not a commercial matter.

Unilever Plc and Another v. Nandu Kumar – Bombay High Court [March 2, 2020]

The Court extended the already granted ex parte interim injunction to further restrain the Defendant from infringing and passing off the Plaintiffs’ mark “FAIR & LOVELY” by manufacturing or distributing cosmetic preparations with counterfeit packaging or containing marks, identical or deceptively similar to the Plaintiffs’ mark.

Shemford Schools Private Limited and Another v. R.R.R. Education and Charitable Trust and Another – Delhi High Court [March 2, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiffs’ mark “SHEMFORD” by adopting an identical mark in respect of establishing schools. The Court noted that the Defendants had continued to use the Plaintiffs’ marks, even after the termination of the Memorandum of Association between them authorizing such use. Moreover, the Court observed that the rival marks were phonetically, structurally and visually identical, and that the use of mark by the Defendants would lead to confusion in the minds of the parents of the prospective students.

Zee Entertainment Enterprises Limited v. Sunil Seth and Others – Bombay High Court [March 3, 2020]

The Court granted an ad-interim injunction restraining the Defendant No. 1 from infringing the Plaintiff’s copyrights in its films “LAADLA”, “BOL RADHA BOL” and “DIL AASHNA HAI” by broadcasting the same on its channel on YouTube. The Court observed that the Plaintiff had acquired rights in the aforementioned films, and the Defendant No. 1 had acted in infringement of the Plaintiff’s rights. Moreover, the Court noted that the Defendant No. 1 was put to notice of the infringement by the Plaintiff, but it still did not appear before the Court in that regard.

Kamruddin Mehsaniya v. A. Hafsabi and Another – Bombay High Court [March 3, 2020]

The Court granted an ad-interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “KIMIA” by using deceptively similar marks “KIMAA” and “KEEMA” in respect of wet dates. The Court observed that the Defendants had adopted the deceptively similar marks dishonestly and such adoption was likely to result in confusion and deception in the minds of the consumers. The Court also noted that the Defendants had adopted the mark with an intention to ride on the goodwill and reputation of the Plaintiff.

Bajaj Electricals Limited v. Gourav Bajaj and Another – Bombay High Court [March 3, 2020]

The Court granted an ex parte interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “BAJAJ” by using a deceptively similar mark “APNA BAJAJ STORE” and a domain name containing the mark “BAJAJ”. In arriving at this decision, the Court noted that the Plaintiff was the proprietor of the “BAJAJ” marks and its artistic labels. The Court also observed that in light of the nature of goods, the possibility of confusion and deception could not be ruled out. Accordingly, the Defendants had dishonestly adopted the mark with an intent to take advantage of the goodwill and reputation of the Plaintiff.

Torque Pharmaceuticals Private Limited v. Emami Limited – Calcutta High Court [March 4, 2020]

The Court allowed the Plaintiff’s application for the transfer of suit to the High Court on the ground that Section 22 of the Designs Act, 2000 enables such transfer when the ground for cancellation of the registration of a design is invoked.

Travellers Exchange Corporation Limited v. M/s. Mittal Travelx – Bombay High Court [March 4, 2020]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “MITTAL TRAVELX” by using the mark “TRAVELEX” in respect of providing travelling services. However, the Defendant noted that it would change its name and not include the mark “TRAVELX” or any mark visually or phonetically similar to the same.

Zee Entertainment Enterprises Limited v. Ameya Vinod Khopkar Entertainment and Others – Bombay High Court [March 4, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s copyright in its film as well as infringement of its trademark in the mark “DE DHAKKA” by intending to produce a sequel to the same. The Court examined the deed of assignment by which rights in the film were vested in the Plaintiff to conclude that the right to produce a sequel to the movie were not assigned to the Plaintiff. Moreover, the Court noted that the parties to the assignment deed had no intention to assign any other rights in the Plaintiff than the ones explicitly mentioned in the deed. Accordingly, the Court observed that the Plaintiff had failed to make out a prima facie case for the grant of an injunction.

Novex Communications Private Limited v. Sea Princess Hotels and Properties Private Limited – Bombay High Court [March 4, 2020]

The Plaintiff alleged infringement of copyright in its sound recordings by the Defendants. The Court disposed of the application for the grant of an interim injunction on the ground that the Defendant had stated on oath that it would not play any songs in its hotels without due and proper authorization of the Plaintiff.

News

• The Government rejects a request filed for conducting the Patent Agent Examination in Hindi in addition to English.
• Delhi HC observes that IPAB’s purpose of speedy disposal of IP matters has been completely defeated due to appointment woes.
• WIPO announces a training program to be held in Nagpur from June 1 to 12, 2020.
• The Government plans to offer tax and other incentives to pharmaceutical companies to set up R&D base in India.
• In a recent order in the Roche v. Reliance Lifesciences (Trastuzumab suit), the Delhi High Court allows Roche’s internal member to look at Reliance’s documents.
• Following AR Rahman, music director GV Prakash Kumar approaches Madras High Court for an interim injunction on the GST notice over the permanent transfer of music copyrights to movie producers.
• In an article in the Hindu, Rahul Unnikrishnan (an advocate at the Madras High Court) argues that the re-framed The Tribunal, Appellate Tribunal and other Authorities Rules, 2020 notified last month are also unconstitutional.

International

• England & Wales HC judge questions whether changes to the UK’s patent system could help the country to respond better to emergencies as the coronavirus outbreak.
• WIPO elects Singapore IP chief, Daren Tang as its new leader.
• EPO President, Antonio Campinos notes that the withdrawal of the UK from the UPC is not a decisive blow.
• Supreme People’s Court in China rules on the registration of Louboutin’s red sole single-colour mark.
• Meghan Markle and Prince Harry set to abandon “Sussex Royal” trade mark applications in the UK.

We’re pleased to bring to you a guest post by Sachin Sathyarajan on the recent election of Singapore’s Daren Tang as the Director General of WIPO. Sachin is a specialist in international law and policy. He is currently engaged as a Senior Research Associate at Jindal Global Law School in India. He also serves as a consultant to the Department of Biotechnology, Government of India. He had previously worked with international organizations in Geneva including the World Intellectual Property Organization (WIPO), the International Centre for Trade and Sustainable Development (ICTSD) and the UN Conference on Trade and Development (UNCTAD). He completed his LLM from the Graduate Institute in Geneva and was a Dean’s Scholar at the WIPO Academy program in Australia.

Singapore’s Daren Tang Elected as Director General of WIPO amidst a Bitter US-China Face-off – What’s in Store for the Global South and the Development Agenda?

Sachin Sathyarajan

The enduring United States – China trade war has shifted turf from the World Trade Organization (WTO) Appellate Body to the latest elections at the World Intellectual Property Organization (WIPO). While Beijing eyed the coveted leadership position at the powerful UN specialized agency, Washington aggressively attacked the Chinese candidature.The United States (US) and other Western allies threw their weight behind the Singaporean candidate, Daren Tang which eventually sealed his victory.  Tang is all set to be the new Director General after winning the vote in Geneva on March 4, 2020. The US backed candidate won the nomination by a margin of  55 to 28 votes over the Chinese candidate in a highly politicized election.

Daren Tang’s Victory

Singapore’s Prime Minister Lee Hsien Loong congratulated Tang in a Facebook post reminding the world it was the first time a Singaporean has been nominated for a leadership position of a UN agency. Tang has been the Chief Executive of the Intellectual Property Office of Singapore (IPOS) since 2015. Singapore endorsed his candidacy, citing his breadth of experience and familiarity with the WIPO community. It was emphasized that under Tang’s tenure, IPOS was transformed from a “regulator into an innovation agency.”

The 48-year old was also the lead negotiator for several multilateral and bilateral trade agreements for Singapore with strong IP protection chapters. Notably, Tang led IP negotiations for Singapore in the US-Singapore free trade agreement (FTA), Trans-Pacific Partnership, the Regional Comprehensive Economic Partnership and the European Union-Singapore FTA.

He also served as the Chair of the WIPO Standing Committee on Copyright and Related Rights (SCCR) since May 1, 2017. SCCR serves as a forum for member states and observers to discuss issues related to developing balanced international frameworks on copyright matters. As an amateur pianist for a jazz quartet, he shares a personal connection with copyright issues.

During his term, Tang chaired discussions on the limitations and exceptions to copyright and related rights for educational activities, libraries and archives and persons with disabilities. His term also saw the divisive debate on copyright protection extending to broadcasting organizations. Tang believed that Singapore can be a bridge between the North and South, and east and west, and add value to the discussions at SCCR by being a neutral, credible and professional Chair.

The Development Agenda

However, there was widespread speculation that Tang had limited support from the developing world. Although Singapore is ostensibly classified as a developing country, Singapore’s interests on IP and trade related matters do not align with most other developing countries. For an organization like WIPO which had adopted a Development Agenda in 2007, it remains to be seen how the interests of the developing world will be protected in a potential scenario of polarization.

The Development Agenda was the culmination of a long process of transforming WIPO from a technical body protecting right holder’s interests to that of an organization serving the larger goals of the UN to foster socio-economic and cultural development. Singapore is not a member of the Development Agenda Group, which is a cross-regional group of 18 WIPO Member States striving to mainstream development in all areas of WIPO’s work. There is much work to be done at WIPO in addressing challenges for the Global South in the areas of public health, access to knowledge, protection of traditional knowledge and the prevention of biopiracy.

The Chinese Candidature

The opposing Chinese candidate, Binying Wang is a highly influential administrator at WIPO being the Deputy-Director General overseeing the Brands and Designs sector. Her work included managing the Madrid, Hague and Lisbon systems at WIPO. Her candidature came as no surprise, as China has emerged as the frontrunner of growth in the IP world. The Global Innovation Index saw China moving from the 35^th to 14^th position between 2013 and 2019.

China is an innovation heavyweight, accounting for almost half of all the world’s patent filings according to 2018 figures. Amidst all the controversy surrounding 5G technology and cyber espionage rumors, it was the Chinese telecommunications giant Huawei which filed the largest number of patents in the world. With respect to other IP such as trademarks, industrial designs and plant variety protection, the case is no different as China is unrivalled in the numbers game.

US Diplomatic Efforts

US diplomatic circles ran a smear campaign against China, reiterating concerns relating to China’s inability to adequately protect IP rights. US President Trump has repeatedly accused China of large scale theft of technology and IP, even in his speech at the UN General Assembly. Peter Navarro, his assistant on trade matters, had made a scathing attack on the Chinese candidature. There was also fear within the US circles that WIPO’s confidential information which is currently stored in US-based cloud servers will be shared with offices in China in the future.

Navarro alleged that China is responsible for 85% of the counterfeits seized by US border officials. Even for other countries, it was evident that China’s global reputation for mismanagement of IP would be a decisive factor in this election. The European Commission reports a loss of billions of euros every year to Chinese IP infringement. There are also reports of Chinese counterfeits damaging textile industries in Africa.

The  WIPO elections also coincided with  US efforts to paralyze the WTO Appellate body, which was the only effective dispute settlement body for international trade and related IP matters. As of December 2019, the body had been rendered non-functional and this is particularly detrimental for developing countries.

The Chinese Response

The Chinese candidature posed a major challenge for the United States, in its effort to contain its economic rival’s sharp rise in soft power at international organizations. China has the leadership of 4 out of the 15 UN specialized agencies, more than any other country in the world. China allegedly gains support for its favoured candidates through its Belt and Road program and development assistance. The US also claims that Chinese leadership of UN organizations has a dubious history of prioritizing and advancing national interests.

Top Chinese officials called for fair elections and emphasized the steps taken by China for creating a robust IP system. The Chinese Ambassador in Geneva responded by blasting the Trump administration for withdrawing from several international organizations, while maintaining that Chinese dominance is a natural process.

The Affluence of WIPO

Australia’s Francis Gurry currently heads the WIPO and his 12-year tenure expires on September 30^th, 2020. There has been a lot of interest in the WIPO’s Director General elections, since the position is much more powerful than top jobs at other international organizations. WIPO has 193 member states and administers 26 international treaties related to the protection of IPRs.

The power is partly derived from the financial affluence and the resulting political autonomy of the WIPO. In 2018, WIPO’s revenue alone was 430.6 million CHF with a profit of 42.5 million CHF. The UN is going through a major fiscal crunch with salaries not being paid and escalators shut  down. Several member states including major funders like the US and Brazil are yet to pay their dues and it questions the political confidence in multilateralism.

In stark contrast, WIPO’s net assets have nearly doubled since 2010 to a whooping 261.4 million CHF. WIPO’s reliance on member state funding is minimal, which ensures a great deal of independence in decision making.  Roughly 90% of WIPO’s revenue comes from the private sector through fee-paying services of the organization such as filing patents and trademarks.

The Geographical Representation

In addition to Singapore and China, four candidates representing Ghana, Kazakhstan, Columbia and Peru were vying for the top post. A pertinent issue is the geographical rotation of the WIPO’s leadership even though it does not have a formal process. There was an initial understanding that someone from the Asia-Pacific or Latin American regions will be at helm of the affairs and the final round of the 2020 election ensured that an Asian man or woman would  be the eventual winner.

Three of WIPO’s four previous Director Generals including the outgoing Francis Gurry, have been white men from developed countries. Kamil Idris from Sudan (1997-2008) was the only exception.  Gurry won his first term in 2008 by an extremely narrow margin, only winning 42-41 over a Brazilian candidate. In 2014, after an extremely controversial term, Gurry managed to get re-elected for a second term. Bodenhausen from Netherlands and Bogsch from the US heading WIPO from 1973 to 1997 is a testament to the history of the domination of the Global North.

The Voting Process

Only 83 of the WIPO’s 193 member states forming the Coordination Committee gets to vote  in the elections for the Director General. This is because the WIPO’s Coordination Committee is limited in membership to Executive Committee members of the Paris and Berne Unions, Switzerland and one ad-hoc member.  Since most of the countries that were parties to the Paris and Berne Unions when WIPO was established in 1967 were developed countries, they dominate the decision making process.

Reform is still pending on the Asia-Pacific Group proposal noting that the current composition of the Coordination Committee is not representative of the size of the regional groups in WIPO. The African Group, the Asia-Pacific Group and the Central European and Baltic States (CEBS) are under-represented.

It is historic that an Asian has been elected to the top post, granted with US backing. However, the question still remains why voting rights are not extended to all WIPO member states. The African Union backed candidate Edward Kwakwa of Ghana, finished third in the 2020 election. The current composition of voting states means the powerful states have a heightened sphere of influence in the outcome of the elections. The WIPO General Assembly will now meet in an extraordinary session on May 7-8, 2020 to formally appoint the new Director General.

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If you browse through Amazon while shopping for something, you’d notice that apart from some unbelievable discounts, most of the brands offering these products are relatively obscure and that you are coming across such a brand name for the first time even though their product with its specs and features looks like it belongs right in your cart. If you are someone who has been using Amazon for a few years now, you’d have also realized that there is a significant increase in the number of sellers. Further, you no longer just buy an XYZ phone online, you buy an XYZ phone on Amazon with its Amazon guarantee. Not only this but India’s two biggest e-commerce platforms – Amazon and Flipkart have their own brand line in Amazon Basics and Flipkart’s Billion.

These changes bring forth certain questions – are we moving from trademarks for consumer protection, to trademarks for being listed higher on e-commerce platforms? Is registrability becoming the main purpose of brand names rather than recognizability? And with growing number of merchants and products selling on e-commerce platforms, the issue of a certain loss of purpose of what trademarks represent and the issue of intermediary liability of e-commerce platforms arises.

The Thesis, Antithesis, and Synthesis of Trademarks on E-Commerce Platforms

The Thesis – E-commerce platforms have gathered an enormous market over the last decade and a half. In India, initially, these platforms were about customers being able to find different products offered by various brands at the click of a button and having the convenience of home delivery, and of course, the incredible discounts e-commerce offered. Once a substantial market-base was created, these platforms themselves became a brand. In that, what they sold was not just the product, but with it, the brand name they had created for themselves over the years. Trademarks, then, hold major value for e-Commerce platforms, for the product is now branded as both the seller’s and the platform’s.

Naturally, the liability of e-commerce platforms for counterfeits and frauds then becomes a pressing question. The position of law in India on intermediary liability of e-commerce platforms was discussed in the case of Christian Louboutin SAS v. Nakul Bajaj and Ors (you can read Divij’s post on the judgment here and here). While the judgment is significant for being the first to discuss the same, it created more uncertainty than otherwise. It determined that there is a list of 21 ‘tasks’ that can be used to identify how platforms influence online brands. Out of these 21 tasks, the creation of listings and enrollment of members are also important functions. These functions are more accessible on a platform like Amazon if you have a registered brand. So, the push here is not to create a brand name for the product to foster consumer trust but to have registered trademarks.

The Antithesis – There are many benefits to having a trademark if you want your product on an e-commerce platform. Apart from the obvious ones of being able to compete with other branded products, being in the same line-up as them and having a testing ground for your new product, e-commerce platforms give out incentives if you are enrolled in their brand registries.

What is the Amazon Brand Registry?

The Amazon Brand Registry is a program that allows registered brand owners access to enhanced marketing and reporting tools and gives them more control over listed branded products on Amazon. The other benefits include higher ranking in their search list, text placement, and additional brand content such as brand story, etc. It also allows IPR violation reporting and proactively preventing such violations. Hence, there is a bigger reason for you to get your ‘brand’ name trademarked even if you don’t have a budding brand yet or have a brand at all.

The prerequisite for being a part of the registry is to have a “registered and active text or image-based trademark”.

Ostensibly, this requirement could be linked to the increase in the number of applications that the Indian Trademark Office has seen in 2018 and 2019. Attached below are top brands that show up on Amazon for various products. A search on QuickCompany.in would show that these brands have all been registered in India recently (mostly from 2015 onwards) and a Google search of the brand name would show that they are almost exclusively sold online. Evidently, the results for a product search on Amazon throws up some unheard-of brands, with quite the interesting names.

(Searches from Amazon – Image 1 is the top brands for mobile phone covers; Image 2 is the listed brands for shoes; Image 3 is the listed brands for socks; Image 4 is the listed brands for hairdryers.)

The USTPO also saw a radical increase in trademark filing from foreign domiciled traders who sold their products on e-commerce platforms. Brands from Shenzhen, China that accounted for almost half of Amazon’s top sellers, held trademarks over brand names that perhaps have no discernable meaning apart from the fact that they were super-registerable made-up names. Further, many of the trademark claims were identified to be fraudulent, with these brand names just being photoshopped on to products in their application. However, after this surge, and after having identified fraudulent claims of use, the USTPO brought in stricter standards for trademark applications.

As Uncle Ben said, with more power comes more responsibility. Counterfeiting and fraud bog e-commerce businesses down. Taking note of the same, the Department of Consumer Affairs released the Model Framework for Guidelines on e-Commerce for consumer protection which outlines the liability of the e-commerce entity and the seller and necessitates a grievance redressal mechanism for consumers. In December 2019, the DIPP also issued new rules reviewing the FDI policy in e-commerce. With the new rules, it is compulsory for e-commerce companies to submit a yearly audit report.  This apart, e-commerce platforms themselves regulate for counterfeit products and fraud through their employees and under special projects such as Amazon’s ‘Project Zero’.

The Synthesis – With the increase in trademarking of registerable signs and words, and with sellers picking e-commerce platforms, the question then arises if there is an imminent and pending shift from trademarks for recognition, to trademarks purely for the purposes of getting listed on an online marketplace. This is to say that e-commerce platforms may be altering what brands mean to us, in that the Amazon or Flipkart ‘brand’ promise may be more valuable than the actual brand of the product purchased.

What about Trademark Infringement? The Fair and Proportionate Way Forward

Given this changing nature, the concern of intermediary liability has a greater significance for customers. This has been recognized both by the government and the courts. However, the differences between a physical market and an online market bring into the picture some fundamental questions about enforcement. In a physical market, a trademark is associated with the physical product itself and the seller, whereas online, the amount of information available and the number of sellers increases exponentially, with there being many new added steps in the transaction in terms of selecting and identifying the trade partners, which then becomes an integral part of the process. This will then require the determination of joint liability for the infringement of the platform and the seller.

Post the Louboutin case, e-commerce intermediaries have a higher threshold to meet when it comes to claiming exemptions from liability for the sale of infringing products. The Louboutin case’s test was applied in L’Oreal v. Brandworld and Skullcandy v. Shri Shyam Telecom to determine the e-commerce platforms’ intermediary liability, thus setting the precedent for using the test and determining liability on a case-to-case basis. Amway India Enterprises v. 1MG Technologies went even further to study the online marketplace and their active involvement in the sale process, given their price-setting strategies, refund policies, etc. However, with the overruling of the same, the position of law regarding intermediary liability for trademarks infringement remains unclear.

India’s developing jurisprudence on e-commerce platform liability is tilting towards holding these platforms responsible for the infringement. While this is a seemingly reasonable move to protect consumer interests, it is necessary to recognize that the measures must be fair and proportionate and must not be excessively costly and they must not create barriers to legitimate trade.This metric identified by the CJEU may, in fact, provide for a standard to be emulated.

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On February 13th, the Madras High Court passed a judgement in the case of M/s. Indian Record Manufacturing Company Limited v. AGI Music Sdn Bhd and Ors., wherein the music composer, Ilaiyaraja, was Defendant no. 2 (“Ilaiyaraja (II)”). The suit was decreed with costs and the defendants, including Ilaiyaraja, and agents etc. were permanently restrained from infringing the Plaintiff’s copyright over certain specifically identified musical works/sound recordings.

This is the second judgment concerning Ilaiyaraja, the first being the judgment in the case of AGI Music Sdn Bhd v. Ilaiyaraja and Anr. (“Ilaiyaraja (I)”). Ilaiyaraja (I) was relied upon in Ilaiyaraja (II).

In this two-part post, I start with an analysis of the Ilaiyaraja (II), i.e. the latest judgment, concluding that the Madras High Court had little choice in the matter in giving its ruling, given the judgment of the Supreme Court in the famous case of IPRS v. Eastern India Motions Pictures Association (“IPRS 1977”). Since the Court in Ilaiyaraja (II) also relies on Ilaiyaraja (I), I continue my analysis to said same Ilaiyaraja (I) as well. However, in the case of Ilaiyaraja (I) I share a different sentiment. In Part-II, I continue with the analysis by explaining why the judgment in IPRS 1977 was not a binding precedent on the Madras High Court in Ilaiyaraja (I).

M/s. Indian Record Manufacturing Company Limited v. AGI Music Sdn Bhd and Ors. (“Ilaiyaraja (II)”)

In Ilaiyaraja (II), the Plaintiff’s case was based on assignment agreements with the producers of thirty different feature films. Factually, as is recorded in the judgment, the works relate to the period of 1978-1980. The cause of action appears to be a newspaper article that stated that the Ilaiyaraja had given the right of administering the musical work of all his songs in films produced before 2000 to Defendant No. 1. It looks likes only Ilaiyaraja contested the suit. It also appears that after issues were framed, only the Plaintiff led oral and documentary evidence, whereas no evidence was led by the Defendants.

The judgment goes in favour of the Plaintiff based on a reading of Section 17(b) of the Copyright Act and the Supreme Court’s judgment in IPRS 1977 and Madras High Court’s judgment in Ilaiyaraja (I). The Court held that the producers of the cinematographic films were the first owners of the copyright even in the compositions and once the assignment agreements of the Plaintiffs with such producers were not in dispute, the suit must be allowed. The Court concluded that the rights of the author of a lyric/musical work could be defeated by the producer of a cinematographic film. The Defendant No. 2 failed to produce a contract to the contrary. The Court took pains the emphasize the difference between the ‘author’ and ‘owner’ of a copyright protected work and re-affirmed that notwithstanding the lack of ownership, the author of the musical work would always have moral rights under Section 57 of the Copyright Act.

It is difficult to criticize the judgment in this Ilaiyaraja (II) because it related to the period 1978-1980 and for which period, the findings in IPRS 1977 squarely apply.

However, when I went back to the Ilaiyaraja (I) judgment, I believe the Court got it wrong and my analysis on this follows below.

AGI Music Sdn Bhd v. Ilaiyaraja and Anr. (“Ilaiyaraja (I)”)

The judgement in Ilaiyaraja (I) case, decided on June 4 last year, appears to be a composite suit and the core of the dispute related to the rights are retained by Ilaiyaraja in his musical compositions created for various cinematographic films. This was also a final judgement and decree by a single judge of the Madras High Court. There were several issues raised in this case, though we need not go into all of these.

Unlike Ilaiyaraja (II), the facts in Ilaiyaraja (I) were not limited to works of a specified time-period. The Court held that Section 17 proviso (c) would not apply on facts. Focusing on Section 17 proviso (b) instead, the Court in Ilaiyaraja (I) observed that the first owner of the Copyright in a ‘cinematographic film‘ is the producer of said film. The term ‘cinematographic film’ is defined in Section 2(f) of the Copyright Act to “…include a sound recording accompanying such visual recording…….“. Reading these two together the Court in Ilaiyaraja (I) concluded that the producer of the ‘cinematographic film’ would be the first owner of the Copyright therein including such ‘sound recording’ (para 48). In this case, the sound recordings included musical works composed by Ilaiyaraja. Even in that case, Ilaiyaraja had apparently failed to produce any agreement to the contrary with the film producer.

The Court in Ilaiyaraja (I) did feel that there needs to be some balance on the concurrent rights of producers and the individual constituents of the sound recording. The Court answers that this balance is achieved by reference to the moral right of the author under Section 57 of the Copyright Act. The Court even goes on to observe that the issue of ownership under Section 17 of the Copyright Act does not change even after the 2012 amendment (para 65).

In the IPRS 1977 judgment, in paragraph 17, the Supreme Court concluded, rather summarily, if I may add, that under Section 17 proviso (b) the producer of the film becomes the “first owner of the copyright therein and no copyright subsists in the composer of the lyric or music so composed unless there is a contract to the contrary”. The Supreme Court upheld the judgment of the High Court under appeal which held that the composers had no right at all in the composition.

In Ilaiyaraja (I), the Madras High Court has explained this aspect further – to the extent the term ‘cinematograph film’ includes a sound recording, the ownership rule under Section 17 proviso (b) also extends to such ‘sound recording’. But I think here is where the Madras High Court got it wrong, which I explain in the next section. 

Ilaiyaraja (I): Failure to properly interpret “copyright therein” and “cinematograph film”

One point that has always bothered me is the stipulation in the relevant part of Section 17 proviso (c) that the producer of the ‘cinematograph film’ would be the first owner of the “copyright therein”. What is the meaning of the term ‘therein’? Obviously, it is a reference to the ‘copyright’ in the ‘cinematograph film’. I think there is no confusion on what is meant by the term ‘copyright’ – it is a reference to the set of rights granted under Section 14.

As for term “cinematographic film”, the current definition is as below:

Section 2(f): “Cinematograph film” means any work of visual recording and includes a sound   recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films;

While it is accurate to state that the definition includes a sound recording, the connotation offered by the Madras High Court in Ilaiyaraja (I) is incorrect. The reference to ‘sound recording’ is not in isolation but it is a reference to a sound recording that accompanies a visual recording. The principle definition of the term is that it refers to a work of visual recording. Both these contextual elements suggest that the intent was to ensure that a composite product comprising both visual and sound elements as well as a product comprising only visual element, are both covered with in the definition of the term “cinematographic film”.

Under the scheme of the Act as it stands today, separate set of rights is conferred on a ‘sound recording’ under Section 14(1)(e). Under Section 13(4), the right in a ‘sound recording’ is separate from the right in the underlying musical work or lyric. Although Section 13(4) does not, unfortunately, deal with the relationship between a ‘sound recording’ and a ‘cinematograph film’, the fact that the Parliament has chosen to identify them separately and grant them separate rights (though substantially similar ones) prima facie suggests that the concept under Section 13(4) extends equally to a ‘sound recording’ vis-à-vis ‘cinematograph film’. To hold otherwise would be contrary to legislative intent.

Therefore, when Section 17 proviso (b) states that the producer shall be the first owner of the “copyright therein“, it can only be construed as a reference to the producer of the film becoming the default first owner of the rights granted under Section 14(1)(d), i.e. the copyright in the cinematograph film. That cannot be construed as granting the film producer the rights under Section 14(1)(e) as well, i.e. Copyright qua ‘sound recording’.

Moreover, definition of the term “cinematographic film”, in any event, does not include a “musical work”. Therefore, the phrase “copyright therein” in Section 17 proviso (b) cannot be construed as a reference to ownership of rights under Section 14(1)(a) as well, i.e. Copyright qua ‘musical work’.

By this logic, the Madras High Court judgment in Ilaiyaraja (I) is erroneous because it fails to: (i) properly appreciate the interpretation of the phrase “copyright therein”, (ii) the impact amendment to the definition of “cinematograph film” and inclusion of ‘sound recording’ by way of the 1994 Amendment.

On 20^th February, the Delhi High Court in the case of Novartis Ag & Anr v. Sun Pharmaceutical Industries passed an order issuing a temporary injunction against Sun Pharmaceuticals barring their production of Nilotinib. The injunction was granted on the grounds that there was a prima facie case in favor of the plaintiff and that they would suffer an irreparable loss without the injunction. Yet, there is no recording of reasons why the court deems the situation to be so.

This post looks into the fundamentals of granting interim injunctions with respect to the production of pharmaceutical drugs and the potential implication of granting injunctions without rightly recording the reasons for the same.

Background

Nilotinib is a medication for the treatment of chronic myelogenous leukemia, that is sold under the brand name of Tasigna by Novartis. Nilotinib (Patent – IN 237430) is used in cases where imatinib (Novartis’ Glivec), fails to get a response from the patient.  Novartis had filed for patent protection for Nilotinib in 2004 and has the patent till July 2023. Cipla had made a pre-grant opposition against the patent application of Novartis, but the same was rejected by the Assistant Controller of Patents. The validity of Novartis’ suit patent was upheld when previous cases of infringement of the Nilotinib patent were held in its favor (Novartis v. Rajiv Mukul – where the defendant decided to stop production and Novartis v. S.P. Accure Labs – where a permanent injunction was granted). In the present case, an ad-interim injunction was granted against production. The present Order relied on the rejection of Cipla’s pre-grant opposition and the above-mentioned cases to hold in favor of Novartis.

While all this sounds good, the glaring lack of reasoning regarding the existence of a prima facie case and how irreparable harm is caused in the absence of the injunction is cause for concern.

Interim Injunctions in Patent Infringement Cases

An interim injunction is usually granted on the following grounds:

1. The party seeking the relief must establish a prima facie case based on facts for the injunction,
2. The balance of convenience must favor the grant of an injunction,
3. There should be irreparable damage caused due to the denial of the injunction.

There is also a fourth consideration that comes into play when granting interim injunctions for pharmaceutical patents, and that is, there should be no opposition to public interest in granting the injunction.

Setting a Standard for Granting Injunctions

Presumption of Validity of Patents

Given the Patent Office’s high error rate in granting pharmaceutical patents,  the practice of presuming the validity of a patent in cases of granting an injunction comes under serious doubt. In the present case, the Order relies on the decided cases concerning the patented drug and the rejection of Cipla’s pre-grant opposition for the presumption of validity of Novartis’ patent over Nilotinib. However, the larger institutional inadequacies of the Patent Office leaves open several questions on the level of scrutiny adopted while granting patents and their continued validity.

Need for a Prima Facie Case

The validity of a patent and the prima facie standard for injunctions go together. Under the CPC, a prima facie case would be one where there is a triable issue. For cases concerning patents, this would, of course, be an instance of infringement and the burden to establish the same lies with the petitioner. Given the existing doubts in the presumption of validity, the threshold for what constitutes a prima facie case must also be higher.

The Novartis Order grants an injunction in favor of the plaintiffs, after stating that there is a prima facie case because – Novartis has a valid patent; the validity has been tested in the pre-grant opposition, and the launch of Nilotinib by Sun would be an infringement of Novartis’ rights. Further, the Order states there was be irreparable loss without the injunction and that the balance of convenience lies in favor of the plaintiffs. The fact that Novartis has also been able to produce the drug at a ‘reasonable price’ with the patent aids the decision for granting the injunction.  However, there is no discussion on why or how this constitutes a case for an injunction.

The mere recognition of these facts without any analysis on why it is so, majorly dilutes the value this Order adds to the jurisprudence concerning this subject matter and leaves it open to challenges on similar grounds in the future. Additionally, the case does not deal with the price issue adequately.  Tasigna, on average costs Rs. 8000 per strip (4 capsules), which is not quite so reasonable for an essential life-saving drug. The Order fails to deliberate on a possibility that Sun Pharma may indeed be able to produce the same drug at a lower cost. Thus, significantly restricting access to affordable life-saving medicine.

Given that the very first matter for consideration in cases on pharmaceutical patent infringement is liable to a serious attack, the non-recording of reasons for calculating the balance of convenience and irreparable damage further take away from the Novartis case.

The Roche v. Cipla Standard?

Post-TRIPS India saw its first pharmaceutical patent infringement case in F. Hoffman-La Roche Ltd. v. Cipla Ltd. The 2008 judgment by Ravindra Bhat. J in the case presents a standard to be emulated in deciding claims for interim injunctions. While this case does not dwell on setting a standard for what constitutes a prima facie case, it does record thorough scrutiny of the patent held by Roche and Cipla’s opposition to the presumption of validity. There is an extensive debate over the validity of granting the patent itself and particularly over the inventive step test and anticipation. The judgment also goes into whether the granting of an injunction would actually serve its purpose in the case and what its public interest implications would be. In its elaboration on this, the judgment goes into the American Cyanamid case standard on what the guiding principles for granting injunctions are, and after an assessment on the matter, the Court decided that the petitioner would not be able to win against the defendant in a case for a permanent injunction and hence granting an interim injunction would merely be delaying the production activity of the defendant and this would lead to an irreparable loss for the defendant. Hence, the balance lay in favor of the defendant and there was no backing for granting the injunction.

Further, the public interest argument was that given the defendant’s medicines were cheaper than the plaintiff’s, an injunction would restrict access to affordable medicines for consumers and hence, again go against the decision to grant an injunction. A crucial factor that has been missed in the Novartis Order. After due consideration of all these factors, the Court in Roche v. Cipla held that the plaintiff was not entitled to an interim injunction.

In Conclusion

The Single Judge, 2008 Roche v. Cipla judgment, in its form of reasoning concerning the granting of an interim injunction represents a good standard to be emulated in cases of infringement of pharmaceutical patents. The latest Novartis Order is representative of the concerning trend of interim injunctions being granted quite readily with many of them being on a quia timet or ex-parte basis. (You can read more about the issues with the same here, here, here and here)

Injunctions are discretionary and equitable reliefs and are not available to parties as a matter of right. Therefore, if there is an equally effective remedy available, then an injunction will not be granted. Given the public interest implication of halting pharmaceutical production in cases of infringement especially when patent validity can be doubted, it becomes more imperative that there is, first, a better recording of reasons for granting injunctions and second, speedier trials become the norm instead of injunctions for such cases.

Granting interim injunctions has the effect of curbing competition in production and also denying consumers access to alternatives. However, given the recent trend, this public interest concern seems to have taken a backseat while the interest of the patentee and the effective enforcement of their right drives these orders. Further, the lack of deliberation in court orders on how injunction is the only remedy available in such cases of infringement goes against the tenets of injunctions being exceptional remedies.

I would like to thank Prashant Reddy and Divij Joshi for helpful comments and suggestions.

Image from here.

In Part I of this two-part post, I had analysed the latest judgments of the Madras High Court in Ilaiyaraja (II) and Ilaiyaraja (I), in that order. I had concluded that the Madras High Court in Ilaiyaraja (II) got it right whereas it got it wrong in Ilaiyaraja (I) even though the conclusions are same in both the judgments. This is not a contradiction because the law applicable to the facts in both cases is totally different. In Ilaiyaraja (II), the Madras High Court was bound by IPRS 1977. I submit that this is not true in the case of Ilaiyaraja (I) and I explain the same in this Part II.

IPRS 1977: “copyright therein” and “cinematograph film”?

One could ask – why blame the Court in Ilaiyaraja (I) as well since it was also following the precedent from the Supreme Court in IPRS 1977. In IPRS 1977, paragraph 17 thereof, it was held in very clear terms that the composer shall have no right in view of Section 17 proviso (b). Much ink has been split on this judgment several times before, including criticisms of the judgment for its failure to interpret the statute correctly. I don’t intend to enter this debate and express no views on the correctness of IPRS 1977. However, what I do intend to focus on is the blind following of IPRS 1977 in Ilaiyaraja (I).

At the time of IPRS 1977, the definition of ‘cinematograph film’ was very different:

Section 2(f) as on 1977: ‘cinematograph film’ includes the sound track, if any, and ‘cinematograph’ shall be construed as including any work produced by any process analogous to cinematography.

The differences with the current definition are several – (i) there is no affirmative meaning given with reference to visual recording, (ii) the reference is only to a ‘sound track’ (iii) the word ‘sound recording’ is absent and (iv) there is also no qualifier to the effect ‘accompanying such visual recording’. At that time, there was a separate subject matter called ‘record’ (predecessor to ‘sound recording’) but even this term was absent in the definition of ‘cinematograph film’. Even back then, the word ‘sound track’ was not categorized as a separate work for which copyright was conferred, in contrast with what we see today for ‘sound recording’. In that context, perhaps, the decision in paragraph 17 made sense – if the composer and performers were commissioned to create a ‘sound track’, the producer of the film becomes the first owner of the ‘sound track’ as well. I emphasize that I am expressing any view on the correctness of IPRS 1977.

Therefore, in my humble opinion, the finding in paragraph 17 of the judgment in IPRS 1977 has limited relevance in today’s statutory context. Moreover, even in the context of the erstwhile law applicable then, the findings in paragraph 15 of the very same judgement, are extracted below, are important to note:

“15…Thus if an author (composer) of a lyric or musical work authorises a cinematograph film producer to make a cinematograph film of his composition by recording it on the sound track of a cinematograph film, he cannot complain of the infringement of his copyright if the author (owner) of the cinematograph film causes the lyric or musical work recorded on the sound track of the film to be heard in public and nothing contained in Section 13(4) of the Act on which Mr Ashok Sen has strongly relied can operate to affect the rights acquired by the author (owner) of the film by virtue of Section 14(1)(c) of the Act. The composer of a lyric or a musical work, however, retains the right of performing it in public for profit otherwise than as a part of the cinematograph film and he cannot be restrained from doing so…”

(Emphasis supplied in bold)

 To the same effect are the following extracts of Justice Krishna Iyer’s concurring opinion in the IPRS case of 1977:

“20… The artist enjoys his copyright in the musical work, the film producer is the master of his combination of artistic pieces and the two can happily coexist and need not conflict. What is the modus vivendi?

21. The solution is simple. The film producer has the sole right to exercise what is his entitlement under Section 14(1)(c) qua film, but he cannot trench on the composer’s copyright which he does only if the “music” is performed or produced or reproduced separately, in violation of Section 14(1)(a). For instance, a film may be caused to be exhibited as a film but the pieces of music cannot be picked out of the sound track and played in the cinema or other theatre. To do that is the privilege of the composer and that right of his is not drowned in the film copyright except where there is special provision such as in Section 17, proviso (c). So, beyond exhibiting the film as a cinema show, if the producer plays the songs separately to attract an audience or for other reason, he infringes the composer’s copyright. Anywhere, in a restaurant or aeroplane or radio station or cinema theatre, if a music is played, there comes into play the copyright of the composer or the Performing Arts Society. These are the boundaries of composite creations of art which are at once individual and collective, viewed from different angles…”

(Emphasis supplied in bold and underline)

(N.B: The underlined portion in Justice Krishna Iyer’s judgment may seem odd at first but even there you can see a reference only to Section 17 proviso (c) and not (b). This is important to emphasize because in Section 17 proviso (c), the phrase “copyright therein” will contextually connect with “work”, which was defined in Section 2(y) at that time to cover everything including musical work, record and cinematograph film (and correspondingly today, musical work, sound recording and cinematograph film). This is in direct contrast with Section 17 proviso (b), where the phrase “copyright therein” will contextually connect with “cinematograph film” and not musical work or sound recording, as explained above. In Ilaiyaraja (I), the Court held that Section 17 proviso (c) would not apply on facts but only proviso (b))

It is unfortunate that the changes in the statute since the IPRS 1977 have been inadequately analysed in Ilaiyaraja (I). The above findings in paragraphs 15, 20, 21 of the IPRS judgment of 1977 are all the more critical after the Amendment Act of 1994 that totally re-cast the definition of ‘cinematograph film’ as shown above and created a hitherto non-existent connection with ‘sound recording’. As a side-note, I reiterate that it is difficult to criticize the judgment in Ilaiyaraja (II) because it related to the period 1978-1980 when the statute was totally different.

IPRS 2011, 2012 and 2016

I would be remiss not to point to the Delhi High Court judgment by the Single Judge in IPRS v. Aditya Pandey (“IPRS 2011 case”), upheld by the Division Bench (“IPRS 2012 case”) and by the Supreme Court (“IPRS 2016 case”). These case have been covered extensively on this blog before (see here, here, here and here) but I only intend to cover a limited reference here.

Justice Bhat’s judgment in IPRS 2011 carried some observations to the effect that certain anomalies would arise if the judgment in IPRS 1977 is not applied even after the 1994 Amendment (para 48). Even though this order in IPRS 2011 was upheld by the Division Bench in IPRS 2012, the findings in para 48 of the Single Judge’s judgment was held to be erroneous (para 40). This judgement of the Division Bench was upheld by the Supreme Court in IPRS 2016, closely paralleling the reasoning of the Division Bench.

To summarize both Part-I and Part-II,

1. I believe the finding in paragraph 17 of the IPRS judgment of 1977 would only to fact situations preceding the Amendment Act of 1994 (amending the Copyright Act) and thus, the judgment in Ilaiyaraja (II) seems justified;
2. I believe the findings in paragraphs 15, 20 and 21 of the IPRS judgment of 1977, however, would apply for both pre- and post- 1994 amendment situations;
3. The reasoning in Ilaiyaraja (I) of 2019, with respect, is erroneous and requires further consideration.

Image from here

WIPO’s Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (“the Geneva Act”) was adopted on May 20, 2015. On February 26, the Geneva Act officially entered into force after the European Union acceded to the same. Currently, the Geneva Act is effective in 31 countries (Albania, Cambodia, North Korea, Samoa and 27 EU member countries).

How is the Geneva Act different from the Lisbon Agreement?

The enactment of the Geneva Act was a result of the reform of the Lisbon Agreement on the Protection of Appellations of Origin and their International Registration (“Lisbon Agreement”), which was initiated by WIPO in 2009 (our two-part post on the negotiations can be viewed here and here). While the Lisbon Agreement applies only to Appellations of Origin (AOO), namely, those names of products that have a particularly strong link with the place of origin, the Geneva Act extends that protection to all Geographical Indications (GIs) covered by the TRIPs definition. In other words, the Geneva Act offers protection for both GIs and AOOs. The difference between the two, which is more elaborated by WIPO in its FAQ section, is that the link with the place of origin must be stronger in the case of an appellation of origin.

The broader subject matter of protection accommodates the existing national or regional systems for the protection of distinctive designations in respect of origin-based quality products as well as the different national/regional GI systems that exist around the world. This makes the Geneva Act a more attractive treaty to those countries that have significant interest in GIs.

Salient features of the Geneva Act that may interest India

Considering the number of registered and pending GIs before the Indian GI Registry, it would be worth examining some of the salient features of the Geneva Act that may be of interest to India. I list these below:

• India is a member of the Paris Convention and is hence eligible to join the Geneva Act;
• Through a single application, an applicant can obtain registration in all the member countries of the Geneva Act without the need to designate such member countries. This is quite cost effective, especially considering that many of the GI bodies do not have deep pockets.
• There is also a reduced fee rate that would be extended to applicants from developing countries.
• Within one year of registration by WIPO, the member countries of the Geneva Act can refuse the registration so granted and notify WIPO of the same.
• If a member wishes to file an application to register a GI jointly established with a neighbouring country, it is possible to do so under the Geneva Act.
• The registration effected would be indefinite so long as the country of origin also protects the same. As such, no renewal fee is required to be paid to WIPO.
• So long as the substantive requirements of the Geneva Act are met, each country is free to choose its type of legislation to protect a GI or AOO. This means that even protection of a GI as a certification mark is sufficient to avail the benefits of the Geneva Act.
  • on the same kind of goods not originating in the same geographical area or not complying with the requirements for using the GI or AOO.
  • on goods that are not of the same kind or on services, if such use would indicate or suggest a connection between those goods or services and the beneficiaries of the GI or AOO concerned, and would be likely to damage their interests, or, where applicable, because of the reputation of the GI or AOO in the relevant country, such use would unfairly dilute or take advantage of, that reputation.
• Such protection applies also against use amounting to imitations even where the true origin of the goods is indicated or the GI or AOO is accompanied by terms such as “style”, “kind”, “type”, “make”, “imitation”, “method”, “as produced in”, “like”, “similar” or the like.
• Registered GIs and AOOs are also protected against any other practice that is liable to mislead consumers as to the true origin, provenance or nature of the goods.
• In addition, the Geneva Act permits accession by international intergovernmental organizations with competence to protect AOOs or GIs, such as the African Intellectual Property Organization (OAPI) and the European Union (which is now a member). The advantage for India, or any country for that matter, would be that vast geographies can be covered in one single application by designating these organisations.

Why should India consider acceding to the Geneva Act?

India is not a member of the Geneva Act or the Lisbon Agreement. While it is understandable that India, in the past, may not have had reasons to join the Lisbon Agreement or simply did not consider joining the same, India must seriously consider acceding to the Geneva Act for several reasons.

India’s rich cultural diversity has bred several GIs. As on date, India has 361 registered GIs and 222 pending applications under the Geographical Indications of Goods (Registration & Protection) Act, 1999 (“the GI Act”). Among the registered ones, 57.9% belongs to the category, “handicrafts”, and 30.2% belongs to the category, “agricultural” goods as can be gleaned from the doughnut chart on the right, which I created based on the data available on the website of the GI Registry.

Several of these goods are premium export products. Given that Indian handicrafts and textiles are often sought-after and considered exotic globally, several others would have definite potential to be high value export products. As per the statistics available on the website of Statista, a market and consumer data company, India has been seeing a steady increase of the exports in handicrafts since 2011. According to India Brand Equity Foundation, the top 10 destinations for export of Indian handicrafts are the US, the UK, the UAE, Germany, France, Latin American countries (LAC), Italy, the Netherlands, Canada and Australia. Similarly, India is the top most exporter of rice in the world and stands fourth in the world in tea exports. Needless to mention the high premium exports of Basmati rice (which is a different category of exports) and Darjeeling tea, in the category of teas.

When administered by well-oiled GI protection systems, GI tags reduce quality uncertainty, leading consumers to make quick purchasing decisions. Since consumers are often willing to pay a premium for origin-guaranteed goods, registering these names under the Geneva Act would only give an economic boost to scores of stakeholders in terms of foreign exchange.

Though there are serious gaps in the quality control measures under the GI Act, India is way ahead of several of its neighbours in GI protection. India could yet again take the lead by being the first in the region to accede to the Geneva Act. India’s accession to the Madrid Protocol in 2013 was preceded and followed by several impressive reforms to the trade mark protection process. It was also a catalyst in upgrading the systems at the Trade Mark Office. Similarly, the Government could use this as an opportunity to make the GI Act more robust by bringing in some much-needed amendments relating to quality control, and thereafter help these GIs get an international market access by joining the Geneva Act.

Every year, the United States Trade Representative (USTR) conducts hearings for its ‘Special 301’ report. The report which draws its name from Section 301 of the Trade Act, 1974 is meant to name and shame America’s trading partners based on their efforts to protect American intellectual property. This report then feeds into other reports by the USTR, such as the National Trade Estimate on Foreign Trade Barriers which forms the basis of the American President’s trade policy.

In almost all of the previous editions of the Special 301 reports, India has always been on the priority watch list of the USTR, an honour reserved for countries that decide to have their independent IP policies that upset the Americans. For most part, the bark of the USTR has proven to be worse than its bite. I cannot remember of a single instance apart from one in the early nineties, where a Special 301 report has formed the basis of American trade sanctions against India. This is partly because post-Reagan, American Presidents have been wary of unilateral trade measures because such measures reinforce the image of the ‘ugly American’. The reliance on diplomacy has changed with the Trump presidency’s aggressive trade policy – his punishing trade war with China is a scary example of the extent America will go under Trump to protect its trade interests. The Trump administration has made it very clear that it will be training guns on India’s trade policies, which in its view are too protectionist. Trump made good this threat last year, when he suspended trading privileges offered to India under America’s GSP program.

Given recent announcements that the Americans want a new trade deal with India, we thought it would be useful to scrutinize some of the complaints being made by American lobbies to the USTR as part of the Special 301 process. Since the USTR makes available the entire docket for its hearings on its website, we were able to access the submissions made by various lobbies. Over a series of posts, we will be discussing the highlights of the various submissions.

In this post, I will be scrutinizing the submissions of the following industry groups: US Chamber of Commerce, National Association of Manufacturers, Alliance for Fair Trade with India and US-India Strategic Partnership Form and Federation of Indian Chambers of Commerce and Industry (FICCI).

First the praise

The US Chambers of Commerce (USCC) and others are very happy with measures taken to speed up the process before the Patent Office and Trade Mark Registry with applications being disposed much faster than earlier. The Chambers was also very happy with the centralisation of activities within the Department for Promotion of Industry and Internal Trade (DPIIT) under a single Joint Secretary. Apparently, this reorganization was a result of the National IP policy of 2016 and has helped raised the profile and importance of IP within the Indian bureaucracy. This consolidation reportedly helped increase transparency and access to Indian officials responsible for various aspects of IP policy and this reportedly helped raise India’s ranking on the infamous GIPC IP index. The Patent Prosecution Highway (PPH) with Japan came under special praise from the Chambers.

I suspect one of the reasons the USCC was happy with the DPIIT was a senior IAS officer by the name Rajeev Agrawal who was the Joint-Secretary in charge of IP and who took the lead on several of the above initiatives. A suave, well-spoken bureaucrat, Mr. Agrawal was spotted attending events hosted by the USBIC (a part of USCC) in Washington D.C. In November, he resigned from the IAS to join Uber India.

The standard complaints

The standards complaints in most of the above submissions, against Indian patent law (which have remained unchanged for most of the last decade) have concentrated on Section 3(d), Section 8, the lack of a linkage between regulatory approvals under the Drugs & Cosmetics Act and the Patents Act, the compulsory licensing provisions in the Patents Act, Section 146 disclosure of working and the lack of smooth functioning of the IPAB.

Apart from complaint regarding delays at the IPAB, most of the other complaints are targeted at safeguards in Indian patent laws against potentially abusive practices by patentees. Section 3(d) is meant to limit ever-greening of patents, Section 8 requires patentees to make proactive disclosures to the Indian patent office about all examinations reports/status of corresponding foreign patent applications before foreign patent offices, compulsory licensing provisions are recognized by the WTO framework post the Doha declaration and finally, the Section 146 disclosure requirements requires patentees to disclose the extent of their sales in Form 27 is tied to the compulsory licensing requirements. It is interesting to know that FICCI, an Indian industry organization has pushed back hard on the compulsory licensing complaints of American industry by pointing to many provisions in American law which support compulsory licensing and also listing judicial orders passed by American courts which are tantamount to compulsory licensing.

 The demand for a linkage between drug regulatory authorities and patent law has been attempted earlier through the judicial route and was dismissed by the Delhi High Court and subsequently the Supreme Court. Attempts to lobby the governments on instituting such a mechanism have been on for more than a decade with no success.

None of the above measures save for the Supreme Court’s interpretation of Section 3(d), are in violation of TRIPS. Nevertheless, American lobbies are entitled to ask their government to lobby on their behalf. But given that a parliamentary amendment will be required to give effect to any of the above demands it is unlikely that the Modi government will accede very easily.

Another standard complaint has been the lack of a trade secret law and lack of data exclusivity under Indian law. Once again, these are not required under TRIPS but at least on the issue of a trade secret law, it may make sense for India to enact such a legislation because Indian courts quite often get the law wrong on the issue and some codification may help subject to proper safeguards.

The ‘newer’ complaints

Some of the emerging complaints against India are regarding Section 31D of the Copyright Act and the increasing use of price control. These issues have been raised in earlier years but are not as old as the “standard complaints”.

Section 31D is the statutory license regime which was put in place in 2012 to allow Indian broadcasters to access music at a rate fixed by the Copyright Board. It is a provision that is hated by even Indian music labels and songwriters/musicians. And I doubt the legality of the provision under TRIPS. The provision has also been challenged before Indian courts.

Price control has been a particularly sensitive issue of late since the Modi government used it to control stents and knee implants manufactured by the very powerful lobby of medical device manufacturers in the United States. Several of the submissions speak about para 32 of the Drug Price Control Order (DPCO) which exempts patented medicines from price control. There is some confusion regarding the wording of para 32 and hopefully the litigation initiated by civil society group – All India Drug Action Network (AIDAN) – will force some clarity in this regard. This is going to be the trickiest issue in any future negotiations between the Americans and the Modi government because the DPCO is purely within the executive ambit and Modi cannot pass the buck to Parliament.

Special mention

One of the interesting trends I came across while studying the above submissions, is the practice of praising Justice Pratibha Singh, by name, for some of her judgments. The submission by the U.S. Chambers of Commerce highlights her name three times – in context of her judgment on computer related inventions (which Swaraj critiqued over here), in relation to her judgment in Pharmacyclics v. Union of India because of her criticism of the long delays in patent opposition matters and third, for her judgment in the Christian Louboutin SAS and Amway cases on intermediary liability under Section 79 of the IT Act. Her Amway judgment was overturned recently by an appeals bench.

Image from here

The new coronavirus threat/scare seems to be increasing with every passing day. At the time of writing this, it is reported that there are 138,941 cases (of which 80,815 are in China), of which 70,727 have recovered, 57,317 in mild condition, 5,786 are serious, and 5,111 have died. India has 81 cases of which 4 have recovered and 1 person has died. The new Coronavirus, or COVID 19 as it is technically known is, is now the 7th known coronavirus (other well known ones include SARS and MERS), and is suddenly in daily conversation everywhere. In case you were wondering – the “technical” name COVID 2019 is simply a value-neutral short form of Corona Virus Disease 2019. Countries are imposing travel bans (and some are not), economies are being affected, and at the same time, at least some experts are pointing out that it appears that the risk, while present, is causing too much panic (see here and here for eg). Nonetheless, there does seem to be a rough consensus now, that things will get worse before they get better now. (On a separate note: those face masks that are going out of stock everywhere are apparently not very likely to protect you – but given the various other threats as well as the seeming lack of India’s ability/inclination to do anything about pollution – it’s probably not a bad idea to keep using them anyway.)

Pharma patent (f)laws and policy

Anyhow – coming to the subject matter focus of this blog – where pharma issues go, IP issues are bound to follow. With no known vaccine or treatment, and the great panic it’s raised, COVID 19 has inadvertently brought to the forefront, the public-health, private-profits tension. This is a tension well known to developing countries, but now that this is a global pandemic with no known cure, it is being re-emphasised in the developed world as well. More importantly, it’s no longer relegated to health activists, as the public-health / private profits issue is suddenly ripe for the public sphere’s plucking. Going back to the basics of Copyright/Patent – these monopolistic privileges are granted by the state so that private players are incentivised to innovate more/faster than they would in the absence of such privileges. The underlying assumption here, is that innovation leads to the progress of society. Just how much progress … well, historically, let’s just say that it has been underwhelming, especially for the developing world. Due to the severe inadequacies of the pharma patent system, there have been many calls for delinking R&D costs from drug prices, as well as generally looking for new pharmaceutical innovation models but they’ve had unfortunately little impact.

Aside from pharma patents – there is also a much needed renewed emphasis on public health systems – a reminder that India with its ‘always-stuck-at-minuscule-levels’ public health budget, could do well to heed to. After all – even if by some miracle we manage to convince half of our 1.3 billion people to wash their hands multiple times a day, let’s think about what will happen when our sad truth is that we are already losing almost 700,000 people a year to unsafe water, dangerous sanitation and lack of handwashing facilities. (data from here – play around with the filters). Will they get saved from COVID 19 only to die of cholera? In the case of a quarantine – most of those who can (ie, money-ed, white collar jobs) will work from home, stay self-quarantined – but what do you do if you need to earn your next meal, pick up your rations, or when your job requires you to keep showing up or risk being fired? Additionally, its worth keeping in mind that if we do impose stringent measures, we don’t really have welfare measures in place which would ‘take care of the carers’, so to speak. Prof Amy Kapcyznski written an interesting piece in the same vein, on the ‘Corona Virus and the Politics of Care’, here.

There are issues I’d like to have gone into but won’t, here – such as why other diseases like Tuberculosis, Diarrheal diseases, Malaria, etc which have killed hundreds of 1000s every year for the last few decades, have not been getting the same ‘public health’ attention, but its likely that global attention is simply most given when the non-poor are threatened – and with COVID 19’s high infection rate and lack of vaccine, they now are. It’s high time to take public health seriously and not just assume a few quarantines + waiting for the vaccine is sufficient action. COVID 19 is neither the first public health emergency we’ve faced, nor will it be the last. But hopefully this will be the clarion call that finally gets heeded.

Looking at COVID 19 – as it’s grown, there have been bigger calls for open-access / open sharing of information and data related to COVID 19, since scientists and researchers seem to grasp the importance of collaboration in dealing with an urgent, important need (See WHO’s response here). More specifically – keeping this important information behind a copyrighted paywall, would mean slower progress and more deaths. At the same time, Big Pharma has shown that they are consistent with their demands, come rain or shine. In US, they’ve ensured that an $8.3 billion emergency spending bill (for COVID 19) has removed language that might threaten the intellectual property of vaccines or treatments that the government considers unfairly priced. Of this huge amount, $3.1 billion is earmarked for drug development. Clearly, this is more than the $2.87 billion that is supposedly the cost of new drug development (which is a claim others have said is grossly exaggerated to start with, not to mention that it includes more than $1billion as opportunity cost). The Global Preparedness Monitoring Board currently estimates that drug development costs will be about $2 billion (PDF here). Yet, the Pharma lobby is insisting on removal of the IP-price related clause because it will apparently cost them more than the $3.1 billion grant, to make it. (See here for source). Apparently, being granted more than the average cost of making a drug, as well as a being provided a guaranteed buyer, is not sufficient for Big Pharma!

It will be interesting to see if the US govt gets bullied by Big Pharma here. While US has been happy to support Big Pharma when they take such actions in other countries, it took barely any time for US to issue an executive ordinance threatening compulsory licence type action against Bayer, when the Anthrax scare (5 deaths in total) took place in 2001. Whether it gets bullied into it or not, it is worth noting that clearly when the US Govt feels threatened, it does not think the Pharma Patent system will deliver it from its crisis. One wonders if they’ll remember this, when they start telling other countries not to use Compulsory Licenses, etc, in the future, as I have no doubt they will continue to do.

Meanwhile, another set of Foundations (Wellcome Trust, Gates, and Mastercard) have also contributed and set up a $125 million Covid-19 Therapeutics Accelerator, for developing a treatment for the disease, with a call to other charity organisations to contribute as well. The Accelerator will work with the World Health Organisation as well as with private entities. It would surprise no one if other country governments, and foundations are also contributing money towards this cause – afterall, no one really expects the pharma patent system to actually incentivise a much needed emergency drug, without outside help.

On a partially tangential note –  given how much attention ‘hand-washing’ has received as a method of containing COVID 19, it might be a good time to really pay attention to the limits of the incentives of the patent system – for example see the ‘humble checklist’ example, in the introduction of this paper. The short version is that in the face of nearly 30,000 people dying from infection in US every year, several proposals were put forward to deal with the issue, most estimating costs of billions of dollars. Then, in one hospital, they realised that by giving nurses the authority to enforce a checklist of hospital procedural requirements against doctors, (such as handwashing and use of antiseptics), the rate of infection dropped by two-thirds!

COVID 19 related patents – who will get them? 

On February 24, 2020, at a WHO Press Conference, it was announced that WHO thinks a drug called Remdesivir has a good chance at showing efficacy against COVID 19. A paper published in the Cell Research journal in early February also identified Remdesivir, along with Chloroquine as potential treatments for COVID 19. Chloroquine, as readers may know, is used to treat Malaria, and was first discovered almost 90 years ago. So, while certain drugs containing chloroquine along with other compounds may be patented, chloroquine itself is in the public domain. Remdesivir on the other hand, was made by Gilead along with the US govt, sometime between 2010-2015, as an effort to treat the deadly Ebola virus (for which mortality rates average at 50% and have reached up to 90%!) , which was devastating West Africa at the time and where it continues to be active, incidentally. However, after Phase 3 testing, Remdesivir turned out to be less effective for Ebola than first thought. It has recently started garnering more attention due to the previously mentioned paper, as well as that a COVID 19 infected man in Washington who was granted Remdesivir under Gilead’s compassionate use program, recovered soon. It’s not clear whether the antiviral cured him, as he was apparently starting to recover anyway – full story here – But Gilead is now providing access to the drug to more patients in US, Europe and Japan under this ‘Expanded Access’ program, which allows access to a drug that has not yet received marketing approval, in emergency situations.

This is where the ‘patent’ situation gets a bit more interesting. That Cell Research paper that identified the use of Remdesivir as a potential treatment for COVID 19 was not by Gilead, but rather by 7 scientists from Wuhan Institute of Virology and 3 scientists from Beijing Institute of Pharmacology and Toxicology. In their paper, published on 4th February 2020, they had assessed 7 potential treatments and determined that 2 of them (remdesivir and chloroquin) were likely to be effective against COVID 19. The same day, the Wuhan Institute wrote on their webpage that they had also applied for a patent on this new use of the existing drug (“second medical use”), as per usual practice, on January 21st. Notably, they also mentioned “If relevant foreign companies intend to contribute to China’s epidemic prevention and control, we both agree that if the state needs it, we will not require the implementation of the rights claimed by the patent for the time being force.” The news that the Wuhan Institute was applying for a patent on this use of Remdesivir seems to have caused quite a ruckus, as our friends at IPKat have pointed out (for eg, see posts like this , this and this which seem to imply that China is doing something shady by applying for this patent). This is strange for many reasons, but amongst other reasons – one would think that if someone is going to criticise the Wuhan Institute for trying to claim a patent over a drug for COVID 19 made by Gilead, then that person would also criticise Gilead for having patented Remdesivir, seeing how it was a public-funded drug (for even more details on that, click here), and was meant to be a treatment for the devastating Ebola disease!! Much to no one’s surprise, this is being conveniently overlooked. This is also a good time to point readers back up to the 5th paragraph above – the bit where the Pharma lobby has complained that $3.1 billion is not sufficient to develop a new treatment.

Anyhow, to be clear – Chinese patent law does allow “second medical use’ patents, as do several developed countries. (See China’s Patent Examination Guidelines Chapter 10, Section 4.5.2 here – large PDF). Incidentally, India has come under severe criticism by Big Pharma for its Section 3(d), which does not allow second medical use patents – so one would assume that IP maximalists should be happy that China does allow it, and further that they are applying for patents under it.

In any case, clinical trials are now being done by both China as well as Gilead. I can’t help but wonder what the usual IP maximalists who cry hoarse about the importance of data exclusivity, will have to say on this, prior to knowing who may end up owning this data. Gilead, for its part, seems to not be focusing on the patent issue, and is also apparently supplying the drugs at no cost to China for their clinical trials. There’s more in this report on a press statement issued by Gilead (you may need to use your browser’s translating feature to read it, as it is in Chinese). The statement also does not speculate on the Wuhan Institute’s application, given that it is unpublished, but it does confirm that it holds existing patents on Remdesivir in US, China and other countries as well. According to IAM-Media, there is at least one potentially problematic piece of prior-art – a Gilead application for using remdesivir against SARS, MERS and other coronaviruses. Prima facie, it would appear that even if the Wuhan institute receives the patent they’ve filed for, it’s working may be dependent on Gilead’s earlier patents – and they have at least 3 relevant patents in China already, with 5 further applications still being reviewed (see here). In the above statement, Gilead possibly refers to this, when they say that it is too early to discuss compulsory or other licensing questions for now.

For readers who may be interested – China does have what seems to be fairly standard Compulsory Licensing provisions, which you can see in the Chinese Patent Act here (PDF). Relevant portions are Articles 48 to 58, with Article 49 and 50 dealing specifically with national emergency, public interest and public health.

Aside from all of this, it is also reported that a patient in Japan has recovered after being treated with Sanofi’s Plaquenil (hydroxychloroquine sulfate), which had earlier been used to treat SARS. Similarly, there are reports of Teijin Pharma’s Alvesco (ciclesonide) showing some promise.

Never waste a good disaster

Meme news here

Meanwhile, closer home, authorities have busted a fake hand sanitiser manufacturing company, in Gurugram, Haryana, which had been using the name “Viro-rub”. However, over in China, BrightGene, a Chinese biotech company, has stepped it up a notch. It announced on Feb 12th that it had mass manufactured Remdesivir, leading to its stock price shooting up immediately. However, it soon came to light that they had neither had the licence from Gilead to be manufacturing Remdesivir, nor had it even managed to make it at commercial scale, but rather only in small quantities for clinical research, leading to an apparent reprimand and censuring from the Shanghai Stock Exchange.

One hopes that the type of ingenuity that goes into making a quick buck, is also at work amongst those looking to bring us a treatment quickly!

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We’re pleased to bring to you a guest post by Pragati Agarwal questioning the locus standi of a private entity seeking GI protection for Chinnor rice. Pragati is a 5th year student at Symbiosis Law School, Noida.

A Private Entity Seeks GI Protection for Chinnor Rice: Does it have the Locus Standi?

Pragati Agrawal

As an aspiring lawyer, I have a great deal of interest in Geographical Indications (GI) as an area of intellectual property. After going through the online records of the GI Registry, one application that caught my attention was the pending application seeking GI status for Chinnor rice grown in the Balaghat district of Madhya Pradesh. The application was filed in October last year by a private entity Chinnor Seeds Producer Company Limited (‘Application’) which is situated in Balaghat, Madhya Pradesh.

Section 11 and its Implications

The fundamental question which arises in this case is whether Chinnor Seeds Producer Company has the locus standi to seek the GI tag for Chinnor Rice? Section 11(1) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (‘the GI Act’) sheds light on the locus of a party seeking the GI tag and reads as follows:

“Section 11 – Application for registration – (1) Any association of persons or producers or any organisation or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication.

(2) ……

………”

It is clear from the above section that only an association of persons or producers or any organisation or authority established by or under any law can make application under the said section. Further, such association or organisation or authority must represent the interest of the producers of the concerned goods. Also, as per Rule 32(6)(a) of the Geographical Indication of Goods (Registration & Protection) Rules 2002 (“the GI Rules”) an affidavit must be filed to indicate how the applicant represents the interests of any association of persons or producers or any organisation or authority established by or under any law.

The intention underlying the GI Act and Section 11 thereof read with Rule 32(6)(a) of the GI Rules would indicate that only a non-trading body would satisfy the qualification criteria under Section 11 of the GI Act.

The Applicant in the present case seems to be a trading company with business in seed production. This is again contrary to the scheme of the GI Act which is concerned with commercial production of a GI product (in this case “rice” which is distinguished from “seeds”).

Since the Applicant is a private entity, it is questionable whether such entity is entitled to seek the GI tag under Section 11 of the GI Act because a private company cannot represent the interests of the producers of the goods in the geographical area. It can only represent its own interest and is hence, ineligible to be a GI applicant. In its reply to the Formality Check Report, Chinnor Seeds Producer Company Limited has stated that it is an association of rice growers and is a company established according to the law. Further, it claims that any Chinnor growing farmer of the Balaghat district can join the company.  As per the reply, only 51 of the total 1250 producers of Chinnor Rice are associated with the Applicant.

The 2012 decision of the Intellectual Property Appellate Board (IPAB), Chennai in the case of Subhash Jewellery v. Payyannur Pavithra Ring Artisans & Development Society becomes relevant in this context. In this case, the IPAB ordered the removal the GI “Payyannur Pavithra” ring in the name of the society from the Register holding that there was no evidence of the desire of the producers to come together to protect the GI. Further, according to the IPAB, the application ought to have named those producers, whether they make or manufacture the ring or whether they trade or deal in the making or manufacture of rings and also that such production takes place in Payyannur. According to the court, a mere claim that the society is called Payyannur Pavithra Ring Artisans and Development Society would not suffice.

Conclusion

It is to be noted that Section 11 of the GI Act is in line with the main object of the Act to protect those persons who are directly engaged in exploiting, creating or making or manufacturing the goods as they have the hands-on experience of the GI products. In intellectual property rights matters, be it GI, patents or trademarks, the dispute is really not inter-parties alone, and there is always the issue of public interest. The GI Registry should refuse the registration in light of the above reasoning and must protect the public interest involved in the production of Chinnor Rice.

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On 2nd March, a Single Judge of the Delhi High Court in the case of Genentech Inc. and Ors. v. Drugs Controller General of India and Ors. passed an order, which effectively allowed Genentech’s in-house employee/expert to inspect the documents placed on record under a Confidentiality Club. This is the Trastuzumab litigation involving Reliance. This litigation saga has been covered on several occasions including here, here, here, here, here and here.

When I first heard of this order, I was a little disturbed because it defeats the very purpose of a Confidentiality Club. Apart from IP, I am used to doing trade remedies/WTO and competition law cases where confidentiality is a key component and I was also a little aghast at this getting diluted. Confidentiality Clubs are created for the purposes of bringing confidential information on record without the confidentiality of said information being lost. This concept now stands institutionalized today in the Delhi High Court in view of Rule 17 of the Delhi High Court (Original Side) Rules, 2018 read with Annexure F. However, by its express wordings, said Rule 17 is limited only to a commercial suit.

Therefore, inherently, it makes sense that the confidentiality club, would limit access to advocates, the Court and perhaps, a named independent external expert. After all, if one party considers certain information to be confidential/a trade secret and does not wish for the contesting party (and other third parties) to learn of its contents (and therefore, urges for the creation of a Confidentiality Club), it makes little sense to have an in-house employee of said contesting party to inspect them.

However, on a proper reading of the order dated 2nd March, it appears that the order is strictly restricted to the facts of the case. The issue arose before the court by way of an interim application that sought a direction against Genentech to appoint an independent expert to inspect the documents forming part of the Club. Previously, vide order dated 25th April, 2016, the Confidentiality Club was already created in this matter (see paragraphs 227 – 228 of this order), based entirely on a similar club created in the related litigation concerning Biocon/Mylan in CS (OS) no. 355/2014.

This Confidentiality Club was, therefore, created before the amendment to the Delhi High Court (original side) Rules, 2018 and appears to be passed after considering rival contentions. The order dated 25th April, 2016 also granted the Plaintiffs, the liberty to amend their pleadings after inspecting the documents in the Confidentiality Club. The Single Judge, on 2nd March, pointed to these earlier orders and took note of the fact that though they were challenged on appeal, this point was not urged. Based on this litigation history, the Court held that the order constituting the Confidentiality Club has attained finality as amongst the parties and cannot be rewritten at the asking of the defendant. Reliance on Rule 17 of the Delhi High Court (Original Side) Rules, 2018 was also rejected because this was not designated as a commercial suit.

In other words, this order cannot be a precedent in other matters to suggest that even in-house experts can be members of the Confidentiality Club. However unfortunate this order may be in these very facts, I believe the alleged failure to urge this point in the appeal proceedings/the failure to reserve rights on this point in the appeal proceedings, seems to have led the Judge to have passed this order.

That said, I believe, with respect, that the order is hyper-technical in nature. The order constituting the Confidentiality Club was passed in an interim application seeking inspection of certain documents. My understanding (I am open to correction from any of the interested parties) is that Reliance had challenged the order qua this interim application, questioning even the direction to allow inspection even via a Confidentiality Club. At that point in time I do not believe any dispute had arisen on the meaning of the term ‘expert’ as used in the order dated 25th April, 2016. I find nothing in the orders of the DB or the Supreme Court concerning this issue (N.B: It could still be that the issue was raised in the pleadings in these appeals, but I doubt that.)

As a matter of procedure, a party is entitled to seek a clarification on what is meant by the word ‘expert’ in the order dated 25th April, 2016 (N.B: Of course, in this case the defendants had approached the court by way of another interim application, rather than as an application for clarification). This right to seek a clarification is not taken away because the parties had appealed and won/lost in such appeals, so long the clarification itself is not a disguised attempt to relitigate the appeals. I would submit that even if any doctrine of implied issue estoppel (and/or constructive res judicata) do apply in such situations, I do not believe it precludes a party from seeking a clarification when there is truly an ambiguity that needs consideration. This is especially so if the need for clarification arose due to a subsequent event, such as a subsequent disagreement between the parties on the meaning of this word ‘expert’. I can’t be a 100% certain if this was indeed a subsequent dispute but that appears to be the case based on my reading of the various daily orders.

The limited point of clarification required here is whether the term ‘expert’ in the earlier order was meant to only refer to an independent expert. I believe there are sound arguments for a defendant to justify the need for such a clarification. The language in Rule 17, even if directly inapplicable, suggests that it has to be an external expert. I don’t mean to prejudge the outcome if such a clarification had been sought, but I believe that in such an event the Court would have to account for the prejudice caused to the defendants if an in-house employee designated as an ‘expert’ is allowed to look at those documents. Ultimately, my understanding is that as on 2016, these Confidentiality Clubs are created pursuant to the inherent powers of the court under Section 151 of the CPC to do “complete justice” and it may be prudent to consider all variables and factors.

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We’re pleased to inform you that The Third World Network (TWN), Tata Institute of Social Sciences (TISS) Mumbai and Jan Swasthya Abhiyan are organising a five day workshop on Access to Medicines, TRIPS and Patents in the Developing World from April 20-24, 2020 in Guwahati, Assam. The deadline for applications is March 20, 2020. For further details, please see the announcement below:

Workshop on Access to Medicines, TRIPS and Patents in the Developing World

Jan Swasthya Abhiyan, Third World Network (TWN) and Tata Institute of Social Sciences (TISS) Mumbai are together organising a five-day workshop on Access to Medicines, TRIPS and Patents in the Developing World from April 20-24, 2020 in Guwahati, Assam.

This workshop is expected to deepen the understanding of the intricate linkage between access to medicines and the barriers presented by intellectual property legal and policy framework. It will also help in increasing the knowledge on use of flexibilities provided by international trade agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to improve access to medicines at a domestic level. The workshop also aims to equip the participants to make law and policy interventions.

To participate in the workshop, it is necessary to send the filled-in application form here on or before 12th March, 2020.

For any further information, you may send an e-mail at campaign4access2medicinesindia@gmail.com or call Saral Kumar at 011-40521773.

We are pleased to inform our readers that NLSIU Bangalore’s Indian Journal of Law and Technology (IJLT) is inviting original and unpublished manuscripts for publication in Volume 16. For further details, please see the call for papers below:

Call for Papers: NLSIU’s Indian Journal of Law & Technology Vol. 16: Submit by April 15th, 2020

The Indian Journal of Law & Technology (IJLT) is now accepting submissions for Volume 16. Please send in your submissions before April 15, 2020 in order for them to be considered.

About the Journal

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

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

The previous issues of the IJLT have featured scholarly writings by renowned authors such as William Patry, Justice Michael Kirby, Yochai Benkler, Jonathan Zittrain, Donald S. Chisum, Justice S. Muralidhar, Benjamin Edelman, Gavin Sutter, Raymond T. Nimmer, John Frow, Christoph Antons, Lawrence Liang and Shamnad Basheer. Volume 15 will also feature articles by Judge Maria Berger and Judge Christopher Vajda of the European Court of Justice.

The Journal is now indexed on research databases such as WestLaw, HeinOnline, the Legal Information Institute of India, SCC and Manupatra. Following the policy of open access, all the articles from previous issues are available on our website: http://ijlt.in.

Categories of Submissions

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

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

Guidelines

1. All submissions must be accompanied by a cover letter stating the name(s) of the authors, their institution/affiliation, the title of the submission and contact details.
2. An abstract (not more than 250 words) must be submitted.
3. Co-authorship (up to a maximum of 3 authors) is permitted.
4. The body of the paper shall be in Times New Roman, font size 12, 1.5 line spacing. Footnotes should be in Times New Roman, size 10 single line spacing.
5. Kindly follow the OSCOLA (4th edition) style of citation.
6. All submissions must be original, unpublished and should not have been submitted for review to other journals.
7. Please send in your submissions in MS/Open Word (*.doc OR *.docx OR *.odt)

Deadline

All submissions must be made on or before 11:59 p.m., April 15, 2020.

Submissions must only be sent to ijltsubmissions@gmail.com – submissions made to any other e-mail ID will not be considered.

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

Contact

Rajashri Seal (Chief Editor): rajashriseal@nls.ac.in and ijltsubmissions@gmail.com.

Topical Highlight 

In an extremely topical post, Swaraj wrote about how COVID-19 (Corona Virus) has brought forth the tension between public health and private-profits. Given the widespread panic, there have been many calls for delinking R&D costs from drug prices and finding new pharmaceutical innovation models. Swaraj notes that while open-access, open sharing of information along with greater calls for collaboration have been used in the emergency response, big pharmaceutical companies are still pushing for greater IP protection and liberty to set prices for their drugs.

Thematic Highlight 

Prashant wrote a post on the lobbying against Indian IP Law before the United States Trade Representative. The USTR’s annual ‘Special 301’ hearing names and shames America’s trading partners based on their efforts to protect American IP. This post looks into submissions made by the US Chamber of Commerce, National Association of Manufacturers, Alliance for Fair Trade with India and US-India Strategic Partnership Form and FICCI. Prashant notes and analyses that the standard complaints of these groups have concerned Section 3(d), Section 8, the lack of a linkage between regulatory approvals under the Drugs & Cosmetics Act and the Patents Act, the compulsory licensing provisions in the Patents Act and Section 146 disclosure of working and the lack of smooth functioning of the IPAB. While the newer complaints are regarding Section 31D of the Copyright Act and increasing use of price control.

Other Posts 

I wrote a thematic post on how Amazon is changing the nature of trademarks. In the post, I discuss how e-commerce platforms have built an enormous market in the past 15 years and how their significance and functions have expanded over time. In the process, they have also managed to build their own brands and become a brand themselves. With the same, the determination of intermediary liability of those platforms has become increasingly important. The Christian Louboutin judgment stands as a crucial point in the jurisprudence of the same which provides a list of ’21 tasks’ to identify how e-commerce platforms interact with the brands they sell. I note that with the introduction of brand registries and incentives for listing brands on platforms, trademarking has become more about brand registrability than brand recognizability.

I also wrote a post on the Delhi High Court judgment in Novartis Ag & Anr v. Sun Pharmaceutical Industries in which Sun Pharma was restrained from launching a generic version of Novartis’ Nilotinib. The post discusses the background to the case while deliberating on a standard to be set for court orders to record reasons for granting interim injunctions in case of pharmaceutical patents. The post discusses the Roche v. Cipla judgment by Ravindra Bhat J. to identify parameters for recording reasons in cases of interim injunctions given its deliberation on the issue of public interest and price. I conclude by highlighting the concerning trend of interim injunctions being granted readily when they are supposed to be exceptional remedies.

Next, Adarsh wrote a two-part post on the M/s. Indian Record Manufacturing Company Limited v. AGI Music Sdn Bhd and Ors case. The Madras High Court in this case permanently restrained the defendants, including music composer Illaiyaraja, from infringing the plaintiff’s copyright over certain identified musical works/sound recordings.

In the first post, Adarsh notes that the present Illaiyaraja case (Illaiyaraja II) is based on the decision in AGI Music Sdn Bhd v. Ilaiyaraja and Anr (Illaiyaraja I). The cause of action in Illaiyaraja II arose when a newspaper article stated that Ilaiyaraja had given the right of administering the musical work of all his songs in films produced before 2000 to AGI. The judgment held in favour of the plaintiff based on the 1977 Supreme Court IPRS judgment and Illaiyaraja I. Analyzing Illaiyaraja I, Adarsh points out that the Court relied on the proviso (b) to Section 17 to hold that the first owner of a Copyright in a cinematographic film and subsequently ‘sound recordings’ (including Illaiyaraja’s works in this case) is the producer of the film. The Court held that the issue of ownership under Section 17 of the Copyright Act does not change even after the 2012 amendment. Further, Adarsh pointed out that Illaiyaraja I failed to interpret ‘copyright therein’ that refers to a cinematographic film in proviso (c) of Section 17 correctly by highlighting the inconsistencies in rights regarding musical works and visual recordings.

In the second post, Adarsh highlights how despite Illaiyaraja I and Illaiyaraja II arriving at the same conclusions, Illaiyaraja I stands as a wrong judgment. The contradiction persists because Illaiyaraja I has a completely different law applying to its facts. Unlike Illaiyaraja II, the former is not bound by IPRS 1977. Pointing out the differences between the current definition of Section 2(f) of the Copyright Act which defines cinematographic film and what it was in 1977, Adarsh notes 4 points concerning the meaning with reference to visual recording, soundtrack, sound recording and accompanying visual recording. Given these differences, In conclusion, Adarsh said that paragraph 17 of IPRS 1977 has limited relevance in today’s statutory context and applies to fact situations preceding the 1994 Copyright Amendment Act. Whereas, paragraphs 15, 20 and 21 of the IPRS judgment of 1977, however, would apply for both pre- and post- 1994 amendment situations.

This was followed by Latha’s post debating whether India should join the Geneva Act of the Lisbon Agreement, 2015. The enactment of the Geneva Act was a result of the reform of the Lisbon Agreement on the Protection of Appellations of Origin and their International Registration (“Lisbon Agreement”), which was initiated by WIPO in 2009. While the Lisbon Agreement applies only to Appellations of Origin (AOO), namely, those names of products that have a particularly strong link with the place of origin, the Geneva Act extends that protection to all Geographical Indications (GIs) covered by the TRIPs definition. Noting the salient features of the Act for India, Latha suggested that India must seriously consider acceding to the Geneva Act. Given the number of GIs registered and pending in India, a well-administered GI protection system such as the one provided by the Geneva Act would give an economic boost to stakeholders. Latha suggests that the government could use this as an opportunity to carry out some of the much-needed amendments to the GI Act.

In another post, Adarsh wrote on the Single Judge Delhi High Court judgment in the case of Genentech Inc. and Ors. V. Drugs Controller General of India and Ors. This judgment allows Genentech’s in-house employee/expert to inspect the documents placed on record under a Confidentiality Club. Adarsh notes that the judgment dilutes the purpose of a confidentiality club by expanding its scope to beyond advocates and independent external experts. However, given the change in Delhi High Court (original side) Rules, 2018 and the point that the judgment concerned itself only with the facts of this case, Adarsh notes that this judgment cannot be a precedent in other matters while going into the technicalities of the order.

In a guest post, Sachin Sathyarajan wrote on the election of Singapore’s Daren Tang as the Director-General of WIPO in light of the US-China Trade War. The Chinese candidature was opposed by the US and its allies’ Singaporean candidate, Daren Tang, who eventually won the elections. Sachin notes that despite Tang’s very impressive breadth of experience, the minimal support he received from the developing nations in the election is a point of speculation. WIPO adopted a Development Agenda in 2007 and Singapore is not a member of the Development Agenda Group, hence, how potential polarization plays out needs to be seen. The informal geographical rotation of WIPO’s leadership is also discussed, wherein Sachin highlights 3 of the last 4 WIPO directors have been white men from developed countries. Lastly, Sachin discusses the voting process in WIPO where only 83 of WIPO’s 193 member states vote, and in conclusion notes the need for extending voting rights to all WIPO member states.

In another guest post, Pragati Agarwal wrote on the locus standi of a private entity seeking GI protection for Chinnor rice that is grown in the Balaghat district of Madhya Pradesh. Section 11(1) of the GI Act, 1999 throws light on the locus of a party seeking the GI tag and requires that only an association of persons or producers or any organization or authority established by or under any law can make an application for GI tag. The applicant in the case of the Chinnor rice is a private trading company and hence cannot be expected to represent the interests of producers of goods in a geographical area. Pragati discusses the issue further and concludes that Section 11 of the GI Act aims to protect those persons who are directly involved in the creation of GI products.

SpicyIP Announcements 

The Third World Network (TWN), Tata Institute of Social Sciences (TISS) Mumbai and Jan Swasthya Abhiyan are organizing a five-day workshop on Access to Medicines, TRIPS and Patents in the Developing World from April 20-24, 2020 in Guwahati, Assam. The workshop focuses on deepening the understanding of the intricate linkage between access to medicines and the barriers presented by IPR and IP policy framework. The workshop also aims to equip the participants to make law and policy interventions. Further details about the workshop can be found in the post.

NLSIU’s Journal of Law and Technology (IJLT) announced a call for papers for publications in Volume 16 of the Journal. The submission deadline for the same is 15^th April 2020. IJLT is a student-edited, peer-reviewed, open access law journal published annually by NLSIU, Bangalore. The categories of submissions include Articles (5000-12000 words), Essays (3000-5000 words) and Case Notes, Legislative Comments, Book/Article Reviews (2000-6000 words).  Further details on the guidelines can be found in the post.

Other Developments

Indian 

Judgments 

SK Cosmetics v. The Controller General of Patents, Designs and Trade Marks and Others – Delhi High Court [February 11, 2020]

The dispute between the Parties arose on account of the specific ambit of Forms 33 and 34 of the previous Trademark Rules. The Petitioner claimed that the filing of these forms could not result in an alteration in the ownership of its mark. The Court agreed with the Petitioner that the filing of the aforementioned forms could only result in a change in the description or address under the mark, but not its ownership. Moreover, the Court noted that the Respondents had already effected change in the Petitioner’s marks, so as to maintain its proprietorship unaltered.

Sporta Technologies Private Limited and Another v. Edream 11 Skill Power Private Limited – Delhi High Court [February 27, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiffs’ mark “DREAM 11” by using a deceptively similar mark “EDREAM 11” in respect of an online fantasy cricket league. The Court observed that the Plaintiffs had placed several materials on record to show infringement on part of the Defendant, and that the Defendant’s mark was phonetically, structurally and visually similar to that of the Plaintiffs’ mark. The Court also noted that the Plaintiffs’ averments had not been rebutted by the Defendant, as it failed to appear before the Court, despite service to it.

Super Cassettes Industries Private Limited v. Prime Cable Network and Another – Delhi High Court [February 28, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants 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. Accordingly, the Plaintiff was granted damages to the extent of the loss of licence fee of Rupees 8.1 lakh.

ERD Technologies Private Limited v. Shree Ambeshwar Mobile Centre and Others – Delhi High Court [March 5, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “ERD” by using an identical mark in respect of electrical goods. The Court also directed the appointment of Local Commissioners for an examination of the allegedly infringing material.

International Society for Krishna Consciousness v. Iskcon Apparel Private Limited and Another – Bombay High Court [March 6, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “ISKCON” by using an identical mark in respect of its garment business. The Court observed that the Plaintiff is the registered proprietor of the mark “ISKCON”, and its use by the Defendants was prima facie infringing in nature. Moreover, the Court noted that the Defendants adopted the mark “ISKCON” with a view to ride upon the goodwill and reputation of the Plaintiff.

Inter Ikea Systems BV v. Harish Chaudhary and Another – Delhi High Court [March 12, 2020]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “IKEA” by using an identical mark. The Court noted that the Plaintiff had been successful in fulfilling all the three elements for the grant of an interim injunction. Moreover, the Court directed the Defendants to suspend its domain name i.e. “www.ikeasteelfab.com” along with its social media accounts till further orders.

Disney Enterprises, Inc. and Others v. Rlsbb.unblocked.ltda and Others – Delhi High Court [March 12, 2020]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ copyright in their films by transmitting them over the internet. The Court noted that the Plaintiffs had fulfilled all the three elements for the grant of an injunction, and noted that the Defendants arrayed were ‘rogue websites’ in terms of the UTV Software order on the basis of the evidence presented before it.

News

• Government clarifies to the Bar Council of Tamil Nadu and Puducherry that there is no proposal for shifting of Principal Bench of Intellectual Property Appellate Board (IPAB) from Chennai.
• YouTube removes Kannada Actor Kicha Sudeep’s Kotigobba 3 teaser due to a copyright infringement claim by Sanjay Kumar Pal.
• Bengaluru police files an FIR against social media platform ShareChat based on a copyright infringement complaint by Lahiri Recording Company for facilitating users to download its copyrighted musical content without its consent. ShareChat claims that it is in compliance with copyright law and terms the compliant as an ‘intimidation’ tactic. The Internet and Mobile Association of India (IAMAI) states that this FIR is an overreach as the IT Act (with its 2008 amendment) mandates a ‘notice and takedown’ procedure for copyright infringement.
• A city civil court in Ahmedabad issues notice to Microsoft for allegedly infringing IT company Azure Knowledge’s registered trademark  ‘Azure’ by using identical and deceptively similar marks such as ‘Microsoft Azure’, ‘Azure Cloud for All’, domain name www.azure.microsoft.com
  etc.
• Madras HC grants interim injunction restraining Symphony Recording Company Ltd. from distributing, manufacturing or selling songs of singer ‘Mahanadhi’ Shobana for prima facie infringing her copyright in songs recorded by her as minor. The Court holds that the assignment agreements, based on which Symphony was claiming its right, were unenforceable as it was executed when Shobana was a minor.
• Madras HC dismisses Madhya Pradesh’s and Madhya Shetra Basmati Growers Association’s plea challenging the exclusion of 13 districts in MP for GI tag for basmati rice grown in the Indo Gangetic Plain. The Court rejects the maintainability of the plea as the GI Registry has already issued GI tag to other states based on APEDA’s (Agricultural and Processed Food Products Export Development Authority) application for Basmati Rice grown in the Plain.

International 

• Biocon, Mylan win patent litigation for insulin glargine device patent against Sanofi in the US.
• International Trademark Association (INTA) annual meeting to be held in November 2020, in the US.
• Coronavirus outbreak may force US, China to rework trade deal implementation.
• The European Copyright Society Conference to host its annual conference on 15 May 2020 in Karlsruhe with the theme ‘Fundamental Rights and Copyright in the European Multi-Layer Legal System’.
• Chinese Intellectual Property Agency punished for malicious Corona-Related Trademark Filings.
• Trump tries to gain exclusive access to German CureVac’s Coronavirus vaccine.