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We’re pleased to bring to you a guest post by our fellowship applicant, Adyasha Samal. Adyasha is a 4th year student at Hidayatullah National Law University, Raipur. This is her first submission for the Fellowship.

In this post, she explores issues relating to morality based prohibitions in trademark law in light of the Court of Justice of the European Union’s decision permitting the registration of the ‘Fack Ju Göhte’ mark earlier this year. We’ve had several posts on the issue of IP and morality on the blog before, including those by Justice Gautam Patel (‘Content Legitimacy and Copyright: Guest Post by Justice G. Patel‘) and Prof. Basheer (‘Sexual Pleasure is Immoral: So Says the Indian Patent Office!).

From Iancu v. Brunetti to Constantin Film: Should Morality Interfere with Trademark law?

In February this year, in the case of Constantin Film Produktion v. EUIPO (“Constantin Film”), the Court of Justice of the European Union (“CJEU”) permitted the registration of the ‘Fack Ju Göhte’ mark, which had been rejected on grounds of morality under EU law. CJEU’s multidimensional approach to applying the morality provision to trademarks addresses issues similar to those identified by the US Supreme Court in Iancu v. Brunetti (“Brunetti”), which dealt with a similar-sounding trademark. These developments have raised concerns regarding the utility of morality-based prohibitions in trademark law.

Background

In 2015, the appellant had sought to register an EUTM for the sign Fack Ju Göhte, which is the name of its successful German comedy film that has been followed up with two sequels of the same name. The EUIPO had rejected the application as it contains a German reiteration of the popular English expletive ‘F**k you,’ which it deemed to be ‘contrary to accepted principles of morality’, as per Article 7(1)(f) of EU Regulation No 207/2009. After successive appeals, the General Court had upheld the rejection, finding the trademark ‘intrinsically vulgar’, owing to its sexual connotations.

Before the CJEU, the appellant argued that the General Court did not examine the sign, ‘Fack Ju Göhte’, but its English translation, ‘Fuck you, Goethe’. Further, it examined the sign broadly and in abstract terms, relying on personal tastes rather than objective assessment through empirical evidence of the general public’s perception. It also claimed that the expression ‘Fuck you’ and its equivalents had lost their vulgar implications and evolved into expressions of anger and contempt. EUIPO contended that the expression remains inherently vulgar and the trademark in question ‘manifestly obscene.’ It also submitted that purpose of trademark rights is to ensure undistorted competition and not freedom of expression.

CJEU’s Analysis

CJEU observed that the prohibition in Article 7(1)(f) aims to safeguard the ‘fundamental moral values and standards to which a society adheres at a given time.’ These values are likely to evolve with time. This necessitates an objective inquiry from a reasonable person’s standard of sensitivity into all elements specific to the case, so as to understand public perception of the trademark. Having established that, it considered several factors – the humourous context in which the expression is used, the resounding success of the film viewed by almost 7.4 million spectators across Germany, the uncontroversial reception of the title followed by its use for educational purposes by Goethe Institute which is tasked with promotion of German language worldwide. It also referred to Article 11 of the Charter of Fundamental Rights of the European Union, acknowledging the responsibility to apply the law in such a manner as to ensure complete respect for the fundamental freedom of expression. Relying on this examination, it ruled that the trademark did not offend the moral principles of the German public at large.

Across the Atlantic, the US Supreme Court in Brunetti had previously struck down the morality-based prohibition in Section 2(a) of the Lanham Act for allowing viewpoint discrimination which offends First Amendment’s free speech threshold. This has been discussed in the blog here. These decisions reflect a trend towards dilution of morality-based prohibitions in trademark law when weighed against free speech thresholds. Although green-signaling Fack Ju Göhte by relying on the changing perceptions towards sexually-loaded expletives is practical and progressive, to what extent free speech should safeguard morally questionable trademarks is a matter requiring deliberation.

Morality and Trademark Law

Other than sexually-charged trademarks, the past decades have seen use of trademarks such as ‘Paki,’ ‘Redskins,’ ‘Black Tail,’ and the (Nazi) Swastika. Attempts to register tragedy-inspired trademarks like ‘MH370,’ ‘MH17,’ and Coronavirus have also been made (discussed in the blog here and here). Marks like these represent disparaging, racist and sexist notions and embody the most despicable elements of society. Professors Phillips and Farley demonstrate how racially charged trademarks cause tangible psychological damage as they influence, shape and comment upon social identities, promoting stereotypes and discrimination.

It has been suggested that like in case of sub-standard products, market forces themselves should determine the fate of objectionable marks. If the public perceives a mark as scandalous, they will abandon the product and eliminate it from the market without government intervention. However, it is likely that such marks may still win customers through their ‘shock value’ or out of sheer consumer-ignorance. Commercial success does not make these marks acceptable. On the other hand, as pointed out by Professor Farley, affording legal protection to them indicates government approval of the beliefs they perpetuate, which is harmful for the society.

Another concern is that withholding registration of offensive marks is pointless as it will not prevent their use in branding. This is not entirely true, as registration provides legal protection and economic incentive to trademarks. Rejection reduces incentive to invest in the brand as it remains vulnerable to imitations. Moreover, regardless of subsequent use, the government has a responsibility to discourage marks that outrage the core moral values of modern society. In an insightful post, Harshavardhan Ganesan highlights the lack of awareness in India about the Holocaust and the ill-informed perceptions of Hitler in Indian society. He suggests that the Trademark office must also take up the task of educating people as to the cause of rejection of trademarks.

Free Speech

Does a bar on marks deemed immoral curtail free speech? Though denial of registration does not prevent commercial use of the mark, it may be argued that withholding legal protection creates a chilling effect on freedom of speech as there remains little economic incentive in using the mark. The solution to this lies in crafting a well-defined, narrowly-applicable law. The principles of morality must be confined to the most fundamental set of values that form the fabric of the society. While assessing trademarks, contextual factors must be given due consideration and only those marks must be turned down which are outrageously offensive and reinforce hateful stereotypes and misinformation. A balance must be achieved by treating trademarks as instruments of commercial expression and avoiding callous rejection of marks on grounds of distaste. While Brunetti has left things in a precarious position by removing all restriction on objectionable marks in US, Constantin Film sets a good precedent for EU by narrowing ‘accepted principles of morality’ to those morals and values which are fundamental to the society.

In India, Section 9(2)(c) of Indian Trade Marks Act, 1999 prohibiting marks containing ‘scandalous or obscene matter’ targets marks likely to offend ‘accepted principles of morality’ (according to the Draft Manual of Trademarks). This is unlikely to be struck down because restrictions on free speech on grounds of decency or morality are permissible under Article 19(2) of the Constitution. However, while Brunetti and Constantin Film expressly hold that freedom of expression permeates trademark law, Section 9(2)(c) remains untested in court. Though commercial speech stands protected under Article 19, Indian courts are yet to grapple with the question of whether trademarks constitute speech at all.

In my opinion, such a conception remains in line with the Supreme Court’s decision in Tata Press v. MTNL, which held that advertisements ought to be protected as commercial speech because they play the crucial role of passing information to consumers in the economy and enable them to make an informed choice. Like advertisements, trademarks by performing the twin functions of source-indication and quality-assurance, transmit commercial information that facilitates consumer choice. Thus, Indian law should acknowledge trademarks as means of commercial expression and extend protection under Article 19(1), so far as they do not breach pre-determined thresholds of morality and send dangerous social messages.

Topical Highlight

Telegram Copyright Infringement Case: India’s Chance to Seek Inspiration from Foreign Principles

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In a guest post, Abhishek Iyer discussed the issue of intermediary liability in light of the Telegram copyright infringement case. The post first discusses the burden of knowledge with respect to e-notices to understand Telegram’s liability given the requirement of ‘specific and actual knowledge’ of intermediaries with respect to infringement of copyrighted material. The doctrine of inducement used in US Courts is discussed to determine Telegram’s role in the indirect promotion of infringement due to the absence of a checking mechanism on its platform. Then, contributory infringement and the EU concept of ‘Mere Conduit’ and the relevant ‘safe harbours’ provision is discussed to determine Telegram’s liability. In conclusion, it is noted that globally settled principles offer an opportunity to the Delhi High Court to balance intermediary and group chat stakeholders’ liability in the Dainik Jagran v. Telegram case.

Thematic Highlight

From Iancu v. Brunetti to Constantin Film: Should Morality Interfere with Trademark law?

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In a guest post, our fellowship applicant Adyasha Samal, wrote about the issues relating to morality based prohibitions in trademark law in light of CJEU’s decision permitting the registration of ‘Fack Ju Göhte’ mark. The EUIPO had rejected the application for trademarking the ‘Fack Ju Göhte’ mark as it was deemed to be contrary to principles of morality under EU law. In the Appeal, the CJEU noted that an objective inquiry from a reasonable person’s standard of sensitivity is required to scrutinize the mark and held that the ‘Fack Ju Göhte’  mark did not offend moral principles. Noting that this is similar to the US Supreme Court’s ruling in Iancu v. Brunetti, Adyasha says that there is a trend towards dilution of morality-based prohibitions in trademark law. Adyasha then highlights the importance of balancing morality and trademark law. Finally, discussing whether a bar on marks deemed immoral curtails free speech, it is argued that a well-defined, narrowly applicable law will ensure that only outrageously offensive marks are censored, and marks are not rejected only on grounds of distaste.

Other Posts

DPCO’s Para 32 Conundrum Continues: Price Control Exemptions for Newly Patented Drugs

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I wrote about the exemptions granted from price control for newly patented drugs under Paragraph 32 of the Drug (Prices Control) Order, 2013 (DPCO). With the 2019 amendment to the DPCO, several instances of self-invocation of the exemption have arisen. I covered the petitions filed by Glenmark, Lupin, Sun Pharma, and Abbot Healthcare concerning the interpretation of Para. 32(i) of the DPCO. The post then discusses whether the DPCO allows for self-invocation of the exemption and I argue that given the proviso to Para. 32, the Drugs Controller’s approval is essential for the exemption, and self-invocation is not supported by the Order’s text. However, with pharma companies claiming self-invocation, the poor drafting of the 2019 amendment to the DPCO becomes apparent.

Book Release: ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’

We had a guest post by Eashan Ghosh announcing the release of his book ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’. The book tells the story of Indian trade mark law through Supreme Court cases. The book is a collection of thirteen essays divided into three parts. Part I covers the similarity inquiry, rectification actions, and jurisdictions. Part II contains essays on questions incidental to the similarity inquiry. Part III contains an essay on the defences of delay and acquiescence in trade mark claims. The book can be found in the recently published list of IP books on this blog (also accessible from the Resources section of the website here) Further details on the essays and links for ordering the book online can be viewed in the post here.

 Other Developments

Decisions from Indian Courts

Bombay HC grants interim relief to HUL in ‘Glow & Handsome’ trade mark suit [July 6, 2020]

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In Hindustan Unilever Limited v. Emami Limited, a single-judge bench of the Bombay High Court granted an ad-interim injunction in favor of Hindustan Unilever Limited (HUL) with respect to use of the ‘Glow & Handsome’ trade mark. HUL had recently announced the move to rename its skin lightening product ‘Men’s Fair & Lovely’ to ‘Glow & Handsome’ which is the same mark used by Emami for its recently rebranded product ‘Fair & Handsome’. HUL moved to court under Section 142 of the Trade Marks Act seeking an injunction against Emami from issuing groundless threats to the Plaintiff in respect of the use of its trade mark ‘Glow & Handsome’. HUL sought an interim relief that Emami should give written notice to HUL at least 7 days prior to initiating any legal proceedings in any court with respect to the ‘Glow & Handsome’ mark. The plaintiff argued that Emami’s claim of proprietorship over the ‘Glow & Handsome’ mark was false and misconceived and that HUL was the prior adopter and users of the marks. After perusing the evidence presented, the Judge noted that prima facie HUL appeared to be the prior user of the marks and granted the interim relief sought by the plaintiff.

Delhi HC orders status quo on SRL Diagnostic trade mark issue [July 8, 2020]

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In Daiichi Sankyo Company Ltd. v. Malvinder Mohan Singh, a single-judge bench of the Delhi High Court ordered the maintenance of status quo with respect to rights of parties in the ‘SRL’ trade mark issue. The plaintiff stated that the ‘SRL’ trade mark was initially held by RHC Holding, who is a judgment-debtor to the plaintiff. In 2017, RHC Holding which was controlled by the defendant transferred the S’RL’ trademark in favor of M/s Headway Branch Private Ltd, a subsidiary held by the defendant. Taking note of the plaintiff’s execution proceedings in connection with the Rs. 3500 crore arbitration award against the defendant, the judge ordered that M/s Headway Branch Private Ltd. was restrained from creating any third-party rights in the trade mark ‘SRL’ and was directed to maintain status quo.

Delhi HC grants interim injunction in a case concerning application of Section 107A of Patents Act [July 8, 2020]

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In Bayer Intellectual Property GMBH v. Titan Laboratories Pvt. Ltd, a single-judge bench of the Delhi High Court granted an interim injunction in favor of the plaintiff with respect to patent infringement of the drug Rivaroxaban. The plaintiff in this case was the manufacturer of Rivaroxaban and it imported the same to India through an Indian company. The imported drug was sold under the trade mark Xarelto. The plaintiff alleged that the defendant, Titan Laboratories, though had not launched the product Rivaroxaban in India, it did export the same from India under the brand name Mezoser-S. After considering the evidence presented in the case, the judge held that given the export of Rivaroxaban in commercial quantities, the defendant was not exempted under Section 107-A of the Patents Act and use by the defendant while exporting would be considered as use in India, thus infringing the plaintiff’s patent rights. In ordered to prevent this infringement, the judge granted an ad-interim injunction in favor of the plaintiff.

Delhi HC rules in favor of Sandvik in patent infringement case [July 8, 2020]

The Delhi HC ruled in favor of Sandvik, a Swedish engineering company, in a case concerning patent infringement of a technology known as Vertical Shaft Impact crusher (VSI) by an Indian company, HK Engineering Works.

Delhi HC award costs and damages in Dr. Reddy’s trade mark infringement case [July 9, 2020]

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In Dr. Reddy’s Laboratories Ltd v. RLifespan Diagnostics Private Limited, a single-judge bench of the Delhi High Court awarded Rs. 2,00,000 as costs and damages in a trade mark infringement case concerning the ‘Dr. Reddy’s’ mark. The award was granted after the defendant accepted the fact that it had infringed the registered trade mark of the plaintiff by using it to provide services and in its domain name. The defendant stopped the infringing use immediately after receiving notice from the plaintiff. The defendant agreed to cease use and suffer a decree for permanent injunction. The judge granted the monetary award in favor of the plaintiff given that the defendant was taking unfair advantage of the plaintiff’s mark to make unjust monetary gains.

Madhya Pradesh HC grants anticipatory bail in illegal broadcasting case [July 10, 2020]

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In Satyendra Singh Tomar v. The State Of M.P., the Madhya Pradesh High Court granted anticipatory bail in a dispute concerning the plaintiff wherein he was accused of broadcasting Star channel of Star India Ltd. in an illegal manner without having any valid license and without paying the broadcasting fees. The plaintiff argued that he had no criminal past and he had been falsely implicated in the matter and was not the owner of the allegedly infringing entity. He argued that none of the offenses under the Copyright Act were applicable as per the circumstances of the case. The Court observed that per Section 41A of the Criminal Procedure Code, arrest and imprisonment would be necessary in this case only if the applicant does not cooperate with the investigation. With the plaintiff agreeing to abide by the Court’s instructions and cooperate with the investigation, he was granted anticipatory bail.

Other News from around the Country

• IPRS issued new tariff rates for live streaming of online events of musical and literary works. The tariff rates came into force from July 1, 2020.
• CPI(M) called upon the government to invoke Section 92 of the Patents Act to issue a compulsory license to manufacturers to produce the generic version of Remedesivir to treat COVID-19.
• BDSU student was granted an Indian patent for a 3-in-1 COVID safety device that allows contact-less temperature monitoring, capturing attendance, and dispensing hand sanitizer.

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• A Chennai-based company developed and obtained a patent for a device named ‘Etticos COVID-19 Patient Care System’to bridge the communication gap between coronavirus patients and healthcare staff.
• Zoom issued a statement saying that it may take legal action against Reliance JioMeet for copying its video calling app’s User Interface (UI).
• A piece by Nandita Saikia proposes the de-criminalization of copyright law offenses. She highlights the concerns about the criminal provisions and the limitations of the de-criminalization process.

News from around the World

• CJEU ruled that YouTube is not required to hand over the emails or IP addresses of users who upload pirated films that violate intellectual property rights on to the platform.
• The European Patent Office (EPO) published an expanding ‘Fighting coronavirus’ platform designed to help researchers and policy-makers with patent information to battle COVID-19.
• WIPO announced that the Intellectual Property Judges Forum 2020 will be held between November 18-20, 2020.
• Football club Manchester United sued game developers Sega and SI for trademark infringement for illicitly using their name and logo in the video game ‘Football Manager’.

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• USPTO announced the ‘Fast-Track Appeals Pilot Program’ to accept petitions for expedited patent examination and resolution of ex parte patent appeals.
• China recently approved the establishment of 33 IPR centers to reduce the processing time and cost of IPR protection in the country.
• Country music group Lady Antebellum who recently changed their name to Lady A sued a blues singer Anita White, already known as ‘Lady A’ for trademark infringement.
• A piece in The Daily Star discusses the fierce competition between the world’s largest economies to be the first to develop a COVID-19 vaccine and ensure its accessibility to its citizens.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

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We’re pleased to bring to you a guest post by Devangini Rai, analysing a recent Delhi High Court order that refused to grant an interim injunction against the use of the acronym ‘TCV’ in relation to a typhoid vaccine.

Devangini is a 5th Year student at University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University, New Delhi.

Delhi HC Refuses Interim Injunction against Use of Trademark ‘TCV’ for a Typhoid Vaccine: Leaves Acquired Distinctiveness Question Unanswered?

Devangini Rai

The Delhi High Court in Bharat Biotech International Ltd. v. Optival Health Solutions Pvt. Ltd. & Anr. refused to grant an interim injunction against the defendants in a suit for infringement of the trademark TCV. TCV is an acronym for Typhoid Conjugate Vaccine. It is a category of vaccine commonly used for typhoid. The parties contested over the usage of TCV in their product names namely ‘Typbar TCV’ (Bharat Biotech) and ‘Zydus TCV’ (Zydus Cadila).

In the pharmaceutical market, often vaccines are named by combining generic terms and the trade name of the manufacturer, as is reflected by the facts in this case. On a prima facie observation, it becomes clear that the battle between dissimilarity of the rival trademark rests upon the infringement of TCV being used in a trademark sense. TCV had been registered as a trademark by Bharat Biotech in 2018. It also registered ‘Typbar-TCV’ as another trademark in 2016. The plaintiff claimed that they were the first to coin the term TCV as their product was a known vaccine in the market by the formal name of ‘Typhoid Vi Capsular Polysaccharide Tetanus Toxoid Conjugate Vaccine / Typhoid Vi Conjugate Vaccine I.P.’ and thus the acronym TCV. It was also claimed that they were the first on the block to use such a name as they were the inventors of the vaccine and have valid patents to their name. While the validity of the trademark registration of TCV was questioned by the defendants, the plaintiff argued on the basis of the arguendo that a trademark of a descriptive nature can still be valid. The plaintiff essentially argued on the defense that Section 32 of the Trade Marks Act provides in relation to an acquired distinctiveness that a generic trademark can have.

The case relates to the determination of whether an acronym TCV adjudged to be generic in nature can be validly registered as a trademark and could have gained distinctiveness by prior use of it by the plaintiff.

Generic Nature of TCV

The plaintiff consistently contended that TCV was a valid trademark coined by them and had been in usage by them over a long period of time. The law on the generic words as trademarks has been sufficiently established by a number of case laws over the years. Case in point being Cadila Healthcare Limited v. Gujarat Cooperative Milk Marketing Federation Limited & Ors. and Marico Ltd. v. Agro Tech Foods Ltd. Cadila had dealt with the registrability of ‘Sugar Free’ as a trademark to market an artificial sweetener. It was held to be merely a descriptive name for a product which is meant to be without sugar, thus a monopoly cannot be granted in form of a trademark to ‘Sugar Free’. The non- distinctiveness of a descriptive trademark like Sugar Free was attacked on the basis of the fact that an artificial sweetener is used by an elite class of customers who cannot be rationally assumed to confuse the claimant’s product with another. In Marico, an important observation was made which is significantly applicable to the present case. “Once the person, against whom a suit is filed on the ground of infringement of a trademark which is in fact a descriptive word, then, if a defendant is using his own word mark as a trademark prominently in addition to the descriptive word mark which the plaintiff claims to be his trademark, nothing further is required to show the bona fides of the defendant against whom infringement of a registered trademark is alleged”. This is precisely what happens in the present case which absolves the defendant of their alleged malafide intention to use TVC in their product name.

In the present case, McCarthy’s Spectrum of Distinctiveness has been referred to as well, while deciding the nature of TVC as a trademark. In SBL Ltd. v. Himachal Drug Co., McCarthy’s observations regarding abbreviations are cited that “an abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, ‘generic’.” This principle is applicable in the present case as well. The fact that the plaintiffs claimed to have developed a TVC vaccine first of the block cannot save them from validly using it as a trademark as it is a category of vaccines that they attempt to monopolise as a product name. This by no means could have been allowed by the court in light of established case laws.

Validity of an Abandoned Application in Claiming Prior Adoption

The defendants contest the prior use and the originality in coining TCV on two counts namely:

1. TCV although has been registered as a trademark has not been used individually.

2. Sanjeev Thakkar’s application of ‘TCV’ as a trademark was filed in 2009, before the plaintiffs. Thus, it cannot be said that the plaintiffs were the first to coin ‘TCV’.

The pleading by the defendant stating that TCV had been coined before by Sanjeev Thakkar as visible from the Trademark Registry records was relied upon by the court to dismantle the claim of the plaintiff that they had coined TCV first. It was held that due to absence of any denials regarding the contention of Sanjeev Thakkar coining the term TCV first in the plaint, he would be held to have coined the term before the plaintiff. However, the trademark application by Sanjeev Thakkar (Application No. 1832470) stands opposed till date, first being filed in 2009. The question arises as to how far a potentially abandoned application can suffice the argument that the plaintiff did not coin the term TCV originally. A trademark application deemed to be abandoned after a month of inaction by the applicant in response to the examination report. Thus, this exposes the fact that abandonment of application is not seriously dealt by the Registry. Sanjeev Thakkar’s application, when checked, shows it to be opposed by yet another stakeholder company. Therefore, it cannot be said conclusively that Bharat Biotech was not the first company to have coined TCV. This fact however proves that there were third parties prior to the usage of Bharat Biotech’s coinage of TCV and hence it weakens the plaintiff’s case.

Acquired Distinctiveness

While the facts of the case as well as the pleadings by the defendant sufficiently establish that TCV is a generic term, it is the question of acquired distinctiveness that has not been sufficiently dealt with by the court. The judge explicitly says that “I say nothing on that”. The judge remarks this due to the alleged fact that the contention of acquired distinctiveness has not been dealt by the plaintiff in their plaint. This, in my opinion, does not advance either the plaintiff or the defendant’s contentions.  In the landmark case of Lupin v. Johnson and Johnson, it was held that it is open for the court to go into the validity of a trademark registration for the grant of an interim injunction (the single bench’s decision in this case was covered on the blog here). This determination is in fact necessary to arrive at a prima facie finding for grant of an injunction. I contend that along with determining that TCV is generic, a prima facie determination of whether or not the trademark had acquired distinctiveness should have been made by the Judge. The plaintiff had tried to discharge the burden of proof of proving that even if TCV is generic, it has acquired a secondary meaning. It however has been unsuccessful, which should have been recorded as a finding by the Court. The finding of acquired distinctiveness of a generic/descriptive trademark has been made in numerous cases like Aegon Life Insurance Company Limited v. Aviva Life Insurance Company India Ltd,  Marico Limited v. Agro Tech Food Limited and the most recent being Sun Pharma Laboratories v. Intas Pharmaceuticals.

However, if this anomaly is kept aside, the plaintiff still does not stand a firm ground in claiming the validity of the trademark. Although the court does not elaborate on the acquired distinctiveness of TCV, it becomes clear that TCV is patently generic in nature and claiming a trademark will go against the established principles of trademark law. While the court does not rule on the acquired distinctiveness of TCV as a trademark, it does not consider TCV while adjudging the infringement of Typbar TCV by Zydus TCV since TCV “is not a coined word and being common to trade as such, needs to be excluded for comparison…”. It further also holds that the registration of the trademark TCV insofar as Section 9 is concerned would be illegal on a prima facie basis. However, looking at the examination report of the plaintiff’s application of TCV as a trademark, a Section 9 objection had not been raised by the Registry. Rather, a Section 11 objection had been raised which talked of the Sanjeev Thakkar application. In response, all that one can gather is that the plaintiff argued Thakkar’s application was for a different category of goods, namely medicines and pills while being in the same class.

Thus, although the decision by the court ultimately does not contravene the established precincts of the Trade Marks Act, the judgement in itself is distraught with anomalies making it a bit difficult to follow. It is urged that such procedural regularities should be not left ambiguous.

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The Films Division of India (‘Films Division’) holds copyright in a large number of old clips pertaining to cricket, primarily in form of newsreels or short documentaries about some series or events. As per his interview with The Hindu, a cricket fan Mr. Jairaj Galagali ordered these clips, after much bureaucratic hassle, upon making the required payments for the same. He subsequently uploaded these clips on his YouTube channel. In his videos, alongside the clips, he used to provide a social context as well as give a background about the clips and many a time even added his own sound effects and commentary to them. Recently, his YouTube channel was taken down owing to reports of copyright violations pursuant to a complaint by the Films Division, presumably under YouTube’s copyright strikes policy. In this piece, I examine whether the uploading of the clips amounts to fair use, and is thereby protected from this copyright action.

Fair Use?

Since YouTube considers any copyright notice issued through its webform as a US Digital Millennium Copyright Act notice, it would appear that the applicable law for determining fair use would be the US law. Under the US law, fair use is determined based on a four-factor test. The factors that need to be considered are:

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

In the instant case, the purpose of the use was purely informative in nature providing information about cricket in the 60s and 70s alongside context, to bring forth memories of cricket history of that time. The channel operated in a purely non-commercial manner. Moreover, the character of the use was transformative in that it did not solely involve putting up the videos as it is, but instead involved significant additions by Mr. Galagali. The addition of social context, background, and commentary to silent videos, brought greater life to the clips themselves. The nature of the underlying work was primarily factual as against creative as it involved reporting of information about events of its time. Hence, these two factors weigh in favour of a fair use.

Turning to the third limb of the test, while in some rare cases there was slightly substantial copying of the original work, where it was based on a documentary (clips over half an hour in length split in different videos), in majority of the cases, the copying was quantitatively non-substantive where it involved reporting from newsreels (clips ranging between few seconds to two minutes of cricket news). It remains open to argument whether the clips taken from newsreels, where cricket was only one of the several news items discussed, would be qualitatively substantive in nature. This limb can, thus, be considered between neutral to slightly against holding fair use.

With this caveat, I turn to the final limb of the test, that concerning the marketability or value of the work. In the instant case, as Mr. Galagali’s experience suggests, while the clips are up for sale, the process in itself is highly cumbersome and wrought with deficiencies. Even on their website, it is extremely difficult to navigate and place an order for the archived clips. It significantly impacts the market scope of the clips to begin with. The ones that are more easily accessible, as they maintain, are also charged at a “nominal cost” for interested individuals or institutions. This implies that the impact on the revenue or market share would not be substantial. In any case, as it explains on its website, its aim has been to maintain “to maintain a record of the social, political and cultural imaginations and realities of the country on film”. Hence, marketability is not the primary goal for the Films Division but to showcase the realities of the country. This purpose is better served by providing a greater platform for viewership to these clips, such as YouTube, as it itself has done for several of its clips. The target market of those who want to own an individual copy for memory, or large companies who wish to utilise these clips commercially, remains largely unaffected through such uploads. Hence, in an overall assessment, the use by Mr. Galagali constitutes fair use.

Even if this scenario were to play out in the Indian context, as I have explained in a previous post, the only additional consideration would have been whether the use amounts to ‘criticism or review’. This is because as per the decision in India TV Independent News Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd., India applies the same factors as discussed above to determine ‘fair dealing’. The present case is a prime example of satisfaction of this requirement since Mr. Galagali’s immense efforts in bringing to fore the social context, the background information, and weeks of effort involved a novel re-telling of the stories of the past. The focus here was not on the clips themselves but more on the value that they held and the significance that they represented in their time. They were an examination of some of the cherished moments of Indian cricketing history, bringing joy to the fans. Hence, the video would have been protected even upon the narrower Indian standard of fair use.

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Government’s Googly on Cricket: An Example of Inefficiency?

As per the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007, the government makes it mandatory for those holding rights to broadcast ‘sporting events of national importance’ to share the signals for the same with Prasar Bharati which can simultaneously telecast the same on a free-to-air basis. Outside this Act, it has in the past reached an agreement with broadcasters to show even the IPL on its free dish with some delay. The aim appears to be to disseminate greater access to the country to important sporting events even when it does not specifically hold the copyright to do so. Hence, in the instant case, this insistence of the Films Division in claiming its copyright goes against the general stance of the government with respect to sporting events.

In an interview with Hindustan Times, the then distribution and marketing head of Films Division, Mr. Ajay Kumar, on the question of online availability stated that “[i]t’s too much content to put online” and that efforts were underway to make these clips available on a pay-to-view and pay-to-download basis. In the same interview, Mr. Shivendra Singh, a filmmaker and film restorer, weighed in favour of the stance of commercialisation adopted by the Films Division and stated “[i]f everything goes up on YouTube, where will the money for preservation of our films come from?”.

The above opinion, however, appears to be ill-founded. This can be seen from the negligible focus given by the government towards preservation of film archives. Thousands of celluloid negatives of films with the Films Division are stored in the open without adequate environmental control. Furthermore, in an inquiry of the National Film Archives of India in Pune, responsible for preserving and archiving films, it was found that the system was in ‘total disarray’. It noted that the digitisation process was being conducted in a ‘haphazard’ manner and payments to the tune of Rs. 40 crore had been made without necessary checks. This indicates a rather callous approach adopted by the government in its preservation and digitisation projects.

A better approach to achieving the goal of ‘preservation of our films’ and to overcome the difficulty of putting up ‘too much content’ online, would be to collaborate with public-spirited individuals such as Mr. Galagali. Instead of curbing their efforts, the Government should instead be promoting them if its real aim is to preserve the history stored in these clips. Moreover, it can monetise the videos through Youtube to supplement its preservation efforts. Such an approach would be a win-win solution for both the Government and the consumers who cherish the moments that these clips capture, such as the Pataudi family which thanked Mr. Galagali for one of his clips. After all, the real aim behind these preservation efforts should be remembrance for those for whom these clips hold value, and informative for those who don’t know about them, instead of storing them within the confines of a government archive behind an inaccessible paywall.

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We’re pleased to bring to you a guest post by Durgesh Mukharya and Meenakshi Chotia, examining the Patent Office’s practice of allowing amendments in claims of a patent application. Durgesh is a Partner and Meenakshi is a Senior Associate at the Bangalore office of the IP law firm, K&S Partners. They have backgrounds in biotechnology and biochemistry, and are part of the Life Sciences – Patents team of the firm. They both are registered Patent Agents and their work primarily revolves around patent drafting, prosecution and advisory work, including on issues discussed in this post. The views expressed in this post are personal.

The Challenging Pursuit of Patent Claim Amendments in India

Durgesh Mukharya & Meenakshi Chotia 

Amendments to patent applications are a regular feature of patent prosecution worldwide. From requiring the title to conform with claims in India, to conforming the whole description in Europe, different jurisdictions have their own requirements. However, since claims determine the value of a patent, it is important that claim amendments are treated with caution. It is essential to ensure that the language of claims which get granted, is in sync with the business objective of a patentee. This post reviews the practice of allowing amendments in claims of a patent application by the Indian Patent Office (IPO) and looks at some of the gaps that may need to be filled.

Need for Amendments Post Filing of Patent Applications

To begin with, let us first look at some of the reasons that may necessitate an amendment in claims:

• Addressing objections in view of prior art;
• Obtaining protection commensurate with commercial interest of the applicant, which may have evolved post filing of the application;
• Maintaining uniform stand across jurisdictions. Countries, like the US and Europe, allow claim amendments (including addition of new independent and dependent claims) as long as they are supported by the as-filed specification (not restricted to as-filed claims). Applicants often desire making similar amendments in India;
• Meeting requirements under Sections 3 or 2(1)(j) of the Indian Patents Act, 1970 ( ‘the Act’). The IPO mandates reliance on the published version of the PCT application. Hence, applicants cannot file a National Phase (NP) application with claims already amended in conformity with Indian patent laws. This warrants amendment of the claims post filing the application, based on the as-filed specification;
• Remedying an error/oversight that resulted in an inadvertent omission of a critical claim or feature from a claim set, despite its presence in the specification.

Thus, the provisions in patent laws which provide for claim amendments, play a critical role in maintaining the patent ecosystem. In India, Section 57, read with Section 59(1) of the Act governs amendment of claims. In practice, the latter is of essence to determine the nature of amendments that can be carried out in India.

Section 59(1) and its Intent

Section 59(1) of the Act reads as follows:

“No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

From a plain reading of the section, the following kinds of amendments seem to be permitted for incorporation of an ‘actual fact’:

• Disclaimer;
• Correction; or
• Explanation,

provided that the amendment is supported by either the original specification or the original claim, and not necessarily both. This intention of the legislature appears to be clear from the insertion of the word ‘OR’ that bifurcates the second half of the provision to present a dichotomy.

Skewed Interpretation by the IPO

Unfortunately, the IPO often appears to employ a restrictive interpretation of this section, thereby limiting the kind of amendment an applicant can carry out. This is further elaborated below:

a) While the IPO accepts deletion of claims, addition of a new claim, though supported by the original specification, is usually impermissible on the ground that the language of the section does not permit an ‘addition’.

This is illogical as the language of the section does not explicitly permit a deletion as well. Rather, such an addition could be viewed as a provision to ‘correct’ the scope of the claims and incorporate an actual fact, which was missed out from the original claim set.    

In one instance, to ensure that embodiments fully describing a pharmaceutical product are explicitly stated in claims, and to add clarity, an applicant wanted to introduce dependent claims for an independent claim directed to a composition. While this is a universal approach to ensure that the granted claims accurately reflect the commercialised product, the IPO declined this request.

In another instance, to address an objection by the IPO on the term ‘preferably’ in as-filed claims, an applicant’s request to delete the preferred embodiments from the claims and include them in new dependent claims was declined.

In a third case, an applicant missed including claims regarding a method of manufacturing a novel compound, despite detailed description of the same in examples and embodiments. A request to add the same was rejected.

The importance of allowing such amendments is further highlighted by situations where the original claims are impermissible under Section 3 of the Act. For example, an applicant of a NP application, having only method of treatment claims, wanted to amend the claim set to include a product claim of a novel and inventive kit which was missed out in the as-filed claims. Though supported by the as-filed specification, the IPO disallowed the amendment, forcing the applicant to abandon the application. It is unimaginable if this were to happen to inventions related to kits for pandemics such as Covid-19, which has highlighted the significance of innovation in the current times.

b) Even though the section does not bar an amendment to the preamble of a claim, as long as it is supported by the as-filed specification, the IPO often rejects this on ground that it alters the scope of the as-filed claims. As applicants must abide by sections such as 3 and 2(1)(j) of the Act, an incomplete interpretation of Section 59(1) leaves them with limited options, or worse, forces them to abandon the application despite patentable merit in the invention disclosed therein.

For instance, a NP application had an independent claim only on ‘Use of a composition in an industrial method…’. While most foreign jurisdictions allow use claims (or allow amendments to conform them with their local laws), use claims are not patentable in India under Section 2(1)(j) of the Act. Had the preamble of the claim been – ‘A process of conducting the industrial method by employing the said composition…’, rather than as originally worded, the claim would likely surpass Section 2(1)(j). The scope and crux of invention in either format of claims remains essentially the same.

Similarly, amendment in the claim of a NP application from a typical swiss type claim, ‘Use of a specific modified component for preparing a medicinal product…’ to, ‘A process of preparing a medicinal product containing a specific modified component’, was desired by an applicant for similar reasons.

However, the IPO did not allow the amendments in both these cases, despite appropriate support in the specification.

c) Though amendments to include disclaimers (whether positive or negative) squarely fall within the purview of Section 59(1), the IPO is often hesitant to allow negative disclaimers.

It is possible that some of these interpretations of Section 59(1) by the IPO is based on subjective reading of some past judicial precedents (see here, here, here, here and here). Further, dearth of interpretation of the nuances of this section from the Intellectual Property Appellate Board (IPAB) and courts also impedes the understanding of permissible amendments.

The Way Forward

Section 59(1) is the most important provision which provides applicants an opportunity to correct the scope of the claims or to explain an existing claim better. The sanctity and the intent with which this section was incorporated into the Act must be preserved and the extent to which it allows for amendments in claims and/or specification must be carefully contemplated.

Consequently, the IPO can issue detailed guidelines for amendments under Section 59(1), as differences in understanding the permissibility of amendments under the section are leading to inconsistent outcomes and commercially unviable options for the applicant. For a uniform approach, the IPO may also consider regular training of examiners on accurate interpretation of the section along with best international practices in this area.

Moreover, the current patent laws already include provisions that restrict patentable subject matter in India. Applicants also have limited options in pursuing intended claim amendments by way of a Divisional Application, which has prerequisites of its own. Thus, providing clarity and leveraging on possible amendments under Section 59(1) will only encourage applicants to file more patent applications in India, and benefit the patent ecosystem of the country.

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We’re pleased to bring to you another guest post by our fellowship applicant Adyasha Samal, discussing the problems with the approach of protecting traditional cultural expressions (TCEs) under existing IP regimes, using hairstyles as an example of a widely appropriated TCE.

Adyasha is a 4th year student at Hidayatullah National Law University, Raipur. This is her second submission for the Fellowship. Her previous guest post can be viewed here.

Cornrows and Cultural Appropriation: What is the Best Way to Protect Black Hairstyles?

Adyasha Samal

In the past few decades, cultural appropriation has gained a lot of public attention. With incidents such as swimsuits featuring Goddess Lakshmi, a Native American-styled headdress worn by a Victoria’s secret model, and Louis Vuitton producing Basotho design blankets, the call for protection of Traditional Cultural Expressions (‘TCEs’) has grown stronger. According to the WIPO, TCEs mean productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community or by individuals reflecting the traditional artistic expectations of such a community. They capture a community’s history, cultural and social identity, and values. In practice, TCE is an umbrella term that includes art, music, designs, performances, signs and symbols, legends, names and narratives. While attempts have been made to protect some TCEs under existing IP regimes, since TCEs are inherently different from forms of IP, relying solely on such an approach leads to a ‘square peg in a round hole,’ problem. This post discusses this problem in detail, focusing on hairstyles as an example of a widely appropriated TCE.

The socio-cultural context: Are hairstyles as TCEs, deserving of protection?

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Hairstyles such as cornrows and dreadlocks hold cultural significance and sentimental value for people of African descent (‘Black hairstyles’). In the recent past, they have been appropriated by multiple celebrities like Justin Bieber, Zac Effron and Katy Perry. Some people argue that in a diverse country (here, the US) which is a melting pot of several cultures, emulation is merely admiration and the proximity of peoples leads to natural cultural exchanges. Yet, in a world that has recently realized how deep its racist roots run, the imitation of styles of a historically disadvantaged community cannot be dismissed as a fashion trend resulting from cultural exchange. While exploitation in any situation is wrong, appropriation in this complex socio-political backdrop raises additional concerns regarding cultural rights of the minority group.

Historically, the hairstyles of African individuals reflected their tribe, religion, village and other aspects of their identity. Historian Kobena Mercer has explained how these hairstyles were carefully cultivated, deliberately knotted and tied in elaborate rituals and were meant to facilitate individual self-expression. With the arrival of colonialists and subsequent slave trade, slave-owners forced them to cut-off their hair in an attempt to ‘civilise’ them, thus stripping them of their identity. These Eurocentric notions of beauty which favoured softer, straighter hair took root and prompted them to shed their ethnic styles. In modern times, Black individuals wear their traditional hairstyles to embrace their culture and as an ode to their sufferings through years of colonial rule, slavery and racism (see Black is Beautiful movement).

The callous imitation of these styles constitutes the harmful act of cultural appropriation. This refers to the adoption of expressions from another culture and presenting them as one’s own without attribution, permission, in a manner that is disrespectful towards the expression’s significance to the culture, or worse, monetization of the same. As explained by Prof. Scafidi, this is more harmful when the source community is a minority group that has been oppressed or exploited.

The popular acceptance of emulation and exploitation of these styles without regard for their cultural backdrop when juxtaposed with the continued stigma against black people wearing it themselves (see here and here) proves there is a compelling need for TCE protection.

Why existing IP frameworks fail to protect these cultural expressions?

Conventional IP regimes are incompatible with TCEs. The preconditions for IP protection prescribed by them, i.e., fixation (copyright), description (patent), and graphical representation (trademark) among others, present rigid moulds which cannot be reconciled with TCEs that include tangible and intangible elements, preserved through experience and passed on orally, across generations. In fact, the very purpose of the IP system is wider dissemination of knowledge and encouraging innovation, which is at odds with many TCEs that are held as sacred or secret by communities. These TCEs are worthy of protection from external appropriation in an effective way.

Presently, in most jurisdictions, TCEs remain unprotected, unless specific types are registered as IPs. For long, efforts have focused on extension of existing IP regimes to embrace TCEs and prevent their misappropriation. For instance, in the US, Navajo Nation sued Urban Outfitters under trademark law for using their traditional patterns on an underwear line. In Australia, aboriginal artists used copyright law to prevent importation of carpets reproducing aboriginal designs without permission. While this is likely to be successful in case of TCEs based on art and music, they do not cover the vast majority of TCEs – including hairstyles.

In a controversy closer home, French luxury brand Christian Dior copied hand block print designs made by traditional Indian artists of the People Tree collective. While a clear case of plagiarism could be made out, these designs may not qualify for protection under any of the relevant IP regimes, as explained in this post. This dispute between Christian Dior and People Tree was ultimately settled out of court.

One major drawback with traditional IP systems is its focus on the creator. The requirement for identifiable, individual author(s), proprietor(s) and/or inventor(s) is incompatible with TCEs as they are not created by one person, but developed over generations through communal effort and experience. Thus, they are collectively owned by the whole community. Hairstyles, for instance, involve multiple factors – the traditional expectations they are based on, the artistic effort of the person styling the hair, and the choices of the individual wearing the style.

Limitations like the above, imposed through the requirements of IP (as further outlined by Prof. Farley here) not only alienate TCEs in their original form, but also allow for IP protection of misappropriated reproductions of TCEs which fit the predefined mould. Disney’s trademarking of the Swahili phrase ‘Hakuna matata,’ is an example of such misappropriation. This has been discussed in this wonderful post by Prarthana Patnaik.

Lastly, most IP regimes provide rights that are limited in duration and are expected to expire after they have run their predetermined course. This is incompatible with a large number of TCEs as they evolve over generations, sometimes dating back millennia, and remain valuable to the communities so long as they exist.

A Possible Solution

A more appropriate means for the protection of TCEs would be the creation of sui generis systems that modify principles of present IP frameworks and combine them with principles intrinsic to the nature of TCEs to suit the latter’s particular requirements. For the past few years, WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore has been debating an emerging tiered or differentiated approach, which groups TCEs into 4 broad types on the basis of the availability in public – secret, sacred, narrowly diffused and widely diffused. It suggests a different level of protection for each type, wherein the former two categories would enjoy exclusive economic rights, and the latter two would be vested with only moral rights.

This tiered approach has not been finalized yet. It suffers from controversies because it awards reduced rights in the diffused categories of TCEs, overlooking the possibility that this diffusion might have occurred illegitimately through piracy or widespread misappropriation. This has been further examined here. Nevertheless, it provides a strong starting point, while departing from a ‘one-size-fits-all’ approach that presently accommodates different kinds of TCEs. Other than a tiered approach, any system for TCE protection should be so designed as to allow the communities to decide how they wish to enjoy them – i.e. whether they would like to use them commercially or non-commercially. It should also account for features intrinsic to the nature of TCEs, such as:

• Recognition of collective authorship and communal ownership without requiring fixation or designation of a sole inventor(s) or author(s).
• Communities to be entitled to the right to use, sanction usage of and exclude access to their TCEs, wherein any outsider may only use the TCEs with prior and informed consent of the communities.
• Rights of attribution and integrity should rest with the community. In their use of a TCE, third parties must attribute the community and must not use it in ways that are derogatory or prejudicial to the community.
• Establishment of mechanisms for negotiation between communities and outsiders for determining terms of use.
• Ensuring that the communities derive fair and equitable benefits from the use of their TCEs.
• Protection should be coterminous with the lifespan of the community (see Prof. Scafidi’s suggestions on page 840).
• The communities’ customs and practices should be respected while determining the manner of use of TCEs.
• Creation of databases for documentation of TCEs, with restricted outsider access to sacred and/or secret TCEs.
• Along with documentation, a system of marking or ‘tagging’ expressions as recognized TCEs could be devised (similar to the functions of a GI tag), followed by educational campaigns to generate public awareness on the significance of these TCEs.
• Engagement with the communities to facilitate inclusive decision making.

In a system based on these principles, black hairstyles would fall in one of the diffused categories. Imitators would be required to attribute the styles to black heritage, and refrain from using it in a manner derogatory to the community.  On the other hand, the commercialization of People tree’s hand block prints, which are unique to artisans from Rajasthan’s Kaladera district, would be facilitated. The artisans would be able to negotiate the terms of use and derive fair remuneration. Documentation and awareness would ensure that misappropriation of their designs do not go unnoticed.

Sui generis systems built on these principles would ensure that TCEs are protected and their source communities are empowered to utilize them. It may take a long time to create a TRIPs-like international framework laying down minimum standards for protection of TCEs. As a country of diverse cultures with several vulnerable groups susceptible to misappropriation, it is imperative for India to adopt an inclusive TCE policy for economic as well as social development.

Many thanks to Sreyoshi Guha for her valuable suggestions that helped shape this post!

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In an interesting and important order and judgement delivered by Justice Gautam Patel, the Bombay High Court has shed some clarity on the nature of reliefs applicable in domain name cybersquatting disputes – disputes relating to the wrongful or fraudulent use of trademarks as domain names.

The order dated June 12, in Hindustan Unilever v. Endurance Domain and Ors. is available here. In brief, the court held that domain name registrars can not be expected to ‘block access’ to a domain name, and can only be asked to temporarily suspend specific domain names. The judgement helps clarify the role and liability of domain name registrars in online trademark disputes.

Case Background

Hindustan Unilever filed a suit against various domain name registrars, the National Internet Exchange of India (NIXI) as well as unknown defendants for an apparently open and shut case of cybersquatting, using HUL’s trademark in domain names for fraudulent businesses.

HUL prayed for injunctions against each of the defendants in the following terms:

“That pending the final hearing and disposal of the Suit, this Hon’ble Court be pleased to direct the Defendant(s) forthwith to suspend and ensure the continued suspension of and block access to (…) Fraudulent Domain Name(s).”

While the finding of cybersquatting and fraudulent behavior was uncontroversial, the judgement hinged on the grant of the prayers on the above terms.

Intermediary Responsibility Meets “Eternal Vigilance”

At the outset, the court rejected the prayers for injunctions against NIXI and the IN Registry, noting that these entities have no control, nor responsibility, over the registration or functioning of specific domain names. NIXI, which administers the INRegistry, merely administers the functioning of other domain name registrars in India, particularly those responsible for registering website domain names under the ‘.in’ Top Level Domain (domains ending with ‘.in’).

The second issue was whether the prayers against the impugned domain name registrars (Endurance, GoDaddy and Porkbun) to “ensure the continued suspension” and to “block access to” the domain names could be granted. After a helpful explanation of the functioning of the domain name system, the court comes to two conclusions:

First, the court states that the domain name registrars are not responsible for ensuring access to any online resource. The blocking of any website, therefore, is possible only through an order for blocking information issued by the Government or by a court, to an ISP. As an aside, Justice Patel also appears to conclude that blocking orders are ineffective remedies given the ease with which they can be circumvented. In any event, the Court concludes that the prayer for blocking access cannot be granted against the registrars.

Secondly, and most importantly, the court held that the function of the registrars is to respond to specific disputes, relating to particular instances of cybersquatting. Domain name registrars can only suspend the registration of specific domain names found to be infringing or otherwise illegal. Domain name registrars cannot be expected to permanently block access to domain names without a specific finding that there is infringement or fraudulent behavior.

The court came to this conclusion on the basis that the process of domain name registration is automated and registrars do not currently maintain forms of “block lists” and do not have the responsibility to continuously monitor domain name registrations for potential infringement. The primary rationale for denying such an injunction was the apparent technical inability of registrars to conduct such monitoring and automatic suspension of domain names containing specific trademarks.

The court also denied the plaintiff’s prayer that the court devise a ‘suitable mechanism’ to prevent the plaintiff from repeatedly coming to court in cases of cybersquatting. The court held that it is not for the court to ease the burden of litigants involved in such disputes, and in the process also compromise the court’s own oversight of such disputes. The below paragraph is particularly informative of Justice Patel’s position:

“Eternal vigilance is not just the price of liberty; it is also the cost of doing large-volume business. I do not think it is for any court to come up with mechanisms to protect the Plaintiff’s interest at low or no cost, or by turning a plaintiff into judge, jury and executioner, let alone sub-contracting out what I believe to be a serious judicial function of assessing and balancing rival merits. What should or should not be suspended (or blocked) is for a government to decide, not some litigant. There are no shortcuts.”

The Bombay HC’s analysis of the issues is refreshing and important, for a number of reasons:

First, the Court goes into the role of specific intermediaries involved in such disputes and examines their responsibilities from the lens of their technical abilities and their role in enabling the communication. Courts have previously implicated various technical intermediaries for enforcing orders, including domain name registrars, without deliberating on the legal responsibilities or abilities of these intermediaries to enforce certain orders.

Second, the court recognises the role of judicial scrutiny in disputes relating to website blocking. Unlike the Delhi High Court, which has taken to routinely granting ‘dynamic injunctions’ encompassing wide-scale web-blocking without adequate judicial scrutiny, this order recognises that such orders for blocking should not be left to the plaintiff alone, or for the defendant to deliberate upon its legality – they must be issued after appropriate judicial review.

Topical Highlight

Bombay HC Clarifies Nature of Reliefs Applicable in Cybersquatting Disputes

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Divij wrote a post about a refreshing order and judgment delivered by the Bombay High Court recently in the case of Hindustan Unilever v. Endurance Domain and Ors. The Court held that the finding of cybersquatting and fraudulent behaviour was uncontroversial but HUL’s prayer to direct domain name registrars “to suspend and ensure the continued suspension of and block access to (…) Fraudulent Domain Name(s)” could not be granted. This conclusion was based on the legal responsibilities of specific intermediaries and their technical abilities to enforce such orders. These entities have neither the responsibility nor control over registration or functioning of specific domain names. Thus, domain name registrars can only be asked to temporarily suspend specific domain names instead of being expected to ‘block access’ to a domain name. Importantly, Divij notes that this is a welcome departure from Courts’ implication of technical intermediaries such as domain name registrars previously and the Delhi High Court’s grant of dynamic injunctions in web-blocking cases without recognising the role played by adequate judicial scrutiny in these disputes. In this case, the Court held that the legality of access through monitoring and automatic suspension of domain names containing specific trademarks had to be determined by courts and could not be left to the plaintiffs or defendants. The Court also refused to come up with a ‘suitable mechanism’ to ease the burden of the plaintiffs, as prayed and noted that eternal vigilance constituted, “the cost of doing large-volume business.”

Thematic Highlight

Cornrows and Cultural Appropriation: What is the Best Way to Protect Black Hairstyles?

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In a guest post, our fellowship applicant Adyasha Samal argues for an inclusive Traditional Cultural Expressions (TCE) protection policy and discusses the appropriation of hairstyles that hold cultural significance for people of African descent (black hairstyles). She argues that conventional IP regimes overlook TCE protection because of their requirements of fixation (copyright), description (patent), and graphical representation (trademark), necessitating the need for a sui generis system of protection. The WIPO has been debating the merits of a differentiated system for TCE protection based on their availability in the public, ranging from secret, sacred, narrowly diffused to widely diffused. Adyasha argues that black hairstyles would constitute diffused TCE in such a system. Thus, imitators of these hairstyles should be obligated to acknowledge the black heritage of these styles and be prohibited from using them in a manner derogatory to the community. She also highlights that a TCE protection system should recognise communal instead of individual authorship, allow for generational evolution instead of fixation, vest the rights to attribution and integrity with the communities, establish negotiation mechanisms between communities and outsiders, ensure fair and equitable benefits to communities and facilitate better protection of TCEs via documentation and awareness to preclude misappropriation from going unnoticed.

Other Posts

Delhi HC Refuses Interim Injunction against Use of Acronym ‘TCV’ for a Typhoid Vaccine: Leaves Acquired Distinctiveness Question Unanswered?

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In another guest post, Devangini Rai analyses a recent Delhi High Court order, refusing the grant of an interim injunction against the use of the acronym ‘TCV’ in relation to a typhoid vaccine. She argues that the facts and pleadings of the case adequately demonstrate the generic nature of the term TCV but do not sufficiently deal with the question of acquired distinctiveness, based on the fact that it was not argued by the plaintiffs in their plaint. She notes precedent that has held that it is open for the Court to examine the validity of trademark registration while determining the grant of an injunction. She argues that this determination is necessary to conclude that a prima facie injunction should be granted. The defendants had contended that TCV, though registered, had not been used individually and that there existed an application (later abandoned) for trademarking TCV prior to that of plaintiffs’ application, thereby invalidating claims of first use. Devangini argues that this case also illustrates that abandonment of applications is not dealt with properly by the Trademark registry. She notes that this case throws up an interesting question: to what extent can a potentially abandoned application suffice as proof that the plaintiff did not coin the term TCV originally? She also goes on to note other anomalies in the judgment that make it difficult to follow.

Copyright ‘Strikes’ Cricket: Films Division’s Tryst with Old Cricket Clips

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Nikhil wrote a post arguing that the uploads of videos containing cricket clips purchased from the Films Division of India with significant additions by a cricket fan, Mr. Jairaj Galagali, constituted fair use under both US and Indian copyright law. Recently, the Films Division of India complained against Mr. Galagali’s uploads, which led to YouTube taking down his videos, presumably under its copyright strikes policy. Nikhil notes that US law applies to this case since YouTube considers any copyright notice issued through its webform as a US Digital Millennium Copyright Act notice. Based on the four-factor test under US law for determining fair use, he argues that the purpose of the use in this case was fair, being informative in nature and constituted transformative use since it involved significant addition of context, background and commentary to silent videos. Further, the underlying works were products of factual reporting of the events in time instead of creative works. The uploads also do not affect the target market of those who want to own the clips for memory sake individually or big companies seeking to commercially exploit the clips. Hence, he notes that even if there is slightly substantial copying in some instances, on an overall assessment, the uploads constituted fair use. Noting the relevance of this to the Indian copyright landscape, he argues that the Films Division’s complaint in this case is at loggerheads with the general stance of the Indian government to promote greater access to recordings of important sporting events and their history for the public. He concludes that collaboration with public-spirited individuals such as Mr. Galagali is aligned with the objective of preserving the history stored in these films as opposed to confining them in a poorly maintained government archive behind an inaccessible paywall.

The Challenging Pursuit of Patent Claim Amendments in India

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We also had a guest post by Durgesh Mukharya and Meenakshi Chotia, wherein they examine the Indian Patent Office’s (IPO) restrictive interpretation of Section 59(1) of the Indian Patents Act, determining the nature of permissible amendments to a patent application. They argue that the IPO tends to ignore the disjunctive requirement of the section to permit amendments for incorporating ‘actual facts’ if supported by either the original specification OR the original claim. They highlight skewed interpretations by the IPO in a few cases and note that these interpretations could arguably be based on a subjective reading of judicial precedent. They also lament the lack of nuanced interpretation of this section by the Intellectual Property Appellate Board (IPAB) to provide further clarity regarding the scope of possible amendments. Finally, they conclude that given the restrictions on patentable subject matter in India and the limited options for pursuing intended claim amendments by way of a Divisional Application, it is particularly imperative for the IPO to provide more clarity on Section 59(1) to allow applicants the ability to leverage possible amendments and file more patent applications. They note that this will benefit the innovation and the patent ecosystem in the country.

Decisions from Indian Courts

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Delhi High Court passes ex parte ad-interim injunction against defendants restraining them from using INDIAMART for their services [July 14, 2020]

In Indiamart Intermesh Ltd. v. Mr. Akash Verma & Ors, the Delhi High Court held that the defendant’s use of the mark INDIAMART involved not only cheating the plaintiff but also innocent customers, who were deceived into believing that the defendant’s services were that of the plaintiff.  Thus, it passed an ex parte ad-interim injunction in favour of the plaintiff. Plaintiff runs a business that provides an internet-based marketplace with free and paid listings of various products and services. It adopted the mark “INDIAMART” as far back as 1996 and registered it, along with the domain name indiamart.com.  In this case, the plaintiff had sought a permanent injunction against the defendant restraining him from violating his rights in his mark, “INDIAMART.

Delhi High Court grants permanent injunction restraining M/s M.R. Enterprises from carrying their business under the name ‘EMMAAR India Enterprises’ [July 15, 2020]

In the case of Emaar Properties PJSC v. Emaar India Enterprises, the Delhi High Court noted that the defendant whose name was changed to M.R. Enterprises had admitted that it was initially carrying its business in the name of EMMAAR India Enterprises, which was deceptively similar to the plaintiff’s mark. The plaintiff in its prayer had agreed to give up claims to damages, delivery up etc. if a permanent injunction was passed against the defendant. Accordingly, the High Court ordered that the defendant be permanently injuncted from violating the plaintiff’s registered trademark ‘EMAAR’.

Delhi High Court allows interlocutory application by Fmc Corporation to amend its plaint in suit against Natco Pharma [July 15, 2020]

In Fmc Corporation & Anr. v. Natco Pharma Ltd., the plaintiff alleged infringement of its registered patent (IN 201307) for a molecule known by the generic name ‘Chlorantraniliprole’ (CTPR) and another patent (IN 213332) for “A Process for Preparing a Compound of Formula 1” which covered the process of making CTPR. In this order, Fmc Corporation was successful in its interlocutory applications to amend its plaint and Statement of Truth while the Court dismissed the defendant’s objections in this regard based on the principle that rules of procedure could not trump the substantive rights of the parties. The defendants also failed to show how such an amendment would cause any irreparable prejudice to them.

Delhi District Court grants permanent injunction against the defendants for their use of plaintiff’s mark “Bachpan … a Play School” [July 15, 2020]

In the case of M/S. S. K. Education v. Bachpan, the plaintiff Company had been using its brand name of “BACHPAN” and “BACHPAN ….a Play School” for its playschools since 2002. It had widely advertised its services under this brand name and built up goodwill and repute. It came to know in 2017 that the defendants were also running a play school under the mark “Bachpan” and using the names “Bachpan … a Play School” and “Bachpan Sec­ playgroup” for their services. The Delhi District Court, after hearing both sides passed a decree of permanent injunction in favour of the plaintiff company, restraining the defendants from using the impugned mark or any mark deceptively similar to it. It also directed the defendants for delivery of all merchandise bearing the impugned mark and for payment of damages of INR 3 lakhs to the plaintiff for infringement and passing off.

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Bombay High Court dismisses Emami’s appeal against the ad-interim relief granted to HUL in a trademark case [July 16, 2020]

In the case of Emami Ltd. v. Hindustan Unilever Ltd. (HUL), Emami challenged the ex-parte ad-interim relief granted to HUL via an order dated July 6, requiring Emami to give HUL prior written notice seven days in advance of initiating any legal proceedings over the Trademark for Glow & Handsome. Dismissing the appeal, the Division Bench noted the interim nature of the impugned order and the liberty granted to Emami to apply for its variation with 48 hours prior notice to HUL’s advocate. The dispute concerns HUL’s recent announcement to rebrand its skin lightening products Fair & Lovely (for women) and Men’s Fair & Lovely (for men) to Glow & Lovely and Glow & Handsome, respectively. This is being disputed by Emami which recently rebranded its own skin-lightening product, Fair and Handsome to Glow & Handsome.

Delhi District Court restrains Khalifa Industries from using the mark JOYO for being deceptively similar to OYO [July 16, 2020]

In Oravel Stays Pvt. Ltd. v. Khalifa Industries Pvt. Ltd., the Delhi District Court ruled in favour of the petitioners and restrained the defendants from using the mark JOYO in a permanent injunction suit filed by Oravel Stays. Oravel proved that it was using the trademark “OYO” since March 2012 in relation to its hotel/temporary accommodation services all over and beyond the country and had gained significant repute. The Court held that the defendant’s use of the mark JOYO/JOYO ROOMS for similar services was a fraudulent imitation and even the contents from the plaintiff’s website were passed off by the defendants. The Court was satisfied that the plaintiff proved its case and restrained the defendants from marking, advertising and selling/providing any goods or services either by itself and/or through any third party using the mark JOYO/ JOYO ROOMs.

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Madras High Court restrains Patanjali Ayurved Ltd. from using the trademark ‘Coronil’ till July 30 [July 17, 2020]

The Madras High Court’s recent order restraining yoga guru Ramdev’s Patanjali Ayurved from using the trademark “Coronil”, which the Company claimed cures Corona, was based on a plea by Arudra Engineering Pvt. Ltd. asserting that they had owned the mark ‘Coronil’ since 1993. Justice CV Karthikeyan noted that the restraint order would be valid till July 30. The AYUSH Ministry had initially barred Patanjali from promoting these products but directed on July 1 that the Company could sell these, however, only as a medicine for “management” of coronavirus and not its cure, as claimed. [Edit: A copy of the order made available by Bar and Bench can be viewed here.]

Bombay High Court grants interim relief to Capital Foods in a trademark dispute over Schezwan Chutney

Recently, Capital Foods was granted interim relief by the Bombay High Court in a legal skirmish involving General Atlantic backed-Capital Foods and a local Maharashtra based foods manufacturer, Damai International, selling a similar spicy dip under the name of ‘Schezwan Chutney’, which is Capital Food’s brand name. The temporary relief restrains Damai from manufacturing, marketing, distributing, packaging, selling its goods under the impugned mark. Capital foods had filed an ex-parte case of infringement of its trademark and for passing off against Damai on 20 June, and obtained an order in its favour on 23 June. As per the directions of the Bombay High Court, a raid against Damai was carried out by a court receiver on 10 July where several packages of the product were seized.

Other News from around the Country

• As cases of Covid-19 rise in the country, Indian Government struggles to curb black marketing of Remdesivir, the medicinal drug used to treat it.
• Glenmark reduces the price of Covid-19 drug FabiFlu to Rs 75/tablet. The drug had received approval by the Drugs Controller General of India for Covid-19 treatment under emergency use authorisation. Thus, there is limited data available on the medicine’s performance and doctors prescribing it must obtain the written consent of patient.

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• Patent Office grants patent to two siblings at the PGIMER for developing an innovative TB detection This technique causes considerable enhancement in diagnostic sensitivity in sites like the brain, joints, eyes etc.
• An Ahmedabad police station registers copyright violation cases against shopkeepers for allegedly selling illegal copies of Disney and Marvel toys.
• 12 Finalists announced in the 5th “Qualcomm Design in India Challenge” 2020, aimed at commercializing technological innovations in India.
• An Indian Express piece by Anju Chaba argues that Madhya Pradesh’s push to seek a GI tag for Basmati rice can hurt Indian farmers and commerce.
• In a piece for the Scroll, Anjula Gurtoo and Rahul Patil explore the possibility of an affordable Covid-19 vaccine which also balances the rights of investors and inventors.

News from around the World

• Twitter removes a campaign video in Trump’s retweet based on Linkin Park’s copyright complaint.
• CJEU issues a press release citing Advocate General Saugmandsgaard’s opinion in joined cases involving online platform operators. As per him, according to EU law currently, operators such as YouTube and Uploaded, are not directly liable for illegal uploads of copyrighted works by users onto their platforms.

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• European Parliament votes to support WHO’s endeavours to create a Covid-10 Access Pool Tap (C-TAP) containing patent rights, regulatory test data etc.
• In a piece in Daily Maverick, Sanya Samtani argues that the South African Parliament can align copyright law with the Bill of Rights in the South African Constitution by Implementing the Copyright Amendment Bill.
• I-MAK releases a report which reveals that Imbruvica’s patent wall lengthens its monopoly term by 9+ years. Imbruvica is currently AbbVie’s second-best selling product.
• South Centre publishes a research paper arguing that the USTR Special 301 list ignores the socio-economic concerns of countries and is thus considered ineffective.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

Recently, Reliance Jio launched its video-conferencing application called ‘JioMeet’. The launch, however, has been muddled with controversy as the graphical user interface (‘GUI’) of the application is considerably similar to its competitor ‘Zoom’. In a recent statement, Zoom has mentioned that it is discussing with its legal team and is contemplating a possible suit for such copying of its interface. If the dispute does end up reaching the courts, it would be India’s first major litigation addressing the issue of non-literal copying of computer software and would clarify India’s legal stand on the same. Non-literal copying implies copying of elements other than the literal source code or object code of a computer programme. In this piece, I analyse the primary considerations that the courts would need to address and the possible outcomes that they might reach.

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Is the Zoom GUI Copyrightable?

As per Section 2(o) of the Indian Copyright Act, computer programmes are protected as literary works. Computer programmes have further been defined to mean “a set of instructions expressed in words, codes, schemes or in any other form” as per Section 2(ffc). Under this definition, computer software or an operating system would thus be protected by the copyright law. The question that then remains is whether the GUI including the structure of the programme and its design would be protected.

The Bombay High Court in the case of Maraekat Infotech Ltd. v. Naylesh V. Kothari had noted as follows:

“The Courts have, no doubt, in the matter of infringement of copyright in software considered not merely literal similarity, but also similarity in programme structure and design features.”

It further emphasised that copyright in computer programmes also extended to their ‘structure, sequence and organisation’. This interpretation seems to indicate that the GUI of a programme would also be protected. A similar interpretation seems to stem from the website of the Ministry of Electronics & Information Technology which notes the following in relation to computer programmes:

“Copyright protects form of expression and can be used to protect source code and the object code of a computer programme. Furthermore, computer programme is protected as a literary work by the Indian Copyright Act and hence, the look and feel of Graphical User Interface (GUI) can be protected under the Copyrights.” (emphasis supplied)

Which Elements of the Zoom GUI are Copyrightable?

Despite the above position permitting protection to the GUI of a computer programme, it would still have to qualify to be an ‘expression’ since the copyright law in India does not protect mere ‘ideas’. This position has been addressed in detail by the Supreme Court in the case of R.G. Anand v. Delux Films (‘R.G. Anand’) in context of non-literal copying of plays. In this case, the court noted that copyright protection extended only to the “form, manner and arrangement and expression of the idea”. Accordingly, in the context of a software its functionality in itself will not be protected as that is merely the idea behind the software. The GUI of a software would thus have to be tested in this context.

Applying this logic to the instant case, the mere presence of icons in the GUI signifying elements such as ‘New Meeting’ or ‘Join’ would not in themselves be protected as they merely indicate the function of a video-conferencing application. However, what would indeed be protected is the ‘manner and arrangement’ of these icons and the way different elements of the application structurally relate to each other. Moreover, the design of the icons is a unique expression as encoded in the programme and is thus protected under the copyright law. This process of separating different elements of the programme and culling out the protectable elements has been considered by Prof. Yogesh Pai to be similar to the first two limbs of the Abstraction-Filtration-Comparison test developed by the US courts in the case of Computer Associates International v. Altai (as summarised here previously).

Is JioMeet GUI Substantially Similar to Zoom GUI?

After determining the protectable elements of the Zoom application to be the specific design and arrangement of the various icons and their interaction with each other, the question then is whether JioMeet infringes these protectable elements. In this context, the court in R.G. Anand specified as follows:

“One of the surest and the safest test to determine whether or not there has been a violation of copyright is to seeing the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.” (emphasis supplied)

Furthermore, the court added that where the subsequent work is ‘literal imitation’ of the earlier work with minor variations it would amount to an infringement. At the same time the court specified that the copy must be ‘substantial and material’ and the differences between the two works should also be looked at while arriving at a decision on infringement. Hence, as per this proposition, it is required that the protectable expression of the Zoom app is compared with that of JioMeet to determine the similarities between the two. A detailed graphical comparison of different elements of the interfaces of both applications is available here. A perusal of these comparative images clearly indicates that the interface of JioMeet is a literal imitation of that of Zoom with minor variations. Apart from a minor difference in the colour contrast, the text used to signify different elements of the interface as well as the arrangement of different features is almost identical. From the reactions of different users of the two applications, it is clear that there appears to be an ‘unmistakable impression’ that the interface of JioMeet is a copy of that of Zoom.

Conclusion

The above analysis indicates that if Zoom does take the matter of infringement to court, it has a strong claim. Thus, while JioMeet rides on the bandwagon of ‘made in India’ as a selling point, it isn’t particularly Aatmanirbhar in its endeavours. The court would, however, need to avoid a reference to the decision of the UK High Court in Navitaire v. Easyjet Airline where the court had denied the claim on non-literal copying holding the UI to be merely an idea as against an expression and confined it to a limited protection in so far as individual elements of the UI amounted to artistic works. This is because, as examined above, such an interpretation is not tenable as per the Indian law. Interestingly, JioMeet has recently updated its GUI to make it look different from that of Zoom. It, however, still looks considerably similar to Zoom’s interface, especially the extended menus. In any case, this would not absolve it of its liability for the earlier infringement, though it might lead to reduced penalties. To part, it must be noted that while Zoom’s GUI isn’t registered under design law, this dispute also reignites the debate surrounding the rather restrictive stance adopted by the Indian Design Office in registering GUIs despite having ‘screen displays or icons’ as a separate class of registration.

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We’re pleased to bring to you a guest post by Bhavya Solanki and Medha Bhatt, discussing the applicability of the fair use provisions of trademark law to unauthorised use of trademarks in the virtual world. Bhavya and Medha are 2nd year students at Maharashtra National Law University (MNLU), Mumbai.

Virtual Reality, Augmented Reality and Trademark Law: How Freely Can Imagination Run?

Bhavya Solanki & Medha Bhatt

Technologies like Virtual Reality (‘VR’) and Augmented reality (‘AR’) are witnessing a growth spurt and are bleeding into multiple facets of human life. We experience them while engaging in interactive gaming like Pokémon Go, using Snapchat filters or apps like IKEA Place, in education, simulation training, etc. However, due to their rapid advancement, the law is straggling behind – giving rise to a variety of convolutions. Among these, issues relating to trademark law are of particular interest to us.

Since one of the more riveting aspects of such technologies is that they grant developers or users with unrestrained creative freedom, they, in a quest to provide or enjoy increasingly realistic experiences, could attempt to base the virtual world on the real world and, in doing so, may end up mimicking trademarks owned by proprietors in the real world. For example, imagine you are a developer. All in good fun, you recreate your room in the virtual world. You recreate the walls lined with band posters. In fact, you even give your avatar the make-up design of a band member of KISS or name him Darth Vader. This seemingly harmless naïveté could give rise to a legal quagmire buffeted by a lack of concrete legislative framework and authoritative precedent. Suddenly, the Rolling Stones, KISS or Lucasfilm could be suing for anything ranging from trademark infringement to dilution.

This post deals with unauthorized usage of trademarks in the virtual world and possible defenses.

Insulating the Mimesis

Stipulations of Indian trademark law

In cases of unauthorized use of TM in the virtual world, as described above, even on a finding of trademark infringement or dilution, the use can be immunized through the exceptions provided under section 30 of the Trade Marks Act, 1999 (‘TMA’). Although there are numerous exceptions available under the section, the post focuses on the defense of fair use – and particularly on the principles of descriptive and nominative fair use as embodied under it. These principles are embodied under section 30(2)(a) and 30(2)(d) of the TMA.

In general, for an exception under section 30 to apply, it is necessary that the usage (i.e. the usage containing a mark similar or identical to the registered mark in question) does not imply association with the trademark owner; is consistent with honest commercial practices and does not depreciate the value of the goodwill in the mark. Further, per section 30(1) of the TMA, such usage must not take unfair advantage of or be detrimental to the distinctive character of the mark as stipulated.

Section 30(2)(a) permits a third party to use descriptive indications as to the kind, quality, quantity, intended purpose, value, geographical origin and time of production of the goods or services or other characteristics of the goods or services. Descriptive fair use is known to occur when the trademark is used to merely describe the defendant’s own products and not to refer to the proprietor’s products. Thus, section 30(2)(a) of TMA provides that use of a registered trademark, or a mark similar or identical to it, by a third party as a descriptor of its own goods or services, does not count as infringement.

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As per Section 30(2)(d) of TMA, a registered trademark shall not be infringed where, “the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act…if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services..”

Nominative fair use is known to occur when the defendant is using the proprietor’s trademarks to refer to the proprietor’s products. Thus, the distinction is drawn between trademark “use” and trademark “mention”, with the latter denoting nominative fair use.

Applying the above to the present instance, avatars bearing the names of trademarked characters can be defended on the grounds that the use is to directly refer to the proprietor’s trademarked characters only. For example, naming your avatar ‘Captain America’ would be to directly refer to the Marvel character.

Although the expression “nominative fair use” is not explicitly used in TMA, it has been accepted as a defense by the courts. Support can be drawn from the Madras High Court, which, after relying on the U.S. Ninth Circuit judgments, viz. New Kids on the Block v. News Am. Publ’g Inc. outlined the scope of the nominative fair use argument. The Court laid down a three-prong test for the nominative fair use defense to be applicable:

1. the product or service concerned should not be instantly identifiable without the use of a trademark;
2. just as much of the trademark as is reasonably necessary for the identification of the good or service should be used;
3. the user should not do anything that would indicate sponsorship or endorsement by the trademark holder in connection with the mark.

Thus, the arguments above could be invoked to insulate an unauthorized usage in the virtual world.

Notwithstanding the above, Indian trademark law jurisprudence on the subject is underdeveloped. Therefore, jurisdictions which have had pronouncements on the issue, like the United States of America (‘U.S.’) continue to be a guiding light for Indian courts.

U.S. trademark law

Due to a dearth of case law directly dealing with AR / VR, cases pertaining to video games could provide guidance on how they may pan out as both immerse users in a detailed virtual environment (see here).

Fair Use…in Commerce

In the U.S., for a claim of infringement or dilution to succeed, “use in commerce” is a threshold requirement, meaning that the use should have been to label or reference goods or services in the course of commerce. In the case of Marvel Enters., Inc. v. NCSoft, Corp., wherein the players of a virtual world called ‘City of Heroes’ could create avatars identical to Marvel Superheroes, Marvel’s trademark claim was dismissed because it was seen that the use was not “in commerce” but was mere gameplay. However, the same might not necessarily follow in cases where the virtual game currency is exchangeable for real currency and the user could reap actual profits, as was the case in Taser Int’l, Inc. v. Linden Research, Inc., in which game, ‘Second Life’, stores were selling replicas of Taser’s stun guns to players.

The nominative fair use defense was argued by the creators of ‘Red Dead Redemption 2’, a western-themed video game set in the late 1800s, upon being sued for referencing the historic Pinkerton National Defense Agency (‘PNDA’) The game depicted two characters wearing the Pinkerton badges, the typical apparel of a Pinkerton detective, and were introduced as agents of the ‘Pinkerton Detective Agency’. It was argued that since the Pinkerton name and badge was used to refer to PNDA, only so much of the name and badge was used as was necessary, and customer confusion was not likely, the usage should fall under nominative fair use. Even though the suit was dropped before the courts could decide, it illustrates how the defense may be asserted in such cases.

Free Speech & Expression

There is yet another defense recognized in the U.S. of free speech which protects artistic expressions from trademark claims. While initially applied to written or spoken words, it has been extended to other mediums of expressions like music, films and even video games. It was applied to the depiction of a strip club in ‘GTA: San Andreas’ which was sued for trademark infringement. Recently, the game ‘Call of Duty’ was allowed to depict Humvees in the interest of free speech. Further, AR has also been held to enjoy this protection.

The defense becomes applicable after passing the two-pronged Rogers test (discussed in detail on the blog here) under which, firstly, the use of the trademark should have some artistic relevance to the underlying work, and secondly, the use should not be explicitly misleading as to the source or sponsorship of the work.

Both the defenses of fair use and free speech have been expressly provided under 15 U.S.C. § 1125(c)(3)(A) of the U.S. Trademark Dilution Revision Act, 2006 with the condition that the unauthorized use should not be as a designation of source i.e. it should be a non-trademark use and the use of the proprietor’s trademark should not be used as a symbol of origin for the defendant’s products.

Conclusion

Although Indian law still has much to learn from its western counterparts on this front, the unauthorized usage of trademarks in the virtual world can be insulated by invoking the sub-provisions under section 30 of TMA. Nevertheless, it may be advisable for developers and users to remain wary of using trademarks owned by others in the real world.

We’re glad to inform our readers that Centre for International Legal Studies at Jindal Global Law School is organising an online panel discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ on July 25, 2020, as part of a series of events title ‘International Law, Political Economy and COVID-19’. For further details, please read the announcement below:

Panel Discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ | July 25, 2020

We are pleased to invite you for an interesting panel discussion on a very pressing and timely theme: ‘Can We Reimagine International Institutions? A Third World Perspective’ taking place on July 25, 2020 from 3:30 PM to 4:30 PM (access link: https://bit.ly/2ZIHCBJ).

This panel discussion is the second event of the International Law, Political Economy and Covid-19 Series being organized by the Centre for International Legal Studies, JGLS.

The basic premise of this event is that though there has been a pronounced use of the rhetoric of global solidarity and cooperation, the Covid-19 pandemic has exposed already existing fault-lines and structural divides within the mainstream model of international governance. This is especially important in context of access to Covid-19 health technologies like vaccines, diagnostics and therapeutics. With limited health care and manufacturing capacity as exists in many parts of the Global South, the western-based incentive research and development models are inadequate and only a partial solution. Hence, there is a definite need to think about reimagining international institutions, that not only are responsive to the blind-spots of the current framework but also are based on a wider and more inclusive set of concerns.

On this backdrop, the three speakers would discuss issues and questions such as:

Are interests of Global South represented adequately in the responses to Covid-19?

How can there be a better recognition of indigenous and low-cost innovation systems in these responses?

Who Should Attend?

Law students, legal professionals, and other professionals having a keen interest in international law and intellectual property rights.

Panelists

1. Bhupinder S Chimni, Distinguish Professor of International Law, Jindal Global Law School
2. Titilayo Adebola, Lecturer, School of Law, University of Aberdeen
3. K. M. Gopakumar, Legal  Advisor & Senior Researcher, Third World Network
4. Sachin Sathyarajan, Lecturer, Jindal Global Law School
5. Ishupal Singh Kang, Lecturer, Jindal Global Law School

When?

Date: July 25, 2020

Time: 3:30 PM to 4:30 PM

Where?

Zoom

Access Link: https://bit.ly/2ZIHCBJ

Registration

No registration fee

Contact Details

If you have any questions, please feel free to contact us at iskang@jgu.edu.in or ssathyarajan@jgu.edu.in.

Almost a year after the Delhi High Court’s bizarre order in the Mylan case, the Indian Drug Manufacturer’s Association (IDMA), represented by Advocate Guruswamy Natraj has sued the Central Government over the missing technical member for patent matters on the Intellectual Property Appellate Board (IPAB). The case number is W.P. 4430 of 2020. This lawsuit appears to be part of a ritual undertaken before the Delhi High Court every few years where the government is dragged to court due to the lack of appointments to the IPAB.

In case you do not remember the bizarre order of the Delhi High Court in the Mylan case last year, please refer to our post of that issue over here.

To briefly summarise the main issue in the Mylan case: The law (Section 84 of the Trade Marks Act) requires that the IPAB has a minimum quorum of 2 members to hear any matter before it. Of these two members, one is required to be a Judicial Member with an understanding of the law while the other is required to be a Technical Member with a sector specific expertise. As a result the qualification requirement for Technical Member – Patents, is very different from Technical Member – Trademarks or Plant Varieties.

 Any case before the IPAB dealing with matters under the Patents Act, is statutorily required to have a Technical Member-patents sitting on the bench along with the Judicial Member. However for reasons unknown, the Central Government has not appointed a Technical Member – Patents to the IPAB since the retirement of Mr. DPS Parmar from the IPAB in 2016. Since the IPAB could not hear patent matters without a Technical Member – Patents, litigants began to approach the High Courts under their writ jurisdiction. In one such case filed by Mylan before the Delhi High Court, Justice Midha passed a judgment stating that the Technical Member for Plant Varieties could substitute the Technical Member (Patents) on the IPAB to hear patent related matters along with the judicial member. This judgment goes completely against the statutory scheme of the law because the Technical Member for Plant Varieties can only hear cases under the Plant Varieties Act which is an entirely different law from the Patents Act.  The qualification requirement for the Technical Member- Plant Varieties is entirely different from Technical Member – Patents.

After the aforementioned order was passed, we presumed that someone from the IP fraternity would challenge the blatantly illegality of having a Plant Varieties – Technical Member hearing patent matters. Surprisingly nobody challenged the order and instead we have been seeing the IPAB pass some rather strange orders in the patent context. Swaraj and Praharsh have covered one such order over here. It has taken a year for someone to finally re-litigate the Mylan judgment. The fact that the IDMA (which represents mid and small pharmaceutical companies) has taken up this litigation is a sign that the Indian pharmaceutical industry is deeply dissatisfied with the functioning of the IPAB.

I have it on good authority, that at the hearing this morning before the Delhi High Court, the counsel for the Central Government an oral submission that a Technical Member (Patents) was appointed last night. A written confirmation from the government is awaited.

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Content sharing platform TikTok is the first among the list of apps in the Indian government’s recent Press Release, announcing a ban on 59 Chinese applications due to concerns such as threat to “sovereignty and integrity of India.” As mentioned in an insightful piece by Ameet Datta, there are many copyright obstacles before the call to find a comparable Indian substitute for TikTok can be materialised.

Datta refers to three types of licenses that any service modelled on TikTok’s format would require. These include synchronisation licenses, which refer to permission from the copyright holder to use a song that someone else published in a video format. Publishing rights such as public performance licenses would be required to play the song online. Similarly, mechanical rights pertaining to the sound recording of a copyrighted work for streaming, reproduction and storage would be needed.

Thus, the video service provider’s audio library will crucially determine the volume and diversity of content that users can imaginatively interact with to create their own videos. Datta points out that, TikTok acquired 8000 music licensing deals on account of absorbing former competitor Musical.ly, and because of its already tremendous scale and valuation in China at a time when music licensing was not a structured industry requirement in the country. Thus, he concludes that only big players like Facebook and Google are likely to be capable of providing such a substitute, given the large-scale investment and expensive music licensing involved.

Interestingly, Facebook has signed a global deal with Indian music label Saregama soon after TikTok’s ban, for its video experiences such as Reels or Music Stickers on Stories on Facebook and Instagram. More recently, it signed another licensing deal with Indian Performing Rights Society Limited (IPRS) to license IPRS’ music for similar uses. This proves Datta’s prediction, and it would be interesting to see if Reliance Jio, with its subsidiary JioSaavn’s licensing deals, investor base and deep pockets, would also be interested in capitalising on the market that TikTok catered to.

Transformative Use

The four-factor test used to evaluate the fairness of a use in the U.S. also applies to s.52(1)(a) of the Indian Copyright Act to determine fair dealing, as per the Division Bench of the Delhi High Court in India TV Independent News Service v. Yashraj Films Pvt. Ltd. These factors are- purpose and character of the dealing, nature of the work, amount and substantiality of the portion used, and effect of the use on the market of copyrighted work. In India, for a work to be non-infringing, it must constitute fair dealing as per the U.S. test and also fall within the purposes of s.52. As explained here, Indian courts have held that the focus of the work should not be the underlying work but the new work created, which can use previous works for the purposes under s.52(1)(a), including criticism and review, which should be interpreted liberally.

The Delhi High Court in Narendra Publishing House interpreted ‘review’ as “view, inspect or examine a second time or again..”, which is arguably similar to the US factor of transformative purpose and character of the use. TikTok videos can be said to use a previous work to view it a second time while ensuring that the focus remains on the new work created. More pertinently, the Indian Supreme Court had also noted in R.G. Anand v. Deluxe Films and Ors, “Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.”

Since the audio library essential for these short video services to thrive comprises of commercial music which was not explicitly designed for the social media format of being synched and performed by users creatively, as facilitated by TikTok, there is a valid argument for recognising such use as transformative review. The creative re-use of the short music clips from TikTok’s audio library differs completely from the purpose for which these songs/films were created for their original market. The viral 15 second TikTok videos do not impact the original markets of these works negatively. They naturally kindle the interest of users via wider dissemination of the underlying copyrighted lyrics, dialogues and music and thereby expand the markets for these songs and films instead of undermining them. They are likely to generate more demand as vehicles of free publicity for the underlying copyrighted works.

Further, fair dealing is aimed at broadening the scope of cultural production, which is not necessarily limited to non-commercial activity. Even commercial activities can fall under its scope as long as justified by the purposes enumerated under s.52. Hence, an app providing an audio library for profit is not excluded from its ambit by itself.

Impact on Free Speech

Consumption of recorded music in India has been higher than the global average and has only witnessed strong growth in recent years. The interest of creators and consumers in music and videos along with the availability of the cheapest internet data in the world explains the popularity of apps like TikTok.

User rights and exceptions to infringement in copyright law are rooted in the legislative intent to expand cultural production. Arguably, one of the goals of the fair dealing provisions and exceptions under s.52 of the Act is to realise the right to freedom of speech and expression under Article 19(1)(a) of the Indian Constitution.

TikTok expanded cultural production and free speech by breathing life into the aspirations of many, who earlier had no means to exhibit their talents, spontaneity, humour and play to the world. Even if the commercial opportunities resulting from TikTok’s use were rare, it provided a medium to learn new skills, create, belong, fashion a community for oneself, and feel respected and appreciated. These drivers of creativity, speech and effort challenge traditional American intellectual property theories that recognise largely economic incentives for creation to the exclusion of others. The emergence of these digital cultures also reimagines people by allowing them not just the visibility that more expensive forms of content creation never could, but also the means to create their own narratives and be seen on their own terms, within their distinct socio-cultural ecologies. The unprecedented democratisation of content creation that TikTok brought about has no alternative currently.

Conclusion

It has been noted that digital behaviours of marginalised communities are often fictionalised. It is assumed that people are motivated by utilitarian and economic incentives in their interaction with technology as rational individualistic actors. For instance, it is assumed that farmers in the Global South would use the internet for agricultural best practices and women would chiefly use it to gain health and educational information. TikTok resists these essentialisms. It reveals that despite material constraints, users are often motivated by romance, purposelessness, leisure, entertainment and play in their use of the internet. Thus, onerous licensing requirements should not ideally stand in the way of the objective of the law, i.e. the creation and dissemination of creative content that is more diverse and the social good of accommodating and engaging a wider range of speakers and audiences.

Finally, one can also hope that emerging alternatives are fairer in their remuneration policies for artists, particularly those creating user generated content, than TikTok has been.

Back in 1970, Justice Stephen Breyer, (now of the US Supreme Court, then a professor at Harvard Law School), in contemplating the proposals to extend copyright terms, wrote an interesting article where he pointed out that the Copyright regime seemed to be based more on fear, than on fact (paywalled link). His conclusion regarding the copyright system, ended up echoing what the economist Fritz Machlup had famously said even earlier, in 1958, about the patent system – that if we didn’t have a [copyright/patent] system already, there wasn’t enough evidence to justify creating one (in Breyer’s case – expanding copyright further); but given that we do currently have copyright/patent system, there wasn’t enough evidence to justify doing away with it either.

While it turns out that 62 years later, the evidence conundrum still exists, the IP system is, by and large, assumed to be a proxy for innovation. And as countless authors have written, especially vis-a-vis public health and medical technologies, this is a very problematic yet strongly prevailing assumption. While the faulty proxy is problematic on its own, it appears that there is another side effect that this proxy brings – one that seems to be related to the concept of technology-solutionism.

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Leaving aside the mechanics of copyright or patents, they are inherently dependent on the market for their value. In fact, in the innovation-systems literature, the decentralised nature of society’s demands (as expressed on the market), are posited as one of the benefits of a market-based innovation-rewards system. Since this means that ‘the market’ can decide what is valuable, rather than a single player (i.e., government / prize fund) who would have to incur massive information costs in determining what society deems valuable. Leaving aside the problem of public goods like health not being able to express themselves on a market place (i.e., for e.g. poor patients cannot signal to pharma companies that they want to save their lives by spending money on treatment, because they don’t have money to spend (‘signal’) in the first place), this also implicitly puts forward the idea that market-based innovations are always a useful spend of society’s resources, because after all, it is what people are willing to spend money on. And either as a fall out of this, or due to other factors, there seems to be a very common understanding that solutions to all our problems will a) be technological, and b) incentivized through the market place. In short – it really seems that a market-centric innovation incentive system (of which Copyrights/Patents play a large role), is contributing to so many startups and companies trying to solve the world’s biggest problems through a new app or the latest greatest technology, rather than looking at the basics, and perhaps sometimes ‘profit-less’ solutions. Of course, this is not an ‘either/or’ situation – however, that also means not relegating one to the realm of the forgotten. To repeat an example I had mentioned recently (see this post for more details and context), “The ‘humble checklist’ (it is what it sounds like) was a simple non-proprietary public health intervention which resulted in highly reduced infection rates in US hospitals by stopping infections before they could happen, even as patent-incentives were instead driving heavy investments into creation of antibiotics for the same infection problem. Both may have their roles, but this shows the clear difference between focusing on maximising health benefits, and focusing on the market for health benefits.”

This thinking – focusing on technological solutions to the exclusion of other types – has permeated government levels as well – with several governments often eager to bring on ‘app’ based ‘solutions’, even while spending lower and lower amounts on crucial areas like public health. Those like Evgeny Morozov also point to the often insidious nature of this tech-solutionism.

Grassroot Innovations and Social Innovation

Check our list of IP and related books here

Given the nature of which portion of society tends to have access to capital and entrepreneurial networks – this has also frequently meant that there is very little diversity in background and life-perspective of those who end up being ‘incentivised’ by the formal IP system. About a decade ago, Shamnad had written a few pieces (such as this) on how the IP regime did not really cater to the ‘informal’ economy, despite the fact that the informal economy consists of the major part of India’s overall economy. Readers can find further discussion from the blog on grassroots innovation under the tag ‘grassroots innovation’ or specific posts like this and this. Aside from being grossly unfair, societally this is costing us. As Prof Anil Gupta famously quipped, “Minds on the margins are not marginal minds”. And whether we know it or not, we are losing out on countless brilliant minds by ignoring them, by only recognising ‘innovation’ when it comes through the formal, often elite, processes. For the past few decades, Prof Anil Gupta has been doing some amazing work bringing out grassroots innovations from across the country, through his teams at the National Innovation Foundation, and the HoneyBee Network and has been writing about his take on the present status of innovation/ creativity in India, in his blog (here).

There is another aspect to this though, perhaps best framed through the question Siva Vaidhyanathan posed some years ago – click here to read my post discussing that article – the question being: “Has Innovation supplanted the idea of Progress“? There, he argues that perhaps IP should not only consider “innovation”, but also progress – distinguishing between the two concepts. He goes on to say,

“Innovation differs from progress in many ways. Innovation lacks a normative claim of significant betterment. It emerges from many small moves rather than grand, top-down schemes. Innovation does not contain an implication of a grand path or a grand design of a knowable future. It makes no claim on the future, except that it always exists in that future, just out of reach of the now. And innovation always seems to come from the distributed commercial world rather than from grand, planned policies engineered from a strong central state. States are now encouraged to innovate rather than solve big problems or correct for market failures. The ultimate goal of innovation seems to be more innovation.”

Recently, in an (excellent) IP and TWAIL webinar held by the AfronomicsLaw blog (recording available here), Jacquelene Mwangi from Harvard Law School, spoke about ‘social innovations’. She very succinctly pointed out a very crucial difference between ‘regular’ innovations and social innovations, when she referred to social innovations as ‘innovation which changes power’. I found this a very helpful way of thinking about ‘social innovations’ – more than the more vague concept of ‘innovations which help people’. In a world with ever-increasing inequality, if one starts to re-look and re-examine innovation and incentive systems, that seems like a fascinating place to start this thinking process from. In a follow up conversation, she was also generous enough to share a reading list with me, for more on these lines, and I’ll leave those suggestions here (along with some of her comments, paraphrased), for readers who may be interested in more on this lens.

1. Langon Winner: Do Artifacts have Politics? Daedalus, Vol. 109(1), Modern Technology: Problem or Opportunity? 121-136 (1980) (PDF here) – A classic on technology politics. Look out for a section that talks about the unintended consequences of large scale agricultural innovation and its effects on small-scale farmers – the “unintended consequences” of technological development.
2. Works by Eric Von Hippel. Particularly ‘Democratizing Innovation’ (2005) and ‘Free Innovation’ (2017). His works, including these books, are available for free on his page here. (We’ve also now added them to our list of Open Access books here)
3. Anil Gupta’s works. You can buy his book “Grassroots Innovation” from our page here. You can also checkout Honeybee Network and National Innovation Foundation.
4. Roberto Unger, The Task of the Social Innovation Movement
5. Peter Lee, Social Innovation, 92(1) Washington University Law Review, (2014). (PDF here) (about Intellectual property and social innovation).

If readers have more suggestions, please feel free to leave them in the comments below!

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We’re pleased to bring to you a guest post by Shivam Kaushik, discussing the impact and legality of the guiding principles regarding the requirement of disclosure of foreign patent applications, as introduced by the 2019 version of the Manual of Patent Office Practice and Procedure.

Shivam is a 5th year law student at Banaras Hindu University, Varanasi. He has previously also written two guest posts for us, titled ‘Copyright and Webinars: Ownership, Licensing and Fair Use’ and ‘Govt’s Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions – A Critique‘.

Reengineering of the Requirement of Disclosure of Foreign Applications by the 2019 Patent Manual

Shivam Kaushik

Since the year 2008, Indian Patent Office (IPO) has been publishing the Manual of Patent Office Practice and Procedure (Manual) to codify patent procedure and to provide guidance for effective prosecution of patent application in India. In November last year, the Office of Controller General of Patents, Designs and Trademarks, India came up with the 3^rd version of the Manual. Intriguingly, the prodigious Manual apart from fulfilling the above mentioned objectives also attempts to stealthily dilute the requirement of disclosure of information regarding foreign applications provided under section 8 of the Patents Act, 1970 and Rule 12 of the Patents Rules, 2003 (Rules).

Background

Section 8 is a mandatory provision of the Patents Act, 1970 (‘Act’). It obligates the applicant(s) prosecuting a patent application in India to furnish a statement and an undertaking regarding patent applications filed in respect of the same or substantially the same invention in any country outside India. A similar provision is available in the laws of other countries like the USA, China, EPO, Mexico, and Philippines. The section has two sub-sections dealing with distinct obligations.

Section 8(1) read conjointly with Rule 12 of the Rules requires the applicant(s) to file the statement setting out detailed particulars of such application and the undertaking in ‘Form 3’ along with the application or subsequently within six months from the date of filing of the application. The requirement under section 8(1) automatically kicks in whenever a patent application is filed in India. Whereas, section 8(2) read with Rule 12(3) requires the applicant to furnish details available with him, upon a specific request by the Controller, relating to the processing of the application outside India within six months of such a request.

As already stated, section 8 is a mandatory provision as non-compliance with the disclosure requirement has been made a ground for: pre-grant opposition under section 25(1)(h), post-grant opposition under section 25(2)(h), and revocation of a patent under section 64(1)(m) of the Act.

Reengineering the Patent Procedure

Technological advancements have made it possible to do away with many burdensome steps traditionally associated with patent prosecution. Previously, examiners were dependent on the applicants to provide details relating to foreign applications. Now the information is easily available- with the IPO becoming an International Searching Authority (ISA) making the process of patent prosecution less sophisticated.

Unfortunately, the Indian patent laws have been unable to keep pace with the changing technology. The time taking process of law-making has created a predicament where technology is available, but the legal framework to use the technology is not.

Apparently, in the particular case of disclosure requirement under section 8, the Manual uncharacteristically has taken the responsibility upon itself to bridge this gap. The Manual talks about the recently concluded WIPO-India Cooperation Agreement. Under the Agreement the WIPO Digital Access Service (DAS) has been made available to IPO from 12^th March, 2018. DAS allows participating intellectual property offices to directly exchange priority & other documents between them. It obliviates the tedious task of requesting the documents from one country’s IP office and supplying it to another country’s IP office. Furthermore, IPO has also joined the WIPO Centralized Access to Search and Examination (CASE) system in February 2018. In the CASE system, patent offices can share search and examination documentation related to patent applications with each other. Thus, IPO now has direct access to search and examination reports of the corresponding application filed in almost all major patent offices.

In light of this ‘reengineering’, the Manual lays down certain ‘Guiding Principles to Patent Examiners and Controllers regarding requirement under section 8’. To fulfil the requirements of section 8, it directs the Examiners and Controllers to:

1. Check whether the applicant has filed a statement that the required documents are available in the DAS and CASE from where the IPO can access them. If the statement is not filed, the applicant is required to provide all documents and information as mandated by section 8 read with Rule 12 of the Patents Rules in the prescribed Form 3 without fail.
2. Check whether priority documents and similar documents are available in DAS. If such documents are found then further information with regard to priority may not be sought.
3. Utilize all the facilities available in CASE regarding processing of corresponding patent applications in other countries, including access to Search and Examination Reports.

It also provides that they may seek details stipulated under section 8(2) from the applicant, notwithstanding any of the steps mentioned above, relating to the processing of the application in a country outside India.

Hence, the Manual makes a digression from the procedure prescribed by statutory instruments.

Legality of the ‘Guiding Principles’

The purpose behind the introduction of the Manual is to increase transparency in functioning of the Patent Office and offer clarity to patent applicants. Without an iota of doubt, these changes in the procedures are a step in the right direction. But the attempt of the IPO to amend the patent procedure prescribed by statutory instruments using the Manual brings forth the question – can it modify a parliamentary Act or the executive Rules that have been framed under the Act?

The Manual opens with the lines that the Manual is only a “practical guide” for effective prosecution of patent application and “it does not constitute rulemaking and, hence, does not have the force and effect of law“.

With all benefits associated with the Manual seen as a whole, the Guiding Principles dealing with ‘information regarding foreign applications’ go beyond the mandate of transparency and efficiency. Since the inception of the Manual in 2008, there has been a general understanding that it is only meant to be an indicator of the procedure at the Patent Office and does not have any binding effect on examiners of the Patent Office. Version 3.0 of the Manual seems to cross this ‘laksman rekha’ by actively seeking to modify the patent procedure instead of just codifying it.

The Legal Jurisprudence of Section 8

The Manual in laying down the novel procedure relies upon ‘the legal jurisprudence evolved with respect to section 8 by Courts’ in adopting the above-mentioned procedure to ‘fulfil the requirement of section 8’. But actually, none of the courts’ decisions mention or suggest the steps to fulfill the requirements of section 8 that have been advised in the Manual.

The jurisprudence of the disclosure requirement under the Indian patent law has been settled by the Delhi High Court in a series of judgments, including Chemtura case (which has been discussed in detail by Prashant here) and the Koninklijke Philips Electronics case (discussed by Aparijita here). It is a settled proposition of law that the revocation of a patent due to non-disclosure under section 8 does not lead to automatic revocation of the patent. The suppression of information has to be wilful. Merely clerical or bona fide error leading to non-disclosure cannot be a ground for revocation of patent. The legal jurisprudence evolved by courts nowhere suggests retrenching and modifying the mandatory procedure suggested by the Act and Rules. Moreover, courts till date have not had any opportunity to consider the implication of using CASE and DAS on statutory patent procedure. The additions suggested in the patent procedure do not have any existence outside the Manual.

Conclusion

From the above discussion, it becomes clear that the Manual does not have the legal backing to effectuate the change to accommodate DAS and CASE. The 2020 USTR Special 301 Report has lauded (page 51) the requirement for patent examiners to look at WIPO databases in the Manual as a step towards “resolving the burdensome patent reporting requirements”. No doubt the end sought to be achieved by the Manual is a leap forward, but it cannot justify the means adopted to ingenerate the end. The Manual cannot be outside the framework of the statute law and it cannot give any direction to examiners and controllers which are contrary to the Act and the Rules framed thereunder. Introduction of DAS and CASE is a welcome addition in Indian patent landscape to simplify patent procedure but necessary changes in the Act and corresponding Rules will have to be made to harmonise the Manual with the statutory procedure.

We’re glad to inform you that LexisNexis IP is organizing a live webinar on ‘Patent Analytics: A Scientific Approach’ on August 6, 2020. For further details, please read the announcement below:

Live Webinar on ‘Patent Analytics: A Scientific Approach’ | August 6, 2020

We, LexisNexis Intellectual Property, are delighted to invite you to join a live webinar on ‘Patent Analytics: A Scientific Approach’ that we’ll be organizing on August 6, 2020. In this webinar we will discuss analytics methodologies to give insights for R&D Strategy, Benchmarking, Portfolio Management, Licensing, Mergers, and Acquisitions, to name a few.

We are a leading global provider of the entire patent workflow solutions designed specifically for professionals in the intellectual property market, government agencies, and the life sciences industry. LexisNexis has worked in the patent arena with the U.S. Patent and Trademark Office (USPTO) for nearly half a century and offers a suite of IP solutions that deliver the results you need across the patent workflow under the LexisNexis IP name. LexisNexis IP solutions are a comprehensive approach to patent analytics and search.

We conduct various webinars and share recordings every month on the latest topics in the IP industry. You may follow the updates on these webinars on our LinkedIn page.

When?

The webinar will be held on August 6, 2020 (Thursday) from 3.00 to 4.00 pm IST.

Who?

The webinar will be led by Tharraniiswari Gunasekaran, who joined LexisNexis IP as IP Specialist for India & SEA region in 2018. She is a qualified attorney since 2007 and has worked in various multinational corporations.

Registration

Please click here to register for the webinar.

Contact Details

If you have any questions, please feel free to contact us at ip@lexisnexis.com.

A few years ago in 2018, I had written about the financial state of Indian copyright societies dealing with music. At the time, things were not looking well for the two main copyright societies in the music industry, which are the Indian Performing Rights Societies (IPRS) and the Phonographic Performance Ltd. (PPL). While IPRS collects royalties for use of music and lyrics, PPL collects royalties for use of the sound recordings. The revenues for both copyright societies at the time were decidedly unimpressive when contrasted to figures from 2009-10.

The slow growth and at times even declining, revenues of these copyright societies in 2018 were not entirely surprising given the controversies, bad blood and litigation between the music labels and the composers/lyricists. Post the 2012 amendments, it was presumed that things would necessarily have to change for two reasons. The first reason was that the 2012 amendments allowed composers and lyricists to assign their right to collect royalties to only copyright societies and no other body. Thus copyright societies would necessarily have to get their act together. The second reason was that demand for music from big streaming services was increasing tremendously because of better internet penetration and cheaper smartphones. As of 2018 this turnaround had not taken place.

Things however have really turned around for IPRS in FY 2018-19. Its annual report for FY 2018-2019 which is available on its website shows an eye popping increase in revenues across categories! Its total revenues increased from Rs. 45 crores in FY 2017-18 to Rs. 166 crores in FY 2018-19! (The figures can be accessed on page 43 of this document.) The increase may be due to the accounting method followed by IPRS for some of its revenue heads wherein revenue is calculated on an accrual basis i.e. on the basis of signed licenses rather than receipt of money and it appears that at least a sum of Rs. 51 crores is yet to be paid to IPRS.

The other reason for the increase in revenues is because IPRS has managed to build entirely new heads of revenue that did not exist in the previous year. These two heads include the licensee fees from affiliated societies in other countries and foreign streaming services. Together these two heads amount to Rs. 62 crores as opposed to Rs. 45 lakhs in the previous year. Other massive increases in revenue are Rs. 29.36 crores from television broadcasters as opposed to a mere Rs. 1.4 lakhs from the previous year. Getting politically powerful TV broadcasters to pay up is not easy. This lobby ensured that the statutory licensing norms of Section 31D, which were initially meant for radio broadcasters was also extended to television broadcasters. As per Section 31D the television broadcasters can challenge the royalties demanded by copyright societies before the Copyright Board, except this Board has not been constituted since 2012. In the absence of a statutory licence, I am presuming that IPRS managed to convince the television broadcasters to pay up the amount.

One aspect of IPRS’s annual report which is rather strange is its royalty payout to its members. As per its balance sheet only Rs. 52.38 crores was paid out to its members while a sum of Rs. 60.49 crores sits as cash in its bank account! It is surprising that so much money is sitting its account without being disbursed to members. Unless that money has something to do with outstanding liability such as refunds being demanded by television broadcasters and tax demands, that money should go to members.

The figures for PPL are not impressive. Its revenues stand at a mere Rs. 100 crores with Rs 23.59 crores coming from radio broadcasters and Rs. 64 crores coming from public performances licences issued for live events. PPL does not appear to be collecting revenues from television broadcasters or streaming services or foreign copyright societies. This is a huge drop for PPL. Its revenues as far back as 2009-10 were Rs. 203 crores. The decline in revenues is not very surprising since PPL has not been recognized as a copyright society and some of the largest music labels prefer to operate outside the purview of PPL given the controversies raging around it. This begs the question of whether the music labels even require a copyright society for activities apart from performances licences for live events?

Last but not the least I would like to make a passing reference to the Indian Singer’s Rights Association (ISRA) which is a registered performers’ society that is meant to represent the rights of singers. The claims being made by ISRA are very controversial and are being contested before court. We have covered some of these issues before over here. ISRA’s revenues for FY 2018-19 was at a mere Rs. 2.56 crores of which a sum of Rs. 42 lakhs went towards the salary of its CEO Sanjay Tandon. The collective distribution to ISRA’s 755 singers-members for the same period was at a mere Rs. 1.08 crores.

ISRA’s annual report contains many paeans to Tandon. Sample these excerpts: “The entire Board once again places great appreciation and “lagan” of Mr. Tandon so as to have such a landmark day in the life of ISRA.” – “The Board on behalf of all the members of ISRA thanks Mr. Tandon for all his initiatives and hard work with passion” – “The Board would like to place on record its applause and immense appreciation to Mr. Sanjay Tandon for his hard work and passion and thanks him to have delivered such a fantastic result.” – “Last but not least, the Board wishes to acknowledge and appreciate the immense efforts of the CEO – Mr. Sanjay Tandon, without whose passion, perseverance and hard work, ISRA would not be where it is today.”

Topical Highlight

Does JioMeet’s GUI Infringe Copyright in Zoom’s Software?

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Nikhil wrote about the controversy of JioMeet’s GUI infringing Zoom’s software. Addressing the controversy that ensued after JioMeet was released, the issue of non-literal copying of computer software is examined. Nikhil explores the primary considerations that courts would need to address on the issue and the possible outcomes. First, the copyrightability of Zoom’s GUI is analyzed under Section 2(o) and Section 2(ffc) of the Copyright Act. Then, the particular elements of Zoom’s GUI and its copyrightability are discussed. Next, Nikhil analyzes the substantial similarity between JioMeet and Zoom’s GUI to check if the ‘manner and arrangement’ and the ‘expression’ of Zoom’s GUI can be given protection. In conclusion, it is noted that Zoom has a strong claim to prove infringement should it consider taking the matter to court.

Thematic Highlight

IDMA Sues the Central Government over ‘Missing’ Technical Member for Patent Cases at the IPAB

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Prashant wrote about the Indian Drug Manufacturer’s Association (IDMA) suing the Central Government over the missing technical member for patent matters on the Intellectual Property Appellate Board (IPAB). The petition filed by IDMA comes a year after the Mylan case in which the Delhi HC passed an order that allowed the Technical Member for Plant Varieties to hear patent-related matters in lieu of a Technical Member for Patents who was yet to be appointed. The Delhi HC order which goes completely against the statutory scheme of the law is now being challenged. It is noted that the counsel for the Central Government stated that a Technical Member for Patents was appointed (read the order here) and the same was notified on 21^st July 2020. The notification is not available and there is no update regarding the same on the IPAB website. However, this tweet indicates that B.P. Singh has been appointed as Technical Member for Patents, Copyright and Trade Marks.

Other Posts

Solutionism, Social Innovation and IP

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Swaraj wrote on the idea of technology-solutionism, a side effect of assuming the IP System to be a proxy for innovation. Technology-solutionism has led to the common understanding that solutions to all our problems will be technological and incentivized through the marketplace, and gives the Copyright and Patent systems a large role to play in the same. Writing about grassroots innovations and social innovation, Swaraj notes that there is very little diversity in background and life-perspective of those who are ‘incentivised’ by the formal IP system. This has led to the reproduction of an unfair system due to which a lot of brilliance that is found in the informal economy is lost out. The focus of the IP system on only innovation rather than progress is then critiqued. Then the very interesting idea of the difference between regular innovations and social innovations is discussed. It is noted that social innovations and re-examining the innovation and incentive systems are a good place to start to think about increasing inequality in the world and the post is concluded with a reading list on the same, which can be accessed here.

Onerous Copyright Licensing, Fair Dealing and Alternatives to TikTok

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Anupriya wrote on the copyright obstacles that a comparable Indian substitute for TikTok would have to face post the Indian Government’s ban on the app. First covering the three types of licenses – synchronization licenses, publishing rights, and mechanical rights – that a platform similar to Tiktok would require, it is noted that given the vast resources required for the same, only big market players may be able to enter the fray. Discussing transformative use, the fair dealing possibilities for such an app is analyzed to state how the newly created content can be understood as transformative review. Noting the impact of the same on free speech, Anupriya argues that one of the goals of the fair dealing provisions under Section 52 of the Copyright Act is to realize the right to freedom of speech and expression under Article 19(1)(a) and to increase cultural production. In conclusion, it is stated that Tiktok as a platform has been successful in diversifying the creation and dissemination of creative content and the search for an alternative should not have to face onerous licensing requirements.

Reengineering of the Requirement of Disclosure of Foreign Applications by the 2019 Patent Manual

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In a guest post, Shivam Kaushik wrote on the impact and legality of the guiding principles regarding the requirement of disclosure of foreign patent applications, as introduced by the 2019 version of the Manual of Patent Office Practice and Procedure. Shivam notes that the 3^rd version of the Manual stealthily dilutes the requirement of disclosure of information regarding foreign applications provided under Section 8 of the Patents Act, 1970, and Rule 12 of the Patents Rules, 2003. After an explanation of how these two provisions are to be read together, the mandatory nature of the disclosure requirement is emphasized. With WIPO’s Digital Access Service (DAS) and Centralized Access to Search and Examination (CASE) system being made available to the Indian Patent Office, the latest Manual lays down certain ‘guiding principles’ regarding the requirement under Section 8 and this makes a digression from the procedure prescribed in the statute. Questioning the legality of these ‘guiding principles’, Shivam examines if the Manual can modify a parliamentary Act/ executive Rules prescribed in the Patents Act and Rules. In conclusion, it is stated that the Manual does not have the legal backing to effectuate the change to accommodate DAS and CASE and thus is working outside the framework of the statute law.

Virtual Reality, Augmented Reality and Trademark Law: How Freely Can Imagination Run?

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In a guest post, Bhavya Solanki and Medha Bhatt wrote on the applicability of the fair use provisions of trademark law to the unauthorized use of trademarks in the virtual world. With the increase in use of technologies like Virtual Reality (VR) and Augmented Reality (AR) that highly resemble the real world, there is also an increase in mimicking trademarks owned by proprietors in the real world. Focusing on the fair use provisions of the Trade Marks Act under Section 30(2)(a) and 30(2)(d) that permit third party use, the principles of descriptive and nominative fair use is analyzed. Noting that the Indian trademark law jurisprudence on the subject is underdeveloped, US judicial pronouncements on video games are discussed to outline the ‘use in commerce’ threshold for claims of infringement to succeed. Lastly, the defense of free speech that protects artistic expressions from trademark claims in the US is discussed. In conclusion, it is noted that even though the Indian jurisprudence on the matter is underdeveloped, the unauthorized usage of trademarks in the virtual world can be insulated by invoking the sub-provisions of Section 30 of the Trade Marks Act.

The Fortunes of Indian Copyright Societies

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Prashant also wrote on the financial state of the Indian Performing Rights Societies (IPRS) and Phonographic Performance Ltd. (PPL). He had earlier written about the declining fortunes of these societies in 2018. He notes how the 2012 amendment to the Copyright Law was to turn this around as the amendment allowed composers and lyricists to assign their right to collect royalties to only copyright societies. However, the effect of the same was reflected on IPRS’ finances only in 2018-19, when its revenue almost tripled from the previous year. Noting that this increase may be due to the accounting method, the other reason for the increase is said to be because of IPRS managing to build entirely new heads (licensee fees from affiliated societies in other countries and foreign streaming services) of revenue that did not exist in the previous years. The situation of PPL, however, is not comparable with its revenues being much lesser than what it was in 2009-10. This can be attributed to PPL not being recognized as a copyright society and some of the largest music labels preferring to work outside its purview. Lastly, the Indian Singer’s Rights Association’s (ISRA) track record is presented.

JGLS’ Panel Discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ [July 25]

We announced an online panel discussion on ‘Can We Reimagine International Institutions? A Third World Perspective’ that is being organized by the Centre for International Legal Studies at Jindal Global Law School. The panel is scheduled to be held on July 25, 2020, and is part of a series of events titled ‘International Law, Political Economy and COVID-19’. The panel discusses issues such as the adequate representation of the interests of the Global South in response to COVID-19, better recognition of indigenous and low-cost innovation systems. It is designed for law students, legal professionals, and others having an interest in international law and intellectual property rights. Further details about the panelists, the topic, and the access link can be found in the post here.

LexisNexis IP’s Live Webinar on ‘Patent Analytics: A Scientific Approach’ [August 6]

We announced LexisNexis IP’s webinar on ‘Patent Analytics: A Scientific Approach’ that is scheduled for the 6^th of August 2020. The webinar will discuss analytic methodologies to give insights for R&D Strategy, Benchmarking, Portfolio Management, Licensing, Mergers, and Acquisitions and more.  The webinar will be led by Tharraniiswari Gunasekaran, LexisNexis’ IP Specialist for India & SEA region. Further details about the webinar and registration can be found in the post here.

Other Developments

Decisions from Indian Courts

IPAB stays the operation of registration for ‘FK’ trademark in infringement case [15 July 2020]

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In M/s F.K. Bearing Group Co. Ltd. v Vinod Kumar and Anr, the IPAB found in favour of the applicant who was the prior adopter of the trade mark ‘FK’ and granted a stay in the trade mark registration process of the same. The applicant (a manufacturer of bearings) claimed that they had been using a trademark ‘FK’ (converted into an artistic logo) since 1969. They dealt in several countries under that trade mark and that they were a  registered proprietor for the same in India since 2004. The respondent was earlier a distributor for the applicant, engaged in the resale of applicant’s products bearing the registered trademark. However, the respondent then managed to obtain the registration of that trade mark in 2009. The Registrar of Trademarks had failed to cite the earlier identical trade mark of the applicant at the time of registration. The Court held that the applicant was the prior user and adopter of the trade mark. Hence, the applicant made a strong prima facie case in their favour and the Court stayed the operation of the registration for trademark by the esrpondent until the rectification petition filed by the respondent is finally decided.

Delhi HC grants interim relief to Reckitt Benckiser in ‘Colin’ and ‘Harpic’ trade mark infringement suit [21 July 2020]

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In Reckitt Benckiser India Pvt Ltd vs Ms Super Shine Industries, a single-judge bench of the Delhi High Court granted an interim injunction in favour of the plaintiff in an infringement suit concerning the ‘COLIN’ and ‘HARPIC’ marks. The case of the plaintiff before the Court was that the defendant had been infringing its registered trademark “COLIN” and “HARPIC” and copying its trade dress comprising of artwork in the label and packaging of its products. The defendant, on the other hand, had claimed that it was not in the business of manufacturing and selling glass and toilet lavatory cleaners, and further that such trade dress is no longer in use. The plaintiff contended that the defendant nonetheless profited from the infringing packaging. The Court agreed that the plaintiff had succeeded in setting up a prima facie case for infringement and that the balance of convenience was also in its favour. Hence, an interim injunction was granted against the defendants.

Madras HC refuses relief in trade mark infringement case concerning the mark ‘ICAI’ [22 July 2020]

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In V. Venkata Siva Kumar vs Institute of Cost Accountants of India, a two-judge bench of the Madras High Court refused to grant relief in a trade mark infringement case concerning the mark ‘ICAI’. The appeal arose out of the case wherein, as per the petitioner, the first respondent (which is a company incorporated in the year 1944) was not entitled to use the acronym ICAI, as such usage would deceive members of the public and lead them to believe that the first respondent and the third respondent (a statutory body established under the Chartered Accountancy Act for the regulation of the profession of chartered accountancy) are the same entity. The writ petition was to restrain such use and to direct the first Respondent to change its acronym. The petition was dismissed on grounds of the Petitioner not having the locus standi to espouse the cause of the third respondent, the names of the first respondent and third respondent not being identical from the perspective of the alleged violation of the CA Act (which prohibits a person from using a name or seal identical or so nearly resembling that of the CA Institute so as to be deceiving to the public). Further, the CA Act enables prosecution only on complaint by the Council of the CA Institute or the Central Government, which the petitioner was not. It was argued by the defendants that there was an alternative remedy in the case by way of initiating proceedings under the Trade Marks Act, 1999, and such proceedings should have been initiated by the registered proprietor of the trademark alone. The Madras High Court concurred with the findings and dismissed the appeal.

Delhi HC grants interim injunction in favor of the plaintiff in ‘Black Diamond’ trade mark infringement suit [23 July 2020]

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In M/S Babu Ram Om Prakash vs Mr. Roger Aoun, a single-judge bench of the Delhi High Court restrained the defendants from using the trademark ‘BLACK DIAMOND’ or any other mark which is deceptively similar to the said mark which infringes plaintiff’s trademark and copyright as also passing off its goods as that of the plaintiff. The defendant in December 2019 filed an application for registration of the trademark ‘BLACK DIAMOND’, which was the registered trademark of the plaintiff. The defendant’s products under the ‘BLACK DIAMOND’ mark were available for online sale and the plaintiff alleged trade mark infringement. The products which the defendant was selling also related to Class-3 products which were the same as that of the plaintiff’s. The Court agreed that a prima facie case had been established by the plaintiff and balance of convenience lay in their favour and thus granted the injunction.

Delhi HC stays orders passed by Senior Examiner of Trade Marks due to inordinate delays [23 July 2020]

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In M/S Aman Engineering Works vs Registrar, Trade Marks, Trademark Registry, a single-judge bench of the Delhi High Court stayed the operation of the orders passed by the Senior Examiner of Trademark for inordinate delays. The petitioner had started using the wordmark “KRANTI” and got the registration on the same as a Partnership Firm. Subsequently, the respondent filed an application for the registration of “KRANTI” as well. Objections were raised but were not attended by the respondent. Further, another application was filed by the respondent for registration of wordmark ‘B&M KRANTI’. After an alleged delay of over 25 years from the date of the Examination Report, an application came to be preferred by the respondent for review of Registrar’s decision and after an inordinate delay of 17 years after abandoning the application relating to wordmark ‘RITE KRANTI’. On the same day, another application came to be preferred for review of the decision, after an alleged inordinate delay of 16 years after abandoning the application relating to wordmark ‘B&M KRANTI’. By the impugned orders, the Senior Examiner of Trade Marks entertained the applications for review and allowed the review applications. The Court observed that the issue of the jurisdiction of the Senior Examiner to condone delay beyond the maximum period of 60 days provided under the Rules, required consideration and is also required to be tested as to how the delay of over 16 years had been condoned and the review applications allowed. Noting that the petitioners had made out a prima facie case in its favour, the Court stayed the operation of the impugned order and its consequential effects until the next hearing.

Delhi HC grants interim injunction in herbicide patent infringement case [23 July 2020]

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In UPL Ltd v Modern Insecticides Ltd, a single-judge bench of the Delhi High Court granted an interim injunction to the plaintiff to prevent the infringement of their patent rights held in the manufacturing of certain herbicides. The plaintiff was in the business of manufacturing insecticides, rodenticides, pesticides, etc. and had approached the Court alleging that the defendant had infringed its patents for an herbicide and was exporting and intending to manufacture the same for the domestic market as well. The Court held that the plaintiff had established a prima facie case in its favour. The Court thus granted an injunction restraining the Defendant from manufacturing, selling, distributing, etc., any product that infringes on plaintiff’s patent.

Madras HC grants permanent injunction in ‘Thalappakatti’ Biriyani trade mark case [24 July 2020] [Editors note, an earlier error in this summary has now been corrected]

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In M/s. Thalappakatti Naidu Anandha Vilas Biriyani Hotel v Thalapakattu Biriyani, a single-judge bench of the Madras High Court granted a permanent injunction in favor of the plaintiff with respect to the infringement of the mark ‘Thalappakatti’ Biriyani. The plaintiff’s hotel had been started in 1957 and had since gained a reputation for its Biriyani in the name of Thalappakatti Naidu Biriyani. The plaintiff claimed prior usage of the mark and name from at least 1999, though in fact the name had been used since 1957. The defendant had been using the name, except for substituting ‘u’ for ‘i’ at the end of the name, with the name Thalappkattu Biriyani. The Court granted a permanent injunction in favour of the plaintiff, restraining the defendant from infringing on the plaintiff’s trademark or in any manner passing off marks that were deceptively similar to the plaintiff’s trademark. The Court dismissed the reliefs relating to rendering an account of profits and the surrender of unused goods. [Editor’s note: An earlier version of this post mistakenly said that the Court ordered the defendant to render an account of profits, and the surrender of all unused goods. This error is regretted and has now been corrected]

Other News from around the Country

• Cipla is set to launch Favipiravir, an off-patent anti-viral drug that has shown promise in clinical trials for the treatment of mild and moderate cases of COVID-19. The cost-effective process used by Cipla for the drug’s production has been developed by the Council of Scientific and Industrial Research (CSIR).

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• A piece in The Week discusses whether the coronavirus pandemic can lead to a reassessment of vaccine patent laws.
• Jubilant Generics has received approval from the Drugs Controller General of India (DCGI) to manufacture Remdesivir, a potential cure for COVID-19.
• The Council of Scientific and Industrial Research (CSIR) has suggested regulating the price of the experimental COVID-19 medicine Remdesivir.
• Facebook has signed a music licensing deal with the copyright society Indian Performing Rights Society (IPRS) to strengthen its music library.
• A piece in The Wire discusses the changes in IP law that countries are undertaking to prioritize access to health care during the COVID-19 pandemic.

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  A piece in LiveLaw discusses the relevance of the US Special 301 Report and Global Intellectual Property Centre’s (GIPC) IP Index 2020 to the Indian IP regime and policy.

• A team of Indian researchers has come up with and filed a patent for a smart social-distancing device that gives out an alert whenever a COVID-19 patient gets too close one’s person.
• Patanjali has sought the Madras High Court to vacate the earlier injunction granted against it for the use of the mark ‘Coronil.

News from around the World

• Indonesia has adjusted its compulsory licensing guidelines in preparation for ensuring access to an eventual COVID-19 vaccine.
• Apple’s justification of the delays caused by COVID-19 for postponing a Texas patent infringement trial failed as the U.S. District Court for the Eastern District of Texas stated that it had taken sufficient steps to limit health risks for the trial to continue.

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• A piece in The Guardian deliberates on how the world needs a ‘people’s vaccine’ for coronavirus and that a big-pharma monopoly must be avoided in its production.
• Australia’s Monash University developed and filed for a patent for a new blood test that can trace coronavirus in 20 minutes.
• A piece published in the Maastricht University blog highlights the barriers created by patent law in the creation of a COVID-19 vaccine.
• Moderna lost a challenge in the US Patent and Trademark Office over a vaccine technology patent relating to lipid nanoparticle held by Arbutus Biopharma.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

We’re pleased to bring you a thought provoking post from Dr. Sunanda Bharti, on the ‘Make in India’ trademark. In this post, Sunanda examines the now famous ‘Make in India’ mark and raises the question of whether it actually acts more like a certification trademark. Sunanda is an Assistant Professor in Law at Delhi University and has written several guest posts for us, which can be viewed here.

What Kind of Trademark is ‘Make in India’? A Brief Academic Inquiry

Dr. Sunanda Bharti

Make in India logo

The definition of ‘trademark’ under section 2(1)(zb) of the Trademarks Act, 1999 includes Certification Trademarks (CTMs). At the same time, they are separately defined in section 2(1)(e). This is because though CTMs are trademarks (to be used in respect of goods/services, in course of trade), they differ from ordinary TMs in many essential characteristics.

The purpose of the present post is to briefly analyse the nature of the ‘Make in India’ TM, which is registered as a device trademark as a multiclass application in Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42. The author maintains that though the mark is registered as an ordinary TM —it ends up displaying many features of a certification mark. It’s prominent presence on the carousel of the website of the Board of Indian Standards, that owns/manages certification TMs in India, confounds the curiosity surrounding the nature of this strange TM. The following may offer some insight:

The Necessary Background

‘Make in India’ initiative was launched on 25^th September 2014 to achieve the following three objectives: (1) to increase the growth rate of the manufacturing sector; (2) to create additional manufacturing jobs in the economy; and (3) to ensure that the manufacturing sector’s contribution to GDP is increased. To achieve this, the ‘Make in India’ initiative targeted 25 economic sectors. The idea was to encourage more and more foreign companies to manufacture their products in India.

The Logo

To achieve the above end, Make in India initiative was given a face in the form of a logo, which is a silhouette of a lion on the move. It is made of cogs and symbolises manufacturing. It is registered as a device mark with trademark application number 2829230, owned by Secretary, Department of Industrial Policy and Promotion [DIPP], Ministry of Commerce and Industry, Government of India.

The Confusion

One fundamental benefit of registering a TM is that it ‘gives to the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered’. In ordinary understanding, this implies that the proprietor of the TM is supplying the market with some goods and/or services, in course of trade.

It is to be noted that though ‘Make in India’ is a registered TM—there are no goods and services provided by the Government of India under that TM. Instead, the mark is available, upon prior approval, to be put on any good manufactured in India or any service generated to cater to the stated 25 manufacturing sectors in India.

Purpose of Certification TM versus ‘Make in India’ TM: Additionally, it is also worth appreciating that ‘the purpose of a certification trade mark is to show that the goods or services in respect of which the mark is used have been certified by some competent person in respect of certain characteristics such as origin, mode of manufacture, quality etc.’

Given the above understanding, the function that ‘Make in India’ TM ends up performing, is very close to that of a certification mark. This is because unlike an ordinary trademark, it does not indicate origin by identifying the manufacturer, producer or provider of the goods or services. Instead, it conveys the message that the goods or services (on which the Lion device mark has been put) have been examined or in some way certified by the GOI (that does not trade in those goods or provide the services) to have been manufactured in India.

The very presence of ‘Make in India’ TM on a product or service is likely to give the consumer the assurance and confidence that the product has been manufactured in India, which may be key in their decision on whether to purchase a particular product/service or not. It is the submission of the author that just as a certification mark, the ‘Make in India’ mark is open to be used by various manufacturers/service providers (as per guidelines) to indicate that their products and services have certain characteristics—such as, in this case, presence of the mark would indicate that the product has been manufactured in India, with Indian resources, manpower etc; that it has contributed somehow to the growth of the Indian economy; that it has generated employment for India; that it facilitates a step closer to the achievement of ‘Aatmnirbhar Bharat’ and so on.

GOI does not trade in goods or provide the services on which ‘Make in India’ is supposed to be put: This reality is aligned with yet another feature typical of a Certification TM–section 70 of the TMA, 1999 provides that ‘a mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the provision of services of the kind certified.

Requirement of Regulations to enable use of the mark: Let us look briefly at what a typical certification mark aims at. ‘ISO, for instance, is registered under the TMA, 1999 (Trademark Application Number: 1754613) and owned by the Bureau of Indian Standards (BIS), and is a certification trademark—and its TM registration certificate expressly says so.

It is registered in class 16, which means its managing/certifying body, that is BIS, can certify whether ‘Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites etc have been made as per the standards acceptable to BIS (Bureau of Indian Standards).

The use of ISO trademark, being a certification TM is regulated in a unique manner, as required by the TMA, 1999—which requires (u/s74) that the proprietor of the concerned mark must file, with the TM Registry, regulations governing use of that certification trade mark. These regulations detail the situations in which the proprietor is to certify goods/services and authorise the use of the certification trade mark.

In a very similar fashion, the Government of India regulates the use of ‘Make in India’ TM. The Government of India has also provided the procedure for grant of permission for the use of ‘Make in India’ logo. A committee has been constituted for the purpose by the government to examine the requests (to use the logo) and obtain the approval of Secretary (DIPP). The website says that barring a few cases (in which no permission is required to use the Make in India logo—like all establishments, offices and officers of the DIPP, Government of India. etc), each case is to be considered on its merits, keeping in view the visibility, impact and how it advances the Make in India cause.

In Conclusion

The above discussion clearly shows that the ‘Make in India’ TM is (sort of) sui generis in its nature and impact. Technically, it is neither completely here nor there, and as IP scholars, it is important for us to take cognisance of that.

Source here

Postscript: It is worth mentioning that in India, there are a few marks which are mandatorily required to be put on products but are not classified as certification marks. They are not trademarks either but function more as informatory labels–like the toxicity label (under the Insecticides Rules, 1971) which identifies the level of toxicity of pesticides (see picture for reference/source)

Whether the ‘Make in India’ logo is merely an instructive mark and yet registered as a TM [?] is a food for thought for us to ponder upon. I invite your valuable comments on that.

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The world’s attention was first drawn to the copyrightability of tattoos when Victor Whitmill, the artist behind Mike Tyson’s face tattoo, sued Warner Bros for an imitative tattoo worn by an actor in Hangover II. Since then, I find that there has been a raging discussion regarding tattoo artists’ copyright over their tattoos, including issues like fixation, ownership and fair use. This post does not focus on these questions of copyrightability. Instead, it develops upon an important point raised by Devika Agarwal in her post, where she suggests that celebrities’ tattoos might form indicia of their personality. In such a case, tattoo artists’ economic as well as moral rights over their designs would inevitably clash with the celebrity’s publicity rights over it. This post explores this issue.

At the outset, in India, tattoos appear to satisfy the statutory conditions of copyrightability. Section 13(1)(a) of our Copyright Act only requires artistic works to be ‘original’ to enjoy protection. Unlike US Copyright law, there is no precondition for fixation in a ‘useful article.’ Thus, as long as the design shows sufficient originality, there is no reason that fixation on human body as a medium of expression would be an issue (this issue, as part of the larger subject of copyrightability of tattoos has been discussed in detail here and here in this blog).

However, when the tattoo bearer is a public celebrity, the tattoo becomes closely associated with her image and persona. As Devika rightly pointed out, many celebrities co-design their tattoos, adding elements that complement their personality. These tattoos then become powerful visual images that people associate with the celebrities, often becoming representative of them and their brands. When tattoos become indicia of a celebrity’s personality, they step into the realm of publicity rights.

Publicity Rights

The right of publicity is widely accepted to be a kind of IP right that protects a person against the misappropriation of their name, likeness, or other indicia of personal identity. Although publicity rights are not codified in India, there have been several cases revolving around these rights. In ICC Development v Arvee Enterprises, the court held that publicity rights arise from the right to privacy and inhere in an individual or in “any indicia of an individual’s personality like his name, personality trait, signature, voice, etc.” The Court further held, “The right of Publicity vests in an individual and he alone is entitled to profit from it. For example if any entity, was to use Kapil Dev or Sachin Tendulkar’s name/persona/indicia in connection with the ‘World Cup’ without their authorisation, they would have a valid and enforceable cause of action.” This understanding of publicity rights has been accepted and followed by many Courts subsequently, mimicking the common law right against passing off. In D.M. Entertainment v. Baby Gift House, it was observed that publicity rights entailed the right to permit or prevent the commercial exploitation of one’s likeness or attributes of one’s personality. This was further upheld in Titan Industries v. Ramkumar Jewellers and then in Tata Sons v. Aniket Singh.

Notably, in the Puttaswamy case, Justice Kaul, while discussing personality rights opined that, “The right of publicity implicates a person’s interest in autonomous self-definition, which prevents others from interfering with the meanings and values that the public associates with her.” This has been discussed further in this blog here. An individual thus has the exclusive right to authorize the commercial exploitation of his likeness or other attributes of his personality.  This is where the conflict with copyright arises.

Copyright v. Publicity Rights

What happens when a tattoo artist who is a copyright holder sues a celebrity for infringing his rights over the tattoo? While Indian courts are yet to witness such disputes, they are not unknown to US courts. Reed v. Nike and Escobedo v THQ revolve around such instances. In India, if tattoo artists were to be vested with copyright over their designs, either entirely or as joint authors with the tattoo bearer, their rights under the Copyright Act would stand at odds with the publicity rights the latter enjoys over their tattoos. Section 14(c) provides six economic rights in an artistic work, including rights to communicate the work to public, to reproduce it, to issue copies, and to make adaptations. Any attempt by the tattoo artist to exercise these rights would necessarily be an infringement of the exclusive publicity rights vesting with the individual. Even if the artist were to assign or license her rights over the tattoo to the tattoo bearer, since the latter theoretically enjoys publicity rights on it, it would imply that the celebrity is paying royalties to enjoy what is, in fact, her own.

The Question of Moral Rights

Aside from economic rights, an author of a work also enjoys moral rights, which are stipulated under section 57 of the Indian Copyright Act. Of importance, here, among the moral rights available to an author under Section 57 is the right of integrity. The author of a work can sue against any distortion, mutilation, modification or other act in relation to their work, if the same is prejudicial to her honour or reputation.

A conflict between moral rights and constitutional rights has been witnessed before in the case of Raj Rewal v Union of India (covered on the blog here). In this case, an architect petitioned against the demolition of a building he designed, claiming that the reduction of his creative corpus was prejudicial to his reputation. The court rejected the argument and held that what cannot be seen, cannot affect the author’s reputation. The first thing that follows from Raj Rewal is that Section 57 cannot prevent a tattoo bearer from concealing or removing his tattoo altogether, as the provision does not expressly prohibit removal. This leads us to yet another more pressing question: what other acts would be prohibited per Section 57(1)(b)? Can a celebrity modify her tattoo?

Raj Rewal answers this question too. The Delhi High Court held that unlike other copyrighted works, architectural work is attached to land, which is property in its own right and entitles its owner to the right to property. Right to property being a constitutional right enshrined in Article 300A, triumphs over moral rights, which are only statutory.

In India, personality/publicity rights and right to privacy are treated as two sides of the same coin. The Supreme Court in Puttaswamy elevated the status of personality rights to that of a fundamental right under Article 21. On the other hand, Section 16 of the Copyright Act declares the statute to be the only source of copyright. Applying the Raj Rewal principle, it can be assumed that publicity rights would, in all circumstances, defeat the tattoo artists’ moral and economic rights arising from the Act. The way law currently stands in India, a tattoo artist, despite having copyright over his designs would be left with no way of enforcing them.

The Way Ahead

One suggested way of tackling the conflict of overlapping rights has been to treat tattoos as works made-for-hire under Section 17. This way, the economic rights on the tattoo would belong to the tattoo bearer who has commissioned them.

In my opinion, this is a difficult proposition since designers are usually freelancers and not employees of the tattoo bearers, so their relationship may not qualify as contracts of service under Section 17(c). Like independent contractors, tattoo artists would be first owners of copyright of their work. This is why several celebrities make their tattoo artists sign waivers or assignment deeds allocating all rights over their design to them.

Another suggested route is that of an implied license (a non-exclusive license provided by the artist to the tattoo bearer), which was recognized in the recent US case of Solid Oaks v. 2k Games. However, owing to the fundamental right status of publicity rights in India, this would present the same problem of obtaining a license to exercise rights which already belong to the tattoo bearer, aside from the problems outlined by Kiran in her post.

Comparing the options, work-for-hire explanation hinged under section 17(b) appears to be most logically consistent with tattooing practice. Section 17(b) provides that for photographs, paintings, portraits, engravings and cinematograph films made “at the instance of a person”, such person owns copyright. Although none of the specified works are made on the human body as a medium, tattoos may, by some long shot, be regarded as ‘engravings.’ An amendment in Section 17(b) to include body art would ensure that both publicity rights and economic rights are vested in the tattoo bearer. However, all of these solutions, i.e., implied license and work-for-fire treatment under Sections 17(b) and 17(c) only address the economic rights overlap. The conflict between the author’s inalienable right to integrity and publicity rights still remains. Therefore, it is necessary to have legislative clarity on the demarcation between all of these overlapping rights.

With the emergence of previously unimagined mediums of expression, this issue demonstrates the importance for Copyright law to address the specific problems presented by them. The Legislature must lay down a clear ambit for publicity rights, beyond what has been generally pronounced in court decisions. Ideally, both the artist and the tattoo bearer must be prohibited from making profit solely on the basis of the fame or artistic merit of the other, respectively. This must be complemented with solutions for cases where misappropriation and legitimate use cannot be distinguished.