We’re pleased to inform you that the Hidayatullah National Law University (HNLU), Raipur, in collaboration with CAN Foundation, is organising a webinar on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ at 11:30 A.M on September 27, 2020. For further details, please read the announcement below

Webinar on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ |  September 27

Hidayatullah National Law University (HNLU), Raipur, in collaboration with CAN Foundation, is organising a webinar on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR‘ on September 27th at 11:30 A.M.

Panelists

The esteemed panelists for the webinar are Hon’ble Mr. Justice Gautam S. Patel, Judge, Bombay High Court and Hon’ble Ms. Justice Prathiba M. Singh, Judge, Delhi High Court.

Moderators

The webinar will be moderated by Mr. Chander Lall, Senior Advocate, Delhi High Court and Supreme Court of India and Mr. Parthasarathy R., Principal Partner, L & S Attorneys.

Welcome Address

The welcome address will be delivered by Prof. (Dr.) V.C. Vivekanandan, Vice-Chancellor, HNLU.

Registration

You can attend the webinar by registering yourself here: https://forms.gle/ExbWTy1EmihsRSNG6. You can also register by logging onto www.canfoundation.in.

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For the fourth time in past two months the IPAB allowed an appeal against the order of the Controller and granted patent in favor of the appellant. The IPAB through order dated 25th August, 2020, (pdf) allowed an appeal against the Controller of Patents’ (Respondent) rejection of  the University of Miami’s (Appellant) application over a pharmaceutical composition comprising “Topical Co-enzyme Q10 (CoQ 10) Formulations and Methods of use” for treatment of cancer. Among other reasons, the Controller had deemed that by introducing changes to the principle claim, the appellant “changed the direction of the invention” as under the specification on record. And that as per the present disclosure, the specification lacks technical data to establish enhancement of efficacy and thus is not patentable under section 3(d).

The Board, hearing the appeal ex-parte, overruled the Controller’s 2015 order and held that it had been passed “without applying the relevant laws”. The Board termed the order to be “vague” and regarded the claims of the appellant to be novel and inventive. Notably, the Board ruled that filing of additional documents to overcome objections is allowed under Indian patent law. In this post I will discuss the specific aspect of the dispute surrounding filing of additional documents/ data by the appellant and the respective stance of Controller and the Board on the same.

The Bench which granted the present order consisted Justice Manmohan Singh (Chairman) and Dr. Onkar Nath Singh (Technical Member (PVPAT)). It is noteworthy that despite the supposed appointment of a Technical Member (Patents) (pdf), the patent matter was heard by the Technical Member (PVPAT).

Background

The facts of the present disputes aren’t laid down clearly in either of the orders and therefore, I’d suggest the readers to go through the orders once. However, I have made an attempt to cover the relevant portion of the factual matrix here. The appellant filed the National Phase Application on 25th July 2006 (application no. 2090/KOLNP/2006). The composition was explained to comprise CoQ 10 and a pharmaceutically acceptable carrier (in this case liposomes).

Of the 37 initial claims (pdf), the first examination report (FER) raised objections to 25 claims, stating that 24 claims attracted application of Section 3(i) and that the first claim did not sufficiently define the invention. Consequently the appellant amended those claims and revised the first claim by limiting it to be directed to liposomal composition for the treatment of cancer comprising 0.01 to 30% w/w CoQ10 and a liposome for topical and intravenous administration. The appellant submitted further information on three different occasions- 25th December, 2011, 2nd September 2013 and 22nd July, 2013, post the publication of the application on 18th May, 2007, in support of the results provided in the specification.

Controller’s Order for Rejecting the Application

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The Controller put forward a short 1 page order, rejecting the application on three grounds:

1. That the additional documents submitted by the appellant to explain the post research scenario, were grossly substantive and result of further research on the specification on record – thus barred by Section 59 of the Act
2.  The revision of claim, combining the carrier liposome with active drug molecule, (CoQ10) and evidence for enhancement of activity (as proposed by further documents) was beyond the scope of specification made and was not added to the specification within the stipulated time.
3. That the specification on record lacks technical data to prove enhancement of efficacy and thus the ‘invention’ can not be acknowledged to involve an inventive step and is not patentable under section 3(d) of the ’Act.

Additionally, The controller’s order also stated that use of liposome as a carrier is already known in the art. The order further stated that even though the Controller held that the revised claim was beyond the scope of the specification and not added in time, the Controller also said that the revised claim is barred by section 3(i) (method of treatment) and thus registration of the patent in such case cannot be allowed.

Analysis of the IPAB’s Decision

Since no representation on behalf of the Controller was made, the Board solely relied on the arguments made in the appeal filed by the appellant and reiterated the same, in the order.

The Board accepted the appellant’s arguments that the Controller violated principles of Natural Justice by not making an objection on the basis of section 3 (i) and not specifying the reasons for rejecting the application on ground of sections 3 (d) and 3 (i). The order of the Controller was found to be a non speaking order. As per established law, (Board decision in Order no. 08/ 2014 (side note: can someone please suggest which order is this exactly?)) the order must include details regarding grounds for refusal, and reasons for the same.

On the issue of the expert affidavits being disregarded by the Controller, the Board said there was again a violation of Natural Justice, holding that the  additional documents to be merely supportive of the original claim, and that these claims were within the scope of application, as filed originally. The Board relied on three rulings given by US courts namely Genetics Institute, LLC. v. Novartis Vaccines And Diagnostics, In re Khelghatian, Knoll Pharmaceuticals Company, Inc. v. Teva Pharmaceuticals USA, Inc. to rule that “Filing of additional documents, data and evidence in support of the invention, to overcome the objection raised and to attack a specific objection is something which is allowed under the Patent Law on not only India but also other foreign jurisdiction”. The Board, however, didn’t mention either an Indian case law or any provision under the Patent Act, Rules to elaborate on the above.

It must also be highlighted here that the Controller under its order objected to such filing documents/ data after the “stipulated time period,” and not the filing per se. Interestingly, the Board nowhere accepts or rejects this observation of the Controller and neither does it clarify if such additional documents can be filed beyond the prescribed time period. Looking at Rule 28 A r/w Rule 28 (7) of the Patent Rules, it is clearly stipulated that “In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.” In the present case the appellant had filed the affidavits of the experts on 27th February, 2014, six months after the hearing had taken place (2nd August, 2013).

Considering the facts of the present case where neither the Controller nor the appellant adhered to the prescribed timelines, one would expect that the Board would have taken a strict stance on this issue as it has done recently in the case concerning revocation of Ibrutinib, covered by Adyasha here. However, no such observation was made by the Board.

Side Notes

Another broader observation from not just this order but some other recent orders as well is  that the Board quizzed the Controller for not acknowledging the foreign registration over the similar invention. It recently made a similar observation in Health Protection Agency v. Controller General of Patents (pdf) and in the recent Ibrutunib order (aforementioned post by Adyasha) as well. I’m not aware if this is part of a larger trend, but, it must be mentioned here that the Board  in Novartis v. Union of India, rejected this notion stating “... we can not accept the argument that patent grant in other countries would have any persuasive value on the grant/refusal of patents in India.” The Supreme Court too in the appeal, indirectly acknowledged this.

A trend which has crept in the litigation proceedings before the Board is that no representation of the office of the Controller is made in crucial hearings. In this appeal too, the Board in para 32 of the order observed that “No one appeared when the appeal was heard. No written argument was filed by the respondent. We have gone through the record as well as the facts stated in the appeal. The said facts and legal issues are not rebutted on behalf of the respondent.”

This is not the first time when no representation on behalf of the Controller is made before the IPAB. In fact on a preliminary search on the patent orders section of the IPAB website one can see that out of the total 51 orders present on the website (where are the other orders?), passed across the benches of the board, no representation on behalf of the Controller was made in any of the cases! 11 out of these 51 orders were orders concerned with appeal against the rejection of patent applications by the controller and the Board granted patents in all 11. In almost all the orders (barring few which were concerned with adjournment or withdrawal of applications), dealing with substantial issues, the Board observed that no written representation has been made by the Controller in any of them. One wonders why despite rejecting the applications and after giving reasons for it, the office of the Controller hasn’t made any representation before the Board in any of the appeals.

We’re pleased to bring to you a guest post by Varsha Jhavar, analysing a recent trademark law decision (Anil Rathi v. Shri Sharma Steeltech), whereby the Delhi High Court rejected the plea for usage of a surname in the course of trade, on the ground that the use was not in a bona fide manner.

Varsha is a 5th year student at Hidayatullah National Law University, Raipur. She recently won the second prize for the 1st Shamnad Basheer Essay Competition on IP Law that was conducted by us earlier this year.

Bona Fide or Not?: Usage of Common Surnames as Trademarks

Varsha Jhavar

Introduction

The usage of one’s surname in the course of trade cannot be restricted even by a registered proprietor, provided the use is in a bona fide manner. But, there are certain exceptions to this exception. One such exception was recently dealt with by the Delhi High Court in Anil Rathi v. Shri Sharma Steeltech (“Anil Rathi”). In this case, a single-judge bench rejected the plea for usage of a surname in the course of trade, on the ground that the use was not in a bona fide manner. What makes this case different is the existence of a family agreement governing the use of the trademark in question and the fact that the defendant was a beneficiary under it. This case brings further clarity with regard to the usage of surnames as trademarks in the course of trade. This post analyses the Anil Rathi judgement with the intention to comprehend the scope of Section 35 of the Trade Marks Act, 1999.

Factual Background

The plaintiff and defendants are engaged in manufacturing of steel products. The Rathi Foundation (the Foundation) is the registered proprietor of ‘RATHI’ trademark (the impugned mark) and the plaintiff is one of its trustees. An MoU and Trust Deed regulate the usage of the impugned mark between the members of the large Rathi Family. Defendant No. 8 (the defendant) belongs to the Rathi family and had granted licenses for the use of ‘RATHI/RATHI TMT’ mark to third parties. The plaintiff filed a suit for the infringement of the impugned mark, requesting the court to grant an ex-parte ad interim injunction restraining the impugned mark’s unauthorized use, as well to restrain the grant of licenses by the defendant. The plaintiff based his claim on the Foundation’s statutory right as under Section 28 of the Trade Marks Act as the registered proprietor to exclusively use the impugned mark and also the defendant’s contravention of the MoU and Trust Deed.

Court’s Decision

The court held that the defendant’s act of issuance of licenses in his personal capacity for the usage of impugned mark amounts to infringement, as the issuance is ultra vires the MoU and Trust Deed. The court observed that only the trustees have a right to issue licenses for use of the impugned mark and the defendant being a beneficiary of the Foundation has no right to deal with it. The defendant claimed that since his surname is ‘Rathi’, he has a right to use the impugned mark under Section 35. It was pronounced that Section 35 cannot be invoked, as it is restricted to personal use of marks and does not to extend to the grant of licenses or use by artificial entities. The use of the impugned mark by the defendant was found not to be in a bona fide manner as he not only granted licenses for its use, but the entities that it was granted to were engaged in an identical area of business as the Rathi family. The court noted that the defendant being a beneficiary cannot plead ignorance concerning the terms of the MoU and Trust Deed.

The court reiterated the well-settled principle that protection under Section 35 cannot be sought for a mark that has acquired distinctiveness, and cited this is as another reason that Section 35 could not be invoked. Additionally, the court identified the defendant’s argument of licensing of the mark with a suffix to be without merit and held that it constituted an infringement of the impugned mark. The court also clarified that the members of the Rathi family can only register individually, the prefix or suffix that they use with the ‘RATHI’ mark for their companies’ products, otherwise if registered together it would amount to infringement.

Analysis

The Anil Rathi judgement seems to be a step in the right direction. This ruling is significant as it clarifies that bona fide use requirement cannot be applied against a legally binding agreement. Section 35 of the Trade Marks Act, 1999 entitles a person to use his surname in the course of trade, it provides that:

‘Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.’

The Delhi High Court in Precious Jewels v. Varun Gems, averred that the term ‘bonafide governs the entire provision’ of Section 35. The meaning of bona fide was not discussed properly in Anil Rathi and this issue was decided based on the facts. In Skipper Limited v. Akash Bansal, the Calcutta High Court quoted with approval the interpretation of ‘bona fide’ as stated in Baume v. Moore. The court stated that bona fide means ‘honest use by a person of his own name’ with no intention to deceive or encash upon the goodwill of another trader. This interpretation could be helpful in determining the scope of Section 35.

The court also discussed the relevance of the Supreme Court’s decision in Precious Jewels v. Varun Gems (Precious Jewels) and found its facts to be different from that of Anil Rathi. The court observed that in Precious Jewels the use of the surname was bona fide in nature, as it was used as ‘part of the full name’ and the parties were engaged in the same area of business. In differentiating between the cases, the court highlighted the existence of a MoU and Trust Deed in Anil Rathi. Agreeably, the facts are different, but the reasoning in Anil Rathi seems to be lacking. In Precious Jewels, the defendants’ use of the mark ‘Rakyan’ was considered bona fide, as it was being used as a part of the full name and in Anil Rathi also the defendant licensed the use of mark ‘RATHI’ along with a suffix ‘TMT’. Thus, the ‘full name’ reasoning could work in favour of the defendants as it is similar to the facts of the present case. A point of distinction between the cases is that Anil Rathi deals with grant of licenses and not personal use.

According to the defendant’s submissions, two companies of the Rathi Family had registered the impugned mark in their names in 1975 and 1980 respectively, and later had assigned it to two trusts – the Rathi Foundation and Rathi Research Centre respectively. The defendant had raised the issue that the impugned mark could not be exclusive to the Foundation as the Trade Mark Registry had allowed it to be registered by two different entities. The court did not consider this fact in its decision, however a clarification on this issue would have been beneficial. The presence of two identical ‘RATHI’ marks on the Trade Marks Registry might have worked in favour of the defendant.

One of the arguments raised by the defendant was with regard to his granting of licenses of the use of the impugned mark with a suffix, the court did not properly address this issue and held that it was infringement. Interestingly, in 2013 the Delhi High Court decided a suit filed on behalf of Rathi Research Centre for the infringement of its mark ‘RATHI’. In this case, the defendants had used the words ‘GOLDEN RATHI’, i.e., the mark ‘RATHI’ with a prefix, for their steel products. Additionally, they had used the relevant mark as part of their corporate name. Relying on Greaves Cotton Limited v. Mohammad Rafi, the court stated that the word ‘RATHI’ forms an essential part of plaintiff’s mark and held that the it cannot be used by the defendants with prefixes or suffixes. The use of the impugned mark for the defendants’ products as well as the corporate name, was found to be constituting infringement and passing off. The plaintiff could have cited this judgment in his submissions, as the same issue was raised in Anil Rathi with regard to the infringement of the same ‘RATHI’ mark.

The Anil Rathi case helps evolve the jurisprudence on interpretation of Section 35, but the court could have further elaborated upon certain issues. This would be helpful in preventing erroneous application of the case in the future. However, this conclusion is tentative and the final decision is awaited.

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We’re pleased to bring to you a guest post by L. R. Vijaypriya, discussing the trademark registration of ‘Khadi’ in the name of a German company at the EUIPO, the cancellation petition filed by KVIC and its final outcome. Vijaypriya is presently pursuing her LL.M. in IP and Competition Law from Munich Intellectual Property Law Centre (jointly run by Max Planck Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington). She is a graduate from Christ University, Bangalore and has previously worked at L.R Swami Co., Chennai.

Khadi v. Khadi – KVIC’s Clash at the EUIPO

Vijaypriya L R

The fight to engrave Khadi as a cultural symbol and source identifier of products of India had reached the doors of European Union Intellectual Property Office (EUIPO) after a trademark application for Khadi was filed by a German company.

The term ‘Khadi’ is associated with the Swadeshi Movement led by Mahatma Gandhi and is designated to cloth woven on handlooms using raw materials spun in India. In order to facilitate the establishment of ‘Khadi’ as an ‘Indian brand’, the Khadi Village Industries Commission (KVIC) Act, 1956 was brought into force and it was given the authority to control, regulate, and authorise the use of the term ‘Khadi’ on products.

Through the years, KVIC holds trademark registration for ‘Khadi’ and its formative marks under most classes. According to the KVIC Act, Khadi, is defined as “any cloth woven on handlooms in India from cotton, silk or woollen yarn handspun in India or from a mixture of any two or all of such yarns“, and therefore, has been used by many textile manufacturers for their hand-woven cloth.

For better regulation of the use of ‘Khadi’, the Khadi Mark Regulations, 2013 were notified, according to which, no textile shall be sold as a Khadi product, without it bearing the tag from the KVIC. Further, to be eligible for such a tag, the product must be purchased from a government cleared Khadi institution. The requirements laid down for obtaining the ‘Khadi’ tag, was justified as the exclusive right of the registered proprietor of a trademark.

Further, as ‘Khadi’ has acquired a secondary meaning as a hand spun fabric of India, arguments were made to recognise it as a geographical indication (GI). In 2014, the Intellectual Property Rights Association (IPRA) had filed an application for recognition of Khadi as a GI, and if such registration was granted, it may have been declared invalid as a trademark under Section 25(a) of the GI Act. The eagerness on the decision of the GI Registry on the fate of the term ‘Khadi’ took an unexpected turn when the Applicant (IPRA) decided to withdraw their application and an order effecting the same was passed on 1st July, 2019.

Of late, KVIC has been vigilant in penalising unauthorised use of the ‘Khadi’ mark. For instance, in 2017, FabIndia was served a legal notice for using ‘Khadi’ over their products without due authorisation from the KVIC. FabIndia, withdrew their advertisement campaigns and halted the sale of products under ‘Khadi’ tag. They had filed a suit against FabIndia on the allegation of resuming illegal use of ‘Khadi’ tag. Recently, they also issued legal notice to Khadi Essentials and Khadi Global for misleading the consumers by using ‘Khadi’ on their products, domain names, and social media handles. KVIC has also taken similar action against unauthorised sale of ‘Khadi face masks’ and issued legal notice to 3 Delhi based firms for selling ‘Khadi’ PPE kits.

Khadi’s Plight in the EUIPO

KVIC, has consistently asserted their legal ownership both at a national and international front. As discussed in an earlier post on the blog here, in 2014, KVIC had filed for cancellation of the KHADI trademark under no. 010479954 (EUTM registration) in Classes 3, 21, and 31 in the EUIPO on the grounds of, inter alia, usurping the reputation of an earlier (Article 8(2), European Union Trade Mark Regulation (EUTMR)) and well-known mark ‘Khadi’ (Article 60(1)(c) EUTMR); malafide adoption causing deception and violation of public interest (Article 59(1)(a) EUTMR).The KVIC had argued with evidence that their products under ‘Khadi’ were exported to Europe prior to the EUTM application and therefore, ‘Khadi’ had acquired a status of a well-known mark within the EU as the application was in respect of disparate goods. This argument was strongly countered by stating that the brand was created in 2008 after doing a thorough market research and concluding that no product was available under the subject brand name, either domestically or imported. Further, it was also argued that, as ‘Khadi’ was defined only as a piece of cloth, while the EUTM application was for different class of products.

The Cancellation Division (CD) noted that the claims of invalidity do not fulfil the requirements of an earlier trademark set out in Article 8(2) EUTMR (similar to Section 11 of the TM Act) and the documents provided by the KVIC, does not substantiate. Therefore, the first ground of invalidity based on an earlier trademark in Article 60(1)(a) EUTMR (erstwhile Article 53(1)(a)), was dismissed.

Secondly, KVIC, had also claimed that ‘Khadi’ is a well-known mark and had acquired reputation, therefore must be granted protection as non-registered trademark in the course of trade under Article 60(1)(c) (erstwhile Article 53(1)(c)) read with Article 8(4)). As export documents evidenced only very limited shipment to 5 European countries, it failed to fulfil the requirement of more than mere local significance under Article 8(4), and therefore, even this ground was decided in favour of EU Trade Mark (EUTM).

KVIC, also raised arguments on absolute grounds of invalidity under Article 59(1)(a)) (erstwhile Article 52(1)(a)) claiming deceptiveness (Article 7(1)(g)) and against public interest (Article 7(1)(i)). On the issue of deceptiveness, the CD concluded that as ‘Khadi’ is not part of the common knowledge of the relevant public in the EU and they do not have any expectations whatsoever from products labelled as ‘Khadi’. Further, the impugned goods are far removed from textile to which ‘Khadi’ is mainly associated with, therefore, claim of deception does not hold water.

On the issue of ‘bad faith’, the CD noted that, the burden to prove bad faith was on the invalidity applicant (i.e. KVIC) and it had to be established that, there was identical/confusing similarity of the signs; EUTM proprietor had prior knowledge of the confusion; dishonest intention of the proprietor; degree of legal protection enjoyed by both the signs. The CD noted that mere prior knowledge of Indian use, does not attribute an act of bad faith as the EUTM proprietor was not aware of the strict permission requirements imposed on use of term ‘Khadi’.  Further, KVIC failed to fulfil its burden to establish that ‘Khadi’ had a reputation of its own in the EU, prior to the EUTM and the subject registration was taking advantage over this acquired reputation.

In light of the above reasoning, the Cancellation Division had dismissed the cancellation application. The KVIC, appealed against the decision to the Boards of Appeal, which confirmed the findings of the Cancellation Division by order dated 30st June, 2017. This was further confirmed by the German General Court in their order dated 29th November, 2018.

As a measure to protect the rights over ‘Khadi’, KVIC is leaving no stone unturned and have filed a cancellation application on grounds of non-use on 31st May, 2019, which is pending hearing. In order to protect ‘Khadi’ globally, KVIC has obtained WIPO registration under 1272626 and an EUIPO application no. 018075754 was filed in June 2019 and is pending office action. These global applications are a step towards establishing an Indian brand overseas and ensuring that Indian trademarks are not diluted abroad.

The proactive steps taken by the KVIC may help in ensuring that Khadi is not misappropriated in the same way as Turmeric and Neem. It is time that the Traditional Knowledge Digital Library (TKDL) includes traditional handicraft works like Khadi in addition to medicines, knowledge of yoga, etc. and the database is made easily accessible to all IP Offices.

We’re pleased to inform you that the Law Gazette is organising its 1st National IPR Quiz Competition for law students on October 4, 2020. The deadline for registration is October 3, 2020. For further details, please see the announcement below:

TLG’s 1st National IPR Quiz Competition 

The Law Gazette presents its 1st National IPR Quiz Competition in the memory of Late Professor Dr. Shamnad Basheer, an eminent Indian legal scholar and founder of the blog SpicyIP as well as IDIA, a trust which works for making legal education accessible for underprivileged students.

We will be donating a part of the revenue that we raise from this competition to IDIA for the upliftment of underprivileged students seeking legal education.

Structure /Eligibility/Registration

a) The competition will be conducted on the 4th of October, 2020.
b) There shall be no negative marking for incorrect answers.
c) Participants shall participate in an individual capacity. Team participation is not under the scope of this quiz.
d) All the students of 5 year or 3 year law courses are eligible to participate.
e) The interested candidates shall register themselves here and pay a nominal participation fee of ₹50/-.
(If you cannot access the hyperlink in this form, please visit our Instagram page @thelawgazette or our website http://www.thelawgazette.org. You can also contact us on +918764003560 for more information or any queries)
f) The registration shall close on 3rd October, 2020 by 11:59 pm.
g) The Quiz will start at 12 noon sharp on 4th October, 2020. No candidate will be given extra time.

Theme

The quiz will be based on intellectual property rights (IPR) – current affairs, recent and landmark judgments, etc.

Rules & Regulations

a) A link shall be provided 15 minutes before the Quiz, on the registered e-mail id of the participant.
b) This link should not be shared with others, as it is unique to the participant to maintain the confidentiality and spirit of the quiz.
c) The participant cannot re-attempt the quiz once they have submitted the form. Please be careful as the form can be submitted only ONCE.
d) The link shall be active for a time duration of 07 minutes ONLY. The participants are expected to complete the quiz within that period.
e) Submissions post the allotted time shall be disqualified from the competition.
f) The results declared would be final and the authority vests with the organizers to change or modify the same.

Guidelines

a) This Quiz will be an online quiz conducted on Google platform.
b) There will be 20 questions in the Competition.
c) The Quiz will include both MCQs and one word questions.
d) Each participant will get a maximum time of 7 minutes to complete the quiz.
e) No hints will be provided to the contestants.

Marking Scheme

a) Two marks will be awarded for every correct answer.
b) There will not be any negative marking in the quiz.
c) No marks will be given for unanswered questions.
d) In case of tie, the participant with more one word correct answers will be awarded higher rank.

Pre-requisites

a) The participants are expected to have a stable internet connection.
b) A participant is advised to use a laptop or PC for the quiz.
c) Any technical glitches or ambiguity faced by the participant due to connectivity issues shall not be entertained by the organizers.

Prizes

a) The top 3 winners will secure an Internship at ARENESS Law and shall be awarded a Certificate of Merit.
b) Additionally, the winner shall be awarded a Cash Prize of ₹1000/- along with the Certificate of Merit.
c) The 1st Runner-Up shall be awarded a Cash Prize of ₹500/- along with the Certificate of Merit.
d) The 2nd Runner-Up shall be awarded a Cash Prize of ₹300/- along with the Certificate of Merit.
Each participant will be provided with a Certificate of Participation.

Registration Details

The registration form of the competition is here.
The participants shall upload a screenshot of their transaction receipt while registering.

Payment Details

Payment has to be made by scanning the QR Code or by sending it to the UPI ID/Payment no. through PhonePe, GPay, or PayTm application.

Payment No. – 7544813155

UPI ID – 7544813155@paytm

For QR Code, please see page 3 of the competition guidelines here.

Contact Details

For any further information or clarifications, reach out to us at workspace.tlg@gmail.com.

We’re pleased to inform you that Lawctopus is offering an online certificate course on Intellectual Property – Law and Practice from October 1 to December 30, 2020. The deadline for registration is September 30, 2020. For further details, please read the announcement below:

Lawctopus’ Course on Intellectual Property – Law and Practice 

With the rapidly developing technology and inventions and the increasing number of businesses, every year, protection and enforcement of intellectual property have become of utmost importance. The legal community is and will play a big role in safeguarding the rights of the creators, businesses and inventors.

Theoretically sound, and practically wholesome this course will tell you all you need to know to begin developing your interest, expertise, and practice in IP Laws.

If you complete this course thoroughly, you will be on your way to starting your IP practice or ace any related internships.

Who is this course for?

• Undergraduate and postgraduate students of law.
• Undergraduate and postgraduate students of any field, especially science, technology, and management, who are interested in IP Laws
• Young lawyers who want to revise the fundamentals of Intellectual Property Law.
• Entrepreneurs, Business Heads who wish to gain an understanding of Intellectual Property Law.
• Legal academicians who want to gain a practical understanding of the Intellectual Property Law.

Duration

3 months

Course fee

Rs. 8400 + 18% GST

Mode of learning

• The course is completely online and self-paced (with deadline-based assignments)
• Recorded video lectures
• Text-based modules and reading resources
• Assignments + Feedback
• Online based discussion forum for doubts resolution and peer-to-peer learning
• 10-12 live sessions with subject experts. (The schedule for live lectures is announced before-hand. Live lectures are also recorded for reference of those who are unable to attend it live).

Course Structure

Module 1: Patents- Understanding Patents, International & Indian Patent Regime

Module 2: Patents-Subject Matter Eligibility

Module 3: Patents-Procedure for obtaining, Revocation and Opposition

Module 4: Patents-Rights and Maintenance, Protection and Enforcement- Infringement and other remedies

Module 5: Patents- Assignment, Licensing and Working

Module 6: Patent Practice: See and Learn how things really work!

Module 7: Trademarks- Introduction & Clearance Search

Module 8: Trademark- Registered and Unregistered & Process for Registration

Module 9: Trademarks – Refusal, Examination and Opposition, Post Advertisement Procedure & Well-Known Trademarks

Module10: Trademarks – Infringement, Customs Recordal and Madrid Protocol

Module 11: Trademark Practice: See and Learn how things really work!

Module 12: Copyright- History and theoretical foundations & Introduction

Module 13: Copyright- Registration Process in India

Module 14: Copyrights- Assignment and Licensing

Faculty, Researchers, Course Contributors

Our faculty consists largely of quality experts, who have been there and done that. Patent lawyers, copyright examiners, people who have actually got patents for their clients have developed the study material and will teach in the live classes.

We also have some academicians to ensure that our modules are theoretically rigorous and sound.

Further details on each of the modules, course contributors and add-on benefits can be found on the website here.

Registration

Please click here to register for the course. The deadline for registration is September 30, 2020.

Contact

If you have any questions, please leave a comment on this post or email at courses@lawctopus.com.

Call: Aunnesha Dey, Learning Manager, +91 9753571646 [10:30 am to 8 pm]

Topical Highlight

University of Miami Wins Appeal at IPAB over Cancer Drug Patent ‘Coenzyme Q10 Formulations and Methods of Use’

Praharsh discussed the IPAB’s order allowing an appeal against the Controller of Patents’ rejection of the University of Miami’s application over a pharmaceutical composition for treatment of cancer. The Controller had rejected the application stating, among other things that: a) the additional documents submitted by the appellant to explain the post research scenario were grossly substantive and result of further research; b) the revision of claim was beyond the scope of specification made; and c) the specification on record lacks technical data to prove enhancement of efficacy. The Board held that the Controller violated principles of Natural Justice by not specifying the reasons for rejecting the application on ground of sections 3(d) and 3(i). It further held that the additional documents were merely supportive of the original claim and were therefore within the application’s scope. Praharsh points out that despite the fact that neither the Controller nor the appellant adhered to the prescribed timelines the Board did not clarify on this issue. Nor did it take any strict action. Additionally, he notes that the Board acknowledged the foreign registration of a similar invention, despite it being held by the Board in Novartis v. UoI that such registration holds no persuasive value. He finally notes the increasingly common trend of the Controller’s office not making any representation before the Board in several such appeals.

Thematic Highlight

Khadi v. Khadi – KVIC’s Clash at the EUIPO

Image from here

In a guest post, L. R. Vijaypriya discussed the trademark registration of ‘Khadi’ in the name of a German company at the EUIPO, the cancellation petition filed by KVIC and its final outcome. She begins by recounting the government’s efforts to establish the cultural symbol of ‘Khadi’ as an ‘Indian brand’, by setting up the Khadi Village Industries Commission (KVIC) as an the authority to control, regulate, and authorise the use of the term ‘Khadi’ on products. She explains the measures taken by KVIC over the years. In particular, KVIC had recently filed for cancellation of the KHADI trademark in EU. However, the Cancellation Division held that the claims of invalidity do not fulfill the requirements of an earlier trademark per EUTMR. Further, as export documents evidenced only limited shipment to 5 European countries, it failed to meet the standards of a well-known mark. On the issue of deceptiveness, it concluded that as ‘Khadi’ is not part of the common knowledge of the relevant public in the EU. Lastly, it noted that mere prior knowledge of Indian use, does not attribute an act of bad faith. Vijaypriya notes that despite loss in this case, KVIC has filed a cancellation application on grounds of non-use on 31st May, 2019, as part of its proactive measures to protect the rights over ‘Khadi’, worldwide.

Other Posts

Online Session on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ [September 27]

We informed our readers of the online session on ‘Internet Infringement Impacts: Transborder Reputation & Jurisdiction under IPR’ organized by Hidayatullah National Law University (HNLU), Raipur, in collaboration with CAN Foundation, at 11:30 A.M on Sunday, September 27, 2020. The session hosted Justice Gautam S. Patel of the Bombay High Court along with Justice Prathiba M. Singh of the Delhi High Court. Hon’ble Justice Patel used this opportunity to pay tribute to Prof. Basheer and the legacy he carved out in terms of access to education through IDIA, as well as his contributions to the study and advancement of intellectual property law and his brainchild, the SpicyIP blog. The recording of the session is available here.

Bona Fide or Not?: Usage of Common Surnames as Trademarks

In a guest post, Varsha analysed the case of Anil Rathi v. Shri Sharma Steeltech, whereby the Delhi High Court rejected the plea for usage of a surname in the course of trade. An MoU and Trust Deed regulate the usage of the RATHI mark between the members of the Rathi Family. The court found that the defendant’s act of issuance of licenses in his personal capacity for the usage of impugned mark amounts to infringement, as the issuance is ultra vires the MoU and Trust Deed. The court rejected the defendant’s Section 35 argument, i.e., he could use the mark as that was his surname. It held that Section 35 of Trade Marks Act 1999 is restricted to personal use of marks and does not to extend to the grant of licenses or use by artificial entities. Varsha compares this case to that of Supreme Court’s decision in Precious Jewels v. Varun Gems, pointing out that the court’s rejection of the ‘TMT RATHI’ mark on grounds of it being different from a full name mark might not be completely sound. Finally she refers to a previous decision of Delhi HC where it was held that the word ‘RATHI’ forms an essential part of registered mark and it cannot be used by the defendants with prefixes or suffixes, pointing out that Anil Rathi failed to cite this.

The Law Gazette’s 1st National IPR Quiz Competition for Law Students [October 4]

We announced for our readers the Law Gazette’s 1st National IPR Quiz Competition for law students on October 4, 2020, which is to be held in the memory of Late Professor Dr. Shamnad Basheer. The deadline for registration is October 3, 2020. Further details regarding the competition can be found on the post.

Lawctopus’ Online Certificate Course on Intellectual Property – Law and Practice [Oct 1 – Dec 30]

We notified for our readers that Lawctopus is offering an online certificate course on Intellectual Property – Law and Practice from October 1 to December 30, 2020. The deadline for registration is September 30, 2020. Further details regarding the competition can be found on the post.

Other Developments

Decisions from Indian Courts

• IPAB in Ram Chandra Maurya v. Union of India dismissed a petition seeking to restrain the defendants from manufacturing engines, by using complainant’s copyrighted literary work titled, ‘Motions of 4th& 5th law and Motions of 6th Law’ on grounds of it being beyond the scope and power of the Copyright Act [September 14, 2020].
• Punjab & Haryana High Court in Vikas Jain & Anr. v. State Of Drugs Controller & Ors. directed all parties, involving members of the same family on both sides, to maintain status quo ante with regard to the manufacturing rights of the disputed trademarks ‘COSMO SILKY’ and ‘COSMO’, until the final adjudication of pending cross-suits before Delhi High Court [September 18, 2020].

• Image from Wikimedia commons

  Delhi High Court in Living Media India Limited & Anr. v. www.News-Aajtak.co.in noted the extensive use and awareness of the plaintiffs’ ‘AAJ TAK’ trademark and directed that the websites/domain names of www.news-aajtak.co.in, www.aajtaknewsdaily.com, www.newsaajtaklive.com, www.aajtakreport.com be blocked/suspended and the uploads made on various social media platforms administered by them that include infringing material, be taken down [September 24, 2020].

Other News from around the Country

• Acting upon an order issued in response to several petitions filed by copyright societies, music producers and broadcasters, IPAB has issued a Public Notice inviting suggestions from interested persons with regard to the fixing of royalties for communication of Sound Recordings to the public by way of broadcast through Radio under section 31D of the Copyright Act, 1957.
• The Indian Intellectual Property Office’ Annual Report (PDF) for year 2018-2019 is now available.
• Chakhesang Women Welfare Society (CWWS) filed a complaint against fashion designer Ritu Beri and the Tribal Co-Operative Marketing Development Federation of India (TRIFED), Ministry of Tribal Affairs, for alleged infringement of registered Geographical indication in Chakhesang shawls.
• India and Denmark signed a Memorandum of Understanding to increase cooperation in the field of IP rights by exchanging best practices and other collaboration.
• Khadi and Village Industries Commission forced e-commerce portals Amazon, Flipkart, Snapdeal and others to remove over 160 web links selling products in the brand name of ‘Khadi’.
• A piece in Medianama discusses India’s position of having the maximum number of TikTok videos removed between January and June 2020 at a whopping 3,768,292 in number.

News from around the World

• WIPO launched ‘WIPO Lex-Judgments’ a New Free Database of over 100 judicial decisions on Intellectual Property law from 10 countries and available in 6 languages.
• The High Court of England & Wales upheld two decisions of the UKIPO in the DABUS – AI Patent case, finding that a machine does not meet the requirement of an ‘inventor’ under the Patents Act 1977, and only a person can be deemed to be so.

• Image from here

  Facebook has announced an update to its ‘Rights Manager’ tool that will enable photographers to claim ownership over their images, identify when those images have been used without permission, and issue takedown requests.

• Peter Paterno, an attorney for the Doobie Brothers, sent a creatively drafted cease-and-desist notice to comedian Bill Murray, accusing him of copyright infringement over the use of the band’s song, ‘Listen to the Music’, featured in a commercial for Murray’s line of golf apparel.
• A piece in Hollywood Reporter discussed Justice Ruth Bader Ginsberg’s legacy in US copyright law.

We’re pleased to inform you that Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT), Cochin, is organising a webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicines’ on  6th October, 2020. For further details, please see the announcement below:

Webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicine’ | October 6

Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT), Cochin, is conducting a national webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicines‘ on Tuesday, 6th October, 2020, from 4.00 pm – 5.30 pm.

About the Webinar

Patents grant a limited monopoly to the patent owner from unauthorised use of the patented invention. Patents pose an insurmountable barrier to affordable access, particularly in the context of medicines. Pharmaceutical companies often abuse the patent monopoly by charging exorbitant prices for patented medicines. This abuse makes medicines resulting in the denial of efficacious treatment for life threatening diseases to a substantial section of the patient population. In India, Drug Price Control Order (DPCO) 2013 empowers the National Pharmaceutical Pricing Authority (NPPA) to cap the maximum retail prices of medicines in the National List of Essential Medicines (NLEM). Further, DPCO also mandates the NPPA to fix the prices of any medicines in the public interest. Similarly, DPCO also prohibits increases in prices of those medicines which are outside the price control beyond 10% in a year.  At the same time, DPCO 2013 exempted indigenously developed new medicines patented under the Indian Patents Act 1970, from price control. While the original exemption from price control included only those patented medicines which are outcomes of R&D carried out in India, the amendment in 2019 expanded the scope of the exemption to include all the patented medicines. This amendment has the potential to make the DPCO 2013 redundant.

The aim of the webinar is to deliberate on the issue of price control for patented medicines in India. The resource persons are experts from the CSO/NGOs who advocate changes in policy particularly to make medicines affordable.

Resource Persons

1. Mr. Gopakumar K M, Senior Researcher, Third World Network (TWN) – Chair
2. Dr. Sakthivel Selvaraj, Director, Health Economics, Financing and Policy, Public Health Foundation of India (PHFI)
3. Ms. Pratibha Sivasubramanian, Legal Researcher, Third World Network (TWN)

Program Coordinator: Dr. I. G. Rathish, Assistant Professor, IUCIPRS, CUSAT
Student Coordinators: Adv. Sreenath K P, LLM (IP) – PhD, IUCIPRS, CUSAT; and Adv. Alfi Anwar, LLM (IPR) – PhD, IUCIPRS, CUSAT

Procedure for Registration

Please fill the registration form: https://forms.gle/Js4ykJNe2aiE3Eia8 and submit.

A link for joining the webinar will be sent to the registered email a day prior to the scheduled webinar. Registration is free and an e-certificate will be issued to the participants who attend the webinar. The webinar will be conducted on the Google Meet platform.

Image from here

The National Digital Library of India (NDLI) has come up with India’s first Copyright Guide for Indian Libraries. The stated objective of NDLI is to educate, enable and empower the youth using quality knowledge and learning resources while harnessing the power of the digital medium. This Guide has been created, keeping in mind our current age where new technologies and gatekeepers of knowledge make it difficult for librarians to understand and deal with multiple issues pertaining to copyrights.

It is a crisp 20 page document available here for public review and NDLI has invited feedback on it by 30^th September, 2020 via a Google form posted on the same page. The feedback is meant to source focused and relevant views for the prospective users of the Guide, and this feedback is solicited through 9 questions provided by the NDLI.

Overall, the Guide seems to have been drafted, keeping accessibility in mind. To that effect, it tries to simplify the complicatedly drafted provisions in the Indian Copyright Act pertaining to library exceptions. It purports to be a skeletal explanation of the law as it stands and the rights implicated in the functions of the library. However, this is no easy task and while the Guide has done an admirable job, there is room for some improvement and clarification. Regardless, it is to be kept in mind that the Guide is meant to be an informative or indicative, rather than analytical document. For the purposes of this two-part post, I will look to respond to some of the questions posed in this feedback questionnaire. I will also analyse how the templates and declarations meant to scope permissible and impermissible uses, can contribute to a permissions and clearance culture that inevitably restricts fair dealing. It would be wonderful if more informed readers and stakeholders could also add their views through feedback or in the comments below.

 What additional aspects could be included in the introductory part of the guide?

The introduction merits some reference to the role of libraries in democratising access to knowledge, in a knowledge importing developing country like ours. Rhetoric assumes importance in constructing positive rights in the public domain instead of negative exceptions limited to the fair dealing section which comes much later in the Guide. For lay readers, the Guide introduces the rights of creators and the objectives of the Copyright Act without introducing any corresponding responsibility for libraries furthering the rights of users. The state aims to open up access to information as a public good for all via libraries with the objective of improving overall social welfare. This should find some mention upfront in the introduction, for the readers’ ease of navigation. The public domain has also been defined without any reference to user rights.

Does the section on “Non-commercial public library” need any further elaboration? If so, any specific suggestions?

Soon after the Copyright (Amendment) Act, 2012, Ujwala Uppaluri had noted in the context of its references to libraries that more than anything, clarity within existing provisions of the law was needed most direly. This is because many operative terms in definitions have been left undefined. The 2012 amendment replaced ‘public library’ with ‘non-commercial library’ in Section 52(1)(o). This is made troubling by the fact that a simple reference to libraries can be found in Sections 52(1)(p) and 52(1)(z)(b) whereas Sections 52(1)(n) and 52(1)(o) mention ‘non-commercial public libraries’. The only qualifier defined in the Statute is ‘non-profit libraries’ in Section 2(fa). This leaves us with the understanding that these qualifiers are distinct from each other since they evidence legislative intent of using different terminologies for different sections.

The Guide defines non-commercial library to include any library “(a) that is either maintained/ established/aided by the Government or notified by the Government as a public library or whose primary activities are the collection and preservation of books, periodicals and other documents and the provision of library services and (b) which makes its collection accessible to the public.”

This definition has not been cited and is probably culled out by the authors themselves in the absence of any statutory definition. It is crucial to mention this. Central Legislation such as the Delivery of Books and Newspapers (Public Libraries) Act, 1954 refers to ‘public library’ as a library designated for the state to ensure that publishers deliver their works, including all books, newspapers and serials, as part of their legal deposits with the libraries. Moreover, fourteen state public library acts have variously defined public libraries.

The definition in the Guide is not very clear regarding both its sources and content. In this regard, it is evident that membership conditions such as paid membership have no bearing on determining whether the library is accessible to the public or not. However, it would also help to mention more illustrations, for example some membership or eligibility conditions apart from payment that could impact the library’s being a non-commercial public library. Notably, The Statements of Objects and Reasons of the 2012 Amendment Act in its notes on clauses mentions that, “Clause (o) of sub-section (1) of section 52 is proposed to be amended to extend its applicability to non-commercial public libraries as well.” (page 24). This could mean that the Amendment in the clauses that mention non-commercial public libraries were poorly drafted but meant to be inclusive of public libraries.

Are all the templates in the guide clear for implementation?

The templates for record-keeping are easily understandable and fit to be used. However, the entire exercise of designing templates to restrict libraries’ liability raises some more structural questions. This is because it constitutes a very specific interpretation of the law, not necessarily warranted by statute or case law. In the United States, libraries are allowed to give copies to individuals if there is no indication that these copies will be used for prohibited purposes [Title 17, United States Code, Section 108(d)(1)(e)(1)]. The presumption is that users will make use of these copies for permitted purposes and libraries are not liable unless they have notice of infringement. The position in the United Kingdom in contrast is that the librarian must satisfy a more proactive role in ensuring that the copies are made only for non-commercial purposes or private study [Copyright, Designs and Patents Act, 1988, §39(1) (U.K.)]. In this regard, there is nothing in the Indian law (statutory or case law) to say that our statute must be interpreted more restrictively (qua users) like that of the U.K. instead of requiring notice for libraries’ liability, like in the U.S. This is discussed in greater detail in the next post, given Indian Courts’ expansive interpretation of fair dealing purposes as user rights.

It is particularly important to note here that while deliberating the libraries exceptions and reproduction rights as part of the WIPO’s Standing Committee on Copyright and Related Rights, India had categorically stressed upon obviating any upper limits on the scale of copying, which India argued should entail a determination based upon the purpose of the use as per fair practice acknowledged by Article 10 of the Berne Convention instead of the number of copies made.

In contrast to this, the Guide’s template on making work accessible to disabled persons prohibits storage of works on multiple devices except for creating a backup on servers. These templates, (except the ones for internal recordkeeping) where they serve as declarations by librarians or users regarding the number of copies allowed to be made, can be rights restrictive. In this regard, Section 52(1)(o) of the Act allows the person in charge of a non-commercial public library, or persons acting under his or her direction, to make up to three copies, for the use of the library, of a “book” that is not available for sale in India. Second-hand books available from on-line retail or serendipitously from a second-hand bookseller should not be considered as being available for sale in India. Here, it may be useful to refer to the applicability of the first sale doctrine to physical and digital sales, in determining both whether they can be considered ‘available for sale in India’ and the rights of libraries over the books purchased (I have explored this issue in some detail here.) Books that are priced beyond the means of most people are not available for sale in India as per the Guide, but the source/footnote for this is yet to be inserted.

Is the section on “Display” sufficiently explained for a librarian to decide on how to implement this provision in the library?

This section provides that, “There should not be any objection to displaying the jackets, bibliographical details and the like in the premises of the institution, or by uploading the same on any index or as particulars of new acquisitions onto the institution’s website or in leaflets for members.” It is important to note here, particularly in the context of digital indexing that meta-data is often proprietary and to be able to use it, libraries may have to incur additional costs.

Does the section on technology circumvention need and further elaboration?

Section 65B pertaining to Digital Rights Management has been explained correctly by the Guide. However, Section 65A pertaining to Technological Protection Measures (TPMs) is explained as providing “protection against circumvention of effective technological measures (in effect, creating use or access controls to works uploaded on the Internet) that may be applied to copies of a work.” This crucially omits that as per the Act, in order to be penalised under this section, the circumvention of an effective TPM must be done “with the intention of infringing” the rights under the Copyright Act. As a result, breaking TPMs for fair dealing would not attract punishment under this Section unlike what is conveyed by the Guide.

Other concerns posed by the Guide regarding the section on fair dealing and user rights will be discussed in Part II of this post.

Please click here to view Part II of this post.

This post is in continuation to my previous post (here) on the National Digital Library of India’s Copyright Guide. Here, I discuss how the Copyright Guide’s Templates of Declaration demonstrate a flawed understanding of fair dealing and user rights under the Indian Copyright Act.

Is the concept of “Fair Dealing” in the Indian Copyright Act related to Libraries clearly explained? If not, please indicate the aspects that are not sufficiently clear.

The Guide adopts the progressive legal ontology of calling permissible uses of copyrighted works under Section 52(1)(a) [erroneously referred to as S.51(1)(a) in the Guide] of the Indian Copyright Act as user rights. Recognising lawful uses of copyrighted material as user rights can operate as a means to limit the owner’s control over copyrighted material in favour of the content user and the public. However, the Guide does not extrapolate this concept or seem to be on board with its adoption into practice beyond the use of mere semantics.

User Rights in India

Justice Endlaw in the landmark Delhi High Court judgment in the DU Photocopy Case, cited an article to emphasise the similarity of free speech and copyright goals by noting that copyright is meant to foster and not restrict the “harvest of knowledge, motivate the creative activity of authors and inventors in order to benefit the public.” This reasoning evidently highlights that the goal of copyright is served insofar as compensation to creators operates as a means for greater public welfare. The exercise of user rights under Section 52(1)(a) of the Copyright Act serves an important social purpose. Users are entitled to exercise these rights to the extent justified by their stated purpose. User rights were given an extensive interpretation in this case by relying on the German Federal SC in Re. the Supply of Photocopies of Newspaper Articles by Public Library [(2000) ECC 237] to bolster the conclusion that “the freedom to operate and the reproduction rights of authors were restricted in favour of freedom of information.” Justice Endlaw noted in this regard that no extraneous limitations could be read into Section 52 by Courts inquiring into whether the rights of the authors were unreasonably prejudiced since the legislature would be presumed to have already determined otherwise by enacting Section 52 and the purposes mentioned therein.

The Copyright Guide makes the user’s intention irrelevant to fair dealing. In its examples of fair dealing under the user rights section, it is mentioned that: “to the extent that the point can be made effectively without extracts in a piece of criticism and review, extracts should not be used. Fair dealing in the case of reporting current events is particularly restricted: if an event can be reported without extracts from any in copyright work (e.g. in reporting the death of an author or performer, or writing an obituary, the use of extended extracts of the author’s work is not permissible.)” The Guide notes that due attribution in these cases would not make the dealing fair. Consider an example: The extracts may not be necessary for my criticism, review, research etc., i.e. I can still effectively make my point by omitting them or resorting to alternatives, such as paraphrasing. However, would that make their use unfair? No, to the extent that the extracts are justified by (and not necessarily necessary for) the purpose of criticism, review, research etc., my use is fair. Every bit of material I use may not be necessary for my criticism but it can further my criticism as I intend to develop it, and is thus fair.

Templates and Fair Dealing

Now against this context, the template for declaration by users/patrons of the library is meant to fill a gap in institutional frameworks that do not ensure that users fill forms that follow the “overall ethos of private use and research.” Point two on the form for photocopying pages from a copyrightable work require a declaration that “To the best of my knowledge no other person with whom I work or study has made similar request for substantially the same content.”  Section 52(1)(a) pertains to fair dealing for the purpose of private or personal use, including research. Now, even if I know that someone else I study with has a photocopy of the said material, why would it preclude my obtaining a photocopy of the same for my private study or research? Point 3 requires me to declare that, “I will not distribute a copy of it to any other person and will not make multiple copies of the same.” The final declaration requires me to affirm that all the declarations I have made are true, and if not, I shall be liable for copyright infringement.

Research often has collaborative elements and flourishes from discussing ideas pertaining to the same text’s interpretation with each other. the Canadian Supreme Court in the landmark case of Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), held that the notion of ‘private’ in ‘private study’ should not be construed in a way that requires users to “view copyrighted works in splendid isolation.  Studying and learning are essentially personal endeavours, whether they are engaged in with others or in solitude.  By focusing on the geography of classroom instruction rather than on the concept of studying, the Board again artificially separated the teachers’ instruction from the students’ studying.”  This goes on to corroborate that multiple users having copies of the copyrighted work in question and working together would still be said to engage in private study because of the personal nature of the endeavour of studying and research. This is a possibility that the Copyright Guide’s template for declaration does not envisage. Some thing as innocuous as sharing photocopies of the copyrighted work with your study group at University and discussing ideas and arguments for your research paper would squarely fit within fair dealing for private research but be disallowed by the declaration under the Copyright Guide. Such copies would crucially facilitate access to knowledge and intelligent conversations among groups of people and have no impact on the markets of the copyrighted works. Further, in the case of CCH Canadian v. Law Society of Upper Canada, the Canadian Supreme Court had noted that the amount of material copied has to be assessed in light of the purpose of use. It held that for purposes such as research and private study, copies of entire academic works may be required to be made.

Conclusion

Finally, the determination of fair dealing based on the unique circumstances of each case lends itself to uncertainty which has the tendency of curtailing user rights when in doubt, in order to avoid liability. This risk aversion contributes to a clearance and permissions culture. These declarations may constitute contractual waivers of some part of one’s user rights, which as I have analysed here, is opposed to public policy. It can also result in negative externalities, chilling free speech and fair dealing. This can ultimately constrain the scope of user rights as people increasingly waive them away via declarations as preconditions to accessing library resources. This would make their use absent permission less routine and eventually less fair, until it is not considered fair use at all due to a doctrinal creep in the understanding of user rights altogether.

The author thanks Akshat Agrawal for his help with these posts!

The SEP negotiation framework is a multi-faceted one since it involves Patent Law, Competition Law and Contract Law considerations. India does not have a SEP negotiation framework as laid down by the CJEU in Huawei v ZTE. [The Delhi High Court, in Ericsson v CCI, has made a reference to the CJEU judgment in Huawei v ZTE].

It is not that the CJEU judgment has removed all the ambiguities in the SEP negotiation framework. On the other hand, the CJEU judgment has set out a framework which is subject to the interpretation of the national courts of EU. The Federal Court of Justice of Germany (BGH) has delivered a judgment interpreting the Huawei v. ZTE framework. The judgment is quite significant considering the catena of SEP-related cases decided by various German courts. This is the first judgment of BGH on a FRAND dispute post – Huawei v. ZTE. A detailed summary is available here. This post is only meant to highlight some key aspects.

Sisvel v Haier, KZR 36/17

On 05 May 2020, the German Federal Court of Justice delivered a landmark judgment that interpreted the FRAND negotiation framework laid down by the CJEU in Huawei v. ZTE.

Key Highlights

The BGH clarified that a patent right will not ipso facto create a dominant position.[1]

The BGH cautioned that the conduct of infringer should evince genuineness and seriousness as far as FRAND licensing negotiations are concerned.[2] For e.g, conditional declaration of willingness can indicate absence of seriousness on the part of the infringer. [3]

The infringer must be presented with sufficient (and not detailed) information which will enable the infringer to assess the allegation of infringement.[4]

The patent holder is required to provide information on computation of royalty only after the expression of willingness by the infringer. [5]

FRAND royalty rate is not an objective number; it can be a range. [6]

Portfolio licensing does not by itself indicate abuse of dominant position. It can amount to abuse of dominant position if certain conditions are met. [7]

On computation of damages, FRAND royalty can be the basis only when the infringer was a willing licensee [8]

[1] Paragraphs 56, 57, 58

[2] Paragraph 83

[3] Paragraph 96

[4] Paragraph 98

[5] Paragraph 99

[6]  Paragraph 81

[7] Paragraph 78

[8] Paragraph111

[This post was co-authored by Varsha Jhavar and myself. Varsha is a 5th year student at Hidayatullah National Law University, Raipur. She recently won the second prize for 1st Shamnad Basheer Essay Competition on IP Law that was conducted by us earlier this year. She has also guest blogged for us earlier here.]

Pic from here

On December 24^th, 2019, the Delhi High Court had granted an ad-interim injunction in favour of Bristol Myers Squibb Holdings Ireland (BMS) for the infringement of patent number 247381 associated with the drug ‘Apixaban’ by Indoco Remedies Ltd.’s (Indoco) ‘APIXABID’. Recently, Indoco had approached the Delhi Court on ‘public interest’ grounds, requesting permission for the sale of 58,000 strips of Apixabid, manufactured by them prior to the passing of the 2019 order. Indoco’s public interest defence was based on the prevailing pandemic conditions in the country, and it placed literature before the court for establishing that Apixaban is necessary for Covid-19 treatment. The court refused to lift the injunction and stated that Indoco had not put forth any evidence for demonstrating that there was a shortage of Apixaban or that it was not reasonably affordable. It found that the material placed before it did not show any overwhelming public interest that would justify the relief claimed. The court upheld the single-judge bench’s order, finding that since Indoco had manufactured the impugned strips in anticipation of the injunction order, the relief could not be allowed. This is perhaps the first judicial look at ‘public interest’ in the context of patents and Covid-19, and is worth further examination from that lens.

The ‘Public Interest’ Defence

In the present case, Indoco pleaded ‘public interest’ as a reason for the injunction to be lifted – specifically that Apixaban is used as part of Covid-19 recovery treatment, and claimed that Indoco’s Apixabid was ‘much cheaper’ than BMS’ Eliquis. Indoco pointed to BMS’ increasing sales figures as proof of the drug’s increased requirement during the current pandemic. This was met with BMS responding that a compulsory licence (CL) was the appropriate remedy for a claim of the patented drug being not available to the public at a reasonably affordable price, and not a lifting of the injunction order. Though the court didn’t directly comment on whether they agreed with this or not, they did note that Indoco failed to provide any material showing BMS’ drug was not reasonably affordable, nor that it was unavailable. In the rejoinder, Indoco stated that applying for a compulsory license (CL) under Section 84 would be time consuming and that it was not meant for a pandemic situation.

Incidentally, as per the Form 27 for Patent No 247381, Eliquis 5mg costs INR 964.30 per unit and is only imported into India after being manufactured in Puerto Rico and packaged in Italy. Incidentally, the MRP as mentioned on few different online pharmacies is listed as INR 1450 per box of 10 (so INR 145 per unit), and these same online pharmacies list the MRP of Apixabid as INR 180 per box of 10 (so INR 18 per unit). However, it doesn’t appear that the Form 27 or local working was discussed, as per the order.

The order goes on to consider the hypothetical fact scenario of there being a shortage of the patented product, and mentions the following points:

1. That ‘perceived’ or ‘supposed’ public interest, is an insufficient ground for vacating an injunction that has been put in place after the due consideration of the 3 factor interim injunction test, unless there is a finding that the order is prima facie unsustainable on merits. (para 24)
2. The lack of any material ‘even cumulatively’ that would show an overwhelming public interest, as would justify the prayer in this case. (para 25)

In this case, the lack of evidence or material proving Indoco’s case makes it a clear-cut one, and the Delhi High Court naturally has answered it in the negative. There are other pertinent issues such as the mis-match between the numbers of strips Indoco had mentioned it had manufactured in the December 2019 hearing, versus the current 58,000 number; and though not argued by Indoco, the underlying question of ‘disclosure vs coverage’ of patent in the 2019 order. Additionally, for those interested, this is the same patent over which Natco had their injunction set aside last year. However for this post we will focus on this public interest question in the context of the pandemic.

There seem to be at least 2 implied takeaways from the court’s questions in the hypothetical fact scenario. First that an injunction can be lifted if the order granting it is shown as prima facie unsustainable on merits. And secondly, though ‘reasonable affordability’ and ‘availability’ were expressly mentioned as public interest grounds for which evidence can be shown, there may be other factors which may ‘cumulatively’ show an ‘overwhelming’ public interest, which can bypass the first requirement of showing prima facie unsustainability of merits. And of course that evidence must be shown for these as well.

In fact, this fits well with the paragraphs that follow, as Para 26 discusses lack of evidence to show the ‘reasonable affordability’ claim, and the ‘availability’ claim, and Para 27 touches upon the efficacy of the drug in question vis-a-vis other similar drugs. Of course, the court did not need to, and does not go further into that question as there was no evidence submitted on price and availability. It stands to reason therefore that in addition to price and availability, efficacy vis-a-vis similar drugs may also be looked at as a public interest factor, in determining whether there is an ‘overwhelming’ public interest.

Public Interest as seen thus far

In Bayer v. Union of India, the IPAB emphasised the importance of ‘public interest’ while upholding the grant of India’s only compulsory license(CL) under Section 84 of the Patents Act, 1970. In this case, Natco proved all the three conditions under Section 84(1) – first, reasonable requirements of the public are not satisfied; second, the invention is not available at a reasonably affordable price and third, the patent is not being worked in India. In Bayer v. Union of India, the Bombay High Court stated that it is a matter of public interest that the Cancer medicine, ‘Nexavar’, ‘is made available to the society in adequate numbers and at a reasonable price.’

In Novartis v. Cipla (Novartis), the Delhi High Court discussed at length the applicability of public interest doctrine in patent infringement cases. The court relied on Roche v. Cipla (Roche) and distinguishing between the cases stated that – in Roche, the patent in question was under cloud and the defendants had raised a credible defence, and in Novartis, the patent was valid and no credible defence was raised. In Novartis, the court ruled that Cipla was guilty of infringement of Novartis’ patents and had raised public interest grounds in order to avoid the injunction. It was held that merely providing articles and publications that demonstrate the requirement of a drug is not adequate, the defendant needs to establish that there is a shortage of the products in question.

Justice Prabha Sridevan’s recent article “Is the right to exclusivity a Hamlet question?” published in South Centre speaks directly to the issue at hand and is a wonderful read on her thoughts on how courts should be looking at this ‘hamlet’ question. She ends her piece with these lines:

“The relationship between the private rights and the public health rights should be spatially expanded in tune with the Constitutional aspirations rather than narrowly viewed as a private grasp of the patent owning few. The Court shall explore the various models of rewarding or compensating the inventor, but the Court shall and is bound to defer to the always superior claim of the right to health over right to exclusivity. Today Hamlet’s question must be answered in favour of life.”

Public Interest in the Pandemic Situation

Many nations including Canada, Germany, Israel and Chile have enacted laws or employed resolutions for the purpose of compulsory licensing of COVID-related medicines. India should utilise TRIPS flexibilities in order to overcome the potential affordability and access barriers for COVID-related medicines and vaccines. If the many public health safeguards made possible by the Indian legislators are not used in a global pandemic situation, then when will they be used?

There are a number of provisions in the Patents Act, 1970 that could be useful in solving the access and affordability problem, most notably as quickly touched upon in Prashant’s post here, are Section 92(1), 100 and 102. Section 92 provides that ‘in circumstances of national emergency or in circumstances of extreme urgency or in case of public non-commercial use’, the Central Government can declare a CL with respect to any patent, as soon as it is sealed. Section 92(3) allows the grant of CL without following the procedure under Section 87, in situations including ‘public health crises’ and ‘epidemics’. Additionally, Section 92 does away with the 3 year requirement provided under Section 84. Section 66 allows for revocation of  a patent by the Central Government if it finds that the patent is ‘prejudicial to the public’. Though Section 66 requires that the patentee be heard before revoking the patent, whereas under Section 92(3) the Controller is not required to hear the patentee before issuing CLs.

Whenever new COVID-related treatments and vaccines are invented, invocation of Section 92 would be favourable vis-à-vis invocation of Section 66. In the long term, utilisation of Section 92 would perhaps be wiser as it may not alienate big pharmaceutical companies to the extent Section 66 would. The Section 92 approach is sustainable, in the sense that licenses could be given with a sunset clause, resulting in them being withdrawn as soon as the pandemic is over.

This is of course assuming that a generic company is willing to manufacture the drug. However, let us also recognise that our legislators have ensured we are not at the mercy of business choices of domestic firms either. If generics don’t step up to the role of applying for CLs or otherwise manufacturing the drugs, the government also has the option of exercising Section 47(4) of the Patents Act – which stipulates that as a condition of the grant of the patent – the government can, without any pre-conditions or procedural requirements – import any medicine or drug for the purpose of distribution (i.e., not sale) through its own hospitals/dispensaries or any hospital/dispensary notified to do so on its behalf. So, in the situation where there is a dire need of wide spread medicines or drugs, this is an available option.

The present pandemic is the priority, but with epidemics expected to become more common, it is essential to think about the future implications of the measures taken today. It should be ensured that whatever measures are adopted, they are not undertaken in such a manner that disregards future complications.

Unlike many other countries in the global South, India has production capabilities in order to successfully manufacture the quantum of vaccines required for overcoming the pandemic in India. Unfortunately though, India hasn’t started entering into any advance purchasing agreements, at least as of Sept 18, 2020, when this was acknowledged in the Lok Sabha. There are already signs that there will need to be significant private spending when the Covid vaccine does come out eventually. Dealing with ‘drug nationalism’ and corporate profits also forms a part of the struggle against COVID-19 and to prevent the prolonging of the crisis in India – domestic manufacturing as well as active government action and forethought will become vital.

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We’re pleased to bring to you a guest post by Varsha Jhavar, discussing the legal position on the conceptual separability doctrine, which allows copyright protection of artistic features of a useful article if they can be conceptually separated from the utilitarian aspects of the article, in United States (US) and India.

Varsha is a 5th year student at Hidayatullah National Law University (HNLU), Raipur. She recently won the second prize for 1st Shamnad Basheer Essay Competition on IP Law that we’d conducted earlier this year. She’s also written two other posts for us recently, titled ‘The Public Interest Defence, and the Public Interest Offence – What Is The Way Forward In This Pandemic?‘ and ‘Bona Fide or Not?: Usage of Common Surnames as Trademarks‘.

Conceptual Separability: Separating the Artistic from the Utilitarian

Varsha Jhavar

There is a clear dividing line between copyright and patents; artistic works are protected under copyright law while useful articles are protected by the patent regime. What about the artistic features that are embedded into a useful article. Would they be eligible for copyright protection? The Supreme Court of the United States answered in the affirmative in Star Athletica L.L.C. v. Varsity Brands, Inc. (Athletica), laying down prerequisites for its determination. In US, ‘pictorial, graphic, and sculptural works’ are protected under Copyright Act, 1976, however it is subject to the exception of useful articles doctrine. The pictorial, graphic, and sculptural works in ‘useful articles’, articles such as clothing, furniture that have ‘an intrinsic utilitarian function’ are usually not protectable under copyright. But they can be, if the designs incorporates artistic features that ‘can be identified separately from, and are capable of existing independently of’ the functional aspects of the article. The conceptual separability doctrine essentially states that the artistic features of a useful article can be copyrighted, if they can be conceptually separated from the utilitarian aspects of the useful article. This post analyses the Athletica decision and examines the pre and post Athletica jurisprudence, in order to fully understand the legal position with respect to separability in the United States (US). Moreover, it attempts to understand the position vis-à-vis separability in India.

Position Pre-Athletica Decision 

Prior to Athletica, many approaches were proposed and applied by different scholars and courts for resolving the separability question. This resulted in conflict among the numerous tests, with the circuit courts following at least ten different tests. This part of the article discusses some important ones. The question was first dealt with in 1954, in the case of Mazer v. Stein (Mazer) by the US Supreme Court. This case pertained to the copyrightability of statuettes in the form of a human dancer, that formed the bases of certain lamps. The court while arriving at its decision did not take into consideration if the statuettes were originally created as a standalone work of art or as base for a lamp, nor did it take into consideration the lamp’s usefulness in the absence of the statuette, and found them to be copyrightable. The essence of this decision was incorporated by the Congress into the Copyright Act of 1976.

In 1980, the Second Circuit in Kieselstein-Cord v. Accessories by Pearl, Inc. utilised the primary-subsidiary distinction approach between the artistic and functional elements for the determination of separability. The court stated that only if the artistic elements of the particular belt buckle played a primary role in the object, would the design be granted copyright protection. They failed in stipulating a criteria for establishing if the aesthetic elements of a useful article were primary or secondary to the object. In 1987, the Second Circuit in Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., dealt with the copyrightability of bike racks in the shape of a ribbon by examining the process of creation of the articles. In this case, the Denicola test was applied and it was declared that if the creative elements of the design were made not taking into account functional considerations, then the creative elements would be eligible for copyright protection. This test relied on a flawed understanding that the process of creation involves a single consideration – functional or aesthetic .

Star Athletica L.L.C. v. Varsity Brands, Inc. and Position Post-Athletica Decision

In March 2017, the US Supreme Court was faced with the question of copyrightability of two-dimensional designs on cheerleading uniforms. Varsity Brands and Star Athletica are in the business of manufacturing of cheerleading uniforms. In 2010, Varsity Brands filed a copyright infringement suit against Star Athletica for copying of 5 of its uniform designs. The District Court granted a summary judgement in Star Athletica’s favour. On appeal, the Sixth Circuit found that the Varsity’s designs were not dress designs but fabric and hence, copyrightable. A writ of certiorari was filed by Star Athletica before the Supreme Court, requesting it to resolve the dilemma posed by the ten different tests used by different Circuit Courts.

The Supreme Court pronounced that the design of the cheerleading uniforms was eligible for copyright protection. Instead of following one of the previous approaches, the court created a two-prong test for ascertaining if a particular aesthetic feature incorporated into a useful article would qualify for copyright protection. The prerequisites are – first, capable of being perceived as a two-dimensional or three-dimensional work distinct from the useful article, and second, whether the pictorial, graphic and sculptural works, by itself or fixed in another medium, are capable of qualifying for copyright protection. As the coloured stripe, shape and chevron patterns of the concerned cheerleading uniforms could be reproduced in other mediums, the uniforms were held to be copyrightable. However, the court clarified that the cut and style of the cheerleading uniforms could not be copyrighted. In reaching its decision, the court placed great reliance on the Mazer decision. With regard to separability, the court felt that conceptual separability requirement is sufficient for covering all bases and physical separability requirement is redundant. Like Mazer, this judgement also stated that it was not required for a useful article to remain, after the aesthetic features are conceptually separated. Ginsburg J concurred, while Breyer J dissented stating that the designs of the uniforms if copied on canvas would result in the cut and style being replicated. He observes that the uniforms shouldn’t be copyrighted as they are neither physically or conceptually separable. He reflects that the judgement brings ‘virtually any industrial design’ under the ambit of copyright law.

The court also did away with considerations such as artistic judgement and marketability for determining the copyrightability of a conceptually separable design. The court failed to provide adequate analogies and description, making it difficult for the lower courts to follow the two-pronged test. The analogies given were that of a fresco on a wall and a design on a guitar, stating that even if removed from the surface of the wall or guitar respectively, the contours of the 2D design would correlate to the surface it was applied on. A counterexample of a 3D cardboard model of a car was also given, stating that the model would only replicate the shape of the car and hence would not be copyrightable. Providing more analogies that covered varied situations would have been beneficial. This decision has effectively expanded the scope of copyright protection to surface designs. There have been many judgements related to conceptual separability after Athletica, in some cases the approach was followed while in others the judges also used portions of overruled tests.

In 2019, the Third Circuit applied the Athletica approach and decided in favour of copyrightability of a full-body banana costume. In another case, the New York District Court followed the Athletica test in arriving at its decision, but also used the ‘primary purpose’ test. In this case the court found the particular light bulb covers to be conceptually separable from the light string and observed that the primary purpose of the covers was artistic, thus holding that the covers were copyrightable under the category of sculptures. Under these circumstances, the Supreme Court’s approach did not prove to be an effective standard that could adequately substitute the previous tests. Another district court used artistic judgement,[i] and another court decided based on the physical separability of the artistic features from the functional.[ii] The Athletica decision failed in bringing clarity and predictability regarding the issue of conceptual separability, and establishing a single standard.

Legal Position in India vis-à-vis Separability

Section 52(1)(w) of the Copyright Act, 1957 was introduced through the 2012 amendment and it is an exception to copyright protection. This clause deals with a 3D object that is based on a 2D work, like a technical drawing, when the 2D work is eligible for protection under copyright law. The 2D drawing is protected from copyright infringement claims, if the object is created for industrial application of ‘any purely functional part of a useful device’. The implication is that a 2D drawing, though otherwise eligible for protection as ‘artistic work’, will not be protected under copyright law if it has been used in a patent application for the demonstration of the 3D object. In 2016, in IPEG Inc. v. Kay Bee Engineers the Gujarat HC discussed the applicability of this section and stated that if any part of a technical drawing is purely functional, then that part would not qualify for copyright protection. It further held that if aesthetic features are embedded in a useful article then it would be treated differently. The provision probably won’t be applicable under these circumstances. It is unclear as to what qualifies as ‘functional part of a useful device’ due to the absence of judicial precedents pertaining to this issue in India. The intention behind Section 52(1)(w) seems to be the avoidance of bringing those articles in the realm of copyright, that do not exclusively comprise of copyrightable works.

Conclusion

This decision might lead fashion designers to file copyright infringement claims and referring to the ‘fashion cycle’ theory by Raustiala and Sprigman, it might be at the collective disadvantage of the fashion industry. The fashion cycle comprises of copying of designer clothes, that creates trends and then market is saturated until the designs become unpopular, fuelling demand for newer designs. The decision impacts not only the fashion industry but also other industries involved in the manufacture of useful articles like kitchen appliances, machinery, lighting fixtures and furniture. The Supreme Court should have used this opportunity to outline a more detailed and versatile test that could have been applied to different kinds of articles. 

[i] Inhale Inc. v. Starbuzz Tobacco, Inc., No. 2:11-cv-03838-ODW (FFM), 2017 WL 4163990 (C.D. Cal. May 8, 2017)

[ii] Triangl Grp. Ltd. v. Jiangmen City Xinhui Dist. Lingzhi Garment Co., Ltd., No. 16 Civ. 1498 PGG, 2017 WL 2829752 (S.D.N.Y. June 22, 2017).

We’re pleased to inform you that a free online course on intellectual property is being offered for students on the e-learning platform SWAYAM by Yogesh Pai, Assistant Professor of Law, Coordinator of IPR Chair and Co-Director of the Centre for Innovation, Intellectual Property and Competition (CIIPC) at National Law University, Delhi. For further details, please see the announcement below:

Join the Online Course on Intellectual Property

Title: SWAYAM (Free) Course  ‘Intellectual Property’

About the Course: The course is launched on the SWAYAM platform by the Ministry of Human Resource Development (MHRD), Government of India and is offered by Yogesh Pai, Assistant Professor of Law, Coordinator of IPR Chair and Co-Director of the Centre for Innovation, Intellectual Property and Competition (CIIPC) at National Law University, Delhi. Various IP experts in India have contributed to the development of the course and includes some prominent names such as: Prof. Raman Mittal, Delhi University; Dr. Arul George Scaria, NLU Delhi; Ms. Sunita Shreedharan, Founder SKS Law Associates; J. Sai Deepak, Counsel, Supreme Court, New Delhi; Prof. Vishwas Deviah, Jindal Global Law School, Dr. Ananth Padmanabhan, Dr. Sunitha Tripathi, Jindal Global Law School, Mr. Aditya Gupta, Ms. Abhilasha Nautiyal, Mr. Swaraj Paul Barooh, Ms. Kritika Vijay, Ms. Neha Juneja and Mr. Pratyush Kumar.

Structure of the Course: The course curriculum contains forty-one modules in four different quadrants (e-texts (3000-5000 words per module, additional readings, 30 minute video lesson and assignment containing 12 questions per module). The course covers wide areas of study that includes fundamentals of IP, historical origins and international obligations, economics of IP, justifications, nature of subject matter, criteria for protection, term, rights, assignment and licensing, defenses, limitations, exceptions, public interest considerations, remedies and enforcement. The course will also contain topics that involve the interface of IP with areas such as human rights, free speech and competition law and policy. For a detailed overview of the course and instructor’s bio visit the link https://onlinecourses.swayam2.ac.in/cec20_mg30/preview

Instructor: Asst. Prof. Yogesh Pai (National Law University, Delhi)

Duration: Fifteen weeks and runs on online e-learning platform Swayam.

Eligibility and Certificates/Credits: The course is open to all students and certificates will be awarded to students who pass assignments/exams during the course. Students enrolled with LL.M. programs can transfer credits obtained from the course if their universities permit to do so.

Fees: It is free of cost.

Deadline: The last date to enroll for the course is 14th October, 2020.

Enrollment link: To enroll for the course please visit https://onlinecourses.swayam2.ac.in/cec20_mg30/preview.

Contact: For any queries related to the course and registration write us at ipr.chair@nludelhi.ac.in.

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We’re pleased to bring to you a guest post by our former blogger Rajiv Choudhry, discussing the implications of a recent Chinese Court order granting an anti-suit injunction against InterDigital in respect of patent infringement proceedings against Xiaomi in the Delhi High Court and InterDigital’s anti-anti-suit injunction application filed against Xiaomi before the Delhi High Court response to this order.

Rajiv is a practicing advocate based in New Delhi. He specialises in IP law, with a focus on high – technology and patent law and advises/represents clients on SEP/FRAND and other issues related or unrelated to those discussed in the post. He’s also a founder member of the Fair Standards Alliance, a not-for-profit body that advocates fairness in patent licensing. The views expressed in the post are personal. Rajiv’s previous posts on the blog can be viewed here, here, here and here.

Chinese Court Issues Anti-Suit Injunction Re Pending DHC Case by InterDigital against Xiaomi

Rajiv Choudhry

In a matter brought by Xiaomi against InterDigital, a Chinese court recently (September 23, 2020) issued an anti-suit injunction against InterDigital from pursuing matters pending in the Delhi High Court. InterDigital also stands to be fined up to one million yuan per day if it were to violate the order. InterDigital has filed an anti-anti-suit injunction application at the Delhi High Court on 29th September, 2020.

Any pursuit of these matters by InterDigital before the Delhi High Court is likely to evoke a per day fine by Chinese courts. This means that the entire matter (FRAND adjudication) cannot be pursued not just injunctive relief because the same is intrinsically coupled to InterDigital’s demands at the DHC. In my view, the Chinese courts decision is absolutely correct because Xiaomi had first approached Chinese courts for resolution of the matter.

Contrary to popular belief that InterDigital had filed suit in India first – it was Xiaomi that first filed the matter in Chinese courts. On June 3, 2020, Xiaomi had filed a complaint against InterDigital in the Wuhan Intermediate People’s Court seeking a determination of the FRAND royalty terms payable for InterDigital’s 3G and 4G SEPs.  More importantly, this is a request to determine global royalty rates made before a Chinese court.

This means that InterDigital’s India action was a response to the Xiaomi’s court filing.

In addition, the India filing was a deliberate attempt by InterDigital to scuttle or at least severly dilute the matter before the Chinese courts. This is because Xiaomi’s sales in India would be severely impacted given any adverse order from the Delhi High Court and the Chinese court decision would be significantly diluted if a decision issued from our Delhi High Court.

Another factor against InterDigital is that it is a pure R&D company and does no manufacturing – and hence there would be no impact on InterDigital.  Public interest is also a factor in favour of the anti-suit injunction.

InterDigital’s Anti-Anti-Suit Injunction Application before Delhi HC

InterDigital has also filed for an anti-anti-suit injunction before the Delhi High Court on 29th September, 2020 as given in one of its regulatory filings. While it is clear that InterDigital is not averse to taking its chances before the Delhi High Court, the Chinese court will most certainly see this filing as a blatant disregard of its orders regardless of whatever has been put out by InterDigital.
This is because InterDigital has been careful to say in the filing that the Chinese court order pertains only to 3G / 4G and not H.265/ HEVC (video codecs). All I can say is that this is a stretched argument by any standard – that HEVC and 3G / 4G patents pertain to different end points.

The defendant is the same ‘Xiaomi’ and end result of InterDigital’s actions whether for HEVC / H.265 patents or 3G / 4G patents will be the same – either Xiaomi gives them FRAND royalty (FRAND definition to be argued by InterDigital ) or Xiaomi faces an injunction. This is clearly in the teeth of the orders issued by the Wuhan People’s Court.

Matters Pending Before Delhi HC

The matters pending before the Delhi High Court are:

InterDigital had filed these matters on 29th July, 2020 against Xiaomi  and the first complaint (CS. COMM. 295/2020) alleges infringement of five of IDCC’s patents related to 3G and/or 4G/LTE standards: Indian Patent Nos. 262910; 295912; 298719; 313036; and 320182.

The second complaint (CS. COMM. 296/2020) alleges infringement of three of IDCC’s patents related to H.265/HEVC standards: Indian Patent Nos. 242248; 299448; and 308108.

In these proceedings, InterDigital is seeking compensatory and punitive damages for Xiaomi’s infringement of the asserted patents as well as injunctive relief to prevent further infringement of the litigated patents in India, unless Xiaomi elects to take a license on terms determined to be FRAND by the Delhi High Court.

A Bloomberg release issued earlier yesterday (article behind pay-wall), a snippet of which provides:

“InterDigital Says China Taking on India Court in Xiaomi Fight

InterDigital said a court in Wuhan, China, issued an order that would prevent it from seeking an injunction against handset maker Xiaomi in India over the use of wireless technology for the 3G and 4G standards.

InterDigital faces a fine of as much as one million yuan ($147,000) per day if it violates the order, the company said in regulatory filing…

IDCC said the Chinese order limiting its actions in India was imposed without any prior notice to the company, nor did it have a chance to be heard
IDCC said it filed a petition in the Delhi High Court…”

Topical Highlight

National Digital Library of India’s (NDLI) Copyright Guide (Feedback) – Part I

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In this post, Anupriya reviews the copyright guide brought out by the National Digital Library of India (‘NDLI’) for Indian libraries for which comments were sought till September 30, 2020. At the outset she notes that the introduction to the guide should contain greater reference to user rights and the important role of libraries in furthering access. She then notes the unclear position of the Copyright Act on the aspect of ‘non-commercial libraries’. She points out that the possibly self-provided definition to the term in the guide is not very clear regarding both its sources and content, and would help with providing certain explanatory illustrations. She then notes that while the templates provided for record-keeping were easily understandable, they approach a narrow interpretation of the law and could be rights restricting. Additionally, on the point of digital indexing, she highlights that meta-data is often proprietary and might lead to costs for the library. Finally, on the explanation of Section 65A concerning technological protection measures (TPMs), she highlights that the guide fails to mention that such measures are punishable only if done with an intention to infringe, thereby exempting fair dealing.

National Digital Library of India’s (NDLI) Copyright Guide (Feedback) – Part II

In this post, Anupriya continues her analysis of NDLI’s copyright guide dealing particularly with fair dealing and user rights. She highlights the decision in the DU Photocopy case that shows that the importance of copyright stem from its ability to benefit the public. She notes that user rights as available under Section 52(1)(a) serve an important social purposes. She then highlights how the guide makes the users’ intentions irrelevant and the problems attached with the restrictive approach taken by the guide by way of an example of use of extracts. Subsequently, she discusses the challenge posed by a narrow understanding of ‘private use’ by the guide as its template seeks to prevent distribution of a copy of any work. In doing so, it fails to address the collaborative elements of research that have been acknowledged by the Canadian courts. Finally, she concludes by noting that the declarations required as per the guide might lead to a clearance and permissions culture owing to risk aversions and a contractual waiver of some user rights. This could not only be opposed to public policy, but also result in negative externalities, chilling free speech and fair dealing.

Thematic Highlight

The Public Interest Defence, and the Public Interest Offence – What Is The Way Forward In This Pandemic?

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In this post, Swaraj and Varsha analyse the ‘public interest’ aspect in patent litigation. They discuss a recent Delhi High Court order where the court refused to allow a ‘public interest’ argument for selling of a drug related to Covid-19 treatment due to absence of any evidence indicating its shortage in the market and unaffordability. They particularly note two takeaways from the order: first, that a patent injunction can be vacated if the order granting it is shown as prima facie unsustainable on merits; and second, ‘reasonable affordability’ and ‘availability’ can be some of the factors that can ‘cumulatively’ shown to prove an ‘overwhelming’ public interest. They then note the invocation of ‘public interest’ in the cases of Bayer v. Union of India, and Novartis v. Cipla. They then posit the discussion in the particular context of Covid-related medicines and how other countries have resorted to compulsory licensing. They note the various tools available with the Indian government to ensure affordability and accessibility of medicines under Sections 92, 100, 102, and 66 of the Patents Act. They note that compulsory licensing in Section 92 would be preferable to revocation of patent under Section 66. Finally, they highlight if generic manufacturers do not step up for compulsory licensing, the government can invoke Section 47(4) to import medicines for distribution.

Other posts

Chinese Court Issues Anti-Suit Injunction Re Pending Delhi HC Case by InterDigital against Xiaomi

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In a guest post, Rajiv looks at an anti-suit injunction granted by a Chinese court in favour of Xiaomi and against InterDigital. The concerned injunction order also imposes a fine of up to one million yuan per day on InterDigital in case of any violation. This decision impacts infringement claims filed by InterDigital against Xiaomi in July before the Delhi High Court for infringement of its 3G and/or 4G/LTE and H.265/HEVC standards. Rajiv argues that the decision of the Chinese court was correct as Xiaomi had first approached Chinese courts for determination of FRAND terms for InterDigital’s 3G and 4G SEPs. Furthermore, he argues that the petitions in India were a deliberate attempt to severely dilute the proceedings in the Chinese courts. Moreover, he notes that since InterDigital is purely a R&D company, public interest is also in favour of the injunction. Finally, he takes note of an anti-anti-suit injunction filed by InterDigital with the Delhi High Court which he believes could be looked at unfavorably by the Chinese Courts.

Copyright Doctrine of Conceptual Separability: Separating the Artistic from the Utilitarian

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In this guest post, Varsha discusses the conceptual separability doctrine allowing copyright protection for artistic features of a useful article if separable from the utilitarian aspects. She points out that in the US there earlier existed at least ten different tests while dealing with the separability question including the Mazer test, the primary-subsidiary distinction approach, and the Denicola test. A certainty to this dilemma caused by the presence of myriad tests in the country was sought to be achieved by the SCOTUS in the Star Athletica decision. It created a two-prong test for determining copyright protection of aesthetic features embedded in a useful article. Varsha highlights that subsequent decisions in the US have continued to follow different tests, thereby Star Athletica not setting an effective standard. She then discusses the Indian position under Section 52(1)(w) of the Copyright Act and the Gujarat HC decision in IPEG Inc. v. Kay Bee Engineers holding that purely functional technical drawings would not have copyright protection. She concludes by noting the impact of such a view on several industries, in particular the fashion industry.

Sisvel v Haier: SEP Case Law from Germany

In this post, Mathews highlights key aspects of the first judgment of the Federal Court of Justice of Germany interpreting the Huawei v. ZTE framework established by the CJEU for SEP negotiation. The court held that patents will not ipso facto create a dominant position. The conduct of the infringer should reflect genuineness and seriousness towards FRAND licensing. The infringer is to be provided with sufficient information to allow it to assess infringement. The patent holder has to provide information on royalty only upon willingness of infringer and the royalty can be a range, and need not be an objective number. Portfolio licensing does not by itself indicate abuse of dominant position. Finally, while computing damages, FRAND royalty can be the basis only when the infringer was a willing licensee.

Free Online Course on Intellectual Property (Register by October 14)

Recently, we informed our readers that a free online course on intellectual property is being offered for students on the e-learning platform SWAYAM by YogeshPai, Assistant Professor of Law, Coordinator of IPR Chair and Co-Director of the Centre for Innovation, Intellectual Property and Competition (CIIPC) at National Law University, Delhi.More details regarding the course are mentioned in the post.

CUSAT’s Webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicine’ [October 6]

We also informed our readers about a webinar on ‘Patented Medicines and Price Control – Impact on Access to Medicines’ being organized by the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology (CUSAT), Cochin, tomorrow(6th October, 2020). The webinar will take place from 4.00 pm to 5:30 pm. Further information on the webinar is mentioned in the post.

Decisions from Indian Courts

• Bangalore District Court in Nandhini Deluxe v. Cafe Nandini, dismissed a trademark infringement suit filed by the plaintiff regarding its marks ‘NANDHINI’ and ‘NANDHINI DELUXE’. [October 3, 2020]
• Delhi High Court in Astrazeneca Ab v. Emcure Pharmaceuticals Limited, in an infringement suit concerning plaintiff’s patented compound Dapagliflozin held that a decision on the grant of injunction could not be made before hearing the matter and hence did not grant interim relief. [October 1, 2020]

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• Delhi High Court in Exxon Mobil Corporation v. Xcel Automatives Pvt. Ltd., granted an ad-interim injunction in favour of the plaintiff in suit filed by it for infringement of its registered device mark Pegasus. [September 30, 2020]
• Delhi Tis Hazari Court in Zino Davidoff SA v. Charanjeet Singh, granted a permanent injunction in favour of the plaintiff, restraining the defendant from using plaintiff’s registered ‘DAVIDOFF’ and ‘DAVIDOFF COOL WATER’ marks. The court also awarded exemplary damages amounting to Rs.5,00,000.00. [September 30, 2020]
• Delhi High Court in Worknest Business Centre LLP v. M/S Worknests, declined to grant an ad interim injunction in a petition filed by the plaintiff for infringement of its registered ‘WORKNEST’ mark by the defendants that use the ‘WORKNESTS’ mark concurrently in the same business, that of providing co-working spaces. [September 30, 2020]
• IPAB in Pharmacyclics, LLC v. Controller General of Patents, Designs, Trademarks, and Geographical Indications, and others, allowed the appeal and set aside the order of the controller that had revoked the plaintiff’s patent covering, inter alia, IBRUTINIB. [September 29, 2020]
• Delhi High Court in Bharat Bhushan Gupta v. Nitin Mittal, granted ex-parte ad-interim injunction in favour of the plaintiff in suit filed by it for infringement of its registered mark ‘OZOMAX’ under class 10 for body massagers. [September 29, 2020]
• IPAB in Novertis AG v. Controller General of Patents, Designs, and Trademarks, and others, allowed the appeal and set aside the order of the Controller that invalidated the plaintiff’s patent for its anti-cancer drug Cetrinib. [September 9, 2020]
• Delhi Tis Hazari Court in State v. Kamal Kishore, acquitted the accused in a case involving charges under Sections 103 and 104 of the Trade Marks Act for possession of infringing/ spurious articles, as the prosecution miserably failed to prove its case beyond reasonable doubt. [September 29, 2020]
• IPAB in Raghvendranath A. Raju v. Assistant Controller of Patents, allowed an appeal against the Controller’s order refusing patents on account of non-appearance of the applicant, and remanded the matter back to the Controller for hearing on merits. [September 22, 2020]
• Delhi High Court in Vinod Kumar Proprietor of Kunal Trading Corporation v. State (NCT of Delhi), dismissed a petition to quash an FIR lodged under Sections 103 and 104 of the Trade Marks Act by Respondent No. 4. It, however, left it open to the Petitioner to raise an argument as per Section 113(2) claiming that a rectification petition had been raised prior to the institution of the FIR, before the appropriate court. [September 22, 2020]

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• IPAB in Eveready Industries India Limited v. Kamlesh Chadha, allowed the rectification petitions filed by Eveready and ordered the Respondent’s ‘Eveready’ mark to be removed from the Register of Trademarks. [September 22, 2020]
• IPAB in Pamesa Ceramica SL v. Grescasa Ceramics Limited, allowed the prayer of rectification from the plaintiff and ordered the removal of the ‘PAMESA’ mark from the Register of Trade Marks as had been registered by the defendant. [September 17, 2020]

Other News from around the Country

• In a joint communication, India and South Africa have asked the WTO to waive requirements under TRIPS Agreement for a limited period to ensure adequate production, availability, and distribution of crucial medicines and vaccines globally.
• The Indian restaurant-chain, Honest Restaurants, has sued Acme Jelly Products for trademark infringement and unfair competition for the use of the mark ‘Honest Jellies’.
• Five varieties of Indian coffee beans, three from Karnataka and one each from Andhra Pradesh and Kerala, have received GI tags.

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• The Telangana High Court has reserved its orders in a civil appeal filed by Super Cassettes Industries against an injunction granted by the district court for Amitabh Bachchan-starrer ‘Jhund’.
• All About Ads has sued DivyaBhaskar of the DainikBhaskar group for copyright infringement and plagiarism of their work in the ‘DeshKe Hero’ campaign with the Government of India.
• An article in Bar and Bench examines the constitution of confidential clubs for dealing with sensitive information particularly trade secrets and IPR that their respective owners seek to keep confidential, and how there remains considerable uncertainty in the functioning of this model.
• A 14-year-old boy from Pune has obtained a patent for a sanitiser kit for sterilizing groceries.
• The Kotaiah family plans to apply for Geographical Indications Registry’s tag for ‘Kakinda Raja’, a unique Andhra Pradesh sweet.

News from around the World

• Google will pay over $1 Billion to publishers for news content in its product ‘Google News Showcase’.
• Artist Catherine Alexander has sued WWE and 2K for the depiction of Randy Orton’s tattoo that she designed in a game.

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• France has said that the EU Commission’s approach to copyright rules, particularly Article 17, would reduce its effectiveness by allowing infringing content to stay online through broad exceptions.
• Several production houses and streaming companies including Netflix, Disney, Amazon, and Universal have come together to sue TTKM Enterprises that run a website named Crystal Clear Media that offers its viewers access to several movies and TV series, the rights of which are actually owned by the plaintiffs, on payment of a fee.

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In a significant development, the IPAB has passed an interim order maintaining status quo of the royalty rate for radio broadcasts under statutory licensing. This was followed by a Public Notice seeking suggestions from stakeholders with regard to the fixing of royalty rates by IPAB.

Background

Section 31D of the Copyright Act, 1957, which was added by the Copyright (Amendment) Act, 2012, empowers the Appellate Board to fix royalty rates for performances or radio or television broadcasts of literary and musical work and sound recordings. This section has seen its fair share of controversies, the most recent ones being as to whether it contemplates internet broadcasts within its scope (while this question remains beyond the scope of the present post, it has been previously covered here and here). The purpose behind fixing a royalty rate and interfering with the free market price negotiation process is to prevent the anti-competitive result of unreasonably high royalties that might be charged by music labels who own a large amount of copyrighted content.

Section 31D read together with Rule 31 of the Copyright Rules 2013 requires IPAB to issue a notice of its intention to fix royalties, separately for TV and radio broadcasts and invite suggestions for the determination of royalties from stakeholders. In 2010, after a series of disputes between radio broadcasting organizations and music copyright holders (see here, here and here) the Copyright Board (‘CB’) had passed an order in Music Broadcast Pvt. Ltd & Ors. v. PPL (‘CB order’) fixing the royalty rate at 2% of the net advertisement revenues of the radio organizations from radio business, charged on pro-rata basis. Prior to that, PPL charged a royalty of ₹2400 per needle hour or 20% of the net advertising revenue, whichever was higher. Finding this rate to be excessive and therefore detrimental to the growth of the already suffering radio industry, CB had brought it down to a rate that would allow the radio companies to survive. While this order has been subjected to multiple challenges, none have resulted in a change of the royalty rate. In fact, the appeal against the CB order in the Madras High Court has been pending for 10 years!

IPAB’s Interim Order

After several years of being nearly defunct, in 2017, the CB was merged with the IPAB by replacing the reference to the former in Section 11 of the Copyright Act with ‘Appellate Board’. In Radio Next Webcastion v. Union of India, the Delhi High Court had ordered that IPAB has the jurisdiction to perform the functions of the Appellate Board under the Copyright Act, regardless of the absence of a technical member for Copyright at that point. It had thus directed that the application under Section 31D be heard by IPAB. In the wake of the expiry of the CB order on 30^th September 2020, applications under Section 31D have been filed in IPAB, seeking an extension of the order till new royalty rates can be fixed.

According to paragraph 14 of the Interim order, a number of music labels had sought to commence negotiations for voluntary licensing schemes from 1st October onwards. The extension was thus needed in order to prevent the immediate cessation of their services upon expiration. The respondents had initially opposed the application on grounds that the applicant is already paying higher royalties to some music labels which do not come under the CB order, and that the application for extension has been filed very late. They also argued that IPAB did not have the authority to pass an interim order for this purpose. IPAB however relied on the Supreme Court’s decision in Super Cassettes v. Music Broadcast Ltd which held that the CB had the incidental powers to preserve status quo. The time of filing argument was rejected as CB had been non-operational till 2017 and even after the merger with IPAB that year, technical members had only been appointed and joined in August 2020. Finally, IPAB ordered that the status quo shall continue between the parties as per the CB order and even against those parties whose membership of the respondent PPL had terminated after the passing of that order.

Meanwhile, a Public Notice has been issued by IPAB on 18^th September inviting owners of copyright, broadcasting organizations, radio broadcasters and other interested persons to give their suggestions in writing, with adequate evidence as to the rate of royalties to be fixed. Suggestions have to be sent within 30 days, i.e., latest by 18^th October 2020.

Considerations for the Determination of Royalty Rates

The royalty rate of 2% had been determined by taking into consideration a variety of factors. The radio companies had argued that the no-subscription-fee model coupled with rising competition from other modes of music consumption such as internet and TV left their business in a state of gradual decline. Since the primary ingredient of the radio business is music broadcast, a high royalty rate of around 20% of net advertising revenue or 2400 per needle hour severely impacted their profitability, thus endangering their very survival.

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One of the points of discussions in the CB order of 2010 was whether an element of public interest is involved in radio broadcasting, making it necessary to fix a lower royalty rate. The radio broadcasting organizations had argued that they carried news items, announcements required by the government, as well as regional content. As they already operate on a ‘free-to-air’ basis, high licensing fees would make it difficult for them to serve this public interest purpose. The CB had ultimately taken the poor financial health of the radio industry into account in delivering its verdict. It would be interesting to see how this factor plays out in 2020, with the radio industry having evolved in many ways and particularly with regard to content production. The FICCI-EY Report 2020 shows that factors such as growth in internet penetration and smartphone usage, popularity of social media, and increased demand for shorter content have enabled many radio companies to start creating video, for use as marketing and ad funded content production. Moreover, it contemplates the emergence of subscription-based models and increase in interactive services through D2C community building in the near future (see pages 207-208).

The state of the radio industry has seen financial growth as well. According to the FICCI-KPMG Report 2019, the size of the industry has grown from 8.4 billion in 2008 to 27.5 billion in 2019. While the revenue generated from radio advertisements remains 3-4% of the total revenues from advertising against a global average of 8-9% (see page 123), non-advertising revenues have risen. According to the FICCI-EY Report mentioned earlier, they account for almost 7-8% of total radio segment revenues (as high as 20% for some radio companies). The popularity of radio in India also remains high, with a recent survey showing that on an average, 86% of the respondents used radio (live or on-demand) to consume music. With these rapid and multifarious changes in the radio business, would the argument against radio broadcasting being a private enterprise amenable to higher royalties still hold?

On the other hand, over the last few years, dissatisfied voices in the music industry have consolidated into a united demand to scrap off the very model of statutory licensing in favour of freely negotiated licenses in what is asserted to be a realm of private rights (Simrat Kaur presents an economic perspective on this issue, here). They argue that it is music that attracts high listenership to radio channels, and the mandatory 2% royalty rate on net ad revenues creates a situation where the music labels are denied ‘fair value’ returns for their contribution to the radio industry’s revenues. The IMI-IFPI Digital Music Study 2019 shows that between the 3 methods of radio, audio streaming, and video streaming of music, radio is responsible for 21.7% of music listening time but returns only 2.9% of the total revenue to the industry (page 14). This discrepancy has been attributed to the stringent statutory licensing model and the low royalties enforced by it. Therefore, it is highly likely that music companies might raise strong opposition to the continuation of the current royalty rate, during this consultation process.

The IPAB’s mandate of fixing radio royalties under the much criticized statutory licensing provision provides an opportunity to take these concerns into account and work out a royalty scheme that better accommodates the interests of the all stakeholders in the radio as well as the music industry. It would be interesting to see how IPAB deals with these changed circumstances.

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We’re pleased to bring you a guest post by Dr. Sunanda Bharti, discussing the position of law on registration and use of discriminatory trademarks and the need for prohibition on the same, in light of the recent ‘Fair & Lovely’ trademark controversy. Sunanda is an Assistant Professor in Law at Delhi University and has written several guest posts for us, which can be viewed here.

Time to Add the Discrimination Dimension to Grounds of Refusal for Trademark Registration?

Sunanda Bharti

As many recently discovered through the recent ‘Fair and Lovely’ trademark controversy, discrimination and IP don’t necessarily sit in separate silos. The trademark (TM) owned by Hindustan Unilever had been accused of gender discrimination and stereotyping based on skin colour. HUL, in response, decided to rename the fairness cream.

Only ‘Fair’ is not Lovely — Proposed Change to Section 9(2) of Trade Marks Act

Against this backdrop, I am prompted to underscore the need for amending section 9(2) of the Trade Marks Act, 1999, which currently lists grounds for refusal of registration of a TM. These grounds include (i) scandalous and obscene matter, (ii) matter that is likely to hurt religious sentiments, (iii) those that cause public deception or confusion, and (iv) use that is prohibited under the Emblems and Names (Prevention of Improper Use) Act. 1950. 

To the above list , it is only ‘fair’ that another ground be added—that a mark shall not be registered as a TM if it is discriminatory in nature and is violative of fundamental rights enshrined under Article 15 of the Indian Constitution.

Article 15(1) states that “the State shall not discriminate against any citizen on grounds only of religion, race, caste, sex, place of birth or any of them.” The overall panorama surrounding skin colour preferences in India is sufficient to indicate that darker skin color results in discrimination. Following this, my submission/assertion is that discrimination based on skin colour is also covered by Article 15.

Given this scenario, HUL’s decision to drop ‘Fair’ from their ‘Fair & Lovely’ TM and to even end references to ‘whitening’, ‘fairness’ and ‘lightening’ seems appropriate..

I emphasise that the above move, provides us with an opportunity to amend section 9(2) to include the above-suggested prohibition, so that the TM registration environment and ecosystem is unambiguously free from discrimination.

Do We Have Foreign Case-Studies of Similar Nature?

Given the lack of Indian case law on the subject, I refer to foreign jurisprudence dealing with this issue, albeit tangentially. In Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015) a few native Americans petitioned for cancellation of the registrations of TM ‘Redskin’ and its 5 other variants, claiming that the marks had disparaged native Americans and brought them to contempt or disrepute (on the basis of their appearance/skin-colour). The six trademarks were registered and being used by the Washington Redskins football team.

In a complicated litigation, in 2014, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) stated that the TM ‘Redskin’ and its variants were disparaging to Native Americans and that their registrations should be cancelled. In an appeal by Pro-Football, the appellate court affirmed the cancellation.’

The term ‘Fair’ in ‘Fair and Lovely’ TM produces a similar effect by characterizing any other colour as undesirable, unpleasant or contemptuous and hence projects a singular idea of beauty on the basis of skin colour.

Notably, the TM jurisprudence of the USA uses the expression ‘offensive’ for both discriminatory and obscene marks. So, ‘Redskins’ is categorised as racially offensive, while ‘FUCT’ (referenced below) is simply offensive. The language of India’s Trade Marks Act, is different because under section 9(2), the Act does take care of scandalous and obscene marks but not those that are discriminatory in nature. The word ‘offensive’ is not used.

What of Freedom of Speech & Expression?

Pertinently, as a subsequent episode to the Redskins case (in 2017), the Supreme Court of the United States (SCOTUS) while deciding a different case (Matal v. Tam), unanimously decided that “not allowing disparaging names to be protected by trademark registration is an unconstitutional infringement of freedom of speech.”

The final nail in the coffin, in this respect, was put via the 2019 case of Iancu v. Brunetti, wherein the SCOTUS determined that there was nothing wrong with the TM ‘FUCT’ [1] (used for streetwear line); and that immoral or scandalous trademarks disfavored certain ideas, and thus infringed the First Amendment which relates to freedom of speech.

In both Matal and Brunetti cases, SCOTUS was of the opinion that the TM examiner should not reject a mark based on the ‘viewpoint’ that it expressed, thus overturning jurisprudence laid down in the Redskins decision.

Had the ‘Fair and Lovely’ TM matter arisen in the USA, the usage of the word ‘Fair’ would have been considered as non-objectionable—it being a just a skin-colour viewpoint bias that displeases a few. Contrarily, in India, even if section 9 isn’t amended as above, the validity of the grant of registration could be challenged under Article 15 read with Article 19(2) – given that trademarks are considered as commercial speech.

Article 15(2) and Unregistered Marks

But what of marks that are unregistered? What happens when such marks are discriminatory in nature? Here, I  submit that even outside the registration scenario, it should not be possible for racially charged or discriminatory words/phrases and labels to be even used (with or without registration) as TMs—this, simply, because it, too, would be violative of Article 15(2) of the Indian Constitution.

Article 15(2) provides as follows:

“No citizen shall, on grounds only of religion, race, caste, sex, place of birth or any of them, be subject to any disability, liability, restriction or condition with regard to—

(a) access to shops, public restaurants, hotels and places of public entertainment; or

(b) the use of wells, tanks, bathing ghats, roads and places of public resort maintained wholly or partly out of State funds or dedicated to the use of the general public.”

Although fundamental rights are enforceable only against the State, in Indian Medical Association v. Union of India (2011), the Indian Supreme Court extended the application of Article 15(2) to private entities by expanding the meaning of ‘shops’. To reproduce a portion from the judgment, “In this regard, the purport of the above exposition of clause (2) of Article 15, when read in the context of egalitarian jurisprudence inherent in Articles 14, 15, 16 and Article 38, and read with our national aspirations of establishing a society in which Equality of status and opportunity, and Justice, social, economic and political, would imply that the private sector which offers such facilities ought not to be conducting their affairs in a manner which promote existing discriminations and disadvantages.”  (para 113).

As such, the ratio of this decision, permits the horizontal application of Article 15(2) and dictates that if private bodies discriminate against persons on prohibited grounds – race, religion, sex, etc. – it would be unconstitutional.

In ‘Fair and Lovely’, we have a mark by HUL which discriminates on the basis of colour by projecting that the ‘not so fair’ public can shed their shame and join the league of ‘beauty’ by purchasing/using the product. I submit that this is horizontal racial discrimination, i.e. discrimination by one private player against another.

Admittedly, in case of unregistered marks, the point of controversy would arise only if the concerned mark comes under the scrutiny of a court in some litigation—when some ‘aggrieved’ surfaces. Till then, all would be latent—as is the case with violation of any fundamental right. Further, the cause of action would be more in terms of violation of a fundamental right, than any action under TM law. Nevertheless, since it has an important tangential relevance to the context of TM law, it wouldn’t be wrong to dissociate such matters completely from TM law and policy.

It might be easier to liken this issue to that of copyright and obscenity. For instance, If X writes obscene literature that is sufficiently original, there is nothing in the copyright law to prevent that; as vesting of copyright in literary works is concerned neither with quality, nor with morality but simply with ‘originality’. Thus, successful protest against that (if any) cannot possibly come by banking on the Copyright Act, but by relying on the Indian Constitution, i.e. Article 19(2) which speaks of reasonable restrictions on free speech/expression on the basis of decency/morality etc.

Likewise, my submission here, is that the protest against an unregistered discriminatory trademark should be allowed on the basis of Article 15(2) of the Constitution of India.

Conclusion 

That being said, my submissions in this regard are admittedly ambitious and throw up questions that I myself don’t have answers for just yet. For instance, how effectively can the above be enforced against private actors – if at all? If we do accept the Article 15 argument to apply against racially discriminatory marks, can we ensure an effective downside? Meaning, shouldn’t we then be able to apply this principle against products and proprietors who commercialise a range of different biases and stereotypes – even if these fall beyond those specified under Article 15? And finally, how do we reconcile this argument with policy solutions in other cases where the ‘sale per se’ is not problematic, but the ‘product’ is – e.g, tobacco or acid, where the state regulates sale through mandatory disclaimers on the packaging, and other limits to access?

I throw up these questions to the readers. In the meanwhile, I hope for an amendment to section 9(2) as suggested above, and for the day when trademark law and policy may truly make room for my vision of Indian commercial spaces free of biases.

Whatever may be the name ultimately adopted and approved by HUL in place of ‘Fair and Lovely’, the change in the TM is a welcome pro-active step by HUL which makes business sense. There is still a long way to go before India can purge its TM registration ecosystem of discriminatory marks; and the free world of non-registered TMs is even more challenging to regulate. Till then, one may continue to have Brown and Lovely (registered for liquid lipsticks with TM Application no-4138995), Dark and Lovely (in class 3 (cosmetics etc) with TM Application no-1256074/exam report issued) and Lite and Lovely (in class 3 with TM application no 1580878/now abandoned).

[1] The owner of the TM Brunetti always claimed that FUCT trademark is pronounced by saying each of the four letters, as F-U-C-T; but the USPTO and the courts noted that consumers could read and pronounce the mark obscenely.

We’re pleased to bring you another guest post by Dr. Sunanda Bharti, discussing the interface of limited edition products with copyright, design and trademark laws in India, in light of the cancellation of Ferrari’s trademark registration for the shape of its 250 GTO car (only 39 units of which were produced between 1962 and 1964) by EUIPO in July this year. Sunanda is an Assistant Professor in Law at Delhi University and has written several guest posts for us, the latest one being ‘Time to Add the Discrimination Dimension to Grounds of Refusal for Trademark Registration?‘ which was published yesterday.

Limited Edition Products and their Interface with Copyright, Design and Trademark Laws

Often, we find collectors making a beeline for limited edition products being sold by their favorite luxury brands, be it watches, cars, cosmetics or even chocolates. The limited-edition (product selling) strategy may simply involve the company selling ‘tweaked’[1] limited units of an original best-selling product that already exists, at a higher price; or it may imply sale of a first impression product. One common factor in both is that limited-edition products always come with a time window in which the end user can buy the product, for it is usually never made available at any given later point in time. The purpose is to create credibility and allure amongst consumers by highlighting the scarcity and keeping the ‘temporariness’ of the promotional period sacrosanct.

The artistic works and industrial designs comprising these limited edition products, and the trademarks they are sold under, make for an interesting study (of their interaction) respectively with copyright, design and trademark law. The object of the present post is to highlight that interface in the Indian context.

Limited editions protected better in copyright or design laws?

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In 2016, Cadbury’s, the scrumptious British chocolate brand, introduced the fascinating concept of merging its best flavours (Caramel, Whole Nut, Fruit & Nut, Turkish Delight, Oreo, Daim bar and the original Dairy Milk) into a single chocolate bar. The name was ‘Cadbury Dairy Milk Spectacular 7’ (see the image on the left).

It was a limited edition chocolate bar, of which only 50 units were made/marketed. Each piece was carefully handmade in the studio kitchen of the famous food artist Prudence Staite.[2]

From the Indian intellectual property law perspective, the chocolate bar, which was touted to have been incredibly difficult to make, was an ‘artistic work’ as per section 2(c) of the Copyright Act, 1957.

It may however also be capable of being registered as a design under the Designs Act, 2000. In cases where a work qualifies as protectable subject matter for multiple types of IP, what the creator chooses as a protection mechanism would depend upon the various essential ingredients of each such type of IP protection. Assuming that these ingredients are satisfied, the duration of protection that is available to a rights holder as a result of protection, would form an integral part of IP strategy. The present instance helps highlight this:

Assuming that it was never registered as a design under design laws, section 15(2) of the Copyright Act highlights the reason why producing only 50 bars should have been desirable. The section states that “Copyright in any design, which is capable of being registered under the Designs Act, 2000 but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.”

By the above logic, had the case arisen in the Indian context, Cadbury would have lost the copyright protection (and hence the prospect of a longer IP protection), had it applied the artistic work to the 51^st chocolate bar as per section 15 of the Copyright Act. Interestingly, thereafter, it would have been difficult to get it registered as a design because of loss of novelty as per section 4 of the Designs Act.

Though sometimes the broad object behind copyrights is touted not to be economical but creative satisfaction, two birds are often shot by a single arrow by adopting smart business (and even legal) strategies—like exploiting the creation by launching them as ‘limited editions’ in the market.

When limited editions gel well with profit motive

The same example above, of the strategic call between design and copyright protection, can lead to differing strategy outcomes in some instances. In other words, sometimes the IP strategy employed in respect  limited editions might not be to harness the ‘period of protection’ edge. This is perhaps because in such cases the lure of making profits outweighs the motive of extended protection. For example, in 2016 the Luxury Swiss watches brand ‘Omega’ launched the Omega Olympic Collection Rio 2016 to entice the collectors who would have competed tooth and nail to lay their hands on this ‘must-have’ collector’s item. This celebratory version of the three watches was limited only to 3016 pieces (see image below for reference).

Image from here. From left to right: The Seamaster Diver 300M ‘Rio 2016’, The Seamaster Bullhead ‘Rio 2016’ and The Speedmaster Mark II ‘Rio 2016’

I submit that in such cases, it makes business and legal sense to get the underlying design registered under design laws and not operate under the presumptive protection of copyright laws.

Possible interface of ‘limited editions’ with trademark law

In case of Omega, the ‘non-Rio’ versions of the watches are available sans the ‘Rio 2016’ logo (see image above for reference). So the trademark is unlikely to fall into disuse. But, what would happen, if manufacture is limited to a certain number and no version of the product is produced thereafter? Can the trademark continue to survive this ‘stop production’?

The latest case (June-July 2020) of Ferrari 250 GTO is an apt example here. GTO is an Italian abbreviation for ‘Gran Turismo Omologato’ (that is, grand tourer homologated), which means officially certified for racing in the grand tourer class. GT car was produced by Ferrari from 1962 to 1964. What is bewildering is that only 39 units of Ferrari 250 GTO were produced between the stated years and sold to individual buyers with the personal approval of the company’s founder Enzo Ferrari.

The design of the car (see image above for reference) is a registered shape trademark.

The 250 GTO shape mark was registered in 2007-8 under three classes of goods, namely clothing (Class 25), games and playthings, including model cars (Class 28), and vehicles (Class 12).

In July 2020, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) determined that the trademark registration that Ferrari held for the shape of the classic car since 2008 was no longer valid.

Ares Design, an 8-year old auto company, wanting to develop a modern version of the 250 GTO, initiated the proceedings with EUIPO in 2018. It claimed that the application for registration by Ferrari was filed in ‘bad faith’–as a defensive mark, in order to block third parties from producing and selling similarly built sports cars. It substantiated that Ferrari had stopped making any 250 GTO cars under that shape trademark since 1964–last model was made 43 years before the 2007 application for registration.

Additionally, calling for cancellation of the mark, Ares maintained that Ferrari had failed to use the mark for a continuous five year period; and hence registration (EUTM No. 006543301) of the concerned mark was liable to be cancelled.

A law similar to that of the above EU provision exists in India under section 47 of the Trademarks Act, 1999 which highlights that rights in a registered TM revolve around the ‘Use it or Lose it’ motto.

The provision broadly states that a registered trade mark may be taken off the Register (upon an application made by an aggrieved—in this case Ares) if—1) the aggrieved is able to prove that the applicant never had any bona fide intention to use the concerned TM in relation to the goods/services for which he has gotten it registered and that there has, in fact, been no bona fide use of the concerned trademark in relation to those goods or services, up to a date three months before the date of application for removal.

Another circumstance of removal may be that – 2) the TM was not being used for a continuous period of five years or longer (counted from the date on which the trade mark is actually entered in the Register, up to a date three months before the date of application for removal) has elapsed during which no bonafide use of the trademark (in relation to those goods or services for which it is registered) was made by any proprietor of the mark.

In effect, Ares asked for cancellation of 250 GTO mark on both the above counts using the contemporaneous EU law. This was accepted by the EUIPO, which clearly demonstrates the dangers of operating purely on the ‘limited edition business strategy’. Lack of production of 250 GTO cars on part of Ferrari, very few sales of their spare parts etc, all led the EUIPO to conclude that there was no sufficient ‘use’ of the TM by Ferrari, under Class 12 (vehicles) category. Likewise, no proper use could be demonstrated in relation to Class 25 (clothing).

As a result, Ferrari’s registration of the TM 250 GTO in relation to Classes 12 and 25 was struck off and only Class 28 (toy cars) remains in force. Although EUIPO’s word is not the last in the matter, its decision contains an important lesson for proprietors of luxury TMs operating solely on the limited edition strategy—that the tactic might fetch them insane profits but might make them lose the asset altogether if they keep the TM sterile for long.

PS: For Ferrari, the implication of the above decision is profound—it means that it may not be able to bar others (like Ares) from replicating the shape of their iconic sports car.

[1]     It should not be a slight, trivial or infinitesimal variation.

[2]     Prudence makes chocolate sculptures and food art. She sculpts chocolate and food into edible art. A huge range of paintings and sculptures have been eaten and enjoyed all over the world.

Topical Highlight

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IPAB to Fix Statutory Licensing Rate for Radio Royalties after 10 Years

In this post, Adyasha discusses the IPAB’s recent interim order which maintains the status quo of the royalty rate for radio broadcasts under statutory licensing. Subsequently, IPAB issued a public notice inviting suggestions from stakeholders regarding fixing royalty rates. Adyasha analyses the context in which Section 31D of the Copyright Act was added by way of amendment in 2012 to note that the purpose of the provision was to prevent the anti-competitive result of unreasonably high royalties charged by music labels that own a large amount of copyrighted content. She discusses the order of the Copyright Board in this regard, which brought down the royalties to a rate conducive to the survival of the radio industry, and the challenges to it that are still pending. Then she goes on to analyse the IPAB’s interim order before concluding with evolving industry considerations such as consumer demand, the business model and revenues of the radio industry as well as the criticism of the statutory licensing provision to highlight factors that need to be accounted for while fixing royalty rates.

Thematic Highlight

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Limited Edition Products and Their Interface with Copyright, Design and Trademark Laws

In this post, Dr. Sunanda Bharti, discusses the interface of limited edition products with copyright, design and trademark laws in India, while focussing on the cancellation of Ferrari’s trademark registration for the shape of its 250 GTO car (only 39 units of which were produced between 1962 and 1964) by EUIPO in July this year. She notes that copyright in any design is lost in India if the design is capable of being registered but not registered under the Designs Act, 2000 as soon as the article to which the design has been applied has been reproduced more than fifty times by an industrial process. Dr. Bharti uses the examples of ‘Cadbury Dairy Milk Spectacular 7’ limited edition chocolate bar and ‘Omega Olympic Collection Rio 2016’ to illustrate that strategic calls between design and copyright protection can lead to differing IP strategies. In the context of Trademark protection, she highlights that limited-edition products may not constitute sufficient use of trademark to be granted protection in the absence of continuity of use. However, she highlights that sometimes the prospect of profit can outweigh the motive of extended protection.

Other Posts

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Time to Add the Discrimination Dimension to Grounds of Refusal for Trademark Registration?

In this post, Dr. Sunanda Bharti argues for amending section 9(2) of the Trade Marks Act, 1999, to include the discriminatory nature of a mark or its violation of fundamental rights under Article 15(2) of the Constitution as a ground for refusal of its registration. She makes these arguments in light of Hindustan Unilever (HUL) changing the name of its fairness cream, ‘Fair and Lovely’ after being accused of gender discrimination and stereotyping based on skin colour. She asserts that discrimination based on skin colour is covered by Article 15. She also analyses U.S. law in this regard to note that the expression ‘offensive’ under the US statute applies to both discriminatory and obscene marks whereas the Indian Act only prohibits ‘scandalous and obscene marks’ without using the term offensive. However, US case law has also held that TMs shouldn’t be rejected based on the ‘viewpoint’ they express, in light of free speech values. On the other hand, even without an amendment to the Act, the registration of discriminatory TMs can be challenged under Article 15 read with Article 19(2) since trademarks are considered as commercial speech under Indian law. She also highlights case law wherein the Indian Supreme Court has permitted horizontal application of Article 15(2) rights to further her argument.

Decisions from Indian Courts

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The Delhi High Court in Interdigital Technology Corporation v. Xiaomi, restrained Xiaomi from enforcing an anti-suit injunction order passed by the Wuhan Intermediate People’s Court against Interdigital, who had approached the High Court for a remedy against the alleged infringement of its Standard Essential Patents (SEP) by Xiaomi. [October 9, 2020]

The Delhi High Court in GMR Enterprises Pvt. Ltd. v. Gadham Ramesh granted an ex-parte ad-interim injunction in favour of the plaintiff as it made out a prima facie case that the news publicised by the defendant not only infringes its trademark as well as copyright in the mark, but would also cause irreparable damage to its reputation and goodwill. [October 9, 2020]

The Delhi High Court in P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works, dismissed the petition and concurred with the impugned IPAB order noting that the assignor of the trademark in question (M/s Jain Industries) was required to be impleaded when its original registration and assignment were questioned, and that impleading the assignor at the current stage after 23 years would not be appropriate. [October 9, 2020]

The Delhi High Court in Novartis AG & Anr. v. Torrent Pharmaceuticals Ltd., concerning an allegation of patent infringement pertaining to one of plaintiff’s pharmaceutical compositions sold under the brand name ‘Vymada’,  issued summons and listed the matter for hearing on December 11, 2020.

IPAB in Nripendra Kashyap of Serum Institute of India v. Assistant Controller of Patents & Designs and Bharat Biotech adjourned the matter to October 22, 2020 as the respondent’s counsel had not received any communication in the matter from the appellant or his client. [October 8, 2020]

Delhi High Court in Chartered Financial Analysts (CFA) Institute v. Brickwork Finance Academy (BFA)  refused to grant an injunction against BFA for its alleged infringement of the registered trademark of CFA, holding that ‘Finance Academy’ was a generic combination and many institutes used the abbreviation ‘FA’. [October 6, 2020]

The Delhi High Court in Manish Agarwal v. The Registrar of Trade Marks & Ors. noted that the evidence purported to have been filed under Rule 45/Rule 47 of the Trademark Rules 2017 by the Respondent/Opponent was not available online on the TM Registry’s website. It directed the Head of Trademark Registry to file an affidavit with specific details regarding documents on behalf of the Opponent uploaded online. [October 6, 2020]

The Supreme Court of India issued notice in the Special Leave Petitions filed by the Madhya Kshetra Basmati Growers Association Samiti (MKBGA) and the State of Madhya Pradesh, challenging the grant of a Geographical Indication (GI) registration for “Basmati” Rice in favour of the Agricultural and Processed Food Products Export Development Authority. From November 25, 2020, the Supreme Court will begin hearing petitions filed by various stakeholders to obtain GI registration for Basmati rice. [October 5, 2020]

The Bombay High Court in Plex Inc. v. Zee Entertainment Enterprises Ltd., refused to grant ad-interim injunction against ‘Zee’ for use of the word ‘Plex’ in its new online movie channel while also condemning the malpractice of parties moving Court at the eleventh hour in IPR cases. [October 1, 2020]

A Hyderabad Civil Court, after a legal battle spanning 15 years, held that Magfast Beverages of Hyderabad had not infringed PepsiCo’s trademark in Mountain Dew. It noted that Magfast was a prior user of the trademark Mountain Dew for packaged drinking water in Hyderabad as PepsiCo failed to establish any trans-border reputation or use in 2000 when Magfast began using the mark.

Other News from around the Country

• The Delhi High Court released its draft ‘Rules Governing Patent Suits, 2020’ on October 9, 2020. It also invited comments to the Rules from the members of the bar within 4 weeks.
• Writing for the Leaflet, Justice Prabha Sridevan argued, particularly in the context of Covid-19, that patients’ right to health as part of their right to life superseded any rights that ensued to patent owners in lieu of their inventions.
• Dr Reddy’s Laboratories (DRL) was directed to submit a revised protocol for performing clinical trials of the Russian Covid-19 vaccine, Sputnik V, by the Drugs Controller General of India (DCGI).
• Zydus Healthcare Ltd. announced that the drugmaker will be launching anti-diabetic Dapagliflozin tablets under the brand name ‘Dapaglyn’ in India after its patent expiry.
• Pune-based automobile company Bajaj Auto trademarked the name ‘Neuron’ in India, covering two, three and four-wheelers along with their parts and components.
• The release of Sony’s PlayStation5 console in India may be delayed since the first PS5 trade mark application in India has been filed by Hitesh Aswani from Delhi.
• Mangalore Refinery and Petrochemicals Ltd. acquired a patent over its process of distillation of petroleum fractions by using fuel gas-hydrocarbon vapours instead of steam in order to reduce water consumption and sour water generation during fractionation operations.

News from around the World

• In an extremely consequential case for the software industry, pitting technology titans Google and Oracle against each other, the US Supreme Court heard oral arguments on October 7, 2020. The case concerned an allegation of copyright infringement against Google for reverse-engineering Oracle’s Java in order to build its Android platform.
• US based publicly funded firm Moderna Inc. stated that it would not enforce its patent rights pertaining to its experimental Covid-19 vaccines against drugmakers that use its technology since it did not want to assert its IP “to decrease the number of vaccines available in a pandemic.”
• The European Commission entered into a contract with Johnson & Johnson to secure supplies of 400 million doses of a coronavirus vaccine that the company is developing.
• The US Supreme Court denied a petition to revive the copyright suit alleging that Led Zeppelin stole its song, ‘Stairway to Heaven’ from a less popular 1967 track called “Taurus” by the band Spirit.
• The Paris Court of Appeal upheld France’s Competition Authority’s decision to make Google pay a specific fee to news publishers for using their content, as per its recently legislated neighbouring right for news in line with the EU Copyright Directive.
• Pakistan intends to oppose India’s application for an exclusive Geographical Indication tag for Basmati rice in the European Union.