We’re pleased to inform you that the Centre for Intellectual Property Studies at National Law University, Jodhpur is inviting submissions for its blog on a rolling basis. For further details, please see the announcement below:

Call for Submissions – NLUJ Centre for Intellectual Property Studies Blog

The NLUJ Centre for Intellectual Property Studies Blog invites original and unpublished submissions on a rolling basis, from students, researchers, policy-makers, academicians and lawyers, relating to any contemporary debates in intellectual property law and allied fields, including, but not limited to, cyberspace, biotechnology,  environment, competition law, human rights, trade and other related field having an interface with intellectual property.

The blog posts submitted may be in the form of short articles, short notes, opinions and case comments.

About National Law University, Jodhpur

Established in 1999, National Law University, Jodhpur (NLUJ) is one of India’s top ranked law schools, and endeavours to produce exceptional lawyers and legal scholars aimed at pushing and challenging the existing boundaries of knowledge. NLUJ is committed to the advancement of knowledge and learning and is striving to become a centre for excellence in legal studies. It is dedicated to churning out committed lawyers of highest academic and professional standards and producing top quality legal scholars.

About Centre for Intellectual Property Studies, NLUJ

The Centre for Intellectual Property Studies (CIPS), started in 2018 under the aegis of National Law University Jodhpur, aims to update the society and industry on core issues such as the growth in IPR violations, amongst others. CIPS also aims at suggesting amendments and efficient implementation of IP to the Government of India and monitoring design and dissemination of various courses and programmes pertaining to intellectual property rights training and research.

Submission Guidelines 

1. The article should be an original work of the author and unpublished in any other journal or blog. The NLUJ CIPS Blog has a strict policy against plagiarism.
2. Submissions must be made in MS Word format only and must be mailed to nlujcipsblog@gmail.com. There must be no hint of the authors’ identity in the word document submitted.
3. The authors are requested to include the following details in the body of the email: Name of Author(s), Year of Study (if applicable)/Professional Designation and Institution or Organisation of affiliation. You may also include a short bio of around 40-50 words.
4. The sources may be cited in the form of hyperlinks within the main body of the submission. In case this is not possible, the sources may be cited as end notes.
5. The content should be written in Garamond font with a size of 12 for the main body and 10 for the endnotes. Line spacing is to be maintained at 1.5.
6. Co-authorship of up to two authors is permitted.
7. The submissions should be within the word limit of 1500-2500 words. However, the same would be relaxed if imperative to maintain the quality of the submission.
8. The authors shall receive an acknowledgement e-mail on the receipt of the article by the Editorial Board and a confirmation of acceptance/ rejection of submission once the submission is reviewed and a decision is made thereupon.

Each submission shall undergo a two-stage internal review process. Our editors reserve the absolute discretion to approve or reject a post for publication. For a post to be successfully published on the blog, the author/s may be required to alter the language/grammar, justify her/his position on the law and reply to the comments of the reviewing editors.

Contact Details

For any further query or assistance, please contact us at nlujcipsblog@gmail.com.

Topical Highlight

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Mountain Dew Trademark Battle: David v. Goliath or Misapplication of Prior User Rights?

In this post, Adyasha analyses the decision of the City Civil Court of Hyderabad against PepsiCo, ruling that Hyderabad-based Magfast Beverages enjoys prior user rights over ‘MOUNTAIN DEW’ (identical to PepsiCo’s mark for its citrus flavoured soda) for their packaged drinking water business. She first looks at the facts, and the history of both business’ use of these marks in detail, as well as previous claims by plaintiff Syed Ghaziuddin, owner of Magfast Beverages. She then argues that the Court’s decision has a discrepancy in applying the prior user rule under the Trade Marks Act, 1999, inasmuch as for Magfast to benefit from it, it would have to demonstrate continuous use prior to PepsiCo’s registration in 1985 and not its first-use. She argues that the honesty of Magfast’s adoption of the impugned mark was suspect. She also notes that the Court did not evaluate the doctrine of trans-border reputation qua PepsiCo’s mark, which could arguably come to the company’s rescue in subsequent litigation in this regard.

Thematic Highlight

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Critiquing Prizes as an Alternative Mechanism for Promoting Innovation

In this guest post, Avani Bagaria examines the pros and cons of prizes as alternatives to patents for encouraging innovation. She notes that prizes are used to promote social welfare by making the inventor’s knowledge public, and thus precluding the need to grant the inventor a monopoly. They maximise consumer welfare by eliminating dead-weight losses arising out of monopoly pricing. They can also be used by the government to prioritise investment in creating certain socially valuable instead of just economically valuable goods, that the patent system incentivises investment in. However, prizes also suffer from drawbacks— they are given out of taxpayers’ money, their implementation involves market studies, determination of eligibility, managing contests and deciding on winners, which Avani argues does not make them very economical. Lastly, she notes that they can lead to the government undervaluing or overvaluing inventions. Therefore, she concludes that no one method can incentivise innovation optimally, and ideally a hybrid of methods should be used, for instance the use of prizes should be confined only to incentivise the invention of essential products.

Other Posts

Call for Submissions: NLUJ Centre for Intellectual Property Studies Blog

We recently informed our readers regarding a call for submissions invited by the Centre for Intellectual Property Studies at National Law University, Jodhpur for its Blog on any contemporary debates in intellectual property law and allied fields, including, but not limited to, cyberspace, biotechnology, environment, competition law, human rights, trade and other related field having an interface with intellectual property. More details regarding the Blog, institution, themes for posts and submission guidelines can be found here.

Call for Submissions: NLIU’s Blog on IP and Technology Law (Rolling Submissions)

We also informed our readers regarding a call for submissions invited by the Cell for Studies in Intellectual Property Rights (CSIPR) at NLIU, Bhopal’s for its Blog on IP and Technology Law. More details regarding the Blog, institution, themes for posts and submission guidelines can be found here.

Decisions from Indian Courts

• The Madras High Court in Wipro Enterprises Ltd. v. Kerala Khadi & Village Industries,  held that the defendants were not interested in the judicial proceedings and had not appeared before the court even after interim injunctions were granted and summons served against them. The Court held that given the overwhelming evidence of use and registration of the plaintiff’s trademark CHANDRIKA, the defendants, who are in a similar line of business, cannot be permitted to infringe the mark by using it for marketing their soaps. [October 29, 2020]
• The Madras High Court in Kurichi Thangabalu Karthick v. M/S. Raj Television Network Ltd., a case concerning offences under Section 51, 63, 66 & 69 of the Copyright Act for allegedly broadcasting the film songs of Raj Television Network without license, held that in the absence of more particulars about the role of the petitioners (Kurichi Thangabalu Karthick) in the affairs of the first accused company, the prosecution against them is quashed. [October 28, 2020]
• The Delhi District Court in Stanley Switchgear Products v. Mr. Sunil Agarwal, dismissed the application of plaintiff while allowing the application of the defendant and vacating the ad interim injunction granted against it. The Court noted that the defendant was the owner of the trademark STANLEY in respect of wires and cables, and the plaintiff was the registered owner of the trademark STANLEY (and prior user) in respect of other goods but not with respect to wires and cables. [October 27, 2020]
• The Supreme Court in Brihan Karan Sugar Syndicate v. Yashwantrao Mohite Krushna,  disposed of the Special Leave Petition, noting that the Bombay High Court’s order in the case concerning trademark and copyright infringement was interlocutory in nature, and thus, did not warrant interference. It also directed the trial court to expedite the disposal of the suit preferably within nine months from the date of the order. [October 27, 2020]
• The Gujarat High Court in New Gujarat Cola Private Limited v. Murli Beverages, granted ad interim relief to the appellant, noting that it was evident that it was the prior user of the trade mark HIMSAGAR and the respondent through its registered similar mark SHREE HEMSAGAR, may pass off its goods as those of the appellant. [October 26, 2020]
• The Delhi High Court in Hiveloop Technology Pvt. Ltd. v. Cresselia Tradeline Ltd. & Ors., passed an order restraining the defendants from using the plaintiff’s trademark “Udaan” as well as their tagline “Khule Munafe Ka Shutter” until the date of the next hearing in the case. [October 23, 2020]
• The Court of the JSCC-cum-ASCJ- cum-Guardian Judge in Maharishi Ved Vigyan Vishwa Vidya Peetham v. Shri Anand Ayyangar, a case involving an allegation of trade mark infringement for the use of the term transcendental meditation, held that the Court did not have the jurisdiction to try and decide the suit under section 134(1) of the Trade Marks Act, 1999. [October 22, 2020]
• IPAB in Yashoda Super Speciality Hospitals v. Yashoda Hospital and Research Center Ltd., issued notice in the application and without commenting on the merits of the case noted that it is agreeable that both parties will seek adjournment in the Civil Court, Hyderabad after the hearing date of IPAB and the client will not rely upon the impugned order dated 21.01.2020 in the Civil Court till the application for review is decided. It also listed the matter for hearing on December 5, 2020. [October 16, 2020]
• The Madras High Court in A.D. Padmasingh Isaac v. Aachi Ladies Hostel, noted that as per a Memorandum of Compromise signed by the plaintiffs and the first defendants, the defendants were to withdraw any application filed for registration of the trademark AACHI LADIES HOSTEL with respect to restaurants. The Court held that since both parties were in agreement, the suit was to be decreed accordingly with the Memorandum constituting part of the decree. [October 16, 2020]
• The Bombay High Court in Narendra Hirawat v. Satish Tandon Productions, ordered the reinstatement of YouTube links of 5 movies, taken down for copyright infringement. It observed that the defendants had not moved the Court for any ad-interim reliefs after filing its suit in July, 2020. The Court reasoned that, in effect without grant of any interim or ad interim relief, the defendant had successfully stayed the reinstatement of plaintiff’s videos by YouTube, which could not be permitted. [October 16, 2020]
• The Madras High Court in M/S. Apex Laboratories Pvt. Ltd v. Vensa Pharma, noted that as per a Memorandum of Compromise signed by the plaintiffs and defendants, the defendants agreed to not use the trademark ZINKOWIT in the future. The Court held that since both parties were in agreement, the suit was to be decreed accordingly with the Memorandum constituting part of the decree. [October 13, 2020]

Other News from Around the Country

• Medianama hosted a roundtable on the future of the Copyright Act in India and curated a useful reading list for the substantive issues to be discussed.
• An article on Livemint (India) discusses a report by the US Senate which calls for allowing the US Federal Trade Commission to protect news media organizations from tech platforms—arguing that copyright law is meant to incentivise creation of valuable content, and its spirit is violated by tech platforms that consider news to be a free resource.
• A new drug delivery method to reduce the side effects of arthritis has been developed by Indian scientists, who have also filed for a patent over it.
• White Hat Jr., an ed-tech startup, alleged copyright infringement leading to YouTube’s take down of a video by a 12-year-old kid who made fun of one of WhiteHat Jr.’s advertisements for coding courses for kids as young as six years old.
• Lucknow University was granted copyright and trademark protection for its in-house online learning portal, SLATE, meant to provide a “360-degree online classroom” to students during the pandemic.

News from Around the World

• Microsoft-owned, GitHub took down the supply code of a preferred YouTube video obtain device upon a request by the Recording Business Affiliation of America (RIAA) arguing that the device was “meant to avoid the technological safety measures utilized by authorised streaming companies resembling YouTube.”
• TikTok approached a San Francisco federal court to file a countersuit over patent infringement against its rival app Triller.
• SPOKEN GIANTS, a royalty administration company was launched publicly in the US, and is set to be the first of its kind to protect the interests of creators of spoken word copyrights (comedians, podcasters, authors of speeches/lectures, etc.).
• A Texas jury held that Apple must pay $502.8 million in royalties for its VPN on Demand to VirnetX for infringement of its patent.

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  In a piece for Al Jazeera, Michael Kwet argued for breaking up big tech since among other things, private ownership of the mechanisms of computation such as software code is a prerequisite to extract money, spy on users and target them with advertisements. He notes that if people owned and controlled the digital space instead of corporations, there would be greater knowledge sharing and privacy protection.

• Srividhya Ragavan in this piece for the TradeRX Report notes the pros and cons of India and South Africa’s recent proposal to waive certain provisions from the TRIPS agreement to deal with the Covid-19 pandemic.

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We’re pleased to bring to you a guest post by Arth Nagpal and Harsh Srivastava, analysing Gurugram District Court’s decision on intermediary liability for copyright infringement in Shree Krishna International v. YouTube (2019) in light of Delhi High Court’s landmark decision in MySpace (2016). They argue that the Punjab & Haryana High Court, before which an appeal from the decision is listed for final hearing, should follow MySpace and bring clarity on the liability of intermediaries for copyright infringement.

Arth and Harsh are 5th year B.A. LL.B. (Hons.) students at the National Law School of India University, Bangalore.

Is Shree Krishna Int’l Decision on Intermediary Liability in Line with MySpace?

Arth Nagpal and Harsh Srivastava

In a number of cases, online intermediaries have been caught in the crosshairs of disgruntled copyright owners, even for infringement by third-parties. In order to strike a fair balance between rights of copyright owners with those of the intermediaries, the landmark decision in MySpace provided for a combined analysis of the Information Technology Act, 2000 (‘ITA’) and the Copyright Act 1957 (‘CA’). The main provisions governing such liability are Section 51 of CA r/w Section 79 and Section 81 of ITA. MySpace was a welcomed decision as it limited the liability of passive intermediaries, through safe-harbours, in cases of third-party copyright infringement.

However, the 2019 decision of the Gurugram District Court (‘DC’) in Shree Krishna International does not fall in line with the same. While holding the intermediaries – YouTube and Google (‘Defendants’) – liable for infringing copyrights held by Shree Krishna International (‘Plaintiffs’), the DC misconstrued the nature of the Defendants’ involvement and ousted the application of safe-harbour provisions. The impugned decision has been appealed to Punjab and Haryana High Court (‘P&H HC’) and is listed for final hearing.

In this piece, we seek to analyse this judgment of the DC in light of MySpace and suggest a plausible approach that can be adopted by the P&H HC to bring clarity to the jurisprudence on intermediary liability in cases of copyright infringement by third-parties.

Applying MySpace to the Impugned Decision

The DC erred in its decision on three key points – first, it wrongfully diluted the standard of knowledge from ‘specific or actual knowledge’ to ‘general awareness’ to impose liability on the Defendants; secondly, it incorrectly held that the mere insertion of advertisements amounted to modification of content; and thirdly, the ouster of the application of Section 79 of the ITA was unjustified.

Dilution of Standard of knowledge to impose Liability on Intermediaries

The DC opined that the plaint should be treated as notice and relied on the testimony of Ms Debra Tucker, Manager of YouTube Legal Operations, to conclude that even though infringing URLs could be located through search, the Defendants failed to do so. Consequently, the onus of finding and assessing infringing content, based merely on the titles, fell on the Defendants.

This is contrary to MySpace which, in cases of internet intermediaries, obligated copyright owners to identify the ‘actual content which is being infringed’ in URL form. The Division Bench in MySpace observed that unlike ‘real space’, it is impossible to identify infringing content out of the millions of uploaded videos in the ‘virtual world’ and requires ‘actual’ or ‘specific’ knowledge on part of the internet intermediary. Merely providing titles to intermediaries amounts to ‘general awareness’ alone and would thus, fail to meet the required threshold.

MySpace’s approach is more suited to the digital sphere as indiscriminate take-downs lead to situations where even parties with legitimate rights over content bear the brunt of takedowns by intermediaries. This conclusion is supported by Tucker’s testimony, who stated that the Defendants “cannot come to know as to whom such title belongs to” merely by locating the URLs (see ¶23). Unfortunately, this remark was not considered by the DC.

Moreover, the sheer volume of such monitoring makes it impossible to be done manually and requires automated-filters, which are easily manipulatable. Automated tools can err especially in cases such as critiques, parodies etc, which have a very fine-line between permissible and non-permissible content (see here). Even the DelHC in Kent RO opined that an intermediary is neither equipped to determine an infringement nor does it possess the required prowess for such evaluation. This has led to “unwarranted private censorship”, a chilling effect on the free speech of citizens, curb on creativity and innovation, even takedown of legal writing.

Thus, the DC has diluted the requirement of ‘specific or actual knowledge’ of infringing material to a standard of ‘general awareness’, something that MySpace explicitly over-ruled. This approach is impractical, unfairly onerous on intermediaries and far from ideal. Thus, considering the typical nature of internet intermediaries, the P&H HC should follow Del HC’s approach in MySpace.

Insertion of Advertisements

The DC relied heavily upon the fact that the Defendants had earned illegal profits through advertisements and had no policy to compensate the aggrieved. It further held the Defendants liable for secondary infringement as in its opinion, insertion of advertisements to videos before uploading amounted to a modification of content.

This falls foul of the distinction between modification to format and content made in MySpace. DelHC focused on the point that the ad-insertion by MySpace was automated and beyond the intermediary’s actual control. Justice Ravindra Bhat further opined that in cases of automatic modification, without human intervention, knowledge cannot be attributed to the intermediary. This is a more suitable position for internet intermediaries dealing with millions of videos everyday. Attributing knowledge to intermediaries based solely on an automated process would be unfair and extremely arduous for intermediaries.

In the instant case, there is no evidence to suggest that the Defendants actively inserted advertisements. In fact, the Defendants’ submissions that the ad-insertion was automated were not even considered by the DC. Thus, the DC wrongly concluded that the automatic ad-insertion by Defendants would make them liable for secondary infringement.

Applicability of Section 79 of the ITA

The DC erroneously concluded that the ad-insertion before uploading the videos onto the website implied an active role on part of the Defendants. It further relied on the interpretation of Section 81 in Christian Louboutin to hold that the immunity under Section 79 of the ITA is not available to the Defendants.

Keeping in mind the Parliamentary Standing Committee’s report, MySpace proposed a harmonious reading of these provisions of ITA. It concluded that safe harbours under Section 79 can be excluded only in cases of primary infringement, or secondary infringement when it fails to meet the conditions under Section 79 or the Intermediary Guidelines 2011 (‘Guidelines’).

In our opinion, the essence of Louboutin was identical to MySpace, wherein, the primary focus was on the role of the intermediary. The Court in Louboutin observed that Darveys.com was “much more than an intermediary” and concluded that it was an “active participant” as opposed to a “passive intermediary”. Thus, according to both MySpace and Louboutin, the determining factor for providing safe harbour protection to intermediaries under Section 79 is the role played by them.

In the instant case, there is nothing to suggest that the Defendants were anything more than passive intermediaries. The only allegation of an active role on their part is the modification of content by adding advertisements. As argued previously, mere insertion of advertisements by the Defendants would not amount to modification of the content in violation of Section 79(2) of ITA. Further, given that there is no finding of primary infringement or violation of the Guidelines, safe harbours under Section 79 should be made available to the Defendants. Thus, the DC was unjustified in stripping the Defendants of the protection of Section 79.

Conclusion

The decision in MySpace is in line with the position on intermediary liability in cases of copyright infringement adopted by leading international jurisdictions such as the United States, particularly in Napster. The Defendants had put in place various measures to ensure compliance with the due diligence requirements under the Guidelines; for instance, they had entered into user agreements with third-parties to ensure that infringing content is not uploaded on their platform, published a usage and privacy policy etc. Such compliance was held to be sufficient to limit the liability of the intermediaries in decisions like Kent RO, Louboutin and MySpace. As discussed above, the Plaintiffs did not produce any evidence to suggest non-compliance of the Guidelines by the Defendants, yet the DC found otherwise.

Even though YouTube and MySpace are both content sharing platforms of a similar nature, DC relied solely on Louboutin – a case relating to the liability of an e-commerce platform – while completely disregarding MySpace. Interestingly, Justice Bhat, in MySpace, had noted that the dilution of the standard of knowledge to ‘general awareness’ for attributing liability, and the exclusion of safe harbours for passive intermediaries is not commercially viable and has the potential of shutting down the intermediary industry.

Though the injunction on displaying the disputed content granted by DC seems to be just, the imposition of damages on the Defendants has the potential of opening floodgates for future cases. Thus, in our opinion, the P&H HC must account for commercial feasibility and the unique nature of online intermediaries, and over-rule the impugned decision to bring the jurisprudence on intermediary liability in line with the decision in MySpace.

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The judgement of the IPAB (dated September 22, 2020) in Eveready Industries India Ltd v. Mrs. Kamlesh Chadha concerns original rectification petitions against two trademark registrations of the respondents – one for the word mark ‘Eveready’ and the other for a logo of Eveready, both in class 8 (screwdrivers, cutting pliers, hand tools etc.). The IPAB allowed the rectifications and directed the removal of the two marks from the Trade Marks Registry. This judgment is a highly fact-oriented and my objective here is not assess whether the conclusion of the IPAB was correct or incorrect.

Instead, I wish to focus on a specific issue that bothered me when reading the judgement. One of the trademarks under challenge was granted under the erstwhile 1958 Act. It was renewed for successive periods of 7 years each, in 1992 and 1999. That is to say, in 2006, one of the respondent’s trademark had to be renewed. It appears that no notice under Section 25(3) of the Trade Marks Act, 1999 was received three months before the expiry in 2006. Further, there was a disputed assignment agreement executed in 2009 in favour of the respondent, and it is pursuant to the same that the assignee/respondent sought for renewal in 2010 (which appears to have been allowed).

One of the main defences of the Respondent was Section 33 of the Trade Marks Act, 1999. Among others, the IPAB rejected this defence on the basis that Section 33 applies only for a registered trademark whereas when the rectification was filed in 2009, the registration of the trademark under challenge had automatically lapsed when the 7 year period expired in 2006 and no restoration application was filed within 1 year. Therefore, the filing for renewal/restoration application in 2010, and the allowance of the same, but effectively deemed void in law.

With respect, the above proposition of law is incorrect and contrary to at least three judgements of various High Courts:

1. The judgement of the division bench, Delhi High Court in Union of India v. Malhotra Books Depot, 2013 (134) DRJ 504 (DB);
2. The judgement of the division bench, Bombay High Court in Cipla Ltd. v. Registrar of Trademarks & Anr., 2014 (2) Mh.L.J. 315;
3. The judgement of the single judge, Madras High Court in M/s. Soudal, Joint Stock Company, Chennai v. The Registrar, Trade Marks Registry, 2016 SCC OnLine Mad 12393.

All these judgements stand for the proposition that the Trade Marks Act, 1999 is a special legislation and that for removal of the trademark from the registry on non-renewal grounds, the procedure contemplated under Section 25 must be strictly followed. Therefore, where the required mandatory notice was not issued by the Registrar of Trademarks under Section 25(3) (to be issued three months before the lapsing of the registration), the trademark cannot be automatically removed from the register. If it was not in dispute that the notice under Section 25(3) was not issued in this case, for the IPAB to have nevertheless concluded that the trademark automatically lapsed in 2006 (plus 1 year), is a clear error in law.

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[This post was co-authored with Praharsh Gour.]

Long time readers may remember earlier posts by Prashant (in 2017 and 2012), looking into opposition disposal and pendency rates. In a similar exercise, while trying to collate data on patent oppositions (filing, disposal and pendency rates), we looked through data available in the Annual Reports published by the Office of Controller General of Patents for the last few years. On finding that the Annual Reports for 2018-19, and 2019-20 hadn’t been published as of August 2020, we filed an application under Section 6 of Right to Information Act, 2005 (RTI Act) requesting the relevant public officer to send us this information. In what came as a surprise for us – one part of the data seems to contradict itself! 

Our request and the Patent Office’s response can be found here. Instead of providing the data for 2018-19, we were told to look at the Annual Reports (which had been uploaded shortly after we sent the initial RTI application). They did however provide us with opposition information for the year 2019-20. 

The two tables below (Table 1: Pre-Grant Opps, Table 2: Post-Grant Opps) have been compiled using the data available in the Annual Reports and data made available to us in the RTI response. Please note: pre-grant oppositions don’t correlate directly to patents filed or examined that same year, since examinations or pre-grant oppositions frequently take place in years subsequent to filing. However, it still gives us a rough idea of the overall trend of the rate of growth, so we have listed it as an approximate proxy measure. 

Table 1: 

While the number of pre-grant oppositions and the number of patent applications both rise (as can be expected), the disposal numbers show an interesting deviation suddenly in 2018-19. 

Despite how important it is to know the pendency rates, the Annual Reports don’t disclose the number of pending pre-grant oppositions carried forward from previous years. (They do however disclose the number of pending post-grant oppositions, as can be seen below). However, for those interested, a back of the envelope calculation – which takes the reply to Prashant’s 2012 RTI as a base number (although even there, the official response says Approximately 835 pending pre-grants as of 2012) and then adds all the subsequently filed pre-grant oppositions and subtracts all the disposed pre-grant oppositions – gives us a figure of ‘approximately’ 2,806 pending applications (!!). 

Do note though, that this does not account for withdrawals of opposition. And frankly, we have no idea how many withdrawals take place. If, for the sake of trying to arrive at a number, we were to (randomly and perhaps generously) assume that 1/4th of the total applications are withdrawn, that would still leave ‘approximately’ 2,000 plus pending oppositions! For comparison, as per the 2018-19 Annual Report, 64,686 patents were in force as of March, 2019.  If any readers have a better idea of withdrawal rates (or any additional information on any of this), please do let us know. 

It is a bit of a shame that there don’t seem to be publicly available numbers on how many pre-grant oppositions are pending, even as the number seems to be reaching an alarmingly high number.

Table 2: 

In this table, we combined data from the Annual Reports for the years 2016-2019, with the data from the RTI response for the year 2019-20. Fortunately, here, the pending numbers are provided in the Annual Report. However, looking at them, a glaring discrepancy arises.

The number of pending oppositions after 2018 was 193. The following year had 28 fresh oppositions and 7 disposals. Mathematically, this should mean there are 214 pending post-grant oppositions at the end of 2019-20. How do the official figures only have 99 on record? That’s a huge difference of 115! 

Similar to the earlier table, we do not have any official numbers on withdrawals, but unlike pre-grant oppositions, post grant oppositions can only be filed by an interested party, which makes it less likely that oppositions once filed, will be withdrawn. In any case, it is very, very unlikely that after years of 0 withdrawals (since ‘fresh oppositions’ minus ‘disposed oppositions’ are matching the official ‘pending oppositions’ numbers for earlier years), that suddenly 2019-20 saw 115 applications being withdrawn. So, what exactly happened here? 

We wrote in highlighting this discrepancy but have yet to receive any clarification or correction on this. We’ll continue to pursue this but the very existence of this discrepancy indicates that something needs to be fixed!

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In my earlier post on the IPAB’s decision (dated September 22, 2020) in Eveready Industries India Ltd. v. Mrs. Kamlesh Chadha, I had introduced the case and covered the issue concerning the renewal procedure. In this post, I discuss another connected issue, concerning the validity of the assignment agreement executed in 2009 but with effect from 2005. Based on evidence, the IPAB concluded that this was a sham document and I don’t intend to get into an analysis of whether this finding of fact is correct or not. Foundationally, it was connected to the IPAB’s finding discussed in my earlier post that the trademark had already automatically lapsed in 2006 (plus one year) and that the subsequent restoration in 2010 has no effect in law. If that is so, the IPAB concluded, there cannot be an assignment of a non-existent registered trademark later in 2009. Even though the assignment agreement stated that it would have effect from 2005, the IPAB also observed that there could not be a valid assignment agreement with retrospective effect. The IPAB held that there is no provision in the legislation for anti-dating a document. Although there is a reference to Section 45 of the Trade Marks Act, 1999 when issuing this finding, the connection to this provision is unclear.

I have my concerns on this broad sweeping statement by the IPAB. Nothing in the legislation or the Indian Contract Act, 1872 creates a prohibition from executing agreements with retrospective effect. Sections 37 – 39 Trade Marks Act, 1999 place no restriction on assignment with retrospective effect. Sections 40 – 42 of the Trade Marks Act, 1999 contain provisions for particular circumstances but also does not otherwise create a general prohibition from assigning a trademark with retrospective effect. Section 45 of the Trademarks Act, 1999 deals with the registration of assignments. As it existed in 2009, Section 45 mandated registration of an assignment agreement with the Registrar of Trademarks but without specifying any time limits. Even said Section 45 does not limit the ability of a trademark owner from executing an assignment with retrospective effect. None of these provisions enables the Registrar to go into the terms or validity of the assignment agreement.

Although not directly raised before the IPAB in this case, the finding of the IPAB also brought to my attention an issue that had bothered me before – that of the IPAB’s jurisdiction. Let us assume that there is indeed some question as to the validity of a trademark assignment agreement – whether because the agreement has a retrospective effect or for other grounds. If such document/assignment agreement stands registered under Section 45, any person aggrieved by such a decision or order can prefer an appeal to the IPAB under Section 91 within three months. In the Eveready case, it does not appear that such an appeal was preferred.

Alternatively, in theory, it may appear that a person aggrieved by an entry made in the trademark register (such as the entry of a new proprietor based on an assignment agreement) may independently apply to the IPAB or the Registrar for expunging that entry. I am not aware of any judgment in India on this specific issue (I am open to correction). I am aware of at least one English case where it was observed that a dispute on an entry relating to an assignment is to be agitated in a rectification proceeding because a special remedy is provided in the form of an appeal (In Re: Application by Cranbux Ld., (1928) 45 RPC 281, at 287):

“In my view a question whether or not an assignment from the existing proprietor is one which gives a good title to an application for registration ought normally to be raised by way of an appeal from the Registrar’s decision […,] and ought not to be raised by an application by the assignor [sic.] [under a rectification proceeding]”

Even if one were to assume that a rectification proceeding is maintainable under Section 57 of the Trade Marks Act, 1999, this raises an interesting question on jurisdiction – can the IPAB or the Registrar look into the validity of the substantive terms of an assignment agreement? Or is that a matter reserved only for a court of competent jurisdiction? On this specific issue, the scheme of the legislation pulls in opposite directions on the fact of it. On the one hand, Section 57(3) of the Trade Marks Act, 1999 (current version as well as the version before the 2010 amendment) suggests that the IPAB, when acting under Section 57, is entitled to “decide any question that may be necessary or expedient to decide in connection with the rectification of the register“. This provision appears to give a very wide berth to the IPAB and presumably, covers an issue touching upon the validity of the contract itself.

On the other hand, after the 2010 amendment, Section 45 was substituted in entirety, and a new clause (3) was added to the following effect:

“(3) Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.”

This provision certainly indicates a legislative intent that the validity of an assignment agreement is to be decided by a court of competent jurisdiction.

I don’t have a conclusive opinion on the issue but to allow the IPAB to rule on the validity of the agreement does raise some concerns. For instance, suppose the assignment agreement is being challenged as being an agreement executed under coercion or is invalidated by fraud/misrepresentation. Is it the position that the IPAB can give a ruling on this issue? I welcome any thoughts on this matter because I am not aware of any specific judgment in India directly on point.

SpicyIP recently reported on the Delhi High Court judgment in a SEP dispute where an anti-anti-suit injunction was issued against the anti-suit injunction issued by the Wuhan Court (Interdigital v Xiaomi). There are already two posts on this issue (here and here). My post intends to focus only on one issue, which I consider to be highly relevant. According to me, the issue on the grant of patent by the sovereign that I am discussing, did not get the deserved attention in the judgment.

As for the uninitiated, this is a SEP dispute involving the infringement of Indian patents. The Delhi High Court granted an anti-anti-suit injunction on the fundamental ground that the issues before the Wuhan Court and the Delhi High Court were different. While the issue before the Wuhan Court was that of FRAND royalty determination, the issue before the Delhi High Court was that of patent infringement.

Patent rights and sovereignty

Let me ask a fundamental question. Who awards patents? The sovereign. The sovereign alone can award a patent. A private individual or entity cannot award a patent.

Patents are territorial rights. In other words, one cannot claim protection in China or US with an Indian patent and vice versa. If an invention needs to be protected, one should obtain patent rights in the respective national jurisdictions.

If only a sovereign can award patents (which in this case is the Indian state), the infringement of that particular patent can be adjudicated only by the courts of that sovereign which granted the patent. How can then a Chinese court issue an anti-suit injunction against the infringement proceedings concerning an Indian patent which is before an Indian court? Such an anti-suit injunction challenges the principle of sovereignty of India. In fact, it challenges the basic rationale behind patents and ought to be negated. As to draw a parallel, taxation is a sovereign right. Can a Chinese court interfere with a tax litigation before Indian Court?

One of the arguments of Xioami was the earlier institution of suit in Wuhan court concerning FRAND royalty determination. According to me, the timelines of institution of suits are totally irrelevant. The Wuhan Court cannot simply award anti-suit injunction against infringement proceedings concerning Indian patent – a matter over which it does not have any jurisdiction whatsoever.

Let us contrast this case with the judgment delivered by the UK Supreme Court in Unwired Planet v. Huawei. While the UK Supreme Court held that it can determine global FRAND royalty rates (where it draws the jurisdiction from the contract entered into by the parties, which is the ETSI IPR Policy), the Court held that the questions pertaining to the validity and infringement of national patents fall within the jurisdictions of the respective national courts (para 58).

The Wuhan Court, according to me, had crossed the rubicon and therefore, the anti-anti-suit injunction granted by the Delhi High Court was quite warranted.

Concluding remarks

I consider this to be a well-written judgment by Justice Hari Shankar, running into 73 pages. It carefully weighed the arguments of the counsels and appreciated the counsels of both the sides for their arguments.

The judgment also carried an interesting observation, which I cant agree more with: “I may also take judicial notice, in this regard, of the fact that fixation of FRAND rates by this Court, being the final relief sought in the suit, is not likely to take place in the near future. (Quite possibly, the Wuhan Court may not be aware of the time taken, in courts in India, for commercial litigations to attain fruition.)“ (para 60)

We’re excited to bring our readers a two part post by Amit Tailor that digs into the manner in which patent appeals are managed and handled. The first part observes a worrying trend regarding representation from the patent office in IPAB proceedings, while the second part zeroes in on an RTI response to look deeper into how these appealed matters are handled at the patent office.

Amit Tailor is working as Manager (Sr Scientist) at Cadila Healthcare Ltd, handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. He also frequently writes blogs and short commentaries regarding recent developments in the field of Intellectual Property, especially patents in pharmaceutical and life sciences domain, on his Linkedin page, and has recently published two articles on IPWatchdog as well. Views mentioned here are personal.

Appeals to Controller’s Decision at IPAB – Part I: Manner in Which the Appeals are Getting Disposed of at IPAB.

Amit Tailor

The Intellectual Property Appellate Board (“IPAB” or the “board) had re-started hearing matters related to patents after the Delhi HC directed the Technical Member (PVPAT), to preside as the Technical Member for Patent matters, and directed IPAB to hear urgent matters with him in the quorum till the relevant technical members are appointed. (Delhi HC order dated Jul 08, 2019 in W.P.(C) 5571/2019, see esp. para 35-38). This has certainly resulted in some ‘positive’ movement in the direction of a fully functioning appellate board for patent matters. The patent owners and the applicants have surely found respite in that. However, it is only one half of the story; this article tries to shed some light on the other half – the circumstances under which these matters were getting disposed of. (Note: As a relevant note, Technical Member (Patents) has recently been appointed and is now in quorum for relevant matters).

Current State of Affairs of IPAB Proceedings (Patent Matters)

Recently an order from IPAB was being discussed on social media wherein a patent application, refused by the Controller, was granted on appeal by the IPAB. There is nothing unusual in getting a reversal from an appellate authority; but, after going through the order in detail, it was observed that a notice was given to the Respondent-Controller(s), but no one appeared in person or through any agent or pleader; and no written-submission or counter-affidavit was filed either. Therefore, the proceedings continued ex parte relying only on the FER, Hearing Notice and Controller’s Decision/Order(s) made available on record, for the Respondent-Controller(s)’ case.

To check whether it is an isolated instance or a routine practice, all the recent orders from IPAB in patent matters, available on the new website of IPAB from all four benches (roughly 01/05/2020 to 31/08/2020) were reviewed and comments in this post are based on these. A large proportion of those orders were dismissals by default wherein the appeals were withdrawn before adjudication and there were only 14 orders wherein the applicant(s)-appellant(s) had proceeded with the appeal and the matter was adjudicated by the board on merit – of which 8 were from appeals against refusal of patent applications, 4 from patent revocations and 1 each from refusal to accept divisional application and refusal to restore the lapsed patent.

Though 14 is a relatively small number to perform any statistical modeling, there appeared only one consistent trend in all 14 of them: no one appeared on behalf of the Respondent(s)-Controller(s), and no response/affidavits were submitted. The matters therefore proceeded ex parte and the decision of the Controller was reversed on all 14 instances.

However, in 4 of the matters involving appeal from patent revocations, the additional respondent – the opponent at the Patent Office, were represented by their counsels, but the Office and/or the Controller(s) were unrepresented in those cases too. [In one exceptional case, a controller appeared in person to answer certain queries of the board.]

Issues with Matters Getting Adjudicated without Representation from the Patent Office’s side

The primary issue with these ex parte adjudications is that they are getting adjudicated ex parte. The complex technical matters are being decided based on arguments of one party only. Anyone would appreciate the fact that any advocate/agent, irrespective of their skills, expertise, standing and knowledge, will not present any fact or will not advance any argument that he knows or believes is not in the best of the interest of his client and/or will not highlight any fact/or issue which may be detrimental to his client’s position or which may be used against him. Therefore these one-sided argument driven adjudications have a potential to set wrong precedence.

The author doesn’t want to say that the overall outcome of these proceedings would have been 180° opposite should the Patent Office or the Controller(s) have presented their case, but, at the least, certain records could have been set clear for sure. Because these decisions are from an appellate authority and are supposed to be binding on the Patent Office and the applicants alike in future, any ratio set based on a these one sided arguments, has the potential to become an improper precedence which would continue to trouble stake holders until challenged and reversed by another such order. But, shall a 2JJ bench of IPAB be competent to reverse a ratio set by another (or perhaps even the same) 2JJ bench under the Patent Act or CPC? Such a question arises because, considering the current state of affairs at the IPAB, I am not sure whether we would see a >2JJ bench at IPAB anytime soon. Under the circumstance, probably a divisional bench of a HC, at least, may be required to review and/or reverse the orders of IPAB. So one can imagine how much pain would be inflicted upon the subsequent applicants/appellants should an improper ratio is set at IPAB.

More importantly, for a large period of time, no Technical Member (Patent) presided over the proceedings and issues like scope, coverage, disclosure, obviousness etc. were being decided in these matters; and no one is there to assist the board in such complex technical issues even from the Patent Office’s side. Though the Delhi HC order (supra) suggested that IPAB avail services of independent experts should they need, the board has not yet found any case wherein such a service was needed. In absence of any assistance on technical issues from an expert and on technical, procedural and/or administrative matters from the patent office, the board is left to decide the matters on its own. The board is only getting assistance on the appellants’ case and is ‘forced’ to go through the Controller’s decisions/FERs/Hearing Notices on their own to appraise themselves of the respondents’ case. As discussed earlier, no material adverse to the applicant-appellants’ interest would be brought to the notice of the board and the board cannot be blamed for any ‘defective’ order, should they miss any material information from the record that may be against the grant or validity of patents, simply for the lack of assistance from the respondents’ side.

Under the existing circumstances, the ‘aggrieved’ applicants or patent owners are approaching the IPAB under the appellate jurisdiction, presenting their case and the board is adjudicating the matters ex parte in absence of any submissions/arguments/appearance from the Patent Office or the Controller. And the outcome of all those proceedings till date is unanimous –a reversal.

Whether it is mandatory for the Controller to appear in-person or through a pleader or to submit affidavits and other submissions before the board; whether the board can compel or mandate the appearance of the Controller; what are the provisions under the Act and Rules for the same; how these matters are being handled by the Patent office; etc, are being discussed in detail in Part-II of this article (here).

The Genesis, Aim and Objective this Exercise

While reviewing the earlier referenced order from IPAB, it was observed that certain arguments advanced therein from the appellant’s side appeared factually and legally incorrect and they should have been countered by the respondents’ side, but could not be countered and records were not corrected, simply for the lack of representation from the Respondent-Controller(s) side. I personally felt that, to that extent, the Patent Office and the L’d Controller(s) have failed to discharge their public duty. This triggered me to delve deep into the issue.

The objective of this post is not to allege that frivolous patents are being granted by the board or that the IPAB is not adjudicating the matters correctly. The author does not, in any manner, intend to discredit the Patent Agents/Advocates appearing on behalf of the applicants for their successful challenges to the Controllers’ orders. The author does not even claim that those decisions would have been opposite, should there be any appearance or submissions from the Patent office or the Controllers’ side. This post does not intend to discuss the technicality involved in those matters, but to bring to the surface the broad scheme under which these proceedings are taking place.

The broader aim and objective of this post is to highlight the fact that there are no appearances and/or submissions from the Patent Office and/or the Controller(s) in these appeal matters, and to initiate a public debate on the issue whether the same is appropriate or not.

Part two of this post can be viewed here.

This is the second part of a two part post by Amit Tailor that digs into the manner in which patent appeals are managed and handled. The first part looked into a worrying trend regarding representation from the Patent Office in IPAB proceedings. This second part examines an RTI response to look deeper into how these appealed matters are handled at the Patent Office. Notably, as he points out, the interaction around this RTI also led to the Patent Office committing to bring about some improvements!

Amit Tailor is working as Manager (Sr Scientist) at Cadila Healthcare Ltd, handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. He also frequently writes blogs and short commentaries regarding recent developments in the field of Intellectual Property, especially patents in pharmaceutical and life sciences domain, on his Linkedin page, and has recently published two articles on IPWatchdog as well. Views mentioned here are personal.

Appeals to Controller’s Decision at IPAB – Part 2: The Role of Patent Office and the Controller(s) & The Current Practice of Handling the Appealed Matters at the Patent Office

Amit Tailor

The fact that the appeals to patent matters are being heard and disposed of at the Intellectual Property Appellate Board (IPAB or the “board”) in absence of any submissions, counter-affidavit or personal appearance from the Patent Office and/or the Controller(s), has been discussed in Part-1 of this analysis (here). In this part, I am discussing the provisions relating to appeals at IPAB, the role of Patent Office and/or the Controller(s) therein and relevant provisions under the Patents Act, 1970 (The “Act” or the “Patent Act”) and Rules made there under (The “Patent Rules”) and the Intellectual Property Appellate Board (Patents Procedure) Rules, 2010 (the “IPAB Rules”)

The Legal Scheme of Appeal under the Patents Act

The overall scheme under the Act can be summarised in 4 steps:

1) Filing of an Appeal at IPAB:

Section 117A of the Patent Act provides that any party aggrieved by any decision, order or direction of the Controller or Central Government [only of a nature specifically provided therein and to no other decision or order], may appeal to the IPAB within 3 months from the date of such order, decision or direction.

2) Notice of Appeal to the “Respondent”:

Once an appeal against any order as specified in Sec. 117A is found complying with the provisions of IPAB Rules, the registry of IPAB, under Rule 10 of the IPAB Rules, is [required] to serve the notice of such appeal to the respondent, along with the copy of the appeal or the application in paper-book form. The respondent(s) for all such appeals is(are) one or more of the “O/o Controller General of Patents Design and Trademarks” (CGPDTM) and the “Controller(s)” (which would be the concerned Controller/Assistant Controller etc.). Further, if the appeal arises from the decision in which an Opponent, who has filed an opposition u/s 25(1) or 25(2) of the Patent Act, is involved, the notice is to be served on to the Opponent also.

3) Counter-statement with or without Appearance by the Respondent

Under Rule 11 of the IPAB Rules, after receiving the notice, the respondent(s) may file their counter-statement in duplicate before the registry with a copy of the same and documents, if any, to the applicant-appellant.

4) Hearing and Adjudication

The Board would then, hear and adjudicate the matter on merits based upon the material placed on the record and arguments advanced by the parties.

The Current Status of Handling Appeals at the Patent Office & Commitment for Improvements thereto

RTI Application filed to Seek Details of the Notice of Appeals & Handling Thereof at the Patent Office

As discussed in Part-1, there have been no submissions and/or appearance from the Patent Office. Therefore in order to know the process for handling of such notice of appeals by the Patent Office and the possible reason of such non-submission of affidavits and non-appearance from the Patent Office’s side, I had filed an RTI request to the O/o CGPDTM to provide a list of the notice of appeals received by the office from the Registry of IPAB in past two years and requested they provide a brief summary thereof to include details like Case No., Receipt Date, Patent/Application No, the Nature of Decision Appealed, etc. and to provide information regarding the action(s) taken, if any, in response to the notice.

Response from the Patent Office

As per the response received from the CPIO, at present there is no specific provision for recording the details of such notice of appeals at the Patent Office. Any notice of appeal received at the RECS [Receipt, EDP (Electronic Data Processing), Classification and Screening] Section of the office is transferred to GPM (General Patent Matters) section through an internal mechanism called ‘dak-diary’. There is no further material information in the records of the Patent Office, including, presumably the details mentioned in the sample template in the RTI request, like – the appellant(s), the named respondent(s), the nature of appeal etc.

The GPM section, on receipt of such notice of appeals, transmits the same to the concerned Controller in the examination section for any direction/office action. Beyond that, there is no provision in the office to record the receipt of the notice in any “fixed” form. The office does not have any information regarding what action the Patent Office or the O/o CGPDTM or the Individual Controller(s) have taken in connection to the notice, or even whether any action at all, has been taken in that regard.

The Acknowledgement and the Commitment for ‘Improvement’ from the Patent Office

Though there is no material information available on the records of the Office to provide information requested in the RTI inquiry, the efforts put in to compile the information and filing the RTI has not gone completely in vain. There is a positive side of it, the office has acknowledged that the ‘detailed particulars related to Appeal(s)’ are “important” information and the office has therefore directed the concerned section(s)/department(s) to compile such information in the future. The office has gone ahead and instructed their IT division to provide such provisions in the front office module and GPM module to record and process appeals u/s 117A as [significant information] in the patent prosecution.

This is certainly a welcome step from the office. By this, the office has exhibited its responsible and responsive character, and they should be congratulated for the same. I hope that the office, having acknowledged the importance of the information, will work swiftly to implement the committed changes in their system. Hopefully, the office may make such details public as and when such a module becomes effectively working. (RTI request and responses available here)

Is the Controller bound by the Act to file Submission and/or Appear before the Board?

There is one more significant question to be looked at in this regard – whether the Controller is bound by law to provide submissions(s) or counter-statements and/or appear in person or through an agent or a pleader, or this is at their discretion. Relevant provisions under the Patent Act and Patent Rules & IPAB Rules can throw some light on the issues.

1. Section 117E(1) of the Patents Act provides a [right] to the Controller to appear before and be heard by the board in any legal proceedings involving, amongst other things, an appeal from an order of the Controller, especially when the Controller considers that his appearance is necessary in the [public interest], i.e, the Controller has a right to appear before and be heard by the board u/s 117E(1).
2. However, the same 117E(1) provides that Controller [shall] appear in any case if so [directed] by the Appellate Board, i.e., the same 117E(1) mandates that the Controller shall be required to appear before the board if specifically directed so.
3. Interestingly, Subsection (2) of Section 117E suggests that, unless specifically directed otherwise, the Controller [may] submit a statement of particulars he deems necessary and relevant to the matters at issue. Similarly, Rule 11 of the IPAB Rules, states that the Respondent(s) [may] file counter-statement along with documents and affidavits if any.

Interpretation of these provisions to decide whether the ‘submission’ and/or ‘appearance’ are mandatory or discretionary acts for the Controller, is beyond the scope of this article, and I would prefer to reserve it for arguing in courts, should the same be at issue in future.

Conclusion

The appeals to, at least, patent matters are getting disposed of ex parte by the IPAB. The Patent Office has no detailed particulars available in their records regarding the notices of appeals received and the actions taken thereon, if any, from their side. The office has acknowledged that the information of such nature is important and has assured to make necessary provisions to record such information for future.

Whether the Controller is required to appear or provide submissions before the board, calls for a separate discussion. However, it would be safe to assume that the Patent Office and the Controller has not yet found any matter of such gravity and of such [public interest] that the Controller felt to use their right to appear before and be heard by the board. There were 4 orders from the board relating to appeal to revocation of patents in post-grant opposition, and even in those cases, there was no submission or appearance from the office/Controller(s). It is also safe to assume that the board has also not found any matter wherein they deem it necessary to direct the appearance and/or submission from the Patent Office or individual Controller. [As discussed earlier, there has been one exception wherein the Controller appeared in person to assist the board in an appeal proceeding.]

These are, I would say, initial days in patent appeal matters in India. We have only 14 final decisions from the board wherein the matters have been heard and decided on merits. I do not wish to comment on the merits as of now, because the decisions are relatively recent and are open to review and appeal. Should any party be aggrieved by those patent grants or reinstatements, they may appeal the same to the appropriate forum.

All that I can say is that the Controller(s) should submit their counter-statements and/or appear before the board, more often than not. At the same time, the board may also mandate submission and/or appearance from the Controller(s) in the Public interest and in the absence of any assistance from the Patent Office, the Board should try and take assistance from the subject matter experts more often than not. The aim of this article was never to discuss on the merits, rather it was to highlight the current state of affairs at the Patent Office and the IPAB and to lay open these issues for discussion.

Topical Highlight

Trademark Renewal Procedure: A Slip in IPAB’s Decision in Eveready Industries v. Kamlesh Chadha?

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In this post, Adarsh notes the IPAB decision in Eveready Industries India Ltd v. Mrs. Kamlesh Chadha allowing rectification and directing the removal of two marks of the Respondent from the Trade Marks Registry. He deals with a specific aspect of the decision wherein IPAB considered one of the marks to have expired in 2006 due to non-renewal, and no restoration petition being filed. He argues that this holding was incorrect since as per several decisions the procedure under Section 25 of the Act has to be strictly followed. This requires a mandatory notice to be issued by the Registrar of Trademarks three months before the expiry of a mark. As per the IPAB decision it appears that it was not in dispute that such notice was not sent to the respondent. Therefore, the holding of automatic lapse of the mark in 2006 is erroneous.

Thematic Highlight

Is Intermediary Liability Decision in Shree Krishna Int’l v. YouTube Copyright Dispute in Line with MySpace?

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In this guest post, Harsh and Arth analyse the Gurugram District Court’s decision on intermediary liability for copyright infringement in Shree Krishna International v. YouTube (2019) in light of Delhi High Court’s landmark decision in MySpace (2016). They highlight three primary flaws in the decision of the District Court (‘DC’). First, it considered a mere notice of the title of the infringing works as sufficient and putting the burden on the intermediary to search for infringing content, thereby using a ‘general awareness’ standard as against ‘specific knowledge’. Not only is it impractical, but the intermediaries are also not capable of making correct assessment of copyright infringement. Second, it was incorrect in holding that the intermediaries earned illegal profit and were liable for secondary infringement due to insertion of advertisements. The MySpace approach of distinguishing between modification of content and format should have been followed. Third, it erroneous concluded that the ad-insertion amounted to an active role on part of intermediaries and they were not entitled to safe harbour protection. They, thus, conclude that the Punjab & Haryana High Court, where the DC decision is on appeal presently, should arrive at a similar conclusion as the principles enunciated in MySpace.

Other Posts

RTI on Opposition Details Reveals Concerning (and Possibly Wrong?) Numbers

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In this post, Swaraj and Praharsh analyse the statistics on pre-grant and post-grant oppositions before the Patent Office from 2016-17 to 2019-20 as per the data obtained through annual reports of the office and an RTI filed by them. In the context of pre-grant oppositions, they noted that while the number of oppositions and the number of patent applications both expectedly rise, the disposal numbers show an interesting deviation suddenly in 2018-19 (399 as against 108 in 2017-18 and 67 in 2019-20). They, however, note that despite the importance of knowing pendency rates, the same are not disclosed for pre-grant oppositions. Through approximate calculations they note that even assuming a 25% withdrawal rate, over 2,000 applications currently remain pending. For post-grant oppositions, on the other hand, the reports provide pendency rates. However, there appears a glaring discrepancy in the data since pending applications in 2019-20 are shown as 99 whereas it should be 214. They, however, note that this does not factor in any possible withdrawals, but such withdrawals appear improbable given that such oppositions are filed by interested parties and no withdrawals had been reported in the preceding years.

Retroactive Trademark Assignment Agreements: Another Slip in IPAB’s Decision in Eveready Industries v. Kamlesh Chadha?

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In this post, Adarsh analyses IPAB’s holding against retrospective trademark assignment in its recent order in the Eveready dispute. He raises concerns about this broad sweeping denial by the IPAB and highlights that no provision in either the Indian Contract Act, 1872, or the Trade Marks Act, 1999, generally prohibits retrospective assignment of rights. He then discusses IPAB’s jurisdiction in deciding upon the validity of a trademark assignment. He first notes that if an assignment agreement is registered under Section 45, the same can be appealed against under Section 91, which was not done in the instant case. As an alternative, he states that theoretically someone can independently apply to the IPAB or Registrar if aggrieved by any entry made in the register. Even assuming the maintainability of a rectification petition under Section 57 given its broad wording, he reads it in conjunction with the amended Section 45 to highlight a legislative intent that the validity of an assignment agreement is to be decided by a court of competent jurisdiction.

Decisions from Indian Courts

• Madras High Court in Ashique Exports (P) Ltd. v. Suresh K.K., dismissed a trademark infringement suit seeking permanent injunction on the use of the mark ‘Super Wash’ by the defendant. It held that the plaintiff could not establish itself as a prior user of the mark and the evidence submitted by it was inadmissible since they were Xerox copies without any indication of why original was not filed. Additionally, it held that since the defendant was not carrying any business within the territorial jurisdiction of the court, it could not grant the desired relief. [November 4, 2020]
• Delhi High Court in ATE Enterprises Pvt. Ltd. v. Suresh S.G., granted an ad interim injunction in favour of the plaintiff, restraining the defendants from using the plaintiff’s confidential and proprietary information, but did not grant an injunction with respect to the defendants’ patent application as a remedy existed in form of pre-grant opposition. [November 2, 2020]
• Delhi High Court in Astrazenca Ab v. Alkem Laboratories Limited, denied an interim injunction to Astrazeneca against generic companies for the patent in the drug Dapagliflozin. [November 2, 2020]
• IPAB in University of Copenhagen v. Controller of Patents, allowed an appeal against the Controller’s decision in denying patent protection subject to the appellant deleting one of the independent claims from its application. [October 27, 2020]
• IPAB in Dow Agrosciences LLC v. Controller of Patents, allowed an appeal against the Controller’s decision in denying patent protection on the ground of non-filing of proof of right document despite the furnishing of the PCT Declaration under Rule 4.17(ii). [October 27, 2020]
• IPAB in Esco Corporation v. Controller of Patents & Designs, allowed an appeal against the Controller’s decision denying a divisional application for a patent for a wear member. [October 27, 2020]
• IPAB in Tony Mon George v. Controller General of Patents, Designs, and Trademarks, allowed an appeal against the Controller’s decision denying a patent application for a Stem Cell Factor Inhibitor considering the amended application to contain ‘new’ claims. IPAB held that the claims in the amendment application were not ‘new’ and remanded back the application to the Controller to conduct the tests of ‘novelty’ and ‘inventive step’ which it failed to do earlier. [October 27, 2020]
• IPAB in UCB Pharma SA v. Controller General of Patents and Designs, dismissed an appeal against the Controller’s decision denying a divisional application since the subject matter of the same was already covered in the parent application without any multiplicity of inventions objection. [October 27, 2020]

Other News from Around the Country

• BananaIP in a three-part post (available here, here, and here), uploaded their submissions to the Registrar of Copyrights for amendment of the Copyright Act, 1957.
• Sakal Media Group has filed a trademark infringement suit against a Newslaundry reporter for the use of their logo in a story concerning sacking of employees by Sakal amidst the pandemic.
• BananaIP published their comments on the draft High Court of Delhi Rules Governing Patent Suits, 2020.
• Mirzapur 2 producers have issued an apology incorrectly using references to the novel Dhabba, written by the 81-year old popular novelist Surendra Mohan Pathak, in the series and have promised to rectify this error within three weeks.

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• The profile picture of BCCI’s official handle was recently removed by Twitter owing to a copyright infringement claim.
• Professor Shivlal Mewada of Government Holkar Science College, along with his team, has obtained an Australian International Patent for a system for detecting cyber-attacks.
• The National Botanical Research Institute has filed a patent for its herbal drug NBRI-Uro-05 to be used for treatment of kidney stones.
• Vijay Kirloskar, the chairperson of Kirloskar Electric Co Ltd, has sued his nephews in a Pune court for illegal use of Kirloskar logos by seven entities despite not being shareholders of the Kirloskar Proprietary Limited.
• An IIT Indore research team has developed ruthenium catalysts for producing hydrogen gas from methanol on a large scale, and have applied for a patent for the same.

News from Around the World

• The UK IP Office published a set of key information on how the UK IP system and the Office will operate after the transition period ends on December 31, 2020, for a smooth departure from the EU IP systems.
• A German appeals court has lifted the enforcement of an injunction obtained by Nokia against Lenovo restraining it from selling its products in Europe.
• The European Patent Office (EPO) Technical Boards of Appeal has ruled in favour of Sanofi and Regeneron, invalidating certain claims of a European patent held by Amgen, relevant for the drug Praluent sold by the two companies.

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A few weeks ago, NASSCOM had informed its members that the Copyright Office is seeking comments as to whether there was a need for amendments to be carried out to the Copyright Act. Subsequently, Medianama reported that the consultation process seeking opinions on whether to amend the Act seems to only include industry stakeholders. The updated deadline for sending in comments is November 30. It would seem that some law firms also have been invited to this process (for eg, see here). There does not however appear to be any public notice of such consultation process on the website of the Copyright Office. In this two-part post, I shall dissect the implications of this opaque closed-door consultative process adopted by the government in light of larger ramifications of copyright law. I shall then highlight some of the prominent subject areas that need special consideration while discussing any amendments to the Act.

Copyright as a Public Right

As Landes and Posner aptly explain, “[s]triking the correct balance between access and incentives is the central problem in copyright law”. The limited monopoly granted by virtue of copyright law is justified only to ensure access to certain works that would otherwise not be made available to the public due to high costs of expression. Thus, as the welfare theory of copyright law emphasises, it is the broader interests of the society that underpin the essence of copyright law. The focus, therefore, in determining the form of regulatory framework that should govern the regime of copyrights has to be on the benefits accruing to the public at large.. Excessive protection to the rights holders would be against this focus, negatively affecting not just access but also creativity, culture, and freedom of expression, among other aspects.

Closing the Door on a Public Right

The effectively ‘back-door’ consultations currently being carried out by the government are antithetical to the above highlighted aim of copyright law. They are, in effect, also opening a (further) slippery slope towards the privatisation of copyright law. Due to vested interests, private entities are incentivised against any amendments reducing their stronghold on the monopolistic rights that they hold and unreasonably exercise at times. There is instead a possibility of suggestions for further concretising and maximising their existing rights. This, in turn, reduces access to creative works (and related freedoms) and at times access to works already in the public domain, thereby causing a disservice to the purpose of copyright law in the first place.

This could be contrasted with the last major amending exercise to the Copyright Act that was carried out in 2012 (see here for discussions on it on the blog). The same involved an elaborate consultation with varied stakeholders bringing forth their perspectives on the various aspects assessed during the process. Admittedly, the amendments faced several legal challenges, predominantly from large corporate entities whose profit share would have been impacted by the same. Particularly, the amendments concerning statutory licensing of works and grant of ownership and royalty shares to lyricists and composers were hotly contested. The greater emphasis, however, for the purposes of this post has to be made upon the legislative intent behind certain major amendments. The extension of fair dealing exception to all works, broader library exceptions including digital storage, and the introduction of the disability exception, served to increase access to works in the society. At the same time, fairer ownership and compensation model for lyricists and composers sought to incentivise the true creators of new works, as against the earlier regime benefiting merely the producers. It thus served an important exercise furthering the right incentives and greater access. Although there might be certain uncertainties in their interpretation and ineffectiveness of some changes, the same do not take away from their public interest focus, and the deficiencies could be plugged in future amendments.

Implications of Leaving Out the Public

Even if it is (very optimistically) assumed that the industry bodies adopt a neutral stance as against the apprehensions noted above, it is imperative to open doors for the consultation to the public. This is because without multi-stakeholder perspective, large sections of stakeholders will go unheard who are best placed to lay down their interests based on their own practical experiences. This is especially true for those having no representation amongst industry bodies, particularly those with interests contrary to these private entities. Placing it in the context of the 2012 amendments, for instance, without the involvement of civil society and affected persons, the exceptions for the print disabled and digitisation of library works could never have come into being, and without engaging lyricists and composers the changes to their payment structures would never have come into picture given their lesser bargaining power.

There also remain several important considerations that will almost certainly remain unaddressed sans broad public consultation. For instance, the concerns surrounding the appropriation of works of minority communities by dominant cultures that are already suppressed in the mainstream discourse would be further subjugated. Similarly, the everyday consumers and their online activities that are aggressively targeted by rights holders by claiming copyright infringement will remain unaddressed. A recent example in point are the claims that copyright is being used as a tool to silence dissent by WhiteHat Jr and Byju’s. Several such examples exist and these are an affront to free speech in the garb of untenable copyright claims without entailing any responsibility on the part of the claimant. This, however, becomes a non-issue from an industry perspective.

On the same lines, the challenges faced by open access initiatives (see, for instance, here) due to the fallibilities of the copyright law that would not be given particular focus by private entities given their non-importance or negative importance for them. It, thus, requires greater civil society participation to ensure greater access to works. Finally, others like classical and indie artists, and traditional artisans, hold an altogether different position as they often may be largely unaware of their already existing rights under the law, thereby either waiving away or not enforcing a large share of their rights, or simply bulldozed over. In this sense, their experiences bring insights entirely opposite to what the mainstream industry could imagine. Therefore, in light of these considerations, restricted industry consultations at this stage are unacceptable. In any case, if the government does consider bringing forth a draft amendment bill, it is absolutely necessary to conduct wide public consultations regarding the same.

With this context and an emphasis on the need for an open, transparent, and public consultation on amending the Copyright Act, I shall highlight the main themes that such a process should consider in Part II of this post.

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This post is in continuation to my previous post (here) highlighting the implications of closed door consultations on amendments to the Copyright Act. Here, I discuss some of the major themes that such amendments must consider. Please note that due to the scope of this post, it is longer than our usual posts.

Fair Use and Free Speech

The fair use principles (for ‘non infringing uses’) are carved out as exceptions and limitations to the rights of a copyright owner, premised on the idea that the societal benefits in allowing such use are larger than any possible loss suffered by the owner. The Copyright Act lays down this regime in Section 52 of the Act. They, in essence, promote innovation, creativity, and free speech and expression in general by allowing new works to be created without fears of repercussions. This becomes particularly important in the digital age with the growth of user generated content that is being published online, inter alia, on social media platforms.

The provision, however, suffers from a severe inhibition in that it allows for this protection to be claimed only based on the exhaustive list of grounds it mentions. In doing so, it appears to confine the extent of creative permissible uses a work can be subjected to, without factoring the practical effects of the same. Take, for instance, the question of whether parody videos are protected as fair use if they borrow from the original work. The only ground that could cover it would possibly be Section 52(1)(a) wherein it has to be shown that the use was for the purposes of ‘criticism’ or ‘review’. While certain courts have indeed held parody to constitute fair dealing, it is quite possible that it would not pass muster in a different court, especially in the absence of any definition of what is meant by terms such as ‘criticism’ or ‘review’. For instance, as I have discussed on the blog earlier (here and here), though it might be possible to make a claim that sharing short sports clips could be covered by this provision, it is not difficult to imagine a court reaching a different conclusion. In such a scenario, two things become necessary: first, the existing categories of exceptions need to be clearly defined as to what they represent, and second, instead of limiting fair use protection to an exhaustive list, a shift to a broader inclusive model, such as that of the United States, with the presently enumerated exceptions as an indicative list, be made to ensure that uses that are hard to categorise in a particular head but should deserve protection are not excluded.

Another problem that remains associated with the provision is its use of the term ‘fair dealing’ in Section 52(1)(a). As against the broad United States model where fair use only requires satisfaction of a four-factor test, the Indian model applies a different standard. Apart from Section 52(1)(a), where ‘fair dealing’ is specifically mentioned, there is no need to turn to a similar test for claiming an exception to the copyright. Any such requirement in context of Section 52(1)(i) was rather specifically denied in the DU Photocopy case.

In the context of Section 52(1)(a), however, the Delhi High Court in India TV Independent News Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd. has held that the four-factor test as used in the United States should be referred in order to interpret the term ‘fair dealing’. This decision, however, does not bind any other court, and they could arrive at an entirely different conclusion in interpreting the term ‘fair dealing’ due to an absence of legislative guidance to this effect. Given that Section 52(1)(a) is the broader, residuary, part of the provision, allowing for a great diversity of claims to be brought within its fold, this uncertainty further inhibits the use of the work. Therefore, the term ‘fair dealing’ must be defined, ideally in broad strokes similar to the four-factor test.

Website Blocks and Online Speech

Copyright claims have been the reason behind a large majority of websites that have been blocked based on court orders. Presently, these website blocks are predominantly being carried out under Section 151 of the CPC without any clear parameters in deciding when and how a block order should be given. Interestingly, the Delhi High Court in UTV v. 1337x.to has sought to highlight the impact of such takedown orders on freedom of speech and expression. It specifically called for a ‘fair balance’ to be struck between the IPR rights and right to trade and free speech, and limit the website blocking to only certain ‘rogue’ websites. This approach, however, appears to be far from being the case as can be seen as the recent examples of dynamic injunctions that have been issued by courts without going into the determination of the ‘rogue’ nature of the websites involved and the necessity of taking down the entire website as against a specific URL (see here, here, and here). Such expansive content takedowns without requiring a proportionate procedural check on their desirability significantly dents online speech. In any case, this being merely a Delhi High Court precedent, it lacks binding value in other jurisdictions. In order to remedy the same, it is desirable to adopt a multi-step statutory framework that necessitates carrying out of a proportionality analysis while determining whether takedown of a specific URL is an insufficient remedy and blocking of the entire website itself is required, as well as ensuring due process requirements and procedural safeguards in place regarding web blocking.

Intermediary Liability

Arguably the most hotly debated issue in terms of impact of digital media on copyright law is the determination of liability of intermediaries for infringing content posted on their platforms. As has been discussed on the blog previously, apart from facing onerous licensing conditions, UGC platforms have been facing a constant pressure from large copyright owners in taking down any content utilising their works in any form. This is despite the use being transformative in nature, without having any substantial impact on the revenues of the owner. Due to these aggressive strategies and the uncertainty on their liability, the platforms tend to over comply with copyright infringement complaints. Several intermediaries such as YouTube, etc., take down content immediately on receipt of any notice by anyone, without even requiring upfront proof of holding rights over the alleged infringed content as per their Copyright Complaint Form. This flaw has been utilised recently, for instance, by WhiteHat Jr in silencing dissent and criticism against it. The Delhi High Court in Myspace dealt with several concerns regarding the liability of intermediaries, including the specificity of notice served by the complainant, harmonious interpretation of Section 81 of the IT Act and the safe harbour for copyright infringement claims, and compliance with takedown requests. It, however, left a lot to be clarified, and due to the limited jurisdictional applicability has not settled the debate as can be seen from a similar question pending on appeal before the Punjab and Haryana High Court. For the prospective amendments, resolving this muddled regime of intermediary liability in a manner ensuring least possible restriction to free speech must be a key point of discussion.

Decriminalisation of Copyright Law

Chapter XIII of the Copyright Act lists out copyright related offences for which even carceral penalties may be awarded. Nandita Saikia has extensively critiqued the criminal treatment of copyright violations, highlighting its fallibility in, inter alia, not requiring the presence of intention for holding an accused as guilty, and the vague nature of the offences. Though she notes that in light of India’s TRIPS commitments, wilful infringements on ‘commercial scale’ are required to be dealt with through criminal provisions. Apart from this possible caveat, there is an urgent need to rethink the viability of adopting a criminal law approach to copyright law. It has to first be ascertained as to what are the harms that are sought to be redressed by criminalising certain actions and if criminal provisions, and the accompanying impingement of individual liberty, is necessary (or even useful) to redress the said harm. For instance, take the case of Section 63 that prohibits infringing any copyrighted work knowingly. A scenario where this provision could be invoked is when a collector of sports archival clips informally sells some clips to someone. While such collection should be considered fair use, as pointed out earlier given India’s unclear fair use regime it could also be held to be an infringing use. Since this transaction is made for gain in course of a trade, the proviso would also not lead to lesser penalty, and the infringer has to undergo a minimum of six months of imprisonment. In such a scenario, the harm sought to be redressed is the potential economic loss that will be accrued to the rights owner due to this act by the infringer. This loss would possibly be the reduction in the amount paid to sports boards by the buyers of these clips, largely media agencies, due to availability of clips, which in turn would be negligible if it is not shared publicly. This issue can be resolved by merely providing for an adequate compensation to the rights owner, without any need to take recourse to the criminal justice system. There, thus, hardly appears to be any justification in criminalising such activities.

The justification often put forth to support criminalisation has been two-fold: first, penalising infringers having no ability to compensate for the loss; second, creating a deterrence effect amongst potential infringers. As far as the first argument is concerned, while the infringer’s inability to pay shows a situation where the rights owner faces difficulty in recouping its loss, imprisonment for the same also leads to no particular benefit to the owner either. Other forms of penalties such as possible variations of community service could be an interesting option to explore. On the second count of deterrence, this argument requires clear evidentiary backing to support itself, particularly because despite the existence of these offences on the statute books they haven’t of themselves seem to have had any substantial impact on the extent and commonality of copyright piracy in India. In absence of proof that these justifications are valid, the continuation of penal provisions for copyright violations only serves as a tool for stronger parties to utilise these provisions to exploit or threaten smaller parties into compliance with their expectations. In this form, the penal provisions might instead act as deterrence to creativity and reduce access to works instead of incentivising them. Hence, the amendment process should consider decriminalisation of copyright law to the maximum extent possible.

Orphan Works: The Silent Speech

Orphan Works are those works whose owners are either unknown or cannot be located. While there is an absence of Indian statistics on this point to my knowledge, the British Library has estimated around 40 percent of its copyrighted works to be orphan! This highlights the magnitude of the problem their access poses. It is due to this reason that their treatment in copyright law has been a major point of discussion of late in major countries such as countries in the EU, the UK, and the US, and others such as Canada are constantly dealing with statutory licensing mechanisms for such works. India, on the other hand, remains surprisingly unconcerned about the same, despite its model being mentioned in almost all discussions on this issue. India follows a compulsory licensing system as found in Section 31A of the Copyright Act requiring a prospective applicant to file an application for seeking a license from the Appellate Board. The procedural formalities, however, remain muddled with uncertainties with primary issues such as the extent of search for the owner required for it to be considered ‘reasonable’, the treatment of moral rights of the owner, and the derivative use of the work, remaining unspecified. It is thus pertinent to provide greater certainty on the functioning of this mechanism to allow for greater access to works that have become orphan.

Other Issues

Apart from the themes discussed in detail above, the following major issues, as discussed on the blog earlier, would also be pertinent while deliberating amendments to the copyright law: Authorship of AI created works (see here), text and data mining and copyright infringement (see here, here, and here), statutory licensing for streaming services (see here, here, and here), digital exhaustion (see here and here), and open access initiatives in form of easier copyright waiver mechanisms (see here) and perhaps most significantly, open access to government material and the laws (see here, here and here).

Conclusion

In this post, I have pointed out some of the major issues that need to be re-assessed under the Indian copyright regime. As highlighted, they have severe ramifications on the right to free speech and access to culture, among other things. A statutory treatment of these issues that have particularly arisen with the proliferation of the digital media is necessary and it cannot be left to the vagaries of inconsistent interpretations of high courts and district courts. They should thus be at the centre of any plans to amend the Copyright Act. Despite this large scale impact on the rights of the public, the move to push for closed door consultations with limited stakeholders raises questions as to the way in which the Copyright Office envisions copyrights. It, prima facie, appears to be a vision sans the public interest involved, and it can be hoped that the doors are opened for a transparent and deliberative consultation soon. Given the lasting impact such amendments might have, it would be great if more informed readers and affected stakeholders could share their thoughts on these issues and possibly highlight areas that the post might have missed.

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As our readers may recall, in June last year, the Government had published a draft amendment to Form 27 for comments. The amendment exercise was undertaken pursuant to the patent working PIL filed before the Delhi High Court by Prof. Basheer in 2015. The Court had disposed of the PIL in April 2018, directing the Government to complete all steps towards effectuating necessary amendments to optimise the patent working provisions within strict timelines. As per its undertaking, the Government had agreed to publish the amended version of Form 27 as approved by the competent authority (DIPP) on or before September 6, 2018. After an enormous delay of almost two years, the Government finally published the revised version of the Form last month, as part of the Patent (Amendment) Rules, 2020.

Although the revised Form is better than the draft one published last year, it is unfortunately worse than the previous Form. Instead of strengthening the patent working disclosure norms, the new Form significantly dilutes these norms further and kills the spirit of what Form 27 is meant to achieve, thereby defeating the entire point of this amendment exercise.

A table comparing the amended Form 27 with the proposed Form and the previous Form can be viewed here.

Background

Importance of patent working disclosure requirement and Form 27

A law firm representative at one of the Form 27 stakeholder consultations I attended earlier this year, vehemently asserted that the purpose of granting patents is to incentivise innovation and not to ensure that patented inventions meets the requirements of the public at reasonable prices. However, contrary to this belief that many others may also hold, the purpose of Indian law in granting patent monopoly is not only to encourage innovation, but also to ensure that the benefit of the innovation reaches the public. This is clear from the ‘General principles applicable to working of patented inventions’ enshrined under Section 83 of Patents Act, 1970 (in particular, see sub-sections (a) and (g)).

Accordingly, the law imposes on patentees/licensees the duty to work the patented invention in India and ensures that it is accessible to the public, both in terms of availability and affordability. The failure to fulfil this duty can trigger a penalty in form of compulsory licensing (under section 84) or even revocation of the patent (under section 85). It can also result in refusal of an interim injunction in favour of the patentee in an infringement suit. The disclosure of information on patent working and access to it thus holds critical importance for public interest. Accordingly, Section 146(2) of the Act r/w Rule 131 of the Patents Rules, 2003, uniquely, requires every patentee and every licensee to submit an annual statement disclosing the extent to which they have commercially worked the patented invention in India to the Patent Office, in the format specified in Form 27. ­­

Blatant non-compliance and Prof. Basheer’s PIL seeking strengthening and stricter enforcement of norms

However, as revealed by an RTI investigation conducted by Prof. Basheer along with Sai Vinod in 2011 and also an extensive­­­­ survey conducted by him later, this important statutory mandate has been blatantly disregarded by patentees/licensees and the Patent Office has failed to initiate any action against them.

There’s also been considerable pressure from US Government and MNCs to effectively do away with this requirement, as can be seen from USTR Special 301 reports and the submissions made by the USPTO and various industry associations to the Indian Government.

In 2015, Prof. Basheer filed a PIL before the Delhi High Court in 2015 seeking a stricter enforcement of patent working disclosure norms. The PIL also suggested critical changes to the Form 27 format and sought appropriate directions from the Court to strengthen these disclosure norms. For more on the background of the PIL and the role of patent working disclosure norms, please read Prof. Basheer’s article ‘Making patents work: of IP duties and deficient disclosures’ published in the Queen Mary Journal of IP and our previous posts here.

Stakeholder consultation and amendment of Form 27

During the course of the court proceedings, the Central Government acknowledged that the existing Form 27 was woefully inadequate to serve the purpose and objectives of the Patents Act (see here and here). In view of a categorical undertaking by the Government to effect appropriate amendments to Form 27 and allied provisions within a period of 1 year, the Court disposed of the matter in April 2018.

As part of the amendment exercise, the Government had invited comments from stakeholders in March 2018 and also held a consultation meeting in April that year. The comments received were published on the Patent Office’s website pursuant to an order passed by the Court directing it to do so in order to allow the stakeholders to participate in the process effectively. (All comments submitted can be viewed here and here. The submission by Prof. Basheer, Sai and me along with the suggested Form 27 format sent by us later can be viewed here and here). After a huge delay of 8 months, the Government published the draft amendment to Form 27 in May last year, inviting objections and suggestions from the public. However, unfortunately, it did not publish the comments it received this time. (Our submission on the proposed changes to Form 27 can be viewed here.)

Subsequently, in February this year, the Government held a meeting with selected stakeholders for further consultation. The meeting was attended by representatives from various law firms, companies and industry associations. Strangely and worryingly, however, I couldn’t spot any other representatives from civil society. Not even any of those who had earlier submitted comments and also attended previous stakeholder consultations. Since the names of the invited stakeholders were not made public, one can’t say whether they were not invited or they chose to not attend. Nor can one say whether any of them had even submitted comments on the proposed amendment, since the comments were also not made public as mentioned above. The consultation was thus predominantly focused on the interests and concerns of the patent holders. During the meeting, we’d requested the Government to publish the comments online and we were assured that they’ll soon be uploaded. However, despite the assurance, the comments haven’t been published on Patent Office’s website till date.

Finally, after an inexplicable delay of around 2 years, the Government notified the amended Form last month.

New Form Seeks Even Lesser Information than the Previous Form

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The new Form is certainly an improvement over the Form proposed by the draft amendment last year, as it has reinstated the requirement to state the reasons for not working the invention and steps being taken towards working the invention (with an arbitrary word limit of 500 words though as discussed later in the post). The proposed Form had replaced this requirement with that of stating only the “justification for not working”.

However, apart from this, it continues to suffer from the same problems as that we’d pointed out in an earlier post on the proposed Form. Instead of seeking more elaborate details in respect of the information that the previous Form called for (as suggested in the PIL), it has done away with the requirement of proving a lot of such important information altogether, thereby damaging the core essence of the patent working requirement and the Form 27 format.

The patentees and licensees are no longer required to submit any of the following information under the new Form:

1. Quantum of the patented product manufactured in India or imported into India;
2. Country wise details of the value and quantum of the patented product imported into India;
3. The licenses and sub-licenses granted during the year; and
4. Statement on whether public requirement has been met at a reasonable price.

Quantum of the invention

There is no justified rationale to exclude the information on the quantity or the total units of the patented invention manufactured and imported in India. This data is critical in ascertaining the extent of the working of the patent and plays a significant role in enabling the compulsory licensing regime. For instance, Natco was able to present a persuasive case for grant of a compulsory license largely because of Bayer’s disclosures through Form 27. Without the information on the actual quantity of Sorafenib (Nexavar) drug manufactured and imported by Bayer,­­ it would have been impossible to ascertain whether the patent had been worked in India and whether it had satisfied the reasonable requirements of the public or not. Exclusion of the requirement to submit this information defeats the entire purpose of seeking submission of this Form. And indicates that the Government isn’t taking patent working disclosure seriously and leaning towards interests of patent holders.

Extent of meeting the public requirement at a reasonable price

Instead of calling for more particular information in this regard (such as estimated demand of the patented invention or product, extent to which the demand has been met, and the details of any special schemes or steps undertaken by the patentee to satisfy the demand) as suggested in the PIL, the new Form has omitted this requirement altogether. Without such information, it would be impossible to determine if the invention has been sufficiently made available and is affordable to the public.

Licenses and sub-licenses granted during the year

Again, instead of seeking more specific and elaborate details­­­ in this regard (such as names of licensees and broad terms of the licenses) as suggested in the PIL, the new Form has done away with this requirement altogether. Now, the patentees/licensees are not required to even disclose the very existence of licenses/sub-licenses in the Form. This is despite the Court having clarified that a patentee could not, under the guise of confidentiality, refuse to disclose the existence of licenses and licensees’ names as public disclosure of this information is anyway mandated under Section 67 r/w Section 72 of the Act. In fact even the licensing terms are to be disclosed to the Patent Office under Section 69, though they can be requested to be not disclosed to the public except under a court order.

The removal of the requirement to disclose licensing details means that the patentees and licensees will merely be self-certifying that they have ‘worked’ the patent without backing the claim by data on how they have worked the patent, including through a set of licenses/sub-licenses.

Without disclosure of information on the public requirement of the invention, the quantity manufactured/imported, and the quantity available in India, details of the licences granted etc., it would be impossible to objectively determine whether the patented invention has been worked in India and whether it is sufficiently available to the public at a reasonable price. Disclosure of merely the information on approximate revenue or value accrued from the invention that the new Form solely requires, particularly in the absence of the disclosure of its per-unit price, will not enable this assessment. This renders Form 27 meaningless and our patent working disclosure norms redundant.

Word limit offers an additional escape route!

In addition to requiring lesser information, the new Form restricts the amount of even the little information that it seeks. Like the proposed Form, it has prescribed an arbitrary word limit of 500 words for the statement on reasons for nor working and the steps taken towards working the patent. There’s no rationale for imposing a word limit. As discussed in the earlier post, this will prevent “the patentees/licensees from submitting all information that may be necessary for explaining why they have not worked the patent and what steps they have taken (if any) towards working the patent. Further, it may also allow crafty patentees to supply minimal obscure information and then claim that they couldn’t ‘tell it all’ owing to the word limit.”

Other Changes

1. As discussed in the post on proposed Form, the critical part of the previous Form 27 i.e. Paragraph 3, which included even the question on whether the patent has been worked or not, merely asked the patentees/licensees to “Give whatever details are available”. In the revised Form, the words “Give whatever details are available” have been removed (see paras 3, 4 and 5). While this may appear to be a mere change in format, it does, to some extent, mandate disclosure of the information sought in slightly stronger terms.

2. The previous Form asked for the ‘value of the patented product’ manufactured in India and imported from other countries, but it failed to capture the actual sale of the product in India as it was not clear what is meant by ‘value’ of the product. The revised version brings in clarity by instead asking for the ‘approximate revenue/value accrued in India to the patentee/licensee from the patent through manufacturing in India and importing into India. This is, however, just a slight improvement and still does not address the concerns raised in the PIL. For instance, the Form still does not mandate disclosure of the per-unit price of the invention and has done away with even the disclosure of the quantum of the invention manufactured/imported. This renders the sole information on revenue/value accrued insufficient to assess whether the invention has been made sufficiently available to the public at a reasonable price.

In addition to the statement of revenue/value accrued, the new Form also asks for a ‘brief’ to be given in respect of it. However, it is unclear as to what is meant by it and what information is exactly sought in this newly added section.

Furthermore, unlike the previous Form, the revised Form calls for working information not only in respect of product patents but also process patents. Instead of the ‘value of the patented product’, the new Form asks for ‘revenue/value accrued in India to the patentee/licensee from patent number(s)’, thereby requiring information in respect of both patented products and patented processes.

3. Unlike the previous Form, the new version allows a single Form to be filed in respect of all related patents (owned by the same patentee/s) to be made in the same Form, where the revenue/value accrued from a particular patented invention cannot be derived separately from the revenue/value accrued from related patents. Disclosure of all related patents for each patent is critical especially in the telecommunications and other technology sectors where often there are multiple patents covering the same product. Non-disclosure of this information adversely impacts innovation and competitors significantly, as it unduly increases their search costs in all cases where there are potentially multiple patents covering the same product. However, unlike as urged in the PIL, the Form does not mandate such disclosure and only gives patentees/licensees an option to do so, that too only in cases where the value accrued from a patented invention cannot be derived separately. This makes the filing easier for patentees/licensees, but fails to reduce the undue search costs for othe­­­­rs.

The Form also doesn’t specifically require the patentees/licensees to disclose all products, technologies and applications where the same patent is embedded, as is often the case in the high technology sector. Due to this, as pointed out the PIL, patentees typically disclose information only in respect of one of them, making it difficult to ascertain the true extent of the working of the invention.

4. The amended Form categorically states the Form is required to be filed by both the patentee/s as well as the licensee/s (exclusive or otherwise). If there are two or more patentees, they may file the Form jointly; however, each licensee is required to file the Form individually. Although Section 146(2) of the Act clearly requires every patentee and every licensee to file Form 27, this clarification is important in light of the confidentiality claim made by Ericsson in 2018.

5. Instead of every calendar year, Form 27 is now required to be filed in respect of every financial year, as per the amendment to Rule 131(2) of the Patent Rules. The amendment, puzzlingly, also gives patentees/licensees an additional 3 months to file the Form. They can now submit the Form within 6 months from the expiry of the year instead of within 3 months as required earlier. The need for giving more time is not clear and again reflects a leaning towards the interests of patentees/licensees.

Conclusion

Pursuant to Prof. Basheer’s PIL, the Government had undertaken before the Delhi High Court to effect appropriate amendments to Form 27 in order to strengthen it. However, as explained above, it has shockingly weakened the Form further, thereby defeating the entire purpose of amending it. Instead of seeking more detailed information as suggested in the PIL, the new Form has unjustifiably done away with the disclosure of important information on quantum of the invention manufactured/imported in India and licenses/sub-licenses granted, which was mandated by the earlier Form. The only information that the Form now seeks is (a) whether the patented invention has been worked or not; (b) the value/revenue accrued in India from the invention, if it has been worked; and (c) the reasons for not working and steps being taken towards working, if the invention has not been worked. This information is grossly insufficient to determine the extent to which the invention has been worked in India and whether it is available to the public in sufficient quantity at an affordable price.

The amended Form, therefore, renders the statutory public interest measures of compulsory licensing and revocation, which are triggered by non-working of the patent, ineffective and defeats the purpose of India’s unique patent working disclosure requirement. The inability to invoke these measures in appropriate cases due to lack of full disclosure of patent working information would ultimately prevent the public from accessing patented inventions and benefiting from them. Particularly, in the cases of patented medicines, such lack of access induced by a weak Form 27 would cause an adverse impact on public health. The Government must thus reconsider the amendments made and revise the Form again to restore and further strengthen the effectiveness of the patent working and disclosure norms.

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As Pankhuri noted in a recent post, the Government of India published the Patents (Amendment) Rules, 2020 last month, inter alia, amending the format/contents of the working statements or Form 27 to be filed by every patentee and licensee. The contents of the new Form 27 have already been discussed in her post here.

Removal of requirement to make statement on meeting public requirement

The new Form 27 removes the requirement of having to make a vague statement on whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price. This is certainly a welcome move because, elsewhere, in my book on patent law, I had argued that this requirement is potentially unconstitutional for vagueness. The other change, in terms of a common form for multiple patents, also makes logical sense to me.

Removal of requirement to disclose the quantum and the focus on value/revenue

But I wish to now focus on something else – the new Form 27 completely bypasses the necessity to declare any quantum, but instead focuses only on ‘value’. Specifically, the requirement now is to disclose the approximate ‘revenue/value’ that has accrued to the patentee/licensee ‘in India’. The new Form 27 appears to consider the term ‘value’ to be synonymous with ‘revenue’. Elsewhere, in my book on patent law, I have argued that this focus on ‘value’ in the Form 27 is potentially ultra vires. The logic is as follows:

1. The requirement to file annual working statements arises under Section 146(2) of the Patents Act;
2. Under this statutory provision, what is required to be filed are “statements as to the extent to which the patented invention has been worked on a commercial scale in India”;
3. The direct question to be answered is whether the phrase “worked on a commercial scale” covers value or not. If it does, asking for “value” in Form-27 is intra vires; if not, it is ultra vires.
4. A proper contextual reading of this term (“worked”), especially in the light of the Ayyangar Committee report, suggests that the phrase is intended to cover quantum rather than pricing; the focus on whether the product is available and not at the price at which it is available;
5. Similarly, a proper contextual reading of this term (“…on a commercial scale”), also suggests that the intent was to gauge whether the product is made available in sufficiently large scale for it to be commercial in nature, rather than just samples or experiments. Again, this denotes quantum and not pricing or value.

The difficulties can also be practical. For instance, in cases where the patented invention/product is a component/subsystem of the final product sold in the market, while the patentee can determine the ‘revenue’ for the final product (multiply quantum by retail price), there is no direct mechanism to determine the so-called ‘revenue’ from the patented invention within the final product. Entering into some sort of an attribution exercise would become a subjective analysis and prone to dispute, especially when one considers real-world commercial transactions involving subcontract manufacturing and so on. In short, determining ‘value’, even if it is assumed to be equal to ‘revenue’, could become a painful affair in real-world commercial transactions. Elsewhere, in my book on patent law, I have traced the history behind this provision to conclude that the purpose was to provide readily available data, which was otherwise to be made publicly available by entities under other legislation; the requirement to file working statements was not envisaged to make patentees engage in a disproportionately complicated value calculation exercise or disclose potentially business confidential information.

Accordingly, in my view, by focusing on the so-called ‘value’ (even if it is assumed to be equal to “revenue”), the new Form 27 is heading in the wrong direction. Instead, a simple focus on quantum will truly suffice to fulfil the object and purpose of being able to gauge whether the patented invention is being ‘worked’ and to what extent.

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Recently, the Amazon Prime web series Mirzapur 2 stirred up controversy over the use of a book as a prop alongwith a voiceover that the author claimed misrepresented his book and tarnished his reputation. In this post, I examine the right to integrity under Indian Copyright law to highlight the free speech issues underpinning these rights as well as their interface with fair dealing considerations.

Facts

The second season of Mirzapur includes an episode wherein actor Kulbhushan Kharbanda is shown reading a book titled, Dhabba. Surendra Mohan Pathak, the famous Hindi crime fiction author of the book, has taken strong objection to the use of his book and its accompanying unrelated voiceover which he argues has “mischievously misrepresented” his work. He wrote to the creators of the show, threatening legal action in case the scene was not removed from the series. His letter is reported to have said, “What is being read is sheer porno, the undersigned cannot even dream of writing, supposedly to titillate the viewers. But in the process, the whole sequence is shown as an excerpt from my novel ‘Dhabba’, which amounts to mischievous misrepresentation.” As a consequence, the show’s creators, Excel Entertainment have reportedly apologised to Pathak and changed the scene in the show.

Analysis

Surendra Mohan Pathak’s letter also noted pertinently, “I take very strong exception to this which even is a violation of the copyright act applicable to all printed material and hence I call upon you for your explanation to the above and immediate removal of the sequence from the said episode, failing which I will be forced to initiate legal proceedings against the aforesaid series and its writers, producers and the actor who was instrument to this malicious act.” He is presumably referring to his moral rights in the novel, which is protected as a literary work under the Copyright Act.

Section 57, titled ‘Author’s Special Rights’ in the Copyright Act provides for the right of the author to claim authorship of the work [57(1)(a)] as well the right to restrain or claim damages for the distortion, mutilation, modification of the work if such acts prejudice the author’s reputation [57(1)(b)]. The right to integrity protected under Section 57(1)(b) is material for this case at hand.

Moral rights vest with the author even after transfer or sale of copyright in the work in question and are arguably unwaivable. These rights can also be exercised in perpetuity even after the expiration of the term of copyright as per the 2012 amendment to Section 57(1)(b).

Moral rights are typically justified by personhood theories that emphasise protection of the author’s deep connection with their work, which is regarded as an extension of their personality itself. These theories are used to justify some degree of ongoing control by the author over their work due to their personality and self-actualisation interests involved therein.

However, strong moral rights protection of the kind that we have can cause chilling effects for downstream creators. While the outrage over distorting any original meaning or message relayed by the author can seem to be justified based on a sense of possessive individualism, considering the author as a participant in dialogue would make us believe that others are free to interact with their pre-exisiting works. This is because instead of assuming that those works were created out of nothingness by some paragon of independent creation, the work would be regarded as akin to speech, arising in a context, borrowing from what existed before and meant to elicit a response.

This is particularly important for the development of countercultures that seek to reinterpret or reimagine the existing narratives of dominant culture. Take this example- J.K. Rowling, author of the bestselling Harry Potter series made certain transphobic remarks on social media. If the transgender community as an act of resistance towards this abrasive dismissal of their identities by an author who holds significant sway over a considerable audience wants to reimagine the Harry Potter characters as transgender and create fanfiction around that idea, Ms. Rowling would be able to claim the same right based on the same justifications as those of Mr. Pathak wherein her work would presumably be presented in a context that she deems inappropriate. It is true that prejudice to the author’s reputation is to be adjudged not merely from the point of view of the author but also from the point of view of those who consider the author of high repute and honour. This requires the establishment of a legacy and reputation, which can be exclusionary for marginalised or lesser known creators who may fail to do the same to prevent the appropriation or mutilation of their works. This exclusion is in addition to what Manojna Yeluri’s notes while questioning the rationale of these rights in the first place, “when enforcing them is difficult in an economic culture that exploits grey areas, as much as it turns a blind eye to instances of plagiarising original art and music – instances like those of Shilo Shiv Suleman with Saaho, and Ritviz with T-Series.” Thus, these rights can be used to stifle the speech of downstream creators while their ability to work to the advantage of marginalised creators is seriously suspect in their current facially neutral form when their enforcement is riddled with power imbalances.

Conclusion

This also makes it imperative for fair dealing exemptions to be broadened, and to be applicable to moral rights. In their current statutory formulation, fair dealing in section 52 exempts only copyright infringement and is silent on its applicability to moral rights. As Nikhil has noted in his recent post, permitted uses or fair dealing of works should not be confined to exhaustive purposes in a listicle but embrace a more inclusive fair use model that allows for creativity to flourish. Given the nature of copyright and its rootedness in and ramifications on public interest, it is also imperative that any speech restrictive actions such as those facilitated by the right to integrity can be constitutionally and not just statutorily justified. Mutilation or distortion of narratives by minorities, particularly autobiographical speech or expressive works that draw on familial history by the gaze of those otherizing, erasing or whitewashing narratives may be presumed to be speech whose “history is discriminatory in origin” (Anthony Griffin, The First Amendment and the Art of Storytelling, page 267)

Further, the  constitutional recognition of liberty and autonomy of persons with diverse identities inextricably subsumes within it the ability to preserve and mould those identities while interacting with others. However, in this regard, affirmative free speech safeguards that protect against discriminatory speech or hate speech based on the vulnerabilities of some groups may be more useful politically than the right to integrity, which can have exclusive and silencing ramifications for downstream creators seeking to challenge dominant narratives. My aim here is not to propose the precise mechanics of how this could work, but to highlight the issues of constitutional concern that a strong right to integrity can lead to. As the Copyright Act is sought to be amended, this should be considered within a larger project to not look at copyright law or its fair dealing exemptions as a silo of private law impervious to constitutional scrutiny. By restricting the scope of private monopolies in favour of positively delineated rights that citizens have in using protected works, fair dealing ensures that impediments in access to information, and over free expression are justifiable. It is important to reconcile our strong moral rights regime, with further research on whose and what kinds of work they can be potentially used to silence, and who gets to enforce and deploy these rights, in order to align their scope and operation with any meaningful guarantee of free speech and equality.

Topical Highlight

Amendments to the Copyright Act: Hidden Consultations and the Missing Public Angle of Copyright Law – Part I

In the first of this two-part post, Nikhil discussed the consultation process initiated by the Copyright Office to amend the Copyright Act which happens to involve only industry stakeholders. He explains that these opaque, closed-door consultations are antithetical to the interests of open access, creativity, culture, and freedom of expression and might be paving the way towards the privatisation of copyright law. He contrasts this with the last amending exercise in 2012 which involved an elaborate consultation with varied stakeholders bringing forth their perspectives on the various aspects under assessment. This had culminated in bringing about a public interest focus to the law through extension of fair dealing exceptions to all works, broader library exceptions including digital storage, the introduction of the disability exception and fairer ownership and compensation model for lyricists and composers. He then underscores the implications of restricted consultations for those stakeholders that lack mainstream representation, raising concerns such as those surrounding the appropriation of works of minority communities by dominant cultures, challenges faced by open access initiatives, rights of classical and indie artists, and traditional artisans. He concludes that it is absolutely necessary to conduct wide public consultations regarding the final amendments.

Amendments to the Copyright Act: Hidden Consultations and the Missing Public Angle of Copyright Law – Part II

In the second part, Nikhil highlights some of the major themes that amendments must consider. First, he discusses the fair use provision of Section 52, which presently allows for exceptions only based on the exhaustive list of grounds it mentions, thus confining the extent of permissible creative uses. He suggests that the existing categories be clearly defined and a shift be made to a broader inclusive model, with the exceptions enumerated only as an indicative list. Discussing website blocking and its impact on free speech, he calls for a multi-step statutory framework that necessitates carrying out a proportionality analysis while determining whether takedown of a specific URL is an insufficient remedy and blocking of the entire website itself is required. On the issue of determination of liability of intermediaries for infringing content posted on their platforms, he seeks greater clarity in the legal provisions. He also underscores the need to consider decriminalisation of copyright law to the maximum extent possible cautioning that penal provisions might act as deterrence to creativity instead of incentivising it. More certainty is also required for the treatment of orphan works, such as the extent of search for the owner required for it to be considered ‘reasonable’, the treatment of owners’ moral rights, and the derivative use of the work. He concludes by touching upon other issues that need to be addressed, authorship of AI created works, text and data mining, statutory licensing for streaming services, digital exhaustion, and open access initiatives in form of easier copyright waiver mechanisms.

Indian Government Significantly Dilutes Patent Working Disclosure Norms

Pankhuri critiques the recently published amended version of Form 27. She recounts the history of the amendment, discussing the purpose of disclosure requirements and how consequent to a PIL by Prof Basheer, Form 27 was found to be inadequate to serve the public interest objectives of the Patents Act. The new form, however, seeks even lesser information from patentees. Pankhuri explains how excluding the quantum of invention manufactured/imported can make it impossible, for instance in cases of compulsory licensing, to ascertain whether the patentee had satisfied the reasonable requirements of the public. Similarly, not seeking the details of public requirement met at a reasonable price makes it difficult to assess availability and affordability to the public. It has also done away with seeking details of licensees and sub-licensees, instead of requiring more specific and elaborate details­­­ in this regard as suggested in the PIL, despite the fact that his information is anyway mandated under the Patent Act. Further, prescription of an arbitrary word limit of 500 words for the statement on reasons for not working and the steps taken towards working it will prevent the patentees/licensees from submitting all information and may also allow some to claim that they couldn’t ‘tell it all’ owing to the word limit. She discusses other amendments, such as asking for the ‘approximate revenue/value accrued in India, instead of just the value, seeking information on product as well as process patents, option of filing a single Form in respect of all related patents, filing requirements extended to licensees as well among others.

Thematic Highlight

Mirzapur 2 Controversy: The Right to Integrity and Free Speech

Anupriya discusses the recent controversy over web series Mirzapur 2’s use of a book as a prop along with a voiceover that the author claimed tarnished his reputation, in the larger backdrop of free speech, the right to integrity and fair dealing under Indian Copyright law. She notes that the author, Surendra Mohan Pathak accuses the makers of the show of mischievously misrepresenting his work in an allegedly vulgar context and goes on to threaten legal action. Anupriya explains how moral rights, justified by personhood theories that emphasise protection of the author’s deep connection with their work, allow some degree of ongoing control by the author over their work. She argues that this strong moral rights protection can cause chilling effects on downstream creators, when the author is perceived only as a participant in a larger dialogue, trying to interact with pre-exisiting works. This is important for the development of countercultures that seek to reinterpret or reimagine the existing narratives of dominant culture. For this purpose, she suggests that fair dealing exemptions be broadened, and be made applicable to moral rights, with further research on whose and what kinds of work they can be potentially used to silence, and who gets to enforce and deploy these rights, in order to align them with free speech rights.

Other Posts

The New Form 27 (Patent Working Statement): Heading in the Wrong Direction?

Adarsh notes that the new Form 27 removing the requirement of having to make a vague statement on whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price is a welcome move because, this requirement was potentially unconstitutional for vagueness. He then discusses how the form bypasses the necessity to declare any quantum, instead focusing only on ‘revenue/value’ that has accrued to the patentee/licensee ‘in India’. He argues that under Section 146(2) of the Patents Act, what is required to be filed are “statements as to the extent to which the patented invention has been worked on a commercial scale in India.” Going by the Ayyangar Committee report, here, the phrase “worked on a commercial scale” possibly does not cover value, making the requirement in the form is ultra vires. He then highlights practical difficulties such as in cases where the patented invention is a component of the final product sold in the market, there is no direct mechanism to determine the ‘revenue’ from the patented invention within the final product. He argues that the purpose of this requirement was to provide readily available data, not to make patentees engage in a disproportionately complicated value calculation exercise or disclose potentially confidential information.

Call for Abstracts: Third IP & Innovation Researchers of Asia Conference [Online; March 24-27]

We informed our readers that the Third IP & Innovation Researchers of Asia Conference will be held online from March 24-27, 2021. The deadline for submission of the request to present a paper and the abstract is December 15, 2020. Further details are available in the post.

Other Developments

Decisions from Indian Courts

• Madras High Court in  Rajagopal v. M/s Hotel Sangeetha Granddecreed a suit in accordance with a joint compromise between the parties, wherein the defendant agreed to change its name from ‘HOTEL SANGEETHA’ to ‘HOTEL HIGHWAY GRAND’ after a dispute with the plaintiff involving the ‘SANGEETHA’ name [November 3, 2020].
• Madras High Court in Aqua Pump Industries v. Chaganbhai P.Raiyani decreed a suit in accordance with a compromise between the parties, wherein the defendant undertook to withdraw the trade mark ‘SUPER TEXMO’ and to not assert any right in respect of the expression TEXMO/SUPER TEXMO [November 6, 2020].
• IPAB in Tony Mon George Constituted Attorney of Magnetic Autocontrol Gmbh v. Assistant Controller of Patents & Designs set aside the order of the Assistant Controller which had rejected the appellant’s application on grounds of lack ‘inventive step’ based on incomplete facts and ordered that the patent be granted [November 9, 2020].
• IPAB in Masihuddin Farooqui & Ors v. Syed Akhtar Ahmed trading as Komal Perfumery Works hearing a dispute over the mark ‘ZINDA TEL’, stayed the operation of registration No. 1633656 in class 05 [November 9, 2020].
• IPAB in Stiefel Research Australia Pty Ltd. v. Controller of Patents set aside the order of the Controller on grounds of being void of reasoning and proper assessment and ordered that the patent be granted [November 9, 2020].
• IPAB in Reaxa Limited v. Controller General of Patents & Designs set aside the order of Controller General and directed the appellant to file an amended application in accordance with the requirements within 2 weeks. The Controller General was ordered to grant the patent on amended claims [November 9, 2020].
• IPAB in Jina Pharmaceuticals v. Assistant Controller of Patents & Designs set aside the order of Assistant Controller and directed the appellant to file an amended application bringing out this fact of “organic- free solvent” clearly in the principal claim, ordering the Assistant Controller to grant the patent within two weeks from the date of filing of the amended set of claims by the appellant [November 9, 2020].

Other News

• Agricultural and Processed Food Products Export Development Authority has announced that Assam’s Tezpur litchis have received Geographical Indication tag.
• Karnataka Biodiversity Board has written to the central government recommending that Gajani Kagga, a paddy variety, be given Geographical Indication tag for its protection.
• Hyderabad-based filmmaker who had sued the makers of the film ‘Jhund’ for copyright infringement, has now filed a contempt of court petition against them for allegedly entering into an agreement with Amazon Prime for releasing the film on their OTT platform.
• Walmart India has undertaken not to use Parle Agro’s ‘Appy Fizz’ label for its apple drink after the company accused it of using the deceptively similar label.
• A piece in Medianama discusses the issues with India’s intermediary liability laws with regard to fair use.
• A piece in Scroll critiques Indian government’s ‘one nation, one subscription’ journal-access plan in light of the goals of open science movement.

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We’re pleased to bring to you a guest post by Manvee Kumar Saidha, analysing the effect of ‘first to use’ and ‘first to file’ regimes on trademark trolling, in light of the attention that the the recent PS5 case has drawn towards the possibility of such trolling becoming a menace in India.  Manvee is a 4th year law student at School of Law, Christ University, Bangalore.

Trademark Trolls: Perspectives, Pitfalls and the Way Forward

Manvee Kumar Saidha

Trolls – a term morphed to refer to those who relish and exploit online anonymity, have become a common construct of the present day. The manifest sadism associated with the practice of trolling can be extended to the trademark regime, and a ‘trademark troll’ is defined as an entity who engages in pre-emptive and frivolous trademark registration; and ‘trolling’ refers to the practice of registering trademarks without the intention of using them. Once registered, these are used as means to extract profits by initiating infringement lawsuits or pursuing negotiations for acquisitions and/or licenses. Although the abuse is blatant and may even be construed as morally shallow, the practice is per se not illegal.

First to Use v. First to File: Difference and Implications

For the sake of differentiating, ‘use requirement’ countries are those jurisdictions where trademark registration is provided on the basis of prior commercial usage of the mark. On the contrary, ‘file requirement’ countries refer to jurisdictions where registration is provided upon simply following due procedure i.e. applicants are under no obligation to demonstrate usage of their mark as a precursor to a valid application.

China is a file-requirement jurisdiction, which means that under Chinese trademark law, the first entity to register a trademark becomes its lawful owner, despite current usage by another. Its case record of trademarking trolling, including the (in)famous case that involved the tech giant – Apple Inc., which paid $60m in 2012 to retrieve the right to use their iPad trademark in China, makes it the most poorly placed country. Scholars attribute the problem primarily to the registration process, and recognise that parallel socio-legal factors such as valuing trademark certifications in priority, infringement procedures that are inequitably favourable to trademark holders, quantum of damages (rightly referred to as a ‘glittering award’ of damages), etc, contribute towards incentivising troll activity.

Conversely, in the US, commercial usage is not only a pre-requisite for registration, but it also underscores the application of other trademark related doctrines. To elaborate, in addition to Section 45 of the Lanham Act that provides for ‘use by a person’ as a preliminary requirement, courts reinforce the stipulation via supplementary doctrines. These include abandonment of mark in case of non-usage (interestingly also applicable to foreign mark holders), and prohibition against naked licensing and assignments in gross. Thus, the cumulative judicial approach creates an obligation of quality control and transaction in goodwill.

Additional strengths of the US legal system include credible precedents, availability and widespread use of opposition and cancellation proceedings (at the USPTO). Moreover, private initiatives such as the ‘Trademark Watch Dawgs’ – a group dedicated to challenging trademark bullies and frivolous applications – play an active role in protecting the sanctity of trademark rights.

Despite this, there have been cases of trademark trolling in the US. For instance, in 2016, a US-based company called ‘47 / 72 Inc.’ filed more than 60 trademark applications that targeted well-known brands. More recently, the USPTO, as of 1st November, 2020, has received more than 600 applications to register marks related to Covid-19. In anticipation of to-be-relevant products, trolls have sought to register marks such as ‘COVIDFREE’ for antibacterial goods, among others.

Thus, it is clear that despite strong legal frameworks in place, trademark trolls aren’t altogether avoidable, and can be an expensive menace for businesses.

Bringing the Debate to India

In India, trademark trolls are yet to meme-ic the vigour of their Chinese counterparts. Though the mandate of ‘first-to-use’ rule offers an inherent layer of protection, Indian trademark law does allow proprietors to file for registration on a ‘proposed to be used’ basis. Accordingly, where two or more similar or identical trademarks have been filed for future use, the trademark with an earlier application date is given priority; though neither is required to demonstrate prior usage. Such registration is liable to be cancelled only when it is challenged on ground of non-usage after a 5 year period which is discussed later in the post.

Instances of trolling in India, include the H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors. case wherein H&M, a Swedish fashion giant, sued HM Megabrands for trademark infringement. The marks in-dispute were:

In what was identified as a classic case of trademark trolling, the Delhi High Court set the tone by condemning the frivolous arguments of the defendants and issuing an injunction against usage of the mark ‘HM Megabrands’. The judgement was a welcome decision and its equitable nature is bound to have secured international confidence. In a more recent context, the Sony PS-5 case presented a rather amusing example of trademark trolling, where a Delhi-based individual beat Sony to register a mark under the same class (Class 28), and even countered Sony’s opposition. The malice is apparent since the individual filed for registration in October 2019, only a few months after Sony announced the launch of its PS-5. Moreover, based on the recent withdrawal of application, it becomes abundantly clear that there was no intention of securing rights for personal use in the first place. While it is unknown as to whether he made any money off an internal dealing, the fact that he didn’t pursue a legal battle to protect proprietorship says enough.

Pitfalls and the Way Ahead

While the problem in India is far from being termed a ‘menace’, businesses have been trolled. Accordingly, I have attempted to explore three limitations in the existing framework that can be potential exploitation sources for trolls.

First, proceedings to initiate cancellation on the ‘no-use’ ground can be proceeded with only after a 5-year blanket protection period expires. Not only is 5 years half the lifespan of a registered trademark, the litigation that follows the cancellation application is likely to stretch to alarming lengths of time. To illustrate with reference to foreign examples, the USPTO found in 2018, that the average length of time from the commencement of a trademark cancellation to completion was approximately 140 weeks (2.7 years), while the expected period in China is at least 12 months. Notorious respondents are further known to ‘use’ their trademarks during this litigation period, thereby making it impossible to utilise invalidation actions as a remedy. It is accordingly suggested, that in order to accommodate spirited and timely action that can ‘check’ frivolous registrations, the 5-year period be reduced – ideally to 3 years (as is the case under US trademark law), or less.

The second limitation is with regard to the statutory procedure provided for cancellation and rectification. Although the trolled party, usually a large corporation, approaches a court to pursue litigation (for instance, in case of the alleged trolling faced by ASUS ZenFone – the writ petition was filed with the Delhi High Court) another option with the aggrieved party is to file a petition before the Registrar or IPAB (Intellectual Property Appellate Board) – who are empowered to rectify the Register under Section 57 of the Trade Marks Act, 1999. However, this too presents a hiccup since the IPAB has the history of being a rather dysfunctional authority, with over 2626 cases pending pertaining to trademarks alone. In order to combat trolls or at least abate the illegitimate advantages of their trade, it would be desirable if disputes are resolved in a time bound manner. Although the 2017 amendment sought to tighten timelines for proceedings by reducing the number of Forms involved, allowing video conferencing, etc., Rule 95 (which deals with procedure for cancellation) upon further perusal still remains devoid of a structured timeline, and gives the Registrar more-than-recommended discretion. Thus, steps to further the efficiency should include ensuring that a quorum is formed and available, expanding location of sittings, and prescribing a time-limit within which disputes should be disposed – failing which the IPAB must be held accountable, and accordingly be required make written submissions explaining delay(s).

Third, we can draw from China’s shortcomings, where the meagre filing fees of 300 RMB (around Rs. 3300) leads to unfettered registrations (in the Uniqlo case, the Supreme Court identified that the plaintiff (troll) had more than 2600 trademarks to their name!). In India, the filing fees was considerably increased by the 2017 amendment which means that the current fee structure was preceded only by Trademark Rules, 2002. A 15 year gap is categorically undesirable and renders the efforts to curb whimsical registrations unavailing. It is therefore recommended that the fees be strategically determined and regularly updated in accordance with the economy and registration trends of the time. To this effect, a 5 year period can be determined as the benchmark to revisit the fee structure and implement necessary changes.

With India likely to attract greater foreign scrutiny post the pandemic, constructive preparations to enhance business experience is key to both – sustaining domestic endeavours and inviting foreign investment. Intellectual property is one of the largest assets of any business, especially trademarks which represent the identity of a brand. Trolls however stand to threaten this asset, and consequently deter international expansion. India’s position as a commercial hub is only a few legal tweaks away, and a robust IP regime will be a leap in the right direction.

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Recently, the aromatic, long grain rice known as ‘Basmati’, became another source of conflict between India and Pakistan. It isn’t the first time that a European GI registration for Basmati has been in the news, nor the first conflict relating to a GI between India and Pakistan. In the past, the GI registration of Pashmina had been a contentious issue. In 2008, India had decided to register Pashmina as a GI domestically and a Pakistani body had opposed this on the grounds that Pashmina was also produced in their territory. (discussed here) Pakistan was open for a joint GI tag, but India stated that it could only be possible if it was proven that Pakistan’s wool was of the same quality as India’s. At the end, a GI was granted for ‘Kashmir Pashmina’ solely for India. More than a decade ago, in 2008, India and Pakistan had considered filing a joint application for registration of Basmati as a GI in the EU. However, it could not be realised due to rising tensions between the two after the 26/11 Mumbai attacks. Coincidently, on the same day, Agricultural and Processed Food Products Export Development Authority (hereinafter ‘APEDA’) filed for Basmati’s domestic GI registration and in 2016, the GI was granted in its favour.

In July 2018, India had applied for protected geographical indication (PGI) status for Basmati before the European Commission. This application for registration was published in the Official Journal of the European Union on 11^th September 2020 and can be opposed within 3 months of the publication, with a reasoned statement of opposition being required within two months of the notice. India’s GI registration in the EU will affect Pakistani exporters and Pakistan plans on ‘vehemently’ opposing this application. A formal objection will most likely be filed before the deadline. About 65 percent of the Basmati imports in EU are from India, while about 35 percent are from Pakistan. Indian government has stated that it has not claimed ‘exclusivity’ over Basmati. Pakistan would still be able to sell Basmati after EU’s grant of GI protection in favour of India, but the perceived value of their product may change. This post will analyse India’s application, practical problems that Pakistan might face in filing an opposition and the possible grounds on which it might oppose India’s application.

India’s Application to the European Commission 

In the application, India has stated that Basmati is produced ‘in a particular geographical region of the Indian sub-continent. In India, this region is…’. This shows that India has not claimed that it is the only country that grows Basmati and not the only one eligible for a Basmati GI. But, the grant of this application in India’s favour may mean sole GI status for it. It is possible that EU may decide to grant GI protection for ‘Indian Basmati’, if they find Pakistan’s claim credible. Japan has granted protection to both Chile and Peru for Pisco, as ‘Chilean Pisco’ and ‘Pisco Peru’ respectively. Although far-fetched, there is also the possibility that EU may even grant PGI for India and protected designation of origin (PDO) for Pakistan, like they did with ‘Pisco’ for Peru and Chile. The application provides that the regions in which Basmati is grown are ‘all districts of the states of Punjab, Haryana, Delhi, Himachal Pradesh, Uttarakhand, as well as in specific districts of western Uttar Pradesh and Jammu & Kashmir’. Quality, reputation and specific characteristics have all been cited as the basis of the application. In the application, India seems to have complied satisfactorily with the requirements for product specification provided under the Article 7(1) of the Regulation (EU) No 1151/2012 of The European Parliament and of the Council (hereinafter ‘the Regulation’). 

Practical Problems with Filing an Opposition

In March 2020, Pakistan enacted its GI statute, the GI (Registration and Protection) Act. And it seems they have not yet granted a domestic GI to basmati. Although a domestic GI registration is not specifically required for opposition purposes, it would strengthen their claim. Domestic GI registration is a prerequisite for applying for GI protection in the EU, but the authorities ‘of a third country, or a natural or legal person having a legitimate interest and established in a third country’ are allowed to lodge a notice of opposition with the Commission.

Prior to the grant of a GI, a challenge that Pakistan’s opposition might face is the requirement for proper demarcation of area. India faced a demarcation dispute by Madhya Pradesh (MP) for its inclusion under the Basmati GI tag (discussed here). Pakistan might face a similar issue with demarcation, as, due to Basmati’s commercial lucrativeness, it is being grown in areas outside of the terroir of origin.(pg 67) (aka unique environmental factors that contribute to the crop’s unique characteristics). Improper demarcation of these areas might weaken their case before EU. If areas that do not share the terroir of the Basmati growing regions are included in the GI, India could claim dilution of the Basmati GI.

Possible Grounds of Opposition by Pakistan

There are certain grounds which Pakistan may possibly raise in their opposition against India’s application. Article 51 of the Regulation specifies the procedure for opposition, while Article 10 provides the grounds for opposition. Article 10(1) lists four grounds for opposition.

First, Article 10(1)(a) requires that the opposing party show that the conditions regarding basic eligibility requirements (under Art 5), and product specification requirements (under Art 7(1) are not met – and prima facie India seems to have complied with all the specifications for PGI status. The Basmati growing regions listed in the application do not include Madhya Pradesh and this works in India’s favour. If MP’s claim had been accepted, it would have been another issue that Pakistan would have raised to weaken India’s claim in the EU and probably, successfully too. Pakistan could have raised this under Article 7(1)(c) that calls for specification of the delimited geographical area.

Second, Article 10(1)(b) seeks to determine if the proposed name conflicts with names of plant varieties and animal breeds, with homonyms and trademarks. This ground can clearly not be pleaded as Basmati does not conflict with the names of any of the above mentioned categories.

Third, Article 10(1)(c) requires that the opposing party demonstrate that the registration would jeopardise the existence of products that ‘have been legally on the market for at least five years preceding the date of the publication’. This claim can be substantiated by Pakistan as according to a 2004 European Council decision, regarding an agreement between Pakistan and EU, duty free import of certain varieties of Basmati from Pakistan is allowed into the EU. It can also refer to RiceTec case, wherein India had recognised that Basmati rice is grown in Pakistan as well. Pakistan can also claim that APEDA had acknowledged before the General Court of the European Union in 2019, in the Sir Basmati case, that ‘Basmati rice comes from India or Pakistan.’(Para 48). However, the General Court had found ‘the word “basmati” is commonly considered to designate a variety of rice from India in particular.’(Para 49)

Fourth, Article 10(1)(d) deals with provision of evidence on the basis of which it can be concluded that Basmati is a generic term. A strong argument in India’s favour could be APEDA’s relentless pursuance of attempted registrations worldwide and its role in prevention of dilution of the Basmati GI. In 2009, APEDA Act was amended to introduce Section 10A and ‘Basmati rice’, and this amendment empowers APEDA to protect Basmati’s GI status ‘in India or outside India’.  It is said to have spent about 200-300 crores, in fighting over 1,000 legal actions for protection of Indian Basmati as well as for its promotion. Claiming this ground would not be fruitful and also disadvantageous to Pakistan, as it would then also not be able to register Basmati GI in EU at any point in the future. This action could even open doors for Basmati export by other Asian nations such as Nepal. 

Conclusion

If Pakistan is successful in opposing India’s application, then India would ensure that Pakistan’s individual claim for Basmati GI is unsuccessful, if made at any point in the future. The only practical, mutually-beneficial option, in case Pakistan succeeds in opposing, would be to file for a joint application. There are many transnational GIs registered in the EU. The chances of India and Pakistan filing a joint application seem bleak, if the past is anything to go by. However, taking into consideration the significance of Basmati for the two, Pakistan would most likely not let Basmati GI go without putting up a fight.

In case Pakistan’s opposition fails, India has a lot to gain as the sole GI holder for Basmati in the EU. There are multiple benefits that come along with a PGI status and Article 13 of the Regulation lays down the ‘protection’ that is available to a registered GI holder in the EU. It provides that a PGI ‘shall not become generic’ and even protects the use of ‘Basmati’ with words such as ‘“style”, “type”, “method”, “as produced in”, “imitation” or similar.’ This means that if India gets GI protection, then Pakistan won’t be allowed to sell its Basmati even with the labelling ‘Pakistan Basmati’ or ‘Basmati produced in Pakistan’ in the EU. However, there is a possibility that Pakistan can seek ‘Pakistan Basmati’ GI in EU. Canada has granted GI protection to ‘Chilean Pisco’ and ‘Pisco, Peru’ under free trade agreements and agreed the situation is not similar to the one at hand, but a parallel could be drawn. The position in EU with regard to the registrations of a GI along with the name of a country is not known. The readers are welcome to comment if they know anything in this regard. PGI status would allow Indian exporters to demand higher prices for Basmati rice. If India is successful, a situation like Sir Basmati would also be avoided in the future, as trademarks with the word ‘Basmati’ or referring to it, would not be allowed to be registered under Article 14(1). In conclusion, a PGI status would benefit India, but it is to be seen how Pakistan’s opposition pans out.

Image from here

Last week, ten south-east Asian countries along with Japan, China, South Korea, Australia and New Zealand signed the Agreement on Regional Comprehensive Economic Partnership (RCEP) making it the world’s largest trade bloc. Initially projected as the alternative to Trans Pacific Partnership, the negotiations for this free trade agreement (FTA) were underway since 2012 and after 31 rounds (as per Wikipedia), the member states finally sealed the deal four days ago via a video conference. While some reports suggest that the economic benefits of the RCEP are modest and will take years to materialize, others project it as Asia’s push back against the prevailing trend of global protectionism. According to Peter A. Petri and Michael Plummer’s report for Brookings, these benefits could translate to adding 209 billion dollars to world income annually and contributing 500 billion dollars to world trade by 2030. 

As noted in earlier posts, the RCEP Agreement also contains a dedicated chapter on prevention and enforcement of IP rights of the member states. Much has been written on the blog about this chapter here. The chapter seeks to grant protection to patents, trademarks, copyrights, industrial designs, geographical indications, genetic resources, traditional knowledge and folklore and against unfair competition. While commentary on the chapter would require a detailed look at how it has changed etc since our last posts on it, one of the provisions (Article 11.8) is worth mentioning here. This provision expressly declares that the Agreement shall not hinder the utilisation of Article 31bis of the TRIPS Agreement. There seem to be at least some basic public health safeguards in the text and this may possibly reflect India’s participation earlier on in the process, as written in Swaraj’s post here. Article 11.8 effectively ensures that Article 31bis of TRIPS should be given priority over the other provisions of RCEP, if and when any conflict arises. Therefore at the first glance it seems like the Agreement respects some of the TRIPS  flexibilities, however, a more detailed analysis is required to assess how does the Agreement fares in addressing the issues regarding incorporation of TRIPS flexibilities and TRIPS plus provisions. Side note: Prof. Peter K. Yu, in the past, has analysed the draft IP provisions of the RCEP Agreement as they were, here. Readers who may be interested to analyse how far this chapter has come from the draft may find the piece interesting to read. 

Apart from perhaps evidencing the rise of east-Asian economies in the global trade regime and China’s increasing influence in world politics, RCEP is also notable for the last minute withdrawal of India from the negotiations back in November 2019. India’s concerns, which eventually led to its withdrawal from the agreement, were surrounding the provisions on equitable market access, the rules of origin, dispute settlement mechanisms and most notably the impact this agreement will have on the vulnerable sectors like agriculture. Notably, India was concerned about opening up its vulnerable sectors like agriculture to compete directly against the imports from the likes of Australia and New Zealand will ultimately hamper its domestic industries severely. Regardless, RCEP members have sent a formal statement showing willingness to commence negotiations with India even after the signing, provided India submits a written intention to accede to the RCEP Agreement. 

However, it doesn’t seem like India is eager to accede to the Agreement any time soon. Just a day after the RCEP signings, India’s Foreign Minister, Mr. S. Jaishankar remarked that “The effect of past trade agreements has been to deindustrialise some sectors. The consequences of future ones would lock us into global commitments, many of them not to our advantage. Those who argue stressing openness and efficiency do not present the full picture” stressing that India is not “turning its back on the world” but is rather strengthening itself. While it may seem alarming (as pointed out here and here) that India will be missing out from becoming a part of the world’s biggest trade bloc, many believe (see here and here) that India has legitimate reasons to stay away from the RCEP. Whatever, one may speculate now, only time will tell whether the decision to not board the RCEP bus will be favorable for India or not.