The topical highlight for the week comes from Harshavardhan and Sreyoshi, writing about the Supreme Court’s decision in Patel Field Marshal and Anr. v PM Diesels and Ors. The question before the Supreme Court was whether, upon the institution of a suit for infringement under the Trademarks Act, the remedies for rectification of a trademark under Sections 47 and 57 (before the IPAB) are still available to the litigant, in case the plea of validity has been abandoned by the relevant litigant. The Supreme Court took note of the conflicting decisions of the various High Courts, and found that where the question of validity has not been taken up by the court, the statutory authority has the power to decide a rectification claim by the litigant. However, in a case where the court comes to a prima facie conclusion on validity, the only remedy available is an appeal.
The thematic highlight is Rajiv’s comparative analysis of patent eligibility for computer methods in India and the US. Building upon the decision of a US Federal Court in Intellectual Ventures v. Erie Indemnity Co., where the court held that the impugned patent amounted to an abstract idea, and was ineligible for patent protection, based on the US SC’s decision in Alice Corp. Rajiv compares the same to the decision of the Contoller of Patents in a similar case, and notes the similarity in the reasoning of the two, despite the fact that the eligibility requirements under Section 3(k) of the Indian Patents Act is much narrower than under US law.
The first post of the week was an excellent analysis of the new practice of ‘stream ripping’ and the music industry’s collective pushback against the technologies used to take straming media and fix it on personal computers. This post was a guest post by Simrat Kaur, a Delhi-based practitioner. Simrat examines the position under US law and Indian law, and analyses whether the manufacturers of stream ripping software could be held to be contributorily liable for infringement in either jurisdiction.
Prashant updated us about the dismissal of a quia timet action for infringement filed as part of a series of cases by Novartis against a number of generic companies. While 37(!) of the actions succeeded, the latest one was rejected by Justice Tyagi of the Vadodra Commercial Court, citing lack of evidence to prove Novartis’ claim of likelihood of infringement.
Prashant’s next post revealed his findings from RTI’s filed with the Office of the Controller General of Patents, Trademarks and Designs, relating to backlogs in the processing of pre-grant oppositions by the patent office and rectifications and oppositions by the trademark registry. Unfortunately, Prashant was stonewalled by shoddy record keeping at the offices, but he did manage to glean that 135,874 oppositions and 5,533 rectifications were pending under the Trade Marks Act.
I wrote about the decision of the Malayisan Government to issue a government use license for the manufacturing and importation of Sofosbuvir, a drug patented by Gilead which has been the subject of much controversy due to its pricing. I note in this post how Malaysia’s approach in compulosorily licensing the drug differs from how the Indian government and generics industry have attempted to increase access, and what implications this could have for public health.
Other Developments
India
Judgments
Dr. Shashi Tharoor v. Arnab Goswami And Anr — Delhi High Court [December 1, 2017]
The Court found that the right to freedom of speech and expression, including the freedom of the press, is a fundamental right conferred by the Indian Constitution, however, it cannot be inferred that this right includes the right to defame someone.Thus the press can operate during a criminal investigation and trial, but without affecting the accused’s presumption of innocence. The Court discussed the rule regarding injunction against defamation in the UK, Canada, Australia, New Zealand and India, and highlighted the law in this regard. Finally, the Court held that the press must not infringe upon a person’s innocence while reporting, and also directed them to issue an electronic notice to the plaintiff if they broadcasted any information regarding the plaintiff in the future.
M/S.Thiruvalluvar Modern Rice Mills v. R.B. Chidambarasamy — Madras High Court [November 29, 2017]
Suit was filed for permanent injunction and related reliefs against the infringement of the mark VALLUVAR. The Court made several observations. First, that in infringement proceedings, it must be shown that the impugned mark was deceptively, phonetically, visually and conceptually similar to the registered mark. Further, they also said that a deity may be associated with a particular kind of goods. Moreover, an ignorant customer’s state of mind is also relevant. Hence, the Court ruled in favour of the appellant.
Societe Des Produits Nestle S.A & Anr. v. Kaira District Co-Operative Milk Producers Union Ltd. & Anr. — Delhi High Court [December, 5, 2017]
Suit was filed for permanent injunction and related reliefs against the unauthorised use of the mark A+ (sub-brand of Nestle Milk and Dahi) by the defendants. The Court found that the mark A+ was laudatory and descriptive, and cannot be protected per se, without being used in conjunction with another mark. In order to protect a descriptive mark, one has to show that it has acquired distinctiveness in the market. The Court directed the parties to maintain the status quo, and remanded the case back for rectification proceedings before the IPAB.
News
- Court clears T-Series song ‘Sexy Barbie Girl’ after makers change Barbie to Baby
- ‘Biswa Bangla’ row: I created logo…gave it to govt without taking money, says Mamata Banerjee
- Osho: Can the name of an India-born spiritual guru become a European trademark?
- No patent for yoga means world has gained from it: Suresh Prabhu
- Disability Patents– Inventions that might make a difference
- Punjab becomes hub for promoting innovation in India, centre opens
International