SpicyIP Fortnightly Review (June 3-17)

Thematic Highlight

This fortnight’s thematic highlight was Pankhuri’s update on the Patent Working PIL matter at the Delhi HC. The Delhi HC had disposed of the matter on April 23, 2018. The Court directed the Government to complete all the steps towards effecting necessary amendments in the patent working provisions, strictly within the timelines proposed by it. Pankhuri highlighted how the stakeholder consultation process has already been undertaken by the government. She hopes that the Government comes up with a more optimal working disclosure format and implements it more rigorously in the years to come.

Topical Highlight

The topical highlight of this fortnight was brought about in a two-part guest post by Adarsh Ramanujan. Adarsh analysed a recent order passed by the Bengaluru Bench of the ITAT, where the ITAT held that the Google India was not a mere re-seller of advertising space to Indian advertisers but a licensee of Google Ireland’s IP. As a result, the payments made by it to Google Ireland were in the nature of  ‘royalty’, for which it was under the obligation to deduct tax at source as per the Income Tax Act.

In the two-part post:

• First, he highlights that the two issues in consideration pertain to one, whether the payment is to be treated as ‘royalty’ as opposed to just business income in the hands of Google Ireland. And two, who is the beneficial owner of the sum payable by Google India. He later notes in relation to the first issue that the payment can be taxable, if and only if, it is treated as Royalty. In regards to the second issue he notes that, if Google Ireland is not the “beneficial owner”, the beneficial rate of 10% under the Indo-Ireland DTAA would not be available.
• After highlighting the critical findings of fact recorded by the ITAT, Adarsh in his second post, critiques the findings of the ITAT specifically with respect to its treatment of the payments as royalties. He criticises the preliminary finding of ITAT with respect to treating the entire payment as royalty, when clearly it has identified that the payment was for a composite transaction. He also argues and explains that the payments made for “obtaining advertising space” and “facilitating the display and publishing of an advertisement to targeted customers” would not amount to “royalty”, as the Advertiser gets no access to any IP. He later also rebuts several findings and inferences drawn by the ITAT and highlights the fallacies in its approach.

Other Developments

Indian

Judgments

Parminder Singh Ashok Grover & Anr. v. The State Of Maharashtra & Anr. — Bombay High Court [June 8, 2018]

The Court refused to quash the records pertaining to an F.I.R. lodged under S. 51, 63 and 63B of the Copyright Act, 1957 and SS.406 and 420 of the IPC, by the publisher of a book, for infringement of copyright in it by the applicants by way of publication of a 2nd edition of the book, without obtaining a license or permission for it and paying appropriate consideration. The Court noted on facts that the wording of the agreement between the parties was ambiguous, and the applicant should have printed a 2nd edition only after obtaining a license for the same, showing an intention to make a wrongful gain. The court also rejected the argument that the police made wrongful seizure and investigation as such powers are not available under S. 51, 63 and 63B of the Copyright Act, 1957 holding that SS.406 and 420 of the IPC were also alleged in the complaint. The Court rejected the application as dishonest intention was shown.

Oppo Mobiles India Private Limited v. M/S.Samaira Online Enterprises — Madras High Court [June 8, 2018]

The Court held that a case of trademark infringement was made out against the defendant, who was selling products under the plaintiff’s mark ‘OPPO’ online at discounted prices, thus hampering the business prospects, reputation and brand value of the plaintiff, who received complaints from consumers regarding poor quality goods. It noted that the method of marketing and the manner of sale by the Defendant was to deceive, mislead and create confusion in the minds of the ordinary consumers or buyers as to the origin of the product.

News

1. Supreme Court refuses to stay release of Rajinikanth starrer ‘Kaala’ over copyright infringement claims
2. Delhi HC restrains Indian firm from using H&M trademark
3. UltraTech Cement wins copyright infringement case against Everest
4. Nusrat Fateh Ali Khan’s daughter threatens to sue his plagiarists
5. Bombay HC Restrains Jackson Labs From Manufacturing Or Selling Drug Deceptively Similar To Wockhardt’s Spasmoproxyvon
6. LIC wins trademark case against textile firm
7. A small design studio in Delhi takes on global luxury goliath Christian Dior for a knockoff -and wins
8. India Lacks Landmark Judgments On Design Piracy, Only Identical Imitations Attract Copyright Infringement
9. Samsung Acquires Hera Wi-Fi Patents Through (Patent Troll?) Sisvel
10. Copycat monuments: Flattery or fakery? 
11. ‘Ithihasa 2’: Scriptwriter Aneesh Lee Ashok accuses the makers of copyright infringement
12. KVIC moves HC against Fabindia over use of ‘khadi’ trademark
13. Metro Shoes takes Flipkart to Bombay HC over brand name 

International

1. US Imposes USD 50B In Tariffs On China For Forced IP/Tech Practices, Cybertheft
2. EU Files WTO Case Against China Over IP Rights Protection
3. Countries Discuss Prospect Of Plurilateral Agreement On Genetic Resources Protection
4. BREAKING: UK Supreme Court rules that ISPs do NOT have to pay implementation costs in Cartier case
5. BREAKING: CJEU rules that Louboutin red sole mark does NOT fall within absolute ground for refusal
6. DeepMind: First major AI patent filings revealed
7. Former Munich Mayor Warns Against Negative Effects Of City’s Re-Migration To Microsoft
8. U.S. ITC says probing Toyota, others in patent infringement case