A Look Back at India’s Top IP Developments of 2018

Here’s wishing all our readers a Happy New Year! We hope 2018 lived up to your expectations. If it didn’t, forget about it. It’s in the past now – best leave it there as 2019 beckons!

As always, we take this time to reflect upon the year gone by – taking a walk down memory lane to recount all the exciting developments that took place in 2018, and reshaped the Indian IP landscape.

This year, we’ve divided the developments into three broad categories:

1. Top Cases/Judgments Based on Topicality/Impact
2. Top Cases/Judgments Based on Jurisprudence/Legal Lucidity
3. Top Legislative, Policy-Related and Other Developments

The decisions in the first category, i.e., Top IP Cases/Judgments based on Topicality/Impact reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem etc. We’ve tried to represent a diversity of subject matter also in this list, so we have a fair sprinkling of cases dealing with patents, trademarks, copyright etc.

And the decisions in the second category, i.e., Top IP Cases/Judgments based on Jurisprudence/Legal Lucidity reflect those that we thought reflected a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive. The second category contains judgments which we feel have done a fairly good job in reiterating, laying down or rejecting legal principles. These judgments have also been included for their lucidity and sound legal reasoning. Please note here that both these categories are not mutually exclusive.

The third category lists out notable developments in the legislative and policy sectors and includes important amendments, proposals for amendments, releases of policy notes and reports. We’ve also highlighted important developments in other sectors that have had a significant impact on the IP landscape.

Top Cases/Judgments Based On Topicality/Impact

1. Mosanto v. Nuziveedu: In a very controversial ruling, the Delhi High Court declared Monsanto’s patent for Bt. Technology invalid on the ground that it did not qualify as patentable subject matter under Section 3(j) (which prohibits the grant of patents for plants, plant varieties or seeds or any part thereof). In order to determine the subject matter, the court claimed that the patent was not granted for a “product” or “method” and was instead granted for a “place in the genetic sequence of the DNA”. It further found the patent invalid since it was sought for an “essentially biological process”. As Prashant Reddy rightly notes, the Court’s claim construction and its validity analysis were quite flawed. The matter is now under appeal before the Supreme court, and one awaits the final word on this.
2. Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors.: We broke the news of India’s first Post-Trial Standard Essential Patent judgement delivered by the Delhi HC. The Court found certain local manufacturers of DVD players liable for infringing Philip’s patents, which the Court found to be Standard Essential Patents. In a later post, Divij Joshi broke down the judgment for readers and pointed out several flaws. Amongst other aspects, the Court found the suit patent to be essential since it could be mapped to a standard, without analysing the standard or the allegedly infringing patent itself.
3. Carlsberg Breweries v. Som Distilleries: In its recent decision on design-trademark, overlaps, the Delhi HC clarified the long-standing confusion which had arisen after the (in)famous Micolube judgment. According to the provisions of the Design Act and Trade Marks Act, registration of a design would be required to be cancelled once it started functioning as a trademark and hence, it was debated that remedy for passing off for a registered design could not be claimed. The Delhi HC clarified that this remedy could not be claimed for trademark infringement and only trade dress infringement or any other similar infringement of the registered design.
4. Christian Louboutin SAS v. Ashish Bansal-In its latest judgment on trademark protection for Louboutins (which we’ve termed Louboutin-3), the Delhi HC again contradicted its previous decisions and granted permanent injunction and punitive damages against a retailer for infringing the “Red Sole” trademark of Louboutin. In its previous decision aka Louboutin-2, delivered a month before this ruling, the Court had held that the trademark in issue was not eligible for protection. Interestingly, the Louboutin-2 judgment had contradicted a decision in 2017 aka Louboutin-1, where the same Court had adopted a similar reasoning as that in Louboutin-3 and even went on to declare the “Red Sole” trademark as a well-known one. These contradictory judgments have hence led to a jurisprudential imbroglio which needs to be addressed as soon as possible.
5. Christian Louboutin SAS v Nakul Bajaj and Ors: In yet another decision dealing Louboutins, the Delhi HC attempted to clarify principles of intermediary liability of online marketplaces. The Court held that the defendant was not entitled to “safe harbour” protection under Section 79 and examined: (1) “intermediary” under the IT Act, (2) the instances where intermediaries can claim immunity under Section 79 and (3) the relationship between infringement under the Trade Marks Act and the IT Act. The Court, however, failed to consider that not all platforms can be considered to be “intermediaries”. They also failed to discuss primary and secondary liability of online marketplaces.
6. Anand Bhushan v. Union of India: In a significant development, a Division Bench of the Delhi HC examined the constitutionality of Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013. The Rules lay down the manner in which copyright societies can frame their Tariff Schemes, the manner in which Tariff schemes can be challenged etc. It was argued, quite correctly, that these Rules went far beyond the scope of power delegated to the government under Section 33A of the Copyright Act. The Court, however, upheld the constitutionality of the Rules. In their opinion, the Rules did not derogate the parent legislation i.e., the Copyright Act.
7. Dinesh Parmar v. The Controller General of Patents: In an interesting decision, the Bombay HC dismissed certain objections raised against the Patent Agent Examination. An answer provided in the answer key was disputed and it was contended that an alternative option of the multiple-choice question was the correct answer. The Court relied on the Kanpur University decision to observe that answers provided in answer keys should be assumed to be correct unless it is proven to be wrong. They further stated that such answers cannot be proven wrong in an inferential manner and thereby concluded that the Petitioners had failed to establish that the option was undoubtedly wrong.
8. Sanjay Kumar Gupta v. Sony Picture Networks India Pvt. Ltd.: In a judgment with a riveting factual matrix, the Delhi HC cleared KBC makers of allegations of copyright infringement. The appellants, in this case, had a concept termed “Jeeto Unlimited”, where home viewers of a quiz show could participate live in a quiz show and were rewarded for answering correctly. It was alleged that, on presenting this concept to Sony, they were compelled to sign a consent letter which allowed Sony to use the concept without incurring any liability. The case was decided in favour of the KBC makers by relying on the famous RG Anand v. Delux Films judgment which had held that a concept is not entitled to copyright protection.
9. GI Registry Rejected MP’s Claim For The Basmati GI Tag: The Geographical Indications Registry passed an order in March, rejecting Madhya Pradesh’s bid for the ‘basmati’ GI tag for rice grown in 13 of its districts. The Registry had rejected the GI claim on mainly two grounds: (1) failure to establish similar quality as that of basmati rice (2) failure to establish “popular public perception” of rice in MP to be basmati rice. The Registry’s decision has been challenged in the Madras HC by way of a writ petition.
10. Shamnad Basheer v. Union of India: The Delhi HC disposed of the patent working PIL matter and directed the Government to bring about all necessary amendments in the relevant patent working provisions, within strictly imposed deadlines.
11. Glenmark Pharmaceuticals Ltd. V. Curetech Skincare: In a noteworthy development, the Bombay High Court recently imposed costs of a heft amount og 1.5 crores against Galpha Lobratories and others for “habitually” committing trademark infringement of pharmaceutical products. The defendants submitted to the imposition of these costs and did not contest the suit. This is most probably the largest order of exemplary costs in a trademark infringement case.

Top Cases/Judgments Based on Jurisprudence/Legal Lucidity

1. Carlsberg Breweries v. Som Distilleries: A five-judge bench of the Delhi High Court delivered a definitive judgment on issues of composite suits involving design infringement and passing off. It held that a composite suit for design infringement and passing off is maintainable, and further, a remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark, and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement.
2. Epsilon Publishing House v. Union of India: In this case, the Delhi High Court rendered a judgment that significantly impacts the law that governs the renewal of trademarks. In this case, the appellant’s mark was alleged to be liable for removal due to a failure to observe renewal requirements under the Trade Marks Act and Rules. However, on an interpretation of the applicable legal provisions, the court held that the renewal was valid. This is because the discrepancies (of delay and non-payment of surcharge) occurred only due to lapses by the registry rather than the appellant.
3. Fermat Education v. Sorting Hat Technologies Pvt. Ltd: In the backdrop of an interesting factual matrix, the Madras High Court delivered an important judgment interpreting the meaning of ‘intermediaries’ in light of the safe harbour provision in the Information Technology Act. The case primarily concerned the infringement of the proprietor’s copyright in a question bank created for Common Admission Test (CAT) aspirants. The evidence left no doubt that the questions were reproduced on the defendant’s website. However, the defendant argued that they are a website that connects educators to students, and only host content that is uploaded by its users. As such, it should be protected by the safe harbour provision under Section 29 of the Information Technology Act. The court held against the defendant’s, because the ‘Terms and Conditions’ of the website indicated that they possessed knowledge and a significant amount of control over material uploaded on its website. However, the court did not justify its use of control as a factor to determine whether a platform qualified as an intermediary, especially since the definition of ‘intermediary’ under the Information Technology Act makes no reference to control.
4. Kajal Aggarwal v. VVD & Sons: The Madras High Court reiterated that the statutorily prescribed duration for copyright in a work is non-derogable. In this case, it was held that the producer was entitled to exploit a cinematograph film for the statutorily prescribed 60 years, despite a contract to the contrary, which indicated one year as the period beyond which the film could not be exploited. While the appellant unsuccessfully argued that this negated the consent of both parties, it may have been wiser to argue that allowing reduction the duration of the copyright would further copyright law’s objective of increasing access for the public.
5. Navigators Logistics v. Kashif Qureshi: The Delhi High Court delivered a lucid judgment that settles the position of law relating to the protection of consumer lists. This was a classic case where an employer alleged that a former employee was using their customer list to compete with them. With respect to copyright, the court held that the employer had failed to establish that the list was ‘original’ under the ‘skill and judgment’ standard espoused in Eastern Book Company v D.B. Modak. On grounds of confidentiality, the court held against the employer. It concluded that it is not possible to claim confidentiality in every customer list, since most details are available in the public domain. Therefore, the plaintiff must specifically establish the economic or commercial value of their customer list in order to protect it.
6. Shamnad Basheer v. Union of India: In a crisp and well-reasoned judgment, the Delhi High Court clarified that patent working information is not confidential and has to be mandatorily submitted by all patentees. Further, all licensees have to comply with the disclosure requirement. The court did not endorse the argument of the intervenor, who asserted that Form 27, through which the disclosures must be made, was vague and therefore inapplicable. This judgment is a victory against the rampant non-compliance of the requirement to disclose patent working by patentees.
7. Sphaera Pharma Pte. Ltd. v. Union of India: In a lucid and well-reasoned judgment, the Delhi High Court emphatically stated that the Patents Act, 1970 does not offer any scope for considering a request for patent examination filed beyond the prescribed period of 48 months from the date of filing of the application. In this case, an attempt to file a request for examination had been made within the prescribed time period, but the request did not get uploaded due to some technical reasons. However, this was not condonable because the requirement is mandatory and leaves no scope for exceptions.
8. M/s Sathya Movies v. M/s Suresh Production Entertainment Pvt. Ltd.: The Madras High Court delivered a lucid decision examining film title protection in the context of copyright law. The court held that the title of a film is not protected under copyright law, since it lacked originality on account of its descriptive nature and the settled position of law. More importantly, the judgement also dealt with the issue of the scope of protection offered by so-called ‘title registration schemes’ run by film associations, and whether they are effective at all. The court concluded that such schemes for registration of titles, under the rules and bye-laws of these societies were only binding on its members, and moreover, in the present case, the title registration scheme was purely on a self-regulatory basis which stated that it would not have legal effect. The court also held that registration of titles with film associations was not a ‘trade practice’ which could grant the titles legal protection in court.
9. The Indian Performing Society v. Vodafone Idea Ltd.: The Calcutta HC directed Vodafone to deposit a whopping amount of Rs. 2.5 crore in a copyright infringement suit filed by IPRS. The decision raised two main issues, amongst others: (1) The nature of the “right to receive royalty” available to authors of musical and literary works and (2) Against whom this particular right can be exercised and the enforcement mechanism for ensuring the same. In our analysis of this post, we came to the conclusion that the right to receive royalty is not an exclusive right under Section 14 of the Copyright Act and that it is, in effect, a contractual term used between the assignor and assignee of the copyright in underlying works, as mandated by the statute.
10. Texmo Industries v. Roshan Kumar: In a tentative judgment on an important issue, the Madras High Court opined that the power to declare a mark as well-known lies solely with the Registrar. The court relied on the plain text of Section 11 to state that only the Registrar should have the power to determine well-known marks. It also noted that Registrar is also better placed to examine a number of factors that determine whether a trademark is well-known, and courts should, therefore, refrain from making this determination. However, the court referred the question to a higher bench due to differing views from benches of similar strength. However, this judgment sits uncomfortably with a circular issued by the Ministry of Commerce and Industries, which requires judgment from a court that the mark is well-known before the Registrar can declare it to be so.

Top Legislative, Policy and Other Developments

1. Indian IPR Administrative offices opening up to new technologies

Following on the heels of various other jurisdictions, Indian IPR administrative offices have taken several steps to introduce new, exciting technologies! We reported about two important developments: (1) Introduction of Video-Conferencing by the Copyright Office for Hearing Applicants (2) Proposal by the Controller General of Patents, Designs and Trademarks to Introduce AI, Blockchain and Internet of Things in IP Enforcement.

2. Government Releases Reports on IPR in India – Focus on Access to Healthcare, Remedies for Piracy

In a welcome move, The Centre for IPR Promotion and Management (CIPAM) released two well-researched documents summarizing various aspects of the Indian IPR regime.  One of these documents, in particular, lists institutional reforms by the Government over the past few years and also provides a helpful summary of filing and enforcement statistics.

3. India Signed up to Internet Copyright Treaties

The Union Cabinet approved a proposal to accede to the WIPO Copyright Treaty, 1996 (‘WCT’) and the WIPO Performance and Phonograms Treaty, 1996 (‘WPPT’). WCT specifically sets out a framework for the protection of authors’ rights in the digital environment and also makes the protection of computer programs and databases mandatory. The WPPT pertains to the rights of performers and producers of phonograms. It protects, specifically in a digital environment, the rights of actors, musicians, singers and producers of soundtracks. While this move will benefit copyright owners, but may result in diplomatic pressure provisions that are uniquely applied in India, such as those pertaining to ‘Technology Protection Measures’.

4. Delhi HC Demanded Updates and Imposed Strict Deadlines for Patent Working/Form 27 Disclosure Amendments

The Delhi HC has been taking several steps to bring about changes in the patent working disclosure requirements. It first asked for a status report on patent working in a hearing in Jan while dealing with the patent working PIL. It then later called for comments from the public on patent working and Form 27. The Patent Office then published stakeholders’ comments on its website, thereby speeding up the process considerably.

5. Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, Notified

In a highly welcome move, the Central Government recently amended the Intellectual Property Rights (Imported Goods) Enforcement Rules, thereby revoking the power of customs officers to seize imports on the basis of mere complaints of patent infringement. This amendment will, presumably, render the Ericcson judgment (wherein they had held that customs officers could suspend clearance of good if they had “reason to believe” patent infringement claims) invalid.

6. The Government’s Proposal to Amend the Sports Broadcasting Law

The government has been actively trying to increase access to our favourite sport channels and has even proposed to amend the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharti) Act (“SBS Act”), an Act which requires all private broadcasters to share sporting events of national importance with Prasar Bharti. The Cable Television Networks Act (“CTN Act”) mandates that all cable operators are required to re-transmit all DD channels to their users. Back in 2017 though, a SC judgment held that the signal shared with DD could not be re-transmitted over cable networks under the SBS Act, notwithstanding the mandate under the CTN Act. The government has now proposed an amendment to the SBS Act that will allow such re-transmission. If this measure is carried out successfully, it would imply that people would only need a cable TV or DTH network to view sporting events and would not have to subscribe to costly sports channels for the same.

7.  New Law to Hardcode Public Interest into Injunction Jurisprudence

The Specific Relief (Amendment) Bill, 2017, which inter alia amends the law pertaining to the power of courts to grant interim reliefs in the context of infrastructure projects has been passed into law. A new Section 20A is to be inserted, along with Section 41(ha), which strips the power of the court to grant injunctions in contracts pertaining to infrastructure projects that would impede the progress of infrastructure projects. With respect to patents, the new law would mean that no injunctions can be granted to patentees against the government or private contractors in cases involving contracts pertaining to electricity generation and distribution, and railways.

8. Copyright (Amendment) Act, 1999 and Copyright (Amendment) Act, 2012 repealed

 In light of the current government’s efforts to repeal redundant laws, the Parliament repealed the Copyright (Amendment) Act, 1999, Copyright (Amendment) Act, 2012 and the Competition (Amendment) Act, 2007. While one interpretation of this action may result in the conclusion that the substantive provisions of these amendments have been repealed, another suggests that post-amendment, the original statute exists only as amended, and therefore repealing the amending act would not affect it. This latter interpretation is backed by precedent from the Supreme Court of India.

9. Petition Filed in Supreme Court to Challenge Constitutionality of Provisions on Compulsory and Statutory Licensing in the Copyright Act

A petition that challenges the constitutional validity of Sections 31(1)(b) and 30D is currently being heard by the Supreme Court. Sec. 31(1)(b), which creates a compulsory licensing regime, and Sec. 31D, which allows for mandatory licensing to broadcasting organisations on terms decided by the IPAB, were brought in through amendments to ensure broader dissemination and address the unfair power balance that reflects in grossly unbalanced contracts. These provisions are being challenges because of alleged arbitrariness, unfair impediment on the rights of the copyright holder and creating and unfairly favourable position for broadcasters.

10. Application by RMPL for Registration as Copyright Society Sparks Debate Over Author Rights

The Recorded Music Performance Limited (“RMPL”) applied for registration as a copyright society. Its application again raised the debate regarding value deprivation caused to authors due to flaws in the model of these societies and the  influence of big music companies. In light of Phonographic Performance Limited’s (“PPL”) pending application for registration as copyright society, the question of whether both these entities should be allowed to register arises. In our answer to this issue, we responded by stating that plural societies would have an adverse impact by creating unnecessary competition and a lot of confusion. We further opined that choosing RMPL over PPL would not be a wise decision since the latter has a wider membership and has collected and delivered huge royalties in previous instances.

11. Advocates Challenged the Requirement of a Patent Agent Examination to Practice before the Patent Office

We first reported about a suit filed against the Controller General of Patents in the Madras HC. The Petitioner contended that they were qualified to appear before the Patent Office without clearing the Patent Agent Examination since the Advocates Act gives them the right to practise in all forums. The Petitioner based his argument on the Chockalingam ruling, which declared an amendment (which deleted a provision that allowed advocates with degrees in science and technology to enrol as patent agents, without taking the patent examination) as unconstitutional. Later, we also reported two more petitions on similar points lying before the Delhi HC and the Madras HC.

12. Policy to Encourage Intellectual Property Awareness Amongst Youth

The All India Council for Technical Education (AICTE) released a circular announcing the ‘Intellectual Property Talent Search Examination 2018’. Launched jointly by the Associated Chambers of Commerce and Industry (ASSOCHAM) and Ericsson, the talent search will reward high school students (Class 9-12) and undergraduate students who score well on the online examination. This is in furtherance of the objectives laid down in the National IPR Policy 2016, one of which is “IPR Awareness: Outreach and Promotion”. However, indoctrinating school children with a formalistic one-sided IP view may do more harm that good. Rather, focussing on encouraging innovation and creativity may serve the purpose of the national policy better.

(This post has been put together by Prarthana Patnaik and Rishabh Mohnot with inputs from Pankhuri Agarwal and Prof. Shamnad Basheer)

Image from here