SpicyIP Weekly Review (June 29 – July 5)

[This post has been authored by Rishabh Joshi, a 4th year student at Gujarat National Law University (GNLU), Gandhinagar.]

Topical Highlights

Nationalism, Drugs and Public Interest – Remdesivir and Beyond

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Swaraj highlights how nationalism can hinder public health in light of the ‘drug hoarding’ (Remdesivir) by the United States. He first starts by talking about how Remdesivir is not the most effective treatment for the COVID-19 virus as the improvement rate is not so high. He briefly discusses the intermingling of nationalism with science and points out the ambiguity in the effectiveness of the drug as it is still going through clinical trials. The post also delves into the question of reasonable pricing and patenting of the drug. Swaraj then talks about how the “drug hoarding” is not an immediate cause of concern for India and sheds light on the non-exclusive licence with Gilead to produce Remedesivir. He further states the approximate price of the drug in India as suggested by the companies producing it. Finally, the post concludes with how the generic licenses are not catering to a huge market which is ‘really’ in need of the drug. He puts forward the necessity to look at the access concerns that patent-linkage can cause and the access benefits that local working requirements can bring.

A Look at the WTO Panel Report in ‘Saudi Arabia- Measures Concerning the Protection of Intellectual Property Rights’

In a guest post, Jay discusses the WTO Panel report over the ‘Saudi Arabia- Measures concerning the protection of Intellectual Property Rights’. Jay begins by briefly summarizing the facts of the case between Qatar and Saudi Arabia before the WTO. Saudi Arabia severed all diplomatic relations with Qatar over its alleged support to terrorist organizations which also denied license to Qatari based sports entertainment company beInMedia. Soon after a Saudi based company beoutQ unauthorizedly streamed the content of beIn Media thereby infringing its right.  The matter was taken before WTO. The post then enunciates the various legal grounds of infringement brought forth by Qatar against Saudi Arabia and the stance taken by Saudi Arabia on the same, which mainly revolved around Article 41.1, 42 and 61 of the TRIPS Agreement. Jay then takes us through what was eventually the conclusion drawn by the WTO after careful analysis of both facts and law in its report and finally concludes with the impact and ramification that the report shall bring forth.

Thematic Highlights

When Cricket Meets Copyright: Does Upload of Sports Clips on Social Media Amount to ‘Fair Dealing’?

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In a guest post, Nikhil examines whether the uploading of any sport clips is covered within the ‘fair dealing’ exception of the Indian Copyright law. The question was raised in light of the recent controversy where a fan’s cricket clips were taken down alleging copyright infringement upon a notice which was received from Cricket Australia. Nikhil establishes first how the uploading of the old clips fall within the ambit of fair dealing covered in section 52(1)(a) of the Copyright Act. He then goes on to determine whether the use of sports clips is for any of the three purposes mentioned in the said section. The conclusion that he arrives at is that clips uploaded on social media can possibly be considered as “criticism” or “review” of the original work. Finally, the post provides an overview of the shortcoming and ambiguity of the fair dealing exception showing how it stifles creativity and is unable to adapt to technological advancements of the modern-day.

Copyright and Webinars: Ownership, Licensing and Fair Use

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In another guest post, Shivam explores copyright issues relating to webinars and discusses the rights of the speakers, organizers, and participants under the Indian copyright law. He points out that the lecture (inclusive of webinar, speeches and addresses) falls under the purview of ‘literary works’ and therefore protected under Indian copyright laws. He then establishes that the speakers own the copyright in the lectures/speeches delivered in webinars. Organisers of webinars are not the owners of copyright in the lectures unless they are the employers of the speakers. Shivam then discusses the implied license concerning the distribution of the recording of such lectures and the rights of the organizer with respect to making and distribution of such recording. He then states two ‘fair use’ exceptions covered under section 52 of the Copyright Act which allows for use of such recording without licenses for educational purposes. And finally, the post discusses whether the participants of the webinar have any right based on the Q&A sessions and their comments. Shivam concludes the post by expressing the importance of organizers and speakers clearly stating out the terms of their engagement in line with copyright law to cull out the possibility of legal disputes.

Other Posts

Crawl Cautiously: Examining the Legal Landscape for Text and Data Mining in India

Part I of a two part guest post by Viraj first introduces text and data mining (TDM). Viraj talks about various TDM techniques like website scraping, website crawling or indexing, and website archiving and differentiates between them. Some of these techniques have been facing resistance owing to their ‘non-reciprocal nature’ and IP challenges they bring along. The challenges include revealation of confidential information, loss of reputation etc. DM is increasingly used to create the data-sets that train artificial intelligence and machine learning algorithms which further create copyright issues. The post then focuses on the question of copyright infringement liability for TDM in India. Viraj establishes how original content and the original selection and arrangement of unprotected content on websites, will constitute ‘literary works’ and consequently enjoy copyright protection in India. He puts forward a strong argument via case laws that the use of TDM is lawful only as long as it falls within the boundaries of section 52.

Part II of the post explores international developments on copyright exceptions for TDM use. The post commences with recent developments in TDM across the Globe starting with EU’s Directive on Copyright in the Digital Single Market (‘the DSM Directive’) which gave European Union Member States until June 7, 2021, to transpose it into their national laws. Subsequently, Viraj goes on to discuss various provisions and exceptions provided in the DSM Directive. He then moves on to briefly discuss the Singapore Copyright Review, which reflects forthcoming amendments to the Copyright Act of Singapore, Japan’s bill to amend their Copyright Act, and the WIPO Draft Issue Paper. The post then explains how unauthorised TDM may give rise to contractual liability and the role played by Terms of Service and Robot Exclusion Protocol in this regard. Viraj concludes the post with few suggestions from his end that could aid businesses to minimise liability.

Open Access IP Textbooks – or – Mythical IP Books and Where to Find Them

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In the post, Swaraj highlights the current scenario of physical books and the main reasons behind their inaccessibility which can be attributed to lack of well-stocked libraries, cost and books being outdated to current legal developments and hence unable to match up with the pace of blogs and magazines. Swaraj then shifts the discussion to open access books which are a blessing in the present world. He then puts forth the lists of open and non-open access IP books. The post then summarizes how open access books can be published by professors / academic authors, regardless of them being funded or unfunded.  The post also provides links to relevant guides that may come handy.

Sri Krishna Sweets Trademark Dispute: Madras HC’s Take on SC’s Patel Field Marshal Judgment

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Arun analyses the Madras High Court’s view taken on Patel Field Marshal judgment given by the Supreme Court. He starts off by briefly summarizing the four key takeaways from the SC judgment. The case mainly dealt with the validity of a registered trademark and the jurisdiction of IPAB. Then he goes on to elucidate the interpretation given by the Madras High Court in M. Murali v. Sri Krishna Sweets Pvt. Ltd. He first explains the factual background of the High Court case and then the ratio drawn out of the interpretation of the Patel judgment. The post further puts forth a legal analysis of the position taken by the Madras High Court in its interpretation, specifically in relation to section 47 and section 57 of the Trademark Act. Arun, in his concluding remarks, draws attention to the broad scope of section 47 and that the scope of the Patel Field Marshal judgement merely calls on the Court to engage in a factual exercise to decide on validity which is not dependent wholly on pleadings such as an application to reject a plaint.

Decisions from Indian Courts

Delhi High Court grants interim injunction in case concerning infringement of Volvo’s trademark [June 29, 2020]

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In Aktiebolaget Volvo & Ors v. Mantis Technologies Pvt. Ltd. & Ors., the Delhi High Court granted an interim injunction restraining the Defendants from using the Plaintiffs’ registered trademark ‘VOLVO’ as the part of their website, domain name, email address and trade name, and directed temporary suspension of the impugned domain names.The Plaintiffs argued that the Defendants, who are engaged in providing travel and tour services and other incidental services, are infringing, diluting and passing off their registered trademark ‘VOLVO’ by using it as part of their domain and trading name and also on generic website www.travelyaari.com. The Court took the view that the Plaintiffs were able to establish a prima facie case in their favour, that the balance of convenience lay in their favour and also that if the interim relief was not granted, their statutory and commercial interests are likely to be jeopardised.

Delhi High Court grants interim injunction restraining a face mask manufacturer from infringing DPS’ trademark [June 30, 2020]

In Delhi Public School Society v. Manish Tripathi, the Plaintiff claimed to be the first owner of artistic crest comprising of a hand holding a torch (mashaal) along with the school motto ‘Service Before Self’ and the words ‘Delhi Public School’ written inside a shield device in terms of the provisions of the Copyright Act. Plaintiff’s logo is registered under the Copyright Act and also the Trademarks Act. The Defendant was manufacturing face masks with the trademarks ‘Delhi Public School’ and the logo of Delhi Public School/DPS printed thereon under his brand name ‘Namastay Away’. The Court after perusal of the facts held that Plaintiff has made out a prima facie case in its favour, the balance of convenience lay in its favour, and in case no ad-interim injunction is granted the Plaintiff would suffer an irreparable loss.

Delhi High Court holds that IPAB may proceed and hear ‘urgent matters’ even if the post of Technical Member is vacant [July 1, 2020]

In Natco Pharma Limited v. Union of India & Ors., the controversy revolved around patent No. 276026 that was granted to the Respondent. The Petitioner filed post-grant opposition in respect of the said patent. In the meantime, the Respondent filed a suit for infringement of the patent against the Petitioner. Interim orders were passed in favour of Respondent restraining the Petitioner from manufacturing Ceritinib till the next date of hearing. Subsequently, the Controller of Patents passed an order invoking the said patent of Respondent who in turn filed an appeal before the IPAB along with an application for interim orders. In the matter before the Court, the Petitioner urged that the IPAB is hearing the matter without the Technical Member. The Court relied on Mylan Laboratories Ltd. v. Union of India as per which if the post of Technical Member is lying vacant, IPAB can proceed to hear the urgent matters.

Delhi High Court grants an interim injunction restraining a pharma company from using the trademark ‘Multi Vitamin Infusion’ [July 3, 2020]

In USV Pvt. Ltd. v. Paksons Pharmaceutical Pvt. Ltd., the Plaintiff contended that the Defendant had not only infringed its trademark ‘Multi Vitamin Infusion’ but had also committed passing off by portraying that the goods sold by it actually originated from the Plaintiff. The Plaintiff drew the Court’s attention to the Defendant’s trademark and claimed that when the two labels are compared the deception becomes stark. The Plaintiff particularly stressed that font size of the first alphabet of each of the three words i.e. ‘Multi Vitamin Infusion’ has been enlarged to create similarity between the Plaintiff’s registered trademark and the impugned trademark. The Court held that the Plaintiff had set up a prima facie case in its favour and that the balance of convenience also lay in the Plaintiff’s favour. Accordingly, the Defendant was restrained from using the impugned trademark or any other trademark, which is deceptively similar to that of the Plaintiff’s.

Telangana High Court refuses to grant interim injunction based on the difference in font and style of parties’ trademarks in an infringement suit [July 3, 2020]

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In Shri Shakti Schools Private Limited v. M/S. Chirec Public School, the High Court refused to grant any interim reliefs to the Appellant.  According to the Appellant, it has been using the word mark ‘CHIREC’ with specific and distinct colours and design and has earned great reputation over the years. The said mark was also registered. The Respondent was using a mark identical with and deceptively similar to the Appellant’s trade mark promoting educational services to students from Classes 1 to 10 at Madhugiri, Tumkur in Karnataka State. The Appellant alleged that the Respondent is operating under the mark of ‘CHIREC PUBLIC SCHOOL’ and thus has infringed the registered trade mark of the Appellant by unauthorized use of the word ‘CHIREC’. The Court was of the view that the trade mark being used by both the parties are prima facie different based on their fonts and styles. Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the Respondent is using the Appellant’s trade mark particularly when the curricula being adopted by both schools are also different.

Delhi High Court grants interim injunction restraining use of trademark ‘THAI DUONG’ in a passing off case [July 3, 2020]

In Sunstar Joint Stock Company & Anr v. Mr. Arvind Kumar Aggarwal & Anr., the Plaintiff claimed that Defendant was a permitted user of the Plaintiffs’ trademark ‘THAI DUONG’. However, the Defendant applied for registration of the mark ‘THAI DUONG’ on ‘proposed to be used’ basis and was granted registration of the said trademark. Thus, the Defendant was not using the said trademark but using the products manufactured by Defendant pursuant to agreements as the permitted user of the Plaintiff. The Plaintiff has claimed injunction on the activities of Defendant. The Defendant on the other hand claimed that, even as per the contract, all the details of the manufacturing, packaging etc. and other specifications belong to the Defendant and thus, the Plaintiff cannot claim a better right than the Defendant and seek an injunction against him.The Court after perusal of the facts along with sections 48(2) and 56 of the Trademark Act found that that the Defendant was only a permitted user of the said trademark and in view of the export done by the Defendant by using the said trademark on behalf of the Plaintiff there is a prima facie case in the Plaintiff’s favour. Consequently, till the next date of hearing Defendant was injuncted.

Madras High Court confirms Single Judge’s order on appointment of scientific advisor in a patent infringement suit [June 4, 2020]

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In Sun Mobility Pvt. Ltd. v. Mr. Arumugam Rajendra Babu, the Plaintiff had sought a permanent injunction restraining the Defendants from infringing the Plaintiff’s patent bearing No. 2624671. The Defendant had advertised for sale mass, electric mobility which according to the Plaintiff contains the essential features of the Plaintiff’s patent No.262461. On notice, the Defendant had filed a counter affidavit praying for an interim injunction restraining the Plaintiff from disseminating, stating, commenting, etc. regarding the dispute between the parties. The learned single Judge observed that the vehicle and charging station over which the Plaintiff and Defendants made their claim relates to two different products and passed the order for the appointment of a scientific advisor which was impugned in this appeal. It was the contention of the Defendant that such an appointment was not desirable at the stage of the application for interim injunction but at the time of deciding the suit for patent infringement. The High Court found no infirmity with the order of the single judge and held that the prayer made by the appellant has to be decided only by the learned single Judge. It is open to the appellant to approach the learned single Judge seeking such prayer to keep the applications for interim injunction pending till such time a report is filed by the Scientific Officer and to take up the main suit for hearing.

Other News from around the Country

• Patent Office dismisses pre-grant oppositions and grants a patent to anti-cancer drug Nivolumab sold under the brand name Opdivo.
• Emami, which recently rebranded its ‘Fair and Handsome’ cream as ‘Emami Glow & Handsome’, evaluates trademark infringement action against HUL for rebranding its men’s range of ‘Fair & Lovely’ as ‘Glow & Handsome’.

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• Trade Marks Registry refuses HUL’s trademark application for the words ‘Glow & Handsome’ for lack of distinctiveness.
• Patients turn to grey market in Bangladesh to get the supplies of Remdesivir for personal use.
• Mylan (one of the companies having a license agreement with Gilead) receive permission from India’s drug regulator to manufacture as well as market Remdesivir, after Cipla and Hetero.
• A piece in The Quint discusses if India will be impacted by the US buying ‘all’ of Remdesivir supply.
• A team based in Goa makes and files a patent for ‘Multi-Mask’, a product that combines the mask and the face shield and offers several other advantages.
• IIT alumnus creates and patents a deodorant-cum-sanitizer which keeps coronavirus away and also smells good.
• IIT Roorkee researchers develop and file a patent for a sterilizing system for disinfecting personal belongings against coronavirus.
• The government of Australia grants innovation patent to four Aurangabad based researchers for inventing a low cost innovative thermal imaging system that is useful for biomedical applications.
• Telangana IT Industry Minister Rama Rao launches an e-book on the GIs of Telangana.
• Thammampatti wood carving, a signature artwork of artisans in Salem region, is set to become Tamil Nadu’s 36^th GI product.

News from around the World

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  US Supreme Court in United States Patent and Trademark Office et al. v. Booking.com B. V. rules that a term stylized ‘generic.com’ is not a generic name for a class of goods or services and is eligible for federal trademark protection unless the term has that meaning to consumers.

• Gilead announces the price of Remdesivir as $2,340 for a 5-day treatment in the US and some other developed countries.
• Health experts slam the US’ drug hoarding of Remdesevir due to the impact it will cause on public health across the globe.
• A piece in the Los Angeles Times discusses how Gilead’s secret deals could keep Remdesivir out of reach for millions around the world.
• Patent and trademark deadlines across the globe may get extended in light of the continuing COVID-19 crisis.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also directly accessible from the Resources section on our website).