SpicyIP Weekly Review (September 14 – 20)

Topical Highlight

A Tale of Two Sujatas: Delhi HC Reflects on Suppression of Material Facts and Clean Hands Doctrine

Praharsh discussed Delhi HC’s recent order modifying an ex-parte interim injunction after finding that the plaintiff concealed material facts during the hearing. The Plaintiff, who used the registered mark ‘SUJATA’ under classes 7, 8, 9, 11, and 35 had obtained the injunction by concealing the fact that a director of the Defendant owned a similar mark ‘SUJATA’ under class 11 since 2012. The director had also opposed the Plaintiff’s later application for registration of the SUJATA mark under class 11. This prompted the court to invoke the Clean Hands doctrine. On infringement, the court held that there is no claim that any customer was deceived into buying the defendant’s products as that of the Plaintiff. Thus, relying on the Nandhini Deluxe case, it modified the injunction, allowing defendants to use the mark ‘SUJATA’ specifically for ‘water filters, water purifiers and RO systems’ while keeping the terms of injunction intact for other products. Praharsh concludes by highlighting that the court refrained from imposing any costs despite the plaintiff’s concealment of material facts. He also points out that the court failed to elaborate the statement in the ex-parte order that accorded the status of a well-known mark to the Plaintiff’s mark, and the present position in light of revealed facts.

Thematic Highlight

U.K. Supreme Court’s Landmark Ruling on SEPs: An Imperfect Solution, But Is There a Perfect One?

In Part 1, Adarsh summarises the UK Supreme Court’s ruling in the five issues raised in Unwired Planet v. Huawei. The first issue was on the jurisdiction of English courts to grant an injunction concerning UK SEPs with the proviso that it would automatically stand vacated upon entering of a FRAND global license, and the jurisdiction to settle terms of such FRAND global license saw a very detailed discussion. Among other points, it was held that while English courts do not have the jurisdiction to rule on the validity or infringement of a foreign patent, they do have jurisdiction to rule upon whether a UK SEP is valid and/or infringed. The question of whether English courts were forum non conveniens was found to be irrelevant as Chinese courts did not have jurisdiction to try the case in the first place. Further, the meaning of the “non-discrimination” obligation in FRAND was held to not equal an MFN clause. It imposes a “single unitary obligation” and thus provides focus to what may be fair and reasonable. It was also held that Unwired Planet has complied with ECJ’s judgement in Huawei v. ZTE because it was willing to license on whatever terms the Court determined were FRAND. The court then took note of the concern that non-practising entities may use the threat of injunction as a means of charging exorbitant fees and better leverage in negotiations, but noted that it was not relevant for SEPs where there was a FRAND undertaking.

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In Part II, Adarsh critiqued the judgment. On the conclusion that a FRAND license must always be global, he argues that reliance on the ETSI IP policy’s international effect contradicts the judgment. Among other things, he points out that the territorial scope of the policy appears to have been consciously kept obscure like the ‘non-discriminatory’ aspect of the FRAND undertaking. Yet, the Court imputed a global coverage to the former but refrained from interfering with the latter. He then suggests that the judgment might possibly be read to mean that if the SEP holder attempted to fulfil the Huawei v. ZTE framework by offering a FRAND global license and the implementer counter-offered licenses on the same terms, to be decided on a country-by-country basis only, the implementer would be an unwilling licensee. With regard to equality in royalty rates, he argues that it is inherent in the concept of ‘non-discrimination’ that unequal parties can be treated differently. Thus, differential royalty rates could be justified on a case-by-case examination. He concludes that in the Indian context, this judgement can be used to support equitable relief such as injunctions to be granted in favour of SEP holders before a court. Courts have wide amplitude in settling the terms of a FRAND license if so inclined to do so in lieu of an injunction. Moreover, courts could consider a FRAND global license in lieu of an injunction.

Other Posts

Call for Papers: NUALS Intellectual Property Review (Vol. 3) [Submit by Dec 15]

We informed our readers that the NUALS Intellectual Property Law Review is inviting contributions for the third volume of the journal. The deadline for submissions is December 15, 2020. Details regarding submission can be found in the post.

Ibrutinib Patent Revocation: IPAB Says the Stay is Here to Stay

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In this post, I discuss the IPAB’s order maintaining the stay over the revocation of the Ibrutinib patent. I point out how this interim order devotes a long discussion to whether a prima facie case exists and concludes in the affirmative. However, balance of convenience and irreparable injury and public interest are given little importance. I walk through the history of the revocation and subsequently discuss the current order, where the IPAB has clarified that Rule 60 of Patent Rules 2003 holds that additional evidence during post-grant opposition can only be filed with the Controller’s permission and only before the hearing has been fixed under Rule 62. The IPAB has further underscored the significance of Opposition Board by relying on the Supreme Court’s decision in Cipla v. Union of India which held that the ‘Opposition Board has got considerable relevance’ and the Board’s report is ‘crucial in the decision making process while passing order by the Controller under Section 25(4)’. Finally, I highlight certain oddities with the order, including how the IPAB gives consideration to the fact that Ibrutinib has been granted patents in 87 countries and not been invalidated anywhere, despite the fact that patent laws across these 87 countries are different from that in India – while on the other hand the IPAB refuses to consider substantive merit of the patent per Indian law, while staying the revocation.

Other Developments

Decisions from Indian Courts

• Bangalore District Court in Cothas Coffee Co v. Avighna Coffee Pvt. Ltd permanently restrained the defendant from infringing and passing off the plaintiff’s registered trademarks ‘COTHAS COFFEE’ and ‘COTHAS’ [September 11, 2020].
• Delhi High Court in Anil Rathi v. Shri Sharma Steeltech passed an ex-parte injunction restraining the defendants from dealing in a variety of goods under the registered trademark ‘RATHI’ or from adopting any other mark or label which is identical or deceptively similar to trade mark [September 15, 2020].
• Delhi High Court in Dassault Systemes & Ors v. Advanced Engineering Solutions issued summons to the defendants in a case of infringement of copyright in the plaintiff’s software programmes CATIA, SOLIDWORDS AND SIMULIA [September 15, 2020].
• Delhi High Court in Capital Foods v. Radiant Indus Chem. Pvt. Ltd granted an ad-interim injunction restraining the defendant from reproduction, adoption and imitation of the original works of the plaintiff in respect of the trade dress, get up and packaging of the plaintiff’s product [September 16, 2020].
• Delhi High Court in Indoco Remedies Ltd vs Bristol Myers Squibb Holdings refused to allow the plaintiff to manufacture and sell its APIXABID, a generic product of the formulation of APIXABAN, during the COVID-19 pandemic or to allow the sale of 58,000 strips of APIXABID already manufactured as the same would be an infringement of the defendant’s patent on APIXABAN [September 18, 2020].

Other News from around the Country

• The Supreme Court has extended Justice Manmohan Singh’s tenure as IPAB Chairman for 3 months. Praharsh has discussed the issues with IPAB appointments here.
• A team of faculty members and one alumnus from Aligarh Muslim University have been granted a patent over their invention which makes use of nanotechnology for increasing the durability of cement.
• Indian company Magfast Co. won a 15 year long battle against PepsiCo to use the trademark ‘Mountain Dew’.
• Hyderabad-based Saptagir Laboratories has signed an exclusive agreement with Jubilant Generics to manufacture intermediates and Active Pharmaceutical Ingredient for the drug ‘Remdesivir’ used in COVID-19 treatment.
• The European Commission has sought public comments on India’s plea to register the name ‘Basmati’ under geographical indication (GI), the application for which was filed in 2018.
• IPAB has allowed Pfizer’s appeal and granted it a patent for JAK inhibitor drug Tofacitinib and its salts.

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  Telangana High Court has ordered a complete stay on the release of footballer Akhilesh Paul’s biopic ‘Jhund’, in India and abroad as well as on OTT platforms, owing to a copyright infringement claim.

• Indian short-video platform Chingari, has announced a licensing deal with music label T-Series that will allow Chingari’s users and creators in India, West Asia and SAARC nations to access music owned by T-Series.
• Reddy’s Laboratories announced that it has settled patent litigation with US-based Bristol Myers Squibb’s subsidiary Celgene over Revlimid capsules, with Celgene providing them license to sell volume-limited amounts of the capsules in the US after March 2022.

News from around the World

• Businesswoman Katrina Parrott has sued Apple for copyright infringement of her ‘iDiversicons’, which consists of her copyrighted system of letting users choose from five skin tones of color for human skin emojis in keypads.
• European Court of Justice allowed Barcelona footballer Lionel Messi to trademark his surname as a sportswear brand, dismissing an appeal from Spanish cycling company Massi.

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  EUIPO rejected pseudonymous artist Banksy’s application to use his famous ‘Flower Thrower’ as a trademark stating that Banksy had not used his trademark and the application was filed in bad faith.

• A district court in the US cleared singer Nicki Minaj of copyright infringement charges against Tracy Chapman for her song ‘Sorry’ which was allegedly sampled from the latter’s ‘Baby Can I Hold You’.
• The US Court of Appeals for the Ninth Circuit affirmed a decision holding that the musical, ‘Jersey Boys’ did not infringe copyright in an autobiography of Four Seasons’ band member Tommy DeVito.
• Australia is considering new laws which will make Facebook and Google pay for news items.
• Mitsubishi Electric has won a trademark infringement lawsuit against factory-automation product counterfeiters in China’s Guangzhou Intellectual Property Court.

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