SpicyIP Weekly Review (October 19- 25)

Topical Highlight

Delhi HC Delivers a Blow to “Delhivery”: Rules the Mark to be Phonetically Generic; Ineligible for Statutory Benefits

In this post, Praharsh analyses the Delhi High Court order vacating an earlier interim injunction granted in favour of DELHIVERY. He first notes the arguments made by both parties towards distinctiveness of the mark. He highlights the spectrum of distinctiveness approach followed by courts to determine if a mark is registrable and thus assess whether it fall within the following categories: generic, descriptive, suggestive, arbitrary or fanciful. The court noted how both the marks, ‘DELHIVERY’ and ‘DELIVER-E’ were related to the generic word ‘delivery’. It pointed out that where registrations are wrongly granted to generic marks, the court cannot ignore the same to grant monopoly on generic terms. As far as the question of secondary meaning to the term is concerned, the court held that the same had to be established at a trial. The court also dismissed the arguendo of considering the mark as a suggestive mark. Praharsh argues that this decision highlights the liberal approach to trademark registration in India and that registration does not give unencumbered rights to the owner.

Thematic Highlight

Wishful Thinking? Analyzing India and South Africa’s Joint Statement to Waive Key Provisions of TRIPS – Part I

In this post, Praharsh analyses the joint statement issued by India and South Africa for relaxation of certain TRIPS provisions in the wake of Covid-19. The rationale behind the proposal is to ensure accessibility of medicines and diagnostic products to cure the virus that might be hindered due to patent protections. Many countries might also face difficulty in using the TRIPS flexibilities. Additionally, for those countries lacking sufficient manufacturing capacity, the cumbersome process of Article 31bis of TRIPS is a cause of concern. Praharsh also notes the issue of vaccine nationalism given that as per manufacturing deals a large part of world’s population will not receive the vaccine till at least 2022. He then highlights that despite pointing towards the “institutional and legal difficulties” in using TRIPS flexibilities, both India and South Africa have not made any efforts in using these provisions despite domestic statutory backing. Finally, he points to the non ‘user friendly’ nature of Article 31bis for countries without manufacturing capacity. He notes that even a compulsory license would not suffice since trade secrets protections also come in the way. Moreover, effective technology transfer and know how sharing is important for which the developing countries are particularly not protected.

Wishful Thinking? Analyzing India and South Africa’s Joint Statement to Waive Key Provisions of TRIPS- Part II

In this post, Praharsh continues his analysis of the joint proposal by India and South Africa before the WTO. He summarises some important points mentioned by the delegates of the two countries in the TRIPS Council meeting. These include delays and difficulty in applying the TRIPS procedure, insufficiency of voluntary licensing, and the role of public funding in the R&D for drug making. He then notes the possible challenges to this proposal. He first notes the reluctance of developed nations to agree to this proposal. Even if the proposal is indeed passed, there remain problems of cooperation between members, protectionist approach of states, and obligations under several BITs. Finally, he assesses the impact of failure of the proposal’s passing. He highlights that the least developing nations already have a transition period for TRIPS compliance until 2021 which might even be extended. Nations such as India and South Africa can use the security exception and bank on their manufacturing infrastructure. The developing nations without such infrastructure would bear the brunt and seek recourse to Article 31bis or other international initiatives.

Other Posts

Only ‘Disclosed’ if ‘Identified’: IPAB Quashes Ceritinib Patent Revocation

In this post, Adyasha analyses the IPAB order quashing the Controller of Patent’s decision that revoked Novartis’s patent on the anti-cancer drug Ceritinib. She first notes the procedural issues pointed out by the order such as delay in fee payment and consideration of additional evidence. She then discusses IPAB’s treatment of disclosure of the specific patent in the earlier genus patents. It noted that such scrutiny had already been done at the stage of pre-grant examination and objections had been dropped. The Opposition Board’s report had also concluded that the earlier patents did not show the modifications required to be made to reach Ceritinib. IPAB cautioned against conducting ‘hindsight analysis’ and held in favour of Novartis. Finally, Adyasha analyses the issue of the (false) dichotomy between coverage and disclosure and argues that this order brings in the clarity by emphasizing disclosure/enablement for the purpose of determining coverage.

Nivolumab and 5C4 – Big Brother or Twin brothers?

In this guest post, Dr. Raman and Ms Manjari look at the grant of a patent application related to the anti-cancer drug Nivolumab, surviving 4 pre-grant oppositions before being allowed. They first look at the question of novelty as per Section 25(1)(b). The opponents argued that the claimed 5C4 antibody in the application had already been disclosed in the earlier Nivolumab patent. The Controller, however, held in favour of applicant since the specific CDRs sequence as in the current case was not found in the prior art. They then look at the issue of inventive step under Section 25(1)(e). The Opposition claimed that the claim was ‘obvious’ for a skilled artisan to arrive at and that it had only comparable properties compared to other antibodies. The Controller, however, agreed with the applicant on the non-obviousness and inventiveness of the claim. Finally, they look at whether the invention was non-patentable as per Section 25(1)(f). A Section 3(c) objection on the ground that the claim was naturally occurring was rejected. Similarly, objections under Section 3(e) and 3(d) were also rejected, and the extent of disclosure considered sufficient. They part by highlighting that there is a need for greater clarity in cases bordering between human intervention and the natural process.

China Enters the Realm of Anti-Suit Injunctions in Standard Essential Patent (SEP) Cases

In this guest post, Dr. Bonadio, Dr. McDonagh, and Dr. Dinev comment on recent Chinese decisions granting anti-suit injunctions in two SEP cases. They first look at the proceedings in Xiaomi v. InterDigital where a Wuhan court issued an anti suit injunction that was countered by an anti-anti suit injunction from the Delhi High Court (discussed by Rajiv here). They then discuss the anti suit injunction granted by the Chinese Supreme People’s Court against enforcement of a decision of a German court in proceedings between Huawei and Conversant. This injunction was also granted on similar terms as the Wuhan order. Finally, they look at the increasing commonality of anti suit injunctions in SEP litigation. They highlight its importance as a remedy against rent seeking behaviours of patent owners and that the Chinese courts starting to make use of this remedy is an encouraging signal.

Is Copyright a Hindrance for Open Access in India?

In this guest post, Dr. Scaria discussing whether the process of relinquishment of rights granted to authors under the Indian copyright law may cause copyright to be a hindrance for open access in India. He analyses Section 21 of the Copyright Act and Chapter III of Copyright Rules, 2013 dealing with relinquishment of rights through public notice and highlights that such cumbersome process will deter even those seeking to relinquish their rights for broader social benefit. He then points out the practical significance of this regime. Attempts for relinquishment of rights through tools like CC0 of the Creative Commons, though presumably not intended to be outlawed, would not satisfy requirements under the rules. He questions the emphasis on formalities in relinquishments when none exist for the existence of the right to begin with. He outlines the importance of rethink of these principles for furthering open access and creativity in the country.

PLEX v. ZEEPLEX: Passing Off at the Last Minute

In this post, I analyse the Bombay High Court order denying an interim injunction sought by PLEX for restraining Zee’s recently launched a pay-per-view service, ZEEPLEX. I first analyse the passing off claim and argue that since the three factor test of “reputation of goods, possibility of deception and likelihood of damages to the plaintiff” were not satisfied the claim was rightly denied. Next I analyse the impact of injunction applications moved at the last minute and Justice Patel’s cautious remarks on the same. I argue for mainstreaming the incorporation of due diligence in form of taking immediate remedial measures on the part of the plaintiff while deciding upon the balance of convenience and irreparable injury. From a law and economics perspective such an approach furthers efficiency and in this framework the injunction plea was rightly dismissed in the instant case.

Call for Papers: NUALS’ Book on Sustainability and Intellectual Property Law [Submit by November 15]

Recently, we informed our readers about call for papers for a book on the theme: ‘Innovate for a Green Future: Role of IP Rights in Encouraging Innovation and Creativity’ from the Centre for Intellectual Property Rights at National University of Advanced Legal Studies (NUALS), Kochi. The last date for the submissions is November 15, 2020. Further information on the submission guidelines is mentioned in the post.

Virtual Workshop for Students on ‘Nuances of Patent Processing’ [October 26-28]

We also informed our readers about a three day free virtual workshop for students on ‘Nuances of Patent Processing’ being organised by the DPIIT IPR Chair at Maharashtra National Law University (MNLU), Nagpur. The workshop will take place from October 26 to October 28, 2020. Further information on the workshop is mentioned in the post.

Decisions from Indian Courts

• The Delhi High Court in Bennett Coleman & Co. Ltd. v. Arg Outlier Media Pvt. Ltd., granted an interim injunction against the defendant restraining it from using the plaintiff’s registered trademark ‘NEWS HOUR’ but did not pass any interim order concerning the tagline ‘NATION WANTS TO KNOW’. [October 23, 2020]
• The Delhi High Court in Anil Rathi v. Shri Sharma Steeltech (India) Pvt. Ltd., restrained three proposed defendants from using the plaintiff’s registered mark ‘RATHI’ and issued a contempt notice against two other defendants that continued to use the mark despite the court’s orders to the contrary. [October 23, 2020]
• The Delhi High Court in Asics Corporation v. Laddi Bhai, issued notice in a suit filed by the plaintiff regarding infringement of its mark ‘ASICS’. [October 22, 2020]
• The Commercial Court at Alipore in SVF Entertainment Pvt. Ltd. v. Zee Entertainment Enterprises Ltd., granted an ad interim injunction restraining the defendant from broadcasting the Petitioner’s movie “Chitrangada: The Crowning Wish” on its platform, ZEE5. [October 20, 2020]
• The Telangana High Court in Super Cassettes Industries v. Nandi Chinni Kumar, upheld the trial court order restraining the release of the Amitabh Bachchan-starrer movie ‘Jhund’ in a copyright infringement case. [October 19, 2020]
• The Delhi District Court (Patiala House) in Krbl Limited v. Meenam Trader, granted an ex-parte ad interim injunction against the defendant restraining them from using any mark deceptively similar to plaintiff’s registered ‘UNITY’ mark. [October 16, 2020]
• The Madras High Court in Tirumala Milk Products Pvt. Ltd. v. Swaraj Industries Pvt. Ltd., made an earlier interim injunction as absolute restraining the defendants from using any mark similar to the plaintiff’s registered trademark ‘Thirumala’ / ‘Thirumala Milk’. [October 15, 2020]
• The Delhi District Court (Tis Hazari) in Refread Solutions Private Limited v. Scientific EResource, held the defendants to be liable for infringing the copyright of the plaintiff, a digital library service provider, and awarded Rs 5 Lakhs of punitive damages. It also restrained the defendants from carrying similar trade to the plaintiff for three years in the Indian market. [October 13, 2020]
• The Delhi High Court in Radico Khaitan Ltd. v. Vintage Distillers Ltd., granted an ad-interim injunction in favour of the plaintiff restraining the defendant from using its ‘VINTAGE MOMENTS’ mark owing to similarities with the plaintiff’s registered ‘MAGIC MOMENTS’ mark. [October 12, 2020]
• The Kerala High Court has upheld the ban on Suresh Gopi’s 250th film ‘Kaduvakkunnel Kuruvachan’ on account of copyright violations.
• A Mirzapur court has granted a temporary injunction against the defendants from using the plaintiff’s registered ‘ADANI’ mark.

Other News from Around the Country

• The Patent (Amendment) Rules, 2020, have come into force on October 19, 2020.
• The Indian Patent Office, as per a notice published on October 17, 2020, has informed that it will accepting Form 5-1 under Chapter 5 of the PPH Guidelines from 2nd November, 2020.
• The Indian Patent Office has published a list of withdrawn patent applications through Form 29 between April, 2020, and September, 2020.
• Emami apologised before the Bombay High Court for using the mark ‘Glow and Handsome’ despite an interim injunction issued by the court in August.
• The piracy website TamilRockers appears to have been suspended on account of copyright infringements.
• The WHO has welcomed India and South Africa’s joint proposal on relaxation of intellectual property obligations in the wake of the pandemic.
• An article in ExpressPharma discussed whether patented drugs should be included in the National List of Essential Medicines 2020.
• The Digital News Publishers Association has drawn up a voluntary code of ethics for its members that calls for respecting intellectual property rights, particularly seeking prior permission for use of copyrighted works or trademarks, acknowledging moral and ownership rights, and removal of infringing content if reported.
• Sony appears to have gained access to the PS5 mark as a prior application filed for the same by a person based in Delhi has been withdrawn.
• The Union Education Minister Ramesh Pokhriyal ‘Nishank’ decided to celebrate the week of October 15 to 23 as ‘Intellectual Property Literacy Week’, and launched the ‘KAPILA’ Kalam Program for IP Literacy and Awareness campaign.

News from Around the World

• Nokia has sought to enforce an injunction obtained in a Munich court restraining the sale of Lenovo’s products owing to patent infringement.
• An amendment to the Chinese Patent Law has been passed which will come in force on June 1, 2021.
• As per a recent survey, Philippines has one of the highest percentages of population in online piracy in Southeast Asia.
• There has been a sudden burst of DMCA takedown notices sent to Twitch users recently where the content of the users has been taken down without any possibility of counterclaims.
• The Ant Group has recently unveiled its new digital copyright services platform powered by the company’s blockchain-based technology, AntChain, which will aid creators to verify and protect their copyrights more efficiently and at lower costs.