SpicyIP Weekly Review (December 14 – 20)

Topical Highlight

India on TRIPS Waiver: Will WTO pass the test of humanity?

Hopefully this isn’t the game

Swaraj gave us an overview of India’s statement on the on-going TRIPS Waiver proposal, delivered at the WTO TRIPS General Council Meeting held from 16th-18th December, 2020. He explains that India strongly appealed to WTO’s responsibility to respond during this time of crisis and also pointed out that COVAX and ACT-accelerator were inadequate to meet global needs. India’s statement also indirectly calls out the hypocrisy in developed countries’ response which does not live up to their promising statements of collective responsibility and action. Swaraj also outlines South Africa’s longer and stronger statement which called out the voluntary measures (that US, EU, Japan advocated) as ‘ad hoc, non-transparent and unaccountable’ deals that reinforce ‘vaccine apartheid’ and detailed in depth how the waiver proposal is a calibrated and proportionate response suggestion. He further revisits EU’s statement, which continues to support intra-TRIPS solutions such as compulsory licensing, and lauds the COVAX initiative, as opposed to measures that mobilise local manufacturing. He concludes by sharing an important analysis by the Medicines Law and Policy blog of the various issues involved in scaling up production of COVID-19 related treatments etc, when considering the whole intellectual property stack.

Thematic Highlight

The Fate of a Pre-Grant Opposition Filed after Refusal of Patent Application and During the Pendency of an Appeal at IPAB

image from the song available here

In a guest post, Amit Tailor evaluated the question of maintainability of a pre-grant opposition filed after the Controller’s rejection of a patent application; and if the decision to refuse is appealed before the IPAB, during the pendency of the appeal. He explains that Section 25(1) of the Patent Act which provides that any person can represent by way of pre-grant opposition before the Controller, from the day the application is published till a patent is granted thereto, narrowing down the question to exactly when a patent is granted. He then revisits Sections 43 and 15, as well as Bombay HC’s decision in Snehlata Gupte case, to suggest that a patent shall be deemed to be granted when the fact, that the Controller has decided to grant the patent, is entered on record. Thus, a ‘pre-grant’ opposition can be filed between when the application is published to the time the Controller records the grant. He relies on Sections 21, 117A and 117G, to infer that if a patent application is refused by the Controller under Section 15 (or deemed abandoned), it does not become ‘inactive’ immediately, but remains ‘active’ or ‘pending’ till the time during which an appeal to it may be preferred. Thus, even upon reversal of the Controller’s rejection order by the IPAB, if any new fact or argument presented before the Controller (e.g.in a ‘pre-grant’ opposition) that is not materially discussed, the Controller is bound by the law to take it into consideration under section 25(1), as long as they are presented before he ‘grants’ the patent.

Other Posts

Supreme Court Interprets ‘High Court’ under Section 22(4) of the Designs Act

Varsha discussed the Supreme Court’s interpretation of certain important terms under the Designs Act in S.D. Containers Indore v. Mold Tek Packaging. This dispute consists of a series of suits and counter suits relating to cancellation of registered designs which ended in the MP High Court finding that the Commercial Court, Indore is the competent court for adjudication as per the Commercial Courts Act. This order was challenged before the Supreme Court. Notably, this cancellation petition would be governed by the Designs Act as well as the Commercial Courts Act. Navigating through the overlapping rules of jurisdiction, the Supreme Court found that the Commercial Courts Act neither prohibits nor permits the transfer of proceedings under the Designs Act to High Courts which do not have ordinary original civil jurisdiction. If there is a counter-claim for cancellation of registration, then even if the High Court does not have such jurisdiction, the transfer of the suit to the High Court is mandatory. Varsha notes that the judgment is well-reasoned and consistent with jurisprudence, overruling MP High Court’s order that would have otherwise created conflicting precedents. She concludes by revisiting the position in Trade Marks Act and recommends a similar standard for design infringement suits to ensure clarity.

NUJS Online Lecture by Prof. David Nimmer on Google v. Oracle Case [December 23]

We announced that NUJS IP & Technology Laws Society (IPTLS) at NUJS, Kolkata is organising an online lecture by Prof. David Nimmer on the Google v. Oracle case, in the memory of our Founder Prof. (Dr.) Shamnad Basheer. The lecture is scheduled to be held on 23rd December at 10:30 AM IST.  Registration and other details are available in the post. For a background of the case, our previous posts covering the dispute may be referred – ‘And we thought Java API’s were open?’ and ‘Oracle v Google – US Court of Appeals Rules Against Google’s ‘Fair Use’ of Oracle’s Java APIs’. These posts discuss the decisions handed down by the US Court of Appeals for the Federal Circuit in 2014 and 2018 respectively.

Update: Wuhan Court Rejects Application to Reconsider Anti-Suit Injunction Granted in Favour of Xiaomi

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Mathews noted a new development in the SEP dispute between InterDigital and Xiaomi that InterDigital. Previously, we had covered this dispute in our posts – ‘China Enters the Realm of Anti-Suit Injunctions in Standard Essential Patent (SEP) Cases’, ‘Delhi High Court Issues Anti Anti-Suit Injunction in InterDigital v. Xiaomi Patent Infringement Dispute’ and ‘The Issue of Sovereignty and Grant of Patents in Anti-Anti-Suit Injunction Issued by Delhi High Court’. It may be gathered from here that InterDigital has filed an application before the Wuhan Intermediate People’s Court to reconsider the anti-suit injunction granted in favour of Xiaomi. This application was rejected by the Wuhan Court.

NFSI Panel Discussion on ‘TRIPS Waiver Proposal – State of Play and the Way Forward’ [December 18]

We informed our readers that an online panel discussion on ‘TRIPS Waiver Proposal – State of Play and the Way forward’ was being organised on 18th December at 7:30 PM IST. Details on the same can be found on the post. Praharsh has discussed the waiver proposal in an earlier two part post on the blog which can be viewed here and here.

Call for Papers: NUALS’ Book on ‘Pandemics: Health, Human Rights and Intellectual Property Rights’ [Submit Abstracts by December 20]

We carried a call for papers from NUALS, Kochi inviting submissions for a book on the theme ‘Pandemics: Health, Human Rights and Intellectual Property Perspectives’, for which, abstracts must be submitted by December 20th. Details regarding submissions are available on the post.

LexisNexis Webinar on ‘Understand the Innovation Landscape of Global Video Conference Technology’ [December 23]

We announced that LexisNexis is organizing a webinar on ‘Understand the Innovation Landscape of Global Video Conference Technology’ on December 23, 2020. Registration and other details are available on the post.

Other Developments

Decisions from Indian Courts

• Bombay High Court in Unilever Plc & Anr v. Rahul Goyal ordered a temporary injunction restraining the Defendant from trading, marketing, distributing, selling, offering for sale cosmetic preparations and other like goods used in the cosmetic industry bearing the impugned counterfeit marks or any mark/s identical with and/or deceptively similar to the Plaintiff’s trade marks ‘LAKME’, ‘LAKME NINE TO FIVE (9 to 5)’, ‘LAKME EYECONIC’, L- Logo and the U-Logo, so as to infringe upon the Plaintiffs trade mark ‘LAKME’ [November 2, 2020].
• IPAB in Haryana Soap Factory v. A. J. Saravanan decided to hear both parties on merit and refused to stay the registration of Trade Marks No. 936165 and 1833170 [November 3, 2020].
• IPAB in M/s Koral Industries LLC v. Registrar of Trademarks allowed the applicant’s appeal and set aside the Respondent’s order of 5^th December 2018, allowing the use of the trademark ‘KORAL LOS ANGELES’ subject to the conditions provided [November 6, 2020].
• IPAB in Pharmatop SCR v. Venus Remedies India & Anr, set aside the order of the Controller of Patents & Designs and held that Appellant deserved to be given a fair opportunity to be heard on the sole aspect of ‘inventive step’, thus remanding the matter back to the Controller, to decide the matter on merit, strictly within 3 months [December 4, 2020].

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• A Delhi District Court in L’Oreal v. Sangam Packers, wherein the Defendant had been accused of manufacturing, marketing, selling, trading and using the trademark/labels, that were identical and deceptively similar to the trademark and logo of the Plaintiff, decreed a suit in accordance with a joint compromise between the parties [December 10, 2020].
• Allahabad High Court in Amit Kumar v. State of UP refused to quash an FIR dated registered under Sections 420, 467, 471, of the IPC & Sections 102, 103 of the Trade Marks Act for making fake detergent in the name of a detergent brand with registered trade mark, stating that under Section 115 of the Trade Marks Act these  are cognizable offences [December 14, 2020].
• Delhi High Court in Allied Blenders And Distillers v. Ads Spirits Private Limited & Anr decreed a suit in accordance with the settlement between the parties, wherein the Plaintiff agreed that it has no objection to the use of the label/trade dress/mono carton of the Defendant No.1 subject to the company writing the trademark ‘DOUBLE BLUE’ in pantone shade number 7499. The Defendant No.1 undertook that it will cease the use of the Plaintiff’s label/trade-dress [December 15, 2020].
• Delhi High Court in Merck Sharp And Dohme Corp & Anr v. Century Pharmaceuticals Limited, where the Plaintiff accused the Defendant of manufacturing and selling its patented compound, SITAGLIPTIN PHOSPHATE MONOHYDRATE, restrained the Defendant as per the Plaintiff’s prayers [December 15, 2020].
• Delhi High Court in Interdigital Holdings Inc. v. Xiaomi Corporation, rejected the idea of the constitution of a ‘two-tier’ Confidentiality Club proposed by InterDigital, instead suggesting the terms for constitution of a single-tier Confidentiality Club [December 15, 2020].
• Bombay High Court in Hindustan Unilever Ltd v. Balaji Enterprises ordered an interim injunction restraining the Defendant and all those connected with the Defendant in their business from manufacturing, marketing, distributing, packaging, selling and/or using in any manner whatsoever in relation to their flour, flour preparations and any other like goods the impugned mark ‘ANAPURNA GOLD’ and/or any mark containing the word ‘ANAPURNA’, or any mark identical with and/or deceptively similar to the Plaintiff’s trade mark ‘ANNAPURNA’, so as to pass off their goods and business as and for those of the Plaintiff or in some way connected or associated therewith [December 15, 2020].
• Telangana High Court in Novartis Ag v. Msn Laboratories Pvt .Ltd observed, without expressing any opinion on merits or demerits of the case, that the issues raised by the parties can be decided by the learned Single Judge and the parties may approach the learned Single Judge to take recourse to undo any damage or disadvantage, if any, suffered on account of non-extension of interim orders [December 15, 2020].
• Bombay High Court in Indian Association of Physiotherapists v. Indian Association of Physiotherapy & Ors, passed an interim injunction wherein the Respondents and all persons acting on their behalf or connected or associated with them were restrained from using in any manner in relation to their services, the impugned marks ‘The Indian Association of Physiotherapists-IAP’ & ‘PHYSIOTHERAPY INDIA’ as a mark or service mark, trade name, trading style or domain name or email ID or passing off their products or services as those of the Plaintiffs [December 15, 2020].
• Delhi High Court in Astral Poly Technik Ltd v. M.K. Ploymers & Ors decreed a suit in terms of the settlement between parties wherein the Defendant undertook to restrain themselves from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in pipes and fittings including but not limited to, for use in plumbing, industrial, sewerage, fire, agricultural, surface drainage; pipes and fittings made of PVC, CPVC, UPVC or any other material; any flexible and/ or rigid pipes; parts and fittings thereof under the impugned mark ‘ASTRO’ or or any other trade mark as may be deceptively similar to the Plaintiff’s trade mark ‘ASTRAL’ [December 17, 2020].
• Rajasthan High Court in Shree Cement Limited v. Union Of India listed for hearing a case concerning objections raised by the Bureau of Indian Standards to the Plaintiff’s use of a trade mark which it found to be misleading [December 18, 2020].

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  Bombay High Court in International Society for Krishna Consciousness v. Vishna Foods Pvt. Ltd. passed an order of temporary injunction restraining the Defendant, a food and hospitality service provider, as well as its associates and representatives, from using the mark ‘ISKCON’ or any other mark identical with and/or deceptively similar to the said well-known marks of the Plaintiff in relation to goods/services offered by the Plaintiff [December 18, 2020].

• A Delhi District Court in Yash Tekwani v. Dheeraj Kashyap confirmed a previous order of interim injunction against the Defendants, restraining them from selling, offering for sale and goods, advertising or promoting any product under the trademark or tradename, ‘PRINCE/PRINCE CHAAT BHANDAR’ with the logo or any trademark which may be deceptively/confusingly similar with Plaintiff’s well­-known trademark ‘PRINCE/PRINCE CHAAT CORNER’ [December 19, 2020].

Other News from around the Country

• UP has sought GI tags for three of its Varanasi based products, Ramnagar brinjal, Adamchini rice and Banarasi Langda mango.
• India is reportedly set to produce about 300 million doses of Russia’s COVID-19 vaccine Sputnik V in 2021.
• Natco Pharma is reportedly considering filing for a compulsory license to manufacture generic versions of Eli Lilly’s COVID-19 drug ‘Baricitinib’ [Please click here to view COVID-19 related updates on SpicyIP].

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  Britannia Industries has sued rival ITC Ltd for alleged infringement of its product packaging trademark by using similar design for ITC’s new biscuits.

• The Calcutta High Court has restrained the Indian Institute of Hotel Management from using the ‘IIHM’ acronym in the latter’s legal battle with International Institute of Hotel Management.
• The writer of popular Indian sitcom ‘Sarabhai v. Sarabhai’ has accused a Pakistani serial of copying the show ‘word to word’ and ‘frame to frame.’
• India’s national television broadcaster Doordarshan (DD) has been made copyright claims against YouTube channels showcasing space technology that use ISRO’s rocket launch visuals.
• Department for Promotion of Industry and Internal Trade (DPIIT) has released the Toys (Quality Control) Second Amendment Order, 2020, but exempted handicraft and GI toys from the same.
• Medianama has published its Roundtable on Copyright and Digital Media which discusses possible amendments to the Copyright Act in light of DPIIT’s notice seeking comments on the same.
• IPO announced that due to technical reasons, Virtual Show Cause Hearing of Trade Mark Applications scheduled for 21st December 2020 to 23rd December 2020 shall stand Adjourned.
• A piece by Anjali Vats in The Conversation discusses the racist, sexist, and xenophobic norms behind inventorship and patenting.

News from around the World 

• Nepal seeks to claim GI rights on Basmati rice in the European Union (EU), challenging India’s application for rights over the same.
• Duesseldorf Regional Court in Germany has suspended proceedings in Nokia’s licensing dispute with Daimler and referred the same to the CJEU.

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• French luxury designer label Givenchy has been accused of ‘appropriation and creative colonisation’ for allegedly copying the design of a New York-based designer’s leather hats.
• A Swedish Appeals court partly granted an appeal by telecoms regulator PTS over its plan to exclude Chinese telecom equipment maker Huawei from the country’s 5G networks.
• CJEU has ruled in favour of Morbier, a creamy French cheese with a seam of dark ash through its middle, which enjoys a ‘Protected Designation of Origin’ (PDO) tag in the EU, finding a copycat producer’s goods to be likely to mislead consumers.
• Cipla has announced the settlement of its litigation with Celgene Corporation, a subsidiary of Bristol Myers Squibb in a dispute relating to the patent on revlimid (lenalidomide) which is used to treat multiple myeloma and myelodysplastic syndromes. Consent judgments will be filed in the US District court for the District of New Jersey.
• WIPO has enhanced its WIPO Pearl to give access to scientific and technical terms derived from patent documents in order to help promote accurate and consistent use of terms across different languages.