SpicyIP Weekly Review (February 8-14)

Topical Highlight

Breaking: Supreme Court Dismisses Application Seeking Extension of Justice Manmohan Singh as IPAB Chairperson

Praharsh informed our readers that this week the Supreme Court dismissed the AIPPI application seeking another extension to the tenure of the incumbent IPAB Chairperson. The application for extension was a part of a writ petition which was disposed of by the court after tagging it to Madras High Court Bar Association decision. Praharsh highlights the issues taken up by the court – the laws regarding the term of the IPAB Chairperson; the controversy surrounding the appointment of the incumbent Chairperson; and the clarification that the Chairperson of the Board can also be a technical member. He notes that along with AIPPI, the Indian Drug Manufacturers Association also intervened in this litigation making this the first occasion where such IP organizations, representing different lobbies, locked horns with each other regarding appointment of a specific individual to a particular position. He further points out that no stay order was passed against the supposed effect of the Madras High Court Bar Association decision (of which this is a part), which fixed the date of retirement of the incumbent Chairperson of the Board on 31.12.2020. Thus, it is unclear as to what is the authority by which the incumbent Chairperson has been hearing matters at the IPAB, as recently as 12.02.2021. The Supreme Court’s silence on the fate of the matters disposed or even heard by the incumbent Chairperson in this duration leaves a lot of uncertainty.

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Breaking: Finance Minister Proposes a Draft Bill in the Lower House to Shut IPAB

Praharsh also reported that a Draft “The Tribunals Reforms (Rationalisation And Conditions Of Service) Bill, 2021” has been introduced in Lok Sabha by the Union Finance Minister Ms. Nirmala Sitharaman, proposing to shut IPAB for good. The bill seems to be in furtherance of the government’s plan to reform the tribunal system in the country to ensure ‘speedy justice’, which was brought up in the Union Budget 2021. The Statement of Objects and Reasons of the proposed bill point towards this end, and are reproduced in the post.

Thematic Highlight

Revised Non-Personal Data Governance Framework and Intellectual Property Implications 

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In Part I, Anupriya discusses the revised NPD framework released in December. In this part, she raises concerns regarding possible copyright and trade secret protection over the data mandated to be shared and analyses the shortcomings of a community rights framework in the context of data. She observes that the recognition of ‘sovereign purpose’ as a legitimate ground to gain access to a combination of personal and non-personal data, without having the data scrutinised by the NPD Authority is dangerous. She also discusses the problems with sharing of data from the High Value Datasets for public good. Coming to the issue of copyright, she criticizes the Committee’s approach for failing to consider that a subset of a dataset in itself could also be a result of original compilation of data and thus enjoy copyright protection. Regarding trade secret protection, the report mandates that aggregate data be shared with data trustees who will create an HVD for public access. She criticizes this approach for taking a simplistic view of data trustees that may have been set up to further the interests of certain private sector entities. She also points out that the framework runs the risk of promoting regulatory arbitrage.

In Part II, Anupriya highlights the shortcomings in the Revised Report’s justifications for overriding IP protection and other rights over NPD. She notes that the Supreme Court has recognised the right to IP such as copyright to be covered under the principles of property ownership for the purposes of Article 19(1)(g) and Article 300A of the Constitution, something the Report has highly understated while discussing trade secret protection. She criticizes the invocation of eminent domain powers against private entities’ right to IP in the case of data acquisition, as well as the reliance on Article 39(b) of the Constitution, a directive principle enshrining the state’s responsibility to distribute material resources of the community for common good. To tackle the issue of competition barriers created by heavy data protection, Anupriya suggests that a compulsory licensing framework similar to the one present in the Copyright Act could be devised. The framework would be tailored to data to authorize access to data against monopolisation of works. She suggests that Competition law could be useful for accessing data where a dataset is indispensable to enter an industry or a relevant market and sector-specific regulations can also facilitate access to data held by competitors and third parties. She concludes that there is a need to rethink the framework, as it runs the risk of widening the gaps between the data trustee and the citizen, vesting authorities with excess power without realising its purported objective.

Other Posts

Can Celebrities be Sued for Posting Paparazzi Photographs of Themselves on Social Media?

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In a guest post, Manasa Venkatachalam examines the issues involved in suing celebrities for copyright infringement for posting unauthorized paparazzi photographs of themselves on social media, from an Indian perspective. She explains that in case of paparazzi photographs, the photographers are the owners under Section 17 of Copyright Act, and thus enjoy the exclusive right to commercially exploit it. The only possible exception to this right that a celebrity sharing her photograph may claim is that of ‘private or personal use’, under Section 52(1)(a). Relying on a Bombay high court case, she argues that due to the public character of the audience in social media posts, they may not enjoy this exception. Comparing this with the US copyright law, Manasa recounts Gigi Hadid’s lawsuit, where she claimed fair use exception for sharing a paparazzi photograph of herself and made arguments hinting that as the subject of the photograph, she is a joint author of the same. The case did not explore these arguments and thus left these questions unanswered. Manasa also examines the possible conflict between the photographer’s copyright and the right of publicity of the celebrity in question, and concludes that the former is likely to triumph over the latter. She concludes with the note that when it comes to celebrities sharing their own pictures on social media, the non-commercial use argument is quite weak as they earn immense revenue through social media engagement.

Other Developments

Decisions from Indian Courts

• A Delhi District Court in Samsonite IP Holding v. A. K. Prasad decreed a suit in favour of the Plaintiff passing a permanent injunction thereby restraining the Defendant, its associates, agents etc. from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing or using the impugned trademark AMERICAN TOURISTER or any other identical with and/ or deceptively similar word/mark/label/device to the plaintiff’s said trade mark/label in relation to their impugned goods and business of bags, suitcase, slings, and related/allied products and from doing any other acts or deeds which is amounting to infringement of trademarks and copyrights of the plaintiff as well as amounting to passing off the goods of the defendants as that of the plaintiff [February 8, 2021].
• Bombay High Court in Yogi Ayurvedic Products Pvt.Ltd v. The Yogi passed an ad-interim injunction restraining the Defendants from using the impugned trade mark ‘THE YOGI’ and/or from using the impugned website www.theyogi.store or any other trade mark deceptively similar to the Applicant’s well-known trade mark ‘YOGI’ so as to pass off or enable others to pass off the Respondents’ goods as and for that of the Applicant’s goods in any other manner whatsoever [February 8, 2021].
• Delhi High Court in Merck Sharp And Dohme Corp & Anr v. Chiral Biosciences Limited passed an order of ex parte ad interim injunction restraining the Defendant, its directors, employees, officers, servants, agents and all others acting for and on its behalf from manufacturing, using, selling, distributing. advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in either API or intermediates or any product, that infringes the claimed subject matter of the Plaintiffs’ Indian Patent No 209816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts, including Sitagliptin Phosphate Monohydrate [February 6, 2021].
• IPAB in Novartis AG v. Asst. Controller of Patents & Designs vacated the decision of the Asst. Controller to defer the pre-grant hearings till physical hearing starts, and directed the Asst. Controller to offer hearing through video confencing to all the parties in seriatim as clarified in earlier paragraphs, strictly following the directives and decide the matter on merit [February 3, 2021].
• IPAB in Allegro Pharmaceuticals v. Controller of Patents & Designs set aside the order of the Controller which had rejected the appellant’s application and ordered that the patent be granted on the amended set of claims [February 1, 2021].
• IPAB in Adrenomed AG v. Deputy Controller of Patents and Designs set aside the order of the Controller which had rejected the appellant’s application under Section 3(i) of the Patents Act, 1970 and ordered that the patent be granted on the amended set of claims [February 1, 2021].
• Bombay High Court in Siyaram Silk Mills Ltd v. Kaluram Gopal Sharma passed an ad-interim injunction restraining the Defendants from using the impugned mark SIYARAM’S and/or any mark and/or expression identical with and/or deceptively and/or confusingly similar in any manner to the mark SIYARAM, so as to infringe the Plaintiff’s registered trademarks [January 27, 2021].
• Bombay High Court in Ajanta Pharma Ltd v. I-Well Pharma passed an ad-interim injunction restraining the Defendants from using the Plaintiff’s trademark OLOPAT bearing Registration No. 1370425 in Class 05 by the use of the impugned trademarks OLPET and OLPET KT and/or any other trade mark deceptively similar to the Plaintiff’s registered trademark in respect of medicinal and pharmaceutical preparations [January 13, 2021].
• Bombay High Court in Rockwool International v. Sana Traders passed an ad-interim injunction restraining the Defendants from using in any manner in relation to ‘Inorganic Mining Products and Insulating Material in the shape of Loose Fibers, Bats, Mats or Tubes used in Buildings, Portable Buildings, Stone Monuments and Chimney Pots or any other goods contained in Class 19’ any mark identical with or deceptively similar to the Plaintiff No.1’s trade mark ROCKWOOL registered under No. 505844 in Class 19 so as to infringe the same [January 11, 2021].
• Bombay High Court in Franco Indian Pharmaceuticals v. Macphar Remedies passed an ad-interim injunction restraining the Defendants from using the Plaintiff’s trademark in any manner in relation to their medicinal and pharmaceutical preparations the trademark MACXORANGE or any mark identical and/or deceptively similar to the Applicant’s trademarks DEXORANGE registered under No.269335, DEXORANGE registered under No.469669, DEXORANGE PAEDIATRIC registered under No.480645, DEXORANGE PLUS registered under No.2478272 and DEXORANGE registered under No.2984819 all in class 05, so as to infringe the Applicant’s registered trademarks [January 8, 2021].
• Bombay High Court in Glenmark Pharmaceuticals Ltd v. Biowil Formulation passed an ad-interim injunction restraining the Defendants from using the impugned trade mark CANDISHINE or any other trade mark being deceptively similar to the Plaintiff’s trade mark CANDID and the CANDID series of marks so as to infringe the Plaintiff’s registered trade mark [December 28, 2020].
• Calcutta High Court in Shambhu Nath And Brothers & Ors v. Ram Karan Yadav passed an ad-interim injunction restraining the respondent from infringing the petitioners’ registered trademark TOOFAN by manufacturing, selling, marketing, advertising in print or electronic media or internet or distributing or otherwise dealing in fans of electrical goods or goods falling under class 11 and/or any other goods under the offending mark or TOOFUN under any other mark which is identical with and/or deceptively similar to the petitioners’ registered mark TOOFAN in any manner [September 18, 2020].

Other News

• Draft Patents (Amendment) Rules, 2021 was published in the Gazette of India.

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  Twitter blocked hundreds of accounts flagged by the Ministry of Electronics and Information Technology after being held for non-compliance.

• Farmers from the Hati area of Sirmaur district in Himachal are trying to obtain a Geographical Indication tag for their unique “ginger powder” grown in the Bella Valley.
• A US trade panel has ruled in favour of South Korean battery maker LG Energy Solution Ltd, in a trade secret case and issued a 10-year import ban on some lithium-ion battery products by SK Innovation Co.
• After a two year battle, Meghan Markle has won a privacy case against a British tabloid over its publication of a letter she wrote to her father.
• The Supreme Court of Russia has rendered a decision affirming the legal protection of sculptures as self-standing copyright works within a monument.
• The Government of Canada has launched a public consultation discussing the extension of its general copyright term of protection from 50 to 70 years after the life of the author.