SpicyIP Weekly Review (February 15 – 21)

Topical Highlight

Justice Prabha Sridevan on Govt’s Proposal to Shut Down IPAB and the Way Forward

In this guest post,  Justice (Retd.) Prabha Sridevan notes that the Government’s proposal to scrap the IPAB is a welcome change. She argues that the functioning of the IPAB makes the two ostensible reasons for tribunalisation unsustainable: expert insight and speedy justice. She argues that regular courts are also more than capable of eliciting expert opinions, citing multiple cases where this has been done. Further, the staggered hearings at the IPAB often increase the pendency of cases before it. She notes that it takes years for a revocation petition / appeal against a rejection to reach finality, thereby eluding speedy justice. Further, the independence of the IPAB is suspect, given that the government controls it financially and is in charge of appointments to it. She also cautions against the eating up of the jurisdictional space of High Courts by tribunals, particularly because IP cases involve public interest and constitutional rights, adjudicating upon which maybe beyond the ambit of a tribunal’s jurisdiction. She concludes by arguing for the creation of an IP Bench in the High Courts.

Thematic Highlight

The Grand Old Indian Trade Marks Register: Episode 1 (1877-1881)

In part 1 of this three-part post, our former blogger Aparajita Lath, traces the birth and early life of the Indian Trade Marks Register, which ‘institutionalized’ trademark protection in India. In the first part she covers the first phase of legislative activity. She notes that prior to the enactment of the Trade Marks Registration Act, 1875 in England, English trademark law was fragmented, and without a centralized law on registration, consisted of common law remedies, criminal remedies and trade specific laws. As manufacture, particularly cotton manufacture, increased in India, the need for trade mark registration and protection was also felt. She highlights that while common law protected reputation / goodwill generated from the use of trademarks, such protection involved cumbersome actions and a trade mark system would allow the establishment of property rights upfront, serving as notice to other traders, cheapening and also reducing trademark disputes. Thus, in 1879, a bill was proposed, as per the 1875 Act in England, as per which there would be no action for trademark infringement unless a trademark was registered. However, this bill was withdrawn abruptly because suddenly, leading commercial associations that had backed it initially changed their stance and agreed that a centralised registration system would not only be unnecessary but also inconvenient.

The Grand Old Indian Trade Marks Register: Episode 2 (1881-1920s)

In part 2 of this post, Aparajita focuses on the period from 1881 to 1920s. By examining archival records, she discovers the reason behind the Indian opposition to the legislation establishing a nation-wide trademark registration system. The Indian commercial community led the opposition to the legislation. As British-manufactured goods were trading in India through independent merchants, it raised uncertainties regarding trademark ownership and all solutions seemed unviable. Furthermore, there was lack of expert staff to adjudicate upon trademark application. The community was also worried about the alternative of Indian trademarks being registered under the English statute as they felt that Indian trademarks would not be considered distinctive enough under the English law. This fear was heightened in cotton and cloth markets, where brands had negligible difference. It was also believed that a registration system was not required in India as it was only imitation that was generally under dispute and not ownership. As a result of this opposition, rights to a trade mark continued to be acquired only through use till the 1940s.

The Grand Old Indian Trademarks Register: Episode 3 (1920-1940)

In part 3 of this post, Aparajita highlights certain changes in the commercial landscape which led to commercial opinion bouncing back in favour of registered trademarks. She notes that by 1939, the cloth and cotton markets were no longer dominated by British goods but by Indian and Japanese goods. She also highlights that the abnormal demand due to the second world war, caused an increase in deliveries from mills to go-downs. Large scale industries were unable to personally contact consumers and therefore a gap emerged between makers of goods and consumers, increasing the importance of trademarks as substitutes for personal contact. There were also debates regarding growing uncertainty on ownership of trademarks which led to the belief that a registration system was required. Aparajita concludes by noting that the first, comprehensive law that established a nation-wide system of trade mark registration came into being in 1940, and as the growing number of trademark applications received by the Trade Marks Registry demonstrates, faith in this institution has certainly increased over time.

Other Posts

Justice Manmohan Singh Holds Hearings at IPAB Despite Supreme Court Ruling

In this post, Praharsh notes that as per the causelist, Retd. Justice Manmohan Singh is still holding hearings in the IPAB and passing orders despite the Supreme Court’s rejection of the application for extending Justice Singh’s tenure as the IPAB Chairperson. Praharsh highlighted the judgment’s clarification of the position of the law regarding the tenure of the Board’s Chairperson. He also provided a helpful flowchart (pdf) to make it convenient to understand the developments surrounding the case. He highlighted the Court’s ruling that Section 184 of the Finance Act does not ipso facto prescribe or indicate any term of appointment or tenure, except to enumerate outer limits of tenure terms. He also noted that the Court negated the assumption that the Chairperson is a judicial member or that only a judicial member is capable of becoming the Chairperson, holding that as per Section 84(3) of the Trade Marks Act, a Chairperson can function as both a judicial and technical member. He concluded by arguing that the authority under which hearings are still being held by the incumbent is not clear.

Image from here

The Amended Form 27 and Uncertainty in Timelines for Filing

In this post Adyasha, highlights an issue regarding the filing of working statements (Form 27) as per the amendments made to Patent Rules, 2003 in October last year. She points out that the amendment to Rule 131(2) shifts the time period for which the disclosure statements are to be filed, from ‘calendar’ year to ‘financial’ year. This changes the time period for filing statements from 1st January to 31st December (as required earlier) to 1st April to 31st March. Due to the Amendment coming into force midway, the next set of working statements due would be for the period of April 2020 to March 2021, followed by April 2021 to March 2022, and so forth. This leaves a gaping hole in the timelines – the first quarter of 2020, for which no instructions have been provided. Adyasha suggests that there may be three possibilities to deal with the issue. Firstly, the government could observe the switch from April 2019 itself and invite statements for financial year April- March 2020. Secondly, the statutorily mandated disclosure requirement for January-March 2020 may be skipped altogether. Thirdly, the Patent Office may seek a separate working statement covering only January-March 2020. She concludes by stressing upon the need for a clarification from The Patent Office or the Department for Promotion of Industry and Internal Trade.

Decisions from Indian Courts

• The Delhi High Court in Allied Blenders and Distillers v. Agribiotech Industries Ltd. decreed the suit in accordance with the terms of settlement, as per which the defendant would not use any marks deceptively similar to the plaintiff’s trademarks, OFFICER’S CHOICE, OFFICER’S CHOICE BLUE and CHOICE, and/or pass off the plaintiff’s goods as its own. The plaintiff affirmed that it would not pursue its claims for delivery up of the impugned CHETAK WHISKY products, for rendition of accounts of profit against the Defendant, for recovery of damages against the Defendant, and for costs of the present proceedings. [February 19, 2021]
• The Bombay High Court in Godrej Consumer Products Ltd v. Deepak Bhatia, disposed of the suit in accordance with the Consent Minutes which noted that the Defendants would be restrained by a perpetual order and injunction of this Court from infringing the Plaintiff’s registered trade mark HIIT by use of the impugned mark SUPER HIIT, and would also deliver up the impugned goods to the plaintiff for destruction. [February 16, 2021]
• The Delhi High Court in TM 25 Holding BV v. Uma Manja Shivappa, granted an ex- parte ad-interim injunction in favour of the plaintiffs, restraining the defendants from using the mark GS STAR which is deceptively similar to the plaintiff’s trade mark G-STAR. [February 16, 2021]
• The Bombay High Court in Ceat Ltd. v. JKM Tyres Ltd., granted an ad interim order restraining the defendants from using on their signage the impugned artwork of CEAT or using the impugned mark or trade dress of CEAT in relation to their products, till the final disposal of the suit alleging copyright and trademark infringement as well as passing off. [February 16, 2021]
• The Bombay High Court in a design and trade mark infringement suit in The Supreme Industries Limited v. M/s. Young India Impex, pertaining to the design of a folding table and the trade mark ‘SUPREME’, noted the defendant’s plea that it was a prior user of the design complained of, and recalled/vacated its orders dated 30.06.2020 and 30.07.2020. [February 15, 2021]
• The Delhi High Court in its order in Sporta Technologies Pvt Ltd v. Dream11 Prime & Ors. allowed the plaintiff’s application for extension of the injunction order dated 14.10.2020 to defendant Nos. 66 to 149, restraining them from infringing the plaintiff’s registered DREAM 11 trademark and passing off the plaintiff’s goods as their own. Defendant No. 52 was also directed to unlock the domains www.dream11.life, www.dream11.org, www.dream11.net, www.dream11.co and www.dream11.co.in. [February 11, 2021]
• The Meghalaya High Court in M/S. B.R. Industries v. State of Meghalaya & Ors. held that Courts of Deputy Commissioner and Additional Deputy Commissioner are Principal Civil Courts of Original Jurisdiction in the district, constituting “District Courts” within the meaning of Section 134 of the Trade Marks Act, and are hence, competent to try the suit under the Act. It directed the District & Sessions Judge (Additional Deputy Commissioner) to dispose of the suit concerned, on merit after hearing both sides, preferably within six months from the date of receipt of the order. [February 11, 2021]
• The Income Tax Appellate Tribunal (ITAT), Pune in Norton Life Lock Inc, Pune v. Asstt. Commissioner of Income Tax, Pune held that the sale consideration received from selling software products to the end-users, distributors, or resellers is business income and not Royalty income, which as such is not taxable in India. [February 5, 2021]
• The Bombay High Court in Bajaj Electricals Ltd v. Urban Foodmart India Pvt. Ltd. & Ors., passed an interim order, restraining the Defendants from passing off or infringing the plaintiff’s well-known trade mark BAJAJ SUPERMART in relation to their food retail chain. The defendants were directed to remove all signage, use of marks on shopping bags, cartons, packing material, etc. within a period of three weeks. [February 5, 2021]
• The Delhi High Court via an ex-parte order restrained more than 36 vendors on Flipkart, Amazon, Paytm Mall, Snapdeal and TataCliq from selling goods bearing Shenzhen Jiayz Photo Industrial. Ltd.’s mark BOYA on their counterfeit products. [February 10, 2021]

Other News from around the Country

• 7 Intellectual Property Law teachers from across the country have formed a
  Like Minded IP Teachers’ Working Group on Intellectual Property and Public Interest, and released a manuscript titled, Social Dimensions of Copyright Infringement and Enforcement, reflecting on the Sci-Hub Litigation before the Delhi High Court.
• BigBasket, India’s largest online grocery retailer, sent a ‘cease and desist’ notice to Daily Basket for trade mark infringement and passing off due to use of the word ‘basket’ in word or logo form in relation to their e-commerce business.
• The government recently introduced a bill in the Lok Sabha, The Tribunal Reforms Bill, 2021, which aims to scrap existing tribunals set up under laws relating to cinematograph, copyright, trademark, airports authority, customs, patents and others.
• In this article for LiveLaw, Gopi Trivedi & Anay Amin highlight some key points from the Government of India’s all-inclusive patent scheme for start-ups and small enterprises.
• Actor Sherlyn Chopra, sought anticipatory bail from the Bombay High Court after a Sessions Court rejected her bail application, in a case involving allegations of obscenity against her for publishing ‘adult content’ on free pornographic websites. She claimed that the content was for a subscription-based international portal and she was a victim of copyright infringement and piracy.
• Nagraj Manjule’s film Jhund, which was embroiled in a copyright dispute, is set to be released on 18 June, 2021.
• In this piece for the Economic Times, Saubhik Chakrabarti argued that Google and Facebook should not be allowed to take most of the revenue generated from digitally available news content in India, in light of copyright agreements signed by Google with news publishers in France and its ongoing efforts to do the same in Australia after regulatory pushes by the Australian government.

News from around the World

• It was reported that Elsevier and Springer Nature teamed up to obtain an injunction in the UK, and that UK ISP TalkTalk would block (or is already blocking) access to the Sci-Hub domain ‘sci-hub.se’, as a result of an injunction handed down by a UK court on February 15, 2021.
• Pakistan decided to register Himalayan pink salt as Geographical Indication (GI) to preclude other countries from using it unauthorizedly.
• A top US Democratic lawmaker, Representative Jan Schakowsky, is lobbying the Biden administration to support a waiver of the World Trade Organization’s intellectual-property obligations to allow developing countries to improve access to vaccines in light of the Covid-19 pandemic.
• Brussels-based European consumer campaign group BEUC noted that TikTok’s “unfair” copyright policy massively violated user rights via terms that grant TikTok an irrevocable right to use videos without payment.