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Squaring the Snags of Online Hearings

The Indian Trademarks Registry (“TM Registry”) had always extended the facility of virtual hearings much before the onset of the pandemic. However, not many IP attorneys and Trademark Agents preferred to utilise this resource due to issues surrounding the system and the process.

Recently, the Delhi High Court, in the case of Pawandeep Singh v. The Registrar of Trademarks & Anr., W.P.(C)-IPD 7/2022 & CM 30/2022, pointed out numerous inefficiencies in the virtual hearing system of the Trademarks Registry and instructed the concerned authorities to streamline and optimise the current system.

The petitioner in this matter had filed a writ petition against the orders passed by the Registrar of Trademarks in respect of Application No. 3981639 for the mark “SWISS”. The grouse of the petitioner was that the order was passed without affording a hearing to the petitioner, which violated the principles of natural justice.

The agent who had logged in for the hearing was kept in the virtual waiting room at the time of the hearing and was not admitted. Hence, the petitioners were not allowed to put forth their oral arguments. However, it was officially recorded that submissions were heard. The petitioner informed the Hearing Officer via email regarding the situation, but no response was received. The petitioner was further surprised when he received the refusal order.

The ‘Hon’ble Court, based on the submissions made by both the parties, recorded the following observations:

  1. The cause list for hearings at the Registry is published monthly.
  2. The TM Registry’s virtual platform allows only three people to be present in the hearing at any given time, and the remaining attendees are kept in the waiting room.
  3. An order that the Hearing Officer passes has two parts, the templated portion and the non-templated portion where the Hearing Officer types out the order. The templated piece is not editable and states that the matter was set down for hearing and, eventually, the hearing took place on a particular date.

In this matter, the Hearing Officer did admit that the petitioner in the present case was not heard, and the templated portion of the impugned order is contrary to the fact. The illegality is compounded when the order captures that the hearing took place, whereas the counsel was kept waiting in the waiting room but was not admitted.

The Court remarked and directed that the Controller General of Patents, Designs & Trademarks must devise a proper mechanism for holding show cause hearings by including the following features:

  1. Publication of cause list notices daily.
  2. Utilising a platform with an open link.
  3. Matters should be called serial number-wise for certainty and convenience of the applicants.
  4. Removal of templates from the order statements which may vary on a case-to-case basis.
  5. Some extra space is made available for Senior Examiners to put their brief reasons for allowing or refusing the application.

The Court held that a proposal on behalf of the Controller General of Patents, Designs & Trademarks in respect of holding show cause hearings on the points outlined above should be placed on record within two weeks. It may also consult the IP fraternity and stakeholders if required.

The matter has also brought to the forefront the inefficiencies of the online hearings, which stakeholders have long since been bringing to the attention of the Registry. With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

Image Credits: Photo by Sora Shimazaki from Pexels

With online hearings gaining prominence, the suggestions of the Court are the right steps towards a more efficient and transparent system that will stand the test of time.

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A Shot in the Arm for Innovation and IP: Budget 2022

The past two years have brought to the forefront the paramount importance of technology. The Economic Survey 2021-22 was a precursor to the Union Budget that built a foundation for a wave of innovations by incorporating a tech-forward and futuristic outlook across various relevant sectors. Drone technology, artificial intelligence, blockchain and the issuance of a Central Backed Digital Currency (“CBDC”) were a few of the issues that were highlighted.

The Finance Minister mentioned the word ‘Atma Nirbhar’ approximately six (6) times in her address. The vision of self-reliance, or ‘Atma Nirbhar’, has been a rallying call for the government in the last few years, hence manifesting the importance of this philosophy.

Green India

 
There has been increased awareness of both the ill effects of climate change as well as the various pollutants that are damaging the environment. The Union Budget took note of this with announcements for the implementation of Energy Service Models (ESCO) as well as the development of business models for batteries or energy as a service. The Finance Ministers’ mention of a battery swapping policy as well as interoperability standards for charging electric vehicles indicates an urgency for innovation in this space to reduce the carbon footprint. With an increased focus on electronic vehicles, the future is indeed bright for battery makers to bring forth further innovation to reduce costs for battery replacement as well as tackle the inadequacy of public charging infrastructure. Such innovation will lead to an increase in patented technology in the field of green energy. In addition, the impetus given through the additional allocation towards solar equipment manufacturing and the issuance of green bonds for boosting green infrastructure are big steps towards a green economy driven by technological enablement.


The 5G connection

 

The much-anticipated 5G spectrum auctions are set to be conducted in 2022 to facilitate the rollout of 5G mobile services. As a part of the PLI Scheme, a designed-led manufacturing framework is proposed to be launched to build a strong 5G ecosystem in the country. The technology will be a catalyst to innovation in several sectors such as healthcare, automotive, research, defence, manufacturing etc. Additionally, 5G and R&D shall prove to be a stepping stone into the new era of businesses being more appreciative of the complexities and importance of the IP regime to gain maximum benefits amidst a growing tech-friendly and driven market.

Wearables

 

With the announcement of a graded rate structure of the customs duty rates, the focus on ‘Atma Nirbhar Bharat’ is very much prevalent to facilitate further domestic manufacturing of wearables. This can be an impetus for further innovation from both existing domestic companies as well as the genesis of newer ones. Wearables have garnered a lot of attention in recent times and there is a lot of scope for newer players in this field with unique trademarks whose innovations will give rise to numerous patents.

Eye in the Sky

 

Climate change has adversely impacted the farming sector and the need of the hour is sustainable land management and a change is required in the manner of farming. The announcement of the ‘Drone Shakti’ scheme as well as the use of drones to assist in spraying of insecticides and nutrients and for crop assessment heralds the advent of e-agriculture which is important for an agriculture-based country like India. A drone can assist farmers with crop production, early warning systems and disaster risk reduction. Additionally, the drones–as–a–service (DRaaS) model will act as a fillip for startups in this nascent sphere of activity and increase innovation and adoption of drone technology for e-agriculture in the coming years.

Blockchain Technology

 

Months of uncertainty ended with the announcement of the CBDC, which will act as an impetus to the digital economy. The CBDC will be based on blockchain technology, thus also welcoming the use of blockchain technology in the future as a building block for the digital economy. The introduction of the digital yuan in China heralded the incorporation of new mechanisms to adopt CBDC’s among apps and providers of payment solutions. The government intends to launch the digital rupee from 2022- 2023 and therefore, this year will be a watershed moment for the adoption of blockchain technology.

The advent of the blockchain will increase its utility in various other sectors as well such as sports, NFT’s, smart contracts, etc.

 

Edtech

 

Education has moved from the erstwhile hallowed classrooms to the living room in the last two years. Classrooms became virtual and education too was touched by the Digital India initiatives. Into this space came EdTech companies with tie-ups and a range of courses to upskill not only students but professionals as well. The Union Budget proposed the launch of a digital university to enable access to education to all at one’s doorstep. Additionally, the Budget announced a skill-development initiative in a digital ecosystem called the DESH stack e portal. The use of technology in the education sector will not only increase, but we will see further innovation in both the medium of dissemination of information as well as the advent of artificial intelligence-based learning tools and the issuance of certificates via the use of blockchain technology to name a few changes one could see. With each platform wanting to garner the largest consumer base, the protection of intellectual property will be at the forefront of this sector.

HealthTech

 

The pandemic has not just intensified the need for health-related technological innovation, but the digital support offered by AI and automation during the crucial period has also punctuated the future of HealthTech with burgeoning prospects. This has been acknowledged in the budget with the introduction of an open platform for the National Digital Health Ecosystem consisting of digital registries of health providers and health facilities, a unique health identity, consent framework, and universal access to health facilities. This would legitimize, increase access as well as boost consumer confidence in the sector’s offerings, thus leading to more investment and more innovation. Moreover, the recognition of mental health issues, as well as the support system, proposed to be established to address them in the form of a ‘National Tele Mental Health Programme’ and Tele-mental health centres of excellence makes this discipline, which was hitherto marred by discomfiture, lucrative.

The Future

 

With path-breaking changes in both the technology at use as well as the improvements in the current technology at use, we will see a huge number of intellectual properties being created. The renewed focus on ‘Atma Nirbhar’ will encourage startups to push forward with innovation in varied fields that will optimise a market ecosystem that deploys the use of drones, e-agriculture, EdTech, blockchain etc.

There has always been a direct correlation between innovation and the protection of intellectual property. The views of John Locke through the Labour Theory and Hegel through the Personality Theory are of utmost relevance considering this forward-looking union budget. Intellectual Property and its protection will not only reward the creator for their work, but will also protect their personality in the work, resulting in continued innovation.

With the stage set for some landmark innovations in the upcoming years, and various actors waiting in the wings, intellectual property and the challenges of enforcement will take centre stage.

References:

Image Credits: Photo by kiquebg from Pixabay 

There has always been a direct correlation between innovation and the protection of intellectual property. With the stage set for some landmark innovations in the upcoming years, and various actors waiting in the wings, intellectual property and the challenges of enforcement will take centre stage.

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Marrakesh Treaty: Making Literature Accessible to All

There are over 2.2 billion people blind or visually impaired worldwide, and about 90% of them live in developing or least developed countries. Considering their economic situation and available infrastructure, education and access to the literature are significant issues. Only less than 10% of books published every year are available in a format accessible to them.

Without access to books and magazines, the visually impaired cannot receive the required education or realise their full potential. With a single objective to increase access to books, magazines, and other printed materials for people with print disabilities, the Marrakesh Treaty was adopted by the member states of WIPO in 2013 (the “Treaty”), which also forms part of the body of international copyright treaties administered by WIPO.

 

How did the Marrakesh Treaty Eventuate?

 

In 2006, the WIPO Standing Committee on Copyright and Related Rights’ Study on Copyright Limitations and Exceptions for the Visually Impaired, led by Judith Sullivan, set the ball rolling for copyright exceptions for the benefit of the visually impaired. This move prompted many states to make exceptions to their copyright law.

Following that, a proposal for the Treaty was first tabled before the WIPO by Brazil, Ecuador, and Paraguay for the World Blind Union (WBU) during WIPO’s 18th Standing Committee on Copyright and Related Rights (SCCR) in 2009. The proposed Treaty set forth minimum standards of copyright exceptions and facilitated the cross-border exchange of accessible formats. Consequently, the Forty-Second WIPO General Assembly decided to convene a Diplomatic Conference on limitations and exceptions for visually impaired persons/persons with print disabilities in June 2013.

The Diplomatic Conference to Conclude a Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities, was held from 17th to 28th June 2013 in Marrakesh, Morocco, which adopted the Treaty on 27th June 2013. The Treaty aligns with the human rights principles in the Universal Declaration of Human Rights (UDHR) and the United Nations Convention on the Rights of Persons with Disabilities (UNCRPD).

India became the first country to ratify the Treaty on 24th July 2014. The Treaty received 79 signatures in the first twelve months that it was open for signatures, and it entered into force on 30th September 2016 currently with 80 Contracting Parties on board.

 

Salient Features of the Marrakesh Treaty

 

Definitions Under the Marrakesh Treaty:

“Works” are defined to mean literary and artistic works within the meaning of Article 2(1) of the Berne Convention for the Protection of Literary and Artistic Works.

“Beneficiary Persons” is defined as someone affected by one or more in a range of disabilities that interfere with the effective reading of printed material. This definition includes visually impaired persons and those with a physical disability that prevents them from holding and manipulating a book.

The definition of “Accessible format copy” is broad and covers any format that permits a person with a visual impairment or other print disability to access the content as feasibly and comfortably as a person without such a disability, including digital formats. The accessible format copy is used exclusively by beneficiary persons. It must respect the integrity of the original work, taking due consideration the changes needed to make the work accessible in the alternative format and the accessibility needs of the beneficiary persons.

“Authorised entity” is defined as an entity authorized or recognized by the government to provide education, instructional training, etc., to beneficiary persons on a non-profit basis. It also includes a government institution or non-profit organization that provides the same services to beneficiary persons as one of its primary activities or institutional obligations.

 

Obligations of the Member Countries Under the Marrakesh Treaty:

 

Article 4 of the Treaty refers to the obligation of the contracting parties to fulfill two primary obligations, i.e.:

  1. Contracting Parties shall provide in their national copyright laws for a limitation or exception to the right of reproduction, the right of distribution, and the right of making available to the public as provided by the WIPO Copyright Treaty (WCT); and
  2. To facilitate the availability of works in accessible format copies for beneficiary persons.

These limitations and exceptions mean that a range of acts is permitted without infringing copyright.

Article 5 highlights the obligation about the Cross-Border Exchange of Accessible Format Copies. As per this article, all contracting Parties shall have a necessary provision in their Statutes wherein if an accessible format copy is made under a limitation or exception or according to the operation of law, that accessible format copy may be distributed or made available by an authorized entity to a beneficiary person or an authorized entity in another Contracting Party.

 

Application of the Marrakesh Treaty in India

 

The Copyright Act (Amendment) Act 2012, which was enacted in India much before the Treaty was adopted, had already incorporated a provision which grants the exception of fair dealing with the reproduction, distribution, and making available of published works in accessible formats for the disabled.

 

The 2012 Amendment of Fair Dealing Exception

 

The Copyright (Amendment) Act, 2012 provides certain exceptions to copyright infringement as fair dealing under Section 52. The provision permits limited use of copyright material without the owner’s authorization.

The Copyright (Amendment) Act, 2012 brought a new provision under Section 52(1) (ZB), which made conversions of work into an accessible format for the exclusive benefit of disabled persons a fair dealing exception to the infringement of copyright. This extends to the adaptation, reproduction, issue of copies, or communication to the public of any work in an accessible format for persons with disabilities, by any person or organisation working for the benefit of the persons with disabilities.

Section [(zb) 52] highlights that the; adaptation, reproduction, issue of copies or communication to the public of any work in an accessible format, by:

(i) any person to facilitate persons with disability to access to works including sharing with any person with disability of such accessible format for private or personal use, educational purpose or research; or

(ii) any organisation working for the benefit of the persons with disabilities in case the standard format prevents the enjoyment of such works by such persons:

Provided that the copies of the works in such accessible format are made available to the persons with disabilities on a non-profit basis but to recover only the cost of production. Provided further, the organization shall ensure that the copies of works in such accessible format are used only by persons with disabilities and take reasonable steps to prevent entry into ordinary business channels.

 

Recommendations of Parliamentary Standing Committee on Commerce

 

The Parliamentary Standing Committee (“Committee”) constituted under the Dept of Commerce, inter alia, examined the challenges faced in ensuring a balance between copyright protection of the publishers and public access to affordable educational study material in its recent report titled “Report 161: Review of the Intellectual Property Rights Regime in India” presented in the Rajya Sabha on 23rd July 2021.

The Committee observed that the fair use exception is having a detrimental impact on the publishing industry and authors who are mainly dependent on royalties. On the other hand, it also observed that protection of copyrights of publishers and authors which encourages enrichment of quality books and public accessibility of such works at an affordable rate counterbalanced to maintain the overall literary culture and image of the country. Hence, in order to overcome this conflict, the Committee made the following recommendation:

  • Section 52(1) of the Copyright Act, 1957 should be amended to facilitate a fair and equitable ecosystem of literary culture in the country by allowing reprographic works in Government-owned educational institutions and storing it in libraries for their easy access to students as well as stipulating limitations to unrestricted commercial grants to copy books and literary works and storage of copied works in digital formats.
  • Libraries should be upgraded to provide easy access to the works of foreign publishers by the students
  • The earliest implementation of National Mission on Libraries (NML), a Government of India initiative to modernize and digitally link close to 9,000 public libraries across the country works.
  • A comprehensive study of the Berne Convention provisions regarding Protection of Literary and Artistic Works to promote a regime of copyright which will be of advantage to both copyright holders and the public.
 

Compulsory License to Reproduce Published Work for the Benefit of Disabled for Profit

 

In addition to the fair dealing exceptions, the Amendment also provides for Compulsory Licensing to any person working for the benefit of the disabled to publish any work on which copyright exists.[1]

Considering the more significant public interest involved in the license proceedings, the Act mandates that Courts shall make necessary endeavors to dispose of such applications within two months from the date of receipt of the application.

 

Reproduction and Cross-border Exchange of Published Works

 

In line with the Treaty’s commitment to make accessible format works available to the beneficiaries across the boundaries, WIPO in June 2014 established the Accessible Books Consortium (“Consortium”). This public-private collaboration brings together all the key players, including the organisers, beneficiaries, publishers, and authors. It is a multiparty collaboration that offers books in an accessible format to blind and prints disabled people across the globe.

As of now, the Consortium holds over six lakhs books in accessible formats in over 80 languages in 93 partnered libraries that are available without legal formalities to the beneficiaries and organisations that assist such people. The Treaty also allows unlocking of Digital Rights Management Amazon Kindle (DRM) book, which can then be reproduced in Braille format and made available to the beneficiaries without the prior consent of the copyright holders.

In India, the Consortium initially covered two states, i.e., Bihar and Madhya Pradesh, by providing support of converting books from standard IX to XII in accessible formats and offering reading assistant devices at a subsidised cost.

The India chapter started with the Daisy Forum of India (“DFI”), which in collaboration with Tata Consultancy Services (TCS), National Institute for Empowerment of Persons with Visual Disabilities (NIEPVD), and the Government of India; launched Sugamya Pustakalaya, India’s first and most significant collection of accessible books hosting over 6.75 lakhs in accessible formats across in as many as 17 languages across DFI libraries.

Since then, multiple NGOs, libraries, Online databases, software programmes have been established. Saksham Trust, a Delhi-based NGO working for the exact cause, is another such organisation.[2] Also, various reading softwares have been developed, such as the INDO-NVDA software, making computers accessible for visually impaired people.

 

Conclusion

 

While India has one of the most progressive copyright exceptions for the benefit of the disabled globally, it is pertinent to note that India hasn’t fully incorporated provisions of the Treaty in her national law. Provisions related to cross-border availability, privacy, and cooperation remain absent. To achieve the objective of the Treaty, it is pertinent that all Contracting Parties comply with their obligations to foster an accessible environment for the disabled.

Image Credits:

Photo by Jaredd Craig on Unsplash

While India has one of the most progressive copyright exceptions for the benefit of the disabled globally, it is pertinent to note that India hasn’t fully incorporated provisions of the Treaty in her national law. Provisions related to cross-border availability, privacy, and cooperation remain absent.

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Online Games Involving Money Now Banned in Karnataka

In a major setback to the Online Gaming platforms and all other gaming entities in Karnataka falling under the category of wagering or betting, the Karnataka Government on 5th October 2021 notified the Karnataka Police (Amendment) Act, 2021, (“Act”/”Amendment”) which prohibited all forms of online gaming involving a transfer of money.

The controversial legislation comes in the backdrop of the upcoming T20 World Cup involving a huge stake for online gaming companies, including MPL, Dream11, to name a few. Further, it is said to damage Bangalore/Karnataka’s position as the country’s start-up capital which houses about 92 gaming companies and employs over 4,000 persons. 

Key Amendments Made Through the Karnataka Police (Amendment) Act, 2021

The Amendment widened the scope of certain definitions under Section 2 of the Act. Some of the key amendments are:  

The definition of the term “Gaming” under Section 2(7) has been revised to include online games that involve “all forms of wagering or betting, including in the form of tokens valued in terms of money paid before or after issue of it, or electronic means and virtual currency, electronic transfer of funds in connection with any game of chance“.

Similarly, Section 2(11) that defines “Instruments of gaming” has been substantially expanded and now includes any article used or intended to be used as a subject or means of gaming, including computers, computer system, mobile app or internet or cyberspace, virtual platform, computer network, computer resource, any communication device, electronic applications, software and accessory or means of online gaming, any document, register or record or evidence of any gaming in electronic or digital form, the proceeds of any online gaming as or any winning or prizes in money or otherwise distributed or intended to be distrusted in respect of any gaming“.

The Amendment has also introduced a new Section 12(A) that defines “online gaming” as “games as defined in clause (7) played online by means of instruments of gaming, computer, computer resource, computer network, computer system or by mobile app or internet or any communication device, electronic application, software or on any virtual platform;

Further, Section 78 has been amended to criminalize activities related to opening certain forms of gaming centres and penalize anyone who opens, keeps or uses cyber cafes, computer resources, mobile apps, the internet, or any communication device as defined in the IT Act for online gaming. Offences under Section 78 have been made cognizable and bailable.

The Amendment has also increased the nature of, and scope of punishments for various offences. Offences under Section 78 and Section 87 of the Act that deals with gaming in public streets are punishable with imprisonment of up to six months or a fine of up to ten thousand rupees. 

Punishments under Section 79, which criminalizes keeping common gaming house, and Section 80, which criminalizes gaming in common gaming-house, have been increased to imprisonment of up to three years and a fine of up to one lakh rupees. 

Previously, Sections 79 and Section 80 did not apply to wager in games of pure skill. The Amendment removed this exception, bringing games of skill as well under the purview of the ban.

Judicial Stand on Similar Bans Placed on Online Gaming

Recently in the case of Junglee Games v. State of Tamil Nadu[1], the Madras High Court struck down the Tamil Nadu Gaming and Police Laws (Amendment) Act, 2021, which was similar to the Amendment in Karnataka, holding that such a blanket ban was excessive and disproportionate and that it was violative of Article 19(1)(g) of the Constitution.

The Rajasthan High Court in Saahil Nalwaya v. State of Rajasthan and Ors. [2] held that online fantasy sports, which functions under the Charter for Online Fantasy Sports Platforms of the Federation of Indian Fantasy Sports, the self-regulatory body in the online fantasy gaming industry which we have discussed before, are protected under Article 19(1)(g) of the Constitution.

The Supreme Court in Avinash Mehrotra v. The State of Rajasthan[3], dismissed an SLP from a decision of the High Court of Rajasthan, thereby upholding the judgements of the Rajasthan High Court, the Punjab and Haryana High Court, and the Bombay High Court, that games such as Dream11 do not involve any commission of the offence of gambling and betting.

Considering these judicial stands, the constitutional and legal validity of the Amendment is also in question, and the Amendment will likely be challenged in Court.

 

Effects of the Amendment Banning Online Gaming in Karnataka

Immediately after the Amendment Act was notified, Online platforms started geotagging and blocking access to their apps for users in Karnataka. While MPL and PayTM First seem to have blocked access to their users in Karnataka, some other online fantasy sports apps are still trying to interpret and adhere to the new legislation.

Industry experts predict that the ban will impact over 10% of online transactions in the country and will cause around 7-12% loss of revenue to the online gaming industry other than damaging the investor-friendly tag of Karnataka. 

 

The Way Forward

This move is the latest of the numerous attempts by legislatures in different States of the Country to ban online gaming. Such actions are criticized for showcasing the misplaced concern of the legislature for online games, and critics advocate for regulation instead of an outright ban. While clarity is needed and perhaps the rules which are yet to be framed may help clear the air, the Gaming industry may not wait until then from moving to Court challenging the blanket ban.

References

[1] (2021) SCC OnLine Mad 2762.

[2] D.B. Civil Writ Petition No. 2026/2021.

[3] SLP (Civil) Diary No. 18478/2020.

 

Image Credits: Photo by Aidan Howe on Unsplash

The order of the Mumbai Tribunal has, indeed, widened the scope of ‘onus’ placed on the assessee to prove the genuineness of a particular transaction. Such ‘onus’ will not be deemed to be discharged by merely filing the documents before the tax authorities, but the assessee would have to go one step further to justify the rationale of such transactions in order to prove that the transaction has not been entered as a colorable device to defraud the Revenue.

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2020 In Rewind: Trademarks In India

The entrepreneurship space has seen major evolution with conducive policies and enabling technological environment in the past few years. Specifically, the digital landscape has levelled up in traffic and capabilities owing to the pandemic last year and everything moving online. With that, the intellectual property and technology laws are grappling to catch up to the developing situation and adequately protect the rights of the stakeholders in the sector. Until that happens effectively, the courts are taking a pro-active step to align the developments with the legal intentions and business requirements. With this in view, we witnessed some interesting case updates that took place in the field of trademarks and domain name disputes in the past year. Here is a brief of the key trademark-related updates in India that took place in the year 2020.

I.LEGISLATIVE DEVELOPMENTS

There was no significant legislative development in the trademark practice, apart from the Trademark Registry’s decision to go completely virtual with respect to prosecution hearings. The Trademark Registry and the Intellectual Property Appellate Board (IPAB) much like all the judicial and quasi-judicial bodies across the country, for the time being, has done away with the physical mode of hearing, and it is taking up matters via video conference.

II.SIGNIFICANT CASE LAWS

Here is a recap of key cases within the domain:

Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019 |31-01-2020

In this case, the division bench of the Delhi High Court had set aside the lower court’s order restraining Amazon from allowing the sale of products of Amway India, a Direct Selling Entity, from its platform. Amway India filed a trademark infringement suit against Amazon on the ground that the e-commerce giant is liable as an intermediary for allowing and continuing to allow Amway India’s products (which it alleged were counterfeited products) to be listed on the former’s website by one of Amway’s direct seller. The lower court found Amazon liable for trademark infringement for non-observance of Direct Selling Guidelines and failing to demonstrate due diligence.   

The Division bench while setting aside the lower court’s order ruled that Direct Selling Guidelines are merely advisory to State Governments and Union Territories and they are not binding laws, and hence, it cannot be enforced against e-commerce intermediary. The Court further refuted the claim of trademark infringement on the ground that India follows the principle of international exhaustion of Trademarks, meaning once a good is lawfully acquired by the Direct Seller, the rights over the said good (including right re-sell) vested in the Direct Seller. Hence, Amazon as well as the seller were saved under the second sale exception to trademark infringement under section 30 (4) of the Trademarks Act, 1999.

Imagine Marketing Pvt. Ltd. V. Exotic Mile (CS(COMM) 519/2019) | 21-01-2020

The Plaintiff, commonly known in the market as “BoAt”, consumer electronics brand, sought an injunction against the Defendants from using the mark “BOULT” for the manufacture and sale of electronic audio gadgets mainly earphone, headphones, etc.

The Delhi High Court (single bench) had passed an interim injunction restraining the Defendant from using the mark “BOULT” ruling that it was deceptively similar to “BoAt” and that even their taglines were similar to each other. However, the Division Bench ordered a stay on the injunction order by stating that “prima facie there is no similarity visually or phonetically between the original Plaintiff and the Defendant.”

The matter is now evenly poised, and we await to see if the Division Bench would have a different take on its opinion after hearing the arguments.

Reckitt Benckiser (India) Pvt. Ltd v. Mohit Petrochemicals Pvt. Ltd. CS(COMM)No.141/2020 & I.A.Nos.4034-37/2020 | 28-05-2020

In an infringement suit filed by Reckitt Benckiser, the Delhi High Court while imposing Rupees One Lakh on Mohit Pharmaceuticals, permanently restrained them from selling hand sanitizers under the brand name “Devtol” which was considered deceptively similar to the Plaintiff’s well-known trademark “Dettol”.

M/s ITC Limited v. Nestle India Limited 2020 SCC OnLine Mad 1158 | 10-06-2020

ITC had launched its Sunfeast Yippie Noodles in two varieties – one of which was “Magic Masala”. Defendant i.e., Nestle had adopted the name “Magical Masala” for one of their instant noodle product. Since Plaintiff had not registered the expression “Magic Masala” as a trademark, it filed a passing-off suit against Defendant. Defendant affirmed that they were using the term “Magical Masala” as a flavour descriptor. The Defendants further contended that “Magic” and “Masala” were the two most common terms that were used in the culinary industry and therefore could not be monopolized.

The High Court of Madras held that the expressions “Magic” and “Masala” were common terms that were used on a day-to-day basis in the Indian food industry and Indian culinary, therefore the same could not be monopolized by the Plaintiff or the Defendant. The court further opined that even Plaintiff had used the term “Magic Masala” as a flavour descriptor rather than a trademark or a sub-brand. Therefore, the court concluded that ITC had used the term “Magic Masala” in a laudatory manner and the same could not be monopolized.  

Hindustan Unilever v. Endurance Domain and Ors. 2020 SCC Online Bom 809 | 12-06-2020

In this case, Plaintiff approached the Bombay High Court seeking to suspend domain names with Plaintiff’s HUL trademarks which were registered under the authority of Defendant, a domain name registrant. Even though the Court was quick to grant relief to the defendant, it opined that Domain name registrants were neither equipped nor authorized to indefinitely suspend domain names once registered, since there was no human element involved to oversee the legitimacy of domain names.

The Court ruled that deciding what should or should not be suspended (or blocked) is a serious judicial function that could be arrived at only by assessing and balancing rival merits. Moreover, the Court observed that anyone can use a VPN to bypass a proxy server or firewall and have access to such blocked websites by masking the originating country IP of the user, hence, such ‘access blocking’ only offers a hollow and faux sense of safety to the Registrant. Besides, holding the Registrar liable if he is unable to effectively block access would expose the Registrar to the constant threat of contempt proceedings.

International Society for Krishna Consciousness (ISKON) v. Iskon Apparel Pvt. Ltd and Ors. 2020 SCC Online Bom 729 | 26-06-2020

In a trademark infringement and passing off suit instituted against the Defendant’s use of ISKON APPAREL, the Court while restricting Defendant from using the same ruled that ISKON is a well-known mark. This was a follow-up to Plaintiff’s pleading that the trademark “ISKON” be declared a well-known trademark. Plaintiff submitted that it was the first to create the name in the year 1996 in New York and over time it has created a global presence which is inclusive of India and the brand was not restricted to only one particular good or service but was into the diverse range of goods and services. The court after scrutinizing the evidence submitted by Plaintiff ruled that the brand name “ISKON” fell under the ambit of a well-known mark under the Trademark Acts of 1999.

Louis Vuitton Malletier vs Futuretimes Technology India Pvt Ltd CS(COMM) 222/2020 | 03-07-2020

Louis Vuitton had filed a civil suit against the Defendants, an e-commerce platform named Club Factory to restrain the sale of any counterfeit goods comprising their trademark. The Plaintiff prayed that the Defendants be restrained from selling any product with Plaintiff’s trademark, including “LOUIS VUITTON”, “LV Logo”, Toile monogram pattern, Damier pattern and/or LV flower pattern, or any other similar pattern that would constitute an infringement of the Plaintiff’s registered marks. The Delhi High Court, acting on it, issued summon notice to the Defendants. We wait to see if this case takes the same route as the case of Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019, to base the outcome on the evidence of counterfeited products or if it holds Club Factory liable in case the Defendant fails to demonstrate the minimum standard of due diligence as required from an intermediary. 

Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. 2020 SCC OnLine Mad 1503 | 17-07-2020

Defendant, Patanjali, was restrained from using the word “Coronil” to market its product i.e., immunity booster tablets which Defendant claimed to have passed the test of clinical trials to cure coronavirus. The Court held that since Plaintiff had acquired registration of the trademark ‘CORONIL- 92 B’ in 1993 and had been using the same in relation to Acid inhibitor for industrial cleaning, Defendant’s action amounted to infringement under Section 29(4) of Trademarks Act, 1999. The court also opined that Patanjali’s use of the word ‘Coronil’ could deceive the consumers with respect to the likelihood of curing coronavirus through the tablet. Hence, considering the reputation of Plaintiff’s registered trademark and the larger public interest, the Court restrained Plaintiff from marketing its product under the name “Coronil”.  

Plex, Inc v. Zee Entertainment Enterprises Limited 2020 SCC OnLine Bom 989 | 01-10-2020

The Bombay High Court refused to grant an interim injunction as sought by Plaintiff (Plex) against ZEEPLEX, a pay-per-view service launched by Zee. The Court reasoned that Plaintiff’s case of passing off failed the trinity test since it was unable to establish any reputation, the similarity in services, and anticipated injury due to the adoption and use of ZEEPLEX, while Defendant had a long-standing reputation in India.    

Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd.  CS (COMM) 217/2020 | 12/10/2020

In an infringement suit by the logistics company “Delhivery” against the user of the mark “Deliver-E” for identical services, Delhi High Court held that Delhivery was a generic name describing the kind of service it provided i.e., delivery, and hence, it did not have the characteristics of an enforceable trademark.

Anil Rathi v. Shri Sharma Steeltech CS(COMM) 654/2019 | 23-10-2020

The Delhi High Court ruled that the use of the personal name, surname, or family name under Section 35 of Trademarks Act, 1999 was limited to personal use only and such rights did not extend to granting licenses to third parties for commercial use. In the instant case, Plaintiff had approached the Delhi High Court seeking an injunction against the use of the surname “RATHI” as a trademark by Defendant. The Court observed that there was a family arrangement in place which regulated the use of the family mark, and the act of Defendant of licensing the mark to third parties was in clear violation of the said arrangement, making Defendant liable for trademark infringement.

The PS5 Case Trademark Squatting Case: TM Opposition by Sony Interactive Entertainment Inc [Opposition No. 1040632] against TM Application PS5 [Application No. 4332863] filed in Class 28 by Hitesh Aswani

Sony’s launch of its latest edition of gaming console Play Station 5 of PS5 in India was halted when it discovered that an infamous trademark squatter named Hitesh Aswani had surreptitiously filed a trademark application for “PS5” on October 29, 2020, for the identical specification of goods that were covered under Sony’s PS4 trademark registration bearing application no. 2481440. Sony, understandably, filed an opposition against the said trademark, and the Applicant withdrew his application.

Sony filed its earliest trademark application for the mark “PS5” in Jamaica before Hitesh Aswani on October 03, 2019. Sony used the Jamaican application as the basic application to file international registration through the Madrid Protocol, claiming priority of October 03, 2019.

This was a textbook case of trademark squatting. Sony had priority over the squatter, and it is a settled position of law that priority trumps everything else as per law in India. Further, the mala fide intention of the squatter was evident from the almost verbatim replication of the specification of goods covered under Sony’s PS4 trademark registration.

This case reached its logical conclusion when Hitesh Aswani withdrew his application as well as the opposition which paved the way for Sony to register its mark in India and proceed to launch the product in India.

Sassoon Fab International Pvt Ltd. v. Sanjay Garg & Ors. [IPAB] ORA/171/2020/TM/DEL | 04-12-2020

In one of the most noteworthy cases that came up before the Intellectual Property Appellate Board (IPAB), the registration of the mark ‘N95’ bearing App No. 4487559 registered in Class 10 in favour of Mr. Sanjay Garg was stayed. IPAB observed that the N95 was prima facie a generic term that was used to provide the quality of the masks hence it was hit by Section 9 of the Act. Since Plaintiff had filed a rectification petition against the registration of the said mark before filing the instant petition, IPAB deemed it necessary to stay the operation of the Registration until the Rectification Application was finally decided and disposed of.     

Gujarat Cooperative Milk Marketing Federation Ltd. & Anr vs. Amul Franchise.in & Ors CS(Comm) 350/2020

This case concerned fraudulent registration of multiple websites with the term “AMUL” as prefix/suffix. In this case, the Delhi High Court directed the Registrar of Domains to suspend/block domain names containing the term “Amul”. The Court also restrained the Registrar from the further offering for sale of such domain names so ordered to be blocked.

The Delhi High Court rejected the Registrar’s contention that due to lack of adequate technology it cannot ensure that these websites containing ‘AMUL’ therein would not be made available for sale and suggested that the Registrar could utilize the same filter it employs to ensure that websites under obscene and/or words denoting illegality are not available for sale. This decision is in stark contrast with an earlier single judge bench order of the Bombay High Court dated June 12, 2020 – Hindustan Unilever Limited v. Endurance Domains Technology LLP, 2020 SCC OnLine Bom 809wherein it held that Domain name registrants are neither equipped nor authorized to indefinitely suspend domain names once registered, since there is no human element involved to oversee the legitimacy of domain names.

CONCLUSION

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. Also, the IPAB’s order to put a stay on the registration of “N95” for medical equipment and apparatus exhibited the dismal examination standards at the Trademarks Registry since the term ‘N95’ is generic to medical products and no amount of use can justify the registration. We witnessed a handful of contrasting rulings in the year 2020 and a couple of disputes are lined up to be adjudicated in the year 2021. These are a few topics that are revisited time and again to not only protect the proprietors of the registered trademarks but also make sure that no defendant is being harassed unnecessarily by registered proprietors.  

 

Image Credits: Photo by Riccardo Annandale on Unsplash

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. 

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Why filing of Provisional Patent Application keeps you ahead in the Patenting race?

With an additional focus to build an Innovation based entrepreneurial eco system, innovation is happening at the drop of a hat. However, the floodgate of invention around the race does not seem to be limited to an ingenious mind but also requires a go-getter attitude. As we know, Patent protection works on a “first to file” basis and not on “first to invent” which means it is granted to the one who files the Patent application first, subject to fulfilling other patentability criteria.

A Patent application has to be filed along with certain Specifications (details/working of the invention). These specifications are of two types i.e. Provisional and Complete. Therefore, the application can be filed along with the Provisional or Complete Specification. If filed with Provisional, the Complete specification needs to be filed within 12 months.

 

Provisional Specification is very basic in nature and does not require details about the invention, unlike Complete Specification. Perhaps the difference between the two specifications is clear from the preambles of the specifications itself i.e.:

Preamble of the Provisional Application: “The following specification describes the invention”.

Preamble of the Complete Specification: “The following specification describes the invention and the manner in which it is to be performed.”

 

Even though, the Provisional Specification does not require claims, detailed descriptions, drawings etc., however, due care needs to be taken to ensure that the specification is broad enough so the objectives of the invention is covered as Complete Specification cannot be broader than what was disclosed in the Provisional.

 

Many times, during the office action as well as during the infringement or revocation attack, it is the provisional specification, which is first scrutinized to check if the invention was covered clearly. Therefore, even though it is provisional, taking professional guidance while drafting would be advisable to avoid possible mishaps in the future.

 

In order to stay ahead in the competition of technological advancement, R&D companies and other IP sophisticated companies around the globe, work on new inventions and file applications with the bare minimum information to get a priority date for their inventions. This is done before deep diving into specifics such as looking at the prior art or doing the feasibility test for the product/process etc.

 

Ideally, if an inventor comes up with an invention, she should not wait for the invention to be fully developed or for the feasibility test to be done. Needless to mention, millions of researchers around the globe are working on similar subjects and one never knows who might be coming up with similar invention in some part of the world and perhaps may be moving faster to file the patent application to claim priority.

 

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

 

Ideally these 12 months period are given so one can carry out the patentability/ prior art search, which help the inventors tremendously in working around similar inventions.  Further, the Companies/inventors could also use the (provisional) Patent Application number to discuss the invention with potential investors, partners, licensee, etc. with due caution. 

 

In a situation where the inventor is unable to file the Complete Specification within the due date due to unavoidable circumstances, there is an option to file a request to post-date the application for a maximum period of six months subject to non-disclosure of the invention in the public domain.  

 

Considering these obvious advantages, filing a Patent Application along with a Provisional Specification could and would prevent a genuine effort from being a day late and a dollar short.

 

 

 

Image Credits: Photo by Med Badr Chemmaoui on Unsplash

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

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Delhi High Court Suspends CGPDTM Notice Fixing the IP Applications Cut-off Date

The Hon’ble Delhi High Court has suspended the operation of a public notice issued by the Controller General of Patents, Designs and Trademarks (CGPDTM) that had fixed the cut-off date (18.05.2020) for completion of various acts/proceedings, filings, payment of fees and other deadlines that had fallen due during this lockdown. The public notice was found to be contrary to the Supreme Court order which extended the period of limitation applicable to all proceedings before all Courts and Tribunals with effect from 15th March 2020 till further orders.

 

Keeping in mind the extraordinary situation prevailing in the Country attributable to the lockdown announced by the Government, causing difficulties to litigants/advocates in filing their petitions/suits/applications/appeals/or other proceedings, etc. within the limitation period, the Hon’ble Supreme Court had Suo Motu registered a case numbered as Suo Motu Writ Petition (Civil) Nos. 3/2020 titled Re: Cognisance for Extension of Limitation.  

Invoking its plenary power conferred by the Constitution under Articles 141 & 142, the Bench comprising of Hon’ble Chief Justice S.A. Bobde, Hon’ble Justice L. Nageswara Rao & Hon’ble Justice Surya Kant passed the Order dated 23rd March 2020 extending the period of limitation applicable to all proceedings before all Courts and Tribunals governed by general law or special laws whether condonable or not with effect from 15th March 2020 till further orders.

The CGPDTM had issued a Public Notice dated 4th May 2020 informing applicants/registrants and/or its agents/advocates that the due-dates with respect to timelines/periods prescribed under the IP Acts and Rules, falling due during the lockdown, to complete various acts/proceedings, filing of any reply/document, payment of fees, etc. in the matter of any Intellectual Property (IP) applications, shall be 18th May 2020, since the lockdown period from 25th March 2020 to 3rd May 2020 was further extended by two weeks, i.e., till 17th May 2020.

Aggrieved by this public notice, a writ petition (W.P.(C) No.3059/2020) was filed before the Delhi High Court on 06.05.2020 by the Intellectual Property Attorneys Association (IPAA) challenging the said notice. The petitioners submitted that the public notice issued by the CGPDTM is a blatant disregard to the order of Hon’ble Supreme Court dated 23rd March 2020, and specifically conferred the following arguments:  

  1. The order of extension of limitation is applicable to all proceedings irrespective of whether it was governed by general laws or special laws and would be in force with effect from 15th March 2020, as opposed to 25th March 2020 as mentioned in the public notice.
  1. The said extension of limitation shall be in effect until further orders. Hence, the cut-off due-date of 18th May 2020, fixed by the CGPDTM in the public notice, for the completion of various acts/proceedings, filings, payment of fees, etc. in the matters of any IP applications, is also contrary to the Supreme Court order. 
  1. The said due date of 18th May 2020 would also pose difficulties to litigants/advocates to obtain necessary documents/files and file them as per the prescribed procedures, since the lockdown would only be lifted on 17th May 2020.

The Hon’ble Delhi High Court, taking into consideration the Supreme Court Order dated 23.03.2020 and the arguments of the petitioners, passed an Order dated 11th May 2020, holding that no Court, Tribunal, or Authority can act contrary to the order of the Supreme Court. Further, as per Article 144 of the Constitution, all authorities whether civil or judicial, located in the territory of India are required to act in aid of the orders passed by the Supreme Court. The Court also agreed that the period of limitation would stand effective from 15th March 2020 and not from 25th March 2020 as provided in the public notice. 

The Hon’ble Delhi High Court hence rightly held that order of Hon’ble Supreme Court was binding on the CGPDTM and disposed of the petition by suspending the operation of the public notice dated 4th May 2020.

The Hon’ble Delhi High Court has suspended the operation of a public notice issued by the Controller General of Patents, Designs and Trademarks (CGPDTM) that had fixed the cut-off date (18.05.2020) for completion of various acts/proceedings, filings, payment of fees and other deadlines that had fallen due during this lockdown. The public notice was found to be contrary to the Supreme Court order which extended the period of limitation applicable to all proceedings before all Courts and Tribunals with effect from 15th March 2020 till further orders.

Image Credits: Photo by samer daboul from Pexels

The Hon’ble Delhi High Court, taking into consideration the Supreme Court Order dated 23.03.2020 and the arguments of the petitioners, passed an Order dated 11th May 2020, holding that no Court, Tribunal or Authority can act contrary to the order of the Supreme Court. Further, as per Article 144 of the Constitution, all authorities whether civil or judicial, located in the territory of India are required to act in aid of the orders passed by the Supreme Court. The Court also agreed that the period of limitation would stand effective from 15th March 2020 and not from 25th March 2020 as provided in the public notice. 

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The Orphan Treatment of Orphan Drugs

“Orphan drugs” are pharmaceutical products used for the diagnosis, prevention or treatment of rare diseases. The definition of rare diseases varies from country to country. e.g. in the United States, a rare disease is defined as a condition that affects fewer than 200,000 people whereas in Europe it is less than one person per 2,000. Nevertheless, it is generally accepted that a disease having fewer than 100 patients per 100,000 population is a rare disease. It is assessed that internationally, around 6000 to 8000 rare diseases are in existence with new ones being discovered quite regularly. Moreover, it is estimated that there are approx. 4000-5000 rare diseases for which there are no treatments available.

In India, the rare disease and disorder population is between 72 to 96 million and up to 450 rare diseases have been recognized[i]. Because rare diseases affect a very small population of individuals and the profit potential is poor, pharmaceutical companies often do not take much interest in developing molecules for the treatment of these diseases. The shelving of these molecules and ignorance of the small patient pool gave rise to the concept of ‘pharmaceutical orphans.’

Orphan drugs and policies in India

In India, almost all orphan drugs are imported. The primary reason being lack of infrastructure, high cost and time, no cost of return, and no clear policy on orphan drugs and rare diseases. Although the disquiet around the development of orphan drugs resulted in an Orphan Drugs Act as early as 1983 in the United States, India has lagged behind for decades with the first ‘National Policy on Treatment of Rare Diseases’ coming out as late as 2017. Further, there are no epidemiological data, no figures on the burden of rare diseases and morbidity and mortality associated with them. In fact, until last year, India did not even have a definition of ‘orphan drugs.’ The new Drugs & Clinical Trial Rules 2019 finally defined it as “a drug intended to treat a condition which affects not more than five lakh persons in India”.

Drugs and Clinical Trials Rules, 2019:

In March 2019 Central Drugs Standard Control Organization (CDSCO) released New Drugs and Clinical Trials Rules, 2019. As per these new guidelines, local clinical trials (data) may not be required for orphan drugs permitted to be imported for sale or distribution. Further, the Expeditious Review Process could be sought for approval of a new drug after clinical development (applicable for Orphan Drugs). Furthermore, no fee shall be chargeable in respect of an application for conduct of clinical trial for orphan drugs.

New Drug Exemption Rule, 2019:

Further encouragement for orphan drug development could be seen in the New Drug Exemption rule released in January 2019. Under this rule, all new drugs patented in India were to be exempted from price control for five years. The five-year window starts from the date when the manufacturer starts commercial marketing in India. The Government has also exempted such drugs from price control that are used for the treatment of a disease that qualifies as Orphan Disease in the opinion of the Ministry of Health and Family Welfare (“Orphan Drug Exemption”). However, these rules are not devoid of shortcomings which may bring about issues during implementation. The requirement of the use of the exemption for five years from the “date of commencement of commercial marketing by the manufacturer in the country” is ambiguous as there is no legal definition of what amounts to ‘commercial or business marketing’ in India. The second issue that needs clarification is the exemption from price control available to ‘manufacturers’ of the patented new drug rather than the ‘drug’ itself. As a result, multiple manufacturers, importers, marketers of the same drug would seek to benefit from the exemption which could pose a challenge when the date of commercial marketing of different manufacturers would vary from each other. The third most important issue with absolute market exclusivity is that cost of orphan drugs per treatment episode could be extremely high.

Rare diseases as a public health issue

When a person contracts a rare disease, it not only puts an emotional strain on him/her, it also puts a heavy financial strain on his family. In addition to this, the unavailability of proper treatment remains a big challenge. Internationally, there are very few pharmaceutical companies, which are actively working on orphan drugs or rare diseases. And in India, the problem is more worrisome because there are hardly any pharmaceutical companies engaged in the development of these drugs. In addition, lack of awareness among the medical fraternity, lack of epidemiological data, lack of dedicated healthcare policies, schemes, and diagnostic facilities are some of the major hurdles that Indian pharmaceutical companies have to deal with.

The new drug exemption policy along with the CDSCO released new Drugs and Clinical Trials Rules, 2019 could provide the necessary impetus to the research and development of orphan drugs in India. However, there are still major strides that could be taken in line with other international governments which provide incentives ranging from tax credits to priority review vouchers in addition to fast track approvals by regulatory agencies, market exclusivity, fee reductions for regulatory approvals. Nevertheless, incentives should be balanced so as not to encourage pharmaceutical companies to exploit them to manufacture drugs for sub-categories of existing diseases to maximize profits by making existing drugs outrageously costly and inaccessible.

Hence, a more robust policy is imperative to devise a multipronged and multisectoral approach to build India’s capacity to tackle rare diseases comprehensively. Particularly, in areas of – obtaining requisite funding, creation of an extensive database, for cost estimation of the treatment; research and development for the treatment and diagnostic modalities, including through international/regional collaborations; training of health care providers; awareness generation; creating a conducive environment for drug development and measures for ensuring affordability of treatment, etc. With the necessary government action, hopefully, the orphan treatment of orphan drugs will minimize to give some respite to the patients.

A more robust policy is imperative to devise a multipronged and multisectoral approach to build India’s capacity to tackle rare diseases comprehensively. 

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Developments in the Indian Patent Law in 2019

As per the latest WIPO report, India has emerged as one of the top 10 countries in the ranking of filings of intellectual property applications while showing an increase of 7.5% in the number of patent applications.

The year 2019 saw some drastic widening of the scope and horizons of the patent laws. Various rulings and legislations were laid down making the sector more efficient in its functioning. The Patent Law has been liberalised to a great extent thereby providing a conducive atmosphere for start-ups and other small entities to hit the ground running. Also, the offer of 450 patents for free access to industries by DRDO for commercial exploitation was a shot in the arm.

The legislative developments together with the policies and significant case studies instrumental in widening the ambit of the patent laws are listed hereunder:

LEGISLATIVE AND POLICY DEVELOPMENTS

 

  • Publication of A New List of Scientific Advisors by the Patent Office[i]

 As per the Patent Rules, 2003, a list of Scientific Advisors must be released and updated annually. The list was last updated in 2010 and after nearly a decade, the list was issued in 2019 with 37 new enrolments. The list includes 2 Patent Agents. The duty of these advisors broadly includes guiding the Court and providing reports on questions involving technical substance.

 

  • Bilateral Patent Prosecution Programme[ii]

The Government approved the Bilateral Patent Prosecution Highway Programme between India and Japan. This programme enables accelerated examination of applications as it cuts down on duplication of work. Once a patent is granted in one country, the process of approval gets easier when filed in another country as it is assumed that the application must have gone through the rigorous process of exhaustive searches and technicalities in the previous country thereby enabling speedy disposal of applications. The process becomes much simpler, quicker and economical.

Under this pilot programme, Indian Patent Office can receive patent applications in certain specified technical fields only, like electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy, however, Japan Patent Office can receive applications in all fields of technology. This programme is initially restricted to a period of 3 years. If there are no major implemental gaps, this will be highly beneficial to Indian inventors including start-ups and MSMEs.

 Accelerated / expedited examination process

The amended rules include additional categories of applicants who can avail of expedited examination of their patent application. Such categories being small entities/MSME’s, Women applicants, Departments of Government, Institutions owned or controlled by the Government, Institutions wholly or substantially financed by the Government, Government companies; and Applicants of those countries whose patent offices are in an agreement / arrangement with the Indian Patent Office.

Fees and documents for start-ups and small entities

The second proviso to sub-rule (1) of Rule 7 has been substituted to clarify that start- ups and small entities must submit Form 28 along with the documents requiring a discount on the official fee. However, this amendment was merely expository in nature as, in practice, the Patent Office had already mandated the filing of the said form.

Medium of transmission of documents by patent agents

Rule 6(1A) was substituted and now provides that patent agents will have to file duly authenticated documents only via electronic medium. However, any document that is specifically asked to be reported/submitted in original by the Patent Office should be filed within 15 days of such request.

Transmittal and certified copy fee no longer applicable

In order to encourage electronic filing of PCT application, the Rules have been amended by deleting transmittal fees which the applicants were required to pay to the Indian Patent Office earlier. However, if the applications are filed physically then the same transmission fee as prescribed under the principal Patent Rule shall be applicable.

SIGNIFICANT CASE LAWS

  • Nuziveedu Seeds Ltd. And Ors. Vs Monsanto Technology LLC and Ors[iv]

The Hon’ble Supreme Court held that cases involving technical and scientific questions about patentability and exclusion of a patent were to be duly considered and examined at the stage of the final hearing. Expert advice and extensive inputs on technical aspects of a patent were purely unnecessary for granting injunctive relief. In the instant case highly complex question regarding the technical aspects of a patent was involved along with the compliance of a sub-licensing agreement between the plaintiff and the defendant. The patentee had terminated the agreement abruptly and filed for injunction restraining the defendants from using the patent as per the agreement. The single judge bench ordered compliance with the agreement and did not allow injunction. On appeal, the Division bench investigated the technicalities and ruled in favour of the plaintiffs. However, when appealed to the Supreme Court, it held that the judgement by the learned Single judge bench was in order and did not merit any interference.

  • Bayer Corporation v. Union Of India & Ors[v]

The Delhi High Court held that export of patented invention is also included under section 107(A) of the Patents Act, 1970 i.e., Bolar exception (rights granted to a patentee-making, using, constructing, selling and importing of their patented invention). However, the inclusion of ‘export’ needs to be duly regulated through the reasonably related test which shall differ from case to case to ensure that such exception is not misused. The ‘export’ should be reasonably related to research, development and submission of the information for obtaining regulatory approval from the authorities. In the present case, the issue was whether export of patented products for the purpose of research and development amounted to infringement and whether the export fell within the Bolar exception. The concept of patent linkage was extensively discussed. The case was decided in favour of the Respondents and exporting of the patented product for R&D was interpreted to be well within the Bolar exception under Sec 107(A).

  • Natco Pharma Limited v. Bristol Myers Squibb Holdings Ireland Unlimited Company and Others[vi]

The Hon’ble Delhi High Court reiterated the importance of considering the three-element test for the grant of an interim injunction (Prima facie case, the balance of convenience, irreparable injury). Such reiteration was considered essential to regulate the grant of injunction orders, especially in cases of pharmaceutical patent infringement. In the present case the respondents filed a suit seeking an interim injunction restraining the appellants from commercialising and initiating the sale of the appellant’s patented product. The Single Judge bench ordered interim injunction but on appeal, the Hon’ble High Court declared that interim injunction could not be granted merely on peripheral consideration of facts without applying the three-element test of interim injunction.

  • Ferid Allaniv Union of India And Ors[vii]

In this case the Petitioner had filed a patent application for a computer-related invention and the same was rejected. On appeal to the IPAB, the application was again rejected on the grounds of lack of novelty and lack of technological advancement or technical effect. The petitioner further appealed to the High Court of Delhi where the scope of Section 3(k) of The Indian Patent Act, 1970 and the term ‘technical effect’ was examined. The Court held that there existed no absolute bar on the patentability of computer-related inventions. However, it was subject to technical effect and advancement derived via such invention. The court directed for a re-examination of the patent application in accordance with the law.

  • Communication Components Antenna Inc. v. Ace Technologies Corp and Ors.[viii]

This landmark judgement emphasised on the necessity of a wide claim. It was further clarified that claims granted in India would take precedence over claims granted in a foreign jurisdiction while determining an infringement suit. In the present case the plaintiff sought permanent injunction claiming infringement of one of its patents that he had acquired in India. The product was granted a corresponding patent in the US. When a conflict over infringement of the Indian claim came up, the High court strictly stated that an infringement in such claim would be strictly confined and viewed in accordance with the claims granted in India and not the foreign claims although they might persist.

  • Pharmacyclics LLC v. Union of India & Ors.[ix]

In this landmark case, the Delhi High Court issued wide guidelines on post grant opposition. In this instance, the court allowed evidence to be produced considering the dates for the final hearing were fixed and evidence was filed prior to the hearing which was eventually adjourned at the request of the party. Further, there existed a reasonable time for the parties to respond to the filings previously made. The Hon’ble court while disposing of the matter laid down certain guidelines to be duly complied with in cases dealing with post grant oppositions. These included the filing of initial pleadings by the parties by relying on various documents and expert testimonies. Moreover, Rule 59 was to be strictly adhered to. Further evidence was not permissible once the material was transmitted to the opposition board. In addition, further evidence would only be entertained prior to the issuance of hearing under Rule 60. Moreover, publicly available documents can be provided 5 days prior to the hearing by highlighting the relevant portions. Also, the authenticity of the document is important.

 

 

References 

[i] http://ipindia.nic.in/writereaddata/Portal/Images/pdf/List_of_Scientific_Advisers_as_on_6Sept2019.pdf

[ii] https://dipp.gov.in/sites/default/files/PressBrief_Japan_21November2019.pdf

[iii] http://www.ipindia.nic.in/writereaddata/Portal/News/569_1_The_Patent_Amendment_Rules_2019_.pdf

[iv] CIVIL APPEAL NOS.4616¬4617 OF 2018

[v] LPA No.359/2017, CM Nos.17922/2017, 20160/2017, 33383-84/2017, 47167/2017 & 660/2018

[vi] FAO(OS) (COMM) 160/2019 and C.M.No.31063/2019

[vii] W.P.(C) 7/2014 & CM APPL. 40736/2019

[viii] CS (Comm) No. 1222/2018

[ix] CM APPL.54097/2019

 

 

Image Credits: Paul Skorupskas on Unsplash

The year 2019 saw some drastic widening of the scope and horizons of the patent laws. Various rulings and legislations were laid down making the sector more efficient in its functioning. The Patent Law has been liberalised to a great extent thereby providing a conducive atmosphere for start-ups and other small entities to hit the ground running.

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Development in Indian Copyrights Law in 2019

With the digital movement coming of age, the scope of copyright protection has expanded in the past year to a notch higher and effective regulations have been launched to deal with the expansion.

Some of the essential legislation and rulings that shaped the Indian Copyrights law in 2019 are stated hereunder:

LEGISLATIVE DEVELOPMENTS

 

  1. Copyright (Amendment) Rules 2019

The Department for Promotion of Industry and Internal Trade (DPIIT) vide its press statement dated May 30, 2019 proposed to introduce the Copyright Amendment Rules, 2019[1].  The draft rules aimed at ensuring smooth and flawless compliance of the Copyright Act in the light of technological advancement in the digital era and to bring them in parity with other relevant legislations. They sought to broaden the scope of issuance of statutory licences under section 31-D of the Act for broadcasting work subject to copyright protection by replacing ‘radio and television broadcast’ with ‘each mode of broadcasting’ under rules 29, 30, 31. This amendment came at the backdrop of  Tips Industries Ltd. vs. Wynk Music Ltd. & Anr.[2], where the need to include streaming under the preview of broadcasting was realised under the statutory licensing scheme. The draft also provided for stricter code of conduct for copyright societies and more. 

  1. Cinematograph (Amendment) Act, 2019

The Ministry of Information and Broadcasting on Feb 12, 2019 introduced Cinematograph (Amendment) Bill 2019[3] which aims to curb film piracy and imposes stricter penalties and punishments in this accord. The scope of unauthorised use of audio-visual recordings has been widened to include unauthorised camcording and transmission thereof. Strict deterrence can be traced in the proposed bill as intense penal provisions are attracted in the case of making and transmitting copies of a cinematograph film or audio-visual recording without acquiring approval from the owner of such work.

Notable Case Laws

Some of the noteworthy copyright cases for the year 2019 would be:

1.      Roger Mathew v. South Indian Bank Limited[4]

The Supreme Court of India struck down the Tribunal, Appellate Tribunal, and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 framed under the Finance Act, 2017 on the ground that it gave excessive and discretionary powers to the government as to the appointment of service persons to the tribunal and it also affected the judicial independence of the Tribunals. The dilution and encroachment on the judicial domain through the appointment of technical and other members, devoid of either adjudicatory experience or legal knowledge, to the IPAB after the merger of Copyright Board and IPAB was a matter of great concern. However, since this development could not be implemented retrospectively, the appointment already made remained unaffected. 

2.      UTV Software Communication Ltd. & Ors. v. 1337X.TO & Ors[5]

The Delhi High Court introduced a dynamic injunction into Indian jurisdiction to curb online piracy. Through this, Plaintiff could get the order executed against mirror/redirect/alphanumeric websites hosting the same infringing content as those already blocked.

  1. Sajeev Pillai v. Venu Kunnapalli & Anr[6]

It was the case of Plaintiff that the storyline of the defendant’s movie titled Mamankam was the result of the extensive research work done by Plaintiff. Plaintiff had assigned his work which included the story, script, screenplay, and dialogue to the defendant. The Kerala High Court held that the author has a legitimate right to claim authorship even after assignment and the later act does not exhaust the moral right of the author within the meaning of section 57(1) of the Copyright Act, 1957. However, since the movie is the distorted version of the plaintiff’s work due to the mutilation and modification of the original script, the court took a balanced view and allowed the movie to be released without crediting anyone as the author thereof till the final disposal of the suit. 

  1. Tips Industries Ltd. vs. Wynk Music Ltd. & Anr[7]

The Hon’ble Bombay High court interpreted section 31D of the Copyright Act, 1957 as an exception to the copyright laws. It is further stated that statutory licensing extends to only radio and television broadcasting and is exclusive of internet broadcasting. Therefore, online streaming services don’t fall within the ambit of statutory licensing. The flaw could, however, be fixed via the new “Copyright Amendment Rules 2019” stated the Hon’ble court. In the instant case, the defendant’s feature to allow its consumers to download music and store the same for unlimited usage amounted to sale thereby not constituting broadcast stated in 31D of the Copyright act. Therefore, the defendant was not required to avail of a statutory license.

  1. Yash Raj Films v. Sri Sai Ganesh Productions[8]

The plaintiff (Yash Raj) instituted a copyright infringement suit against the defendant for the reproduction of the copyrighted work subsisting in the plaintiff’s movie titled “Band Baja Baraat” through a Telugu remake titled “Jabardasth” without taking prior permission of the plaintiff.    

The Hon’ble High court was of the view that “to make a copy of the film‟ did not mean just to make a physical copy of the film by a process of duplication, but it also referred to another film which substantially, fundamentally, essentially, and materially resembled/reproduced the original film. The defendants had blatantly copied the fundamental, essential and distinctive features as well as forms and expression of the plaintiff’s film on purpose and consequently, infringed the plaintiff’s copyright.

  1. Raj Rewal v. Union of India & Ors[9]

The Hon’ble Delhi High court in the instant case dealt with a significant question of copyright law i.e., whether an author’s (architect’s) rights foreshadow the rights of the property owner. It was answered in the negative, i.e. the property owner’s right as per constitutional right under Article 300A shall be held more vital and that he/she can choose to destruct or modify the building on his/her property. Therefore, the Owner’s right shall precede the Author’s right under Sec 57 of the Copyright Act.

  1. Thiagarajan Kumararaja v. M/s Capital Film Works and Anr[10]

The Hon’ble Madras High Court for the first time deliberated a ruling on rights of the producer qua the author of the script with regard to the dubbing of the film and held that the producer of the film has the right to dub the film in any other language provided there isn’t any agreement to the contrary. Under Section 2(d)(v) in relation to a cinematograph film, the producer is the author and since they had taken the initiative and the responsibility for making the work i.e., cinematograph film, they had the right to dub the same. Accordingly, the infringement suit for dubbing the film in another language was dismissed and decided in favour of the producer.

 

CONCLUSION

From defending the right of the producer to dub in other languages, to continuance of the moral right of the author even after the assignment of work, it can be said that the year 2019 has been a busy year for the music and film industry. The introduction of the dynamic injunction against rogue websites was a much-needed change for the empowerment of lawful owners of copyrighted work to battle piracy. Further, the online copyright application system has progressively become filer-friendly in the past year[11]. In addition, increased transparency and stakeholder participation has created a protective environment for enhanced copyright preservation.

References 

[1] Available at http://copyright.gov.in/Documents/pdfgazette.pdf

[2] Commercial Suit IP (L) No. 114 of 2018

[3] https://prsindia.org/sites/default/files/bill_files/Cinematograph%20%28A%29%20Bill%2C%202019.pdf

[4]  Civil Appeal No. 8588 of 2019, SLP No. No.15804 of 2017

[5] CS(COMM) 724/2017

[6] FAO.No.191 OF 2019

[7] Commercial Suit IP (L) No. 114 of 2018

[8] CS (COMM) 1329/2016

[9] CS (Comm) No. 3 of 2018

[10] Original Side Appeal No. 22 of 2017

[11] http://www.ipindia.nic.in/writereaddata/Portal/IPOAnnualReport/1_110_1_Annual_Report_2017-18_English.pd


Image Credits: Noor Younis on Unsplash

From defending the right of the producer to dub in other languages, to continuance of the moral right of the author even after the assignment of work, it can be said that the year 2019 has been a busy year for the music and film industry. The introduction of the dynamic injunction against rogue websites was a much-needed change for the empowerment of lawful owners of copyrighted work to battle piracy.

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