SpicyIP Weekly Review (December 21 – 27)

Topical Highlight

Time to More Seriously Question the Spectre of Copyright in the Realm of Education

Swaraj reported that SciHub and LibGen were taken to court by Elsevier UK, Wiley India, Wiley Periodicals USA, and American Chemical Society for copyright infringement, seeking a dynamic injunction. He highlights several issues that are likely to gain attention regarding this dispute – the contrast between the heavy profit-making, increasingly online model of the publishers and Sci-Hub and LibGen’s complete non-profit, no charge, no ads websites; the poor timing of the suit in light of increased demand for access to scientific scholarship during COVID-19; and the pressing need for digital libraries in the ‘work/study from home’ setting. He then explains how despite the phenomenal access that these ‘shadow’ libraries provide, their benefits still remain more accessible to people from rich countries only. Whereas, authors of these academic works barely earn any money out of this as the same goes largely to the publishing houses. He touches upon solutions such as statutorily disallowing corporate assignment of copyright over scholarly works, investment in non-profit publishing houses focusing on accessibility, maintaining national library repositories, among others. He concludes that regardless of the verdict of this case, our academics, policy makers and civil society need to look into how copyright can be prevented from becoming a barrier to education by blocking access to scholarship.

Thematic Highlight

SEPs and Confidentiality Clubs: Protecting Fair Play from Excessive Secrecy

Nikhil discussed the Delhi High Court’s decision on constitution of a Confidentiality Club for sharing confidential documents in InterDigital v. Xiaomi. InterDigital had proposed that the club constituted to assess whether the licensing terms being offered by InterDigital were on FRAND basis have two tiers: an “outer tier” where material would be accessible to the advocates for both sides, experts appointed by them, as well as representatives of both parties, and an “inner tier” which would receive documents accessible to all of the above except the parties’ representatives. InterDigital argued that this model would preserve confidential commercial information and it has been accepted by courts all over the world in SEP infringement litigations. Further, as matters are highly technical anyway, the parties’ decisions would be in sync with those of the experts. The court rejected this on two grounds – fair play, which requires each party to be aware of the case of the other party that it is supposed to counter; and the nature of lawyer-client relationship which mandates that the lawyer act on the instructions of the client and not “substitute their judgment for that of the client.” Nikhil comments that this decision is well-reasoned and strikes a balance between the interests of the various stakeholders, while also keeping in mind transparency from a public interest perspective.

Other Posts

The Section 3(e) Soup: What Makes for Synergistic Effect?

I discussed the patent granted to a Pune-based home maker over her unique ragi walnut soup mix composition, highlighting problems with the Indian Patent Office’s assessment of synergistic effect under Section 3(e) of Patents Act. I explain that in order to avoid attracting Section 3(e), a claim must show comparative data to prove that the interaction between the components involved in the invention achieves a combined effect which is different from the sum total of the effects of the individual substances, which the soup patent does not. I then point out that the Patent Office has been liberal and inconsistent in its synergistic effect assessments by citing examples where such problems have altogether been missed during Examination and only brought out due to pre-grant or post-grant oppositions. Further, in some cases, applicants have successfully relied on novelty or inventive step as a proof of synergistic effect whereas synergistic effect is an independent, anti-evergreening provision. I conclude by underlining the importance of detailed scrutiny of synergy data by the Patent Office to prevent evergreening.

IPAB’s Order Staying ‘N95’ Trademark Registration Highlights Systemic Failures

Adarsh analysed the issues surrounding ‘N95’ trademark registration with reference to an IPAB order pronouncing ‘N95’ to be a generic word disqualified under Section 9 of the Trade Marks Act. He expresses surprise at how the Trademark Office appears to have rejected at least four other attempts to register ‘N95’ under Class 10, while this one application was accepted with no objections at all. He informs that in the US, the US government’s Department of Health and Human Services Agency filed an application for ‘N95’ as a ‘certification mark’, but the USPTO has ‘suspended’ processing of this application because there are six other private individuals’ applications carrying the ‘N95’ word with an earlier filing date, and granting of any of these would create likelihood of confusion. The government department has also moved an international application under the Madrid Protocol, including in India. Adarsh comments that the granting of this application in India may make consumers feel safer, but it is disappointing that one must be dependent on the ‘policing’ by a US department to ensure safety standards of masks/respirators in India. He criticises the fact that neither the BIS nor any law (saving an advisory from the National Pharmaceutical Pricing Authority for manufacturers to get BIS certification) in India regulates the use of ‘N95’ mark by setting any safety standards, concluding that such standards should be made mandatory in India.

Supreme Court Revisits Tribunal Culture (Yet Again): Upholds Validity of 2020 Rules with Conditions

Praharsh discussed the Supreme Court’s judgment in upholding the constitutional validity of the Tribunal Rules 2020 and its implication on the appointment of the IPAB Chairperson subsequent to the tenure of the incumbent Chairperson Retd. Justice Manmohan Singh. The Supreme Court, after considering a number of factors and previous judgments has provided a number of directions for tribunals in general which are applicable to IPAB as well. As per these directions, the proposed National Tribunal Commission can take care of the administrative and financial needs of the tribunals, and the re-constitution of Search-cum-Selection Committee can strike the right amount of balance between the number of members from judiciary and executive. Further by fixing a period of three months within which the government must make the appointment, and directing the Search-cum-Selection Committee to make just one suggestion instead of three, the order has made an attempt to expedite the appointment process. Lastly, the most significant take away from this decision in context of IPAB is the call for a mix of experts and judicial members in a tribunal.

Other Developments

Decisions from Indian Courts

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  IPAB in Red Bull AG v. Dr. Reddy’s Laboratories Limited & Ors., dismissed the Plaintiff’s request for cancellation of the Defendant’s trademark ‘YOUR WINGS TO LIFE’ on the ground that plaintiff could not prove itself to be a ‘person aggrieved’ under Section 47 of the Indian Trademarks Act [August 25, 2020].

• A Delhi District Court in Under Armour Inc. v. Avengers granted a mandatory injunction in favour of the Plaintiff restraining the Defendants from using the trademarks and copyright in ‘UNDER ARMOUR’, ‘UA’, ‘UA RECORD’, and its logos and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner [December 14, 2020].
• Bombay High Court in Savla Corporation v. Aristo Apparels passed an interim injunction against the Defendant restraining them from using the Plaintiff’s trademark ‘SERO’ or any derivatives containing the ‘SERO’ mark on men’s apparel [December 16, 2020].
• Bombay High Court in Midas Hygiene Industries Private Ltd v. Ram Dev Industries, granted a temporary injunction to the Plaintiffs restraining the Defendants and from passing-off their goods by adopting and/or using in any manner the impugned label with or without the words LAKSHMAN CHAKAR or any label or mark identical with or similar to the Plaintiffs’ trademark label and trademark LAXMANREKHAA as trademark or otherwise in relation to preparations for repelling and destroying flies, insects, mosquitoes, disinfectant preparations for destroying vermin, fungicides, herbicides or similar goods [December 17, 2020].
• Delhi High Court in Novartis Ag & Anr v. Eris Lifesciences Limited directed the Defendant to file an affidavit detailing the stock of the impugned product that is available with it, setting forth the source from which the stock was received, the quantity of the stock received, and the sales made by the defendant after the receipt of the stock [December 21, 2020].
• Delhi High Court in Merck Sharp And Dohme Corp & Anr v. Achemic Pharmaceuticals Limited, decreed in accordance with the settlement between the parties, wherein Defendant No. 1 undertook that it will not deal with SITAGLIPTIN in any manner, including launching a generic version of SITAGLIPTIN until the expiry of IN 209816 or abandonment, or invalidation [December 21, 2020].
• Delhi High Court in TIPS Industries v. Glance Digital Experience Pvt. Ltd refused to grant an ad-interim injunction against the Defendants injunction which had been sought by the Plaintiff alleging infringement of the Plaintiff’s exclusive rights and copyrights in their repertoire [December 21, 2020].
• Delhi High Court in Tommy Hilfiger Europe v. M/s Taqua Textiles & Ors, passed a decree in favour of the Plaintiff and against the Defendants in a suit regarding the infringement of the Plaintiff’s trademark ‘TOMMY HILFIGER’ [December 22, 2020].
• Delhi High Court in Freemans Measures Pvt Ltd vs Mankaran Bhandari & Ors granted a permanent injunction restraining the Defendants from infringing the Plaintiff’s trademarks ‘Hi-WIDE’, ‘Hi-16’, ‘Hi-19’, ‘Hi-25’, ‘Mi-19’ and ‘CONFLEX’ [December 22, 2020].
• Delhi High Court in Indian Singers Rights Association v. Dharma Productions Pvt. Ltd. noted that the term ‘performer’ includes a singer within its sweep and the performers’ right means any visual or acoustic presentation made live by one or more performers, listing the suit for hearing [December 22, 2020].
• A Delhi District Court in Lalit Babbar & Anr v. Remson Prime Technologies Pvt. Ltd. while determining jurisdiction, afforded the Plaintiff an opportunity to state the ‘specified value’ of the suit which concerned the legality of an aspect of Deed of Assignment assigning the trademark ‘REMSON PRIME’ [December 23, 2020].
• Delhi High Court in H Lundbeck A/S & Anr v. Hetero Drug Ltd. & Anr  granted an ad-interim injunction in favour of the Plaintiffs who had accused the Defendants of manufacturing and exporting substantial quantities of generic version of VORTIOXETINE to Latin America and Canada [December 23, 2020].
• Delhi High Court in Jagmohan Ratra v. Ampa Cycles Pvt. Ltd. & Anr acknowledged the Plaintiff to be a prior user of the ‘AMPA’ trademark and passed an interim injunction restrained the Defendant No. 1 from using the mark and the logo or any other mark which is deceptively similar to the plaintiff’s mark AMPA with logo amounting to passing off its goods as that of the plaintiff, and Defendant No.2 from using the domain name www.ampacycles.com [December 23, 2020].
• Delhi High Court in Infiniti Retail Ltd v. M/s The Croma ordered an interim injunction against the Defendants restraining them from infringing the plaintiff’s trademarks CROMA and passing off its goods as that of the Plaintiff [December 24, 2020].

Other News from around the Country

• IPAB is to hear submissions by various parties in IPRS’s claim for compulsory licensing under Section 31D on 28th December.
• The Delhi High Court has issued summons to SciHub and LibGen in a copyright infringement suit brought about by Elsevier UK, Wiley India, Wiley Periodicals USA, and American Chemical Society (read Swaraj’s post on the same, summarized and linked above).
• Nashik has been accorded a GI tag for its wine.
• The date palm jaggery of Gajapati district in Odisha is reportedly likely to get a GI tag soon.
• Google was asked to block 158 instant financing apps on its Play Store by the Telangana police after the companies behind these were found harassing and shaming defaulters.

News from around the World

• The Enola Holmes lawsuit between the Conan Doyle Estate and Netflix, involving the question of copyrightability of the emotions of Sherlock Holmes’ character has been dismissed with prejudice by the US’s District Court of New Mexico.
• England & Wales Court of Appeal reaffirmed the ruling of the High Court of London holding that Bentley Motors had infringed the registered ‘BENTLEY’ trademark of Bentley Clothing by using an identical trademark on its clothing line.
• Google has signed ‘individual agreements’ on copyright payments with French newspapers and magazines including Le Monde, Le Figaro and Liberation, for the purpose of sharing revenues from the display of news in search results.

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