SpicyIP Weekly Review (July 13 – 19)

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Topical Highlight

Bombay HC Clarifies Nature of Reliefs Applicable in Cybersquatting Disputes

Divij wrote a post about a refreshing order and judgment delivered by the Bombay High Court recently in the case of Hindustan Unilever v. Endurance Domain and Ors. The Court held that the finding of cybersquatting and fraudulent behaviour was uncontroversial but HUL’s prayer to direct domain name registrars “to suspend and ensure the continued suspension of and block access to (…) Fraudulent Domain Name(s)” could not be granted. This conclusion was based on the legal responsibilities of specific intermediaries and their technical abilities to enforce such orders. These entities have neither the responsibility nor control over registration or functioning of specific domain names. Thus, domain name registrars can only be asked to temporarily suspend specific domain names instead of being expected to ‘block access’ to a domain name. Importantly, Divij notes that this is a welcome departure from Courts’ implication of technical intermediaries such as domain name registrars previously and the Delhi High Court’s grant of dynamic injunctions in web-blocking cases without recognising the role played by adequate judicial scrutiny in these disputes. In this case, the Court held that the legality of access through monitoring and automatic suspension of domain names containing specific trademarks had to be determined by courts and could not be left to the plaintiffs or defendants. The Court also refused to come up with a ‘suitable mechanism’ to ease the burden of the plaintiffs, as prayed and noted that eternal vigilance constituted, “the cost of doing large-volume business.”

Thematic Highlight

Cornrows and Cultural Appropriation: What is the Best Way to Protect Black Hairstyles?

In a guest post, our fellowship applicant Adyasha Samal argues for an inclusive Traditional Cultural Expressions (TCE) protection policy and discusses the appropriation of hairstyles that hold cultural significance for people of African descent (black hairstyles). She argues that conventional IP regimes overlook TCE protection because of their requirements of fixation (copyright), description (patent), and graphical representation (trademark), necessitating the need for a sui generis system of protection. The WIPO has been debating the merits of a differentiated system for TCE protection based on their availability in the public, ranging from secret, sacred, narrowly diffused to widely diffused. Adyasha argues that black hairstyles would constitute diffused TCE in such a system. Thus, imitators of these hairstyles should be obligated to acknowledge the black heritage of these styles and be prohibited from using them in a manner derogatory to the community. She also highlights that a TCE protection system should recognise communal instead of individual authorship, allow for generational evolution instead of fixation, vest the rights to attribution and integrity with the communities, establish negotiation mechanisms between communities and outsiders, ensure fair and equitable benefits to communities and facilitate better protection of TCEs via documentation and awareness to preclude misappropriation from going unnoticed.

Other Posts

Copyright ‘Strikes’ Cricket: Films Division’s Tryst with Old Cricket Clips

Nikhil wrote a post arguing that the uploads of videos containing cricket clips purchased from the Films Division of India with significant additions by a cricket fan, Mr. Jairaj Galagali, constituted fair use under both US and Indian copyright law. Recently, the Films Division of India complained against Mr. Galagali’s uploads, which led to YouTube taking down his videos, presumably under its copyright strikes policy. Nikhil notes that US law applies to this case since YouTube considers any copyright notice issued through its webform as a US Digital Millennium Copyright Act notice. Based on the four-factor test under US law for determining fair use, he argues that the purpose of the use in this case was fair, being informative in nature and constituted transformative use since it involved significant addition of context, background and commentary to silent videos. Further, the underlying works were products of factual reporting of the events in time instead of creative works. The uploads also do not affect the target market of those who want to own the clips for memory sake individually or big companies seeking to commercially exploit the clips. Hence, he notes that even if there is slightly substantial copying in some instances, on an overall assessment, the uploads constituted fair use. Noting the relevance of this to the Indian copyright landscape, he argues that the Films Division’s complaint in this case is at loggerheads with the general stance of the Indian government to promote greater access to recordings of important sporting events and their history for the public. He concludes that collaboration with public-spirited individuals such as Mr. Galagali is aligned with the objective of preserving the history stored in these films as opposed to confining them in a poorly maintained government archive behind an inaccessible paywall.

The Challenging Pursuit of Patent Claim Amendments in India

We also had a guest post by Durgesh Mukharya and Meenakshi Chotia, wherein they examine the Indian Patent Office’s (IPO) restrictive interpretation of Section 59(1) of the Indian Patents Act, determining the nature of permissible amendments to a patent application. They argue that the IPO tends to ignore the disjunctive requirement of the section to permit amendments for incorporating ‘actual facts’ if supported by either the original specification OR the original claim. They highlight skewed interpretations by the IPO in a few cases and note that these interpretations could arguably be based on a subjective reading of judicial precedent. They also lament the lack of nuanced interpretation of this section by the Intellectual Property Appellate Board (IPAB) to provide further clarity regarding the scope of possible amendments. Finally, they conclude that given the restrictions on patentable subject matter in India and the limited options for pursuing intended claim amendments by way of a Divisional Application, it is particularly imperative for the IPO to provide more clarity on Section 59(1) to allow applicants the ability to leverage possible amendments and file more patent applications. They note that this will benefit the innovation and the patent ecosystem in the country.

Delhi HC Refuses Interim Injunction against Use of Acronym ‘TCV’ for a Typhoid Vaccine: Leaves Acquired Distinctiveness Question Unanswered?

In another guest post, Devangini Rai analyses a recent Delhi High Court order, refusing the grant of an interim injunction against the use of the acronym ‘TCV’ in relation to a typhoid vaccine. She argues that the facts and pleadings of the case adequately demonstrate the generic nature of the term TCV but do not sufficiently deal with the question of acquired distinctiveness, based on the fact that it was not argued by the plaintiffs in their plaint. She notes precedent that has held that it is open for the Court to examine the validity of trademark registration while determining the grant of an injunction. She argues that this determination is necessary to conclude that a prima facie injunction should be granted. The defendants had contended that TCV, though registered, had not been used individually and that there existed an application (later abandoned) for trademarking TCV prior to that of plaintiffs’ application, thereby invalidating claims of first use. Devangini argues that this case also illustrates that abandonment of applications is not dealt with properly by the Trademark registry. She notes that this case throws up an interesting question: to what extent can a potentially abandoned application suffice as proof that the plaintiff did not coin the term TCV originally? She also goes on to note other anomalies in the judgment that make it difficult to follow.

Decisions from Indian Courts

Delhi High Court passes ex parte ad-interim injunction against defendants restraining them from using INDIAMART for their services [July 14, 2020]

In Indiamart Intermesh Ltd. v. Mr. Akash Verma & Ors, the Delhi High Court held that the defendant’s use of the mark INDIAMART involved not only cheating the plaintiff but also innocent customers, who were deceived into believing that the defendant’s services were that of the plaintiff.  Thus, it passed an ex parte ad-interim injunction in favour of the plaintiff. plaintiff runs a business that provides an internet-based marketplace with free and paid listings of various product and services. It adopted the mark “INDIAMART” as far back as 1996 and registered it, along with the domain name indiamart.com.  In this case, the plaintiff had sought a permanent injunction against the defendant restraining him from violating his rights in his mark, “INDIAMART.

Delhi High Court grants permanent injunction restraining M/s M.R. Enterprises from carrying their business under the name ‘EMMAAR India Enterprises’ [July 15, 2020]

In the case of Emaar Properties PJSC v. Emaar India Enterprises, the Delhi High Court noted that the defendant whose name was changed to M.R. Enterprises had admitted that it was initially carrying its business in the name of EMMAAR India Enterprises, which was deceptively similar to the plaintiff’s mark. The plaintiff in its prayer had agreed to give up claims to damages, delivery up etc. if a permanent injunction was passed against the defendant. Accordingly, the High Court ordered that the defendant be permanently injuncted from violating the plaintiff’s registered trademark ‘EMAAR’.

Delhi High Court allows interlocutory application by Fmc Corporation to amend its plaint in suit against Natco Pharma [July 15, 2020]

In Fmc Corporation & Anr. v. Natco Pharma Ltd., the plaintiff alleged infringement of its registered patent (IN 201307) for a molecule known by the generic name ‘Chlorantraniliprole’ (CTPR) and another patent (IN 213332) for “A Process for Preparing a Compound of Formula 1” which covered the process of making CTPR. In this order, Fmc Corporation was successful in its interlocutory applications to amend its plaint and Statement of Truth while the Court dismissed the defendant’s objections in this regard based on the principle that rules of procedure could not trump the substantive rights of the parties. The defendants also failed to show how such an amendment would cause any irreparable prejudice to them.

Delhi District Court grants permanent injunction against the defendants for their use of plaintiff’s mark “Bachpan … a Play School” [July 15, 2020]

In the case of M/S. S. K. Education v. Bachpan, the plaintiff Company had been using its brand name of “BACHPAN” and “BACHPAN ….a Play School” for its playschools since 2002. It had widely advertised its services under this brand name and built up goodwill and repute. It came to know in 2017 that the defendants were also running a play school under the mark “Bachpan” and using the names “Bachpan … a Play School” and “Bachpan Sec­ playgroup” for their services. The Delhi District Court, after hearing both sides passed a decree of permanent injunction in favour of the plaintiff company, restraining the defendants from using the impugned mark or any mark deceptively similar to it. It also directed the defendants for delivery up of all merchandise bearing the impugned mark and for payment of damages of Rs. three lakhs to the plaintiff for infringement and passing off.

Division Bench of the Bombay High Court dismisses Emami’s appeal against the ad-interim relief granted to HUL in a trademark case [July 16, 2020]

In the case of Emami Ltd. v. Hindustan Unilever Ltd. (HUL), Emami challenged the ex-parte ad-interim relief granted to HUL via an order dated July 6, requiring Emami to give HUL prior written notice seven days in advance of initiating any legal proceedings over the Trademark for Glow & Handsome. Dismissing the appeal, the Division Bench noted the interim nature of the impugned order and the liberty granted to Emami to apply for its variation with 48 hours prior notice to HUL’s advocate. The dispute concerns HUL’s recent announcement to rebrand its skin lightening products Fair & Lovely (for women) and Men’s Fair & Lovely (for men) to Glow & Lovely and Glow & Handsome, respectively. This is being disputed by Emami which recently rebranded its own skin-lightening product, Fair and Handsome to Glow & Handsome.

Delhi District Court restrains Khalifa Industries from using the mark JOYO for being deceptively similar to OYO [July 16, 2020]

In Oravel Stays Pvt. Ltd. v. Khalifa Industries Pvt. Ltd., the Delhi District Court ruled in favour of the petitioners and restrained the defendants from using the mark JOYO in a permanent injunction suit filed by Oravel Stays. Oravel proved that it was using the trademark “OYO” since March 2012 in relation to its hotel/temporary accommodation services all over and beyond the country and had gained significant repute. The Court held that the defendant’s use of the mark JOYO/JOYO ROOMS for similar services was a fraudulent imitation and even the contents from the plaintiff’s website were passed off by the defendants. The Court was satisfied that the plaintiff proved its case and restrained the defendants from marking, advertising and selling/providing any goods or services either by itself and/or through any third party using the mark JOYO/ JOYO ROOMs.

Madras High Court restrains Patanjali Ayurved Ltd from using the trademark “Coronil” till July 30 [July 17, 2020]

The Madras High Court’s recent order restraining yoga guru Ramdev’s Patanjali Ayurved from using the trademark “Coronil”, which the Compnany claimed cures Corona, was based on a plea by Arudra Engineering Pvt. Ltd. asserting that they had owned the mark “Coronil” since 1993. Justice CV Karthikeyan noted that the restraint order would be valid till July 30. The AYUSH Ministry had initially barred Patanjili from promoting these products but directed on July, 1 that the Company could sell these, however, only as a medicing for “management” of coronavirus and not its cure, as claimed.

Bombay High Court grants interim relief to Capital Foods in a trademark dispute over Schezwan Chutney

Recently, Capital Foods was granted interim relief by the Bombay High Court in a legal skirmish involving General Atlantic backed-Capital Foods and a local Maharashtra based foods manufacturer, Damai International, selling a similar spicy dip under the name of “Schezwan Chutney”, which is Capital Food’s brand name. The temporary relief restrains Damai from manufacturing, marketing, distributing, packaging, selling its goods under the impugned mark. Capital foods had filed an ex-parte case of infringement of its trademark and for passing off against Damai on 20 June, and obtained an order in its favour on 23 June. As per the directions of the Bombay High Court, a raid against Damai was carried out by court receiver on 10 July where several packages of the product were seized.

Other News from around the Country

  • As cases of COVID-19 rise in the country, Indian Government struggles to curb black marketing of Remdesivir, the medicinal drug used to treat it.
  • Glenmark reduces the price of Covid-19 drug FabiFlu to Rs 75/tablet. The drug had received approval by the Drugs Controller General of India for Covid-19 treatment under emergency use authorisation. Thus, there is limited data available on the medicine’s performance and doctors prescribing it must obtain the written consent of patient
  • Patent Office grants patent to two siblings at the PGIMER for developing an innovative TB detection This technique causes considerable enhancement in diagnostic sensitivity in sites like the brain, joints, eyes etc.
  • An Ahmedabad police station registers copyright violation cases against shopkeepers for allegedly selling illegal copies of Disney and Marvel toys.
  • 12 Finalists announced in the 5th “Qualcomm Design in India Challenge” 2020, aimed at commercializing technological innovations in India.
  • An Indian Express piece by Anju Chaba argues that Madhya Pradesh’s push to seek a GI tag for Basmati rice can hurt Indian farmers and commerce.
  • In a piece for the Scroll, Anjula Gurtoo and Rahul Patil explore the possibility of an affordable Covid-19 vaccine which also balances the rights of investors and inventors.

News from around the World

  • Twitter removes a campaign video in Trump’s retweet based on Linkin Park’s copyright complaint.
  • CJEU issues a press release citing Advocate General Saugmandsgaard’s opinion in joined cases involving online platform operators. As per him, according to EU law currently, operators such as YouTube and Uploaded, are not directly liable for illegal uploads of copyrighted works by users onto their platforms.
  • European Parliament votes to support WHO’s endeavours to create a Covid-10 Access Pool Tap (C-TAP) containing patent rights, regulatory test data etc.
  • In a piece in Daily Maverick, Sanya Samtani argues that the South African Parliament can align copyright law with the Bill of Rights in the South African Constitution by Implementing the Copyright Amendment Bill.
  • I-MAK releases a report which reveals that Imbruvica’s patent wall lengthens its monopoly term by 9+ years. Imbruvica is currently AbbVie’s second-bestselling product.
  • South Centre publishes a research paper arguing that the USTR Special 301 list ignores the socio-economic concerns of countries and is thus, considered ineffective.

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