SpicyIP Weekly Review (July 6 – 12)

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Topical Highlight

Telegram Copyright Infringement Case: India’s Chance to Seek Inspiration from Foreign Principles

In a guest post, Abhishek Iyer discussed the issue of intermediary liability in light of the Telegram copyright infringement case. The post first discusses the burden of knowledge with respect to e-notices to understand Telegram’s liability given the requirement of ‘specific and actual knowledge’ of intermediaries with respect to infringement of copyrighted material. The doctrine of inducement used in US Courts is discussed to determine Telegram’s role in the indirect promotion of infringement due to the absence of a checking mechanism on its platform. Then, contributory infringement and the EU concept of ‘Mere Conduit’ and the relevant ‘safe harbours’ provision is discussed to determine Telegram’s liability. In conclusion, it is noted that globally settled principles offer an opportunity to the Delhi High Court to balance intermediary and group chat stakeholders’ liability in the Dainik Jagran v. Telegram case.

Thematic Highlight

From Iancu v. Brunetti to Constantin Film: Should Morality Interfere with Trademark law?

In a guest post, our fellowship applicant Adyasha Samal, wrote about the issues relating to morality based prohibitions in trademark law in light of CJEU’s decision permitting the registration of ‘Fack Ju Göhte’ mark. The EUIPO had rejected the application for trademarking the ‘Fack Ju Göhte’ mark as it was deemed to be contrary to principles of morality under EU law. In the Appeal, the CJEU noted that an objective inquiry from a reasonable person’s standard of sensitivity is required to scrutinize the mark and held that the ‘Fack Ju Göhte’  mark did not offend moral principles. Noting that this is similar to the US Supreme Court’s ruling in Iancu v. Brunetti, Adyasha says that there is a trend towards dilution of morality-based prohibitions in trademark law. Adyasha then highlights the importance of balancing morality and trademark law. Finally, discussing whether a bar on marks deemed immoral curtails free speech, it is argued that a well-defined, narrowly applicable law will ensure that only outrageously offensive marks are censored, and marks are not rejected only on grounds of distaste.

Other Posts

DPCO’s Para 32 Conundrum Continues: Price Control Exemptions for Newly Patented Drugs

I wrote about the exemptions granted from price control for newly patented drugs under Paragraph 32 of the Drug (Prices Control) Order, 2013 (DPCO). With the 2019 amendment to the DPCO, several instances of self-invocation of the exemption have arisen. I covered the petitions filed by Glenmark, Lupin, Sun Pharma, and Abbot Healthcare concerning the interpretation of Para. 32(i) of the DPCO. The post then discusses whether the DPCO allows for self-invocation of the exemption and I argue that given the proviso to Para. 32, the Drugs Controller’s approval is essential for the exemption, and self-invocation is not supported by the Order’s text. However, with pharma companies claiming self-invocation, the poor drafting of the 2019 amendment to the DPCO becomes apparent.

Book Release: ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’

We had a guest post by Eashan Ghosh announcing the release of his book ‘Imperfect Recollections: The Indian Supreme Court on Trade Mark Law’. The book tells the story of Indian trade mark law through Supreme Court cases. The book is a collection of thirteen essays divided into three parts. Part I covers the similarity inquiry, rectification actions, and jurisdictions. Part II contains essays on questions incidental to the similarity inquiry. Part III contains an essay on the defences of delay and acquiescence in trade mark claims. The book can be found in the recently published list of IP books on this blog (also accessible from the Resources section of the website here) Further details on the essays and links for ordering the book online can be viewed in the post here.

 Other Developments

Decisions from Indian Courts

Bombay HC grants interim relief to HUL in ‘Glow & Handsome’ trade mark suit [July 6, 2020]

In Hindustan Unilever Limited v. Emami Limited, a single-judge bench of the Bombay High Court granted an ad-interim injunction in favor of Hindustan Unilever Limited (HUL) with respect to use of the ‘Glow & Handsome’ trade mark. HUL had recently announced the move to rename its skin lightening product ‘Men’s Fair & Lovely’ to ‘Glow & Handsome’ which is the same mark used by Emami for its recently rebranded product ‘Fair & Handsome’. HUL moved to court under Section 142 of the Trade Marks Act seeking an injunction against Emami from issuing groundless threats to the Plaintiff in respect of the use of its trade mark ‘Glow & Handsome’. HUL sought an interim relief that Emami should give written notice to HUL at least 7 days prior to initiating any legal proceedings in any court with respect to the ‘Glow & Handsome’ mark. The plaintiff argued that Emami’s claim of proprietorship over the ‘Glow & Handsome’ mark was false and misconceived and that HUL was the prior adopter and users of the marks. After perusing the evidence presented, the Judge noted that prima facie HUL appeared to be the prior user of the marks and granted the interim relief sought by the plaintiff.

Delhi HC orders status quo on SRL Diagnostic trade mark issue [July 8, 2020]

In Daiichi Sankyo Company Ltd. v. Malvinder Mohan Singh, a single-judge bench of the Delhi High Court ordered the maintenance of status quo with respect to rights of parties in the ‘SRL’ trade mark issue. The plaintiff stated that the ‘SRL’ trade mark was initially held by RHC Holding, who is a judgment-debtor to the plaintiff. In 2017, RHC Holding which was controlled by the defendant transferred the S’RL’ trademark in favor of M/s Headway Branch Private Ltd, a subsidiary held by the defendant. Taking note of the plaintiff’s execution proceedings in connection with the Rs. 3500 crore arbitration award against the defendant, the judge ordered that M/s Headway Branch Private Ltd. was restrained from creating any third-party rights in the trade mark ‘SRL’ and was directed to maintain status quo.

Delhi HC grants interim injunction in a case concerning application of Section 107A of Patents Act [July 8, 2020]

In Bayer Intellectual Property GMBH v. Titan Laboratories Pvt. Ltd, a single-judge bench of the Delhi High Court granted an interim injunction in favor of the plaintiff with respect to patent infringement of the drug Rivaroxaban. The plaintiff in this case was the manufacturer of Rivaroxaban and it imported the same to India through an Indian company. The imported drug was sold under the trade mark Xarelto. The plaintiff alleged that the defendant, Titan Laboratories, though had not launched the product Rivaroxaban in India, it did export the same from India under the brand name Mezoser-S. After considering the evidence presented in the case, the judge held that given the export of Rivaroxaban in commercial quantities, the defendant was not exempted under Section 107-A of the Patents Act and use by the defendant while exporting would be considered as use in India, thus infringing the plaintiff’s patent rights. In ordered to prevent this infringement, the judge granted an ad-interim injunction in favor of the plaintiff.

Delhi HC award costs and damages in Dr. Reddy’s trade mark infringement case [July 9, 2020]

In Dr. Reddy’s Laboratories Ltd v. RLifespan Diagnostics Private Limited, a single-judge bench of the Delhi High Court awarded Rs. 2,00,000 as costs and damages in a trade mark infringement case concerning the ‘Dr. Reddy’s’ mark. The award was granted after the defendant accepted the fact that it had infringed the registered trade mark of the plaintiff by using it to provide services and in its domain name. The defendant stopped the infringing use immediately after receiving notice from the plaintiff. The defendant agreed to cease use and suffer a decree for permanent injunction. The judge granted the monetary award in favor of the plaintiff given that the defendant was taking unfair advantage of the plaintiff’s mark to make unjust monetary gains.

Madhya Pradesh HC grants anticipatory bail in illegal broadcasting case [July 10, 2020]

In Satyendra Singh Tomar v. The State Of M.P., the Madhya Pradesh High Court granted anticipatory bail in a dispute concerning the plaintiff wherein he was accused of broadcasting Star channel of Star India Ltd. in an illegal manner without having any valid license and without paying the broadcasting fees. The plaintiff argued that he had no criminal past and he had been falsely implicated in the matter and was not the owner of the allegedly infringing entity. He argued that none of the offenses under the Copyright Act were applicable as per the circumstances of the case. The Court observed that per Section 41A of the Criminal Procedure Code, arrest and imprisonment would be necessary in this case only if the applicant does not cooperate with the investigation. With the plaintiff agreeing to abide by the Court’s instructions and cooperate with the investigation, he was granted anticipatory bail.

Other News from around the Country

  • IPRS issued new tariff rates for live streaming of online events of musical and literary works. The tariff rates came into force from July 1, 2020.
  • CPI(M) called upon the government to invoke Section 92 of the Patents Act to issue a compulsory license to manufacturers to produce the generic version of Remedesivir to treat COVID-19.
  • BDSU student was granted an Indian patent for a 3-in-1 COVID safety device that allows contact-less temperature monitoring, capturing attendance, and dispensing hand sanitizer.
  • A Chennai-based company developed and obtained a patent for a device named ‘Etticos COVID-19 Patient Care System’to bridge the communication gap between coronavirus patients and healthcare staff.
  • Zoom issued a statement saying that it may take legal action against Reliance JioMeet for copying its video calling app’s User Interface (UI).
  • A piece by Nandita Saikia proposes the de-criminalization of copyright law offenses. She highlights the concerns about the criminal provisions and the limitations of the de-criminalization process.
  • The Delhi HC ruled in favor of Sandvik, a Swedish engineering company, in a case concerning patent infringement of a technology known as Vertical Shaft Impact crusher (VSI) by an Indian company, HK Engineering Works.

News from around the World

  • CJEU ruled that YouTube is not required to hand over the emails or IP addresses of users who upload pirated films that violate intellectual property rights on to the platform.
  • The European Patent Office (EPO) published an expanding ‘Fighting coronavirus’ platform designed to help researchers and policy-makers with patent information to battle COVID-19.
  • WIPO announced that the Intellectual Property Judges Forum 2020 will be held between November 18-20, 2020.
  • Football club Manchester United sued game developers Sega and SI for trademark infringement for illicitly using their name and logo in the video game ‘Football Manager’.
  • USPTO announced the ‘Fast-Track Appeals Pilot Program’ to accept petitions for expedited patent examination and resolution of ex parte patent appeals.
  • China recently approved the establishment of 33 IPR centers to reduce the processing time and cost of IPR protection in the country.
  • Country music group Lady Antebellum who recently changed their name to Lady A sued a blues singer Anita White, already known as ‘Lady A’ for trademark infringement.
  • A piece in The Daily Star discusses the fierce competition between the world’s largest economies to be the first to develop a COVID-19 vaccine and ensure its accessibility to its citizens.

For regular updates on IP news and opinions related to COVID-19, please visit our COVID-19 & IP Updates page (also accessible from the Resources section on our website).

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