Yahoo! In Hot Pickle

Yahoo! has been in the midst of a spicy controversy since it launched its Malayalam portal last month. A number of bloggers from Kerala, lead by Ms. Surya Gayathri attacked Yahoo for allegedly plagiarizing content from their blogs. Ms. Surya Gayathri, who had posted her recipe for Erunellika (Gooseberry pickle) on her blog (Kariveppilla - see image) was shocked to find her recipes copied verbatim on the Yahoo portal (For a translation of recipes on the Yahoo site and on Ms. Surya Gayathri's site, click here).

Yahoo’s initial response constituted a shifting of blame to Webdunia.com, who, Yahoo claimed, provided the content “on the express representation that they are duly authorized by the author of the story to publish it.” The reactions to this response ranged from clearly outraged to downright humorous. (See for example the cartoons “Yahoo Subcontracts Plagiarism”). However, Yahoo did immediately remove the controversial content from its website. Webdunia, on the other hand, through the chief editor of Weblokam (a portal run by Webdunia) made an unconditional apology for what it claimed to be an “innocent and inadvertent” lapse.

After weeks of angry emails and calls in a variety of languages, and an official bloggers protest on March 5 (which was declared by the bloggers as the “Remove Plagiarism Day”, Yahoo has now come out with a more concrete "apology" (which is considered by some to not amount to a direct apology to Ms. Surya Gayathri) stating that “Yahoo respects the blogging community and the etiquette followed. We regret inconvenience caused by the inadvertent posting of the recipe without attribution. Our regional content provider webdunia should have checked out the legal right for the reproduction of the content. We see it as a serious matter and have removed the content from our site. We as a company respect the values of the blogger community.” (As Quoted in the Times of India article available here).

Going through the numerous comments made by interested and disinterested parties to this controversy, I started wondering about the underlying legal issues that could be raised if the matter were to go to court. The most obvious issue is whether a recipe is copyrightable. Sub issues (depending on the jurisdiction in which the case is brought) may include whether there is a minimum amount of originality or creativity that make the recipes copyrightable (the Fiest standard), whether a recipe can be considered an “expression” at all (see the very interesting article by Christopher J. Buccafusco titled “On the Legal Consequences of Sauces: Should Thomas Keller's Recipes be per se Copyrightable?” published this year by the Cardozo Arts and Entertainment Law Journal (24 Cardozo Arts & Ent. L.J. 1121) and whether or not Yahoo can seek cover under the creative commons license - the license that allegedly covers many of the blogs and blog contents in issue (To view one version of the Creative Commons license - i.e. the Attribution 2.5 license click here.)

In the US, the relevant law relating to copyrightability of recipes is 17 USC § 102(a), § 102(b) (which excludes certain subject matter from copyright protection), US Copyright Office Fact Letter 122 (which excludes mere listings of ingredients as in recipes from copyright protection unless the same a accompanies by substantial literary expression) and 37 CFR §202.1. Recent US cases interpreting the above law have denied copyright protection to recipes per se (other than recipes in “cookbooks in which the authors lace their directions for producing dishes with musings about the spiritual nature of cooking or reminiscences they associate with the wafting odors of certain dishes in various stages of preparation.” – (See Publications Intl. v. Meredith Corp. 88 F.3d 473)

In India however, there is no law similar to the US law that prohibits copyright protection from being granted to recipes. In Govindan v Gopalakrishna (1955 – case relating to compilation) (quoted in Burlington – discussed below), it was held that even if the amount of originality in a compilation is very small, the same is protected by law and no one can appropriate the result of another's brain, skill or labour even in such works. Arguably, if a small creative input in a compilation is copyrightable, a recipe, particularly original instructions in a recipe will certainly be copyrightable in India.

The more recent cases of Burlington and SCC Online, seem to be discordant as to the standard to be applied in determining copyrightability of a database. In Burlington, the court appeared to endorse a “sweat of the brow” type doctrine while in SCC, it followed the Fiest logic of minimum creativity (See comment). While a recipe is not, strictly speaking, a database, the “ingredients” portion of a recipe may be considered akin to a database in that it is a list of items. However, no matter which standard we apply, recipes will in all likelihood be found to be copyrightable in India. In Fiest, the court held: ”Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyrights extend to the facts themselves.”

A recipe, especially an original recipe, does “feature an original selection or arrangement of facts” and may therefore merit copyright protection even under the Feist rationale. There is certainly a more than just a minimum level of creativity involved in determining which items are to be used, and in what quantity. Indeed, there is a clearly high degree of creativity involved in determining which ingredients to mix with which and in which order, to get that perfect result! The description of the “method” also involves a great deal of creativity – a glance at the comments of users of the plethora of recipes available online clearly demonstrates that some recipes are easier to follow than others and give better results than others (for the same dish) simply because the method is explained in a lucid and precise manner.

Further, from the facts as they have unraveled during the course of this controversy, it is clear that what Yahoo did was what qualifies as a “slavish copying” that is a clear copyright violation.

Whether or not the recipes in questions are copyrightable under the relevant IP laws may well be a secondary issue in the present Yahoo! controversy. The primary issue here is one of corporate ethics. Even under the various creative commons licenses, which often cover the content within the blogs, while the copying of the content may be permissible (depending on the type of license), attribution of the source is mandated. A simple attribution of the various blogs from which the content was “plagiarized” may in fact have been adequate to avoid the entire controversy altogether!

THE MASHELKAR COMMITTEE REPORT AND “INDUSTRY” CAPTURE ALLEGATIONS

I was greeted this morning by a TOI editorial written by a colleague of mine from Oxford, Sudhir Krishnaswamy, who now teaches at the National Law School, Bangalore. I’ve always respected Sudhir as someone who exuded academic rigour—and was therefore surprised at reading an editorial that rested on superficial analysis and touted fancy terms. Even more surprising was the fact that this came after we had exchanged some communications on this theme in the past. Sudhir had emailed asking for a copy of my paper that I submitted to the Mashelkar Committee. I sent this and received a reply from him stating that he disagreed with the conclusions. When I wrote back asking him as to what he specifically disagreed with and why, he didn’t bother to respond. I was disappointed as I hoped to engage him in a discussion on the substantive issues. And then I see this editorial in the press, where, in relation to my paper, he states:

“In either circumstance, we must conclude that research done under these conditions is 'consultancy' research which represents the concerns of a particular interest group.”

Had Sudhir patiently read my paper, dug a little deeper and assessed the overall situation with more objective eyes, he might not have jumped to this perverse conclusion that my paper represented “concerns of a particular interest group”.

1. Firstly, it was not commissioned by Interpat but by the IPI (Intellectual Property Institute). I had nothing to do with Interpat or where the funding came from—it was the IPI that was commissioning this and my dealings were with the IPI.

2. IPI has a number of members, including Interpat, and being a non profit body, isn’t it reasonable that it’s funding come from its member/members? IPI has on its board my supervisor at Oxford, Professor David Vaver, as also Sir Hugh Laddie, two very well known and respected academics/judges in the UK. Sir Laddie was also, till recently, a patent judge and a very respected one at that. The IPI’s council members include academic stalwarts such as Professor John Adams, Professor Lionel Bently, Professor Michael Blakeney, Professor Gerald Dworkin, Professor James Lahore and Professor Hector MacQueen. It also includes reputed judges such as the The Rt Hon Lord Justice Jacob (President), The Hon Mr Justice Kitchin and The Hon Mr Justice Pumfrey. These are very well reputed academics and judges, who are certainly not in the “pay” of industry. All of this information is available on the IPI website. To therefore call the IPI an industry mouthpiece (or an “industry” that is capable of “capturing”) is perverse and smacks of ignorance and sheer laziness in investigating the matter deeper and assessing the situation with more open and objective eyes.

I don’t blame public health activists for jumping to these sort of conclusions, since they have had a very difficult fight and it is only more recently that their voices are beginning to be heard in India. One is more likely to pardon their resort to rhetoric in accord to accomplish their goals in a setting that has thus far, not been very favourable to their cause. However, it is not becoming of an academic to be prone to such a tendency. Perhaps for an academic who feels left out of the whole debate, this stems out of a desperate need to make his/her voice felt in some way. Except that he/she would have gained far more credibility and made more sense, had he/she taken the pains to probe a little deeper.

3. The IPI was interested in going international with their research activities and in particular, on focussing on India and China. Professor David Vaver referred them to me, when they queried him on an "Indian" expert that could objectively analyse the questions posed to the Committee. I was more than happy to do this, particularly since there were no strings attached and no "gag" clauses--that would prevent all my hard work from being submitted to the Committee, if they weren't happy with the results. It was also understood that I would be the author of this paper, completely independent and free to come to the conclusions that I thought were right. Our agreement was that they (the IPI) would only endorse my paper, if Professor David Vaver, who was the head of the Oxford IP Research Center, thought that the paper was sound in its reasoning/analysis/conclusions. He did so, and the IPI was happy to endorse my findings and send the paper to the Committee.

4. They were also very transparent in their dealings with me and informed me about the Interpat funding and we agreed that this had to be mentioned in the paper.

5. Incidentally, I did another paper for the IPI on the tricky issue of Article 39.3 and regulatory data protection, where again, they wanted an independent Indian expert to assess the standard for protection under Art 39.3 and to assess whether Indian law was complaint with such a standard. I found that Article 39.3 did not require "data exclusivity"--rather, its minimum standard was one of "compensatory liability"--where the data would be “compulsory licensed” and could be relied upon by an Indian generic, provided a reasonable royalty was paid. Those following the Thai compulsory licensing controversy will appreciate that if there is one term that makes big pharma squirm, it is “compulsory licensing”.

Guess what----this report, again funded by Interpat and advocating that horrible term “compulsory licensing” was submitted to a government committee by the IPI (despite the fact that funding came to IPI from Interpat). Certainly not the kind of reaction one would expect from a body “captured” by industry interests.

Interestingly, over dinner at a New Delhi restaurant last year, I had appraised Sudhir of this second report on Article 39.3 and how this was neither favourable to big pharma (who didn’t like the term “compulsory licensing”) nor the generics or public health activists (who wanted to continue with the status quo and not have to pay royalties for reliance on this data). And that strangely enough, I was in a no-man’s land—some might say, precisely the spot for academics who aren’t exactly “captured” by interests.

Even apart from all of this, lets look at this whole controversy logically. Friends of mine say that I’m stupid to keep insisting on “logic” when what sells today is “rhetoric”. I will credit the Indian public with more intelligence than swaying blindly to rhetoric. Were I an academic “captured” by “industry”:

i) I wouldn’t have insisted on an Interpat attribution in my paper. No one would have had a clue and this entire controversy would never have erupted. After all the IPI is funded by all/most of its members and who would know? I think the IPI would have strongly objected to this non-attribution, but then IPI is also supposedly an “industry” captured body, right?

ii) I wouldn’t have been foolish enough to put that stuff out on my blog, stating that the Committee lifted its conclusions from my report. I, and more importantly, the IPI and Interpat would have rejoiced secretly at having achieved this coup, without anyone knowing any better.

iii) I wouldn’t have gone around critiquing a committee that I thought was favourable to the industry interests that I represent. See my first blog post on the Committee Report, where I note:

"What worried me, however, is that while it took me about 35 pages to come to the conclusion that keeping non NCEs or incremental pharmaceutical inventions outside the scope of patentability would contravene Article 27 of TRIPS, the Committee disposed of this issue in a couple of paragraphs.
….I’m not entirely sure that the issue is a simple one. Would non NCE substances or incremental pharmaceutical advances amount to “inventions” under Article 27, which mandates that “patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application”.

A recent article by Mr Dinesh Abrol, a public health advocate and a co-convenor of the National Working Group on Patent Laws makes the same point:

Interestingly, Shamnad Basheer himself states: "The key failing of the Committee is not engaging with the tough policy issues. The conclusions may be correct, but there is much to be said for the manner in which they were arrived at."

Were I captured by “industry”, why would I question the fact that the Committee didn’t reason out its conclusions? Shouldn’t I be happy that my so called consultancy “client” got what it wanted i.e. a finding that the proposed amendments were not TRIPS compatible.

And this brings me to the larger issue of how the debates around this controversy (and the larger public health vs patent controversy) are getting increasingly polarised and are slowly forcing us towards a George Bush kind of view:

“EITHER YOU’RE WITH US OR YOU’RE AGAINST US”

Very famous words in the context of Iraq. But not a very sophisticated approach to life, particularly for an academic. Do academics have to take sides in these debates that are getting increasingly polarised? Particularly so, when they are from India, the land of the Buddha, an evolved spiritual leader, who advocated the “middle path”--an approach that entails being “neutral, upright, and centered. It means to investigate and penetrate the core of life and all things with an upright, unbiased attitude. In order to solve a problem, we should position ourselves on neutral, upright and unbiased ground. We investigate the problem from various angles, analyze the findings, understand the truth thoroughly, and find a reasonable conclusion”.



I would only ask that skeptics take a look at Popping Patented Pills: Europe and a Decade’s Dose of TRIPS. This article co-authored with my supervisor, Professor David Vaver, Director, Oxford IP Research Center, takes a very critical look at big pharma. If that’s not enough, take a look at Taming of the Flu: Working Through the Tamiflu Patents in India. This article takes a critical look at Roche’s stand in not licensing its patents over Tamiflu, despite fears of an acute shortage. It is co-authored with a public health activist, Tahir Amin....someone I find to be very balanced and willing to listen to hard facts/data and reason.

If this is again not enough, take a look at my blog which has posts on the Tamiflu dispute (critiquing Roche's tough stand on patents) and on the Novartis case (opining that contrary to what Novartis claims, section 3(d) is perfectly compatible with TRIPS). Surely an Interpat paid “captured” academic would never write anything that prejudices the case of one its key members i.e. Novartis.

I read Manoj Mitta’s piece in The Times of India, where he quotes one of the Mashelkar Committee members, Dr Madhav Menon, who also happens to the founder Director of the National Law School of India (where Sudhir now teaches), as stating:

"As an academic, I believe that the committee should be willing to revisit its conclusions in the light of any fresh empirical evidence"

Spoken like a true academic. And this is exactly what we need--a move away from rhetoric and a move towards evidence based research and empirical analysis. And I am glad that at least some sensible academics are now making a call for this. As opposed to others, who may feel left out of the whole debate and resort to fancy terms like “industry capture” to make themselves heard. If there is anything that deserves “moral censure” (again a term used in Sudhir’s article), it is precisely this sort of a publicity stunt that lacks rigorous analysis and is informed less by logic and more by shoddy investigation.

The eBay-Rowling imbroglio – PART I

When Shamnad drew my attention to a report on the purported injunction against eBay as granted by an Indian court, I was quite surprised (to put it very mildly)!

In India the courts have traditionally taken a stand against ISP liability and if such an injunction had indeed been granted it would diametrically change this position.

Yet, despite the news.com report (hyperlinked above) having used fairly cautious language, other media reports on the issue such as times online contain unequivocal statements such as, "it is the first time the company has been obliged to police its sellers’ auctions for copyrighted material". Others such as www.auctionbytes.com, the source of the animation above, admit to using the Times Online report as a basis for their information.

However, after having managed to lay my hands on the orders, I have to strike a discordant note with my own very personal interpretation of their import.

It appears that a civil suit was filed by J K Rowling and Warner Brothers Entertainment Inc. against 4 publishers/ book sellers in 2004 where it was alleged that certain books were being sold by the latter as Harry Potter e-books on baazee.com (the then Indian counterpart of eBay) when neither J K Rowling nor her publishers had at any point in time themselves reduced the print versions of the Harry Potter books into-e-book form nor sold them as such. Hence it was alleged that the latter were committing not only an act of passing off but were also diluting the Harry Potter trademarks. Baazee was named as Defendant No. 5 in the action as the e-books were being sold through them.

When the matter came up for hearing for the first time on 4th November 2004, an ex parte injunction was granted against the publishers/ sellers (Defendants 1 to 4) restraining them from "marketing or advertising the works of the plaintiff …on the website of defendant No. 5 or in any other manner".

No injunction was granted against Defendant No. 5, i.e. Baazee.

The matter came up again on 16th November 2004 when the counsel for Baazee informed the court that the offending e-book displays of the five published Harry Potter titles had been removed from the site as soon as the summons in the suit were received by them. He also informed the court that the offending ads of Defendant Nos. 1 to 4 will not be displayed any further on their site. The Judge accordingly held that there was “no cause for any interim injunction against Defendant no. 5 at this stage without considering their reply.”

(Note: Both these orders can be accessed at www.delhihighcourt.nic.in - just remember that the matter type is "Suit" and the case name is J.K. Rowling and anr. v. Vinay Varma and ors., CS (OS) 1242 of 2004)

The matter was heard several times in between and once again came up for hearing on 24th February 2005 when the court simply observed that the interim order was to continue pending further orders.

Finally when the matter came up on 24th January 2007, 13 issues were framed for consideration in the matter where issue no. 12 read “Whether the suit is maintainable as against the defendant No. 5”.

On that date the Court observed, “In view of the statement dated 16.11.2004 of the defendant No. 5 and further that counsel for the defendant No. 1 does not oppose the prayer for interim injunction, order dated 4.11.2004 read with statement dated 16.11.2004 is made absolute till the disposal of the suit”.

(Note: This order is not yet accessible online and those of you who are interested can write to me separately and I will email it to you).

The only possible interpretation of this in my humble opinion, is that eBay is required to stand by its commitment of the offending ads of the publishers will not be displayed further on Baazee/eBay.

This is not and cannot be interpreted as an injunction against eBay.

P.S. Today, eBay moved the court for contempt against the Plaintiffs for misrepresentation of the court proceedings as well as sought a mandatory injunction against them from going to the media with such statements. The Court has simply renotified the matter for hearing on 14th March 2007. Watch this space for Part II of this post.

New Antimalarial Pill: Encouraging R&D for Neglected Diseases

The International Herald Tribune carries this interesting story of a PPP (Public Private Partnership) between Sanofi Aventis and DNdI (Drugs for Neglected Diseases Initiative) that resulted in a new and useful malaria pill. The news item states:

"A new, cheap pill to treat malaria was introduced Thursday, the first product of an innovative partnership between an international drug company and a medical charity.

The medicine, called ASAQ, is a pill combining artemisinin, invented in China using sweet wormwood and hailed as a miracle malaria drug, with amodiaquine, an older drug that still works in many malarial areas.

A treatment will cost less than $1 for adults and less than 50 cents for children. ...

In Africa, malaria kills 3,000 infants and children a day....

Sanofi-Aventis, the world's fourth- largest drug company, which is based in Paris, will sell the pill at cost to international health agencies like the World Health Organization, Unicef and the Global Fund for AIDS, Tuberculosis and Malaria.

The rollout of the drug is the result of a two-year partnership between Sanofi and the Drugs for Neglected Diseases Initiative, a campaign started by the medical charity Médecins Sans Frontières to find new drugs for tropical diseases.

Médecins Sans Frontières has long been one of the harshest critics of the pharmaceutical industry, charging that it spends billions on drugs like Viagra, Ambien and Prozac for rich countries and almost nothing on diseases killing millions of poor people.

But, recognizing that new drugs would have to come from the industry's major players, Médecins Sans Frontières founded the initiative in 2003 and began seeking partnerships. This is the first to come to fruition.

"This was not a love wedding — it was a reasonable wedding," said Dr. Robert Sebbag, the vice president for access to medicines at Sanofi. "But reasonableness is often more important for a long marriage. They've seen we are not nasty people working against poor countries and seeking only profits."

In an unusual move, Sanofi has decided not to seek any patents so the pills can be freely copied by generic companies like those in India....

Sanofi will also produce a branded version, called Coarsucam, for the private market, to be sold at three or four times the public price. It will be sold only in Africa, Indonesia and the Philippines, the company said, not in the United States or Europe.

In another innovation, Sanofi will meet with pharmacists' organizations in poor countries and give them incentives to sell Coarsucam at two different prices — at less than $1 to very poor customers and $3 to $4 to wealthier ones.

It will leave it to the pharmacists to estimate which of their customers live on less than the cutoff income, which is about $40 a month, Sebbag said.


This news made me reflect on the following:

1. The growing importance of PPP's for R&D into neglected diseases or tropical diseases such as malaria, TB, sleeping sickness etc. R&D into neglected diseases has been abysmally low and it is estimated that out of 1393 new drugs marketed between 1975 and 1999, only 16 were for neglected diseases. The obvious reason behind this low R&D is that most "patients" are in the "developing" or "least developed" world and cannot afford to pay huge prices for potential pills to treat them--hence the expected return on investment for big pharma is not good enough, and they would rather continue their focus on lifestyle diseases and other diseases of the West. Here is an excellent article on PPP's and their role in R&D into neglected diseases. Also, this website provides excellent information on the range of PPP's that we have in the pharma sector today.


2. It is commendable that Sanofi opted out of patenting this drug in order to enable generic production at cheaper and more affordable prices. More recently, pharma companies have been following a policy of non-assertion of patent rights in developing countries (or deliberately opting to not patent in such countries, as was the case with Sanofi here) --a policy that has been gaining favour since a Yale law gradudate, Amy Kapczynski, forced BMS (Bristol Myers Squib) to relinquish patent rights in sub-saharan african over d4T, a very useful drug in HIV treatment. A variant of the non assertion clause is “differential pricing”, where the drugs are sold cheaper in developing and least developed economies (when compared to the sale price in the developed world). Clearly, this is a very good way forward for ensuring access in developing countries.

The problem with differential pricing however, is the fear of arbitrage. The need of the hour is to creatively think of ways in which we can reduce this arbitrage i.e. the drug shouldn’t find its way back to the richer Western markets. In this sense, flexibilities in devising "parallel import" rules in patent regimes run counter to the incentive to differentially price. Certainly this needs some thinking about. In the context of the Sanofi pill, it must be remembered that the arbitrage could happen domestically as well ie. the cheaper drugs finding their way to the richer consumers in the same country.

3. This pill by Sanofi and DNDi is an excellent example of an "incremental invention". The pill combines a classic malaria drug amodiaquine with a newer medicine containing artemisinin, which comes from a Chinese plant.

Would we call this "evergreening" or a "frivolous" invention, despite the many advantages that this new drug offers? Of course, we would all love it if all pharma companies were to relinquish patent rights in the way that Sanofi did. Then we wouldn't need to worry about whether or not we ought to grant patents to incentivise incremental innovations of this sort. But we have to remember that not all pharma companies work with DNDi in a PPP mode (or more importantly, in a neglected disease context), that would urge them to act in this benevolent fashion. The great majority of their R&D is still going to be undertaken in a purely commercial setting and driven, interalia, by non altruistic motives i.e. the promise of a patent and consequent monopoly profits.

Given the example of a tremendously useful Sanofi pill, could we still categorically state that it is impossible to distinguish between incremental innovation and ever-greening? Or assume that all inventions apart from NCE's (new chemical entities) are alleged attempts at ever-greening? Some of the comments around the Mashelkar report controversy are premised on this incorrect assumption. Is section 3(d) of the Indian patents act or our general "non obviousness" or “inventive step” standard (that in order to be patentable, an invention has to be “non obvious” to a person skilled in the art AND that it has to either involve some “technical advance” or “economic significance” or both) sufficient to strike this distinction. Of course, one cannot comment on section 3(d) at the moment, as the standard for "efficacy" that this section entails is still not clear (besides section 3(d) may not really help us in a "combination" context, where 2 existing versions of drugs are combined). The need of the hour is to work out appropriate guidelines to help interpret the term “efficacy” in section 3(d).

5. Lastly, and most importantly, in the Indian context, it forces us to ask the question:

How do we incentivise our generic companies in India to underake R&D on neglected diseases? How do we work towards encouraging a shift away from their current tendency to go after the low hanging fruit (generic copies) in the Western markets?

Amidst the furore generated by the Mashelkar Committee report, we've somehow lost sight of these more substantive questions that we really need to be asking.

India gives a much awaited nod to the Madrid Protocol

The Indian Cabinet has approved a plan for the country to accede to the Madrid Protocol. If the proposal gets the backing of the Parliament, international trade mark owners will be able to extend their rights to the world's second most populous country using the Madrid system, and Indian applicants will be able to extend their trade marks overseas. (See the detailed report in MIP)

What does this mean for trademark owners in the light of the Trade Marks Act, 1999?

1. Date of priority

While there has been a great deal of hue and cry in the USA (with the adoption of this Protocol), about the change in the date of priority (basically, instead of being calculated from the date of application in that, it an also be calculated from the application of the first convention country), in India, Section 11, read with Section 154(3), already embody the Protocol concept. Hence, no amendment would be necessary.

2. Removal of a mark on grounds of Non-Use

At the present moment, under Section 47 of the Trade Marks Act, 1999, a mark is liable to be removed from the register on grounds of non-use upon fulfillment of the following conditions:
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him…
(b) that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or
(c) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being…”

The Protocol would affect this provision in three ways:

1. Unlike Section 47 the protocol requires a mere signed declaration of intention to use a mark. Once such a declaration accompanies an application, the Protocol has no requirement for evaluating the bonafides of the applicant.
2. After the expiry of the 5 year period, the trademark becomes absolute. Hence, even if there is ‘no use’ for a continuous period of 5 years as under Section 47 (b), the trademark cannot be cancelled.

3. Cancellation/ Rectification of basic application

The main flipside to this system which is true across the board to India as well as other signatory countries is that the international registration goes if the basic application is rejected, revoked, cancelled or otherwise invalidated. This is rather unfair to the registrant as the grounds for cancellation/ rectification vary in stringency from country to country.

For instance the current Indian position in Section 47 lays down fairly stringent requirements to disprove non-use (the use of the term “bonafide” in conjunction with both actual use as well as intention to use), which, if not satisfied, may render a mark liable to rectification. Such a set of yardsticks may not be the norm for rectification of a mark on grounds of non-use in another contracting state, yet, if the basic application in India is rectified, the international registration is also automatically invalidated.

This is a serious drawback in the Madrid system. If an analogy were to be drawn to the PCT system, the understanding is clear that each country has a separate set of examination procedures and requirements and hence although the prosecution history of an application in one convention country is required to be provided in another under the PCT system, the grant or rejection of a patent in each country will be governed by the applicable national laws and there is no automatic revocation of a patent.

5. Copyrightable elements in a trademark

The present Indian statute in Section 14 requires the written consent of any living person or that of the legal heirs of any dead person to the use of any “element” (whether pictorial or literary) which suggests a connection with the said person.
Curiously the provision is not extended to all elements of a copyrightable nature which are sought to be registered as a trademark or a part thereof. Thus any artistic work which would otherwise be the subject matter of copyright protection can, theoretically under the Indian trademark act be protected as a trademark and thereby given perpetual statutory monopoly.

Section 5bis of the Madrid protocol however lays down a categorical prerequisite for the furnishing of “documentary evidence of the legitimacy of use of certain elements incorporated in a mark…” which include armorial bearings, portraits (not necessarily of persons living or dead), honorary distinctions, titles, etc. thereby carving out clear territories for legitimate trademark usage of subject matter that ordinarily deserves copyright protection from one that is registered as a trademark only to increase its statutory life.

Given that the Madrid protocol strives to achieve harmonization of trademark procedure – the definitions of what is registrable as a trademark may also require a dekko at this stage.

6. Address for service

Currently the structure of the Trade Marks Act 1999 is such that irrespective of the place of domicile or principal place of business of the applicant/ opponent, they have to furnish an address for service in India as the Trademark Registry will not send out notices to an overseas address. [See Section 18 (3)]. This provision, despite the practical difficulties that will creep in after India’s accession to the Madrid protocol is not likely to change. The reason is simple. In India today, only a person who is a qualified legal practitioner under the Indian Advocates Act can be a trademark agent – this provision does not grant reciprocity to practitioners enrolled under laws of different countries. This debate has been going on for a while now as to whether India will open its doors to foreign lawyers or not and so far the answer has been a “No”, compelling reasons, notwithstanding. A change in the seemingly innocuous provision requiring an Indian address for service to facilitate foreign applicants/ opponents could actually open this Pandora’s Box as it would tantamount to granting recognition to foreign trademark agents and consequently have the effect of subverting the Indian Advocates Act.

This is by no means an exhaustive analysis of the Madrid Protocol in the light of the Indian trademark law but just an attempt to throw up some issues that came to my mind; if anything, to get each one of you to think and start a dialogue!