Guest Post: More on Google's European battles

It gives me great pleasure to introduce this guest post from Mr. Arun Mohan. Arun completed his LLB from the London School of Economics (LSE) and is currently an associate with Mohan Associates, Chennai. His focus is primarily on IP and commercial litigation.

Dutch Court applies the ECJ Google ruling.
By Arun Mohan

There have been a string of judgements around the world, on the usage of registered trademarks by competitors in Google’s Adword program.

The Dutch Courts have been the first to apply the ECJ ruling on this issue. The ECJ on 23rd March 2010, in deciding 3 matters held a trademark owner can prevent a competitor from using his registered trademarks as a keyword in Google, only if a consumer would be deceived, misled or confused on account of such usage as to the origin of the goods or services. Google per se was relieved of any charge of infringement for storing and offering such registered trademarks as Keywords in its Adword program.

The mark in question was TEMPUR, used for mattresses and other “sleeping products”. This mark was being used by 2 competitors (Energy+ and Medicomfort) as an Adword, to attract customers to their site which did not offer any mattresses or other products made by TEMPUR. They further used the mark as a Keyword in Google and as meta-tag in their website.

Aggrieved by the diversion of traffic, TEMPUR pressed for infringement action against its competitors. The competitors claimed the same to be required for the purposes of lawful comparative advertising. However, Energy+’s advertising was held to be illegal as the advertisement does not make a clear distinction between the competitor’s products and those offered by Tempur. The Court’s therefore held that this would case the reputation of TEMPUR to be rubbed off on the products, which is illegal. The Court does not explore confusion in the minds of the consumer, as discussed in Google, and provides a significant addition to the standards for an action of infringement in such cases. Conversely, Medicomfort was found not to be liable, as its adverts clearly distinguished its products from those of TEMPUR, thereby providing no scope of confusion in the minds of the consumer. The issue of TEMPUR’s goodwill being attributable to Medicomfort was not discussed.

The case throws open many interesting issues. Firstly, what is comparative advertising on the internet? When confusion is possible as to the origin, does the advertisement still qualify as comparative advertising? The most interesting aspect is of course, the addition of the standard of reputation being wrongly attributable to a competitor.

I find that this case only highlights the ongoing confusion in this matter. At an aside, you may recall the ruling of Hon’ble Justice Ram Subramanian, Madras High Court in this regard. The ruling of the Madras High Court, may potentially be the only clear finding against Google across the world. A quick perusal of the order would reveal that the Court finds such usage of trademarks to be “commercial use” under the Trademarks Act, and hence actionable for infringement and passing off. However, in that case the court held that nature of the mark (Bharat Matrimony) being descriptive and essential to the trade, the injunction could not be granted. The Order significantly points out that an arbitrary trademark, not being generic or descriptive in nature, would be entitled to protection. The case is presently pending appeal.

Disclaimer: Arun Mohan appeared on behalf of Consim in its litigation against Google before the Madras High Court.

It's not about the Money anymore: CSIR to adopt New Developmental Model for Patenting

(Image taken from here)
Departing from the days of vigorously emulating the Western model of industry-centric IP protection under its erstwhile director R.A. Mashelkar, the Council of Scientific and Industrial Research (CSIR) seems to be all set to follow the path of a people-centric developmental model under the leadership of the current director-general Samir Brahmachari. With globalization often leading to a situation wherein the IP is held in one country, the product is designed in another, and manufactured and sold in some other countries, Brahmachari believes that it has become difficult to gauge the true value of IP that also includes public welfare.

The current model that is going to be followed will involve a three-tiered approach:

For inventions involving high-value technology that requires niche expertise, it’ll continue licensing out at high prices, quite similar to its actions regarding the Institute of Microbial Technology’s clot dissolving drug that has been recently licensed to Nostrum Pharmaceuticals for $150 million.

For inventions where national interest is involved, it’ll co-invest with the industry to commercialize it, as it has been doing recently with Tata Chemicals in Bhavnagar, Gujarat, for producing marine-derived potash, which could result in import substitution worth Rs. 8,000 crore for the fertilizer ministry.

Finally in case of technologies that may have low inventive value, but high social impact, CSIR will license the same for a notional fee — just like it has done with the solar-powered pedal-operated cycle rickshaw that has been licensed to the Kinetic Group for mass-production for postmen and dairy vendors.

This move by CSIR, which can be a precursor to universities focusing on improving welfare through inventions instead of on generating revenues, has been welcomed by Bhaven Sampat, an acknowledged expert in university research and patenting. According to Sampat, placing research results in public domain instead of following the patenting and licensing route can lead to the best possible ‘technology transfer’ in certain cases.

Mashelkar, who is the current president of Global Research Alliance believes the ideal approach to patenting ought to be somewhere midway between the two extreme options advocated by the NGOs on the one hand and body corporate on the other, something that CSIR’s present model is based on. Indeed, CSIR has, with this move, appears to have undergone a complete transformation back from the days when it used to indulge in aggressive patenting and industry-licensing following the U.S. Bayh-Dole Act’s coming into existence. Examples of such earlier aggressiveness can be seen in the establishment of CSIR-Tech, a loosely formed entity with the mandate to commercialise CSIR IP following the U.S. approach, a move that had failed to achieve much success.

What CSIR is at present seeking to come up with is CSIR Ventures, a non-profit entity that will sell/license IP on CSIR’s behalf and raise a corpus to incubate companies. According to Brahmachari, a few financial institutions, including SBI Market Cap, have already shown interest in investing. CSIR Ventures is being modelled on Cambridge University’s tech licensing arm, Cambridge Enterprise, which manages 800 active IP, licensing and equity contracts while working with 1,000 academics.

Following Brahmachari’s arrival at its helm of affairs from 2007 onwards, CSIR admittedly become more selective in patent filing. According to Pushpito Ghosh, director of Central Salt & Marine Chemicals Research Institute (CSMCRI) in Bhavnagar, as many as 50 U.S. patents have been obtained by his laboratory in the last 8 years, which are only going to be commercialized as per the deliberations that would happen in the coming 12th Plan. Laboratories may also set up demonstration units to fulfill the industry demand for “usable” technology. CSMCRI has already established a 0.75 tonne/day plant within its campus to manufacture potash using its own technology which is being licensed to Tata Chemicals. The latter is setting up another 3 tonne/day plant (to be scaled up later) where the department of science and technology will bear 70% of the equipment cost. Another 2,000 square metre reverse osmosis membrane manufacturing unit (for desalination of sea water) is also being set up for large-scale demonstrations.

While institutions are still deciding which way to lean on, the precise nature of university IP as a source of lucrative revenue perhaps needs to be reexamined. This is because the focus on licensing revenues may not be the best way to promote social returns and secondly, because licensing IP is unlikely to generate much income. Brahmachari also agrees to this viewpoint whole-heartedly. He is in fact currently seeking Cabinet approval for transferring some formulations on infectious diseases from government’s Traditional Knowledge Digital Library into the Open Source Drug Discovery programme that he had started three years ago. This, according to him can create new IP, with small scale companies getting chances in the form of know-how to build products, even with giants like Piramal and Ranbaxy getting acquired by other multinationals.

Spicy IP Tidbit: IPASI comes into being

The readers of Spicy IP, especially those hailing from the southern corners of India, will be interested to know of the birth of the nascent organization IPASI (The Intellectual Property Association of South India) on April 26, 2011, i.e. on the World IP Day. The inauguration that had taken place at The Tamil Nadu Dr. Ambedkar Law University, was performed by Hon’ble Justice Mr. Jyothimani of Madras High Court, who wished the best for this democratically formed association also indicated the need for many seminars and educational workshops on IP as well as for better IP support systems to be made available to Micro, Small and Medium Scale Industries.

With Chennai having been for some time the centre of considerable IP interests, as the seat for the Trademark and Patent Office catering to the Karnataka, Andhra Pradesh, Kerala, Tamil Nadu, Pondicherry and Lakshwadeep Islands, as also the IP Appellate Board and the Geographical Indication Registry Headquarters, this move will no doubt be welcomed by many. The spark behind IPASI had been ignited on January 26, 2011, when almost 40 Chennai-based IP practitioners had brainstormed together to fulfill the need for such a body, which was formally registered on some days ago on April 20, 2011.

IPASI primarily aims to promote understanding, unity and development amongst all IP practitioners and stakeholders by way of efforts like building strong relations with the judiciary, academic community and industry. Any participant in the field of IP, including practitioners, academia including professors, students with Honorary Membership by invitation to designated Senior Counsels, Judges and Retired persons of the Trade Marks Registry/Patent Offices are welcomed by the association.

Following is a list of the office-bearers of IPASI:

Members of the Managing Committee and other Committees

1.President: Mr. Perumbulaval Radhakrishnan
2.Secretary: Mr. M. S. Bharath
3.Joint Secretary: Ms. Swapna Sundar
4.Treasurer: Dr. Sudhir Ravindran
5.Executive Members: Mr. A. Prabhakar Reddy, Mr. Jacob Kurian, Mr. T. Srinivasan, Mr. Manoj Pillai, and Mr. Rohan George
6.Policy and Government Affairs Committee: Mr. A.A. Mohan, Mr. Satish Parasaran and Mr. T.K Ramkumar
7.Membership Committee: Mr. Ramji, Mr. Chandhrasekhar and Mr. Satish Kumar
8.Finance and Fund Raising Committee: Mr. Rajesh Ramanathan , Mr. Prem Kumar and Ms. Elizabeth Puthran
9.Events Committee: Mr. K. Harishankar, Ms. Gowri Tirumurti and Mr. Arivazhagan
10. Communication Committee: Ms. Nirmalatha, Mr. Premchander and Mr. A. Lakshminarayan.

The Spicy IP team wishes IPASI luck in all its future endeavors.

To be Labelled Bad is not too Good: Three-N-Products v. Emami Ltd.

(image taken from here)
Case Name: Three-N-Products Private Limited (Plaintiff) v. Emami Limited (Defendant)

Judgment on: 29th January, 2010, Calcutta High Court

Facts: The plaintiff manufactures and sells cosmetic products under the trademark 'Ayur' and 'Ayu' registered in and outside India. The Defendant was marketing products like 'Himani Ayurdhara' and 'Himani Ayucare'. The plaintiff had sought relief in the form of a declaration that the defendant is not entitled to use the plaintiff’s registered trademark 'AYUR' and 'AYU' alone or by prefixing or suffixing any other word or any mark deceptively similar in respect of any goods. Perpetual injunctions were also sought restraining the defendant from infringing the plaintiff’s registered trademark and trade name by way of such use, or from passing off defendant’ products and plaintiff’s. The plaintiff also asked that defendant be directed to obliterate upon oath the word 'Ayur' and 'Ayu' or 'Ayucare', 'Ayurcare' and 'Himani Ayurdhara' and 'Himani Ayucare' on labels, bills, or other packaging materials etc.

Arguments: As per the defendant, the word 'Ayur' is devoid of any distinctive character and hence incapable of distinguishing the plaintiff’s products from any other. Also, all the registrations obtained by the plaintiff in respect of the 'Ayur' mark have been of only a particular stylised representation of the word 'Ayur' within an elliptical device and not the word in general. Moreover, 'Ayur' being an abbreviation of 'Ayurveda' to signify that the products have ayurvedic qualities, and there being hundreds of ayurvedic products in the market, it is not feasible to allow the plaintiff to obtain exclusive proprietary right over 'Ayurveda or Ayurvedic'.

Similarly, 'Ayu' denotes longevity in Bengali, Hindi and Sanskrit, and as such, cannot distinguish the plaintiff's products from any other. While the plaintiff sold its products (having distinctive packaging compared to the plaintiff’s products) only outside India, the defendant did so both in India and abroad and enjoys more commercial success than the plaintiff, hence issues like passing-off does not arise. The defendant had also obtained registration of its 'Ayucare' product in the European Union without any objection whatsoever from any quarter with regard to such registration.

Judgment: The main point of interest lies in the Trial Judge’s reasoning for granting an order of injunction restraining the defendant from using the mark 'Ayucare' similiciter without using the distinguishing feature of 'Himani' in conjunction therewith (the rest of the plaintiff's claim was to await further trial), but not allowing the infringement action in effect. S. 29(9) of the Trademark Act was relied upon to conclude that the plaintiff had only registration in the "label mark" of the words 'Ayu' or 'Ayur', and that the right that the owner of a device or label mark obtained is somewhat similar to copyright, it being as much the writing or etching in a device or label and the design and colour combination thereof over which registered proprietor gains rights in the manner of depiction thereof.

According to the Trial Judge, the words "the registration thereof shall not confer any exclusive right" appearing towards the end of S. 17(2) of the Act have to be understood in the context and the import of such words is that the registration of the composite mark will not confer any exclusive right as to the part of the composite mark.

On appeal, the Calcutta High Court also agreed to this decision and opined that in case a registered mark is made up of several distinct components, such proprietor is entitled to cite one distinctive part as being inseparable from the whole registered or such distinctive part and thus, can assert a right over the distinctive part. But as pointed out in Section 17 (2) (a) of the Act, such assertion has to be in conformity with the law of passing off and may not be made in aid of infringement. Based on this argument, the court held that the plaintiff cannot maintain an infringement action, since he was only alleging infringement of a part (the defining word Ayur) and not the exact mark (including similar depiction, style etc.)

The court was also of the view that the word "Ayu" or "Ayur" cannot be said to be the particular invented words of the plaintiff for denoting its goods bearing "no meaning". The plaintiff cannot claim exclusive right over the word "Ayu" meaning "longevity" and similarly, over the word "Ayur" denoting its connection with Ayurveda. The lack of similarity between packaging and overall get-up of the goods also led the court to believe that defendant had no dishonest intention to pass off its goods as that of the plaintiff as would appear from the fact that it has further added the prefix "Himani" prior to the word "Ayu" or "Ayurcare". With regard to passing off, the Trial Judge had held that usage of prefix "Himani” was sufficient to address confusion in the minds of the consumer and thus the defendant should not use only the word "Ayucare" without using the word "Himani".

The court also said that even if somebody's business is restricted to export sale alone but he’s a prior user and at the same time, earned fame in that trade name in a foreign country, then he has right to pray for injunction for restraining the defendant from passing off its goods as that of him, notwithstanding the fact that he has no sale of such product for the time being in this country. However, in such a case, the plaintiff must show that such goods sold in foreign countries has earned such a fame that although the people of India have not used such product, they would be eager to purchase the same under the impression that those are the famous goods of the plaintiff by merely hearing the name of such product.

The main reason this case has been pointed out before the Spicy IP readers is the possible debate that this decision can spark off regarding whether this restricted protection accorded to label marks consisting of more than one distinctive components is justified, especially in cases where the mark may consist of a single word which can be considered sufficient to distinguish between that mark and any other. Indeed, similar concern has been voiced by Mr. Mohan Vidhani, a respected patent attorney, who has kindly brought this decision to the notice of the Spicy IP team and is hoping, along with the team, for the readers to voice their usual incisive opinions on this issue.

Celebrating World IP Day: A Murderous Design!

Here's wishing all our readers a wonderful World IP Day! As many of you know, WIPO is focussing on "designs" as the key theme for this years' IP day.

And this offers me a perfect opportunity to throw up an idea I've been harbouring for a while now, namely that we drive a deep stake into the heart of the design regime and bury it once and for all!

Of course, the actual proposal is not as dramatic as the short snippet....and perhaps a wee bit technical....but then, what would SpicyIP be without a bit of drama?

Here is my tentative proposal and the reasons for why I think we should scrap designs and have it subsumed within the broad rubric of copyrights (at least in Indian context). I approach the issue from the vantage point of section 15(3) of the Copyright Act, a particularly problematic provision that has had the most adroit of legal jugglers at their wit's end.

In essence, this section provides that if something is both design registrable and copyrightable, and is not in fact registered as a design, then it loses both design and copyright protection, if 50 or more articles corresponding to that design are industrially produced.

This section was notably invoked in the Scrabulous case to deny copyright protection to a board that had not been registered as a design. The rationale underlying this provision appears to be that something capable of design protection and prone to being industrially produced ought not to merit a 60 year + protection in the way that a copyright does.

However, if this be the aim, could it not be more efficiently achieved by scrapping the designs act altogether and bringing design protectable subject matter within the fold of the copyright regime?

The Designs Act provides for the registration (and consequent protection) of a wide variety of subject matter including patterns, ornamentation etc. Most of this subject matter would easily qualify as “artistic works” under the Copyright Act. In other words, if the Designs Act is scrapped, one could easily qualify such subject matter as “artistic works” and claim their protection under the Copyright Act.

However, in order to ensure that such designs susceptible to industrial production do not merit the same number of years of protection as an ordinary copyright, it could also be provided that if any artistic work is produced more than 50 times, then its period of protection shall be 15 years from the date of production of the first article and not 60 years from the death of the author.

Further, in order to ensure that all erstwhile design protectable subject matter is protected as “artistic works” without leaving any room for ambiguity, the section on artistic works ought to be expanded to include all such categories.

Voila! Wouldn't this make for a much simpler and easier to administer regime? And one that helps us achieve tremendous cost savings....savings for the applicant (who does not have to pay for design registration per class and per hour to their attorney), for the government which does not need to maintain a separate design registration department...and savings for potential litigants who are subjected to the wrath of section 15(3)...

On this auspicious day, may we exhort you to wear your thinking policy hats and interrogate the design behind the design regime; and ask if the time has come to design an alternative regime that is aesthetically more pleasing and functionally more efficient than the prevalent one. One proposal is to subsume designs within the broad rubric of the cost efficient copyright regime, as I suggest. Are there others?

ps: image from here

15 Years of TRIPS: Rethinking IP and Development

The Centre for WTO Studies (CWS) has been at the forefront of driving national IP and trade policy in India. The reins of this institution passed on recently from noted scholar Biswajit Dhar to Abhiijt Das, a thought leader who drove some very important policy initiatives in his past avatar as UNCTAD's head in India; most notably, for those of us in the IP community, he was instrumental in shifting the focus away from merely registering GI's to helping translate the registrations into tangible benefits for traditional artisan communities and the like.

The Centre for WTO Studies (CWS) boasts some very accomplished names. Most in the IP circuit are familiar with Madhukar Sinha, the ex registrar of copyrights who is credited with ushering in an era of transparent and open IP policy making in India by opening up the copyright amendment bill to public scrutiny and debate. He is also the brain behind the institution of IP Chairs across the various leading institutions in India.

CWS, in partnership with the South Centre, Geneva has just put together a wonderful 2 day seminar to introspect on “15 years of TRIPS: Rethinking Intellectual Property and Development”. For those interested, this event is slated for 28 -29 April 2011 at the Indian Institute of Foreign Trade (IIFT), New Delhi.

The program boasts some very reputed names in the IP and Development space, including Carlos Correa (author of a leading treatise on IP and TRIPS), Martin Khor, Fred Abbot, German Velasquez, Sanya Reid Smith, Viviana Munoz, Ambassadors S Narayanan and B.L. Das, Biswajit Dhar, Sunil Mani, N.S. Gopalakrishnan, DG Shah, Anand Grover and Leena Menghaney. The keynote address will be delivered by the Hon'ble Minister for Commerce and Industry, Anand Sharma.

Madhukar Sinha of the Centre for WTO Studies has requested that those who wish to participate may please send him email at madhukar[at]iift.ac.in. Since the capacity is limited, participation would be restricted to ‘first-come-first-served’. To access the complete programme, see here.

Dr. Wobben appeals to Madras High Court against IPAB Orders

Aditya Reddy, an advocate at the Madras High Court informs us that Dr. Wobben, owner of Enercon GmBH, has filed writ appeals before the Madras High Court, on the 20th of April, 2011, against the Orders of the IPAB revoking several of his patents. The appeals were heard a Division Bench of the Madras High Court. Although the High Court refused to stay the orders of the IPAB, it did pass a status quo order, whatever that means!
Image from here.

Surprisingly, sources familiar with the litigation, confirmed that Dr. Wobben is objecting to the IPAB’s decisions on the grounds that Mr. S. Chandrashekharan, who was the technical member on the IPAB, delivering all 12 orders, was the Controller General of Patents and has signed all the patent certificates for the patents which he had revoked. There have been cases such as the Novartis Glivec case and the case of Magnotteaux International v. Asst. Controller of Patents & Designs, where Mr. S. Chandrashekharan has been restrained from hearing appeals in his capacity as a member of the IPAB. However both those cases were quite different from the present one because in those cases Chandrashekharan was the Controller who had also granted the patents, in the sense that he was the supervising Controller personally involved in the decision to grant the patent. The Wobben patents however are slightly different in the sense that Chandrashekharan was never the supervising Controller, his signature on the Patent Certificates was merely ministerial in his capactiy as the Controller General. This is therefore a very weak ground of appeal. Moreover in both the earlier cases this argument was taken at the stage of the IPAB itself unlike the present case where Wobben is raising this argument only at the appellate stage, something which is clearly not permitted by the law.

As reported earlier the IPAB had revoked 12 patents belonging to Dr. Wobben in response to revocation petitions filed by Enercon India Ltd. (EIL), a joint venture between the Mehra Group and Enercon GmBh, a company owned by Dr. Wobben. Earlier on the 16th of February, 2011 Dr. Wobben had surprisingly filed 3 writ appeals before the Delhi High Court, appealing against 3 of the revocation orders by the IPAB. Sources familiar with the litigation confirm that these 3 appeals pertain to the patents which are the subject of patent infringement suits already pending before the Delhi High Court. Predictably the writ appeals before the Delhi High Court got bogged down on the issue of jurisdiction and the Delhi High Court has reserved orders on whether it has the jurisdiction to entertain these appeals.

The remaining 9 revocation orders of the IPAB are the subject of the appeals recently filed before the IPAB. Apparently the first hearing before the Madras High Court was quite a high profile hearing with Dr. Wobben being represented by Senior Advocate P.S. Raman and Delhi based Senior Advocate Sudhir Chandra Agarwal. The appeals for Dr. Wobben are being handled by Anand and Anand which flew down a significant component of its litigation team which includes Partners Mr. Pravin Anand & Ms. Binny Kalra. EIL was represented by Senior Advocate Arvind Datar briefed by Mr. Parthasarathy, Senior Partner at Lakshmi Kumaran & Sridharan who had successfully argued all of the matters before the IPAB. Also present in the court-room was a team from AZB Partners which is in charge of EIL’s litigation. The next hearing in the matter is slated for June.

Something rotten in the Copyright Office?

Over the last year we have been filing multiple applications under the Right to Information Act, 2005 with several Central Government Ministries. Some of the Central Government ministries like the Ministry of Environment & Forests, Department of Industrial Policy and Promotion and National Biological Authority have been exceptional in their responses and have kept with the letter and spirit of the Right to Information Act, 2005.

The Copyright Office however is a completely different story. Our latest RTI Application asking for information on the International Copyright Order, 1999 and the Copyright Societies dispatched on the 28th of February, 2011 has still not been replied to. In the application I clearly explained to the Public Information Officer that he was required to send us a cost estimate on the photocopying charges and dispatch the information on receipt of the amount, all within 30 days. Till date we have not received a single reply from the Copyright Office, despite the India Post website confirming that the letter was delivered to them on the 3rd of March, 2011 itself. The RTI Act requires the Copyright Office to reply within 30 days.

In normal circumstances I would not have used this as damning evidence but let me relate some of our previous experiences with the Copyright Office.

I had filed the very first RTI Application requesting for information on the Copyright Societies in July, 2010. The PIO V.K.Saxena replied with the ridiculous answer that the information was available on the website. Eventually after appeals and a lot of emails we finally got the information six months later in January, 2011! Why this delay? Who was the Copyright Office trying to protect? Why did they make this so difficult for us?

Now even after I got the information on IPRS and PPL, I shockingly discovered that somebody within the Copyright Office had removed the 6 most incriminating pages from the file that was sent to me. If you click over here you’ll see IPRS’s annual report for the year 2006-07. The covering letter from Rakesh Nigam CEO of IPRS to Mr. Raghavendra, Registrar of Copyright mentions as its first enclosure, the Minutes of the Annual General Meeting (AGM) for the year in which IPRS carried out the illegal amendments to the Articles of IPRS. The Minutes however were missing from the copy sent to us. It is however confirmed that the Copyright Office had received copies of the minutes because if you look at the upper right hand corner you can see the copyright office internal file numbering and 6 pages are missing as per this numbering. After an email to the Registrar pointing this out to the PIO Mr. V.K.Saxena, we were sent the six incriminating pages, which we then blogged about over here. These six pages do not bear the Copyright Office internal file numbering. I don’t know where Saxena got these from.

I would have thought that V.K.Saxena would have learnt something about the RTI Act in the last 6 months but once again the moment we ask for information pertaining to the Copyright Societies, we hit a wall of silence.

The Copyright Office should realize that in this season of PILs, scams and allegations of corruption it will very, very, very easy to get a High Court or even the Supreme Court to investigate the happenings in the Copyright Office especially since the Copyright Office has not even bothered to investigate the obvious scandal at IPRS despite the revelation of hard evidence on this blog. I for one do not have the patience to file any more appeals to the Registrar of Copyright. There will however be consequences for Mr. Saxena’s actions or rather the lack of them.

Breaking News: Darjeeling still lounges in Kolkata, says HC

In a decision likely to have interesting ramifications on the Geographical Indications (GI) marketplace in India, the Calcutta High Court today held that the word “Darjeeling” is not the exclusive right of the Tea Board, deciding in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge. (Image from here.)

The judgement, which is likely to go down as one of the earliest and most important cases dealing with GIs in India, was delivered by Sanjib Banerjee, J., who we understand has practiced in Intellectual Property Law in his previous avatar as a lawyer, which adds considerable flavour to the affair (pun entirely intended).

GIs versus trademarks

The decision is yet to be made available online, and we shall give you a detailed report on it as and when. Meanwhile, Mr S Majumdar, of S Majumdar & Co., Kolkata, who was handling the case, and whom we'd like to thank for providing us valuable information on this, informs SpicyIP that this decision makes some relevant distinctions in comparing the laws dealing with GIs and trademarks.

In particular, he points out that the decision treats GIs differently from statutorily protected "well-known trademarks", the latter being entitled to stronger protection when it comes to issues of dilution.

“Unfair competition can be tackled through the GI law to the extent that the accused product/services would amount to misrepresentation and would eventually lead to passing off. The dilution component in GI would practically have no application unless directly related to the goods for which the GI is protected. Thus the GI proprietors should be realistic in enforcing the GIs,” he says.

Quick facts

For those of you who do not have the patience to wait for the judgement, here’s a quick overview of the case, so far as we know it:– The Tea Board is the registered proprietor of the GI “Darjeeling” and the logo of a woman holding tea leaves under the GI Act, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”.

They sued the Indian conglomerate ITC for using “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar. The suit appears to have covered several grounds, including infringement of the GI and the certification trademark, as well as for passing off and dilution.

The Tea Board attempted to argue that the use of “Darjeeling” in connection with any goods or services (not necessarily tea) would be violative of their rights. The defence appears to have successfully countered that, in view of the court’s limited interpretation of dilution in the context of GIs – limited only to the goods a GI is registered in, and not to the whole gamut of goods and services otherwise protected under GI and trademarks law.

There are some other interesting issues that have been raised in the case, including around prior use (ITC Sonar was using “Darjeeling Lounge” in 2003, whereas the GI Act came into force only in 2005). However, we will be better positioned to discuss this when we lay our hands on the judgement, which we understand is to be uploaded sometime tomorrow.

Indian GIs: at home in the world?

By way of a parting shot, I wonder how ironic it is that the Indian Tea Board should have lost a dilution case on home turf, while succeeding in other jurisdictions, notably in France, as this 2007 news item from the Hindu suggests.

This decision also makes it all the more urgent for the GI community to regroup and assess with more clarity as to how the post-registration and enforcement mechanism in the GI system is to work in the times to come.

Hazare Hunger and Policy Making

The Hazare anti corruption hunger strike captured the imagination of the nation for the last few weeks.

As many of you know, corruption is an issue that is of immense interest to SpicyIP, which has attempted to cure this evil plague in the IP space through the deployment of one principle, namely that of transparency.

Needless to state, corruption is a complex multifactorial issue and we need to hit it from several angles, the law being just one of them.

Hazare and crew have earned both bouquets and brickbats. Without delving into the legitimacy of a hunger strike in a supposedly functioning democracy, I merely reflect (in this Times of India piece,) on the opportunity that this agitation provides to open up the law/policy making space in India. The piece includes a detailed reference to the Indian Bayh Dole bill and the abysmal level of stakeholder and public consultation that one witnessed during that process.

Since the online version of the piece can be accessed only after your register (freely) on the TOI site, I'm reproducing it below:

"It fell several notches short of a Tahrir square. But it was enough to capture the imagination of nation, a nation that has witnessed scam after scam in the recent past, and where, attempt after attempt to introduce an anti-corruption law failed for four long and continuous decades.

Indeed, thanks to a man who threatened to take his own life, "Lokpal", a term that might have had raised eyebrows till a month ago, has now gained common currency. Some see the man as an enlightened saviour of sorts. Others as a dangerous blackmailer at the brink of subverting a precious democratic process that many believe we enjoy in India. I come neither to praise Anna Hazare nor to bury him. But to simply point to an enormous opportunity that his act of starving presents for us as a country.

That Hazare gained enormous public support by threatening to sacrifice his own life at the altar of an anti-corruption principle that he staunchly believes in is beyond doubt. However, what of the implementation of this principle through the technicality of a law? It's a fair guess that many of those who came out in support through rallies and candle light processions would have failed to read the bill, be it the government "Lok Pal" version or any of the many civil society "Jan Lok Pal" versions.

It is this participatory deficit that the Hazare movement must seek to redress. It must leverage the popular sentiment it has thus far gained by actively encouraging the public to participate in the law-making process. That government laws are drafted in secret for the most part is no new revelation. Even at the stage of parliamentary scrutiny, most intensively felt during the myriad "sittings" of standing committees, the ones consulted are a select few;not the public and in most cases, not those with subject matter expertise.

To this extent, law and policy-making processes in this country suffer from a serious democratic deficit. Granted that the formal processes (such as the act of voting by elected representatives, many of whom may have never read beyond the title of the bills presented) are all complied with, but substantively, the process is a largely non-deliberative one, with bills being presented and voted upon, for and at the behest of a select few.

Apparent government efforts to instill public participation are far from optimal. Many a time, bills are never released for public views or participation. And even when they are, the websites that call for participation are far from welcoming. The Indian "Bayh Dole" bill, seeking to regulate the management of intellectual property at universities, is an excellent example of the sheer deficit in the process. A law firm with very close ties to the government was tasked with drafting the bill. It borrowed significantly from a US legislation on the same theme, sans any consideration of the techno-cultural specifities of India, and even more problematically, sans any consultation with key stakeholders, namely universities and public-funded research institutions.

The bill was then secretly peddled between different ministries. After much public hue and cry, the bill was made available on a government website, but with no indication that public comments were welcome, and after four years since the first draft of the bill. Subsequently, even at the stage of parliamentary review by a standing committee, it was not until the Indian Institute of Science went to the press claiming that it was never consulted, that the committee relented and called for wider stakeholder participation.

Thanks to this participation, the committee was able to appreciate that the bill was fundamentally flawed. It therefore directed the government to make extensive changes to the bill. By this time, five years had elapsed and the government was forced to go back to the drawing board. A process that fostered wider consultation earlier on in the lawmaking process would have saved us all this wasted time and effort.

Given this backdrop, the moral success of the Hazare agitation throws up an excellent opportunity to open up this closed law-making process and to pave the way for more deliberative discussions. Unfortunately, the Hazare movement has come across as controlled by a select few who wish to replace the government coterie with their own. Further, several discordant notes have already been struck by the various statements by Hazare, his lieutenants and others that he chose to share stage with. Little wonder then that the movement has attracted the ire of many who are suspicious of the threat to our democratic process.

Questionable as their means are, Hazare and club have broken new ground by gaining admission to a closed-door law making process. It would be a travesty if they now replicated the hegemony they seek to challenge. They must now leverage the moral capital gained so far and translate it to a call for wider and more informed public policy and law making. This must involve not just educating and sensitising the public, but also our ministers and parliamentarians.

For, in the allegedly selfless act of starvation by an endangered Gandhian species lies the hidden potential to begin the slow process of transformation from a largely formal democracy to a more substantive and participatory one."

ps: image from here.

Patent Office enables online file inspections

As a part of its continued digitization/transparency drive the Patent Office has started hosting scanned copies of entire patent files on its IPAIRs system which can be accessed over here. The scanned copies now available on the website, includes all correspondence between the patent office and the patentee, all forms, abstracts and specifications filed by the patentee with the patent office. Image from here.

This is basically an attempt to duplicate the features available on the website of the European Patent Office and in effect enables any person to carry out an online file inspection. The Indian effort however is still far from completion. As of now, there appears to be a great inconsistency in the information available from different patent offices. For example the Kolkata patent office is making available Form 27s or working statements while other patent offices are not doing so.

In order to access the particulars of any patent file, just key in the application number into the IPAIRs system to arrive at a webpage with several tabs including one of ‘view documents’. As a part of a trial run we have hosted the entire file wrapper, as sourced from the Patent Office website, of the infamous Ramkumar Patent on our website. The following documents of the Ramkumar patent can be accessed from below:

(i) Abstract

(ii) Claims

(iii) Correspondence from Ram Kumar to the Chennai Patent Office

(iv) Correspondence from the Chennai Patent Office to Ram Kumar

(v) Form 2 - Patent Specification

(vi) Form 2 - Duplicate

(vii) Specification - Continued

(viii) Form 1 - Application for grant of patent

(ix) Request for Examination and other Correspondence from Ramkumar

Of extreme relevance is the correspondence from the patent office to the Ramkumar and his replies. In the First Examination Report (FER) of the Patent Office dated 30th November, 2005 the examiner has raised very pertinent objections to Ramkumar’s patent application. Amongst these objections was the fact that the patent application did not adequately describe the invention it was claiming and that it was barred by Section 3(f) of the Patent Act, 1970. Ramkumar’s replies however are silent on any of the dozen plus objections raised by the Patent Office and yet the same examiner who raised objections went ahead to grant the patent. Why?

Guest post: Multiple litigations regarding 'Thank you' movie

Suchita Saigal has sent us this very interesting post on the various disputes surrounding the recent Bollywood movie 'Thank You'.

Three Dirty Doggies surrounded by controversy

by Suchita Saigal

Is movie mein action hain, drama hain, suspense hain aur emotion hain … Maybe not! The Thank You movie reviews won’t inspire me to make a weekend plan to watch it and I don’t think I will be missing much since all the drama seems to be taking place outside the cinema halls.

In this post, I will examine various controversies surrounding the movie. The first set of controversies relates to the use of the 80s number Pyar Do Pyar Lo in the movie and the second set of controversies relate to the title of the movie. The last section of this post will briefly consider at the novel way (?) adopted by UTV to fight piracy.

Pyar Do Pyar Lo

The producers of Thank You are facing copyright infringement suits in the Delhi and Bombay High Courts for the use of the song Pyar Do Pyar Lo in the movie. The case in the Bombay High Court has been filed by Feroze Khan Films (FKF), the producers of the original movie Jaanbaaz which featured this song. FKF had sought an interim injunction from the High Court to restrain UTV from using the song in the film on the basis that UTV has not sought license. In order dated 7 April 2011, the Bombay High Court refused to grant relief on the basis that FKF was too late to raise copyright infringement claims over the song. Justice DY Chandrachud observed that, “there has been a gross and unexplained delay by Feroze Khan Films in filing the suit. Interim injunction cannot be given at this stage…. and the producers have already spent Rs 60 crore on the making of the film.”

As for the arguments in the case, it is reported that UTV is arguing that it purchased the rights of the song from Music India (one of the defendants in the case), the company to which FKF had assigned music rights of the movie Jaanbaaz. FKF disagrees and is contending that the assigned music rights of Jaanbaaz to Music India Limited only for a period of two years and after two years, title reverted to FKF. While declining the interim injunction Justice DY Chandrachud noted that, the agreement between FKF and Music India dated 11 December 1984 and supporting documentation produced before the court did not, in any manner, restrict the assignment granted to Music India. More specifically, there was no evidence to support FKF's two year claim. The High Court has asked UTV Productions to file a reply to FKF’s allegations by April 28. For our readers interested in following this case, please note that the suit number for the case is SL 946 of 2011 and details of the parties involved are:

(i) FK Films Ltd. - Plainitff

(ii) Polydor of India Ltd. - Defendant No.1

(iii) Music India Ltd. - Defendant No. 2

(iv) Universal Music India Ltd. - Defendant No. 3

(v) UTV Motion Pictures - Defendant No. 4

The case in the Delhi High Court (Suit No. 850/2011) has been filed by Bollywood music composer Anandji Virji Shah. On 6 April 2011, Justice Sunil Gaur declined to grant an interim injunction in favour of Anandji Virji Shah to restrain the producers of Thank You from releasing the movie. Anandji's claims copyright infringement. It isn’t clear how his claim ties in with the claim made by FKF as owners of copyright in the song before the Bombay High Court. Note that, the defendants, contesting Anandji's locus to file the case, produced a License Agreement dated 13 August 2010 pursuant to which defendant no. 7 is the sole and exclusive owner of the copyright in the song (including the underlying musical work). In light of these circumstances and the lack of clarity surrounding the ownership of the song, the High Court cited the decision of the Apex Court in Indian Performing Rights Society Limited v. Eastern India Motion Pictures Association and Ors. (AIR 1977 SC 1443) to state the proposition that, "…since, the plaintiffs had composed the music for the song for valuable consideration at the instance of the producer of the film, so the film producer became the first owner of the copy right therein and no copyright subsisted in the plaintiffs." The Court concluded that since the issue of title to the song and the rights vested therein could only be settled after the defendants were heard, a prima facie case had not been made out and hence an injunction could not be granted.

Title

This isn’t the only controversy surrounding the movie. It is reported that Pooja Bhatt's Fisheye Network had also filed a suit in the Bombay High Court seeking a stay on the release of the movie. Her case being that Fisheye had registered the title Thank You with the Association of Motion Picture and TV Programming Producers (AMPTPP) in 2005 and when an attempt was made by UTV, (producers of Thank You) to register the same title, Fisheye had complained to AMPTPP.

UTV contended that it registered the title with Indian Motion Picture Producers Association (IMPPA) in 2008, and when the dispute arose, it was settled by both the associations agreeing that the title is with UTV.

Hearing the dispute, Justice DY Chandrachud refused to grant an interim injunction on the basis that, "Fisheye was aware since May 2005 that UTV was using the title Thank You. Prima facie there is no copyright as such in a title, hence the court would not be inclined to give interim injunction at this stage. The movie is slated for release this weekend and the producers have already spent Rs 60 crore on the making of the film."

The court however kept the suit pending and has directed UTV to file reply by June 7.

The interesting bit is the treatment of the trade practice of registering movie titles with various associations. In case of Thank You Justice DY Chandrachud held that, "there wasn’t any statutory basis for the trade practice which forms a foundation for this suit." In another case, High Definition Television (P) Ltd. v. Association of Motion Pictures and T.V. Programme Producers and Others (Suit No 668 of 2011), involving an application for interim injunction on similar lines, Justice DY Chandrachud does account for the rules of the Association of Motion Pictures and the process of registration of movie titles. He recognizes that the rules allow the association to allot a registered title to new third party in the event that the original applicant has failed to use the title for a period of three years post registration and does not have a satisfactory explanation for his failure. The contested title in this case was Mausam.

Hence, given that there is no copyright in movie titles and trademarks can subsist in limited circumstances, would registration of movie titles with various associations establish property rights in the same?

Kanungo Media (P) Ltd. v. RGV Film Factory, 2007 (34) PTC 591 (Del)) and Sholay Media & Entertainment v. Parag M Sanghavi & Ors., CS (OS) No. 1892 of 2006 are the 2 cases which explain Indian law on property rights in film titles. As our readers would be aware, Shwetasree Majumder had written a very interesting post on the Sholay saga and trademark rights in film titles and Shamnad has written a very detailed post on the Kanungo case. To quote from Shamnad's post, in Kanungo, the Delhi High Court observed that, "film titles fall into two categories: titles of series of film and titles of single copyrighted works. Protection is certain as regards titles of series of film, and such titles enjoy standard trademark protection. However, the court found that in order to extend this protection to the title of a single copyrighted work, it must be proven that such title has acquired a wide reputation among the public and the industry - that is, has acquired secondary meaning. Therefore, in order to obtain an injunction the onus is on the plaintiff to establish that its film title has acquired secondary meaning."

Novel way to fight piracy This post seems to be unending. However, I promise this is the last section!

The Delhi High Court granted an order in favour of UTV Software Communications Limited wherein it restrained cable operators nationwide from distributing, telecasting and broadcasting the movie Thank You and/or otherwise infringing the copyright. Further, the SHO/superintendent of concerned police stations have also been directed to render assistance to UTV for the purpose of enforcement of the order. It is reported that the order restricts 1,600 known cable operators and unknown persons also from telecasting the film. This exercise seems pretty pointless. Copyright infringement is illegal and I fail to understand an order which tells individuals not to commit illegal acts.. really? I must be missing something..

IJIEL: Special issue on Space Law and IEL

I'm happy to announce on behalf of Abhimanyu George Jain, Chief Editor of IJIEL, student of the graduating batch at the NLSIU and a living example of the religious diversity of India, the release of a special issue of the Indian Journal of International Economic Law (IJIEL).

The special issue focuses on the interface between space law and international economic law. This volume has tried to examine some of the many fascinating international economic and financial law issues emerging from man's foray into space. This includes the role of WTO law in regulating private and public space activity, choice of law issues for international agreements, including financing agreements, anti-competitive behaviour, application of the intellectual property regime to space, etc.

IJIEL is a peer-reviewed journal produced by the National Law School of India University (NLSIU), Bangalore, funded by the Indian government sponsored chair on WTO law at NLSIU. The mandate of the journal encompasses all aspects of international economic law, especially from a developing country perspective. Queries regarding submissions and subscriptions may be directed to ijiel@nls.ac.in or tasneemdeo@gmail.com.

Copyright Compulsory Licensing Disputes: Copyright Board lacks Jurisdiction

In this post, I will cover two decisions that deal with the question of whether the Copyright Board has the power to grant an interim compulsory license based on interim royalty rates.

In this case of Reliance Broadcast Network Limited v. Super Cassettes Industries Limited, the applicant (Reliance) filed an application on 9th November, 2011 under S.31(b) of the Copyright Act for grant of compulsory license. The applicant demanded an interim order to be allowed to broadcast the songs, based on royalty rates deemed by the applicant to be reasonable.


What does Section 31 of the Act deal with?

Section 31(b) of the Indian Copyright Act deals with compulsory licensing. It states that if an applicant under the section demonstrates that the owner of copyright has refused to grant a license to it for the purpose of broadcasting the same to the public, then the Copyright Board may grant such a license, when a prima facie case is made out.

Arguments of the Applicant (Reliance & Music Broadcast)

The counsel for the applicant rested his arguments on a bare reading of Section 31, indicating that the Copyright Board has the right to direct the grant of such a license and that it has the power to grant interim relief which is ancillary to, and in aid of the final relief.

1. Reference was made to the order in appeal in the case of Music Choice India v. PPL where the court did not overrule the finding of the single judge of the trial court holding that grant of interim relief by the Copyright Board was permissible, although it did not express as opinion on the matter.
2. Reliance was also placed on the interpretation of S.125 and S,156(3) of the CrPC to support this view.
3. Thirdly, reference was made to Section 12 of the Act which permits the Board to regulate its own procedure,
4. Fourth, Section 74 which grants power to the Board to call for witnesses, much like a civil court
5. Lastly, Section 72(2) of the Act which uses the phrase 'final decision or order' to suggest that orders in the nature of interim orders are also within its contemplation.

Arguments of the Respondent (Super Cassettes Industries Ltd.)

Counsel for the respondent made the following basic arguments in support of the view that the Copyright Board does not have the power to grant an interim compulsory license:

1. Flowing from the roots of the nature and purpose of copyright, voluntary licensing is the norm and compulsory licensing is merely the exception. As such, there is no indication that interim orders for compulsory licensing were intended under S.31(b) of the Act.
2. Rebutting the S.12 and S.74 arguments, counsel stated that the powers mentioned therein are limited to features of the Board expressly provided for and cannot be extended to grant of interim orders
3. Extending the argument above, it was shown that S.52(1)(j) makes an express provision where it was intended to cover cases of interim injunction.
4. A grant of interim compulsory license would abrogate the pre-existing, statutorily vested rights of the copyright owner.

In the case of SCIL v. Music Broadcast, the facts were almost identical, with the applicant seeking a license at the interim royalty rate of 0.25% to 2% of the net advertisement revenue. The arguments submitted by both parties were also identical to those advanced in the Reliance case.


Final Decision

Based on the above arguments, it was found in both cases that that the Copyright Board does not have the right to venture into the domain of interim compulsory licenses. While making a passing reference to S.95 of the Trademarks Act and the jurisdiction of the IPAB, contrasting it with the power of the copyright Board, it was found that the Copyright Board does not have jurisdiction to provide for interim orders in the matter of compulsory licensing under S.31(1)(b) of the Indian Copyright Act.

We would like to thank Mr. Neel Mason, who served as counsel for the respondent in both cases, for bringing this to our notice and providing us with the orders.

Managing IP presents Webinar on the Enercon Dispute

Followers of Spicy IP are no doubt already aware of the proceedings relating to the Enercon patent dispute that has been closely tracked in several earlier posts (here, here and here). Given the significance of the Intellectual Property Appellate Board’s deliberation and decision in this matter vis-à-vis the development of patent law in India, especially pertaining to concepts such as interpretation of claims, identification of person skilled in the art, common general knowledge and obviousness, some good news is afoot. This comes in the shape of web-based seminar (webinar) presented by Managing IP (an organization providing global resource for IP news and analysis), together with Lakshmi Kumaran & Sridharan (LKS), a leading Indian law firm.

The webinar, titled Enercon explained – Patent Oppositions and Revocations in India, is scheduled to take place on April 19, 2011 at 6.30 p.m. (I.S.T.). Among the various topics discussed will be the background of the Enercon dispute, various issues deliberated upon and decided by the Appellate Board and strategies for handling oppositions and revocations in India with insights on importance of substantive and procedural compliances during prosecution.

The list of speakers in the webinar includes names such as Peter Ollier, (Asia editor, Managing IP), R. Parthasarathy (senior partner and litigator, LKS), D.P. Vaidya, (head, engineering, LKS) and Bertram Huber, (principal, IP*SEVA).

For the followers interested to participate in what promises to be an intelligent and lively discussion of red-hot (and spicy!) IP matters, here’s the link to register: http://www.brighttalk.com/webcast/26214

SpicyIP Guest Post: CL discussion draws to an end

Suchita Saigal, our regular guest blogger, has sent us this interesting post on what could be the possible conclusion to the events kicked off by the Compulsory Licensing 'Discussion Paper' released by the Department of Industrial Policy and Promotion.

Much Ado about Nothing
by Suchita Saigal

The compulsory licensing consultation process which began with the DIPP issuing a discussion paper on compulsory licensing of patents was brought to a close today by the press release released by the Ministry of Commerce and Industry. The press release states that the Government has concluded that the framework of the Indian Patents Act and Rules fully meets all obligations and provides adequate guidance for the issue of compulsory licences. Hence, in these circumstances, no additional guidelines are required. The press release also states that in order to ensure that the power to grant compulsory licenses is exercised with due care and caution the Controller General of Patents has been advised not to delegate this power to any subordinate authority. The Controller General has also been requested to ensure that all compulsory licence applications are decided promptly. Lastly, the Controller General has been advised to ensure prompt and effective compliance with all the reporting requirements of patentees stipulated in the Patents Act. In his annual report to the Government, the Controller General has been requested to specifically review the data received from patentees under Section146 of the Patents Act. In earlier posts, Spicy IP has covered both the issuance of the paper and the responses received.

Delhi High Court slams the Trade Mark Registries for losing 44,000 files over the last 5 years

In a shocking revelation, the Department of Industrial Policy and Promotion (DIPP) has filed an affidavit, before Justice Murlidhar of the Delhi High Court, stating on oath that the Trade Marks Registry has lost a record 44,000 files relating to trademark registrations and oppositions. 44,000!!!! Phew! Wow! The Delhi High Court Order is available over here.

This revelation is a result of an earlier order of Justice Murlidhar, which we had covered in December, 2010 over here. Halidram Pvt. Ltd. had filed a writ petition asking for inspection of certain trademark registration and opposition files which were related to pending litigation. Halidrams was joined by several other parties who impleaded themselves and since the Trade Mark Registry had not been able to come up with a viable explanation the Court ordered an enquiry by the Secretary of the DIPP, which controls the Patent & Trade Marks offices through the Controller General of Patents, Trademarks & Designs.

To the credit of the DIPP it carried out the investigation within the specified time-frame without asking for adjournments and has prepared a comprehensive action plan to prevent the recurrence of such events. According to the affidavit filed by the DIPP most of the files were misplaced when the Trade Marks Registry was decentralized from Mumbai to the other cities. The DIPP and the Controller General of Patents, Trademarks and Designs have also promised the Delhi High Court that they would implement a scientific record keeping scheme to ensure all files were in order. There will now be quarterly audits of all the files stored in the different trademark registries and FIRs would be filed if it prima facie appeared that there was some hanky panky behind the missing file. The Delhi High Court was also promised that with mandatory e-filing of trademark applications expected to come in soon the scope for missing files would be reduced drastically.

As for the missing Halidram files, the Court was informed that a FIR had been filed with the police for further investigation. The Haldiram files would be reconstructed through existing records of the trademark, either in the trade mark journals or the electronic database. The High Court has directed the DIPP to start implementing its report without any delay failing which any of the aggrieved parties could once again approach the Delhi High Court for further directions.

Hopefully this will be the last such instance we hear from the Trade Marks Registry. The Patent Office however is a completely different story especially since its electronic database, as accessible from the internet, is not even half as good as the website of the Trade Mark Office.

Demise of Leading IP Attorney

We bring you sad tidings of the demise of Mr K Mugunthan, a very reputed IP attorney from down South.

Mr Mugunthan passed away on the 4th April 2011 and is survived by his wife and 3 year old son.

He had more than two decades of experience before the Madras High Court and was instrumental in notching several wins, some of which we include below (as per a list given by his colleagues from the law firm of AA Mohan and Associates):

1. Bajaj Vs. TVS
2. Hawpar Bros. Vs. Tiger Balm
3. Tube Investments Vs. BSA Regal
4. Mars Vs. Chandha Softy
5. Safiullah Vs. Mariappan
6. Sathyam Infoway Vs. Siffy

His bereaved colleagues remember him fondly as a witty lawyer, with an elephantine memory and the ability to come up with creative solutions at the drop of a hat. Please join us in commiserating this sad loss for the IP community.

Drug Firms and Patent "Working": Extent of Compliance with Form 27

As promised in a previous post, we now bring you the full report of our RTI investigation into Form 27 (patent working) compliance issue. This report details out our rather tortuous tryst with the patent office in terms of getting this information...it took us more than 6 months to get this information!

One of the key reasons we spent so much time on this is to showcase the difficulty of getting this information, and to therefore plead with the Controller General that he must publish all Form 27 information on the patent office website on a regular basis. He is authorised to do so under Section 146 and has already committed to doing so in his interview with CH Unni of the Mint.

Our report spells out the various Form 27 non disclosures (or incomplete disclosures) and lists out the revenues earned by these drugs in India...with Rs 42 crores by Pegasus (for the year 2009-2010) being the highest.

I also attach copies of Form 27's as received by us from the patent office in relation to the 7 drugs that we studied.

In this post, I extract our findings on the extent of non compliance with Form 27 by these drug patentees:

Non Filing

1. All the pharmaceutical firms that we studied appear to be in breach of section 146 norms. They have either not filed Form 27s for some years (particularly the years 2007-2008 and 2008-2009) or have filed incomplete information. All these forms are attached as Annexure D.

2. Notably, Bayer (drug: Nexavar) did not file any Form 27 for the years 2008-2009, despite being granted a patent in March 2008 .

3. Sugen Inc (drug: Sutent) did not file any Form 27’s for the years 2007-2008 and 2008-2009, although it was granted a patent in October 2007.

4. Despite being granted a patent for Dasatinib in January 2007, Bristol Myers Squibb (BMS) did not file any Form 27 for this drug for the years 2007-2008.

5. Further, a company such as Roche, which otherwise filed very comprehensive Form 27 information for the year 2009-2010 does not appear to have filed any form for 2007-2008 and 2008-2009 for Pegasus. Unlike most of the patents that were granted only in 2007 and 2008, Pegasus was granted way back in 2006, rendering an obligation on Roche to begin submitting this information in 2007 itself. It bears noting that the Chennai Patent Office expressly mentioned that it received the Form 27 for Pegasus for only one year i.e. 2009-2010.

Further, despite being granted a patent for Tarceva in Feb 2007, Roche does not appear to have filed any Form 27’s for this drug for the year 2007-2008. It must be noted that the patent over Tarceva has been registered by Pfizer and OSI. However, as the exclusive licensee for this drug, Roche has been filing the requisite Form 27’s.

6. Schering has been particularly lax on this count, since it did not bother to file any Form 27 for its drug Viranferonpeg even as late as 2009-2010! We note this in particular, since the Controller General Kurian had clearly indicated that he was serious about Form 27’s in the year 2009-2010 and had even put up an official notice to this effect on the website, calling upon companies to file this information.

Caveat: We had asked the Patent Office for all Form 27’s filed for each of the drugs filed ever since the patent was first granted. Since most of the drug patents were granted during the years 2007-2008 (barring Pegasus which was granted in 2006), this effectively meant that we were asking for Form 27 filings for 3 years (2007-2008; 2008-2009; 2009-2010). The patent office gave us only what they had on record with them, stating that these were the only forms that has been filed and on record with them.

It bears noting that given the record keeping reputation of the patent and trademark office (which has misplaced or lost files in the past), there might be a possibility that a firm might have submitted a form, but the patent office may have misplaced or lost it. If this is the case, we hope the firm in question will immediately take it up with the patent office, and also send us a notification to this extent, so that we can update our report.

Incomplete Filing

7. As noted earlier, most firms have not made filings at all for certain years. Most egregiously, firms such as Schering Corp. (drug: Viraferonpeg) and Sugen (drug: Sutent) have filed forms for only one year (Schering filed for 2008-2009 only and Sugen for 2009-2010 only).

8. Even in respect of Form 27’s that were actually filed, we found that the information was incomplete. Illustratively, Schering merely mentions that it is importing Viraferonpeg, an anticancer drug from Ireland in its filing for 2008-2009. It does not provide any further details in the columns asking for information relating to the quantum and value of imports. Rather, it merely states: “Information not readily available. Information will be provided if asked for.” This is very curious, as it is clear that Form 27 is a mandatory requirement and the statute has already asked for this information. There is no further “asking” required under the Act.

One wonders why information pertinent to imports by a certain firm is not available in the records of that very firm! One can only conclude that Form 27 requirements have been taken lightly.

9. Sugen Inc (drug: Sutent) has not filed the information in the required Form 27 format. Rather, it has come up with its own format, merely stating in two lines “Indian Patent No. 209251 claims a pharmaceutical product imported into India from Italy, more than 7000 units of which were sold in India in 2009.“ Notably, it does not state the quantum and value of imports. It merely states the quantum of sales. It also does not state if it has licensed the patent. From all accounts, this patent has been licensed to Pfizer, but this information is not stated in the Form 27 filing.

10. BMS (drug: Entecavir) has to be lauded for a rather honest statement. It rightly notes that it did not work the patent in 2008-2009, despite being granted the patent in January 2008. However, when asked for the reasons as to why it did not do so, it states “nothing in particular”. In so far as it’s working for 2009-2010 is concerned, it does not state whether it was manufacturing or importing the product. One has to infer that it was merely importing the product. Further, it does not list out either the “quantum” of imports or where it has been importing the drug from.

11. We also found that firms have been careless with their filings. Illustratively, Bayer filed two forms for the same drug (Nexavar) with different information (Form 27 for the year 2009-2010). However, here again, we leave the possibility open that the patent office might have received both forms, and the firm might have instructed the patent office to use only the updated form in its record.

Violation of “working disclosure” norms

12. From the facts on record with us and as supplied to us by the patent office, it is clear that none of the pharmaceutical firms that we studied have provided full and complete Form 27 information. In some cases, Form 27 has not been filed at all. And in others, the information provided is woefully inadequate.

13. It bears noting at this stage that even if the patent is not worked, a Form 27 must be filed and the tick box stating “not worked’ must be ticked. Only BMS and Bayer have stated “not worked’ in two filings.

14. Assuming that the patent office information given to us is correct, we can only conclude that none of these firms take the Form 27 and section 146 working requirement seriously. That Form 27 disclosure is serious business is evident from the fact that Section 122 of the Patents Act, 1970 permits the Controller to take those who file incomplete information to task and fine them Rs. 10 lakhs.

SpicyIP urges the Controller to do so in order that an example might be set and that the threat of sanction would induce other companies to comply. We are given to believe that this non-compliance is not specific to pharmaceutical drugs alone but is rampant even amongst patentees belonging to other technology sectors. We will be investigating these other sectors in the near future.

Delhi HC ejects petitions against Copyright Societies & Copyright Act

Ranjan Jha, an advocate practicing before the Delhi High Court, has alerted us to this decision of the Division Bench of the Delhi High Court pronounced yesterday and available over here. We had briefly mentioned this petition earlier, which has been filed by the Federation of Hotels & Restaurants Association of India challenging certain key provisions of the Copyright Act, 1957, as also the tariff schemes and licensing rates that were being charged by PPL & IPRS. The petition also sought cancellation of registration of both these companies as Copyright Societies. Image from here.

The provisions of the Copyright Act, 1957 which were challenged before the Delhi HC are as follows: (i)Section 2(ff): definition of ‘communication to the public’; (ii)Section 13: Works in which copyright subsists; (iii)Section 33(3): Power of the Central Government to register Copyright Societies; (iv)Section 34(3): The power of copyright societies to issue licences and collect fees.

All of the above provisions were challenged on the grounds that they were allegedly violative of Article 14 (‘Right to Equality & Equal Protection’) and Article 19(1)(g) ‘(Right to trade, carry on business’) as they do not lay down any guidelines to regulate copyright societies. The petitioners also sought to argue that they should not be made to pay separately for both the ‘sound recording’ and the ‘underlying works’ as the ‘rights of authors, lyricists and composers etc. are extinguished or become fused with the rights of the owners of the sound recording’.

The Judgement of the High Court: All the prayers against the Copyright Societies themselves i.e. PPL & IPRS were dismissed as not maintainable because although IPRS and PPL are recognized by the Copyright Act they are not statutory bodies carrying out a public function. Instead they are administering rights on behalf of individuals/owners. A writ petition can be filed only against a body falling within the Article 12 definition of ‘State’ and according to the Delhi HC, ‘Copyright Societies’ do not fall within this definition of ‘state’. This is a landmark victory for PPL and IPRS because other High Courts have been routinely issuing writs against these Copyright Societies even though they never really fulfilled the criteria of ‘State’ in Article 12.

The Delhi HC then pointed the petitioners to the Copyright Board and the Registrar of Copyrights as the competent authorities who are authorized by the Act to regulate the Copyright Societies. Since an alternative remedy was available, the Delhi HC declined to exercise its extraordinary powers under Article 226 of the Constitution.

The main challenge against the provisions of the Copyright Act, outlined above, were dismissed in a pithy 4 pages wherein the High Court stopped short of deeming the entire challenge as ridiculous. The petitioners had tried challenging the provisions as unreasonable, arbitrary and suffering from excessive delegation. The Delhi HC completely disagreed with these arguments and rightly so, in my opinion.

In regards the supposedly exorbitant tariff rates which were impeding the Article 19(1)(g) of the Petitioner, the Court stated that “In a laissez faire economy, such as what exists in India today, every person is entitled to claim any price for utilization of rights or services. We are not dealing with essential commodities. If the Government is of the opinion that the public at large is being exploited, appropriate legislation shall, no doubt, be passed.”

A reasonable judgment given the unreasonable and unrealistic prayers sought by the petitioners.

ANOTHER INSTANCE OF OUTSOURCING – HIGHLY UNHEALTHY PHENOMENA

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Outsourcing commonly refers to contracting out of a business function - one previously performed in-house to an external provider. The Indian statutory authorities appear to have embraced this phenomena which amount to candid admission of their lackluster infrastructure / supporting services. Very recently, we covered the outsourcing of patent searches to CSIR, India’s largest public funded patentee by the Patent Office [available here]. In this post, I shall test the vires of this phenomena specific to the context of “Companies (Name Availability) Rules, 2011”.

“Companies (Name Availability) Rules, 2011” has been framed in exercise of the power conferred by clause (a) of sub-section (1) of section 642 read with sections 20 and 21 of the Companies Act, 1956 (1 of 1956). Section 20 of the Companies Act, 1956 precludes the registration of undesirable names. A proposed name is considered to be undesirable if it is identical with or too nearly resembling with: a) name of a company in existence; or b) a registered trade-mark or a trade mark which is subject of an application for registration, of any other person under the Trade Marks Act, 1999.

After notification of these Rules, the applicant shall be required to furnish a declaration in the prescribed e-form-1A to the effect that he has used the search facilities available on the portal of the Ministry of Corporate Affairs (MCA) i.e.,www.mca.gov.in/MCA21 for checking the resemblance of the proposed name(s) with the names of registered companies and Limited Liability Partnerships (LLPs). Where the proposed name contains more than one word, there will be an option for certification of above mentioned declaration by practising Chartered Accountants, Company Secretaries and Cost Accountants. If this option is availed, the professional shall also certify that the proposed name is not an undesirable name under the provisions of section 20 of the Companies Act, 1956 and is in conformity with Companies (Name Availability) Rules, 2011 and Guidelines made therein. In such cases, the name will be made available by the system online to the applicant without backend processing by the Registrar of Companies (ROC).  If the form has not been certified, the proposed name will be processed at the back end office of Registrar of Companies (ROC) and availability or non-availability of name will be communicated to the applicant.

As evident from above, a Chartered Accountant / Company Secretary / Cost Accountant can now certify the desirability / undesirability of a name. Further, the Rules doesn’t define “back end office”. It can mean outsourcing to an external body. The Rules reflect yet another attempt by a statutory authority to outsource statutory duties. This is not a salubrious phenomena. Statutory duties demand impartiality especially in cases involving application of mind which cannot be ensured by outsourcing – in whatever form it may be. In the instant case, determining the resemblance of the proposed name with the extant names involves application of mind. It is not a mechanical determination. Further, in the light of J. Gopalan vs Municipal Corporation Of  Hyderabad And Others [AIR 1996 AP 371, 1996 (1) ALT 600], the rule is ultra vires and liable to be struck down. In the above mentioned case, the High Court distinguished between “delegation” and “assistance”. The respondent Municipal Corporation, as part of a revised strategy to contain the rise in stray dog population by sterilisation, engaged Blue Cross, an animal welfare organization. The petitioner argued that this amounted to (i) violation of Section 249 (5) of the Hyderabad Municipal Corporation Act, 1955 which mandated the Corporation of Hyderabad to annihilate unlicensed and unclaimed stray dogs and (ii) delegation of statutory duties. Rejecting the claim, the Court held that the aforesaid relationship amounted to “assistance” since the corporation still managed, controlled and supervised the new scheme of sterilization-cum-immunisation of stray dogs. A statutory duty cannot be delegated to an external body. However, a statutory body can always seek the assistance of an external body.

In the instant case, the statutory duty to preclude registration of undesirable names is to be carried out by a Chartered Accountant / Company Secretary / Cost Accountant / back end office. Though Rule 5 provides for penal action against the practising professional in case of an errant determination, the extent of management / control / supervision by ROC remains limited and hence cannot be termed as “assistance” from a legal perspective. On the other hand, it is “delegation”. “Delegation, as the word is generally used, does not imply a parting with powers by the person who grants the delegation, but points rather to a conferring of an authority to do things which otherwise the person would have to do himself”. [Huth v. Clarke, (1890) 25 QBD 391, 395, per Wills, J.] The Rules confer authority upon Chartered Accountant / Company Secretary / Cost Accountant / back end office to determine the feasibility of a name which otherwise falls under the domain of ROC. This amounts to “delegation” and therefore, ultra vires the parent statute.

H/T: On behalf of SPICY IP, I would like to thank Dr. Sudhir Ravindran of Altacit Global for drawing our attention to the Rules.