India: IPR Highlights For The Year 2018

Year 2018 saw some interesting developments in the field of IPR. The following list enumerates the major ones:

A. Highlights in Trademarks & Copyrights

  • Supreme Court of India (July 2018) - "Similar trademarks for different items not breach of law"

The Supreme Court of India has held that there is no infringement of law if two distinctly different products are marketed by two different companies with deceptively similar trademarks. This infringement case had been ongoing for a decade between Karnataka Cooperative Milk Producers Association which has been trading milk and milk products under the trademark 'Nandini' since 1985 and a group adopted the name 'Nandhini' for its restaurant and food products business since 1989. The matter moved from the Trademark Registry to IPAB to High Court. The Hon'ble High Court had put restraints on the group from using the trademark "Nandhini". The matter was eventually filed before the Supreme Court in the year 2015. The bench consisting of A.K. Sikri and Ashok Bhushan distinguished the goods for which the deceptively similar trademarks were being used. The Court's decision was eased when the Restaurant group decided to give up its claim over "milk and milk products".

  • Skechers USA v. Pure Play Sports – Implications of Actual Costs and Taxation of Costs – A Notable and Welcome Change in the IP Regime

On May 15, 2018, a suit for trade dress infringement and passing off was decreed in favor of Skechers, in a summary judgment by a Single Judge of the Delhi High Court. The Court granted a summary judgment in favor of Skechers, the plaintiffs, despite there being no application filed by it for the same. The Court was of the opinion that it has the power to pass a decree in a suit summarily, if it is satisfied that nothing would come out of putting a party through the rigmarole of a trial along with costs.

  • Glenmark Pharmaceuticals Ltd. v. Curetech Skincare

In the case of Glenmark Pharmaceuticals v. Curetech Skincare and Galpha Laboratories Ltd., the Bombay High Court awarded damages of an unparalleled amount of INR 1.5 Crore in view of the Defendant No.2, Galpha Laboratories being found guilty of habitual infringement of trademarks and copyrights. In this case, the plaintiff made an unusual choice and requested to transfer the entire amount of the exemplary damages to a charitable organization. Thus, the Court directed the payment of damages towards the Kerala Chief Minister Distress Relief Fund. This is most probably the largest order of exemplary costs in a trademark infringement case. The Galpha Laboratories' mark CLODID-B was alleged to be infringing the plaintiff's trademark CANDID-B. It was further alleged that Galpha Laboratories had even copied the word mark, artwork, color scheme, and trade dress of the plaintiff. Defendant No.1 Curetech Skincare is a contract manufacturer, who was manufacturing on behalf of Galpha Laboratories. Therefore, the Defendant No.1 was provided with the art-work, labels and the mark by Defendant No. 2 under a Contract Manufacturing Agreement. Interestingly, the defendants, in this case, accepted the allegations made by the plaintiff and willingly submitted to the decree by not contesting the suit.

  • Carlsberg Breweries v. Som Distilleries- With this judgment, the court has cleared the fog over maintainability of a composite suit of infringement of design as well as passing off.

In a recent judgment dated December 14, 2018, a five-judge bench of Delhi High Court has ruled that a plaintiff can join two causes of action - one of infringement of the registered design of the plaintiff and the second of the defendant passing off its goods, against one defendant in a composite suit. The suit in question was filed, complaining of infringement of a registered design as well as passing off (of the plaintiff's trade dress) in respect of the bottle and overall get up of the "Carlsberg" mark. The defendant objected to the frame of the suit, pointing out that per Mohan Lal, the two claims (for passing off and reliefs regarding design infringement) could not be combined in one suit. The question was sent to Delhi High Court for reference which constituted a special bench to decide the issue.

The issue in front of the court was to decide whether in one composite suit, there can be joinder of two causes of action, one cause of action being of infringement by the defendant of a design of the plaintiff which is registered under the Designs Act, 2000 and the second cause of action being of passing off by the defendant of his/its goods/articles as that of the plaintiff's.

With this judgment, the court has cleared the fog over maintainability of a composite suit of infringement of design as well as passing off. The judgement upholds the fundamental rationale behind the provision of joinder of causes of action i.e. avoiding needless multiplicity of suits. The judgment has also affirmed that remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement. With ever escalating cost of IP litigation, the ruling in respect to the maintainability of the court, in particular, will bring massive relief to the plaintiffs. Composite suits for design infringement and passing off will also promote convenient disposal of such disputes.

  • Anand Bhushan v. Union of India

In a significant development, a Division Bench of the Delhi HC examined the constitutionality of Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013. The Rules lay down the manner in which copyright societies can frame their tariff schemes, the manner in which the tariff schemes can be challenged etc. It was argued, quite correctly, that these rules went far beyond the scope of power delegated to the government under Section 33A of the Copyright Act. The Court, however, upheld the constitutionality of the Rules. In their opinion, the Rules did not derogate the parent legislation i.e., the Copyright Act.

  • The Indian Performing Society v. Vodafone Idea Ltd

The Calcutta HC directed Vodafone to deposit a whopping amount of Rs. 2.5 crore in a copyright infringement suit filed by IPRS. The decision raised two main issues, amongst others: (1) The nature of the "right to receive royalty" available to authors of musical and literary works and (2) Against whom this particular right can be exercised and the enforcement mechanism for ensuring the same. The right to receive royalty is not an exclusive right under Section 14 of the Copyright Act and that it is, in effect, a contractual term used between the assignor and assignee of the copyright in underlying works, as mandated by the statute.

  • Navigators Logistics v. Kashif Qureshi

In this case an employer alleged that a former employee was using their customer list to compete with them. With respect to copyright, the court held that the employer had failed to establish that the list was 'original' under the 'skill and judgment' standard espoused in Eastern Book Company v D.B. Modak. On grounds of confidentiality, the court held against the employer. It concluded that it is not possible to claim confidentiality in every customer list, since most details are available in the public domain. Therefore, the plaintiff must specifically establish the economic or commercial value of their customer list in order to protect it.

  • Tis Hazari Court, Delhi, grants punitive damages of INR 20 lacs to Super Cassettes against Sun Cable Network

In a copyright infringement suit filed by Super Cassettes Industries Pvt. Ltd (T Series) against Chhattisgarh based cable operator, Sun Cable Network (defendant), the Tis Hazari Court, Delhi, vide an ex-parte judgment, awarded punitive damages of INR 20,00,000/- to T Series and decreed a permanent injunction against the defendant from exploiting the copyrighted works of T Series. A similar order was also obtained by T Series against Sky Cable Network and Rajasthan based operator, Brij Network.

  • Sanjay Kumar Gupta & Anr v. Sony Pictures Networks India P Ltd.

Delhi High Court rejected the plea of copyright infringement against Sony Entertainment in relation to 'Kaun Banega Crorepati'. The appellants, in this case, had a concept termed "Jeeto Unlimited", where home viewers of a quiz show could participate live in a quiz show and were rewarded for answering correctly. It was alleged that, on presenting this concept to Sony, they were compelled to sign a consent letter which allowed Sony to use the concept without incurring any liability. The Court applied the 'scenes a faire doctrine' stating that since the idea was to enable home viewers to simultaneously play along with contestants, some similarities were bound to arise, but upon scrutiny, crucial differences were found in concepts of the appellant and respondent. The Court held that there was no breach of confidentiality as the appellants had signed a consent letter authorizing Sony to use the concept.

B. Highlights in Patents

  • PPH: Patent Prosecution Highway

Patent Prosecution Highway, as the name suggests, brings fast track prosecution of patents. PPH has been followed in many Patent Offices as bilateral or trilateral agreements. One such trilateral agreement is also followed jointly by European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) as Trilateral-PPH. It helps speedy prosecution and examination of a patent application in one country, if it has been accepted or granted by a country which is part of that agreement. India is also taking steps in order to avail benefits of this concept. The same is evident from the agreement signed between Japan and India on October 29, 2018, to start a pilot program of Japan-India Patent Prosecution Highway (PPH) in the first quarter of the fiscal year 2019, after making the necessary amendments in the Patent Rules. Implementing Patent Prosecution Highway in India will increase the number of patent filings in India, as it will increase the efficiency and prosecution timeline for patent applications.

  • Indian Patent Office is getting ready to go with the flow of new technologies

Indian Patent Office, in August 2018, floated a tender inviting Expression of Interest for making use of Artificial Intelligence (AI), Blockchain, Internet of Things (IoT) and other latest technologies in Patent Processing System of IPO. The said tender showed the clear intent of the Controller General to not only consider the expeditious implementation of the procedures but also to adopt the latest technology in order to achieve efficiency and high standards of implementation. To bring in the required changes in the system, a list of bidders has recently been issued by Indian Patent Office on December 26, 2018, qualifying 10 bidders for subsequent stages after EOI for making use of AI, Blockchain, IoT and other latest technologies in Patent Processing System of IPO.

  • NBA opens window to pursue pending issues/matters under the Biological Diversity Act, 2002 (BD Act), for the patent applicants

To facilitate and enhance implementation of the Act in public interest towards meeting the objectives of the BD Act, namely, conservation of biological diversity, sustainable use and fair and equitable sharing of benefits from commercial use, the Central Government has directed the Authority to take decisions within a period of 100 days from the date of issuance of this Office Memorandum, including course of action for matters related to past. These directions shall come into force with immediate effect.

  • Instructions regarding WIPO Digital Access Service (DAS) under WIPO India Cooperation

Pursuant to public notice dated March 12, 2018, regarding availability of WIPO Digital Access Service with effect from January 31,2018, for priority documents, the following additional instructions are issued for the applicants applying for the priority documents to be supplied to IB through WIPO DAS after filing International Application.

Applicant(s)/ Authorized Agent(s) or Attorney(s) should ensure that the submitted priority documents should only be in PDF with all the fonts embedded with an exclusion for only 7 given fonts (Helvetica, Times, Courier, Symbol, Zapf Dingbats, Arial, Verdana). After receiving the access code, the Applicant(s), Authorized Agent(s) or Attorney(s) should request IB to retrieve the priority document from the DAS portal, in absence of which the priority documents will not be considered as transmitted to IB.

  • Creation of CIPAM to realize objectives of National IPR policy, especially creating awareness

In order to bridge gap between knowledge creation and lack of awareness to get it protected or commercialized, a lot of awareness programs were conducted pan India in the year 2018. Such programs were conducted by Government organizations, R&D Institutions, Universities and NRDC in association with Intellectual Property Offices and in collaborations with Industry Associations like FICCI, CII and ASSOCHAM. Funds have been allocated for this purpose through special projects like Cell for IPR Promotion and Management (CIPAM). CIPAM is a professional body under the aegis of Department of Industrial Policy and Promotion (DIPP) which ensures focused action on issues related to IPRs and addresses the seven identified objectives of the National IPR policy. The objectives can be read as under:

  • Creating public awareness about the various aspects of IP through various outreach and promotional activities.
  • Generation of IPRs by motivating people to avail the various benefits drawn from it.
  • Having strong and uniform legal and legislative framework such that objectives of the program are consistent with the priorities of the nation without compromising the rights of IP owners.
  • To have effective administration and management of IPR in a manner that can provide the owner with benefits of speedy processing of their applications in a cost-effective way.
  • Commercialization of IP rights including IP transactions, valuation, revenue generation, licensing and technology transfer.
  • Having effective enforcement and adjudication of IP laws such that issues like IP violations, piracy and counterfeiting can be dealt easily among all sections of society.
  • To strengthen and improve human capital development to further create awareness via teaching, training, research and building up skilled people in IP.
  • Following directions of High Court, importance & relevance of Form 27 for patent holders has been revealed

The Patent Office, in March 2018, has published comments of stakeholders on bringing amendments to Patent Rules with respect to submission of Form 27 specifying workability of patents in India.

Published comments has brought in a wide range of suggestions and opinions. Suggestions include removal of the working statement requirements altogether, while some opined to remove the time frame in which it needs to be filed, while there were also a few who had the opinion of strengthening the requirements based on Form 27. Nevertheless, the Indian Patent Office has asked for a time period of 12 months to review and take decision in consent with major stakeholders as to what amendments should be brought in with respect to filing of Form 27.

  • State of India – Madhya Pradesh (MP) request for 'Basmati' GI tag is rejected by the GI Registry

In March 2018, Geographical Indications Registry rejected the plea of MP to include 13 of its districts under GI tag of "Basmati producing areas". Rejection was based on 2 reasons as stated below:

  • Rice grown in MP is distinct and does not match the quality parameters of Basmati rice;
  • MP is not popular among people as Basmati producing area.

MP, however, not convinced with the decision has filed a writ petition in the Madras High Court challenging the decision of the Registry.

  • Koninklijke Philips Electronics N.V. (Plaintiff) v Rajesh Bansal and Ors (Defendants) -Delhi High Court awards Damages and Cost in addition to Royalty fees in a Standard Essential patent infringement suit.

Recently, the Delhi High Court, in the matter of Koninklijke Philips Electronics N.V. (Plaintiff) vs. Rajesh Bansal and Ors (Defendants), after duly conducting and concluding a trial in the suit decreed the suit vide order dated July 12, 2018, in favour of the Plaintiff for infringement of its standard essential patent (SEP).

The plaintiff filed a patent application in 1995 in the field of DVD video players, entitled 'Decoding device for converting a modulated signal to a series of M-bit Information Words', which was granted as patent number IN-184753 (Suit Patent) in 2001. The Suit Patent was basically for channel decoding technology used in a DVD video player.

In and around the year 2009, the Plaintiff instituted two suits (which were later consolidated) for infringement of their Suit Patent against the Defendants inter alia seeking reliefs of permanent injunction, delivery, rendition of accounts and damages. The Plaintiff submitted that any party interested in the manufacturing of DVD video players should have licensed all the SEPs of the relevant patent pool, and categorically claimed that the Suit Patent is one such SEP. The Plaintiff further claimed that the DVD video players manufactured, assembled and sold by the Defendants employed the technology in accordance with the claims of the Suit Patent, and thus, were infringing the Suit Patent. The Defendant's products were held to be infringing as the Suit Patent was a SEP, and thus,, unauthorised use or manufacture of the DVD player incorporating the technology as claimed in the Suit Patent by the Defendants without a license amounts to infringement. Although the Defendants, relying on the doctrine of exhaustion, contended that the major components of the DVD players were procured by the Defendants from authorised licensees, the Defendants failed to prove that such licensees were the licensees of the Plaintiff. Interestingly, apart from tests carried out by the witness of the Plaintiff, there was no reliance on claim construction or claim comparison to arrive at the conclusion of infringement of the Suit Patent.

Although no injunction was granted, considering the Suit Patent expired in 2015, the Plaintiff was allowed to recover royalty at a license fee of USD 3.175 per DVD player manufactured or sold by the Defendants from institution of the lawsuit till May 27, 2010; and USD 1.90 from May 27, 2010 till the expiry of the patent viz. February 12, 2015. The variation in royalty rate was aligned with the changes in the royalty rate charged by the Plaintiff before and after May 2010. Additionally, due to the conduct of the Defendants and the fact that one of the Defendants was an ex-employee of the Plaintiff, punitive damages of INR 500,000 and actual costs including the lawyer's fees, court fees and local commissioner's fees were also granted in the Plaintiff's favour.

This is one of the first matters in which an entire trial in respect of infringement of an SEP was conducted and which resulted in the suit being decreed. While DVD technology may now be obsolete, a full trial on the enforcement of a SEP awarding punitive damages and costs in addition to the license fee even after expiry of the patent is encouraging for innovators/pioneers. However, an opportunity for bringing clarity, at least on the criteria to determine a SEP in India seems to have been lost.

C. Highlights in Designs

Digital India is one of the major objectives of the Government of India. With this objective, Controller General of Patents Designs and Trademarks (CGPDTM) has launched the complete portal for Industrial Designs in India. Earlier through the e-Filing portal one could only e-file the design application; whereas from January 01, 2019, CGPDTM has added more services w.r.t. Industrial Designs in India. Applicants can now file all requisite forms along with respective fee through the e-filing system of Controller General of Patents, Designs & Trademarks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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