SpicyIP Weekly Review (October Week 1)

Top of the news this week is the decision of the Division Bench of the Delhi High Court which recognized the doctrine of 'international exhaustion' under domestic trademark law. The decision partially allowed the appeal against the order of the Single Judge in Samsung Electronics Co. Ltd. v. Kapil Wadhwa & Ors dated February 17, 2012. The Bench stated that an erroneous approach by the Single Judge led to an incorrect interpretation of the Trade Marks Act, wherein it was held that import of goods require authorization from the registered proprietor. In this well reasoned judgment, the Bench observed that from the Statement of Objects and Reasons of the Trade Mark Bill, 1999, India's communications at the Uruguay Rounds and the recent Standing Committee report on the Copyright (Amendment) Bill, 2010, it was overwhelmingly evident that India recognizes international exhaustion.

Cipla succeeds in revoking Pfizer/Sugen's patent on Sunitinib

The Patent Office revoked Pfizer Inc.'s patent on 'Sunitinib', a drug used to treat abnormal kinase activity, for lack of inventive step. Cipla submitted that the structure of the patent was similar to three other compounds and hence obvious. The order held that the 'only logical conclusion that can be arrived at from the above comparison of the compounds of the patent vis-a-vis the compounds of the prior art is that the claimed compound has not been shown to involve an inventive step'. Rajiv, however, argues that the Controller's decision suffers from 'hind-sight bias'.

SC issues ultimatum to government on drug pricing policy

The Supreme Court issued an ultimatum to the government on Wednesday to formulate a timeline for implementing the proposed drug-pricing policy within a week. A two-judge bench of the court last month made critical remarks on the government's failure to finalize the drug policy pending since 2003, calling it a ‘slur on the face of all stake-holders’.

Prashant suggests an amendment to Patent Rules to encourage disclosure of adverse reports during filing

It has been observed that patent agents in a 'lose-lose' situation tend to willfully suppress an adverse report of foreign patent office fearing rejection of the application. Prashant illustrates this proposition with the Avesthagen patent wherein the Form 3 submitted before the Patent Office was limited to a mere statement of abandonment of US and EU applications, but willfully omitted the adverse findings of the foreign patent offices. Prashant suggests an amendment to the Patent Rules or Form 3 wherein the applicant or the agent is mandated to file an affidavit on oath certifying that all correspondences with foreign patent offices are duly filed with the patent office.

Bombay High Court finds the makers of Jannat 2 guilty of copyright infringement

Our ex-blogger Kruttika Vijay in a guest post takes us through the Bombay High Court decision dated September 6, 2012 which allowed an appeal filed by a young scriptwriter, Kapil Chopra, for an ad-interim injunction against the makers of Jannat 2. The injunction application was filed for breach of confidentiality and infringement of his copyright subsisting in the script. Based on circumstantial evidence, the Division Bench found the Defendants guilty of having lured the Plaintiff to hand over his script. The Defendants own admission that the film was inspired by two Korean movies was rejected by the Court. Furthermore, the decision was very critical of the Defendants for relying on false documentation during the court proceedings.

EBC obtained an interim injunction against LexisNexis

The Lucknow District Judge granted yet another interim injunction in favor of Eastern Book Company, restraining LexisNexis India (including LexisIndia) and Butterworths from infringing their copyright in the Supreme Court Cases reporter (SCC). This is in continuation of a previous injunction granted by the court on August 22, 2012 against Thomson Reuters (including Westlaw and Indlaw) where the court found that the Plaintiff’s editorial notes matched with the Defendant’s online database.

NBA set to prosecute Mahyco for bio-piracy  

NBA is set to file criminal complaints against all entities which used local varieties of brinjal to develop BT brinjal without its permission. Prashant, however, questions the authority of NBA to initiate the proceedings, pointing at Section 5(3) of the Biological Diversity Act which exempts collaborative research projects between government sponsored institutions and other countries from seeking permission from the NBA. The project for which Mahyco is charged is part of a larger tripartite agreement entered with the University of Agricultural Sciences, Dharwad and Sathguru Management Consultant.

Union Cabinet approves ratification of the Nayoga Protocol

The Union Cabinet on Thursday approved the ratification of the Nayoga Protocol on Access and Benefit-sharing. India which signed the international agreement on May 11, 2011 is expected to formally ratify the treaty before the 11th Conference of the Parties to the Convention on Biological Diversity to be held in Hyderabad from October 8-19, according to the PIB's press release. 

Novelty of design

Shouvik Kumar Guha reports an interesting decision involving Tarun Sethi & Ors. v. Vikas Budhiraja & Ors on industrial designs decided on August 6, 2012 by the Delhi High Court.The Plaintiffs, a partnership firm engaged in manufacturing of door closers, spring hinges etc., filed the suit alleging that the Defendants infringed their unique design in door springs bearing registration No. 202794 dated January 5, 2006. The Defendants, challenged the novelty of the Plaintiff’s design, an argument which was accepted by the Court. Hence, the Court in addition to dismissing the suit directed the registration to be expunged from the registry.  

International Developments

Swaraj ponders the impact of ICANN's liberalization of the gTLD system 

In light of the ICANN's plans to liberalize the current 22 gTLDs, Swaraj ponders over its impact on the topography of the internet.He predicts that a few years from now, the gTLD could generate enormous brand value and could even drastically alter search engines. At the same time, he expresses concerns over the possibility of widespread confusion among consumers as result of numerous TLDs.

Google reaches a settlement with the Association of American Publishers

The Association of American Publishers ended its long standing dispute with Google's Library Project on Thursday. Google in its press release stated that 'US publishers can choose to make available or choose to remove their books and journals digitized by Google for its Library Project'. It would be interesting to see the reactions of the U.S. Justice Department, which in 2008 successfully thwarted the $125 million settlement between Google on the one hand, and publishers and authors on the other.

WIPO defers decision on PPI's observer status

WIPO deferred its decision granting observer status to Pirate Party International (PPI), a global NGO which espouses the cause of ‘pirate parties’ all over the world. The General Assembly felt the need to decide on whether political parties can be granted observer status before taking a call on PPI’s application. As Swaraj pointed out, this strongly reflects that 'pro strengthening IP' voices dominating WIPO are unwilling to engage with groups critical of the 'business' oriented IPR regime.

Coca-Cola & Samsung pull out ads on copyright infringing site

Coca-Cola and Samsung called off their ad campaign from Vietnamese Zing.vn, a website notorious for providing unlicensed downloads to Western and local music. The Associated Press alerted the corporations about activities on the site after receiving several complaints from the US music industry and artists.

Open Access to scientific literature in physics 

The European Organisation for Nuclear Physics (CERN), in collaboration with various funding agencies and libraries have launched the SCOAP3 Open Access Initiative (Sponsoring Consortium for Open Access Publishing in Particle Physics), to provide readers free access to various articles in the field of particle physics. In its press release, CERN stated that libraries and funding agencies will pool resources in this effort and authors will retain copyright over their work which makes generous use of licenses for re-use.

UK introduces small claims track to settle small IP claims

In a decision aimed at helping small businesses, the UK Government on October 01, 2012 launched the 'small claims track' within the Patent County Court (PCC) to deal with claims upto £5,000 related to copyright, trademark and unregistered designs. With this move, the applicants can write directly to the judges setting out their case through an informal hearing, without the need of any legal representation.

Cadbury wins trademark battle against Nestle

The Birmingham High Court on September 30, 2012 dismissed Nestle's appeal against Cadbury's trademark registration over the use of purple color as a trademark for its chocolates. The court categorically stated that the public generally associates purple color with the chocolates manufactured by Cadbury. As Shouvik rightly pointed out, this case is one of several cases where brands have claimed ownership over colors.

Australia uphold plain-packets for cigarettes 

In an effort to 'un-glamourize' cigarette smoking, the highest Court of Australia upheld the plain-packing laws on sale of tobacco last month. While the tobacco companies argued that this was in clear violation of their trademark rights, the Court held the law to be within the constitutional boundaries.

Update on TPP

Six out of nine countries which are part of the Trans-Pacific Partnership Agreement declined to respond to a complaint received by the UN Special Rapporteur about secret negotiations between the member states, and also over the impact of the Agreement on the right to health. Australia, Chile and New Zealand which responded to this complaint were either 'lying about or trying to minimize the impact of the negotiations on access to medicines', according to Knowledge Ecology International.

Launch of 'Patent Opposition Database' by MSF

An international organisation for medical humanitarian aid, Medicines Sans Frontieres (MSF, Doctors without Borders) launched the 'Patent Opposition Database' to assist patient groups to oppose unwarranted applications in their fight to ensure access to affordable generic medicine.

In IP Scholarship this week, Richard Posner in his blog addressed the question 'do patents and copyright law restrict competition and creativity excessively?'

IP Events

The Journals and Publications Society of Christ University, Bangalore, is inviting submissions for the second issue of its biannual peer-reviewed, Christ University Law Journal (CULJ). The last date for submissions is November 5, 2012. For further details, click here.