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The High Court of Delhi recently put forth that if dissimilarities between competing marks counterbalance the similarities, the same will prima facie negate the likelihood of confusion – which provides an interesting aspect of comparing marks when determining passing off and trade mark infringement.

In the case of Britannia Industries Ltd. vs. ITC Ltd. & Ors. [CS(COMM) 554/2020 and CS(COMM) 553/2020 of 05th April 2021], the court dismissed petitions of alleged trade mark infringement and passing off in favor of ITC Ltd., with regard to the following marks:

Petition	Plaintiff’s Marks	Defendant’s Marks
CS(COMM) 553/2020
CS(COMM) 554/2020

The plaintiff (Britannia Industries) claimed to be using its NUTRI CHOICE Digestive pack layout mark (Registration No. 4396835, in Class 30) since 2014, while the defendant (ITC Ltd.) commenced use of its FARMLITE 5-seed Digestive mark for Class 30 goods in September 2020. Alleging subsequent mala fide adoption by the defendant, damage to its reputation and likelihood of confusion in the market, the plaintiff initiated the referenced suits.

The court, when interpreting and applying the provisions of Sections 29(1) and 29(2) of the Trade Marks Act, 1999, put equal weightage on differences in the prominent features of conflicting marks, as opposed to solely relying on their similarities. To highlight the differences between the marks, the court elucidated upon the following aspects:

Conflicting Marks		Points of contrast
		Brands ‘NUTRI CHOICE’ and ‘FARMLITE’, placed in different coloured background; Manufacturing companies Sunfeast and Britannia (both well-known with a niche consumer base) acting as source identifiers; The defendant’s ‘5 seed digestive’ biscuits have a specific health-conscious clientele; The defendant’s biscuits have a unique identity strengthened by the pictorial representation of five seeds.
		Rival brands prominently visible; The defendant’s biscuits comprise five ayurvedic ingredients (clearly represented on the packaging) and cater to a specific class of consumers; The defendant’s products have distinct features, unique ingredients and are marketed differently – hence, rare in the market.

“Digestive biscuit consumers constitute an entirely different category of consumers from consumers of ordinary biscuits. Whether one applies the ‘likelihood to cause confusion’ test in Section 29(2), or the ‘deception’ test in Section 29(1), one has to examine the possibility of deception or confusion keeping this frank reality in mind”, the court noted in its order. 

The court went on to ask the question whether the proximity between the parties’ marks is such that the defendant’s packaging is considered confusingly similar to that of the plaintiff (in which case, the plaintiff would be found to be infringing).

Alternatively, if a consumer of average intelligence and imperfect recollection is likely to confuse the product of the defendant to be that of the plaintiff, on seeing the marks at different points of time, the tort of passing off is made out. Here, the judge found the packs under comparison sufficiently dissimilar to negate a likelihood of confusion or to come to a finding that the relevant consumer would be deceived.

While rejecting the plaintiff’s plea, the court added that a conscious attempt at copying a mark by itself does not constitute either passing off or infringement, unless a consumer would be deceived by such imitation.

 INTRODUCTION

Ambush Marketing, a term which has been the talk of the town in various mega events across the world, refers to a marketing strategy wherein rival companies associate themselves with a particular event which already has another official sponsor(s). The term Ambush Marketing was first coined by marketing strategist Jerry Welsh from American Express Company in the 1980s. The word ‘ambush’ has a dictionary meaning which means – “an act or instance of attacking unexpectedly from a concealed position”. It is thus a concept where the advertisers engage themselves in a particular event for the promotion of their own goods and services by showcasing their creative ideas and efforts but without paying any kind of sponsorship fee to the organizers of that particular event. It is a planned and creative technique used by organizers for promotion of its goods and services.

 EVOLUTION OF AMBUSH MARKETING

The first case of Ambush Marketing was witnessed in 1984 Olympics when Kodak sponsored TV broadcast of the games as well as the US track team even though Fuji Photo Film company of Japan was the official sponsor. In the same event Nike, was also seen campaigning for its products even though the official sponsor was Converse. Thereafter, during the summer Olympics held in the year 1988 at South Korea, Kodak was the official sponsor of the games, however, Fujifilm sponsored the games through an internal committee in South Korea. Although, Ambush marketing was first observed in Olympics games, however, it did reached in other sports events also like FIFA world cup, Super Bowl, UEFA Championships, Cricket World cup, etc. The reason behind the rapid growth of Ambush Marketing cases is due to its time and cost effectiveness. The brand owners don’t have to follow-up time and again with the event organizers to associate themselves with the particular event and also don’t have to incur huge cost that has to be paid to the event organizers. Further, the Ambushers also save the money spent in promotion and publicity of the goods and services by way of Print and electronic media, digital marketing, advertisement, etc. They are free to explore their creativity without any kind of restrictions and in return also get the desired result they wish to acquire. Presently, Ambush Marketing is one of the important area to be taken into consideration for the infringement of the Intellectual Property and yet there are majority of countries which do not have any specific law to stop such illegal practises. Ambush Marketing is not only a result of rivalry between the different brand owners but rather it is a smarter way to seek attention and acquire the goodwill for one’s brand/ products without spending the required amount on money to gain such huge popularity. As there does not exist any particular law to stop such practise, it is done on a large scale. The mega events like Olympics and World Cup rely majorly on the sponsorships collected from various brand owners and in return they are given exclusive rights and recognition to promote their brand. However, by way of Ambush Marketing, the brand owners who have not invested that huge amount, still gets recognition and are able to promote their brand on such large scale by way of their creative tactics.

 AMBUSH MARKETING IN INDIA

In India, the first case of Ambush Marketing was witnessed during the 1996 World Cup, wherein Pepsi was seen campaigning with the tagline “Nothing official about it” although the official sponsor for the tournament was Coca-Cola. Since then, there have been various instances, where such practise can be clearly seen. The Indian public also witnessed the Ambush advertisements on few of the hoardings in Mumbai. It was when the Jet Airways came up with a campaign saying “We’ve Changed” and on the other side, Kingfisher Airlines came up saying “We’ve Made Them Changed”. These two were further ambushed when Go airways came up with a hoarding mentioning that “We’ve Not Changed. We Are Still The Smartest Way To Fly”.

Another case was observed when Procter & Gamble, a multinational consumer goods corporation, launched an ad campaign for its shampoo brand named ‘Pantene’ with a tagline “A Mystery Shampoo, Eighty Percent women say it is better than anything else.” However, a few days later, Hindustan Unilever, another consumer goods company, launched its shampoo brand ‘Dove’ with a tagline “There is no Mystery. Dove is the No. 1 shampoo”. It was thus a clear case of Ambush Marketing wherein the ad campaign of ‘Pantene’ was ambushed by ‘Dove’.

Considering the fact that Ambush Marketing cases are occurring in India too, at present there exists no specific Anti-Ambush Marketing laws which strictly prohibit such practise. Although, there have been discussions over the past few years to host Olympics games or other mega sports events, but as of now there is no specific law and regulations laid down, which strictly prohibit Ambush Marketing.

However, as per the Trademarks Act, 1999, if a company uses registered trademark of a rival company or the official sponsor of an event, then an infringement action or passing-off action can be initiated against such company under the Trademarks act, 1999.

Further, The Copyright Act, 1957 provides remedy to prohibit Ambush Marketing in a limited manner. When original work of a person is violated, without the permission of the owner or license by third party, then in such cases, The Copyright Act, 1957 gives the owner a privilege to enjoy the rights over his work to reproduce, perform or publish and when the other party does the same without licence, and then it amounts to Copyright Infringement.

Given below are few case studies in this context:

1. ICC Development v. Evergreen Service Station : The Delhi High Court in this case granted an injunction against misuse of the ICC logo by the defendants and preventing them from using the logo of ‘ICC World Cup 2003’ which consist of black and white stripes and the mascot ‘dazzler’ holding these to be the artistic work protected under section 2(c) of the Copyright Act, 1957.

2. ICC Development v. Arvee Enterprises and Anr : In this case, it was observed that the plaintiff in order to find success in his claim must prove that there was ‘likelihood of confusion’ in public minds, that the defendants were sponsors or licensee of world cup. In the said case, the court rejected the application on the ground that the logo of the ICC was not misused and that there was no scope of assumption that there was a connection between defendant and official sponsors of the event.

Ambush Marketing came in limelight with the increase in world- wide sports activities and mega events. Such practices are affecting the rights of various stakeholders to a much larger extent and for the said reason various suggestions have been made in order to implement specific laws/regulation to stop such practice. Countries like South Africa, Australia, England, China, Brazil, New Zealand and Canada have already enacted laws/ regulations to that effect. Having said that, in India, there is no such law enacted to avoid Ambush Marketing and therefore, it makes it difficult for the right holders to initiate legal action against the Ambushers. Such practises also affects small businesses and start-ups who tend to show some or little interest in promotion and advertisement of their goods and services while paying the sponsorship fees. While enacting a specific law to prevent Ambush Marketing may take some time, however, finding a solution protecting the rights of the sponsors may lead to abolishment of such practise.

The Patent (Amendment) Rules, 2020 have come into force through Official Gazette notification dated October 20, 2020. Below is the brief overview of the amended provisions:

Firstly, the Amendment Rules, 2020 bring in various regulations of Patent Cooperation Treaty with regard to submission of the Priority Document, and English translation of the same (if applicable):

 Submission of Priority Document

The amendments now allow an Applicant to submit the Priority Document through a Digital Access Service / Digital Library under Rule 17.1(b-bis) of the PCT Regulations.

With regard to submission of the English translation of the Priority Document, wherein earlier, the Applicant was required to submit the same, in case the Priority Document is not in English, now, submission of said translation is governed by specific regulations of the Patent Cooperation Treaty and unless the application falls under Rules 51bis.1(e)(i) and (ii) of the PCT Regulations.

There are no changes with regard to the time limit for submission of the above documents.

 Statement of Working

Further, the Amendment Rules, 2020 have brought in the provisions related to the form and manner in which Statement of Working of Patents is to be furnished, which is a mandatory requirement under the Patents Act, 1970.

the requirement of furnishing the Statement of Working (Form-27) to be every financial year (i.e., 1st April to 31st March), instead of every ‘calendar year’ (1st January to 31st December).

the time period within which such details should be furnished shall be within six months from the expiry of each such financial year. Meaning thereby, the Statement of Working of Patents (Form-27) may be furnished till 30th September of each such financial year.

Statement of Working of Patents can now be submitted for multiple related Patents, subject to the following conditions:

 In cases where approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents; and  All such Patents are granted to the same Patentee(s).  licenses/sub-licenses granted in a given year need not be furnished anymore  There is NO requirement of having to state whether the public requirement has been met at a reasonable price.  obligation upon the Patentee(s)/Licensee(s) to provide an overview (in 500 words) of revenue/value accrued in India.

With the world battling with the novel coronavirus, there have been many substantial developments in the field of intellectual property (IP) and pharmaceuticals. New means to prevent, treat and mitigate Covid-19 are being researched for developing effective medical treatments as fast as possible. The development of such medical treatments to prevent and treat Covid-19 is far more important for developing countries, wherein complete lockdown of the entire economy for slowing down the transmission of disease could be disastrous in the long run.

Owing to the continuous efforts of the pharmaceutical companies, there is an indication that effective treatments for coronavirus may soon emerge; however, the questions arises whether people will be able to access them at affordable prices or not. Considering this fact, governments of various countries do not seem to support patent-based monopolies for lifesaving medical treatments. In other words, patent monopolies and exclusivities are hindering the governments to explore effective options to tackle the Covid-19 emergency situation across the globe.

To combat the current health crisis the governments have begun to adopt alternative measures to tackle the unprecedented situation of the Covid-19 pandemic. Accordingly, various countries are taking pre-emptive measures, such as compulsory patent licensing, to deal with the monopolies for lifesaving medical treatments. Although, the laws of various countries differ on how and under what circumstances a compulsory license should be issued, the basic premise of the measure being invoked at a time of great and urgent national need is the same across jurisdictions. Because of the urgency of this crisis, several countries have issued, or are in the process of issuing compulsory licenses (or their equivalent laws).

Israel, issued a compulsory license to import the generic version of AbbVie’s Kaletra, a fixed-dose antiretroviral combination drug i.e. Kaletra (Lopinavir/Ritonavir) from India for treating coronavirus, which is generally prescribed for the treatment of HIV/AIDS. The license is granted under section 104 of the Israeli Patents Law to allow importation of the generic version of the drug. Germany and Canada have amended their patent protection laws to granting of compulsory licenses. In particular, Germany has passed a new legislation, Prevention and Control of Infectious Diseases in Humans Act, for issuance of compulsory license under the section 13(1) of the Patent Act of Germany. Similarly, Canada also passed a new law, COVID-19 Emergency Response Act, which empowers the government to issue a license at first without negotiating with the patent holder. Chile and Ecuador have each passed resolutions urging their governments to issue compulsory licenses to make it easier to obtain patented drugs to combat the Covid-19 crisis.

Brazil, also introduced a bill to allow the government to temporarily suspend the patent monopolies for medical products which may be used to prevent and treat Covid-19; however, such license shall be valid till the duration of emergency. Contrary to this, Interfarma, a trade group representing drug makers in Brazil, stated that compulsory license, a tool to override patent holders’ rights to promote generic drug competition, does not foster the immediate transfer of knowledge to speed up production, rather, the same increases the risk of misallocation and inefficient use of resources or raw materials. Further, Interfarma, stated that compromising on the intellectual property protections can result in long lasting damage which would affect future innovations in almost all sectors of the economy and wither the ability to restore national health systems in any future crisis.

Moreover, it is important to note that all the WTO members agreed in the Doha Declaration on TRIPS and Public Health which affirms that "the TRIPS Agreement does not and should not prevent members from taking measures to protect public health". This system allows the exporting country to issue a compulsory license for the purpose of exports to an importing country. However, such importing country has to notify to the WTO about its insufficient manufacturing capacity. Due to the immediate need of a drug/cure for Covid-19, many countries might find themselves insufficient in terms of manufacturing capacities and thus, might seek other countries’ help to produce sufficient supplies.

In view of the grim and urgent situation arising from the pandemic, a resolution for implementation of already inherent flexibilities in the TRIPS agreement was put forth in the World Health Assembly (WHA). India has co-sponsored this resolution, which calls for four key measures to be taken to combat the pandemic. These measures include fair distribution of health technologies, preference of the TRIPS flexibilities over any existing IP rights involving health technologies relevant for COVID19, vaccines for COVID19 and increased R&D and global data pool geared towards finding COVID19 health technologies.

There are a lot of brands which have acquired popularity and distinctiveness based on the way their labels and logos are placed on a given product. But did you know that these brands have the right to claim monopoly over the positioning of their label on products? Well, a ‘position trademark’, falling under the category of ‘unconventional trademarks’, allows proprietors to claim rights over the way their label is placed on a product, based on its distinctiveness. Having said the same, the legality of position marks is still comparatively new and unexplored by jurisdictions around the world.

 

The World Intellectual Property Organization (WIPO) defines ‘position trademark’ as ‘a sign, represented graphically, positioned on a particular part of a product in a constant size or particular proportion to the product’. Hence, a position trade mark consists of two aspects - the mark itself and the position/ placement of the mark on a product. In other words, WIPO recognizes a position mark as a ‘constant element of an identical size placed on a product in a fixed position’. Since the application for registration of such a trade mark is based primarily on the placement or ‘position’ of the mark, a description detailing this position is the foremost requirement. It is pertinent to note that position marks would likely not be registrable if the description indicates that the placement of the mark on a product is variable. In order to claim monopoly over the positioning of a trade mark, the applicant is required to establish the fact that the logo along with its position on their product is distinctive enough to serve as a source identifier.

 

It is interesting to note how various deciding bodies have adjudicated upon the distinctiveness of a position mark. A few contrasting examples are discussed below for a clearer picture:

 

• In 2010, German toy maker Steiff, applied for a trade mark registration based on the position of a metal button along with a yellow flag with their logo, fixated on the ear of their teddy bears. The Office for Harmonization in the Internal Market (OHIM) of the EUIPO, while rejecting Steiff’s application, put forth that the yellow flag along with a metal button is ‘devoid of any distinctive character’ and hence is not sufficient to indicate the ‘commercial origin’ of the toys. Pictorial representations of Steiff’s teddy bear are as below:

 

 

   

 

• In 2011, the OHIM while rejecting the application of Austrian shoe company, Think Schuhwerk, ruled that red-tip shoelaces are not sufficiently distinctive to be accepted for registration as a position trade mark. A graphical representation of Schuhwerk’s red-tip shoelaces is as below:

 

 

• In 2013, the European Court of Justice (ECJ) adopted a more liberal approach to adjudge upon the distinctiveness of a position mark while deciding the infringement case filed by Levi Strauss against Colloseum Holding. Levi’s is already the registered proprietor of a composite trademark of their ‘red tab label’ placed along the pockets of various denim goods, along with the brand name. Colloseum Holding also started manufacturing jeans with a similar red label placed in the same way, but with their own brand name. Levi’s filed the trademark infringement case based on the same. The ECJ opined that ‘red label constitutes an integral part of the Levi’s brand, even though it is not used separately’. Pictorial representations of Levi’s red tab label are as below:

 

    

 

• In 2018, the ECJ ruled that the famous red-sole of Christian Louboutin’s high heeled women’s shoes is in fact a position mark. The Judges put forth that ‘the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.’ Pictorial representations of Christian Louboutin’s red-soled high heels are as below:

 

 

The aforementioned case studies only go on to prove how the topic of distinctiveness of a position trade mark is, more often than not, dependent on the discretion of judges and hence varies from one case to the other. It has been seen that courts are hesitant in accepting the possibility of ‘acquired distinctiveness’ of a position mark – however, that trend appears to be changing now. One of the longest legal battles based on position trademarks, which also sees the courts accepting the validity of the principle of ‘acquired distinctiveness’ is the case of Shoe Branding Europe BVBA v Adidas and OHIM.

 

This case is considered to be one of the landmark judgments in the sphere of unconventional trademarks and more specifically, of position trademarks. Adidas had filed an opposition against BVBA (a German shoe manufacturing company) claiming that the latter’s trademark application for ‘2 stripe design’, for footwear, (image 1) is ‘confusingly similar’ to Adidas’ prior registered and well-known ‘3 stripe design’ (image 2). Pictorial representations of the competing marks are as below:

 

 

 

The opposition panel of OHIM eventually decided that the two marks can be distinguished based on the difference in inclination/ spaces between the stripes. However, Adidas appealed against this decision before the EU General Court, which thereafter opined that the three stripes widely used by Adidas had in fact acquired distinctiveness, and hence, BVBA’s two stripe design would most definitely adversely impact Adidas’ reputation. Continuing with the long string of appeals, BVBA appealed before the Court of Justice of the European Union, although in vain. BVBA was relentless and was determined to defeat Adidas to uphold their rights. Going forward, BVBA filed an independent suit before the EUIPO challenging the registrability of Adidas’ 3 stripe mark, claiming that the same lacked distinctiveness and the characteristics of a source identifier. BVBA managed to win the case after all, wherein Adidas’ 3 stripe mark was ruled to be an ‘ordinary figurative mark’ and not a distinctive pattern. Adidas was unable to establish that they had acquired distinctiveness across all the countries of the European Union, and hence, their registration of the 3 stripe mark was cancelled in 2019.

 

Although the concept of position trademark is well-established and still growing, it is still in its nascent stage in India. From the aforementioned cases we notice how the EUIPO has been able to explore multiple aspects of a position trademark and the legal ambit of unconventional trademarks is broadening with every passing case.

The basic rationale behind a trademark as a word, symbol or signifier is for the identification of products of the manufacturers by certain symbols, marks or devices so that they can distinguish their goods from similar types of goods manufactured by the other manufactures.

The essential function of the trademark law is to give vested rights to those proprietors who use words, names, symbols or devices to distinguish their goods or services from others. Over the past few years, there have been constant attempts made to extend the trademark protection in the unexplored areas to develop new concepts in the trademark laws in order to keep pace with aggressive commercialization. The ambit of intellectual property law has therefore taken unprecedented levels and along with it, the trademark protection is broadened all over the world.

The non-convention trademarks are being widely accepted in recent times for the expansion of the definition of the trademark under the legislations. The Olfactory marks contrary to the traditional trademarks cannot be graphically represented even after its high level of peculiarity and therefore, an olfactory mark faces huge difficulty for its registration.

There has been no reliable system till date for graphical representation of the olfactory marks. Different countries around the world have adopted a different method of registration of Trademarks. Generally, registration of a mark is allowed if the mark is distinctive in nature. However, till date, there are no set parameters to represent olfactory marks graphically in clear, precise, self-contained, easily accessible, intelligent, durable and objective manner: a description of a scent in words is not objective, a chemical formula is insufficiently intelligible and a sample of the scent is not durable enough. In some of the countries the smell marks are registered if in the application a graphical representation of an olfactory mark is made and in some cases, the description of the smell of a product is protected under the copyright law.

UK AND EU PERSPECTIVE:

A mark can be simply registered in the European Union if the graphical representation of the mark is comprehensible, self-contained, durable, objective and accessible. For registration of a mark, a mandatory requirement is that the mark should be perceived unmistakably by one and all. Absence of this might lead to its non-registration and infringement of the mark of another. An olfactory mark as we know cannot be represented graphically, so the question it poses in front of us is that whether an olfactory mark can constitute a trademark at all? This question was taken up for the first time in the Sieckman case¹ which was filed before the European Court of Justice (ECJ). The ECJ, in this case, held that visual perception of a mark is not a necessary condition as far as the mark could be graphically represented by its proprietor.

 

The ECJ while deciding whether a ‘balsamically fruity smell with a slight hint of cinnamon’ was registrable or not, the Court concluded that since it cannot be graphically represented as per the requirement of Article 2² under Directive 2008/95/EC of The European Parliament and of the Council. Furthermore, the ECJ in its view expressed doubts that the description of a smell would not be enough for the registration and neither would the chemical formula of the smell, nor the depositing of a sample of the product with its smell.

United Kingdom Court in the case of R v. John Lewis³ has refused an application for ‘the smell, aroma or essence of cinnamon’ as a trademark for furniture. The trademark was refused by the Court as the verbal description was found not being good enough to be considered as a graphical representation. But the decision would have been different if had been taken with reference to certain standards⁴. As the smell of fresh cut grass was registered for tennis ball, the odour of beer has been registered for dart flights and smell of roses for tires have been registered as European trademark under the trademark law of UK⁵. However, there is still the possibility to criticize these trademark registrations on the basis of Sieckman Case. The most fundamental question which could be posed regarding these registrations is whether freshly cut grass smells uniformly the same on every occasion and whether a prudent man could distinguish the difference in their odour. Since it is impractical, the arguments made for registration under the EU trademark law that all the sensory perception can be used as a trademark fall short of adequacy for their registration as their distinction is impractical and does not have a uniform system. Taking into account the practical aspects, registration of olfactory marks are difficult to obtain in the European Nations till further advancement in the technology is made which converts this impracticality of registration of the olfactory mark to practical registrable marks of manufacturers.

US PERSPECTIVE:

Under United States Trademark law, marks such as olfactory and sounds which are not possible to be graphically represented, can be registered if explained by a written detailed description under the Trademark Manual of Examining Procedure. The US court of law recognized that smell mark can also be registered as the trademark in the case of In Re Celia Clark⁶ where acceptance was given to the application for registration of ‘a high impact, fresh floral fragrance reminiscent of Plumeria blossoms’ for products such as sewing thread and embroidery yarn. The court, in this case, based its opinion on the fact that the fragrance used by the applicant is not an inherent attribute of products for which it is used. The products are not such for which the smell is an essential attribute. The argument for accepting the smell as a trademark was based on the premise that scent is comparable to the colour and hence is registrable. One of the arguments made against this judgment was that it was made being ignorant to osphresiology, which talks about smell and scent. The premise on which the argument was based that scent and colour being comparable was pointed contrary to scientific evidence and points that such a contrast is misleading in nature⁷. The scientific evidence shows that the smell of a product can be affected by the temperature humidity and wind conditions and can strengthen and weaken the potency of the smell mark. Furthermore, a smell has no independent identity but requires other sensory memory to enable its recall. Detection and recognition of a smell depend on various factors, one of the factors being the health of the individual perceiving the scent which is a ‘Personal Variable’⁸. The personal variable also includes natural predispositions, such as physical and mental abilities of an individual.

INDIAN SCENARIO

The Trade Marks Act, 1999 provides the definition of a trademark as- “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours or any combination thereof”.

The protection of a smell mark is not addressed in TRIPS, EC directive or Community Trademark (CTM). India, having derived its trademark law from TRIPS, neither registers the smell marks nor considers the protection of these marks in the court of law under the intellectual property rights regime.

CONCLUSION

As we can infer from the above perspective that formulation of different approach has made in order to deal with smell mark application in the respective region. Still, the characteristic features and test of distinctiveness are in the stage of development. The standards which are laid down regarding these smell marks are from a relatively generous approach rather than the protection of the public interest approach.

In order for a fragrance to be a distinctive mark of a product, people should first have access to the product’s odour in order to differentiate the product of the proprietor from other products. Then and then only the scent can influence the decision of a consumer to purchase the product. If the consumer has to wait for the scent of the product till it has been put to use in order to smell to function as a trademark, the point of a trademark is lost.

Whereas James Hawes, a California Intellectual Property Attorney asserts that scent merits the product, basing his view on the study of Hammersley⁹. Hammersley in his scholarship has a view and explains that there is a strong relationship between scents and human memory. So the scent marks do influence the decision of the consumer while purchasing the product as the human memories can develop a strong relationship with the scents, it also acts a distinctive mark for identification of the product and services. According to him, the registration of fragrance marks must be differentiated from other types of trademarks.

From the above study, it looks like the United States Trademark law has decided upon the Qualitex¹⁰ ruling and the European Courts have formulated the Sieckmann test for deciding. According to these rulings, it is argued that India would be required to develop a system or amend the Trade Marks Act, 1999 to include protection for these non-traditional marks as traders and manufactures of the products are using scents as a marketing tool, the protection should be extended to these non-traditional source identifiers as well.

Who is an author?

 

The Indian Copyright Act, 1957 (‘Act’) defines an ‘author’[1] as, “in relation to a literary or dramatic work, the author of the work, in relation to a musical work, the composer; in relation to an artistic work other than a photograph, the artist; in relation to a photograph, the person taking the photograph; in relation to a cinematograph film or sound recording, the producer; and in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created”. The definition of an author is generic and no further guidelines have been given in the Act to understand the purview of this definition.

 

It is important to understand the scope of an ‘author’ under the Copyright law, because, the whole purpose of this law is to allow the owner of the copyrightable work to reap benefit from it. This brings us to the question ‘who is the owner of copyright’?

 Authorship and Ownership

 

Authorship and ownership of copyright are closely intertwined with each other[2]. The Act states that an author is the first owner of the copyrightable work[3], subject to certain exceptions dealt under the Act[4], for instance, in the case of an employer-employee. In brief, an employer shall be the first owner of the copyright created by the employee during the course of his or her employment, in the absence of any contract to the contrary.

 

The argument for granting the ownership of the copyright to the employer for a work created by the employee, during the course of his or her employment, is that employers not only give facilities and material for creation of that work but also provide compensation to the employee for creation of work, which is sufficient to transfer ownership.  

 

The Act does not explicitly mention ‘who will be the owner of academic works created by students during the course of their education’. The Courts in India have delved into this subject, with one of the earliest decisions to this effect being in the case of Fateh Singh Mehta Vs. O.P. Singhal and Ors.[5], which was a review petition filed by the Fateh Singh Mehta (Defendant in the Suit). The facts leading to the case were that, O.P. Singhal (Plaintiff in the Suit) had obtained a degree in Master of Engineering during the academic session, 1979-80 from the University of Jodhpur. As a part of obtaining the degree, a student was required to submit a written thesis on a selected special subject. The Plaintiff submitted a written thesis on "An Experimental Investigation of Swirling Flow in Cylindrical Chambers" under the guidance of the Defendant. The Defendant had also applied for Ph.D in the University of Jodhpur and sometime in the year 1980-81 submitted his dissertation on "An Aerodynamic Study of Swirling Jets" as required for completing his Ph.D. It was during the reading of his thesis that one of the professors in the Mechanical Engineering Department of the University itself, objected to the thesis and stated that the thesis made by the Defendant was not his original work but portions of it have been verbatim copied from the thesis made by the Plaintiff. The Defendant argued that no copyright subsists in the work created by the Plaintiff. More so, it was pleaded that he was the guide / mentor of the Plaintiff and in his dissertation, the Plaintiff had acknowledged with gratitude the expert guidance given to him by the Defendant and also for his permission to use the rig fabricated for the Defendant’s doctor of philosophy degree.

 

The Hon’ble High Court of Rajasthan in dealing with the pleadings of the Defendant, relied on Section 13 of the Act to establish, at the outset, that “the originality which is required relates to the expression of the thought but the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work that it should originate from the author. Thus it is well settled that the originality in work relates to the expression of thought”. The Court concluded the Defendant had actually reproduced verbatim paragraphs of the dissertation submitted by the Plaintiff. Thus, the copyright vests with the original owner, being the student in this case and not the professor.

 

Another interesting take on this has been put forth by the Spanish Supreme Court in a recent case[6] where a university professor had reproduced without the consent, certain sections of his student’s research work. A very interesting argument taken by that professor was that the student lacked authorship in the research work, since it was the professor who had given a lecture of the topic at a conference attended by the student. The Court dismissed this argument stating that, it is a part of a teacher or professor’s profession to contribute towards the creation of research work by their students by providing ideas, guidance and suggestions.

 Conclusion

 

When we look at the afore-mentioned judgments of two different jurisdictions, it is clear that the idea remains the same, whilst deciding on the authorship of an academic work created by a student during the course of their education. The following factors needs to be considered:

 

1. The academic work although created by the student using the facilities of a university, are a result of their intellectual creation;
2. As opposed to a creation by an employee in the course of their employment, a student does not create their academic work for the monetary benefit of the university or professor;
3. The professor or university cannot claim rights over it merely because they are either delivering lectures or guidance or are providing the facilities for such creation since it is a part of their duty and employment to do so.

 

However, the above are subject to any agreement to the contrary that the student may enter into with a university. On a related note, it is interesting to note that in September 2019, the Department for Promotion of Industry and Internal Trade (‘DPIIT’) released the Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions (‘Model Guidelines’) drafted by Cell for IPR Promotion and Management (‘CIPAM’)[7]. Per the said guidelines, the ownership rights in scholarly and academic works generated utilizing resources of the academic institution, including books, articles, student projects/dissertations/ theses, lecture notes, audio or visual aids for giving lectures shall ordinarily be vested with the author(s). While these guidelines are yet to be considered to be made into a Bill, the intent is to create a standard IP policy throughout India for academic/ research institutions.

 

Authors: Divya Dubey (Senior Associate) and Sadaf Mariam (Associate)

A fact  long  known - and acknowledged regarding pharmaceutical products is that the duration of negative monopoly bestowed as patent rights is not enjoyed by the  products as the period gets effectively shortened due to the  prolonged time taken to procure regulatory approvals. Recognizing this, several countries introduced patent term extensions to compensate innovative drug companies for this time lost on approval procedures. Within the European Union, this extended protection has taken the form of supplementary protection certificate, which is a right separate from patent rights, however, allows the same protection for pharmaceutical products after the expiry of basic patent rights.

 Supplementary protection certificates

Supplementary protection certificates are sui generis rights, meaning they are standalone rights and do not extend the term of the basic patent which covers a certain product,  rather take effect on expiry of the patent. These rights are meant for both medicinal products and plant products. The regulation governing medicinal products (EC No. 469/2009) is known as the Medicinal SPC regulation. SPCs are also granted for paediatric products under the Paediatric Use Regulation (EC No. 1901/2006).  This allows for a further six month extension on products which were the subject of clinical trials for paediatric patients.   Although SPCs were originally introduced in 1992, the aforementioned regulation was actually formally codified only in 2009. It encompasses a total of 23 articles which lay out the definitions and demarcate its scope. However, certain terms have not been clearly defined in the articles, which have led to litigation in both the national as well as the Court of Justice for the European Union (CJEU).

SPCs are individually granted by the national patent offices of member states of the EU. Although SPCs can be obtained after national authorizations, regulation (EC) No. 726/2004 also allows applicant to seek centralized marketing authorizations granted by the European Commission after a positive opinion of the European Medicines Agency (EMA). Such a centralized authorization allows granting of SPCs in all member states of the EU. The patent on the basis of which an application is made might be a national patent or an EU patent. In order for a product to qualify for an SPC, it has to satisfy certain criteria laid down in the articles of the SPC regulation. These criteria (encompassed by Article 2) are (i) the medicinal product is protected by a basic patent still in force (ii) the product was the subject of administrative authorization prior to being placed on the market. It is also necessary that application for an SPC be made within 6 months of date of obtaining market authorization or six months from date of grant of basic patent (as per Article 7). Another important criterion is that the basic patent for which an SPC can be granted protect (i) a product, (ii) a process to obtain a product or (iii) an application of a product.

Who can obtain an SPC?

Applicant for an SPC can be an entity that holds a basic patent covering the product in respect of which the SPC is sought. It can also be a licensee of such an entity. It is possible to obtain multiple SPCs from the same basic patent if the conditions for obtaining them are satisfied under article 3(a) of the Regulation.

Article 3

In case of a dispute arising from an SPC, an applicant can approach a national court of the member state in which the SPC was sought. If the question remains unresolved, the national court can, refer the case to the CJEU.  Although there are several Articles dealing with how SPC are regulated, the interpretation of some of these has lead to more litigation, such as Article 3. This article stipulates that to obtain an SPC for a product, it should

(a) be protected by a basic patent in force

(b) a market authorization to place the product on market has been granted

(c) the product has not previously been subject of another SPC and

(d) the authorization obtained as per article 3(b) above was first authorization to place product on the market.

Article 3(a) above, which requires a product to be ‘protected’ by a basic patent in force, has been the subject of numerous litigations, as a result of the fact that no definition of ‘protected’ has been provided in the SPC regulation. Several cases have grappled with scope of Article 3(a). Case C-392/97 clarified that the question of whether a product is protected under Article 3(a) is to be decided under national rules of the basic patent. In C-322/10, the CJEU said that an SPC cannot be granted for a product if it has active ingredients that are not specified in the wording of the claims of the basic patent. In case of combination products, in a number cases (C-518/10, C-6/11 and C-630/10),   the court specified that the active ingredients in a product should be ‘identified’ in the wording of the claims. More recently, in C-121/17, the court said that in case of a combination of products, the active ingredients pertaining to that product need not be explicitly mentioned in the claims to be the subject of an SPC. It is only necessary that the claims necessarily relate to the combination of these active ingredients. In the most recent case in this regard, C-650/17, the CJEU clarified that a product would be deemed to be protected by the claims of a patent if (i) it corresponds to a general functional definition used in one of the claims of the basic patent, (b) forms part of the invention protected by that patent, and (c) a person of ordinary skill in the art would be able to, at the date of filing the application, infer the product from embodiments of the patent.

Article 3(b), which requires a product to have been granted a valid market authorization in the territory where the SPC was sought, has also been the subject of clarification by the Attorney General in C-322/10. Therein, he stated that in case the authorized product (for which SPC is sought) has additional active ingredients other than those specified in the claims, the granting of an SPC shall not be precluded on the ground of having an additional active agent. The same reasoning and conclusion was also found in C-422/10.

Article 3(c), which stipulates that the product for an SPC application should not have been the subject of a previous SPC, is intended to prevent multiple SPC being obtained for the same product. In C-484/12 and C-443/12, it was clarified by the CJEU that it is possible to obtain multiple SPCs on products originating from the same basic patent if all those products are protected by the claims of the same basic patent. It is also possible for multiple parties to obtain SPCs pertaining to different aspects of the same product (such as process for manufacturing the product, therapeutic use of the product) if the other conditions laid out in the regulation for grant are satisfied.

Article 3(d) stipulates that the authorization obtained as per article 3(b) was the first authorization to place the product on the market. In C-202/05, it was held that if a product had been the subject of market authorization for a first therapeutic use, it did not qualify for an SPC for a second therapeutic use. In C-130/11, the court clarified that even if, for the product in question, a market authorization for a similar indication had already been obtained by a third party, it did not prevent the granting of an SPC for the same product under different indication if it is covered by valid patent claims.   

Conclusion

The SPC regulation is an ongoing area of litigious action as the scope and definition (of terms) in several of its Articles remains uncertain. As judgments handed down in cases continue to resolve some of these issues, much remains to be interpreted and clarified. 

November 17, 2019, was the date when the first known case of the COVID-19 was detected. Back then, no one would have thought that this virus would turn into a pandemic and would bring the world to a stand-still as we know it. Day-to-day activities as simple as running errands would become a luxury.

 

To contain the spread of COVID-19, many countries including India imposed nation-wide lockdowns. In India, the lockdown was not a sudden step taken by the government. It started with few temporary measures such as school closures, thermal screening at airports to name a few. With these measures in place, the virus still managed to slip in and enter the country.

 

Given the current situation, it is difficult to say, when the country will resume to its normal operations even though the lockdown has been lifted in quite a few parts of the country. Apart from various other concerns, one of the key concerns for trademark holders is their obligation to use their trademark(s) in order to circumvent any challenges arising from the non-use of a trademark in such times.

 

According to Section 47 of the Trade Marks Act, 1999 (‘Act’), a trademark becomes vulnerable for non-use cancellation, if there has been no bonafide use of the trademark or intention to use the trademark, continuously for five years and three months from the date of petition for cancellation.

 

For a cancellation action to be successful, it would have to meet the three essential criteria:

 

1. That the application was filed by an aggrieved person i.e. in some possible way the petitioner would face damages or injury if the trademark is allowed to remain on the Trade Marks Register;
2. That there has been a non-use by the owner for a continuous period of five years and three months;
3. And that there were no special circumstances that affected the use of the trademark in this period.

 

‘Use’ of the mark has been defined under Section 2 (2) (b) of the Act as a reference to the use of printed or other visual representation of the mark. Concerning goods, it is to be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods. In relation to services, it is to be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services.

 

What amounts to use of a trademark for a non-use cancellation action has been a topic of much deliberation. The courts of India have shed light on what amounts to ‘use’ through various case laws. While primary forms of use i.e. India specific invoice(s) have been given utmost weightage, the courts have also held that a mere ‘intention to use’ at times is also sufficient. However, such intention has to be specific and genuine[1]. Such intention can either be the marketing of the goods like a soft-launch or at times, intention to permit the use of the trademark by the registered user[2].

 

Clause 3 of the section 47 of the Act states that if the non-use is due to special circumstances in trade, which includes restrictions on the use of the trademark in India imposed by any law or regulation and not to any intention to abandon or not use the trademark, then the cancellation application would not have met the requisite criteria.

 

The Courts have defined ‘special circumstances’ as some external force, which is distinct from the voluntary acts of any individual. The existence of this aspect is to conclude as to whether there was any intention on the part of the proprietor to abandon the trademark or not.

 

To streamline, what could be construed as ‘special circumstances’ the Hon’ble High Court of Calcutta held that...“not any special circumstances merely attendant on or attached to any particular individual business. It must be a kind of special circumstance for all the trade in those particular goods”[3].

 

Based on the above, it can be inferred that special circumstances are those which arise out of certain conditions, which make it impossible to trade or use a trademark, which would entitle a person to claim that even though the goods under a trademark were not being sold, that was because of conditions beyond anyone’s control and that there certainly was no intention to abandon a trademark.

 

The situation arising out of COVID-19 is rather a unique one, something that India has not faced before. The standstill caused by the lockdown imposed to curb the increasing cases caused due to the virus has all the ingredients to be termed as ‘special circumstances’ as per the Act.

 

However, whether or not an owner can successfully claim the defense of ‘special circumstances’, the same will surely depend upon the facts and circumstances of each and every case. Blanket immunity cannot be expected. In India, industries and businesses responsible for the production of essential items have been given some relaxation to work, with some strict measures in place. Few states have also gone to the extent to allow deliveries of food and other essential items to limit public outings as much as possible.

 

In light of the above, if there are circumstances to show that use of a trademark was very much possible and that the proprietor or the business owner took the conscious decision to halt all activities until the situation is safe for the sole purpose of the well-being and health of their employees is up for debate.

 

In the meantime, business owners can take measures to put the mark in use, just enough for the audience to be made aware of. With nearly the entire population on the internet nowadays, pre-launch marketing over the internet seems to be a good investment.

 

[1]American Home Products Corpn. V. Mac Laboratories (P) Ltd. (1986) 1 SCC 465

[2]Fedders Lloyd Corporation Ltd. and Lloyd Sales Corporation Pvt. Ltd. vs. Fedders Corporation and The Registrar of Trade Marks 2005 (30) PTC 353 (Del)

[3]Aktiebolaget Jonkoping Vulcan vs. V.S.V. Palanichamy Nadar and Ors. (06.06.1968 - CALHC) AIR1969 Cal 43

We all remember our school days when your popularity depended on the cartoon character on your lunch box. We were not the first ones to be enamoured by flashy and colourful characters neither will we be the last. Character merchandising provides copyright owners with an alternative source of economic gain. Ordinarily, fictional characters are created as a part of a bigger storyline. They are vehicles used by the storytellers to deliver a specific role within the story. However, sometimes some characters stand out and acquire a reputation of their own. These characters can be used for a variety of different objects and do not need the context of a storyline to derive their meaning.

 

The benefits of a character operate in levels. On the surface level, the character is only a part of a story and he plays a role within the story. However, sometimes the popularity of the character is so high, it becomes the focal point of the story. This is the second level. The advent of advertising, marketing and merchandising has introduced a third level. Once the character has a personality which is distinct from any particular story, it can be used as a subject of advertisement and marketing. Character merchandising is a tertiary exploitation of the IP right in the character. This concept of delineation was introduced by Judge Learned Hand in the case of Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) when he suggested that characters might be entitled to protection when they have an existence independent from the plot of a story. “It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinct.”

 

Copyright

Fictional characters often find their origin in a literary or cinematographic work. The ability to commercially exploit the personality of a character gives the copyright owner a tangential source of economic benefit. The Courts in India have had a few opportunities to decide enforceability of the copyright in a character. The Delhi High Court in the case of Raja Pocket Books Vs. Radha Pocket Books (1997(17)PTC 84(Del)) was tasked with the question - Whether the owner of a copyright in a comic character could restrain another person from using a similar character in its comic book. While deciding the issue in favour of the Plaintiff, the Court held that there were significant similarities between the Plaintiff’s character “Nagraj” and the Defendant’s character “Nagesh”. The Court held that “Nagraj and Nagesh having same meaning, namely, King of snakes; Colour of comics is also green, gauntlets are ripped in both cases, functionally, both are capable of doing same and similar work, namely, scaling the walls and the roofs alike, hurling snakes, causing the objects to melt and the snakes capable of returning back and merging in the body of the character. For the purpose of climbing, both use the same material, namely, rope in the form of snake”.

 

The Bombay High Court while dealing with the concept of fictional characters in Star India Private Limited v. Leo Burnett (India) Private Limited (2003) 27 PTC 81, the Bombay High Court observed that "It is necessary for character merchandising that the character to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself, independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising. This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears."

 

The Delhi High Court in Disney Enterprises, Inc. and Ors. vs. Pankaj Aggarwal and Ors. MANU/DE/2623/2018 observed that “The importance of preventing well known characters from being misused for commercial products lies in the fact that the creation of fictional characters requires a great amount of creativity and an innovative mind. Characters such as "Lightning McQueen" have transcended the movie in which they are featured, as children recognize the said characters and treat them like living humans. It is not uncommon for children wanting to own toy cars which look like "Lightning McQueen", bags and stationery products which have "Lightning McQueen" images printed on them, talking to "Lightning McQueen" cars etc., India has its own tradition of having a large number of home-grown characters which are liked and wanted, and such characters have immense commercial value. While fair use of the characters is permissible, within the legally prescribed norms, unlicensed use of the image of a known character on chocolates, which the Plaintiff also licenses for legitimate use on chocolates/wrappers, would be unlawful and illegal.”

 

Trademark

Even though, the most natural form of protection for fictional characters is under Copyright Law, the fundamental issue with copyright is that it comes with an expiry date. No matter how ingenious the work is, eventually it will fall into public domain and the rights of the owner of the copyright will extinguish. Trademarks solve this problem. Trademark Law grants rights in perpetuity. The only issue is that in order to qualify as a trademark, the mark must be a source identifier. This means that the mark must be capable of distinguishing the goods or services of one person from those of others. Not every object which may be a subject matter of copyright transcends to a trademark. By way of example, Disney Enterprises has secured trademark protection for many of its characters. The trademarks rights in the device of the characters have also been recognised by the Delhi High Court in the case of Disney Enterprises INC and Ors. vs. Gurcharan Batra and Ors. MANU/DE/4122/2011 wherein it was observed that the word and device marks Mickey Mouse, Minnie Mouse, Donald Duck, Daisy Duck, Goofy and Winnie the Pooh are the registered trademarks of the Plaintiff and use of these marks by the defendants in relation to or upon paper articles, printed material, teaching materials, stationery etc in the course of their business amounts to an infringement of the plaintiff's registered trademarks and passing off of their business.

 

Personality rights

Personality Rights are an extension of Right to privacy. This begs the question- whether fictional characters are entitled to right to privacy. Personality rights are the rights of a person to commercially exploit his/ her persona. In this context it is relevant to refer to McCarthy's on the Rights of Publicity and Privacy {Second Edition} which reads:

"The New York courts have unanimously refused to permit any legal entity other than a human being to assert publicity or privacy rights under the New York statute. The New York statute prohibits the commercial use of the name or picture of “any living person”, and this interpretation seems eminently reasonable. The meaning of “living person” as restricted to a real human appears clear by the statute's listing of those entities which are forbidden to make such unpermitted uses: “a person, firm or corporation”. Thus, the statute distinguishes a person from a firm or corporation.....What we cannot do is allow ourselves to be hypnotized by a label like “person”. It is superficial and quite dangerous to reason that: {1} real human persons have a right of publicity and {2} the law pretends that corporations are "persons", Therefore {3} corporations have a right to publicity in their identity. The danger comes from expanding the right of publicity beyond its reason for being. Even the most rational and fair legal concept can be so stretched out of shape that a backlash develops, which can bring down the whole house, good and bad alike.”

 

The Delhi High Court in the case of ICC Development (International) Ltd. Vs. Arvee Enterprises and Ors. 2003(26)PTC 245(Del) held that “non-living entities are not entitled to the protection of publicity rights in an event, for more than one reasons. Firstly, the copyright law, trade-mark law, dilution law and unfair competition law provide full protection against all forms of appropriation of property to such legal entities. Secondly, it would be against the basic concept of "persona". The "persona" is defined in Black's Law Dictionary, seventh edition to mean "a person; an individual human being”.

 

However, can it not be argued that even when celebrities are exercising their publicity rights, the persona which is being exploited is a fictitious creation of mind? The persona or public image of a celebrity is carefully crafted by a team of experts. When a brand signs on Virat Kohli as a brand ambassador, it is not just a boy from Delhi who happens to play cricket well but is in fact this courageous, competitive, confident and bold person that is sought to promote the brand. Be that as it may, one finds himself in agreement with the justification given by Justice Surinder Kumar Aggarwal in ICC Development (International) Ltd. supra when he said that fictional characters are already protected under copyright and trademark laws, is there really a need for the protection of fictional characters on the score of Personality rights.

 

Therefore, we can see that Fictional characters are entitled to protection under the Indian IP regime. The level of protection would depend on the level of ingenuity and popularity of the character.

Overview        

In just a few weeks, Remdesivir, an anti-viral medication, has gone from a racked, unsuccessful treatment to the center of a national effort to treat patients infected with COVID-19. The Drug Controller General of India (DCGI) has given the approval to Remdesivir for “restricted emergency use” on severely ill, hospitalized, coronavirus patients amid COVID-19 pandemic.

Remdesivir is a broad-spectrum anti-viral medication developed by the US based pharmaceutical company Gilead Sciences, Inc. Remdesivir was originally developed as a general antiviral useful for 'filoviridae virus infections' and to treat Ebola virus, Marburg virus and Cueva virus. It was later tried on Ebola patients; however, the drug was ineffective for these viral contaminations.

After undergoing clinical trials on patients infected with COVID-19, Remdesivir received an emergency use approval in USA and South Korea, and full approval in Japan for individuals with extreme and severe symptoms of the COVID-19. Currently, Remdesivir's significance has developed exponentially and it is being considered as fundamental for COVID-19 patients with co-morbidities, such as, but not limited to, cancer or diabetes.

The US Food and Drug Administration (USFDA) issued a crisis use authorization for the utilization of Remdesivir to treat patients with extreme COVID-19, after a study indicated positive preliminary results. It may be noted that an emergency use approval is lower than full FDA approval. Preliminary data from a trial run by the National Institute of Allergy and Infectious Diseases (NIAID) indicated that Remdesivir had a "clear-cut, significant, positive effect in diminishing the time to recovery" in COVID-19 patients thus, improving recovery time for patients infected with COVID-19 from 15 days to 11 days.

Concerns of Cancer Patients Aid Association (CPAA)

The drug, Remdesivir enjoys negative monopoly under patent protection laws in India as the Gilead’s patent application for Remdesivir filed in India in 2015 and was granted a patent on 18^th February 2020. In the wake of perceiving the same, Cancer Patients Aid Association (CPAA), a charitable organization, sought for the revocation of the patent granted to Remdesivir in India to guarantee that the medication is accessible to those in need at reasonable costs and furthermore, with the intent that generic alternatives of the same are manufactured, thereby increasing the availability of the drug. On 9^th April 2020, CPAA wrote to the Health Ministry and Pharma Ministry soliciting for the revocation of patent allowed to Remdesivir under Section 66 of the Patents Act, 1970 on the ground of public interest and Section 64 of the Act on the ground of non-patentability of the patented medication. CPAA made just a representation to the Health Ministry and no legal plan of action has been searched out yet.

As per the Patents Act, 1970, section 64 states that a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on numerous grounds such as non-patentability. The request set forth by CPAA intends to set up that the patent application for Remdesivir was for a salt of a known compound, therefore inadequate with regards to patentability and prohibited by Section 3(d) of the Patents Act which states that a new form of a known substance such as salts, esters, etc., that does not result in enhanced efficacy cannot be patented. Further, the plea by CPAA claimed that the patent lacks the novelty and inventive step and the current patent has been granted for minor anticipated modifications of the compounds already disclosed in prior patent applications for compounds similar to Remdesivir which are obvious to a person skilled in the art. On these two grounds, CPAA questioned the grant of the patent.

Section 66 of the Patents Act, 1970, states that where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked. Depending on the fact that the Right to Life under Article 21 of the Indian Constitution also encloses the Right to Health, CPAA concentrated on the requirement for the accessibility of Remdesivir at affordable prices and the production of generic alternatives for the same by applying for revocation of Gilead's Remdesivir on the ground of public interest.

Licensing deal

It appears that in view of the impact of the above, Gilead has signed non-exclusive voluntary licensing agreements with generic pharmaceutical manufacturers based in Egypt, India and Pakistan i.e. Cipla Ltd.; Dr. Reddy's Laboratories Ltd.; Eva Pharma; Ferozsons Laboratories; Hetero Labs Ltd.; Jubilant Lifesciences; Mylan; Syngene, a Biocon company; and Zydus Cadila Healthcare Ltd. for manufacturing and distributing Remdesivir at affordable prices in 127 countries. These licenses are royalty-free until the World Health Organization (WHO) declares the end of the public health emergency regarding COVID-19, or until a medication other than Remdesivir or a vaccine is approved to treat or prevent COVID-19, whichever is earlier.

As per the recent reports, Cipla has launched Remdesivir under the brand name Cipremi (Remdesivir lyophilised powder for injection 100 mg) which has been approved for adult and paediatric patients hospitalized with suspected/laboratory confirmed COVID-19 infection, in particular, for those on oxygen support. Similarly, Hetero Pharma has launched the generic version of Remdesivir under the brand name Covifor (100 mg injectable vials) for treating COVID-19 infection.

In view of the above, the most important drug in the current scenario of COVID-19 pandemic has become the need of the hour after facing numerous challenges and all that the common man of India desires is a solution to deal with the pandemic in an affordable way.

 

Over time there has been a considerable amount of shift from the traditional marks such as word mark or a logo mark towards non-traditional marks such as sound marks, position marks, smell marks amongst others. 

 

In this article, we are focusing on sound marks; however, before we discuss various aspects, we are defining what a sound mark actually. Typically, a mark which is audible (which may amount to a melody) and is distinctive enough to act as a source identifier of one’s goods or services qualifies as a sound mark. 

 

Just like the nature of a sound mark which is unconventional, the prosecution of an application of a sound mark is equally unconventional and quite challenging. Therefore, it becomes imperative to take a brief look at the international stand on granting registrations to sound marks.

 

Sound Marks in the United States of America

 

Having the first sound mark registered nearly 70 years ago, the material information and guidelines for obtaining registration of a sound mark in the United States of America, include but are not limited to- a description of the sound mark along with an audio reproduction of the sound (as an electronic file) must be provided, a musical score sheet submitted as a .jpg or .pdf file.

 

Some of the recognized and well-known sound marks that have been registered in the U.S include:

 

1. Lion’s Roar of MGM (https://www.uspto.gov/kids/MGMRoar.mp3, U. S Registration No. 1395550)
2. Mattress Discounters’ HAVE A GOOD NIGHT’S SLEEP ON US, MATTRESS DISCOUNTERS jingle (U.S. Registration 1754344- https://www.uspto.gov/sites/default/files/74219263.mp3)
3. ESPN’s repeated three notes on Sports Center (U.S. Registration No. 2450525).

 

Sound Marks in the European Union

 

In the landmark case of Shield Mark BV v. Kist, the European Court of Justice (ECJ) laid down that for a sound mark to be considered registrable, it should be capable of being graphically represented and should have the characteristic of distinctiveness that will enable consumers to distinguish between the goods and services of one from another.   

 

It also laid down that a stave divided into bars and showing a clef, musical notes and the rest showing the relative value helped determine the pitch and duration which may constitute an authentic and realistic representation of the melody/sound. This mode of graphical representation of the sounds meets the requirements and may be considered easily intelligible. Such representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective to qualify for registration.

 

On the other hand, requirements to qualify as a sound mark are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia.[1]

As a description of a sound may lack precision and clarity and quality, the ECJ has refused a written description of sounds as being equivalent or satisfying the requirement of graphical representation.

 

Famous sound marks in India and judicial interpretation governing their registrability-

 

The India Trade Marks Act, 1999 defines a trademark under Section 2(1)(zb) as "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours."

 

With the rise in cut-throat competition, brand recognition, variety of marketing strategies and an increase in the need to cater to a larger consumer base with more creative and innovative ideas, the trademark regime in India is aiming at providing for protection for various non-traditional/ non-conventional marks.

With the earliest sound mark registrations being granted in the name of Yahoo Inc for their three-note yodel in as early as the year 2008 (Registration No. 1270406 in Classes 35, 38, and 42), to ICICI Bank’s acquiring statutory rights on their corporate jingle (Registration No. 1807773 in Class 36), the biggest challenge with the registrability of non-traditional marks has been the ability to represent them graphically (which is a sine qua non for registration) and to prove distinctiveness.

 

As per the Trade Marks Manual, an application for a sound mark should:-

 

• clearly state that the mark applied for is a sound mark (otherwise the application will be examined as if it were a word and/or device mark);
• meet with the graphic representation requirements with a representation of the sign by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests, indicating relative value, and sharps, flats and naturals (accidentals).
• The acceptability of a sound mark must depend upon whether the sound is or has become a distinctive sign; and
• Prima facie, no sound marks will qualify for acceptance without evidence of factual distinctiveness.

 

Also, as per the Trade Marks Rule, 2017, an application for the registration of a sound trademark should consist of the reproduction of the same in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations. In light of the rise in audio branding and associated benefits, this rule was incorporated with an attempt at making procedural and rights perspective uniform.  Such an MP3 format is beneficial, as the same can be accessed and heard by one and all including laymen who may in a general course not be able to comprehend the notations as they would not be well versed with them. This shall in turn also ease the whole examination process and litigious actions/proceedings.

 

The most common objection being raised by the Trade Marks Office while adjudication of the registrability of the sound marks in India is Section 9 - descriptiveness and lack of distinctiveness or procedural objections such as submission of the sound clippings in MP-3 format.

 

On the other hand, a few of the known and registered sound marks in India as on date are as follows:-

 

1. Royal Enfield’s ‘thump sound’ produced by idling and throttling of the bullets (Registration No. 3044833). For this particular case, the TMO had raised objections on relative grounds of refusal, in response to which the Registered Proprietor claimed dissimilarity in the competing sound marks;
2. ZIPPO MANUFACTURING COMPANY’s obtained registration in the year 2019 for their signature click of the cigarette lighter (Registration No. 3995841 and can be heard at- https://tsdr.uspto.gov/documentviewer?caseId=sn87264868&docId=MRK20161212080312#docIndex=21&page=1)
3. Mastercard acceptance tone (Registration No. 4104215 and also available to be heard at - https://newsroom.mastercard.com/videos/acceptance/)

 

Pitbull’s famous loud “EEEEEEEYOOOOOO!” now a registered trademark

 

The United States of America being at the forefront in granting registrations to sound marks has once again granted a rather unusual sound mark a trademark registration. The same being that of Pitbull’s famous loud yell, also known as, GRITO. While it is not the first sound mark registration granted by the USPTO, it is a unique one, because this is the first time that an artist has acquired a trademark registration for a sound for the same as a musical recording as well as live performances (US Registration Nos. 5877076 and 5877077). The intent to have this GRITO registered as a trademark began in 2017, when a similar yell was used in the famous Columbian track ‘Mi Gente’.

 

Trade Mark Laws worldwide, including in the Lanham Act, defines a trademark as something that acts a source identifier and is capable of distinguishing the goods and services under one trademark from that of another. Over the years, even ‘sensory marks’ like sound, smell and colour have acquired registrations for trademark because they have satisfied the most important criteria i.e., acting as a source identifier and capability of distinguishing the goods and services with others in the trade. When we speak of these criteria, especially for artists, it is their immediate recognition by the public that speaks of their success. Pitbull has achieved this success and his yell or GRITO, which is used in almost all of his songs, has now come to be easily recognized by the audience as originating from him – thereby not only acting a source identifier for Pitbull but also having the capability of distinguishing his musical works from those of others. However, in addition to the above requirements, just like a common or to say non-inherently distinctive word mark, a common sound mark also must show that it has ‘acquired distinctiveness’ by way of its use. That is to say, people yell all the time, so in order for a particular yell to become a trademark, it must acquire distinctiveness so that people recognize that it identifies a source rather than simply being a yell.[2] In this regard, the Trademark Trial and Appeal Board (TTAB) of the USPTO has held[3] that “a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck. Thus, a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace’ sounds or those to which listeners have been exposed under different circumstances”.

 

Pitbull’s GRITO, being able to satisfy all the conditions, was held to be a trademark.

However, had the Pitbull’s GRITO been applied for in India, it would have in all likelihood faced the following challenges:

 

1. Objection on Section 9 of the Trade Marks Act, 1999 – As highlighted above, a prima facie requirement for a sound mark to be registered in India, per general practice of the Indian Trade Marks Office would be to show that the sound mark is distinctive and has acquired distinctiveness by way of its use. Pitbull’s GRITO has acquired distinctiveness since it has been used by him in almost all his songs over the years, what would have to be established is its acquired distinctiveness and use in India.

 

1. Musical notation of the sound mark – As opposed to the USPTO’s requirements in filing of sound marks where the Applicant only needs to give a description of the sound mark and its audio recording; in India, it is important that the sound marks when applied for, are submitted with musical notation of the same. The question that arises is, would a trademark like the GRITO, which is a unique yell, would be written in the form of musical notation.

 

Conclusion

 

It is evident that the essence for any unconventional mark such as a sound mark to be qualified as a trademark remains the same in almost all jurisdictions i.e., their capability to act as a source identifier, ability to distinguish the goods and services from those of others in the trade and acquired distinctiveness if it is a common sound. However, whether or not a sound mark will be registered in a particular jurisdiction is also directly proportional to the kind of sound mark it is and if it accurately fits the filing criteria of that jurisdiction.

Romer, J., said in the case of Registered Trade Marks of John Batt & Co. and In re Carter's Application for a Trade Mark- “one cannot help seeing the evils that may result from allowing trade marks to be registered broadcast, if I may use the expression, there being no real intention of using them, or only an intention possibly of using them in respect of a few articles. The inconvenience it occasions, the cost it occasions, is very large, and beyond that I cannot help seeing that it would lead in some cases to absolute oppression, and to persons using the position they have obtained as registered owners of trade marks (which are not really bona fide trade marks) for the purpose of trafficking in them and using them as a weapon to obtain money from subsequent persons who may want to use bona fide trade marks in respect of some classes in respect of which they find those bogus trade marks registered.”.

 

The ethos of the above statement has been perfectly encapsulated in the provisions of the Indian Trade Marks Act, 1999 (“Act”). The Act clearly lays out provisions for the rectification of the Register and cancellation of a registered trademark under Sections 47 and 57 of the Act (which were covered under Sections 46 and 57 of the previous Act titled “The Trade And Merchandise Marks Act, 1958”).

 

Section 57 deals with the rectification of the Register of Trade Marks where a trade mark is entered in the Register without sufficient cause or wrongly remains on the Register.

 

Section 47 deals with the cancellation of registration of a trademark on the grounds of non-use and the conditions which need to be satisfied are specified under sub-section 1(a) & 1 (b) which are required to be satisfied by the aggrieved person (hereinafter referred to as the Petitioner) instituting the action.

 

Under Section 47 (1)(a), the Petitioner shall prove –

 

• that the trademark was registered without any bona fide intention, and;
• there has been no bona fide use of the registered trademark for a period of three months preceding the date of the cancellation petition.

 

Under Section 47 (1)(b), the Petitioner shall prove –

 

• that a period of five years and three months has elapsed since the trade mark was entered into the Register of Trade Marks during which there has been no bona fide use of the registered trademark.

 

The exceptions as laid out in the statute to the conditions mentioned in Section 47 (1) are -

 

1. Where the application for registration has been permitted under Section 12 of the Act to register an identical or similar trade mark, or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application for cancellation, if it is shown that there has been bona fide use in relation to either goods or services of the same description of goods or services associated with those goods or services of that description for which the trade mark has been registered.
2. Provisions of Section 47 (1) (b) shall not apply to a mark if the proprietor is able to show the existence of special circumstances in trade which prevented him from using the trade mark.

 

The difference between Section 47 (1)(a) & 47 (1)(b) has been explained by the Supreme Court in the case of American Home Products Corporation vs. Mac Laboratories Pvt. Ltd. and Ors. when the Supreme Court while interpreting Section 46 (1)(a) & (b) of the Trade and Merchandise Marks Act 1958opined that “The distinction between Clause (a) and Clause (b) is that if the period specified in Clause (b) has elapsed and during that period there has been no bona fide use of the trade mark, the fact that the registered proprietor had a bona fide intention to use the trade mark at the date of the application for registration becomes immaterial and the trade mark is liable to be removed from the register unless his case falls under Section 46(3), while under Clause (a) where there had been a bona fide intention to use the trade mark in respect of which registration was sought, merely because the trade mark had not been used for a period shorter than five years from the date of its registration will not entitle any person to have that trade mark taken off the Register. Under both these clauses the burden of proving that the facts which bring into play Clause (a) or Clause (b) as the case may be, exists is on the person who seeks to have the trade mark removed from the Register. Thus, where there has been a non-user of the trade mark for a continuous period of five years and the application for taking off the trade mark from the Register has been filed one month after the expiry of such period, the person seeking to have the trade mark removed from the Register has only to prove such continuous non-user and has not to prove the lack of bona fide intention on the part of the registered proprietor to use the trade mark at the date of the application for registration. Where, however, the non-user is for a period of less than five years, the person seeking to remove the trade mark from the Register has not only to prove non-user for the requisite period but has also to prove that the petitioner for registration of the trade mark had no bonafide intention to use the trade mark when the application for registration was made.”

 

Whilst on the first glance the provision appears to be straightforward, there has been a great deal of deliberation regarding the meaning of the words “bona fide intention” and “bona fide use”.

 

Firstly, it has been held that the two conditions set out in clause (a) are cumulative. This means that in order to succeed under clause (a) the Petitioner must show lack of bona fide intention as well as bona fide use. Therefore, clause (a) will not prevail where there was no bona fide intent to use but there has been a bona fide use of the trademark and vice versa.

 

There should be ‘bona fide intention” to use the mark on the date when such application is made for registration. The intention to use a trademark sought to be registered must be genuine and real and the fact that the mark was thought to be something which someday might be useful would not amount to any definite and precise intention at the time of registration to use that mark. The intention to use the mark must exist at the date of the application for registration and such intention must be genuine and bona fide.

 

The word use has been defined under Section 2 (2)(b) of the Act as to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark. The Courts have settled that use may be other than physical and include actions other than actual sale and thus this will be taken into account while determining bona fide use of the trade mark.

 

The intention of the legislature behind permitting cancellation of registration on the basis of non-use is to keep the register clean and prevent trademark squatting. Therefore, brand owners should be careful while making applications for registration as lack of bonafide intent to use the mark or the lack of bonafide use may render the registration vulnerable to a cancellation action.

 

During what is proving to be the worst economic crash of our times, the luxury and modern fashion market is probably bearing the hardest brunt since the very beginning of it all. Fashion houses across the world being forced to indefinitely shut their manufacturing centers and stores, even their most loyal customers sticking to purchasing only essentials and the ban on international travel have only catalyzed the worsening of the situation for these luxury brands. Research shows that the high-end fashion market has already seen a revenue loss of USD 32 – USD 43 billion, hardly 4 months into 2020, solely because of the COVID-19 outbreak. Overall, the industry is expected to be hit by a loss of USD 450-600 billion in 2020, which is even more staggering than the figures of the 2008-2009 recession. Even in the fashion capitals of the world, global-spanning fashion giants are increasingly facing a setback and feeling the growing impact of the pandemic. 

Economists and financial analysts across the world have estimated that the luxury fashion market will continue to face the effects of the imminent global recession till at least the fag end of 2021. In regard to the same, we looked at a few of the main deep-rooted causes of this continued damage to the international fashion market: 

• Siege of airports, duty-free shops and international travel: Back in 2018, Chinese consumers made up 40% of the total revenue earned by the luxury fashion market across the world, who collectively took at least 150 million international trips, and the numbers have only increased with time. Asian shoppers are known to splurge in European countries, especially on products of luxury brands, which are much cheaper there. Even though the Chinese economy is recuperating, that does not have a bearing on the present international travel restrictions and the consequential damage these brands are dealing with. A tied down luxury spending of consumers of other nationalities is also foreseeable, considering that people’s priorities are now shifting. Industry leaders like Birkin, Burberry, Gucci, Louis Vuitton and Tiffany and Co., have themselves voiced their concern over the falling airport and travel retail and eventual reduction in international tourists; 

• Cancelled fashion weeks, trade shows and galas: Right after the conclusion of the Milan Fashion Week in February this year, a host of events such as the Met Gala, Hyères Festival, Parisian HauteCouture Week, Indian Fashion Week and London Men’s Fashion Week have either been cancelled or postponed indefinitely. Further, several ready to wear trade shows and exhibitions for perfumes and jewellery have been put on hold. Cancellation of such large-scale events has resulted in huge set-backs and losses for the organizers as well as designers, leading to the ‘restructuring of the wholesale dynamic’. Considering that the fashion industry is a seasonal one, fashion week dates are often not ‘compressible’, as expressed by the heads of the most common luxury names such as Valentino and Prada; 

• Counterfeit products: With the in-store retail at an all-time low and the high demand for essential products, counterfeiting is increasing exponentially. Of late, many cases of counterfeit face masks with unauthorized use of luxury brands has been witnessed in many countries across the globe. By using the logos of fashion brands on essential goods, the counterfeiters and infringers are trying to ride on the reputation and goodwill of the rights holders and extract undue benefit. Battling a recession struck industry along with counterfeit products doing the rounds in the market is the unfortunate reality at present. 

Given the difficult situation at present, these brands are now coming up with various ways of battling the irreparable economic damage, a few of which we have mentioned below: 



Back in 2009, when the world was hit by the recession, one of the iconic questions asked by Bloomberg was “How do you sell luxury in a recession?” and we are once again finding ourselves asking the same. The target consumers, in times of a recession, will most likely not want to spend on products that would fall ‘out of style’ the next season. Thus, fashion brands are contemplating switching from fast fashion and trend specific goods to evergreen products naturally associated with the brands. For instance, Hermès is now focusing on their classic perfumes and leather bags and so is Louis Vuitton Moët Hennessy. Gucci is discussing the potential market impact of dropping their iconic ‘GG’ metallic logo and ‘convince customers that a handbag isn’t just an accessory but an investment’. Gucci has already experimented with such an approach when they came up with the ‘New Jackie Bag’ inspired by the taste and fashion statements made by the late Jacqueline Kennedy Onassis. 



Even though most luxury brands have a strong Instagram following, customers enjoy the in-store experience of the fashion houses the most. However, with the present restrictions, brands are now looking at the vast possibility of international and regional e-commerce services. Brands such as Jimmy Choo, Bulgari and Chanel are already devising strategies to boost the growth of their e-commerce presence. Indian designers such as Sabyasachi Mukherjee, Manish Malhotra and Tarun Tahiliani are also aiming to follow the same course of action. 



Multiple luxury brands are now using their manufacturing facilities to provide aid to the public at large, which in turn is also helping the brands sustain themselves during this period. Louis Vuitton Moët Hennessy (LVMH) is now manufacturing hydroalcoholic gels (hand sanitizers) to help cope with the shortage of the same in countries such as France and Italy. LVMH is also manufacturing surgical masks under the brand names Dior, Givenchy and Celine. This is not only helping the society, but also the brand value and the employees. Other fashion giants like Chanel, Balenciaga, Prada and Hermès are working towards mass production and distribution of masks and sanitizers. In India, designers such as Anita Dongre, Manish Malhotra and Tarun Tahiliani are hosting online auctions, in association with Fashion Design Council of India, of their couture. 

Currently, all fashion houses are aiming at the well-being and safety of their employees and production workers along with maintaining their brand value. Indian brands are specifically struggling to take care of their local craftsmen and factory workers along with taking steps which are crisisresponsive in nature. At the moment, all luxury brands across the world are trying their best to handle the effects of the pandemic. Given the increasing demand of cheaper alternatives of luxury products, we can expect a spike in counterfeit products especially in the South Asian countries – but here’s hoping that the fashion industry comes out of the struggle, unscathed.

Section 124 is probably the most controversial provision of the Trade Marks Act (“Act”) in today’s time. Courts across the country have had a go at the interpretation of stay of proceedings where the validity of registration of the trade mark is questioned. When the Supreme Court in Patel Field Marshal Agencies and Ors. Vs. P.M. Diesels Ltd. and Ors., 2017 (13) SCALE 783 rendered its decision, it was felt as if the entire controversy had been finally put to rest, however is that really the case?

 

Section 124

 

The Section 124 has been defined under the Act as follows-

 

124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.—

• Where in any suit for infringement of a trade mark—
• the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
• the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark,
• the court trying the suit (hereinafter referred to as the court), shall,—
  1. if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
  2. if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

 

• If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

 

• If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

 

• The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

 

• The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

 

The section envisages two situations-

 

1. Where the registration has been challenged prior to the institution of the infringement suit
2. Where the registration is sought to be challenged subsequent to the infringement suit.

 

The outcome under situation 1 is fairly straight-forward and the suit is stayed pending the disposal of the cancellation proceedings.

 

However, complexities arise in situation 2.

 

Situation 2 can be divided into 3 stages as represented in the following infographic-

 

 

The 1958 Act vis-à-vis the 1999 Act

 

Section 111 of the 1958 Act was the corresponding act of Section 124. The regime under the 1958 was that when in an infringement suit, the validity of registration of trade mark was challenged, an application for rectification of the register shall be made to the High Court. The primary difference in the 1999 Act was that the jurisdiction to adjudicate the validity of a trade mark registration was outsourced to the Appellate Board.

 

 

 

Patel Field Marshal Agencies and Ors. Vs. P.M. Diesels Ltd. and Ors., 2017 (13) SCALE 783

 

Trade Mark law witnessed a tectonic shift when the Hon’ble Supreme Court rendered its decision in Patel Field Marshal (supra) interpreting Section 124. The primary question before the Supreme Court in Patel Field Marshal (supra) was whether “In a situation where a suit for infringement is pending wherein the issue of validity of the registration of the trade mark in question has been raised either by the Plaintiff or the Defendant and no issue on the said question of validity has been framed in the suit or if framed has not been pursued by the concerned party in the suit by filing an application to the High Court for rectification Under Sections 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958, whether recourse to the remedy of rectification Under Sections 46/56 of the 1958 Act would still be available to contest the validity of the registration of the Trade mark.”

 

The Supreme Court in unequivocal terms held that the plea of rectification, upon abandonment, must be understood to have ceased to exist or survive between the parties inter se. In its opinion any other view would be to permit a party to raise the issue of rectification at any stage even after a final decree may have been passed by the civil court in the meantime. To permit the issue of rectification, once abandoned, to be resurrected at a later stage would be to open the doors to reopening of decrees/orders that have attained finality in law.

 

As has been later interpreted by the Delhi High Court in Country Inn Private Limited vs. Country Inns and Suites and Ors. (23.04.2018 - DELHC) the plea challenging the validity of registration must be raised at the correct stage because if it is raised at a later stage then the right to raise issue of invalidity is lost forever.

 

Intellectual Property Appellate Board

 

The Intellectual Property Appellate Board (IPAB) was constituted by a gazette notification of the Central Government in the Ministry of Commerce and Industry on 15^th September 2003 with a lot of fan-fare. It was believed that the institution of IP specific tribunal will expedite the snail pace of the adjudication of IP related disputes. The IPAB was bestowed with the powers to adjudicate the question of validity of a trade mark registration as mentioned in Section 124 of the Act.

 

 

Practical application of Section 124

 

Through Patel Field Marshal (supra), the Hon’ble Supreme Court has resolved the issues and controversies regarding the multiplicity of the proceedings in relation to a trademark infringement suit. The Supreme Court has clearly provided that the parties are required to seek liberty from the Court for pursuing the cancellation of the opposite party’s registration(s) before the IPAB. Once the IPAB decides the validity of the registration, the Civil Court will be bound by the IPAB’s order and the main suit proceedings in the trademark infringement matter will be decided in accordance with the outcome of IPAB proceedings. Further, even though the consequence of not raising the plea of validity has been set out by the Supreme Court, a few questions still remain unanswered.

 

The Supreme Court is charting into dangerous territories when it says that once the plea of rectification is rejected by the Court, or if allowed by the Court and not pursued by the party, it stands extinguished as one could only infer perpetually. What is not clear by the judgement of the Supreme Court is what would be the consequence in a situation where the plea of invalidity which was not available to the party at the time of the infringement suit becomes available subsequently. A plain reading of Patel Field Marshal (supra) would suggest that the right stands extinguished forever, however, for example if the issue of invalidity is not raised and the suit is decreed and subsequently the registered mark becomes vulnerable to cancellation on the grounds of non-use, would the party still not be permitted to challenge the validity of the registered mark?

 

It would be important to see how the Courts adjudicate upon these pending controversies, by interpreting the Patel Field Marshal (supra).

 

Online piracy has always been a point of trouble for rights holders throughout the world.

 

The Delhi High Court in its judgement in UTV Software Communication Ltd. And Ors Vs 1337x.To And Ors dated April 10, 2019 made a significant contribution to the jurisprudence of website blocking orders in India, especially by introducing a new remedy of a ‘dynamic injunction’, wherein the rights-holders do not need to go through the long and tiresome process of a judicial order in order to issue blocking orders to ISPs for each and every variation of infringing links. Instead, as per this judgment, the rights holders or the Plaintiffs have been allowed to approach the Joint Registrar of the Delhi High Court directly to extend an injunction order already granted against a website, against a similar ‘mirror/redirect/alphanumeric’ website which contains the same content as the original website.

 

The Hon’ble Court further considered the concept of “Rogue Websites’, the court explained that these are the websites which share the infringing content primarily or principally. The court observed that these are the websites that provide free content to watch and are predominantly unknown or have masked their contact information if any.

 

The Hon’ble Delhi High Court relied on the Hon’ble Singapore High Court’s decision in Disney Enterprise v. Ml Ltd., (2018) SGHC 206), wherein the concept of a dynamic injunction was formulated for the very first time. In the abovementioned case, the Hon’ble Singapore High Court observed that the Plaintiff could file an affidavit on record stating the reasons how the new website falls under the purview of the existing blocking order.

 

This judgment can be seen as a significant step towards curbing the issue of online piracy, the judgment offers the Plaintiffs with various ways to tackle the issue of “hydra headed” multiple infringing websites containing the same content. The court through the present judgment has provided the Plaintiff with the opportunity to update the list of blocked/ infringing websites by the prior permission of the Joint Registrar.

 

This judgment provides us a very practical and approachable solution as one of the major issues being faced in online piracy was the ability of the pirated websites to produce mirror websites within no time.

The Registrar of Geographical Indications has granted GI status to “Kashmir Saffron”. The application for the same was filed on December 03, 2018 by the Directorate of Agriculture, Government of Jammu and Kashmir in class 30 and the said application was facilitated by – Sher-e-Kashmir University of Agriculture Science and Technology, Kashmir (SKAUST-K) Shalimar and Saffron Research Station, Dussu (Pampore), Jammu and Kashmir. Kashmir Saffron, as known to all has gained immense popularity in India and abroad, owing to its superior quality, aroma and multipurpose use such as in cosmetics, Kashmiri cuisine and medicinal use. It is cultivated and harvested in the Karewas (high lands) of Jammu and Kashmir and is the only saffron which is grown at an altitude of 1600m to 1800m above mean sea level, adding another feature and making it only one of its kind. One of the important aspects to note about the Kashmir Saffron is that it is totally chemical-free and organic.

 

Kashmir Saffron has long and thick threads (Stigmas) and is available in three types – Lachha Saffron, Mongra Saffron and Guchhi Saffron. Out of the three types, Mongra Saffron is considered to be the costly one as it contains only red-coloured stigmas.

 

Apart from its above mentioned qualities and benefits, Kashmir Saffron also has an important geographical aspect to be noted. It grows in the regions of Kashmir owing to its altitudinal effect; temperate climatic conditions and the type of soil available there, making it different from the other saffron(s) grown in rest of the world.   

 

Agriculture not only gives riches to a nation, but the only riches she can call her own.

                                                                                                        - Samuel Johnson

 

In the year 2017, The North Eastern Regional Agricultural Marketing Corporation (NERAMAC) Limited, filed an application for Chak Hao to be given a Geographical Indication tag and the research and process was aided by the state agriculture department.

 

The Examiner of Trade Marks and GI issued an examination report, under Rule 33 of the Geographical Indication of Goods (Registration and Protection) Rules 2002, indicating that the Association of Producers should be replaced as the Applicant as per Section 11 of the Geographical Indication of Goods (Registration and Protection) Act, 2002. The Ld. Examiner also requisitioned information and documentation regarding special characteristics, unique features, proof of origin, usage of name – Chak Hao, area of production and ecosystem study, uniqueness of the geographical indication etc.   

 

As a result, The Consortium of Producers of Chak Hao replaced NERAMAC Limited as the Applicant and a detailed response was filed by them providing the specific information and supporting documents. The registration was granted on April 20, 2020.   

 

Chak Hao (Oryza sativa L.), commonly known as Black Rice, is a culturally important traditional rice variety of Manipur, which not only provides nutritional and medicinal benefits but also plays a cardinal role in socio-cultural practices of the North-East community of India. The rice gets its unique colour from a naturally occurring pigment ‘Anthocyanin’, and is known for its glutinous texture and eccentric aroma. Further, the geographical conditions and agro-ecological situation of Manipur is best suited for cultivation of Black Rice.

 

Ergo, it is anticipated that this GI tag will instigate commercial cultivation and trading of Chak Hao, globally, and also award loyalty to our farmers.

Section 3(k) of the Patents Act, 1970 provides a bar on patentability of invention related to a mathematical or business method or a computer programme per se or algorithms. Although Section 3(k) excludes ‘a mathematical or a business method’, computer programmes and algorithms are the ones receiving the highest objections/rejections from the examination authorities. In today’s day and age, where most of the inventions are computer implemented or a predefined set of instructions, the question becomes more relevant in terms of the clause computer programmes per se, as non-patentable. 

 

The Delhi High Court, in a decision dated 12^th December, 2019, keeping an open mind ruled on this issue in Ferid Allani v. Union of India, WP(C) 7 of 2014. The facts of the case go something like; Ferid Allani, the Petitioner, filed a National Phase Application seeking grant of patent for a “method and device for accessing information sources and services on the web”. However, said application was hit by Section 3(k) of the Patents Act during the examination stage. 

 

In the First Examination Report (FER), in addition to the objections/rejections that the invention lacked novelty and inventive step under Section 2(1)(j) and Section 2(1)(ja), was also objected under Section 3(k), it being a computer programme. Not satisfied with the response by the Applicant, the Controller of Patents rejected the Application. The Petitioner preferred an appeal before the Intellectual Property Appellate Board (IPAB). The IPAB dismissed said appeal stating that the claimed invention did not disclose any technical effect or advancement, which led to the Writ Petition in Delhi High Court, challenging the order of IPAB. 

 

In its decision, the Court observed that the bar is on computer programmes per se, and not all computer related inventions. Further, the Court observed that the phrase ‘per se’ was incorporated in the Section 3(k) of the Act to ensure that genuine inventions are provided patent protection. The Court relied upon Clause 4 of the Report of the Joint Committee of the Patents (Second Amendment) Bill, 1999 which stated the addition of the phrase ‘per se’ in clause (k) of Section 3 with a view that the computer programme may include certain other things, ancillary thereto or developed thereon. The legislative intent behind the same was to not reject them for grant of patent if they are inventions. That is to say, they result in a technical contribution or technical effect. 

 

The Court, further, relied upon the Draft Guidelines for Examination of Computer Related Inventions of 2013, where the phrase ‘technical effect’ was defined as a solution to technical problems and includes higher speeds, reduced hard-disk access time and more economical use of memory. In view of the same, the Court directed the Patent Office to re-examine the Petitioner’s application. 

 

Diving a little deeper into the legislative intent being hinted upon by the Court in the abovementioned case law, it would be appropriate to mention the Patents (Amendment) Ordinance of 2004, which proposed the amendment of Section 3(k) to read clause (k) as “a computer programme per se other than its technical application to industry or a combination with hardware” and introducing clause (ka) which read “a mathematical method or a business method or algorithms”. Said Ordinance aimed to provide a straightforward and confusion-free approach to the computer related inventions under Section 3(k). However, said Ordinance was repealed in 2005, a few months after being introduced. The Ordinance with its proposed amendment would have avoided the uncertainty and hesitation that we see today from the Patent Office with respect to computer related inventions. 

 

Over the years, the Manual of Patent Practice and Procedure by the Patent Office has tried to pave a clearer path with respect to computer related inventions. The current Manual of Patent Practice and Procedure issued in November 2019, cites the Revised Guidelines for Examination of Computer Related Inventions of 2017 for Section 3(k). The Revised Guidelines on the other hand states that if the technical contribution of an invention lies in both the computer programme as well as the hardware, the application shall proceed to other steps of patentability. The Guidelines from 2017 bring certainty to the examination procedure of the computer related inventions and give an Applicant a reasonable chance to get protection for their invention. 

 

However, based upon the directions of the Hon’ble High Court, the Controller of Patents re-examined the patent application and issued a Hearing Notice to the Agent for the Applicant. The Controller found the National Phase Application to lack novelty in view of the cited prior art documents and further falling under the purview of Section 3(k), thereby refusing the instant Patent Application.

 

Further, an Appeal has been preferred by the Applicant under Section 117A of the Patents Act, before the Intellectual Property Appellate Board. It is pertinent to note that the term of patent shall expire on 29^th December, 2020.

 

Although an appeal to the order of the Controller is still pending, the Hon’ble High Court’s decision has opened certain aspects of the examination of computer related inventions and shed light on the fact that when examining said inventions, one must adhere to the legislative intent behind the addition of the phrase ‘per se’, which in this case works as an asterisk in clause (k) of Section 3 when it comes to computer programmes. The decision indeed paves a path for more successful patents and change in the examination procedure of computer related inventions.

The 21^st century ushered in a digital revolution where the use of computers became extremely important and common. People were increasingly switching to computers as a digital storage solution for their home and business needs. Perhaps nothing symbolizes the start of the Indian digital revolution better than the introduction of the Information Technology Act, 2000. The Information Technology Act inserted Section 65A & Section 65B in the Indian Evidence Act, 1872. These sections deal with electronic evidence and its admissibility. Before discussing electronic evidence it is necessary to first understand the definition of evidence.

 Meaning of Evidence

Evidence in simple terms is any species of proof presented for the purpose of inducing belief in the mind. The statutory definition of the term Evidence has been given in Section 3 of The Indian Evidence Act, 1872. Section 3 defines the word “Evidence” to mean and include-                                                                                                                                      

• all statements which the Court permits or requires to be made before it by witnesses, in relation to matters of fact under inquiry, such statements are called oral evidence;

 

• all documents including electronic records produced for the inspection of the Court, such documents are called documentary evidence.

Moreover, Evidence can be divided into the following types

• Oral, or Documentary
• Primary, or Secondary

Primary evidence means the document itself produced for the inspection of the Court whereas Secondary evidence means and includes certified copies, copies made from the original by mechanical processes, copies made from or compared with the originals, counterparts of documents as against the parties who did not execute them and oral accounts of the contents of a document given by some person who has himself seen it. 

Coming to the current topic at hand, naturally the question arises whether electronic evidence is primary or secondary. 

Electronic Evidence: Primary or Secondary? 

Electronic evidence or digital evidence is any information that is stored or transmitted digitally. Electronic evidence is secondary evidence. 

Section 65 of the Indian Evidence Act provides for situations when a party may lead secondary evidence. Section 65B(1) deals with the admissibility of electronic evidence and it says that any information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer shall be deemed to be also a document, subject to certain conditions and such documents shall be admissible in any proceedings, without further proof or production of the original, as evidence or any contents of the original or of any fact. The conditions mentioned in sub-section (1) are listed in sub-section (2). 

Essentially the electronic evidence should satisfy the following conditions-

1. It should be produced by a computer which has been used regularly to store or process information for the purposes of any activities regularly carried on over that period by the person having lawful control over the use of the computer;
2. The information so derived was regularly fed into the computer in the ordinary course of activities
3. The computer was operating properly

 Judicial Interpretation

 Judicial interpretation of Section 65B is not exactly crystal-clear. Many Courts around the country including the Supreme Court have attempted to give structure to the practical implications of Section 65B. Probably none is more important than the case of Anvar P.V. Vs. P.K. Basheer (18.09.2014- SC) 2014 (9) SC J 1.

 The Supreme Court opined in the Anvar P.V. case that any electronic evidence can be proved only in accordance with the procedure prescribed under Section 65B. The Supreme Court held that the purpose of these provisions is to sanctify electronic evidence and the requirement of giving an electronic certificate under Section 65B pertaining to any electronic evidence or electronic record is mandatory for treating such an evidence as admissible in law. This understanding was a departure from the previous landmark case of State (NCT of Delhi) v. Navjot Sandhu, 8 (2005) 11 SCC 600 wherein the Supreme Court had held that that the requirement of certificate under Section 65B is not always mandatory and irrespective of the compliance of the requirements of Section 65B, there is no bar to adducing secondary evidence under other provisions of the Evidence Act. The judgement in the Navjot Sandhu case was in line with the settled and well-established judicial principle that procedure is the handmaid of justice and the object of prescribing the procedure is to advance the cause of justice, not to make it subservient to procedure.

 However, the decision of the Supreme Court in Anvar P.V case is not against the principles of natural justice, in fact if anything it sought to advance the cause of justice. It is common understanding that information stored digitally is more vulnerable to manipulation and/or tampering. In light of the existence of such circumstances, the requirement of the procedurelaid down under Section 65B becomes necessary. The object of the procedure laid down in Section 65B is to legitimize electronic evidence.           

 Commercial Courts Act, 2015

 The legislation threw in its hat and along came the Commercial Courts Act, 2015. The Commercial Courts Act, 2015 made several amendments to the Code of Civil Procedure, 1908 including the substitution of previous Order XI with a new Order XI. Rule 6 of the new Order XI deals with electronic records.   

 Rule 6 sub-rule (3) states that where electronic records form part of documents disclosed, the party shall file a declaration on oath stating the-

1. the parties to such Electronic Record;
2. the manner in which such electronic record was produced and by whom;
3. the dates and time of preparation or storage or issuance or receipt of each such electronic record;
4. the source of such electronic record and date and time when the electronic record was printed;
5. in case of email ids, details of ownership, custody and access to such email ids;
6. in case of documents stored on a computer or computer resource (including on external servers or cloud), details of ownership, custody and access to such data on the computer or computer resource;
7. deponent’s knowledge of contents and correctness of contents;
8. whether the computer or computer resource used for preparing or receiving or storing such document or data was functioning properly or in case of malfunction that such malfunction did not affect the contents of the document stored;
9. that the printout or copy furnished was taken from the original computer or computer resource

 

The declaration sought by Order XI Rule 6(3) in its essence encompasses all the requirements sought by Section 65B. It in fact does Section 65B one better as now it required the declaration pertaining to the electronic documents to be on oath and well detailed. 

The question that necessarily follows is that whether the party needs to file a Section 65B certificate even if it has filed the declaration under Order XI Rule 6(3).The practice being followed currently, at least in the Delhi High Court, is to file both. The declaration under Order XI Rule 6(3) is filed at the time of the institution of the suit and a Section 65B certificate is filed when the electronic evidence is adduced as evidence during the trial. The argument in favour of this contention is that documents filed at the institution of the suit do not become evidence till they are tendered as evidence during trial.

The Delhi High Court in ELI Lilly and Company and Ors. vs. Maiden Pharmaceuticals Limited (09.11.2016 - DELHC) interpreted the judgement of the Supreme Court in Anvar P.V. case to say that the certificate under Section 65B of the Evidence Act is required to accompany the electronic record when produced in Court. The Delhi High Court although allowed the party to file the certificate under Section 65B of the Evidence Act subsequent to the filing of the electronic record in the Court, it proceeded to add a word of caution by stating that such certificate/affidavit/s under Section 65B of the Evidence Act and/or under Order XI Rule 6 of CPC though can be filed subsequently, as any other document may be, but only if the party wanting to file the same makes out a case for reception thereof, as for late filing of documents beyond the prescribed time.

 Although the Delhi High Court in ELI Lilly case has used the words certificate under Section 65B and Affidavit under Order XI Rule 6 of CPC in the same breath almost interchangeably, the proposition that a declaration under Order XI Rule 6(3) in effect makes a certificate under Section 65B redundant remains to be seen.

Author: Shireen Dhar, Associate, ZeusIP Advocate LLP

In the wake of the COVID-19 crisis and numerous medical advisories flowing in, we have come across a commercial disparagement dispute between two FMCG majors. The dispute was taken to the Hon’ble Bombay High Court by the makers of LIFEBUOY soap - Hindustan Unilever Limited (‘HUL’) against the makers of DETTOL hand wash - Reckitt Benckiser (India) Private Limited (‘RB’).

HUL had advertised their LIFEBUOY soap to promote the significance of washing hands to maintain self-hygiene. Following HUL’s advertisement, RB took out an advertisement which allegedly depicted that its DETTOL hand wash was more effective than regular bar soap (shown as a red bar soap). HUL’s stand was that RB had attempted to denigrate HUL’s LIFEBUOY soaps and its red bar shape was clearly recognizable in RB’s advertisement, compelling HUL to move the court for seeking damages and permanent injunction.

The advertisement in question is no longer available, however, following were the alleged premises of HUL’s action (as per publicly available information):-

• That the advertisement by RB wrongfully depicted a doctor asking patients to keep away from a soap - the shape, color and configuration of which highly resembled LIFEBUOY soaps;
• Thereby indicating/falsely representing that DETTOL hand washes are more effective than soaps (in particular the ones being sold under the LIFEBUOY brand); and
• HUL also went ahead and relied on the World Health Organization’s guidelines, stating that RB’s advertisement went against the same and instead of promoting awareness, they intended to create a prejudice against use of soaps for washing hands.

Based on precedential caselaw concerning comparative advertising, for a claim of disparagement to succeed, HUL will need to satisfactorily prove the following:-

• that there has been a slandering of goods by RB due to a misleading/false claim regarding HUL’s product;
• such that the claim has misled or caused deception in the minds of consumers, so much so that;
• the public will perceive HUL’s products as being inferior, ultimately affecting consumer behavior, choices and causing business loss to HUL.

RB can possibly defend against HUL’s claims by proving that the above requisites have not been met and arguing that puffery (a statement that a tradesman’s goods are better than others) is permitted under the honest practices defense of Section 30 of the Trade Marks Act, 1999. The said provision permits acts such as claiming that its own products are best, without denigrating competitor’s products.

However, before the parties to the suit could delve deeper into claims and arguments, RB unilaterally agreed to take down the advertisement from 22nd March, 2020 to 21st April, 2020 which was followed by a nationwide lockdown and the closure of the courts for non-essential matters. It is to be believed that the said advertisement will remain as off-air until the lockdown (as has been extended by multiple states in India) is lifted. The matter would be likely heard once the courts re-open after the lockdown. It shall certainly be interesting to see how the court perceives this matter further on the next date.

Author: Sandhya Sagar, Senior Associate, ZeusIP Services

Definition & Overview

According to WIPO, patent pools are defined as an agreement made between two or more patent holders for licensing their patents to one another or any third party for the purpose of sharing their intellectual property rights. Generally, patents pools are made for complex technologies which necessitate complementary patents for providing productive technical solutions. These patent pools impart essential technologies by way of patents to various companies or firms for developing competent products. Moreover, patent pools also cover those technologies which are not yet full-fledged developed.

Patent rights of various technologies are assigned among various patent holders in such patent pools and the pooled patents are made available to member and non-member licensees. Such patent pools ensure that the licensing fees which is collected is appropriately allocated to each member in proportion to each patent's value.

Role of Medicine Patent Pool (MPP)

Medicines Patent Pool (MPP) is a United Nations-backed international organization founded in July 2010, based in Geneva, Switzerland. It was founded by Unitaid (a global health initiative that collaborates with potential partners to make medical innovations to prevent, diagnose and treat major diseases in low- and middle-income countries, with an emphasis on tuberculosis (TB), Hepatitis C, and HIV/AIDS and other co-infections) to negotiate patent agreements/contracts with pharmaceutical companies that can facilitate access for generic manufacturers.

 

In the past few years, MPP has negotiated voluntary licensing agreements that have made it accessible for low-income countries to purchase affordable treatments for HIV, TB, and Hepatitis C. In 2019, licensing agreements negotiated by MPP have saved various countries $210 million and helped avail two billion (approx.) doses of such medications.

 

MPP is based on the model that patents are intended to reward innovations, and a patent, if not licensed, can prevent the production or sale of affordable generic medicines and the development of novel innovations. The MPP negotiates with patent holders for licenses on HIV, hepatitis C and tuberculosis medicines. Such licenses allow generic drug manufacturers to distribute patented medicines in low- and middle-income countries and also, provide the freedom to develop new treatments.

How Patent Pooling can help?

 

MPP seeks voluntary licenses from the patent holders of antiretroviral drugs to create a pooled resource of patent innovations. Pharmaceutical companies and innovators can then access the pooled patent rights to develop or manufacture the new and adapted innovations necessary for sale in developing countries. This model eliminates the trouble and expense of negotiating licenses where various patent holders may hold rights in a single innovation.

• For patent holders: MPP offers royalty influx from various countries and provides a collaborative platform for easy access to develop the necessary.
• For innovators: The Patent Pool brings down the price of licensing the already patented technology to develop the new medicines.

 

In a nutshell, MPP’s model works for both pharmaceutical manufacturers/innovators and public health.

Contribution during COVID 19

 

The MPP is helping by gathering patent information for products already being tested in clinical trials, such as antiviral remdesivir and the biologic tocilizumab, in few countries. MPP also stated that they have made available the mentioned drugs via their online database, MedsPaL. It is a repository of patent intelligence established to allow countries and pharmaceutical companies to identify patents that could hinder access to new innovations, if unlicensed.

 

MPP, on 3^rd April, 2020, Geneva made a statement: “The Board of the Medicines Patent Pool (MPP) has decided to temporarily expand its mandate to include any health technology that could contribute to the global response to COVID-19 and where licensing could facilitate innovation and access. With the support of Unitaid, this will allow MPP to offer its IP and licensing expertise to the World Health Organization (WHO) to assist the global effort in any way it can”.

 

Marie-Paule Kieny, Chair of the MPP Governance Board, said, “In these difficult times, the MPP Board recognises the important role that MPP can play to increase access to life-saving products for those who need them most. And importantly, with time of the essence, to ensure that we make use of the expertise and mechanisms that already exist.”

 

Marisol Touraine, Chair of the Unitaid Executive Board and former French Minister of Health and Social Affairs, said, “Unitaid is fully engaged in the global response to COVID-19 and supports the call by the President of Costa Rica for voluntary pooling of intellectual property rights for medicines and diagnostics to promote the global fight against COVID-19. The Medicines Patent Pool, set up and funded by Unitaid a decade ago, has a proven track record and is immediately available to the WHO to begin this urgent work.”

 

Unitaid announced to commit an initial US$30 million of investment to innovative treatment, diagnostics and respiratory triage tools as part of the global response to the COVID-19 pandemic.

 

MPP is regularly updating its patent intelligence database, MedsPaL, with the status of candidate products during COVID-19 and will continue to update as and when the new patented candidates emerge to find the cure during the COVID-19 pandemic. Already included candidate products in the database for COVID-19: Remdesivir, Lopinvir/Ritonavir, Favipiravir; and two biologics: Tocilizumab and Sarilumab.

 

End Notes

 

Patent pooling can ensure accelerating the development of a medicine for COVID-19 while being transparent about all the legalities,  patent rights and teaming big pharma companies with generics companies around the world to create the required medicine(s) for  the low- and middle-income countries. It will be a win-win situation as the patent holders will receive  royalties for their innovations, thereby maintaining their income influx while the low- and middle-income countries would get the access to the much needed medications at affordable prices.

 

Another advantage of the patent pooling is that generic drug manufacturing companies can combine different medications into single/fixed doses to create better medicines. For example, ViiV Healthcare contributed (2014) to MPP by providing dolutegravir, an antiretroviral drug for HIV to its pool resource, thereby allowing generic drug manufacturing companies to create an affordable version of the anti-HIV drug.

 

In the present unfortunate circumstances that the world is dealing with, the global economy is one of the many areas that have been hit by a truck. Companies around the world are facing challenges in the wake of COVID-19 outbreak on account of restrictions on economic activities and disruption in the international trade channels.

When the 2008-2009 recession hit the world, the primary course of action by companies was to slash the marketing and promotional budget to mitigate the amount of expenses incurred by them. Back then, businesses did not even consider an alternate approach to physical marketing. However, twelve years hence, with the increasing ambit of the internet, we can see a change in the mindset of a lot of companies. Corporate houses, big and small, are shifting their strategy to allocate funds to digital marketing amidst COVID-19 crisis. Given that face-to-face meetings, conferences and events are experiencing an all-time low at present, a number of companies are working towards web-marketing.

With almost everyone quarantined or self-isolated at home, internet usage has increased by leaps and bounds. Considering people are spending most of their time in the virtual world, it is advisable that brand managers, companies, startups and proprietors switch to digital media for promotion of their brand. The following are likely to build / enhance your brand even in these extraordinary times:

• Connecting with customers on social media – Customer relation is key for every business to sustain, so reach out to your customers and those in need and show empathy. With everyone glued to their computers and mobile phones, this is a great time to amplify your company’s social media presence and activity chart to make sure that the algorithm is keeping you ahead of your competitors;
• Building brand awareness – Since physical marketing is not an option presently, building your company’s website content, making it more consumer friendly, interactive, and increasing the exposure effect is definitely going to work in your favor. Hence, search engine optimization is one of the most efficient ways of reaching out to as many people as possible; and
• Streaming online events – Hosting events online and publicizing them through mailing lists is one of the ways to create awareness. Since your customers are craving for any sort of entertainment, live streaming of product launches, live chats with brand ambassadors and live performances by artists in association with your company could turn out to be a great promotional boost.

The above are only a few ways to maintain the brand’s popularity and awareness. This phase is not going to be here perennially but adapting to the present situation is what will help all of us sustain the normalcy. Use digital media platforms to promote your brand and keep collating evidence of use to enhance your visibility, brand value, goodwill and reputation.

This will end, but till then, stay safe, stay indoors and be online!

Over the past few weeks, a number of persons in China have filed trademark applications relating to the Covid-19 pandemic, for words such as COVID-19 or CORONA. Trademark applications have also been filed containing words from the names of temporary hospitals set-up in Wuhan or containing the name of Dr. Li Wenliang, one of the first doctors to issue a warning about the pandemic. The Chinese Trade Marks Office issued guidelines on 27-Feb-2020, within the ambit of the recently amended Article 10 of the Chinese Trade Marks Law which prevents registration of signs which are ‘detrimental to socialist ethics or customs, or [have] other unwholesome influences’. The guidelines aimed at strengthening the control of trademark applications related to the pandemic and to create a positive environment to fight the disease.

By way of these guidelines, by mid-March itself, the Chinese Trade Marks Office had rejected around 300+ applications which contained terms relating to Covid-19. China’s Trade Marks Office has taken its stand and this will likely be the outcome of any such applications filed in the future as well.

In India as well, over the past few weeks, a number of new trademark applications have been filed which consist of terms such as CORONA and COVID specifically for medicinal goods. The Indian Trade Marks Registry is in the process of examining such applications. Speaking from a legal perspective, the Trade Marks Registry would , inter alia, examine such applications using the words CORONA or COVID for medicinal goods with the perspective of whether they have a distinctive character, whether they would be descriptive of the characteristics of such goods, and whether the public would be likely to be deceived or confused by such words. This is likely because a consumer may assume that any medicines branded with the terms CORONA/ COVID would be either a vaccine or a cure for the disease, whereas presently, no such medicine or vaccine has been formulated.

Not just in India and China, a number of other countries are also reporting filings of COVID-19 or CORONA related trademark applications, and it will be interesting to see how each and every country’s Trade Marks Office interprets and deals with such applications because the volume of such trademarks being filed is likely to increase in the coming months.

We often come across instances, in opposition, infringement and/or passing off actions, where counsels or right holders argue that the impugned mark should be refused on the grounds of it being ‘generic, devoid of distinctive character and/ or descriptive of applied goods and services’. While the primary grounds for filing the action is similarity in marks, ironically, one of the grounds is that the impugned mark is descriptive, lacking distinctive character and/or generic which ultimately raises questions on the registrability of the Opponent / Plaintiff’s mark.

The Indian Courts have, time and again, ruled on this aspect – the earliest case being, Automatic Electric Company v/s R.K. Dhawan & Anr. 1999 I AD (Delhi) 603. The relevant segment from the judgment is provided for ease of reference –

“The defendants got their trademark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression”.

Similarly in the matter of The Indian Hotels Company Ltd. and Ors. Vs. Jiva Institute of Vedic Sciences & Culture 2008 (37) PTC 468 (Del, the Hon’ble Delhi High Court stated that “the appellant has itself applied for registration of Jiva as a trade mark and cannot, therefore, argue that the mark is descriptive”. More recently, while relying on the principle of Automatic Electric Limited (supra) and Indian Hotels Company (supra), the Delhi High Court has stated that “a party that itself applies for the registration of a mark is estopped from contending that the mark is descriptive or generic” – in Bata India Limited vs. Chawla Boot House and Ors. (2019 (78) PTC 505 (Del) and Anil Verma Vs. R.K. Jewellers SK Group and Ors. (2019 (78) PTC 476 (Del).

Therefore, it is vital that we keep these aspects in mind while drafting and ensure that in the attempt to attack the impugned mark, we do not end up prejudicing the rights of the Opponent / Plaintiff’s mark.

The basic legal framework governing comparative advertisement has been laid down by the Monopolies and Restrictive Trade Practices Act, 1984 and the Trade Marks Act, 1999. This article aims at analyzing the concept of comparative advertisement vis-à-vis trademark infringement. The Trademark Act, 1999 adequately addresses the issue of trademark infringement in the garb of comparative advertisement, thereby permitting comparative advertising by means of using another's trademark. The trademark law, while catering for usage of another's trademark in advertisement, draws a line to the extent of such permitted usage. The advertiser doing so cannot disparage the goods or services of another. Any such act disparaging the goods or services of another shall not only be an act constituting infringement of trademark, but also shall constitute product disparagement which falls within the ambit of unfair trade practices. It is pertinent to note that the protection provided in the Trademarks Act, 1999, is for a registered trademark. The Trademarks Act also stretches enough to protect well known unregistered marks. This gives the proprietor a statutory alternative to the common law action of passing off.

There is no statutory definition available for the term "Comparative Advertising" under the Indian laws. Although the judiciary has been proactive in this regard and has outlined the characteristics of Comparative Advertisement in the landmark case of Reckitt & Colman v. Kiwi TTK {63 (1996) DLT 29}. The Delhi High Court laid down the following guidelines in this case, which has gained precedential value-

a) A tradesman can make an untrue declaration that his goods are the best in the world.
b) He can also make an untrue statement to the extent that his goods are better than his competitor's.
c) For the purpose of saying that his goods are best in the world or better than his competitor's he has the leverage of comparing the advantages of his goods over the goods of others.
d) The above averments of a tradesman are acceptable only if they do not proclaim that his competitors' goods are bad, in which case it would amount to defamation of the competitor and his goods.
e) If there is no defamation to the goods or to the manufacturer of such goods then no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

The above-mentioned guidelines were adapted in various judicial pronouncements pursuant to the judgment in Reckitt & Colman v. Kiwi TTK, settling the controversies hovering above the treatment of comparative advertisement in relation with trademark infringement. However, the decision in the case of Dabur India Limited v. Emami Limited {112 (2004) DLT 73, 2004}, brought to surface a new dimension. The judge ruled that even in absence of direct reference to the product of a competitor, a mere reference made to the entire class in a generic sense has the potential to instil a case of disparagement.

The Delhi High Court, in its recent judgment in Marico Limited v. Adani Wilmar Ltd { Delhi High Court, Case No- CS(OS) 246/2013 and CS(OS) 319/2013}, denied the interim injunction petition of the plaintiff on the grounds that for an advertisement to be categorized as disparaging, the defendant should have derogated, discredited or disgraced the product of the plaintiff. The Hon'ble High Court relied upon the judgment given in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd {(2010) 44 PTC 254 Delhi (DB)}., and highlighted the test to ascertain whether there has been any disparagement. The key pointers to gauge disparagement are-

a) The intent of the advertisement
b) The overall effect of the advertisement
c) The story line of the commercial and the message sought to be conveyed via the advertisement.

In light of the above judgments, it is evident that the Courts have put to rest the issues hovering above the concept of comparative advertisement i.e. comparative advertising is permissible, but comparative advertising leading to product disparagement is not permissible. In order to win a battle for trademark infringement against the advertiser, it is mandatory to prove that the advertiser has puffed up his goods to the extent of derogating the competitor's products. It is essential to keep in mind the interest of the competitor and the harm that is likely to be caused to its reputation and goodwill through the advertiser's commercial.

The courts in India while interpreting the issue of comparative advertisement vis-à-vis trademark infringement have been very conservative when using the principle of 'fair use' is concerned. The Fair use doctrine in India, unlike US, is used only with respect to Copyright issues. The above-mentioned precedents are biased towards the interests of the competitor and the interest of the advertiser is not of primary importance. If the doctrine of fair use would surface, the interest of honest advertisers would be safeguarded. Therefore, the courts should try and keep the door open to interpret the issues relating to trademark infringement, due to advertiser's commercial, in light of fair use doctrine. An honest advertiser, who advertises his goods without the intention to harm its competitor and mislead public, should be protected. Having said that, the tricky task here would be to identify a honest advertiser.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

The basic legal framework governing comparative advertisement has been laid down by the Monopolies and Restrictive Trade Practices Act, 1984 and the Trade Marks Act, 1999. This article aims at analyzing the concept of comparative advertisement vis-à-vis trademark infringement.

The Trademark Act, 1999 adequately addresses the issue of trademark infringement in the garb of comparative advertisement, thereby permitting comparative advertising by means of using another's trademark. The trademark law, while catering for usage of another's trademark in advertisement, draws a line to the extent of such permitted usage.

The advertiser doing so cannot disparage the goods or services of another. Any such act disparaging the goods or services of another shall not only be an act constituting infringement of trademark, but also shall constitute product disparagement which falls within the ambit of unfair trade practices. It is pertinent to note that the protection provided in the Trademarks Act, 1999, is for a registered trademark. The Trademarks Act also stretches enough to protect well known unregistered marks. This gives the proprietor a statutory alternative to the common law action of passing off.

There is no statutory definition available for the term "Comparative Advertising" under the Indian laws. Although the judiciary has been proactive in this regard and has outlined the characteristics of Comparative Advertisement in the landmark case of Reckitt & Colman v. Kiwi TTK {63 (1996) DLT 29}. The Delhi High Court laid down the following guidelines in this case, which has gained precedential value-

A tradesman can make an untrue declaration that his goods are the best in the world.
He can also make an untrue statement to the extent that his goods are better than his competitor's.
For the purpose of saying that his goods are best in the world or better than his competitor's he has the leverage of comparing the advantages of his goods over the goods of others.

The above averments of a tradesman are acceptable only if they do not proclaim that his competitors' goods are bad, in which case it would amount to defamation of the competitor and his goods.
If there is no defamation to the goods or to the manufacturer of such goods then no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

The above-mentioned guidelines were adapted in various judicial pronouncements pursuant to the judgment in Reckitt & Colman v. Kiwi TTK, settling the controversies hovering above the treatment of comparative advertisement in relation with trademark infringement. However, the decision in the case of Dabur India Limited v. Emami Limited {112 (2004) DLT 73, 2004}, brought to surface a new dimension. The judge ruled that even in absence of direct reference to the product of a competitor, a mere reference made to the entire class in a generic sense has the potential to instil a case of disparagement.

The Delhi High Court, in its recent judgment in Marico Limited v. Adani Wilmar Ltd { Delhi High Court, Case No- CS(OS) 246/2013 and CS(OS) 319/2013}, denied the interim injunction petition of the plaintiff on the grounds that for an advertisement to be categorized as disparaging, the defendant should have derogated, discredited or disgraced the product of the plaintiff. The Hon'ble High Court relied upon the judgment given in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd {(2010) 44 PTC 254 Delhi (DB)}, and highlighted the test to ascertain whether there has been any disparagement. The key pointers to gauge disparagement are-

The intent of the advertisement
The overall effect of the advertisement
The story line of the commercial and the message sought to be conveyed via the advertisement.
In light of the above judgments, it is evident that the Courts have put to rest the issues hovering above the concept of comparative advertisement i.e. comparative advertising is permissible, but comparative advertising leading to product disparagement is not permissible. In order to win a battle for trademark infringement against the advertiser, it is mandatory to prove that the advertiser has puffed up his goods to the extent of derogating the competitor's products. It is essential to keep in mind the interest of the competitor and the harm that is likely to be caused to its reputation and goodwill through the advertiser's commercial.
The courts in India while interpreting the issue of comparative advertisement vis-à-vis trademark infringement have been very conservative when using the principle of 'fair use' is concerned. The Fair use doctrine in India, unlike US, is used only with respect to Copyright issues. The above-mentioned precedents are biased towards the interests of the competitor and the interest of the advertiser is not of primary importance. If the doctrine of fair use would surface, the interest of honest advertisers would be safeguarded. Therefore, the courts should try and keep the door open to interpret the issues relating to trademark infringement, due to advertiser's commercial, in light of fair use doctrine. An honest advertiser, who advertises his goods without the intention to harm its competitor and mislead public, should be protected. Having said that, the tricky task here would be to identify a honest advertiser.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

The Bench of the Supreme Court of India, in its landmark judgment of 112 pages rejected the plea for patent protection to anti-cancer drug Glivec/Gleevec filed by Novartis in 1998.

History

The active pharmaceutical ingredient of Glivec/Gleevec is a specific chemical form of imatinib, namely, the beta polymorph of imatinib mesylate, which exhibits greater stability and bioavailability than the alpha polymorph. A patent for the free base of imatinib was first granted in 1996 to Novartis. Novartis thereafter filed and obtained separate patents for the specific formulation used as the active ingredient of Glivec/Gleevec in several countries.

In 1998, Novartis filed a patent application in India for the Beta crystalline variant of the molecule, which was derived from the amorphous substance that they had earlier patented. During 1995 to 2005, as permitted by TRIPS, patent applications for pharmaceutical substances were received by the Indian Patent Office but were not examined and kept on hold. Such applications are popularly termed as 'mailbox applications.' After 2005 amendment of the Indian Patents Act, the examination of such patent applications started. In January 2006 the patent application of Novartis was rejected by the patent office on the ground that it did not satisfy the efficacy criterion of section 3(d). Novartis persisted in its efforts to get a patent and appealed to the Intellctual Property Appellate Board (IPAB) wherein the application was again rejected. When the IPAB rejected Novartis' application, the company challenged the decision in the Chennai High Court and also challenged section 3(d) of the Indian Patents Act. The Chennai High Court rejected both the appeals, which led to Novartis bringing its appeal to the Supreme Court of India.

Supreme Court decision

In the Supreme Court, Novartis challenged the interpretation of Section 3(d) of the Indian Patents Act. Novartis, in its appeal to the Supreme Court, argued that section 3(d) is not being properly interpreted. The section says that minor variations in an existing molecule cannot be patented unless there is a 'significant' enhancement in efficacy of the medicine. Novartis claimed that since the Beta variant is better absorbed – i.e, it has better 'bioavailability' (by about 30 per cent) it constitutes a significant therapeutic enhancement.

The Supreme Court in its judgment opined: "The subject product, that is, beta crystalline form of Imatinib Mesylate, is thus clearly a new form of a known substance, i.e., Imatinib Mesylate, of which the efficacy was well known. It, therefore, fully attracts section 3(d) and must be shown to satisfy the substantive provision and the explanation appended to it". Further Supreme Court also opined: "In whatever way therapeutic efficacy may be interpreted, this much is absolutely clear: that the physico-chemical properties of beta crystalline form of Imatinib Mesylate … may be otherwise beneficial but these properties cannot even be taken into account for the purpose of the test of section 3(d) of the Act, since these properties have nothing to do with therapeutic efficacy". In regard to the increased bio-availability, Supreme Court observed that: "No material has been offered to indicate that the beta crystalline form of Imatinib Mesylate will produce an enhanced or superior efficacy (therapeutic) on molecular basis than what could be achieved with Imatinib free base….".

Supreme Court interpreted the word 'efficacy' to mean therapeutic efficacy of the drug and hence rejected the appeal made by Novartis and denied the patent because Novartis could not demonstrate that the new form of the said drug enhanced the therapeutic efficacy. Further, the court also rejected Novartis claims of better bioavailability and better physical characteristics such as stability of the compound saying that these do not necessarily improve the therapeutic effect.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July, 2013.

The paradigm of interface between the Intellectual Property Rights (IPRs) and Competition law is that the two legal regimes are interconnected by the economics of fostering innovation and a convoluted web of legal policies that seek to stabilize the scope and effect of each policy. There exists a common area wherein Competition policy and Intellectual Property Law aim at nurturing innovation, effectiveness, consumer welfare and economic growth.

The interface between the two, Competition policy and Intellectual Property Law has been examined from two main aspects: (i) the effect that the Intellectual Property Rights have in shaping the disciplines of competition law; and (ii) the application of competition law on the post-grant use of IPRs

Intellectual Property Rights act as an institutional regulatory framework restricting, usually as an exemption, pure exclusion of restraints by competition law. The Competition Act, 2002 (India) under section 3- outlines that its provisions will not restrict "the right of any person to restrain any infringement of or to impose reasonable conditions, as may be necessary for protecting any of his rights which have been or may be conferred upon him under various IPR statutes. Nonetheless, the Competition Act does draw the line insofar as it does not permit unreasonable conditions to be passed off under the guise of protecting IPRs. Thus, in principle, IPR licensing arrangements which interfere with the Competition law policies such as competitive pricing, quantities, qualities of products or abuse of the dominant position whatever be the source of such practices would fall foul of latter in India. For instance, the field-of- use limitation on the Licencee, if it is stipulated that it should be used as medicine only for humans and not animals, even though it could be used for both. Likewise, the Monopolies and Restrictive Trade Practices (MRTP) Commission in - Vallal Peruman and Another v. Godfrey Phillips (India) Limited (MRTP Commission, 1994) and Manju Bhardwaj v. Zee Telefilms Ltd (MRTP Commission, 1996) observed that where a trademark is misused by manipulation, distortion, contrivances and embellishments so as to mislead/confuse the consumers, he would be exposing himself to an action of indulging in unfair trade practices. In other words, this implies that the Competition Act prohibits trade practices visible to the detriment of public interest and also restricts the unreasonable conditions imposed by a right holder during the exercise of a right.

The reconciliation of IPRs and competition policy entails the necessity to identify IP laws as a form of competitive policy, resulting in a bal­ance between individual interests of the right-holders and the interest of the society at large, and encouraging further innovation. Competition law and IPR become less divergent given the fact that fundamental aim of innovation/ inventions is more competition. The construction of interaction between competition law and intellectual property rights is driven by a number of competing considerations apart from the IPRs and competition principles. The challenge for the state is to devise rules both within the ambit of IP law as well as outside it, i.e. statutory IP laws as well as substantive competition law in a manner that promotes dynamic competitive markets The middle path can be achieved only by reconciling the immediate goals of the two systems only with reference to their effect on the market i.e. IP law must deal with the grant and functioning of property rights, while competition law would need to deal with the manner of exercise of these rights.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 2nd November, 2012.

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings as well as software. However, there are certain exceptions to the use of the copyrighted works and the same are enshrined under section 52 of the Copyright Act, 1957 (the "Act"). Recently, the exception of fair dealing has been assailed by Oxford and Cambridge University Press, one of the oldest and largest publishing houses in the world, in an infringement suit in the Delhi High Court. The aforesaid publishing giants have filed an infringement action against one Rameshwari Photocopy Service (Defendant No. 1), a photocopying shop attached to Delhi University (Defendant No.2) alleging that they are reproducing complete chapters from plaintiff's publications and selling them as a part of course packs and have asked for permanent injunction of the practice and recompense them monetarily. On the other hand, the Defendants have tried to invoke the defence of fair dealing by submitting that the copying limited pages from any work for use in research and for use in the classroom by a student or a teacher is recognised under the Section 52(1) (a) and (i) of the Act. It is pertinent to note herein that while the matter is sub-judice, the Defendants have been restrained from photocopying the Plaintiffs' publications till the final disposal of suit.

According to Section 52(1) of the Act, which talks of certain acts not to be infringement of copyright, a fair dealing with literary work for the purposes of private use, including research or criticism or review, whether of that work or of any other work shall not constitute an infringement of copyright. Further, according to Section 52(1)(i) of the Act, the reproduction of any work –

By a teacher or pupil in the course of instruction; or
As part of the questions to be answered in an examination; or
In answers to such questions;"
Shall not amount to infringement of copyright. The actions of Rameshwari Photocopy Service when analysed in the light of Section 52 of the Copyright Act, 1957, should fall within the ambit of fair dealing for this whole practice of photocopying books and using them for private study purposes is not illegal and cannot be counted as a copyright infringement.

Further, in CCH Canadian Ltd. v. Law Society of Upper Canada, the Supreme Court of Canada noted that:

"…The fair dealing exception, like other exceptions in the Copyright Act, is a user's right. In order to maintain the proper balance between the rights of a copyright owner and users' interests, it must not be interpreted restrictively."

It is a fact that in India there are many students who are economically backward, and, therefore, cannot afford to buy such expensive books.
It is pertinent to note that in Cambridge University Press & Others v. Mark B.Pecker, while deciding upon an infringement matter, the United States District Court for the Northern District of Georgia, Atlanta Division, pointed out that "if a professor used an excerpt representing 10% of the copyrighted work, and this was repeated by others many times, would it cause substantial damage to the potential market for the copyrighted work? The answer is no, because the 10% excerpt would not substitute for the original, no matter how many copies were made."

Therefore, the Delhi High Court must consider the Indian education scenario along with the amount of excerpt used as a photocopy material to determine a new threshold and decide the case accordingly. As India is a big country, there is a need for bigger threshold value, because of the higher theoretical studies in the universities. The idea is that it's not for the gain of owner that the photocopy owner and the University had copied the data but it was done to provide better education to those poor students who cannot afford to buy expensive books.

The battle against copyright infringement must also be fought on the simple premise of rights, a right to access knowledge, a right for people who basically cannot afford to pay, a right to oppose another form of gate-keeping that reduces access to those who cannot afford. It isn't even a case of a 'mere defense, but a right and an entitlement to access educational material and protect public interest.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 25th June, 2013.

Intellectual property (IP) is an intangible asset and probably the most important form of property today. The definition of IP has widened with the growth of international trade and globalization of economy, giving the whole business a new paradigm. IP having developed into a powerful commercial asset with the ever revolving digital technology, its theft has also become rampant.

John Doe Orders

India has started using this unique concept of John Doe orders (also famously known as Ashok Kumar orders) to punish class of unknown infringers. The name "John Doe" is used to identify unknown infringers, who have allegedly committed some wrong, but whose identity is unknown to the plaintiff. To avoid delay and to render justice, the court names the defendant as "John Doe" until such time the defendant is identified. The orders passed by court in such cases are thus popularly known as "John Doe orders".

John Doe orders are given when no other alternative is left to ensure justice and means to provide immediate and effective course of action to the plaintiff. The John Doe order also affords the trade-mark or copyright owner the possibility of curtailing the infringer's future activity by means of an injunction.

The Indian judiciary has taken positive steps towards development of this trend and recognizing the need for such orders to provide relief to interested parties. The Indian Courts have since long granted interim order under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 to protect the rights of the plaintiff and prevent possible injury. The Delhi High Court ("Delhi HC") passed its very first John Doe order in the year 2002, in Tej Television Limited vs. Rajan Mandal. The matter dealt with unauthorized transmission of channel ("Ten Sports") by unlicensed cable operators without entering into agreements with marketing partners of the plaintiff. Around 1377 cable operators had taken licenses but several prominent cable operators had not signed up and broadcasted the same without any approvals. The plaintiff was the owner of the registered broadcasting right of the channel for the Soccer World Cup, 2002. The unauthorized broadcasting caused losses to the plaintiff and also strained their relationship with the other licensees.

Quia Timet Action

Quia Timet injunctions in the recent past have been given prior to release of several new movies to prevent sale of pirated copies and illegal copying/distribution/ broadcast of new films/songs by cable operators and other unauthorized persons. The Delhi HC has been the most pro-active in creating awareness and passing such unique orders in case of movies like Singham, Bodyguard, Speedy Singhs and Don 2, granting ad-interim ex-parte injunction against unknown persons and protecting the proprietors from infringement of their intellectual property.

Media Industry

In Singham case, interim applications were filed for injunction to prevent piracy and loss of revenue to the plaintiff without actual infringement. The Delhi High Court passed a John Doe order restraining all defendants and other unknown persons constituting part of the same class from distributing, displaying, duplicating, uploading, downloading or exhibiting the movie in any manner. Eventually, several Indian ISPs were contacted to block access to several file sharing websites.

John Doe orders are becoming quite common in the film industry and seem to be an effective way to curb piracy. The trend is not restricted to only movies but as was initiated in Tej Television, also extends to cases involving broadcasting/using unauthorized signals.

Software-ISPs domain

India has not been far behind in tracking Internet Service Providers ("ISPs") to prevent unwanted and unlawful materials from being shown or written on internet by anonymous bloggers or illegal downloading following the path paved by other jurisdictions. Recently, Reliance obtained John Doe order from the Delhi HC to prevent pirated copies of movie inter alia Don 2 and Bodyguard from being sold/downloaded/distributed. By the passing of John Doe orders websites, cable operators and Internet Service Providers (ISPs) and others were prevented from pirating the movie, in advance.

The usage of John Doe orders in the Indian scenario has brought in awareness and protection to holders of IP rights but the question remains how such orders will be implemented and enforced. The issue before us is if the unidentified defendants are unaware of such orders or unwilling to abide by the Court order and continue with the said infringement, is any remedy left with the plaintiff or the entire process of obtaining such orders go waste leaving the plaintiff without any benefit and losing its entire impact? Appointment of Commissioners for search and seizure, new guidelines for curbing copyright infringement are all modes of effectuating John Doe orders. But still the notion seems to be at nascent stage with handful of orders being passed and still very few people knowing about its usage and application. An effective mechanism needs to be set into motion to address implementation of such extreme orders, by way of communicating the same to the proposed infringers through a proper mode and their compliance to receive the desired reliefs. John Doe has miles to go in achieving its very purpose.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.

As per Section 16 of the Indian Patents Act, if a Patent Application describes more than one inventive concept, then at the time of examination, examiner may require the Inventor/Applicant of the Patent Application (also referred as Parent Application) to divide the inventive concepts present in the Parent Application and to file one or more Divisional Patent Application(s). Also, Inventor/Applicant on his own can file Divisional Application any time before the grant of the Parent Application. Filing Divisional Application helps the Inventor/Applicant to file a new complete application, without losing the priority rights. The said provision of law has been succinctly defined in Section 16 of the Indian Patents Act, 1970 under the heading "power of Controller to make orders respecting division of application"

Recently few cases have been adjudicated upon by Intellectual Property Appellate Board (IPAB) with regard to qualification of Patent application as a divisional Patent application:

Bayer Animal Health Gmbh Vs. The Controller General Of Patents & Designs and others (Order no. No. 243 of 2012 IPAB)

In a recent judgment issued by IPAB in the above matter, the Divisional application filed by Bayer Animal Health GmbH was rejected due to the fact that the Divisional Application filed by the Applicant does not satisfy the test under Section 16 and hence cannot be entertained.

The Applicant Bayer Animal Health GmbH had filed an application for a pharmaceutical product with a chemical base in the year 1999, which was basically a Divisional Application derived from a Patent Application filed in the year 1997. The Parent Application was examined and the First Examination Report issued stated the invention was not patentable under section 5(1)(b) of the then existing Patents Act, 1970. Further, for not responding to the objections raised and failure to comply with the requirements made by examiner, the application was deemed to have been abandoned under Section 21(1) of the Act.

After the amendment of the Patents Act, 1970, product Patent regime was introduced in India. Pharmaceutical and chemical products became patentable subject matter. Bayer Animal Health GmbH filed a fresh application for the same invention as a Divisional Application of the earlier filed Parent Application. During examination, the present application was objected on the grounds that the application does not comply with the requirements of Section 16 of the Patents Act, 1970 and was held invalid under Section 16. Bayer Animal Health GmbH replied to the objections stating that the Examiner had not given a correct interpretation to the provisions of Section 16. However, the Applicant did not inform the Patent Office that the earlier filed Parent Application was deemed to have been abandoned under section 21(1) of the Act. The Application was again examined and objections were raised that the present application cannot be considered as a Divisional Application, as section 16 requires the Parent Application to contain more than one invention for filing a Divisional Application.

LG Electronics, Inc Vs. The Controller of Patents & Designs and others (Order no. No. 111 of 2011 IPAB).

In an earlier judgment issued by IPAB, the Divisional Application filed by LG Electronics was rejected on the ground that the said Divisional Application does not satisfy the requirements of Section 16.

In the said matter LG Electronics filed a National Phase application in the year 2004 and thereafter filed Divisional Application in the year 2005. In the Examination Report issued in the Divisional Application, the Examiner raised the substantive objection that the Parent Application is deemed to be abandoned due to the fact that Applicant did not respond to the Examination Report within the prescribed time period and further the Parent Application does not have plurality of the invention for which Divisional Patent Application can be filed.

Responding to the objection, LG Electronics put forth the argument that according to Section 16 of the Patents Act, 1970 the Applicant can file a Divisional Application any time before the grant of Patent if he so desires. Accordingly the Appellant is entitled to file a Divisional Application voluntarily even if parent application does not contain more than one invention.

In response to the arguments by LG Electronics, the IPAB observed that for filing the Divisional Application, the Parent Application should contain plurality of invention and should not be linked by single inventive concept; and, accordingly, the divisional application was rejected

Based on the above decisions of the IPAB, it is recommended that the Inventor/Applicant filing Divisional Application suo motto should only file the Divisional Application if the claims of the Parent Application relate to more than one invention. Division of Parent Application only to circumvent the substantive objections during the examination proceedings of the Parent Application could be detrimental.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29thJanuary, 2013.

Residents not to apply for Patents outside India without prior permission.

No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a Patent for an invention unless :

a. an application for a Patent for the same invention has been made in India, not less than six weeks before the application outside India; and
b. either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Section 39 or provision of foreign filing license was initiated for the first time by the Patents (Amendment) Act, 2002 which later on was amended by the PATENTS (AMENDMENT) ACT, 2005 which improved the scope of the section 39 which includes "any invention" and not just confined to the inventions related to atomic energy and defense.

Section 39 of the Indian Patents Act as amended necessitates an Applicant to obtain a Foreign Filing License (FFL) for any invention before applying for a Patent for a technology in a foreign country, without applying for a corresponding Patent in India. The requirement to apply for a FFL depends on the origin and inception of the invention and is independent on the Individuals citizenship. If the invention is created or conceived in India then the Applicant must have to obtain foreign filing license before filing it abroad.

The consequences of contravention of Section 39 of Indian Patents act is being given in Section 40 of the Indian Patents Act which says about the liability for contravention of section 35 or section 39 where if any person makes or causes to be made an application for grant of a Patent outside India in contravention of section 39 then the application for Patent under this act shall be deemed to have been abandoned and the Patent granted, If any, shall be liable to be revoked under section 64. Moreover as mentioned in section 118 of the Indian Patents Act which says about the contravention of secrecy provisions relating to certain inventions where if any person fails to comply with any direction given under section 35 or causes to be made an application for grant of a Patent in contravention of section 39 shall be punishable with imprisonment for a term which may extended to two years, or with fine, or with both.

Therefore, knowing the provision is of highest importance, especially in today's scenarios where provisions such as technology transfer is on Pace.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 19th December, 2012.

The Indian Patent Office on 9th March 2012, issued the first-ever compulsory licence (CL) to an Indian generic drug manufacturer, Natco Pharma, to manufacture an affordable generic version of Sorafenib tosylate (Nexavar), the anti-cancer drug for which Bayer had obtained a Patent in India in 2008.

The said issue commenced when Bayer rejected Natco's request for a commercial licence to manufacture Nexavar. Natco on July 2011 applied for a compulsory licence to make a copy of the drug, claiming Bayer had failed to meet the needs of the local market, wherein the clauses comprised of (1) Bayer supplied the drug to only 2% of the patient population (2) Bayers pricing of the drug (2.8 lakhs for a months' supply of the drug) (3) Bayer did not sufficiently "work" the Patent in India. Controller General of Patents after taking all the clauses into consideration and after completing hearing with both companies in February 2012 came up with his 62-page order, wherein said compulsory licence under section 84 of the Patents Act was granted to Natco which enabled Natco to sell the drug at a price not exceeding Rs 8,880 for a pack of 120 tablets (one month's therapy) as against Rs 2,84,428 being the cost of Nexavar sold by Bayer and also made it obligatory for Natco to supply the drug free of cost to at least 600 needy patients every year and Natco was directed to pay 6% royalty on sales to Bayer for the drug on a quarterly basis.

Thereafter on May 2012, Bayer appealed against the Controller's order before the Intellectual Property Appellate Board (IPAB), wherein Bayer among other reasons also pointed to the fact that another pharmaceutical company Cipla had started selling its generic version at a lower price, rendering the compulsory licence unnecessary as the drug was indeed available at a reasonable price. IPAB on September 2012 came up with its decision in which it dismissed Bayer petition against Natco over manufacture of Nexavar and observed that "if stay is granted, it will jeopardise the interest of public who are in the need of the drug. The appellant has not made out any case for granting a stay." Also it was stated by IPAB that "The appellant cannot ride piggy-back on, or take shelter under, the sale by Cipla. It is the duty of patentee that its own supply be made available at reasonable price to the requirement of the public".

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 20th November, 2012.

The Indian Patent Office on 9th March 2012, issued the first-ever compulsory licence (CL) to an Indian generic drug manufacturer, Natco Pharma, to manufacture an affordable generic version of Sorafenib tosylate (Nexavar), the anti-cancer drug for which Bayer had obtained a Patent in India in 2008.

Section 83 of the Indian Patents Act

This act says about General principles applicable to working of patented inventions according to which:-

"Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely:-

(a) that Patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;

(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article;

(c) that the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations;

(d) that Patents granted do not impede protection of public health and nutrition and should act as an instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India;

(e) that Patents granted do not in any way prohibit Central Government in taking measures to protect public health;

(f) that the Patent right is not abused by the patentee or person deriving title or interest on Patent from the patentee, and the patentee or a person deriving title or interest on Patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and

(g) that Patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public." Therefore, we can conclude the above mentioned section simply by stating that sole motto of Patent is to benefit people by making it available to public in affordable prices, encouraging inventions and not only to enjoy a monopoly for the importation of the invention.

Section 146 of the Indian Patents Act

Submission of working statements complies with the Section 146 of the Indian Patent act which says about the Power of Controller to call for information from patentees.
"(1) The Controller may, at any time during the continuance of the Patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.

(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed."

As mentioned above in subsection (2) of Section 146, every patentee and every licensee has to provide the information on the extent to which the patented invention has been worked on a commercial scale in India. The working statement as said must be furnished towards the controller in Prescribed intervals as under rule 131 of the Patents rule, 2003, which says:-

"Form and manner in which statements required under section 146(2) are to be furnished.

(1) The statements which shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licensee or his authorized agent.

(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

(3) The Controller may publish the information received by him under sub-section (2) of section 146."

Therefore as mentioned in rule 131 these statements can be supplied every financial calendar year, within three months of the end of each year. Consequences:-

Section 122 of Indian Patent Act as mentioned in Penalty in chapter XX

Refusal or failure to supply information.

(1) If any person refuses or fails to furnish -

(a) to the Central Government any information which he is required to furnish under subsection (5) of section 100.

(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with a fine which may extend to ten lakh rupees.

(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with a fine, or with both."

As mentioned in subsection 1(B) and section (2) failure to submit the working statement may lead to fine which may extend up to ten lakh rupees, and submission of false working statement may lead to imprisonment of up to six months or with a fine, or with both.

Further the non-working of Patents may open the way towards compulsory licensing provisions as mentioned under the act in section 84(1) (C) which says that at any time after the expiration of three years from the date of the grant of a Patent, any person interested may make an application to the Controller for the grant of compulsory license on Patent on grounds that the patented Invention is not worked in the territory of India.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 21st November, 2012.

The change in the world Trade patterns has largely affected the advertising ways and means. The accessibility and dissemination of information on the internet have changed the protection and enforcement mechanisms for intellectual property rights.

The effects of globalised Trade, inter-continent travel, international circulation of literature, availability of news and periodicals on the world-wide web has made the accessibility of information very easy. Internet has not only remained a source of information but has become a big platform for advertisement.

Meta-tagging and cyber squatting which have now become common practices made it impossible for rights holders to seek protection under the conventional doctrine of likelihood of confusion.

The need was felt by WIPO and provisions for the protection of well-known marks in the member countries were introduced. In order to comply with Article 16 of TRIPS Agreement section 11(10) and 29(4) were inserted in the Indian Trade Marks Act, 1999 so as to accord protection to well-known marks. However, when it came to the practice and implementation of the law, it was found to be crippled with many obstacles such lack of a proper definition for 'well-known' marks, the requirement of proving use of a mark in the country of its enforcement in order to prove reputation or goodwill.

It was then that the concept of trans-border or spill over reputation was acknowledged by the courts world wide. Here, it is imperative to understand that goodwill and reputation though used interchangeably, theoretically they are not one and the same concepts. The following statement might help:-

Where there is goodwill, there is reputation but the vice-versa is not true.

In England, in the Budweiser's case , the English Courts declined to protect trans-border reputation by striking a distinction between reputation and goodwill and holding that for a passing off action it was necessary to have a protected goodwill, which meant doing of business in the open market in England. In the said case, Budweiser being an American company was unable to restrain a Czeckoslovakian company from using the mark Budweiser because its products were not sold in the open market in England. It was not enough that the products were sold in the American Military bases as that amounted to having a reputation but not a protectable goodwill. The result was that a well-known Trade Mark could not be protected in England. The Indian Courts disagreed with the Budweiser decision of English Court.

In India, it is enough to prove reputation of the goods/service i.e. the consuming public's knowledge of the goods/service is sufficient to initiate an action for passing off based on trans-border or spill over reputation.

In N.R. Dongre & Others v. Whirlpool Corporation & Another, the Indian Supreme Court has held that "the knowledge and awareness of a Trade Mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinemas etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. Dissemination of knowledge of a Trade Mark in respect of a product through advertisement in media amounts to use of the Trade Mark whether or not the advertisement is coupled with the actual existence of the product in the market.

In para 44 of the above judgment the Division Bench also referred to a decision of the High Court of Australia in The Seven Up Company v. O.T. Ltd. wherein it was observed as follows:- The Court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It Therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.

The concept of confusion in the mind of consumer is critical in actions for Trade Mark infringement and passing off, as well as in determining the registrability of the Trade Mark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditional principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well known marks by doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark is likely to be detrimental to the distinctive character or reputation of an earlier well known mark.

Protection of trans-border reputation is not limited to like, cognate or allied products, it is very well accorded to dissimilar and non-competing goods/services as well.

In a leading case the manufacturers of Mercedes Benz sought an injunction against the Defendants who were using the famous "three pointed star in the circle" and the word "Benz". The Court granted injunction against the Defendants who were using these marks for selling inner-wear. In the Kamal trading Co. v. Gillette UK Limited, injunction was sought against the Defendants who were using the mark 7'O Clock on their toothbrushes. This was further reaffirmed by the Bombay High Court, which held that the Plaintiff had acquired an extensive reputation all over the world including India by using the mark 7'O Clock on razors, shaving creams and the use of an identical mark by the Defendant would lead to the customer being deceived.

The entire idea is to prevent a man from selling his own goods under the pretence that they are the goods of another man.

The Hon'ble Delhi High Court in Blue Cross and Blue Shield Association v. Blue Cross Health Clinic, granted an exparte injunction relief on the ground that there was an international reputation of the plaintiff's mark although there was no registration or use of the said Trade Mark in India. The Hon'ble Calcutta High Court in Kabushiki Kaisha Toshiba v. Toshiba Appliances Co., attached more importance to 'use of mark' in relation to goods than trans-border reputation. But the Division Bench of the same court in M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle, observed that the use of a Trade Mark does not necessarily imply actual sale of the goods bearing such mark.

The judgment of Supreme Court of India in Milmet Oftho Industries & Ors. v Allergen Inc, has added further clarity to the Indian legal position on this point. In this case the appellants were the prior user of the Trade Mark OCUFLOX internationally. The defendant had started manufacturing a similar drug in India under the same name. The Supreme Court laid down the 'first past the post' principle and held that even though the defendants were the prior users of the mark in India, the appellants claimed superior rights on the mark as they had accumulated a huge reputation through sale of the medicines internationally and thus they were first past the post. The Supreme Court's has applied the 'first past the post' principle in Blender's Pride case as well.

It is today well settled that international and world wide reputation are indicators of the goodwill attached to a Trade Mark. Courts have repeatedly accepted promotional activity in India as one of the factors which evidences the reputation of the plaintiffs' products being sold under such Trade Mark.

In Austin Nichols and Co. and Anr. v. Arvind Behl and Anr., which is popularly known as the Blender's Pride case, the Delhi High Court had held that 'Blenders Pride' whisky which was manufactured by the Plaintiffs enjoyed a worldwide reputation, being available for sale in a large number of countries since 1973 onwards. The product was not unknown in India. The predecessor in interest of the plaintiffs had an intention of directly exploiting the Indian market. They had applied for permission from the Government of India to manufacture 'Blenders Pride' whisky which was granted and they had been manufacturing 'Blenders Pride' whisky in India since 1995. They however manufactured 'Blenders Pride' whisky for a couple of months in 1993-1994 and stopped manufacturing till sometime in 2005 that is for a period of almost 11 months. The Court held: "the Plaintiffs having come out with 'Blenders Pride' whisky first in the international market were first past the post; even though the Defendants were the first to do so in India. The fact that the product of the plaintiffs was not manufactured or sold in India from 1973 when it first entered the market) till 1995 when it became freely available in India, is of no consequence."

Indian courts have time and again made their stand clear on the protection of trans-border reputation. There is a plethora of cases where the courts have held that the reputation of a trader, trading or carrying on the business in another country, can travel to a country where he had carried no business. The traders' trans-border reputation can be on the basis of extensive advertisements and publicity. Such a trader could obtain injunction in a Court where he was not trading to protect his reputation. The Indian Courts also recognize the existence of trans border reputation , a product and its Trade name transcends the physical boundaries of a Geographical region and acquires trans border overseas or extra territorial reputation not only through import of goods but also by its advertisement. The knowledge and awareness of the goods of foreign trader and its Trade Mark can be available at a place where goods are not being marketed and consequentially not being used.

Trans-border or the international reputation acquired by a Trade Mark has been held to justify an injunction in India, even though the plaintiff had not entered the market so far.

In Solian Ink v. Doctor and Co., the Court held that mere advertisement in the other country i.e. the country where injunction is sought is sufficient if the Trade Mark has established its reputation and goodwill in the country of its origin and the countries where it is registered. It is not necessary that the association of the plaintiff's mark with its goods should be known in the country other than its origin or to every person in the area where it is known at best. In this behalf, it was again observed that in the modern world, advertisements in the newspapers travelled beyond the country where the party is engaged in business through overseas editions or otherwise. Mobility has rendered international awareness of the commodities and reputation travels faster than man.

Icrave, LLC v. Icrave Designs Pvt. Ltd. was a case on similar lines wherein the firm (ZeusIP Advocates) had presented the plaintiff for an action for injunction against the passing off activities of the defendants. ICRAVE is the invented Trade Mark of the plaintiff used for its services relating to designing of hotels and casinos. The defendants started using a a deceptively similar Trade Mark and Trade name Icrave Designs Pvt. Ltd. for similar services.

The hon'ble Single Judge of the Delhi High Court held that the plaintiff had invented and adopted the mark ICRAVE and had acquired sufficient reputation through its quality services. The extensive advertisements campaigns undertaken by the plaintiff was held to have formed formidable trans-border and spill over reputation of the plaintiff's mark in India even in the absesnce of availability of its services in India. The Judge applied the established principles of trans-border reputation, as discussed in the cases above, along with the doctrine of first past the post in the international market and held that the plaintiff was entitled to protection of its rights in and to the said Trade mark. It was further held that the a likelihood of confusion on the part of the consumers coupled with the tripartite test of i) prima facie case, ii) balance of convenience and iii) irreparable loss or injury lied in favour of the plaintiff and thus an ad interim injunction was awarded in favour of the plaintiff.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 2nd November, 2012.

The paradigm of interface between the Intellectual Property Rights (IPRs) and Competition law is that the two legal regimes are interconnected by the economics of fostering innovation and a convoluted web of legal policies that seek to stabilize the scope and effect of each policy. There exists a common area wherein Competition policy and Intellectual Property Law aim at nurturing innovation, effectiveness, consumer welfare and economic growth.

The interface between the two, Competition policy and Intellectual Property Law has been examined from two main aspects: (i) the effect that the Intellectual Property Rights have in shaping the disciplines of competition law; and (ii) the application of competition law on the post-grant use of IPRs

Intellectual Property Rights act as an institutional regulatory framework restricting, usually as an exemption, pure exclusion of restraints by competition law. The Competition Act, 2002 (India) under section 3- outlines that its provisions will not restrict "the right of any person to restrain any infringement of or to impose reasonable conditions, as may be necessary for protecting any of his rights which have been or may be conferred upon him under various IPR statutes. Nonetheless, the Competition Act does draw the line insofar as it does not permit unreasonable conditions to be passed off under the guise of protecting IPRs. Thus, in principle, IPR licensing arrangements which interfere with the Competition law policies such as competitive pricing, quantities, qualities of products or abuse of the dominant position whatever be the source of such practices would fall foul of latter in India. For instance, the field-of- use limitation on the Licencee, if it is stipulated that it should be used as medicine only for humans and not animals, even though it could be used for both. Likewise, the Monopolies and Restrictive Trade Practices (MRTP) Commission in - Vallal Peruman and Another v. Godfrey Phillips (India) Limited (MRTP Commission, 1994) and Manju Bhardwaj v. Zee Telefilms Ltd (MRTP Commission, 1996) observed that where a Trade Mark is misused by manipulation, distortion, contrivances and embellishments so as to mislead/confuse the consumers, he would be exposing himself to an action of indulging in unfair Trade practices. In other words, this implies that the Competition Act prohibits Trade practices visible to the detriment of public interest and also restricts the unreasonable conditions imposed by a right holder during the exercise of a right.

The reconciliation of IPRs and competition policy entails the necessity to identify IP laws as a form of competitive policy, resulting in a balance between individual interests of the right-holders and the interest of the society at large, and encouraging further innovation. Competition law and IPR become less divergent given the fact that fundamental aim of innovation/ inventions is more competition. The construction of interaction between competition law and intellectual property rights is driven by a number of competing considerations apart from the IPRs and competition principles. The challenge for the state is to devise rules both within the ambit of IP law as well as outside it, i.e. statutory IP laws as well as substantive competition law in a manner that promotes dynamic competitive markets The middle path can be achieved only by reconciling the immediate goals of the two systems only with reference to their effect on the market i.e. IP law must deal with the grant and functioning of property rights, while competition law would need to deal with the manner of exercise of these rights.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29th July 2013.