INTRODUCTION TO COPYRIGHT IN INDIA By Prathiba M. Singh, Advocate, LLM (Cantab)
Ms. PRATHIBA M. SINGH Senior Advocate · PDF filepackaging/trade dress of 'Sunfeast Farmlite...
Transcript of Ms. PRATHIBA M. SINGH Senior Advocate · PDF filepackaging/trade dress of 'Sunfeast Farmlite...
IP statutes have existed in India for many decades;
First TM was granted in India in 1942 for the mark ‘BLACK AND
WHITE’.
1950 -1990 – Jurisprudence developed on fundamentals of Trademarks,
Copyrights, Patents and also the procedural issues in IP
Many new concepts emerged: well-known marks, Trans-border
reputation, Parallel importation of books, International Conventions,
Non-use & special circumstances, Trafficking etc.
Most cases – filed, injunction granted and settled.
1990-98 – TRIPS was on the anvil and came into force
from 1.1.95.
Enormous CHURNING in IP laws
Exclusive marketing rights introduced in the Patents
Act;
Digital era had dawned for Copyright laws;
Debates on GI laws ensued; [enacted in 1999]
IP litigation increased to huge numbers;
Innovative remedies were granted;
Complex issues began being adjudicated [domain names,
comparative advertising etc.,]
Broadcasting [radio & TV] began to create complications;
Fair Use defenses
Newer concepts – Registered proprietor can be
injuncted;[Whirlpool Case]
Turn of the millennium – 2000 onwards
Era of Intellectual Property
Product patents introduced;[2002 & 2005]
Filings increased in courts. From about 300-
350 IP suits in the 90s, the numbers doubled
to almost 600-650 suits in DHC
Many, many complex issues came up before
courts.
Pharmaceutical patents;
Standard Essential Patents;
Plant Varieties;
Trade secrets;
IP and competition law;
Complex fair use defenses;
Biosimilars;
Data exclusivity;
Data protection
Madrid Protocol: One stop solution for
registering and managing marks worldwide. File
one application, in one language, and pay one
set of fees to protect your mark in the territories of
up to 98 members
TRIPS Plus provisions in FTAs;
Protectionist and expansive demands;
IP rankings and US 301;
Commercial Courts Act 2016;
Most proactive in
protecting IPRs
Since the mid-80s,
judiciary has the lion-share
in IPR protection
Has been ahead of the
Statutes in most cases &
has prompted
Amendments therein.
S. Syed Mohideen v. P. Sulochana Bai, 2016 (
66 ) PTC 1 ( SC )
Passing off right is a broader remedy than that of
infringement.
Iruttukadai Halwa
ITC Limited v. Britannia Industries Limited
, 2016(68)PTC11(Del)
Britannia restrained from violating rights of ITC in
packaging/trade dress of 'Sunfeast Farmlite Digestive-All
Good' biscuits by allegedly using a deceptively and
confusingly similar trade dress for 'Nutri Choice Digestive
Zero' biscuits.
Prius Auto Industries Ltd. & Ors. V. Toyota Jidosha Kabushiki
Kaisha, 2016 (236) (DLT) 343
The Court observed that the Law on Trans-border reputation
requires two facts to be established: reputation in foreign
jurisdictions of the Trademark and knowledge of the trade mark
due to its reputation abroad in a domestic jurisdiction. This is
because Trade marks are territorial in operation – if the reputation
spills beyond the territories of its operation, the benefit thereof can
be claimed in an action for passing off.
Syed Ghaziuddin S/o Late Sri Syed Fakhruddin, Proprietor
of Magfast Beverages Vs. Pepsico INC.
o Pepsi was registered owner of the mark MOUNTAIN DEW
o Defendant started using MOUNTAIN DEW for water
o Hyderabad Court held that the products may be in different
classes but they are cognate and allied
o Interim injunction was granted.
Cricket matches on `Rogue websites’
Question is whether only URL should be
blocked
Or whether full website should be
blocked
Court held that website should be
blocked because there is mostly pirated
content.
The Chancellor, Masters & Scholars of The University of Oxford & Ors. Vs.
Rameshwari Photocopy Services & Anr.RFA(OS) 81/2016
Fairness determined on the touchstone of 'extent justified by the purpose‘
without considering the extent of material used – qualitative or quantitative
So much of the copyrighted work can be fairly used which is necessary to
effectuate the purpose of the use i.e. make the learner understand what is
intended to be understood.
Argument that there will be adverse impact on the market of the Copyrighted
work – rejected on the grounds that the student will not be a potential customer
of 30-40 reference books
ResearchPrivate
Study
Criticism
News ReportsTeaching
Review Translations/
Adaptations
Converting
from 2D to
3D
• Imatinib – pre-1995 drug – in public domain
• Novartis sought patent for Beta crystalline form of
Imatinib Mesylate
• Question was whether this form had more efficacy over
the known Imatinib
• Supreme Court held that for medicines `Efficacy’ is
`Therapeutic Efficacy’.
• Not established – hence no patent.
F. Hoffman la Roche Ltd and Anr. v.
Cipla 2016(65)PTC1(Del)
Merck Vs. Glenmark
• Molecule patents protected even if patentee has applied
for a second form and that form is rejected
• Injunction and costs granted
• Defendant cannot escape by arguing that it is selling the
rejected form
Glenmark Pharmaceuticals Ltd. v. Merck Sharp and Dohme Corporation
& Anr. 2015 (63) PTC 257 (Del)
Vide order of the Supreme Court dated 15th May 2015, Local
Commissioner directed to record evidence on a day-to-day basis
Lack of cooperation by either side to be recorded by the Local
Commissioner
Arguments to be heard on a day-to-day basis after recording of
evidence
Evidence of the witnesses recorded in 22 days
The final arguments commenced on 6th July 2015, concluded on 27th
August, 2015 and judgment was pronounced on 7th October, 2015.
The Supreme Court observed, “Unusual and extraordinary course of
action taken to ensure highly contested commercial cases that require
immediate attention are disposed of quickly”
2G, 3G, 4G and 5G technologies will see litigation
increase;
Courts have recognised SEPs;
General trend is to grant interim deposits and secure the
patentee;
Coupled with expedited trials;
Technology absorption is important and hence its good to
acquire technologies through robust licensing.
Videocon Industries Ltd vs. Whirlpool of India Ltd.,
2014 (60) PTC 155 (Bom )
A design that is to be registered is to be applied to any
finished article that may be judged solely by the eye. Use
of either registered design or a fraudulent or obvious
imitation thereof by Defendant amounts to an act of
piracy and/or infringement.
Dart Industries Inc. & Ors. v. Technoplast & Ors.,
2016(67)PTC457(Del)
The court held that action for passing off is a common law
right, independent of the Designs Act. However, for a passing
off action, it must be proved that the general public associates
the shape, trade dress etc. with the plaintiff alone. Unless a
work of art is capable of design protection and has been
registered as a design, or should have been registered as a
design, the copyright in the underlying artistic work subsists
independently of design rights.
EICHER GOODEARTH PVT. LTD V. KRISHNA
MEHTA & ORS
CS(OS) 1234/2014
JUDGEMENT PRONOUNCED ON – 29TH JUNE,
2015
“that even though the design is old in itself but if
the same is applied to a new article to which it has
never been previously applied, then the said design
needs to be protected”
Plaintiff’s Artwork Defendant’s Artwork
Falcon
Serai
Rose Princess
India – a hub of innovation;
Registration of TMs – less than a year;
Grant of Patents – less than 3 years;
Domestic filings – will increase;
Start ups, Digital India;
IP licensing will be prevalent;
IP litigation – high stake matters will increase;
Damages – will be granted like in international jurisdictions;
Costs – will be in actuals – hence deterrent effect;
Modern facilities – Video conferencing, transcription;
May, 2016 – India’s first IPR Policy released
Aim: instil importance of IPR in every sector
Seeks to promote and develop the field of IP to
ensure commercialization and expansion
NATIONAL IPR POLICY
IPR AWARENESS GENERATION OF
IPRs
LEGAL AND LEGISLATIVE
FRAMEWORK
ADMINISTRATION AND MANAGEMENT
COMMERCIALIZATI
ON
ENFORCEMENT AND
ADJUDICATION
HUMAN CAPITAL
DEVELOPMENT
IP is the most important and valuable asset for softwareand knowledge-intensive companies
Due to lack of knowledge – India lags behind in leveragingIPR – lead to growth of illicit trade
Need of the hour – Human resources, Strict enforcement
Role of Universities and academic institutions is one ofgreat responsibility
R & D expenditure needs to increase
In the next decade India needs to focus oninnovation in order to become more competitive inprotectionist regimes.