India – IPR Updates – April – May 2021.

In a reversal of stance, the American government announced its support for waiver of IP protections on Covid-19 vaccines on 5th May 2021. The government also assured active participation of its administration in the WTO negotiations needed to ensure such waiver. This proposal for waiver has been subject to criticism by the European Union, which has instead called for ending export bans as an alternative.
 

K S & Co Comments
 

It is interesting to note that the USA has supported the waiver of IP protections for the Covid-19 vaccines. The waiver on the vaccines will definitely ease the pressure on the government to provide the vaccines at affordable rates. If this goes a long way, it won’t be long before we win over the virus.
 

 K S & Co Comments  
 

Natco has presently filed the application under Section 92 of the Patents Act, which requires the government’s approval based on necessity of such licensing in public health crises among other circumstances.
 

K S & Co Comments  
 

In today’s time when there is a dire need of life saving drugs, the shortage of the same is not making it easy for the doctors and the patients. While Baricitinib is not a life-saving drug, it has been seen to have effects on slowing down the spreading of the virus in the human body. We hope that the government accepts the petition and soon there can be numerous other compulsory licenses so that the drugs can be made available as per the requirement.
 

Suspension of deadlines for IP filings by Supreme Court until further orders
 

In March 2020, the Supreme Court had taken suo motu cognisance of challenges faced by litigants in filing within the limitation period amidst the pandemic, and had suspended deadlines for all matters from 15th March 2020. The extension of limitation had come to an end on 8th March 2021, but had now been restored by the order of 27th April 2021 in light of the deteriorating situation.
 

K S & Co Comments
 

This is a welcome move considering that it becomes difficult to meet deadlines in accordance with the Trademark Rules, 2017 due to covid-19. In addition to this, the Trademark, Design & Patent Offices have also acknowledged the Supreme Court orders.
 

PhonePe’s application for injunction against BharatPe denied by Delhi High Court
 

The court held that the suffix “pe” was not a distinctive character of the trademark and its usage was not sufficient to cause confusion in consumers’ minds, given that both names were phonetically different. The reasoning that it is the impression of the mark as a whole and not the parts thereof that is to be seen, was upheld by the High Court in disposing of the application.
 

K S & Co Comments
 

It is imperative to understand from this judgement, that a trademark has to be seen as a whole. If a third party wants to object to a mark, it needs to see the dominant part of the trademark. The most important factor to be kept in mind is that the mark should be deceptively similar to the mark as a whole and not partly.
 

Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance 2021
 

A Bill for abolition of these appellate authorities had been introduced earlier in the Lok Sabha on 13th February 2021 but could not be taken up for consideration as the Parliament had not been in session. Subsequently, this Ordinance was promulgated after the President was satisfied of circumstances necessitating such action.
 

K S & Co Comments
 

In a landmark move, the bill has abolished Intellectual Property Appellate Board and has left a hefty number of Opposition hearings pending before the High Court. It will be interesting to see how will the Intellectual Property appeals be heard by the respective High Courts. We believe that this is a welcome move as now it is in the hands of an institution that will be able to schedule hearings on timely basis.
 

SRM student gets copyright for eco-friendly face shield design
 

This face shield serves as the outer defence to the mucous membranes (nose, eyes and mouth), and it comes with a transparent visor made of a thin layer of 175-micron reusable plastic and a highly elastic and durable headband made from 3 ply corrugated cardboard. The innovative features added to this face shield has helped the IPO (Indian Patent Office), Kolkata to grant a copyright with a design application number 329364– 001.
 

K S & Co Comments
 

A need of the hour that everyone who has to go out of their houses needs a face shield and, in these circumstances, a college student stepping forward and registering his design only shows the awareness about the copyright in the design of the Face shield. It is the most important protection that lasts for a period of 10 years and is further extendible by 5 years.
 

Bombay HC dismisses injunction plea against SII in passing off action for “Covishield” Mark
 

K S & Co Comments
 

India is a jurisdiction where prior rights are judged by the first use of the mark. It is imperative to start using the mark on anything that can be put into documentation namely, invoices, brochures, websites, etc. Since SII proved that it used the mark prior to Cutis Biotech in India, the order was granted in SII’s favour.
 

Delhi HC held that plaintiff’s mark ‘GOODYEAR’ is a well-known mark
 

The court stated “It is manifest that the registered mark/name of the plaintiff ‘GOODYEAR/ is prima facie a well-known mark”. Therefore, the act of the defendant in using the same mark would amount to infringement of the registered trademark of the plaintiff.
 

K S & Co Comments
 

One of the major reasons why trademarks don’t end up as accepted by the Registrar is that the Applicant does not initiate a comprehensive search of the register of trademarks. It is imperative that a comprehensive search of the trademark registry is initiated before finalizing the mark.
 

Delhi HC held that ‘ONEVITAL’ mark is deceptively similar to ‘REVITAL’ mark
 

Label/carton packaging/trade dress of the impugned product is also similar to the plaintiff’s well-known registered trade mark ‘REVITAL’ and its label/carton packaging/trade dress”. The defendant was in the same business of dealing with health supplements and it had used similar carton and packaging (trade dress) to that of the plaintiff. Therefore, the court granted an interim injunction that restrains the defendants, its directors, etc. from manufacturing, selling, advertising, or indirectly dealing in health supplements under the impugned mark ‘ONEVITAL’. 
 

K S & Co Comments
 

As we have time and again advised our clients, it is essential to opt for a comprehensive search to reduce chances of opposition with respect to the registration of their marks. Copying of trade dress is one of the most common infringement when it comes to pharmaceutical goods. One should always keep a check on the other goods of the same sector.

International Developments

A temporary restraining order against MSCHF had been granted as well earlier, but the edition had been sold out by that period. The agreed terms of the present settlement require initiation of a voluntary recall of these shoes for buyback at retail prices by MSCHF.
 

K S & Co Comments
 

The dispute that was into a fierce limelight around the world has been settled. While a well-known mark like NIKE has a long standing reputation of aggressively pursuing anyone coming close to its NIKE mark or the SWOOSH mark. This is a welcome jurisprudence that the courts in India can adopt of ordering to voluntary recall the shoes or goods by the defendant.
 

Joint suit by Facebook and Gucci against sale of counterfeit products
 

K S & Co Comments
 

Counterfeit products are a menace to any brand and more so for a luxury brand like Gucci. It is indeed a landmark move by the two giants on coming together and filing a joint suit against the infringer.
 

Google v Oracle decision – No copyright infringement of Java code by Google
 

In this landmark ruling, Google’s use of over 11,000 lines of Java code in building a new software platform for Android devices was held to fall within the “fair use” exception to copyright. The court observed that the use of code for the Android platform was transformative and served a functional purpose, since the platform would in turn be used by developers to build applications.
 

K S & Co Comments
 

The “fair use” exception is a defence that allows someone to use someone else’s copyrighted material. The court’s observation that a Java code may also fall within “fair use” is a welcome move. Since the purpose was functional and transformative it was allowed by the court.
 

Russian Supreme Court rejects lawsuit over Compulsory Licensing of Remdesivir in Russia
 

The government cited the move in the interests of Russia’s own security and has agreed to pay compensation (not specified) to the drug’s patent holder. Pharmasyntez produces Remdesivir under the name Remdeform.
 

K S & Co Comments
 

Remdesivir’s scarcity was felt in India as much as it is in the other parts of the globe. Not allowing a generic company to manufacture the drug would only mean that the drug that has seen to help with the treatment of Covid-19 patients will not be available and if available, will be at an exorbitant price.