India - IPR Updates - April - May 2021.

Legal News & Analysis - Asia Pacific - India - Intellectual Property

10 June 2021

 

USA supports waiver of IP protections for Covid-19 vaccines
 

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.
 

India placed on priority watch list of USA in the Special 301 report
 

The USTR’s Annual Special 301 Report on Intellectual Property Protection yet again places India on the Priority Watch List. The stated reasons for such inclusion comprise prevalence of online piracy, ineffective copyright protection and the Copyright Amendment Rules notified in 2021.

 

 It also deems India’s overall IP enforcement system as inadequate despite gradual improvement in enforcement efforts. While the Report has regularly been subject to criticism in being a unilateral exercise of calling out countries, it does carry weight in attempting to bring about changes in the mentioned countries’ IP regimes.
 

 K S & Co Comments  
 

India has been one of the first choices of foreign players to file an application for their mark. With the growing economy and a promising future, India’s place on the priority watch list of the USA in the Special 301 report only stems from the unsophisticated mechanisms of the Registry. Where on one hand there is a huge backlog of show cause hearings, on the other hand the Intellectual Property Appellate Board has been annulled. It is imperative to understand and see how the courts are going to function, especially, for the Trademark Opposition hearings since those have been pending since years.
 

Request for compulsory license for Covid-19 drug Baricitinib filed by Natco
 

Natco Pharma Ltd, an Indian generic drug manufacturer, has approached the Controller of Patents for a compulsory license for Baricitinib on 3rd May 2021. This drug had been recently authorised by FDA in USA for usage in combination with remdesivir for treatment of Covid-19 patients. Its patent is owned by Incyte Holdings Corporation and licensed to Eli Lilly. 
 

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 light of the current surge in Covid-19 cases in India, the Supreme Court passed an order on 27th April 2021 restoring its previous order of 23rd March 2020, that had extended the limitation period in all proceedings 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
 

UPI payment company PhonePe’s application for an interim injunction against its competitor BharatPe’s use of the suffix “pe” was rejected by the 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
 

Existing key appellate bodies have been done away with by the Tribunal Reforms Ordinance that was promulgated on 4th April 2021. The Intellectual Property Appellate Board was abolished by this Ordinance, and its powers transferred to the concerned High Courts, or the Commercial Court in the case of appeals against the decisions of the Registrar of Copyright. 

 

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
 

P. Mohan Aditya, a third-year mechanical engineering student of SRM University-AP, has been granted a copyright for the design of a biodegradable face shield for humans. He named it ‘Facial Shield 2.0’ for it is an improved version of the ordinary face shield. 
 

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
 

The Bombay High Court refused interim injunctive relief sought by Cutis Biotech against the Serum Institute of India for the usage of the trademark “Covishield.” Cutis Biotech had appealed against the decision of the Pune Commercial Court, that had refused to grant an interim injunction on the ground that the triple test for passing off a trademark had not been proven. 
 

Though both manufacturers had not managed to register the trademark “Covidshield”, the High Court held that prima facie evidence indicated adoption and continued usage of the name by SII prior to Cutis Biotech. The court had only observed that restraining SII from using the trademark would cause disruption in the vaccine administration programme in the state.
 

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 Delhi HC in The Goodyear Tire & Rubber Company & Anr. v. Devanand Sukhia, upon satisfaction of a prima facie case of the plaintiff, restrained the defendant, its promoters, directors, and other officers, etc. from using the mark or name ‘GOODYEAR’ or any other mark that is identical or deceptively similar to the plaintiff’s
 

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
 

The Delhi High Court in Sun Pharmaceutical Industries Ltd. v. Wings Biotech, granted an ex parte interim injunction in favour of Sun Pharm (plaintiff) as the defendant infringed the plaintiff’s registered trademark. The court held that “the impugned mark ‘ONEVITAL’ which is deceptively similar to the plaintiff’s trade mark ‘REVITAL’. 
 

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

 

Settlement of Nike-MSCHF trademark dispute on Satan Shoes

 

After Nike initiated a trademark infringement suit following MSCHF’s release of Satan-themed modified Nike sneakers, the dispute has been settled between both parties. The suit had been initiated after Nike alleged harm to its reputation from MSCHF’s sale of modified Nike shoes, in mistakenly being considered by customers as endorsing satanism by authorising these shoes. 
 

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
 

In the first such instance of a joint litigation by Facebook, it filed a suit along with Gucci against sale of counterfeit Gucci products on Instagram and Facebook. The suit was filed against the head of an international counterfeiting business in California district court for violating Facebook’s terms and infringing Gucci’s IP rights by selling counterfeits. Such a cross-industry collaboration in taking enforcement action.
 

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
 

The case of Google LLC v Oracle America Inc was decided by the US Supreme Court in Google’s favour by a 6-2 majority. Copyright over Java, a programming language with various functional features, is owned by Oracle America. 
 

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
 

Russia’s Supreme Court rejected the lawsuit filed by Gilead Sciences (US-Based Pharma company) that challenged the decision of the Russian Government to grant Pharmasyntez (Russian drug maker) a compulsory license for one year to manufacture Remdesivir, a drug to treat Covid-19 under a different name without Gilead’s permission. 
 

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.
 

Tesla files a new trademark for its brand under restaurant services

 

On May 27th 2021, Tesla applied for three new trademarks under the category of “restaurant services” such as self-service restaurants, take-out restaurants, and pop-up restaurants. 
 

The iconic ‘T’ logo is seen to be appeared on the USTPO application for the purpose of being trademarked for use by restaurants. Along with this, the word “Tesla” has been applied for trademark. The word “Tesla” has been stylized to depict Elon Musk’s plans to enter into the restaurant industry.
 

K S & Co Comments
 

Something that was not expected and something that is off the charts for the electric automobile giant Tesla. This makes it clear that Elon Musk, owner of Tesla is the RestroBiz. It will be interesting to see what kind of aesthetics and technologies will be used in their restaurants.
 

herbert smith Freehills

 

For further information, please contact:

 

Krrishan Singhania, Managing Partner, Singhania & Co

[email protected]