This week (October 15-21) has seen its due number of happenings within the country and beyond insofar as the IP scenario is concerned, with 8 posts having been put up in the blog, covering a varied range of events.
Guest Post on Xerox Victory
Guest Post on Xerox Victory
(Image from here)
It started with a guest post by Adarsh Ramanujam, an IP lawyer, analyzing the impact in the Indian trademark law scenario of the judgment Ilango v. Rank Xerox Ltd. & Ors., wherein Xerox Corporation has won a significant victory before the IPAB in preventing ‘Xerox’ being declared a generic mark and hence invalidating the trademark protection currently accorded to it. The factors that the IPAB had considered to reach its decision include “public acceptance of the trademark rights” of the Xerox Corporation, “long continuous existence on the register”, which was uncontested by competitors and the presence of alternative words like ‘photocopy’ to describe the goods/services involved. Curiously enough, throughout the judgment, no reference has been made to the existing legal provisions, such as S. 9(1) of the Trade Marks Act, 1999, which one would have thought had a close bearing in the determination of whether the trademark should remain on the register or otherwise.
Guest Post on TRIPS-Compliance of Bayer-Natco Decision
This was followed by another informative guest post by Dr. Enrico Bonadio, an IP attorney and a lecturer of IP and EU law at The City Law School University, London, who sought to determine the TRIPS-compliance of the recent Bayer-Natco decision involving India’s first compulsory license of a patent. This post went on to analyze the Controller’s decision to interpret the “local working” (or lack thereof) requirement to be satisfied for compulsory licensing, as to mean nothing short of local manufacturing and not merely local importation, with reference to S. 83(b) of the Patents Act. However, Dr. Bonadio opined that a combined reading of A. 31 and A. 27(1) of the TRIPS would reveal that where national legislations impose a local working requirement, patentees should have the possibility of satisfying such requirement by showing to have imported locally the patented product. Nor could Paragraph 5(b) of the Doha Declaration be invoked to justify the need of a local production requirement and hence a question remains regarding the degree to which the Controller’s decision is compliant with TRIPS requirements.
Internet Fraud by Fake Open Access Journals
Guest Post on TRIPS-Compliance of Bayer-Natco Decision
This was followed by another informative guest post by Dr. Enrico Bonadio, an IP attorney and a lecturer of IP and EU law at The City Law School University, London, who sought to determine the TRIPS-compliance of the recent Bayer-Natco decision involving India’s first compulsory license of a patent. This post went on to analyze the Controller’s decision to interpret the “local working” (or lack thereof) requirement to be satisfied for compulsory licensing, as to mean nothing short of local manufacturing and not merely local importation, with reference to S. 83(b) of the Patents Act. However, Dr. Bonadio opined that a combined reading of A. 31 and A. 27(1) of the TRIPS would reveal that where national legislations impose a local working requirement, patentees should have the possibility of satisfying such requirement by showing to have imported locally the patented product. Nor could Paragraph 5(b) of the Doha Declaration be invoked to justify the need of a local production requirement and hence a question remains regarding the degree to which the Controller’s decision is compliant with TRIPS requirements.
Internet Fraud by Fake Open Access Journals
(Image from here)
The rising trend of the crime of internet frauds by way of soliciting papers for Open Access Journals was then brought into light by Mathews, who went on to lay down the provisions of the Information Technology Act, 2000 and the IPC applicable to such a crime. The practice essentially involves people sending mails on behalf of an Open Access Journal to researchers and scientists soliciting manuscripts, enticing the latter by keeping the processing fee low and the processing time quick, while in reality, such journals do not exist.
Sugen’s Efforts to save Sunitinib Patent
Prashant then carried a post reflecting the rather grim state of affairs in India’s still-ongoing struggle to come to terms with the basic of post-grant patent oppositions, as reflected in Sugen Inc.’s desperate attempts to save its patent for Sunitinib that had recently been revoked by the Patent Office. Not only has Sugen filed a writ petition before the Delhi High Court asking for the revocation to be set aside on the rather flimsy ground that a copy of the report of the Board of Oppositions has not been made available to Sugen, what’s even more astonishing is that, based on this petition, the court has then proceeded to restrain Cipla from releasing its generic drug in the market, which essentially amounts to an interim injunction against a private party, through a writ petition. The matter is due to be heard by a Single Judge on December 6, 2012.
Use of Bata in Bollywood Song not Defematory: holds Delhi High Court
This was followed by a post by Kruttika, referring to the manner in which, the Delhi High Court’s decision of disallowing the use of the word Bata in a disparaging manner in a song of Prakash Jha’s new movie Chakravyuh, was overruled by the Division Bench of the same court. Bata had contended that the use of its trade name in the context of this particular song laced with inferences about inflation, corruption, greed and exploitation by big corporate houses would lead the listener to view Bata in a negative light. However, the DB agreed with the opponent’s contentions that the use of the trade name in the song was rhetoric hyperbole and merely referred to the socialist and political struggle between the haves and the have-nots that the film is based on. Therefore, it was not a matter of defamation.
Copyright Office’s Errors with Register of Owners
Next came another post by Prashant, highlighting the manner in which the Copyright Office had erred previously in not insisting that the Indian Performing Rights Society, once having been registered as a copyright society, submit a Register of Owners as required under the prevalent rules. The register, detailing the list of persons who owned the copyright in works being administered by IPRS, was the only way in which the identity of the people, who could control IPRS, could be legally ascertained. With the Copyright Rules, 2012 being just around the corner and the Copyright Office gearing up to register new copyright societies, Prashant’s observation was of particular significance, lest the old errors be repeated once again.
Controller’s Decisions in September, 2012
Rajiv then posted his latest data compilation of the Controller’s decisions for the Month of September, 2012. Out of the 94 decisions, 46 patents were granted, 33 refused (including abandoned and withdrawn) and no file uploaded for the remainder (15).
Petitions and Developments in the DU Copyright Controversy
Finally, it was Amlan’s turn to highlight the latest developments in the contentious copyright battle between Delhi University and a group of publishers. Unfortunately, as time is passing, the university may be showing signs of distancing itself from the photocopier and may not be resisting the suit with all diligence. Amlan has also referred to a petition available on Change.org that urges the publishers to drop the suit, which is gaining momentum rapidly.
International Front
Apple loses UK Battle against Samsung
Sugen’s Efforts to save Sunitinib Patent
Prashant then carried a post reflecting the rather grim state of affairs in India’s still-ongoing struggle to come to terms with the basic of post-grant patent oppositions, as reflected in Sugen Inc.’s desperate attempts to save its patent for Sunitinib that had recently been revoked by the Patent Office. Not only has Sugen filed a writ petition before the Delhi High Court asking for the revocation to be set aside on the rather flimsy ground that a copy of the report of the Board of Oppositions has not been made available to Sugen, what’s even more astonishing is that, based on this petition, the court has then proceeded to restrain Cipla from releasing its generic drug in the market, which essentially amounts to an interim injunction against a private party, through a writ petition. The matter is due to be heard by a Single Judge on December 6, 2012.
Use of Bata in Bollywood Song not Defematory: holds Delhi High Court
This was followed by a post by Kruttika, referring to the manner in which, the Delhi High Court’s decision of disallowing the use of the word Bata in a disparaging manner in a song of Prakash Jha’s new movie Chakravyuh, was overruled by the Division Bench of the same court. Bata had contended that the use of its trade name in the context of this particular song laced with inferences about inflation, corruption, greed and exploitation by big corporate houses would lead the listener to view Bata in a negative light. However, the DB agreed with the opponent’s contentions that the use of the trade name in the song was rhetoric hyperbole and merely referred to the socialist and political struggle between the haves and the have-nots that the film is based on. Therefore, it was not a matter of defamation.
Copyright Office’s Errors with Register of Owners
Next came another post by Prashant, highlighting the manner in which the Copyright Office had erred previously in not insisting that the Indian Performing Rights Society, once having been registered as a copyright society, submit a Register of Owners as required under the prevalent rules. The register, detailing the list of persons who owned the copyright in works being administered by IPRS, was the only way in which the identity of the people, who could control IPRS, could be legally ascertained. With the Copyright Rules, 2012 being just around the corner and the Copyright Office gearing up to register new copyright societies, Prashant’s observation was of particular significance, lest the old errors be repeated once again.
Controller’s Decisions in September, 2012
Rajiv then posted his latest data compilation of the Controller’s decisions for the Month of September, 2012. Out of the 94 decisions, 46 patents were granted, 33 refused (including abandoned and withdrawn) and no file uploaded for the remainder (15).
Petitions and Developments in the DU Copyright Controversy
Finally, it was Amlan’s turn to highlight the latest developments in the contentious copyright battle between Delhi University and a group of publishers. Unfortunately, as time is passing, the university may be showing signs of distancing itself from the photocopier and may not be resisting the suit with all diligence. Amlan has also referred to a petition available on Change.org that urges the publishers to drop the suit, which is gaining momentum rapidly.
International Front
Apple loses UK Battle against Samsung
(Image from here)
One of the biggest news of the week is definitely Apple’s loss in the UK lawsuit, where a three-judge panel in London upheld an earlier decision by a U.K. court that said several of Samsung’s Galaxy tablets weren’t “cool” enough to be confused with the iPad and hence cannot be held to cause infringement of the latter’s designs. This is the latest in a series of rulings all across the world that have puzzled IP enthusiasts owing to their inconsistencies, with US deciding in favor of Apple and Tokyo, Australia and Netherlands favoring Samsung’s arguments.
Monsanto suspends Royalty Collection from Brazil
Meanwhile, Monsanto Co., the global seed production giant, has suspended collection of royalties for its Roundup Ready soybeans in Brazil, while it appeals a state court ruling in Mato Grosso, which had agreed with a group of growers that a patent on first-generation Roundup Ready soybeans had expired and halted royalty payments in the state.
Viacom Trademark Dispute gets settled
The trademark dispute between Viacom Inc. and DJ Paulie [Paul Lis DJ Paulie Broadcasting LLC v. Paul DelVecchio Jr.] regarding the latter’s objection to names used in connection with a character from MTV’s “Jersey Shore” reality television program, has reached a settlement, although the full terms are yet to be disclosed.
Trade Secret Misappropriations: Even Bulletproof Kevlar is not Spy-proof
Monsanto suspends Royalty Collection from Brazil
Meanwhile, Monsanto Co., the global seed production giant, has suspended collection of royalties for its Roundup Ready soybeans in Brazil, while it appeals a state court ruling in Mato Grosso, which had agreed with a group of growers that a patent on first-generation Roundup Ready soybeans had expired and halted royalty payments in the state.
Viacom Trademark Dispute gets settled
The trademark dispute between Viacom Inc. and DJ Paulie [Paul Lis DJ Paulie Broadcasting LLC v. Paul DelVecchio Jr.] regarding the latter’s objection to names used in connection with a character from MTV’s “Jersey Shore” reality television program, has reached a settlement, although the full terms are yet to be disclosed.
Trade Secret Misappropriations: Even Bulletproof Kevlar is not Spy-proof
(Image from here)
In USA v. Groves, the District Court at Kentucky is holding a trial of three former employees of White Drive Products Inc., who have been accused of trade secret misappropriation of the hydraulic-component manufacturer and handing them over to a competitor as part of a plan to be hired by the new company.
In a set of similar events, Kolon Industries Inc. and five of its executives have also been charged with stealing trade secrets from DuPont Co. related to the manufacture of Kevlar, an anti-ballistic fiber used in police and military gear. The trial is being held in the District Court at Virginia as U.S. v. Kolon Industries.
North Face gets Settlement Money back in Butt-Face Controversy
In the matter of North Face Apparel v. Williams Pharmacy (referred to during last week’s review), VF Corp.’s North Face unit has managed to force the defendants in a previous trademark dispute with the makers of “South Butt” T- shirts to give up the $65,000 they had been paid to settle the dispute.
DIGITALEUROPE accused of hijacking Mediation Process for having advocated Reforms
On another front, copyright collective management and creators’ organizations have recently accused the digital technology industry group DIGITALEUROPE of trying to hijack a mediation process aimed at straightening out the EU’s messy system of private copying and reprographic levies. DIGITALEUROPE, in a recent paper setting out alternatives to device-based copyright levies, had urged the European Commission to initiate comprehensive reforms that include replacing levies with some other forms of compensation to rights holders.
Doughnut Giant files for ‘Bagel Bunchkin’ Trademark
(Image from here)
North Face gets Settlement Money back in Butt-Face Controversy
In the matter of North Face Apparel v. Williams Pharmacy (referred to during last week’s review), VF Corp.’s North Face unit has managed to force the defendants in a previous trademark dispute with the makers of “South Butt” T- shirts to give up the $65,000 they had been paid to settle the dispute.
DIGITALEUROPE accused of hijacking Mediation Process for having advocated Reforms
On another front, copyright collective management and creators’ organizations have recently accused the digital technology industry group DIGITALEUROPE of trying to hijack a mediation process aimed at straightening out the EU’s messy system of private copying and reprographic levies. DIGITALEUROPE, in a recent paper setting out alternatives to device-based copyright levies, had urged the European Commission to initiate comprehensive reforms that include replacing levies with some other forms of compensation to rights holders.
Doughnut Giant files for ‘Bagel Bunchkin’ Trademark
(Image from here)
Readers, who are regular doughnut-munchers, may be interested to know that Dunkin’ Brands Group Inc. (owner of Dunkin’ Donuts and Baskin-Robbins chains) appears to be expanding the doughnut-hole concept, by way of seeking registration for “bagel bunchkin” as a trademark, for “bite- sized bagel pieces” before the USPTO.
Nutella Maker issues Cease-and-Desist Notice
For those who swear by the heavenly Nutella, Ferrero Spa, the makers of Nutella and TicTac candies, has recently sent a cease-and-desist letter to a chain of burrito restaurants, objecting to the Nutella milkshake offered by Boloco. The latter has claimed that dropping the word Nutella from menus will lead to a huge expenditure and a loss of sales.
USPTO set to update Code to conform with ABA Norms
In a much-awaited move, the USPTO has finally announced its proposal to update its Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association. The proposed package imbibes most ABA provisions with minor or no revision and codifies professional obligations already applicable to legal practice. The rules also propose to do away with the annual practitioner maintenance fee, which would no doubt be a popular move.
Pirate Bay reaches for the Clouds
Followers of the continuing skirmishes between file-sharer and peer-to-peer websites and allegations of copyright infringement should know that Pirate Bay, the Swedish file-sharing site that has been the target of many a copyright-infringement action, has restructured its operations to use cloud computing and high-level data encryption.
WIPO moves closer to the Treaty for the Visually Impaired
On a bit of welcoming note, WIPO members have, over this week, inched a little bit closer to the much-awaited Treaty for the Visually Impaired, an international instrument facilitating access to copyrighted reading and educational material in special formats for visually impaired persons, through a set of exceptions and limitations to copyright. After three days of mostly informal discussions and a set of succeeding draft texts, the WIPO members finished on October 19 with a more agreeable draft, while identifying a few more areas where more work needs to be done.
US Universities’ Digitization move gets supported by Court
On a similar line of development, the US District Court of New York took the side of the universities running the cutting-edge HathiTrust project to establish a repository to archive and share the digitized collections of partner institutions, particularly for purposes of full-text searches, preservation and access for people with print disabilities. The universities won the copyright infringement suit brought against them, as the court permitted their actions under the fair use doctrine as per Section 107 of the US Copyright Act.
In IP we trust: Church approves of IP Rights
Yet another fascinating event is the recognition of IP rights by none other than the Archbishop Silvano M. Tomasi, who at the recent General Assemblies of the World Intellectual Property Organization in Geneva, opined in an interview that the church finds “human value” in IP and, as the latter protects and promotes innovation and creativity, it is good for humanity.
NFL Star trademarks Signature Prayer Move
(Image from here)
Nutella Maker issues Cease-and-Desist Notice
For those who swear by the heavenly Nutella, Ferrero Spa, the makers of Nutella and TicTac candies, has recently sent a cease-and-desist letter to a chain of burrito restaurants, objecting to the Nutella milkshake offered by Boloco. The latter has claimed that dropping the word Nutella from menus will lead to a huge expenditure and a loss of sales.
USPTO set to update Code to conform with ABA Norms
In a much-awaited move, the USPTO has finally announced its proposal to update its Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association. The proposed package imbibes most ABA provisions with minor or no revision and codifies professional obligations already applicable to legal practice. The rules also propose to do away with the annual practitioner maintenance fee, which would no doubt be a popular move.
Pirate Bay reaches for the Clouds
Followers of the continuing skirmishes between file-sharer and peer-to-peer websites and allegations of copyright infringement should know that Pirate Bay, the Swedish file-sharing site that has been the target of many a copyright-infringement action, has restructured its operations to use cloud computing and high-level data encryption.
WIPO moves closer to the Treaty for the Visually Impaired
On a bit of welcoming note, WIPO members have, over this week, inched a little bit closer to the much-awaited Treaty for the Visually Impaired, an international instrument facilitating access to copyrighted reading and educational material in special formats for visually impaired persons, through a set of exceptions and limitations to copyright. After three days of mostly informal discussions and a set of succeeding draft texts, the WIPO members finished on October 19 with a more agreeable draft, while identifying a few more areas where more work needs to be done.
US Universities’ Digitization move gets supported by Court
On a similar line of development, the US District Court of New York took the side of the universities running the cutting-edge HathiTrust project to establish a repository to archive and share the digitized collections of partner institutions, particularly for purposes of full-text searches, preservation and access for people with print disabilities. The universities won the copyright infringement suit brought against them, as the court permitted their actions under the fair use doctrine as per Section 107 of the US Copyright Act.
In IP we trust: Church approves of IP Rights
Yet another fascinating event is the recognition of IP rights by none other than the Archbishop Silvano M. Tomasi, who at the recent General Assemblies of the World Intellectual Property Organization in Geneva, opined in an interview that the church finds “human value” in IP and, as the latter protects and promotes innovation and creativity, it is good for humanity.
NFL Star trademarks Signature Prayer Move
(Image from here)
In the intersection of IP and religion, another new development has taken place, with the popular NFL quarterback Tim Tebow having won the trademark on his signature prayer move, commonly referred to as "Tebowing." Tebow has gone on record saying that he seeks to effectively prevent other people to capitalize financially on the gesture that he made famous and on his name.
ICANN and ANIC signs agreement to boost Internet in Africa
Across the world, the infrastructure development of communications and the internet in Africa is due to get a boost, with the ICANN and the Africa Network Information Center having recently signed an agreement pledging to work collaboratively to identify additional potential locations for the expansion of L-Root anycast instances (root servers) in Africa.
Philippines not happy with US Special 301 Report
The Special 301 Report (identifying countries that deny adequate and effective protection of IP rights) published by the US Trade Representative was once again criticized, this time by the IP authorities in Philippines, who alleged that the retention of the country in that report despite significant progress having been made in curbing piracy and protecting IP rights has resulted in low morale amongst the enforcers. This in turn has caused the total worth of seized counterfeit products by government anti-piracy agencies for the first nine months of the year to fall 18% to P 4.12 billion from P 5 billion a year ago.
Malaysia ready to unveil IP Valuation Model
On an interesting note, The Multimedia Development Corp in Malaysia is set to unveil the highly anticipated IP valuation model in December, 2012, which is being perceived as the first step in assisting financial institutions to refer to a specific methodology in valuing IP rights, with an ultimate goal of securing recognition of IP rights by financial institutions as a collateral asset.
That’s all for this week, folks. We’ll be gearing up through the next week to bring to you a whole new set of national and global developments next weekend.
ICANN and ANIC signs agreement to boost Internet in Africa
Across the world, the infrastructure development of communications and the internet in Africa is due to get a boost, with the ICANN and the Africa Network Information Center having recently signed an agreement pledging to work collaboratively to identify additional potential locations for the expansion of L-Root anycast instances (root servers) in Africa.
Philippines not happy with US Special 301 Report
The Special 301 Report (identifying countries that deny adequate and effective protection of IP rights) published by the US Trade Representative was once again criticized, this time by the IP authorities in Philippines, who alleged that the retention of the country in that report despite significant progress having been made in curbing piracy and protecting IP rights has resulted in low morale amongst the enforcers. This in turn has caused the total worth of seized counterfeit products by government anti-piracy agencies for the first nine months of the year to fall 18% to P 4.12 billion from P 5 billion a year ago.
Malaysia ready to unveil IP Valuation Model
On an interesting note, The Multimedia Development Corp in Malaysia is set to unveil the highly anticipated IP valuation model in December, 2012, which is being perceived as the first step in assisting financial institutions to refer to a specific methodology in valuing IP rights, with an ultimate goal of securing recognition of IP rights by financial institutions as a collateral asset.
That’s all for this week, folks. We’ll be gearing up through the next week to bring to you a whole new set of national and global developments next weekend.
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