Ms. PRATHIBA M. SINGH

Senior Advocate

prathiba@pmsingh.in

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.