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Posts Tagged: "India"

India’s Prius Judgment and Trans-Border Reputation of Trademarks

A trademark is accorded reputation through its prolonged use and the goodwill it holds in the market where it operates. A trademark is believed to have a reputation when the general public recognizes the product by its mark. The reputation of a well-known trademark knows no bounds, and therefore foreign trademarks with a reputation are accorded protection in India. This concept of trans-border reputation protection follows the principle of universality, which states that once the reputation of a trademark transcends the physical boundaries of the country in which it was registered and gains popularity in other countries as well, it is to be protected in all relevant jurisdictions. Thus, the trademark owner is entitled to protection under the doctrine of passing-off if it can prove that the reputation of its trademark transcended geographical borders by way of promotions, advertisements and media communications. 

India Amends Patent Rules and Reduces Fees by 80% for Educational Institutions

On September 21, 2021, India’s Department for Promotion of Industry and Internal Trade (DPIIT) under India’s Ministry of Commerce and Industry published amended Patents Rules, 2021, to amend the 2003 Patents Rules. The amendment now includes a new category, “eligible educational institutions,” which qualifies for the same reduced fees as natural persons, startups, and small entities. This means any “eligible educational institution” will pay 80% reduced fees for the entire patent filing and prosecution, thereby hopefully incentivizing those institutions to apply for more patents, and bringing India a step closer to becoming a global player in patent filings.

Parliamentary Committee Report Outlines Policy Changes to Improve Indian IP Regime

Despite India’s progress in many areas, from science to literature to technology, protection for intellectual property rights (IPR) is a topic that has come under scrutiny. The IP laws in India have remained vastly unchanged and unreviewed over the past few decades. Recently, however, the Parliamentary Standing Committee on Commerce (PSCC) decided to review IPRs in India. The Committee, led by Chairman Shri V. Vijayasai Reddy, was made up of 11 members of the Rajya Sabha (upper house) and 21 members from the Lok Sabha (lower house). On July 23, 2021, the PSCC presented a report to the Rajya Sabha titled Review of the Intellectual Property Rights Regime in India (the Report). In the Report, the Committee pointed out the “challenges in strengthening the country’s IPR regime, the related procedural and substantive constraints, legal aspects and other issues, such as low awareness of IPR, counterfeiting and piracy, IP financing, and IPRs in agriculture and pharmaceutical sector, etc.”

India Gives Birth to IP Division in Delhi High Court

In India, a similar administrative adjudicatory body to the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), called the Intellectual Property Appellate Board (IPAB), was constituted by a Gazette notification of the Central Government in the Ministry of Commerce and Industry on September 15, 2003…. However, the IPAB was eradicated by the Central Government of India by way of the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021, published in the Gazette of India on April 4, 2021…. To address the backlog and growing number of cases, the Delhi High Court, on the recommendations of a two-member judge committee, recently announced the creation of the Intellectual Property Division (IPD) in a press release titled “Creation Of Intellectual Property Division in the Delhi High Court.”

Who Owns Basmati Rice? India and Pakistan Battle for GI Rights

A decade-long legal battle over the fragrant, long-grain Basmati rice is heating up between neighboring countries, India and Pakistan. Both countries are attempting to claim exclusive ownership over Basmati in the lucrative European market, and the battle is now coming to a boil. Geographical Indications (GIs) establish intellectual property rights (IPRs) for products that originate from specific regions and attribute qualities, reputation or other characteristics linked to the geographic area. GIs are covered under the Paris Convention for the Protection of Industrial Property, and is also governed by the World Trade Organization’s (WTO’s) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Indian Vaccine Economics: IP Rights are Not the Real Villain in India’s COVID-19 Emergency

The horrific second wave of COVID-19 in India has compelled the government to introduce an expedited vaccination drive from May 1, 2021, where all citizens above the age of 18 (and not just priority groups) will be eligible to register. The program also came with the promise of an introduction to several new vaccines in the market. A majority of the states also decided to roll out the vaccine for free. Unfortunately, reports that stock had run out followed shortly in several states. States like Maharashtra and Delhi had to keep the drive on hold. Bengaluru also faced supply problems ahead of the drive. A popular proposition is that patent restrictions and exclusivity of “know-how” are a barrier to adequate production of vaccines.

India and South Africa’s COVID Vaccine Proposal to the WTO: Why Patent Waiver Must Be Considered Over Compulsory Licensing

While coronavirus spent the majority of 2020 wreaking havoc on earth, pharmaceutical companies have been busy at work trying to invent a vaccine to combat it. Several companies, such as Pfizer, Moderna and AstraZeneca, have competed neck and neck to be the first to deliver a cure to the world. Renowned pharmaceutical companies have been successful in developing the vaccine, which will be protected under the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS).

Curtain Call For Computer Related Inventions in India: An Analysis of the Ferid Allani Case

The precedent with respect to the patentability of Computer Related Inventions in India ranges from little to non-existent; but not for lack of trying. In December 2019, the High Court of Delhi in Ferid Allani v. Union of India (2009 SCC Online Del 11867) examined the rejection of a patent by the Indian Patent and Appeal Board (IPAB) to a Computer Related Invention (CRI).

Illegal Circulation of E-Newspapers Online and Through Messaging Apps: Implications for Copyright and Contractual Violations

On March 25, 2020, the Indian government declared lockdown throughout the country, and we could not have anticipated the number of issues across all sectors that would surface in such a short time. Copyright infringement through social media turned out to be one such issue. At a time when so many industries are facing losses both in terms of work and revenue, the newspaper industry in India has not been spared. The newspaper companies have lost a large number of subscribers to their physical newspapers due to fear of the spread of COVID-19. Recently, a national Indian daily newspaper published a news article stating that sharing PDF copies of an e-newspaper on messaging apps is illegal and that group admins and individuals can be held liable for unauthorized circulation.

AUTM Foundation, Apio Innovation Transfer, Local Practitioners Hold First-Ever U.S.-India IPR Education Initiative

In 2019, the first-ever United States-India collaboration on intellectual property rights (IPR) education was launched. Program participants included entrepreneurs, students, and academic faculty. The initiative brought together multiple governments and agencies for a blending of ideas and priorities that elevated the experience for participants and advanced U.S.-India relations. The outcome was a sense of U.S.-India ‘team’ in collaboration to advance the cause of intellectual property education in India. The United States Consulate General Kolkata, India funded the creation of an IPR education initiative that included a series of webinars and a week-long series of summer workshops presented as the first United States-India Symposium on Intellectual Property Rights. Workshops focused on the value, importance, and use of IPR as a driver of economic success. The program was promoted within the practitioner, academic, and business community through email, Facebook, LinkedIn, and other social media including distribution channels of the local partners.

The Problem of IPR Infringement in India’s Burgeoning Startup Ecosystem

For a country of 1.3 billion people who pride themselves on ingenuity, entrepreneurial spirit, and innovative thinking, a significant percentage of the Indian population is woefully unaware of trademark infringement and intellectual property theft. At the beginning of 2010, the Indian e-commerce scene was still in its nascent stage but within the next five years, the growth was unprecedented. This was a result of the rapid internet access proliferation combined with the telecom boom. The budget phone segment and the affordable data tariff pushed the tier-II and tier-III cities into the fore. Just to put things in perspective, according to recent studies, there are close to 600 million phone users in India with over 300 million smartphone owners, which is just 20 million shy of the population of the United States (as per 2018 records). With a sizeable portion of the population heavily consuming online media and transacting digitally, there is a huge market for service providers and aggregators. Leveraging the demand for such service providers, startups from all over the country have mushroomed in a frenzy. Under the current government, initiatives like “Make In India” and “Startup India” have further bolstered the growth of these SMEs.

Delhi High Court Rules Architect’s Moral Rights Offer No Remedy for Demolition of Building He Designed

Does an architect, as author of an artistic work in the form of a building covered by copyright, have a right to restrain the owner of the land to demolish the building and construct another in its place? The Delhi High Court of India recently answered this firmly in the negative in the case of Raj Rewal v. Union Of India and Ors. The Delhi Court’s judgment gave preference to requirements of urban planning over the moral rights of an architect. It held that the owner of the building has full power to dispose of or destroy it. The judgment is significant in its contribution to the jurisprudence on the scope and limitations of “moral rights” in Indian Copyright Law.

Delhi High Court Ruling Clarifies Requirements for Export Under India’s Bolar Exemption

In 2002, India’s Patent Act 1970 [“the Act”] was amended to include Section 107A. This provision says that any act of making, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law in India, or in a country other than India, shall not be considered as infringement of patent rights.  This provision also outlines India’s Bolar exemption. As per the “Bolar doctrine,” which arose out of the U.S. case of Roche Products v. Bolar Pharmaceuticals (1984), it is permissible for third parties to carry out research and development on patented products (especially drugs) for the purposes of submitting information as required by regulatory authorities. The purpose of this provision is to ensure that third parties can conduct research and development and obtain prior regulatory approvals, enabling them to launch the patented products on the market as soon as the patent term expires. This ensures that patent holders do not get a de facto monopoly on their inventions after expiration of their patent term. Further, it ensures that the public has access to cheaper generic versions of the drugs immediately after expiration of the patent term. In India, the scope of this provision has been controversial for some time now, leading to a slew of litigation between major international pharmaceutical companies and Indian generic manufacturers claiming the Bolar exemption. In the recent combined decision in the matters of Bayer Corporation v. Union of India & Ors. LPA No. 359/2017 and Bayer Intellectual Property GMBH & Anr. v. Alembic Pharmaceuticals Ltd. RFA(OS)(COMM) 6/2017 (March 22, 2019), the Division Bench of the Delhi High Court laid these controversies to rest by deciding the question of whether export is permissible under this provision.

Pre-Institution Mediation Under the Indian Commercial Courts Act: A Strategic Advantage

A 2018 amendment to the Indian Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (“Commercial Courts Act”) makes it mandatory for a party to exhaust the remedy of mediation before initiating court proceedings under the Commercial Courts Act, with the limited exception of cases where urgent relief is being sought. Patent infringement disputes, being disputes of a commercial nature, are governed by the Commercial Courts Act and, therefore, the mandatory pre-institution mediation provision applies to such disputes. The time bound mediation procedure envisaged in this provision allows a patentee to not only bring a possible infringer to the negotiation table under the threat of future litigation but also allow patentees to resolve disputes in a timely manner by avoiding long-drawn litigation in Indian courts. Patentees can now consider a different strategy when considering steps for enforcement of patent rights in India in view of the possible advantages of such mediation proceedings discussed in this article.

The Future of Patents on Genetically Modified Organisms in India

Earlier this year, the Supreme Court of India set aside an order of the division bench of the Delhi High Court that revoked a patent granted on genetically modified cotton, holding that the single bench of the High Court should assess the patentability of the invention after hearing arguments from both sides. The Indian Patent Office granted Patent No. 214436 to Monsanto Technology LLP on genetically modified cotton. In 2016, Monsanto filed a suit before the single judge bench of the Delhi High Court [Civil Suit (Comm) No. 132 of 2016] alleging infringement by Nuziveedu Seeds Ltd., which responded with a counterclaim for invalidity of the patent, among other claims. The single judge ruled in favor of the petitioner and granted an injunction. On appeal, the division bench of the Delhi High Court vacated the injunction and invalidated the patent. That decision was set aside by the Supreme Court, which held that the matter at hand was the injunction and that patentability issues must be dealt with separately by the High Court. This suggests a changing mindset by the Indian courts regarding patentability of genetically modified living organisms. India may now be set to join the league of various other nations that respect biotechnological inventions.