WE AIM TO INCREASE TRANSPARENCY IN INDIAN INTELLECTUAL PROPERTY POLICY/INSTITUTIONS.
WE ALSO STAND FOR FAIR, OBJECTIVE AND ACCURATE REPORTING/REVIEW OF INTELLECTUAL PROPERTY AND INNOVATION POLICY NEWS FROM INDIA.
Our readers will remember this post by Suchita which apart from a highly memorable picture from Shrek, also dealt with the important issue of profit margins in terms of pharmaceutical manufacture. And now, SpicyIP is thrilled to report to its readers that there is finally a down to earth, honest admission by an Indian entrepreneur on the state of Global health care, and India's contribution or lack thereof to it.
Ms. Kiran Mazumdar Shaw, known to most Indians as a formidable and admirable entrepreneur has, in this article, written about issues that concern us all- but few are willing to address.
The article revolves around the current health policy across the globe and India's particular susceptibility to be slotted into the category of a State with a particularly "ineffectual" health policy.
Given this background, Ms. Mazumdar Shaw in her short punchy piece has put in her two cents. Stressing on the need to be more of a leader, than an imitator, this article seems to take the initiative in finding the much desired "middle path" and balancing competing interests of innovation with the costs spent in drug discovery, experimentation and so forth.
The article does not provide a solution- that, of course, would have been a near impossibility given that most companies engaged in pharmaceutical manufature have vastly differing philosophies. However, the piece does stress the need to create the concept of "affordable innovation" to help aid the global health crises, and leaves the modalities of the same open ended. Which is much food for thought.
Two key IP positions are open at one of India's leading law firms, details of which are below.
If interested in applying, please write to spicyipjob[at]gmail.com with your CV.
Location: Pune (1 position) and Gurgaon (1 position)
Roles and Responsibilities:
Prosecution and advisory work related to trademarks, copyrights and designs. IPR litigation experience would be an advantage. Should be able to handle IPR work independently. Likely to also involve IP transactional and corporate work.
Required Qualification:
i) 3 - 5 years of relevant experience in IP prosecution. ii) Degree in law
Salary: Commensurate with the best in the industry
Among the recent cases that have been decided in relation to .IN Domain Name Dispute Resolution Policy (INDRP), the following one has seen Bloomberg Finance L.P., (BF) a United States-based company, winning the domain name Bloomberg.net.in (full judgment available here). BF had filed a complaint with the .In Registry, National Exchange of India (NIXI), against Mr. Kanhan Vijay, a resident of Nagpur, India and claimed to be the registered proprietor of the services mark BLOOMBERG in India and its variants in over 95 countries of the world. It also claimed that its substantial advertising and promotion of its Marks, its Family of Marks, Domain Names and Trade Name (i.e. Bloomberg) have created significant goodwill and widespread consumer recognition around the world, including in India, of BF being a leading source of financial information and analysis. Mention was also made of BF’s global reach through a variety of international media outlets, such as Bloomberg Television, Bloomberg Radio programming, Bloomberg News, Bloomberg Press and the website at . BF’s headquarters are situated in New York, with subsidiaries running offices at places like Mumbai, Bangalore and New Delhi.
Mr. Kanhan Vijay (Respondent), on the other hand, was in charge of a Nagpur-based registered partnership firm ‘Bloomberg Computers’, dealing in computer hardware and networking equipment. He submitted that his firm was not engaged in business on the internet and had never used its website (having the aforesaid domain name) for marketing purposes, but only the domain name had been used for mail as well as for helpdesk services. He also proclaimed that nowhere in the website did the firm claim to be a part of BF.
Following the lodging of the complaint, NIXI verified that the formal requirements of INDRP and the Rules of Procedure (Rules) had been satisfied and as per Paragraphs 2(a) and 4(a) of the Rules, the Respondent was formally notified and Mr. Amarjit Singh was appointed as a Sole Arbitrator for adjudicating upon the dispute in accordance with The Arbitration and Conciliation Act, 1996 and the rules framed there under. After both the parties had submitted to the arbitration proceedings prescribed in the Rules, the arbitrator decided that the matter was not one wherein the determination could not be made on the basis of material on record and without in-person hearing, as per Paragraph 12 of the Rules and Section 19(3) of the 1996 Act.
In order to get the remedies (prescribed in Paragraph 10 of INDRP) of cancellation or transfer of the domain name registration to itself, BF was required to prove the following, as per Paragraph 4 of INDRP:
(a) That the domain names were identical or confusingly similar to a name, trademark or service mark in which BF had rights; and
(b) That the Respondent had no rights or legitimate interests in respect of the domain names; and
(c) That the domain names had been registered and were being used in bad faith.
With regard to the identical/confusingly similar aspect, BF was able to prove its claim. It was submitted that the domain name “Bloomberg.net.in” was identical to BF’s registered trade mark "BLOOMBERG" and was entirely comprised of the same. The decision given in ITC Limited Vs. Travel India, Case No.L-2/5/R4, April 15, 2008 was relied upon in this context. BF contended that there was strong likelihood of internet-users mistaking Respondent’s website being endorsed by BF. Furthermore, the Respondent's website welcomed visitors with the statement: "welcome to www.bloomberg.net.in" and also indicated that it was "powered by BLOOMBERG" but otherwise offered no goods or services. BF argued that the said reference to Bloomberg indicated Respondent’s wish to deceive visitors to the website into believing that the website was affiliated with or managed by BF or enjoyed the benefit of BF’s news and information resources. There also existed strong likelihood/possibility of internet users looking for BF’s website and getting diverted to the Respondent's website instead, which established the chances of confusion and deception.
The Respondent countered saying that the said complaint had been initiated with misunderstanding, with the Respondent having been unnecessarily dragged into the proceedings. He argued that BF’s contention regarding the similarity in the name and apprehension regarding the diversion of clients did not have any substance whatsoever and that not even a single incident had been quoted by BF to substantiate said contention. Hence the relief cannot be granted merely on the basis of vague accusations.
BF asserted of it holding registration for "Bloomberg.com" since 1993 and other GTLDS such as Bloomberg.net, Bloomberg.br , Bloomberg.org and Bloomberg.info. The Respondent, on the other hand, registered impugned domain name March 23, 2007, but had failed to provide any evidence of using the mark "Bloomberg" as a service mark in the past for providing the services for computers hardware and software since 2002 as had been claimed by him in his response.
Having compared the registered trademarks of BF and the disputed domain name, the Arbitration Panel held that the latter was indeed identical to the earlier registered trade mark and domain names of BF.
Next comes the turn of the requirement of proving that the Respondent did not have any right/legitimate interest regarding the domain name. To do the same, BF argued that it had neither licensed nor otherwise permitted the Respondent to use BF’s mark or any of the family of marks or any domain name incorporating those marks. In fact, the Respondent had failed to reply to the demand letter sent by BF. It was also contended that to the best of BF’s knowledge, the Respondent did not carry on any commercial or non-commercial venture/enterprises under the name and style of "Bloomberg" and hence could not have any legitimate reasons for adopting the "Bloomberg" as part of disputed domain name. Nor had the Respondent made any use of the domain name in connection with the bona fide offering of goods or services or for any legitimate non-commercial or fair use, but merely to support an essentially dormant website.
The Respondent, of course, denied most of these allegations. He argued that his highly reputed firm had been running the said business since 2002 and had business relationship with reputed names, INTEL, MAX, HPCL etc. as well as reputed clients like the Nagpur University, Western Coalfields Limited, Priyadarshini College of Engineering, Lokmanya Tilak College of Engineering and the like. He further submitted that he never intended to deceive the user to divert the traffic and had been using the domain in a bona fide manner and not in bad faith and nor had any instance of such diversion been cited by BF to prove to the contrary. It was also argued that the Respondent would suffer great loss and injury if BF is given the rights to the domain, since the help desk and mails were being administered by his firm from the domain. The long standing use without any interference of the domain name, according to him, resulted into accruing of rights in favour of himself and also legitimate exceptions. He went on to say that the mere fact of BF’s domain name being registered with various countries did not give BF a monopolistic right or the exclusive ownership for the name that the Respondent had been allowed to use so far at relevant time without any objection.
However, the Panel held that the Respondent's registration of the disputed domain name took place much later to the date of domain name registration by BF under .in CCTLD, thereby allowing BF priority in adoption, use and registration of domain name. BF was also the registered proprietor of the trademark BLOOMBERG from the dates prior to the registration of disputed domain name by the Respondent. The Respondent had failed to offer any valid explanation regarding how he came across the term Bloomberg and accepted it as part of his trade name, which emphasized that such adoption might have been in bad faith. Nor did the Respondent appear to have any legitimate interest in the disputed domain name (since Respondent’s firm did not perform any business on the internet) –hence aforesaid registration by him might have been in bad faith to squat on the Register.
Regarding the third and final requirement of proving bad faith in registration and use, BF submitted that "Bloomberg" having a strong reputation and high profile presence in the financial sector and being the subject of substantial consumer recognition and goodwill, public invariably associated the use and application of the word "Bloomberg" with BF’s corporate identity, business and various financial services. It further argued that the registration of a domain name with actual knowledge of trademark holder's right in a mark consisted of a strong evidence of such registration having taken place in bad faith. Non-use and passive holding of the website by the respondent were additional evidence of bad faith registration. In this context, the decision of HSBC Holding plc. Vs. Ooman Esmail Zadeh, Case No.L-2/5/RZ (March 24, 2007) was relied upon by BF. Also, in the light of the international fame and wide use of BF’s mark "BLOOMBERG", BF believed that the Respondent knew of and knowingly exploited said mark and its substantial accompanying goodwill. The Respondent, however, did express his readiness to add in his website the following words in bold manner as "Bloomberg Computers, Nagpur" and that it is not part of BF, but BF refused to recognize relevance of such action regarding the proceedings at hand, since the dispute was with regard to the domain and not with regard to Respondent’s website.
The Panel opined that while the Respondent had not registered the domain name primarily for the purposes of selling, recruiting or transferring the domain name registration to BF or its competitors for valuable consideration (especially since Respondent had incurred out of pocket costs related to the domain name), nonetheless, the owner of the trademark/service mark had been prevented as a result from reflecting the mark in a corresponding domain name. Also, by using the domain name the Respondent had intentionally created a likelihood of confusion with BF’s mark as to the source, sponsorship, affiliation or endorsement of the website. The bad faith element was also established from the fact that the Respondent had registered the disputed domain name much later to BF’s registration of the domain names even under .in CCTLD such as Bloomberg.co.in, Bloomberg.in, Bloomberg.gen.in, Bloombergnews.co.in etc., without doing the necessary due diligence beforehand.
Therefore, in the light of the aforementioned contentions and the Panel’s response thereto, the Panel finally directed transfer of the disputed domain name to BF, but did not award any cost.
The Panel, while reaching this decision, had no doubt kept in mind the special status accorded to well-known trade marks as per Section 2(1)(zg) of the Trade Marks Act, 1999, irrespective of whether the allegedly infringing mark is used in relation to different goods or services than the original mark. The said provision is as follows:
"well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
While this aforementioned decision in relation to the arbitration process prescribed by the INDRP appears to be at least prima facie reasonable, without attracting many a controversy, nonetheless all decisions resulting from said arbitration in the past cannot be allocated to the said uncontroversial category. Several of them have in fact involved certain features that are fascinating to say the least and worthy of further examination. These include granting trademark rights to terms such as “hotels”, “jobs”, “mines” etc., holding that merits and scope of .IN CCTLD's INDRP (.IN Dispute Resolution Policy) differ considerably from the UDRP (Uniform Dispute Resolution Policy) on which WIPO decisions are based and hence cases in relation to the former are of scant relevance while deciding a dispute pertaining to the latter (despite similarity of the disputes concerned) as well as confiscation of domain names by the registry. Such decisions will be soon highlighted in future posts by the Spicy IP team.
Sai Deepak did an excellent post capturing the essence of a recent judgment by Justice Muralidhar (of the Roche vs Cipla fame). While the judgment got it right in several places, and will come as music to the ears of patentees, who've so far been at the receiving end of the Indian judiciary, it loses out on a fabulous opportunity to clarify the scope of section 107A(b), the section dealing with parallel imports.
As many of you may recollect, this section triggered some heated discussion on this blog. And thanks to the fireworks, both Mrinalini (someone we miss dearly miss on this blog) and me were inspired to do a full length piece on this section. We ended being a bit prescriptive--some may say, too prescriptive, as we went on to suggest an amendment to section 107 that almost ran into two pages! The bard for whom brevity was the soul of wit would have surely turned in his grave.
Anyway, let me take you through our piece to highlight the various interpretative problems inherent in section 107A(b). Hopefully, this background would help one in appreciating how the Delhi High Court failed to used this occasion to clarify the scope of section 107A and to set right its interpretative potholes.
"Section 107A(b), in its current form, exempts from infringement an “importation of patented products by any person from a person who is duly authorized under the law to produce and sell or distribute the product”.
A literal reading of section 107A(b) suggests that even the “first sale” need not be authorized by the patentee.
Consider our earlier hypothetical involving Tarceva, an anticancer drug [patented by Roche], which is under litigation before the Delhi High Court. Let us ....assume that that Cipla is restrained (at the final stage) by the Delhi High court and cannot sell [Roche's patented drug] in India. Cipla now asks its Bangladeshi partner, Beximco Pharmaceuticals Ltd., to manufacture the drug in Bangladesh.
It then imports the drug into India. It bears noting that Bangladesh is a least developed country (LDC) and therefore has time till 2016 to implement product patents in pharmaceuticals. Consequently, any manufacture, use, distribution and sale of the drug within Bangladesh does not amount to a patent infringement in Bangladesh.
Under the old regime (prior to 2005), which required any import to be “duly authorized by the patentee”, Cipla could not legally import Tarceva into India if the seller (in Bangladesh) was not authorized by Roche to sell or distribute Tarceva in Bangladesh. Under the new provision however, one could argue that Cipla can import Tarceva even without the permission of Roche. It has to only comply with the condition that the exporter of such patented product (eg. Beximco) be “duly authorised" under the law [Bangladeshi law] to produce and sell or distribute the product”.
We then go on to highlight how such a reading may detract from the exclusive rights of a patentee under section 48 of the Indian Patents Act, as also risk contravening the TRIPS mandate to provide certain minimum rights to a patentee. Given these concerns, we suggest as below:
.... in order to harmoniously construe section 107A(b) with section 48, the term “patented product” could be interpreted to mean a product patented in both the exporting country (Bangladesh in our hypothetical) and the importing country (India).
Consequently, in the context of our hypothetical involving Roche and Cipla, the section would exclude any “generic” versions of Tarceva manufactured in Bangladesh, where there is no patent. In other words, Cipla cannot avail of section 107A(b) to import generic versions of Tarceva manufactured by Beximco.
This interpretation does not detract unduly from the patentee’s exclusive rights under section 48, complies with TRIPS and fits well within the overall framework of the section. Also, this interpretation furthers Parliamentary intent i.e. to permits international exhaustion and the buying of low priced patented goods, once the patentee has already sold them anywhere else in the world.
In the light of the above, we argue that a judge is likely to interpret the term “patented products” in section 107A(b) to mean products patented in the “exporting country”.
However, one point that we did not elaborate upon in our article (and one which Sai bought to my attention) is whether or not the patent could be held by separate entities in the two countries. In other words, assume that Tarceva is patented by Roche in India and by a domestic Chinese company (such as Wuxi Apptec) in China. Let us also assume that since China follows a "relative" novelty test, it was able to grant a patent in favour of Wux , despite Roche's patent in most other countries.
The facts of Strix Limited v. Maharaja Appliances comes close to such a scenario:
i) The plaintiff, Strix Limited has an Indian patent covering a kettle with two sensors to prevent overhearting. ii) The defendant initially purchased kettles from the plaintiff. However, it later stopped its purchases from the plaintiff and began importing similar kettles from a supplier in China. iii) The defendant argues that there is a separate Chinese patent covering such kettles in the name of the Chinese supplier. v) The plaintiff counters by arguing that the defendant has no offered no proof of the suppliers name or its patent. On the contrary, the plaintiff alleges that it owns a valid patent in China and that it has already taken action and restrained certain Chinese infringers.
Justice Muralidhar held in favour of the plaintiff as below:
"The Plaintiff cannot be made to wait indefinitely for an injunction just because the Defendant is awaiting information from the Chinese supplier. As long as the Defendant is not able to produce any information about the patent held by the Chinese supplier, the court will proceed on the footing that there is no such valid patent held by the Chinese supplier.
Does the above statement mean that Justice Muralidhar would have absolved the defendants of infringement, had they adduced proof of a separate Chinese patent covering the kettle? Unfortunately, the judge is quite cryptic on this count and misses a great opportunity to tease out the interpretative problems inherent in section 107A(b).
Conclusion
Even assuming the judge implicitly endorsed the interpretation offered by our paper (that "patented product" in section 107A meant a product that was covered by patents in both the country of export and the country of import), he still fails to answer the following issue: If the patent in China is held by a person who does not derive title from the Indian patentee (Strix in our case), the patent right has not really been "exhausted" by a first sale in China and Strix has not benefited from such sale. Perhaps the best option then is to interpret "patented product" as a product patented by the same entity (or someone deriving title from such entity) in both the countries? Would such an interpretation best reflect what Parliament intended?
Unfortunately, there is no clarity for the moment...and the Delhi High Court judgment fails to illumine on this count.
An interesting article in IP Watch caught the attention of the SpicyIP team this week. In keeping with our endeavour to increase transparency and discussion on intellectual property related topics, this article in IP Watch has provided us with ample information.
The International Union for the Protection of New Varieties of Plants this month to grant two advocacy groups, the "observer status" as has been provided for under the Union for the Protection of New Varieties of Plants (UPOV) Convention. What has raised considerable concern is the two fold level at which this decision can be termed problematic:
a. This indicates an increasing and disturbing trend against the participation of Advocacy Groups and those affected by the decisions taken by the UPOV.
b. This also is problematic in terms of the framework within which the Union makes its decisions. "The purpose of the UPOV Convention, according to its website, is to protect new varieties of plants via intellectual property rights. Its rules on observer status say that organisational statutes or treaties are to be used to determine such competence, but does not provide a specific list of desired criteria."
Furthermore, it is interesting to note that not all the records of the consultative committee that has been granted the power to decide who can be conferred with the "observer status" are not publicly available.
At best, this position of the UPOV can be called questionable. The two groups denied observer status in this case, Association of Plant Breeding for the Benefit of Society (APREBES) and the European Farmers Coordination (now known as the European Coordination of Via Campesina, or ECVC), were deemed not "competent" in the areas of direct relevance as required by the UPOV. And other questionable decisions include the fact that not a single group from the developing world is an "observer".
In terms of the general scheme of decision and policy making, it is understandable that administratively there must be certain checks in place to ensure a level of competence and expertise. However, where the criteria for such competence is not clearly defined, and participation- diversified, representative or otherwise- is seemingly sidelined, this blogger wonders if the decisions taken by the UPOV on important topics such as breeders' rights, seed issues and plant protection will be practicable without any input from those certain to be affected.
“Don’t Be Evil” apparently is the unofficial slogan of Google; though, it isn’t clear if this Hammurabic finger-wagging precept is Google’s pearl of wisdom to the rest of the world or if it is directed inwards to monitor itself... (by the way, those who may be interested in tracing the origins of the expression “wagging the finger”, check this out). Anyways, most IP aficionados would be aware of the raging controversy surrounding the Google Books Settlement; for others, here’s a site which gives a bird’s eye view of the details and updates pertaining to the Settlement.
The Settlement is an agreement reached between Google, Authors Guild (AG) and the Association of American Publishers (AAP) in the Southern District Court of New York in the US after a class action lawsuit was filed by AG and the AAP in 2005. The suit alleged copyright infringement by Google which sought to digitize copyrighted works for commercial use under its Library Project. Subsequently, another suit for injunctive relief was filed by the AAP in 2005.
Last October, Google signed the Settlement with the Author’s Guild for $125 million of which $34.4 million was earmarked for funding the setting up of Book Rights Registry (BRR), a copyright society which would administer the distribution of profits made by Google to right owners. The site hyperlinked in the first para of this post is maintained by Google to enable authors to submit their claims under the Settlement. Under this Settlement, right owners would receive a one-time payment of $60 per full book, $5-15 for partial works, in addition to 63% of revenues earned from e-commerce and advertising.
This was the earlier version of the Settlement which drew flak from across the board cutting boundaries, with prominent voices from China and Germany. An alliance, called the Open Book Alliance (OBA), was formed by interest groups to counter, what they call, “a scheme to monopolize access, distribution and pricing the largest digital database of books in the world”. Among the other things that the OBA demanded, it proposed a revision to the Settlement incorporating the following requirements ("baseline requirements"):
1. The settlement must not grant Google an exclusive set of rights (de facto or otherwise) or result in any one entity gaining control over access to and distribution of the world’s largest digital database of books. 2. Authors and other rights holders must retain meaningful rights and the ability to determine the use of their works that have been scanned by Google. 3. The settlement must result in the creation of a true digital library that grants all researchers and users, commercial and non-commercial, full access that guarantees the ability to innovate on the knowledge it contains. 4. All class members must be treated equitably. 5. The settlement cannot provide for competition by making others engage in future litigation. 6. Congress must retain the exclusive authority granted by the U.S. Constitution to set copyright policy. 7. All rights holders impacted by the settlement must have a meaningful ability to receive notice, understand its terms and opt-out. 8. The parties that negotiated the settlement must live under the terms to which they seek to bind others, rather than their own separately negotiated arrangements.
Following this, Google released the Revised Settlement Agreement on November 9th which was filed before the Court last Friday, the 13th.
The Indian Government, through the Ministry of Commerce and Industry, finally expressed its concerns on the Settlement to United States Trade Representative (USTR) team led by Ron Kirk. India’s concerns stem from the fact that the Settlement under the earlier version was applicable to any person who has a US copyright interest. Also, what this Settlement bodes for vernacular authors and publishers is something which must be of critical concern to the Indian government.
Though I haven’t read the Revised Settlement (which runs into a good 170 pages...which still is light reading compared to the famed Keshavananda Bharati judgment), if news reports are to be believed, the Settlement in its new avatar applies only to books published in English-speaking countries such as the US, UK and Australia (by English-speaking countries, does the Settlement refer only to those countries where English is the native tongue?)
Apparently, concerns of competitors over sale of the same books that are digitized by Google, and sale of books whose copyright holder couldn’t be determined (“orphan books”) too have been addressed in the new Settlement.
We look forward to receiving comments from our readers on this issue.
Come Monday, 16 November, 2009, ICANN's internationalised domain names (IDNs) will go live. Touted as the "biggest technical change to the Internet ever", there is still some cloud over whether TM ownerswho have registered domain names in non-IDN, i.e., Latin/Roman characters, will be given the first right of refusal when it comes to registering in other scripts. (ICANN's been in the news for other things as well - read Prashant's post some days ago on domain tasting)
Readers who've been around long enough may recall a post we'd done over two years ago on the National Internet Exchange of India's (NIXI) announcement of the launch of IDNs in about half a dozen languages. (NIXI -- a government agency that operates the official .IN registry and also serves as a meeting point of Internet Service Providers (ISPs) in India.)
How is this announcement different from what happened two years ago? Until now, the address endings for all internet addresses could only be in Latin characters. This change will introduce approximately 100,000 characters from multiple languages which can be used for web address endings. This will also make it the first time that entire internet addresses can contain non-Latin characters.
This is a Fast Track Process restricted to country code Top Level Domains (ccTLDs) which will be accessible only to nations and territories. These entities are eligible to apply for extensions based on their name, comprising of characters from national languages. Among the scripts included is Devanagari: so, we may soon see websites with endings like .इंडिया , .à¤ारत, .हिंदुस्तान and so on, depending on what the authorities agree to zoom in on.
Time for India to get its act together
Business Standard has an interesting op-ed on this today, which I refer to tangentially. For long, the standard argument of non-native English users about the Internet has been its linguistic limitations. ICANN has flipped this around completely -- from what I understand, no knowledge of Latin characters is required to key in a website address. Website content has already long been available in non-Latin languages. Gmail is available in a bunch of Indian languages, which I use often, and enjoy thoroughly. You already get really cheap keyboard skins on the market which allow users to slip on an alternate keyboard on the standard Qwerty plate -- are we reaching beyond English, finally?
The IPO's e-Patrika As an endnote, and to tie the IP angle in -- a recent visit to the IPO website showed up this: the fifth edition (but first electronic version?) of the IPO's in-house magazine, the Boudhhik Sampada Sagar, an ePatrika (download link).
The 28-page long ePatrika - the first I have seen online, but do tell if earlier versions have been made available online previously - is entirely in Hindi, and comes, ironically enough, from the Mumbai office of the IPO. (The politics of Hindi is an entirely different story, even if you're not a Mumbaikar, and I shan't get into it. But do read Rajeev Dhawan's excellent op-ed in the Express today).
In re ICANN's Fast Track Process for IDNs for ccTLDs, India's enthusiasm to introduce dual languages everywhere, and the ePatrika, will we see this next?: बौद्धिकसम्पदाविà¤ाग.à¤ारत/
Meanwhile, if you want to know more about the creative aspect of the folks at the IPO, do give this a read. Nuggets include 'the vanishing languages of this world'; the history of cricket in India; tips for succeeding in an interview; is Mumbai safe?; profiles of Baba Amte and Dr Kalam. I haven't had time to read it through since chancing upon it earlier today. You must tell me what else you discover!
India will be functioning as an International Searching Authority (ISA) by June 2010,according to the Intellectual Property Office (IPO). Several may heave a sigh of relief, but it may also be time for the IPO to do some basic operations research and analysis to see if things are going as planned.
The news, reported by the IPO in a post on the recent visit of Dr Francis Gurry, the Director General of the World Intellectual Property Organisation (WIPO) to the New Delhi branch of the IPO, may come as manna to patent practitioners. Readers who have been tracking IPO developments will know that India has been sitting on the ISA status for nearly two years now (see this Jan 08 post), and practitioners are getting increasingly restless at the delay in executing this plan.
However, and without attempting a full-blown analysis of the ground-situation at the IPO, I throw open some basic questions surrounding the "operationalising" of India's ISA status:
1. Fundamentally, are there enough officials to keep the ISA functioning, in addition to tackling the normal administrative duties of the IPO? I strongly suspect this may not be the case -- and if the self-imposed deadline of June 2010 is to be met, this may mean a mass recruitment of officials in the months to come. At present, the vacancy announcements section lists only posts in the Trademarks Registry.
2. Next, but less importantly, does the IPO have the physical and electronic infrastructure in place to tackle the demands of an ISA? I recall news of damage to files and records of the Mumbai IPO due to fire -- a repeat of an incident like this at any of the offices would be unpardonable, particularly if there is no digitised backup available. From what I understand, this project is still incomplete.
3. Similarly, are the online services, as they stand today, sufficient to pull this ISA project through? If any quality work is to be done in its capacity as an ISA, the IPO absolutely needs to beef up its online services, instead of allowing a generation of technology to come and go before it wakes up to the possibilities of the internet.
I may sound harsh in commenting thus, but as one uses and works with Indian and international governmental-end IP service delivery systems, the qualitative differences are stark. This is regardless of the service offered - eFiling, Application Status, Public Search, or Interactive Guidance. I am quite sure that the IPO is aware of the problems with all of these systems (e.g., jurisdictional limitations in eFiling patent applications; discordant data in application status; temperamental interactive guidance; and so on). It is perhaps even attempting to address these issues. Nevertheless, a quick Quality of Service and Quality of Experience would be incredibly enlightening to give the IPO some pointers in how things may potentially improve.
If India wants to be a competitive, and competent ISA, it will need to introspect and carefully examine these issues before taking the plunge.
Notwithstanding this, it would 'feel good' to see India's ISA project take off by June 2010. There is no ISA Commonwealth Games to look out for, but the IPO will have beaten the Delhi Government in its race against time.
Outlook in its last week edition carried a heart-rendering article on how so many Indian music composers and lyricists are living in near penury despite having several hits to their credit. The ultimate irony, as pointed out by the article, is the fact that these composers and lyricists have to take permission from the music companies to perform their own music.
The reason for this sorry state of affairs is simple, most music companies insist that the artists 'assign' all rights to the music companies for a single, one time renumeration with no say in future earnings. Since all assignments deeds are required by statute to be in writing it is not like these artists do not know what they are getting into. The real problem over here is most likely the weak bargaining capacity of the artist vis-a-vis the music company. As an artist becomes more popular his bargaining power vis-a-vis the music company increases and the terms of the assignment deed will ultimately balance out. For example A.R. Rahman in 2009 definitely has much more bargaining power than he would have 15 years ago. Unfortunately not every artist reaches the stature of A.R Rahman.
Should music composers and lyricists be left to the mercy of the market forces OR is it time for the law to ensure some modicum of justice to those not capable of bargaining from a position of strength? Countries like France and Germany offer several interesting lessons on how to address this imbalance in bargaining positions.
The first solution is rather simple and involves collective bargaining by a society of artists of performers. Such societies will provide artists and performers with standard form contracts that protect their rights in the face of any unreasonable demands from the producers or music companies. Given the collective bargaining power of such societies such contracts will in all probability be more equitable than any contract that an artist may try to enter into on his own. There however may be freelance artists or performers who may not be a part of a collective bargaining society. These freelance artists or performers are protected by some truly revolutionary clauses in German copyright law. (Click here for an interesting article on the German law)
The second solution provided by the aforementioned revolutionary clauses in German copyright law can be found in the relatively recent 2002 legislation titled German Copyright Contract law. German law provides for atleast two provisions: (i) an equitable renumeration provision & (ii) a 'best -seller provision'.
(i)The equitable renumeration provision starts of with stating the obvious i.e. the artist is entitled to an equitable renumeration contractually agreed upon. However if in case the renumeration agreed upon is not equitable the German statute requires the negotiations to be handled through mediation. For its part equitable renumeration is determined according to the prevalent fair business practices depending on the length, timing as well as all other circumstances. (ii)The second revolutionary provision is the 'best-seller' provision. This provision provides the author/artist with the right to demand an equitable share of the profits if in case these profits are grossly disproportionate to the initial renumeration made to the author. Such a provision is not all that alien to the Indian Copyright Act. Section 53A of the Copyright Act provides for a statutory renumeration right to the artist or his heirs in cases of resale of certain works.
The above discussed provisions of German Law are revolutionary for the simple reason that is in a way these clauses run contrary to the fundamental principle of a free market economy - the freedom to contract. However the same requirements of social justice that drive minimum wages legislation also justify the presence of similar clauses in copyright law.
The judgment of the Delhi High Court in Strix Limited v. Maharaja Appliances, is not only written lucidly but also clarifies elegantly, certain contentious provisions of the Patents Act, 1970. The facts of the case are thus:
1. Strix Ltd., the Plaintiff, filed a suit for infringement of its Indian patent (granted in 2005) by Maharaja Appliances, the Defendant. The patent is over a liquid heating vessel which has a container for a liquid, an electrical heating element to heat the base of the container and 2 thermal sensors placed at proximity to each other, either at the base of the container or on the heating element. The sensors are so placed to sense and hence prevent overheating of the heating element irrespective of the presence of liquid in the container.
2. According to the Plaintiff, Defendant imported products from China which allegedly infringed the Plaintiff’s patent. Also, the Defendant earlier sourced the products from the Plaintiff, but later switched over to its Chinese suppliers. The Defendant did not contest infringement but- (i) challenged the validity of the Patent citing a European Patent granted in 1998; (ii) claimed exemption from infringement under S.107A(b) of the Act since the Chinese supplier had a Chinese patent over the product and (iii) questioned the working of the Plaintiff’s patent.
The Court dismissed the first ground on the basis that the European patent had 2 sensors sensing the temperature of the liquid, both working in tandem; whereas the Plaintiff’s sensors worked independent of each other and were not dependant on the presence of liquid in the vessel to prevent overheating of the heating element. This, it felt, was a substantial difference and certainly did not amount to mere workshop modification.
For a judgment which deals with grant of an ad interim injunction, the Court has done a great job of understanding the differences in the technology and rightly distinguished the two patents. The Court further held that mere citing of prior art by the Defendant did not amount to a credible or serious challenge to the validity of the patent and that the Defendant had to point to the presence of a serious triable question as to the validity of a patent. This was even more the case considering the fact that the Plaintiff’s patent had been in force for 6 years and had never been challenged.
On s.107A(b), upon being asked by the Court to produce evidence of the Chinese patent, the Defendant said that it had requested its Chinese supplier to provide the same, but was yet to hear from the supplier. The Court observed that in the absence of proper credentials about a validly subsisting Chinese patent on the Chinese manufacturer’s product, the Court would have to go with a prima facie conclusion that the Defendant was not entitled to the defences under S.107A(b).
This means that in the absence of a patent in a foreign country over the product in the importer’s favour, importation of the product from the foreign country into India would amount to infringement of a patent granted in India to another entity. Stated otherwise, importation of a product from a country where there is no patent by a third party is not an act which is duly authorised by the law and therefore violates the right of importation of the patentee.
(On a different note, since the Defendant has admitted that his product is similar to that of the Plaintiff’s, the European patent cited by the Defendant to challenge the Plaintiff’s patent could serve to challenge the patent of the Defendant’s Chinese supplier as well, if at all it exists....)
On the issue of working, the Defendant’s arguments actually make for an interesting read. The Defendant contended that the Plaintiff’s patent had never been worked in India since no evidence to support its working had been submitted before the Court. The Court pointed out to the Defendant that the Defendant themselves had been purchasing the products from the Plaintiff in 2005-2006 which was proof enough to establish working of the Plaintiff’s patent.
On the basis of these reasons, the Court held that since there was no serious challenge to the Plaintiff’s patent, interim injunctive relief could and ought to be granted.
Madhur Bhandarkar’s movie “Jail”was given the go-ahead by the Bombay High Court in a copyright infringement action instituted by Sushila Sharma, the proprietor of a little known entity called Harsh Raj The Economic Timess. She alleged that the movie infringed the copyright in her film, also titled Jail, which never saw the light of the day.
The Court dismissed the allegations saying this was reflective of the increasing tendency to file suits on the eve of release of films and was nothing short of blackmail. Bhandarkar’s lawyers contended that Sharma’s claims were frivolous since, Rajesh Maria, also the proprietor of Harsh Raj, had signed an agreement purportedly assigning the rights to the movie to Bhandarkar’s company Percept Ltd. It was further pointed out that though the publicity campaign for the film was launched in September, the allegation was made on the eve of release of the film casting serious doubts on the intention of the plaintiff.
On a different note, the movie is not bad and certainly worth a watch.
The American University Washington College of Law (WCL) (a top U.S. law school that is renowned as the provider of quality legal education in all areas of the law, including intellectual property, information about which can be obtained from here) requires scarce introduction to the academically oriented. Among other programs offered by it, WCL can boast of the Program on Information Justice and Intellectual Property (PIJIP) (it works to advance access to information for people, who depend on it to make essential cultural and economic contributions to the society, and also hosts events emphasizing its values; details about PIJIP can be obtained from here).
In collaboration with the Women and the Law Program (WLP; details of which can be obtained from here) of WCL and the Journal of Gender, Social Policy & the Law (which addresses issues such social and political equality under the law, the unique role of gender in the formation of social policy, as well as the administration and development of the law; further details about the journal can be obtained from here), PIJIP is on the verge of hosting the The 7th Annual Symposium on “IP/Gender: Mapping the Connections” on April 16, 2010. Dan Burk, Chancellor’s Professor of Law, U.C. Irvine, is also acting in the capacity of a collaborator with regard to this event.
Earlier versions of this symposium have before this provided a forum to examine researches on gendered dimensions of IP law, with a wide-ranging series of issues such as the impact of IP law and policy on gender-related imbalances in wealth, cultural access, political power, and social control; the effects of stereotyping and of actual and rhetorical feminization and masculinization of participant roles upon IP stakeholders; the gendered development of IP doctrines and doctrinal categories; feminist jurisprudential insights about IP law; and the interface between female fan cultures and IP, to name a few.
“Gender and Invention” is going to be the special theme of this symposium, which boasts of participants such as Zorina Khan from Bowdoin College, Mario Biagioli from the Harvard University, Rayvon Fouche from the University of Illinois, Laurel Smith-Doerr from the Boston University and Kara Swanson from the Drexel University.
The Symposium has now released an invitation for papers on gender issues relating to the production and use of inventions, broadly defined. Potential topics include, but are not limited to the following:
(a) gendered patterns in the history of invention or creation;
(b) gendered regulation of inventive activities;
(c) gendered models of individual and collective inventive activities;
(d) gendered aspects in licensing or assignment of technologies etc.
The deadline for submission of abstracts is November 20, 2009 at 5:00 p.m. Eastern time U.S. Papers will be selected for presentation and possible publication by December 4, 2009, and will be due by March 1, 2010. For submission of an abstract or project description for consideration, a web-based form has to be filled up, which is available here. Subjected to availability of funds, reasonable travel expenses may be provided for presenters. Selected papers may be considered for publication in the Journal of Gender, Social Policy & the Law.
The symposium itself is scheduled to convene from 9:00 a.m. to 4:00 pm on Friday, April 16, 2010 at WCL in Washington, D.C. Details about past programs for the prior counterparts of the Symposium can be obtained from here. People, who are interested in attending the event, but not presenting work, are to register for the same here. For any further questions about attending, one is requested to contact Angie McCarthy, Women and the Law Program Coordinator at angiem@wcl.american.edu.
This Symposium promises to be an extremely interesting as well as entertaining event especially for the people interested in exploring the various facets of IP law and its interface with issues pertaining to gender and social policy. It is undoubtedly a great platform to launch one’s ideas in relation to the themes and subject-matters as aforesaid. The followers of Spicy IP and especially the Indian IP enthusiasts are being requested hereby to avail of this opportunity at the soonest.
The Traditional Knowledge Digital Library (TKDL), recently reconstituted to form an independent entity within the Council for Scientific and Industrial Research (CSIR), has already achieved early successes in its mandate to "prevent the misappropriation of Traditional Knowledge" in the international patent arena.
Until now, many may have believed the potential of the TKDL to be merely academic, cloaked as it is in the linguistic maze of India's TK, bio-medical and other arcane histories.
But current statistics from TKDL may have changed all that, and indeed may bear enormous significance on the recognition of TK as a legitimate source of information, a position that India has had to fight for in the past in the IP arena.
What is equally important, and may tend to be glossed over as an "incidental expense", is the effective cost involved in using TK as a tool to prevent bad patents from being granted. (Drum roll) The cost, counting the recent successes achieved by the TKDL at the European Patent Office, as of now is, hold your breath, ZERO. More details below.
TKDL sniffs success at the EPO
According to data revealed by Dr V K Gupta, the 'architect' behind TKDL, re-designated now as the Director of the new TKDL unit, the TKDL has impacted at least 36 applications at the European Patent Office (EPO), with which the Indian entity has an access-sharing agreement. (Information available on the TKDL website, which shows only 32 applications, may be slightly older data.)
In two out of the 36 cases, the EPO set aside its decision to grant patents, within a period of two weeks of receieving evidence from the TKDL. This may have included the case of a patent sought by Perdix, a Spanish-owned multinational on a herbal-based remedy to address the depigmentation of skin (anti-vitiligo cream). According to the TKDL website, the EPO has since re-opened that case for substantive examination. Note also that these invalidations were made at NO cost, as against conventional costs of some hundred thousand USD, if not more, and requiring the better part of a decade to resolve.
There is further information that in two other cases, applicants unilaterally withdrew their applications upon being informed of TKDL evidence. At least one of these is Unilever, the multinational conglomerate which also has a very strong Indian presence.
The TKDL appears confident that similar successes will be achieved in a significant majority of the remaining cases.
Does open-access TK prevent biopiracy or facilitate it?
However, there hovers in the air a word of caution about opening up access to the traditional knowledge resources of any country or community, and the potential misuse that can be made of such a resource. (Image from here)
One such voice comes from RS Praveen Raj, a frequent commentator on SpicyIP, who writes on his blog:
"It is hard for the Patent offices to keep the contents of TKDL secret from third parties, since no patent could be denied without disclosing the entire gamut of coded TK associated with the invention to the claimant.... It is going to be a great opportunity for the fraudsters to file patent applications purely on conceptual grounds (which would look like as if they had performed the invention), only to see that they could fetch the authentic information on a TK practice/product."
One counter-argument to this could lie in the fact that a resource like the TKDL has merely expanded the audience of published texts that contain references to traditional knowledge. Assuming that evidence of prior art, regardless of its regional or linguistic origins, remains a ground for invalidating a patent or an application, there may be little to worry about.
TKDL and the world, and WIPO's renewed mandate
Arguably, the TKDL story is also a boost for WIPO's inter-governmental commitee (IGC) on TK, genetic resources and traditional cultural expressions. Recent months have seen the mandate of the IGC swing from abandonment to hope, and this Indian project may just have something going for it here.
India, while not the only country to have a strong TK base, may be the only one to have a resource like the TKDL which has collated multiple sources of information extant in multiple languages at one place in a manner that is easy to access to different categories of users. Not surprisingly, other countries are trying to devise a similar system for themselves, but no one appears to have been as successful. Perhaps it is time to initiate a open-learning process as well, where India can share her experience in what continues to be an expansive task.
After the Tirupati Laddu, it is now the turn of shavige (seviyan in Hindi, shemai in Bengali, sevalu in Tamil) or vermicelli. Financial Express has reported that Bambino Agro Industries (which according to the newspaper report claims to the largest producer of vermicelli in Asia) has applied for geographical indication (GI) status for its Bambino brand. It is also reported that Bambino is the exclusive manufacturer of pasta with durum wheat semolina in India.
Origins of Vermicelli:
Googling vermicelli returned numerous recipes from Italy, India, China, Thailand, America and Japan. The different types of vermicelli vary depending upon the ingredients used in their making and the thickness of the strand. Vermicelli is said to have evolved from pasta. The Romans came up with this innovative method of preserving wheat, which otherwise had to be thrown into the Tuber River as it was liable to be infested by parasites. According to Wikipedia, the Italian vermicelli is made from the whole durum wheat, whereas in India it is made from semolina (purified middlings of durum wheat). A kind of vermicelli, the Longkou Vermicelli was granted GI status in 2003in China. The Longkou vermicelli is however not made from either rice or wheat.
Should GI registration be awarded to Bambino vermicelli?
On the lines of a previous post on the GI for Tirupati Laddu by Sumathi (and a series of posts on the same), the Bambino case involves a single producer. GIs are predominantly aimed at protecting the interests of the producers of a particular region. The GI Act categorically states that an application can be filed only by an association of persons or producers (as opposed to producer) or an organization representing the interests of the producers. The Bambino vermicelli is however produced by a single producer across plants located in Bibinagar (Andhra Pradesh), Gurgaon and Nagpur (Maharashtra). Bambino vermicelli already has a registered trademark on the same. Granting GI status to Bambino vermicelli would amount violating the spirit of the GI Act which has been enacted towards protecting the collective interests of the producers. Contrast this with the case of Channapatna toys, the origins of which can be traced to the 18th century, are manufactured by around 254 home factories and 50 small factories in villages around Channaptna (Bangalore Rural District). (General info: Of the 117 GIs registered till date, Karnataka has the highest number of registrations - 27 followed by Tamil Nadu with 18 registrations).
A similar attempt was also made by Reliance Industries to obtain a GI status for gas pumped from its Krishna – Godavari fields and petroleum products made at its Jamnagar refinery. This was met with four oppositions and was subsequently withdrawn (abandoned by the GI registry owing to lack of prosecution), as reported by Livemint earlier this month (also look at guest post on the same). The reasons for withdrawal were cited as non-production of no-objection certificate from the petroleum and natural gas ministry.
The program aims to: - To accelerate change in copyright law. - To raise public awareness. - To gather Indian support for the Treaty for the Blind proposed by the World Blind Union at WIPO.
Express your support for the cause by participating in the event in large numbers.
Date: 7th November 2009
Time: 11:00 AM
Venue: Auditorium, West Bengal National University of Juridical Sciences 12 LB Block, Sector III, Salt Lake City, Kolkata- 98 (The university is the imposing building with the huge red pillar on the right of the EM Bypass, if you are coming from Park Circus via Chingrihata).
Highlights of the Programme: - Skit by the volunteers of Sruti DisAbility Rights Centre. - A panel discussion. - Cultural performance by Ms. Sayoni Palit.
Participants in the Programme include: Dr. Suranjan Das, Vice Chancellor of Calcutta University Mr. K.S Adhikari, Assistant Disability Commissioner, West Bengal Prof. Shamnad Basheer, IPR Chair, WBNUJS Ms. Chandrima Bhattacharya, Senior Assistant Editor, The Telegraph Mr. S.B Pattnayak, Principal, Ramkrishna Mission, Narendrapur Dr. S.S Roy, Chairman, National Children’s Computer Society Dr. Rukmini Sen, Assistant Professor, WBNUJS Ms. Varsha, Indian Institute of Cerebral Palsy
Application Deadline: November 23, 2009 Duty Station: Geneva
The position is under the supervision of the Head of the Traditional Creativity, Cultural Expressions and Cultural Heritage Section, Traditional Knowledge Division.
Qualifications required: • University degree in law, preferably with a post-graduate specialization in intellectual property law, notably in copyright and related (“neighboring”) rights. • At least six years of relevant professional experience, preferably in the field of intellectual property law, in particular copyright and related (“neighboring”) rights, in private law practice, academia, a non-governmental organization, a national administration or intergovernmental organization, or equivalent. • A track record in undertaking policy and legal analysis in relation to intellectual property, preferably in relation to copyright and related (“neighboring”) rights, cultural heritage, cultural diversity and TCEs. • Familiarity with the activities and procedures of the United Nations system desirable. • Excellent writing and communication skills. A record of publications in relevant areas would be an advantage. • Discretion, integrity and sound political judgment. • Proven organizational and interpersonal skills; ability to discharge a diverse work-load under pressure within a multi-cultural team; and, • Excellent written and spoken English or French, with a working knowledge of at least one other UN language.
The tasks include, • research in the areas of intellectual property and cultural heritage, cultural diversity and traditional cultural expressions/expressions of folklore; • assisting in preparations for and participating as a member of the WIPO Secretariat in sessions of the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, specifically in relation to TCEs; • assisting in the conceptualization, development and implementation of practical capacity-building projects in relation to IP and cultural heritage, cultural diversity and TCEs, particularly training programs, guides and “best practices” for cultural documentation by indigenous and local communities, the digitization of museum and archival collections, the organization of arts festivals and the protection of handicrafts; • participating in the conceptualization, development, preparation and field testing of a “Practical Guide on Intellectual Property and Traditional Cultural Expressions”; • participating in the conceptualization and development of alternative dispute resolution (ADR) services in relation to disputes arising from IP claims and issues related to cultural heritage; • preparing and following up on correspondence and communications in electronic or non-electronic form related to the work of the Section and the Division as a whole; • attending relevant national and international WIPO meetings and traveling to represent WIPO at meetings of other organizations, including facilitating dialogue and liaison among stakeholders and follow-up to these meetings; undertaking missions to advise stakeholders on IP issues related to cultural heritage, cultural diversity and TCEs; • organizing and assisting with the preparations for WIPO workshops, seminars and staff missions, including liaison with and providing briefings for non-governmental organizations (NGOs), indigenous and local communities and other entities; • liaising with consultants commissioned by WIPO and assisting in overseeing interns to undertake studies or other activities; • assisting in the updating and management of materials placed on WIPO’s website related to cultural heritage, cultural diversity and TCEs; and, • generally undertaking such other tasks as relate to the activities of the Section and the Division as a whole.
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