NEWSLETTER FEBRUARY 2019 Bulletins National Intellectual Property Awards 2019 - India: The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM), has recently called for nominations for the National Intellectual Property Awards 2019 (India), with the last date of submission being 28th February 2019. The Awards aim to recognize and reward individuals and enterprises for their creation and commercialisation of IP, that has significantly contributed to the India’s intellectual capital and provided a boost to creativity and innovation. The Awards have been organized by the Intellectual Property Office (IPO), India in collaboration with the Confederation of Indian Industry (CII) and shall be announced on 26th April 2019, coinciding with the World IP Day. For more details and application procedure kindly visit the IPO website. Government of India exempts new drugs patented in India from price control order for 5 years: The Ministry of Chemicals and Fertilisers, India has vide the Drug (Prices Control) Amendment Order, 2019 (hereinafter Order 2019) exempted for a period of five years from the date of their commercial marketing in India, all the manufacturers, importers and marketers of ‘new drugs’ patented under the Indian Patent Act, 1970 from the application of the Drug (Prices Control) Order 2013 regulating the pricing of drugs in India.  Earlier, the exemption was limited to the manufacturers producing patented new drugs that were developed through indigenous research and development and not produced elsewhere. Effective from 3rd January 2019, the Order 2019 also exempts the drugs for treating ‘orphan diseases’, as decided by the Ministry of Health and Family Welfare, Government of India. Proposed amendment in Cinematograph Act, 1952: The Ministry of Information and Broadcasting, India has recently proposed an amendment to the Cinematograph Act, 1952 to include penalty for (attempting) piracy in movie theatres. The proposed amendment introduces penalty for recording, using any recording device to copy, transmit or abet in transmission of a film, its audio, video or any content covered under Cinematograph Act, (while it is being exhibited in movie theatres or otherwise). The said penalty includes imprisonment for a maximum of three (3) years and fine of up to INR 10 Lacs. Copyright Office’s initiative towards digitalisation: The Copyright Office, India has, in its endeavours to facilitate seamless processing and registration of works, vide its recent notice enabled online uploading of Literary/Dramatic and Artistic works along with other related documents using e-filing module of the Copyright Office website. Such initiative would save the applicant from going through the hassle of physically delivering a copy of the work at the Copyright Office. Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Ltd & Ors., Civil Appeal Nos. 4616-4617 of 2018 and 188-192 of 2019, Supreme Court of India In the long-drawn litigation between Monsanto Technology and Nuziveedu Seeds, the Hon’ble Supreme Court has recently granted Monsanto another opportunity by setting aside the Division Bench of Delhi High Court’s order invalidating the Monsanto’s patent for Bt. Technology. Monsanto, being the owner of the Indian patent No. 214436 for nucleic acid sequence and the consequent process to insert the nucleic acid sequence in plant cells, created Bt cotton donor seeds (which were resistant to Ballworms) and sold the same under a license agreement to Nuziveedu permitting it to introgress the desirable genetic trait into its own hybrid varieties by backcrossing. Essentially, Nuziveedu used the Bt. Cotton transgenic donor seeds, carrying the Bt. Trait, in breeding process for improving and creating their own Bt. Cotton hybrid varieties. With the initial license agreement in 2004, Monsanto and Nuziveedu continued to periodically renew the said license agreement with the last renewal being in 2015. Subsequently, Nuziveedu requested Monsanto to revise the trait value, charged by them under the license agreement, in accordance with the trait value fixed by various State Governments pursuant to the Essential Commodities Act 1955 (including amendments thereto from time to time) as well as the Cotton Seeds Price (Control) Order, 2015, (hereinafter referred to as Order 2015). However, Monsanto issued notices to Nuziveedu, in effect terminating the license agreement and subsequently, initiated infringement proceedings against Nuziveedu alleging patent infringement inter alia by virtue of continued use of Bt. Trait by Nuziveedu even after termination of the license agreement. Nuziveedu, while refusing to pay any amount in excess of the “trait value” fixed by the State governments, argued invalidity of Monsanto’s patent as defence for the infringement claim, and also filed a counter claim alleging that Monsanto’s suit patent was liable to be cancelled by reason of Section 3 (j) of the Act. The Hon’ble Single Judge of Delhi High Court, while deciding the Monsanto’s application for injunction, noted that the nature and extent of patent claims could not be examined in the absence of formal proof and expert opinion inter alia.  Accordingly, in view of Monsanto’s existing patent registered under Section 48 of the Act, the Hon’ble Single Judge vide the order dated 28.03.2017 held that as an interim measure, both the parties should remain bound by their respective obligations under the sub-license agreement and that the license fee/trait value payable by Nuziveedu shall be governed by the laws in force. Aggrieved by the Hon’ble Single Judge’s said decision, both the parties preferred an appeal before the Division Bench of Delhi High Court. The Division Bench dismissed Monsanto’s appeal upholding Nuziveedu’s contention that the suit patent was invalid under Section 3(j) of the Patent Act, 1970, which excluded from patentability “plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.” Consequently, Nuziveedu’s counter claim succeeded. However, the suit was permitted to continue with regard to the claim for damages and other reliefs. The parties thereafter approached the Hon’ble Supreme Court of India against the impugned order of the Division Bench. Hon’ble Supreme Court agreed with Monsanto’s submission that lack of patentability of the suit patent was never an issue in the original suit as Nuziveedu had merely argued lack of patentability as defence to Monsanto’s claim of infringement. On the other hand, the counterclaim that, actually dealt with the revocation of the patent as unpatentable, was neither argued before nor adjudicated by the Hon’ble Single Judge. The Apex Court, therefore, held that given the mixed questions of law and facts with regard to patentability and exclusion of patent, requiring expert evidence and a full-fledged trial, the Division Bench ought to have confined its adjudication to the question of grant of injunctive relief and not to have examined the counter claim itself, usurping the jurisdiction of the Single Judge to decide unpatentability. The Hon’ble Court further noted that summary adjudication of technically complex suit requiring expert evidence (as done by the Hon’ble Division Bench), was certainly neither desirable or permissible in the law and consequently, set aside the Division Bench’s order invalidating Monsanto’s patent. Nonetheless, having perused the facts and circumstances of the case and being satisfied with the nature of injunctive relief granted by the Single Judge, the Hon’ble Supreme Court, instead of remanding the matter to the Hon’ble Division Bench, directed the interim arrangement ordered by the Hon’ble Single Judge’s vide order dated 28.03.2017 to continue during the pendency of the suit. The matter has now been remanded back to the Hon’ble Single Judge for disposal in accordance with law. Bigtree Entertainment Pvt Ltd. v. D Sharma & Anr, CS (Comm) 609/2016, Delhi High Court Delhi High Court in the matter of Bigtree Entertainment Pvt Ltd. v. D Sharma & Anr, refused to grant an interim injunction restraining the defendants from using the prefix “BOOK MY” on the ground that the said prefix in the plaintiff’s registered trademark “BOOK MY SHOW” was descriptive of nature of the services provided by Plaintiff. The Court further held that there is no prima facie case in favour of Plaintiff  as the evidence tendered in support of acquired distinctiveness is yet to be proved in trial. Plaintiff, Bigtree Entertainment, an online ticketing venture established in 2007 and operating under the brand BOOKMYSHOW, had initiated the instant suit seeking permanent injunction restraining the defendants from using the mark “BOOKMYEVENT” or the prefix “BOOKMY” for online ticketing or similar services and also secured an ex-parte ad interim injunction against the defendants. The defendants, thereafter, filed an application seeking vacation of the said interim injunction. The Plaintiff submitted that the defendants use of the mark ‘BOOKMYEVENT’ not only infringed their statutory rights in the registered trademark BOOKMYSHOW, but also violated their common law rights in the prefix BOOKMY, as by virtue of continuous and open use as well as extensive promotion of the mark BOOKMYSHOW, the said prefix had acquired a secondary meaning in favour of and had come to be exclusively associated with the plaintiff. Defendants on the other hand argued that the prefix BOOKMY was descriptive in nature and accordingly, in view of the Section 17 of the Trade Marks Act, 1999, the Plaintiff cannot claim any exclusive right in the said prefix. The Hon’ble Court, noted that the prefix BOOKMY was not an invented word but descriptive of the services involved. Further, relying upon Division Bench’s observation in Living Media Limited v. Alpha Dealcom Pvt Ltd & Ors., 2016(66) PTC 200(Del)(DB) that “The law demands closer scrutiny, when it comes to the use of common words.., that are descriptive... of the services or goods offered by the service provider or trader”, the Hon’ble Court observed that a prima facie comparison of both the trademarks in question resulted in a very different visual effect, particularly given the distinct font and color scheme used by the defendants. The Hon’ble Court also rejected the Plaintiff’s submission that the since the Defendants had limited the scope of their services by deleting online ticketing services in the trademark application filed by them before the Registry, the Defendants should be estopped from reclaiming the said services and clarified that simply because the application for registration of a trademark was amended, the same did not amount to relinquishment of any right to use the trademark. Accordingly, the Hon’ble Court observed that the question as to whether the prefix BOOKMY has acquired a secondary meaning and distinctiveness qua the Plaintiff could only by established after the parties had led their evidence, and held that there is no prima facie case in favour of the Plaintiff and dismissed the Plaintiff’s application for interim injunction. Blueberry Books & Ors v. Bharti Goyal & Anr, CS(OS) 1498 of 2014, Delhi High Court Rajat Sharma & Anr. v. Ashok Venkatramani & Anr., CS(Comm) 15 of 2019, Delhi High Court The Delhi High Court, recently clarified that copyright, being a statutory right, a suit by a non-registered partnership firm for enforcement of copyright shall be valid and Section 69(2) of the Indian Partnership Act prohibiting non-registered partnership firm from initiating suit for enforcement of contractual right, shall not be applicable to such suits. Plaintiffs – publishers had entered into an agreement with Defendant No. 1, wherein the Plaintiffs agreed to publish the work written by Defendant No. 1 and by virtue of which the copyright in the said work would vest in the Plaintiffs. Subsequently, the Defendants issued a notice to the Plaintiffs stating that the terms of the agreement executed between them and the Plaintiffs were incoherent and sought to restrain the Plaintiffs from publishing and distributing the works authored by the Defendant. Plaintiff No. 1, Blueberry Books, a partnership firm comprising of Plaintiff Nos. 2 and 3, thereafter, filed the instant suit seeking declaration of ownership of copyright in the works as well as a decree of permanent injunction restraining the defendants from interfering or distributing the peaceful sale or publication of the said works by the Plaintiffs. Defendant, then sought rejection of the plaint on the ground that the suit was filed by a non-registered firm and submitted that the claim of the Plaintiffs in the instant suit was based on an agreement between the parties and therefore, the suit was barred under Section 69(2) of the Indian Partnership Act. Plaintiffs, on the other hand, relied upon the Hon’ble Supreme Court’s decision in Haldiram Bhujiawala & Anr v. Anand Kumar Deepak Kumar & Anr. (2000) 3 SCC 250 to contend that a suit seeking enforcement of statutory rights is not barred under law and Section 69(2) of the Indian Partnership Act shall not apply to such a suit. After perusing the facts of the case, the Hon’ble Court, noted that the instant suit was based on statutory rights arising under the Copyright Act, 1957, particularly Sections 18 and 19 of the Act dealing with assignment of copyright. The Hon’ble Court observed that even though a reference to the facts as to how the copyright vests in the Plaintiffs was required, the said set of facts were ancillary and incidental to the rights which are sought to be agitated by the Plaintiff, i.e. its copyright. Accordingly, the Hon’ble Court held that merely because some additional or ancillary issued also arose in the course of adjudication of the controversy in the plaint, the same would not be sufficient to hold the suit barred under Section 69(2) of the Partnership Act and dismissed the defendant’s application. The Delhi High Court, in Rajat Sharma & Anr. v. Ashok Venkatramani & Anr. acknowledged the Plaintiff’s publicity rights and granted an ex-parte ad interim injunction restraining the Defendants from issuing any advertisements in print or electronic media which contain the name of the Plaintiff. Defendants had launched an advertisement campaign, which used the phrase “INDIA ME AB RAJAT KI ADALAT BAND”. Thereafter, the Plaintiff, Mr. Rajat Sharma, host of the popular Indian television show Aap Ki Adalat, initiated the instant legal proceedings before the Delhi High Court seeking declaration that the Defendant’s advertisement was false, misleading, incorrect and disparaging, besides other reliefs. The Plaintiff contented that the Defendant’s said advertisements were not only false and misrepresenting, but also deliberately and maliciously disparaged Plaintiff No. 1, Mr. Rajat Sharma and the show – Aap Ki Adalat. Plaintiffs further submitted that use of the Plaintiff No 1’s name without his authorisation, violated his celebrity rights as well. The Hon’ble Court while holding the impugned advertisement to be prima facie illegal, relied upon the Madras High Court’s decision in Mr. Shivaji Rao Gaikwad v. M/s Varsha Productions, 2015-1-L.W. 701, wherein the Hon’ble Court had observed that “... if any person uses the name of a celebrity without his/her permission, the celebrity is entitled to injunction, if the said celebrity could be easily identified by the use of his name by the others”. The Hon’ble Court further relied upon the Delhi High Court’s observation in Titan Industries Ltd. v. M/s Ramkumar Jewellers, 2012 SCC Online Delhi 2382, that “the right to publicity extends beyond the traditional limits of false advertising laws” and granted the ad interim injunction against the Defendant. The Hon’ble Court further directed the Defendants to remove within three (3) days, any hoarding with reference to the name of the Plaintiff. Disclaimer This newsletter is intended for general information and education purposes only and the material content herein does not constitute legal or other professional advice. 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