Monthly Archives: September 2011

ESPN SOFTWARE INDIA FILES FIR AGAINST VARNAM CABLE NETWORK (KERALA)

ESPN Software India, the sole licensee of TV channels ESPN, Star Sports and Star Cricket in India, has filed an FIR against Mr. Pradeep.P, representing Varnam Cable Network (a franchise of Asianet Satellite communications Ltd.) in Konni, Kerala under the Indian Copyright Act 1957.

The cable network was alleged to be illegally broadcasting unauthorised feeds of ESPN, Star Sports and Star Cricket since 21 July 2011 (most likely in view of the increasing customers’s demands for coverage of the then ongoing England v India Test series), using a personal direct to home (DTH) set top box without authorised agreement or copyright, leading to huge financial loss for ESPN Software India Pvt. Ltd.

The FIR was filed under Sections 37, 51, 63 and 65 of the Indian Copyright Act. Let us have a look at what all these sections say:

The Broadcast reproduction right has been conferred by Section 37. Every broadcasting organization has a special right known as ‘broadcast reproduction right” in respect of its broadcasts. The broadcast reproduction right shall subsist until twenty five years from the beginning of the calendar year next following the year in which the broadcast in made.

Section 51 deals with the infringement of the copyright. The Section says that a copyright in a work is deemed to be infringed when any person, without a license granted by the owner of the copyright does anything, which is the exclusive right to do so conferred by the Act upon the owner of the copyright.

Section 63 deals with the offence of infringement of copyright. The Section says that any person who knowingly infringes or abets the infringement of the copyright in a work or any other right concerned by this Act, ) shall be punishable with imprisonment of 6 months to 3 years and with minimum fine of fifty thousand rupees which may extend to two lakh rupees.

Section 65 deals with the possession of plates plates for purpose of making infringing copies. The Section says that any person who knowingly makes, or has in his possession, any plate for the purpose of making infringing copies of any work in which copyright subsists shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.

This case, along with multiple other recently filed FIR’s and copyright infringement suits in 2011 itself, mark a new era of enforcement of copyrights in the unorganized sector with large business establishments willing to go the time consuming and high investment way to ensure that their rights including broadcasting, music, software rights are secured.

About the Author: Ms. Gopanjali Singh, Patent Associate at Khurana & Khurana and can be reached at: Gopanjali@khuranaandkhurana.com

NATCO FILES INDIA’S FIRST COMPULSORY LICENSING APPLICATION

Natco Pharma has filed India’s first Compulsory Licensing (CL) Application (in accordance with Section 84(1) of the Indian Patents Act) against one of the Bayer’s patented drug Sorafenib, marketed by Bayer as Nexavar for treating Kidney and Liver Cancer. Patent on Sorafenib is granted in India on 03.03.2008 having number IN 215758. This will be a landmark development of such licensing in India and being a test case would set a precedent for the forthcoming similar cases. The CL Application is published in the Official Journal of the Indian Patent Office and can be seen here.

Section 84(1) of the Indian Patent’s Act allows any interested person to make an application to the Controller for grant of compulsory license after the expiry of three years from the date of grant of patent on any of the following grounds:

a. that the reasonable requirements of public with respect to the patented invention have not been satisfied

b. that the patented invention is not available to the public at reasonably affordable price,

c. that the patented invention is not worked in India.

As documentary evidence, Natco has presented a number of facts in support of a prima facie case of reasonable requirements of public not being satisfied.

Natco has stated in its CL Application that Sorafenib is not manufactured in India but is being imported and sold by Bayer at an exorbitant price in India. The average price of the treatment with Sorafenib per month per patient is Rs. 2, 80, 428/- and almost out of reach of the public. Round Natco has stressed that they will be able to sell the drug for Rs. 8,880/- per month! Natco has showed that at least 30,000 patients are diagnosed of Liver or Kidney cancer every year in India and out of these 99% of patients are unable to afford the drug and die every year.

Further Natco stated that there is a limited availability of the drug and is available only in metros cities, for example, Delhi, Mumbai, Chennai and Kolkata with an exclusion of second tier and smaller cities. Also the distributors of Sorafenib are only in Delhi, UP, Punjab, Gujarat, West Bengal, Bihar, Kerala and Tamil Nadu. Natco points that it has the distribution network in all almost every city and district of India.

Natco earlier requested Bayer to receive Voluntary License to manufacture and sell the drug in India by writing to them on 06.12.2010. The letter which was submitted along with the Application as an annexure is not available for its analysis. However, it would interesting to note whom the letter was addressed to and by whom was the same replied as the concerned stakeholder to whom a request Voluntary License (VL) was sent could play a role in deciding the reasonable efforts taken by the Applicant to obtain the VL. We believe that the person being contacted should be a person having due authority to take decisions on such matters, be it in the business development team or the Sr. Management team. Contacting any person not having the necessary authority would not add value and would not be construed as making appropriate efforts to obtain a license from the patentee. This however is a general issue and not pertaining to the case in context. Also, as a practice, the request for VL should disclose the proposed terms and conditions by the party trying to obtain the CL, in absence of which, the offer would not be held explicit.

Further, Natco stated in its Application that Bayer refused on 27.12.2010 without any further discussion whatsoever. According to S. 84(6) (iv) which says that one of the factors which Controller will take into account while considering a CL Application is whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions and such efforts have not been successful within six months. Natco’s CL Application was filed on 28th July 2011.

Another important factor which the Controller will take into account while considering a CL Application is the ability and capability of Natco to manufacture and cater to the needs of the entire public. Nacto has stated in the Application that it can manufacture 20,00,000 tablets  a day when there is need of 4,80,000 tablets a month. Natco has asserted that it can manufacture the drug by employing existing facilities without requirement of any additional investment/plant etc. as Natco has been already manufacturing other anti-cancer products for the last 20 years.

Earlier this year, Natco has also sought for a voluntary license from Pfizer to manufacture and sell Pfizer’s HIV drug maraviroc (marketed as Celsentri), the application is still pending. It is much expected that Pfizer will decline to give such license owing to high R&D investments incurred and it is quite likely that another CL Application might be coming from Natco soon.

This application by Natco has already started motivating the pharma companies in India in preparing to file CL Applications against patented drugs by Foreign players in manufacturing and selling their generic versions in India. A few of these drugs might not yet even have been marketed and might be in the clinical phase, wherein  S. 84 (a) (iii) could be a ground of filing CL in those cases namely the non-working of the patent in India. However, how strong such an application would be on grounds of S. 84 (a) (iii) is debatable as the drug itself is in the clinical phase and cannot anyways be worked upon by any company till the time it is registered with the regulatory authority.

A key point being stressed here is that the first CL Application has not even been granted by the Controller as yet and there is a feeling of urgency that is being felt right away in the Indian Pharma community to file multiple CL’s as possible. I wonder how Natco’c victory in this case could motivate the Indian generic industry to go ahead with the compulsory licensing. However, it is foreseen that the outcome and the ultimate result of this CL will be long awaited owing to the expected court battle between the two as the losing party is likely to challenge the decision. One thing is for sure, grant of the CL to Natco will motivate a large number of Indian pharma players to apply for the same against costly patented drugs (being sold by big Foreign players) mainly on price affordability ground as the Government in many of Indian pharma patent battles has already seemed to be inclined in favor of the generic companies selling cheaper drugs in public interest.

About the Author: Ms. Meenakshi Khurana, Patent Specialist at Khurana & Khurana and can be reached at: meenakshi@khuranaandkhurana.com

 

GEOGRAPHICAL INDICATION VS. TRADEMARK

As the title suggests, this article will ride you through interesting judgment given by Division Bench of Kolkata High Court recently in Tea Board, India vs. I.T.C. Limited upholding emphatically the earlier decision of the Single Judge. This is a very interesting decision, not just because it is the upholding of first ever decision given by an Indian court on the infringement of a registered GI; but also because it may have significant implications on the protection of GI rights in the country in the times to come.

Brief FactsThe Tea Board is the registered proprietor of the GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”. They sued the Indian conglomerate ITC for using “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar. The suit revolves mainly on issues of infringement of the GI and the certification TMs, as well as for passing off and dilution. The Single Judge of the Kolkata Court had refused to grant an interlocutory injunction to the Tea Board hence the appeal.

(The word “Darjeeling” and the corresponding logo are the first two GIs registered in India; it is surprising that the first decision involving GIs in India is in connection with these two registrations)

Issues –

  1. Whether by virtue of certification trade mark, the plaintiff can restrain the defendant for infringement and passing off, who is carrying a business of hospitality from naming one of its lounges in the hotel as “DARJEELING LOUNGE”, where among the beverages and foods served to its customers, tea is also one of the items which is not necessarily restricted to the one grown only in the district of Darjeeling?

The division bench held that Section 68 of Trade Marks Act which deals with certification trademarks specifically exclude application of Section 29 i.e. infringement of registered trademarks. Therefore, protection conferred under Section 29 of the Act is not available to the plaintiff being holder of a Certification Trade Mark. But by virtue of registered certifications, the holder thereof is entitled to protect its right conferred under Section 78 of the Act as provided in Section 75 of the said Act. Court went on to discuss Sections 28 and 29 for the purpose of comparing of nature of rights accrued and the infringement mentioned therein with those provided in Sections 75 and 78 of the Act.

Section 78 states that, the registration of a person as a proprietor of certification trade mark in respect of any goods or services shall if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services. Section 75 states that the right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorized by him, uses in the course of trade, a mark, which is identical with or deceptively similar to the certification trade mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a trade mark.

Whereas 28 states that subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark in the manner provided by this Act. Here the expression “to obtain relief in respect of infringement of trade mark in the manner provided by this Act.” which is conspicuously absent in Section 78 of the Act.

Moreover, in Section 29, the list of infringements of the rights conferred under Section 28 is far more extensive as detailed in nine different sub-sections including the act of use without permission by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered as provided in sub-section (5) thereof, which is the allegation against the defendant by the plaintiff in substance. The above phrase indicated in Section 29 is noticeably absent in Section 75 of the Act. Therefore, there is no infringement of certification trademark in this case.

Appellant also relied on some foreign decisions showing that in foreign courts Tea Board has succeeded to prevent some foreign traders who are using the word “Darjeeling” in their trade name from so doing. Court rejected those decisions by saying that those decisions, those foreign courts had no occasion to deal with the provisions contained in the Trademarks Act or the G.I. Act of this country. Since we are not finally deciding the matter but are dealing with an appeal preferred against an order of interlocutory injunction where the main matter is yet to be decided on merit, we are concerned with the existence of a prima facie case of the plaintiff based on the abovementioned two Indian Statutes and as such, we do not intend to deal with those foreign decisions based on the law prevailing in those countries at this stage.

Court also rejected the contention of plaintiff regarding passing off by saying the plaintiff is neither a trader of tea nor is it in the service of rendering hospitality to the public. The Tea Board is created by a statute who has obtained registration of its Certification Trademarks for protecting its authority to certify that a particular type of tea is connected with the Darjeeling region to protect its interest. It is not the case of the plaintiff that the defendant is trying to pose before the public that it has also the authority of such certification or that it has proclaimed by naming one of its lounges in a hotel as that of DARJEELING LOUNGE that it is the authority to give such certificate or that it is an agent or authorized representative of the plaintiff. Thus, the averments made in the plaint do not make out any prima facie case of passing off.

    2. Whether the use of word “DARGILING” by the defendant for naming one of its lounges in the hotel as  “DARJEELING  LOUNGE” is violative of the rights conferred by the Geographical Indication Act?

To answer this issue court went on to specify the statements of the object and reason of enacting the G.I  Act and said that based on the object and the preamble of the said Act, it has described as an Act to provide for the registration and better protection of geographical indications relating to goods. Court opined that  in the context of the G. I. Act, the learned Single Judge was right in prima facie holding that the right conferred on registration under the G.I Act in respect of the goods “tea”, does not confer any right over the word “Darjeeling”, a geographical name, so as to prevent the defendant from rendering its services of hospitality to the public by naming one of the lounges of its hotel as “Darjeeling Lounge” as the object of the G. I. Act is to give better protection of geographical indications relating to goods.

Conclusion

This decision treats GI’s very differently from statutorily protected “Well Known Marks”, as later being entitled to stronger protection when it comes to dilution. Also, there is important thing to note that the rights conferred on owners of registered certification marks (Sec. 75 & 78) are different and weaker from the rights conferred on owners of the registered trademarks (Sec. 28 & 29). I think this is a good judgment as the bench has not got carried away by foreign judgments and decided the matter on provisions prevailed in Indian Statutes. This judgment specifies what should not be claimed against the rights conferred by certified marks & GI’s.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: Vinayak@khuranaandkhurana.com.