Monthly Archives: February 2018

West Bengal’s Sweet Triumph in the Bitter Clash with Odhisa

Introduction

The Geographical Indications Of Goods (Registration And Protection) Act, 1999 defines ‘geographical indication’ as ‘an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin.’

The objective of this IP is to protect the interests of its producers and further their economic interests by assuring quality and uniqueness, which are attributable to the place of its origin. Mysore Silk, Darjeeling Tea, Coorg Orange, Kashmir Pashmina etc. are some instances of GI.

 Claims of Origin Lying In Odisha

Odisha’s government claimed to that the sweet, RASSOGOLLA originated in the city of Puri in the 13thcentury and legend has it that Lord Jagannath offered these sweets to his consort Lakshmi, as an apology for not taking her along during the ritual chariot ride. Further, they stated that its first form was ‘kheer mohana’, that later evolved into ‘pahala rasagolla’. So much so, various historians commented on the sweet’s origin in Odisha, one of them being Asit Mohanty  who quoted from an article published in the April, 2011 edition  of ‘Saptahik Bartamaan, a popular Bengali magazineto prove that rasogolla was indeed Odisha’s gift to the world. He further went on record with Odisha’s local newspapers and said “Many Brahmin Odia cooks (whom we call ‘Thakur’) came to Bengal in search of work in the middle of the nineteenth century. It was through them that many recipes from that state, including ‘rasogolla’, landed in Bengal.”

However, things heated up in June 2015, when Odisha’s science and technology minister Pradip Kumar Panigrahi set up committees to trace the origin of the dish, moreover, they announced 30 July as ‘Rasagolla Dibasa’ to celebrate its origin in Odhisa.

Claims of Invention in West Bengal

West Bengal contended that rosogulla originated in the 1868 by a renowned local confectioner Nabin Chandra Das. Post Odisha’s claims the descendants of Nabin Chandra Das planned to challenge the Odisha government with the support of documentary evidence. With the assistance of historian Haripada Bhowmick they prepared a booklet, which they proposed to send to Chief Minister Mamata Banerjee for necessary action at her end.

On the other end, the Bengal government left no stone unturned and filed a court petition in tandem with an application for a Geographical Indication (GI) recognition to finally settle the origin debate. The government took assistance from KC Das Sweets for all required documents and information to authenticate the claims of invention occurring in West Bengal by Nabin Chandra Das.

Conclusion

The Directorate of Food Processing Industries of West Bengal made an application in 2015, for a Geographical Indication (GI) status to “Banglar Rasogolla”. Clarifying further, the government stated there was no conflict with Odhisa as its application was for a specific variant which varied “both in colour, texture, taste, juice content and method of manufacturing” from its alternative, produced in Odisha. On 14 November 2017, the GI Registry of India granted West Bengal the GI status for Banglar Rasogolla.

Analysis

At first sight, when one reads of the controversy between two state governments over the origin of a sweet, it may seem over hyped. But on giving it a second thought, you can see that this debate is not merely about Bengali and Odia sentiments but this may also convert into fruitful business for confectioners in the two states. The GI status to Bengali Rasgulla makes it clear that “Rasgulla” is a generic term and thus cannot be given a GI tag as a whole. Hence, tomorrow even Odisha’s government could make an application for its regional variant of Rasgulla. Therefore, technically the question of Rasgulla’s origin has yet not been resolved but as a wise man had once said “Some questions are best left unanswered”.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com.

References:

[1]http://www.newindianexpress.com/nation/2017/nov/14/sweet-war-this-gi-tag-is-for-banglar-rosogolla-it-is-not-about-the-origin-1700787.html

[2]http://www.moneycontrol.com/news/trends/your-rasgulla-or-mine-west-bengal-to-go-to-court-against-odisha-in-bitter-fight-over-sweet-dishs-origin-2434861.html

[3] https://www.hindustantimes.com/india-news/bengal-odisha-battle-for-rasgulla-likely-to-take-a-bitter-legal-turn/story-jzXyhy9ppRb6puJk4pocvO.html

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Jurisdiction of courts in online transactions: Impresario Entertainment & Hospitality Pvt Ltd V. S & D Hospitality

Introduction

Over the last decade or so, the Delhi HC has become the hub for cases pertaining to IP litigation. This prompts parties to initiate proceedings in Delhi HC relating to IP laws which has eventually raised questions regarding the jurisdiction of the court especially in online transactions. This issue has been  dealt by Mukta Gupta, J. in the present case.

Background of the case

The plaintiff is a company that provides restaurant services with its registered office in Mumbai and is carrying its business in HKV, New Delhi and a restaurant under the name and style of ‘SOCIAL’ which it has trademarked and has various coffee shops as well. It came to know in 2017 that the defendant has 2 restaurants in Hyderabad under the name ‘SOCIAL MONKEY’. Also, it has a popular beverage by the name ‘A GAME OF SLING’ and the defendant has named a beverage as ‘HYDERABAD SLING’ which is identical and/or deceptively similar to the plaintiff’s beverage.

Hence, the plaintiff had filed for seeking permanent injunction against the defendant from manufacturing, selling, marketing, advertising, and/or offering its services under the trademarks ‘SOCIAL’ and ‘STONE WATER’ or anything similar to them or any attempt to pass off its trademark in defendant’s outlets.

Both these outlets have entered into contract with popular websites like Zomato and Dine Out and so the information of both, along with menu and contact info is available on the websites of Zomato and Dine Out.

Issue

Without going into the merits of the case, the court must first satisfy itself that it has the jurisdiction to entertain the case. So, the issue before the court in this case was whether it had the jurisdiction to entertain the case or not?

Contentions

The primary contention of the defendant was that the court didn’t have the jurisdiction to entertain the suit as it neither had its registered office in Delhi nor it carried on any business in Delhi. Also, plaintiff’s registered office was located in Mumbai which was also outside the jurisdiction of Delhi HC. Defendant’s other contention was that the plaintiff failed to prove its principal office’s location as Delhi.

Responding to this, the plaintiff contended that it didn’t have any office or branch in Hyderabad and that its principal office for financing and licensing of all its brands was located in Delhi only.

The plaintiff also contended that due to the presence of the defendant on websites like Zomato and Dine-out, it was in a position to invite the customers of its plaintiff to visit its outlet in Hyderabad. This was vehemently opposed by the defendants as a misconceived proposition as mere booking or placing an order through internet was insufficient to conclude that a transaction had taken place.

The plaintiff had also contended that the defendant was planning to expand pan India as it had filed for trademark application which was opposed by the defendant stating that the plaintiff’s qua timet action lacks the necessary ingredients of any imminent danger.

Plaintiff also claimed that at least one customer from Delhi had booked a table in defendant’s outlet in Hyderabad and so the cause of action had arisen in Delhi.

Held and Analysis

Gupta J dismissed the case, for want of jurisdiction.

In reaching to this decision, the court relied heavily on the standards of jurisdiction set by the Delhi HC in the case of Banyan Tree Pvt Ltd. v. A. Murali Krishna Reddy[1]. In the Banyan Tree case, the court has held:

“…that the mere accessibility of the Defendants website in Delhi would enable this Court to exercise jurisdiction. A passive website, with no intention to specifically target audiences outside the State where the host of the website is located, cannot vest the forum court with jurisdiction.”

Necessary distinction was made between the ‘purposeful availment’ test and the ‘purposeful avoidance’ test. The court held that to establish the case, it was incumbent upon the plaintiffs to show that the defendants had purposely tried to target the customers of the jurisdiction of forum State. Once it was established, it was now upon the defendants to show that they had intended to avoid the availment of the jurisdiction of the forum State. Applying this in the case of the websites, the court held that mere interactivity of the website in the forum State did not attract its jurisdiction.

Considering the extent of burden of proof on the plaintiff to show that the defendant had purposefully availed the jurisdiction of the forum State, the court held that the defendant must enter in some commercial transaction with the customers of the forum State intending to pass off their goods as that of the plaintiffs. Material must be produced to the court by the plaintiff regarding the same and not the mere possibility of it.

The court thus held that even if the defendant attracted or had been able to attract the customers from other jurisdictions by way of Zomato and Dine-out, the customers would still be required to go to Hyderabad to avail the services. The best that could be done by the customers of other jurisdictions, the court held, was to book a table at defendant’s restaurant which ultimately led the completion of transaction at Hyderabad where the cause of action would eventually lie.

Despite being well reasoned judgement, the court has in this case intended to relate the cause of action with the completion of transaction. So, clouds of uncertainty still hover over the situation where delivery of goods can be made to the forum State or where assistance of an intermediary can be obtained. Not much can be said where the defendants are set ex parte as has happened in the previous case of Impresario Entertainment & Hospitality Pvt. Ltd v. Urban Masala[2] where Manmohan J. granted an ex parte injunction in the favour of the plaintiff against the defendant without even considering the jurisdictional claim.

Conclusion

The present case has dealt at length with the competency of the courts to entertain cases related to online transactions. Mere accessibility of the defendant’s website in the forum State can no longer be a ground for the courts to exercise jurisdiction.

Further, the law laid down in Banyan Tree (discussed here) has been upheld and the court has further narrowed down. The judgment in this case has paved the way for a more rigorous and consistent standard in determining the competency of the courts to entertain cases in case of online transactions.

Author: Hunney Mittal, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com.

References:

[1]CS (OS) No.894/2008

[2]CS(COMM) 441/2017

[3] CS(COMM) 111/2017

Personality Rights in Indian Scenario

Personality Rights

Personality rights means a right of person related to his or her personality. They can be protected under right to privacy or as a property of a person. This is important to mostly celebrities because people use a celebrity name or a photograph to advertise their trade and this usage influences their sales. Anyone can misuse a celebrity’s name or a photograph very easily for their trade, therefore it is important for a celebrity to register a trademark of their name to save their personality rights.

Position of Personality Rights In Indian Law

In India, the closest statute to protect personality rights is Article 21 of the Constitution of India under right to privacy and right to publicity. There is no statute or law that protects personality rights in India per se. Nevertheless, these days India also started recognising these rights through many significant judgements. One of the most important judgements related to personality rights was given in ICC Development (International) Ltd. vs. Arvee Enterprises[1], by the Delhi High Court in 2003, it was held that:

“The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice. etc. An individual may acquire the right of publicity by virtue of his association with an event, sport, movie, etc”.

Further, in TITAN Industries vs. M/s Ramkumar Jewellers[2] on 26th April 2012, the defendant used an identical advertisement hoarding to the Plaintiffs’ advertisement that featured the famous couple Mr. Amitabh Bachchan and Mrs. Jaya Bachchan. Further, the defendant also did not seek any permission or got into any agreements with either the couple or the plaintiff. Thus, the Delhi High Court granted the permanent injunction explaining the right to publicity:

“When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity”.

Also, in case of Mr. Shivaji Rao Gaikwad (aka Rajinikanth) vs. M/s. Varsha Productions[3] an Interim injunction was passed against the release of a film “Main Hoon Rajinikanth” by Varsha Productions by referring to the judgements from the above-mentioned cases.

The most recent case regarding the personality rights is Mr. Gautam Gambhir vs D.A.P & Co. & Anr.[4] on 13th December 2017, wherein the defendant was using Gautam Gambhir’s name in running their lounge and restaurant, which was mistaken by people to be associated with the said famous personality.  Thus, the applicant sued the defendant…

In this case the interim injunction was not granted as the defendant’s name was also Gautam Gambhir, apparently, he has to carry on his business in his name and he neither claimed that the business is related to the cricketer nor he displayed any pictures of the cricketer anywhere. He very prominently displayed his own pictures everywhere to show his own identity. And when the logo of the restaurants was being registered no objection was raised by anyone. Seemingly it was decided that the defendant has not made any use of the reputation of the plaintiff’s name in his trade. Therefore, the interim injunction was not granted, and all the pending applications were disposed of.

However, the case is again under consideration by Division bench of Delhi High Court which seems to focus more on Personality rights. Further, a notice was issued on 17th January, 2018 to the defendants DAP & Co for which the reply is expected on 20 March 2018[5]

Conclusion

From the above discussion it can concluded that, only the illegal and unrightful usage of the personality rights with unjust intentions are punishable under the law. To be more precise, it is clear by the above discussed case laws that a celebrity’s name can not be used for any commercial use without any prior consent of the concerned celebrity, as these celebrities acquire their brand value through their hard work. Therefore, any use of their name or photographs that is commercially utilized, must be exploited by the celebrities themselves and no one else.

Author: M. Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at anirudh@khuranaandkhurana.com.

References:

[1]2003 (26) PTC 245

[2]2012 (50) PTC 486 (Del)

[3]2015 (62) PTC 351 (Madras)

[4]CS(COMM) 395/2017

[5]https://theindianjurist.com/2018/01/18/delhi-high-court-decide-plea-gautam-gambhir-gautam-gambhir/

[6]  http://www.mondaq.com/india/x/345080/Personality+

Rights+Need+For+A+Clear+Legislaton

[7] https://indiankanoon.org/doc/181125261/

[8] https://indiankanoon.org/doc/26058025/

[9] https://indiankanoon.org/doc/106318101/

[10] https://indiankanoon.org/doc/358048/

 

Jaypee Infratech Insolvency Case

Introduction

The Inception of Insolvency and Bankruptcy code [IB Code] was envisaged as a historical moment in the Indian corporate sector as it is a single uniform comprehensive legislation that aims at a speedy solution to corporate insolvency through an established time bound procedure, early identification of financial failure, and other such broader reforms that aimed at increasing the ease of doing business and safeguarding the right of creditors.

However, after the implementation and a numerous judicial adjudication on the code, certain lacunas have surfaced. The Supreme Court and National Company Law Tribunal’s [NCLT] adjudication in the jaypee infratech case has created a suspicion whether all the stakeholders are covered under the ambit of the umbrella legislation i.e. the IB Code.

Facts

The Jaypee infratech project started its wish town city project in Noida. Two subsidiary companies of Jaypee group were involved, firstly the Jaiprakash Associates Limited(JAL) which allocated the letters to homebuyers; secondly, Jaypee Infratech Limited (JIL) who received the payments in its bank account from the homebuyers.  It collected 25000 Crore rupees from around 35000 homebuyers.  However, years after its inception the project remains abandoned  and merely a skelton has been built for the purpose of appeasing the homebuyers that something is built. It is alleged that in the guise of wishtown city project that the money was diverted to Jaypee group’s other flagship projects such as formula one racing centre and the Yamuna Expressway. It was further alleged that the Jaypee group had assumed that it will take years for the Indian legal system to adjudicate just in case any litigation arises out of the matter.

A small group of homebuyers aggrieved by the pace of the project, approached the National Consumer Disputes Redressal Commission (NCDRC) but much to the disappointment of the homebuyers, the commission did not adjudicate on the same. The Apex court decided  to hear the matter through a Public Interest Litigation(PIL) that came after the adjudication by the NCLT and presently,  the matter is sub-judice before the supreme court.

NCLT

The matter came up before the Allahabad bench of NCLT after a petition by the IDBI which advanced a loan that amounted to approximately 526 crore rupees to the company. The company did not pay back to the bank and since bank was a secured creditor it had the right to ask for Insolvency Resolution Process (IRP) under section 7 of the IB Code.

Jaypee group agreed to pay back the amount to the bank as it had the capacity to do so and by paying back it would be eligible for loans afresh and then it would be legally free from its obligations. As the homebuyers do not fall under the ambit of secured creditors, the jaypee group did not have a legal obligation to pay them. Hence, it was a win-win situation for the company. Thereafter, homebuyers and other stakeholders realized that they are not adequately represented under the IB Code, but however, homebuyers are vital stakeholders in real estate industry sector, they should have been NCLT adjudicated to pay back the outstanding amount of 526 crore rupees to bank. The ruling was a huge setback to the homebuyers as there saving and investments both were jeopardized and they lost the money and remained without the home.

Supreme Court

The homebuyers then moved to the Supreme Court which recognized the glaring lacuna and error and adjudicated that the interest of the homebuyers are supreme and cannot be left unrecognized and unattended. Chief justice Deepak Misra said that “the savings of the homebuyers cannot be brushed aside by citing technical reasons”, in furtherance of such reasoning it directed Jaypee group to deposit 2000 Crore in installments to the Supreme Court’s registry.  The apex court further restricted the owners of Jaypee group to not to alienate their properties. Supreme Court through such an order has lifted the veil of Jaypee group by holding it accountable for the works of its subsidiaries and it also moved beyond the principle of Limited Liability. It has asked the Insolvency Resolution professional Anup Jain to submit resolution plan within 45 days, to which IRP has asked entities and companies to invest in the infrastructure project.

Conclusion
The Supreme Court surely did save the saving of the homebuyers or at least has taken an affirmative action in that pursuit. However, the case has brought up to the surface a glaring error that IB Code do not recognize homebuyers as secured creditors and furthermore do  not provide any remedy to their redressal. Another issue that surfaced was whether NCLT which was introduce to eliminate multiple judicial proceeding in different forum living up to the expectation? As in the instant case, the proceeding went on in 3 forums i.e. NCLT, NCDRC and the Apex Court. Thus it is high time for the legislators to revise and amend the IB Code and make sure that it is includes in its ambit all the stakeholders.

Author: Udit Rao, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] https://thewire.in/180623/the-supreme-court-was-right-to-pierce-the-jaypee-groups-corporate-veil/

[2]http://www.mondaq.com/india/x/492318/Insolvency+Bankruptcy/ The+Insolvency+And+Bankruptcy+Code+2016+Key+Highlights

[3]https://www.hindustantimes.com/delhi-news/jaypee-case-sc-order-exposes-lacuna-in-insolvency-code-necessitates-amendment/story-gkepfqG89dN1yEpn34Tm7H.html

[4]http://www.moneycontrol.com/news/business/real-estate/jaypee-infratech-case-nclt-appointed-irp-assures-homebuyers-about-protecting-their-interest-2461555.html

[5]https://economictimes.indiatimes.com/industry/indl-goods/svs/construction/jaypee-infra-insolvency-irp-floats-eoi-for-resolution-plans/articleshow/61270387.cms

[6]http://www.livemint.com/Companies/iVh7ezzQHlmWzQUeE2oq1K/Supreme-Court-asks-for-interim-plan-in-45-days-that-protects.html

[7]http://www.livemint.com/Companies/j8sM2nvn5j0hdu81xNvRVJ/IRP-in-Jaypee-Infratech-case-invites-firms-to-submit-resolut.html

[8]https://www.makaan.com/iq/news-views/jaypee-in-insolvency-case-home-buyers-to-raise-claims-till-august-24

Growth of Digital Economy – A Challenge for Competition Regulators

Introduction

Competition policy is a public policy which is aimed at ensuring that competition in the marketplace is not restricted in any manner that is detrimental to the society. The most significant goal of competition policy is to shield society from harmful competitive behaviour[1].

Digital economy is dynamic and fundamentally different from other sectors. Digital services have a unique feature of network effects, which means that a product or service gains additional value as more people use it. This, on one hand promotes concentration of markets, but at the same time there are multiple routes through which digital services can be delivered to the end users for example, the daily news can be watched via TV, websites, apps and social media and on devices such as phone, tablet or PC.  This implies that entrants can challenge market power more easily and fast.

The dynamic growth of the digital markets has resulted into competition problems. These arise specifically  in certain areas such as digital monopolies., tax planning, problems with patent etc[2]. Service providers and content developers have myriad options for delivering content or services to end-users, who experience it through different electronic mediums such as phone, TV, social media etc. Once digital companies acquire dominant position, they end up creating a dead lock for users at both ends of the platform and make their intervention indispensable[3].

Pre-emptive mergers are an indication of the same. In this model a merger is made by acquiring a smaller company, so that potential competition that can pose harm to the company’s business model can be thwarted. This set of multiple exclusive agreements are potentially problematic because they hamper competition and innovation[4].

However, it is difficult to make a distinction between anti-competitive motives and normal business strategies in digital commodities as it largely involves future markets. Anti-competitive behaviour refers to rival interactions that are not based on the merits but on collusion or foreclosure and impose harm to competitors and consumers. The dynamic nature of digital markets makes collusion unlikely. The challenges for analysing anticompetitive behaviour in digital markets mainly relate to foreclosure and bottleneck leveraging[5]. An error in labelling such strategies as anticompetitive may adversely impact the market dynamics. Competition authorities should be cautious to not label all acquisitions as anti-competitive, as sometimes these take overs serve as an incentive for smaller firms to innovate[6]. Similarly, traditional methods of assessing relevant market and dominance; which include describing market boundaries, analysing market power, whether the behaviour of the firm is anticompetitive, is not the most pertinent approach now. This is because digital firms have dynamically been redefining the boundaries of markets by competing largely on the basis of innovation, which has redefined the structure of the markets. Therefore, market shares or profit margins are less useful for determining market power.

Challenges in India

Technology companies are generally revered for their innovation and efficiency, however, as highlighted above, such businesses are susceptible to acquisition and abuse of market power. The Indian competition scenario is evolving rapidly and has stared facing these concerns. Apart from acquisition, another way to establish market power is to entice users by subsidising their goods with the help of their financial capital. This strategy is particularly more attractive for big firms having access to larger financial capital, who resort to practices like deep discounting, cash-back offers and other schemes designed to attract new users and establish the network effect[7]. Sometimes, they sustain heavy losses for years on end. Companies such as Uber, Ola and PayTM have adopted this strategy[8].

These practises are now becoming increasingly difficult to be juxtaposed with an introductory offer by a new player, rather they appear to be systematic competitive strategies which are using capital as their competition weapon. This raises the primary concern of market eventually tipping in favour of the player, which might not have the most innovative product or service, but the one that can manage to obtain huge capital and entice as many users as possible through its introductory offers. This might appear to serve interest of both the entities initially but in the longer run, such practises raise concern about competition in terms of market power and then raising prices in following years when losses are recouped.

Such issues have come to the attention of the Competition Commission of India (CCI) recently. The CCI, in April 2015, passed a prima facie order which recommended a detailed investigation into the allegation that Ola had indulged into abusive market practises to garner greater market power in Bengaluru from substantial funding received from various investors[9]. Apart from this, CCI has setup an in-house panel to understand the practise of cash-back incentive that are offered by various online companies from the point of provisions of  predatory pricing under Competition Act, 2002[10].

Strong network effects exist in the market, which result in significant inequalities in profits and market share, even if any specific anti-competitive practise does not exist[11]. In such a situation, if the competition authorities try to influence the market structure in any way, for example by inducing more competition, it might have adverse effect and may diminish overall surplus. Therefore, it is important to distinguish between a situation where a firm has adopted exclusionary practise to turn the market condition in its favour and the natural competition that exists in the market. After the said distinction and subsequent identification, the interventions required by competition authorities to correct these problems must be prompt. It is an established fact that the pace of growth of internet based businesses is much more rapid than the traditional sectors. The Supreme Court of India has noted that in the event of any such delay, the very purpose of the Act shall be defeated and there shall be possibility of great damage to the market, which will inevitably affect the country’s economy[12]. A major requirement for this is the adoption of a robust mechanism of findings by the competition regulation agencies to ensure that they keep abreast with the dynamic market conditions. One way to enforce this is by letting the competent authorities accept commitments from the firms whose conduct hint at possible concerns related to competition and thereby thwart detailed investigation.

In situations where there are instances of competition elimination by dominant players in event of acquiring smaller firms, CCI could follow the approach of European Court of Justice (ECJ)  and review such agreements under section 4 of the Act[13], which deals with abuse of dominant position. In the Continental Can case[14], the ECJ was of the view that Article 102 of the TFEU, which is similar to Section 4 of the Act, can be used to regulate practises of dominant entities acquiring competitors and thus abusing the prerogative of their position. The way to determine this is, if the position of the undertaking in the market is very prominent and acquisitions can have potential to curb consumers’ freedom of action in the market, then irrespective of any fault of the such undertaking, the action would qualify as abuse of dominant power.

Further, while examining the practises of big companies with considerable capital, who eliminate their competitors by luring customers through their practise of below-cost pricing as introductory offers, CCI should give due regard to the economic principles that form rationale of these businesses and the impact their practises are going to give in the long run. This would include focusing not just on market share of these firms but the overall scenario such as status of funding of the industry, whether the primary goal is expansion and existence of incentives for the firm. CCI should also analyse the investment pattern of the firms who invest in these companies that expands their capital pool.

However, substantial funding by companies should not, by default, be assumed to be an indicator of unfair market practises. Such an assumption could severely jeopardise the investment inflow in the most dynamic sector in the country.  Another crucial aspect is to assess the possibility of recoupment in the sense, whether it is feasible for the company to maintain its prices at a level so that it can recover the loss it incurs. It could be useful as it would give idea of the harm that the consumers may incur in the long run, once the company is successful in eliminating its competitors and establishing a monopoly[15]. Due to below cost pricing, firms initially incur losses but then after establishing a monopoly raise the prices, leaving consumers with very little alternatives.  This assessment should also be extended to ‘predatory prices’ even though it is not a requirement as per the provisions of the Act as continued predatory pricing also has the potential to drive the competitors out of the market or could create high entry barriers which makes it unprofitable for new firms to enter the market, which subsequently establishes a monopoly of the firm[16].

In addition to these, CCI should adopt methods that facilitate interoperability between dominant payers that could indulge in anti-competitive practises with other players in the market[17]. This would facilitate access. For instance, if an interoperability requirement is imposed on a dominant payment network, such as PayTM, it will help extend the network effect of this on the whole digital economy, rather than being limited to a network. But this has to be balanced with other factors such as reasonable access fee, the structure of this arrangement; its complexity and impact on future prospects of innovation.

In this fast paced digital economy and emergence of increasingly technical issues, it becomes difficult for authorities to intervene in time and prevent further harm to competition. Therefore, competition authorities should consider a possibility of adopting a system of voluntary settlement of cases[18]. This will encourage the firms indulging or having the potential to indulge in anti-competitive practises to alter their behaviour and avoid a detailed investigation. This would ensure that CCI is in a better position to avert the harm and before market structure has irrevocably moulded in one party’s favour. As for the cases that do go through a detailed investigation, there should be strict time bound periods for both investigation and issuance of final order so that the findings remain uniform and pertinent despite the dynamic economy.

Section 2 of the Sherman Act in the United State recognises an ‘attempt to monopolise’ as an anti-trust violation[19], whereas The Competition Act 2002 requires that there has to be conclusive evidence of dominance before any action is taken. A possibility of adopting such practise in India can be considered by CCI, wherein it should be empowered to look into situations wherein the firm is not presently dominant but has systematically been using benefits of network effects and venturing in the path of dominance. Such a mechanism would enable CCI to implement preventive mechanism from abusive practises but on the other hand may foster a new regime that would deter new entrants from entering the market. This prospective can further be weighed on its merits depending upon the growth of Indian Online sector.

Conclusion

Distinct economic features of high technology businesses should be taken into account and practises like deep discounting, cash back offers, when looking in to the allegations of adoption of anti-competitive practises by them. For this, a robust economic analysis of the impact of increasing returns to scale and network effects is essential for understanding the present and future impact of these practices on competition and consumer interests. There can also be collaboration between the investors in the multiple firms that they invest in.

The gains that the consumers incur from the heavy discounts are short run and there is a need to assess it in a larger context. The recoupment test examines the extent to which market power can be achieved in the future, after which prices can be raised. This test can be used to assess the pattern of behaviour of the firms which are not very big presently but might become dominant in the future after driving out its competitors and would then raise prices and recoup earlier losses.

Further, in appropriate cases, the CCI could rely on the essential facilities doctrine to facilitate interoperability between a dominant player, that is found to be indulging in the abuse of its position, and other operators in the market. This would promote the extension of network effects and would not limit the economy from being a one.

In the fast-changing nature of online businesses, there are concerns that the time taken by detailed investigation would delay the process of determination of violation and taking of subsequent steps to prevent it. CCI needs to work towards adopting stricter time frames for the disposal of cases, particularly those relating to firms forming part of the digital economy. Also, a voluntary settlement process can be adopted that will allow a business that is under investigation to voluntarily alter its market behaviour, so that detailed process of investigation is avoided.

The authorities must follow a future-oriented approach because of the central role that potential competition plays in the process. In practice, this means following an approach that is cautious and relies on power of self-correction of digital markets. There should be greater involvement of external IT experts that can understand the business model of the companies better, so that they can be regulated more efficiently and authorise can understand the future trends better.

There should be a milieu of cooperation with competition authorities from various nations/continents as the digital economy, and thus the relevant geographical market, has become worldwide in scope.

Author: Ms. Simran Jain, intern at  Can be reached at swapnils@khuranaandkhurana.com

References:

[1]Motta, M., Competition Policy: Theory and Practice. Cambridge: Cambridge University Press, 2004

[2]https://www.law.ox.ac.uk/sites/files/oxlaw/oscola_4th_edn_hart_2012.pdf

[3]Greenhalgh C, Rogers M, ‘ Innovation, Intellectual Property and Economic Growth.’ (2010) Princeton University Press

[4] Ibid

[5]European Parliament(n 3)

[6]https://timesofindia.indiatimes.com/business/india-business/Lets-merge-Flipkart-tells-Myntra/articleshow/29582969.cms

[7] C Graham, F Smith (eds.), “Competition, Regulation and the New Economy,”(2014) p. 17 to 53. Hart Publishing

[8]http://www.nipfp.org.in/media/medialibrary/2017/04/WP_2017_194.pdf

[9]Fast Track Call Cab Private Limited v ANI Technologies Pvt.LimiitedCase No. 6 of 2015, Order dated 3 September 2015

[10]SmritiParsheera, Ajay Shah and Avirup Bose (n 9)

[11]http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.457.8414&rep=rep1&type=pdf

[12]Competition Commission of India v. Steel Authority of India Limited(2010) 10 SCC 744

[13]Section 4, The Competition Act 20012

[14]Europeamballage Corporation and Continental Can Co Inc v. Commission [1973] ECR 215

[15]Rubinfeld DL, ‘Antitrust Enforcement in Dynamic Network Industries.’ The Antitrust Bulletin, Fall-Winter (1998) 859 to 882

[16]SmritiParsheera, Ajay Shah and Avirup Bose (n 9)

[17]Farrel J, Katz ML, ‘The Effects of Antitrust and Intellectual Property Law on Compatibility and Innovation.’ (1998) Antitrust Bulletin, Fall-Winter

[18]SmritiParsheera, Ajay Shah and Avirup Bose (n 9)

[19]United States v. Grinnell Corp. 384 U.S. 563, 57071 (1966)

 

Mattel, Inc. and Ors. V. Aman Bijal Mehta and Ors

Introduction

The use of catchy words and established brand name in a song, to attract the attention of the viewer is not something that is new these days. This was witnessed in Salman Khan starrer “Dabangg”. The movie used the words “Zandu Balm”, a product of Emami group (hereinafter Emami), in one of their songs. Emami served a legal notice on the makers of the movie for copyright infringement. However, the parties i.e. makers of Dabangg and Emami agreed mutually and the matter was settled out of court. The author further would be discussing one of the latest instances before the High Court of Delhi, in the matter of Mattel, Inc. and Ors. V.  AmanBijal Mehta and Ors [1], wherein a similar situation had cropped up.

Background

“Tera Intezaar” is a Sunny Leone and Arbaaz Khan starrer. The movie was scheduled to be released on 24th November, 2017 but was eventually released on 1st December, 2017. The movie contains a song with the word ‘Barbie’ while the chorus line of the Sunny Leone song is, “I am a sexy Barbie Girl”.  Mattel Inc. is the manufacturer of the trademark Barbie dolls. The makers of the movie received a notice from Mattel Inc. just three days before its release, objecting to its song “Barbie Girl”. The two major contentions of Mattel Inc. were:

  1. Mattel had alleged that the song represents their product i.e., Barbie in a manner which is detrimental to the values and interests of the target customer base that they cater to.
  2. Mattel had objected to the actress featuring in the song, as she is a prominent figure from the adult entertainment industry and most of the customer base of Mattel’s product is younger girls and children. According to Mattel Inc. this would be inappropriate and also would degrade the distinctive mark that Barbie holds.

In a similar case between Mattel Inc. V. MCA Records Inc [2].

The song, by a Danish group called Aqua, includes the lyrics, “I’m a Barbie girl, in a Barbie world.”

Mattel claims that the customers who buy Barbie dolls were duped into thinking that the song was an advertisement for the doll or part of Mattel’s official line of Barbie products. Mattel also claims that Ad materials for the song used the same electric pink colour which is used by Mattel for packaging Barbie dolls.

MCA sold an estimated 1.4 million copies of the recording. The music company calls the song a parody protected by the First Amendment. Mattel lost in lower courts. California-based 9th U.S. Circuit Court of Appeals rejected the notion that consumers were misled by the song. Appeals Judge Alex Kozinski, known for colourful language wrote “the parties are advised to chill.”

Facts of the case

Mattel Inc. with its subsidiary Mattel Toys (India) Pvt. Ltd (hereinafter plaintiff) raised the same heat and filed a suit against the makers of the Film despite the uncommon advice.

Barbie has been identified as a well known trademark in various jurisdictions. The plaintiff is the owner of the trademark “Barbie” and other merchandise related to or connected to it.

The plaintiff, around 15th November, 2017, came across a music video on YouTube of a song titled “Barbie Girl” from the movie “Tera Intezaar” scheduled to be released on 24th November, 2017. The title and lyrics of the song used the trademark “Barbie” without an authorisation of the plaintiff and in a manner that will harm interests of the target customer of the Plaintiff. The sales in India of Barbie products over the last five years have exceeded 2000 million Indian rupees.

Plaintiff claims that the defendants have adopted the mark “Barbie” in order to generate publicity and attract unwanted attention for commercial exploitation and gain. The Barbie girl in the impugned song has been impersonated by an actor who is a prominent figure from the adult entertainment industry.

Analysis by the court

The Court observed that an ex parte order as sought by plaintiff, restraining the defendants from releasing the film “Tera Intezaar” with the impugned song would send a wrong signal to the public at large since CBFC has not granted a certificate to the movie.

Justice End law then noted that the Central Board of Film Certification (CBFC) had been tasked with imposition of “prior restraints” on movies. It, therefore, opined that once a film is cleared by the CBFC, it is presumed that the same is not defamatory. He further added “If after a film has been so cleared by CBFC, the Courts were to act as super Censor Board at the mere asking, it will have the potential of imposing arbitrary and at times irrational prior restraints causing severe damage to the right of freedom and expression.”

Mattel under section 151 of CPC applied to conduct the ex parte hearing ‘in camera’. Court rejected the application as it did not see any point in holding only ex parte hearing ‘in camera’ and entire trial in open court.

The court was of the view that ex parte order to restrain the defendants from releasing the film “Tera Intezaar” with the impugned song, ought not to be granted.

The court was of the opinion that it will be prejudicial to the plaintiff if it did not take into account the compilation of the judgements on the points related to Bloomberg, deletion and removal; (ii) infringement through objectionable content; and, (iii) trademark dilution; and, on (iv) in camera proceedings.

So, Justice End law in the order stated “It will be open to the counsel for the plaintiffs to, with or without a copy of this Order, call upon the defendants to delete the word “Barbie” from the impugned song and to notify the defendants that on their failure to do so, the plaintiffs would be entitled to damages from the defendants.”

Accordingly the makers of the Film changed the song’s name to “I’m Sexy Baby Girl.

Critical appraisal

According to author the court’s view that, the CBFC clearance is the prima facie assumption on the legality of the work and the courts acting as superior censor will dilute the worth of freedom of speech, is the right stand.

The court considered the angle of public interest, with regard to ex parte order as sought by plaintiff, restraining the defendants from releasing the film Tera Intezaar with the impugned song. This was an important consideration pursuant to the recent chaos created on the release “Padmavat.”

Author: Ms. Aditi Limaye, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] 20182018AD(Delhi)3, 245(2017)DLT677

[2] 296 F.3d 894

[3] http://www.livelaw.in/toy-maker-mettel-objects-song-barbie-girl-upcoming-film-delhi-hc-denies-interim-relief-read-order/

[4] https://spicyip.com/2010/09/no-zandu-balm-for-dabangg.html

[5] http://indianexpress.com/article/entertainment/bollywood/sunny-leone-tera-intezaar-sued-barbie-song-makers-win-case-4957334/

Thank ‘God’! It Is Not Trademarkable: Analysing the Monopoly over the Names of Gods and Holy Books

Rumours have it that Hindus have 33 Crore Gods. From an IPR perspective, it simply means that there are 33 crore names that are in a fix as potential trademark names. The recent judgement of Bombay High Court in the case of Freudenberg Gala Household Product Pvt. Ltd. v. GEBI Products Ltd[1] has opened the Pandora’s box of whether names of Gods should be registered as trademarks. The problem also lies in trademarking names of Holy Books like Ramayana and Mahabharata. Claiming monopoly and enjoying exclusivity over such names poses a threat to the commoners as well as the devotees.

The names of Holy books and Gods are considered good luck and show positive meaning, and thus are preferred by many while associating brand names. For example, ‘Ganesha’ means auspicious and good start whereas ‘Laxmi’ is associated with good fortune. These names do not possess distinctiveness in itself and to acquire secondary distinctiveness, it has to draw commercial magnetism so that the brand name and business become synonymous in public mind.  There has to be some kind of mental association in the minds of the purchaser. However, the registration of such names as word marks, should ideally be refused as names of Gods like Laxmi or Ganesha raise the question of distinctiveness. Mostly the Courts have held that it is difficult to get distinctiveness on God’s name. The consumer has yet not been able to associate any brand with that of the God’s name. However, that remains a question of fact whether a common word like that of God’s name, has acquired secondary meaning or distinctiveness and thus will depend from case to case.

The problem lies not only in the names of Gods and Goddesses but also in using names of Spiritual leaders. Denial of exclusivity over the names of spiritual leaders has been reasoned as no commercial monopoly can be allowed over a religious figure. Italian Supreme Court in in the case of George V. Entertainment S.A. and George V. Records E.U.R.L. v. Buddha CafèS.r.l.(Decided on: 26 January 2016, No. 1277) denied registration of Buddha as tradename of a coffee café in Milan.  The Applicants argued that Buddha was distinctive as tradename and had no connection with coffee; hence was an arbitrary fanciful name. The Court held that the tradename calls out religion but also directs a way of life.

Another situation that arises is when the names of Gods are used for registration of products which are condemned or bad in nature. In the case ofA.T. Raja, Madras v. Mangalore Ganesh Beedi Works[2], the trade name used on the pack of cigarettes was ‘Ganesha’. The case was contended on two arguments. Firstly, that the product was not good in nature and is vice in Hinduism. Secondly, people would use the pack with pictorial depiction of Ganesha and throw it in the bins after use. The Allahabad High Court rejecting the contentions held that nothing was shown to suggest that smoking hurts religious susceptibilities and also observed that photographs of Gods are used in wedding invitation cards by Hindus. Once the purpose is over, the cards are also thrown in the dustbins. The progressive interpretation of the Court was well appreciated. The Court had used judicial wisdom and not believed in literal interpretation of Section 9 (2)(b) of the Trademark Act.

Practically speaking, the image of the God and Goddesses can only be used as Intellectual Property by someone who is most likely not traceable today. Trusts like that of Sabarimala Temple are mere custodians of the deities. From the cases discussed in the paper, it is clear that the Courts have taken a strict stand on handing exclusivity of God’s name as that would prohibit the devotees and the commoners from using the name. What is not being discussed currently by the Indian Courts is the implications of registering names of Gods, Spiritual leaders and Holy books. The decision is only settled when there is any other party who opposes the usage of such names. The only exception being Kerala High Court in Sabarimala case who had suo-moto initiated proceedings. However, the Court dismissed the proceedings.  It is high time that the Registry takes into action the above discussed ratios before allowing and refusing such trade names.

The Courts are also not examining the Constitutional aspect of the rights enjoyed by the Trusts on such registration of names. One more question that remains unanswered is on the limit of inclusion of class whose names can hurt the religious susceptibilities. Can we not trademark the names of demigods, saints, kings and creatures from all mythological stories too? If such trademarks are allowed in future, then ‘God’ knows how many popular images in public domain will be allowed to enjoy exclusivity in the hands of proprietor.

Author: Ms. Esha Himadri, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] (Unreported, Commercial Appeal No. 72 of 2017, Decided on: 01.08.2017)

[2] (1999 19 PTC 104)

[3] Lisa E. Cristal and Victor F. DeFrancis, ‘Choosing and Defending a Trade Mark’ [2000] Vol. 17 No. 3, Protecting Intellectual Property.

[4]https://spicyip.com/2017/08/not-in-gods-name-bombay-hc-refuses-monopoly-over-names-of-hindu-gods.html

[5]https://spicyip.com/2015/12/supreme-court-says-no-trademark-registration-for-names-of-holy-books.html

[6] Osho International Forum v Osho Dhyan Mandir [2000] CN FA0006000094990, National Arbitration Forum, USA.

[7] Picture of the deity – Trademark No. 1420800 and the title ‘Sabarimala of Women’ -Trademark No. 1420799 under Class 42 of the Trade Marks Act, 1999.

[8] Eighth Standing Committee Report on the Trade Marks Bill, 1993, Clause 13.3.

Izuk Chemical Works v. Babu Ram Dharam – Part of Trademark Infringed

It is well established that a Trademark have to be used in its totality. A trademark having several components in it, when registered, is taken as a whole. Whereas, according to Section 15 and 17 of the Trade Mark Act, 1999, if the applicant seeks exclusive rights over a part of trademark then he may have to register that part separately.

Despite the fact that there are various provisions dealing with trademark to be used as a whole, the Delhi High Court passed a judgment stating otherwise in the case of Izuk Chemical Works v. Babu Ram Dharam Prakash[1]  in 2007.

In this case, the plaintiff filed a suit seeking relief of permanent injunction and to restrain the defendants from infringing its trademark. The plaintiff was engaged in the business of manufacturing and trading bleaching preparations and other various substances for cleaning, polishing, laundry use etc. since the year 1917. The plaintiff since then is conducting his business under the trademark ‘MOONSTAR’ and has adopted a device of a star in the lap of the moon. By virtue of long and extensive use of the trademark since the year 1917 and of the label since 1998, the trademark and the label have become distinctive and are associated with the goods and business of the plaintiff.

The plaintiff therefore filed a suit against the defendant for malafide and fraudulent acts done by him by using the similar/identical Trade Mark dealing with the manufacture and trade of goods similar to that of the plaintiff. The plaintiff claimed that the defendant dishonestly copied all the essential features of the plaintiff’s trademark and label and is trading henna under the mark ‘SUPERSTAR’. When the suit was filed, the plaintiff was aggrieved by the similarity between the cartons in which the plaintiff was marketing its products and those adopted by the defendant. The same colour scheme, device of a woman and the expression ‘herbal henna’ were displayed in an identical position on the front of the carton as they appeared on the plaintiff’s cartons. The defendant had also copies the device of the star and displayed the same in a similar manner as displayed by the plaintiff with the mark of registration of the trademark and had printed the word ‘SUPERSTAR’ in the same colour and style as the plaintiff’s ‘MOONSTAR’ on its carton. The back of the defendant’s carton was almost identical to that of the plaintiff with same identical changes in the language in which the printed material was displayed and the contents of the information which was given.

Going through the above contentions, the court held:

  1. That the plaintiff has established a prima facie case of infringement of its registered trademark by the defendant. The trademark adopted by the defendant contains an essential part of the plaintiff’s trademark that is used for trading.
  2. The goods dealt by the defendant and the plaintiff are same and the mark used by the defendant is also very similar to the plaintiff’s mark.
  3. The plaintiff also established reputation and goodwill in its business under such trademark which would undoubtedly suffer irreparable loss and damage if the defendant is not restrained from continuing with its offending acts. The balance of convenience, interest of justice and equity lie in favor of the plaintiff and against the defendant. The potential customers would consist of literate, semi-literate and even illiterate people who by virtue of the adoption of the word ‘Star’ as part of its trademark by the defendant as also the device star would be persuaded to believe that the product of the defendant is associated with that of the plaintiff’s.

The application was allowed and the defendants were restrained from using plaintiff’s trademark ‘MOONSTAR’ or any part thereof for manufacturing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner for its products or business. The defendants, proprietors, promoters, retailers, their agents, partners, servants, assigns, representatives, successors, distributors and all others acting for and on their behalf are also hereby restrained from using the device of star in the lap of the moon or any portion thereof for its products or business. The defendants are also restrained from using any other trademark or device identical or deceptively similar to that of the plaintiff amounting to infringement of plaintiff’s registered trademark; or violating the plaintiff’s common law rights in the trademark.

It is therefore, clear from the above judgment that the Court overturned the provision that trademark has to be considered as a whole and that the applicant may have exclusive rights over a part of his trademark if it contains an essential part of the whole mark.

Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] 2007(35)PTC28(Del)

[2] https://indiankanoon.org/doc/1165153/

Copyright and Reality TV Shows

There is a thin line between inspiration and infringement. Copying a script in a unique way is inspiration, but “in an original way” it is an absolute infringement of that right. Copyright cannot protect “ideas” but only the mere expression of the same.

There are so many reality TV shows in the present day, it is not easy to get protection for your concept and distinctiveness. No reality show with a generic script can fight for infringement in the Court. It is essential to show the copying of the “formats” of the concept and how unique they are.

1. The recent case of Zee Entertainment Enterprises Ltd. v. Sony Pictures Networks[1] (Bombay High Court) The plaintiff, Zee Entertainment claims that its popular show ‘India’s Best Dramebaaz’, a televised talent hunt for child actors in the 5-12 age group has been illicitly copied by the defendant, infringing its concept note and ‘production bible’. Zee contended that Sony’s upcoming show ‘Sabse Bada Kalakar’ is a copy of ‘Indias Best Dramebaaz

The court held that though Zee’s goodwill and reputation were not disputable, the other two factors of the classic trinity test, i.e. misrepresentation and damage, were not sufficiently addressed through the material presented. The court also observed that though copyright vests in a production bible and concept notes as they are not just ideas but expression of ideas, it does not follow that every page of a production bible or concept note enjoys the same level of protection. In a teeming industry like entertainment, common elements are bound to be found and a person claiming copyright in some aspect of a show must not readily claim copyright in relation to matters which are incontestably in the public domain.

2. The most famous case for reality show and infringement is Anil Gupta v. Kunal Gupta and Ors.[2] 2002 (Delhi High Court), where the plaintiff, a media consultant, in the year 1996, conceived an idea of producing a reality television program containing the process of match making to the point of actual spouse selection calling it “Swayamvar”. Mr. Sibal, the learned counsel for the plaintiff contended that it is a unique and novel concept for a T.V show and the registration for the concept was accepted for which a certificate was also issued in 1997. The defendants (who had discussed the same with the plaintiff before and showed interest in the same, later declared of launching a big budget reality TV show which would also provide for a platform for matchmaking called “Shubh Vivah”. Mr. Sibal (Counsel for Petitioner) later contended that the copyright was for creative, unique and novel TV show to conduct a real life matchmaking that was being infringed by the defendant.

The Court held that the plaintiff has prima facie proved that the defendants were aware of the unique concept that was developed by the plaintiff and balance of convenience lied in favour of the plaintiff and thus granted injunction against the defendant. Therefore, the defendants were restrained from transmitting the television show “Shubh Vivah” or any show similar to that of the plaintiff’s.

3. Another curious of copyright infringement of a reality show is Urmi Juvekar Chiang v. Global Broadcast News Limited[3] 2007 (Bombay High Court), which was on the similar lines of the above- mentioned case. Here, the plaintiff conceived an idea of a reality television programme, tilted “Work in Progress” which would follow citizens from different parts of the country as they took the initiative and set out to solve a civic problem of their choice in the locality. The plaintiff transformed her idea into a concept and prepared a concept note sharing it with the defendants. The defendants showed interest and after various meeting with the plaintiff, the matter was not concluded. Later, the plaintiff came across a promotion of the reality show, “Summer Showdown” having the same concept, launched by the defendants clearly indicating the infringement of the plaintiff’s rights. The Court restrained the defendants from exploiting the plaintiff’s work without her consent.

From the above cases it is easy to conclude that copyright cannot protect an idea or a concept but only the form in which it is expressed. The cases above also conclude that copyright can also exist in a particular “show format”. Format elements, which are generic i.e common to the particular genre like game show, talent show etc. cannot be protected and will be ignored in assessing infringement. To succeed infringement, it is necessary that the infringer is reproducing a substantial part of another show’s format and not just copying the generic idea as to the concept of the show.

Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1]  AIR2017Bom221

[2] AIR2002Delhi379

[3] 2008 (2) BomCR 400, 2007

[4] http://www.mondaq.com/australia/x/45732/Trademark/IP+

The+Next+Big+Thing+In+Reality+TV

[5] https://indiankanoon.org/doc/712028/

[6]https://indiankanoon.org/docfragment/89959670/?formInput=zee%20entertainment%20v%20sony

[7] https://indiankanoon.org/doc/582634/

Pharmaceutical Patents a Threat to India’s Drug Industry?

The Indian Pharmaceutical industry is one of the largest, ranked fourth in the world in respect to the production volume. Over the last three decades, the industry’s growth has resulted from no existence to a world leader in terms of production of high quality generic drugs.

 Prior to 2005, no patent was granted on medicines in India, which resulted in the growth of the generic drugs manufacturing industry that helped treatment diseases like HIV/AIDS, tuberculosis, cancer, etc. around the world. This made India the prey of the larger pharmaceutical companies like the U.S. and Europe who believed that the patent protection for such drugs is necessary for further innovation.

 As according to Medicines Sans Frontieres (MSF) report, “Sick people around the world depend on Indian producers to manufacture affordable generic versions of new medicines.” This has changed since after India became a signatory to WTO (World Trade Organisation).

Now, a large number of generic drugs are being patented in India including vaccines making it difficult for the industry to produce life-saving medicines. Various patient groups note that India’s ‘strict’ patent regime was one of the reasons why drugs are available at affordable prices in India. Cancer Patients Aid Association (CPAA) Chairman and Chief Executive, Y.K. Sapru quoted, “interventions and patent challenges by patient groups have helped to reduce the prices of many drugs. Still, cancer drugs like Herceptin are available in India only at a very high cost,” he says.

Whole game changed after the judgment was passed in the case of Pfizer Products granting the patent to produce such vaccine until 2026 damaging the country’s drug industry. It gave the company exclusive rights to distribute vaccines in India and blocked the manufacturing of such drug.

Also in the case of Novartis, after losing a 6-year legal battle where the Supreme Court concluded that small changes to its Leukaemia drug, Glivec did not deserve a new patent for the same as it would lead to “ever-greening” of such patents.

 Matthew Rimmer, a professor of Intellectual Property and Innovation at the Queensland University of Technology believes that the Trump Administration is pressuring India about generic drug manufacturing as they have strong views about Intellectual Property and trade.

 The U.S. market is pushing India to play by its rules but India does not want to yield ground to U.S. negotiators. CEO’s like Ian Read and other U.S. – based Pharma majors are worried that India allows the domestic companies to launch cheaper medicines under the clause of “compulsory licensing” under the Patents Act. It is pertinent to note that the U.S. companies call this practice, a patent violation while the Indian government calls it a legitimate right. Before the arrival of the patent regime in 2005, it was easier for Indian pharmaceutical companies to imitate the drugs discovered by MNC’s at a much cheaper price but since the new regime, the Indian companies have to rethink and invest more on Research & Development.

 The question that persists is whether India should change its Patent Policy for Pharma practices in the world market or it should continue with the same approach that is beneficial to a larger section of people who can have access to life saving drugs as well as drugs of huge importance, at much affordable price, which in my opinion is a much larger issue.

Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

 References:

[1]http://www.abc.net.au/news/2017-09-28/what-india-pfizer-patent-decision-means-for-region-health/8981206
[2]https://www.usitc.gov/publications/332/EC200705A.pdf
[3]http://www.journals.uchicago.edu/doi/abs/10.1086/596603?journalCode=edcc