Author Archives: IIPRD

Uber v. Waymo and Lessons for Trade Secret Protection for Companies

It’s been over 100 years since the establishment of the theory of the separate juristic personality of a corporation. Nevertheless, a corporation still functions through humans. The unique competitive edge that corporations wield in the market as against other competitors is by virtue of certain ideas or information pertaining to a particular ingredient of an edible product, method of conducting business or the list of certain supplies that a company may hold on to very closely.

This competitive edge can be diluted or gained by the acts of unauthorized disclosure by the human actors who are acquainted with the idea/information/method during the period of employment by the company. The law on trade secrets in India stands previously enumerated on this blog, so the author shall focus his efforts on the lessons one can learn from this case.

The recent Waymo v. Uber[1] settlement is yet another lesson for R&D intensive industries, especially in a field as nascent as self-driving vehicles, to implement best practices in order to prevent dominant firms such as Uber from, maliciously or otherwise, diluting competition in the market by unconscionably acquiring trade secrets from smaller firms. The present case concerned the theft, amongst other valuable, of sensitive Waymo business information including the manufacture, sampling, calibration and testing of the sensors, Waymo’s highly confidential proprietary design of a LiDAR circuit board,[2] a laser-based scanning and mapping technology that uses the reflections off objects around it to create a real-time 3D image of the world.

It also enabled LiDAR, when mounted onto a car, to help the car navigate even in pitch dark and without the need for any steering wheels or pedals, thus effectively giving Waymo a first mover advantage in the field of driverless cars. Waymo Manager Anthony Lewandowski, who subsequently left the company along with the SD card containing all the data in tow to start his own self-driving truck company, that was later acquired by Uber, was the principal defendant charged with unjust enrichment, misappropriation and infringement of Waymo’s intellectual property.

While many were shocked that Uber and Waymo settled midway through the trial despite the weak case that Waymo brought against Uber, it has been noted[3] that Waymo would have probably received less from the settlement than it sought due to the onerous burden to prove the third party was actually aware of the tainted origin of the trade secrets and intentionally hired Lewandowski from that point of view.

The protection of trade secrets has more to do with the confidential information that a departing employee carries in their head because of a fiduciary relationship (or one of trust) due to which the information was disclosed which attracts an obligation of confidence, even if there might not be actual documents to prove unjust enrichment from stolen trade secrets.[4] This obligation need not even be express, it can even be implied.[5] In India, common law protection through actions in equity and tortious liability such as breach of confidence as well as non-compete clauses in contracts of service (tested against the plank of section 27 of the Indian Contract Act) is accorded. Thus, corporations only have exorbitant legal fees and damage to their reputation to account for if they do not carry out diligent vetting of the employee and his files. Any trade secrets’ origins need to be traced when hiring an employee, especially from a competitor.

Although Waymo did have standard security measures in place, such as dual authentication processes for access to all documents, encrypted and password-protected communication, or having separate vendors for supply of different parts, these measures are inadequate when the enemy is within. Companies need to have mechanisms in place that monitor the behaviour of employees both before they leave for new opportunities as well as when they have joined from a competitor. Critical information should only be disclosed on a “need-to-know” basis. For employees with access to critical information, an investigation into whether the employee has ever downloaded or copied this information en masse should be carried out. At the end of the day, when the line between confidential information and trade secrets blurs, it is the degree of sensitivity of the information that the employer impresses upon the employee that counts.[6]

A non-disclosure provision that applies when the employee departs and joins another competitor should be added as a matter of practice, subject to reasonableness and specific enumeration of geographical extent of application, scope and duration. Companies should take note that not all information or ideas are trade secrets if it is not the subject of transformation into a protected work,[7] and only something that was learned in course of the previous employer’s business having entered the employee’s head after application of due skill and knowledge.

In American Express Bank Ltd. v. Priya Puri,[8] the Court refused the plaintiff’s request for an injunction against the defendant for using mere names and addresses of the customers of a bank at her new workplace as she had only used knowledge in the public domain to further her own career prospects. As was held in the case of Ambiance India Pvt. Ltd. v. Naveen Jain,[9] business acumen, ways of dealing with the customers or clients, or routine day-to-day affairs of the employer in the knowledge of many cannot be considered trade secrets or confidential information. Thus, section 27 of the Indian Contract Act, 1872 has been used to balance the interests of both trade secret owners as well as employees even after the termination of service of an employee.


It is not enough to simply prove that the employee had access to important trade secrets and limitation to it has to be narrowly and specifically tailored. In fact, this issue goes beyond the legal sphere. A strong management and constant update of industry’s best practices in safeguarding intellectual property can cement a company’s first mover advantage that matters greatly in industries that go through rapid shifts in technological progress, as well as save companies, a humongous amount of money by way of future profits and legal disputes.  As has been noted, Silicon Valley’s high rate of technological innovation lies in “talent mobility”, or the refusal to enforce non-compete clauses. However, this comes with the caution to make sure one is acquiring talent and know-how, not the trade secrets.[10] The law of confidentiality imposes a strict burden on companies alleging breach of confidentiality against a previous employee lest they disproportionately impinge on the employee’s fundamental right to freely conduct his trade or profession once he leaves the company.[11] What we can learn from Uber v. Waymo is that, best practices have not been evolved even in the talent and ideation heavy tech industry, which should be zealously protective of innovation; the case should act as a wake-up call for development of context-specific security measures where currently the extent of active legal safeguards are the minimal, rarely enforced, non-disclosure and non-compete agreements.

Author: Swrang Varma, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at


[1] Waymo LLC v. Uber Technologies, Inc., (3:17-cv-00939).



[4] Diljeet Titus v. Alfred A. Adebare, 2006 (32) PTC 609, 130 (2006) DLT 330.

[5] Margaret, Duchess of Argyll (Fame Sole) v. Duke of Argyll, [1965] 1 All ER 611, [1965] 2 WLR 790.

[6] Faccenda Chicken Ltd. v. Fowler, [1986] 1 All ER 617.

[7] Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, 61 (1996) DLT 6.

[8] (2006) III LLJ 540, (2006) 110 FLR 1061.

[9] 122 (2005) DLT 421, 2005 (81) DRJ 538.


[11] Article 19(1)(g), The Constitution of India.


Relation of IPR and Olympic


Olympic is the largest sporting event in the world, which features both summer and winter sports. Currently XXIII Olympic Winter Games are going on in the capital of Republic of Korea. Thousands of players and their supporters come from across the globe. South Korea is expected to spend $ 13 billion in organizing the 2018 winter Olympic[1]. Historically, to get sponsorship for organizing the Olympic games, the hosting country uses the Olympic symbol, flag, motto and anthem, transfers all the rights related to these elements to the sponsors. The intellectual property(IP) system plays an important role in safeguarding the unique character of the Olympic Games. In Olympics games, the act of ambush marketing has been an increasing phenomenon which is a serious concern for the hosting countries. This article will highlight the IP aspects of the Olympic games.

Intellectual Properties in Olympic

Usually, motto, logo, anthem and emblems are seen as Olympic properties but in practice it is more than that. It encompasses all rights relating to the Olympic Games in relation to advertisement, organization, telecast, broadcast and marketing of the event. The Olympic properties qualify for IP protection under laws governing copyright, trademark and industrial designs, which together with patents, utility models and trade secrets make up the palette of IP assets that are relevant to the Olympic Games[2]. All the IP rights associated with the Olympic properties are exclusively owned by the International Olympic Committee (IOC), which provides support for organizing and hosting of Olympic.

Innovation in Olympic games

The 2018 Pyeon Chang Olympics is the latest example in which one can easily find the relation of invention and Olympics. In the 2018 PyeongChang Olympics, a torch was designed in such way that the flames will continue to burn in all weather conditions, and that will withstand the strong winds and heavy snowfall that can be expected in the Republic of Korea. This example shows the quality of innovation in the Olympic Games. Therefore, it is a duty of the hosting country to protect the rights of the innovator.

Challenges to the Protection of Olympic Intellectual Properties

The IOC places heavy emphasis on protecting intellectual properties rights associated with Olympics because financial success of the Games and the profit that Games themselves generate for corporate sponsors depends entirely upon the protection of the Olympic properties. These properties are threatened in several ways, including ambush marketing, trademark infringement, counterfeiting and cybersquatting. Ambush marketing and trademark infringement occur more often in the Olympic Games.

Ambush marketing – Ambush marketing occurs each time when a non-Olympic sponsor tries to portray itself as an official Olympic sponsor in an effort to “capitalize on the goodwill, reputation, and popularity” of the Olympics[3]. In 2016 Rio Olympic Games, there were many cases of ambush marketing like Nike and its ‘unlimited campaign’, social media posts, Ford videos etc. To tackle with the menace of ambush marketing, the hosting countries have started to enact special legislation. An anti-ambush marketing legislation was introduced for the first time in 2000 Sydney Olympic. Similar was the means used in the 2016 Rio Olympic where Brazil enacted special legislation called Olympic Act (Law 12,035/2009) to protect the interest of official sponsors from ambush marketing.

Trademark Infringement  The hosting country’s ability to raise money from sponsors, suppliers, advertising agencies and licensees is hindered by a mere possibility of trademark infringement. The IOC has taken numerous steps to prevent the trademark infringement. There are numerous lawsuits that have been filed by the IOC against trademark infringers i.e. lawsuit to restrain defendants from using term “Olympic” in an athletic competition[4] and trademark opposition suit against application of bakery to register mark “Olympic Kids” for use on its baking goods.[5]

International Treaty on the protection of the Olympic Symbol

The Nairobi Treaty on the Protection of the Olympic Symbol is one of the international treaties on IP administered by WIPO. Any state that has ratified the treaty is obliged to refuse or to invalidate the registration of a mark and to prohibit by appropriate measures the use of a mark or other signs, for commercial purposes, of any sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic Committee (IOC), except with the authorization of the IOC[6].


In the current world, the Olympic Games are a brand in itself and the protection of the Olympic properties is very important. The IOC has been trying to protect the Olympic properties with the help of international treaties and national legislations. However ordinary legal protection, such as trademark, copyright remains essentials. These laws are not sufficient in protecting the Olympic properties and like other trademark or copyright owners, IOC faces a number of challenges in managing its IP, particularly in relation to social media platforms. IOC and other bodies must therefore, ensure that the Olympic properties should be protected so that people of all ages and all continents can continue enjoy the mega event that Olympics are.

Author: Ajay Sharma, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at


[1] (Last Updated on 26/02/2018)

[2] Updated on 26/02/2018)

[3] Stephen M. McKelvey, Atlanta ’96: Olympic Countdown to Ambush Armageddon? 4 SETON HALL J. SPORT L. 397,401(1994)

[4] San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987)

[5] O.M. Bread, Inc, v. U.S. Olympic Comm, 65 F.3d 933(Fed, Cir. 1995)

[6] updated on 26/02/2018)

Battle of the Brands: Gilead Sciences Inc. vs. Merck & Co. Inc

The legal dispute between the two pharmaceutical majors Gilead Sciences Inc. and Merck & Co. Inc. involving Hepatitis C drugs clearly indicates the high stakes involved when it comes to intellectual property.

It all began in 2013, back in the day when Gilead Sciences Inc, filed for a New Drug application (NDA) with the FDA for the treatment of HCV which includes Sofosbuvir. Sofosbuvir was known to treat multiple genotypes of the disease with a higher cure rate and lesser side effects. On administration of Sofosbuvir, duration of the treatment reduced when compared to conventional medical therapy. Gilead launched and marketed the drug with the trade name Sovaldi which was a combination of Sofosbuvir and anti viral agent ribavarin. Gilead launched another drug Harvoni with sofosbuvir as one of its components. In 2013 itself, FDA approved Sovaldi, and it earned the company huge profits.

Legal issues arose when Idenix Pharmaceuticals, filed a complaint stating that by manufacturing Sovaldi and Harvoni Gilead had infringed their U.S patent 7608600. The patent claims a method of treating persons affected by HCV by administering the drug orally via a capsule or tablet containing hydrogen, amino acid ester and a nitrogen base like thymine or adenine. This patent was granted in October 2009.

Although Gilead did have patents of its own in the field of HCV treatment, Idenix claimed that the patents infringed on their ‘600 patent. Gilead was granted a U.S patent 8415332, which mentions that the drug is effective in preventing multiplication of the virus when administered in combination or alternation with an antiviral, antibacterial or anti cancer treatment. This patent was filed by Pharmasset in 2010, a pharmaceutical company which was then purchased by Gilead in 2011.

The ‘600 patent was the first patent mentioned in the case, the following patents were also claimed to be infringed by Idenix:

U.S Patent No. 6915054

U.S. Patent No. 7105499

U.S. Patent No. 7608597

U.S. Patent No. 8481712

In the case of infringement against patent ‘597, the case fell in the favour of Idenix who then received 10% of the total revenue as royalties which was $25.4 billion. They received a total of $2.5 billion.

Merck (which acquired Idenix in 2014) claimed that the use of Sofosbuvir , key ingredient in Gilead’s Sovaldi and Harvoni contributed to the infringement of their patents ‘499 and ‘712.

‘712 deals with compounds of a specific structure, whereas ‘499 claims methods of administration of the drug alone or in combination with other HCV treatment.

Gilead mentioned in their case that the patent claims were invalid and agreed to pay the charges if proven otherwise. On reviewing the case, the court came to a decision that Gilead’s claims were false. During the court proceedings it was found that the claims in the patents ‘499 and ‘712 were not invalid. In March 2016, the jury awarded Merck $200 million in damages for the sales of Sovaldi and Harvoni. In April of the same year Gilead filed for a motion to reopen the case and to allow evidence to be submitted against Merck. The motion was passed and the case was reopened.

Gilead claimed that Merck tried to write off the patent rights and attempted to receive permanent licence of the compound from Pharmasset (Gilead’s company of interest). It also claimed that Merck scientist stole the structure of the compound and failed to mention the details of these happenings during the court procedures. It was proven later that the scientist turned patent lawyer did try to deceive Gilead, and also lied to the court. The jury found the evidence provided by Gilead in support of Merck’s misconduct and as a result passed an order to Merck to return the $200 million.

The ongoing case between these two drug conglomerates reached a new high when Merck lost another $2.5 billion to Gilead with respect to its patent ‘597 in 2018. The legal dispute began when it was not clear if Pharmasset derived Sofosbuvir on its own or from an Idenix patent.

The US District Court judge in Delaware passed the judgement stating the patent claims were too broad. The patent should be such that, a skilled person should be able to develop a drug without considerable experimentation. The judge also determined that the drug couldn’t easily be developed from the Idenix patent, favouring Gilead’s defence. Merck believes there is more to the case than what meets the eye. Unless either one of them decides to settle, they will continue to battle it out in the court.

Both the drug developing giants have lost and gained in billions in the past few years. In the era of biosimilars, such cases will be seen more often in the near future. Science & technology together with law now exist in a symbiotic relationship, where both facilitate each other striving for a common goal.


Author: Poorvi R Balkundi, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at




[3] Mark S. Reisch, Gilead wins reversal in $2.5 billion dispute with Merck, Chemical and Engineering News, February 2018





[8] United States District Court, Case no 13-cv-04057-BLF, Gilead Sciences Inc. (Plaintiff) vs Merck & Co Inc. et al (Defendant)

[9] United States District Court For the District of Delaware, case no 14-846-LPS, Idenix Pharmaceuticals LLC Universita Degli Studi DI Cagliari,(Plaintiff) vs gilead Sciences Inc. (Defendant)

Referential Names & Intellectual Property Infringement

With progression of time we are witnessing the rise of Intellectual Property (IP) issues in India across industries. Every new case raises a few new questions and simultaneously rests some old ones. While traditionally IP disputes arose mainly in the pharma  and software industries, recent trends have shown a noticeable surge in other industries including the Appliances and Consumer Electronics (ACE). One such case in the Bombay High Court, belonging to a particular segment of the ACE industry, highlights relevant issues for the entire industry.

This suit for IP infringement was instituted by the multinational electronics company Seiko Epson, against Jet Cartridge (India) Pvt. Ltd. Epson, a company whose very name stands for “Son of Electronic Printer” quite imaginably has a strong IP portfolio around its printers, basis which it alleged that Jet Cartridge, was infringing on their IP rights on two counts- one, that of the registered designs of the nozzles that are used in cartridges, and the other of using their trademark ‘EPSON’ without authorization when they label their products as “Compatible with EPSON”.

Assessing the first aspect involves a simple test of comparing the registered designs with that used by the defendants.   The Indian Industrial Design registrations with numbers 235236 & 235237, titled “Packaging Container ” along with 235238 & 235239, titled “Container Cap with Stopper”, entitles EPSON under the Design Act,  2000, to exclusive use of the designs covered. The order by the court dated 23 November 2016 reflects that the counsel appearing for Jet Cartridge, Dr. Saraf, made a statement- as regards the design infringement, the defendants will change the nozzle of the cartridge from the plaintiffs’ proprietary design and they will do so with immediate effect. The nozzles of all existing products and inventories which have not yet gone into market will also be changed.

Coming to the more interesting part of the case, the argument that the trademark law allows EPSON to an outright exclusive use of its name, even if it were used merely as a reference, was a contentious one. Ordinarily,  in a trademark infringement matter, the court sees whether the defendant used a mark identical or similar to the plaintiff’s mark in a manner that may confuse/ deceive a consumer into believing that the defendant’s goods/ services are actually that of the plaintiff’s. Typical examples include using minor spelling or visual variations, strikingly similar packaging or direct  counterfeiting. In this case, however, the question really was whether the inscription “Compatible with EPSON” on a cartridge packaging would qualify as infringement . If so why, and if otherwise why not?

On one side, the argument stands that a clear indication is provided that the cartridge does not belong to EPSON but is merely compatible for use with EPSON printers and hence not misleading. While on the other hand, would it be unrealistic to assume that a casual customer might be led to believe that the company selling the products are authorized by EPSON to do so, and is indirectly buying it from EPSON. Honorable Justice Gautam Patel, had the following to say on this aspect:

Ms. Oberoi for  the plaintiffs  would have it that the defendants are prohibited  from  using the name EPSON  at all, even in a purely  descriptive sense to demonstrate  compatibility, because this is the plaintiffs’ trademark , even if the defendants do not use that word  as a trade mark  but only as a descriptor  to identify compatibility. Prima facia, this does not seem to be a supportable or tenable proposition  in law. A laptop repair service may, for instance, say that it can repair  laptops of  various  makes and brands and names these, but not use these as trademarks. Persons make various kinds of accessories (screen  protectors, peripherals,  etc.)  and  these  are  often  denominated  as  being compatible  with  a certain name  product:  mobile  phones, for instance, of specified makes and brands. This use is not illicit. The plaintiffs  enjoy  a  monopoly  in the  mark  and  are  entitled  to prevent unauthorized  use of  the mark. The defendants are clear that they do not use the name as a mark but only to identify that their cartridges are compatible with printers manufactured by the plaintiffs. There cannot be the kind of monopoly that Ms. Oberoi suggests. At her instance, I  will leave contentions open in  this regard till the replies and rejoinders are filed.

While the court was open to further deliberation and debates over its initial view on the subject matter, as the trend goes, the dispute was settled between the parties. The consent terms dated 20 December 2016 that were tendered to the court had Jet Cartridge reaffirming its undertaking to change the nozzle designs altogether, whereas EPSON agreed to their use of “Compatible with EPSON” on their packaging. Thus, an important perspective regarding the legal principles and consequences on the use of referential naming was set.

Author: Abhishek Pandurangi, Partner, Attorney of Law at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at

A Take on Producer’s Right in ‘Dubbing’ and ‘Remaking’ of a Movie

Can a producer of a film remake or dub it without the permission of the author of the script? The answer to this question is given by a division bench of Madras High Court in a recent case of Mr. Thiagarajan Kumararaja vs. M/s Capital Film Works (India) Pvt. Ltd. and another.

In this case the Plaintiff, the author of the script of an award-winning Tamil movie “AARANYA KAANDAM” prayed for a permanent injunction against the producers of the film from remaking and dubbing the film in other languages claiming that it would be a copyright infringement of his script.

The following judgement was passed against the judgement and decree passed by a single judge dated 08/09/2016 in which the honourable single judge dismissed the appeal.

In this appeal the following issues came up in front of the division bench:

  1. Whether the producer of the film has any right to dub the in a different language?
  2. Whether the producer of the film has any right to remake a film in a language different from the original one?
  3. If the answer for the first issue is in affirmative, can there still be any injunction against them?

The appellant argued that the dubbing is also remaking a film and it would amount to infringement of his copyright in the script.

The respondents defended that dubbing is only ‘communication to the public’ and it would not amount to infringement of copyright because they are the authors of the cinematograph of the film and hence they are the owners of the copyright of the cinematograph of the film.

The court held that dubbing is included in the term “otherwise enjoyed” of the definition ‘communication to the public’ under section 2(ff) of the Copyright Act, 1957which reads as follows:

“2(ff)”communication to the public” means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available.

 Explanation: – For the purposes of this clause, communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public.”

Therefore, court is of the view that dubbing is included in the cinematograph of the film. It was also held by the court that the producers are the ones who take initiative to make the film and that they are the producers under section 2(uu) of the Copyright Act, 1957 and that producers are the authors of the cinematograph of the film under section 2(d)(v) of the Copyright Act, 1957. Hence dubbing does not amount to infringement and dubbing rights are held with the author of the cinematograph i.e. the producers. This also answers the third issue that since the rights of cinematograph lies with the producer so there cannot be any injunction against the dubbing of a film in different language.

The court is of the view that remaking a film would amount making changes to the main script of the film and hence would amount to infringement of the exclusive copyright given to the author of the script. Therefore, the producers of the film do not have a right to remake a film.


From the judgement of the above discussed case it can be concluded that the producer is the person who takes initiative to make the film and he is the author of the cinematograph of the film and hence holds the right over it. Dubbing is included in “communication to the public”. Dubbing is also part of the cinematograph and only includes change in the audio track of the film and hence it does not amount to infringement of copyright of the author of the script. But remaking a film would lead to making changes to the underlying script without the permission of the author of the script therefore, it leads to infringement of the copyright of the script writer.

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




Tobacco Packaging Laws: An Effectual or an Ineffectual Effort?

There have been growing concerns associated with the ill effects of smoking. The Government has been trying to focus on the public heath measure side-lining the trademark related rights and commercial interest of the Tobacco companies, and 85% mandatory health warning display on the Tobacco boxes is a result of the same. Attempts have also been made to mandate plain packaging of tobacco products[1] and to prohibit sale of lose cigarettes and disallow indirect advertisements of tobacco products[2]. The central objective behind all these attempts remains dis-incentivising sale of tobacco products.

The Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 or COTPA, 2003 regulates trade, commerce, production, supply and distribution of cigarettes and other tobacco products in India. Rules[3] were framed there under in 2008 by the ministry of Health and Family Welfare which prescribe a framework for packaging and labelling of tobacco products.

The 85% Mandatory heath warning display notification

In 2014, the Government amended the Cigarettes and other Tobacco Products (Packaging and Labelling) Rules and increased the size of the health warning on the principle display area from 40% to 80%. The amendment was challenged in the Karnataka high court and the court declared it as unconstitutional.

The court held that there is no scientific approach adopted by the Health Ministry in framing the amended policy. The Government was unable to establish it’s rational or basis on the following considerations:

  • That the prior 40% pictorial display requirement in the rules did not satisfy the test of being legible, prominent and conspicuous;
  • That is why the 85% compulsory display area requirement is uniformly applicable to all the products, i.e., cigarettes, beedis, chewing tobacco, despite the fact that their packaging is inherently different;
  • That whether or not the 85% pictorial and textual warning would result in violating the rights of the petitioner under Section 28 of the Trade Marks Act, 1999.

Since there was nothing to indicate that enlarging the size of the warning from 40 to 85% of the package would serve any meaningful objective and the Government could not establish its rationale behind adopting the policy, the division bench unanimously declared the impugned amendment as unconstitutional.

However, on January 8, 2018, Supreme Court stayed the Karnataka high court judgement and reinstated the 85% mandatory warning display requirement. Emphasising on the importance of public health and its harmful effects of tobacco product, the court held that a policy based decision on the health risks posed to citizens cannot be struck down. The court asserted that the citizens must be aware of the affect the products can have on their health.

The reasoning stated by the court indirectly inclines on the belief that failure to reinstate the prescription and allowing a display warning of anything less than 85% will not safeguard their health. Instead of dealing with the question that whether there is a rationale for the Government to increase the size from 40% to 85%, the court stepped onto the notion of safeguarding health of citizens at all costs and thereby presumed that anything less 85% of the warning display will fail in safeguarding health of citizens.

The policy of enforcing Graphic warning labels has spread globally based on the Framework Convention on Tobacco Control. Article 11 of the Framework Convention on Tobacco Control (FCTC) also recommends the introduction of these labels for 50% of the packet cover. Perhaps the middle path suggested by Kapil Sibal, to allow 50% of the surface area to be covered by the warning as an ad hoc measure could have been a more balanced way out.

Plain Packaging Laws                           

In 2016, a PIL was filed in the Supreme Court of India for implementation of Plain Packaging Laws in India. The Supreme Court directed the Ministry of Health contending that delaying the implementation of plain packaging was in violation of the rights of the citizens under Articles 14 and 21 of the Constitution.  The response of the Ministry to this notice is awaited. Back in 2012, a private member bill was introduced in the LokSabha by Member of Parliament Baijayant Panda which stipulated for plain packaging of tobacco products. This move came days after Australia became the first country in the world to ban coloured packaging of tobacco products and mandating plain packaging for tobacco packs, removing any indicators to distinguish between brands except for the brand of the name itself.

The amendment bill proposed for plain packaging of cigarettes and other tobacco products wherein the brand and product names would be permitted in a standard colour, position, font and size in a predefined area on the packet and all tobacco products will be similar with 60% of the front and the back cover occupied by graphic health warnings.

The constitutionality of the Australian mandatory plain packaging law was challenged in Australian High Court by the tobacco companies alleging that the Government is trying to seize their intellectual property by banning the display of their trademark on the cigarette packets. The Court held that although the IP rights and other related rights of tobacco companies may be restricted as a result of the plain packaging laws, the restriction imposed by this law does not “involve the accrual of a benefit of a proprietary character to the Commonwealth which would constitute an acquisition.”

After Australia, several other nations including Ireland, the United Kingdom and France have also brought in legislations with plain packaging laws for tobacco products.


Tobacco packaging and labelling policies have developed as a cost effective tobacco control measure. Graphic warning labels policies which have been deemed to be more effective than text warnings and thus have been adopted in over 70 countries. Similarly, the standardisation of colour and design of tobacco products, have been argued to have major benefits. Firstly, that it increases effectiveness of health warnings, secondly, that it reduces false health beliefs about cigarettes and lastly, that it reduces brand appeal especially among youth and young adults. However, the effectiveness of such laws in reducing the consumption of tobacco have been much contested and debated over the last decade. One of the major argument against such tobacco packaging laws has been that the harmful effects of consumption of tobacco, which is already widely known and that attachment of such huge sizes of graphic warning violates trademark rights and copyrights and incites the production of counterfeit tobacco[4]. According to Tobacco companies, plain packaging makes it harder to control the entry of counterfeits in the market. The production of counterfeit tobacco has been the foremost fear in bringing such packaging laws. The counterfeited tobaccos do not adhere to any standards and may be adulterated with Sulphur and Carbamide making them far more harmful to public health than ordinary tobacco. It has been pointed out by many that that nothing is easier to template and copy than standardized design, shape and colour of a product[5]. According to a 2014 KPMG report[6], the use of illegal tobacco in Australia reached record levels in 2013 and represented 14.5% of total consumption.

In Indian context, taking into consideration that nearly 75% of all cigarettes are sold loose and the buyer does not even come in direct contact with the packaging, it becomes even more important to examine whether or not there is a need of such packaging laws and policies. Apart from the effectiveness of such policies, the policy makers must also consider all the possibilities of the ill-outcomes that such can policies have. A few psychologists have also argued that the mandatory placement of graphical warnings and packaging requirements on the boxes can easily increase its ‘attractive value’, stemming from the appeal often associated with experimenting with the illicit and forbidden, – inducing the young adults to play daredevil and try their hand on that-which-must-not-be-touched. There also have predictions that standardized packaging would lead the brands to a brutal price war making the products cheaper than before and thus making them more affordable. Thus, all such concerns leads us to a need of analysing the pros, cons and effectiveness of such Tobacco packaging and labelling policies.

Author: Saumya Gupta, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at


[1] Amendment to Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (COTPA) introduced in LokSabha by M.P, Baijayant Panda in 2012.



[4] Vathesatogkit P, Charoenca N Indian J Public Health. 2011 Jul-Sep; 55(3):228-33.

[5] Snowden, C. (2012). Plain Packaging.Commercial expression, anti-smoking extremism and the risks of hyper-regulation. Adam Smith Research Trust, pp9.


The Spinning Story of the Fidget Spinner

The 2017 fad of fidget spinners hasn’t yet faded, but in fact is intensively growing globally. For those who are not aware of this toy, it is a spinning toy meant to relieve stress in adults and kids. Arguably, depending on your taste you may find this spinning movement either stress relieving or irritating. Whatever the case maybe, if you have seen this toy, you ought to have thought about the huge profits the patent owner must have received from this basic toy. The devastating fact is that she does not make even a single penny of these sales.

After the recent boom in the sales of this toy, a few US newspapers claimed to have found the original inventor, Catherine Hettinger, a woman living in Orlando, USA. She held the patent on “a spinning toy” for 8 years since January 1997 until she had to abandon the patent for she could not afford the renewal fees. In accordance with the USA law to enjoy a 20 year term for patent, maintenance/renewal fees should be paid at 3.5, 7.5 and 11.5 years after the grant of patent.

Though, she claimed to have sold thousands of these toys at fairs in Florida, and apparently pitched the idea to couple of companies like Hasbro, it got her nowhere. Finally not wanting to invest more than she reaped, she decided to abandon the invention.

When you analyze this situation closely, one might argue that even if she had paid her renewal fees in 2005, since her patent was granted in 1997 under the old US patent law (which grants a patent for a term of 17 years), she still wouldn’t have reaped the benefits of her invention in 2017. In addition, the trending fidget spinners are not identical to her original design:“A finger spinner comprising: a thin, round, single thickness, primary sheet of plastic material molded to form a unitized central finger placement area means and a skirt balance, “and thus it may not even come under her patent’s exclusive protection. Moreover, new versions of the spinner are already in the market like fidget cubes, dice etc.

Even though her being the inventor of fidget spinner is still debated, she has started her own Kickstarter campaign to sell her original design and bring back the “classic fidget spinner”.


Time and again, a patent owner is inflicted with the question of payment of maintenance fees incase his invention is not yet profitable or even financially breaking through. It is quite a dilemma for them to decide whether it’s worth loaning money further in hope of the invention kicking off or to abandon the patent and save the rest of his money. It is often advised to pay the maintenance fees for the 20-years life of your patent, since the non-payment of the same makes the time and money invested in the patent application process entirely futile.

In case, your invention isn’t as lucrative as you imagined, it is always better to seek advertising and marketing agencies which may help you commercialize your invention into products which may one day be a global trend. Thus, it is suggested to always consult an IP expert to review your invention before taking any drastic steps so as not to lose out on the profits of your hard work. Only in the most exceptional circumstances would it be suggested for you to abandon the patent in its life term.

Author: Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at





Is Censorship a Necessary Evil?

With more than 1000 films being released every year, in India censorship of films has not only been a debate in the legal fraternity but also a topic of discussion at the family dinner table. The recent delay and cuts in the movie “Padmavati” is just one of the many examples of censorship in India. The current trend of CBFC of cutting scenes and banning of movies has raised various questions in people’s mind which need clarification.

What is the need for Censorship of a film?

In 1970, a Supreme Court judge in K. A. Abbas v. The Union of India & Anr, recognized the universal treatment of motion pictures different from that of other forms of art and expression. He further insisted that it has a deep impact on adolescent children more than that on mature women and men. The need of censorship thus arises from the prolonged effect that a motion picture has on an individual that doesn’t occur in a painting, book or play.

Who can censor a movie?

A motion film is certified by Central Board of Film Certification (CBFC), the regulatory authority in India, under Section 5A and B of the Cinematograph Act, 1952.

In addition, powers are given to the Central Government to suspend a granted certificate for such period as it thinks fit or it may revoke such certificate if it is satisfies the conditions under Section 5E of the aforementioned Act.

There are 4 types of censor certificates to be given:

  1. U certificate: Sanctioned for unrestricted public exhibition
  2. U/A certificate: Sanctioned for unrestricted public exhibition except any child below the age of twelve years may be allowed to see such a film after the consideration of child’s parents or guardian
  3. A certificate: Sanctioned the film for public exhibition restricted to adults
  4. S certificate: Sanctioned the film for public exhibition restricted to members of any profession or any class of persons, having regard to the nature, content and theme of the film, e.g.: doctors, farmers etc.

What are the grounds for Censorship?

Section 5(B) (1) lays the grounds for not certifying a film for public exhibition if, in the opinion of CBFC, the film or any part of it is against the interests of the sovereignty and integrity of India, the security of the State, friendly relations with foreign States, public order, decency or morality, or involves defamation or contempt of court or is likely to incite the commission of any offence. This is in accordance with the reasonable exceptions specified in Article 19 of the Indian Constitution.

To help CBFC facilitate the certification process, guidelines have been issued by Central Government time and again. A few out of the 20 guidelines that must be ensured by the CBFC are:

  1. Anti-social activities such as violence are not glorified or justified
  2. The modus operandi of criminals, other visuals or words likely to incite the commission of any offence are not depicted;
  3. Human sensibilities are not offended by vulgarity, obscenity or depravity;
  4. Scenes degrading or denigrating women in any manner are not presented;
  5. Visuals or words contemptuous of racial, religious or other groups are not presented.

Moreover, the Censor Board has also released a list of banned words which includes Hindi English curse words, abusive language and the mention of Mumbai not Bombay as per Government’s Official Notification dated 04/08/1996.

Appeal Procedure:

If the applicant is aggrieved by the order of the CBFC he may appeal to the Appellate Tribunal which is chaired by a retired High Court judge or any person so qualified to be a High Court Judge. Further, Revision powers are given to the Central Government to call for the record of any proceeding in relation to any film which is pending before, or has been decided by the Board and may make a decision as it deems fit, after giving the applicant an opportunity for representing his views in the matter.

Role of Judiciary

The Judiciary has frequently demarcated between the expression and abuse of freedom of speech. It has always tried to maintain a balance between rights of artists and the need of censorship wherever required. In S. Rangarajan v. P. Jagjivan Ram, the Court opined, censorship by prior restraint is not only desirable but also necessary in case of motion pictures as it has a strong impact on the minds of the viewers and can affect their emotions. In this case the ban on this movie was lifted. Similar cases in which Supreme Court passed an order in the favour of artists are Raj Kapoor v. Laxman, and Patwardhanv. Cent. Bd. of Film Certification, Life Insurance Corporation of India v. Prof. Manubhai D. Shah and the most recent was the lift of ban on Padmavati.


As the title suggests, censorship is a necessary evil, but that doesn’t negate the freedom of speech and expression completely. The chief problem is that it seems that Censor Board doesn’t look into alternative options before banning a film and fails to take into account a lot of mitigating factors involved in the making of the film. While public interest needs to be protected, private interest of the parties involved cannot absolutely be forgotten. Right from the script to music, to production and advertising, a lot of effort and money has gone into films which when banned enormously impacts the economic status of people involved, which in turn comes under the ambit of their fundamental right of livelihood. This repeated pattern of Board or Government banning or halting the release of movies, thereby consequently an appeal being filed to High Courts and Supreme Court where the ban is lifted is getting quite tedious. Since the scope of grounds are quite wide it calls for some stringent measures to be taken by authorities, to clarify the objectivity with which a film must be granted a certificate. The struggle between the necessity of censorship and freedom of speech must be met with a right balance.

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






Half-Day Symposium on Software, Electronics, and Mechanical Patent Portfolios

After successfully conducting several symposiums over the years, IIPRD is coming up with half-day seminar on software, electronics, and mechanical patent portfolios with focus on preliminary preparation, prosecution, and litigation in India, US, and EP.  The symposiums are being organized in Bengaluru on 16’th April2018, and in Mumbaion 17’th April 2018.The seminar is being arranged by IIPRD along with Khurana and Khurana, Advocates and IP Attorneys (India), Sughrue Mion (US), and Keltie (EP).

With speakers like Chid Iyer-Partner of International Law Firm of Sughrue Mion, Robert McDougall-Chartered Attorney at Keltie, Vinod Khurana-Senior Partner at IIPRD and Khurana & Khurana, IP Attorneys, and Tarun Khurana – a Partner and Patent Attorney at Khurana & Khurana, each having over 15 years of experience in a broad range of IP subject matters, one cannot afford to miss same.

This event turns out to be great opportunity for IP Groups, R&D experts, In-House IP/Legal Counsels, Patent Agents & Attorneys in the field of Practice, Patent Litigators, and Professionals in Legal Domain related to Software,Information Technology, Instrumentation, Electronics, Electrical, Embedded, Mobile Technology, IoT, Telecom, and Mechanical Domains.

Fee per delegate is INR 4,000 for Indians and is USD 100 for foreign applicants.

For more details about profiles of partners, programme outline, speakers, why and how to apply, please click here.

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


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.


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.


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