[This post has been co-authored with Jyotpreet Kaur, Tejaswini Kaushal, Praharsh Gour, and Swaraj Barooah].
As 2023 comes to an end, in line with our annual tradition, we take stock of the top IP developments that occurred this year. And as we move to the cusp of the new year, here’s to wishing our readers a very happy and healthy year ahead!
As in previous years, we have divided these developments into five categories:
a) Top 10 IP Judgements/Orders (Topicality/Impact)
b) Top 10 IP Judgements/Orders (Jurisprudence/Legal Lucidity)
c) Top 10 IP Legislative and Policy Related Developments
d) Other IP Developments; and
e) Other Notable Developments.
The decisions in the first category, i.e., Top 10 IP Cases/Judgements (Topicality/Impact) reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem etc. We’ve tried to represent a diversity of subject matter also in this list, so it’s a mixed bag of cases dealing with patents, trademarks, copyright law etc.
The decisions in the second category, i.e., Top 10 IP Cases/Judgements (Jurisprudence/Legal Lucidity) reflect those that we thought showed a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive.
Though we have restricted the number of orders/judgements to 10, this year selecting them was way harder due to the sheer amount of orders/judgements coming out of the courts across different jurisdictions! As such, there are bound to be some differences of perspectives on whether other cases should’ve been included in our lists. So, if you have strong opinions on orders/judgements that you think should’ve been included in the top 10 lists, please do share them in the comments below!
The third category lists notable developments on the legislative and policy side and includes important amendments, proposals for amendments, release of policy notes and reports etc.
The other important developments which do not fall under any of the above three categories have been highlighted in the fourth category.
We have also included a list of other notable IP developments of 2023.
A special thanks to Mr. G. Nataraj, Ms. Ayushi Mittal, Mr. Roshan John, Mr. Akshat Agrawal, Mr. Sidhi Pramodh Rayudu, and other readers who would like to remain anonymous for their input during the compilation of this list. The final selection of all the lists, their summaries and mistakes (if any) remain those of the authors’ alone.
As always, a huge thanks to our readers for continuing to engage with our posts and constantly encouraging us. Let’s collectively hope that this year brings us spicier IP developments which help shape India’s IP regime into a more fair, balanced and effective one!
a) Top 10 IP Judgements/Orders (Topicality/Impact)
1. RDB and Co. HUF v. HarperCollins Publishers India Pvt. Ltd. [Delhi High Court]
On May 23, the Delhi High Court passed an interesting judgement on the issue of ownership of the copyright in a film screenplay and held that the copyright in the screenplay of the film ‘Nayak’, lay with Satyajit Ray and on his demise, with his son Sandip Ray and the Society for Preservation of Satyajit Ray Archives (SPSRA). The Court interpreted the clause on ownership of work made during a contract of service (Section 17(c)) to not apply in situations where there is a contract between equals. The Court limited the scope of Section 17(c) to apply to contracts where the relationship between the parties is akin to that of an apprenticeship. While delineating the rights of the parties, the Court held that R.D Bansal and Co HUF, the plaintiff and the producer of the film, would have copyright over the film, whereas, Sandip Ray and SPSRA would have copyright over the script and screenplay as it is an original “literary” work. Thus clarifying that copyright in the screenplay exists independently of the copyright in the film. Based on the above reasoning, the Court refused to grant an injunction against the novelization of Nayak’s screenplay by Harper Collins Publishers India Pvt. Ltd.- the licensee. This will potentially impact the copyright licensing landscape insofar as filmmakers will have to enter into dedicated agreements to claim protection for works not listed within the scope of Section 17.
The judgement was authored by Justice C. Hari Shankar of the Delhi High Court.
2. Anil Kapoor vs Simply Life India & Ors and Krishna Kishore Singh v. Sarla A Saraogi and Ors. [Delhi High Court]
On September 20, the Delhi High Court granted relief to film actor Anil Kapoor against the unauthorised use of his image, name, voice, and other traits of his persona for monetary gain, reinforcing his personality rights. The Court delineated instances like parody and satire where free speech in the context of well-known persons may be protected. However, it held that tarnishing, blackening or jeopardising an individual’s personality or its attributes would be illegal. On the above understanding, the Court restrained 15+ defendants from utilising Anil Kapoor’s name, likeness, image, voice, personality, or any other aspects of his persona for commercial gains, violating his rights, and also directed PDR Ltd., GoDaddy LLC, Dynadot LLC to immediately lock and suspend the domain names http://www.anilkapoor.in, http://www.anilkapoor.net and http://www.anilkapoor.com. Impleading the Department of Telecommunications/ Ministry of Electronics and Information Technology, the Court directed them to issue blocking orders against the impugned links. Among other things, the order has been critiqued for not considering the questions of the doctrine(s) of first sale and laches. Previously, the Court had passed a similar interim injunction order to protect the personality rights of film actor Amitabh Bachchan without indicating any statutory or common law right for this protection.
Another judgement pertaining to personality rights was passed by the Delhi High Court on July 11, in Krishna Kishore Singh v. Sarla A Sarogi, where the Court affirmed the position on descendability of publicity rights. Disposing of an interim injunction application filed by the father of late actor Shushant Singh Rajput to restrain Sarla A Sarogi from using the name/likeness of the late actor, the High Court held that the right to publicity of the late actor died with him, implying that there can be no ground for descendability of the right.
The Anil Kapoor order was passed by Justice Prathiba M. Singh and the Krishna Kishore Singh judgement was passed by Justice C. Hari Shankar.
3. Universal City Studios LLC and Ors v. DotMovies.Baby and Ors. [Delhi High Court]
On August 9, the Delhi High Court devised a judicial mechanism to combat novel ways of copyright infringement and issued the first-ever Dynamic+ injunction in favour of Universal City Studios LLC., Warner Bros. Entertainment Inc., Columbia Pictures Industries, Inc., Netflix Studios, LLC, Paramount Pictures Corporation, Disney Enterprises, Inc. (the plaintiffs) against flagrantly infringing online locations (FIOLs) who are unauthorizedly making available the plaintiff’s content on the internet. Where dynamic injunctions were meant to protect existing copyrighted work from infringement, Dynamic+ Injunctions go a step ahead to instantly protect any future work of a plaintiff from being infringed. This order will have a profound impact on future cases along similar lines as Dynamic+ Injunctions may become more common without the necessary deliberations on the pressing issues surrounding the determination of copyright ownership in such future works. Most recently, the DHC passed another Dynamic+ Injunction in Universal City Studios Llc. & Ors. vs Fztvseries.Mobi & Ors and relied on the Universal City Studios LLC v. DotMovies.Baby and Ors order in Burger King v. Swapnil Patil.
The order has been authored by Justice Prathiba M. Singh.
4. Wynk Ltd. and Ors. v. TIPS Industries Ltd. [Bombay High Court]
A Division Bench of the Bombay High Court upheld the Single Judge’s order holding that Section 31D of the Copyright Act – which provides a scheme for statutory licensing – does not include internet broadcasting within its scope. The judgement was passed in October 2022, but was uploaded in September 2023 on the High Court’s website. Relying extensively on the rationale of the Single Judge’s order, the Division Bench held that Section 31D specifically deals only with Radio and Television Broadcasting. The Court reasoned that when the Act was amended in 2012 – internet broadcasting was not alien to India and if the Legislature intended Section 31D to apply to internet broadcasting, it would’ve done so by specifically amending the provision. This decision will potentially make a difference in the relationship between record labels and streaming bodies in the future, especially at a time when streaming is generating a humongous revenue for the Indian music industry.
The judgement has been passed by Justices G.S.Patel & Justice Gauri Godse.
5. Natco Pharma Limited v Assistant Controller Of Patents [Delhi High Court]
On January 12, a Single Judge Bench of the Delhi High Court passed an important ruling stating that a pre-grant opponent has to be kept informed about the status of the subject patent application and clarified that the Controller should not conduct unilateral hearings, excluding the pre-grant opponent. The judgement was passed in a writ petition filed by Natco Pharma against the Controller’s order granting Novartis a patent for a form of the Valsartan-Sacubitril complex, after conducting a unilateral hearing excluding Natco therefrom. The writ did not challenge the order on merits but rather alleged procedural irregularities and violation of the principle of natural justice. The Delhi High Court addressed the question of procedural requirements for a pre-grant opposition highlighting the principle of audi alteram partem and held that the Controller should have kept the other party informed of all developments in the case, thus, setting aside the impugned order. Though a judgement that could potentially have an impact on how opposition proceedings are done, it is currently stayed by the Division Bench (covered here). The dispute and the course it takes will potentially have implications on the availability of cheaper alternatives to the subject drug Entresto/ Vymada, a drug treatment for heart failure.
The judgement was passed by Justice C. Hari Shankar.
The Division Bench Stay Order was passed by a Bench of Justice Manmohan and Justice Saurabh Banerjee.
6. Syngenta Ltd. v. Controller of Patents [Delhi High Court]
In a controversy about the requirement of a plurality of invention in a divisional patent application and the place of disclosure of the plurality, a Division Bench of the Delhi High Court clarified that plurality of invention is a sine qua non (an essential condition) for maintainability of a divisional application and it can be disclosed either in the complete or provisional specification of the parent patent application. The Division Bench judgement was passed on October 13, in response to the reference made by a Single Judge Bench where the Court disagreed with the finding of the coordinate bench in Boehringer Ingelheim v. Controller of Patents where the Court emphasised the requirement of the plurality of invention in divisional applications and held that plurality should be disclosed in the claims. The Single Judge Bench in the Syngenta observed that the requirement of plurality is mandatory only when an objection regarding multiple inventions in one patent application is raised by the controller and the plurality of invention can be disclosed in either provisional or complete specification and owing to this disagreement, referred the matter to the Division Bench. The Division Bench’s ruling provides flexibility for patent applicants, allowing strategic use of divisional applications but can potentially impact the entry of generic and biosimilar medicines.
The Division Bench comprised of Justice Yashwant Varma and Justice Dharmesh Sharma.
7. Telefonaktiebolaget LM Ericsson (PUBL) v. Competition Commission of India [Delhi High Court]
Overturning the understanding regarding the intervention of the Competition Commission of India (CCI) in patent licensing disputes, a Division Bench of the Delhi High Court has clarified that the Patents Act supersedes the Competition Act in matters related to allegations of unreasonable conditions in patent licence agreements. Setting aside the Single Judge orders in Ericsson v. CCI and Monsanto v. CCI, the Delhi High Court held that Chapter XVI of the Patents Act is a complete code in itself and overrides the Competition Act, 2002. The Court noted that the Patents Act is specifically designed to deal with matters concerning allegations of unreasonable conditions in licence agreements, abuse of one’s status as a patentee, the necessary inquiry into these allegations, and eventually the relief that can be granted. The Court did this by attempting to see the legislative intent behind the Patents Act. The judgement, passed on July 13, substantially limits the powers of the CCI to hear allegations against the monopolistic practices of the patentees.
The Division Bench comprised of Justices Najmi Waziri and Vikas Mahajan. The judgement was passed collectively in an appeal against 4 orders (two impugning the 2016 Ericsson v. CCI order, one against the Monsanto order, and another appeal against the 2015 Ericsson v. CCI order) and a writ petition filed by Ericsson.
8. Intex Technologies (India) Ltd. v. Telefonaktiebolaget L M Ericsson [Delhi High Court]
In the case involving eight Standard Essential Patents (SEPs) owned by Ericsson, a Division Bench of the Delhi High Court upheld the Single Judge’s decision regarding the validity of the SEPs and Ericsson’s fulfilment of FRAND (Fair, Reasonable, and Non-Discriminatory) commitments. The judgement notes that FRAND terms are not a ‘one way’ street and the obligations are cast on both the implementers and the SEP holders. It notes that interim injunctions can be granted in SEP disputes against an unwilling implementer, and that conduct during the negotiations is a major factor to determine whether a party is a willing or unwilling one. The Court explains that a licensor has to make an offer on FRAND terms and the licensee must either accept it or make a counter offer and in the interregnum it cannot sell its products using the SEP. Another reason cited by the Court, justifying interim injunctions in SEP dispute, is the time taken to conduct a trial in India and the low judge- population ratio. The Court held that interim injunctions can be granted in SEP disputes if the infringement is established at a prima facie level by showing that there is an infringement of one patent from the lot of the SEPs. Further, the judgement also sets aside the 4 factor test in the 2022 Nokia v. Oppo which the SEP holder has to fulfil before any direction of payment of royalty can be issued, for “casting an onerous burden” on the SEP holder to fulfil. The difficulty in balancing the delicately poised sides in this issue, together with the history of so few patent cases taking so long to go all the way through trial (thus making the interim injunction a de-facto ‘result’ instead of an interim measure) is an issue that has been discussed several times on the blog earlier (eg here and here).
The judgement was passed by a Division Bench of Justice Manmohan and Justice Saurabh Banerjee.
9. Indian Patent Office Rejects Johnson and Johnson’s Application to Register Bedaquiline Secondary Patent
In an important development on the availability of Bedaquiline, a drug used in the treatment of TB, the Indian Patent Office on March 23, rejected a secondary patent application (also see here) for not meeting the requirements of Section 3(d) (requiring that the discovered new form of the known substance to enhance its known efficacy) and 3(e) (invention should not be a mere admixtures resulting only in the aggregation of the properties) of the Patents Act. This rejection order passed consequent to a pre-grant opposition was among the many other legal and social campaigns against the high prices at which the drug was made available. Eventually, Johnson and Johnson announced that it would no longer enforce their patents for Bedaquiline (brand name: Sirturo) which is used in the treatment of multidrug-resistant tuberculosis (MDR-TB) in 134 low- and middle-income countries.
The rejection order is authored by Dr. Latika Dawara, Asst. Controller of Patents & Designs Patent Office Mumbai.
10. Microsoft Technology Licensing v. Asst. Controller of Patents and Designs and Raytheon Company v. Controller General of Patents and Designs [Delhi High Court]
The Delhi High Court passed two notable judgement on the patentability of Computer Related Inventions (CRIs). In Microsoft v. Asst Controller of Patents and Designs, (passed on May 15) the Court meandered through the legislative history of Section 3(k) of the Patents Act and observed that there is a lack of clarity on the meaning of “technical effect” and “contribution” under the present 2017 CRI guidelines used by the Patent Office. However, despite noting this anomaly within the relevant laws and guidelines, the Court went ahead and held that Microsoft’s subject invention of using two cookies to provide user authentication instead of one, had a technical effect, without clarifying how it was able to reach this conclusion. In another judgement, Raytheon Company v. Controller General of Patents and Designs (passed on September 15), the Court clarified that the 2016 CRI Guidelines’ requirement of assessing the CRI in conjunction with novel hardware has now been removed from the 2017 CRI Guidelines. Thus, the Court set aside the Controller’s order rejecting Raytheon’s patent application titled “Scheduling in a High-Performance Computing System” for not containing an accompanying novel hardware. The case was discussed on the blog here.
The Microsoft Technology Licensing judgement was passed by a Single Judge Bench of Justice Sanjeev Narula.
The judgement in the Raytheon Company case was passed by a Single Judge Bench of Justice Prathiba M. Singh.
b) Top 10 IP Judgements/Orders (Jurisprudence/Legal Lucidity)
1. The Chinese University of Hong Kong and Sequenom, Inc. v. The Assistant Controller of Patents and Designs [Madras High Court]
In this detailed judgement dated October 12, the Madras High Court interpreted Section 3(i) of the Patents Act, 1970, which keeps a check on the patentability of diagnostic methods. The judgement is perhaps the first which makes a well footed analysis of the provision and clearly explains the factors that are to be kept in mind while examining a patent application from the Section 3(i) lens. The judgement was passed in an appeal against the order of the Controller, rejecting the Chinese University of Hong Kong and Sequenom Inc’s application for a non-invasive prenatal screening test (NIPT) for fetal genomic analysis. The central issue here was whether Section 3(i) is restricted to only in vivo tests practices on the human body. The Court held that “diagnostic” under Section 3(i) should neither be construed narrowly, limited to only in-vivo or definitive diagnosis, nor broadly to include any process “relating to” diagnosis. For this the Court first discussed the different limbs and construction of Section 3(i), assessed the relevant provisions from TRIPS, the relevant parts of the Patent Manual, and assessed the applicability of the findings of the EU’s Enlarged Board of Appeal in case No.G 0001/04 The Court then proposed a middle path to examine the claims in the context of the complete specification to see if they specify a process for making a diagnosis for treatment. If it is concluded that a diagnosis for treatment may be made, (even if not definitive) it would be patent ineligible, whereas, if diagnosis for treatment cannot be made, it would be patent eligible. Keeping this middle ground in mind,on screening tests, the Court held that if the test identifies the disease albeit subject to a subsequent confirmation, it would qualify as “diagnostic” for purposes of Section 3(i), however if they merely provide an indicator relevant for further testing to arrive at a diagnosis, then it will not qualify as “diagnostic”.
The judgement was passed by Justice Senthilkumar Ramamoorthy.
2. Nokia Technologies v. Guangdong Oppo Mobile Telecommunications Corp [Delhi High Court]
On July 3, a Division Bench of the Delhi High Court passed a detailed and well-reasoned judgement clarifying that the Court can issue “Pro-tem security” orders in cases directing an implementer to pay a security amount to safeguard the interest of the SEP holder. The dispute arose because Oppo did not pay royalties to Nokia for using its SEPs after the expiration of their agreement in 2018 and went on to sell their handsets using Nokia’s SEPs in India. The judgement keeps equity at the centre and seems to strike a balance between the interest of SEP holders while also assuring that implementers are not restricted from selling the impugned devices till the end of trial. The judgement specifically addresses this issue by noting that a pro-tem order operates independently of an injunction since it does not stop or prevent the manufacturing and sale of infringing devices. The judgement is also notable for taking into consideration the realities of the Indian legal system where trial and final judgement take time, attributing it to a low judge-population ratio. The Court directed Oppo to deposit 23% of its ‘last paid amount’ in India within 4 weeks of the judgement’s passing. The judgement was challenged before the Supreme Court on August 3, which refused to interfere with the finding of the Division Bench. Recently on December 20, in another SEP-related dispute between Koninklijke Philips N.V and Oplus Mobitech India Pvt. Ltd., a Single Judge Bench relied on the rationale of the Division Bench’s judgement and directed OPlus Mobitech to deposit INR 53.25 crores as pro-tem security.
The Division Bench comprised of Justice Manmohan and Justice Saurabh Banerjee.
3. Anil Karkhanis v. Kirloskar Press and Anr [Bombay High Court]
In an ex-parte judgement, the Bombay High Court, on March 21, granted India’s first licence u/s 32 (licence without copyright holder’s authorisation) of the Copyright Act to translate a literary work, from English to Marathi. The application for the licence to translate the work was filed by Anil Kharkhanis who sought a licence to translate Madeleine Slade (popularly known as Mira Behn)’s autobiography “The Spirit’s Pilgrimage”. The judgement clearly explained the requirements under Section 32 and Rules 32-35 to seek such a licence and simultaneously discussed the relevant portions from the pleadings to assess whether the applicant has fulfilled them. Apart from its topical significance, the judgement will surely act as a ready reference for the courts in the future while deciding on similar issues.
The judgement was passed by a Single Judge Bench of Justice Manish Pitale.
4. Indian Performing Right Society Ltd. v. Rajasthan Patrika Pvt. Ltd and Indian Performing Rights Society Ltd. v. Music Broadcast Ltd. [Bombay High Court]
In a significant judgement for the music industry, the Bombay High Court held that post the 2012 Copyright amendment, authors of underlying work are entitled to receive royalties when the concerned synchronized work (cinematographic film or sound recording) is made available to the public, except when a cinematograph film is exhibited in a cinema hall. The judgement was passed in a matter concerning an interim injunction application filed by the Indian Performing Rights Society (IPRS) against FM Radio Broadcast channels for unauthorised broadcast of the works of IPRS members. In a detailed judgement, the Court elaborately discussed the legislative and judicial history of the rights of the authors of the underlying works. The Court undertook a purposive interpretation of the amendments introduced via proviso(s) to Section 17, 18 and Section 19 (9) and (10) and the Report of the Parliamentary Standing Committee to hold that IPRS can demand royalties in terms of the quantum already determined.
The judgement was passed by a Single Judge Bench of Justice Manish Pitale.
5. HULM Entertainment v. Fantasy Sports [Delhi High Court]
In a suit alleging copyright infringement, HULM Entertainment argued that Fantasy Sports’ “MyFab11” sports fantasy app copies the trading and stock features and GUI of its “Exchange 22” app. Passing an extremely thorough order a Single Judge Bench of Delhi High Court on April 25 clarified that originality is the linchpin for copyright protection, meaning work must originate from the author to be eligible for an injunction and not novelty. The Court adopted the doctrine of merger and held that the alleged commonality between the rival applications in the present case cannot be regarded as an infringement. The Single-Judge order has now been stayed by a Division Bench who will re-examine the above findings.
The Single Judge order was passed by Justice Jyoti Singh.
The Division Bench stay order was passed by Justice Yashwant Varma and Justice Ravinder Dudeja.
6. Bolt Technology v. Ujoy Technology and Toyota Jidosha Kabushiki Kaisha vs Tech Square Engineering Pvt Ltd [Delhi High Court]
This year the concept of transborder reputation in trademark law saw two important interpretations from the Delhi High Court. First, in Toyota v. Tech Square which was passed against a cancellation petition filed by Toyota against the registration of “Alphard” by Tech Square. Toyota alleged that Tech Square’s mark should be cancelled for being identical to its “Alphard” mark used for MUVs in different countries other than India. While transborder reputation has previously been discussed by the Indian courts, those were restricted in the context of passing off. The detailed judgement by the Delhi High Court passed in this case discusses the applicability of transborder reputation and the need to exhibit sufficient evidence to establish the same to cancel the impugned marks. The second judgement dealing with this concept was passed by a Division Bench in Bolt Technology v. Ujoy Technology in an appeal against the Single Judge order. Rejecting the passing off claims filed by Estonian mobility company, Bolt Technology against the use of “Bolt” mark for EV charging stations by Ujoy Technology Private Limited in India, the Court differentiated between Goodwill and Reputation in the context of transborder reputation claims. The Court held that the two concepts were separate from one another and the claimant must prove substantial reputation and goodwill in the concerned country among a sizable and noteworthy number of concerned consumer segments. Doing this was regarded as essential to avoid stifling local industry and balance global brand reputation with the interests of national enterprises and consumers.
The Toyota judgement was passed by a Single Judge Bench of Justice Amit Bansal.
The Bolt judgement was passed by Justice Yashwant Varma and Justice Dharmesh Sharma.
7. Scotch Whisky Association v. J.K. Enterprises [Madhya Pradesh High Court]
In an extremely thorough order, the Madhya Pradesh High Court clarified that a Registered Proprietor of a Geographical Indication (GI) can institute a suit against infringement of the GI without impleading an Authorised User. The suit alleging infringement was filed by Scotch Whisky Association against the use of “London Pride” mark or any indication associating J K Enterprises’ whisky with Scotch Whisky. It was argued by J K Enterprises that since no authorised user of the GI was impleaded as a party, the suit was not maintainable. Assessing the relevant provisions under the TRIPS and the GI Act, the Court held that the GI Act did not intend to restrict the right to institute a suit against infringement to both authorised user and the registered proprietor and rather it can be instituted by either of them.
The order was passed by a Single Judge Bench of Justice Sushrut Arvind Dharmadhikari.
8. Google LLC v. DRS Logistics and Google Llc vs Makemytrip (India) Private Ltd. [Delhi High Court]
In this case a Division Bench of the Delhi High Court clarified whether use of mark as a keyword would amount to “use as a trademark” in the context of the Trademarks Act. The judgement was passed in an appeal against the single judge order in a dispute against Google by DRS logistics alleging that Google’s ad-word programme i.e. allowing registration of trademarks by third parties as search terms (keywords) amounts to trademark infringement. In this lucid judgement, the Division Bench took a well reasoned approach and clarified that prima facie keywords, unlike trademark, does not perform any source identifying functions and thus the use of trademarks as keywords without causing any confusion, dilution of the trade mark, is not infringement. However, in case such a use does amount to an infringement, the Court clarified that Google, the concerned platform here, will be held accountable and will not be able to claim protection as an intermediary under Section 79 of the IT Act since it effectively sells these marks to the advertisers.
The above understanding was relied upon by another Division Bench in Google LLC v. Makemytrip (India) Pvt. Ltd, in setting aside a single judge order, as it was a mere use of the trademark, as a keyword, and that the keywords do not apply to any materials intended to be used for labelling or packing.
Both the judgements were passed by a Division Bench of Justice Vibhu Bakhru and Justice Amit Mahajan.
9. Novozymes v. Asst. Controller of Patents [Madras High Court]
The Madras High Court issued significant clarification on the scope of Sections 3(d) and Section 3(e) of the Patents Act. The judgement was passed in an appeal against the order of the Controller rejecting Novozymes’ patent application for ‘Phytase Variants with Improved Thermostability.’ The Controller had rejected the application on Section 3(d) and Section 3(e) grounds, holding that the claimed invention pertains to a known substance which is not patent-eligible under Section 3(d) and the composition claims pertains to a substance obtained by the mere admixture of ingredients and thus barred by Section 3(e). Hearing the appeal, the High Court clarified that Section 3(d) can be applied to all the known substances including biochemical ones like phytase. However, it set aside the controller’s rejection on the 3(d) ground by holding that there was an enhanced efficacy in the subject invention. With regard to section 3(e) the Court clarified that the provision is restricted to compositions formed by aggregating known ingredients and can apply to composition claims containing new ingredients.
The judgement was passed by Justice Senthilkumar Ramamoorthy.
10. Guangdong Oppo Mobile Telecommunication Corp. Ltd. vs The Controller Of Patent [Calcutta High Court]
In an appeal filed against the order of the Controller rejecting Oppo’s patent application for “charging system and charging method, power adapter”, the Calcutta High Court in a comprehensive judgement held that the Controller should issue a second examination report after fresh amendments are made to the claims. The Court also held that the rejection order’s finding on lack of novelty and inventive step was not accurate and rather the controller had adopted a hindsight view of the prior art and failed to establish how the prior art documents made the invention non-novel. The Court made a substantive interpretation of Section 13(3) stating that the provision makes it clear that after amendments are made to the claims they are to be freshly examined and thus directed the controller to issue the second examination report.
The judgement was passed by Justice Ravi Krishan Kapur.
c) Top 10 IP Legislative and Policy Related Developments
1. Madras High Court Inaugurates the IP Division and Notifies Intellectual Property Division Rules, 2022
The Madras High Court on April 12, 2023, inaugurated the Intellectual Property Rights (IPR) Division, making it the second High Court after the Delhi High Court with a dedicated IP Division to hear IPR disputes. The relevant rules governing the division- Madras High Court Intellectual Property Division Rules, 2022 were notified on April 6, 2023, which were prepared keeping in mind the 158 years history of the High Court and were drafted to address the concerns of IP litigants consequent to the abolition of the IPAB. The Rules are applicable with respect to practice and procedure for ordinary original, appellate, criminal, and writ jurisdiction of the Court but do not apply to penal provisions of the IP statutes. Apart from the Madras High Court, the Calcutta High Court has recently published the Draft IPD Rules for public comments by January 5, 2024.
2. The Ministry of Commerce Released the Draft Patents (Amendment) Rules, 2023 for Comments from Relevant Stakeholders
The Ministry of Commerce released the Draft Patent (Amendment) Rules, 2023 on August 22. These Rules, if accepted, can change the Indian Patent landscape substantially owing to their impact on the flexibilities of working statement requirements, pre-grant opposition, and information about foreign applications (see here). The Ministry had invited comments on the draft Rules and some of the comments shared with the Ministry can be accessed here, here, and here.
3. Clarifications by the Executive on Section 52(1) (za) of Copyright Act
Interpretation of Section 52(1)(za) of the Copyright Act, which exempts the bona fide use of sound recordings during religious purposes, has been the bone of contention when it comes to the use of sound recordings during marriage ceremonies. To seemingly put an end to this controversy, Jaipur police in January had issued a circular stating that no music licence will be required to play sound recordings at marriages and associated festivities. However, this blanket interpretation was stayed later by the Rajasthan High Court on January 23, 2023. On May 12, the Delhi High Court touched upon this issue in the form of some comments/ interpretations but, ultimately not giving a conclusive finding on the controversy. On July 24, the Department of Promotion of Industry and Internal Trade, Ministry of Commerce issued a public notice clarifying that no licence from the copyright owners is required to play music in wedding festivities. However, the public notice is a mere reproduction of the provision without having context of the current narrow judicial interpretation as done in Ten Events and Entertainment v. Novex Communications Pvt. Ltd. and Novex Communications v. Union of India and seems to overlook the fact that similar clarifications/ notices by the executive, issued earlier, have been quashed by the courts for abuse of power (see here and here).
4. Parliament Passed Cinematograph (Amendment) Bill, 2023
On July 31, the Parliament passed the Cinematograph (Amendment) Bill, 2023 bringing in measures to curb “film piracy”. The Bill amended the Cinematograph Act, 1952 after almost 40 years, with the last significant amendments being made in 1984. The Act imposes punishments against unauthorised recording of a film in the place authorised to exhibit it (Section 6AA) and unauthorised exhibition (Section 6AB), proposing a jail term of up to three years and a fine up to 5% of a film’s production cost for persons involved in film piracy, which can be enormous in cases of big-budget movies and thus may exceed the punishment which was earlier in place (u/s 7(1) imprisonment up to three years, or with a fine which may extend to one lakh rupees, or with both. The Act also suffers from a lack of conceptual clarity as it does not define piracy which normally means copyright infringement, and instead uses it in a way that seems to distinguish it from copyright infringement.
Further to the newly inserted Section 6AB of the Cinematograph Act, which prohibits unauthorised exhibition of films, the Ministry of Information and Broadcasting on November 3, established an institutional mechanism of appointing (non judicial) nodal officers to receive complaints alleging copyright infringement and instruct digital platforms to remove pirated content. The mechanism gives discretionary powers to these nodal officers to determine whether infringement/piracy has taken place, despite them not being judicial officers. Furthermore, there is also no requirement for hearings to mandatorily take place and is at the discretion of the nodal officer to grant them in a case where the complaint has been filed by a non copyright owner. Thus, the mechanism opens a new path to obtain a blocking order, completely bypassing existing institutional and legal safeguards for the same cause of action.
6. Parliament Passed the Jan Vishwas Act, 2023
The Parliament passed the Jan Vishwas (Amendment of Provisions) Bill 2022 on August 2, decriminalizing multiple offences under 42 statutes, which includes Copyright Act, 1957, the Patents Act, 1970, the Trade Marks Act, 1999 and the Geographical Indications Act, 1999. Though, the statement of object states that the aim is “Ease of Living and Doing Business in India, the Bill ( now the Jan Vishwas Act, 2023)) significantly dilutes (also see here) certain important provisions of these statutes. The Act introduces a ten-fold reduction in the penalty for non-filing or refusal to file Form 27 potentially undermining the effectiveness of the safeguard. The Act also removes Section 68 of the Copyright Act (which prescribed the penalty for making false statements to deceive or influence an officer) and thus raises concerns about the baseless threats of criminal action by copyright owners. In the pharmaceutical trademarks context, the Act misses an opportunity to address deceptive practices related to similar brand names for different drugs, instead relaxing penalties for pharmacies. Thus, the Act can negatively impact competition, public health, and consumer welfare.
7. Parliament Passed the Biological Diversity (Amendment) Act
The Parliament passed the Biological Diversity (Amendment) Act, 2023 on 27 September. The Act includes proposals to decriminalize the offenses and exempt users of codified TK and AYUSH practitioners from sharing the benefits with local communities. The Act is far from being ideal and, as pointed out here, can jeopardize the interests of indigenous people and local communities. Furthermore, it removes the say of the local communities and benefits claimants with a non-representative body to settle the issue of access to biological resources.
8. Department of Biotechnology Notified its IP Guidelines
The Department of Biotechnology (DBT) under the Ministry of Science and Technology on September 6, issued the DBT Intellectual Property Guidelines. The Guidelines regulate ownership, transfer/ commercialization of intellectual properties from DBT-funded (extra-mural and intra-mural) institutions. The Guidelines seem to have the dual objectives of commercialization of technology for societal impact and to disseminate knowledge for the “public good”. With regard to licensing, the Guidelines suggest that for research leads with lower Technology Readiness Levels (TRLs) a mode of exclusive licensing may be considered by the institutions, whereas for the institutions with higher TRLs, non-exclusive licensing may be preferred. For exclusive licensing, the Guidelines clarify that the same shall be subject to the irrevocable, royalty-free right of the Government to practise or mandate the licensee to sublicense to fulfil the health, safety, or security needs of the country.
9. CGPDTM Invited Comments for Revision of the Different IP Manuals
On August 20, 2023, the Office of the Controller General of Patents, Designs, and Trademarks (“CGPDTM”) released a notification seeking feedback and suggestions on current intellectual property (IP) manuals and guidelines. The manuals and guidelines are essential for the streamlined implementation of statutory provisions and rules, providing valuable insights to office functionaries. This move coincided with the Delhi High Court’s order in Agfa Nv and Anr. v. The Asst. Controller of Patents and Designs and Anr. wherein the Single Judge Bench by Justice Amit Bansal observed the need to update the Patent Manual.
10. The Ministry of Consumer Affairs Released Guidelines for Prevention and Regulation of Dark Patterns 2023
The Guidelines for Prevention and Regulation of Dark Patterns 2023 seek to curb deceptive design elements in user interfaces. These guidelines target practices such as false urgency, basket sneaking, subscription traps, confirm shaming, forced actions, nagging, interface interference, bait and switch, hidden costs, and disguised ads. The intersection of dark patterns with intellectual property (IP) law presents challenges involving trademark infringement, misuse of copyrighted content, false advertising, design patent and trade dress violations, cybersquatting, and false association or endorsement. These deceptive practices undermine the principles of IP law, emphasizing the need for ethical design, compliance with IP laws, and safeguarding consumers from deceptive practices.
d) Other IP Developments
On April 18, 2023, the Central Government registered M/s Cinefil Producers Performance Limited as a copyright society under Section 33(3) of the Copyright Act, 1957, focusing on cinematograph films. It will be interesting to examine how the cinematograph film-related copyright societies (including music-related copyright societies) interact with each other especially in areas of converging interests.
2. ISRA and Music Labels Enter into a Historic Royalty Sharing Agreement
On April 25, 2023, reports surfaced about an agreement between the Indian Music Industry (IMI) and the Indian Singers Rights Association (ISRA) that promises royalties for member singers. While the details of the agreement are yet to be disclosed, it was announced in April 2023, though signed in October 2022. The agreement purportedly covers all record labels, singers, and musicians nationwide. However, it’s essential to note that IMI, being an industry body, cannot directly collect royalties; instead, its sister concern, PPL, handles this. The agreement’s significance lies in addressing the long-neglected royalty rights of singers, with a guaranteed Rs. 50 crore for the first year and subsequent increments. The agreement is limited in scope and may not include royalties for streaming services.
3. Suhas Palshikar- Yogendra Yadav and NCERT’s Copyright Spat
Political scientists Suhas Palshikar and Yogendra Yadav requested the removal of their names from the National Council for Education Research and Training’s (NCERT) political science textbooks. As former chief advisors for NCERT’s political science textbooks, they expressed disagreement with controversial changes made by the education council, including removing references to the 2002 Gujarat riots and deleting chapters on various topics. However, the organization, disregarding the moral rights element here, refused to acknowledge the request stating that there exists no individual authorship and that they had given all the rights to NCERT when the committee was terminated.
4. CGPDTM’s Open House Sessions to Address Grievances/Suggestions on IPR Issues
The Office of the Controller General of Patents, Designs, and Trademarks announced that it would conduct its Open House sessions daily, facilitating direct interaction with stakeholders, IP practitioners, and applicants. These sessions, held via WebEx from 4:30 PM to 5:30 PM, address intellectual property grievances and suggestions. Each weekday focuses on specific areas—Patents (Mon/Wed), Trademarks (Tue/Thu), and Designs, Copyrights, and Geographical Indications (Fri) (see here and here).
5. Persistent Problems with the Trademark Public Search and E-register
The year seems to have been a very difficult one for the online trademark portals. After several troubles, the Controller General of Patent Design and Trademark (CGPDTM) announced that the Trademark Public Search and E-register features on the IPIndia website will temporarily be unavailable from 10 AM to 4:30 PM on working days starting September 14. The notice attributes the restriction to server load issues and aims to upgrade hardware and software for improved performance. The duration was later modified to 10 AM to 3:30 PM from September 25 onwards. Consequently, the Intellectual Property Attorneys Association filed a writ petition before the Delhi High Court alleging that persons dealing with trademarks are subjected to immense prejudice and unavailability of the above features makes it virtually impossible for them to function. They further alleged that the Trademark Registry was imposing strict timelines for filing responses to the first examination reports disregarding the unavailability of the E-Register portal. On December 22, a Single Judge Bench of the Delhi High Court directed the Controller General’s office to file a response stating the steps that they have taken to resolve the issue and also to depute a Senior Officer who is aware of the technicalities of the issue to take up any technical queries which may arise on the next date of hearing. This development coincides with the oral response of one of the officers during December 19’s Trademark Open House Session. Upon being asked if this problem could be resolved within a month, the officer said “hopefully”.
6. Transparency Issues Around Patent Examiners’ Recruitment Process
Three months after scrapping the preliminary exams for the recruitment of patent and designs examiners, the Department of Promotion of Industry and Internal Trade (DPIIT) has re-notified the preliminary exams to be conducted on December 21. The preliminary exams were scrapped just a day after conducting them owing to some unstated “irregularities/ technical reasons.” This time, the National Testing Agency (NTA) will conduct the exams, replacing the Quality Council of India (QCI) whose earlier role and dominance in the entire recruitment process raises pressing questions on the need for transparency in the entire matter (see here and here).
7. Orders on Confidential Information
This year many orders protecting the confidential information of the parties were passed by the Indian courts. On March 13, the Delhi High Court granted an ex parte interim injunction in Markets and Markets Research Pvt. Ltd. v. Meticulous Market Research Pvt. Ltd. In this case, Markets And Markets Research alleged that Meticulous Market Research was copying the format and contents of their confidential market research reports and thus infringing their copyright. The order, passed by a Single Judge Bench of Justice Amit Bansal, relies on the Market and Market’s assertion regarding the confidentiality of their data but does not provide any analysis on why the same shall be regarded as confidential. In another order passed by the Bombay High Court in Rochem Separation Systems (India) Pvt. Ltd. v. Nirtech Private Limited & Ors., on March 30, the Court underscored the importance of specific details in examining confidentiality claims. The order authored by Justice Manish Pitale, stated that a party must clearly describe the information over which it is claiming confidentiality without which, the allegations against the defendant cannot be examined. Apart from these, there are two more orders pertaining to protection of confidential information- Henry Harvin India Education Llp vs Abhishek Sharma and Epikindifi Software vs Edison Ramesh And Others).
8. Kerala High Court Breast Cancer Drugs Suo Motu Proceedings
In the ongoing suo motu proceedings before the Kerala High Court concerning the issue of whether compulsory licence shall be issued to ensure accessibility of drugs to cure Breast Cancer (notably Ribociclib and Abemaciclib), Novartis and Eli Lilly filed their respective affidavits asserting that the sales of their drugs remained high despite the high prices. However looking at the Form 27s filed by Novartis for Ribociclib, it can be seen that the quantum of the units worked much lower than the number of afflicted patients in the country. The suo motu proceedings are out of a writ petition which was filed by a cancer patient and after her unfortunate demise, the Court suo moto directed the continuation of the proceedings, and began inquiry into the availability of these drugs.
The Madras High Court delivered a judgement against the appeal from the 2010 Copyright Board’s order, fixing compulsory licence royalty rates for radio broadcasters under Section 31(1)(b). Previously, a rate of 2% of the Net Advertisement Revenue (NAR) of the earnings of each FM Radio station was fixed for all music providers by the Copyright Board. Assessing the provision, the Court has set aside the in rem (on all the parties) application of the 2010 order and clarified that it will be applied on the parties to the dispute only. Furthermore, the Court revised the royalty rates fixed by the Copyright Board earlier, upholding the 2% NAR (Net Advertising Revenue) rate set by the 2010 Copyright Board order while also setting a minimum platform rate of INR 660 (Per Needle Hour approach) PNH. See here for a quick explainer on these terms. Presently many SLPs have been filed against this order before the Supreme Court, but the order still remains in operation.
10. Delhi High Court’s Intellectual Property Division Released its Annual Report
The Delhi High Court’s IP Division released its Annual Report for the year 2022-23. The Report notes how the IPD was established consequent to the abolition of the IPAB. It highlighted the uncertainties that came with the abolishment of the IPAB which led to the IPD working in close coordination with the members of the IP Bar. Additionally, details of cases heard, resolved, and pending before the IPD were reproduced in the report as well as part of its account of activities of the IPD. Though the move to publish the report with the necessary data about cases and appeals pending and disposed of is commendable however, as has been discussed here, the data has gaps that warrant explanations and clarifications.
e) Other Notable Development
1. Providing a thorough analysis of the three factor test for an interim injunction (prima facie face, balance of convenience, and irreparable harm), a Division Bench of the Bombay High Court in Tri-Parulex Fire Protection System v. M/s. CTR Manufacturing Industries Private Limited set aside the order of the Single Judge, holding that the Single Judge acknowledged rights which were beyond the patent itself (see here for the post on this decision).
2. The Delhi High Court refused to grant an interim injunction due to non-working of the patent in Enconcore N.V v. Anjani Technoplast (see here for a post on this order).
3. The Delhi High Court, in The Hershey Company V. Atul Jalan Trading As Akshat Online Traders, citing public safety and health directed the Delhi Police to conduct an investigation into the resale of re-packaged expired chocolates under the Hershey’s trademark.
4. In a problematic order passed in Dabur India ltd. v. Dhruv Rathee, the Calcutta High Court directed Youtuber Dhruv Rathee to remove the allegedly disparaging parts of his video on packaged fruit juices. The order was passed in a case filed by Dabur India Ltd., alleging that Rathee’s video disparages their “Real Fruit Juice” mark and product.
5. The Delhi High Court in Dharampal Satyapal Limited vs Mr Basant Kumar Makhija while interpreting the provisions of Section 124 of the Trade Marks Act, 1999 (“Act”), held that the plea regarding invalidity of a defendant’s registration can also be raised by a plaintiff in its replication.
6. The Delhi High Court in Ayur United Care v. Union of India clarified that writ petitions challenging an IPAB order should be filed before a Single Judge Bench of the High Court.
7. The Delhi High Court to decide whether and how street art in general is subject to the Copyright Act and can fair use be sought against unauthorized commercial exploitation of the same in St Art India Foundation v. Acko General Insurance.
8. Delhi High Court passed an interesting order in Anubhav Jain v. Satish Kumar Jain, holding that the rights u/s 57 of the Trademarks Act to seek rectification of the register, is independent of the rights u/s 124 which allows the defendant to seek a stay over the infringement proceedings when the validity of the trademark is raised as a defence (see here).
9. In Pharmacyclics v. Hetero Labs, the Delhi High Court clarified that the orders passed by the IPAB after September 21, 2019 would be valid under the de facto doctrine and restrained Hetero Labs Limited, Natco Pharma Limited, BDR Pharmaceuticals International Pvt Ltd, Shilpa Medicare Limited And Alkem Laboratories from manufacturing and marketing Pharmacyclic’s Ibrutinib.
10. The Karnataka High Court in M/S Mangalore New Sultan Beedi Works vs State Of Karnataka has held that the Copyright Act provides for a dual framework, allowing both civil and criminal actions independent of each other.
11. Delhi High Court to look into the matter of the Government’s refusal to disclose COVID-19 vaccine collaboration agreements.
12. The Delhi High Court in Sony Music Entertainment India Pvt. vs Yt1S.Com, Yt1S.Pro, Yt1S.De & Ors passed a blocking order against stream ripping i.e. the act of converting a song/video into a downloadable audio file. The Court here directed to block only the mirror/redirect/alphanumeric websites but there has been no discussion to determine whether a website is a mirror website or not.
13. Overturning the order of the Single Judge, a Division Bench of the Delhi High Court in Fullstack Education v. INSEAD clarified that a finding on rectification of a mark u/s 57 needs to be conclusive and cannot be based on prima facie findings. The Single Judge order had earlier held INSEAD and INSAID to be deceptively similar and had directed for cancellation of the impugned INSAID mark.
14. Delhi High Court imposed costs worth a whopping 2 Crores on Triveni Interchem Pvt. Ltd for “wilful and contumacious disobedience” of the interim injunction order.
15. The Trademark Registry almost deemed abandoned 98,000 trademark applications and 82,000 opposed trademark applications. However, the public notice was later withdrawn, bringing the applications back to their original status (see here and here).
16. In a series of cases, the Delhi High Court has highlighted the importance of passing reasoned orders and to this extent has come down heavily on the Patent Office and the Trademark Registry for passing cryptic orders without engaging with the issues at hand and even directed the CGPDTM officers to undergo a course on writing judicial orders. Some of these cases include Perkinelmer Health Sciences Inc, Rosemount Inc, Grupo Petrotemex S.A. De C.V., Shell Brands International Ag , Blackberry Limited,, and Dolby International AB orders. These have been covered here, here and here on the blog. These orders no doubt re-emphasise the obligation on the IP Offices to give reasoned orders which will potentially lead to more application of mind and could reduce the number of appeals in the future.
17. In a copyright infringement suit concerning the film ‘Shamshera’ the Delhi High Court in Bikramjeet Singh Bullar v. Yash Raj Films Pvt. Ltd. has held that copyright does not extend to ideas and themes and on a prima facie view the film is not similar to the script as alleged by Bikramjeet Singh Bhullar.
18. The Delhi High Court in Jayson Industries v. Crown Craft has clarified that the Designs Act protects the application of ideas to articles and not ideas in abstract themselves. Clarifying the position the Court has held that the test for a design is ocular insofar as the ‘article’ concerned must “appeal to the eye”.
19. Social Media platform Humans of Bombay filed a case against a similar platform- People of India alleging copyright infringement and replication of their business model. The Delhi High Court directed both the parties to refrain from infringing each other’s work and clarified that no copyright shall vest in the idea of a story telling platform. Rather the expression of the stories will be protected. The dispute was also in the news for the online spat between Humans of Bombay and Brandon Stanton, founder of a similar pre-dating platform, Humans of New York.
20. In Saurav Chaudhary v. Union of India, the Delhi High Court emphasised the need to supervise and govern patent and trademark agents, highlighting the lack of a regulatory/supervisory body for these agents (see here for the post on the order).
21. The Delhi High Court in Vifor International Ltd. v. MSN Laboratories Pvt. Ltd and Anr undertook a thorough discussion on the concept of “product by process patent” and discussed its applicability within the Indian patent regime. The Single Judge judgement is presently stayed by the Division Bench who disagreed that the subject claims were “product by process” claims alone.
22. The Delhi High Court in Dr. Reddy Labs v. Fast Cure Pharma, held that a rectification petition can be filed not only before the High Court which has territorial jurisdiction over the office of the concerned Trademark registry but also those High Courts where the petitioner feels the ‘dynamic effect’ of the registration.
23. Delhi High Court dismissed an appeal by PepsiCo India Holdings against the Protection of Plant Varieties and Farmers’ Rights Authority order, effectively revoking Pepsico’s FL 2027 potato variety registration (see here for the post on this).
IPO allowed Gilead patent with 13 oppositions – 3658/Kolnp/2009 during last week of December, 2023 which is missing in your list.