[ad_1]
To print this article, all you need is to be registered or login on Mondaq.com.
With the practices and processes in India returning to some
semblance of normalcy (‘normalcy’ used very loosely) in
2022 after almost two years of pandemic-induced disruptions, the
past year was quite eventful. The Indian Intellectual Property
landscape witnessed some notable developments – in the realms
of policy, practice and procedure as well as jurisprudence. In this
article, we have summarized some of the key changes and
developments to bring our readers up to speed with the prevailing
legal scenario in India. Additionally, wherever applicable, we have
also discussed lacunae / regressions that emerged in the year that
went by, along with expected changes/trends for the coming
year.
Key Policy Changes
1. New Intellectual Property Division and its rules at the
Delhi High Court
Ever since the Intellectual Property Appellate Board (IPAB) was
dissolved in mid-2021, there was uncertainty surrounding the way
forward – both in terms of the fate of the matters pending
before the (erstwhile) IPAB, as well as the expected processes and
procedures of the successor forum.
While the picture surrounding this is still non finito,
this year has seen significant progressions. The Delhi High Court
(‘DHC’) created a first-of-its-kind carve out – the
Intellectual Property Division – for the streamlining and
adjudication of IP disputes, including matters that were pending
before, and transferred from, the Delhi-branch of the erstwhile
IPAB. To that end, the DHC notified its Intellectual Property
Rights Division Rules on 24 February 2022. Since then, there has
been a regular roster of judges at the DHC adjudicating pending and
fresh IP matters, which has ushered in a relatively speedier
conclusion of IP litigation at the DHC level.
Hot Take: The creation of a dedicated division
for IP disputes at the DHC has not only resulted in the
interpretational nuances of the applicable law coming to the
forefront, but has also resulted in an uptick in the court’s
acceptance of actual damages being awarded in cases of IP
infringement – including an increase in exemplary monetary
damages, especially against habitual offenders.
Lacuna / Expected Changes in 2023: Matters that
were pending before the erstwhile IPAB, in jurisdictions other than
Delhi, are still in a state of limbo; similar developments should
ideally take place in other courts/jurisdictions within India as
well. This inference is supported by the changes already brought
about by some of the other Courts in the minutiae of procedural
aspects (for example, the fresh nomenclature system for IP matters
introduced by the Calcutta High Court).
2. New Patent Rules before the High Court of
Delhi
The DHC also notified the High Court of Delhi Rules Governing
Patent Suits, 2022 with effect from 24 February 2022 with the aim
of simpler, effective and efficient adjudication of patent suits
filed under the Original jurisdiction of the DHC. These rules
provide directions for the manner in which pleadings are to be
submitted in patent suits, including the manner in which different
claims have to be documented and presented before the court.
Developments in Jurisprudence
While there have been several notable cases (many emanating from
the newly created IP Division at the DHC!), we’re presenting
here a select few to give readers an indication as to the
jurisprudential trends with respect to IP matters in India. For
ease of reading, the case laws in this section have been divided by
subject matter.
A. Trade Marks
- Recognition of use of keywords as part of trade
mark infringement and passing off1
– In the interim stages of a matter, the DHC held that
invisible use of trade marks as keywords in the Google Ads Program
can constitute infringement and passing off. While the case is
still pending final adjudication (including on the interim order
itself, which is currently under appeal), it will be interesting to
see which way this goes. - Declaration of Domain Name Registrars as
‘Intermediaries’2
– Taking a strict stand on the issue of
domain name registrars (located outside India) refusing to
implement the decisions of Indian courts, the DHC declared domain
name registrars as ‘intermediaries’ under the Information
Technology Act, 2000 (IT Act) and directed them to comply with not
only the orders passed by the courts in India, but also with the
applicable rules under the IT Act. - Recognition in rem of personality rights of Bollywood Star
Amitabh Bachchan3 – In the interim stages of a
matter, the DHC passed an omnibus order recognising and protecting
personality rights of a popular Indian actor. The order in effect
restrains the public at large from infringing the publicity or
personality rights of the actor by misusing his name, voice, image
or any other attribute that is exclusively identifiable with him,
for any commercial or personal gain.
B. Patents
- Clarification of test for divisional
applications4 – The DHC laid down
the test for examining divisional applications for grant of
patents. Referring to Section 16 of the Patents Act, 1970, the DHC
stated that divisional application may be filed (i) in respect of
an invention disclosed in the specification of an earlier parent
patent application, and (ii) in the event there is no duplication
of claims in the two specifications, i.e., the parent specification
and the divisional specification. - Recognition of Doctrine of Equivalence and decision on parallel
importation5 – The DHC applied the concept of
doctrine of equivalence to arrive at the finding of a prima
facie case of infringement and dismissed the exemption of
parallel import under Section 107A(b) of the Patents Act, 1970. The
Court held that patents are territorial in nature and therefore,
unless otherwise mandated by law, a patent protected outside India
will not be recognized and protected in India, and the importation
of any product which violates an Indian patent would not be allowed
even if it is patented in any other jurisdiction. - Clarification on appropriate jurisdiction in cases
of appeals6 –
Deciding on a set of clubbed matters, the DHC clarified the issue
of ‘jurisdiction’ of High Courts in cases of revocation
petitions and appeals, which had come to the forefront after the
dissolution of the IPAB. The DHC clarified that the jurisdiction of
courts would be determined on the basis of the ‘office’
where the patent application originates – even if per the
internal mechanisms and functioning of the IP Offices, the actual
office that conducted an examination of the patent
application is different from the one where the application
originated.
C. Copyright
- Copyright Infringement held to be a cognisable and
non-bailable offence7 – The
Supreme Court held that the offence of copyright infringement under
Section 63 of the Copyright Act is cognisable and non-bailable,
meaning that the accused can be arrested without a warrant and for
which, bail will be per the discretion of the court of law. This
decision has finally settled the debate and conflicting opinions on
the issue coming out of different high courts. - Court directed disclosure of
information by an intermediary, even when the intermediary servers
are located outside India8 – In a case before the DHC,
the court – while recognizing its status as an
‘intermediary’ – directed Telegram to disclose details of
persons operating channels containing infringing content on the
platform. The court recognized that modern day smart phones would
fall under the definition of a ‘plate’ as construed under
the relevant provisions of the Copyright Act, 1957, and thus,
seeking information on the owner of the channels is permissible.
The court also dismissed Telegram’s contentions on
non-disclosure of information on account of its servers being in
Singapore and the privacy law there.
Other Observations
Backlogs
Among the pool of positive developments, one regression that was
notable this year was that of backlogs: the pandemic induced
lockdowns have resulted in considerable backlogs at the IP Offices,
resulting in delays in various steps in the prosecution
process.
Expected Changes in 2023: The IP Office has
already started taking steps to reduce the backlogs, including
changes in the manner in which hearings were conducted (which
sometimes resulted in procedural hurdles and consequently, further
delays), and have also made themselves more accessible for
stakeholders to present their grievances. With the creation of the
IP Division at the DHC (discussed above) – which shares some
limited overlapping powers with the IP Offices – the Courts
have also started intervening with the aim of expediting matters by
having some contentious cases (mostly relating to cancellation /
rectification of trademarks) transferred from the IP Offices.
Boom in ‘Metaverse’ Trade Mark
Registrations
2022 saw a rise in the number of registrations acquired for
marks in relation to the metaverse at the Trade Marks Office.
Expectations in 2023: With the addition of
digital goods like NFTs in the most recent edition of the
International Classification of Goods and Services for the Purpose
of the Registration of Marks (Nice Classification), registrations
in relation to digital goods is also likely to see a boom.
Likelihood of Practice-related Procedural Changes
The past year gave an indication as to the impending
practice-related changes at the IP Offices. These may include the
possibility of a more stringent ‘notarization’ requirement
for certain documents. While the expected changes are not codified
or notified in a formal intimation yet, the past year witnessed an
increase in the number of objections raised by the IP Offices on
some procedural requirements.
Footnotes
1. MakeMyTrip India Private Limited vs.
Booking.com B. V. & Ors. [CS (COMM) 268/2022]
2.Dabur India Limited & Ors. v Ashok
Kumar and Ors [CS(COMM) 135/2022]
3. Amitabh Bachchan v. Rajat Nagi &
Ors. [CS (COMM) 819 of 2022]
4. Novartis AG v. Controller of Patents
and Designs [C.A.(COMM.IPD-PAT) 12/2022
5. Sotefin SA v. Indraprastha Cancer
Society And Research Center & Ors. [CS(COMM) 327/2021]
6. Dr. Reddys Laboratories Limited &
Anr. Vs. The Controller of Patents & Ors. C.O. (CONN.IPD-PAT)
No. 3/2021; Thyssenkrupp Rothe Erde Germany GMBH Vs. The Controller
of Patents & Anr. C.O. (CONN.IPD-PAT) 1/2022 and Elta Systems
Ltd. Vs. The Controller of Patents C.A.(COMM.IPD-PAT) 169/2022
7. M/s Knit Pro International v. The
State of NCT of Delhi & Anr [Criminal Appeal No. 807 of
2022]
8. Neetu Singh and Anr. v. Telegram FZ
LLC and Ors., CS (COMM) 282/2020
This article was originally published in the IP Newsletter
of the International Law Office – www.lexology.com/commentary.”
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
[ad_2]
Source link
