MARCH OF THE IP LAW IPR NEWSLETTER

MARCH OF THE IP LAW

IPR NEWSLETTER

Vol. VII (ISSUE 2)

(APRIL 2019 – SEPTEMBER 2019)

IPR CHAIR

NATIONAL LAW SCHOOL OF INDIA UNIVERSITY

BENGALURU

Ministry of Commerce and Industry,

Government of India

New Delhi

Contents:

EDITORIAL COLUMN

ACTIVITIES OF IPR CHAIR AND CIPRA

SUMMARY OF IPR DECISIONS

CASES RELATED TO IP and STANDARDS

IPR STATISTICS

INTERNS WITH CIPRA

IP BOOK ALERT

EDITOR IN CHIEF:

PROF. (DR.) T. RAMAKRISHNA

MCI CHAIR PROFESSOR On IPR

ASSOCIATE EDITORS:

JNANA TEJA and SIDDHI SUMAN

IPR CHAIR, NATIONAL LAW SCHOOL OF INDIA UNIVERSITY, BENGALURU

Sponsored by Ministry of Commerce and Industry, Government of India 1

FROM THE EDITORIAL BOARD:

Dear Readers, I have Great Pleasure in presenting the Second issue of the Seventh volume of our

newsletter “The March of IP law” for the year 2018-19 for your kind reading and expect constructive suggestions on the content and quality of the newsletter.

At the outset on behalf of the NLSIU Authorities, I express my sincere thanks to the authorities of the Department for Promotion of Industry and Internal Trade (DPIIT) under

the Ministry of Commerce and Industry for having sanctioned the chair on intellectual property rights to the National Law School of India University and for the approval of the

appointments. The kind gesture has given a boost to the activities of the Centre. The past six months saw a series of workshops, two national conferences, the opening of

our extension branch in Jharkhand and many more such events. The chairperson and the researchers attended many more conferences as the chief guest, key note speakers and participated in many consultative meetings and other events all over the country. It gives

us immense pleasure to notify that around 30 students from different law schools interned with the centre, and submitted their research reports on different aspects of IPR.

These are very interesting times in the world of Intellectual Property; this period witnessed significant changes in the patent rules extending expedited examination to 8 more

categories of applicants such as female applicants, small entities, departments of government etc. and the removal of transmittal fee requirement. The ministry notified the

adoption of GI Logo and Tagline (“Invaluable Treasures of Incredible India”) and also the model guidelines on the implementation of IPR Policy for academic institutions. There are increasing number of patents and trademarks and GI’s filed every month, landmark

decisions being passed by the courts and the government is also increasing awareness about intellectual property. The centre whole heartedly welcomes all positive changes.

We would also like to inform you that we will always strive to have more outreach and advocacy in the coming few months and we look forward to your support. We thank you

very much for the feedback we have received and we hope that you will appreciate our efforts.

Prof. (Dr) T. Ramakrishna

DPIIT Chair on IPR National Law School of India University

Bengaluru



Programs organized by The Chair on IPR,

CIPRA and IOE-IPR&S

1. Launch of "NLSIU-CIPRA--

JHARKHAND Project Centre" at

Ranchi, 12th July 2019.

2. SEMINAR ON COMMUNICATION,

COORDINATION, AND

COLLABORATION

Strengthening the Fight against

Counterfeiting and Smuggling on 31st

August 2019.

3. Roundtable on Unlocking Fair Value to

Stakeholders took place in National Law

School of India University (“NLSIU”) on

September 5th 2019.

4. One day workshop on “Intellectual

Property Rights at National College,

Bengaluru on 13th September 2019.

5. IPR Workshop at Ranchi, after launch of

NLSIU-CIPRA--JHARKJAND IPR

Project Centre at Ranchi, on 9th

August 2019

6. Participated in the Smart Cities

Conference: 5G Network Technologies,

Applicants and Standards at Windsor

Manor Hotel, Bangalore, organized by

US Trade and Development Agency,



TIA, CII and Standards Development

organizations TSDSI, ANSI and BIS on

5th and 6th September 2019.

Professor (Dr) T. Ramakrishna invited for

Lectures/Outreach Events (Mar-Sept, 2019)

1. Participated and Presented a Lecture in

5 days ASEAN-INDIA Workshop on

“Intellectual Property Rights &

Technology Transfer” under ASEAN-

INDIA Innovation Platform at India

Habitat Centre, New Delhi on 1st April to

5th April 2019.

2. Participated in India Intellectual

Property Convention 2019 at New Delhi

on 26th April 2019.

3. Participated as a Chief Guest and

Inauguration of the CMRU-KSCST IP

Cell and National Workshop on

Significance of Intellectual Property

Rights and its interplay with Research on

4th May 2019.

4. Participated in a workshop on

Intellectual Property Rights and

Inaugural function of KGI-KSCST IP

Cell at Kripanidhi Group of Institutions

on 3rd May 2019.

5. Participated in a Workshop on

“Leveraging IPR in Biotech and Pharma

Sector” on 25th May 2019.

6. Participated and Presented in a

Conference on Trademark at

Coimbatore on 23nd June 2019.

7. Participated and presented in Program

for Research Scholars, VTU-HRDC held

at VTU, PG Centre Muddenahalli (Birth

place of Sir M. Vishwesharaiah) on 4th

August, 2019.

8. Participated and Presented at

Geographical Indications consultative

meeting at Varanasi in August 2019.

9. Participated and Presented in DST

Expert Committee meeting at

Kodaikanal on 14th and 15th August 2019.



10. Participated and Presented in one day

workshop on “IPR for Spurring

Innovation and creativity” at National

College, Basavanagudi, Bangalore on

13th September 2019.

11. Presented as a chief guest and

inaugurated Inauguration of IADC-

KSCST IP CELL at Indian Academy

Degree College, Hennur on 18th

September 2019.

Summary of IPR Decisions

Trademark cases

Radico Khaitan v Devans Modern Brewries Pvt.

Ltd. IN THE HIGH COURT OF DELHI AT

NEW DELHI, CS(COMM) 724/2018, 07th

March, 2019.

Radico Khaitan had been manufacturing a ready to

drink vodka under the trademarked name

ELECTRA. According to the contentions of the

plaintiff, the brand name had been registered under

the Trademarks Act, 1999, in 2007 and the use of it

by any other is a direct infringement of the

plaintiff’s rights under section 29(2)(a) of the

Trademarks act, 1999.

The defendants claim that although the registered

user is the plaintiff, the defendants are prior users.

They point not towards the registration date but go

for the point of time since when the said product

trademark has been in use by the plaintiffs. They

have pointed out in their contentions that the

plaintiffs admit to the usage of the mark since 2015

and the defendants have been using the mark since

2014.

Further it had been brought to the notice of the

court that sec 34 of the Trademarks Act, 1999,

states that the prior user is protected if the usage

has stared before the usage of the firm claiming or

the registration of the said mark.

The single learned judge held that the fact that

there was usage by the defendants prior to the

usage by the plaintiffs, does not grant protection to

the defendants under section 34, because the prior

usage claimed should be before the registration, for

availing some kind of protection, because that was

earlier.

The defendants were therefore restricted from

using the registered mark ELECTRA.

The significance of this case is that it clarifies and

clearly interprets sec 34 and holds that trademarks

can be protected despite no use. They went for an

appeal in the high court but that too was rejected

and was held in the favour of the defendant.

Amway India Enterprises Pvt. Ltd. v 1Mg

Technologies Pvt. Ltd. & Anr., IN THE HIGH

COURT OF DELHI, 8th July, 2019:

The Delhi high court recently gave a judgement in

a case concerning the questions of law regarding

the interpretation of online merchandise selling e-

commerce platforms having the right to sell the



merchandise of direct selling companies like

amway, oriflame etc without authorisation.

The claimant’s contentions: the claimants claim

that the products under discussion here have been

directly manufactured by them and are sold by

them as well. But the e-commerce chains that have

been accused, procure the products using illicit

means and are tampering with the product and

providing the product to the consumers on their e-

commerce platforms without the prior permission

of the claimants. It has been further claimed that

these e-commerce platforms sell these products at a

far lesser rate, thereby causing massive losses to

the claimants and their direct sellers. They further

allege that these platform sell these products with

little information on the real sellers and thereby, in

case of some grievances, leaving the claimants to

bear the reputational liability.

The court in its rulings held that “direct selling” is

a unique way of selling the products but it is not

very different from the other way. Its just a load of

contractual tacked on the top of the selling

agreement. The main sticking points that come out

of the judgement about the products is that the

products sold must be:

1) Genuine;

2) Not be tampered with at the point of sale;

3) Should abide by some specific post-sale

obligations of the seller, such as refunds

and money back guarantee.

The court emphasised that, direct sale is and can be

associated to common sale excluding retail and e-

commerce selling.

The question that the court had to deliberate was

how the e-commerce companies were getting hold

of the products of the claimants?

The court took in account the defendants’ claims

and came to the conclusion that the products had

passed many channels in the chain of the sale and

the defendants have either contracted with the

intermediaries, with their own conditions and

warranties about the originality of the products or

they have used illicit means to procure the

products.

The court said that it is performative on the part of

the defendant that they run their own

advertisements, offer their own guarantees and

endorsements with their name associated with the

claimants’ name, without authorisation. They even

have their own return and refund policies. All of

this is clearly an infringement, since any of this

does not bear the consent of the claimants.

Secondly, the defendants have been charged of

tampering with the products of sale and that in

itself is actionable to some extent.

The defendants in this case have taken the defence

of the case Samsung vs Kapil Wadhwa, which

deals with the reselling of genuine products. The

case had taken the defence of Section 30(3) of the

trademarks act, but the court decided that this

particular case should come under the ambit of

section 30(4), where the claimant can bring an

action against the reseller even if the resale has

been done with the help of the claimant’s original

distribution chain, if the goods under re-sale have

been impaired or tampered with. The provision

recognizes that, while the Claimant may have

extracted its commercial reward from the product

at the point of first sale, it retains a legally

protectable interest in the product if it is ultimately

delivered in such a condition that would harm its

value or goodwill in the market.

The scale of the alleged tampering appears to be

considerable and considering the difficulty that the

ordinary consumer faces in ascertaining who sold

them the defective product, the court decided in

favour of the claimants and granted an interim

injunction on such sale.

Copyright Cases

Warner Bros. Entertainment Inc. v

Moviesflix.Net & Ors, IN THE HIGH COURT

OF DELHI AT NEW DELHI, 26 August, 2019.

Facts of the case: The present suit has been filed

for permanent injunction against defendant

Moviesflix Net and Others, rendition of accounts

and damages etc. Plaintiff-Warner Bros.

Entertainment Inc., is a Company incorporated at

the state of Delaware, United States of America.

The defendant moviesflix.net with its

numerous additional domains are online locations

which enables users of the Defendant Websites’

services to: (a) view (by a process known as

“streaming/downloading”) cinematograph films,

being motion pictures, television programs or other

audio-visual content, on devices connected to the

Internet; (b) cause copies of those cinematograph

films to be downloaded onto the memory of their

devices for watching later or enabling others to

watch or further copy those cinematograph films;

and/or (c) identify other online locations including

(by a process known as “linking”) which enables



those users to engage in the activities set out in (a)

or (b).

The cinematograph films produced by the Plaintiff

are “works” as defined under Section 2(y) of the

Act, Plaintiff has all the rights in such

cinematograph films granted under Section 14(d)

of the Act, and Plaintiff is author and/or first owner

and/or owners (under Section 17 of the Act) of the

following illustrative list of cinematograph films

that are entitled to protection under the Act.

Judgement- In view of the averments noted here

in above and in view of the judgment passed in

UTV Software Communication Ltd., this Court is of

the opinion that a prima facie case is made out in

favour of the Plaintiff and balance of convenience

is also in its favour. Further, irreparable harm or

injury would be caused to the Plaintiff if an interim

injunction order is not passed.

Mankind Pharma Limited v Lee

Pharmaceuticals of Lee House, IN THE HIGH

COURT OF DELHI AT NEW DELHI, 12th

July, 2019.

Facts of the Case- The Plaintiff has filed the

present suit seeking a permanent injunction

restraining the Defendant - Lee Pharmaceuticals of

Lee House from using the content of the Plaintiff's

website. The Plaintiff - Mankind Pharma Limited

is, as the name suggests, a pharmaceutical

company selling various medicinal preparations

and over the counter drugs (OTCs). The Plaintiff

has various domain names registered in its name

with the mark ‘MANKIND’, however, the main

website of the Plaintiff is

www.mankindpharma.com. The said website has

been originally designed by the Plaintiff to promote

its business. It has a large amount of unique

content, including information about the Plaintiff,

images of products manufactured, and other

details. The Defendant, according to the Plaintiff

was incorporated in 2013 and its headquarters is in

Chennai. The Plaintiff came to know on 27th

February, 2014 that the Defendant had registered a

website by the name www.leepharmaceuticals.in. A

perusal of the website revealed that the entire

website, including the photographs, images, etc. of

the Plaintiff has been copied by the Defendant.

Judgement- Court had granted an ad-interim

injunction in the following terms and The

defendants are accordingly restrained till the next

date of hearing by ex-parte ad interim injunction

from infringing the copyright of the plaintiff by

posting and operating any website containing

contents which resemble the contents of the

plaintiffs website www.mankindpharma.com

and/or its including the photographs and the web

content.

Yash Raj Films Pvt Ltd v Sri Sai Ganesh

Productions & Ors, IN THE HIGH COURT OF

DELHI AT NEW DELHI, 8 July, 2019

Facts of the Case- On 24th September, 2010, the

plaintiff announced the release of its film BAND

BAAJA BAARAAT (hereinafter referred to as “the

Plaintiff's Film”). The story line of the film is of

the hero and heroine starting their own wedding

planning company, falling in love, followed by the

hero and heroine parting of ways and ultimately

reuniting.

In November/December, 2011, through market

sources, the plaintiff gained knowledge that the

defendant no. 1 intended to remake the Plaintiff's

Film in Telugu language. The defendant no. 1 was

the producer of the Telugu remake of the Plaintiff’s

Film. The defendant no. 3 was the director and

defendant no. 2 were the distributor of the Telugu

remake of the Plaintiff's Film.

On 27th January, 2013, the defendant no. 1 released

the first trailer of the film titled JABARDASTH

(hereinafter referred to as “impugned film”), which

raised suspicions in the plaintiff's mind, because of

its striking similarity with the Plaintiff's Film

Judgement- Pass a decree permanently restraining

and enjoining the Defendants, their servants,

employees, representatives and agents, jointly and

severally, from violating and infringing, in any

manner, the copyrights of the Plaintiff comprised in

and over the movie BAND BAAJA BAARAAT

and from dubbing or releasing the movie

JABARDASTH in any other language including

Tamil, and from releasing the movie

JABARDASTH on any other format including on

DVDSs, VCDs Blu-ray discs or in any other

electronic or magnetic format including on the

television, and from showing the movie

JABARDASTH in theatres across the country.

Patent Cases

Novartis Ag & Anr. v Natco Pharma Limited,

IN THE HIGH COURT OF DELHI AT NEW

DELHI, 20th August, 2019



This particular case deals with patentee rights

during pendency of post-grant opposition. In the

given case, Swiss Pharma major Novartis had been

granted patent for novel and inventive compound

“Certinib” for treatment of non-small cell lung

cancer. The suit patent was filed claiming priority

since 2007, and was granted the same on 28th

September, 2015.

Novartis came across NOXALK, Natco Pharma’s

product, at a pharmaceutical conference held in

Kolkata and noticed the launch of “Certinib

Capsule”.

Natco Pharma contented that Certinib was neither

novel nor inventive as it was covered under the

broad “Markush” formula which is disclosed in the

patent granted to AstraZeneca or two other patents

granted to Rigel. Based on such contentions, Natco

Pharma raised a post-grant opposition against the

patent granted to Novartis.

Novartis filed a suit in Delhi High Court seeking

permanent injunction, damages, rendition of

accounts and delivery up in respect of its granted

patent and restraining Natco Pharma from

manufacturing and selling “Certinib” capsules.

The court passed an order directing Natco to file a

response to the plaint of injunction filed by

Novartis in two weeks.

Referring to the SC judgement in Aloys Wobben

Case, the Bench held that though the patent rights

may be crystallized once the opposition is actually

decided, during pendency of post-grant opposition,

the rights of a patentee subsist. Thus, confirming

that Section 48 of Patents Act, 1970 grants rights in

favour of patentee, are not affected during a post-

grant opposition.

The Court remarked that Natco Pharma ought to

wait for a judicial decision to decide on the matter

rather than launching the product on its own.

In an interim, the Court allowed selling of the stock

that is already manufactured by Natco under that

mark NOXALK (Certinib) considering the interest

of the patient community holding that stopping the

sale of defendant’s product would only harm the

patient community.

The Court restrained Natco Pharma from

manufacturing any fresh stock of drugs comprising

“Certinib” compound.

The Court also directed that Controller General of

Patents, Designs and Trade Marks with a request to

pass the order on post-grant opposition before the

next date of hearing so that the Court can have the

benefit of the decision of the Patent Office.

Astrazeneca Ab & Ors vs P Kumar & Anr, N

THE HIGH COURT OF DELHI AT NEW

DELHI, 08.08.2019

There are three suits filed by the plaintiff in order

to seek an injunction to restrain the defendants

from selling, marketing or dealing with

TICAGRELOR or any product which is in

violation of the registered patent of the plaintiff’s

company IN 907, IN 984 and IN 674.

TICAGRELOR is said to be antiplatelet drug

prescribed to patients who have suffered a recent

heart attack or unstable angina (chest pain) for

reducing the chances of a thrombotic events such

as a heart attack or even a stroke. TICAGRELOR

was first approved in the USA in 2011 and is

marketed under the trademark BRILINTA. It has

been approved in more than 100 countries. in India,

the plaintiff received drug regulatory approval in

May 2012 and was commercially launched in India

in October 2012 under the same trademark

BRILINTA. The price of tablet is said to be 50

rupees.

The plaintiffs received caveats and business

information from all three defendants that they

planned to launch a generic version of

TICAGRELOR in April 2018 under some other

trademark.

The defendants filed their respective written

statements to submit that the suit has no merit.

Counter claim was also filed for revocation Indian

Patent 209907. It has been claimed in the counter

claim that the invention was claimed in a valid

claim of an earlier priority date i.e. IN 229. It was

stated that the compound already claimed and

granted in IN 229 has once been claimed and

granted in IN 907. It was contended that the

plaintiff has played a fraud on the Indian Patent

Office and before this Court as the correct picture

has not been placed before the court. It was

pleaded that based on prior claim the claims of the

impugned patent are liable to be rejected.

The judge vacated the interim order passed by this

Court on different dates. The defendants were

required to continue to maintain correct and true

accounts regarding the sale of the impugned drugs

which are sold or dealt by them in any manner.

They were, also, to file quarterly accounts in this

court supported by affidavit of one of its directors

affirming the veracity of the account. The

defendants were ordered to file account statements

of sales figures of the said drug duly authenticated

by the chartered accountant of the defendant on the

basis of records including tax returns.



Bayer Corporation v Union of India & Ors, IN

THE HIGH COURT OF DELHI AT NEW

DELHI, 22 April, 2019

The petitioner is a corporation incorporated under

the laws of U.S.A. Subsequent to its research and

development activities, the petitioner invented and

developed its patented drug to enable its

administration to human beings. The patented drug

is used in the treatment of patients suffering from

Kidney Cancer i.e. Renal Cell Carcinoma (RCC)

and liver cancer i.e. Hepatocellular Carcinoma

(HCC). The aforesaid patented drug acts more as a

palliative i.e. relieves patients from pain and to a

extent also slows down the spread of cancer by

restricting the speed of growth of cancer cells.

Bayer Corp. had acquired the patent for the

salt/compound Sorafenib Tosylate with market

name Nexavar in 2008 in India.

Natco, a drug manufacturer in India, approached

the petitioner for grant of voluntary license for the

purpose of manufacturing and selling the patented

drug in India. The respondent (Natco) sought a

voluntary license to manufacture and sell in India

the patented drug under its brand name at a price of

less than Rs. 10,000 per month of therapy as

against the price of Rs. 2,80,248 per month of

therapy charged by the petitioner. The purpose

behind obtaining the voluntary license by Natco

was to make the patented drug accessible to the

public at an affordable price. Eventually, the

petitioner rejected Natco’s request for the grant of

voluntary license.

Thereafter, on 29th of July 2011 i.e. after the expiry

of three years from 3rd March 2008, Natco applied

to the Controller for a grant of Compulsory License

under section 84(1) of the Act. In its application,

Natco pointed that all the three conditions for grant

of Compulsory License were fulfilled/satisfied. It

was also set down that they proposed to sell the

patented drug under their brand name (Nexavar) at

Rs. 8,800 therapy per month. On 9th of March

2012, the Controller via his order gave

authorization to Natco to manufacture and sell the

patented drug and directed to pay to the petitioner

royalty at 6% of its net sales of the patented drug

under its brand name which was allowed to be sold

at the price of Rs. 8,800 for 120 tablets for a month

of treatment. Besides, the grant of Compulsory

License to Natco was non-exclusive, non-

assignable and for the balance term of the patent.

The issue primarily discussed in the given

particular case is whether a compulsory license can

be granted in favour of Natco for the production of

the patented drug.

Emphasis has been laid on section 84(1) of the

Indian Patents Act, 1970.

The court rightly dismissed the writ petition and

pronounced the judgement in favour of the

Respondents. Patent Linkage forces the regulatory

authorities to perform a function which is

completely in different domain altogether leading

to changing the nature of patent right from a

private right to a public right. If at all, patent

linkage has to be adopted it should make sure that

it does not come in the way of Compulsory

Licensing. Even though such measures are good

for the benefit of investing into Research and

Development, but it still discourages generic

competition in the market, leading to large

monopoly of pharmaceutical company due to

which the accessibility of the drug is difficult and

if at all the drug is made available, it is at a very

higher price which is unaffordable almost by the

majority section of the people. Hence, whenever

there is a need and it is in the benefit of public,

market approval should be granted so that the drug

can cater to the public, if the situation demands

then, the generic drug manufacturer can be asked to

pay royalty to the patent holder. This will also

discourage monopoly of foreign pharmaceutical

companies in the Indian market leading to rise in

Indian economy as well.

Cases related to IPR & Standards

US Court declares Ericsson’s license terms

compliant with FRAND

In a landmark judgement in HTC v. Ericsson,

United States District Judge Gilstrap on 23rd

May 2019 has laid down the guiding principles for

deciding whether the terms of license of SEP

holder are FRAND compliant or not.

The Judge was to decide on following issues

1. Whether royalty calculation should be

based on Smallest Saleable Patent

Practicing Unit or SSPPU, contained in a

cellular device as argued by HTC or the

royalty should be based on cost of the

device.

2. What constitutes compliance with FRAND

terms. In the instant case whether Ericsson

has complied with its commitment to

European Telecommunications Standards

Institute (ETSI) in giving licence on

FRAND terms to Hitachi.

Background



ETSI is a SSO and it enacts standards related to

mobile cellular technologies including 2G, 3G

and 4G standards. It has intellectual property

rights (IPR) policies concerning patents that are

essential to the standard. If a participant in

ETSI owns a patent they believe may be

essential to the standard (a patent is “essential”

if it is not technically possible to practice the

standard without infringing the patent), then

they are required to declare (1) the patent is

essential to the standard (2) whether he agrees

to license its patent on “fair, reasonable and

non-discriminatory (FRAND) terms”. Such a

declaration has been deemed to create a

contract between the patent owner and ETSI

where those who implement the standard are

third-party beneficiaries of that contract.

Ericsson is a member of ETSI. It owns patents

which are declared essential to the 2G, 3G, and

4G standards. Ericsson has made a

commitment to ETSI to offer its SEPs on

FRAND terms and conditions. HTC’s mobile

devices implement the 2G, 3G, and 4G

standards. HTC is a Taiwanese company and

that designs, makes and sells mobile devices

implementing Ericsson’s 2G, 3G and 4G

standards.

HTC is also a member of ETSI. It owns patents

declared essential to the 2G, 3G, and 4G

standards. HTC has made a commitment to

offer its SEPs on FRAND terms and condition.

Ericsson’s base stations and support software

implement the HTC’s 2G, 3G, and 4G

standards.

Ericsson and HTC entered into cross-license

agreements on their SEPs. The agreement

expired in 2016 and the parties reached an

impasse in negotiating a renewed license. In

December 2016, Ericsson offered a license at a

rate of $2.50 per 4G device; HTC rejected that

offer and counter-offered $0.10 per 4G device

(based on royalty on SSPPU in the device).

Later Ericsson offered a license at 1% the net

price of HTC’s end product device with a $1

floor and a $4 cap.

On April 6 2017, HTC filed this suit against

Ericsson alleging that Ericsson breached its

commitment to license its SEPs on FRAND

terms. Ericsson counterclaimed for a

declaration that Ericsson did comply with its

FRAND commitment. A jury trial was held on

HTC’s claim and the jury determined that HTC

had not shown by a preponderance of the

evidence that Ericsson had breached its

FRAND commitment.

Both HTC and Ericsson agreed to be bound by

Judge Gilstrap’s adjudication of the FRAND

issue. Judge Gilstrap then considered

Ericsson’s claim seeking a declaration that it

complied with its FRAND commitment.

Decision:

The ETSI IPR policy requests that owners of

essential patents declare the terms upon which

they will license their patents to implementers

of the standard. Ericsson has committed to

ETSI that it will grant licenses on FRAND

terms and conditions. HTC, as an implementer

of the cellular standards, is a third-party

beneficiary of Ericsson’s contract with ETSI

and is entitled to enforce that contract.

The Judge held that the FRAND commitment

embodied in the ETSI IPR policy does not

require nor precludes that a FRAND license

has to be based on the SSPPU. It will depend

on particular facts of the case. Judge ruled that

an SEP-owner satisfies its FRAND

commitment by “either (1) it offers a FRAND

license, or (2) negotiate in good faith towards a

FRAND license.

Patent Statistics on Granted Patents

Total Number of Patents Granted: 11,340

S.no Jurisdiction Number of Patents Granted

01 Chennai 3633

02 Delhi 4386

03 Kolkata 1767

04 Mumbai 1554



S.no Month Number of Patent granted

01 April 1388

02 May 1542

03 June 1587

04 July 2087

05 August 2255

06 September 2481

List of Certified Geographical Indications Products in India

(April 1, 2019 to September 30, 2019)

S.no GI -Number GI – Name Geographical Region Category of goods

1 344 Kandhamal Haladi Odisha Agriculture

2 345 Odisha Rasagola Odisha Foodstuff

3 346 Kodaikanal Malai Poondu Tamil Nadu Agriculture

4 347 Hmaram Mizoram Textiles

5 348 Pawndum Mizoram Textiles

6 349 Ngotekherh Mizoram Textiles

7 347 Pawndum Mizoram Textiles

8 348 Ngotekherh Mizoram Textiles

0

500

1000

1500

2000

2500

3000

Patents Granted

Patents Granted



9 349 Hmaram Mizoram Textiles

10 350 Palani Panchamirtham Tamil Nadu Food Stuffs

11 351 Tawlhlohpuan Mizoram Textiles

12 352 Mizo Puanchei Mizoram Textiles

13 353 Gulbarga Tur Dal Karnataka Agricultural

14 354 Tirur Betel Leaf (Tirur

Vettila)

Kerala Agricultural

15 355 Irish Whiskey Ireland Spirits

16 356 Khola Chilli GOA Agricultural

17 357 Idu Mishmi Textiles Arunachal Pradesh Textiles

18 358 Dindigul Locks Tamil Nadu Manufactured

19 359 Kandangi Sarees Tamil Nadu Handicraft

Public notice on Copyrights

No Licence required for Utilizing the sound recording during Marriages: (27.08.2019)

Representations have been received from various stakeholders seeking clarification as to whether a

License is required to be obtained for the purpose of utilization of sound recordings in the course of any

marriage related function. The representations have been examined.

Section 52 of the Copyright Act, 1957 enlists certain acts which do not constitute an infringement of

Copyright. Specifically, Sub-section (1) (za) of the aforementioned section, states that: “the

performance of a literary, dramatic or musical work or the communication to the public of such work

or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held

by the Central Government or the State Government or any local authority. Explanation-For the

purpose of this clause, religious ceremony including a marriage procession and other social festivities

associated with a marriage.”

“the performance of a literary, dramatic or musical work or the communication to the public of such work or

of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the

Central Government or the State Government or any local authority.

Explanation-For the purpose of this clause, religious ceremony including a marriage procession and other

social festivities associated with a marriage.”

In view of the provision contained in Section 52(1) (za) of the Act, read with the explanation thereto, it is

evident that the utilization of any sound recording in the course of religious ceremony including a marriage

procession and other social festivities associated with a marriage does not amount to infringement of

copyrights and hence no license is required to be obtained for the said purpose.

Hoshiar Singh

Registrar of Copyrights



On 25th June 2019 Ministry of Commerce and Industry, GOI Released Draft Guidelines for permitting

the use of Geographical Indication (GI) Logo and Tagline:

The Drafted Guidelines mentioned about the Terms and Conditions of the use of GI logo and Tagline,

procedure for grant of permission for use of GI logo and Tagline and details to be submitted by the proposed

user.

This initiative will help in marketing and promoting of the Geographical Indication products, as a uniform

mark this GI logo and Tagline can be used as a tool for identifying GI tag products in the market.

अतुल्यभारतकीअमूल्यनिनि (Invaluable Treasures of Incredible India)

The Patents (Amendment Rules) 2019.

Under the Notification dated 17th September 2019, The Gazette of India Published “The Patents (Amendment

Rules) 2019.

Under these new rules, expedited examination for applicants under rule 24C have been extended to the

following categories

a) Start up

b) Small entity

c) Female applicants

d) Government departments

e) Institution established and owned or controlled by the Government

f) Government company defined under section 2(45) of Companies Act,2013

g) Institution wholly or substantially financed by the Government



Interns with CIPRA

Ms. Sanika Chandekar,

Symbiosis Law School, Hyderabad

(4th May to 4th June 2019)

Title: Secondary use Pharmaceutical

Patents: an overview of the scenario

in developing countries”

Mr. Jitesh Ahuja,

HNLU, Atal Nagar

(9th May to 31st May 2019)

Title: “TRIPS Flexibilities on

Pharmaceutical patents with

special reference to Compulsory

licensing of Patens”

Ms. Himani Singh,

NLC, Bharathi Vidyapeeth Deemed

University, Pune (13th May to 31th

May’2019)

Title: “IP as Security for Loans in

Banks”

Mr. Prateek Charan,

Maharashtra National Law

University, Nagpur


Title: “Licensing Policies of Standard

Setting Organisations”

Ms. Sonal Okhade,

Maharashtra National Law

University, Nagpur


Title: “Intellectual Property

Policies of Standard Setting

Organisations: An Indian and

International Perspective”

Ms. Ayushi Bhutra,

Maharashtra National Law University,

Nagpur


Title: “Disclosure Policy of Standard

Setting Organisations and the issues

involved”

Ms. Ishita Jha,

PES University, Bangalore,

(22nd May to 18th June 2019)

Topic: “Comparative Advertising

and Trademark Infringement - An

analysis of the Indian, USA and UK

laws”

Ms. Rishika Garg,

Institute of Law, Nirma University,

Ahmedabad.

(1st June to 25th June 2019)

Topic: “An Analysis of

Geographical Indication and Allied

Issues”

Ms. Jainsha Bhanawat,


Ahmedabad.


Topic: Standard Essential Patents Vis-

À-Vis Competition Law

Ms. Kriti Kothari,


Ahmedabad.


Topic: “Standard Essential Patents

and FRAND Litigation- A

prolegomena”

Ms. Priyal Jain,

HNLU, Raipur

(1ST June to 25th June’2019)

Topic: Statutory Licence for

broadcasting in

Copyright Act,1957 with respect to

lacuna in Section 31D

Mr. Yogendra Kumar,

Hidayatullah National Law University,

Atal Nagar, Chhattisgarh

(1st June to 30th June’2019)

Topic: “Registration of

Unconventional Trademarks with

special reference to Sound Mark and

Smell mark”

Mr. Piyush Thanvi,


Ahmedabad

(1st June to 30th June’2019

Topic: “There is a thin line between

'Best in the World' and 'Best money

can Buy’: Analysis through

Comparative Advertisement and

Disparagement in Trademark law in

India with reference to United states

and European union”

Mr. Sahil Jain,

Symbiosis Law School, Hyderabad


Topic: “Overlapping Copyright

and Design Protection Regime”

Mr. Aparthiba Debray,


Ahmedabad


Topic: “Copyright Protection in

Cyberspace”



Mr. Saharsh Shubham,

Law College of Dehradun, Faculty of

Uttaranchal University

(12th June to 12th July ‘2019)

Topic: “Protection of Geographical

Indication in India: With special

reference to Benefit Sharing.”

Ms. Yashvi Khandelwal,

Institute of Law, Nirma University

(1st July to 27th July’2019)

Topic:” Standard Essential

Patents: A War Zone Between

Intellectual Property and

Competition Law”

Ms. Pragya,


Ahmadabad

(1st July to 30th July’2019)

Topic: “Diamond to Harvard

Oncomouse: A Retrospective on the

Legal and Ethical Issues surrounding

Animal Patenting.”

Ms. Aayushi Jain,


Ahmedabad

(1st July to 26th July 2019)

Topic: “Understanding Trade Secret

Law in USA and the way Forward in

India.”

Ms. Anchal Jain,


Ahmadabad


Topic: “The Illusionary Protection

of Illusion in India: A Critical

Analysis”

Nayan Kothari,

University College of Law, MLSU,

Udaipur (RAJ.)


Topic: Significance of Performer's

Right in Copyright with Specific

Reference to Sports Persons

Ms. Aishwarya Sharma,


Ahmadabad


Topic: “De-Constructing the IPR

Law Regime Taking Account the

Evolution of Artificial Intelligence”

Ms. Muskan


Ahmedabad

(3rd July to 28th July 2019)

Topic: “Biopiracy as a Looming

Threat to Traditional Knowledge:

The Curious Case of Myristica

fragrans”

Ms. Himakshi Alaria

Rajasthan University

(1st August to 27th August 2019)

Topic: “Geographical indications and

Unfair Competition: An Interface.”

IP Books Alert

The History of Intellectual Property in

50 objects: Edited by Claudy Op den

Kamp, Bournemouth University , Dan

Hunter, Swinburne Law School,

Australia,2019

Online ISBN:9781108325806

Intellectual Property Law:Stavroula

Karapapa and Luke McDonagh,May 2019ISBN:

9780198747697

Intellectual Property Branding in the

Developing World: A New Approach to

Non-Technological Innovations,1st

Edition,Tshimanga Kongolo, May 15, 2019,

European Intellectual Property Law,Second

Edition,Justine Pila and Paul Torremans

August 2019,ISBN: 9780198831280

https://www.cambridge.org/core/search?filters%5BauthorTerms%5D=Claudy%20Op%20den%20Kamp&eventCode=SE-AU

https://www.cambridge.org/core/search?filters%5BauthorTerms%5D=Claudy%20Op%20den%20Kamp&eventCode=SE-AU

https://www.cambridge.org/core/search?filters%5BauthorTerms%5D=Dan%20Hunter&eventCode=SE-AU

https://www.cambridge.org/core/search?filters%5BauthorTerms%5D=Dan%20Hunter&eventCode=SE-AU



Our Websites: www.iprlawindia.org/ www.techpolicylaws.com

CIPRA TEAM:

1. Jnana Teja (Associate Editor)

2. Siddhi Suman

3. Inder Mohan Chawla

4. Sadhana E

To,

______________

From, Ministry of Commerce and Industry (DPIIT), Chair on IPR

Centre for Intellectual Property Rights Research and Advocacy

National Law School of India University

Nagarbhavi, Bengaluru.

MARCH OF THE IP LAW IPR NEWSLETTER

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