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Sep 19

RKD NewsNet September 2019

From the desk of Dr. Mohan Dewan | Assisted by Adv. Aboli Kherde & Adv. Sachi Kapoor

International News

Apple and Samsung sued in the US

According to news reports, a class action suit has been filed against Apple and Samsung in the US, for allegedly selling products which are emitting harmful radio frequencies. In the US, the Federal Communications Commission (FCC) regulates electronic communication devices such as radio, television, satellite, cable, etc. It inter alia, prescribes standards for regulating radio emissions from electronic devices. According to reports, Apple’s iPhone 7, iPhone 8, iPhone X and Samsung’s Galaxy smartphone models are violating the emission standards set up by FCC. Suppose the class action suit is decided against Apple and Samsung, there is a possibility that these products will be required to be recalled from the market, or that the unsold products will not be allowed enter the US market. What will be the fate of these products which are worth billions of dollars? Do third world countries have effective mechanisms in place to restrict entries of such products into their domestic markets? Or will the suit not be decided against them at all?

One must think, wait for the result and then think again!

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Amazon’s Audible Captions dragged to court

One of the most interesting things about science is how it gives birth to newer and newer dimensions of knowledge and technology. What is much more interesting is to see how humans react to the stimuli of technology!

Amazon recently announced its new service- Audible with which users can listen to their favourite books instead of reading them. It has garnered huge support for the ease of reading (actually listening!) books ‘on the go’ which perfectly suits the millennia’s over-speeding lifestyle. These are the books which have already been published as paper-books or e-books and sold all over the world. Hence, to convert the literary material into sound recordings, Amazon would have to obtain appropriate licenses from the publishing houses, which it most certainly did. However, another feature of Audible is ‘Audible Captions’: this provides for the sentence/ phrase which is being read out to appear in text format on the user’s screen. Amazon calls it “Immersion Reading”.

7 of the major publishing houses, including Penguin, Scholastics, Harper Collins etc. through the Association of American Publishers, have taken Audible to court over this feature. They have alleged that it has been creating derivative work without authorisation.

According to them, the licenses granted to Audible were only limited to publishing the sound recordings of the books and not the text itself! For this, a separate license ought to have been obtained from the concerned publishers.

Reports also give us Amazon’s side of the story. According to Amazon, the content, which is displayed on the screen is actually machine generated. The software reads the audible texts and catches this phrase from the web using publicly available programs and displays it for the user to read. Thus, at each given point of time, the user is reading only the sentence/ phrase which is being read out by the application (similar to Subtitles). According to Amazon, there is no copyright infringement for use of text from the books, since its own application generated the content.

We will be closely following this case to see how the court decides upon the issue of display of content generated through machine learning, where such content is already published elsewhere.

The takeaway at this stage is that one must define the exact scope of the rights transferred while granting license to use a copyrighted work and the nature and manner in which the licenses can or cannot use the licensed works.

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National Seminar on "Intellectual Property Rights’ Dimensions in Electronics and Information Communication Technology"

Dr. Mohan Dewan, Principal, R.K. Dewan and Co. was invited as one of the Eminent Speakers at the National Seminar on "Intellectual Property Rights’ Dimensions in Electronics and Information Communication Technology" organised by Savitribai Phule Pune University’s (SPPU), Department of Electronic Science on August 03rd, 2019.

Dr. Dewan addressed a gathering of around 200 participants on the topic of “Introduction and Importance of IPR in Information Communication Technology”. He specifically stressed upon how various aspects of the ICT related inventions/ products can be protected under different IP rights (such as Trademarks, Copyrights, Patents, GUIs and Integrated Circuit & Layout Design). Dr. Dewan also compared the extent and nature of IP rights in various jurisdictions of the world.

Amongst the other eminent speakers were Dr. M.D Kulkarni, Snr. Director (R&D), & Head- GIST, CDAC, Prof (Dr.) A.D. Shaligram, Dean, Science and Technology, SPPU and Dr. Subramaiam Vatha, Former Senior Vice President, Legal, Tata Infotech Ltd.

The Seminar was concluded by a panel discussion in the field of ICT and IPR.

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Novartis v. Natco

Novartis AG and Natco Pharma Limited are both globally known pharmaceutical companies. In the year 2015, Novartis was granted a patent (bearing Indian Patent No. 276026) titled, 'Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors‟ for its compound ‘Ceritinib’ (“the Patent”). ‘Ceritinib’ is a drug meant for treatment of non-small cell lung cancer.

Novartis filed a suit against Natco seeking permanent injunction, damages, rendition of accounts and the like, for infringement of the Patent at the Delhi High Court. The Court granted interim injunction against Natco.

Thereafter, Natco approached the Delhi High Court: Novartis AG & Anr. V. Natco Pharma Limited CS (COMM) 229/2019 and I.As. 11304/2019, 11305/2019, seeking an order for dismissal of the interim injunction operating against it. Natco contended that it had filed post-grant opposition proceedings against the Patent and the Patent was revoked. Novartis contended that it had filed an appeal against the order of revocation of the Patent. The Court cancelled the order of interim injunction against Natco stating that a suit for infringement would not be maintainable after the Patent is revoked. It held, “The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights in patents. Patent infringement actions are maintainable only in respect of granted and live patents. Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked.”

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Delhi High Court: Issuance of notice to registered proprietor before removal of trademark for non-renewal is mandatory

Vijay Kumar Salwani (“the Petitioner”) is the registered proprietor of the label “MODERN NAMKEEN BHANDAR” in Class 30 (TM No. 641088). The mark was removed from the Trade Marks Register on the grounds of non-renewal. The Petitioner filed a petition for restoration of his trademark registration: Vijay Kumar Salwani v. Union of India and Anr. (W.P. (C) 9270/2015 & CM APPLN. 21260/2015) at the Delhi High Court. The Court held that issuance of notice to the registered proprietor, before removal of his trademark on the grounds of non-renewal, is mandatory.

The Petitioner stated that before the removal of his trademark from the Register, he was not issued any notice as per the Indian Trade Marks Act, 1999 (“the Act”). As per Section 25(3) of the Act, before the last date of expiration of a trademark, the Registrar of Trademarks is required to issue a notice to the registered proprietor of the mark stating, inter alia, the date of expiration. The notice is required to state the conditions for renewal of the mark before expiration. The notice is also required to state that in case of non-compliance with the conditions for renewal, the Registrar may remove the trademark from the Register.

In April 2019, the Registrar of Trademarks contended that it has issued a public notice inviting applications for renewal of trademarks which have expired in the last 6 months. It was argued that this public notice was a substantial compliance of Section 25(3). The Court had directed the Registry to place on record, the rationale behind its decision of issuing a ‘public notice’ instead of complying with the provisions of section 25 of the Act and the details of the authority that took such a decision.

Interestingly, in May 2019, the counsel for the Registry contended that the notice was in fact issued, however there was no record of such issuance! Therefore, the Registry decided to re-consider all trademark registrations which were removed, but where the relevant record of notice was not available.

The Court set aside the removal of the Petitioner’s trademark by the Registry. It also directed the Registry to issue a fresh notice and allow the proprietor to file the renewal application. The Court further directed that the same direction shall apply in all cases where the Trade Marks Registry has removed registered trademarks and the record of mandatory notice under Section 25(3) of the Trade Marks Act is not available. Therefore it follows that the Registry cannot remove a registered trademark before issuing the notice of its expiry to the registered proprietor.

It is noteworthy that certain provisions of a particular law, when viewed superficially, may seem mere procedural formalities. However, most of the times, such procedural sequences are required to protect the substantive rights of the trademark owners. This in-depth analysis of the intent-and-impact of the legal provisions is to be assessed during the execution of such laws.

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No license/ permission required while using sound recordings in marriage functions

DIPP’s Copyright Office released a Public Notice on August 27, 2019 providing clarification as to whether a License/permission is required to be obtained for using sound recordings at marriage functions or during other religious festivities. The Notice stated that according to Section 52 of the Copyright Act, 1957, inter alia, 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 will not constitute infringement. The Notice clarified that using sound recordings which are protected by copyright as a part of religious ceremonies such as marriage processions and other social festivities associated with marriage does not amount to infringement of copyrights and hence no license is required to be obtained for said purpose.

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Trademarks have their own stories

As you are passing through the busy-busy week, just take a breather and check out this space for light reads:

A picture speaks a thousand words and so does a trademark logo! Trademarks have meanings and stories hidden behind their peculiar stylisation. While some brands wish to promote their services through the trademark itself, others have trademarks that portray the organisation’s vision.

Take Amazon for example:

This logo is an intellectual creation. Some say the yellow arrow represents a smile. However, if you look closely, you’ll note that the arrow starts from “A” and stops at “Z”. It depicts that Amazon is a platform for providing products and services from A to Z and that too with a Smile!

Watch this space for more such light reads, riddles, the hidden meanings behind trademarks & taglines and other IP related fun-facts.

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A Riddle

Having a pull-your-hair-out busy week? Try this riddle to lighten up!

See the figure above. At the Start is a Red Ball that can take three different paths to reach the End. Which is the fastest path to the End?

Rack your brains and wait for our next Newsletter for the Answer!

Still stressed? Have a glass of cold water and look at this:

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