Month: January 2019


Novartis case is the landmark judgement not only in the field of IP but also for ‘aam-aadmi’. The historic date of April 1, 2013 witnesses the discourse around the world about a key feature of India’s patent regime. The core of the case focussed on the interpretation of section 3(d) of India’s patent law. In the impending verdict on Novartis Glivec, Supreme Court ruled against the company. The loss of Novartis was the impeccable news to Indians and the grade of many domestic pharma companies, especially Cipla and Natco. The verdict led to a decrement of stock price of Novartis. The judgment oozed out to be the harbinger of strong message that getting patents for drugs in India is not obvious. The verdict proved to be a solace for millions to have entree to medicines at low cost and banishing the concept of evergreening the patents by pharmaceutical industries.

The timeline:

1997- Patent application filed by Novartis AG at Madras patent office for beta-crystalline of GLIVAV.

2003- Novaris obtained EMR for 5 years in order to market Glivec, hence preventing other pharma companies from manufacturing generic version of the same-price thus soaring from Rs 10,000 to Rs 1.2 lakh.

2005- Amendment of patent law in comply with TRIPS agreement CPAA(cancer patient aid association)filed a pre-grant opposition against  Novartis patent application.

2006- Novartis was refused grant of patent by Madras patent controller, leading to manufacture of generic version of drug by other pharma industries. Writ petition was filed at the Madras high court by Novartis.

2007- Matter transferred to IPAB. High court rejected the writ petitions.

2009- IPAB rejected Novartis appeal. Novartis filed special leave petition in Supreme Court.

2013- SC dismissed Novartis petition.

“the Indian SC’S decision on section 3(d) in the famous Novartis case created a precedent and has helped us in our campaign for affordable medicine”, says Loon Gaugte, an Indian activist, regional co-ordinator, South Asia of International Treatment Preparedness Coalition(ITPC) and one of the founders of DNP+. However, the challenges and difficulties persist. The study report titled ‘Pharmaceutical Patent Grants in India’ explains how our safeguards against evergreening have filed, why the system must be reformed, and analysis of the challenges that have led to section 3(d) being underutilized despite the landmark judgment of SC.


Copyright is an intangible right given to the author of an original artistic work.  It protects the work from reproduction or publishing for monetary gain without the consent of the owner. The words generally used while discussing infringement are reproduction, translation, adaptation, derivation and transformation. Though it may seem that they have same or similar meaning, in the theory of copyright, they have a different status.

In the case of a literary work, copyright means the exclusive right:

  • To reproduce the work
  • To issue copies of the work to the public
  • To perform the work in public
  • To communicate the work to the public.
  • To make cinematograph film or sound recording in respect of the work
  • To make any translation of the work
  • To make any adaptation of the work.

Therefore, a movie adaptation of a book cannot be made without the consent of the author. Similarly, translation also infringes copyright as they are essentially a reproduction of someone’s original work for monetary reasons. Raising eyebrows, this has given heat to the recent discussions as to whether an existing work when translated into Braille will account to a copyright infringement or not?


The questions which prompt in mind are:

  1. What is Braille-translation or transliteration?

Braille is a palpable reading and writing system used by blind and visually impaired people. Represented by the patterns of raised dots that one can feel with their fingertips, it enables the visually impaired to study, regardless of the language and is hence acting as a universal code for all the languages.

Translation implies the conversion from the original language to a different alternate language. Since Braille is not a language, the term translation cannot be used in this context. Taking an example, if we convert “Bhagwan”( in Hindi) to Braille, the output cannot be regarded a  translation as it remains in Hindi and does not feature conversation into any other language such as English. Therefore, such conversion is not considered as a translation and is instead termed as a transliteration. This way, Braille does not violate section 14(a)(v) of the copyright act, 1957 and hence such conversion shall not attract infringement charges.

  1. Does conversion of literary work into Braille come under the scope of adaptation and reproduction?

Adaptation involves the preparation of a new work in the same or different form, based upon an already existing work involving re-arrangement or alteration of the same. If literary work is converted into Braille, it will lead to the violation of rights under section 14(a)(vi).

Will conversion of literary work into Braille lead to reproduction of work under section 14(a)(i)?

Interpretation of ‘reproduction of work’ is debatable and the conversion of literary work into the six-dot Braille code will solely, and exclusively depend upon this interpretation. Braille is technically sticking to the contents, but for expression to be categorized as reproduction, conversion may remain true to content or expression or both. The new cause (zb) added to section 52(1) of the copyright act, 2013 provides for fair use of the work for the benefit of the disabled; facilitates adaptation, reproduction, issue of copies or communication to the public of any work in an accessible format.

Since Braille is a part of accessible format, section 52(1)(zb) suggests that the expression “adaptation, reproduction and communication to the public” can be used with respect to it hence, generating the clarity  on  Braille fitting into the scope of adaptation and reproduction.

Whether Braille can cause copyright infringement?

The district court in Authors’ Guild v. Hathitrust, 2013 U.S. Dist. LEXIS 22370, (S.D.N.Y. 2013), had held that the digitization of millions of books made available to people with disabilities was a transformative use, even though each of the books’ contents was reproduced in their entirety and without any content modification. Should the court of appeals affirm this holding, the court would be indicating that there need not be any kind of expressive transformation in the copyrighted works and the mere putting of the copyrighted works to a different purpose from that which the copyright owners intended shall be considered.

In Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, (1985), the Supreme Court held that the act of the news magazine, The Nation, “scooping” portions of President Gerald Ford’s unpublished memoirs, just weeks before its authorized publication in a rival magazine amounted to copyright infringement. The court held that the fair use defense did not apply to The Nation’s actions. The court noted that “[every] commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.” Furthermore, the court explained that “[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”

Analyzing the above judgments, we may conclude that the conversion of literary work into Braille will be covered under copyright infringement if the proper license is not taken.


Copyright is an exclusive legal right given to the creator on his tangible work that entitles him to recreate, reproduce or publish the work for monetary gains or otherwise and also prevents someone else from doing the same. A creator can protect his original work of authorship including literary, dramatic, musical and artistic work.

The issue of the copyrightable nature of tattoos gained attention because of the 2011 movie, Hangover Part II. One of the characters of the movie had a replica of the famous Mike Tyson face tattoo. The Tattoo artist had already registered the design with the United States Copyright Office and thus, sued Warner Bros. for copyright infringement.

Even though the parties, later on, settled the case with confidential terms and agreements, it raised many questions.

The questions being:

Are tattoos copyrightable?

The right of ownership?

What amounts to infringement?

  1. Are tattoos copyrightable?

As mentioned above, all the original work of authorship is protected by copyright and no international convention or the Indian Copyright Act, 1957 explicitly excludes tattoos. Thus, tattoos are copyrightable and hence many tattoo artists are getting their original designs copyrighted.

  1. Right of ownership?

The second question involved is who would be the owner of the copyright, the tattoo designer or the person on whose body the tattoo is engraved?

The U.S Copyright law protects the original work of authorship and thus the right of ownership of tattoo rest on the tattoo designer.

Most legal scholars agree that a tattoo artist offers his client an implied license to display the copyrighted work, but that license does not necessarily include all of the rights afforded under copyright laws. The client may not have the right to make reproductions or derivatives of the tattoo without the artist’s permission.[1]

In the UK too, if the person is getting a tattoo that is not his original design, the ownership would lie with the tattoo designer with no provision of “fair defense” to rely on.

In India, under Section 17 of the Indian Copyright Act, 1957 the first owner of the copyright is the author of the work (in this case the tattoo artist).

However, the law regarding ownership of copyright is not definite and still in it is primitive stage. This is primarily because there is no statute or judgment to seek guidance.

  1. What amounts to infringement?

In case of Warner Bros. even though no judgment was passed, in her comments, Judge Perry supported the rights of tattoo artist and stated that a tattoo can be subject to copyright if it   an original work of authorship. She also refused to accept Warner Bros. strong contention claiming the use of tattoo as a parody. According to her, the tattoo depictedan exact replica and thus cannot be called a parody just because it was featured in a comic film.

Though it may fall in the category of fair use in case of private users, the usage becomes commercial when replicated by a company or when the design is worn by a celebrity, and thus, may lead to infringement.


The law regarding tattoos and their copyright is still ambiguous. Till date, all the high profile cases regarding the issue have been settled out of court. Thus, initiating the conversation but leaving everybody without any definite conclusion.

In a time where IP rights are getting recognized and artists are given due credit for their work, there is no reason to exclude tattoo artists from enjoying the privilege of these acts. Many tattoo artists are getting their original work registered, but due to the lack of specific legal guidelines, the extent of its implementation remains questionable.


Working Statement- A peculiar Requirement under the Act


The Indian Patent act is well known for its impartial approach towards Innovation, enforcing the monopoly rights to the patentee and making sure the innovation ends up adding to the betterment of the community.
The Act not only guarantees monopoly to the patentee but also ensures that the invention is utilized to its fullest extent for meeting the requirements of the community without any undue delay. This enforcement contributes to the promotion of innovation and circulation of technology in a manner to benefit the community both socially and economically.
To ensure the stated principles, Section 146 of the Indian Patent Act mandates all the right holders/patentees to submit their working statements by the end of each calendar year. Thus, acknowledging if the patent has worked commercially implemented or worked within in the territory of India, at a reasonable cost and as per the requirement of the public or not.

Enablement and Establishment

According to Section 146(2) and Rule 131(1), The working statement is to be furnished on the prescribed Form-27 providing the details of the commercial working of the patent in India. According to the patent office annual report, during 2016-17, for the total 48765 patented inventions, 42870 working statements were received, out of which only 11318 patented inventions were stated as working. Though Section 122 of the Indian patent act explicitly states that “If any person refuses or fails to furnish- he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.”, until now no action has been taken by the patent office against any such patentee.
The main obligation of the patentee is to furnish the following details in the Form 27:

1. Did the patented invention: Worked / Non-worked?
1. if not worked; the reason for not working and steps being taken for working of the invention.
2. if worked; quantum and value (in Rupees), of the patented product.
2. Manufactured in India.
3. Imported from other countries (give country wise details)
4. Licenses and sub-licenses granted during the year
5. State whether public requirement has been met partly/ adequately/ to the fullest extent at reasonable price

Since the above information is confidential in nature, the patentee holds a fear that it may be misused because, as per Section 146 – Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed.
For the same reason, patentee tends to provide as minimal information as possible. Further, in many cases, it is impractical to collect all the information to be furnished in the Form-27 and only imparts an extra burden and incurs added cost to the patentee.

The provisions provided in the act defines the submission of working statements as a duty of every patentee. It enables the government to provide certain benefits to the patentee while ensuring the advantages of the invention are enjoyed by the public. Going forward, continuous efforts are being made by the Patent Office to make it more authentic and a considerable rise has been observed in the filing trends for recent years.

Virtual Reality: Virtues and Vices

As our world moves through a phase of technological revolution, Virtual Reality has become the new magic word among technology geeks. Virtual Reality (VR) is used to describe a three dimensional, computer generated, artificial environment which the user believes and accepts as a real environment. Barring entertainment, VR possesses a great potential of transforming the future of numerous fields with medicine, business, architecture, designs and manufacturing being some notable mentions.

Medical professionals have already started using VR to teach their students how to perform surgeries, ease patient’s pain, and treat various social disorders. VR is also helping children and teenagers suffering from autism to overcome their fears of socializing. Automobile manufacturers are employing VR to test the safety of their cars. Architects are now able to build stronger buildings with the assistance of VR. Among its numerous users, travel agencies have also had their fair taste. Using VR, travel agents are now able to pitch various travel destinations to their customers in a very enchanting manner.
Irrespective of the innumerable advantages of using VR, there exist few disadvantages too. Its high cost, technological limitations, appended with incidents of causing motion sickness in users cannot be ignored, and challenge its projection as a “user friendly” technology.

VR is gaining applauds in the field of intellectual property. Originality is the sine qua non of intellectual property. Indian law doesn’t provide for any law to test the originality of the work. However, the degree of creativity marks the work as original. Since there is no definite concept of originality, there exists different doctrines for the same.

The two main doctrines followed in the area of intellectual property are “sweat of brow” and “modicum of creativity” doctrine.

According to the doctrine of “sweat of brow”, the author gains rights through simple diligence during the creation of the work and substantial creativity is not required. For Example, the creator of a telephone directory or a database must have a copyright over the product not because such a compilation of data showcases any creativity, or the author has expressed anything original, but merely because of the effort, time and money invested by the creator to collect and organize all the data in a specific manner. However, such a compilation must be the work of the author himself and must not be copied from another source.

The other doctrine, modicum of creativity, stipulates that originality subsists in a work where a sufficient amount of intellectual creativity and judgment has gone into the creation of that work. The standard of creativity need not be high, but a minimum level of creativity should be there for copyright protection.
India actively followed the concept of “sweat of brow” for a considerably long time. Till 2007, Indian courts held compilations to be copyrightable. However, in Eastern Book Company & Ors Vs. D.B. Modak & Anr; 12 December 2007, Hon’ble Supreme Court discarded the doctrine of “sweat of brow” and shifted to “modicum of creativity” approach. The facts of the case is that SCC, the Supreme Court Case reporter, was aggrieved by other parties infringing their copyright and launching software containing the judgment edited by SCC along with other additions made by the editors of SCC like cross references, head notes, the short notes comprising of lead words and the long note which comprises of a brief description of the facts and relevant extract from the judgments of the court and standardization and formatting of text, etc.

The notion of “flavour of minimum requirement of creativity” was introduced in this case. It was held that to establish copyright, the creativity standard applied is not that something must be novel or non-obvious, but some amount of creativity in the work to claim a copyright is required. The Court held that these inputs made by the editors of SCC can be given copyright protection because such tasks require the use of legal knowledge, skill and judgment of the editor. Thus, this exercise and creation thereof has a flavour of minimum amount of creativity and enjoy the copyright protection.

From then onwards, Indian courts are following “modicum of creativity” approach and completely rejected the plea to protect mere compilations. In order to attain intellectual property right, the work has to be original and not merely a copy of original work. Thus, the primary objective of maintaining a balance between labour of the author and original expression is ensured.

Similar or Identical Trademarks

As per the Trade Marks Act, 1999, a trademark cannot be registered if it is similar or identical to a trademark already registered with  the Trade Marks Registry, India. Section 11 of the Trade Marks Act, 1999, exclusively deals with this issue. In this article, we will take into consideration as to what are identical or similar trademarks with the help of a landmark judgment.

Similar Trademark: –

The criteria for the classification of a mark as an identical trademark is relatively simple and straightforward. A trademark may be considered identical to an existing mark if, it is created or reproduced without any alteration or modification; or where all the essential characteristics, supposably differentiating the trademark from the other are so insignificant that an average consumer is unable to distinguish.

Comparing Trademarks for Similarity: –

Below are some of the main points which shall be taken into consideration while comparing two trademarks: –

  1. Average intelligence and of imperfect recollection should be made a point of view of comparison,
  2. The structural, visual & phonetic similarity, the similarity of the idea in the two marks, and the fact as to whether it is reasonable likelihood to cause confusion should be taken into consideration.
  3. A trademark should not be dissected and then compared. It should be taken as a whole and then compared with the other mark.

The concept of similar or identical marks can further be understood with the help the case law below: –

The appellant Larsen and Toubro Ltd. (L&T), in the instant case Larsen & Toubro Ltd. v. Lachmi Narain Trades. & Ors 2008 (36) PTC 223 (Del.) (DB), is engaged in diverse business activities including transportation and infrastructural development, finance, information technology within and outside the country. Nearly a dozen subsidiary companies using the ‘L&T’ prefix with their names have been incorporated over the years to carry on the said business activities. The annual turnover of the company which runs into thousands of crores and its publicity expenditure which has gone up from 7 crores in 1991-92 to 53 crores in 2001-02 also denotes its popularity.

Aggrieved by the use of the names/abbreviation ‘LNT’ and ‘ELENTE’ as brand names for electrical goods including electrical distribution systems like miniature circuit breakers etc. by the defendants, the plaintiff company filed a suit restraining it from passing of the said goods as that of the plaintiff by confusing the wary customers. The plaintiff’s case was that the defendant intended to capitalize on the goodwill of the plaintiff, for there was no reason for the defendant to adopt such a name and abbreviation. An application seeking an ad interim injunction restraining the defendants from using the mark LNT/ELENTE was also filed. The defendants contested alleging that the name LNT/ELENTE was not similar to the trade mark and trade name used by the plaintiff and that LNT was nothing but the abbreviated form of the defendant’s family business name since 2001, Lachmi Narain Traders. Another plane of argument was that the parties did not indulge in the same ‘field of activity’. The application was allowed ex-parte by a learned Single Judge of the Delhi High Court on 27th June 2003. The Judge despite allowing the injunction by stating that the test of ‘ field of activity’ is no more valid, found favour in the willingness of the defendants to use the trade name “LNT/ELENTE-Lachmi Narain Traders” and said the injunction would not apply should the appropriate changes be made.

The appellants appealed against this, thus bringing the case under the purview of a Division Bench. The appellants referred to the Judge’s own findings in the judgment that “they have, therefore, acquired a secondary meaning as the moment the word ‘L and T’ or ‘L&T’ appear on a product, the consumer will associate the same with the plaintiffs”. It was reiterated that the test of ‘field of activity’ is no longer valid.

The decision of the Division Bench was to allow the appeal to make the ex parte ad interim order absolute and have the defendants restrained from using the trademark/names ‘LNT/ELENTE’ or another deceptively similar name in relation to any of its products.

The decision of the Hon. Division Bench of the High Court in the intent case is praiseworthy as it has substantially reiterated the non-applicability of the test of ‘field of activity’. It has done this by over-riding the learned Single Judge’s acquiescence to the defendant’s suggestion to continue using the trademark in the following manner –“LNT/ELENTE-Lachmi Narain Traders”. They observed that the defendant’s argument about the ability of a layman/average consumer to realize the difference between brand names in ‘different fields of activity’ was highly optimistic in nature, thereby categorically stating the end of the test of ‘field of activity’. The question is more of real likelihood of confusion or deception among the consumers and the resultant damages to the plaintiff, which has undoubtedly been proved in the present context as has been clearly worded in the final judgment.

The decision is also far-sighted in the consideration that it opens up an individual’s/business house’s scope for expansion into any field of profit maintaining his/its existing trademark.

Further, additional precaution is required where the goods comprise of medicinal preparations as the possibility of confusion over marks on medicinal products is more and the subsequent potential harm may be far adverse than in case of ordinary consumer products

-hope it doesn’t alters the meaning