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Copyright infringement claims are arbitrable
Bombay High Court, while adjudicating an application filed under section 8 of the Arbitration and Conciliation Act, 1996, in Eros International Media Limited v Telemax Links India Pvt Ltd, has held that intellectual property...
The tides turn
Will punitive damages being awarded in India deter intellectual property infringement?
Rebecca Abraham reports
In October 2008, Delhi High Court put its stamp on an interesting settlement reached in a case of trademark infringement brought before...
The slip between cup and lip
Shwetasree Majumder of Fidus Law Chambers discusses intermediary liability and finding collaborative solutions
Section 66A of the Information Technology Act, 2000, (the IT Act) has been widely dubbed an anti-free speech provision as it has...
Ruling clarifies jurisdiction in trademark law
Holding that it had no jurisdiction in M/s RSPL Ltd v Mukesh Sharma & Anr, Delhi High Court said that a plaintiff cannot call upon a court to act in a suit “on the...
Dazzled yet daunted by India
Few international brands will have had as long an alliance with
India as Cartier
The renowned French jeweller has what it calls an “inspiring relationship” with India that dates back to 1911 when Jacques Cartier, a...
Service providers’ liability for copyright infringement
The internet has been the most omnipresent form of media for two decades and along with all its benefits and popularity the legal ramifications have increased manifold. These include copyright infringement, which has been...
Inspirations, adaptations and drama over IP rights
India’s illustrious Bollywood entertainment industry is growing at an unprecedented rate, invariably leading to a rise in legal disputes. Traditionally, intellectual property-related disputes were scanty and solved without much ado. However, with the paradigm...
Some issues and challenges associated with 3D printing
With a constant and dynamic advancement in technology, laws, especially intellectual property laws, are always playing catch-up. This results in IP laws being stretched and sought to be purposively interpreted to cater to the...
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What’s in a name? Trademarks for film titles
India’s film Industry is booming, known to deliver world class films. Every film gets recognition from its name, giving it a sense of identity for the public to relate to or recognize.
In 2001, the...
Intellectual property rights: What startups should know
Branding, customer data, technology such as software, mobile applications, etc., form an integral part of the intellectual property (IP) portfolio of any start-up company. Protection of IP is crucial for startups in view of...
Tweet twitter tweeted: Can copyright protect tweets?
We live in a world where people find it imperative to share their thoughts, even if inane. The success of social networking websites such as Twitter is a clear testament to this need. However...
Building plans of private companies may be disclosed
In Ferani Hotels Pvt Ltd v The State Information Commissioner Greater Mumbai & Ors, Bombay High Court ruled that development plans of a real estate company can be disclosed by the municipal authorities, on an application under the Right to Information Act, 2005.
Ferani...
Supreme Court finds no copyright in title of a work
Allowing an appeal in Krishika Lulla & Ors v Shyam Vithalrao Devkatta & Anr, the Supreme Court held that there is no copyright in the title of a literary work and a plaintiff can obtain...
2015 rulings clarify taxation of software-related services
Taxation of software is one of the most debated issues of indirect taxation. With the rapid digitalization and the constant quest of the central and state governments to get a bigger slice of the...
Confidentiality-copyrights interplay in entertainment
The need to determine authorship is of paramount importance for the commercialization of intellectual property. Confidentiality and copyright are different areas of law, which seldom coincide when it comes to protecting originality or the...
Globetrotting
Intrepid Indian law firms are setting up offices overseas. What are the practicalities, perks and perils of such ventures? Vandana Chatlani investigates
As Indian businesses become more global in their outlook and operations, forward-looking Indian law...
Understanding costs and benefits
Developing an effective enforcement strategy for India can be tricky. Omesh Puri at LexOrbis explains what it takes
The enforcement of intellectual property (IP) rights requires the holders of the rights to proclaim their rights....
IP warrior
Ritesh Khosla at Multi Screen Media discusses the menace of piracy and his company’s battles to contain it. Interview by Vandana Chatlani
It is the media’s untamed beast. Piracy, with tentacles in every word, sound, image...
Slogans/taglines: Sure shot way to advertising success?
In today’s competitive world, companies continuously try to come up with unique advertisements to promote and create awareness of their goods and services. Advertising in India, a country with so much diversity, is particularly...
Reverse engineering and India’s Copyright Act
Computer programmes or software are classified as “literary works” under the Copyright Act, 1957. Software owners assert copyright in their software, however source code (also protectable under the act) is usually kept confidential. If...
Controls on advertising that misleads consumers
According to advertising pioneer David Ogilvy, consumers make their purchase decisions based on the content and not the form of advertising. This is still true today.
Ads create consumer awareness and with smart marketing enable...
Your place or mine? Case changes jurisdictional rules
As a result of legislative policy, intellectual property rights holders can file a suit where they reside or carry on business or personally work for gain, instead of where defendants reside or the cause...
Cause of action governs venue of infringement suit
Dismissing an appeal in Indian Performing Rights Society Ltd v Sanjay Dalia & Anr, the Supreme Court recently held that a plaintiff cannot institute a copyright or trademark infringement suit at a place where...
‘Originality’ concept under India’s copyright regime
Under section 13 of India’s Copyright Act, 1957, copyright can subsist only in “original” literary, dramatic, musical and artistic works. The act does not define “original” or “originality” and what these concepts entail has...
Exhaustion of copyright in today’s digital market
The digital market has become an important means of distributing copyright works. In relation to “tangible” copyright works such as books, CDs, etc., the rights and the ability of the copyright owner to assert...
The right equation?
A patent infringement case relating to an anti-diabetic drug highlights the delicate balancing act required to protect innovation while ensuring access to affordable medicines. Vandana Chatlani reports
On 28 April, the Supreme Court of India is...
In search of synergy
As two well-known intellectual property law firms merge, Rebecca Abraham asks what clients should expect
In 2013, six lawyers who appear before Delhi High Court were designated as senior advocates, five of them in February...
Trademark troubles
Roma Arora and Harsh Aggarwal of Havells share some experiences and anecdotes of managing their brands in India
Trademark licensing
Havells Sylvania Group handled a International Chamber of Commerce arbitration involving a tricky situation that raised...
Faces behind the marks
Brand managers at 24 leading companies reveal their hopes, fears and preferred law firms for intellectual property matters. James Burden reports
It’s spring and intellectual property is in the air. Next month approximately 10,000 IP lawyers...
Abiding by the law is key when assigning copyright
Like other forms of intellectual property, copyright can be transferred by an assignment agreement between the author of the original work and an assignee. Assignment agreements create legal and enforceable rights and can be...
Copyright Act amendments not apt for film and music
The amendments almost three years ago to the Copyright Act, 1957, are arguably among the most significant made to the act to date. The amendments not only radically altered how copyright ownership devolved but...
Trademark and counterfeit law reform in Canada
Two bills that recently became law in Canada are changing the country’s regulatory landscape around trademark and counterfeit issues. Both bills include amendments intended to bring reform to these areas.
Bill C-31, which became law...
Call waiting
iVoice Ventures has faith in India’s intellectual property regime despite its lingering trademark battle against Apple, writes Venky Vaiyapuri
Around 2006, India radically amended its telecom rules on the import of mobile phones thus throwing open...
Time for action
Companies should prepare now for the introduction of the goods and services tax, which is scheduled to take effect a year from now. Girish Vanvari and Santosh Dalvi explain
An immediate concern for anyone contemplating an...
Blurred lines
With the boundaries between telecoms, retail and other sectors becoming less well defined, Kalpana Tyagi calls for a new approach to tackling competition law challenges
Telecommunications companies that traditionally offered only fixed line telephone services now...
All you need to know about cover versions!
Cover versions are new recordings of a previously recorded or commercially released song by someone other than the original artist or composer. Usually non-commercial in nature, cover versions are often created by amateurs and...
Debate on nature of offence of copyright infringement
Section 63 of the Copyright Act, 1957, lays down the punishment for copyright infringement. Section 64 of the act empowers the police to “seize infringing copies” without a warrant. While from a copyright law...
Madras High Court protects actor’s personality rights
Madras High Court granted an injunction to restrain the makers of the film Main Hoon Rajinikanth from using actor Rajinikanth’s name, caricature, style and image to prevent the infringement of his personality rights.
In Shivaji...
IP boutiques confirm merger
IP firms Lall & Sethi and Singh & Singh have agreed to merge their practices by 1 April. The combined firm will be called Singh & Singh Lall & Sethi and will have nine...
Ashok Kumar lends name to tool against movie piracy
Decades after veteran actor Ashok Kumar charmed movie makers and viewers alike with his natural acting and effervescent personality, his name continues to resonate in the corridors of the entertainment industry courtesy of Ashok...
Erosion of IP rights: Impact on fashion and textile sector
India’s fashion industry complements its textile industry, which contributes significantly to exports and GDP. Trends in terms of colours, styles, fabrics, etc., determine the fashion industry’s fortunes, which rest on the creative endeavours of...
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Adobe counsel takes on INTA presidency
The International Trademark Association (INTA) has elected J Scott Evans of Adobe Systems to be its president this year. He will take over from current president Mei-lan Stark, the senior vice president for intellectual...
Khurana marches to Mumbai
IP boutique Khurana & Khurana has acquired Closer2Patents in order to better serve its clients in Mumbai. Closer2Patents, another IP boutique, was established by Abhishek Pandurangi in 2010. He joins Khurana & Khurana as...
What’s in a name? Personality rights in India
Celebrities enjoy publicity rights, privacy rights, reproduction rights and other personality rights. With all these rights having their own significance, personality rights are popular these days because of the increase in celebrity endorsements and...
The gift of giving
Philanthropy, social entrepreneurship and charity initiatives have blossomed across India. To celebrate the spirit of giving, we highlight some meaningful projects and the pro bono legal work that helped make them possible.
Vandana Chatlani reports
In August, Mansi...
A can-do spirit
Roma Arora, the senior legal manager at Havells India, speaks to Rebecca Abraham about the invigorating challenges of in-house work
Today it is easy to take for granted the important role played by in-house lawyers...
Court clarifies jurisdiction for e-commerce
Allowing an appeal in World Wrestling Entertainment Inc v Reshma Collection & Ors, Delhi High Court recently held that “it is possible for an entity to have a virtual presence in a place which...
Anand loses partner to LexOrbis
Vidya Bhushan Mehrish, a former partner at Anand and Anand, has joined LexOrbis as a partner. Mehrish is experienced in matters relating to patents, trademarks, copyright and designs. He has handled a broad range...
Turf wars
Attempts by India’s competition regulator to curtail abuse of dominance stemming from intellectual property rights are gathering momentum. Shwetasree Majumder and Itisha Yadav analyse recent developments
The conflict between competition policy and intellectual property (IP) laws...
Bright ideas
In-house counsel from leading companies trade tips on IP protection and discuss the structures, systems and safeguards required for a successful IP strategy in India
Narendra Modi’s government vowed in September to draw up a...
Protection of video games: It’s time to up the ante
Contemporary video games are an eclectic fusion of cutting edge technology and imaginative artistic expression. Replete with high quality graphics, elaborate visual effects and sophisticated characters in movie-like settings, they give gamers unprecedented freedom...
Overlap of passing off and infringing registered design
India’s intellectual property framework includes statutory protection for designs under the Designs Act, 2000, which grants a monopoly right akin to patent rights. Since India does not recognize statutory rights in unregistered designs, the...
T-Series found to have abused its dominance
Holding that the Competition Commission of India (CCI) “is a market regulator and has the jurisdiction to look at all issues affecting competition in the market”, the CCI recently penalized Super Cassettes Industries –...
Disclosure needed for agent to issue licence in its name
In M/s Leopold Café & Stores & Anr v Novex Communications Pvt Ltd, Bombay High Court recently held that as per the Copyright Act, 1957, an unregistered third party cannot carry on “the business...
Fighting it out
Pravin Anand and Nishchal Anand evaluate IP dispute resolution processes in India
Litigation has proven to be the most effective tool to combat trademark and copyright infringement in India. In fact, matters of counterfeiting and...
To be or not to be: Parallel imports of publications
In an era of free trade, restrictions on parallel international trade in copyrighted materials seem anomalous. India sought to correct the anomaly by amending section 2(m) of the Copyright Act, 1957, to expressly legalize...
King Digital crushes infringers
King Digital Entertainment, the largest game developer on Facebook, and Apeejay Surrendra Group have settled King’s suit to restrain one of the group’s hotels from using artistic works and trademarks associated with its Candy...
Recognition and protection of television format rights
The “television formats” for unscripted reality shows such as “IDOL” (American Idol, Indian Idol, etc.), “Big Brother” (Bigg Boss in India), and “Who Wants to be a Millionaire?” (Kaun Banega Crorepati in India) have...
Delhi High Court rejects ‘copyright misuse’ doctrine
“Copyright misuse” is a doctrine recognized in the US as an equitable defence against an allegation of copyright infringement, based on a copyright owner’s wrongful exploitation and misuse of its exclusive rights. This doctrine...
India Business Law Directory 2014
India Business Law Journal presents its annual report on the state of play in India’s legal market, accompanied by an essential directory of more than 50 of the country’s leading commercial law firms
Legal market report by...
Royalty may be included in assessable value of imports
In the context of valuation for customs purposes, the West Zonal Bench of the Customs, Excise and Service Tax Appellate Tribunal has, in a recent decision in Star Entertainment Pvt Ltd v Commissioner of...
Film piracy: Industry and state initiatives to combat it
Would you steal a car? A fancy phone? Or maybe somebody’s wallet? No? Then why steal a movie? A film is the property of its copyright holder and deserves the same protection as any...
New rights for performers in updated Copyright Act
The law relating to performers’ rights underwent a significant overhaul during the 2012 amendments to the Copyright Act, 1957. Prior to India’s accession to the TRIPS agreement in 1994, the rights of performers in...
Tide washes over infringers
Bombay High Court has ordered Zeeshan Haider Sayeed to cease using trademarks, artistic works and deceptive variations of the laundry detergent Tide.
Procter & Gamble, which owns the Tide trademark, and its Indian subsidiary filed...
Globetrotting
What Indian companies need to know about protecting their intellectual property around the world. By Nandini Lakshman
Last year, India adopted the Madrid Protocol agreement for the international registration of marks. India’s accession couldn’t have...
Picking an IP lawyer
Practitioners and in-house counsel share their insights on India’s IP professionals and how to choose among them. James Burden reports
Choices over which intellectual property (IP) lawyers to engage in different jurisdictions are among the...
Head to head
A comparison of Indian and Chinese trademark law
In a collaborative feature to coincide with the 136th annual meeting of the International Trademark Association, a Chinese and an Indian IP firm have joined forces to...
Strike a pose: Nothing IP to it
Attempts to copyright yoga routines have thrown up issues of originality, ownership, traditional knowledge and choreography, writes Bisman Kaur at Remfry & Sagar
Proprietary claims over pranic healing techniques propagated by master Choa Kok Sui,...
Intellectual property in numbers
The facts, figures, feats and fees of Indian IP firms. By Rebecca Abraham
In an annual report published on 11 March, the office of India’s Controller General of Patents, Designs and Trademarks stated that in...
Jupiter lands in legal market
Jagvir Singh, a former partner at HSA Advocates, and Sujit Thakur, a former partner at ZeusIP, have launched Jupiter Law Partners. They are joined by Meera Chature from Luthra & Luthra, Madhukar Tomar from...
Licensing of character and personality rights in India
Associating products with well-known characters and personalities has been one of the most popular marketing strategies adopted by companies the world over including in India. Likewise, owners of character and personality rights have identified...
Recent judicial approach to the hot news doctrine
The doctrine of “hot news” is a judicially evolved phenomenon which applies to written material and live televised events containing “facts” that have value for a short duration, and which will soon move into...
Drug patent trends in India
Patients everywhere would benefit from top-down reform to align India’s patent law with global norms say Pravin Anand and Archana Shanker of Anand and Anand
India has witnessed exponential growth in infringement actions before the...
IP mind games
As foreign companies enforce their IP rights more aggressively in India, Indian companies are coming under attack. A mental battle has begun, with both sides deploying innovative strategies in an attempt to stand their ground. Raju Bist reports from...
Arbitration clause lost if agreement superseded
Dismissing an appeal in M/s Young Achievers v IMS Learning Resources Pvt Ltd, the Supreme Court recently held that “an arbitration clause in an agreement cannot survive if the agreement containing arbitration clause has...
No rights in cricket match information
Allowing an appeal in Akuate Internet Services Pvt Ltd & Anr v Star India Pvt Ltd & Anr, a two-judge bench of Delhi High Court ruled that telecom operators and content providers could not...
Insurance can help protect intellectual property assets
In today’s business environment, where the fortunes of a business empire can depend on a moment of uncertainty, insurance is a viable option to minimize potential losses. A company’s tangible assets can be insured...
Intellectual property: Does service tax or VAT apply?
The 46th amendment to India’s constitution, in 1982, inserted article 366(29A), which defined purchase/sales of goods and extended the scope for levy of value-added tax (VAT)/central sales tax (CST) to the “transfer of right...
Sui generis system needed for trade secret protection
In today’s era of globalization, companies use patent, copyright, design and trademark laws to protect their intellectual property (IP). These laws provide developed and efficient ways to protect IP. Due to the increasing demand...
Balancing competition and intellectual property rights
Conceptually, it would appear that in certain cases intellectual property rights (IPR) and competition/antitrust law cannot really coexist with each other. The law relating to IPR seeks to encourage innovation by allowing an owner...
Keeping a steady hand
Ish Bali, director of legal at Coca-Cola India, explains how it is possible to run a tight ship with help from your larger family
By Rebecca Abraham
The complexities of doing business in India, combined with...
How to choose the best way to protect a design in India
The design of an article can be registered as a design, a trademark or a copyright. Three laws provide protection, each from a different perspective. Design owners need to understand this to maximize their...
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Time to align
Transfer of technology agreements run the risk of falling foul of India’s competition regime say Meenakshi Arora, Harvinder Singh and Sumedha Dutta at HSA Advocates
The rapid evolution of technology can in part be attributed...
Punching above its weight
India’s competition watchdog may be the new kid on the block, but it has already been flexing its muscles. Is it up to the challenges it has set for itself?
Rebecca Abraham reports
Levelling the playing...
India offers many forms of intellectual property licence
Businesses everywhere are seeking ways to exploit their intangible assets, licensing being one of them. For foreign companies interested in the Indian market, one of the simpler modes of having a presence in India...
Anand and Anand promotes six
IP boutique Anand and Anand has promoted six managing associates to its partnership: Dhruv Anand, Madhu Rewari, Revanta Mathur, Sandhya Singh, Shrawan Chopra and Swati Sharma.
The firm stated that the six members are all...
New royalty right will alter the music industry in India
The Copyright (Amendment) Act, 2012, which amended the Copyright Act, 1957, was received with a degree of disquiet by India’s music industry. The amendments give authors of literary and musical works incorporated in films...
A world of IP challenges
Burgeoning exports of services have put a spotlight on safeguarding Indian intellectual property rights abroad. George W Russell assesses the key risks that Indian IP owners face in other jurisdictions and introduces some of...
Setting new standards
An unresolved dispute over standard-essential patents is turning into a test case with far-reaching ramifications for IP owners
Rebecca Abraham reports
Patent litigation in India is all too often dominated by high profile, messy clashes between...
Meet the experts
India Business Law Journal introduces 50 Indian law firms that international IP owners and their legal advisers should know about
Rebecca Abraham reports
The increasing complexity of intellectual property (IP) jurisprudence and the rising cost of...
No injunction for copyright in four common words
Refusing an injunction in Saregama India Ltd v Viacom 18 Motion Pictures & Ors, a single judge of Calcutta High Court held that in order for a suit for injunction to succeed “the allegedly...
India budget proposes legislative amendments
As part of the union budget, the Indian government has proposed legislative amendments to the income tax laws and has introduced changes through the Finance Bill, 2013, which are discussed below:
Income tax rates
A 10%...
US case breaks ground for copyright in social media
If you think stealing a photo uploaded on Twitter can’t land you in court, a case decided by a US court in January may change your view. The case pitted Agence France-Presse (AFP) against...
Hot news misappropriation need not rely on copyright
Broadcasting, particularly sports broadcasting, requires the ability to monetize different aspects or property rights in an event given the huge investments made by event organizers and rights holders such as broadcasting organizations. Naturally, there...
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Limits of live broadcasts and news of sports events
Delhi High Court recently delivered a judgment in a case that is expected to have a substantial impact on the manner in which sporting organizations assign rights to sports broadcasters and, ultimately, on the...
Legality of services related to broadcast of live events
The tremendous growth in the sports industry and sports viewership across the globe has led to a growing integration between the law and sports. As more viewers watch through broadcast than live at the...
India in 2013
Legal practitioners and in-house counsel share some of their predictions for the year ahead
Bhavna Thakur, director, capital markets origination equities, Citigroup Global Markets India: For the Indian economy and capital markets, 2012 has been...
Trivial copyright offences not worth prosecuting
Allowing an appeal in India TV Independent News Service Pvt Ltd & Ors v Yashraj Films Pvt Ltd, a two-judge division bench of Delhi High Court recently ruled that trivial infractions, such as where...
Court upholds rights of script writer
Holding that it is “necessary to send a strong message that creations of story writers need to be treated with dignity and respect and cannot always be made subservient to commercial interest of distributors...
Use of know-how can lead to associated enterprise status
When transactions are entered into between independent enterprises, the price is understood to be determined by market forces. However, when associated enterprises deal with each other, the commercial and financial aspects of the transactions...
Student book publishers and the issue of fair use
Intellectual property litigation rarely excites large sections of the public enough to form passionate opinions and take sides. Recently however, a case filed by a group of publishers of academic books against Delhi University...
Advertising slogans merit copyright protection
Advertising is a powerful tool in which businesses invest a lot of resources. A successful advertising campaign can make a business profitable, give it market leadership and create goodwill and reputation among consumers.
Periodically in...
No copyright in advertising slogans
In Godfrey Phillips India Ltd v Dharampal Satyapal Ltd & Anr, Delhi High Court held that a slogan, being a “combination of common words”, would not fall within the scope of artistic or literary...
Copyright Act amendments to have far-reaching effects
Eagerly anticipated changes in the Copyright Act, 1957, brought about by the passing of the Copyright (Amendment) Bill, 2012, are expected to have far-reaching effects on various industries, most significantly, the music and film...
Malaysian case presaged expansion of moral rights
Moral rights differ from copyright in the sense that copyright protects property rights, which entitle authors to publish and economically benefit from their published works, while moral rights safeguard personal and reputational rights, which...
India Business Law Directory 2012
India Business Law Journal presents its annual legal market report and directory of Indian law firms
Legal market report by Rebecca Abraham
Sitting at the Gurgaon office of the 240-lawyer, five-office law firm that he has...
Saikrishna poaches partner from Luthra
IP boutique Saikrishna & Associates recruited Ameet Datta to the partnership in July, from Luthra & Luthra.
Datta, an IP, media and entertainment specialist, moved to Luthra & Luthra in 2008 after practising IP law...
The copyright question
Dear Editor,
I had a good time going through the June issue of India Business Law Journal and was impressed with the way it was structured. It is a very informative and thoughtful publication.
I found...
Act’s new role for performers
Performers in the film and entertainment industries will have greater protection under the recently notified Copyright (Amendment) Act, 2012. It introduces exclusive and moral rights to conform with international treaties and keep pace with...
New copyright law hits right note
The Copyright (Amendment) Act, 2012, is one of the most far reaching pieces of intellectual property legislation enacted in recent times. It has the potential to change the face of the Indian entertainment and...
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Musicians denied rights from radio broadcasts
Ruling in Indian Performing Rights Society Ltd v Aditya Pandey & Ors, a division bench of Delhi High Court held on 8 May that radio stations that broadcast or communicate sound recordings need pay...
Copyright Board cannot issue interim orders
Allowing an appeal in Super Cassettes Industries Ltd v Music Broadcast Pvt Ltd, the Supreme Court ruled that the Copyright Board cannot issue interim orders while it considers the merits of complaints made –...
Copyright amendment bill gets final nod
In May the Indian government passed the much awaited Copyright (Amendment) Bill, 2012. This bill will benefit lyricists, music composers, artists and other authors of original works, but could spell bad news for producers...
Copyright bill gets presidential nod
The Copyright (Amendment) Bill, 2012, which was passed by parliament last month, has received the president’s assent and was recently notified in the official gazette.
The bill, which had been hotly debated, discussed and revised...
Negative list approach to taxing services introduced
The Union Budget 2012-13 has proposed a paradigm shift in the way in which services are taxed, by moving from a “positive list” to a “negative list” approach. Currently, only notified services attract service...
