1 October 2012CopyrightPurnima Singh

India: at the threshold of change

It has been an active year for intellectual property in India. Important events have been the grant of the first compulsory patent licence, the coming into force of the new copyright law and developments in the infamous fight over the FT brand in India.

In March, Natco Pharma, the Hyderabad-based drug company, was granted India’s first compulsory licence on the grounds that the patented drug Nexavar (a kidney/liver cancer drug) was too expensive for Indian patients, and merely importing the drug to India did not amount to Bayer working the patent in the country. (In order to satisfy the requirement for working the patent in India, Bayer would have needed to either manufacturer the drug in India or grant a voluntary licence to another to do so.)

The grant entitles Natco to manufacture and sell the generic version. Bayer is to be paid a 6 percent royalty on net sales. This licence makes the drug available at Rs8,800 ($160) for a monthly dose of 120 tablets—it was previously Rs280,000 ($5,000).

The licence also records Natco’s commitment to donate drugs free of charge to 600 patients each year. While Bayer has appealed against the grant, the US House of Representatives and the US Patent and Trademark Office are reported to have considered challenging it before the World Trade Organization.

Copyright law

The Copyright (Amendment) Act, 2012 came into force in June. While the real impact will be felt in future, the amendments are applauded by artists, writers and music composers, who had lobbied hard to incorporate measures securing a share in royalties. Authors of underlying works cannot now assign the right to receive royalties for the use of their works, other than for use in a film where the work is communicated to the public.

They will now retain the rights to royalties for the non-theatrical use of their works and can assign these only to their heirs or to copyright societies. Similar provisions apply to sound recordings. The mechanism by which royalties will be paid to artists requires some work.

The amendments prohibit sound recording cover versions of literary, dramatic or musical works for five years from the first recording of the original.

Other significant changes include compulsory licences for the benefit of disabled people and for broadcasting literary and musical works and sound recordings, and the very controversial inclusion of protection of technological measures and the protection of rights management information.

Striking inclusions are the safe harbour provisions for intermediaries in cases of secondary infringement and the mechanism of notice and take-down.

Minor amendments which may have a far-reaching impact include extending the exception of fair dealing to cover all works (except computer programs). The definition of ‘communication to the public’ has been expanded to include performances in addition to works. Performers also have the right to receive royalties when a performance has been used for commercial purposes.

Media wars

"THE IMPORTANCE OF DEMONSTRATING USE OF A MARK IN INDIA FROM THE ACTUAL DATE CLAIMED IN THE APPLICATION CANNOT BE EMPHASISED ENOUGH."

Continuing in combat are Financial Times Limited, London (FTL), owner of Financial Times, and Times Publishing House Limited (TPHL), owner of India’s leading pink paper, The Economic Times. The two had briefly entered into a syndication agreement in the early 1990s, which fell through. TPHL introduced a supplement to its publication The Economic Times under the name Financial Times. It also holds the title registration for this title at the Registrar of Newspapers for India, thereby blocking FTL’s ability to obtain it.

Over almost 20 years, both have filed multiple proceedings and actions claiming ownership rights in India to the marks ‘FT’ and ‘Financial Times’.

In April the Intellectual Property Appellate Board (IPAB) held that the mark ‘FT’ in relation to printed material did not belong to either of them.

This resulted in the registration of ‘FT’ under the names of both these entities being cancelled. The Delhi High Court has stayed IPAB’s order, and the matter is scheduled before the court in October.

IPAB’s rationale for the cancellation of FTL’s registration of the ‘FT’ mark was that FTL had claimed the date of first use as 1948 but was able to demonstrate use in India only since 1952.

This was seen as insufficient to sustain the registration since the initial entry in the register was held not in accordance with the law because it was made based on a statement of first use which the registered holder could not substantiate, even though the IPAB acknowledged the reputation FTL enjoyed in India.

Fortunately FTL had also registered ‘FT’ on the basis of proposed use for video disks and the like. This registration remained safe, since FTL was not required to establish use for these goods prior to its application.

The importance of demonstrating use of a mark in India from the actual date claimed in the application cannot be emphasised enough.

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