Nov 19, 2018 | Contracts, IPR & Business
A major chunk of a progressive company’s assets today is in the form of Intellectual property (IP) such as trademarks, patents, copyrights, trade secrets, designs and so on. Sharing of confidential information becomes unavoidable when two entities are transacting business. A non-disclosure agreement (NDA) is also known as a confidentiality agreement and is an agreement where two or more parties agree to keep certain information confidential. In most situations, NDAs serve as the first move towards subsequent business agreements and contracts that include additional provisions covering the complexity of business transactions between the parties. This can either be one-sided (only one party shares confidential information) or mutual (expecting exchange of confidential information from both the parties) but the outcome of it is to protect the information or the businesses’ trade secret.
- Parties
It is very important to list out the party names correctly on an NDA as a relatively minor error such as forgetting to include the word “Limited” can have disastrous consequences. Some companies have different legal names and trade names when they begin their operations. A legal name is the name used by an entity when registering as a business, when signing official legal documents, and when dealing with governmental processes. A business name or a trading name however is the name a company uses for ads and sales and under which it performs its business with the public. A party may have the same legal and trading name, but it is also entirely possible that they may not be the same.
Further, there is no legal protection to halt the use of a trade name by other companies unless the entity trademarks its name. It is therefore important to list both the legal and trade name of the businesses involved when drafting an NDA.
- Define what is deemed to be confidential information
Confidential information should be defined specifically for both parties. The parties involved must be precise when identifying the type of confidential information exchanged and whether it is the same or different for all parties. For example, the type of information to be shared by each party may not be the same in the case of a discussion involving the mutual exchange of confidential information between the two parties. Therefore in such cases, it makes sense to provide an exact definition of confidential information for each party.
Classifying all the information disclosed to a receiving party as confidential can be tempting. However, using catch-all clauses must be avoided and instead, the agreement should only include information that is truly necessary to keep a secret.
For example, in Trailer Leasing Co. v. Associates Commercial Corp, a federal court in Illinois declined to enforce an NDA where the concept of ‘confidential’ was deemed too vague, over and above a lack of specified geographical limitations.
The law treats confidential information differently than trade secrets and hence care must be taken to appropriately label the information as confidential information or a trade secret. A differentiator between the two is that trade secrets are known to last for a longer period of time across generations.
- Term of the agreement
The term of the NDA may or may not be the same as the term of contractual obligations and therefore it requires a specific definition of the term. Perpetual clauses should be avoided unless the same is in the context of the parties’ discussions.
- Clearly define non-disclosure and non-use
The agreement should include separate provisions on non-disclosure and non-use in both types of NDA (mutual and one-sided).
NDA clauses should be drafted so as to not create undesirable delays in discussions and negotiations. The business goal should always be given priority to the lawyers involved in drafting and negotiating NDAs and excessive clauses should be avoided while standard clauses in NDA should be given utmost importance. In the case of any problems, it is often best to adhere to the primary purpose of signing NDA, i.e. confidentiality and limiting the use of sensitive information, whereas additional agreements can be enforced to include relevant provisions (Non-compete, Non-solicited, IP Assignment, IP Licensing, etc.)
By Damini Mohan
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Nov 15, 2018 | Indian Patents Act 1970, IPR & Business, Patent
In this case, Medley Laboratories (P) Ltd. (hereinafter referred to as Medley) filed a suit of trademark infringement against Alkem Laboratories for usage of mark “SUPAXIN” which is deceptively similar to registered trademark of Medley, “SPOXIN”. Brief facts of the case are as follows:
- Medley is registered proprietor of the trademark “SPOXIN” in respect of Pharmaceutical and Medicinal Preparations in Class 5 vide Registration number 420835. They applied for registration in year 1984 and have been using the mark since 1999, for medicinal preparations containing the generic drug SPARFLOXACIN.
- Alkem, India’s 10th largest Pharmaceutical Company (at the time of suit), started using the mark “SUPAXIN” and for the same registration application had been sent to Registrar of Trademark as ‘proposed to be used’.
- Suit for infringement and notice of motion was taken out by plaintiff to restrain Alkem from using infringing mark, initially an ex-parte injunction was passed in favour of Medley, but on another notice of motion by Alkem, parties were heard afresh and it was held by a single judge that the marks in question are not similar and therefore injunction is bound to be said aside. On such order by the Single Judge, appeal was preferred by Medley, which was the subject matter of present case.
Arguments
By Medley i.e., Appellant
- That medley is the registered proprietor of the trademark “SPOXIN” vide registration number 420835 and by virtue of registration they are entitled to exclusively use the mark and protect it.
- That Single judge has committed error of law by not granting injunction in favour of Medley, decision of Hon’ble Supreme Court in case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.; {[2001]2SCR743}, was relied upon, wherein Supreme Court decided upon similar question with respect to marks being used in medical preparation. Medley contented that Apex Court held that in medical products and drugs public interest should be considered and a stricter approach has to be adopted because confusion as to medicinal product can have disastrous effect on health and in some cases on life as well.
- That balance of convenience was in favour of Medley as their mark “SPOXIN” is a registered mark and irreparable loss and injury would also be caused to them if injunction is refused, as the suit will take a long time and in spite of registered trade mark, the defendant will continue to use ‘deceptively similar’ mark SUPAXIN.
By Alkem i.e., Defendant
- That Alkem is honest user of the mark “SUPAXIN”, it has coined the term by taking into consideration two words i.e., “SUPA” which means superior and “XIN” which is a common suffix for antibiotics. That prior to applying for registration, they made an application to Registrar under rule 24 of Trade and Merchandise Marks Rules, 1959, requesting him to conduct a search and issue a search for similar marks and on basis of such search report they started using the mark “SUPAXIN”.
- That there was no dishonest intention in applying the mark and the mark is neither deceptively similar nor it would create any confusion to customers.
- That a discretionary order has been passed by Single Judge and under ordinary circumstances such orders are not interfered with by Appellate Court.
- That balance of convenience was not in favour of Medley because as per the findings of Trial Court Medley and Alkem started using the mark at around same time. That Alkem has established its bona fide usage by making search request to Registrar.
- That no evidence is produced before the court of Medley regarding the confusion, on the contrary affidavits were produced by Alkem to support that there was no likelihood of deception or confusion to doctors, or to chemists, or to patients.
Issue
The primary issue before the court was, whether the mark of Medley i.e., “SPOXIN” is deceptively similar to mark of Alkem i.e., “SPUAXIN”.
Judgement
Hon’ble Delhi High court observed that by virtue of registration Medley got the right to exclusively use the mark “SPOXIN” and the right to prevent others from using deceptively similar mark. Further court observed that the marks “SPOXIN” and “SPUAXIN” are deceptively similar and that once the mark is proved “to be identical or deceptively similar, the other factors, viz., the packing being different, number of tablets contained in the competing package is not the same, prices are not identical and/or the goods being sold on doctor’s prescription are altogether irrelevant and immaterial.”
Decision of Single Judge was overruled, as he failed to promptly apply the principles laid out of Apex Court in the case of Cadila Health Care (supra). It was held by court that:
“In our opinion, however, when the test is ”possibility’ of confusion in medicinal preparations, as held by the Supreme Court in Cadila Health Care Ltd., and the Courts have been asked by the Apex Court to take special care, in such cases, since confusion may harm and result in unpleasant consequences, if not disastrous results, the learned Single Judge ought to have granted injunction as prayed by the plaintiffs (Medley).”
As to the issue of discretionary matter it was held that when an adjudication has been made, may be prima facie, and in doing so, correct test has not been applied, it is open to the Appellate Court to interfere with the discretionary order made by the trial Court.
Thus, the appeals were allowed and Alkem’s mark was found to be deceptively similar with the mark of Medley.
By: Dhruv Dangayach, Ramaiah College of Law
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Sep 14, 2018 | General
India is one of the countries where Iodine deficiency is a major cause of concern. According to a survey conducted by the Indian Journal of Medical Research it was found that 263 districts out of 325 that were examined for the survey showed high risk of Iodine Deficiency Disorder which shows the lack of iodine consumption by the people (Pandav et al., 2013, 418-433).
Such deficiency of Iodine in the body can lead to various diseases such as goitre, Hypothyroidism and additional complications like decreased fertility and increased death rate among infants. The lack of iodine consumption by the people shows the lack of awareness among people in rural areas regarding the importance of iodine. In order to combat the problem in India, the Government and various NGOs have started different initiatives at the local and national levels. However, no one comes close to the creativity and effectiveness of the mission launched by the NGO called Grey Singapore which is called ‘The Life Saving Dot’ (Basu, 2015). This article will talk about the idea behind the initiative and its impact on the lives of women in different parts of the country.
CORE INNOVATION
The objective behind launching such an initiative was to help the women in rural parts of India, fight the problem of Iodine deficiency without impacting their daily lifestyle or habits so that they don’t have to invest in any other fancy equipment. These conditions were fulfilled by an ornament. Bindi is widely worn by women in India and the idea of using it as a tool to fight against Iodine deficiency, firstly came to Ali Shabaz who is the Chief Creative Officer of Grey Singapore (Basu, 2015). This was the first initiative of its kind, as never before a traditional ornament was used to fight disease. Grey Singapore saw the potential in the idea and teamed up with “Talwar”, one of the major bindi manufacturers and distributors in India, and also with “Neelvasant Medical Foundation” another NGO, which is widely active in the region of South India, in distribute the bindis to the tribal women, with having the vision of overcoming the Iodine deficiency disease among women. (Basu, 2015).
Manufacturing of such bindis does not require any special machinery and the process of usage is also as simple as placing it on the forehead. Such bindis have a certain amount of iodine in its adhesive roughly around 150-200 micrograms. When a woman wears the bindi some of the iodine which is present in the adhesive, gets absorbed by the skin through the process of dispersion, which takes place through the skin of the person while wearing the bindi (WPP, n.d.). The amount of dispersion of iodine that takes place is around 12% which is around 24 micrograms of iodine a day which will have a significant impact on the health of women.
CONCLUSION
The iodine bindi can be seen as a very effective tool against Iodine deficiency disease. On top of providing various benefits to the user, it has no side effects on the body of women who use them regularly. When it comes to pregnant women, Iodine bindi is safe to use and has no effects on the health of the infants; rather they tend to lower the chances of headache which is common among iodine deficient women during pregnancy.
Iodine bindi has been helping women in rural areas, tremendously in combating iodine deficiency disease, uniquely and creatively. It is one of the very cheap fixes to the iodine deficient diet of rural Indian women. With the advancement of technology its effectiveness and awareness will go up significantly, which can be very helpful to India for eradicating the problem of Iodine deficiency.
Author: Prajal Joshi (2nd Year, BBA-LLB), Symbiosis Law School Hyderabad
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Aug 20, 2018 | Indian Patents Act 1970, IPR & Business
Bayer Corporation, a US based corporation had a patented drug in India under the brand name Nexavar. This landmark judgement became the first case where a compulsory license was issued after India became a signatory to Trade Related Aspects of Intellectual Property Rights [TRIPS] and also to the Doha Declaration in 2001. The Intellectual Property Appellate Board [IPAB] elaborated the grounds and conditions for compulsory licenses. Brief facts of the case are as follows:
- Bayer Corporation, a US based corporation which developed “Sorafenib Tosylate” sold under the patented drug “Nexavar” [Patent Number IN 215758] for curing kidney cancer. The drug relieves the pain and slows down the spread of cancer.
- Compulsory license for Nexavar was granted to Natco Pharmaceuticals Ltd. (hereinafter referred as Natco Pharma).
- On 3rd Mar, 2008, Bayer Corporation was granted a patent in India for “Nexavar”
- On 6th Dec, 2010, Natco Pharma approached Bayer Corporation for grant of voluntary license of the patented drug.
- Bayer Corporation was selling the drugs at Rs 2, 80,428 per month for 30 tablets. Natco Pharma proposed to sell the same drug at Rs 10,000/- per month to make it available at an affordable price in India. Later Bayer Corporation rejected this offer.
- On the other hand, CIPLA Ltd (hereinafter referred as CIPLA), another Indian Pharmaceutical, was already selling the drugs as “Soranib” at Rs 30,000/- for a month later it sold at Rs. 5,400/-. CIPLA didn’t take prior permission or license from Bayer Corporation and hence was undergoing litigation in Delhi High Court for infringement of Bayer Corporation’s Patent.
- On 29th July, 2011, Natco Pharma applied to the controller of Patents for grant of Compulsory License under Section 84(1) (3) of Patent Act, 1970.
- The controller drafted the terms and conditions of the compulsory license and awarded a 6% royalty from profits to Bayer. Then Bayer appealed the Controller’s decision before IPAB.
Issues
The main issues before the Hon’ble Court were:
- Whether the requirements for the grant of compulsory licensing are fulfilled?
- Whether the decision of the controller to grant compulsory license to Natco Pharma with a royalty at 6% of its net sales to Bayer Corporation was valid?
- Whether the supplies by Natco Pharma & CIPLA of the disputed drug have to be taken into account to determine the satisfaction of reasonable requirement test?
Arguments by the parties
By Plaintiff i.e., Bayer Corporation
Bayer Corporation alleged that if the Sorafenib Tosylate drug was already available in the market at affordable prices, then section 84(1) (b) of the Patents Act, 1970 cannot be one of the issues.
- The cost of inventing the drug is high and the corporation has invested a huge amount on research and development.
- Furthermore, they argued that the controller has ignored the mandatory nature of Section 90(1) (i) [7] of the Patent’s Act, 1970, as it has not taken into account the cost of invention incurred while fixing the royalties.
- Bayer contended that the utilization of “sale” along with “import” excluded the term “export” from the meaning of the expression “sale”. Section 84 and Section 92A has used the term “export” expressly. Therefore, the court should not accept Natco Pharma’s contention that an export transaction is covered by sale.
By Respondent i.e., Natco Pharma
The price charged by Bayer Corporation was not an affordable price when compared to purchasing power of the public or to meet the requirements in the market and hence Bayer Corporation contravened the Patent Act.
- They argued that the charitable program i.e., Patient Assistance Program [PAP] of Bayer Corporation is discretionary and conditional. Therefore, cannot be applied for public.
- Furthermore they stated that the IPAB has complied with Section 90 of the Patents Act, 1970 as they enhanced the royalty from 6% to 7%.
Judgement
Court relying on various judgments held that:
“The Hon’ble Supreme Court dismissed the SLP filed by the Bayer Corporation and upheld the decision of Bombay High Court providing compulsory licensing for a life-saving drug named ‘Nexavar’. The High Court judgement relied on the fact that even after taking Cipla’s supplies into consideration, the public prerequisite would not be met and commitment to meet the reasonable requirement of the general public must be of the patent holder alone, either by patentee himself or through his licensees. The charitable program by Bayer Corporation was unaccepted as a defense for Section 84 (1) (b) of the Patent Act, which insists on the fact that the patented drug should be made available to the public at a fairly affordable price i.e. to any portion of the public tendering the price. It was also held that the term “exports” is employed in different contexts in Sections 84, 90 and 92A all of which deal with compulsory licensing. The court observed that when it comes to drugs the sufficient extent test has to be 100% i.e. to the fullest extent. Under Doha declaration the concept of compulsory licensing empowers the government to provide an organization to use the patent technology and the use of patented product even without the real owner’s consent. In the present case, Natco Pharma fulfilled all the conditions for compulsory licensing.”
The judgement strikes a balance between the issues pertaining to public interest and also those made in regard to patentee’s rights. It demonstrates the focus of Indian Pharmaceutical patent law, which indeed pushes towards affordable access to the larger public and the Court’s primary concern is that of public interest.
Hence, the High Court then dismissed the petition of Bayer Corporation.
By: Runjhun Sharma, School of Law, Mody University
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May 7, 2018 | Copyright, Indian Patents Act 1970, IPR & Business
Copyright is a type of Intellectual Property (IP) that gives its owner the exclusive right to make copies of a creative work, usually for a limited time. In India, Copyright Act, 1957 and Copyright Rules 2013 cooperatively deal with the subject of Copyright.
Section 13 of the Copyright Act, 1957 allows Copyright protection for the following works:
- Original literary, dramatic, musical works
- Artistic work including photographs, sculptures, architectural work, painting, drawing, engravings or any such work of artistic craftsmanship;
- Cinematograph films
- Sound recordings
- Software, Computer programs and allied compilations (as part of literary work)
Registration of copyright is not mandatory as copyright is inherent and automatic right. When any of the abovementioned works takes birth, along with it comes copyright into the picture. Therefore, it isn’t mandatory to register copyright. However, registering copyright gives an extra layer of protection to such works. By having an existing record, the evidence of such an existing work is created. This makes legally proving the existence of copyright in a court of law, very easy. Matters of assignment, transfer of ownership, creating an authorized agent etc. is generally made easier when you have a registered copyright. With a registered copyright, the risks involved are less.
Authors have prima facie copyright protection. Section 2(d) of the Act lays down authors of works:
| Literary work |
Author of the work |
| Dramatic work |
Author of the script |
| Musical work |
Composer |
| Artistic work other than photographs |
Artist |
| Photograph |
Photographer |
| Computer-generated literary, musical, dramatic work, artistic work |
Person causing the creation of the work
|
| Cinematograph films |
Producer |
| Sound recording |
Producer |
Other than authors, owners or any authorized agent of the author, or any person/organization with exclusive rights over the work, obtained through a contract, can also enforce the copyright.
Copyright registration process
Chapter X of the Copyright Act, 1957 and Chapter XII of Copyright Rules, 2013 elucidate upon Copyright Registration. Registration involves the procedure of entering the particulars of a work in the Register of Copyrights. Copyright Register has 6 parts to it, each part pertaining to each type of work. The Register is arranged alphabetically, following Indexes and each part is maintained both physically and electronically. The work seeking copyright will be entered into the appropriate part of the Register, if it is deemed worthy of copyright protection.
To register a Copyright, the Registrar of Copyrights should receive an application for the same with prescribed fees. Form-XIV should be used for the Copyright registration application. If changes are to be made to an already existing copyright, then Form XV should be used. After receiving an application, the Registrar of Copyrights will then conduct an inquiry and decide accordingly.
Rule 70 of Copyright Rules 2013 lays down the particulars for Application for Copyright Registration.
- The Application should be made with Application Form (Form XIV), Statement of Particulars (SoP) and Statement of Further Particulars (SoFP).
- The Application is to be signed either by the author or the owner of the work. In case of owners, a NOC duly signed by the author shall be attached along with the application.
- The Application should be filed in the Copyright Office in person, by post or using the online filing facility available on the official website of the Copyright Office. The link for the same is provided here. https://copyright.gov.in/Default.aspx
- The Applicant has a duty to give notice (including such statements, particulars or enclosures used for the application) of making such an application to every person claiming or having an interest in the subject-matter of the copyright or contesting the applicant’s rights over such work.
- An inquiry will be conducted in case any objection is received by the Registrar within a period of 1 month, or if the Registrar is not convinced about the correctness of that application and/or details attached with it.
- An opportunity for a hearing will be given to the Applicant before rejecting the application.
- In case no objection is received within 30 days from the date of receipt of the application and if the Registrar is satisfied with the application and the particulars in it, the same will be entered in the Register.
- The Registration process comes to an end only when the work entered in the Register of Copyrights and the copy of such entry is made, signed and issued by the Registrar, Deputy Registrar or such authorised person. Such a copy will be sent to the concerned parties within a reasonable time.
- Application to register unpublished work shall be accompanied by 2 copies of the work
- Object code and source to be included in case of Computer programs
- In case of registering an artistic work capable of being used as a good, a statement indicating the same, along with a Certificate from the Registrar of Trade Marks proving that there is no registered Trade Mark that is identical or deceptively similar to such artistic work, or that no Trade Mark application for registration has been made by any person other than the applicant.
- For artistic works capable of being a registered Design, applications for copyright registration shall be accompanied by affidavits stating if such an item has been registered under the Designs Act, 2000, if there has been an application of the work to any article under industrial process and if it has been reproduced more than 50 times.
Statement of Particulars (SoP)
Statement of particulars to be attached with Application form shall include the following details:
- Name, Address and Nationality of the Applicant
- Name, address and nationality of the Author. In case the author is deceased, the date of his demise
- Names, address and nationalities of the owners of the various rights comprising the copyright in the work and the extent of rights held by each, together with particulars of assignment and licenses, if any
- Names, addresses and nationalities of other persons, if any, authorized to assign or license the rights comprising the copyright
- Nature of the applicant’s interest in the copyright
- Class, description, title of the work
- Language of the work
- Whether work is Published or Unpublished
- In case of a published work, Year and country of first publication with name, address and nationality of the publishers. Additionally, Years and countries of subsequent publications with details of publishers.
- In case of an “artistic work”, the location of the original work, including name, address and nationality of the person in possession of the work. (Year of completion to be included in the case of an architectural work)
- Certificate from Registrar of Trade Marks for artistic work capable of being used as goods
- For an artistic work that could potentially be registered as a Design, details showing if it has been registered under Designs Act, if it has been applied to any article by an industrial process, and the number of times it has been reproduced.
- Other remarks
- Registration number (entered by Copyright Office).
Statement of further particulars (SoFP)
SoFP is to be included with the application for registering literary (including computer programs and software), dramatic, musical and artistic works only. It contains details such as:
- If the work is original / If work is the translation of a work is available in the public domain, or translation of a copyrighted work / If it is an adaptation of a work in the public domain or of a work in which copyright subsists
- In case the work is a translation or adaptation of a copyrighted work-
(a)Title, Language of the work, (b) Name, address, nationality of the author of the original work and date of death in case of a deceased author (c) Name, address, nationality of the publisher, if any, of the original work (d) Documents proving authorization for a translation or adaptation including the name, address and nationality of the party authorizing.
Fees
Rule 83 of the Copyright Rule, 2013 lays down that Schedule Two contains the specificities of the registration fees.
| Work |
Fee per work |
In case of changes in particulars |
| Literary, Dramatic, Musical or Artistic Work |
Rs. 500 |
Rs. 200 |
| Literary or Artistic work, capable of being used in relation to any goods |
Rs. 2000 |
Rs. 1000 |
| Cinematograph Film |
Rs. 5000 |
Rs. 2000 |
| Sound Recording |
Rs. 2000 |
Rs. 1000 |
Payment of such prescribed fee can be done in various ways. By postal orders or bank drafts issued by a Scheduled Bank under Reserve bank of India Act, 1934, as a deposit into a Government Treasury, through payment gateway provided with the online-filing facility of the Copyright Office Website etc. are some of the ways prescribed under Rule 83.
Few examples of registered copyrights
| Title of the work |
Type of Work |
Issued on |
Applicant |
| To hell with Corona |
Literary/ Dramatic |
5/1/2021 |
Bhanu Arora |
| Andy |
Artistic |
9/12/2020 |
Aum international Studios Pvt. Ltd. |
| Lead Management Distribution Methodology |
Computer Software |
8/6/2019 |
R Varadarajan |
| Bachpan Theher Jaa |
Sound Recording |
6/9/2018 |
Vrinda Parwal |
| Tere Ishq ki Aadat |
Cinematograph film |
30/10/2017 |
Mohd. Farman |
Author: Bhavana B, School of Law, CHRIST (Deemed to be) UNIVERSITY, Bangalore
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