Nayak, an award-winning Bengali language film released in the year 1996, is regarded as one of the finest works of Bharat Ratna winner, Satyajit Ray. This film became the buzz of the IP world, when in a recent judgment, the Hon’ble Delhi High Court ruled on the question of ownership of copyright in the screenplay of the film[1]. The tussle began when HarperCollins Publishers India Private Limited (“Defendant”) published and released a novel titled ‘Nayak: The Hero’ in 2018, written by Bhaskar Chattopadhyay, based on the screenplay of the film, Nayak. It was RDB and Co. HUF’s (“Plaintiff”) case that R. D. Bansal, a famous film producer had, in 1956-66, commissioned Satyajit Ray to write the screenplay for and direct the film Nayak. The Plaintiff claimed that the copyright in the film, along with all indirect derivatives and related rights associated with the film vested in it, the successor in title, since Mr. Bansal had produced the film. In exercise of its alleged rights, the Plaintiff sought an injunction over ‘novelisation of the screenplay’ by the Defendant, on the ground of copyright infringement[2]. On the other hand, the Defendant submitted that since Mr. Ray authored the screenplay of the film, the copyright vested in Mr. Ray. Pursuant to his demise, the rights in the screenplay devolved to Mr. Ray’s son, Mr. Sandip Ray, and the Society for Preservation of Satyajit Ray Archives (“SPSRA”). The Defendant further submitted that they obtained a licence to novelize the screenplay from Mr. Sandip Ray and SPSRA. The question before the court, in this case, was whether a person commissioned by the producer of a film to write the screenplay would hold the copyright in the screenplay, or if it would belong to the producer? Before pondering over this intriguing question, one must bear in mind that under Indian law, the screenplay of a film constitutes an original literary work[3] and is, as such, considered distinct from the film itself[4]. It was, therefore, apparent that the copyright in the film itself vested in the Plaintiff. The seminal question, therefore, is who owns the copyright in the screenplay? Copyright law in India clearly lays down that an author of a work is the first owner of the copyright therein[5]. The dispute, therefore, could not have been on who the author is, since the work, i.e., the screenplay was undisputedly authored by Mr. Ray. The court, therefore, dug deeper into understanding the nature of the working relationship between Mr. Bansal and Mr. Ray during the making of the film, i.e., whether it constituted a “contract of service” or a “contract for service”. The Supreme Court[6], recently, observed that the tests to distinguish between “contract of service” and “contract for service” are no longer linear and requires courts to perform a balancing act between multiple tests of control, remuneration, nature of the contract, etc. A contract of service, for example, is where a producer of a film engages a scriptwriter for valuable consideration to write the script, and therefore retains the copyright in the script. In the Nayak case, however, the court, was of the opinion, that the relationship between Mr. Bansal and Mr. Ray could not qualify as a contract of service[7], since it was a contract between equals, and that at the highest, such a contract would only be a contract for service. This distinction emphasizes that Ray had independent creative control over the screenplay, leading to his ownership of the copyright. Accordingly, the court concluded that the copyright in the screenplay vested in Mr. Ray and subsequently devolved to his rightful heirs. This judgement has undoubtedly disrupted the earlier understanding of contracts of service/ contracts for hire. It is not only the question of the nature of the contract between the parties but also question of creative control that would have to be delved into in detail in deciding the question of ownership of copyright. In the interim, producers may have to enter into copyright assignment agreements, in addition to their work for hire agreements with their script writers. This landmark judgement serves as a reminder that copyright in underlying works do not go unrecognized and that each contribution to a film is recognized as a separate work worthy of copyright protection. [1] RDB and Co. HUF v. HarperCollins Publishers India Private Limited, CS (COMM) 246 of 2021, Judgement dt. May 23, 2023 [2] Section 51 of the Copyright Act, 1957 [3] Section 2(h) of the Copyright Act, 1957 [4] Sections 13(1) and 13(4) of the Copyright Act, 1957 [5] Section 17 of the Copyright Act, 1957 [6] Sushilaben Indravadan Gandhi v. New Assurance Co. Ltd., (2021) 7 SCC 151 [7] Section 17(3)(c) of the Copyright Act, 1957

The question about the distinctiveness of laudatory trade marks is a recurring one in Indian trade mark jurisprudence. It has been debated whether a laudatory mark will be considered as descriptive or suggestive in nature for the purpose of registration in India. This blog post seeks to analyze the changing strength of a laudatory mark on the spectrum of distinctiveness through judicial interpretation. While the Trade Marks Act, 1999 (“Act”) does not define what “descriptive” marks are, the term finds its roots in Section 9(1)(b) of Act which states that “trade marks which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service, shall not be registered”. A plain reading of this section would suggest that descriptive marks are those which designate to the consumers, any characteristics of the goods and/or services offered under such marks. Unlike descriptive marks, suggestive marks do not directly describe the goods/services offered under such marks. Rather, consumers have to go through a series of mental steps in order to decipher the exact nature of the goods/services offered under such marks. Laudatory marks are those that praise the quality or characteristics of the goods/services being offered. Laudatory terms, i.e., those expressing praise and commendation, such as ROYAL, GREAT, SUPER, MAJESTIC, etc. are prima facieconsidered indistinctive in nature and are not registrable in a standalone manner, without proof of acquired distinctiveness. However, in various instances, the Trade Marks Registry has granted registrations to laudatory marks and even Courts have recognized that such marks are capable of functioning as source identifiers if such marks are suggestive of the quality of goods/services offered under such marks, rather than having a direct reference to such goods/services. One of the most prominent cases in trade mark jurisprudence with reference to laudatory marks is that of Mohd. Rafiq and Anr. v. Modi Sugar Mills Ltd[1]. In this case, the Hon’ble Delhi High Court dismissed an appeal filed by the appellants, Mohd. Rafiq and Mohd. Shafiq, to expunge the mark “SUN” in respect of lanterns and globes for lamps on the ground that the mark “SUN” is not distinctive. The Court, while doing so, noted that reference to the character and quality (of the goods) should be direct and plain, and not remote and far-fetched. Applying this interpretation to the present case, the court held that the word SUN does not refer to the character or quality of the lanterns, and stated that, “Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise, and not one out of which an inference of praise has to be spelt out by a laboured process.” One of the recent cases that discussed the parameter to judge whether a laudatory mark is descriptive or suggestive is the case of LT Overseas North America Inc. & Anr. v. KRBL Limited[2]. In this case, a single judge bench of the Hon’ble Delhi High Court discussed two tests formulated by McCarthy, namely, ‘The Imagination Test’ and ‘The Competitors’ Need Test’, to determine if the word ROYAL in relation to rice is descriptive or suggestive and if the plaintiff, LT Overseas North America Inc., can claim rights over the word ROYAL in relation to rice. According to the court, as per the first test, a consumer will not easily connect the word ROYAL with rice and would require “imagination” to make such a connection. Further, as per the second test, the word ROYAL is not essential to be used by “competitors” to describe rice. Therefore, while the court acknowledged that the word ROYAL is laudatory in nature per se, based on the two tests formulated by McCarthy on ‘Trade Marks and Unfair Competition’, it found the word ROYAL to be, at best, suggestive of rice, but not descriptive. Additionally, the court observed that, whether a word is used in a laudatory sense would also depend on how the term is being used on the product packaging. If a term is used prominently on the infringing product, the defendant cannot take the defence of the term being used in a merely laudatory sense, but if it is used in a less prominent manner, such usage shall be laudatory in nature. Another issue surrounding laudatory marks is that, while marks containing laudatory terms can be registered, they are still available for public use, and proprietors find it difficult to enforce their rights against any third-party use of such laudatory terms in a composite mark. One such case was, Soothe Healthcare Private Limited v. Dabur India Limited[3], in which the Division Bench of the Hon’ble Delhi High Court shed light on the publici juris nature of laudatory terms even though such terms form part of a registered trade mark, and laid down the distinction between “descriptive similarity” and “deceptive similarity”. It was the case of the plaintiff, Soothe Healthcare Pvt Ltd., that Dabur’s adoption and use of the mark SUPER PANTS in relation to diapers infringes upon the plaintiff’s statutory rights in its SUPER-formative registered marks. The Division Bench analysed the rival marks and packaging of the rival products and noted that the only common word in both the marks i.e., SUPER is descriptive and laudatory in nature, and commonly used by various manufacturers in similar lines of business. This case illustrates that, while it may not be difficult to obtain registration over marks containing a laudatory term, enforcing such laudatory terms against third parties is not as easy as it may seem. In conclusion, courts have offered helpful parameters to identify whether laudatory marks are descriptive or suggestive in nature keeping in view the surrounding facts of the case. However, there is still no set criteria defined under the Act or by the courts to identify the strength of laudatory terms as trade marks. In LT Overseas (Supra), the court had

Updated: May 19, 2023 Recently, the doctrine of prosecution history estoppel, which finds its roots in patent infringement proceedings, has been seeing frequent application in trade mark infringement proceedings as well. While estoppel does not find reference in the trade mark statute, the Indian Evidence Act, 1872 defines estoppel as “when one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing”[1]. This doctrine, which often serves as a strong arrow in a litigant’s quiver of arguments, is based on the premise that parties cannot take a stance which is completely contrary to their submissions as regards the same trade marks made in earlier proceedings. As such, an understanding of the numerous ways in which courts have been applying this doctrine becomes essential in order to ensure that trade mark rights are not sacrificed based on frivolous submissions. In SK Sachdeva & Anr. v. Shri Educare Limited & Anr.[2], the respondents/plaintiffs had filed a suit against the appellants/defendants alleging infringement of its earlier mark, SHRI RAM. The appellants/defendants preferred an appeal against the interim injunction granted by the single judge of the Delhi High Court on the ground that the respondents/plaintiffs are estopped from enforcing their rights in the mark SHRI RAM owing to its submissions at the Trade Marks Registry (“Registry”). As per the appellants/defendants, the respondents/plaintiffs had, in their response to the Examination Report issued in relation to their trade mark application for the mark SHRI RAM EDUCARE, in which the Registry had cited several SHRI RAM marks, categorically stated that SHRI RAM, being the name of a Hindu deity, could not be monopolized by one party and was common to trade. Thereafter, the respondents/plaintiffs withdrew this reply ahead of filing the instant suit and did not disclose these material facts to the court. The Division Bench of the Delhi High Court, taking into consideration, the respondents/plaintiffs’ submissions at the Registry and misconduct in withdrawing the reply and concealing material facts from the court, held that the respondents/plaintiffs were now estopped from making submissions contrary to their stance before the Registry, and vacated the injunction. In the recent landmark case of Raman Kwatra & Anr. v. M/s KEI Industries Ltd.[3], the Division Bench of the Delhi High Court set aside an injunction on the ground that the plaintiff/respondent had made an assertion in its reply to the Examination Report issued in relation its KEI Device mark, that it is dissimilar to the defendant/appellant’s mark KEI which was cited in the report as a pre-existing mark. Therefore, the court was of the opinion that, the plaintiff/respondent is not entitled to obtain an interim injunction against the proprietor of the cited mark, on a completely contrary ground that the marks are deceptively similar. The Division Bench set aside the injunction holding that “statements made ‘without prejudice’ and to reserve rights to avail legal remedies before the Trade Marks Registry do not entitle a party to make a contrary assertion in Court.” Further, in M/s Lightbook & Anr. v. Pravin Shriram Kadam & Ors.[4], the Delhi High Court held that a plaintiff cannot, at the prima facie stage, escape the consequences of submissions made in other proceedings. The defendant, in this case, had filed a petition for rectification of the plaintiff’s registration for the mark LIGHTBOOK at the Registry, on the basis of its prior rights in the mark LIGHTBOOK. The court observed that, the plaintiff had, in its counter statement to the rectification petition, not only asserted that there is no possibility of confusion between the rival marks, but also that there did not exist any such confusion in the market. Accordingly, the plaintiff was estopped from taking a contrary stand, and did not grant an interim injunction. Further, the court opined that omission on part of the plaintiff to place this reply on record ipso facto disentitled the plaintiff to claim any relief at the interim stage. From a review of the above cases, it is clear that courts are using the broadest possible interpretation of the doctrine of estoppel while applying it to trade mark infringement suits. For instance, even in cases where the plaintiff has not made any submissions as regards the defendant’s marks, the plaintiff’s arguments in relation to identical/similar marks have also been deemed to constitute estoppel. It is imperative, therefore, that while drafting pleadings, be it responses to Examination Reports, Notices of Opposition, Replications, etc., careful and considered arguments have to made, keeping in mind the long-term implications of the stances taken and not just short-term results. Overall, the active use of this doctrine in trade mark infringement proceedings has laid a path to conscious and well-thought out filings at the prosecution level. The doctrine not only holds a person accountable for any frivolous claims or false representations made by them, but also ensures that relevant documents are placed on record in every proceeding. This will, in the long run, help reduce frivolous filings both at the Registry and in courts. [1] Section 115, Indian Evidence Act, 1872, accessible at https://www.indiacode.nic.in/show-data?actid=AC_CEN_3_20_00034_187201_1523268871700&sectionId=38986&sectionno=115&orderno=133 [2] FAO(OS) 531/2014 & CM Nos. 20873/2014, 4500/2015 & 14112/2015. [3] FAO(OS)(COMM) 172/2022 [4] CS(COMM) 56/2022.

Any talk about cosmetics is incomplete without a discussion about their side effects on the human body. The concern about safety is embedded in cosmetics since they come in direct contact with the human skin. Consumers tend to use, and swear by, tried and tested products that are safe to use for their body and have gained popularity due to their quality. The Drugs and Cosmetics Act, 1940 defines “cosmetic” as “any article intended to be rubbed, poured, sprinkled or sprayed on, or introduced into, or otherwise applied to, the human body or any part thereof for cleansing, beautifying, promoting attractiveness, or altering the appearance, and includes any article intended for use as a component of cosmetic.“[1] Given this broad definition, besides makeup, products such as shampoos, soaps, cleansers, toners, moisturizers, conditioners, etc. also fall within the scope of the term. Since all cosmetic products essentially come in contact with the human body, brand conscious consumers are naturally over-cautious about the kind of products they use for their skin and hair, and are always on a look-out for reliable brands that give them the assurance of complying with quality standards, rather than just serving the purpose of beauty enhancement or cleansing. The need for building consumer confidence in cosmetics is, therefore, an aspect that brand owners cannot overlook. In order to preserve the goodwill and reputation in a brand and to prevent its dilution, it becomes imperative to delve into the protection of IP rights of cosmetics brand owners. The cosmetic industry spends significant sums of money in research, development and formulating products. The most common IPRs in the field of cosmetics are patents, trademarks and trade secrets. The “beauty secret”, as we usually call it, is indeed a trade secret that cosmetic brand owners should secure and safeguard at all costs. Trademark registrations are considered one of the most effective ways of protecting a brand’s identity and ensuring that customers looking for a particular product know exactly where they must go. Besides the source of origin, trademarks embody consumers’ expectations, and, often, compel consumers to stay loyal to their preferred brand. Patenting is another step taken by the cosmetics brand owners to prevent other commercial entities and individuals from creating counterfeit or low-quality cosmetic products which are sold at cheaper rates. It is believed that one of the first cosmetic patents, which was awarded for a deodorant in the United States, dates back to the year 1888. Following this, in 1907, L’Oréal, one of the leading companies in the beauty & cosmetics space, got its first one-of-a-kind invention of a lead-free and effective hair dye patented (French Patent No. 383 920). The trend continued with L’Oréal recently launching a new beauty tech innovation product, named “Perso”, a smart home device that can be installed on any smartphone, and enables its consumers to create their own personalized lipsticks. Needless to say, L’Oréal’s AI based app, Perso, works with the help of a patented motorized system[2]. While genuine products of established and reliable brands leave no stone unturned to comply with the prescribed quality standards, counterfeit products not only lack the desired quality and fail to meet the required standards, but are also extremely dangerous for human skin. Cropping up of counterfeits in the market not only leads to financial losses to genuine brand owners, but also takes a hit on a products’ goodwill and reputation. Therefore, the need to enforce IP rights against counterfeiters and infringers is all the more important. It is widely known that Indian courts take infringements in the pharmaceutical industry extremely seriously. Likewise, the cosmetics industry, if not regulated or monitored carefully, can adversely impact human health and body. With the rise in the number of counterfeit and infringing products in the cosmetics marketplace, the toxic ingredients and chemical formulae used in unauthorized products that have not undergone the mandated testing procedures, can have far reaching effects on human health. The Drugs and Cosmetics Act regulates the import, manufacture and distribution as well as labelling and packaging of drugs and cosmetics in India. In 2018, the Drug Controller General of India issued notices to popular e-commerce websites for selling/offering for sale adulterated, unregulated, spurious, unlicensed and illegally imported cosmetics, that were being sold without evaluating their safety and quality, and were, thereby, not fit for human application. Although the e-commerce websites could take the defence of being ‘intermediaries’ under the Information Technology Act, 2000, the Delhi High Court, in the 2018 case of L’oreal v. Brandworld & Anr. [CS(COMM) 980/2016] concerning the sale of counterfeit L’OREAL products through the e-commerce platform, ShopClues, denied such intermediary protection to ShopClues. The court observed that, since ShopClues guaranteed that all the products sold through its website are “100% genuine”, and also added a separate category to report replicas on its website, ShopClues did not qualify for the exemption of being an intermediary. As per the Drugs and Cosmetics Rules 1945, all cosmetic products which are imported for sale in India have to be mandatorily registered with Central Drugs Standard Control Organization which has been appointed as the licensing authority. The purpose of this requirement is to regulate irregular/indiscriminate import of cosmetics by traders with no accountability for their content, no mechanism to cater to customers who are dissatisfied with the quality of these counterfeit products and to check the sale of sub-standard cosmetics in India. Despite this, however, the Indian regulatory framework with respect to cosmetics has major loopholes, thereby making the process of approval of cosmetic products cumbersome and time consuming. This essentially results in cosmetics being marketed illegally. The importance of IP protection and enforcement in the cosmetics industry cannot be underplayed. With the market size of the cosmetics industry being in billions, the cosmetics brands need to be more vigilant than ever in protecting their IP and reputation. [1] Section 3 [(aaa)] of the Drugs and Cosmetics Act, 1940 [2] https://www.loreal.com/en/news/research-innovation/unveil-perso-the-worlds-first-aipowered-device-for-skincare-and-cosmetics/#:~:text=How%20Perso%20works,photo%20with%20their%20smartphone%20camera.

Trade secrets are information about a trade or business that is known only to a small number of people and has an economic value. They can take the shape of a formula, technical know-how, or a unique business approach, recipes, processes, software codes, customer lists, supply channels, or financial data. Trade secrets are information that can cause harm if exposed to a competitor. They can include technical data such as blueprints, computer programs, manufacturing process data, and commercial specifics such as client databases, advertising tactics, and delivery systems. Trade secrets are tools which support and incentivize the innovation of a business, lay a foundation for contracts, such as the Non-Disclosure Agreements (NDA) and employment contracts and protect the market strategies of a business. Misappropriation of Trade secrets happens when it is obtained through the abuse of confidential information or improper means of accession. Trade secrets have become an important Intellectual Property (IP) for businesses in gaining competitive advantage. Today, businesses are increasingly seeking the worldwide market, and trade secret protection is an important aspect in strategizing such expansion. Additionally, firms have gone digital and are investing in Research & Development to incorporate AI into regular business processes. With these developments in mind, we try to decipher the legal position of trade secret protection in India, examine whether the existing legal position is well equipped to protect Trade secrets and/or remedy their breach, and determine whether there is a need for a harmonized law across jurisdictions to protect Trade secrets. Existing Legal Position: Trade-Related Aspects of Intellectual Property Rights (TRIPS)[1], which came into force in 1995 to establish minimum standards for the regulation of IP by national governments, also laid down the foundation of the Trade Secret which protects ‘undisclosed information’[2] against unfair competition. The United States of America was the first country to codify trade secret protection under the Uniform Trade Secret Act, 1979 (UTSA)[3]. UTSA is relevant to this discussion because the provisions of trade secret protection under TRIPS are borrowed from UTSA. For instance, UTSA defines trade secret as information that derives independent economic value from not being known to other people and is the subject of reasonable efforts to maintain its secrecy. Likewise, Article 39 of TRIPS requires that such information is secret, has commercial value, and reasonable steps have been taken to keep it a secret. UTSA also defined improper means and misappropriation in the context of trade secret protection and offers remedies such as injunctive relief and damages in case of any misappropriation of Trade Secret. Now coming to India, while India has joined TRIPS on 1st January 1995, but is yet to have a codified law on Trade Secret which is until now governed by provisions laid down under the Contract Act, 1872, through legally binding Non-Disclosure Agreements to prevent any disclosure of confidential information, through contractual obligation. The closest India came to codify Trade Secret protection was when the Draft National Innovation Bill, 2008, was proposed, however, it has been more than 14 years, but we have no real progress in this domain. Trade secrets are more or less contractual in nature. Judicial Pronouncements: Considering the murky nature of laws surrounding trade secret, it is imperative to lay our focus on the judicial pronouncements surrounding Trade Secret Law both in world as well as India. In early America, legal precedents were already being made with regards to Trade secrets. In the 1837 case of Vickery vs Welch[4] the court held the defendant responsible for breach of contract and misappropriation of Trade secrets. Welch was a chocolatier who had perfected a method for making chocolate but decided to pass on his knowledge to others. Vickery objected, believing he had paid for the exclusive right to use Welch’s secret practices. The court found for Vickery, ruling that Welch had breached the sales contract and defeated the purpose of the deal by not maintaining the secret of his methods. With respect to Confidentiality of Trade Secret both foreign jurisdictions and India have made major strides. The Delhi High Court, in the case of John Richard Brady v. Chemical Process Equipments Private Limited[5], relied on the case of Saltman Engineering Company Limited v. Campbell Engineering Company Limited[6] and held that the law on this subject does not depend on any implied contract, but rather on the broad principles of equity that who has received information in confidence shall not take unfair advantage of it. The court found it in the interest of justice to restrain the defendants from abusing the know-how, specifications, drawings and other technical information regarding the plaintiff’s machine, which was entrusted to them under express condition of strict confidentiality. Fairfest Ltd vs ITE Group Plc & Ors[7] discussed the importance of executing an NDA. The petitioner, a company engaged in the business of organizing travel shows, entered into an NDA for a period of six months with the respondent in anticipation of entering into a Joint Venturing Agreement at a later date. The respondent was supposed to maintain the confidentiality of the information received by him for two years after the termination of the NDA. The High Court, enforcing the secrecy clause in the NDA, held that all this information was Trade secrets and passed an injunction restraining the respondent from sharing any information protected under the Agreement. Trade secrets, like any other form of IP, requires such information to be unique and novel to statutorily protected. On this the most recent US District Court case of CODA DEVELOPMENT vs GOODYEAR TIRE & RUBBER COMPANY and ROBERT BENEDICT[8] becomes relevant. US District Court, in this case, reversed the Jury Verdict which initially concluded that Goodyear willfully and maliciously misappropriated five out of twelve Trade secrets. The Court noted that four of the five Trade secrets were too vague to be protected and the fifth was “no secret at all” because the concept was not new in 2009. Recent Development Surrounding Trade secrets: The most important details in this domain are the importance of

After the launch of Chat GPT[1], an Artificial Intelligence (“AI”) chatbot developed by OpenAI, that generates responses based on the algorithms and data inputs, the discussion over copyright protection of AI generated work has stirred up again. The most prominent bottleneck in copyright protection of such work around the world is that copyright law requires such works to be of human authorship by sufficient human input to sustain a claim of copyright over the work. While India is no alien to this criterion, the Parliamentary Standing Committee (“Committee”) had, in its Report No. 161 titled “Review of the Intellectual Property Rights Regime in India” recommended review of the Copyright Act, 1957 (“Copyright Act”) to expand to scope of authorship in AI-generated works[2]. Through this blogpost, we try to decipher the legal position of copyright protection in the United States and in India, and examine whether the existing Copyright Act is well equipped to facilitate authorship. For any work to be accorded copyright protection, it must meet few essential criteria. Firstly, the work must be a work of human authorship, the work must be an independent creation and must be original. The Copyright Office could refuse to register the works that have been generated with the use of an AI tool on the ground that it lacks sufficient creative input and human authorship necessary to support a copyright claim. Hence, the issue of copyright protection of AI-generated content has two facets. Firstly, whether an AI can be named as the author; and secondly, whether such AI-generated content has sufficient creative inputs to meet the criteria of being a fruit of human labour. It was along the lines of the first criteria that the Copyright Review Board of the United States Copyright Office refused to register copyright in the work ‘A Recent Entrance to Paradise’[3], in the name of DABUS, an A.I. system developed by Stephen Thaler. The said copyright application was filed in the year 2018 by DABUS as an author claiming that the work was independently created by the AI. The copyright office refused the application on the grounds that “it lacks the human authorship necessary to support a copyright claim.” On the second criteria, protection would largely depend on human contribution in the AI-generated work. It was along these lines that the United States Copyright Office had revoked copyright protection granted to a book titled Zarya of the Dawn[4] which incorporated AI generated artwork. Since the artworks were not product of human authorship and were not disclaimed in the book, the US Copyright Office proceeded to cancel the registration with the intention of issuing fresh certificate covering only the expressive materials. Development in India On the first criteria, Indian courts remain silent on the legal position with respect to the ownership of AI generated content and this complex legal issue is yet to be tested in courts. However, there is one instance that caught major attention and gave a ray of hope to the those who wish to be AI registrants. Ankit Sahani, who owned Raghav, an AI based Painting App, filed two copyrights application for the AI generated artwork, Suryast. The first copyright application for registration was filed in the name of Raghav, which was outrightly rejected by the copyright registry. The other application for registration was filed in the name of Mr. Sahani, with Raghav as the co-author. While the second Suryastapplication was registered, the Copyright Office, subsequently, raised objections and sought to cancel the registration. Since the work is part of a parallel proceeding in the United States, the objections raised by the Copyright Office as well as the reply to the objections remains confidential. It is likely that such objections were raised owing to Indian copyright law only identifying human beings as being capable of being authors of works. Challenges to the grant of copyright ownership to AI. Granting authorship right to an AI in an AI-generated work is not as straight forward as it seems, and it might have largescale implication. For instance, if AI is granted authorship rights in an AI-generated work and there is copyright infringement of such work or such work infringes on the already existing copyrighted work, in such a scenario, neither the AI can enforce its copyrighted work against potential infringement nor can the AI be sued for potentially infringing an already existing copyrighted work. This is because AI is neither a juristic nor a natural person and cannot be sued. Hence, before the issue to affording authorship right to AI is addressed, the legislation must decide on the legal status of AI. Moreover, under Indian law, in the case of original literary, dramatic, musical, and artistic works the 60-year protection period is counted from the year following the death of the author. If the AI is granted authorship over such work, the whole rationale behind the time period of protection under the copyright law loses its applicability since AI has a perpetual existence. Conclusion Hence, the grant of copyright registration in the name of an AI doesn’t seem a practical and plausible step so far. A solid and comprehensive reform needs to be made in copyright law before AI can be granted copyright ownership. Such amendments in the copyright law must cover all the aspects leaving no loophole and as such appreciating the spirit of copyright law in general. [1]https://www.theguardian.com/technology/2022/dec/05/what-is-ai-chatbot-phenomenon-chatgpt-and-could-it-replace-humans [2] Review of the Intellectual Property Rights Regime in India, Report No. 161 [3] SR # 1-7100387071, available at https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf e [4] Zarya of the Dawn (Registration # VAu001480196)

On September 23, 2022, when Koch Engineered Solutions LLC (“Koch”), through our firm, attempted to file four (4) National Phase applications in India, the official e-filing portal of the Indian Patent Office (“IPO”) did not accept the applications. This was unexpected for two reasons: one, it was not in line with the extension allowed by the Supreme Court of India in view of the COVID-19 pandemic vide order dated January 10, 2022 excluding the period from March 15, 2020 till February 28, 2022 while computing the limitation period and the balance period of limitation remaining as on October 3, 2021, if any, shall become available with effect from March 1, 2022 and the IPO’s own public notice dated January 18, 2022, giving effect to the order; and second, merely six days ago, on September 17, 2022 also after the expiration of the mandatory thirty-one (31) month period, when Koch had attempted filing to check if allowed, the e-filing portal was found open. However, attempts to file the applications through the e-filing portal of the IPO failed. Attempts to convince the Patent Office that the filings should be allowed also failed. Ultimately, we filed petitions to request extensions. However, the Patent Office did not act on these petitions. Koch approached the Hon’ble Delhi High Court (“DHC”) invoking its writ jurisdiction under Articles 226 and 227 of the Constitution of India, 1950 praying that a writ of mandamus or other similar or appropriate writ, or direction be issued, directing the IPO to (i) re-open the e-filing portal for filing the PCT National Phase applications, (ii) implement the order of the Supreme Court; and (iii) consider the petitions filed, and issue necessary orders in respect thereof. [Koch Engineered Solutions LLC v. CGPDTM W.P.(C.)-IPD Nos. 28/2022 – 31/2022] The matter was first listed before Hon’ble Justice Ms. Jyoti Singh for hearing on November 2, 2022. In addition to narrating the fact situation of the instant case, Koch pertinently cited the order of the DHC, dated March 21, 2022, in Dr. Reddy’s Laboratories Limited & Ors. v. Controller General of Patents, Designs, and Trademarks & Anr. in which the petitioner was allowed the benefit of the order of the Supreme Court of India, albeit in a trademark opposition proceeding, in a similarly placed fact-situation. The Hon’ble judge saw merit in Koch’s writs, and directed the IPO to furnish their response by way of an affidavit that should, inter alia, set out the IPO’s stance in the matter and the next steps proposed by it in light of the Supreme Court’s order. The Hon’ble judge listed the matters for further hearing on December 5, 2022. Interestingly, on November 29, 2022, a mere five days before the next date of hearing, the firm was contacted by the IT team of the IPO, who confirmed that it was opening the e-filing portal for all the four (4) National Phase applications. On November 30, 2022, the firm, on behalf of Koch, immediately filed all four National Phase applications. At the hearing on December 5, 2022, before Hon’ble Justice Amit Bansal, the firm, on behalf of Koch, apprised the judge of the filings. Accordingly, the Hon’ble judge disposed-off Koch’s writ petitions. It may, however, not be an exaggeration to state that, in all probability, the IPO preferred allowing Koch to file four of their patent applications beyond the statutory deadline, rather than wait for the Hon’ble court to pass a blanket direction in all similarly placed patent cases. We believe that the latter scenario would have opened flood-gates for innumerable requests for extension in timelines, making it a logistical nightmare and an embarrassment for them. While a blanket order from the DHC would have been a welcome development, the order paves the way for similarity placed parties to approach the DHC or any other court to obtain relief.

Updated: Nov 14, 2022 In the post covid era, the ‘Metaverse’ has become one of the most hotly discussed technological advancements globally. More and more brands are choosing to launch their products and advertise them virtually through the Metaverse in an attempt to reach out to a younger tech savvy consumer base. While scepticism still surrounds the idea of the Metaverse, the race to secure intellectual property rights in the Metaverse is in full throttle. It would not be an exaggeration to say that, in a few years, the way we protect and enforce intellectual property rights may be shaped by the Metaverse. What exactly is the Metaverse? In short, the Metaverse is a combination of virtual reality and augmented reality, that uses blockchain technology and digital media concepts, resulting in a 3D virtual world that enables building social connections, and mimics user interaction in the real world[1]. Indian stakeholders are not far behind in the race to secure trade mark rights for their brands in the Metaverse. A review of the Indian Trade Marks Registry’s (“Registry”) online database reveals that several parties have already obtained statutory rights on the standalone term ‘METAVERSE’ in several classes[2]. Further, several METAVERSE-formative marks and designs that feature the word METAVERSE have been registered[3] across classes. In addition to these, there are various applications for METAVERSE-formative marks that are in different stages of prosecution. It, therefore, appears that parties in India are racing to gain statutory rights for the term METAVERSE and METAVERSE-formative marks for any and all goods and services. Surprisingly, the Registry has been granting such registrations without giving due consideration to Section 9(1)(c) of the Trade Marks Act, 1999, which states as follows: “The trade marks…which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered…” Under this section, if a trade mark consists of words which have become customary in current language, it shall not be granted registration. Given that the Metaverse has taken the world by storm, and is a concept akin to Non-Fungible Tokens, Block Chain, Cryptocurrency, etc., it is unclear as to why registrations for the very identifier of a concept are being granted in the first place. Another interesting point to note is that India is yet to see any trade mark applications where the description of goods/services itself contains the term ‘Metaverse’. Such filings would ensure protection of trade marks for use in the Metaverse, more specifically. So far, over ten jurisdictions around the world have granted registrations for marks where the specification of goods/services contain the term ‘Metaverse’[4]. Recently, however, a slew of applications by various entities were filed in relation to goods and services that are intended to be associated with, and used in, the Metaverse. For instance, one of the first Metaverse related registrations in India, covers “data processing equipment and computers, computer programs, downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds” in Class 9.[5] While some brands have now filed applications on the basis of various elements related to the Metaverse, a large number of businesses are uncertain as to how to categorize their Metaverse related goods and services under the NICE Classification. There is a fine line between categorizing goods/services as those in the real world vis-à-vis the Metaverse. While courts in India are yet to opine on this question, the European Union Intellectual Property Office (“EUIPO”), for instance, upon noticing the increasing number of filings related to the Metaverse, has provided practice tips on how to classify goods/services while filings such applications. For example, the EUIPO notes that “…the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g., downloadable virtual goods, namely, virtual clothing).”[6] Sophisticated and precise categorization of goods/services may become the deciding factor in determining rights of parties in the Metaverse in trade mark disputes in the future. Therefore, it is imperative that applicants have clarity on the elements and economics of the Metaverse and what constitutes virtual goods and services before filing trade mark applications to protect their rights. Besides seeking statutory rights to protect their trade marks, several Indian businesses have also actively used their marks in the Metaverse[7]. For instance, the film industry has seen promotion of movies like Radhe Shyam[8] and KGF[9]through the Metaverse. Similarly, popular FMCG brands, like TATA Tea[10] and McCain Foods,[11] have organized festivities in the Metaverse, which were used as marketing tools to promote their upcoming products to a tech savvy generation of consumers. Such use has led to the expansion of the realm of common law rights into the Metaverse. While courts in India are yet to analyse questions regarding trade mark rights in the Metaverse, there have been instances where some elements of the Metaverse, such as blockchain and cryptography, have been discussed basis Indian trade marks law[12]. Along with this, the Hon’ble Supreme Court’s observation that passing off is to be judged not merely from the existing users of the competing parties, but also from a futuristic perspective[13], reflects the court’s recognition of the marketplace being a dynamic and ever changing field. Naturally then, enforcement of trade mark rights will also evolve with time in relation to the Metaverse. Even though the Indian stance on the Metaverse is still in its initial stages of development, businesses are clearly trying to embrace the global trend. Given the rising interest of Indian business in expanding into the Metaverse, a detailed framework will be necessary in the near future to navigate protection of trade mark rights in the Metaverse, and avoid disputes. [1] See: https://economictimes.indiatimes.com/markets/cryptocurrency/how-the-metaverse-future-may-look-like-in-2030/articleshow/91175337.cms [2] Registration Nos. 5274786, 5070152, 5070154, 5200085, 5143274, 5070178, 5070193, 5200080, 5200084 and 5200079. [3] See, for example, Registration Nos. 5258386 and 5291841. [4]https://branddb.wipo.int/branddb/en/?q={“searches”:[{“te”:”metaverse”,”fi”:”GS_ALL”,”df”:”GS”}],”filters”:[{“fi”:”STATUS”,”te”:”ACT”,”co”:”OR”}]} [5] Registration No.

Ever since the outbreak of COVID-19 pandemic, talks had been ongoing among Members of the World Trade Organization (WTO) to formulate a comprehensive multilateral response to COVID-19 which takes into account the “exceptional” character of the crisis. The 12th Ministerial Conference (“MC12”) that took place from 12th to 17th June, 2022 at the WTO headquarters in Geneva proved to be a watershed moment in the history of multilateral trade regime for intellectual property rights. The WTO Members finally adopted a declaration[1], also known as the “MC12 Declaration” where the Members agreed on a partial patent waiver for COVID-19 vaccines, albeit only for the developing country Members. As a result, the governments of developing country Members can now compel Covid vaccine patent holders to share their vaccine recipes under the MC12 Declaration for the next five (5) years, subject to extension if the need is felt. The Members have also agreed to increase the scope of waiver to COVID-19 diagnostics and therapeutics, in addition to patents, after a period of six (6) months, if need be. This declaration came as a result of the proposal for a temporary waiver of several provisions of the TRIPS Agreement initially tabled by India and South Africa on October 2, 2020 (IP/C/W/669) to address the prevention, containment and treatment of COVID-19.[2] The initial proposal sought to enable Members not to grant or enforce patents (Section 5, TRIPS) or other IP obligations on copyright (Section 1, TRIPS), industrial designs (Section 4, TRIPS) and the protection of undisclosed information or trade secrets (Section 7, TRIPS). This initial proposal, however, did not provide any specific duration for which it was to remain in force but merely stated that it would continue till the time widespread global vaccination was achieved and the majority of the world’s population had developed immunity. This joint proposal was ambitiously tabled with a view of recalibrating the TRIPS architecture to effectively respond to the COVID-19 pandemic. India and South Africa, being the proposing Members, were appreciative of the fact that merely waiving the patents on COVID vaccines, which were still in the nascent stages of development at that time, would not cut the ice. Rather, other medical and pharmaceutical products and equipment viz. diagnostics kits, medical masks, protective equipment, ventilators, medicines, etc. needed to be readily accessible at affordable prices to nations around the world for any such declaration to have a tangible effect. The initial proposal for TRIPS waiver did not find many suitors among the western and other developed nations. The European Union, in fact, in October 2020, went to the extent of asserting that there was “no indication that IPR issues had been a genuine barrier in relation to COVID-19 related medicines and technologies” and staunchly opposed the idea of any such waiver.[3] By May 2021, when many countries in the world had already faced at least two devastating COVID-19 waves and were in a desperate need of procuring vaccines, the WTO COVID-19 TRIPS waiver proposal had amassed 62 official co-sponsors, who issued a revised proposal on May 25, 2021.[4] This revised proposal also went through several revisions. After continual amendments and a number of alternate proposals tabled by various nations, the WTO Members finally arrived at a common ground with the MC12 Declaration. Clause 1 of the MC12 Declaration empowers ‘eligible Members’, i.e., Members from the developing countries, to limit the patent owner’s rights under Article 28.1 of the TRIPS Agreement (which enumerates the exclusive rights of a valid patent holder) by authorizing the use of the subject matter of a patent required for production and supply of COVID-19 vaccines without the right holder’s prior consent. This use, however, must be in accordance with Article 31 of the TRIPS Agreement (which contains provisions that the member nations shall be mindful of while incorporating Compulsory License provisions into their domestic legislations). Pertinently, developing country Members which have existing manufacturing capacity for COVID-19 vaccines are encouraged not to avail these relaxations/ waivers. Clause 3 of the declaration further provides some considerable relaxations. For instance, it does away with the requirement of an eligible member/ proposed user having to make efforts to obtain authorization from the patent holder. Pertinently, pre the MC12 Declaration, the eligible Members would have had to ensure that the vaccines manufactured as a result of the patent vaccine waiver were “predominantly for the supply of the domestic market” of the authorizing member. Post this declaration, however, the eligible Members will now be able to export any proportion of such vaccines to other eligible member countries. Further, the requirement of adequate remuneration being paid to rights holder in case a member avails of Compulsory licence flexibilities, as provided in Article 31(h) of TRIPS, has been relaxed to additionally take into account the “humanitarian and no-for-profit purpose of specific vaccine distribution programs”. The MC12 Declaration further paves the way for rapid approval of COVID-19 vaccines by relaxing the data exclusivity provisions contained in Article 39.3 of TRIPS for eligible country Members. The MC12 Declaration is being perceived by many experts as merely a reiteration of developing countries’ existing rights to override patents in certain circumstances, while simultaneously attempting to restrict that limited right to countries which do not have the capacity to produce COVID-9 vaccines. Some experts have gone to the extent of saying that the MC12 Declaration is, simply put, “a technocratic fudge aimed at saving reputations, not lives.”[5] However, there is still hope that these relaxations, even with their fair number of shortcomings, will provide some much needed respite to at least the developing and least-developed countries. [1] No. WT/MIN(22)/31 [2] https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669.pdf&Open=True [3] https://www.keionline.org/34275 [4] https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669R1.pdf&Open=True [5] https://www.oxfam.org/en/press-releases/wto-agrees-deal-patents-covid-vaccines-campaigners-say-absolutely-not-broad

With the advent of the digital era and consequent ease of accessibility, the entertainment industry has increasingly become a larger part of an individual’s life. With large viewership and fan-base for movies one among the few key decisions the entertainment industry often battles with is the naming of a movie. The title of a movie is seen as an identifier of the work as a whole. Titles are integral, particularly from a marketing perspective as they perform the function of catching the audience’s attention, set the tone for movies and possibly also accord recall factor to movies. Some memorable movie titles include the iconic Sholay and The Godfather. Given the brand and recall value that a title can generate, one may construe it as his/her intellectual property and thus it becomes essential that one prevents its unauthorized appropriation by others. The question that arises is – what are the possible modes of protection available to a movie title in India? It is customary in the Indian entertainment industry to ‘register’ movie titles with various associations in the industry such as Indian Motion Picture Producers Association, Film and Television Producers’ Guild of India and the Western India Film Producers’ Association. However, these associations, do not grant any legal rights but only conduct internal checks with one and another as a measure to avoid any duplication prior to granting ‘registration’. Nevertheless, these records could be helpful in ascertaining prior adoption/use of a title in legal proceedings. Interestingly, when it comes to legal rights, a movie title, contrary to a movie script or a dramatic work is not entitled to copyright protection. In the case of Krishika Lulla and Ors v. Shyam Vithalrao Devkatta and Ors[1], the Supreme Court of India held that a movie title does not qualify in itself as a ‘work’ which is capable of copyright protection but is rather only a mere reference to the underlying original literary or dramatic work. On the other hand, trademark protection can be obtained for movie titles. Indian courts have routinely held that titles of a series of movies, such as The Godfather, Die Hard, Mission Impossible do function as trademarks to indicate that each movie comes from the same source as the others and, therefore, such titles are registrable as trademarks. However, as regards titles of standalone movies, courts have held that it is necessary to prove that such titles have acquired secondary meaning. In the case of Kanungo Media (P) Ltd. v. RGV Film Factory[2], the Delhi High Court listed a few factors that would be relevant in considering whether secondary meaning may be accorded, namely: In order for the title of a standalone movie to qualify for trade mark protection, it is imperative to show that the title has acquired distinctiveness and secondary meaning. If a movie title fails to satisfy the parameters for acquired distinctiveness and secondary meaning, it cannot be protected as a trade mark. Since registration of a movie title as a trade mark confers ownership and grants an exclusive statutory right to use and exploit the title for commercial gain, proprietors of such titles, especially in the case of titles of a series of movies, should consider applying for registration of the titles as trademarks. [1] 2015(6)ABR745 [2] 2007 (34) PTC 591 (Del)