Citation: Chakrabarti, Gargi, “Geographical Indications: Ambiguity in Legal Provisions in India”, Delhi Journal of Contemporary Law, e-ISSN 2582-4570, Volume II (2020), Available at < http://lc2.du.ac.in/DJCL2/Delhi%20Journal%20of%20Contemporary%20Law%20Volume%202.pdf>

Introduction

The subject paper is an attempt to analyse the provisions of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter referred to as “GI Act”) in order to identify the source of ambiguities and confusion stemming from the Act with regards to its application, since Geographical Indications are a slightly different intellectual property in comparison to copyrights or trademarks, and recommend suggestions to rectify these ambiguities. The paper utilises actual examples and case-studies to identify the ambiguities in the application of the GI Act for protection of Geographical Indications in India, and subsequently proposes suggestions by substantiating them with the reasoning behind why they might work better.

Unique Nature of GI

The paper establishes a base for the flow of the issue by identifying the uniqueness of Geographical Indications as a community right as opposed to a private right like in case of other intellectual property rights, and the fundamentals of unique and non-replicable product quality behind a Geographical Indication to a product. The initial section of the paper also delves into, albeit briefly, the historical international agreements protecting Geographical Indications including the Paris Convention, 1883 that used the term ‘appellations of origin’, the Madrid Agreement and finally the TRIPS Agreement which set out the minimum standard of protection for Geographical Indications. The charting out of these international agreements in the paper helps to provide a perspective of the evolution of international jurisprudence on protection of Geographical Indications.

Ambiguities in the Statute

The paper dissects the potential areas of confusion with respect to the GI Act, by analysing what is termed as “success stories” of geographical indications. The observation made is that the inclusion of different categories of goods which also incorporate traditional cultural goods and handicrafts, is what makes the Indian legal regime unique. The paper includes a comparison of the success of Darjeeling tea, Kesar mango, etc. to the failure of textile products such as Bagru print, Sanganeri print or Kota Doria – in terms of increment in export, profit and establishment of brand value. Section 11 of the GI Act is the relevant provision when it comes to the eligible applicants for a GI tag.  It is then pointed out that for products like Darjeeling tea, Kesar mango, Nasik grapes, the applicants were the group of local producers themselves, as opposed to government departments in other cases. The paper connects the observation regarding the applicants to the success of the products by reasoning that when entities connected to the production are involved in the application process, such as actual producers or association of producers of the said good, they help create and maintain better value chain in the post-registration phase as well.

The paper also makes an interesting point regarding the terminologies used in the statute being a possible source of confusion for the common man. The usage of the term ‘producer of goods’ for instance, is easier to comprehend as compared to the interchangeable terms such as ‘registered proprietor’, ‘authorised user’ used in the GI Act and its affiliate rules and manuals, which leads to lack of uniformity and also makes it difficult for a common man to comprehend the provisions, thereby resulting in confusion. The paper also argues for inclusion of retailers of packaged goods including end users in ‘registered proprietors’ and thereby be incorporated in Part B of the register.

The Way Forward

The paper recommends suggestions to erase the ambiguities and points of confusion identified, as summarised in the previous section of this review. In light of the observations made in the previous section, it is suggested that government departments should focus on capacity building rather than becoming an applicant themselves, which will allow producers and associations to be a part of the process and maximise economic benefits. It is recommended that Part A of the register should include registered proprietors or producers, and Part B should include the authorised users. The effect of this will be such that both sets of parties will have equal rights for obtaining relief in infringement cases, and thereby also maximise commercial benefit. The paper takes a leaf out of the European Union’s book to suggest strict supervision, mandatory logos and quality management for packaging of goods under registered geographical indications. Lastly, the paper suggests the addition of a specific legal provision for benefit sharing.

Conclusion

The research paper is able to make a strong case for the proposed suggestions by showing the practical repercussions of the provisions being debated upon. However, the most valuable suggestion to be taken from the said research is increased participation of the producers and their associations, directly leading to maximization of economic benefits. Greater promotion and awareness will play an essential role in encouraging their participation, which the paper also addresses briefly.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Citation: ‘Kaira District Co-Operative Milk Producers’ Union Limited & Anr. v. Amul Canada & Ors.’ [2021 FC 636 (Federal Court of Ontario, Canada)  (Diner, A.S., J)] Judgement dated June 22, 2021. [< https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/499505/1/document.do>]

Introduction:

The above captioned judgement has ruled in favor of India’s iconic dairy products brand- AMUL owned by Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Cooperative Milk Marketing Federation Ltd. (“Plaintiffs”). The Court has permanently restrained Amul Canada and others (“Defendants”), from infringing upon the Plaintiffs’ valuable AMUL and AMUL TASTE OF INDIA marks (“AMUL marks”) as well as the copyright subsisting therein. 

The Suit

Briefly, the Plaintiffs brought a suit alleging that the Defendants have been advertising and offering for sale products bearing their AMUL Marks in Canada, through their social media page on LinkedIn. The Plaintiffs contended that the Defendants are illegally advertising their products, using their brand name and image, as well as the Plaintiffs’ corporate information on said LinkedIn page. The Plaintiffs claimed that the conduct of the Defendants is clearly an attempt to draw a false association with the Plaintiffs and thereby deceive unwary consumers. 

Ex Parte Decision 

The Court was faced with two issues viz. (a) on procedural count, whether the Plaintiffs have properly brought the motion for default judgment; and (b) on the substantive front, whether a default judgement must ensue, and relief sought must be granted to the Plaintiffs. 

On first issue the Court correctly noted that the Defendants have neither responded to any communication issued by the Plaintiff, nor have they filed their statement of defense in present proceedings. Taking cognizance of the blatantly evasive conduct of the Defendants, the Court concluded that the Plaintiffs deserve the default judgement (akin to an ex parte decision in India).

Passing Off, Copyright and TM Infringement

As regards the second issue, the Court delved into a substantive enquiry into the Defendants’ conduct to determine whether the causes of action for passing off, trademark and copyright infringement were established. 

Noting that AMUL is a brand existing for over 50 years in India and is advertised globally, including in Canada, the Court held that it has acquired distinctiveness at least amongst certain segments of the Canadian population. The finding was vehemently backed with invoices amounting to over USD 100,000 demonstrating import of AMUL products into Canada. In addition, by using the identical name and mark, the Defendants deliberately misrepresented themselves to be associated with the Plaintiffs and diverted the public to their own business. Thus, two of the three counts required to establish a passing off action were clearly established. Interestingly, for the damages count, the Court rightly pointed out that the form of damages is unrestricted, and Plaintiffs can suffer damages even from a loss of control over its mark. 

However, the quantification of damages in this case was a peculiar task especially because calculation of the extent of sales, advertising etc. appeared almost impossible without the response/engagement of the Defendants in the proceedings. The Court took a remarkably interesting approach around this predicament. Taking into account the 177 followers of the Defendants LinkedIn page for ‘AMUL CANADA’, the Court concluded that a significant number of people continue to be deceived by the Defendants into believing that Defendants are somehow associated with the Plaintiffs. The Court went on further to state that, there might be others who are not following the Defendants’ LinkedIn page but might have come across the same and been deceived in the past. The Court therefore agreed to grant damages as sought by the Plaintiffs. 

In comparison to the thorough enquiry for the passing off action, the counts of trademark and copyright infringement were fairly simple to establish. The Plaintiffs owned registrations for the marks AMUL and AMUL THE TASTE OF INDIA in Canada and therefore any unauthorized use by the Defendants even for mere advertising purposes over social media, amounted to infringement. Similarly, the unauthorized copying and reproduction of the Plaintiffs’ literature (available on their website) amounted to copyright infringement.

Accordingly, the Court permanently restrained the Defendants from using the Plaintiffs’ AMUL Marks, directed them to immediately transfer their LinkedIn page to the Plaintiffs and also to provide a detailed list of entities that contacted the Defendants about their business through the LinkedIn page.

Conclusion:

The approach taken by the Court in this case is of particular relevance in the current age of social media dominance. The Court has gone a step ahead to appreciate the impact social media has on a consumer. The judgement will act as a precedent for cases where the only evidence that a plaintiff has is the use of its mark by a defendant over social media.  In addition, the case is of particular importance to Amul, as its marks are now recognized as reputed in a foreign jurisdiction, and also have a successful record enforcement there. For the Indian business community, it is a welcomed judgement as the goodwill earned by a homegrown brand over decades has been recognized and protected by an overseas court. 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

Section 15(3) (a) of The Protection of Plant Varieties and Farmers’ Right Act, 2001  specifies that a plant variety would be novel “if harvested material has not been sold/disposed for the purpose of exploitation”. There is some ambiguity in whether the parental lines would be eligible as ‘novel’ as a prerequisite for registration under the Act for intellectual property protection, if the hybrid seeds of such parental varieties have already been sold/disposed of. Does sale/disposal of hybrid seeds also qualify as being ‘for the purpose of exploitation’ of parental line as ‘harvested material’? Or does sale/disposition of only pure line seeds of a parental line as ‘harvested material’  qualify as being ‘for the purpose of exploitation’?  

For exploring the statutory interpretational issue that has been identified above, the state legislative intent is a good place to begin. The legislative intent of the Act was to follow up on India’s ratification towards TRIPS Agreement for protecting plant varieties either by patents or by sui generis law or perhaps both under Article 27(3)(b) of the TRIPS Agreement. India was obliged to protect intellectual property rights for a specific period of time in certain plant varieties. This aim and rationale of the Act is also mentioned in its preamble. In the two decades since the enactment, though, there is now a fledgeling domestic industry producing varieties of plant species with Indian breeders engaged in a public research system that aims to combine agricultural research in India with intellectual property protection. The current state of the industry is affected by how stringent or accommodative an interpretation is made of the statutory requirement of novelty for these plant patents. It is in this context that this Article explores the statutory interpretation of Section 15(3)(a) of the Act for whether it treats parental lines of extant hybrid varieties as novel.  

Registrable Plant Variety versus Essentially Derived Variety

The specific statutory provision, Section 15, indicates that a new variety or an extant variety is registrable if it meets the criteria of Novelty, Distinctiveness, Uniformity and Stability (referred as NDUS). As to the protection that the statute confers upon NDUS based eligibility, the Act required farmers and breeders to secure their rights and interest by way of registering their plant varieties. It is in this context that the question of hybrid as extant or not extant needs to be considered. 

It is evident that if the hybrid falls under the ambit of extant variety then its parental lines cannot be treated as novel. Supporting the above statement, the harvested material of a variety is a variety in itself or should be able to reproduce the parent variety. In contrast, hybrid seeds obtained from crossing the parental lines have distinct traits and characteristics and don’t qualify as propagating or harvested material. This is because any part of a plant or seed which can regenerate carries the same characteristics of the original plant. Also, to clear the clouded term “disposed of” indicates transferring of title during the process of hybridization to which neither amounts to commercialisation of hybrid seeds nor exploiting the parental lines. In the matter of Deputy Commissioner Of Sales Tax … vs Thomas Stephen & Co . Ltd. Quilon [1988 AIR 997, 1988 SCR (3) 248] [1], the Supreme Court affirmed this interpretation of the phrase – ‘disposed of’ as occurring in the Section.

Propagating Material versus Harvested Material 

Analysing the Section we find that a new plant variety would be deemed to be novel if the ‘propagating material’ as defined under Section-2(r) or ‘harvested material’ which is a technical term not defined in the Act, of such variety has not been sold/disposed of by or with consent of its breeder or its  successor for the purpose of exploitation of such variety in India earlier than one year or in case it is disposed of outside India, earlier than 4 years from the date of application.[2] 

Technically, the process of hybrid varieties involves producing one parent line which is male sterile and female fertile. The pollen of the other line is dusted on the stigma of the initial line to which the resultant seed harvested acquires hybrid characteristics and traits. Hence, we can conclude if the extant hybrid varieties are commercially exploited, the identity from the parent line which is an asset to the breeders is still secured with them and does not qualify as an extant variety. The phrase of Section 15(3)(a) ‘harvested material of a variety’ comprises all the materials of the plant but the seeds are harvested and not propagated from the parent lines.

In the first sentence of the provision Section 15(3) the phrase ‘shall be deemed’ indicates clearly the intention of the legislature that it allows it to be excluded from claiming as novel if sold/disposed of prior to the specified period. Further, the hybrid seeds are incapable for germination due to absence of regeneration of the same variety which does not amount to be deemed as ‘novel’. It would be an ‘essentially derived variety’. 

Conclusion

Proceeding like this makes it clearer that the above interpretation is plausible in as much as even though hybrid represents only itself, once exploited then the novelty of hybrid varieties and plant varieties can be considered to have been exhausted and lost. The above discussion indicates that if seeds of parental lines have been exploited then there is no chance for the breeders to claim such a line as novel. The textual interpretation of the existing language of Section 15 (3)(a) hardly admits of the parental lines of extant hybrid varieties being considered novel and thereby eligible for plant variety protection.    

EndNotes :

[1] Deputy Commissioner of Sales Tax  v. Thomas Stephen & Co. Ltd., Quilon: 1988 SCR (3) 248  https://indiankanoon.org/doc/1639473/

[2] Section:15(3)(a) –  https://plantauthority.gov.in/protection-plant-varieties-and-farmers-rights-act-2001

Section : 2 (r) https://plantauthority.gov.in/protection-plant-varieties-and-farmers-rights-act-2001 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

Section 2(m)(ii) of the Copyright Act, 1957 states ‘infringing copy’ means “in relation to a cinematographic film, a copy of the film made on any medium by any means”. Which film-adaptation or remake is covered within the meaning of ‘copy’ and which isn’t? What is the legal test to determine whether an adaptation or remake of a film constitutes or does not constitute an infringing ‘copy’? 

This statutory interpretational issue is increasingly in contention as the market for adaptations and other remakes expands. Cinematic works are being re-created and adapted across borders and genres. Sometimes regional films are remade from one language to another and sometimes films from one country are remade in another. Both linguistic and cultural elements may be adapted in a remake. Always the possibility exists that the adaptation or remake amounts to a copy that infringes copyright in the inspiring original. 

Substantial Copying Test

If a film, on side-by side comparison with an earlier work, appears to be a substantial copy such that without the said ‘substance’, the film would be incomplete, should then and only then such an adaptation be found to constitute infringement? This ‘substantial copying’ test was laid down in R.G. Anand v. Delux Films [1]. The Supreme Court [Raja Jaswant Singh, R.S. Pathak and S. Murtaza Fazal Ali, JJ.] held that: “…Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur… in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy…”

Is this requirement of substantiality and materiality only an overall aspect or is to be broken down into elements for a granular application of the test? 

Both aspects were emphasized as legitimate by a single judge bench of the Delhi High Court [Anil Kumar, J.] for examining whether the television serial ‘Time Bomb’ was substantially copied from the well-known television serial ‘24’ in the case of Twentieth Century Fox Film Corporation v. Zee Telefilms Ltd. and Ors. [2]. 

Multiple element-wise applications of the test in any case immediately raises the question of their numerical aggregation as being determinative. The ‘24’ vs. ‘Time Bomb’ decision avoided this conclusion by describing the test as being a qualitative one instead of a quantitative one – “In considering the question of substantiality, the similarities between the program should be considered individually and then it should be considered whether the entirety of what had been copied represented a substantial part of the plaintiff’s program. Whether a part was substantial is to be decided by its quality rather than by its quantity…” It was on the qualitative differences between the two television serials, prima facie, that to this court the two appeared substantially different. 

Average Viewer Test

To whom, however, should the qualitative similarity be apparent? A film critic or a film connoisseur or an average film viewer or an ordinary person of no more than ordinary interest in films? In which socio-cultural-regional context should this person be conjured whose perspective should determine the application of the test of similarity?

The average viewer is sometimes taken as the person with the applicable perspective. In Twentieth Century Fox Film Corporation v. Sohail Maklai Entertainment Pvt. Ltd. and Ors. [3], for example, a single judge bench of the Bombay High Court [R.S. Dalvi, J.] observed that “the test of concluding whether the second work is a pirated copy is the impression of the average viewer…” and accordingly found that the film ‘Knock Out’ infringes copyright in the screenplay of the film ‘Phone Booth’. 

Scènes À Faire Test

If, instead of an average viewer, the test were to be applied through the sensibility of even a film enthusiast if not a film connoisseur, it would be realized that certain scenes in any film are almost mandated or customary on account of belonging to a particular genre, hardly unique to any one film. Examples of such ‘scènes à faire’ are electricity failing in a horror film or high-speed chase sequences in robbery films, etc. 

This doctrine, of course, begs grouping together films into a common genre, a meta cognitive act that might still have some subjectivity. Some courts have liked to apply it, though, such as for example a single judge bench of the Bombay High Court [G.S. Patel, J.] in the case of Mansoob Haider v. Yashraj Films Pvt. Ltd.  [4]. This Court was examining whether the film ‘Dhoom 3’ infringes copyright in the script of his film ‘Once’. While answering the question whether there was substantial and material overlap with the original elements in the original work, the Court found that if all ‘scènes à faire’ were removed, the entire suit would fail since there was no similarity between the films, and therefore held that no prima facie case was made out.

Conclusion

If the various legal tests discussed above are to be attempted to be combined into a comprehensive proposition of law on the issue, an infringing copy can be hazarded by this author to be one that is a substantial copy of the original work, one that an average viewer cannot tell apart and/or one which, apart from the scene à faire, is similar to the original work. This particular manner of combination and consolidation of the various legal tests of interpretation of the statutory term ‘copy’ as occurring in Section 2(m)(ii) of the Copyright Act 1957, however, currently lacks judicial precedent. 

Endnotes

[1] R.G. Anand v. Delux Films, AIR 1978 SC 1613

[2] Twentieth Century Fox Film Corporation v. Zee Telefilms Ltd. and Ors., 2012 (51) PTC 465 (Del)

[3] Twentieth Century Fox Film Corporation v. Sohail Maklai Entertainment Pvt. Ltd. and Ors., 2010 (44) PTC 647 (Bom)

[4] Mansoob Haider v. Yashraj Films Pvt. Ltd., 2014 (59) PTC 292 (Bom)

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Citation: Chahal, Husanjot; Abdulla, Sara; Murdick, Jonathan; and Rahkovsky, Ilya, “Mapping India’s AI Potential: CSET Data Brief”, Centre for Security and Emerging Technology (March 2021) <https://doi.org/10.51593/20200096 >

Introduction

The subject data brief on India’s Artificial Intelligence (AI) capabilities and their effective utilisation explores different factors such as research, talent, patenting of AI inventions, AI companies and investments, and cloud computing. These factors within the domestic Indian society bring to the fore interfaces that have been at loggerheads when it comes to developing domestic institutions and capabilities. The data brief bases its conclusions and inferences on direct or indirect empirical data collected from different sources including international institutions and governments. The data brief explores the importance of AI in the modern technology-driven market and arrives at certain factors in the context of analysing India’s capabilities in working with and developing its AI potential. 

Importance of Human Resource Management

Factors pertaining to human resources and knowledge management such as research and talent are explored by the data brief to understand how Indian institutes of higher education have been faring on AI research and collaborations. The data brief highlights a very interesting and mixed trend of Indian institutes being both constrained in their human resources capabilities while Indian researchers are able to collaborate with their foreign counterparts in their publications. This trend brings out two inferences: firstly, that there is a growing domestic demand for better AI capabilities and secondly, that funding for AI innovation and research output in light of India’s GDP is very low compared to other countries and that these collaborations in emerging subfields of AI technology have witnessed a consistent year-on-year growth. These inferences are reflected in the data on talent flows from India, the data brief highlights that there is a huge outflow of talent from India for state-of-the-art research on AI to countries like the United States (US). The data brief reiterates in its examination that an ability to address domestic AI-interest would only be served better in better funding of AI research and innovation in collaboration with tested foreign partners including from the US.

In addressing concerns on research in emerging technologies such as AI, the data brief expresses concerns on open access to latest research and open-source utilisation of at least publicly funded research. These not only seek to advance the current state of knowledge but also provide a greater impetus for start-ups and medium enterprises that either want to stay on top of their technological capabilities or intend to be a new entrant in the field and develop better capabilities. This is also a valid concern on cross-border cooperation and access to research that is not a threat to peace but has been publicly funded. The data brief, thus, leans towards a highly corporate and market-oriented approach to availability of knowledge and capabilities in omitting these concerns.

Patenting & Market Demand for Technologies

Intellectual property protection has been viewed as a key to prosperity for technology-focussed start-ups and Micro, Small & Medium Enterprises (MSMEs). Particularly in AI, patenting and patent protection are seen as steps before capturing a market. Noting that AI-based patenting has increased in India and that a majority share of such patents in India is from non-resident entities in the field of business patents, the work implies how India as a key market for companies is yet to find its potential AI competitors from the domestic arena. Further, the work also noted a steep increase in funding for privately held Indian AI companies since 2018 by examining data sets including dollar values of publicly disclosed investments and number of AI-centred investment transactions.

The data brief, although, takes a comparative approach between Indian and Chinese positions on most of the factors discussed above, does not disclose the basis for such a comparison. This comparison may seem odd in light of socio-cultural differences, including accessibility and possibility of collaborations with foreign entities, but it was clearly meant to be from the vantage point of the US in examining its prospects and possible positions with both the countries. The analysis of empirical data presented in this data brief does provide substantive feedback on the state of our present institutions and global outlook towards India.

Conclusion

The data brief highlights the necessity of focus on funding innovation and research in AI for domestic programmes including Startup India, and other programmes aimed at development of and credit availability for MSMEs and start-ups. This is not only seen as a precursor for a vibrant foreign engagement in this field but also to cater to rising domestic demands for development of research infrastructure and funding in this crucial field. With increasing multilateralism in the international order, this lateral on emerging technologies and their safe use is a key facet of growing debate. It is in emphasizing this in the context of the India-US relationship, that this data brief finds its roots.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP