International Judicial Conclave on Intellectual Property Rights organised at Delhi High Court

The Delhi High Court in collaboration with Delhi Judicial Academy and United States Patents and Trademarks Office and United States Department of Justice conducted an International Judicial Conclave on Intellectual Property Rights on March 16 and 17.

In the two-day event, judges of the Supreme Court of India, Delhi High Court as well as other Indian High Courts, lawyers and judges from across globe as well as other stakeholders discussed the important issues pertaining to Intellectual Property law.

The panelists highlighted that there is a need for a statutory framework for the protection of trade secrets that can build upon the existing common law regime and stressed even non-traditional trademarks, like sound, touch, or smell marks, warrant protection through legal frameworks.

On the issue of Artificial Intelligence (AI) and their impact on the Intellectual Property law, the speakers said that the patent law will have to evolve to account for developments in AI and the concept of the ‘inventor’ in these cases.

The themes discussed by the participants in various sessions were tied to the emerging challenges in the protection of intellectual property rights with the rise of new digital ecosystems, AI and cross-border activities.

Justice Yashwant Varma of the Delhi High Court was the Chairperson of the Organizing Committee of the event.

Protecting and Enforcing IP in New Digital Ecosystems

Panelists for this session included Justice Hima Kohli, Supreme Court of India; Justice Yashwant Varma, High Court of Delhi; Justice Muhamed Mustaque, Kerala High Court; KM Kamrul Kadar, Judge, High Court Division of Supreme Court of Bangladesh; Amali Ishanthi Kumar Ranaweera, Judge, Civil Appeal, High Court, Sri Lanka and Kiyo A Matsumoto, District Judge US District Court for the Eastern District of New York.

Shwetasree Majumder moderated the session.

Highlights from the session included a discussion on when training of AI models on copyright material without a license from the copyright owners would constitute fair use. The speakers observed that this question would depend on the transformative nature of the output of the AI models and whether the output is substantially similar to the copyright material.

Another topic discussed was the need to examine the impact of data scraping for training AI models in the context of privacy laws and personality rights.

The collection and processing of personal data without consent, may violate privacy laws, it was noted. The panel further observed that there have been cases, including before the Delhi High Court, where individuals’ personality rights have been violated by unauthorized AI-generated content.

New Frontiers of Trademark Law

The panelists for this session were Justice KV Viswanathan, Judge, Supreme Court of India; Justice Anish Dayal, Judge, Delhi High Court; Naima Haider, Judge, High Court Division of the Supreme Court of Bangladesh; Virginia Maria Covington, Senior District Judge, US District Court for the Middle District of Florida; Shanaka Harshan Kekunawela Pathiranga, Additional Magistrate, Chief Magistrate’s Court, Sri Lanka and Amit Sibal, Senior Advocate.

The session was moderated by Pravin Anand.

The panelists were called to discuss on non-traditional trademarks, like sound, touch, or smell marks, and their protection through legal frameworks that acknowledge their distinctiveness beyond conventional marks. Some examples of non-traditional trademarks that are registered are (1) Shape marks: Toblerone, Ferrero Rocher, Zippo; (2) Touch marks: EPI leather, Louis Vuitton; (3) Structure marks: Ismail building; (4) Sound marks: Yahoo!; and (5) Colour marks: Red sole of Chistian Louboutin shoes.

The speakers also noted that the question as to whether personality or publicity rights should be considered an independent proprietary right or whether it would fall under the purview of privacy law is a subject of ongoing debate.

Navigating Standard Essential Patent (SEP) Litigation

The panelists for this session were Justice C Hari Shankar, Judge, Delhi High Court; Jagath Ariyakaruna Kahadagamage, Judge, Commercial High Court, Sri Lanka; Virginia Maria Covington, Senior District Judge, US District Court for the Middle District of Florida; Kiyo A Matsumoto, District Judge, US District Court for the Eastern District of New York and Ashok Kumar Chhetri, Joint Secretary, Judicial Council Secretariat, Government of Nepal.

Adarsh Ramanujan moderated this session.

During the discussion, it was noted that interim measures in Standard Essential Patent (SEP) litigation may involve the assessment of traditional tests for interim orders, as well as other unique and distinct aspects.

There was also a consensus amongst the panelists that courts in a single jurisdiction should avoid setting a global FRAND rate for a given SEP. The litigations concerning anti-suit and anti-enforcement actions arose in this context.

Cross Border IP Enforcement and Criminal Remedies

Panelists for this session included Justice Chandra Dhari Singh, Judge, Delhi High Court; Kumar Regmi, Justice , Supreme Court of Nepal; Michael Frank, Magistrate Judge US District Court for the Northern District of Florida; Sandum Shyam Kumar Withana, District Judge, District Court, Sri Lanka; Dayan Krishnan, Senior Advocate and James S Yoon, International Computer Hacking and IP (ICHIP) Attorney Advisor for Asia, US Department of Justice, US Consulate General for Hong Kong & Macau.

The discussion was moderated by Saif Khan.

The panelists dwelt on how the counterfeiting of pharmaceutical drugs, automobile components and piracy of copyrighted content are some of the most common operations undertaken by organised crime syndicates.

Criminal remedies for IP enforcement presents challenges such as when it comes to the cross examination of witnesses outside the concerned jurisdiction where the prosecution is ongoing, the panelists went on to note.

Addressing Digital Piracy and Online Counterfeiting

Panelists for this session included Justice Manmohan, Acting Chief Justice, High Court of Delhi; Justice Rajiv Shakdher, Judge, High Court of Delhi; Justice S Ravindra Bhat, Judge (retired) Supreme Court of India; Brajesh Pyakurel, Judge, High Court of Patan, Nepal; Jeyaramam Trotsky, Judge, Colombo High Court, Sri Lanka and Kiyo A Matsumoto, District Judge US District Court for the Eastern District of New York

Swathi Sukumar moderated the panel discussion, which touched upon how the development of the law pertaining to dynamic injunctions in India is an example of the law catching up with the technological developments and evolving novel mechanisms to tackle various forms of online piracy.

The speakers also noted that restrictions and limitations on Intermediary liability is an important facet while dealing with digital piracy. Indian Courts have passed seminal decisions exploring the scope of intermediary liability, including in the cases of MySpace and Google v. DRS, it was observed.

Trade Secrets and Breach of Confidentiality

Panelists for this session included Justice Moushumi Bhattacharya, Judge, Calcutta High Court; Koruwage Priyantha Fernando, Judge, Commercial High Court, Sri Lanka; Michael Frank, Magistrate Judge, US District Court for the Northern District of Florida; Professor (Dr) Pushpa Kumar Lakshmanan, Law Centre-1, Faculty of Law, University of Delhi and Professor Yogesh Pai, National Law University Delhi

The session was moderated by J Sai Deepak.

During this session, there was consensus amongst the panelists that there is a need for a statutory framework for the protection of trade secrets that can build upon the existing common law regime.

The panelists discussed the Indian Law Commission Report pertaining to trade secrets. The lacuna of the current regime was considered in the light of the Report, and it was acknowledged that the same have been addressed by the Report to some degree. The Report does not categorise trade secrets as IPR and the same garnered mixed views among the panel.

Current Issues and Future Trends in Industrial Designs

Panelists for this session included Justice Vipin Sanghi, Chief Justice (retired), Nainital High Court; Justice Manmohan Singh Judge (retired), Delhi High Court; Virginia Maria Covington, Senior District Judge, US District Court for the Middle District of Florida; Habakala Kankanamage Naleen Prasanna Alwis, Chief Magistrate, Chief Magistrate’s Court, Sri Lanka and Abhimanyu Bhandari, Advocate.

Hemant Singh moderated the session, which involved a discussion on how specialised IP Statutes may involve overlapping schemes in case of design, copyright, and trade marks.

For example, under the Trade Marks Act, ‘shape of goods’ and ‘colour combination’ are included. The idea behind adding ‘shape of goods’ in the Trade Marks Act was to protect such unique features in the design of a product which, with use, attain goodwill and reputation.

It was also noted that there was some controversy surrounding Section 15, Copyright Act, 1957 as it excludes granting copyright protection to any registered design. It further states that if a design which is capable of being registered is not registered, then the copyright on such designs ceases once the article has been reproduced more than 50 times. It does not take away the creator’s right to exploit. It only means that the creator has to seek remedies available under the Design Act and not in copyright, the panel noted.

[Read Summary report of the conference]