Loreal India Pvt. Ltd. Vs Pornsricharoenpunco .Ltd.

Date of Judgement/Order:25.07.2023

Case No. CS Comm 496 of 2023

Neutral Citation:NA

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title:Loreal India Pvt. Ltd. Vs Pornsricharoenpunco .Ltd.

Jurisdictional Impact of IPAB Abolition on Trademark Suit

Introduction

This article examines the implications of the abolition of the Intellectual Property Appellate Board (IPAB) and the subsequent vesting of powers to entertain cancellation petitions with the High Courts, specifically in the context of a trademark suit. 

The case under discussion involves the trademark "HAIR SPA," where the Plaintiff has filed a suit for trademark infringement, while the Defendant has filed a cancellation petition against the registered trademark of the Plaintiff. 

The Hon'ble High Court of Delhi, faced with the Defendant's request for a stay on the suit proceedings due to the invalidity issue being framed, rendered a significant decision regarding the interplay of the suit and cancellation proceedings.

Background

The Plaintiff filed a trademark suit in relation to the trademark "HAIR SPA," asserting its exclusive rights over the mark. Simultaneously, the Defendant filed a cancellation petition, challenging the validity of the Plaintiff's registered trademark. Both matters were brought before the Hon'ble High Court of Delhi.

Defendant's Request for Stay

During the process of framing issues in the case, the Defendant insisted on framing an issue regarding the invalidity of the Plaintiff's registered trademark and requested a stay on the suit proceedings until the cancellation petition was resolved. The Defendant's argument was based on the premise that if the registered trademark is found to be invalid, the suit for trademark infringement would become redundant.

Court's Decision

The Hon'ble High Court of Delhi acceded to the Defendant's request and framed an issue regarding the invalidity of the Plaintiff's registered trademark. However, contrary to the Defendant's request for a stay, the Court declined to halt the suit proceedings. The Court reasoned that the recent Tribunal Reforms Act, 2021, abolished the IPAB and transferred jurisdiction for cancellation or rectification of trademarks to the High Courts. Given this change, the Court found it appropriate not to stay the suit proceedings.

The Court further justified its decision by highlighting that the issues for determination in both the suit and the rectification petition were likely to overlap and be common. Consolidating both proceedings under Rule 26 of the IPD Rules, the Court aimed to streamline the litigation process and ensure efficient resolution of the case.

Impact of IPAB Abolition

The abolition of the IPAB and the subsequent vesting of jurisdiction in the High Courts for cancellation or rectification of trademarks mark a significant shift in the trademark dispute resolution landscape. Traditionally, the IPAB served as the specialized body to handle such matters, but with its dissolution, High Courts now assume these responsibilities.

This change has had practical implications for the case under discussion. By consolidating the suit and the cancellation petition proceedings, the Hon'ble High Court of Delhi sought to avoid potential conflicts, prevent contradictory decisions, and streamline the adjudication process. It demonstrated the Court's readiness to take on the IPAB's former role and effectively handle trademark disputes.

Concluding Note

This case of "HAIR SPA" highlights the jurisdictional impact of the IPAB's abolition and the transfer of powers to the High Courts for handling trademark cancellation and rectification matters. The decision of the Hon'ble High Court of Delhi to frame the issue regarding the invalidity of the Plaintiff's registered trademark while refusing to stay the suit proceedings reflects a proactive approach in light of the recent legal changes. Consolidating both proceedings further indicates the Court's commitment to efficiently adjudicate trademark disputes. 

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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Ttk Prestige Ltd. Vs Gupta Light House

Date of Judgement:24.07.2023

Case No. CS Comm 865 of 2022

Neutral Citation:2023:DHC:5188

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, HJ

Case Title: Ttk Prestige Ltd. Vs Gupta Light House

The Impact of Expiry of Design in a Design Infringement Suit

Introduction:

This legal article delves into a crucial aspect of design infringement cases where the plaintiff's registered design has expired. The focal point is a specific case where the plaintiff's design of a cooker has entered the public domain due to the expiry of its registration. 

Back Ground 

The plaintiff holds a valid registration for its cooker design, which was granted on 13 December 2004. The case primarily revolves around the alleged imitation of the plaintiff's distinctive cooker design by the defendant's product.

Imitation by the Defendant:

The plaintiff alleges that the defendant's product is imitative of their registered design. A comparison of the two designs and the products themselves indicates a clear resemblance between the defendant's product and the plaintiff's registered design.

Trademark Consideration:

There is a mention of an alleged admission in the plaint that the suit design is registrable as a trademark. However, the plaintiff clarifies that this assertion was made concerning the overall get-up of the pressure cooker and not just the design. The defendant denies that the suit design constitutes a trademark and challenges its entitlement to protection under the Trademarks Act.

Designs Act and Trade Marks Act Interplay:

The defendant attempts to rely on the exclusion of trademarks under Section 2(d) of the Designs Act. They question whether Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, can be substituted with Section 2(1)(zb) of the Trade Marks Act, 1999. The court avoids delving into this issue, considering the defendant's assertion that the suit design was not registrable as a trademark.

Expiration of the Suit Design:

The pivotal point to address is the expiry of the plaintiff's registered design. The suit design's registration, as stated, expired on 13 December 2019, marking the culmination of its protection under the Designs Act. The expiration of the design renders it available for public use, as it no longer enjoys the exclusive rights granted during its validity period.

Effect on Restraining Use:

The defendant's argument centers on the concept that once a design enters the public domain after the expiry of its registration, there can be no judgment or decree restricting its use by anyone. This interpretation relies on the premise that the protection granted by the Designs Act ceases to apply once the registration period ends. The defendant contends that the design is now freely available for use by any party, and thus, no infringement can take place.

Preservation of Aspect of Damages: 

Despite the expiration of the suit design, the court acknowledges that an aspect that survives for consideration is the potential for damages. This means that even if the plaintiff's design is in the public domain, the defendant may still be held liable for damages if the court finds their pressure cooker design to be a piracy of the expired suit design.

Determining Piracy Despite Expiry:

While the plaintiff's design is now in the public domain, the court must assess whether the defendant's design is indeed an imitation or piracy of the expired design. It is important to note that the expiration of the design does not absolve the defendant from facing potential infringement claims if the court determines that their pressure cooker design substantially reproduces the expired suit design.

The Concluding Note: 

The expiry of a registered design does lead to its entry into the public domain, making it available for use by anyone. However, this does not automatically shield potential imitators from liability for infringement if their design is found to be a piracy of the expired design. The court's primary focus shifts to assessing whether the defendant's pressure cooker design indeed constitutes piracy of the expired suit design under Section 22(1) of the Designs Act. The court's decision on this aspect will determine whether the defendant is liable for damages despite the expiration of the plaintiff's design registration.

DISCLAI MER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

New Life Laboratories Pvt.Ltd.Vs. Dr.Ilyas New Life Homeo

Date of Judgement:21.07.2023

Case No. CS Comm 323 of 2023

Neutral Citation:NA

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, HJ

Case Title:New Life Laboratories Pvt.Ltd.Vs. Dr.Ilyas New Life Homeo

Quia Timet Action: Implications on Jurisdiction and Interim Injunction

Introduction

The jurisdictional aspect in trademark infringement lawsuits plays a crucial role in determining whether a court has the authority to entertain a case and decide on its merits. Additionally, the grant or denial of an interim injunction can significantly impact the rights of both parties involved. 

This article delves into the legal complexities surrounding the invocation of territorial jurisdiction based on an apprehended threat in the context of a trademark infringement suit. It explores the implications of mere averments made in the plaint regarding the apprehended threat of the defendant and how they can affect the court's decisions under Order 7 Rule 10 of the Civil Procedure Code (CPC) and the grant of an interim injunction.

Background

The subject matter of the suit pertains to the alleged infringement of the trademark "NEW LIFE." The plaintiff, based in Bhopal, invokes territorial jurisdiction under Section 134 of the Trademark Act, 1999, citing plaintiff's activities through dealers, distributors, and online platforms within its jurisdiction. 

However, during the course of argument, the plaintiff relies solely on Section 20 of the CPC, asserting apprehended threat by the defendants in Delhi as the grounds for invoking jurisdiction. The important aspect of the case was that the Plaintiff did not plead the online activities of Defendant. Hence there was merely averment regarding apprehended threat of Defendant.

Jurisdiction and Apprehended Threat

The court reiterates the principle that a plaintiff may institute a suit, quia timet or otherwise, based on the perceived future infringement of its registered trademarks. Nonetheless, to invoke territorial jurisdiction, the plaintiff must establish tangible or reasonable material justifying the apprehension that the defendant is likely to commit infringement within the court's territorial jurisdiction.

While the plaintiff makes an averment regarding the apprehended threat in paragraph 56 of the plaint, the court recognizes that at this stage, the plaint cannot be rejected for want of territorial jurisdiction. The court emphasizes that the plaintiff can, during trial, substantiate the said averments by presenting evidence to support its claims.

Order 7 Rule 10 CPC and Rejection of Plaint

Order 7 Rule 10 of the CPC deals with the rejection of a plaint. It empowers the court to reject a plaint if it fails to comply with certain prescribed requirements. However, the court's observation indicates that mere averments regarding the apprehended threat of the defendant, as found in paragraph 56 of the plaint, may be sufficient to avoid the rejection of the plaint under this rule. This implies that the court is unwilling to dismiss the case at this early stage based solely on the lack of tangible evidence for the apprehended threat.

Interim Injunction and Apprehended Threat

An interim injunction is a discretionary remedy granted by the court to protect the rights of the plaintiff during the pendency of the main suit. In trademark infringement cases, an interim injunction is a powerful tool to prevent further harm to the plaintiff's interests. However, the court's observation suggests that the mere averment of an apprehended threat in the plaint may not be adequate to warrant the grant of an interim injunction.

The court's reasoning likely stems from the need to strike a balance between protecting the plaintiff's rights and ensuring that interim injunctions are not granted without sufficient cause. In the absence of concrete evidence supporting the apprehended threat, the court may refrain from granting an interim injunction at this stage.

Conclusion

The case discussed highlights the importance of establishing a tangible and reasonable apprehended threat before invoking territorial jurisdiction in a trademark infringement suit. While mere averments made in the plaint may be sufficient to avoid the rejection of the plaint under Order 7 Rule 10 CPC, they may not be enough to secure the grant of an interim injunction. This analysis underscores the significance of presenting substantial evidence during trial to substantiate claims of apprehended threat, thereby enabling a more informed and just decision by the court.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Oyster Point Pharma Inc Vs The Controller of Patents

Date of Judgement:26.07.2023

Case No. AID No.10 of 2022

Neutral Citation:NA

Name of Hon'ble Court:High Court of Calcutta

Name of Hon'ble Judge:Ravi Krishan Kapur, HJ

Case Title:Oyster Point Pharma Inc Vs The Controller of Patents

Evaluating Inventive Step in Patent Applications: 

Abstract: 

This article analyzes the criteria required to be taken into consideration by the Controller of Patent while assessing the patentability of a patent application concerning inventive step.

It discusses a specific case where a patent application was rejected, but later appealed successfully based on the principles established by the Hon'ble Supreme Court of India and the case of Agriboard International LLC vs Deputy Controller of Patents. 

The article highlights the importance of analyzing existing knowledge, distinguishing prior art, and considering experimental evidence to determine inventive step in accordance with Section 2(1)(ja) of the Patents Act 1970.

Introduction: 

The grant of a patent is subject to several criteria, one of the most crucial being inventive step. This article discusses the legal aspects surrounding the patent application rejection and subsequent appeal related to the inventive step of the subject matter.

Background of the Case: 

The subject matter of the patent application in question involves a stereospecific synthesis of (R)-5(E)-2-pyrrolidin-3ylvinyl)pyrimidine, its salt forms, and novel polymorphic forms of these salts. 

The invention also includes methods for treating various medical conditions and disorders. The Controller of Patents rejected the patent application citing prior art documents D1, D2, and D3 under sections 2(1)(ja) and 3(d) of the Patents Act 1970.

Criteria for Assessing Inventive Step: 

According to the Agriboard International LLC vs Deputy Controller of Patents case, while evaluating the inventive step, the Controller must consider three key elements:

1. Existing Knowledge: The Controller must identify the relevant prior art, which includes all publicly available information and documents that were accessible before the filing date of the patent application.

2. Invention Disclosed in the Application: The Controller should thoroughly analyze the invention as disclosed in the patent application under consideration.

3. Obviousness to a Skilled Person: The Controller needs to assess whether the subject invention would be obvious to a person skilled in the relevant field of art.

The Role of Enhanced Efficacy: 

The Appellant contended that the Controller did not discuss the aspect of enhanced efficacy, which could have been crucial in demonstrating non-obviousness.

 In support of this argument, the Appellant relied upon the judgment of the Hon'ble Supreme Court of India in Novartis AG vs Union of India (2013) 6 SCC 1.

Analysis of the Hon'ble Court's Decision: 

The Hon'ble Court observed that the Controller's order lacked discussion on how the Appellant sought to distinguish D1, one of the cited prior art documents, from the subject invention. The Appellant had pointed out the disadvantages of D1 as prior art, but the Controller failed to address this aspect in the rejection order.

Importance of Experimental Evidence: 

Another ground for allowing the appeal was the Appellant's submission of detailed experiments, comparative studies, and conclusive results in support of the claimed invention, which were discussed in Appendix A, B, and C. The Hon'ble Court noted that these crucial pieces of evidence should have been duly considered before passing the rejection order.

Concluding Note: 

While assessing the patentability of a patent application with respect to inventive step, the Controller of Patent must consider existing knowledge, distinguish the invention from prior art, and analyze the obviousness to a skilled person. 

Furthermore, any aspect of enhanced efficacy or experimental evidence supporting the claimed invention should be given due consideration. 

The case discussed in this article serves as a significant reminder to the patent examiners and applicants about the importance of a comprehensive and well-reasoned analysis when evaluating inventive step under the Patents Act 1970.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Qualcomm Incorporated Vs Controller of Patent

Date of Judgement:24.07.2023

Case No.CA Comm IPD PAT 285 of 2023

Neutral Citation:2023:DHC:5136

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge:C Hari Shankar, H.J.

Case Title:Qualcomm Incorporated Vs Controller of Patent

Fate of non reasoned Order Passed by the Controller of Patents: The Scope of Interference by High Court

Introduction

This analytical legal article delves into the fate of an order passed by the Controller of Patents, which was challenged in the High Court of Delhi through an appeal filed under Section 117A of the Patents Act, 1970. The appeal sought to challenge the rejection of a patent application filed by the appellant for an invention titled "Minimizing feedback by sending a quality indicator for a nonrestrictive reuse set and a vectored quality indicator for other reuse sets." The crux of the appeal lies in the Controller's failure to address the submissions made by the appellant during the patent examination process.

Background

The patent application in question (no. 5159/DELNP/2007) was filed on 4 July 2007. Subsequently, the Patent Office raised objections to the application, prompting the appellant to submit responses to these objections on 19 December 2012. A hearing was granted to the appellant on 3 December 2014. However, despite the appellant's submissions and the hearing, the Deputy Controller of Patents and Designs passed an order on 31 October 2016 rejecting the patent application.

The pivotal issue raised in the appeal before the High Court of Delhi was the lack of proper reasoning in the Controller's order. The order acknowledged the receipt of responses from the appellant but failed to address the contents of these submissions. Notably, there was no indication that the Controller examined the merits of the appellant's responses or engaged with the arguments put forth.

Furthermore, the order revealed that the Deputy Controller concurred with the findings of the Examiner, yet no reasons were provided for this agreement. Additionally, the order did not make any observations or findings regarding the appellant's response to the Examiner's objections. This deficiency led to a manifest non-application of mind on the part of the Controller and rendered the order ex facie unreasoned.

High Court's Ruling

Upon hearing the appeal, the Hon'ble High Court of Delhi took a critical stance on the Controller's order. The court observed that an order that fails to address the submissions made by the party challenging the decision suffers from a fundamental flaw manifest non-application of mind. In other words, when an authority adjudicating a matter overlooks or ignores crucial submissions by a party, it indicates that the decision-making process was flawed.

The court went on to emphasize that such an inadequately reasoned order cannot stand either in law or on facts. It not only violates the principles of natural justice, which dictate that parties be given a fair opportunity to be heard and that their submissions be duly considered, but also undermines the efficacy of the patent system.

Patent examination and grant procedures necessitate meticulous scrutiny of the application and the arguments presented, and the absence of proper reasoning can lead to arbitrary and unjust decisions.

Conclusion

In conclusion, the fate of an order passed by the Controller of Patents, when it fails to address the submissions made by the appellant, is likely to be set aside and remanded for de novo adjudication.

The case at hand exemplifies the importance of reasoned decision-making and the application of mind by the patent authorities. The High Court of Delhi's ruling sends a strong message that orders lacking proper reasoning and non-consideration of submissions will not be tolerated.

The judgment highlights the significance of transparency, accountability, and adherence to principles of natural justice in the patent examination process. Patent applicants are entitled to fair treatment and a thorough assessment of their claims.

Consequently authorities responsible for adjudicating patent matters must ensure that their orders are reasoned, well-grounded, and take into account all relevant submissions before rendering a decision. Failure to do so can result in the invalidation of the order and the need for reevaluation.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Romil Gupta Trading as Sohan Lal Gupta Vs Registrar of Trade Marks and another

Date of Judgement:24.07.2023

Case No.CA Comm IPD TM 01 of 2023

Neutral Citation:2023:DHC:5129

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge:Prathiba M Singh, H.J.

Case Title: Romil Gupta Trading as Sohan Lal Gupta Vs Registrar of Trade Marks and another

Consolidation of various Trademark Proceedings pending before various forum by High Court: An Analytical Examination

Abstract:

This article analyzes the power and discretion of the High Court of Delhi to consolidate suit proceedings pending before the District Court, Delhi, cancellation proceedings pending before the Registrar of Trademarks, and appeal proceedings before the High Court, with reference to the Intellectual Property Division Rules, 2022. The High Court's reliance on a previous judgment and its reasoning for consolidation is also explored. This article examines the implications of such consolidation to avoid multiplicity of proceedings and conflicting rulings.

Introduction:

The consolidation of legal proceedings is a procedural mechanism used to streamline and unify multiple related cases before a single court for efficient adjudication. The High Court of Delhi recently exercised its power of consolidation under Rule 26 of the Intellectual Property Division Rules, 2022, while considering an appeal concerning the cancellation of a trademark registration. The Hon'ble High Court noticed that several related trademark matters were pending before different forums, creating a potential for conflicting decisions. This article explores the High Court's authority to consolidate such proceedings and the rationale behind its decision.

Background:

The subject matter of the appeal pertained to the trademark "SDHP," which was canceled by the Registrar of Trademarks, leading to the filing of an appeal before the High Court. However, the High Court observed that there were other connected proceedings on the same trademarks pending in different forums, namely:

i. C.A. (COMM.IPD-TM) 1/2023 titled Romil Gupta Trading as Sohan Lal Gupta v. Registrar of Trade Marks & Anr before the High Court.

ii. CS (COMM) 117/2019 titled M/s Landmark Crafts Private Limited v. M/s Sohan Lal Gupta through its Proprietor Sh. Romil Gupta before the ld. ADJ (Commercial Court) Karkardooma Court.

iii. Rectification Application 266607 titled Romil Gupta Trading as M/s Sohan Lal Gupta v. Landmark Crafts Private Limited before the Registrar of Trade Marks.

The Judicial Precedent:

In its decision to consolidate the proceedings, the Hon'ble High Court of Delhi relied on the judgment in Jumeirah Beach Resort LLC v. Designarch Consultants Pvt. Ltd. (C.O (COMM-IPD-TM) 124/2022, order dated 28th November 2022). In the cited case, the court had dealt with the issue of consolidation of proceedings under the Trade Marks Act, 1999, and the IP Division Rules, 2022. The court had held that there was no impediment to directing the transfer of related matters to itself to avoid conflicting rulings, especially when other connected petitions were already pending before the court.

The Power of Consolidation under IP Division Rules:

Rule 26 of the IP Division Rules, 2022, confers the High Court with the power to consolidate related proceedings. The rule allows the court to transfer matters pending before different forums to itself for unified adjudication. This authority is exercised to avoid multiplicity of proceedings, save time, and ensure consistent decisions on related issues. The overarching objective is to promote efficiency and prevent conflicting outcomes in cases involving the same subject matter.

Section 125 of the Trade Marks Act, 1999:

Section 225 of Trademarks Act 1999 provides that where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.[Now High Court].Rule 26 of the IP Division Rules, 2022, is framed in consonance with this section, and it enables the High Court to consolidate connected trademark proceedings before different forums to ensure a coherent and unified resolution.

The Rationale for Consolidation:

In the present case, the High Court of Delhi exercised its discretionary power to consolidate the proceedings involving the trademark "SDHP." By doing so, the court aimed to:

a) Avoid Multiplicity of Proceedings: Consolidation helps prevent the duplication of evidence, arguments, and judicial efforts that would arise if each case is decided separately.

b) Ensure Consistent Rulings: By centralizing the related matters before a single court, the risk of conflicting decisions is minimized, leading to a more coherent and predictable legal landscape.

Promote Efficiency: Consolidation expedites the resolution of disputes by streamlining the judicial process, reducing delays, and preventing unnecessary litigation.

d) Judicial Economy: Consolidation is conducive to the prudent use of judicial resources, saving time and effort for the court, parties, and legal practitioners.

Conclusion:

The Hon'ble High Court of Delhi, in its wisdom, exercised its power and discretion under Rule 26 of the IP Division Rules and Section 125 of the Trade Marks Act, 1999, to consolidate the trademark-related proceedings pending before different forums. This decision was driven by the desire to avoid multiplicity of proceedings and conflicting rulings, thereby promoting judicial efficiency and consistency. The consolidation of the proceedings concerning the trademark "SDHP" before the High Court ensures that all aspects of the dispute can be holistically considered, leading to a more comprehensive and just resolution of the matter.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Vifor International Limited Vs MSN Laboratories Limited

Date of Judgement:24.07.2023

Case No.CS Comm 261 of 2022

Neutral Citation:2023:DHC:5222

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge:Jyoti Singh, H.J.

Case Title: Vifor International Limited Vs MSN Laboratories Limited

Analyzing Product-by-Process Claims in a Suit for Patent Infringement: 

Abstract:

This legal article delves into the dispute brought before the Hon'ble High Court of Delhi in a patent infringement suit, where the primary issue revolves around the scope of the plaintiff's rights in a product-by-process claim. The plaintiff contended that the patent claim was a product claim, while the defendant argued that the scope of the claim was limited to the process disclosed in the patent. The court's analysis and findings in this case shed light on the significance of process features in product-by-process claims and the implications for patent protection.

Introduction:

In the subject matter suit for patent infringement before the Hon'ble High Court of Delhi, the central dispute pertained to the nature and scope of a patent claim relating to water-soluble iron carbohydrate complexes used in the formulation of a medical product known as FCM (Ferric Carboxymaltose). The plaintiff asserted that Claim 1 of the patent was a product claim, while the defendant contended that it was a product-by-process claim, limiting the plaintiff's rights to the specific process disclosed in the patent.

Product-by-Process Claims:

A product-by-process claim is a type of patent claim that defines a product based on the process by which it is made rather than its structural features. These claims are frequently used when the product itself cannot be fully described or characterized by its physical properties alone, and the process used to create it is essential to its unique properties. In such cases, the patent claim may specify the process steps required to manufacture the product, making it necessary for any potential infringer to use the same process to be liable for infringement.

Court's Analysis and Findings:

The Hon'ble High Court of Delhi analyzed the language of Claim 1 of the patent (IN’221536) and reviewed the complete specification and prosecution history to determine the scope of the claim. The court observed that the patent itself admitted that iron carbohydrate complexes were already known, and the invention's novelty lay in using maltodextrin as the starting material and oxidizing it with an aqueous hypochlorite solution to produce FCM.

Prosecution History Estoppel:

The principle of prosecution history estoppel holds that a patentee cannot make inconsistent statements during the patent application process, claiming certain properties are solely due to the process, and later assert broader claims that encompass other processes or products. In this case, the plaintiff's admission regarding the significance of the process features in obtaining the unique properties of FCM led the court to limit the scope of the claim accordingly.

The Defendant's submission in February 2020, opposing a third party's patent application (No. 3474/CHE/2013), further strengthens the Plaintiff's admission. In their opposition, the Plaintiff mentioned at multiple instances that Claim 1 of IN’536 relates to a process claim.

The Court, while evaluating infringement in a process by product patent, focuses on the process as a limiting factor. Typically, infringement is deemed to occur only when a product is made using the same process as claimed in the patent. Consequently, if the Defendants can successfully demonstrate that their product FCM is manufactured using a different process, they cannot be accused of infringement.

Analyzing Claim-1 in IN’536, it becomes evident that the claim covers water-soluble iron carbohydrate complexes obtained from an aqueous solution of iron (III) salt and an aqueous solution of the oxidation product of one or more maltodextrins using an aqueous hypochlorite solution at an alkaline pH. On the other hand, the Defendants' process for obtaining FCM involves using hydrolyzed starch treated with an appropriate acid medium in an acidic pH, followed by heating to create a mixture of hydrolyzed starch.

Based on this analysis, the Court observed that, at a prima facie stage, the Defendants have successfully established that their process for obtaining FCM falls outside the scope of IN’536. As a result, the Court held that the impugned process of CRPL and VBPL (Defendants) is non-infringing.

Plaintiff' Reliance on interim order passed in different Suit is merely persuasive:

The Plaintiff argued that various interim orders issued by different Courts regarding FCM demonstrated the strength of IN’536. They urged the Court to maintain uniformity in judicial decisions by granting an injunction against the Defendants. However, this argument was not accepted by the Court, being merely persuasive in nature.

Conclusion:

The case before the Hon'ble High Court of Delhi highlights the importance of product-by-process claims in patent law. Patent protection secured through such claims is limited by the process used to create the product, and a monopoly cannot be claimed over the product as a whole. The court's analysis and findings provide valuable insights into the scope of product-by-process claims and the significance of prosecution history estoppel in determining patent infringement case

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Chapter 4 Corp Vs Dhanpreet Singh Trading as Punjabi Adda

Date of Judgement:11.07.2023

Case No.CS Comm 782 of 2022

Neutral Citation:2023:DHC:4922

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge:Prarhiba M Singh, H.J.

Case Title: Chapter 4 Corp Vs Dhanpreet Singh Trading as Punjabi Adda

Abstract:

This article discusses a recent judgment by the Delhi High Court, which dealt with the issue of whether an ordinary dictionary word can be declared a well-known trademark. The Court's decision highlights the importance of acquired distinctiveness and distinctive fashion in determining the status of a well-known mark. The case involved a red-box device mark 'SUPREME,' and the Court granted protection to the specific logo while cautioning against blanket protection for the ordinary dictionary word 'SUPREME' itself.

Introduction:

Many trademarks comprise unique or invented words, there is a significant question about whether ordinary dictionary words can be eligible for well-known trademark status. A recent judgment by the Delhi High Court addresses this issue, shedding light on the criteria for recognizing ordinary dictionary words as well-known trademarks.

The Case and the Court's Observations:

The case before the Delhi High Court involved a red-box device mark 'SUPREME' used for readymade clothing. The plaintiff claimed that the mark had acquired a well-known status and sought protection against unauthorized use by others.

The Court's decision was based on several key observations:

Reputation and Acquired Distinctiveness:

The Court analyzed the plaintiff's averments, submitted documents, and the reputation of the 'SUPREME' red-box device mark. It concluded that the plaintiff had acquired a 'well-known' status for the specific logo.

Secondary Meaning:

The Court found that the red-box device 'SUPREME' had acquired a secondary meaning due to extensive and distinct usage in the market. Secondary meaning arises when consumers associate a particular word or symbol with a specific source or brand.

Period of Usage:

The Court considered the 29-year period during which the red-box device mark 'SUPREME' had been in use for readymade clothing. This long-term usage played a crucial role in establishing the mark's well-known status.

Well-Known Mark Declaration:

Considering the reputation, acquired distinctiveness, and extended usage, the Court declared the red-box device mark 'SUPREME' as a 'well-known' mark specifically in relation to apparel and clothing.

The Limitation on Protection for Ordinary Dictionary Words:

Despite recognizing the well-known status of the 'SUPREME' red-box device mark, the Court issued a cautionary note regarding the ordinary dictionary word 'SUPREME' itself. The Court clarified that the declaration of well-known status was limited to the specific red-box logo and not the word 'SUPREME' in a general sense.

Implications of the Judgment:

The Delhi High Court's judgment has significant implications for the protection of ordinary dictionary words as trademarks. It establishes that such words can be declared well-known trademarks if certain conditions are met:

Acquired Distinctiveness:

The primary requirement is to prove that the ordinary dictionary word has acquired distinctiveness through extensive use and association with the plaintiff's brand.

Distinctive Fashion:

Additionally, the word must be used in a distinctive fashion, often in combination with unique elements like logos or stylization, to set it apart from its common meaning.

Conclusion:

The Delhi High Court's recent judgment clarifies the possibility of an ordinary dictionary word being declared a well-known trademark. Businesses seeking such protection must demonstrate acquired distinctiveness and ensure that the word is used in a distinctive fashion.

While the judgment offers a pathway for the protection of ordinary words, it also rightly emphasizes the importance of acquired distinctiveness in safeguarding trademarks and preventing undue monopolization.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Monsanto Holding Pvt.Ltd. Vs Competition Commission of India Limited

Date of Judgement:13.07.2023

Case No: LPA No. 247 of 2016.

Neutral Citation:2023:DHC:4783

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Nazmi Waziri, H.J.

Case Title: Monsanto Holding Pvt.Ltd. Vs Competition Commission of India Limited 

Analyzing the Jurisdictional Overlap: Competition Act Vs Patents Act in Patent Licensing Disputes

Abstract: 

This legal article delves into the critical question of whether the Competition Commission of India (CCI) can inquire into the actions of a patentee who asserts their patent rights in India. The article examines four appeals and a Writ Petition, which collectively raise this common issue of far-reaching implications. 

The analysis revolves around the interface between patents and competition law in India, exploring the statutory provisions and judicial precedents governing the subject matter. The article aims to shed light on the scope and limitations of CCI's authority under the Competition Act, 2002, when it comes to patent-related disputes.

Introduction

The intersection between intellectual property rights and competition law has been a subject of significant legal debate in various jurisdictions. In the present case, the court dealt with four appeals and a writ petition that raised a crucial question: Can the Competition Commission of India (CCI) inquire into the actions of a patentee under the Competition Act? 

The appeals and the petition stemmed from interventions by CCI against Ericsson and Monsanto concerning the fixation of licensing rates on Fair, Reasonable, and Non-Discriminatory terms and charging high royalties, respectively. 

The appellants, Monsanto and Ericsson, contended that the power to inquire into anti-competitive licensing of patents lies either with the Controller or the Civil Court under specific provisions of the Patents Act. Ultimately, the court allowed the appeal,asserting that the Patents Act prevails over the Competition Act when it comes to matters of abuse of dominant position and anti-competitive agreements by a patentee in the exercise of its rights.

Background and Context

The Competition Act, enacted to promote fair competition, prevent anti-competitive practices, and protect consumer interests, governs anti-competitive agreements and the abuse of dominant market position across all sectors. 

On the other hand, the Patents Act is a specialized legislation that regulates the grant, administration, and enforcement of patents, granting inventors exclusive rights to exploit their inventions for a limited period Ericsson's intervention before the CCI was prompted by allegations of it using its dominant position in the market to fix exorbitant licensing rates on its terms for its standard-essential patents. 

Similarly, Monsanto faced CCI intervention on the grounds of charging high royalties for its genetically modified seeds, potentially leading to anti-competitive practices in the agricultural sector.

The Appellants' Contention

Monsanto and Ericsson put forth the argument that the authority to inquire into anti-competitive licensing of patents lies with either the Controller or the Civil Court. The appellants contended that these provisions encompassed matters related to licensing rates and any anti-competitive behavior by patentees.

The Court's Ruling

The court, in its judgment, recognized that the Competition Act is a general legislation designed to address anti-competitive agreements and the abuse of dominant market positions across all sectors. However, it distinguished between general and special legislation, observing that when a specific enactment deals with particular subject matter, it prevails over a general enactment concerning the same subject matter.

In this context, the court held that while the Competition Act addresses broader issues of competition and market dominance, the Patents Act is a specialized legislation that governs the rights and obligations of patentees, including the terms of licensing and the remedies for infringement. 

Thus, when the issue at hand involves abuse of dominant position and anti-competitive agreements by a patentee in the exercise of its rights under the Patents Act, the Patents Act becomes the special legislation, prevailing over the general provisions of the Competition Act.

Conclusion

The court's ruling in this case offers valuable clarity on the jurisdictional overlap between the Competition Act and the Patents Act in matters concerning patent licensing disputes.

By emphasizing the Patents Act as the specialized legislation governing patentees' actions, the court provides a clear delineation of authority for inquiries into anti-competitive practices related to patents. 

This decision not only helps preserve the integrity of specialized IP laws but also ensures that competition law is applied judiciously in contexts where patent rights and licensing practices are at the heart of the dispute. Moreover, the judgment sets a precedent for future cases involving similar issues, guiding both the Competition Commission and patentees on their respective roles and responsibilities in such matters.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman
IP ADJUTOR
Patent and Trademark Attorney
ajayamitabhsuman@gmail.com
9990389539

Verizon Trademark Services Llc Vs Vikas Kumar

Date of Judgement:11.07.2023

Case No.CS Comm 220 of 2023

Neutral Citation:2023:DHC:4911

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: Verizon Trademark Services Llc Vs Vikas Kumar

Documentary Evidences Required to Prove a Trademark as a Well-Known Trademark

Abstract:

This article examines the documentary evidence required to establish a trademark as a well-known trademark under the Trade Marks Act, 1999. The article delves into the relevant criteria outlined in Section 11(6) of the Act and explores the evidence presented by the plaintiff to support their claim. The court's observations and final declaration regarding VERIZON's well-known status are also discussed.

Introduction:

In the context of intellectual property rights, trademarks play a crucial role in identifying and distinguishing goods or services offered by a particular entity. The Trade Marks Act, 1999, in India, provides for the recognition of well-known trademarks, affording them broader protection against unauthorized use. This article focuses on the case of VERIZON, which sought the recognition of its mark as a well-known trademark under Section 2(1)(zg) of the Act.

Legal Framework for Recognizing Well-Known Trademarks:

Section 2(1)(zg) of the Trade Marks Act defines a well-known trademark as one that has become so to a substantial segment of the public using the goods or services associated with the mark. Such recognition indicates a connection in the course of trade or the rendering of services between the mark and the person using it. The criteria for determining a well-known trademark are delineated in Section 11(6).

The plaintiff submitted substantial evidence to support VERIZON's claim as a well-known trademark:

(i) Knowledge and Recognition: Documents showcased the widespread knowledge and recognition of VERIZON in the relevant public, especially in India, due to effective promotional strategies.

(ii) Use and Geographical Area: The plaintiff demonstrated the extensive duration and geographical area of VERIZON's use in multiple classes and countries.

(iii) Promotion: Evidence highlighted the significant efforts put into promoting the trademark through advertising, publicity, and presentations on various websites.

(iv) Registration: VERIZON's registration in multiple classes in India and various countries substantiated its well-known status.

(v) Enforcement Records: The plaintiff provided 24 court orders protecting VERIZON's rights as a trademark, and recognition of its well-known status by WIPO Arbitration and Mediation Center in a previous case.

Court's Observations and Declaration:

Upon examining the evidence presented, the court found VERIZON to satisfy the criteria outlined in Section 11(6) for a well-known trademark. Consequently, the court declared VERIZON to be a well-known trademark concerning telecommunication services under Section 2(1)(zg) of the Trade Marks Act.

Conclusion:

This case analysis illustrates the importance of documentary evidence in establishing a trademark as a well-known mark. VERIZON's success in obtaining recognition as a well-known trademark highlights the significance of consistent use, promotion, and enforcement of a mark. The judgment sets a precedent for future cases seeking to prove well-known trademark status and reinforces the protection afforded to well-known marks under the Trade Marks Act, 1999.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Carlton Shoes Limited Vs VIP Industries Limited

Date of Judgement:17.07.2023

Case No.CS Comm 730 of 2019

Neutral Citation:2023:DHC:4865

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Case Title: Carlton Shoes Limited Vs VIP Industries Limited

INTRODUCTION:

In a recent legal battle over trademark rights, both VIP and Carlton filed suits against each other claiming to be the registered proprietor of the trademark "CARLTON". The issue before the Hon'ble Court was to determine the party entitled to proprietary rights in the trademark and to assess whether infringement claims could be granted.

SUIT FOR INFRINGEMENT NOT MAINTAINABLE AGAINST ANOTHER REGISTERED PROPRIETOR: The Court started by acknowledging that both parties were indeed the registered proprietors of the trademark CARLTON. This fact alone posed a challenge to the court, as granting relief for trademark infringement would not be maintainable when both parties had equal rights to the trademark.

THE PRINCIPLE OF TERRITORIALITY OF GOODWILL AFFIRMED: However, the Court delved further into the evidence presented by both parties. VIP failed to establish a trans-border reputation that spilled over into India. A trans-border reputation is when a trademark develops a significant level of goodwill and reputation beyond the boundaries of its country of origin. In this case, VIP could not provide evidence to show that their CARLTON trademark had gained such reputation in India.

THE FIRST IN INDIA HAS SUPERIOR RIGHT OVER FIRST IN THE WORLD MARKET, SUBJECT TO CONDITION: On the other hand, CARLTON India successfully proved that it was the prior adopter and user of the CARLTON trademark in India. This means that they were the first ones to use the CARLTON trademark in connection with their goods or services in India. This played a significant role in the Court's decision-making process. Despite VIP being the prior adopter of the CARLTON trademark worldwide, the Court deemed it immaterial in determining the outcome of the case. The reason was that VIP could not establish any significant level of goodwill or reputation in India, the jurisdiction where the dispute was taking place. Consequently, their prior adoption of the trademark did not hold much weight in the final decision. Taking all these factors into consideration, the Court granted an injunction in favor of CARLTON India, prohibiting VIP from using the CARLTON trademark in India. On the other hand, VIP's request for an injunction was refused, as they failed to establish their rights and reputation in India.

NO RIGHT TO FIRST IN THE WORLD MARKET, IN CASE HE FAILS TO PROVES REPUTATION IN INDIA. This case serves as a reminder that in trademark disputes, the jurisdiction in which the rights are being claimed plays a crucial role. Merely being the prior adopter of a trademark globally does not automatically grant exclusive rights in specific jurisdictions. The party claiming infringement must prove their prior adoption and use in the relevant jurisdiction and establish a significant level of goodwill and reputation. Failure to do so can result in injunctions being granted against them, as was the case with VIP in this matter.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Mahesh Kumar Khemka Vs State of UP

Date of Judgement:12.07.2023

Case No.Criminal Revision No.1799 of 2023

Neutral Citation:2023:AHC:137488

Name of Hon'ble Court:High Court of Allahabad

Name of Hon'ble Judge: Sudhanshu Panday, H.J.

Case Title:Mahesh Kumar Khemka Vs State of UP

THE RELEVANT OBSERVATION OF HON'BLE COURT WHILE ALLOWING THE REVISION PETITION AGAINST FRAMING OF CHARGE

This Revision has been filed against the Order of Ld. Magistrate where charges has been framed against the Petitioner inter alia under the Provisions of Copyright Act.

The Complainant also filed Civil Suit against the Petitioner where in no any relief of injunction was granted.

Reason of non grant of injunction against the Petitioner was that no evidence of any confusion was filed.

In view of the above the order of framing charge against the Petitioner was found not to be tenable in the eyes of law.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

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Aswa Ghosh Vs VIZRT AG

Date of Judgement:19.07.2023

Case No.FAO IPD 5 of 2023

Neutral Citation:NA

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title:Aswa Ghosh Vs VIZRT AG 

Appealability of WIPO Administrative Panel Orders under Section 91 of the Trade Marks Act, 1999

Introduction:

This legal article explores the issue of whether orders passed by the administrative Panel of the World Intellectual Property Organization (WIPO) are appealable under Section 91 of the Trade Marks Act, 1999. Section 91 of the Trademarks Act 1999 provides the right to appeal for any person aggrieved by an order or decision of the Registrar under the Act or the rules made thereunder. The question in this case was whether the administrative Panel of WIPO can be considered as the Registrar under the meaning of the Trademarks Act 1999, thereby allowing appeals under Section 91 against its orders.

The Appeal:

This appeal has been filed under Section 91 of the Trade Marks Act, 1999, challenging an order passed by the administrative Panel of the World Intellectual Property Organization (WIPO). 

Background:

The Trade Marks Act, 1999 is a comprehensive legislation in India governing trademark registration, protection, and enforcement. The Act aims to provide statutory protection to trademarks and prevent unauthorized use or infringement of these marks. It also establishes the office of the Registrar of Trademarks responsible for trademark registration and related matters.

The World Intellectual Property Organization (WIPO) is an international organization responsible for promoting intellectual property rights globally. Among its functions, WIPO operates a dispute resolution service for resolving domain name disputes, known as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is not specific to India but is applied worldwide to resolve disputes related to domain names incorporating trademarks.

Issue:

The central issue in this legal matter was whether an order passed by the administrative Panel of WIPO, functioning under the UDRP, could be considered equivalent to an order of the Registrar under the Trade Marks Act, 1999, thus allowing appeals under Section 91 of the Act.

Decision:

The Hon'ble High Court of Delhi ruled that the administrative Panel of WIPO is not equivalent to the Registrar as defined under the Trade Marks Act, 1999. Therefore, appeals under Section 91 of the Act cannot be entertained against orders passed by the WIPO administrative Panel.

Analysis:

Section 91 of the Trade Marks Act, 1999 provides the right to appeal to "any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder." To understand the applicability of Section 91, it is crucial to interpret the term "Registrar" as used in the Act.

The Act defines "Registrar" as the person appointed by the Central Government to perform the duties of the Registrar of Trademarks under the Act. The Registrar is responsible for registering trademarks, maintaining the trademark registry, and deciding various matters related to trademarks.

WIPO's administrative Panel, on the other hand, is a specialized body that deals with domain name disputes under the UDRP. The UDRP is a distinct mechanism, not governed by Indian law, and is intended to address domain name issues, mainly concerning cybersquatting and trademark infringement in domain names.

The Hon'ble High Court of Delhi's decision essentially rested on the distinction between the roles and functions of the Registrar under the Trade Marks Act and the administrative Panel of WIPO under the UDRP. The court concluded that the administrative Panel does not possess the same authority and legal standing as the Registrar, and, therefore, its orders cannot be challenged under Section 91 of the Trade Marks Act, 1999.

Conclusion:

In conclusion, the Hon'ble High Court of Delhi's decision clarified that orders passed by the administrative Panel of the World Intellectual Property Organization (WIPO) under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) are not appealable under Section 91 of the Trade Marks Act, 1999. As the administrative Panel is not considered the Registrar as defined in the Act, parties dissatisfied with its decisions must seek alternative remedies, if available, to challenge such orders. This ruling emphasizes the importance of understanding the scope and jurisdiction of different dispute resolution mechanisms while protecting intellectual property rights, both at the national and international levels.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

MHG IP Holding Vs Registrar of Trademark

Date of Judgement:18.07.2023

Case No.C.A.Comm IPD TM 49 of 2021

Neutral Citation:2023:DHC:4976

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Case Title:MHG IP Holding (Singapore) PTE. Ltd. Vs The Registrar of Trademark , Delhi

THE RELEVANT OBSERVATION OF HON'BLE COURT WHILE SETTING ASIDE THE ORDER OF REGISTRAR OF TRADE MARK FOR REFUSAL OF TRADEMARK TIVOLI AND REMANDING BACK THE TRADEMARK APPLICATION BY THE REGISTRAR OF TRADEMARK IN VIEW OF SECTION 12 OF THE TRADEMARKS ACT 1999

This appeal has been filed under Section 91 of the Trade Marks Act, 1999, challenging an order passed by the Registrar of Trade Marks on 25th June 2019.

The order refused registration of the Appellant's application (application no. 2835731).

The Registrar examined the Appellant's application and issued an examination report on 19th May 2016. The report cited similar marks that were already registered and raised objections under Section 11 of the Trademark Act.

The Appellant's defense includes the existence of the registration of their domain name www.tivolihotels.com, and their long-term use and adoption of the trademark "TIVOLI" since the year 1933.

This evidence is put forth to convince the Court that their case falls under the exception stated in Section 12 of the Act.

The Court believed that considering the prior adoption and use of the Appellant's trademark since 1933, the Registrar should have taken into account Section 12 of the Trademark Act while evaluating the Appellant's trademark application.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Rxprism Health System Vs Canva PTY Ltd

Date of Judgement:18.07.2023

Case No.CS Comm 573 of 2021

Neutral Citation:2023:DHC:4940

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Case Title:Rxprism Health System Vs Canva PTY Ltd

Patent Infringement Dispute: Unraveling the Contention Surrounding Essential Features

Introduction:

The case at hand centers around a patent infringement dispute where the Plaintiff accuses the Defendant of utilizing their patented technology without authorization. The Plaintiff's patent comprises seven distinct features (A1, A2, A3, A4, B5, C6, and C7), while the Defendant admits to three (A2, A3, and B5) and denies the presence of four (A1, A4, C6, and C7) in their product. The Court granted injunction against the Defendant on the ground that impugned product of the defendant contains essential features which were covered under the plaintiff's patent. 

Contention Surrounding Features A1 and A4:  Layered Presentation (A1): 

The Plaintiff's patent explicitly describes a layered presentation as feature A1. The Defendant's product is alleged to incorporate a similar presentation style, which the Plaintiff argues falls within the scope of their protected invention. Determining whether the Defendant's product includes this feature becomes pivotal in assessing potential infringement.

Picture-in-Picture (PIP) Second Media (A4):

Feature A4 in the Plaintiff's patent involves the incorporation of a Picture-in-Picture (PIP) second media. The Plaintiff contends that the Defendant's product mirrors this feature, presenting a compelling case for infringement. Establishing the presence or absence of this feature in the Defendant's product is crucial in resolving the dispute.

The Significance of Syncing of Audio, Video, and Image:

The Plaintiff emphasizes the importance of the syncing of audio, video, and image in both their product and the Defendant's product. They argue that this feature constitutes an essential element of their patented technology and is also present in the Defendant's product. The presence of this feature strengthens the Plaintiff's case against the Defendant.

The Relevance of the Call-to-Action (CTA) Button's Location:

The Defendant alleged the features described as A2, A3 and B5 are present, whereas the features A1, A4, C6 and C7 are stated to be absent. The Defendant further claims that the location of the Call-to-Action (CTA) button in their product sets it apart from the Plaintiff's patented technology. However, the Plaintiff counters this argument, asserting that the overall effect of the Defendant's product remains similar to the patented technology. This raises questions about the relevance of the CTA button's location in determining infringement.

Comparison of the 'Present and Record' Feature:

The Plaintiff contends that comparing the Defendant's 'Present and Record' feature with the Claims establishes a prima facie case of infringement. The similarities between the steps in both products bolster the Plaintiff's claim against the Defendant.

Court's Decision and Injunction:

The court emphasized that the mere relocation or addition of a non-essential element, such as the CTA [Call to Action]] button, does not absolve the Accused from patent infringement. The Accused's product remained within the scope of the Patentee's patent claims as the core functionality of synchronizing audiovisual content was present in both products.

The essential elements of the Patentee's patent claim were the integration of the first and second media layers to achieve seamless audiovisual synchronization. Despite the Accused's attempts to differentiate their product through the placement of the CTA element, the court concluded that this addition did not alter the core functionality shared with the Patentee's invention.

The Court granted an injunction against the Defendant, ruling that their product contains essential features covered under the Plaintiff's patent. The Court's decision underscores the significance of the essential elements of a patent claim in a patent infringement case.In assessing infringement, courts look beyond superficial differences and focus on the core functionality of the patented invention. The defendant's attempt to distinguish their product by adding a non-essential element did not shield them from liability, as the integral features of the plaintiff's patent were present in the accused product.

The Concluding Note:

The court's ruling in this case highlights the critical role of essential elements in patent claims when evaluating potential infringement. An essential element in a patent claim refers to a feature or combination of features that, when absent, would fundamentally alter the nature of the claimed invention. In other words, these elements are vital to achieving the patented functionality. Ultimately, the Court's decision highlights the importance of essential elements in patent claims in determining infringement.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

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