Khadi and Village Industries Vs Girdhar Industries

Introduction:

The case at hand revolves around a contentious trademark dispute concerning the mark "KHADI." While the plaintiff's trademark pertains to the implementation of programs for the development of Khadi and related industries, the defendant has utilized variations of the mark for products like soaps and detergents. This article delves deep into the legal intricacies of establishing goodwill in the context of passing off actions, drawing insights from the court's observations and the broader legal framework.

Legal Background:

The concept of passing off is rooted in the protection of intellectual property rights and consumer interests. It prevents one party from misrepresenting its goods or services as those of another, thereby causing confusion among consumers and potentially harming the goodwill and reputation of the latter.

To succeed in a passing off action, the plaintiff typically needs to establish three key elements:

1.Goodwill and Reputation: The plaintiff must demonstrate that they have built a substantial reputation or goodwill in the market concerning the asserted mark or trade name.

2.Misrepresentation: The plaintiff must show that the defendant has made a misrepresentation leading or likely to lead the public to believe that the goods or services offered by them are those of the plaintiff.

3.Damage:The plaintiff must prove that they have suffered or are likely to suffer damage due to the defendant's actions.

Analysis of the Court's Observations:

In the present case, the court's evaluation primarily centered on the establishment of goodwill and reputation by the plaintiff. The court meticulously examined whether the plaintiff had prima facie evidence to substantiate the claim of having acquired goodwill or reputation for the mark "KHADI," particularly concerning soaps, before the defendant's adoption of the mark.

Lack of Prima Facie Evidence:

The court's observation underscores a fundamental principle in passing off actions: the importance of establishing prior goodwill and reputation. In the absence of such evidence, the plaintiff's claim becomes untenable.

The court noted that there was no evidence to suggest that the plaintiff had acquired goodwill or reputation in the mark "KHADI" for soaps before 2001, the year the defendant began using the mark "GIRDHAR KHADI." Furthermore, even by 2005, when the defendant's mark was registered in the plaintiff's favor, the plaintiff failed to demonstrate prior goodwill or reputation for soaps.

Implications:

The court's decision highlights the stringent evidentiary requirements in passing off actions, especially concerning the establishment of goodwill and reputation. Mere registration of a trademark does not automatically confer the right to claim passing off against similar or related marks.

For plaintiffs, especially in cases involving established marks, it becomes imperative to maintain meticulous records demonstrating the acquisition and sustenance of goodwill and reputation over time, especially concerning specific goods or services.

The Concluding Note:

From a broader legal standpoint, this case serves as a reminder for businesses and trademark holders to proactively protect their intellectual property rights, not just through registration but also by building and preserving goodwill and reputation in the marketplace.

In conclusion, while the plaintiff's endeavors to protect the mark "KHADI" are commendable, the court's decision underscores the criticality of robust evidence, particularly concerning goodwill and reputation, in establishing a successful passing off action.

Case Title: Khadi and Village Industries Vs Girdhar Industries

Date of Judgement/Order:28.12.2023

Case No. CS Comm 878 of 2023

Neutral Citation: 2023:DHC:9435

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Van Tiboli Vs K Srinivas Rao

Defense on the Basis of Erroneously Granted Trademark Registration

Introduction:

The case concerning the trademarks 'GK hair' of the Plaintiff and 'GK wellness' of the Defendants delves into the intricacies of trademark registration and its implications on legal defenses.

Background:

The Plaintiff had been utilizing the trademark 'GK hair' since 2010 concerning hair care products and had obtained rightful registration for the same. Contrarily, the Defendant secured a trademark registration for 'GK wellness' in 2021. The contention arose from the Plaintiff's assertion that the Defendant's trademark registration was erroneously granted, sidestepping the established procedure of trademark registration.

The Doctrine of Prima Facie Invalidity:

The cornerstone of the dispute lies in the principle that no legal right can emanate from an illegal act. The Hon'ble High Court of Delhi's pronouncement emphasizes this doctrine. When a trademark registration is obtained in contravention of the statutory scheme, such a registration is deemed invalid from its inception, known as 'prima facie invalid ab initio'.

The term 'ab initio' signifies that the act or decision was flawed right from the beginning. In this context, the grant of trademark registration to the Defendant was flawed due to the failure to consider the timely opposition raised by the Plaintiff. Consequently, any rights purportedly derived from such an erroneously granted registration stand on shaky legal ground.

Implications for the Defendant:

The ramifications of holding a trademark that is prima facie invalid:

One of the primary benefits of trademark registration is the exclusive right to use the mark concerning the goods or services it represents. However, an erroneously granted registration deprives the registrant of this exclusive right.

The Concluding Note:

The defense predicated on an erroneously granted trademark registration, as illustrated by the case between the Plaintiff's 'GK hair' and the Defendant's 'GK wellness', is untenable in the eyes of the law.

The doctrine of prima facie invalidity reinforces the sanctity of the statutory scheme governing trademark registration, ensuring that rights emanate from legitimate and procedurally sound actions.

Consequently, a registrant cannot shield themselves from legal repercussions or claim exclusive rights based on a registration obtained through circumvention of established procedures.

Case Title: Van Tiboli Vs K Srinivas Rao

Date of Judgement/Order:26.12.2023

Case No. CS Comm 339 of 2023

Neutral Citation: 2023:DHC:9407

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Archian Foods Private Limited Vs Anchal Trading Company

Trademark Injunction in Relation to Eateries

Introduction:

The realm of intellectual property rights, particularly trademark law, is a crucial mechanism to protect businesses from unfair competition and safeguard consumers from confusion. The case concerning the trademark 'LAHORI ZEERA' offers a compelling study into the intricacies of trademark protection in the context of eateries industry.

Background of the Case:

The Plaintiff asserted rights over the trademark 'LAHORI ZEERA', having employed it since 2013 for a range of traditional Indian non-alcoholic beverages. The Plaintiff's rights extended beyond mere trademark registration, encompassing device registrations, copyright ownership, and design registrations for the distinctive bottle in which its products were marketed.

Contrastingly, the Defendant's usage of 'PNS LAHORI ZEERA' for identical products presented a clear instance of potential trademark infringement, compelling the Plaintiff to seek judicial intervention.

Judicial Analysis:

The Hon'ble High Court of Delhi's decision draws inspiration from pertinent case law, notably the landmark ruling in *Dominos Ip Holder LLC & Anr. vs Ms Dominick Pizza & Anr. (2023/DHC/7126)*. The court in the Dominos case underscored the criticality of preventing imitative attempts in sectors like eateries, where consumable items are at the forefront of business operations.

Drawing parallels, the Court in the LAHORI ZEERA case recognized the inherent risks associated with allowing similar trademarks in the eatories sector. The potential for consumer confusion, misattribution of quality, and dilution of the Plaintiff's established goodwill formed the crux of the Court's reasoning.

Legal Principles Invoked:

1. Likelihood of Confusion: One of the foundational tenets of trademark law is to prevent consumer confusion. The Court likely found that the similarity between 'LAHORI ZEERA' and 'PNS LAHORI ZEERA' was sufficient to confuse consumers, thereby infringing upon the Plaintiff's rights.

2. Dilution of Goodwill: Trademarks, especially those with a longstanding presence in the market, accrue significant goodwill. Any attempt to imitate such trademarks can dilute this goodwill, impacting the original trademark holder's market standing.

3.Protection of Distinctiveness: The distinctiveness of a trademark lies at the heart of its legal protection. The Court's decision underscores the importance of safeguarding this distinctiveness, especially in sectors like eateries, where branding plays a pivotal role.

Implications and Conclusion:

The Delhi High Court's injunction against the use of 'PNS LAHORI ZEERA' serves as a robust precedent in the domain of trademark law, particularly concerning the hospitality industry. By prioritizing consumer protection, preventing dilution of goodwill, and upholding the distinctiveness of trademarks, the Court reaffirms the judiciary's commitment to fostering fair competition.

Furthermore, this case underscores the need for businesses, especially in the hospitality sector, to exercise due diligence when adopting trademarks. A comprehensive trademark search, legal consultation, and adherence to established legal principles can preempt costly litigations and reputational damages.

The Concluding Note:

In sum, the LAHORI ZEERA case elucidates the delicate balance between fostering innovation and ensuring market integrity. As businesses navigate the intricate maze of intellectual property rights, judicial precedents like this serve as guiding beacons, illuminating the path towards equitable and just outcomes.

Case Title: Archian Foods Private Limited Vs Anchal Trading Company

Date of Judgement/Order:12.12.2023

Case No. CS Comm 878 of 2023

Neutral Citation: N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Inventprise, Inc Vs The Controller Of Patents

Interpretation and Implications of the Biological Diversity Act in Patent Applications

Introduction:

The interplay between intellectual property rights and biological resources has long been a subject of contention, especially in jurisdictions where biodiversity is rich and bioprospecting is prevalent. The case at hand presents a nuanced examination of the rights and obligations of parties involved when seeking patent protection over inventions that may, directly or indirectly, relate to biological resources sourced from a particular jurisdiction.

Background:

In this case . the Petitioner filed application for patent protection for its ‘Heat Stable Liquid Rotavirus Vaccine’. The National Biodiversity Authority (NBA) of India asserted that under Section 6 of the Biological Diversity Act, prior permission was mandatory if the invention was based on any research or information derived from a biological resource originating from India.

Relevance of the Biological Diversity Act

The Biological Diversity Act of India, enacted to regulate access to biological resources and associated knowledge, seeks to ensure equitable sharing of benefits arising out of their utilization. Section 6 of the Act mandates that any person seeking intellectual property rights over an invention based on biological resources from India must obtain prior approval from the NBA.

Key Legal Issues:

1. Definition of 'Biological Resource': Central to the dispute is the determination of whether the 'Heat Stable Liquid Rotavirus Vaccine' qualifies as a 'biological resource' under the Act. The Act does not provide an exhaustive definition, making it imperative to interpret the term contextually and purposively.

2. Violation of Section 6: The NBA's contention that the Petitioner violated Section 6 hinges on the interpretation of the Act vis-à-vis the nature of the invention. The Act's intent is clear: to regulate and ensure fair and equitable sharing of benefits arising from the commercial use of biological resources.

3. Benefit Sharing Component: The NBA's decision to approve the application with a higher benefit-sharing component underscores the Act's emphasis on equitable sharing of benefits derived from the commercialization of biological resources. This serves as a deterrent against potential biopiracy and ensures that local communities benefit from the commercial exploitation of their resources and knowledge.

Court's Directive:

The Court's directive to the NBA to determine whether the invention pertains to a biological resource necessitates a comprehensive and reasoned order. The involvement of an Expert Committee, potentially assisted by senior officials from the CGPDTM (Controller General of Patents, Designs and Trade Marks), underscores the complexity and significance of the matter.

Implications and Way Forward:

1. Clarity on Definitions: There is an inherent need for clarity in defining what constitutes a 'biological resource' under the Act to avoid ambiguities and legal disputes in the future.

2. Balancing Interests: While protecting national interests and ensuring equitable benefit-sharing is paramount, it is equally essential to strike a balance that encourages innovation and foreign investment.

3. Collaborative Approach: Encouraging a collaborative approach between the NBA, inventors, and foreign entities can foster transparency, mutual respect, and understanding, thereby mitigating potential disputes and promoting responsible bio prospecting.

The concluding Note:

The case exemplifies the challenges and complexities associated with reconciling intellectual property rights with biodiversity conservation and equitable benefit-sharing. As jurisdictions grapple with similar issues globally, the need for a harmonized approach that respects national sovereignty, promotes innovation, and ensures equitable sharing of benefits remains paramount.

The Case Law Discussed:

Case Title: Inventprise, Inc Vs The Controller Of Patents

Date of Judgement/Order:20.12.2023

Case No. W.P.(C)-IPD 26/2023

Neutral Citation: N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Priya Randolph Vs Deputy Controller of Patent and Design

Background:

The Appellant, seeking protection for an invention titled "For selectively concealing physical address information," lodged Application No. 201641026786. However, the Controller of Patents, in a decision dated July 31, 2017, declined the grant of patent. The primary contention of the Controller was that the invention merely represented a business method. Consequently, the Controller invoked Section 3(k) of the Patent Act to justify the rejection.

Section 3(k) of the Patent Act:

Section 3(k) of the Patent Act serves as a crucial provision that delineates what cannot be patented. Specifically, it bars patents for inventions that are nothing more than business methods. This provision underscores the legislative intent to ensure that patents are granted for technological innovations rather than mere methods of doing business.

High Court's Observations:

Upon appeal, the High Court undertook a meticulous examination of the matter. The Court's primary contention was that the essence of the claimed invention wasn't rooted merely in a business method. Instead, the invention involved the deployment of hardware, software, and firmware. These components collectively aimed at enhancing data privacy and protection mechanisms. 

Implications: 

The Court astutely observed that the mere involvement of a business process or method in an invention doesn't ipso facto render it unpatentable. What is pivotal is the overarching nature and essence of the invention. In this context, since the invention under consideration primarily revolved around data privacy mechanisms implemented through tangible technological components, labelling it as a mere business method was untenable.The decision holds significance for future patent applications that may incorporate business methods within technological frameworks. 

The Case Law Discussed:

Date of Judgement/Order:20.12.2023

Case No. OA/13/2018/PT/CHN

Neutral Citation No:2023:MHC;5450

Name of Hon'ble Court: Madras High Court

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, HJ

Case Title: Priya Randolph Vs Deputy Controller of Patent and Design

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

House of Diagnostics LLP Vs House of Pathology

The conscious attempt by the Defendant in copying the idea behind Plaintiff's Registered Trademark

Introduction: When an entity deliberately mimics another's trademark, it not only infringes upon intellectual property rights but also confuses consumers, leading to potential financial harm for the original brand. The case at hand, involving the Plaintiff's registered trademark "HOD" and "House of Diagnostics," and the Defendant's use of "HOP" and "House of Pathology," exemplifies the intricacies and implications of such disputes. Background: Since 2008, the Plaintiff has established its brand identity under the trademark "HOD," further embellished with the words "House of Diagnostics." This registration pertains explicitly to diagnostic services. However, the Defendant's introduction of a strikingly similar trademark, "HOP," along with the accompanying "House of Pathology," for identical diagnostic services, sparked this legal confrontation. The Court's Observations: The Hon'ble High Court of Delhi's intervention became imperative to address the contentious issue. The court's observations form the crux of the case's outcome: Deliberate Copying of Idea:

The court's astute observation highlighted the Defendant's conscious attempt to emulate the Plaintiff's brand identity. By adopting the nomenclature "House of Pathology," the Defendant unmistakably mirrored the Plaintiff's "House of Diagnostics." Such intentional replication indicates not mere coincidence but a calculated strategy to benefit from the Plaintiff's established goodwill and reputation. Identical Layout and Placement:

The visual representation of both trademarks further accentuated the Defendant's infringement. The Defendant's use of "HOP" in bold, juxtaposed with "House of Pathology" in smaller letters, mirrored the Plaintiff's design of "HOD" and "House of Diagnostics." This identical layout underscores the Defendant's attempt not only to replicate the name but also the visual essence of the Plaintiff's trademark. Confusion and Misrepresentation:

Trademark infringement transcends mere copying; it delves into the potential confusion and misrepresentation it can cause among consumers. Given the striking similarities between the Plaintiff's and Defendant's trademarks, consumers could easily misconstrue the origin or affiliation of services, jeopardizing the Plaintiff's market position and consumer trust. Legal Implications and Conclusion: The Hon'ble High Court of Delhi's grant of an interim injunction in favor of the Plaintiff underscores the severity of the Defendant's infringement. Such judicial intervention reaffirms the sanctity of trademark rights, emphasizing the need to protect businesses from unfair competition and brand dilution. In essence, this case exemplifies the pivotal role of trademark law in safeguarding business identities. The Defendant's conscious attempt to replicate the Plaintiff's trademark, both in name and design, epitomizes trademark infringement's ramifications.

The Case Law Discussed:

Case Title: House of Diagnostics LLP Vs House of Pathology

Date of Judgement/Order:12.12.2023

Case No. CS Comm 869 of 2023

Neutral Citation No:N.A.

Name of Hon'ble Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Scotch Whisky Association Vs J K Enterprises

The locus of Registered Proprietor to Institute Suit in Geographical Indication Infringement Cases

Introduction:

The protection and enforcement of GIs are pivotal to safeguarding regional specialties from unauthorized use or imitation. A recent judgment by the Hon'ble High Court of Madhya Pradesh delineates the contours of the locus of a Registered Proprietor (RP) to initiate legal proceedings concerning GI infringement. This article elucidates the intricacies of the judgment and its implications on GI protection jurisprudence.

Background:

The Plaintiff sought protection for its GI Application No. 151 concerning Scotch Whisky under the Geographical Indications of Goods (Registration and Protection) Act, 1999. However, the Ld. Trial Court, invoking Order 7 Rule 11 of the Code of Civil Procedure (CPC), rejected the plaint due to the non-impleadment of an Authorized User (AU). The order, dated 28.10.2021, in CS no. 07/2020 from the Commercial Court in District Indore, became the subject of scrutiny before the Hon'ble High Court.

High Court's Analysis:

Interpretation of Order 7 Rule 11 CPC: 

The Hon'ble High Court meticulously analyzed Order 7 Rule 11 CPC and categorically stated that the non-joinder or joinder of necessary parties does not serve as a ground for the outright rejection of a plaint. The court emphasized that procedural aspects like joinder/non-joinder can be addressed at subsequent stages of the trial, ensuring that mere procedural irregularities do not stifle substantive rights.

Locus of Registered Proprietor: 

Delving into the Geographical Indications Act, 1999, and the accompanying Rules of 2002, the High Court elucidated the pivotal role of the Registered Proprietor. The court underscored that the genesis of a GI tag emanates from the application of the Registered proprietor or another applicant, emphasizing that the Registered proprietor stands distinct and independent of the Authorized User . The court's observation elucidates that while the RP can act independently, they must be kept informed regarding any additions or alterations concerning the AU in the GI register.

Independence of RP (Registered Proprietor) vis-à-vis AU (Authorized User): 

The judgment significantly underscores the autonomy and distinct identity of the RP concerning the GI Act. The RP's capacity to institute actions, including renewal or seeking additional protection, reinforces their pivotal role in ensuring the integrity and protection of the geographical indication.

Implications and Conclusion:

The judgment by the Hon'ble High Court of Madhya Pradesh accentuates the pivotal role of the Registered Proprietor in the realm of Geographical Indications. By emphasizing the RP's autonomy and independent locus to institute legal proceedings, the court fortifies the legislative intent behind the GI Act, ensuring robust protection against infringements.

The Concluding Note:

In conclusion, the judgment reaffirms the foundational principles underpinning GI protection in India, ensuring that the interplay between substantive rights and procedural compliance strikes a harmonious balance, fortifying the protection accorded to regional specialties and upholding the sanctity of Geographical Indications.

The Case Law Discussed:

Case Title: Scotch Whisky Association Vs J K Enterprises

Date of Judgement/Order:18.12.2023

Case No. Misc. Petition No. 4543 of 2021

Neutral Citation: N.A.

Name of Hon'ble Court: Madhya Pradesh High Court [Indore Bench]

Name of Hon'ble Judge: Sushrut Arvind Dharmadhikari and Hirdesh, HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Mr.Tony Mon George Vs Deputy Controller of Patents & Designs

New form of Known substances and Bar of Section 3 (d) of Patent Act 1970 

Introduction:

Section 3(d) of the Patents Act, 1970, serves as a safeguard against evergreening of patents. This article delves into a recent decision by the Hon'ble High Court concerning the application of Section 3(d) to the compound RTA-408 and its polymorphic forms.

Background:

The Controller of Patents, in an order dated 18.09.2020, refused the grant of a patent for the compound RTA-408 under Patent Application No.8486/DELNP/2014. The primary contention revolved around the applicability of Section 3(d) of the Patents Act, 1970. The Applicant, in their defense, posited that RTA-408 was not a known substance and hence Section 3(d) was inapplicable.

Understanding Section 3(d):

Section 3(d) of the Patents Act, 1970, is a provision aimed at ensuring that mere trivial modifications of known substances do not receive patent protection. The provision essentially bars patents for:

"the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant."

This provision is instrumental in preventing 'evergreening', where patentees attempt to extend patent protection by making trivial modifications to known substances without substantial improvement in efficacy.

The High Court's Analysis:

The Hon'ble High Court undertook a meticulous examination of the claimed invention vis-à-vis RTA-408 and its comparison with another substance, TX-63682. The court elucidated that the claimed invention contains additional fluorine atoms, delineating a distinct chemical composition from RTA-408. This differentiation is crucial as it indicates that the invention is not merely a new form of RTA-408 but possesses distinct chemical attributes.

Furthermore, the court took cognizance of the structural similarities between the claimed invention and TX-63682, particularly highlighting the di-methyl substitution in the former. Despite potential structural resemblances, the presence of this substitution underscores the uniqueness of the claimed invention. Hence bar of Section 3 (d) was held not to be applicable in the instant case.

Implications and Conclusion:

The decision by the Hon'ble High Court in this case provides significant clarity on the interpretation and application of Section 3(d) of the Patents Act, 1970. By emphasizing the distinct chemical composition and structural variations, the court elucidated that the claimed invention cannot be categorized merely as a new form of a known substance.

The Concluding Note:

While Section 3(d) serves as a bulwark against the unwarranted extension of patent protection, its application necessitates a rigorous examination of the substance's characteristics. The decision concerning RTA-408 exemplifies the judiciary's commitment to upholding the principles enshrined in the Patents Act, 1970, and ensuring that patent protection is conferred judiciously and in consonance with legislative intent.

The Case Law Discussed:

Case Title: Mr.Tony Mon George Vs Deputy Controller of Patents & Designs

Date of Judgement/Order:20.12.2023

Case No. (T) CMA (PT) No.150 of 2023

Neutral Citation No:2023:MHC;5451

Name of Hon'ble Court: Madras High Court

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Institute of Directors Vs Worlddevcorp Tachnology and Business

The Effect of statement made by a party in reply to Trademark Examination Report

Introduction:

The case in question pertains to a dispute between two entities: the Plaintiff, holding the trademark 'IOD' representing 'Institute of Directors,' and the Defendant, accused of infringing upon this trademark by using 'Directors Institute.'

Factual Background:

The Plaintiff initiated the litigation, asserting its exclusive rights over the trademark 'IOD,' claiming that the Defendant's use of 'Directors Institute' infringed upon its registered mark. However, the Defendant's defense was anchored on a seemingly contradictory stance adopted by the Plaintiff during the examination of its trademark application.

Contradictory Standpoint of the Plaintiff:

A pivotal point of contention arose from the Plaintiff's response to the examination report concerning its trademark application. In its reply, the Plaintiff contended that the words constituting the mark, being common English language words, were merely descriptive in nature. The Plaintiff argued that such generic and descriptive terms could not vest exclusive proprietary rights in any single entity.

Legal Analysis:

The case unravels complex legal intricacies concerning the doctrine of 'acquired distinctiveness' and the principle of 'estoppel by conduct.'

Acquired Distinctiveness:

The Plaintiff's initial stance, recognizing the descriptive nature of 'IOD,' may have inadvertently weakened its claim to inherent distinctiveness. This acknowledgment could be leveraged by the Defendant to argue against the exclusive proprietary rights asserted by the Plaintiff.

Estoppel by Conduct:

The doctrine of estoppel prevents a party from asserting a claim or right that is contradictory to its previous actions or statements if such assertion would unfairly prejudice another party. In the present case, the Plaintiff's earlier admission regarding the descriptive nature of the mark could estop it from subsequently asserting exclusive rights over the same mark against the Defendant.

Judicial Pronouncement:

The Hon'ble High Court of Delhi, in its wisdom, declined to grant an injunction in favor of the Plaintiff. The Court's decision seems to be predicated on the Plaintiff's own admission regarding the descriptive nature of the mark 'IOD.' By adopting a contradictory stance, the Plaintiff inadvertently undermined its claim, thereby providing the Court with a rationale to rule in favor of the Defendant.

The Concluding Note:

Trademark disputes necessitate a meticulous examination of facts, legal principles, and precedents. The case involving the Plaintiff's trademark 'IOD' underscores the significance of consistency in legal assertions and the potential ramifications of adopting contradictory stances.

The Case Law Discussed:

Case Title: Institute of Directors Vs Worlddevcorp Tachnology and Business

Date of Judgement/Order:11.12.2023

Case No. CS Comm 611 of 2023

Neutral Citation No:2023:DHC;8923

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539