Google Inc Vs Controller of Patent

Rejection of Patent Application namely "Managing Instant Messaging Sessions on Multiple Devices"

Introduction:

The patent system plays a crucial role in incentivizing innovation by granting exclusive rights to inventors for their creations. However, not all inventions meet the criteria for patentability. This article delves into a recent case concerning the rejection of a patent application titled 'Managing Instant Messaging Sessions on Multiple Devices' under Section 117A of the Patents Act, 1970 in India.

Background of the Case:

The Appellant filed a patent application on July 13, 2007, before the Indian Patent Office (IPO), seeking protection for their invention related to managing instant messaging sessions on multiple devices. The application claimed priority from a US patent application filed on December 30, 2004. However, the IPO refused the application citing lack of novelty and inventive step, primarily based on the disclosure made in a prior art document referred to as D1.

Grounds for Refusal:

The IPO's decision to refuse the patent application was mainly based on the disclosure found in the prior art document D1, which apparently anticipated the claimed invention. The Appellant contended that a specific feature, i.e., mirroring of data from one device to another simultaneously, was not explicitly disclosed in D1 and thus, their invention was novel and non-obvious. However, the court rejected this argument, asserting that D1 indeed facilitated the transfer of data between devices of the same user, thus achieving a similar objective as the claimed invention.

Analysis of the Court's Decision:

The Hon'ble High Court of Delhi upheld the IPO's decision to reject the patent application, emphasizing that the claimed invention lacked inventive step. The court reasoned that despite the Appellant's assertion of a unique feature, the overall concept of transferring data between devices for instant messaging purposes was evident in the prior art, rendering the claimed invention obvious to a person skilled in the art.

Legal Interpretation:

Section 117A of the Patents Act, 1970 allows for appeals against decisions of the IPO relating to the grant or refusal of patents. However, such appeals must be based on specific grounds, including lack of novelty and inventive step. In this case, the court's determination of lack of inventive step underscores the importance of demonstrating an inventive leap beyond what is already known in the field.

Conclusion:

The rejection of the patent application in this case highlights the stringent criteria applied by patent offices in assessing the patentability of inventions. Despite the Appellant's arguments, the court concluded that the claimed invention did not fulfill the requirements of novelty and inventive step, thus affirming the IPO's decision.

Case Title: Google Inc Vs Controller of Patent
Judgment/Order Date: 02.04.2024
Case No: C.A.(COMM.IPD-PAT) 395/2022
Neutral Citation:2024:DHC: 22581
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Novartis AG Vs Natco Pharma Limited

Implications of Refusal of Divisional Applications on Patent Disputes

Introduction:

The case of Novartis Vs. Natco regarding Indian Patent IN 276026 brings to light the complex legal dynamics surrounding divisional patent applications and their impact on patent disputes. At the heart of the matter lies the question of whether the mere refusal of a divisional application can extinguish the underlying patent. This article aims to delve into the legal nuances of this issue based on the findings of Justice Hari Shankar of the Delhi High Court.

Background:

Indian Patent IN 276026, titled “Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors”, is the subject of a patent infringement suit between Novartis and Natco. The suit patent claims a compound known as Ceritinib. Following a judgment on January 9, 2023, the Delhi High Court granted an interim injunction restraining Natco from exploiting the suit patent pending the suit's disposal.

The crux of Natco's argument for seeking vacation of the interim injunction lies in Novartis's filing of a divisional application, IN 5338/DELNP/2014, concerning some claims in the suit patent. Novartis filed this divisional application on July 26, 2014. However, Novartis later chose not to pursue the application, leading to its refusal by the Controller of Patents under section 15 on February 16, 2023.

Effect of Divisional Application Refusal:

The Hon'ble Court emphasized that the rejection of Novartis's divisional application was not based on its merits but rather on Novartis's decision not to pursue it further. This crucial distinction underscores the principle that a mere refusal of a divisional application does not extinguish the underlying patent.

Non-binding Nature of Controller's Decision:

The court clarified that the decision of the Controller of Patents regarding the divisional application is not binding on the court. Instead, the court independently evaluates the merits of the suit patent, especially concerning its vulnerability to invalidity under section 64 of the Patent Act.

Revisitation of Injunction Order:

The Hon'ble Court outlined the circumstances under which the court may revisit an injunction order. According to the second proviso to 039R4, such revisitation is warranted only if there is a change in circumstances or if the injunction causes hardship to the defendant. In this case, neither condition was met.

Suppression of Facts:

The court highlighted that revisiting the interim injunction order on grounds of suppression of facts is contingent upon whether the disclosure could alter the case's outcome. Since the refusal of the divisional application does not invalidate the suit patent, Natco's argument based on suppression of facts was deemed untenable.

Conclusion:

Thus case of Novartis Vs. Natco underscores the importance of understanding the legal implications of divisional patent applications in patent disputes. The findings of Hon'ble Court provide clarity on the non-extinguishing effect of a divisional application refusal on the underlying patent. This case serves as a precedent for future disputes involving divisional applications and underscores the judiciary's role in independently evaluating patent validity irrespective of administrative decisions.

Case Title: Novartis AG Vs Natco Pharma Limited

Judgment/Order Date: 09.04.2024

Case No: CS Comm 229 of 2019

Neutral Citation:2024:DHC:2640

Name of Court: Delhi High Court

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

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Sri Lakshminarayana Rice Mill Vs Chandrika Industries

Examination of Acquiescence and Delay in Trademark Infringement Cases

Abstract:

Using a recent appellate case as a primary example, this article explores the legal principles surrounding these issues and their application in real-world scenarios. Through a comprehensive analysis of the facts, legal arguments, and judicial reasoning, this article aims to elucidate the nuanced considerations involved in trademark litigation.

Introduction:

Trademark infringement cases often hinge on various factors, including the timeline of events, the establishment of rights, and the demonstration of unlawful conduct by the defendant. Among the critical elements examined by courts are the concepts of acquiescence and delay. These factors play a pivotal role in shaping the outcome of disputes, as demonstrated in the appellate case discussed herein.

Background of the Case:

The case under scrutiny arises from a dispute between the plaintiff, Sri Lakshminarayan Rice Mills, and the defendant, concerning the unauthorized use of the plaintiff's registered trademark "MOTHER INDIA" by the defendant's similar mark, "MOTHER LAND." The plaintiff, engaged in marketing superfine rice under the brand name "MOTHER INDIA," sought permanent injunction against the defendant's infringement.

Issues at Trial:

The trial court dismissed the plaintiff's suit, primarily citing delay in filing the case and purported acquiescence on the part of the plaintiff regarding the defendant's actions. However, the appellate court scrutinized these findings, leading to a different conclusion.

Analysis of Acquiescence:

Acquiescence in trademark law refers to the passive acceptance or tolerance of a trademark infringement by the rightful owner, thereby implying consent or waiver of their exclusive rights. In the present case, the trial court's inference of acquiescence was based on the plaintiff's statement regarding the longevity of their business since 1999.

However, the appellate court rightly rejected this premise, emphasizing that mere continuation of business activity does not necessarily imply awareness or acceptance of infringement. The plaintiff's failure to promptly challenge the defendant's unauthorized use of their trademark cannot be equated with acquiescence, especially considering the absence of evidence suggesting any deliberate or voluntary relinquishment of their rights.

Conclusion:

In trademark infringement cases, the determination of acquiescence and delay requires a meticulous examination of the facts, legal principles, and equitable considerations. While the mere passage of time may raise questions regarding the diligence of the aggrieved party, it is essential to assess the circumstances holistically and ascertain whether genuine grounds exist for the delay. The appellate court's decision in the case at hand underscores the importance of such nuanced analysis, reaffirming the plaintiff's right to protect their intellectual property against unauthorized use and deceptive imitations.

Case Title: Sri Lakshminarayana Rice Mill Vs Chandrika Industries
Judgment/Order Date: 12.03.2024
Case No: RFA No. 1241 of 2009
Neutral Citation:2024:KHC:10144
Name of Court: Karnataka High Court
Name of Hon'ble Judge: Anant Ramanath Hegde H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

S.V.T Products Vs S.S Pandian And Sons

Challenging the Authenticity of Invoices at interim stage in a Trademark Dispute

Introduction:

The case at hand involves a dispute over trademarks relating to the sale of asafoetida. The plaintiff alleges infringement and passing off of their registered trademark "HOTEL SPECIAL" by the defendant's use of the similar mark "SVT HOTEL SPECIAL". The crux of the matter lies in the authenticity of the invoices presented by the defendant to substantiate their claim of prior use, which has been challenged by the plaintiff.

Legal Framework:

The legal framework governing interim restraint orders under Order 39 Rules 1 and 2 of the Code of Civil Procedure provides the court with discretionary power to grant or refuse such injunctions based on the facts and circumstances of each case.

Plaintiff's Allegations:

The plaintiff asserts that their trademark "HOTEL SPECIAL" has gained goodwill and reputation in the market for the sale of asafoetida. They argue that the defendant's use of the deceptively similar mark is likely to cause confusion among consumers, thereby harming their business interests.

Defendant's Defence:

On the other hand, the defendant contends that they are the prior user of the mark "SVT HOTEL SPECIAL" for asafoetida since 1990. They challenge the validity of the plaintiff's trademark registration and argue that the disputed mark lacks distinctiveness.

Challenge to Invoices:

To discredit the invoices produced by the defendant, the plaintiff presents additional evidence in the form of newspapers dating back to 1990-1996. These newspapers feature advertisements from various traders and merchants with six-digit landline telephone numbers, whereas the defendant's invoices contain seven-digit numbers during the same period.

Court's Observations: The Hon'ble High Court, even at the interim stage, scrutinizes the authenticity of the defendant's invoices. It observes that the discrepancy in the telephone numbers raises serious doubts about the genuineness of the invoices presented by the defendant.

Decision:

Based on the prima facie evidence presented, the Court discredits the alleged invoices of the defendant, considering them suspicious. Consequently, the Court rejects the defendant's appeal against the interim restraint order.

Conclusion:

In intellectual property disputes, particularly concerning trademarks, the authenticity of evidence presented, such as invoices, holds significant weight in determining the outcome of interim restraint orders. The case exemplifies the importance of thorough scrutiny by the court, even at the interim stage, to ensure the integrity of the legal process and protection of the parties' rights. Ultimately, the decision to discredit the defendant's invoices underscores the judiciary's commitment to upholding fairness and justice in intellectual property disputes.

Case Title: S.V.T Products Vs S.S Pandian And Sons
Order Date: 04.04.2024
Case No. MFA NO.2680 OF 2023 (IPR)
Neutral Citation:2024:DHC:2510
Name of Court: Karnataka High Court
Name of Hon'ble Judge: Anant Ramanath Hegde H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Jaquar and Company Pvt. Ltd. Vs Ashirvad Pipes Private Limited

A Case Study of ARTIZE and TIAARA Vs. ARTISTRY and TIARA

Introduction:

In this case study, we delve into the legal issues surrounding the dispute between the plaintiff, claiming prior adoption and use of the marks ARTIZE and TIAARA, and the defendant, accused of infringing on these marks with ARTISTRY and TIARA. The subsequent legal proceedings, including the filing of a rectification petition, highlight the nuanced application of trademark law under the Trade Marks Act.

Background:

The plaintiff asserts to be the prior user and adopter of the marks ARTIZE and TIAARA, with continuous usage dating back to June 2008 and 2016, respectively. The defendant, however, introduced sanitary ware products under the brands ARTISTRY and TIARA, as evidenced by an advertisement in the November 2022 edition of Casa Vogue. This prompted the plaintiff to file a suit alleging trademark infringement, citing similarities between the defendant's marks and their own.

Legal Analysis:

The plaintiff's case hinges on Section 29 of the Trade Marks Act, which delineates the conditions for trademark infringement. To establish infringement, the plaintiff must demonstrate that their registered trademarks are being used by the defendant in a manner that causes confusion among consumers. Additionally, the plaintiff has filed a rectification petition against the defendant's registration of the mark ARTISTRY, further complicating the legal landscape.

The Interim Injunction:

The Hon'ble High Court of Delhi, in its interim injunction, identified several key factors supporting the plaintiff's claims. Firstly, the court acknowledged the registered status of the plaintiff's trademarks, ARTIZE and TIAARA, underscoring their legal protection.

Secondly, it recognized the defendant's usage of the marks ARTISTRY and TIARA in the course of trade, indicating potential infringement. Thirdly, the court noted the deceptive similarity between the defendant's mark ARTISTRY and the plaintiff's mark ARTIZE, as well as the near-identical nature of TIARA to TIAARA. These observations align with the criteria outlined in Section 29(1) of the Trade Marks Act, strengthening the plaintiff's case for infringement.

Moreover, the plaintiff's decision to file a rectification petition against the defendant's registration of the mark ARTISTRY reflects a strategic effort to challenge the validity of the defendant's trademark. This legal maneuver underscores the plaintiff's commitment to protecting their intellectual property rights and highlights the significance of thorough trademark registration procedures.

Implications:

The ARTIZE and TIAARA vs. ARTISTRY and TIARA case serves as a compelling illustration of the complexities inherent in trademark infringement disputes. It underscores the importance of diligent trademark monitoring and registration, as well as the strategic utilization of legal remedies such as rectification petitions.

Conclusion:

The outcome of this case will likely have broader implications for trademark law jurisprudence in India, particularly regarding the interpretation and application of Section 29 of the Trade Marks Act. Regardless of the final verdict, this case underscores the paramount importance of protecting intellectual property rights in an increasingly competitive commercial landscape.

Case Title: Jaquar and Company Pvt. Ltd. Vs Ashirvad Pipes Private Limited
Order Date: 01.04.2024
Case No. CS Comm 670 of 2023
Neutral Citation:2024:DHC:2510
Name of Court: Delhi High Court
Name of Hon'ble Judge: C. Hari Shankar H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Allied Blenders And Distillers Limited Vs Samvid Ventures Private Limited

Former bottler of Plaintiff, was not allowed to plead Trademark to be generic

Introduction:

The case of WESTERN CHOICE vs. OFFICER'S CHOICE revolves around a dispute over trademark infringement and passing off. The Plaintiff, a well-established brand with multiple registered trademarks under "OFFICER'S CHOICE", filed a suit seeking a permanent injunction against the Defendants for using the mark "WESTERN CHOICE", alleging deceptive similarity and potential damage to their brand reputation. This article provides a detailed legal analysis of the case, examining the arguments presented by both parties and the court's decision.

Background:

The Plaintiff asserts its rights over the trademark "OFFICER'S CHOICE" based on its extensive use and registration as a well-known mark. The Defendants, on the other hand, claim that there is no substantial similarity between their mark "WESTERN CHOICE" and the Plaintiff's mark, and that the former's adoption was based on legitimate reasons, such as manufacturing and sales territory in Goa.

Trademark Similarity:

The primary issue in this case is whether there exists a likelihood of confusion between the Plaintiff's mark "OFFICER'S CHOICE" and the Defendant's mark "WESTERN CHOICE". Trademark law protects against such confusion to prevent consumer deception. The court must assess visual, phonetic, and structural similarities between the marks to determine infringement.

Defendant's Adoption of the Mark:

The Defendants argue that their adoption of the mark "WESTERN CHOICE" was not in bad faith and was based on legitimate business reasons. They contend that the term "CHOICE" is generic and cannot be monopolized by any party. However, the Plaintiff asserts that the adoption was intended to capitalize on the reputation and goodwill associated with their mark.

Defendant's Relationship with Plaintiff:

The Plaintiff alleges a relationship between the Defendants, with Defendant No. 2 being the former bottler of the Plaintiff's products. This relationship raises concerns of potential misuse of confidential information or trade secrets by the Defendants.

Sales Figures and Market Impact:

The Plaintiff presents evidence of the Defendants' sales figures, arguing that they are not substantial compared to the overall alcohol market. However, even minimal sales can cause damage to a brand if they lead to consumer confusion or dilution of the Plaintiff's mark.

Court Decision:

After considering the arguments presented by both parties, the court decided to grant a permanent injunction against the Defendants. The court observed the relationship between Defendant No. 1 and Defendant No. 2, the former being the Plaintiff's former bottler. Additionally, the court noted the potential for confusion between the marks and the Plaintiff's established reputation in the market.

Conclusion:

The case of WESTERN CHOICE vs. OFFICER'S CHOICE highlights the complexities of trademark disputes, particularly concerning similarity, adoption, and market impact. It underscores the importance of protecting brand identity and preventing consumer confusion. The court's decision to grant the injunction serves to uphold trademark rights and maintain market integrity.

Case Title: Allied Blenders And Distillers Limited Vs Samvid Ventures Private Limited
Order Date: 22.03.2024
Case No. CS Comm 240 of 2024
Neutral Citation:N.A.
Name of Court: Delhi High Court
Name of Hon'ble Judge: Anish Dayal H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539