Disclosure and Coverage in a Selection Patent

The grant of interim injunction in a lawsuit pertaining to the infringement of patent is always a complex matter. There are various factors that the court has to consider while granting interim injunctions. These factors are closely tied to the nature and purpose of the patent protection system, the goals for promoting innovation and the interests of end-users.

For a start, the age of the patent plays an important role. The courts will have to make a distinction if the patent is relatively old or a new one. In case of an old patent, emphasis will be laid on whether the patentee has made efforts to commercialize the invention after its grant or not.

If he has been passive and not exploited the invention, then the court may decide to not grant an interim injunction as the failure to commercialize the invention implies that the patent holder is not being materially affected or prejudiced by the potential infringer. However, for a new patent, the court may be more inclined to grant an interim injunction, as the patentee still requires sufficient time to explore the commercial benefits of the invention.

Besides, in the case of a selection patent, disclosure and coverage are aspects that the Hon’ble Court considers to grant the interim injunction. If a Patent is covered under a prior art, would there be specific disclosure of the subsequent Patent, in order to defeat the subject matter Patent by virtue of prior art? Below are the essential particulars of the subject matter case, along with the rationalization presented by the Honorable Court.

THE SUBJECT MATTER SUIT PATENT:

On 05.10.2010, the Plaintiff was awarded Patent IN 243301 titled as 8-(3 AMINOPIPERIDIN–1–YL)-XANTHINE COMPOUNDS, with priority dating back to 21.08.2002.

This patent pertained to the subject matter of the suit. In 2012, linagliptin Tablets were introduced in the Indian market, which were covered by the suit patent.

THE GENUS PATENT:
The Plaintiff had previously been granted a genus patent, IN 227719, for XANTHINE COMPOUNDS with the Markush formula.

The patent had expired on 21.02.2022. The suit patent falls under the cover of the Markush Patent IN 227719, and it is a selection patent.

THE CONTENTION OF DEFENDANTS IN BRIEF:

The Defendants claimed that the Plaintiff is attempting to prolong the monopoly for linagliptin products through the subject matter Suit Patent, even though its validity had already lapsed in a previous Patent dated February 21, 2022.

THE CONTENTION OF PLAINTIFF IN BRIEF:

The Plaintiff argued that the subject matter Patent is an old patent and should be given due weightage. Additionally, the Defendant did not file any opposition to the patent either before or after its grant.

Further, the Plaintiff stated that the alleged Genus Patent IN 227719 was published on 06.09.2002, which means it cannot be considered as prior art as the priority date of publication of the subject matter Suit Patent is earlier - 21.02.2002.

THE JUDGEMENT:

Vide subject matter Judgement, the injunction order passed in the subject matter Suit was vacated.

THE REASONING OF THE HON'BLE JUDGE:

1. Section 13 (4) of the Patent Act 1970, which deals with the grant of patents, makes no distinction between old and new patents.

2.This means that there is no difference in the validity of a patent based on when it was granted.

3. However, the existence of a patent for six year or more than that does not automatically mean that it is valid. The six-year rule, which requires an opponent to prove the invalidity of a patent after six years have passed since the date of its grant, does not grant any presumption of validity in favor of the patent.

4. Or in the other word it can be safely said that the Six year rule cannot grant presumption of validity in favour of Grant of Patent.

5. Moreover, there can be no presumption of validity simply because a patent is old. The validity of a patent is determined by its claims and the evidence presented to support them, not by its age.

7. In this patent dispute, it was found that the substantial part of the chemical structure claimed in Claim 1 of the subject matter patent IN 243301 and Claim 1 of the Genus Patent IN 227719 is the same. This means that there is substantial overlap between the two patents, raising questions about the novelty and inventiveness of the subject matter patent.

8. Similar assertions have been made with respect to Linagliptin, a pharmaceutical product that falls within the scope of Claims 2, 3, 5, 6, and 7 of the genus patent. This raises further questions about the validity of the subject matter patent, as it may have been anticipated or obvious in light of the earlier patent.

9. The subject matter patent also discloses two other pharmaceutical products titled 'Xanthine Compounds' and '8-(3-Aminopiperidin-1-yl)-Xanthine Compounds.' However, the disclosure of these products may not be sufficient to distinguish the subject matter patent from the earlier genus patent, as the latter also covers xanthine compounds.

10. It is important to note that there can be no distinction between the coverage of a patent and its disclosure. If a patent is covered by an earlier patent, it does not matter whether it was specifically disclosed in the earlier patent or not. This means that the subject matter patent may be invalid if it covers the same invention as the earlier genus patent, even if the latter did not explicitly disclose the subject matter of the former.

11.The validity of a patent is determined by its claims and the evidence presented to support them. The existence of an earlier patent that covers the same invention may render a later patent invalid, regardless of whether the earlier patent explicitly disclosed the subject matter of the later patent. Therefore, it is important to conduct a thorough analysis of the patent landscape before applying for or enforcing a patent.

12. The plaintiff argued that these statements could not be relied upon in any way, as they were not relevant to the case at hand. However, the court was not convinced by this argument, noting that a party should not be allowed to take a contrary stand before different forums. In other words, if the plaintiff had made statements or admissions that contradicted their arguments in court, they could not simply ignore those statements and expect to be taken seriously.

13. The plaintiff had relied heavily on the opinions of experts to support their case, but the court noted that this opinion would need to be evaluated properly at the trial stage before any definitive conclusions could be drawn.

It is submitted that the debate over the reliability and objectivity of expert testimony in patent litigation is a longstanding one, as it is often difficult to determine the unbiased opinion of an expert who may themselves be affiliated with the party presenting them.

14. In the subject matter case, Linagliptin was disclosed and covered in the earlier Genus Markush Patent. Hence the Plaintiff can not be allowed to extend its monopoly on the basis of subject matter Suit Patent.

16. One of the most significant arguments made by the defendant in this case related to the alleged "evergreening" tactics of the plaintiff. Evergreening refers to the practice of seeking multiple patents in order to extend a monopoly on a particular product, thereby allowing the patent holder to prevent competition for a longer period of time.

17.In this case, the defendant argued that the plaintiff was attempting to use multiple patent applications to extend their monopoly on a diabetes drug called Linagliptin. The court agreed with this argument, noting that the drug had already been disclosed and covered in an earlier Genus Markush Patent, and that the plaintiff should not be allowed to extend their monopoly on this basis.

It is submitted that the issue of evergreening is a contentious one in the patent world, with some arguing that it allows pharmaceutical companies to abuse the patent system for their own profit, while others believe that it is a necessary protection for investment in research and development.

18. Section 3 (d) of the Patent Act 1970 has been specifically incorporate to reduce the chances of evergreening.

19.Another important consideration in this case was the fact that the plaintiff was not manufacturing the subject matter drugs in India, but was instead seeking to reap the benefits of their patent by collecting royalties. The defendant argued that the balance of convenience should lie in their favour, as they could be compensated in monetary terms.

20.The court agreed with this argument, noting that the plaintiff could be compensated for any damages they suffered as a result of the infringement, whereas the defendant would be irreparably harmed by an injunction preventing them from manufacturing or selling their products.

21.The court also considered the element of public interest in the case. The subject matter drug, Linagliptin, was used for the treatment of diabetes, and the court noted that the public interest in ensuring access to affordable medicine for those suffering from diabetes outweighed any potential harm to the plaintiff's interests. This consideration was a key factor in the court's decision to vacate the injunction and allow the defendant to continue manufacturing and selling their products.

22.In light of all these arguments, the Hon'ble Single Judge concluded that the subject matter patent was prima facie vulnerable, meaning that it was open to challenge on a number of different grounds.

THE CONCLUDING NOTE:

This matter pertain to a case of Selection Patent, where Markush Chemical Compound was disclosed in Earlier Patent of Plaintiff. Let us see , what is selection Patent.

A selection patent involves a situation where a large genus of things is described in a patent application and the inventor selects a part of that genus to claim protection. In this case, the Court has to pay particular attention to the extent of the disclosure made by the patentee, and whether the invention claimed in the patent is a true representative of the invention described in the original patent. If the claimed invention is described in the original patent, then the patentee would not be granted an interim injunction.

The recent judgement of the Hon'ble High Court of Delhi fully examined the intricacies of patent law while granting interim injunctions. In this case, the plaintiff had sought an interim injunction against the defendant for infringing on its selection patent. The plaintiff had argued that its patent represented an improvement over the prior art technology, and therefore, should be given the highest level of protection.

The Court observed that the plaintiff had not made significant contributions towards improving the prior art technology. At the same time, the Court felt that the patentee had made the necessary disclosure in the Prior art. There can not be any difference between the disclosure and coverage. If a Patent is covered in prior art and it need not be disclosed with specific reference. In the subject matter case, the subject matter Patented Drug was covered in the prior genus patent , hence the Court did not consider the patent to be worthy of the highest level of protection of injunction.

Next, the Court considered the expert opinion presented by the plaintiff. The plaintiff had relied on an expert’s opinion stating that the defendant's product had infringed on the patentee’s invention claimed in the patent. The Court cautioned that expert opinions regarding patent infringement should always be handled with care and that effect of the same has to be evaluated at the trial stage.

The Court also assessed the concept of evergreening and its bearing on the case. The plaintiff had been accused of trying to extend the life of the patent beyond the stipulated term by filing other related patents.

The Court observed that patent law explicitly permits a patent holder to file additional patents, provided they can show that the new invention is significantly different from the original patented invention.

The Court further added that the patent system needs to provide sufficient incentive to innovators to encourage different and new innovations. Evergreening could not allowed to be encouraged.

The decision of the High Court of Delhi has set important guardrails for the decision-making process of Indian Courts while granting Interim Injunctions in patent infringement cases. It has stressed the importance of considering all the relevant factors before reaching a decision.

It is submitted that this case highlights some of the complexities of patent law and the many issues that can arise in disputes over intellectual property. This judgment is a useful point of reference for patent owners and potential litigants seeking to understand the Court's attitude to patent disputes.

The Case Law Discussed:
Judgment date: 29.03.2023
Case No: CS(COMM) 239/2019
Neutral Citation No. 2023:DHC:2272
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Amit Bansal, H.J.
Case Title: Boehringer Ingelheim Pharma GMBH & Co K.G. Vs Vee Excel Drugs and Pharmaceuticals Private Limited and Ors

NOTE: Though vide the afore mentioned Judgement , more than one Suits were disposed of by the Hon'ble Single Judge. However , for ease in reference , detail of only one case has been mentioned.

DISCLAIMER:

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com

Is Patent Board Opinion is subject to interference in Writ Jurisdiction?

This factum can not be disputed that order of sub ordinate authority , court or tribunal can be challenged to the High Court in India through a writ petition filed under Article 226 of the Indian Constitution. Can it be said that the High Court has the power to interfere with the Patent Board's decision in Writ jurisdiction?

The writ petition may be filed on various grounds, including but not limited to, jurisdictional errors, procedural irregularities, violation of principles of natural justice, errors of law or fact, or any other ground that the High Court deems appropriate.

Under Section 25(4) of the Indian Patents Act, 1970, the Patent Board may, after hearing both the applicant and the Controller of Patents, make a recommendation to the Controller for the grant or refusal of a patent application.

While the recommendation of the Patent Board is not binding on the Controller of Patents, it is usually given significant weight and consideration. The Controller of Patents is required to consider the recommendation of the Patent Board before making a final decision on the patent application.

However, the Controller is not bound to follow the Patent Board's recommendation and may make a decision that is different from the recommendation of the Board. In such cases, the Controller is required to give reasons for deviating from the recommendation of the Patent Board.

It's important to note that the final decision on a patent application in India is made by the Controller of Patents, and not by the Patent Board. The Patent Board's recommendation is just one of the factors that the Controller may consider when making a decision on a patent application.

Question is this, whether the Opinion of Patent can be challenged only on the ground that that the same has not been filed correctly, given the situation that Patent Board recommendation is not binding and has merely persuasive value.

The Hon'ble High Court of Delhi, in a recent Judgments, has answered this question. The facts of the case and ratio of the said Judgement was as under:

The Subject Matter Patent: Indian Patent No. 342004 , a fungicidal composition comprising combination of Hexaconazole and Validamycin in the range of 2.5-5% and 1.5-3%, respectively

The Subject Matter Writ: It was filed against Recommendations of the Opposition Board issued dated 29.11.2022 in respect of post-grant opposition filed by Respondent No. 2 namely Safex Chemicals India Ltd, where in Patent Board given the finding that the subject matter Lacks novelty.

The Relevant Provision of the Patent Act 1970:

25(3) (a) Where any such notice of opposition is duly given under sub-section (2), the Controller shall notify the patentee.

(b) On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.

(c) Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed.

25(4) On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.

Relevant Provisions of Patent Rules 2003.

62(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

From bare reading of above, it is clear that the Recommendation of controller of Board is issued under the provisions of Section 25 (3), which has to be considered by the controller of Patent at the time of disposing off Post grant opposition under Section 25 (4) of Patent Act 1970 and Rule 62 (5) of Patent Rules 2003.

The Grievance of the Petitioner:

In this case, the Petitioner was granted the Patent after dismissal of the Pre Grant Opposition. The Petitioner alleged that the Patent Board , without any plausible reasoning, given finding contrary to what has been given at the time of dismissal of Pre Grant Opposition.

The Judgment:

The Hon'ble High Court of Delhi disposed of the said writ petition with following observation "the Court is not inclined to entertain the present petition and accordingly, the same is disposed of leaving the Petitioner free to raise all contentions raised in the present petition before the Controller, in accordance with law. "

The Reasons of the Hon'ble High Court of Delhi:

1.Though the Patent Board recommendation may be relevant for deciding the post grant opposition under Section 25(4) of the Patent Act 1970.However the same is not binding.

2.The order passed by the controller of Patent under Section 25 (4) of the Patent Act 1970 can be challenged in Appeal under Section 117 A (2) of the Patent Act. Hence the Patent Board recommendation can not be challenged in Writ Jurisdiction under Article 226 and 227 of Constitution of India.

3. Another reason for not allowing the Writ was that the Petitioner failed to show any jurisdictional error, or perversity.

From above , it is apparent that Patent Board recommendation normally can not challenged in Writ Jurisdiction as the same is not binding on the controller of Patent while disposing of Post Grant Opposition. However ,in case the Petitioner can establish the jurisdictional error or perversity, then the Patent Board Recommendation can be challenged. The reason for limited interference in the writ jurisdiction is availability of Appeal under the provisions of Section 117A (2) of the Patent Act 1970. Thus is normal cases, the Hon'ble High Courts prefer not to interfere with the Patent Board recommendation, but only in case of glaring perversity or jurisdictional error, it can.

The Case Law Discussed:
Judgment date: 17.03.2023
Case No: W.P. (C) IPD No. 15 of 2023
Neutral Citation No. N.A.
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Sanjeev Narula, H.J.
Case Title: Willowood Chemicals Pvt. Ltd. Vs Assistant Controller of Patent and Designs and another

DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com

The Use of Family of Trademark does not amount to be use of Registered House Mark.

What could be effect of in case a party is not using the registered trade mark and instead of this the same has been using family of trademarks with suffix or prefixes?

Let us first of all under stand , what is family of Trademark? A family of trademarks refers to a group of trademarks that have a similar or related Trademark , having common element that identifies and distinguishes a particular company, brand, or product from others in the market. The family may include multiple variations or styles of the same logo or name registered as separate marks. These trademarks are registered to protect the brand identity, create brand recognition and awareness, and prevent confusion among consumers.

In these family of Trademark, the essential common element is referred to as House Mark. Like in the present case CONTIN was referred to as the House Mark.

The Present Case involves CONTIN family of trademarks. Though Plaintiff was having registration for trademark CONTIN since the year 1989. However it was actually not used in relation to its pharmaceutical products. The Plaintiff was using various other family of trademark with other prefixes or suffixes. The question is this , whether use of family of trademarks can be held to be use of registered House Mark?

Plaintiff's Subject Matter Trademark: CONTIN family of Trademarks , especially FECONTIN-F

Plaintiff's Claimed User: March 1993

Plaintiff's Registered Trademark: CONTIN registered under No. 518594 in class 05 since 19.10.1989 while trademark FECONTIN-F: 518596 in class 05.

Defendant's Trademark: FEMICONTIN

Defendant's User: Between November 2005 till October 2007.

The Main Defense of Defendant in the Suit:

Delay/Latches/Acquiescence

The Defendant alleged that in spite being aware of Defendant in the year 1999, the Suit was filed after inordinate delay , only in the year 2004.

The another defenses were non use of registered House Trademark by the Plaintiff.

That the Plaintiff's Trademark was descriptive.

The Judgement:

The Plaintiff's Suit was dismissed on the ground of inter alia

The Reasons of the Hon'ble Court:

1.The Issue of delay and latches was decided in favour of the Plaintiff. Merely because the Plaintiff issued legal notice in the year 1999 and then Suit was filed in the year 2004, this does not mean the Suit of Plaintiff can be be dismissed on the ground of Delay.

2. Though the Defendant pleased user for a limited period, however no document has been placed on record by the Defendant showing user of impugned Trademark between 1999 to 2005.

3.In view of above, the Suit was held not liable to be dismissed on the ground of delay.

4.Though the Plaintiff has claimed proprietary right in the family of Trademark CONTIN, however it has been admitted by the Plaintiff during the cross examination that the same has not used it for its pharmaceutical product.

5.User of similar Trademark by the Registered Proprietor can not be held to be use of that trademark within the meaning of Section 2 (2) (c) of the Trademarks Act 1999. Even though CONTIN may be used as a prefix or suffix in a family of marks by the plaintiff, the same would not amount to use of the registered mark.

6.During the cross examination, the Plaintiff admitted FE-CONTIN to be descriptive. FE‟ relates to iron, which is an ingredient of the plaintiff's product, while CONTIN is being used in relation to the products with Continuous Drug Delivery system, that is where the drug will have a continuous effect in the body for a longer duration.

7.The Court observed that while evaluating the deceptive similarity, the descriptive parts have to be given less weightage.

8.In view of afore mentioned observation, the Hon'ble High Court of Delhi has held the trademark FE-CONTIN to be descriptive to the product as the Plaintiff itself has admitted that "FECONTIN-F is an iron supplement and is used by female patients normally during pregnancy".

9.The Hon'ble Court also observed that Plaintiff's Trademark FECONTIN and Defendant's Trademark FEMICONTIN not to be deceptively similar.

10. The Plaintiff also did not lead any evidence to the effect that there has been any confusion on account of user of Defendant.

11.In view of afore mentioned observation, the subject matter Suit was dismissed.

The outcome of the afore mentioned case law is that the effect of not using the registered HOUSE trademark and instead using a family of trademarks with suffixes or prefixes does not amount to be user of that registered House Trademark. In order to reap the benefit of its registered House Mark, the Plaintiff can not rely upon use of other family of trademark.

Non use of registered House Mark could result in the loss of the exclusive right to use the original trademark, as it may be deemed abandoned due to lack of use. Hence companies are encouraged to use their registered trademark consistently and prominently to maintain its distinctiveness and prevent dilution.

The Case Law Discussed:
Judgment date: 23.03.2023
Case No: CS Comm 353 of 2018
Neutral Citation No. 2023/DHC/2049
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Navin Chawla
Case Title: Modi Mundi Pharma Pvt. Ltd. Vs Preet International Private Limited

DISCLAIMER:

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com

Patanjali Ayurveda Limited Vs Yog Guru Ayurveda

Amendment of Plaint seeking addition, deletion, and correction in the description of the trademarks

The subject matter Suit:
The Plaintiff filed the subject matter Suit seeking the relief of inter alia  infringement of their registered trademarks, passing off in which ex parte injunction was initially granted.

The Subject matter Application:
The Plaintiff filed application under Order 6 Rule 17 CPC seeking amendment of the Plaint , seeking addition, deletion, and correction in the description of the trademarks.

Facts leading to filing of the subject matter Application under Order 6 Rule 17 CPC:
Few of the Defendants sought vacation of the injunction order on the grounds of misdescription of the Trademarks in the Plaint. According to the Defendants , as plaintiff did not present the true facts before the Court, ex parte injunction ought to have been vacated.

As Plaintiff noticed the afore mentioned descrepancies in the Plaint, the same has filed the subject matter Application under Order 6 Rule 17 CPC.

The Subject Matter Order:
The Hon'ble Single Judge, High Court of Delhi was pleased to allow the Application of the Plaintiff under Order 6 Rule 17 CPC.

The Relevant facts leading to grant of the amendments:

1. The Plaintiff sought the amendment of Plaint by amending the Plaintiff's Trade Mark as PATANJALI ALOE VERA JUICE instead of ALOE VERA JUICE as originally mentioned in the Plaint.

2.The same was held to be clerical mistake as  Plaintiff has already filed registration Certificate pertaining to Registered Trade Mark PATANJALI ALOE VERA JUICE.

3.The Court has already passed injunction order restraining the Defendants from using the Trademark PATANJALI ALOE VERA JUICE.

4.Other amendments were sought to be incorporated in view of report of Local Commissioner.

5.The amendments sought do not in way amount to be withdrawal of admission. It is submitted that In the Plaint , the Trade mark was mentioned as ALOE VERA JUICE. However the same was not the same as mentioned in the registration certificate filed along with the Plaint.

6. The amendments were merely explanatory in nature and in any way do not alter the nature of Suit. It is submitted that the Plaihtitf by way to amendment sought to amend the description of said trade mark as PATANJALI ALOE VERA JUICE. It could not have been construed as admission as supporting documents have already been filed. In fact the same was merely explanatory in nature.

7.The proposed amendments were merely procedural in nature. The nature of amendment sought , did not alter the scope of the relief sought in the Plaint.

8.The Court allowed the amendment as the same was not prejudicial to the Defendants. The Court , while allowing the subject matter Application, also observed that while entertaining the amendment application, liberal approach is required to be taken.

Case Law Discussed:
Judgment date: 02.03.2023
Case No: CS Comm 314 of 2020
Neutral Citation No. NA
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Sanjeev Narula, H.J.
Case Title: Patanjali Ayurveda Limited Vs Yog Guru Ayurveda

DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com

#IP_Adjutor #Trademark #Copyright #Design #Patent #IPR #Intellectualpropertyright #Ipupdate #Ipnews 

Biomoneta Research Pvt. Ltd. Vs Controller General of Patents and Design and another

Judgment date: 13.03.2023
Case No: C.A.(COMM.IPD-PAT) 297/2022
Neutral Citation No. 2023/DHC/001816
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Prathiba M Singh, H.J.
Case Title: Biomoneta Research Pvt. Ltd. Vs Controller General of Patents and Design and another

The Subject Matter Patent of the Appellant:

Air Decontamination Assembly’ bearing Application No. 201741016833, dated 12th May, 2017

The Subject Matter impugned Order:

The Ld. Controller of Patent , vide impugned Order dated 09.02.2021, was pleased to refuse afore mentioned Patent Application of the Appellant.

The Reason for Refusal of the Patent Application was based on prior arts D1, D2 and D3.

The Prior Arts:

D-1: US20120000782A1– dated 5th January 2012: relates to a reactor, which consists of a uniform di-electrical field.

D-2:US20130071298A1 dated 21st March 2013.The document discloses that similar apparatus, for removing microbes and viruses suspended in a space, exist in the prior art.

D-3:US20100282083A1 dated 2nd January, 2008:It discloses air cleaning devices for removal of organic pathogens.

The Order of Hon'ble Single Judge:

The Order of Controller was set aside and Patent was granted.

The Reasons for the Grant.

1. In order to evaluate the Inventive Step, following exercise is required to be taken:

To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications;

Step No.5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hind side approach.”

2.There can be no doubt that some of the features in D1, D2 and D3 are present in the subject invention.

3.However, the subject invention is not a mere addition to a well-known combination.

4. It has some new features and is an improvement in the method which has brought in greater efficiency.

5.When a claim consists of a ‘combination of features’, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that ‘therefore’ the whole subject-matter claimed is obvious, the interactions of the individual features must produce a synergistic effect.

6. If there is a synergistic combination or a working interrelation which produces a new and improved result, the subject matter is patentable.

7.When a set of old results are combined in a new and profitable manner, a patent can be granted.

8.the subject invention addresses various disadvantages in the prior art such as frequent changing of filters, high power consumption, easier utility owing to the size of the device, lesser maintenance costs, more effectiveness for decontamination.

DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com

Descriptive Trademark , not entitled for protection A Case Study

Descriptive and Generic Trademark are considered to be poor Trademark. Though descriptive Trademark can be granted protection provided the party concern establishes the secondary significance. However generic Trademark can not be entitled to protection. Hence it is always advisable that a business man should avoid using those trade marks which are descriptive and generic in nature. Here are few case study where Descriptive and Generic Trademark were declined the relief of injunction.

 i.1977 SCC OnLine Mad 72 : AIR 1978 Mad 336: Nestle's Products (India) Ltd. Vs P. Thankaraja and another. 

 Applicant’s Trademark applied for was INSTEA in relation to Tea. 

The Court observed that first impression of the word INSTEA was that the word had something to do with tea and had something to do with instant. 

The Court equated the word INSTEA in relation to Tea with telescoped expression like “artsilk” for artificial silk, “Comintern” for communist international. 

ii. 1942 (54) RPC 127 Coca Cola of Canada Limited Vs Pepsi Cola of Canada Ltd. 

Trademark PEPSI COLA of the Defendant was registered in CANADA since 1906. 

Expression COLA was name of beverage itself. 

More than 31 others Parties were having Trademarks registrations containing the word COLA as suffix. 

iii. 1996 RPC 281 British Sugar PLC Vs James Robertsons & Sons Limited. 

Trademark of Plaintiff was SILVER SPOON TREAT. While Defendant was using the Trademark ROBERTSON’S TOFEE TREAT. 

Word Treat was written in very small font by the Defendant. 

iv. 2007 (35) PTC 697 (Bomb) Asian Paints Limited Vs Home Solutions 

Injunction was declined in Asian Paints Judgement on the ground that Trade mark HOME SOLUTIONS was descriptive and common to trade. 

v. 2010 (44) PTC 515 (Del) (DB) Rich Products Corporation & Anr Vs Indo-Nippon Foods Limited. 

The court held the Plaintiff’s Trade Mark WHIP TOPPING to be generic in relation to non dairy Topping. 

Trademark of the Plaintiff was RICH’S WHIP TOPPING while trademark of Defendant was BELLS WHIP TOPPING. 

Word BELLS was very prominently displayed on the Defendants packaging . 

The Plaintiff has failed to show any distinctiveness to the word WHIP TOPPING separately. 

vi. 2009 (39) PTC 627 (Del) Lowrenbrau AG and another Vs Jagpin Breweries Ltd. 

Plaintiff’s whole of the Trademark LOWENBRAU was disclaimed in registered Label in which device of Lion was also there. 

Plaintiff has not given Sales figure in India. 

Plaintiff’s Sales was intermittent and at miniscule label in India. 

Plaintiff and Defendant were both using the trademark LOWENBRAU for 100 years. 

The Defendant was protected being honest and concurrent user. 

vii. 2010 (MIPR) (3) 273: 2010 (44) PTC 381 (Del) Stokley Van Camp Inc. Vs Heinz India Pvt. Ltd. 

Plaintiff’s Trademark was REHYDRATE REPLENISH REFUEL in relation to ready to Drink. 

Defendant’s Trademark was REHYDRATES REPLENISHES RECHARGES. 

 Plaintiff asserted that the expression used by the Defendant to describe its product, is similar to Plaintiff’s expression. 

Defendant’s use of expression was held to be honest. 

viii. 2010 (44) PTC 736 (Del) (DB) Marico Limited Vs Agro Tech Foods Limited. 

Plaintiff’s Trademark was LOSORB in relation to Oil while Defendant’s Trademark was LOW ABSORB. 

Defendant were using expression LOW ABSORB TECHNOLOGY with their Trademark SUN DROP in much bigger font. 

Defendant was using the expression LOW ABOSRB as a part of Sentence as “WITH LOW ABSORB TECHNOLOGY”. 

Term LOW ABSORB TECHNOLOGY was defined under Rule 26A of the Prevention of Food Adulteration Rules 1955 . 

Plaintiff had filed a trade mark application bearing no. 1012561 dated 28.05.2001 for registration of its mark LOW ABSORB. 

ix. 2020(84) PTC 395 (Mad) (DB) ITC Limited Vs Nestle India Limited. 

Plaintiff’s Trade mark was SUNFEAST YIPPEE MAGIC MASALA. 

Defendant’s Trademark was MAGGI XTRA-DELICIOUS MAGICAL MASALA. Plaintiff’s Trade mark was not a registered Trademark. 

The Defendants have proved user by various third parties use of packaging containing the word MAGIC MASALA. 

The Court declined the injunction by observing that Plaintiff was using the term MAGIC MASALA only in order to indicate the kind of product. 

x. 2021 (86) PTC 437 (Del).Phone Pe Private Limited Vs. Ezy Services 

The Hon’ble Court held that the Plaintiff could not claim exclusivity on the word “PE” suffix as it was merely part of registered trade mark. 

Meaning of “PE” itself pay. 

Plaintiff and Defendant both were indulged in the activities of online payment. 

Disclaimer: This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

Ajay Amitabh Suman,IPR Advocate, Hon'ble High Court of Delhi.

Email: ajayamitabh7@gmail.com, Ph No: 9990389539