Iftikhar Alam Vs M M I Tobacco Pvt Ltd.

Date of Judgement/Order:07.08.2023

Case No. First Appeal from Order No.77 of 2023

Neutral Citation: 2023:AHC:157460

Name of Hon'ble Court: Allahabad High Court

Name of Hon'ble Judge:Kshitij Shailendra, HJ

Case Title: Iftikhar Alam Vs M M I Tobacco Pvt Ltd.

Analyzing the Necessity of Prima Facie Case, Balance of Convenience, and Damages in Deciding Interim Applications for Injunctions

Introduction: 

The legal landscape surrounding interim applications for injunctions is a complex and multifaceted arena that requires a careful consideration of various factors. In the case at hand, where an appeal challenges an order granting a temporary injunction based solely on a registered trademark, it becomes imperative to delve into the necessity of establishing a prima facie case, balancing the convenience of the parties involved, and assessing potential damages while deciding such applications.

Prima Facie Case:

 In the present case, the trial court granted the injunction based solely on the existence of a registered trademark, MUSA KA GUL, without engaging in a comprehensive analysis of the respondent's prima facie case. It is imperative for the court to scrutinize factors such as the strength of the trademark, the likelihood of confusion, and the evidence of prior usage to determine the validity of the applicant's claim. The Court also discussed the claim of prior user by the Appellant , besides other disputed facts. The Appellate Court emphasized that while evaluating interim injunction, Observation on Prima facie case is required.

Balance of Convenience:

In this case, it appears that the trial court failed to adequately consider the balance of convenience. While the registered trademark was the basis for the injunction, the court should have assessed whether the respondent would suffer irreparable harm in the absence of an injunction and whether the appellant would be unjustly restrained from conducting their business.

Assessment of Damages:

Determining the need for an interim injunction also involves assessing the potential damages that could arise from either granting or denying the injunction. Injunctions are intended to prevent irreparable harm, which cannot be adequately compensated by monetary damages. In the case at hand, the trial court did not engage in a thorough analysis of the potential damages that could result from granting or denying the injunction. The court should have evaluated the financial impact on both parties and the feasibility of providing compensation in case of an adverse outcome.

The Concluding Note:

The decision to grant or deny an interim injunction is a nuanced process that requires a holistic evaluation of various legal and factual elements. In the context of the present case, where the trial court's decision was primarily based on the existence of a registered trademark, it becomes evident that a more comprehensive analysis of the respondent's prima facie case, the balance of convenience, and potential damages was warranted. A well-reasoned and thorough approach to interim applications for injunctions is crucial to ensuring that the rights of both parties are adequately protected and that justice is served. 

The appellate court's decision to set aside the order and remand the matter for re-adjudication highlights the importance of conducting a comprehensive analysis before granting or denying interim injunctions.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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1RM Fitness Equipment Vs Ms. Priyanka Barua

Date of Judgement/Order:02.08.2023

Case No. Interim Application No.1360 of  2023 in First Appeal No. 141 of 2023

Neutral Citation: NA

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: Prithviraj K Chavan, HJ

Case Title: 1RM Fitness Equipment Vs Ms. Priyanka Barua

Difference between Non-Disclosure of Cause of Action and Defective Cause of Action 

Introduction:

This analytical legal article discusses the distinction between non-disclosure of cause of action and defective cause of action in the context of a trademark infringement case. The case in question involves an appeal challenging the rejection of a plaint under Order 7, Rule 11 of the Code of Civil Procedure, 1908 (C.P.C) on the ground that the plaint does not disclose the cause of action. The crux of the dispute centers around the timing of trademark registration and its impact on the existence of the cause of action for trademark infringement.

Non-Disclosure of Cause of Action:

Non-disclosure of cause of action occurs when a plaintiff fails to adequately present the essential facts and circumstances that give rise to the claim. In the case at hand, the respondent contends that the appellants did not have a cause of action for trademark infringement at the time of filing the suit since their device/logo "1RM Fitness" was not registered as a trademark on the date of institution of the suit, which was 25th September 2020. As per the respondent's argument, the cause of action did not exist on the specified date, and thus, the plaint should be rejected under Order 7, Rule 11 of the C.P.C.

Defective Cause of Action:

On the other hand, defective cause of action pertains to a situation where the cause of action exists but is improperly presented or formulated by the plaintiff. The appellants argued that a typographical error occurred in para 18 of the plaint, which was meant to state the date when the cause of action first arose to file the suit. 

They contend that the omission of this date should not result in the rejection of the plaint, as the defective cause of action should be decided during the trial and not at the stage of plaint scrutiny.

Analysis:

The crucial issue in this case is whether the typographical error regarding the date of the cause of action should be accepted by the court. The respondent contends that such an admission cannot be allowed to mitigate the absence of trademark registration at the time of filing the suit. According to their argument, the error is not merely a minor mistake but rather indicative of the appellants' lack of due diligence and failure to comply with mandatory requirements for initiating a trademark infringement claim.

The respondent further emphasizes that the cause of action for trademark infringement arises from the existence of a registered trademark. Since the appellants did not possess a registered trademark at the time of filing the suit, there was no question of infringement, as the trademark was not statutorily recognized. The registration of the trademark on 17th March 2021, long after the suit was filed, is seen as a clear indication of the appellants' failure to adhere to the statutory requirement, further supporting the contention that the cause of action was lacking.

The Courr observed that the appellants admitted to a typographical error in stating the date when the cause of action first arose in their trademark infringement claim. However, the respondent argues that this admission cannot be accepted to overlook the absence of trademark registration at the time of filing the suit. Since the trademark was not statutorily recognized due to late registration on 17th March 2021, the respondent rightly contended  that there was no infringement. This also  highlights the appellants' lack of due diligence and failure to comply with mandatory requirements regarding keeping the date of the cause of action empty in that para. This can not be regarded as merely defective casue of action. In fact this is a case of non disclosure of cause of action. In view of the above finding  the Appeal was rejected.

The Concluding Note:

There is distinction between non-disclosure of cause of action and defective cause of action is pivotal in determining the fate of the plaint in this trademark infringement case. The court will have to assess whether the absence of trademark registration at the time of filing the suit indeed renders the cause of action non-existent or if it can be categorized as a defect in the presentation of the cause of action.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

V R Holding Vs Heo Investcorp Limited

Date of Judgement/Order:04.08.2023

Case No. LPA 397 of 2023

Neutral Citation: 2023:DHC : 5458

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma , H.J. and Dharmesh Sharma HJ

Case Title: V R Holding Vs Heo Investcorp Limited

Maintainability of Letters Patent Appeal against Judgment passed by High Court in a Trademark Rectification Petition

Introduction:

The issue of maintainability of Letters Patent Appeal (LPA) against a judgment passed by the High Court in a Trademark Rectification Petition has been a matter of contention. This article analyzes the recent case  post  Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr [2023:DHC:3426-DB] and subsequent developments that affirm the maintainability of such appeals.

Background:

The case in question involved the dismissal of a rectification petition of a trademark by a Single Judge of the Delhi High Court. The respondent challenged the judgment by contending that the earlier decision of the Delhi High Court in Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr did not consider the scope of Limitation put by  Section 13 of the Commercial Court Act 2015 to Appeals, particularly with reference to Letters Patent Appeal.

Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr:

In Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr, the Delhi High Court answered the issue of maintainability of an LPA against a judgment passed by the High Court in a rectification petition, in affirmative. However, the respondent argued that this judgment failed to consider the provisions of Section 13 of the Commercial Court Act 2015, which seemingly restricts any other intra-Court appeal, beyond the provision of Order 43 CPC.

The Hon'ble High Court's Ruling:

The Hon'ble Division Bench of the Delhi High Court, in the present case, reaffirmed its earlier judgment in Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr and held that an LPA against the judgment of a Single Judge in a Trademark Rectification Petition is maintainable, albeit supplementing with reasoning , as left out in Resilient Judgement.

Reasoning:

The Division Bench elucidated that the bar under Section 13 of the Commercial Court Act 2015 does not apply to judgments passed by Single Judges of the High Court in a Rectification Petition under Section 57 of Trade Marks Act 1999[ TMA]. 

The rationale behind this conclusion lies in the nature of jurisdiction exercised by a Judge in the Commercial Division while entertaining a petition under Section 57 of TMA. Section 57 enables any aggrieved person to seek cancellation or variation of a registered trademark before the High Court or the Registrar.

The power vested in the High Court under Section 57 is a specific authority conferred by the TMA and not derived from its existing ordinary original civil jurisdiction. Hence, when the High Court entertains a petition under Section 57, it does so solely through the avenue created by the TMA, rather than its general civil jurisdiction.

Furthermore, the Court referred to Section 13(1A) of the 2015 Act, which specifically mentions a judgment or order rendered by a commercial court exercising "original civil jurisdiction." Since the power exercised by the Commercial Division under Section 57 is not traceable to its original jurisdiction, appeals against judgments or orders not arising from the exercise of original jurisdiction would not be governed by Section 13 of the 2015 Act.

The Concluding Note:

The Hon'ble Division Bench of the Delhi High Court, through its reaffirmation of the earlier judgment in Resilient Innovations Pvt. Ltd. Vs Phonepe Private Limited & Anr, has clarified the maintainability of Letters Patent Appeals against judgments passed by the High Court in Trademark Rectification Petitions. The Court's reasoning underscores the distinction between the jurisdiction exercised under Section 57 of the TMA and the general civil jurisdiction of the Commercial Division, thus confirming the viability of such Letters Patent appeals.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Foodlink F and B Holdings India Pvt.Ltd. Vs WOW Momo Foods Private Limited

Date of Judgement/Order:03.08.2023

Case No. Co Comm (IPD-Pat) 3 of 2021

Neutral Citation: 2023:DHC : 5521

Name of Hon'ble Court: Delhi High Court

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

Case Title: Foodlink F and B Holdings India Pvt.Ltd. Vs WOW Momo Foods Private Limited

The Effect of Disclaimers on Subsequently Associated Registered Trademarks:

Abstract: 

This article analyzes a recent judgment before the Hon'ble High Court of Delhi, which addressed the effect of disclaimers attached to an earlier registered trademark on subsequently associated registered trademarks. 

The case involved a dispute between the plaintiff, holding the registration for "CHINA BISTRO," and the defendant using the trademark "WOW CHINA BITRO." 

The defendant argued that disclaimers attached to earlier registered trademarks also apply to subsequently associated registered trademarks. The court's ruling clarified the scope of associated trademarks and the applicability of disclaimers to later trademarks.

Introduction:

When trademarks are associated, it allows for the transfer and assignment of multiple trademarks as a single unit. This article delves into the legal implications of disclaimers attached to an earlier registered trademark concerning subsequently associated registered trademarks, using the recent CHINA BISTRO case as a reference.

Background of the CHINA BISTRO Case:

The plaintiff, who owned the registered trademark "CHINA BISTRO," filed a suit against the defendant's use of the trademark "WOW CHINA BITRO." The defendant's argument centered on the idea that subsequently registered trademarks of the plaintiff, which were associated with the earlier registered trademarks having disclaimers, should also be subject to the same disclaimer.

Plaintiff's Clarification on Associated Trademarks:

The plaintiff countered the defendant's argument by referring to Section 44 of the Trade Marks Act, asserting that associated trademarks are treated as a single unit only for the purpose of assignment and transmission. Other than that consideration, each trademark, even if associated with each other, should be treated as separate trademarks. Thus, the disclaimer attached to trade mark no. 1470912 and 2264846 would not apply to the later trademarks.

Court's Observations and Ruling:

The court carefully examined the arguments presented by both parties. It noted that no provision was shown indicating that a disclaimer in an earlier registered trademark would automatically apply to subsequently associated registered trademarks. 

The court emphasized that if the intent of the registering authority was to include such disclaimers for later marks, the certificate of registration for those marks would expressly reflect that.

Based on its interpretation of Section 44 of the Trade Marks Act and considering the lack of evidence supporting the automatic extension of disclaimers, the court ruled that the disclaimer in the present case would apply only to the first two registered trademarks, i.e., trade mark no. 1470912 and 2264846. The subsequently associated registered trademarks, including "WOW CHINA BITRO," would not be subject to the earlier disclaimers.

The Concluding Note:

The CHINA BISTRO case provides valuable insights into the legal aspects of disclaimers attached to earlier registered trademarks concerning subsequently associated registered trademarks. The court's ruling clarified that such disclaimers do not automatically extend to later trademarks, unless expressly stated in the certificate of registration.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Dr. Reddys Laboratories Limited Vs The Controller of Patent

Date of Judgement/Order:03.08.2023

Case No. Co Comm (IPD-Pat) 3 of 2021

Neutral Citation: 2023:DHC : 5520

Name of Hon'ble Court: Delhi High Court

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

Case Title: Dr. Reddys Laboratories Limited Vs The Controller of Patent

Revocation Petition for Patent: Suit or Not within  Section 10 CPC?

Introduction:

The matter at hand revolves around the question of whether a revocation petition for a patent can be treated as a suit within the meaning of Section 10 of the Code of Civil Procedure (CPC). 

The Patentee sought a stay on the cancellation of the revocation proceeding pending before the Delhi High Court under Section 10 CPC, claiming that a suit proceeding was filed before the Himachal Pradesh High Court.

Background:

The subject matter pertains to Indian Patent No. IN 268846. The revocation petition was electronically uploaded on the Delhi High Court's website on 16.10.2021 but listed before the Court on 22.10.2021. 

Conversely, the Suit was filed before the Himachal Pradesh High Court on 19.10.2021 but listed before the Court on 20.10.2021. The Delhi High Court deemed the revocation petition as earlier instituted, considering the electronic upload date of 16.10.2021, which preceded the Suit's filing on 19.10.2021.

The Court's Analysis:

The Hon'ble High Court of Delhi carefully analyzed the provisions of Section 10 CPC and relevant aspects of patent revocation proceedings to arrive at its decision.

Absence of Provision: 

The court observed that there is no explicit provision by which a revocation petition under Section 64 of the Patents Act can be treated as a suit under the CPC. Absence such a provision, the court stated that it cannot deem a revocation petition to be a suit.

Difference in Procedural Nature: 

The court highlighted the procedural distinctions between a revocation petition and a suit proceeding. In a case where Section 10 CPC applies, the court handling the later suit may still pass interlocutory orders under Order XXXIX of the CPC and other related provisions. The trial of the suit is the only aspect stayed. However, in patent revocation proceedings, there is no provision for a trial like a suit proceeding.

Inconsistency in Application: 

The court addressed the concern of potentially inconsistent application of Section 10 CPC. If certain revocation petitions require a trial while others do not, only the former would become subject to Section 10 CPC. This inconsistency would not align with the intended legal position.

Conclusion:

Based on the analysis of Section 10 CPC and the nature of patent revocation proceedings, the Hon'ble High Court of Delhi concluded that a revocation petition under Section 64 of the Patents Act cannot be treated as a suit proceeding within the meaning of Section 10 CPC. The absence of an explicit provision and the different procedural nature of the two proceedings were the key factors that influenced the court's decision.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Hem Corporation Pvt. Ltd. Vs ITC Limited.

Date of Judgement/Order:11.04.2012

Case No. Notice of Motion No. 3940 in Suit No.2808 of 2009

Neutral Citation: NA

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: S.J. Vazifdar, H.J.

Case Title: Hem Corporation Pvt. Ltd. Vs ITC Limited.

Intention to Use an Expression as a Descriptor is Immaterial if it Actually Results in Confusion

Introduction: 

In this legal article, we delve into a case where the plaintiff claimed to be the registered proprietor of the marks "MADHUR" and "MADHUR MADHUR GULAB" written in devanagari script. The subject matter of the suit was filed against the defendant's use of the trademark "MANGALDEEP MADHUR."

The defendant argued that they use the expression "MANGALDEEP MADHUR" not as a trademark but merely to describe their product and its characteristics. 

However, the court rejected this contention and restrained the defendant, emphasizing that even if the intention to use the mark as a trademark was absent, infringement could still occur if confusion resulted.

The Court's Decision:

The Court observed that the intention to use a mark as a trademark is not the sole determinant of infringement. Under section 29(1) and section (2)(zb)(ii) of the Trade Marks Act, a registered trademark is infringed if it is used in a manner likely to be taken as a trademark, regardless of the user's intent.

Trademark Infringement and Connection in the Course of Trade:

The court pointed out that the use of a registered trademark would constitute infringement if it indicates a connection in the course of trade between the person and their goods or services, irrespective of their intention. The crucial factor here is whether the use of the mark creates a likelihood of confusion among consumers, leading them to believe there is a connection between the defendant's goods and the registered proprietor's goods.

Descriptive Sub-Brands and Confusion:

The defendant argued that their products were sold under the umbrella brand "MANGALDEEP" and that the descriptors such as "MADHUR" and "MADHUR 100" were used to signify the quality and characteristics of the product. 

However, the court rejected this argument, stating that even if the defendant genuinely intended to use the mark only as a description of the product's aroma, it would not make any difference if the use of the mark was likely to be taken as a trademark.

The Concluding Note:

This case sets a precedent that the intention to use an expression as a descriptor is immaterial if it actually results in confusion among consumers, leading them to believe that the expression is being used as a trademark. 

It reinforces the need for businesses to exercise caution while using marks, especially when they are similar to registered trademarks, to avoid potential infringement claims. As the court highlighted, the use of a registered trademark would still be considered an infringement if it indicates a connection in the course of trade, irrespective of the user's intention. 

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

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V Guard Industries Ltd Vs Crompton Greaves Consumer Electricals Ltd

Date of Judgement/Order:12.05.2022

Case No. CS Comm 92 of 2022

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

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

Case Title: V Guard Industries Ltd Vs Crompton Greaves Consumer Electricals Ltd

Use of Housemark as Prefix and Trademark Infringement:

Introduction: 

This article discusses a legal case involving the use of a house mark as a prefix with another trademark and its potential implications for trademark infringement. 

The case revolves around a plaintiff who claimed ownership of the trademark "PEBBLE" and filed a suit against a defendant using the trademark "CROMPTON PEBBLE" for dry irons. 

The defendant argued that the use of the house mark "CROMPTON" distinguished its products from the plaintiff's, but the court rejected this defense and restrained the defendant from using the trademark "PEBBLE."

Background:

The plaintiff was the registered proprietor of the trademark "PEBBLE" under no. 2503134 in Class 11 for water heaters, electric water heaters, heating coils, electric water geysers, etc. The defendant was using the trademark "CROMPTON PEBBLE" in relation to dry irons, which the plaintiff alleged to infringe upon their registered trademark.

Defendant's Defense:

The defendant argued that there would be no confusion among the public since they were using "CROMPTON PEBBLE" and not "PEBBLE" for dry irons, which were not sold by the plaintiff.

 They contended that their products were known for their quality and were sold in the market with various product identification marks associated with the house mark "CROMPTON." 

The defendant further asserted that the plaintiff could not claim exclusive rights to the word "PEBBLE" and, therefore, could not allege infringement against "CROMPTON PEBBLE."

Court's Ruling:

The court rejected the defendant's contentions by observing that the Trade Marks Act does not recognize the concept of subbranding.

In cases of infringement involving label or word marks, the test for infringement is based on the prominent word of the mark. 

Therefore, adopting a prominent word from the plaintiff's label/device mark, as the defendant did with "PEBBLE," constitutes infringement. 

In this case, "PEBBLE" was an essential part of the plaintiff's registered trademark, and the defendant could not argue for exclusive use of the word based on registration.

Additionally, the court noted that the defendant had consistently used the mark "PEBBLE" with its house mark "CROMPTON" as a source identifier for its products.

The plaintiff had been using the registered mark/label with the dominant part being the word "PEBBLE" since 2013. 

The defendant's lack of a plausible explanation for adopting the word "PEBBLE" in conjunction with "CROMPTON" further strengthened the court's decision.

The Concluding Note:

In light of the court's observations, the defendant was restrained from using the trademark "PEBBLE." 

The case highlights the importance of not using prominent words from other trademarks as part of a new trademark, even if a house mark is used as a prefix. 

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Dr. Reddys Laboratories limited Vs Controller of Patent and Others

Date of Judgement/Order:10.11.2022

Case No. C.O.(COMM.IPD-PAT) 3/2021

Neutral Citation: 2023:DHC:004746

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Dr. Reddys Laboratories limited Vs Controller of Patent and Others

The Static and Dynamic Effect of Patent and Territorial Jurisdiction of High Courts with Respect to Patent Appeal and Patent Revocation

Abstract:

This analytical legal article explores the territorial jurisdiction of High Courts concerning patent revocation and patent appeals after the abolition of the IPAB (Intellectual Property Appellate Board). It examines two scenarios involving different High Courts and patent applications filed in different locations. 

The article analyzes the concept of territorial jurisdiction under the 1970 Act, focusing on the static and dynamic effects of patent grants and their impact on commercial interests. The discussion revolves around the relevant considerations for determining the High Court's territorial jurisdiction in patent-related matters.

Introduction:

The territorial jurisdiction of High Courts plays a crucial role in patent revocation and appeal cases. This article delves into the complexities arising after the IPAB's abolition and how the jurisdiction is determined in two distinct scenarios: Patent Revocation and Patent Appeal.

Territorial Jurisdiction in Patent Revocation:

In cases of patent revocation, the High Court's territorial jurisdiction is determined based on both the static and dynamic effects of the patent grant. The High Court in the jurisdiction where the patent was granted would naturally be one of the fora with jurisdiction. However, considering the dynamic effect, the commercial interests of the petitioner, who may be affected in various jurisdictions, can influence other High Courts' jurisdiction. Such High Courts may entertain revocation petitions under section 64 of the Act. The cause of action consists of a series of events starting with the grant of the patent, and thus, the territorial jurisdiction for revocation petitions should be decided based on the impact on the applicant's commercial interests.

Territorial Jurisdiction in Patent Appeal:

In the case of patent appeals, the jurisdiction is determined by the High Court having territorial jurisdiction over the appropriate office from where the patent application originates and which is the situs of the said application. Appeals challenging the order or direction of the Patent Office under Section 117A of the 1970 Act lie before the High Court with territorial jurisdiction over the relevant patent office. The concept of cause of action cannot be pleaded to vest jurisdiction in other High Courts, i.e., other than the one where the appropriate office is located.

Concluding Note:

The determination of territorial jurisdiction of High Courts in patent revocation cases post abolition of the IPAB involves considering both the static and dynamic effects of the patent grant. While the High Court where the patent was granted holds primary jurisdiction, other High Courts may also have jurisdiction based on the petitioner's commercial interests and the impact of the patent in different locations. On the other hand, patent appeals are limited to the High Court within the territorial jurisdiction of the appropriate patent office. 

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Eris Life Sciences Limited Vs Controller of Patent

Date of Judgement/Order:20.07.2023

Case No. C.O.(COMM.IPD-PAT) 3/2022

Neutral Citation: 2023:DHC:5201

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Eris Life Sciences Limited Vs Controller of Patent

Transfer of Patent Cancellation Petition by one High Court to another High Court

Abstract:

This article examines the issue of transferring patent cancellation petitions between different High Courts in India. It analyses a specific case where the respondent no.2 sought the transfer of revocation petitions from the High Court of Delhi to the High Court of Himachal Pradesh, in light of the Tribunal Reforms Act, 2021. The article also explores the powers of consolidation and transfer between High Courts and the limitations imposed by the relevant legal provisions.

Introduction:

The Patents Act, 1970 governs the law of patents in India, and it allows for the revocation of patents under Section 64. The Intellectual Property Appellate Board (IPAB) was responsible for hearing revocation petitions; however, with the enactment of the Tribunal Reforms Act, 2021, the IPAB was abolished, and revocation petitions are now to be filed exclusively before High Courts. This article delves into the jurisdictional aspect of transferring such revocation petitions between High Courts.

Background:

In the case under consideration, the respondent no.2, in response to the revocation petitions filed before the High Court of Delhi, sought the consolidation of these petitions with infringement suits pending before the High Court of Himachal Pradesh. The respondent argued that the grounds for revocation and the defenses raised in the infringement suits were similar, justifying the consolidation of the cases.

The Court's Observations:

The Court acknowledged the changes brought about by the Tribunal Reforms Act, 2021, requiring all revocation petitions under Section 64 of the Patents Act to be filed before High Courts. The court, however, declined the request for transfer, stating that powers of consolidation under Rule 26(3) could only be exercised by the Intellectual Property (IP) Division of the Delhi High Court for Delhi matters only. The power of consolidation does not extend beyond the territorial jurisdiction of the Delhi High Court.

Transfer between High Courts:

The Court emphasized that the transfer of proceedings between two separate High Courts is governed by Section 25 of the Code of Civil Procedure (CPC), and such powers can be exercised only by the Supreme Court of India. Section 25 CPC provides that the Supreme Court, if it deems fit, can transfer any suit, appeal, or other proceedings from one High Court to another.

Limitations on Inter-High Court Transfers:

While the Tribunal Reforms Act, 2021, mandated the filing of revocation petitions in High Courts, it did not expressly address the issue of transferring such petitions between High Courts. Consequently, the High Court of Delhi could not entertain the request to transfer the revocation petitions to the High Court of Himachal Pradesh, as this power is vested exclusively in the Supreme Court under Section 25 CPC.

The Concluding Note:

In light of the Tribunal Reforms Act, 2021, and the abolition of IPAB, all revocation petitions under Section 64 of the Patents Act are now to be filed before High Courts. However, the Act does not provide a mechanism for transferring such petitions between different High Courts. The power of transfer between High Courts lies solely with the Supreme Court under Section 25 CPC. Therefore, in the absence of a specific provision allowing for inter-High Court transfers, the request to transfer the revocation petitions from the High Court of Delhi to the High Court of Himachal Pradesh was rightfully dismissed.

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Loreal India Pvt. Ltd. Vs Pornsricharoenpunco .Ltd.

Date of Judgement/Order:25.07.2023

Case No. CS Comm 496 of 2023

Neutral Citation:NA

Name of Hon'ble Court:High Court of Delhi

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

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

Jurisdictional Impact of IPAB Abolition on Trademark Suit

Introduction

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

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

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

Background

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

Defendant's Request for Stay

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

Court's Decision

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

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

Impact of IPAB Abolition

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

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

Concluding Note

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Ttk Prestige Ltd. Vs Gupta Light House

Date of Judgement:24.07.2023

Case No. CS Comm 865 of 2022

Neutral Citation:2023:DHC:5188

Name of Hon'ble Court:High Court of Delhi

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

Case Title: Ttk Prestige Ltd. Vs Gupta Light House

The Impact of Expiry of Design in a Design Infringement Suit

Introduction:

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

Back Ground 

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

Imitation by the Defendant:

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

Trademark Consideration:

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

Designs Act and Trade Marks Act Interplay:

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

Expiration of the Suit Design:

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

Effect on Restraining Use:

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

Preservation of Aspect of Damages: 

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

Determining Piracy Despite Expiry:

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

The Concluding Note: 

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

DISCLAI MER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

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

Date of Judgement:21.07.2023

Case No. CS Comm 323 of 2023

Neutral Citation:NA

Name of Hon'ble Court:High Court of Delhi

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

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

Quia Timet Action: Implications on Jurisdiction and Interim Injunction

Introduction

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

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

Background

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

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

Jurisdiction and Apprehended Threat

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

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

Order 7 Rule 10 CPC and Rejection of Plaint

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

Interim Injunction and Apprehended Threat

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

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

Conclusion

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

DISCLAIMER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Oyster Point Pharma Inc Vs The Controller of Patents

Date of Judgement:26.07.2023

Case No. AID No.10 of 2022

Neutral Citation:NA

Name of Hon'ble Court:High Court of Calcutta

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

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

Evaluating Inventive Step in Patent Applications: 

Abstract: 

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

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

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

Introduction: 

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

Background of the Case: 

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

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

Criteria for Assessing Inventive Step: 

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

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

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

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

The Role of Enhanced Efficacy: 

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

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

Analysis of the Hon'ble Court's Decision: 

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

Importance of Experimental Evidence: 

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

Concluding Note: 

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

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

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

DISCLAIMER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Qualcomm Incorporated Vs Controller of Patent

Date of Judgement:24.07.2023

Case No.CA Comm IPD PAT 285 of 2023

Neutral Citation:2023:DHC:5136

Name of Hon'ble Court:High Court of Delhi

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

Case Title:Qualcomm Incorporated Vs Controller of Patent

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

Introduction

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

Background

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

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

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

High Court's Ruling

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

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

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

Conclusion

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

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

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

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

DISCLAIMER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

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

Date of Judgement:24.07.2023

Case No.CA Comm IPD TM 01 of 2023

Neutral Citation:2023:DHC:5129

Name of Hon'ble Court:High Court of Delhi

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

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

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

Abstract:

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

Introduction:

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

Background:

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

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

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

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

The Judicial Precedent:

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

The Power of Consolidation under IP Division Rules:

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

Section 125 of the Trade Marks Act, 1999:

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

The Rationale for Consolidation:

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

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

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

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

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

Conclusion:

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

DISCLAIMER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Vifor International Limited Vs MSN Laboratories Limited

Date of Judgement:24.07.2023

Case No.CS Comm 261 of 2022

Neutral Citation:2023:DHC:5222

Name of Hon'ble Court:High Court of Delhi

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

Case Title: Vifor International Limited Vs MSN Laboratories Limited

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

Abstract:

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

Introduction:

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

Product-by-Process Claims:

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

Court's Analysis and Findings:

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

Prosecution History Estoppel:

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

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

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

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

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

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

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

Conclusion:

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

DISCLAIMER

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539