Nishita Design And Anr Vs Clay Craft India Pvt.Ltd.

Scope and Implications of class of Design Registration in Infringement Cases

Introduction:

This article delves into a recent legal case wherein the issue of the scope of design registration class was raised. The case involves the plaintiff, a manufacturer of crockery products, who sought to protect their registered designs, "DEVANAGIRI" and "BANARAS," against alleged infringement by the defendant, who manufactured cups. The central question before the court was whether the plaintiff's design registration for plates extended to cover the defendant's cups, as both products fell within the same class.

Design Registration and Scope:

Design registration is a legal mechanism that provides exclusive rights to the creator of a novel and original design. In India, the Designs Act, 2000 governs the registration and protection of designs. Section 2(d) of the Act defines "design" as features of shape, configuration, pattern, or ornament applied to an article by any industrial process.

The case under discussion revolved around the interpretation of Section 22(1)(a) of the Designs Act, which states that a registered design cannot be applied by any third person to any article in the class of designs for which registration is granted. This provision is essential in determining the extent of protection that a design registration offers.

Applicability of Section 22(1)(a):

In this case, the plaintiff registered two designs: "DEVANAGIRI" and "BANARAS," which were applied to the surface of plates. However, the defendant produced cups, not plates, and both products were classified under class 07-01. The critical question was whether the protection extended to the defendant's cups based on the same class classification.

The Court's Ruling:

The court's decision hinged on the interpretation of Section 22(1)(a) and the classification system under the Designs Act. The court noted that Class 07-01 covered both plates and cups, among other articles. The plaintiff's design registration explicitly related to plates, but since the defendant's product, cups, fell within the same class, the court found that the protection could extend to them. The defendant was temporarily restrained from using the "DEVANAGIRI" design on their cups until the matter was resolved. However the Defendant was granted time to file reply in so far as "BANARAS," was concern.

Implications:

This case raises several important legal and practical implications:

Interpretation of Design Registration Class:

The case highlights the significance of the classification of designs under the Designs Act. While registration is specific to the design's application to a particular article, it can also encompass other articles within the same class, as seen in this case.

Protection Beyond the Registered Article:

Design registration not only protects the exact article to which the design is applied but also extends to other articles in the same class. This interpretation reinforces the comprehensive protection provided by design registration.

Importance of Clarity in Registration:

Designers and businesses must be meticulous in specifying the class and the article to which their design applies during the registration process to avoid ambiguity.

Exclusivity of Design Rights:

The ruling reaffirms the exclusive rights granted to design registrants and underscores the importance of vigilance in monitoring potential infringements within the same class.

The concluding Note:

The case discussed in this article serves as a notable example of the complexity of design registration and its implications for the protection of intellectual property rights. The court's interpretation of Section 22(1)(a) reinforces the principle that design protection extends not only to the registered article but also to any article within the same class.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. CS(COMM) 737/2023

Neutral Citation No: NA

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Nishita Design And Anr Vs Clay Craft India Pvt.Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Fsn E-Commerce Ventures Ltd Vs Nykaa E-Retail Pvt. Ltd.

Trademark Infringement and Triple Identity Case: 

Introduction:

TThe case of NYKAA vs. OYKAA revolves around a dispute concerning the use of a similar trademark, which has raised concerns about the protection of established brand identities. In this analytical legal article, we will delve into the details of the case, examining the key elements of trademark infringement and the application of the "triple identity" test, as seen in the judgment by the Hon'ble High Court of Delhi.

Background of the case:

The Plaintiff, NYKAA, has been engaged in the manufacturing, sale, and distribution of a wide range of cosmetic and wellness products under the trademark 'NYKAA' since 2012. They have secured trademark registrations for 'NYKAA' in various classes, not only in India but also in several other countries, including Singapore, UAE, United Kingdom, Bangladesh, Kuwait, and Qatar. The Plaintiff's extensive presence in the cosmetics industry, both in terms of products and geographic reach, highlights the significance of their brand identity.

On the other hand, the Defendants filed an application for the trademark 'OYKAA' for a substantial array of cosmetic products in class 3. Furthermore, the Defendants are actively marketing these products and maintain an online presence through the website www.oykaa.com. This situation gave rise to concerns regarding trademark infringement, necessitating a legal intervention to protect the Plaintiff's rights.

Application of the "Triple Identity" Test:

The Hon'ble High Court of Delhi relied upon the precedent set in the case of Ahmed Oomerbhoy Vs. Gautam Tank (2007 SCC OnLine Del 1685) to assess the case. In the aforementioned case, the word 'Postman' and the device mark 'Postman' were registered trademarks. The Court in that case held that since the impugned mark, 'Super Postman,' was similar, the goods were the same, and the area in trade was common, the test of "triple identity" was satisfied, establishing a case for infringement and passing off.

In the NYKAA vs. OYKAA case, the Court made a similar observation. It was determined that the services and goods offered by both parties were identical. The trade channels and the customer base also overlapped significantly. The Defendant's mark, 'OYKAA,' was found to be not just similar but almost imitative and identical to that of the Plaintiff's mark, 'NYKAA.' These observations collectively indicated the fulfillment of the "triple identity test" in favor of the Plaintiffs.

Relief Granted:

With the "triple identity" test satisfied, the Hon'ble High Court of Delhi granted interim injunctive relief in favor of the Plaintiff and against the Defendant. This relief effectively prevents the Defendant from using the infringing mark, 'OYKAA,' for their cosmetic products. This decision underscores the court's commitment to protecting the Plaintiff's established brand identity and preventing consumer confusion in the marketplace.

The Concluding Note:

Trademark infringement cases such as NYKAA vs. OYKAA serve as crucial legal mechanisms for protecting brand identities and ensuring fair competition in the marketplace. The application of the "triple identity" test, as established in legal precedents, provides a clear framework for assessing infringement cases. 

The Case Law Discussed:

Date of Judgement/Order:12/10/2023

Case No. CS(COMM) 726/2023,

Neutral Citation No: NA

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Fsn E-Commerce Ventures Ltd Vs Nykaa E-Retail Pvt. Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Salik Mukhtar And 4 Others Vs M.M.I. Tobacco Pvt. Ltd

Trademark Infringement and Dissolution of Partnership

Introduction:

The present appeal centers around a dispute involving the usage of the trademark "Musa Ka Gul" in connection with tobacco products. The Plaintiff/Respondent and the Defendant/Appellant share a common familial lineage, but the former has obtained trademark registration for the said mark, while no such registration exists in favor of the Defendant. The issue at hand has previously been a subject of arbitration before the High Court of Kolkata, which led to an interim injunction against the Defendant's use of the trademark.

Factual Background:

The crux of this case lies in the dissolution of the firm "M S Industries." The Appellant contends that subsequent to issuance of the injunction against M.S.Indistries by the Kolkata High Court in the arbitration proceedings, M S Industries was dissolved, rendering the injunction inoperative against the individual Defendants.

Court's Decision:

However, the court has dismissed the Appeal, stating that there is no evidence on record to suggest that the partnership business was formally and entirely wound up. Mere dissolution of the partnership, even with approval from the proceedings in question, does not grant the Defendants the authority to produce and sell products with a name and identity deceptively similar to the registered trademark of the Plaintiff-Respondents.

Legal Analysis:

1. Trademark Registration:

The Plaintiff's registration of the trademark "Musa Ka Gul" is a pivotal point in this case. Trademark registration grants exclusive rights to the owner, providing protection against any unauthorized usage of the mark in connection with similar goods or services.

2. Injunction:

The interim injunction issued by the Kolkata High Court in arbitration proceeding, signifies the seriousness of the dispute and the potential harm to the Plaintiff's trademark rights. The court's prior decision underscores the importance of safeguarding registered trademarks from infringement.

3. Partnership Dissolution:

The dissolution of M S Industries raises the question of whether the individual Defendants can be held responsible for trademark infringement. The court's decision suggests that the dissolution alone does not absolve the Defendants of liability.

4. Authority to Use Trademark:

The court has stressed that the authority to use a trademark, especially in connection with deceptively similar products, is not automatically conferred upon the dissolution of a partnership. Other factors, such as trademark registration and previous legal proceedings, must be considered.

The Concluding Note:

This legal analysis highlights the complexities surrounding trademark infringement and the dissolution of a partnership. While the dissolution of M S Industries may have affected the corporate entity, it does not automatically grant the individual Defendants the right to infringe upon the Plaintiff's registered trademark. The court's decision underscores the significance of upholding trademark rights, even in cases involving familial or partnership disputes.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. First Appeal from Order 2170 of 2022

Neutral Citation No: 2023: AHC:197942

Name of Hon'ble Court: High Court of Allahabad

Name of Hon'ble Judge: Kshitij Shailendra, H.J.

Case Titled: Salik Mukhtar And 4 Others Vs M.M.I. Tobacco Pvt. Ltd

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Ayur United Care Vs Union of India

The Court should not legislate, but has to abide by the statutory dictate

Introduction:

The recent abolition of the Intellectual Property Appellate Board (IPAB) and the establishment of the Delhi High Court Intellectual Property Division have given rise to a pressing legal question: Which judicial authority [Hon'ble Single Judge or Hon'ble Division Bench, High Court of Delhi ] should hear writ petitions challenging orders passed by the IPAB before its abolition on April 4, 2021? This complex issue has far-reaching implications and requires a thorough legal analysis.

The Vanishing Jurisdiction Dilemma:

One of the central issues that have emerged in this context is the practicality of remanding cases back to the court when the IPAB, the original adjudicatory body, no longer exists. The Delhi High Court Intellectual Property Division now grapples with the challenge of determining the appropriate judicial authority to handle these cases.

The Judicial Wisdom:

The Hon'ble Single Judge in the Intellectual Property Division of the Delhi High Court has provided an insightful perspective on this matter. The Judge underscores a fundamental principle of the judiciary – the court's role is not to legislate but to adhere to statutory provisions. The court is bound by the statutory dictate, and if the law designates a particular category of matters to be heard by Single Judges, the court must abide by this directive.

Rule 4 of the IPD Rules emerges as a crucial piece of the puzzle when read in conjunction with various clauses in Rule 1. It unequivocally dictates that writ petitions challenging IPAB orders must be heard by Single Judges. These orders fall under the category of "IPR subject matters" as defined in Rule 2(i) of the IPD Rules.

Deciphering the Statutory Framework:

The significance of this legal analysis lies in the clarity of the IPD Rules. These rules provide a structured framework for dealing with intellectual property matters in the post-IPAB era. Writ petitions directed against IPAB orders unmistakably fall within the definition of "original proceedings, appellate, and other proceedings related to IPR subject matter(s) as defined in Rule 2(i)."

Furthermore, the subject matter writ petitions are encompassed within the broader definition of "IPR subject matters or cases or proceedings or disputes" by virtue of the opening words of Rule 2(l). Hence, the conclusion is that such writ petitions are maintainable before the Hon'ble Single Judge of the High Court of Delhi.

The Concluding Note:

In the wake of the IPAB's abolition and the establishment of the Delhi High Court Intellectual Property Division, the jurisdictional dilemma posed by writ petitions challenging IPAB orders has been met with legal wisdom and a strict adherence to the statutory dictate. The Hon'ble Single Judge's stance on this matter is clear: the court's role is not to legislate but to follow the law.

By interpreting Rule 4 of the IPD Rules in conjunction with other relevant clauses, the court has established a robust framework for addressing intellectual property matters post-IPAB. This legal analysis underscores the importance of maintaining legal consistency and adherence to established rules in the evolving landscape of intellectual property rights in India. The clarity of the statutory framework ensures that the law is not only followed but also that justice is served effectively.

The Case Law Discussed:

Date of Judgement/Order:16/10/2023

Case No. W.P.(C)-IPD 61/2021 

Neutral Citation No: 2023: DHC:7556

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Ayur United Care Vs Union of India

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Humans of Bombay Stories Pvt. Ltd. Vs POI Social Media Pvt. Ltd.

The Idea-Expression Dichotomy in Copyright Infringement

Introduction:

The recent legal dispute between Humans of Bombay Stories Pvt. Ltd. ("the Plaintiff") and an opposing party ("the Defendants") before the High Court of Delhi has brought to the forefront the intricacies of the idea-expression dichotomy in copyright law. This article delves into the details of this case, examining the fundamental principles of copyright law and their application in the context of protecting creative works.

The Plaintiff's Allegations:

The Plaintiff's case revolves around the alleged infringement of various forms of content, including photographs, literary works forming the basis of stories, videos, and the distinctive manner of presenting these stories. The core of their argument is that the Defendants have imitated and copied a significant portion of their content, even replicating several images. The Plaintiff contends that this unauthorized reproduction constitutes copyright infringement.

The Defendant's Defense:

Conversely, the Defendants argue that the commonality of images between the two websites may stem from the subjects of the stories providing these images. Furthermore, the Defendants assert that the Plaintiff has also engaged in copying, pointing to instances where the Plaintiff allegedly replicated images from the Defendant's website.

The Idea-Expression Dichotomy:

Central to this legal battle is the idea-expression dichotomy inherent in copyright law. This doctrine distinguishes between the protection of ideas and the protection of the expression of those ideas. Copyright law recognizes that ideas, concepts, or themes themselves cannot be copyrighted. It is only the unique expression, the creative embodiment of these ideas, that warrants protection.

The Copyright Act of 1957:

Under Section 51 of the Copyright Act, 1957, the unauthorized copying or imitation of the expression of an idea amounts to copyright infringement. This provision safeguards the rights of creators by granting them the exclusive authority to control the reproduction and distribution of their original and creative expressions.

Court's Ruling:

In this specific case, the court has carefully examined the arguments of both parties. It observed that neither party is entitled to replicate or imitate each other's content and images. Moreover, the ruling emphasizes that this protection extends to literary content as well. As a result, the court issued an order that both parties, namely Humans of Bombay and People of India, should refrain from using each other's copyrighted works.

The Concluding Note:

The Humans of Bombay Stories Pvt. Ltd. v. People of India legal dispute provides a significant illustration of the idea-expression dichotomy in copyright law. It underscores the principle that copyright protection is not extended to abstract ideas or themes but rather to the creative expressions of those ideas. Copyright holders are granted exclusive rights to their original works, and any unauthorized replication can lead to infringement claims. The court's decision in this case reaffirms these principles, highlighting the importance of respecting the idea-expression dichotomy in copyright law and upholding the rights of creators and copyright holders.

The Case Law Discussed:

Date of Judgement/Order:11/10/2023

Case No. CS(COMM) 646/2023

Neutral Citation No: 2023: DHC:7524

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Humans of Bombay Stories Pvt. Ltd. Vs POI Social Media Pvt. Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Kross S.A. Vs Vijay Munjal

The Crucial Role of Due Diligence in Post-Trial Amendments

Introduction:

One critical aspect of litigation is the ability to make amendments to pleadings as new information or strategies emerge. However, as a recent case before the Hon'ble Delhi High Court demonstrates, such post trial amendments require due diligence to be considered admissible and effective. In this case, the plaintiff sought to amend their complaint post-trial, but the court rejected the application on the grounds of a lack of due diligence.

Background of the Case:

The lawsuit in question aimed to secure a permanent injunction against the defendants, preventing them from using the mark "KROSS" for any product or service. Initially, the suit was brought against three defendants: Hero Eco Group (Defendant 1), Mr. Vijay Munjal (Defendant 2), and Hero Eco Tech Limited (Defendant 3). However, by an order dated 20 February 2014, Hero Eco Group was removed from the list of parties, leaving only Mr. Vijay Munjal and Hero Eco Tech Limited as the defendants.

In a surprising turn of events, the plaintiff, around 15 February 2021, filed an application to amend the complaint by adding VR Holdings, Ms. Rekha Munjal, Mr. Naveen Munjal, and Mr. Gaurav Munjal as Defendants 3A to 3D. Notably, the application for amendment occurred after the trial had commenced.

The Court's Observations:

During the trial, the Hon'ble Delhi High Court made a significant observation. The Hon'ble Single Judge noted that the plaintiff had only sued the user of the "KROSS" mark and not the proprietor. Consequently, the proprietor of the mark, VR Holdings, remained free to continue using the mark. In light of this, the plaintiff filed an application under Order 6 Rule 17 of the Code of Civil Procedure (CPC) seeking to add VR Holdings and others as additional defendants, an application that was clearly made after the trial stage.

The Court's Decision:

The court, however, rejected the plaintiff's application for amendment. The rejection was primarily based on the absence of due diligence exhibited by the plaintiff. The court highlighted that the application failed to plead that the plaintiff had exercised due diligence before the trial began. It did not establish that, despite diligent efforts, it was impossible to include the proposed defendants, Defendants 3A to 3D, or to introduce the arguments now sought to be raised through the amendment before the trial commenced.

The court also considered the plaintiff's replication, which asserted that the suit was not flawed due to misjoinder of parties or the non-joinder of a necessary party. The plaintiff maintained that Mr. Vijay Munjal had already been included as Defendant No. 2, as he was both the chairman of Hero Eco Group and a partner in VR Holdings, which filed the "KROSS" mark. Therefore, there was no misjoinder of parties.

However, it became apparent that the plaintiff was aware of the trademark's ownership by VR Holdings when filing the replication. Yet, VR Holdings had not been included as a defendant until the final argument stage. This lack of diligence on the part of the plaintiff in filing the application under Order 6 Rule 17 CPC played a significant role in the court's decision to dismiss the application.

The Concluding Note:

This case serves as a reminder of the importance of due diligence in the legal process, particularly when seeking to make post-trial amendments. In litigation, parties must actively investigate and address relevant issues promptly. In the absence of diligence, courts may be hesitant to entertain late-stage amendments that could disrupt the proceedings. The decision underscores the necessity of careful and proactive legal strategy throughout the litigation process.

The Case Law Discussed:

Date of Judgement/Order:10/10/2023

Case No. CO Comm IPD TM 358 of 2021

Neutral Citation No: 2023: DHC:7461

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Kross S.A. Vs Vijay Munjal

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Syngeta Limited Vs Controller of Patents and Designs

Plurality of Invention in Divisional Patent Applications under Section 16 of the Patent Act 1970

Introduction:

The concept of plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has been a subject of legal interpretation and debate. "The issue that has arisen is whether the plurality of inventions must be reflected in the claims of the parent application or if it is sufficient for them to be disclosed in the complete specifications accompanying the claims." This article delves into the legal nuances and the evolution of this issue, focusing on a case before the Hon'ble Division Bench of the High Court of Delhi.

Background of the case:

Section 16 of the Patent Act 1970 governs the filing of Divisional Patent Applications in India. A Divisional Application is a separate application that can be filed based on a pending parent application. The primary question that has sparked controversy is whether the parent application must contain claims related to multiple distinct inventions for a Divisional Application to be filed.

Initial Interpretation by the Controller:

The Controller initially held that a Divisional Application could only be filed if the parent application contained claims related to multiple distinct inventions. Additionally, the Controller suggested that a Divisional Application could not be based solely on disclosures in the specification accompanying the parent application.

Single Judge's Interpretation:

This interpretation was further clarified by a Single Judge of the High Court of Delhi. The Single Judge opined that, to file a Divisional Application, the parent application should include claims related to multiple distinct inventions. This restrictive view seemingly necessitated the presence of such claims in the parent application and discouraged the reliance on disclosures in the specification alone.

Divisional Bench's Clarification:

However, a Divisional Bench of the High Court of Delhi later provided a more expansive interpretation. It emphasized that Section 16(1) of the Patent Act 1970 permits the filing of a further application for an invention as long as it is disclosed in the provisional or complete specification previously submitted in connection with the parent application. This interpretation opened the door to the possibility of filing a Divisional Application even if the claims in the parent application did not explicitly address multiple distinct inventions.

Key Determining Factors:

The pivotal question in the case revolved around whether the specification accompanying the parent application, be it provisional or complete, contained disclosures of multiple inventions. The Divisional Bench clarified that the viability of a Divisional Application hinges on the contents of the provisional or complete specification. This crucial determination has clarified the prevailing ambiguity, and it is no longer essential for the claims in the parent application to explicitly cover multiple distinct inventions.

"In other words, the Hon'ble Division Bench has dispelled the confusion by affirming that a Divisional Application is maintainable not only on the basis of claims but also based on the disclosure made in the provisional or complete specification of the patent." This interpretation aligns more closely with the legislative intent and accommodates situations where multiple inventions may not be claimed in the parent application but are nonetheless disclosed in the accompanying specifications.

Uniformity in Filing Divisional Applications:

In addition to clarifying the approach to plurality of invention, the Hon'ble Division Bench of the High Court of Delhi emphasized that whether a Divisional Application is filed suo moto by the applicant or in response to an objection raised by the Controller, the criteria for determining the presence of multiple inventions in the provisional or complete specification remain the same. This directive ensures consistency in the assessment of Divisional Applications, irrespective of the circumstances under which they are filed.

The Concluding Note:

The legal interpretation of the plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has evolved from a restrictive stance to a more inclusive and accommodative perspective. The critical factor in determining the viability of a Divisional Application is whether the provisional or complete specification contains disclosures of multiple inventions, irrespective of the explicit claims in the parent application.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. C.A.(Comm.IPD-PAT) 471 of 2022

Neutral Citation No: 2023:DHC:7473-DB

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Syngeta Limited Vs Controller of Patents and Designs

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

The Chinese University of Hong Kong Knowledge Transfer office Vs The Assistant Controller of Patent and Design

Analysis of Section 3(i) of the Patent Act and the Distinction Between Diagnosis and Diagnostic

Introduction:

The recent case before the Hon'ble High Court of Madras concerning Section 3(i) of the Patent Act brought to light a crucial distinction between "diagnosis" and "diagnostic." The case revolved around whether an invention that involved testing nucleic acid molecules in a biological sample from a pregnant woman to identify the fetal fraction could be considered diagnostic and therefore barred under Section 3(i). This article provides an analytical perspective on the case and the court's decision.

Section 3(i) of the Patent Act:

Section 3(i) of the Indian Patent Act is a significant provision that excludes certain inventions from being patented. "It states that "a method of diagnosis practiced on human beings or animals" is not patentable. The key issue in this case was whether the invention, despite being related to diagnosis, was inherently "diagnostic" in nature?"

The Rejected Patent Application:

The case arose from the rejection of an Indian patent application (No. 4812/CHENP/2012) dated 01.06.2012. The application was denied on the grounds that it fell within the scope of Section 3(i) of the Patents Act. The Assistant Controller contended that the invention was essentially a diagnostic method, making it ineligible for a patent.

The Appellant's Argument:

The appellant argued that the invention did not diagnose a disease but rather focused on identifying the fetal fraction in a biological sample. According to the appellant, this identification was a critical step for subsequent diagnostic testing. The argument revolved around the distinction between the identification of the fetal fraction and the actual diagnosis of diseases, disorders, or conditions.

Court's Decision:

The court's decision was pivotal in this case. It allowed the appeal, emphasizing that the invention involved testing nucleic acid molecules in a biological sample to identify the fetal fraction. This fraction was crucial for further testing to diagnose chromosomal aberrations. However, the court made a critical distinction: the invention itself did not diagnose diseases, disorders, or conditions. Instead, it provided an indicator (the fetal fraction) that was relevant for subsequent diagnostic testing.

Defining "Diagnosis" and "Diagnostic":

The court delved into the meaning of "diagnosis" in the context of medical science. It defined diagnosis as a method of identifying the existence or non-existence of a disease or disorder and its various attributes. However, the court noted that such identification, by itself, cannot be construed as a form of treatment.

The term "diagnostic" in Section 3(i) was juxtaposed with words like "medicinal" and "surgical," which are unquestionably forms of treatment. The court agreed with the appellants that "diagnostic" should not be considered in isolation but rather in conjunction with the accompanying words of Section 3(i) as a whole. The court concluded that "diagnostic" should be limited to processes that reveal pathology for the treatment of human beings.

Determining "Diagnostic" Processes:

The court provided guidance on how to determine whether a test is diagnostic. It posed the question of whether the test is inherently and per se capable of identifying a disease, disorder, or condition for treatment. This determination should be made by assuming that persons skilled in the relevant field, including medical professionals, examine the results. If these individuals would not be able to diagnose the disease or condition based on the process because it is not designed for that purpose, such a process, whether labeled as screening or otherwise, should not qualify as diagnostic under Section 3(i).

Analyzing the Invention:

The court's analysis of the patent application revealed that the invention, as described in claims 1 and 9, involved testing nucleic acid molecules in a biological sample from a pregnant woman to identify the fetal fraction. Medical literature indicated that a fetal fraction of not less than 4% was necessary for further testing to identify chromosomal aberrations. Until this stage was reached, pathology remained undisclosed, and treatment was not possible. Therefore, the invention was inherently incapable of identifying the existence or non-existence of a disease, disorder, or condition. The determination of the fetal fraction related to diagnosis but was not inherently "diagnostic" in nature.

The Concluding Note:

The case presented a complex and nuanced interpretation of Section 3(i) of the Patent Act, highlighting the distinction between diagnosis and diagnostic. The court's ruling clarified that a process should only be considered "diagnostic" if it inherently identifies diseases or conditions, not if it merely provides a step in a diagnostic process. This decision has significant implications for patent law and the boundaries of what can be patented in the field of medical diagnostics. It sets a precedent for future cases where the distinction between diagnosis and diagnostic is in question, emphasizing the importance of an inherent capability to identify diseases or conditions for an invention to be barred under Section 3(i).

The Case Law Discussed:

Date of Judgement/Order:12/10/2023

Case No. CMA (PT) No.14 of 2023 & CMP No.16669 of 2023

Neutral Citation No: 2023:MHC:4617

Name of Hon'ble Court: High Court of Madras at Chennai

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, H.J.

Case Titled:The Chinese University of Hong Kong Knowledge Transfer office Vs The Assistant Controller of Patent and Design

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph no: 9990389539