Basalingappa Chinappa Goudar and Ors Vs Shantavva and Other

Reliance of thirdparty registration in a opposition proceeding

Introduction:

Trademark opposition proceedings represent a vital stage in the trademark registration process, allowing interested parties to challenge the registration of a trademark that they believe conflicts with their own rights or the public interest. While it is customary for opponents to rely on their own trademarks as the basis for opposition, the ability to leverage third-party registrations introduces a dynamic element into these proceedings.

Legal Framework:

Under trademark law, the grounds for opposition typically encompass a range of factors, including likelihood of confusion, dilution, descriptiveness, and genericness, among others. While opponents traditionally assert their own rights based on existing trademark registrations or common law usage, the option to rely on third-party registrations expands the scope of available arguments.

In many jurisdictions, including [mention specific jurisdictions], the relevant trademark statutes and regulations explicitly permit opponents to cite third-party registrations as evidence of potential conflicts. This allowance reflects the recognition that trademarks are not viewed in isolation but within the broader context of the marketplace and existing rights.

Procedural Considerations:

In practice, the utilization of third-party registrations in trademark opposition proceedings involves several procedural considerations. Opponents must ensure that the cited registrations are relevant to the grounds of opposition being asserted and that they meet the evidentiary standards established by the relevant administrative or judicial body.

Strategic Implications:

The strategic implications of relying on third-party trademark registrations in opposition proceedings are significant. By leveraging a broader array of evidence, opponents can strengthen their case and enhance the likelihood of a successful outcome. Third-party registrations may serve as powerful indicators of the existence of similar or conflicting marks in the marketplace, bolstering arguments related to likelihood of confusion or dilution.

The Case Discussed:

Case Title: Basalingappa Chinappa Goudar and Ors Vs Shantavva and Other

Case Citation: ILR 2002 Kar 260

Name of Court: Karnatak High Court

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

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com

Ph No: 9990389539

B.D.R Developers Pvt. Ltd. Vs Narsingh Shah

The scope of permissible amendments at the stage of Judgement

Background:

In the case at hand , an application for amendment was permitted even as the judgment was about to be pronounced, pursuant to an application under Order 12 Rule 6 of the CPC. This decision was anchored in the understanding that Order VI Rule 17 of the CPC confers upon parties the right to amend their pleadings "at any stage of the proceedings." Unlike Order IX Rule 7, which pertains specifically to the hearing stage, Rule 17's scope spans the entirety of the proceedings, affording litigants the leeway to rectify, alter, or supplement their pleadings in response to evolving circumstances or newly discovered evidence.

At any stage of the proceedings:

The phrase "at any stage of the proceedings" warrants careful examination to discern its implications. Judicial interpretation has expansively construed this provision, acknowledging that the term "stage" encompasses not only the pre-trial phase but also extends to subsequent stages, including judgment pronouncement and even the appellate process. This interpretation aligns with the objective of ensuring a fair and thorough resolution of disputes by enabling parties to refine their claims or defenses in light of evolving legal and factual complexities.

Furthermore, Order VI Rule 17 imposes a threshold requirement of due diligence on parties seeking to amend their pleadings, especially if sought after trial commencement. The court retains discretion to evaluate whether the applicant has diligently pursued the amendment and whether its allowance would prejudice the opposing party or compromise judicial integrity.

The scope of permissible amendments:

The scope of permissible amendments under Order VI Rule 17 is expansive yet circumscribed. While parties enjoy latitude in revising their pleadings to clarify or bolster their assertions, amendments must adhere to certain criteria. They should be relevant to the suit's subject matter, consistent with existing pleadings, and aimed at furthering the interests of justice. Frivolous or vexatious amendments, intended solely to cause delay or harassment, are unlikely to be sanctioned by the court.

Implications:

The court's discretion to allow or disallow amendments entails a delicate balancing act of competing interests, including the imperative of prompt resolution, the principle of litigation finality, and parties' right to effectively present their case. Courts are guided by principles of equity and fairness in wielding this discretion, striving to strike a judicious balance between the parties' interests and the overarching objective of upholding the rule of law.

The Case Discussed:

Case Title: B.D.R Developers Pvt. Ltd. Vs Narsingh Shah
Judgment/Order Date: 03.08.2021
Case No:CM M 412 of 2020
Neutral Citation: NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Asha Menon,H.J.

Disclaimer:

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

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

Rachna Sagar Pvt. Ltd. Vs Sovereign Mercantile Pvt. Ltd. and another

Vulnerability of Digital Documents

Background of the Case

The case at hand revolves around a dispute wherein the defendant claims prior user rights over a mark imprinted on the cover of a book allegedly published in 1995. To substantiate this claim, the defendant submitted digital screenshots of the book as evidence of prior use.

However, upon the court's inquiry, it was revealed that the submitted copies were digital reproductions and not the original physical publications. This revelation casts doubt on the credibility of the evidence presented and raises concerns about its authenticity.

Legal Analysis

The admissibility of digital evidence in legal proceedings is contingent upon its reliability and authenticity. While digital copies offer convenience and accessibility, they are inherently susceptible to alterations and manipulations, thus compromising their credibility as reliable evidence. In the context of prior use claims, where the establishment of historical usage is crucial, the reliance on digital evidence poses significant challenges.

Absence of physical Copies of documents:

The court's rejection of the defendant's prior use argument is grounded in the principle that the evidence presented fails to conclusively establish the authenticity of the mark's historical usage. The absence of original physical copies deprives the court of tangible evidence that could verify the existence and usage of the mark at the purported time.

Vulnerability of Digital Documents:

Digital images, by their nature, lack the inherent reliability of physical copies and are susceptible to manipulation, casting doubt on their probative value.

Moreover, the court rightfully raises concerns about the origins of the digital copies and whether they accurately represent the 1995 publication. Without concrete evidence linking the digital reproductions to the original physical copies, the authenticity of the evidence remains questionable. While acknowledging the existence of a digital version of the document, the court appropriately exercises caution in accepting it as definitive proof of prior use.

Importance of Physical Documents:

The ideal substantiation of prior use should involve the production of physical copies of the publications from the relevant period. Physical evidence not only provides tangible proof of historical usage but also mitigates concerns regarding authenticity and reliability. In the absence of such evidence, courts are rightfully hesitant to accord credence to digital reproductions, which lack the same level of certainty and verifiability.

The Case Discussed:

Case Title: Rachna Sagar Pvt. Ltd. Vs Sovereign Mercantile Pvt. Ltd. and another

Judgment/Order Date: 24.04.2024

Case No:CS Comm 304 of 2023

Neutral Citation: 2024:DHC:2963

Name of Court: Delhi High Court

Name of Hon'ble Judge: Sanjeev Narula,H.J.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com

Ph No: 9990389539

Mr. Sanjay Arora Vs Jasmer

Dishonesty in adoption of Trademark

Background:

The dispute centers around the trademark "TIGER," which both the plaintiff and the defendant used in connection with identical items. The defendant had applied for the trademark, but the court granted an injunction against the defendant based on the plaintiff's claim of prior use.

Analysis of Prior Use:

In trademark law, priority of use is a crucial factor in determining ownership rights. The plaintiff's ability to establish prior use of the "TIGER" mark is pivotal in this case. Prior use grants the user certain rights and protections under trademark law, regardless of whether the mark is registered.

In this case, the court's decision to grant an injunction against the defendant suggests that the plaintiff successfully demonstrated prior use of the "TIGER" mark. This could have been evidenced by sales records, advertising materials, or other documentation showing the plaintiff's use of the mark in commerce before the defendant.

The Significance of Defendant's Relationship with Plaintiff:

One noteworthy aspect of this case is the defendant's prior employment with the plaintiff. The court held that the defendant's adoption of the "TIGER" mark was dishonest due to their former employment relationship with the plaintiff.

Under trademark law, adopting a mark in bad faith or with the intent to deceive can result in the denial of trademark rights or the cancellation of an existing registration. In this case, the defendant's status as a former employee of the plaintiff likely influenced the court's determination of dishonesty.

Conclusion:

The case of Plaintiff Vs. Defendant involving the trademark "TIGER" underscores the importance of prior use and good faith adoption in trademark disputes. The plaintiff's ability to establish prior use, coupled with evidence of the defendant's dishonest adoption, led to the court granting an injunction against the defendant.

The Case Discussed:

Case Title: Mr. Sanjay Arora Vs Jasmer

Judgment/Order Date: 24.04.2024

Case No:CS Comm 614 of 2022

Neutral Citation: 2024:DHC:3221

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal,H.J.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com

Ph No: 9990389539

Natco Pharma and Novartis AG and another

Enhanced solubility and Bio-availability and Section 3(d) of Patent Act 1970

Background:

Section 3(d) of the Indian Patent Act 1970 prohibits the grant of patents for inventions that are mere enhancements of known substances, unless such enhancements result in a significant improvement in efficacy.

This provision aims to strike a balance between promoting innovation and ensuring affordable access to essential medicines, particularly in the context of pharmaceutical patents. The interpretation of Section 3(d), particularly regarding the criterion of therapeutic efficacy, has been the subject of several legal disputes and judicial pronouncements.

Case Overview

The case under consideration before the Hon'ble Division Bench, High Court of Delhi, involved an appeal challenging the validity of a patent (IN’176) granted for a medicinal product. The central issue before the Court was whether the properties of enhanced solubility and bio availability, claimed by the applicant, could be construed as evidence of higher therapeutic efficacy, thus satisfying the requirements of Section 3(d). The appellant argued that the enhanced bioavailability of the patented product did not necessarily translate to a higher therapeutic efficacy, as claimed by the patent holder.

Judgment Analysis:

In its analysis, the Hon'ble Division Bench, High Court of Delhi provided clarity on the interpretation of Section 3(d) and its application to pharmaceutical patents. The Court emphasized that the test of efficacy under Section 3(d) should be limited to therapeutic efficacy, rather than considering other properties such as enhanced solubility and bioavailability.

The Court reasoned that while enhanced bioavailability might contribute to the effectiveness of a medicinal product, it does not automatically imply a higher therapeutic efficacy.

Furthermore, the Court noted that the applicant had not claimed any enhancement in therapeutic efficacy in its patent application. Instead, the sole advantage claimed was related to enhanced solubility and bioavailability.

Based on these observations, the Court concluded that the appellant had raised a credible challenge to the validity of the patent (IN’176), as the claimed properties did not establish a significant improvement in therapeutic efficacy as required under Section 3(d).

Implications and Conclusion

The judgment provides valuable guidance on the interpretation and application of Section 3(d) of the Indian Patent Act 1970, particularly in the context of medicinal patents. By clarifying that the test of efficacy is limited to therapeutic efficacy and cannot be extended to properties like enhanced solubility and bioavailability, the Court reaffirmed the legislative intent behind Section 3(d) to prevent the grant of patents for mere incremental improvements of existing substances.

The Case Discussed:

Case Title: Natco Pharma and Novartis AG and another

Judgment/Order Date: 24.04.2024

Case No:FAO OS Comm 178 of 2021

Neutral Citation: 2024:DHC:3198

Name of Court: Delhi High Court

Name of Hon'ble Judge: Vibhu Bakhru and Amit Mahajan,H.J.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com

Ph No: 9990389539

Microsoft Technology Licensing LLC Vs Assistant Controller of Patent and Designs

Patentability of computer-implemented inventions under Section 3(k) of the Patents Act, 1970

Introduction:

In the case at hand, the Appellant, Microsoft Technology Licensing, LLC, has sought appellate relief against the decision of the Assistant Controller of Patents and Designs to refuse the grant of a patent titled ‘Reversible 2-Dimensional Pre-/Post-Filtering for Lapped Biorthogonal Transform’. Central to this dispute is the interpretation and application of Section 3(k) of the Patents Act, 1970, concerning computer-implemented inventions.

Background and Legal Framework

Section 3(k) of the Patents Act, 1970, serves as a pivotal provision governing the patentability of computer-related inventions. It stipulates that mathematical methods or business methods or computer programmes per se are not patentable unless they demonstrate a technical advancement and provide a technical solution to a technical problem.

Judicial Analysis:

In the appellate proceedings, the Hon'ble High Court of Delhi engaged in a comprehensive analysis of the subject patent application in light of Section 3(k) of the Act. The Court emphasized that for computer-implemented inventions to be patentable, they must transcend mere algorithms or business methods and exhibit a tangible technical effect or enhancement.
The Court articulated a two-pronged test for assessing the patentability of computer-implemented inventions:

The overall method and system disclosed in the patent application must contribute directly to a specific and credible technical effect or enhancement beyond ordinary computing processes.

The inventive contribution should not only improve the functionality of the system but also achieve an innovative technical advantage that is distinct from routine operations expected of such systems.

Application to the Case

The Court conducted a meticulous claim construction analysis of the subject patent application, focusing on its integration of complex mathematical transformations into a hardware setup for digital media data compression. The integration of lapped transforms and reversible overlap operators into the hardware components was deemed to constitute a significant technical advancement. By facilitating efficient compression while maintaining reversibility, the patented invention directly contributed to improved system performance and efficiency, thereby satisfying the requirements of Section 3(k) of the Act.

Implications and Conclusion:

The present case serves as a landmark precedent in clarifying the standards for patentability of computer-implemented inventions under Section 3(k) of the Patents Act, 1970. It sets forth a rigorous yet balanced framework that encourages technological advancement while preserving the integrity of patent law.

The Case Discussed:

Case Title: Microsoft Technology Licensing LLC Vs Assistant Controller of Patent and Designs

Judgment/Order Date: 16.04.2024
Case No:CA Comm IPD PAT 185 of 2022
Neutral Citation: 2024:DHC-3547
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh,H.J.

Disclaimer:

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

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

Amit Sood Vs Union of India and Ors

Bad Faith and Trademark Rectification

Rectification from the register:

Case at hand refers to the process of correcting or removing a registration from an official record or register. In this case, the registration for "ROSHAN" was rectified, meaning it was altered or removed from the register.

Impugned Registration:

The registration of "ROSHAN" is being challenged or questioned.

Not honest adoption of mark/name:

The adoption of the names "ROSHAN STUDIOS" or "ROSHAN PORTRAITS" was not done in good faith or with honesty.

Resulting in passing off:

Passing off refers to the act of unfairly using someone else's intellectual property (such as a trademark or brand name) to deceive or confuse consumers. The adoption of the names "ROSHAN STUDIOS" or "ROSHAN PORTRAITS" is leading to confusion or deception among consumers.

No plausible justification:

The respondents (those defending the use of the names) have not provided any reasonable explanation or justification for using the impugned name/mark.

Flawed claim of ownership:

The respondents' claim of ownership of the mark is considered flawed because the goodwill associated with the name does not belong to them but to the petitioner (the party challenging the registration).

Duty of the court in cancellation petitions:

The court has a responsibility to ensure that the register of trademarks is maintained accurately and that registrations are not allowed to remain if they are obtained dishonestly or if they infringe on the rights of others.

Case at hand describes a legal dispute over the registration of the trademark "ROSHAN" and the use of related names, with the court finding that the adoption of these names was not honest and resulted in passing off, leading to the rectification of the registration.

The Case Discussed:

Case Title: Amit Sood Vs Union of India and Ors
Judgment/Order Date: 03.05.2024
Case No:WP (C) IPD 54 of 2021
Neutral Citation: 2024:DHC-3533
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh,H.J.

Disclaimer:

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

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