Alimentary Health Limited Vs Controller of Patent and Design

Evaluation of Inventive steps and Obviousness in Light of Prior Art

Abstract:

Here we are discussing refusal of Indian Patent Application No. 3989/DELNP/2012 concerning a probiotic formulation utilizing the Bifidobacterium longum strain NCIMB 41676 (AH1714). The Assistant Controller of Patents and Designs rejected the application on grounds of obviousness under Section 15 of the Patent Act, 1970. The central legal issue involves determining whether the claimed probiotic formulation exhibits an inventive step and technical advancement over existing prior art. The Court ultimately set aside the refusal, remanding the case back to the Controller for a fresh evaluation.

Facts:

The Indian Patent Application No. 3989/DELNP/2012 describes a probiotic formulation incorporating the Bifidobacterium longum strain NCIMB 41676 (AH1714) at concentrations exceeding 10^6 colony-forming units (cfu) per gram, combined with an ingestible carrier. These carriers can be pharmaceutical forms like capsules or food products such as yogurt. The formulation is claimed to have unique synergistic effects and significant technical advancements over prior art.

The Prior Arts:

The Assistant Controller of Patents and Designs cited prior art documents, specifically:

- D1: US 20040265279

- D2: WO 2009127566

- D3: WO 2006SE01117

- D4: Medina et al.

- D5: Imaoka et al.

The Controller concluded that the use of the Bifidobacterium strain as a probiotic was already known and did not exhibit an inventive step.

Evaluation of Inventive steps and Obviousness :

The Court reviewed the Assistant Controller's decision, focusing on whether the claimed formulation was obvious in light of the prior art documents. The prior art indicated that the specific strain of Bifidobacterium and its use in probiotic formulations were known, but the claimed concentrations and the specific combination with carriers were scrutinized for their inventive step.

The Court emphasized the need to avoid hindsight bias in evaluating the inventive step, underscoring that the assessment should be based solely on information available before the priority date of the application. The Court found that none of the prior art documents, either individually or in combination, provided sufficient motivation to a person skilled in the art (PSITA) to arrive at the claimed formulation.

Legal Implication:

The judgment underscores the critical aspect of avoiding hindsight bias in patent law when evaluating the inventive step. The Court's decision highlights that the inventive step must be assessed based on prior public knowledge without using knowledge gained from the patent application itself. This case illustrates the judiciary's role in ensuring that patent applications are assessed fairly, respecting the boundaries of known prior art while recognizing genuine innovation.

Ratio:

The Court's ratio decidendi hinged on the principle that the inventive step must be evaluated without hindsight and must be evident based on prior public knowledge. The claimed probiotic formulation with the Bifidobacterium longum strain at specified concentrations and combined with particular carriers was found to be non-obvious, as prior art did not motivate a PSITA to arrive at this specific formulation.

Concluding Note:

The decision to remand the case for reevaluation reflects the judiciary's commitment to fair patent adjudication, ensuring innovations are not unjustly denied protection due to improper application of legal standards. This case reaffirms the importance of a meticulous and unbiased approach in evaluating inventive steps, crucial for fostering innovation and protecting genuine advancements in technology.

The judgment highlights the nuanced balance between prior art and genuine invention, reiterating the importance of a fair and thorough evaluation process in patent law. The Court's decision serves as a precedent in reinforcing the correct application of inventive step analysis, promoting an equitable patent system that duly recognizes and rewards innovation.

Case Title: Alimentary Health Limited Vs Controller of Patent and Design

Order Date: 14.05.2024

Case No. CA Comm IPD PAT 458 of 2022

Neutral Citation:2024:DHC:3920

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

HMD Mobile India Private Limited Vs Mr. Rajan Aggarwal and another

Copyrightability of Ideas and Concept Notes

Abstract:

Copyright law safeguards original expressions of ideas and concepts, but it does not confer protection on ideas or concepts themselves. This article examines a recent legal case involving the rectification of a copyright registration for an advertisement under the Copyright Act, 1957. The petitioner contested the registration, asserting that the copyrighted material lacked originality and amounted to a generic idea. This article conducts a detailed analysis of the legal principles at play and their implications for the copyright protection of ideas and concept notes.

Introduction:

Copyright law aims to encourage creativity by granting creators exclusive rights over their original works. However, copyright protection does not extend to abstract ideas or concepts. This fundamental principle is central to a recent case where the petitioner sought rectification of a copyright registration for an advertisement titled "Coming Soon."

Analysis:

The petitioner argued that the advertisement failed to meet the requisite threshold of originality for copyright protection. They posited that it merely conveyed a commonplace idea often used in product promotions, thus falling short of the criteria for an original literary work under Section 13(1)(a) of the Copyright Act, 1957.

The court's recognition of the need for a "basic filtration process" during the examination of copyright applications underscores the significance of assessing originality upfront. This underscores the importance of having updated guidelines and informed decisions to prevent the registration of non-original works.

Moreover, the article explores the concept of originality in copyright law and the prerequisite that a work must display a degree of creativity to warrant protection. The advertisement in question, simply titled "Advertisement," lacked specificity and narrative depth, resembling more of a generic idea or concept note than an original literary work. Consequently, the court rectified the registration.

Conclusion:

The case exemplifies that copyright protection does not extend to ideas or concept notes. It underscores the importance of upholding the integrity of copyright law by ensuring that only genuinely original works receive copyright registration. The decision to rectify the copyright registration underscores the principle that copyright protection should be reserved for works that genuinely embody creativity and originality, rather than generic ideas or concepts.

Case Title: HMD Mobile India Private Limited Vs Mr. Rajan Aggarwal and another

Order Date: 14.05.2024

Case No. Co Comm IPD CR 1 of 2024

Neutral Citation:N.A.

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Karim Hotels Pvt. Ltd. Vs Nizamuddina and Ors

Post termination of Franchisee agreement, unauthorized Trademark use by the Licensee

Introduction:

Trademark disputes often arise when businesses clash over the usage of similar or identical marks that could potentially confuse consumers or dilute the distinctiveness of a brand. In this analytical legal article, we delve into a specific case involving two trademarks: "KARIN'S" and "KARIM'S". The dispute emerges post the termination of a franchisee agreement between the parties involved.

Franchisee Agreement Termination:

The foundation of the legal dispute lies in the termination of a franchisee agreement between the plaintiff and the defendant. A franchisee agreement typically outlines the terms and conditions under which a party (the franchisee) is granted the right to use the trademarks, business processes, and intellectual property of another party (the franchisor) for a specified period. However, in this case, the plaintiff, for reasons unspecified, chose to terminate the agreement.

Trademark Usage:

Following the termination of the franchisee agreement, the defendant persisted in utilizing a trademark known as "KARIN'S". This action raises immediate concerns, particularly regarding intellectual property rights, as the plaintiff had an existing trademark, "KARIM'S". It's important to note that trademarks serve as identifiers of the source of goods or services, and their usage requires legal protection to prevent confusion among consumers.

Legal Action:

Recognizing the potential for confusion or infringement on their trademark rights, the plaintiff took legal action against the defendant for unauthorized usage of a trademark that bore striking resemblance to their own. This legal action likely involved claims of trademark infringement and unfair competition. The crux of the matter rested on whether the defendant's usage of "KARIN'S" could cause consumer confusion with the plaintiff's established mark, "KARIM'S".

Outcome:

The legal proceedings culminated in a verdict that favored the plaintiff. The court or arbitration panel determined that the defendant's use of "KARIN'S" constituted trademark infringement due to its deceptive similarity to the plaintiff's mark, "KARIM'S". As a consequence, the defendant was restrained or enjoined from further usage of the contested trademark. This outcome serves to protect the integrity and distinctiveness of the plaintiff's brand while preventing consumer confusion in the marketplace.

Concluding Note:

In conclusion, this case underscores the significance of trademark protection and enforcement in maintaining brand identity and preventing unfair competition. The defendant's unauthorized usage of a mark resembling the plaintiff's trademark highlights the potential risks and legal repercussions of such actions. By securing a favorable outcome, the plaintiff reaffirms the importance of safeguarding intellectual property rights, particularly in the context of franchise agreements and subsequent terminations.

Case Title: Karim Hotels Pvt. Ltd. Vs Nizamuddina and Ors

Order Date: 03.05.2024

Case No. CS(COMM) 241/2018

Neutral Citation:2024:DHC:3938

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

The SMT Gramophone Co Ltd. Vs Etonisa Gramphone Limited

Trademark Rectification of the basis of genericness of Mark

Plaintiff's Claim:

The plaintiff initiated a lawsuit claiming that the defendant infringed on their proprietary rights associated with the trademark "CONSOLETTE."

Injunction Request:

As part of their lawsuit, the plaintiff sought an injunction, a legal order to prevent the defendant from using a similar trademark, "CONSOLE."

Defendant's Response:

In response to the lawsuit and injunction request, the defendant filed for trademark rectification. This means they challenged the validity of the plaintiff's trademark "CONSOLETTE." One of the grounds for this challenge was that the word "CONSOLE" is common in trade, meaning it's a generic term used widely across the industry.

Evidence Submitted:

The defendant presented documents to support their argument that the term "CONSOLE" is indeed common to trade, likely showing examples of other businesses or products using similar terms.

Trademark Rectification Granted:

Based on the evidence provided by the defendant and the argument that "CONSOLE" is a common term in the industry, the court or relevant authority decided to rectify the plaintiff's trademark. This means they declared the trademark invalid or altered its registration in some way.

Injunction Declined:

With the plaintiff's trademark being rectified or invalidated, the basis for the injunction against the defendant's use of "CONSOLE" no longer stood. Consequently, the request for an injunction was declined by the court or relevant authority.

Concluding Note:

The defendant successfully argued that the plaintiff's trademark was invalid because it contained a term ("CONSOLE") commonly used in the trade. This resulted in the trademark being rectified and the plaintiff's request for an injunction being denied.

Case Title: The SMT Gramophone Co Ltd. Vs Etonisa Gramphone Limited

Case Citation: 1931 (48) RPC 309

Name of Court: Chancery Division

Name of Hon'ble Judge: Lord Tomlin

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Use of Old Trade Name under Section 12 of Company Act

In a recent ruling by the Hon'ble High Court of Delhi, the interpretation of Section 12 of the Companies Act, 2013, regarding the display of old company names came under scrutiny in a case where the court had directed a defendant to change its name. This article provides a detailed analysis of the legal implications of the court's clarification and its impact on mandatory name change cases.

Background:

The case in question involved a directive from the Hon'ble High Court of Delhi for the defendant to change its corporate name. In compliance with the court's direction, the defendant applied to the Registrar of Companies for a change of name. However, confusion arose regarding the applicability of Section 12 of the Companies Act, 2013, which mandates the display of old company names for a period of two years in cases of voluntary name changes.

Interpretation of Section 12 of the Companies Act, 2013:

Section 12 of the Companies Act, 2013, stipulates that when a company voluntarily changes its name, it must continue to display its old name along with its new name for a period of two years from the date of change. The objective behind this provision is to ensure transparency and inform stakeholders about the transition to a new corporate identity.

Clarification by the Hon'ble High Court of Delhi:

In the case before the Hon'ble High Court of Delhi, the defendant argued that it was required to comply with the provisions of Section 12 despite the name change being mandated by the court. However, the court clarified that Section 12 applies specifically to cases of voluntary name changes initiated by the company itself. In instances where the court directs a company to change its name as part of a judicial order, the provisions of Section 12 do not apply.

Conclusion:

The interpretation of Section 12 of the Companies Act, 2013, by the Hon'ble High Court of Delhi in mandatory name change cases underscores the nuanced approach required in legal proceedings involving corporate governance matters. By providing clarity on the applicability of statutory provisions, courts play a pivotal role in ensuring compliance with the law while balancing the practical realities faced by businesses.

Case Title: Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Order Date: 23.02.2024

Case No. CS Comm 881 of 2023

Neutral Citation:N.A.

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.

Genericness of Trademark

Introduction:

Trademark protection is fundamental to safeguarding the distinctiveness and reputation of brands in commerce. However, disputes often arise when trademarks are allegedly diluted through widespread use or inaction by the trademark owner. This article analyzes a recent legal case where the defendant asserted that the plaintiff's trademark had become generic due to the plaintiff's failure to object to third-party usage.

Background of the Case:

The case at hand involves an appeal filed by the defendant against an order granting interim injunctions to the plaintiff in a trademark infringement dispute. The plaintiff, holding the trademark "SHAKTI," sought to restrain the defendant's use of a similar mark, "MS SHAKTI." The defendant argued that the plaintiff's inaction against other parties using similar marks implied that the mark had become generic and common to trade.

Legal Analysis:

The central legal issue in this case revolves around the concept of trademark dilution and the standard for proving genericness. Trademark dilution occurs when a mark loses its distinctiveness due to extensive use by third parties or failure to enforce trademark rights. However, establishing genericness requires more than mere inaction by the trademark owner.

The court's dismissal of the defendant's argument underscores the principle that non-action by the plaintiff against other parties does not automatically render the mark generic. Rather, the defendant must provide evidence to substantiate the claim of genericness. In this case, the court rightly held that the defendant failed to present prima facie material demonstrating that the mark "SHAKTI" had become generic in the trade.

Conclusion:

Trademark disputes involving allegations of dilution require careful consideration of legal principles and evidence. The recent case discussed highlights the significance of substantiating claims of genericness through proper evidence, rather than relying on the plaintiff's inaction alone.

Case Title: Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.
Order Date: 23.02.2024
Case No. O.S.A (CAD).Nos.122 and 123 of 2023
Neutral Citation:2024:MHC:6521
Name of Court: Madras High Court
Name of Hon'ble Judge: Mr. Sanjay Gangapurwala and Bharatha Chakravarthy, HJ

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

Crocs INC Vs The Registrar of Trademarks and another

Relevance of Prior Trademark Registrations in a cancellation proceeding

Introduction:

In the intricate world of trademarks and intellectual property, clashes often arise when similar marks are used for related goods or services. One such dispute unfolded between "CROCKSCLUB" and "CROCS," involving trademarks in the realm of fashion.

Background:

Trademark protection serves to distinguish the goods or services of one entity from another in the marketplace. When trademarks bear resemblance and relate to similar products, conflicts may emerge. Such was the case with "CROCKSCLUB" and "CROCS."

The Dispute:

The dispute stemmed from the similarity between the trademarks "CROCKSCLUB" and "CROCS," despite their intended use for different product categories. While "CROCS" was registered for footwear, "CROCKSCLUB" aimed to establish its presence in the clothing sector. However, the proximity in sound and visual appearance between the two marks raised concerns.

Legal Proceedings:

In response to the trademark application for "CROCKSCLUB," "CROCS" initiated legal action, filing a rectification petition to challenge the registration. The basis of the petition rested on several factors:

1. Prior Registration: "CROCS" held prior registration for footwear, establishing its rights and precedence in the market.

2. Similarity of Trademarks: The phonetic and visual resemblance between "CROCKSCLUB" and "CROCS" raised the possibility of consumer confusion.

3. Similarity of Goods: Although "CROCKSCLUB" intended to operate in the clothing domain, the overlap with footwear – the core business of "CROCS" – contributed to the contention.

Outcome:

Following a thorough review of the case, including examination of the trademarks and their respective goods, the trademark authorities ruled in favor of "CROCS." The rectification petition filed by "CROCS" led to the cancellation or amendment of the "CROCKSCLUB" trademark.

Implications:

The resolution of the dispute carried significant implications for both parties involved. For "CROCS," it reinforced the protection of its established brand and prevented potential dilution or confusion in the footwear market. On the other hand, "CROCKSCLUB" faced setbacks in its efforts to establish a distinctive identity in the clothing sector, highlighting the challenges of navigating trademark conflicts in a competitive industry.

Conclusion:

The case of "CROCKSCLUB" versus "CROCS" exemplifies the complexities inherent in trademark disputes, particularly when trademarks share similarities and relate to overlapping product categories. Through legal proceedings, the resolution prioritized the protection of prior rights and the prevention of consumer confusion, underscoring the significance of thorough trademark analysis and strategic decision-making in intellectual property management.

The Case Discussed:

Case Title: Crocs INC Vs The Registrar of Trademarks and another
Judgment/Order Date: 08.04.2024
Case No: CO Comm IPD TM 779 of 2022
Neutral Citation: NA
Name of Court: High Court of Delhi
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 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

Mallcom India Limited Vs Shanti Udyog Weldsafe Private Limited and Ors

Passing Off and Deceptive Similarity

Introduction:

The case at hand involves a dispute between two parties, each utilizing similar trademarks in the safety shoe industry. The plaintiff asserts rights over the trademark "TIGER," while the defendant employs "CDTIGER." Despite the defendant's registration of the trademark, the plaintiff claims prior usage and alleges infringement and passing off. This analysis delves into the legal intricacies surrounding trademark infringement and passing off under the Trademarks Act 1999, specifically focusing on Section 28(3) and the concept of deceptive similarity.

Trademark Infringement under Section 28(3) of the Trademarks Act 1999:

Section 28(3) of the Trademarks Act 1999 outlines the rights of a registered proprietor, affording protection against infringement. In the present case, the defendant holds registration for the trademark "CDTIGER," thereby invoking the provisions of Section 28(3) to assert their rights. The Court, guided by this provision, acknowledged the defendant's status as a registered proprietor, thereby limiting the plaintiff's ability to seek relief solely based on trademark infringement.

However, it is essential to note that the mere registration of a trademark does not preclude claims of passing off. Passing off elucidates the circumstances under which this Remedy can be granted , emphasizing factors such as similarity of marks, similarity of goods or services, likelihood of confusion, and the likelihood of detriment to the distinctive character or repute of the registered trademark. Despite the defendant's registration, the court must assess whether the plaintiff's rights have been encroached upon by considering these factors.

Passing Off and Deceptive Similarity:

Passing off is a common law remedy designed to protect the goodwill associated with a trader's business or goods. Unlike trademark infringement, passing off does not require registration of the trademark but rather focuses on the misrepresentation leading to confusion or deception in the minds of the consumers.

In the case at hand, the plaintiff, as the prior user of the trademark "TIGER," successfully argued passing off due to the deceptive similarity between the competing trademarks. The court recognized that while "CDTIGER" differs from "TIGER" by the inclusion of additional characters, the overall impression created by both marks is substantially similar. This deceptive similarity is likely to confuse consumers regarding the origin of the goods.

Conclusion:

The case underscores the complexities inherent in trademark disputes, particularly in scenarios involving competing trademarks and issues of infringement and passing off. While the defendant's registration confers certain rights under Section 28(3) of the Trademarks Act 1999, it does not immunize against claims of passing off.

The Case Discussed:

Case Title: Mallcom India Limited Vs Shanti Udyog Weldsafe Private Limited and Ors

Judgment/Order Date: 10.04.2024

Case No: CS Comm 85 of 2024

Neutral Citation: NA

Name of Court: High Court of Delhi

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 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