ITW GSE APS Vs Dabico Airport Solutions

Interim Injunction in Patent Infringement Suit and Lack of Credible Challenge

Introduction:

The High Court of Delhi delivered a judgment on July 4, 2024, in the patent infringement case of ITW GSE APS & ANR. versus DABICO AIRPORT SOLUTIONS PVT LTD & ORS. The case, which was reserved for judgment on May 14, 2024, revolves around the alleged infringement of a registered patent (IN 330145, hereinafter referred to as the "suit patent") by the defendants. The plaintiffs, ITW GSE APS & ANR., claimed that the defendants' Pre-Conditioned Air (PCA) units infringed on their suit patent and sought a permanent injunction to restrain the defendants from dealing with the impugned products. After evaluating the arguments of parties, injunction was granted against the defendant.

Background of the Case:

The suit patent pertains to a PCA unit that supplies preconditioned air to aircraft parked on the ground. The invention specifically discloses a compressor with a Variable Frequency Drive (VFD) in each of at least two refrigeration systems of a PCA unit, where each VFD is configured to vary the power of the respective compressor. The plaintiffs argue that the defendants' PCA units infringe on their patent by incorporating these specific technical features.

The plaintiffs supported their claims by highlighting that:

The suit patent had been nationalized in India through a PCT application and granted in major jurisdictions such as the EPO, USA, and Japan.The patent had also been granted in at least five other jurisdictions worldwide.

The plaintiffs had installed PCA units at several Indian airports, including Mumbai and Bengaluru.

The defendants countered by challenging the validity of the suit patent on multiple grounds:

Obviousness and Lack of Inventive Step:

They argued that the suit patent did not meet the criteria for an inventive step and was obvious.

Double Patenting:

The defendants claimed that the plaintiffs engaged in double patenting by filing two patent applications with similar specifications, thus dealing with the same invention.

Non-compliance with the Patents Act:

They asserted that the suit patent was not patentable under Sections 3(d) and 3(f) of the Patents Act, as it was a new use of a known apparatus or merely an arrangement of known devices functioning independently in a known way.

Court’s Analysis

Validity of the Suit Patent:

The court meticulously examined the validity of the suit patent, focusing on the prior art documents D2, D6, and D14, as presented by the defendants. The analysis revealed that the defendants failed to present a credible challenge to the validity of the suit patent. The court found that the defendants’ arguments on obviousness, lack of inventive step, and double patenting were not substantiated adequately.

Obviousness and Inventive Step:

The court noted that the defendants did not convincingly demonstrate that the suit patent lacked an inventive step or was obvious. The combination of the specific technical features disclosed in the suit patent (the VFD in the refrigeration systems) was not found in the prior art, thereby upholding the novelty and inventive step of the suit patent.

Double Patenting:

On the issue of double patenting, the court examined the specifications of the two patents mentioned by the defendants (IN ‘952 and the suit patent). The court concluded that the two patents, though similar in some respects, addressed different aspects of the technology and provided distinct solutions. Therefore, the allegation of double patenting did not hold.

Non-compliance with Sections 3(d) and 3(f):

The court dismissed the defendants’ claim that the suit patent was not patentable under Sections 3(d) and 3(f). The suit patent was not merely a new use of a known apparatus nor an arrangement of known devices functioning independently in a known way. Instead, it presented a novel and non-obvious technical solution.

Principles of Patent Infringement:

The court applied the principles of patent infringement, including the mapping of essential elements and the doctrine of equivalents. The analysis involved a detailed comparison of the suit patent's claims with the elements/claims of the defendants' PCA units. The court found that the defendants' PCA units did incorporate the essential features of the suit patent, thereby constituting infringement.

Judgment and Implications:

The court found in favor of the plaintiffs, concluding that there was no credible challenge to the suit patent’s validity based on the defendants' arguments. The interim injunction against the defendants was upheld, restraining them from using, manufacturing, or selling the infringing PCA units.

Author’s Note:

This case is a significant milestone in the realm of patent litigation, especially concerning interim injunctions and the scrutiny of patent validity. The High Court of Delhi's thorough examination of the suit patent's validity and the principles of infringement highlights the rigorous standards that must be met to challenge a patent effectively. ITW GSE APS & ANR. v. DABICO AIRPORT SOLUTIONS PVT LTD & ORS. case sets a precedent for handling complex patent infringement disputes, providing clarity on the judicial approach to patent validity challenges and the application of interim injunctions in patent litigation.

Case Citation: ITW GSE APS Vs Dabico Airport Solutions: 04.07.2024: CS(COMM) 628/2023: 2024:DHC:4978: Delhi High Court: Prathiba M Singh H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Vardichand Jagetia and another Vs Modern Mold Plast Pvt. Limited:

Jurisdiction of Courts Based on Interactive Websites in Trademark Dispute

Introduction:

The case of Rajendra Vardichand Jagetia & Anr. v. Modern Mold Plast Pvt Ltd highlights crucial aspects of trademark law and jurisdiction in the digital age. The High Court of Delhi's decision on May 31, 2024, in FAO (COMM) 125/2023 delves into the contentious issue of jurisdiction when goods are sold online. The case underscores how courts adapt traditional legal principles to modern e-commerce scenarios, establishing precedent on how interactive websites influence jurisdiction.

Case Background:

Appellants: Rajendra Vardichand Jagetia & Anr.
Respondent: Modern Mold Plast Pvt Ltd

The appellants have been using the trademark 'MAHARAJA' since 2015 and possess registrations for related marks. The respondent, using the same trademark since 2009, holds multiple registrations for various 'MAHARAJA' marks. The respondent initiated a suit under the Trade Marks Act, 1999, seeking a permanent injunction against the appellants, alleging passing off and other infringements.

Core Legal Issues:

Trademark Infringement and Passing Off:

The respondent alleged that the appellants' adoption of the 'MAHARAJA' mark was dishonest and aimed at leveraging the respondent's established goodwill.

Jurisdiction:

Whether the Delhi courts have jurisdiction over the case, given that the appellants' goods were available for purchase online, including within Delhi.

Arguments Presented:

Respondent's Arguments:

The respondent's usage of 'MAHARAJA' since 2009 had established substantial goodwill.The appellants' adoption of the mark was dishonest, intending to benefit from the respondent's reputation.

The Delhi courts have jurisdiction as the appellants' interactive website allowed customers in Delhi to purchase their goods online.

Appellants' Arguments:

They had been using the trademark 'MAHARAJA' since 2015 with valid registrations.

The appellants contested the jurisdiction, arguing that their business was not specifically targeted at the Delhi market.

Court's Analysis and Findings:

Trademark Infringement:

The court found that the respondent had convincingly established its use of the 'MAHARAJA' trademark since 2009. The evidence suggested that the appellants were aware of the respondent's mark when they began using 'MAHARAJA'. The court determined that the respondent's trademarks had become closely associated with plastic molded furniture, and the appellants' adoption of the mark was prima facie dishonest.

Jurisdiction:

The court's decision hinged on the jurisdictional issue influenced by the appellants' interactive website. The following points were critical in establishing jurisdiction:

Interactive Website:

The appellants' website allowed customers in Delhi to place orders and purchase goods, thereby conducting business within the jurisdiction of Delhi.

Legal Precedent:

The court referenced the case of World Wrestling Entertainment, Inc. v. Reshma Collection 6 2014 SCC OnLine Del 2031, which held that if a business operates through an interactive site and sells goods through it, courts in locations where the goods are available have jurisdiction to entertain suits related to trademark infringement.

Evidence of Transactions:

The respondent provided screenshots showing that the infringing products could be purchased and delivered within Delhi. This evidence was pivotal in demonstrating that the appellants were actively conducting business in Delhi through their website.

Conclusion and Judgment:

The High Court upheld the interim relief granted by the District Judge, restraining the appellants from using the trademarks 'MAHARAJA' and 'MAHARANA' or any deceptively similar marks. The court found no infirmity in the impugned order and emphasized the following:

The appellants' marks were identical to the respondent's in sight, sound, and meaning, leading to a high likelihood of confusion among consumers.
The grant of an injunction was appropriate to prevent further damage to the respondent's established goodwill.

The court affirmed its jurisdiction based on the appellants' interactive website facilitating transactions within Delhi.

Author's Note:

This case serves as a landmark decision in understanding how traditional concepts of jurisdiction are applied in the digital era. The court's reliance on the interactive nature of the appellants' website highlights the evolving landscape of e-commerce and its legal implications.For legal practitioners, this decision underscores the importance of considering how online business activities can subject companies to jurisdiction in various regions. It also emphasizes the necessity for businesses to be mindful of their online operations and potential legal exposures across different jurisdictions.

In conclusion, Rajendra Vardichand Jagetia & Anr. v. Modern Mold Plast Pvt Ltd not only reinforces trademark protection principles but also provides clarity on jurisdictional issues arising from the modern digital marketplace. This case will undoubtedly influence future disputes involving online business activities and trademark infringements, shaping the judicial approach to jurisdiction in the digital age.

Case Citation: Rajendra Vardichand Jagetia and another Vs Modern Mold Plast Pvt. Limited: 31.05.2024: FAO (COMM) 125/2023: Delhi High Court: Vibhu Bakhri and Tara Vitasta Ganju. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539

ITC Limited Vs Elora Tobacco Company

Amendment of Plaint at Pre-Appearance Stage of Defendant

Introduction:

On July 5, 2024, the High Court of Delhi delivered a decision in the case of ITC Limited v. Elora Tobacco Company Limited & Ors. (CS(COMM) 201/2024). This case revolves around the plaintiff's application to amend its plaint under Order VI Rule 17 and Section 151 of the Code of Civil Procedure, 1908. The court's ruling sheds light on the judicial approach to allowing amendments before the defendant has made an appearance, particularly in the context of trademark infringement disputes.

Factual Background:

ITC Limited (the plaintiff), a major player in the tobacco industry, holds several registered trademarks, including the well-known "Gold Flake" trademark and associated roundel devices. The plaintiff alleged that Elora Tobacco Company Limited & Ors. (the defendants) infringed on these trademarks by using deceptively similar marks such as "Gold Impact," "Forever Gold," and "Gold Forever" for identical goods. These alleged infringements came to the plaintiff's attention during a Local Commission executed at Indore.

In response, ITC Limited sought to amend its plaint to incorporate these new instances of infringement. The application for amendment was filed under Order VI Rule 17 and Section 151 of the Code of Civil Procedure, 1908.

Legal Provisions Involved:

Order VI Rule 17, Code of Civil Procedure, 1908: This rule permits the amendment of pleadings by the parties at any stage of the proceedings to ensure that all issues in controversy are effectively adjudicated.
Section 151, Code of Civil Procedure, 1908: This section confers inherent powers on the court to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the court.

Court's Findings:

Justice Mini Pushkarna presided over the case and evaluated the plaintiff's application. Notably, the defendants had not yet appeared or filed a written statement. This fact played a crucial role in the court’s decision-making process. The court recognized the necessity of the proposed amendments to address the real questions in controversy between the parties and to avoid multiple proceedings on similar issues. The primary considerations that guided the court's decision included:

Preventing Multiplicity of Proceedings:

By allowing the amendment, the court aimed to consolidate all related claims into a single proceeding, thus enhancing judicial efficiency.

Addressing Real Questions in Controversy:

The court found that the amendments were essential for a comprehensive adjudication of the disputes arising from the alleged trademark infringements.

Decision and Directions

The High Court allowed the plaintiff’s application for amendment. The key directions issued by the court included:

Analysis:

This decision underscores the flexibility afforded by the judicial system in India to amend pleadings to ensure comprehensive adjudication of disputes. Several key points emerge from this case:

Proactive Judicial Approach:

The court demonstrated a proactive stance in permitting amendments, which serves to streamline legal proceedings and ensure that all related issues are adjudicated together.

Significance of Pre-Appearance Amendments:

Allowing amendments before the defendant’s appearance highlights the court's willingness to facilitate justice even at early stages of litigation.
Protection of Trademark Rights: The court's decision reinforces the protection of trademark rights by allowing the plaintiff to address new infringements promptly, thereby upholding the integrity of registered trademarks.

Author's Note:

The decision in ITC Limited v. Elora Tobacco Company Limited & Ors. is a testament to the judiciary's commitment to ensuring fair and efficient adjudication of intellectual property disputes. By allowing amendments to the plaint at the pre-appearance stage of the defendant, the court has underscored the importance of addressing all relevant issues in a single proceeding to avoid multiplicity and ensure justice.

Case Citation: ITC Limited Vs Elora Tobacco Company: 05.07.2024: CS(COMM) 201/2024: Delhi High Court: Mini Pushkarna. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539

V.A.Mishra & Sons Vs Registrar of Trademarks

O-3 Notice and Renewal of Registered Trademark

In a notable legal battle concerning trademark renewal issues, V. A. Mishra & Sons filed a petition against The Registrar of Trademarks for the renewal of their registered trademark under No. 573095 in Class 30. The dispute arose from delays and alleged procedural lapses on the part of the Registrar, leading to significant implications for trademark proprietors.

Background of the Case:

The petitioner, M/S.V.A.Mishra & Sons, initially sought the renewal of their trademark in March 2013. Upon receiving information about the renewal requirements, the petitioner promptly communicated with the Registrar, seeking restoration of the removed trademark, renewal of registration, and payment of the necessary surcharge. Despite these efforts and the payments made, the petitioner faced persistent delays in the renewal process.

Key Issues:

The primary issues faced by the petitioner were:

Delays in Processing: Despite repeated requests and payments made by the petitioner, the renewal process was unduly delayed by the Registrar.

Lack of Mandatory Notice: The petitioner alleged that the Registrar failed to send a mandatory notice as required under Section 25(3) of the Trademarks Act, 1999. This section mandates the Registrar to notify the registered proprietor about the expiration date and conditions for renewal of the trademark.

Legal Arguments:

In their Writ Petition filed under Article 226 of the Constitution of India, the petitioner sought a Writ of Mandamus directing the Registrar to accept their renewal request dated 27.03.2013 for Trade Mark Application No. 573095 in Class 30 and to permit the filing of subsequent renewals.

The petitioner emphasized Section 25(3) of the Trademarks Act, 1999, which stipulates that the Registrar must send a notice to the registered proprietor regarding the expiration and renewal conditions. The failure to send this notice was a critical point in the petitioner’s argument, as it indicated a procedural lapse on the part of the Registrar.

Court’s Decision:

The court issued a Writ of Mandamus, directing the Registrar to accept the petitioner’s renewal request dated 27.03.2013 for Trade Mark Application No. 573095 in Class 30 within a specified period. Additionally, the petitioner was granted the liberty to submit a further renewal request along with the prescribed fee within a specific timeframe. T

Analysis:

The outcome of this case highlights several critical aspects of trademark law and administrative procedures:

Importance of Timely Communication:

The Registrar's failure to send the mandatory notice under Section 25(3) of the Trademarks Act, 1999, played a pivotal role in the petitioner’s favor. This underscores the necessity for regulatory bodies to adhere strictly to statutory requirements to prevent legal disputes and ensure fairness.

Judicial Oversight:

The court’s intervention through the Writ of Mandamus demonstrates the judiciary's role in upholding statutory obligations and protecting the rights of individuals and entities against administrative delays and lapses.

Rights of Trademark Proprietors:

This case reinforces the rights of trademark proprietors to seek timely renewals and restoration of their trademarks. It also highlights the legal recourse available to proprietors when faced with administrative hurdles.

Author’s Note:

The decision in this case is a significant reminder of the critical role that procedural compliance plays in the realm of trademark law. It illustrates the need for vigilance on the part of trademark proprietors in monitoring the status of their trademarks and taking timely action. Moreover, it serves as a cautionary tale for regulatory authorities to maintain rigorous adherence to statutory requirements to avoid legal challenges and ensure smooth administrative processes.

Case Citation: V.A.Mishra & Sons Vs Registrar of Trademarks: 01.07.2024: [WP IPD 16 of 2024]:Madras High Court: P.B.Balaji. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Microsoft Technology Licensing LLC, Vs Assistant Controller of Patent-MHC

Patent Eligibility of Computer-Related Inventions Under Section 3(k) of the Indian Patents Act 1970

Context and Filing:

The Appeal was filed under Section 117-A of the Patents Act, 1970, seeking to overturn an order dated January 24, 2020, which rejected Indian Patent Application No. 5584/CHENP/2010. This application, filed on September 7, 2010, pertained to an invention titled "Associating Command Services with Multiple Active Components." The primary issue under appeal was whether the claimed invention qualified as patentable subject matter and involved an inventive step, thus meriting the issuance of a patent.

Claimed Invention:

The invention at the center of this appeal involves a method that allows a command surface to interact with multiple active components on a single page. This command surface can direct commands to various applications simultaneously, even when these components are associated with different applications. Essentially, it enables a more integrated and efficient way of processing commands across multiple applications, enhancing the functionality and user experience.

Grounds for Rejection:

The respondent rejected the patent application on the grounds that it fell under the non-patentable subject matter as outlined in Section 3(k) of the Patents Act. The rejection was primarily based on the Guidelines for Examination of Computer Related Inventions (CRI Guidelines) 2016, which stipulated that only inventions involving novel hardware features could be considered patentable. This guideline was instrumental in the initial rejection of the appellant’s application.

Appellant's Arguments:

The appellant contested the rejection by arguing that the CRI Guidelines 2016 were outdated and not applicable in light of the revised CRI Guidelines 2017. The updated guidelines removed the requirement for novel hardware and instead focused on the substance of the claimed invention. The appellant emphasized that the revised guidelines clarified the exclusion criteria under Section 3(k), asserting that only computer programs "per se" were excluded from patentability, not inventions that demonstrated a technical effect or provided a technical solution to a technical problem.

Court's Analysis and Decision:

The court undertook a thorough analysis of the legislative and textual history of the Patents Act. It concluded that Parliament did not intend to exclude all computer-related inventions (CRIs) from patent eligibility. Instead, the court delineated a clear distinction between mere instructions in code, which are patent-ineligible, and inventions that demonstrate a technical effect, which are patent-eligible.

The court highlighted that CRIs which result in technical effects, improve system functionality, or solve technical problems transcend the exclusion under Section 3(k). This interpretation aligns with the revised CRI Guidelines 2017, which prioritize the substance and technical contribution of the invention over the mere presence of novel hardware.

Technical Contribution of the Invention:

The court identified the technical contributions of the appellant's invention as significant. The invention processes commands for multiple unrelated applications by associating a command surface with more than one component. This system efficiently directs commands to various applications from a single command surface, eliminating the need for multiple command surfaces and reducing memory usage. This technical innovation offers a tangible improvement over conventional systems, which typically require separate command surfaces for each application.

The Technical Advancement:

The court noted that the invention's ability to process commands across unrelated applications, thereby enhancing system efficiency and functionality, demonstrated a technical effect that went beyond a simple set of instructions. As such, the invention was not limited in its impact to a particular application or data set, making it application/data set agnostic and significantly enhancing system performance.

Conclusion:

The court concluded that the appellant’s invention, due to its technical contribution and impact on system functionality, was patent-eligible under Section 3(k) of the Patents Act. This decision underscores the importance of evaluating the technical effects and substantive contributions of computer-related inventions, rather than rigidly adhering to outdated guidelines that may not fully capture the innovative essence of modern technological advancements.

Author's Ending Note:

The court's emphasis on the importance of evaluating technical effects signifies a shift from a purely categorical exclusion approach to a more nuanced assessment. This means that inventions should be judged on their merits, particularly their technical contributions and practical applications, rather than being dismissed based on a rigid interpretation of the law. This decision sets a precedent for future cases, guiding courts in evaluating the patent eligibility of computer-related inventions. It advocates for a more flexible and context-sensitive interpretation of patent laws, which could lead to more consistent and fair outcomes in patent litigation.

Case Citation: Microsoft Technology Licensing LLC, Vs Assistant Controller of Patent: 03.07.2024: [OA/36/2020/PT/CHN]:Madras High Court: Senthil Kumar Ramamoorthy. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539