Sun Pharmaceutical Vs J.B. Chemicals

Trademarks "RACIRAFT" and "RANRAFT" Held to Be Deceptively Similar:

Background of the Case:

This case concerns a dispute between Sun Pharmaceutical Industries Ltd., the plaintiff, and J.B. Chemicals, the defendant, over the use of trademarks related to pharmaceutical products. Sun Pharmaceutical, a company established in 1978 as a proprietary firm and later converted into a partnership in 1982, has a long history of marketing, manufacturing, and trading pharmaceutical goods. Over the years, it has gained a reputation for its products in the pharmaceutical industry and has established trademarks for its goods, including the trademark "RACIRAFT."

J.B. Chemicals, on the other hand, is a company involved in a similar business. The defendant sought to use the trademark "RANRAFT" for its pharmaceutical products, which led to a conflict with Sun Pharmaceutical. The crux of the dispute is whether the defendant’s trademark "RANRAFT" infringes upon the plaintiff's registered trademark "RACIRAFT."

Issue of the Case:

The core issue in this case is whether Sun Pharmaceutical is entitled to seek an injunction restraining J.B. Chemicals from using the trademark "RANRAFT." Sun Pharmaceutical asserts that the defendant's mark is deceptively similar to their registered trademark "RACIRAFT," creating a likelihood of confusion among consumers.

Sun Pharmaceutical contends that their mark, having been in use earlier and having acquired a registered status, should be protected under the Trade Marks Act, 1999. The defendant's application for trademark registration of "RANRAFT" is still pending, and Sun Pharmaceutical argues that the use of this mark infringes upon their exclusive rights as the registered proprietor of "RACIRAFT."

Contentions of the Parties:

Plaintiff's Contentions (Sun Pharmaceutical):

Sun Pharmaceutical made several key arguments in support of its claim:

Deceptive Similarity: Sun Pharmaceutical argued that the trademarks "RACIRAFT" and "RANRAFT" are deceptively similar, especially in the way they are pronounced and perceived by consumers. The plaintiff highlighted that both trademarks share a common prefix ("RA") and suffix ("RAFT"), which creates a high degree of resemblance. Given that the goods involved (pharmaceutical products) are often purchased by consumers who may not pay close attention to minor differences, Sun Pharmaceutical claimed that the similarity between the marks could lead to confusion.

First Use and Registration: Sun Pharmaceutical emphasized that they were the first to enter the market with their trademark "RACIRAFT" and that they are the registered proprietors of the mark. They argued that, as the prior adopter and user, their rights over the trademark should be respected, and any subsequent use of a similar mark by another party would amount to infringement.

Likelihood of Confusion and Consumer Protection: The plaintiff contended that the adoption of the mark "RANRAFT" by the defendants would likely mislead consumers into believing that the defendant's products are associated with or originate from Sun Pharmaceutical. This could lead to dilution of the plaintiff's brand and goodwill. Moreover, in the context of pharmaceutical products, which are often prescribed by doctors or purchased by patients with limited knowledge of the specifics, any confusion could result in serious harm to consumers.

Injunction Against Infringement: Sun Pharmaceutical argued that the defendant's use of the trademark "RANRAFT" should be immediately restrained by an ad interim injunction, as the continued use of a deceptively similar mark would cause irreparable harm to their business and reputation. They further emphasized that the defendant's pending application for registration of "RANRAFT" could not be used as a defense, as registration does not confer the right to infringe upon a previously registered mark.

Defendant's Contentions (J.B. Chemicals):

While the document does not provide the specific arguments raised by the defendants, in such cases, defendants typically present the following defenses:

Distinctiveness: The defendant may argue that their trademark "RANRAFT" is sufficiently distinct from the plaintiff's mark "RACIRAFT" and that there are notable differences in terms of appearance, pronunciation, and market positioning. They may contend that consumers are unlikely to confuse the two brands.

No Likelihood of Confusion: The defendant could assert that there is no real likelihood of confusion between the trademarks, particularly if the products are marketed through different channels or cater to different groups of customers. They may claim that their target market can easily differentiate between the two brands.

Pending Registration: The defendant might point out that their application for the registration of the trademark "RANRAFT" is still pending, and they are entitled to use the mark until the matter is resolved.

Issues Dealt with by the Court:

The court had to examine several key aspects in determining whether an interim injunction should be granted in favor of Sun Pharmaceutical:

Degree of Resemblance Between the Trademarks: The court analyzed the visual, phonetic, and structural similarities between the trademarks "RACIRAFT" and "RANRAFT." The focus was on whether an average consumer with an imperfect recollection could distinguish between the two marks, particularly given the similarity in their prefixes and suffixes.

Nature of the Products: The court considered the nature of the goods being sold under the trademarks, both of which involved pharmaceutical products. Since pharmaceuticals are goods that affect health and are often prescribed by medical professionals, even a small amount of confusion could have serious implications.

Trade Channels and Consumer Base: The court assessed the channels of trade and targeted customers for both parties' products. Since pharmaceutical goods are typically purchased by the general public, which may not scrutinize trademarks closely, the risk of confusion was heightened.

Legal Principles on Deceptive Similarity: The court referred to legal precedents and the principles laid out in the Trade Marks Act regarding deceptively similar marks and the rights of registered proprietors. These principles guide courts in determining whether a mark infringes upon the rights of a trademark owner.

Balance of Convenience and Irreparable Harm: The court considered whether the balance of convenience lay in favor of the plaintiff or the defendant. The court had to assess whether the plaintiff would suffer irreparable harm if the injunction was not granted and whether the defendant's business would be unfairly affected by the injunction.

Reasoning and Final Decision:

After carefully reviewing the arguments and evidence presented by the plaintiff, the court concluded that the trademarks "RACIRAFT" and "RANRAFT" were indeed deceptively similar. The court’s reasoning was based on the following factors:

Similarity of the Marks: The court found that both trademarks shared a common structure and sound, with only slight differences in the middle letters. Both marks began with the letters "RA" and ended with "RAFT," creating a strong likelihood that an average consumer with imperfect recollection might confuse one mark with the other. The court emphasized that in trademark law, it is not necessary for the marks to be identical; it is enough if there is a substantial similarity that could cause confusion.

Imperfect Recollection and Consumer Confusion: The court noted that consumers purchasing pharmaceutical products often rely on their imperfect recollection of trademarks. Given the similarity between "RACIRAFT" and "RANRAFT," consumers could easily be misled into thinking the products were from the same source, especially since both products fall within the pharmaceutical category.

Registered Proprietor’s Rights: The court reaffirmed that Sun Pharmaceutical, as the registered proprietor of the trademark "RACIRAFT," held the exclusive right to use the mark. The defendant’s pending application for the registration of "RANRAFT" did not grant them the right to use the mark if it infringed upon an already registered trademark.

Balance of Convenience: The court found that the balance of convenience favored Sun Pharmaceutical. The plaintiff had a long-standing reputation in the market, and allowing the defendant to use a deceptively similar mark would cause irreparable harm to the plaintiff’s business, reputation, and goodwill. The court also noted that the defendant had not established any compelling reason why they should be allowed to continue using the infringing mark.

Final Order:

The court granted an ad interim injunction in favor of Sun Pharmaceutical, restraining J.B. Chemicals and its directors, assignees, licensees, and other related parties from manufacturing, selling, advertising, or offering for sale any products under the trademark "RANRAFT" or any other mark that is deceptively similar to "RACIRAFT." This injunction was issued to protect the plaintiff’s trademark rights while the case continued to be litigated.

Conclusion:

The court’s decision in this case reaffirms the importance of protecting registered trademarks from deceptive imitation, especially in industries such as pharmaceuticals where consumer confusion could have serious consequences. The ruling underscores the need for businesses to carefully evaluate the similarity of their trademarks to avoid infringing upon the rights of established brands.

Case Citation: Sun Pharmaceutical Vs J.B. Chemicals: 12.09.2024: CS(COMM) 369/2024: 2024:DHC: 7430: Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

RSPL Vs Ram Nagar Khadi Udyog

GHADI and TIME Held to Be Deceptively Similar:

Background of the Case:

This case revolves around a trademark dispute between the plaintiff, the registered owner of the trademark "GHADI," and the defendant, who is alleged to have used the trademark "TIME" for its goods. The dispute concerns the potential infringement of the plaintiff's well-known mark "GHADI," which is primarily used for washing detergents, by the defendant's use of a mark allegedly resembling "GHADI" in terms of visual and phonetic elements.

The plaintiff, a well-established brand in the Indian detergent market, claimed that the defendant's trademark "TIME" created confusion in the minds of consumers due to its deceptive similarity to "GHADI." As a result, the plaintiff argued that the defendant's use of "TIME" would not only mislead the public into thinking the products originated from the same source but also dilute the distinctive character of the "GHADI" brand.

The plaintiff initiated legal proceedings, seeking an interim injunction to prevent the defendant from further using the trademark "TIME," alleging that it infringed their trademark rights and posed a risk of significant damage to their brand’s reputation.

Issue of the Case:

The core issue before the court was whether the defendant’s use of the trademark "TIME" amounted to trademark infringement due to its deceptive similarity to the plaintiff's registered trademark "GHADI." Specifically, the court had to determine whether the visual and phonetic resemblance between "GHADI" and "TIME" was sufficient to cause confusion or deception among consumers, thereby constituting infringement under the Trade Marks Act, 1999.

The relevant legal question centered on Section 29 of the Trade Marks Act, which outlines the grounds for trademark infringement, particularly focusing on deceptive similarity and likelihood of confusion in the marketplace.

Contentions of the Parties:

Plaintiff's Contentions:

The plaintiff, a reputed and long-standing user of the trademark "GHADI," raised the following key arguments:

Prior Use and Registration: The plaintiff argued that they had been using the trademark "GHADI" for a considerable period and that the mark was widely recognized in the market, especially in connection with detergents and washing powders. They had duly registered the trademark "GHADI" under the Trade Marks Act, 1999, granting them exclusive rights to use the mark.

Deceptive Similarity: The plaintiff contended that the defendant’s trademark "TIME" was deceptively similar to "GHADI" in both visual appearance and phonetic pronunciation. They argued that although the two words might seem different at first glance, the overall impression created by the marks was sufficiently similar to confuse the average consumer, particularly those who are not paying close attention to the details.

Likelihood of Confusion: The plaintiff argued that the similarity between the marks was likely to cause confusion in the market, especially among ordinary consumers who might mistake the defendant’s products for those of the plaintiff. This confusion could lead to consumers associating the defendant’s goods with the plaintiff's well-known brand, thereby causing dilution of the distinctiveness of the "GHADI" mark.

Irreparable Harm: The plaintiff further contended that if the defendant continued to use the "TIME" trademark, it would cause irreparable harm to their business and brand reputation. They argued that the goodwill built around the "GHADI" mark over the years would be damaged, leading to financial losses and a weakening of their market position.

Issues Dealt with by the Court:

The court addressed both procedural and substantive issues in this case.

Substantive Issues:

Trademark Infringement and Deceptive Similarity: The court had to determine whether the trademark "TIME" used by the defendant was deceptively similar to the plaintiff’s trademark "GHADI" and whether such similarity would cause confusion among consumers.

Balance of Convenience: The court assessed the balance of convenience—whether granting the injunction would unfairly harm the defendant’s business or whether the plaintiff would suffer more if the injunction was denied.

Irreparable Harm: The court considered whether the plaintiff would suffer irreparable damage to their reputation and business if the defendant was allowed to continue using the "TIME" mark, particularly in the form of lost goodwill, consumer confusion, and market share erosion.

Reasoning and Final Decision:

After reviewing the evidence and the legal arguments presented by the plaintiff, the court found that the plaintiff had established a prima facie case of trademark infringement. The court concluded that the defendant's use of the trademark "TIME" was deceptively similar to the plaintiff’s registered trademark "GHADI."

The court’s reasoning was based on the following factors:

Deceptive Similarity: The court noted that while "GHADI" and "TIME" might appear different in isolation, their overall presentation—including visual elements and phonetic similarity—created a risk of confusion among consumers. The court emphasized that in trademark law, the test for deceptive similarity does not require exact replication; it is enough if the marks are so similar that they are likely to mislead an average consumer into associating the two.

Prior User and Registrant: The court acknowledged the plaintiff’s status as the prior adopter and registered owner of the "GHADI" trademark. This gave the plaintiff a strong legal standing, as their registration under the Trade Marks Act granted them exclusive rights to use the mark and prevent others from using deceptively similar marks.

Likelihood of Confusion: The court found that the defendant’s use of the "TIME" mark was likely to create confusion in the market, especially given the similarity in the products being sold (both related to household cleaning products). The court noted that ordinary consumers, who do not scrutinize trademarks closely, could easily mistake the defendant’s products for those of the plaintiff, thereby harming the plaintiff’s brand and goodwill.

Irreparable Harm: The court concluded that the plaintiff would suffer irreparable harm if the defendant was not restrained from using the infringing mark. The court reasoned that financial compensation alone would not adequately remedy the loss of goodwill and damage to reputation that the plaintiff might suffer due to ongoing consumer confusion.

Based on these findings, the court granted interim injunction in favor of the plaintiff, restraining the defendant from using the trademark "TIME" or any other mark that was deceptively similar to the plaintiff’s registered trademark "GHADI." The injunction effectively prevented the defendant from manufacturing, marketing, or selling products under the infringing mark during the pendency of the lawsuit.

Conclusion:

The court’s decision in this case highlights the importance of protecting registered trademarks from deceptive imitation, especially when such imitation has the potential to confuse consumers and damage the goodwill associated with a brand. The ruling reaffirms the principle that during the subsistence of a registered trademark, the rights of the trademark owner must be safeguarded, and any deceptively similar marks that may cause confusion or dilute the distinctiveness of the brand should be restrained. By granting the interim injunction, the court protected the plaintiff’s trademark rights while the case was further litigated.

Case Citation: RSPL Vs Ram Nagar Khadi Udyog: 12.09.2024: CS(COMM) 646/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Kent RO Systems Ltd. Vs Suresh Kumar

During subsistence of Registered Design, the Defendant can not be allowed to use replica of the same

Background of the Case:

The dispute in this case revolves around Kent RO Systems Ltd., a prominent manufacturer of water purifiers, who filed a suit against the defendants for allegedly infringing upon their registered design. Kent RO Systems claimed ownership of design registration no. 312406, which protected the aesthetic features of their water purifiers, including the shape, configuration, and ornamentation. The plaintiffs contended that the defendants had replicated their water purifier design, thereby infringing on their exclusive rights under the Designs Act, 2000.

The plaintiffs further asserted that the defendants were manufacturing, marketing, and selling water purifiers that were not only identical in shape and configuration but also mimicked other aspects of their product, such as color scheme and logo arrangement. According to Kent RO Systems, the replication of their product design was likely to confuse consumers and mislead them into believing that the defendants’ water purifiers originated from or were associated with Kent RO Systems.

This prompted the plaintiffs to seek an interim injunction to restrain the defendants from further infringing upon their design rights during the pendency of the litigation.

Issue of the Case:

The primary issue before the court was the alleged infringement of a registered design. Kent RO Systems Ltd. alleged that the defendants had unlawfully copied their registered design, causing both confusion in the market and irreparable damage to their brand reputation. The court needed to determine whether the defendants' products were indeed replicas of the plaintiffs' registered design and, if so, whether an interim injunction should be granted to prevent further infringement while the case was being litigated.

The specific issues addressed by the court included:

Infringement of Registered Design: Whether the defendants had copied or used a design that was substantially similar to Kent RO Systems’ registered design no. 312406.

Grant of Interim Injunction: Whether the plaintiffs had established a prima facie case for infringement, justifying the grant of an interim injunction to prevent the defendants from continuing to manufacture and sell water purifiers that allegedly infringed on the plaintiffs' registered design.

Irreparable Harm and Balance of Convenience: Whether allowing the defendants to continue marketing the infringing products would cause irreparable harm to the plaintiffs, and whether the balance of convenience favored the plaintiffs, warranting the issuance of an injunction.

Contentions of the Parties:

Plaintiffs' Contentions:

Kent RO Systems argued that their registered design, as protected under the Designs Act, 2000, granted them exclusive rights over the design’s aesthetic elements, including the shape, configuration, and overall appearance of their water purifiers. Their main contentions were:

Infringement of Registered Design: The defendants' water purifiers were alleged to be exact replicas of the plaintiffs' products, incorporating not only the same shape and configuration but also the same color palette and placement of logos. The plaintiffs argued that these similarities amounted to design infringement under Section 22 of the Designs Act, which prohibits unauthorized use of a registered design.

Consumer Confusion: The plaintiffs contended that the striking similarity between the products would mislead consumers into believing that the defendants’ water purifiers were connected with or manufactured by Kent RO Systems, resulting in market confusion and dilution of brand value.

Irreparable Harm: Kent RO Systems claimed that they would suffer irreparable damage if the defendants were allowed to continue infringing their design. They argued that monetary compensation alone would not suffice, as the infringement would cause lasting harm to their reputation, goodwill, and market share.

Need for Interim Injunction: The plaintiffs sought an interim injunction to prevent the defendants from continuing the sale and marketing of the allegedly infringing products while the suit was being adjudicated.

Defendants' Contentions:

While the defendants’ arguments were not fully detailed in the provided excerpts, it is typical in design infringement cases for defendants to argue the following:

No Substantial Similarity: Defendants often contend that their products do not infringe upon the plaintiffs' registered design, as the design differences are more than minimal. They may argue that the overall appearance of the products differs sufficiently, making any comparison superficial.

Invalidity of the Design: In some cases, defendants challenge the validity of the registered design, arguing that the design is not novel or does not meet the statutory requirements for protection under the Designs Act. This could include claims that the design lacks originality or was previously disclosed in the public domain.

Issues Dealt with by the Court:

The court considered several critical issues before rendering its decision:

Prima Facie Case of Infringement: The court assessed whether Kent RO Systems had made out a prima facie case of design infringement based on the substantial similarity between the plaintiffs' and defendants' water purifiers. The court had to evaluate whether the defendants’ products bore sufficient resemblance to the plaintiffs' registered design to constitute infringement under the Designs Act, 2000.

Balance of Convenience: The court also examined the balance of convenience—whether the harm to the plaintiffs from the continued sale of the infringing products outweighed the potential harm to the defendants from being restrained. Given the potential for consumer confusion and brand dilution, the court needed to weigh the consequences for both parties.

Irreparable Harm: The court considered the irreparable harm that would result if an injunction were not granted. This included the possibility of market confusion, damage to the plaintiffs' reputation, and dilution of the distinctiveness of their water purifiers' design.

Reasoning and Final Decision:

After evaluating the documents and evidence presented by the plaintiffs, the court concluded that Kent RO Systems had established a prima facie case for design infringement. The court noted that the defendants’ products appeared to be replicas of the plaintiffs' registered design, and that continued sales of the infringing products would likely cause irreparable harm to Kent RO Systems’ business and brand.

Key reasoning included:

Registered Design Protection: The court reaffirmed that the protection granted by a registered design during its subsistence is exclusive to the owner, and any unauthorized use of a substantially similar design amounts to infringement. During the subsistence of the registered design, no third party, including the defendants, can lawfully manufacture, sell, or distribute products that replicate or imitate the design.

Irreparable Harm and Market Confusion: The court recognized that the defendants' use of an identical design could lead to consumer confusion, which would harm Kent RO Systems' reputation and brand equity. The court acknowledged that monetary compensation could not adequately address this type of harm, as the distinctiveness of the plaintiffs' products would be eroded, and their market position undermined.

Balance of Convenience: The court found that the balance of convenience favored the plaintiffs, as the defendants had not contested the claims or provided any justification for their actions. On the other hand, Kent RO Systems stood to suffer significant damage if the defendants were allowed to continue infringing upon their registered design.

In light of these findings, the court granted an interim injunction in favor of Kent RO Systems Ltd., restraining the defendants from manufacturing, selling, or dealing in any water purifiers that infringe upon the plaintiffs’ registered design no. 312406. The court directed the defendants to cease all activities related to the infringing products and set a timeline for further proceedings to address the matter in detail.

Conclusion:

The court's decision in this case underscores the importance of registered design protection under the Designs Act, 2000. A registered design grants its owner exclusive rights to the appearance of a product, and any unauthorized replication or imitation by a competitor constitutes infringement. The court's ruling demonstrates that during the subsistence of a registered design, infringing parties cannot be allowed to use replicas of the protected design, as such actions can cause irreparable harm to the design owner’s reputation and business. By granting the interim injunction, the court safeguarded Kent RO Systems' rights.

Case Citation: Kent RO Systems Ltd. Vs Suresh Kumar: 11.09.2024: CS(COMM) 784/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

BryNAir (Asia) Pvt. Ltd. Vs Union Of India

Negligence of the Patent Agent Vs. Responsibility of the Applicant

Background of the Case:

The case at hand involves Bry-Air (Asia) Pvt. Ltd., which filed a writ petition against the Union of India and other respondents, challenging the status of their patent application no. 4154/DEL/2015. This application had been deemed to have been withdrawn by the Indian Patent Office (IPO) under Section 11B(4) of the Patents Act, 1970. The specific reason for the withdrawal was the failure to file a Request for Examination (RFE) within the statutory timeline as mandated by the Act.

Under Section 11B(4), if the applicant does not file the RFE within the prescribed period of 48 months from the priority date of the patent application, the application is considered "deemed to be withdrawn." In this case, Bry-Air contended that the non-filing of FORM 18, which is the RFE, was not due to their own neglect or intent to abandon the application but was solely the result of the negligence of their former Patent Agent.

Bry-Air argued that they had no intention of abandoning their patent rights and that the fault lay with the Patent Agent, who failed to meet the statutory deadlines. As such, they sought the court's intervention to quash the status of "Deemed to be withdrawn" and restore their patent application to its original position, allowing them the opportunity to file FORM 18 and proceed with the examination process.

Issue of the Case:

The core issue for the court to determine was whether Bry-Air’s patent application should be restored, even after missing the statutory deadline for filing the RFE, on account of the negligence of their Patent Agent. Specifically, the court had to address:

Should the patent application be restored despite the failure to file FORM 18 within the statutory time limit?

To what extent can the negligence of a Patent Agent excuse an applicant from the consequences of deemed withdrawal under Section 11B(4)?

Does the Applicant’s intent to pursue the patent, as opposed to abandoning it, influence the court’s decision to restore the application?

Contentions of the Parties:

Bry-Air’s Contentions:

Bry-Air asserted that they were fully committed to following the statutory requirements to secure their patent. Their primary argument was that the failure to file FORM 18 was entirely due to the negligence of their erstwhile Patent Agent, who failed to act in time. Bry-Air claimed that they had no fault in the matter and that they should not be penalized for the failure of their Patent Agent, particularly since they had taken swift action upon realizing the error.

Key points raised by Bry-Air included:

No Intent to Abandon: Bry-Air emphasized that they had always intended to pursue the patent application and had no intention of abandoning their rights to the invention. The mere failure to file FORM 18 due to the Patent Agent’s neglect should not be taken as evidence of abandonment.

No Contributory Negligence: The Applicant (Bry-Air) maintained that they themselves were not negligent. They argued that the sole responsibility for the failure to file FORM 18 lay with the Patent Agent, and the Applicant had no contributory role in this lapse.

Restoration of Rights: Bry-Air sought the restoration of the patent application to its original position and requested the court to allow them to file FORM 18 so the examination of their patent could proceed. They contended that the severe consequences of losing their patent rights, due to the Patent Agent’s negligence, were disproportionate to the error committed.

Union of India’s Likely Contentions:

Although the specific contentions of the respondents (Union of India and the Indian Patent Office) are not detailed, it is typical in such cases for the government to argue the following points:

Statutory Deadlines Are Mandatory: The respondents would likely argue that the timelines for filing the RFE under Section 11B(4) of the Patents Act are mandatory and that failure to meet these timelines results in the application being automatically deemed withdrawn. They would contend that the law provides little room for deviation from these statutory requirements.

Applicant’s Responsibility: The respondents might emphasize that it is ultimately the responsibility of the patent applicant to ensure compliance with all statutory requirements. Negligence on the part of a Patent Agent should not relieve the applicant from the consequences of non-compliance with legal obligations.

Issues Dealt with by the Court:

The court was called upon to address the following significant issues:

Negligence of the Patent Agent vs. Responsibility of the Applicant: Should the court distinguish between the negligence of a Patent Agent and the actions of the applicant? Specifically, can the applicant be absolved of the consequences of their agent’s failure to file the RFE on time?

Applicant’s Intent to Pursue the Patent: Should the intent of the applicant to pursue their patent rights be considered when determining whether the application should be restored? In other words, can the applicant's clear intent to continue the patent process override the procedural lapse caused by the agent?

Extraordinary Circumstances and Judicial Discretion: Does the case present extraordinary circumstances where the court may exercise its discretionary powers to provide relief to the applicant, thereby allowing the restoration of the application?

Reasoning and Final Decision:

The court, in its reasoning, underscored the significance of the applicant's intent in cases where a patent application is deemed abandoned or withdrawn. The court noted that abandonment of a patent application is not merely a procedural determination but a question of the applicant's intent. For an application to be considered "abandoned," it must be established that the applicant had the intent to abandon or no longer pursue their patent rights.

Negligence of the Patent Agent: The court distinguished between the actions of the Patent Agent and the Applicant. It held that if the applicant had no contributory negligence and had intended to pursue their application, they should not be penalized for the agent’s negligence. The court acknowledged that it was the Patent Agent’s failure to act that led to the non-filing of FORM 18, and there was no fault on the part of Bry-Air.

Intent to Pursue the Patent: The court placed significant emphasis on the clear intent of Bry-Air to continue the patent process. It was evident from the facts that Bry-Air had no intention to abandon their application, and the lapse was solely due to the agent’s oversight. The court noted that the loss of patent rights, particularly for a valuable invention, is a severe consequence, and where the applicant demonstrates a clear desire to proceed, courts should exercise discretion judiciously.

Extraordinary Circumstances and Judicial Discretion: The court exercised its extraordinary writ jurisdiction, recognizing the exceptional circumstances of the case. It found that it would be unjust to deny Bry-Air the opportunity to pursue their patent due to their agent's negligence. The court further reasoned that the statutory timelines, while mandatory, should not lead to undue hardship where the applicant's intentions were clear, and the failure was not due to their own actions.

In its final decision, the court allowed Bry-Air's writ petition and quashed the status of "Deemed to be withdrawn" for patent application no. 4154/DEL/2015. The court directed the Indian Patent Office to restore the application to its original position and to allow Bry-Air to file FORM 18, thereby continuing the examination process for the patent.

Conclusion:

This case reinforces the principle that abandonment of a patent should not be presumed based solely on procedural lapses, especially when the applicant demonstrates a clear intent to pursue the patent. The decision highlights the court's willingness to take a more lenient approach in cases where an applicant's rights are jeopardized due to the negligence of a third party, such as a Patent Agent. Furthermore, it underscores the importance of intent in determining whether a patent application should be treated as abandoned or withdrawn. Courts may exercise discretion in extraordinary cases to prevent unjust consequences and protect the rights of patent applicants who have acted in good faith.

Case Citation: BryNAir (Asia) Pvt. Ltd. Vs Union Of India: 26.09.2024: W.P.(C)-IPD 17/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.