Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Introduction

This case revolves around the alleged infringement of the plaintiffs' trademark "CHUPA CHUPS" by the defendants, who marketed their products under the mark "HARNIK CHUPA CHUP." The legal dispute primarily concerns trademark infringement, passing off, and the interplay between pending rectification proceedings and the rights to seek relief in a civil court under the Trade Marks Act, 1999.

Background

The plaintiffs, Perfetti Van Melle S.P.A., are globally recognized manufacturers of confectionery products and owners of the registered trademark "CHUPA CHUPS." The defendants used the mark "HARNIK CHUPA CHUP" for similar products. The plaintiffs claimed this use was deceptive and likely to cause confusion among consumers, constituting trademark infringement and passing off.

Brief Facts of the Case

1. The plaintiffs filed a suit seeking a permanent injunction against the defendants from using the mark "HARNIK CHUPA CHUP."

2. The defendants argued their mark was registered and invoked Sections 28(3), 30(2)(e), and 124 of the Trade Marks Act, asserting the suit was not maintainable.

3. The plaintiffs had already filed a rectification petition in 2011, prior to instituting the present suit in 2017, seeking cancellation of the defendants' trademark registration.

Issues Involved

1. Primary Issue: Whether the suit for trademark infringement could proceed while rectification proceedings were pending.

2. Secondary Issue: Whether the relief for passing off could continue independently despite the stay on infringement claims.

Submissions of the Parties

Plaintiffs

Argued that under Section 124 of the Trade Marks Act, the court must frame an issue regarding the invalidity of the defendants' mark before staying the infringement proceedings.

Relied on the Supreme Court's decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd., which mandates the court to assess the prima facie tenability of the rectification claim.

Defendants

Contended that since the rectification petition was filed before the suit, the stay under Section 124(1)(b)(i) was automatic, without requiring the court to frame any issue.

Asserted that both infringement and passing off claims should be stayed as they are interconnected.

Reasoning and Analysis by the Judge

1. Stay of Infringement Proceedings:

Section 124(1)(b)(i) provides for an automatic stay when rectification proceedings are already pending at the time of instituting the suit.

The court clarified that no prima facie assessment or framing of issues is required in such cases, distinguishing it from situations where rectification proceedings are initiated post-suit.

2. Passing Off Claims:

The court held that Section 124 applies only to trademark infringement claims, not to passing off.

Referring to precedents like Puma Stationer P. Ltd. v. Hindustan Pencils Ltd., the court emphasized that passing off claims can proceed independently.

3. Applicability of Precedents:

The court rejected the plaintiffs' reliance on Patel Field Marshal Agencies and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, noting that these cases addressed different factual scenarios.

Decision

1. The court stayed the suit concerning the infringement of the plaintiffs' trademark under Section 124(1)(b)(i).

2. The passing off claim was allowed to proceed independently, as it fell outside the scope of Section 124.

Conclusion

The judgment underscores the distinct procedural pathways for trademark infringement and passing off claims under Indian law. It reaffirms the automatic stay provision under Section 124(1)(b)(i) when rectification proceedings are pending, while preserving the independent nature of passing off claims. This case is a vital reference for understanding the procedural nuances in trademark litigation.

Case Title: Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Case Number: CS(COMM) 363/2017

Neutral Citation: 2022:DHC:3414

Date of Decision: September 1, 2022

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Navin Chawla

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.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.

Arun Kumar vs. State of Punjab and Another

IP Adjutor: Episode 19

Is prior opinion of Registrar of Trade Mark under Section 115 of Trademarks Act 1999 mandatory before filing Criminal Complaint?

Case Title:Arun Kumar vs. State of Punjab and Another
Date of Order:25th November 2024
Case Number:CRM-M-54104-2023
Case Citation:2024:PHHC:155158
Court:High Court of Punjab and Haryana at Chandigarh
Judge:Hon’ble Mr. Justice Karamjit Singh

Introduction:
This case concerns the quashing of an FIR and related proceedings under the Copyright Act, 1957, and the Trade Marks Act, 1999. The petitioner, Arun Kumar, challenged the procedural and substantive grounds of the case, alleging non-compliance with statutory requirements.

Background:
FIR Registration: FIR No. 281 was registered on 20.07.2017 under Sections 63 and 65 of the Copyright Act, 1957, at Police Station Jodhewal, Ludhiana.
Allegations: The petitioner was accused of manufacturing fake garments bearing the "Puma" label and selling them at inflated prices.

Investigation and Charges:
Police seized garments labeled as "Puma" during a raid and arrested the petitioner.Following investigation, a challan was submitted under Sections 63 and 65 of the Copyright Act, 1957.Additional charges under Sections 103 and 104 of the Trade Marks Act, 1999, were later framed by the trial court.

Brief Facts of the Case:
The complainant, authorized by RNA-IP Attorneys, alleged unauthorized manufacturing of garments with the "Puma" label.A raid led by Inspector Vijay Kumar resulted in the seizure of fake garments.The petitioner contended that procedural violations under the Trade Marks Act, 1999, invalidated the proceedings.

Issues Involved in the Case:
Procedural Compliance:
Whether the investigation complied with Section 115(4) of the Trade Marks Act, 1999, requiring involvement of an officer not below the rank of Deputy Superintendent of Police (DSP).
Whether the Registrar of Trade Marks’ opinion was obtained before search and seizure, as mandated by the Act.
Substantive Grounds:Whether the charges under the Copyright Act, 1957, and the Trade Marks Act, 1999, were legally sustainable.

Submissions of the Parties:

Petitioner:
Violation of Section 115(4):Search and seizure were conducted by an Inspector, not a DSP, violating statutory requirements.No opinion from the Registrar of Trade Marks was sought before initiating proceedings.

Applicability of the Copyright Act:
Manufacture and sale of garments do not fall under the purview of the Copyright Act, 1957.Cited Deepak vs. State of Haryana (2023), which held similar allegations unsustainable under the Copyright Act.

Quashing of Proceedings:
Sought quashing of FIR, challan, and additional charges for procedural and substantive deficiencies.

State:
Supported the FIR and subsequent proceedings.Justified the seizure of fake garments with "Puma" labels and the petitioner’s arrest.Admitted procedural lapses, including the absence of a DSP and Registrar’s opinion.

Reasoning and Analysis by the Court:
Non-Compliance with Section 115 of the Trade Marks Act:

Investigation and seizure were conducted by an Inspector, violating Section 115(4), which mandates a DSP or higher rank.The Registrar’s opinion was not obtained before search and seizure, contravening the Act’s proviso.

Applicability of the Copyright Act:Section 13 of the Copyright Act does not cover the manufacture and sale of garments.Prosecution failed to establish infringement of copyright under Sections 63 and 65 of the Act.Relied on the Deepak vs. State of Haryana (2023) precedent, which held similar actions outside the scope of the Copyright Act.

Procedural Deficiencies:
Procedural lapses rendered the prosecution legally unsustainable under both the Copyright Act and the Trade Marks Act.

Decision:
The Court allowed the petition and quashed:
FIR No. 281 dated 20.07.2017.
Final report dated 18.02.2018.
Order dated 02.09.2023 framing additional charges under Sections 103 and 104 of the Trade Marks Act, 1999.
All consequential proceedings arising from the above were also quashed.

Conclusion:

The case highlights the critical importance of procedural compliance in intellectual property infringement cases. The Court emphasized adherence to statutory mandates under the Copyright Act, 1957, and the Trade Marks Act, 1999, particularly concerning investigation and prosecution. Procedural lapses and substantive inadequacies led to the quashing of the FIR and related proceedings.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.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.

Aloys Wobben Vs. Yogesh Mehra

Aloys Wobben Vs. Yogesh Mehra: Scope of Simultaneous Counterclaims and Patent Revocation

Case Title:Aloys Wobben and Ors. Vs. Yogesh Mehra and Ors.

Date of Order:June 2, 2014

Case Number:Civil Appeal No. 6718 of 2013

Citation:MANU/SC/0519/2014: AIR 2014 SC 2210: (2014) 15 SCC 360

Court:Supreme Court of India

Judges:Hon’ble Justice A.K. Patnaik and Hon’ble Justice J.S. Khehar

Introduction: This case is a landmark ruling on patent law in India, addressing the legal conflict between patent infringement suits and revocation petitions under the Patents Act, 1970. The Supreme Court examined whether a party could simultaneously pursue a patent revocation petition before the Intellectual Property Appellate Board (IPAB) and a counterclaim for revocation in a patent infringement suit before the High Court. The judgment clarified the mutual exclusivity of these remedies and established a precedent for handling patent disputes in India. Factual Background: Dr. Aloys Wobben’s Patents and Business Interests: Dr. Aloys Wobben, a German scientist and entrepreneur, owned over 2,700 patents worldwide, including 100 patents in India related to wind turbine technology.He operated Enercon GmbH, a leading manufacturer of wind turbines. Formation of Joint Venture:In 1994, Enercon GmbH entered into a joint venture with Yogesh Mehra and Ajay Mehra (respondents), forming Enercon India Ltd.The company operated under license agreements, the last of which was signed on September 29, 2006. Dispute Between the Parties:On December 8, 2008, Enercon GmbH terminated the license agreement, citing breaches by Enercon India Ltd.The respondents, however, continued using Wobben’s patents, prompting multiple patent infringement suits. Procedural Background: Revocation Petitions:In January 2009, Enercon India Ltd. filed 19 revocation petitions before the IPAB, challenging Wobben’s patents under Section 64 of the Patents Act, 1970.In 2010-2011, they filed four additional revocation petitions, totaling 23 revocation petitions. Patent Infringement Suits:Between 2009 and 2010, Wobben filed 10 patent infringement suits in the Delhi High Court.Counterclaims Filed by Respondents:In response, the respondents filed counterclaims for revocation of the patents in the infringement suits.Delhi High Court’s Ruling:The High Court ruled that revocation petitions before the IPAB and counterclaims in infringement suits could proceed simultaneously.Dr. Wobben appealed this decision to the Supreme Court. Issues Involved:Can a defendant in a patent infringement suit simultaneously pursue a revocation petition before the IPAB and a counterclaim for revocation before the High Court?Does filing a counterclaim in an infringement suit bar the defendant from maintaining a revocation petition before the IPAB?How should Section 64 of the Patents Act, 1970, be interpreted—whether the remedies of revocation petition and counterclaim are mutually exclusive? Submissions of the Parties: Appellants (Dr. Aloys Wobben and Wobben Properties GmbH):Exclusive Jurisdiction of High Court in Counterclaims:Once a counterclaim is filed under Section 64(1) of the Patents Act, the High Court alone has jurisdiction to decide patent revocation.The IPAB loses jurisdiction over revocation petitions for the same patents.Avoiding Conflicting Judgments:Simultaneous proceedings before the IPAB and High Court could result in contradictory decisions.IPAB as an Administrative Tribunal:The High Court, being a constitutional court, has wider jurisdiction and greater authority than the IPAB. Respondents (Yogesh Mehra and Others):Right to Multiple Remedies:The Patents Act allows independent remedies—a revocation petition before the IPAB and a counterclaim in an infringement suit.No Express Prohibition on Parallel Proceedings:There is no statutory bar on pursuing both remedies. Reasoning and Analysis of the Supreme Court:Mutually Exclusive Remedies:The Supreme Court interpreted Section 64 strictly, holding that once a counterclaim is filed, a revocation petition on the same patent cannot be pursued.Avoiding Jurisdictional Conflicts:If simultaneous proceedings were allowed, contradictory judgments could arise, creating legal uncertainty.Preference for High Court Adjudication:Since counterclaims are adjudicated by the High Court, they take precedence over administrative proceedings before the IPAB. Final Decision:Bar on Simultaneous Proceedings:If a party has filed a counterclaim in response to an infringement suit, they cannot pursue a separate revocation petition before the IPAB for the same patent.Revocation Petitions Filed Before Counterclaims:If a revocation petition was already filed before an infringement suit, then the counterclaim cannot be pursued.Delhi High Court’s Decision Overruled:The Supreme Court overturned the High Court’s ruling, holding that only one remedy (revocation petition or counterclaim) is available per patent. Conclusion: The Supreme Court’s decision in Dr. Aloys Wobben vs. Yogesh Mehra established a clear legal precedent on the mutual exclusivity of revocation petitions and counterclaims under Section 64 of the Patents Act, 1970. The ruling prevents forum shopping, reduces conflicting judgments, and ensures judicial consistency in patent litigation in India.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

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.

Novex Communications Pvt. Ltd. Vs. Trade Wings Hotels Limited

Introduction:

The case revolves around the rights of copyright owners and the limitations imposed on entities managing intellectual property under the Copyright Act, 1957, as amended. Novex Communications Pvt. Ltd. (the plaintiff) sought an injunction to restrain the defendant from unauthorized public performance and communication of sound recordings managed by Novex, challenging the interpretation of Section 33(1) concerning copyright societies.

Background:

Novex Communications Pvt. Ltd. and Phonographic Performance Ltd. (PPL) are entities managing intellectual property rights, including the licensing of sound recordings for public performances. They have acquired rights through assignments from original copyright owners. The defendants in these cases allegedly infringed these rights by publicly performing sound recordings without obtaining the requisite licenses.

A preliminary issue arose: whether Novex and PPL, not registered as copyright societies under Section 33(1) of the Copyright Act, could legally grant licenses or seek relief for infringement.

Plaintiff’s Position:

Novex owns exclusive rights to sound recordings, acquired through assignment agreements with various music labels. The plaintiff claims infringement by the defendant, who failed to obtain proper licensing for public performance.

Defendant’s Argument:

The defendant contended that Novex, not being a registered copyright society under Section 33(1), was prohibited from carrying on the business of licensing and was therefore not entitled to seek relief.

Issues Involved:

Can Novex and PPL issue licenses and claim infringement relief without being registered as copyright societies under Section 33(1) of the Copyright Act?

Does the assignment of rights to Novex confer the status of ownership or only administrative rights subject to Section 33 restrictions?

Plaintiff’s Submissions:

Novex argued that as the assignee of copyrights, it held ownership rights equivalent to those of the original copyright owner, as per Sections 18 and 19 of the Act.

Section 30 allowed Novex to grant licenses for public performance in its capacity as the owner’s agent or assignee.

The provisions of Chapter VII, specifically Section 33(1), did not limit the rights of copyright owners or their assignees but regulated collective management organizations.

Defendant’s Submissions:

The defendant claimed that Novex, not being a registered copyright society, could not engage in the licensing business or seek legal remedies under Section 33(1).

They argued that Novex’s primary business was licensing, falling squarely within the ambit of Section 33(1), which prohibits such activities without registration.

Reasoning and Analysis by the Judge:

1. Rights of Copyright Owners and Assignees:

The court analyzed Section 18 and Section 30 of the Copyright Act, which confer ownership and licensing rights to assignees. It was held that an assignee is treated as an owner, and their rights are equivalent to those of the original copyright owner.

2. Interpretation of Section 33(1):

The court clarified that Section 33(1) regulates entities acting as copyright societies but does not curtail the rights of individual copyright owners or their assignees. The section ensures accountability for organizations managing works on behalf of multiple copyright holders.

3. Ownership vs. Collective Administration:

The court distinguished between owners managing their copyrights and copyright societies operating under collective mandates. It held that owners or assignees do not need to register as copyright societies to issue licenses for their works.

4. Precedents Considered:

The court referred to: Entertainment Network India Ltd. vs. Super Cassette Industries Ltd and Leopold Café Vs. Novex Communications Pvt. Ltd.

These cases emphasized that copyright societies are administrative entities, whereas owners retain individual rights.

5. Balancing Interests:

The court acknowledged the need to protect authors' and owners' rights while ensuring public access to copyrighted works through fair licensing mechanisms.

Decision:

The court held that Novex, as the assignee of copyrights, had the right to issue licenses and enforce its copyrights without registering as a copyright society under Section 33(1). The defendants were directed to refrain from unauthorized use of Novex’s copyrighted works and obtain the necessary licenses.

Conclusion:

This judgment reaffirmed the distinction between the rights of copyright owners/assignees and the regulatory framework for copyright societies. It clarified that Section 33(1) does not undermine the statutory rights of copyright owners or assignees to manage and license their works. By upholding Novex's claims, the court emphasized the balance between safeguarding intellectual property and ensuring public interest.

Case Title: Novex Communications Pvt Ltd. Vs Trade Wings Hotels Limited

Date of Judgement: 24.01.2024: Commercial IP Suit No. 363 of 2019: 2024: BHC-OS-1428: Bombay High Court :R.I.Chagla: HJ

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.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.

Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd

Grant of Interim Injunction for Copyright Infringement and Unauthorized Use of Media Content"

Introduction

The plaintiff, Entertainment Network India Limited (ENIL), sought an interim injunction against the defendant, Miss Malini Entertainment Pvt. Ltd., for unauthorized use and infringement of its intellectual property rights. ENIL claimed exclusive ownership of the copyright and other rights related to its show "What Women Want" and alleged that the defendant violated terms of agreement by using media content without authorization.

Background

The dispute arises from the alleged unauthorized use of copyrighted material by the defendant. The plaintiff is a prominent radio broadcaster and media producer in India, owning various intellectual properties, including the show "What Women Want." The defendant, Miss Malini Entertainment Pvt. Ltd., operates social media platforms disseminating entertainment content.

In September 2024, the defendant was engaged by the plaintiff to conduct and promote an interview featuring a celebrity from the show. However, the defendant published the interview in violation of the agreed terms, leading to this legal action.

Brief Facts of the Case

1. The plaintiff owns and produces the show "What Women Want," hosted by Kareena Kapoor Khan, and retains exclusive rights to its content.
2. An agreement between the plaintiff and defendant outlined the terms for conducting and publishing an interview, subject to plaintiff’s prior approval.
3. The defendant violated these terms by publishing the interview on its platforms, with its own logo and branding, without approval.
4. The plaintiff issued a cease-and-desist notice, but the defendant continued publishing the content, leading to significant reputational and financial harm to the plaintiff.
5. The plaintiff sought a permanent and dynamic injunction to restrain the defendants from further infringing its rights.

Issues Involved

1. Whether the defendant’s actions constituted copyright infringement under the Indian Copyright Act, 1957.
2. Whether the plaintiff is entitled to an interim injunction restraining the defendant from unauthorized use of the content.
3. Whether the defendant's branding on the interview content misrepresents the ownership of the work.

Plaintiff's Submissions:

1. The plaintiff argued that it is the original and exclusive owner of all rights related to the show and its associated content.
2. The defendant acted in bad faith by altering and publishing the interview with unauthorized branding.
3. Unauthorized dissemination of the content caused irreparable harm to the plaintiff’s commercial interests.
4. The plaintiff presented a prima facie case for infringement and sought immediate injunction to prevent further misuse.

Reasoning and Analysis by the Judge

1. Ownership and Infringement:

   • The court found that the plaintiff established prima facie ownership of the copyrighted content.
   • The defendant's unauthorized branding and dissemination of the interview infringed the plaintiff’s exclusive rights under the Copyright Act.

Decision

1. The court granted an interim injunction restraining the defendant from hosting, uploading, or distributing the plaintiff’s copyrighted content, including the interview, on any platform.
2. The defendant was directed to remove all infringing content from its platforms within 48 hours of the order.
3. In case of non-compliance by the defendant, intermediary platforms (YouTube and Instagram) were instructed to take down the content.

Conclusion

The order reinforced the principle of protecting intellectual property rights and maintaining the integrity of contractual agreements. By granting the injunction, the court ensured that the plaintiff’s rights were safeguarded against unauthorized use and misrepresentation. This case serves as a precedent for stringent enforcement of intellectual property laws in India’s media and entertainment industry.

Case Citation: Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd: 20.12.2024: CS(COMM) 1141/2024: Delhi High Court :Mini Pushkarna: HJ

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.

Galatea Ltd. Vs. Diyora and Bhanderi Corporation

Essential Feature of Patent and its role in Patent Infringement

Case Title: Galatea Ltd. vs. Diyora and Bhanderi Corporation

Date of Order: March 26, 2018

Case Number: Civil Suit No. 2 of 2017

Court:High Court of Gujarat, Ahmedabad

Judge:Hon’ble Mr. Justice R.M. Chhaya

Introduction

This case involves a dispute over patent infringement concerning a technology for detecting inclusions in gemstones. Galatea Ltd., an Israeli company, alleges that the defendants, Diyora and Bhanderi Corporation, have infringed its patent (Patent No. IN271425). The plaintiff sought a temporary injunction to restrain the defendants from manufacturing, selling, or using machines that allegedly incorporate patented technology.

Background

Galatea Ltd. developed a patented technology that automates the detection of inclusions in gemstones. The technology uses a specialized immersion medium and software to enhance the clarity and value of gemstones. The plaintiffs claim that the defendants unlawfully replicated this technology, thereby infringing their patent rights.

The case was originally filed in the District Court, Surat, and later transferred to the Commercial Court at Vadodara before being renumbered and brought to the High Court of Gujarat.

Brief Facts of the Case

1. Plaintiffs: Galatea Ltd. and its subsidiary, based in Israel, hold Patent No. IN271425, which automates the detection of inclusions in gemstones.

2. Defendants: Diyora and Bhanderi Corporation, along with others, are alleged to have manufactured and sold machines using similar technology.

3. Allegation: The plaintiffs accused the defendants of:Using patented technology without authorization.Selling machines that infringe the patent.Providing gemstone scanning services using infringing machines.

Issues Involved

1. Whether the defendants’ machines infringe Patent No. IN271425.

2. Whether the plaintiffs have a prima facie case for granting a temporary injunction.

3. Whether the defendants’ activities harm the plaintiffs' business and goodwill.

4. Validity of the patent in light of defendants’ claims of prior art and lack of novelty.

Submissions of the Parties

Plaintiffs’ Submissions

The patented technology is novel and revolutionized the diamond industry.

Defendants’ machines incorporate essential features of the patented technology.

Presence of selenium residue in tested diamonds indicates use of the patented process.

Defendants’ actions are deliberate and aimed at unjust enrichment.

Defendants’ Submissions

Denied allegations of infringement and claimed independent development of their technology.

Asserted that the patent lacks novelty and is subject to revocation proceedings.

Claimed no use of bubble prevention technology, which is a core element of the patent.

Argued that the suit was filed to create monopolistic barriers and disrupt their business.

Reasoning and Analysis by the Court

1. Patent Examination:

The court examined the scope and claims of the patent, particularly the novelty of the bubble prevention mechanism.

2. Defendants’ Technology:

The defendants argued that their machines do not use bubble prevention technology, which is a critical aspect of the patent.

Mere presence of Selenium in the Defrndants machine does not prove infringement as selenium has been disclaimed by the plaintiff in FER proceeding.

The entire foundation of the plaintiffs' suit rested on the contention that Selenium residue was found in the gemstones processed by the defendants' machines, and that the defendants were using Selenium in their inclusion detection process. However, the court noted that the Suit Patent itself was not granted for the use of Selenium. In fact, the plaintiffs had filed a separate patent application specifically for the use of Selenium, which was distinct from the patent in question (Suit Patent No. IN271425).

Core Invention of the Suit Patent

The court emphasized that the pith and marrow of the Suit Patent lay in the apparatus or device that enabled the removal of gas bubbles from the immersion medium. This apparatus was considered the essence of the invention and the primary claim under the Suit Patent. The court observed that unless this specific apparatus or mechanism was copied or used by the defendants, it would not prima facie constitute infringement of the Suit Patent.

Failure to Prove Infringement

The plaintiffs were unable to demonstrate, on a prima facie basis, that the defendants' machines incorporated the key claims of the Suit Patent, particularly claims 1 and 18. These claims pertain to the specific device and method for bubble removal, which is central to the Suit Patent's novelty and inventive step.

The plaintiffs also failed to provide evidence that the defendants’ machines utilized the same bubble removal technology or apparatus. The presence of Selenium in the defendants' machines or processes was insufficient to establish infringement, as the Suit Patent did not claim the use of Selenium as part of its invention.

Disclaimed Use of Selenium

The court further highlighted that Selenium is a chemical element and its use alone does not constitute a patented invention under the Suit Patent. The Assistant Controller of Patents, in the process of granting the Suit Patent, had expressly noted that the plaintiffs had disclaimed the use of Selenium in their patent claims. Thus, the presence of Selenium in the defendants' machines, even if proven, did not amount to an infringement of the Suit Patent.

Injunction Refused

Given these findings, the court concluded that the plaintiffs had not established a prima facie case for infringement. The court noted that the entire plaint was based on the use of Selenium by the defendants, which was not a protected aspect of the Suit Patent. Consequently, the court refused to grant the requested injunction, as the plaintiffs failed to demonstrate that the defendants’ machines infringed upon the specific claims or the core inventive features of the Suit Patent.

Conclusion

The refusal of the injunction underscores the court's reliance on the specific claims of the patent and the necessity for plaintiffs to establish a clear connection between the defendants' actions and the patented invention. The presence of Selenium, unconnected to the patent claims, was insufficient to support the plaintiffs' case for infringement.

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.

Vifor International Ltd. & Anr. vs. Corona Remedies Pvt. Ltd. & Anr.

Right and Scope of product-by-process Patent

Case Title: Vifor International Ltd. & Anr. vs. Corona Remedies Pvt. Ltd. & Anr.

Case No.:FAO(OS)(COMM) 160/2023 & CM APPL. 39197/2023

Neutral Citation:2024:DHC:878:DB

Date of Order: February 7, 2024

Court:High Court of Delhi at New Delhi

Bench:Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

Introduction

On February 7, 2024, the Delhi High Court, through a 188-page judgment by Justices Yashwant Varma and Dharmesh Sharma, overturned a restrictive interpretation of product-by-process claims. The Division Bench ruled that patent protection for such claims extends to the product itself, provided it is novel and inventive, regardless of the manufacturing process.

Background

Vifor International Ltd. held Patent No. IN'536 for Ferric Carboxymaltose (FCM), a novel water-soluble iron carbohydrate complex with unique molecular properties. The company alleged infringement by pharmaceutical companies, including Corona Remedies Pvt. Ltd. and MSN Laboratories Pvt. Ltd., and sought an interim injunction.

Refusal of Injunction by Single Judge resulted in filing of this Appeal. 

The Single Judge denied the injunction, reasoning that product-by-process patents protect only products made using the specified process. Since the defendants used a different process, the judge ruled there was no infringement.

Brief Facts of the Case

1. Patent Details: Application No.: 947/KOLNP/2005

Filed: May 24, 2005

Granted: June 25, 2008

Expired: October 20, 2023

2. Product Description:FCM is described as a water-soluble iron carbohydrate complex, used to treat iron deficiency. The product is characterized by specific molecular weight parameters and a unique production process involving maltodextrins oxidized using an aqueous hypochlorite solution.

3. Claims:The appellant argued that the patent included a product claim with process descriptions, whereas the respondents contended it was a process-limited claim.

Issues Involved in the Case

Scope of Product-by-Process Claims: Does a product-by-process claim protect the product regardless of how it is manufactured, or is its scope limited to products made through the disclosed process?

Infringement Analysis: How should courts evaluate whether a competing product infringes a product-by-process claim, especially when alternative manufacturing methods are used?

Submissions of the Parties

Appellants (Vifor International Ltd.):

1. Asserted that FCM is a novel product and the process terms in the claims are merely illustrative.

2. Highlighted that the product has been granted patents in 57 jurisdictions without challenge.

3. Emphasized that FCM’s uniqueness is acknowledged globally, including an INN assignment by WHO.

4. Cited international jurisprudence supporting broader interpretation of "product-by-process" claims.

Respondents (Corona Remedies Pvt. Ltd.):

1. Contended that the claims are limited to the process described, making the patent a "product-by-process" claim.

2. Asserted that their product does not use the same process as described in IN'536, hence no infringement.

3. Argued that the product was already known in prior art, making the patent invalid for lack of novelty.

Reasoning and Analysis by the Court

Definition and Purpose:

A product-by-process claim bridges the gap between product and process patents. It is used when a novel product cannot be adequately described by its structure alone, necessitating reference to its manufacturing process.

Key Principles:

1. Novelty of the Product:

A product-by-process claim is valid only if the product itself is novel and inventive, irrespective of the process described.Merely describing a new process does not make the product novel.

2. Patentability and Infringement:

The same criteria of novelty and inventiveness apply during patent grant and infringement analysis. Claims should not be treated differently for validity and infringement purposes.

3. Global Standards:

Guidelines from patent offices (e.g., IPO, EPO, USPTO) and international jurisprudence emphasize that novelty must be assessed by disregarding process terms and focusing on the product's unique attributes.

4. Product is the main focuss while process is supplimentary in narure:

Product-by-process claims fundamentally protect a novel product, with process terms serving as an explanatory tool. The focus remains on the product’s uniqueness, ensuring consistent evaluation across patentability and infringement.

Decision

The Hon'ble Division Bench allowed the appeal filed by Vifor International Ltd. and overturned the restrictive interpretation of product-by-process claims adopted by the Single Judge and held that product-by-process claims protect the product itself, provided it is novel and inventive, irrespective of the specific manufacturing process described in the patent. 

Conclusion:

This broader interpretation ensures that the essence of the invention—the novel and inventive product—is safeguarded, rather than limiting protection to the process by which it is made. This case underscores the complexities of interpreting product-by-process claims under Indian patent law. 

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

United & United 

Email: amitabh@unitedandunited.com, 

Phone: 9990389539

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