Avery Dennison Corporation Vs. Controller of Patents and Designs

• A significant time gap between prior art and the invention, coupled with a lack of intervening solutions, supports non-obviousness.

Introduction

In the realm of intellectual property law, the concept of an "inventive step" often serves as the crucible in which patent applications are tested. The case of Avery Dennison Corporation vs. Controller of Patents and Designs, decided on November 4, 2022, by the Delhi High Court, exemplifies this intricate legal scrutiny. At its core, this appeal challenged the refusal of a patent for a "Notched Fastener" on the grounds that it lacked an inventive step under the Indian Patents Act, 1970. The case delves into the nuances of patentability, the evaluation of prior art, and the judicial approaches to determining obviousness, offering a compelling narrative of technical innovation pitted against legal rigor. This detailed case study explores the factual and procedural backdrop, the legal issues, the arguments of the parties, the judicial reasoning, and the broader implications of the court's decision.

Detailed Factual Background

Avery Dennison Corporation, a global leader in branding and labeling solutions, has been a prominent name since its inception in 1935 as Kum Kleen Products, later merging with Dennison Manufacturing Company in 1990 to adopt its current identity. The corporation specializes in manufacturing labeling materials designed to enhance brand packaging and convey product information. The subject of this dispute was a patent application titled "Notched Fastener," bearing Application No. 5160/DELNP/2013, filed in India on June 10, 2013, as part of the national phase entry of a PCT application (PCT/US2011/062189) dated November 28, 2011. The invention aimed to improve fastener stock used in industries for attaching tags or labels, addressing issues of inconsistency in cutting and wastage in conventional systems.

The fastener stock in question was designed to ensure uniform dispensing and consistent cutting through specific features: the strategic positioning, shape, and orientation of notches. These notches, described as rectangular or square and aligned with desired cut locations, facilitated precise severance of fasteners from the stock, reducing variations caused by the elasticity of materials in traditional systems. The invention promised economic significance by simplifying manufacturing processes and enhancing the reliability of fastener application.

Detailed Procedural Background

The procedural journey of the patent application began with its filing in India, followed by a request for examination. On April 25, 2018, the Controller of Patents issued a First Examination Report (FER), raising objections primarily on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. The FER cited three prior art documents:

• D1: GB2053296A (published February 4, 1981), related to fastener guns.
• D2: WO 94/10044A1 (published May 11, 1994), an earlier application by Avery Dennison concerning an apparatus for dispensing fasteners from ladder stock.
• D3: US4456123A (published June 26, 1984), another document on fastener mechanisms.

In response, Avery Dennison amended its claims and submitted arguments to counter the objections. However, the Controller remained unconvinced, leading to a hearing on March 1, 2021. The applicant filed written submissions on March 16, 2021, but the Controller, in an order dated August 12, 2021, refused the patent application under Section 15 of the Act, citing a lack of inventive step based primarily on prior art documents D2 and D3. Aggrieved by this decision, Avery Dennison appealed to the Delhi High Court under Section 117A(2) of the Patents Act, seeking to set aside the Controller’s order.

Issues Involved in the Case

The central issue in this case was whether the subject patent application for the "Notched Fastener" lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970, in light of the cited prior art, particularly D2. Subsumed within this issue were several critical questions:

• Did the specific features of the notch (its position, shape, and orientation) constitute a technical advancement over the prior art?
• Was the invention obvious to a person skilled in the art, given the disclosures in D2 and other prior art documents?
• Did the Controller adequately analyze the prior art and the subject invention to justify the refusal?
• Could the invention be dismissed as a mere workshop improvement or an attempt at evergreening an earlier patent?

These questions required the court to navigate the complex interplay of technical innovation, legal standards for patentability, and judicial precedents on obviousness.

Detailed Submission of Parties

The appellant argued vehemently that the subject patent embodied an inventive step. The key submissions were:

• The invention’s novelty lay in the notch’s creation, position, shape (rectangular or square), and orientation relative to cross-pieces, which collectively addressed the problem of inconsistent cutting due to the elasticity of fastener stock.
• The technical advancement was evident in achieving uniform dispensing and precise severance, reducing wastage and enhancing economic efficiency.
• Prior art document D2, while relevant, was distinguishable. D2 used triangular notches engaged by a pawl mechanism, which was less efficient and more complex to manufacture compared to the subject patent’s direct engagement with the feeding system.
• D3 was irrelevant as its notches were positioned for cutting rather than engaging the feeder mechanism, effectively teaching away from the subject invention.
• The appellant emphasized that the invention’s simplicity should not negate its patentability, and the economic significance of the notched fastener justified its protection.

In contrast Controller, defended the refusal, arguing:

• The notch’s features in the subject patent were obvious variations of D2, which already disclosed the use of notches for fastener stock movement. A change in shape or position was a mere workshop improvement, not an inventive step.
• The engagement mechanism (pawl vs. direct) was irrelevant to the inventive step analysis.
• As D2 was also filed by Avery Dennison, the subject patent appeared to be an attempt at evergreening an earlier invention.
• The appellant failed to provide substantial data to support claims of economic advantage.
• The Controller relied on judicial precedent, notably Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700, to argue that minor modifications do not warrant patent protection.

Detailed Discussion on Judgments Cited by Parties

The court’s analysis was enriched by a robust discussion of judicial precedents, which both parties and the court invoked to frame the inventive step inquiry. The key judgments cited, along with their context, are:

• Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700: Cited by the Controller to argue that minor changes, such as the notch’s shape or position, constitute workshop improvements rather than inventive steps. The court in Bristol-Myers emphasized that structural similarities in prior art must provide motivation for the claimed invention, and mere modifications do not suffice for patentability.
• F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del): Referenced by the court to discuss the problem-solution approach to obviousness. This case modified the Windsurfing test by adding a step to assess whether differences between prior art and the invention involve ordinary application or multiple complex steps, emphasizing the need to avoid hindsight.
• Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59: A seminal UK case cited by the court, laying down a four-step test for obviousness: identifying the inventive concept, imputing common general knowledge to a skilled person, identifying differences between prior art and the invention, and determining if those differences were obvious. This test formed the foundation for the court’s analysis.
• Pozzoli Spa v. BDMO SA, [2006] EWHC 1398 (Ch): Cited to refine the Windsurfing test, emphasizing the identification of the person skilled in the art and the inventive concept. The court used this to structure its comparison of the subject patent with D2.
• Actavis Group PTC EHF v. ICOS Corporation, [2019] RPC 9: Referenced for its comprehensive list of considerations for assessing obviousness, including whether the invention was obvious to try, the routine nature of research, and the motive of the skilled person. The court found these factors relevant to evaluate the non-obviousness of the notched fastener.
• Human Genome Sciences v. Eli Lilly, [2012] RPC 6: Cited alongside Actavis to underscore the need for a nuanced approach to obviousness, tailored to the specific technology and prior art.
• Johns-Manville Corporation, [1967] R.P.C. 479: Mentioned to reinforce the importance of considering the skilled person’s knowledge at the priority date.
• KSR International v. Teleflex, 550 U.S. 398 (2007): A U.S. Supreme Court case cited to discuss the Teaching-Suggestion-Motivation (TSM) test, cautioning against its rigid application. The court used this to argue that obviousness should not be assessed narrowly.
• Vickers v. Siddell, (1890) 7 R.P.C. 292: Invoked to emphasize that simplicity does not negate inventiveness. The House of Lords’ observation that simple inventions can be groundbreaking was pivotal in countering the Controller’s dismissal of the notch’s modifications as superficial.
• Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd., (1929) 46 R.P.C. 23: Cited to reinforce that simplicity and bold conception can justify patentability, particularly when addressing long-standing problems.
• Brugger v. Medic-Aid Ltd., [1996] R.P.C. 635: Referenced via Terrell on Law of Patents to highlight the “long felt want” concept, suggesting that a significant time gap between prior art and the invention indicates non-obviousness if the improvement was not previously adopted despite a known need.
• Agriboard International LLC. v. Deputy Controller of Patents & Designs, [C.A.(COMM.IPD-PAT) 4/2022, dated March 31, 2022]: A recent Delhi High Court decision cited to stress that a rejection for lack of inventive step must include a detailed analysis of prior art, the subject invention, and the obviousness to a skilled person. This precedent guided the court’s critique of the Controller’s cursory analysis.
• 3M Innovative Properties Ltd. and Ors. vs. Venus Safety and Health Pvt. Ltd., FAO (OS) 292/2014 & CM No. 10651/2014: Referred to for its approach to comparing prior art with the claimed invention from the perspective of a skilled person, emphasizing technical advancement.

These precedents collectively shaped the court’s framework for evaluating the inventive step, balancing simplicity, time gaps, and technical advancement against the Controller’s objections.

Detailed Reasoning and Analysis of Judge

Court's judgment is a meticulous exposition of patent law principles, blending technical analysis with legal reasoning. The court began by outlining the various approaches to assessing inventive step, including the obvious-to-try, problem-solution, could-would, and TSM tests, as well as the Windsurfing and Pozzoli frameworks. It emphasized that no single test should be applied rigidly; instead, the court adopted a flexible approach tailored to the fastener technology and prior art.

The inventive concept of the subject patent was identified as residing in three features: the position of the notch (aligned with cut locations for consistent severance), the shape of the notch (rectangular or square for linear movement), and the direction of the notch relative to cross-pieces (enabling efficient feeding). The court compared these features with D2, the closest prior art, which used triangular notches engaged by a pawl mechanism. The court noted that D2’s mechanism was less precise, leading to irregular cutting due to elasticity, a problem explicitly addressed in the subject patent’s specification.

Applying the Windsurfing/Pozzoli test, as modified by F. Hoffmann-La Roche, the court found significant differences between D2 and the subject patent. The subject patent’s notches ensured uniform dispensing and precise cutting, overcoming the disadvantages of D2’s rotary feed system. The court rejected the Controller’s characterization of these differences as “superficial,” citing Vickers and Pope to argue that simplicity does not negate inventiveness. The 18-year gap between D2 (filed in 1993) and the subject patent (filed in 2011) was a critical factor. The court invoked Brugger’s “long felt want” principle, noting that no other prior art or third party had addressed D2’s shortcomings in this manner, suggesting the invention’s non-obviousness.

The court also addressed the Controller’s evergreening argument, finding it inapplicable since the subject patent offered a distinct technical advancement. The grants of corresponding patents in the USA, Japan, South Korea, and China further bolstered the appellant’s case. Critically, the court relied on Agriboard to fault the Controller for failing to provide a detailed analysis of how the subject invention was obvious, rendering the refusal order deficient.

Final Decision

The Delhi High Court allowed the appeal, setting aside the Controller’s order of August 12, 2021. The court directed that the patent proceed for grant, with the case listed before the Patent Office on November 14, 2022, for completion of formalities. No costs were awarded.

Law Settled in this Case

This case reinforces several key principles in Indian patent law:

• Simplicity in an invention does not preclude patentability if it addresses a technical problem with unpredictable advantages.
• A significant time gap between prior art and the invention, coupled with a lack of intervening solutions, supports non-obviousness.
• The Controller must provide a reasoned analysis of prior art, the subject invention, and obviousness to justify a refusal under Section 2(1)(ja).
• The Windsurfing/Pozzoli test, as modified by Indian precedents, is a robust framework for assessing inventive step, but courts may adopt a flexible approach combining multiple tests.
• Evergreening objections require evidence of mere extension rather than technical advancement.

Case Title: Avery Dennison Corporation Vs. Controller of Patents and Designs

Date of Order: November 4, 2022

Case No.: C.A. (COMM. IPD-PAT) 29/2021

Neutral Citation: 2022/DHC/004697

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Prathiba M. Singh

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], High Court of Delhi

Visage Beauty and Healthcare Pvt Ltd Vs. Registrar of Trade Marks

Background

The appeal was filed by Visage Beauty and Healthcare Pvt Ltd in the Delhi High Court under Section 91 of the Trade Marks Act, 1999, challenging an order dated September 19, 2024, by the Assistant Registrar of Trade Marks. The order declared the appellant’s trademark application (No. 4309324) for the mark "Oganic" abandoned, citing a time-barred counter statement to a notice of opposition.

Appellant's Trademark Application

Visage Beauty, operating under the O3+ mark since 2005, adopted the "Oganic" mark in 2019 as part of its O3+ family of marks. The application, filed on October 1, 2019, sought registration in Class 44 for beauty and health services on a proposed-to-be-used basis. The application faced objections, underwent hearings, and was accepted and advertised in December 2023.

Opposition and Procedural Issue

On February 7, 2024, respondent no. 2 filed an opposition to the application. The appellant claimed it was unaware of the opposition until a routine status check on May 2, 2024, despite the Trade Marks Registry’s E-Register indicating service on February 20, 2024. The appellant filed a counter statement on May 6, 2024, but received a show cause notice on June 29, 2024, for filing it beyond the two-month period prescribed under Section 21(2) of the Trade Marks Act. The appellant’s affidavit, filed after a July 31, 2024, hearing, stated non-service of the opposition notice, but the Registrar’s order ignored this and deemed the application abandoned.

Court’s Analysis

The Delhi High Court, presided over by Justice Amit Bansal, examined Section 21(2) of the Trade Marks Act, which requires a counter statement within two months of receiving the opposition notice, and Rule 18 of the Trade Marks Rules, 2017, which deems service complete upon sending. The court noted a conflict between these provisions, citing the Madras High Court’s ruling in Samsudeen A v. Registrar of Trade Marks, which advocated a purposive interpretation aligning Rule 18 with Section 21(2). The court also referenced prior Delhi High Court decisions, including Mars Incorporated v. The Registrar of Trade Marks, emphasizing that the time period starts upon actual receipt. The Registrar’s failure to acknowledge the appellant’s affidavit and the absence of service records due to a technical glitch supported the appellant’s claim of non-service.

Outcome

The court set aside the impugned order, finding no evidence of service of the opposition notice. The matter was remanded to the Trade Marks Registry, with directions to accept the appellant’s counter statement, serve it on respondent no. 2 within four weeks, and proceed with the opposition as per the Act and Rules. The court ensured compliance by directing the order’s transmission to the Controller General’s office.

Case Title: Visage Beauty and Healthcare Pvt Ltd Vs. Registrar of Trade Marks
Date of Order: April 9, 2025
Case No.: C.A.(COMM.IPD-TM) 84/2024
Neutral Citation: 2025:DHC:2733
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Hon’ble Mr. Justice Amit Bansal

TRDP Happy World Private Limited Vs Shri Balaji Chemfood Industries

Background

The case involves a trademark and copyright infringement dispute filed by M/s TRDP Happy World Private Limited against M/s Shri Balaji Chemfood Industries in the Delhi High Court. The plaintiff sought a permanent injunction to restrain the defendant from using the "MARIO" trademark and related artistic works, alleging infringement and passing off.

Plaintiff's Claims

M/s TRDP Happy World Private Limited, a manufacturer of food products like rusks and biscuits, adopted the "MARIO" and "TRDP MARIO" trademarks in 2011, securing registrations in India and internationally. The plaintiff also held copyright registrations for the artistic elements of its packaging, featuring a distinctive chef with a mustache. The plaintiff claimed significant goodwill and reputation, supported by substantial sales figures, with Rs. 329.74 crore in India for 2021-2022, and extensive advertising efforts.

Defendant's Actions

The defendant, M/s Shri Balaji Chemfood Industries, was accused of adopting an identical "MARIO" mark and deceptively similar packaging for its salt products. Discovered by the plaintiff in March 2023, the defendant's mark replicated the plaintiff's font, color scheme, and chef device, causing potential consumer confusion and harm to the plaintiff’s reputation.

Court Proceedings

The Delhi High Court issued summons and an ad-interim injunction on April 10, 2023, restraining the defendant from using the infringing mark. A Local Commissioner was appointed to inspect the defendant’s premises, where evidence of infringing goods was found, including half-burnt packaging. The defendant failed to file a written statement within the permissible period, leading to the ad-interim injunction being made permanent on November 19, 2024. The defendant also repeatedly failed to file a response to the plaintiff’s application under Order VIII Rule 10 of the CPC, resulting in the court proceeding without their defense.

Court's Findings

The court, presided over by Justice Amit Bansal, found that the plaintiff’s verified plaint and supporting documents were unopposed, deeming all averments admitted. The defendant’s mark was identical to the plaintiff’s, with similar artistic elements, targeting overlapping consumers through identical trade channels. The court concluded that the defendant’s actions constituted trademark and copyright infringement and passing off, causing irreparable harm to the plaintiff. The defendant’s failure to contest the suit and the Local Commissioner’s findings of mala fide conduct, such as burning infringing packaging, further supported the plaintiff’s case.

Relief Granted

The court granted a permanent injunction restraining the defendant from using the "MARIO" mark or similar packaging. Additionally, compensatory damages and costs of Rs. 5,00,000 were awarded to the plaintiff, based on the principle of "rough and ready calculations" and the defendant’s dubious conduct. Other reliefs sought by the plaintiff were not pressed.

Case Title: TRDP Happy World Private Limited Vs Shri Balaji Chemfood Industries

Date of Order: April 16, 2025

Case No.: CS(COMM) 197/2023

Neutral Citation: 2025:DHC:2788

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Swikriti Travels Vs. Mini Pocket OPC Pvt. Ltd.

Background

This case involves an appeal filed by M/s Swikriti Travels in the Delhi High Court challenging an order dated February 12, 2025, passed by the District Judge (Commercial Court) in a suit (CS DJ 1511/18) filed by M/s Mini Pocket OPC Pvt. Ltd. The Commercial Court had allowed the appellant’s application under Order IX Rule 13 of the Code of Civil Procedure, 1908, to set aside an ex parte decree but imposed a condition requiring the appellant to deposit the entire decretal amount of Rs. 38 lakhs as a fixed deposit.

Procedural History

The Commercial Court proceeded ex parte against the appellant on July 25, 2023, due to repeated non-appearances and passed an ex parte decree on October 10, 2023. The appellant filed an application under Order IX Rule 13, citing miscommunication by their previous counsel as the reason for non-appearance. The Commercial Court accepted this explanation but conditioned the setting aside of the decree on the deposit of Rs. 38 lakhs to safeguard the plaintiff’s interests.

Appellant’s Challenge

The appellant contested the condition of depositing the full decretal amount, arguing it was excessive and unjustified. Relying on the Supreme Court’s judgment in Tea Auction Ltd. v. Grace Hill Tea Industry, the appellant contended that such conditions must be reasonable and not oppressive, and the impugned order lacked reasoning for imposing the deposit.

Court’s Analysis

The Delhi High Court, presided over by Justices C. Hari Shankar and Ajay Digpaul, reviewed the impugned order and found it deficient in reasoning. The court noted that the Commercial Court accepted the appellant’s explanation for non-appearance but failed to justify the deposit condition with specific circumstances, as required by Tea Auction. The Supreme Court’s ruling emphasized that conditions under Order IX Rule 13 should not be unreasonably harsh, and any deposit requirement must be supported by clear reasons, particularly in special circumstances.

Outcome

The High Court set aside the impugned order’s deposit condition and remanded the matter to the Commercial Court to reconsider the conditions, if any, for allowing the Order IX Rule 13 application. The court directed that the application could not be rejected and instructed the Commercial Court to align any conditions with the principles in Tea Auction. The matter was scheduled for rehearing on April 30, 2025, and execution proceedings were adjourned pending the outcome.

Case Title: Swikriti Travels Vs. Mini Pocket OPC Pvt. Ltd.
Date of Order: April 17, 2025
Case No.: FAO (COMM) 81/2025
Neutral Citation: 2025:DHC:2737-DB
Name of Court: High Court of Delhi
Name of Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

Marelli Europe S.P.A. Vs. The Deputy Controller of Patents and Designs

Background

This case involves an appeal filed by Marelli Europe S.P.A. in the Delhi High Court under the Patents Act, 1970, challenging the order dated December 28, 2023, issued by the Deputy Controller of Patents and Designs. The order rejected the appellant’s Indian Patent Application No. 495/DEL/2013, filed on February 21, 2013, for an invention titled "Hydraulic Servo-Control of a Servo-Controlled Gearbox," with a priority date of February 22, 2012, from an Italian application.

Grounds of Rejection

The respondent rejected the patent application on the ground of lacking an inventive step under Section 2(1)(ja) of the Patents Act, 1970, citing five prior art documents (D1 to D5). The impugned order was issued after the First Examination Report, the appellant’s response, a hearing on January 10, 2023, and post-hearing submissions.

Appellant’s Grievance

Marelli Europe S.P.A. argued that the impugned order was mechanically passed without reasoned justification. The section explaining why the invention lacked inventiveness merely reproduced extracts from prior art documents without analyzing how they applied to the subject invention. The appellant’s detailed submissions distinguishing the prior arts were ignored, and the Controller’s observations lacked any substantive reasoning.

Legal Precedent

The court referenced Agriboard International LLC v. Deputy Controller of Patents and Designs, which mandates that rejecting a patent for lack of inventive step requires analyzing the prior art, the subject invention, and the obviousness to a person skilled in the art. The court also cited Art Screw Co., Ltd. v. The Assistant Controller of Patents and Designs, emphasizing that rejecting an invention for lack of inventive step is a serious finding requiring thorough evaluation.

Respondent’s Position

The respondent introduced new material in their counter affidavit, alleging suppression by the appellant. However, this material was not referenced in the impugned order, and the court held that it could not consider new averments raised for the first time in the affidavit, as the appeal was confined to the record before the Patent Office.

Court’s Findings

The Delhi High Court, presided over by Justice Amit Bansal, found the impugned order deficient for failing to provide reasoned analysis. The Controller’s mere reproduction of prior art extracts and conclusory statement on lack of inventive step did not meet the standards of natural justice or statutory requirements. The court deemed the order mechanically passed and unsustainable under judicial scrutiny.

Outcome

The court set aside the impugned order and remanded the matter to the Patent Office for fresh consideration by a different officer. The Controller was directed to provide a fresh hearing, include any new material in the hearing notice for the appellant’s response, and decide the application within three months, given its filing date in 2013. All contentions were kept open.

Case Title: Marelli Europe S.P.A. Vs. The Deputy Controller of Patents and Designs

Date of Order: April 16, 2025

Case No.: C.A.(COMM.IPD-PAT) 21/2024

Neutral Citation: 2025:DHC:2789

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Kranti Soap Pvt. Ltd. Vs. Deep Chand Arya Industries

Background

This case involves a petition under Article 227 of the Constitution of India filed by M/s Kranti Soap Pvt. Ltd. & Ors. in the Delhi High Court, challenging an order dated February 11, 2025, passed by the District Judge (Commercial), Tis Hazari Courts, Delhi. The order dismissed the petitioners’ application under Order XIV Rule 5 and Section 151 of the Code of Civil Procedure, 1908, seeking to frame additional issues in a trademark infringement suit initiated by M/s Deep Chand Arya Industries.

Nature of the Suit

The respondent, M/s Deep Chand Arya Industries, filed a commercial suit (CS (COMM) No.502/2024) against the petitioners for infringement of the registered trademark "KRANTI," seeking permanent injunction, damages, rendition of accounts, and other reliefs. On December 9, 2024, the trial court framed issues, including those related to injunction, damages, accounts, territorial jurisdiction, and relief, and appointed a Local Commissioner for evidence recording.

Petitioners’ Application

Approximately 54 days after the issues were framed, the petitioners sought additional issues, arguing that the suit did not qualify as a "commercial suit" under the Commercial Courts Act, 2015, due to non-compliance with Sections 6 and 12. They claimed the respondent’s pleadings lacked a specific statement that the suit’s value exceeded Rs. 3,00,000, rendering it outside the commercial court’s jurisdiction.

Trial Court’s Impugned Order

The trial court rejected the petitioners’ application, holding that the suit was a commercial dispute involving trademark infringement. The respondent had valued the suit at Rs. 95,03,500, paid appropriate court fees, and complied with statutory requirements, thus satisfying the criteria for a commercial suit.

Petitioners’ Arguments

The petitioners contended that the suit was not maintainable as a commercial suit because the pleadings did not explicitly state a "specified value" above Rs. 3,00,000, as required by Sections 6 and 12 of the Commercial Courts Act. They relied on Pankaj Ravjibhai Patel v. SSS Pharmachem (P) Ltd., arguing that both a "commercial dispute" and a "specified value" above the threshold were mandatory. They asserted that any order by a court lacking jurisdiction is a nullity.

Respondent’s Arguments

The respondent countered that the suit, involving intellectual property rights, was governed by Section 12(1)(d) of the Commercial Courts Act, which bases the specified value on the market value estimated by the plaintiff. The suit was valued at Rs. 95,03,500, far exceeding the Rs. 3,00,000 threshold, and complied with the Court Fees Act, 1870, and Suits Valuation Act, 1887. The respondent cited Pankaj Ravjibhai Patel and Bharat Bhushan Gupta v. Pratap Narain Verma to argue that suit valuation depends on the reliefs claimed, not a rigid market value threshold.

Court’s Analysis

The Delhi High Court, presided over by Justice Saurabh Banerjee, upheld the trial court’s order. The court noted that framing issues under Order XIV of the CPC requires a clinical process based on material propositions of fact or law from pleadings. The trial court had followed this process, framing issues on December 9, 2024, and rejecting the petitioners’ application on February 11, 2025, after due consideration. The court found the petitioners’ argument—that the pleadings lacked an explicit "specified value" statement—overly technical. The respondent’s valuation of Rs. 95,03,500, supported by pleadings on market value and annual turnover, satisfied the Commercial Courts Act’s requirements. The court clarified that the Act does not override the Court Fees Act or Suits Valuation Act, as established in Pankaj Ravjibhai Patel, and suit valuation hinges on the reliefs claimed, per Bharat Bhushan Gupta.

Scope of Article 227

The court emphasized that interference under Article 227 is limited to cases of grave miscarriage of justice or flagrant legal violations, as held in Rajendra Diwan v. Pradeep Kumar Ranibala. The trial court’s order was well-reasoned and did not warrant interference.

Conclusion

The High Court dismissed the petition, finding no basis to interfere with the trial court’s order. The suit was deemed a valid commercial dispute, and the petitioners’ application for additional issues was rightly rejected.

Case Title: Kranti Soap Pvt. Ltd. Vs. Deep Chand Arya Industries

Date of Order: April 25, 2025

Case No.: CM(M)-IPD 4/2025

Neutral Citation: 2025:DHC:2908

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Huawei Technologies Co. Ltd. Vs. The Controller General of Patents, Designs and Trademark

Background

This case involves an appeal filed by Huawei Technologies Co. Ltd. in the High Court at Calcutta, challenging the rejection of its Patent Application No. 202237060506 by the Controller General of Patents, Designs, and Trademarks. The application pertained to a communication method and device aimed at reducing power consumption in a terminal’s paging process. The rejection was based solely on the alleged invalidity of the General Power of Attorney (GPA) submitted by the appellant’s agent.

Grounds of Rejection

The impugned order, dated December 17, 2024, rejected the patent application due to non-compliance with formal statutory requirements under Sections 127 and 132 of the Patents Act, 1970, and Rules 126 and 135 of the Patent Rules, 2003. The Controller found the GPA defective, ignoring the technical merits of the invention. The objection to the GPA was raised late in the process, despite the original GPA being filed in another application and a copy submitted for this one, as permitted by Departmental Circular No. 12 of 2009.

Appellant’s Contentions

Huawei argued that the rejection was arbitrary and procedurally unfair. The company had addressed both technical and formal objections in written submissions, but the Controller focused solely on the GPA issue, which was not flagged in the First Examination Report (FER). The appellant contended that the reliance on statutory provisions was misplaced, as the Circular allowed copies of GPAs. Additionally, Huawei alleged bias by the Controller, citing a prior complaint by the Controller against GPA acceptance practices, suggesting a premeditated rejection.

Respondent’s Position

The respondent authorities conceded that the impugned order lacked sufficient grounds and was procedurally flawed. They acknowledged that the rejection was based on a purely technical issue and that established practices permitted the use of GPA copies.

Court’s Findings

The High Court, presided over by Justice Ravi Krishan Kapur, found the impugned order to be mechanically passed and overly pedantic. The court noted that the rejection violated principles of natural justice by not allowing Huawei to rectify the alleged GPA defect. The 40-page order was criticized for its exhaustive but irrelevant analysis of statutory provisions and comparisons with foreign patent offices, while ignoring the invention’s merits. The court highlighted that the Patents Act and Rules do not mandate refusal on GPA grounds alone and that the Circular supported the appellant’s practice. The court also referenced a Karnataka High Court decision, affirming that notarization or registration of a GPA is not compulsory.

Outcome

The court set aside the impugned order, deeming the sole ground for rejection untenable. The case was remanded to a different Hearing Officer for fresh consideration within four months, with all issues left open for adjudication on merits. The appeal was allowed to this extent.

Case Title: Huawei Technologies Co. Ltd. Vs. The Controller General of Patents, Designs and Trademark

Date of Order: April 22, 2025

Case No.: IPDPTA/6/2025

Name of Court: High Court at Calcutta

Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Gunjan Sinha (a) Kanishk Sinha Vs. Union of India

20-year patent term from the application date is consistent with the TRIPS Agreement

Introduction

The case of Gunjan Sinha (a) Kanishk Sinha and Anr. Vs. Union of India represents a significant judicial exploration into the constitutional validity of Section 53 of the Patents Act, 1970, which governs the term of a patent in India. This intra-court appeal, adjudicated by the Calcutta High Court, arose from a challenge to the dismissal of a writ petition that sought to declare Section 53 ultra vires the Constitution of India, citing conflicts with Section 11A(7) of the same Act and alleged violations of fundamental rights. The appellants, appearing in person, contended that the statutory framework unfairly prejudiced patentees by imposing renewal fees for periods when the patent was not granted, thereby raising questions about fairness, legislative intent, and constitutional protections. This case study delves into the intricate factual and procedural background, the legal issues at stake, the submissions of the parties, judicial reasoning, and the broader implications of the court's decision on patent law in India.

Detailed Factual Background

The dispute originates from a patent application filed by Gunjan Sinha (Appellant No. 1) on May 2, 2005, for an invention titled "A Fuel Cell System and an Efficient Eco-Friendly Vehicle Mounted with Fuel Cell System." The patent, bearing number 254875, was granted on December 28, 2012, after a delay of over seven years, with a term of 20 years effective from the date of application, as stipulated under Section 53 of the Patents Act, 1970. By a deed of assignment dated July 20, 2021, Appellant No. 1 assigned the entire patent share to Appellant No. 2, but an addendum agreement dated June 8, 2022, redistributed the shares equally between the two appellants. The appellants' primary grievance was the prolonged delay in the grant of the patent, which they argued curtailed their ability to exploit the patent effectively. They contended that Section 53, which mandates the patent term to commence from the date of application, coupled with Section 11A(7), which restricts infringement proceedings until the patent is granted, created an inequitable situation. Additionally, the appellants challenged the requirement to pay renewal fees under Rule 80 for the period between 2005 and 2012, when the patent was not yet granted, alleging it constituted double jeopardy and violated Article 22 of the Constitution. The appellants further claimed that the government's failure to enforce an earlier court directive from the Patna High Court to grant the patent within two months exacerbated their plight, prompting contempt proceedings.

Detailed Procedural Background

The appellants' legal journey began with a writ petition (WPA No. 1963 of 2022) filed before the Calcutta High Court, seeking an extension of the patent term by 15 years as compensation for alleged harassment and delays, alongside a prayer to rescind Section 53. This petition was dismissed on June 17, 2022, with the court granting liberty to claim damages for the delay in granting the patent. Aggrieved, Appellant No. 1 appealed to the Division Bench, challenging the constitutional validity of Section 53. The appeal was dismissed on September 15, 2022, with permission to seek a review. A subsequent review application (RVW 224 of 2022) was filed but dismissed on March 14, 2023. Undeterred, the appellants filed another writ petition (WPA No. 8691 of 2023) before a Single Bench, requesting a mandamus to compel the government to decide their representation for amending or withdrawing Section 53, and a certiorari to quash Section 53 as ultra vires. During these proceedings, Appellant No. 2 was impleaded via an intervention application on April 30, 2024. The Single Bench, on May 7, 2024, dismissed the writ petition, upholding the constitutional validity of Section 53. This dismissal prompted the present intra-court appeal (MAT 903 of 2024), filed before the Division Bench of the Calcutta High Court, comprising Chief Justice T.S. Sivagnanam and Justice Chaitali Chatterjee Das.

Issues Involved in the Case

The case presented several critical legal issues for adjudication. The foremost question was whether Section 53 of the Patents Act, 1970, which fixes the patent term from the date of application, is ultra vires the Constitution of India, particularly when read with Section 11A(7), which grants limited rights to applicants post-publication but bars infringement suits until the patent is granted. Another issue was whether the requirement to pay renewal fees for the period before the patent grant constituted double jeopardy or violated Article 22 of the Constitution. The court also had to determine whether the appellants' claims were barred by res judicata due to prior dismissed petitions seeking similar relief. Additionally, the court examined whether the appellants had established sufficient grounds to challenge the vires of a statutory provision and whether judicial intervention could extend to directing legislative amendments.

Detailed Submission of Parties

The appellants, appearing in person, argued that the seven-year delay in granting their patent (from May 2, 2005, to December 28, 2012) effectively reduced their ability to exploit the patent, as the 20-year term commenced from the application date under Section 53. They contended that Section 11A(7), which grants provisional rights post-publication but prohibits infringement proceedings until the patent is granted, rendered these rights illusory, as patentees could not enforce their intellectual property during the pre-grant period. The appellants further challenged the renewal fees levied under Rule 80 for the period from 2005 to 2012, arguing that paying fees for an ungranted patent was unjust and constituted double jeopardy, violating Article 22. They relied on a representation dated December 28, 2021, to the Ministry of Commerce and Industry, which went unanswered, and cited prior judicial directives from the Patna High Court that were allegedly not enforced. To bolster their case, the appellants referenced three Delhi High Court judgments: Ferid Allani v. Union of India (W.P.(C) 7/2014, decided on December 12, 2019), Proctor and Gamble Company v. Controller of Patents and Designs (decided on December 8, year not specified), and Nitto Denko Corporation v. Union of India (W.P.(C) 3742/2013, report dated February 27, 2014). These cases, they argued, highlighted judicial recognition of delays in patent processing and the need for compensatory mechanisms.

The respondents countered that the appellants' claims were barred by res judicata, as similar reliefs were sought and dismissed in WPA No. 1963 of 2022, its appeal, and the subsequent review application. They argued that Sections 11A(7) and 53 operate in distinct domains: the former provides interim rights during the pre-grant phase, while the latter governs the patent term post-grant. The respondents emphasized that the proviso to Section 11A(7) explicitly bars infringement suits until the patent is granted, aligning with the statutory scheme and the TRIPS Agreement. They further contended that the appellants failed to demonstrate any constitutional infirmity in Section 53 or specific prejudice caused by the delay, noting that the patent term was extended to 20 years under the 2005 amendment, enhancing patentee rights. The respondents dismissed the appellants' reliance on the cited judgments, arguing their inapplicability due to differing factual contexts.

Detailed Discussion on Judgments Cited by Parties and Their Context

The appellants relied on three Delhi High Court judgments to support their arguments, but the court found them inapplicable due to distinct factual and legal contexts. In Ferid Allani v. Union of India (W.P.(C) 7/2014, decided on December 12, 2019), the petitioner challenged the refusal of a patent application on grounds of lack of novelty and patentability. The Delhi High Court remanded the matter for re-examination, emphasizing the need for a fair assessment of inventive steps. The Calcutta High Court noted that this case dealt with patent refusal, not the validity of Section 53 or delays in grant, rendering it irrelevant to the appellants' challenge. In Proctor and Gamble Company v. Controller of Patents and Designs (decided on December 8, year not fully specified in the document), the patent was refused for lack of an inventive step after a four-year delay, prompting the court to remand the matter for reconsideration. The court observed that the legislative intent was to avoid delays, but no specific time limit was prescribed. The Calcutta High Court distinguished this case, as it addressed procedural delays in refusal, not the constitutional validity of the patent term provision. In Nitto Denko Corporation v. Union of India (W.P.(C) 3742/2013, report dated February 27, 2014), the Delhi High Court constituted a committee to examine expedited patent examination and compensatory mechanisms, such as waiving maintenance fees for delayed periods. The committee, in its 2015 report, rejected patent term extensions akin to the U.S. Patent Term Adjustment, citing India’s competitive market and rapid technological obsolescence. The Calcutta High Court noted that no court directive followed the committee’s report, and the issue of term extension remained a legislative prerogative, not a judicial one.

Detailed Reasoning and Analysis of Judge

The court meticulously analyzed the appellants’ challenge to Section 53’s constitutional validity. The court began by clarifying the distinct roles of Sections 11A(7) and 53. Section 11A(7), inserted by the Patents (Amendment) Act, 2005, grants provisional rights to applicants from the publication date until the patent is granted, but explicitly prohibits infringement proceedings during this period. This provision, the court reasoned, balances the applicant’s interim protection with the statutory requirement that full patent rights crystallize only upon grant. Section 53, falling under Chapter VIII of the Act, governs the patent term, stipulating a 20-year duration from the application date, subject to renewal fee payments. The court rejected the appellants’ argument that these provisions were contradictory, emphasizing that they operate in separate phases of the patent process: Section 11A(7) addresses pre-grant rights, while Section 53 defines post-grant tenure.

The court further addressed the appellants’ claim of double jeopardy under Article 22, which protects against repeated criminal prosecutions. The court found this argument misplaced, as patent renewal fees are civil obligations, not criminal penalties, and the delay in granting the patent did not constitute a constitutional violation. The appellants’ failure to promptly challenge the delay post-grant (in 2012) or demonstrate specific prejudice, such as infringement during the pre-grant period, weakened their case. The court also dismissed the res judicata objection, noting that the Single Bench had granted liberty to challenge Section 53’s vires, thereby preserving the appellants’ right to raise this issue.

Drawing on the TRIPS Agreement, the court noted that the 20-year patent term, extended from 14 years by the 2005 amendment, aligns with international standards and enhances patentee rights. The Single Bench’s observation that Section 11A(7) provides interim protection without prematurely granting full rights was upheld as legally sound. The court also considered the appellants’ reference to the U.S. Patent Term Adjustment (PTA) model, which compensates for delays in patent processing. Citing the Nitto Denko committee’s findings, the court noted that India’s patent regime prioritizes competitive markets and rapid technological turnover, rendering PTA unsuitable. The court underscored that legislative policy, such as amending Section 53, lies beyond judicial purview under Article 226, as courts interpret laws, not enact them.

Final Decision

The Division Bench dismissed the appeal on April 22, 2025, affirming the Single Bench’s judgment that Section 53 of the Patents Act, 1970, is intra vires the Constitution. The court found no merit in the appellants’ challenge, holding that Sections 11A(7) and 53 operate in distinct domains and do not conflict. No costs were awarded, and the court directed an urgent certified copy of the judgment to be supplied to the appellants.

Law Settled in This Case

This case reinforces the constitutional validity of Section 53 of the Patents Act, 1970, clarifying that the 20-year patent term from the application date is consistent with the TRIPS Agreement and does not violate fundamental rights. It establishes that Section 11A(7) and Section 53 serve different purposes—interim protection versus post-grant tenure—and are not contradictory. The judgment underscores the judiciary’s limited role in legislative policy, affirming that courts cannot direct amendments to statutory provisions. Additionally, it highlights that delays in patent grants, while undesirable, do not automatically render statutory provisions unconstitutional absent specific prejudice or infringement. The case also distinguishes India’s patent regime from models like the U.S. PTA, emphasizing India’s unique economic and technological context.

Case Title: Gunjan Sinha (a) Kanishk Sinha Vs. Union of India

Date of Order: April 22, 2025

Case No.: MAT 903 of 2024

Name of Court: High Court at Calcutta

Name of Hon'ble Judges: Chief Justice T.S. Sivagnanam and Justice Chaitali Chatterjee Das

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], High Court of Delhi

AstraZeneca AB Vs. Intas Pharmaceuticals Limited

Species patents following a Markush patent must demonstrate a distinct inventive step

Introduction

The AstraZeneca AB & Anr. Vs. Intas Pharmaceuticals Limited case, decided on July 20, 2021, by the High Court of Delhi, represents a pivotal moment in Indian patent jurisprudence, particularly in the pharmaceutical sector. This dispute centered on the validity and infringement of patents covering Dapagliflozin (DAPA), a critical drug for managing type-II diabetes mellitus. AstraZeneca, a global pharmaceutical leader, sought to protect its intellectual property rights against multiple Indian generic drug manufacturers, including Intas Pharmaceuticals, Alkem Laboratories, and others. At the heart of the case was the interplay between two patents—a genus patent (IN 147) employing a Markush structure and a species patent (IN 625)—and whether DAPA was disclosed in the earlier patent, thereby challenging the validity of the later patent and AstraZeneca’s claim for interim injunctive relief. This case study provides an in-depth exploration of the factual and procedural background, the legal issues, the role of Markush patents, the submissions of the parties, the judicial reasoning, and the broader implications for patent law in India.

Detailed Factual Background

AstraZeneca AB, a Swedish entity, and its Indian subsidiary, AstraZeneca Pharma India Ltd., held two Indian patents: Indian Patent No. 205147 (IN 147), a genus patent granted on March 15, 2007, with an expiry date of October 2, 2020, and Indian Patent No. 235625 (IN 625), a species patent granted on July 9, 2009, with an expiry date of May 15, 2023. Both patents were originally granted to Bristol Myers Squibb Company and assigned to AstraZeneca AB via an Assignment Deed dated February 1, 2014. IN 147 was characterized as a Markush patent, covering a broad class of C-aryl glucosides that inhibit sodium-dependent glucose transporters (SGLT2), used to treat type-II diabetes and related conditions. This patent disclosed a Markush structure, a chemical formula representing a group of related compounds with permutations potentially encompassing millions of structurally diverse molecules, though only 80 compounds were specifically exemplified. IN 625, conversely, specifically claimed DAPA, a single molecule identified as a highly effective SGLT2 inhibitor.

AstraZeneca alleged that several Indian pharmaceutical companies, including Intas Pharmaceuticals, Alkem Laboratories, Zydus Healthcare, Eris Lifesciences, USV Pvt. Ltd., Torrent Pharmaceuticals, MSN Laboratories, Micro Labs, and Ajanta Pharma, were manufacturing and selling generic DAPA-based drugs, infringing both IN 147 and IN 625. The plaintiffs argued that while DAPA fell within the scope of IN 147’s Markush structure, it was not disclosed therein and was only specifically disclosed in IN 625, resulting from further research. They claimed DAPA was a novel, non-obvious invention, with IN 625 enjoying a presumption of validity, having been granted in over 70 countries and unchallenged in India until 2020.

The defendants countered that DAPA was disclosed in IN 147, rendering IN 625 invalid due to prior claiming, anticipation, and lack of inventive step. They highlighted AstraZeneca’s admissions in US proceedings, including before the US Patent and Trademark Office (USPTO) and in a Delaware lawsuit, where the company acknowledged DAPA’s coverage under the patent equivalent to IN 147. The defendants also alleged that AstraZeneca violated Section 8 of the Patents Act, 1970, by failing to disclose USPTO examination details and argued that the significant price difference between their generics and AstraZeneca’s branded drug justified denying interim relief in the public interest.

Understanding Markush Patents

A Markush patent, named after Eugene A. Markush, who pioneered this claim structure in the 1920s, is a specialized form of patent claim used primarily in chemistry and pharmaceuticals to cover a genus of compounds. The term originates from the US case Ex parte Markush, 1925 CD 126 (Com.Pat. 1924), where Assistant Commissioner Kinnan approved a claim format that enumerated alternative species within a genus, allowing a patent drafter to condense multiple dependent claims into a single claim. The court in the present case referenced In Re: Harnisch, 631 F.2d 716 (US Court of Customs and Patent Appeals, 1980), which clarified that a Markush claim is a type of definition by enumeration, not a novel invention but a drafting technique to broadly claim a group of related chemical compounds.

In a Markush claim, a general chemical structure is defined with variable substituents (e.g., “R” groups) that can be selected from a specified list, such as alkyls, halogens, or other functional groups. For example, a claim might state: “A compound of formula X, wherein R1 is selected from methyl, ethyl, or propyl, and R2 is selected from chlorine or bromine.” This structure allows the patentee to claim a vast number of compounds without listing each one, covering permutations that may run into millions, as in IN 147. The Harnisch case emphasized that Markush claims are not inherently “alternative” but are a legitimate way to claim a genus, provided the specification enables a person skilled in the art to practice the invention across the claimed scope.

In the context of Indian patent law, Markush claims are permissible under Section 10(5) of the Patents Act, 1970, which allows claims to relate to a single invention or a group of inventions linked by a single inventive concept. The court noted that IN 147’s Markush structure disclosed a core structure with multiple variables, exemplified by 80 compounds, but did not specifically name DAPA. AstraZeneca argued that this broad coverage did not constitute disclosure, as DAPA required further research to identify. The defendants, however, contended that coverage implied disclosure, particularly given AstraZeneca’s infringement claims for IN 147, relying on Novartis AG v. Union of India, (2013) 6 SCC 1, which suggested that compounds covered by a genus patent are known therefrom.

The significance of Markush patents in this case lies in their dual role: they enable broad protection for a class of compounds, potentially blocking competitors, but also pose challenges in establishing novelty and non-obviousness for subsequent species patents like IN 625. The court grappled with whether IN 147’s Markush claim disclosed DAPA sufficiently to invalidate IN 625 or whether DAPA’s specific disclosure in IN 625 constituted a distinct inventive step.

Detailed Procedural Background

AstraZeneca filed multiple suits in the High Court of Delhi under the Commercial Courts Act, 2015, seeking permanent injunctions to restrain the defendants from manufacturing and selling DAPA-based drugs. These suits included applications for interim injunctions. The suits were bifurcated into two sets: the first, against Intas Pharmaceuticals (CS(COMM) No.410/2020) and Alkem Laboratories (CS(COMM) No.411/2020), culminated in a common order on November 2, 2020, denying interim relief. The second set, against Torrent Pharmaceuticals, Micro Labs, Zydus Healthcare, Eris Lifesciences, USV Pvt. Ltd., MSN Laboratories, and Ajanta Pharma, resulted in a common order on November 18, 2020, also denying interim relief.

AstraZeneca appealed these orders, filing nine appeals under Section 13(1A) of the Commercial Courts Act, 2015, read with Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908. The appeals, numbered FAO(OS)(COMM) 139/2020 to 161/2020, included applications for additional documents, stay, and interventions by third parties such as Natco Pharma and Shiv Shivam Pharma. The Division Bench, comprising Justice Rajiv Sahai Endlaw and Justice Amit Bansal, heard the appeals collectively via video conferencing from February 25, 2021, to May 28, 2021, reserving judgment on May 28, 2021, and delivering the final decision on July 20, 2021.

Issues Involved in the Case

The case raised several critical legal issues:

1. Disclosure of DAPA in IN 147’s Markush Structure: Whether DAPA, covered by IN 147’s Markush claim, was disclosed therein, either in law or fact, and whether such disclosure invalidated IN 625?
2. Validity of IN 625: Whether IN 625 was vulnerable to challenge on grounds of prior claiming, anticipation, lack of inventive step, or non-compliance with Section 8 of the Patents Act, 1970?
3. Infringement of Dual Patents: Whether the defendants’ manufacture and sale of DAPA infringed both IN 147 and IN 625, given AstraZeneca’s claim of infringement for both patents?
4. Entitlement to Interim Injunction: Whether AstraZeneca established a prima facie case, balance of convenience, and irreparable loss to warrant interim injunctive relief, considering the defendants’ credible challenge to IN 625’s validity?
5. Public Interest and Pricing: Whether the significant price difference between AstraZeneca’s branded drug and the defendants’ generics, coupled with the public health context of the COVID-19 pandemic, justified denying interim relief?

AstraZeneca’s Submissions

AstraZeneca argued that IN 147’s Markush structure, while covering DAPA within its broad scope, did not disclose it specifically. They emphasized that IN 147, granted in 2007 with a priority date of August 12, 1999, disclosed a core structure with millions of possible compounds, exemplified by 80 compounds, none of which were DAPA. DAPA was invented in 2001 and patented in IN 625, granted in 2009 with a priority date of May 20, 2002, following further research to identify the optimal SGLT2 inhibitor. AstraZeneca contended that DAPA was not obvious from IN 147, as the Markush structure provided no guidance on selecting DAPA, and any derivation relied on hindsight, which is impermissible under patent law (F. Hoffman-La Roche v. Cipla Ltd., 2015 (225) DLT 391).

The plaintiffs asserted that IN 625 enjoyed a presumption of validity, having been rigorously examined by the Indian Patent Office and granted in over 70 countries. They argued that the defendants’ 2020 challenges to IN 625 were mala fide, initiated as a counterblast to the infringement suits. On Section 8 compliance, AstraZeneca claimed they disclosed the US patent equivalent to IN 625 as a continuation-in-part of the US patent equivalent to IN 147, and the USPTO’s objection on obviousness-type double patenting was irrelevant, as it did not affect the Indian Patent Office’s assessment. They further argued that the balance of convenience favored them, as denial of interim relief would erode their market share and research investment, while the price difference (approximately Rs.1,100/month) was justified given their R&D costs.

Defendants’ Submissions

The defendants argued that DAPA was disclosed in IN 147’s Markush structure, as evidenced by AstraZeneca’s admissions in US proceedings. They noted that AstraZeneca agreed to align the validity period of the US patent equivalent to IN 625 with that of IN 147 before the USPTO and claimed infringement of the IN 147 equivalent in a Delaware lawsuit against Zydus Pharmaceuticals USA. Citing Novartis AG v. Union of India, (2013) 6 SCC 1, they argued that coverage in a genus patent implies disclosure, rendering IN 625 invalid for prior claiming and anticipation. They further contended that DAPA was obvious from IN 147’s example 12, which disclosed a methoxy-substituted compound close to DAPA’s ethoxy-substituted structure, as a skilled person could make the substitution (F. Hoffman-La Roche v. Cipla Ltd.).

The defendants alleged non-compliance with Section 8, claiming AstraZeneca concealed USPTO objections and their response, which admitted DAPA’s disclosure in the IN 147 equivalent. On interim relief, they argued that their credible challenge to IN 625’s validity precluded an injunction. They emphasized the balance of convenience, noting their domestic manufacturing versus AstraZeneca’s imports, and the public interest, given their generics’ lower prices (Rs.13.90–17.50 vs. Rs.54.40–57.29 per dose). They highlighted the need for affordable diabetes drugs during the COVID-19 pandemic, where diabetic patients faced heightened risks.

Detailed Discussion on Judgments Cited

The parties and the court referenced several judgments, each providing context to the Markush patent and other issues:

1. Novartis AG v. Union of India, (2013) 6 SCC 1: The defendants relied on this case to argue that there is no dichotomy between coverage and disclosure in a genus patent like IN 147’s Markush claim, suggesting DAPA’s coverage implied its disclosure. The Supreme Court in Novartis held that molecules covered by a genus patent are known therefrom, rejecting a strict separation of coverage and disclosure. However, the court in the present case noted that Novartis recognized a factual distinction, requiring case-specific analysis to determine whether IN 625’s specific disclosure of DAPA was distinct from IN 147’s Markush coverage.
2. F. Hoffman-La Roche v. Cipla Ltd., 2015 (225) DLT 391: Cited by the defendants to support their obviousness argument, this case held that prior art, even with multiple starting points, can suggest modifications to a skilled person. The court applied this to assess whether DAPA’s ethoxy substitution was obvious from IN 147’s methoxy-substituted example 12, impacting IN 625’s validity.
3. Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727: Referenced by the court to define the appellate review standard for interim injunctions, requiring perversity to warrant interference. The court used this to uphold both impugned orders denying relief, finding no perversity despite differing reasoning.
4. AZ Tech (India) v. Intex Technologies (India) Limited, Civil Appeal No.18892/2017 (Supreme Court, August 16, 2017): Cited by the court to critique exhaustive interim relief orders in IP cases, advocating for brevity. The court adhered to this by limiting its analysis and avoiding detailed discussion of all cited judgments.
5. In Re: Harnisch, 631 F.2d 716 (US Court of Customs and Patent Appeals, 1980): Referred to by the court to define Markush claims, explaining their origin as a drafting technique to enumerate species within a genus. This clarified IN 147’s structure as a Markush patent but did not resolve whether DAPA was disclosed, as the court focused on AstraZeneca’s admissions.
6. Ex parte Markush, 1925 CD 126 (Com.Pat. 1924): Implicitly referenced through Harnisch, this US decision established the legitimacy of Markush claims, allowing broad genus claims in chemistry. It provided historical context for IN 147’s claim structure, supporting its legal permissibility under Indian law (Section 10(5)).
7. FMC Corporation v. Best Crop Science LLP, CS(COMM) No.69/2021 and CS(COMM) No.661/2019 (Delhi High Court, July 7, 2021): Mentioned by AstraZeneca post-hearing to bolster their interim relief claim. The court distinguished it, as it involved a single patent, unlike the dual-patent claim involving a Markush structure in the present case.

Detailed Reasoning and Analysis of Judge

The Division Bench delivered a meticulous judgment, with the Markush patent issue at its core. The court framed the central question as whether DAPA, covered by IN 147’s Markush claim, was disclosed therein, impacting IN 625’s validity and AstraZeneca’s interim relief claim.

The court questioned AstraZeneca’s assertion of infringement for both IN 147 and IN 625, noting that claiming infringement of IN 147 implied DAPA’s disclosure therein, as infringement requires the infringing act to fall within the patent’s scope (Section 48). If DAPA was not disclosed in IN 147, no infringement could occur, undermining AstraZeneca’s dual-patent claim. The court emphasized that the Patents Act, 1970, limits a single invention to one patent with a 20-year term (Sections 2(j), 2(ja), 2(l), 3, 48). The identical field of invention descriptions in IN 147 and IN 625 suggested no technical advancement or economic significance in IN 625, raising doubts about its novelty and inventive step.

Regarding the Markush structure, the court acknowledged IN 147’s broad claim, covering millions of compounds but exemplifying only 80, none explicitly naming DAPA. Citing In Re: Harnisch, the court recognized Markush claims as a legitimate way to claim a genus under Section 10(5), allowing a group of inventions linked by a single inventive concept. However, AstraZeneca’s pleadings admitted DAPA’s coverage in IN 147, and their US actions—agreeing to align the US patent equivalent to IN 625’s term with IN 147’s and claiming infringement of IN 147’s equivalent—reinforced this admission. The court held that claiming infringement of IN 147’s Markush claim meant DAPA was disclosed therein, as coverage and disclosure are intertwined in infringement actions, aligning with Novartis’s broader interpretation but applying it factually to AstraZeneca’s admissions.

On obviousness, the court considered the defendants’ argument that IN 147’s example 12, disclosing a methoxy-substituted compound, was closeK close to DAPA’s ethoxy-substituted structure. The court found that a skilled person could substitute methoxy with ethoxy, both being lower alkyls, suggesting DAPA’s obviousness (F. Hoffman-La Roche). This rendered IN 625 vulnerable, as the Markush structure’s breadth did not negate the suggestive nature of its prior art.

The court also found AstraZeneca’s non-compliance with Section 8(2) of the Patents Act—failing to disclose USPTO objections and their response admitting DAPA’s disclosure in IN 147’s equivalent—further weakened IN 625’s validity. This non-disclosure was significant, as it could have influenced the Indian Patent Office’s assessment.

For interim relief, the court applied the triadic test: prima facie case, balance of convenience, and irreparable loss. AstraZeneca failed to establish a prima facie case due to IN 625’s vulnerability and their admissions regarding IN 147’s Markush claim. The balance of convenience favored the defendants, whose generics were 250–350% cheaper, serving public interest during the COVID-19 pandemic. The court noted that AstraZeneca could be compensated monetarily if they succeeded at trial, whereas injuncting the defendants would harm their market and public access to affordable drugs.

The court dismissed AstraZeneca’s arguments about IN 625’s long-standing validity (18 years) and global grants, as the Patents Act allows challenges at any stage (Section 13(4)). The differing reasoning in the two impugned orders did not warrant relief, as both denied injunctions without perversity (Wander Ltd.).

Final Decision

The High Court of Delhi dismissed all nine appeals, upholding the lower courts’ orders denying interim injunctions. The court imposed costs of Rs.5,00,000 on AstraZeneca for each suit, payable to the defendants, reflecting the appeals’ lack of merit and the judicial resources wasted by AstraZeneca’s parallel litigation strategy.

Law Settled in This Case

This case clarified several aspects of Indian patent law, particularly regarding Markush patents:

1. Single Invention, Single Patent: A single invention like DAPA cannot be protected by multiple patents with successive terms, as this violates the 20-year patent term limit (Sections 2(j), 48).
2. Markush Claims and Disclosure: Claiming infringement of a Markush patent implies disclosure of the invention therein, impacting subsequent species patents’ validity. Markush claims must fully disclose the claimed invention to support infringement actions (Sections 10, 25).
3. Inventive Step in Species Patents: Species patents following a Markush patent must demonstrate a distinct inventive step, such as technical advancement or economic significance, to avoid invalidation for obviousness or prior claiming (Section 2(ja)).
4. Section 8 Compliance: Non-disclosure of foreign patent examination details, especially objections, can render a patent vulnerable, even at the interim stage (Section 8(2)).
5. Interim Injunctions: A credible challenge to patent validity, combined with public interest factors like drug affordability, can preclude interim relief, with monetary compensation sufficing if the patentee prevails at trial.

Case Title: AstraZeneca AB & Anr. Vs. Intas Pharmaceuticals Limited

Date of Order: July 20, 2021

Case No.: FAO(OS)(COMM) 139/2020

Name of Court: High Court of Delhi 

Name of Hon'ble Judges: Justice Rajiv Sahai Endlaw and Justice Amit Bansal

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], High Court of Delhi

Vijay Kumar Salwani Vs. Union of India

Background

The petitioner, Vijay Kumar Salwani trading as M/s Modern Namkeen Bhandar, challenged the removal of his registered Trade Mark No. 641088 on the ground that no mandatory notice under Section 25(3) of the Trade Marks Act, 1999 was issued before the removal.

Government's Response

The Union of India admitted that while a notice was claimed to have been issued, the department had no available record to prove that the notice was actually sent.

Court's Observations

The Court held that issuing a notice under Section 25(3) is mandatory before removal of a trademark. Without proof of dispatch, the removal could not be sustained.

Judgment

The Court set aside the removal of the petitioner’s trademark and ordered its restoration. It allowed the Trade Marks Registry to issue a fresh notice and gave liberty to the petitioner to file for renewal. Further, the Court directed the Registry to process such renewal applications without technical objections in similar cases where no record of notice existed.

Case title: Vijay Kumar Salwani Vs. Union of India

Date of order: 28 May 2019

Case No.: W.P.(C) 9270/2015 

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Mr. Justice J.R. Midha

L’Oréal S.A. Vs. Registrar of Trademarks

Background

L'Oréal S.A. filed an appeal under Section 91(1) of the Trade Marks Act, 1999, challenging the order dated 24 September 2019, whereby the registration of its trademark "GARNIER SKIN NATURALS" (Registration No. 1021740) in Class 3 was removed. The trademark had been in use since 2001 and was initially registered to Laboratoire Garnier Et Cie, which later merged with L'Oréal. The appellant filed for a change in ownership in 2012, which was duly recorded.

Discovery of Removal

In 2017, during a random website check, L'Oréal discovered that the subject mark was slated for removal due to non-renewal. They promptly filed an interlocutory petition for renewal and restoration on 5 January 2018. Despite this, the trademark was removed without allowing L'Oréal to pay the renewal fee.

Arguments

L'Oréal contended that they had not received the mandatory renewal notice under Section 25(3) of the Act, which was a precondition before removal. In defense, the Registrar of Trademarks produced a copy of the notice dated 6 April 2011 but failed to provide proof of its dispatch. L'Oréal consistently denied receiving any such notice.

Court's Findings

The Court observed that mere production of the notice without proof of dispatch could not suffice. Since L'Oréal filed the interlocutory petition before the actual removal and asserted non-receipt of notice, the removal of the mark was found unjustified.

Conclusion and Directions

The Court set aside the impugned removal order, directed restoration and renewal of the trademark, and instructed L'Oréal to deposit the renewal fee within two weeks.

Case title: L’Oréal S.A. Vs. Registrar of Trademarks

Date of order: 9 December 2022

Case No.: C.A.(COMM.IPD-TM) 30/2021

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Mr. Justice Sanjeev Narula

Modern Snacks Pvt. Ltd. Vs. Kamran Ghani

Introduction

Modern Snacks Pvt. Ltd. filed a petition seeking rectification of the Trademark Register by cancelling the registration of the mark ‘MARDEM’ registered by Kamran Ghani in Class 30. The petitioner argued that ‘MARDEM’ was deceptively similar to their earlier and widely used trademark ‘MODERN’, also registered for similar goods like snacks and confectionery.

Background

The petitioner is engaged in the manufacturing and marketing of namkeens, snacks, and other food items under the mark ‘MODERN’, which was originally adopted in 1990 by their predecessor. They presented evidence of multiple registrations, domain names, significant sales figures, and wide recognition of the ‘MODERN’ mark.

Proceedings

Despite attempts, respondent Kamran Ghani was not personally served, but service was deemed complete through his authorized attorney. Respondent No. 1 did not appear, and thus the petitioner's allegations remained uncontroverted.

Court’s Observations

The Court noted the phonetic and visual similarity between ‘MODERN’ and ‘MARDEM’, and that both marks covered identical goods in the same class and geographical market. It was held that such similarity could cause confusion among average consumers. The Court referred to precedents stating that even minor variations in trademarks are immaterial when the resemblance is substantial enough to deceive.

Decision

The Court found that the petitioner was the prior adopter and user of the ‘MODERN’ mark. The respondent’s mark ‘MARDEM’ was deceptively similar and likely to cause confusion. Thus, the registration of ‘MARDEM’ was cancelled, and rectification of the Trademark Register was ordered.

Case Title: Modern Snacks Pvt. Ltd. Vs. Kamran Ghani and Anr.

Date of Order: 25 April 2025

Case No.: C.O. (COMM.IPD-TM) 76/2021

Neutral Citation: 2025:DHC:2905

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Vineet Kapur Vs Registrar of Trade Marks

Introduction

The case involves an appeal filed by Vineet Kapur under Section 91 of the Trade Marks Act, 1999, and Rule 156 of the Trade Marks Rules, 2017, challenging the rejection of his trademark application for the mark ‘2929’ in Class 3 (cosmetics, soaps, shampoos, etc.) by the Registrar of Trademarks.

Appellant’s Arguments

The appellant contended that ‘2929’ was a unique, arbitrary, and inherently distinctive mark, not known or used in the market for the relevant goods. He emphasized that numerical marks are recognized under Section 2(1)(m) of the Trade Marks Act and that similar numerical marks had previously been registered and protected by courts.

Respondent’s Arguments

The Registrar opposed the application on the grounds that the mark was merely a combination of common numbers without any inherent creativity or distinctive character. It was argued that such marks are generally not capable of distinguishing goods and thus should not be registered.

Court’s Observations

The Court reiterated that numerals and their combinations are included within the definition of ‘mark’ under the Trade Marks Act and can be registered if they possess distinctive character. It referred to multiple precedents where numerical marks like '501', '345', '22', '1001', '555', '7 O’Clock', and '91' were granted protection.

The Court found that the mark ‘2929’ was coined and arbitrary, bearing no connection to the nature of the goods. It held that a numeral combination inherently distinctive and unrelated to the goods’ description is eligible for trademark registration even without secondary meaning.

Decision

The Court set aside the Registrar's order dated 29 February 2024, directed that the appellant's application proceed to advertisement in the Trademark Journal, and clarified that the appellant would not claim exclusive rights over the numerals ‘2’ and ‘9’. It also directed the Registrar to notify the Office of the Controller General of Patents, Designs and Trade Marks for compliance.

Case Title: Vineet Kapur Vs Registrar of Trade Marks

Date of Order: 25 April 2025

Case No.: C.A.(COMM.IPD-TM) 22/2024

Neutral Citation:2025:DHC:2906

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

R J Reynolds Tobacco Company Vs The Controller General of Patents

Background

R J Reynolds Tobacco Company filed an Indian patent application concerning a method for preparing a sugar-containing syrup from the stalk of a Nicotiana (tobacco) plant. Despite protracted prosecution and the grant of similar patents internationally, the Indian Patent Office refused the application on 19 September 2019 under Section 3(b) of the Patents Act, 1970, which bars patents for inventions whose use could harm human, animal or plant life, health, or the environment.

Grievances of the Appellant

The appellant argued that the refusal was arbitrary and lacked proper reasoning. They contended that 17 of the 18 pages of the rejection order merely copied the appellant's submissions without analysis. No consideration was given to the scientific data or comparative international patent grants presented by the appellant. The rejection was solely based on the generalized belief that tobacco is harmful, without specific evidence showing that the patented process itself caused serious health prejudice.

Contentions of the Respondent

Despite directions, the Controller General of Patents failed to submit any defense or clarifications. The refusal order thus remained unsubstantiated.

Court’s Observations

The Court noted that Section 3(b) is aimed at preventing patents that violate public order, morality, or health but emphasized that subjective and blanket assumptions without specific evidence are not sufficient grounds for rejection. The Controller’s order lacked independent reasoning, critical analysis, or evaluation of the appellant’s scientific material. The rejection reflected a prejudged stance rather than an informed decision based on the specific facts of the invention.

Court’s Decision

The Court set aside the impugned refusal order and remanded the matter back to the Controller for fresh consideration within four months, explicitly stating that no merits of the application had yet been adjudicated.

Case Title: R J Reynolds Tobacco Company Vs The Controller General of Patents, Designs and Trademarks 

Date of Order: 16 April 2025

Case No.: IPDPTA/31/2023

Name of Court: High Court at Calcutta

Name of Judge: Hon'ble Justice Ravi Krishan Kapur

Fresenius Medical Care Deutschland GmbH Vs. Controller General of Patents

Background and Rejection of Patent Application

Fresenius Medical Care Deutschland GmbH filed a patent application in India (No. 7493/DELNP/2012) concerning pharmaceutical compositions involving microvesicles (MVs) derived from adult stem cells for treating tumor diseases. The application was initially rejected by the Controller of Patents in February 2020 on multiple grounds, including lack of novelty and inventive step, insufficient disclosure, and non-patentability under Sections 3(e) and 3(i) of the Patents Act, 1970.

Filing of Appeal and Proposed Amendments

The appellant challenged this decision before the IPAB, and the matter was later transferred to the Delhi High Court following IPAB's abolition. The appellant submitted amended claims during the appellate proceedings, clarifying the inventive elements, including specific dosage and use of cytotoxic agents like doxorubicin or vincristine. These amendments aimed to overcome the original objections.

Court’s Analysis and Ruling on Amendments

The Court held that such amendments were permissible under Section 59 of the Patents Act as they served as clarifications and did not expand the original claim’s scope. Drawing from precedents such as Nestlé SA and Opentv Inc., the Court confirmed that appellate bodies could direct or accept amendments provided they meet statutory requirements.

Remand to Patent Office

Finding the amended claims to be within legal limits, the Court allowed them to be taken on record and remanded the matter back to the Patent Office for re-examination. The earlier rejection order was set aside, and the Patent Office was directed to decide afresh within three months.

Case title: Fresenius Medical Care Deutschland GmbH Vs. Controller General of Patents, Designs and Trademarks & Anr.

Date of order: 16th April, 2025

Case No.: C.A.(COMM.IPD-PAT) 302/2022

Neutral Citation:2025:DHC:2778

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

FDC Limited Vs. Palsons Derma Private Limited

Background of the Dispute

FDC Limited, a well-established pharmaceutical company, filed a suit against Palsons Derma Pvt. Ltd., seeking to restrain the latter from using the mark "CHROMALITE" for cosmetic and skin brightening products, alleging it was deceptively similar to its own mark "KROMALITE", which had been in commercial use since 2016.

Claims of the Plaintiff

FDC claimed prior use and significant market presence of the "KROMALITE" mark in India, supported by registration in Class 5 and substantial sales. The mark, being a coined term with no prior industry use, had acquired distinctiveness. The plaintiff alleged that the defendant’s mark was phonetically and visually similar and adopted with dishonest intent to ride on their goodwill.

Defense by the Defendant

Palsons Derma argued that it independently adopted "CHROMALITE" in 2016 and began its use in 2022 after public demand to abandon its previous mark "FAIRLITE". It asserted that their mark was derived from the Greek word “Chroma” and denied knowledge of the plaintiff’s mark. The defendant contended that both parties’ marks coexisted on the trademark register and were distinguishable by packaging and target audience.

Court’s Findings

The Court held that the plaintiff was a prior user of the mark and had established goodwill and reputation through consistent use and sales. It found the two marks deceptively similar in sound and structure, with overlapping goods and trade channels, leading to a high likelihood of consumer confusion. The defendant’s argument of innocent adoption was rejected as irrelevant in a passing-off claim.

Legal Basis and Order

Relying on precedents including Syed Mohideen v. Sulochana Bai, the Court reiterated that rights of a prior user trump trademark registration in passing-off actions. The Court ruled in favor of the plaintiff, issuing an injunction restraining the defendant from using "CHROMALITE" or any deceptively similar mark during the pendency of the suit.

Case title: FDC Limited Vs. Palsons Derma Private Limited

Date of order: 15th April, 2025

Case No.: CS(COMM) 487/2023

Neutral Citation: 2025:DHC:2576

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Epifi Technologies Private Limited Vs Formula One Licensing

Dispute Over Non-Use of Trademark 'F1' in Class 36

Epifi Technologies Pvt. Ltd., a fintech startup offering digital banking and money management services under the brand name ‘FI MONEY’, filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999. The petition sought cancellation of the trademark ‘F1’ (No. 1988403 in Class 36) registered by Formula One Licensing BV, on the grounds of non-use and lack of bona fide intention to use.

The petitioner argued that their brand 'FI MONEY', adopted in 2021 and promoted extensively across India, faced hurdles in trademark registration due to opposition by the respondent, who relied on the 'F1' mark registered in 2010 on a 'proposed to be used' basis. The petitioner contended that in over 13 years, the respondent neither used the mark in relation to financial services in India nor obtained required regulatory approvals.

Despite settlement discussions, the respondent did not pursue the matter, failed to appear in court, and withdrew their opposition to Epifi’s trademark. The court held that, due to lack of denial from the respondent and no evidence of use, the ‘F1’ mark stood unused and blocked legitimate trademark registration. Citing precedent and Sections 47(1)(a) and (b) of the Act, the court directed removal of the impugned mark from the Trade Marks Register.

Case title: Epifi Technologies Private Limited Vs Formula One Licensing

Date of order: 15th April, 2025

Case No.: C.O. (COMM.IPD-TM) 20/2024

Neutral Citation: 2025:DHC:2874

Name of Court: High Court of Delhi 

Name of Judge: Hon’ble Mr. Justice Amit Bansal