FMC Corporation & Ors. Vs Natco Pharma Limited

FMC Corporation & Ors. Vs Natco Pharma Limited, order dated 05.12.2022, case number FAO(OS) (COMM) 301/2022, neutral citation 2022/DHC/005311, High Court of Delhi at New Delhi, Hon'ble Mr Justice Vibhu Bakhru and Hon'ble Mr Justice Amit Mahajan. 

The case revolves around a patent infringement dispute in the agrochemical sector where FMC Corporation, along with its subsidiaries FMC Agro Singapore Pte Ltd and FMC India Pvt Ltd, collectively engaged in producing and selling agrochemicals for crop enhancement and pest control, alleged that Natco Pharma Limited, a vertically integrated pharmaceutical company focused on developing, manufacturing, and marketing finished dosage formulations and active pharmaceutical ingredients, was infringing their process patent IN 298645 titled "Method for Preparing N-Phenylpyrazole-1-Carboxamides" for manufacturing Chlorantraniliprole (CTPR), an anthranilic diamide insecticide; the patent, originally granted to E.I. Du Pont De Nemours and Company on 09.07.2018 under Section 43 of the Patents Act, 1970, was assigned to FMC effective from 01.11.2017 via a confirmatory agreement dated 01.05.2018, with a filing date of 11.05.2007 in India, international application on 06.12.2005, and priority from 07.12.2004, expiring on 06.12.2025. 

Factually, FMC discovered Natco's synthesis of CTPR through an Environmental Management Plan document submitted by Natco to the Andhra Pradesh Pollution Control Board and Natco's own patent application PCT/IN2019/050321 claiming priority from Indian Application 201841015241, which disclosed a preparation method for CTPR that FMC claimed was equivalent to their patented process involving combining a pyrazole carboxylic acid (Formula 2), an aniline compound (Formula 3), and sulfonyl chloride to form CTPR, asserting infringement of claims 1, 5-8, and 11 based on the doctrine of equivalents since both processes relied on activating the pyrazole carboxylic acid to react with the aniline to produce CTPR, transforming the same reactants into the same product.

Procedurally, this was part of a broader litigation history where FMC had previously sued Natco in CS(COMM) 611/2019 for infringing patents IN 207307 and IN 213332 related to CTPR, and in CS(COMM) 167/2021 for IN 207307 and IN 215218, with IN 204978 (a Markush claim covering CTPR) expiring on 21.03.2021; in response to Natco's notice dated 27.04.2022 under Section 105 of the Patents Act asserting non-infringement of IN 645, FMC replied on 02.05.2022 seeking more details and promptly filed the infringement suit CS(COMM) 349/2022 on 03.05.2022, while Natco preemptively filed CS(COMM) 295/2022 for a declaration of non-infringement, with notice issued on 06.05.2022; the suit was listed on 23.05.2022 where Natco stated it would launch CTPR post-expiry of IN 307 and IN 332 on 13.08.2022 using a non-infringing process, leading FMC to seek an interim injunction under Order XXXIX Rules 1 and 2 via IA 8130/2022, which the Single Judge rejected on 19.09.2022, prompting this intra-court appeal. 

The core dispute centered on whether Natco's process, which used thionyl chloride to first convert the pyrazole carboxylic acid into an acid chloride before reacting it with the aniline in a two-step, two-reactor method yielding lower output but no toxic by-products, infringed FMC's single-step process using sulfonyl chloride as the activating reagent under the doctrine of equivalents, despite no literal infringement, as FMC argued the processes were substantially equivalent in function (stoichiometric activation of carboxylic acid), way (coupling intermediates), and result (CTPR production), while Natco contended the processes were distinct, with sulfonyl chloride forming a mixed anhydride versus thionyl chloride forming an acid chloride, and emphasized element-to-element comparison for process patents where monopoly is limited to the claimed method. 

The core reasons for the court's analysis stemmed from the need to interpret the scope of process patent claims under Sections 48 and 64 of the Patents Act, 1970, applying purposive construction as per Ravi Kamal Bali v Kala Tech, 2008 (110) Bom LR 1850, and considering the doctrine of equivalents from US precedents like Graver Tank & Mfg Co v Linde Air Products Co, 339 US 605 (1950), to prevent minor variations from defeating patent rights, but adapting it to Indian law where process patents protect only the method, not the product, and requiring a triple test of function-way-result while assessing essentiality of elements; to resolve technical complexities, the court appointed scientific advisors under Section 115 of the Patents Act—Dr Gopakumar Nair and Prof Bhalchandra Mahadeo Bhanage (replacing Dr Raghavan Soman)—on 29.07.2022 and 08.08.2022, with terms of reference from both parties addressing whether intermediates were prior art (e.g., in IN 215218, IN 284017, WO 518), differences between thionyl and sulfonyl chlorides (inorganic vs organic, physical/chemical properties), presence of methane sulfonic acid impurity in Natco's product, and if the processes were distinct or equivalent, with advisors concluding the intermediates were disclosed in prior art, thionyl chloride differed from sulfonyl chloride, no methane sulfonic acid impurity in Natco's dossier, the processes were distinct (Natco's two-step vs FMC's one-pot), sulfonyl chloride forms mixed anhydride while thionyl forms acid chloride not being a mixed anhydride, and Natco's process requires reacting acid with thionyl first then acid chloride with aniline, unlike FMC's simultaneous combination. 

In discussing the judgment, the Division Bench upheld the Single Judge's prima facie finding of no infringement, respecting the advisors' unchallenged opinions as per Martin F D'Souza v Mohd Ishfaq, (2009) 3 SCC 1, noting sulfonyl chloride's essentiality from the patent's description and claims where it was specified as the preferred reagent (e.g., methanesulfonyl chloride), and highlighting process differences: FMC's one-pot method mixes acid, aniline, and sulfonyl chloride simultaneously, while Natco's sequential two-reactor approach uses thionyl chloride for acid chloride formation without sulfonyl chloride, yielding different intermediates and by-products.

The court referred to international precedents like Kirin-Amgen Inc v Hoechst Marion Roussel Ltd, [2004] UKHL 46 (UK) emphasizing claim limits, Improver Corp v Remington Consumer Products Ltd, [1990] FSR 181 (UK) on variants, and US cases like Warner-Jenkinson Co v Hilton Davis Chemical Co, 520 US 17 (1997) on equivalents, but stressed in Indian context from Raj Parkash v Mangat Ram Chowdhry, AIR 1978 Del 1, that pith and marrow doctrine applies only to non-essential variations, finding thionyl chloride's substitution not trivial given chemical distinctions and sequence changes. 

Further citations included Avery Dennison Corp v Accutec Blades Inc, 45 F Supp 3d 1148 (CD Cal 2014) on process equivalents, and Indian cases like TVS Motor Co Ltd v Bajaj Auto Ltd, 2009 (40) PTC 689 (Mad) on triple test adaptation for processes, concluding Natco's method was not a subterfuge but a distinct alternative not falling within claim scope even under equivalents. 

The decision dismissed the appeal, confirming no interim injunction, allowing Natco to proceed with its process post-expiry of prior patents, with the suit to proceed on merits. 

The crucial legal principle settled is that for process patent infringement under the doctrine of equivalents in India, courts must conduct an element-to-element comparison to determine if substitutions are insubstantial, treating specified reagents like sulfonyl chloride as essential if integral to novelty and functionality, and limiting equivalents to prevent extension beyond claimed method, adapting the function-way-result test to emphasize sequence and intermediate differences in chemical processes, thereby balancing patentee rights against public interest in alternative innovations.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Maryam Bee Versus Shuibham Jain

The case titled Maryam Bee Versus Shuibham Jain and Others, bearing case number FAO(OS) (COMM) 199/2024, 2025:DHC: 7318 with the judgment pronounced on August 26, 2025, by the High Court of Delhi before Hon’ble Mr. Justice Anil Kshetrapal and Hon’ble Mr. Justice Harish Vaidyanathan Shankar, concerns an appeal challenging the order dated May 7, 2024, related to the impleadment of a third party in a suit for specific performance. 

The factual background involves Respondent Nos. 1 to 3 filing a suit for specific performance of an Agreement to Sell concerning a property in Chandni Chowk, New Delhi, which the Appellant allegedly failed to execute despite partial payment; the Appellant contended a different total sale consideration, and Respondent No. 4, the Appellant's brother-in-law, sought to be impleaded as a co-owner. 

The core dispute revolved around whether Respondent No. 4 could be added as a party in the suit for specific performance based on his claim of co-ownership, which the Appellant opposed, asserting that the suit should remain between the contracting parties only. 

The core reasons for the appeal were that a third party or stranger to the contract cannot be impleaded in a suit for specific performance merely to avoid multiplicity of suits or to expand the suit's scope into a title and possession suit, while Respondent No. 4 argued that his impleadment was necessary due to his claimed ownership interest and the potential for conflicting rulings if excluded. 

The court discussed the legal framework, referencing Order I Rule 10 of the Civil Procedure Code, emphasizing that only necessary or proper parties whose presence is essential for effectual adjudication should be impleaded, and relying on precedents like Kasturi vs. Iyyamperumal, which held that a suit for specific performance is contract-centric and cannot be turned into a title suit by involving third parties claiming independent interest. 

The decision was to allow the appeal, set aside the impugned order that impleaded Respondent No. 4 as a party, and leave him free to pursue his claim by way of an independent suit before a competent court. 

The crucial legal principle settled is that in suits for specific performance, only parties to the contract or their legal representatives should be impleaded, and third parties claiming independent title should not be added as it would enlarge the scope of the suit and convert it into a title suit, contrary to settled law.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

New Delhi Television Limited versus Ashok Kumar & Ors

The case is titled "New Delhi Television Limited versus Ashok Kumar & Ors." The order was dated August 20, 2025, and the case bears the number CS(COMM) 869/2025. The matter was heard in the High Court of Delhi, authored by Hon'ble Ms. Justice Manmeet Pritam Singh Arora. There is no specific neutral citation provided in the document.

The suit was filed by the plaintiff, New Delhi Television Limited (NDTV), a well-established and respected company in India’s news broadcasting and digital journalism sector since 1988. NDTV holds multiple trademark registrations for the mark "NDTV" and its variants and has been declared a well-known trademark by the Trade Marks Registry. The plaintiff claimed extensive goodwill and reputation associated with its brand due to long-term use, advertisements, and substantial revenue generation, including advertising revenue of over Rs. 282 crores in the financial year 2024-25.

The core dispute concerns the infringement of NDTV’s trademark rights and copyrights by the defendants. The plaintiff alleged that Defendant No. 1 (an unknown entity) and Defendant No. 2 were operating websites and social media platforms that unlawfully used the plaintiff’s registered trademark "NDTV" and similar variants without authorization. These impugned platforms included multiple domain names and channels on YouTube, Telegram groups, and social media handles on X (formerly Twitter) and Facebook, which the plaintiff claimed were deceptively similar or identical to its well-known mark. The defendants allegedly misrepresented an association with NDTV, causing potential confusion among the public. The plaintiff also accused the defendants of disseminating unverified and inaccurate news content under the plaintiff’s trademark, thereby harming its brand’s credibility and journalistic integrity. The plaintiff sought permanent injunction and damages for trademark infringement, passing off, copyright infringement, and unfair competition.

The court’s decision granted the plaintiff an ex-parte ad-interim injunction to restrain the defendants, particularly Defendant Nos. 1 and 2, from using the NDTV trademarks and any deceptively similar variations across various platforms, domains, social media, and business papers. The court directed several domain registrars and platform operators (Defendants Nos. 3 to 19) to lock, suspend, or remove the infringing websites, channels, and social media accounts within 48 hours of receiving the order and to disclose relevant subscriber information to the plaintiff within three weeks. The Department of Telecommunications and the Ministry of Electronics and Information Technology were also directed to issue notifications to ISPs and telecom providers to block access to the infringing websites. The court recognized the strong prima facie case made by the plaintiff, indicating that the defendants’ actions would cause irreparable harm that could not be compensated with monetary damages alone. The plaintiff was also given liberty to seek impleadment of any other similar infringing websites or accounts that may surface during the proceedings. The court clarified that non-infringing websites inadvertently affected by the order could seek modification of the injunction on providing suitable undertakings.

The legal principle settled in this case centers on the protection of well-known trademarks against unauthorized use, domain name infringement, and the liability of registrars and platform providers to act promptly in preventing trademark violations online. The case reinforces the enforcement of intellectual property rights in the digital ecosystem by allowing courts to grant interim injunctions that include blocking and suspending infringing digital assets and directing disclosure of subscriber information for enforcement. Additionally, the case highlights the significance of trademark rights in preserving journalistic integrity and preventing public deception through false associations in the media landscape.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Actavis UK Limited and others (Appellants) v Eli Lilly and Company

The case is Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent), decided by the United Kingdom Supreme Court on 12 July 2017, with the case number UKSC 48. The judgment was delivered by Lord Neuberger, President, with Lords Mance, Clarke, Sumption, and Hodge concurring.

The factual background involves pemetrexed, a chemical known for therapeutic effects on cancerous tumors but with significant toxic side effects when used alone. The patent in question, European Patent (UK) No 1 313 508, owned by Eli Lilly, disclosed that these side effects could be mitigated by administering pemetrexed disodium with vitamin B12, enabling a successful medicament marketed as Alimta since 2004. The patent claims focused on using pemetrexed disodium in medicaments combined with vitamin B12 for cancer treatment. Actavis developed products with pemetrexed diacid, pemetrexed ditromethamine, or pemetrexed dipotassium instead of pemetrexed disodium and contended that these did not infringe Eli Lilly’s patent. Eli Lilly argued that Actavis’s products infringed the patent directly or indirectly.

The main dispute was whether Actavis’s products infringed the patent claims limited to pemetrexed disodium. The lower court, Arnold J, initially found no infringement, with the Court of Appeal confirming no direct infringement but accepting indirect infringement. Eli Lilly appealed the rejection of direct infringement, and Actavis cross-appealed the finding of indirect infringement.

The Supreme Court held that Actavis’s products did directly infringe Eli Lilly’s patent in the UK and corresponding designations in France, Italy, and Spain, and dismissed Actavis’s cross-appeal on indirect infringement. The Court applied a nuanced approach to patent claim interpretation, emphasizing the Protocol on the Interpretation of Article 69 of the European Patent Convention, which calls for a balance between fair protection for patentees and legal certainty for third parties. The Court reformulated the established 'Improver' questions to determine infringement under the doctrine of equivalents, requiring that a variant achieves substantially the same result in substantially the same way, that it would be obvious to a skilled person that the variant works equivalently, and that the patentee did not intend a strict literal interpretation excluding such variants.

The Court found that although Actavis’s products did not literally fall within the claims limited to pemetrexed disodium, they were equivalent variants achieving the same therapeutic result through substantially the same means under the patent. The prosecution history limiting claims to pemetrexed disodium did not preclude the doctrine of equivalents extending protection to other pemetrexed salts or the free acid. The Court also confirmed that indirect infringement applies where the Actavis products, when dissolved in saline for administration, effectively produce pemetrexed disodium in solution.

This case clarified the application of the doctrine of equivalents in patent infringement, endorsing a purposive interpretation of patent claims that balances the literal wording with the inventive concept and the principle of equivalents. It provided guidance on how courts should approach equivalence, endorsing a more pragmatic approach whereby the skilled person assesses variants knowing the variant works, rather than speculating on outcomes without such knowledge. The decision is influential for patent law concerning pharmaceutical patents and equivalents.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Promoshirt SM SA Vs. Armasuisse

Introduction: The case of Promoshirt SM SA Vs. Armasuisse and Anr. is a pivotal decision by the High Court of Delhi that addresses the maintainability of Letters Patent Appeals (LPAs) under the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908 (CPC). This case arose from a challenge to a Single Judge’s judgment on appeals against the Deputy Registrar of Trade Marks’ order, raising a significant preliminary objection regarding the applicability of Section 100-A, which bars further appeals from a Single Judge’s appellate decisions. The Division Bench examined whether an LPA is permissible when a Single Judge exercises appellate jurisdiction under a special statute like the 1999 TM Act. The decision clarifies the scope of Section 100-A, the nature of the Registrar of Trade Marks as a non-civil court, and the preservation of Letters Patent remedies in trademark disputes, offering critical insights into appellate jurisdiction in intellectual property law.

Factual Background: Promoshirt SM SA, the appellant, sought registration of certain trademarks under the Trade Marks Act, 1999. Armasuisse, the respondent, opposed these applications, but the Deputy Registrar of Trade Marks, on July 25, 2022, rejected Armasuisse’s opposition and directed that Promoshirt’s trademark applications be processed for registration. Aggrieved, Armasuisse appealed to the High Court of Delhi under Section 91 of the 1999 TM Act, which allows appeals against the Registrar’s orders to be heard by a Single Judge. On January 4, 2023, the Single Judge delivered a judgment, prompting Promoshirt to file two Letters Patent Appeals (LPAs 136/2023 and 137/2023) before the Division Bench. Armasuisse raised a preliminary objection, arguing that Section 100-A of the CPC barred these LPAs, as the Single Judge was exercising appellate jurisdiction. The dispute centered on whether the Registrar’s orders constituted decrees or orders of a civil court under the CPC and whether the 1999 TM Act’s appellate framework permitted further appeals under the Letters Patent.

Procedural Background: The procedural journey began with the Deputy Registrar’s order on July 25, 2022, accepting Promoshirt’s trademark applications and rejecting Armasuisse’s opposition. Armasuisse invoked Section 91 of the 1999 TM Act to appeal this order to a Single Judge of the High Court of Delhi. The Single Judge’s judgment on January 4, 2023, led Promoshirt to file LPAs under Clause 10 of the Letters Patent, challenging the maintainability of the Single Judge’s decision. Armasuisse’s counsel, Mr. Pravin Anand, argued that Section 100-A of the CPC, which prohibits further appeals from a Single Judge’s appellate decisions, rendered the LPAs non-maintainable. The Division Bench was tasked with resolving this preliminary objection before addressing the substantive merits of the appeals, focusing on the interplay between the CPC, the 1999 TM Act, and the Letters Patent powers of the High Court.

Legal Issue: The primary legal issue was whether a Letters Patent Appeal is maintainable against a Single Judge’s judgment rendered under Section 91 of the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908, which bars further appeals from a Single Judge’s decisions in appeals from original or appellate decrees or orders? The court had to determine whether the Registrar of Trade Marks’ decisions constitute decrees or orders of a civil court under the CPC and whether the 1999 TM Act’s appellate provisions, lacking explicit reference to CPC rules, preserve the right to an LPA under the Letters Patent.

Discussion on Judgments: The court extensively referenced prior judgments to address the maintainability of the LPAs, with both parties citing precedents to support their positions. Armasuisse relied on Kamal Kumar Dutta & Anr. v. Ruby General Hospital Ltd. & Ors. ((2006) 7 SCC 613), where the Supreme Court held that Section 100-A overrides Letters Patent powers, barring further appeals from a Single Judge’s decision in an appeal from an original order of the Company Law Board (CLB). The court noted the CLB’s quasi-judicial nature and its trappings of a court, applying Section 100-A to preclude an LPA. Armasuisse argued this precedent conclusively settled the issue, as the Registrar’s orders were akin to those of the CLB.

The court also considered P.S. Sathappan v. Andhra Bank Ltd. ((2004) 11 SCC 672), a Constitution Bench decision cited by Armasuisse, which clarified that Section 100-A, as amended in 2002, specifically excludes LPAs when a Single Judge hears an appeal from an original or appellate decree or order. The court emphasized the legislature’s intent to limit appeals, reinforcing Armasuisse’s contention that Section 100-A applied universally.

Subal Paul v. Malina Paul ((2003) 10 SCC 361) was referenced, with Armasuisse highlighting the Supreme Court’s observation that statutory bars to appeals, like Section 100-A, must be expressly stated. This supported their argument that Section 100-A’s non-obstante clause overrides Letters Patent provisions. Similarly, Gandla Pannala Bhulaxmi v. Managing Director, A.P. SRTC (2003 SCC OnLine AP 525) and United India Insurance Co. Ltd. v. S. Surya Prakash Reddy & Ors. (2006 SCC OnLine AP 434), Full Bench decisions of the Andhra Pradesh High Court, were cited by Armasuisse. These cases held that Section 100-A bars LPAs in matters arising under special statutes like the Motor Vehicles Act, as the non-obstante clause overrides Letters Patent powers, even for tribunals with court-like functions.

Kesava Pillai Sreedharan Pillai v. State of Kerala (2003 SCC OnLine Ker 293), a Kerala High Court Full Bench decision, was invoked by Armasuisse to argue that Section 100-A’s amendments in 1999 and 2002 aimed to abolish intra-court appeals, except in writ petitions, applying to appeals under statutes like the Land Acquisition Act. Rouf Ahmad Zaroo v. Mst. Shafeeqa (2014 SCC OnLine J&K 137) was cited, where the Jammu and Kashmir High Court, relying on Kamal Kumar Dutta, held that Section 100-A barred an LPA from a Single Judge’s appellate order under the Guardians and Wards Act, reinforcing Armasuisse’s position.

Promoshirt countered with National Sewing Thread Co. Ltd. v. James Chadwick & Bros. (AIR 1953 SC 357), where the Supreme Court held that an appeal under Section 76 of the Trade Marks Act, 1940, to a Single Judge is subject to High Court rules, including Letters Patent appeals, unless the statute expressly bars further appeals. Promoshirt argued that the 1999 TM Act’s silence on further appeals preserved the LPA remedy. Mahli Devi (unreported, cited in the judgment), a Delhi High Court Full Bench decision, was referenced to assert that LPAs are maintainable under Section 54 of the Land Acquisition Act, as it lacks a bar on second appeals, supporting Promoshirt’s claim that the 1999 TM Act’s structure allows LPAs.

Resilient Innovations Pvt. Ltd. v. Phonepe Private Limited and Anr. (2023 SCC OnLine Del 2972) and V.R. Holdings v. Hero Investocorp Limited & Anr. (2023 SCC OnLine 4673), recent Delhi High Court decisions, were cited by Promoshirt. These cases held that LPAs are maintainable under the 1999 TM Act, as it lacks provisions excluding Letters Patent appeals, unlike its predecessors. The court in Resilient Innovations emphasized that the absence of CPC application in the 1999 TM Act preserves the LPA remedy under Clause 10 of the Letters Patent.

Avtar Narain Behal (not fully cited but discussed extensively) was a Delhi High Court Full Bench decision relied upon by Armasuisse, interpreting Section 100-A to bar LPAs under the Indian Succession Act, 1925, due to its adoption of CPC appeal provisions. Promoshirt distinguished this, arguing that the 1999 TM Act does not similarly incorporate CPC rules. Nahar Industrial Enterprises Ltd. v. Hong Kong & Shanghai Banking Corpn. ((2009) 8 SCC 646) was cited by Promoshirt to argue that tribunals like the Registrar of Trade Marks are not civil courts, as they lack the full attributes of a civil court, supporting the maintainability of LPAs.

Paramjeet Singh Patheja v. ICDS Ltd. ((2006) 13 SCC 322) was referenced by Promoshirt to clarify that non-civil court decisions, like arbitration awards, are not decrees under the CPC, reinforcing that the Registrar’s orders do not fall under Section 100-A. Additional cases included Sharda Devi v. State of Bihar ((2002) 3 SCC 705), supporting LPAs under the Land Acquisition Act; Aswini Kumar v. Arbinda Bose (AIR 1952 SC 369) and Madhav Rao Scindia v. Union of India (AIR 1971 SC 530), on the scope of non-obstante clauses; and I.T.C. Ltd. v. State of Karnataka (1985 Supp SCC 476) and Kulwant Kaur v. Gurdial Singh Mann ((2001) 4 SCC 262), on the supremacy of central legislation, all contextualizing the interplay between CPC and special statutes.

Reasoning and Analysis of the Judge: The Division Bench began by examining Section 100-A’s language, which bars further appeals from a Single Judge’s decisions in appeals from original or appellate decrees or orders, noting its non-obstante clause overriding Letters Patent provisions. However, the court emphasized that Section 100-A’s applicability hinges on the definitions of “decree” and “order” under Sections 2(2) and 2(14) of the CPC, which require adjudication by a civil court. The Registrar of Trade Marks, as a statutory authority, does not qualify as a civil court, as it lacks the power to conduct trials under the CPC or Evidence Act, failing the “trappings of a court” test articulated in Nahar Industrial Enterprises and Paramjeet Singh Patheja.

The court distinguished precedents like Kamal Kumar Dutta, which applied Section 100-A to the CLB due to its quasi-judicial status and statutory deeming provisions under the Companies Act, 1956. Unlike the CLB or Motor Accident Claims Tribunals, which have limited civil court status under their statutes, the 1999 TM Act contains no such provision, and the Registrar’s role is administrative, not judicial. The court also contrasted the 1999 TM Act with its predecessors, noting that Sections 76(3) of the 1940 TM Act and 109(8) of the 1958 TM Act applied CPC rules to appeals, a feature absent in the 1999 TM Act, indicating legislative intent to preserve Letters Patent remedies.

Analyzing Avtar Narain Behal, the court clarified that its holding applied to the Indian Succession Act, 1925, because Section 299 explicitly subjects appeals to CPC provisions, attracting Section 100-A’s bar. In contrast, Section 91 of the 1999 TM Act is silent on CPC application, aligning with National Sewing Thread and Mahli Devi, which upheld LPAs absent statutory bars. The court reconciled these precedents by holding that Section 100-A applies only when a special statute adopts CPC appeal rules or when the original decision emanates from a civil court.

The court further addressed the legislative intent behind Section 100-A, noting its aim to limit appeals in civil court matters, as per the CPC’s preamble, which governs “courts of civil judicature.” Extending Section 100-A to all special statutes would overstep its scope, especially for non-civil court authorities like the Registrar. The decisions in Resilient Innovations and V.R. Holdings were upheld as correctly interpreting the 1999 TM Act’s framework, reinforcing that LPAs remain viable absent express exclusion.

Final Decision: The Division Bench overruled Armasuisse’s preliminary objection, holding that the LPAs were maintainable. The court directed that the appeals (LPA 136/2023 and LPA 137/2023) be listed for consideration on their merits on September 19, 2023, affirming that Section 100-A does not bar LPAs against a Single Judge’s judgment under Section 91 of the 1999 TM Act.

Law Settled in This Case: The case established several key principles in trademark and appellate law. First, Section 100-A of the CPC bars further appeals only from decrees or orders of a civil court, as defined under Sections 2(2) and 2(14), and does not apply to decisions of non-civil court authorities like the Registrar of Trade Marks. Second, the Registrar of Trademark does not qualify as a civil court, lacking the attributes of conducting trials under the CPC or Evidence Act, as per the “trappings of a court” test. Third, the 1999 TM Act’s silence on applying CPC rules to appeals, unlike its predecessors, preserves the right to LPAs under the Letters Patent unless expressly barred. Fourth, Section 100-A applies to special statutes only when they explicitly subject appeals to CPC provisions, as in the Indian Succession Act, 1925, but not in the 1999 TM Act. Finally, the court affirmed that Letters Patent remedies remain intact for trademark appeals under Section 91, ensuring an additional layer of judicial scrutiny absent statutory restrictions.

Case Details: Promoshirt SM SA v. Armasuisse and Anr.: September 6, 2023: LPA 136/2023 & LPA 137/2023:2023:DHC:6352-DB:High Court of Delhi:Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

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

Frimline Private Limited & Anr Vs K-Smatco Lifesciences Private Limited & Ors

## Introduction

This case study analyzes a patent infringement suit filed by Frimline Private Limited and another (Plaintiffs) against K-Smatco Lifesciences Private Limited and others (Defendants) before the High Court of Delhi. The suit concerns the infringement of Indian Patent No. 382949, titled "A Pharmaceutical Composition for Anaemia," along with a claim for copyright infringement related to the Plaintiff No. 2’s website. The Plaintiffs seek interim and permanent injunctions against the Defendants for manufacturing, marketing, and selling a product allegedly infringing their patent rights.

## Factual Background

Plaintiff No. 1, Frimline Private Limited, is engaged in manufacturing and marketing pharmaceutical compositions, including a patented formulation for the treatment of Iron Deficiency Anaemia (IDA) and Anaemia of Inflammation (AOI). The product covered by Indian Patent No. 382949 is a synergistic combination of Lactoferrin and Guanosine Nucleotide derivatives. The patent was filed in March 2018 and granted in November 2021, valid until March 2038. The Plaintiffs commercialized this patented formulation under various brand names such as FERRONOMIC and FERRONEMIA, accruing significant revenue.

The Defendants launched a competing product called ‘FERROTOK PLUS’, which the Plaintiffs allege contains the patented composition as per the claims of the Suit Patent. Furthermore, Plaintiffs contend that Defendants have copied significant content from their corporate website, amounting to copyright infringement. The alleged infringing product is marketed for use by pregnant anaemic women, raising concerns about consumer safety if the product is substandard.

## Procedural Background

The Plaintiffs filed the suit and an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking ad-interim injunction against the Defendants to restrain further manufacturing, marketing, and sale of the impugned product during the pendency of the suit. The Defendants appeared and contested the injunction, arguing initially on patent validity and novelty grounds, citing the First Examination Report from the Indian Patent Office rejecting initial claims. They also challenged the Plaintiffs' reliance on an incomplete specification and submitted that similar compositions are common in the market.

The Plaintiffs filed replies affirming their patent’s validity, clarifying the scope of claims including use of the term “comprising” which broadens claim coverage, and provided detailed claim construction along with an affidavit affirming that the Defendants’ product falls within the patent claim scope. The Plaintiffs further submitted a certificate of analysis confirming the infringing product’s composition.

## Core Dispute

The core issue before the court was whether the Defendants' product ‘FERROTOK PLUS’ infringes upon the claims of the Plaintiffs’ Indian Patent No. 382949. Supplemental to this was the Plaintiffs’ claim of copyright infringement by the Defendants through reproduction of the Plaintiffs’ website content. Additionally, the Plaintiffs sought a recognition of the validity of their patent claims and an immediate injunction against further infringing acts to prevent commercial injury and consumer harm.

The court extensively relied on precedents interpreting patent claim construction and infringement analysis. Particularly significant was the citation of the Division Bench judgment in *F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd.*, 2015 SCC OnLine Del 13619, which clarified that the use of the word “comprising” in a patent claim is enabling and inclusive rather than restrictive. The Court further referred to *Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries*, (1979) 2 SCC 511, underscoring that claims must be read in conjunction with the complete specification for a proper understanding of the scope of protection.

Additionally, the Court referenced *Re. Guala Closures SPA v. AGI Greenpac Limited*, 2024 SCC OnLine Del 3510, which highlighted the primacy of claim construction in determining patent infringement. The judgment in *Re. Mold Tek Packaging Ltd. v. Pronton Plast Pack (P) Ltd.*, 2025 SCC OnLine Del 4883 (DB) was cited to emphasize the role of claim mapping between the patent claims and the allegedly infringing product.

Collectively, these authorities were applied to interpret the claims broadly to include minor variations, thereby supporting the Plaintiffs’ argument that Disodium Guanosine 5-Monophosphate (DGMP) in the Defendants’ product falls within the phraseology of the patent claims, even though the claim specified Guanosine Monophosphate (GMP).

Justice Manmeet Pritam Singh Arora analyzed the claim construction applying established principles that the term “comprising” in patent claims covers variations unless expressly excluded. The Court examined the complete specification and found it explicitly discloses Disodium Guanosine Monophosphate as a preferred embodiment, reinforced by the detailed example provided in the specification.

Upon review of the Plaintiffs’ claim mapping and evidentiary materials, the Court was convinced the Plaintiffs had made a prima facie case of infringement. The Defendants’ failure to rebut the certificate of analysis, absence of filing a certified specification copy, and Defendant No. 2’s non-appearance were pressed against them. Despite the Defendants’ contention on prior art and common formulas, the Court gave weight to the granted patent and commercial evidence presented by the Plaintiffs. The balance of convenience clearly favored the Plaintiffs, given the potential market confusion and financial loss with unchecked infringement.

Regarding the copyright infringement claim, the Defendants’ undertaking to withdraw and update the infringing website content was taken on record and an interim injunction was granted in respect of the copyright claim as well.

Final Decision

The Court granted an interim injunction restraining Defendant Nos. 1, 3, and 4 and related parties from manufacturing, marketing, selling, distributing, or dealing in any product infringing the subject matter of Indian Patent No. 382949. The injunction was extended over the copyright claim as well until final adjudication. Defendant No. 2 was restrained for the time being until the next hearing. The Plaintiffs were ordered to provide certified patent specification copies to the Defendants. The Defendants were directed to file their written statement and relevant affidavits within stipulated timelines. Further procedural directions were issued for inspection, admissions, and cost consequences following unjustified denial of documents.

The judgment reiterates fundamental principles of patent claim construction, affirming that the use of the term “comprising” broadens the claim scope to include variants not explicitly enumerated but covered within adoption. Complete specifications must be considered alongside claims for infringement assessment. The case highlights the weight of commercial evidence, certificates of analysis, and the importance of timely procedural compliance in defending patent infringement suits. Furthermore, the judgment confirms that interim injunctions are appropriate when a strong prima facie case of patent infringement is demonstrated and the balance of convenience favours protection of patent rights. The Court also emphasized the remedies available for copyright infringement in the context of misleading use of website content.

Frimline Private Limited & Anr Vs K-Smatco Lifesciences Private Limited & Ors  : August 29, 2025 :CS(COMM) 808/2025  :2025:DHC:7535: Justice Manmeet Pritam Singh Arora  

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

Bhagirati Enterprises and Anr Vs Kirti Enterprises

## Introduction

This case study examines the appeal filed by M/s Bhagirati Enterprises and another (Appellants) challenging the judgment passed by the Commercial Court, Rohini, Delhi, in a civil suit filed by M/s Kirti Enterprises (Respondent). The judgment deals with procedural compliance under the Code of Civil Procedure (CPC), particularly the timely filing of the written statement by the defendants as mandated by the amended Order VIII Rule 1 read with the Commercial Courts Act, 2015. The appeal addresses the implications of delay in filing the written statement and the court’s discretion on condonation of delay.

## Factual Background

The respondent instituted a civil suit seeking recovery of a sum of Rs. 13,33,733/-, with subsequent entitlement to interest. The appellants were defendants in the suit and were duly served with summons on 6th December 2023. Despite service, the appellants did not file a written statement within the prescribed 30-day period, leading to the striking off of their defense by the trial court. The appellants contend that written statement was in fact filed on 30 January 2024, but this was overlooked by the court. They later filed an application on 1 August 2024 seeking condonation of delay in filing the written statement.

## Procedural Background

After summons were issued, the appellants failed to file a written statement within the 30-day timeframe mandated under the CPC as amended. The Commercial Court, on 30 January 2024, formally struck off the appellants’ right to file the written statement going forward, while allowing a window of 120 days from service for condonation of delay applications. Despite this, the appellants did not file their written statement until 1 August 2024, along with an application seeking condonation of delay, where they admitted on oath that no written statement was filed on 30 January 2024. The trial court proceeded to pass a decree against the appellants in favor of the respondent on 9 August 2024. This led to the appellants filing the present appeal challenging the decree and related orders.

## Core Dispute

The primary dispute before the court concerned whether the appellants’ late filing of the written statement on 1 August 2024 could be condoned, especially given the statutory 120-day limit for filing the written statement from the date of service of summons. The appellants asserted that a written statement was filed on 30 January 2024, which if accepted, would justify consideration of their defense and subsequent condonation application. The respondent denied this submission and challenged the authenticity of the documents supporting this claim. The issue touches upon the strict timeframes applicable in commercial litigation and the consequences of failing to comply with procedural mandates in civil suits.

In this appeal, no new external judgments were primarily cited in the reported judgment. However, the court’s reasoning was based on a strict interpretation of Order VIII Rule 1 of the CPC, 1908, read with the proviso inserted by the Commercial Courts Act, 2015. This amended provision allows a maximum period of 120 days for filing the written statement from service of summons, beyond which the defendant forfeits the right to file such a statement. The court underscored the binding nature of this rule and upheld the procedural discipline it enforces in commercial litigation.

The principles reflected in this judgment align with well-established procedural law that delay in filing pleadings cannot be condoned past the statutory limit and that oral or belated assertions before appellate courts cannot contradict sworn statements made earlier at the trial stage.

The bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla observed that although the appellants contended a written statement was filed on the cutoff date of 30 January 2024, the trial court’s order recording non-filing was unchallenged and remained final. The appellants further admitted in their application filed on 1 August 2024, sworn before the trial court, that no written statement was actually filed on that date. This admission bound the appellants and negated the possibility of belatedly asserting otherwise in appeal. 

The bench further emphasized the inviolability of the 120-day maximum period for filing written statements as per the CPC amendments. Since the appellants failed to file within this period, the trial court rightly proceeded on the basis of non-filing and legally struck off the defense, resulting in a decree in favor of the respondent. The appeal court expressed disapproval of the appellants’ conduct but refrained from imposing costs, dismissing the appeal on procedural grounds.

The appeal was dismissed by the High Court of Delhi. The court confirmed the trial court’s judgment and decree, upholding the dismissal of the appellants’ defense due to failure to file the written statement within the statutory time frame. The appeal court declined to interfere with the learned Commercial Court's order or the final decree issued in favor of the respondent.

The ruling reinforces that under the Commercial Courts Act, 2015 and corresponding amendments to Order VIII Rule 1 CPC, a defendant’s right to file a written statement is strictly confined to a maximum period of 120 days from the date of summons service. Any delay beyond this period cannot be condoned, and failure to comply results in the striking off of defense and consequent decree on the plaintiff’s claim. Further, earlier on-record admissions bind litigants, preventing contradictory assertions on appeal. This case highlights the importance of procedural vigilance and timely compliance in commercial litigation frameworks.

Bhagirati Enterprises and Anr Vs  Kirti Enterprises :  August 20, 2025  :RFA(COMM) 7/2025  :2025:DHC:7145-DB:Hon'ble Justice C. Hari Shankar and Justice Om Prakash Shukla  

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Goodview Fashion Private Limited Vs The Registrar of Trade Marks

This case study delves into the trademark registration dispute between Goodview Fashion Private Limited (Appellant) and the Registrar of Trade Marks (Respondent). The core issue revolves around the distinctiveness and eligibility of a particular trademark design known as the ‘Pi logo’, and its registration under the Trade Marks Act, 1999.

Goodview Fashion Private Limited, a well-established fashion label operating designer stores in major Indian metros, owns the brand identity associated with Tarun Tahiliani, a distinguished fashion designer. The company adopted an artistic trademark called the ‘Tarun Tahiliani logo’ since 2018, which carries significant goodwill and reputation. Subsequently, the Appellant developed a variant of this logo known as the ‘Pi logo’ and sought registration under Class 42 on a 'proposed to be used' basis. The ‘Pi logo’ is an artistic stylization of the mathematical symbol π, associated with the Appellant’s brand identity.

The Appellant filed trademark Application No. 5292417 for the Pi logo, which was objected to by the Registrar under Section 9(1)(a) of the Trade Marks Act, stating the mark was devoid of any distinctive character and was a common personal/surname. Following this, the Appellant submitted responses to request a waiver of this objection. The Registrar conducted a hearing and ultimately passed an order dated 31.12.2024 refusing the application. This led the Appellant to file an appeal under Section 91 of the Trade Marks Act, 1999, challenging the decision.

The principal legal dispute hinges on the statutory distinctiveness of the Pi logo. The Appellant argued that the Pi logo is a distinctive mark, a creative variation of their already registered trademark, and not a common surname or personal name as alleged. The Registrar contended the mark lacked distinctiveness and thus fell under Section 9(1)(a) prohibiting registration of marks incapable of distinguishing goods or services in the trade.

The Court referred to multiple significant precedents to analyze the issue of distinctiveness:

1. **Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947**: The Court emphasized that a mark can only be found lacking in distinctiveness if it is incapable of distinguishing goods or services. The judgment clarified that marks exclusively used by one entity without similar marks being used by others are inherently distinctive. The case illustrated that familiar or simple symbols, when exclusively associated with one user, do not lose their distinctiveness.

2. **Muneer Ahmad v. Registrar of Trade Marks, 2023 SCC OnLine Del 7345**: This decision highlighted two categories under Section 9(1)(a)—either a mark inherently lacks distinctiveness or it is a commonly used mark in the trade. Importantly, the Registrar must point out specific similar marks used by others to deny registration on grounds of non-distinctiveness.

The Appellant invoked these precedents to argue that their Pi logo is unique, closely tied to their brand, and not replicated by others. The Registrar’s order lacked any reference to other similar marks in use, rendering their rejection unsubstantiated within this legal framework.

## Reasoning and Analysis of the Judge

Justice Tejas Karia carefully assessed the Registrar’s refusal. The judgment noted that the Impugned Order did not specify any other trademark identical or similar to the Pi logo that could negate its distinctiveness. The logo’s artistic representation of the mathematical symbol π with unique graphical lines, combined with its link to the Tarun Tahiliani brand, was sufficient to establish it as a distinct source identifier.

The Court held that a mark cannot be declared non-distinctive solely on the basis that it resembles a surname or personal name without evidence of others using a similar mark in the relevant class. The reasoning drew substantially from the abovementioned precedents, concluding that the opposition under Section 9(1)(a) was misplaced in the absence of demonstrated common use by third parties.

The Court set aside the Registrar’s order dated 31.12.2024 and directed that the Appellant’s trademark Application No. 5292417 be advertised and proceed as per the statutory procedure under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The appeal was allowed and the pending applications disposed of with the direction for further processing rather than outright refusal.

This case reaffirms that under Section 9(1)(a) of the Trade Marks Act, a mark cannot be refused registration for lack of distinctiveness if no other similar marks are used in the trade, even if the mark resembles a common surname or personal name. The burden is on the Registrar to demonstrate that a mark is either inherently non-distinctive or commonly used by others in the relevant field. Creativity and exclusive association with a brand lend sufficient distinctiveness even to marks consisting of common symbols or personal names when appropriately stylized.

Goodview Fashion Private Limited vs The Registrar of Trade Marks  :August 22, 2025  :C.A.(COMM.IPD-TM) 18/2025:2025:DHC:7166: Justice Tejas Karia  

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

G B Pachaiyappan & Thondai Mandala Saandror Dharma Paribalana Sabai Vs. Tamilaga Vettri Kazhagam & Vijay

 Introduction

This case study analyzes the recent decision of the Madras High Court in *G B Pachaiyappan & Anr. vs. Tamilaga Vettri Kazhagam & Anr.*, rendered by Hon’ble Mr. Justice Senthilkumar Ramamoorthy on August 18, 2025. The suit involved a multi-pronged intellectual property dispute, including claims of trademark infringement, copyright infringement, and passing off, centering around the use of distinctive flags by a public charitable trust and a political party. At the interlocutory stage, the decision provides important judicial clarity on the application of trademark and copyright laws in the context of non-profit organizations and political entities.

## Factual Background

The factual context of this litigation is centered on two parties: the plaintiffs, comprising G. B. Pachaiyappan (founder trustee) and Thondai Mandala Saandror Dharma Paribalana Sabai (a trust registered on 7 August 2023), and the defendants, Tamilaga Vettri Kazhagam (a political party) and its President, Mr. Vijay. The plaintiffs claimed original creation and consistent use of a particular flag, which had allegedly earned them goodwill as a mark identifying their charitable and social welfare activities. The trust secured registration of its flag as a trademark under Class 45 relating to social and personal services, effective from 28 November 2023. The flag, embodying specific colour combinations and artistic elements, was also asserted as qualifying for copyright protection under Section 2(c) of the Copyright Act, 1957.

According to the plaintiffs, this flag, and the associated artistic and colour elements, were copied by the defendants when they adopted an allegedly similar flag for the political party. The plaintiffs emphasized that even before the trust’s formal constitution, the flag was in use, as shown by social media posts. Subsequent continuous usage reinforced their claim to prior user rights.

## Procedural Background

The plaintiffs filed three interim applications (O.A.Nos.713, 714, and 715 of 2025) in the main suit (C.S.(Comm.Div)No.178 of 2025), seeking interim injunctions to restrain the defendants from infringing their registered trademark, from passing off, and from infringing their copyright by using a flag and related devices alleged to be deceptively similar or substantially copied from the plaintiffs’ flag.

The core relief sought included restraining the defendants, their officers, staff, and representatives from (i) infringing the plaintiffs’ trademark by using identical or deceptively similar words/devices/flags, (ii) passing off goods or services as those of the plaintiffs through use of the impugned flag or connected artistic work, and (iii) infringing plaintiffs’ copyright in the flag, its colour scheme, and trade dress.

## Core Dispute

The essential dispute centered on the plaintiffs’ allegation that the defendants had substantially copied their flag, including its colour composition and design elements, and unlawfully used it in a manner constituting (1) copyright infringement, (2) trademark infringement under the Trade Marks Act, 1999, and (3) passing off. The plaintiffs argued that the impugned flag of the political party was not only visually and conceptually similar but also potentially misleading to the public, thereby diluting rights accrued to the trust through registration and prior use.

The defendants, on the other hand, contended that neither party was engaged in “trade” within the meaning of the Trade Marks Act, thus disqualifying the plaintiffs from asserting trademark rights. They further argued substantial differences between the flags and denied the existence of goodwill or reputation on the part of the plaintiffs sufficient to ground a passing off action.

## Discussion on Judgments – Complete Citations and Context

Multiple judicial precedents were cited by both parties to buttress their respective positions. The plaintiffs referenced several authorities:

1. *Kirithavar Vazhvurimai Iyakkam v. Indhiya Jananayaka Katchi*, 2020 SCC OnLine Mad 600 [(Kirithavar Iyakkam)] — cited for interpretation of trademark rights in the context of similar disputes involving flags, paragraphs 17-19 and 24 highlighted the criteria for assessing deceptive similarity and the scope of relief.

2. *Burge v. Haycock*, (2002) R.P.C. 28 — cited (pages 91, 94 and 95) for judicial reasoning on the requisite standard for substantial copying in copyright cases.

3. *Parle Products (P) Ltd. v. J.P. & Co., Mysore*, (1972) 1 SCC 618 — the Supreme Court’s observations in paragraph 9 were invoked to argue that courts should focus on the essential features of marks, even in composite cases.

4. *Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia & Ors.*, (2004) 3 SCC 90 — specifically paragraph 5, cited on the principle that interim injunctions should follow in clear cases of infringement or passing off.

5. *Colgate Palmolive Company & Anr. v. Anchor Health and Beauty Care Pvt. Ltd.*, 2003 SCC OnLine Del 1005 — paragraphs 59 and 60 referenced, relating to evaluation of essential features and likelihood of confusion.

6. *Societe des Produits Nestle S.A. v. Cadbury UK Limited*, (2022) EWHC 1671 (Chancery) — pages 108 and 110 relied upon for comparative analysis of artistic works and trademarks.

The defense, meanwhile, invoked:

1. The Division Bench stay of the judgment in *Kirithavar Iyakkam* to challenge its persuasive value.

2. [Supreme Court] *Pernod Ricard India Private Limited & Anr. v. Karanveer Singh Chhabra*, Civil Appeal No.10683 of 2025, judgment dated 14 August 2025, especially paragraph 31, advanced to argue the limitation of trademark rights where the connection to trade was absent.

3. *Dhariwal Industries Ltd. & Anr. v. M.S.S. Food Products*, (2005) 3 SCC 63 — cited with regard to assessing the quantum of goodwill and reputation required in cases of passing off, clarifying that scale of operation is not determinative but the evidence of reputation is decisive.

## Reasoning and Analysis of the Judge

Justice Senthilkumar Ramamoorthy meticulously approached each relief by examining the material and legal contentions.

With respect to copyright infringement, the Court accepted, for the purpose of interim relief, that the plaintiffs’ flag qualified as original artistic work under Section 2(c) of the Copyright Act. However, upon visual and conceptual comparison, including central motifs and arrangement, the judge concluded that the defendants’ flag was not a substantial copy. While both shared a similar colour palette (maroon/red-yellow-maroon/configuration), the defendants’ flag incorporated “two dancing elephants,” an “oval device,” and a “Vaagai flower encircled by stars,” as opposed to “fish, leaping tiger, bow and arrow, and specified Tamil words” on the plaintiffs’ flag. The judge held that, even allowing for minor variations, there was no substantial copying of artistic elements justifying an interim injunction.

On trademark infringement, the Court observed, with reference to Section 2(1)(z)(b) of the Trade Marks Act, that the phrase “a connection in the course of trade” was critical and that the scope of ‘trade’ was not conclusively defined. At the interim stage, while refraining from a final finding on the plaintiffs’ entitlement to proprietary rights over the flag as a trademark, the judge provisionally accepted registration for the purposes of inquiry. Employing the test from *Parle Products*, the Court focused on the essential features of the composite mark and whether the similarity was sufficient to mislead an average consumer. Here again, the judge found that the plaintiffs did not possess a separate registration for the combination of colours and protected only the composite mark. The differences in design and the context in which the services were provided (charity versus political activity) further diluted the likelihood of consumer confusion or deception, leading the Court to deny interlocutory relief.

On passing off, the Court invoked the “classical trinity” test of goodwill, misrepresentation, and damage. Citing *Dhariwal Industries*, the judge acknowledged that scale of operations per se does not bar relief; however, available evidence revealed that the trust’s annual donations were minimal and the plaintiffs had failed to show reputation or goodwill attached to the flag. Further, the statement of financials and lack of specifics about beneficiaries undermined the claim of established goodwill. In the absence of concrete evidence on confusion or misrepresentation, no inferential basis existed to support passing off.

## Final Decision

The Hon’ble Court rejected all three interlocutory applications seeking injunctive relief against the defendants. It was held that no case of substantial copying constituting copyright infringement was made out. There was also an insufficient basis for finding trademark infringement or passing off, particularly given the lack of evidence demonstrating either consumer confusion or goodwill in the plaintiffs' flag. The Court clarified that all observations were prima facie and strictly confined to the determination of interim relief at the present stage.

## Law Settled in This Case

This decision clarifies several important aspects of Indian intellectual property law in relation to charitable and political entities. Firstly, the Court underscores that copyright protection in artistic works demands proof of substantial copying and not mere similarity in colour or broad themes. Secondly, it draws attention to the requirement of a “connection in the course of trade” for trademark rights, with ambiguity on whether not-for-profit entities or non-commercial organizations qualify as ‘traders’ for statutory protection. Lastly, the judgment reiterates the classical requirements for passing off actions: reputation/goodwill, misrepresentation, and damage — stressing the need for factual evidence, not merely registration or prior use.

## Case Details

Case Title: G B Pachaiyappan & Thondai Mandala Saandror Dharma Paribalana Sabai Vs. Tamilaga Vettri Kazhagam & Vijay  

Date of Order: 18 August 2025  

Case Number: O.A.Nos.713 to 715 of 2025 in C.S.(Comm.Div)No.178 of 2025  

Neutral Citation: 2025:MHC:2005  

Name of Court: High Court of Judicature at Madras  

Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

***

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

***

### Suggested Titles for Law Journal Publication

1. Judicial Scrutiny of IP Rights in Flags: The G B Pachaiyappan v. Tamilaga Vettri Kazhagam Decision

2. Trademark and Copyright Disputes in Non-Commercial Contexts: Lessons from the Madras High Court

3. Flags, IP and Goodwill: Analyzing the 2025 Madras High Court Ruling

4. The Limits of IP Protection for Charitable Trusts and Political Parties: A Case Study

5. Evaluating Passing Off and Infringement Claims in Social Sector Entities: Legal Perspectives from the Madras High Court

ITC Limited Vs The Controller of Patents, Designs & Trademarks

Introduction:  The case of ITC Limited Vs. The Controller of Patents, Designs & Trademarks involves a critical examination of the boundaries of patentability under Indian law, particularly the interpretation of Section 3(b) of the Patents Act, 1970. The core issue centered on whether a device intended for generating and delivering nicotine aerosol, based purely on chemical reactions without the use of electronics or combustion, could be denied a patent on public health grounds.

Factual Background: The appellant, ITC Limited, filed Indian Patent Application No. 685/KOL/2015 dated 10th June 2015 for an invention titled “A Device and method for generating and delivery of a Nicotine Aerosol to a user.” The claimed device featured a chemical reaction-based mechanism for delivering nicotine, comprising a tube with components containing an aerosol-generating substance (like nicotine) and an aerosol-promoting substance (like pyruvic acid). Notably, the device did not involve electrical or electronic components and thus, according to ITC, did not qualify as an Electronic Nicotine Delivery System (ENDS) or e-cigarette.

Procedural Background:  The Patent Office initially issued a First Examination Report (FER) that did not include any objection under Section 3(b) of the Patents Act. However, in the hearing notice dated 1st May 2023, an objection under Section 3(b) was introduced for the first time. The Controller subsequently passed an order on 26th June 2023 rejecting the patent application on the grounds that the invention was contrary to public order and morality and posed serious prejudice to health. ITC appealed under Section 117A of the Patents Act to the High Court of Calcutta.

Legal Issue: The central legal issue was whether the Controller's rejection of the patent application under Section 3(b) of the Patents Act, 1970—based on documents and statutory materials not disclosed in advance to the appellant—violated the principles of natural justice and whether the application indeed fell within the scope of prohibited subject matter under Section 3(b)? 

Discussion on Judgments: The appellant relied on several judicial precedents to challenge the procedural fairness and legal reasoning in the Controller’s order. Most notably:  Ssangyong Engineering and Construction Co. Ltd. v. National Highways Authority of India, 2019 SCC OnLine SC 677: Relied upon to argue that reliance on documents not supplied to the party prior to decision-making violates principles of natural justice and the right to present one’s case. Balsinor Nagrik Co-op. Bank Ltd. v. Babubhai S. Pandya, AIR 1987 SC 849: Cited to stress that statutory provisions must be read harmoniously, with reference to the words “primary or intended use” in Section 3(b). Manganese Ore (India) Ltd. v. Regional Asstt. CST, (1976) 4 SCC 124: Relied upon to demonstrate that arbitrary or inconsistent administrative actions offend the principle of equality.

The respondent cited: Basawaraj & Anr. v. Special Land Acquisition Officer, (2013) 14 SCC 81, and Fuljit Kaur v. State of Punjab, (2010) 11 SCC 455: To argue that mere precedents of erroneous approvals cannot justify a wrongful grant of relief to others.

Reasoning and Analysis of the Judge: The Court held that the reliance by the Controller on documents such as the ICMR White Paper, various statutes including the Environment (Protection) Act, 1986, and the Prohibition of Electronic Cigarettes Act, 2019—without furnishing them to the appellant or specifically listing them in the hearing notice—violated the principles of natural justice. The Court found that the appellant was not given a fair chance to respond to or refute the material that formed the basis for the denial of the patent.

The Court emphasized that the Patents Act distinguishes between patentability and commercial exploitability. Citing Article 27.2 of the TRIPS Agreement and Article 4quater of the Paris Convention, the Court reiterated that the existence of regulatory restrictions on sale or commercial use cannot be a standalone ground for denying a patent.

The Court also noted that the Controller’s reliance on Section 3(b) misapplied the standard from “intent principle” to “effect principle,” conflating the harmful effects of nicotine with the intent of the invention. Additionally, examples provided by a former Deputy Controller of Patents did not include nicotine-related devices within the ambit of Section 3(b), undermining the validity of the objection raised.

Final Decision: The High Court allowed the appeal, set aside the impugned order dated 26th June 2023, and remanded the matter back to the Patent Office. The Court directed that the matter be reheard afresh by a different competent officer, with all relevant materials disclosed to the appellant, and a decision to be rendered within six months from the date of the order.

Law Settled in This Case: This judgment affirms that a patent application cannot be rejected based on materials or statutory instruments that are not disclosed to the applicant before decision-making. It also settles that regulatory prohibitions or public health policies do not, by themselves, disqualify inventions from patent protection under Indian law unless the “primary or intended use” is inherently contrary to public order or morality. Further, the distinction between patent grant and commercialization is legally significant and must be upheld.

Case Title: ITC Limited Vs The Controller of Patents, Designs & Trademarks: Date of Order: 30th April 2025: Case Number: IPDPTA No. 121 of 2023:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Krishna Rao

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

Iconic IP Interests LLC Vs Shiv Textiles

Introduction: This case revolves around the trademark dispute between Iconic IP Interests LLC, a U.S.-based licensor and proprietor of the "JOLLY RANCHER" brand, and Shiv Textiles, an Indian entity using the mark "JOLLY RANGER LEGWEAR." The legal contention centers around alleged infringement, prior use, jurisdiction, and the cause of action. The petitioner challenged the maintainability of the suit filed by the respondent before the Bhavnagar District Court, seeking rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure, 1908. The Gujarat High Court adjudicated the writ petition filed under Article 227 of the Constitution of India.

Detailed Factual Background: Iconic IP Interests LLC is a limited liability corporation incorporated in Delaware, USA. It operates as a licensing entity for intellectual property rights and is a subsidiary of Highlander Partners L.P., a U.S.-based private investment firm. The petitioner owns the trademark “JOLLY RANCHER” and its variations, which are widely recognized in connection with confectionery and related goods.

Initially, the rights to the “JOLLY RANCHER” mark were held by Huhtamaki Finance B.V., which licensed them to Hershey Chocolate & Confectionery Corporation. Subsequently, Huhtamaki transferred all rights to the petitioner, who continued the licensing agreement with Hershey.

In March 2023, during a routine search of the Indian Trade Marks Registry, the petitioner discovered that M/s Shiv Textiles had registered the trademark “JOLLY RANGER LEGWEAR” for jeans and pants in Class 25, claiming use since January 1, 2019. The petitioner, asserting global and Indian rights over “JOLLY RANCHER,” issued a legal notice dated April 28, 2023, demanding cessation of use.

The respondent replied on May 8, 2023, claiming that “JOLLY” is a generic term and that their adoption was honest and prior. A further notice was issued on June 9, 2023, followed by a non-responsive conciliatory attempt by the petitioner on August 17, 2023.

Detailed Procedural Background: 

In response to the petitioner’s notices, Shiv Textiles filed a commercial trademark suit—Commercial Trademark Suit No. 1 of 2023—before the 2nd Additional District Judge, Bhavnagar. Meanwhile, the petitioner filed CS (COMM) 870/2023 before the Delhi High Court, seeking injunction, damages, and trademark rectification under Section 57 of the Trade Marks Act, 1999. It also filed application No. 5970539 on January 3, 2024, to register the “JOLLY RANCHER” mark in Class 25.

Contesting the maintainability of the Bhavnagar suit, the petitioner filed an application under Order VII Rule 11 CPC seeking rejection of the plaint, which was dismissed by the trial court on November 22, 2024. Challenging this order, the petitioner approached the Gujarat High Court through Special Civil Application No. 1543 of 2025.

Issues Involved in the Case: Whether the suit filed by the respondent disclosed a cause of action within the territorial jurisdiction of the Bhavnagar court? Whether the application under Order VII Rule 11 CPC was maintainable?

Detailed Submission of Parties:  The petitioner argued that the respondent suppressed the prior existence and use of the “JOLLY RANCHER” trademark, despite knowledge derived from the petitioner’s notices. The plaint failed to disclose any act by the petitioner within the jurisdiction of Bhavnagar that could constitute a cause of action.

The petitioner submitted that mere application for trademark registration in India and a few listings on Amazon (USA) did not establish commercial activity or targeted marketing in India. The respondent’s suit was therefore frivolous and designed to harass. Reliance was placed on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr., 2022 SCC OnLine Bom 7183, emphasizing the rejection of suits founded on illusory causes of action and suppression of material facts.

The respondent argued that multiple legal notices from the petitioner and its continuous assertions over the “JOLLY RANCHER” mark created a recurring cause of action. The petitioner’s actions of applying for registration and sending cease and desist notices constituted acts giving rise to a dispute.

The respondent contended that under settled law, the court must only examine the plaint and accompanying documents when deciding an Order VII Rule 11 application, not the defense or other extrinsic materials.

Detailed Discussion on Judgments Cited:  The petitioner relied on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr. (2022 SCC OnLine Bom 7183), where the Bombay High Court held that a plaint is liable to be rejected when it camouflages facts to create an illusionary cause of action. Suppression of known adverse facts can render the plaint unworthy of adjudication.

The High Court also referred to the landmark judgment Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780, where the Delhi High Court clarified that for jurisdiction to be assumed in internet-based trademark disputes, a real commercial transaction targeted at consumers within the jurisdiction must be demonstrated.

In the present case, the Gujarat High Court distinguished Banyan Tree by noting that the alleged acts did not constitute commercial targeting of Indian consumers, as the sales were through U.S.-registered websites using U.S.-registered marks.

Detailed Reasoning and Analysis of Judge:  The Gujarat High Court held that the essential requirement for maintaining a suit is the existence of a cause of action within the territorial jurisdiction of the court. The petitioner’s use of the mark was limited to foreign jurisdictions. The mere availability of the goods on Amazon.com, a U.S.-based website, did not suffice to confer jurisdiction in India.

The Court found that there was no credible evidence that the petitioner had engaged in commercial activity within India. The burden was on the respondent to show targeted transactions or harm within the jurisdiction, which it failed to do.

The Court also observed that the respondent suppressed facts regarding the petitioner’s trademark registrations and legal notices, amounting to material suppression. Further, Hershey was a necessary party, and its non-joinder affected the maintainability of the suit.Therefore, the Court concluded that the plaint did not disclose any cause of action under Order VII Rule 11(a) CPC and was liable to be rejected.

Final Decision: The Gujarat High Court allowed the writ petition and set aside the impugned order dated November 22, 2024, passed by the 2nd Additional District Judge, Bhavnagar. It rejected the plaint in Commercial Trademark Suit No. 1 of 2023 under Order VII Rule 11(a) of the Code of Civil Procedure.

Law Settled in This Case: A foreign trademark proprietor does not confer jurisdiction on Indian courts merely by sending notices or having online listings on international websites unless there is evidence of targeted commercial activity in India. Suppression of material facts and absence of necessary parties are valid grounds for rejection of plaints under Order VII Rule 11. The decision affirms the principle that suits must disclose a clear and real cause of action within the forum's jurisdiction to survive legal scrutiny.

Case Title: Iconic IP Interests LLC Vs Shiv Textiles: Date of Order: 09 May 2025: Case No.: R/Special Civil Application No. 1543 of 2025: Name of Court: High Court of Gujarat at Ahmedabad: Name of Judge: Hon'ble The Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Pranav Trivedi

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

Amgen Inc. Vs Assistant Controller of Patents

## Introduction

The legal battle between Amgen Inc. and the Assistant Controller of Patents, with Intas Pharmaceuticals Limited as the opposing party, is rooted in the complexities of patent law relating to biologics. The case revolves around the patentability of a lyophilized therapeutic peptibody formulation, its constituent excipients, and methods of manufacture. The adjudication by the High Court of Madras delves deep into scientific, technical, and legal nuances of patent claims under the Patents Act, 1970, particularly in context of Sections 2(1)(ja), 3(d), 3(e), and 10(4), and addresses the broader question of inventive step and sufficiency of disclosure.

## Factual Background

The core invention in question involves a lyophilized formulation of a therapeutic peptibody intended for the treatment of thrombocytopenic conditions. The peptibody mimics the function of thrombopoietin (TPO), stimulating platelet production, and is engineered by fusing a peptide on the Fc region of an antibody. The formulation specifically cites the use of excipients: 10 mM histidine buffer at pH 5.0, 4% w/v mannitol as bulking agent, 2% w/v sucrose as stabilizer, and 0.004% w/v polysorbate-20 as surfactant. Amgen had previously obtained patent rights and regulatory approvals in other jurisdictions for related APIs (namely romiplostim), marketed as Nplate.

## Procedural Background

Amgen filed Indian Patent Application No. 5857/CHENP/2008, seeking a grant for the lyophilized therapeutic peptibody formulation. After a series of examinations and objections by the Patent Office, objections were raised under Sections 3(d), 3(e), 2(1)(ja), and 10(4), asserting the invention as not patentable. Responding to the First Examination Report and engaging in hearings, Amgen made amendments and filed supplementary data. In parallel, Intas Pharmaceuticals filed a pre-grant opposition on grounds of obviousness, lack of inventive step, insufficiency of disclosure, and lack of synergy. The Assistant Controller of Patents eventually rejected the application on 31.03.2023, prompting Amgen to appeal under Section 117A of the Patents Act before the High Court of Madras.

## Core Dispute

The principal dispute centered on the patentability of the claimed lyophilized peptibody formulation. This involved questions about whether the invention constituted a mere aggregation of known components or exhibited patentable synergy, whether the process was a mere use of a known method, and whether the disclosures sufficed to enable a person skilled in the art to reproduce the invention across the breadth of the claims. The court had to determine if the claimed invention passed the tests of novelty, inventive step, and sufficiency, and whether exclusions under Sections 3(d) and 3(e) were validly invoked.

## Discussion on Judgments

In support of their respective positions, parties cited numerous judicial precedents and decisions from Indian and foreign jurisdictions.

Amgen's counsel referred to:

Nippon Steel Corporation v. Controller General of Patents, Designs and Trade Marks & Anr., CA (Comm. IPD-PAT) 323 of 2022, order dated 29.08.2024, for the proposition that the “known process” in Section 3(d) must be specifically identified.

Dhama Innovations Private Limited v. Assistant Controller of Patents and Designs, CMA(PT) No.12 of 2024, dated 19.07.2024, arguing against dissecting a combination into constituent elements for obviousness.

Net MoneyIN, Inc v. Verisign Inc., US Court of Appeals for the Federal Circuit 2007-1565, especially pages 15 and 19, clarifying combination inventions standards.

In Re: Stepan Company, Court of Appeals for the Federal Circuit, MANU/USFD/0346/2017, regarding sufficiency of disclosure.

Steel Strips Wheels Limited v. Wheels India Limited & Anr., 2025:MHC:922, discussing inventive step in process patents.

Caleb Suresh Motupalli v. Controller of Patents, 2025:MHC:293, about sufficiency of disclosure.

Yunnan Tobacco International Co. Ltd. v. Philip Morris Products S.A., Enlarged Board of Appeal, G 0001/24, decision dated 18.06.2025, on inventive step mosaic.

Teva Pharmaceutical Industries Ltd v. United States of America, rep. By Secretary, Department of Health and Human Services, T 2395/22-3.3.02, EPO Technical Board of Appeal, decision dated 31.01.2024, for teachings on excipient selection for stability.

Ajantha Pharma Limited v. Allergan Inc., ORA/21/2011/PT/KOL, regarding combination patents.

General Electric Company's Applications  81 RPC 413, on description and enablement.

Intas Pharmaceuticals and the Patent Office cited:

British Celanese Ltd. v. Courtaulds Ltd.  52 RPC 171, rejecting patentability absent synergy in known ingredient combinations.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, for distinguishing workshop improvements from inventive step.

Rhodia Operations v. The Assistant Controller of Patents and Designs, 2024:MHC:449, specifically paras 45 and 49, on obviousness analysis.

Fresenius Kabi Oncology Limited v. Glaxo Group Limited and Another, 2013 SCC OnLine IPAB 121, paras 58 and 60, about optimization versus invention.

Indian Institute of Technology v. The Controller of Patents and Designs and Others, 2024:MHC:2264, paras 29 and 35, inventive step standards.

Novozymes v. Asst. Controller of Patents & Designs 2023 MHC 4261.

Sankalp Rehabilitation Trust v. F. Hoffman-LA Roche AG 2012 SCC OnLine IPAB 167.

Mahesh Gupta v. Asst. Controller of Patents and Designs 2024 SCC OnLine Del 4000.

Exxonmobil Oil Corporation v. Treofan Germany GmbH & Co. KG, T 0532/00 – 3.3.9, EPO, mosaic approach.

In re Aller et al., 220 F.2d 454, on obviousness in formulation claims.

Foreign decisions such as the EPO order in Teva Pharmaceutical Industries (T 2395/22-3.3.02) and the Enlarged Board's Yunnan Tobacco International (G 0001/24), provided persuasive guidance on inventive step and the challenge in mosaicing disclosures from unrelated prior arts.

## Reasoning and Analysis of the Judge

Justice Senthilkumar Ramamoorthy adopted a comprehensive analytical approach, dissecting the scientific basis of biologics and the technical requirements for patent protections under Indian law. Recognizing the novelty of peptibodies and the challenge of lyophilization for biologics, the judgment identified core issues as being whether the claimed invention represented an inventive step or was an obvious aggregation of known elements, and whether the disclosure sufficed for enablement.

On Section 3(d), the judge observed that existing prior arts disclosed the individual peptibody structure and lyophilization as a process but failed to teach the specific combination of excipient concentrations for the claimed peptibody. The court held that the mere presence of lyophilization in prior art did not render the process claimed as a mere use of a known process, especially given the tailored excipient concentrations for the unique therapeutic peptibody.

On Section 3(e), the judge determined that Amgen’s experimental data, specifically Tables 39 to 41 of the specification, evidenced synergy, particularly between tween-20 and other excipients, resulting in beneficial stability and anti-aggregation effects. The decision clarified that contrary to respondents' contentions, synergy and technical advancement did not necessitate comparison of pre- and post-lyophilization formulations, but rather a demonstration that the composition was more than the sum of its parts.

Turning to inventive step under Section 2(1)(ja), the judge reasoned that PSITA (person skilled in the art) would not be naturally led to combine excipients and their specific concentrations from D5 (which concerned IL-12 proteins) with the peptibody of D4, given the pharmacological differences between the proteins. The judgment extensively relied on scientific literature regarding the selection and prevalence of excipients in biologics, concluding that formulation choices are not obvious and depend on empirical, case-specific optimization.

For sufficiency of disclosure, the judgment reconciled the breadth of claims with the extent of exemplification. While the specification enabled the sequence SEQ ID 1017 and its family, the court found enablement lacking for all 52 mimetic peptides in Table 6 and consequently narrowed the monopoly claim accordingly. The court interpreted Section 10(4) to require full enablement only of the exemplified sequence(s), not all possible embodiments claimed.

## Final Decision

The High Court set aside the rejection order, allowed Amgen’s appeal, and directed that the patent application should proceed to grant, subject to the amendment of independent claims restricting their scope to peptide sequences exemplified and enabled in the specification. The court thus granted patent protection limited to the specific therapeutic peptibody composition and method related to SEQ ID NO.459, accepting the existence of inventive step and synergy, and finding the disclosure sufficient for the exemplified sequences.

This judgment clarifies several principles in Indian patent law. First, it distinguishes between the mere use of a known process and the inventive adaptation of such a process for a specific biologic, holding the latter to be patentable when accompanied by tailored technical solutions. Second, it refines the test for synergy under Section 3(e), emphasizing empirical demonstration over rigid data comparisons. Third, the judgment sets a pragmatic standard for sufficiency of disclosure: exemplary enablement suffices for closely related sequences within a family, but wide genus claims require broader enablement. Finally, it confirms the Indian stance against hindsight mosaicing of prior arts for obviousness unless clear teaching or motivation exists linking disclosures.

Amgen Inc. Vs Assistant Controller of Patents:August 22, 2025: CMA (PT) No.28 of 2023  :2025:MHC:2096  :High Court of Judicature at Madras  :Senthilkumar Ramamoorthy  

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