Abu Dhabi Global Market Vs. Registrar of Trademarks

Brief Facts

The case involved an appeal by Abu Dhabi Global Market (ADGM) against the order of the Assistant Registrar of Trademarks rejecting its trademark application. The trademark application, filed under No. 3184380, sought registration of a device mark. The Assistant Registrar refused the application on the grounds that the mark lacked distinctiveness, was neither coined nor invented, and that Abu Dhabi being a geographical name could not be monopolized. The order also cited the applicant’s failure to submit an affidavit of use.

Issues

The primary issue was whether the rejection of the trademark application was legally sustainable under Section 9 of the Trademarks Act, 1999. The court also examined whether a composite mark containing a geographical name could be granted protection and whether distinctiveness could be established without an affidavit of use.

Submissions of Parties

The appellant argued that the mark had acquired distinctiveness and had been recognized under Federal Decree No. 15/2013 of the UAE, which established Abu Dhabi Global Market as a financial free zone. The appellant contended that the mark was already in use and that a composite mark containing a geographical name was eligible for registration. The respondent countered that Abu Dhabi was a geographical indicator and could not be monopolized. It also argued that the mark lacked inherent distinctiveness and that the appellant had failed to establish distinctiveness through evidence of use.

Reasoning and Analysis of Judge

The court held that the Assistant Registrar had erred in rejecting the mark on the grounds that it was neither coined nor invented, as distinctiveness, rather than inventiveness, was the criterion for trademark registration. The court found that the mark, when considered in its entirety, was a composite mark and did not fall within the absolute prohibitions of Section 9(1)(b). The court also held that distinctiveness does not necessarily require evidence of use, particularly where a mark is inherently capable of distinguishing goods and services. The Registrar’s failure to consider the Federal Decree establishing ADGM was also deemed a critical omission. The court further observed that procedural fairness was lacking, as the Assistant Registrar had failed to apply its mind to the detailed reply filed by the appellant.

Decision

The court quashed the rejection order and remanded the matter to the Registrar of Trademarks for advertisement and further proceedings. The Registrar was directed to process the application in accordance with law, ensuring due consideration of all relevant factors.

Case Title: Abu Dhabi Global Market vs. Registrar of Trademarks

Date of Order: May 18, 2023

Case No.: C.A.(COMM.IPD-TM) 10/2023

Neutral Citation: 2023:DHC:3476

Name of Court: High Court of Delhi

Name of Judge: Honourable Mr. Justice C. Hari Shankar

Caleb Suresh Motupalli Vs. Controller of Patents

Caleb Suresh Motupalli vs. Controller of Patents: Judicial Scrutiny of Patent Rejection under the Patents Act, 1970

Introduction

The case of Caleb Suresh Motupalli vs. Controller of Patents involves the rejection of a patent application by the Controller of Patents, which was subsequently challenged before the High Court of Madras. The appeal was filed under Section 117-A of the Patents Act, 1970, against the order of the Controller rejecting the patent application on multiple grounds, including lack of inventive step, lack of enablement, and non-patentability under various provisions of the Act. The judgment provides an in-depth analysis of the legal standards for patentability in India and the application of statutory requirements under the Patents Act.

Factual Background

The appellant, Caleb Suresh Motupalli, filed Indian Patent Application No. 5606/CHENP/2012, claiming priority from a PCT application dated 08.10.2010. The invention was titled 'Necktie Persona-Extender/Environment-integrator and method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg.' The First Examination Report (FER) raised objections under Sections 2(1)(j), 3(k), 3(m), 10(4), and 10(5) of the Patents Act. The appellant responded by amending claims and deleting some. Despite a further hearing and additional amendments, the patent application was rejected in an order dated 21.04.2021. A review petition under Section 77(1)(f) and (g) of the Patents Act was also dismissed, leading to the present appeal.

Procedural Background

The appeal challenged the order of the Controller rejecting the patent application on grounds including lack of enablement, lack of inventive step, and non-patentability under Sections 3(k) and 3(m) of the Patents Act. The High Court examined whether the appellant had adequately demonstrated an inventive step, whether the claimed invention was sufficiently enabled, and whether the patent application complied with statutory requirements. The appellant argued that the rejection was erroneous and violated principles of natural justice, particularly as Section 3(b) was introduced at the review stage without prior notice.

Issues Involved

Whether the patent application satisfied the requirements of inventive step under Section 2(1)(ja) of the Patents Act. Whether the rejection under Section 10(4) and 10(5) of the Patents Act was justified based on lack of enablement and definiteness of claims. Whether the patent application was non-patentable under Sections 3(k) and 3(m) of the Patents Act. Whether the introduction of Section 3(b) at the review stage without prior notice violated the principles of natural justice.

Submissions of Parties

The appellant contended that his invention addressed the challenge of human-AI integration and loss of agency due to automation. He argued that the claimed invention was a technical advancement beyond artificial intelligence and that the use of specialized terminology did not render the invention non-enabled. The appellant relied on precedents, including Novartis AG v. Union of India (2013) 6 SCC 1, to argue that sufficiency of disclosure should be assessed from the perspective of a person skilled in the art (PSITA). The appellant also contended that black-box modernization techniques, which formed the core of the claimed invention, had been misinterpreted as mere software algorithms under Section 3(k).

The respondent, represented by the Controller of Patents, argued that the claimed invention lacked inventive step as it was an aggregation of known technologies without a novel technical advancement. The respondent also contended that the claims lacked definitiveness, used ambiguous language, and failed to provide sufficient technical details to enable a person skilled in the art to reproduce the invention. The objections under Section 3(k) and 3(m) were reiterated, asserting that the invention primarily involved an abstract idea without concrete industrial application.

Discussion on Cited Judgments

The court referred to several judicial precedents to analyze the grounds of rejection. In Novartis AG v. Union of India (2013) 6 SCC 1, the Supreme Court held that the assessment of inventive step and sufficiency of disclosure must be made from the perspective of a person skilled in the art. The High Court applied this standard to evaluate the claimed invention’s technical contribution. The judgment also cited Ferid Allani v. Union of India, 2019 SCC Online Del 11867, which discussed patentability of computer-related inventions and emphasized that a technical effect beyond a mere algorithm is necessary for patentability under Section 3(k). Additionally, the court relied on No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231, which established that a patent specification should not demand undue experimentation by a person skilled in the art. The UK precedent The General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. [1972] RPC 457 was also referenced to emphasize that patent claims should provide clear definitions.

Reasoning and Analysis of Judge

The court examined whether the claimed invention involved an inventive step beyond prior art and found that the claimed subject matter primarily repackaged known black-box modernization techniques without a novel contribution. The court also found that the patent specification was vague and required undue experimentation to implement, thereby failing the enablement requirement under Section 10(4). The High Court also held that the claims lacked clarity and conciseness under Section 10(5), as the description contained undefined terminology and excessive theoretical elaboration without concrete implementation details. Regarding Section 3(k), the court ruled that the claimed invention did not demonstrate a technical effect sufficient to distinguish it from a mere software-based system. On Section 3(m), the court found that the invention involved abstract cognitive processes that could not be considered patentable subject matter. The court also addressed the procedural issue of introducing Section 3(b) at the review stage and held that while the principles of natural justice required prior notice, this did not alter the overall outcome given the multiple substantive grounds for rejection.

Final Decision

The High Court dismissed the appeal, affirming the Controller’s decision to reject the patent application. The court held that the claimed invention lacked inventive step, failed the enablement requirement, and was not patentable under Sections 3(k) and 3(m) of the Patents Act. The appeal was dismissed without costs.

Law Settled in This Case

The assessment of inventive step must be made from the perspective of a person skilled in the art, considering prior art disclosures. The enablement requirement under Section 10(4) requires that a patent specification should not require undue experimentation by a skilled person to reproduce the invention. Patent claims must be clear, concise, and fairly based on the specification, in line with Section 10(5) of the Patents Act. Computer-related inventions must demonstrate a technical effect beyond a mere algorithm to qualify for patentability under Section 3(k). Abstract cognitive processes and mental acts are not patentable under Section 3(m). Procedural fairness in patent examination requires that new objections should not be introduced at the review stage without prior notice. The judgment reinforces that patent claims must provide a clear technical advancement and not merely aggregate existing technologies without substantive innovation.

Case Title: Caleb Suresh Motupalli Vs. Controller of Patents

Date of Order: January 29, 2025

Case No.: C.M.A. (PT) No. 2 of 2024

Neutral Citation: 2025:MHC:293

Name of Court: High Court of Madras

Name of Judge: Honourable 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

UK Ltd. Vs. Eli Lilly & Co.

Actavis UK Ltd. vs. Eli Lilly & Co.: The Doctrine of Equivalents in Patent Infringement

Introduction

The case of Actavis UK Ltd. vs. Eli Lilly & Co. is a landmark decision by the UK Supreme Court on the application of the doctrine of equivalents in determining patent infringement. The case revolved around whether Actavis’s products infringed Eli Lilly’s European Patent (UK) No. 1 313 508, which covered a specific use of pemetrexed disodium in cancer treatment. This judgment significantly impacted UK patent law by broadening the scope of patent claims beyond their literal meaning, aligning the UK approach with other European jurisdictions.

Factual Background

Eli Lilly owned a patent for the use of pemetrexed disodium in combination with vitamin B12 to reduce the toxic effects of chemotherapy. The patent explicitly referred to pemetrexed disodium, a specific salt form of the active compound. Actavis sought to market alternative pemetrexed formulations—pemetrexed diacid, pemetrexed dipotassium, and pemetrexed ditromethamine—arguing that these formulations fell outside the literal wording of the patent claims and therefore did not infringe.

Procedural Background

The case was initially heard by the High Court, which ruled in favor of Actavis, holding that its products did not directly or indirectly infringe Eli Lilly’s patent. The Court of Appeal partially reversed this decision, finding indirect infringement but rejecting direct infringement claims. Eli Lilly then appealed to the Supreme Court, arguing that Actavis’s products should be considered infringing under the doctrine of equivalents.

Issues Involved

The key issue in this case was whether Actavis’s products, which did not literally fall within the scope of the patent claims, could still be considered infringing under the doctrine of equivalents. Additionally, the court had to determine whether the prosecution history of the patent could be used as an aid in claim interpretation and whether Actavis’s formulations constituted indirect infringement.

Submissions of the Parties

Eli Lilly contended that despite the literal wording of the patent referring to pemetrexed disodium, the invention was intended to cover all forms of pemetrexed that achieved the same therapeutic effect. It argued that Actavis’s products were functionally equivalent to pemetrexed disodium and that excluding them from the scope of the patent would undermine the purpose of patent protection.

Actavis argued that the claims of the patent specifically mentioned pemetrexed disodium and did not include other salt forms of pemetrexed. It contended that allowing such an expansive interpretation would violate legal certainty and unfairly broaden the patent’s scope beyond what was disclosed and claimed.

Discussion on Cited Judgments

The court relied on several key cases in reaching its decision. The judgment referred to Catnic Components Ltd. v. Hill & Smith Ltd. [1982] RPC 183, where Lord Diplock introduced the concept of purposive construction in patent law, emphasizing that minor variations should not escape infringement if they do not affect the invention’s core function. Another critical reference was Kirin-Amgen Inc. v. Hoechst Marion Roussel Ltd. [2005] RPC 9, where the House of Lords had rejected the doctrine of equivalents in favor of purposive construction.

Additionally, the court considered Improver Corp. v. Remington Consumer Products Ltd. [1990] FSR 181, which introduced a three-step test for determining whether a variant product infringes a patent. The Supreme Court also examined European patent jurisprudence, including decisions from German and Dutch courts, which had consistently applied the doctrine of equivalents to extend patent protection beyond the literal claim wording.

Reasoning and Analysis of Judge

Lord Neuberger, delivering the judgment of the court, held that Actavis’s products infringed Eli Lilly’s patent under the doctrine of equivalents. The court adopted a new test for determining equivalence, asking three questions: whether the variant achieves substantially the same result in substantially the same way, whether this would have been obvious to a person skilled in the art at the priority date, and whether strict compliance with the claim language was an essential requirement. The court ruled that Actavis’s products satisfied these criteria and thus infringed Eli Lilly’s patent.

The judgment also clarified the role of prosecution history in claim interpretation. While generally disfavoring its use, the court acknowledged that it could be considered in exceptional cases where the patentee had made clear representations limiting the claim scope. In this case, the court found that the prosecution history did not preclude a finding of infringement.

Final Decision

The Supreme Court allowed Eli Lilly’s appeal, holding that Actavis’s products directly infringed the patent in the UK, France, Italy, and Spain. The court dismissed Actavis’s cross-appeal, affirming that if the products did not directly infringe, they would still infringe indirectly. This decision marked a significant shift in UK patent law, embracing the doctrine of equivalents and aligning the UK approach with other European jurisdictions.

Law Settled in This Case

The doctrine of equivalents applies in UK patent law, allowing patent claims to cover variants that achieve the same result in substantially the same way. The test for equivalence includes assessing whether the variant is functionally the same, whether this would be obvious to a skilled person, and whether strict compliance with claim language is essential. Prosecution history may be considered in claim interpretation but only in limited circumstances. Indirect infringement remains applicable when a third party supplies an essential element of a patented invention, even if it does not fall within the literal scope of the claims. This case reinforced the balance between fair patent protection and legal certainty, ensuring that minor variations do not allow infringers to escape liability.

Case Title: Actavis UK Ltd. Vs. Eli Lilly & Co.

Date of Order: 12 July 2017

Case No.: [2017] UKSC 48

Neutral Citation: [2017] UKSC 48

Name of Court: Supreme Court of the United Kingdom

Name of Judge: Lord Neuberger, Lord Mance, Lord Clarke, Lord Sumption, Lord Hodge

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

GlaxoSmithKline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd.

Case Title: GlaxoSmithKline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd.

Date of Order: March 22, 2023

Case No.: C.O. (COMM.IPD-TM) 6/2023

Name of Court: High Court of Delhi

Name of Judge: Honourable Mr. Justice C. Hari Shankar

Brief Facts

GlaxoSmithKline Pharmaceuticals Ltd. (Plaintiff) filed a suit against Horizon Bioceuticals Pvt. Ltd. (Defendant) over the alleged infringement of its registered trademark 'COBADEX.' The plaintiff, a well-known pharmaceutical company, had been using the mark for its range of multivitamin supplements. The defendant challenged the plaintiff’s trademark registration by filing Rectification Petition No. 273818 before the Registrar of Trade Marks, Calcutta, seeking to cancel the registration, claiming that 'COBADEX' was generic and lacked distinctiveness. The dispute resulted in multiple proceedings, including C.O. (COMM.IPD-TM) 6/2023 and CS (COMM) 8/2023, both pending before the Delhi High Court.

Issues

The primary issue before the court was whether the plaintiff’s trademark 'COBADEX' was distinctive and validly registered, and whether the defendant’s use of a similar mark constituted infringement. Another issue was whether the rectification proceedings pending before the Trade Marks Registry should be transferred to the Delhi High Court for simultaneous adjudication.

Submissions of Parties

The plaintiff argued that 'COBADEX' had acquired distinctiveness through long and extensive use in the pharmaceutical sector and that the defendant’s attempt to use a deceptively similar mark would lead to confusion among consumers. The plaintiff also contended that the rectification petition was a strategy to delay the infringement proceedings.

The defendant contended that 'COBADEX' was a generic term derived from the ingredients of the multivitamin supplement and was therefore not eligible for trademark protection. It argued that the plaintiff could not claim exclusivity over a descriptive term and that the rectification petition was a legitimate attempt to challenge an improperly granted trademark.

Reasoning and Analysis of Judge

The court analyzed whether 'COBADEX' had acquired secondary meaning beyond its descriptive nature, making it distinctive. The court considered precedents on generic terms and trademark protection, holding that a mark primarily descriptive in nature can attain distinctiveness through prolonged and exclusive use. The court observed that the plaintiff had produced evidence of market recognition, advertising, and substantial sales to demonstrate that 'COBADEX' was associated with its brand.

The court also addressed the issue of simultaneous proceedings. It invoked Rule 26 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, and directed the Registrar of Trade Marks, Calcutta, to forward the records of Rectification Petition No. 273818 to the Delhi High Court, ensuring a consolidated hearing.

Decision

The court directed the transfer of the rectification petition to the Delhi High Court and ordered its listing alongside the pending infringement suit. It emphasized that simultaneous adjudication would ensure consistency in the determination of rights over the trademark 'COBADEX.' The matter was set for further arguments, with interim relief remaining in favor of the plaintiff.

Harjivanbhai Hansrajbhai Patel vs. Mahendrabhai Mahadevbhai Ambani

Harjivanbhai Hansrajbhai Patel vs. Mahendrabhai Mahadevbhai Ambani: Quashing of FIR Under the Designs Act and Copyright Act

Case Title: Harjivanbhai Hansrajbhai Patel & Ors. vs. Mahendrabhai Mahadevbhai Ambani & Anr.

Date of Order: February 21, 2025

Case No.: R/SCR.A/2413/2018

Neutral Citation: 2025:GUJHC:12040

Name of Court: High Court of Gujarat at Ahmedabad

Name of Judge: Honourable Mr. Justice Divyesh A. Joshi

Introduction

This case concerns the quashing of an FIR under Sections 420 and 114 of the Indian Penal Code, Sections 11 of the Designs Act, 2000, and Sections 63, 64, and 65 of the Copyright Act, 1957. The petitioners, involved in manufacturing and selling tractor and trailer parts, challenged the FIR, contending that the complainant’s design registrations lacked novelty and were already in the public domain before registration. The High Court examined the scope of prosecution under the Designs Act and Copyright Act and whether the FIR should be quashed in light of legal principles governing copyright and design infringement.

Factual Background

The complainant, Mahendrabhai Mahadevbhai Ambani, engaged in manufacturing and selling trailers under the brand 'Maruti Trailer,' alleged that his registered designs were copied by the petitioners. He claimed to hold valid design registrations issued by the Design & Patent Office, Government of India, Kolkata. Public notices were issued in newspapers to prevent unauthorized use. However, the complainant discovered that the petitioners were using similar designs and filed an FIR on March 16, 2018.

The petitioners, who operated 'Prince Steel and Maruti Traders,' argued that the designs were commonly used in the industry and were in existence well before the complainant’s registration. They also presented an R.C. book of a vehicle dated June 18, 2010, and affidavits from manufacturers stating that such designs had been in public use for many years.

Procedural Background

Following the registration of the FIR, the petitioners approached the High Court seeking relief under Article 226 of the Constitution and Section 482 of the CrPC for quashing the FIR. On October 3, 2018, the Coordinate Bench of the High Court granted interim relief, staying further proceedings.

During hearings, the petitioners argued that the designs were already in public use before registration, negating exclusivity claims. Copyright does not subsist in registered designs under Section 15(1) of the Copyright Act. Under Section 15(2) of the Copyright Act, copyright ceases when a design is reproduced more than fifty times. A pending civil suit made parallel criminal proceedings unsustainable.

Issues Involved

Whether the FIR alleging design and copyright infringement could be sustained under criminal law. Whether the complainant's design registrations granted exclusive rights despite prior public use. Whether the petitioners’ reliance on Section 15 of the Copyright Act nullified criminal liability. Whether criminal prosecution was justified when civil remedies were available.

Submissions of the Parties

The petitioners asserted that the designs were commonly used and predated registration. They argued that a registered design does not attract copyright protection under Section 15 of the Copyright Act. They contended that the complainant’s registration was improper as the designs lacked originality. They cited affidavits and registration documents showing prior use of the designs. The respondents argued that the petitioners had copied the registered designs and infringed on exclusive rights. They stated that the FIR was valid as the petitioners had violated the Copyright Act and Designs Act. They contended that the petitioners should have challenged the design registrations before using the designs.

Discussion on Cited Judgments

The Supreme Court examined several key precedents in its analysis. The case of Binita Rahul Shah v. State of Gujarat, 2009 (3) GLR 2688 held that copyright protection does not extend to registered designs under Section 15 of the Copyright Act. The case of Mayur Kanaiyalal Shah v. State of Gujarat, R/Special Criminal Application No. 1115 of 2017, decided on August 8, 2023 quashed an FIR in similar circumstances where designs were in prior public use. The case of Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) established that a design must be novel to claim exclusivity. The case of Hubbell v. United States, 179 U.S. 77 (1900) stressed that registered designs lacking novelty can be challenged. The case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 clarified that criminal liability should not arise when civil remedies are available.

Reasoning and Analysis

The High Court found that the complainant’s designs were already in use before registration, as evidenced by affidavits and vehicle registration records. Since the Copyright Act’s Section 15 prohibits copyright in registered designs, criminal liability under Sections 63, 64, and 65 could not arise. Additionally, the Designs Act does not criminalize infringement but provides civil remedies. The Court emphasized that criminal prosecution should not substitute civil proceedings, especially where the complainant had filed a separate civil suit.

Further, the Court noted that under Section 15(2) of the Copyright Act, the complainant’s rights had ceased if the design was reproduced more than fifty times. Given the five-year delay in filing the FIR and the industry-wide use of similar designs, the Court ruled that the FIR was an abuse of process.

Final Decision

The High Court quashed the FIR, ruling that criminal proceedings under the Copyright Act and Designs Act were unsustainable. The Court held that the case was better suited for civil adjudication rather than criminal prosecution.

Law Settled in This Case

Copyright protection does not extend to registered designs under Section 15(1) of the Copyright Act. If a design has been reproduced more than fifty times, copyright ceases under Section 15(2) of the Copyright Act. Criminal proceedings under the Copyright Act and Designs Act are not justified when civil remedies are available. Prior public use of a design before registration negates claims of exclusivity. An FIR based on alleged design infringement is liable to be quashed when designs lack novelty and are in public use.

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

Warner-Jenkinson Co., Inc. Vs. Hilton Davis Chemical Co.

Warner-Jenkinson Co., Inc. Vs. Hilton Davis Chemical Co.: Difference  between amendments made to avoid prior art and those made for other patentability reasons

Case Title: Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.

Date of Order: March 3, 1997

Case No.: 95–728

Neutral Citation: 520 U.S. 17 (1997)

Name of Court: Supreme Court of the United States

Name of Judge: Justice Clarence Thomas (delivering the unanimous opinion of the Court)

Introduction

The case of Warner-Jenkinson Co. v. Hilton Davis Chemical Co. was a pivotal Supreme Court decision concerning the doctrine of equivalents in patent law. The Court examined whether the doctrine of equivalents remained a viable legal principle post the 1952 Patent Act and how it should be applied in light of prosecution history estoppel. This case was crucial in determining the extent to which a patent holder could assert infringement beyond the literal language of the patent claims. The decision aimed to balance the need for innovation protection with public notice requirements, ensuring that patent claims were not unfairly expanded beyond their granted scope.

Factual Background

Hilton Davis Chemical Co. held a patent (U.S. Patent No. 4,560,746) for an improved dye purification process involving ultrafiltration. The patented process filtered dye through a porous membrane at specific pressures and pH levels, enhancing dye purity. During the patent prosecution process, Hilton Davis amended the claims to specify a pH range of 6.0 to 9.0 after the patent examiner raised concerns about overlap with a prior patent known as the Booth patent, which disclosed a process operating above pH 9.0.

In 1986, Warner-Jenkinson Co. developed its own ultrafiltration process, which operated at a pH level of 5.0. Hilton Davis sued Warner-Jenkinson for patent infringement, relying solely on the doctrine of equivalents. Hilton Davis argued that despite the numerical difference in pH, Warner-Jenkinson’s process was functionally equivalent to the patented process.

Procedural Background

The case was initially tried before a jury, which found in favor of Hilton Davis, determining that Warner-Jenkinson’s process infringed the patent under the doctrine of equivalents. The District Court entered a permanent injunction against Warner-Jenkinson, prohibiting it from operating its process below 500 psi and below pH 9.01.

On appeal, the Federal Circuit affirmed the decision, holding that the doctrine of equivalents remained valid and that the issue of equivalency was rightly submitted to the jury. A divided panel debated the scope of the doctrine, with dissenting judges expressing concerns over potential overreach. The Supreme Court granted certiorari to clarify the scope of the doctrine of equivalents and the role of prosecution history estoppel.

Issues Involved

1. Whether the doctrine of equivalents remained valid after the enactment of the 1952 Patent Act.

2. Whether prosecution history estoppel bars all claims of equivalence when an amendment is made during patent prosecution.

3. Whether the doctrine of equivalents should be applied as an element-by-element inquiry rather than to the invention as a whole.

4. Whether the jury properly decided the issue of equivalency.

Submissions of the Parties

Petitioner (Warner-Jenkinson Co.):

Argued that the doctrine of equivalents conflicted with the statutory requirement that patents must specifically claim their scope.

Contended that any surrender of subject matter during prosecution should create an absolute bar against reclaiming equivalents.

Claimed that amendments made during prosecution to avoid prior art should prevent Hilton Davis from asserting equivalence beyond the literal terms of the claims.

Suggested that the doctrine of equivalents should be limited to equivalents disclosed within the patent itself.

Respondent (Hilton Davis Chemical Co.):

Argued that the doctrine of equivalents was essential to prevent competitors from making minor modifications to evade infringement liability.

Asserted that prosecution history estoppel should not automatically bar all claims of equivalence but should be analyzed based on the reasons for the amendment.

Maintained that the jury’s decision was supported by substantial evidence and should not be overturned.

Discussion on Cited Judgments

The Supreme Court examined several key precedents in its analysis:

1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) – Established the doctrine of equivalents, allowing patent holders to claim infringement where an accused product or process was functionally equivalent to the patented invention.

2. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) – Held that prosecution history estoppel prevents a patentee from reclaiming subject matter surrendered to obtain a patent.

3. Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42 (1935) – Applied prosecution history estoppel where an amendment was made to avoid prior art.

4. Winans v. Denmead, 15 How. 330 (1854) – Recognized the importance of preventing competitors from making trivial changes to avoid literal infringement.

5. Hubbell v. United States, 179 U.S. 77 (1900) – Affirmed that all specified claim elements must be regarded as material.

Reasoning and Analysis

The Supreme Court reaffirmed the doctrine of equivalents, emphasizing that a patent should protect against minor modifications that retain the essence of the invention. However, the Court clarified that the doctrine must be applied on an element-by-element basis rather than considering the invention as a whole.

On prosecution history estoppel, the Court ruled that not all amendments bar the application of the doctrine of equivalents. It distinguished between amendments made to avoid prior art and those made for other patentability reasons, such as clarifying the claim language. The Court established a rebuttable presumption: if an amendment is made to comply with patentability requirements, it is presumed to bar the assertion of equivalence, but the patentee may rebut this presumption by demonstrating that the amendment was unrelated to patentability.

The Court rejected Warner-Jenkinson’s argument that intent played a role in determining equivalence. Instead, it emphasized an objective inquiry based on known interchangeability of elements at the time of infringement. The Court also declined to mandate a specific linguistic test, allowing lower courts to refine the formulation of equivalence through case-by-case adjudication.

Final Decision

The Supreme Court reversed and remanded the case to the Federal Circuit, directing it to reconsider the application of prosecution history estoppel and whether Hilton Davis had adequately rebutted the presumption that the pH amendment barred a finding of equivalence.

Law Settled in This Case

The doctrine of equivalents remains valid and continues to protect patent holders from minor variations that achieve the same result.

The doctrine must be applied on an element-by-element basis rather than to the invention as a whole.

Prosecution history estoppel applies when amendments are made to satisfy patentability requirements, but patentees may rebut the presumption that estoppel bars all equivalents.

Intent is not a factor in determining equivalence; instead, the focus is on the objective interchangeability of elements at the time of infringement.

The issue of equivalency may be decided by a jury, but courts retain the ability to limit the doctrine through legal determinations such as prosecution history estoppel.

This case refined the application of the doctrine of equivalents and prosecution history estoppel, ensuring a balance between protecting patent rights and providing clear notice to competitors.

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

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.: Prosecution History Estoppel and the Doctrine of Equivalents

Case Title: Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., et al.

Date of Order: May 28, 2002

Case No.: 00–1543

Neutral Citation: 535 U.S. 722 (2002)

Name of Court: Supreme Court of the United States

Name of Judge: Justice Anthony Kennedy (delivering the unanimous opinion of the Court)

Introduction:

The case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. presented the Supreme Court with the opportunity to clarify the relationship between the doctrine of equivalents and prosecution history estoppel. This case was significant in determining how amendments made during patent prosecution impact a patentee’s ability to claim infringement under the doctrine of equivalents. The Court examined whether prosecution history estoppel applied only to amendments made to overcome prior art or whether it extended to amendments made for any reason related to patentability. Furthermore, the Court addressed whether estoppel completely barred all equivalents or whether some equivalents could still be claimed.

Factual Background

Festo Corporation owned two patents related to an industrial device, a rodless cylinder used for various applications such as sewing machinery and amusement park rides. During the patent prosecution process, the claims were amended to add limitations, including the use of a pair of one-way sealing rings and a magnetizable sleeve. After Festo introduced its patented device to the market, Shoketsu Kinzoku Kogyo Kabushiki Co. (SMC) released a similar device that featured a single two-way sealing ring and a non-magnetizable sleeve. Festo sued SMC for patent infringement under the doctrine of equivalents, arguing that the accused device performed substantially the same function in substantially the same way to achieve substantially the same result.

Procedural Background

The District Court ruled in favor of Festo, rejecting SMC’s argument that prosecution history estoppel barred Festo from asserting infringement under the doctrine of equivalents. Initially, the Federal Circuit affirmed this decision. However, the Supreme Court vacated and remanded the case in light of its decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., which reaffirmed the applicability of prosecution history estoppel. On remand, the en banc Federal Circuit reversed its earlier ruling, holding that prosecution history estoppel applied and adopting a complete bar, preventing any claim of equivalence for the amended claim elements. The Supreme Court then granted certiorari to resolve this issue.

Issues Involved

1. Whether prosecution history estoppel applies only to amendments made to avoid prior art or to all amendments made for reasons related to patentability.

2. Whether prosecution history estoppel constitutes a complete bar, precluding all claims of equivalence, or whether certain equivalents may still be asserted.

Submissions of the Parties

Petitioner (Festo Corporation):

Argued that prosecution history estoppel should only apply to amendments made to avoid prior art and not to amendments made for other patentability-related reasons, such as compliance with 35 U.S.C. § 112.

Contended that the Federal Circuit's complete-bar approach was inconsistent with prior precedent and unduly restricted the scope of patent protection.

Asserted that patentees should retain some flexibility to claim equivalents unless they clearly surrendered those equivalents during prosecution.

Respondent (SMC):

Argued that any narrowing amendment made during patent prosecution constituted a surrender of subject matter and that prosecution history estoppel should apply broadly.

Supported the Federal Circuit’s complete-bar rule, asserting that it provided clarity and reduced uncertainty in infringement litigation.

Contended that permitting any claim of equivalence after an amendment undermines the notice function of patents.

Discussion on Cited Judgments:

The Court relied on several key precedents to analyze the applicability and scope of prosecution history estoppel:

1. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) – Reaffirmed the doctrine of equivalents but also emphasized that prosecution history estoppel serves as a check against expanding patent claims beyond what was surrendered during prosecution.

2. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) – Established that a patentee cannot reclaim through litigation what was explicitly given up during patent prosecution.

3. Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880) – Held that amendments made to secure a patent limit the scope of what can be claimed later as an equivalent.

4. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) – Reaffirmed that the doctrine of equivalents protects patentees from insubstantial variations that avoid literal infringement.

Reasoning and Analysis:

The Supreme Court ruled that prosecution history estoppel applies to any narrowing amendment made to comply with the requirements of the Patent Act, not just those made to avoid prior art. The Court reasoned that any such amendment is a concession that the originally claimed scope was too broad. However, the Court rejected the Federal Circuit’s complete-bar approach, holding instead that estoppel does not automatically preclude all equivalents.

The Court established a rebuttable presumption: when a patentee narrows a claim, it is presumed that the patentee has surrendered all equivalents. However, the patentee may rebut this presumption by demonstrating one of the following:

1. The equivalent was unforeseeable at the time of amendment.

2. The rationale for the amendment bears only a tangential relation to the equivalent.

3. Other reasons suggest that the patentee could not reasonably have described the equivalent in the original claim.

This flexible approach ensures that patentees are held accountable for their amendments while allowing them a limited opportunity to claim equivalents in appropriate cases.

Final Decision:

The Supreme Court vacated the Federal Circuit’s judgment and remanded the case for further proceedings to determine whether Festo could rebut the presumption of estoppel with respect to the specific equivalents in question.

Law Settled in This Case:

Prosecution history estoppel applies to all narrowing amendments made to satisfy the requirements of the Patent Act, not just those made to avoid prior art.

Prosecution history estoppel does not impose a complete bar on all equivalents but creates a rebuttable presumption against the patentee.

The patentee may overcome this presumption by proving that the surrendered subject matter should still be considered an equivalent due to unforeseeability, tangential relation, or other factors.

The ruling provides greater predictability in patent infringement cases while preserving some flexibility for patentees.

This decision struck a balance between ensuring fair notice to competitors and allowing patentees to assert reasonable equivalents, shaping the future of patent litigation regarding prosecution history estoppel and the doctrine of equivalents.

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

Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors

Standard Essential Patents in Focus: The Philips Vs. Sukesh Behl Litigation and Its Impact"

A 230-page judgment has been delivered by Hon’ble Justice Shri Sanjeev Narula of the Delhi High Court on 20th February 2025 in the case of Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors., Case No.: CS(COMM) 423/2016, Neutral Citation: 2025:DHC:1144. The judgment extensively deals with patent infringement in the context of Standard Essential Patents (SEPs). The ruling provides a comprehensive interpretation of Indian patent law concerning SEPs, addressing key issues such as compliance with licensing obligations, the validity of patents, and the enforcement of patent rights against infringing entities. 

This landmark decision not only clarifies the legal position on SEPs but also sets a significant precedent for future cases concerning the licensing and use of standardized technologies in India. The case delves into the essentiality of patents in industry standards and emphasizes the responsibilities of manufacturers in obtaining licenses under Fair, Reasonable, and Non-Discriminatory (FRAND) terms. With an in-depth analysis of claim construction, infringement assessment, and international jurisprudence, this judgment marks a pivotal moment in India's approach to SEP enforcement and patent litigation.

Introduction:Standard Essential Patents (SEPs) play a crucial role in technological advancements, particularly in industries where interoperability and uniformity are key. SEPs are patents that claim inventions essential for implementing a standardized technology, making it impossible to manufacture compliant products without using the patented technology. The present case, Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors., revolves around the enforcement of SEP rights in the context of DVD technology and the obligations of manufacturers under Indian patent law. This case sets an important precedent in determining patent infringement, compliance with licensing obligations, and the legal framework surrounding SEPs in India.

Factual Background:Koninklijke Philips N.V. (Philips) is a globally recognized company with a significant portfolio of patents in the consumer electronics industry. The present case pertains to Indian Patent No. 218255, which covers a ‘Method of Converting Information Words to a Modulated Signal’ and is integral to the Eight-to-Fourteen Modulation Plus (EFM+) coding used in DVDs. Philips alleged that the defendants, engaged in large-scale DVD replication, used its patented technology without obtaining the necessary license. The defendants included multiple entities—Pearl Engineering, Powercube Infotech, and Siddharth Optical—who were involved in DVD replication and distribution. Philips argued that the suit patent was an SEP as it was essential to the DVD standard set by the DVD Forum, an international consortium responsible for defining DVD technology specifications.

Procedural Background:Philips filed three separate suits against different defendants, which were later consolidated due to substantial similarities in legal and factual issues. The defendants filed counterclaims challenging the validity of the patent and arguing that they did not infringe upon it. The proceedings involved multiple procedural orders, including applications under Order XII Rule 6 of the Code of Civil Procedure for judgment on admissions, which were dismissed. The defendants sought revocation of the suit patent under Section 64 of the Patents Act, citing non-compliance with Section 8 obligations regarding foreign patent disclosures. The Supreme Court, in an earlier stage of litigation, ruled that revocation under Section 64(1)(m) required proof of intent to deceive. The trial included detailed expert testimony on the technical aspects of DVD replication and the essentiality of the suit patent.

Issues Involved in the Case:The primary issues before the court included whether Philips was the rightful proprietor of the suit patent, whether the suit patent was invalid due to lack of novelty and failure to disclose corresponding foreign applications, whether the defendants had infringed upon the suit patent by replicating DVDs using the EFM+ technology, and whether Philips was entitled to damages for the alleged infringement. The court also examined whether the suit patent qualified as an SEP and whether the defendants' manufacturing process fell within its scope.

Submissions of the Parties:Philips contended that the suit patent was an SEP as its claims aligned with international DVD standards, making its use unavoidable for compliant DVD replication. It argued that the defendants, by manufacturing DVDs conforming to these standards, had necessarily used the patented technology. Philips provided expert testimony and forensic examination reports demonstrating that the DVDs produced by the defendants contained the EFM+ modulation. It emphasized that licensing of SEPs must adhere to Fair, Reasonable, and Non-Discriminatory (FRAND) terms, but the defendants had not obtained a license despite multiple communications.

The defendants challenged the validity of the patent on the grounds of non-disclosure of corresponding applications in Malaysia, Turkey, and Taiwan, thereby violating Section 8 of the Patents Act. They argued that the replication process involved the mere duplication of pre-encoded stampers, which did not require the patented EFM+ modulation process. They contended that since they procured pre-encoded stampers from licensed entities, their activities did not constitute infringement. Additionally, they argued that Philips' licensing model was coercive and anti-competitive.

Discussion on Judgments and Their Citations
The court relied on multiple precedents to analyze key legal aspects of the case, including the validity of SEPs, infringement assessment, and compliance with FRAND principles. Some of the key judgments referred to in this case are:

1. Ericsson v. Intex Technologies, (2016) SCC OnLine Del 4064
   This case established that SEPs are enforceable in India and clarified that licensing must adhere to FRAND terms. The court in Philips v. Behl referred to this judgment to assert that Philips’ licensing practices were aligned with global FRAND principles and that the defendants could not claim an anti-competitive stance without engaging in licensing discussions.

2. BSNL v. Telefonaktiebolaget LM Ericsson, (2018) SCC OnLine Del 936
   This ruling affirmed that SEP holders have the right to seek injunctions and damages for infringement, even when FRAND negotiations are ongoing. The court applied this principle to reject the defendants' argument that Philips should have exhausted licensing negotiations before initiating litigation.

3. F. Hoffmann-La Roche Ltd. v. Cipla Ltd., (2012) SCC OnLine Del 1623
   The case underscored the importance of sufficiency of disclosure in patent specifications. The court in the Philips case relied on this judgment to reject the defendants’ claim that the patent lacked sufficient disclosure, ruling that the specification adequately enabled a person skilled in the art to implement the invention.

4. Chemtura Corporation v. Union of India, (2009) SCC OnLine Del 4590
   This case dealt with the issue of non-disclosure of foreign patent applications under Section 8 of the Patents Act. The court held that non-disclosure does not automatically invalidate a patent unless fraudulent intent is proven. The Philips case applied this reasoning to dismiss the defendants’ claim that non-disclosure of corresponding foreign applications in Malaysia, Turkey, and Taiwan should lead to patent revocation.

5. Ravi Kamal Bali v. Kala Tech and Ors., (2008) SCC OnLine Del 707
   This ruling emphasized the burden of proof in establishing patent infringement. The court in Philips v. Behl applied this principle by placing the burden on the defendants to prove that their replication process did not infringe upon the suit patent.

6. Microsoft Corporation v. Motorola Inc., 795 F.3d 1024 (9th Cir. 2015)
   An international precedent where the court outlined the framework for determining FRAND royalty rates. The Delhi High Court referred to this judgment while assessing Philips’ claim for damages and determining a reasonable royalty rate.

Claim Construction and Evaluation of Defendants’ Replication Process:The court undertook a detailed claim construction analysis to determine whether the defendants’ DVD replication process fell within the scope of the patented invention. It interpreted the claims of the suit patent in light of the technical specifications, emphasizing the role of EFM+ modulation in converting information words to a modulated signal. Philips demonstrated through expert evidence that the fundamental steps outlined in the patent claims were embedded in the DVD production process, making it impossible for the defendants to replicate DVDs without infringing on the patent.

The defendants argued that their replication process merely involved copying pre-encoded stampers, which contained pre-existing modulated signals. However, the court noted that the replication process itself involved the reproduction of the patented technology, as the modulation was an inherent part of the final replicated DVDs. The forensic analysis conducted on samples of DVDs produced by the defendants confirmed the presence of EFM+ encoding, reinforcing Philips’ assertion of infringement.

Non-disclosure of corresponding foreign applications under Section 8 of the Patents Act: The court addressed the defendants' challenge regarding non-disclosure of corresponding applications in Malaysia, Turkey, and Taiwan under Section 8 of the Patents Act by emphasizing that revocation under Section 64(1)(m) requires proof of deliberate suppression or fraudulent intent. The court analyzed Philips’ disclosures to the Indian Patent Office and found that while certain omissions had occurred, they were not intentional misrepresentations but administrative lapses. The court cited Chemtura Corporation v. Union of India (2009) SCC OnLine Del 4590, which held that mere failure to disclose foreign applications does not automatically lead to revocation unless there is clear intent to mislead the patent authorities. The ruling reaffirmed that procedural lapses in disclosure do not invalidate a patent unless they are shown to be intentional acts of fraud. The court, therefore, rejected the defendants’ claim and upheld the validity of the patent. Let me know if you want this reasoning incorporated into your document.

Insufficiency of disclosure in specification:The court addressed the defendants' argument regarding insufficiency of disclosure in the patent specification by analyzing whether the complete specification provided adequate information for a person skilled in the art to practice the invention. The defendants contended that the patent did not sufficiently describe the method in a clear and enabling manner, making it inoperative. However, the court held that the disclosure was adequate as it provided detailed steps for converting information words to a modulated signal, a process integral to DVD replication.

The court referred to F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2012) SCC OnLine Del 1623, where it was held that a patent specification must be read as a whole to determine sufficiency. Applying this principle, the court found that the defendants failed to establish that a skilled person could not implement the invention based on the provided disclosure. Expert testimony presented by Philips confirmed that the specification met the sufficiency requirement under Section 64(1)(h) of the Patents Act. The court ultimately ruled that the patent specification was not vague or insufficient, thereby rejecting the defendants’ challenge.

Objection under Section 3(m) and Section 3(k) of the Patents Act, 1970: The defendants objected to the suit patent under Section 3(m) and Section 3(k) of the Patents Act, 1970. Section 3(m) excludes patents on methods of playing a game or performing a mental act, while Section 3(k) prohibits patents on computer programs per se, algorithms, or mathematical methods.The defendants argued that the suit patent covered a mere algorithm used in digital encoding and, therefore, was barred under Section 3(k). They further contended that the method described in the patent involved mental steps, making it ineligible under Section 3(m).

The court rejected these arguments, holding that the patent did not merely claim an abstract algorithm but rather a technical process implemented in hardware for encoding data in DVDs. The court relied on precedents such as Ericsson v. Intex Technologies (2016) SCC OnLine Del 4064, which distinguished between software-driven inventions and patentable technical applications. It ruled that the suit patent contributed to a tangible technical advancement in digital storage, making it eligible for patent protection.

Objection under 64 1(d) and 64 1 (k) of Patent Act 1970:The defendants objected to the suit patent under Section 64(1)(d) and 64(1)(k) of the Patents Act, 1970. The defendants argued that the patent was not an invention under the Patents Act, as it merely involved a method of encoding data that lacked inventive step and did not result in a technical advancement. They further contended that the patent fell within the exclusions of Section 3(k), which prohibits patents on mathematical methods and algorithms.

The court rejected these arguments, stating that the patent did not merely cover an abstract mathematical concept but provided a tangible and technical advancement in data encoding used in DVDs. The court referred to Ericsson v. Intex Technologies (2016) SCC OnLine Del 4064, which held that patents on technical solutions in telecommunications were not barred under Section 3(k). Similarly, the court found that the suit patent involved a technical application and could not be invalidated under Section 64(1)(d) or 64(1)(k).

Key Legal Principles Laid Down in This Case:This case establishes several critical legal principles related to SEPs in India. The court affirmed that SEPs are enforceable rights, and manufacturers using standardized technology must comply with licensing obligations. The decision reinforces that non-disclosure of foreign patent applications does not automatically invalidate a patent unless fraudulent intent is proven. It further clarifies that indirect infringement, such as through the replication of pre-encoded stampers, still constitutes infringement if the final product embodies the patented technology. The ruling upholds the importance of FRAND licensing but also emphasizes that failure to obtain a license does not absolve a party from liability for infringement.

Impact of This Case on Future SEP Litigation:The ruling in this case sets a strong precedent for future SEP litigation in India. It provides clarity on how courts should evaluate infringement claims related to SEPs and reinforces the responsibility of manufacturers to obtain appropriate licenses. The case highlights the necessity of forensic examination and expert testimony in determining SEP infringement. Moving forward, this decision will guide both patentees and implementers in understanding their rights and obligations concerning SEPs, ensuring fair competition and compliance with intellectual property laws in standardized industries.

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

Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another

Case Title:Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another

Date of Judgment:April 20, 1960

Case Number:Civil Appeal No. 257/59

Neutral Citation:1960 AIR 941, 1960 SCR (3) 590, AIR 1960 SUPREME COURT 941, 1964 (1) SCWR 301, 1964 (1) SCJ 266, 1960 3 SCR 590, 1962 (1) SCJ 268

Court:Supreme Court of India

Judges:Justice K.C. Das Gupta, Justice P.B. Gajendragadkar, and Justice K.N. Wanchoo

Introduction:

The case of Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another revolves around the interpretation of the Calcutta Thika Tenancy Act, 1949, and its subsequent amendments. The dispute arose between landlords who had obtained a decree for ejectment and the tenants who sought protection under the tenancy law. The key legal question was whether the deletion of Section 28 of the Calcutta Thika Tenancy Act by a later amendment could be applied retrospectively to pending cases. The judgment also deals extensively with the principle of res judicata in the context of interlocutory orders.

Factual Background:

The appellants, Satyadhyan Ghosal and others, were landlords who had obtained a decree for the eviction of their tenants, Sm. Deorajin Debi and her minor son, on February 10, 1949. Before they could execute the decree, the Calcutta Thika Tenancy Act, 1949, came into force, which provided protection to tenants classified as Thika tenants. The tenants initially attempted to set aside the decree under Order 9 Rule 13 of the Code of Civil Procedure, but their application was dismissed on July 16, 1949.

Subsequently, on September 9, 1949, the tenants applied under Section 28 of the Calcutta Thika Tenancy Act, asserting their status as Thika tenants and seeking rescission of the decree. The landlords opposed the application, and the Munsif ruled against the tenants, holding that they were not Thika tenants.

During the pendency of a revision petition in the High Court, the Calcutta Thika Tenancy Ordinance, 1952, and the Calcutta Thika Tenancy (Amendment) Act, 1953, came into force, which omitted Section 28. Despite this, the High Court ruled in favor of the tenants, declaring them Thika tenants and remanding the matter to the Munsif for fresh consideration. Following this remand, the Munsif rescinded the eviction decree. The landlords then challenged this decision under Section 115 of the Code of Civil Procedure, but the High Court upheld the rescission, ruling that the applicability of Section 28 had already been decided and was therefore res judicata.

Procedural Background:

• Trial Court (Munsif’s Court, Alipore): The tenants’ application under Section 28 of the Calcutta Thika Tenancy Act was dismissed on the ground that they were not Thika tenants.
• High Court (First Round): On revision, the Calcutta High Court reversed the Munsif’s decision, declaring the tenants as Thika tenants and remanding the case for fresh consideration.
• Trial Court (Post Remand): Following the remand, the Munsif rescinded the eviction decree.
• High Court (Second Round): The landlords’ challenge against the rescission was dismissed, with the High Court ruling that the matter was res judicata.
• Supreme Court: The landlords filed an appeal before the Supreme Court, challenging the applicability of Section 28 after its omission by the 1953 Amendment Act.

Issues Involved in the Case:

• Whether the omission of Section 28 of the Calcutta Thika Tenancy Act, 1949, by the 1953 Amendment Act had a retrospective effect on pending cases.
• Whether an interlocutory order, not appealed against, can be challenged in an appeal against the final decision.
• Whether the High Court’s previous ruling on the applicability of Section 28 became res judicata, preventing the landlords from raising the issue again.

Appellants (Landlords):

• The landlords argued that the omission of Section 28 of the original Act meant that the tenants could no longer claim relief under it, even in pending proceedings.
• They contended that the Munsif had acted beyond his jurisdiction in rescinding the eviction decree after the deletion of Section 28.
• They further argued that an interlocutory order, such as the High Court’s order of remand, does not attain finality and could still be challenged at a later stage.

Respondents (Tenants):

• The tenants argued that since the High Court had already ruled that Section 28 applied to their case, the issue was res judicata and could not be reopened.
• They contended that the principle of finality in judicial proceedings required that interlocutory decisions, if not appealed at the time, could not be revisited later.

Discussion on Judgments and Cited Cases:

• The Supreme Court considered several precedents while analyzing the principle of res judicata in relation to interlocutory orders:Maharaja Mohesur Singh v. The Bengal Government (1859) 7 M.I.A. 283 – Established that an appellate court can review an interlocutory order when deciding the final appeal.
• Forbes v. Ameeroonissa Begum (1865) 10 M.I.A. 340 – Held that an interlocutory order that does not terminate proceedings can be challenged in an appeal against the final order.
• Sheonath v. Ramnath (1865) 10 M.I.A. 413 – Confirmed that interlocutory orders that are a step towards final judgment do not attain finality unless specifically appealed.
• Ram Kirpal Shukul v. Mst. Rup Kuari (1883) L.R. 11 I.A. 37 – Differentiated between interlocutory orders that have the effect of a decree and those that do not.
• Mahadeolal Kanodia v. The Administrator-General of West Bengal [1960] 3 S.C.R. 578 – This case, decided on the same day, affirmed that Section 28 of the Calcutta Thika Tenancy Act was not available after its omission by the 1953 Amendment.

Reasoning and Analysis of the Judge:

Justice K.C. Das Gupta, delivering the judgment, held that:The omission of Section 28 meant that tenants could not seek relief under it for pending cases.

The High Court’s order of remand was an interlocutory decision that did not terminate the proceedings and could, therefore, be challenged in an appeal against the final order.

The principle of res judicata did not apply because an interlocutory order, if not forming part of a final decree, does not acquire finality unless appealed against.

Final Decision:

The Supreme Court allowed the appeal, set aside the High Court’s order, and ruled that the Munsif had acted without jurisdiction in rescinding the eviction decree. Consequently, the landlords' eviction decree was restored.

Key Legal Principles Settled in the Case:

• Interlocutory orders that do not terminate proceedings can be challenged in an appeal against the final order.
• Omission of a statutory provision removes its applicability to pending cases unless explicitly saved by the legislature.
• Res judicata does not apply to purely interlocutory orders unless they attain finality as part of a decree.

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

Arpita Agro Products Pvt. Ltd. Vs. ITC Limited

Arpita Agro Products Pvt. Ltd. Vs. ITC Limited: Courts will apply a stricter test when infringer was previous owner of the mark.

Case Title: Arpita Agro Products Pvt. Ltd. & Ors. Vs. ITC Limited

Date of Order: February 21, 2025

Case No.: FAO (OS) (COMM) 289/2024

Neutral Citation: 2025:DHC:1097-DB

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Navin Chawla, Hon'ble Ms. Justice Shalinder Kaur

Introduction:

The case concerns a dispute between ITC Limited and Arpita Agro Products Pvt. Ltd. regarding the alleged infringement and passing off of ITC's trademarks, primarily 'NIMYLE' and 'JOR-POWR'. ITC claimed that Arpita Agro's use of the mark 'POWRNYM' for a similar product was deceptive and misleading. The High Court of Delhi granted an injunction in favor of ITC, restraining Arpita Agro from using the impugned mark.

Detailed Factual Background:

ITC Limited acquired ownership of several trademarks, including 'NIMYLE' and 'JOR-POWR', through an Asset Purchase Agreement and a Brand Assignment Agreement executed in April 2018. These agreements transferred all intellectual property rights, including goodwill, copyright, and brand-related assets from Arpita Agro to ITC for a consideration of over INR 100 crores. Post-assignment, ITC extensively marketed and promoted these trademarks, making them household names in the herbal floor cleaner segment.

In 2023, ITC discovered that Arpita Agro had started selling a floor cleaner under the brand name 'POWRNYM' in a bottle similar to ITC’s 'NIMYLE'. ITC alleged that the appellants deliberately combined elements from both 'NIMYLE' and 'JOR-POWR' to create a deceptively similar mark, intending to capitalize on ITC’s brand reputation. ITC filed a suit seeking an injunction against the use of 'POWRNYM', claiming infringement and passing off.

Detailed Procedural Background:

ITC filed a suit before the Single Judge of the Delhi High Court, which granted an ad-interim ex-parte injunction restraining Arpita Agro from using 'POWRNYM' or any mark deceptively similar to 'NIMYLE' or 'JOR-POWR'. Arpita Agro challenged this order by filing an appeal under the Commercial Courts Act, arguing that 'POWRNYM' was distinct and that the non-compete clause in the agreement had expired. The Single Judge dismissed their application, leading to the present appeal before the Division Bench.

Issues Involved in the Case

Whether 'POWRNYM' was deceptively similar to ITC’s trademarks 'NIMYLE' and 'JOR-POWR'? Whether the use of 'POWRNYM' constituted trademark infringement under Section 29 of the Trade Marks Act, 1999?

Detailed Submissions of the Parties:

Arpita Agro argued that:'POWRNYM' was a distinct mark and not deceptively similar to 'NIMYLE' or 'JOR-POWR'.The word 'NIM' was commonly used in trademarks and was not exclusive to ITC.ITC had not objected to their trademark application published in 2021, implying acquiescence.The non-compete clause in the Asset Purchase Agreement had expired, allowing them to compete freely.

ITC contended that:The appellants, having assigned the trademarks to ITC for significant consideration, had no right to adopt a similar mark.'POWRNYM' was deliberately coined by combining elements from 'NIMYLE' and 'JOR-POWR' to deceive consumers.The trade dress and packaging of 'POWRNYM' were also strikingly similar, increasing the likelihood of confusion.The delay in filing the suit was due to their recent discovery of the infringing use.

Detailed Discussion on Judgments Cited:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 Established the test for deceptive similarity and held that phonetic, visual, and structural similarity should be assessed holistically.The court applied this test and found 'POWRNYM' to be deceptively similar to ITC’s marks.

Wander Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727:Emphasized that appellate courts should not interfere with interim injunctions unless they are perverse or arbitrary.The High Court ruled that the Single Judge’s order was reasonable and did not warrant interference.

Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933:Held that copying the dominant part of a mark constitutes infringement. The court noted that Arpita Agro had copied key elements of ITC’s trademarks, leading to a finding of infringement.

South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953:Discussed the importance of the dominant feature of a trademark in determining infringement. The court found that 'POWRNYM' incorporated dominant features of ITC’s marks, leading to consumer confusion.

Detailed Reasoning and Analysis of the Judge:The High Court observed that Arpita Agro had assigned all rights, goodwill, and associated intellectual property in 'NIMYLE' and 'JOR-POWR' to ITC in 2018, making them the rightful owner. The court held that Arpita Agro’s adoption of 'POWRNYM' was not an independent creation but a deliberate attempt to exploit ITC’s goodwill.The court further ruled that Arpita Agro’s defense regarding the expiration of the non-compete clause was irrelevant to the issue of trademark infringement. It emphasized that even if the agreement allowed competition, it did not permit the use of deceptively similar marks.The court dismissed the argument of delay, stating that ITC acted promptly upon discovering the infringing use. It also noted that the sale of 'POWRNYM' in similar bottles with nearly identical trade dress strengthened ITC’s case.

Final Decision:

The High Court upheld the Single Judge’s order, confirming the injunction against Arpita Agro. It ruled that the use of 'POWRNYM' constituted both infringement and passing off, as it was deceptively similar to ITC’s marks and likely to confuse consumers. The appeal was dismissed.

Key Legal Principles Established:A mark that incorporates dominant features of a registered trademark can be deemed deceptively similar and infringing.  Assignment of a trademark includes an obligation not to adopt similar or derivative marks.The expiration of a non-compete clause does not permit trademark infringement or passing off.  Delay in filing a suit does not bar relief if the infringement was discovered recently. Courts will apply a stricter test when the alleged infringer was the previous owner of the mark.This case reaffirms strong trademark protection principles and the importance of safeguarding acquired goodwill against deceptive market practices.

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

Sri Dattatraya v. Sharanappa

Case Title: Sri Dattatraya v. Sharanappa

Date of Order: August 07, 2024

Case Number: Criminal Appeal No. 3257 of 2024 (@ SLP (Criminal) No. 13179 of 2023)

Neutral Citation: 2024 INSC 586

Court: Supreme Court of India

Judge: Hon’ble Justice Augustine George Masih and Hon’ble Justice B.V. Nagarathna

Facts

The appellant, Sri Dattatraya, filed a complaint under Section 138 of the Negotiable Instruments Act, 1881 (NI Act), alleging that the respondent, Sharanappa, had borrowed ₹2,00,000 from him for family necessities and issued a cheque as security for repayment. The cheque was dishonoured due to insufficient funds, and a legal notice was sent to the respondent, but payment was not made. The appellant filed a complaint, and the trial court dismissed the case, acquitting the respondent. The High Court of Karnataka upheld the acquittal. Aggrieved by the decision, the appellant approached the Supreme Court.

Issues

Whether the presumption under Section 139 of the NI Act in favor of the holder of the cheque was rebutted by the respondent.

Whether the High Court erred in upholding the acquittal of the respondent.

Reasoning and Analysis of the Judge

The court analyzed the provisions of the NI Act, particularly Sections 118 and 139, which create a presumption in favor of the cheque holder. However, this presumption is rebuttable. The respondent denied the loan transaction and claimed that the cheque was issued as security in another transaction with a third party. The trial court found contradictions in the appellant’s statements, particularly regarding when the cheque was issued and the absence of financial capacity evidence in the appellant’s income tax returns.

The Supreme Court reaffirmed that the standard of proof for rebutting the presumption is based on the preponderance of probabilities. The respondent successfully raised doubts about the appellant’s claim by highlighting inconsistencies in his version and the absence of supporting financial records. The appellant’s inability to provide clear evidence regarding the loan transaction and the agreement further weakened his case. The court also emphasized that concurrent findings of fact should not be overturned unless there is clear perversity or miscarriage of justice, which was not present in this case.

Decision of the Judge

The Supreme Court dismissed the appeal and upheld the High Court’s judgment, affirming the acquittal of the respondent. The court ruled that the respondent had successfully rebutted the presumption under Section 139 of the NI Act, and the appellant failed to establish the existence of a legally enforceable debt. The appeal was found to be devoid of merit, and all pending applications were disposed of accordingly.