Tiger Lily Ventures Ltd. Vs Barclays Capital Inc

DATE OF JUDGEMENT: 01.06.2022
CASE NO: 2021-1107, 2021-1228
CASE TITLE: Tiger Lily Ventures Ltd. Vs Barclays Capital Inc
NAME OF HON'BLE COURT: United States Court of Appeals for the Federal Circuit
NAME OF HON'BLE JUDGE: LOURIE, BRYSON, PROST and LOURIE, Circuit Judges

Important Finding in the Decision: 1. A Trademark is said to have been abandoned if use has been discontinued with intent not to resume the use. Pg. 9, Para 2.

2. Use in emails, communications, business cards etc proves intention to resume the use. Pg. 10, Para 1.

3.Mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark. Pg. 16, Para 2.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Judian Restaurant Co. Ltd. Vs Wei Meng

DATE OF JUDGEMENT: 18.05.2022
CASE NO: T-530-21 [2022 FC 743]
CASE TITLE: Beijing Judian Restaurant Co. Ltd. Vs Wei Meng
NAME OF HON'BLE COURT: Federal Court of Cananda
NAME OF HON'BLE JUDGE: The Honourable Madam Justice Furlanetto

Brief Note on the case: 1. The Petitioner filed Petition seeking declaration of . Canadian Trademark Registration No. TMA1020055, for the trademark JU DIAN & Design [JU DIAN & Design Mark] to be invalid. Para 1

2. Applicant claimed to have operated Restaurant under the name JU DIAN in china. Para 3

3.It was alleged that the impugned registration in Canada has been registered only with a view to sell the registration. Para 3

4.The applicant stated to have started operating in Canada since 2018. Para 15.

5.The Registered Proprietor was asking for payment from Applicant for acquiring right in the registered Trade mark. Para 21

6.The impugned Trademark was declared invalid as there was element of bad faith on the part of registrant. It was registered without having an intention of commercial use. Para 51

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Apple Inc. Vs European Union Intellectual Property Office

DATE OF JUDGEMENT: 08.06.2022
CASE NO: T‑26/21 to T‑28/21
CASE TITLE: Apple Inc. Vs European Union Intellectual Property Office (EUIPO)
NAME OF HON'BLE COURT: General Court (Sixth Chamber) , Court of Justice of the European Union
NAME OF HON'BLE JUDGE: A. Marcoulli, President, C. Iliopoulos (Rapporteur) and R. Norkus, H. Judges,

Brief Note on the case: 1. The Appeal has been filed by the Applicant namely Apple Inc against order of 4th Chamber, EUIPO. Para 1

2. Three Trademark applications were filed by the Applicant for registration of Trademark THINK DIFFERENT. Para 6

3.The Intervener namely Swatch AG, filed petition seeking revocation of the same. Para 14

4.Vide decision dated 24.08.2018, the cancellation Board revoked the application of the Application. Para 17

5.The Applicant filed appeal against the same before 4th Board. The forth Board also dismissed the Appeal. Para 20

6.Accordingly the subject matter Appeals were filed.

7.The Relevant date for deciding cancellation petition is the date on which cancellation petition were filed. Para 34

8.In cancellation Proceeding, the onus is on the applicant to establish genuine use of mark. Para 60.

9.Genuine use of mark entails whether commercial exploitation is real. Para 63.

10.Statement from legal department of applicant does not have credibility like evidence of third party. Hence are not sufficient to prove user. Para 78.

11.Word THINK DIFFERENT was mentioned on the top of specification, relatively in a smaller font. Hence it can not amount to trademark use. Para 93.

12.Hence the Trademark THINK DIFFERENT was rightly rejected falling under the test of acquired distinctiveness.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Mr. Dhananjay Rathi Vs Shree Vasu Steel Pvt. Ltd.

DATE OF JUDGEMENT: 15.06.2022
CASE NO: CS (Comm) 267 of 2022
CASE TITLE: Mr. Dhananjay Rathi Vs Shree Vasu Steel Pvt. Ltd.
NAME OF HON'BLE COURT: Hon'ble High Court of Delhi
NAME OF HON'BLE JUDGE: Hon'ble Justice Ms. Jyoti Singh

Brief Note on the case: 1. Plaintiff filed application under Order 1 Rule 10 CPC for impleadment of Rathi Research Centre and one of the Defendant. Para 1

2.Ex-parte injunction was granted to the Plaintiff vide order dated 28.04.2022. Para 8

3.The Defendant filed application under Order 39 Rule 4 CPC alleging suppression of fact by the plaintiff. Para 9

4.As per MOU dated 26.06.1995 Rathi Research Centre was created and the Defendant was granted right to use the subject matter Trademark. Para 9

5.The Defendant alleged that Rathi Research Centre was necessary party Para 10.

6.Accordingly the Plaintiff filed this application.

7.The Court impleaded Rathi Research Centre in the suit after making an observation that a party , without which suit can not be decided effectively, can be allowed to be impleaded at any stage of the proceeding. Para 15

8.Accordingly Members/Trustees of Rathi Research Centre were impleaded as Defendant in the suit proceeding. Para 19.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Ambuja Cements Limited Vs Shiv Kripa Steels and Another

DATE OF JUDGEMENT: 03.06.2022
CASE NO: CS (Comm) 431 of 2022
CASE TITLE: Ambuja Cements Limited Vs Shiv Kripa Steels and Another
NAME OF HON'BLE COURT: Hon'ble High Court of Delhi
NAME OF HON'BLE JUDGE: Hon'ble Justice Ms. Jyoti Singh

Brief Note on the case: 1. Plaintiff filed the subject matter suit on the basis of proprietary right in trademark AMBUJA since the year 1983-1984 in relation to cement and related goods. Para 21

2.The Plaintiff claimed to be registered proprietor of Trademark AMBUJA in class 07,19,39 and 41. Para 22

3.In the year 1997, the Plaintiff got the domain name registered as www.ambujacement.com. Para 24

4.In the month of April 2022, the Plaintiff came across youtube clipping of the defendant as well as trademark application of the Defendant for the trademark SUPER STEEL AMBUJA. However no goods were found. Para 26-28

5.The Defendants were also having domain name www.ambujacementtmt.com. Para 29

6.Trademark application VIRAT AMBUJA of the Defendant was filed as proposed to be used basis. Para 30.

7.The goods of the Defendant were TMT Bars, Stainless steel etc. Para 35.

8.In the facts of the case, ex-parte injunction was granted in favour of the Plaintiff. Para 37.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

Janssen Inc and Actelion Pharmaceuticals Ltd. Vs Saodoz Canada Inc

DATE OF JUDGEMENT: 31.05.2022:
CASE NO: T-549-20 [2022 FC 715]
CASE TITLE: Janssen Inc and Actelion Pharmaceuticals Ltd. Vs Saodoz Canada Inc
NAME OF HON'BLE COURT: Hon'ble Federal Court of Canada
NAME OF HON'BLE JUDGE: Hon'ble Madam Justice Pallotta

Brief Note on the case: 1. Plaintiff namely Jassen sought relief against the Defendant namely Sandoz for infringement of claim 21 to 31 of the subject matter Patent no. 2,659,770 titled “Therapeutic Compositions Comprising a Specific Endothelin Receptor Antagonist and a PDE5 Inhibitor” (770 Patent).Para 5

2.The Defendant Sandoz seeks Health Canada’s approval to sell a generic prescription medication containing 10mg of macitentan as the active ingredient. Para 5

3.It is claimed that this product of Respondent is infringing the subject matter Patent. Now question was this whether product of Respondent fell within claims of the subject matter Patent no. 2,659,770. Para 5

4.770 Patent specification describes the invention as relating to a product containing a compound of formula known as macitentan. Para 17

5.The issues in this action relate to claim construction and validity of the Asserted Claims. Para 29

6.the claims be read in an informed and purposive way, from the perspective of a notional person of ordinary skill in the art or science to whom the patent is addressed (skilled person): Free World Trust v Électro Santé Inc, 2000 SCC 66 at para 44 [Free World]. Para 30

7.Claim construction is a matter of law for the Court to decide: Whirlpool at para 61; Zero Spill Systems (Int'l) Inc v Heide, 2015 FCA 115 at para 41: Para 32.

8.Plaintiff alleged that Defendant's expert conducted his test of obviousness review with hindsight, which is not accepted in law.

9. The Defendant alleged because of prior publication of WO 395, the subject matter Patent is obvious.

10. The Court held that WO 395 contains large number of compounds. It does not indicated as to how a skilled person would select a group of compound fro large number of compounds. Para 197-199

11.The court also held that defendant failed to show that process involved in WO 395 would motivate person skilled in the art to focus on subject matter patented compound namely MACITENTAN. Para 204.

12.The utility of a claimed invention must either be demonstrated or soundly predicted based on the information and expertise available at the material date, which is no later than the filing date: Patent. Para 204.

13.Defendant argued that result conducted on rats may not be translated to human. Hence the impugned Patent does not proved utility. Para 246.

14. The court rejected this argument after observing that that the line between sound prediction and demonstrated utility is vague, however there is a point where the cumulative weight of evidence supporting a sound prediction can reach a sufficient level to establish demonstrated utility: Para 246.

15.The Defendant pleaded that the specification does not enable the skilled person to practice the subject matter of the claims 21-25 in order to treat the disease. The insufficiency of disclosure in specification was not explained by the Defendant as to what was missing in the specification. Hence this argument was rejected. Para 255

16.Hence Plaintiff was granted the relief of declaration of Patent Infringement against the Defendant.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92

DATE OF JUDGEMENT: 15.02.2022:
CASE NO: NSD 1370 of 2019
CASE TITLE: Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92
NAME OF HON'BLE COURT: Hon'ble Federal Court of Australia
NAME OF HON'BLE JUDGE: Hon'ble Justice Burley J

Brief Note on the case: 1. Patentee namely Pharmacia and Pfizer its exclusive licensee sought relief against Juno Pharmaceuticals Pty Ltd and Neo Health (Australia) Pty Ltd for infringement of Patent no. 2002256031, titled as “Reconstitutable parenteral composition containing a COX-2 inhibitor.

2.The subject matter Patent was developed by Pharmacia and marketed under the brand DYNASTAT basically used to manage post operative pain.

3.It is claimed that the product PARECOXIB of Respondent namely Juno was infringing the subject matter Patent. Now question was this whether product of Respondent fell within claims of the subject matter Patent.

4.The subject matter case dealt with claim construction.

5.The term about used in the context of claimed percentage weight ranges of the component was interpreted.

6.The Patentee alleged that the term used as about 90% of weight as used in claim 1 should to construed to include 5 % margin error. Hence as per the applicant , the claim 1 of the subject matter Patent may include 94.5% as upper limited. Para 155

7.While the Respondent tried to interpret the term about 90 % to include the nearest whole number, i.e. 90.49%. Para 155

8.As the term about was not defined in the specification, the Hon'ble Court accepted the interpretation given by the Respondents. Para 169

9. The Respondents highlighted that in subject matter Patent , residual water is 1%, while in their products , it was 2.48% and 4.37%. Having considered other difference, the court opined that infringement of claim 11 was not proved. Para 214.

10. In order to test obviousness, it has to be seen , what a person skilled in the was likely to have done, faced with the similar problem claimed in the invention. Para 260, 268.

11.The inventive steps has to be weighed within the parameters of qualitative test and not the quantitative test. Para 311

12.The task of the court involves an inquiry that is explicitly hypothetical. It is concerned with what would have happened had information of the character described been available to the person skilled in the relevant art. Para 318

13.While adjudicating the issue of ‘inventive step, the clarity is often borne our by the evidence of the experts. Para 394.

14.Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use. Para 414.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

Five Star Films Pvt. Ltd Vs Sri Thenandal Films and another

DATE OF JUDGEMENT: 08.06.2022:
CASE NO: Original Application No. 127 of 2019 in CS (Comm) No. 22 of 2022
CASE TITLE: Five Star Films Pvt. Ltd Vs Sri Thenandal Films and another
NAME OF HON'BLE COURT: Hon'ble High Court of Madras
NAME OF HON'BLE JUDGE: Hon'ble Justice Senthil Kumar Ramamoorthy

Brief Note on the case: 1. The right of making remake of the film was not reassignable, still the same was re-assigned to other parties and at last to the Plaintiff. The Defendant No.3 did not assailed the same. Hence Defendant No.3 acquiesced in the assignment in favour of Plaintiff. Para 10,11.

2.Though movie of the Defendant MERSAL appears to have been inspired from Plaintiff's movie MOONDRU MUGAM as central characters are same. However Plaintiff failed to prove it to be copy of plaintiff's movie. Para 19.

3.As movie of the Defendant has already been released in theatre and OTT Platform, the relief of permanent injunction has become infructuous. Para 20

4.Plaintiff failed to prove any loss. Hence Plaintiff's not entitled to relief. Para 20.

5.As Plaintiff was looser, the Defendant was granted the cost of Rs. one Lakh towards lawyers fee and other expenses. Para 21

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

[Disclaimer: This information is being shared in the public interest only for creating legal awareness, especially in the field of Intellectual Property Right. As there may be possibility of error, omission or mistake in legal interpretation, It should not be treated as substitute for legal advise].

Proklean Technologies P. Ltd. Vs Godrej Consumer Products Ltd.

DATE OF JUDGEMENT: 09.06.2022:
CASE NO: Original Application No. 71 and 72 of 2022 in CS (Comm) No. 22 of 2022
CASE TITLE: Proklean Technologies P. Ltd. Vs Godrej Consumer Products Ltd.
NAME OF HON'BLE COURT: Hon'ble High Court of Madras
NAME OF HON'BLE JUDGE: Hon'ble Justice Senthil Kumar Ramamoorthy

Brief Note on the case: 1. The Plaintiff has failed to put on record any deed of assignment in its favour in relation to Class 03 and class 05. Hence it could not be concluded that Plaintiff is the registered Proprietor of Trademark in class 03 and class 05. Para 8.

2.Sustainabilty of application is different from maintainability. Para 8.

3.There in no any estoppel against the Law. The Plaintiff maintain the action for infringement even though contrary to the stand taken before the Trademarks Registry. Para 12

4.Use of Trademark GODREJ along with PROCLEAN does not mitigate the chances of confusion.12

5.As balance of convenience was in favour of the Defendant, injunction was declined. Para 13

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

[Disclaimer: This information is being shared in the public interest only for creating legal awareness, especially in the field of Intellectual Property Right. As there may be possibility of error, omission or mistake in legal interpretation, It should not be treated as substitute for legal advise].

Unimed Technologies Limited Vs Cadila Healthcare Limited

DATE OF JUDGEMENT: 09.06.2022:
CASE NO: Civil Suit(Com. Div) No.822 of 2013
CASE TITLE: Unimed Technologies Limited Vs Cadila Healthcare Limited
NAME OF HON'BLE COURT: Hon'ble High Court of Madras
NAME OF HON'BLE JUDGE: Hon'ble Justice Senthil Kumar Ramamoorthy

Brief Note on the case: 1. Although the Defendant pleaded in the written statement that the Hon'ble Court does not have territorial jurisdiction to entertain the suit. However documents filed by the Defendants shows commercial sale within Jurisdiction, Hence the Hon'ble Madras High Court rejected the argument of Defendant regarding lack of territorial jurisdiction. Para 8

2.The issue of infringement and passing has to be tested on the basis of date of institution of the Suit. Para 15

3.Non production of Renewal Certificate is not fatal. Para 15

4. Even though medicine is prescribed by Doctor , still in hospital , chances of confusion can not be rules out. Para 16

6.Trademark ZYVISC of the Defendant was held deceptively similar to Plaintiff's Trademark HYVISC. Para 17

7.Though adoption of Defendant was not mala fide, however chances of confusion can not be ruled out. Hence Plaintiff was entitled to relief of passing off. Para 18

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529

[Disclaimer: This information is being shared in the public interest only for creating legal awareness, especially in the field of Intellectual Property Right. As there may be possibility of error, omission or mistake in legal interpretation, It should not be treated as substitute for legal advise].