Here is our recap of last week’s top IP developments including summaries of posts on the DHC’s decision in Natco v. Novartis appeal and the MHC’s decision in Microsoft Technology Licensing v. Asst. Controller of Patents. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Problem Statement Precision: A Key Factor in TSM-Based Non-Obviousness Determination?
The MHC in Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs clarified the role of the ‘person skilled in the art’ (PSITA) in determining non-obviousness. Critiquing this decision, Kevin Preji highlights the difference between the Indian PSITA approach and the US’ PHOSITA approach and explains why it is relevant in the present case.
Natco v Novartis 2024: Delhi High Court’s Novartis Moment & Indian Patent Law’s Déjà Vu
The Delhi High Court, on 24th April, passed an order that our patent law enthusiast readers will be very interested in! Reviving, (and at least temporarily settling!) questions around what is therapeutic efficacy under Section 3(d) and the distinctions between coverage and disclosure (amongst other questions), the 86 page judgement is an interesting one to go through. Read on for Shivam Kaushik’s take on this judgment.
Case Summaries
Rich Products Corporation vs The Controller Of Patents & Anr. on 1 May, 2024 (Delhi High Court)
An intra-court appeal was filed by the appellant challenging dismissal of a pre-grant opposition by the Controller regarding Tropilite’s artificial liquid cream. The claim of the appellant was that the Controller has failed to realize that impugned invention has already been claimed by the appellant in an earlier patent application and thus, pre-grant opposition should stand on the grounds of anticipation by prior art under Section 25, Patents Act, 1970. The Single Judge had ruled that in case pre-grant opposition fails, the appellant can file a post-grant opposition or a revocation application as well and thus, in availability of an ‘alternate remedy’ with the appellant the petition under Article 226 cannot be maintainable. The Court in the present ruling has concurred with the opinion of the Single Judge and held that in effect the appellant seeks a review on merits of the Controller decision. Therefore the Court disposed the appeal holding that there is no manifest or jurisdictional error warranting exercise of Article 226.
Thukral Mechanical Works vs Pm Diesels Private Limited & Anr on 25 April, 2024 (Delhi High Court)
In an appeal against the judgement dated April 2, 2024, the division bench of the Delhi High Court stayed the impugned judgement till the next date of hearing on July 25, 2024, for contradicting the Supreme Court decision in Thukral Mechanical Works v. P.M. Diesels. The Supreme Court had held that the disability of non use by the predecessor in interest would not be relevant after the mark has been assigned. However, the impugned judgment is contradictory because the argument that the trademark had not been used for preceding five years by the appellant’s predecessor-in-interest was accepted by the Court in the context of rectification proceedings. The appellant argues that doing so would effectively cease their business after four decades of trademark use. The Court held that prima facie some findings appear contrary to the decision of the Supreme Court order and stayed the impugned order.
The present dispute is an appeal challenging the order of Joint Controller, dated July 31, 2023, refusing patent application of the appellant. The appellant made a case that the impugned order was full of procedural lapses like failure to consider expert affidavits, failure to recognise novelty, lack of uniformity in assessment, etc. The Court ruled that the impugned order is set aside for the reasons mentioned by the appellant and directed a competent officer to hear the parties and dispose off the case within 8 weeks from the date of receipt of the present order.
The dispute is over copying substantial elements like placement, pattern, color combination of plaintiff’s Serpenti Ocean Treasure Necklace by the defendant’s Shield-It Necklace. The Court held that plaintiff has made out a clear prima facie case; that the plaintiff has the necklace registered in Italy and since India is a member of Berne Convention for the Protection of Literary and Artistic Works, under Section 40 of the Copyrights Act, 1957 the registration in Italy can prove copyright infringement in India. The plaintiff also holds trademark registration for “Serpenti” etc. thus, the use of trademark “Serpenti” by the defendant for identical goods prima facie amounts to infringement under Section 29 of the Trade Marks Act, 1999. In light of the above, an ex parte ad interim injunction has been granted in favour of the plaintiff till the next hearing on September 30, 2024.
Pfizer Inc & Anr vs Everest Pharmaceuticals Limited & Ors on 1 May, 2024 (Delhi High Court)
An application was filed seeking permanent injunction restraining the defendants from commercially dealing with plaintiff’s LORLATINIB. The plaintiff argued that the patent has been granted protection in 90 plus countries including India. The plaintiff alleged that the defendant number 2 and 3 are importing the impugned product from defendant no. 1, located in Bangladesh and the defendants do not have the license to manufacture, sell or import the product in India. The Court ruled that a prima facie case has been made and the balance of convenience lied in favour of the plaintiff thus, granting an ex parte ad-interim injunction to prevent listing, manufacture and sale of the said product.
T.V. Today Network Limited And Anr. vs Union Of India And Ors. on 1 May, 2024 (Delhi High Court)
The present petition is filed seeking a direction to the respondent to restore former’s Instagram page which was taken down under latter’s ‘repeated infringer policy’ for multiple IP violations. Wide interlocutory order dated April 04. 2024 the petitioner was permitted to avail remedy under Rule 3-A of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. The petitioner accordingly filed the first round of appeal and subsequently second round of appeal, under a bona fide incorrect presumption that first appeal has been rejected on receiving an automated response. The first appeal was later decided adversely. The Court has directed the petitioner to now file a fresh second appeal and the same to be decided expeditiously by the respondent.
Zydus Healthcare Limited vs Flipkart Internet Pvt Ltd & Ors on 25 April, 2024 (Delhi High Court)
In addition to the directions in the March 5, 2024 order, Flipkart submitted a compliance affidavit disclosing steps of due diligence undertaken by it as an e-commerce marketplace. In comparison with onboarding requirements of other websites like Nykaa, Amazon, Myntra etc., the Court deduced that cognizance to control counterfeiting has been taken by other websites. The Court, further, relied on Abhi Traders v. Fashnair Technologies Pvt. Ltd. to emphasize the obligation of the Defendant to provide certain information about sellers so that consumers can make an informed decision under Rules 5 and 6 of the Consumer Protection (E-commerce) Rules 2020. The Defendant has been called upon to take certain instructions on onboarding mechanism, misuse of GST number by rogue sellers, grievance redressal mechanism, compliance of Rule 5 and 6, before the next listing on May 28, 2024.
Sandisk LLC & Anr vs Mahavishnu Mobile Accessories & Anr on 24 April, 2024 (Delhi High Court)
A trademark suit seeking permanent injunction against the use of Plaintiff’s trademark “Sandisk” and logos on counterfeited Micro SDHC Cards and USB flash drives was filed. The Court opined that the plaintiff is entitled to a summary judgement in the light of the facts of the case and that the defendant has also not filed a written statement. The suit was disposed of and a permanent injunction was granted in favour of the plaintiff, restraining the defendants from using the said marks. The cost of Rs. 1,00,000 per defendant in favour of the plaintiff was determined keeping in view the decision in Koninlijke Philips N.V. v. Amazestore, Inter Ikea Systems BV v. Sham Murari and Rule 20, of Delhi High Court IPD Rules 2022.
Electronica India Ltd vs Electronica Hitech Machines Pvt. Ltd. on 15 April, 2024 (Bombay High Court)
Petitions were filed to challenge two orders of the Trade Mark Registry allowing Form TM-24 applications under Section 45 to change the proprietor’s name of the trademark “Electronica” i.e. from a partnership firm to a company under part IX of the Companies Act. Interestingly, there were no speaking orders to this effect on the online portal of the Registry and it was the argument of the Petitioner that the Registry failed to take into consideration “Objection Letter” submitted to object such recordal. The Court held that the Registry has abdicated its duty under Section 45, as due process has not been followed and remanded it back for fresh consideration.
Sequoia Capital Operations Llc vs John Doe And Others on 26 April, 2024 (Delhi High Court)
An application seeking clarification or modification was filed by Telegram FZ-LLC urging that while Telegram has complied with the first part of the direction of order dated January 24, 2024 i.e. to take down/ block mentioned content, it is not possible to comply with the second part which directed that all groups, channels created by the said phone numbers infringing Plaintiff’s trademark shall be deleted. Telegram argued that the application is not equipped to legally determine misuse of trademarks, the obligation is against the safe harbor provided to intermediaries like Telegram under Information Technology Act, 2000 and that there are other technical and privacy concerns. Accepting the arguments, the Court modified the impugned order to mean that Telegram shall provide a list of channels/ groups made by the plaintiff to the extent possible and plaintiff shall be entitled to supply proof of trademark infringement to seek appropriate order from the courts.
Pfizer Products, Inc. vs Renovision Exports Pvt. Ltd. on 1 May, 2024 (Delhi High Court)
The present suit is filed by the plaintiff to seek permanent injunction against use of defendant’s trademark ‘Vigoura’ which is deceptively similar to former’s ‘Viagra’. The Court held that the defendant’s mark is deceptively similar to that of plaintiff’s and infringes latter’s mark under Section 29, Trademark Act, 1999. To determine common law rights of the plaintiff, the Court relied on the case of Laxmikant V. Patel v. Chetanbhai Shah, N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., etc. and held that plaintiff has common law rights over the mark and the defendant shall be held liable for passing off and has awarded damages of Rs. 3,00,000 to the plaintiff as against its claim of Rs. 20,00,000 opining that the plaintiff has provided no evidence to ascertain the quantum of damages.
Dominos IP Holder Llc & Anr vs M/S Dominic Pizza & Ors on 2 May, 2024 (Delhi High Court)
The plaintiff filed an application for ex-parte ad interim injunction against the defendants for using deceptively similar “dominic” and other formative marks. The plaintiff argued that by adopting a deceptively similar mark to that of the plaintiff’s “Dominoes” marks, the defendants are taking unfair advantage of the plaintiff’s goodwill and have also caused confusion among the users of Zomato and Swiggy looking for products from “Dominoes”. Considering the above, the Court granted an ex-parte ad interim injunction to the plaintiff and directed Zomato and Swiggy to delist the defendant’s links.
Tesla Inc vs Tesla Power India Private Limited & Ors on 2 May, 2024 (Delhi High Court)
The plaintiff filed a trademark infringement suit against the defendant for adopting an allegedly deceptive similar mark “Tesla Power”. The defendant argued that it predominantly manufactures lead acid battery which are not used in the plaintiff’s EV products. The defendant further gave an undertaking that it shall not use the impugned mark in relation to EVs and sought time to file a response in support of its arguments. The matter is now listed on May 22.
Helsinn Healthcare Sa & Anr vs Hetero Healthcare Limited on 30 April, 2024 (Delhi High Court)
The Court has granted an ad interim injunction restraining the defendants from selling, distributing its combi-pack of ‘Netupitant 300 mg’ and ‘Palonosetron 0.5 mg capsule’ (‘1 X 2 capsule’. The suit patent concerns an oral dosage form of ‘Netupitant’ (200 to 400 mg, in particular 300 mg) and ‘Palonosetron hydrochloride’ (0.56 mg), for treating nausea and vomiting induced by chemotherapy. The defendant argued that the patent for ‘Netupitant’ had expired on 23rd February 2020, which shall entitle them to sell the separately from other compound ‘Palonosetron’ and considering that they are two separate capsules, there is no infringement of patent. The Court held that despite being sold separately as 2 capsules, the defendant’s product is an integrated combination of both ‘Netupitant 300 mg’ and ‘Palonosetron 0.5 mg’ which is prima facie the subject matter of the suit patent and thus passed the present order granting an ad interim injunction to the plaintiff.
The present suit was filed by the plaintiff alleging trademark infringement of marks ‘Delhi Public School’, ‘DPS’ and their logo by the defendant, who was earlier licensed to use the trademark. On September 19, 2022, an interim direction was issued directing defendants to not admit students for 2023-24 session under the impugned trademarks. The defendant presently submitted that they do not wish to continue the use of the impugned trademarks. The UP Government has issued an office memo stating no objection to change of name. The Court has allowed the defendants to re-apply to CBSE for change of name and the use of impugned trademarks in the application shall not constitute infringement. The Court has also directed the defendant to submit an affidavit explaining, among other points, what name is being used by the school for operational purposes, how is the school represented in formal and informal correspondences.
An appeal was filed by Microsoft against respondent’s order refusing grant of a patent under Section 15, Patents Act, 1970 on the ground that the said application does not qualify as an invention under Section 3(k) of the Act. The appellant argued CRI guidelines, 2016 required a novelty hardware requirement if the invention was in the field of computer programs however, the requirement was removed in CRI Guidelines, 2017 and the respondent has erroneously relied on 2016 guidelines. The Court has accepted the argument and relied on Raytheon Company v Controller General of Patents and Designs to hold that in case CRI Guidelines of 2016 are erroneously relied upon, the patent office is in error. The Court also relied on Lava International Ltd. v. Telefonaktiebolaget LM Ericsson which stated that a computer related invention can be patented if it contributes directly to a specific and credible technical effect or enhancement beyond mere general computing processes. Since the appellant has proved novelty, inventive step and tangible benefits beyond ordinary functioning, the Court held that patent is eligible to be granted.
Other IP Developments
- Ilaiyaraaja sends notice to Rajnikant’s Coolie team alleging copyright infringement.
- Kutch’s Ajrakh gets GI tag.