Here is our recap of last week’s top IP developments including summary of the posts on the IPO’s rejection of an e-cigarettes related patent application, LASA drugs, MHC’s decision concerning Section 3(k). This and much more in this SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know. [This weekly review is authored by SpicyIP intern Sumedh Gadham. Sumedh is a second-year law student enrolled at the National University of Juridical Sciences (NUJS). He is interested in intellectual property, tech law, and policy. His previous post can be accessed here.]
Highlights of the Week
Gone Up In Smoke: Analysing the Controller’s Rejection of an E-cigarette Patent under Section 3(b)
The DHC recently accepted an appeal against the IPO order rejecting an invention related to E-Cigarettes for being contrary to public order and morality. Noting that this case may pave the way for a robust interpretation of Section 3(b) of the Patents Act, Tejaswini Kaushal discusses the potential reasons for IPO’s strict stance towards E-Cigarettes by inter alia taking a dive into the regulations governing the administration of these smoking devices.
Drug Doppelgängers: Unveiling the Dangers of Look-Alike, Sound-Alike (LASA) Medications
In light of recent discussions about implementing stricter measures to address the issue of Look-Alike, Sound-Alike (LASA) drugs, Aditya Bhargava examines whether the current regulatory framework is adequate and delves into various policy recommendations proposed by experts.
Does the Indian Patent Office Rejection Order on E-Cigarettes Violate International Treaties?
Right on the heels of Tejaswini’s post on the IPO’s E-Cigarettes patent rejection order, Bharathwaj Ramakrishnan assesses whether legality of a product can affects its patentability and examines this question from the purview of Paris Convention and TRIPS.
Other Posts
Madras HC on Computer Program and 3(k): Following the DHC way
Discussing what could be MHC’s first authoritative decision on the patentability of computer programs under Section 3(k), Yogesh Byadwal highlights how the Court’s approach differed from or aligned with the DHC’s precedents on this issue. It also assesses the Court’s failure to inquire into the enablement issue and explores whether it missed the chance to course-correct DHC’s narrow reading of Section 3(k).
Adidas v. Keshav H. Tulsiani & Ors: A Case of Skewed Contentions
In an interesting turn of events, the defendant in Adidas v. Keshav H. Tulsiani claimed affection towards their sister as a reason for their adoption of the deceptively similar ‘Adidas’ mark! Rishabh Deshpande writes about this creative defense by the defendant and the DHC’s judgment rejecting it.
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We are pleased to bring to you this sponsored post by QuickCompany about the new update to their Trademark Watch software. Read on below for more details!
CGPDTM to hold a Public Meeting on Form 27 (July 29)
CGPDTM has issued a public notice to organize a virtual brainstorming session on the new form 27 (statement on the working of a patent in India) on July 29. Interested stakeholders please join in to share your views. See below for the details.
Case Summaries
Ranga Rao Sons Pvt. Ltd vs M/S.Sujatha Match Works on 12 July, 2024 (Madras High Court)
The suit is filed seeking the relief of permanent injunction to restrain the defendant from infringing the plaintiff’s registered trademark. The plaintiff’s business involves the manufacturing and sale of agarbattis and incense sticks under the name “Cycle Brand” with the “Cycle” logo under Class 3. However, subsequently, they discovered that the Respondent was utilising the same trademark as the plaintiff, under Class 34. The plaintiff contended that the defendant’s act is with a mala-fide intention to damage the plaintiff’s reputation and is likely to cause confusion in the market. The Court held that the defendant, based on the evidence submitted, that the defendant intentionally adopted the “Cycle” brand, trying to create confusion and use the plaintiff’s goodwill. Hence, the suit was declared in favour of the plaintiff.
Glenmark Pharma Ltd. vs M/s. Karlin Pharmaceuticals & Exports on 12 July, 2024 (Madras High Court)
This appeal was filed against the order accepting the application for the registration of the trademark “CANDEX-B”. The appellant contended that they have been honestly utilising the trademark “CANDID” since the year 1978-79 and that the combination of clotrimazole and betamethasone dipropionate, that is used for the purpose of treating multiple fungal infections is unique for their product. They also contended that the respondent used the trademark “CANDEX-B” much later and that they were dishonestly capitalising on the mark “CANDID”. The court held that since the appellant did adduce evidence, showing that the Respondent’s trademark is likely to be confused with their product and how the two are similar, as a result of which there is a likelihood of confusion amongst the public. Hence, the Court set aside the impugned order and cancelled the defendant’s mark.
Sapporo Medical University v. Assistant Controller of Patents and Designs on 8 July, 2024 (Madras High Court)
The appellant’s patent application was rejected by a mere one page order stating that the claimed invention lacked an inventive step (Section 2(1)(ja) of Patents Act, 1970). The Court found that the respondent claimed a lack of inventive step without referring to any explanations offered by the appellant about prior arts or the claimed invention. The respondent also failed to consider that the U.S. and European patent was granted to the appellant. The matter was remitted by the Court for fresh consideration by a different Patent Controller.
Regeneron Pharmaceuticals Inc. v. The Assistant Controller of Patents and Designs on 19 July, 2024 (Madras High Court)
The Appellant’s patent application was rejected citing Section 59 of the Patents Act, 1970 (Section 59 prohibits certain amendments to an application for patent). The order rejecting the application states that there is non-compliance of Section 59(1) however, the Court found that the respondent did not assign any reasoning for arriving at that conclusion. The appellants also offered explanation as to why the application shall not be hit by Section 59 and the same was not considered by the respondents and the objection was upheld. The Court remitted the matter for fresh consideration by a different Patent Controller since the order impugned was an unreasoned one.
Mitsubishi Electric Corporation v. The Controller of Patents and Designs on 19 July, 2024 (Madras High Court)
The appellant’s patent application was rejected citing lack of inventory step and unity of invention. The Court found the order rejecting the application to have not assigned any reason to arrive at the conclusion that the invention was obvious to a person skilled in the art. The rejection was also because the respondent concluded that the specifications did not disclose or relate to a single invention or a group of inventions linked to the same inventive step (lack of unity of invention). The Court directed remitted the matter to be considered afresh by a different Patent Controller.
Sonoo Jaiswal & Ors. v. Oracle America Inc. on 9 July, 2024 (Delhi High Court)
The appellants are challenging the judgement of a single judge that interdicted the appellants from using the trademark ‘JAVA’ or domain name http://www.javatpoint.com. The respondent is the registered proprietor of the ‘JAVA’ trademark and is aggrieved by the appellant’s adoption of the trademark ‘JAVATPOINT’ and a logo with the name JavaTpoint. The appellants also run a website under the domain name “www.javatpoint.com.” The Court opined using precedent that use of a registered trademark as part of a domain name would fall within the scope of infringing use under Section 29(5) of the Trade Marks Act. Since Oracle (the respondents) also own and maintain the domain “www.java.com,” the Court prima facie found merit in the argument that internet users may assume association of the appellant’s website with that of the respondent. Hence, the Court found no reason to interfere with the impugned judgement.
Panasonic Holdings Corporation v. Ashok Kumar & Ors. on 3 July, 2024 (Delhi High Court)
The plaintiffs are the registered proprietors of the trademark ‘ANCHOR’ in English and Devnagiri. The plaintiff submitted that the newly impleaded defendant no.10 has been manufacturing counterfeit goods at a certain location and sought an ex-parte injunction and appointment of a local commissioner to visit the location and seize the goods. The Court was satisfied to grant the injunction and appoint a local commissioner at the expense of the plaintiff who is empowered to search the alleged location, prepare an inventory, and seize goods bearing the’ANCHOR’ trademark.
Pramit Sanghvi & Ors. v. Energy Beverages Pvt. Ltd. & Anr. on 10 July, 2024 (Delhi High Court)
Plaintiff no.1 is the registered proprietor of the copyright and unique design in bottles produced by Plaintiff no.2. The plaintiffs aver that the defendants are passing off bottles that are deceptively similar in design which amounts to infringement and hence have sought an ex-parte ad interim injunction. The defendants argued that they conducted independent research and prototyping before arriving at the present design. It was also argued by them that design elements in question were commonly used and since design registrations are obtained on a self-declaration basis with no scope for pre-grant opposition, there cannot be a statutory presumption of validity of the said design. However, the Court found the bottles of the defendants identically similar to bottles of the plaintiffs from a naked eye, with only negligible changes discernible to the eye. The Court found a prima facie case for grant of an injunction in favour of the plaintiffs.
Other IP Developments
- Kannada Actor Rakshit Shetty seeks an anticipatory bail in a copyright infringement case concerning the movie ‘Bachelor Party’.
- Delhi High Court restrains Friends Inc. from using the ‘PETER ENGLAND’ trademark.
- Odisha’s Magji Ladoo has been awarded a GI Tag.