Here are the quick summaries of 4 posts, 7 case summaries and other IP developments that took place last week. Important IP cases that we’re missing out on? Especially from other High Courts? Please let us know so we can include them!
Highlights of the week
IPD for Madras High Court! In a huge development, the Madras High Court has directed the state government to notify the IPD Rules except with the rule related to court fees, within 1 week from the receipt of the order passed in Galatea Limited v. Registrar General, High Court of Judicature of Madras.
Oh! Reasons where art thou? In yet another order dealing with unreasoned rejections of a patent application, the Delhi High Court comes down heavily on the Indian Patent Office. Praharsh and Swaraj write about this order, underscoring the role played by well-reasoned orders in the appeals before the high court and patent bargain.
Same same but different? Delhi High Court recently passed 2 separate orders on similar facts, granting an interim injunction in one and refusing in the other. SpicyIP intern Niyati Prabhu raises questions around the possible reasoning for this dichotomous situation, highlighting the lack of explained ratio, and questions of varying interpretations of public interest.
We are pleased to announce that the Inter-University Centre for IPR Studies (IUCIPRS), CUSAT, and Third World Network are jointly organizing the 4th edition of their workshop on ‘Patent Opposition in the Pharmaceutical Field’ between April 24-28, 2023. The last date to apply for the workshop is March 25, 2023. For further details, please read the call for applications on the blog.
Delhi High Court refuses to grant ex-parte interim injunction owing to technical nature of the matter.
The plaintiff alleged infringement of its patents in mobile handsets and sought interim injunction from the court. The court however, ruled that since the matter involved technical issues, in absence of a response from the defendant, it will not be in a position to take a prima facie view and thus issued notice to the defendants.
Delhi High Court interprets the application of Section 3(d) on process patents.
An appeal was preferred against the order of the respondent no. 1 rejecting the patent application of the appellant on the grounds mentioned under Section 3(d) and lack of inventive step under Section 2(1) (ja). The appellant argued that since the respondent no. 1 acknowledged that its invention was novel, the bar under Section 3(d) does not apply. Furthermore, they said that the subject invention cannot be used as a blueprint to map the relevant prior art. The appellant also argued that the combination of steps is patentable under Section 3(d) even if some of the ingredients of the process are known. The court however, had a different understanding. On section 3(d) the court explained that the test is narrower for process patent applications and held that since the subject invention does not use any new reactant nor does it result in a new product, the impugned order was correct in rejecting it under Section 3(d). On lack of inventive step and hindsight analysis of the prior art, the court held that the prior arts were cited in the background of the complete specification of the subject patent application and therefore, it cannot be said that a person skilled in art cannot combine the teachings of these prior arts, given the applicant itself referred to both the prior arts.
Protecting trade secrets under copyright law, Delhi High Court grants interim injunction to the plaintiff, restricting the defendant from marketing and selling its market research reports.
Delhi High Court passed an interim injunction restraining the defendant from advertising and selling the impugned market research reports. The plaintiff alleged that the defendant, who is in the same business as the plaintiff of providing market research, was copying substantial parts of its reports and was thus infringing its copyrights and trade secrets. Relying on a few reports, and the titles and table of contents of the other reports, the court prima facie found copyright infringement and passed the present order.
Bombay High Court refuses to grant an interim injunction to the proprietor of Fevicol’s Elephant logo on Defendant’s use of ‘Rhino with a sunset’ logo.
The case pertained to the use of allegedly similar marks by the defendant for adhesive products. The plaintiff alleged that the defendant’s use of ‘Heat-Tik’, ‘LWP+, ‘Mr. Engineer’ and ‘Tikawoo’ logo were deceptively similar to its ‘Heat X’ ‘LW+’, ‘LW’. ‘Dr. Fix it’ and ‘Fevicol’ logo. The court after an overall comparison of the competing mark held that the ‘Fevicol’ logo of 2 elephants and a sunset was not similar to the ‘Tikawoo’ logo of a Rhino with a sunset. Similarly, the court held that ‘Dr. Fix it’ and ‘Mr. Engineer’ logo were not similar either. However, the court held that the ‘Heat-Tik’, ‘LWP+’ marks of the defendant were similar to the plaintiff’s ‘Heat X’ and ‘LW+’ and ‘LW’ marks. The court refused the defendant’s contention that the LW mark is short for “Liquid waterproofing” and is a term common to trade. It held that “For accepting the contention pertaining to common to trade, the defendant would have to pass the stringent test of demonstrating extensive use of the said mark. At this stage, the defendant has failed to convince this
Calcutta High Court restrains Youtuber from referring to Plaintiff’s ‘Real Fruit Juice’ in its impugned video.
Calcutta High Court passed an interim injunction order, restricting the respondent from referencing to the plaintiff’s ‘Real Fruit’ juice in the impugned video. The court expressly admits that the purpose of the video is not objectionable, but it denigrates the plaintiff’s product and thus passed the interim injunction order.
Delhi High Court forms a confidentiality club to facilitate access to commercially sensitive documents.
Dispute arose over the defendant’s offer to sale “Alpha Yohimbine/ Rauwolscine HCL”. The plaintiff alleged that the only way to produce the above product is via using the suit patent process. The defendant however argued that they cannot be compelled to disclose commercial secrets, relying on Section 104A(1). To balance the rights of the parties, the Delhi High Court invoked Rule 17 of Chapter VII of Delhi High Court (Original Side) Rules, 2018, forming a confidentiality club to facilitate access to commercially sensitive documents.
‘Missionary Monks’ is prima facie similar to ‘Old Monk’, holds Himachal Pradesh High Court.
Holding that ‘Missionary Monk’ is prima facie similar to ‘Old Monk’ and agreeing that the defendant is using the term ‘Monk’ in a dominating manner, the Himachal Pradesh High Court passed an ex-parte interim injunction order, restricting the defendant from using “Missionary Monks” mark and other “Monk” formative marks.
Other IP developments
- IT Minister asserts that India is now preparing for 6G, emphasizes on 100s of patent acquisitions for 6G technology.
- Detachable airbags for two-wheelers in the works for Honda.
- Minister for Ayush responds on measures taken to protect ancient and traditional knowledge of the country.
- IIT Bombay records 50 percent increase in patent grants in 2021-22.
- Patna HC takes cognizance of plight of Madhubani painting artists.
International IP Developments
- Lenovo ordered to pay 138.7 Million USD to Interdigital for a Global FRAND license, by a UK Court.
- LIV Golf and a Miami based nightclub lock horns over trademark “LIV”.
- US appeals court held that Apple and Google and others can sue USPTO to challenge a rule reducing the number of patent validity proceedings at the USPTO tribunal.