Here are our summaries of the blog posts published last week along with the summaries of some interesting orders from different courts. Anything we are missing out on? Please drop a comment and let us know.
Division Bench of the Delhi High Court’s (Divisive?) Clarification on Divisional Applications
Divide and Rule? The DHC DB’s broad interpretation of the requirement to disclose plurality in provisional or complete specifications instead of the claims is music to the ears of patent applicants. But what is the implication of this order, especially for the pharma sector? Read on to know more.
The nuances of Section 3(d) continue to plague and please litigants, depending on which side of it they end up falling. One issue that regularly pops up is the clash between filing timelines, and clinical trial data necessary to prove ‘enhanced efficacy’, as required to get by the Section 3(d) barrier. Adding to judicial thought on this point, in a recent order in Ischemix Llc vs The Controller Of Patents, the Delhi High Court, noting that written submissions referring to new data are often submitted after final hearings, held that the applicant must clearly place the data to prove enhanced therapeutic efficacy before the Patent Office, prior to the date of the final oral hearing to ensure it is accounted for. Read on to know more.
SpicyIP Tidbit: India-Pakistan Basmati Dispute Dismissed by DHC
Adding another layer of spice to the Basmati rice IP dispute between India and Pakistan, recently the Delhi High Court dismissed the 15 years old suit against the export of Basmati rice by India, for non-prosecution from the plaintiff since 2020.
Case Summaries
Nripendra Kashyap Esco vs Asstt. Controller Of Patents on 24 November, 2023 (Delhi High Court)
An appeal was filed against the impugned order rejecting a divisional application for lack of plurality of invention. The appellant argued that the objection was neither raised in the FER nor in the Hearing notice, whereas the respondent argued that it is the practice of the Patent Office to raise new objections at the time of the hearing and the applicant is later allowed to respond to them. The court held that such a practice is not sustainable and observed that objections have to be in writing and in case any objection comes up during the hearing, the patent office should raise those objections in writing. On the basis of the above, the court set aside the impugned order, directing for a fresh hearing by the patent office.
Sanofi India Limited vs Saint Michael Biotech & Ors on 24 November, 2023 (Delhi High Court)
Holding the defendant’s marks “Comflam/ Comflam+” deceptively similar to the plaintiff’s “Combiflam” mark, the court passed an ad interim injunction, restraining the defendant from using the impugned marks.
The plaintiff was aggrieved by the registration of a deceptively similar “Tiger” device as an artistic work by the defendant and sought rectification of the Copyright register. Considering the near identity of plaintiff’s mark and the defendant’s work, the court directed to maintain the status quo of the registration and held that no transfer, license or assignment shall be permitted in respect of the same.
Himalaya Wellness Company & Ors vs Prk Productions Llp on 24 November, 2023 (Delhi High Court)
The Plaintiff was aggrieved by the use of deceptively similar mark “Vimalaya” in the cinematographic film “Aachar and Co.” and sought permanent injunction against the use of the same. The plaintiff argued that in the film it is purported that the products ‘Liv.52’, ‘Geriforte’ & ‘Evecare’ are emanating from ‘Vimalaya’. The court held that though “Himalaya” and “Vimalaya” are deceptively similar, considering the nature of the relief sought, the court directed to issue notice to the defendant and appear before it.
The plaintiff was aggrieved by the defendant’s application for registration of the mark “Boroplast” under class 17, which it argued to be similar to its registered mark “Boroplast” under class 19. Holding that the plaintiff has made out a prima facie case for infringement and relying on the order of Analco (India) Pvt Ltd vs Navodya Exim Pvt Ltd (where it was held that suit for infringement can be filed if the defendant has filed atrademark application for the impugned mark), the court passed an ex-parte ad interim injunction order.
Sporta Technologies Pvt. Ltd. vs John Doe And Others on 30 November, 2023 (Delhi High Court)
The Delhi High Court held that the defendant’s “Dreams11” mark is deceptively similar to the plaintiff’s “Dream 11” mark and directed MEITY to lock and suspend the defendant’s website www.dreams11exch.com. Apart from comparing the two marks, the court also perused through the screenshots of the defendant’s website, expressing concerns about the contents of the website and over the clandestine manner in which it is being operated.
The plaintiff filed a review petition against the IPAB’s order invalidating its trademark. The impugned order invalidated the plaintiff’s mark for non appearance and had passed an ex-parte order, however, the plaintiff argued that they were not properly served by the IPAB. The court set aside the impugned order for violation of principle of natural justice and held that the rectification petition should be heard afresh.
Selfdot Technologies v. Controller General of Patents on 28 November 2023 (Madras High Court)
Interpreting the requirement to inform the Controller before filing for a patent abroad u/s 39, the Madras High Court ruled that the obligation will not apply to patent of addition and the application for a patent of addition cannot be refused on that ground alone.
Bolt Technology Ou vs Ujoy Technology Private Limited on 30 November, 2023 (Delhi High Court)
A division bench of the Delhi High Court refused to interfere with the single judge order, holding that mere global reputation will not be sufficient to establish trans-border reputation but instead the reputation and goodwill of the mark in the territory of the subject country should be established.
Shantapa alias Shantesh S. Kalasgond v. M/s. Anna on 30 November, 2023 (Bombay High Court)
Applying the doctrine of prosecution history estoppel, the Bombay High Court refused to grant an interim injunction to the plaintiff against the defendant’s use of the mark “Anna”. The court held that during the prosecution stage the plaintiff has asserted that the competing “Anna Idli Gruha” and “Anna” are not similar and thus is bound by this assertion in subsequent legal proceedings.
Other IP Developments
International IP Developments
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- Source: https://spicyip.com/2023/12/spicyip-weekly-review-november-27-december-03.html
