The Delhi High Court recently dismissed a writ petition by Tata SIA Airlines Limited (‘Petitioner’) seeking issuance of direction to the Ld. Registrar of Trade Marks (‘Registrar’) to include the Petitioner’s VISTARA mark in the list of well-known trade marks. It was the Petitioner’s case that the VISTARA mark was declared well-known by this court in the case of TATA SIA Airlines Limited v. M/s. Pilot18 Aviation Book Store & Anr., CS(COMM) 156/2019 and subsequently, the Petitioner wrote to the Ld. Registrar to consider the decree passed by this court and include the VISTARA mark in the list of well-known trade marks. The Petitioner had also requested the Ld. Registrar to forego the requirement to file form TM-M along with prescribed fees as required under Rule 124 of the Trade Marks Rules, 2017, (‘TM Rules’). However, Ld. Registrar refused to entertain the Petitioner’s requested in any manner other than as prescribed under Rule 124 of TM Rules. The Petitioner, accordingly, filed this writ petition. The Petitioner contended that, once a court order determines a mark to be well-known, Rule 124 of the TM Rules becomes redundant. The Ld. Registrar, on the other hand, submitted that while it will not re-determine if a mark is well-known once such an exercise is carried out by the court, the requirement to file a request in form TM-M along with prescribed fees under Rule 124 of TM Rules for inclusion of such a mark in the list of well-known trade marks is mandatory in nature. The court held that, once a mark is declared well-known by the judicial order of a court, such declaration does not automatically entitle such marks to be included in the list of well-known trade marks maintained by the Trade Marks Registry. The court also observed that Rule 124 of the TM Rules was introduced to implement Section 11(8) of the Trade Marks Act, 1999, since the heading of relevant TM-M form reads as ‘Request for inclusion of a Trademark’ and not ‘Request for determination of a Trademark’. The court, accordingly, dismissed the writ petition and ruled that even after such a declaration, proprietor of such marks would be required to file a request in form TM-M along with prescribed fee as required under Rules 124 of the TM Rules for inclusion of such marks in the list of well-known trade marks. Tata Sia Airlines Limited vs. Union of India W.P.(C)-IPD 64/2021.

Recently, Mohan Meakin Limited (“Plaintiff”) filed a suit for permanent injunction seeking, inter alia, trade mark infringement, passing-off, and unfair competition, against The Devicolam Distilleries Ltd. (“Defendant”) for its unauthorized adoption and use of a mark and trade dress which are nearly identical to the Plaintiff’s OLD MONK mark and trade dress of its liquor bottle. The Plaintiff, a renowned liquor company, has been using the marks OLD MONK and MONK, since 1959, in relation to liquor. Further, the Plaintiff owns registrations for the OLD MONK and MONK marks, in various classes, including Class 33, since 1971 and 2008, respectively. The Defendant filed an application to register the mark DDL’s OMR, in Class 33, on August 25, 2022, which was opposed by the Plaintiff. The Plaintiff’s contention was that the Defendant is using the OMR stylized mark on/in relation to alcoholic beverages, specifically rum, and a holistic comparison of the competing products, evidently exudes an impression of deceptive similarity between the marks/products. Accordingly, the Plaintiff had, in February 2023, sent a letter to the Defendant, demanding cessation of use of the OMR mark (which is an acronym of OLD MONK RUM), trade dress, shape and overall get up of its product. The Defendant refused to comply with the said demands. The court, in agreement with the Plaintiff’s submissions, opined that the Defendant’s use of the OMR mark in a similar stylized font, in conjunction with a near identical trade dress, shape and overall appearance, in relation to identical products which may be stocked/sold in common premises, is, undoubtedly, an attempt to create confusion among the public, and to ride upon the Plaintiff’s coattails. Further, the court stated that the Defendant’s deliberate imitation of not only the Plaintiff’s registered well-known trade marks, but also the appearance of the alcohol bottle is a clear testimony to the Defendant’s dishonest adoption and mala fide intent. In light of the above, the Court, passed an ex-parte ad-interim injunction in favour of the Plaintiff restraining the Defendant from using, selling, importing and/or exporting the contended product/bottle, comprising, inter alia, the impugned mark and the overall get up of the product/bottle.

Recently, the Bombay High Court granted an interim injunction in favour of Mauj Mobile Pvt Ltd (“Plaintiff”) restraining Mohalla Tech Pvt Ltd (“Defendant”) from using the mark MOJ or any other mark deceptively or confusingly similar to the Plaintiff’s registered mark MAUJ. It was the Plaintiff’s case that the Defendant is infringing the Plaintiff’s registered mark MAUJ by using a deceptively similar mark MOJ, which is a mere misspelling of the mark MAUJ and such misspelling does not render the marks phonetically dissimilar. Moreover, the words MAUJ and MOJ connote same meaning in the Hindi language. The Defendant, on the other hand, argued that the mark MOJ is an acronym of Moments of Joy, and the presence of a laughing emoji makes the mark visually and structurally different from the Plaintiff’s mark. The Defendant also argued that, in addition to the visual dissimilarity, the fact that the rival parties operate in different business model (B2C vs. B2B), obliviates any likelihood of confusion. The court held that, mere change of spelling of a mark and addition of an emoji is insufficient to distinguish the rival marks from one another. Further, the different is business models of the rival parties is also insignificant, as long as the nature of rival services are similar. The court also rejected the Defendant’s submission that MOJ stands for ‘Moments of Joy’ as being an afterthought, as the Defendant did not submit any material evidence to substantiate this claim. Accordingly, the court granted an ad interim injunction in favour of the Plaintiff and restrained the Defendant from using the mark MOJ or any other mark deceptively or confusingly similar to the Plaintiff’s registered mark MAUJ, till the final disposal of the suit. Mauj Mobile Private Limited vs. Mohalla Tech Private Limited & Ors., Interim Application No. 1466 of 2021 in Commercial IP Suit No. 195 of 2021, Judgment dated June 5, 2023.

Recently, the Calcutta High Court, while setting aside the refusal order of the Controller of Patents (“Respondent”), remanded the patent application back to the Controller for a fresh reconsideration and issuance of Second Examination Report (SER) within three months. A patent application titled “charging system and charging method, power adapter”, bearing Application No. 201737035802, was filed by Guangdong Oppo Mobile Telecommunications Corp., Ltd. (“Appellant”). The Application was examined, and subsequently refused, by the Controller, on the grounds that the same is inter-alia not patentable under Sections 2(1)(j) and 10(4) of the Patents Act, 1970 (“the Act”) i.e., lacked novelty and inventive step. The Appellant argued that the impugned refusal was de-facto a non-speaking order as it did not substantiate cogent reasons for rejection of the application. Further, the Appellant argued that the impugned order used the words “novel” and “inventive” interchangeably without appreciating the meaning and content thereof. In addition, it was argued that additional prior art references were introduced impromptu, during the Hearing, without giving the Appellant a reasonable opportunity to consider such prior art and respond to them. Lastly, the Appellant contended that no SER was issued despite amendment of claims after objections raised in the First Examination Report, thereby resulting in non-examination of the amended specifications. The Hon’ble Court held that the impugned order lacked reasoning and failed to demonstrate the rationale as to how the prior art documents defeated the novelty of the subject invention. The Court also noted that the combination of prior art documents must have a common thread and cannot be based on hindsight deductions. Regarding the issuance of the SER, it was observed that as per Section 13(3) of the Act, an amendment application must be examined in a manner similar to the original application. Lastly, it was condemned that the Appellant was neither granted an opportunity to amend its claims nor was an SER issued. The Court, accordingly, set aside the refusal order and remanded the patent application back to the Controller for a fresh reconsideration, and issuance of SER upon examination of the amended claims. GUANGDONG OPPO MOBILE V THE CONTROLLER OF PATENTS, AID NO. 20 OF 2022.

“ The Delhi High Court, in its recent judgement, has directed Oppo to deposit 23% of the proceeds of their India sales as pro-tem deposit. Nokia filed an appeal before the division bench of the Delhi High Court challenging the order passed by the learned Single Judge dismissing Nokia’s application seeking interim deposit in a patent infringement suit of its three Standard Essential Patents (“SEP”) against Oppo in India. Nokia and Oppo executed a License Agreement in 2018 allowing Oppo to use some of Nokia’s SEP excluding the use of 5G patents. After the expiration of the 2018 agreement, Oppo allegedly refused to execute a new License Agreement and had sold around 77 million 5G devices because of high demand in India without paying any royalty to Nokia. Subsequently, Nokia initiated 13 patent infringement proceedings against Oppo worldwide. Considering that 5G devices account for 52% of Oppo’s sales in India, Nokia sought a pro-tem deposit from Oppo of a royalty amount. Oppo contented that any pro-tem arrangement is a conditional injunction order, and the four-fold test that applies for an injunction must also apply at the pro-tem stage. The court clarified that to balance the equities in such cases, the Indian courts have the power to pass a pro-tem order without going into the merits. The Court further observed that a pro-tem security order is not linked to an injunction and highlighted that if Oppo does not make a pro-tem deposit, Nokia will suffer an irreparable loss as its patents will be used without the benefit of royalties. The Court also considered the four-fold test set by the single Judge as contrary to the law. Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corpn. Ltd., FAO(OS) (COMM) 321/2022 & CM APPL. 53576-53579/2022 ” #Patents #SEP #PatentInfrigment #Nokia #Oppo #Highcourt #India #5G #SCIP #lawupdate

The Bombay High Court recently dismissed an application for ad-interim injunction by Shemaroo Entertainment Ltd. (“Plaintiff”) against Super Cassettes Industries Pvt. Ltd. (“Defendant”) from using songs of 24 cinematographic films on which the Plaintiff alleged to have copyright ownership. It was the Plaintiff’s case that the Defendant’s use of these songs without license from the Plaintiff infringed Plaintiff’s rights in these songs which it acquired from the true and first owner of these songs by way on assignments. The Defendant, on the other hand, submitted that, the Plaintiff has not placed any assignment agreement on record to establish that it as copyright over these songs and that it has the right to sue. The Defendant also submitted that the suit was fraught with delay of 5 years and there was an acquiescence of Defendant’s acts on the Plaintiff’s part since the Defendant have been uploading these songs from 2012 onwards. The court, while agreeing with the Defendant, held that, the Plaintiff took a considerable time to file the present suit even after being aware of the act of the Defendant. The court also observed that the Plaintiff had not submitted the documentary proof of assignments to establish its rights in all the films. The court, accordingly, dismissed the application for ad-interim injunction moved by the Plaintiff. Shemaroo Entertainment Ltd. vs Super Cassettes Industries Pvt. Ltd. & Ors. [COMMERCIAL IP SUIT NO. 297 OF 2022].

Recently, the Hon’ble Delhi High Court delivered a landmark judgment clarifying that the Competition Commission of India (CCI) lacks authority to inquire into the exercise of patent rights. As background, the court examined the validity of two previous judgments, in 2016 and 2020, where it was held that the CCI has the power to proceed against patentees under the Competition Act, 2022 (Competition Act). The patentees’ argued that the legislative intent and provisions of the Patents Act, 1970 (Patents Act) make it clear that the Competition Act should not deal with patent-related matters. The court, while considering whether the Patents Act is a special act, emphasized the need to consider three key factors: (i) the subject matter in question, (ii) the intendment of the statutes in respect thereof, and (iii) whether the scheme and relevant provisions of the two statutes have any indication apropos which, the legislature felt must override the other, especially when both statutes have a non-obstante clause. Based on these considerations, the court held that the Patents Act is a special statute whereas the Competition Act is general legislation focused on regulating anti-competitive agreements and addressing abuse of dominant position. Further, the Patents Act was amended after the enactment of the Competition Act to include within its purview provisions similar to the Competition Act where power was given to the Controller of Patents to make inquiries concerning patent-related matters. Therefore, the court observed that, the legislative intent is clear that the Patents Act must prevail over the Competition Act where the issue is in relation to exercise of rights by a patentee. Accordingly, the court disposed of the writ petition and the appeals setting aside the proceedings initiated by CCI against the patentees. In conclusion, the Delhi High Court’s judgment clarifying the authority of the CCI in relation to patentees’ rights has important implications for businesses operating in India. The ruling reaffirms the special status of the Patents Act and its dominance in matters related to patent rights. This development provides guidance to future cases and enhances legal certainty in the realm of competition law and patents in India.

The question regarding retrospective applicability of the Trademarks Rules, 2017 (“Rules 2017”), was recently raised before the Delhi High Court in an appeal filed by the SAP SE (“Appellant”) against impugned order issued by Trade Marks Registry dated June 12, 2023 arose out of the opposition filed by the SWISS AUTO PRODUCTS (“Respondent”) against the mark SAP (“Appellant’s Mark”) in Class 9. The crux of the present appeal arose due to delay of 3 months in filing evidence as part of prosecution proceedings for registration of Appellant’s Mark and the Ld. Registrar refused to accept the evidence. The Appellant relied on Rule 53 of the Trademarks Rules, 2002 (“Rules 2002”) which gives discretionary power to the Ld. Registrar to extend the deadline. The impugned order was passed at the time when the Rules 2002 and had been superseded by the Rules 2017, by coming into effect on March 6, 2017. In view of the preamble of the Rules 2017 which states that the Central Government has made the Rules in suppression of the Rules 2002, “except as respect things done or omitted to be done before such suppression, namely:”, but does not list any such acts done or omitted to be done, which seems to be a legislative oversight. The court in the said appeal took stance of the Hon’ble Supreme Court on the issue of retrospective application of law which states that “The highest judicial authority has maintained that procedural amendments are presumed to hold retrospective efficacy, unless the amendment statue explicitly or implicitly suggests to the contrary.” The court was of the view that the Rules 2017 were procedural in nature and would be applied retrospectively. However, the court contradicted with the decision given by the coordinate bench in the case of Mahesh Gupta v. Registrar of Trademarks and Anr. (2023/DHC/001627), Wherein the court has taken the view that the proceedings which were initiated under Rules 2002 would have to be adjudicated under the said Rules. Based on the decision of the Supreme Court in Central Board of Dawoodi Bohra Community and Anr. V. State of Maharashtra and Anr., the Court has referred the matter to a larger bench to decide the following issue

The Delhi High Court, recently, restrained Wipro Enterprises Pvt. Ltd. (“Defendant”) from manufacturing, selling, offering for sale, advertising, directly or indirectly, female hygiene and menstrual health products under the mark EVECARE and/or any other mark which is deceptively similar to Himalaya Wellness Company’s (“Plaintiff”) registered trade mark, EVECARE. The suit was filed based on the Plaintiff’s earlier rights in the marks, EVECARE and EVECARE FORTE, for products used to relieve symptoms of dysfunctional uterine bleeding. The Plaintiff submitted that it has been selling ayurvedic uterine tonic under these marks for nearly 24 years. Conversely, the Defendant launched its product under the mark EVECARE only in 2021. As per the Plaintiff, both the products are ‘hush products’ pertaining to menstrual and reproductive health of women, and therefore, buyers may exercise less than normal inquisitiveness, increasing the likelihood of confusion. As per the Defendant, it bona fidely adopted the mark for its feminine hygiene products since ‘EVE’ represents that it is a female-centric brand, and ‘CARE’ gives it a protective tone. Further, as per the Defendant, its searches of the records of the Trade Marks Registry did not reveal any application/registration for the mark EVECARE in Class 3, and accordingly, it has also successfully obtained a registration for this mark. Further, the Defendant submitted that the Plaintiff decided to use the mark EVECARE for intimate wash only in August 2022, and the rival products are different in nature, i.e., ayurvedic medicine in Class 5 v. cosmetic intimate wash in Class 3. The court observed that the Plaintiff had been using the EVECARE marks for several decades, and had in its prima facie view acquired significant goodwill and reputation. The court further opined that a simple due diligence exercise conducted by the Defendant would have informed it about the existence of the Plaintiff’s product. The court noted that the rival products are used for the same physical ailments, and owing to the nature of the goods, there is added factor for likelihood of confusion since a prospective buyer of such products is unlikely to ask too many questions since menstrual health is still not a subject of free and open discussion. Accordingly, the court granted an interim injunction in favour of the Plaintiff. Himalaya Wellness Company & Ors. v. Wipro Enterprises Private Limited, CS(COMM) 118/2023, Judgement dt. July 12, 2023.

The Delhi High Court clarifies the scope of product-by-process claims in patent cases: In Vifor International Ltd. and Anr. v. MSN Laboratories Pvt. Ltd. and Anr., CS(COMM) 261 of 2021, the Single Judge ruled that the patent protection for product-by-process claims is limited to the specific process claimed in the patent, rather than the product as a whole. The case is centered around Vifor’s patent claim for a drug used in treating iron deficiency anemia. Plaintiff: Vifor International Ltd., (“Vifor”) Defendants: MSN Laboratories Pvt. Ltd. (“MSN”), Dr. Reddy’s Laboratories Ltd. (“DRL”), and Corona Remedies Pvt. Ltd. (“CRPL”) Suit Patent No.: 221536 (“IN536”) titled “Water Soluble Iron Carbohydrate Complex and a process for producing water iron carbohydrate complex” Vifor’s Claims: Vifor contended rights over the IN536 for a drug used in treating iron deficiency anemia, by asserting that their patent covers the product per se, irrespective of the process used to manufacture the drug, Ferric Carboxymaltose (FCM). Vifor argued that the process mentioned in the patent claims was only an aid in describing the end product, and that the patent’s scope extended to all processes leading to the creation of FCM. The Plaintiff buttressed their claim by arguing that the definition of ‘invention’ under the Patents Act, 1970 (hereinafter the “Act”) only recognizes an invention as a ‘product’ or ‘process’ and does not have a separate category for patent-by-process claims. Vifor further contended that it had used the exemplary process of preparation of the product. This is because the molecular composition of the invented product in question is large and complex and could not be accurately described in a conventional sense using formulaeor chemical structure. Thus, Vifor insisted that the IN536 is a product claim, and they have acquired the exclusive right, under Section 48 of the Act, to prevent third parties from making or using the FCM product obtained directly from the process protected by IN536, or any other process. Defendants’ Claims: The Defendants submitted that since the claim of IN536 wasdrafted as a product claim with the limitation of a process, and if the claim leads to a monopoly of the product as a whole, itwill render the process limitations of the claim meaningless. Further, MSN and DRL contested Vifor’s claims by stating that since the scope of the product claim of IN536 is limited to a product obtained by a specific process, i.e., oxidation of maltodextrin using aqueous hypochlorite, which is an essential and critical determinant of Vifor’s FCM, and does not cover any other process to obtain FCM, use of a different process by MSN and DRL to produce FCM will not amount to infringement. Court’s Observations: At the outset, the Court referred to the ‘Guidelines for Examination of Patent Applications in the Field of Pharmaceuticals’ issued by the Patent Office in October 2014 to indicate that concept of product-by-process claims was not alien to the patent jurisprudence of India. The Court observed that the scope of rights granted by means of a patent is in exchange for the disclosure of the invention in the patent claim, and the scope cannot travel beyond the disclosure made by the patentee. The Court concurred with the contentions of the Defendants and observed that in a product-by-process claim, the process terms in the claims are the limitations, rather than the additional features of the product. A case for infringement in such cases can only lie where the product is prepared by the specific process of the claim in the suit patent. The Court categorically rejected the contention of the Plaintiff that the use of the words ‘obtainable from’ in the patent claims is a description of one of the various ways in which FCM can be produced. The Court noted that Vifor in its response to the FER issued by the Indian Patent Office, while distinguishing IN536 from the cited prior art, had submitted that the essence of the invention resided in a specific limitation of the claim, thereby limiting the scope of its patent claim. Moreover, Vifor had also submitted that IN536 is a process claim in an opposition matter, and that it is a product-by-process patent during patent infringement proceedings. Hence, Vifor cannot be allowed to approbate and reprobate, especially when it has obtained the patent by representing that the novel properties in its product are attributable to the characteristic features in the process involved. The Court concluded that since MSN and DRL claimed to have used a different oxidizing agent than Vifor (aqueous hypochlorite v. oxone), and CRPL claimed to have used a starting material than Vifor (maltodextrin v. starch hydrolysate), such changes in the oxidizing agent and starting material are not insignificant, and therefore, Vifor had failed to make a prima facie case of infringement by the Defendants.Accordingly, the Court permitted the Defendants to launch their product FCM with the caveat that the Defendants shall not use a process/set of processes covered under IN536. Conclusion: The Court has recognized that product-by-process claims are not unknown to Indian jurisprudence. The Court has alsoreinstated the principle that since grant of patent rights is restricted to the disclosure in complete specification, patent protection in product-by-process claims will be restricted to the process by which the product is obtained, and monopoly right cannot be claimed on a product as a whole.