Recently, the Bhaktivedanta Book Trust (Plaintiff), filed a suit seeking permanent injunction restraining infringement of copyright, damages, etc., against several John Doe websites and mobile applications (Defendants) for making available the Plaintiff’s copyrighted works without their authorization. The Plaintiff was established by His Divine Grace A.C. Bhaktivedanta Swami Prabhupada (‘the author’), a renowned scholar and author of religious books and scriptures, known for creating simplified versions of scriptures that are easy to understand. He is also the founding father of the International Society for Krishna Consciousness. The Plaintiff, a trust established by the author, claimed that it owns the copyright in all his work, pursuant to his death in 1977, and that it earns royalties from the commercial exploitation of these works. As per the Plaintiff, it has and continues to spread the teachings of the author in various forms, including through print and electronic media. The Plaintiff submitted that the Defendants do not have any license to reproduce the Plaintiff’s copyrighted works and the deception is evident from the fact that they are citing the Plaintiff’s name as the source. The Delhi High Court, at the outset, observed that there can be no copyright in scriptures. However, copyright may subsist in adaptations of scriptures, including providing explanations, summaries, meanings, exegesis/interpretations or any audio-visual, dramatic works, etc., since they are transformative. In the instant case, the court observed that the Defendants were engaged in large scale piracy, and were not merely reproducing scriptures but the summary, introduction, preface, cover, etc., of the Plaintiff’s copyrighted works.Accordingly, the court restrained the Defendants from reproducing, printing, communicating, etc. any part of the Plaintiff’s works, and directed takedown of the websites and mobile applications. The Bhaktivedanta Book Trust, India v.HTTPS://BHAGAVATAM.IN/#GSC.TAB=0& Ors., CS(COMM) 657/2023, Order dt. September 21, 2023.

The Delhi High Court, recently, temporarily restrained Geetan Luthra, the sole proprietor of VBM India (Defendant) as well as others acting on his behalf, from using the mark VBM as a part of corporate names or as a trademark, in respect of medical equipment or any allied/cognate goods or services, in a suit filed by VBM Medizintechnik GMBH (Plaintiff). The suit was filed based on the Plaintiff’s earlier rights in the mark VBM, which it claims to be an acronym of the initials of its founder ‘Volker Bertram Medical’ and has been used in India since 1992 through distributor agreements with the Defendant’s predecessor, who was made the sole distributor of the Plaintiff’s equipment. The Plaintiff terminated the distributor agreement with the Defendant in 2020, since the Defendant had unauthorizedly filed and obtained a trade mark registration for the mark VBM Device, and refused to transfer it to the Plaintiff. The Plaintiff, thereafter, also filed a cancellation petition against the registration. The Defendant, on the other hand, contended that his use of the mark VBM is bona fide, as it is inspired by the holy Trinity in the Hindu pantheon of Gods, i.e., Vishnu, Brahma, and Mahesh. It was also submitted that the Plaintiff’s founder’s name does not contain the term ‘Medical’. The Defendant further alleged that it was only in the newest version of the distributor agreement in which the IP rights were discussed, and that till then the Plaintiff had encouraged the Defendant’s use of the VBM mark. Lastly, the Defendant claimed that the rival goods were different and therefore, there was no likelihood of confusion. The court observed that the Defendant’s reasoning for adoption of the mark VBM was too simplistic to pass legal muster. The court also noted that even from a mere glance, it is obvious that the Defendant’s VBM Device mark is almost indistinguishable from the Plaintiff’s mark. The court while observing that a prima facie case for passing off has been made out, and restraining the Defendant, noted that he had not only adopted a trade name which was identical to the Plaintiff’s, but also chose to market goods which were not manufactured by the Plaintiff, by affixing a deceptively similar mark, so as to deliberately confuse consumers. This, as per the court, had completely tilted the scales of equity against the Defendant, and warrant grant of a temporary injunction. VBM Medizintechnik GMBH. v. Geetan Luthra, CS(COMM) 820/2022, Judgement dt. September 25, 2023.

The Delhi High Court, recently, held that a rectification petition could be filed against trade mark registration even before the court trying the suit is satisfied regarding the tenability of the challenge. In this case, the Respondent/Plaintiff (“Venus”) had filed a suit against the Petitioner/Defendant (“Mahalaxmi”) alleging trade mark infringement and passing off. Thereafter, Mahalaxmi filed an application seeking the court’s permission to file a rectification petition against Venus’ registered trade mark. While this application was pending disposal, Mahalaxmi went ahead and filed the rectification petition. In these circumstances, the court questioned the maintainability of a rectification petition in relation to a trade mark registration which is already the subject matter of a pending suit. Mahalaxmi placed reliance on the decision of a two-judge bench in Puma Stationer P. Ltd. v. Hindustan Pencil Ltd [(2010) 43 PTC 479], which affirmed the decision of a single judge in a case where the rectification petition and the written statement were filed simultaneously. The single judge had held that (a) even if a rectification petition is filed subsequent to the institution of a suit, it would be in compliance with the statute, and (b) even otherwise, since the court has inherent powers to stay the suit proceedings till disposal of the rectification petition, no useful purpose would be served by proceeding in the suit till the outcome of the rectification proceeding. The court, in this case, held that though the rectification petition cannot be dismissed as being not maintainable, the issue of tenability of the challenge of validity is still open to the court adjudicating the suit, and the rectification petition would be heard on merits only once the court finds Mahalaxmi’s challenge to Venus’ trade mark tenable. As regards the stay of the civil suit, the court has referred the issue for consideration to a two-judge bench as to whether the view taken in Sana Herbals Pvt. Ltd. V. Mohsin Dehlvi [2022 SCC OnLine Del 4482], that after abolition of the Intellectual Property Appellate Board, there is no requirement of staying a civil suit during the pendency of the rectification petition. Mr. Amrish Aggarwal, trading as M/s Mahalaxmi Product v. M/s Venus Home Appliances Pvt. Ltd. & Anr. [C.O.(COMM.IPD-TM) – 258/2022], Order dt. September 27, 2023

In the matter at hand, the plaintiffs, namely Vifor (International) Ltd. and Emcure Pharmaceuticals Ltd., have filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC) seeking interim relief against the defendants. Plaintiff no. 1, Vifor (International) Ltd., a Swiss company, is the patentee of Indian Patent No. IN 221536 (referred to as the ‘Suit Patent’), which is set to expire in 2023. Plaintiff no. 2, Emcure Pharmaceuticals Ltd., is an Indian company and the exclusive sub-licensee of plaintiff no. 1 for the Suit Patent. The Suit Patent pertains to a product known as FERRIC CARBOXYMALTOSE, and it was granted marketing approval in 2011. The World Health Organization (WHO) has assigned the International Non-proprietary Name (INN) FERRIC CARBOXYMALTOSE to the invention claimed in Claim 1 of the Suit Patent. The defendants are Indian group companies, with Biological E Limited being the parent company of defendant no. 2. On 07.06.2023, the defendants sent a notice to plaintiff no. 1, asserting that they are not infringing the Suit Patent as their process differs from the one disclosed and claimed in the Suit Patent. The plaintiffs argue that the Suit Patent has been assigned an INN name by the WHO, which is typically reserved for unique products, not processes. Additionally, they contend that marketing approvals are granted to products, not processes, in accordance with Rules 122B and 122DA of the Drugs and Cosmetics Rules, 1945. The defendants argue that the plaintiffs’ product is a ‘product-by-process’ and not a ‘product’ and ‘process’ patent as claimed by the plaintiffs. They cite a previous case, Vifor (International) Ltd & Anr vs. Dharmendra Vora & Anr, where the plaintiffs themselves described the Suit Patent as related to a “product-by-process” invention. The defendants maintain that although they manufacture and market FCM, there is no infringement of the Suit Patent because their process for obtaining FCM is different from that of the plaintiffs. They point to previous orders by Co-ordinate Benches of the Court where interim injunctions were not granted in favour of the plaintiffs when defendants launched similar products. Further, regarding the non-compliance with Section 105 of the Indian Patents Act of 1970, the defendants sent a notice under Section 105 to the plaintiffs on 07.06.2023, requesting an acknowledgement. The plaintiffs responded on 09.06.2023, stating that the information provided by the defendants was incomplete. However, without affording the defendants an opportunity to provide the missing information, the plaintiffs filed the present suit on 12.06.2023. In the judgement, the Court has considered the irreparable injury suffered by the defendants and the fact that the defendants had already launched their products in the market before the suit was filed. To prevent irreparable loss to the defendants, the Court refused to grant a temporary injunction in favour of the plaintiffs. The court also referred cases from the coordinate benches and the Supreme Court, specifically Wander Ltd. v. Antox, highlighting the distinct factors to be considered when a defendant is already conducting business in the market as opposed to a situation where they have not yet initiated their operations. Additionally, to protect the interests of the plaintiffs, the court observed and opted for an alternate approach where the Hon’ble Court directed the defendants to maintain the accounts of manufacture and sales of FCM until the expiry of the suit patent and further file these accounts via an affidavit within four weeks after the patent’s expiration. Additionally, the defendants were instructed not to use a manufacturing process claimed by Plaintiff no. 1 in the Suit Patent.

The Delhi High Court has, in the much discussed and debated copyright infringement suit filed byHumans of Bombay (“HOB”) against People of India (“POI”), reaffirmed that copyright law does not protect the mere idea but only its creative expression and the imitation of which would constitute copyright infringement under Section 51 of the Copyright Act, 1957 (“Copyright Act”). It was HOB’s case that, it operates a platform where it turns tales from various persons into interviews, posts, and audio-visuals and publishes such material to its website and social media platforms. POI, which operates a similar platform, has imitated many of HOB’s stories, infringing on HOB’s copyright over its content, including photographs, literary works, films, and creative expressions published on its website and social media platforms. HOB had, initially, obtained an interim injunction based on the Court’s prima facie finding that, there was “substantial imitation”, and in some instances, the images were “identical or imitative”. During the oral hearing scheduled on October 11, 2023, POI submitted that HOB’s platform is not unique and there are many such platforms operating with a similar concept all of which are based on the concept first introduced by Humans of New York. POI also submitted that since the images used in the stories were sourced from the subjects themselves, there appears to be an imitation of images HOB has used in its stories. POI also pointed out that some of the images appearing in HOB’s stories are replicas of images used in POI’s stories. The Court while reiterating that HOB cannot claim monopoly over running of a storytelling platform, ruled that, communication and dissemination of stories to individual in a specific manner is “expression” of such idea, which cannot be imitated or copied, and any such imitation would amount to infringement of copyright under the Copyright Act. The Court further ruled that, while, neither platform could claim copyright ownership over photographs of individuals from their own private collection, copyright in commissioned photographs and videos of any individual would vest in the platform which commissioned such work. The Court, accordingly, restrained both the platforms from using each other’s copyrighted works. Humans of Bombay Stories Pvt. Ltd. vs. POI Social Media Pvt. Ltd. & Anr., CS (COMM) 646 of 2023, Order dated October 11, 2023

Syngenta Limited v. Controller of Patents and Designs [C.A (COMM.IPD-PAT) 471/2022]: Syngenta Limited (“Appellant”) had filed an appeal against the impugned order of the Ld. Controller of Patents and Designs. The appeal pertained to the interpretation of the scope of divisional application under Section 16 of the Patents Act, 1970 (“Act”). The origin of the Divisional Application can be traced back to the Appellant’s parent application with the objective of patenting an “agrochemical concentrate comprising an adjuvant and hydrotrope.” The Controller, while refusing the divisional application, held that a divisional application could only be filed if the parent application incorporated claims pertaining to multiple distinct inventions. Additionally, the Controller posited that a divisional application could not be predicated solely on the information provided in the specification accompanying the parent application. The Single Bench of the Delhi High Court had elucidated the Controller’s interpretation (click here to read our previous update on this matter). The Single Judge opined that, to file a divisional application, the parent application should indeed contain claims related to multiple distinct inventions. This constraining perspective seemingly mandated the inclusion of such claims in the parent application and discouraged reliance solely on the disclosures found within the specification. Moreover, the Ld. Single Judge, expressing doubts about the correctness of the position taken in the case of Boehringer Ingelheim International GmbH v. The Controller of Patents (“Boehringer Ingelheim”), formulated the following two pivotal inquiries for the Division Bench (“DB”) to scrutinize and offer its perspective on the maintainability of a divisional application: In the Boehringer Ingelheim case, it was established that in the absence of a plurality of inventions within the claims of the parent application, a divisional application would not be maintainable. It was also stated in that case that allowing the filing of divisional applications without a plurality of inventions in the claims would contradict the fundamental tenet of patent law, namely, “what is not claimed is disclaimed.” Upon addressing these questions, the DB determined that while a plurality of inventions is indeed, a prerequisite for filing a divisional application, this plurality can be ascertained from the provisional or complete specification and need not be rigidly confined to the claims. Thus, the application would remain admissible, whether filed Suo moto or in response to an objection raised by the Controller. Furthermore, the DB made a significant observation that the principle of “what is not claimed is disclaimed” may be applicable in the context of infringement analysis but should not be applied to divisional application submission and claim drafting. The DB asserted that there was no valid basis to attribute this principle to divisional applications, consequently overturning the Boehringer Ingelheim case ruling. The DB has further emphasized that Section 16(1) of the Act allows for the submission of a supplementary application for an invention if it is disclosed in the provisional or complete specification previously submitted with the parent application, expanding the possibilities for filing a Divisional Application, even when the claims in the parent application did not overtly address multiple distinct inventions. The Verdict: The DB has clarified the scope of divisional applications by confirming that such an application is admissible not only based on claims but also on disclosure within the provisional or complete specification of the patent. This interpretation aligns with legislative intent and accommodates situations where multiple inventions are not explicitly claimed in the parent application but are disclosed within the specifications. Syngenta Limited v. Controller of Patents and Designs, C.A. (COMM. IPD-PAT) 471/2022

The Chinese University of Hong Kong and SEQUENOM, INC. (“Appellants”) contested the denial of their patent application 4812/CHENP/2012 by the Assistant Controller of Patents and Designs (“Respondent”) at the Patent Office in Chennai. Their proposed method, “Fetal Genomic Analysis from a Maternal Biological Sample,” was developed through a collaboration between the two appellants, with its claims reduced from 44 to 12 post-discussions with the Patent Office. The respondent contended that this method could identify genetic irregularities in a fetus, categorizing it as diagnostic and thus non-patentable under Section 3(i) of the Patents Act, 1970. The appellants refuted this, maintaining their method only identifies the fetal fraction in a maternal sample and is not intrinsically diagnostic. Highlighting inconsistencies, they noted how some in vitro methods received patents while others did not. Furthermore, the invention disclosed in the patent application is centered on the examination of nucleic acid molecules in a biological sample collected from a pregnant woman. Its objective was to identify the fetal fraction within the sample. This fetal fraction played a crucial role in subsequent testing to diagnose chromosomal aberrations. Notably, the invention itself did not engage in the direct diagnosis of diseases or conditions. Rather, it offered a valuable indicator, known as the fetal fraction, instrumental for subsequent diagnostic processes. The Hon’ble Madras High Court emphasized that a process’s ‘diagnostic’ classification is based on its inherent capability to detect diseases, irrespective of its label. Drawing on the TRIPS Agreement and recent Patent Office guidelines, the court indicated the potential patentability of in vitro diagnostic methods and elaborated on the nature of diagnosis. In conclusion, the Hon’ble Court distinguished between screening and diagnostic tests, establishing that the appellants’ method, though related, was not explicitly diagnostic, rendering objections on Section 3(i) grounds invalid. The Hon’ble judge acknowledged the inconsistencies in patent decisions and underlined the importance of spurring diagnostic tech innovations. The judge also suggested refining Section 3(i) while highlighting potential measures for treatments and leaving the final decision on such amendments to the competent authorities. The Chinese University of Hong Kong and SEQUENOM, INC. vs. The Assistant Controller of Patents & Designs [CMA (PT) No.14 of 2023]

The Delhi High Court, recently, resolved the issue of what shall be the appropriate quorum of a bench for hearing writ petitions filed against orders passed by the erstwhile Intellectual Property Appellate Board (IPAB), in rectification petitions, prior to its abolition. The court held that a single judge would have undisputed jurisdiction to decide such writ petitions and that there will not be any conflict even if the same judge also hears original rectification petitions in other cases. Objections were raised to the listing of writ petitions against orders of the IPAB before a single judge. These objections were premised on the ground that since, pursuant to the abolition of the IPAB, single judges are hearing original rectification petitions, it would be incongruous if writ petitions assailing orders passed by the IPAB in rectification petitions were also heard by single judges, and that propriety commands that they be decided by a bench of two judges. The court rejected these contentions and observed that a single judge would be the appropriate court for deciding such matters as it was beyond question that the present writ petitions were writs of certiorari (in which a higher court reviews a case tried in a lower court/quasi-judicial authority) which are necessarily decided by a single judge both under the Delhi High Court’s IP Divion Rules as well as under the Delhi High Court (Original Side) Rules. The court noted that the single judges of the Delhi High Court are unquestionably judicially superior to the IPAB, and merely because such judges are now vested with the power of deciding original rectification petitions pursuant to the abolition of the IPAB, it would not make them hierarchically or judicially equivalent to the IPAB. The court ruled that no incongruity could possibly be said to arise if the power to hear both original rectification petitions and writs impugning orders passed by the IPAB in rectifications is exercised by a single judge since the jurisdiction exercised in each situation is completely distinct. While, in the former case, a single judge exercises original jurisdiction vested by a statute, in the latter scenario, the single judge acts as a court having supervisory jurisdiction and that of judicial review under the Constitution of India. For these reasons, the court rejected the objections raised and cleared the path for adjudication of these writs on merits. Ayur United Care LLP v. Union of India & Anr. [2023:DHC:7556]

“The Delhi High Court, recently, while interpreting the provisions of Section 124 of the Trade Marks Act, 1999 (“Act”), held that the plea regarding invalidity of a defendant’s registration can also be raised by a plaintiff in its replication. The court also interpreted “prima facie tenability” to be a prima facie view by the court, that such challenge is worth considering. In the present case, the Dharampal Satyapal Limited (“Plaintiff”) filed an application under Section 124 (1)(ii) of the Act, for framing an issue regarding invalidity of the Basant Kumar Makhija’s (“Defendant”) registration, allowing it to file rectification action against such registration. Plaintiff stated that they have made a specific plea of invalidity in various paragraphs of its replication, since the Plaintiff can only raise such a plea only after the Defendant invokes a defense under Section 30(1)(e) of the Act. The Defendant, on the other hand, stated that such plea of invalidity ought to be taken in the plaint, since replication cannot constitute pleadings and the Plaintiff instead ought to have amended its plaint. The Defendant also disputed that the Plaintiff’s challenge to its registration was prima facie tenable which would involve returning of a finding of success of cancellation action filed subsequently. The court after noting that such plea of invalidity arises only after a defendant asserts its rights under the registration and claims defense under Section 30(1)(e) of the Act, held that the Defendant has made a plea as to invalidity of the Defendant’s registration in light of the contents of the replication. As regards prima facie tenability, the court reiterating the ratio of Supreme Court of India in Patel Field Marshal Agencies v. PM Diesels Ltd, AIR 2017 SCC 1388, observed that such a prima facie tenability implies only a prima facie view that such a challenge is worth consideration. The Court further observed that the merits of such challenge can only be adjudicated by the court deciding the validity of the defendant’s registration. The court on the basis of the above-noted observation allowed the Plaintiff’s application, framing an issue of invalidity of the Defendant’s registration and in light of this, also adjourned the civil suit for a period of three (3) months, enabling the Plaintiff to file rectification petition before the Delhi High Court”. Dharmpal Satyapal Limited v. Mr. Basant Kumar Makhija & Ors., I.A. 14129/2023, in CS (Comm) 806/2017, Judgment dated October 17, 2023.

The Delhi High Court, recently, directed Maharaja Appliances Limited (“Defendant”) to pay INR 50 lakhs in damages and Rs. 31.4 lakhs in actual costs to Strix Ltd. (“Plaintiff”) for infringing Plaintiff’s patent (“Suit Patent”) related to a “Liquid Heating Vessel”. The brief fact of the case is that Defendant used to purchase temperature controls from Plaintiff before it started importing kettles with these controls from a Chinese company. It was the Plaintiff’s case that one (1) of the Defendant’s kettle models (Model no. EK-172) used sensors and temperature controls covered by the Plaintiff’s Suit Patent. The Court, after a prima facie consideration of the facts of the case, granted an interim injunction in the Plaintiff’s favour in 2009, which remained in effect until the final decision. The Defendant, in its counterclaim, argued invalidity of the Suit Patent based on the existence of prior art documents/lack of novelty and non-working of the Suit Patent. The Court found that two (2) of the three (3) prior art documents submitted by Defendant were not valid as these two cited prior documents were subsequent to the priority date of the Suit Patent. As regards the third prior art, a European patent, the Court noted that, while the Suit Patent achieved a similar result it was through a different mechanism, making the Suit Patent distinguishable from the European patent. The Court also rejected the Defendant’s claim of non-working in India, citing Defendant’s prior use of the Plaintiff’s product and subsequent import from China. Defendant claimed that they switched suppliers due to defects in Plaintiff’s controls but failed to provide evidence to support this claim, hence the argument was dismissed. The Court thoroughly examined the claims of the patent in question, finding that the defendant’s product indeed infringed upon the Plaintiff’s patent. Notably, the court referred to a significant decision by the UK Court of Appeal in Gerber Garment Technology Inc. v. Lectra Systems Ltd., to determine damages based on a reasonable royalty when the patent holder couldn’t demonstrate specific losses. Consequently, the Court passed a decree for Rs. 50 lakhs in damages and Rs. 31.4 lakhs as actual costs in favour of the Plaintiff. It is worth noting that the Court refrained from issuing an injunction, as the Suit Patent had already expired in June 2015. This case underscores the significance of protecting intellectual property rights and sheds light on the calculation of damages in patent infringement cases.