The Hon’ble Madras High Court, in the case of the case of Novozymes (“Appellant”) Vs. The Assistant Controller of Patents & Designs (“Controller”), while partly maintaining the impugned order, clarified that Sections 3(d) of the Patent Act, 1970 (“Act”) is not confined solely to pharmaceutical substances and that defining efficacy enhancement need not be restrictive, enabling a more expansive interpretation. The Court also ruled that, Section 3(e) of the Act encompasses all claims involving compositions, even those incorporating novel ingredients, heightening the difficulty of patent acquisition for such compositions. It was the Appellant’s case that it had applied for a grant of patent to ‘Phytase’ variants with improved thermostability. The application was examined and subsequently refused on the grounds of non-patentability under Sections 3(d) and 3(e) of the Act. The Appellants, in their appeal, argued that section 3(d) of the Act applies only to pharmaceutical substances, based on legal precedents and that their claimed invention enhanced the thermostability of phytase, which improved its overall effectiveness. The Appellants also contended that Section 3(e) of the Act should apply only to independent claims, not dependent claims. The Controller’s position was that Section 3(d) of the Act applied to all known substances, including biochemical ones like phytase. The Controller also argued that the enhancement of efficacy should be demonstrated in terms of enzymatic activity. Regarding section 3(e), the Controller maintained that it was not limited to independent claims and that the composition should exhibit synergy between its ingredients. The Hon’ble Madras High Court, concurring with the Controller, ruled that Section 3(d) of the Act is not confined to pharmaceutical substances; as it applies to all known substances, including biochemical ones like phytase. The Court also clarified that the enhancement of efficacy does not need to be limited to a specific type of efficacy. Further, the Court did not find that the claimed invention fell within the scope of the explanation to section 3(d), and the principle of ejusdem generis did not apply in this case. Additionally, the court held that even a marginal improvement in efficacy could satisfy the patentability requirement but should still have a meaningful impact on the product’s overall efficacy. As regards Section 3(e), the Court established that Section 3(e) is not limited to compositions formed by aggregating known ingredients and can apply to all composition claims, even those containing new ingredients. In conclusion, the Court maintained the Controller’s refusal decision not to grant claims 8-11 under section 3(e) of the Act due to the absence of evidence that the composition was more than the sum of its parts. This case clarifies that Section 3(d) of the Act applies to biochemical inventions and that the enhancement of efficacy should be examined broadly. It also expands the application of section 3(e) to all composition claims and raises the bar for patentability in this regard. Novozymes (“Appellant”) vs. The Assistant Controller of Patents & Designs (“Controller”)

The Delhi High Court (“Court”) granted injunction in the case filed by 𝐃𝐫. 𝐑𝐞𝐝𝐝𝐲’𝐬 𝐋𝐚𝐛𝐨𝐫𝐚𝐭𝐨𝐫𝐢𝐞𝐬 𝐋𝐢𝐦𝐢𝐭𝐞𝐝 (“Plaintiff”) v/s 𝐒𝐦𝐚𝐫𝐭 𝐋𝐚𝐛𝐨𝐫𝐚𝐭𝐨𝐫𝐢𝐞𝐬 𝐏𝐯𝐭. 𝐋𝐭𝐝. (“Defendant”) for use of the mark “AZIWAKE” as it was phonetically deceptively similar to the Plaintiff’s mark AZIWOK. The court based the observation on the Pianotist Test, which has, “come to be regarded as the gold standard, having been followed and adopted in, among others, the decisions of the Supreme Court”, the High Court held that there was no real distinction between their look and sound. The Court states that the competing words are, in the present case, “AZIWOK” and “AZIWAKE”. There is no real distinction between their “look” and “sound”, especially as the plaintiff holds a word mark registration for the word “AZIWOK”. Though, considering the buyer side, it is obvious that AZIWAKE is phonetically similar to AZIWOK, as they sound deceptively identical to the ear. Additionally, Both the marks are used for the same pharmaceutical preparation, namely, azithromycin. The Court restrained the defendant from using the impugned mark regarding pharmaceutical preparations, or for any other allied of cognate goods or services. It was also clarified that no injunction was passed against the batches of AZIWAKE already circulating in the market or which had been manufactured.

Recently, a Division Bench of the Madras High Court upheld an order passed by a single judge of the court, restraining ITC Limited (“Appellant”) from marking its butter cookies under the mark SUNFEAST MOM’S MAGIC BUTTER COOKIES, in a blue-coloured wrapped, that was deceptively similar to the wrapper used by Britannia Industries Limited (“Respondent”) for its butter cookies under the mark GOOD DAY BUTTER COOKIES, since many years. The Respondent is the registered proprietor of the GOOD DAY/GOOD DAY-formative marks, in Class 30, which has been declared as a well-known mark by the erstwhile Intellectual Appellate Board, as well as the Delhi High Court. The Respondent, recently this year, began using the mark SUNFEAST MOM’S MAGIC BUTTER COOKIES, in relation to butter cookies, in a blue-coloured wrapper, similar to that of the Respondent, suddenly departing from its usual red-coloured wrapper. The Division Bench, while arriving at its decision, opined that the elements constituting the Appellant’s trade dress has been meticulously designed to be as similar as that of the Respondent’s as possible, and is far from a mere co-incidence. The Division Bench, further, put forth that given the nature of the concerned products, being sold in the shelves of supermarkets, any ordinary consumer is bound to be deceived, and that such dishonest adoption is only attributable to the Appellant, given the Respondent’s prior rights. Further, the Division Bench held that trade marks and the trade dresses get their distinctiveness in the combination of the colour scheme and the overall getup thereof, and not in individual components. As regards the question of monopolizing the colour blue, the Division Bench stated that it is the colour scheme, coupled with the overall getup which gives rise to the proprietary right of the exclusive use, and that use of the colour blue as background in the Appellant’s wrapper made its product offend the Respondent’s proprietary rights of its trade marks, trade dress and copyright. Accordingly, the Division Bench upheld the single judge’s order. However, the Division Bench permitted the Appellant to exhaust the impugned products until the depletion of the existing stock. ITC LIMITED v. BRITANNIA INDUSTRIES LIMITED, O.S.A. (CAD) Nos. 134 to 138 of 2023.

The Delhi High Court, recently, granted interim relief to Sun Pharma (“Plaintiff”) in a trademark infringement case against the nutritional-supplement company, Protrition Products LLP (“Defendant”) from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in dietary/health supplements, nutraceuticals, apple cider vinegar and promotional material such as t-shirt, shaker, bags, face mask or any other goods under the marks ABBZORB, ABBZORB NUTRITION, , and or any other trade mark as might be deceptively similar to plaintiff’s trade mark ABZORB. The suit was filed as the Plaintiff was aggrieved by the use, by the defendants, of the marks ABBZORB and ABBZORB NUTRITION. Defendant No. 2 possesses registrations in respect of the marks ABBZORB and ABBZORB NUTRITION, but in Classes 29 and 30. The defendants are, however, using ABBZORB NUTRITION for manufacturing and selling whey protein. The Plaintiff contended that whey protein is appropriately classifiable under Class 5 of the Nice Classification. Thus, unlike the plaintiff, the registered marks of the Defendant No. 2 are not being used in accordance with their registrations, either for the Class, or the goods, in respect of which the marks are registered. As per the Defendant, it bona fidely adopted the mark and contended that the Plaintiff’s brand ‘Abzorb’ should not have been granted registration as it was a mere variant of the common English word ‘absorb’. Further, it highlighted questions regarding the distinctiveness of the Plaintiff’s mark and argued that that any confusion between the two products would be more significant if consumers mistakenly used an anti-fungal preparation in place of whey protein, instead of the other way around. Moreover, the Defendant asserted the stark price difference between the rival products, difference in target consumers and the discrepancy in the pricing of the rival products would render consumer confusion unlikely. The court observed that the aspect of infringement has to be determined, under Section 29 of the Act, on a mark-to-mark comparison and if, mark compared to mark, there was likelihood of confusion or deception, or a presumption of association, there was infringement. The Court also opined that “the possibility of likelihood of confusion had to be assessed from the consumer’s point of view of average intelligence and imperfect recollection who seeks the marks at different points of time. The test had to be applied at the initial interest stage, meaning, when defendant’s mark was initially seen by the consumer and if, on viewing it, he, having earlier seen plaintiff’s mark, was placed in a state of wonderment as to whether the two marks were the same, or associated, there was infringement.” The Court also stated that the sole extra letter “B” in defendants’ ABBZORB, as compared to plaintiff’s ABZORB, was hardly likely to impress itself on the psyche of a consumer of average intelligence and imperfect recollection and there was every likelihood of the consumer confusing one product for the other, or at the very least, presuming an association between the two products as a result of the similarity between the two marks. Any difference between the visual appearance of marks ABZORB and ABBZORB, when seen as labels, was of no consequence”. Thus, the Court held that prime facie, mark ABBZORB was deceptively similar to mark ABZORB, even if mark ABBZORB was seen as a device mark, rather than a word mark. Sun Pharmaceutical Industries Ltd. v. Protriton Products LLP, CS(COMM) 533 of 2022, decided on 24-11-2023.

The Calcutta High Court, in this case, set aside an order passed by the Assistant Controller of Patents & Designs (“Controller”), by way of which it had rejected Biotron Limited’s (“Appellant”) patent application on the grounds of lack of novelty and inventive step, insufficient disclosure, and for the subject matter being non-patentable. The Appellant’s patent application focuses on innovative compounds for treating viral infections, such as HIV, HCV, and Dengue. The Appellant argued that cited prior arts did not impact the novelty of its invention and that they were also cited in other countries where the Appellant was able to overcome the objections and obtain patents. As regards insufficient disclosure, the Appellant submitted that it has disclosed the best methods for working of the subject invention in its application. Lastly, the Appellant also argued that the Controller’s order did not indicate the reasons for objection as regards non-patentability, and simply stated that the invention contains compounds which are derivatives of the compounds constituting the prior art. The court, noting the inadequate consideration of the amendments made by the Appellant and the comparative studies submitted, stressed on the importance of justifying rejections and considering enhanced efficacy, especially in light of the Supreme Court’s decision in Novartis AG vs. UOI & Ors. [AIR 2013 SC 1311]. The court also observed that given the complexity of drug development, post-filing amendments are permissible and do not amount to a self-admission of lack of novelty. Additionally, the court underscored the order’s failure to discuss known substances or their efficacy and emphasized the obligation to consider the objections from foreign patent offices. Consequently, the court set aside the order and remanded the Appellant’s application back to the Patent Office for fresh adjudication.

We are happy to announce that our Patents department has contributed a chapter to the IAM series “Inside India’s IP Market: A Guide 2024”. The insightful article sheds light on the intricacies of patentability and strategies to overcome the inventiveness barrier in securing patents, making it an essential reading for anyone navigating India’s IP landscape. Link to the IAM article: Overcoming the Inventiveness Barrier to Patentability Authors: @Sujata Chaudhari, @Pradeep Bhupatiraju and @Tushar Baranwal

This past month, the Hon’ble Madras High Court has interpreted the application of Section 39 of the Patents Act, 1970 (“Act”), in the case of “Selfdot Technologies (OPC) Pvt. Ltd. (“Appellant”) v. Controller General of Patents, Designs & Trademarks (“Controller”). The Court, taking into account the amendment to the Act in 2005, noted that Section 39 of the Act which requires Indian residents to secure permission before submitting patent applications overseas, is a mandatory provision. In particular, the Court noted that the amendment broadened the applicability of Section 39 to encompass all domains, not solely those associated with defence or atomic energy. The Appellant filed a patent application (201843023004) in India, subsequently filed and granted in the United States. Following this, a U.S. Continuation-in-Part (analogous to a patent of addition in India) was filed both in the U.S. and India. The Controller refused the patent of addition, on the ground of absence of a request for foreign filing permission as mandated by Section 39 of the Act. The Appellant, in its appeal, contended that as the parent patent was initially filed in India, Section 39 of the Act should not apply to the patent of addition. The Controller, on the other hand, distinguished between divisional applications and patents of addition, highlighting that the latter introduces supplementary subject matter not covered by the parent application, necessitating separate permission under Section 39 of the Act. The Court, in its ruling, identified uncertainties within Section 39 of the Act concerning its relevance to patents of addition. The Court also acknowledged the intrinsic connection between the patent of addition and the primary invention, along with the Appellant’s genuine belief that permission was unnecessary due to the prior filing in India. The Court classified the Appellant’s breach as technical (involves a failure to adhere to procedural, administrative, or formal requirements outlined in laws, contracts, or regulations) rather than substantive (non-compliance that goes to the core of the law, contract, or agreement). The Court further stressed that legal constructs such as that in Section 40 of the Act should not exceed their intended scope. The technical breach did not merit the serious consequence of the patent of addition to be deemed to be abandoned as per Section 40 of the Act. The Court, accordingly, set aside the refusal order and referred it for reconsideration. The Court, however, ruled that the Controller was at liberty to impose conditions on the Appellant for procedural infractions under Rule 137 of the Patents Rules 2003 or any other pertinent provision, it deems fit.

The Hon’ble Delhi High Court has partially declined interim relief to Havells India Limited (“Plaintiff”) in a suit for design infringement filed by the Plaintiff, against the use of a wide range of fans (“Suit Designs”) by Polycabs India Limited (“Defendant”). It was the Plaintiff’s case that the Defendant, with its use of the Suit Design, infringed the Plaintiff’s rights in three of its registered designs (2016, 2021, and 2022). The Defendant had also moved a plea to vacate the injunction order granted against the Defendant with respect to the 2016 design. The Court, in its examination of the Suit Designs vis-à-vis 2022 design, differentiated the treatment of Suit Designs from the Plaintiff’s registered designs. In doing so, it emphasized that it is not sufficient to compare Suit Design only with the Plaintiff’s registered designs as appearing on the records of the IP Office but also the visual appeal and overall impression of the actual end products corresponding to the Suit Designs. However, in doing so, the Court stressed that the Plaintiff’s end products must align with the designs’ registrations. The court, in conclusion, ruled that novelty as stated in the registration certificate of 2022 design, lies in surface patterns where significant differences are apparent upon examining the surface patterns of the competing products. The Court dismissed the Plaintiff’s plea vis-à-vis 2021 design, due to insufficient evidence of infringement. As regards the 2016 design, the Court reiterated the similarity between the Defendant’s fans and the Plaintiff’s design and maintained the interim injunction previously granted by the Court. This ruling reaffirms the importance of aligning the competing designs’ visual appeals, actual usage of the design in the end products and submitting substantial evidence while bringing an action of infringement.

The Hon’ble Delhi High Court, in an appeal filed by Procter and Gamble Co. (“Appellant”), against the refusal of their patent application by the Controller of Patents and Designs (“Controller”), emphasized on timely communication of objections, swift decision-making after pre-grant proceedings, and expeditious patent grants. A patent application filed by the Appellant was refused on the ground that the subject matter of the application lacked inventive step, four years after the oral hearing for the application was concluded. It was the Appellant’s case that the order was procedurally flawed as the order in October 2018, four years after the oral hearing for the application was concluded. The Appellant also emphasized that on 5th October 2018, certain clarifications were sought from the Applicant through an e-mail communication. The said email was sent on a Friday and before the Applicant could even respond to the said objection, the decision came on the next working day i.e., on Monday, 8th October 2018. Furthermore, the Appellant stated that under Section 8(2) of the Patents Act, 1970 which was the subject matter of the e-mail notice dated 5th October 2018, the Appellant had six months to furnish the requisite details and to respond to the e-mail of the patent office. The Court scrutinized the patent prosecution process, underscoring the absence of specific timeframes post-oral hearings’ conclusion and urged the Controller to comply with the timelines provided by in the guidelines. Furthermore, the Court proposed maintaining a reasonable period (not beyond three to six months) to prevent arbitrary delays, such as the case in hand. Furthermore, the court set aside the order and instructed the Patent Office to update the application status and outlined a timeline for the Appellant to respond and a fresh hearing. The judgement can be accessed here : https://shorturl.at/goBDX