The Advertising Standards Council of India (“ASCI”) recently published draft guidelines for advertisers to consider while making green claims. The object of these guidelines is to curb the practice of greenwashing, i.e., making false or misleading claims to indicate that products/services/processes are less harmful to the environment. Some important features of the guidelines are as follows: ■ A green claim must suggest that a product or service has a positive impact on the environment or is comparatively less damaging than its own previous versions, or from competing products. ■ If a claim refers to a product or service is absolutely ‘environment friendly’, ‘eco-friendly’ ‘sustainable’, and ‘planet friendly’, it must be supported by a “high level of substantiation”. ■ Claim should also be based on the full life circle of the advertised product or service, or else, should be restricted to only limited claims. ■ Claim should also clarify whether it refers to the whole product/process/packaging/service, or only a portion. ■ Advertisers must not mislead consumers by stating that their product or service “does not” cause environmental damage. ■ Claims related to carbon offset should disclose whether the reductions will occur for two years or longer. ■ Claims pertaining to products being biodegradable should have scientific data to show that the product is free of environmentally hazardous elements.  

The Petitioner was granted a patent for its invention titled “An improved process for the preparation of Linezolid” in 2017, which was opposed by one of the respondents, i.e., Symed Labs Limited, in 2018. Symed had, thereafter, submitted evidence to support its opposition, to which the Petitioner had responded without any evidence. Subsequently, Symed filed additional evidence along with its further reply. In 2019, the Opposition Board constituted by the Controller of Patents and Designs issued its recommendations. Later, the Petitioner filed an expert affidavit in 2020 as further evidence consequent to which Symed filed further evidence in 2021. In 2023, the Petitioner filed a request for amendment of claims, and this was notified in the Patent Office Journal. A hearing notice was issued in the opposition thereafter. The Petitioner’s case was that Symed was not entitled to file additional evidence with its rejoinder, since the Petitioner did not submit evidence along with the reply statement and that the Opposition Board was obliged to consider the additional evidence filed by both parties and issue fresh recommendations. The Petitioner also argued that the amended claims should be placed before the Opposition Board. On the other hand, Symed argued that the Opposition Board is not required to examine the evidence submitted subsequent to issuance of a hearing notice, and that the Petitioner is attempting to scuttle the proceedings in view of the recommendations of the Opposition Board. The court observed that both parties were permitted to and submitted evidence subsequent to the issuance of the recommendations of the Opposition Board, and the Petitioner’s amended claims were also notified in the journal. Therefore, the court held that it was meaningless for the matter to be decided based on the old recommendations. The court, accordingly, directed the Controller of Patents and Designs to form a new Opposition Board within 30 days, which will examine the evidence and provide recommendations within 2 months. The court emphasised the need for an expedited process due to Symed’s concerns that the Petitioner’s writ may be aimed at delaying the proceedings. Optimus Drugs Private Limited v. Union of India & Ors., W.P.(IPD)/24/2023 and WMP(IPD)/6/2023, Madras High Court, order dt. December 12, 2023 The Judgement can be accessed here : https://shorturl.at/lorK2

In a recent ruling in the case Filo Edtech Inc. (“Appellant”) v. Union of India & Anr. (“Respondents”), the Delhi High Court addressed the issue of determining the situs of the High Court in a patent appeal. The patent application, in this case, was assigned to the Delhi Patent Office for a hearing, however, the filing was done at, and the appropriate office was designated as, the Bombay Patent Office. Further, the First Examination Report (FER) was issued on the official letterhead of the Bombay Patent Office. Correspondingly, the response to the FER was also directed to the Bombay Patent Office. Thereafter, a Controller of Patents issued a refusal order, leading to an appeal before the Delhi High Court. Notably, the Controller’s order under scrutiny did not specify the office’s location. The key issue was whether the situs of the High Court for hearing the appeal should be based on the territorial jurisdiction of the Controller who issued the order or the territorial jurisdiction of the appropriate office where the application was initially filed. The Appellant argued that the situs should be Delhi since the patent was rejected by a Controller in Delhi, while the Respondent relied on the precedent set in the case of Dr.Reddys Laboratories v. Controller of Patents [2022/DHC/004746], to assert that the jurisdiction would lie with the appropriate office. The court considered the statutory definitions of the term “High Court”, and analysed precedent case law to hold that held that the appropriate office is crucial in determining the situs for filing an appeal. The court emphasized that the appropriate office, once decided, should ordinarily not be changed. The court further clarified that it was aligned with the precedent set in the Dr. Reddys case confirming that the situs of the High Court in a patent appeal ought to be determined by the location of the appropriate office where the application was initially filed. Judgement Docs can be accessed here, https://shorturl.at/bmrHW Filo Edtech Inc. V. Union of India & Anr., C.A.(COMM.IPD-PAT) 30/2023, Delhi High Court, Judgement dt. November 21, 2023

The Hon’ble Delhi High Court, recently, declined interim relief to the Institute of Directors (“Plaintiff”) in a suit for trademark infringement against use of its mark, INSTITUTE OF DIRECTORS and its formatives, in relation to educational services by WorldDevCorp Technology and Business Solutions Pvt. Ltd. (“Defendant”).  The suit was filed based on the Plaintiff’s earlier rights in its registered marks on/in relation to books, magazines, brochures, etc. The Plaintiff argued that the Defendant’s use of the mark DIRECTORS’ INSTITUTE in relation to education services was bound to cause confusion in the minds of the public. The Plaintiff submitted that there has been actual instances of consumer confusion and alluded to evidence supporting this claim. The Defendant, on the other hand, argued that the Plaintiff’s arguments were not sustainable, as it had, in its response to the examination report issued by the Trade Marks Registry, argued that its mark IOD INSTITUTE OF DIRECTORS BUILDING TOMORROW’S BOARDS comprised of words common to the English language, which are descriptive in nature and cannot belong to any one proprietor. The court observed that the Plaintiff had suppressed the material facts raised by the Defendant, and has itself admitted to its marks being descriptive as well as lacking any distinctive character before the Trade Marks Registry. The court, therefore, held that commonly used English words, or a non-distinctive combination of such words, cannot be monopolised by any one person, so as to disentitle the rest of the world to the use thereof. Accordingly, the court declined to grant interim relief to the Plaintiff.   Institute of Directors v. WorldDevCorp Technology and Business Solutions Pvt. Ltd.& Ors. CS (COMM) 611/2023, Judgement dt. December 12, 2023.

Recently, the Delhi High Court granted an interim injunction in favour of Khandelwal Edible Oils Limited (“Plaintiff”) in a trade mark and copyright infringement suit against Landsmill Agro Private Limited (“Defendant”), for unauthorized use of CHAKRA and CHAKRA-formative marks and similar packaging in relation to edible oils. As per the Plaintiff, it adopted and has used the mark CHAKRA for edible oils since 1997 and also owns a trade mark registration for this mark. The Plaintiff also owns copyright for the packaging of its edible oils. The Plaintiff submitted that the Defendant’s CHAKRA KOLHU, CHAKRESH, and CHAKRIKA marks and packaging bear a striking similarity in style, print, colour scheme, and overall presentation to the Plaintiff’s marks and packaging, thereby constituting infringement. The Plaintiff also brought to the attention of the court, the Defendant’s averments as to the similarity of the rival marks, in a cancellation action it had filed against the Plaintiff’s registration for the CHAKRA mark. The Defendant, on the other hand, argued that the term CHAKRA is common to trade, being descriptive of the manner of oil extraction and therefore, the Plaintiff cannot claim monopoly over such a word. The Defendant further claimed that it uses its marks in relation to multigrain edible oil, as opposed to mustard oil in relation to which the Plaintiff uses its marks. As regards the allegation of prosecution history estoppel, the Defendant claimed that this was merely a clerical error and it had, in the rectification petition also taken the ground of CHAKRA being common to trade. The court observed that the Defendant failed to establish that the mark CHAKRA was common to trade, and noted that the rival marks and goods are deceptively similar. As regards descriptiveness of the CHAKRA mark, the court clarified that a mark must be descriptive of the characteristics of the goods and services, and not of the manner in which they are produced, which is the case here. Further, the court was of the view that the Defendant had earlier advanced contrary submissions and cannot escape from its own admissions as to deceptive similarity of rival marks. Additionally, the court found that a case of copyright infringement is also made out due to substantial similarities in the labels. In conclusion, the court held that the Defendant’s CHAKRA KOLHU mark infringed the Plaintiff’s rights in the CHAKRA mark, however, the other marks, namely, CHAKRESH and CHAKRIKA are not similar to the Plaintiff’s mark. The court, accordingly, granted an interim injunction along these lines. Judgement Docs can be accessed here,https://shorturl.at/otCZ7 . Khandelwal Edible Oils Limited v. Landsmill Agro Private Limited, CS(COMM) 568/2021, Judgement dt. December 22, 2023

The Hon’ble Delhi High Court, recently, refused to grant interim relief to Khadi and Village Industries Commission (“Plaintiff”) against use of its mark, KHADI by Girdhar Industries & Anr. (“Defendant”), in a suit for trade mark infringement. It was the Plaintiff’s case that, by virtue of prior use of the mark KHADI, its rights in the mark precede the Defendant’s rights in the mark GIRDHAR KHADI. Accordingly, Plaintiff had sought cancellation of registrations granted in the Defendant’s favour for the mark GIRDHAR KHADI. The Defendant argued that its rights in the mark GIRDHAR KHADI were much prior to that of the Plaintiff in the mark KHADI, for goods such as soaps and detergents. Further, the Defendant had submitted that the onus was on the Plaintiff to prove that it was using the mark KHADI in relation to soaps and detergents prior to the Defendant’s adoption of its mark. In order to prove its prior use, the Plaintiff had relied on evidence such as news articles, licenses for manufacture of soaps, etc. The court while refusing the interim relief observed that, the Defendant was the registered proprietor of the mark GIRDHAR KHADI. Therefore, no infringement action can be held to be valid against a registered mark. As regards passing off, the court observed that the Plaintiff was unable to substantiate that the mark KHADI had acquired goodwill and reputation in relation to soaps, prior to 2001, the date of use of the mark GIRDHAR KHADI by the Defendant. The goodwill or reputation acquired by the Plaintiff after that date, was of no consequence. Further, the court held that the evidence submitted by the Plaintiff was only indicative of the fact that the Plaintiff was venturing into production of soaps and detergents and did not prove actual use of the mark KHADI on soaps or detergents. Accordingly, the court declined to grant an interim relief to the Plaintiff. Khadi And Village Industries Commission vs. Girdhar Industries And Anr. CS (COMM) 130 of 2022, Judgment dated December 28, 2023

Recently, in the case of Pharmacyclics LLC & Anr. (“Plaintiff”) v. Hetero Labs Limited & Ors. (“Defendant”), the Court restrained the Defendant from manufacturing and marketing of Ibrutinib, a patented drug to treat cancer, while allowing the Defendant to exhaust their existing stock upon filing details with the Court, given the importance of the drug. The suit patent was, however, subsequently, invalidated by an order of Joint Controller of Patents & Designs (“Controller”), in a post-grant opposition proceeding initiated by Laurus Labs Ltd on the ground that its lacked novelty and inventive step. Accordingly, the Court ordered a stay on the injunction order passed against the Defendant. However, The Controller’s order was overturned by the Intellectual Property Appellate Board (IPAB) in an appeal filed by the Plaintiffs and suit patent was restored. The Plaintiff, during the next hearing at the Court, relied on IPAB’s order upholding the suit patent’s validity, whereas the Defendant questioned the IPAB’s order on the ground that tenure of the Chairman of IPAB, who authored the order, had expired before he passed the order on September 19, 2020. The Court, however, noted that the Hon’ble Supreme Court in the case of International Association for Protection of Intellectual Property v. Union of India had extended the tenure of the IPAB Chairman until December 31, 2020. Hence, the IPAB’s order was valid and the Court, following a detailed examination of chemical structures and prior art documents, restored the interim injunction order passed against the Defendant. Judgement Docs can be accessed here, https://shorturl.at/yPU36 Pharmacyclics LLC & Anr. v. Hetero Labs Limited & Ors. [CS(COMM) 76/2021, Delhi High Court, Decision dated December 21, 2023]

The Bombay High Court recently restrained several websites fraudulently providing PAN related services and noted that the continuation of these websites would compromise valuable confidential data and pose a national level threat. The Plaintiff (“UTI Infrastructure Technology and Services Limited), exclusively authorized by the Income Tax Department for processing the Permanent Account Number (“PAN”) and PAN related services such as Aadhar Card, Voted ID, driving license, etc., since 2003, filed the present suit against the Defendant websites, unauthorizedly using the Plaintiff’s labels and marks such as PAN/ UTI PAN/ UTI/ UTI ITSL/ UTITSL etc. The counsel appearing for the Plaintiff demonstrated that the Defendant websites are fraudulently collecting personal and confidential data and issuing fake PAN cards to the public, while misrepresenting themselves to be authorized by the Plaintiff for issuance of PAN and PAN related services. The Court observed that since the PAN card and Aadhar Card are acceptable proof of identification in India, any unauthorized use is not only detrimental to the interest of the Plaintiff, but also to the national interest. In light of the aforesaid, the Court granted an ex-parte ad-interim injunction restraining the Defendant websites and directed the relevant Domain Name Registrars to suspend the domain names associated with the Defendant websites. Judgement Docs can be accessed here, https://shorturl.at/mHRX8 UTI Infrastructure Technology and Services Limited v. Extra Tech World and Ors. [Suti (L) No. 537/2024 order dated January 12, 2024]

The Draft Patents (2nd Amendment) Rules, 2024 (“draft Rules”) were released by the @Ministry of Commerce and Industry, Government of India, on January 2, 2024. These rules are subject to consideration after a thirty-days (30) period from their publication in the Gazette of India. The draft Rules are primarily focused on providing detailed provisions and framework for adjudicating certain penalties and their appeal procedure. Further the draft Rules are built upon the modifications introduced by The Jan Vishwas (Amendment of Provisions) Act, 2023. Objections or suggestions with respect to said rules may be addressed to the Secretary, @Department for Promotion of Industry and Internal Trade or sent by email to ipr4-dipp@nic.in before expiry of thirty-days (30) period from their publication, for consideration by the Central Government. Relevant Docs can be accessed here, https://shorturl.at/cpHY6  

In the recent case of Novartis Ag (“Novartis”) v. Natco Pharma Limited & Anr. (“Natco”), the Division Bench of the Hon’ble Delhi High Court stated that the Examination and Pre-Grant Opposition of a patent application are two distinct and independent process, and the Opponent has no right to intervene in the examination procedure. The facts of the case are, Natco, among other pre-grant opponents, filed an appeal against order of the Controller of Patents and Designs (“Controller”) allowing the amendment request moved by Novartis, at the instance of the Controller, without giving Natco an opportunity of submitting its objection to the amendment request. The patent was granted before the expiry of six months from the date of the order permitting amendments to the patent application. The Novartis argued that the Patents Act, 1970 (“Act”) and/or Rules framed thereunder, does not provide for participation of pre-grant opponents in the examination process. It was submitted that while the representations of opposition may act as an aid to the examination process, however, the examination is an independent duty of the controller irrespective of the opposition. Novartis highlighted that the right of pre-grant opposition is limited to orders passed under Section 25(4) of the Act. The Division Bench highlighted that the rejection of opposition does not automatically lead to the grant of a patent, rather the Controller must conduct an independent examination of the application. Furthermore, the Court rejected the argument that Natco has a right to participate or be heard in the examination process, especially in cases where amendments are directed by the Controller. The judgment clarified that opponent’s right to be heard is specifically tied to the grounds specified in Section 25(1) of the Act with respect to Pre-grant Oppositions in Patents. Judgement Docs can be accessed here, https://shorturl.at/uCT02 Novartis Ag v. Natco Pharma Limited & Anr. [LPA 50/2023, Delhi High Court, Decision dated, January 9, 2024]