The year 2023 has witnessed several progressive reforms and initiatives from the Indian Patent Office to address issues related to patent procedures and to promote patent filings in the country. One such prominent reform is the introduction of “The draft Patents (Amendment) Rules, 2023”. The draft rules are a positive step to address the delays in the patent process, reduce the overall grant time, clarify divisional applications and simplify the process for meeting the working of patent requirements (for a detailed review of these draft rules, refer to our article here). Additionally, the Patent Office released a notification to recruit 553 additional Examiners to meet the growing needs and successfully conducted an examination to initiate the recruitment process. The Jan Vishwas (Amendment of Provisions) Act, 2023 enactment further clarified penalties in patent matters under sections 120-124 and 124B of the Patent Act. National IP Conference, 2023, was organized by the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM). The conference was focused on the WIPO-India Action Plan and India’s global leadership in IP filings. A few initiatives like the Indian IP Diagnostics Tool and a master’s programme for IP Professionals were also discussed. Another noteworthy initiative came from the Department of Biotechnology (DBT) which issued Intellectual Property Guidelines regulating the ownership and transfer of intellectual properties from DBT-funded institutions. India’s IP framework continues to evolve with the establishment of the Intellectual Property Division (IPD) at the Madras High Court, after the already established IPD at the Delhi High Court. The High Court at Calcutta also published the draft IPR Division Rules to set up the third dedicated IPD in the country. The courts have also passed several judgements in 2023 – A few reiterating, clarifying and bold rulings setting the direction for the future in patent-related matters. The following is a list of curated judgments in 2023 related to patents, which we thought were noteworthy and interesting to read.   1. Assessing Patentability of Computer Related Inventions (CRI) The Delhi High Court clarified that the mere implementation of algorithms should not automatically render an invention ineligible for a patent under section 3(k). Instead, the focus should be on the technical effects and contributions provided by the invention. The court noted the examples of both patent-eligible and non-eligible inventions in the CRI Guidelines. [Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, C.A. (COMM.IPD – PAT) 29/2022, Delhi High Court]. Click here to know more. 2. The Importance of Providing Clear and Reasoned Grounds for Patent Refusal The Appellant argued that the controller used the words “novel” and “inventive” interchangeably. The Hon’ble High Court held that the refusal order lacked proper reasoning, failing to demonstrate how the cited prior art defeated the novelty of the invention and remanded a fresh examination. [Guangdong Oppo Mobile v. The Controller of Patents, AID NO. 20/2022, Calcutta High Court] Click here to know more. 3. Pro-tem Orders in Standard-Essential Patent (SEP) Infringement The Delhi High Court directed Oppo to deposit 23% of the proceeds from their sales in India as a pro-tem deposit. The High Court clarified that the pro-tem deposit order is not linked to an injunction and is a measure to safeguard appellant interest. [Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corpn. Ltd., FAO(OS) (COMM) 321/2022 & CM APPL. 53576-53579/2022, Delhi High Court] Click here to know more. 4. The Interpretation and Scope of Product-By-Process Patent Claims in India The judgment clarified that product-by-process claims in patent cases are limited to the specific process claimed in the patent, and the monopoly right does not extend to the product as a whole. The court also emphasized the importance of consistent representations by patentees and highlighted that patent protection is tied to the disclosed process. [Vifor International Ltd. and Anr. v. MSN Laboratories Pvt. Ltd. and Anr., CS(COMM) 261/2021, Delhi High Court] Click here to know more. 5. The Applicability of Section 10 of The Code of Civil Procedure, 1908 (CPC) to Revocation Petition under Section 64 of the Patents Act, 1970. The Hon’ble Delhi High Court emphasize the distinction between revocation proceedings and infringement suits, clarifying that a revocation petition is not considered a ‘suit’ for Section 10 of the CPC. The decision is based on the principles of procedural timelines and the relief obtained in each type of proceeding. [Dr. Reddys Laboratories Limited and Anr. v. The Controller of Patents and Ors., C.O.(COMM.IPD-PAT) 3/2021, Delhi High Court] Click here to know more. 6. Independent Filing of Divisional Applications The Hon’ble Delhi High Court analysed the structure of Sec. 16(1) and opined that applicants could independently file divisional applications and there is no need for the claims to include multiple inventions, contrary to the Boehringer Ingelheim ruling. [Syngenta Limited v. Controller of Patents and Designs, C.A. (COMM. IPD-PAT) 471/2022, Delhi High Court] Click here to know more. 7. Clarification on Scope of Divisional Applications by Divisional Bench The Divisional Bench clarified that divisional applications are admissible based on disclosures within the specifications, aligning with legislative intent offering a more flexible approach to the filing of divisional applications and acknowledging situations where multiple inventions are disclosed in but not explicitly claimed the parent application. [Syngenta Limited v. Controller of Patents and Designs, C.A. (COMM. IPD-PAT) 471/2022, Delhi High Court] Click here to know more. 8. Clarification on Patent Infringement in case of Product-by-process Patent The Hon’ble Court denied a temporary injunction in favour of the plaintiffs due to the ongoing business operations of the defendants. Instead, the defendants were directed to maintain accounts of manufacturing and sales of Ferric Carboxymaltose until the expiry of the suit patent and not to use a manufacturing process claimed by the Plaintiff. [Vifor International Ltd. & Anr. v. Biological E Limited & Anr., CS(COMM) 434/2023, Delhi High Court] Click here to know more. 9. Calculation of Damages Based on the Duration of Infringement, Lost Profits and Legal Costs The judgement emphasizes the court’s thorough examination of infringement, validity, and damages in

The Hon’ble Delhi High Court has, in a suit for permanent injunction filed by PUMA SE (“Plaintiff”) against business listing website,  IndiaMART (“Defendant”), directed the latter to de-list all infringing listings, and cease use or facilitate use of the mark PUMA in any manner that would amount to passing off or infringement of the Plaintiff’s rights in the mark PUMA. It was the Plaintiff’s case that the Defendant was allowing unauthorized sellers to list counterfeit and non-genuine products under the mark PUMA on its website. The Defendant, on the other hand, argued that, it is not “using” the mark PUMA in any manner, rather the persons/entities, at the time of registering with the Defendant select the PUMA from the dropdown list and then sell counterfeit PUMA products, and therefore, those persons/entities, are liable for passing off or infringement of the Plaintiff’s rights in the mark PUMA. The Court rejected the Defendant’s contentions and ruled that the Defendant’s search functionality, which included “PUMA” as a dropdown option, constituted trade mark “use” under the Trade Marks Act, 1999. Additionally, the court considered the Defendant’s lack of proactive measures to prevent infringement as insufficient. This judgment holds significant weight for online platforms, emphasizing their responsibility to actively combat trade mark infringement even for user-generated content. It also broadens the definition of “trade mark use” beyond direct use to encompass platform functionalities that facilitate infringement. PUMA SE vs. INDIAMART INTERMESH LTD CS(COMM) 607/2021

The Delhi High Court has, recently, refused the grant of interim relief to Lotus Herbals Pvt Ltd. (“Plaintiff”) against use of the mark the LOTUS SPLASH name and logo by DPKA Universal Consumer Venture Pvt. Ltd. (the company behind Bollywood celebrity, Deepika Padukone’s self-care brand 82◦E and “Defendant”).  It was the Plaintiff’s case that the Defendant’s use of LOTUS SPLASH name and logo, infringes the Plaintiff’s rights in the LOTUS mark for beauty products. The Plaintiff also argued that since the Defendant had applied for registration of all its products, i.e., ASHWAGANDHA BOUNCE, PATCHOULI GLOW, etc., with/without the brand name 82◦E, it cannot claim that it is not using the product name LOTUS SPLASH in a trade mark sense. The Plaintiff also submitted that from an examination of the Defendant’s bottle, it is evident that LOTUS SPLASH is used as a trade mark, and the marque brand 82◦E is relegated inconsequentially at the base of the bottle. The court observed that since the entire mark LOTUS is a part of the Defendant’s mark LOTUS SPLASH, and both the marks are used for cosmetic preparations, there a likelihood of confusion and a prima facie case of infringement exists. The Court, however, considered the Defendant’s defence that since the LOTUS SPLASH product contained lotus flower extract as a key ingredient, the name clearly indicates the “characteristic of the product”, and thus would not constitute infringement of the Plaintiff’s LOTUS mark. The court also held that the Defendant’s use of the LOTUS SPLASH mark also does not constitute passing off, as the products are dissimilar in appearance and have wide difference in prices, and therefore, refused the grant of an injunction. Lotus Herbals Pvt. Ltd. v. DPKA Universal Consumer Venture Pvt. Ltd. [CS (COMM) 454/2023], Judgment dated January 25, 2024

In a recent judgment, the Delhi High Court restrained Hermes Distillery Pvt. Ltd. (“Defendant”) from using its PEACE MAKER labels, holding it to be a deceptively similar imitation of Allied Blenders and Distillers Pvt. Ltd.’s (“Plaintiff”) OFFICER’S CHOICE labels for their liquor bottles. The Plaintiff claimed it has substantive statutory and common law rights in its distinctive OFFICER’S CHOICE labels and trade marks, which the Plaintiff claimed to use for marketing and selling its OFFICER’S CHOICE brand of whiskey. The Plaintiff contended that the Defendant’s PEACE MAKER labels, used by the Defendant for marketing and selling its brand of whiskey, were an imitation of the Plaintiff’s labels. It was argued that the Defendant had imitated features, such as the red, white, and gold colour combination, the golden border on the labels, the cursive font of the ‘PEACE MAKER’ mark printed on the label, the golden-yellow accents of the mark, the positioning of the mark in the top half of the label, and so on. The Defendant, on the other hand, averred that the Plaintiff had failed to make out a case for passing off since there was no consistency in the Plaintiff’s use of the OFFICER’S CHOICE labels as the Plaintiff had itself been changing the labels of its whiskey after every few years. It was argued that due to such inconsistency, the Plaintiff had failed to show that the label had acquired any goodwill on its own, without leaning on to the goodwill vested in the Plaintiff’s OFFICER’S CHOICE mark. The Defendant also argued that the labels which were pressed into service were only a part of the trade dress, and the remaining features, such as the bottle shape, colour, label, etc. forming part of the Defendant’s trade dress were all different from that of the Plaintiff. The court rejected the Defendant’s arguments and held that the test of comparing two products/labels was not that of identity but that of similarity, which is to be tested from the plank of a consumer of average intelligence and imperfect recollection. The court further observed that the Defendant had indulged in “smart copying”, where the broad overall features from the Plaintiff’s label had been copied, while intentionally leaving out certain specific elements. The court held that the Defendant’s attempts at highlighting the minute differences between the two labels, in fact, showed that labels were broadly and obviously similar, and that the differences, being so little, deserved to be nudged into oblivion. Accordingly, the court injuncted the Defendant from using the PEACE MAKER labels in respect of its alcoholic beverages till the disposal of the suit. Judgement Docs can be accessed here, https://shorturl.at/mnxW5 Allied Blenders & Distillers Pvt. Ltd. v. Hermes Distillery Private Limited, Judgment dated  January 15, 2024 (2024:DHC:288)

The Delhi High Court’s Division Bench (“DB”) has reinstated registration for a specific potato variety (FL 2027) in the name of PepsiCo India Holdings Pvt Ltd., (“PepsiCo”) used in production of potato chips, under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (“Act”). following an appeal by PepsiCo. The Single Judge has initially revoked PepsiCo’s registration under Section 34 of the Act, based on an application by Kavitha Kuruganti (“Respondent”) on the grounds that PepsiCo’s lawsuits against farmers is not in public interest and providing incorrect information about the variety’s first sale and category (under “New” instead of “Extant”) during the process of registration. PepsiCo appealed the revocation of protection under Section 34 of the Act, arguing that it should only apply in cases of fundamental, deliberate, or intentional registration eligibility errors. PepsiCo also argued that the enforcement of plant variety rights against farmers does not violate public interest, making the revocation meritless. The Respondent argued that a valid registration certificate from PepsiCo at the time of the lawsuits is not a defence, as section 39 of the Act prohibits farmers from being sued, regardless of registration certificate. Respondent highlighted that FL 2027 is a new variety, not an “extant” variety, which persists even after the revised application was submitted. The Respondent also argued that the appellant failed to provide documentary proof of assignment and that the failure to renew registration renders the appeal ineffective. The DB, agreeing with PepsiCo ruled that plant variety cannot be revoked on grounds not related to its validity and protectability. They highlighted those discrepancies in the application, such as the date of first sale, authorization to file, and wrongful entry, are not fatal to the plant variety’s registration, as they were not intentional. The DB, however, agreed with the single-judge’s finding that the mistake of describing FL 2027 as a “new” category was remediable and again not fatal to the cause, as the Registrar had processed it as relating to the “extant” category. The renewal application by the Appellant will stand restored on the Registrar’s file. The DB clarified that filing lawsuits to enforce plant variety against farmers is not a violation of public interest. Judgement Docs can be accessed here, https://shorturl.at/bvGLS PepsiCO India Holdings Pvt Ltd v. Kavitha Kuruganti [LPA 590/2023 & CM APPL. 42282/2023, Delhi High Court, Decision on 9 January, 2024]

The Hon’ble Delhi High Court, in an appeal filed by Sun Pharma Laboratories Ltd (“Sun Pharma”) against order of the learned Registrar of Trade Marks to abandon Sun Pharma’s opposition, ruled that under the old rules, the obligation to serve the evidence on the other side, was on the Registry and not on the opponent/applicant. Accordingly, any application/opposition cannot be ordered to be abandoned by reason of non/delayed service of evidence on the other side by respective parties. The brief fact of the case is that, in an opposition initiated under the old rules, while the Sun Pharma has filed its evidence within the prescribed timeline, it had served a copy of the same on the applicant, Dabur India Ltd (“Dabur”), only with a delay of three (3) days. Sun Pharma, subsequently filed a request to seeking extension of time and requesting the learned Registrar to take Sun Pharma’s evidence on record. The learned Registrar, however, rejecting Sun Pharma’s request, ruled that the time limit prescribed under the rules being non-extendible, the evidence served on Dabur is time-barred, and accordingly, ordered the opposition to be deemed to be abandoned. Aggrieved by the order, Sun Pharma preferred the instant appeal. As regards Sun Pharma’s request seeking extension of time, the Court ruled that time limits prescribed under the rules are mandatory in nature and under the now repealed or Trade Marks Rules 2002 or Trade Marks Rules 2017, the learned Registrar has no discretion to grant such extension. The Court, however, noted that, while Sun Pharma had filed its evidence within the statutory deadline, it was only after a delay of three (3) days, that the evidence was served on Dabur. In this regard, the Court ruled that, under the old rules, the obligation to serve the evidence on the other side, was on the Registry and not on the opponent/applicant. The Court, accordingly, re-instated the opposition and directed the learned Registrar to decide the opposition on merit and pass appropriate order. Judgement Docs can be accessed here, https://shorturl.at/dBKSW SUN PHARMA LABORATORIES LTD. V/s DABUR INDIA LTD. & ANR. C.A.(COMM.IPD-TM) 146/2022

In a recent judgement, the Delhi High Court cancelled registration of the trade mark, TICHE Device registered by one Sahil Tandon, trading as A and Z Exports International (“Respondent”) on the basis of its identity to the Petitioner’s (“Uzdaroji Akcine Bendrove (UAB) ―Baltijos Mineraliniu Vandenu Kompanija”) TICHE marks. The Petitioner, a Lithuanian company specializing in the production of mineral water and soft drinks, filed the petition to cancel the registration for the Respondent’s TICHE Device mark, on the basis of its prior rights, owing to continuous use internationally since 1999, in the TICHE and TICHE-formative marks. The Petitioner further submitted that, owing to its extensive international use, the goodwill and reputation of the marks had spilled over into India. The Petitioner further contented that the parties had entered into a Sale and Purchase Agreement in 2015, in respect of goods manufactured by the Petitioner, including the ones under the TICHE marks. The Respondent, on the other hand, argued that the petition ought not to be allowed as the Petitioner had not disclosed pertinent information regarding a document authorizing the Respondent to file trade mark applications for the TICHE marks and represent the Petitioner before the Trade Marks Registry. The Respondent also claimed that he has been actively engaged in the promotion of the product bearing the disputed trademark within India. The court held that, it was clear that the Respondent’s role was confined to that of an agent authorized to represent the Petitioner in dealings with the Trade Marks Registry, and not to apply for trade mark registrations as claimed. The court observed that the Respondent had clearly acted beyond the scope of authority granted by the Petitioner, and wilfully and in bad faith applied for and obtained the registration for the TICHE Device mark. The court, accordingly, cancelled the registration for the disputed trade mark, and imposed costs of INR 1,00,000 on the Respondent. Uzdaroji Akcine Bendrove Baltijos Mineraliniu Vandenu Kompanija vs. Mr. Sahil Tandon, trading as A and Z Exports International & Anr., C.O. (COMM.IPD-TM) 202/2022

The Hon’ble Delhi High Court has, in a suit for permanent injunction filed by Sequoia Capital Operations LLC, Peak XV Partners Operations LLC, and Peak XV Partners Advisors India LLP, against multiple defendants, restrained the latter from unauthorized use of any kind of the plaintiffs’ trade marks, in particular, SEQUOIA, SEQUOIA CAPITAL, PEAK XV and formatives. In August 2023, one of the plaintiffs was contacted about their potential association with one of the defendants, Senee Investment Group Co. Ltd., due to a job post featuring their trade marks, indicating alleged links between the two. An investigation by the plaintiffs revealed that various entities, including the defendants, misrepresenting themselves as plaintiffs, are using the plaintiffs’ trade marks on social media, sham testimonials, false press releases, and mirror websites. The court ruled that defendants are unauthorizedly attracting consumers under false association with plaintiffs, damaging their reputation and public interest, based on the aforementioned facts. Accordingly, the court restrained the defendants from using the plaintiffs’ trade marks in any manner, whatsoever. The court also directed the defendants to, among other things, disclose the IP addresses used to create fake social media pages, block fraudulent channels on instant messaging applications, and suspend domain names related to their mirror websites. Sequoia Capital Operations LLC and Ors. vs. Seene Trader and Ors., CS (COMM) 109/2024

The Division Bench (“DB”) of the Hon’ble Delhi High Court has, in the much discussed and debated product-by-process patent infringement suit filed by Vifor (International) Limited & Anr. (“Appellants”) against three (3) respondents, namely, MSN Laboratories Pvt Ltd, Corona Remedies Pvt Ltd & Dr Reddys Laboratories Ltd (“Respondents”), ruled that, product-by-process claim under The Patents Act, 1970 (“Act”) would necessarily have to be examined based on ‘new and unobvious product’. The DB further stated that patentability of the product cannot depend upon the mere novelty of the process adopted. The Appellants filed a suit against the Respondents regarding the former’s patented product (FCM) for an interim injunction to prevent the respondents from using a different manufacturing process to manufacture product similar to FCM. The Hon’ble Single Judge dismissed the interim injunction application, stating that the Appellant’s patent protection was restricted to the process of obtaining the product, not the product itself. (Click here to know more about the judgement of Hon’ble Single Judge) During the oral hearing scheduled on 4th September 2023, the Appellants relied on guidelines of the Intellectual Property Appellate Board (IPAB), asserting that product-by-process claims must define a novel and unobvious product, not influenced by production methods. The appellant argued that Section 2(1)(j) of the Act defines an invention as either a product or process, and Section 48 of the Act grants patentees the right to enjoin infringers on both. The appellant also argued that a product cannot be considered novel solely due to a new manufacturing process if it is identical to a known product. The DB clarified scope of products obtained by a process and those obtainable by a process, the scope of a claim to a product “obtained by” a process would be only to products which had actually been made by the process. Such claims would only be infringed by products actually made by the relevant process. On the other hand, “obtainable by” claims cover a product which was not made by the defined process but could have been. The ruling emphasized that if an applicant is compelled to submit a product-by-process claim for improved disclosure, the protection should be limited to the product itself. Furthermore, the determination of patentability of a product by process claim is limited to the product, so in case of infringement, it should be seen from the product’s perspective only. The DB ruled that a product-by-process claim must be a novel and inventive product, unknown in the prior art, to be eligible for Section 48(a) of the Act, setting aside the Single Judge’s refusal of interim relief in a patent infringement case. Click here to access the Judgement Document: https://shorturl.at/jqHW8 Vifor (International) Limited & Anr. vs Msn Laboratories Pvt Ltd & Anr., [FAO(OS) (COMM) 159/2023 & CM APPL. 39177/2023, Delhi High Court, decision dated 7th February 2024]

The Delhi High Court, recently, dismissed an appeal filed by Premier SPG and WVG Mills Pvt. Ltd. (“Appellant”) against an order of the Trade Marks Registry (“Registry”) rejecting its opposition against The Football Association Premier League Limited’s (“Respondent”) PREMIER LEAGUE logo, in Class 25. The Registry had, in its order, observed that there was no visual, structural, or phonetic similarity, between the rival marks, and that the only common element between the two marks, i.e., PREMIER, is generic, which no one could monopolize. However, the Appellant claimed that it is a part of the Premier Group that has an international reputation, which has been built over several decades, for quality goods in the clothing industry, and that its PREMIER-formative marks were registered in relation to manufacturing, exporting, and marketing of yarn, clothing, hosiery, suiting, textiles, etc., much prior to the Respondent’s filings.   The court took into consideration the Respondent’s registration for the BARCLAYS PREMIER LEAGUE Device mark (which was unopposed by the Appellant), the Respondent’s long use of its marks without any objection from the Appellant, the presence of other third-party marks on the Register of Trade Marks containing the word PREMIER, as well as the Respondent’s worldwide repute and registrations in foreign jurisdictions. The court opined that there was no deceptive similarity between the rival marks. It reiterated the anti-dissection rule of comparing rival marks, emphasizing that the Appellant could not have a monopoly over the word PREMIER, and also noted that PREMIER was also not the dominant element of the PREMIER LEAGUE logo. Besides the word PREMIER, the Respondent’s mark incorporated the suffix LEAGUE, a lion wearing a crown, and a football, which indicated that the Respondent’s goods pertained to the football sector. The court also noted that PREMIER refers to the category of a league, which, in the context of football, has acquired and amassed worldwide recognition, goodwill and immediate re-call. Based on the above, the court agreed with the Registry’s order and dismissed the appeal.