The Delhi High Court has, in a suit for injunction by Oracle America Inc. (“Oracle”), permanently restrained Sonoo Jaiswal and Ors., (“Defendants”) from using the Oracle’s JAVA mark as a part of their domain name and on/in relation to allied or cognate goods or services. Oracle argued that the Defendants’ use of the JAVA T POINT mark for software training services on the website infringed on Oracle’s earlier JAVA trademark rights. The defendants have also used the mark JAVA in their corporate names and offered Oracle Certified Training on their website, implying a false association with Oracle. The Defendants, on the other hand, argued that, firstly, JAVA is a programming language and cannot be monopolized andsecondly, the rival marks are dissimilar. Oracle has clarified that it does not intend to monopolize the use of Java as a trademark and has published Third Party Usage Guidelines on its website outlining permissible and prohibited usage. The Court held that mere addition of the ‘TPOINT’ as a suffix, does not take away from the fact the ‘JAVA’ is a prominent part of Defendants which is purely used in manner of trade mark. The logo used by the Defendants goes beyond referencing to the programming language in a descriptive or educational context. The court further noted that use of the JAVA as a part of Defendant’s domain name, does not align with the Oracle’s policy of permitted use and therefore use of JAVA in Defendant’s domain name would also amounts to an infringement. The counsel of Defendants further undertook to alter the corporate names to exclude ‘JAVA’ and shall take all the necessary steps to change name and shall file the affidavit as directed by the court. ORACLE AMERICA INC vs. SONOO JAISWAL AND ORS, CS(COMM) 2/2024, Order dt February 12,2024

The Hon’ble Delhi High Court has set aside a refusal order of the Controller of Patents and Designs (“Controller”) for flouting the principles of natural justice. The Controller examined an application for grant of a patent on method of producing protein-enriched blood serum using gold particles filed by Arthrogen GmbH (“Appellant”), and had, initially, raised an objection to its patentability under Sections 3(c), 3(d), 3(e), 3(f), and 3(j) of the Patents Act, 1970 (“Act”) in the First Examination Report. The Appellant made amendments to the claims to address the initial objections and a hearing was scheduled in this matter. However, in the hearing notice that was communicated to the Appellant, the Controller had raised new objections under Sections 3(b) and 3(i) of the Act which were not part of the initial examination report. The Controller, eventually, refused the application under Section 3(j) and 3(i) of the Act. The Court, in the appeal filed by the Appellant, opined that the Controller violated principles of natural justice by refusing the application under Section 3(j) of the Act which was not covered in the hearing notice. Hence, the refusal under this section was beyond the scope of the notice. As regards refusal under 3(i), the court ruled that the subject claims are related to a method of making a composition and are not related to a method of treatment and, therefore, do not fall under Section 3(i) of the Act. Although the blood serum produced by this method can be used for homologous or autologous blood transfusion, the transfusion is a subsequent step that is not covered in the claims. Therefore, the Court stated that the refusal based on Section 3(i) is also not valid. Accordingly, the Court set aside the refusal order and remanded the matter back to the Patent Office. Click here to know more, https://shorturl.at/fBDFR Arthrogen GmbH v. Controller General of Patents, Designs, Trademarks and Anr. C.A.(COMM.IPD-PAT) 415/2022, [Delhi High Court, judgement dated, 5th February 2024]

The Delhi High Court, recently, granted an ex-parte ad interim injunction restraining Tiba Pharmaceutical Pvt. Ltd. (Defendant) from manufacturing pharmaceutical drugs containing Ruxolitinib in any form, in a quia-timet patent infringement suit. Incyte Holdings Corporation & Ors. (Plaintiffs) filed the subject civil suit on the basis of a quia-timet action alleging infringement of its patent covering a compound Ruxolitinib, used in the treatment of intermediate or high-risk myelofibrosis, a type of myeloproliferative disorder that affects the bone marrow and for polycythemia vera (PV). The Plaintiffs alleged that the Defendant has obtained manufacturing licenses/approval from the Commissioner of the Food & Drugs Control Administration for manufacturing drugs containing Ruxolitinib as the active pharmaceutical ingredient for export as well as the domestic market. The Plaintiffs relied on an investigation that it had conducted, which revealed that the Defendant intended to launch the infringing pharmaceutical products in February 2024. In light of this, the Plaintiffs argued that there is sufficient evidence to the effect that the Defendant would launch the drug infringing the claims covered by its patent very soon. Considering the above background, the court observed that the Plainittfs have made out a prima facie case, the balance of convenience lies in their favour, and that they would suffer irreparable loss if the Defendant were permitted to launch the infringing pharmaceutical product. The court, taking note of the aforesaid, restrained the Defendant from using, manufacturing, stockpiling, or exporting pharmaceutical drugs containing the compound Ruxolitinib in any form that would constitute infringement of the Plaintiffs’ patent. Further, the court also appointed a local commissioner to visit and inspect the Defendant’s premises and seize any infringing drug that is found. Incyte Holdings Corporation & Ors. v. Tiba Pharmaceutical Pvt. Ltd. [CS(COMM) 81/2024], order dated January 29, 2024

The Delhi High Court, recently, granted a permanent injunction in favour of Kudos Pharmaceuticals Limited (“Kudos”) restraining Natco Pharma Limited (“Natco”) from manufacturing and selling a generic version of the cancer drug, Olaparib, in light of Kudos’ Indian Patent ‘IN228720’ for a Phthalazinonederivative, particularly Olaparib, a drug used in cancer treatment, which was valid till March 12, 2024. Kudos alleged that Natco infringed the suit patent by manufacturing and selling a generic version under the brand BRACANAT. Natco, on the other hand, challenged the validity of the patent by way of a revocation petition, pursuant to Kudos’ filing of the suit against it, and in this regard also relied on certain submissions made by Kudos in defending the suit patent in other jurisdictions. Kudos contented that Natco infringed the suit patent in the 19th year of its life and no pre-grant or post-grant opposition had been filed, till date, challenging the validity of the suit patent. Therefore, the patent was, prima facie, entitled to be treated as valid, strong, liable, and enforceable. Natco argued that the suit patent lacked an inventive step as Olaparib did not demonstrate technical advancement over the prior art.  The court observed that, when dealing with a challenge to the validity of the suit patent on the ground of anticipation by prior claiming, the court has to render a finding on a claim-to-claim comparison. Once it is found, pursuant to such comparison, that there is no anticipation by prior claiming, then a case of invalidity cannot be made out basis statements made in other jurisdictions while defending the patent. Subsequently, the court observed that Natco was indeed exploiting the suit patent by manufacturing and selling Olaparib. The court ruled against Natco, stating that technical advancement over prior art is not necessary for an inventive step to be included in a patent claim. The court, accordingly, granted a permanent injunction restraining Natco from manufacturing, selling, or dealing with Olaparib under the brand name BRACANAT or any other brand name until the suit patent remains valid, and also dismissed Natco’s revocation petition. Click here to access the judgement copy: https://shorturl.at/mqMQ9 Kudos Pharmaceuticals Limited & Anr. v. Natco Pharma Limited, [CS(COMM) 29/2023] and Natco Pharma Limited v. Kudos Pharmaceuticals Limited & Anr. [C.O.(COMM.IPD-PAT) 1/2023], [Delhi High Court, judgement dated March 1st, 2024]

The Division Bench of the Delhi High Court recently refused to interfere with the order of the single judge, which had granted a temporary injunction restraining Crompton Greaves Consumer Electricals Ltd. (“Appellant”) from using V-Guard Industries Ltd.’s (“Respondent”) registered mark, PEBBLE, on and in relation to electric irons. The Respondent had alleged that the Appellant’s use of the CROMPTON PEBBLE mark infringes its rights in the PEBBLE mark, which was obtained for marketing water heaters. Based on the arguments of the parties, the single judge had determined that the rival marks are phonetically and visually identical, and the addition of the word CROMPTON, cannot act as a source identifier and assist in differentiating the marks. While the single judge observed that the competing goods, i.e., water heater v. electric irons, are not similar in nature, he, nonetheless, held that since the Respondent’s PEBBLE mark has a ‘reputation’ in India, the use of the CROMPTON PEBBLE by the Appellant is infringing. The issue for consideration by the Division Bench was whether the rival marks are similar, and whether the Respondent has an exclusive right to the PEBBLE word. The court observed that while comparing the rival marks, it must be seen whether the dominant part of the defendant’s mark is similar to the plaintiff’s registered mark when viewed as a whole. The court applied the anti-dissection rule and the essential feature doctrine, and observed that since the word PEBBLE is the dominant feature of the Appellant’s mark, the rival marks are visually and phonetically identical. The court also observed that while dealing with use of identical/similar marks for dissimilar goods, it is not required for the proprietor of the registered mark to show that the mark is ‘well-known’, but to prima facie satisfy that the mark has a reputation and distinctive character in India. The court noted that the since the Respondent had relied upon the extensive sales turnover since the adoption of the PEBBLE mark since the year 2013, it is sufficient to show the existence of reputation of the mark in India. It also noted that the adoption of the word PEBBLE for use on geysers is distinctive and arbitrary. Based on the above, the court upheld the single judge’s prima facie finding with respect to infringement of the Respondent’s PEBBLE mark by the Appellant, however, set aside the finding vis-à-vis passing off as the Appellant was using the mark with its house mark, CROMPTON. Crompton Greaves Consumer Electricals Ltd. v. V-Guard Industries Limited [FAO(OS)(COMM) 153/2022], Judgment dated March 6, 2024

The Patent Amendment Rules, 2024 were officially announced on March 15th. These rules introduce several significant changes to reduce the overall patent application processing time and to simplify the procedures.  The new rules primarily introduce changes related to the timeline for examination requests, grace period claims, disclosure of foreign application details, statements of working requirements, pre-grant representation, inventorship certificates, and condonation of delays, among other aspects.   A pdf copy of the same can be accessed here: Patent (Amendment) Rule 2024

The Delhi High Court, recently, granted a permanent injunction in favour of SNPC Machines Private Limited & Ors. (“Plaintiffs”) restraining Mr. Vishal Choudhary (“Defendant”) from manufacturing and selling brick-making machines similar to the Plaintiffs’ patented brick-making machines. The Plaintiffs argued that the Defendant’s machines substantially resembled the Plaintiffs’ machines, thereby infringing on the Plaintiffs’ suits patents. The Plaintiffs also claimed that the substituted element in the Defendant’s machines was performing the same work and achieving the same result as that of the Plaintiff’s machine. The Plaintiffs, accordingly, invoked the Doctrine of Equivalence which allows a court to hold a party liable for patent infringement if the infringing device or process is equivalent to the claimed invention, even if it doesn’t fall within the literal scope of a patent claim. The Defendant, on the other hand, took the defence of ‘all elements rule’, asserting that the product allegedly infringing the suit patent must contain every claim element, and if any element is missing, it does not constitute infringement. The court ruled that an infringer cannot escape by arguing that certain elements of the suit patents are not present in the Defendants’ product. To establish a possible infringement, the ‘pith and marrow’ test is to be used alongside doctrine of equivalence. The pith and marrow test, requires courts to look beyond the literal wording of a patent claim and focus on what the invention does. The court emphasised that infringement should be assessed on the core functionality of the invention rather than minor variations in claim elements. The court applied the doctrine of equivalence and observed that the substituted element in the infringing product performed substantially the same function in substantially the same way to achieve substantially the same result. Therefore, an interim injunction is granted in favour of the Plaintiff prohibiting the defendant from manufacturing and selling brick-making machines. The Court also restrained the Defendant from infringing the Plaintiffs’ copyright in any literature or specification pertaining to the suit patents. SNPC Machines Private Limited & Ors. vs. Mr. Vishal Choudhary, [CS(COMM) 431/2023, Delhi High Court, 05th March 2024]

The Hon’ble Andhra Pradesh High Court has ruled that mathematical equations and science subjects, being matter of fact and laws of nature are not protectable subject matters under the Copyright Act, 1957 (“Act”). The decision came in response to two (2) petitions filed by Addala Sitamahalakshmi of Deepthi Publications (“Petitioner”) who challenged a 2010 government order, i.e., G.O. Rt. No. 858 of 09/11/2010  (“Order”) that restrained private colleges from publishing textbooks of Telugu Akademi, and further sought for quashing of a criminal case registered against it alleging piracy. The respondents that include The Board of Intermediate Education, C.B.S.E, and I.C.S.E, The Director, Telugu Academy, The Commissioner and Director of School Education, and individuals (“Respondents”), inspected the premises of Petitioner and seized the printed books, materials and sealed the Petitioner’s factory. As per the Respondents, the Petitioner’s books were pirated copies of books published by Respondents, and further contended that the books printed and distributed by Petitioner is causing loss to the Telugu Akademi which has exclusive rights to publish such textbooks, and thus, the Plaintiff’s acts in violation of the Order. The Court, while quashing criminal proceedings filed against the Petitioner, concluded that academic or non-literary books even if pirated by a publisher, would be protected under exception of “fair use” under Section 52 of the Act. The Court also observed that, since the Order restrains private junior colleges, it does not affect the Petitioner, which is merely a publication house.

The Delhi High Court, recently, ruled in favour of Bayer Pharm Aktiengesellschaft (“Appellant”) setting aside a refusal order issued by the Controller General of Patents and Designs (“Controller”) for the Appellant’s patent Application 5818/DELNP/2006. The patent application relates to a contraceptive formulation and had been rejected on the grounds that it is a mere admixture of known compositions and is a method of treatment. The Appellant argued that it was not provided a fair opportunity to address the objections as it was not mentioned in the hearing notice issued by the Controller. They also contended that the Controller has failed to differentiate between a composition and a method of treatment which is evident from the fact that the claims of the patent application are for a product (i.e. a composition) and not a method of treatment. The Controller argued that the objections raised were valid, citing working examples provided in the Appellant’s patent application which demonstrated the claimed invention as a method of treatment. The Controller stated that the independent claim relates to a dosing regimen and indicates a method of treatment rather than a mere composition. The court clarified that working examples are intended to show the workability and feasibility of the invention, and do not determine the scope of a patent. Such examples provide support and understanding for the claimed invention, showing that it is not just a theoretical concept, but has practical applicability. The court further noted that the scope of a patent is determined by the claims, which must be interpreted in light of the description and any examples provided. The court held that failure to set out all the objections in the hearing notice is a violation of the principle of natural justice, and also observed that the refusal order issued by the Controller lacked any substantive basis. The court further opined that the independent claim does not mention any specific disease or method of treatment, and it pertains exclusively to a product rather than a process, thereby negating the ground of non-patentability owing to it being a method of treatment. In light of these findings, the court disposed of the appeal, set aside the order of the Controllor, and remanded the application back for further consideration. Click here to access the judgement copy