On the occasion of World IP Day 2021, we decided to look back and bring to you a short collection of 10 relevant cases that changed the IP landscape in the last five years.
Happy reading!
TRADEMARKS
1) M/s. Arudra Engineering Private Limited v. M/s. Patanjali Ayurved Limited –2020 SCC Online Mad 1670
In the times of CORONA, we did see some instances of securing rights on some CORONA centric marks. In this matter, an interim injunction was granted, restraining Patanjali and its related entities from infringing the mark CORONIL in relation to its immunity booster product. The Plaintiff had alleged that the Defendant’s mark CORONIL is a deceptive variant of its registered marks Coronil-92 B and Coronil-213 SPL. The Plaintiff’s mark is being used with regard to a chemical agent used for sanitizing and cleaning heavy industrial machinery and containment units at factories with minimal corrosion, thus, reducing the overall depreciation of the value of units during the cleaning process.
On appeal, the Division Bench of the Madras High Court set aside the order of the Single Judge stating that there was no prima-facie case of trademark infringement made out against Patanjal
2) Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited (2018) 2 SCC 1
The Plaintiff filed the suit seeking a decree of permanent injunction for infringement of trademark, passing off and for damages against the defendants to protect the Plaintiff’s trademarks ‘TOYOTA’, ‘TOYOTA INNOVA’, ‘TOYOTA DEVICE’ and the mark ‘Prius’ of which the Plaintiff claimed to be a prior user.
Amongst others, the Plaintiff had claimed transborder reputation of the mark PRIUS, with a hybrid car being launched under the said mark in Japan, U.K., Australia, and the U.S.A and subsequently it was launched in India in 2010.
Single Judge held that the acts of the defendants amounted to infringement of the Plaintiff’s trademarks ‘TOYOTA’, ‘TOYOTA INNOVA’, ‘TOYOTA DEVICE’ and passing off of the defendant’s goods under the trade name PRIUS.
Upon appeal, the Division bench of the High Court held that grant of injunction in favour of the Plaintiff insofar as the trade name ‘Prius’ is concerned was not justified. Accordingly, the aforesaid part of the order of the learned trial Judge was set aside.
The matter was appealed before the Hon’ble Supreme Court of India. The Court while concluding that the Plaintiff had not supplied enough proof of its “reputation” in the Indian market also provided an extended clarification to the word “reputation”. The Court observed that although trans-border reputation was now very much a part of Indian law (ever since the Whirlpool decision), such reputation could not merely be asserted, but must be proved. And within the “territory” of India. The Court noted:
“…if the territoriality principle is to govern the matter, and we have already held it should, there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also.”
3) Patel Field Marshal Agencies Ltd. v. PM Diesels Ltd. & Ors. (2018)2 SCC 112
In this matter, the Hon’ble Supreme Court held that where the question of validity has not been taken up by the Court, the statutory authority has the power to decide a rectification claim by the litigant. However, in a case where the Court comes to a prima facie conclusion on validity, the only remedy available is an appeal.
This decision is relevant regarding the interpretation of Section 124 of the Trademarks Act, 1999.
GEOGRAPHICAL INDICATION
4) Tea Board of India vs. ITC Limited 2019(79) PTC1 (Cal)
In this case, a suit for infringement of a registered Geographical Indication (GI) DARJEELING was brought by the Plaintiff against the Defendant, who is using DARJEELING LOUNGE regarding hospitality services.
The Court held that a case of infringement under the GI Act is not made out since Section 22 of the GI Act, 1999 extend only to goods and not services. Further, since the Plaintiff had obtained a certification mark registration under the Old Trademarks Act, such protection was limited to goods and not services. Vis-à-vis unfair competition, the Court observed that there was no competition between the alleged infringer, who is into hospitality services and the Plaintiff which certifies tea bearing the name ‘Darjeeling’ as being 100% Darjeeling tea originating from the 87 tea gardens in Darjeeling district of West Bengal.
As regards the claim of passing off, the Court observed that since the Darjeeling lounge was open to high-end client, who would not be misled/confused about the origin, the said claim is not maintainable.
The suit was dismissed as frivolous and a cost of Rs. 1,00,000 (US$1300 approx.)
DESIGNS
5) Carlsberg Breweries vs. Som Distelleries – Composite suit of design infringement and passing off of TURBO beer bottles 2019(77) PTC1 (Del)
This suit was filed alleging infringement of a registered design and passing off of the Plaintiff’s trade-dress in respect of a bottle and overall get-up of the trademark CARLSBERG. In response, the defendant relied upon a decision issued by a three judge bench of the same Court in Mohan Lal vs. Sona Paint to claim that two separate suits need to be initiated since these two causes of action cannot be clubbed into one matter.
Overruling the decision in the Mohanlal case, a five judge bench of the Delhi High Court held that a plaintiff can join two causes of action: one of infringement of the registered design of the Plaintiff and the second of the defendant passing off its goods, against one defendant in a composite suit. The bench held that since both causes of action would arise from the same transaction of sale; common questions of law and fact would be presented, and thus, joinder of causes of action ought to be allowed.
COPYRIGHT
6) Sanjay Soya Pvt Ltd v. Narayani Trading Company 2021 SCC Online Bom 407
So, can one sue for copyright infringement without a registration?
The Bombay High Court very recently in this matter observed that “the Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration.”
Referring to Section 51 of the Copyright Act, which deals with infringement of copyright, the Court observed that the said Section does not restrict to works that are registered with the Registrar of Copyright under the Act. The Court went on to observe that this Section should be read along with Section 45(1) which states that the owner of the copyright “may” apply for registration.
A distinction was also drawn between this provision and Section 27 of the Trademarks Act, 1999, stating that copyright and trademark operate in different spheres, though in some cases like the present one, they may overlap or intersect. An artistic work may receive both trademark registration as a label and copyright protection as an artistic work. One requires registration to sustain a suit, the other does not.
7) Amazon Seller Services Pvt. Ltd. v. Amway India Enterprises Pvt. Ltd. & Ors. 2020(81) PTC399 (Del)
This case on the Principles of Exhaustion and Intermediary liability, arose before a Division Bench out of appeals filed by Amazon, Snapdeal, and Cloudtail against the interim injunction order passed by the Single Judge Bench.
The Bench while deciding setting aside the order of the Learned Single Judge, stated the following, amongst others:
a) India follows the principle of International Exhaustion which means that once the goods are lawfully acquired, the rights over the said goods vests with the buyer. Thus, selling such goods in any market, domestic or international will not amount to infringement. Moreover, Section 30(3) of the Trade Marks Act, 1999 does not restrict the lawful acquisition and further sale to include an international market.
b) Section 79 of the IT Act is a safe harbour for online market places, limiting their liability for third party information posted on their systems. It is to ensure that the liability for non-compliance and/or violation of law by a third party, i.e. the seller, is not fastened on the online market place. The Learned Single Judge had drawn a distinction between active and passive intermediaries and arrived at the conclusion that Amazon, Snapdeal and Cloudtail were active intermediaries. However, the Bench disagreed with this finding and stated that Section 79 did not create any such distinction and as such offers safe harbour to all intermediaries.
PATENTS
8) Allani Ferid v. Assistant Controller of Patents & Designs – IPAB Order dated July 20, 2020
This relates to an appeal filed against the Controller’s order in a PCT national phase patent application titled “Method And Device For Accessing Information Sources And Services Of The Web”. The disclosure provided for providing a series of selection pages stored locally on a machine to arrive at a final selection and then directly accessing the website via the internet based on the final selection. Also, the selection pages stored locally used icons on the selection pages to make the process of selection much easier. The patent application claims priority from the year 1999 when the data stored on a local device was easy and fast to access as compared to accessing any data via the internet. Therefore, storing the initial selection pages locally on the machine saved a lot of time that a user would have otherwise spent while going through a series of selection pages on a website. Simultaneously, going through the selection process on a local machine reduced the workload on the remotely located services hosting the websites. There were several other advantages and utilities that the disclosure claimed.
The patent application was rejected by the Indian Patent Office (IPO) based on objection on Novelty and Non-patentable subject matter under Section 3(k). Section 3(k) of the Indian Patents Act prohibits patenting of “a mathematical or business method or a computer programme per se or algorithms”. IPAB set aside the order of the IPO and allowed the appeal while granting a patent to the appellant. In the order, quoting from the Delhi High Court Order dated December 12, 2020 IPAB observed that “The words “per se” were incorporated [in Section 3(k)] so as to ensure that genuine inventions which are developed, based on computer programs are not refused patents…”. IPAB observed that “the invention MUST be examined as [a] whole and the following factors are to be considered while deciding upon the patentability of such inventions – i.e (i) technical effect achieved by it, and its (ii) technical contribution.” The IPAB quoted the Guidelines for Examination of Computer Related Inventions (released by IPO in 2013), which provided examples of a technical effect in computer-related inventions. IPAB held that the invention as claimed falls under the examples listed in the Guidelines, such as higher speed, more economical use of memory and more efficient database search strategy. This order of IPAB lays down a good precedent favouring computer program-based inventions.
9) Novartis AG v. The Controller of Patents & Ors. – IPAB Order dated September 29, 2020
An appeal was filed at the IPAB against the Controller’s order of revocation of a patent covering the drug Ceratinib in a Post-Grant opposition under Section 25(4) of the Patents Act. The prior art cited by the respondents in this matter disclosed a broader Markush structure, whereas the claimed invention was directed to a narrower class of compounds. Accordingly, one of the main issues was whether a prior art that discloses a Markush structure anticipates a disclosure for a specific compound that falls within the Markush structure.
While discussing the disclosure in the prior art, IPAB addressed the issue of whether there can be a vast difference between the coverage of the prior art and disclosure of the prior art. IPAB held that ““coverage and disclosure” of any cited prior art cannot be held to have a vast difference between the two as it is against the law.” Further, on the issue of a generic versus specific disclosure, IPAB noted that a “generic disclosure does not impugn the novelty of a more specific claim so that an earlier reference to a metal coil spring cannot be used to attack the novelty of a claim specifying such a spring made of copper.” This order reinforces the basic principle that a generic disclosure cannot take away the novelty of a specific disclosure.
10) Astrazeneca AB & Anr. v. Intas Pharma Ltd. & Alkem Labs Ltd. – Delhi High Court Judgement dated November 2, 2020 [2020 SCCOnline Del 1446]
This case involved two Indian patents, one being a genus patent and another a species patent covering the drug Dapagliflozin for the treatment of Diabetes. Plaintiff claimed infringement of both the patents and filed an application for a temporary injunction against the Defendants. Among other issues, the Court considered whether the genus patent disclosed the invention covered in the species patent. Plaintiff, while defending the prima facie validity challenge to the patent, argued that though the genus patent covered the drug but did not disclose the invention covered in the species patent. It was noted by the Court that it is incongruous “that a patent holder can take out an infringement action for a patent and yet aver it is not disclosed.” Based on this, the Court inclined towards the challenge to the validity of the patents based on the ground of double patenting.
Further, in discussion on the inventive step, the Court noted that the technical advance of the invention should be derivable from the complete specification itself. Any evidence or explanation of the technical advancement produced later can be taken into account only to confirm the technical advancement as embedded in the specification.
While noting that any damage that may be caused to the Plaintiff can be compensated monetarily, the Court also took into account the public interest by comparing the prices of the drugs offered by the Plaintiff viz a viz the defendants. On the argument by Plaintiff that the drug covered by the patent is for Diabetes, which is not a life-threatening disease, the Court took into account the statistics regarding Diabetes as released by the WHO and National Centre of Disease Control to emphasize how serious and widespread Diabetes as a disease is in India and abroad.
Based on the above, the Court opined that there is a credible challenge to the validity of the patents and the balance of convenience is also in favour of the Defendants, and thus dismissed the application for temporary injunction.
