Here is our recap of last week’s top IP developments including summaries of the posts on IPO’s patent application rejection of HIV drug Dolutegravir, another judgement in the long-running Section 3(k) saga, this time on the patentability of business methods and the DHC IPD’s Annual Report 2023-24. This and a lot more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
SpicyIP Tidbit: Patent Office Rejects Dolutegravir Application, Paving Way for Affordable HIV Drugs
VIVV’s patent application for the HIV drug Dolutegravir was recently rejected by the IPO, paving the way for affordable generics. The IPO, relying on the arguments from numerous oppositions, held that the application failed to demonstrate the therapeutic efficacy mandated under Section 3(d). Read Yukta Chordia’s post on this development.
DHC goes the MHC way!: Diluting Business Method Exclusion u/s. 3(k)
Section 3(k) is back in the news with the DHC’s decision on patentability of business methods in Comviva Technology v. Assistant Controller. Yogesh Byadwal argues that by moving away from the DHC’s holding in OpenTV and adopting the approach of MHC in Priya Randolph, the Court has contradicted the legislative intent. Read more on this!
DHC IPD Second Annual Report 2023-24: Key Takeaways!
In a welcome and transparent step with respect to filings and pendency in the IPD, Delhi High Court has published its IP Division Annual Report 2023-24. With 60.10% of cases from IPAB disposed till June, 2024, the IPD has done notable work since its formation. Read Md Sabeeh Ahmad’s post on the key takeaways from the report.
Bournvita’s Sugar Rush Against ‘FoodPharmer’: An Unreasoned Injunction and a Clarification Without Clarity
Recently, the DHC passed an interim injunction against the social media influencer ‘Food Pharmer,’ restraining him from disparaging Mondelez’s ‘Bournvita’ and ‘Tang’ branded products. However, the Court later clarified that the influencer can still make factual comments. Samridhi Chugh and Manya Gupta write about this order, explaining how the Court appears to have convoluted the issues surrounding the interplay between trademarks, disparagement, and free speech, rather than clarifying them.
Analysing the Riyadh Design Law Treaty in the Indian Context
After nearly two decades of negotiations, WIPO Member States have adopted the Design Law Treaty (DLT). In this post by Kartikeya S., he discusses the key points from the treaty.
Other Posts
Book Launch: Ramanujan’s Patent Law: A Comprehensive Commentary on Patent Law (December 4, 2024)
Ramanujan’s Patent Law: A Comprehensive Commentary on Patent Law by Adarsh Ramanujan, FCIArb is being released on December 4, 2024 at the Delhi High Court. The launch will be followed by a panel discussion featuring Justice Prathiba M. Singh, and Senior Advocates, Mr. C.S. Vaidyanathan, and Mr. Chander Lall. The launch is an open to all event! Read more for the details.
Recently, UPL’s patent application was rejected for lack of sufficient disclosure by the IPO. Deepali Vashist discusses the disclosure requirement under the Patents Act and what it means for the larger patent bargain.
The second edition of Eashan Ghosh’s 2020 book “Imperfect Recollections: The Indian Supreme Court on Trade Mark Law” is out now! Eashan shares a short extract from the book’s Preface, highlighting the stimuli for the second edition below.
Case Summary
Nike Innovate Cv vs Jagpreet Singh on November 23, 2024 (Delhi District Court)
The plaintiff (Nike) sought a permanent injunction restraining the defendant from using the trademark NIKE and Swoosh logo and /or any other registered ‘Nike Marks’ of the plaintiff on shoes and other accessories in any form. The plaintiff through its market survey allegedly found that the defendant was engaged in the business of storing/selling/marketing/distributing products under the falsified trademarks NIKE and Swoosh logo. Based upon the report of the local commissioner, the Court held that the defendants were dealing in infringed goods bearing the trademark of the plaintiff. The defendant did not appear in the suit. The Court passed a decree of permanent injunction and awarded damages of Rs 5,00,000 in favour of the plaintiff.
Arun Kumar vs State Of Punjab And Another on 25 November 2024 (PH&HC)
In this case, the petitioner was accused of offences under Sections 63 and 65 of the Copyright Act and Sections 103 and 104 of the Trade Marks Act. The petitioner allegedly manufactured and sold counterfeit material under the label of “PUMA” without authorization. An FIR was filed and during subsequent investigation, counterfeit material was found in the petitioner’s factory. The Court held that the Copyright Act would not apply to this case as no Copyright subsists in“manufacturing and sale of garments” under Section 13. Hence, Sections 63 and 65 would not apply. Regarding trade mark infringement, the Court held that the investigation was carried out by a police officer below the rank of Deputy Superintendent of Police, violating Section 115(4) of the Trade Marks Act. Subsequently, the FIR and the additional charges against the petitioner were quashed.
The suit was filed by the plaintiff for an ex parte ad interim injunction against the defendant alleging patent infringement. The suit was filed after 10 months from the date of knowledge and six months after the grant of the patent that the defendant had allegedly infringed upon. The defendants alleged that the suit was filed without pre-institution mediation and was in contravention to Section 12-A of the Commercial Courts Act. They contended that the plaintiff’s reason of urgency was simply to contravene Section 12-A. The Court held that the plaintiff delayed legal action unnecessarily which indicated there was no pressing need. It noted that Section 12-A mandates pre-institution mediation unless a genuine urgency is demonstrated. No such urgency was found in this case and the plaint was rejected.
Navigators Logistics Ltd vs Kashif Qureshi & Ors on 20 November 2024 (Delhi HC)
This case stressed the need for factual scrutiny regarding the misappropriation of confidential information and trade secrets. The defendants were former employees of the appellant (Navigators Logistics Ltd) and allegedly diverted business to a competitor using trade secrets and confidential information. A Single Judge bench had previously dismissed the plaint of the appellant relying on evidence beyond the plain such as Local Commissioner’s reports and other extraneous evidence. The Court noted that customer lists and client data may not have Copyright protection, but allegations of data theft and misappropriation of trade secrets require trial examination. The plaint was subsequently reinstated and the plaintiff’s allegations regarding misuse of trade secrets were deemed to have a sufficient cause of action.
The defendant was restrained from infringing a trademark in 2019. It involved the plaintiff’s registered trademark, “SUPREME”. It was alleged that the defendant had again infringed upon the same trademark with their use of the mark “SUPREME WATERLINE” as opposed to “SUPREME TECH” previously. The question before the Delhi High Court was whether the plaintiff’s suit would be barred by res judicata? The Court held that every new trademark infringement amounted to a new cause of action and will not be barred by res judicata. The Court consequently set aside the dismissal of the suit by the Commercial Court.
The appeal challenges the order by the respondent Controller refusing to grant a patent for the appellant’s invention “mTOR kinase inhibitors for oncology indications and disease associated with the mTOR/P13K/AKT Pathway” under Section 2(1)(ja) and Section 3(d) of the Patents Act, citing lack of inventive step and non-patentability. The appellant argued the order was non-speaking, and ignored amended claims, written submissions, and evidence distinguishing its invention from prior art. The appellant emphasised its invention exhibits therapeutic efficacy and significant technical advancement, as outlined in Novartis AG and other precedents. The Court held that in the case of a medicine that claims to cure a disease, the test of efficacy can only be therapeutic efficacy. However, as seen from the impugned order, the respondent has not given any reason as to why the appellant’s claimed invention does not satisfy the test of therapeutic efficacy. The respondent also failed to provide sufficient reasoning for concluding that the appellant’s invention lacked an inventive step or that prior art and the claimed invention were similar. The Court quashed the order and remanded the matter for reconsideration.
M/S M.H. One Tv Network Pvt. Ltd. vs M/S Mh 7 News And Anr on 20 November, 2024 (Delhi High Court)
The petitioner, engaged in broadcasting services under the registered trademark “MH1/MH ONE” since 2002, sought cancellation of the respondent’s trademark “MH7,” registered in 2017, alleging deceptive similarity. The Court, noting the prior registration and extensive use of the petitioner’s mark, found that the respondent’s mark was deceptively similar, leading to consumer confusion and unfair advantage. Applying the Triple Identity Test (similar mark, services, and consumers), the Court held that the respondent’s mark violated trademark law. The Court directed the cancellation of the respondent’s trademark “MH7” and ordered the Registrar of Trade Marks to rectify the register and issue a notification.
Ab & T Lifestyle Spaces Llp vs The Registrar Of Trade Mark on 21 November, 2024 (Madras High Court)
The appellant challenged the impugned order of the respondent Registrar refusing registration of its trademark ARC – A GATEWAY TO YOUR FUTURE” under Sections 9 and 11 of the Trade Marks Act, 1999. The appellant argued a violation of principles of natural justice and arbitrariness, asserting that alleged similar marks cited in the examination report operate in different territories and that their mark if allowed would be restricted to Karnataka. The Court held that the impugned order was non-speaking, failed to consider the appellant’s contentions, and introduced new grounds without prior notice, thereby violating principles of natural justice. The Court quashed the order, directing the respondent to publish the appellant’s mark in the Trade Mark Journal, restricted to Karnataka, and consider any opposition on merits.
The appellant challenged the order by the respondent Registrar refusing to register the trademark “MARS BY GHC” under Section 11 of the Trade Marks Act, 1999, claiming similarity with the cited mark “MARS”. The appellant argued that its mark pertains to lifestyle products available without prescription, unlike the cited mark, which involves prescription-only pharmaceutical items, and that there is no likelihood of public confusion owing to the source being mentioned in the trademark. The Court noted the respondent’s non-speaking order, failure to specify which category of Section 11 applied and ignorance of the appellant’s willingness to modify the mark’s size to enhance the source, “GHC”. The Court, thereby, quashed the impugned order, directed the mark to be published in the Trade Marks Journal, and allowed opposition petitions to be filed and adjudicated per merits.