March 27, 2023

IPR News Letter - March 2023

Delhi High court adopts a broader interpretation to amend the claims as originally filed in the Patent application

CASE TITLE – Allergan INC vs Controller of Patents, C.A. (COMM. IPD-PAT) 22/2021,

FACTS OF THE CASE –

Hon’ble Delhi High Court has overturned an order by the Controller of Patents against a US-based pharmaceutical company Allergan i.e. the Appellant in the present case. The Appellant, in its patent application for methods for treating ocular ailments using the intracameral implants has submitted 20 claims in India, as filed in the US.

The Controller in the First Examination Report (FER) objected to the claims, holding them non-patentable under Section 3(i) of the Patent Act, pursuant to which, the Applicant proposed to amend the claims to a product patent. The Controller refused the application on the sole ground that amendments made in the claims is beyond the scope of the originally filed claims.

ARGUMENTS BY THE PARTIES –

 

Contentions of the Appellant

The Appellant contended that the original claims drafted were ‘method of treatment’ as filed (in the US) that have to be amended to ‘composition’ claims which should be allowed while filing in India as it is in accordance with national phase application.

Applicant also pleaded that the key features and characteristics were present in the original claims and therefore the proposed amendment should be accepted

Contentions of the Respondent

Respondent contended that the amendments sought are not allowed u/s 59(1) of the Patents, Act, 1970 as it prescribes that the amended claim did not fall wholly within the scope of original claim

Respondent further took reference of Section 10(4)(c) of the Patents Act and submitted that complete specification should end with the actual claim or claims defining the scope of the invention and therefore, claims are only a part of, and cannot be equated with, the complete specifications.

ISSUE BEFORE THE COURT –

Whether the amendment of the claims as originally filed by the Appellant could have been allowed under section 59(1) of the Patents Act, 1970

 

JUDGMENT –

The Hon’ble Delhi High Court held that the Controller’s interpretation of Section 59(1) of the Patents Act was incorrect and, if accepted, would prevent the Applicant from obtaining a patent for the implants in India. The Court emphasized that public interest is a crucial aspect of patent law, especially when it comes to pharmaceutical or therapeutic patents.

The claims and complete specifications in a patent have to be read together and as a whole. The claims have to be understood in the light of the complete specifications. They form an integrated whole, and cannot be treated as two distinct parts of one document. The Hon’ble Court was of the opinion that the Controller ought to have allowed the amendments and to have examined the claims amended, and their patentability, on merits, and should not have dismissed the amendments merely on the ‘somewhat tenuous’ ground that the Applicant was not entitled to amend its claims in view of Section 59(1) of the Patents Act.

The Court overruled the Controller’s decision and allowed the Applicant to amend the originally filed claims on the basis of product which was claimed in the amended claims. Additionally, the Court ordered a new examination report from the controller that considers the Act and principles of natural justice, and provides the Applicant with a fair opportunity to be heard without influencing the patentability of the amended claims.

K S&Co COMMENTS –

This case law is indeed a welcome development with regard to amendment in claims Claim amendment within the scope of the invention at the pre-grant stage should not be out rightly rejected without examining the other aspects of patentability.

Further, the legislative intent is that no new subject matter should be added to the claims which has not been disclosed in the originally filed specification. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not to be rejected.

CASE TITLE – Casio Keisanki Kabushiki Kaisha D/B/A Casio Computer Co. Ltd. V/s Riddhi Siddhi Retail Venture & Anr, CS(COMM) 537/2022 and I.A. 12437/2022

 

FACTS OF THE CASE –

A design infringement suit was filed by the Casio Keisanki Kabushiki Kaisha (plaintiff), a well-known entity engaged in the manufacture of musical keyboards. The plaintiff has valid design and copyright registration certifying that novelty resides in the shape and configuration of the keyboard. The plaintiff is seeking an injunction against Riddhi Siddhi Retail Venture (defendants) and all other acting on their behalf from manufacturing or selling any keyboards carrying the impugned design or any other design, which is deceptively similar to their design. The plaintiff is aggrieved by the adoption, by the defendants, of a near identical design for its keyboard

In Interim Application (IA) filed by the plaintiff, ad interim relief was granted by the Additional District Judge (ADJ) vide order dated 25 June 2021. The defendants have filed another IA for vacation of the order.

 

ARGUMENTS BY THE PARTIES-
Contentions of the Plaintiff

The Plaintiff contend that they have acquired goodwill and reputation in the market as the design has become indelibly associated with the plaintiff and has, over a period of time, acquired secondary significance. The plaintiff has shown the similarities between the two designs and argued that the consumers are associating keyboards of the defendant with that of the plaintiff’s product.

 

Contentions of the Defendants

The defendants have argued that their range of keyboards are identical, or near identical, in design to the plaintiff’s keyboards. They pleaded that the plaintiff‘s design suffers from lack of novelty and is similar to the design of several other keyboards available in the market. Moreover many such similar keyboards are listed on various websites which lacks novelty. 

 

ISSUES BEFORE THE COURT –
  1. Whether the plea by defendants that the design of the plaintiff is liable for cancellation on the ground of novelty and originality under section 19 of the Designs Act, 2000 is valid?
  2. Whether the interim relief by the ADJ should be confirmed or vacated?

 

JUDGEMENT –

On perusal of the photographs of the plaintiff’s and the defendant’s keyboards emphasizing the likeness of the design of the two, the Court noted that the plaintiff’s and the defendant’s keyboards are deceptively similar in design. Thus, the design of the defendant’s keyboard is an obvious imitation of the plaintiff’s design within the meaning of Section 22(1) of the Designs Act, 2000

 

While dealing with the issue of cancellation of design, Court relied on Section 19 read with section 4 of the Design Act, 2000 and held that lack of novelty and originality is a ground of defense. Therefore, the lack of novelty or originality must be evaluated at the time of the design’s registration. If a design is found to be original and new during date of registration, it cannot be canceled solely because multiple producers decide to copy it after its registration. The plea of novelty or originality must be raised in relation to the registration date of the design. The defendant contention for cancellation of the plaintiff’s design on account of novelty or originality was not valid.

 

Therefore, it is for the defendants to produce material before the Court to indicate that design when registered was not new or original. On having no such material forthcoming on the record to indicate that it suffers from prior publication, the Court confirmed the interim application in favor of plaintiff.

 

K S&Co COMMENTS –

This case explained that for cancellation of a registered design, the design has to be published in India or any other country prior to the date of registration. The clarification is enshrined that for this defence u/s 19 and 22(3), to work, the lack of novelty or originality has to be seen as on the date when the design was registered. If, after the design is registered, several persons choose to copy the said design, then this cannot constitute a ground to cancel the registration of the design. However, it is important for the owner of design to take legal steps against those who are copying its design to protect its novelty and avoid confusion among its consumers.

Case Title – Subway IP LLC v Infinity Food and Ors [CS (COMM)843 of 2022]

Facts of the Case

Subway IP LLC (‘Subway’), the plaintiff is a company which operates a well known chain of global restaurants under the name SUBWAY. Infinity Foods LLP(‘IF’), the respondent is a partnership firm to whom the Plaintiff has granted the right to franchise its outlet.

The plaintiff filed a trademark infringement and passing off suit against the respondent for wielding and infringing its Intellectual Property Rights. According to the plaintiff the respondent has intended to ride upon its goodwill and reputation by using :

  1. Deceptively identical brand name and logo consisting of trademarks SUBWAY in the name of SUBERB.
  2. Similar dishes VEGGIE DELICIOUS and SUB ON A CLUB compared to the trade mark registered dishes of the plaintiff VEGGIE DELITE and SUBWAY CLUB.
  3. Identical outlet, decor, menu cards and staff uniforms.
  4. Verbatim reproduction of the plaintiff’s website displaying similar headings, menus and recitals.

The defendants have agreed to change their logo, color of the logo, change the names of the dishes and remove their website and include the unique features different from the plaintiff’s website. Moreover they have argued that the plaintiff cannot claim exclusivity over the prefix SUB in SUBWAY as it is a generic word. Pursuant to the changes the defendant contended that no action for infringement and passing off will lie against them.

Issue

Whether, subsequent to the changes made by Infinity Food, will an action for infringement and passing off stand against them?

Judgement

The Hon’ble Delhi High Court ruled in the favour of Infinity Food and provided the following reasons:

  • ‘SUBERB’ is not phonetically similar to ‘SUBWAY’, though both are words of two syllables. The first syllable, ‘SUB’, is common when used in the context of sandwiches. It is also well known that ‘SUB’ is an abbreviation for ‘Submarine‘, which represents a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length. Subway cannot claim a monopoly over all two-syllable words, of which the first syllable is ‘SUB, ‘especially when used in the context of eateries that serve sandwiches and similar items. In the circumstances, once the ‘SUB‘ part of the SUBWAY mark is taken out, there is no similarity between ‘WAY‘ and ‘ERB. ‘
  • Further to the modifications by Infinity Food, the red and white mark cannot be said to be deceptively similar to any of Subway’s device marks, as none use the red and white colour combination. Moreover, the lettering, font, and appearance are also distinguishable from each other.
  • The Court found no merit in the contention that SUBWAY is a well-known brand, and there is hardly any chance that a person who wishes to partake from a Subway outlet will get confused with an Infinity Food outlet and partake from there. Subway has not placed on record any material which could lead to any such inference. Thus, no case of passing off is made out.
  • Subway initially contended that SUBWAY CLUB and VEGGIE DELITE stood infringed by the marks ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ used by Infinity Food. However, the latter has modified the said marks to ‘VEG LOADED REGULAR’ and ‘TORTA CLUB’. There is no similarity between ‘VEGGIE DELITE’ and ‘VEG LOADED REGULAR’ or between ‘SUBWAY CLUB’ and ‘TORTA CLUB’. In this regard, it is to be noted that both ‘Veg’ and ‘Club’ are the common elements and no one can claim exclusive monopoly of both these terms.
  • With regard to similarities in the layout of restaurants, counters, uniforms, etc, it cannot be a ground for injunction as no claim of exclusivity in respect of the décor or layout of premises or staff uniforms is available under Indian laws. Moreover, as Infinity Food has already modified the layout and other alleged similarities, the question does not arise for consideration.

Therefore, the Court dismissed the application filed by Subway and held that after the modifications made by the defendant, there is no case of passing off and infringement of trademarks.

K S & Co Comments

The decision re-enforces the legal principle that companies cannot seek monopoly on common words like “SUB” and “CLUB” in relation to sandwiches.  In cases of infringement and passing off, the courts not only have to determine the similarity between the marks but they also decide on whether the marks are creating confusion between the consumer of the goods.  In this case as the defendant has modifies its logo and brand names, there was unlikely chance of confusion among consumers.

Case Title – Vinay Kumar GB v. Sudhir Kumar and Anr., C.O. (COMM.IPD-TM) 244/2021, C.O. (COMM.IPD-TM) 245/2021, C.O. (COMM.IPD-TM) 342/2021, C.O. (COMM.IPD-TM) 395/2021, CS(COMM) 779/2022

Facts of the case

The Delhi High court has clubbed five matter to clarify the objection raised by the respondent i.e. Sudhir Kumar wherein rejoinder filed by the petitioner (Vinay Kumar) in the petitions were filed beyond the stipulated time under Rule 7(x) of the Intellectual Appellate Division (IPD) Rules, 2002. Therefore, the rejoinders cannot be taken on record by the court. 

The respondent has submitted that the rejoinder to the reply has to be filed within the period prescribed by the Court or within 30 days from the date on which the Court directs the filing of such rejoinder. The Court was empowered to grant extension of time for filing rejoinder by a maximum period of 15 days beyond the period of 30 days under Rule 5 in Chapter VII of the Original Side Rules of Delhi High Court

The petitioner relied on the judgment “SCG Contracts (India) Pvt Ltd v. K.S. Chamankar Infrastructure Pvt Ltd, 2019 12 SCC 210” wherein the court held that beyond 120 days from the date of service of summons, the defendant shall forfeit the right to file the written statement and the Court shall not allow the written statement to be taken on record. As there is no consequence of failure to file the replication within the period of 30 days stipulated in Rule 7(x) having been provided in the IPD Rules, it would be erroneous to hold that the rejoinder, if filed beyond the said period, cannot be taken on record.

Issues

Whether the deadline to file a rejoinder to a reply under Rule 7(x) of the Delhi High Court Intellectual Property Rights Division Rules, 2022 (IPD Rules) is mandatory or not?

Judgement

The Delhi High Court has made it clear that the deadline for submitting a rejoinder to a reply, as stated in Rule 7(x) of the Delhi High Court Intellectual Property Rights Division Rules, 2022 (IPD Rules), is not mandatory.

The court applied the principle stated in the case of “State of Bihar v. Bihar Rajya Bhumi Vikas Bank Samiti, (2018) 9 SCC 472” that procedural provisions are generally considered directory rather than mandatory. The Court clarified that if a provision does not specify the consequences for failing to adhere to a prescribed timeline, then the timeline should be treated as a guideline, when filing a lawsuit under the IPD Rules, the Original Side Rules, Commercial Courts Act, CPC and Patent Suit Rules will be applicable. However, when filing an Original Petition under the IPD Rules, the Original Side Rules will only apply if they are not inconsistent with the IPD Rules.

Rule 7(x) of the Delhi High Court Intellectual Property Rights Division Rules stipulates that the rejoinder to a respondent’s reply in an original petition must be filed within the time limit set by the Court or within 30 days of the Court’s direction to file the rejoinder.

The court noted that the Rule 7(x) does not specify any consequences for failing to meet this deadline. Therefore, this deadline was directory and not mandatory. The Court clarified that if the rejoinder is not filed within the specified 30-day period, it would not necessarily be struck off the record if there are valid reasons for condonation of delay.

K S & Co Comments

This decision reiterates the principle that procedure are hand-maid of justice and Rules of Procedure needs to be interpreted to advance cause of justice and not to defeat it. Even though the timeline to file rejoinder is not mandatory, it may be recommended that it may be made mandatory in order to make the dispute resolution process more efficient

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