Use as trade mark sine qua non to claim honest concurrent use
By Vindhya S. Mani
The Bombay High Court vide its judgment dated 15th September, 2014 in ITM Trust v. Educate India Society [see end note 1] granted an injunction in favour of the plaintiff, ITM Trust, against the defendant, Educate India Society, from using the mark "ITM" or any other deceptively similar mark in respect of technical and educational services so as to infringe ITM Trust's regi...
Trademark battle over the word “PINK”
By Sarita Rout
The Chancery Division of the Community Trade Mark Court recently decided [see end note 1] against Victoria's Secret UK Ltd. [hereinafter referred to as the 'defendant'] in an infringement action brought by Thomas Pink Ltd. [hereinafter referred to as the 'claimant'] in respect of its registered trade marks in European Union and a series of two marks in United Kingdom [hereinaft...
Compulsory license – High Court upholds IPAB Order
By Vindhya S. Mani
The Division Bench of the Bombay High Court by its recent order [see end note 1] dated 15th July, 2014 upheld the order of the Intellectual Property Appellate Board (IPAB) [see end note 2] dated 4th March, 2013 granting a compulsory license to Natco Pharmaceuticals (Natco) under Section 84 of the Patents Act, 1970 (the Act). The compulsory license was granted to Natco to ma...
Registration of license / assignment deed under the Patents Act - Mandatory or not?
By Vindhya S. Mani
A license agreement or an assignment deed is an agreement between a right holder and the licensee and/or assignee wherein the right holder permits the licensee and/or assignee to use rights owned by the right holder in exchange for a consideration, whether in the form of a one-time settlement or a periodic royalty. Generally an agreement may be in writing or oral but Sectio...
Is new hardware required for patenting computer implemented inventions in India?
By Jaya Pandeya
Interpretation of Section 3(k) of the Patents Act, 1970 (the Act) that imposes an absolute bar on patentability of business methods, mathematical methods, algorithms and computer programs per se continues to remain a contentious issue for applicants and IP professionals in India.
The Manual of Patent Office Practice and Procedure (MPPP) [see end note 1] provid...
Issue of design-copyright interface – A ‘triable issue’
By Jasneet Kaur & Sarita Rout
The High Court of Madras, in a recent decision in the matter of Standard Corporation India Inc., v. Tractors and Farm Equipment Ltd [see end note 1]., had an occasion to consider the popular issue of interface between copyright and design protection in case of an artistic work.
Tractors & Farm Equipment Ltd. (hereinafter referred to as “TAFE”) filed a suit for ...
Trademark – Prosecution under PMLA for alleged infringement
By Prashant Reddy
In a new dimension to enforcement of trademark rights in India, the Enforcement Directorate (ED) of the Government of India has reportedly initiated action against two firms for allegedly infringing the registered trademarks of the public sector enterprise, Steel Authority of India Ltd. (SAIL).
As per news reports, the alleged infringers were conversion agen...
Patents (Amendment) Rules, 2014 – Certain issues with the definition of small entities
By Prashant Reddy & Adarsh Ramanujan
On February 28, 2014 the Indian Patent Office (IPO) notified the Patents (Amendment) Rules, 2014 (“Rules”). These Rules are based on the earlier draft Patents (Amendment) Rules, 2013 which were published on May 6, 2013. The amended rules have come into effect from February 28, 2014.
When the draft rules had proposed a substantial fee hike ...
Patents Act – IPAB re-emphasizes compliance with Sections 14 and 15
By Vindhya S. Mani
The Intellectual Property Appellate Board (IPAB) by its recent orders [see end note 1] dated 20th January, 2014 and 23rd January, 2014, set aside the orders of Assistant Controller rejecting the patent applications for a "sterile pharmaceutical composition" [see end note 2] and a "crystalline polymorph of a bisulfate salt of a thrombin receptor antagonist" [see end note 3] ...
Delhi High Court rules on disparagement of trademark
By Jasneet Kaur
A Division Bench of the Delhi High Court in a recent decision dated 10-12-2013 held that the television commercial which compares the product ‘Pepsodent Germicheck’ with ‘Colgate ST’ is not per se disparaging. However, the print advertisement published by the respondent (Hindustan Unilever Limited or ‘HUL’) involving the same comparison was held as prima facie disparag...
Scope of ENV under PVP Act vis–a-vis the Seeds Act
By Vindhya Srinivasamani & Sudarshan Singh Shekhawat
The Registrar, Plant Varieties Authority at New Delhi, vide its recent order of October 28, 2013 has held that parental lines of extant varieties [Extant (Notified) Variety - ENV] notified under Section 5 of the Seeds Act, 1966 (ENV) cannot ipso facto be considered as ENV under Section 2(j)(i) of the Protection of Plant Varieties and Far...
Brazilian patent law – Proposed reforms inspired by Indian law
By Vindhya Srinivasamani & Adarsh Ramanujan
Brazil was the fourth country in the world to enact a patent law (in 1809) and it was also a founding member of the Paris Convention in 1882. Therefore, while Brazil is not new to a patent regime unlike other developing nations, there has been a recent legislative review that may lead to major patent law reforms. The Parliamentary Committee ...