Article
The Risdiplam saga: Delhi High Court adjudicates patent infringement suit between Roche and Natco By Vindhya S Mani, Harshita Agarwal and Surbhi Nautiyal
The first article in this issue of IPR Amicus discusses a recent decision of the Delhi High Court in a patent infringement suit between Roche and Natco. The authors believe that the decision, particularly the analysis of inventive step, may be wanting, especially in applying the concept of ‘bioisosterism’. They also note that despite evidence of enhanced efficacy, improved pharmacokinetic profile, and therapeutic advantages over known compounds, the Court appeared to have adopted a simplistic assessment of inventive step based on a simpliciter application of the bioisosterism concept. However, according to them, the order, while detailed and ostensibly rooted in public interest, raises concerns about the way the credible challenge test is applied, especially in aspects of substantive technical assessment concerning inventive step.
TNot all marks are created equal: The curious case of distinctiveness By Divya Vishvapriya and Kriti Sood
The second article in this issue of the newsletter discusses how the Courts are increasingly realizing that distinctiveness in trademarks may not necessarily be inherent, it can also be created via use. The article elaborately examines these changing interpretations, concentrating on significant rulings that have influenced India’s trademark protection laws. The authors discuss the different categories of distinctiveness and note that although descriptive and generic trademarks often encounter significant challenges, recent legal developments indicate a more business-oriented and practical perspective - considering composite marks that blend generic terms with unique stylization or design; evidence of acquired distinctiveness, such as consumer surveys, advertising expenditures; and brand recognition.
Ratio decidendi
- Intersection of Design and Copyright laws – Supreme Court of India formulates two-pronged approach
- Patents – Writ petition against rejection of pre-grant opposition – Court permits to lodge post-grant opposition and allows interim order, restraining the patent applicant from prosecuting the petitioner, to continue till disposal of such opposition – Madras High Court
- Patentability under Section 3(k) – Scope of ‘Business method’ – Madras High Court
- Trademark – Suit for passing off need not be stayed for decision on rectification application – Delhi High Court
- Copyright – Registration as copyright society or being a member of such society is mandatory to be able to issue license for exploiting assigned copyrighted work – Delhi High Court Division Bench
- Patents – Appeal dismissed on the basis that claim scope was expanded and did not amount to ‘correction’, ‘disclaimer’ or ‘explanation’ under Section 59 of the Patents Act, 1970 – Delhi High Court
News Nuggets
- High Court advises Controller General to adopt a technical solution to get proof of receipt of email
- Distinctiveness of a combination mark cannot be negated by dissecting the mark
- Trademark having AU characters is deceptively similar to the mark having UA characters
- Using copyrighted data for AI training – Industry seeks changes in Copyright Act and clarification on ‘fair dealing’
- USA’s creative community is against more relaxed copyright laws for training AI
- Trademark ‘Josh’ for torches and flashlights – Eveready granted injunction
- ‘Taj’ recognized as ‘well-known mark’ in hospitality
