Article
De-blurring Section 59 of the Indian Patents Act 1970
By Aashmeen Kaur, Eeshita Das, T. Srinivasan & Dr. Malathi Lakshmikumaran
The article in this issue of IPR Amicus examines a recent decision of the Delhi High Court, where the High Court has redefined the boundaries of permissible claim amendments for overcoming the objections on non-patentability especially Section 3(i) of the Patents Act, 1970, without jeopardizing the requirements of Section 59. The primary focus of this article is on the interpretation of Section 3(i) and Section 59 of the Act as provided by the High Court. Considering the facts of the case and the High Court’s analysis of claim amendments, the authors conclude by stating that the Applicants can file claim amendments to overcome the non-patentability objections, such as Section 3(i) per the Indian Patent Law, keeping in view the boundaries of Section 58 and 59. They also note that this decision also clarifies that product claims cannot and must not be objected under Section 3(i) of the Act, since the said Section only refers to claims directed to a process.
Ratio decidendi
- Copyrights – Original drawings used to industrially produce an article will fall under ‘artistic work’ and be entitled to copyright protection – Delhi High Court
- Trademark squatting would amount to ‘bad faith’ under Section 11(10)(ii) of the Trade Marks Act, 1999 – Delhi High Court
- Trademarks – Allied and cognate goods, even if falling under different Classes, cannot be held to be dissimilar goods for injunction – Delhi High Court
- Trademark ‘Street Armour’ infringes mark ‘Under Armour’, both used for sportswear – Word ‘Armour’ is neither descriptive nor common to trade – Delhi High Court
- Use of celebrity names, images for satire, parodies, news, etc. not falls foul to tort of infringement of right of publicity – Delhi High Court
News Nuggets
- ‘PhonePe’ and ‘PostPe’ – No phonetic and structural similarity which would confuse the target consumer
- Goodwill or reputation of brand cannot be established on basis of how quickly it shows on Google search
- Filing of additional documents by Plaintiff when not permissible
- Trademarks – Higher degree of protection to ‘Kind’ family of marks
- Trademark – Deceptive similarity – Assertions in counter-statement by Plaintiff when can lead to denial of interim relief
- Trademarks – Prima facie case of infringement of mark ‘Officer’s Choice’ by mark ‘Green Choice’
