[This post is authored by – Bharathwaj Ramakrishnan, Md. Sabeeh Ahmad, Aishani Chatterjee, Swaraj Barooah, and Praharsh Gour with research inputs from Aarav Gupta, Tejas Misra, Aditi Bansal, Mansi Bhatia, Yukta Chordia, Bhuwan Sarine, Shravya Pandre, Deepali Vashist, and Malavika S. Nair.]
2024 has been an explosive year for IP developments in India, with more IP divisions coming up in different High Courts, an increasing number of IP registrations and an overall higher degree of attention on IP issues in the country. Like previous years, we once again bring to you our list of top IP developments that have happened across the year! And as we move to the cusp of the new year, here’s to wishing our readers a very happy and healthy year ahead!
Do you agree with our list? With the number of developments happening, we’re bound to have missed some important developments, but we’ve done our best to include developments from different parts of the country, as well as different areas of IP law!Are there other developments you think we should’ve added? Please take a look and mention them in the comments below!
We have divided our list into five categories:
a) Top 10 IP Judgements/Orders by Topicality and/or Impact
These decisions reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem, etc. We’ve tried to represent a diversity of subject matter also in this list, so it’s a mixed bag of cases dealing with patents, trademarks, copyright law etc.
b) Top 10 IP Judgements/Orders by Jurisprudential Rigour and/ or Legal Lucidity)
These decisions reflect those that we thought showed a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive.
c) Top 10 IP Legislative and Policy Related Developments
This category lists notable developments on the legislative and policy side and includes important amendments, proposals for amendments, release of policy notes and reports etc.
d) Other IP Developments; and
e) Other Notable Developments.
Important developments which do not fall under any of the above three categories have been highlighted in the fourth category, and the fifth category is a more general list of other notable developments in the year.
As always, a huge thanks to all our contributors including our readers who engage online as well as offline with our posts and constantly encourage us. Wishing everyone a prosperous and a healthy new year ahead and hoping that 2025 brings in spicier IP developments to the Indian IP regime, making it a more fair, balanced and effective one!
A) Top 10 IP Judgements/Orders (Topicality/Impact)
1. Novex Communications Pvt Ltd v. Trade Wings Hotels Limited on 24 January [Bombay High Court]
In an important order concerning enforcement of copyright in sound recordings, the Bombay High Court held that copyright owners like Phonographic Performance Ltd and Novex can issue music licenses even if they are not registered as copyright societies under the Copyright Act. The Court opined that the proviso under Section 33(1) of the Act, which mandates that license can only be issued via copyright societies, does not apply to sound recordings. This interpretation aligns with the Delhi High Court’s interpretation, while conflicting with the Madras High Court’s interpretation which had held that only copyright societies can license out rights for sound recordings. (Check IPRment Law’s post on this decision for a detailed discussion)
The judgement was passed by Justice R. I. Chagla.
2. T Series And Another vs M/S Dreamline Reality Movies on 22 February [Punjab and Haryana High Court]
The case concerned the adaptation of late Jaswinder Kaur’s biography into a cinematographic film and deals with interplay of copyright with personality rights. The decision by Punjab and Haryana High Court is also notable for explicitly stating that one needs to be a celebrity to be able to claim personality rights. Jaswinder Kaur was a Canadian citizen and a victim of an ‘honor killing’, whose death resulted in significant media attention in the 2000s. The dispute concerned whether T-Series needs to take any license/ permission from Mr Sidhu, Jaswinder Kaur’s husband, since her life story would also include stories about him. The Court held that no such permission would be required and T-series has not infringed any copyrights because they can only exist in a “work” and not life events or facts. Considering that T-Series’ movie is based on a biography written by Fabian Dawson and public records concerning the death of Ms. Kaur, the defendants cannot claim infringement of their copyrights. Regarding Mr. Sidhu’s right to privacy and commercial exploitation, the Court held that for such a right to exist, it should be first established that Mr. Sidhu is a celebrity and has commercial goodwill. Akshat Agarwal and Aditya Bhargava have criticised this limitation of publicity rights, in their IJLT piece for being inequitable and also not being in line with the constitutional nature of the concerning rights.
The judgement was passed by Justice Rajbir Sehrawat.
3. Ericsson v. Lava on March 28 [Delhi High Court]
The Court in Ericsson v. Lava gave a mammoth 476 page judgement while dealing with issues related to novelty, inventive step, Section 3(k) and FRAND. The judgement made headlines for being among the few on SEP disputes after completing a trial, as well as for the humongous damages of more than INR 244 crores imposed on Lava! The Court revoked one of Ericsson’s patents while upholding the validity of 7 others and declared that Lava had not entered into license negotiations in good faith. One of the notable findings of the judgement was the determination of whether the rates offered were on FRAND terms. For this, the Court compared the rates offered by Ericsson to Lava with rates offered by it to different Indian implementers. In doing so, the Court seemingly missed out on considering a vital fact that access to similar agreements/ information was initially denied to Lava during negotiations. The judgement also adopts a “value of the final product” approach (as opposed to the ‘smallest saleable patent practising unit’ approach) to calculating the damages to Ericsson. Doing so the Court overlooked the dynamic features of other components of the mobile phones like its camera and the patents which may apply on them. Surprisingly, the Court calculated the damages on the entire portfolio minus 1/8th patent (taking into account the 1 invalid patent) without checking if the remaining technology (/patents) are valid/enforceable in India. Overall, the decision seems to benefit SEP owners, who are mostly based in tech exporting countries, but in doing, may have inadvertently put the interest of implementers from tech importing countries on the back foot.
The judgement was passed by Justice Amit Bansal.
4. Haldiram India Pvt. Ltd v. Berachah Sales Corporation & Ors on April 2 [Delhi High Court]
In a trademark infringement dispute, the Delhi High Court clarified that the distinctiveness accorded to well-known trademarks transcends geographic confines and declared Haldiram as a well-known trademark. In an ex-parte judgement, the Court clarified that a well-known trademark enjoys extensive reputation and on this understanding, the Court held that the mark will enjoy distinctiveness in West Bengal as well, where previously the right of the plaintiff did not extend.
The judgement was passed by Justice Prathiba M. Singh
Note: Later in the year, the Delhi High Court tightened the scope of the rights under well-known trademarks in Vans Inc. vs. FCB Garment Tex. Passed on May 2, the Court held that a determination of a mark as a “well known” mark will not give the proprietor unabridged and absolute rights to seek rectification of pre-existing (allegedly) similar marks. See Surabhi’s post on this order.) Thus, while a well known trademark may transcend geographical boundaries, it cannot give unfettered protection against prior marks.
5. Jackie Shroff vs The Peppy Store & Ors on May 15 [Delhi High Court]
The Court issued an ad-interim injunction restraining numerous defendants from infringing actor Jackie Shroff’s personality rights. It was alleged that the defendants were commercially utilizing/ misappropriating Shroff’s name, his attributes like his voice and images, and his registered trademarks. Interestingly, instead of giving a blanket injunction like in the Anil Kapoor case, the Court carefully assessed the alleged infringing activities. Consequently, while the Court imposed an interim injunction on some of the defendants, it refused to grant an ex-parte interim injunction against one, who had made a meme/ spoof video on Shroff’s previous interviews. The Court held that in his case it would be necessary to balance the legitimate interest in his artistic and economic expression with Shroff’s personality rights and thus issued a notice to the defendant instead of directly passing an ex-parte injunction. Significantly, the Court recognised the cultural currency that some personas acquire and how they become part of collective imagination which people invoke when they make a meme or a parody or spoof of that persona or with that persona.
The order was passed by Justice Anish Dayal.
Note: In contrast to this order, the Delhi High Court in two later instances – Independent News Services Pvt. Ltd. v. Ravindra Kumar Choudhary (May 30) and Vishnu Manchu v. AreBumDum (October 1) and have issued broad sweeping injunctions against parody artists and online memers/ trollers. Unlike the Jackie Shroff order, in these orders, the Court has given little regard to the right to free speech, especially vis-a-vis parody and satire (Vishnu Manchu order discussed in detail by Praharsh and Yukta and Rajat Sharma case discussed by Aarav).
6. Communication Components Antenna v. Mobi Antenna on May 16 [Delhi High Court]
The Delhi High Court passed a remarkable judgement allotting INR 217 crores as damages to Communication Component Antenna (CCA) after determining that Mobi Antenna was infringing its patent. After initial participation, the defendants abandoned the case midway and the proceeding continued ex-parte. The judgement gained significant traction for the damages which were calculated according to CCA’s lost profits. However, as has been noted, in calculating lost profits in India, the Court accepted the average manufacturing and retail prices of the concerned goods in Canada and the US. This goes against the caveat in Strix v. Maharaja decision of 2023 (which the Court relied on in the present case to justify the damages) that damages are to be calculated on reasonable/ fair basis.
The judgement was passed by Justice Jyoti Singh.
A Division Bench of the Delhi High Court, clarified that when a trial court is prima facie satisfied about the defendant’s plea for rectification of the plaintiff’s mark, the infringement proceedings against them has to be stayed, i.e., the infringement proceedings cannot continue in parallel. This decision is important for clarifying the scheme under Section 124 after the abolition of the IPAB. The judgement was passed in a reference against the decision of a Single Judge Bench in Sana Herbals where the Court had held that after abolition of the IPAB the infringement suit and rectification petition can run simultaneously. While making this clarification, the Court relied on the Supreme Court’s decision in Patel Field Marshal v. PM Diesels and the Delhi High Court decision in Puma Stationer.
The Judgement was passed by a division bench of Justice Yashwant Varma and Justice Ravinder Dudeja.
8. Hoffman La Roche v Zydus Lifesciences Ltd. (The Pertuzumab saga) [Delhi High Court]
This case showcases the oscillating opinions of different benches of the Delhi High Court on interim injunctions and how this may have significant impact on the defendant. Roche sought to preemptively injunct Zydus from the selling and distributing “Sigrima,” a biosimilar version of the Plaintiff’s “Perjeta”. This drug contains “Pertuzumab” and is used to treat metastatic breast cancer. Over the course of six months, seven significant orders were passed by different benches of the high court with each trying to clarify whether there is an injunction on Zydus or not! A slightly longer description of the chain of events is given below:-
An interim injunction was granted by Justice Sanjeev Narula on July 9, not on the merits of the infringement assertion but on the basis of Zydus’ non-disclosure of its regulatory approval and their subsequent product launch. This injunction was granted till the next date of hearing, and following a roster change, came before Justice Saurabh Banerjee on October 9. This time the Court set aside Justice Narula’s order and refused to grant an injunction for inter alia lack of claim mapping by Roche in its application. (claim mapping is the comparison of features, types, components, compositions, and functions of the claims of suit patent with the allegedly similar product.) In a separate order on the same day however, the Court curiously granted an extension of two weeks to the interim injunction that they had earlier refused to grant, so that Roche can appeal against the order (See this post by Tejaswini on Justice Bannerjee’s orders). Then, on October 16, a Division Bench (of Justices Yashwant Varma and Ravinder Dudeja) stayed the Single Judge’s order rejecting the injunction and reinstated the injunction order and also directed a single judge bench to consider the matter afresh. On November 5, the matter was listed before a new Single Judge bench comprising of Justice Amit Bansal where Zydus submitted that they have already filed a Special Leave Petition to appeal before the Supreme Court against the DHC Division Bench Order. Considering this, the High Court directed that the July interim injunction order will continue in the meantime. The matter came before the Supreme Court in November where Justice Sanjay Kumar did not issue notice to Roche and directed the Single Judge to expeditiously hear the matter. Regarding the October 16 order, the Court left it open to Zydus to file an appeal before a Division Bench. Accordingly, Zydus approached the Delhi High Court Division Bench (pdf). The Division Bench (comprising of Justice Yashwant Varma and Justice Dharmesh Sharma on November 21 acknowledged the complicated cobweb of injunction orders and clarified that the injunction order expired after Justice Bannerjee’s order and presently there is no injunction in place on Zydus. The matter is still ongoing before the single judge bench of Justice Amit Bansal.
9. Gene Campaign vs. Union of India and Others on July 23 [Supreme Court]
In a detailed judgement (spanning 409 pages!) a 2 judge bench of the Supreme Court gave a split verdict on the question of whether the regulatory approval process for Genetically Modified (GM) mustard was correct as per law. This judgement is important due to the highly contested debate surrounding GM crops and their impact on the environment and public health. Justice B. V. Nagarathna quashed the order issued by the Genetic Engineering Appraisal Committee (GEAC) citing procedural irregularities like placing reliance on foreign studies and not considering any indigenous studies on the impact of GM mustard on the environment. Likewise, it was held that GEAC was ignoring representation with regards to the potential health and environmental impacts. GEAC is a statutory body that clears the release of GM Crops. In a separate opinion, Justice Karol dissented with Justice Nagarathna and upheld the approval process. He held that an expert body made the decision to release GM Mustard and did not exhibit arbitrariness. He concluded that the impugned order is aligned with the government’s scientific goals and food security concerns. However, both the opinions concurred that GEAC’s decisions on Genetically modified Organisms (GMOs) are open to judicial review. They also observed that India needs a national policy on GM crops and also batted for a reform of the GEAC as per the principles laid down in the judgement issued by the Court in T.N. Godavarman. Yet, considering the stalemate of the judges in this case, it is clear that the GM mustard saga has not yet come to an end before the Supreme Court (see here for Tejaswini’s detailed post on the case).
The judgement was passed by Justice B. V. Nagarathna and Justice Sanjay Karol.
10. Putting an End to some long standing Trademark Disputes
Some of the longest-running battles in Indian Trademark Law have finally reached their conclusions! The 23-year-old “crocodile impasse” was finally resolved with the Delhi High Court permanently injuncting Singapore’s Crocodile International Pte. Ltd. from infringing Lacoste’s “Crocodile” device in a judgement delivered on 14th August. In a detailed 118 page judgement, the Court carefully considered the evidence submitted by the parties and discussed transborder presence along with strong domestic reputation and consumer interest. The tussle between “Viagra” and “Vigoura” ended on May 1st this year after a staggering 19 years, with the Delhi High Court holding that Pfizer is the prior user and registered proprietor of the mark. Next, there was the marathon dispute over “FIELDMARSHAL” which concluded after an astonishing 40 years! After an extensive trial, in a judgement of 152 pages delivered on 2nd April, the Delhi High Court held that P.M. Diesels was the prior user of the ‘FIELDMARSHAL’ mark and cancelled the registration of the impugned mark in favor of Thukral Mechanical Works. While these cases raised critical questions in Trademark Law, what truly unites them is the sheer time it took for the courts to deliver a verdict. As the saying goes, “Justice hurried is justice buried,” but equally true is the adage: “Justice delayed is justice denied.”
Both Lacoste & Anr. vs Crocodile International Pte Ltd. judgement and Pfizer Products, Inc. vs Renovision Exports Pvt. Ltd judgements were passed by Justice Sanjeev Narula and P. M Diesels v. Thukral Mechanical Works was passed by Justice Prathiba M. Singh.
B) Top 10 IP Judgements/Orders (Jurisprudence/Legal Lucidity)
1. Novartis v. Natco Pharma on January 9 (Delhi High Court)
A division bench of the Delhi High Court passed an exhaustive decision on the extent of participation of pre grant opponents in the application amendment proceedings before the Patent Office. In perhaps one of the most detailed judgements on pre grant oppositions the Court undertook a holistic assessment of the scheme of examinations, oppositions, and amendments under the Act. Relying on UCB Farchim and Snehlata C. Gupte decisions the Court explains that opposition is there to aid and assist the Controller and the Controller has to be independently satisfied about the merits of an application. The Court also asserted the importance of both processes:- rigorous examinations for the focused evaluation against set legal standards so as to ensure only deserving applications receive patents; and the opposition process as a forum for external stakeholders to contribute to a more comprehensive evaluation of the patent application. Considering the different issues involved in the case notably right of the opponent to be heard, the Court listed out some fundamental principles on pre grant opposition, in para 128 of the decision. Significantly, that opposition and examination run on different tracks and they do not merge at any point, thus disagreeing with the impugned single judge order where the Court had opined that the processes converge after a point. The decision clarifies the purpose of the two processes and is a must read for all patent law enthusiasts.
The decision was passed by a division bench of Justice Yashwant Varma and Justice Dharmesh Sharma.
2. Pepsico India Holdings Pvt Ltd vs Kavitha Kuruganti on January 9 [Delhi High Court]
The Delhi High Court Division Bench made two important clarifications regarding the Plant Variety Act (PPVFRA) – one on material errors vs clerical errors, and the second on the evidence required to make successful public interest claims.
On the first issue, the Division Bench in contrast to the Single Bench ruling noted that procedural irregularities that do not go into the heart and root of the validity of the plant variety registration cannot be grounds for revocation under Section 34. Here, Pepsico had provided incorrect information with regards to the date of commercialisation before the authority at the time of filing the application, however the Division Bench noted that regardless, this would not have affected the validity of the registration. Hence the Court clarified that section 34 cannot be used in a manner wherein clerical and other non-material errors can be a ground for revocation. Next, with regards to revocation under the ground of public interest, the Court had stated that mere allegations are insufficient, additional evidence has to be adduced for seeking revocation under the public interest ground provided in Section 34(h). The judgement addresses some legal lacunae left open by the Single Judge bench, and as such, adds some needed rigour to this area of law with little jurisprudential precedent. At the same time, it does also leave open some wide gaps, such as what repercussions are to be faced for non-material errors as seen in this case, and what is the evidence required to make the public interest claim. Tejaswini has discussed the Division bench ruling as well as some of these questions in detail in this detailed post.
The judgement was issued by a division bench of Justice Yashwant Varma and Justice Dharmesh Sharma
3. Rhodia Operations v. Assistant Controller of Patents and Designs on January 31 and Galatea Ltd. v. Controller of Patents on April 15 [Madras High Court]
Madras High Court, in two judgments, Rhodia Operations v. Assistant Controller of Patents and Galatea Ltd. v. Controller of Patents, issued on January 31 and April 15, respectively, provided much-needed clarity on how to perform the inventive step analysis. In Rodhia, the Court clearly noted the two tiered analysis required to be performed – First that of technical advance or economic significance, and secondly arises the question of non-obviousness. To answer the question of whether an invention is non-obvious, one must identify the person skilled in the art (PSTIA). After placing reliance on foreign statutes and rulings, the Court noted that unlike Section 64(1)(h), wherein the qualifier “average” is present before skill, Section 2(1)(ja) does not provide any such qualifier before the word “skilled” and thus concluded that the person skilled in the art as relevant for non-obvious analysis is someone good/greater than average and also not a person who possesses outstanding imaginative skills. Later, the Court proceeded to identify the person skilled in the art, and then it analysed whether the invention would have been obvious to PSITA. Now, Galatea, taking this analysis forward, stated that PSITA would have complete knowledge of the prior arts but then qualified this previous statement with two caveats. Firstly, just because the PSITA is aware of all the prior arts, he will not have the unreal power to combine prior arts unless there are clear pointers. Also, the knowledge of the PSITA will be limited to the field of invention in question. Finally, the question had to deal with the issue of who the PSITA would be and whether it would be a team of experts when the patent in question straddles two or more fields of invention. The Court concluded that in that case, the closest prior art must be examined to see if PSITA is a team of experts or individual experts from whose perspective the question of non-obviousness is determined. Thus, through these two rulings, the Court has provided much-needed clarity in inventive step analysis.
The Rhodia Operations order as well as the order in Galatea Ltd. v. Controller of Patents was passed by Justice Senthilkumar Ramamoorthy.
4. Vifor International Ltd & Anr. vs Corona Remedies Pvt Ltd & Anr on February 7 [Delhi High Court]
In a landmark judgement concerning “product-by-process” patent claims, product-by-process claiming can be defined as a rule of necessity, wherein a patentee cannot fully describe a new product by clearly explaining its structure and instead has to fully describe the product by explaining its process of manufacture. The Division bench of the Delhi High Court clarified that the patent protection in these claims will extend to novel and inventive product, regardless of the process used to attain it. This is a diversion from the rationale of the single judge order against which an appeal was filed before the Court. The single judge had earlier opined that protection would extend only to the products derived from the described process. Likewise the judgement had provided guidance on how claim construction can be utilized to infer the intent of the Patentee and emphasised the distinction between the use of the word ‘obtainable by’ and ‘obtained by’ wherein the former conveys a descriptive process and would indicate product-by-process claiming and the latter would indicate a process claim. Finally the division bench order set aside the single bench order. In doing so, the Court passed a long 188 pages(!) judgement. But to retain clarity the judgement carries a clear index and has a separate section elucidating the “cardinal principles”. The Court reached upon these principles after undertaking a detailed assessment of not only a plethora of case laws but law commentaries such as Cook’s “Pharmaceuticals, Bio-Technology and the Law”, Roughton, Johnson and Cook on Patents, Terrel on Patent Law.
The judgement was passed by a division bench of Justice Yashwant Varma and Justice Dharmesh Sharma, and is authored by Justice Yashwant Varma.
5. Vodafone Idea Ltd. v. Saregama India Ltd on May 17 [Calcutta High Court]
The Calcutta High Court passed a significant judgement concerning the right of authors to receive royalties for commercial use of their sound recordings The judgement was passed jointly in three suits concerning Vodafone, IPRS, and Saregama, and concerned the question of whether Vodafone is liable to pay royalty and operate separate license from IPRS in order to commercially exploit the underlying musical and literary work of authors, who are members of IPRS. Undertaking a purposive interpretation of Sections 19 (stating the mode of assignments), 30 (provision to license existing and future works), 30A (stating the mode of licensing) along with Section 17, 18 of Copyrights Act, 1957 (meaning that the rights of authors to receive royalties of underlying work cannot be waived) and Section 33 and 34 (the authority of copyright societies to administer rights of its members), the Court concluded that there could not have been any agreement between Vodafone and Saregama to license out any rights without paying royalties to the concerned members of IPRS. To reach this finding, the Court carefully assessed and reproduced the relevant excerpts from different cases, notably IPRS vs. Eastern Indian Motion Pictures, and the Statement of Objects and Reasons to the Amendment Act of 2012. The judgement contains an extensive discussion on the 2012 Copyright Amendments and draws upon legal commentary to read copyright as “something like an extension of an author’s personality”.
The Judgement was passed by Justice Ravi Krishan Kapur.
6. Seagate Technology Llc vs Daichi International on May 21 [Delhi High Court]
The Delhi High Court passed what perhaps could be the first detailed decision on the issue of reverse passing off and can be a landmark order concerning interests of different parties in the refurbishment industry of India. The detailed 65 paged decision takes a balanced approach and directs the refurbisher to make full disclosure regarding the changes in the goods and that they do not resemble the original goods released by the manufacturer in terms of ‘warranty, serviceability, life, manuals and brochure.’ In doing so the Court relies on the Kapil Wadhwa decision. The decision thus ensures that none amongst the manufacturer/OEM/ wholesaler/ distributor/ retailer have any liability or responsibility for these refurbished goods. But in doing so the Court was still cognisant towards the refurbishment industry’s concerns, noting that passing an injunction order could kill it. In the extremely detailed decision, the Court has also touched upon rare topics like “Right to Repair” which we rarely come across in the Indian IP litigation.
The Judgement was passed by Justice Anish Dayal.
7. Under Armour v. Anish Agarwal on May 29 [Delhi High Court]
In a well-written decision, on May 29, the Delhi High Court passed a crucial order concerning confusion analysis in trademark disputes. Here Under Armour filed an application for injunction against the Defendants from selling, manufacturing, marketing and dealing in any manner with the wordmark “AERO ARMOUR” and / or “AERO ARMR”. Under Armour alleged deceptive similarity in the defendant’s use of the word “ARMOUR”. After clearly explaining the arguments of both parties, the Court started its analysis with assessment of confusion and listed out the plethora of relevant tests adopted by the Courts over ages to assess confusion. Considering these tests the Court then categorized the different factors it needs to consider to analyse confusion and broadly divided them to – the Strength of the marks; Similarity between marks; Proximity of competing goods and services; Confusion; Intent; Conduct of the parties; nature of the Consumers. The Court after undertaking a holistic view of these factors held that Under Armour was not entitled to injunction as there was no confusion. On Under Armour’s argument that Armour was the dominant part of its mark, the Court relied on the South India Beverages case, Aditya Birla Fashion to hold that “Armour” was not the dominant part of the plaintiff’s mark and also relied on Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd. to clarify that registration does not grant exclusive right in a part of the mark. (Interested readers can take a look at Aditya Bhargava’s post on the order)
The Judgement was passed by Justice Anish Dayal.
8. Orders Passed in Applications number 201733044715 on July 22 and 4889/CHE/2013 filed by Tata Steel and Haynes Ltd on September 18 [Indian Patent Office]
2024 saw numerous instances of remands from different High Courts back to the Patent Office (for some of these cases see here). While these remand orders gathered significant attention some of the well-reasoned orders went unnoticed. In a set of two very well reasoned orders passed on 22 July and 18 September dealing with Patent of Addition (covered by Tejaswini) the Indian Patent Office added on to the limited jurisprudence on the topic. Patent of additions concern subsequent modifications and improvements over a parent patent. The Patent Office rejected one application due to the lack of novelty and the second for the lack any improvement or modification. But the most crucial contribution of the orders would be on the scope of patents of addition in the Indian IP regime. The Office compared the understanding on patent of additions in the Swan Committee Report and Ayyangar Committee Report. Thereafter, it clarified that the claimed invention must represent a further disclosure constituting an improvement or modification of the main invention (Haynes International case) and that a subject matter disclosed but not claimed in the parent application cannot be filed as a patent of addition (Tata Steel case). In passing the orders, the Patent Office emphasised on the origins of patents of addition in the Patents Act and how they were shaped by the recommendations of the Ayyangar Committee.
The orders were passed by Asst. Controller of Patents and Designs Kundan Kumar.
For expedited resolution of commercial disputes, the Commercial Courts Act has mandated a requirement for parties to undergo pre-institution mediation, before a suit can be filed by the plaintiff. However, in case of need for urgent relief this requirement can be dispensed with. Often it has been seen that the plaintiff would plead urgency to skip this requirement to undergo mandatory mediation. In a well written order by the Himachal Pradesh High Court, the Court holistically examined the plaint and the submitted document to assess whether there was any urgency in the matter or not. In doing so the Court drew heavily from the Supreme Court’s decisions in Patil Automation Private Limited and Others v. Rakheja Engineers Private Limited and Yamini Manohar v. T.K.D. Keerthi. The short and sweet order is very clear in terms of its language and serves as a great example of how the Courts should undertake examination instead of summarily declaring an urgency requiring to waive this obligation.
The order was passed by Justice Ajay Mohan Goel.
10. Rajeev Kumar v. Central Information Commission on December 10 [Delhi High Court]
The Delhi High Court in a short and lucid yet significant judgment upholding ‘access to information’ has held that a Ph.D thesis qualifies as information under the RTI Act and even though it enjoys a copyright protection, it does not automatically qualify for exemption under Section 8(1)(d) of the RTI Act. The CIC had previously declined access to the thesis stating that the thesis contained commercially sensitive information and invoked the exemption under Section 8(1)(d). The judgment also emphasised on the need of “transparency and accessibility” towards promoting academic discourse and enabling further research. The judgment said that Copyright law is not intended to curtail access to information. A thesis, the Court observed, may contain sensitive or proprietary information, and such circumstances may justify restricted access. But in the present case, the University had failed to show material harm to its competitive position.
The Judgment was passed by Justice Sanjeev Narula.
C) Top 10 IP Legislative and Policy Related Developments
1. Patents (Amendment) Rules, 2024 Notified by the Ministry of Commerce and Industry
On March 15, the Ministry of Commerce and Industry notified the Patents (Amendment) Rules, 2024. The Rules introduce monumental changes in the patent regime with far-reaching implications. Most notably, the amendments pertaining to fixed deadlines for different procedures promise to be useful changes in quickening the patent prosecution timeline. At the same time, the Rules also curtail the requirement of disclosing ‘working requirements’ of patents in India, crucial to Compulsory Licensing applications and interim injunctions. The amendment also dilutes the obligation of patentees to furnish information about the processing of their corresponding foreign patent applications. The Amended Rules introduce a checking mechanism on pre-grant oppositions, now requiring the Controller to be satisfied that a prima facie case has been made by the pre-grant Opponent.
2. The 22nd Law Commission Released Report on Trade Secrets
The 22nd Law Commission released its 289th Report – Trade Secret and Economic Espionage (Part 1, Part 2 and Part 3) in March. The Report has emphasised the need for a ‘sui generis’ legislation on the protection of Trade Secrets and Economic Espionage. The Law Commission has endeavoured to undertake a holistic view encompassing the inclusion of trade secrets as an IP via different theories, relevant international obligations under TRIPS, and various global approaches on trade secrets. The Report includes the documentation of its extensive consultation with the judiciary, academia, industry and the government. It also contains a draft Trade Secrets Act, and discussion around several exceptions related to Trade Secrets such as Compulsory Licensing, Public Interest, and Whistle Blowing.
3. Clarity on Section 52(1)(za) of Copyright Act Still Amiss: The Goa Circular and the Bombay High Court Order
The Goa State Government in March, 2024, issued a circular (pdf) stating that there was no need to take copyright permission for the performance of musical works at religious ceremonies/weddings/social festivals. The state government had cited adverse effects on citizens and tourism activities of the state due to unjust enforcement, as a reason for such a circular. It further created “field units” instructed to take strict action against any hotel or copyright society making illegal demands for royalties or fees. Eventually, on August 13, the Bombay High Court in Phonographic Performance Limited vs. State of Goa set aside the circular for expanding the scope of the provision and interfering with the enforcement mechanism under the Copyright Act. The Section 52(1)(za) saga has been in the news since last year and still does not seem to have found clarity.
4. WIPO Adopts Two Treaties! Treaty on Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources; And the Design Law Treaty (DLT)
World Intellectual Property Organization (WIPO) adopted a Treaty on IP, Genetic Resources (GR) and Associated Traditional Knowledge (TK) on May 24, after 25 years since Colombia first brought the issue of protection of IP rights of indigenous communities, and 14 years since the text based negotiations on the agreement commenced. If India ratifies the treaty, the provisions will no longer allow India to admit pre-grant oppositions or revoke a patent due to non-disclosure of source of origin – something that Indian law currently does allow for. On December 5, Malawi became the first nation to ratify the Treaty. The Treaty will take effect after 15 instruments of ratification or accession are presented to WIPO.
WIPO also adopted the landmark Design Law Treaty (DLT) during the Diplomatic Conference between November 11-24 in Riyadh. This marks a significant step towards harmonizing procedural frameworks for industrial designs. This treaty primarily focuses on relaxing and simplifying procedural requirements, especially benefiting small and medium-sized enterprises (SMEs), startups, and independent designers. In the Indian context, one of the most significant aspects of the DLT is its inclination to protect traditional knowledge (TK). This is achieved through a provision under which contracting parties may require applicants to file information on traditional cultural expressions and traditional knowledge relevant to the eligibility for registration of the design.
5. Jan Vishwas (Amendment of Provisions) Act, 2023 Comes Into Force
The Jan Vishwas (Amendment of Provisions) Act, 2023 came into force on August 1, 2024. The primary aim of the Act is to decriminalize and remove certain offenses for ease of living and doing business in India. With respect to IP, amendments were made to the Copyright Act, 1957, the Patents Act, 1970, the Trade Marks Act, 1999 and the Geographical Indications Act, 1999. These amendments include removal of Section 68, Copyright Act (which penalises, with imprisonment, persons who make false statements for the purpose of deceiving or influencing any authority or officer.), Section 109, Trade Marks Act (Penalty for falsification of entries in the register). The legislation has previously been extensively discussed on the blog.
6. Trade Marks (Holding Inquiry and Appeal) Rules, 2024 Notified
The Ministry of Commerce and Industry notified the Trade Marks (Holding Inquiry and Appeal) Rules, 2024 on August 16. The Rules are aimed at amending the Trade Marks Rules, 2017. Most notably the Rules introduce a quasi judicial set up to hear complaints falsely representing a mark as registered under Section 107. As suggested from the title, the rules clarify the process of complaint, holding of inquiry, appeal, amongst other key clauses. However, the notified rules seem to have several gaps. The Rules do not clarify the ambit of the word ‘person’ under Rule 4(1) and whether it includes a company as well. Notices, appeals, and other communications under Rule 6 are supposed to be in electronic form, excluding a significant part of the population which do not yet have access to the internet. The Rules also do not provide any rationale for excluding the applicability of Bharatiya Sakshya Adhiniyam, 2023 in consideration of the adduced evidence.
7. CGPDTM Notifies the Constitution of a Committee to Draft the Code of Conduct for Patent and Trademark Agents
In Saurav Chaudhary vs. Union of India, Delhi High Court had directed the CGPDTM to draft a Code of Conduct for Patent and Trademark Agents. The CGPDTM had thereafter on September 13 notified the constitution of a committee to draft the Code of Conduct (CoC) and another Ad-hoc committee for complaints, if any, filed against the Patent or Trademark Agents until the CoC comes into effect. The Saurav Chaudhary case pertained to negligence by a Patent Agent by failing to respond to a FER which subsequently led to abandonment of the application. Both the Committees (for drafting of CoC and Ad-hoc committee for complaints) have three members from the CGPDTM office and two IP practitioners. December 31 is the deadline set by the Court to notify the Code.
8. New IPD Rules: Updates from Calcutta High Court, Himachal Pradesh High Court, and Karnataka High Courts
The Himachal Pradesh High Court and Calcutta High Court have notified their Intellectual Property Division Rules on July 8 and September 20, respectively. The Calcutta High Court has also initiated their first roster consequent to the IPD Rules. This makes the Calcutta High Court the third High Court in India with a fully functioning IPD after Delhi and Madras High Courts. The Karnataka High Court earlier this year notified a sub-committee to frame its IPD Rules. The Delhi High Court recently published its Second IPD Annual Report (2023-24), detailing the working of the IP Division. With newer IPDs up and coming, similar transparent steps should be adopted.
9. Biological Diversity Rules, 2024 Notified by Ministry of Environment
On October 22, the Ministry of Environment notified the Biological Diversity Rules, 2024. The Rules supersede the Biological Diversity Rules, 2004, and have been created supplementing the 2023 amendment to the Biological Diversity Act, 2002. The Rules place additional obligations on foreign entities for accessing research results based on Indian biological resources and provides more clarity on adjudication of penalties in case of non-compliance/contravention of provisions of the Act. In December, the National Biodiversity Authority invited comments to revise the Guidelines on Access to Biological Resources and Associated Knowledge and Benefits Sharing Regulations, 2014 better known as the ABS Guidelines, 2014. The notice has cited the recent amendments to the Biological Diversity Act, 2002 and Biological Diversity Rules, 2004 as the reason to revise the 2014 guidelines.
10. Swiss Senate Approves FTA Between India and EFTA
On December 3, the Swiss Senate (Council of States) approved the Trade and Economic Partnership Agreement, between India and the European Free Trade Association (EFTA). The EFTA has committed to increase FDI by USD 100 billion over 15 years and generate 1 million direct jobs in India. However, IP provisions within the FTA raise several questions. Article 11.7 of the Annex allows dismissal of pre-grant oppositions if raised on ‘unfounded grounds’; potentially paving the way for arbitrariness in examination. Article 13.2 of the Annex, mere non-compliance with disclosure requirements may not lead to refusal or revocation of a patent, unless the alleged suppression of information is ‘deliberate’ or ‘willful’. This exemption, coupled with amendments to Rule 12, shifts the burden of verification of the status of foreign application from the applicants to the Controller.
D) 10 Other IP Developments
1. The Multitude of AI and IP developments
In addition to the news of the first Indian copyright dispute on infringement via a Large Language Model, Artificial Intelligence’s interplay with IP was also under the spotlight in the Parliament. First, in February, in a response to a series of unstarred questions regarding copyright infringement by generative AI, Som Parkash, the Union Minister of State for Commerce and Industry, clarified that the existing IPR regime is well-equipped to protect Artificial Intelligence (AI)-generated works. Interestingly, in 2021, the 161st Parliamentary Report recommendation had recommended “create[ing] a separate category of rights for AI and AI-related works” (discussed by Tejaswini). Then in July, a private member bill was presented by P Sandosh Kumar in Rajya Sabha seeking to regulate AI by establishing a National Artificial Intelligence Regulatory Authority (NAIRA). The bill is currently pending in the Parliament. The topic of AI also received some attention from the Executive as in the month of March MeitY published an advisory inter alia directing intermediaries and platforms to obtain the government’s permission before deploying certain AI models in India. However this requirement was later withdrawn from the revised advisory. In December, the Government stated that it was funding two research projects aimed at detecting fake videos, audio, and images generated using AI and has also formed a 9-member committee to study different issues associated with deepfakes. The Government shared this information in a submission made before the Delhi High Court in a Public Interest Litigation initiated by journalist Rajat Sharma. Likewise on July 26 the Bombay High Court had issued an injunction against owners/operators of AI platforms which were mimicking Arjith Singh’s voice, image and likeness (Check out Tejaswini’s detailed two part post on this issue).
2. Many Administrative Woes of CGPDTM
2024 particularly proved to be a tumultuous year for the office of the Controller General of Patents, Designs, and Trademarks. While on one hand the office was celebrating one lakh patent grants in March and the woes of trademark registry website outage finally seems to have ended this year, on the other hand the institution was struggling with a variety of new administrative challenges. First, the Patent Examiner Recruitment process continued to be a seemingly harrowing experience this year for the institution. There were allegations of irregularities in the exam and eventually in May a writ was filed before the Delhi High Court challenging the whole process. Second, the Office also witnessed allegations of corruption vis a vis recruitment of contractual work staff and delegating them authority to perform quasi judicial functions. Earlier, in February an inquiry by the Chief Vigilance Commission was sought by the Public Accounts Committee’s Chairperson. In the same vein, in August, we saw an instance of an applicant being aggrieved by the order passed by a contractual work staff, before the Calcutta High Court. Such orders were also at the centre of the two separate legal opinions to the DPIIT (one by the Department of Legal Affairs, Ministry of Law and Justice and a second by an Additional Solicitor General of India, Aishwarya Bhati) which eventually resulted DPIIT’s direction to set aside such orders and formation of a committee on August 13, to revalidate such orders passed by contractual staff of the office. There were other allegations of corruption as well, like the one alleging administrative lapses in procuring desktops for the office. Internally also, the office saw a tug of war between officers where on one hand the CGPDTM issued (and eventually withdrew) 200+ show cause notices to its officers, and on the other hand officers filed two writ petitions alleging arbitrary allocation of matters and even the appointment of the Controller General, with the latter being dismissed by the Delhi High Court in December.
3. Google LLC v. Controller of Patents on April 2 [Delhi High Court]
On April 2, the Delhi High Court passed an important order inter alia engaging Section 8 safeguard to reject Google’s appeal against an order passed by the Patent Office. Section 8 r/w Rule 12 mandates that an applicant has to file detailed particulars of a foreign application corresponding to its Indian patent application (interested readers can read this piece by Swaraj and Praharsh, and this post by Yogesh to know more about the importance of this provision). In the present case, Google had not filed the information about the rejection of its divisional application of the corresponding EU patent application. Inter alia, this proved to be a major reason for the Patent Office to reject its application. In the appeal, the High Court analyzed the findings of the EU Patent Office and called out Google for not presenting this information before the Indian Patent Office consequently imposing costs of INR 1 Lakh on Google for suppressing this information. In addition to the Court’s finding on Section 8 information, the judgement is also notable for its lucidity. The decision on a technical subject matter is well organized with clear explanations of the claims, cited prior art, and its application in the present case. For its assessment of obviousness and inventive steps criteria, the Court relied on Avery Dennison Corporation v. Controller Of Patents And Designs detailing the different tests for obviousness and also decisions by foreign authorities like the EPO decision in Murata Manufacturing Company Limited.
4. What’s in a Missing Name? Some Questions Around the Covaxin Patent Application
On June 22, a news report revealed that Bharat Biotech (BBIL) filed a patent application for Covaxin without listing the Indian Council of Medical Research (ICMR) as a co-patentee or inventor. This was despite the Health Ministry’s assertion in the Rajya Sabha that the intellectual property rights over Covaxin are “jointly owned” by ICMR and BBIL, according to their Memorandum of Understanding (MoU). BBIL later labelled it as an inadvertent mistake citing filing its COVID-19 vaccine application in a rush as a reason. What further raised eyebrows was BBIL’s filing of Form 3 i.e. Section 8 disclosures, with the Patent Office, indicating the withdrawal of its application from 3 significant jurisdictions – Brazil, South Africa, and Europe. The PCT International Search Report, also suggested that the Covaxin patent application is anticipated by prior art. The prompt withdrawal of the three applications can be attributed to anticipated rejection due to third party observations on the lack of novelty and inventive step. (See Tejaswini’s post on this development.)
5. What’s in a Colour? Taking a Look at Lupin’s Colour TM Application for its Inhalers
Lupin Atlantis Holdings SA secured trademark registrations for three colour combinations (grey-pink, grey-brown and grey-olive green) for its inhalers in June and August. But the grant of non-traditional trademarks creates barriers to access these important drugs. Drugs like these, in addition to enjoying patent protection, add another layer by way of trade dress protection. Monopoly over colour (or combinations) would mean that patients may be reluctant to switch to equally effective and cheaper alternatives. Lupin had argued that the colour coding had been put forth in an innovative manner and that the positioning of the colour coding is the “brainchild” of the applicant and gives an unique impression. Asthma treatment via inhalers are also recognised by different colour codes, therefore monopoly on a combination would convey a perception that generics which do not have the same colour coding as the inhaler they are using, may not be at par. This raises several questions. Can colour/colour combination be owned entirely? Can monopoly over a colour may become an issue of anti-competitiveness in the future?
6. A Chance to Interpret Section 3(b) of the Patent Act in PhilipMorris vs. Controller of Patents
On July 4, a single judge bench of the Delhi High Court passed an order in Phillip Morris Products SA v. Assistant Controller Of Patents And Design admitting an appeal against the Controller’s decision rejecting a patent application for “aerosol generating article with multi material susceptor” and directed similar appeals to be clubbed together. Even though the Controller’s order is being challenged regarding grounds of inventive step, the rejection under Section 3(b) gains importance. This appeal allows the Court to clarify the jurisprudence surrounding Section 3(b) as it is unclear how the section itself is being applied by the Patent Office (for some examples of how it is being applied, see here, here and here). Interestingly, the applicant had also argued that the rejection violated Article 4quater of the Paris Convention and Article 27 of TRIPS. At the same time, there exists the contention that Article 4quater has to be read narrowly and hence does not bar an omnibus ban from being cited as a ground for refusing the grant of a Patent, and finally, the legislation banning e-cigarettes might be sufficient to fulfil the requirement under Article 27 (see here).
7. Finding on Section 3(k) in the two Blackberry Cases
The judgement in both the Blackberry cases, issued on August 30, are one of the first instances wherein the Court had tackled the scope of “algorithm” and Section 3(k). Section 3(k) bars patenting of algorithms, mathematical methods, business methods and computer programme with a qualifier “per-se”. In the first case, the judgement concluded that the claims were directed towards a set of instructions and were pure algorithms. In the second case, the judgement concluded that there was some software implementation within the claims and hence the invention was not barred by Section 3(k). The judgements ignited significant discussions on the blog. Yogesh argued that both the orders can be reconciled and preserve legislative intent on having an absolute bar for algorithms, whereas Bharathwaj argued that the judgements in both Blackberry 1 and 2 are following the logic laid out in Ericsson, wherein the judgement had drawn a distinction between an invention incorporating an algorithm and an invention directed towards an algorithm. The judgment proceeded to rule that the former would be patentable if it enhances the functionality of the system or enhances the functionality of the hardware. Bharathwaj has argued that the distinction itself is moot and has paved the way for treating all categories (mathematical methods, computer programme, business method and algorithms) in Section 3(k) as facing only a qualified bar not an absolute bar as can be ascertained from a bare reading of Section 3(k). The Blackberry judgments he argues takes this logic forward for algorithms and has devised a specific test for algorithms. Finally he also argues that distinction between “algorithms” and “computer programme” is not something that can be easily drawn considering the nature of claim language, specifications drafting and due to the subject matter in question.
8. A Followup on Lenacapavir: Gilead enters into Voluntary Licensing Agreements in 120 LMICs
On October 2, Gilead signed “Royalty-Free Voluntary Licensing Agreements” (VLAs) with six generic pharmaceutical manufacturers to produce and sell generic versions of Lenacapavir, which prevents HIV, in 120 high-incidence, resource-limited countries, primarily low- and lower-middle-income nations. The pharma manufacturers are —Dr. Reddy’s Laboratories, Emcure, Eva Pharma, Ferozsons Laboratories, Hetero, and Mylan— The majority of nations with high incidence and HIV rates are included within the VLA framework with the exception of Brazil. Interestingly, in India, the patent application for Lenacapavir faces multiple pre-grant oppositions.
9. Madras Samsung Trade Union Issue
In October, we also saw a unique dispute concerning interaction of labour laws with trademark laws. In October, the Madras High Court allowed an impleading petition by Samsung India who was opposing an application to register a trade union by its workers. Samsung’s opposition stems from the proposed name of the trade union i.e. “Samsung India Thozhilalar Sangham” (Thozhilalar Sangham means “Labour Union” in Tamil) and its concern that using the same may impact its reputation. Through this order Samsung became a party to the dispute between the Labour Commissioner who was delaying the registration of the Trade Union. Recently, in December, the Court directed the Commissioner to expedite the resolution in the case.
9. Patent Office Rejects Dolutegravir Application, Paving Way for Affordable HIV Drugs
The Patent Office rejected the anti HIV drug Dolutegravir’s secondary patent application for lacking inventive steps and therapeutic efficacy in an order dated October 3. The applicant’s claim that specific substituents in Dolutegravir (DTG) and Cabotegravir (CTG) enhanced HIV integrase activity was unsubstantiated and prior arts showed similar or even better activity without these substituents. Likewise, the applicant did not show sufficient therapeutic efficacy, as explained in the Novartis case, over the primary Patent that the applicant filed.
The order was passed by Dy. Controller of Patents & Designs Dr. D Usha Rao.
Transparency and access to information within the IP sphere continues to face roadblocks. The Central Information Commission (CIC) in Dipak Ranjan Mukherjee v. Ministry of Commerce & Industry dismissed a second appeal on the CPIO’s rejection of a RTI application seeking information on the Indian Performance Rights Society’s (IPRS) compliance with the Copyright Act. The IPRS is a copyright society responsible for licensing and managing rights on behalf of music composers, publishers, and authors. Mukherjee had argued that the information sought involved public interest. However, the CIC noted that the information sought involved sensitive financial and operational data of a private entity, which is protected by Section 8 (1) (j) of the RTI Act. The CIC also rejected information on the Dangey Commission Report (set up to investigate re-registration of IPRS). On this, the CIC held that since the report was not tabled before the parliament or legislature, it is not a public document. The CIC order undermines the objectives of the RTI Act by its interpretation, therefore blocking access to key information on government initiated inquiries such as the Dangey Commission.
E) Other Notable Developments
1. On application of extraordinary writ jurisdictions of the High Court on the orders passed by the Indian Patent Office, the Madras and Delhi High Courts passed two important orders this year. On January 3, the Madras High Court in University Health Network vs. Adiuvo Diagnostics Private Limited and Anr held that the High Court where the cause of action has arisen can hear writ petitions against orders of the Patent Office. The Delhi High Court in Rich Products Corporation vs. The Controller of Patents clarified that under extraordinary writ jurisdiction (Article 226) a High Court can intervene against the Controller’s decision rejecting a pre grant opposition, so long there is a “jurisdictional or manifest error” with the Controller’s finding. Interested readers can read Praharsh’s post on this order.
2. Delhi High Court in Allied Blenders & Distillers (P) Ltd. v. Hermes Distillery (P) Ltd. on January 15, passed an interim injunction order against Hermes Distilleries, holding the labels of “Officer’s Choice” and “Peace Maker” to be prima facie similar. Interestingly, the Court apart from comparing the competing labels, on consumer confusion the Court also took into consideration the differing stratas of consumers and noted that confusion may further be aggravated due to the positioning of the bottles next to each other in dimly lit bars. Tejaswini wrote on this order.
3. On January 16, the Delhi High Court in Saga Musica Private Limited vs Roger David and Ors. enforced a negative covenant in the contract between a Music label and rapper Bohemia restraining the defendant from engaging with third parties for performances or song released by the label, with whom Bohemia signed an exclusivity contract. The Court ruled that while specific performance of personal services is usually not granted, injunctions for negative covenants are enforceable.
4. On February 6, the Delhi High Court granted an ex-parte ad interim injunction in Astrazeneca Ab & Anr vs Azista Industries Pvt Ltd & Ors, restraining the import and sale of generic version of the plaintiff’s patented drug Osimertinib from Bhutan.
5. On February 7, the Delhi High Court in The Commissioner Of Income Tax – International Taxation -3 v. Relx Inc ruled that subscription fees of the legal database LexisNexis neither means transfer of copyright nor do they include a transfer of a right to apply technology and other related aspects, as envisaged in Article 12(4)(b) of the India US Double Taxation Avoidance Agreement.
6. Can a third party publish guidebooks on syllabi approved by the state government? Or will it amount to copyright infringement of the State’s publishers? Dealing with these questions, the Andhra Pradesh High Court passed an order in Addala Sitamahalakshmi vs State Of Andhra Pradesh on February 21. The Court held that subjects like mathematics and science are a ‘matter of fact and laws of nature’, overlooking the Delhi High Court’s finding on the doctrine of merger in the Narendra Publishing House case.
7. In UPL Limited v. Registrar & Anr, the Delhi High Court on February 22, passed an important clarification on Section 24(5) of the Plant Varieties Act. The Court held that the Division Bench’s determination on unconstitutionality of the section, in Prabhat Agri Biotech Ltd. And Anr. vs Registrar Of Plant Varieties, will have no binding effect during the subsequent stay ordered by the Supreme Court. Section 24(5) gives sweeping powers to the Registrar to act against any third party in the interim period between receiving an application by the applicant and the Authority’s final decision. See Vishno’s detailed post on the case.
8. The Madras High Court in Dr. Vandana Parvez vs The Controller of Patents held that the Patent Office cannot cite old withdrawn applications as prior arts to reject a patent application. The order was passed on February 23. See Tejaswini’s incisive take on the case.
9. On March 1, the Supreme Court issued notice in a special leave to appeal against the Delhi High Court’s decision in Telefonaktiebolaget LM Ericsson (PUBL) vs. Competition Commission of India and Anr. The apex court will decide upon whether the provisions of Patent Act would prevail over the Competition Act in cases alleging anti competitive behaviour or abuse of dominant position. The Delhi High Court had previously held that the Patents Act will prevail over the Competition Act in such cases. Yogesh wrote a tidbit on this development.
10. On April 5, the Delhi High Court in the Bhaktivedanta Book Trust India vs Www[dot]Friendwithbooks[dot]Co ruled that ISKCON Founder-Acharya Srila Prabhupada’s assignment of copyright to the Bhaktivedanta Book Trust was valid, rejecting the argument that his renunciation as a sanyasi extinguished his copyright ownership.
11. On April 15, the Delhi High Court in Hershey’s v. Atul Jalan clarified that the defence of first sale doctrine will not operate in cases where the reseller has altered the quality of product (like by changing expiry dates) as it will lead to confusion about source and quality of the goods.
12. On May 8, the Delhi High Court in Glaxo Group Limited and Others vs Rajiv Mukul and Anr., opined that apart from enforcing the settlement worked out from the preceding decree, the Court can also examine further infringements that might have arisen during execution.
13. Madras High Court on July 5 in Kyorin Pharmaceutical Co v. Assistant Controller Of Patents, held that a patent for a product cannot be rejected for lacking inventive step when a patent has already been granted to the involved process earlier. Tejaswini wrote a post on the case.
14. In two connected matters (orders in both passed on July 12)- Phonographic Performance Limited vs. Al-Hamd Tradenation and Al-Hamd Tradenation vs. Phonographic Performance Limited, the Delhi High Court clarified that a pending application for compulsory license will not be a defense against the allegedly infringing activities. Tejaswini wrote on these orders.
15. 13 years after filing the suit, Burger King, a global fast food chain, got an unfavourable order by District Judge, Pune on 16th July where the Court held that the defendants, proprietors of the namesake Pune based eatery were prior users of the mark. The Court noted that Burger King argued transborder and extensive reputation of its mark in India but held that it was not able to establish the same by filing relevant evidence. Later in December, the Pune District Judge Order was temporarily stayed by the Bombay High Court as an appeal is pending before the Bombay High Court.
16. On July 30, the Delhi High Court in Star Scientific Limited v the Controller of Patents and Design held that non-appearance of the applicant in a scheduled hearing will not automatically result in the abandonment of the patent application. It was clarified by the Court that the Controller should have considered the evidence on record and non-appearance of the applicant alone will not deem the application as abandoned, unless it was clear from the party’s explicit actions. Interested readers can read Aditi’s post on the order.
17. The Delhi High Court on August 14 in Neela Film Productions Private Limited vs Taarakmehtakaooltahchashmah[dot]Com & others has granted an interim injunction to the makers of sitcom “Taarak Mehta Ka Ooltah Chashmah” against inter alia infringement of their character’s personality rights. This arguably marked a significant shift in the approach of the Indian Courts on personality rights.
18. The Principal Scientific Adviser to the Government along with Indian Institute of Corporate Affairs released a report on expenses in R&D by the top 1000 listed companies in India. The report was released in September 2024. The Report notes that there is a cumulative upward trend in the amount spent on R&D between 2021 to 2023 with INR 56,982.64 Crores spent in FY 2021-22 and INR 66,732.87 spent in FY 2022-23.
19. On September 9, the Telangana High Court in Kohinoor Seed Fields India Pvt. Ltd. vs. Veda Seed Sciences Pvt. Ltd., held that trademark infringement cases warrants urgent intervention and thus the requirement of pre-institution mediation under the Commercial Courts Act, 2015 can be exempted.
20. The World Intellectual Property Rights Organization in November published the 2024 IP Indicators focusing on trends in global IP filing and administration. India’s patent numbers were a highlight in the report with the patent office processing 93,401 applications and granting a patent against 76,053 applications in 2023. The report also stated that in India first office action is taken 10.6 months after receiving the application. The data throws light on the quantity versus quality debate vis-a-vis patent grants in India in context of several high court orders criticising the office’s order on different occasions.
21. The Department of Legal Affairs in November circulated a draft bill amending the Commercial Courts Act, 2015 and invited public comments on the same. Key proposed amendments include establishment of dedicated Commercial Courts, disposal of application for injunction within 90 days, inclusion of video conference facilities, reduction of timeline with respect to filing of written statements after 30 days, mandatory pre institution mediation even after an interim relief, and inclusion of expert witnesses by the parties, amongst others.
22. On December 11, the Orissa High Court in Binaya Kumar Naik vs Sanjay Kumar Naik held that disputes pertaining to copyright infringement allegations against one person are arbitrable.
23. The Union Cabinet, on November 25, approved the One Nation One Subscription (ONOS) that aims at providing free access to scholarly works to students, faculty members, researchers, and scientists. The ONOS scheme will bring on board 30 international publishers and nearly 13,000 e-journals published by these publishers. The government is yet to provide details of the terms of negotiations and the list of participants in the negotiations.
24. In Oppo v. Interdigital the Delhi High Court passed three notable orders. A Single Bench on May 31 held that the defendant’s (Oppo’s) third parties agreement will not be relevant to determine FRANDliness of the rates offered. Later, in September 19, a Single Judge Bench ruled that in-house employees of the defendants could be part of the Confidentiality Club as it was essential to determine whether Oppo were unwilling licensees. A Division Bench differed from the impugned Single Judge order from February that had rejected the defendant’s offer for a guarantee from an Indian bank. The Division Bench on May 31 clarified that pro-term deposits can take the form of Bank guarantees and stated that they should not be treated as punitive measures.
25. On July 4, the Delhi High Court admitted an appeal against the Controller’s decision rejecting a patent application in Phillip Morris Products SA v. Assistant Controller Of Patents And Design. The case arguably can set a precedent on interpretation of Section 3(i), as discussed by Tejaswini and Bharathwaj.
And with that we end our round-up for this year! Do let us know in the comments below what other major IP developments we’ve missed on adding here. And see you in the year ahead! Happy 2025!