ASWAL ASSOCIATES- Intellectual Property Law firm India

Statutory Basis Section 33(1) of the Trade Marks Act, 1999 provides that where the proprietor of an earlier registered trademark has acquiesced for a continuous period of five years in the use of a later registered trademark, with knowledge of that use, the earlier proprietor loses the right either to seek invalidation of the later mark or to oppose its use in relation to the goods or services for which it has been so used — unless the later mark was registered in bad faith. The essential elements of the defense may be summarized as follows: (a) The later mark must be registered. (b) The earlier registered proprietor must have been aware of the use of the later registered mark for a continuous period of five years or more. (c) The subsequent applicant or registered proprietor must have used the mark continuously throughout that five-year period. (d) The later mark, once registered, cannot be cancelled unless its registration was applied for in bad faith. (e) Use of the later mar...

Summary The Delhi High Court delivered a landmark judgment affirming that holders of registered designs can file infringement suits against other registered proprietors, invoke common law passing off remedies even without explicit statutory provisions in the Designs Act, and pursue both remedies concurrently (though not in a single consolidated suit). This decision significantly strengthened legal protections for design proprietors by harmonizing statutory and common law remedies. Introduction The case of  Mohan Lal v. Sona Paint & Hardwares , adjudicated by the Delhi High Court on May 15, 2013, marks a significant development in the interpretation of the  Designs Act, 2000 . This judgment delves into the complexities surrounding the infringement of registered designs, the applicability of common law remedies such as passing off, and the procedural aspects of filing composite suits involving both statutory and common law claims. Parties Involved Plaintiffs: ...

Background Ericsson initiated patent infringement proceedings against Micromax Informatics Ltd. and Mercury Electronics Ltd., alleging infringement of patents relating to speech codec technology — the combined use of a speech coder and speech decoder to compress a caller's voice signal, transmit it as coded speech frames over a radio link, and decode it at the receiving end. A notable feature of this technology is discontinuous transmission: during periods when the speaker is inactive, no coded speech frames are sent; instead, the transmitter periodically sends speech parameters sufficient for the decoder to generate "comfort noise" in place of silence. According to Ericsson's own patent specifications, speech coders and decoders are conventionally built into radio transmitters and receivers respectively, working together to enable voice communication over a radio link. A mobile phone, in this framing, is simply a conventional radio communication device — a radi...

Novartis AG v. Union of India: The Battle Over Beta Crystalline Imatinib Mesylate Overview In a landmark departure from ordinary appellate procedure, the Supreme Court of India admitted and directly heard an appeal filed by Novartis AG against the order of the Intellectual Property Appellate Board (IPAB) — even though appeals from IPAB orders are ordinarily required to go first to the jurisdictional High Court. The IPAB had rejected Novartis's product patent claim over the beta crystalline form of Imatinib Mesylate, holding that it failed both the threshold test of "invention" under Sections 2(1)(j) and 2(1)(ja) of the Patents Act, 1970, and the separate test of patentability under Section 3(d). The Supreme Court dismissed Novartis's appeal and allowed the counter-appeals filed by two of the respondents, Natco Pharma Ltd. and the Cancer Patients Aid Association. Because the Court did not render a separate finding on these counter-appeals, it may reasonably be infer...

A Division Bench of the Delhi High Court has referred an important question to a Full Bench of the Court, calling into question the correctness of an earlier Division Bench ruling in Dabur India Ltd. vs. Amit Jain & Anr. (2009, Del.), which had held that the mere existence of a design in the publicly inspectable records of a foreign Registrar of Designs does not, by itself, amount to "prior publication" within the meaning of that expression under Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (the "Act"). Background: The Conflicting Precedents The Division Bench in Dabur India Ltd. had concurred with the earlier view of a Single Judge of the Calcutta High Court in Gopal Glass Works Ltd. vs. Assistant Controller of Patents & Designs (2006, Cal.), which held that mere publication of designs, specifications, drawings, or demonstrations by a foreign patent office would not, in itself, amount to "publication" sufficient to render an Indian-re...

The Bombay High Court has held that mere posting of an examination report or objection notice on the Trade Marks Registry's website does not amount to valid "communication" of such objection to the applicant, as mandated under Rule 38(4) of the Trade Marks Rules, 2002. The Court held that, at the highest, such posting can be treated as having communicated the objection only on the date on which the applicant actually notices it on the website. Consequently, where an applicant applies for a hearing within one month of acquiring such actual knowledge, the application cannot be deemed to have been abandoned for failure to seek a hearing under Rule 38(5). Brief Facts On October 1, 2010, the petitioner applied for registration of the mark "CMA" in Class 41. On March 30, 2011, the petitioner wrote to the Registry, noting that despite repeated inquiries, it had received no response regarding its application, and that this delay was preventing it from offering train...

The Division Bench of the Delhi High Court, in Union of India & Ors. vs. Malhotra Book Depot (LPA No. 564 of 2012), has upheld the judgment dated November 29, 2011, passed by a Single Judge of the Delhi High Court in W.P.(C) No. 7882/2010, directing the restoration and renewal of the trademark "MBD" (Class 16) in favor of the respondent, Malhotra Book Depot. The Division Bench, however, modified the direction to require the Registrar to first satisfy itself that the respondent is indeed the registered proprietor or successor-in-interest of the mark, and that no identical or similar marks have been registered by third parties during the intervening period. Brief Facts The predecessors of the respondent—Shri Ashok Kumar Malhotra and late Shri Balbir Singh, trading as M/s. Malhotra Book Depot (subsequently constituted as a partnership of Ms. Satish Bala Malhotra, Ms. Monica Malhotra Kandhari, and Ms. Sonica Malhotra Kandhari)—had applied for and secured registration of t...