Amendment of claims in infringement Suit whether permissible without amending the plaint

In Re: Glaverbel S.A. vs Dave Rose & Ors., Justice A. K. Pathak, Delhi High Court rejects IA seeking amendment in claims as allowed in another suit without amending the present suit. The Court also relied on certified copy of Patent Office wherein the amendment sought in claim did not reflect.
Here the Plaintiff vide an interlocutory Application 12535/2011 (under Section 151 of CPC)sought the amendment in present suit (CS (OS) no. 594/2007 of independent claim 1 as allowed in CS (OS) no. 593/2007.
The originally allowed claim under Patent No. 190380 read as under
A Mirror with no copper layer comprising:
i) a vitreous substance,
ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,
iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and
iv) at least one paint layer covering said silver coating layer."
Plaintiff had filed CS(OS) No. 593/2007, against one Shri Anand Mahajan for permanent injunction praying therein that the defendant be restrained from infringing the Indian Patent No. 190380 of the plaintiff as also for rendition of accounts. In the said case, plaintiff also filed an application under Sections 57 and 58 of the Patents Act read with Section 151 CPC being IA No. 13519/2007 seeking amendment in the Claim No. 1. By way of amendment, plaintiff sought to insert "a sensitizing material, typically tin, and" at the beginning of clause (ii) of Claim No. 1. After the proposed amendment clause (ii) of Claim No. 1 reads as under:-
"(ii) a sensitizing material, typically tin, and at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"
A Single Judge of this Court vide order dated 10th September, 2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass Europe SA vs. Anand Mahajan and Ors. disposed of said application whereby allowed the aforementioned amendment. The operative portion of the order reads as under:-
"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention.

At best, even if the defendants' objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."
It was contended by Plaintiff that the amendment in claim no. 1, as allowed vide order dated 10th September, 2009 passed in CS (OS) No. 593/2007, is clarificatory in nature and does not alter the scope of invention. Claim nos. 9 and 10 of the same patent specifically mention about sensitization of the mirror by tin chloride. This fact was taken note of by the Single Judge while allowing the amendment. Clerical correction of claim no. 1 does not change the nature of the claim no. 1. Besides this, order of amendment is "in rem" and has attained finality and can be read in this case without amending the pleadings of this case. Correctness or incorrectness of the order dated 10th September, 2009 cannot be gone into in this case. Amended claim no. 1, in terms of order dated 10th September, 2009, can be read in all other proceedings without amending the pleadings in other cases. Defendants have understood the claim no. 1 as a copper free mirrors in which first step is sensitization with tin chloride. This is evident from the averments made in para nos. 17, 18 and 19 of the written statement. Defendants in their written statement, have taken a plea that a patent claim "sensitization by tin chloride" is not new, therefore, the patent is invalid. Defendants have also cited prior art like "Franz", "Shipley", "Orban" and "Buckwalter" in para 18 of the written statement and have stated that "sensitization by tin chloride" is an old concept. Thus, no formal amendment of pleading in respect of claim No.1 is required in this case. Defendants are not prejudiced in this case even if amended claim No.1, as contained in the order dated 10th September, 2005 is read in this case. It was further contended that the whole purpose of opposing the present application by the defendants is to seek de novo trial. In other words, defendants will seek time to file amended written statement and recall of the Plaintiff’s witnesses for further cross examination. This will not do any good to anyone except that final adjudication will get delayed. In nutshell, contention of plaintiff was that there is no need to amend the plaint. It was further contended that plaint is not required to be amended if not necessary. According to him existing pleadings are sufficient to indicate that defendant has understood the claim of plaintiff regarding sensitization by tin of the mirror manufactured by it. Subsequent event of amendment in claim No.1 can be taken note of in this case without amending the pleadings of this case.
The Defendant contended that the plaintiff is seeking amendment in claim no. 1 without amending the plaint, which is not permissible under the law. It was further contended that in the order dated 10th September, 2009 it has been categorically mentioned that the amendment does not attract the provisions of Sections 58 and 59 of the Patents Act; meaning thereby amendment in claim no. 1 was not allowed under the said provisions of Patents Act. Accordingly, amendment can be read only in CS(OS) No.593/2007 and not in other proceedings. Amendment in claim no. 1 permitted by the Court was not recorded in the Patent Office. Certified copy of the Patent Ex.PW1/3 has been issued by the Patent Office in the month of March, 2009, which does not contain amended claim no.1. This indicates that amendment was not allowed under Sections 58 and 59 of the Patents Act. Amendment could at best be read as an amendment of claim No.1 in that particular suit and not in patent records. It was further submitted that plaintiff has to amend claim no. 1 in this case and for the said purpose he has to file appropriate application under Order 6 Rule 17 CPC seeking amendment in claim no.1 which application is, otherwise, not permissible in this case as the trial has already commenced, inasmuch as, plaintiff's witnesses have already been cross- examined. The only contention acceptable under the law is that a plaint can be amended after the start of trial when the plaintiff had exercised due diligence and in spite of that he could not seek the amendment earlier. In the instance case, plaintiff was well aware of the order dated 10th September, 2009; whereas plaintiff's evidence was concluded in this case on 21st July, 2011, much thereafter. In any case even if such an amendment is permitted in the present suit the defendants have to respond to such amendment by filing amended written statement, inasmuch as, have to cross examine the Plaintiff’s witnesses on this point. It was further contended that the plaintiff cannot be allowed to bring on record the amended claim no. 1 in this case indirectly so as to prejudice the defendants. Under the Patents law a patent can be obtained either in a product and/or in a process. Claims Nos.1 to 8 in the suit reflect product patents; whereas claim Nos. 9 to 20 are the process patent. By adding tin in the product claim no. 1, the plaintiff is trying to expand its monopoly even in a product having layer of tin by way of such amendment, which is not permissible under the law.
After considering the contentions of both the parties, the Court was unable to persuade itself to accept the contention of the plaintiff that the amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, can be read in this case without amending the pleadings of this case. Court observed that it is well settled that a case is decided on the facts involved therein as are emerging from the pleadings duly proved by the evidence adduced in support thereof. No judicial notice of the facts emerging from the pleadings and the evidence led in some other case can be taken for deciding the controversy between the parties in a different case. It is the fact pleaded and the evidence led in that particular case alone which has to be considered. Judicial pronouncements can be referred to at the bar in support of a legal preposition but the facts involved therein cannot be read as the facts of such cases where such reports are referred. Subsequent events can be considered only if the same are brought on record by seeking necessary amendment in the pleadings and not by noticing the same from the facts emerging from the pleadings and the documents of other cases, which may have been referred to in the reports. Even though plaintiff is at liberty to refer and rely on the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 in support of law laid down therein but the fact remains that the amended claim no. 1 cannot be read in this case. Judgment has to be pronounced in this case on the pleadings and the evidence adduced i.e. either documentary or ocular, in this case. It appears that plaintiff was conscious of this fact and for this reason only plaintiff had expressed its desire to amend the plaint initially, as is evident from the perusal of order dated 5th February, 2010. However, subsequently, on 3rd May, 2010 Plaintiff made a statement that he does not intend to file any application for amendment. Consequently, issues were framed. Merely because amendment of the pleading would result in delay in disposal of the suit by itself cannot be made a ground to adopt a shortcut by reading the amended claim No.1 as permitted in CS (OS) No. 593/2007 in the present case, without amending the pleadings. Plaintiff cannot be permitted to achieve its objective of amending the claim no. 1 in this case indirectly.
If the matter is viewed from another angle then also the course adopted by the plaintiff cannot be permitted. Amendment in claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been recorded by the Patent Office in its record. Certified copy of patent, issued by the Patent Office after more than 6 months of the order dated 10th September, 2009, contains un-amended claim no.1. It is this certificate which has been placed on record in this case and has been proved. Plaint also contains un-amended claim. Evidence led by the parties, which is in consonance with the pleadings of the parties, alone can be read at the stage of final adjudication of the matter. There is no gain saying in reiterating that evidence led beyond the pleadings cannot be looked into. Accordingly, the amended claim no. 1 cannot be read in this case without plaintiff taking necessary steps to get the claim amended in this case as well.
For the foregoing reasons, the Court held that plaintiff though can refer the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 at the time of hearing but same cannot be permitted to be taken on record as a document so as to read the amended claim No.1, in this case. Amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, cannot be read as amended claim No.1 in this case. As regards permission to the plaintiff for placing on record certified copy of amended patent no. 190380 as and when received from the Patent Office, the same also cannot be granted at this stage. However, plaintiff is at liberty to file appropriate application as and when he receives the certified copy from the Patent Office.
Accordingly application was disposed of in the above terms. Therefore Along with I.A. No. 13631/2011 (u/Sec. 151 CPC) by Defendants) became infructuous and was disposed of as such.

Alcohol Advertising, packaging and Labelling requirements in India

Author: Sudhir Kumar

The minimum legal age to purchase liquor in India ranges from 18 years in some state to 25 years in others. Under Indian Law, there are restrictions on advertising of alcohol. With effect from September 8, 2008, the Cable Television Network (Regulation) Amendment Bill has completely prohibited cigarette and alcohol advertisements in India through television. Some states allow advertising through bill boards, hoarding etc. subject to many restrictions. Further another mode of liquor promotion in India is through surrogate advertising (brand name promotion) through advertising bottled waters, juices, soda etc. and promoting sports and other events. There is lot of hue and cry over surrogate advertising as major thrust in such advertising is on liquor brand promotion. The government controlled channels are very cautious while broadcasting any surrogate advertisement. The available mode of advertisement is through product placement in the liquor vends, bars and sign boards.

The latest avenue for advertisement for alcohol brands is Social Media i.e. facebook, twitter etc. that allow access to target consumer directly. These platforms are exploited for brand promotion though contests and other innovative promotional activities. No specific regulations are made to check social media yet.

Alcohol (whether manufactured locally, bottled or Imported) is subject to the labelling provisions under the Standards and Weight and Measures (Packaged Commodities) Rules, 1997.

The labelling declaration must include:

a) Name and address of the Manufacturer, Packer or Importer

b) Generic and common name of the packaged commodity (i.e. Whisky/ Rum/ Vodka/ Scotch/ Wine/ Beer)

c) Net quantity in terms of standard units of weights and measures (in millilitres and litres) when packed.

d) Month and year of manufacture

e) Maximum Retail Price (MRP)

As the excise and other applicable laws in respect of alcoholic goods differ from one state to other, printing of "MRP" is not mandatory provided that the retailers display the retail sale price of the package prominently in their premises.

In addition, the standards of Weights and Measures (National Standards) Rule of 1998 prescribe that the alcoholic strength be declared on the label as percentage of volume and stated as "xx % Vol".

A warning as to injurious effects of alcohol must be printed on every unit (bottle/ packet). In some States safety holograms certifying that due duties/fees has been paid and the liquor is of prescribed standard, as approved by Excise Commissioners are required to be printed on each unit.

Article Source: http://www.articlesbase.com/regulatory-compliance-articles/alcohol-advertising-packaging-and-labelling-requirements-in-india-5329872.html

About the Author

Author is practising Advocate, Registered Patent Agent and Trademark Attorney. Author is partner with IntellexIP Advocates and is member of Supreme Court Bar Association, Delhi High Court Bar Association, New Delhi Bar Association, Asian Patent Attorneys Association. Author can be reached at s.kumar@intellexip.com or www.intellexip.com

Compulsory license for patents in India

Industrial Design law and Practice India

As per Indian Designs Act, 2000, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principal of construction or anything which is in substance a mere mechanical device and does not include any trademark, property mark and copyright as defined under the Indian laws.

What Designs are Registrable
Only those designs that are new or original are subject matter of registration in India. Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. Further no copyright in the design shall vest in Applicant if more than 50 copies of the design has been manufactured commercially. A design is not registrable if it is not significantly distinguishable from known designs or combination of designs or if it comprises scandalous or obscene matter.

Design Applications in India
Design application in India can be classified under two categories depending upon their priority claim.
1. Ordinary design application without any priority
2. Conventional design application- has to be filed within 6 months from date of filing of conventional application

In case of conventional design application, certified copy of the priority document has to be filed within 3 months from the date of filing of application in India.

Design offices in India
There are four design office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the design office within whose territorial jurisdiction the agent/ attorney for applicant is located.

Design filing requirements in India

Following are the basic requirements for filing an ordinary design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.
Conventional Design filing in India
Following are the basic requirements for filing a conventional design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides
7. Details of priority, if any, including application number, date of filing and country of filing

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Design prosecution in India
Design prosecution in India involves following stages:
1. Filing of application & issuance of receipt of fee along with application number
2. Issuance of official acknowledgement
3. Issuance of Examination report with objections, if any ordinarily within 2-4 months of filing of application
4. Responding to Examination report within 6 months from date of filing of application in India which can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing
5. Hearing, if any
6. Acceptance of application
7. Issuance of Registration certificate

Term of Design Registration
The term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of another 5 years.

Renewal of designs
A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years

Rwanda and Qatar became PCT Contracting states, PCT to cover 144 countries

On May 31, 2011 Rwanda (RW) became the 144th PCT contracting state and PCT will enter into force on 31 august 2011. Earlier this month on May 3, 2011 Qatar (QA) became the 143rd PCT contracting state. PCT will enter into force on 3 August 2011. Thereafter, it would be possible to file pct application and designate any of 144 countries of choice for patent protection.

There was not a new contracting state in 2010, though there was reification for the Kingdom in Europe, the Netherlands Antilles and Aruba. The Netherlands Antilles ceased to exist on 10 October 2010. As from that date, the PCT continues to apply to Curaçao and Sint Maarten. The PCT also continues to apply to the islands of Bonaire, Sint Eustatius and Saba which, with effect from 10 October 2010, have become part of the territory of the Kingdom of the Netherlands in Europe.

Last time there were new contracting state introduced in 2009, when Peru (June 6, 2009) and Thailand (December 24, 2009) became the 141 and 142 contracting state respectively.

PH Kurian, the Controller General of Patents, Trademarks, Design India resigns

PH Kurian, IAS the Controller General of Patents, Trademarks, Design India has resigned last week from his post. Speculation is that he is returning back to Kerala Cadre and would be joining the Kerala Govt as principal Secretary.

He was responsbile for bringing about transparency and accountability in the Patent, trademark and Design Office.

The Department of Industrial Policy and Promotion (DIPP) has admitted on affidavit before Delhi High Court that TM Registry has lost whopping 44,000 files relating to trademarks

A writ was filed before the Delhi High Court by one aggrieved company (Haldiram) seeking inspection of certain trademark prosecution and opposition files. In the Course Petitioner was joined by several other parties who impleaded themselves. As TM Registry was not able to provide any convincing explanation for same the Court ordered an enquiry by the Secretary of the DIPP, under whose supervision and control the Patent, Trade Marks, Design and Geographical Indication of Goods offices comes (DIPP comes under the Ministry of Commerce, Government of India)

As per the affidavit filed before the Delhi High Court, DIPP stated that most of the files were misplaced when the Trade Marks Registry was decentralized from Mumbai to the other cities and files were moved from Mumbai to other offices. The Court was informed that a FIR had been filed with the police with respect of missing files sought by the petitioner for inspection and files would be reconstructed through existing records of the trademark, (i.e. TM journals/ electronic database).