ASWAL ASSOCIATES- Intellectual Property Law firm India

Acquiescence as a defense: Section 33 (1) of the Trademarks Act, 1999 provides that if the earlier Registered Proprietor has acquiesced for a continuous period of 5 years in the use of a registered trademark, being aware of that use, he is not entitled to either seek invalidation of such later mark or oppose its use in relation to goods or services in relation to which it has been so used, unless registration of such mark was applied in bad faith. The essential for defense of acquiescence shall be: (a)     The mark should be registered (b)    The earlier registered proprietor should be aware of use of such registered mark for a period of 5 years or more (c)     The subsequent Applicant/ registered proprietor has used such registered trademark for a continuous period of 5 years (d)    The subsequent mark if registered cannot be cancelled unless registration was applied in bad faith (e)     The subseque...

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: ...

Ericsson filed patent infringement litigation against Micromax Informatics Ltd. and Mercury Electronics Ltd. for infringing its patents. Essentially these patents relate to use of speech codec (combination of speech coder and speech decoder) for coding the voice signal (in a compressed form) from the caller end and transmitting it via a radio link as coded/ compressed speech frames to the receiver end where it is decoded. Typically in a discontinuous transmission no coded speech frames are send while speaker is inactive. Here transmitter at regular interval sends speech parameter suitable for generation of comfort noise in the decoder. Ericsson states in its patents that speech coders and decoders are conventionally provided in radio transmitters and radio receivers, respectively and cooperate to permit speech (voice) communications between a given transmitter and receiver over a radio link. A mobile phone is a conventional radio communication device comprising a Radio transmi...

Supreme Court of India while hearing the Appeal ( as a matter of exception this appeal was admitted and heard, though all appeal against Order of IPAB are to be heard by High Court first) preferred by Novartis AG against the order of Intellectual Property Appellate Tribunal (IPAB) rejected the product Patent rights for Beta Crystalline form of Imatinib Mesylate for failing in both test of invention (under Section 2(1)(j) & 2(1)(ja) as well as patentablity (under Section 3(d)). The Court consequently allowed the counter-appeal filed by two of the respondents i.e. Natco Pharma Ltd. and Cancer Patients Aid Association. There is no separate finding on the counter-appeals preferred by Natco Pharma Ltd. and Cancer Patients Aid Association therefore it can be assumed that Novartis AG still retains the process Patent rights for manufacturing Beta Crystalline form of Imatinib Mesylate.  It would be essential to go into the brief history of the Patent Appli...

A divisional Bench of Delhi High Court referred a revision to full bench of Delhi High Court, to consider as to whether an other Divisional Bench of this court in the case of Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (DEL) has correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000. The earlier Division Bench had concurred with the view of learned Single Judge of Calcutta High Court in the case of Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs 2006 (Cal.) where it was held that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation....