ASWAL ASSOCIATES- Intellectual Property Law firm India

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...

In a significant ruling on patent litigation procedure, Justice A.K. Pathak of the Delhi High Court, in Glaverbel S.A. vs. Dave Rose & Ors. , rejected an interlocutory application seeking to read into the present suit an amendment to a patent claim that had been allowed in a separate, related suit—without the plaintiff amending the pleadings in the present proceeding. The Court further relied on a certified copy obtained from the Patent Office, which confirmed that the amendment in question had not, in fact, been reflected or recorded in the official patent records. Background The plaintiff, vide Interlocutory Application No. 12535/2011 (filed under Section 151 of the Code of Civil Procedure, 1908), sought to amend Independent Claim 1 of the patent in suit in CS(OS) No. 594/2007, on the basis that an identical amendment had already been allowed in a related but separate suit, CS(OS) No. 593/2007. The claim as originally granted under Patent No. 190380 read as follows: "A M...

Minimum Legal Age for Purchase The minimum legal age for the purchase and consumption of liquor in India is not uniform across the country, being a subject falling within the legislative competence of individual states. Depending on the state, this minimum age ranges from 18 years to as high as 25 years, reflecting the diverse socio-cultural and policy considerations that inform alcohol regulation at the state level. Restrictions on Advertising Through Television Indian law imposes significant restrictions on the advertising of alcoholic beverages. With effect from September 8, 2008, the Cable Television Networks (Regulation) Amendment Rules imposed a complete prohibition on the advertisement of cigarettes and alcoholic beverages through television broadcasts in India. Advertising Through Outdoor Media While television advertising remains entirely prohibited, certain states permit advertising of alcoholic beverages through outdoor media such as billboards and hoardings, albeit sub...

A writ petition was filed before the Delhi High Court by an aggrieved company, Haldiram, seeking inspection of certain trademark prosecution and opposition files pertaining to its own applications and proceedings before the Trade Marks Registry. In the course of the proceedings, several other parties—similarly unable to access their respective files—applied for and were granted impleadment, joining the petitioner in seeking directions from the Court. Registry's Inability to Explain the Missing Files Despite repeated queries from the Court, the Trade Marks Registry was unable to furnish any convincing explanation for its failure to produce the files sought for inspection. In view of this, the Court directed that an inquiry be conducted by the Secretary of the Department of Industrial Policy and Promotion (DIPP), under whose administrative supervision and control the Patent, Trade Marks, Design, and Geographical Indications offices function. The DIPP, in turn, operates under the Mi...

Samsung India Electronics Pvt. Ltd., the Indian arm of Samsung Electronics Co. Ltd., has challenged the constitutionality of India's customs regulations governing the import of goods suspected of infringing intellectual property rights, by filing a writ petition before the Delhi High Court. Samsung India was aggrieved by the action of the Indian Customs Department in withholding clearance of its imported dual-SIM-card mobile phones, pursuant to an application filed by a patentee claiming rights over similar technology with the customs office. Specifically, Samsung India challenged Customs Notification No. 47/2007-Customs (N.T.), dated May 8, 2007—titled the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 —read together with Customs Circular No. 41/2007, dated October 29, 2007, titled Instructions for Implementation of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 , issued by the Central Board of Excise and Customs. Under these pro...