ASWAL ASSOCIATES- Intellectual Property Law firm India

Summary A five-judge bench of the Delhi High Court delivered a landmark judgment overruling the earlier three-judge bench decision in Mohan Lal v. Sona Paint & Hardwares, holding that plaintiffs can maintain composite suits combining design infringement and passing off claims against the same defendant. The Court clarified that when both causes of action arise from the same transaction and involve common questions of fact and law, they can be joined under Order II Rule 3 of the CPC to avoid multiplicity of proceedings and promote judicial efficiency. Introduction On December 14, 2018, a  five-judge bench of the Delhi High Court  delivered a significant judgment in  Carlsberg Breweries v. Som Distilleries and Breweries Ltd. , addressing the critical question of whether design infringement and passing off claims can be combined in a single composite suit. This ruling  effectively overruled  the earlier three-judge full bench decision in  Mohan Lal v...

The Trademark (Amendment) Rules, 2014 have been notified, revising the official government fees payable for trademark filings in India. With effect from August 1, 2014, the government fee for filing a trademark application has been increased from INR 3,500 to INR 4,000 per class—an increase of approximately 15%. A Pattern of Periodic Fee Revisions This is not the first such revision in recent years. The government fee had previously been increased in December 2010, when it rose from INR 2,500 to INR 3,500 per class. The latest amendment, therefore, marks the second increase within a four-year period, reflecting the Trademark Registry's ongoing efforts to align its fee structure with rising administrative and operational costs. Increase in Fee for Expedited Examination Alongside the increase in the standard filing fee, the government fee for expedited (express) examination of trademark applications has also been revised upward, from INR 17,500 to INR 20,000 per class. Expedited ...

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...