In review: key recent IP developments and trends in India

All questions

Recent developments

i Levi Strauss and Co v. Imperial Online Services Private Limited³⁴

In a landmark judgment, a pocket stitch design, popularly known as the Arcuate stitching design, owned by the well-known denim jeans manufacturer Levi Strauss & Co (Levi Strauss), was recognised as a well-known trademark by the Delhi High Court.

Levi Strauss filed a civil suit against Imperial Online Services Private Limited (IOSPL) on the ground that IOSPL was, without authorisation, selling denim jeans whose pockets bore a design identical to the Arcuate stitching design mark. IOSPL was selling jeans with the infringing pocket stitch designs through its own website and through various other e-commerce websites. The Delhi High Court issued an injunction against IOSPL. Pertinently, the Court recognised that the Arcuate stitching design mark has become well known owing to long, continuous and extensive use on denim jeans, pants and trousers. This order of the Delhi High Court is seminal because this is the first time the coveted recognition of a well-known trademark was granted to a non-traditional mark, hopefully paving the way for other such marks.

ii Sun Pharmaceuticals v. Hetero Healthcare Limited³⁵

The Delhi High Court, in an appeal filed by Sun Pharmaceutical Laboratories Ltd (Sun Pharma) against a first instance court's order, which had rejected Sun Pharma's motion for an interim injunction seeking to restrain Hetero Healthcare Ltd (Hetero) from using the mark 'LETERO' in respect of medicinal and pharmaceutical products, held that international non-proprietary names (INNs) cannot be exclusively used as trademarks to the exclusion of others. Sun Pharma, in the instant appeal, had approached the Delhi High Court against the impugned order of the court of original jurisdiction, alleging deceptive similarity between Hetero's mark LETERO and Sun Pharma's registered mark LETROZ, used by Sun Pharma on its generic drugs meant for treatment of breast cancer containing an active ingredient, Letrozole.

The Delhi High Court, noting that the marks of both the parties incorporated the first five letters of the INN, LETROZOLE (present as active ingredient in the products of both the parties), held that Sun Pharma could not be allowed to exclusively use the INN for its products as no monopoly can be claimed over a part of the name of the salt that formed the principal ingredient of the drug in question. The judgment is an authority on registrability of marks that have been derived from INNs or other similar pharmaceutical ingredients.

iii New Balance Athletics Inc. v. NBStores India³⁶

In the present case, the Delhi High Court granted well-known shoe manufacturer, New Balance, an ex parte ad interim injunction against various unknown persons who were operating websites whose URLs contained New Balance's 'NEW BALANCE' and 'NB' marks. These URLs resolved to active sites whose interface was nearly identical to New Balance's website, and on which New Balance's marks were being used without authorisation. The Court, on the basis of New Balance's arguments, and taking into account the fraudulent nature of the websites, granted a dynamic injunction in New Balance's favour. This is an important decision as it sets a precedent for tackling digital piracy in India and enables IP rights holders to take appropriate action against rogue websites and mirror websites.

iv Alpha Vector v. Sach Industries³⁷

The Delhi High Court, in this matter, reaffirmed the settled position in law that numerals can be afforded trademark protection if it can be shown that such numerals have acquired distinctiveness owing to extensive use. Alpha Vector filed a suit claiming protection in its numeral mark, 91, used for bicycles, against use of a deceptively similar mark 99, also for bicycles. The Court, considering Alpha Vector's use of the 91 mark, held that the 91 mark appeared to have acquired goodwill within a short period of time, which, in the Court's opinion, could be made out from the sales figures of Alpha Vector, and observed that, prima facie, interim protection ought to be granted to the plaintiff.

v Knitpro International v. The State of NCT of Delhi³⁸

The Supreme Court of India, in this case, held that copyright infringement is a cognisable and non-bailable offence, meaning thereby that any person who knowingly infringes or abets copyright infringement can be arrested without a warrant. The present case involved an appeal against an order of the Delhi High Court quashing a first-information report registered against the respondent on the ground of copyright infringement under the Copyright Act,³⁹ as well for cheating and dishonestly inducing delivery of property.⁴⁰ The Supreme Court, while conjointly reading the provisions of the Copyright Act as well as the Code of Criminal Procedure (CrPC), held that since the CrPC made offences punishable with imprisonment for three years or upwards cognisable and non-bailable, and since three years was the maximum imprisonment period provided for the offence under the Copyright Act, the resulting offence would also have to be cognisable and non-bailable.

vi Diageo Brands BV & Anr v. Alcobrew Distilleries India Pvt Ltd⁴¹

The Delhi High Court refused to grant an interim injunction in a case filed by Diageo alleging piracy of its registered 'Hipster Flask' design by the defendant:

The Court held that the plaintiff had failed to make out a prima facie case of obvious or fraudulent imitation (test of piracy of registered mark in India). The matter was hotly contested by both the parties, with the plaintiff claiming exclusivity and infringement as well as passing-off of the trade dress associated with the Hipster design, which, as per the plaintiff, acted as a source identifier of its products. The plaintiff also stated that the test of infringement in the case of design is a 'six to eight yards test' whereby the infringement is tested by holding up the plaintiff's and the defendant's products in each hand and comparing the two to check if it would be possible to differentiate between the two from a distance of six to eight yards. The defendant, on the other hand, disputed the plaintiff's contention on grounds of prior art and differences in the rival designs, and argued that infringement is tested when viewed from the perspective of an instructed eye. The Court delved into various design infringement precedents and held that the test of design infringement is to be viewed from the perspective of an instructed eye of an informed person. The Court, on the basis of the above-noted test, held the rival designs to be prima facie different and dismissed the interim injunction motion of the plaintiff. The present case has settled the test of determining infringement in the case of designs.

vii Philips Holding BV v. Jaiprakash Agarwal & Anr⁴²

The Delhi High Court, in a design infringement and passing-off suit, declined to grant an interim injunction to the plaintiff owing to the presence of similar prior registered designs. The plaintiff asserted that the novelty of its designs resided in the T-Shape and Plug and Play format of its electric bulbs. The Court held the design of the plaintiff's bulbs to be merely a trade-variant of already existing registered designs, and not capable of registration. The Court, regarding the plaintiff's plea of passing off, observed that not only did the plaintiff place nothing on record to substantiate a prima facie claim of infringement, but, as per the Court, it was also to be noted that the plaintiff had admitted that it is also the OEM of various lighting products, including the designs for several other lighting companies. The Court, thus, held that the design of the bulbs could not attribute a connection of the product to the plaintiff.

viii Avery Dennison v. Controller General of Patents, Designs and Trademark⁴³

The Delhi High Court held that mere simplicity of an invention cannot deter patent protection for the invention. The appeal was filed by Avery Dennison against an order of the Patents Office refusing a patent application on the ground that the creation, purpose and effect of the feature that was claimed as an inventive step by the inventor could be construed by a mere reading of the prior art document, and that this addition could, at best, only constitute a workshop improvement for a person skilled in the art. The Court discussed different tests to determine the existence of an inventive step and lack of obviousness and held that these tests cannot be applied in a straitjacketed manner. As per the Court, 'one of the sure tests in analyzing the existence of an inventive step would also be the time gap between the prior art document and the invention under consideration'. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages that no one had thought of for a long time, the court would tilt in favour of holding that the invention is not obvious.

ix FMC Corporation v. NATCO Pharma Ltd⁴⁴

A two-judge bench of the Delhi High Court, in this case, interpreted the applicability of the doctrine of equivalents to a process patent, and held that the doctrine of equivalents must be applied to each element of the process to determine patent infringement. The Court found no reason to interfere with the decision of the court of first instance in this matter and affirmed the original-side court's prima facie finding that on applying the doctrine of equivalents to the process involved in the defendant's (NATCO) allegedly infringing process patent on an element-to-element basis, NATCO's process could not be termed as a mere minor or insubstantial variation from the suit patent. The appeals court subscribed to the single judge's reasoning, who had observed in the impugned order that use of thionyl chloride by NATCO as a reagent as opposed to the use of sulfonyl chloride by FMC was a difference significant enough to take NATCO's process outside the ambit of being considered as equivalent to FMC's process. The appeal was, accordingly, dismissed.

x Nippon A&L v. Controller of Patents⁴⁵

The Delhi High Court, in this matter, held that amendments to claims or patent specifications shall not be rejected solely on account of the claims being converted from product by process claims to process only claims or method claims. Nippon A&L, which had filed an application seeking protection for a copolymer latex product obtained by the process of emulsion polymerisation, defining the scope of its claims to be for product by process in order to overcome the Indian Patent Office's objection that the claims in the original patent application were improperly drafted and the scope of whether protection was sought for a product or process was not clear, ultimately amended its product by process claims to process only claims. This amendment came to be rejected by the Indian Patent Office on the ground of exceeding the scope of the originally filed claims. The Court, while allowing the appeal, observed that the purport of the Patent Act makes it clear that amendments to claims are permissible so long as they only narrow the scope of the originally filed claims, and the invention under the amended claims or specification is restricted to the scope of the disclosures already made in the originally drafted claims or specification.

Trends and outlook

While the delay in establishing IP divisions at the various high courts following the abolition of the IPAB remain unresolved, the efficient functioning of the IP Division at the Delhi High Court and the resulting expeditious and voluminous disposal of IPAB matters as well as IP suits is a clear sign that times are looking bright for IP enforcement in India, and the situation is slated to become even better once IPDs in other states become functional.

Further, with the advent of the CCA and the strict timelines prescribed from the stage of pleadings to trial and final arguments, matters mostly are decreed within a 24 to 36-month time frame, which is a measure enacted by the central government to enhance confidence in commercial transactions and to improve the ease of doing business in India. Courts, in view of the strict statutory timelines under the CCA, also come down heavily on parties that fail to comply with the prescribed timelines, and impose heavy costs on the defaulting party.

All in all, the courts in India have adapted to technological changes and have stood up to the tests of the times. However, with the challenges posed by AI chatbots like Chat GPT, metaverse iterations, non-fungible tokens and cryptocurrency, it will be interesting to see how courts in India will continue to adapt to new technology and challenges to the IP paradigm posed by such evolution.