IPR Amicus: April 2020

Article

No Trade Secret protection over patented know-how

By Aditya Kaushik

A Single Judge of the Delhi High Court recently examined whether trade secret protection can be granted to know-how with respect to a particular invention that has been patented outside India. The Court held that the Defendants cannot be said to be committing passing off with respect to the know-how of the Plaintiff no.1 passed to the Defendants since know-how/trade secret/confidential information is not a ‘property’ and no relief in rem can be claimed with respect to it. It was also held that such know-how of the Plaintiffs with respect to a formulation could not be protected as a Trade Secret since the same was already in the public domain as a patent could not have been granted without disclosure of the so called ‘know-how’. According to the author of the article in this issue of IPR Amicus, this case also shows that information/know-how associated with a patented invention automatically enters the public domain on patent being granted and post its expiry can be used by all and therefore, cannot be termed as confidential...

Ratio decidendi

  • Trademarks - “DMW” visually and phonetically resembles “BMW” – Difference in products manufactured, immaterial – Delhi High Court
  • Amendment to plaint – Jurisdiction of Joint Registrar and maintainability of appeal before Commercial Appellate Court – Delhi High Court
  • Infringement of mark ‘ISKCON’ by using the term ‘formerly known as Iskcon…’ – Bombay High Court
  • Trademarks – Prior use, effect of not voluminous sales; Descriptive nature of mark ‘No Turn’ – Delhi High Court

News Nuggets

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  • Revocation of trademark for non-use – Proprietor can seek compensation for injury during the period of non-use
  • EDREAM-11 is near identity to DREAM-11; Summary disposal of suit in uncontested suit
  • Copyright agreement executed by minor and without any period of validity
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