Article

Patentability of Selection Inventions – Analysis of recent Delhi High Court decisions

By Gursimran Narula and Vindhya S Mani

The article in this issue of IPR Amicus analyses two decisions of the Delhi High Court which have adjudicated patentability of the species patent with respect to the genus patent as part of infringement proceedings. The Court in one of the case specifically disapproved the existence of dichotomy between the terms ‘coverage’ and ‘disclosure’, and stated that when a product is covered in the genus patent, the specific disclosure of the same is immaterial and the patentee cannot claim the same product in the species patent. However, granting interim injunction to the patentee who sought to enforce their species patent, the Court in a different decision acknowledged the distinction between ‘coverage’ and ‘disclosure’ and clarified that to ‘disclose’ the species patent, the genus patent must teach a person skilled in the art ‘how to reach’ the species patent. According to the authors, with the constitution of the IP Division in the Madras High Court, it will be interesting to see how other High Courts in the country adjudicate patentability of selection inventions.

Do the trademarks provisions permit registrar to transfer pending petitions to IPD of the Court?

By Anoop Verma and R. Rajalakshmi

The second article in this issue of the newsletter discusses another interesting Delhi High Court decision where one of the questions that came up before the IPD, Delhi was whether the Trade Marks Registry can transfer pending rectification/cancellation petitions to the IPD of the respective Hon’ble High Court. The Court observed that while the Trade Marks Act, 1999, the Trade Marks Rules, 2017 and/or Rules of the Delhi High Court Intellectual Property Rights Division Rules, 2022 (‘IPD Rules’) do not categorically govern the powers of the court to direct the Registrar of Trademarks to transfer any pending matters to the court, as per Rule 26 of the IPD Rules, if the court thinks it is necessary to consolidate and hear together all the matters related to the same or related subject matter before the IPD, it may direct so. Observing that parties to a litigation are also involved in cross actions before the Trade Marks Registry, the authors believe that decision of the High Court of Delhi provides a clarification and resolution to such a fact scenario in order to do complete justice and ensure speedy disposal of cases.

Ratio decidendi

• Trademarks – Prior use – Date of registration and not use, when relevant – Delhi High Court
• Designs – Differences with prior art – Differences in utility of product also to be considered – Delhi High Court
• Patents – Subject matter is patentable if there is synergistic combination or a working interrelation which produces a new and improved result – Delhi High Court
• Standard Essential Patent owners can pray for interim and final injunctive relief – Four-fold test for admission of infringement, as laid down in Nokia case, not as per law – Delhi High Court
• Trademarks – Confusion in use of acronym ‘ICAI’ – Mark infringing if ‘initial interest confusion’ present – Delhi High Court

News Nuggets

• No abandonment of trademark under Section 21(2) in absence of evidence of notice of opposition being served on applicant
• Trademark rectification proceedings – Civil contractual rights can be examined
• Alternative remedy – Mere delay or expense cannot constitute justifiable ground for Court to entertain writ petition
• Trademarks – No deceptive similarity merely by having Sun in the backdrop
• ‘FECONTIN-F’ and ‘FEMICONTIN’ are not deceptively similar, either visually or phonetically