Article

Geographical Indications - Madhya Pradesh High Court elucidates registered proprietor’s rights

By Harshita Agarwal and Vindhya S Mani

The first article in this issue of IPR Amicus covers a recent decision of the Madhya Pradesh High Court which has held that a suit for infringement of Geographical Indication tags is maintainable by the Registered Proprietor of the GI tag, even if the Authorised User of the same GI tag is not impleaded as a party. The article in this regard elaborately discusses the facts of the dispute, contentions raised by the parties, and the findings of the Court. The authors note that the decision reaffirms that Non-Joinder/Joinder of necessary parties cannot be devised as a ground for rejection or return of plaint, and therefore, cannot lead to immediate rejection of the plaint. According to them, this judgment is significant as it provides a purposive interpretation of Section 21(1) of the GI Act, given India’s obligations under the TRIPS Agreement.

The vigour that Form-3 carries - Delhi High Court imposes costs for material suppression and misrepresentation of facts

By Vindhya S Mani and Devesh Aswal

The second article in this issue of the newsletter elaborately discusses a decision of the Single Judge of the Delhi High Court, imposing costs of INR 5 lakh on the Plaintiff for having suppressed material facts by way of failing to report that corresponding foreign patents of the suit patent had been invalidated/refused in several jurisdictions, including China, Japan, New Zealand, USA, Europe and Brazil. The authors note that the decision referred to Rule 3 of the High Court of Delhi Rules Governing Patent Suits, 2022 and held that it is mandatory for a plaint to include details of corresponding foreign patent applications, as well as information pertaining to any orders passed by a Court or Tribunal concerning the same or substantially similar invention.

Statute Update

• Patents - New Rules proposed for filing and adjudication of complaint regarding contravention of Section 120, 122 or 123

Ratio decidendi

• Patents - Territorial jurisdiction of High Court - Location of ‘appropriate patent office’ when not material - Madras High Court
• Patents - Date of assignment and date of declaration relating thereto are distinct - Madras High Court
• Trademarks - Use of trademarks as keywords in display of ads by search engine is not infringement - Delhi High Court
• Plant Variety Protection - Protection not to be revoked when applicant’s otherwise eligibility is not impacted - Incorrect mention of date of first sale is not determinative factor - Delhi High Court
• Geographical Indications - Equal rights to sue are available with Registered Proprietor and Authorised User - ‘And’ in Section 21 is to be read as ‘or’ - Madhya Pradesh High Court

News Nuggets

• Patents - ‘Business method’ under Section 3(k) - Invention deploying hardware, software and firmware for data privacy and protection is not business method
• Patents - ‘Known substance’ must be known to public on priority date of claimed invention, to restrict claim under Section 3(d)
• Trademarks - Service of documents by Registry on e-mail address of agent as reflected in Form TM-M is good
• Trademark application when cannot be rejected at pre-advertisement stage
• Royal Enfield declared a well-known mark in motorcycle industry - Both Registry and Court have concurrent powers to grant such recognition
• ‘N’ shaded logo of New Balance Athletics declared well-known mark
• IP suits - Advance service of suit papers on the Defendant is mandatory, except in certain situations
• Refund of Court Fees in case of settlement of dispute without ADR mechanism - Question on quantum of refund referred to Division Bench of Delhi High Court