Article

A ray of hope: Delhi High Court allows amending method claims to product claims

By Swati Upadhyay and Dr. Prosenjit Chattopadhyay

The article in this issue of IPR Amicus discusses a recent landmark Judgement passed by the Delhi High Court in the matter of Allergan Inc v. The Controller of Patents. With this judgement, the Court has allowed the amendments made by the Appellant for converting the method of treatment claims to product claims. Capturing the facts of the case, the appeal proceedings, and the decision including the essence of the order, the authors conclude that the present order will serve to be a significant milestone in the history of patent prosecution in India. They observe that the present decision and the one earlier decided in 2022 have relied on the Ayyangar Committee report and stated that the intention of the report was to allow wider permissibility in claim amendments before the grant. According to the authors, the decision will open gates for several aspiring applicants who wish to obtain a patent in India for their exceptional and important inventions but are barred by the fences of Section 59 of the Patents Act, 1970. They also state that it is important that the scope of the amendments is comprehended within the subject matter as disclosed in the as-filed specification.

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 - ‘NOW’ family of marks - Confusion with use of VNOW for similar services - Delhi High Court
• Trademarks - ‘NOVAEGIS’ is phonetically and visually similar to ‘NOVARTIS’ - Delhi High Court
• Trademarks - Rigours of Section 11(5) applicable even at stage of cancellation of registration - Delhi High Court
• Trademarks - ‘FAB!O’, used for vanilla cream filled chocolate biscuits, has deceptively similar trade dress and is phonetically similar to mark ‘OREO’ - Delhi High Court

News Nuggets

• Designs - Counter claim seeking revocation of suit design can be filed before High Court
• Trademarks - Distinctiveness of the word mark ‘Jain Shikanji’
• Trademarks - No interim protection to ‘Campus’ against use of ‘Camps’
• Trademarks - Deemed abandonment of opposition to registration of trademark if evidence not submitted within 3 months of receipt of counter statement
• Designs - Originality of suit design must be examined vis-à-vis date of its registration