Some important decisions passed by Indian Court on IPR matters

PATENTS:

  • Mere Addition / Alteration To Existing Device Not Patentable

    Polar Industries Ltd. Vs. Jai Engineering Co. Ltd. 1991 IPLR 150

    Indian Patent No. 155307 relating to split type lower socket for use in ceiling fans for clamping the shaft of motor of ceiling fan to lower end of a rod, the upper end being fixed to a hook in the ceiling.

    Suit for infringement of patent was filed. The defendant - counter claimed for revocation alleging that the subject matter was obvious as clamping rods for ceiling fans was well known and the modification in the socket was a workshop improvement.

    Held : The fact that Controller has granted a patent does not give rise to presumption of validity. For improvement to be patentable it was not enough to incorporate what was already known with minor changes, components or collection of components or things.

    Patent ordered to be revoked.

  • On Sufficiency Of Description

    Raj Prakash Vs. Mangal Ram Chowdhury, AIR 1978 DEL 1

    The complete specification must describe "an embodiment" of the invention claimed and the description must be sufficient to enable those in the industry to carry it out.

  • On Secret Prior Use On Commercial Scale

    Ganandra Nath Banerjee Vs. Dhanpal Das Gupta, AIR 1945 Oudh 6

    Lallubhai Chakabhai Jariwala Vs. Samaldas Shankalchand Shah, AIR 1934 BOM 407

    Secret prior use on a commercial scale before the date of filing of an application for patent is sufficient to invalidate the patent on ground of prior user.

  • On Infringement Of Patent

    Lallubhai Chakabhai Vs, Chimanlal Churilal, AIR 1936 BOM 99

    If the infringer takes the substance of the claimed invention and not in totality the same still constitute infringement of the patent. Slight variation here and there may be immaterial. The court has to see whether what is done takes from the patentee the substance of his invention.

TRADEMARKS:

  • On Deceptively Similar Marks
 In Mahindra Vs. Godrej, 1979 IPLR, the mark Goldej was found deceptively similar to reputed mark Godrej for padlocks and hence the mark Goldej, although, registered was ordered to be expunged from the register.
  • On Passing Off and Transborder Reputation
 Scotch Whisky :

1999 PCT (19) 493 Khoday Distillers Ltd. (Appellants) Vs. The Scotch Whisky Association (Respondent),in an appeal against an order for rectification of the register, the Madras High Court, has held that Registered Trademark PETER SCOT of the appellants ,who were manufacturers of whisky in India ,although registered in India was likely to cause deception in confusion by reason of use of the word SCOT which so nearly resembles SCOTT indicating whisky made in Scotland. The appellant's product which is of a non-scottish origin can not have the trademark PETER SCOT. Order for rectification and removal of the mark PETER SCOT from the Register confirmed by the appeal court.

Importantly, therefore the above decision goes to show that wrongful use of transborder reputation of mark and geographical indication in trademarks are discouraged by the Courts in India and relief in case of such unlawful use trademarks can be availed in India.