This blog post summarizes four recent trademark cases from various High Courts across India, and provides important takeaways relating to trademarks. In one of the cases, the Karnataka High Court pointed out that a trademark infringement suit can be stayed if a rectification is pending against the same trademark, although it was filed by another party. In another suit, the Delhi High Court, allowed the Defendant in the suit to conduct business under a modified name during the pendency of the case. This arrangement was agreeable to the Plaintiff as well, and other cases.
Read more about The changing dynamics of Infringement, Stay of Suit and damages in Trademark CasesTag: BananaIP
Patent refusals: The need for clarity and details beyond mere objections.
The Delhi High Court recently highlighted the importance of clear and detailed reasoning in patent office rejections. In this case of Calm Water Therapeutics LLC’s patent application, the court found the initial rejection order by the patent office to be flawed as the revised claim was not considered and no detailed explanation was provided in the rejection. The court emphasized the need for the Patent Office to provide clear explanations and conduct thorough examinations before rejecting applications.
Read more about Patent refusals: The need for clarity and details beyond mere objections.Use of mark “NOVYA” for selling ‘Ghee’ amounts to passing off and infringement of the mark “NOVA”
Delhi High Court recently ruled in favour of Sterling Agro Industries, protecting their “NOVA” trademark for dairy products from a deceptively similar mark “NOVYA” used by ASR Trading Company. The Court noted the similarity in marks and packaging, the abandoned trademark application by ASR, and their its to prove otherwise, leading to a permanent injunction and penalty against the defendant.
Read more about Use of mark “NOVYA” for selling ‘Ghee’ amounts to passing off and infringement of the mark “NOVA”Objections regarding insufficiency of disclosure in patent applications must be clear and unambiguous
The Delhi High Court recently ruled that the Indian Patent Office (IPO) must clearly and unambiguously articulate objections to patent applications. This case involved Microsoft’s patent application for “Discovery of Secure Network Enclaves,” which was rejected by the IPO for lacking inventive step and violating disclosure requirements. The Court found the IPO’s objections to be ambiguous and procedurally irregular, thereby stressing on fair hearings and proper communication during the patent examination process.
Read more about Objections regarding insufficiency of disclosure in patent applications must be clear and unambiguousCourts Weigh on Inordinate Delay in Patent Orders and Scope of Claim Amendments
Delhi and Madras High Courts overturned patent refusals for ‘Theta Defensins’ and due to a 6-year delay, setting precedents on amendments and timely decisions.
Read more about Courts Weigh on Inordinate Delay in Patent Orders and Scope of Claim AmendmentsPSITA is not omniscient, says Madras High Court. Overturns refusal order in favour of Microsoft.
The Madras High Court has overturned a Patent Office decision that rejected Microsoft’s patent application for “Message Communication of Sensor and other Data.” The Court clarified that the “person skilled in the art” (PSITA) used to assess the inventive step is not omniscient and cannot be presumed to possess the inventive solution claimed in the patent.
Read more about PSITA is not omniscient, says Madras High Court. Overturns refusal order in favour of Microsoft.Injunction against use of Kalyan and Kalyan Jewellers Trademarks
Kalyan Jewellers successfully defended its trademarks ‘Kalyan’ and ‘Kalyan Jewellers’ against cybersquatting through a recent Madras High Court ruling. The Court ordered the transfer of the infringing domain name “kalyanjewellers.com” to Kalyan Jewellers after the WIPO arbitration panel couldn’t decide on the case due to the requirement of proving bad faith.
Read more about Injunction against use of Kalyan and Kalyan Jewellers TrademarksTrademark refusal without notice and ‘40’ suffix similarity
Recent rulings spotlight service notice issues and trademark similarity. The Delhi High Court addresses ‘HP-40 vs WD-40’ similarity and rectifies an opposition notice lapse for ‘ASLI AMLA, SIRF DABUR AMLA’.
Read more about Trademark refusal without notice and ‘40’ suffix similarityTrademark removal only after notice, and Fly Hi/Timespro Injunctions
Recent trademark cases include injunctions against ‘Fly Hi’ and ‘Timespro’ by the Delhi High Court, and a pivotal Bombay High Court decision on renewal notices for trademark removal. These cases highlight the courts’ proactive stance in protecting registered trademarks and ensuring proper procedural adherence for trademark renewal and removal, emphasizing the importance of timely legal action.
Read more about Trademark removal only after notice, and Fly Hi/Timespro InjunctionsProsecution History Estoppel applies to trademark cases, confirms the Bombay High Court.
The Bombay High Court recently ruled that the “prosecution history estoppel” principle applies to trademark cases. This means that statements made during the trademark registration process about similarities with other trademarks can be used against the applicant in future infringement lawsuits. The Court also emphasized the importance of disclosing all relevant information, including prosecution history, in trademark lawsuits.
Read more about Prosecution History Estoppel applies to trademark cases, confirms the Bombay High Court.