Stay updated with key 2024 High Court rulings on intellectual property law. This concise overview highlights recent cases on trademark infringement, passing off, patentability, domain names, and copyright — shedding light on how courts are shaping IP rights and protections in India
A. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 57, 47 and 91 — Jurisdictional Scope of High Courts to entertain cancellation/rectification petitions under Trade Marks Act — Observed, every High Court, where dynamic effect of trade mark registration is felt will have jurisdiction — Dynamic effect — Applicability of — Held, “dynamic effect” presumes casus omissus which was not the intention of the legislature — Application of dynamic effect concept expands scope beyond explicit provisions — Indirectly fills gaps that legislature did not address [Hershey Co. v. Dilip Kumar Bacha, (2024) 1 HCC (Del) 461]
B. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 29(2)(c) and 29(3) — Trade mark — Infringement of, when disputed mark identical to registered trade mark and used in relation to identical goods/services — Identity of rival marks and rival goods in context of claim of injunction — Statutory presumption of confusion — Held, as per S. 29(2) registered trade mark is infringed by person, who not being registered proprietor or permitted user, uses in course of trade, mark which because of eventualities mentioned in S. 29(2)(a), (b) and (c), is likely to cause confusion on part of public, or have association with registered trade mark — Eventuality stipulated in S. 29(2)(c) is identity with registered trade mark and identity of goods or services covered by registered trade mark — S. 29(3) provides that when trade mark of alleged infringer is identical with registered trade mark and goods or services are identical, court shall presume that it is likely to cause confusion on part of public [Citizen Watch Co. Ltd. v. Dineshkumar Laxmanbhai Virda, (2024) 2 HCC (Del) 707]
C. Intellectual Property — Copyright — Copyright Act, 1957 — S. 21 — Deemed relinquishment of copyright — Author declaring renunciation — Sanyasi authoring many religious books and assigning copyright to the plaintiff Trust — Held, right acquired by an individual in a work, which is the result of his intellectual activity, is called his copyright and by being a saint or an ascetic, person does not lose exclusive right in his copyright — Law of copyright has to protect a man’s copyright irrespective of his status as a family man or saint — Right would stand extinguished in the hands of the renunciate, only if the person transfers or relinquishes the right by a process known to law, and not otherwise — Held on facts, relinquishment has not occurred [Bhaktivedanta Book Trust India v. www.Friendswithbooks.co, (2024) 2 HCC (Del) 438]
D. Intellectual Property Law — Trade marks and Passing Off — Trade Marks Act, 1999 — S. 2(m) — Passing off, misappropriation and unfair competition — Infringement of trade mark — Plaintiff registered owner of trade mark “BHIDU” contending that personal name “Jackie Shroff” protectable as trade mark — Held, name “Jackie Shroff” carries substantial goodwill and an esteemed reputation, exclusively linked to the plaintiff — Name is protectable as trade mark and being a personal name, stands on a higher footing than the use of a trade mark in relation to goods/services — S. 2(m) of the 1999 Act specifically includes “name” in the definition of “mark” [Jaikishan Kakubhai Saraf v. Peppy Store, (2024) 2 HCC (Del) 253]
E. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — S. 35 — Saving for use of name, address or description of goods or services — Risk associated with registering mark which lacks inherent distinctiveness — Interference with use of one’s name as trade mark — Impermissibility of — Held, one who obtains registration of common name, or surname, as trade mark in his favour, does so with risks that such registration entails — It is open to anyone to use his name on his goods, and, therefore, possibility of there being several identical mark looms large — Proprietor cannot, by obtaining registration for Jindal as word mark, monopolise use of Jindal — Right to freedom of speech and expression guaranteed under Art. 19(1)(a) of the Constitution include freedom to lawfully express one’s identity — Right of person to use her, or his, own name on her, or his, own goods, cannot be compromised [Jindal Industries (P) Ltd. v. Jindal Sanitaryware (P) Ltd., (2024) 3 HCC (Del) 742]
F. Intellectual Property — Patents — Patentability/Patent Protection/Patent Law in India — Two separate patents secured in respect of same product — Coverage vis-à-vis disclosure — Held, dichotomy between coverage and disclosure in patent strike at very root of rationale of law of patent — Under scheme of patent, at end of patent term the invention belong to people at large who may be benefited by it — Broad claim which covers large number of compounds with common inventive concept at its core, also referred to as Markush claim, is permissible provided same is not overbroad or vague — Protection would extend to substances disclosed as well as to those that are not specifically disclosed but are obvious to person skilled in art and/or can be anticipated [Natco Pharma v. Novartis AG, (2024) 3 HCC (Del) 669]
G. Intellectual Property — Patents — Patents Act, 1970 — Ss. 3(k), 11, 15 and 117-A — Patentability of computer-related inventions — Appellant claiming that subject patent application provided technical solution to resolve conflicts between multiple wireless servers — Controller rejected patent claim as claimed protection was over sequence of instructions which does not qualify for patent protection under S. 3(k) of the 1970 Act — Held, subject patent’s core functionality relies heavily on series of logical instructions to manage data dissemination and privacy settings which are characteristic of algorithmic processes — Therefore, patent’s technical contribution is sequence of instructions guiding system operations, such as detecting data, evaluating policies, and resolving conflicts using conditional logic — Approach based on algorithmic processes, which do not qualify for patent protection under S. 3(k) of the 1970 Act [Blackberry Ltd. v. Controller, Patents, (2024) 4 HCC (Del) 471]
H. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 30(3) and 30(4) — Sale of refurbished goods, by refurbisher, with trade mark of original manufacturer — When permissible and does not amount to trademark infringement — Held, “sale of goods in the market” or “goods having been put on the market” would mean goods along with registered mark — Goods originally bore registered trade mark of original manufacturer — S. 30(4) entails where goods entered into market with registered mark, but its condition changed or impaired, which include removal of original trademarks, and refurbished goods identified with original manufacturer, manufacturer’s right kicks in to prevent same [Seagate Technology LLC v. Daichi International, (2024) 4 HCC (Del) 265]
I. Intellectual Property — Trade marks and Passing Off — Domain Names — Infringement by third parties — Domain Name Registrars (DNR) to enforce court orders — Role of RBI — Legal measures in relation to non-compliance by Domain Name Registrars (DNRs) — Held, law enforcement agencies raising concerns against various banks not following standard operating procedures — Banks and DNRs directed to inform Delhi Police of important information — Meeting of the sub-groups and sub-committees of Indian Banks Association allowed to continue in order to ensure that all banks follow the SOP in respect of information disclosure mechanism to the law enforcement agencies [Dabur India Ltd. v. Ashok Kumar, (2024) 4 HCC (Del) 19]
J. Intellectual Property — Trade marks and Passing Off — Passing Off — Proprietor of registered, well-known, reputed, and prior used trademarks “AMUL” seeking protection against “passing off” and filing suit for permanent and mandatory injunction against alleged infringer selling its confectionary items under disputed marks “Amuleti” — Held, proprietor is prior user of well-known trademark “AMUL” — Further, use of identical and deceptively similar trademark leads to dilution — Use of mark similar to proprietor’s well known, reputed, and registered trademark likely to cause confusion among consumers — Proprietor demonstrated prima facie case for grant of injunction, which if not granted will cause it to suffer irreparable loss — Balance of convenience also lies in favour of proprietor, and against infringer [Gujarat Coop. Milk Mktg. Federation Ltd. v. Terre Primitive, (2024) 5 HCC (Del) 132]
K. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — S. 25(3) — Removal of trade mark of registered proprietor from register for non-renewal of registration — Validity — Despite non-renewal petitioner’s trade mark continued to be reflected in trade mark register — Right of petitioner for renewal when trade mark not removed from register and no notice for removal or renewal issued — Held, in absence of a notice issued under sub-section (3) of S. 25 of the Trade Marks Act, any removal of trade mark from register of trade marks as maintained by Registrar cannot be recognized — Legal right of petitioner to seek renewal of registration of trade marks in question, subsist [Motwane (P) Ltd. v. Registrar, Trademark, (2024) 1 HCC (Bom) 464]
L. Intellectual Property — Patents — Patentability/Patent Protection/Patent Law in India — Identifying inventive concept embodied in invention — Mosaicing/combining prior art — Held, set of technical features is regarded as combination of features if functional interaction between features achieves combined technical effect which is different from sum of technical effects of individual features — Invention claimed must normally be considered as a whole — When claim consists of “combination of features”, not correct to argue that separate features of the combination taken by themselves are known or obvious and that “therefore” whole subject-matter claimed is obvious — However, where claim is merely “aggregation or juxtaposition of features” and not true combination, it is enough to show that individual features are obvious to prove that aggregation of features does not involve inventive step [Rhodia Operations v. Controller, Patents, (2024) 1 HCC (Mad) 140]
M. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 31(1), 9, 11 and 17(1) — Effect of registration of parts of a mark — Plaintiff-respondent sought permanent injunction for restraining infringement of trade mark, copyright and passing off rendition of account — Presiding Officer granted temporary injunction rejecting objection filed by respondent — Defendant-appellant contending that term “Patta” commonly used in trade, challenging exclusive rights granted to plaintiff’s trade mark “Hara Patta” — Appeal filed by defendant — Held, S. 17(1) confers exclusive right to use trade mark as a whole on proprietor — Appeal dismissed [Sai Chemicals v. Jai Chemical Works, (2024) 1 HCC (All) 113]