INDIA

By Amarjit Singh

A:

Legislative changes

Subsequent to the 49th Council Meeting of APAA at Kota

Kinabalu, there has been no legislative changes in Intellectual

Property Laws.
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However, by way of Delhi High Court Amendment Act (Act

No.35 of 2003) the pecuniary jurisdiction of Delhi High Court to

entertain suits (including those relating to Intellectual Property
matters) was enhanced from Indian Rs. 5 Lacs (approximately
US$11100) to Indian Rupees 20 Lacs (approximately US$ 45000).
B:

Changes in Procedure

Intellectual Property Appellate Board (IPAB) has been

constituted to deal with the appeals arising against orders
passed by the Registrar of Trade Marks and / or Registrar of
Geographical Indications of Goods. The jurisdiction of the
High Courts to entertain and hear such appeals has been
taken away and all pending appeals (those filed prior to 6 th
October, 2003) stand transferred to the Appellate Board by
operation of Section 100 of the Trade Marks Act, 1999,

The jurisdiction of the High Courts to decide rectification

proceedings in respect of the entries wrongly made or
wrongly remaining on the Register of the Trade Marks or
Geographical Indication of Goods has also been taken away
and vested in Intellectual Property Appellate Board. The
concurrent

jurisdictions

of

the

Registrar

of

Trade

Marks/Geographical Indication to deal with rectification

petition remain.
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Designated officers have been appointed by the Controller

General of Patents, Designs and Trade Marks to furnish the
opinion under Sub-Section (4) of the Section 115 of the
Trade Marks Act, 1999 which is a pre-requisite to any search
and seizure action in respect of counterfeit goods and
goods bearing the falsified trade marks,

Traditionally, a notice of opposition was strictly required to

be filed in the office of the Registrar of Trade Marks within
whose jurisdiction the application was originally filed. Of
late, the Registrar has evolved a practice of forwarding a
notice of opposition filed in a wrong jurisdiction to the
office of the Registrar having jurisdiction. The rights of the
opponent are thus not affected even where a notice of
opposition has been lodged erroneously in a wrong
jurisdiction.

Similarly, applications, responses, oppositions, cancellation

petition under the Patents Act 1970 and/or The Designs Act
2000 which were traditionally required to be filed in the

appropriate office of the Controller, can now be filed in any

of the office at Delhi, Mumbai, Chennai and/or Calcutta.
The controller has evolved a practice of forwarding such
documents filed in a wrong jurisdiction to the office of
Controller having jurisdiction.
C:

Significant Intellectual Property Law Cases

Trade Marks
The most important case this year was the Supreme Court
decision in the matter of Milment Oftho Industries V/s. AllergnInc, wherein the mere prior adoption of the mark was considered
sufficient for the grant of interim injunction in a passing off
action. The mere fact that the foreign company had not used
the mark in India was considered as irrelevant if they were first
in the world market.

The principle of law laid down by the

Division Bench of the High Court of Delhi that in a case of prior

adoption V/s. prior use, the person, who uses the mark prior in
point of time gets a proprietary right stood over-ruled by
implication by this decision of Supreme Court.
In another significant decision The Supreme Court held that use
of internet domain name and protection thereof were subject to
the legal norms applicable to other Intellectual Property Laws
such as trade marks.

In Dabur India Limited V/s. Emami Limited (reported in 2004

(29) PTC 1) the High Court of Delhi restrained the defendant from
telecasting disparaging advertisements, whereby, message was
sought to be conveyed that consumption of the product of the
plaintiff during summer was not advisable and the product of the
defendant was more effective.

The court held that a

manufacturer is entitle to make a statement that his goods are

the best and also make some statements for puffing of his goods
but the same would not give a cause of action to other traders or
manufacturers of similar goods to institute proceedings as there
is no disparagment or defamation to the goods of the
manufacturer so doing. However, a manufacturer is not entitled
to say that his competitors goods are bad so as to puff and
promote his goods.
In another significant decision, in the matter of Geepee Ceval
Proteins and Investment Pvt. Limited V/s. Saroj Oil Industries
(2003 (27) PTC 198) the Geographical name CHAMBAL used as a
trade mark by the plaintiff in respect of edible oil was protected.
In yet another significant decision The Supreme Court in the
matter of Hardie Trading Ltd. V/s. Addisons Paints & Chemical
Limited held that use for the purposes of Section 46(1) of the
Trade and Merchandise Marks Act, 1958 (which is equivalent to
Section 57 of the Trade Marks Act, 1999) may be other than
physical and it may be in any other relation to the goods. The
order passed by the Joint Registrar and the High Court for

cancellation of registered trade mark on the ground of non-use in

physical form was set aside by the Supreme Court.
In Midas Hygiene Industries Limited V/s. Sudhir Bhatia & Others
2004 (28) PTC 121, the Supreme Court of India held that mere
delay in bringing action is not sufficient to defeat grant of
injunction in case of infringement either of trade mark or of
copyright.
In Pepsi Co., Inc. Vs. Hindustan Coca Cola Ltd. (2003 (27) PTC
305), The Division Bench of Delhi High Court held that use of a
registered trade mark in comparative advertising constitute
infringement.
Copyright
In Phonographic Performance Limited Vs. Music Broadcast (P) Ltd
2004 PTC 282, the Bombay High Court in a significant decision on
Copyright Law held that broadcasting is a separate species of
communication to the public and further held that the Copyright
Board had the powers to grant compulsory licenses to more than
one party.
Patents
The Controller granted for the first time Exclusive Marketing
Rights (EMR) for certain drugs under the provisions of the Patents
Act in cases where the product patent applications are still

pending. The High Court of Madras, granted interim injunctions in

favour of the EMR holder and against the generic manufacturers
of the products in question. Novartis AG V Adarsh Pharma 2004
(29) PTC 108 the Court held application by previous publication
or by prior claim has no relevancy while examining Patent claim
in the context of deciding to grant or not to grant EMR. Further,
the EMR grant provisions of the Act have been challenged, inter
alia, on constitutional grounds, in diverse proceedings including
some pending in the Supreme Court of India.
Designs
In a significant judgment pronounced by the High Court of Delhi
in the matter of Glaxo Smith Consumer Health Care JMP V/s.
Anchor Health and Beauty Care, the court vacated the interim
injunction and held that it was not open to the plaintiff to obtain
multiple registration for variation of design, which were mere
trade variants.
In a very significant decision, Madras High Court in the matter of
Officine Lovato S.P.A. Vs. Raajan Automobiles (P) Ltd. (2003 (27)
PTC 343) restrained the defendants from infringing the plaintiff
right by adopting the same design/patent. It was held that the
plaintiff made out a prima facie case by producing material
documents which would show that the plaintiff was the exclusive
owner of patent, design and mark as claimed and had built up a
considerable business market with a good reputation. The Court
held that the defendants cannot infringe the plaintiffs mark or

design or patent. The Court further held that assuming for the
purpose of argument that the plaintiff was yet to complete
registration formalities it was clear that in terms of Chapter
CXXII in the respect of Member Convention Countries similar
privileges and rights were granted to its own citizens in respect
of grant of patent and the protection of patents rights were
secured. Therefore it cannot be stated that the registration of
the patent in other countries was of no use or avail.
In Faber Castell Aktiengesellschaft Vs. Pikpen (P) Ltd. (2003 (27)
PTC 538), The High Court of Bombay held that the registration
done under the Designs Act 1911 shall continue to be in force and
have effect as if done under the corresponding provisions of the
new Act by virtue of sub-section (2) of section 48 of the new Act
except that any proceeding pending in any Court at the
commencement of the new Act may be continued in that Court as
if the new Act had not been passed. All other matters relating to
registration and cancellation of registration of designs would be
governed by the new Act.
Other Developments
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The Geographical Indications of Goods (Registration & Protection)

Act, 1999 has come into force effective September 15, 2003.

The first applications to be accepted for advertisement in the

Geographical Indications Journal under the Act are DARJEELING and
DARJEELING logo.

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Subsequently these have been published in the first Geographical

Indications Journal.

The Geographical Indications Journal is a bi-monthly publication as

per notification issued by the Registrar of Geographical Indications.

These applications have been applied for by Tea Board India in

respect of a fine black tea grown and produced in the Darjeeling
District West Bengal, India.

The second Geographical Indications Journal has also been published

and contains advertisements in respect of Chanderi Silk and
Pochampalli Ikat, both textile products.

Conclusion
With the advent of the Agreement on Trade Related Aspects of Intellectual
Property (TRIPS), the nations of the world are swiftly approaching a new
realm of intellectual property protection.

This factor coupled with

technological developments is giving rise to the emergence of several

intellectual property rights such as the protection of plant varieties,
geographical indications and data base.

With the laws in place, in the

coming years, India is certainly going to see a lot of development in the all
fields of Intellectual Property Laws, practice and procedure.