Newsletter - IPAY Attention : Issue No. 16 - 04/2024

Newsletter Issue 16 April 2024 I P AY ATTENTION Gateway to IP World In This Issue Comprehensive Analysis of Recent Amendments To Indian Patent Rules, 2024 IP Snippets

INTRODUCTION: I P AY ATTENTION Gateway to IP World 1 he Draft Patent (Amendments) Rules, 2023, T circulated for discussions and consultations, have now been officially notified on March 15, 2024, marking a significant milestone in the Indian patent landscape. Alongside the granting of 100,000 patents in the current fiscal year by the Indian Patent Office (IPO), these amendments address major concerns raised by patent filers. This article delves into a detailed analysis of the Patent (Amendments) Rules, 2024, examining key changes and their implications for stakeholders. From timelines to procedural requirements, these amendments aim to streamline processes, enhance transparency, and strengthen the Indian patent system. information [as required under section 8(1)] on corresponding foreign applications. While the need for further updates remains unclear, missing the deadline for Filing FORM-3 attracts an extension period of up to 3 months with an extension fee. FORM-27: Working Statement Requirements Modification: Patentees are now mandated to file working statements once every three financial years, excluding the year of patent grant. The filing period for these statements has been clarified, reducing ambiguity and procedural hurdles. Furthermore, the format of Form 27, used for filing working statements, has been revised to eliminate the requirement for providing value or sales data accrued in India. These changes aim to reduce administrative burden on patentees and align reporting obligations with industry practices. Facilitation of Divisional Applications: The amendments allow applicants to voluntarily file divisional applications, allowing applicants to claim subject matter disclosed in earlier filings. This provision offers greater flexibility to applicants and streamlines the process of protecting related inventions through divisional applications. It clarifies that divisional applications can be filed even in cases where the original application was accompanied by a provisional specification or another divisional application. Grace Period Provisions: A significant addition to the amended rules is the introduction of grace period provisions under Rule 29A. This provision allows applicants to claim a grace period specified in Section 31, pertaining to anticipation of invention by public display, etc. To avail of the grace period, applicants are required to furnish appropriate documentation in accordance with Form 31, providing relief to applicants facing certain disclosure challenges. Pre and Post-Grant Opposition Procedures Enhancement: The amendments introduce provisions to enhance pre and post-grant opposition procedures. Under amended Rule 55A(3), if the Controller determines Adv. Divyendu Verma COMPREHENSIVE ANALYSIS OF RECENT AMENDMENTS TO INDIAN PATENT RULES, 2024 KEY CHANGES INTRODUCED BY THE PATENT (AMENDMENTS) RULES, 2024: Request for Examination (RFE) Timeline Adjustment: The amendment reduces the due date for filing an RFE from 48 months to 31 months from the earliest priority date, effective March 15, 2024. For applications filed before March 15, 2024, the 48-month timeline remains applicable. This adjustment aims to expedite the examination process, encouraging timely filings and reducing delays in patent grant. S t r e a m l i n e d S u b m i s s i o n o f Fo r m 3 f o r Corresponding Foreign Applications: The revised rules simplify the requirement to submit Form 3 detailing corresponding foreign applications. Applicants now need to file Form 3 twice: initially with the Indian application or within six months, and subsequently within three months of the issuance of the First Examination Report (FER). Controllers are mandated to utilize accessible databases for reviewing 1. 3. 2. 4. 5. 6.

I P AY ATTENTION Gateway to IP World 2 that no prima facie case is established in the representation submitted with the pre-grant opposition and notifies the Opponent accordingly, without a hearing request from the Opponent, the Controller must issue an order refusing the representation within one month from the notification date to the Opponent. However, if the Opponent requests a hearing upon notification, the Controller is obligated to conduct the hearing and subsequently issue an order either rejecting or prima facie accepting the representation within one month of the hearing, notifying the Applicant accordingly. In cases where the Controller is convinced, from the outset, that a prima facie case exists in the representation, the Controller must communicate this to the Applicant within one month of receiving the representation, along with the reasons for such prima facie acceptance. The amended Rules also shorten the timeframe for the Applicant to file their statement and evidence supporting the application to two months from the date of notice. This is a reduction from the earlier three-month period stipulated in the previous Rules. Furthermore, under the amended Rules, if a pre-grant opposition is filed for an application and notice is issued pursuant to amended Rule 55(3), the application will be subjected to examination under the expedited examination provision outlined in Rule 24C. This provision aims to accelerate the examination process for applications facing opposition, ensuring timely resolution of disputes. Additionally, the procedural aspects outlined in sub- rules (2) to (4) of Rule 62 are applicable to the hearing procedure under Rule 55A, further streamlining the process and ensuring consistency in the application of rules. These amendments reflect a concerted effort to enhance the efficiency and effectiveness of pre-grant opposition procedures, balancing the interests of both patent applicants and opponents while promoting fairness and transparency in the patent system. Certificate of Inventorship Provision: A new provision under Rule 70A allows inventors to request a certificate of inventorship in respect of a granted patent. This provision acknowledges the contribution of inventors and allows them to establish their association with the patented invention. Renewal Fee Concession and Fee Revisions: The amendments introduce concessions and revisions in renewal fees, aiming to incentivize timely renewal of patents and promote electronic transactions. Patent holders can now avail a10% reduction in renewal fees if paid in advance through electronic mode for a period of at least four years. Additionally, revised fees have been introduced for certain requests/applications to align fee structures with administrative costs. It is important to note that 10% rebate is not available for back renewals (accumulated renewals) to be paid when a patent is granted. It is clarified that this concession is available only for renewals paid in advance. Synergy with Design Act: The syllabus for the Patent Agent exam has been amended to include the Design Act, 2000, and Design R u l e s , 2 0 0 1 . T h i s a m e n d m e n t r e fl e c t s t h e interconnectedness of patent and design laws and enhances the knowledge base of future patent agents. Condonation of delay under amended Rule 138: Notwithstanding anything contained in the rules, the time specified for doing any act or taking any proceeding thereunder may be extended or any delay may be condoned by the Controller for a period of up to six months, upon a request. This extension can be granted for a period of up to six months upon request, provided that the request is submitted before the expiration of the initial six-month period. Importantly, such requests for extension can be made repeatedly within the designated six-month period. Exceptions to the applicability of Rule 137: Amended Rule 137(2) delineates specific scenarios where the provisions of the earlier Rule 137, now Rule 137(1), shall not be applicable. This provision offers clarity on instances where certain actions or amendments cannot be undertaken under the general provisions outlined in Rule 137(1). However, the said Rule shall not apply in the following cases: Extension of Time or Condonation of Delay under Rule 12(5) for filing Form 3: Rule 12(5) pertains to the extension of time or condonation of delay concerning the filing of Form 3. This exception restricts the application of Rule 137(1) in such cases. Clause (i) of Rule 20(4) and Rule 20(6):This exception relates to specific scenarios under Rule 20, which 7. 8. 9. 10. 11. a) b) c)

I P AY ATTENTION Gateway to IP World 3 involves the filing of a national phase application beyond 31 months from the date of priority and the filing of an English translation of an international application beyond the prescribed time. Rule 21: Rule 21 pertains to the filing of a priority document and an English translation of the priority document beyond the prescribed time. Sub-Rules (1), (5), and (6) of Rule 24B: Rule 24B deals with the filing of a request for examination, response to the first examination report, and extensions related thereto beyond the prescribed time. This exception specifies scenarios where Rule 137(1) does not apply. Sub-Rules (10) and (11) of Rule 24C: Rule 24C addresses the filing of responses to the first examination report and extensions related thereto beyond the prescribed time. This exception outlines instances where the general provisions of Rule 137(1) are not applicable. Sub-Rule (4) of Rule 55: Rule 55 concerns the filing of a reply statement along with evidence to a pre-grant opposition beyond the prescribed time. Under this exception, Rule 137(1) does not apply in such circumstances. Sub-Rule (1A) of Rule 80: Rule 80(1A) relates to the payment of renewal fees beyond the extended period of six months. This exception specifies scenarios where the general provisions of Rule 137(1) are not applicable. Sub-Rules (1) and (2) of Rule 130: Rule 130 addresses the filing of a review of the Controller's decision and the filing of an application for setting aside a decision of the Controller passed ex-parte in review proceedings beyond the prescribed time. This exception delineates specific scenarios where Rule 137(1) does not apply. d) e) f) g) h) CONCLUDING REMARKS: The amendments to Indian Patent Rules, 2024, mark a significant step towards enhancing the efficiency, transparency, and accessibility of the Indian patent system. By addressing key concerns of stakeholders and i n t r o d u c i n g p r o ce d u ra l e n h a n ce m e n t s , t h e s e amendments aim to foster innovation, protect intellectual property rights, and bolster confidence in the Indian patent regime. Moving forward, stakeholders must adapt to these changes and leverage the evolving patent landscape to drive innovation and economic growth in India. Snapshot of Amended Rules (2024) in comparison with old Rules: S.No. Rule No. Rule Description Old Rules New Amended Rules 12(1) & (2) FORM-3 Requirements [Section 8(1)] 1. To be filed at the time of filing of Patent Application OR within 6 months from Application Filing Date and subsequent FORM-3 must be filed within 6 months from any foreign filing(s) 1. First FORM-3 at the of filing with details of all corresponding applications filed before the filing of the Indian application OR within 6 months from the date of filing of Application. 2. Second FORM-3 must be filed within 3 months from the date of First Examination Report (FER) The Patent (Amendments) Rules, 2024

I P AY ATTENTION Gateway to IP World 4 Snapshot of Amended Rules (2024) in comparison with old Rules: S.No. Rule No. Rule Description Old Rules New Amended Rules 12(3) Prosecution History [Section 8(2)] Search/Examination Report along with granted claims (if any), must be provided within 6 months from the date of First Examination Report (FER) Controllers will utilize the public accessible and available databases for considering the information related to corresponding foreign application's search and examination report and/or granted claims. During Examination, the Controller may ask the Applicant to submit the fresh (updated) FORM-3 within 2 months. If any delay, it can be condoned up to 3 months on filing Request for Extension of time on FORM-4 with Fee. 24B / 24C Request for Examination Must be filed within 48 months from the earliest priority date Time limit is reduced to within 31 months from the earliest priority date 2. 13 Voluntary filing of Divisional Applications [Section 16] No provision of filing of Divisional Patent Application Voluntarily NEW SUB RULE 2A has been added into the Patent Rules, 2024 by which the Applicant may file one or more divisional applications including in respect of an invention disclosed in the previously filed provisional specification, complete specification or previously filed divisional application. 3. The Patent (Amendments) Rules, 2024 131 Filing of Working Statement [FORM-27] 4. Must be filed annually before the end of September month in respect of previous financial year Patentee is required to file the FORM-27 once in 3 financial year. The deadline to file FORM-27 is within 6 months from expiry of 3 years [before September 30] and the Patent Office can condone the delay up to 3 months. 138 Extension of Time U/R 138 Petition U/R 138 were allowed for maximum one month. Now petition U/R 138 can be filed up to 6 months. Multiple request would be allowed in 6 months period. 5. 80 Renewal Fee Rebate NO PROVISION OF REBATE Amended Rule allow the patentee to 10% rebate in renewal fee payment if it is paid for at least 4 years in advance. It is important to note that 10% rebate is not available for back renewals (accumulated renewals) to be paid when a patent is granted. It is clarified that this concession is available only for renewals paid in advance. 6. 29A Grace Period under sections 29, 30, 31, 32 and 33 NO PROVISION New Rule 29A has been added into the Patent Rules, 2024 by which grace period will be allowed on filing of FORM-31 with fee. 7.

I P AY ATTENTION Gateway to IP World 5 S.No. Rule No. Rule Description Old Rules New Amended Rules 70A Certificate of Inventorship NO PROVISION New Rule 70A has been added into the Patent Rules, 2024 by which inventor(s) can request for a certificate of inventorship in respect of a patent in force. A new Form 8A has been included in the Rules by which any inventor can apply to the Patent Office for issuance of a Certificate of Inventorship. 8. 55 Pre-grant Opposition No time limit for Controller to dispose the Opposition U/R 55 Now the amended provisions provide the Controller to refuse or accept the opposition U/R 55 within one month. 9. 56 Post-grant Opposition - Opposition Board Report To be submitted within 3 months Amended Rule has reduced the submission time to 2 months. 10. FORM-1 NO REQUIREMENT Now FORM-1 has been amended to include the gender and age of the Applicant (in case of Natural Person) and Inventor(s). 11. NEW FORMS FORM 8A and FORM 31 12.

I P AY ATTENTION Gateway to IP World 6 The current appeal has been filed by the appellant w.r.t the rejection of the patent application by the respondent. The appellant had filed present application as a National Phase Application, bearing application no. 650/CHENP/2009 titled “Enzyme Granules for Animal Feed”. The Patent application was refused by the respondent on the ground that the claims do not qualify as an invention under Section 2(1)(j) of the Patents Act, 1970 and that they are not patent eligible under Sections 3(d) and (e). The appellant argued that the respondent acknowledged that claim 1 to 6 were novel and claim 7 was not novel and lack of inventive step on the basis of prior art D8 and D9. The appellant also argued that claim 6 is a new substance so Section 3(d) of the Patents Act also is inapplicable. The Hon'ble Delhi High Court` observed the following matter and stated that claim 7 lacks specificity and the respondents has acknowledged claim 1 to 6 to be novel, so if claim 6 is novel then it cannot be considered as known substance therefore section 3(d) of the Patent Act is not applicable. The Hon'ble Court concluded by proceeding Application No.650/CHENCP/2009 to grant on the basis of current claims 1-6, which were filed with the written submissions and claim 7 as amended in the manner indicated supra. IP SNIPPETS: NOVOZYMES A/S (Appellant) vs. ASSISTANT CONTROLLER OF PATENTS AND DESIGNS (Respondents) Case Number: (T) CMA (PT) No.92 of 2023 (OA/18/2017/PT/CHN) Decided on: 19 March, 2024 NIRANJAN ARVIND GOSAVI AND ORS (Plaintiffs) vs. INNOVATIVIEW INDIA PRIVATE LIMITED (Defendant) Case Number: CS(COMM) 214/2024 Decided on: 13 March, 2024 ASHOK LEYLAND LIMITED (Petitioner) vs. THE CONTROLLER OF PATENTS & DESIGNS (Respondents 1) TATA MOTORS LTD. (Respondents 2) Case Number: W.P.(IPD) No.1 of 2024 and WMP.Nos.1 & 2 of 2024 Decided on: 15 March, 2024 In the present case, the petitioner defends its patented invention titled “Multi-Axle Vehicle Configuration having Heavy Duty Lift Axle”. Respondent 2 had filed post grant opposition against the petitioner's patented invention under Section 25(2) of the Patents Act to which the petitioner filed a reply statement along with the two evidence. The matter was then placed before the Opposition Board constituted under Rule 56 of the Patent Rules by the Controller and the Opposition Board came out with its recommendations (OBR). The petitioner argued that the Opposition Board failed to consider the evidence and that the OBR was cut copy paste of the written statement of the second respondent and the reply statement of the petitioner, making an incomplete OBR. The petitioner further argued that the OBR is a foundational document when the Controller takes up the matter for hearing and it can affect the balance sheet of the petitioner's company. The second respondent stated that the Opposition Board had considered the evidence but without reference to the names of those who have given the evidence, and that the OBR has only a recommendatory value so the Court may not preempt the Controller on how to weigh the OBR. The Hon'ble Madras High Court observed the following matter and stated that the Opposition Board is a statutory creation, and they are required to consider all the materials that the parties are required to produce under Rule 57 to Rule 60 of the Patent Rules. However, the Court states that “it may not be appropriate for this Court, in exercise of its jurisdiction under Article 226 of the Constitution to examine the adequacy of such recommendations.” The Court further states that if while hearing the Controllers determines that the OBR presented by the Opposition Board has failed to consider the evidence then the Controller may reconstitute the Opposition Board and to require such Board so constituted to make its recommendations. In the present case, the plaintiffs restricted the defendants for infringing plaintiffs patent bearing no. IN 336205 related to the field of offline authentication of data and the individual represented in the machine-readable barcode. Plaintiff's objection arose in context of an e-tender floated by the National Testing Agency (“NTA”) for selection of agency for providing enhanced QR Code Solution with encoded texts. The plaintiff submitted their bid believing that the nature and scope of work specified under the e- t e n d e r c a n b e a c h i e v e d b y u s i n g method/technology/process of the subject patent. The defendant being one of the bidders was itself an evidence that the defendant was infringing the patent. The defendants argued claiming that they had their own technology implemented, although they had not applied for a patent. The defendants also submitted that even if the plaintiff's patent was valid, they would be protected from infringement claims under Section 47 read with 156 of Patents Act, 1970, stating that both the government and the contracting agency will be insulated from a claim of PATENT CASES:

I P AY ATTENTION Gateway to IP World 7 infringement. The plaintiff disapproved stating that while the government can use the patent for its own purpose, an infringer can still be injuncted. The Hon'ble Delhi High Court observed the following matter and declined immediate injunction but allowed plaintiffs to inform the National Testing Agency (NTA) about the patent issue. AUDERTEC SOLUTIONS LLP (Appellant) vs CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS & ANR. (Respondents) Case Number: C.A.(COMM.IPD-PAT) 3/2021 Decided on: 01 March, 2024 SAINT GOBAIN ABRASIVES INC & ANR. (Appellants) vs. CONTROLLER OF PATENTS (Respondent) Case Number: C.A.(COMM.IPD-PAT) 20/2021 Decided on: 26 February, 2024 The current appeal has been filed by the appellant w.r.t the refusal order issued by the respondent refusing the patent application no. 2458/DELNP/2013 under section 2 (1) (ja) and under Sections 59/57 of the Act claiming that new features have been added in the original set of claims. The appellant argued that the respondent has not performed proper analysis of the prior arts and also that the amended claims do not introduce any new fact or describe a matter which was not, in substance, disclosed or shown in the specifications before the amendment. The Hon'ble Delhi High Court observed the following matter and stated that the prior arts do not teach a specific combination of the three binders as is required by the applicant-appellant's claims. The Court further states that “the amended claims was effectively to rationalise consolidation of various parts of the original claims and nothing new has been claimed in order to expand the original claim which is precluded by Section 59 of the Act.” The Court concluded by directing the respondent to re-hear the appellant in relation to their submissions and to institute a de novo notice of hearing in the said matter to the appellant within the next four weeks. The present appeal has been filed by the appellant against the refusal order issued by the respondent for patent application no. 202011011938 titled “A method and system for detecting road anomalies”. The order holds the subject patent to be lacking an inventive step only vis-a-vis the prior art D-2. The appellant argued by presenting the distinguish between D-2 and the subject patent that the features of D-2 are unique to the subject patent and cannot be said to be either anticipated or obvious from D-2. The Hon'ble Delhi High Court observed the following matter and stated that complete specification of D2 patent has envisioned a system for detecting road anomalies which is largely similar to that envisioned by the subject patent. The Court further states that “these observations correctly encapsulate the principle of obviousness, and the indicia of an inventive step, vis-à-vis prior art, as a requirement of a valid patent”. The Court concluded that the subject patent is invalid on the ground of obviousness and lack of inventive step compared with the prior art D-2. KUDOS PHARMACEUTICALS LIMITED & ORS. (Plaintiffs) Vs. NATCO PHARMA LIMITED (Defendant) Case Number: CS(COMM) 29/2023, I.A. 907/2023 Decided on: 01 March, 2024 In the present case, the plaintiff restricted the defendant for infringing plaintiff's patent bearing no. IN 228720 (IN' NATCO PHARMA LIMITED (Plaintiffs) vs. KUDOS PHARMACEUTICALS LIMITED & ANR. (Defendant) Case Number: C.O.(COMM.IPD-PAT) 1/2023, I.A. 153/2023 720) titled “Phthalazinone derivative”. The plaintiffs were granted patent by the Indian Patent Office (IPO) on 10 February 2009. In claim 1 of plaintiff's patent, they had assigned an IUPAC name for the compound as “Olaparib”. The defendant allegedly manufactured and sold its own generic version of Olaparib under the brand name BRACANAT. The defendants had not filed any pre or post grant opposition with respect to the IN' 720 and the defendant also filed C.O. (COMM.) IPD-PAT 1/2023 after the IN' 720 was instituted by plaintiff i.e., during the 19th year of patent's life. The plaintiff argued for permanent injunction restraining defendant from manufacturing or selling or otherwise dealing with any product with Olaparib, either under the brand name BRACANAT or otherwise. The plaintiff also argued that the defendants wrongfully contend that Olaparib was disclosed in IN'218 and that the patent IN'720 is valid and capable of being granted. The Hon'ble Delhi High Court observed the following matter and stated that the defendants have been exploiting the patent IN' 720 by manufacturing and selling Olaparib in the 19th year of the life of the patent. The Court further states that there is also no case of invalidity on any of the grounds contained in Section 64 of the Patents Act as claimed by the defendants. The Court further concluded by restraining defendants from manufacturing and selling, or in any manner, dealing with Olaparib, under any brand name until the plaintiff's patent continues to remain alive and subsisting.

I P AY ATTENTION Gateway to IP World 8 The present rectification has been filed by the plaintiff for the removal/cancellation of the impugned mark “ “from the registrar of trademarks. The Plaintiffs have been using the said marks since very long internationally and in India since 2006 specialized in geysers, water heaters, purification systems, boilers, and related equipment. In contrast to this, the defendant contended that the existence of other entities using the term 'SMITH' in classes 7 & 11. After reviewing the evidence of the above contentions, the Hon'ble Delhi High Court determined that the defendant's use of the terms 'STAR SMITH' and 'BLUE DIAMOND' constituted trademark infringement. The court underlined that the defendants' prior use of 'Aero Star' and 'Star Enterprises' demonstrated a preference for the 'STAR' element over the 'SMITH' component. As a result, the addition of 'SMITH' in conjunction with 'STAR' in 2020 appeared to be a prima facie dishonest adoption, aimed at leveraging on the plaintiffs' goodwill and causing market confusion, particularly for identical goods. Hence, the Delhi High Court order restrain the defendants serves as a warning of the legal consequences of infringing on existing trademarks and engaging in deceptive marketing activities. SMITH CORPORATION AND ANR. (Plaintiffs) vs. STAR SMITH EXPORT PVT. LTD. AND ANR. (Defendants) Case No.: I.A. 19011/2022 & I.A. 12253/2023 in CS(COMM) 532/2022 A.O Decided On: March 22, 2024 The present suit was filed by the plaintiff against the defendants, alleging trademark infringement GOOGLE LLC (Plaintiff) vs MR. P. RAJESH RAM & ORS (Defendants) Case No.: CS(COMM) 209/2024 Decided On: March 12, 2024 The present suit has been filed by the plaintiff against defendants for infringing its trademarks “ ”, “Google”, “GOOGLE PAY”, and “ ” PIDILITE INDUSTRIES LTD. (Petitioner) vs. SANJAY JAIN & ANR (Respondents) Case No.: C.O. (COMM.IPD-TM) 371/2022 Decided On: March 22, 2024 TRADEMARKS CASES: The plaintiff contended that their mark “FEVIKWIK” and its variation has obtained the protection under trademark law along with the status of Well-Known mark. The petitioner contended that the essential feature of the impugned mark is similar and deceptively similar to the petitioner's mark which can cause likelihood of confusion on the part of public and association with the petitioners registered trademarks. The Hon'ble Delhi High Court observed that the common and dominant part of this mark is 'FEVI' which is suffixed with a sub-brand depending on the nature of the product and that the recall, therefore, of a customer is on the basis of the 'FEVI' family of marks and not the sub-brand forming part of the suffix. The Court concluded the fact that respondents registered device mark has the word 'KWIK' as part of 'KWIKHEAL' would not stop the respondent from claiming commonality in the word KWIK. It is acceptable that a part of a distinctive mark may have a common element and comparisons are therefore insulated from a portion of the mark applying the 'anti- dissection Rule'. The Hon'ble court further ruled that the petition for rectification has to stand on its own legs and not take the crutch of the Bombay High Court's prima facie findings in a suit for infringement/passing off against the respondent's earlier packaging, now superseded by a new device/packaging. Accordingly, the Hon'ble Court dismissed the rectification petition. Google The plaintiff presented their registered trademarks highlighting the history of it. The plaintiff further mentioned that it has gained the tremendous reputation all over the world and has been declared as a Well-Known Trademark. The plaintiff contended that defendants have been using similar marks attempted trademark infringement, particularly in the context of domain names, where it amounted to typo-squatting and creating confusion among consumers. Plaintiff’s Trademarks Defendant’s Trademarks GOOGLE GOOOGLE GOOCLE GEOGLE GPAY GIPAY Google for the mark “AO SMITH”/

I P AY ATTENTION Gateway to IP World 9 BTB MARKETING PVT. LTD. (Petitioner) vs. DEEPSHIKHA SINGH AND ANR. (Respondents) Case No.: C.O. (COMM.IPD-TM) 380/2021 Decided On: March 12, 2024 WOW MOMO FOODS PRIVATE LIMITED (Plaintiff) vs WOW PUNJABI (Defendant) Case No.: CS(COMM) 253/2024, I.A. 6781/2024, I.A. 6782/2024, I.A. 6783/2024, I.A. 6784/2024 & I.A. 6785/2024 Decided On: March 03, 2024 In the present suit, the application has been filed seeking permanent injunction restraining infringement of trademark, passing off, unfair trade practice, rendition of accounts, and damages against the defendant. The Hon'ble Delhi High Court noted that the defendants were using this marks and domain names for providing services which already overlaps the plaintiff's services. The sole purpose of using these impugned marks was to create confusion among the market. In addition to this, in case of typographical errors in entering the concerned URL's may mislead the potential user to the impugned websites. Hence the Hon'ble court opined that the impugned marks and websites and structurally, phonetically and identically similar to the plaintiff's registered well-known marks. The Hon'ble court ruled in favor of plaintiff and restrained defendants from using the impugned marks till the next date of hearing. The present petition was filed by the petitioner for rectification of respondent's mark “BE THE BEER”. The petitioner was using device mark “ and wordmark “THE BEER CAFE” since June 2016. The respondent was using the trademark “BE THE BEER” from 2017. The respondent used a visual representation of the mark "BE THE BEER" for their café. The petitioner stated that both of them operate in the same industry, and that although just prefixing the term "BE" by respondent in the impugned mark does not establish any differences, it clearly shows deceptive similarity with their registered trademark having a prior user. Furthermore, no one has appeared on behalf of respondent no.1 either before IPAB or Hon'ble Delhi High court. The Hon'ble Delhi High Court, taking the facts into consideration presented by petitioner allowed the petition as the petitioner is prior user and the respondent's mark was showing deceptive similarity. The Hon'ble court ordered that within a period of 4 weeks, the impugned mark shall be removed from the Register of Trade Marks and the same shall be updated accordingly. DOLMA TSERING (Petitioner) vs. MOHD. AKRAM KHAN AND ANR (Respondents) Case No: C.O. (COMM.IPD-TM) 334/2021 Decided On: March 06, 2024 The present rectification petition was filed by the petitioner seeking cancellation and removal of the respondent no. 1's trademark “DOLMA AUNTY MOMOS”. The present application was initially filed before Intellectual Property Appellate Board (IPAB) however post abolition of IPAB, it has been transferred to Hon'ble Delhi High court. The petitioner has claimed that she has been engaged in the business of selling the Tibetan Delicacy 'Momos' and other like products since 1994 and as of now ran five shops across Delhi-NCR. She was the first retailer of said Tibetan delicacies and has gained massive reputation in her food products. Furthermore, no one has appeared on behalf of respondent no. 1. In view of abovementioned facts, Hon'ble Delhi High Court has proceeded with ex-parte and passed an order according to which the trademark of respondent no. 1 has been cancelled and removed from the Trade Marks Register and website of Registrar of Trade Marks be updated within a period of four weeks. The plaintiff has contended that it is a registered proprietor of trademark “WOW/WOW! MOMO” and it has gained tremendous reputation and goodwill in the market. The defendant is running restaurant under trademark “WOW/WOW PUNJABI”/ Moreover, the defendant has not replied to any cease-and- desist notice. By considering the facts and contentions presented by the plaintiff, the Hon'ble Delhi High court has satisfied that the plaintiff has made out prima facie case for grant of an ex parte ad interim injunction accordingly the defendant and all other acting on their behalf are restrained from using,

I P AY ATTENTION Gateway to IP World 10 HERO MOTOCORP LIMITED & ANR. (Plaintiffs) vs. PAWAN KUMAR TRADING AS MS PARI ENTERPRISES & ORS. (Defendants) Case No.: CS(COMM) 90/2024 Decided On: February 05, 2024 advertising, directly or in directly under impugned mark or any other trademark which is deceptively similar plaintiff's registered trademarks. The present suit was filed by the p l a i n t i ff t o p r o t e c t t h e i r registered trademarks from infringing activities by the defendants. The defendant has been using an identical and deceptively similar mark to sale potash alum bars. The plaintiff has prior registrations of the mark “HERO” in India and in other jurisdictions around the world and the defendant neither has any registration for the impugned mark nor any pending applications for registration. Upon sending many summonses and service notices, defendants did not appear before the court. The Hon'ble Delhi High Court observed that upon comparing the Plaintiffs' HERO Marks with the Impugned Marks, is of the prima facie opinion that the defendants have copied the identical trademarks of the Plaintiffs. Therefore, their adoption of the Impugned Marks is without cause and clearly with a mala fide intent to take unfair advantage of the Plaintiffs' HERO Marks, which have additional goodwill and reputation. Such bad faith adoption and use by the Defendants is likely to cause immense damage to Plaintiffs' reputation and would be detrimental to the distinctive character of Plaintiffs' HERO marks. The Hon'ble Delhi High Court proceeded to consider ex-parte and has ordered that till the next date of hearing defendants are restrained from using the impugned mark.

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