Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

The Indian patent landscape has seen a significant shift with the recent amendments to the Patents Rules. As of March 15, 2024, the Patents Amendment Rules, 2024 have introduced a crucial change: patent owners now need to file working statements (Form 27) every three financial years instead of annually. This adjustment is a welcome relief for many patent holders who previously had to submit detailed reports on the working of their patents every year.

The Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) is now grappling with a significant challenge following a judgment passed by the Calcutta High Court in the case of Visa International Ltd vs. Visa International Service. The judgment has cast doubt on the legality of orders and decisions made by the Trade Marks Registry over the past two years. What started as a quick fix to address the long-standing staff shortage at the CGPDTM has now turned into a full-blown…

In a recent judgment in the case of Arijit Singh v. Codible Ventures LLP and Others, the Bombay High Court addressed a legal dispute of infringement of personality rights through the use of AI. Personality rights, which holds the protection of an individual's identity, privacy, and dignity, are foundational to safeguarding personal independence in both physical and digital worlds. The boundaries of these rights are being pushed in new ways as AI systems now have the ability to create believable…

Unfortunately, even when Applicants submit evidence dating back to the claimed date of use, the Learned Examiners/ Hearing officers often raise objections regarding the same during the Examination stage. One of the most common objections raised during show cause hearings is regarding the acceptability and validity of the evidence submitted, wherein despite most documents being acceptable as per the relevant provision of law, they are frequently being deemed inadequate by the Hearing officers.

One of the key provisions of the Paris Convention for the Protection of Industrial Property pertains to priority applications, which allows trademark applicants to claim priority in a member country based on an earlier application filed in the home country. This principle, known as priority right, enables applicants to secure their rights more effectively across borders, ensuring that their subsequent filings in other member countries benefit from the original filing date of the home country…

In India, patent holders are required to submit a Statement of Working (Form 27) to demonstrate that the patented invention is being worked in India on a commercial scale. This requirement underscores the Indian patent regime's emphasis on ensuring that patents contribute to the country's industrial and economic development.

In a recent decision, the Delhi High Court addressed a petition challenging the abandonment of a patent application for a "Blind-Stitch Sewing Machine and Method of Blind Stitching." The petitioner sought to restore the patent application on the account of misconduct and negligence by their Patent Agent which resulted in their patent application being abandoned. Justice Pratibha M. Singh who had presided over the case, emphasized the need for a Code of Conduct for Trademark and Patent Agents to…

Recently, we had a case wherein our Client’s IR application was provisionally refused by the Indian Registry due to the existence of an already registered identical mark. We are well aware that there are circumstances where identical/ similar marks are registered by honest users at times, however, this case seemed to be different. Upon perusal of the conflicting application, the mark (which was identical to our client’s, who is a leading business entity in foreign jurisdiction but was yet to…

As brands have begun to increasingly rely on digital platforms to reach and engage with their target audience, the risk of unauthorized use of trademarks and the sale of counterfeit products has also grown. Unauthorized pages and posts on social media can dilute a brand’s goodwill and reputation and confuse consumers. This holds especially true when it comes to counterfeit products sold on e-commerce platforms which not only pose legal risks but also threaten customer safety and satisfaction.…

A recent judgment in the case of Mountain Valley Spring India Pvt Ltd v. Baby Forest Ayurveda Pvt Ltd has reaffirmed several critical legal standards in trademark infringement and redefined the “customer of average intelligence and imperfect recollection” test considering the evolution of customer awareness and brand identities. In this case, the Plaintiff, Mountain Valley Springs India Private Limited, who are the owners of the luxury skincare brand Forest Essentials, sought for an ad interim…