What is a well-known

trademark?
A well-known trademark is a famous mark, logo, or symbol representing a brand and its hard-
earned goodwill and reputation. A trademark becomes a well-known mark depending on the
following:

The degree of recognition it receives in the relevant sector;

The duration of recognition;

The extent & geographical area of recognition; and

The value associated with it.

E.g., Coca-Cola, Pepsi, McDonald’s, Domino, etc., are popular brands that qualify as well-
known trademarks.

In India, some of the familiar brands such as “Bajaj, Bisleri, Honda, Horlicks, Infosys, Intel,
Pizza Hut, Amul” are recognized as well known trademarks in India.

Section 2(1) (zg) of the Trade Marks Act, 1999 provides the statutory definition of a well-
known mark;

“well-known trademark” concerning any goods or services means a mark that has become so to
the substantial segment of the public which uses such goods or receives such services that the use
of such a mark about other goods or services would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those goods or services and a
person using the mark concerning the first-mentioned goods or services.

The statutory definition states that if:

A substantial segment of the population uses the goods and services recognize a trademark
represented by the brand; and

The public perceives the trademark used by anybody concerning other goods or services as
belonging to the proprietor of the mark.

The trademark qualifies as a well-known trademark.

Why is a well-known mark significant?

The importance of a well-known trademark lies in the fact that they bring substantial
commercial value to the trademark owners. Registration and unauthorized use of such a
trademark is an infringement of the trademark. The unauthorized use of such a mark creates
confusion about the quality of the product among consumers, damaging the brand’s
reputation. Illegitimate imitation of trademarks is a punishable offense.

For example, if a garment manufacturer uses a well-known trademark for which the company
is not the original owner, it is a trademark infringement case.

Protection of well-known trademarks:

a) It protects from registration of the brand by a third party;

b) Protection from misuse of the trademark.

A trademark is necessary for maintaining the goodwill and reputation of a company, and
therefore trademark registration is essential. With the Madrid Protocol in place, registering a
trademark is easier in the international scenario. Registration protects well-known marks
against infringement and dilution (i.e., the reputation of the mark being weakened by the
unauthorized use of that mark by others).

Case Study for Well-Known Trademark Infringement

In Kamal Trading Co. vs. Gillette UK Limited (1998 IPLR 135), an injunction was sought against
the defendants for using the mark 7’O Clock on their toothbrushes. The Bombay High Court
held that the plaintiff had acquired an extensive reputation worldwide, including in India, by
using the mark 7’O Clock on razors and shaving creams; as such, it was a well-known mark.
Using an identical mark by the defendant would lead to the customer being deceived. As
such, the defendant was prohibited from using the mark.

How to list your mark as well-known?

The list includes 97 marks listed as well-known on the IP India website. Earlier, the scenario
was that the proprietor of a famous trademark could only establish his mark as well
known by judicial proceedings before a court. But after the recent change in the Trade Mark
Rules, 2017, the ‘Ease of doing business in India’ and ‘Startup India’ initiatives have been
promoted. As a result, now a proprietor of a famous mark can directly apply online to the
Registrar of Trademarks for the inclusion of his mark into the list of well-known trademarks.

The new rules also mention the conditions and the requirements which need to follow by the
owners of the marks to declare their marks as well-known.

Rule 124 of the Trademark Rules 2017 mentions that any person may apply Form TM-M along
with the prescribed fee to designate its mark as a well-known trademark. The applicant must
support his claim with a statement and supporting documents.

The Registrar shall also consider the provisions of Sections 11(6) to 11(9) of the Act when
such an application is submitted to him. It essentially provides that while determining a mark
as a well-known trademark, the Trade Marks Registrar has to take into account any fact that
he considers relevant for determining a brand a well-known trademark; these are:
a. the knowledge or recognition of the trademark in the relevant section of the public, including
proficiency in India of the mark;

b. the duration, extent, and geographical area of any use of the such trademark;

c. the duration, extent, and geographical area of any promotion of the trademark, including
advertising or publicity and presentation, at fairs or exhibitions of the goods or services to which
the trademark applies

d. the duration and geographical area of any registration of or any application for registration of
that trademark under the Act to the extent they reflect the use or recognition of the trademark;

e. The record of successful enforcement of the rights in that trademark, in particular, the extent to
which the trademark has been recognized as a well-known trademark by any court or Registrar
underRegistrarord.

The Registrar is at liberty to invite objections from the public before declaring the said mark
as a well-known trademark. If there are no such objections, the mark shall be advertised in
the Trademark Journal and become part of the well-known trademark list. The fee for making
such an application is INR 100,000, and such an application has to be filed online.

Section 11(9) states that a mark doesn’t need to be registered or application pending in India
or have a usage in India to be declared a well-known trademark. Similarly, per the same
clause, it is not even mandatory that a mark to be considered a well-known trademark has to
be popular and well-recognized by the public in India.

THE CONCEPT OF PASSING OFF IN THE INDIAN

TRADEMARKS ACT, 1999
The notion of Passing off in the Indian Trademarks Act, 1999 seeks to safeguard the goodwill associated with unregistered
trademarks. Passing off is a common law tort which occurs when a person sells his products as the goods of another, wherein the
trademark owner can take legal action to remedy this violation. This idea was developed in the seminal English case of Perry v
Truefitt (1842) where the Court held that “a man is not to sell his own goods under the pretense that they are the goods of another
man”. The concept of the Passing Off in Trademark Act has since expanded to include various commerce, services, business, and
non-business activities.

Passing off is especially important in circumstances where the owner’s trademark has not been registered. However, establishing
passing off can be difficult since claimants must demonstrate the possibility of public misunderstanding about the origin of the
products or services. Finally, the essential question in passing off cases is whether the defendant’s behavior is such that it causes
uncertainty and possibly harms the plaintiff’s goodwill.

In this article, we will examine the complexities of passing off under the Indian Trademarks Act of 1999, including its evolution,
legal ramifications, and the difficulties involved in proving a successful passing-off claim. We will also explore the significance of
passing off in safeguarding intellectual property rights. Moreover, we will also look at the available remedies for trademark owners
in cases of deception and unfair business practices.

WHAT IS PASSING OFF IN TRADEMARK ACT?

While passing off is not defined under the Indian Trademarks Act 1999, Section 27 recognizes the common law rights of a
Trademark owner wherein the owner can initiate legal proceedings against any person for passing off goods or services as the
goods of another person or as services provided by another person.
Passing off occurs when illegal use of a trademark or trade name in such a way that the public is misled into believing that the
products or services supplied by one party are genuinely those of another. This misrepresentation can harm the goodwill and
reputation of the legitimate owner of the trademark.

Passing off is recognized under the Act as a way of protecting unregistered trademarks and preventing unfair competition. When a
person offers products or services under a deceptively similar mark to another’s existing mark, it can cause consumer confusion and
dilute the distinctiveness of the original trademark. Passing off in Trademark Act provides the aggrieved party a legal remedy to
seek retribution and prohibit such unlawful use of their mark.

Furthermore, passing off encompasses a larger variety of commercial operations, including trade, business, and non-business
initiatives, in addition to commodities and services. This growth reflects the changing nature of unfair commercial practices as well
as the necessity to protect against misrepresentation in a variety of economic and social interactions.

Under the Indian Trademarks Act of 1999, the idea of passing off is a critical instrument for safeguarding trademark owners’ rights,
preserving the integrity of their marks, and maintaining consumer trust and confidence in the marketplace. We shall explore the
legal complexities of passing off, its repercussions for trademark owners, and the hurdles connected with proving a passing off
claim in the next portions of this blog.

TYPES OF PASSING OFF IN TRADEMARK ACT

Passing off can take several forms in trademark law, each with its own set of obstacles and ramifications for trademark owners.
There are many categories of passing off, reflecting various ways in which unlawful use of trademarks can cause confusion and
impair the goodwill of legitimate owners.

1. DIRECT PASSING OFF:

Direct passing off happens when a person intentionally uses an identical or deceptively similar mark to that of another party,
causing consumer confusion. This sort of passing off entails a blatant and purposeful misrepresentation of the origin of products or
services, which frequently results in damages to the original trademark’s reputation and distinctiveness.

2. INDIRECT PASSING OFF:

Indirect passing off occurs when one party uses a trademark or trade name that, although not identical, produces confusion or
connection with another party’s mark. This might happen due to slight similarities in the overall impression provided by the marks,
causing consumers to credit products or services to the wrong source incorrectly. Indirect passing off presents difficulties in
determining the level of misunderstanding and the subsequent impairment to the original mark’s goodwill.

3. REVERSE PASSING OFF:

Reverse passing off happens when a trader replaces the trademark owner’s products and rebrands them for sale to customers as
their own, making the public believe that the goods are its own. In this case, the public would come to associate the qualities of the
trademark owner’s product with the substituted product and the original trademark’s goodwill would become diluted over time.

ESTABLISHING CRITERIA FOR PASSING OFF IN TRADEMARK

ACT
Several important criteria must be established in order to establish a successful passing off claim under the Trademark Act, 1999, to
demonstrate the presence of misrepresentation and the resultant injury to the goodwill of the lawful trademark owner. These aspects
serve as the foundation for establishing passing off before a court of law.

1. GOODWILL AND REPUTATION:

The existence of goodwill and reputation connected with the unregistered trademark is important to a passing-off claim. The
claimant must show that the trademark in question has acquired distinctiveness and familiarity among consumers, resulting in the
formation of a valuable reputation and goodwill in the marketplace. This goodwill serves as the foundation for enforcing the
trademark owner’s rights against unlawful use and misrepresentation.
2. MISREPRESENTATION:
At the heart of passing off claims is the element of misrepresentation. It involves the unauthorized use of a trademark that confuses
consumers about the origin of products or services. The claimant must show that the defendant’s actions have or are likely to cause
public association with the claimant’s trademark.

3. DAMAGES:
In addition to demonstrating deception and the likelihood of confusion, the claimant must also establish actual or potential harm.
This can be in the form of financial loss, reputational harm, or dilution of the trademark’s distinctiveness and goodwill.
Demonstrating such injury to the plaintiff’s business is critical in proving the passing-off claim.

Difference between Trademark Infringement and Passing Off

LEGAL REMEDIES FOR ADDRESSING PASSING OFF IN

TRADEMARK LAW
In instances of passing off, a variety of remedies are available to preserve the trademark owner’s rights. These remedies are critical
for restoring the trademark’s integrity and compensating for the losses caused by such passing off. The following are the remedies
available in passing off actions:

1. INJUNCTION:
Seeking an injunction to prevent the defendant from unauthorized use of the plaintiff’s trademark is a remedy in passing-off cases.
An injunction prevents further unlawful use of the trademark, protecting the claimant’s goodwill. Under Section 135 of the Act, a
party can seek an injunction to restrain the defendant from committing passing off.

 Anton Piller Order: This form of injunction provides for partial orders to investigate the defendant’s premises.
This order is issued when there is a risk of the defendant destroying items bearing the plaintiff’s trademark.
 Mareva Injunction: A Mareva injunction freezes the defendant’s assets to prevent them from dissipating assets to
evade the judgment.
 Interlocutory Injunction: One of the most commonly granted forms of injunction is the interim injunction. This
type of injunction prevents or compels the defendant for indulging in certain acts pending final determination of the
case.
 Perpetual Injunction: The final judgment grants a permanent injunction that bars the defendant from infringing
the trademark owner’s rights.
2. INFRINGING GOODS DESTRUCTION:
Apart from the above, the court may also issue a seizure order prohibiting the defendant from the sale of such unauthorized goods.
In order to put an end to such trademark misuse, the court poses a requirement upon the defendant to return the goods and/or
destroy infringing items in possession of the defendant.

3. DAMAGES AND ACCOUNTS OF PROFITS:

Trademark owners can seek damages to compensate for genuine losses incurred as a result of passing off. This involves monetary
losses as well as damage to the reputation of the brand. Depending on the nature and circumstances of each case, courts assess
damages and compensate the rightful owner for losses incurred.

JUDICIAL REFERENCE
SYED MOHIDEEN V. P. SULOCHANA BAI [(2016) 2 SCC 683
This Judgment is a landmark decision rendered by the Supreme Court of India where, inter alia, the Court held that a passing off
action can even lie against a registered proprietor of a trademark.

The Respondent was in the business of selling halwa in the name of ‘Iruttukadai Halwa’ since 1900 in Tirunelveli. The respondent
had further obtained registration for the trademark ‘Iruttukadai Halwa’ as per the provisions of the Indian Trademarks Act

The Appellant registered the name ‘Tirunelveli Iruttukadai Halwa’ in 2008 and also sold halwa under this trade name. The
Honorable Supreme Court had to decide between the rights of two registered owners and while doing so, the Court held that a
passing off action can even lie against a registered proprietor of a trademark.

The court went on to elaborate that a trademark exists independently of the registration which merely affords additional protection
under statutory law. In case of conflict between two registered proprietors, the evaluation of the better rights in common law is
essential as the same would determine whose rights between the two registered proprietors are better and superior. The Respondent
won the court case as the court recognized the rights of prior user as superior to the registration. Even the registered proprietor was
unable to disturb or interfere with the rights of the prior user, as concluded by the court.

What is Trademark Infringement?

Trademark infringement occurs when a person uses a trademark identical or deceptively similar to another
party’s registered trademark. It could be a unique symbol, logo, word, phrase, design or combining these
elements to represent the goods and services offered by the company. This unauthorised use can confuse
consumers and take advantage of the reputation of the registered trademark. With the proper evidence
and guidance of a legal professional, the company can protect their trademark.

In India, the Trade Marks Act 1999 offers the legal protection for trademarks. This Act outlines the
framework for trademark registration with the guidelines for examination, registration, and renewal
process. In case of infringement, it provides remedies for trademarks like injunctions, damages, and
accounts of profits.

Types of Trademark Infringement

You can find two types of trademark infringement in India: 1. Direct Infringement and 2. Indirect
Infringement.
1. Direct Infringement
 Unauthorized Use: The infringement of a trademark only occurs when a person uses the
trademark without the owner’s permission. If it is used with the owner’s knowledge, then it is not a
violation.
 Identical or Deceptively Similar: If the used trademark is the same as the registered trademark or
consumers are confused between the marks and think they are the same.
 Registered Trademark: The Act only protects the trademark registered under India’s trademark
registry. If there is an unauthorised use of an unregistered trademark, the passing off law will be
employed. A claimant must demonstrate goodwill, misrepresentation, and damage to their
reputation to establish a case.
 Class of Goods or Services: Unauthorized use of the trademark for the propagation of goods or
services must come under the same class of unregistered trademark.

2. Indirect Infringement
 Vicarious Infringement: When a person controls the infringement done by the direct infringer, it
comes under vicarious infringement.
 Contributory Infringement: When a person knowingly provides assistance, support, or
contributes to the infringing activities of the direct infringer, it is a contributory infringement.

What are the Grounds of Infringement?

As per Section 29 of the Trade Marks Act, 1999, trademark infringement in India can be accounted for in
the following scenarios:

 Identity with a Registered Mark: Infringement occurs if an unregistered mark is identical to a

registered one for the same class of goods and services.
 Likelihood of Confusion: If an unregistered mark is similar to the infringed mark, causing
confusion among consumers.
 Similarity to a Mark with Reputation: Infringement is established if the unregistered mark
resembles a registered trademark with a recognised reputation in the market.
 Unauthorized Use on Labeling or Packaging: If the registered trademark is used on labelling or
packaging without proper authorization, it is an infringement.
 Unfair Advantage in Advertising: If the registered trademark is used in advertising to gain an
advantage detrimental to or against the trademark’s reputation.

Also read: Trademark infringement cases in India

What does not come under Trademark Infringement?

Section 30 of the Trademarks Act 1999 outlines certain conditions where the registered trademark is not
infringed. The alleged infringer can use it to defend themselves from the suit for infringement.

A registered trademark is not considered infringed in the following situations:

 Using Indicating Characteristics: When the use of the trademark in relation to goods or services
merely indicates their kind, quality, quantity, intended purpose, value, geographical origin, time of
production, or other characteristics.
  Limitations on Registration: If the trademark is registered subject to certain conditions or
restrictions, its use in a manner that falls outside the scope of those conditions or limitations is not
considered an infringement.

 Authorized Use by Proprietor or Registered User: When a person uses the trademark for goods
or services connected with the trademark owner or a registered user.

 Adaptation of Goods or Services: If a person adapts the trademark of the goods or services to be
part of or accessory to other goods or services, and if the use is reasonably necessary.

 Use of Identical or Similar Trademarks: When a registered trademark, which is identical or closely
resembles another registered trademark, is used by its rightful owner under the rights granted by
registration.

Defenses Available Against Trademark Infringement

 Fair Use

The accused infringer in order to take this defence need to establish that he has taken the consent of
the authorized owner of the trademark or either proves that he doesn’t have any intention to defraud or
mislead the consumers of the goods.

 Descriptive fair use

It can be taken as a defence when a mark is used in good faith mainly for the descriptive purpose and
not for a specific mark or product.

 Nominative fair use

This can be taken as a defence when a mark is listed in reference to the registered proprietor’s goods
and not the user’s goods. It is justifiable when such mark is used for facilitating identification of the
goods.

An application for such defence needs following conditions to be satisfied:

 The product or service is not identifiable without the mark,

 The mark was used only to a reasonable extent to facilitate its identification,
 The use does not falsely suggest endorsement or sponsorship by the trademark
 Prior Use

Prior user of the mark has more rights than the subsequent user even if he is the registered one. It can
be taken up as a defence by the defendant when he is using it for a long duration of time and has
gained reputation too in his business as compared to the registered user. It is further stated that this
defence can be taken up in a situation when defendant has not renewed his previously registered
trademark but his business is continued under the same mark.

 No Confusion or Difference in Essential Features

It refers to a situation in which the courts not only consider the phonetic similarity between the marks
but also whether the two marks have different features.

In the leading case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd 1,the Supreme Court laid down that in
deciding a case of trademark infringement , court must have a look into the differences and laid down
the test:

 Is there any special aspect of the common features which has been copied?
  Whether the dissimilarity of the part or parts is enough to mark the whole thing dissimilar?
 Whether when there are common elements, should one not pay more regard to the parts which
are not common, while at the same time not disregarding the common parts?
 What is the first impression?

Applying this test in the case, it was held that the two marks were different in essential features and
would not be a cause for confusion. Therefore, no cost was awarded.

 Non-use of the Mark by the Registered Proprietor

It refers to a situation in which the burden of proof is on defendant to prove the non-usage of the mark
by the proprietor of the trademark.further he need to show that he has a legitimate interest for the
same and also the non-usage of the mark by the trademark owner is not due to his negligence or fault
but is mainly the case of force majeure or any unforseable circumstances.

 Delay and Acquiescence

In situations when there has been a delay in bringing action of the infringement by the plaintiff, it is
stated that the plaintiff’s right have been waived off as the trademark owner and implicitly or explicitly
permitted use of its mark by the subsequent user.

 Parody

It is being stated by the Delhi High Court in the case of Tata Sons Ltd v. Greenpeace International that
reasonable parody, comment of a registered trademark can be made if the intention of the person is to
draw attention to some activity of the owner of the trademark. Where the use is not completely for a
commercial purpose, the court may allow parody. This emerged because the courts gave more
importance to the freedom of speech and expression as against trademark law.

 Invalidity of Registered Mark

It can be taken up as a defence by the defendant that the registration of mark by the plaintiff is invalid
i.e is being done through an unfair advantage . in such case , it would not be called as a trademark
infringement.

Remedies for trademark infringement

Civil and criminal remedies are the available remedies for trademark infringement, and
the plaintiff has the option of initiating either or both of these actions against the
defendants. For the purpose of infringement of an unregistered trademark the common
law remedy of passing- off can be invoked.

Civil Remedies
The civil remedies available in case of trademark infringement are as mentioned:

1. Damages
The damages in the form of compensation are provided to the plaintiff or the owner of
the registered trademark by the infringer.

2. Accounts of profit
Any profit gained by the infringer while using the trademark of another registered
owner, all the profit or certain amount of monetarily compensation is delivered to the
owner of Trademark.

3. Destruction of goods
The court may issue and order of destruction or eradication of all the goods or products
manufactured using the infringed mark.

4. Injunction
Injunction is an action that prohibits unofficial or unauthorized use of TM. The court
grants protection to the trademark owner by preventing the infringer from further using
the infringed mark.

The injunction order can be of four types:

 Anton Piller Order- the Anton Piller Injunction order is an ex-parte order which
is issued to inspect the premises of the defendant without giving any prior
notice.
 Mareva Injunction- when the court prohibits defendants from using their assets
within the court’s jurisdiction until the conclusion of the trial.
 Interlocutory Injunction or temporary injunction- entails the prohibition of an
action by a party to a lawsuit until the case is resolved.
 Permanent or perpetual injunction- It is a court order requiring an individual or
company to permanently refrain from engaging in specific activities.
5. Cost of proceedings-
The court can order the defendant to bear the costs of proceedings of the plaintiff.

Criminal Remedies
The criminal remedies available in case of trademark infringement are as follows:

 With a prison term that should not be less than six months and can be
extended to three years;
 With a fine that should not be less than 50,000 rupees and can be extended to
two lakh rupees.
UNCONVENTIONAL TRADEMARKS
When we talk about a brand, a name, a logo, or a symbol that graphically depicts a
product, we’re talking about a trademark. When people buy products or hire services from
the market, the quality and reputation of the products and services are their primary
concerns.
A trademark aids the consumer in distinguishing one product or service from another.
Intellectual property rights have advanced significantly in recent years, with trademarks
being one of the most notable examples. The Trade Related Aspects of Intellectual
Property Rights (TRIPS) is an international intellectual property agreement that considers
all types of trademarks, even those that aren’t traditional. India has become a signatory to
the TRIPS agreement as a member of the World Trade Organization (WTO), and as a
result, it has made a few adjustments to its legal provisions relating to Intellectual Property
Rights (IPR) in order to comply with the TRIPS agreement. In today’s world, trademarks
are divided into two categories: conventional and non-conventional trademarks.
Non-Conventional trademarks includes smell mark, sound mark, taste mark, touch mark,
motion mark and hologram mark. Granting of trademark protection to these non-
conventional marks is slowly gaining recognition in several countries. But under Indian
Trademark Regime, non-convention trademark registration is difficult because of the pre-
requisite condition on the graphical representation of the trademark which is followed
strictly.

The Indian Trademark Act defines a trademark as a mark capable of graphically

representing and distinguishing one person’s products or services from those of another,
and it can take the form of a word, letter, signature, logo, numerals, headings, phrase,
symbol, product design and shape, packaging, and colour combination. It is evident from
the definition that the two main requirements must be present in the mark in order for it to
be registered and granted trademark protection in India. One of the requisites is the
graphical representation of the mark and the other important requisite is the distinctiveness
of the mark which helps the consumers in distinguishing the product/ service of one from
that of the other. Traditional/ conventional trademarks follow these two requisites strictly for
its registration and protection under the Indian Trademark Law.
Non-conventional trademarks have recently become the centre of attention when it comes
to current trademark concerns. When we talk about the graphical representation of a non-
conventional trademark, it’s more of a practical use. The topic of whether non-traditional
trademarks such as smell, sound, and taste are distinct and can be identified from one
another remains unanswered. Some countries have enacted new restrictions and enacted
legislation to protect non-conventional trademarks. India, on the other hand, has enacted a
rigorous procedure for registering a non-traditional trademark. The trademark law
mandates a graphical representation of the mark that aids in the differentiation of one
product from another.
Non-traditional trademarks, such as smell marks, taste marks, and sound marks, are not
represented graphically or visually. However, a framework has been established for the
formation of laws and regimes to address current difficulties connected to non-conventional
trademarks.
‘When an application for a Sound mark is made, it shall be reproduced in MP3 format not
exceeding 30 seconds, recorded on a medium that allows for easy and clearly audible
replaying quality, coupled with a graphical representation of its notation,’ (according to
‘Rule 26(5) of the Trade Mark Rules). When registering a sound mark, the representation
of a specific musical note must be submitted to the exact location designated for trademark
registration. The prerequisite for registering a sound mark is to demonstrate the sound’s
factual distinctiveness, which means that the general public can associate the sound with
that specific goods or service. ‘The MGM’s Lion Roar’ is an example of a sound mark.
Likewise, the Yahoo Inc., was granted sound mark in India in the year 2008. The sound
comprised of a human male voice making a song like cry of the brand name yahoo.

DIFFERENT TYPES OF UNCONVENTIONAL MARKS

SMELL MARK

 Smell is one of a person’s five senses, and organisations and enterprises have
begun to show an interest in developing items with nice scents to attract customers.
 One of the requirements for obtaining trade mark registration is to graphically depict
the mark, however the fundamental challenge is to graphically represent smell.
 Taking down the chemical formula of a smell will indicate the substance that was
used to create that specific smell, rather than the smell itself.
 The smell should be distinct and it cannot per se be qualified to be registered as a
trademark, without the required reference with the product.
 In addition, to register the smell mark, the smell should not be a naturally derived
scent originating from the product and be a mere result of the properties of the
product.
 Example: A Dutch company registered the scent of freshly mown grass for its tennis
ball.

TASTE MARK

 Taste marks are now being accepted for trademark registration in several
jurisdictions.
 The most significant legal criterion for registering a trademark is to show that the
product/service is different and not deceptive, generic, descriptive, or similar to
another brand.
 If the mark of a specific product or service meets the uniqueness criteria and can be
graphically represented, it can be registered and protected as a trademark.
 However, how do you graphically express a taste mark, and can you describe taste
with words?
  Another important lacuna is whether taste marks if granted protection under
trademark law, will it conflict with the functionality doctrine?
 For instance, the taste of a mango in a mango juice cannot be granted taste
protection under trademark law as it does the same function which is inherent to it,
i.e., the flavor of mango.
 So, a product which is there for human consumption is disqualified for protection of
trademark under taste category by applying the functionality doctrine.

TOUCH MARK

 Touch is one of a person’s five senses. The texture of a product can be exploited as
a marketing approach to attract customers.
 Touch markings are one of these non-traditional marks, and in order to be registered
under trademark law, they must be distinguishable to typical consumers and capable
of graphical depiction.
 Texture mark is another name for touch mark. The touch mark should not just be a
decoration or packaging for a product or service; it should also meet the
requirements of a normal trade mark.
 The contact mark should have no bearing on the product’s functionality.

 It should be able to be represented graphically and should cause the consumer to

link the brand with the product or service.
 Because it is difficult to graphically portray the feel of the product texture in many
countries, including India, claims for protection under trademark law for touch
markings are uncommon when compared to other non-conventional marks.
 Because touch markings are the least desired mark for registration due to the
intricacy of the graphical representation, no such touch marks have been claimed for
registration before the Controller General of Patents, Designs and Trademarks,
Ministry of Commerce and Industry, Government of India.

SOUND MARK

 A sound mark is one of the non-traditional trademarks. A musical note, such as the
Nokia ringtone, or a sound note, such as the ‘yahoo yodel,’ can be used to identify a
product or service.
  A graphical representation of the mark is needed under trademark law, and a
graphical representation of the sound mark can be shown by putting down the
musical notes.
 However, registering a sound mark requires demonstrating distinctiveness and
demonstrating that average consumers would associate the product or service with
the sound mark.
 For instance- In India, the corporate jingle “Dhin Chik Dhin Chik” of ICICI Bank is a
sound mark which is protected under trademark law.

HOLOGRAM MARK

 The ‘Hologram mark,’ which uses a hologram to identify the origin of items or
services, is another non-traditional trademark.
 The hologram brand will have many hues that may be seen from various angles.
 13 Such holographic marks prevent duplication and erroneous replication. The mark
must be graphically depicted portraying all material features, including images seen
from multiple angles, in order to be registered under trademark law, which is
challenging because the hologram will show varying colours when viewed from
different angles.
 The application for registration should contain a written specification describing the
varying images of the hologram when it is viewed from different angles which is
difficult to express in written form.

MOTION MARK

 A motion mark is a moving logo, a symbol, a video, or a name that is used by the
company or the person who owns the product or service to attract consumer
attention to their products and services.
 The creation of a motion mark is aided by computer programmes and animation
software.
 Only a few countries have recognised motion markings.
 For instance, the trademarks of Motion Pictures, 20th Century Fox Movies, Columbia
Pictures are widely known motion marks registered in USA, 11 where the phrase
‘20th Century Fox’ appears in three lines in golden colour while the music plays in
the background and the camera moves from left top to right bottom while the phrase
 is brought in the middle of the screen as shown in the Ice Age animation movie and
Deadpool movie.
 In India, the Trademark Act does not specify a motion mark. Graphical
representation of motion marks is also problematic since the appropriate
representation of motion marks will involve movement of the mark’s specific word,
logo, symbol, etc., as well as sound, which is difficult to portray in textual form.
 In India, a motion mark cannot be presented for registration on its own; instead, it
must be provided to the registrar as a combination of marks.
 Registration of motion marks under trademark law is uncommon in India due to the
high level of examination required for registration.

INDIA’S POSITION
Except for sound markings, which are listed in Rule 26(5) of the Trade Mark Rules, the
Indian Trademark Law does not have any particular rules dealing to atypical trademarks.
Unconventional marks are not defined in the Indian Trademark Law, and there are no
processes for registering them. As a result, there are no provisions in place for such
unusual marks, which must be addressed. The requirement of graphical representation for
trademark registration in India is proving to be a difficulty for the registration of atypical
trademarks.
The legal prospects of recognising smell and taste as legitimate trademarks in India have
yet to be recognised and explored, since the challenges related with their graphical
depiction must be studied and handled. Furthermore, because India is likely to take the
same stance as the EU – and, to a lesser extent, the US (which is more liberal) – odours
and aromas that are inherent or crucial to the product would be exempt from registration.
There is a potential that smell and taste marks will not be given registration on the basis of
intrinsic distinctiveness until India develops more jurisprudence on the topic.
In order to prove acquired distinctiveness, there may be a significant burden to show that
the smell or taste has come to be associated exclusively with the applicant.

Adoption of colour branding methods, sound and form marks, and unconventional
trademarks can play a key part in corporate branding, ensuring that the purpose and
quality of products/services are not the only factors that retain their attractiveness in
increasingly competitive markets. While we wait for more jurisprudence in this area, the
existing trend indicates that Indian courts/tribunals are willing to use a broad approach in
order to preserve atypical marks.

THE PATENTS ACT, 1970

Section 2
Definitions and interpretation

(1) In this Act, unless the context otherwise requires,-

(a) "Appellate Board" means the Appellate Board referred to in section 116;

(ab) "assignee" includes an assignee of the assignee and the legal representative of a deceased assignee and references to the
assignee of any person include references to the assignee of the legal representative or assignee of that person;

(aba) "Budapest Treaty" means the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for
the purposes of Patent Procedure done at Budapest on 28th day of April, 1977, as amended and modified from time to time;

(ac) "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used
in an industry;

(b) "Controller" means the Controller General of Patents, Designs and Trade Marks referred to in section 73;

(c) "convention application" means an application for a patent made by virtue of section 135;
(d) "convention country" means a country or a country which is member of a group of countries or a union of countries or an
Intergovernmental organization referred to as a convention country in section 133;

(e) "district court" has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (5 of 1908);

(f) "exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised
by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and exclusive
licensee shall be construed accordingly;

(g) [Omitted]

(h) "Government undertaking" means any industrial undertaking carried on—

(i) by a department of the Government, or
(ii) by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
(iii) by a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956), or
(iv) by an institution wholly or substantially financed by the Government;

(i) "High Court", in relation to a State or Union territory, means the High Court having territorial jurisdiction in that State or
Union territory, as the case may be;

(ia) "international application" means an application for patent made in accordance with the Patent Cooperation Treaty;

(j) "invention" means a new product or process involving an inventive step and capable of industrial application;

(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or
having economic significance or both and that makes the invention not obvious to a person skilled in the art;

(k) "legal representative" means a person who in law represents the estate of a deceased person;

(l) "new invention" means any invention or technology which has not been anticipated by publication in any document or used
in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e.,the subject
matter has not fallen in public domain or that it does not form part of the state of the art;

(la) "Opposition Board" means an Opposition Board constituted under sub-section (3) of section 25;

(m) "patent" means a patent for any invention granted under this Act;
 (n) "patent agent" means a person for the time being registered under this Act as a patent agent;

(o) "patented article" and "patented process" means respectively an article or process in respect of which a patent is in force;

(oa) "Patent Cooperation Treaty" means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as
amended and modified from time to time;

(p) "patentee" means the person for the time being entered on the register as the grantee or proprietor of the patent;

(q) "patent of addition" means a patent granted in accordance with section 54;

(r) "patent office" means the patent office referred to in section 74;

(s) "person" includes the Government;

(t) "person interested" includes a person engaged in, or in promoting, research in the same field as that to which the invention
relates;

(ta) "pharmaceutical substance" means any new entity involving one or more inventive steps;

(u) "prescribed" means,—

(A) in relation to proceedings before a High Court, prescribed by rules made by the High Court;
(B) in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board; and
(C) in other cases, prescribed by rules made under this Act;

(v) "prescribed manner" includes the payment of the prescribed fee;

(w) "priority date" has the meaning assigned to it by section 11;

(x) "register" means the register of patents referred to in section 67;

(y) "true and first inventor" does not include either the first importer of an invention into India, or a person to whom an
invention is first communicated from outside India.

(2) In this Act, unless the context otherwise requires, any reference—

(a) to the Controller shall be construed as including a reference to any officer discharging the functions of the Controller in
pursuance of section 73;
(b) to the patent office shall be construed as including a reference to any branch office of the patent office.

Patentability criteria
Every invention has to pass various tests and fall under the category of inventions that
can be patented in India. The 3 main tests are novelty, non-obviousness and utility.
There are certain requirements that need to be fulfilled in order to get a patent for an
invention.

Requirements or principles of Patent Law

To get a product patented, it has to fulfil the following requirements, which also serve as
the principles of patent law in India. These are:

 An invention must be new.

 It must involve an inventive step.
  Capable of being used in industries i.e. industrial application.
 It must not fall into the category of exceptions or subjects that are not
patentable.
The following criteria determine what can be patented in India:

Novelty or newness
The invention must be new and not similar to any other inventions or existing products.
According to Section 2(l) of the Patents (Amendment) Act, 2005 ‘new invention’ means
an invention that has not been anticipated by prior publication and does not fall into the
public domain. There must be no prior publication of the invention. However, a mere
discovery does not amount to an invention. The two criteria for granting patents, i.e.,
novelty and utility, were recognized as important in the case of Bishwanath Prasad
Radhey Shyam v. Hindustan Metal Industries (1979). It was observed in the case
of Gopal Glass Works Ltd. v. Assistant Controller of Patents (2005), that for an invention
to be patented it must be new and original. Novelty in itself is not a complete criterion.
The product or invention must be sufficiently original as well.

Non-obviousness or inventive step

According to Section 2(1)(j) of the Indian Patents Act, 1970, any product or process that
involves an inventive step and is capable of being used in the industry is called an
invention. This definition makes it clear that the invention must have an inventive step
and it must not be known to any skilled person in that particular field. Section 2(1) (ja) of
the Act defines ‘inventive step’. The concept of inventive step was introduced in India in
the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979). It
also reiterated the four tests of obviousness. These are:

 A skilled person must identify the inventive step in the form of prior use, art or
knowledge.
 He must be able to tell the difference between the subject matter and the
invention.
 Consideration must be given to observing the differences.
 There must be a degree of invention.

Usefulness or utility
This is another important criterion for granting patents. An invention must be useful and
have an industrial application besides being new and non-obvious. In the case of Cipla
Ltd. v. F Hoffmann-La Roche Ltd. (2015), the Court observed that according to the
definitions of ‘invention’ and ‘capable of industrial application’ under the Act, an invention
must have a commercial use so that it can be utilized in the industries. In the case
of Indian Vacuum Brake Co. Ltd. E.S. Luard (1925), the Court observed that the term
‘utility’ has not been used in an abstract sense in the Act. In order to qualify for a patent,
an invention must have some utility. Mere usefulness is not enough.
What is Revocation of Patent?
Revocation, in its broadest sense, is the action of taking back something that has
previously been granted. The same is true with patents, which cannot be regarded as
permanent once issued. Revocation of a patent refers to the revocation of the
patentee’s previously obtained rights. Any interested party may file a petition for the
revocation of a patent, or the Central Government may do so as well.

Ground for revocation of Patent:

The grounds for revocation of Patent is given in Section 64 of the Indian Patent act,
1970:
 An invention having identical specifications in another Indian patent that was
issued with a preceding filing date or priority date.
 The grant of Patent was done to a person who was not entitled for the same.
 A person who is legally entitled to the Patent received it from another without
authorization. A different person who is legitimately entitled to the patent may
submit a request for its revocation.
 According to Section 2(1)(j) of the 1970 Patent Act, the invention claimed in the
awarded patent is not real.
 The invention claimed in the patent lacked novelty in light of past public use or
prior knowledge.
 The innovation has no practical application, which means that the Patent is not
being used at all or is not producing the expected outcomes as described in
the Patent specifications.
 The Patent lack any inventive step.
 The claimed invention, which is a product of import to India, is not a recent
development. The invention was widely publicized and in use in India prior to
the publication date or priority date.
 The specifications of the patent do not sufficiently or clearly explain the scope
of any claim.
 The patent specification falls short of accurately or sufficiently describing the
invention or its processes.
 A misleading representation or implication was used to obtain the Patent. The
claim or suggestion must be in accordance with any fact or representation
made in connection with the grant of the patent or with any of the specifications
thereof.
 In accordance with Section 8 of the Patent Act of 1970, the patent applicant
has not revealed all the necessary information. Additionally, the applicant
provided inaccurate information about the invention.
 In accordance with Section 35 of the Patent Act of 1970, the Patent Applicant
failed to comply with the Controller’s request for confidentiality.
 The Controller’s failure to abide by the confidentiality directive when a patent
application was filed outside of India without his or her prior consent.
 The applicant secured the right to change a patent’s whole specification under
Sections 57 or 58 of the Patent Act of 1970 by fraud.
 The geographical origin or source of the biological material used in the
invention are not fully disclosed in the patent’s specification.
 Any local or indigenous community in India or elsewhere has access to the
traditional knowledge asserted in the patent specification.
The Supreme Court (SC) explained in its ruling in the case of Dr. Aloys Wobben & Anr.
vs. Yogesh Mehra & Ors that, in accordance with Section 64 of the Patent Act, 1970, a
patent may be revoked either through the submission of a revocation petition to the
Intellectual Property Appellate Board (IPAB) or through the filing of a counterclaim in a
lawsuit alleging patent infringement. The patent holder cannot be sued in both cases at
the same time by the person challenging the validity of the patent. The challenger won’t
be able to use the other remedy if the court tries to use one of the remedies.
Other provisions for revocation of patents:
Section 65-Revocation in cases related to Atomic Energy:
The Central Government may revoke a patent, according to Section 65 of the Patent
Act of 1970. The Central Government may only revoke a patent after proving that the
invention covered by the patent has something to do with atomic energy. According to
the restrictions outlined in the Atomic Energy Act of 1962, patents cannot be granted for
inventions relating to atomic energy. As a result, the Central Government of India does
not permit the grant of a patent for an invention involving atomic energy.

Section 66-Revocation of Patent in Public Interest:

According to Section 66 of the Patent Act of 1970, where the Central Government
believes that a patent or the way in which its connected rights are exercised is
damaging to the general public or the State, the patent should be cancelled. The patent
holder should be given a fair chance to exercise his or her right to be heard. The
decision to revoke the patent will be made in accordance with the circumstances after
the patent holder has been given an opportunity to respond.

Section 85-Revocation by Controller for Non-Working:

According to Section 85 of the Patents Act of 1970, a patent may be cancelled for
failure to function. Any interested party or the government may submit an application to
the Controller for the revocation of a patent with regard to a patent for which a
compulsory license has been issued. Within two years of the compulsory license being
granted, the patent revocation must be filed.

The grounds for Revocation are

 The patented invention does not function in Indian territory;
 The patent is not being used in a way that satisfies the reasonable
requirements of the general public;
 The patented invention is not accessible to the general public for an affordable
price.
Who is Patentee?
A patentee is the individual who creates a new product, an enhancement to an existing
product, or a brand-new method of producing an existing product.

Rights and obligation of the Patentee:

In India, patentees are given specific rights and obligations upon the issuance of the
patent. The Patent Act grants the patentee specific rights, so that he can make profit
out of his patent.
What are the rights of patentees?
1. Exclusive right:
The exclusive right to patent is provided by Section 48 of the Patent Act of 1970. As is
well known, a patent can cover either a method or a product. By prohibiting the patent
in both cases—whether it involves a product or a process—Section 48 grants exclusive
rights.
 If a product is the subject of the patent manufactured by the patentee, the
exclusive right to patent prohibits third parties from manufacturing, putting up
for sale, selling, importing, or using the product developed by the patentee
without his approval.
 If the patentee has obtained a patent for a method, the patentee’s exclusive
right prohibits third parties from using, selling, or importing the product made
using that method without the patentee’s permission.
2. Right to Exploit the Patent:
In India, the right to produce, use, market, and distribute the patented goods is granted
to the patent holder. If the innovation involves a manufacturing method, the patentee
has the right to assign the process to another individual who has been given their
permission. The agent of the patent holder may exercise this authority.

3. Right to Assign and License:

The power to assign or give license to third parties for the purpose of producing and
distributing the patented goods is provided to the patent holder under Section 69(5)
of the Patent Act of 1970. For a patented product with multiple patent owners, all patent
owners must concur to grant the license to a third party collectively. The license is not
considered to have been issued until the administrator has correctly authorized the
request. Thus, for the assignment or license to be legal and valid, it must be in writing
and submitted to the Patent Authority.
4. Rights to surrender:
The patent holder has the right to give up his patent after requesting approval from the
controller. After that, in compliance with the Indian Patents Act, the controller advertises
this surrender. The controller can then be contacted by those who are eager to own a
patent. The controller looks into the parties’ claims and gives up ownership if
necessary.

5. Right before selling:

A patent is sealed from the date of notification for acceptance until the date of
acceptance of the notification, as per Section 24 of the Indian Patents Act. After the
notification of acceptance is presented, the patentee’s rights are in effect.
6. Right to Sue For Infringement:
Any violation of the rights of a patent holder is referred to as a patent infringement. In
the event that their rights have been violated, patent holders have the option of going
before either a district court or a high court. If the defendant is found guilty of
infringement, the courts may award both damages and a permanent injunction.

7. Right to Apply for the Patent of Addition:

The Patents Act of 1970, sections 54 to 56, contain this clause. The provision allows
modifications to the current invention. The patent holder is entitled to the enhanced
innovation in these circumstances as soon as the notification of approval is made
public. When the notification is presented, the owner is awarded the same rights as
those of the earlier patent.
What are the obligations of patentees?
1. Duty to Disclose the Patent:
It is the patentee’s responsibility to provide the controller with all information that is
required. The applicant must reveal the innovation to the public, according to Section
8 of the Patent Act of 1970. At the time of filing a patent application or within six months
of applying, the patentee is categorically required to disclose all necessary information
regarding the remote application of an identical or nearly identical invention that has
been documented, according to Section 8(1) of the Patent Act of 1970.
2. Duty to request for examination:
The patent registration process does not provide for any type of scheduled examination
for the grant of a patent application, in contrast to other intellectual property rights.
According to section 11(B) of the Patents Act of 1970, it is the patentee’s responsibility
to ask the Controller to look at how the patent has developed or grown.
3. Duty to respond to objections:
The Patent Controller sends the inspection request to an analyst, who evaluates the
growth before sending the First Examination Report (FER) back to the Patent
Controller. In some cases, the First Examination Report will mention some objections.
Responding to such reports of objection is required of patentees. They must also
communicate within a year after the FER’s issuance. The patentee’s application will
automatically be rejected if this is not done.

4. Duty to clear all objections:

It is the applicant’s responsibility to address any and all complaints and oppositions
made against his invention, as well as to respond to such objections. If the controller is
still unsatisfied, he could also request a meeting. Additionally, it is the applicant’s
responsibility to attend the consultation and address all objections and oppositions (if
any have been lodged) made against the invention.

5. Duty to pay statutory fees:

To be eligible for a patent, patentees must also pay any statutory fees connected to the
registration process. If the payment is not made, the patent will not be considered for
the grant. Section 142 of the Patent Act addresses the payment of appropriate fees and
the penalties of failing to pay certain costs.
Patent Infringement and Defences
Patent is a type of intellectual property granted by the patent authority to the inventor for
a limited period of time for exercising monopoly over his specific innovation. A patent is
considered to be an exclusive monopoly right as it excludes others from using, selling,
distributing the invention of innovators. Patent Infringement is illegal as it violates the
exclusive right of the patent holder. It is crucial for individuals and companies to be
aware of patent laws and the consequences of patent infringement. It is important to
take steps to protect one’s own patents, as well as to avoid infringement of the same by
others. With technology rapidly advancing, it has become increasingly important to
understand the complexities of patent infringement and how it affects innovation and
progress. This article aims to reflect the same.

Types of patent infringement

Classification of patent infringement have been discussed hereunder.

Direct infringement
Direct infringement is a most common and obvious form of patent infringement. When a
third party without the permission of the patent holder:

 Commercially uses the invention.

 Reproduces the invention.
 Import a protected idea/ invention in India.
 Selling patented inventions.
 Offer to sell patented inventions.
Direct infringement can either be intentional or unintentional during the term of patent.
Only requirement to be fulfilled is the performance of a substantially deceptive function of
an invented product without obtaining a legal licence from the owner for the usage. For
example, Samsung started using the same manufacturing process as the Apple company
for making phones, without taking permission. This is a direct infringement of a patent
existing on the product, owned by the Apple company.

Literal infringement
Literal infringement is a type of direct infringement in which each and every element or
composition protected by either product or process patent is copied, in other words, a
replica of the original product is used, manufactured, sold or imported.

In the case of Polaroid Corp. vs. Eastman Kodak Co (1986), Polaroid claimed that Kodak
had violated its patent right related to instant photography. The central dispute revolved
around Kodak’s instant photography system, which Polaroid argued had utilised its
patented technology. Polaroid believed that four of its patents related to instant
photography, including the process of developing an instant image and the instant
camera itself, were infringed by Kodak. After a prolonged trial, the court ruled in favour
of Polaroid, determining that Kodak had indeed infringed upon Polaroid’s patents. As a
result, Kodak was ordered to stop the production and sale of its instant photography
system and Polaroid was awarded substantial damages.

Non-literal infringement
Non-literal infringement is also recognised by the name of Doctrine of Equivalence. In this
type of infringement, the alleged invention has to pass through the “Triple Identity Test”.
This means when an invention is similar to the patented invention hence performing
significantly the same function, in the same way and producing the same result, may
even differentiate in name, shape or form, that invention will be said to have caused non-
literal infringement of the previously patented invention.

In the landmark case of Ravi Kamal Bali vs. Kala Tech. & Ors (2008), the plaintiff was
granted patent for ‘tamper lock/seals’ and the defendant constructed a similar kind of
product by the name of ‘Seal Tech’, which had the similar functional features as the
plaintiff’s lock. The court of law had applied the Doctrine of Equivalence, and gave the
decision in favour of the plaintiff stating that both the products had exactly the same
function and also was made up from the same material with the only slight differentiation
was of construction which did not constitute an innovation

Indirect infringement
Indirect infringement occurs when a third party supports, contributes or promotes the
direct infringement. The infringement can either be accidentally or knowingly.

Induced infringement
Induced infringement involves wilful aiding of the infringing process, with or without any
intention to infringe. In either case, the infringer shall be held liable for infringement. The
aiding can be in the form of:

 Assisting in manufacturing of the product.

 Assembling the patented product without proper licence.
 Providing instructions to third parties on production of product.
 Printing the instructions of patented items and selling them.
 Licensing plans or processes.

Contributory infringement
Contributory infringement is a kind of indirect infringement in which the infringer sells or
supplies the parts of a product used exclusively to manufacture the patented products.
The infringer is held liable even if he doesn’t actively participate in the manufacturing
process.

Wilful infringement
Wilful infringement occurs when someone disregards the patent invention voluntarily. The
burden of proof in this case lies on the patent holder. The infringer can take the defence
of legal opinion thoroughly in writing. Three step process for willful infringement are:

 Knowledge about the patented invention,

 Good faith belief that the infringer wouldn’t be liable for patented invention,
 Infringer’s belief is reasonable.
If the wilful infringement is proved, the court can order strong deterrents (3 to 4 times of
actual damage), inclusive of court costs, lawyer’s fees etc.

Burden of proof
The burden of proof in patent infringement originally lies upon the patentee (the
plaintiff). However, TRIPS amended the Patents Act, 1970 by insertion of Section
104A thereby introducing the concept of “reversed burden of proof”. This signifies that if
the subject matter of patent is a process and results to;

1. A new product, and

2. There is substantial likelihood that an identical product is made by the same
process and the patentee, despite reasonable efforts, failed to determine the
process.
Then the burden of proof is on the defendant to prove the non-infringement.

Doctrines related to patent infringement

Doctrine of equivalents
Doctrine of equivalents is a legal rule that is applied to find out the patent infringement.
The doctrine classifies even a minor change to the product as an infringement. In simple
words, if the infringed product performs significantly the same function, in the same way
and produces the same result, then it shall lead to patent Infringement under the
doctrine of equivalents.

Limitations to the doctrine of equivalents

1. All elements rule: All the elements of a patented product should be present in
the infringed product.
2. Doctrine of public dedication: This doctrine is applicable when a patentee
discloses publically the subject matter of patent but does not claim it. Anyone
can then use it without fear of infringement.
3. Existence of prior art: Invention already publicly available and known, before
filing of the patent application signifies existence of prior art. In other words, the
invention is not unique or exists already in some form.
4. Prosecution of history estoppel: Also known as File-Wrapper Estoppel, it
arises as a legal defence to infringement. It applies where a patent application
amends or cancels a claim rejected by the Patent Office as unpatentable based
upon prior art.
In the landmark case of Graver Tank vs. Linde Air (1950), the disputed patented
formulation was a mixture of alkaline earth metal silicate (using magnesium) and
calcium. The accused used manganese, and silicate but not any alkaline earth metal.
Experts stated that manganese served the purpose of magnesium and was equivalent to
it. In this case, the court had opined that “a person reasonably skilled in his work would
have known of the replaceable element“. Interchanging of magnesium with manganese
was obvious to anyone working in the same field and was an insubstantial change.
Therefore the court upheld the finding of patent infringement under the doctrine of
equivalents.
Doctrine of colourable variation
The doctrine is derived from a latin maxim, “Quando aliquid prohibetur ex directo,
prohibetur et per obliquum” which means “what cannot be done directly, should also not
be done indirectly”. According to this doctrine, the practice of making minor changes to a
patented invention in order to invade the patent infringement claims, is substantially
considered to be the same as the patented invention, even though it may have some
apparent differences. This means that an infringer cannot neglect liability by making
minute changes to the patented invention. Some of the factors considered by court in
order to decide whether a variation is colorable or not are provided hereunder:

1. The extent of resemblance between the alleged invention and the accused
product or process.
2. The degree of distinction between the two products or processes.
3. The aim or intended usage of the accused product or process.
4. The competency level of the relevant industry at the time the patent was in use.
5. The level of difficulty involved in creating the accused product or process
6. The level of certainty in the relevant industry.
7. The degree of self-creation or prior knowledge.
8. Proof of Copying or other methods of direct violation of patent infringement.
The case of Pfizer Inc. vs. Cadila Healthcare Ltd (2020), involves a dispute over the
patent for the anti-inflammatory drug Celecoxib. Pfizer alleged that Cadila’s generic
version of the drug infringed Pfizer’s patent, but Cadila argued that its product was
different from Pfizer’s product and therefore did not infringe the patent. The Supreme
Court of India found that Cadila’s product was a colorable variation of Pfizer’s product,
and amounted to infringement.

What acts do not amount to patent infringement

There are several acts that does not amount to infringement-

1. Independent invention: The impugned product or process was independently

developed by the accused party, without any reference to or use of the claimed
invention of the patent. To prove independent invention, the accused party
typically needs to provide evidence of their invention, such as records of their
development activities, laboratory notebooks, or testimony from witnesses. This
evidence should demonstrate that the accused party was working on the same
problem as the patent holder and arrived at the same solution independently
and without reference to the claimed invention of the patent.
2. Patent expiration: When a patent expires, the inventor’s exclusive rights to the
invention are no longer in effect and anyone may use the invention without
infringing the patent.The term of a patent is typically set by law and is typically
20 years from the filing date of the patent application. After the patent has
expired, the claimed invention becomes part of the public domain and can be
freely used by anyone without fear of infringing the patent.To prove that the
patent has expired, the accused party can typically provide evidence of the filing
 date of the patent and the relevant patent law to demonstrate that the patent
has reached the end of its term.
3. Research and experimentation: Experimental use of a patented invention for
the purpose of testing or evaluating it is not considered infringement. In other
words, the accused party is claiming that they were using the claimed invention
to test and evaluate its performance, and that they did not intend to sell or
otherwise commercially exploit the invention.
4. Government use: In many countries, the government has the right to use a
patented invention without infringing the patent for the purpose of fulfilling its
responsibilities and providing services to the public. The accused product or
process is used by or on behalf of the government and is therefore not subject to
the patent. This defence is based on the idea that the government should have
the right to use patented inventions for various public purposes, such as for
national security or for the provision of essential services, without being subject
to infringement claims.
5. Prior use: If a person has been using a patented invention before the patent
was granted, they may be able to continue using it without infringing the patent,
depending on the laws of the relevant jurisdiction. To prove prior use, the
accused party typically needs to provide evidence of their use of the accused
product or process before the filing date of the patent.
6. Fair use: The concept of fair use allows for limited use of a patented invention
for purposes such as criticism, commentary, news reporting, teaching,
scholarship, or research. The defence is based on the idea that certain uses of a
patented invention should be allowed without infringing the patent, even if they
would otherwise be considered infringing, in order to promote the public good
and encourage creative and intellectual activity. To prove fair use, the accused
party typically needs to show that their use of the patented invention was for a
permissible purpose under copyright law and that it was reasonable in scope and
impact.
7. First sale doctrine: The first sale doctrine, also known as the exhaustion
doctrine, provides that the sale of a patented item by the patent holder or with
their authorization exhausts their patent rights and allows the buyer to use or
resell the item without infringing the patent. The doctrine is based on the idea
that the patent holder’s exclusive rights to the patented invention are limited
and that the rights of others to use, sell, or distribute a patented product should
not be unduly restricted. The first sale doctrine is often invoked in cases
involving the resale of patented products, such as used books, CDs, or other
products that were legally obtained through a sale or transfer. By applying the
first sale doctrine, these products can be resold or otherwise distributed without
infringing the patent, provided that the product was not altered or modified in a
way that would give rise to a new patent infringement.
8. Invalidity or unenforceability of the patent: If a patent is found to be invalid
or unenforceable, any act that would have otherwise constituted infringement
would not be considered infringing.

Defences available against patent infringement

1. Estoppel: Estoppel is a legal principle that can be used as a defence against a
claim of patent infringement. The principle of estoppel states that a person
cannot assert a right that they have previously renounced or abandoned. In the
context of patent infringement, estoppel can be used as a defence when the
 patent holder has made statements or taken actions that indicate that they do
not believe the accused party is infringing their patent. For example, if the
patent holder has licensed the accused party to use the patented invention or
has allowed the accused party to use the patented invention for a significant
period of time without asserting their patent rights, the patent holder may be
stopped from later claiming that the accused party is infringing their patent.
2. Licence: A licence is a legally binding agreement between the patent owner and
another party, in which the patent owner grants the other party permission to
use the patented invention in exchange for some form of compensation. In the
context of a patent infringement claim, a licence defence argues that the
accused product or process is being used under a licence or other agreement
with the patent owner that permits the use. This means that the accused party
has a right to use the patented invention, and therefore cannot be held liable for
infringing the patent.
3. Plaintiff is not entitled to sue: The plaintiff who is claiming patent
infringement does not have the legal right to bring a lawsuit for the
infringement. This defence can be raised for a variety of reasons, such as lack of
standing, assignment of the patent, invalidity of the patent, statute of
limitations, or a settlement or licensing agreement. For example, if the patent
has been assigned to someone else, the original owner is no longer entitled to
sue for infringement and the new owner must bring the lawsuit instead.
Similarly, if the patent is found to be invalid, the plaintiff is not entitled to sue for
infringement as they do not have a valid patent to enforce.

Remedies for patent infringement

Section 108 of Patent Act,1970 deals with the “Reliefs in suit for infringement”. The
remedies for a suit filed in the infringement of a patent can be classified into three types,
they are:

1. Injunction: In the context of patent infringement, an injunction is a court order

that requires the infringing party to stop making, using, selling, or importing the
infringing product. It is a preventative measure that aims to preserve the value
of the patent and prevent further harm to the patent holder. To obtain an
injunction, the patent holder must prove that their patent is valid and that it has
been infringed upon by the defendant. Injunction is of three kinds:

 Temporary Injunction: It is a kind of temporary remedy that is provided

before the final verdict of the case. It is used to preserve the status quo of the
patent holder. Moreover, they are likely to succeed in their lawsuit and will suffer
irreparable harm if the infringing activity is allowed to continue. The court should
consider three factors before granting temporary injunction to the patent
holder-
I. Prime facie case.

II. Balance of inconvenience.

III. Irreparable loss

 Permanent injunction: It is a kind of permanent remedy that is granted when

the case is finally decided by the court. It requires the infringing party to stop
the infringing activity permanently. The court may also award monetary
 damages, such as compensation for any profits that the infringing party has
made as a result of the infringing activity. To obtain a permanent injunction, the
patent holder must file a lawsuit and prove that their patent is valid and that it
has been infringed upon by the defendant. However, obtaining a permanent
injunction can be a complex and time-consuming process, and the patent holder
must have strong evidence to support their claim.
 Ex-parte injunction: An ex-parte injunction is a provisional remedy that is
used in urgent situations and is granted without a hearing. It is a powerful
remedy for patent infringement, but it must be used with caution, as it may
result in harm to the defendant if it is later found to be unjustified. It is typically
used in urgent situations where the plaintiff needs immediate relief and there is
not enough time for a full hearing.

2. Damages: Damages is a remedy for patent infringement that compensates the

patent holder for any harm that they have suffered as a result of the infringing
activity. Damages may be awarded in the form of monetary compensation, such
as compensation for any lost profits or other financial losses that the patent
holder has suffered. The main objective of damages is to compensate for the
loss or injury that happened to the plaintiff.
3. Seizure, forfeiture or destruction: Courts may decree that the items
determined to be infringing should be taken into custody, forfeited, or disposed
of as deemed appropriate.

Landmark judgments
1. Novartis AG vs. Union of India (2013)

The highly significant legal dispute in India concerning the principle of patent
infringement. Swiss pharmaceutical company Novartis AG brought the case to the
Supreme Court of India after its application for a patent for its anti-cancer drug “Glivec”
was denied by the Indian Patent Office. The central issue of the case was the concept of
“evergreening”, where companies try to prolong the life of their patents by making minor
modifications to their products. Novartis claimed that its product was a new invention and
thus deserving of patent protection. However, the Patent Office rejected the patent,
stating that it was just a modification of an existing drug and not a new invention.

The Supreme Court eventually ruled against Novartis, determining that its product was
not a novel invention and therefore did not qualify for a patent. This ruling was seen as a
positive outcome for public health and access to medicine as it prevented the
evergreening of patents and ensured that generic versions of the drug would be available
at more affordable prices.