The intellectual property rights (IPR) landscape in India is constantly evolving, with recent legislative amendments and significant judicial pronouncements shaping the future of patent and trademark law. These developments are crucial for businesses and individuals seeking to protect their innovations and brand identities in the Indian market. Our firm stays abreast of these changes to provide you with the most up-to-date and effective legal counsel. Here’s a breakdown of the key updates in patent and trademark law.

Key Updates in Indian Patent Law

The Indian patent regime has seen significant activity recently, with the introduction of new rules and important court decisions.

Patents (Amendment) Rules, 2024: Effective from March 15, 2024, these amendments aim to streamline patent prosecution procedures and align Indian practices with international standards. Some key changes include:

• Reduced Timeline for Examination Request: The deadline to file a Request for Examination (RFE) has been shortened to 31 months from the earliest priority date for applications filed on or after March 15, 2024. This is expected to expedite the patent examination process.
• Simplified Information Submission for Foreign Applications: Applicants now have three months from the issuance of the First Examination Report (FER) to submit information regarding corresponding foreign applications. The Controller will also utilize accessible databases to obtain prosecution documents, reducing the burden on applicants.
• Increased Flexibility for Divisional Applications: The new rules explicitly permit filing any number of divisional applications for distinct subject matter disclosed in the original application ¹. This offers greater flexibility in building comprehensive patent portfolios.
• Formalized Grace Period: A clear mechanism is now in place to claim the 12-month grace period for inventions already published before a learned society.
• Streamlined Pre-Grant Opposition Process: The Controller will now assess if a prima facie case exists before notifying the applicant, and fees have been introduced for filing such oppositions. The applicant’s reply time has also been reduced to two months.
• Reduced Frequency for Working Statements: The requirement to file a statement of working (Form 27) has been reduced from annually to once every three financial years, with a simplified form.

Notable Patent Law Judgments: The Indian judiciary, particularly the Delhi and Madras High Courts, has played a crucial role in clarifying patent law:

• Software Patentability: Courts are adopting a more nuanced approach, focusing on the “technical effect” and “technical contribution” of software-related inventions. Landmark cases like Ferid Allani v Union of India and Microsoft Technology Licensing LLC v The Assistant Controller of Patents and Designs highlight this evolving interpretation. However, the Delhi High Court in Blackberry Limited v The Assistant Controller of Patents and Designs clarified that technical effects solely rooted in algorithms may not be patentable.
• Product-by-Process Claims: The Delhi High Court in Vifor International Ltd & Anr. vs Corona Remedies Pvt Ltd & Anr clarified that patent protection for “product-by-process” claims extends to the novel product itself, regardless of the specific process used.
• Standard Essential Patents (SEPs): The Delhi High Court’s judgment in Telefonaktiebolaget LM Ericsson (Publ) v Lava International Ltd addressed FRAND licensing terms and damage calculation in SEP litigation. Another key judgment, Guangdong Oppo Mobile Telecommunications Corp Ltd and Others v InterDigital VC Holdings Inc and Others, outlined conditions for ordering deposits in SEP litigation.
• Divisional Patents: The Delhi High Court in Syngenta Limited v Controller of Patents and Designs affirmed that further applications can be filed based on subject matter disclosed in the initial specification, aligning with the recent rule amendments.

Key Updates in Indian Trademark Law

The trademark law landscape is also witnessing significant developments.

Draft Trade Marks (1st Amendment) Rules, 2024: These proposed amendments aim to strengthen trademark governance and refine the adjudication process. Key proposals include:

• Unified Adjudication Process: Introduction of a consistent process for penalties under the Jan Vishwas Act, 2023.

• New Definitions: Inclusion of definitions for terms like ‘adjudicating officer’ and ‘appellant’ to enhance clarity.

• Mandatory Electronic Communication: Use of electronic means for all penalty adjudications under the Jan Vishwas Act, 2023.

• Framework for Penalty Adjudication: A new chapter is proposed to be added to the Trade Marks Rules, outlining the procedure for filing complaints against false representation of trademarks.

• Appointment and Powers of Adjudicating Officer: The Registrar will appoint an Adjudicating Officer with powers similar to a civil court to impose penalties.

• Random Allocation of Complaints: Ensuring fairness through a computer-based allocation system.

• Summary Dismissal Powers: Allowing the Adjudicating Officer to dismiss proceedings lacking a prima facie case.

• Factors for Compensation: Guidelines for determining the quantum of compensation, including gains, losses, and the nature of the default.

• Inquiry Procedure: Outlining the process for conducting inquiries and providing opportunities for hearings.

• Appeal Mechanism: Allowing appeals to the Appellate Authority within sixty days.

• Updated Forms: Introduction of new forms for complaints, submissions, and appeals.

Jan Vishwas Act, 2023: This act has already brought amendments to the Trade Marks Act, 1999, including deleting obsolete sections and replacing some criminal penalties with higher monetary penalties for offenses like false trademark representation.

Notable Trademark Law Judgments: Indian courts have been actively involved in resolving trademark disputes:

• Trademark Seniority: The Delhi High Court in Kabushiki Kaisha Toshiba v. Tosiba Appliances affirmed that trademark registration is valid even without immediate use, strengthening the concept of trademark seniority.

• Protection of Film Titles: The Delhi High Court’s decision in Vishesh Films v. Super Cassettes recognized that film titles can be protected as trademarks.

• Reverse Passing Off: In Western Digital and Seagate v. Daichi et al., the Delhi High Court ruled on the sale of refurbished goods, requiring clear disclaimers and retention of original trademarks.

• Trademark Confusion: The case between Wipro Enterprises and Himalaya over the trademark EVECARE highlighted the factors considered in determining the likelihood of consumer confusion.

• Enforcement Against Infringement: Several cases, including Burger King Corporation v. Anahita Irani & Anr., Lacoste vs. Crocodile International, and Amul vs. Amuleti, demonstrate the courts’ willingness to grant injunctions and damages in trademark infringement cases.

• Protection of Personality Rights: The Delhi and Bombay High Courts in cases like Anil Kapoor v Simply Life India and Jaikishan Kakubhai Saraf (Jackie Shroff) v Peppy Store have restrained the unauthorized use of celebrities’ persona, including by AI tools.

• Well-Known Trademarks: The Supreme Court of India ruled in favor of Oracle in a trademark infringement case against a local entity using its ‘Java’ trademark, reaffirming the protection for well-known marks.

Conclusion

The recent updates in Indian patent and trademark law reflect a dynamic and evolving legal landscape. These changes aim to foster innovation, streamline processes, and provide robust protection for intellectual property rights. Staying informed about these developments is crucial for navigating the Indian market effectively. Our team at Scaleup Legal is dedicated to providing expert guidance and support in all aspects of intellectual property law. Contact us today to discuss how these changes may impact your business and how we can assist you in protecting your valuable IP assets.