What Is A Well-Known Trademark?
What Is A Well-Known Trademark?
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:
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.
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 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.
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).
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
(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]
(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;
(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;
(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.
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.
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.
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:
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:
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:
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;
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.
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.
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.