01 January 0001

IPR Amicus: August 2016


Controller overreach or common sense? - A tale of Section 83 of the Patents Act

Article in this issue of Amicus seeks to explore and understand the evolving nexus between the Biological Diversity Act, 2002 and the Patents Act, 1970. The Article discusses two recent Orders passed by the Kolkata Patent Office wherein the applications were refused under Section 83 of the Patents Act, reasoning that the intent of Section 83(a), and (g) is defeated as the biological material is available and commercially produced in India. According to the author, rejection on this ground is arbitrary. Further listing other issues in the two decisions, it is stated that twin orders raise a lot of questions, which may seriously prejudice the interests of both Indian and foreign applicants applying for patent rights in India, particular those involving biological materials.


Ratio decidendi

  • Websites containing pirated/illegal content to be blocked, and not URLs alone – Delhi High Court also observes that directions to Department of Telecommunication to ensure compliance, is correct
  • Trademarks – No case of passing off in use of word ‘Privee’ as word common to hospitality industry particularly hotels – Delhi High Court
  • Trademarks in domain name – Bona fide adoption of corporate name as domain name, correct – Bombay High Court observes that every domain name cannot form subject of trade-mark protection
  • Territorial jurisdiction of court in a suit against cancellation of compulsory licences - Fact that compulsory licences granted by Registrar of Copyrights in Delhi is important – Delhi High Court
  • Copyrights in drawings of products – No question of asserting a copyright infringement claim, independently, when the design protection subsists, but infringement has not been prima facie established – Delhi High Court
  • Trademark infringement – Establishing similarity of mark and irreparable loss – Delhi High Court


Statutory Updates

  • Trademarks - Registration certificates through automated system from 1-8-2016


August, 2016/Issue-61 August, 2016/Issue-61

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