01 January 0001

IPR Amicus: February 2018

by Godhuli Nanda

Protection of designs vis-à-vis newness and originality

A Single Judge of the Delhi High Court on January 8, 2018 has held that unless a design is not significantly distinguishable from the known designs or combination of designs, then such a design is not entitled to registration. The dispute involved copyright in the registered design of ball point pen. It was held that in order for a design to be totally new and original design with respect to a ball point pen, there will have to be significantly distinguishable features so as to make the ball point pen of which exclusivity and continuation of the registration is claimed. The Court was of the view that wedges at the point of holding of the ball point pen or that the barrel was polygonal or there exists slightly curved tip or that barrel/lower casing goes into a knob, etc., are only trade variants. It was noted that such features cannot distinguish the pen from known shape or different features which already exist in a ball point pen…


Ratio decidendi

  • Designs – Cancellation of registration when design a trade variation and available in public domain before – Delhi High Court
  • Trademarks - Interim injunction granted against use of mark ‘Patanjali’ – Delhi High Court
  • Patent infringement - Technical expert allowed during cross-examination of another expert – Delhi High Court
  • Trademarks - Commercial Transaction must for Court’s jurisdiction in passing off – Delhi High Court
  • Trademark cannot be removed without notifying expiration due date – Bombay High Court
  • Trademarks – Reasonable claim in passing off – Bombay High Court


News Nuggets

  • Geographical indications and ‘essential characteristics’ – CJEU holds that use of Protected Designation of Origin as part of name of foodstuff containing an ingredient corresponding to those specifications, does not constitute misuse or imitation
  • Red colour whether can perform essential function of a trademark – CJEU Advocate General expresses doubts
  • Trademark – Likelihood of confusion in a mark for clothing – UK High Court notes that consumer rarely does direct comparison


February, 2018/Issue-79 February, 2018/Issue-79

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